`
`Filed on behalf of:
`Patent Owner Voip-Pal.com Inc.
`By: Kevin N. Malek
`
`MALEK MOSS PLLC
`340 Madison Avenue, 19th Floor
`
`
`New York, NY 10173
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`Tel.: +1-212-812-1491
`Tel.: +1-855-291-7407
`Fax: +1-561-910-4134
`Email: kevin.malek@malekmoss.com
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.
`
`Petitioner,
`
`v.
`
`VOIP-PAL.COM, INC.,
`
`Patent Owner
`
`
`
`
`
`
`
`
`Case No. IPR2016-01201
`U.S. Patent 8,542,815
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`PATENT OWNER’S OPPOSITION TO APPLE’S REQUEST FOR
`REHEARING PURSUANT TO BOARD ORDER OF DECEMBER 21, 2018
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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.
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`LEGAL STANDARD ON REVIEW .............................................................. 2
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`III. ARGUMENT ................................................................................................... 3
`
`A.
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`The Board Reviewed and Rejected Petitioner’s Motivation to
`Combine the Prior Art References. ....................................................... 4
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`1.
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`2.
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`3.
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`The Board considered and rejected all of Petitioner’s
`arguments. ................................................................................... 4
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`The Second Panel relied on evidence from Patent Owner’s
`expert to reject Petitioner’s interpretation of Chu ‘684 .............. 6
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`The Second Panel did not “overlook” or “ignore” Petitioner’s
`motivation to combine arguments .............................................10
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`B.
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`The Second Panel Understood the Proposed Combination And
`Rejected It As Unsupported ................................................................12
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`1.
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`2.
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`3.
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`4.
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`The Second Panel did not misunderstand the combination; it
`rejected Petitioner’s underlying assumptions about Chu ‘684 .13
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`Petitioner’s reliance on Chu ‘684’s alleged “infrastructure” for
`applying calling attributes was refuted by expert evidence ......15
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`Petitioner’s proposal ignores corruption of private numbers ...16
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`The Petitioner distorts the record in alleging that the Patent
`Owner “mischaracterized” its Proposed Combinations ............17
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`C.
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`Petitioner’s Arguments Are Moot Due to Reliance on Uncitable Prior
`Art ........................................................................................................20
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`IV. CONCLUSION ..............................................................................................21
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`
`
`-i-
`
`
`
`TABLE OF AUTHORITIES
`
`Page No(s).
`
`Amerigen Pharm. Ltd. v. Janssen Oncology, Inc.,
`IPR2016-00286, 2018 WL 6317959 (P.T.A.B. Dec. 3, 2018) ............................. 3
`
`Arnold P'ship v. Dudas,
`362 F.3d 1338, 1340 (Fed. Cir. 2004) .................................................................. 3
`
`Belden Inc. v. Berk-Tek LLC,
`Nos. 2014-1575, -1576 (Fed. Cir. Nov. 5, 2015) ........................................... 9, 20
`
`Dynamic Drinkware v. National Graphics,
`800 F.3d 1375 (Fed. Cir. 2015) ............................................................................ 5
`
`In re Gartside,
`203 F.3d 1305, 1315–16 (Fed. Cir. 2000) ............................................................ 3
`
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) ............................................................................ 16
`
`Intelligent Biosystems v. Illumina Cambridge,
`821 F.3d 1359, 1367-1368 (Fed. Cir. 2016) ......................................................... 5
`
`PTAB Trial Guide
`77 Fed. Reg. 48763 (Aug. 14, 2012) ................................................................... 6
`
`Star Fruits S.N.C. v. United States,
`393 F.3d 1277, 1281 (Fed. Cir. 2005) .................................................................. 3
`
`
`
`OTHER AUTHORITIES
`
`35 U.S.C. § 102 .................................................................................................... 2, 20
`
`35 U.S.C. § 312 ........................................................................................................ 19
`
`35 U.S.C. § 316 .......................................................................................................... 5
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`-ii-
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`
`
`TABLE OF AUTHORITIES
`(cont’d)
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`Page No(s).
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`37 C.F.R. § 42.65 ....................................................................................................... 6
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`37 C.F.R. § 42.71 ......................................................................................... 1, 3, 7, 13
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`37 C.F.R. § 42.104 ................................................................................................. 5, 6
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`
`
`
`
`
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`-iii-
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`IPR2016-01201
`Apple Inc v. Voip-Pal
`
`Patent Owner Voip-Pal.com, Inc. (“Voip-Pal”) hereby opposes Petitioner
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`Apple’s Motion for Rehearing (Paper 71) and respectfully requests denial thereof.
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`I.
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`INTRODUCTION
`
`Petitioner alleges that, following institution of inter partes review of U.S.
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`Patent 8,542,815 (“the ‘815 Patent”) (Paper 6) by an original panel of the Board
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`(“First Panel”), a replacement panel of the Board (“Second Panel”) erred in ruling
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`against Petitioner in a Final Written Decision (“FWD,” Paper 54), specifically
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`because it misapprehended or overlooked Petitioner’s arguments. In the present
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`Motion (Paper 71), Petitioner seeks rehearing under 37 C.F.R. § 42.71(d) of the
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`FWD before a new panel (“Third Panel”) of the Board as authorized in Paper 70.
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`Through blanket speculation and mischaracterization of the record, Petitioner
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`tries to mislead the Board into finding error where there has been none. Petitioner
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`mischaracterizes the scope of review by the Board in arriving at the FWD in order to
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`create the illusion that the Board misapprehended and overlooked its arguments. But
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`the evidence shows that the FWD was based on a full review of the entire record,
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`and that Petitioner’s attempt at a do-over should be denied—for multiple reasons:
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`First, the Second Panel did not misapprehend or overlook Petitioner’s
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`motivation to combine argument or the related testimony of Petitioner’s expert, but
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`rather, rejected it as insufficient and/or implausible in light of the well-supported
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`evidence of Patent Owner’s expert evidence—which was not before the First Panel;
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`Second, the Second Panel did not misapprehend or overlook the Proposed
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`-1-
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`IPR2016-01201
`Apple Inc v. Voip-Pal
`
`Combinations including Petitioner’s reliance on Chu ‘366 to provide reformatting of
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`dialed digits. Rather, the Board recognized—in light of expert evidence—that
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`Petitioner had not shown that Chu ‘684’s step of assessing dialed digits (step 608)
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`would work for reformatted numbers, and further, that Petitioner had failed to
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`explain the necessary reprogramming to achieve operability; and
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`Third, while the above findings already mandate denial of Petitioner’s Motion
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`for Rehearing, the Second Panel also considered and rejected an alternative ordering
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`of steps suggested in the Petition (now abandoned by Petitioner). Petitioner seizes
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`on this finding in isolation to allege “misapprehension” of its position, but fails to
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`recognize that earlier in the FWD the Panel had already dealt with Petitioner’s
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`preferred ordering of steps and, relying on Patent Owner’s expert evidence and
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`arguments, rejected it as unsupported. Petitioner repeatedly (and incorrectly) alleges
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`“mischaracterization” of its position by the Patent Owner, but the evidence shows
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`that Petitioner itself distorts the record in a belated attempt to shift its position.
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`Separately, the FWD should be upheld because Petitioner’s arguments rely on
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`antedated prior art which is not citable under 35 U.S.C. § 102(e). Petitioner filed no
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`expert evidence to challenge Patent Owner’s meticulous antedating case, in which
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`multiple lines of evidence, supported by expert evidence, show actual reduction to
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`practice of the invention in June 2005 prior to the dates of Chu ‘366 and Chen.
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`II. LEGAL STANDARD ON REVIEW
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`A party requesting rehearing bears the burden of showing the decision should
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`-2-
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`
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`IPR2016-01201
`Apple Inc v. Voip-Pal
`
`be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters
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`the Board misapprehended or overlooked, and where each matter was addressed
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`previously in a motion, an opposition, or a reply. Id. The decision is reviewed for an
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`abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if
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`a decision is based on an erroneous interpretation of law or if a factual finding is not
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`supported by substantial evidence. Star Fruits S.N.C. v. United States, 393 F.3d
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`1277, 1281 (Fed. Cir. 2005); Arnold P'ship v. Dudas, 362 F.3d 1338, 1340 (Fed.
`
`Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). Accordingly, a
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`request for rehearing is not an opportunity merely to disagree with the Board’s
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`assessment of the arguments or weighing of the evidence, or to present new
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`arguments or evidence. See Amerigen Pharm. Ltd. v. Janssen Oncology, Inc., No.
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`IPR2016-00286, 2018 WL 6317959, at *1 (P.T.A.B. Dec. 3, 2018).
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`III. ARGUMENT
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`The FWD (Paper 54) was not based on an erroneous interpretation of the law.
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`Moreover, the FWD was supported by substantial evidence. In addition, Petitioner
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`fails to meet the standard for rehearing under 37 C.F.R. § 42.71(d) by failing to
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`identify how or why the Panel misapprehended or overlooked its position. The FWD
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`correctly concluded that Petitioner’s arguments were conclusory and insufficient
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`and rejected evidence presented through Petitioner’s expert, Dr. Houh, while
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`crediting the unrefuted testimony of Patent Owner’s expert, Dr. Mangione-Smith.
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`For the following reasons, Petitioner’s Motion for Rehearing should be denied.
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`-3-
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`IPR2016-01201
`Apple Inc v. Voip-Pal
`
`A. The Board Reviewed and Rejected Petitioner’s Motivation to Combine
`the Prior Art References.
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`The Board considered and rejected all of Petitioner’s arguments.
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`1.
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`The thrust of Petitioner’s Motion is that “[t]he Replacement Panel entirely
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`overlooked the explanation of the motivation to combine provided in the Petition.”
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`See Paper 71 at 14. Petitioner’s speculation about what the Board did and did not
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`review in considering Petitioner’s motivation to combine arguments ignores and
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`mischaracterizes the FWD. Indeed, the Board’s own expression in the FWD
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`indicates fulsome review, demonstrating the inaccuracy in Petitioner’s argument:
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`We have considered the Petition and its underlying supporting
`evidence. We also considered the record that has developed during
`the course of the trial, which includes the Patent Owner Response
`and all its underlying supporting evidence.
`
`* * *
`After careful review of the record at hand, we find that Petitioner’s
`reasons for combining the teachings of Chu ‘684 and Chu ‘366 to be
`conclusory and insufficient to carry the burden of demonstrating
`unpatentability by a preponderance of the evidence.
`
`See Paper 54 at 20-21 (emphasis added). Accordingly, the argument advanced in the
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`Motion that the Board “overlooked the explanation of the motivation to combine
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`provided in the Petition” is flatly contradicted by the Board itself. Indeed, the FWD
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`is resoundingly supported by the evidence and demonstrates that the Board
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`understood and considered Petitioner’s arguments—but
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`rejected
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`them as
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`insufficient. It is the Petitioner that bears the burden to establish a motivation to
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`-4-
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`IPR2016-01201
`Apple Inc v. Voip-Pal
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`combine the cited prior art. Intelligent Biosystems v. Illumina Cambridge, 821 F.3d
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`1359, 1367-1368 (Fed. Cir. 2016); Dynamic Drinkware v. National Graphics, 800
`
`F. 3d 1375, 1378-1379 (Fed. Cir. 2015) (“In an inter partes review, the burden of
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`persuasion is on the petitioner to prove ‘unpatentability by a preponderance of the
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`evidence,’ 35 U.S.C. § 316(e), and that burden never shifts to the patentee. ‘Failure
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`to prove the matter as required by the applicable standard means that the party with
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`the burden of persuasion loses on that point—thus, if the fact trier of the issue is left
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`uncertain, the party with the burden loses.’” (citing Technology Licensing Corp. v.
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`Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008)). See FWD, Paper 54, at 20.
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`The Second Panel found that Petitioner had failed to carry its burden to prove
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`a motivation to combine the cited art. Id. at 21. Petitioner’s vague allegation that
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`Chu ‘684’s system was somehow deficient and thus ripe for improvement, were
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`rejected due to Petitioner’s lack of “underlying explanation or citation”:
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`“Notably absent, however, from both the Petition and Dr. Houh’s
`testimony is underlying evidentiary support for the proposition that one
`of ordinary skill in the art would have regarded Chu ’684’s teachings as
`deficient. Indeed, Petitioner’s statement and Dr. Houh’s bare testimony
`that “[u]pon reading the disclosure of Chu ’684,” a person of ordinary
`skill in the art would have sought to improve that very disclosure
`seemingly warrants underlying explanation or citation, yet no adequate
`support in that regard is supplied.” (id. at 19; see 37 C.F.R. § 42.104)
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`Indeed, Petitioner’s lack of citation to Chu ‘684 is remarkable. Petitioner tries
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`to prove a deficiency in Chu ‘684, not by citing to Chu ‘684, but by citing to a
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`problem disclosed in a different secondary reference (Chu ‘366 or Chen)—and then
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`-5-
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`IPR2016-01201
`Apple Inc v. Voip-Pal
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`baldly alleges that Chu ‘684 necessarily (inherently) has the same problem, even
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`though these systems involve completely different operating environments—a
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`logical leap to which the Board need not give any weight: 37 C.F.R. § 42.104(b)(5).
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`The Board was also entitled to assign little or no weight to Dr. Houh’s lack of
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`evidence and explanation. PTAB Trial Guide, 77 Fed. Reg. 48763 (Aug. 14, 2012)
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`(“Affidavits expressing an opinion of an expert must disclose the underlying facts or
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`data upon which the opinion is based. See Fed. R. Evid. 705; and § 42.65. Opinions
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`expressed without disclosing the underlying facts or data may be given little or no
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`weight. Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997)”)
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`2.
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`The Second Panel relied on evidence from Patent Owner’s expert
`to reject Petitioner’s interpretation of Chu ‘684
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`
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`The Board’s decision, rejecting a motivation to combine, is supported by
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`substantial evidence. The Motion for Rehearing is curiously silent regarding the
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`Board’s express reliance on Dr. Mangione-Smith’s evidence, especially its
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`indication that it discounted Dr. Houh’s evidence—on which Petitioner’s case rests:
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`“Moreover, this panel has the benefit of Dr. Mangione-Smith’s
`testimony, in which he expresses disagreement with the positions noted
`above taken by Dr. Houh and Petitioner and highlights the potential
`inadequacies in that respect. See Ex. 2016 ¶¶ 65–67. Indeed, we credit
`Dr. Mangione-Smith’s view that Dr. Houh does not explain adequately
`the nature of the deficiency in Chu ’684 that is intended to be
`addressed. Id. ¶ 66.” (id. at 19)
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`The Panel’s reliance on at least Ex. 2016 ¶¶ 65–67 and 71 establishes that the
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`Panel rejected Petitioner’s interpretation of Chu ‘684 in a number of respects.
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`-6-
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`IPR2016-01201
`Apple Inc v. Voip-Pal
`
`All of Petitioner’s arguments critically rely on the unproven assumption that
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`Chu ‘684 requires the dialing of long-form E.164 numbers:1
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`“The Proposed Combinations each propose that Chu ’684 would
`benefit if its users could employ short form dialing—as is common for
`local PSTN calls on a standard landline (e.g., 555-1234)—rather than
`being required to use full E.164-compliant numbers (e.g., +1-202-555-
`1234) as contemplated by Chu ’684.” (Paper 71, Mot. for Reh’g, at 3-4)
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`“the Proposed Combinations recognized that Chu ‘684 required a user
`to dial a complete (long form) E.164 compatible number” (id. at 8)
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`“Chu ‘684 did not contemplate allowing short form dialing” (id. at 17)
`[emphasis added]
`Contrary to 37 C.F.R. § 42.71(d), Petitioner cannot provide pinpoint cites to
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`show where these very specific technical assertions were made in the record; at best,
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`Petitioner pointed out that phones in Chu ‘684 could have a PSTN (E.164) number.2
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`But even if these assertions had been made from the outset by Petitioner, the
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`Panel’s adoption of Dr. Mangione-Smith’s testimony indicates that it rejected
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`Petitioner’s underlying assumptions about Chu ‘684’s operation as unproven.
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`1 The FWD at 15 cites Chu ‘366 to explain that the E.164 format “contains an E.164
`prefix (typically a + sign), a country code, and a subscriber telephone number.”
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` 2
`
` E.g., the Motion at 8 cites Paper 34 at 21-23, citing Chu ‘684 at 13:1-11, but the
`cited passage has nothing to do with dialing. It discloses that IP-PBX phones can be
`assigned a private telephone number and a public E.164 telephone number (e.g., to
`allow calls from the PSTN). But how an E.164 compatible telephone number would
`be dialed would depend on the dialing plan in the caller’s area. See Ex. 2016 ¶ 66.
`See also Chu ‘684 at 13:4 (example of phone numbers, “732-949-xxxx”, is not in a
`long-form E.164 format, which would require a “+” sign and country code, but
`rather, in the local 10-digit dialing format in use in area code 732 (New Jersey) at
`the time the patent was filed. See: https://www.state.nj.us/rpa/fallwin0002.PDF at 2
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`-7-
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`
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`IPR2016-01201
`Apple Inc v. Voip-Pal
`
`Dr. Mangione-Smith opined in Ex. 2016 ¶ 66, based in part on accompanying
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`extensive evidence of how PBX systems worked, that: (1) Dr. Houh was unable to
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`adequately explain either in his declaration—or during his deposition testimony (Ex.
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`2043)—what deficiency in Chu ‘684 was being addressed; (2) PBX phone systems
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`such as Chu ‘684 “provided all the features of ordinary phones connected to the
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`PSTN, and in addition, supported the dialing of private extension numbers;” (3) Dr.
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`Houh’s personal desire for a PBX system that would support dialing in a manner
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`inconsistent with the public numbering plan in his area, as described during
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`deposition, was his subjective preference and not an objective “defect” in Chu ‘684
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`requiring remedy; and that (4) in Chu ‘684, “users would dial PSTN ‘public
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`numbers’ based on the location of the customer premises 105” (i.e., “dialing
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`according to the dialing conventions of [that] geographic area”) [emphasis added].
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`Given the Second Panel’s express reliance on Dr. Mangione-Smith in Ex.
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`2016 ¶ 66, these facts, especially the last one, eviscerate Petitioner’s “motivation to
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`combine” argument, which is not only unsupported and inadequately explained but
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`also technically incorrect. Like other PBX systems cited by Dr. Mangione-Smith in
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`his declaration (id. at ¶¶ 66, 71-72, Exs. 30-47), Chu ‘684 did not require a complete
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`(long form) E.164 number to be entered; rather, Chu ‘684’s PBX would allow users
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`to dial PSTN numbers based on the dialing conventions of their location. Id.
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`The instant Motion for Rehearing makes no attempt to challenge Dr.
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`Mangione-Smith’s declaration, and, tellingly, Petitioner chose not to submit any
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`-8-
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`IPR2016-01201
`Apple Inc v. Voip-Pal
`
`new expert evidence with its reply to refute Patent Owner’s expert. Belden Inc. v.
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`Berk-Tek LLC, Nos. 2014-1575, -1576 (Fed. Cir. Nov. 5, 2015) (aff’g Petitioner’s
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`right to submit new expert evidence on reply). The Panel’s reliance on Dr.
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`Mangione-Smith’s unrefuted testimony thus provides substantial evidence for its
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`conclusions that Petitioner’s “motivation to combine” argument is fatally flawed.
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`Petitioner also undermines its own argument—and inadvertently supports Dr.
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`Mangione-Smith’s conclusions that Chu ‘684 supported dialing based on location—
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`when it explains the basis for the alleged inherent deficiency of “IP phones”:
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`“Traditional PSTN phones are hardwired to a physical central office
`location, which enables PSTN callers to dial short form numbers (e.g.,
`7 digit local numbers) without entering the full E.164 international
`standard number corresponding to the callee. Using its known
`geographic information, the PSTN can “complete” the callee number
`and route the call correctly. IP phones, conversely, are not tied to any
`specific physical location and thus do not inherently provide the user
`an option to dial short form numbers. Thus some additional
`functionality must be provided to an IP-based telephone service to
`allow users to dial as if they were calling from a PSTN phone.”
`[emphasis added] (Paper 44, Pet.’s Opp. To PO Mot. to Exclude, at 8)
`(Cited in Petitioner’s Motion for Rehearing, Paper 71, at 16)
`
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`But if the reason some IP phones do not inherently support “short form
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`numbers” is that they are “not tied to any specific location,” then, clearly, Chu ‘684
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`avoids this problem. The Panel expressly cited Fig. 2 of Chu ‘684, which shows the
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`PBX is tied to a specific location, namely, “Customer Premises 105,” which in turn,
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`is hardwired to a “Central Office 205.” FWD at 13. The Panel also pointed out that
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`a soft-switch 220 at the central office 205 “keeps track of the VPN that a location
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`-9-
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`IPR2016-01201
`Apple Inc v. Voip-Pal
`
`belongs to…”. Id. at 14 (citing Chu ‘684 at 4:59-63 [emphasis added]). Petitioner’s
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`own argument supports the Panel’s rejection of the Petitioner’s interpretation of Chu
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`‘684 because Chu ‘684 would use the location of customer premises to support short
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`form dialing in the manner stated by Dr. Mangione-Smith (Ex. 2016 ¶ 66).
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`As a further problem, Dr. Houh’s testimony during deposition does not align
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`with the Petitioner’s assumption that Chu ‘684 would have required dialing a full
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`long-form E.164 number. On the contrary, Dr. Houh implicitly supported Dr.
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`Mangione-Smith’s view by asserting that the combination of Chu ‘684 with the
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`secondary references, would allow seven-digit dialing in an area (Boston) that
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`would otherwise have required ten-digit dialing. Ex. 2044 at 156:14-157:15, 158:1-
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`20. In effect, Dr. Houh assumed that Chu ‘684’s PBX system itself (before any
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`reformatting step is added), would have forced the user to use ten-digit dialing in the
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`Boston area—but this means that Dr. Houh was assuming that Chu ‘684’s PBX
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`would not have required full long-form E.164 numbers to be dialed:
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`“And this is exactly the part of the -- part of the motivation for the
`combination of the two, so that users may just dial seven digits, and the
`system of the combination would expand that number out to the
`required ten digits” (emphasis added; id. at 158:11-15)
`
`3.
`
`The Second Panel did not “overlook” or “ignore” Petitioner’s
`motivation to combine arguments
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`
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`Petitioner asserts the Second Panel “ignored” the motivation to combine
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`“expressly provided by the Secondary References” (Paper 71 at 16) and “entirely
`
`overlooked the explanation of the motivation to combine provided in the Petition,”
`
`-10-
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`
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`IPR2016-01201
`Apple Inc v. Voip-Pal
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`(id. at 14), citing to a lengthy quotation from Chu ‘366 from page 14 of the Petition,
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`with much bold emphasis added. Id. at 15. But Petitioner omits that the very
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`portions of Chu ‘366 quoted by the Petition are expressly quoted or cited in the
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`Board’s discussion of Chu ‘366. Compare id. at 15 and Paper 54, FWD, at 15-16
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`(both documents quote or cite Ex. 1004, Chu ‘366, at 1:18-20, 1:35-37, 1:37-40,
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`1:44-47 and 2:1-4, inter alia). For example, Petitioner’s alleged “benefit” of short
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`form numbers (Id. at 14: “the benefit gained is to allow customer to dial using…
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`short form numbers (PSTN)”) is also cited in the FWD (“…a subscriber is able to
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`enter abbreviated numbers…”: FWD at 16, quoting Chu ‘366 at 1:35-37). Thus, the
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`Motion is wrong to claim that “at no point… is there any recognition of these key
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`motivations” (Paper 71 at 16). Unfortunately, the Petitioner’s “key motivations” rely
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`on a speculative and unproven premise—that Chu ‘684’s system necessarily has the
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`same problems as the secondary references—to justify combining those references.
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`In a final desperate attempt to identify a motivation in the record, the Motion
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`cites Paper 44 at pp. 7-11, which, it vaguely alleges, “rebut[s] many of the critiques
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`advanced in the FWD.” Id. at 16. However, the cited pages merely: (1) answer the
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`criticism that Dr. Houh’s opinions are “unsupported by any citation to Chu ‘684 or
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`explanation” by urging the Panel to do a “simple review” of Dr. Houh’s declaration
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`at ¶¶ 22-25, 26-34 and 35-44—yet offer no pinpoint cites [id. at 7]; (2) raise the
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`self-refuting “physical location” argument [id. at 8; see Section III(A)(2)]; and (3)
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`cite, again, to the information in Chu ‘366’s background section [id. at 9].
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`-11-
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`IPR2016-01201
`Apple Inc v. Voip-Pal
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`The need to go on such a wild goose chase through the record highlights not
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`only Petitioner’s failure to identify a motivation to combine—it belies the Petition’s
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`claim that a skilled person would have identified a defect in Chu ‘684 merely
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`“[u]pon reading the disclosure of Chu ‘684.” See FWD at 19, Petition at 16, 40-41.
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`Finally, Petitioner’s allegation that Patent Owner “mischaracterized” the
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`Petitioner’s position in a rehearing request challenging the Petitioner’s motivation to
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`combine, has no merit. Paper 71 at 1, 4 (citing Paper 9). Contra Petitioner, the First
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`Panel did not state Patent Owner’s motivation argument was a mischaracterization;
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`rather, the First Panel “particularly” relied on Dr. Houh’s testimony given his
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`“educational background and experience in the field.” See Paper 11 at 6. It is
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`understandable the First Panel would accept Dr. Houh’s testimony “for purposes of
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`institution” given the absence of expert testimony from Patent Owner (at that stage).
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`But the First Panel had before it none of Dr. Mangione-Smith’s evidence refuting
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`Dr. Houh, thus Petitioner’s assertion—that the FWD relied on the “same arguments”
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`as rejected by the First Panel (Paper 71 at 1)—is a gross mischaracterization.
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`B.
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`The Second Panel Understood the Proposed Combination And Rejected
`It As Unsupported
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`The Board found that Petitioner’s proposed combinations did not adequately
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`account for claim limitations requiring that caller attributes form the basis, in-part,
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`for ultimately assessing whether private network or public network classification
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`criteria have been met and routing accordingly. Paper 54, FWD at 24. In particular,
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`the Panel found Petitioner’s proposal to modify Chu ‘684, by inserting Chu ‘366’s
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`“reformatting” steps, to be implausible and unsupported. Id. at 21-25.
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`Petitioner had proposed reformatting dialed digits as taught in Chu ‘366, and
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`then, “[o]nce the callee identifier is reformatted, Chu ‘684 determin[ed] whether the
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`callee is a private packet network subscriber or a public PSTN customer.” Id. at 21-
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`22 (citing Petition at 23). But Chu ‘684 determined call type based on “dialed
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`digits” alone, noted the Panel. The Panel therefore questioned Petitioner’s failure to
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`explain why or how Chu ‘684’s step of assessing dialed digits (step 608) would even
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`work for reformatted numbers. Id. at 23 (citing expert evidence in Ex. 2016 ¶ 71).
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`1.
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`The Second Panel did not misunderstand the combination; it
`rejected Petitioner’s underlying assumptions about Chu ‘684
`Petitioner points to the Panel’s criticism of Petitioner for “failing to explain
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`how Chu ‘684 can process a reformatted number,” as evidence of the Panel’s
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`“misapprehension” of the Petitioner’s proposed combination, in which, allegedly,
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`“Chu ‘684 contemplates receiving long form E.164 compatible numbers,” and thus,
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`“the reformatted number supplied to Chu ‘684 is in the same E.164 compatible
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`format that Chu ‘684 expressly contemplates using.” Id. at 9 (emphasis added). But
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`Petitioner fails to identify where in the record it argued that Chu ‘684 could not
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`process short form E.164 numbers. 37 C.F.R. § 42.71(d). For example, the assertion,
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`“Chu ‘684 required…a complete (long form) E.164 compatible number[s]” (id. at 8)
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`is cited to the Petition at 17—which explains how Chu ‘366 has this problem.
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`Careful review of the FWD shows that the Second Panel did not
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`misapprehend or overlook the Petitioner’s preferred manner of combining the
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`references: it expressly recognized that “Petitioner turns to Chu ‘366 to account for
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`the requirement that…[a] calling attribute associated with a caller [is] employed” to
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`process a call. FWD at 21. The Panel also understood that “the ‘reformatting’ of
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`dialed digits is the distinct basis for Petitioner’s reliance on Chu ‘366” (id. at 22)
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`and that Chu ‘366 taught reformatting “using… information from a call origin
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`location profile” (id. at 16). Further, the Panel’s concern about whether Chu ‘684’s
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`teaching would apply to a reformatted number (id. at 23) shows that the Panel
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`understood that the reformatted number was being used in Chu ‘684’s algorithm.
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`However, as explained in Section III(A)(2) supra, the Panel rejected
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`Petitioner’s assumptions about Chu ‘684 as unsupported by plausible explanation or
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`citation to Chu ‘684 and also as inconsistent with Dr. Mangione-Smith’s unrefuted
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`evidence (Ex. 2016). By crediting Dr. Mangione-Smith, the Panel in effect rejected
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`the Petitioner’s view that dialing in Chu ‘684 required entry of “long form” E.164
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`numbers; rather, in Chu ‘684, “users would dial PSTN ‘public numbers’ based on
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`the location of the customer premises 105”. Ex. 2016 ¶ 66 (cited in FWD at 19).
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`But if Chu ‘684 does not require “long form” E.164 number dialing (as
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`assumed by Petitioner), then Petitioner’s arguments fall apart. In this case, inserting
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`reformatting prior to step 608 in Chu ‘684 would result in sending “reformatted”
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`dialed digits to step 608—which previously only received unaltered dialed digits.
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`Thus, the Panel was correct to question Petitioner’s naïve assumptions about the
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`obviousness of the combination (e.g., whether Chu ‘684’s “evaluation” or “analysis”
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`in step 608 would be “applicable” to a reformatted number) and was supported in
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`making its adverse finding by expert evidence. Id. at 22-23 (citing Ex. 2016 ¶ 71).
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`2.
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`Petitioner’s reliance on Chu ‘684’s alleged “infrastructure” for
`applying calling attributes was refuted by expert evidence
`Dr. Mangione-Smith’s criticism in Ex. 2016 ¶¶ 70-71 highlights a false
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`premise found in the Petition and also in Dr. Houh’s evidence, namely, that Chu
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`‘684 itself, in step 608, would have relied on attributes of the caller:
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`“Chu ‘684… describe[s] call setup procedures in which a call processor
`analyzes attributes of the caller… to determine whether the call should
`be routed to… the private packet network or the public PSTN” (Petition
`at 13, citing to Chu ‘684 at 8:65-9:1 (“step 608”) [emphasis added])
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`[B]oth references [including Chu ‘684] teach a process in which dialed
`digits and caller attributes are used to determine where the call should
`be routed. (id. at 18 and 40, citing Chu ‘684 at 8:65-9:1 [emphasis
`added]; see also same quote in Houh Decl., Ex. 1006 ¶¶ 36 and 41)
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`However, the Second Panel agreed with Dr. Mangione-Smith that call
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`classification in step 608 of Chu ‘684 was not premised on using any caller-specific
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`information (e.g., caller “attributes”), but rather, relied on the “dialed digits” alone.
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`FWD at 22 (citing Ex. 2016 ¶71; see also his supporting explanation in ¶¶58-70).
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`As shown by the quotations above, the same incorrect assertion about the
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`operation of Chu ‘684’s “step 608” is repeated in both Dr. Houh’s declaration and in
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`the Petition, where it is specifically relied upon to argue the obviousness of
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`modifying Chu ‘684 to add reformatting based on caller attributes. Thus, this error
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`in the Petition (e.g., id. at 18 and 40) undermines a key rationale at the heart of the
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`Petitioner’s obviousness argument: “Given that the system of Chu ’684 already
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`contains all the infrastructure needed to support such reformatting, the modification
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`to Chu ’684 would be straightforward” (id. at 19 and 40). Petitioner’s error about the
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`availability of relevant infrastructure in Chu ‘684 further supports the Second
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`Panel’s finding that Petitioner’