YMax Corp v. Focal IP LLC

1. Case Identification

• Case #: IPR2016-01258
• Patent #: 7,764,777
• Filed: June 23, 2016
• Petitioner(s): YMax Corp
• Patent Owner(s): Focal IP, LLC
• Challenged Claims: 18, 21, 23, 25, 26, 28, 29, 30, 31, 37, 38, 41, and 45

2. Patent Overview

• Title: Branch Calling and Caller ID Based Call Routing Telephone Features
• Brief Description: The ’777 patent discloses a system for allowing a subscriber to control telephone service features, such as call forwarding, for a conventional Public Switched Telephone Network (PSTN) line. The system uses a web-based interface for configuration and a controlling device, such as a Tandem Access Controller (TAC), to intercept an incoming call and initiate a second call based on the subscriber's pre-defined criteria.

3. Grounds for Unpatentability

Ground 1: Anticipation by O’Neal - Claims 18, 23, 25, 26, 29, 30, 31, 37, 38, 41, and 45 are anticipated by O’Neal under 35 U.S.C. §102(e).

• Prior Art Relied Upon: O’Neal (Patent 6,463,145).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that O’Neal discloses every limitation of the challenged claims. O’Neal teaches a “unified messaging system” (the controlling device) connected to the PSTN (the communication network) that processes incoming calls. A subscriber uses a computer to access a website and configure “communication options” (control criteria), such as enabling call forwarding to an “alternate number.” When a first call for the subscriber is received from the PSTN, the unified messaging system identifies the stored communication options and, in accordance with those criteria, initiates a second call to the alternate number. Upon connection, O’Neal’s system connects the first and second calls.
  • Key Aspects: Petitioner contended that O'Neal's disclosure of routing calls to a subscriber's computer with "digital/Internet telephony" capabilities also anticipates claims requiring a VoIP connection (e.g., claim 37) and routing to a "voice mail server" anticipates claims requiring that feature (e.g., claim 45).

Ground 2: Anticipation by Schwab - Claims 18, 26, 29, 30, 31, and 45 are anticipated by Schwab under 35 U.S.C. §102(e).

• Prior Art Relied Upon: Schwab (Patent 6,381,323).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Schwab independently anticipates the core method of claim 18. Schwab discloses a call-routing “platform” (the controlling device) connected to the PSTN. Subscribers can use "the web" as an "input media" to program a "subscriber's profile" (control criteria) that dictates how incoming calls are handled. For example, a subscriber can select a “simultaneous ring option,” causing the platform, upon receiving a first call, to initiate multiple second calls to the subscriber’s business and car phones. When the subscriber answers one of the second calls and enters a PIN, the platform connects the first and second calls.
  • Key Aspects: This ground was presented as an alternative to the O'Neal anticipation ground. Petitioner highlighted that Schwab explicitly discloses connecting its platform to an Interexchange Carrier (IXC) "point of the presence (POP)," which constitutes a "switching facility" under any reasonable construction, including a narrow one that might exclude the end-office switches disclosed in O'Neal.

Ground 3: Obviousness over O’Neal in view of Schwab - Claims 18, 37, and 45 are obvious over O’Neal in view of Schwab under 35 U.S.C. §103.

• Prior Art Relied Upon: O’Neal (Patent 6,463,145) and Schwab (Patent 6,381,323).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground was argued in the alternative, assuming the Patent Owner successfully argued for a narrow claim construction that O'Neal fails to meet. Specifically, if "a controlling device in communication with the switching facility" were interpreted to require direct communication with a switching facility other than an end-office switch, Petitioner argued this feature is disclosed by Schwab. Schwab's platform can be directly connected to an IXC POP.
  • Motivation to Combine: A POSITA would combine Schwab’s teaching of connecting a call-control platform to an IXC with O’Neal’s unified messaging system for a clear and predictable purpose: to improve O’Neal’s system by allowing it to provide service to subscribers "who are served by Interexchange Carriers (IXCs)." This modification would expand the marketability and utility of O’Neal’s system.
  • Expectation of Success: The proposed modification—connecting the O'Neal system to an IXC instead of an end-office switch—was presented as a simple and well-understood engineering choice. A POSITA would have had a high expectation of success in implementing this combination to achieve the predictable result of an enhanced call-forwarding service.

• Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 21, 25, 28, and 37 over O’Neal alone, arguing that implementing O'Neal's system with a distributed architecture or locating it in a specific service area would have been obvious design choices.

4. Key Claim Construction Positions

• "switching facility": Petitioner argued for the broadest reasonable interpretation of "any switch in the communication network," including PSTN end-office (Class 5) switches. This interpretation was supported by technical glossaries from the relevant time period and by the patent applicant's own statements during prosecution, where the applicant described the PSTN as a "configuration of switching facilities... comprising a plurality of end office switches." Petitioner anticipated that the Patent Owner might argue for a narrower construction limited to tandem switches or excluding end-office switches, based on the patent's specific embodiments.
• "is coupled to" / "in communication with": Petitioner contended these phrases should be interpreted broadly to mean "connected directly or indirectly." This was supported by the patent's specification, which distinguishes between being merely "connected to the PSTN" and being "connect[ed] directly" to a specific switch.

5. Relief Requested

• Petitioner requests institution of IPR and cancellation of claims 18, 21, 23, 25, 26, 28, 29, 30, 31, 37, 38, 41, and 45 of the ’777 patent as unpatentable.