ESN LLC v. Cisco Systems, Inc. et al

Filing 55

*WITHDRAWN PER ORDER # 122 * MOTION to Amend/Correct Invalidity Contentions by Cisco Systems, Inc., Cisco-Linksys LLC. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Affidavit Sharper Declaration, # 7 Text of Proposed Order)(Smith, Kevin) Modified on 9/11/2009 (mrm, ).

Exhibit A

555 "'(°win Dolphin Drive, Sui

560. Redwood Shor

California 94065: ri I : [phone] aa:x: (650) M-5100

WRITER'S DIRECT DIAL No. [phone]
WRITER'S INTERNET ADDRESS sayurisharper @ quinnemanuel.com

January 30, 2009
VIA ELECTRONIC MAIL

Gerald C. Willis McAndrews Held & Malloy 500 W. Madison St., 34th Floor Chicago, IL 60661

Re:

ESN, LLC v. Cisco Systems, Inc.

Dear Jerry: I write regarding Cisco's intent to seek leave of court to amend its P.R. 3-3 invalidity contentions. Cisco asks that ESN consent to this amendment. In its original P.R. 3-3 contentions, Cisco expressly reserved the right to amend should ESN be allowed to supplement its original P.R. 3-1 infringement contentions. Further, as Cisco relied on ESN's apparent construction of the claims in providing its original invalidity contentions, Cisco additionally reserved its right to amend should ESN change or clarify those constructions. ESN has since amended and clarified its infringement contentions and apparent claim constructions. On April 18, 2008, ESN served its original P.R. 3-1 infringement contentions alleging that Cisco's products infringe 16 claims (claims 1, 3, 4, 5, 6, 7, 8, 9, 10, 12, 13, 14, 15, 16, 17 and 18) of the '519 patent. These infringement contentions, however, fell far short of meeting the requirements of the Patent Local Rules, which require ESN to provide Cisco with adequate notice of its infringement theories. Those Rules required ESN to do more than simply mimic the language of the claims without providing any evidentiary support for its allegations in the claim charts. On May 8, 2008 and again on June 9, 2008, Cisco requested that ESN amend its deficient contentions. On November 5, 2008, ESN finally amended its P.R. 3-1 contentions to provide citations to evidentiary support for some elements of the asserted claims. The

supplemental P.R. 3-1 infringement contentions also reduced the asserted claims from 16 to four (claims 9, 10, 12, and 16). This supplementation revealed ESN's infringement theories and apparent claim constructions that were lacking in the original contentions. Even though ESN amended its infringement contentions almost six months after Cisco alerted ESN to the deficiencies, Cisco did not oppose ESN's motion for leave to supplement. On December 19, 2008, ESN served its preliminary claim constructions and identification of extrinsic evidence pursuant to P.R. 4-2. ESN's P.R. 4-2 disclosure, together with its supplemental P.R. 3-1 infringement contentions, further clarified ESN's claim construction positions. Based on ESN's new claim construction positions and narrowing of the claims, Cisco conducted further analysis and search that led to discovery of additional prior art. Accordingly, Cisco has good cause to amend its P.R. 3-3 contentions. This case is still in the early stage of discovery. Claim construction briefing does not start until April 1, 2009, and the claim construction hearing is not until June 11, 2009. ESN's final infringement contentions are not due until 30 days after the claim construction hearing. Similarly, Cisco's final invalidity contentions are not due until 50 days after the claim construction hearing. No prejudice or delay would result from Cisco's amendment of P.R. 3-3 contentions. Attached hereto are the amended P.R. 3-3 contentions, which include the additional prior art that Cisco has discovered. The additional claim charts are included as Exhibit B. Please let us know by February 4, 2009 whether ESN will oppose our motion to amend. Because of the voluminous amount of potential prior art products and the difficulties involved in establishing public use and/or invention date of the prior art, Cisco has not yet completed its search and analysis. Cisco reserves the right to further revise, amend, and/or supplement the information provided in the amended P.R. 3-3 should further analysis and discovery lead to additional information.

Very truly yours,

Sayuri Sharper

2

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS TEXARKANA DIVISION

ESN, LLC, Plaintiff,
V.

CIVIL ACTION NO. 5:08-CV-20-DF

JURY TRIAL DEMANDED CISCO SYSTEMS, INC. and CISCO-LINKSYS, LLC, Defendants.

CISCO SYSTEMS, INC.'S AND CISCO-LINKSYS, LLC'S SECOND SUPPLEMENTAL INVALIDITY CONTENTIONS 1. INTRODUCTION On November 5, 2008, ESN, LLC ("ESN") served defendants Cisco Systems, Inc. and Cisco-Linksys, LLC (collectively "Cisco") its P.R. 3-1 Supplemental Disclosure of Asserted Claims and Infringement Contentions ("Supplemental P.R. 3-1 Contentions"). The Supplemental P.R. 3-1 Contentions modified and limited the asserted claims to Claims 9, 10, 12, and 16 of U.S. Patent Number 7,283,519 ("the'519 Patent"). The Supplemental P.R. 3-1 Contentions also modified the original claim: charts by adding citations to evidentiary support for certain elements of the asserted claims. In response to ESN's Supplemental P.R. 3-1 Contentions and pursuant to Local Patent Rule 3-3 and 3-6, Cisco hereby provide its Second Supplemental Invalidity Contentions with respect to the claims identified by ESN in its Supplemental P.R. 3-1 Contentions. The Second Supplemental Invalidity Contentions include: (a) identification of additional prior art that either anticipate or render the asserted claims obvious; and (b) identification of where within each item

51301/2773417

of additional prior art each element of the claim is found. In addition, Cisco hereby produces additional documents that are currently in its possession, custody or control required to accompany these Second Supplemental Invalidity Contentions pursuant to Patent Local Rule 3-4. II.. OBJECTIONS AND RESERVATIONS The information and documents hereby produced are provisional and subject to revision as follows: Cisco expressly reserves the right to amend the disclosures and document production herein should ESN be allowed to provide any information that it failed to provide in its Rule 3-1 and 3-2 disclosures and that may require Cisco to revise, amend, and/or supplement its disclosures and document production. Furthermore, because discovery has only recently begun and because Cisco has not yet completed its search for and analysis of the prior art, Cisco reserves the right to revise, amend, and/or supplement the information provided herein should further analysis and discovery lead to additional information, consistent with the Patent Local Rules and the Federal Rules of Civil Procedure. In addition, Cisco's ultimate contentions concerning the invalidity of the claims of the `519 Patent may change depending upon the Court's construction of the claims, and/or positions that ESN or its expert witness(es) may take concerning claim interpretation, infringement, and/or invalidity issues. Prior art not included in this disclosure, whether known or not known to Cisco, may become relevant. In addition, the obviousness combinations of references provided below under 35 U.S.C. § 103 are merely exemplary and are not intended to be exhaustive. In particular, Cisco is currently unaware of the extent, if any, to which ESN will contend that limitations of the asserted claims are not disclosed in the prior art identified by Cisco. To the extent such an issue arises, Cisco reserves the right to identify other references that would have made the addition of the allegedly missing limitation to the disclosed device obvious.

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Furthermore, Cisco's claim charts cite particular teachings and/or disclosures of the prior art as applied to features of the asserted claims. However, persons of ordinary skill in the art generally may view an item of prior art in the context of other publications, literature, products, and understanding. As such, Cisco reserves the right to rely on uncited portions of the prior art references and on other publications and expert testimony as aids' in understanding and interpreting the cited portions, as providing context to them, and as additional evidence that the prior art discloses a claim limitation. Cisco further reserve the right to rely on uncited portions of the prior art references, other publications, and testimony to establish that a person of skill in the art would have been motivated to combine certain of the cited references so as to render the claims obvious. For the purposes of these Invalidity Contentions, Cisco identifies prior art references and provides element by element claim charts based in part on the apparent constructions of the asserted claims advanced by ESN in its Infringement Contentions. Nothing stated herein shall be treated as an admission that Cisco agrees with ESN regarding the scope of any of the asserted claims or claim constructions advanced by ESN in its Infringement Contentions. Cisco's claim constructions will be disclosed during the Markman process set forth in the Court's Docket Control Order. Pursuant to P.R. 3-3 and 3-4, Cisco provides disclosures and related documents pertaining only to the asserted claims as identified by ESN in its Infringement Contentions. Cisco reserves the right to supplement these contentions to show the invalidity of any additional claims that the Court may allow ESN to later assert. Further, Cisco reserves the right to supplement these contentions if ESN is permitted to amends it infringement contentions to address any deficiencies.

51301 W73417

3

III.

INVALIDITY CONTENTIONS A. Identification of Prior Art Pursuant to P.R. 3-3(a)

In addition to the prior art references that have been previously identified in Cisco's Invalidity Contentions served on June 2, 2008, Cisco contends that the following prior art references anticipate or renders obvious, either alone or in combination, the asserted claims of the `519 Patent: Commercial Products · VocalTec SIP Server VSS 4000, offered for sale, sold and in public use no later than March, 2001. Open source SIP, Vovida Open Communication Application Library (VOCAL) from Vovida Networks , offered for free download and in public use no later than July, 2001. DSG Technology InterPBX, offered for sale, sold and in public use no later than February, 2001. Intertex IX66 Residential Gateway, offered for sale, sold and in public use no later than March, 2000. Pingtel SIPxchange Enterprise Communications System, offered for sale, sold and in public use no later than March, 2002. Clarent Softswitch, offered for sale, sold and in public use no later than August, 1999. · All the products mentioned in the Meircom Session Initiation Protocol (SIP) Interoperability Testing Report 100801, published in August, 2001, including: Cisco 7960 v2.1 SIP Phone; Cisco ATA-186 Telephony Adapter v2.0; Cisco AS5350 Universal Gateway v1.2.22xa; CyberTel CyberCom Server Class vi.01; Difinium Mercury v.09; dynamicsoft Session Management Suite (SMS) vl.I; Indigo Software Indigo SIP proxy server v3.1; Indigo Software SIP user agent v2.5; Mediatrix APA 111-4FXO; Mediatrix III-4FXS v2.2.1.1x; Mockingbird Networks SIP Server v3.9; Mockingbird Networks Nuvostream MPS v3.3.2; NetCentrex Call Control Server (CCS) Softswitch v3.3.2; Nuera Orca GX-8 Media Gateway v7.1.12.0 and Softswitch Controller v7.1.17.0; Pingtel Corp. Xpressa SIP Phones vl.0.2; SS8 Networks SS8 Signaling Switch vl.2; Vovida.org Vovida Open Communications Applications Library (VOCAL) vl.3.0. These products were offered for sale and in public use no later than July, 2001.

·

·

51301/2773417

Cisco contends that, at a minimum, if the asserted claims are found not to be anticipated by the identified prior art, the asserted claims would have been obvious in view of those references either alone or in combination with one or more of the references disclosed above or identified previously. Suggestions and/or motivations to modify a prior art reference or to combine prior art teachings are found in the identified prior art references themselves, the technical problem itself, and the knowledge of or generally available to persons of ordinary skill and creativity in the art to which the `519 patent pertains prior to the time of the alleged invention of the `519 Patent. One of skill in the art would reasonably expect success in such modifications and/or combinations. Such modifications and/or combinations were within the skill and knowledge of those of ordinary skill and creativity in the art at the time of the alleged invention of the `519 Patent. Cisco also contends that the commercial products identified above are prior art under 35 U.S.C. § 102(a), § 102(b) and/or § 1`02 (g). The following entities were involved in the development , including conception and reduction to practice, of the identified commercial products : Cisco Systems; Clarent; VocalTec Communications; Vovida Networks; DSG Technology ; Intertex ; Pingtel ; Mockingbird Networks ; CyberTel; dynamicsoft; Difinium ; Indigo Software; Mediatrix; NetCentrex ; Nuera; and SS8 Networks. Cisco has not had the opportunity to investigate through discovery whether any basis exists for invalidity of the ` 519 Patent under 35 U .S.C. § 102(f). Cisco reserves the right, after further discovery and investigation is conducted, to amend this list as needed.

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B.

Identification of Asserted Claim Elements for Each Prior Art Pursuant to P.R. 3-3(b) & (c)

Cisco attaches as Exhibit B charts identifying where within each item of prior art each element of each asserted claim is found at least in part according to ESN's apparent construction of the claims. If a combination of prior art references makes a claim obvious, each such combination as well as motivations to combine such items is identified. The disclosures provided in Exhibit B are exemplary only. Cisco reserves the right to

rely on the identified citations as well as other aspects of the prior art to demonstrate such invalidity. Cisco may rely on the United States Patent and Trademark Office's characterization(s) of the teaching effect(s) of prior art. Cisco may also rely on the admissions, statements, representations, and characterizations made by ESN concerning the prior art during the prosecution of the applications that led to the `519 Patent, the reexamination of the '519 Patent, or any related U.S. or foreign patent applications. The contention that a prior art reference includes a specific claim element is not an admission as to the construction of that claim element. These supplemental invalidity contentions are made prior to the Court's construction of the claim terms and at least in part according to ESN's apparent construction of the claims. Pursuant to P.R. 3-6(b), Cisco will amend its contentions, as appropriate, once the Court has provided the parties with its construction of the claims.

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6

DATED: January 30, 2009

Respectfully submitted,

Victoria Maroulis

MCKOOL SMITH P.C. SAM BAXTER Texas Bar No. 01938000 [e-mail] 104 E. Houston St., Suite 300 P.O. Box 0 Marshall , Texas 75670 Telephone : [phone] Facsimile : [phone] GARRET W. CHAMBERS Texas State Bar No. 00792160 [e-mail] 300 Crescent Court, Suite 1300 Dallas, Texas 75201 Telephone : [phone] Facsimile : [phone]

QUINN EMANUEL URQUHART OLIVER & HEDGES, LLP CHARLES K. VERHOEVEN LEAD COUNSEL Cal. Bar No. 170151 charlesverhoeven@quinnemanuel, com KATHERINE H. BENNETT katherinebennett @ quinnemanuel.com Cal. Bar No. 250175 KEVIN A. SMITH Cal. Bar No. 250814 kevinsmith @quinnemanuel.com 50 California St., 22nd Floor San Francisco, California 94111 Telephone: [phone] Facsimile : [phone]

51301/2773417

7

VICTORIA F. MAROULIS Cal. Bar No. 202603 (admitted in E.D. Tex.) victoriamaroulis @ quinnemanuel.com SAYURI K. SHARPER Cal. Bar No. 232331 sayurisharper @quinnemanuel.com 555 Twin Dolphin Dr., Suite 560 Redwood Shores, California 94065 Telephone : ( 650) 801-5000 Facsimile : ( 650) 801-5100 Attorneys for Defendants Cisco Systems , Inc. and Cisco-Linksys, LLC

8

CERTIFICATE OF SERVICE I hereby certify that on the date this proof of service is signed below, I served the foregoing: CISCO SYSTEMS, INC.'S AND CISCO-LINKSYS, LLC'S SECOND SUPPLEMENTAL INVALIDITY CONTENTIONS by email and U.S. mail, addressed as follows: George P. McAndrews ([e-mail]) Thomas J. Wimbiscus ([e-mail]) Peter J. McAndrews ([e-mail]) Gerald C. Willis [e-mail]) Paul W. McAndrews ([e-mail]) Matthew N. Allison ([e-mail]) McAndrews, Held & Malloy 500 West Madison, Suite 3400 Chicago, IL 60661 Telephone [phone] Fax [phone]

Eric M. Albritton ([e-mail]) Albritton Law Firm P.O. Box 2649 Longview, Texas 75606 Telephone [phone] Fax [phone]

T. John Ward O [e-mail]) Ward & Smith Law Firm 111 West Tyler Street Longview , Texas 75601 Telephone ( 903) 757-6400 Fax (903 ) 757-2323
.j

Date: January 30, 2009
Anel Rice

51301/2773417

9

INVALIDITY CONTENTIONS FOR U.S. PATENT NO. 7,283,519
IDENTIFICATION AND DATE OF PRIOR ART:

VocalTec SIP Server VSS 4000, offered for sale and in public use no later than March 21, 2001. See "VocalTec Brings SIP Support To H.323 Networks; Evolving Toward Softswitch-Enabled Solutions," March 21, 2001 Business Wire (CISCO209651-669).
BASIS OF INVALIDITY:

35 U.S.C. §§ 102, 103 U.S. Patent 7,283, 519
9. A network device comprising:

Prior Art
VocalTec SIP Server VSS 4000 is a media gatekeeper

a broadband network interface; a plurality of communication interfaces,
including a telephone line interface and a computer data interface;

that links the circuit-switched telephone network and the packet-switched IP network to carry voice and data traffic. VocalTec SIP Server VSS 4000 supports connection to a broadband network. VocalTec SIP Server VSS 4000 interfaces to a
telephone line through a SIP media gateway; it supports an Ethernet connection

a processor; a machine-readable storage medium
that stores processor-executable instructions to provide SIP agents, the instructions causing the network device to provide a SIP user agent to represent a non-SIP telephone that uses the telephone line interface, and

VocalTec SIP Server VSS 4000 includes one or more
processors.

VocalTec SIP Server VSS 4000 includes machinereadable storage that stores processor executable instructions. VocalTec SIP Server VSS 4000 supports call connection from a telephone to an endpoint in the packet network using SIP; the SIP media gateway provides a SIP user agent to represent a telephone attached to the telephone line interface.

the instructions further causing the network device to implement a SIP
proxy server that mediates all SIP

VocalTec SIP Server VSS 4000 provides a SIP proxy server that mediates SIP communications over the
packet-switched IP network,

communications over the broadband network interface involving the nonSIP telephone. 10. The network device of claim 9, wherein the computer data interface passes IP data. 16 [written in independent form]. A method for establishing a voice-overpacket network architecture, the VocalTec SIP Server VSS 4000 supports passing IP data to its computer data interface.

VocalTec SIP Server VSS 4000 supports voice-overpacket applications.

1

U.S. Patent 7,283, 519 method com risin : locating a system management platform

Prior Art VocalTec SIP Server VSS 4000 provides for

in a shared packet network, the system
management platform collecting call log data from a plurality of network

communication of network events to a network
management console.

devices; and
distributing the plurality of network devices that each include a telephone line interface a computer data interface , a broadband network interface VocalTec SIP Server VSS 4000 may be distributed in a network. VocalTec SIP Server VSS 4000 interfaces to a telephone line through a SIP media gateway VocalTec SIP Server VSS 4000 interfaces to Ethernet, VocalTec SIP Server VSS 4000 supports connection

terminating a link from the shared packet network,
a processor, and

to a broadband network terminating a link from the shared packet network.
VocalTec SIP Server VSS 4000 includes one or more processors.

a machine-readable storage medium
storing processor-executable instructions to control telephone calls, the instructions causing each network device to route telephone calls in a

VocalTec SIP Server VSS 4000 can route telephone
calls in a peer-to-peer fashion over the shared packet network , and send call log data to a system management platform.

peer-to-peer fashion over the shared
packet network and to send call log

data to the system management platform [;]
[] wherein the storage medium further stores processor-executable Instructions to act as an SIP proxy server for VocalTec SIP Server VSS 4000 provides a SIP proxy server that mediates SIP communications for devices attached to the telephone line interface and Ethernet.

devices using the telephone line interface and for devices using the computer data interface.

2

INVALIDITY CONTENTIONS FOR U.S. PATENT NO. 7,283,519
IDENTIFICATION AND DATE OF PRIOR ART:

DSG Technology InterPBX offered for sale and in public use no later than February, 2001. See DSG Technology Unveils A Full-Featured IP-PBX System, February 26, 2001 press release (CISCO209769-70). See also DSG Has Won Computer Telephony' s Best of Show Award, April, 2001 press release (CISCO209768). See also CTExpo Best of Show, Call Center Magazine (CISCO209733-63).
BASIS OF INVALIDITY:

35 U.S.C. §§ 102, 103 U.S. Patent 7,283,519
9. A network device comprising:

Prior Art
DSG InterPBX is an intelligent IP-PBXsstem.

a broadband network interface;
a plurality of communication interfaces, including a telephone line interface and

DSG InterPBX supports a broadband network.
DSG InterPBX supports connections to analog telephones and computer terminals. DSG InterPBX includes one or more processors. DSG InterPBX includes machine-readable storage that stores processor executable instructions, DSG InterPBX includes an embedded voice-over-IP gateway that provides a SIP user agent to represent standard telephones. Analog adapters can also be used

a computer data interface;
a processor; a machine-readable storage medium that stores processor-executable instructions to provide SIP agents, the instructions causing the network device to provide a SIP user agent to represent a non-SIP telephone that uses

the telephone line interface, and
the instructions further causing the network device to implement a SIP proxy server that mediates all SIP

to connect to standard telephones.
DSG InterPBX is based around a SIP proxy server that mediates SIP communications over the broadband network interface.

communications over the broadband
network interface involving the non-

SIP telephone.
10. The network device of claim 9, wherein the computer data interface passes IP data. 12. The network device of claim 9, wherein the network device is contained in a single physical enclosure. 16 [written in independent form]. A DSG InterPBX supports passing IP data to its computer data interface.

It would have been obvious to one skilled in the art at the time of the invention to combine the various essential elements of a DSG InterPBX in a single physical enclosure. DSG InterPBX supports voice-over-packet

3

U.S. Patent 7,283,519 method for establishing a voice-over packet network architecture, the method com risin : locating a system management platform

Prior Art applications.

DSG InterPBX supports a web-based system

in a shared packet network the system
management platform collecting call

management interface that can be used to collect call
log data.

log data from a plurality of network
devices; and

distributing the plurality of network devices that each include a telephone line interface; a computer data interface, a broadband network interface terminating a link from the shared
packet network a processor, and a machine-readable storage medium

DSG InterPBX may be distributed in a network,

DSG InterPBX includes a telephone line interface. DSG InterPBX includes a computer data interface. DSG InterPBX includes a broadband network nterface terminating a link from the shared packet i
network. DSG InterPBX includes one or more processors. DSG InterPBX can route calls in a peer-to-peer

storing processor-executable
instructions to control telephone calls, the instructions causing each network

fashion over the shared packet network, and send call
log data to a web-based system management platform.

device to route telephone calls in a peer - to-peer fashion over the shared
packet network, and to send call log

data to the system management
platform[;]

[]wherein the storage medium further stores processor-executable Instructions
to act as an SIP proxy server for devices using the telephone line interface and for devices using the

DSG InterPBX is based around a SIP proxy server that mediates SIP communications for devices attached to
the telephone line interface and Ethernet.

comp uter data interface.

INVALIDITY CONTENTIONS FOR U.S. PATENT NO. 7,283,519
IDENTIFICATION AND DATE OF PRIOR ART:

Intertex IX66 Residential Gateway with built-in ADSL Modem, offered for sale and in public use no later than , March, 2000. See New Products , March 27, 2000 , press release (CISCO209546). See also IX66 Block Diagram (CISCO209867 -68). See also ADSL Modem with Internet Gate, press release (CISCO209869-71). See also IX66 Internet Gate: A Firewall with SIP Support , Spring 2001 VON presentation (CISCO209561-79).
BASIS OF INVALIDITY:

35 U.S.C. §§ 102, 103 U.S. Patent 7,283,519
9. A network device comprising:

Prior Art
IX66 Residential Gateway is a residential gateway that supports Vol? communication.

a broadband network interface;
a plurality of communication interfaces, including a telephone line interface and

IX66 Residential Gateway supports a built-in ADSL
modem. IX66 Residential Gateway supports a plurality of interfaces, including Ethernet ports, USB port, and an

a computer data interface;

expansion port that may be used to connect to a
telephone. IX66 Resident Gateway also supports connections to telephones through analog adapters.

a processor;
a machine-readable storage medium

IX66 Residential Gateway includes one or more
processors. IX66 Residential Gateway includes machine-readable

that stores processor-executable instructions to provide SIP agents,
the instructions causing the network device to provide a SIP user agent to represent a non-SIP telephone that uses the telephone line interface, and the instructions further causing the network device to implement a SIP

storage that stores processor executable instructions.
IX66 Residential Gateway includes a SIP home appliance agent to allow intelligent control from the Internet using SIP, It also supports analog telephone adapters that provides a SIP user agent to represent analog telephones. IX66 Residential Gateway implements a SIP proxy server that mediates SIP communications over the

proxy server that mediates all SIP communications over the broadband
network interface involving the nonSIP telephone. 10. The network device of claim 9, wherein the computer data interface passes IP data. 12. The network device of claim 9,

broadband network interface.

IX66 Residential Gateway supports passing IP data to its Ethernet interface.

IX66 Residential Gateway is contained in a single

5

U.S. Patent 7,283,519 wherein the network device is contained in a single physical
enclosure.

Prior Art physical enclosure. It would also have been obvious to one skilled in the art at the time of the invention to
add analog telephone adapter functionality into the IX66 Residential Gateway. IX66 Residential Gateway supports voice-over-packet

16 [written in independent form]. A

method for establishing a voice-overpacket network architecture, the

applications.

method comprising: locating a system management platform
in a shared packet network the system management platform collecting call

IX66 Residential Gateway can be configured to send
management events to a system management platform over a shared packet network. The system

log data from a plurality of network
devices; and

management platform may collect call log data from a
plurality of IX66 Residential Gateways.

distributing the plurality of network devices that each include
a telephone line interface,

IX66 Residential Gateway may be distributed in a network.
IX66 Residential Gateway includes an expansion port

that may be used to connect to a telephone. IX66
Resident Gateway also supports connections to

telephones through analo adapters.
a computer data interface, a broadband network interface terminating a link from the shared packet network IX66 Residential Gateway includes Ethernet ports. IX66 Residential Gateway supports a built-in ADSL modem terminating a link from the shared packet network.

a processor, and a machine-readable storage medium storing processor-executable instructions to control telephone calls,
the instructions causing each network

IX66 Residential Gateway includes one or more
processors.

IX66 Residential Gateway routes telephone calls in a peer-to-peer fashion over the shared packet network, and can be configured to send call log data to a system
management platform.

device to route telephone calls in a
peer-to-peer fashion over the shared

packet network, and to send call log data to the system management
platform[;] [] wherein the storage medium further stores processor-executable Instructions to act as an SIP proxy server for devices using the telephone line interface and for devices using the IX66 Residential Gateway provides a SIP proxy server that mediates SIP communications for devices attached to the expansion port, Ethernet and analog telephone adapters.

computer data interface.

INVALIDITY CONTENTIONS FOR U.S. PATENT NO. 7,283,519
IDENTIFICATION AND DATE OF PRIOR ART:

Pingtel SIPxchange Enterprise Communications System offered for sale and in public use no later than, March, 2002. See Pingtel to Unveil SIP IP PBX at SUPERCOMM, March 29, 2002 Xchangemag (CISCO209611). See also SIPxchange Enterprise Communications System Data Sheet (CISCO209607-10).
BASIS OF INVALIDITY:

35 U.S.C. §§ 102, 103 U.S. Patent 7,283,519
9. A network device comprising: a broadband network interface; a plurality of communication interfaces,

Prior Art
SIPxchange is an intelligent IP PBX system that runs

on a Linux or Windows server.
The Linux or Windows server may support a

broadband network interface.
The Linux or Windows server may support a

including a telephone line interface and a computer data interface;
a processor;

telephone line interface and a computer interface. SIPxchange also works with standard telephones via
analog adapters packaged with the PBX. The Linux or Windows server includes one or more processors,

a machine-readable storage medium
that stores processor-executable instructions to provide SIP agents, the instructions causing the network device to provide a SIP user agent to

The Linux or Windows server includes a machinereadable storage medium that stores processorexecutable instructions. The analog adapter, packaged with PBX, provides a SIP user agent to represent standard telephones.

represent a non-SIP telephone that uses
the telephone line interface, and the instructions further causing the network device to implement a SIP SIPxChange implements a SIP proxy server that mediates SIP communications over the broadband

proxy server that mediates all SIP
communications over the broadband

network interface involving attached telephones.

network interface involving the nonSIP telephone,

10. The network device of claim 9, wherein the computer data interface passes IP data.
12. The network device of claim 9, wherein the network device is contained in a single physical enclosure.

SIPxchange supports passing IP data through an Ethernet connection.

It would have been obvious to one skilled in the art at the time of the invention to combine the SIPxchange and analog adapter software in a single Linux or Windows server that supported a broadband network

U.S. Patent 7,283,519

Prior Art"
interface, a telephone line interface and a computer data interface.

16 [written in independent form]. A method for establishing a voice-over-

SIPxchange supports voice-over-packet applications.

packet network architecture, the method comprising: locating a system management platform
in a shared packet network the system management platform collecting call log data from a plurality of network

SIPxchange includes the Pingtel Configuration Server
which provides centralized management of servers and phones.

devices; and
distributing the plurality of network SIPxchange running on a Linux or Windows server

devices that each include a telephone line interface, a computer data interface,
a broadband network interface

may be distributed in a network. The Linux or Windows server may include a telephone line interface, The Linux or Windows server may include a computer data interface.
The Linux or Windows server may include a

terminating a link from the shared
packet network

broadband network interface that teminates a link from
the shared packet network.

a processor, and
a machine-readable storage medium

The Linux or Windows server includes one or more
processors. SIPxchange routes telephone calls in a peer-to-peer

storing processor-executable
instructions to control telephone calls, the instructions causing each network device to route telephone calls in a

fashion over the shared packet network, and sends call
log data to the Pingtel Configuration Server, the centralized management platform.

peer-to-peer fashion over the shared
packet network, and to send call log data to the system management

platform[;] []wherein the storage medium further stores processor-executable Instructions
to act as an SIP proxy server for devices using the telephone line

SIPxchange provides a SIP proxy server for devices using the telephone line interface and for devices using
the computer data interface.

interface and for devices using the computer data interface.

8

INVALIDITY CONTENTIONS FOR U.S. PATENT NO. 7,283,519
IDENTIFICATION AND DATE OF PRIOR ART:

Clarent NetPerformer Enterprise Gateway offered for sale and in public use no later than, August 31,1999. See Clarent Announces SIP-Based Integration of NetPerformer Product Line with Clarent Softswitch. (CISC0016509). See also Clarent NetPerformer and NetPerformer EG Data Sheet (CISCO209725-28) See also Clarent Class 5 Call Manager Data Sheet (CISCO20971314).
BASIS OF INVALIDITY:

35 U.S.C. §§ 102, 103 U.S. Patent 7,283,519
9. A network device comprising:
Prior Art

NetPerformer Enterprise Gateway is an access gateway.

a broadband network interface;
a plurality of communication interfaces, including a telephone line interface and

NetPerformer Enterprise Gateway includes modules that support broadband network interfaces.
NetPerformer Enterprise Gateway includes modules that support telephone line interfaces and computer

a computer data interface;
a processor;

data interfaces.
NetPerformer Enterprise Gateway includes one or more processors.

a machine-readable storage medium
that stores processor-executable instructions to provide SIP agents, the instructions causing the network device to provide a SIP user agent to represent a non-SIP telephone that uses the telephone line interface, and the instructions further causing the

NetPerformer Enterprise Gateway includes a machinereadable storage medium that stores processorexecutable instructions. NetPerformer Enterprise Gateway provides a SIP user agent to represent standard telephones.

NetPerformer Enterprise Gateway works in

network device to implement a SIP
proxy server that mediates all SIP

conjunction with Clarent's VoIP softswitch, which
provides a SIP proxy server that mediates SIP

communications over the broadband
network interface involving the nonSIP telephone. 10. The network device of claim 9, wherein the computer data interface asses IP data. 12. The network device of claim 9, wherein the network device is contained in a single physical enclosure.

communications for the attached telephones.

NetPerformer Enterprise Gateway supports passing IP data to its computer data interface.

It would have been obvious to one skilled in the art to combine NetPerformer Enterprise Gateway and VOIP softswitch into a single physical enclosure.

9

U.S. Patent 7,283,519
16 [written in independent form]. A method for establishing a voice-overpacket network architecture, the method comprising: locating a system management platform in a shared packet network the system management platform collecting call log data from a plurality of network devices; and distributing the plurality of network

Prior Art NetPerformer Enterprise Gateway supports voiceover-packet applications.

NetPerformer Enterprise Gateway can be configured to send management events to an SNMP-based system management platform over a shared packet network, The SNMP management platform may collect call log data from a plurality of NetPerformer Enterprise

Gateways.
Multiple NetPerformer Enterprise Gateways may be

devices that each include a telephone line interface, a computer data interface, a broadband network interface
terminating a link from the shared packet network

distributed in a network. NetPerformer Enterprise Gateway includes modules
that support telephone line interfaces.

NetPerformer Enterprise Gateway includes modules
that support computer data interfaces.

NetPerformer Enterprise Gateway includes modules
that support broadband network interfaces that may terminate a link from the shared packet network.

a processor, and
a machine-readable storage medium storing processor-executable

NetPerformer Enterprise Gateway includes one or
more processors. NetPerformer Enterprise Gateway software routes telephone calls in a peer-to-peer fashion over the

instructions to control telephone calls,
the instructions causing each network

shared packet network, and sends call log data to an
SNMP-based, system management platform,

device to route telephone calls in a
peer-to-peer fashion over the shared

packet network, and to send call log data to the system management
platform[;]

[]wherein the storage medium further
stores processor-executable Instructions to act as an SIP proxy server for devices using the telephone line

NetPerformer Enterprise Gateway works in
conjunction with Clarent's VoIP softswitch, which provides a SIP proxy server that mediates SIP communications for the attached devices.

interface and for devices using the
computer data interface.

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INVALIDITY CONTENTIONS FOR U.S. PATENT NO. 7,283,519
IDENTIFICATION AND DATE OF PRIOR ART:

Vovida Open Communications Applications Library (VOCAL), v1.3.0, offered for free download and in public use no later than July, 2001. See Meircom Session Initiation Protocol (SIP) Interoperability Testing Report 100801 (CISCO209587-90). See also VoIP Vendors Pass SIP Test, Network World, August 27, 2001 (CISCO209597-603). See also Luan Dang, Cullen Jennings , & David Kelly, Practical VoIP: Using VOCAL (O'Reilly Media ) (2002) (CISCO016504-08; CISCO016512-37; CISCO016538-55; CISCO016556-63; CISCO01656489; CISCO016590-631; CISCO016632-45; CISCO016646-54).
BASIS OF INVALIDITY:

35 U.S.C. §§ 102, 103 U.S. Patent 7,283,519
9. A network device comprising:

Prior Art
VOCAL may be implemented on a standard Intel-

a broadband network interface; a plurality of communication interfaces,
including a telephone line interface and

based PC. A standard Intel-based PC may support a plurality of
interfaces including a broadband network interface.

A standard Intel-based PC may support a plurality of
interfaces including telephone line interfaces and

a computer data interface; a processor; a machine-readable storage medium that stores processor-executable
instructions to provide SIP agents, the instructions causing the network device to provide a SIP user agent to represent a non-SIP telephone that uses the telephone line interface, and

computer data interfaces. A standard Intel-based PC includes one or more
processors.

A standard Intel-based PC includes a machinereadable storage medium that stores processorexecutable instructions. VOCAL implemented on a standard Intel-based PC may provide a SIP user agent to represent a standard telephone attached to the telephone line interface.

the instructions further causing the
network device to implement a SIP

VOCAL implemented on a standard Intel-based PC
may provide a SIP proxy server that mediates SIP

proxy server that mediates all SIP communications over the broadband
network interface involving the nonSIP telephone. 10. The network device of claim 9, wherein the computer data interface passes IP data. 12. The network device of claim 9, wherein the network device is

communications over the broadband network interface involving attached telephones.

VOCAL implemented on a standard Intel-based PC supports passing IP data to its computer data interface.

I VOCAL implemented on a standard Intel-based PC is contained in a single physical enclosure.

II

U.S. Patent 7,283,519
contained in a single physical enclosure.

Prior Art

16 [written in independent form]. A
method for establishing a voice-overpacket network architecture, the

VOCAL implemented on a standard Intel-based PC
supports voice-over-packet applications.

method comprising:
locating a system management platform in a shared packet network the system management platform collecting call log data from a plurality of network VOCAL may be configured to send management events to an SNMP-based system management platform over a shared packet network. The SNMP management platform may collect call log data from a

devices; and distributing the plurality of network devices that each include
a telephone line interface,

plurality of VOCAL systems running on Intel-based PCs. VOCAL implemented on a standard Intel-based PC may be distributed in a network.
A standard Intel-based PC may support a telephone line interface.

a computer data interface, a broadband network interface
terminating a link from the shared

A standard Intel-based PC may support a computer
data interface.

A standard Intel-based PC may support a broadband
network interface that terminates a link from the

packet network a processor, and a machine-readable storage medium
storing processor-executable instructions to control telephone calls, the instructions causing each network device to route telephone calls in a

shared packet network. A standard Intel-based PC includes one or more
processors.

VOCAL implemented on a standard Intel-based PC
routes telephone calls in a peer-to-peer fashion over the shared packet network, and may send call log data to an SNMP-based system management platform.

peer-to-peer fashion over the shared
packet network, and to send call log

data to the system management
platform[;] []wherein the storage medium further stores processor-executable Instructions VOCAL implemented on a standard Intel-based PC may be configured to implement a SIP proxy server

to act as an SIP proxy server for devices using the telephone line
interface and for devices using the computer data interface.

for devices attached to the telephone line interface and the computer data interface.

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INVALIDITY CONTENTIONS FOR U.S. PATENT NO. 7,283,519
IDENTIFICATION AND DATE OF PRIOR ART:

All the products mentioned in the Meircom Session Initiation Protocol (SIP) Interoperability Testing Report 100801 (CISCO209587-90). These products, offered for sale and in public use no later than July 2001 include: Cisco 7960 v2.1 SIP Phone ; Cisco ATA-186 Telephony Adapter v2 . 0; Cisco AS5350 Universal Gateway v 1.2.22xa; CyberTel CyberCom Server Class v l.01; Difinium Mercury v . 09; dynamicsoft Session Management Suite ( SMS) v1 . 1; Indigo Software Indigo SIP proxy server v3.1; Indigo Software SIP user agent v2.5; Mediatrix APA III4FXO ; Mediatrix 11I-4FXS v2.2.1.1x ; Mockingbird Networks SIP Server v3.9; Mockingbird Networks Nuvostream MPS v3.3 . 2; NetCentrex Call Control Server (CCS) Softswitch v3.3.2; Nuera Orca GX-8 Media Gateway v7.1.12.0 and Softswitch Controller v7.1.17.0 ; Pingtel Corp. Xpressa SIP Phones vl.0.2; SS8 Networks SS8 Signaling Switch vl.2; Vovida . org Vovida Open Communications Applications Library (VOCAL ) v1.3.0;

See also VoIP Vendors Pass SIP Test, Network World, August 27, 2001 (CISCO209597-603).
See also Vovida Open Communications Applications Library (VOCAL), vl.3.0, offered for free download and in public use no later than July, 2001 . See also Luan Dang, Cullen Jennings, & David Kelly , Practical VoIP : Using VOCAL (O'Reilly Media) (2002) (CISCO016504-08; CISCO016512 - 37; CISCO016538 - 55; CISCO016556 - 63; CISCO016564 - 89; CISCO016590631; CISCO016632 - 45; CISCO016646-54).
BASIS OF INVALIDITY:

35 U.S.C. §§ 102, 103
It would have been obvious to one of ordinary skill in the art at the time of the alleged invention of the '519 patent to develop a distributed switch that accepted a telephone call from an analog telephone and routed the call through a packet-switched network using Session Initiation

Protocol (SIP).
In July 2001, Miercom conducted Session Initiation Protocol (SIP) Interoperability Testing of various SIP based products. See Meircom Session Initiation Protocol (SIP) Interoperability Testing Report 100801 (CISCO209587-90). Miercom's test configurations deployed at least all of the following network elements at the customer premise: SIP Phones, analog phones, PSTNto-SIP gateways, universal gateways, softswitches, SIP protocol stacks, session management suites, analog telephone adapters, and SIP proxy servers. See id at 2. Moreover, the test configurations included providing analog adapters to represent standard phones as SIP user agents to allow interoperability with the SIP network. See id at 2-3. Further, Vovida was providing a freely downloadable open source SIP protocol stack that was implemented on a standard Intel based PC running Linux. The PC could be configured to provide

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a plurality of communications interfaces including a broadband network interface, a telephone line interface , and a computer data interface . See Luan Dang, Cullen Jennings , & David Kelly, Practical VoIP: Using VOCAL (O'Reilly Media ) (2002) (CISC0016504-08; CISC0016512-37; CISCO016538-55; CISCO016556-63; CISCO016564-89; CISCO016590-631; CISCO01663245; CISCO016646-54).
The'519 patent Claims 9, 10 and 12 provide SIP functionality in the form of a SIP user agent and proxy server in a network device contained in a single physical enclosure. The Miercom testing configurations would suggest to a person of ordinary skill in the art deployment of the combination of various network elements at the customer premise. See Meircom Session Initiation Protocol (SIP) Interoperability Testing Report 100801 (CISCO209587-90) pg. 2. Further, the test configuration would suggest combining the functionality of the gateways with the various products serving as SIP user agents and proxy servers for the interoperability test. See id at 2-3. Moreover, it would have been obvious to one of ordinary skill in the art to modify the gateways used in the Miercom test by adding the SIP user agent and proxy server functionality using the freely downloadable SIP protocol stack from Vovida. The Vovida SIP protocol stack could be implemented on a machine that included a broadband interface, a telephone line interface and a computer data interface. Thus, all the network elements would be contained in a single physical enclosure. The Network World article and the Miercom Interoperability Testing Report both serve as motivation to combine the various functionalities. Accordingly, Claims 9, 10, and 12 are obvious to one of ordinary skill in the art in the view of the various gateways and SIP user agents

and proxy servers deployed in the Miercom test configuration.
SNMP is a well-known protocol defined by IETF RFC 1157 that is designed to monitor and manage network devices and gateways in an IP network. Vovida's VOCAL supports the SNMP protocol. See Luan Dang, Cullen Jennings, & David Kelly, Practical VoIP: Using VOCAL (O'Reilly Media) (2002) (CISCO016504-08; CISCO016512-37; CISCO016538-55; CISCO016556-63; CISCO016564-89; CISCO016590-631; CISCO016632-45; CISCO01664654). Thus, it would have been obvious to one of ordinary skill in the art to locate an SNMP manager in an IP network to collect call log data from a plurality of devices including a standard Intel based PC implementing the SIP protocol stack from Vovida. Thus, Claim 16 (written independently incorporating Claim 13) is obvious in view of commercially available SNMP system management platforms and the VoIP gateways disclosed in the Meircom test.

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