Case 3:21-cv-09773-JD Document 25-9 Filed 02/11/22 Page 1 of 32
`Case 3:21-cv-09773-JD Document 25-9 Filed 02/11/22 Page 1 of 32
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`EXHIBIT 8
`EXHIBIT 8
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`Case 5:20-cv-02397-LHK Document 52 Filed 12/28/20 Page 1 of 31Case 3:21-cv-09773-JD Document 25-9 Filed 02/11/22 Page 2 of 32
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`Lewis E. Hudnell, III (CASBN 218736)
`Nicolas S. Gikkas (CASBN 189452)
`HUDNELL LAW GROUP P.C.
`800 W. El Camino Real Suite 180
`Mountain View, California 94040
`Telephone: 650.564.7720
`Facsimile: 347.772.3034
`lewis@hudnelllaw.com
`nick@gikkaslaw.com
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`Attorneys for Defendant VoIP-Pal.com, Inc.
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`UNITED STATES DISTRICT COURT
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`FOR THE NORTHERN DISTRICT OF CALIFORNIA
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`TWITTER, INC., a Delaware corporation,
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`Case No. 5:20-cv-02397-LHK
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`ANSWER TO FIRST AMENDED
`COMPLAINT FOR DECLARATORY
`JUDGMENT
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`DEMAND FOR JURY TRIAL
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`Plaintiff,
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`v.
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`VOIP-PAL.COM, INC., a Nevada
`corporation,
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`Defendant.
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`ANSWER TO FIRST AMENDED COMPLAINT FOR DECLARATORY JUDGMENT
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` Defendant VoIP-Pal.com, Inc. (“VoIP-Pal”) submits this Answer to the allegations in the
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`numbered paragraphs in Plaintiff Twitter, Inc.’s (“Twitter’s”) First Amended Complaint for
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`Declaratory Judgment, Dkt. No. 29 (“FAC”). Unless expressly admitted, all of the averments made
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`by Twitter in its FAC should be deemed denied by VoIP-Pal.
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`I. INTRODUCTION
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`1. VoIP-Pal admits that this action concerns U.S. Patent No. 10,218,606 (the “’606 patent” or
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`the “patent-in-suit”), entitled “Producing Routing Messages For Voice Over IP Communications.”
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`VoIP-Pal admits that Twitter seeks a declaration that it does not infringe the patent-in-suit and that
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`the patent-in-suit is invalid. VoIP-Pal denies any and all remaining allegations and/or legal
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`conclusions contained in Paragraph 1 of the FAC.
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`2. VoIP-Pal admits the factual allegations in Paragraph 2 of the FAC.
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`3. VoIP-Pal admits that from April 2-7, 2020, VoIP-Pal filed lawsuits in the Western District of
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`Texas asserting claims of infringement of the ’606 patent against Facebook, WhatsApp, Google,
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`Amazon, and Apple. VoIP-Pal denies any and all remaining allegations and/or legal conclusions
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`contained in Paragraph 3 of the FAC.
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`4. VoIP-Pal admits that it issued a press release on April 8, 2020. VoIP-Pal also admits that the
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`Court of Appeals for the Federal Circuit affirmed this Court’s judgment that two of VoIP-Pal’s
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`previously asserted patents were invalid under 35 U.S.C. § 101. VoIP-Pal denies the remaining
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`allegations in Paragraph 4.
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`5. VoIP-Pal admits the factual allegations in Paragraph 5 and that Twitter refers to VoIP-Pal’s
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`lawsuits in the Western District of Texas against Facebook, WhatsApp, Google, Amazon, Apple,
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`AT&T, and Verizon Wireless as “the Texas lawsuits.”
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`ANSWER TO FIRST AMENDED COMPLAINT FOR DECLARATORY JUDGMENT
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`6. VoIP-Pal admits that the Federal Circuit affirmed this Court’s judgment of invalidity of two
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`patents VoIP-Pal has previously asserted against Twitter. The remaining allegations in Paragraph 6
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`are legal conclusions and argument to which no response is required. To the extent a response may be
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`required, VoIP-Pal denies the remaining allegations in Paragraph 6.
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`7. VoIP-Pal is without sufficient information to admit or deny the allegations in Paragraph 7,
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`and therefore denies them.
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`8. The allegations in Paragraph 8 of the FAC are legal conclusion and argument, and no
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`response is required. To the extent Paragraph 8 requires a response, VoIP-Pal denies all allegations in
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`Paragraph 8.
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`II. PARTIES
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`9. VoIP-Pal admits that Twitter purports to be a company incorporated under the laws of
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`Delaware, with headquarters at 1355 Market Street, Suite 900, San Francisco, California.
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`10. VoIP-Pal is without sufficient information to admit or deny the allegations in Paragraph 10,
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`and therefore denies them.
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`11. VoIP-Pal admits that it is a company incorporated and registered under the laws of Nevada
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`with its principal place of business at 10900 NE 4th Street, Suite 2300, Bellevue, Washington 98004.
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`12. VoIP-Pal admits that it owns the ’606 patent.
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`III. JURISDICTION AND VENUE
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`13. VoIP-Pal admits that this action purports to seek declaratory relief under the patent laws of
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`the United States, 35 U.S.C. §§ 1 et seq.
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`14. VoIP-Pal admits that Twitter purports to seek declaratory relief under 28 U.S.C. §§ 2201 and
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`2202.
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`ANSWER TO FIRST AMENDED COMPLAINT FOR DECLARATORY JUDGMENT
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`15. Paragraph 11 of the FAC contains conclusions of law, rather than averments of fact, to which
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`no answer is required. Insofar as an answer may be required, VoIP-Pal admits that Twitter purports to
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`base jurisdiction of this action under 28 U.S.C. §§ 1331, 1332, 1338, 2201, and 2202. VoIP-Pal
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`denies any and all remaining allegations and/or legal conclusions contained in Paragraph 15 of the
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`FAC.
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`16. VoIP-Pal admits that it previously filed lawsuits against Twitter alleging infringement of
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`patents related to the ’606 patent and that VoIP-Pal has accused Amazon, Apple, AT&T, and Verizon
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`Wireless of infringing the ’606 patent in the Western District of Texas. The remainder of Paragraph
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`16 contains legal conclusion and argument to which no response is required. To the extent a response
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`may be required, VoIP-Pal denies the remaining allegations in Paragraph 16.
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`17. VoIP-Pal admits that on June 11, 2020, counsel for VoIP-Pal informed counsel for Twitter
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`that “VoIP-Pal's position is that Twitter's declaratory judgment complaint lacked subject matter
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`jurisdiction at the time it was filed and therefore should be dismissed. Accordingly, VoIP-Pal does
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`not believe that a covenant not to sue needs to be discussed under the present circumstances. This
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`response should not be construed as a refusal to grant a covenant not to sue.” VoIP-Pal denies the
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`remaining allegations in Paragraph 17.
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`18. Paragraph 18 contains legal conclusions and argument to which no response is required. To
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`the extent a response may be required, VoIP-Pal denies the allegations in Paragraph 18.
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`19. VoIP-Pal admits that Twitter purports to reside and operate in this District. The remainder of
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`Paragraph 19 contains legal conclusions and argument to which no response is required. To the extent
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`that a response is required, VoIP-Pal denies the allegations in Paragraph 19.
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`20. Paragraph 20 contains legal conclusions and argument to which no response is required. To
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`the extent a response may be required, VoIP-Pal denies the allegations in Paragraph 20.
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`21. Paragraph 21 contains legal conclusions and argument to which no response is required. To
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`the extent that a response may be required, VoIP-Pal denies the allegations in Paragraph 21.
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`22. Paragraph 22 contains legal conclusions and argument to which no response is required. To
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`the extent that a response may be required, VoIP-Pal denies the allegations in Paragraph 22.
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`23. Paragraph 23 contains legal conclusions and argument to which no response is required. To
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`the extent that a response may be required, VoIP-Pal denies the allegations in Paragraph 23.
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`FACTUAL BACKGROUND
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`24. VoIP-Pal admits the facts stated in Paragraph 24 of the FAC.
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`25. VoIP-Pal admits the facts stated in Paragraph 25 of the FAC.
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`26. VoIP-Pal admits the facts stated in Paragraph 26 of the FAC.
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`27. VoIP-Pal admits the facts stated in Paragraph 27 of the FAC.
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`28. VoIP-Pal admits the facts stated in Paragraph 28 of the FAC except that VoIP-Pal denies that
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`the Court granted Apple and Amazon’s motion to dismiss on November 1, 2019 and denies that the
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`appeal of the outcome of that motion is still pending.
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`29. VoIP-Pal admits the facts stated in Paragraph 29 of the FAC.
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`30. VoIP-Pal admits that the ’606 patent is in the same family and as and shares common
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`specification with six patents of which this Court invalidated certain selected claims. VoIP-Pal
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`denies the remaining allegations in Paragraph 30.
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`31. VoIP-Pal admits that the complaints in the Texas lawsuits identify claims 1,8, 15, and 19 of
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`the ’606 patent as examples of claims that are infringed by one or more defendants in the Texas
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`lawsuits. The remainder of Paragraph 31 contains legal conclusions and argument to which no
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`response is required. To the extent a response may be required, VoIP-Pal denies the remaining
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`allegations in Paragraph 31.
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`ANSWER TO FIRST AMENDED COMPLAINT FOR DECLARATORY JUDGMENT
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`32. Paragraph 32 contains legal conclusions and argument to which no response is required. To
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`the extent a response may be required, VoIP-Pal denies the allegations in Paragraph 32.
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`33. VoIP-Pal is without sufficient information to admit or deny the allegations in Paragraph 33
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`and on that basis, denies them.
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`34. VoIP-Pal admits that it issued a press release on April 8, 2020 that appears as Exhibit 9 to the
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`FAC. VoIP-Pal denies the remaining allegations in Paragraph 34.
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`FIRST CLAIM FOR RELIEF
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`(Declaratory Judgment of Non-Infringement of the ’606 Patent by Twitter)
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`35. VoIP-Pal repeats, realleges, and incorporates its answers to paragraphs 1 through 34 of the
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`FAC as if fully set forth in this Count.
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`36. Paragraph 36 contains legal conclusions and argument to which no response is required. To
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`the extent a response is required, VoIP-Pal denies the allegations in Paragraph 36.
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`37. VoIP-Pal admits that the ’606 patent is a member of a family that includes six patents that
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`VoIP-Pal previously asserted in other actions and that the ’606 patent shares a common specification
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`with those patents. VoIP-Pal is without sufficient information to affirm or deny whether Twitter
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`believes that it does not infringe and has not infringed any claims of the ’606 patent and on that basis,
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`denies that claim. The remainder of Paragraph 37 contains legal conclusions and argument to which
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`no response is required. To the extent a response is required, VoIP-Pal denies the remaining
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`allegations in Paragraph 37.
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`the extent a response is required, VoIP-Pal denies the allegations in Paragraph 38.
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`39. Paragraph 39 contains legal conclusions and argument to which no response is required. To
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`the extent a response is required, VoIP-Pal denies the allegations in Paragraph 39.
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`40. Paragraph 40 contains legal conclusions and argument to which no response is required. To
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`the extent a response is required, VoIP-Pal denies the allegations in Paragraph 40.
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`SECOND CLAIM FOR RELIEF
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`(Declaratory Judgment of Invalidity of the ’606 Patent by Twitter)
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`41. VoIP-Pal repeats, realleges, and incorporates its answers to paragraphs 1 through 40 of the
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`FAC as if fully set forth in this Count.
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`42. Paragraph 42 contains legal conclusions and argument to which no response is required. To
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`the extent a response is required, VoIP-Pal denies the allegations in Paragraph 42.
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`43. VoIP-Pal admits the factual allegations contained in Paragraph 43 of the FAC.
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`44. Paragraph 44 contains legal conclusions and argument to which no response is required. To
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`the extent a response is required, VoIP-Pal states:
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`The inventions of the Patent-in-Suit originated from breakthrough work and development in
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`the internet protocol communications field.
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`VoIP-Pal has provided significant improvements to communications technology by the
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`invention of novel methods, processes and apparatuses that facilitate communications across and
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`between internet protocol based communication systems and networks, such as internally controlled
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`systems and external networks (e.g., across private networks and between private networks and
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`public networks), including the classification and routing thereof.
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`The earliest telephone systems to receive public use within the United States involved a
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`telephone directly connected to a human operator. A portion of the phone rested on a mechanical
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`hook such that the operator was signaled when the portion was lifted from the hook. A caller would
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`then say the name of the person they wished to call to the operator. If the callee was connected to the
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`same telephone switch board the operator would physically pull out a cable associated with the
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`caller’s phone and plug the cable into a socket associated with the callee’s telephone. While initially
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`very effective compared to no telephone service, this structure quickly proved error prone (operators
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`would connect the wrong party) and limiting to the number of possible telephones because of the
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`physical limits of switchboards and cable to be pulled. This basic system corresponds to the
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`introduction of a Plain Old Telephone Service (“POTS”) connection to the operator. In these
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`configurations, there was a dedicated, point-to-point electrical connection between the caller and the
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`callee.
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`Rotary dialing eventually was introduced, beginning at around the turn of the 20th century,
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`where a rotary disk was marked with numbers from zero to nine. A caller would spin the wheel and a
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`mechanical device in the telephone would cause a sequence of electrical pulses to be sent to the
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`network corresponding to the digit dialed, for example, four pulses would be sent for the number
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`four. Rather than speaking to a human operator, an electric device would count the pulses and begin
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`to route a call once an appropriate and valid sequence of digits was dialed by the caller. This
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`advancement improved the reliability of call routing and reduced the time required to initiate a call.
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`But, even so, there was a dedicated, point-to-point electrical connection between the caller and the
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`callee. As multiple companies entered the market of telephone service and the number of customers
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`increased, an issue emerged where a caller would be a customer of one telephone company and the
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`callee would be a customer of another. The solution that emerged to this problem was to introduce
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`trunk lines connecting one company to another.
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`Eventually, as the number of companies continued to increase and telephone services spread
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`over much larger geographic areas, the notion of a Public Switched Telephone Service (“PSTN”)
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`emerged. The term derives from the notion, at least in part, that the dedicated wires used to connect
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`the caller and callee were “circuit-switched” to connect the two parties. The PSTN developed
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`gradually into the middle of the 20th century, still built around the notion of rotary dialing and POTS
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`connections to the individual telephones. These calls involved analog communications over circuit-
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`switched electrical connections. A circuit-switched network involves assigning dedicated resources,
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`such as switch settings and specific wires, to establish a link from the caller to the callee. While the
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`call is ongoing, these resources cannot be used for any other communications.
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`The next important advancement for consumer telephone service, introduced broadly during
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`the second half of the 20th century, was the introduction of push-button telephones. With such
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`telephones the rotary dial was replaced by a matrix of buttons, each labeled with a digit from zero
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`through nine along with the additions of ‘*’ and ‘#’. The underlying signaling technology was called
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`dual-tone multiple-frequency (“DTMF”) and involves two different audible tones being sent
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`simultaneously from the telephone into the telephone network. A receiver within the network
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`decoded these tones and formed them into a sequence of digits indicating the number of the callee.
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`Around this same time a scheme for international telephone addressing was introduced, with a
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`numeric protocol for identifying one country from another and supporting country-specific routing
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`within the destination country. The E.164 standard now documents how a caller anywhere in the
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`world, for example, in Ann Arbor, Michigan, can identify a telephone number at any other location,
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`such as Avignon, France. While many advances, such as DTMF dialing and automated international
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`routing, may have been originally introduced via ad hoc methods, eventually they required multiple
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`parties (companies and governments) to agree on protocols to enable wide-spread reliable use and
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`inter-operability among different telephone communications networks. Even with all these advances,
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`the systems still relied on circuit-switched technology that dedicated resources between the caller and
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`the callee for the duration of a call. The move to take human operators out of the loop, with the
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`introduction of rotary dialing, combined with the fast increase in demand for telephone services
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`throughout the 20th century, resulted in the development of automated telephone switches. These
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`devices comprised a set of input ports, each dedicated to, and associated with a specific caller, and
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`output ports, each capable of being associated with a callee. A small local telephone system may have
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`had a single switch while a larger service would use a large number of switches that were connected
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`to each other. A switch from a local service provider would be connected to a trunk line which then
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`connected to a switch of another service provider. These switches originally supported analog voice
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`calls initiated via rotary dialing and dedicating input and output ports as well as physical wires for
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`each circuit-switched call.
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`Eventually analog voice services were replaced within the network with digital voice. Digital
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`voice is communicated using a sequence of chunks (or packets) of data. This advancement allowed
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`physical resources to be shared among multiple calls over short bursts of time. For example, a
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`physical wire can move a packet for one call at a specific instance in time and then move a packet for
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`a totally different call subsequently, only to later return to transfer a new packet for the original call.
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`This advance is called packet-switched communications and provided an important increase in
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`network reliability and efficiency while driving down the cost. However, in most situations
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`throughout the 20th century (and often still today), the connection to the end user’s physical
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`telephone is analog. While network switches operate via digital circuitry, and often comprise
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`programmable processors executing software, they tend to be dedicated special-purpose devices. The
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`conversion between analog and digital encoding is typically done at the point where the PSTN
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`network switch connects to the POTS handset, for example, at a device called a Class-5 telephone
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`switch, which connects the customer POTS handset to the PSTN network of a service provider’s
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`central office.
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`The Internet became important to consumers, via broad deployment, during the late 1980’s
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`and early 1990’s. Eventually available bandwidth and reliability increased to the point where
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`pioneers began to experiment with techniques to carry voice communications over the Internet. These
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`early efforts began to focus on techniques called Voice Over Internet Protocol (VOIP) and session
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`initiation protocol (SIP). VOIP provided a consistent set of protocols and mechanisms for moving
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`digital voice packets between two callers using the Internet rather than existing PSTN networks. SIP
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`provided a mechanism for establishing and terminating communication sessions such as calls
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`between users of a VOIP service. For example, a callee could register with a VOIP service so that an
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`identifier (such as their name, email address or a nickname) could be associated with the computer to
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`which they are logged in. Eventually VOIP services increased to provide interoperability with the
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`existing PSTN services. For example, the company Skype began to allow a user to call a PSTN
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`number using a feature marketed as “Skype out”. However, the user was required to explicitly
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`classify the call as a PSTN call by specifying a real physical telephone number. In this case the VOIP
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`system must include a gateway to bridge from the VOIP network to the PSTN network in order to
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`route to the physical telephone. Calls that use a proprietary non-PSTN user identifier such as an email
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`or nickname remain within the VOIP network and are not routed to the PSTN network and do not
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`connect to a POTS telephone.
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`The advent of VOIP technology allowed customers to physically move their telephones from
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`one location to another, even from one continent to another, with no fundamental change in operation
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`from the point of view of a caller once a connection to the Internet was established. However, the
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`integration of network gateways to route between different types of networks using VOIP, for
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`ANSWER TO FIRST AMENDED COMPLAINT FOR DECLARATORY JUDGMENT
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`example from a VOIP caller in Europe to a PSTN callee in the United States, introduced a number of
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`new complications. The VOIP service needed to be able to distinguish between callees that were
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`within the VOIP network and those that were outside of it and thus required different methods for
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`identifying callees and routing to them depending on whether the callees were within or outside the
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`VOIP network. One way to identify callees on the VOIP network was to use a predefined proprietary
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`user identifier such as an email or nickname. The VOIP service provider also needed to interpret
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`dialed PSTN numbers in order to correctly route calls to a PSTN callee. A VOIP caller had to use
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`different types of callee identifier depending on whether or not the destination (callee) they were
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`calling was within the VOIP service provider’s network or not. The caller’s choice of the type of
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`callee identifier thus specified the network of the destination to be called. However, the Patent-in-
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`Suit discloses and claims a distinct manner of call routing.
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`Digifonica, a wholly owned subsidiary of patent owner VoIP-Pal, starting in 2004 eventually
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`came to employ over a dozen top professionals (e.g., software developers, system administrators,
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`QA/test analysts) including three Ph.D.’s with engineering backgrounds, to develop innovative
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`software solutions for communications. Digifonica spent over $15,000,000 researching, developing,
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`and testing a communication solution capable of seamlessly integrating a private voice-over-IP
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`(“VoIP”) communication network with an external network (i.e., the “public switched telephone
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`network” or “PSTN”), by bridging the disparate protocols, destination identifiers and addressing
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`schemes used in the two networks. By the mid-2000’s, Digifonica had successfully tested intra- and
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`inter-network communications (i.e., communications within the private Digifonica system and
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`between the Digifonica system and the PSTN) by implementing high-capacity communication nodes
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`across three geographic regions, including actual working communication nodes in Vancouver
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`(Canada) and London (UK). See ’606 patent at Fig. 1 (nodes 11, 21) and 13:19-35. Digifonica’s
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`ANSWER TO FIRST AMENDED COMPLAINT FOR DECLARATORY JUDGMENT
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`R&D efforts led to a number of patent grants, including U.S. Patent No. 8,542,815, to which the
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`Patent-in-Suit claims priority.
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`Prior to the ‘815 patent, private branch exchange (PBX) systems typically enabled users to
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`call destinations internal to the PBX by dialing an extension (i.e., “private number”) and destinations
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`external to the PBX on the public switched telephone network (PSTN) by dialing a “public number.”
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`Such PBX systems relied on a user-specified classification of the dialed number to interpret the
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`number and route the call. For example, it was a well-known practice to require that a user placing a
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`call to the public network dial a predefined prefix such as “9” to indicate that subsequent digits were
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`to be interpreted as a public PSTN number. If no prefix was dialed, the dialed digits were to be
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`interpreted as a private network PBX extension. The number alone, as dialed, dictated how the call
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`was routed. Thus, the user made an affirmative decision when placing a call as to whether the call
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`would be routed over a public or private network.
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`Digifonica’s system employed an approach fundamentally different from traditional PBX’s: it
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`did not rely on a caller-specified classification (e.g., a prefix digit) to distinguish private calls from
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`PSTN calls. Rather, Digifonica provided flexible, user-specific dialing features and could decouple
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`the type of number being called from the manner in which the call would be handled. For example,
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`even if a public PSTN number was dialed, Digifonica’s system could determine that the call should
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`be routed to an internal destination on its private network, thus allowing the advantages of private
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`network calling even if callers were unaware that the call recipient (“callee”) was a Digifonica system
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`subscriber. If, on the other hand, the PSTN number represented a destination on an external network
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`(e.g., the public network), the Digifonica system facilitated the routing of the call to the destination
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`through a gateway.
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`ANSWER TO FIRST AMENDED COMPLAINT FOR DECLARATORY JUDGMENT
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`VoIP-Pal’s/Digifonica’s technology and patents represent fundamental advancements to
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`Internet Protocol (“IP”) based communication, including improved functioning, classification,
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`routing and reliability of Voice-over-IP (VoIP) and IP-based transmission of video, photographs,
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`messages and mixed media within a private communication network, as well as improved
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`interoperability of IP-based private communication networks with external networks, such as the
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`public switched telephone network (PSTN), interconnected with the private communication networks
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`via one or more gateways.
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`The Patent-in-Suit provides, inter alia, improvements in routing controllers, processes,
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`networks and systems. Several illustrative examples of such improvements are briefly described
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`below, although the patented invention is not limited to these specific improvements or examples.
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`The public switched telephone network (PSTN) connected callers through nodes such as
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`central offices or exchanges. Because these nodes were limited to providing services only to
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`subscribers in a “local calling service area,” they required callers to place calls in a specific manner,
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`e.g., by requiring the use of certain dialing patterns and conventions associated with that local area.
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`See ’606 patent at 1:42-46. For example, it was known to persons of skill in the field of the invention
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`that PSTN nodes conventionally required PSTN callers to dial in a manner compatible with a local
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`dialing/numbering plan (e.g., in the U.S., a plan consistent with the “North American Numbering
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`Plan” or “National Numbering Plan,” in use by AT&T as early as about the 1940’s and further
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`developed in later years) as well as to dial in a manner compatible with international standards such
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`as those of the International Telecommunications Union (ITU) Telecommunications Standardization
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`Sector (ITU-T). See ’606 patent at 19:52-66. For example, it is known in the field of telephony that
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`early numbering plans assigned an “area code” of 312 for calling Illinois, and that this area code
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`(312) remains in use even today as an area code for Chicago. To take another example, the ITU
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`ANSWER TO FIRST AMENDED COMPLAINT FOR DECLARATORY JUDGMENT
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`designates “44” as a “country code” for calling the United Kingdom. Id. at Fig. 12 (“County Code”
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`attribute for London user is “44”). Different local areas imposed different requirements for the length
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`of a dialed telephone number.
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`Large organizations were able to avoid PSTN dialing constraints, at least for internal calls, by
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`using private branch exchanges (PBXs) and private numbering plans for their internal private
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`telephone networks, but these PBXs also needed to provide caller access to the PSTN. See ’606
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`patent at 1:35-48. As Andy Valdar has ex