Filed: September 21, 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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`APPLE INC.
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`Petitioner,
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`v.
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`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION
`FOR INTER PARTES REVIEW
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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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`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
`
`APPLE INC.
`
`Petitioner,
`
`v.
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION
`FOR INTER PARTES REVIEW
`
`
`
`
`
`
`
`VOIP-PAL.COM, INC.,
`
`Patent Owner
`
`
`
`
`Case No. IPR2016-01198
`U.S. Patent 9,179,005
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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 ................................................................................................... 3
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`A.
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`B.
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`C.
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`D.
`
`E.
`
`Introduction to Claimed Subject Matter ................................................ 3
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`Petitioner’s two obviousness grounds are redundant ............................ 5
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`Chu ‘366 is not prior art under pre-AIA 35 U.S.C. 102(e) ................... 6
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`The Petition is flawed and inadequate .................................................. 8
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`1.
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`The claim charts fall well below the requirement to
`explain the grounds of unpatentability “with
`particularity” ............................................................................... 9
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`Ground 1 fails because the combination of Chu ‘684 and
`Chu ‘366 does not disclose all claim elements and
`because the combination is not obvious .............................................. 14
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`1.
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`2.
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`3.
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`4.
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`5.
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`Chu ‘684 and Chu ‘366 are completely unrelated
`documents naming completely different inventors ................... 14
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`Overview of Chu ‘684 .............................................................. 14
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`Overview of Chu ‘366 .............................................................. 15
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`The combination of Chu ‘684 and Chu ‘366 fails
`to render obvious meeting different “classification
`criteri[a]” as claimed ................................................................. 16
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`The combination of Chu ‘684 and Chu ‘366 fails
`to render obvious “using a caller identifier … to
`locate a caller dialing profile” as recited in [1a]
`and “using a first participant identifier to locate a
`first participant profile” as recited in [74a] ............................... 25
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`-i-
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`TABLE OF CONTENTS
`(cont’d)
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`Page No.
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`6.
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`Petitioner fails to articulate a proper reason to
`combine the references and overlooks reasons why
`the combination is undesirable.................................................. 37
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`F.
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`Ground 2 fails because the combination of Chu ‘684 and
`Chen 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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`4.
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`Overview of Chen ..................................................................... 47
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`The combination of Chu ‘684 and Chen fails to
`render obvious meeting different “classification
`criteri[a]” as recited in the claims ............................................. 48
`
`The combination of Chu ‘684 and Chen fails to
`render obvious “using a caller identifier … to
`locate a caller dialing profile” as recited in [1a]
`and “using a first participant identifier to locate a
`first participant profile” as recited in [74a] ............................... 52
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`Petitioner fails to articulate a proper reason to
`combine the references and overlooks that the
`combination is undesirable ....................................................... 58
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`III. CONCLUSION .............................................................................................. 65
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`-ii-
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`TABLE OF AUTHORITIES
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`Page No(s).
`
`Apple Inc. v. Rensselaer Polytechnic Institute,
`IPR2014-00077, Paper 14 (P.T.A.B. June 13, 2014) ............................. 13, 40, 61
`
`Cisco Sys., Inc. v. C-Cation Techs., LLC,
`IPR2014-00454, Paper 12 (P.T.A.B. Aug. 29, 2014) ................................... 13, 14
`
`Eaton v. Evans,
`204 F.3d 1094 (Fed. Cir. 2000) ............................................................................ 7
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`Globespanvirata, Inc. v. Tex. Instruments, Inc.,
`2005 WL 3077915 (D. N.J. 2005) ...................................................................... 13
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`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) ...................................................................... 23, 51
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`K-TEC, Inc. v. Vita-Mix Corp.,
`696 F.3d 1364 (Fed. Cir. 2012) .......................................................................... 39
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`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .....................................................................................passim
`
`Liberty Mutual Insurance Company v. Progressive Casualty
`Insurance Company
`CBM2012-00003, Paper 7 (Representative Order) .............................................. 6
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`In re Magnum Oil Tools Int’l, Ltd.,
`No. 2015-1300, 2016 WL 3974202 (Fed. Cir. July 25, 2016) ..................... 11, 12
`
`In re McLaughlin,
`443 F.2d 1392 (C.C.P.A. 1971) ........................................................ 46, 47, 51, 64
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`Mformation Techs., Inc. v. Research in Motion Ltd.,
`764 F.3d 1392 (Fed. Cir. 2014) .......................................................................... 17
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`Nautilus Hyosung Inc. v. Diebold Inc.,
`e IPR2016-00633, Paper 9 (P.T.A.B. Aug. 22, 2016) .................................. 11, 12
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`-iii-
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`TABLE OF AUTHORITIES
`(cont’d)
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`Page No(s).
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`Unified Patents, Inc. v. William Grecia,
`IPR2016-00789, Paper 8 (P.T.A.B. Sept. 9, 2016) ................................. 39, 59, 60
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`OTHER AUTHORITIES
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`37 C.F.R. § 42.1 ......................................................................................................... 6
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`37 C.F.R. § 42.6 ..................................................................................... 10, 13, 40, 61
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`37 C.F.R. § 42.22 ....................................................................................................... 8
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`37 C.F.R. § 42.65 ......................................................................................... 41, 61, 62
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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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`35 U.S.C. §102 ....................................................................................................... 6, 7
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`35 U.S.C. § 312 .................................................................................................passim
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`35 U.S.C. § 313 .......................................................................................................... 1
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`35 U.S.C. § 314 ...................................................................................................... 2, 4
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`35 U.S.C. § 316 .......................................................................................................... 6
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`-iv-
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`IPR2016-01198
`Apple Inc. v. Voip-Pal
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`EXHIBIT LIST
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`Exhibit No.
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`Description
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`2001
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`Comparison of Ground 1 and Ground 2 of Petition
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`Exhibit List, Page 1
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`IPR2016-01198
`Apple Inc v. Voip-Pal
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`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 June 21, 2016, Voip-Pal.com, Inc.
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`(“Voip-Pal”) submits this Preliminary Response to the Petition for Inter Partes
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`Review of U.S. 9,179,005 (the ’005 Patent) (Paper 1) by Apple Inc. (“Apple”).
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`I. INTRODUCTION
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`subsidiary of Patent Owner Voip‐Pal, was founded in 2004 with the vision that the
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`Digifonica, a real party-in-interest to this proceeding and wholly owned
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`Internet would be the future of telecommunications. As a startup company,
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`Digifonica did not have existing customers or legacy systems. Instead, Digifonica
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`had the opportunity to start from a blank slate. Digifonica employed top
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`professionals in the open‐source software community. Three Ph.D.s with various
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`engineering backgrounds held the top positions at the Company. Digifonica’s
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`engineers developed an innovative software solution for routing communications,
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`which by the mid-2000s it implemented in four nodes spread across three
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`geographic regions. Digifonica’s R&D efforts led to several patents, including
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`U.S. Patent No. 8,542,815 and a continuation patent, the ‘005 Patent, which is the
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`subject of the present proceeding.
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`Petitioner challenges Claims 1, 24-26, 49-50, 73-79, 83-84, 88-89, 92, 94-
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`96, 98, and 99 of the ’005 Patent on two grounds:
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`-1-
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`IPR2016-01198
`Apple Inc v. Voip-Pal
`1. Alleged obviousness under § 103(a) over U.S. Patent No. 7,486,684 to
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`Chu et al. (“Chu ’684”) in view of U.S. Patent No. 8,036,366 to Chu (“Chu ’366”).
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`2.
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`Alleged obviousness under § 103(a) over Chu ’684 in view of U.S.
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`Patent Publication No. 2007/0064919 to Chen et al. (“Chen”).
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`Petitioner also submitted a Declaration by declarant Henry H. Houh, PhD
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`Ex. 1009 (“Declaration”).
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`As Voip-Pal explains below, Petitioner’s arguments and assessments of the
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`references fail to establish a reasonable likelihood that Petitioner would prevail as
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`to its asserted grounds, as required under 35 U.S.C. § 314(a). Accordingly,
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`institution of this proceeding should be denied as to both asserted grounds.
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`Petitioner’s two grounds fail to provide all claim elements. For example,
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`Chu ‘684 teaches that calls are classified before a soft-switch uses a server ID “to
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`locate” a dial plan, but the “classification criteria” recited in steps [1b]-[1c] of
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`Claim 1 (see also Claim 74 steps [74b]-[74c]) are based on information determined
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`in a preceding step [1a] of “using a caller identifier … to locate”. Chu ‘684 also
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`lacks call routing based on “calling attributes” as recited in steps [1b]-[1c] or “first
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`participant attributes” as recited in steps [74b]-[74c]. Furthermore, the proposed
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`combinations would render the primary reference, Chu ‘684, inoperative or
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`unsuitable for its intended purpose. Many of Petitioner’s arguments are premised
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`on a fundamental misinterpretation of the term “subscriber” in Chu ‘684 as
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`IPR2016-01198
`Apple Inc v. Voip-Pal
`referring to an individual rather than to an enterprise. This error undercuts
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`Petitioner’s assertions that the combined references teach certain claim elements.
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`In particular, Petitioner mistakenly conflates an enterprise subscriber’s “dial plan”
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`and an individual caller’s “dialing profile.” Petitioner also fails to articulate any
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`plausible reason to combine the references. Any motivation to do so is further
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`undermined by the misinterpretation of Chu ‘684.
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`II. ARGUMENT
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`A.
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`Introduction to Claimed Subject Matter
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`Petitioner directs its analysis almost entirely to Claim 1:
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`1. [1p] A process for producing a routing message for
`routing communications between a caller and a callee in a
`communication system, the process comprising:
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`[1a] using a caller identifier associated with the caller to
`locate a caller dialing profile comprising a plurality of calling
`attributes associated with the caller;
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`[1b] 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
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`IPR2016-01198
`Apple Inc v. Voip-Pal
`[1c] 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.
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`By way of background, a public switched telephone network (PSTN) uses
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`traditional telephone technology including dedicated telephone lines from a service
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`provider to transmit calls over a circuit-switched network. Voice over Internet
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`protocol (VoIP) provides digital voice communications and multimedia sessions
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`over Internet protocol (IP) networks, such as the Internet. Digital information is
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`packetized and transmitted as IP packets over such packet-switched IP networks.
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`The method of Claim 1 is directed to telecommunications call routing. The
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`method involves routing a call when it meets “private network classification
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`criteria” or “a public network classification criterion” based on at least one calling
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`attribute and at least a portion of the callee identifier. The method of Claim 74 is
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`directed to routing based on profile attributes of a “first participant” (e.g., caller)
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`and “a portion of an identifier for a second participant” (e.g., callee ID) meeting
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`“first” or “second network classification criteri[a].”
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`A call may be routed to, e.g., a traditional circuit switched network such as
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`the PSTN, or to, e.g., a packet switched network such as the Internet, based on a
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`calling attribute and at least a portion of the callee’s information. The method does
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`IPR2016-01198
`Apple Inc v. Voip-Pal
`not evaluate the callee identifier in isolation, but also considers attributes in the
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`caller’s dialing profile. Each caller has a dialing profile including a plurality of
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`calling attributes, at least one of which is used along with at least a portion of a
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`callee identifier, e.g., callee phone number, before the system makes a network
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`classification decision, e.g., PSTN or Internet routing.
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`B.
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`Petitioner’s two obviousness grounds are redundant
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`The two obviousness grounds asserted in the Petition are, by Petitioner’s
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`own words, redundant.
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`Petitioner expressly admits that Ground 1 (Chu ‘684 & Chu ‘366) and
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`Ground 2 (Chu ‘684 & Chen) are redundant: “the substance between the two
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`secondary references is largely identical.” Petition at 36 (emphasis added).
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`Petitioner presents Ground 2 “to account for the possibility that the Patent Owner
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`may attempt to ‘swear behind’ the Chu ’366 reference,” whereas Chen predates the
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`‘005 Patent’s priority date “by a significant time period.” Id. at 36-37.
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`Patent Owner agrees with Petitioner’s admission of the redundancy of
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`Grounds 1 and 2. Attached as Exhibit 2001 is a comparison of the arguments
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`presented in Ground 1 to the arguments presented in Ground 2. As seen from
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`Exhibit 2001, Petitioner relies on identical citations to Chu ‘684 in both grounds,
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`Petitioner’s use of the secondary references is nearly identical, and Petitioner’s
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`arguments in these two Grounds are essentially verbatim.
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`IPR2016-01198
`Apple Inc v. Voip-Pal
`Petitioner fails to explain how Ground 1 is distinct from Ground 2, other
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`than the fact that Patent Owner may antedate Chu ‘366 (Ground 1). As discussed
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`infra, the claimed invention was reduced to practice before Chu ‘366’s effective
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`date. Accordingly, Patent Owner intends to antedate Chu ‘366 if trial is instituted
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`on Ground 1.
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`The Statute and accompanying Rules provide that administration of IPRs
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`should “secure the just, speedy, and inexpensive resolution of every proceeding.”
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`37 C.F.R. § 42.1(b); 35 U.S.C. § 316(b). Institution on Ground 1, which Petitioner
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`admits is “largely identical” to Ground 2, would run contrary to these goals.
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`Liberty Mutual Insurance Company v. Progressive Casualty Insurance Company
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`CBM2012-00003, Paper 7 (Representative Order) at 2.
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`By Petitioner’s own admission, the two Grounds presented are redundant.
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`Since Petitioner asserts Ground 2 is superior due to Chen’s earlier effective date,
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`Petitioner’s own admission dictates that Ground 1 should be denied as redundant to
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`Ground 2.
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`C. Chu ‘366 is not prior art under pre-AIA 35 U.S.C. 102(e)
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`In Ground 1, Petitioner asserts that “U.S. Patent No. 8,036,366 to Chu (“Chu
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`’366”) was filed on Aug. 4, 2006 and therefore qualifies as prior art... under 35
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`U.S.C. §102(e).” Petition at 10. But Chu ‘366 can only be prior art if it was
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`“granted on an application for patent by another filed in the United States before
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`IPR2016-01198
`Apple Inc v. Voip-Pal
`the invention by the applicant for patent . . . .” 35 U.S.C. § 102(e) (emphasis
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`added). Chu ‘366 was not filed before the invention by the inventors of the ‘005
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`Patent.
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`Prior invention can be established by an actual reduction to practice before
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`the priority date. Eaton v. Evans, 204 F.3d 1094, 1097 (Fed. Cir. 2000). The
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`inventors of the ‘005 Patent reduced the claimed subject matter to practice before
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`Chu ‘366’s filing date of August 4, 2006, having started a company in 2004 and
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`developed a system allowing calls to be placed between IP phones and between IP
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`phones and traditional phones. The system included four test “supernodes” that
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`were operating before August 4, 2006, one in London, UK, one in Dangaard,
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`Denmark, and two in the Vancouver, Canada area.
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`The system developed included a software and hardware platform that
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`received call initiation information and responded with call routing messages. This
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`platform was engineered, developed, tested, and validated before August 4, 2006,
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`and implemented a call routing controller, corresponding to the Routing Controller
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`16 illustrated in Fig. 1 of the ‘005 Patent and discussed in the specification.
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`All of the claims of the ‘005 Patent challenged in the Petition were practiced
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`by the inventors’ system and call routing platform before August 4, 2006. Thus,
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`the inventors’ actual reduction to practice preceded the filing date of Chu ‘366 of
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`August 4, 2006. Accordingly, Chu ‘366 is not prior art under 35 U.S.C. § 102(e).
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`-7-
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`IPR2016-01198
`Apple Inc v. Voip-Pal
`If Ground 1 is instituted, Patent Owner intends to submit evidence such as
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`computer source code, design documents, and corroborating communications
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`establishing that well before the filing date of Chu ‘366, the inventors of the ‘005
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`Patent had reduced to practice the inventions recited in the challenged claims.
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`D. The Petition is flawed and inadequate
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`Petitioner has the burden of explaining “with particularity” the specific
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`evidence allegedly supporting each of the petition’s challenges of the claims. 35
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`U.S.C. § 312(a)(3). A petition must identify “[h]ow the construed claim is
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`unpatentable” and “must specify where each element of the claim is found in the
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`prior art patents or printed publications relied upon . . . .” 37 C.F.R. § 42.104(b)(4).
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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, only the Petition’s claim charts attempt to link the
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`claim language to the cited references to explain “[h]ow the construed claim is
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`unpatentable,” but those explanations are terse and insufficient.
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`The failures of the Petition are not inconsequential. As explained infra,
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`these shortcomings of the Petition and Declaration belie the insufficiencies of the
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`references to render the claims unpatentable.
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`IPR2016-01198
`Apple Inc v. Voip-Pal
`1.
`The claim charts fall well below the requirement to explain the
`grounds of unpatentability “with particularity”
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`The entirety of Petitioner’s attempt to link each element of Claim 1 to the
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`teachings of the cited references is found in the claim charts. Patent Owner
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`understands that under the present Rules, it is not improper to include arguments in
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`the claim charts, but the Rules cannot be read in a manner that excuses Petitioner
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`from meeting their burden to provide a meaningful explanation with particularity
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`of the grounds for challenging each claim.
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`The Petition’s claim charts fail to carry Petitioner’s burden.
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`a.
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`The Claim Charts Do Not Explain How The References
`Teach All Claim Elements
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`As discussed below at section II(E)(5)(a), Petitioner mistakenly interprets
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`Chu ‘684’s “subscriber” as being the “caller” recited in Claim 1(a). Petition at 17-
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`18, 42-43. The “first participant” recited in Claim 74 is likewise misinterpreted.
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`Petition at 25-26, 49-50. Chu ‘684’s “subscriber” is an enterprise or corporation,
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`not an individual user such as the “caller” of [1a]. Infra at II(E)(5)(a). At
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`minimum, Petitioner was required to explain “with particularity” how the evidence
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`supports each of Petitioner’s challenges of the claims (35 U.S.C. § 312(a)(3)),
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`including explaining “where each element of the claim is found in the prior art
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`patents or printed publications relied upon . . . .” 37 C.F.R. § 42.104(b)(4). The
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`-9-
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`IPR2016-01198
`Apple Inc v. Voip-Pal
`Petition fails to explain how Chu ‘684’s “subscriber” is the “caller” recited in [1a]
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`or “first participant” in [74a].
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`Instead, the Petition incorporates by reference its Declarant’s explanation.
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`Petition at 18, 42 (citing Ex. 1009, ¶ 45). Even a cursory review of ¶ 45 shows that
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`attempting to link Chu ‘684’s “subscriber” to the “caller” recited in [1a] is a
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`contorted path requiring inferences cobbled from multiple distinct portions of Chu
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`‘684 as well as an invocation of inherency. Ex. 1009, ¶ 45. Thus, Petitioner’s own
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`Declarant put Petitioner on notice that linking Chu ‘684’s “subscriber” to the
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`“caller” in [1a] was non-trivial and required substantial explanation. Yet, instead
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`of complying with the requirements of 37 C.F.R. § 42.104(b)(4) to explain how
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`[1a] is found in Chu ‘684, the Petition merely cites to the Declaration and
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`summarizes Declarant’s explanation in a parenthetical. Petition at 18, 42. Absent
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`this improper incorporation by reference (see 37 C.F.R. § 42.6(a)(3)), the Petition
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`fails the statutory requirement to explain “with particularity” how the evidence
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`supports each of Petitioner’s challenge of the claims. 35 U.S.C. § 312(a)(3). And
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`even if Declarant’s testimony is wholesale incorporated by reference, Chu ‘684’s
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`disclosure still does not meet the requirements of [1a]. See infra at II(E)(5).
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`b.
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`The claim charts do not provide even de minimis analysis of
`Claims 25, 26, 49, 50, 73, 89, 92, 94, 95, 96, 98 and 99
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`More egregious than the claim chart’s shortcomings in discussing Claim 1,
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`the claim chart’s explanation for numerous claims is essentially non-existent. The
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`-10-
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`IPR2016-01198
`Apple Inc v. Voip-Pal
`Petition asserts that 6 independent claims and 23 total claims are obvious. These
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`various claims are directed to different concepts using different language. Yet the
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`claim chart repeatedly incorporates by reference its analysis for other claims
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`(namely, Claims 1 and 74), even when analyzing independent claims. The only
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`independent claim fully addressed is Claim 1. Claim 74 is partly addressed–the
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`first half of the claim by incorporation by reference to Claim 1, the second half by
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`actual citation to the art. Independent Claims 26, 94 and 99 are addressed solely
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`by incorporation by reference.
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`Regarding the claim chart’s attack on independent Claims 26, 94, and 99
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`(and also dependent Claims 49, 95, 96, and 98) by mere reference to the analysis of
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`Claims 1 and 74, the Board has held that such practice is insufficient to carry
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`Petitioner’s burden: “As the Federal Circuit has made clear, the Board cannot rely
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`on conclusory statements by Petitioner that the same analysis applies without
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`further explanation; rather, Petitioner must present ‘particularized arguments
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`explaining why its arguments . . . would be cross-applicable.’ . . . conclusory
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`statements implying that the same analysis for claim 1 also applies to independent
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`claim 17 do not satisfy Petitioner’s burden to demonstrate obviousness.” Nautilus
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`Hyosung Inc. v. Diebold Inc., e IPR2016-00633, Paper 9 at 32 (P.T.A.B.
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`Aug. 22, 2016) (citing In re Magnum Oil Tools Int’l, Ltd., No. 2015-1300, 2016
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`WL 3974202, at *9 (Fed. Cir. July 25, 2016)) (internal citations omitted).
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`-11-
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`IPR2016-01198
`Apple Inc v. Voip-Pal
`The present Petition is even more deficient than the one 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 obviousness of Claims 26, 49, 94, 95, 96, 98, and 99
`
`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. Magnum Oil, 2016 WL 3974202 at
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`*9. Thus, at a minimum, the Petition fails for these claims in which Petitioner
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`chose to provide no analysis beyond a simple incorporation by reference.
`
`For independent Claim 50 and dependent Claims 25, 73, 89 and 92, the
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`claim charts address these solely by citing to one or more paragraphs in the Houh
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`Declaration. The claim charts allude to the references generally, but without
`
`quoting the references and without identifying what text of the references is being
`
`relied upon. This is a fundamental failure of the Petition to explain “with
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`particularity” how the evidence supports each of Petitioner’s challenges of the
`
`claims (35 U.S.C. § 312(a)(3)) and to identify “where each element of the claim is
`
`found in the prior art patents or printed publications relied upon . . . .” 37 C.F.R.
`
`§ 42.104(b)(4).
`
`-12-
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`
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`IPR2016-01198
`Apple Inc v. Voip-Pal
`Instead, the Petition relies wholesale on Declarant’s explanation of how the
`
`evidence supports Petitioner’s challenge. But using a Declaration to satisfy
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`statutory requirements of a Petition far oversteps the bounds limiting incorporation
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`by reference in these proceedings. 37 C.F.R. § 42.6(a)(3); see also Fed. Reg. 77 at
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`48617 (Aug. 14, 2012) (citing Globespanvirata, Inc. v. Tex. Instruments, Inc., 2005
`
`WL 3077915, * 1 (D. N.J. 2005) as an example of improper incorporation by
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`reference when a party “sought to make its case through incorporation of expert
`
`declaration and a claim chart.”). Indeed, in a previous case Apple, was specifically
`
`warned against incorporating by reference to a supporting declaration:
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`We decline to consider information presented in a supporting
`declaration, but not discussed in a petition, because, among other
`reasons, doing so would encourage the use of declarations to
`circumvent the page limits that apply to petitions.
`Apple Inc. v. Rensselaer Polytechnic Institute, IPR2014-00077, Paper 14 at 5
`
`(P.T.A.B. June 13, 2014). See also Cisco Sys., Inc. v. C-Cation Techs., LLC,
`
`IPR2014-00454, Paper 12 at 9-10 (P.T.A.B. Aug. 29, 2014).
`
`Incorporation by reference in claim charts is no substitute for complying
`
`with the statutory requirement that the petition itself explain “with particularity”
`
`how the evidence supports each of Petitioner’s challenges of the claims under 35
`
`U.S.C. § 312(a)(3). As such, the claim charts fail to explain “with particularity”
`
`the alleged unpatentability of Claims 25, 50, 73, 89, and 92.
`
`-13-
`
`
`
`IPR2016-01198
`Apple Inc v. Voip-Pal
`E. Ground 1 fails because the combination of Chu ‘684 and Chu ‘366 does
`not disclose all claim elements and because the combination is not
`obvious
`
`1.
`
`Chu ‘684 and Chu ‘366 are completely unrelated documents
`naming completely different inventors
`
`While the first named inventors of Chu ‘684 and Chu ‘366 share the same
`
`surname, they are two distinct individuals who worked for different companies in
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`different locations. Chu ‘684 names inventor Thomas P. Chu of Englishtown, New
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`Jersey, identifying Alcatel-Lucent as the assignee. Chu ‘366 names inventor Lon-
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`Chan Chu of Redmond, WA, identifying Microsoft as the assignee. Thus, despite
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`both being labeled “Chu,” Chu ‘684 and Chu ‘366 are unrelated documents by
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`unrelated individuals working at separate locations for unrelated entities.
`
`2. Overview of Chu ‘684
`
`Chu ‘684 discloses an architecture for providing voice over IP virtual private
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`network (VoIP VPN) services to an organization (“subscriber”) with multiple IP-
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`PBXs, and a method of connecting the organization’s IP-PBXs into a single logical
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`network. See Chu ‘684 at 1:44-46, 3:52-56. The organization “subscribe[s] to
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`many services” (e.g., both data and voice services) from the same service provider
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`(SP). Id. at 5:3-6. FIG. 2 illustrates a subscribing customer’s IP-PBX (i.e.,
`
`multiple phones and a server 110 located at the subscribing customer’s premises
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`105), which is configured to communicate with a soft-switch 220 and packet
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`switch 210 located at the SP’s central office 205:
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`-14-
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`
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`IPR2016-01198
`Apple Inc v. Voip-Pal
`
`
`
`While many organizations, each with multiple locations, may share the SP’s
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`network infrastructure (e.g., soft-switch 220 and packet switch 210), the system of
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`Chu ‘684 allows each organization to have its own “dial plan” and allows calls to
`
`be routed internally to the IP-PBX, to a different IP-PBX, and to the public
`
`switched telephone network (PSTN). See Chu ‘684 at 12:60-67 and 8:65-9:1.
`
`3. Overview of Chu ‘366
`
`Chu ‘366 discloses a method of formatting a dialed telephone number
`
`according to the E.164 standard based on a “call origin location profile.” See Chu
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`‘366 at 1:62-2:14. A dialed number in Chu ‘366 can be formatted into the E.164
`
`format based on the PSTN dialing conventions of a variety of geographic locations.
`
`See Chu ‘366 at 2:16-28. Chu ‘366’s method allows travelling users, initiating
`
`-15-
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`
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`IPR2016-01198
`Apple Inc v. Voip-Pal
`VoIP telephone calls from different locations, to selectively adjust their dialing
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`patterns to the location from which they are dialing. See Chu ‘366 at 5:3-14.
`
`4.
`
`The combination of Chu ‘684 and Chu ‘366 fails to render
`obvious meeting different “classification criteri[a]” as claimed
`
`Claim 1 recites [1b] “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...” and [1c] “when at least one of said calling attributes and at
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`least a portion of said callee identifier meet a public network classification
`
`criterion...” Similarly, Claim 74 at [74b]-[74c] recites “network classification
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`criteri[a].” The combination of Chu ‘684 and Chu ‘366 fails to render obvious the
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`network classification criteria recited in the claims.
`
`Petitioner argues: “Chu ‘684 determines whether the callee is a private packet
`
`network subscriber or a public PSTN customer (i.e., whether the call ‘meets public
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`network classification criteria’ or ’private network classification criteria’).”
`
`Petition at 19. Petitioner cites only a brief statement at 8:65-9:1 of Chu ‘684 to
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`support this argument. No other portion of the Petition provides further explanation
`
`or citation to any of the asserted references in support of the references teaching
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`“classification criteri[a]” as claimed.
`
`While Chu ‘684 at 8:65-9:1 discloses “determin[ing] whether a call is local,
`
`to another on-net phone, or to a phone that is on the PSTN,” this decision does not
`
`-16-
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`
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`IPR2016-01198
`Apple Inc v. Voip-Pal
`involve meeting classification criteria based on calling attributes, as recited in [1b]-
`
`[1c] and [74b]-[74c].
`
`a.
`
`Chu ‘684 fails to disclose “when … said calling attributes …
`meet ... network classification criteri[a]”
`
`“[W]hen at least one of said calling attributes …” in [1b]-[1c] refers to [1a],
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`which recites, inter alia, “using a caller identifier … to locate … calling attributes
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`….” Thus the “classification criteri[a]” in [1b]-[1c] must be based on the step of
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`“using a caller identifier … to locate” in claim [1a] because features recited in [1b]-
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`[1c] find antecedent basis in step [1a]. “[A] claim ‘requires an ordering of steps
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`when the claim language, as a matter of logic or grammar, requires that the steps
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`be performed in the order written, or the specification directly or implicitly
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`requires’ an order of steps.” Mformation Techs., Inc. v. Research in Motion Ltd.,
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`764 F.3d 1392, 1398 (Fed. Cir. 2014) (citations omitted).
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`The locating step of Chu ‘684 identified by Petitioner occurs after the
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`proposed classification step.
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