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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.
`Petitioner
`v.
`VOIP-PAL.COM, INC.
`Patent Owner
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`
`
`Case No. IPR2016-01201
`Patent 8,542,815
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`PETITIONER’S REQUEST FOR REHEARING
`PURSUANT TO 37 C.F.R. § 42.71(d)
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`TABLE OF CONTENTS
`I. INTRODUCTION ............................................................................................ 1
`II. RESERVATION OF RIGHTS ....................................................................... 2
`III. APPLICABLE STANDARDS ..................................................................... 3
`IV. RELEVANT PROCEDURAL HISTORY .................................................. 3
`V. ARGUMENT ................................................................................................. 6
`a. The Board Misapprehended the Nature of the Proposed Combination of
`Prior Art References. .......................................................................................... 7
`b. The Board Misapprehended the Proposed Combination’s Application to
`the Step Ordering Required by the Challenged Claims. ................................. 9
`c. The Board Overlooked the Motivations to Combine the Prior Art
`References. ......................................................................................................... 14
`VI. CONCLUSION ............................................................................................ 17
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`
`
`i
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`I.
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`INTRODUCTION
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`Apple Inc. (“Petitioner”) hereby respectfully requests that the Patent Trial and
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`Appeal Board (“Board”) reconsider its Final Written Decision (Paper 53) upholding
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`the patentability of claims 1, 7, 27-28, 34, 54, 72-74, 92-93, and 111 of U.S. Patent
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`No. 8,542,815 (Ex. 1001, “the ’815 Patent”).
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`The Final Written Decision (“FWD”), issued by the Replacement Panel, rests
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`on an erroneous understanding of the Proposed Combination that was advanced by
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`Patent Owner in its Preliminary Response. The Institution Decision (“ID”), issued
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`by the Original Panel, rejected the same arguments, noting that they were premised
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`on Patent Owner’s mischaracterization of the Proposed Combinations. The Original
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`Panel again rejected the very same arguments in response to Patent Owner’s Request
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`for Rehearing of the ID and again noted that they were premised on Patent Owner’s
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`mischaracterization of the Proposed Combinations. After being twice rejected,
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`Patent Owner largely abandoned the mischaracterizations in its Response.
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`The Replacement Panel, in the FWD, adopted Patent Owner’s pre-institution
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`mischaracterization of the Proposed Combination, which had been twice-rejected by
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`the Original Panel and largely abandoned by Patent Owner. In so doing, the
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`Replacement Panel did not cite or otherwise discuss a single paper submitted by
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`Petitioner post-institution correcting the Patent Owner’s mischaracterizations and
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`supporting the actual Proposed Combination. Petitioner had specifically reiterated
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`the nature and operation of the Proposed Combination in its Reply and again at the
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`1
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`oral argument. The Replacement Panel’s failure to even cite to Petitioner’s post-
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`institution briefs is telling. Had the Replacement Panel considered the full record, it
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`would not have misapprehended the Proposed Combinations and it would not have
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`overlooked the ample record evidence supporting the instituted grounds.
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`Accordingly, Petitioner respectfully requests that the Board reconsider the
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`Final Written Decision in view of the actual Proposed Combinations and the totality
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`of the record, including Petitioner’s arguments submitted post-institution.
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`This request is timely filed by January 8, 2019—the deadline set forth in the
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`Board’s Order, Granting-in-Part Petitioner’s Motion for Sanctions. Paper 70 at 16.
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`II.
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`RESERVATION OF RIGHTS
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`By presenting the Request for Rehearing authorized by Paper 70, Petitioner
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`does not concede, expressly or by implication, the correctness of the Board’s Order
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`resolving Petitioner’s motion for sanctions. Patent Owner engaged in improper ex
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`parte communications that created at least the appearance of impropriety and
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`prejudiced Petitioner. Petitioner continues to maintain that, in addition to violating
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`the Board’s rules, this improper conduct violated both the Administrative Procedure
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`Act and the Due Process Clause. In the context of this proceeding, and given the
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`undisputed timing and nature of the events, Patent Owner’s violations, individually
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`or collectively, warrant a meaningful sanction to alleviate the prejudice to Petitioner.
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`The rehearing request authorized by Paper 70 is at most a partial remedy for Patent
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`Owner’s improper conduct.
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`2
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`III.
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`APPLICABLE STANDARDS
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`“A party dissatisfied with a decision may file a single request for rehearing.”
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`37 C.F.R. §42.71(d). “The request must specifically identify all matters the party
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`believes the Board misapprehended or overlooked, and the place where each matter
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`was previously addressed in a motion, an opposition, or a reply.” Id. The Board
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`reviews a decision for an abuse of discretion. 37 C.F.R. §42.71(c). “An abuse of
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`discretion may arise if a decision is based on an erroneous interpretation of law, if a
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`factual finding is not supported by substantial evidence, or if an unreasonable
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`judgment is made in weighing relevant factors.” IPR2013-00298, Paper 24, at 2
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`(Feb. 11, 2014) (citations omitted).
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`IV.
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`RELEVANT PROCEDURAL HISTORY
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`Petitioner requested Inter Partes Review of claims 1, 7, 27-28, 34, 54, 72-74,
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`92-93, and 111 of the ’815 Patent (“the Challenged Claims”) on two grounds (“the
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`Proposed Combinations”), both of which rely on the same base reference—Chu
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`’684—and similar secondary references—Chu ’366 and Chen (“the Secondary
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`References”). Paper 1, Petition at 5, 12-20, 37-41. Each of the Proposed
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`Combinations relies on Chu ’684 for its infrastructure, call classifying, and call
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`routing teachings, and the Secondary References for their caller profile and dialed
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`digit reformatting teachings. Id. The Proposed Combinations each propose that Chu
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`’684 would benefit if its users could employ short form dialing—as is common for
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`local PSTN calls on a standard landline (e.g., 555-1234)—rather than being required
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`3
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`to use full E.164-compliant numbers (e.g., +1-202-555-1234) as contemplated by
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`Chu ’684. Id. The primary difference between the two Proposed Combinations is
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`that Chen provided an earlier date.
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`Patent Owner filed a Preliminary Response (“POPR”), arguing (1) that
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`Petitioner’s motivations to combine are insufficient and (2) that the Proposed
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`Combinations fail to properly account for the required ordering of certain limitations
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`of the Challenged Claims. Paper 5, POPR at 18-21, 39-42, 48-49, 59-62. In its ID,
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`the Original Panel rejected Patent Owner’s arguments, pointing out that Patent
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`Owner had mischaracterized the Proposed Combinations and ignored the Petition’s
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`reliance on the Secondary References for key teachings. Paper 6, ID at 19-24.
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`Patent Owner then filed a Request for Rehearing, again challenging the
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`adequacy of the Petitioner’s motivations to combine and the ordering issue. Paper 9,
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`Request for Rehearing at 2-3. The Original Panel once again rejected these
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`arguments, and again pointed out that Patent Owner had mischaracterized the
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`Proposed Combinations. Paper 11, Decision Denying Request for Rehearing at 3-6.
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`Patent Owner next filed its Response, which attempted to swear behind both
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`Chu ’366 and Chen, alleging that the Challenged Claims were actually reduced to
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`practice 17 months before filing. Paper 17, Response at 4-38. On the substance,
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`Patent Owner abandoned the mischaracterization of the Proposed Combinations it
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`had unsuccessfully advanced twice before. Instead, the Patent Owner introduced a
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`new theory that Chu ’684 allegedly did not contemplate E.164 dialing at all, and
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`4
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`instead requires that users “dial private numbers to place a call to the PBX private
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`network, or a PSTN access code (e.g., a prefix of ‘9’) followed by a PSTN number
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`based on local dialing conventions to call the PSTN.” Paper 17, Response at 46-57,
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`64-66. Patent Owner also advanced a new ordering theory, wholly different from its
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`original ordering argument, suggesting that the caller-specific profiles taught by the
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`Secondary References cannot (or would not) be incorporated into Chu ’684’s
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`infrastructure. Id. at 59-64.
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`Because Patent Owner had consistently mischaracterized the Proposed
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`Combinations in its early papers, Petitioner’s Reply reiterated the nature of the
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`Proposed Combinations set forth in the Petition and explained the ordering of the
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`combination. Paper 34, Reply at 15-16. Petitioner also addressed Patent Owner’s
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`new arguments. Id. at 16-24. And, finally, the Reply addressed Patent Owner’s
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`swear behind attempt. Id. at 1-15.
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`On June 7, 2017, the parties participated in a conference call with the Board
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`to discuss Patent Owner’s request for a sur-reply. Unbeknownst to Petitioner, the
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`Original Panel had been removed and new judges—Administrative Patent Judges
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`Josiah Cocks, Jennifer Meyer Chagnon, and John Hudalla (“Replacement Panel”)—
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`were appointed. This call was the first time Petitioner learned of the Replacement
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`Panel. Paper 37. There was no discussion or explanation for why the Replacement
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`Panel was appearing.
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`On November 20, 2017, the Replacement Panel issued its Final Written
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`5
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`
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`Decision (“FWD”). See generally Paper 53, FWD. The two issues on which the
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`Replacement Panel found in favor of Patent Owner were (1) the original “ordering”
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`argument premised on the Patent Owner’s pre-Institution mischaracterizations of
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`the Proposed Combinations and (2) an alleged inadequate motivation to make the
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`mischaracterized Proposed Combinations. Id. at 18-24.
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`Petitioner subsequently moved for sanctions against Patent Owner after it
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`discovered that Patent Owner had engaged in an ex parte letter-writing campaign
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`with the Board and other officials. Paper 55.
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`On August 22, 2018, the Board issued an order assigning three new judges—
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`Deputy Chief Administrative Patent Judge Scott R. Boalick, Vice Chief
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`Administrative Patent Judge Jacqueline Wright Bonilla, and Vice Chief
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`Administrative Patent Judge Michael P. Tierney (“Third Panel”)—to this matter.
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`Paper 69. On December 21, 2018, the Third Panel found that Patent Owner engaged
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`in sanctionable conduct and granted-in-part Petitioner’s motion for sanctions. As a
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`remedy, the Board permitted Petitioner to file this rehearing request. Paper 70.
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`V.
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`ARGUMENT
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`In the FWD, the Replacement Panel concluded that the Proposed
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`Combinations did not disclose the ordering of steps required by the Challenged
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`Claims, and that Petitioner had not met its burden to show a motivation to combine
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`the Proposed Combinations.
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`In
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`reaching
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`these conclusions,
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`the Panel
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`misapprehended the nature of the Proposed Combinations and failed to address
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`6
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`Petitioner’s Reply arguments.
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`a.
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`The Board Misapprehended the Nature of the Proposed
`Combination of Prior Art References.
`The Replacement Panel did not understand the Proposed Combinations.
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`Because the Patent Owner had twice attempted to mischaracterize the Proposed
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`Combination, Petitioner began its Reply (the first opportunity it had to address
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`Patent Owner’s mischaracterization attempts) by explaining
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`the Proposed
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`Combinations in a step-wise fashion:
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`1) First, a caller’s profile is accessed, which includes caller attributes
`(e.g., IDD, NDD, area code, etc.). The Secondary References teach
`accessing a caller profile. See, e.g., Paper 1, Petition at 22-23
`(describing use of calling attributes from Secondary References); see
`also, Ex. 2043, Houh Trans. at 18:5-22:24 (explaining that the Chu
`‘366 “call origin profile” includes calling attributes and that Chu ‘684
`includes the user-specific infrastructure to support accessing the user-
`specific profile from Chu ‘366); 33:24-35:3 (same explanation
`regarding Chen).
`2) Next, dialed digits are received by the caller pursuant to standard
`public dialing conventions, e.g., 123-4567 for a local call. The number
`reformatting taught by the Secondary References is performed, which
`results in an E.164-compliant callee identifier, e.g., 1-202-123-4567.
`See, e.g., Paper 1, Petition at 22-23.
`3) Finally, Chu ‘684 uses the reformatted E.164 number to determine
`whether the callee is on the private IP network or the public PSTN and
`generates routing messages accordingly. See, e.g., id. at 23-24.
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`
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`7
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`
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`Paper 34, Reply at 15-16. As explained in the Petition, the Proposed Combinations
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`recognized that Chu ’684 required a user to dial a complete (long form) E.164
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`compatible number in order to reach a destination phone as was typical of such VoIP
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`systems. Paper 1, Petition at 17. By combining the Chu ’684 system with the
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`Secondary References’ short form dialing and reformatting teachings, a customer
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`would be able to enjoy the benefit of familiar short form dialing and the Chu ’684
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`system could continue to receive and process long form E.164 compatible numbers
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`as per its normal disclosed operation. See Paper 34, Reply at 21-23 (establishing that
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`Chu ’684 processes E.164 compatible numbers to route calls). Put simply, the
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`Secondary References provide for short form dialing to be reformatted into E.164
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`numbers that Chu ’684 may then process to route a call. The Replacement Panel did
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`not discuss these (or any other) portions of the Reply.
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`Multiple statements in the FWD suggest that the Replacement Panel did not
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`apprehend the Proposed Combinations. For example, the Replacement Panel stated:
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`Petitioner seems to advocate that Chu ’684, itself, contemplates a
`“reformatted” callee identifier when determining the public or
`private network affiliation of a call. [ ]
`[I]f Chu ’684’s dialed digits are reformatted prior to determining the
`local or non-local (i.e., PSTN) nature of a call, then it stands to reason
`that they no longer constitute the dialed digits. Petitioner has not
`explained adequately why or how Chu ’684’s step of assessing the
`dialed digits is applicable to a number that has been reformatted
`into a number that is no longer the dialed digits.
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`
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`8
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`
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`Paper 53, FWD at 22-23 (emphasis added). Petitioner never suggested that Chu ’684,
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`itself, contemplates a “reformatted” callee identifier. Chu ’684 contemplates
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`receiving long form E.164 compatible numbers. The Secondary References
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`contemplate receiving short form numbers and reformatting them to E.164
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`compatible numbers. Thus, in the Proposed Combinations, short form dialing may
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`be used and, after the reformatting contemplated by the Secondary References, Chu
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`’684 receives the same long form E.164 compatible numbers it expressly
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`contemplates.
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`In a similar misapprehension, the Replacement Panel criticizes Petitioner for
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`failing to explain how Chu ’684 can process a reformatted number. There was no
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`such failure. In the Proposed Combination, the reformatted number supplied to Chu
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`’684 is in the same E.164 compatible format that Chu ’684 expressly contemplates
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`using. The Replacement Panel should not have required an explanation for why or
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`how Chu ’684 would process the same format of dialed digits its disclosure expressly
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`contemplates using. Had the Replacement Panel considered, at a minimum, the
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`Reply’s reiterated explanation of the Proposed Combinations, the Replacement
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`Panel would have analyzed the actual operation of the Proposed Combinations.
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`b.
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`The Board Misapprehended the Proposed Combination’s
`Application to the Step Ordering Required by the
`Challenged Claims.
`The Replacement Panel’s misapprehension of the Proposed Combination and
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`apparent disregard of the Reply’s step-wise explanation of the Proposed
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`9
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`
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`Combinations led to incorrect conclusions. Specifically, the Replacement Panel
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`incorrectly concluded that the Proposed Combinations failed to account for the “step
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`ordering that is required by the claims of the ’815 patent.” Paper 53, FWD at 23-24.
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`The Replacement Panel found that Petitioner relied on step 610 from Chu ’684 to
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`teach the caller dialing profile limitation and step 608 from Chu ’684 to teach the
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`limitation directed to evaluating caller attributes to produce public or private routing
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`messages. Id. at 23-24. With this misunderstanding of the Proposed Combination,
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`the Replacement Panel made the following finding:
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`That Petitioner relies on Chu ’684’s “step 610” for “locating a caller
`dialing profile,” and then relies on Chu ’684’s prior “step 608” for the
`subsequent steps of “determining a match” and “classifying the call” is
`at odds, or is inconsistent, with the step ordering that is required by the
`claims of the ’815 patent.
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`Id. at 24 (emphasis in original).
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`This precise argument was presented by Patent Owner twice—in its
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`Preliminary Response (Paper 5 at 18-21) and in its Request for Rehearing (Paper 9
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`at 3-7). In both instances, the Original Panel correctly rejected the argument as being
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`premised on a mischaracterization of the Proposed Combination set forth in the
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`Petition. See Paper 6, ID at 22-23 (noting “Petitioner does not rely exclusively on
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`Chu ’684 for teaching the [pertinent limitations]” and criticizing Patent Owner for
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`“address[ing] Chu ’684 and Chu ’366 individually, and does not consider the
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`combined teachings of the references”); Paper 11 at 3-5 (rejecting Patent Owner’s
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`
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`10
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`
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`argument “that the Board overlooked the argument that Petitioner’s obviousness
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`analysis fails to account for performing the ‘locating’ step before the ‘producing’
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`steps,” noting that “Patent Owner’s attempt to distinguish the single reference
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`Chu ’684 did not address Petitioner’s showing that the combination teaches the
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`claimed steps,” and pointing out that “Petitioner[] reli[es] on both Chu ’684 and
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`Chu ’366 for teaching the locating step, including Petitioner’s reliance on Chu
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`’366 for teaching call original profiles”) (emphasis added).
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`As recognized by the Original Panel and as described in the preceding section,
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`the Proposed Combinations do not rely on step 610 of Chu ’684 alone for the caller
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`profile limitation. Instead, the Secondary References provide the caller profile
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`comprising caller attributes that is then used to reformat dialed digits (callee
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`identifier) before the callee identifier is used in classification step 608 (to determine
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`whether public or private) and before routing step 610 to produce either a public or
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`private routing message. Petitioner explained this clearly in the above-referenced
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`step-wise description and further explained that:
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`Petitioner’s two proposed obviousness combinations . . . rely on Chu
`‘684 as a base reference for its infrastructure, call classifying, and call
`routing disclosures . . . [and] rely on their respective secondary
`references . . . for their caller profile and dialed digit reformatting
`disclosures.
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`Paper 34, Reply at 15 (emphasis added). Petitioner’s Reply similarly explained that
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`the Secondary References provide the user-specific caller profiles and that the
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`
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`11
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`
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`citations to Chu ’684 for the “locating” limitation establish that Chu ’684 includes
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`the infrastructure necessary to make use of the Secondary Reference caller profiles
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`and number reformatting, not that Chu ’684 itself is relied upon for locating a caller
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`profile:
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`[T]he combinations rely on the user-specific profiles taught by the
`Secondary References. Indeed, this is the principle purpose of making
`the combination in the first place. As Petitioner’s expert explained, Chu
`‘684 discloses the infrastructure required to locate a caller-specific
`dialing profile like those in the Secondary References. Namely, the
`servers in Chu ‘684 necessarily maintain user-specific information in
`order to effectively route calls. Accordingly, they are fully equipped to
`perform caller-specific lookups as contemplated by the combination.
`See Ex. 2043, Houh Trans. at 19:22-22:24.
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`Id. at 23-24 (emphasis added).
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`The Replacement Panel’s conclusions are premised on a mapping that is not
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`consistent with the Proposed Combinations set forth in the Petition and further
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`explained in the Reply. Further illustrating the Replacement Panel’s failure to
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`apprehend the full record, not even Patent Owner continued to pursue the
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`mischaracterization of Petitioner’s Proposed Combinations beyond its Pre-
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`Institution papers. For example, Patent Owner’s Response acknowledges that
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`Petitioner relies on the Secondary References for their dialed digit reformatting that
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`takes place before Chu ’684’s classification step 608:
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`Petitioner proposes modifying Chu ‘684 by inserting the public
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`
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`12
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`
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`number reformatting method of Chu ‘366 or Chen before the
`classification step 608 in Chu ’684[.]
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`Paper 17, Response at 50 (emphasis added). Patent Owner’s Response recognized
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`that the Proposed Combinations rely on caller profiles from the Secondary
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`References and instead argued that the Petition included inadequate support:
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`Chu ‘684 discloses that an enterprise “dial plan” is shared by a group
`of users. Chu ‘366 discloses user-specific “call origin location profiles”
`and Chen discloses a user’s fixed dial plan. [] Ex. 2016 at ¶ 57. The
`record is silent as to how to combine caller-specific individualized
`profiles with an enterprise’s IP-PBX network-specific “dial plan.”
`
`Id. at 63-64. Nonetheless, the Replacement Panel did not appreciate that the Patent
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`Owner had moved away from its Pre-Institution attempts to mischaracterize the
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`Proposed Combination. The Replacement Panel appears to have reverted to pre-
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`Institution arguments, twice rejected by the Original Panel, abandoned by the Patent
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`Owner, and fully addressed in Petitioner’s Reply.
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`In sum, by failing to consider the full record and accepting the flawed ordering
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`argument from Patent Owner’s pre-Institution papers, the Replacement Panel
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`misapprehended and overlooked the actual Proposed Combinations at issue in this
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`proceeding. The Replacement Panel’s error is particularly egregious in light of (1)
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`the Original Panel having twice rejected the same argument, (2) Petitioner having
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`repeatedly explained the nature of its Proposed Combinations, and (3) Patent Owner
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`having abandoned the argument in its Response.
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`
`
`13
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`
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`c.
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`The Board Overlooked the Motivations to Combine the Prior
`Art References.
`With a proper understanding of the Proposed Combinations, the motivations
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`to combine are straightforward—the benefit gained is to allow customers to dial
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`using the short form numbers (PSTN) they are used to using (using the reformatting
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`of the Secondary References) while employing IP call processing systems that rely
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`on E.164 compatible dialing (like Chu ’684). Here, the Replacement Panel
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`concluded that “Petitioner’s reasons for combining the teachings of Chu ’684 and
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`Chu ’366 [were] conclusory and insufficient to carry the burden of demonstrating
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`unpatentability by a preponderance of the evidence.” Paper 53, FWD at 21. In
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`reaching this conclusion, however, the Replacement Panel accepted Patent Owner’s
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`representation that the full extent of Petitioner’s motivations to combine are
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`described in two paragraphs of the Petition and the expert declaration paragraphs
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`cited therein. Compare Paper 53, FWD at 18-21 (analyzing only these portions of
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`the record) with Paper 5, POPR at 39-42 (characterizing Petitioner’s motivation to
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`combine as being entirely contained within these same portions of the record).
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`The Replacement Panel entirely overlooked the explanation of the motivation
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`to combine provided in the Petition. The Petition explains that Chu ’684 teaches a
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`“telecommunications system[] in which a VoIP subscriber can place a call to either
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`another VoIP subscriber on a private packet-based network or to a customer on the
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`public PSTN.” Paper 1, Petition at 12. The Petition then explains why it would have
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`been beneficial to combine the Chu ’684 VoIP system with the dialed digit
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`
`
`14
`
`
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`reformatting described in Chu ’366 based on the express disclosure of Chu ’366:
`
`Chu ’366 explains why such comparison and reformatting is necessary
`in a VoIP system. Namely, “E.164 [ ] provides a uniform means for
`identifying any telephone number in the world to any telephony user in
`the world. . . . When making telephone calls via a traditional PSTN,
`a subscriber is able to enter abbreviated numbers for local and
`national telephone calls. For example, for a local call in the United
`States, a user may simply enter the seven digit telephone number
`without an E.164 prefix, the country code or the area code. Local
`and national calls are possible with PSTN systems because the fixed-
`line phones from which such calls are made are hardwired directly to
`the local PSTN center. By contrast, there is no such concept of local,
`long distance or national calls when making a call via Internet
`telephony. VoIP calls use the Internet, which is world-wide and not
`tied to any single location.” Ex. 1003, Chu ’366 at 1:18-47. By using
`caller attributes to reformat dialed digits into an E.164 compatible
`number, “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.” Id. at 2:1-4. In other
`words, both Chu ’366 and the ’815 Patent allow VoIP customers to
`enter dialed digits as if they were calling from a standard PSTN
`telephone, and the system then reformats the number using
`attributes of the caller (e.g., national and area codes).
`
`Id. at 17 (emphasis added); see also id. at 39 (same for Chen combination).
`
`This benefit of allowing customers to use standard dialing formats that are
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`then reformatted into E.164 compatible numbers is the motivation to make the
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`
`
`15
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`
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`Proposed Combination. The motivation is expressly provided by the Secondary
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`References themselves. This discussion appears to have been ignored by the
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`Replacement Panel. In fact, the Final Written Decision does not discuss the
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`motivations provided by the Secondary References at all. At the Oral Hearing,
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`Petitioner stressed again that the Secondary references themselves provided a
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`motivation to combine the prior art:
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`Patent Owner has argued that we failed to provide any particularized
`reasoning for the motivation to combine. Let's start with the secondary
`references themselves. They provide some of the best explanation
`for a motivation to combine here.
`
`Paper 52, Hearing Trans. at 21:17-21 (emphasis added). An extensive discussion of
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`the motivations to combine, including the motivations provided by the Secondary
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`References, was also provided in Petitioner’s Opposition to Patent Owner’s Motion
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`to Exclude. Paper 44, Opposition to Mtn. to Exclude at 7-11. This Opposition further
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`rebutted many of the critiques advanced in the FWD, but it was not cited or even
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`acknowledged by the Replacement Panel.
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`At no point in the Replacement Panel’s discussion of the motivations to
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`combine is there any recognition of these key motivations proposed in the Petition.
`
`Namely, by ignoring the substantive discussion of the Proposed Combinations and
`
`focusing only on the conclusion paragraphs, the Replacement Panel appears to have
`
`entirely overlooked that the Petition proposed modifying Chu ’684 such that short
`
`form dialing (e.g., 555-1234) could be supported as if callers were using a standard
`
`
`
`16
`
`
`
`PSTN phone. This is the “intuitive” and “user-friendly” modification of Chu ’684
`
`that is the focus of the Proposed Combinations.
`
`The Replacement Panel levies general criticisms at Petitioner, contending that
`
`the Petition fails to establish that “one of ordinary skill in the art would have regarded
`
`Chu ’684’s teachings as deficient.” However, the Replacement Panel did not
`
`apprehend that Chu ’684 did not contemplate allowing short form dialing and that
`
`the combination of Secondary References was necessary to supply that benefit. The
`
`Replacement Panel did not appreciate the nature of the Proposed Combinations and
`
`overlooked or failed to understand that the motivations to make the combinations
`
`are expressly supplied by the Secondary References themselves.
`
`VI.
`
`CONCLUSION
`
`For the foregoing reasons, the New Board should reconsider the Final Written
`
`Decision and enter a new decision cancelling all Challenged Claims.
`
`
`
`Respectfully submitted,
`
`Date: January 8, 2019
`
`
`
`/s/ Adam P. Seitz
`Adam P. Seitz, Reg. No. 52,206
`Eric A. Buresh, Reg. No. 50,394
`ERISE IP, P.A.
`7015 College Blvd., Suite 700
`Overland Park, KS 66211
`(913) 777-5600 Phone
`(913) 777-5601 Fax
`eric.buresh@eriseip.com
`adam.seitz@eriseip.com
`Paul R. Hart, Reg. No. 59,646
`ERISE IP, P.A.
`5600 Greenwood Plaza Blvd., Suite 200
`
`
`
`17
`
`
`
`Greenwood Village, CO 80111
`(913) 777-5600 Phone
`(913) 777-5601 Fax
`paul.hart@eriseip.com
`ATTORNEYS FOR PETITIONER
`
`
`
`18
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE ON PATENT OWNER
`Pursuant to 37 C.F.R. §§ 42.6(e), the undersigned certifies that on January 8,
`
`2019, a true and correct copy of this PETITIONER’S REQUEST FOR
`
`REHEARING UNDER 37 C.F.R. § 42.71(d) was served on the counsel for Patent
`
`Owner by electronic means at the following addresses of record:
`
`
`
`
`
`
`
`
`
`Kerry S. Taylor
`John M. Carson
`Knobbe, Martens, Olson & Bear, LLP
`2040 Main Street, 14th Floor
`Irvin, CA 92614
`BoxDigifonica@knobbe.com
`
`Kevin Malek
`Malek Moss PLLC
`340 Madison Avenue, FL19
`New York, NY 10173
`kevin.malek@malekmoss.com
`
`Ryan Thomas (pro hac vice)
`thomasattorney711@gmail.com
`
`Stephen Melvin
`Zytek Communication Corporation
`114 W. Magnolia Street, Suite 400-113
`Bellingham, WA 98225
`melvin@zytek.com
`
`
`Respectfully submitted,
`
`BY:
`
`/s/ Paul R. Hart
`Paul R. Hart, Reg. No. 59,646
`
`
`
`ATTORNEY FOR PETITIONER
`
`19
`
`
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