`Trials@uspto.gov
`571-272-7822 Entered: January 3, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VOIP-PAL.COM INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01198
`Patent 9,179,005 B2
`____________
`
`Before BARBARA A. BENOIT, LYNNE E. PETTIGREW, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`MARGOLIES, Administrative Patent Judge.
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
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`IPR2016-01198
`Patent 9,179,005 B2
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`I. INTRODUCTION
`Voip-Pal.com, Inc. (“Patent Owner”) filed a Request for Rehearing
`(Paper 9, “Rehearing Request” or “Reh’g Req.”) of the Decision granting
`institution of inter partes review dated November 21, 2016 (Paper 6,
`“Institution Decision” or “Inst. Dec.”). Patent Owner requests
`reconsideration of the decision to institute inter partes review of claims 1,
`24–26, 49, 50, 73–79, 83, 84, 88, 89, 92, 94–96, 98, and 99 of U.S. Patent
`No. 9,179,005 B2 (Ex. 1001, “the ’005 patent”). For the reasons discussed
`below, Patent Owner’s request is denied.
`
`
`II. STANDARD OF REVIEW
`The party challenging a decision in a request for rehearing bears the
`burden of showing the decision should be modified. 37 C.F.R. § 42.71(d).
`A request for rehearing “must specifically identify all matters the party
`believes the Board misapprehended or overlooked, and the place where each
`matter was previously addressed.” Id. Upon a request for rehearing, the
`decision on a petition will be reviewed for an abuse of discretion. 37 C.F.R.
`§ 42.71(c).
`
`
`III. DISCUSSION
`Patent Owner maintains that, in the Institution Decision, the Board
`overlooked Patent Owner’s argument that a proper construction of the
`claims requires a particular ordering of steps, whereas Petitioner’s
`obviousness argument is based on the performance of these steps in a
`different order. Reh’g Req. 2. Patent Owner also argues that the Board
`overlooked Patent Owner’s arguments that Petitioner failed to provide a
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`IPR2016-01198
`Patent 9,179,005 B2
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`valid motivation for why a skilled person would have combined with
`Chu ’6841 with either Chu ’3662 or Chen.3 Id. at 3. We address each
`argument below.
`
`A. Ordering of steps argument
`Patent Owner argues that the Board overlooked Patent Owner’s
`argument—set forth in pages 17 through 19 of Patent Owner’s Preliminary
`Response—that a proper construction of the challenged claims requires a
`particular ordering of steps, and that Petitioner’s obviousness analysis fails
`“when a claim construction of the ordering of steps is carried out and the
`obviousness case considered in view of the construed claims.” Id. at 3, 7.
`Specifically, Patent Owner argues that the Board overlooked the argument
`that Petitioner’s obviousness analysis fails to account for performing the
`“locating” step before the “producing” steps. Id. at 6–7. Patent Owner
`maintains that the Board “overlooked the significance of the Patent Owner’s
`claim construction explaining the required ordering of steps and the Patent
`Owner’s arguments showing that the Petitioner’s obviousness arguments fail
`due to Chu ’684’s distinct ordering of steps.” Id. at 5. Patent Owner also
`maintains that the Board “misapprehended the distinction between the
`claims and the cited references with respect to the order of steps.” Id.
`We disagree. We did not overlook or misapprehend Patent Owner’s
`argument regarding the ordering of steps. First, we explicitly cited Patent
`
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`1 U.S. Patent No. 7,486,684 B2, filed Sept. 30, 2003 (Ex. 1006, “Chu ’684”).
`2 U.S. Patent No. 8,036,366 B2, filed Aug. 4, 2006 (Ex. 1007, “Chu ’366”).
`3 U.S. Patent Application Publication No. 2007/0064919 A1, filed Sept. 14,
`2005 (Ex. 1008, “Chen”).
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`Patent 9,179,005 B2
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`Owner’s argument and repeated Patent Owner’s explanation of the argument
`in the context of Figure 6 of Chu ’684, as follows:
`Figure 6 of Chu ’684, above, depicts a sequence for
`handling an on-net call. Ex. 1006, 8:39–40. According to Patent
`Owner, Petitioner relies on step 608, in which server 110 consults
`a dial plan to classify the call, for the “classification criteria”
`requirement, and improperly relies on subsequent step 610, in
`which soft-switch 220 uses a callee identifier to locate a dial plan,
`for the “using a caller identifier . . . to locate” step. Prelim.
`Resp. 17–19.
`Inst. Dec. 18 (emphasis added). As shown above, we expressly referenced
`Patent Owner’s argument that Petitioner’s analysis improperly relies on
`performing the locating step after performing the producing steps. Id.
`Second, in our Institution Decision, we explained that Petitioner sufficiently
`met its burden at the preliminary stage to show that the combined teachings
`of the references rendered the subject matter of the claims obvious, and that
`Patent Owner’s attempt to distinguish the single reference Chu ’684 did not
`address Petitioner’s showing that the combination teaches the claimed steps.
`Id. at 19–20 (citing In re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012) and
`In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“[T]he test for obviousness is
`what the combined teachings of the references would have suggested to
`those having ordinary skill in the art.”)); see also id. at 16 (addressing
`Petitioner’s reliance on both Chu ’684 and Chu ’366 for teaching the
`locating step, including Petitioner’s reliance on Chu ’366 for teaching call
`origin profiles that include calling attributes such as geographic location,
`country code, and area code); Pet. 17–18 (relying on both Chu ’684 and Chu
`’366 for teaching the locating step of claim 1), 42–43 (relying on both Chu
`’684 and Chen for teaching the locating step of claim 1). Patent Owner
`again raises the same argument it raised in its Preliminary Response—that
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`Petitioner’s obviousness analysis fails because Chu ’684’s ordering of steps
`is distinct—without explaining how we overlooked a previously-made
`argument that squarely addresses Petitioner’s proposed combinations. See,
`e.g., Reh’g Req. 4 (arguing that Petitioner “premised its obviousness theory
`on Chu ’684’s ordering of steps, which are distinct from those in claim 1”),
`5 (arguing that “Chu ’684 teaches a method distinct from that of claim 1
`because Chu ’684 performs its method in an order different from that
`required by claim 1”), 5 (arguing that the Institution Decision overlooked
`“Patent Owner’s arguments showing that the Petition’s obviousness
`arguments fail due to Chu ’684’s distinct ordering of steps”).
`For the above reasons, we are not persuaded that we overlooked or
`misapprehended the ordering of steps argument in our Institution Decision.
`
`B. Motivation to combine argument
`Patent Owner also argues that the Board overlooked Patent Owner’s
`argument that the purported motivation to combine—that allowing users to
`place calls as if they were dialing from a standard PSTN phone would be
`desirable—is unsupported by substantial evidence. Reh’g Req. 8–12.
`Specifically, Patent Owner argues that the Institution Decision relies on
`testimony from Petitioner’s declarant, Dr. Houh, and that that declaration
`testimony “do[es] not rely upon any evidence for support.” Id. at 10. Patent
`Owner also argues that the Board overlooked Patent Owner’s argument that
`Dr. Houh’s testimony should be entitled to little or no weight. Id. at 11–12.
`We do not agree that we overlooked Patent Owner’s argument
`regarding the motivation to combine. In the Institution Decision, we
`expressly referenced Patent Owner’s argument that Petitioner’s purported
`reason for combining the references is conclusory and insufficient. Inst.
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`Dec. 22 (citing Prelim. Resp. 37–42). We also determined that for purposes
`of institution, Petitioner’s showing is sufficient. Id. As explained in the
`Institution Decision, Petitioner sufficiently cites either the references
`themselves or Mr. Houh’s testimony to show that each of the references
`teaches telecommunications systems in which VoIP subscribers can place
`calls to a callee on the PSTN, that one of ordinary skill in the art would have
`recognized upon reading Chu ’684 that allowing users to place calls as if
`they were dialing from a standard PSTN phone would have been desirable,
`creating a system capable of supporting a more intuitive and user-friendly
`interface, and that the infrastructure of the Chu ’684 system would support
`dialed digit reformatting based on attributes of the caller as taught by Chu
`’366 or Chen. Id. at 22–23, 29. Patent Owner fails to persuasively show
`that we overlooked or misapprehended Patent Owner’s arguments regarding
`Petitioner’s proffered motivation to combine—which is based on the
`evidence of Mr. Houh’s testimony—particularly given that Mr. Houh (i)
`testifies to his educational background and experience in the field, including
`his “extensive familiarity with systems, networks, architectures, and
`methods related to traditional circuit-switched telecommunications, packet-
`based telecommunications, and systems that merged the two technologies,”
`Ex. 1009 ¶¶ 5–17, Appendix A, and (ii) based on his familiarity with the art,
`provides an overview of the state of the art in 2006, id. ¶¶ 17, 26–34.
`Patent Owner thus fails to establish that we should revisit our
`determination that for institution purposes Petitioner has articulated
`sufficient reasoning with rational underpinning for combining the teachings
`of the references.
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`IV. CONCLUSION
`Because Patent Owner fails to show that we misapprehended or
`overlooked a matter, or abused our discretion, we conclude that Patent
`Owner is not entitled to the relief it seeks.
`
`
`V. ORDER
`
`Accordingly, it is:
`ORDERED that Patent Owner’s request for rehearing is denied.
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`IPR2016-01198
`Patent 9,179,005 B2
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`FOR PETITIONER:
`Adam P. Seitz
`Eric A. Buresh
`Paul R. Hart
`ERISE IP, P.A.
`adam.seitz@eriseip.com
`eric.buresh@eriseip.com
`paul.hart@eriseip.com
`
`
`
`FOR PATENT OWNER:
`Kerry Taylor
`John M. Carson
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2kst@knobbe.com
`2jmc@knobbe.com
`BoxDigifonica@knobbe.com
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