UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.
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`Petitioner,
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`v.
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`VOIP-PAL.COM, INC.,
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`Patent Owner
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`Case No. IPR2016-01198
`U.S. Patent 9,179,005
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`DECLARATION IN SUPPORT PATENT OWNER
`RESPONSE TO INTER PARTES PETITION
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`Voip-Pal Ex. 2013
`IPR2016-01198
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.
`
`Petitioner,
`
`v.
`
`
`
`
`
`VOIP-PAL.COM, INC.,
`
`Patent Owner
`
`
`
`
`Case No. IPR2016-01198
`U.S. Patent 9,179,005
`
`
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`
`
`
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`
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`DECLARATION IN SUPPORT PATENT OWNER
`RESPONSE TO INTER PARTES PETITION
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`Voip-Pal Ex. 2013
`IPR2016-01198
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`
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`IPR2016-01198
`Apple Inc. v. Voip-Pal
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`I, Clay Perreault, declare as follows:
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`1.
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`I was a founder of Digifonica Canada Ltd. (“Digifonica”), which was
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`founded around July 2004 and I was the CEO until December 2005.
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`2.
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`Digifonica developed a voice over IP (“VOIP”) system that allowed
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`voice calls to be placed between two IP phones and between an IP phone and the
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`public switched telephone network (“PSTN”). The Digifonica system utilized
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`multiple geographically distributed “supernodes” which each handled routing and
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`billing functions for a set of IP phones. By June 2005 Digifonica had deployed
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`two supernodes, one in London, UK and one in Vancouver, Canada.
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`3.
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`I am a named inventor on U.S. Patent No. 8,542,815 and U.S. Patent
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`No. 9,179.005. I have reviewed the claims and figures of ‘815 Patent and the ‘005
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`Patent, and I understand the information described in the figures and the subject
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`matter recited in the claims.
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`4.
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`In May and June of 2005, I prepared a document entitled “Next
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`Generation Networks - A Migration Path, Digifonica Voice Over IP Technologies,
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`Technology Overview” (Ex. 2020). This document describes the vision and
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`feature development of the Digifonica system that was being put into operation
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`during the spring and summer of 2005.
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`5.
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`In June 2005 Digifonica
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`retained Smart 421, a company
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`headquartered in Ipswitch, England to perform a high level technical review and
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`IPR2016-01198
`Apple Inc. v. Voip-Pal
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`appraisal of the Digifonica VoIP application software and development processes.
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`I sent an email dated: “6/6/05, 8:53 AM” (Ex. 2004) indicating that a contract with
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`Smart 421 had been signed and that they would be beginning their review. The
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`terms of the engagement was that all information received by Smart 421 regarding
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`Digifonica’s system was to remain confidential.
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`6.
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`In June 2005 I sent numerous documents to a Smart 421 FTP site in
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`connection with their review. I sent an email to John Rutter dated: “6/6/05, 5:37
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`PM” (Ex. 2005). I sent another email to John Rutter dated: “6/15/05, 3:28 PM”
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`(Ex. 2006). These emails refer to documents that I sent to Smart 421.
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`7.
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`John Rutter and Stuart Gare of Smart 421 visited the offices of
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`Digifonica in Vancouver, Canada in June 2005. I and other Digifonica employees
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`demonstrated the operation of our system to John Rutter and Stuart Gare. We
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`demonstrated the ability to place phone calls between two SIP phone devices, on
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`the same or different supernodes, and between a SIP phone device and the PSTN
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`network.
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`8.
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`Smart 421 prepared a 35-page report entitled “Technical Review of
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`Digifonica VoIP System” dated July 5, 2005 (Ex. 2003), which was sent to me in
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`an email from John Rutter dated: “Tue, 5 Jul 2005 17:41:31 +0100” which I
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`subsequently forwarded to Emil Bjorsell and others in an email dated: “Tue, Jul 5,
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`2005 at 4:45 PM” (Ex. 2007). I have reviewed a copy of Ex. 2003 and it appears
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`IPR2016-01198
`Apple Inc. v. Voip-Pal
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`to be the Smart 421 report attached to the email that I received and reviewed in
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`July 2005.
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`9.
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`The RBR platform was software operating on servers within a
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`Digifonica supernode that received call set up information and responded with call
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`routing messages. Digifonica would periodically release or roll out new versions
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`of RBR software to operate on the “supernodes”.
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`10.
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`I received an email from Emil Bjorsell dated: “Mon, Jun 6, 2005 at
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`11:33 AM” (Ex. 2027) indicating that Version 361 of the RBR software had been
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`deployed to the Vancouver and London supernodes. Based on this email and my
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`recollection of our deployment procedures, I’m certain that Version 361 of the
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`RBR software was in operation on the Vancouver and London supernodes on June
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`6, 2005. It’s also the case that since the visit from Smart 421 occurred after June 6,
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`2005, the demonstration we gave them would have had all of the features that are
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`present in Version 361 of the RBR software.
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`11.
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`I received an email from Samantha Edwards dated: “Mon, Aug 8,
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`2005 at 7:12 PM” (Ex. 2036) indicating that Version 554 of the RBR software
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`would be released on August 9, 2005. I received an email from Samantha Edwards
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`dated: “Wed, Aug 24, 2005 at 4:02 PM” (Ex. 2019) indicating that Version 694 of
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`the RBR software would be released on August 25, 2005.
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`IPR2016-01198
`Apple Inc. v. Voip-Pal
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`12.
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`I am very familiar with how the Digifonica system operated in mid-
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`2005, including the operation of the RBR applications on the servers. Digifonica’s
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`RBR platform performs the overall functions described in the ‘815 Patent and the
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`‘005 Patent as the Routing Controller (16) and illustrated in Fig. 1. The flow chart
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`illustrated in Fig. 8A – 8D closely corresponds to functions performed by
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`Digifonica’s RBR server as it operated in June 2005.
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`13. The Digifonica system established a user-specific profile for each user
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`containing attributes such as an internal routing code and if applicable for PSTN
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`routing, associated international dialing digits (IDD), national dialing digits (NDD)
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`and area code. When a call was placed, the RBR server received caller and callee
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`identifiers and used the caller identifier was used to locate the profile associated
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`with the caller containing the caller attributes. The caller attributes were then
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`matched against the callee identifier (the dialed digits) to create a reformatted
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`callee identifier. Based on the matching setup and a lookup of the reformatted
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`callee identifier in a database of Digifonica subscribers, a call was classified as a
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`private, or on-net call if the destination was another Digifonica IP phone, and
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`classified as a public, or off-net call if the destination was the PSTN. The
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`Digifonica system was capable of classifying a call as an on-net call after a user
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`had dialed a PSTN number by first matching the dialing string according to the
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`caller’s profile, and then checking to see if the destination number was mapped to a
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`IPR2016-01198
`Apple Inc. v. Voip-Pal
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`callee and associated Digifonica IP phone. Once a call was classified, appropriate
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`routing messages were generated so that the call would be completed as desired.
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`All of these features were incorporated into the Digifonica system that was in
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`operation by June 2005, including Version 361, and continued through 2005.
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`These above-described features of the Digifonica system, which Version 361 of the
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`RBR software performed, meets the functions laid out in the claims of the ‘815
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`Patent and the ‘005 Patent.
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`14. All of these features of Version 361 were incorporated into the
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`Digifonica system that was deployed and fully operational by June 2005, which
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`confirmed that of Version 361 was functioning as intended and successfully
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`performed the call routing to both on-net destinations and to the PSTN.
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`15. Throughout 2005, I and the other inventors of the ‘815 Patent and the
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`‘005 Patent continued working on this RBR system, including creating further
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`software updates and deploying these updates.
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`16.
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`I declare under penalty of perjury under the laws of the United States
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`of America that the foregoing is true and correct.
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`By:
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`Dated: February 8, 2017
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`-5-
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