Filed: January 22, 2019
`
`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
`Tel.: +1-212-812-1491
`Tel.: +1-855-291-7407
`Fax: +1-561-910-4134
`Email: kevin.malek@malekmoss.com
`
`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
`
`PATENT OWNER’S OPPOSITION TO APPLE’S REQUEST FOR
`REHEARING PURSUANT TO BOARD ORDER OF DECEMBER 21, 2018
`(CORRECTED)
`
`

`

`TABLE OF CONTENTS
`
`Page No.
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`LEGAL STANDARD ON REVIEW .............................................................. 2
`
`III. ARGUMENT ................................................................................................... 3
`
`A.
`
`The Board Reviewed and Rejected Petitioner’s Motivation to
`Combine the Prior Art References. ....................................................... 4
`
`1.
`
`2.
`
`3.
`
`The Board considered and rejected all of Petitioner’s
`arguments. ................................................................................... 4
`
`The Second Panel relied on evidence from Patent Owner’s
`expert to reject Petitioner’s interpretation of Chu ‘684 .............. 6
`
`The Second Panel did not “overlook” or “ignore” Petitioner’s
`motivation to combine arguments .............................................10
`
`B.
`
`The Second Panel Understood the Proposed Combination And
`Rejected It As Unsupported ................................................................12
`
`1.
`
`2.
`
`3.
`
`4.
`
`The Second Panel did not misunderstand the combination; it
`rejected Petitioner’s underlying assumptions about Chu ‘684 .13
`
`Petitioner’s reliance on Chu ‘684’s alleged “infrastructure” for
`applying calling attributes was refuted by expert evidence ......15
`
`Petitioner’s proposal ignores corruption of private numbers ...16
`
`The Petitioner distorts the record in alleging that the Patent
`Owner “mischaracterized” its Proposed Combinations ............17
`
`C.
`
`Petitioner’s Arguments Are Moot Due to Reliance on Uncitable Prior
`Art ........................................................................................................20
`
`IV. CONCLUSION ..............................................................................................21
`
`-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
`
`-ii-
`
`

`

`TABLE OF AUTHORITIES
`(cont’d)
`
`Page No(s).
`
`37 C.F.R. § 42.65 ....................................................................................................... 6
`
`37 C.F.R. § 42.71 ......................................................................................... 1, 3, 7, 13
`
`37 C.F.R. § 42.104 ................................................................................................. 5, 6
`
`-iii-
`
`

`

`IPR2016-01201
`Apple Inc v. Voip-Pal
`
`Patent Owner Voip-Pal.com, Inc. (“Voip-Pal”) hereby opposes Petitioner
`
`Apple’s Motion for Rehearing (Paper 71) and respectfully requests denial thereof.
`
`I.
`
`INTRODUCTION
`
`Petitioner alleges that, following institution of inter partes review of U.S.
`
`Patent 8,542,815 (“the ‘815 Patent”) (Paper 6) by an original panel of the Board
`
`(“First Panel”), a replacement panel of the Board (“Second Panel”) erred in ruling
`
`against Petitioner in a Final Written Decision (“FWD,” Paper 54), specifically
`
`because it misapprehended or overlooked Petitioner’s arguments. In the present
`
`Motion (Paper 71), Petitioner seeks rehearing under 37 C.F.R. § 42.71(d) of the
`
`FWD before a new panel (“Third Panel”) of the Board as authorized in Paper 70.
`
`Through blanket speculation and mischaracterization of the record, Petitioner
`
`tries to mislead the Board into finding error where there has been none. Petitioner
`
`mischaracterizes the scope of review by the Board in arriving at the FWD in order to
`
`create the illusion that the Board misapprehended and overlooked its arguments. But
`
`the evidence shows that the FWD was based on a full review of the entire record,
`
`and that Petitioner’s attempt at a do-over should be denied—for multiple reasons:
`
`First, the Second Panel did not misapprehend or overlook Petitioner’s
`
`motivation to combine argument or the related testimony of Petitioner’s expert, but
`
`rather, rejected it as insufficient and/or implausible in light of the well-supported
`
`evidence of Patent Owner’s expert evidence—which was not before the First Panel;
`
`Second, the Second Panel did not misapprehend or overlook the Proposed
`
`-1-
`
`

`

`IPR2016-01201
`Apple Inc v. Voip-Pal
`
`Combinations including Petitioner’s reliance on Chu ‘366 to provide reformatting of
`
`dialed digits. Rather, the Board recognized—in light of expert evidence—that
`
`Petitioner had not shown that Chu ‘684’s step of assessing dialed digits (step 608)
`
`would work for reformatted numbers, and further, that Petitioner had failed to
`
`explain the necessary reprogramming to achieve operability; and
`
`Third, while the above findings already mandate denial of Petitioner’s Motion
`
`for Rehearing, the Second Panel also considered and rejected an alternative ordering
`
`of steps suggested in the Petition (now abandoned by Petitioner). Petitioner seizes
`
`on this finding in isolation to allege “misapprehension” of its position, but fails to
`
`recognize that earlier in the FWD the Panel had already dealt with Petitioner’s
`
`preferred ordering of steps and, relying on Patent Owner’s expert evidence and
`
`arguments, rejected it as unsupported. Petitioner repeatedly (and incorrectly) alleges
`
`“mischaracterization” of its position by the Patent Owner, but the evidence shows
`
`that Petitioner itself distorts the record in a belated attempt to shift its position.
`
`Separately, the FWD should be upheld because Petitioner’s arguments rely on
`
`antedated prior art which is not citable under 35 U.S.C. § 102(e). Petitioner filed no
`
`expert evidence to challenge Patent Owner’s meticulous antedating case, in which
`
`multiple lines of evidence, supported by expert evidence, show actual reduction to
`
`practice of the invention in June 2005 prior to the dates of Chu ‘366 and Chen.
`
`II.
`
`LEGAL STANDARD ON REVIEW
`
`A party requesting rehearing bears the burden of showing the decision should
`
`-2-
`
`

`

`IPR2016-01201
`Apple Inc v. Voip-Pal
`
`be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters
`
`the Board misapprehended or overlooked, and where each matter was addressed
`
`previously in a motion, an opposition, or a reply. Id. The decision is reviewed for an
`
`abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if
`
`a decision is based on an erroneous interpretation of law or if a factual finding is not
`
`supported by substantial evidence. Star Fruits S.N.C. v. United States, 393 F.3d
`
`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
`
`request for rehearing is not an opportunity merely to disagree with the Board’s
`
`assessment of the arguments or weighing of the evidence, or to present new
`
`arguments or evidence. See Amerigen Pharm. Ltd. v. Janssen Oncology, Inc., No.
`
`IPR2016-00286, 2018 WL 6317959, at *1 (P.T.A.B. Dec. 3, 2018).
`
`III. ARGUMENT
`
`The FWD (Paper 54) was not based on an erroneous interpretation of the law.
`
`Moreover, the FWD was supported by substantial evidence. In addition, Petitioner
`
`fails to meet the standard for rehearing under 37 C.F.R. § 42.71(d) by failing to
`
`identify how or why the Panel misapprehended or overlooked its position. The FWD
`
`correctly concluded that Petitioner’s arguments were conclusory and insufficient
`
`and rejected evidence presented through Petitioner’s expert, Dr. Houh, while
`
`crediting the unrefuted testimony of Patent Owner’s expert, Dr. Mangione-Smith.
`
`For the following reasons, Petitioner’s Motion for Rehearing should be denied.
`
`-3-
`
`

`

`IPR2016-01201
`Apple Inc v. Voip-Pal
`
`A. The Board Reviewed and Rejected Petitioner’s Motivation to Combine
`the Prior Art References.
`
`The Board considered and rejected all of Petitioner’s arguments.
`
`1.
`
`The thrust of Petitioner’s Motion is that “[t]he Replacement Panel entirely
`
`overlooked the explanation of the motivation to combine provided in the Petition.”
`
`See Paper 71 at 14. Petitioner’s speculation about what the Board did and did not
`
`review in considering Petitioner’s motivation to combine arguments ignores and
`
`mischaracterizes the FWD. Indeed, the Board’s own expression in the FWD
`
`indicates fulsome review, demonstrating the inaccuracy in Petitioner’s argument:
`
`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
`
`Motion that the Board “overlooked the explanation of the motivation to combine
`
`provided in the Petition” is flatly contradicted by the Board itself. Indeed, the FWD
`
`is resoundingly supported by the evidence and demonstrates that the Board
`
`understood and considered Petitioner’s arguments—but
`
`rejected
`
`them as
`
`insufficient. It is the Petitioner that bears the burden to establish a motivation to
`
`-4-
`
`

`

`IPR2016-01201
`Apple Inc v. Voip-Pal
`
`combine the cited prior art. Intelligent Biosystems v. Illumina Cambridge, 821 F.3d
`
`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
`
`persuasion is on the petitioner to prove ‘unpatentability by a preponderance of the
`
`evidence,’ 35 U.S.C. § 316(e), and that burden never shifts to the patentee. ‘Failure
`
`to prove the matter as required by the applicable standard means that the party with
`
`the burden of persuasion loses on that point—thus, if the fact trier of the issue is left
`
`uncertain, the party with the burden loses.’” (citing Technology Licensing Corp. v.
`
`Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008)). See FWD, Paper 54, at 20.
`
`The Second Panel found that Petitioner had failed to carry its burden to prove
`
`a motivation to combine the cited art. Id. at 21. Petitioner’s vague allegation that
`
`Chu ‘684’s system was somehow deficient and thus ripe for improvement, were
`
`rejected due to Petitioner’s lack of “underlying explanation or citation”:
`
`“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)
`
`Indeed, Petitioner’s lack of citation to Chu ‘684 is remarkable. Petitioner tries
`
`to prove a deficiency in Chu ‘684, not by citing to Chu ‘684, but by citing to a
`
`problem disclosed in a different secondary reference (Chu ‘366 or Chen)—and then
`
`-5-
`
`

`

`IPR2016-01201
`Apple Inc v. Voip-Pal
`
`baldly alleges that Chu ‘684 necessarily (inherently) has the same problem, even
`
`though these systems involve completely different operating environments—a
`
`logical leap to which the Board need not give any weight: 37 C.F.R. § 42.104(b)(5).
`
`The Board was also entitled to assign little or no weight to Dr. Houh’s lack of
`
`evidence and explanation. PTAB Trial Guide, 77 Fed. Reg. 48763 (Aug. 14, 2012)
`
`(“Affidavits expressing an opinion of an expert must disclose the underlying facts or
`
`data upon which the opinion is based. See Fed. R. Evid. 705; and § 42.65. Opinions
`
`expressed without disclosing the underlying facts or data may be given little or no
`
`weight. Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997)”)
`
`2.
`
`The Second Panel relied on evidence from Patent Owner’s expert
`to reject Petitioner’s interpretation of Chu ‘684
`
`The Board’s decision, rejecting a motivation to combine, is supported by
`
`substantial evidence. The Motion for Rehearing is curiously silent regarding the
`
`Board’s express reliance on Dr. Mangione-Smith’s evidence, especially its
`
`indication that it discounted Dr. Houh’s evidence—on which Petitioner’s case rests:
`
`“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)
`
`The Panel’s reliance on at least Ex. 2016 ¶¶ 65–67 and 71 establishes that the
`
`Panel rejected Petitioner’s interpretation of Chu ‘684 in a number of respects.
`
`-6-
`
`

`

`IPR2016-01201
`Apple Inc v. Voip-Pal
`
`All of Petitioner’s arguments critically rely on the unproven assumption that
`
`Chu ‘684 requires the dialing of long-form E.164 numbers:1
`
`“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)
`
`“the Proposed Combinations recognized that Chu ‘684 required a user
`to dial a complete (long form) E.164 compatible number” (id. at 8)
`
`“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
`
`show where these very specific technical assertions were made in the record; at best,
`
`Petitioner pointed out that phones in Chu ‘684 could have a PSTN (E.164) number.2
`
`But even if these assertions had been made from the outset by Petitioner, the
`
`Panel’s adoption of Dr. Mangione-Smith’s testimony indicates that it rejected
`
`Petitioner’s underlying assumptions about Chu ‘684’s operation as unproven.
`
`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.”
`
`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
`
`-7-
`
`

`

`IPR2016-01201
`Apple Inc v. Voip-Pal
`
`Dr. Mangione-Smith opined in Ex. 2016 ¶ 66, based in part on accompanying
`
`extensive evidence of how PBX systems worked, that: (1) Dr. Houh was unable to
`
`adequately explain either in his declaration—or during his deposition testimony (Ex.
`
`2043)—what deficiency in Chu ‘684 was being addressed; (2) PBX phone systems
`
`such as Chu ‘684 “provided all the features of ordinary phones connected to the
`
`PSTN, and in addition, supported the dialing of private extension numbers;” (3) Dr.
`
`Houh’s personal desire for a PBX system that would support dialing in a manner
`
`inconsistent with the public numbering plan in his area, as described during
`
`deposition, was his subjective preference and not an objective “defect” in Chu ‘684
`
`requiring remedy; and that (4) in Chu ‘684, “users would dial PSTN ‘public
`
`numbers’ based on the location of the customer premises 105” (i.e., “dialing
`
`according to the dialing conventions of [that] geographic area”) [emphasis added].
`
`Given the Second Panel’s express reliance on Dr. Mangione-Smith in Ex.
`
`2016 ¶ 66, these facts, especially the last one, eviscerate Petitioner’s “motivation to
`
`combine” argument, which is not only unsupported and inadequately explained but
`
`also technically incorrect. Like other PBX systems cited by Dr. Mangione-Smith in
`
`his declaration (id. at ¶¶ 66, 71-72, Exs. 30-47), Chu ‘684 did not require a complete
`
`(long form) E.164 number to be entered; rather, Chu ‘684’s PBX would allow users
`
`to dial PSTN numbers based on the dialing conventions of their location. Id.
`
`The instant Motion for Rehearing makes no attempt to challenge Dr.
`
`Mangione-Smith’s declaration, and, tellingly, Petitioner chose not to submit any
`
`-8-
`
`

`

`IPR2016-01201
`Apple Inc v. Voip-Pal
`
`new expert evidence with its reply to refute Patent Owner’s expert. Belden Inc. v.
`
`Berk-Tek LLC, Nos. 2014-1575, -1576 (Fed. Cir. Nov. 5, 2015) (aff’g Petitioner’s
`
`right to submit new expert evidence on reply). The Panel’s reliance on Dr.
`
`Mangione-Smith’s unrefuted testimony thus provides substantial evidence for its
`
`conclusions that Petitioner’s “motivation to combine” argument is fatally flawed.
`
`Petitioner also undermines its own argument—and inadvertently supports Dr.
`
`Mangione-Smith’s conclusions that Chu ‘684 supported dialing based on location—
`
`when it explains the basis for the alleged inherent deficiency of “IP phones”:
`
`“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)
`
`
`But if the reason some IP phones do not inherently support “short form
`
`numbers” is that they are “not tied to any specific location,” then, clearly, Chu ‘684
`
`avoids this problem. The Panel expressly cited Fig. 2 of Chu ‘684, which shows the
`
`PBX is tied to a specific location, namely, “Customer Premises 105,” which in turn,
`
`is hardwired to a “Central Office 205.” FWD at 13. The Panel also pointed out that
`
`a soft-switch 220 at the central office 205 “keeps track of the VPN that a location
`
`-9-
`
`

`

`IPR2016-01201
`Apple Inc v. Voip-Pal
`
`belongs to…”. Id. at 14 (citing Chu ‘684 at 4:59-63 [emphasis added]). Petitioner’s
`
`own argument supports the Panel’s rejection of the Petitioner’s interpretation of Chu
`
`‘684 because Chu ‘684 would use the location of customer premises to support short
`
`form dialing in the manner stated by Dr. Mangione-Smith (Ex. 2016 ¶ 66).
`
`As a further problem, Dr. Houh’s testimony during deposition does not align
`
`with the Petitioner’s assumption that Chu ‘684 would have required dialing a full
`
`long-form E.164 number. On the contrary, Dr. Houh implicitly supported Dr.
`
`Mangione-Smith’s view by asserting that the combination of Chu ‘684 with the
`
`secondary references, would allow seven-digit dialing in an area (Boston) that
`
`would otherwise have required ten-digit dialing. Ex. 2044 at 156:14-157:15, 158:1-
`
`20. In effect, Dr. Houh assumed that Chu ‘684’s PBX system itself (before any
`
`reformatting step is added), would have forced the user to use ten-digit dialing in the
`
`Boston area—but this means that Dr. Houh was assuming that Chu ‘684’s PBX
`
`would not have required full long-form E.164 numbers to be dialed:
`
`“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
`
`Petitioner asserts the Second Panel “ignored” the motivation to combine
`
`“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-
`
`

`

`IPR2016-01201
`Apple Inc v. Voip-Pal
`
`(id. at 14), citing to a lengthy quotation from Chu ‘366 from page 14 of the Petition,
`
`with much bold emphasis added. Id. at 15. But Petitioner omits that the very
`
`portions of Chu ‘366 quoted by the Petition are expressly quoted or cited in the
`
`Board’s discussion of Chu ‘366. Compare id. at 15 and Paper 54, FWD, at 15-16
`
`(both documents quote or cite Ex. 1004, Chu ‘366, at 1:18-20, 1:35-37, 1:37-40,
`
`1:44-47 and 2:1-4, inter alia). For example, Petitioner’s alleged “benefit” of short
`
`form numbers (Id. at 14: “the benefit gained is to allow customer to dial using…
`
`short form numbers (PSTN)”) is also cited in the FWD (“…a subscriber is able to
`
`enter abbreviated numbers…”: FWD at 16, quoting Chu ‘366 at 1:35-37). Thus, the
`
`Motion is wrong to claim that “at no point… is there any recognition of these key
`
`motivations” (Paper 71 at 16). Unfortunately, the Petitioner’s “key motivations” rely
`
`on a speculative and unproven premise—that Chu ‘684’s system necessarily has the
`
`same problems as the secondary references—to justify combining those references.
`
`In a final desperate attempt to identify a motivation in the record, the Motion
`
`cites Paper 44 at pp. 7-11, which, it vaguely alleges, “rebut[s] many of the critiques
`
`advanced in the FWD.” Id. at 16. However, the cited pages merely: (1) answer the
`
`criticism that Dr. Houh’s opinions are “unsupported by any citation to Chu ‘684 or
`
`explanation” by urging the Panel to do a “simple review” of Dr. Houh’s declaration
`
`at ¶¶ 22-25, 26-34 and 35-44—yet offer no pinpoint cites [id. at 7]; (2) raise the
`
`self-refuting “physical location” argument [id. at 8; see Section III(A)(2)]; and (3)
`
`cite, again, to the information in Chu ‘366’s background section [id. at 9].
`
`-11-
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`

`

`IPR2016-01201
`Apple Inc v. Voip-Pal
`
`The need to go on such a wild goose chase through the record highlights not
`
`only Petitioner’s failure to identify a motivation to combine—it belies the Petition’s
`
`claim that a skilled person would have identified a defect in Chu ‘684 merely
`
`“[u]pon reading the disclosure of Chu ‘684.” See FWD at 19, Petition at 16, 40-41.
`
`Finally, Petitioner’s allegation that Patent Owner “mischaracterized” the
`
`Petitioner’s position in a rehearing request challenging the Petitioner’s motivation to
`
`combine, has no merit. Paper 71 at 1, 4 (citing Paper 9). Contra Petitioner, the First
`
`Panel did not state Patent Owner’s motivation argument was a mischaracterization;
`
`rather, the First Panel “particularly” relied on Dr. Houh’s testimony given his
`
`“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
`
`Dr. Houh, thus Petitioner’s assertion—that the FWD relied on the “same arguments”
`
`as rejected by the First Panel (Paper 71 at 1)—is a gross mischaracterization.
`
`B.
`
`The Second Panel Understood the Proposed Combination And Rejected
`It As Unsupported
`
`The Board found that Petitioner’s proposed combinations did not adequately
`
`account for claim limitations requiring that caller attributes form the basis, in-part,
`
`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,
`
`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
`
`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).
`
`1.
`
`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
`
`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
`
`process short form E.164 numbers. 37 C.F.R. § 42.71(d). For example, the assertion,
`
`“Chu ‘684 required…a complete (long form) E.164 compatible number[s]” (id. at 8)
`
`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
`
`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
`
`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
`
`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
`
`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
`
`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.
`
`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])
`
`[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)
`
`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
`
`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).
`
`As shown by the quotations above, the same incorrect assertion about the
`
`operation of Chu ‘684’s “step 608” is repeated in both Dr. Houh’s declaration and in
`
`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’s arguments were unsupported. FWD at 22-23.
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`Petitioner’s proposal ignores corruption of private numbers
`3.
`The Panel
`identified a further
`inadequacy
`in Petitioner’s proposed
`
`modification of Chu ‘684 when it ci