Free Declaration - District Court of Delaware - Delaware

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE RATES TECHNOLOGY INC., Plaintiff,

1
1
C.A. No. 07-441-JF

v.

PRTMUS TELECOMMUNICATIONS INC. and PRIMUS TELECOMMUNICATIONS GROUP INC. Defendants.

) ) ) ) ) ) ) )

DECLARATION OF ROBERT L. EPSTEIN I, Robert L. Epstein, hereby declare:
1.

I am a partner in Epstein Drangel Bazerman & James, LLP, a law firm

specializing in intellectual property matters, located at 60 East 42nd Street, Suite 820, New York, New York 10165. The matters stated below are true of my own knowledge, and if called as a witness, I could and would testify truthfully to the same. 2. opposition I make this declaration in support of Plaintiff Rates Technology Inc.'s to Defendant's Primus Telecommunications, Inc. and Primus

Telecommunications Group, Inc.'s Motion To Dismiss Or, In The Alternative, Stay Plaintiff Rates Technology Inc.'s Complaint. 3. I am a patent attorney registered to practice before the United States Patent

and Trademark Office (PTO) since 1973. I have over thirty years experience in preparing

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and prosecuting patent applications, and representing clients in related patent matters, before the PTO. 4. I am admitted in good standing to practice before the courts of the State of

New York, the United States District Courts for the Southern and Eastern Districts of New York, the Court of Appeals for the Second Circuit, the Court of Appeals for the Federal Circuit and the Supreme Court of the United States of America. 5. Over the last twenty two years, I have represented Rates Technology Inc.

(RTI) on a number of intellectual property matters including: (a) the original prosecution before the PTO of the applications upon which U.S. Patent Nos. 5,425,085 ('085) and U.S. Patent No. 5,579,769 ('769), the RTI patents involved in this lawsuit (collectively the "RTI patents") are based, leading to the allowance of each of the RTI patents; (b) the 1999 re-examination by the PTO of each of the RTI patents, leading to the confirmation of the validity of all of the claims of each of the RTI patents; and (c) the current reexamination by the PTO of the '085. As a result, I am familiar with both RTI patents involved in this case, the prosecution history of each RTI patent, the re-examination history of each RTI patent and the references considered by the PTO in conjunction with the original prosecution and the re-examinations of each of the RTI patents. 6. RTI's Complaint against Primus in this case alleges, in part, that Primus

directly andlor contributorily infringes the claims of '085 patent and the '769 patent. Only one of those patents, the '085 patent, is currently involved in a re-examination before the United Stats Patent and Trademark Office. The '769 patent is not currently under re-examination.

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7.

As is true with respect to all current re-examinations, all non-confidential

documents in the current re-examination of the claims of the '085 patent are accessible on the United States Patent and Trademark Office website and hence are of public record, available for review by anyone having a computer with an Internet connection. 8. In its motion, Primus argues that RTI's Complaint should be dismissed

because "RTI kept from Primus the fact that a request to re-examine the validity of the '085 claims had been filed in February 2006."

9.

Primus cites no authority, and I am not aware of any authority, that

requires a plaintiff to advise a defendant in a patent infringement suit that the claims asserted are the subject of a re-examination, or of the status of the re-examination, as such information is publicly available. 10. Primus cites no authority, and I am not aware of any authority, that

supports the proposition that the failure of a plaintiff to advise a defendant in a patent infringement suit about a re-examination is grounds for dismissal of the patent infringement lawsuit under Rule 12(b)(6) or otherwise. 11. Primus cites no authority, and I am not aware of any authority, that

supports the proposition that patent claims involved in a re-examination are considered to be are invalid or unenforceable until there has been a final decision that the claims are invalid or unenforceable. 12. Primus mischaracterizes the status of the current re-examination of the

claims of the '085 patent. A request for re-examination is not granted unless the PTO believes that the requestor has raised a prima facie new issue relating to patentability. Accordingly, most re-examinations involve at least the issuance of a first Office Action

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with a preliminary rejection of claims based upon the prior art patents or publications presented by the requester. However, the issuance of an Office Action with a preliminary rejection is by no means a determination that the rejected claims are invalid or unenforceable. 13. Once the first Office Action with a preliminary rejection is issued in a re-

examination, the patent owner has an opportunity to present arguments as to why the claims are not rendered unpatentable by the prior art cited by the requestor andlor, under certain circumstances, why the cited prior art is not applicable because of an earlier date of invention of the patented invention. 14.

In the present re-examination, there has been a first Office Action with a

preliminary rejection of claims 1-5, 7-16 and 18-26 of the '085 patent and a confirmation of the patentability of claims 6 and 17, see Exhibit K to the Dowd Declaration. 15. However, the Mr. Dowd fails to advise the Court that RTI has filed a

response to the preliminary rejection set forth in the first Office Action, a copy of which is presented herewith as Exhibit 1. A review of RTI's response, also publicly available on the United States Patent and Trademark website, shows that RTI has advanced significant arguments on the merits with regard to each reference cited by the Examiner as a basis for rejection of claims under 35 USC 102 of the Patent Law (anticipation) as well as the declarations of the inventors to demonstrate an earlier date of invention of the patented invention than the dates of the references cited as a basis of rejection of claims under 35 USC 103 of the Patent Law (obviousness).

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16.

RTI has good grounds to believe that the patentability of all of the claims

of the '085 patent will be confirmed by the United States Patent and Trademark Office in this re-examination, as they were in the 1999 re-examination of the '085 patent. 17. By statute, each claim of an issued patent is presumed valid and it is the

burden of one who asserts invalidity to establish invalidity. 35 USC 282 reads in pertinent part:
tj

282 Presumption of validity; defenses

A patent shall be presumed valid. Each claim of a patent whether independent, dependent, or multiple dependent form) shall be presumed valid independently of the validity of other claims; . . . The burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity. 18. I have also provided litigation support to RTI's counsel in a variety of Several of those

litigations involving the patents asserted in this lawsuit by RTI.

litigations involved VoIP telephone systems operated by various Internet telephone service providers. As a result of my work on these litigations, I have become familiar with the components of V o P telephone systems and the operation thereof. 19, I have been advised that Primus operates a V o P telephone service called

Lingo and supplies to subscribers of the Lingo V o P telephone service certain devices, called Analogy Telephone Adapters (ATA's), that are configured especially for use in the Lingo V o P telephone system. 20. Among other things, RTI's Complaint alleges that the Lingo VoIP system

directly infringes the claims of the '085 patent and the '769 patent and further that the

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Primus ATA's specifically configured for use with the Lingo V o P telephone system contributorily infnnge the claims of the'085 patent.

21.

ATA7s are devices that are connected between the telephone of the user

and the telephone system of the V o P service provider. Generally speaking, the function of an ATA is to receive analog signals from the calling telephone and to convert those signals into digital signals that are transferred to and used by the VoIP telephone system, which routes the call to its destination and maintains the connection between the calling telephone and the called telephone for the duration of the call. As part of that function, the ATA provides current to power the calling telephone. In order for the ATA to communication with the service provider's VoIP telephone system, a communications protocol understood by the ATA and by the VoIP telephone system is required. RTI believes that the Primus ATA's are made for use exclusively with the Lingo V o P telephone system because they utilize a communications protocol that is unique to the Lingo V o P telephone system. Because of that, Primus7 ATA's configured to use the Lingo communications protocol cannot be used with any other telephone system.

22.

Primus argues that RTI acted in bad faith by pursuing this lawsuit because

Primus told RTI that it does not infnnge the claims of the RTI patents. In that regard, Primus7 asserts that its ATA's themselves do not have many of the elements of the claims of the '085 patent and that the Lingo VoiP telephone system does not have a database that is automatically updated, a requirement of the claims of the '769 patent.

23.

No testimonial or documentary technical information has ever been

provided by Primus to RTI, or is now provided by Primus to this Court, to substantiate Primus' defense of non-infnngement. Clearly, just because a defendant in a patent

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infhngement suit says it does not infhnge (which virtually all defendants in patent infhngement lawsuits do) a plaintiff is not obligated to take their unsubstantiated word for it and refrain from pursuing its infringement claim. Likewise, a court should not take a defendant's unsubstantiated denial of a claim and on that basis dismiss a complaint in an infringement lawsuit. 24. Further, Primus' non-infringement defenses are totally without merit. Regarding contributory infringement of the claims of the '085 patent by the ATA's made by Primus for use with the Lingo VoiP telephone system, contributory infringement does not require that the product in question (here the Primus ATA) itself meet each element of the claims. Contributory infringement is defined by statute:
§ 271 Infringement of patent

(c) Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infhnging use, shall be liable as a contributory infringer. A finding of contributory infringement requires only that the infringer sell a component of an infringing system that is not suitable for substantial non-infhnging use. Accordingly, even if all of Primus' assertions about what its ATA's does not have are true, the sale of the Primus ATAs specifically configured for use in the Lingo V o P

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telephone system still contributorily infnnge the '085 patent claims if the Lingo VoIP system directly infringes the claims. 25. VoIP telephone systems rapidly make call routing decisions for each of

the many telephone calls they handle based upon a variety of cost related factors. That is accomplished by storing the cost related information in a database. When a call is dialed, the database is assessed to determine cost related information for possible routes for the call. The costs are then compared and a route for each call is selected.

In order for the system to route calls efficiently, it is necessary that the
database that stores the cost related information have current cost information stored in it. Accordingly, every VoIP system that RTI knows of automatically updates the database on a periodic basis because there is a great deal of cost related information that goes into routing the high volume of calls handled by the VoIP system and that cost information is changing constantly. 26. On that basis, RTI believes that it is virtually impossible that any VoIP

telephone system could operate in the real world without a system for automatically updating the cost related information in its routing databases on a period basis. 27.

In view of the above, Primus' allegations that RTI has acted in bad faith in

pursuing its infringement claims because Primus has asserted wholly unsupported (and in fact, unbelievable) defenses of non-infringement is totally without merit.

I declare under penalty of perjury under the laws of the United States of America

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and the State of Delaware that the foregoing is true and correct.

Executed this 27th day of September 2007, at New York City, New York.

obert L. Epstein

Z:\Rates Technology\1690-025WTO PapersUleclaration of Robert L. Epstein.doc

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PTOlSB12l (04-07) Approved for use through 09/30/2007. OM0 0651-0031 U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE

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Joseph R. Pokrzywe

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ENCLOSURES

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This collection of information is required by 37 CFR 1.5. The information is required to obtain or retain a benefit by the public which is to flle (and by the USPTO to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 andl.14. This collection is estlrnated to 2 hours to complete, including gathering, preparing, and submining the completed application form to the USPTO. Time will vary depending upon the individual case. Any comments on the amount of time you require to complete this form andlor suggestions for reducing this burden, should be sent to the Chief lnformation Officer, U.S. Patent and Trademark Office. U.S. Department of Commerce. P.O. Box 1450. Alexandria, VA 22313-1450. DO NOT SEND FEES O COMPLETED FORMS TO THIS R ADDRESS. SEND TO: Comrnlssioner for Patents, P.O. Box 1460, Alexandria, VA 22313-1450.

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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - -X In re Reexamination of U.S. Patent No. 5,425,085
Inventor: Gerald J. Weinberger et al. Title: LEAST COST ROUTING DEVICE FOR SEPARATE CONNECTION INTO PHONE LINE Reexamination Control No.: 90/007,939 July 26,2007 New York, New York 10 165

Reexamination Examiner : Joseph R. Pokrzywa

........................................
1690-110 Attn: Mail Stop Ex Parte Reexam Control Reexamination Unit Commissioner for Patents P.O. Box 1450 Alexandria, Virginia 22313-1450 SUPPLEMENTAL RESPONSE

Art Unit:

3992

X

This communication is supplemental to the response filed June 22, 2007 which was in response to the Ex Parte Reexamination Communication mailed May 21,2007.

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STATUS OF THE CLAIMS

1. (pending) A device for routing telephone calls along a least cost route originating

from a first telephone to a second telephone having an associated telephone number via a network having a plurality of alternate communication switch paths corresponding to different carriers which can be chosen to route the call and normally providing a current to said first telephone when said first telephone is in use, comprising

a housing forming an enclosure and comprising first jack means for connection to said first telephone and second jack means for connection to said network

switch means operatively connected to said first jack means for disconnecting said first telephone from said network,

means operatively connected to said switch means for generating a current through said switch means to the first telephone, corresponding to a current provided by said network,

database means for storing billing rate parameters for determining a least cost communication path for call corresponding to said telephone number,

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means operatively connected to said switch means for detecting and storing said telephone number originating from the first telephone

means for addressing said database means for identifying a plurality of communication switch paths to said second telephone and the cost rate of each path,

means for comparing the cost rate of each path so as to determine a least cost route, and

means operatively connected to said switch means and said second jack means for generating a number sequence corresponding to a desired carrier so that said call is routed through said second jack means to the selected communication path and carrier to establish a switched connection between said first telephone and said second telephone phone.

2. (pending) The device according to claim 1 wherein said least cost
communication path parameters include the time and date of the call.

3. (pending) The device according to claim 1 wherein said switch means connects
said first telephone to said network during an incoming call.

4. (pending) The device according to claim 1 including an internal power supply

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connected to said means for generating a current.

5. (pending) The device according to claim 1 wherein said means for generating
said number sequence comprises a dual tone multifrequency generator.

6. (pending) The device according to claim 1 wherein said housing is substantially
cylindrical with opposing ends, wherein said first jack means is positioned on one end and said second jack means is positioned on the opposite end.

7. (pending) The device according to claim 1 wherein said detecting means includes a dual tone multifrequency detector.

8. (pending) The device according to claim 1 including means for maintaining the
time and date so as to determine the least cost route based on the time and date of the call.

9. (pending) The device according to claim I wherein said cost may be given a
bias for preference to a given carrier.

10. (pending) The device according to claim 1 including means for updating said database means with a current billing rate schedule.

11. (pending) The device according to claim 10 wherein said update means

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includes a circuit board mounted inside said enclosure, and said database means comprises a removable chip on said circuit board, and means for accessing said removable chip from outside said housing.

12. (pending) The device according to claim 1 1 wherein said means for accessing said removable chip includes a removable cover on said housing for accessing said chip.

13. (pending) The device according to claim 10 wherein said update means includes a modem for receiving signals through said telephone line and downloading the update information.

14. (pending) A device for routing telephone calls along a least cost route originating from a first telephone to a second telephone having an associated telephone number via a network having a plurality of alternate communication switch paths corresponding to different carriers which can be chosen to route the call and normally providing a current to said first telephone when said first telephone is in use, comprising

a housing forming an enclosure and comprising first jack means for connection to said first telephone, and second jack means for connection to said network,

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means positioned on said housing for visibly displaying the time and date,

switch means operatively connected to said first jack means for disconnecting said first telephone from said network,

means operatively connected to said switch means for generating a current through said switch means to said first telephone corresponding to said current provided by said network,

means operatively connected to said time and date display means and said switch means for receiving a predetermined dial sequence from said first telephone corresponding to a predetermined date and time to be displayed and

means for changing the displayed time and date based on the received signals,

database means for storing billing rate parameters for determining a least cost communication path for a call corresponding to said telephone number, based on such factors as the time and date of the call,

means operatively connected to said switch means for detecting and storing said telephone number originating from the first telephone,

means for addressing said database means for identifying a plurality of

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communication switch paths to said second telephone and the cost rate of each path7

means for comparing the cost rate of each path so as to determine a least cost route, and means operatively connected to said switch means and said second jack means for generating a number sequence corresponding to a desired carrier so that said call is routed through said second jack means to the selected communication path and carrier to establish a switched connection between said first telephone and said second telephone.

15. (pending) The device according to claim 14 including means positioned on
said housing for manually changing the date and time of the display.

16. (pending) The device according to claim 14 wherein said means for
generating said number sequence comprises a dual tone multifrequency generator.

17. (pending) The device according to claim 14 wherein said housing is substantially cylindrical with opposing ends, wherein said first jack means is positioned on one end and second jack means is positioned on the other end.

18. (pending) The device according to claim 14 wherein said detecting means
includes a dual tone multifrequency detector.

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19. (pending) The device according to claim 14 including means for updating said
database means with a current billing rate schedule.

20. (pending) The device according to claim 19 wherein said update means
includes a circuit board mounted inside said enclosure, and said database means comprises a removable chip on said circuit board, and means for accessing said removable chip from outside said housing.

21. (pending) The device according to claim 20 wherein said means for accessing said removable chip includes a removable cover on said housing for accessing said chip.

22. (pending) The device according to claim 19 wherein said update means includes a modem for receiving signals through said telephone line and downloading the update information.

23. (pending) The device according to claim 14 wherein said cost may be given a bias for preference to a given carrier.

24. (pending) An apparatus for displaying a time quantity which can be initiated

from a telephone of the type capable of generating dual tone multifrequency signals comprising

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a housing forming an enclosure and comprising first jack means for interconnection to said telephone, and second jack means for connection to a telephone switching network, said network normally providing a current to said telephone when said telephone is in use,

means positioned on said housing for visibly displaying a time quantity,

switch means operatively connected to said first jack means for disconnecting said telephone from said network,

means operatively connected to said switch means for generating a current through said switch means to said telephone corresponding to said current provided by said network,

means operatively connected to said means for displaying a time quantity and said first jack means for receiving said dual tone multifrequency signals, from said telephone when said telephone is disconnected from said network, said signals corresponding to said time quantity and for changing the displayed time quantity based on signals from said telephone,

and means responsive to a dialing sequence originating on said telephone and operatively connected to said switch means for connecting said telephone to said network.

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25, (pending) The apparatus according to claim 24 wherein said time quantity is

the time of day.

26. (pending) The apparatus according to claim 24 wherein said time quantity is the date.

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AMENDMENTS TO THE CLAIMS (Marked-up Version)
27 (new) A device for routing telephone calls along a least cost route originating

from a first telephone to a second telephone having an associated telephone number via a network having a plurality of alternate communication switch paths corresponding to different carriers which can be chosen to route the call and normally providing a current to said first telephone when said first telephone is in use, comprising

a housing forming an enclosure and comprising first jack means for connection to said first telephone and second jack means for connection to said network,

switch means operatively connected to said first jack means for disconnecting said first telephone from said network during routing; of a telephone call from said first telephone,

means operatively connected to said switch means for generating a current through said switch means to the first telephone, corresponding to a current provided by said network, when said first telephone is disconnected from said network by said switch means,

database means for storing billing rate parameters for determining a least cost communication path for call corresponding to said telephone number,

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means operatively connected to said switch means for detecting and storing said telephone number originating from the first telephone,

means for addressing said database means for identifying a plurality of communication switch paths to said second telephone and the cost rate of each

means for comparing the cost rate of each path so as to determine a least cost route, and

means operatively connected to said switch means and said second jack means for generating a number sequence corresponding to a desired carrier so that said call is routed through said second jack means to the selected communication path and carrier to establish a switched connection between said first telephone and said second telephone phone.

28. (new) A device for routing teIephone calls along a least cost route originating
from a first telephone to a second telephone having an associated telephone number via a network having a plurality of alternate communication switch paths corresponding to different carriers which can be chosen to route the call and normally providing a current to said first telephone when said first telephone is in use, comprising

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a housing forming an enclosure and comprising first jack means for connection to said first teIephone, and second jack means for connection to said network, means positioned on said housing for visibly displaying the time and date,

switch means operatively connected to said first jack means for disconnecting said first telephone from said network during routing of a telephone call from said first telephone,

means operatively connected to said switch means for generating a current through said switch means to said first teIephone corresponding to said current provided by said network, when said first telephone is disconnected from said network by said switch means,

means operatively connected to said time and date display means and said switch means for receiving a predetermined dial sequence from said first telephone corresponding to a predetermined date and time to be displayed,

means for changing the displayed time and date based on the received signals,

database means for storing billing rate parameters for determining a least cost communication path for a call corresponding to said telephone number, based on

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such factors as the time and date of the call,

means operatively connected to said switch means for detecting and storing said telephone number originating from the first telephone,

means for addressing said database means for identifying a plurality of communication switch paths to said second telephone and the cost rate of each path,

means for comparing the cost rate of each path so as to determine a least cost route, and means operatively connected to said switch means and said second jack means for generating a number sequence corresponding to a desired carrier so that said call is routed through said second jack means to the selected communication path and carrier to establish a switched connection between said first telephone and said second telephone.

29. (new) An apparatus for displaying a time quantity which can be initiated fiom
a telephone of the type capable of generating dual tone multifiequency signals comprising

a housing forming an enclosure and comprising first jack means for interconnection to said telephone, and second jack means for connection to a telephone switching network, said network normally providing a current to said

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telephone when said telephone is in use, means positioned on said housing for visibly displaying a time quantity,

switch means operatively connected to said first jack means for disconnecting said telephone from said network,

means operatively connected to said switch means for generating a current through said switch means to said telephone corresponding to said current provided by said network, when said telephone is disconnected from said network by said switch means,

means operatively connected to said means for displaying a time quantity and said first jack means for receiving said dual tone multifrequency signals, from said telephone when said telephone is disconnected from said network, said signals corresponding to said time quantity and for changing the displayed time quantity based on signals from said telephone, and means responsive to a dialing sequence originating on said telephone and operativeIy connected to said switch means for connecting said telephone to said network.

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AMENDMENTS TO THE CLAIMS (Clean Version)

27 (new) A device for routing telephone calls along a least cost route originating from a first teIephone to a second telephone having an associated telephone number via a network having a pluraliw of alternate communication switch paths corresponding to different carriers which can be chosen to route the call and normallv providing a current to said first telephone when said first telephone is in use, comprising

a housing forming an enclosure and comprising first jack means for connection to said first telephone and second iack means for connection to said network,

switch means operativelv connected to said first jack means for disconnecting said first telewhone from said network during routing of a telephone call from said first telephone,

means operatively connected to said switch means for generating a current through said switch means to the first telephone. corresponding to a current provided by said network, when said first telephone is disconnected from said network by said switch means,

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database means for storing billing rate parameters for determining a least cost communication path for call corresponding to said telephone number,

means operativeIy connected to said switch means for detecting and storing said telephone number originating from the first telephone,

means for addressing said database means for identifying a pluralitv of communication switch paths to said second telephone and the cost rate of each
path,

means for comparing the cost rate of each path so as to determine a least cost route, and

means operatively connected to said switch means and said second jack means for generating a number sequence corresponding to a desired carrier so that said call is routed through said second iack means to the selected communication path and carrier to establish a switched connection between said first telephone and said second telephone phone.

28. (new) A device for routing telephone calls along a least cost route originating
from a first telephone to a second telephone having an associated telephone number via a network having a pluralitv of alternate communication switch paths corresponding to different carriers which can be chosen to route the call and

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normallv providing a current to said first telephone when said first telephone is in use. comprising

a housing forming an enclosure and comurisin~ jack means for connection to first said first telephone, and second -iack means for connection to said network, means positioned on said housing for visibly displaying the time and date,

switch means operatively connected to said first iack means for disconnecting said first telephone from said network during routing of a telephone call from said first telephone,

means operativelv connected to said switch means for generating a current through said switch means to said first telephone correspondinn to said current provided by said network, when said first telephone is disconnected from said network by said switch means,

means overatively connected to said time and date display means and said switch means for receiving a predetermined dial seauence from said first telephone corres~onding a predetermined date and time to be displayed, to

time and date based on the received signals, means for changing the dis~layed

database means for storing billing rate parameters for determining a least cost

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communication path for a call corresponding to said telephone number. based on such factors as the time and date of the call,

means operatively connected to said switch means for detecting; and storing said telephone number originating from the first telephone,

means for addressing said database means for identifving a plurality of communication switch paths to said second telephone and the cost rate of each
path.

means for comparing the cost rate of each path so as to determine a least cost route, and means operatively connected to said switch means and said second iack means for generating a number seauence corresponding to a desired carrier so that said calI is routed through said second jack means to the selected communication path and carrier to establish a switched connection between said first telephone and said second telephone.

29. (new) An apparatus for displaying: a time auantity which can be initiated from a telephone of the type capable of generating dual tone multifrequency signals com~risinq

a housing forming; an enclosure and comprising; first jack means for interconnection to said telephone. and second iack means for connection to a

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telephone switching network, said network normally providing a current to said telephone when said telephone is in use, means positioned on said housing for visibly displaying a time quantity,

switch means owerativelv connected to said first jack means for disconnecting said telephone from said network,

means operatively connected to said switch means for generating a current through said switch means to said telephone corresponding to said current provided bv said network, when said telephone is disconnected from said network by said switch means,

means operatively connected to said means for displaying a time quantity and said first iack means for receiving said dual tone multifrequencv signals, from said telephone when said telephone is disconnected from said network. said signals correspondinn to said time suantitv and for chan~inn displayed time quantity the based on simals from said telephone, and means responsive to a dialinn sequence originating on said telephone and operatively connected to said switch means for connecting said telephone to said network.

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REMARKS
The patented invention relates to a device for routing telephone calls along a least cost route between a first telephone, where the call originates by the caller dialing the digits of the telephone number of the called telephone, and a second telephone where the call is received. The routing takes place through a network. The network includes a plurality of alternate communication paths along which the call can be routed. Those communication paths, in the context of the public switched telephone network as it existed at the time the invention was made, included hundreds of local and long-distance telephone service carriers in the United States alone. AT&T, MCI and Sprint are probably the most well known of the hundreds of competing carriers. Those carriers offer different rates for telephone calls depending, for example, on the time of day, the day of week, and the destination. Other factors may also influence the cost of calls.
A caller can choose which company he or she wants to carry the call by dialing a

prefix or access code (such as 10-288 for AT&T or 10-624 for MCI) before dialing the destination telephone number. However, because the rates change so often, and because there are so many carriers, it is difficult for the caller to determine which carrier is offering the best rates for the call that the caller wishes to make. In addition, the pubIic utility commissions of the various states, and the federal government, set tariffs on caIl rates. Moreover, the tariffs and call rates change frequently.

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With so many factors influencing the cost of calls, the patented device is of great benefit because it includes a database of the current call rates and a means for automatically determining which carrier offers the best rate for a particular call. The telephone network comprises a group of telephones (located in residences or businesses, for example) connected to a central office where the connections between calling telephone and called telephones are made. Each telephone is connected to a central office by a pair of wires known as the "local loop". One wire of the local loop is called the "tip", and the other wire of the pair is called the "ring". The central office contains the switching equipment that connects calls from one caller to another. The central office also contains a power source that powers the network, signaling equipment, and other equipment for supervising the progress of calls. Each central office is connected to other central offices and to the switching facilities of intermediate and long-distance networks. A telephone has two basic states. In the idle state, the receiver (also known as the handset) is resting in the cradle ("switchhook") of the telephone. This state is known as the "on-hook" state. Although the circuit between the central office and the transmission and signaling circuitry of the telephone is open in the on-hook state, the central office is always electrically connected to the telephone's ringer circuitry. Lifting the handset off the cradle activates the telephone by completing the circuit between the telephone and the central office, allowing current provided by the central office to flow through the local loop. This active state is known as "off-hook" state. The current provided by the central office to the telephone has two components: a DC

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(constant) current for powering the telephone, and an AC current for signaling and transmission. The central office senses that current is flowing through the local loop and thus knows that the telephone is in operation. The central office then sends a dial tone to the telephone to let the caller know that the central office is ready to accept a telephone number (the "address"). The caller then dials the number, and the central office switch attempts to connect the caller to the called telephone. If the called telephone is in use (already off-hook), the central office returns a busy signal to the originating telephone. Otherwise, the central office returns a ringing signal. (Dial tones, busy signals, rings, and like signals are known as "call-progress" signals.) When the user of the called telephone picks up the handset, a communication link is established. When either telephone is hung up (returned to the on-hook condition), the local telephone company switch associated with that telephone senses the transition and initiates action that returns both telephone lines to their idle states. Thus, telephones have two functions: signaling and transmission. Signaling is further divided into "supervision" and "addressing." Supervision signals are those that let the central office know the state of the telephone and enable the telephone to seize a line for making a call (i-e., to connect into the central office switching equipment). Addressing signals are those for providing the telephone number of the destination telephone to the network. Older rotary telephone signal an address by means of pulse dialing, which interrupts the steady DC current in the local loop. Modem touch tone telephones signal by means of a combination of audio tones known as "DTMF" (dual tone multifiequency). The transmission function is simply the sending of speech or data

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over the network. Thus, the purpose of a telephone is to get the attention of the network and to send address information so that the central office can establish the communication path to the called telephone (which is achieved through signaling), enabling a conversation or data exchange (transmission). The patented invention is a device that is designed to be interposed between the originating telephone and the network. It intercepts the digits dialed by the

originating telephone, ascertains the cost of the possible routes for the call based on the dialed digits, compares the cost to select a route, provides the necessary access code to the dialed digits to tell the central office how to route the call (which carrier to select) and then sends to the access code and dialed digits to the network. The device accomplishes those tasks through the use route selection circuits which detect and store the digits as they are dialed, address a memory having billing information for possible routes based on the dialed digits to obtain the cost of each route through which the dialed call can be sent, compare the costs to select a route, and provide the appropriate access code for insertion into the dialed number to reflect the chosen route. However, during the time that the route selection is taking place, it is necessary to prevent the digits that are dialed at the originating telephone from being sent to the network central office. In other words, the signaling function of the originating telephone is disabled during the period of time that route selection is taking place in the patented device. That function is performed by "switch means" and a current generator which is connected to that switch means. Those elements are required in all of the claims in the patent under reexamination.

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The "switch means" consists of one or more switches for controlling a circuit so that one state or position permits signaling between the originating telephone and the network and a second state or position disables signaling between the originating telephone and the network. In other words, the switch means is a mechanism for

isolating the telephone addressing signals (i.e., the number dialed) from the telephone network. The embodiment of the switch means element in the specification includes the "2 Form C" switch arrangement shown in Fig. 2 (block 36) of the patent. A "2 Form C" switch is also known in electrical engineering as a "double-pole, double-throw" switch. There are many configurations of switches--whether Form A, B, or C switches, shunting mechanisms, relays, or other mechanical or solid state devices--that could be easily substituted for the 2 Form C switch to accomplish the same function (disconnecting the originating telephone form the network), to get the same result (isolation of the originating telephone from the network during the period when the call is being routed). The means connected to the switch means for generating a current through the switch means, corresponding to a current provided by the network, is local circuitry or equivalents that, when put in connection with the originating telephone by operation of the switch means, provides power to excite or operate the telephone that substitutes for the power that would otherwise be provided by the network. One embodiment of this means for generating a current is disclosed in the specification as the "local CO current source 38" at col. 3, lines 54-56, and in Fig. 2, block 38. According to Fig. 2, this circuitry draws power from the telephone network and converts it to a current capable of energizing the telephone. There are many

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configurations of circuitry that would be capable of performing this current generating function. Such circuitry could include current regulators, voltage regulators, voltage regulators configured as current regulators, and any other circuitry capable of providing power to energize the originating telephone. Aside form the above, it should be noted that the circuit for detecting and storing the dialed number is required by the claims to be connected to the switch means. That circuitry detects the tones associated with the telephone number entered by the caller (the user of the originating telephone) and places data corresponding to that dialed telephone number into memory or a storage device. Such circuitry could include, but is not limited to, the DTMF tone detector described in the specification (Fig. 2, block 88; col. 2, lines 24-27). There are a variety of common and readily available integrated circuits with DTMF detection capabilities that typically include registers or other circuitry capable of storing one or more digits of the telephone. Further, the claims require a means for generating a number sequence (such as the access code) corresponding to a desired canier to route the call. That means is required to be connected to the switch means and to the jack (second jack means) that connects the device to the network. In the patent, that means is disclosed as a signal generator (such as a DTMF tone generator or equivalent circuitry), which, among other functions, generates the tone signals corresponding to the numerical prefix of the selected carrier. Those tone signals are then sent through the second jack means (i.e., the connection between the device and the network) out to the network and the telephone company's central office, which recognizes the signals as the destination for the call and makes the appropriate

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connections through the central office switches to allow for communication between the first and second telephones. Thus, all of the claims of the patent require:

"switch means operatively connected to said first jack means for disconnecting said first telephone from said network, '' and

"means operatively connected to said switch means for generating a current through said switch means to the first telephone, corresponding to a current provided by said network,".

In addition, claims 1 through 23 each require:

"means operatively connected to said switch means for detecting and storing said telephone number originating from the first telephone" and

"means operatively connected to said switch means and said second jack means for generating a number sequence corresponding to a desired carrier so that said call is routed through said second jack means to the selected communication path and carrier to establish a switched connection between said first telephone and said second telephone phone."

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Further, the patented call routing device requires: (a) a database that stores billing rate parameters for determining a least cost route; (b) a circuit for addressing the database based on the dialed digits stored by the detecting and storing means to identify a plurality of routes and the cost rate for each of those routes; and (c) a circuit for comparing the cost rate of each route so as to determine a least cost route. In order to anticipate any of the patent claims I - 23, a reference must include both: (a) the "switch means" that operates and is connected as specified in the claims; and (b) the routing circuitry (database means, addressing means and cost rate comparison means) as set forth in the claims. Neither the Vodavi, Isoetec, STC '595 nor the Jabs et al. references teaches both of those aspects of the patented invention. Regarding claims 24 - 26, Isoetec does not teach the "switch means" or current generating means connected to the switch means for generating current through the switch means, and hence does not anticipate claims 24 - 26.

Claims 1-5, 7- 10 and 13 have been rejected under 35 USC 102(b) as anticipated Vodavi (Starplus SPX Telephone System Manual). Vodavi does not anticipate claim I of the patent, or claims 2-5, 7-10 and 13 dependant thereon, because it does not teach the "switch means." Those claims require: (a) switch means for disconnecting the telephone from the network; (b) means connected to the switch means for generating a current through the switch means to the telephone; (c) means connected to the switch means for detecting and storing the telephone member; and (d) means connected to the switch means for generating the number sequence corresponding to the desired carrier.

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With regard to the "switch means", the Examiner points to pages 100-1, 400-5 though 400-1 1 and 500-16 of Vodavi. Clearly, the Vodavi system (as does any telephone system) includes many switches (for example, the Normal/Service switch referred to in those pages) that provide a variety of functions. However, none of the switches disclosed in the Vodavi reference are comparable to the claimed "switch means" nor are they connected to other components in the system in the claimed manner. Further, the Examiner has not pointed out a single switch or combination of switches disclosed in Vodavi that could be considered to meet the claim limitations directed to the switch means or the claim limitations reciting the manner in which the switch means is connected. The only switch that is specifically disclosed in the pages noted by the Examiner is part of the Power Failure Transfer Circuit which is shown in the schematic of Figure 500.7 on page 500-16. The function of the Power Failure Transfer Circuit is described on page 500-12. That circuit normally connects the telephones to the Vodavi system and not to the trunks of the network. In the event of a power failure, the switch in the circuit changes state and connects the telephones directly to the trunks of the network, thereby bypassing the (then powerless) Vodavi system so the telephones are powered by the network and can be used in an emergency. The switch in the Vodavi Power Failure Transfer Circuit is not at all comparable to the claimed "switch means" because it simply functions as an emergency bypass. It does not act to disable the signaling function of the telephone during route selection by

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disconnecting the telephone from the network. It operates to connect the telephones to the network in the event of a power failure. The current generator of the Vodavi system is not connected to the Power Failure Transfer Circuit switch so as to power the telephones and disable the signaling function during route selection. Nor is current provided to the telephones through the Power Failure Transfer Circuit switch. The dialed telephone number detecting and storing means of the Vodavi system is not connected to the Power Failure Transfer Circuit switch. The number sequence generator of the system is not connected to the Power Failure Transfer Circuit switch. Moreover, the Vodavi system does not include the routing circuitry required by claim 1 of the patent. The Vodavi system includes an automatic route selection feature that selects a trunk group for a calI based upon a pre-determined preference hierarchy that is stored in a memory. For example, a call placed to Boston from a Vodavi system located in New York could be routed along one of a number of different groups of trunk lines, for example, Trunk Group A, Trunk Group B or Trunk Group C. The memory contains a list including each of the truck groups and the trunk group's ranking in the hierarchy, according to desirability. For example: Trunk Group A (least economical) ranked third; Trunk Group B (most economical) ranked first; Trunk Group C (second most economical) ranked second. In response to the call dialed to Boston, the memory is addressed to determine, for the particular time of day and day of week, the first ranked trunk group (Trunk Group B). The system then determines if any of the lines of Trunk Group B is available to send the

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call. If so, Trunk Group B is selected and the call is routed to Boston using one of the lines of that that trunk group. If none of the lines of Trunk Group B are available, for example, due to high traffic at that time, the next ranked trunk group (Trunk Group C) is selected and if a line in that group is available, it will be used to route the call. Each trunk group is thus selected in turn in accordance with its pre-determined ranking in the stored hierarchy. In the patented invention, the database memory does not contain a pre-determined route preference hierarchy. Instead, it contains the actual biIling parameters associated with each possible route. Subsequent to the detection of the dialed number, the database is accessed and the cost rate of the call for each possible route is obtained based upon the stored billing parameters. The cost for sending the call via each route is downloaded from the database to a circuit which compares the cost rate for each route and selects a route on that basis. Thus, in the patented invention, billing parameters for the possible routes and not pre-determined route preference rankings are stored in the database. The preferred route is selected through a cost comparison that takes place only after the number is dialed, not on the basis of a pre-determined route preference hierarchy. The Vodavi system route selection is described in the last paragraph of the first column of pages 300-5 which confirms that, from within the route Iist entry seIected, the first choice trunk group is searched for an availabIe trunk line. If none are available, the other trunk groups in the route list (if allowed) are searched. Trunks are accessed based on the pre-determined order programmed in the memory, not based upon a cost comparison made during route selection.

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Page 200-8 of Vodavi describes in more detail the criteria used in the software to select routes. It should be noted that cost, that is, the amount of money associated with each route, is not one of the criteria listed and thus no comparison of the costs for the possible routes is made. Based upon the above, it is clear that Vodavi does not anticipate claims 1-5, 7-10 and 13 of the patent. Claims 1-5, 7-10, 13-16, 18, 19, 20-26 are rejected under 35 USC 102(b) as being anticipated by Isoetec. However, Isoetec also lacks the "switch means" required by independent cIaims 1, 14 and 24, and thus claims 2-5, 7-10, 13, 15-16, 18, 20-23, 25, 26 dependent thereon. Regarding the "switch means" as recited in claims 1 and 14, the Examiner refers to pages 1.5 to 1-15, 3.6-3.9 on pages 3.20-3.23, page 4.131 and 4.146 of the Isoetec reference. Pages 1.5 to 1.15 relate to the port cards that make up the Isoetec system. Those port cards probably contain various conventional switches. However, there is no teaching that any are comparable to the "switch means" recited in the patent claims. Sections 3.6-3.9 on pages 3.20-3.23 do not disclose any switch comparable to the claimed "switch means" either. Section 3.6 relates to an off premise extension interface (OPXI) to which a telephone can be connected. The OPXI, according to Section 3.7, can be used to connect that telephone to a trunk for use in a power failure. This is similar to the above mentioned Power Failure Transfer Circuit of Vodavi and does not meet the claim requirement for "switch means" for exactly the same reasons as Vodavi. Specifically, the Isoetec Power Failure Transfer circuit is not comparable to the claimed "switch means" because it simply functions as an emergency bypass. It does not

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include a switch that disables the signaling function of the telephone during route selection by disconnecting the telephone from the network. The current generator of the Isoetec system is not connected to a switch in the Power Failure Transfer circuit. Nor is current provided to the telephone from the Isoetec system through a switch in the Power Failure Transfer circuit. The diaIed telephone number detecting and storing means of the Isoetec system is not connected to a switch in the Power Failure Transfer circuit. The number sequence generator of the Isoetec system is not connected to a switch in the Power Failure Transfer circuit. Section 3.8 relates to the relay and sensor interface. Section 3.9 relates to the digital data interface. Neither of those interfaces includes the claimed "switch means." Page 4.13 1 relates to the release key. That key is used instead of the switch-hook on a telephone station to answer and disconnect calls. It is not connected between the telephone and the network. It does not function to disable the signaling function during route selection by disconnecting the telephone from the network. The current generator of the Isoetec system is not connected through that switch to the telephone. Page 4.146 relates to the split key which allows the user to place and receive multiple calls at the same time. It in no way relates to the claimed "switch means." Regarding claim 24, the Examiner refers to page 1.8 and page 2.4 of the Isoetec reference with respe