PTAB

IPR2016-01260

YMax Corp v. Focal IP LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Tandem Access Controller Within The Public Switched Telephone Network
  • Brief Description: The ’113 patent discloses a system allowing subscribers to remotely control telephone service features, such as call forwarding, via a web interface. The challenged claims are directed to a method performed by a call processing system that serves as an intelligent interconnection between a packet-switched network (e.g., the Internet) and a second network, such as the Public Switched Telephone Network (PSTN), to enable voice communication across both networks.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1, 2, 8, 15, and 17-19 by Shtivelman

  • Prior Art Relied Upon: Shtivelman (International Publication No. WO 99/14924).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Shtivelman disclosed a complete method for handling calls when a user's phone line is occupied by a dial-up Internet session. In Shtivelman, a call processing system (comprising server 142 and switch 141) is connected to both the PSTN and the Internet. When an incoming call arrives via the PSTN, the system intelligently reroutes it from its original destination (the busy phone line) across the Internet as a Voice over IP (VoIP) call to the user’s computer. Petitioner contended this system is "web enabled" because it uses a server and browser plug-in to notify the user of the call, and it serves as an "intelligent interconnection" by dynamically altering the call's path across two different networks, thereby meeting all limitations of independent claim 1. Dependent claims were allegedly met by Shtivelman’s disclosure of subscribers setting routing rules (claim 8) and using VoIP to complete the call (claim 15).

Ground 2: Anticipation of Claims 1, 2, 8, 11, 15, and 17-19 by O'Neal

  • Prior Art Relied Upon: O'Neal (Patent 6,463,145).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that O'Neal’s "unified messaging system" (UMS) anticipates the challenged claims. O'Neal’s UMS is a web-enabled processing system that includes a web server coupled to a telephony server. A subscriber uses a web page to configure communication options, such as call forwarding rules, which are stored in a database. The UMS receives calls from the PSTN and, based on these subscriber-defined rules, can reroute the call to various destinations, including back through the PSTN or to a subscriber's computer via the Internet ("digital/Internet telephony"). Petitioner argued this functionality constitutes an intelligent, web-enabled interconnection between a packet network and the PSTN, as required by claim 1. O'Neal's disclosure of a system distributed over a large geographical area was argued to meet the limitation of claim 11.

Ground 3: Obviousness of Claims 1, 2, 8, 15, and 17-19 over Shtivelman in view of O'Neal

  • Prior Art Relied Upon: Shtivelman (WO 99/14924) and O'Neal (Patent 6,463,145).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that to the extent Shtivelman might be found deficient in disclosing a "web enabled processing system including one or more web servers coupled to a call processing system" for managing user settings, O'Neal explicitly supplied this feature. Shtivelman taught the core system of rerouting calls between the PSTN and the Internet, while O'Neal taught using a web server to allow subscribers to conveniently review and customize their communication options (e.g., call forwarding numbers).
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would have been motivated to combine O'Neal's user-friendly web interface with Shtivelman's call-rerouting architecture. The goal would be to improve Shtivelman's system by providing a simple, interactive method for subscribers to manage the routing rules, a known technique for improving system usability and commercial appeal.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in this combination. Integrating a known web-based front-end for rule management (from O'Neal) with a known back-end call processing engine (from Shtivelman) was a predictable and straightforward engineering task at the time, involving well-understood technologies.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 3) based on O'Neal alone, arguing that even if O'Neal does not explicitly disclose routing a call between the PSTN and a packet network, it would have been obvious to modify O'Neal's system to do so.

4. Key Claim Construction Positions

  • "web enabled": Petitioner proposed this term means "capable of receiving information from, or sending information over, the Internet's world wide web." This construction was central to arguing that the prior art systems, which used web servers or plug-ins for notifications and settings, met this limitation.
  • "coupled to": Proposed as "connected either directly or indirectly." This broad interpretation was used to argue that a connection to any part of the PSTN (a network of switches) constitutes a connection to a "switching facility," even if not directly to a tandem switch.
  • "switching facility": Proposed as "any switch in the communication network." Petitioner argued against a narrow interpretation that might exclude edge switches, asserting that the patentees used the broad generic term deliberately.
  • "tandem access controller": Based on the patent’s specification defining it as a "processor," Petitioner proposed this term means "a processor" or "a device with a processor."

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1, 2, 8, 11, and 15-19 of Patent 8,457,113 as unpatentable.