UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Cisco Systems, Inc., Petitioner, v. AIP Acquisition LLC, Patent Owner PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,269,247
TABLE OF CONTENTS PETITIONER S EXHIBIT LIST... iv I. Mandatory Notices... 1 A. Real Party-in-Interest... 1 B. Related Matters... 1 C. Lead and Back-up Counsel and Service Information... 2 II. Grounds for Standing... 2 III. Relief Requested... 2 IV. Reasons for the Requested Relief... 2 A. Summary of the 247 Patent... 3 B. Prosecution History... 5 C. Priority Date... 6 D. Summary of the Petition... 8 E. Note Regarding Page Citations... 9 V. Identification of Challenges and Claim Construction... 9 A. Challenged Claims... 9 B. Claim Construction... 9 1. Previously Construed Terms... 11 2. Additional Proposed Claim Constructions... 13 C. Statutory Grounds for Challenges... 14 D. Identification of How the Construed Claims Are Unpatentable... 15 ii
1. Challenge #1: Claims 1-8, 12, 15-23 and 27-29 are rendered obvious under 35 U.S.C. 103 by Weinstein in view of RFC1190... 15 2. Challenge #2: Claims 9, 11, 13, 24 and 26 are obvious under 103 over Weinstein in view of RFC 1190 and further in view of Gurrie... 49 3. Challenge #3: Claims 10 and 25 are obvious under 35 U.S.C. 103 over Weinstein in view of RFC 1190 and further in view of Kamil... 54 4. Challenge #4: Claim 14 is obvious under 35 U.S.C. 103 over Weinstein in view of RFC 1190 and further in view of the ISI Report... 57 VI. Conclusion... 60 iii
PETITIONER S EXHIBIT LIST November 25, 2014 CSCO-1001 CSCO-1002 U.S. Patent No. 7,269,247 to Mashinsky. Intentionally omitted. CSCO-1003 Prosecution File History of U.S. App. No. 08/320,269. CSCO-1004 Prosecution File History of U.S. 6,188,756. CSCO-1005 Prosecution File History of U.S. App. No. 09/551,189. CSCO-1006 Prosecution File History of U.S. 7,269,247. CSCO-1007 Israel Patent Application No. IL115580. CSCO-1008 Declaration of Dr. Henry H. Houh Under 37 C.F.R. 1.68. CSCO-1009 CSCO-1010 Curriculum Vitae of Dr. Henry H. Houh. Clifford J. Weinstein and James W. Forgie, Experience with Speech Communication in Packet Networks, IEEE JOURNAL ON SELECTED AREAS IN COMMUNICATIONS, vol. SAC-1, no. 6, (Dec. 1983). CSCO-1011 Request for Comments 1190, Experimental Internet Stream Protocol, Version 2 (ST-II), C. Topolcic ed. (Oct. 1990). iv
CSCO-1012 Michael L. Gurrie & Patrick J. O Connor, VOICE/DATA TELECOMMUNICATIONS SYSTEMS: AN INTRODUCTION TO TECHNOLOGY (Prentice-Hall 1986) (selected pages). CSCO-1013 CSCO-1014 U.S. Patent No. 4,706,275 to Kamil. University of Southern California Information Sciences Institute, 1982 Annual Technical Report: A Research Program in Computer Technology, Report No. ISI/SR-83-23, Chapter 7 (March 1983). CSCO-1015 Request for Comments 791, Internet Protocol (Sept. 1981). CSCO-1016 Request for Comments 793, Transmission Control Protocol (Sept. 1981). CSCO-1017 Cerf et al., Request for Comments 675, Specification of Internet Transmission Control Program (Dec. 1974). CSCO-1018 Robert M. Gray, The 1974 Origins of VoIP, IEEE SIGNAL PROCESSING MAGAZINE (Jul. 2005). CSCO-1019 Dennis G. Perry, et al., The ARPANET and the DARPA Internet, LIBRARY HI TECH, vol. 6, no. 2 (1988). CSCO-1020 Travis Russell, SIGNALING SYSTEM #7 (McGraw-Hill 1995) (selected pages). v
CSCO-1021 John G. van Bosse, SIGNALING IN TELECOMMUNICATION NETWORKS (John Wiley & Sons 1998) (selected pages). CSCO-1022 Decision Instituting Inter Partes Review, Patent Trial and Appeal Board Proceeding No. IPR2013-00296, Doc. No. 14 (Oct. 31, 2013). CSCO-1023 J. Crowcroft, et al., Multimedia TeleConferencing over International Packet Switched Networks, PROCEEDINGS OF TRICOMM 91, IEEE CONFERENCE ON COMMUNICATIONS SOFTWARE (1991). CSCO-1024 James W. Forgie, ST A Proposed Internet Stream Protocol, IEN 119 (Sept. 7, 1979). CSCO-1025 International Telecommunication Union Recommendation Q.23, Technical Features of Push-Button Telephone Sets (Approved Nov. 1988). CSCO-1026 International Telecommunication Union Recommendation Q.24, Multifrequency Push-Button Signal Reception (Nov. 1988). CSCO-1027 Patent Owner AIP Acquisition, LLC s Preliminary Response, Patent Trial and Appeal Board Proceeding No. IPR2013-00296, Doc. No. 13 (Aug. 26, 2013). vi
CSCO-1028 Decision on Petition, Patent Trial and Appeal Board Proceeding No. IPR2014-00247, Doc. No. 14 (May 27, 2014). CSCO-1029 Order on Conduct of the Proceeding, Patent Trial and Appeal Board Proceeding No. IPR2014-00247, Doc. No. 20 (July 10, 2014). CSCO-1030 Deposition Transcript of AIP s Declarant Dr. Stephen Weinstein, IPR2014-00247 (Oct. 27, 2014). CSCO-1031 Internet Monthly Reports, Internet Engineering Task Force (Oct. 1991). CSCO-1032 L. Delgrossi, Implementing the ST-II Protocol, Ch. 4 of DESIGN OF RESERVATION PROTOCOLS FOR MULTIMEDIA COMMUNICATION (Kluwer 1995). vii
I. Mandatory Notices A. Real Party-in-Interest The petitioner and real party in interest is Cisco Systems, Inc. B. Related Matters As of the filing date of this petition and to the best knowledge of the petitioner, the 247 Patent is involved in the following litigations: Name Number District Filed AIP Acquisition LLC v. Verizon 1-14-cv-00516 DED April 23, 2014 Communications Inc., et al. AIP Acquisition LLC v. Sprint 1-14-cv-00514 DED April 23, 2014 Corporation et al AIP Acquisition LLC v. AT&T 1-14-cv-00513 DED April 23, 2014 Mobility LLC et al AIP Acquisition LLC v. Vonage Holdings Corp. et al 1-14-cv-00002 DED January 3, 2014 The 247 Patent is also related to US 7,724,879, which is the subject of Inter Partes Review Case Nos. IPR2013-00296 and IPR-2014-00247. A final written decision cancelling all claims of the 879 Patent issued in IPR2013-00296 on October 8, 2014. 1
C. Lead and Back-up Counsel and Service Information Lead Counsel David L. McCombs HAYNES AND BOONE, LLP 2323 Victory Ave. Suite 700 Dallas, TX 75219 Back-up Counsel Thomas B. King HAYNES AND BOONE, LLP 18100 Von Karman Ave. Suite 750 Irvine, CA 92612 Theodore M. Foster HAYNES AND BOONE, LLP 2323 Victory Ave. Suite 700 Dallas, TX 75219 Phone: 214-651-5533 Fax: 214-200-0853 david.mccombs.ipr@haynesboone.com USPTO Reg. No. 32,271 Phone: 949-202-3059 Fax: 949-202-3159 ipr.thomas.king@haynesboone.com USPTO Reg. No. 59,721 Phone: 972-739-8649 Fax: 972-692-9156 ipr.theo.foster@haynesboone.com USPTO Reg. No. 57,456 II. Grounds for Standing Petitioner certifies that the 247 Patent is available for inter partes review and that Petitioner is not barred or estopped from requesting inter partes review challenging the patent claims on the grounds identified in this petition. III. Relief Requested Petitioner asks that the Board review the accompanying prior art and analysis, institute a trial for inter partes review of claims 1-29 of the 247 Patent, and cancel those claims as unpatentable. IV. Reasons for the Requested Relief The concepts described and claimed in the 247 Patent were not novel. This 2
petition, supported by Dr. Henry Houh s declaration, explains where each element is found in the prior art and why the claims would have been obvious to a person of ordinary skill in the art when the 247 Patent was filed. A. Summary of the 247 Patent The 247 Patent describes a method for communication between two access devices. Fig. 9 of the 247 Patent illustrates a conceptual block diagram of a system capable of performing the claimed method. CSCO-1001 Fig. 9. The method allows a data network, such as the Internet, to function like a telephone. CSCO-1001, 6:35-37. A calling party initiates a first phone call to a local system that prompts for the called party s telephone number and then connects the two parties over the data network. Id. at 6:41-46. For example, the calling party may access a node that converts the telephone transmission into data 3
supported by the chosen network. Id. at 6:47-49. Another node further converts the converted transmission back into a voice communication that is provided to the called party by another local call. Id. at 6:49-53. Claim 1 is a representative independent claim: 1. A method for communication between two access devices via one or more networks, comprising the steps: receiving a transmission in a first format through a first communication network from a first access device, the first format comprising a telecommunication protocol for establishing and transmitting voice communication for a phone call in one of a digital telephone network, an analog telephone network, and a cellular network; performing a first conversion converting the transmission from the first format to a second format, the second format being an internet protocol; sending the converted transmission through a second communication network, the second communication network being a data network, for reception by a second access device; and performing a second conversion further converting the converted transmission from the second format to a further format suitable for the second access device, wherein the first access device and the second access device comprise telecommunication nodes, and said further format comprises said first format or another telecommunication protocol. 4
B. Prosecution History The 247 Patent was filed as U.S. Patent Application 10/941,471 (the 471 application ) on September 15, 2004. The 471 application was filed with 37 claims, which were cancelled in a preliminary amendment on March 16, 2005. The Preliminary Amendment added new claims 38-69. Ex. 1006 at 173. In the first Office Action mailed June 13, 2006, the claims were rejected as anticipated under 35 U.S.C. 102 by U.S. Patent 4,644,351 to Zabarsky. Ex. 1006 at 152. In a response filed October 13, 2006, the applicants amended independent claim 38 to recite performing a first conversion converting the transmission from the first format to a second format, the second format being Internet protocol. The applicants argued that Zabarsky taught only converting data from a tone signal compatible with the telephone system to an RS-232 or value added network format. Ex. 1006 at 133. On December 14, 2006, the office mailed a Final Rejection rejecting all pending claims as obvious under 35 U.S.C. 103 over Zabarsky in view of U.S. Patent 5,406,557 to Baudoin. Ex. 1006 at 58. In a response filed February 14, 2007, the applicants argued that dependent claims 39, 41, 44, 59, 62, 70, and 71 were distinguishable over the references because they recite limitations relating to voice communication or establishing 5
a phone call. Ex. 1006 at 8. In contrast, the applicants argued, the cited references relate to radio pagers and email communications. Id. On March 5, 2007, the office mailed an Advisory Action refusing to consider the response because it failed to argue any aspect of the independent claims. Thus, the response was considered incomplete. Id. at 41. In a response filed March 16, 2007, the applicants amended independent claims 38 and 58 to further recite the first format comprising a telecommunication protocol for establishing and transmitting voice communication for a phone call. Id. at 27, 29. The applicants argued that Zabarsky discloses transmitting paging messages, and Baudoin discloses sending e-mail messages. Id. at 33-34. Thus, neither reference addressed transmitting voice communication for a phone call. On June 13, 2007, the office mailed a Notice of Allowance for all pending claims. The Examiner s Notice of Allowance provided this statement of reasons: Regarding claims 38 and 58, in combination with other limitations of the claims, the prior art of record fails to disclose or specifically suggested performing a first conversion converting the transmission from the first format to a second format, the second format being internet protocol. Ex. 1006 at 18. The 247 patent then issued on September 11, 2007. C. Priority Date The 247 Patent claims priority as far back as U.S. Patent Application No. 6
08/320,269 ( the 269 Application ) filed on October 11, 1994, but the claims are not entitled to that priority date. The disclosure of the 269 Application differs significantly from the 247 Patent with respect to various features of the claims, and one of skill in the art would not have understood the 269 Application as describing the claimed subject matter. Ex. 1008 at 38. Notably, the 269 Application does not mention the terms internet protocol or format(s), and the 269 application lacks any description of converting data between different protocol formats. Given the emphasis the Examiner placed on the limitation of converting the transmission from the first format to a second format, the second format being internet protocol, it is beyond question that the 269 Application fails to disclose the claimed subject matter. The 247 Patent also claims the benefit of foreign patent application IL115580 filed October 11, 1995. The foreign application does not include a figure that corresponds to Fig. 9 of the 247 Patent, nor does it include the corresponding description of Fig. 9 provided in the 247 Patent. See generally Ex. 1007; Ex. 1008 at 21-22. Fig. 9 and the corresponding description are important to the understanding of the claimed subject matter, for example, by providing an overview of the disclosed system. Ex. 1008 at 38. Thus, the 247 Patent claims are not entitled to obtain the benefit of the foreign application s filing date. Id. 7
D. Summary of the Petition Converting real-time voice communications to and from an internet protocol format the apparent focus of the Examiner s decision to allow the claims was already known in the art as of the 247 Patent s effective filing date. Specifically, prior art shows that real-time voice communication capabilities date from the earliest days of the Internet. These early Internet telephone systems included voice/data gateways to convert between protocols used on various local communications networks and an internet protocol: In the initial experiments on the ARPANET, the basic feasibility of speech communication on a store-and-forward packet network was demonstrated. Techniques were developed for reconstitution of speech from packets, and protocols were developed for call setup and for speech transport. Key developments to date associated with the wideband experiments have been 1) techniques for internetting via voice/data gateways from a variety of local access networks (packet cable, packet radio, and circuit-switched) to a long-haul broadcast satellite network and 2) compact implementations of packet voice terminals with full protocol and voice capabilities. Ex. 1010 at 963. The interconnection of these various access networks and devices, voice/data gateways, and a wideband satellite network (WB SATNET) is shown below. The wideband satellite network was part of the Internet. Ex. 1019 at 57. 8
Ex. 1010 Fig. 9 (at 975). Because all of the limitations recited in the 247 Patent claims were known, the claims are invalid and should be canceled. E. Note Regarding Page Citations For exhibits that include suitable page numbers from in their original publication, Petitioner s citations are to those original page numbers and not to the page numbers added for compliance with 37 CFR 42.63(d)(2)(ii). V. Identification of Challenges and Claim Construction A. Challenged Claims Claims 1-29 of the 247 Patent are challenged in this petition. B. Claim Construction Because the 247 Patent will have expired before the Board could issue a 9
final written decision regarding the grounds of invalidity raised in this petition, the claims are construed consistent with their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art, at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Phillips v. AWH Corp., 415 F.3d 1303, 1313-1317 (Fed. Cir. 2005) (en banc); see also Ex. 1029 at 2-3. A claim that uses the word "means" and functional language is presumed to invoke 35 U.S.C. 112, 6. Trimed v. Stryker Corp., 514 F.3d 1256, 1259 (Fed. Cir. 2008). The presumption can be overcome "when the claim language specifies the exact structure that performs the functions in question." Id. at 1259-1260. The Board previously determined the meaning of several terms of the 247 Patent in decisions on a related patent (US 7,724,879) that shares a common specification with the 247 Patent. See Ex. 1022 at 10-18; Ex. 1028 at 10-17. Although some terms were construed under a "broadest reasonable interpretation" standard rather than the "ordinary and customary meaning" standard, the Board has determined that the constructions remain the same under either approach. See Ex. 1029 at 3. Accordingly, this Petition and Dr. Houh s analysis apply the Board s claim constructions for those terms that have been previously construed. Petitioner also proposes construing several additional claim terms. 10
1. Previously Construed Terms an internet protocol (claim 1): The Board previously determined that the term an internet protocol means a set of rules, instructions, or procedures relating to the format and timing of data transmissions between two devices over the Internet, such as TCP/IP. The term internet protocol, as used in the claims of the 879 Patent, does not encompass ATM and frame relay protocols. Ex. 1022 at 15; Ex. 1028 at 16; see also Ex. 1001 at 7:34-39, 14:30-36; Ex. 1008 at 41-43. access device (claim 1): The 247 Patent specification states that Access devices may communicate with central local nodes directly or through intercept devices which direct the communication to the central local node. Access devices are exemplified by telephones, pagers, cellular phones, laptops, facsimile machines, multimedia computer workstations, etc. Ex. 1001, 13:30-35. The Board previously determined that the term access device means any device that allows entry to a circuit or other communications facility such as a voice or data network. Ex. 1022 at 18; see also Ex. 1008 at 43-44. telecommunication protocol (claim 1): The Board previously determined that the term telecommunication protocol means specific set of rules, procedures or conventions relating to format and timing of a communication. Ex. 1022 at 18; see also Ex. 1008 at 44-45. telecommunication node (claim 1): The Board previously determined 11
that the term telecommunication node means a point of connection in a telecommunication network. Ex. 1022 at 18; see also Ex. 1008 at 45. selecting a route for the transmission based on at least one criteria defined by user preference (claim 8): The 247 Patent specification describes how a central local node may check with the different transmission costs associated with customer defined criteria. See Ex. 1001, 9:43-44. The Board previously determined that the term selecting a route for the transmission based on at least one criteria defined by user preference means choosing a transmission route for a communication based on a user s criteria. Ex. 1022 at 18; see also Ex. 1008 at 47-48. wherein the at least one criteria comprises credit availability of a calling party (claim 10): The 247 Patent describes using a credit check to determine whether to approve or disapprove of a transaction. See Ex. 1001, 13:14-24. The Board previously determined that the term wherein the at least one criteria comprises credit availability of a calling party means choosing whether to transmit or disconnect a call based on a credit availability. Ex. 1022 at 18; see also Ex. 1008 at 48-49. signaling messages (claim 15): The 247 Patent specification does not use the term signaling messages. The Board previously determined that the term signaling messages means control information exchanged between two points 12
and a network to establish, maintain, and remove a telephone connection between those two points. Ex. 1028 at 17; Ex. 1022 at 17; see also Ex. 1008 at 49-50. 2. Additional Proposed Claim Constructions calling party is connected to the first access device and called party is connected to the second access device (claims 3, 5, and 27): As explained in the declaration of Dr. Houh, one of ordinary skill in the art would have understood that connected to an access device refers to using an access device. Ex. 1008 at 45-47. For example, a human using a telephone is a human connected to an access device as that term is used in the claims. Id. at 47. means for receiving voice communications initiated by the called party from the Internet and converting the received voice communications from said second format to said first format (claim 18): This is a means plus function limitation under 35 U.S.C. 112, 6. The corresponding structure performing the recited function in the 247 specification is a digital signal processor. Ex. 1001 at 14:14-16; Ex. 1008 at 50-52. The specification does not provide any further details on the manner of operation of the digital signal processor. means for receiving a local call from the calling party via the one of a digital telephone network, an analog telephone network, and a cellular network (claim 19): This is a means plus function limitation under 35 U.S.C. 112, 6. The corresponding structure performing the recited function in the 247 13
specification is a subscriber access device interface including communication networks for digital telephone, analog telephone, and cellular. Ex. 1001 at 13:30-38; Ex. 1008 at 52-53. means for determining a called party number from the calling party by communicating using the local call (claim 20): This is a means plus function limitation under 35 U.S.C. 112 6. The corresponding structure in the 247 specification is functional hardware, such as dialogic hardware, that determines a called party number from the calling party by communicating using the local call. Ex. 1001 at 9:5-8 & 8:32-37; Ex. 1008 at 53-55. C. Statutory Grounds for Challenges Challenge #1: Claims 1-8, 12, 15-23 and 27-29 are obvious under 35 U.S.C. 103 over Clifford J. Weinstein and James W. Forgie, Experience with Speech Communication in Packet Networks, IEEE JOURNAL ON SELECTED AREAS IN COMMUNICATIONS, vol. SAC-1, no. 6 (Dec. 1983) ( Weinstein ) (Ex. 1010) in view of Experimental Internet Stream Protocol, Version 2 (ST-II), Request for Comments 1190 (Oct. 1990) ( RFC1190 ) (Ex. 1011). Both Weinstein and RFC1190 are prior art under 102(b). Challenge #2: Claims 9, 11, 13, 24 and 26 are obvious under 35 U.S.C. 103 over Weinstein in view of RFC 1190 and further in view of VOICE/DATA TELECOMMUNICATIONS SYSTEMS: AN INTRODUCTION TO TECHNOLOGY by Michael 14
L. Gurrie, et al. ( Gurrie, Ex. 1012). Gurrie published in 1986 and is prior art under 35 U.S.C. 102(b). Challenge #3: Claims 10 and 25 are obvious under 35 U.S.C. 103 over Weinstein in view of RFC 1190 and further in view of U.S. 4706275 to Kamil (Ex. 1013). Kamil published on Nov. 10, 1987 and is prior art under 35 USC 102(b). Challenge #4: Claim 14 is obvious under 35 U.S.C. 103 over Weinstein in view of RFC 1190 and further in view of 1982 Annual Technical Report: A Research Program in Computer Technology, submitted by the University of Southern California Information Sciences Institute in March 1983 to the Defense Advanced Research Projects Agency ( the ISI Report ) (Ex. 1014). The ISI Report is prior art under 35 U.S.C. 102(b). D. Identification of How the Construed Claims Are Unpatentable 1. Challenge #1: Claims 1-8, 12, 15-23 and 27-29 are rendered obvious under 35 U.S.C. 103 by Weinstein in view of RFC1190 Claims 1-8, 12, 15-23 and 27-29 of the 247 Patent are rendered obvious under 35 U.S.C. 103 by Weinstein in view of RFC1190. Ex. 1008 at 55. Weinstein describes techniques for speech processing, voice protocols, packetization and reconstitution, conferencing, and multiplex and in the context of the generic packet speech system configuration. Ex. 1010 at 963 (abstract). The research work described in Weinstein was sponsored by the United States Defense Advanced Research Projects Agency (DARPA) and began with 15
experiments conducted over the ARPANET. The work continued as the ARPANET expanded and additional networks, including satellite networks, became interconnected. This ever-expanding and interconnected network of networks would eventually come to be known as the Internet. Weinstein illustrates in Figure 9 an exemplary packet voice/data system. Ex. 1010 Fig. 9 (at 975). The figure illustrates that potential access devices included a packet voice terminal, a digital circuit switched, a telephone on the switched telephone network, and a mobile voice/data unit. Interconnecting all of these voice systems is a packetbased wideband satellite network. Various devices provide conversion services from diverse telecommunications technologies such as a packet radio mobile voice unit, a telephone on the switched telephone network, and a digital circuit switch on 16
a T1 trunk line. Weinstein describes the protocols used to interconnect the endpoints, which provide a full range of control and signaling capabilities including dialing and ringing. Ex. 1010 at 964. In particular Weinstein describes an Internet Stream Protocol, ST, which provides an efficient internet transport mechanism for both point-to-point conversations and conferences. Ex. 1010 at 966. The ST protocol is designed to be compatible with IP [Internet Protocol], and operates at an internet level. Ex. 1010 at 966, 974. The ARPANET and the wideband satellite network were considered by those of skill in the art to be part of the Internet. Ex. 1008 at 14-15; Ex. 1019 at 57. In summary, Weinstein describes a fully functional voice telecommunication system operating over the Internet. To the extent that the ST protocol used in Weinstein is not considered to be an internet protocol, Request for Comments 1190 entitled Experimental Internet Stream Protocol, Version 2 (ST-II) ( RFC1190 ) describes a revised and updated version of Weinstein s ST protocol. See generally Ex. 1011. RFC1190 states that the revised ST is an internet protocol. Ex. 1011 at 7 (emphasis added). Additionally, RFC1190 describes improvements available with ST, 1 including the 1 Following the same convention used in RFC1190, references within this Petition to ST refer to version 2 ( ST-II ) of the protocol described in RFC1190, unless otherwise indicated expressly or by context. 17
capability for the ST protocol to be encapsulated in Internet Protocol (IP) packets. Ex. 1011 at 64. The Internet Protocol (IP) is identified as an internet protocol in the 247 Patent specification. Ex. 1001, 7:34-39. Encapsulating ST packets using Internet Protocol allows connections across Internet routers that might not support the ST protocol. Ex. 1011 at 64. One skilled in the art would have multiple reasons to combine the teachings of Weinstein and RFC1190. For example, it would have been obvious to a person of ordinary skill in the art to upgrade Weinstein s system, which used the ST protocol, by implementing the revised ST-II protocol taught by RFC1190. RFC1190 notes that ST-II protocol is intended to be easier to implement and support a wider range of applications than the original ST protocol. Ex. 1011 at 1. The differences between ST and ST-II are fairly straight forward yet provide great improvements. Ex. 1011 at 8. The advantages of ST-II include: 1.) eliminating the need for an explicit Access Controller, since many applications such as conferencing can be run without one; 2.) simplifying the management of traffic streams; and 3.) providing robustness and recovery mechanisms that were undefined in the original ST specification. Ex. 1011 at 8. One of skill in the art would have recognized that these and other advantages would be made available by upgrading Weinstein to use the revised 18
ST-II protocol. Indeed, researchers working the same technology area predicted additional benefits of using ST-II in existing packet communications systems, such routing calls over any part of the Internet and simplifying the configuration of communication endpoints: It is envisaged that ST-II will soon be available on workstations (under Unix, in the kernel), and also that it will run over the IP protocol, and this can run over an un-modified Internet system (rather than the dual ST/IP ICB/TWB networks). The configuration would then collapse the packetizing, routing, audio output and input and video display functionality into a single workstation component. Ex. 1023 at 26. Another group of Internet engineers reported that they had enhanced from the older ST protocol to ST-II (RFC1190). Ex. 1031 at 20. Thus, the combination of Weinstein and RFC 1190 is merely the application of a known technique (as taught by RFC1190) to a known system (Weinstein) to yield predictable results. Ex. 1008 at 57-58. Their combination would have been obvious. See KSR Int l. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Alternatively, the combination is merely the simple substitution of one known element (ST protocol) for another (ST-II taught by RFC1190) to obtain predictable results (such as the ability to run over an un-modified Internet system). Ex. 1008 at 58-59; see KSR Int l, 550 U.S. at 417. For this additional reason, their 19
combination would have been obvious. Claim 1 [1.0] A method for communication between two access devices via one or more networks, comprising the steps: Weinstein teaches this limitation because it discloses Packet internetworking techniques can be applied to provide intercommunication among voice users on different types of networks. Ex. 1010 at 963; Ex. 1008 at 60. Weinstein further teaches a packet voice terminal (PVT) that interfaces with the packet network. Ex. 1010 at 964. Each packet voice terminal is an access device. Ex. 1008 at 61. Weinstein illustrates a block diagram of a packet voice terminal in Fig. 2, below. Ex. 1010 Fig. 2. Weinstein teaches other examples of access devices, such as a telephone office emulator that provides entry to a T1 digital carrier. Ex. 1010 at 977; Ex. 1008 at 61-62. Attached to the telephone office emulator is a telephone, which is 20
also an access device. Ex. 1010 at 977; Ex. 1008 at 61. Yet another example of an access device is a voice terminal on a packet radio network (PRNET). See Ex. 1010 at 977; Ex. 1008 at 62-63. Weinstein discloses communication between two access devices via one or more networks because it illustrates in Fig. 1 communication between two packet voice terminals (PVT s) over a packet network or internetwork. Ex. 1008 at 63. Ex. 1010 Fig. 1 Weinstein further illustrates a more detailed network in Fig. 12, including additional access devices such as a PRNET voice terminal and telephones coupled to a telephone office emulator (TOE). All of the Internet speech capabilities implied by that figure have been demonstrated, for example, voice internetting among LEXNET s [i.e., packet voice terminals on the LEXNET network], PRNET, and circuit-switched systems. Ex. 1010 at 977. The various access 21
devices are all interconnected by a wide-band packet satellite network (WB SATNET). Ex. 1010 at 973. Ex. 1010 Fig. 12. Thus, Weinstein teaches a method for communication between two access devices via one or more networks as recited in the claim. Ex. 1008 at 64. [1.1] receiving a transmission in a first format through a first communication network from a first access device, the first format comprising a telecommunication protocol for establishing and transmitting voice communication for a phone call in one of a digital telephone network, an analog telephone network, and a cellular network: Weinstein teaches this limitation because, as analyzed more fully below, it describes receiving a transmission for a phone call in each of a digital telephone network, an analog telephone network, and a cellular network. Ex. 1008 at 64-65. 22
digital telephone network : Weinstein teaches limitation [1.1] because it describes a packet circuit interface that receives data in a T1 digital carrier format used for multiplexing of interswitch trunks in digital telephony from a telephone office emulator. Ex. 1010 at 977; Ex. 1008 at 65-66. Weinstein illustrates the T1 communication network between a telephone office emulator and a packet circuit interface in FIG. 12. As analyzed above in portion [1.0], both the telephone office emulator and the telephone are each a first access device as recited in the claim. first communication network first access device Ex. 1010 FIG. 12 (detail, annotated). A T1 digital carrier provides up to 24 channels of digital voice communication for phone calls, and a T1 line can use either Signaling System #7 or robbed-bit signaling to establish and teardown a voice call. Ex. 1008 at 66. The T1 digital carrier, together with either Signaling System #7 or robbed-bit signaling, is a first format comprising a telecommunication protocol for establishing and transmitting voice communication for a phone call as recited in the claim. Ex. 23
1008 at 66. analog telephone network : Weinstein teaches limitation [1.1] because it describes a switched telephone network interface (STNI) [57] which allows connection from individual telephone lines to the wideband packet system. Ex. 1010 at 977; Ex. 1008 at 66. The switched telephone network interface provides access from any ordinary telephone, accepts dialed digits addressing other PVT s, and handles translation of dialing and analog voice. Ex. 1010 at 977 (emphasis added). The dialed digits and analog voice define a first format that includes a telecommunication protocol for establishing and transmitting voice communication for phone call as recited in the claim. Ex. 1008 at 66-67. Weinstein illustrates in FIG. 9 the connection between the switched telephone network interface and an ordinary telephone over a phone line, which is a first communication network as recited in the claim. Ex. 1008 at 67-68. first communication network first access device Ex. 1010 FIG. 9 (detail, annotated). 24
cellular network : Weinstein also teaches limitation [1.1] because it describes receiving communications via a packet radio network (PRNET) located in the San Francisco Bay Area that includes both voice and data terminals. Ex. 1010 at 977; Ex. 1008 at 68. The packet radio network supports voice traffic. Ex. 1010 at 977. Weinstein illustrates connections between a mobile voice unit, the packet radio network, and an internetwork voice/data gateway in Fig. 9. first access device first communication network Ex. 1010 FIG. 9 (detail, annotated). A mobile voice unit is a first access device, and the packet radio network is a first communication network as recited in the claim. Ex. 1008 at 69. Weinstein also describes how the packet radio network supports limited voice traffic and how PRNET voice experiments have led to definition of a new PRNET type of service for better service of real-time voice. Ex. 1010 at 977. The PRNET type of service supporting voice traffic is a first format as recited in the claim. Ex. 1008 at 69. [1.2] performing a first conversion converting the transmission from the first 25
format to a second format, the second format being an internet protocol: Weinstein and RFC 1190 teach this limitation because Weinstein teaches converting from each first format (analyzed above in portion [1.1]) to a lower level protocol, which has come to be named ST, [that] provides an efficient internet transport mechanism for both point-to-point conversations and conferences, and RFC 1190 teaches ST is an internet protocol at the same layer as IP. Ex. 1010 at 966; Ex. 1011 at 7; Ex. 1008 at 69. Indeed, ST is simply a different version number (IP Version 5) of the well-known Internet Protocol commonly used on the Internet. Ex. 1011 at 9. ST operates as an extension of IP, so lower-layer networking protocols, such as Ethernet, use the same ethertype [i.e., protocol identifier] (0x800) as does IP. Ex. 1011 at 75. As noted above in portion [1.1], Weinstein describes handling calls originating from digital telephone network, an analog telephone network, or a cellular network. Weinstein further teaches converting a "first format" associated with each network to an internet protocol. digital telephone network : As shown above, Weinstein teaches that a T1 digital carrier format is a first format. Weinstein further teaches a packet/circuit interface (PCI) that provides translating from T1 to packet format using a subset of NVP [network voice protocol] and ST [stream protocol]. Ex. 1010 at 977 (emphasis added). It would have been obvious to upgrade Weinstein to use 26
the revised ST protocol (ST-II) provided by RFC 1190. Ex. 1008 at 71. The revised ST is an internet protocol. Ex. 1011 at 7; Ex. 1008 at 71. Weinstein teaches converting digital telephony voice traffic from T1 digital carrier format to the ST protocol. RFC 1190 teaches that ST is an internet protocol. Accordingly, Weinstein and RFC 1190 render obvious converting the transmission from the first format to a second format, the second format being an internet protocol as recited in the claim. Ex. 1008 at 70. Alternatively, RFC 1190 teaches that ST packets may be encapsulated in IP. Ex. 1011 at 64. IP, or Internet Protocol, is an internet protocol as recited in the claim. Ex. 1001 at 7:40-46. It would have been obvious to encapsulate Weinstein s ST packet traffic (translated from T1 digital carrier format) using IP as taught by RFC1190 in order to allow voice traffic to pass through routers that did not support ST. Ex. 1008 at 71-72. Thus, Weinstein and RFC1190 render obvious performing a first conversion converting the transmission from the first format [T1 digital carrier format] to a second format [ST, or ST encapsulated in IP], the second format being an internet protocol as recited in the claim. Ex. 1008 at 72. analog telephone network : Weinstein and RFC1190 also render obvious limitation [1.2] with an example of converting traffic received from an analog telephone network. Ex. 1008 at 72-73. Weinstein teaches that an STNI [switched telephone network interface] card handles translation of dialing and analog voice 27
between the PVT and the public net, provides PCM digitization, and includes echo suppression. Ex. 1010 at 977 (emphasis added). The packet voice terminal, or PVT, supports NVP and ST protocols. Ex. 1010 at 976. Thus, Weinstein teaches that packet voice terminal, equipped with a switched telephone network interface card, provides conversion from analog telephone dialing and voice transmissions received over the switched telephone network to the packetized ST protocol. Ex. 1008 at 72. Alternatively, a telephone may be directly connected to and be part of a packet voice terminal. Ex. 1010, Fig. 2 and Fig. 11; Ex. 1008 at 72-73. As previously noted, RFC 1190 further teaches that ST is an internet protocol, and that it was known to encapsulate ST protocol in IP. Ex. 1011 at 7, 64. Accordingly, Weinstein and RFC 1190 render obvious performing a first conversion converting the transmission from the first format [analog voice and dialing] to a second format [ST, or ST encapsulated in IP], the second format being an Internet protocol. Ex. 1008 at 73. cellular network : Weinstein and RFC1190 also render obvious limitation [1.2] because Weinstein describes PRNET voice terminals [20], [21] include PDP-11/23-based speech interface units (SIU s) which implement voice protocols. Ex. 1010 at 977; Ex. 1008 at 73-74. The speech interface units implement Compatible LPC [linear predictive coding] voice processing and 28
NVP/ST protocols (both point-to-point and conferring). Ex. 1010 at 978. The packet radio network uses a new PRNET type of service for better service of realtime voice. Ex. 1010 at 977. Thus, Weinstein teaches a speech interface unit providing conversion from a packet radio network type of service (a first format, as analyzed above in portion [1.1]) to the ST packet format. Ex. 1008 at 74. As previously noted, RFC 1190 further teaches that ST is an internet protocol, and that it was known to encapsulate ST protocol in IP. Ex. 1011 at 7, 64. Accordingly, Weinstein and RFC 1190 render obvious performing a first conversion converting the transmission from the first format [packet radio network format] to a second format [ST, or ST encapsulated in IP], the second format being an Internet protocol. Ex. 1008 at 74. [1.3] sending the converted transmission through a second communication network, the second communication network being a data network, for reception by a second access device: Weinstein teaches this limitation because it teaches sending ST protocol packets over a variety of different data communication networks. Ex. 1008 at 74. Both control signals and voice are transmitted from PVT to PVT over the network in digitized packet form. Ex. 1010 at 964 (emphasis added). The packet network may be of the original store-and-forward type as exemplified by the ARPANET, which is a fundamentally data network[]. Ex. 1010 at 964, 973 (emphasis added). Weinstein also illustrates interconnecting various endpoints via 29
a wideband satellite network, WB SATNET, in Fig. 12. WB SATNET is also a data network. Ex. 1008 at 16. Those of skill in the art considered ARPANET and WB SATNET to be part of the Internet. Ex. 1022 at 56; Ex. 1008 at 15-16. As shown in the analysis above in portion [1.0], the various endpoints in Fig. 12 such as packet voice terminals, telephones, telephone office emulators, and packet radio network voice terminals are each an access device. Since Weinstein describes internet packet speech capabilities among the various access devices, those of skill in the art would have understood that transmissions are made for reception by a second access device as recited in the claim. Ex. 1010 at 977; Ex. 1008 at 75-77. second communication network Ex. 1010 Fig. 12 (annotated). RFC1190 further teaches that ST packets may be encapsulated in IP packets 30
and thereby transit any portion of the Internet. See Ex. 1011 at 9; Ex. 1008 at 59. The Internet is a data network. Ex. 1001 at 6:45-46. Thus, Weinstein and RFC 1190 render obvious sending the converted transmission [ST packets, or ST encapsulated in IP packets] through a second communication network [ARPANET, WB SATNET or, more generally, the Internet], the second communication network being a data network, for reception by a second access device as recited in the claim. Ex. 1008 at 77. [1.4] performing a second conversion further converting the converted transmission from the second format to a further format suitable for the second access device, [1.5] wherein the first access device and the second access device comprise telecommunication nodes, and said further format comprises said first format or another telecommunication protocol: Weinstein teaches this limitation because it discloses how Techniques were developed for reconstitution of speech from packets. Ex. 1010 at 963; Ex. 1008 at 77. Reconstituting speech from received packets is a second conversion as recited in the claim. Ex. 1008 at 77. More specifically analyzed below, Weinstein teaches further converting to a format suitable for each of the three kinds of networks previously identified as having a first format in portion [1.1]. digital telephone network : Weinstein teaches limitation [1.4] because it describes a packet circuit interface (PCI) that provides communication between 31
packet switches and digital circuit switches in the T1 digital carrier format used for multiplexing of interswitch trunks in digital telephony. Ex. 1010 at 977; Ex. 1008 at 78. Weinstein illustrates the T1 connection between a telephone office emulator (TOE) and a packet circuit interface (PCI) in FIG. 12. further format second access device Ex. 1010 FIG. 12 (detail, annotated). The packet circuit interface converts the ST protocol (or ST protocol encapsulated in IP) to T1 digital carrier format (a further format ). Ex.1008 at 78. Weinstein teaches that the packet circuit interface provides conversion from ST protocol format (the second format ) and the T1 digital carrier format (a further format ). Ex. 1008 at 78. The T1 digital carrier format is suitable for the telephone office emulator (an access device, as analyzed in portion [1.0]). Ex. 1008 at 78. Thus, Weinstein teaches performing a second conversion further converting the converted transmission from the second format to a further format suitable for the second access device as recited in the claim. Ex. 1008 at 78. 32
Under an alternative mapping of Weinstein s teachings to the claim language, Weinstein further teaches that standard two-wire phones and fourwire phones are provided at each TOE. Ex. 1010 at 977. A telephone is a second access device. See Ex. 1001, 9:42-45. Thus, the packet circuit interface and the telephone office emulator together convert from ST or ST-in-IP format to two- or four-wire phone format. Ex. 1008 at 79. This provides an additional teaching of performing a second conversion further converting the converted transmission from the second format to a further format suitable for the second access device as recited in the claim. Under yet another alternative mapping, Weinstein s telephone office emulator together with the attached telephone are a second access device. Ex. 1008 at 79. The packet circuit interface provides conversion from ST protocol format (the second format ) to the T1 digital carrier format (a further format ). Ex. 1008 at 79. This provides an additional teaching of performing a second conversion further converting the converted transmission from the second format to a further format suitable for the second access device as recited in the claim. analog telephone network: Weinstein also teaches limitation [1.4] because it discloses that within a packet voice terminal, a voice processor converts between analog and digital speech and a protocol processor provides a full range of control and signaling capabilities including dialing and ringing. Ex. 1010 at 964; 33
Ex. 1008 at 80. As Weinstein illustrates in Fig. 2, received packets are converted to voice and control signals (a further format ) for a telephone (an access device as shown above in portion [1.0]). Ex. 1008 at 80-81. further format second access device Weinstein Fig. 2 (annotated) cellular network : Weinstein also teaches limitation [1.4] because it describes providing voice communications to a packet radio network (PRNET) located in the San Francisco Bay Area that includes both voice and data terminals. Ex. 1010 at 977; Ex. 1008 at 81. Weinstein further describes a new PRNET type of service for better service of real-time voice, which is a further format as recited in the claim. Ex. 1010 at 977; Ex. 1008 at 81-82. 34
second access device further format Ex. 1010 FIG. 9 (detail, annotated). For this additional reason, Weinstein teaches performing a second conversion further converting the converted transmission from the second format to a further format suitable for the second access device as recited in the claim. Ex. 1008 at 82. [1.5] wherein the first access device and the second access device comprise telecommunication nodes: Weinstein teaches this limitation because the examples of a first access device and second access device described by Weinstein (and illustrated in Fig. 12) are all point connections in a telecommunication network. Ex. 1008 at 82. Thus, they are all telecommunication nodes as recited in the claim. Id. [1.6] said further format comprises said first format or another telecommunication protocol: Weinstein teaches this limitation because, as illustrated by Fig. 12, the endpoints of a telephone call may be either similar (e.g., a call from one packet 35
voice terminal to another) or different (e.g., a call from a PRNET voice terminal to a telephone office emulator telephone). Ex. 1008 at 83. More specifically, Weinstein teaches a variety of internetwork telephone calls: All the internet packet speech capabilities implied by that figure [Fig. 12] have been demonstrated [53]. These include: multiple simultaneous PTP [point-topoint] calls using PCM, ECVSD, and LPC; PCM and LPC conference calls using distributed floor control; voice internetting among LEXNET s [i.e., packet voice terminals attached to the LEXNET network], PRNET, and cirucit-switched systems; and conference setup using VCOP. Ex. 1010 at 977-78 (emphasis added). Thus, Weinstein teaches said further format comprises said first format or another telecommunication protocol as recited in the claim. Ex. 1008 at 83-84. Claim 2 [2.0] The method of claim 1, wherein the transmission is sent from the first access device serially to a first central node, the data network, a second central node, and the second access device: Weinstein teaches this limitation in Fig. 12, which shows that a call from a telephone on a telephone office emulator is sent serially to a PDP/11-44 gateway (a first central node ), to the WB SATNET (a data network ), to another PDP/11-44 gateway (a second central node ), and to a packet voice terminal (a second access device. ) Ex. 1008 at 84-85. As noted above in portion [1.6], All the internet packet speech capabilities implied by that figure [Fig. 12] have been 36
demonstrated. Ex. 1010 at 977. Petition for Inter Partes Review of U.S. Patent No. 7,269,247 data network first central node Ex. 1010 Fig. 12 (annotated) second central node Claim 3 [3.0] The method of claim 1, wherein the transmission is related to establishing or transmitting voice communication for a phone call from a calling party connected to the first access device to a called party connected to the second access device: Weinstein teaches this limitation because it describes how the user interfaces with the PVT much as with an ordinary telephone set, and the PVT interfaces with the packet network. In addition to being able to talk and listen, the user is provided with a full range of control and signaling capabilities including dialing and ringing. Ex. 1010 at 964; Ex. 1008 at 85. Accordingly, Weinstein describes a full feature system for transmitting voice communication for a phone call from one user using an access device (such as a telephone) to a second user 37
using another access device. Ex. 1008 at 85-86. Claim 4 [4.0] The method of claim 1, wherein the first communication network is one of an analog telephone network, a digital telephone network, and a cellular network: As shown above in portion [1.1], Weinstein teaches that the first communication network may be the public switched telephone network ( an analog telephone network ), the T1 digital circuit ( a digital telephone network ), or a packet radio network ( a cellular network ). See Ex. 1008 at 86; 64-69. Claim 5 [5.0] The method of claim 1, wherein a calling party is connected to the first access device for transmitting and receiving voice communication for a phone call and a called party is connected to the second access device for transmitting and receiving the voice communication for the phone call: Weinstein teaches this limitation because Weinstein is generally directed to technologies for providing real-time voice communications between two users. Ex. 1008 at 87. Weinstein also describes protocols that provide transport across the network to meet real-time speech requirements. Ex. 1010 at 966. Weinstein concludes that packet communication is a practical technique for real-time speech communication. Ex. 1010 at 978. Thus, one of skill in the art would have considered Weinstein s telephone-based voice communications to be a phone 38
call as recited in the claim. Ex. 1008 at 87. Furthermore, it would have been obvious to one of skill in the art for calling party to use a first access device to communicate by voice in real-time with a called party using a second access device. Ex. 1008 at 87. Claim 6 [6.0] The method of claim 1, wherein the second conversion is performed at the second access device: Weinstein teaches this limitation because, as shown above in the analysis of portion [1.4], it discloses that a packet voice terminal both performs converts between analog and digital speech (the second conversion ) and includes a telephone (a second access device ). See Ex. 1010 at 964; Ex. 1008 at 87. Thus, Weinstein teaches that the second conversion is performed at the second access device. Ex. 1008 at 87-89. Claim 7 [7.0] The method of claim 1, wherein said second access device is connected to a central office of a telecommunication network: Weinstein teaches this limitation because it discloses that the second access device may be a packet voice terminal equipped with a switched telephone network interface (STNI) card. Ex. 1010 at 977; Ex. 1008 at 89-90. The switched telephone network interface card is coupled to individual telephone lines in order to allow access from any ordinary telephone by first calling the STNI. Ex. 1010 39
at 977. Those of skill in the art would understand that the switched telephone network interface card is connected to a central office of a telecommunication network. Ex. 1008 at 90. Claim 8 [8.0] The method of claim 1, further comprising the step of selecting a route for the transmission based on at least one criteria defined by user preference: This limitation would have been obvious because RFC1190 teaches During the setup phase, routes are selected and internetwork resources are reserved. Ex. 1011 at 9; Ex. 1008 at 90. RFC1190 further teaches a Source Route Option through which the origin can explicitly specify the path to a target. Ex. 1011 at 46. The Source Route Option can be used where standard routing mechanisms do not produce paths that satisfy some policy constraint. Id. A policy constraint, or alternatively the explicitly specified routing path, is a criteria defined by user preference as recited in the claim. Ex. 1008 at 90. Additionally, Weinstein teaches that variations in the paths taken by packets through the network can introduce variable inter-packet delays. Ex. 1010 at 966. It would have been obvious to incorporate RFC1190 s teaching of a fixed route specified by the source to eliminate such path-induced variable delays. Ex. 1008 at 90-92. 40
Claim 12 [12.0] The method of claim 8, wherein the transmission comprises execution of a call setup procedure: Weinstein teaches this limitation because it discloses that the packet/circuit interface carries out the protocol functions (both call setup and transport) for four simultaneous users. Ex. 1010 at 977 (emphasis added); Ex. 1008 at 92. Additionally, as analyzed above in portion [1.1], Weinstein teaches receiving and processing the dialed digits for initiating a telephone call. Receiving and processing dialed digits is execution of a call setup procedure as recited in the claim. Ex. 1008 at 92. Claim 15 [15.0] The method of claim 1, wherein the transmission comprises signaling messages: Weinstein teaches this limitation because it discloses that the user is provided with a full range of control and signaling capabilities including dialing and ringing. Both control signals and voice are transmitted from PVT to PVT over the network in digitized packet form. Ex. 1010 at 964 (emphasis added); Ex. 1008 at 92. Claim 16 [16.0] A system for transmitting communications from a calling party to a called party, comprising: 41
Weinstein teaches this limitation because it discloses a large-scale packet voice/data system. Ex.1010, Abstract; Ex. 1008 at 93. [16.1] a communication node accessible by the calling party using a first network, said node being a telecommunication node configured for receiving a transmission in a first format from the calling party: This limitation is similar to portion [1.1] above. Weinstein teaches a variety of nodes for receiving a transmission from a calling party, including a packet circuit interface (PCI), switched telephone network interface (STNI), and an internetwork voice/data gateway connected to a packet radio network. Ex. 1010 at 977; Ex. 1008 at 93-95. [16.2] converting the transmission received from the calling party from the first format to a second format, and: This limitation is similar to portion [1.2] above and is obvious over the prior art for the same reasons provided above. [16.3] transmitting the converted transmission through the Internet to a further node capable of connecting to the called party on a further network: This limitation is similar to portion [1.3] above and is obvious over the prior art for the same reasons provided above. The ARPANET and SATNET networks described in Weinstein were early member components of the constellation of networks that came to be called the Internet. See Ex. 1008 at 96; Ex. 1019 at 57. [16.4] wherein said first format comprises a telecommunication protocol for 42
establishing and transmitting voice communications for phone calls in one of a digital telephone network, an analog telephone network, and a cellular network, and: As shown in the analysis of portions [16.1] and [1.1] above, Weinstein teaches receiving voice communications from a digital telephone network, analog telephone network, and a cellular network. [16.5] wherein said second format is Internet protocol: This limitation is similar to portion [1.2] above and is obvious over the prior art for the same reasons provided above. RFC1190 teaches that the ST protocol is simply IP Version 5. Ex. 1011 at 9. Since ST operates as an extension of IP, the packet arrives at the same network service access point that IP uses to receive IP datagrams. Ex. 1011 at 75. Thus, one of skill in the art would recognize that ST is Internet protocol as recited in the claim. Ex. 1008 at 96-97. Claim 17 [17.0] The system of claim 16, further comprising the further node, wherein said further node is configured for converting the converted transmission received from the second format to a further format: This limitation is similar to portion [1.4] above and is obvious over the prior art for the same reasons provided above. Claim 18 [18.0] The system of claim 16, said node further comprising means for receiving 43
voice communications initiated by the called party from the Internet and converting the received voice communications from said second format to said first format: This limitation is similar to portion [1.4] above, except that it relates to voice communications passing in the opposition direction (from called party to calling party). Since Weinstein describes providing two directions of voice transmission, it would have been obvious to receive and convert voice communications in both directions. See Ex. 1010 at 965; 1008 at 97-98. Additionally, Weinstein describes performing format conversions using a digital signal processing computer, which those of skill in the art would recognize as equivalent to a digital signal processor, the structure in the 247 specification corresponding to the claimed means. Ex. 1010 at 969, 978; 1008 at 98-99. Claim 19 [19.0] The system of claim 16, said node further comprising means for receiving a local call from the calling party via the one of a digital telephone network, an analog telephone network, and a cellular network, wherein said transmission is related to establishing said local call: Weinstein teaches this limitation because it discloses a switched telephone network interface (STNI) that a user can dial into. Ex. 1010 at 977. Those of skill in the art would recognize Weinstein s STNI is an interface for a subscriber access device such as an ordinary telephone, the structure in the 247 specification 44
corresponding to the claimed means. Ex. 1008 at 99. Claim 20 [20.0] The system of claim 19, said node further comprising means for determining a called party number from the calling party by communicating using the local call: Weinstein teaches this limitation because it discloses that the switched telephone network interface (STNI) accepts dialed digits addressing other PVT s (packet voice terminals), then handles translation of dialing and analog voice between the PVT and the public net. Ex. 1010 at 977. Those of skill in the art would recognize Weinstein s STNI as dialogic hardware, the structure in the 247 specification corresponding to the claimed means. Ex. 1008 at 99-100. Claim 21 [21.0] The system of claim 16, said node further comprising an Internet server for connecting the node to the Internet and a telephone server for connecting the node to the one of a digital telephone network, an analog telephone network, and a cellular network: comprising an Internet server : Weinstein illustrates in Fig. 2 that the packet voice terminal (PVT) includes a protocol processor and network interface processor that facilitate connection to a packet network: 45
CSCO-1010 Fig. 2 Weinstein further shows in Fig. 8 that a packet voice terminal (PVT) is connected via a local network to an Internet Voice/Data Gateway. CSCO-1010, Fig. 8. Furthermore, Weinstein teaches connecting a packet voice terminal (PVT) to the ARPANET or SATNET packet networks. CSCO-1010, Fig. 12 at 977. As 46
analyzed above in portion [1.3], those of skill in the art would have understood that ARPANET and SATNET were early member components of the constellation of networks that came to be called the Internet. See Ex. 1019 at 57; 1008 at 15-16. Thus, Weinstein teaches that the packet voice terminal (PVT) includes an Internet server for connecting the node to the Internet as recited in the claim. Ex. 1008 at 100-102. comprising a telephone server : Weinstein teaches this limitation because it teaches that the switched telephone network interface (STNI) (analyzed above) takes the form of a card which resides in a LEXNET PVT (packet voice terminal). Ex. 1010 at 977. The switched telephone network interface (STNI) provides various services, including translation of dialing and analog voice between the PVT and the public net, provides PCM digitization, and includes echo suppression. Ex. 1010 at 977. Thus, the switched telephone network interface (STNI) is a telephone server for connecting the node to an analog telephone network as recited in the claim. Ex. 1008 at 100. Claim 22 [22.0] The system of claim 21, wherein the telephone server comprises a Public Switched Telephone Network Interface: Weinstein teaches this limitation because it describes how the switched telephone network interface (STNI) is accessible from any ordinary telephone by 47
calling the STNI. Ex. 1010 at 977; Ex. 1008 at 102. Claim 23 [23.0] The system of claim 16, wherein the node is further arranged and dimensioned for selecting a route to the called party based on at least one criteria of user preference: This limitation is similar to portion [8.0] above and is obvious over the prior art for the same reasons provided above. Claim 27 [27.0] The system of claim 16, wherein the transmission is related to establishing a connection for transmitting voice communication for a phone call from a calling party connected to the first access device to a called party connected to the second access device: This limitation is similar to portion [3.0] above and is obvious over the prior art for the same reasons provided above. Claim 28 [28.0] The system of claim 17, wherein said further format comprises said first format or another telecommunication protocol: This limitation is similar to portion [1.6] above and is obvious over the prior art for the same reasons provided above. Claim 29 [29.0] The system of claim 16, wherein at least one of said first network and said further network comprises a portion of the Internet: 48
As analyzed above in portion [16.3], the ARPANET and SATNET networks described in Weinstein were early member components of the group of networks that came to be called the Internet. See Ex. 1008 at 103. 2. Challenge #2: Claims 9, 11, 13, 24 and 26 are obvious under 103 over Weinstein in view of RFC 1190 and further in view of Gurrie Claims 9, 11, 13, 24 and 26 are obvious under 35 U.S.C. 103 over Weinstein in view of RFC 1190 and further in view of Gurrie. Ex. 1008 at 104. Weinstein and RFC1190 are described above in Challenge #1. Gurrie is VOICE/DATA TELECOMMUNICATIONS SYSTEMS: AN INTRODUCTION TO TECHNOLOGY by Michael L. Gurrie and Patrick J. O Connor, published by Prentice-Hall in 1986. Gurrie is prior art under 35 U.S.C. 102(b). Gurrie describes an overall view of the telecommunications industry with emphasis on the systems and methods used by business. Ex. 1012 at viii. Gurrie describes how a private telephone network can include a single switch that connects calls from one station to another within an organization. Ex. 1012 at 297. This switch is referred to as a private branch exchange, or PBX. Id. The PBX also permits telephones within an organization to reach the public network outside the organization. Id. Gurrie also describes various features and benefits of a PBX, including the use of automatic route selection in which the PBX will automatically select a trunk in the most economical trunk group for making a call. Ex. 1012 at 301. 49
It would have been obvious to combine the teachings of Weinstein, RFC 1190 and Gurrie because Weinstein suggests connecting its packet network to other voice communication systems, such as a PBX. Ex. 1008 at 104-05. Weinstein illustrates in Fig. 9 that a PBX is part of the packet voice/data system deployed at USC-ISI, which is interconnected with other sites via both land and satellite links. Ex. 1010 at 975 (Fig. 9), 970 (Fig. 5), 970-972 ( IV). PBX Ex. 1010 Fig. 9 (annotated). PBXs were known in the 1980s to have the ability to route telephone calls by selecting from different paths available to reach a destination. Ex. 1012 at 299. The multiple paths leaving a PBX, called trunks or trunk lines, could connect the PBX to different long distance carriers or provide a private dedicated connection to a PBX at a different office within the same company. For example, a person at a 50