UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD. Cisco Systems, Inc. Petitioner. Focal IP LLC, Patent Owner

Transcription

1 Declaration of Dean Willis Petition for Inter Partes Review of Patent No. 8,457,113 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Cisco Systems, Inc. Petitioner v. Focal IP LLC, Patent Owner Patent No. 8,457,113 B2 Filing Date: Jun 22, 2010 Issue Date: Jun. 4, 2013 BRANCH CALLING AND CALLER ID BASED CALL ROUTING TELEPHONE FEATURES DECLARATION OF DEAN WILLIS IN SUPPORT OF PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,457,113 Inter Partes Review No CISCO SYSTEMS, INC. Ex Page 1

2 Declaration of Dean Willis Petition for Inter Partes Review of Patent No. 8,457, I, Dean Willis, declare as follows: 2. I have personal knowledge of the facts stated in this declaration, and could and would testify to these facts under oath if called upon to do so. I. INTRODUCTION AND QUALIFICATIONS A. Engagement Overview 3. I have been retained by counsel for Cisco Systems, Inc. (Petitioner) in this case as an expert in the relevant art. I am being compensated for my work at the rate of $300 per hour. No part of my compensation is contingent upon the outcome of this petition. 4. I was asked to study U.S. Patent No. 8,457,113 ( the 113 patent ), its prosecution history, and the prior art and to render opinions on the validity or invalidity of the claims of the 113 patent in light of the teachings of the prior art, as understood by a person of ordinary skill in the art in the 1999 to 2000 time frame. I understand that the claims being challenged in the Petition are claims 38, 65, , 149, 150, 163, and ( the Petitioned Claims ) of the 113 patent. B. Summary of Opinions 5. After studying the 113 patent, its file history, and the prior art, and considering the subject matter of the claims of the 113 patent in light of the state of the art in the area of telephony in circuit-switched and packet-switched networks in the 1999 and 2000 time frame, I reached the conclusions discussed herein. 6. In light of these general conclusions, and as explained in more detail 1. CISCO SYSTEMS, INC. Ex Page 2

3 throughout this declaration, it is therefore my opinion that each of the Petitioned Claims of the 113 patent addressed in this declaration were invalid as obvious in the 1999 and 2000 time frame in light of the knowledge of skill in the art at that time and the teachings, suggestions, and motivations present in the prior art. This declaration, and the conclusions and opinions herein, provide support for two Petitions for Inter Partes Review ( IPR ) of the 113 patent filed by Petitioner. Petition 1 asserts obviousness Grounds 1-4 against claims 65 and 38 of the 113 patent. Petition 2 asserts the same obviousness Grounds 1-3 presented in Petition 1 against claims , 149, 150, 163, and of the 113 patent, but does not assert Ground 4. I have reviewed the Petitions in their entirety as well as the corresponding exhibits. Given the overlap in the technology, prior art, and exhibits between the two Petitions, and in the interest of efficiency and ease of reference, I prepared a single Declaration in support of both Petitions. The only difference between the two declarations is the numbering system used for the exhibits, i.e., Ex. 10XX for the first petition is the same as exhibit Ex. 11XX for the second petition. C. Qualifications and Experience 7. My educational background includes a Bachelor of Science in Computer Science from Texas A&M University (1986), and a Master of Computer Science from Texas A&M University (1994). During both educational periods, I was employed by the Energy Systems Lab of the Texas Engineering Extension 2. CISCO SYSTEMS, INC. Ex Page 3

4 Service to develop networked applications and communications infrastructure. My Master s thesis focused on computer-supported collaboration, and my research included experimentation with Voice over Internet Protocol (VoIP) systems. 8. My career has included the design, implementation and sale of many network and communications components and systems, with a primary focus on VoIP and Real Time Communications (RTC). I have also been active in the development of the industry standards upon which most commercial VoIP systems are based. I chaired the Session Initiation Protocol (SIP, the most common VoIP protocol) working group of the Internet Engineering Task Force (IETF) for its entire ten-year run, was a board member of the Open Mobile Alliance (OMA), and active in both the of the Third Generation Partnership Projects (3GPP and 3GPP2) that defined the Internet Multimedia Subsystem (IMS) on top of SIP to be the standard architecture for VoIP in mobile phone systems. IMS is just now being widely deployed for High Def Voice and Voice over Long Term Evolution (VoLTE) by major US mobile carriers including AT&T, Verizon, Sprint, and T- Mobile. 9. My first startup company, Paranet, provided network consulting, design, and operational services to many customers in the US and Europe. As a working consultant, I gained wide exposure to the underlying technology and operational systems. Paranet was bought by Sprint in 1996, and I spent the next 3. CISCO SYSTEMS, INC. Ex Page 4

5 two years designing data networks for Sprint, including work on Sprint s early VoIP systems. 10. In 1998, I joined one of Paranet s former customers, MCI Communications, as the Advisory Engineer responsible for research and development of VoIP systems, and was instrumental in bringing MCI s first VoIP products and services to market. 11. Following MCI s merger with WorldCom, I joined my second startup, VoIP software pioneer DynamicSoft, Inc. in As the Vice President of Network Engineering and Fellow, I led the professional services team that designed and integrated networks for DynamicSoft s customers, including Level 3, Net2Fone, and Vonage. I also managed the patent team, and acted as the principal editor and in-house agent for DynamicSoft s patent filings. Further, I developed an expert team that led the development of VoIP standards across the industry. The members of that team currently occupy a number of key positions within the IETF. 12. Cisco acquired DynamicSoft in 2004, and I continued to develop VoIP systems and services for Cisco and supporting VoIP and Internet standards development organizations. I left Cisco in 2006, and have since that time been primarily engaged in design and consulting services relating to VoIP. My client list includes (directly or through counsel) Alcatel-Lucent, Apple, British Telecom, Cisco, Level 3 Communications, Metaswitch, Siemens, Rockstar, XConnect, and 4. CISCO SYSTEMS, INC. Ex Page 5

6 others. 13. I have invented numerous aspects of network and VoIP communications, including eight patents, and authored eight IETF RFC specifications along with numerous Internet drafts and several conference papers. 14. I am knowledgeable about and familiar with wireless and telecommunications systems industry standards, including the SIP, IMS, and H.323 standards, and with Internet routing and firewall technologies. I am also knowledgeable and familiar with software and firmware design for wireless and telecommunications terminals, gateways, and networks. 15. Additional details of my education and employment history, patents, and publications are set forth in my current curriculum vitae, provided as part of this Declaration. My CV also includes a list of all the cases within the last five years for which I have provided testimony. D. Materials Considered 16. My analysis is based on my education and experience as set out above and in my CV, including the documents I have read and authored and systems I have developed and used since then. 17. I reviewed the various relevant publications from the art at the time of the alleged invention and the claim analysis that is included in the Petition for IPR of the 113 patent, to which this Declaration relates. I have also reviewed the 5. CISCO SYSTEMS, INC. Ex Page 6

7 Petition in its entirety. Based on my experience as a person having ordinary skill in the art ( POSA ) at the time of the alleged invention, the references accurately characterize the state of the art at the relevant time. Specifically, I have reviewed the following: Exhibit No. Ex Ex Ex Ex Ex Ex Description of Document U.S. Patent No. 8,457,113 to Wood Declaration of Dean Willis U.S. Patent No. 6,353,660 to Burger U.S. Patent No. 6,683,870 to Archer U.S. Patent No. 5,958,016 to Chang U.S. Patent No. 6,798,767 to Alexander Ex File history of U.S. Patent No. 8,347,113 Ex File history of U.S. Patent No. 7,764,777 Ex Harry Newton, Newton s Telecom Dictionary 15 th Ed. (1999) Ex Colin Low The Internet Telephony Red Herring (1996) Ex Andrew S. Tanenbaum Computer Networks 3 rd Ed. (1996) R.F. Rey, Ed. Engineering and Operations in the Bell System 2 nd Ex Ed. (1984) Ex Douglas E. Comer Internetworking with TCP/IP (1991) Abdi R. Modarressi An Overview of Signaling System No. 7 Ex (1992) Ex Jon Thӧrner Intelligent Networks (1994) Ex U.S. Patent No. 5,434,852 to La Porta Ex ITU-T Recommendation H.323 M. Handley et al. SIP: Session Initiation Protocol RFC 2543 Ex (2000) Ex ITU-T Recommendation H CISCO SYSTEMS, INC. Ex Page 7

8 Exhibit No. Ex ITU-T Recommendation H.245 Ex ITU-T Recommendation Q.1215 Ex Ex Description of Document U.S. Patent No. 5,802,160 to Kugell Jonathan Lennox et al. Implementing Intelligent Network Services with the Session Initiation Protocol Tech-Report No. CUCS Ex GSM Technical Specification (1997) International Publication No.WO 97/23988 to British Ex Telecommunications PLC Ex Ex U.S. Patent No. 6,463,145 to O Neal U.S. Patent No. 6,445,694 to Swartz Ex W. Richard Stevens The Protocols (1994) Ex Ex Ex U.S. Patent No. 5,206,901 to Harlow PacketCable 1.0 Architecture Framework Technical Report PKT- TR-ARCH-V (1999) U.S. Patent No. 5,434,913 to Tung Ex ITU-T Recommendation Q.1211 Ex G TS V1.0.0 ( ) Ex ITU-T Recommendation Q.931 Ex CCITT Recommendation M. 770 (1998) Ex Ex Ex Ex Ex Ex Colin Low Integrating Communication Services RFC 2458, Toward the PSTN/Internet Inter-Networking Pre- PINT Implementations (1998) Press Release Cisco Systems to Acquire Selsius Systems, Inc. for $145 Million (October 14, 1998) RFC 791 Internet Protocol: DARPA Internet Program Protocol Specification (Sept. 1981) Net2Phone, Inc., Securities and Exchange Commission Form S-1 (May 18, 1999) Open Channel Foundation, Tempest News, Software of the Year (1998) 7. CISCO SYSTEMS, INC. Ex Page 8

9 Exhibit No. Description of Document Ex Selsius-CallManager, Marketing Material (1998) Ex Ex C.V. of Dean Willis Paul Baran On Distributed Communications: I. Introduction to Distributed Communications Networks (1964) Ex ITU-T Recommendation E.131 II. LEGAL PRINCIPLES USED IN THE ANALYSIS 18. I am not a patent attorney, nor have I independently researched the law on patent validity. Attorneys for the Petitioner explained certain legal principles to me that I have relied upon in forming my opinions set forth in this report. A. Person Having Ordinary Skill in the Art ( POSA ) 19. I understand that I must undertake my assessment of the claims of the 113 patent from the perspective of what would have been known or understood by a POSA as of the earliest-claimed priority date of the patent claim, which I understand is May 4, The opinions and statements that I provide herein regarding the 113 patent and the references that I discuss are made from the perspective of the person of ordinary skill in the art in the late-1990s and 2000 time frame. 20. Counsel has advised me that, to determine the appropriate level of one of ordinary skill in the art, I may consider the following factors: (a) the types of problems encountered by those working in the field and prior art solutions thereto; 8. CISCO SYSTEMS, INC. Ex Page 9

10 (b) the sophistication of the technology in question, and the rapidity with which innovations occur in the field; (c) the educational level of active workers in the field; and (d) the educational level of the inventor. 21. The relevant technology field for the 113 patent has to do with controllers for connecting calls between a packet network, such as a VoIP network, and a circuit-switched network, such as the Public Switched Telephone Network (PSTN). Based on this, a POSA at the time of the 113 patent filing would have been an engineer with at least a bachelor s degree in electrical engineering, computer science, or a related field, or equivalent experience of at least three years of working in field of telecommunications or networking. 22. Unless otherwise specified, when I mention a POSA or someone of ordinary skill, I am referring to someone with at least the above level of knowledge and understanding. 23. Based on my experiences, I have a good understanding of the capabilities of a person of ordinary skill in the relevant field. Indeed, in addition to being a person of at least ordinary skill in the art, I have worked closely with many such persons over the course of my career. 24. Although my qualifications and experience exceed those of the hypothetical person having ordinary skill in the art defined above, my analysis and opinions regarding the 113 patent have been based on the perspective of a person 9. CISCO SYSTEMS, INC. Ex Page 10

11 of ordinary skill in the art in the late 1990s through mid-2000 time frame. 25. My opinions regarding the level of ordinary skill in the art are based on, among other things, the content of the 113 patent, my years of experience in the field of network-based telecommunications, my understanding of the basic qualifications that would be relevant to a POSA in the relevant area, and my familiarity with the backgrounds of colleagues and co-workers, both past and present. 26. My opinions herein regarding the person of ordinary skill in the art and my other opinions set forth herein would remain the same if the person of ordinary skill in the art were determined to have somewhat more or less education and/or experience than I have identified above. B. Prior Art 27. I understand that the law provides categories of information that constitute prior art that may be used to anticipate or render obvious patent claims. To be prior art to a particular patent under the relevant law, a reference must have been made, known, used, published, or patented, or be the subject of a patent application by another, before the priority or invention dates of the patent. I also understand that the POSA is presumed to have knowledge of the relevant prior art. 28. As discussed below, I understand that the Petitioner has determined that the challenged claims of the 113 patent are entitled to a May 4, 2000 priority 10. CISCO SYSTEMS, INC. Ex Page 11

12 date. However, I also understand that Petitioner has alleged the 113 patent may be entitled to a June 1999 priority date, my analysis is the same under either date. C. Claim Interpretation 29. I understand that, in IPR, the claim terms are to be given their broadest reasonable interpretation (BRI) in light of the specification. See 37 C.F.R (b). It is also my understanding that [u]nder a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the time of the invention. MPEP The presumption that a term is given its ordinary and customary meaning may be rebutted by the applicant by clearly setting forth a different definition of the term in the specification. In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1028 (Fed. Cir. 1997). In performing my analysis and rendering my opinions, I have interpreted the claim terms by giving them the ordinary meaning they would have had to a POSA reading the 113 patent around the time of its earliest priority filing date (May 4, 2000) and in light of its specification and file history. D. Legal Standards for Anticipation & Obviousness 30. I have been provided the following instructions from the Model Patent Jury Instructions for the Northern District of California (July 16, 2014) for 11. CISCO SYSTEMS, INC. Ex Page 12

13 anticipation, and instructions from the Federal Circuit Bar Association Model Instructions regarding obviousness, which is reproduced in part below. I apply this understanding in my analysis, with the caveat that I have been informed that the Patent Office will find a patent claim invalid in IPR if it concludes that it is more likely than not that the claim is invalid (i.e., a preponderance-of-the-evidence standard), which is a lower burden of proof than the clear-and-convincing standard that is applied in United States district court (and described in the jury instruction below): 4.3a1 ANTICIPATION A patent claim is invalid if the claimed invention is not new. For the claim to be invalid because it is not new, all of its requirements must have existed in a single device or method that predates the claimed invention, or must have been described in a single previous publication or patent that predates the claimed invention. In patent law, these previous devices, methods, publications or patents are called prior art references. If a patent claim is not new we say it is anticipated by a prior art reference. The description in the written reference does not have to be in the same words as the claim, but all of the requirements of the claim must be there, either stated or necessarily implied, so that someone of ordinary skill in 12. CISCO SYSTEMS, INC. Ex Page 13

14 the field of [identify field] looking at that one reference would be able to make and use the claimed invention. Here is a list of the ways that [alleged infringer] can show that a patent claim was not new [use those that apply to this case]: [ if the claimed invention was already publicly known or publicly used by others in the United States before [insert date of conception unless at issue];] [ if the claimed invention was already patented or described in a printed publication anywhere in the world before [insert date of conception unless at issue]. [A reference is a printed publication if it is accessible to those interested in the field, even if it is difficult to find.];] [ if the claimed invention was already made by someone else in the United States before [insert date of conception unless in issue], if that other person had not abandoned the invention or kept it secret;] [ if the claimed invention was already described in another issued U.S. patent or published U.S. patent application that was based on a patent application filed before [insert date of the patent holder s application filing date] [or] [insert date of conception unless at issue];] 13. CISCO SYSTEMS, INC. Ex Page 14

15 [ if [named inventor] did not invent the claimed invention but instead learned of the claimed invention from someone else;] [ if the [patent holder] and [alleged infringer] dispute who is a first inventor, the person who first conceived of the claimed invention and first reduced it to practice is the first inventor. If one person conceived of the claimed invention first, but reduced to practice second, that person is the first inventor only if that person (a) began to reduce the claimed invention to practice before the other party conceived of it and (b) continued to work diligently to reduce it to practice. [A claimed invention is reduced to practice when it has been tested sufficiently to show that it will work for its intended purpose or when it is fully described in a patent application filed with the PTO].] [Since it is in dispute, you must determine a date of conception for the [claimed invention] [and/or] [prior invention]. Conception is the mental part of an inventive act and is proven when the invention is shown in its complete form by drawings, disclosure to another or other forms of evidence presented at trial.] (Model Patent Jury Instructions for the Northern District of California at 30-31, 4.3a1 (July 16, 2015).) Furthermore, it is my understanding that [a] claim is anticipated only if each and every element as set forth in the claim is found, either 14. CISCO SYSTEMS, INC. Ex Page 15

16 expressly or inherently described, in a single prior art reference. Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987). 4.3a2 STATUTORY BARS A patent claim is invalid if the patent application was not filed within the time required by law. This is called a statutory bar. For a patent claim to be invalid by a statutory bar, all of its requirements must have been present in one prior art reference dated more than one year before the patent application was filed. Here is a list of ways [alleged infringer] can show that the patent application was not timely filed: [choose those that apply] [ if the claimed invention was already patented or described in a printed publication anywhere in the world before [insert date that is one year before effective filing date of patent application]. [A reference is a printed publication if it is accessible to those interested in the field, even if it is difficult to find.];] [ if the claimed invention was already being openly used in the United States before [insert date that is one year before application filing date] and that use was not primarily an experimental use (a) controlled by the inventor, and (b) to test whether the invention worked for its intended purpose;] 15. CISCO SYSTEMS, INC. Ex Page 16

17 [ if a device or method using the claimed invention was sold or offered for sale in the United States, and that claimed invention was ready for patenting, before [insert date that is one year before application filing date]. [The claimed invention is not being [sold] [or] [offered for sale] if the [patent holder] shows that the [sale] [or] [offer for sale] was primarily experimental.] [The claimed invention is ready for patenting if it was actually built, or if the inventor had prepared drawings or other descriptions of the claimed invention that were sufficiently detailed to enable a person of ordinary skill in the field to make and use the invention based on them.];] [ if the [patent holder] had already obtained a patent on the claimed invention in a foreign country before filing the original U.S. application, and the foreign application was filed at least one year before the U.S. application.] For a claim to be invalid because of a statutory bar, all of the claimed requirements must have been either (1) disclosed in a single prior art reference, (2) implicitly disclosed in a reference to one skilled in the field, or (3) must have been present in the reference, whether or not that was understood at the time. The disclosure in a reference does not have to be in the same words as the claim, but all the requirements must be there, either described in enough detail or necessarily implied, to enable someone of ordinary skill in the field of [identify 16. CISCO SYSTEMS, INC. Ex Page 17

18 field] looking at the reference to make and use the claimed invention. (Model Patent Jury Instructions for the Northern District of California at 32, 4.3a2 (July 16, 2015).) 4.3c OBVIOUSNESS Even though an invention may not have been identically disclosed or described before it was made by an inventor, in order to be patentable, the invention must also not have been obvious to a person of ordinary skill in the field of technology of the patent at the time the invention was made. [Alleged infringer] may establish that a patent claim is invalid by showing, by clear and convincing evidence, that the claimed invention would have been obvious to persons having ordinary skill in the art at the time the invention was made in the field of [insert the field of the invention]. In determining whether a claimed invention is obvious, you must consider the level of ordinary skill in the field [of the invention] that someone would have had at the time the [invention was made] or [patent was filed], the scope and content of the prior art, and any differences between the prior art and the claimed invention. Keep in mind that the existence of each and every element of the claimed invention in the prior art does not 17. CISCO SYSTEMS, INC. Ex Page 18

19 necessarily prove obviousness. Most, if not all, inventions rely on building blocks of prior art. In considering whether a claimed invention is obvious, you may but are not required to find obviousness if you find that at the time of the claimed invention [or the patent s filing date] there was a reason that would have prompted a person having ordinary skill in the field of [the invention] to combine the known elements in a way the claimed invention does, taking into account such factors as (1) whether the claimed invention was merely the predictable result of using prior art elements according to their known function(s); (2) whether the claimed invention provides an obvious solution to a known problem in the relevant field; (3) whether the prior art teaches or suggests the desirability of combining elements claimed in the invention; (4) whether the prior art teaches away from combining elements in the claimed invention; (5) whether it would have been obvious to try the combinations of elements, such as when there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions; and (6) whether the change resulted more from design incentives or other market forces. To find it rendered the invention obvious, you must find that the prior art provided a reasonable expectation of success. Obvious to try is not sufficient in unpredictable technologies. 18. CISCO SYSTEMS, INC. Ex Page 19

20 In determining whether the claimed invention was obvious, consider each claim separately. Do not use hindsight, i.e., consider only what was known at the time of the invention [or the patent s filing date]. In making these assessments, you should take into account any objective evidence (sometimes called secondary considerations ) that may shed light on the obviousness or not of the claimed invention, such as: (a) Whether the invention was commercially successful as a result of the merits of the claimed invention (rather than the result of design needs or market-pressure advertising or similar activities); (b) Whether the invention satisfied a long-felt need; (c) Whether others had tried and failed to make the invention; (d) Whether others invented the invention at roughly the same time; (e) Whether others copied the invention; (f) Whether there were changes or related technologies or market needs contemporaneous with the invention; (g) Whether the invention achieved unexpected results; (h) Whether others in the field praised the invention; 19. CISCO SYSTEMS, INC. Ex Page 20

21 (i) Whether persons having ordinary skill in the art of the invention expressed surprise or disbelief regarding the invention; (j) Whether others sought or obtained rights to the patent from the patent holder; and (k) Whether the inventor proceeded contrary to accepted wisdom in the field. Federal Circuit Bar Association Model Jury Instructions 4.3c (2014); MPEP I am also informed that the United States Patent Office supplies its examining corps with a Manual of Patent Examining Procedure that provides exemplary rationales that may support a conclusion of obviousness, including: (a) Combining prior art elements according to known methods to yield predictable results; (b) Simple substitution of one known element for another to obtain predictable results; (c) Use of known technique to improve similar devices (methods, or products) in the same way; (d) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results; 20. CISCO SYSTEMS, INC. Ex Page 21

22 (e) Obvious to try choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; (f) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; or (g) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP I apply these principles in my analysis below. III. TECHNOLOGY BACKGROUND 32. In the mid-1990s, it became clear to the communications industry that the packet-switched Internet and circuit-switched telephone networks were headed for convergence. Ex at 1-2. Video conferencing and audio conferencing had been in use in universities and research labs for years. The International Telecommunication Union ( ITU ) and European Telecommunications Standards Institute ( ETSI ) were working on the H.323 standards family for audio and video calling that were published in Ex. 1017, 3-4. The Internet Engineering Task Force ( IETF ) was working on the SIP standards family published in Ex at 1-2. The mobile telephony industry began consideration of a future all IP 21. CISCO SYSTEMS, INC. Ex Page 22

23 mobile network that would be eventually called the Internet Multimedia Subsystem", or IMS. Ex In the late-1990s, technology was being developed that allowed embedded web servers to be integrated into many common items, for example, web cams, refrigerators, vending machines, building automation, energy management systems, industrial controls, even cars. See Ex Telephony was moving rapidly beyond plain-old-telephone-services (POTS) and into service creation environments using tools like CAMEL starting from 3GPP Release 96 and into its third release in Ex The Advanced Intelligent Network (AIN) service model used by traditional telecom carriers had reached a very high level of maturity (perhaps approaching stagnation) and the telecom companies were looking to the Internet to deliver innovation including new services and revenues. Ex at col. 2:7-4:42. Companies like Net2Fone were already using the Internet as a long-distance toll-bypass service popular for international callers. Ex at 6. The PacketCable consortium began developing an IP-based architecture for delivering telephony services across the cable networks, but knew they would need to integrate services with those of legacy carriers. Ex at 1, The WebIN project at Hewlett Packard incorporated much research in the area into a cohesive whole that included the use of web servers to control and create new Advanced Intelligent Networks ( AIN ) services and to integrate 22. CISCO SYSTEMS, INC. Ex Page 23

24 technologies into a combined architecture they called Nexus. Ex at 1-5, Figs. 2-4; 1036, Colin Low of Hewlett Packard Laboratories in Bristol, United Kingdom, documented WebIN and Nexus in a series of papers published in the mid 1990 s including Integrating Communication Services and The Internet Telephony Red Herring that were widely read. Ex. 1010; Ex In the mid-to-late 1990s, other companies, including Alcatel, Lucent, Siemens, Nortel, and many others had similar research projects, several of which are described in RFC 2458, an archival series document from the Internet Engineering Task Force (IETF) in Ex at 1-8. Indeed, the IETF had two working groups devoted to service-level interaction between the Internet and the AIN. The PINT group looked at connecting the AIN and circuit-switched voice to new Internet-driven services, while the SPIRITS group examined the opposite question of accessing legacy AIN services from the Internet. Ex at 1-8. Simultaneously, the SIP, SIPPING, SIGCOMM, and MMUSIC working groups specified detailed protocols for real-time communications (voice and video) and for the transport of AIN SS7 signals over the Internet. Ex at 1-8, In 2000, around the time of the earliest priority date of the 113 patent, the telecommunications industry was in a period of rapid innovation and frenetic activity. By the time of the 113 patent s earliest priority date, there was already a large body of published work, including numerous international standards and filed 23. CISCO SYSTEMS, INC. Ex Page 24

25 patent applications, pertaining to the subject matter of the 113 patent. 37. By May 2000, the state of the art of network-based telecommunications was well-developed including service providers implementing basic and sophisticated telephony features in circuit-switched, VoIP, and mixed, networks, using centralized servers, and with subscribers directly adding, modifying, and/or controlling such features by interfacing with service provider websites over the Internet and the World Wide Web. Ex at col. 1:30-2:55, 4:55-5:10, Figs. 4, 5, 7, 8. A. Circuit-Switched and Packet-Switched Networks 38. With the rise of the Internet in the early 1990s, telecom providers began to develop network designs that would allow the telecom industry to evolve from providing simple call services to advanced Internet-based call services. Ex at 1-2; Ex at 14-16, 64-71; Ex at Many advances in telecom network design that were developed and implemented in the early 1990s paved the way for the modern telecom we use today. Two such advances were (1) moving from switch based service control to distributed service control using servers, and (2) connecting the circuit-switched public switched telephone network to packet-switched networks that were capable of transmitting data using new communication protocol. Ex at 3-5; Ex at 64-76; Ex at 25-51; Ex at CISCO SYSTEMS, INC. Ex Page 25

26 Circuit-switched networks rely on a dedicated channel that establishes a connection between two nodes through numerous switches. A telephone call is initiated with a call request signal that is routed through the telephone network to an edge switch, which causes the dialed telephone to ring. Ex at When a user picks up the telephone, a call accept signal is sent which causes the telephone network to establish the circuit for carrying the call participants voices (i.e. media). Ex at The telephone call signaling and media generally take different paths through the telephone network. Ex at Each switch routes the call on its way to the proper recipient, eventually creating a circuit that remains connected throughout the call. Ex.1011 at 58-63, Fig. 2-34; Ex at 15. When the user hangs up, the call ends and the circuit is disconnected. One disadvantage of this model is that no other traffic can use the same switch path while the call is being transmitted, so large numbers of switches must be built in order to accommodate more traffic. Ex at 58-64; Ex at 15. Also, if a particular switch fails, calls will be disconnected or will not be able to get to the right location. Ex at 58-64; Ex at 15. The figure below is a graphical illustration of a circuit-switch telephone network, in this case the Public Switched Telephone Network ( PSTN ). Ex at Fig CISCO SYSTEMS, INC. Ex Page 26

27 39. Telephone services, including voice based telephone calls and fax messaging, is generally carried out over the PSTN, which is the backbone of the telephone system in the United States. Ex at 41-43; Ex at The PSTN consists of a global network of circuit switches arranged in a geographical hierarchy. Ex at 41-43; Ex at In the 1990s most of the connections to the PSTN were made using last-mile copper connections that transmitted analog signals. Ex at 41-43; Ex at These connections were routed directly to a central office or edge switch. Ex. 1037, In the PSTN, switches known as tandem switches or class 3 switches serve to 26. CISCO SYSTEMS, INC. Ex Page 27

28 interconnect geographical regions and edge switches or class 5 switches connect between tandem switches and end-user devices, like telephones, within a local geographic area. Ex at 41-43, 62-63; Ex at 18; Ex at Packet-switched networks rely on a different set of technologies to transmit data. In a packet-switched network, data, including a voice call, is digitized and transmitted in small chunks called packets. Ex at Each packet includes information called a header address telling the packet where its final destination is. Ex at 15; Ex at Unlike a circuitswitched network, the packets that make up a voice signal can follow different paths, directed by devices called routers, to the same destination and that path is not dedicated to the particular transmission. At the receiving end, the packets are reassembled to transmit the signal. Ex at Advantageously, packetswitched networks do not rely on direct connections. Ex at 18; Ex at Nor are packet-switched networks affected by failure of a particular line, because the packets can be rerouted. The Internet is an example of a packetswitched network and it operates in accordance with the Internet Protocol (IP) and the Transmission Control Protocol (TCP). Ex at The combination of the IP and TCP protocols is known as the TCP/IP protocol stack. Ex at A diagram comparing packet- and circuit switched networks is reproduced below. Ex at 59, Fig CISCO SYSTEMS, INC. Ex Page 28

29 B. Telecom Companies Develop More Advanced Networks In Order to Offer More Advanced Services 41. In the early 1990s the large majority of telecommunication networks converted from analog to digital technology when the Integrated Services Digital Networks (ISDN) protocol was adopted. Ex at 1-2. At the time, ISDN was a new digital signal protocol that, among other improvements, allowed data to be transmitted over the same lines as voice. Ex at 24-25; Ex at 68-67; Ex at 35-37, Switches in the PSTN became stored program control switches, which could store and execute software to help route calls and provide services. Ex at 8-9, 13, Also, digital signaling improved performance and enabled more advanced services. Ex at CISCO SYSTEMS, INC. Ex Page 29

30 42. In the mid-1990s telecommunications providers were exploring ways to distribute call processing to allow call services to be offered over multiple network types, for example, circuit-switched and packet-switched networks. Ex at 1-2; Ex at 1(Abstract), 1:17-2:6; Ex at 5-6. In addition to the ISDN/PSTN, ATM networks were being developed to provide telecommunications services, and Internet telephony was being standardized. Ex. 1017, Ex At the time, it was recognized many calls would span both circuit and packet networks, and that it was important to provide consistent services across networks. Ex at 1-2; Ex at 1(Abstract), 1:17-2:6. A common approach was to provide call control and services in servers that were distinct from switches or routers. For example, Internet telephony standard H.323 defined a protocol for communicating with a server for setting up calls (Ex at 51-65) and for causing packet voice gateways to route calls in real-time. Ex at 15. Using servers distinct from the switches also reduced the effort and time required to develop and deploy new software to the network. Ex at Signaling System No. 7 (SS7) was a protocol widely deployed in the early 1990 s that was designed for services that were implemented in servers separated from the telecommunication switches and used to support distributed network architecture. Ex at 49-53; Ex at 32; Ex at 1-2. The Transactions Capability Application Part (TCAP) protocol, part of the SS7 suite of 29. CISCO SYSTEMS, INC. Ex Page 30

31 protocols, supported the invocation of processing in these servers. Ex at 9-14; Ex at Services included those that required straight-forward data based lookups such as 800-number services and more advanced services that required data acquisition and processing, such as calling card services. Ex at The PSTN was operated in accordance with the ITU standards which provide for the global telephone numbering scheme, as well as the signaling and data protocols used in the PSTN. Ex. 1021; Ex at 1-3. Ex at 590. The SS7 signaling protocol, one such standard, was used for, among other things, call setup and teardown in the PSTN. Ex at 9; Ex At the time, a commonly known design constraint in telecommunications services was that feature control functionality needed to be distributed from edge switches (called local exchanges in Europe) into centralized, intelligent servers to support more sophisticated features, provide scalability to the growing number of features, and allow such features to be offered over more than one network type. Ex at 8-9. To formalize this distributed telecommunication architecture, and achieve advantages such as rapid and uniform implementation of various telephony features, a new type of network architecture, termed the Intelligent Network, or IN, or Advanced Intelligent Network AIN was introduced and standardized by the ITU in the early 1990s. Ex at 1; Ex. 30. CISCO SYSTEMS, INC. Ex Page 31

32 1015 at The IN architecture defined various functions that could then be mapped onto physical deployments. The service switching function (SSF) was designed to recognize the required invocation of a service, and to pass control of call processing to the service control function (SCF), a program that implemented the service. The SSF was typically implemented in a telecommunications switch, called the service switch point (SSP), while the SCF was implemented in a processor outside the switch called a service control point (SCP). Ex at 8-9, 25, Many of the services were call routing services, for example number translating services. Ex at 25; Ex at 1-2. As part of IN telecommunications, feature sets (also known as called capability sets (CS)) were being standardized in the 1990s to allow for widespread deployments of services such as call blocking, call forwarding, and many types of routing services. Ex at 29, 45-48, Fundamental to the IN was the distribution of the intelligent feature control functionality outside an edge switch (local exchange) and into the centralized processor SCP located in higher-level switches. Ex at While the ITU standards themselves gave designers flexibility as to whether to implement the SSF in an edge switch (local exchange) or a tandem switch (called a transit exchange in Europe), it was well understood that, in practice, the SSF was 31. CISCO SYSTEMS, INC. Ex Page 32

33 often implemented in a tandem switch. Ex. 1021; Ex at 30-31, 34-36, For example, as evidenced by the Intelligent Networks textbook (Ex. 1015), published in 1994, in a typical IN setup, the intelligent control logic for telephony features (SCF) is programmed in the centralized SCP processor which communicates directly with one or more SSPs in tandem switches (transit node), via the TCAP protocol within the standardized suite of SS7 signaling protocols, when the SSP recognizes an indicator that one of such features should be activated (Ex at 35, Fig. 2.5 reproduced below): Ex at 30-31, 34-36, The International Telecommunications Union Recommendation 32. CISCO SYSTEMS, INC. Ex Page 33

34 Q.1215 (Oct. 1995, Ex at 8) provides another helpful illustration of an IN implementation using SS7 protocol signaling: illustration: 50. The Low Reference (Ex at 2) provides another helpful 33. CISCO SYSTEMS, INC. Ex Page 34

35 C. Telephone Services on the Advanced Network 51. By 1990, SS7 was widely deployed as the signaling protocol within telecommunication networks. Ex at 1. And as shown in the figures above, SS7 signaling was used throughout IN implementations. SS7 was a suite of protocol. Ex at 32 (SS7 is also known as CCSS No. 7). One important part of SS7 was the TCAP protocol which was designed to support services that were implemented in servers that were separate from the telecommunication switches. Ex at 32, 57-61; Ex at Services included those that required 34. CISCO SYSTEMS, INC. Ex Page 35

36 straight-forward data base lookups such as 800-number services and more advanced services that required data acquisition and processing, such as calling card services. Ex at Branch calling was another feature that was considered important at the time. Branch calling allowfs a call to a single number to cause calls to be delivered to multiple terminals in parallel. This causes multiple telephones or terminals to ring or give other incoming call alerts. A called party may answer any one of the alerting devices to be connected to the caller. Branch calling from a local exchange or Private Branch Exchange was a popular service for businesses. It was extended to a network-based service in the in the 1990s. Ex at 1 (Abstract), 1:38-44, 1:52-58, 2:23-32, 6:39-49; Ex at col. 2: For many years, starting in the 1970s, call routing-based features were available in telecommunication networks and were widely used by customers. Ex at 60-61, 114. For example, users could dial star codes from their telephones to invoke features like call blocking and call forwarding. Ex at 60-61, 114. These services were provided by servers that were separate from the telecommunication switches and resided inside the telecommunication network. Ex at 32, 57-61; Ex at n 54. In the mid-to-late 1990s, as more advanced network architectures were implemented, it was recognized that there was a benefit to implementing IN 35. CISCO SYSTEMS, INC. Ex Page 36

37 services or IN-type services with Internet telephony and in networks that combine Internet telephony with standard PSTNs. This was explicitly demonstrated with the Session Initiation Protocol (SIP) (Ex at 4-5), and in more general settings. Ex at col. 1:58-60, 2:25-35, 2:52-60, 4: It was also recognized that it was beneficial to provide a convenient method for subscribers to manage their own services, either by adding new services, or changing the parameters and settings for existing services. Many of these approaches leveraged the popularity and ease of the World Wide Web to provide web-based access to telecommunication controllers. Subscribers could use a web browser to configure services directly on the controller. The controller would then use these configurations to provide services to the subscribers when calls were placed. These controllers could work in Internet, circuit-switched, or mixed environments. Ex at col. 1:66-2:8, 3:31-38, 3:39-58,5:39-7:10, 7:42-61; Ex at col. 1:50-2:8, 2:12-26, 3:36-4:4, 4:41-5:2, 8:59-63, 10:30-48; Ex at Abstract, col. 4:45-58, 5:3-42, 6:4-8, 6:23-29; Ex at col. 4:24-38, 7:15-8:5, 8:12-29, 9:34-10:5, 12:9-13:20, 14:31-15:20; Ex at col. 1:5-8, 2:29-3:14, 3:15-4:3, 5:16-25, 6:21-7:5, 9:15-10:8, 10:9-12:11,17: It was well understood at the time that subscribers could use a web browser to configure telephony features directly on such centralized, intelligent servers (e.g. SCP) and that the intelligent server would use these configurations to 36. CISCO SYSTEMS, INC. Ex Page 37

38 provide services to the subscribers when calls were placed. 57. For example, as evidenced by the prior art international patent publication WO97/23988 (Ex. 1025), published in 1997, it was well known for a service provider to allow their subscribers/service customers to directly view, add, and/or modify, his or her own telephony features (e.g. call routing settings based on time of day or day of week, voice mail settings, etc.) by interacting with various user-friendly web pages on his or her personal computer (e.g. terminals 205, 206 (FIG. 2 below)): The service provider allows access to an intelligent network 201 that consists of a plurality of interconnected specialized telecommunications devices and a controlling computer... The intelligent network is also connected to the Internet 202, that provides access to computer terminals 205 and [that] operate World- Wide Web browsing software, [and] communicate[s] over the Internet using established procedures identified as the Hyper Text Transfer Protocol (HTTP). Ex at col. 5:16-27, 9:15-12: CISCO SYSTEMS, INC. Ex Page 38

39 58. As further evidenced by this publication, it was also well known for the service provider s web server (e.g. WWW server 303 (FIG. 3 below)), interacting directly with the subscriber s web browser and the processor (e.g. master processor 301) of the intelligent server (e.g. SCP 201 (FIGS. 2 (above) and 3 (below)), to enable such subscriber to affect the operations performed by the intelligent server in response to an incoming call, by modifying the subscriber s personal profile stored in a database in the intelligent server: The intelligent network 201, shown in Figure 2, is detailed in Figure 3. The intelligent network 201 comprises a master processor A service subscriber operating terminal 205, has a personal profile stored on a database held on the master processor The World Wide Web server 303 can communicate with the master processor 301 in order to arrange transmission of [subscriber personal profile] data over the Internet. Furthermore, the World Wide Web server 303 enables the user of the terminal 205 which is connected to the Internet 202, to affect the operations performed by the Intelligent network 201 in response to an incoming call, by modifying their respective personal profile... The actual routing of the [voice] data is controlled according to instructions operating on the master processor 301. Ex at col. 5:28-30, 6:21-7:22, 6: CISCO SYSTEMS, INC. Ex Page 39

40 59. As further evidenced by, for example, U.S. Pat. Nos. 6,463,145 to O Neal et al., filed in January 1999 (Ex. 1026) and 6,445,694 to Swartz, filed in March 1998 (Ex. 1027), it was also widely understood that web pages provided an easy-to-use interface for subscribers to directly turn on or off, add, and/or modify, sophisticated telephony features (e.g. follow-me call routing (308, FIG. 4 below), selective call blocking (282, FIG. 6 below), route to voice mail (282, FIG. 6 below), etc.) provided to them by their service provider: 39. CISCO SYSTEMS, INC. Ex Page 40

41 60. Ex at Figs. 3-4, 6, col. 11:13-34, 52-12:9; 14:26-50; 16: CISCO SYSTEMS, INC. Ex Page 41

42 Ex at Figs. 2-3, 5-7, 9-10, col. 3:39-58; 5:39-7:10. D. Voice Over IP ( VoIP ) 61. The technology that allows telecommunications to be transmitted over an IP network is generically referred to as Voice over IP (VoIP). In the mid-1990s, telecommunications companies were exploring ways to distribute call processing to allow services to be offered over multiple network types. Ex at 3-5; Ex at 1:16-3:10. For example, in addition to circuit-switched networks (e.g. PSTN, ISDN), packet-switched networks (e.g. ATM) were being developed to provide telecommunications services, and Internet telephony/voip was being standardized 41. CISCO SYSTEMS, INC. Ex Page 42

43 (for example the H.323, SIP RFCs). Ex. 1017; Ex. 1018; see also Ex at 3-5. It was well understood that calls would span both circuit and packet switched networks, and that it was important to provide consistent services across networks. Ex at One early VoIP standard, H.323, defined interfaces to an intelligent server for setting up calls (H.225), and for configuring packet voice gateways to route calls in real-time (H.245). Exs ; Ex The H.323 standard also specified how to interwork with the well-known SS7 suite of protocols so calls could span both packet and circuit-switched networks. Ex As these architectures were developed, the benefits of implementing many of the ITU standardized IN telephony features within VoIP, and in networks that combine VoIP with the PSTN, were widely recognized. Ex It was recognized in the late-1990s that data networks, as opposed to voice networks, would ultimately be able to have far greater network bandwidth and efficiency than the traditional circuit-switched PSTNs. Ex at col. 1:26-27; Ex at Because of the substantial growth of bandwidth availability in the data network, cost for making calls using Voice over Internet Protocol ( VoIP ) telephones became drastically cheaper than traditional long-distance calling for providers and consumers, driving a proliferation of VoIP telephone usage. Ex at col. 1:40-47; Ex at 21; Ex at VoIP technology also had 42. CISCO SYSTEMS, INC. Ex Page 43

44 the benefit of reducing PSTN switch traffic by offloading traditional calls to the Internet. Ex at col. 2: The Net2Phone was one early VoIP provider. In its May 1999 IPO prospectus, Net2Phone described itself as: [A] leading provider of voice-enhanced Internet communication services to individuals and businesses worldwide. Our services enable our customers to make low-cost, high-quality phone calls over the Internet using their personal computers or traditional telephones. Ex at 6. As of March 31, 1999, Net2Phone was serving approximately 250,000 active customers and handling over 20 million minutes of use per month. Ex at 6. VoIP technology was widely used and well-known in the late-1990s. 65. Before the earliest priority date of the 113 patent, the state of the art pertinent to the 113 patent included telephony communications over circuitswitched networks, such as the PSTN or the Integrated Services Digital Network ( ISDN ), and over the Internet, such as VoIP using the H.323 or Session Initiation Protocols ( SIP ) protocol. Ex. 1017; Ex For example, the 113 Patent describes that the PSTN, including its edge switches/central offices and tandem switches, signaling protocols used within circuit switched networks (e.g. SS7 ), and voice over IP products, messages, and protocols (e.g. H.323), were known in the prior art. Ex at col. 1:30-2: CISCO SYSTEMS, INC. Ex Page 44

45 IV. THE 113 PATENT A. Overview of the 113 Patent 66. The 113 patent relates to generally to systems and methods for allowing telephone service subscribers to select call features using the Internet and for interfacing the circuit-switched PSTN and packet-switched VoIP networks. Ex at Abstract, col. 1:23-25, Fig The 113 Patent acknowledges that prior art systems existed to allow a telephone service subscriber to add, modify, and/or control, the telephony features of his or her own telephone service using the Internet. Ex at col. 1:30-37, 1:57-60, 2:34-39, 2: Call features that the 113 patent acknowledges were well known include conditional call blocking, call forwarding, call altering, time of day conditions, day of week conditions, follow-me, caller recognition/password, caller ID, call screening/retrieval from voice mail, speed dialing, interactive voice response, and speech recognition. Ex at col. 5:27-34, 2: The 113 Patent also acknowledges that Voice Over Internet Protocol (VoiP) products emerging that provide better user interfaces and control. Ex at col. 2: The 113 patent claims that there were problems with these systems related to either the location of where the call features were applied in the terminating central office edge switches of telephone service providers or through subscriber edge devices, such as phones or public branch exchanges (PBX). Ex. 44. CISCO SYSTEMS, INC. Ex Page 45

46 1001 at col. 1:59-2:16, 2:17-23, 2: These services were also the type of webbased toll systems that rely upon the toll network through the use of 800 numbers. Ex at col. 1:41-44, 2:23-29, 3: The 113 patent s alleged invention was to provide web-based call selection features through a controller connected to a tandem switch rather than an edge switch, to provide the telephony features. Ex at col. 2:1-3, 3: As shown in figure 2, the tandem access controller (TAC 10) controlled call features the PSTN Tandem Switches: 71. The 113 patent discloses that its controller and system uses known technologies and conventional computer and telephony equipment. Ex at col. Background, 1:30-2:54, 2:57-3:62, 4:35-54, 5:32-36, 6: CISCO SYSTEMS, INC. Ex Page 46

47 B. Interpretation of Claim Limitations in the 113 Patent 72. I understand that in interpreting the claims of the 113 patent, the words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. And that [t]he plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the time of the invention. The ordinary and customary meaning of a term may be evidenced by a variety of sources, including the words of the claims themselves, the specification, drawings, and prior art. MPEP Petitioners apply the plain and ordinary meaning of the claims in view of the 113 patent s claims, specification and file history, and I agree. I provide additional explanation of the scope of the plain and ordinary meaning for certain claim terms in the analysis below. For the sake of clarity, I provide additional explanation of the scope of the plain and ordinary meaning of the claim terms call data, control criteria, and switching facility as set forth below. 1. Plain and ordinary meaning of call data 73. In my opinion, call data as used in the 113 patent is a term whose plain and ordinary meaning is readily understandable by a POSA. The independent petitioned claims of the 113 patent use the term call data. Several claims that depend from those claims provide examples of what is included in call data. For example claims and , which depend from petitioned claims 143 and 46. CISCO SYSTEMS, INC. Ex Page 47

48 163 respectively, provide that call data can include a call request, a telephone number, an IP address, or a VoIP signaling message. Ex at claims , In light of the specific examples of the 113 patent s dependent claims, I understand that call data as used in the 113 patent would include at least a call request, a telephone number, or an IP address, a VoIP signaling message. Ex at claims , These types of call data are consistent with my understanding of the plain and ordinary meaning of call data. Ex at Plain and ordinary meaning of control criteria 75. In my opinion, control criteria as used in the 113 patent is a term whose plain and ordinary meaning is readily understandable by a POSA. The independent petitioned claims of the 113 patent use the term control criteria and several claims that depend from those claims provide examples of what is included in control criteria. Ex at claims 143, 163, , For example, claims 149 and 150 provide that control criteria include the selection of a telephone number or call feature. Ex at claims In light of the specific examples of the 113 patent s dependent claims, I understand that control criteria as used in the 113 patent would include at least the selection of a telephone number or a call feature. Ex at claims 143, 163, 47. CISCO SYSTEMS, INC. Ex Page 48

49 149-50, The types of control criteria identified above are consistent with my understanding of the plain and ordinary meaning of control criteria. 3. Plain and ordinary meaning of switching facility 77. Petitioned claims 38 and 65 of the 113 patent includes the term switching facility. Ex. 1001, cls. 38 and 65. Claims that depend from claim 65 provide examples of what a switching facility includes. For example, claims 90-93, which depend from petitioned claim 65, provide that the claimed switching facility is provided alternatively by a TDM switching matrix, an ATM switching matrix, a crosspoint switching matrix, or a VOIP switching matrix. Ex. 1001, cls In addition, during prosecution of the 113 patent s parent application no. 11/948,965, which has the same specification as the 113 patent, the applicant distinguishing over a prior art rejection based on amending the claims to include a switching facility. Ex. 1008, 68, 87 n.1. In its remarks explaining this amendment, application provided examples of what it meant by switching facility, including tandem switching facilities, and [a]ny point in the switching fabric of converging networks, also referred to in industry as a signal transfer point (STP), signal control point (SCP), session border controller (SBC), gateway, access tandem, class 4 switch, wire center, toll office, toll center, PSTN switching center, intercarrier connection point, trunk gateway, hybrid switch, etc. Ex at 87, n.1. It is my opinion that applicant s reference to the switching facility in industry 48. CISCO SYSTEMS, INC. Ex Page 49

50 terms indicates that applicant intended the plain and ordinary of switching facility to apply. Ex at 87, n.1. Based on the applicants arguments during prosecution of the 113 patent s parent application, it is my opinion that a POSA would understand the plain and ordinary meaning of switching facility when read in light of the claims, the specification, and the file history to include any point in the switching fabric of converging networks, such as: TDM switching matrices, ATM switching matrices, crosspoint switching matrices, VOIP switching matrices, tandem switching facilities, signal transfer points (STP), signal control points (SCP), session border controllers (SBC), gateways, access tandems, class 4 switches, wire centers toll offices, toll centers, PSTN switching centers, intercarrier connection points, trunk gateway, hybrid switches, etc. C. The Priority Claims of the 113 Patent 78. I understand that the 113 patent has a filing date of June 22, 2010, and a priority date of May 4, The 113 patent appears to claim priority to U.S. Patent No. 6,574,328, which was filed on May 4, The 113 patent claims to be a continuation of U.S. Patent No. 7,764,777 which is a division of U.S. Patent No. 7,324,635, which is a continuation in part of the 328 patent. 49. CISCO SYSTEMS, INC. Ex Page 50

51 V. OVERVIEW OF THE PRIOR ART The petitioned prior art references all relate to applying call features at a controller to route communications over one or more different networks, including both a circuit-switched and a packet-switched networks. A. Overview of Burger 79. U.S. Patent No. 6,353,660 to Burger et al. ( Burger ) issued March 5, 2002, from an application filed on March 2, Ex According to analysis provided to by attorneys for the petitioner, it is my understanding that Burger is prior art to the 113 patent under at least one of 35 U.S.C. 102(a), (b), or (e) because it was filed before the 113 patent s earliest priority date and issued as a patent more than a year prior to the 113 patent s later possible priority date. 80. Burger teaches call screening for calls routed via the Public Switched Telephone Network (PSTN) and a packet-switched network, such as the internet. Ex at Abstract, col. 1:50 2:38. Figure 1 illustrates Burger s ESP 60 which interfaces between the two networks: 50. CISCO SYSTEMS, INC. Ex Page 51

52 81. To use Burger s call screening techniques, the subscriber enters control criteria, such as a forwarding IP address or phone number, into a database stored by an enhanced services platform (ESP) connected to the PSTN and the packetswitched network. Ex at col. 9:50 67, 10:30 65, Figs. 4, 6, 8, 9, 11. Each record in the database also includes the subscriber s public telephone number. Ex at col. 9:50 67, 10:30 65, Figs. 4, 6, 8, 9, 11. The call features selected by the subscriber are then applied to calls placed to the subscriber. An excerpt from Figure 4 below is an example of how such call features might be applied to a call: 51. CISCO SYSTEMS, INC. Ex Page 52

53 82. When someone calls the subscriber s public telephone number via the packet network, the call is routed to the ESP, which retrieves the subscriber s forwarding IP address from the database using the subscriber s public telephone number. Ex at col. 9:50 67, 10:30 65, Figs. 6, 8, and 9, 1:55 61, 7:20 33, 11:30 32, Fig. 4 (206, 208), Fig. 5 (506, 508). Then the ESP places a call to the subscriber s forwarding IP address via the packet network. Ex at Abstract, col. 1:55 2:5, 7:33 8:26, 11:30 32, Fig. 4 (212, 214, 216, 220). As illustrated by another excerpt from Figure 4: 52. CISCO SYSTEMS, INC. Ex Page 53

54 83. If the subscriber doesn t answer the call to the forwarding IP address, the ESP retrieves the subscriber s forwarding phone number from the database using the subscriber s public telephone number. Ex at Abstract, col. 8:34 40, 11:30 32, 12:66 13:10, Fig. 4 (220), FIG. 11 (520), Fig. 15 (592). Then the ESP places a call to the subscriber s forwarding phone number via the PSTN and connects the subscriber for one-way or two-way communication with the caller. Ex at Abstract, col. 8:34 40, 11:30 32, 12:66 13:10, Fig. 4 (220), Fig. 11 (520), Fig. 15 (592). 53. CISCO SYSTEMS, INC. Ex Page 54

55 B. Overview of Archer 84. U.S. Patent No. 6,683,870, titled Method and System for Multicasting Call Notifications, was filed June 25, 1998 and issued January 27, 2004, to Archer ( Archer, Ex. 1004). Archer depends through divisionals to application no. 08/798,350, filed February 10, According to analysis provided to by attorneys for the petitioner, it is my understanding that Archer is prior art to the 113 patent under at least 35 U.S.C. 102(e), because it issued from an application filed prior to the earliest claimed priority date of the 113 patent. 85. Archer relates to telephone services involving both circuit-switched networks (118, 136), like the PSTN, and VoIP-capable packet networks (130), like the Internet. Ex at Figs. 2, 6, col. 2: Archer s Figure 2 illustrates its network architecture involving both circuit-switched and packet-switched networks: 54. CISCO SYSTEMS, INC. Ex Page 55

56 86. Archer teaches systems and methods that allow users to set call features for calls over the circuit network and packet network, including call forwarding and find-me-follow-me services. Ex at Figs. 2, 6, col. 2:26-51, 6: Archer teaches that users can set these call features by logging onto the Internet and changing settings in a call feature database (138). Ex at col. 7: When the user is called, the call request is received by the call feature server (128) connected to the packet network, which accesses the database (138) and then forwards the calls based on the settings in the database (138). Ex at col. 2:45-51, 8:57-9:9, Fig. 5. C. Overview of Chang 87. U.S. Patent No. 5,958,016, titled Internet-Web Link for Access to Intelligent Network Service Control, was filed July 13, 1997, and issued September 28, 1999, to Chang et al. ( Chang, Ex. 1005). According to analysis provided to by attorneys for the petitioner, it is my understanding that Chang is prior art to the 113 patent under at least 35 U.S.C. 102(e) because it is an issued patent that was filed prior to the earliest claimed priority date of the 113 patent. 88. Chang relates to a system for web-based user control of call features using the Intelligent Network features of the PSTN. Ex at col. 4:45-58, 7:9-16, Fig. 1. Figure 1 below illustrates the Intelligent Network disclosed by Chang: 55. CISCO SYSTEMS, INC. Ex Page 56

57 89. Chang shows that users access a webserver 25, 525 over the Internet to set call features in the service control point (SCP) 19 of the PSTN. Ex at col. 8:55-63, 11:9-12:30, 16:1-11, 22:33-49, Figs. 1, 5. Chang s SCP controls calls by coupling to both tandem switches (11 T ) and terminating central office edge switches 11 E through the service transfer point (STP) 15 using standard SS7 signaling. Ex at col. 8:23-9:7, 10:33-60, Fig. 1. D. Overview of Alexander 90. U.S. Patent No. 6,798,767, titled System and Method for Generating Multiple Line Appearances in a Communication Network, was filed November 16, 1999, and issued September 28, 2004, to Alexander et al. ( Alexander, Ex. 1006). 56. CISCO SYSTEMS, INC. Ex Page 57

58 According to analysis provided to by attorneys for the petitioner, I understand that Alexander is prior art to the 113 patent under at least 35 U.S.C. 102(e) because it is an issued patent that was filed prior to the filing date of the 113 patent. 91. Alexander relates to a call manager (26a, b) coupled to a packet network, such as the Internet (20, 30, 40), and a circuit switched network, like the PSTN (60). Ex at Figs. 1-2, Abstract, col. 2:55-3:7, 3: Alexander s Figure 1 illustrates this network architecture: 92. Alexander s call manager can be a computer (e.g., Fig. 2) executing software (e.g., Figs. 5A-5B). Alexander s call manager provides call forwarding 57. CISCO SYSTEMS, INC. Ex Page 58

59 features by routing incoming calls to additional devices associated with the call recipient. Ex at Figs. 2, 5A-B, col. 4:26-37, 7:6-15. Alexander s call controller maintains an alternate number list of devices associated with the call recipient (e.g., Figs. 4A-B) to which it forwards incoming call over either the packet network or the circuit switched network. Ex at Figs. 4A-B, col. 7:33-9:20. Users can access Alexander s call controller over the Internet using web browser to remotely access and edit the alternate number list. Ex at col. 12: Alexander s call controller (26) is coupled to switching facilities in the circuit switched network, including gateways (52, 64a, 64b), private branch exchanges (PBX, 50), and central offices (62a, b, c, and 66). Ex at Fig. 2, 3: Each of these switching facilities can connect to edge switches in the same or different geographic areas. Ex at Fig. 2, col. 3: For example, Alexander s Figure 2 (annotated below) shows that PBX (50) connects to other switching facilities, including the Dallas Central Office (62a) and Gateway (52), while the Dallas Central Office (62a) connections to other switching facilities Dallas Central Office (62b) and Long Distance Network (66). Ex at Fig. 2, col. 3: The PBX (50) and Dallas Central Office (62a) can also act as edge switches when they connect to end-user devices, such as telephones (54, 55, 68). 58. CISCO SYSTEMS, INC. Ex Page 59

60 95. The call manager disclosed in Alexander was also sold as a commercial product, originally developed by Selsius Systems, Inc. and then by Cisco after Cisco acquired Selsius. In a 1998 press release announcing the acquisition of Selsius Systems, Inc. by Cisco, Cisco noted that Selsius IP phones and call manager software will initially enable small and medium businesses and branch offices to migrate voice traffic onto packet data networks. Ex. 1038; Ex (emphasis added). E. Burger, Archer, and Chang, Are Analogous to the 113 Patent 96. I understand that to combine prior art references when evaluating validity, those references must generally be analogous. According to information provided to me by attorneys for the petitioner, I understand that to be analogous, the 59. CISCO SYSTEMS, INC. Ex Page 60

61 art must be in the same field of endeavor as the 113 patent or must be pertinent to the problems at which the 113 patent is directed. It is my opinion that each of the references used as grounds for unpatentability is analogous to the 113 patent and to each other. 97. Burger, Archer, Chang, and Alexander are in the same field of endeavor as the 113 patent, namely, the field of applying call features at a controller to route communications over one or more different networks. Burger, Alexander, and the 113 patent also have the same art classifications (370/352 and 379). Ex at 1; Ex at 1. Burger, Archer, Chang, Alexander, and the 113 patent also disclose call routing among packet-switched networks, like the Internet. Supra V; see also Ex. 1001; Exs Therefore, Burger, Chang, Archer, and Alexander are analogous to the inventions recited in the Petitioned Claims. 98. As set forth below for each combination of prior art, it is my opinion that it would have been obvious to a POSA in the late-1990s and early part of 2000 to consult and combine the teachings of the cited prior art references. VI. THE PETITIONED CLAIMS ARE UNPATENTABLE 99. Given the similarity of the Petitioned Claims, my analysis below groups similar claims together or refers to earlier explanations to avoid repetition. Independent claims 65 and 38 are nearly identical. Claim 38 is a method claim that recites steps that correspond to the functionality of the system in claim 65. In light 60. CISCO SYSTEMS, INC. Ex Page 61

62 of this similarity, I group claims 65 and 38 together. Claim 65 is presented first, as it is narrower than claim 38 and often encompasses the claimed subject-matter of claim 38. Likewise, independent claims 143 and 163 are nearly identical and addressed together. Differences between the claims are identified with italics in the claim limitations and addressed in the analysis below. Throughout my analysis I will incorporate earlier explanations by reference as appropriate Petition 1 - Ground 1: It is my opinion that claims 65 and 38 of the 113 patent are obvious over Burger in view of the knowledge of a POSA Petition 1 - Ground 2: It is my opinion that claims 65 and 38 of the 113 patent are obvious over Burger in view of Alexander Petition 1 - Ground 3: It is my opinion that claims 65 and 38 of the 113 patent are obvious over Archer in view of the knowledge of a POSA Petition 1 - Ground 4: It is my opinion that claims 65 and 38 of the 113 patent are obvious over Archer in view of Chang 104. Petition 2 - Ground 1: It is my opinion that claims , 149, 150, 163, and of the 113 patent are obvious over Burger in view of the knowledge of a POSA Petition 2 - Ground 2: It is my opinion that claims , 149, 150, 163, and of the 113 patent are obvious over Burger in view of Alexander. 61. CISCO SYSTEMS, INC. Ex Page 62

63 106. Petition 2 - Ground 3: It is my opinion that claims , 149, 150, 163, and of the 113 patent are obvious over Archer in view of the knowledge of a POSA. A. Independent Claims 65 and 38 (Petition 1, Ground 1: Burger in view of the knowledge of a POSA and Ground 2: Burger in view of Alexander)) 1. Independent Claim 65 [pre1] and Claim 38 [pre1] 65 [pre1] A communication network with an improved architecture comprising a web-enabled processing system including one or more web servers designed to be coupled to a call processing system serving as an intelligent interconnection between at least one circuit-switched network and a packet network in a telecommunications network, 38 [pre1] 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 circuit-switched network and a packet network in a telecommunications network, 107. It is my opinion that Burger discloses the preamble of claims 65 and 38 of the 113 patent as set forth below. a. A communication network with an improved architecture It is my opinion that Burger discloses a communication network with an improved architecture for routing calls in the form of complex network 20, which includes circuit-switched network 22 connected to packet-switched network 24 through the enhanced services platform (ESP) 60 as claimed in the preamble of claim 65 [pre1]. The system in Burger is a complex network that, as shown in the 62. CISCO SYSTEMS, INC. Ex Page 63

64 annotated Figure 1 below, includes a circuit-switched network (22) and a packetswitched network (24) at col. 1:50 2:38, 3:36 4:23, 6:60 8:46, 10:48 14:20, Figs. 1, 4 and As shown in the annotated reproduction of Burger s Fig. 1 below, the system in Burger includes a first network that is a Packet Network (24) and a Circuit Switched Network (22). Ex at col. 3: The two networks are connected through a gateway (34) that translates protocols and interfaces with lower level connections between the packet switched network 24 and the circuit switched network 22. Ex at col. 3: Burger s complex network also includes an enhanced services platform ESP 63. CISCO SYSTEMS, INC. Ex Page 64

65 (60), which implements call screening services. Ex at col. 4:1-4. In my opinion, Burger s network architecture was improved because, as shown in the remaining preamble sections, Burger comprises a web-enabled processing system including one or more web servers designed to be coupled to a call processing system serving as an intelligent interconnection between at least one circuitswitched network and a packet network in a telecommunications network. It is also my opinion that Buger s ESP 60 and its processing unit 62 perform the claimed method steps of 38[pre1] as set out more fully below, by executing software instructions in the form ESP procedures and as shown in Figures 4 and Ex at Figs. 1, 4-5, 9-13, cols. 7:4-43, 8:21-42, 8:48-9:39, 11:1-32. b.... a web-enabled processing system including one or more web servers coupled to a call processing system It is my opinion that Burger s network includes a web-enabled processing system in the form of ESP 60, and its processing unit 62, which includes one or more web servers as claimed in the preambles of claims 65 [pre1] and 38 [pre1]. Burger describes the ESP as including an ESP processing unit 62 connects to a circuit switched interface 64 and to a packet interface 68 via system bus 66. Ex at col. 4:3-5, 8:48-53; see also Figs. 1, 2, It is my opinion that the ESP is web-enabled because it has the ability to communicate with the packet network 22 (e.g., the Internet), through the 64. CISCO SYSTEMS, INC. Ex Page 65

66 packet interface gateway 68. Ex at Figs. 1, 2, 5. Burger teaches that one aspect of the invention the communication medium is a packet network. In an aspect of the invention, the packet network is an internet. Ex at col. 2:6 8; see also 4:1 12, 4:19-22 ( interface 68 can be a CISCO AS5300 Voice Gateway, connecting the ESP processing unit to 62 ), 4:57 58 ( packet network 24 such as the internet ), 7:2-3 (same), FIG. 1 (68), FIG. 5 (68) Burger s ESP is also web-enabled because the ESP processor is capable of executing [a] web server procedure 276 that causes the ESP 60 to act as a web server with respect to the packet based network 24 and to provide a user interface to the packet-based network 24. Ex at col. 8: Thus, it is my opinion that the ESP is a web-enabled processing system that includes a web server. The annotated Figure 5 below further illustrates that the ESP 60 is a web server It is also my opinion that Burger s ESP 60 includes a call processing system. Burger s ESP includes memory 270 [that] stores variables and procedures including instructions for execution by the ESP processing unit 62. A shown in the annotated Figure 5 below, the ESP procedures include numerous call processing functions for placing, connecting, screening, and forwarding calls. Ex at col. 4:1 12, 8:49 9:35, Fig. 1 (62), Fig. 5 (62, , annotated below). 65. CISCO SYSTEMS, INC. Ex Page 66

67 c. serving as an intelligent interconnection between at least one circuit-switched network and a packet network in a telecommunications network 114. It is my opinion that Burger s ESP serves as the claimed intelligent interconnection between at least one packet network and a circuit-switched telecommunication network as claimed in the preambles of claims 65 [pre1] and 38 [pre1]. Ex at Abstract, 3:36 5:40, 4:1 12, 8:49 9:35. In Burger s FIG. 1, reproduced above, [c]ommunication media 72 and 74 connect the circuit switched network 22 and packet switched network 24 to the circuit switched interface 64 and packet interface 68 of the ESP. Ex at Fig. 1, 4: Burger s Figure 2, excerpt reproduced below, also shows that the ESP 66. CISCO SYSTEMS, INC. Ex Page 67

68 60 is connected to the circuit switched network 22 via interconnection 100, and [t]he ESP 60 also connects to the packet-based network 24 via an interconnection 140. Ex at col. 4:35-41, 5:3-4. Accordingly, the ESP 60 is connected to the packet network and the circuit network in Burger s telecommunications network It is my opinion that Burger s ESP 60 is also an intelligent interconnection because it is a programmable computer that includes memory, a processor, a disk drive, I/O connections, and other computer components. Ex at col. 8: The ESP is capable of executing the call processing features listed in Figures 4. Ex at col. 8:58-9:40, Fig. 4. The ESP also performs the call screening and blocking functions shown in Figures 5, Ex Accordingly, it is my opinion that Burger discloses serving as an intelligent interconnection between at least one packet network and a second (circuit-switched) network in a telecommunications network. 67. CISCO SYSTEMS, INC. Ex Page 68

69 2. Claims 65 and 38 [pre2] circuit-switched network (Grounds 1-2) 65 & 38 the circuit-switched) network comprising edge switches for routing calls [pre2] 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, 117. It is my opinion that Burger discloses the claimed circuit-switched network 22 is a telecommunications network, such as the PSTN, connecting communications devices such as telephones as claimed in 65 [pre2]. Ex at col. 1:30-45, 1:50 2:39, 3: For the same reasons, it is also my opinion that claim 38 [pre2] is met by Archer because the only difference between the limitations of claim 38 [pre2] and 65 [pre2] is that claim 65 [pre2] includes limits the network to a telecommunications network which is necessarily covered by the broader limitation of 38 [pre2]. For example, Burger s circuit-switched network 22 connects to communications devices 26, 28 such as telephones, cellular telephones, computers and other terminal devices. Ex at col. 3: Figure 2 illustrates another embodiment of Burger where the circuitswitched network is the PSTN: In one embodiment, the caller 82 uses a telephone 88 that is connected via communication medium 90 to the circuit switched network 22 to transport the call 84. In this embodiment, the circuit switched network 22 is the PSTN that includes central office switches (Telco CO) 92, 94 and 96. Ex at col. 4: As described in the Technology Background above, and in Burger, the PSTN is itself a circuit-switched telecommunications network that 68. CISCO SYSTEMS, INC. Ex Page 69

70 connects communications devices such as telephones. Ex at col. 1:21-26; supra III, 38-40; Ex at 86-87; Ex at col. 1:45-2: It is my opinion that a POSA would have readily understood that the PSTN includes both 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. Ex at col. 3:43 45, 4: As described in more detail in the Technology Background III(A) above, the PSTN consists of edge switches also known as local switches or central office switches and higher level office switches that route call to other edge switches in the PSTN. Supra III, 38-40; Ex at ; Ex. 1006, Fig. 1, Ex. 1001, 1:45-2:54; Ex at col. 1:21-26; Ex at And Burger specifically refers to this type of hierarchical switching network structure in describing the circuit-switched network: In this embodiment, the circuit switched network 22 is the PSTN that includes central office switches (Telco CO) 92, 94 and 96. Ex at col. 4:23-34; Fig The Background of the 113 patent further supports my opinion. The 113 patent states: 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. The tandem switch network allows connectivity between all of the edge switches, and a signaling system is used by the PSTN to 69. CISCO SYSTEMS, INC. Ex Page 70

71 allow calling and to transmit both calling and called party identity. Ex at col. 1: In sum, Burger discloses this limitation because the PSTN disclosed as the circuit-switched telecommunications network in Burger comprises 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 In the alternative, it is also my opinion that switching facilities and edge switches are required features of the PSTN s architecture and are therefore inherently disclosed by Burger. Ex at col. 4: As explained in the Technology Background above and in the preceding paragraphs, the PSTN is a circuit-switched network with a hierarchical structure designed with local edge switches connecting a local geographic area and higher class switching facilities that route call between the local geographic areas. Supra III, 38-40; Ex at ; Ex. 1006, Fig. 1, Ex. 1001, 1:45-2:54; Ex at col. 1:21-26; Ex at As shown above, because Burger references the PSTN as the circuit-switched network in its system, and the PSTN is necessarily a circuitswitched 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, Burger inherently discloses this limitation, Burger inherently 70. CISCO SYSTEMS, INC. Ex Page 71

72 discloses this limitation Based on the foregoing, it is my opinion that Burger discloses, explicitly and inherently, a telecommunications (circuit-switched) 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. Claims 65 and 38 [pre3] enabling voice communication (Grounds 1-2) 65 [pre3] the communication network designed to enable voice communication from a calling party to a called party across both the circuit-switched network and a packet network, the communication network comprising: 38 [pre3] the method for enabling voice communication from a calling party to a called party across both the circuit-switched network and a packet network, the method comprising the steps of: 123. It is my opinion that the communication network disclosed by Burger is designed to enable voice communications from a calling party to a called party across both the PSTN 22 and the packet network 24 using, for example, the ESP 60 and other network components as claimed in 65 [pre3] and 38 [pre3]. Supra VI(A)(1). For example, Burger explains that a subscriber can access the packetbased network through the circuit-switched network (PSTN): To access the packet-based network 24 such as the internet, the subscriber's computer 106 places a call 132 via the modem 108 and the circuit switched network to their internet service provider (ISP) 134. In this way, a communications path is formed via the communications medium 102, the circuit 71. CISCO SYSTEMS, INC. Ex Page 72

73 switched network 22 and another communications medium 136 to the ISP 134. The ISP 134 connects to the packet-based network 24 via interconnection 138. Ex at col. 4:57-64 (emphasis added) Burger s Figure 2 further illustrates how the disclosed communication system enables voice communication to a called party across both a circuit-switched PSTN (22) and a packet-based network (24) Burger further teaches that voice communication is enabled across both the circuit-switched network and the packet network: In step 218, the ESP 60 connects the caller 82 and the particular subscriber 86 for two-way communication upon the acceptance of the particular subscriber 86. In particular, the popup window of the packet-phone procedure 130 has a Take Call button that the user clicks on to initiate two-way communication between the caller CISCO SYSTEMS, INC. Ex Page 73

74 and the subscriber 86. Ex at col. 8:21-27; see also Figs. 2, Burger s Figure 4, reproduced in part below, shows that the call described in the above passage is being received from the circuit-switched PSTN (step 202) Burger goes on to describe multiple embodiments of its communication network that enable voice communication over both the packetswitched and circuit-switched networks enabling the subscriber to either listen to the caller leave a message (Ex at col. 8:5-10), or provide a two-way communication path between the caller 82 and the subscriber s computer. Ex. 73. CISCO SYSTEMS, INC. Ex Page 74

75 1003 at col. 8:18-26; see also Ex at Abstract, col. 8:28-40; 12:66 13:10, Figs. 4, 11, Burger s Figure 11 illustrates another embodiment where the ESP 60 can also provide a two-way communication path between a caller on the packetnetwork 24 to a subscriber on the circuit-switched network 22. Ex at col. 11:1-32, Fig. 11 ( , 520). As shown below in step 520 from Figure 11, [u]pon subscriber authorization, the ESP connects the caller and subscriber for 2- way communication. Ex at Fig Based on the foregoing it is my opinion that the communication network disclosed by Burger is designed to enable voice communications from a calling party to a called party across both the circuit-switched network and the packet network. 4. Claims 65 and 38 [a] an interface for receiving call data (Grounds 1-2) 65 [a] an interface capability within the web-enabled processing system for receiving call data which is associated with a call originated by the calling party via either the packet network or the circuit-switched network, 74. CISCO SYSTEMS, INC. Ex Page 75

76 38 [a] receiving call data which is associated with a call originated by the calling party via the circuit-switched network, at the call processing system, 130. It is my opinion that Burger teaches that the web-enabled processing system (ESP 60 and its processing unit 62) has interface capability (64, 68) for receiving call data associated with a call originated by a calling party over either the packet-switched 24 or circuit-switched 22 network as claimed by limitation 65[a]. For the same reasons discussed above with respect to 65 [pre2], it is my opinion that Burger s ESP 60 includes a web-enabled call processing system. Supra VI(A)(2). It is also my opinion that Burger that the ESP (60 and its processing unit 62) receive call data associated with a call originated by a calling party via the circuit-switched network as claimed by limitation 38[a]. For the same reasons discussed above with respect to 38 [pre2], it is my opinion that Burger s ESP 60 includes a call processing system. Supra VI(A)(2) Burger teaches that the ESP 60, includes a circuit-switched interface 64 and a packet interface 68. Ex at col. 4:1-12; Figs. 1, 2, 5. In one embodiment, the circuit switched interface 64 is a Natural Microsystems AG-Tl interface, the bus 66 is an H.110 or H-MVIP bus, and the packet interface 60 is a Natural Microsystems Fusion interface card. Communication media 72 and 74 connect the circuit switched network 22 and packet switched network 24 to the circuit switched interface 64 and packet interface 68, respectively. Ex at col. 75. CISCO SYSTEMS, INC. Ex Page 76

77 4:5-12; Figs. 1, 2, 5. These I/O interfaces allow the ESP to communicate with either the circuit-switched or packet network. Figure 5 illustrates the ESP s packet- (68) and switch-network interfaces (64): 132. Burger further discloses that the ESP s circuit-switched and packet network interfaces receive call data associated with a call originated by a calling party over either the packet switched 24 or circuit switched 22 networks For example, Burger teaches that in one embodiment call originates from a calling party and is transmitted over the circuit-switched network: [a] caller 76. CISCO SYSTEMS, INC. Ex Page 77

78 82 places a first call 84 from a communication device 88 using a particular public telephone number for a particular subscriber 86. The first call 84 passes through the circuit switched network 22 to the ESP 60 as described above. Ex.1003 at col. 7:4-7 (emphasis added); see also 6:64-7:2, Fig. 4. In another example, Burger discloses a call being received by the ESP from the packet network: [t]he flowchart of FIG. 11 is similar to the flowchart of FIG. 4 except that the caller is calling from a packet-network. Ex at col. 11:1-3, Fig As shown in annotated Figure 4 below, at step 202, Burger teaches that its ESP 60 receive calls from the circuit switched network that contain call data associated with the call originated by the calling party at least in the form of the dialed telephone number. Ex at Abstract col. 1:53 55, 4:24-41, 7:4-19, Figs. 2 (82). 77. CISCO SYSTEMS, INC. Ex Page 78

79 Burger, Fig Describing Figure 4, Burger explains: [i]n step 202, the ESP 60 receives the first call 84 from the caller 82 using the particular public telephone number for the particular subscriber 86. In one embodiment, the particular public telephone number is from an advertisement. In step 204, the ESP 60 identifies the particular public telephone number for the particular subscriber. Ex at col. 7:4-19, Figs. 2, Burger s ESP 60 also receives calls from the packet network 24 through the packet interface 68 that contain call data associated with the call originated by the calling party at least in the form of the public packet network address. Ex at col. 11:1-13, Fig. 11 (annotated). 78. CISCO SYSTEMS, INC. Ex Page 79

80 Burger, Fig Burger defines a packet network address as including both URLs and IP addresses. After translation, the URL includes an IP address. Ex at col. 6: Accordingly, the public packet network address received by ESP is either an IP address or is translated by the ESP into an IP address As explained above, the plain and ordinary meaning of call data includes the telephone number or the IP address of the called subscriber. Supra IV(B)(1); Ex at claims Therefore, as shown above in Figures 4 (202, 204) and 11 (502, 504) and the portions of the specification describing each figure, Burger s ESP 60 receives call data at least in the form of the called telephone number or IP address. (a) It is also my opinion that the interface capability identified in Burger s ESP 60 as connections to packet network 24, circuit-switched network 22, and the software executed by processing unit 62, above, performs the same functions, in the same way, to achieve the same result as the structures disclosed in 79. CISCO SYSTEMS, INC. Ex Page 80

81 the 113 patent that perform the claimed function, in the form of a conventional computer programmed to carry out the functions described, and the software steps shown in Figures 4 and 5. Ex at Figs. 4-5, cols. 3:50-51, 4:39-40, 5:38-39, 5:52-6:20. (b) As discussed above in my opinion for claim 65[a], it is my opinion Burger teaches that the call data received from the circuit switched network is received at the call processing system in the form of ESP 60 s processing unit 62 executing the software steps in ESP procedure 290 for receiving a call from the PSTN and performing the steps shown above in Burger s Figure 4 for receiving a call over the PSTN (step 202) and identifying a particular telephone number (step 204) as claimed in limitation 38[a]. Ex. 1003, Figs. 4 (202, 204), 5 (290), 7:4-19, 9: Based on the foregoing, it is my opinion that Burger discloses the limitations 65[a] and 38[a]. 5. Claims 65 and 38 [b] calling party initiating a call (grounds 1-2) 65 [b] & 38 [b] the calling party using a communications device to originate the call for the purpose of initiating voice communication, 140. It is my opinion that Burger teaches the calling party using a communication device to originate a voice call as claimed in the form of caller 82 plac[ing] a call 84 to a subscriber 86 using a public telephone number that 80. CISCO SYSTEMS, INC. Ex Page 81

82 terminates at the ESP 60, as claimed in limitations 65 [b] and 38 [b] The network and methods described by Burger are designed for various forms of voice communication. Ex at 1 ( Voice Call Processing Methods ). Burger describes numerous communications devices used by the calling party to for the purpose of initiating a voice communication. For example, Burger describes a caller 82 plac[ing] a call 84 to a subscriber 86 using a public telephone number that terminates at the ESP 60. Ex at Figs. 2, 4, col. 4: Burger also teaches calling parties initiating voice calls using a computer 162 or an IP phone 194. Ex at col. 7:26 33, 11:19 21, Figs. 2 (162, 194), 11 (502, 504, 518). Burger s Figure 2, reproduced below, further illustrates the various communication devices used to originate a call in Burger s system e.g., telephone (88/104), packet/internet phone (130/186), IP phone (194). Ex at col. 4:24-5: CISCO SYSTEMS, INC. Ex Page 82

83 6. Claims 65 and 38 [c] coupled to a switching facility 65 [c] the web-enabled processing system designed to be coupled to at least one switching facility of the circuit-switched network; 38 [c] the call processing system coupled to at least one switching facility of the circuit-switched network, 142. Grounds 1 and 2: It is my opinion that Burger discloses a webenabled processing system designed to be coupled to at least one switching facility of the circuit-switched network as claimed by limitation 65[c] either explicitly or inherently or it would have been obvious to a POSA in view of Burger. It is also my opinion that Burger discloses a call processing system designed to be coupled to at least one switching facility of the circuit-switched network as claimed by limitation 82. CISCO SYSTEMS, INC. Ex Page 83

84 38[c] either explicitly or inherently or it would have been obvious to a POSA in view of Burger a. The ESP of Burger is a switching facility of the circuitswitched network coupled to the web-enabled processing system of the ESP and the call processing system of the ESP (grounds 1 and 2) 144. It is my opinion that the web-enabled processing system and the call processing system of Burger s (ESP 60) are switching facilities of the circuitswitched network 22 in the form of its processor 62, circuit interface 64, and packet interface 68 as claimed in limitations 65[c] and 38[c]. Ex at Fig. 1; Supra VI(A)(1)(B) (describing Burger s ESP as including both a web-enabled processing system and a call processing system as claimed) As shown in Burger s Figures 1 and 5 the ESP is a connection point between the circuit-switched and packet-switched networks and is capable of routing calls and messages between the two networks. Ex at Figs. 1, 5. Accordingly, the ESP is a component of both the circuit-switched and packetswitched networks disclosed by Burger. As shown in Figures 1 and 5 below, the ESP is connected to the circuit-switched network through the TDMA/circuitswitched interface (64) at col. 4:35-41; see also 4: CISCO SYSTEMS, INC. Ex Page 84

85 146. The ESP s packet interface (68) connects the ESP to the packet switched network via communication medium 74. Ex at col. 4:1-18, 8:48-53, Figs. 1, 5. Although in Figs. 1, 2, and 5 the packet interface is housed within the ESP, Burger also discloses that the packet interface 68 can be external to the ESP 60. For example, the external packet interface 68 can be a CISCO AS5300 Voice Gateway, connecting to the ESP processing unit 62. Ex at col. 4: Because the ESP 60 performs call routing services between the circuit-switched network and the packet-switched network, a POSA would readily understand that the ESP is itself a switching facility. Ex at Figs. 4, 8-16, col. 9:1-35. As explained further below, it is also my opinion that the ESP s packet interface gateway 68 is also a switching facility coupled to the web-enabled processing 84. CISCO SYSTEMS, INC. Ex Page 85

86 system My opinion is confirmed by the prosecution history of the 113 patent s parent. Ex at 87 n.1. In that application, the applicant stated that switching facilities were tandem switching facilities or [a]ny point in the switching fabric of converging networks, also referred to as signal transfer point (STP), signal control point (SCP), session border controller (SBC), gateway,, hybrid switch, etc. Ex at 87 n Based on the applicant s description and the plain meaning of the term switching facility, it is my opinion that Burger s ESP 60 and packet interface gateway are switching facilities under the applicant s definition. Supra IV(B)(3). The ESP 60 is: (1) a point in the switching fabric of the PSTN that connects to other switching facilities or edge switches, for example, the central office switches 94, through the circuit-switched interface (64); (2) contains a gateway in the form of packet interface 68 that connects ESP 60 to the packet network 24; (3) performs switching functionality by routing calls between the PSTN (22) and the packet network 24; and (4) is not an edge switch because, as shown in Figure 2, it does not connect directly to end user devices. Ex at col. 4:1-15, 4:19-23, 8: 47-9:35, Figs. 1, 2, 4, 5, The language of claims 65 and 38 further supports my opinion that the ESP 60 and the packet interface gateway are switching facilities. Claim limitation 85. CISCO SYSTEMS, INC. Ex Page 86

87 65[pre2] and 38[pre2] state that switching facilities are used for routing calls to other edge switches or other switching facilities local or in other geographic areas. Ex at cl. 65[pre2]. Burger s ESP is connected to other switching facilities or edge switches in the PSTN in the form of central office switches 94. Ex at Figs. 1 (22, 24, 60, 64, 68), 2 (60, 94), 4:1-12, 4: Burger s ESP 60 also contains a packet interface gateway 68 that connects it to the packet network 22. Ex at Figs. 1 (24, 60, 68), 2 (22, 60), 4:1-12, 4:19-22 (68 can be a voice gateway), 5:3-9. Accordingly, the ESP is designed to route calls to other edge switches and switching facilities in the circuit-switched network. Ex at Figs. 1 (24, 60, 68), 2 (22, 60), col. 4:1-12, Fig. 4, col. 5:3-9, 6:63-8:27. In Burger s alternative embodiment using an external packet gateway, the external gateway would also be used for routing calls to other switching facilities, i.e., the ESP 60. Ex at col. 4:19-22; Figs. 1 (24, 60, 68), 2 (22, 60) In sum, based on the disclosures of Burger, prosecution history of the 113 patent, the language of claims 65 and 38, and the knowledge of a POSA, it is my opinion that Burger s web-enabled processing system and call processing system in the ESP 60 is coupled to the ESP 60 switching facility meeting claim limitations 65[c] and 38[c]. 86. CISCO SYSTEMS, INC. Ex Page 87

88 b. In the alternative, Burger discloses that the webenabled processing system and call processing system of the ESP are coupled to SCP or STP switching facilities in the circuit-switched network (PSTN) (grounds 1 and 2) 151. In the alternative, it is also my opinion that: (1) due to the Advanced Intelligent Network (AIN) switching architecture in use in the PSTN in the 1999 to mid-2000 timeframe, that Burger discloses that the web-enabled processing system and the call processing system of ESP 60 is coupled to a SCP or STP switching facility in the PSTN through SS7 links; (2) in the alternative, even if Burger does not explicitly disclose that the ESP is coupled to SCP or STP switching facilities, it would have inherently disclosed because during the relevant time period, AIN architecture was required to be used in the PSTN; and (3) in the alternative would have been obvious to a POSA to implement the AIN architecture in the circuitswitched network disclosed by Burger given the widespread use of the AIN architecture in the PSTN at the time of the invention and the benefits associated with using AIN architecture First, Burger discloses that ESP 60 and its processing unit 62 are coupled to a switching facility of a circuit switched network in the form of central office 94, which is shown performing the claimed switching facility functions of interconnecting to other switching facilities and edge switches (e.g., Telco CO 92 through link 98 and ISP 134 through link 136). As shown in Burger Figures 1 and 87. CISCO SYSTEMS, INC. Ex Page 88

89 2, the web-enabled processing system of the ESP 60 is connected to central office switches in the circuit-switched network, e.g., PSTN. Ex at Figs. 1 and 2, col. 4: As discussed in the Technology Background section above, in the 1999 to mid-2000 timeframe the PSTN used Advanced Intelligent Network (AIN) switching control architecture. Supra III, 45-51; Ex. 1010, 1-2; Ex at Fig. 1, col. 8:38-9:35. In the AIN architecture, SCPs and STPs are connected to the central office switches via SS7 links for call processing control messages and other signaling messages. Ex at Fig. 1, col. 8:38-9:35; Ex at To illustrate the AIN architecture of the time, a diagram of a typical AIN architecture is shown below as taken from Chang (filed in 1997) showing the SS7 links between SCPs (19), STPs (15), and SSPs (11) for call processing signaling. Ex at Fig CISCO SYSTEMS, INC. Ex Page 89

90 153. As a result of the well-known and commonly used AIN architecture described above, a POSA would understand that Burger s ESP 60 connection to central office 94 would trigger SS7 signaling connections from SSPs to SCPs that interfaced with central office 94, tandem switches, and edge switches in the PSTN. The diagram below, a magnified excerpt of Figure 1 of the Chang reference, further illustrates the SS7 signal links between the central office (11 E ) and the STPs (15) and SCPs (19). Ex at Fig. 1 (excerpt). 89. CISCO SYSTEMS, INC. Ex Page 90

91 154. It is my opinion that a POSA would have also understood that the SCPs and STPs of the PSTN disclosed by Burger are switching facilities. Ex at 3: As shown in the Intelligent Networks reference, SCPs and STPs perform switching functions, e.g., call routing. Ex at 25 ( The principal task of SCPs in early intelligent networks is to control the setting up of number translating services in the network; the most important part of the task is determining the location to which a service, for example, a freephone call, should be routed. ); see also Ex at col. 8:38-9:35; Ex at 4, 7 ( a signaling point that transfers messages from one signaling link to another at level 3 is said to be a 90. CISCO SYSTEMS, INC. Ex Page 91

92 [STP]. ) And as discussed above, in the 113 patent s parent application, the applicant confirmed this opinion by describing the claimed switching facilities as including SCP and STPs. Ex at 87 n.1 (switching facilities include SCPs and STPs). For at least these reasons, it is my opinion that a POSA would have also understood SCPs and STPs are switching facilities Burger also contemplated including the well-known features of the AIN architecture, discussed above, in the disclosed circuit-switched network by explaining that interconnection 98 between central office switches 92 and 94 can be formed in many ways and is part of the context in which the invention operates. Ex at col. 4: Accordingly, it is my opinion that Burger discloses that the ESP connection to the central office 94 would trigger SS7 signals to switching facilities in the form of tandem switches, SCPs or STPs. Ex at Fig. 2, col. 4: c. Burger inherently discloses that the web-enabled processing system and the call processing system of the ESP is coupled to SCP or STP switching facilities in the circuit-switched network (PSTN) 156. In the alternative, it is my opinion that connecting SCPs and STPs to the SSPs in the local office switches via SS7 links was required in the PSTN in the May 2000 timeframe and is therefore inherently disclosed by Burger. Supra III, 43-51; see, e.g., Ex at Fig. 1, col. 8:38-9:35. As set forth above, because AIN architecture was used in the PSTN during the relevant timeframe, the web- 91. CISCO SYSTEMS, INC. Ex Page 92

93 enabled processing system in Burger s ESP 60 would necessarily be coupled to switching facilities in the form of tandem switches, SCPs, and/or STPs through circuit switched interface 64, link 100, and central office 94 via the SS7 links from the local office switches to those switching facilities. Ex at Fig. 2, col. 4: d. It would have been obvious for a POSA to couple the web-enabled processing system and the call processing system of the ESP switching facilities in the circuitswitched network (PSTN) 157. In the alternative, it is also my opinion that connecting the webenabled processing system and call processing system of the ESP 60 to a switching facility in the form of a tandem switch, SCP or STP in the PSTN as claimed by limitations 65[c] and 38[c] would have been obvious to a POSA because it would have been nothing more than the combination of known elements using known methods to achieve predictable results and improve upon the system disclosed by Burger Switching facilities such as tandem switches, SSPs, SCPs, or STPs were well known in the art during the relevant time period and providing call routing control features to these switching facilities were part of the AIN architecture used in the PSTN. Supra III, 43-51; Ex at 31-32, 67; Ex. 1008, 87 n.1; Ex at 1; Ex at Fig. 1. At least as early as 1996, the PSTN included computerized control of telephone calls using SCPs and STPs. Ex at 92. CISCO SYSTEMS, INC. Ex Page 93

94 2; Ex, 1014, 7. The implementation and benefits of call control features at tandem switches, SCPs, or STP was known and was a standard part of the AIN architecture. Ex at 2, Fig. 1 (service control point), Ex, 1014, 7; supra III, Referring again to the exemplary AIN diagram of Chang showing the components described above is helpful: Ex at Fig. 1 (11 T, 15, 19) (annotated), col. 9:28-33 (tandem office 11 T has the SSP capability which connects to SCP, tandem office 11 T then connects to end offices 11 E through trunk lines); 159. It is therefore my opinion that a POSA would have readily understood 93. CISCO SYSTEMS, INC. Ex Page 94

95 the benefits of implementing call control features in the tandem switches, SCPs, or STPs in the PSTN disclosed by Burger. As discussed in more detail in the Technology Background section above, the ability to manage and implement call control services using a standard external service logic at SCPs in the PSTN improved upon the previous implementation of call control features in switchspecific software that made it difficult to add new features and deploy new features system wide. Supra III, 41-51; Ex at 9, ( Chapter 1 defines two major problems facing all networks in the 80s and 90s: (1) updating software in large, complex systems, like a telephone network, and (2) increasing the use of existing services. ); Ex at Accordingly, it is my opinion that connecting the web-enabled processing system and call processing system of the ESP to tandem switches, SCPs, and STPs would have been consistent with the prevailing telecommunications network architecture used in the late 1990s and early 2000s. Ex at 2 (describing the Intelligent Network, using SCPs, as a solution to the problem facing telecommunications networks when deploying new services and software updates.) By the 1999 to mid-2000 timeframe, it was also known in the art how to interface packet-switched networks to the PSTN using gateways that converted VoIP signaling to SS7 signaling to yield the predictable result of controlling call routing over the PSTN. Ex at 1-4. For example, as taught by Alexander (filed 94. CISCO SYSTEMS, INC. Ex Page 95

96 in 1999) it was known that a [g]ateway 64 also translates between the VoIP call control system and the [SS7] protocols used in the PSTN. Ex at Figs. 1 (64), col. 5: It is therefore my opinion, that a POSA would have found it obvious to couple Burger s ESP 60 to SCP switching facilities through SS7 signaling channels in order to route calls over the PSTN Next, it is also my opinion that a POSA would find it obvious to connect Burger s ESP 60 to a SCP (switching facility) because it was one of only two options for connecting Burger s ESP 60 to the PSTN in March 2000 when Burger was filed. Due to the fact that these connections were standardized and well-known, a POSA would have had a reasonable expectation of success. Ex at 2, Fig. 1; Ex at Fig. 1 (11 T, 15, 19), col. 9:28-33; Ex at 87 n The first connection option was through edge switches using standard last-mile user terminal type connections. Ex at 49-50; supra III, The second option was through the standard AIN bearer channels and SS7 signaling control channels. In the second option, the SS7 signaling control channels connect to SCP switching facilities in the PSTN. Ex at 2, Fig. 1; Ex at Fig. 1 (11 T, 15, 19), col. 9:28-33; Ex at 87 n.1. And as set out immediately above, both of these methods were standardized, known in the art, and yielded predictable results in the 1999 to mid-2000 timeframe. Ex at 2, Fig. 1; Ex at Fig. 1 (11 T, 15, 19), col. 9:28-33; Ex at 1-2; supra III, As a result, it is 95. CISCO SYSTEMS, INC. Ex Page 96

97 my opinion that a POSA would understand that coupling ESP 60 to a switching facility in the form of an AIN SCP through an SS7 signaling channel would merely be a design choice among two options, each with a reasonable expectation of success It is also my opinion that a POSA would be motivated to directly connect ESP 60 to switching facilities in the PSTN 22 through standard AIN bearer channels connecting to tandem switches and SS7 signaling control channels connecting to SCPs because such a direct connection would increase network efficiency. Ex at 87 n.1 (switching facilities include tandem switches and SCPs) Directly connecting Burger s ESP 60 to tandem switches through AIN bearer channels would offload circuit-switched calls from the PSTN 22 to ESP 60 subscribers on the packet network 24 by reducing switch traffic at the edge or central office switches. Ex at Fig. 4 ( , 212, 218), col. 7:4-60, 8: Reducing switching traffic at the central office would reduce costs by limiting the number of calls traversing tandem switches and edge switches and allow the Internet to route the calls at a lower cost to the consumer. Ex at col. 1:40-48; 2:53-56, 2:63-66; supra III, It is also my opinion that a POSA would have been motivated to connect Burger s ESP 60 to SCPs to take advantage of standard PSTN controller 96. CISCO SYSTEMS, INC. Ex Page 97

98 functionality that already had a well-developed computerized control infrastructure without requiring the development of new hardware or signaling protocol. For example, the Low article (1996 Ex at 1-2) provides a diagram of [t]he principal components in the IN Distributed Functional Plane are shown in Figure 1, reproduced below showing SCPs and SS7 standard signaling Finally, it is my opinion that a POSA would have been motivated to connect Burger s ESP 60 control functionality to the standard PSTN and AIN switching facilities like SCPs and STPs because of the commercial pressures to 97. CISCO SYSTEMS, INC. Ex Page 98

99 integrate Internet functionality with the PSTN and AIN. The Low article supports this motivation, noting that [t]he growth in WWW sites as personal or organizational points-of-contact shows there is a strong demand for integrated communications. Ex at In sum, it is my opinion that in light of the disclosures of Burger, it would have been obvious to a POSA to couple the web-enabled processing system and call processing system of the ESP to at least one switching facility in the PSTN (tandem switches, SCPs and STPs) because it would have been nothing more than a design choice relying on the combination of known elements and known methods to achieve predictable results in line with the prevailing methods for designing telecommunications networks at the time to improve the network and reduce cost. e. Ground 2: it would have been obvious to couple the web-enabled processing system and call processing system of Burger to a switching facility in a circuitswitched network in view of the teachings of Burger combined with the teachings of Alexander 169. In the alternative, it is also my opinion that coupling a web-enabled processing system and call processing system to a switching facility in a circuitswitched network as claimed by limitations 65[c] and 38[c] would be obvious in light of the teachings of Burger and Alexander. Like Burger, Alexander discloses switching facilities coupled to a web-enabled processing system or call processing system. 98. CISCO SYSTEMS, INC. Ex Page 99

100 170. Alexander discloses a call manager 26a that is similar to Burger s ESP 60: these components are both web-enabled processors that implement call control features, such as identifying and calling alternate numbers over circuit- and packetswitched networks in response to incoming calls. Ex at Abstract, col. 4:26-37; supra V (A), (D). Alexander s Fig. 2 illustrates the components of its call manager. Ex Alexander s FIG. 1, reproduced below, shows that the call manager 26a is coupled to the circuit-switched network via several different switching facilities, including gateways 52 and 64a, private branch exchange (PBX) 50, 99. CISCO SYSTEMS, INC. Ex Page 100

101 Dallas Central Office 62a, and long distance network 66. Ex at Fig. 1 (annotated). Like Burger, the circuit-switched network 60 described by Alexander is the PSTN. Ex at col. 5: It is my understanding as a POSA and based on the prosecution history of the 113 patent, that the 113 patent s switching facilities include gateways. Ex at at 87 n. 1 ( [a]ny point in the switching fabric of converging networks, also referred to as signal transfer point (STP), signal control point (SCP), session border controller (SBC), gateway,, hybrid switch, etc. ). Gateways 52 and 64a are therefore switching facilities As described in Alexander, the gateways switching facilities 100. CISCO SYSTEMS, INC. Ex Page 101

102 convert VoIP protocols to SS7 signaling protocols for call transmission over circuit switches to network 60, allowing communication between the packet network (LAN) and the circuit-switched network (PSTN) 60. Ex at Figs. 1, 5A ( ), col. 5: Referring back to Alexander s Figure 1 above, the PBX 50 and Dallas Central Office 62a are also switching facilities because they rout[e] calls to other edge switches or other switching facilities local or in other geographic areas as recited in claim 65. Ex at claim 65; supra VI(A)(2) (cl. 65 [pre2]) For example, Gateway 52 routes calls to PBX 50 and gateway 64a routes calls to the Dallas Central Office 62a. Ex at Fig. 1. PBX 50 routes calls to the Dallas Central Office 62a and the gateway 52. Ex at col. 3:17 24, Fig. 1 (52, 62a). The Dallas Central Office 62a routes calls to a mobile telephone switching office, another Dallas Central Office 62b, gateway 64a, and a long distance network 66. Ex at col. 3:27 53, Fig. 1 (62a, 62b, 64a, 66) In addition, gateways 52, 64a and 64b, PBX 50, and the Dallas Central Office 62a form parts of circuit-switched networks. Ex at col. 3:17 24, 3:27 53, FIG. 1. For example, Gateway 64a interconnects the devices attached to LAN 20a to Dallas Central Office 62a. Ex at Fig. 1. The PBX 50 interconnects the PSTN with a private network, Gateway 52 and the Dallas Central Office 62a is part of the PSTN 60. Ex at col. 3:17 24, 3:27 53, Fig. 1 (60) CISCO SYSTEMS, INC. Ex Page 102

103 177. It is my opinion that it would have been obvious to couple the ESP 60 of Burger to the switching facilities in Alexander at least because: (1) Burger and Alexander are analogous references; (2) Burger discloses coupling the ESP to central office switches and other switching facilities in the PSTN where the switching facilities of Alexander also reside so combining the teachings of the two references is nothing more than combining known elements to yield predictable results; and (3) because connecting Burger s ESP 60 to the switching facilities in Alexander would be required for the ESP to interface with subscribers on both the packet network and the circuit-switched network and such a combination is specifically taught by Burger First, as described in V(A), (D), (E) above, Burger and Alexander are analogous references. In particular both references disclose call processing systems that interface between packet-switched and circuit-switched networks. Supra V(A), (D), (E) (describing Burger and Alexander) Second, coupling Burger s ESP 60 to switching facilities like Alexander s gateways 52 and 64a, PBX 50, Dallas Central Office 62a, and long distance network 66 would have been nothing more than the combination of known elements according to known methods to yield predictable results with a reasonable expectation of success As discussed above, interconnections within the PSTN were well 102. CISCO SYSTEMS, INC. Ex Page 103

104 known and standardized in the 1999 to mid-2000 timeframe, to include SS7 signaling and AIN switching controllers SCPs and STPs. Supra III 35, 43-51; Ex at 1-2; Ex at Fig. 1, col. 8:48-9:48. Burger itself teaches that ESP 60 can be coupled to central offices in the packet network 24 using a gateway 68 and is connected to the PSTN 22 through DID lines connected to circuit interface 64 so connecting Burger s ESP to similar switching facility components in Alexander s network would be obvious to a POSA. Ex at Figs. 1-2, col. 4:1-66. Because the signaling protocols in the PSTN were standardized the options to connect the ESP 60 to the PSTN were limited (supra ), further supporting the conclusion that it would have been obvious to connect Burger s ESP 60 to the gateways 52, 64a, PBX 50, central office 62a, and long distance network 66 of Alexander using SS7 connections. Ex at 1-2; Ex at Fig. 1, col. 8:41-9: It is my opinion that a POSA would also have a reasonable expectation of success in connecting Burger s ESP 60 to the gateways 52, 64a, PBX 50, central office 62a, and long distance network 66 of Alexander using the standard SS7 protocol further supporting obviousness to combine. Because SS7 was a standard method for communicating with switching facilities in the PSTN and was wellknown in the field at the time of the alleged invention a POSA would have had a reasonable expectation of success. Supra III, 35, Based on the 103. CISCO SYSTEMS, INC. Ex Page 104

105 foregoing, it is my opinion that a POSA would have found it obvious to combine the switching facilities taught by Alexander with Burger s ESP A POSA would also have been motivated to couple Burger s ESP 60 to the switching facilities disclosed by Alexander in order for the ESP 60 to operate as intended and because Burger suggests the combination. A POSA would have recognized that connections to the switching facilities were required to enable Burger s ESP 60 to receive or route calls between the packet- and circuit-switched networks, one of the ESP s primary functions. Ex. 1003, e.g., Figs. 1, 2, 4, Burger suggests the combination by teaching that the ESP can be connected to an external packet interface, such as a Cisco Voice Gateway. Ex at col. 4:19-23; Ex at 1 (assigned to Cisco); Fig. 1 (52, 64a) Burger also suggests the combination by stating that an alternate embodiment of circuit network 22 can be in the form of a PBX, one of the switching facilities disclosed by Alexander. Ex at Fig. 1(60); Ex at col. 3: Finally, a POSA would be motivated to combine Burger s ESP 60 with the Dallas central office 62a and long distance network 66 because these form parts of the PSTN 60 and Burger specifically suggests such a combination by stating that in disclosed embodiment the circuit switched network 22 is the PSTN that includes central office switches (Telco CO) 92, 94 and 96. and the Ex at col. 3:42-43, 104. CISCO SYSTEMS, INC. Ex Page 105

106 Figs. 1 and 2; Ex at col. 3: In sum, it is my opinion that it would have been obvious for a POSA to combine the ESP with the switching facilities in Alexander because Burger and Alexander are analogous systems, the combination of their teachings would have been nothing more than combining well-known components to achieve predictable results with a reasonable expectation of success, and because the combination was specifically taught by Burger and required for the desired function of Burger s ESP. 7. Claims 65 and 38 [d] call processing capability 65 [d] a call processing capability within the web-enabled processing system for processing the call across the packet network and the circuitswitched network to complete the call to the called party; and 38 [d] the call processing system processing the call across the circuitswitched network and the packet network to complete the call to the called party; and 187. It is my opinion that Burger discloses a call processing capability within the web-enabled processing system, ESP 60, for processing the call across the packet network to complete the call to the called party as claimed by limitation 65[d]. For the same reasons it is also my opinion that Burger discloses a call processing system, ESP 60, for processing the call across the packet network to complete the call to the called party as claimed by limitation 38[d] Burger discloses that the web-enabled processing system ESP 60 and ESP processing unit 62 contain call processing capability for processing calls across both circuit switched network 22 and packet switched network 24 to complete the 105. CISCO SYSTEMS, INC. Ex Page 106

107 call. Burger s figure 1 provides additional context: 189. As shown in the annotated Figure 5 below, these call processing features include place call of over packet network procedure, place call over PSTN procedure, receive call from packet network procedure, receive call from PSTN procedure, and connect calls 2-way procedure. Ex at Fig. 5, col. 8:47-9: CISCO SYSTEMS, INC. Ex Page 107

108 190. In one example, when a caller places a call to a subscriber from the PSTN 22 or the packet network 24, the ESP 60 uses the subscriber s public telephone number to look up the subscriber s private packet-based address in a database. Ex at col. 1:50 61, 7:4 24, 8:21-26, 11:30 32, Fig. 4 (206, 208, 218), Fig. 11 (506, 508, 518). The ESP then sends a call notification to the subscriber s computer 106 over the packet network. Ex at Fig. 4 (214), col. 7: If the subscriber answers the call, ESP 60 initiates a two way call across 107. CISCO SYSTEMS, INC. Ex Page 108

109 the across both the circuit and packet switched networks. Ex at Figs. 2, 4 (218, 220), col. 8: Burger s Figure 2 further illustrates the ESP s (60) call processing capability for processing a call across the packet network (24) and the circuitswitched network (22). Ex (a) It is also my opinion that the call processing capability identified in Burger s ESP 60 as the software executed by processing unit 62 to perform the functions identified in Figures 4 and 11, above, performs the same functions, in the same way, to achieve the same result as the structures disclosed in the 113 patent that perform the claimed function, in the form of a conventional computer programmed to carry out the functions described, and the software steps shown in Figures 4 and 5. Ex at Figs. 4-5, cols. 3:50-51, 4:39-42, 5:38-39, 5:52-6: CISCO SYSTEMS, INC. Ex Page 109

110 192. Based on the foregoing it is my opinion that Burger s ESP includes call processing capability for processing a call across the packet network and the circuitswitched network to complete the call to the called party as claimed by limitations 65[d] and 38[d]. 8. Claims 65 and 38 [e] establishing voice communication (grounds 1 and 2) 65 [e] a capability within the web-enabled processing system for establishing the voice communication between the calling party and the called party after the call is completed, across both the packet network and the circuit-switched network. 38 [e] establishing the voice communication between the calling party and the called party after the call has been completed, across both the circuitswitched network and the packet network It is my opinion that Burger discloses that the ESP 60 establishes voice communication across the packet network 24 and the PSTN 22 after the call is completed as claimed by limitations 65[e] and 38[e] As discussed in relation to limitations 65[d] and 38[d] above, Burger discloses that the ESP 60 establishes voice communication across the packet network 24 and the PSTN 22 after the call is completed. Ex at Abstract, col. 8:21 40, 11:30 32, 12:66 13:10, Figs. 4 (218, 220), 11 (518, 520), 15 (592). If the subscriber answers the call and authorizes communication, ESP 60 connects the caller and subscriber for two-way communication path between the caller and subscriber across circuit switched network 22 and packet network 24 that enables the subscriber and caller to talk with each other. Ex at Abstract, col. 9:19-23, 109. CISCO SYSTEMS, INC. Ex Page 110

111 12:66 13:10, Figs. 4 (218, 220), 5 (298), 11 (518, 520), 15 (592) An excerpt from Burger s Figure 4 and Figure 5 (annotated), below, further illustrates the steps associated with establishing voice communication between the calling and called party across the circuit and packet-switched networks in steps CISCO SYSTEMS, INC. Ex Page 111

112 (a) It is also my opinion that the capability establish voice communication identified in Burger s ESP 60 as the software executed by processing unit 62 and the steps performed in Figures 4 and 11, above, performs the same functions, in the same way, to achieve the same result as the structures disclosed in the 113 patent that perform the claimed function, in the form of a conventional computer programmed to carry out the functions described, and the software steps shown in Figures 4 and 5. Ex at Figs. 4-5, cols. 3:50-51, 4: CISCO SYSTEMS, INC. Ex Page 112

113 42, 5:38-39, 5:52-6: Accordingly, it is my opinion that the web-processing system of Burger, ESP 60, includes the capability for establishing the voice communication between the calling party and the called party after the call is completed, across both the packet network and the circuit-switched network as claimed by limitation 65[d] and 38[e]. B. Claims 143 and 163 Are Unpatentable (Petition 2, Ground 1: Burger in view of the knowledge of a POSA and Ground 2: Burger in view of Alexander) 1. Claims 143 [pre] and 163 [pre] preamble 143 [pre] A method of providing an intelligent interconnection between a first communication network and a second communication network, comprising: 163 [pre] A controller for use between a first communication network and a second communication network, the controller including circuitry and/or software for: a. Burger discloses a method of providing an intelligent interconnection between a first communication network and a second communication network It is my opinion that Burger discloses providing an intelligent interconnection between a first communication network (packet network 24) and a second communication network PSTN 22 using a controller ESP 60. My analysis of this limitation is consistent with my analysis with the preamble of claim 65 above which is incorporated by reference herein. Supra VI(A)(1)(cl. 65 [pre1]); Ex at Abstract, col. 1:50 2:38, 6:60 8:46, 10:48 14:20, Fig. 2 (22, 24, 60), 112. CISCO SYSTEMS, INC. Ex Page 113

114 Figs. 1-2, 4 and Annotated versions of Burger s Figures 1 and 2 reproduced below shows the first communication network, second communication network, and controller CISCO SYSTEMS, INC. Ex Page 114

115 b. Burger discloses a controller for use between a first communication network and a second communication network, the controller including circuitry and/or software It is my opinion that Burger discloses a controller for use between a first communication network and a second communication network in the form ESP 60 which provides call control and routing between a packet network 24 and the PSTN 22, as shown in Figure 1 reproduced below: 114. CISCO SYSTEMS, INC. Ex Page 115

116 199. My analysis of this limitation is consistent with my analysis with the preamble of claim 65 above which is incorporated by reference herein. Supra VI(A)(1) (cl. 65 [pre1]); Ex at Abstract, col. 3:36 4:23, Fig. 1 (60), Fig. 2 (22, 24, 60), Fig. 5 (60) Burger specifically discloses that ESP 60 is a controller that includes circuitry in the form of an ESP processing unit 62, time-division multiple access (TDMA) interface 64, packet interface 68, system bus 66/252, and memory 270. Ex at col. 4:1 12, 8:49 57, Fig. 5 (60, 62, 64, 66, 270). The ESP 60 also includes software in the form of instructions stored in the memory 270, including an 115. CISCO SYSTEMS, INC. Ex Page 116

117 operating system (274), web server procedure (276), and ESP call processing features ( ). Ex at col. 8:47 9:35, Figs. 4, 5 ( ) and The annotated version of Burger s FIG. 5 reproduced below shows the circuitry and software stored in memory on the controller The call processing software disclosed by Burger is also functionally equivalent to the call processing software claimed by the 113 patent. For example, as shown by comparing Figure 5 of the 113 patent to Figure 4 of Burger below, it is my opinion that the call processing software disclosed in 113 Figure 5 performs the same functions, in the same way, to achieve the same result as the call 116. CISCO SYSTEMS, INC. Ex Page 117

118 processing algorithms disclosed by Burger s Figure 4. Ex. 1003, Figs. 4-5, 11-12, 6:61-8:46, 11:1-52; Ex. 1001, Figs. 4-5, 4:12-18, 4: CISCO SYSTEMS, INC. Ex Page 118

119 2. Claims 143 [a] and 163 [a] receiving call data 143 [a] receiving at a controller call data which is associated with a first call via a first communication network; 163 [a] receiving call data which is associated with a first call via a first communication network; 202. As set forth in my opinion relating to claims 65[a] and 38[a] above, 118. CISCO SYSTEMS, INC. Ex Page 119

120 Burger discloses that the controller ESP 60 receives call data associated with a first call via the first communication network (packet network 24 or circuit switched network 22) in the form of the called parties telephone number or IP address. Ex at Figs. 4 (202, 204), 11 (502, 504), Abstract, col. 1:53 55, 4:24-41, 7:4-19, 11:1-13; supra VI.A.4) (cls. 65 [a] and 38[a]). 3. Claims 143 [b] and 163 [b] accessing control criteria 143 [b] accessing control criteria by the controller based upon the call data; 163 [b] accessing control criteria based upon the call data; 203. It is my opinion that Burger discloses that the controller (ESP 60) accesses control criteria based upon the call data by retrieving call management information from the database based on the public telephone number of the received call For example, Burger teaches that in one embodiment that the control criteria can include whether a call is received during designated privacy hours, or is from a blocked number, or the private packet address or telephone number of the subscriber for forwarding the call. Ex at col. 1:55 61, 7:20 33, 10:48 65, 11:11 21, Figs. 4 (204, 206, 208), 5 ( ), 10 ( ), 11 (506, 508); supra IV(B)(2). For one embodiment, Burger explains accessing control criteria based upon the call data as follows: Another aspect of the call management procedure also implements step of FIG. 10, and is executed after step 206 of FIG. 4. At step 450, the call management information is retrieved from the database based on the public telephone number. Step 452 determines 119. CISCO SYSTEMS, INC. Ex Page 120

121 whether the subscriber has set privacy hours. If so, and the call is within the privacy hours, the ESP does not notify the subscriber of the call but records a message from the caller. In step 454, if the subscriber has designated business hours and if call is outside the business hours, the ESP records the call from the caller. Step 456 determines whether the incoming call is from a telephone number, or portion thereof, which is blocked. If so, step 456 determines if the subscriber is notified of the blocking from field 390 (FIG. 6). If so, the ESP sends a message to the subscriber informing the subscriber that a caller from a blocked telephone number attempted placed a call, and informs the caller that the call cannot be accepted. Ex at col. 10:47-65 (emphasis added), Fig As further shown in Burger s Figure 4 (reproduced below), the ESP retrieves call management information from the database based on the public telephone number dialed and then determines whether the dialed subscriber has privacy hours or has blocked the telephone number of the incoming caller. In my opinion Figure 4 shows the ESP controller accessing control criteria based upon the call data (either the dialed number of the incoming call s number) CISCO SYSTEMS, INC. Ex Page 121

122 206. Figures 4, 5, and 11 (reproduced below) and the associated explanation in the specification similarly show the ESP accessing control criteria based upon call data. Ex at col. 1:55 61, 7:20 33, 10:48 65, 11:11 21, Figs. 4 (204, 206, 208), 5 ( ), 10 ( ), 11 (506, 508); supra IV(B)(1). Figure 11 illustrates Burger s ESP accessing control criteria when a call is received from the packet network CISCO SYSTEMS, INC. Ex Page 122

123 207. As I explain in more detail above in the claim interpretation section of this Declaration, the plain meaning of control criteria includes the selection of a telephone number. Supra IV(B)(2). Selecting an IP address would similarly be included in the plain meaning of control criteria as an IP address is akin to a telephone number for the packet-switched network. Burger s FIG. 8 (reproduced below) shows a graphical user interface (GUI) on a packet phone that a subscriber can use to select a variety of call features, including privacy hours 402, blocked numbers 410 and packet addresses 406, and forwarding numbers 414 and packet addresses 416. Ex at col. 10:30 47, Fig CISCO SYSTEMS, INC. Ex Page 123

124 208. Burger discloses that the call features selected by the subscriber are stored in a memory in this case, an ESP database 282 in the ESP memory 270. Ex at col. 9:50 67, Fig. 5 (270, 282), Fig. (282). The ESP database and memory are shown in Figure 5 reproduced below CISCO SYSTEMS, INC. Ex Page 124

125 209. Burger s Figure 6 (reproduced below) shows a subscriber record 320 in the ESP memory 270. Ex at col. 9:50 67, Fig. 6 (320). The subscriber can update the record 320 by entering and applying changes with the GUI as explained immediately above. Ex at col. 10:45 47, Fig. 9 (430). Accordingly, based on the foregoing, the ESP accesses the control criteria stored in memory based upon call data. Ex at col. 1:55 61, 7:20 33, 10:48 65, 11:11 21, Figs. 4 (204, 206, 208), 5 ( ), 10 ( ), 11 (506, 508) CISCO SYSTEMS, INC. Ex Page 125

126 4. Claims 143 [c] and 163 [c] initiating a second call 143 [c] initiating a second call via a second communication network by the controller using the call data and the control criteria, 163 [c] initiating a second call via the second communication network, using the call data and the control criteria, 210. It is my opinion that Burger discloses that ESP 60 places a second call to the subscriber over a second network using the call data and the control criteria As explained above in my analysis of claims 143[a-b] and 163[a-b], Burger s ESP 60 retrieves the subscriber s private packet-based address (control criteria) based on the subscriber s public telephone number or public packet address (call data). Supra VI(B)(2)-(3); Ex at col. 2:17 23, 8:27 35, 11:1 11, Fig. 4 (220). Burger teaches that a packet network address includes both URLs and IP addresses. After translation, the URL includes an IP address. Ex at col. 6: Burger s ESP 60 then uses that control criteria and call data to place a second call to subscriber s private packet-based address using the well-known 125. CISCO SYSTEMS, INC. Ex Page 126

127 CALL SETUP message in H of the H.323 ITU-T standard for VoIP communications. Ex at Fig. 4 ( ) (reproduced below), col. 7:23-55; Ex at 51-68; Ex at 41; supra III, 43, As shown below, Burger explains that if the subscriber doesn t answer the call placed to the private packet-based address, the ESP 60 retrieves the subscriber s private phone number (control criteria) based on the public telephone number or public packet address (call data). Ex at col. 2:17 23, 8:27 35, 11:11 32, 12:66 13:10, Figs. 4 (220), 11 (520), 15 (592). The ESP 60 then places another call to the private phone number via the PSTN 22 (second communication network) or the packet network 22. Ex at col. 2:17 23, 8:27 35, 11:11 32, 12:66 13:10, Figs. 4 (220) (reproduced below), 11 (520) (reproduced below), 15 (592) CISCO SYSTEMS, INC. Ex Page 127

128 214. Based on the foregoing, it is my opinion that Burger discloses initiating a second call via a second communication network by the controller using the call data and the control criteria. 5. Claims 143 [d] and 163 [d] a VOIP network 143 & 163 [d] wherein at least one of the first and the second communication networks is a voice over IP (VOIP) network; and a. Burger specifically discloses that the packet network 24 is a VoIP network 215. It is my opinion that Burger explicitly discloses that the packet 127. CISCO SYSTEMS, INC. Ex Page 128

129 network 24 is the internet, which transmits data, including voice data, using the Internet Protocol (IP) Burger specifically states that the disclosed invention is designed to provide call screening for packet-based systems due to the trend towards systems that use VoIP protocol. Ex at col. 1: Burger also teaches that the packet network 24 can transmit voice communication over the IP network, it is therefore my opinion that a POSA would understand that the packet network 24 is a VoIP network. Ex at col.s 2:6 8, 4:1 12, 4:57 58, Figs. 1 (68), 5 (68) It is also my opinion that a POSA would readily understand that the packet network 24 is a VoIP network because Burger specifically discloses that the packet network 24 implements the International Telecommunications Union ITU-T Recommendation H.323 multimedia communications standard, which was one of the first VoIP standards. Supra III, 61-65; Ex at col. 9:40 49, 13:55 67; Ex Finally, it is also my opinion that a POSA would further have understood that the packet network 24 is a VoIP network because it is connected to an IP phone 194, which transmits and receives voice communications over IP. Ex at col. 5:33 40, Fig. 1 (24, 194, 196). Burger even identifies specific models of IP phones that a POSA would understand were capable of VoIP communication: IP phone 194 connects to the packet-based network 24 via interconnection 196. The IP phone 194 may include an Audacity-T2 IP Phone processor CISCO SYSTEMS, INC. Ex Page 129

130 Alternately, the IP phone may be a HiNet (Registered Trademark of Siemens AG) LP 5100 IP Telephone manufactured by Siemens AG. Either the caller or the subscriber may use the IP phone to communicate over the packet-based network. Ex at col. 5: It is therefore my opinion that Burger explicitly discloses that the packet network 24 is the internet, which transmits data, including voice data, using the Internet Protocol (IP). b. Burger inherently discloses that the packet network 24 is a VoIP network 220. In the alternative, it is also my opinion based on the immediately preceding disclosures of Burger, that Burger inherently discloses that the packet network 22 is a VoIP network. It is my opinion that because Burger specifically discloses that voice calls are transmitted over an IP network, the packet network 22, the network must be a VoIP network. Supra III, 61-65; Ex at col. 2:6 8, 4:1 12, 4: c. It would have been obvious to a POSA to implement Burger s packet network 24 as a VoIP network In the alternative to my opinions above that Burger explicitly or inherently discloses that the packet network is a VoIP network, it is also my opinion that it would have been obvious to a POSA to implement the packet network as a VoIP network for the following reasons First, implementing Burger s packet network 24 as a VoIP network 129. CISCO SYSTEMS, INC. Ex Page 130

131 would have been obvious to try. Burger s Background states that packet networks were well known (Ex col. 4:64 65) and ha[d] been used to provide voice services using packet switching and Voice over Internet Protocol (VoIP). Ex at col. 1: Burger s Background also states because of the trend to packetbased systems that use VoIP protocol, there is a need for efficient call screening using packet-based systems. Ex at col. 1: VoIP was one of a finite number of ways to implement packet-switched voice communications in the 1999 to mid-2000 timeframe, which is the earliest claimed priority date of the 113 patent. Supra III, Because VoIP was well known, a POSA could have implemented Burger s packet network 24 as a VoIP network with a reasonable expectation of success. Burger also suggests a reasonable expectation of success by stating that [t]he packet-based network may be implemented in any manner. Ex at col. 4:66 67; supra III, Further, it is my opinion that a POSA would have been motivated to use VoIP for packet-switched networks because it offered several advantages over other approaches First, Burger identifies more efficient bandwidth usage as one advantage of packet switching for voice communications. Ex at col. 1:26 27; supra III, 64. Due to its more efficient bandwidth usage and the greater availability of bandwidth on the data network, VoIP was also cheaper than 130. CISCO SYSTEMS, INC. Ex Page 131

132 traditional PSTN voice communication. Supra III, Second, VoIP was readily compatible with the Internet, which was growing tremendously in popularity and reach in the 1999 to mid-2000 timeframe. Supra III, As a result, it is my opinion that a POSA would have been motivated to implement Burger s packet network 22 as a VoIP network based on the express teachings of Burger, and because a POSA would have known that implementing VoIP would have used bandwidth more efficiently, at a lower cost, and was compatible with the Internet. d. Ground 2: It would have been obvious to implement Burger s packet network 24 based on Alexander s teachings of VoIP technology In the alternative to my above opinions, it is also my opinion that it would have been obvious to a POSA to combine the VoIP network disclosed by Alexander with the packet based network of Burger As discussed in greater detail in the Overview of the Prior Art section of this declaration, V(D), Alexander discloses that its packet network LAN 20a is a VoIP network that allows IP telephony devices to communicate over an IP network. Ex at Figs. 1 (20a, 22-24, 60, 64), col. 3:64-4:1, 4: Alexander s Figure 1 is reproduced below: 131. CISCO SYSTEMS, INC. Ex Page 132

133 229. Alexander describes VoIP technology as used in Figure 1: The technology that allows telecommunications to be transmitted over an IP network is typically referred to as Voice over IP (VoIP). IP telephony devices are coupled to LAN 20a to allow such communication over LAN 20a. IP telephony devices have the capability of encapsulating a user s voice (or other inputs) into IP packets so that the voice can be transmitted over LAN 20a, WAN 30 and/or Internet 40. IP telephony devices may include telephones, fax machines, computers running telephony software (such as MICROSOFT NETMEETING), or any other device capable of performing telephony functions over an IP network. Ex at col. 3:64-4: Considering the foregoing and the disclosures of Burger discussed above, it is my opinion that implementing Burger s packet network 24 based on Alexander s teachings of VoIP technology would have been nothing more than the 132. CISCO SYSTEMS, INC. Ex Page 133

134 combination of prior art elements according to known methods to achieve predictable results. Ex at col. 1:9-47; 2:6 8, 4:1 12, 4:57 58, Figs. 1, 2, 5; Ex at Figs. 1, 3:64-4:1, 4: Burger teaches a communications network that uses the Internet Protocol (IP), and that VOIP networks were well known. Ex at col. 1:24-25, 2:6 8, 4:1 12, 4:57 58, Fig. 1 (68), Fig. 5 (68). And Alexander teaches transmitting voice data over an IP network using VoIP. Ex at col. 3: It is therefore my opinion that a POSA could have implemented Burger s packet network 24 using VoIP with a reasonable expectation of success in accordance with VoIP standards like H.323 and SIP. Ex at col. 4:66 67; supra III, It is also my opinion that a POSA would have been motivated to combine Alexander s teaching of a VoIP network with Burger s ESP 60 and packet network 24 because VoIP offered several advantages over other approaches, including more efficient bandwidth usage and lower cost. Ex at col. 1:26 27; supra III, In addition, Burger suggests combining a VoIP network, such as the one disclosed by Alexander, with the packet network 24 by stating that packet network 24 preferably operates using the H.323 protocol (a VoIP protocol), can be an IP packet network such as the Internet, and that VoIP was well known. Ex at col. 1:9-25, 7:46-55, 9:40-49, Fig. 1 (24); supra III, CISCO SYSTEMS, INC. Ex Page 134

135 6. Claims 143 [e] and 163 [e] enabling communication (grounds 1-2) 143 [e] enabling communication between the first call and the second call by the controller. 163 [e] enabling communication between the first call and the second call It is my opinion that Burger enables communication between the first call and the second call by the first controller As set out above in my analysis for claim 65[e] and 38[e], Burger discloses that the controller (ESP 60) enables communications between the first call and the second call by establishing two-way communication between the calling party and the subscriber. Supra VI(A)(8) (cls. 65 [e], 35[e]); Ex at col. 8:21 26, Figs. 4 (220), 11 (520). C. Claims 144 and 176 Are Unpatentable (Petition 2, Ground 1: Burger in view of the knowledge of a POSA and Ground 2: Burger in view of Alexander) 144 A method as defined in claim 143, wherein the call data includes a call request. 176 The controller of claim 163, wherein the call data includes a call request It is my opinion that Burger discloses that the controller ESP 60 receives call data including a call request by receiving a call from a caller 82. Ex at Figs. 2 (82), 4 (202, 204), col. 4: It is my opinion that a POSA would understand that a call includes a call request signal in accordance with the type of communication standard being used. Burger discloses that in one embodiment the circuit network 22 is the PSTN 134. CISCO SYSTEMS, INC. Ex Page 135

136 (Ex at col. 3:42-43), which at the time would have operated in accordance with the SS7 signaling protocol. Supra III, 35, Communication using the SS7 standard includes initial address message (IAM) that is sent to inform a switch in the PSTN that a call has been requested and includes the called number and type of service. Ex at ( The transmission of the calling party s number to the destination exchange can be effected by either the originating exchange including it in the IAM. ). Further, Burger discloses that packet network 24 uses the H.323 and H protocols which use the call setup procedures the Q.931 protocol. Ex.1003 at col. 7:50-52, 9:40-49; Ex at 51-68; Ex at 41; Ex. 1034; supra III, 32, 43, The Q.931 protocol specifies that a call SETUP message is sent by a user to initiate or request a call. (Ex at (setting out call data included in the call SETUP message) In the alternative, it is also my opinion that Burger inherently discloses receiving call data that includes a call request because the standard protocols used in Burger s network require that call data be included in the call request The PSTN (Burger s circuit switched network 22) operates according to the SS7 signaling protocol. Supra III, 35, 43-51; Ex at Fig. 1; Ex at 2; Ex at col. 3: Burger specifically teaches that its packet network 24 preferably operates according to the H.323 and H protocol. Ex at col. 9:40-49, 7: Both SS7 and H require that as part of 135. CISCO SYSTEMS, INC. Ex Page 136

137 establishing a call, the initial call signaling is a call request in the form of an IAM message for SS7, or a call SETUP message in H Ex at 10-11; Ex at 51-68; Ex at 41. As explained above, these messages are call data. As a result, it is my opinion that a POSA would understand that Burger s ESP 60 must receive a call request as part of the call data it receives when caller dials the subscriber s telephone number or public packet address. Ex at Figs. 2, 4 (202, 204), 11 (502, 504), col. 4:24-36, 6:62-7:19, 10:66-11:13. a. In the alternative, it would have been obvious to a POSA that a call request would be included in the call data 239. In the alternative to my opinions that Burger explicitly and inherently discloses that a call request would be included in the call data, it is also my opinion that even if this limitation was not disclosed by Burger it would have been obvious to a POSA for the following reasons Call requests were known in the art in the 1999 to mid-2000 timeframe as being parts of multiple communications network signaling protocol. For example, the SS7 standard messaging protocol includes an IAM call request message for initiating a call. Ex at 10-11; supra III, 35, As discussed above, the call IAM call request message is a call request. Supra VI(C) Packet networks such as the Internet used the SIP or H.323/H CISCO SYSTEMS, INC. Ex Page 137

138 signaling protocols for VoIP calls, which included call SETUP messages to request a call. Ex at 41; Ex at 35-36; Ex at 7. As discussed above, the call SETUP message is a call request A POSA would find it obvious to use a communication standard such as SS7, H.323/H.225.0, or SIP in combination with Burger s ESP 60 because they were the standardized communication protocol options at the time of the alleged invention. Supra III, 32, 35, 43-51, 54, It is my opinion that it would have been obvious to a POSA to use standard communication protocols because it would allow Burger s ESP 60 to interoperate with the PSTN and the Internet in predictable ways. Further, a POSA would be motivated to use a call request of one of the communication protocols (SS7, H.225.0, SIP) in order to allow Burger to interoperate with the PSTN and Internet without special programming or devices. Ex at 41; Ex at 10-11; supra III, 32, 35, 43-51, 54, It is also my opinion that POSA would be motivated to include a call request in the calls received by Burger s ESP 60 because Burger suggests using the protocols described above by teaching interconnecting to the PSTN 22, which uses SS7 and call request IAM messages, and to packet network 24 that uses the H.323 and H protocols which require the call request SETUP message. Ex at 10-11; supra III, 35, 43-51, Based on the foregoing, it is my opinion that it would have been 137. CISCO SYSTEMS, INC. Ex Page 138

139 obvious to a POSA to include a call request in the call data of Burger. D. Claims 145 and 177 Are Unpatentable (Petition 2, Ground 1: Burger in view of the knowledge of a POSA and Ground 2: Burger in view of Alexander) 145 A method as defined in claim 143, wherein the call data includes a telephone number. 177 The controller of claim 163, wherein the call data includes a telephone number As set forth in my opinions for claim limitations 143[a] and 163[a], Burger discloses or renders obvious that ESP 60 receives call data in the form of the subscriber s public telephone number when it receives a call from the PSTN 22, which ESP 60 extracts from the received call to determine which subscriber is associated with the call. Ex at Figs. 4 (202, 204), 11 (502, 504); col. 7:8-19; supra VI(B)(1) (cls. 143[a] and 163[a]). E. Claims 146 and 178 Are Unpatentable (Petition 2, Ground 1: Burger in view of the knowledge of a POSA and Ground 2: Burger in view of Alexander) 146 A method as defined in claim 143, wherein the call data includes an IP address. 178 The controller of claim 163, wherein the call data includes an IP address As set forth in my opinions for claim limitations 143[a] and 163[a], Burger discloses or renders obvious that ESP 60 receives call data that includes an IP address in the form of a subscribers public packet address when it receives a call from packet network 22, which ESP 60 extracts from the received call to determine which subscriber is associated with the call. Supra VI(B)(1) (cls. 143[a] and 163[a]); Ex at col. 11:1 10, Fig. 11 (502, 504) CISCO SYSTEMS, INC. Ex Page 139

140 F. Claim 149 Is Unpatentable (Petition 2, Ground 1: Burger in view of the knowledge of a POSA and Ground 2: Burger in view of Alexander) 149 A method as defined in claim 143, wherein the control criteria includes a selection of a telephone number As set forth in my opinions for claim limitation 143[b], Burger discloses or renders obvious that controller ESP 60 access control criteria from its database 282, that include the subscriber s private telephone number 328 for forwarding the call and telephone numbers to block 342, as well as other control criteria such as privacy hours 330, voic address 332. Ex at Figs. 4 ( ), 5 (282), 6 (320, 328, 330, 332, 342), 10 ( ), 12 ( ), col. 9:50-67, 10:48-65; supra V(B)(2). Burger s ESP 60 uses these call control criteria to determine whether to forward the received call to the subscriber and what telephone number was selected to forward the call to. Ex at Fig. 4 (206), Fig. 10 ( ), col. 10: G. Claim 150 Is Unpatentable (Petition 2, Ground 1: Burger in view of the knowledge of a POSA and Ground 2: Burger in view of Alexander) 150 A method as defined in claim 143, wherein the control criteria includes feature selection As set forth in my opinions for claim limitation 143[b], Burger discloses or renders obvious that the control criteria includes feature selection from the subscriber call management screen 400, including privacy hours 402, business hours 419, call forwarding settings , and call blocking settings CISCO SYSTEMS, INC. Ex Page 140

141 Ex at Fig. 8 (400, 402, , 419), col. 10:30-47; supra IV(B)(2), VI(B)(3). As shown in Burger s Figure 8, the subscriber is able to select features using the subscriber call management screen. H. Claims 65 and 38 Are Unpatentable (Petition 1, Ground 3: Archer in view of the knowledge of a POSA) and Grounds 4: Archer in view of Chang) 1. Claims 65 and 38 [pre1] - preamble 65 [pre1] 38 [pre1] A communication network with an improved architecture comprising a web-enabled processing system including one or more web servers designed to be coupled to a call processing system serving as an intelligent interconnection between at least one circuit-switched network and a packet network in a telecommunications network, 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 circuit-switched 140. CISCO SYSTEMS, INC. Ex Page 141

142 network and a packet network in a telecommunications network, It is my opinion that Archer discloses the preamble of claims 65 and 38 of the 113 patent as set forth below. a. Archer discloses a communication network with an improved architecture It is my opinion that Archer discloses a communication network involving circuit switched networks 118 and 136, packet network 130, server processor 128 and database 138 for routing calls between the networks as claimed by 65[pre1]. Ex at Abstract, col. 2:9 51, 4:17 57, 8:43 10:44, Fig. 4, 5. Archer s network is an improved network architecture as described in the preamble of claim 65, which includes a web-enabled processing system including one or more web servers designed to be coupled to a call processing system serving as an intelligent interconnection between at least one circuit-switched network and a packet network in a telecommunications network The annotated versions of Archer s Figures 2 and 6 shown below illustrate Archer s communication networks (system 110) with improved architecture as set forth in the preamble of claim 65, i.e., comprising a web-enabled processing system including one or more web servers designed to be coupled to a call processing system serving as an intelligent interconnection between at least one circuit-switched network and a packet network in a telecommunications network. Ex at col. 4:58 6:47, 10:45 11:43, Fig. 2 (110), Fig. 6. It is also my opinion 141. CISCO SYSTEMS, INC. Ex Page 142

143 that Archer teaches that server processor 128 performs the claimed method steps of 38 [pre1] by executing the find-me/follow-me call processing software shown in Figures 4 and 5 and operating in conjunction with database 138 and converter/gateways 126/132, as set out more fully below. Ex. 1004, Figs. 2, 4-6, 4:31-42, 6:47-7:21, 8:48-9: CISCO SYSTEMS, INC. Ex Page 143

144 b. Archer discloses a web-enabled processing system including one or more web servers coupled to a call processing system 251. It is my opinion that Archer s Figures 2 and 6, reproduced above, show a web-enabled processing system in the form of server processors 128, converters 126 and 132, and a database 138. Ex at col. 4:58 6:47, 10:45 11:43, Fig. 2 (126, 128, 132a, 132b, 138), Fig. 6 (128a 128c, 132, 138). It is my opinion that a POSA would have understood that these devices form a processing system that is web-enabled because they are coupled to a packet-based/ip network 130, which 143. CISCO SYSTEMS, INC. Ex Page 144

145 may be the internet. Ex at col. 6:30 47, 7:22 8:26, 10:45 52, Fig. 2 (130), Fig. 6 (130). This web-enabled processing system includes web servers in the form of one or more server processors 128 coupled to the packet network 130 and database 138 which is accessible to subscribers by logging onto the Internet. Ex at col. 6:30 47, 7:44-50, 10:45 52, Fig. 2 (128), Fig. 6 (128a 128c). Archer also includes a call processing system in the form of server processor 128 s software functionality for receiving and routing calls, as shown in Archer s Figures 4 and 5 (reproduced below), and one or more converters 126/132, which convert and route analog signals and digital packets between networks 118/136 and 130. Ex at col. 5:46 58, 8:18 26, Fig. 2 (126, 132a, 132b), Fig. 3 (showing a converter 126 equivalent to converter 132), Fig. 5, Fig. 6 (132) CISCO SYSTEMS, INC. Ex Page 145

146 145. CISCO SYSTEMS, INC. Ex Page 146

147 c. Archer discloses serving as an intelligent interconnection between at least one packet network and a second (circuit-switched) network in a telecommunications network It is my opinion that Archer discloses that the server processors 128, converters 126/132, and database 138 provide an intelligent interconnection between a packet-based/ip network 130 and a second network, which in this case is the circuit-switched Public Switched Telephone Network (PSTN) 118/136. Ex at Abstract, col. 5:5 46, 8:18 34, 8:43 10:44, Fig. 2 (118, 130, 136), Fig. 6 (130, 136) CISCO SYSTEMS, INC. Ex Page 147

148 253. The annotated versions of Archer s Figures 2 and 6 reproduced above show that the converters 126 and 132 are connected between the packet-based/ip network 130 and the PSTN 136. In my opinion, Archer s server processors 128 and database 138 provide intelligent interconnection between packet network 130 and circuit networks 118/136. These components comprise an intelligent interconnect at least because the server processor is a computer system that executes server software to route calls between the different network types 118, 130, and 136 based on control criteria stored in database 138. Ex at Figs. 2 (118, 128, 130, 136, 138, 120a, b, 134a, b), 4, 6 (118, 128a-c, 130, 136, 138, 120, 134), Abstract, col. 6:31-7:21, 8:50-65, 9:9-16, 10: Claims 65 and 38 [pre2] circuit switched network (grounds 3 and 4) 65 [pre2] the circuit-switched 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, 38 [pre2] the circuit-switched 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, 254. It is my opinion that Archer discloses that the circuit-switched network 118/136, which is part of the telecommunications network, can be the PSTN meeting the limitations of 65 [pre2] and 38 [pre2]. Ex at col. 4:3-10 ( A similar service is a find-me service which is illustrated in FIG. 1. ). In this system 10, a caller dials a single telephone number 12 of a called party from an 147. CISCO SYSTEMS, INC. Ex Page 148

149 initiating telephone 14. This call is routed over the public switched telephone network (PSTN) 18 to a switch 16. 5:4 32; see also 10:53 55, FIG. 2 (136), FIG. 6 (136) It is further my opinion that a POSA would have readily understood that the PSTN includes both 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. See Ex at col. 5:4 32; supra III, The Background of the 113 patent support my opinion that a POSA would have understood that the PSTN includes both 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. Ex at col. 1:45 51; Ex at a. In the alternative, it is my opinion that Archer inherently discloses switching facilities as claimed 256. Even if the PSTN disclosed in Archer does not expressly disclose the claimed switching facilities and edge switches, it is my opinion that these switching facilities are inherently disclosed by Archer because the PSTN s structure (an embodiment of Archer s networks 118/136) necessarily requires tandem switches (i.e., switching facilities) interconnecting edge switches. Ex at col. 5:23-24, Ex at col. 1:45 51; Ex at For example, as shown in numerous 148. CISCO SYSTEMS, INC. Ex Page 149

150 references, the PSTN network architecture was based on a switching hierarchy that comprised 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. Supra III, 38-40; Ex at Claims 65 and 38 [pre3] communication across circuit and packet (grounds 3-4) 65 [pre3] the communication network designed to enable voice communication from a calling party to a called party across both the circuit-switched network and a packet network, the communication network comprising: 38 [pre3] the method for enabling voice communication from a calling party to a called party across both the circuit-switched network and a packet network, the method comprising the steps of: 257. It is my opinion that Archer discloses that the server processors 128, converters 126 and 132, and database 138 enable voice communications from a calling party to a called party across both the packet-based/ip network 130 and the PSTN 118/136 as claimed in 65 [pre3] and 38 [pre3]. Ex at col. 8:43 11:43, Figs. 2, In a specific example Archer explains how its communication network is designed to enable voice communication across both circuit and packet-switched networks: As a specific example, assume a caller places a phone call. This call is routed through the ordinary phone system to a special converter where the receiving phone number is assembled into digital packet(s). These packets are routed to a computer system where the receiving phone number is extracted. The computer system queries a database with the 149. CISCO SYSTEMS, INC. Ex Page 150

151 phone number and the database returns all of the numbers in the called party s record. Each of these phone numbers are assembled into digital packet(s) and routed to converters which return the call notifications to the ordinary phone system. Ex at col. 4: Archer further explains that when the calling party on circuit network 118 places a phone call to the called party, the phone call is routed to the server processor 128 via converter 126 and the packet-switched network 130. Ex at col. 4:58 5:10, 6:47 7:21, 8:50 60, Figs. 2 (114, 118, 126, 128, 130), 4, 5 (102, 104). The server processor 128 looks up the called party s designated destination numbers in the database 138, and then initiates calls the designated destination numbers in an attempt to enable voice communication between the calling party and the called party. Ex at col. 6:47 7:21, 8:61 9:23, Figs. 4, 5 (106, 108). Figure 5, reproduced below, also illustrates this process: 150. CISCO SYSTEMS, INC. Ex Page 151

152 260. As further explained by Archer, if the designated destination numbers received by the server processor are telephone numbers, the server processor 128 calls the corresponding telephones 120 via the circuit-switched network 136 and converters 132. Ex at col. 7:3 13, 9:10 23, Figs. 2 (120a, 120b), 4 (62), 5 (108), 6 (120). If the designated destination numbers are IP addresses, the server processor 128 sends messages to the corresponding computers 134 via the packetswitched network 136. Ex at col. 7:3 13, 10:23 30, Fig. 2 (134a, 134b), Fig. 4 (62), Fig. 5 (108), Fig. 6 (134). Archer specifically discloses voice communication: This embodiment of the present invention is based on Internet 151. CISCO SYSTEMS, INC. Ex Page 152

153 Protocol (IP) based voice traffic. Ex at col. 4: Accordingly, based on the foregoing disclosures of Archer, it is my opinion that Archer discloses a communication network designed to enable voice communication from a calling party to a called party across both the circuit-switched network and a packet network. 4. Claims 65 [a]and 38 [a] receiving call data associated with a call (grounds 3 and 4) 65 [a] an interface capability within the web-enabled processing system for receiving call data which is associated with a call originated by the calling party via either the packet network or the circuit-switched network, 38 [a] receiving call data which is associated with a call originated by the calling party via the circuit-switched network, at the call processing system, 261. It is my opinion that Archer discloses that the web-enabled processing system as described in VI(H)(1)(b) contains converters 126/132 with an interface capability which receive call data associated with a call from circuit network 118 in the form of the called party s telephone number as claimed by limitation 65[a]. It is also my opinion that Archer s call processing system described in VI(H)(1)(b) receive call data associated with a call originated by a calling party via the circuitswitched network in the form of the called party s telephone number as claimed by limitation 38[a] Archer discloses converters 126/132 within the web-enabled processing system, with interface capability, that interface between the packet and 152. CISCO SYSTEMS, INC. Ex Page 153

154 circuit switched networks as shown in Figure 2 (annotated). The converters 126/132 are also part of Archer s call processing systems. Supra VI(H)(1)(B) 263. Archer s converters receive call data associated with a call from circuit network 118 in the form of the called party s telephone number. Ex at Fig. 2 (118, 126/132), col. 5:33-45, 6:33-38, 6: For example, Archer explains: server processor 128 performs the function of taking the incoming phone number generated at telephone 114 and querying database 138 looking up the forwarding phone number assigned to the user. Ex at col. 6: Archer also discloses interface capability when calls are received from a computer 114 over packet network 130 in the form of server processor s 128 connection to packet network 130 and IP address for receiving communications. Ex CISCO SYSTEMS, INC. Ex Page 154

155 1004 at col. 4:48-63, 6:51-56, 10:27-44 Fig. 6 (114, 130). Archer discloses that call data can include a computer s IP address when the call originates from a computer: database 138 would include telephone numbers for telephones 120a and 120b and IP addresses for computers 134a and 134b. Ex at col. 9: As explained above in the claim interpretation section, a POSA would understand that the plain and ordinary meaning of call data includes the called party s telephone number or other subscriber identification information. Supra V(B)(1) Archer s first converter 126 receives call data associated with the call in the form of signaling information, including the called party s telephone number. Ex at col. 5:46 58, 6: The converter 126 encodes the called party s telephone number into an IP packet and uses the telephone number to generate the packet s addressing information in order to route the packet through packet network 130 to server processor 128. Ex at col. 5:46 58, 6: Archer s server processor 128, also receives call data when it receives packets with the telephone number associated with the call. The server processor then extracts the telephone number and uses it to query database 138. Ex at col. 6:53 56; supra IV(B)(1). (a) It is also my opinion that the interface capability identified the interface capability identified in Archer s converters 126/132 and server processor 154. CISCO SYSTEMS, INC. Ex Page 155

156 128 s connection to packet network 130, in addition to the software executed by server processor 128, above, performs the same functions, in the same way, to achieve the same result as the structures disclosed in the 113 patent that perform the claimed function, in the form of a conventional computer programmed to carry out the functions described, and the software steps shown in Figures 4 and 5. Ex at Figs. 4-5, cols. 3:50-51, 4:39-40, 5:38-39, 5:52-6: Based on the foregoing it is my opinion that Archer meets the limitations of 65[a] and 38[a]. 5. Claims 65 and 38 [b] calling party using a communication device 65 [b] & the calling party using a communications device to originate the call for 38 [b] the purpose of initiating voice communication, 269. It is my opinion that Archer discloses that the calling party uses a communications device, such as telephone 114 or computer 134, to originate the call for the purpose of commencing a voice conversation as claimed in limitations 65[b] and 38[b]. Ex at col. 8:50-52 Archer teaches using standard phone service and equipment 114, a caller dials a called party s find-me phone number (Step 102). ); see also Ex at col. 9:58-63, 2:19-24, 4:58 63, 5:28-43, 5:50 52, 10:27 35, Figs. 2 (114), 5 (104), 6 (114). In another embodiment Archer explains: When the call is completed by an analog device 120 (e.g., a telephone), the digitized packets are reassembled by the converter 132 into a voice stream on the called party s end. When the call is 155. CISCO SYSTEMS, INC. Ex Page 156

157 completed to a digital device 134 (e.g., a computer) the digital device 134 itself (along with specialized software) reassembles the packets. At this point, the call is completed and conversation commences. In the case of a call to a computer 134, the called party can use a microphone and soundcard/speakers to complete the call using his PC. Ex at col. 9: Claims 65 and 38 [c] web-enabled processing system coupled to switching facility (grounds 3 and 4): 65 [c] the web-enabled processing system designed to be coupled to at least one switching facility of the circuit-switched network; 38 [c] the call processing system coupled to at least one switching facility of the circuit-switched network, 270. It is my opinion that Archer meets limitations 65[c] and 38[c] explicitly or inherently or it would have been obvious to a POSA in view of Archer, or it would have been obvious over Archer in view of Chang. a. Archer discloses that web-enabled processing system and call processing system is coupled to at least one switching facility in the form of the converters 126 and Archer discloses that web-enabled processing system and the call processing system are coupled to at least one switching facility in the form of server processor 128 and database 138 being coupled to converter/gateways 126 and 132 as claimed in limitations 65[c] and 38[c]. Ex at col. 6: These connections are illustrated in Figure 2 (annotated): 156. CISCO SYSTEMS, INC. Ex Page 157

158 272. As explained by Archer: [t]he circuit-switched communication network 118 is coupled to converter 126 which serves to convert the telephone signals into digitized packets. Converter 126 can also be referred to as a gateway, a digitizer or an encoder. Ex at col. col. 5: It is my opinion that a POSA would understand that converters 126/132 were switching facilities at least because they include routers (74) that perform switching functions by routing calls to and from circuit switched networks 126/132. Ex at Fig. 3 (shown below), col. 5:47-58 ( The modem translates the signals into digital signals which can be handled by router 74. ), 8: CISCO SYSTEMS, INC. Ex Page 158

159 274. The prosecution history of the 113 parent s application also supports my understanding. In that application, the applicant distinguished over prior art by arguing that switching facilities included any point in converged networks, including gateways, among others. Ex at 87 n.1. As a result, it is my understanding that converters 126/132 as gateways in the PSTN 118/136 are switching facilities Taking into account the prosecution history of the 113 patent, it is my opinion that a POSA would understand that converters 126/132 were switching facilities and not edge switches because they are not directly connected to telephones because the applicant distinguished over prior art that was an edge switch replacement. Ex at Based on the foregoing it is my opinion that Archer s web-enabled 158. CISCO SYSTEMS, INC. Ex Page 159

160 processing system and call processing system are coupled to at least one switching facility in the form of the converters 126 and 132 meeting claim limitations 65[c] and 38[c]. b. Archer s web-enabled processing system and call processing system are inherently coupled to switching facilities In the alternative, it is also my opinion that Archer inherently discloses that Archer s converters 126 and 132 of the web-enabled processing system and call processing system are coupled to switching facilities in the PSTN 118/136 for making and receiving calls meeting claim limitations 65[c] and 38[c]. Ex at Fig. 2, col. 5:23-36, 8:18-30, 8:61-9: A POSA would understand that in order for converters 126 and 132 to make calls over the PSTN, the converters must be necessarily coupled to switching facilities in the PSTN through both bearer channels for carrying voice data and signaling channels for carrying the SS7 signaling protocol. Ex at 1-2; Ex at 1; Ex at Fig. 1, col. 8:54-63; supra III, By mid-1999 to mid-2000, it was well known that SS7 signaling channels in the PSTN were used to connect AIN SCPs and STPs, which in turn controlled edge switches and tandem switches for routing voice data. Ex at 1-2; Ex at 1; Ex at Fig. 1, col. 8:54-63; supra III, 41-51; Ex at 87, n Relying again on the applicant s statements during prosecution of the 159. CISCO SYSTEMS, INC. Ex Page 160

161 113 patent s parent application, applicant distinguished over prior art by arguing that switching facilities included any point in converged networks, including AIN SCPs and STPs. Ex at 87 n.1. As a result, it is my opinion that a POSA would understand that because converters 126/132 are coupled to the PSTN for making and receiving calls they must be coupled to a switching facility of the circuit-switched network 118/136. c. Alternatively, the web-enabled processing system and call processing system being connected to the switching facilities of the Archer network would have been obvious based on the knowledge of a POSA In the alternative, it is also my opinion that it would have been obvious to a POSA that Archer s converters 126 and 132 of the web-enabled processing system and call processing system are coupled to switching facilities in the PSTN 118/136 for making and receiving calls meeting claim limitations 65[c] and 38[c] Archer s server processor can receive calls from and place calls to the PSTN through converters 126/132. Ex at col. 8:50-9:16, Figs. 4, 5. As Archer explains with respect to placing calls: [U]sing the data identified in step 3, the server processor simultaneously issues a call notification to each of the receiving communication devices 120, 134 (step 108)... upon receipt of the confirmation in step 64, server processor 128 terminates the connections with each of the other destinations as illustrated by step 66. A communication connection can then be established between the telephone caller at telephone 114 and the called party at, for example, telephone 120b. Ex at col. 9:9-9: CISCO SYSTEMS, INC. Ex Page 161

162 282. In order for Archer s server processor 128 to make and receive calls to and from the PSTN, it would be obvious to a POSA that server processor 128 was capable of transmitting signals to switching facilities in the PSTN, including SCPs, STPs, and tandem switches, because those switching facilities are necessary parts of calls flowing through the PSTN for calls to devices serviced by different edge switches. Ex at col. 1:42-4; supra III, 42-51; Ex at 87 n.1. It is therefore my opinion that a POSA would be motivated to couple Archer s webenabled processing system to a switching facility in the PSTN in the form of SCPs and STPs to implement Archer s preferred embodiment where circuit-switched networks 118/136 are the PSTN and server processor 128 can receive calls from, and place calls to, devices connected to the PSTN. Ex at col. 5:23-25, 8: d. Ground 4: Limitations 65[c] and 38[c] would have been obvious in view of Chang s teaching of a webenabled processing system and call processing system coupled to switching facilities in the PSTN 283. In the alternative, it is also my opinion that limitations 65[c] and 38[c] would have been obvious over Chang in view of Archer Chang discloses a web-enabled processing in the form of its Secure Access Platform (25, 525). Ex at Fig. 1 (25), Fig. 5 (525). Chang s Secure Access Platform (25) is a web-enabled processor at least because it interfaces to a public packet switched data network, such as the Internet 27. To the network 27, the 161. CISCO SYSTEMS, INC. Ex Page 162

163 platform 25 appears as a Web server, and as discussed more below, the platform receives HTTP requests and provides HTML Web pages in response. Ex at col. 11:30-35, Figs. 2, Chang s Secure Access Platform provides control selections to switching facilities in the PSTN by providing the user control selections to the SCPs (19, PSTN AIN Service Control Points) which in turn control tandem switches (11 T ) in the PSTN using SS7 signaling. Ex at Fig. 1 (11 T, 19, 25), Abstract, col. 7: Chang s Figure 1, shown below, illustrates that the Secure Access Platform (25) is coupled to SCPs (19) through the OSN (21) to provide SS7 signaling to tandem switching offices (11 T, switching facilities). Ex at Fig. 1 (11 T, 15, 19, 21, 25, annotated in red), 5 (525), col. 18:66-19:12, Abstract CISCO SYSTEMS, INC. Ex Page 163

164 Web Enabled Processing System and Call Processing System Switching Facilities (a) It is also my opinion that Chang discloses the call processing facility of claim 38[c] in the form of ISCP 242 in Figure 2 (annotated below), which receives user call control selections from the Secure Access Platform 25 over OSN 21, and contains call processing records (CPRs) for processing calls to and from various subscriber. Ex at Fig. 2 (25, 242); Ex at Fig. 2 (25, 242), 16: Chang s call processing system, in the form of ISCP 242 contains, and is therefore coupled to a switching facility in the form of SCP 19, which is coupled to switching facilities in the form of tandem offices (11 T ). Id CISCO SYSTEMS, INC. Ex Page 164

165 286. In forming my opinion, I again rely on the 113 patent s parent application where applicant distinguished over prior art on the basis that switching facilities were any point in a converged network, including SCPs and STPs. Ex at 87 n.1. As a result, it is my opinion that Chang discloses a web-enabled processing system or call processing system 25/525 coupled to switching facilities in the PSTN in the form of SCPs 19. Ex at Fig. 1, col. 7:43-8:24, 18:66-19:12. (1) Coupling Archer s web-enabled processing system and call processing system to the switching facilities in the PSTN disclosed by Chang would have been obvious to a POSA 287. It is my opinion that combining the teachings of Archer s web-enabled processing system and call processing system with Chang s PSTN switching 164. CISCO SYSTEMS, INC. Ex Page 165

166 facilities would have been obvious to a POSA because the combination is nothing more than the combination of known prior art techniques in conventional ways, achieving predictable results that would create an improved system As shown by Chang, the provision of user feature selections to switching facilities in circuit-switched networks was known in the art, including through the use of the standard Intelligent Network functional units (SCP, STP, SSP, and IPs), switching facilities (11 E, 11 T ), and signaling protocols (SS7). Ex at Figs. 1 (11 E, 11 T, 15, 19, 23), 2; col. 8:64-9:37; Ex at 1-2 (provision of computer control of calls over the PSTN was well-developed in 1996)). For example, Chang states: A typical telephone network serving a large number of customers over a wide geographic area utilizes a number of SCPs 19, two of which appear in FIG. 1. Each SCP 19 connects through SS7 links to one pair of the STPs 15. For most AIN services, a central office 11 obtains the requisite call control information from one SCP 19 serving the area in which the switch resides. Ex at col. 8:64-9:3, see also Fig It is my opinion that coupling Archer s web-enabled processing and call processing system to switching facilities as taught in Chang would allow Archer to use existing and well-known and standardized AIN PSTN switching and control functionality without modification, which would lead to predictable results and reduce barriers to entry and costs for developing and maintaining the system. Supra III, In addition, a POSA would have been motivated to couple Archer s 165. CISCO SYSTEMS, INC. Ex Page 166

167 web-enabled processing system and call processing system to switching facilities in the PSTN because it would also further Archer s stated goals of reducing switching traffic on the PSTN by allowing Archer s web-enabled processing system control the routing through the PSTN so as to minimize switching traffic. Ex at col. 2:63-66 ( system also reduces switch traffic for telephone companies ). As a result, a POSA would have been motivated to couple Archer s web-enabled processing system and all processing system to switching facilities in the PSTN to allow Archer to efficiently control routing of calls using standard switching protocols and equipment to achieve Archer s stated goal of reducing switching traffic of the PSTN. 7. Claims 65 and 38 [d] processing a call across both networks (Ground 4) 65 [d] a call processing capability within the web-enabled processing system for processing the call across the packet network and the circuitswitched network to complete the call to the called party; and 38 [d] the call processing system processing the call across the circuitswitched network and the packet network to complete the call to the called party; and 291. It is my opinion that Archer discloses that the web-enabled call processing system includes a call processing capability for processing the call across the packet-based/ip network 130 and the PSTN 118/136 to complete a call in the form of converters 126 and 132. Ex at col. 8:43 11:43, Figs. 2 and 4 6. As discussed below, the call processing capability for processing the call across the packet network and the circuit-switched network to complete the call to the called 166. CISCO SYSTEMS, INC. Ex Page 167

168 party is contained in the server processor 128. For the same reasons it is also my opinion that Archer discloses a call processing system for processing the call across the packet network to complete the call to the called party as claimed by limitation 38[d] As discussed above with respect to limitations 65[c] and 38[c] Archer s web-enabled processing system and call processing system includes converters 126 and 132, which are coupled through packet network 130 to server processor 128. Ex at col. 6:51-56; supra VI(H)(6)(b). This connection is illustrated in Figure 2 (annotated) As explained by Archer: [t]he circuit-switched communication network 118 is coupled to converter 126 which serves to convert the telephone 167. CISCO SYSTEMS, INC. Ex Page 168

169 signals into digitized packets. Converter 126 can also be referred to as a gateway, a digitizer or an encoder. Ex at col. 5: As shown in Figure 2, the converter 126 in Archer receives telephone signals via the PSTN 118/136, packetizes the telephone signals, and transmits the resulting packets via the packet-based/ip network 130. Ex at col. 3:46 58, Fig. 2. Archer s other converters 132 receive packets from the server processor 128 via the packet-based/ip network 130, then issue call notifications to telephones 120a/b via the PSTN 118/136. Ex at col. 9:10 23, Figs. 2, 6. For example, Archer s sever processor 128 establishes a communication connection across both networks by routing voice packets to the destination that answered the call: The first destination to answer initiates voice digitization at the server processor The voice packets are then routed to the destination which responded to the call (Step 109). When the call is completed by an analog device 120 (e.g., a telephone), the digitized packets are reassembled by the converter 132 into a voice stream on the called party s end. When the call is completed to a digital device 134 (e.g., a computer) the digital device 134 itself (along With specialized software) reassembles the packets. At this point, the call is completed and conversation commences. In the case of a call to a computer 134, the called party can use a microphone and soundcard/speakers to complete the call using his PC. Ex at col. 9: (a) It is also my opinion that the call processing capability identified in Archer s server processor 128 executing software in conjunction with converters 126/132, above, performs the same functions, in the same way, to achieve the same result as the structures disclosed in the 113 patent that perform the claimed function, in the form of a conventional computer programmed to carry out the 168. CISCO SYSTEMS, INC. Ex Page 169

170 functions described, and the software steps shown in Figures 4 and 5. Ex at Figs. 4-5, cols. 3:50-51, 4:39-40, 5:38-39, 5:52-6: Accordingly, it is my opinion that the web-enabled processing system of Archer includes a call processing capability within the web-enabled processing system for processing the call across the packet network and the circuit-switched network to complete the call to the called party as claimed by limitation 65[d] and 38[d]. 8. Claims 65 and 38 [e] establishing a voice communication (Ground 3) 65 [e] a capability within the web-enabled processing system for establishing the voice communication between the calling party and the called party after the call is completed, across both the packet network and the circuit-switched network. 38 [e] establishing the voice communication between the calling party and the called party after the call has been completed, across both the circuitswitched network and the packet network It is my opinion that Archer discloses that its web-enabled processing system includes the capability for establishing voice communication between the calling party and the called party after the call is completed, across both the packetbased network 130 and the circuit-switched network 118/136 in the form of commencing a conversation as claimed by limitations 65[e] and 38[e]. The call processing capability for processing the call across the packet network and the circuit-switched network to complete the call to the called party is contained in the server processor CISCO SYSTEMS, INC. Ex Page 170

171 297. For example, Archer explains: The first destination to answer initiates voice digitization at the server processor The voice packets are then routed to the destination which responded to the call (Step 109). When the call is completed by an analog device 120 (e.g., a telephone), the digitized packets are reassembled by the converter 132 into a voice stream on the called party s end. When the call is completed to a digital device 134 (e.g., a computer) the digital device 134 itself (along With specialized software) reassembles the packets. At this point, the call is completed and conversation commences. In the case of a call to a computer 134, the called party can use a microphone and soundcard/speakers to complete the call using his PC. Ex at col. 9: (a) It is also my opinion that the capability to establish communications identified in Archer s server processor 128 executing software, above, performs the same functions, in the same way, to achieve the same result as the structures disclosed in the 113 patent that perform the claimed function, in the form of a conventional computer programmed to carry out the functions described, and the software steps shown in Figures 4 and 5. Ex at Figs. 4-5, cols. 3:50-51, 4:39-40, 5:38-39, 5:52-6: Accordingly, it is my opinion that Archer discloses this limitation. See also Ex at col. 9:50-67, 3:4 10, 7:14 21, 9:31 37, 11:28 43, Fig. 4 (68), Fig. 5 (109). I. Claims 143 and 163 Are Unpatentable (Petition 2, Ground 3: Archer in view of the knowledge of a POSA) 1. Claims 143 [pre] and 163 [pre] - preamble 143 [pre] A method of providing an intelligent interconnection between a first communication network and a second communication network, 170. CISCO SYSTEMS, INC. Ex Page 171

172 comprising: 163 [pre] A controller for use between a first communication network and a second communication network, the controller including circuitry and/or software for: a. A method of providing an intelligent interconnection between a first communication network and a second communication network It is my opinion that Archer discloses providing an intelligent interconnection between a first communication network (packet-based network 130) and a second communication network (circuit-switched network 118/136) using a controller (server processor 128 and database 138) and converters 126/132. Ex at Abstract, col. 2:9 51, 4:17 6:47, 8:43 11:43, Figs. 2, 4, 5, It is my opinion that the interconnection components in Archer comprise an intelligent interconnect at least because the server processor is a computer system that executes server software to route calls between the networks 118, 130, and 136 based on control criteria stored in database 138. Ex at Figs. 2 (118, 128, 130, 136, 138, 120a, b, 134a, b), 4, 6 (118, 128a-c, 130, 136, 138, 120, 134), Abstract, col. 6:31-7:21, 8:50-65, 9:9-16, 10: As shown below, the annotated versions of Archer s Figures 2 and 6 illustrate the interconnection between a first packet switched communication network and second circuit switched (PSTN) communication networks CISCO SYSTEMS, INC. Ex Page 172

173 Second Communication Network (PSTN) First Communication Network (VOIP) Controller 172. CISCO SYSTEMS, INC. Ex Page 173

174 b. A controller for use between a first communication network and a second communication network, the controller including circuitry and/or software It is my opinion that Archer discloses a controller (server processor 128 and database 138) between a first communication network (packet-based network 130) and a second communication network (circuit-switched network 118/136) that includes circuitry and/or software. Ex at col. 6:30 7:21, Fig. 2 (128, 138), Fig. 4, Fig. 6 (128)] It is my opinion that Archer s server processor 128 is a controller that performs call control functions for example: [S]erver processor 128 is a computer system coupled to packetswitched network 130 and executes server software to perform the tasks required by the present invention. In a find-me/follow-me system, for example, server processor 128 performs the function of taking the incoming phone number generated at telephone 114 and querying database 138 looking up the forwarding phone numbers assigned to the user. Ex at col. 6:30 38; see also 6:47-67, 7: Archer s server processor also includes circuitry and software. For example, the server processor 128 is a computer system including a database 138 with mass storage units, such as hard disk drive. It is my opinion that these computer components include circuitry and software. Ex at col. 6:30 38; see also 6:47-67, 7: The call processing software disclosed by Archer is also functionally equivalent to the call processing software claimed by the 113 patent. For example, as shown by comparing Figure 5 of the 113 patent to Figure 5 of 173. CISCO SYSTEMS, INC. Ex Page 174

175 Archer below, it is my opinion that the call processing software disclosed in 113 Figure 5 performs the same functions, in the same way, to achieve the same result as the call processing algorithms disclosed by Archer s Figure 5. Ex. 1004, Figs. 4-5, 6:43-7:22, 8:42-9:61; Ex. 1001, Fig. 4-5, 4:12-18, 4: patent Figure 5 is reproduced immediately below, followed by Archer s Figure CISCO SYSTEMS, INC. Ex Page 175

176 Archer s Figure 5 is reproduced below: 175. CISCO SYSTEMS, INC. Ex Page 176

177 176. CISCO SYSTEMS, INC. Ex Page 177

178 2. Claims 143 [a] and 163 [a] receiving call data (Ground 3) 143 [a] receiving at a controller call data which is associated with a first call via a first communication network; 163 [a] receiving call data which is associated with a first call via a first communication network; 305. It is my opinion that Archer discloses that the controller (server processor 128) receives call data in the form of subscriber identification information associated with a first call via the first communication network (packet-based network 130). Ex at col. 4:31 42, 6:47 62, Fig. 4 (52) Archer teaches that when the call is initiated using a telephone, the subscriber identification information (call data) is in the form of the called party s telephone number, which has been encoded into a packet by converter 126 and sent to server processor 128 s IP address. Ex at Fig. 4 (52), col. 6:47-55, 4: As previously discussed, it is my opinion that the plain and ordinary meaning of call data includes the called party s telephone number. See, e.g., Ex at claim 145 and 177; supra IV(B)(1). Archer further explains that: As a component on packet-switched network 130, server processor 128 has been assigned an address, e.g., an IP address. In the case where the process is initiated by a telephone call, the called party s telephone number or subscriber number has been encoded by a converter 126 which sent the packet to the assigned address. Server processor 128 extracts the subscriber identification information from the packet and queries database 138 (discussed in more detail below). This task is illustrated by step 54. Database 138 stores a series of destinations associated with each subscriber. These destinations are returned to server processor 128. The server processor 128 then extracts the subscriber identification information (called telephone number) from the packet and queries the database 138 for destinations 177. CISCO SYSTEMS, INC. Ex Page 178

179 associated with the subscriber. Ex at col. 6:51-62 (emphasis added) Archer s Figure 4 further illustrates the server processor receiving call data in the form of subscriber identification information and querying a database. Ex at Fig 4 (annotated) Accordingly, it is my opinion that Archer discloses that the controller (server processor 128) receives call data in the form of subscriber identification information (called party telephone number) associated with a first call via the first communication network (packet-based network 130). 3. Claims 143 [b] and 163 [b] accessing control criteria 143 [b] accessing control criteria by the controller based upon the call data; 163 [b] accessing control criteria based upon the call data; 178. CISCO SYSTEMS, INC. Ex Page 179

180 309. It is my opinion that Archer discloses that the controller (server processor 128) accesses control criteria based upon the call data (subscriber s telephone number) in the form of querying the database 138 to look up destination addresses and priorities associated with the subscriber s telephone number For example Archer explains that the: [D]atabase 138 will include a number of find-me/ follow-me telephone numbers for each subscriber to the system. The database 138 will also include other subscriber information such as forwarding priorities and other information. Ex.1004 at col. 7: Archer further explains that when a call is received the identification information is used to query the database for subscriber information, including but not limited to information selected by the subscriber, such as forwarding telephone numbers, forwarding priorities, and subscriber billing information: Server processor 128 extracts the subscriber identification information from the packet and queries database 138 (discussed in more detail below). This task is illustrated by step 54. Database 138 stores a series of destinations associated with each subscriber. These destinations are returned to server processor 128. Ex at Fig. 4 (54), col. 6:51-62; see also, Ex.1004 at col. 6:57 7:2, 2:45 51, 4:37 47, 5:33 36, 5:42 46, 6:33 47, 7:23 50, 8:57-65, 9:9 9:16, Fig. 2 (138), Fig. 4 (54), Fig. 6 (138) My analysis for claim elements 143[a] and 163[a] also provides relevant evidence for this limitation, for example, Fig CISCO SYSTEMS, INC. Ex Page 180

181 312. As explained above, it is my opinion that the plain and ordinary meaning of control criteria includes call features and destination address choices, such as telephone numbers. Supra section IV(B)(2). Accordingly, it is my opinion that Archer discloses that database 138 stores control criteria in the form of call forwarding telephone numbers and forwarding priorities. Ex at col. 7:30 43, FIG. 2 (138), FIG. 6 (138). Archer also discloses that a subscriber can change or add call features via the Internet or with the assistance of an operator. For example: [d]atabase 138 is preferably arranged so that is can be accessed by the subscriber at any time. For example, the subscriber should be able to log onto the ISnternet [sic] and change or add telephone numbers where he can be reached. Alternatively, the subscriber can call a telephone number and update database 138 with the assistance of an automated or human operator. Ex at col. 7: Based on the foregoing, it is my opinion that Archer discloses accessing control criteria by the controller based upon the call data as claimed. 4. Claims 143 [c] and 163 [c] initiating a second call 143 [c] initiating a second call via a second communication network by the controller using the call data and the control criteria, 163 [c] initiating a second call via the second communication network, using the call data and the control criteria, 314. It is my opinion that Archer discloses that the server processor 128 places a second call over the packet network (second communication network) to the subscriber using the call data and the control criteria As shown below in the excerpt of Figure 4, the server processor places a second call over the packet network in the form of multicasting packets to the 180. CISCO SYSTEMS, INC. Ex Page 181

182 subscriber s communications devices identified by server processor 128 querying database 138 using the called party s telephone number. Ex at col. 6:57-7:22, 2:17-23, 8:27-35, 11:1-11, Fig. 4 (54-66) (reproduced below) As explained in my analysis with respect to claim elements 143 [a-b] and 163 [a-b] above, the server processor 128 retrieves the called party s designated destination numbers (control criteria) based on the called telephone number (call 181. CISCO SYSTEMS, INC. Ex Page 182

183 data). Ex at col. 6:57-7:22, 2:17-23, 8:27-35, 11:1-11, Fig. 4 (54-66); supra VI(H)(2)-(3). The server processor 128 then initiates (second) phone calls to each of the designated destination numbers including calls to telephones 120 on the circuit-switched switched network 136 (second communication network) by multicasting packets to converter 132 encoded with the telephone number of telephone 120. Ex at col. 7:3-21, 9:9 23, Figs. 2 (120, 136), 5 (108), 6 (120, 136). Converter 132 converts the multicasted packet from server processor 128 into a circuit switched telephone call which causes telephone 120 to ring. Ex at Fig. 1 (120, 128, 132), 4 (62), 5 (108). As explained by Archer: Using the data identified in step 3, the server processor 128 simultaneously issues a call notification to each of the receiving communication devices 120, 134 (Step 108). In the illustrated embodiment, server processor 128 would multicast the call notification to the IP addresses of converters 132 and computers 134. The converters 132 will translate the call notification and cause telephones 120 to ring. Ex at col. 9: Based on the foregoing disclosure, it is my opinion that the server processor in Archer initiates a second call via a second communication network by the controller using the call data and the control criteria. 5. Claims 143 [d] and 163 [d] at least one VOIP network (Ground 3) 143 & wherein at least one of the first and the second communication networks 163 [d] is a voice over IP (VOIP) network; and 318. It is my opinion that the first communication network (packet network 182. CISCO SYSTEMS, INC. Ex Page 183

184 130) is a voice over IP network. Archer specifically teaches that Archer the IP packet network 130 supports voice over IP (i.e., VoIP), by stating that the embodiment of the invention in Figure 2 is based on Internet Protocol (IP) based voice traffic. Ex at col. 4:20-30, 6:1-17 (network (130) preferably uses the IP protocol and supports voice calls ) Archer also teaches that packet-switched network is preferably and Internet Protocol (IP) network, such as the Internet and that voice communication is transmitted over the IP network. Ex.1004 at col. 2:52 55, 4:20 25, 6:7 30, 6:63 64, 7:3 22. Archer goes on to explain that: For voice communications, the conversion function would include sampling the voice signals and generating digitized representations. This digital sample data can then be combined with packet headers and footers in a manner consistent with the protocol used on packetswitched network 130. While Internet Protocol (IP) is preferred, the precise protocol used is not critical to the claimed invention. In general, converter 126 may convert signals from a first network (e.g., circuit-switched network (118) into a digital protocol which can be routed through packet-switched network 130. Ex at col. 5: In my opinion, these disclosures show that Archer discloses a packetswitched network is a VoIP network In the alternative, it is also my opinion that the packet-switched network disclosed by Archer is inherently a VoIP network because at time VoIP generally referred to transmitting voice communication over an IP network. VoIP stands for voice over Internet Protocol networks. Supra III, In order for 183. CISCO SYSTEMS, INC. Ex Page 184

185 Archer to allow voice communication over IP packet network 130 to server processor 128 and then to converter 132 (Ex at col. 9:51-55) or computer 134a (Ex at col. 9:55-58), it is my opinion that IP packet network 130 must be a VoIP network. Ex at col. 7:14-30, 9:9-67. a. In the alternative, it is my opinion that it would have been obvious to a POSA that the packet network 130 is a VoIP network 322. Again in the alternative to my opinions above, it is also my opinion that even if Archer does not expressly or inherently disclose a VoIP network it would have been obvious to a POSA. First, VoIP communications were well known in May 2000 VoIP is referenced by Archer and were the only option for communicating voice calls over IP packet-switched networks. Ex. 1010; Ex at col. 9:63-67, 1:48-55; supra III, It is my opinion that a POSA would have been motivated to use a VoIP network for packet-switched network 130 in order to allow Archer s controller in the form of server processor 128 and database 138 to perform its claimed function of enabling voice communication over both packet and circuit switched networks. Ex at col. 9:9-30, 11: Further, Archer suggests implementing IP packet network 130 as a VoIP network by noting that its invention is designed to improve problems with existing VoIP systems, such as poor call quality, long delays, and lack of features. Ex at col. 1: For the foregoing reasons, it is my 184. CISCO SYSTEMS, INC. Ex Page 185

186 opinion that it would have been obvious to a POSA the packet switched network disclosed by Archer would be a VoIP network. 6. Claims 143 [e] and 163 [e] 143 [e] enabling communication between the first call and the second call by the controller. 163 [e] enabling communication between the first call and the second call It is my opinion that Archer discloses that the server processor 128 enables voice communication between the first and second calls in the form of establishing a communication connection between the telephone caller at telephone 114 (first call) and the called party at telephone 120a (second call) upon receiving an answer notification from telephone 120a. Ex at col. 7:14-21, 9:31-37, 9:58 61, 11:14 43, Figs. 4 (68), 5 (109) Archer discloses that upon receiving the pickup notification, server processor 128 enables communication between the first and second calls by routing voice packets to the communication device that answered to the call and the conversation commences. Ex at col. 9:50-61, 7:14 21, 9:31 37, 11:14 43, FIG. 4 (68), FIG. 5 (109). Accordingly, it is my opinion that Archer discloses enabling communication between the first call and the second call by the controller. J. Claims 144 and 176 Are Unpatentable (Petition 2, Ground 3: Archer in view of the knowledge of a POSA) 144 A method as defined in claim 143, wherein the call data includes a call request. 176 The controller of claim 163, wherein the call data includes a call request CISCO SYSTEMS, INC. Ex Page 186

187 326. It is my opinion that Archer discloses or renders obvious that server processor 128 receives call data that includes a call request Archer explains with respect to Figure 4 (reproduced in part below): FIG. 4 is a flowchart of the software which will execute on server processor 128. In Step 52, server processor 128 receives one or more packets which include an indication of the called party. As a component on packet-switched network 130, server processor 128 has been assigned an address, e.g., an IP address. In the case where the process is initiated by a telephone call, the called party s telephone number or subscriber number has been encoded by a converter 126 which sent the packet to the assigned address. Ex at col. 6:47-56, 328. Based on the disclosures of Archer, it is my opinion that the call data 186. CISCO SYSTEMS, INC. Ex Page 187

188 received by the controller includes a call request when the controller receives packets indicating the party being called. a. In the alternative, it is also my opinion that it would have been obvious to a POSA that the server processor 128 receives call data that includes a call request In the alternative, based on the fact that Archer specifically claims receiving a request for a call and describes that the controller receives one or more packets which include an indication of the called party, it is my opinion that it would have been obvious to a POSA based on the disclosures of Archer that the call data received by the controller includes a call request. Ex at col. 6:47-56, 8:50-60, 11:55-57 ( receiving a request for a call ), Fig. 4, Fig. 5( ). K. Claims 145 and 177 Are Unpatentable (Petition 2, Ground 3: Archer in view of the knowledge of a POSA) 145 A method as defined in claim 143, wherein the call data includes a telephone number. 177 The controller of claim 163, wherein the call data includes a telephone number As set out above in my analysis for claim limitations 143[b] and 163[b] and claims 144 and 145, it is my opinion that Archer discloses or renders obvious that server processor receives call data in the form of the called party s telephone number when the calling party initiates the call over circuit switched network 118 using telephone 114. Supra VI(I)(3); Ex at Figs. 1 (114), 4 (52-54), col. 6:47-60, 8:50-65, 4: L. Claim 149 Is Unpatentable (Petition 2, Ground 3: Archer in view of 187. CISCO SYSTEMS, INC. Ex Page 188

189 the knowledge of a POSA) 149 A method as defined in claim 143, wherein the control criteria includes a selection of a telephone number As set forth above for claims 143[b] and 163[b], it is my opinion that Archer discloses or renders obvious that the control criteria includes the selection of a telephone number in the form of subscriber s communications device addresses where those addresses are telephones (e.g., 120a) connected to the circuit switched network 136. Ex at col. 6:57-7:13, 8:61-65, 9:9-16; supra VI(I)(3). M. Claim 150 Is Unpatentable (Petition 2, Ground 3: Archer in view of the knowledge of a POSA) 150 A method as defined in claim 143, wherein the control criteria includes feature selection As set forth above for claim limitations 143[b] and 163[b], it is my opinion that Archer discloses or renders obvious that server processor 128 executes control criteria that includes feature selection, such as follow-me/find-me numbers, forwarding priorities and tiers of devices, and conference calling. Ex at col. 7:33-42, 9:38-50 (forwarding priorities and tiers of devices subscriber communications devices can be organized into groups set by the user, such that devices in the first group are called first, with devices in subsequent groups be called if devices in the first group did not answer the call), 10:55-61; supra VI(I)(3) N. No Secondary Considerations of Non-obviousness Exist 333. I am not aware of any evidence of secondary indicia of non CISCO SYSTEMS, INC. Ex Page 189

190 obviousness for the 113 patent. VII. CONCLUSION 334. I reserve the right to offer opinions relevant to the invalidity of the 113 patent claims at issue and/or offer testimony in support of this Declaration In signing this Declaration, I recognize that the Declaration will be filed as evidence in a contested case before the Patent Trial and Appeal Board of the United States Patent and Trademark Office. I also recognize that I may be subject to cross-examination in the case. If required, I will appear for cross-examination at the appropriate time I hereby declare that all statements made herein of my own knowledge are true and that all statements made on information and belief are believed to be true and, further, that these statements were made with the knowledge that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C Dated: 6/23/2016 Respectfully submitted, 189. CISCO SYSTEMS, INC. Ex Page 190