throbber
Filed: June 14, 2017
`
`Ryan Thomas (pro hac vice)
`
`Ph.: (435) 630-6005
`E-mail:
`thomasattorney711@gmail.com
`
`
`Filed on behalf of Patent Owner Voip-Pal.com Inc.
`By:
`
`Kerry S. Taylor
`John M. Carson
`William R. Zimmerman (pro hac vice)
`KNOBBE, MARTENS, OLSON
`& BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`
`Ph.: (858) 707-4000
`E-mail: BoxDigifonica@knobbe.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 MOTION TO EXCLUDE
`
`
`
`
`
`

`

`IPR2016-01201
`Apple Inc. v. Voip-Pal
`Patent Owner Voip-Pal.com, Inc. (“Voip-Pal”) hereby moves to exclude the
`
`following exhibits and their use in the Petitioner’s Reply. 37 C.F.R. § 42.64(c).
`
`Exhibit 1006 – Declaration of Henry Houh
`
`Apple’s use of certain statements from Dr. Henry Houh’s declaration (Ex.
`
`1006) is irrelevant and misleading, and should be excluded under FRE 401-403.
`
`Apple’s obviousness arguments rely on Dr. Houh’s testimony in ¶38 and ¶43
`
`of Ex. 1006 that “improvements” are needed in Chu ’684’s system, i.e., to allow
`
`users to “place calls as if they were dialing from a standard PSTN phone”. Paper 1
`
`at 19 & 40-41. But Dr. Houh’s assertion in Ex. 1006 of deficiency in Chu ’684 is
`
`based on no evidence that Chu ’684’s system failed to allow users to “place calls as
`
`if they were dialing from a standard PSTN phone”. Indeed, this alleged deficiency
`
`in Chu ’684 is unsupported by any citation to Chu ’684 or explanation. Thus, Dr.
`
`Houh’s unsupported statements in ¶38 and ¶43 are improper testimony under FRE
`
`701-703 that are not based on facts or data, and should also be excluded under FRE
`
`401-403 as irrelevant and misleading.
`
`Apple’s Petition relies on Dr. Houh’s declaration (Ex. 1006), which
`
`incorrectly assumes that the word “subscriber” in Chu ’684 (Ex. 1003) means “an
`
`individual phone user”. See Ex. 1006 at ¶¶ 37, 42 and 45. Dr. Houh later conceded
`
`in deposition testimony that, in Chu ’684, “subscriber” means “enterprise”, not
`
`“subscriber” as used in the Patent Owner’s patent. Ex. 2043 at 15:11-17:4; Ex.
`
`-1-
`
`

`

`IPR2016-01201
`Apple Inc. v. Voip-Pal
`2044 at 221:20-222:4, 220:17-24, 178:17-184:5, 223:8-224:8, 215:20-217:9,
`
`214:1-215:19; 217:10-220:9. Dr. Houh’s fundamental misunderstanding of
`
`“subscriber” and “subscriber-specific dial plan” in Ex. 1006 has led to Apple’s
`
`Petition mischaracterizing “dial plans” in Chu ‘684 as being caller-specific (rather
`
`than enterprise-specific). Thus ¶¶ 37, 42, and 45 in Ex. 1006 should also be
`
`excluded under FRE 401-403 as irrelevant and misleading.
`
`Exhibits 1007-1010 & 1012 –Deposition Transcripts of Declarants
`
`Apple selectively uses deposition statements of Exs. 1007-1010 & 1012 in a
`
`misleading fashion, and should be excluded under FRE 401-403. Further, care
`
`should be taken when reviewing Apple’s characterizations of the deposition
`
`testimony, because these characterizations create a misleading impression by citing
`
`statements out of context that are incomplete and, in fairness under FRE 106,
`
`should be considered with the entirety of the deposition testimony.
`
`Exhibit 1007 – Deposition Transcript of William Mangione-Smith
`
`Apple relies on Ex. 1007 at 45:8-21 to allege that Exhibit 2014 was created
`
`by Dr. Mangione-Smith “from an undislcosed [sic] source code repository” and is
`
`“not the original source code file from 2005” but rather is “snippets of code... cut-
`
`and-pasted” with a date “added as a header by Patent Owner’s counsel, not by Dr.
`
`Mangione-Smith or natively by the source code repository software.” Reply at 4-5.
`
`This citation is used in a misleading manner because: (1) the source of the
`
`-2-
`
`

`

`IPR2016-01201
`Apple Inc. v. Voip-Pal
`repository was not “undisclosed”; rather, the repository was proven to be identical
`
`to a repository extracted by forensics expert Mr. Purita from a portable hard drive
`
`of a Digifonica employee (Ex. 1007 at 75:18-77:3); (2) this repository provided Dr.
`
`Mangione-Smith with the metadata confirming that version 361 of the RBR
`
`software was dated June 6th, 2005, at 9:22:59 A.M. (id. at 162:19-163:24), as also
`
`confirmed in the RBR log file (id. at 162:19-163:18, 49:15-50:19; compare log
`
`file, Ex. 2015 at 52:2); and (3) the Subversion repository software Dr. Mangione-
`
`Smith used to extract this metadata was “widely used”, “extremely well tested”,
`
`maintained or monitored repository integrity, and “support[ed] the ability to
`
`accurately review earlier releases of the code.” Ex. 1007 at 74:2-24, 164:1-165:21.
`
`Apple relies on Ex. 1007 at 47:25-49:14 to allege that Dr. Mangione-Smith
`
`“never confirmed the proffered code actually worked at all... [or] was actually
`
`operational”. Reply at 5. This citation is used in a misleading manner since Dr.
`
`Mangione-Smith testified that he: (1) reviewed the code both manually (Ex. 1007
`
`at 48:20-49:9) and using a software analysis tool (id. at 178:2-13); (2) “confirmed
`
`that all variables are accurately and consistently referenced in this code to the
`
`extent needed for operation” (id. at 48:3-19, 177:1-178:13); (3) reviewed testing
`
`code stored in the repository from the relevant time (id. at 48:20-49:14, 58:4-22,
`
`59:5-60:11); (4) reviewed call log or call setup records from the relevant time (id.
`
`at 63:1-10, 65:11-21); and (5) considered corroborating evidence, which gave him
`
`-3-
`
`

`

`IPR2016-01201
`Apple Inc. v. Voip-Pal
`“strong confidence” that the RBR code was operational. (id. at 62:6-16).
`
`Apple cites 100:18-101:24 to characterize Dr. Mangione-Smith’s testimony
`
`as arguing that the “non-routable Digifonica ID” (or “username”) could satisfy the
`
`claimed “address, on the private network, associated with the callee”. Reply at 13-
`
`14. This citation is used in a misleading manner since Dr. Mangione-Smith stated
`
`that the “address, on the private network, associated with the callee” in the claimed
`
`“private network routing message” could be satisfied by: (1) a username (user ID)
`
`stored in a variable called “E.164 formed number” (Ex. 1007 at 98:23-99:14,
`
`169:16-170:7, 172:14-173:6), or (2) a callee domain, i.e., an address of a
`
`supernode associated with the callee (id. at 106:24-107:25, 174:5-20, 102:9-18), or
`
`(3) a combination of these pieces of data (id. at 172:14-173:6, 174:5-20, 100:18-
`
`101:2). Apple’s citation of 100:18-101:24 is also misleadingly contrasted to
`
`testimony indicating that routing messages do not include the “IP address of the
`
`phone.” Reply at 14 (citing Ex. 1012 at 120:12-121:6). Dr. Mangione-Smith
`
`testified that the claims do not require a routable IP address to a specific
`
`component on a private network (Ex. 1007 at 101:15-24); the Digifonica telephone
`
`number (or username) itself is an “address on the private network associated with
`
`the callee” (id. at 174:5-20; see also 101:3-14). Dr. Mangione-Smith’s other
`
`testimony also belies Apple’s assertion that a username is “non-routable” since the
`
`username alone could have been used to place private network communication (id.
`
`-4-
`
`

`

`IPR2016-01201
`Apple Inc. v. Voip-Pal
`at 86:16-25).
`
`Apple relies on Ex. 1007 at 143:17-144:11 and 150:21-154:1 to allege that
`
`Dr. Mangione-Smith “admitted he was unaware of any such express requirement”
`
`in Chu ’684 to dial a prefix digit to reach a callee on the PSTN. Reply at 17-18.
`
`This citation is used in a misleading manner because Dr. Mangione-Smith clearly
`
`explained that he was relying on what was inherent in a PBX system as would be
`
`understood by a person of ordinary skill in the art since the practice of using dial
`
`plans that use a prefix digit to dial to the PSTN is a convention that is “almost
`
`universally adopted” and a person of ordinary skill would have understood it is
`
`present “unless explicitly disclosed otherwise”. Ex. 1007 at 146:8-147:22. Dr.
`
`Mangione-Smith pointed to prior art which indicated that the prefix digit technique
`
`was “conventional” in PBX systems since at least the 1970’s. Id. at 133:5-135:7,
`
`126:2-23, 131:15-21. Dr. Mangione-Smith also explained that it is not surprising
`
`that Chu ’684 would not discuss well-known details that are not part of “the key
`
`aspect of their innovation” (id. at 144:11-145:2); however, to fail to support this
`
`feature would make Chu ’684’s PBX “deficient in the market place” relative to its
`
`competition (id. at 147:24-148:15).
`
`Apple relies on Ex. 1007 at 26:20-22 and selected paragraphs of Dr.
`
`Mangione-Smith’s declaration to allege his “lack of telephony experience”. Reply
`
`at 20-21. Apple mischaracterizes Dr. Mangione-Smith’s
`
`telephony-related
`
`-5-
`
`

`

`IPR2016-01201
`Apple Inc. v. Voip-Pal
`experience by omitting his extensive testimony of his: (1) work at Motorola on
`
`cellular handsets and wireless personal digital assistants that sent email over
`
`cellular (Ex. 1007 at 10:21-11:8, 15:21-16:22, 17:16-22:11), (2) work at UCLA in
`
`voice coding, compression, decompression, networking switch technologies,
`
`videoconferencing and call setup (id. at 11:9-20, 17:1-3; 22:12-23:8; 26:5-9), (3)
`
`work with session initiation protocol (SIP) for call session setup (id. at 22:12-
`
`26:4); (4) contributions to some telephony-related patents (id. at 12:4-19); and (5)
`
`evaluating PBX technology for possible asset acquisition (id. at 26:20-25).
`
`Apple relies on Ex. 1007 at 157:22-158:2 to allege Dr. Mangione-Smith
`
`admitted that “calling attributes as claimed could be shared across multiple users”.
`
`Reply at 24 (emphasis added). This citation is misleading because its context does
`
`not involve any discussion of attributes “as claimed”, but rather only discusses
`
`whether some users could have used the same attributes in Digifonica’s system.
`
`Ex. 1007 at 157:12-21. But this discussion is irrelevant to the issue of whether
`
`such attributes are stored in a caller-specific manner as recited in the claims.
`
`Apple’s citations to Ex. 1007 are misleading under FRE 401-403 and
`
`incomplete under FRE 106, and should be excluded.
`
`Exhibit 1008 – Deposition Transcript of John Rutter
`
`Apple cites Ex. 1008 at 23:1-22 as supporting the assertion that the “surety”
`
`values in Mr. Rutter’s 2005 report “indicated how ‘sure’ the 3rd party [Smart421]
`
`-6-
`
`

`

`IPR2016-01201
`Apple Inc. v. Voip-Pal
`was that Digifonica’s system would work for its intended purpose.” Reply at 5-6.
`
`Apple also cites to 24:15-19 and 25:1-5 as supporting the assertion that: “the
`
`Digifonica system and that the code ‘was still a work in progress.’” Reply at 6.
`
`These citations are used in a misleading manner because the completeness and
`
`surety measures related to the average of all individual components, not solely
`
`RBR’s classifying and routing functions. Ex. 1008 at 23:9-14. And surety related
`
`to the business process. Id. at 23:15-22. Apple’s characterization of this testimony
`
`is also inconsistent with numerous statements by Mr. Rutter where he testified that
`
`the Digifonica system was operational. See, e.g., id. at 21:3-11 (“[The software]
`
`was functional and working and they were looking to do more as per the report.”),
`
`22:7-12 (system was “operational and live as in it was functional and they could
`
`sell the service”); 24:20-25 (code was “live operational” and not in the beta phase),
`
`25:1-5 (the Digifonica system was “still being developed and enhanced” but there
`
`were “functional stages”). And Mr. Rutter repeatedly testified that he personally
`
`observed the functions of Digifonica’s call routing system. See, e.g., id. at 31:3-13
`
`(Mr. Rutter saw demonstrations of various phone calls and was provided a
`
`Digifonica phone to be used in the UK); 31:23-32:1 (this Digifonica phone was
`
`used in Smart421’s Ipswitch office); 32:25-33:7 (Mr. Rutter saw demonstrations in
`
`which the system determined whether a phone call was to be made to the private IP
`
`network or the PSTN network); 34:4-35:21 (Mr. Rutter placed calls between two
`
`-7-
`
`

`

`IPR2016-01201
`Apple Inc. v. Voip-Pal
`Digifonica phones in UK and between phone in UK and phone in Vancouver).
`
`Apple’s citations to Ex. 1008 are misleading under FRE 401-403 and
`
`incomplete under FRE 106, and should be excluded.
`
`Exhibit 1009 – Deposition Transcript of David Terry
`
`Apple cites Ex. 1009 at 24:23-25:18 as supporting the assertion that “Mr.
`
`Terry did not write the code and was not personally familiar with the code.” Reply
`
`at 6. This citation is used in a misleading manner because Apple’s assertion is
`
`inconsistent with numerous statements by David Terry throughout his testimony
`
`where he testified as to his basis for his knowledge of the RBR code used by
`
`Digifonica in 2005. See, e.g., Ex. 1009 at 13:9-15:7 (in early 2005 and likely
`
`continuing into June 2005, Mr. Terry configured, installed, used, and documented
`
`how to use tools for performing tests on Digifonica’s call routing system), 17:3-
`
`18:12 (he learned of call routing system architecture in presentations while he was
`
`at Digifonica), 50:25-52:23, 60:24-61:23, 73:12-74:8 (his discussion in ¶4 of Ex.
`
`2018 was based on architecture presented while he was at Digifonica, as well as
`
`other presentations, conversations and discussions during his time at Digifonica),
`
`57:13-19 (his knowledge of specifics of data fields based on being at Digifonica at
`
`that time and his own work on provisioning of phones and accessing the database).
`
`Apple similarly cites Ex. 1009 at 60:19-61:17 as showing that Mr. Terry’s
`
`statements are “based on nothing more than hindsight knowledge coupled with his
`
`-8-
`
`

`

`IPR2016-01201
`Apple Inc. v. Voip-Pal
`having been at Digifonica in 2005.” Reply at 7. As shown above, Mr. Terry
`
`repeatedly testified that his knowledge of the RBR code used by Digifonica in June
`
`2005 is based on his own work at Digifonica in 2005 and what he learned from
`
`others at Digifonica in 2005. Contrary to the characterizations by Apple, Mr. Terry
`
`clearly demonstrated a thorough basis for his personal knowledge of RBR.
`
`Apple cites Ex. 1009 at 39:21-41:7 as supporting the assertion that Mr.
`
`Terry “did not test the system to confirm operation of the code in 2005.” Reply at
`
`6-7. This citation is used in a misleading manner because Apple’s assertion is
`
`inconsistent with numerous statements by David Terry throughout his testimony.
`
`Specifically, Mr. Terry testified that in early 2005 he established and used testing
`
`tools at Digifonica, and that he was also aware that testing of RBR software by
`
`others was being performed in 2005 (Ex. 1009 at 7:7-16, 13:9–15:9, 39:7–40:20,
`
`49:3-7). Mr. Terry further testified it was Digifonica’s standard deployment
`
`procedure that, in order for the RBR software, including version 361, to be
`
`installed on the Vancouver and London production nodes, the software had to first
`
`pass testing (Id. at 46:18–48:19, 53:25-54:5, 77:5-78:7, 80:8-81:1), and his role
`
`was to build the RBR software package for installation on the production nodes
`
`(Id. at 11:17-12:1, 41:21-42:24, 44:1–45:24). Mr. Terry also testified that he knew
`
`that RBR had been successfully tested and was functioning in June 2005 because
`
`calls were being made, including both internal Digifonica user-to-Digifonica user
`
`-9-
`
`

`

`IPR2016-01201
`Apple Inc. v. Voip-Pal
`internal calls, as well as Digifonica user-to-PSTN calls (Id. at 12:17-24, 23:12-
`
`24:4, 39:7-40:20, 49:15-50:24, 79:23-81:1). Mr. Terry himself used the Digifonica
`
`system to place calls. Id. at 48:20-24. When confronted by Apple’s counsel that he
`
`was just “assuming that somebody must have” tested version 361 on June 6th 2005,
`
`Mr. Terry responded, “Well, I’m not assuming it. I mean, go back to what I said
`
`before, it’s based on their deployment procedures.” Id. at 49:3-7.
`
`Apple cites Ex. 1009 at 59:19-22 as supporting the assertion that Mr. Terry
`
`“was not responsible for defining the relevant functionalities performed by the
`
`code.” Reply at 7. This citation is used in a misleading manner because Apple
`
`implies that Mr. Terry did not have proper foundation to testify how RBR
`
`functions. However, Mr. Terry explained that he configured, installed, used and
`
`documented tools used to test the Digifonica system (Ex. 1009 at 13:9-15:9), and
`
`he understood the RBR architecture based on numerous presentations and
`
`conversations during his time at Digifonica (Id. at 50:25-52:23, 60:24-61:23,
`
`73:12-74:8). Further, Mr. Terry’s discussion in paragraph 4 of Ex. 2018 described
`
`the basic functions in all releases of the RBR code, and Mr. Terry testified these
`
`functions were operating properly by June 2005, as demonstrated by testing that
`
`showed the ability to successfully place calls using the Digifonica system that
`
`included the RBR code. Id. at 12:12-24, 71:9-16, 77:5-78:7, 79:23-80:7.
`
`-10-
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`

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`IPR2016-01201
`Apple Inc. v. Voip-Pal
`Apple’s use of portions of Ex. 1009 to assert that Mr. Terry lacks a “proper
`
`foundation” to testify that the RBR code was functional is thus contradicted by
`
`numerous instances where Mr. Terry explained his basis for knowing that the RBR
`
`software was operational as intended.
`
`Apple’s citations to Ex. 1009 are misleading under FRE 401-403 and
`
`incomplete under FRE 106, and should be excluded.
`
`Exhibit 1010 – Deposition Transcript of Clay Perreault
`
`Apple cites Ex. 1010 at 59:3-23 as supporting the assertion that “Mr.
`
`Perreault did not write or test the Digifonica code, and did not have first hand
`
`knowledge of the code in June 2005.” Reply at 7. This citation is used in a
`
`misleading manner because it does not support Apple’s contention. Mr. Perreault
`
`testified that he did not “personally write” any code, not that he did not test or
`
`understand the code. Further, Apple’s assertion is inconsistent with Mr. Perreault’s
`
`testimony of his significant involvement in Digifonica system testing and his
`
`knowledge of its successful operation. See, e.g., Ex. 1010 at 25:13-27:2 and 28:7-
`
`23 (Mr. Perreault recalled watching live and performance testing being conducted
`
`by his employees using Digifonica’s internal phones), 29:17-30:8 (Mr. Perreault
`
`was personally involved with tests of phone calls to the PSTN from the
`
`development node), 73:1-18 (every feature was tested and approved before
`
`software was rolled out to production), 76:10-22 and 25:2-8 (Digifonica’s system
`
`-11-
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`IPR2016-01201
`Apple Inc. v. Voip-Pal
`was tested on a “day-to-day basis” by using the system as its internal phone system
`
`to place internal, external and international calls), 77:12-78:6 and 97:3-24 (Mr.
`
`Perreault knew that reformatting of digits was taking place based on successfully
`
`placed phone calls). Mr. Perreault also testified as to the basis for his knowledge of
`
`the system in 2005. Id. at 18:3-11 (Mr. Perreault was directly involved with
`
`guiding and technology development), 23:5-9 (Mr. Perreault was directly involved
`
`with technology implementation and received regular reports from staff), 88:2-22
`
`(Mr. Perreault prepared Ex. 2020 in May 2005 summarizing the technical
`
`functionality of the Digifonica system), 95:23-96:7 (Mr. Perreault designed
`
`functionality in direct communication with the programmers), 97:3-98:14 (Mr.
`
`Perreault was aware calls he successfully placed confirmed that dialed digits were
`
`reformatted).
`
`Apple cites Ex. 1010 at 79:25-81:21 as supporting the assertion that: “Mr.
`
`Perreault relied primarily on the Challenged Patent itself to form his understanding
`
`of how the Digifonica system allegedly operated as of June 2005.” Reply at 7-8.
`
`These citations are used in a misleading manner because Mr. Perreault clarified
`
`that when he read the patent he “recalled the functionality of the designs that [he]
`
`originally established” including the “core functionality” that “would have been in
`
`place” in June 2005 (Ex. 1010 at 79:8-20 (emphasis added)), and the patent
`
`described the core functionality that was operating in June 2005 (id. at 64:2-65:9).
`
`-12-
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`IPR2016-01201
`Apple Inc. v. Voip-Pal
`Moreover, Mr. Perreault relied on numerous sources in preparing his testimony for
`
`this proceeding. For example, Mr. Perreault relied on documents submitted in this
`
`proceeding (id. at 80:15-81:7), including Ex. 2020, a white paper which he
`
`personally prepared to summarize the technical functionality of the Digifonica
`
`system in May 2005 (id. at 88:2-89:12). Further, Mr. Perreault gave ample basis
`
`for his knowledge of RBR code functionality as used in operation by Digifonica in
`
`2005. For example, Mr. Perreault had been directly involved with technology
`
`development and implementation including functionality design directly with the
`
`programmers (id. at 18:3-11, 23:5-9 and 95:23-96:7).
`
`Apple misleadingly cites to Mr. Perreault’s testimony at 48:25-50:12 of Ex.
`
`1010 as allegedly contradicting Mr. Bjorsell who indicated that SER was involved
`
`in maintaining the IP address of the callee. Reply at 14-15. In fact, no contradiction
`
`exists because Mr. Perreault testified that the B2BUA and SER (“SIP express
`
`router”) work together to get the IP address of the callee (Ex. 1010 at 48:25-49:16
`
`and 52:3-9). Apple further cites Ex. 1010 at 45:8-46:9 and 48:22-24 as supporting
`
`the assertion that “the RBR server does not know the network address associated
`
`with the callee.” Reply at 14. But these citations are misleading because the RBR
`
`generates a routing message for a callee containing a domain identifying the IP
`
`address of the callee’s supernode. See, e.g., Ex. 1010 at 46:14-47:22 (RBR
`
`generates a routing message for a Vancouver callee containing a domain
`
`-13-
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`IPR2016-01201
`Apple Inc. v. Voip-Pal
`identifying the IP address of the Vancouver supernode).
`
`Apple’s citations to Ex. 1010 are misleading under FRE 401-403 and
`
`incomplete under FRE 106, and should be excluded.
`
`Exhibit 1012 – Deposition Transcript of Johan Emil Viktor Bjorsell
`
`Apple cites Ex. 1012 at 83:15-86:5 as supporting the assertion that “Mr.
`
`Bjorsell could not confirm that any particular functionalities were tested and
`
`operational as of June 2005.” Reply at 8. Apple again cites to a portion of this
`
`testimony at 85:24-86:5 as supporting the assertion that “it would be necessary to
`
`know the specific calls (e.g., caller and callee) placed on the Digifonica system to
`
`know whether certain functionality on the RBR server existed and was operational
`
`at the time of the testing”. Reply at 11. These citations are used in a misleading
`
`manner because Apple’s assertion is inconsistent with numerous statements by Mr.
`
`Bjorsell as to his knowledge of testing the RBR code in 2005. Notably, Apple
`
`omits Mr. Bjorsell’s immediately preceding testimony that thorough testing had to
`
`be conducted to confirm that the RBR code was ready for production, and when
`
`the software passed all tests it would be placed in production. Ex. 1012 at 82:7-
`
`83:14. Further, the cited testimony itself undermines Apple’s characterization of
`
`this testimony because Mr. Bjorsell identified tests that he would “always”
`
`perform. See, e.g., id. at 84:11-20 (Mr. Bjorsell would always test on-net calls and
`
`off-net calls in various call scenarios), 85:5-20 (Mr. Bjorsell would call his parents
`
`-14-
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`IPR2016-01201
`Apple Inc. v. Voip-Pal
`from home and would always run through various call scenarios). Apple also
`
`omitted other testimony by Mr. Bjorsell about the testing performed on the RBR
`
`software and that it was functional. See, e.g., id. at 72:2-15 (Mr. Bjorsell executed
`
`the RBR version 361 code in preparing his declaration), 155:19-156:3 (knowing
`
`that version 361 was operational indicates that the RBR software validly queried
`
`the database and successfully routed calls on-net and off-net).
`
`Apple cites Ex. 1012 at 120:12-121:6 as supporting the assertion that “the
`
`RBR server does not know the network address associated with the callee.” Reply
`
`at 14. Apple also cites to overlapping testimony at 120:24-122:1 as allegedly
`
`contradicting Mr. Perreault and supporting the assertion that “the SER maintained
`
`the network address of the callee”. Reply at 14-15. These citations are used in a
`
`misleading manner because Apple conflates a network address associated with the
`
`callee with the IP address of the callee phone to argue that the RBR software is
`
`missing a claim element. But Mr. Bjorsell explained the private routing message
`
`contains the domain name (i.e., IP address) of a Digifonica node associated with
`
`the callee, such as the London supernode or the Vancouver supernode. Ex. 1012 at
`
`116:17-118:9, 122:2-123:16, 163:11-24. Apple’s use of this testimony to assert the
`
`RBR code does not practice all claim elements is misleading.
`
`Apple’s citations to Ex. 1012 are misleading under FRE 401-403 and
`
`incomplete under FRE 106, and should be excluded.
`
`-15-
`
`

`

`Respectfully submitted,
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`
`
`By: /Kerry Taylor/
`Kerry Taylor, Reg. No. 43,947
`John M. Carson, Reg. No. 34,303
`William R. Zimmerman, appears pro hac vice
`Customer No. 20,995
`(858) 707-4000
`
`Ryan Thomas, appears pro hac vice
`(435) 630-6005
`
`Attorneys for Patent Owner
`Voip-Pal.com, Inc.
`
`
`-16-
`
`IPR2016-01201
`Apple Inc. v. Voip-Pal
`
`
`
`
`
`
`
`
`
`Dated: June 14, 2017
`
`

`

`IPR2016-01201
`Apple Inc. v. Voip-Pal
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that true and correct copy of PATENT OWNER MOTION
`
`TO EXCLUDE is being served on June 14, 2017, via electronic mail pursuant to
`
`37 C.F.R. § 42.6(e) as addressed below:
`
`Adam P. Seitz
`Eric A. Buresh
`ERISE IPA, P.A.
`6201 College Blvd., Suite 300
`Overland Park, KS 66211
`Telephone: (913) 777-5600
`Adam.seitz@eriseip.com
`eric.buresh@eriseip.com
`
`
`
`
`Paul R. Hart
`ERISE IPA, P.A.
`5600 Greenwood Plaza Blvd., Suite 200
`Greenwood Village, CO 80111
`Telephone: (913) 777-5600
`Paul.Hart@EriseIP.com
`
`
` /Kerry Taylor/
`Kerry Taylor, Reg. No. 43,947
`John M. Carson, Reg. No. 34,303
`Attorneys for Patent Owner
`Voip-Pal.com, Inc.
`
`
`
`
`
`Dated: June 14, 2017
`
`
`
`26119951
`
`
`-17-
`
`

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