Trials@uspto.gov
`571-272-7822
`
`
`Paper 75
`Entered: May 24, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VOIP-PAL.COM, INC.,
`Patent Owner
`____________
`
`Cases IPR2016-01198 and IPR2016-01201
`Patents 9,179,005 B2 and 8,542,815 B2
`____________
`
`
`Before SCOTT R. BOALICK, Chief Administrative Patent Judge, JACQUELINE
`WRIGHT BONILLA, Deputy Chief Administrative Patent Judge, and MICHAEL
`P. TIERNEY, Vice Chief Administrative Patent Judge.
`
`BOALICK, Chief Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)1
`
`
`
`
`
`
`1 This decision pertains to both Cases IPR2016-01198 and IPR2016-01201, as
`Petitioner’s Requests for Rehearing are substantively the same in each case.
`Citations are to the paper numbers in Case IPR2016-01198.
`
`

`

`IPR2016-01198 and IPR2016-01201
`Patents 9,179,005 B2 and 8,542,815 B2
`
`
`I. BACKGROUND
`On December 21, 2018, an Order was entered granting-in-part a motion for
`sanctions filed by Petitioner Apple Inc. (“Petitioner”). Paper 70 (“Order”). The
`Order authorized Petitioner to file a request for rehearing of the Final Written
`Decision entered on November 20, 2017 (Paper 53, “Final Written Decision” or
`“FWD”). Order 13–16. The Order also authorized Patent Owner Voip-Pal.com,
`Inc. (“Patent Owner”) to file a response to Petitioner’s request for rehearing, and
`Petitioner to file a reply. Id.
`In accordance with the Order, Petitioner filed a Request for Rehearing.
`Paper 71 (“Reh’g Req.”). In response, Patent Owner filed an Opposition to the
`Request for Rehearing. Paper 73 (“Reh’g Opp’n”). Petitioner also filed a Reply in
`support of its Request for Rehearing. Paper 74 (“Reh’g Reply”).
`At the outset, we note that in a request for rehearing we do not review the
`merits of the Final Written Decision de novo. Instead, we consider whether
`Petitioner has met its burden of showing that a matter has been misapprehended or
`overlooked in the Final Written Decision. 37 C.F.R. § 42.71(d) (“The burden of
`showing a decision should be modified lies with the party challenging the decision.
`The request must specifically identify all matters the party believes the Board
`misapprehended or overlooked, and the place where each matter was previously
`addressed in a motion, an opposition, or a reply.”). We conclude that Petitioner
`has not met this burden in its Request for Rehearing.
`
`II. ANALYSIS
`In the Final Written Decision issued in each of the above-captioned cases,
`the panel determined that Petitioner had not shown by a preponderance of the
`evidence that the challenged claims (i.e., claims 1, 24–26, 49, 50, 73–79, 83, 84,
`
`
`
`2
`
`

`

`IPR2016-01198 and IPR2016-01201
`Patents 9,179,005 B2 and 8,542,815 B2
`88, 89, 92, 94–96, 98, and 99 of U.S. Patent No. 9,179,005 B2, and claims 1, 7, 27,
`28, 34, 54, 72–74, 92, 93, and 111 of U.S. Patent No. 8,542,815 B2, respectively)
`would have been obvious over (1) Chu ’6842 and Chu ’366,3 or (2) Chu ’684 and
`Chen.4, 5
`In its Request for Rehearing, Petitioner asserts that, in the Final Written
`Decision in both cases,6 the panel misunderstood the nature of the proposed
`combinations of prior art references (Reh’g Req. 7–9), as well as the proposed
`combination’s application to the step ordering required by the challenged claims
`(id. at 9–13), and that the panel did not adequately consider the asserted reasons to
`combine the references (id. at 14–17).
`
`
`2 U.S. Patent No. 7,486,684 B2 to Chu et al. issued Feb. 3, 2009 (Ex. 1006) (“Chu
`’684”).
`3 U.S. Patent No. 8,036,366 B2 to Chu issued Oct. 11, 2011 (Ex. 1007) (“Chu
`’366”).
`4 U.S. Patent Application Publication No. 2007/0064919 A1 to Chen et al.
`published Mar. 22, 2007 (Ex. 1008) (“Chen”).
`5 On March 25, 2019, in a district court case involving Patent Owner and
`Petitioner (among other defendants), the U.S. District Court of the Northern
`District of California granted a motion to dismiss, finding that “asserted multi-
`network claims (claims 1, 7, 12, 27, 28, 72, 73, 92, and 111 of the ’815 Patent and
`claims 49 and 73 of the ’005 Patent) and the asserted single-network claims
`(claims 74, 75, 77, 78, 83, 84, 94, 96, and 99 of the ’005 Patent) are directed to
`unpatentable subject matter and are thus invalid under 35 U.S.C. § 101.” Voip-
`Pal.Com, Inc. v. Apple Inc., No. 18-CV-06217-LHK, 2019 WL 1332762, at *25
`(N.D. Cal. Mar. 25, 2019), appeal docketed, No. 19-1808 (Fed. Cir. Apr. 26,
`2019).
`6 As noted above, arguments presented in the Request for Rehearing papers in
`both cases are substantively the same. Thus, we refer to the Final Written Decision
`and Request for Rehearing papers in the singular, citing papers in Case IPR2016-
`01198, as also noted above.
`
`
`
`3
`
`

`

`IPR2016-01198 and IPR2016-01201
`Patents 9,179,005 B2 and 8,542,815 B2
`A. Nature of the Proposed Combinations
`Petitioner contends that the panel failed to properly consider how the
`asserted combinations would function because the panel misunderstood the
`combinations and did not expressly discuss certain of Petitioner’s arguments,
`particularly those set forth in Petitioner’s Reply to Patent Owner’s Response
`(Paper 34, “Reply”). Reh’g Req. 7–9. Petitioner asserts the panel showed it
`misunderstood the nature of the combinations by criticizing Petitioner for failing to
`explain why Chu ’684’s assessment of dialed digits would apply to a reformatted
`number. Id. at 8 (citing FWD 22–23). Petitioner states that, in the asserted
`combinations, “the Chu ’684 system could continue to receive and process long
`form E.164 compatible numbers as per its normal disclosed operation.” Id.
`According to Petitioner, it need not explain how Chu ’684 would process numbers
`converted to E.164 format because Chu ’684 already used such numbers. Id. at 9.
`Petitioner’s argument for error asserts that “Chu ’684 contemplates receiving long
`form E.164 compatible numbers.” Reh’g Req. 9; accord id. (“the same E.164
`compatible format that Chu ’684 expressly contemplates using”); Reh’g Reply 1
`(“[I]n the Proposed Combinations, Chu ’684 receives the very E.164-compliant
`numbers that it processes.”).
`Patent Owner disputes Petitioner’s factual assertion, pointing to record
`evidence that, in Chu ’684, users would dial according to the dialing conventions
`of their geographic area. Reh’g Opp’n 8 (citing Ex. 2016 ¶ 66). Patent Owner’s
`expert witness, Dr. Mangione-Smith, testified that “in Chu ’684, the users would
`dial PSTN ‘public numbers’ based on the location of the customer premises.”
`Ex. 2016 ¶ 66 (citing Ex. 1006, Fig. 2). Figure 2 of Chu ’684 supports Dr.
`Mangione-Smith’s testimony, in that Figure 2 of Chu ’684 illustrates customer
`premises 105 (which includes IP phones) as connected to a service provider central
`office 205. See Ex. 1006, Fig. 2; Reh’g Opp’n 9 (contrasting Petitioner’s assertion
`4
`
`
`
`

`

`IPR2016-01198 and IPR2016-01201
`Patents 9,179,005 B2 and 8,542,815 B2
`that “IP phones . . . are not tied to any specific physical location and thus do not
`inherently provide the user an option to dial short form numbers” with Figure 2 of
`Chu ’684 (emphasis omitted) (quoting Paper 44, 8)).
`Patent Owner also points out that, when Chu ’684 discusses E.164 numbers,
`it is in the context of assigning such numbers to IP-based phones, not in in the
`context of placing calls by such phones to other such phones. Reh’g Opp’n 7 n.2
`(citing Ex. 1006, 13:1–11; Ex. 2016 ¶ 66; Reply 21–23 (relying on disclosure in
`Chu ’684)). Patent Owner also identifies that Chu ’684’s “public E.164 telephone
`numbers” are not compliant with the “long-form E.164 format, which would
`require a ‘+’ sign and country code.” Id. (citing Ex. 1006, 13:4) (explaining that an
`example of a “public E.164 telephone number” provided in Chu ’684 is “732-949-
`xxxx,” which does not include the “+” sign and country code of a fully formatted
`E.164 number, and is instead the local dialing format used in area code 732).
`These two distinctions reinforce the view of Patent Owner’s declarant, Dr.
`Mangione-Smith.
`And, as Patent Owner points out, the panel relied on the same evidence—
`testimony by Dr. Mangione-Smith—when rejecting Petitioner’s view of the prior
`art and reason for the combination. See FWD 19 (citing Ex. 2016 ¶¶ 65–67);
`Reh’g Opp’n 6. Thus, when the panel concluded that Petitioner had not shown that
`Chu ’684’s method would apply to a number reformatted by the secondary
`references (see FWD 22–23), it relied on record evidence supporting its
`conclusion. We determine that the panel did not misapprehend the nature of the
`proposed combination; rather, based on the record, it resolved a factual dispute and
`concluded that Petitioner failed to show the proposed combination would operate
`as asserted.
`
`
`
`5
`
`

`

`IPR2016-01198 and IPR2016-01201
`Patents 9,179,005 B2 and 8,542,815 B2
`Even if we were to accept Petitioner’s view of Chu ’684, however, we would
`not reach a different conclusion. The panel stated that, “when determining the
`public or private network affiliation of a call,” Chu ’684 discloses a method using
`“the dialed digits”—i.e., a method that routes calls based on characteristics of how
`they were dialed—and that Petitioner had not shown reformatted numbers would
`function in the same way. FWD 22. Petitioner’s Request for Rehearing,
`meanwhile, takes the position that no explanation is required for why or how
`reformatted numbers would be processed differently than typical numbers used in
`Chu ’684. Reh’g Req. 9; see also id. at 8 (stating that in the proposed
`combination, “the Chu ’684 system could continue to receive and process long
`form E.164 compatible numbers as per its normal disclosed operation”).
`The panel ultimately concluded that Petitioner failed to show the caller’s
`attributes form a basis for routing messages. FWD 24 (discussing the “requirement
`that calling attributes associated with a caller form the basis, in-part, for ultimately
`assessing whether private network or public network classification criteria have
`been met and routing of messages based on that assessment”). In reaching this
`conclusion, the panel relied on Chu ’684 and Dr. Mangione-Smith’s testimony. Id.
`at 22 (citing Ex. 1006, 8:56–9:1; Ex. 2016 ¶ 71 (opining that in Chu ’684, “the
`analysis of the dialed digits does not require knowledge of the attributes of a
`caller”)). Thus, even if Chu ’684 could accept “long form E.164” numbers, the
`panel relied on record evidence that Petitioner failed to show Chu ’684’s routing
`would function the same for reformatted local numbers as for dialed local numbers.
`Accordingly, we conclude the panel did not misapprehend or overlook any matter
`in concluding that Petitioner failed to explain adequately how Chu ’684 or the
`proposed combination teaches or suggests making a determination regarding where
`to route messages based in part on calling attributes associated with the caller.
`
`
`
`6
`
`

`

`IPR2016-01198 and IPR2016-01201
`Patents 9,179,005 B2 and 8,542,815 B2
`We also do not find the panel’s lack of Reply citations to indicate the panel
`misapprehended or overlooked the nature of Petitioner’s proposed combination.
`See, e.g., Reh’g Req. 8. Petitioner summarizes its proposed combinations as
`“rel[ying] on Chu ’684 for its infrastructure, call classifying, and call routing
`teachings” and the secondary references for their “caller profile and dialed digit
`reformatting teachings.” Id. at 3. As Patent Owner points out, the Final Written
`Decision expressly recognizes that Petitioner relies on the secondary references for
`their teachings as to “calling attributes” (which form part of the “caller dialing
`profile”) and “reformatting.” Reh’g Opp’n 14 (citing FWD 21–22). Although
`Petitioner asserts that it explained the proposed combination in a “step-wise
`fashion” in the Reply, the Reply does not change the nature of the proposed
`combination. Reh’g Req. 7 (citing Reply 15–16).
`
`B. Step-Ordering
`Petitioner also argues that the panel misunderstood how the proposed
`combination applies to the claims and therefore reached an erroneous conclusion
`that the combination did not fit with the required sequence of steps. Reh’g Req. 9–
`13 (quoting FWD 24). According to Petitioner, the panel should not have
`addressed a step-ordering argument that was made by Patent Owner only in the
`Preliminary Response and rejected in the Institution Decision. Id. at 10–11. Thus,
`in Petitioner’s view, the panel reached a conclusion based on a mapping
`inconsistent with the asserted combination. Id. at 12. Patent Owner responds that
`Petitioner’s current position represents a shift to account for citing Chu ’684’s
`steps in a sequence inconsistent with the steps of the challenged claims. Reh’g
`Opp’n 18–19. In Patent Owner’s view, the panel’s discussion of step ordering
`accounted for multiple possibilities permitted by Petitioner’s ambiguous assertions.
`Id.
`
`
`
`7
`
`

`

`IPR2016-01198 and IPR2016-01201
`Patents 9,179,005 B2 and 8,542,815 B2
`The panel stated that using Chu ’684’s “step 610” to help locate a caller
`dialing profile and then using Chu ’684’s “step 608” to route private versus public
`messages, as cited in the Petition (see Pet. 17–20), would not comply with the
`claim-step ordering. FWD 23–24. Petitioner contends that the panel
`misunderstood the asserted mapping and argues that “the Proposed Combinations
`do not rely on step 610 of Chu ’684 alone for the caller profile limitation.” Reh’g
`Req. 11. As Patent Owner points out, however, the panel reasonably addressed a
`possible mapping raised in the Petition and discussed by Petitioner’s declarant.
`Reh’g Opp’n 18–19; see also Ex. 1009 ¶ 45 (opinion by Petitioner’s expert that
`“Chu ’684 discloses using a caller identifier to locate a caller dialing profile”);
`PO Resp. 61–65 (disputing the possible mapping as inconsistent with claim-step
`ordering). The panel rejected that mapping as inconsistent with the claim-step
`ordering. The panel’s statement simply recognized that a combination preserving
`the routing of private-network calls—where such calls are analyzed based on the
`dialed digits first, before possible reformatting—would require jumping back and
`forth between teachings in the art in order to follow the claim sequence. Because
`the Petition provided insufficient explanation to support such an approach, we
`determine that the panel did not err.
`
`C. Reasons To Combine
`Petitioner further argues that the panel overlooked the full extent of the
`reasons why ordinary skilled artisans would have combined one of the secondary
`references with Chu ’684. Reh’g Req. 14–17. According to Petitioner, based on
`the totality of arguments, the panel should have appreciated that the proposed
`combination introduces support for “short form dialing (e.g., 555-1234)” and thus
`is an “‘intuitive’ and ‘user-friendly’ modification of Chu ’684.” Id. at 16–17.
`Because the panel quoted two paragraphs of the Petition discussing the
`
`
`
`8
`
`

`

`IPR2016-01198 and IPR2016-01201
`Patents 9,179,005 B2 and 8,542,815 B2
`combination’s benefits, Petitioner asserts that the panel overlooked additional
`explanation. Id. at 14 (citing FWD 18–21). According to Petitioner, the 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.” Id. at 17.
`As discussed above (see supra at 4˗5), Patent Owner disputes Petitioner’s
`view of Chu ’684. See Reh’g Opp’n 7–10 (relying on its declarant to argue that
`Chu ’684 does not operate as asserted by Petitioner, undermining Petitioner’s
`justification for the combination); PO Resp. 70 (citing Ex. 2016 ¶ 66). Petitioner
`contends that Dr. Mangione-Smith’s testimony did not address the asserted
`combination and therefore provided no need for a reply declaration. Reh’g Reply
`7–8. We do not agree with Petitioner’s position, for the reasons stated above.
`Petitioner does not raise any basis on which we should discount the panel’s
`reliance on Dr. Mangione-Smith’s testimony regarding the reason to combine.7
`We conclude that the panel did not misapprehend Chu ’684’s operation when it
`concluded that the Petition failed to show Chu ’684 is deficient and ripe for
`improvement. Instead, it resolved a factual dispute in Patent Owner’s favor based
`on record evidence.
`Petitioner argues also that it need not show a technical deficiency in
`Chu ’684 in order to rely on a secondary reference for a particular teaching.
`Reh’g Reply 5. We agree with Petitioner that Petitioner is not required to identify
`
`
`7 Petitioner argues that Dr. Mangione-Smith’s testimony was irrelevant “because
`he is not a telephony expert” (Reh’g Reply 7–8), but Petitioner did not seek to
`exclude the testimony. Rather, Petitioner argued for reduced weight (Reply 19–
`21), and does not argue that the panel overlooked the argument (see generally
`Reh’g Req.). On the contrary, the panel found Dr. Mangione-Smith to be
`sufficiently qualified. FWD 11–13.
`
`
`
`9
`
`

`

`IPR2016-01198 and IPR2016-01201
`Patents 9,179,005 B2 and 8,542,815 B2
`a technical deficiency in Chu ’684 to show obviousness. Petitioner, however,
`asserted the secondary references would have improved Chu ’684. See, e.g., Pet.
`16 (“One of ordinary skill in the art would thus have appreciated that these
`improvements to Chu ’684 could be achieved . . . .”). Based on the panel’s
`conclusion regarding Chu ’684, it rejected Petitioner’s view that adding teachings
`of Chu ’366 would have made Chu ’684’s interface more intuitive and user
`friendly. FWD 18–19. Thus, by concluding that Petitioner had not shown a
`“deficiency” in Chu ’684, the panel rejected any benefit that would have come
`from the combination. Id. at 19. Stated otherwise, an alleged deficiency in
`Chu ’684 and an alleged benefit of adding teachings from a secondary reference
`are two sides of the same coin. The panel recognized that Petitioner bore the
`burden to establish unpatentability and concluded Petitioner had fallen short of
`carrying that burden. Id. at 20–21. In light of the panel’s factual determination
`regarding Chu ’684, we conclude that the panel did not misapprehend Petitioner’s
`arguments regarding reasons to combine.
`
`D. Antedated Prior Art
`Finally, Patent Owner argues in its opposition to the Motion that it antedated
`the asserted prior art and should prevail on that independent basis.
`Reh’g Opp’n 20. We do not reach that issue because we conclude that Petitioner’s
`Request for Rehearing fails to demonstrate that the Final Written Decision
`misapprehended or overlooked any matter.
`
`III. CONCLUSION
`We deny Petitioner’s Request for Rehearing because we determine that
`Petitioner has not met its burden to show that in the Final Written Decision, the
`panel misapprehended or overlooked any matter.
`
`
`
`10
`
`

`

`IPR2016-01198 and IPR2016-01201
`Patents 9,179,005 B2 and 8,542,815 B2
`IV. ORDER
`
`It is, therefore,
`ORDERED that Petitioner’s Request for Rehearing is denied.
`
`
`11
`
`
`
`
`
`

`

`IPR2016-01198 and IPR2016-01201
`Patents 9,179,005 B2 and 8,542,815 B2
`
`PETITIONER:
`Adam P. Seitz
`Eric A. Buresh
`Paul R. Hart
`ERISE IP, P.A.
`adam.seitz@eriseip.com
`Eric.Buresh@eriseip.com
`Paul.Hart@eriseip.com
`
`PATENT OWNER:
`Kevin N. Malek
`MALEK MOSS PLLC
`kevin.malek@malekmoss.com
`Kerry Taylor
`John M. Carson
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2KST@knobbe.com
`2jmc@knobbe.com
`
`
`
`12
`
`