Paper 11
`Trials@uspto.gov
`571-272-7822 Entered: January 3, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VOIP-PAL.COM INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01201
`Patent 8,542,815 B2
`____________
`
`Before BARBARA A. BENOIT, LYNNE E. PETTIGREW, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`MARGOLIES, Administrative Patent Judge.
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: January 3, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VOIP-PAL.COM INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01201
`Patent 8,542,815 B2
`____________
`
`Before BARBARA A. BENOIT, LYNNE E. PETTIGREW, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`MARGOLIES, Administrative Patent Judge.
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`
`
`IPR2016-01201
`Patent 8,542,815 B2
`
`I. INTRODUCTION
`Voip-Pal.com, Inc. (“Patent Owner”) filed a Request for Rehearing
`(Paper 9, “Rehearing Request” or “Reh’g Req.”) of the Decision granting
`institution of inter partes review dated November 21, 2016 (Paper 6,
`“Institution Decision” or “Inst. Dec.”). Patent Owner requests
`reconsideration of the decision to institute inter partes review of claims 1, 7,
`27, 28, 34, 54, 72–74, 92, 93, and 111 of U.S. Patent No. 8,542,815 B2
`(Ex. 1001, “the ’815 patent”). For the reasons discussed below, Patent
`Owner’s request is denied.
`
`
`II. STANDARD OF REVIEW
`The party challenging a decision in a request for rehearing bears the
`burden of showing the decision should be modified. 37 C.F.R. § 42.71(d).
`A request for rehearing “must specifically identify all matters the party
`believes the Board misapprehended or overlooked, and the place where each
`matter was previously addressed.” Id. Upon a request for rehearing, the
`decision on a petition will be reviewed for an abuse of discretion. 37 C.F.R.
`§ 42.71(c).
`
`
`III. DISCUSSION
`Patent Owner maintains that, in the Institution Decision, the Board
`overlooked Patent Owner’s argument that a proper construction of the
`claims requires a particular ordering of steps, whereas Petitioner’s
`obviousness argument is based on the performance of these steps in a
`different order. Reh’g Req. 2. Patent Owner also argues that the Board
`overlooked Patent Owner’s arguments that Petitioner failed to provide a
`
`2
`
`
`
`IPR2016-01201
`Patent 8,542,815 B2
`
`valid motivation for why a skilled person would have combined with
`Chu ’6841 with either Chu ’3662 or Chen.3 Id. at 3. We address each
`argument below.
`
`A. Ordering of steps argument
`Patent Owner argues that the Board overlooked Patent Owner’s
`argument—set forth in pages 19 through 21 of Patent Owner’s Preliminary
`Response—that a proper construction of the challenged claims requires a
`particular ordering of steps, and that Petitioner’s obviousness analysis fails
`“when a claim construction of the ordering of steps is carried out and the
`obviousness case considered in view of the construed claims.” Id. at 3, 7.
`Specifically, Patent Owner argues that the Board overlooked the argument
`that Petitioner’s obviousness analysis fails to account for performing the
`“locating” step before the “classifying” step. Id. at 6–7. Patent Owner
`maintains that the Board “overlooked the significance of the Patent Owner’s
`claim construction explaining the required ordering of steps and the Patent
`Owner’s arguments showing that the Petitioner’s obviousness arguments fail
`due to Chu ’684’s distinct ordering of steps.” Id. at 5. Patent Owner also
`maintains that the Board “misapprehended the distinction between the
`claims and the cited references with respect to the order of steps.” Id.
`We disagree. We did not overlook or misapprehend Patent Owner’s
`argument regarding the ordering of steps. First, we explicitly cited Patent
`
`
`1 U.S. Patent No. 7,486,684 B2, filed Sept. 30, 2003 (Ex. 1003, “Chu ’684”).
`2 U.S. Patent No. 8,036,366 B2, filed Aug. 4, 2006 (Ex. 1004, “Chu ’366”).
`3 U.S. Patent Application Publication No. 2007/0064919 A1, filed Sept. 14,
`2005 (Ex. 1005, “Chen”).
`
`3
`
`
`
`IPR2016-01201
`Patent 8,542,815 B2
`
`Owner’s argument and repeated Patent Owner’s explanation of the argument
`in the context of Figure 6 of Chu ’684, as follows:
`Figure 6, above, depicts a sequence for handling an on-
`net call. Ex. 1003, 8:39–40. According to Patent Owner, in
`step 608, server consults a dial plan to classify the call, and in
`subsequent step 610, soft-switch 220 determines a match
`between a calling attribute and at least a portion of a callee
`identifier. Prelim. Resp. 19–21. Patent Owner argues that step
`608 therefore is not based on the claimed match. Id. at 19.
`Inst. Dec. 22 (emphasis added). As shown above, we expressly referenced
`Patent Owner’s argument that Petitioner’s analysis improperly relies on
`performing the classifying step (step 608) after the step of locating a caller
`dialing profile (step 610). Id.; see also Prelim Resp. 21 (arguing that “Chu
`’684’s step 608 occurs before the ‘locating’ step 610”). Second, in our
`Institution Decision, we explained that Petitioner sufficiently met its burden
`at the preliminary stage to show that the combined teachings of the
`references rendered the subject matter of the claims obvious, and that Patent
`Owner’s attempt to distinguish the single reference Chu ’684 did not address
`Petitioner’s showing that the combination teaches the claimed steps. Id. at
`22–23 (citing In re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012) and In re
`Keller, 642 F.2d 413, 425 (CCPA 1981) (“[T]he test for obviousness is what
`the combined teachings of the references would have suggested to those
`having ordinary skill in the art.”)); see also id. at 20 (addressing Petitioner’s
`reliance on both Chu ’684 and Chu ’366 for teaching the locating step,
`including Petitioner’s reliance on Chu ’366 for teaching call origin profiles
`that include calling attributes such as geographic location, country code, and
`area code); Pet. 21–22 (relying on both Chu ’684 and Chu ’366 for teaching
`the locating step of claim 1), 43–44 (relying on both Chu ’684 and Chen for
`
`4
`
`
`
`IPR2016-01201
`Patent 8,542,815 B2
`
`teaching the locating step of claim 1). Patent Owner again raises the same
`argument it raised in its Preliminary Response—that Petitioner’s
`obviousness analysis fails because Chu ’684’s ordering of steps is distinct—
`without explaining how we overlooked a previously-made argument that
`squarely addresses Petitioner’s proposed combinations. See, e.g., Reh’g
`Req. 4 (arguing that Petitioner “premised its obviousness theory on Chu
`’684’s ordering of steps, which are distinct from those in claim 1”), 5
`(arguing that “Chu ’684 teaches a method distinct from that of claim 1
`because Chu ’684 performs its method in an order different from that
`required by claim 1”), 5 (arguing that the Institution Decision overlooked
`“Patent Owner’s arguments showing that the Petition’s obviousness
`arguments fail due to Chu ’684’s distinct ordering of steps”).
`For the above reasons, we are not persuaded that we overlooked or
`misapprehended the ordering of steps argument in our Institution Decision.
`
`B. Motivation to combine argument
`Patent Owner also argues that the Board overlooked Patent Owner’s
`argument that the purported motivation to combine—that allowing users to
`place calls as if they were dialing from a standard PSTN phone would be
`desirable—is unsupported by substantial evidence. Reh’g Req. 7–12.
`Specifically, Patent Owner argues that the Institution Decision relies on
`testimony from Petitioner’s declarant, Dr. Houh, and that that declaration
`testimony “do[es] not rely upon any evidence for support.” Id. at 10. Patent
`Owner also argues that the Board overlooked Patent Owner’s argument that
`Dr. Houh’s testimony should be entitled to little or no weight. Id. at 11–12.
`We do not agree that we overlooked Patent Owner’s argument
`regarding the motivation to combine. In the Institution Decision, we
`
`5
`
`
`
`IPR2016-01201
`Patent 8,542,815 B2
`
`expressly referenced Patent Owner’s argument that Petitioner’s purported
`reason for combining the references is conclusory and insufficient. Inst.
`Dec. 26 (citing Prelim. Resp. 38–42). We also determined that for purposes
`of institution, Petitioner’s showing is sufficient. Id. As explained in the
`Institution Decision, Petitioner sufficiently cites either the references
`themselves or Mr. Houh’s testimony to show that each of the references
`teaches telecommunications systems in which VoIP subscribers can place
`calls to a callee on the PSTN, that one of ordinary skill in the art would have
`recognized upon reading Chu ’684 that allowing users to place calls as if
`they were dialing from a standard PSTN phone would have been desirable,
`creating a system capable of supporting a more intuitive and user-friendly
`interface, and that the infrastructure of the Chu ’684 system would support
`dialed digit reformatting based on attributes of the caller as taught by Chu
`’366 or Chen. Id. at 26, 30. Patent Owner fails to persuasively show that
`the we overlooked or misapprehended Patent Owner’s arguments regarding
`Petitioner’s proffered motivation to combine—which is based on the
`evidence of Mr. Houh’s testimony—particularly given that Mr. Houh (i)
`testifies to his educational background and experience in the field, including
`his “extensive familiarity with systems, networks, architectures, and
`methods related to traditional circuit-switched telecommunications, packet-
`based telecommunications, and systems that merged the two technologies,”
`Ex. 1006 ¶¶ 5–17, Appendix A, and (ii) based on his familiarity with the art,
`provides an overview of the state of the art in 2006, id. ¶¶ 17, 26–34.
`Patent Owner thus fails to establish that we should revisit our
`determination that for institution purposes Petitioner has articulated
`
`6
`
`
`
`IPR2016-01201
`Patent 8,542,815 B2
`
`sufficient reasoning with rational underpinning for combining the teachings
`of the references.
`
`IV. CONCLUSION
`Because Patent Owner fails to show that we misapprehended or
`overlooked a matter, or abused our discretion, we conclude that Patent
`Owner is not entitled to the relief it seeks.
`V. ORDER
`
`
`
`.
`
`
`Accordingly, it is:
`ORDERED that Patent Owner’s request for rehearing is denied.
`
`
`
`7
`
`
`
`IPR2016-01201
`Patent 8,542,815 B2
`
`FOR PETITIONER:
`Adam P. Seitz
`Eric A. Buresh
`Paul R. Hart
`ERISE IP, P.A.
`adam.seitz@eriseip.com
`eric.buresh@eriseip.com
`paul.hart@eriseip.com
`
`
`
`FOR PATENT OWNER:
`Kerry Taylor
`John M. Carson
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2kst@knobbe.com
`2jmc@knobbe.com
`BoxDigifonica@knobbe.com
`
`8
`
`
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