Filed: August 26, 2016
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`Filed on behalf of:
`Patent Owner Voip-Pal.com Inc.
`By: Kerry Taylor
`John M. Carson
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Tel.: (858) 707-4000
`Fax: (858) 707-4001
`Email:
`BoxDigifonica @knobbe.com
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`UNIFIED PATENTS INC.
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`Petitioner,
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`v.
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`VOIP-PAL.COM INC.,
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`Patent Owner
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`Case No. IPR2016-01082
`U.S. Patent 8,542,815
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`
`Filed on behalf of:
`Patent Owner Voip-Pal.com Inc.
`By: Kerry Taylor
`John M. Carson
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Tel.: (858) 707-4000
`Fax: (858) 707-4001
`Email:
`BoxDigifonica @knobbe.com
`
`
`
`
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`UNIFIED PATENTS INC.
`
`Petitioner,
`
`v.
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`VOIP-PAL.COM INC.,
`
`Patent Owner
`
`
`
`
`Case No. IPR2016-01082
`U.S. Patent 8,542,815
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`TABLE OF CONTENTS
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`Page No.
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`I.
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`INTRODUCTION ........................................................................................... 1
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`II. ARGUMENT ................................................................................................... 2
`
`A.
`
`B.
`
`Introduction to Claimed Subject Matter ................................................ 2
`
`The Petition and Declaration are flawed and inadequate ...................... 7
`
`1.
`
`2.
`
`3.
`
`The Declaration Is Simply A Copy Of The Petition, And
`Should Be Accorded No Weight................................................. 8
`
`The Petition’s Claim Constructions Are Devoid Of Explanation
` ..................................................................................................... 9
`
`The Claim Charts Fall Well Below the Requirement to Explain
`Its Ground of Unpatentability “With Particularity” .................. 10
`
`C.
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`Ground 1 fails because Turner does not disclose every element of
`Claim 1 ................................................................................................ 15
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`1.
`
`Overview of Turner ................................................................... 16
`
`2.
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`3.
`
`a.
`
`b.
`
`Turner’s Routing Method for an Intra-Gateway Call ..... 21
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`Turner’s Routing Method for an Inter-Gateway Call ..... 25
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`Turner fails to disclose determining whether “calling attributes
`match[] at least a portion of [the] callee identifier” as in claim
`element [1c] ............................................................................... 27
`
`Turner fails to disclose the “classifying” features in claim
`element [1d] .............................................................................. 30
`
`a.
`
`Turner’s decision to classify a call as an inter-gateway
`call is not a disclosure of “classifying the call as a public
`network call when said match meets public network
`classification criteria” ..................................................... 30
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`-i-
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`TABLE OF CONTENTS
`(cont’d)
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`Page No.
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`b.
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`Turner’s decision to classify a call as an internal (intra-
`gateway) call is not a disclosure of “classifying the call
`as a private network call when said match meets private
`network classification criteria” ....................................... 35
`
`4.
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`Turner’s disclosure of prefix digits fails to anticipate claim
`elements [1b], [1c], [1d], and [1f] ............................................. 37
`
`a.
`
`b.
`
`c.
`
`The Petition improperly combines two distinct call flows
` ........................................................................................ 38
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`Turner’s prefix digit is not equivalent to the claimed
`“calling attributes” .......................................................... 43
`
`The Petition fails to show that Turner’s prefix digit
`feature separately discloses “when the call is classified as
`a private network call, producing a private network
`routing message” as recited in Claim 1 .......................... 46
`
`D. Ground 2 fails because the combination of Kaczmarczyk and Turner
`does not disclose all claim elements and because the combination is
`not obvious .......................................................................................... 47
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`1.
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`2.
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`3.
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`Overview of Kaczmarczyk ....................................................... 47
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`The Petition Fails to Articulate a Plausible Reason to Combine
`Kaczmarczyk with Turner ......................................................... 58
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`The Petition Fails to Demonstrate That All Elements of Claim 1
`are Rendered Obvious by Modifying Kaczmarczyk in view of
`Turner ........................................................................................ 61
`
`a.
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`Kaczmarczyk fails to disclose “public network
`classification criteria … and … private network
`classification criteria …” ................................................ 62
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`-ii-
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`TABLE OF CONTENTS
`(cont’d)
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`Page No.
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`b.
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`c.
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`Petitioner Misstates the Deficiencies of Kaczmarczyk in
`Erroneously Asserting that Turner Remedies These
`Deficiencies .................................................................... 66
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`The Petition Fails to Explain How Kaczmarczyk and
`Turner’s Teachings Could be Combined In View of their
`Significant Differences ................................................... 68
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`III. CONCLUSION .............................................................................................. 70
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`
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`-iii-
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`
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`TABLE OF AUTHORITIES
`
`Page No(s).
`
`A.C. Dispensing Equipment Inc. v. Prince Castle LLC,
`IPR2014-00511, Paper 16 (PTAB Sep. 10, 2014) .............................................. 12
`
`InfoBionic, Inc. v. Braemer Mfg., LLC,
`IPR2015-01704, Paper 11 (P.T.A.B. Feb. 16, 2016) ............................................ 9
`
`Kinetic Techs., Inc. v. Skyworks Solutions, Inc.,
`IPR2014-00529, Paper 8 (P.T.A.B. Sept. 23, 2014) ............................................. 8
`
`KSR Intern. Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ........................................................................................ 7, 58
`
`Nautilus Hyosung Inc. v. Diebold Inc.,
`Case IPR2016-00633 (PTAB Aug. 22, 2016) .............................................. 13, 14
`
`Net MoneyIN, Inc. v. VeriSign, Inc.,
`545 F.3d 1359 (Fed. Cir. 2008) .............................................................. 12, 38, 39
`
`Richardson v. Suzuki Motor Co.,
`868 F.2d 1226, 9 USPQ2d 1913 (Fed. Cir. 1989) ........................................ 16, 46
`
`Verdegaal Bros. v. Union Oil Co. of California,
`814 F.2d 628 (Fed. Cir. 1987) ............................................................................ 15
`
`
`
`OTHER AUTHORITIES
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`35 U.S.C. § 102 .............................................................................................. 1, 15, 38
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`35 U.S.C. § 312 ........................................................................................ 7, 10, 12, 15
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`35 U.S.C. § 313 ........................................................................................................ 16
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`35 U.S.C. § 314 .......................................................................................................... 1
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`37 C.F.R. § 42.22 ................................................................................................. 7, 11
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`-iv-
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`TABLE OF AUTHORITIES
`(cont’d)
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`Page No(s).
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`37 C.F.R. § 42.104 ............................................................................................passim
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`37 C.F.R. § 42.107 ..................................................................................................... 1
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`
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`-v-
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`IPR2016-01082
`Unified Patents v. Voip-Pal
`
`Pursuant to 35 U.S.C. § 313, 37 C.F.R. § 42.107 and the Notice of Filing
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`Date Accorded to Petition (Paper 3), dated May 26, 2016, Voip-Pal.com, Inc.
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`(“Voip-Pal”) hereby timely submits this Preliminary Response to the Petition for
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`Inter Partes Review of U.S. 8,542,815 (the ’815 Patent) (Paper 1) filed on
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`May 24, 2016 by Unified Patents Inc. (“Unified”).
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`I. INTRODUCTION
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`Petitioner challenges Claims 1, 2, 7, 27, 28, 29, 34, 54, 72, 73, 74, 92, 93
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`and 111 of the ’815 Patent on two grounds:
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`1.
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`Petitioner alleges anticipation under § 102(e) by U.S. Patent
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`No. 7,218,722 B1 Ex. 1003 (“Turner”).
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`2.
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`Petitioner alleges obviousness under § 103(a) over U.S. Patent
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`No. 6,961,334 B1 Ex. 1004 (“Kaczmarczyk”) in view of Turner.
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`Petitioner also submitted a Declaration by declarant Michael Caloyannides
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`Ex. 1002 (“Declaration”).
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`As Voip-Pal explains below, Petitioner’s arguments and assessments of the
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`cited art with respect to the ’815 Patent claims fail to establish a reasonable
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`likelihood that Petitioner would prevail as to its asserted grounds, as required
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`under 35 U.S.C. § 314(a). As such, institution of this proceeding should be denied
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`as to both asserted grounds.
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`-1-
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`IPR2016-01082
`Unified Patents v. Voip-Pal
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`A.
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`Introduction to Claimed Subject Matter
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`II. ARGUMENT
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`The Petition has focused its analysis on Claim 1, which recites:
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`1. [1p] A process for operating a call routing controller to
`facilitate communication between callers and callees in a system
`comprising a plurality of nodes with which callers and callees are
`associated, the process comprising:
`
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`[1a] in response to initiation of a call by a calling
`subscriber, receiving a caller identifier and a callee identifier;
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`[1b] locating a caller dialing profile comprising a
`username associated with the caller and a plurality of calling
`attributes associated with the caller;
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`[1c] determining a match when at least one of said
`calling attributes matches at least a portion of said callee
`identifier;
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`[1d] classifying the call as a public network call when
`said match meets public network classification criteria and
`classifying the call as a private network call when said match
`meets private network classification criteria;
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`-2-
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`IPR2016-01082
`Unified Patents v. Voip-Pal
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`[1e] when the call is classified as a private network call,
`producing a private network routing message for receipt by a
`call controller, said private network routing message identifying
`an address, on the private network, associated with the callee;
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`[1f] when the call is classified as a public network call,
`producing a public network routing message for receipt by the
`call controller, said public network routing message identifying
`a gateway to the public network.
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`By way of technology background, a public switched telephone network
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`(PSTN) uses traditional telephone technology including dedicated telephone lines
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`from a service provider to transmit calls over a circuit-switched network. Voice
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`over Internet protocol (VoIP) is used for the delivery of voice communications and
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`multimedia sessions over Internet protocol (IP) networks, such as the Internet.
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`Digital information is packetized, and transmission occurs as IP packets over a
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`packet-switched network.
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`The method of Claim 1 is directed to telecommunications call routing. The
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`routing method allows a call to be classified and routed as a “public network call”
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`or as a “private network call” based on whether a match of at least one calling
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`attribute and at least a portion of the callee identifier, meets certain network
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`criteria. For example, when a caller initiates a call to a callee the call may be
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`-3-
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`IPR2016-01082
`Unified Patents v. Voip-Pal
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`routed to PSTN, e.g., traditional circuit switched network, or to Internet networks,
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`e.g., a packet switched network, based on a calling attribute matching at least a
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`portion of callee information. The method of Claim 1 does not evaluate the callee
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`identifier in isolation, but interprets the callee identifier based on attributes in the
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`caller’s dialing profile. The caller dialing profile including a plurality of calling
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`attributes, at least one of which is matched with at least a portion of a callee
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`identifier, is utilized to establish whether the call meets network classification
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`criteria based on the match.
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`Turner discloses a system for routing calls locally and remotely within a
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`type of IP network called a Virtual Private Network (VPN) and also externally to
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`the PSTN. However, claim element [1c], “determining a match when at least one
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`of said calling attributes matches at least a portion of said callee identifier,” is not
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`shown by the Petition to be present in Turner. The Petition merely makes a
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`statement that: “Turner discloses the call agent analyzing a caller address, callee
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`address, and information about the addresses such as associated network locations
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`to determine whether the caller and callee are connected to the same gateway or in
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`the same location.” Petition at 24.
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`Kaczmarczyk discloses a communications network and a call routing
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`system. The system provides call connectivity between a PSTN network and an IP
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`network as shown in FIG. 1. Two scenarios are described: the flow of FIG. 4A
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`-4-
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`IPR2016-01082
`Unified Patents v. Voip-Pal
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`illustrating calls originating in the IP network and terminating in the PSTN, and the
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`flow of FIG. 4B illustrating calls originating in the PSTN network and terminating
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`in the IP network. However, claim element [1d], “classifying the call as a public
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`network call when said match meets public network classification criteria and
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`classifying the call as a private network call when said match meets private
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`network classification criteria,” is not shown by the Petition to be present in
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`Kaczmarczyk because how the decision is made to route to a particular kind of
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`network is not disclosed.
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`Turner and Kaczmarczyk, whether taken alone or in combination, fail to
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`disclose or even suggest the method of call classification and routing recited in
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`Claim 1. This Preliminary Response shows that the Petitioner’s arguments fail for
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`the following reasons:
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`(a) The Petition mischaracterizes the disclosure of Turner in asserting that
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`it discloses all elements of the claims. The routing decisions in Turner are not
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`made by “determining a match” as recited in Claim 1, which is thus not
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`anticipated.
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` Furthermore, Turner’s
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`intra-gateway and
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`inter-gateway call
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`recognition feature does not involve classifying and routing the call as a “public
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`network call” or a “private network call.” The Petition also conflates together
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`distinct features of Turner’s system as if these distinct features were seamlessly
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`-5-
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`IPR2016-01082
`Unified Patents v. Voip-Pal
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`used together. But the Petition fails to establish that these distinct features are used
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`in Turner in the same manner as arranged in the claims.
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`(b) The Petition admits that the Kaczmarczyk reference is deficient and
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`relies on Turner to remedy Kaczmarczyk’s deficiencies for each of claim elements
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`[1d], [1e] and [1f]. However, Kaczmarczyk never discloses how the decision is
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`made to route to a particular kind of network (e.g., PSTN or IP-based).
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`Kaczmarczyk’s disclosure of call routing is limited to scenarios where the
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`destination network is known. Thus, Kaczmarczyk fails to disclose public and
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`private “network criteria” for classifying and routing a call as claimed. Turner
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`doesn’t cure this deficiency because it similarly fails to disclose classifying and
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`routing the call as a “public network call” or a “private network call” as recited in
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`Claim 1.
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`(c) The Petition states that the combination of Kaczmarczyk with Turner
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`would have been obvious but provides minimal and conclusory reasoning as to
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`why one of ordinary skill would have combined the references. Petitioner’s
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`proposed combination relies on a multiplicity of teachings from Turner, but fails to
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`explain how these would have been combined into Kaczmarczyk’s system.
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`Petitioner also fails to explain how major differences in Kaczmarczyk’s and
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`Turner’s methods could be reconciled. Thus, the Petition fails to articulate a
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`-6-
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`IPR2016-01082
`Unified Patents v. Voip-Pal
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`proper reason to combine the known elements in the fashion claimed by the patent
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`at issue, as required by KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
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`B.
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`The Petition and Declaration are flawed and inadequate
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`The petitioner has
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`the burden of providing and explaining “with
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`particularity” the specific evidence that allegedly supports each of the petition’s
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`challenges of the claims. 35 U.S.C. § 312(a)(3). A petition must construe the
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`claims, identify “[h]ow the construed claim is unpatentable,” and identify “specific
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`portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(3)-(5).
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`The petition must also include a “full statement of the reasons for the relief
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`requested, including a detailed explanation of the significance of the evidence.” 37
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`C.F.R. § 42.22(a)(2).
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`As discussed below, the Petition and Declaration fall well below the bar of
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`legal requirements. First, the Petition was submitted with a Declaration that is
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`nearly a carbon copy of the Petition, and therefore is entitled to no weight.
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`Second, the Petition’s proposed claim constructions are devoid of any analysis, and
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`fail to meet the requirements of 37 C.F.R. § 42.104(b)(3). Third, only the
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`Petition’s claim charts address the claim language and attempt to link the claim
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`language to the cited art to explain “[h]ow the construed claim is unpatentable,”
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`but those explanations are terse and insufficient.
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`-7-
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`IPR2016-01082
`Unified Patents v. Voip-Pal
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`The failures of the Petition are not inconsequential. As explained in
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`subsequent sections infra, these shortcomings of the Petition and Declaration belie
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`the insufficiencies of the references to render the claims unpatentable.
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`1.
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`The Declaration Is Simply A Copy Of The Petition, And Should
`Be Accorded No Weight
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`The declaration of Dr. Caloyannides (Ex. 1002), submitted by Petitioner,
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`mirrors the corresponding text from the Petition and provides no additional facts or
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`analysis to support the grounds of rejection beyond the attorney arguments in the
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`Petition. In fact, the substantive portions of the Caloyannides declaration are near
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`verbatim copies of the Petition. Ex. 2001 submitted herewith illustrates just one
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`example of the mirroring of text from the Petition in the Caloyannides declaration,
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`with the differences shown in mark-up. Indeed, pages 15-20 and 34-40 of the
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`Petition are nearly identical to paragraphs 36-46 and 48-59 of the Caloyannides
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`declaration. Similarly, the Caloyannides declaration (at pages 49-65 and 67-84)
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`wholesale adopts
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`the Petitions’ claim charts (at pages 20-34 and 40-56,
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`respectively) without adding any further analysis or explanation of how the
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`asserted passages from the references meet the elements recited in the claims.
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`“Merely repeating an argument from the Petition in the declaration of a
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`proposed expert does not give that argument enhanced probative value.” Kinetic
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`Techs., Inc. v. Skyworks Solutions, Inc., IPR2014-00529, Paper 8 at 15 (P.T.A.B.
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`-8-
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`IPR2016-01082
`Unified Patents v. Voip-Pal
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`Sept. 23, 2014); see also InfoBionic, Inc. v. Braemer Mfg., LLC, IPR2015-01704,
`
`Paper 11 at 6 (P.T.A.B. Feb. 16, 2016) (finding expert declaration unpersuasive
`
`when it “repeats the Petitioner’s arguments and offers little or no elaboration”).
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`Because the relevant portions of the Petition and the Caloyannides
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`declaration are near verbatim copies, the citations to the Caloyannides declaration
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`do not add to the Petition’s attorney arguments. Accordingly, Patent Owner
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`requests that the Board accord little or no weight to the Caloyannides declaration.
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`Further, Patent Owner’s analysis infra of the proposed grounds addresses the
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`Petitioner’s arguments without separately addressing Dr. Caloyannides’s nearly
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`identical Declaration.
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`2.
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`The Petition’s Claim Constructions Are Devoid Of Explanation
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`The Petition presents ten proposed constructions of claim terms, eight of
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`which
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`are
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`asserted means-plus-function
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`constructions
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`of
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`terms
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`in
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`Claims 28, 34, 93, and 111. Paper 1 at 10-15. Each of these eight means-plus-
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`function constructions are formulaic and lack any analysis. They consist of two
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`sentences: a recitation of the claim language, and an equivocal sentence pointing to
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`the specification (“the specification may provide the following structure”). Id.
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`at 12-15. 37 C.F.R. § 42.104(b)(3) requires construction of means-plus-function
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`language in claims. The Petition provides no explanation for how the cited portion
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`of the specification meets the respective alleged means-plus-function construction,
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`-9-
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`IPR2016-01082
`Unified Patents v. Voip-Pal
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`or for why it is uncertain whether or not that cited portion of the specification
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`meets the respective alleged means-plus-function construction. The Petition is
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`required under 35 U.S.C. § 312(a)(3) to present its arguments “with particularity.”
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`The Petition’s two-sentence equivocal constructions fall short of this requirement.
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`Voip-Pal does not address the merits of Petition’s claim construction
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`arguments at this time. However Voip-Pal does not acquiesce to the Petition’s
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`asserted constructions, and Voip-Pal reserves the right to present its claim
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`construction positions later in this proceeding, if appropriate.
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`3.
`
`The Claim Charts Fall Well Below the Requirement to Explain Its
`Ground of Unpatentability “With Particularity”
`
`The entirety of Petitioner’s attempting to link each element of Claim 1 to
`
`Turner’s disclosure is found in the claim charts. Patent Owner understands that
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`under the present Rules of practice, it is not improper to include arguments in the
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`claim charts. However, the present Rules cannot be read in a manner that excuses
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`Petitioner from meeting their burden of providing a meaningful explanation with
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`particularity as to the grounds for challenging each claim.
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`Congress requires that petitions identify, “with particularity, each claim
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`challenged, the grounds on which the challenge to each claim is based, and the
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`evidence that supports the grounds for the challenge to each claim . . .” 35 U.S.C.
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`§ 312(a)(3). The Board has further provided that a petition must identify “[h]ow
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`-10-
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`IPR2016-01082
`Unified Patents v. Voip-Pal
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`the construed claim is unpatentable under the statutory grounds identified” and
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`“where each element of the claim is found in the prior art,” and must explain the
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`“relevance of the evidence to the challenge raised . . .” 37 C.F.R. § 42.104(b); see
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`also 37 C.F.R. § 42.22(a)(2) (a petition must include a “full statement of the
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`reasons for the relief requested, including a detailed explanation of the significance
`
`of the evidence”).
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`The Petition’s claim charts fail to meet these requirements.
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`The Petition’s first claim chart is directed to Ground 1 (Alleged Anticipation
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`by Turner). For each element of Claim 1, the claim chart provides a few lines of
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`argument followed by large block quotes from assorted portions of Turner. For
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`example, regarding element 1b, the claim chart provides six lines of argument
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`followed by over two pages of citations to Turner that jump from FIG. 3 to FIG. 1
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`and jump from column 7 to column 9, to column 10, then back again to column 7,
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`then to column 17, and eventually to column 21. Paper 1 at 21-24. Similarly, for
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`element 1c, the claim chart jumps back and forth throughout Turner with almost no
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`explanation for how these reassembled portions of Turner constitute an
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`anticipatory disclosure. Id. at 24-26.
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`On its face, the claim chart fails to establish anticipation because it fails to
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`explain how these multiple, distinct teachings represent a single anticipatory
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`disclosure. “[I]t is not enough that the prior art reference . . . includes multiple,
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`-11-
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`IPR2016-01082
`Unified Patents v. Voip-Pal
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`distinct teachings that the artisan might somehow combine to achieve the claimed
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`invention.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed.
`
`Cir. 2008). Further, the claim chart fails to meet Congress’s requirement under 35
`
`U.S.C. § 312(a)(3), and the Board’s requirements under 37 C.F.R. § 42.104(b) and
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`§ 42.22(a)(2) to provide sufficient explanation of how Turner renders the claims
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`unpatentable. The Petition leaves to the Board and to Patent Owner the work of
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`independently reviewing and understanding the various cited portions of Turner,
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`and then evaluating whether or not these cited portions are arranged in a manner
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`that constitutes an anticipatory disclosure of the claims. It is neither the Board’s
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`nor Patent Owner’s responsibility to remedy the inadequacies of a Petition that
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`fails to meet the statutory requirements of asserting its unpatentability grounds
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`“with particularity.” A.C. Dispensing Equipment Inc. v. Prince Castle LLC,
`
`IPR2014-00511 (PTAB Sep. 10, 2014) (Paper 16 at 4-5) (“Petitioner should not
`
`expect the Board to search the record and piece together the evidence necessary to
`
`support Petitioner’s arguments.”)(citing DeSilva v. DiLeonardi, 181 F.3d 865, 866-
`
`67 (7th Cir. 1999)).
`
`Moreover, as detailed in sections infra, these inadequacies of the claim chart
`
`mask the fact that Turner’s disclosure does not anticipate the claims, and
`
`Petitioner’s presentation of Turner glosses over important distinctions between
`
`Turner’s disclosures and Claim 1.
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`IPR2016-01082
`Unified Patents v. Voip-Pal
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`Even more egregious than the shortcomings of the claim chart in discussing
`
`Claim 1, the claim chart’s explanation for all other claims is nearly non-existent.
`
`The Petition asserts that 6 independent claims and 14 total claims are anticipated.
`
`These various claims are directed to different concepts using different language.
`
`Yet the claim chart nearly exclusively incorporates by reference its analysis of
`
`Claim 1 for the other claims without addressing the subject matter encompassed by
`
`those claims or the language used in those claims to explain how the analysis for
`
`Claim 1 can be identically applied to anticipate those claims. Even independent
`
`claims are attacked solely by incorporation by reference to the analysis of Claim 1
`
`without explanation.
`
`The Board has held that such practice is insufficient to carry Petitioner’s
`
`burden: “As the Federal Circuit has made clear, the Board cannot rely on
`
`conclusory statements by Petitioner that the same analysis applies without further
`
`explanation; rather, Petitioner must present ‘particularized arguments explaining
`
`why its arguments . . . would be cross-applicable.’ . . . Thus, in this case in light of
`
`the differences in the claim language, Petitioner’s conclusory statements implying
`
`that the same analysis for claim 1 also applies to independent claim 17 do not
`
`satisfy Petitioner’s burden to demonstrate obviousness.” Nautilus Hyosung Inc. v.
`
`Diebold Inc., Case IPR2016-00633 (PTAB Aug. 22, 2016) (Paper 9 at 32) (citing
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`IPR2016-01082
`Unified Patents v. Voip-Pal
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`In re Magnum Oil Tools Int’l, Ltd., No. 2015-1300, 2016 WL 3974202, at *9 (Fed.
`
`Cir. July 25, 2016))(internal citations omitted).
`
`The present Petition is even more deficient than the petition in the above
`
`cited decision by the Board in Nautilus, because the present Petition doesn’t even
`
`contain “conclusory statements implying that the same analysis for claim 1 also
`
`applies” to the other claims. Instead, the entirety of the claim chart’s assertion of
`
`anticipation of Claims 27, 28, 29, 34, 54, 73, 92, 93
`
`and 111
`
`consists of
`
`incorporation by reference to the analysis of other claims. There is no
`
`consideration of claim language differences or claim constructions, and no
`
`explanation why these arguments are cross-applicable. As the Board in Nautilus
`
`held, such conclusory analysis is insufficient. Thus, at a minimum, the Petition
`
`fails for these claims in which Petitioner chose to do no analysis beyond a simple
`
`incorporation by reference.
`
`Moreover, as discussed above, the Petition asserted ten different claim
`
`constructions. 37 C.F.R. § 42.104(b)(4) requires the Petition to explain “[h]ow the
`
`construed claim is unpatentable . . .” Yet the claim chart never once attempts to
`
`equate the asserted claim constructions with the teachings of Turner. In view of
`
`the undeveloped means-plus-function constructions discussed above, the Petition
`
`was particularly required to provide a reasoned analysis of “[h]ow the construed
`
`claim is unpatentable,” over Turner. 37 C.F.R. § 42.104(b). Yet the claim chart is
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`IPR2016-01082
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`silent as to any of the asserted means-plus-function constructions and how those
`
`construed claim elements are disclosed in Turner. Again, the Petition falls far
`
`short of the requirements under 35 U.S.C. § 312(a)(3), 37 C.F.R. § 42.104(b) and
`
`§ 42.22(a)(2) to provide a reasoned basis for the unpatentability of the claims.
`
`Petitioner’s second claim chart (Ground 2 – Alleged Obviousness over
`
`Kaczmarczyk and Turner) has the same inadequacies. For example, the claim
`
`chart cites to two portions of Kaczmarczyk and four portions of Turner in asserting
`
`obviousness of element 1d. However, the claim chart did not even indicate how or
`
`why these various teachings would be combined to meet element 1d. The
`
`Petition’s claim chart in the obviousness argument also wholesale incorporated its
`
`Claim 1 analysis for most of the other challenged claims despite their differences
`
`in language and scope. Thus, for the reasons provided above, the Petition’s
`
`obviousness claim chart also fails to meet the requirements of 35 U.S.C.
`
`§ 312(a)(3), 37 C.F.R. § 42.104(b) and § 42.22(a)(2).
`
`C. Ground 1 fails because Turner does not disclose every element of
`Claim 1
`
`Under 35 U.S.C. § 102, “[a] claim is anticipated only if each and every
`
`element as set forth in the claim is found, either expressly or inherently described,
`
`in a single prior art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814
`
`F.2d 628, 631, 2 USPQ2s 1051, 1053 (Fed. Cir. 1987). “The identical invention
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`-15-
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`must be shown in as complete detail as is contained in the … claim.” Richardson v.
`
`Suzuki Motor Co., 868 F.2d 1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir. 1989).
`
`Thus, if even a single claim element is not disclosed in Turner, the claim is not
`
`anticipated.
`
`The following section provides an overview as background to an explanation
`
`of why the Petition mischaracterizes and fails to establish that Turner discloses
`
`each and every element, arranged as set forth in Claim 1.
`
`1. Overview of Turner
`
`Turner discloses a communication system and method for providing call
`
`management services (CMS) in a Virtual Private Network (VPN). See Turner,
`
`Abstract. Turner implements a system for routing calls locally and remotely within
`
`an IP-based VPN and also externally to the PSTN. Turner at 9:10-10:22; 10:24-
`
`12:41; 12:43-67.
`
`Turner illustrates its routing method in FIG. 1.
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`IPR2016-01082
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`Notably, Turner uses a two-layer numbering scheme, consisting of a lower
`
`number layer (NA’s) and a higher number layer (CA’s).
`
`
`
`The system and method of the present invention users [sic] a two-
`layer numbering scheme. The first or lower layer comprises the
`Directory Numbers from the North American Numbering Plan
`(NANP), as assigned by a Local Exchange Carrier (LEC) or a neutral
`Industry number administrator. [...] The second or higher layer of
`numbers identifying individual users, are assigned by the customer’s
`administrator, and remain with these users wherever they are located
`in the network. The Directory Numbers (DN) are also the Network
`Addresses (NA). The artificial numbers assigned to specific users are
`the Customer Addresses (CA). A Directory Server performs the
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`IPR2016-01082
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`translation from Customer Address to Network Address and vice
`versa.
`Ex. 1003 at 2:35-51.
`FIG. 1 refers to Users A, B, and C who are associated with the following
`
`CAs, NAs, and gateways (Id. at 4:51-60):
`
`
`
`
`
`User A
`
`User B
`
`User C
`
`
`CA
`
`2001
`
`2002
`
`3001
`
`Current NA
`
`Current Gateway
`
`313-555-2001
`
`313-555-2002
`
`709-555-3001
`
`X
`
`X
`
`Y
`
`As seen above, the lower number layer contains Network Addresses (NAs)
`
`that describe customer terminations or endpoints and that also represent the PSTN
`
`Directory Numbers of the associated telephones. Turner’s system is non-
`
`traditional because it also uses a higher number layer containing Customer
`
`Addresses (CAs). Users are identified by their Customer Addresses (CAs), rather
`
`than the Network Addresses (NAs) of their phones. A Directory Server is provided
`
`to translate between CAs and NAs. Calls are placed by dialing the CA of the user
`
`(or by entering a user name, which is translated in
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