IPR2016-01198
`Apple v. Voip-Pal
`
`I.
`
`Comparison of Petition at pp. 15-17 (Ground 1)
`With the Petition at pp. 39-41 (Ground 2)
`
`Petition at pp. 39-41
`(Chu ‘684 + Chen argument)
`There
`is
`significant overlap
`
`between Chu ’684 and Chu ’366Chen.
`Both
`references
`teach
`telecommunications systems in which
`VoIP subscribers can place calls to a
`customer on the public PSTN. Compare
`Ex. 1006, Chu ’684 at 8:65-9:1 (“At
`step 608, after receiving all the dialed
`digits from the phone 101, server 110
`consults
`its dial plan
`to determine
`whether the call is local, to another on-
`net phone, or to a phone that is on the
`PSTN.”) with Ex. 1007, Chu ’366 at
`14:30-33 (“[T]here is shown1008, Chen
`at Fig. 5 (Illustrating a system for
`communications between a computing
`202
`environment
`including
`the
`application program according to the
`present systemVoIP customer “SIP
`Phone,” external number Translator,
`“PSTN Gateway, and a PSTN telephone
`216.”Switch). Both references also teach
`a process in which dialed digits and
`caller attributes are used to determine
`where
`the call should be
`routed.
`Compare Ex. 1006, Chu ’684 at 8:65-
`9:1 (“At step 608, after receiving all the
`dialed digits from the phone 101, server
`110 consults its dial plan to determine
`whether the call is local, to another on-
`net phone, or to a phone that is on the
`PSTN.”) with Ex. 1007, Chu ’3661008,
`Chen at Fig. 6.
`
`
`
`
`Petition at pp. 15-17
`(Chu ‘684 + Chu ‘366 argument)
`There
`is
`significant overlap
`
`between Chu ’684 and Chu ’366. Both
`references
`teach
`telecommunications
`systems in which VoIP subscribers can
`place calls to a customer on the public
`PSTN. Compare Ex. 1006, Chu ’684 at
`8:65-9:1 (“At step 608, after receiving
`all the dialed digits from the phone 101,
`server 110 consults its dial plan to
`determine whether the call is local, to
`another on-net phone, or to a phone that
`is on the PSTN.”) with Ex. 1007, Chu
`’366 at 14:30-33 (“[T]here is shown a
`system for communications between a
`computing environment 202 including
`the application program according to the
`present system and a PSTN telephone
`216.”).
`
`
`
`Both references also teach a process in
`which dialed digits and caller attributes
`are used to determine where the call
`should be routed. Compare Ex. 1006,
`Chu ’684 at 8:65-9:1 (“At step 608,
`after receiving all the dialed digits from
`the phone 101, server 110 consults its
`dial plan to determine whether the call is
`local, to another on-net phone, or to a
`phone that is on the PSTN.”) with Ex.
`1007, Chu ’366 at Fig. 6.
`
`
`
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`Voip-Pal Ex. 2001
`IPR2016-01198
`
`

`
`expressly
`references
`Finally, both
`reference E.164 as an
`international
`standard dial plan. Compare Ex. 1006,
`Chu ’684 at 3:59-61 (“[E]ach IP phone
`[may be] assigned
`its own E.164
`number (the international standard dial
`plan) and receiving calls from the PSTN
`1007, Chu
`directly.”) with Ex.
`’3661008, Chen at 1:18-20¶ 006
`(“E.164 [ ] provides a uniform means
`for identifying any telephone number in
`the world to any telephony user in the
`worldis
`an
`ITU-T
`(International
`Telecommunication
`Union
`Telecommunication
`Standardization
`Sector) recommendation that defines the
`international public telecommunication
`numbering plan.”).
`
`It would have been obvious to
`one of skill in the art to modify the
`system described by Chu ’684 with the
`specific
`dialed
`digit
`reformatting
`teachings of Chu ’366Chen. Given that
`the system of Chu ’684 already contains
`all the infrastructure needed to support
`such reformatting, the modification to
`Chu ’684 would be straightforward, not
`requiring undue experimentation, and
`would produce predictable results. Upon
`reading the disclosure of Chu ’684, a
`person of ordinary skill in the art would
`have recognized that allowing users to
`place calls as if they were dialing from a
`standard PSTN phone would be
`desirable, creating a system capable of
`supporting a more intuitive and user-
`friendly interface. See Ex. 1009, Houh
`Decl. at ¶¶ 35-3940-44.
`
`IPR2016-01198
`Apple v. Voip-Pal
`
`expressly
`references
`Finally, both
`reference E.164 as an
`international
`standard dial plan. Compare Ex. 1006,
`Chu ’684 at 3:59-61 (“[E]ach IP phone
`[may be] assigned
`its own E.164
`number (the international standard dial
`plan) and receiving calls from the PSTN
`directly.”) with Ex. 1007, Chu ’366 at
`1:18-20 (“E.164 [ ] provides a uniform
`means for identifying any telephone
`number in the world to any telephony
`user in the world.”).
`
`
`
`It would have been obvious to
`
`one of skill in the art to modify the
`system described by Chu ’684 with the
`specific
`dialed
`digit
`reformatting
`teachings of Chu ’366. Given that the
`system of Chu ’684 already contains all
`the infrastructure needed to support such
`reformatting, the modification to Chu
`’684 would be straightforward, not
`requiring undue experimentation, and
`would produce predictable results. Upon
`reading the disclosure of Chu ’684, a
`person of ordinary skill in the art would
`have recognized that allowing users to
`place calls as if they were dialing from a
`standard PSTN phone would be
`desirable, creating a system capable of
`supporting a more intuitive and user-
`friendly interface. See Ex. 1009, Houh
`Decl. at ¶¶ 35-39.
`
`
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`IPR2016-01198
`Apple v. Voip-Pal
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`
`
`One of ordinary skill would thus
`appreciated
`that
`these
`have
`improvements to Chu ’684 could be
`achieved by merely programming the
`system of Chu ’684 to analyze the
`dialed digits and reformat as necessary
`using caller attributes such as national
`and area code. Such modifications are
`simply a combination of the system of
`’684 with elements of Chu
`Chu
`that would have yielded
`’366Chen
`predictable results without requiring
`undue experimentation. Id. at ¶ 3843.
`Thus, it would have been natural and an
`application of nothing more
`than
`ordinary skill and common sense to
`combine Chu ’684 with the number
`reformatting of Chu ’366Chen. Id..
`Therefore, the Challenged Claims are
`unpatentable under §103(a) as obvious
`over Chu
`in view of Chu
`’684
`’366Chen, as shown in the charts below.
`
`
`
`One of ordinary skill would thus
`appreciated
`that
`these
`have
`improvements to Chu ’684 could be
`achieved by merely programming the
`system of Chu ’684 to analyze the
`dialed digits and reformat as necessary
`using caller attributes such as national
`and area code. Such modifications are
`simply a combination of the system of
`Chu ’684 with elements of Chu ’366
`that would have yielded predictable
`results without
`requiring
`undue
`experimentation. Id. at ¶ 38. Thus, it
`would have been natural and an
`application of nothing more
`than
`ordinary skill and common sense to
`combine Chu ’684 with the number
`reformatting of Chu ’366. Id. Therefore,
`the Challenged Claims are unpatentable
`under §103(a) as obvious over Chu ’684
`in view of Chu ’366, as shown in the
`charts below.
`
`
`
`
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`IPR2016-01198
`Apple v. Voip-Pal
`
`II. Comparison of Petition at pp. 17-36 (Ground 1)
`With the Petition at pp. 41-60 (Ground 2)
`
`
`Right-hand column compares:
`
`the claim chart for Chu ‘684 + Chu ‘366 (Ground 1) with
`the claim chart for Chu ‘684 + Chen (Ground 2).
`
`Red strikethrough represents text in Ground 1, but not in Ground 2.
`Blue underline represents text in Ground 2, but not in Ground 1.
`[underlining in original omitted]
`
`
`
`
`
`US Patent
`9,179,005
`1. A process for producing
`a routing message for
`routing communications
`between a caller and a
`callee in a communication
`system, the process
`comprising:
`
`(a) using a caller identifier
`associated with the caller to
`locate a caller dialing
`profile comprising a
`
`Obvious over Chu ’684 (Ex. 1003)
`in view of Chu ’366Chen (Ex. 1004)1005)
`Chu ’684 teaches producing a routing message for
`routing telephone calls (“communications”) between
`callers and callees in a telecommunications system.
`
`Chu ’684 describes “a novel method for establishing
`and managing voice call traffic in an VoIP IP virtual
`private network” including “determining one or more
`IP addresses to egress the communication from the
`originating point to the terminating point.” Ex. 1006,
`Chu ’684 at 2:34-44.
`
`“An apparatus for IP-based VPN communications
`includes at least one soft-switch and at least one
`packet switch having an interface to said at least one
`soft-switch. The packet switch has a VPN processing
`module for selectively establishing a VPN based on a
`selection of originating and terminating IP addresses
`of voice calls passed to the at least one soft-switch
`and at least one packet switch. . . . The apparatus
`may further include a PSTN gateway connected to a
`gateway soft-switch and said at least one soft-switch
`for processing “off-net” calls.” Id. at 2:51- 64; see
`also id. at 1:9-13.
`Chu ’684 teaches using a subscriber’s identifying
`information (e.g., the subscriber’s E.164 telephone
`number) (“a caller identifier”) to access a dial plan
`that includes calling attributes of the subscriber.
`
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`IPR2016-01198
`Apple v. Voip-Pal
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`plurality of calling
`attributes associated with
`the caller;
`
`(b) when at least one of
`
`
`“The soft-switch is the intelligence of the system. It
`contains all the information regarding the
`subscribers' VPNs. For example, it keeps track of the
`VPN that a location belongs to, the dial plans of the
`subscribers, the VPN identifier for an VPN (or a
`particular interface) and the like.” Id. at 4:59-63.
`
`“[U]pon receipt of the SIP “invite” message from the
`server 110, the soft-switch 220 consults the dial plan
`for this subscriber. The dial plan to use can be
`determined from the ID of the server 110.” Id. at
`9:30-33.
`
`“Many subscribers, each with multiple locations, can
`be served by the same packet-switch/soft-switch
`network. Each subscriber can use their the [sic] own
`IP address plan as well as their own dial plan.” Id. at
`12:60-66; see also id. at 3:56-64 (noting each IP
`phone can be assigned its own E.164 number and IP
`address); Ex. 1009, Houh Declaration at ¶ 45 (noting
`that because multiple subscribers can be associated
`with a single server, a subscriber’s dial plan, in
`addition to an ID of the server, must necessarily
`include unique subscriber-specific information such
`as an E.164 telephone number, globally unique
`database key, or the like).
`
`Additionally, Chu ’366Chen teaches establishing a
`caller dial plan that users may set up “call origin
`profiles” that include calling includes attributes of
`the calling party such as geographic location,
`country code, and area code.
`
`Ex. 1007, Chu ’366 at 2:9-15 (describing call origin
`location profiles).1008, Chen at ¶ 0033 (describing
`dial plan); see also id. at Fig. 6 (illustrating the
`caller’s country code and area code prepended to
`dialed digits to create an E.164 compliant number).
`As illustrated in Fig. 8B of the ’005 Patent, an initial
`
`-5-
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`IPR2016-01198
`Apple v. Voip-Pal
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`said calling attributes and
`at least a portion of a callee
`identifier associated with
`the callee meet private
`network classification
`criteria, 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;
`and
`
`(c) when at least one of
`said calling attributes and
`at least a portion of said
`callee identifier meet a
`public network
`classification criterion,
`producing a public network
`routing message for receipt
`by the call controller, said
`public network routing
`message identifying a
`gateway to the public
`network.
`
`match between the dialed digits (“callee identifier”)
`and calling attributes determines whether the dialed
`digits must be reformatted in order to identify the
`intended callee. Once reformatted (e.g., NDD
`removed and caller country code prepended), the
`reformatted callee identifier is used to determine
`whether the callee is a subscriber on the private
`network or is a customer on the public network, i.e.,
`whether “public network classification criteria” or
`“private network classification criteria” are met.
`The combination of Chu ’684 and Chu ’366Chen
`performs this precise process.
`
`Chu ’366Chen teaches reformatting dialed digits to
`generate an E.164 compliant compliant callee
`identifier when dialed digits “match” caller
`attributes, e.g., when the dialed digits equal the
`national dialing length of the caller’s origin
`designationan NDD prefix in the caller’s dial plan.
`
`Id. at Abstract (dialed digits are reformatted “as
`E.164 compliant telephone numbers”).
`
`“[A] user is able to enter telephone numbers for VoIP
`telephone calls as they would according to a
`traditional telephone numbering plan for land-line
`telephone calls. . . . The E.164 formatting engine
`receives the entered phone number and retrieves the
`call origin location.” Id. at 1:67-2:20 (emphasis
`added); see also id. at 2:46-53.
`
`“In step 172, if the number of digits entered in a
`telephone number equals the national length of
`telephone numbers in the country of the call origin
`location (e.g., ten digits in the United States), the
`engine 102 interprets this as a call somewhere within
`the country of the designated call origin location.
`Accordingly, in step 174, the engine 102
`concatenates the E.164 prefix, the country code for
`the country of the designated call origin location and
`
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`IPR2016-01198
`Apple v. Voip-Pal
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`the entered telephone number to form a fully
`formatted E.164 telephone number.” Id. at 2:14-22
`(emphasis added).“In the present invention, each
`translation function has a corresponding dial plan,
`and each dial plan has the following components
`needed by either the translation-1 or the translation-
`2: (1) IDD prefix, (2) NDD prefix, (3) Country code,
`and (4) Area code.” Id. at ¶ 0033; ; see also id. at ¶¶
`0035-0040
`
`Compare Id.id. at Fig. 6 (illustrating numerous
`number match and reformatting scenarios based on
`matching, including, e.g., Cells 606-607 where E.164
`compliant number created by removing NDD prefix
`and prepending caller’s country code when dialed
`digits to caller attributesequal NDD prefix) with Ex.
`1001, ’005 Patent at Fig. 8B (same). at Cells 380-
`388).
`
`Once the callee identifier ishas been reformatted,
`Chu ’684 determines whether the callee is a private
`packet network subscriber or a public PSTN
`customer (i.e., whether the call “meets public
`network classification criteria” or “private network
`classification criteria”).
`
`“At step 608, after receiving all the dialed digits from
`the phone 101, server 110 consults its dial plan to
`determine whether the call is local, to another on-net
`phone, or to a phone that is on the PSTN.” Ex. 1006,
`
`Chu ‘’684 at 8:65-9:1.
`
`Chu ’684 also teaches generating (1) a private
`network routing message identifying an IP address of
`the egress packet switch (“address, on the private
`network, associated with the callee”) when the call is
`classified as private and (2) a public network routing
`message identifying a gateway to the public PSTN
`when the call is classified as public.
`
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`24. The process of claim 1,
`further comprising causing
`the private network routing
`message or the public
`network routing message to
`be communicated to a call
`controller to effect routing
`of the call.
`
`
`“At step 610, upon receipt of the SIP “invite”
`message from the server 110, the soft-switch 220
`consults the dial plan for this subscriber. The dial
`plan to use can be determined from the ID of the
`server 110. In this example, the call is to another on-
`net phone in another location. From the database
`associated with the dial plan, soft-switch 220
`determines the following: (1) the IP address of the
`egress packet switch; (2) the connection to use as the
`next hop for the bearer traffic; and (3) the IP address
`of the soft-switch of the next hop packet switch.
`Once the soft-switch 220 has determined this
`information, it sends H.248 commands to packet
`switch 210.” Id. at 9:30-49 (emphasis added).
`
`“For connectivity to the PSTN, gateways 1302 are
`deployed in the network 200. For an outgoing call
`from an originating point phone (IP phone 101 in
`FIG. 13), the operation is very similar to that of an
`intra-net call. From the dialed digits (of a destination
`phone that is being called, PSTN phone 1301),
`ingress softswitch 220, determines that this call is for
`the PSTN. From the same dialed digits, the soft-
`switch also determines the egress PSTN gateway
`1302 and its controlling soft-switch 1304. The
`ingress soft-switch 220 will proceed the call
`signaling and control as described previously. The
`gateway 1302 acts as an “egress packet switch”
`having modifications.” Id. at 13:12-34 (emphasis
`added).
`Chu ’684 teaches a soft-switch that sends routing
`messages to a second soft-switch (“call controller”)
`which controls the egress packet switch for a private
`VoIP call and the PSTN gateway for call terminating
`to the public PSTN.
`
`“The soft-switch 220, based on requests from the
`server 110 or peer soft-switches (explained in greater
`detail below), sends the appropriate commands to
`
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`IPR2016-01198
`Apple v. Voip-Pal
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`25. A non-transitory
`computer readable medium
`encoded with codes for
`directing a processor to
`execute the method of
`claim 1.
`
`26. A call routing controller
`apparatus for producing a
`routing message for routing
`communications between a
`caller and a callee in a
`communication system, the
`apparatus comprising:
`(a) at least one processor
`operably configured to: use
`a caller identifier associated
`with the caller to locate a
`caller dialing profile
`comprising a plurality of
`calling attributes associated
`with the caller;
`(b) when at least one of
`said calling attributes and
`at least a portion of a callee
`identifier associated with
`the callee meet private
`network classification
`criteria, produce a private
`network routing message
`for receipt by a call
`controller, said private
`network routing message
`identifying an address, on
`
`packet switch 210 to set up the appropriate cross-
`connects.” Id. at 4:52-56; see also id. at 9:30- 49
`(describing private routing message for calls to “on-
`net phone in another location”), Figs. 6-11, 14a,
`13:12-34 (describing public routing message for calls
`to PSTN), Fig. 13.
`One of skill in the art would understand that the soft-
`switch and packet switch functionalities described in
`Chu ’684 are necessarily implemented in software,
`which necessarily involves codes for directing a
`processor to implement the method steps describes in
`the excerpts above. Ex. 1009, Houh Declaration at ¶
`50.
`See disclosure set forth at claim element 1
`(preamble).
`
`See disclosure set forth at claim element 1 (a).
`
`See disclosure set forth at claim element 1 (b-c).
`
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`IPR2016-01198
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`the private network,
`associated with the callee;
`and
`(c) when at least one of
`said calling attributes and
`at least a portion of said
`callee identifier meet a
`public network
`classification criterion,
`produce a public network
`routing message for receipt
`by the call controller, said
`public network routing
`message identifying a
`gateway to the public
`network.
`49. The apparatus of claim
`26, wherein said at least
`one processor is further
`operably configured to
`cause the private network
`routing message or the
`public network routing
`message to be
`communicated to a call
`controller to effect routing
`of the call.
`50. A call routing controller
`apparatus for producing a
`routing message for routing
`communications between a
`caller and a callee in a
`communication system, the
`apparatus comprising:
`(a) means for using a caller
`identifier associated with
`the caller to locate a caller
`dialing profile comprising a
`plurality of calling
`attributes associated with
`
`See disclosure set forth at claim element 1 (b-c).
`
`See disclosure set forth at claim 24.
`
`See disclosure set forth at claim element 1
`(preamble).
`
`As described in Section III.C.1(a), the corresponding
`structure for “means for using” is a processor
`circuit programmed to implement the algorithm
`disclosed in cell 254 of Fig. 8A. Chu ’684 teaches a
`subscriber’sand Chen teach subscriber dial plan and
`Chu ’366 teaches “call origin profiles,”plans, both
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`IPR2016-01198
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`the caller; and
`
`(b) means for, when at least
`one of said calling
`attributes and at least a
`portion of a callee identifier
`associated with the callee
`meet private network
`classification criteria,
`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;
`and
`
`(c) means for, when at least
`one of said calling
`attributes and at least a
`portion of said callee
`identifier meet a public
`network classification
`criterion, producing a
`public network routing
`message for receipt by the
`call controller, said public
`network routing message
`
`of which are located using a caller identifier by
`processor circuits programmed with algorithms
`equivalent to cell 254.
`
`See disclosure set forth at claim element 1(a). See
`also, Ex. 1009, Houh Declaration at ¶ 47
`(concluding that the caller dialing profiles taught by
`Chu ’684 and Chu ’366Chen are necessarily located
`by processors programmed with algorithms
`equivalent to the disclosed RC processor circuit 200
`programmed to implement the algorithm disclosed in
`cell 254 of Fig. 8A).
`As described in Section III.C.1(b), the corresponding
`structure for these limitations is a processor for
`implementing one or more branch of the algorithm in
`Fig. 8B (for the matching functions) and the
`algorithm illustrated in cell 350 of FIG. 8A or cell
`644 of Fig. 8C (for generating the private routing
`messages) and the claimed function (for generating
`public routing messages). The combination of Chu
`’684 and Chu ’366Chen determines when a portion
`of the dialed digits (callee identifier) matches calling
`attributes (e.g., dialing length, area code, etc.) in
`order to reformat the callee identifier as necessary
`and to then determine if the callee is on the public or
`private network, which is equivalent to the algorithm
`in Fig. 8B. This combination also generates routing
`messages using a processor circuit programmed to
`implement algorithms equivalent to cell 350 of FIG.
`8A, cell 644 of Fig. 8C, and the claimed function.
`
`See disclosure set forth at claim element 1(b-c). See
`also, Ex. 1009, Houh Declaration at ¶ 48
`(concluding that the combination of Chu ’684 and
`Chu ’366Chen implements algorithms equivalent to
`the processor-implemented algorithm of Fig. 8B, cell
`350 of FIG. 8A, cell 644 of Fig. 8C, and the claimed
`function).
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`IPR2016-01198
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`identifying a gateway to the
`public network.
`73. The apparatus of claim
`50, further comprising
`means for causing the
`private network routing
`message or the public
`network routing message to
`be communicated to a call
`controller to effect routing
`of the call.
`
`74. A method of routing
`communications in a packet
`switched network in which
`a first participant identifier
`is associated with a first
`participant and a second
`participant identifier is
`associated with a second
`participant in a
`communication, the method
`comprising:
`(a) after the first participant
`has accessed the packet
`switched network to initiate
`the communication, using
`the first participant
`identifier to locate a first
`participant profile
`comprising a plurality of
`attributes associated with
`the first participant;
`
`As described in Section III.C.1(c), the corresponding
`structure for “means for causing” is processor 202
`programmed to perform the algorithms illustrated in
`cell 381 of FIG. 8A and cell 568 of FIG. 8D. Chu
`’684 teaches a soft-switch that sends routing
`messages to a second soft-switch (“call controller”)
`which controls the egress packet switch for a private
`VoIP call and the PSTN gateway for call terminating
`to the public PSTN, which is equivalent to these
`corresponding algorithms.
`
`See disclosure set forth at claim 24. See also, Ex.
`1009, Houh Declaration at ¶ 49 (concluding that the
`soft-switch taught by Chu ’684 is equivalent to the
`disclosed processor 202 programmed to perform the
`algorithms illustrated in cell 381 of FIG. 8A and cell
`568 of FIG. 8D).
`See disclosure set forth at claim element 1
`(preamble).
`
`See disclosure set forth at claim element 1 (a).
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`IPR2016-01198
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`(b) when at least one of the
`first participant attributes
`and at least a portion of the
`second participant
`identifier meet a first
`network classification
`criterion, producing a first
`network routing message
`for receipt by a controller,
`the first network routing
`message identifying an
`address in a first portion of
`the packet switched
`network, the address being
`associated with the second
`participant, the first portion
`being controlled by an
`entity; and
`
`(c) when at least one of the
`first participant attributes
`and at least a portion of the
`second participant
`identifier meet a second
`network classification
`criterion, producing a
`second network routing
`message for receipt by the
`controller, the second
`network routing message
`identifying an address in a
`second portion of the
`packet switched network,
`the second portion not
`controlled by the entity.
`
`As described above in reference to claim elements
`1(b-c), the combination of Chu ’684 and Chu
`’366Chen performs the precise process described in
`the ’005 Patent and illustrated in Fig. 8B, where an
`initial “match” between the dialed digits (“callee
`identifier”) and calling attributes determines
`whether the dialed digits must be reformatted in
`order to identify the intended callee. This
`combination also teaches that, once reformatted, the
`callee identifier is used to determine whether (1) the
`callee is on the same packet-switch/soft-switch
`network serving the caller (“a first portion . . .
`controlled by an entity”) or (2) if the callee is served
`by a different subscriber LAN than the caller (“a
`second portion not controlled by an entity”).
`
`Chu ’366Chen teaches reformatting dialed digits to
`generate an E.164 compliant callee identifier when
`dialed digits “match” caller attributes, e.g., when the
`dialed digits equal the national dialing length of the
`caller’s origin designation.an NDD prefix in the
`caller’s dial plan.
`
`See Chu ’366Chen citations set forth at claim
`element 1 (b-c).
`
`Once the callee identifier is reformatted, Chu ’684
`determines whether the callee is local (on the “first
`portion”) or on a separate LAN (on the “second
`portion”).
`
`“At step 608, after receiving all the dialed digits from
`the phone 101, server 110 consults its dial plan to
`determine whether the call is local, to another on-net
`phone, or to a phone that is on the PSTN.” Ex. 1006,
`Chu ’684 at 8:65-9:1.
`
`If on the first portion, Chu ’684 teaches generating a
`private network routing message identifying an
`address on the first portion of the network.
`
`-13-
`
`

`
`IPR2016-01198
`Apple v. Voip-Pal
`
`
`“At step 610, upon receipt of the SIP “invite”
`message from the server 110, the soft-switch 220
`consults the dial plan for this subscriber. . . In this
`example, the call is to another on-net phone in
`another location. From the database associated with
`the dial plan, soft-switch 220 determines the
`following: (1) the IP address of the egress packet
`switch . . . Once the soft-switch 220 has determined
`this information, it sends H.248 commands to packet
`switch 210” Id. at 9:30-49 (emphasis added); see also
`id. at 12:60-66 (noting multiple subscribers “can be
`served by the same packet-switch/soft-switch
`network”), 8:65-9:1 (noting the server uses dialed
`digits to determine whether a call is local), 4:52-56
`(noting routing message requests may be sent from
`one soft-switch to another peer soft-switch), Figs. 6-
`11, 14a.
`
`If on the second portion, Chu ’684 teaches
`generating a private network routing message
`identifying an address on the second portion of the
`network.
`
`“The configuration shown in FIG. 14 a is for calls
`between IP phones of different subscribers' networks
`(i.e. the first subscriber LAN 1304 and a second
`subscriber LAN 1404). In such a scenario, both
`phones have a public E.164 number and an Inter-
`VPN gateway 1402 is used to interconnect the two
`phones 101 and 601. The inter-network operates like
`two PSTN gateway connected back-to-back, with all
`the TDM components removed. The major
`differences between an inter-network packet gateway
`and a PSTN gateway are: (1) packets move in and
`out of the gateway with no TDM components or
`processing; (2) between the Inter-VPN packet
`gateway 1402 and IP phone 101, the packet gateway
`will use an IP address from the first subscriber's IP
`address space, and VPN identifier identifies
`
`-14-
`
`

`
`IPR2016-01198
`Apple v. Voip-Pal
`
`75. The method of claim
`74, wherein the packet
`switched network
`comprises the Internet.
`
`76. The method of claim
`74, wherein the first
`participant identifier
`comprises a first participant
`telephone number or
`username.
`
`subscriber 1 (or the egress interface to phone 101)
`and (3) there is a similar arrangement for IP phone
`601 of subscriber 2. The inter-VPN will translate the
`IP address of phone 101 to another IP address from
`subscriber 2's IP address space, and the IP address of
`phone 601 to another IF address from subscriber 1's
`IP address space, when forwarding packets between
`the two phones. The translated IP addresses come
`from IP address polls allocated to the inter-VPN
`gateway, as described previously for the PSTN
`gateway.” Id. at 13:66-14:21; see also id. at 4:52-56
`(noting routing message requests may be sent from
`one softswitch to another peer soft-switch); Figs. 6-
`11, 14a.
`Chu ’684 teaches that the packet portion of the
`communication system can be the Internet.
`
`“For the IP addresses, the subscriber can use either
`its own private IP addressing scheme, the public
`internet addressing, or the SP's addressing plan. The
`subscriber manages the mapping between an IP
`address of an IP phone, its private telephone number,
`and its E.164 number.” Id. at 13:4-9 (emphasis
`added).
`Chu ’684 teaches using a subscriber’s identifying
`information (e.g., the subscriber’s E.164 telephone
`number) (“a caller identifier”) to access a dial plan
`that includes calling attributes of the subscriber.
`
`See Chu ’684 citations and related expert opinion set
`forth at claim element 1 (a).
`
`In addition, Chu ’366 teaches that a user can setup a
`“call origin name” associated with his or her
`profileIn addition, Chen teaches that the first
`participant’s dial plan includes the calling party’s
`telephone number, including at least a national code
`and area code of the caller.
`
`“In the present invention, each translation function
`
`-15-
`
`

`
`IPR2016-01198
`Apple v. Voip-Pal
`
`77. The method of claim
`74, wherein the second
`participant identifier
`comprises a second
`participant telephone
`number or username.
`
`78. The method of claim
`74, wherein the
`communication comprises
`a voiceover- IP
`communication.
`79. The method of claim
`74, wherein the packet
`switched network is
`accessed via an Internet
`service provider.
`
`83. The method of claim
`74, wherein the first
`
`has a corresponding dial plan, and each dial plan has
`the following components needed by either the
`translation-1 or the translation- 2: (1) IDD prefix, (2)
`NDD prefix, (3) Country code, and (4) Area code.”
`Ex. 1007, Chu ’366 at 13:49-54 (noting a user can
`enter a “descriptive name” for the call origin
`location).1008, Chen at ¶ 0033; see also id. at Fig, 6
`(illustrating the caller’s country code and area code
`prepended to dialed digits to create an E.164
`compliant number).
`Chu ’684 teaches using the dialed digits as an
`identifier of the called party.
`
`“At step 608, after receiving all the dialed digits from
`the phone 101, server 110 consults its dial plan to
`determine whether the call is local, to another on-net
`phone, or to a phone that is on the PSTN.” Ex. 1006,
`Chu ’684 at 8:65-9:1.
`Chu ’684 teaches establishing a Voice-over-IP
`communication between the participants.
`
`See Chu ’684 citations set forth at claim element 1
`(preamble).
`Chu ’684 teaches that the packet portion o