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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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`APPLE INC.
`Petitioner
`v.
`VOIP-PAL.COM, INC.
`Patent Owner
`
`
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`
`
`Case No. IPR2016-01198
`Patent 9,179,005
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`PETITIONER’S REPLY IN SUPPORT OF ITS
`REQUEST FOR REHEARING
`
`PURSUANT TO 37 C.F.R. § 42.71(d)
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`TABLE OF CONTENTS
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`
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`I. Patent Owner Ignores the FWD’s Three Fundamental Defects .................. 1
`II. The Final Written Decision Did Not Comprehend The Proposed
`Combinations, As Evidenced By Its Adopting Patent Owner’s Flawed
`“Deficiency” Argument. ......................................................................................... 3
`III. Attempting to Create Support For The Final Written Decision, Patent
`Owner Now Argues Chu ’684 Is Not Deficient. ................................................... 4
`IV. Patent Owner’s Opposition Exemplifies An Ongoing Effort To Confuse
`The Proposed Grounds .......................................................................................... 8
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`I.
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`Patent Owner Ignores the FWD’s Three Fundamental Defects
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`In requesting rehearing, Petitioner demonstrated that the Final Written
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`Decision (“FWD”) reflects a fundamental misunderstanding of the Proposed
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`Combinations. Patent Owner has no response to three critical points:
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`First, the Replacement Panel did not understand that in the Proposed
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`Combinations, Chu ’684 receives the very E.164-compliant numbers that it
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`processes, and that the E.164 numbers that Chu ’684 receives and processes were
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`reformatted from short-form numbers according to the teachings of the Secondary
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`References. Paper 71, Motion, at 8-9. The Replacement Panel performed a flawed
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`analysis on a flawed understanding.
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`Second, this problem appears to have arisen because the Replacement Panel
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`overlooked Petitioner’s Reply brief and other post-Response filings and arguments.1
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`Patent Owner focuses on the Replacement Panel’s boilerplate assertions that it
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`“considered the record that has developed” and rendered its opinions “[a]fter careful
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`review of the record at hand.” Paper 73, Opposition at 4. But Patent Owner does not
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`identify any portion of the FWD that suggests the Replacement Panel actually
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`
`
` 1
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` The Replacement Panel also overlooked numerous post-Response filings and
`arguments where the combination was again explained. For example, Petitioner’s
`Response to Patent Owner’s Motion to Exclude explained the combination. Paper
`44, at 8-11. Petitioner also devoted the first 25 slides of its Demonstratives and the
`Oral Argument to explaining the combination. Ex. 1018 (Petitioner’s
`Demonstratives); Paper 52 (Hearing Transcript), at 4-23.
`
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`1
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`considered Petitioner’s Reply to explain the combination. Nor does Patent Owner
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`dispute that the Reply provided a very simple restatement of the purpose and nature
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`of the Proposed Combinations. Paper 71, Motion at 7-8 (citing Paper 34, Reply at
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`15-16). Had the Replacement Panel considered the Reply, it would not have operated
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`from a flawed understanding of the Proposed Combinations.
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`Third, the Replacement Panel adopted Patent Owner’s mischaracterization of
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`the motivations to combine. As a result, the FWD ignored the express motivations
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`provided by the Secondary References themselves. Paper 71, Motion at 14-17.
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`Patent Owner attempts to rewrite the FWD by contending that because it included
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`citations to the portions of the Secondary References discussing the motivation, the
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`Replacement Panel must have considered them. Paper 73, Opposition at 10-11.
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`These citations, however, are merely contained in the background summaries of
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`references in the FWD. The FWD does not indicate that the Replacement Panel
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`considered these teachings. Instead, it appears they were ignored.
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`Individually, each of the above three defects are sufficiently problematic to
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`justify rehearing. Together, they provide a roadmap to how the Replacement Panel
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`failed to conduct the correct analysis. The Replacement Panel’s failure to apprehend
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`the motivations to combine by accepting Patent Owner’s representation of the same
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`(and ignoring Petitioner’s Reply) was fatal to its analysis.
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`2
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`II.
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`The Final Written Decision Did Not Comprehend The Proposed
`Combinations, As Evidenced By Its Adopting Patent Owner’s
`Flawed “Deficiency” Argument.
`Patent Owner defends the FWD based almost entirely on two paragraphs:
`
`Notably absent, however, from both the Petition and Dr. Houh’s
`testimony is underlying evidentiary support for the proposition that one
`of ordinary skill in the art would have regarded Chu ’684’s teachings
`as deficient. Indeed, Petitioner’s statement and Dr. Houh’s bare
`testimony that “[u]pon reading the disclosure of Chu ’684,” a person
`of ordinary skill in the art would have sought to improve that very
`disclosure seemingly warrants underlying explanation or citation, yet
`no adequate support in that regard is supplied.
`Moreover, this panel has the benefit of Dr. Mangione-Smith’s
`testimony, in which he expresses disagreement with the positions noted
`above taken by Dr. Houh and Petitioner and highlights the potential
`inadequacies in that respect. See Ex. 2016 ¶¶ 65–67. Indeed, we credit
`Dr. Mangione-Smith’s view that Dr. Houh does not explain
`adequately the nature of the deficiency in Chu ’684 that is intended
`to be addressed. Id. ¶ 66.
`
`FWD, at 19-20
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`(emphasis added). These paragraphs demonstrate
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`the
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`misapprehension the Board adopted from Patent Owner. The Replacement Panel
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`found that Dr. Houh (and Petitioner) had not adequately explained the nature of the
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`deficiency that was intended to be addressed by the addition of the Secondary
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`References. By its own admission, the Replacement Panel did not understand the
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`nature or purposes of the Proposed Combinations because it accepted Dr. Mangione-
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`Smith’s flawed understanding. The confusion inserted by Patent Owner is exactly
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`3
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`why Petitioner restated the precise nature of the Proposed Combinations and the role
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`of the Secondary References in its Reply Brief. Setting aside the Petition’s disclosure
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`of the Proposed Combinations, which the Original Panel had no difficulty
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`understanding, had the Replacement Panel simply considered the Reply, it too would
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`have a fully adequate explanation of the role of the Secondary References.
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`III. Attempting to Create Support For The Final Written Decision,
`Patent Owner Now Argues Chu ’684 Is Not Deficient.
`Patent Owner extends the Replacement Panel’s statements beyond the actual
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`findings of the FWD, suggesting for the first time that Chu ’684 supports short form
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`dialing and advocating that this supports the FWD’s conclusion.2 Patent Owner
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`repeatedly argues that Chu ’684 permits short form dialing as if on a PSTN landline:
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`Dr. Mangione-Smith opined in Ex. 2016 ¶ 66, based in part on
`accompanying extensive evidence of how PBX systems worked, that. .
`. PBX phone systems such as Chu ‘684 provided all the features of
`ordinary phones connected to the PSTN . . . and that [] in Chu ‘684,
`users would dial PSTN public numbers based on the location of the
`customer premises 105 (i.e., dialing according to the dialing
`conventions of [that] geographic area).
`. . .
`Chu ‘684’s PBX would allow users to dial PSTN numbers based on
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`
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` 2
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` Interestingly, Patent Owner expressly stated in its Preliminary Response (“POPR”)
`that Chu ’684 does not disclose number reformatting necessary to permit short form
`dialing. Paper 5, POPR at 23 (acknowledging Chu ‘684 has no “comparable
`disclosure” to the ’005 Patent’s dialed digit reformatting).
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`4
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`the dialing conventions of their location.
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`Paper 73, Opposition at 8 (emphasis added internal quotations and emphasis
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`removed).
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`[I]f the reason some IP phones do not inherently support short form
`numbers is that they are not tied to any specific location, then,
`clearly, Chu ‘684 avoids this problem. The Panel expressly cited
`Fig. 2 of Chu ‘684, which shows the PBX is tied to a specific location,
`namely, Customer Premises 105, which in turn, is hardwired to a
`Central Office 205. FWD at 13. The Panel also pointed out that a soft-
`switch 220 at the central office 205 keeps track of the VPN that a
`location belongs to.
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`Id. at 9-10 (emphasis added internal quotations and emphasis removed).
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`In attempting to capitalize on the Replacement Board’s failure to understand
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`the “deficiency” being addressed by the Proposed Combinations, Patent Owner now
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`imposes a burden on the Proposed Combinations that finds no support in the FWD
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`(or common sense). There is no requirement that a Petitioner must prove a technical
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`deficiency in the primary reference with respect to a particular limitation before
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`relying on a secondary reference that provides a more clear teaching of a particular
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`claim limitation. A petitioner is entitled to rely on a secondary reference for a
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`limitation where the petitioner is not satisfied with the teachings of the primary
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`reference for that limitation, and the Board should consider the Ground as presented.
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`The Proposed Combinations are premised on the proposition that short form
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`(e.g., seven-digit) dialing as if on a PSTN landline is preferable, that such short form
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`5
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`dialing is not a feature of VoIP systems, and that reformatting dialed digits (using
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`caller attributes) enables short form dialing in VoIP systems. There is no dispute that
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`Chu ’684 is a VoIP system, but its teachings as to short form dialing or dialed digit
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`reformatting, to the extent they exist at all, are not clear. Accordingly, Chu ’684 was
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`not relied upon in any way for its disclosure of dialed digit reformatting (the step
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`necessary to permit short form dialing). The Petition utilized the Secondary
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`References specifically for their teaching of this concept. It is thus irrelevant whether
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`Chu ’684 itself contemplated reformatting short form dialing, either expressly or
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`inherently. Petitioner was not relying on any such teachings from Chu ’684.
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`Importantly, Petitioner was not relying on a technical deficiency in Chu ’684
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`to establish a motivation to combine the references. Here too the Replacement Panel
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`erred by accepting Patent Owner’s summary of Petitioner’s motivation to combine
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`rather than analyzing the actual proffered motivations to combine. Indeed, as the
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`FWD stated in the first paragraph noted above, the Replacement Panel could not
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`understand how one of skill would read Chu ’684 itself and be motivated to improve
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`Chu ’684. FWD at 19. The Petition’s motivation to combine references to utilize
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`reformatting of short form dialing did not come from Chu ’684 at all, but was based
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`on an affirmative motivation expressly provided in the Secondary References
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`themselves. Paper 2, Petition at 14, 39; see also Paper 34, Reply at 15-16. This
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`motivation from the Secondary References exists whether or not Chu ’684 provided
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`some disclosure of reformatting short form dialing of its own. If Chu ’684 does not
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`6
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`disclose reformatting of short form dialing, as Petitioner contends, the motivation
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`from the secondary references supplied the motivation to provide that functionality.
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`But even if Chu ’684 did suggest reformatting short form dialing, the motivation
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`from the secondary references still supplied the motivation to clearly provide for that
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`functionality. Moreover, if Chu ’684 fully teaches reformatting of short form dialing
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`as Patent Owner now contends, there would be little need for additional motivation
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`to combine since Chu ’684 would itself have already suggested the combination.
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`Patent Owner’s new “deficiency” argument actually supports the Proposed
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`Combinations. Patent Owner’s new position that Chu ’684 suggests short form
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`dialing compatibility does not demonstrate the lack of compatibility between Chu
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`’684 and the Secondary References. Rather, it strongly supports the conclusion that
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`the Proposed Combination of teachings is obvious. Accepting Patent Owner’s
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`position, the Secondary References provide an express and detailed description for
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`the functionality that Patent Owner argues is already inherent in Chu ’684. This
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`substantive overlap confirms the proffered motivation to combine.
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`Finally, Patent Owner makes much of the Replacement Panel’s reliance on
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`Dr. Mangione-Smith’s testimony and even criticizes Petitioner for having submitted
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`only an initial declaration from Dr. Houh. But Dr. Mangione-Smith’s declaration did
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`not advance any technically relevant testimony on the actual combination to which
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`Dr. Houh needed to respond. Dr. Mangione-Smith was technically irrelevant
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`because he is not a telephony expert. Paper 34, Reply at 19-21; Ex. 52 (Hearing
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`7
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`Transcript), at 17-18. The only actual telephony expert in this case was Petitioner’s
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`expert, Dr. Houh. Dr. Mangione-Smith also was irrelevant because his declaration
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`advanced only mischaracterizations of the Proposed Combinations. Thus, the
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`evidence from the Petition did not require any further development. Rather,
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`Petitioner addressed the mischaracterizations in its Reply and, had it been
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`considered, it would have prevented the Replacement Panel’s error in following
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`Dr. Mangione-Smith down an irrelevant path analyzing a combination and
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`motivations that were not proposed.
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`IV. Patent Owner’s Opposition Exemplifies An Ongoing Effort To
`Confuse The Proposed Grounds
`Patent Owner’s Opposition continues with its attempts to mischaracterize the
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`Proposed Combinations and evidence in support.
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`For example, Patent Owner wholly misconstrues Dr. Houh’s testimony
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`directed to the benefit of the proposed combintions in an attempt to manufacture a
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`problem with Chu ’684. Specifically, Patent Owner paraphrases Dr. Houh’s
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`explanation (1) that the benefit of the Proposed Combinations is that they permit
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`short form (e.g., 7-digit) dialing and (2) that he knows short form dialing is
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`perferable, in part, because he lived in the Boston area when multiple overlapping
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`area codes were added, preventing the use of 7-digit short form dialing. Paper 73,
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`Opposition at p. 10 (citing Ex. 2044, Houh Trans. At 157:1-158:20). Following this
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`paraphrasing, Patent Owner concludes, “Dr. Houh assumed that Chu ‘684’s PBX
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`system itself (before any reformatting step is added), would have forced the user to
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`8
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`use ten-digit dialing in the Boston area—but this means that Dr. Houh was assuming
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`that Chu ‘684’s PBX would not have required full long-form E.164 numbers to be
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`dialed.” Id. This conclusion bears no resemblance to the actual testimony and, as
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`noted in the preceding section, it has no relevance to the Proposed Combination.
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`A second example of Patent Owner confusing the record is its attempt to
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`portray a sequencing issue with the Proposed Combinations. Despite having twice
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`been rejected by the Original Panel, Patent Owner once again attempts to
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`mischaracterize Petitioner’s reliance on Chu ’684 for its teaching of locating a caller
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`dialing profile. As explained in Petitioner’s Motion, “the Secondary References
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`provide the user-specific caller profiles and . . . Chu ’684 includes the infrastructure
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`necessary to make use of the Secondary Reference caller profiles.” Paper 71, Motion
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`at 11-12. Namely, because Chu ’684 maintained user-specific information, that user-
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`specific information could be used to lookup the caller-specific profiles from the
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`Secondary Refereces. Id. Patent Owner’s Opposition argues that Petitioner’s
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`evidence, including Dr. Houh’s opinions, are limited to the infrastructure of soft-
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`switch 220. Paper 72, Opposition at 18-19. With this mischaracterization of the
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`evidence, Patent Owner suggests that reliance solely on the soft-switch infrastructure
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`supports the sequencing issue on which the Replacement Board relied in ruling in
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`Patent Owner’s favor. Id. In fact, neither the Petition nor Dr. Houh ever stated or
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`suggested that the infrastructure relied upon was limited to soft-switch 220. Instead,
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`Dr. Houh explained that the “system described by Chu ’684 must necessarily use
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`9
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`unique subscriber-specific information,” noting that “multiple subscribers may use
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`the same server.” Ex. 1009, Houh Dec’l at ¶45; see also, Paper 2, Petition at 18
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`(“because multiple subscribers can be associated with a single server, a subscriber’s
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`dial plan, in addition to an ID of the server, must necessarily include unique
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`subscriber-specific information”). To be sure, the soft-switch 220 is cited as
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`supporting Dr. Houh’s conclusion that subscriber-specific information is available
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`in the Chu ’684 system such that caller-specific profiles may be looked up, but there
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`is nothing in Dr. Houh’s declaration or the Petition that limits the relied-upon
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`infrastructure to soft-switch 220 as Patent Owner argues.
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`Dated: January 29, 2019
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`
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`Respectfully submitted,
`
`/s/ Adam P. Seitz
`Adam P. Seitz, Reg. No. 52,206
`Eric A. Buresh, Reg. No. 50,394
`ERISE IP, P.A.
`7015 College Blvd., Suite 700
`Overland Park, KS 66211
`(913) 777-5600 Phone
`(913) 777-5601 Fax
`eric.buresh@eriseip.com
`adam.seitz@eriseip.com
`
`Paul R. Hart, Reg. No. 59,646
`ERISE IP, P.A.
`5600 Greenwood Plaza Blvd., Suite 200
`Greenwood Village, CO 80111
`(913) 777-5600 Phone
`(913) 777-5601 Fax
`paul.hart@eriseip.com
`ATTORNEYS FOR PETITIONER
`
`10
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`CERTIFICATE OF SERVICE ON PATENT OWNER
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`Pursuant to 37 C.F.R. §§ 42.6(e), the undersigned certifies that on January 29,
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`2019, a true and correct copy of this PETITIONER’S REPLY IN SUPPORT OF ITS
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`REQUEST FOR REHEARING UNDER 37 C.F.R. § 42.71(d) was served on the
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`counsel for Patent Owner by electronic means at the following addresses of record:
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`
`
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`
`
`Kerry Taylor, Reg. No. 43,947
`2kst@knobbe.com
`John M. Carson, Reg. No. 34,303
`2jmc@knobbe.com
`Knobbe, Martens, Olson & Bear, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`858-707-4000 Phone
`858-707-4001 Fax
`
`Kevin N. Malek
`kevin.malek@malekmoss.com
`MALEK MOSS PLLC
`340 Madison Avenue, 19th Floor
`New York, NY 10173
`Tel.: +1-212-812-1491
`Tel.: +1-855-291-7407
`Fax: +1-561-910-4134
`
`
`Respectfully submitted,
`
`BY:
`
`/s/ Paul R. Hart
`Paul R. Hart, Reg. No. 59,646
`
`
`
`ATTORNEY FOR PETITIONER
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`11
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