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
`
`
`
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`PATENT OWNER SUR-REPLY IN
`RESPONSE TO PETITIONER’S REPLY
`
`
`
`
`
`
`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
`
`
`
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`PATENT OWNER SUR-REPLY IN
`RESPONSE TO PETITIONER’S REPLY
`
`
`
`
`
`
`IPR2016-01201
`Apple Inc v. Voip-Pal
`
`Pursuant to Board Order (Paper 37), Patent Owner Voip-Pal.com, Inc. (“Voip-
`
`Pal”) hereby submits its Sur-Reply addressing Apple’s Reply arguments.
`
`I. Apple Relies On An Incorrect Testing Requirement Standard
`
`Apple argues that rigorous testing is required to establish reduction to practice
`
`for software. Reply at 4-12. But this requirement is satisfied when there is evidence
`
`of actual successful use. “A process is reduced to practice when it is successfully
`
`performed. A machine is reduced to practice when it is assembled, adjusted and
`
`used.” Blicke v. Treves, 241 F.2d 718, 720 (C.C.P.A. 1957); see also Estee Lauder,
`
`Inc. v. L’Oreal, S.A., 129 F.3d 588, 592 (Fed. Cir. 1997). The evidence shows that
`
`Digifonica’s system performed all features of the claims by placing on-net and off-
`
`net calls via supernodes in Vancouver and London; indeed, Digifonica routinely
`
`used the system as its primary telephone system. Ex. 2018 ¶¶3-7; Ex. 1009 at
`
`12:17-24, 23:12-21, 39:24-40:5, 47:18-48:10, 49:15-50:21, 53:25-54:5, 54:24-
`
`55:12, 71:9-16, 80:12-81:1; Ex. 2003 at §§ 1.1, 2.4.2, 4.3.7.2; Exs. 2008-2009
`
`¶¶4&7; Ex. 1010 at 25:2-8, 73:1-18, 76:10-22; Ex. 2012 at ¶¶11&16; Ex. 1012 at
`
`84:6-85:20; Exs. 2023-2027. This actual successful use of the RBR code in June
`
`2005 establishes it was working for its intended purpose.
`
`Even if evidence of testing were required, Voip-Pal has carried its burden.
`
`Apple premises its rigorous testing requirement on a single inapposite IPR decision
`
`in which a specific invention required “hundreds, if not thousands” of tests.
`
`-1-
`
`
`
`IPR2016-01201
`Apple Inc v. Voip-Pal
`
`IPR2015-00325 (Paper 62 at 29). But the Federal Circuit has held that “the testing
`
`requirement depends on the particular facts of each case, with the court guided by a
`
`common sense approach in weighing the sufficiency of the testing.” Scott v. Finney
`
`34 F.3d 1058, 1061 (Fed. Cir. 1994). The record establishes that successfully
`
`placing on-net and off-net calls was itself sufficient to show that the RBR code was
`
`operational. Ex. 2008 ¶4; Ex. 2003 § 4.3.7.2; Ex. 1009 at 13:9-14:21, 39:7-15,
`
`77:19-78:7 (referencing Ex. 2018 ¶4). Voip-Pal has provided evidence of testing.
`
`Apple provides no reason why a “common sense approach” would require more.
`
`II. Apple Disregards Evidence that RBR Worked For Its Intended Purpose
`
`Apple—bereft of any expert testimony—disregards or distorts voluminous
`
`evidence of record that RBR v361 worked in June 2005 for its intended purpose.
`
`Apple attacks the authenticity of Ex. 2014 (i.e., RBR code v.361) despite not
`
`filing any objection to this exhibit. Ex. 2014 is authenticated by multiple witnesses.
`
`Ex. 2014 is based on a code repository provided by Mr. Huttunen (whom Apple
`
`declined to depose) to forensic expert, Mr. Purita, who calculated the repository’s
`
`checksums. Exs. 2010-2011. Dr. Mangione-Smith and Mr. Bjorsell verified these
`
`checksums and the date of RBR code v361 in the repository, which Dr. Mangione-
`
`Smith used to produce Ex. 2014 and analyze RBR v361 relative to the ’815 Patent
`
`claims. Ex. 2016 at ¶¶20-24; Ex. 1012 at 46:7-55:7. Contrary to Apple’s
`
`distortions, expert declarant Dr. Mangione-Smith explains that Ex. 2014 is a set of
`
`-2-
`
`
`
`IPR2016-01201
`Apple Inc v. Voip-Pal
`
`interdependent PHP files that he extracted from Digifonica’s code repository and
`
`merely formatted for presentation, and that Ex. 2014 reliably reproduces RBR code
`
`v361 dated June 6, 2005, which Mr. Bjorsell confirmed. Ex. 1007 at 75:18-77:3,
`
`162:19-163:24, 74:2-24, 164:1-165:21; Ex. 1012 at 46:7-55:7.
`
`Apple asserts there’s “no evidence” that the RBR code was operational or tested
`
`in June 2005, nor was its functionality confirmed by any witness. Reply at 2, 6 &
`
`9. Apple grossly misrepresents the record. First, Mr. Terry testified extensively
`
`from personal knowledge that RBR v361 worked for its intended purpose by
`
`placing on-net and off-net calls in June 2005, corroborating similar testimony from
`
`inventors Mr. Perreault and Mr. Bjorsell. Ex. 2018 at ¶¶3-5&7; Ex. 1009 at 12:17-
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`24, 23:12-24:4, 39:7-40:20, 48:20-50:24, 79:23-81:1; Ex. 2013 at ¶¶12-13; Ex.
`
`1010 at 97:3-98:14; Ex. 2012 at ¶16; Ex. 1012 at 84:11-85:20. Second, the
`
`declarants testified how the RBR code was extensively tested in June 2005. Ex.
`
`1009 at 46:18-48:19, 53:25-54:5, 77:5-78:7, 80:8-81:1; Ex. 1010 at 29:17-30:8,
`
`73:1-18, 76:10-22, 25:2-8; Ex. 1012 at 82:7-85:20. Third, contemporaneous emails
`
`corroborate that RBR code v361 was deployed and tested on June 6, 2005. Exs.
`
`2025-2027. Fourth, Mr. Rutter and Mr. Gare from UK company Smart421
`
`corroborate that Digifonica was successfully classifying and routing calls in June
`
`2005. Ex. 1008 at 21:3-11, 22:7-12, 24:20-25, 31:3-13, 32:25-33:7, 34:4-35:21;
`
`Exs. 2008-2009 at ¶¶4-7; Ex. 2003 (“calls ... reliably routed” at §1.1, “tested in live
`
`-3-
`
`
`
`IPR2016-01201
`Apple Inc v. Voip-Pal
`
`operation” at § 2.4.2). Fifth, contrary to Apple’s assertions, Mr. Bjorsell executed
`
`the v361 RBR code to test it and Dr. Mangione-Smith also confirmed its
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`operability by multiple methods. Ex. 1012 at 72:2-15; Ex. 1007 at 48:3-49:14,
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`177:1-178:13, 58:4-22. Expert Dr. Mangione-Smith states that the evidence is
`
`convincing that RBR v361 was operational in June 2005. Ex. 2016 ¶¶24-29; Ex.
`
`1007 at 62:6-16. Apple’s assertion of “no evidence” is contradicted by the record.
`
`Apple’s assertion that RBR v361 was “a work in progress” (Reply at 5-6) is a
`
`red herring: Apple ignores the evidence that RBR’s core call classification and
`
`routing features were complete, and changes to RBR were minor “bug fixes” and
`
`adding “bells and whistles”. Ex. 1009 at 54:24-55:12, 77:5-18; Ex. 1010 at 98:17-
`
`99:13. That the claimed call classification/routing functionality was complete in
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`June 2005 is shown by the RBR code’s stability, as the RBR log file confirms. Ex.
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`1009 at 71:9-16; Ex. 2015 at 51-53 (RBR changes shown in log are minor).
`
`III. Apple’s Argument Rests On An Overly Narrow Claim Construction
`
`Apple incorrectly asserts that because Digifonica’s RBR code did not generate
`
`“the IP address of the phone,” the RBR code did not produce “an address …
`
`associated with the callee” as recited in the claims. Reply at 12-15. Implicit in
`
`Apple’s argument is that “address” is limited to “the IP address of the callee
`
`phone.” But Apple provides no support for such a narrow construction, and this
`
`construction is inconsistent with the ’815 Patent and Apple’s own Petition.
`
`-4-
`
`
`
`IPR2016-01201
`Apple Inc v. Voip-Pal
`
`Apple’s implicit construction is incorrect. First, it reads the words “associated
`
`with” out of the claims by requiring that only an IP address of the callee’s phone
`
`can meet this claim element, not the address of a different device (e.g., node)
`
`“associated with” the callee. Second, this construction excludes the specification’s
`
`preferred embodiment, in which Routing Controller (16) sends to Call Controller
`
`(14) a routing message containing the domain name of the node the callee is
`
`associated with, not the IP address of the callee’s phone. See, e.g., ’815 Patent at
`
`Fig. 1, 20:39-60, 25:31-35, Fig. 8A (blocks 350 and 609), Fig. 8C (block 644),
`
`Figs. 15, 16, 32. The Petition itself admits that, in the ’815 Patent, a private
`
`network routing message causes calls to be “directed to the private network node
`
`serving the called party.” Pet. at 2 (citing ’815 Patent at 1:59-62). Third, Apple’s
`
`Reply construction contradicts that of Apple’s Petition claim charts. Pet. at 23, 24,
`
`45 (claimed “address, on the private network, associated with the callee” is met by
`
`“IP address of the egress packet switch” (not phone) in Chu ’684 at 9:30-49).
`
`Voip-Pal’s evidence proves that the RBR code of Ex. 2014 sent a routing
`
`message with the domain (address) of a node associated with the callee. Ex. 2016
`
`at Claim chart; Ex. 1007 at 107:5-25, 112:9-113:3, 172:14-174:20; Ex. 1010 at
`
`46:14-47:22; Ex. 2012 at ¶21; Ex. 1012 at 120:12-23, 122:2-122:19, 163:11-165:8;
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`PO Resp. at 16-17. Apple doesn’t dispute this, relying solely on an unsupported,
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`overly narrow construction to assert that RBR didn’t practice all claim elements.
`
`-5-
`
`
`
`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.
`
`
`-6-
`
`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 SUR-
`
`REPLY IN RESPONSE TO PETITIONER’S REPLY 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
`
`
`
`
`
`Dated: June 14, 2017
`
`
`26094887
`
`
`
`
` /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 (pro hac vice)
`(435) 630-6005
`
`Attorneys for Patent Owner Voip-Pal.com, Inc.
`
`-7-
`
`
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