Filed: September 19, 2016
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`Filed on behalf of:
`Patent Owner Voip-Pal.com Inc.
`By: Kerry Taylor
`John M. Carson
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Tel.: (858) 707-4000
`Fax: (858) 707-4001
`Email:
`BoxDigifonica@knobbe.com
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.
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`Petitioner,
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`v.
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`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION
`FOR INTER PARTES REVIEW
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`VOIP-PAL.COM, INC.,
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`Patent Owner
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`Case No. IPR2016-01201
`U.S. Patent 8,542,815
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`Filed on behalf of:
`Patent Owner Voip-Pal.com Inc.
`By: Kerry Taylor
`John M. Carson
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Tel.: (858) 707-4000
`Fax: (858) 707-4001
`Email:
`BoxDigifonica@knobbe.com
`
`
`
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.
`
`Petitioner,
`
`v.
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION
`FOR INTER PARTES REVIEW
`
`
`
`
`
`
`
`VOIP-PAL.COM, INC.,
`
`Patent Owner
`
`
`
`
`Case No. IPR2016-01201
`U.S. Patent 8,542,815
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`TABLE OF CONTENTS
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`Page No.
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`I.
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`INTRODUCTION ........................................................................................... 1
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`II. ARGUMENT ................................................................................................... 3
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`A.
`
`B.
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`C.
`
`D.
`
`E.
`
`Introduction to Claimed Subject Matter ................................................ 3
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`Petitioner’s two obviousness grounds are redundant ............................ 5
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`Chu ‘366 is not prior art under pre-AIA 35 U.S.C. 102(e) ................... 7
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`The Petition is flawed and inadequate .................................................. 9
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`1.
`
`The claim charts fall well below the requirement to
`explain the grounds of unpatentability “with
`particularity” ............................................................................... 9
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`Ground 1 fails because the combination of Chu ‘684 and
`Chu ‘366 does not disclose all claim elements and
`because the combination is not obvious .............................................. 15
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`1.
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`2.
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`3.
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`4.
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`5.
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`Chu ‘684 and Chu ‘366 are completely unrelated
`documents naming completely different inventors ................... 15
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`Overview of Chu ‘684 .............................................................. 16
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`Overview of Chu ‘366 .............................................................. 17
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`The combination of Chu ‘684 and Chu ‘366 fails
`to render obvious “classifying the call” as recited
`in element [1d] .......................................................................... 18
`
`The combination of Chu ‘684 and Chu ‘366 fails
`to render obvious “locating a caller dialing profile”
`as recited in element [1b] .......................................................... 26
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`-i-
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`TABLE OF CONTENTS
`(cont’d)
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`Page No.
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`6.
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`Petitioner fails to articulate a proper reason to
`combine the references and overlooks reasons why
`the combination is undesirable.................................................. 38
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`F.
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`Ground 2 fails because the combination of Chu ‘684 and
`Chen does not disclose all claim elements and because
`the combination is not obvious............................................................ 47
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`1.
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`2.
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`3.
`
`4.
`
`Overview of Chen ..................................................................... 47
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`The combination of Chu ‘684 and Chen fails to
`render obvious “classifying the call” as recited in
`element [1d] .............................................................................. 48
`
`The combination of Chu ‘684 and Chen fails to
`render obvious “locating a caller dialing profile” as
`recited in element [1b] .............................................................. 52
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`Petitioner fails to articulate a proper reason to
`combine the references and overlooks that the
`combination is undesirable ....................................................... 59
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`III. CONCLUSION .............................................................................................. 65
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`-ii-
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`TABLE OF AUTHORITIES
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`Page No(s).
`
`Apple Inc. v. Rensselaer Polytechnic Institute,
`IPR2014-00077, Paper 14 (P.T.A.B. June 13, 2014) ............................. 15, 41, 61
`
`Cisco Sys., Inc. v. C-Cation Techs., LLC,
`IPR2014-00454, Paper 12 (P.T.A.B. Aug. 29, 2014) ......................................... 15
`
`Eaton v. Evans,
`204 F.3d 1094 (Fed. Cir. 2000) ............................................................................ 7
`
`Globespanvirata, Inc. v. Tex. Instruments, Inc.,
`2005 WL 3077915 (D. N.J. 2005) ...................................................................... 14
`
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) ...................................................................... 25, 51
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`K-TEC, Inc. v. Vita-Mix Corp.,
`696 F.3d 1364 (Fed. Cir. 2012) .......................................................................... 39
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .....................................................................................passim
`
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.,
`CBM2012-00003, Paper 7 (Representative Order)
`(P.T.A.B. Oct. 25, 2012) ....................................................................................... 7
`
`In re Magnum Oil Tools Int’l, Ltd.,
`No. 2015-1300, 2016 WL 3974202 (Fed. Cir. July 25, 2016) ..................... 12, 13
`
`In re McLaughlin,
`443 F.2d 1392 (C.C.P.A. 1971) .............................................................. 46, 52, 64
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`Mformation Techs., Inc. v. Research in Motion Ltd.,
`764 F.3d 1392 (Fed. Cir. 2014) .......................................................................... 19
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`Nautilus Hyosung Inc. v. Diebold Inc.,
`IPR2016-00633, Paper 9 (P.T.A.B. Aug. 22, 2016) ..................................... 12, 13
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`-iii-
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`TABLE OF AUTHORITIES
`(cont’d)
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`Page No(s).
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`Unified Patents Inc. v. William Grecia,
`IPR2016-00789, Paper 8 (P.T.A.B. Sept. 9, 2016) ....................................... 39, 60
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`OTHER AUTHORITIES
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`37 C.F.R. § 42.1 ......................................................................................................... 6
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`37 C.F.R. § 42.6 ...............................................................................11, 14, 15, 41, 61
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`37 C.F.R. § 42.22 ....................................................................................................... 9
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`37 C.F.R. § 42.65 ............................................................................................... 42, 62
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`37 C.F.R. § 42.104 ...........................................................................................passim
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`37 C.F.R. § 42.107 ..................................................................................................... 1
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`35 U.S.C. § 102 ...................................................................................................... 7, 8
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`35 U.S.C. § 103 .......................................................................................................... 2
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`35 U.S.C. § 312 .................................................................................................passim
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`35 U.S.C. § 313 .......................................................................................................... 1
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`35 U.S.C. § 314 .......................................................................................................... 2
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`35 U.S.C. § 316 .......................................................................................................... 6
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`Fed. Reg. 77 (Aug. 14, 2012) ................................................................................... 14
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`-iv-
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`IPR2016-01201
`Apple Inc. v. Voip-Pal
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`EXHIBIT LIST
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`Exhibit No.
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`Description
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`2001
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`Comparison of Ground 1 and Ground 2 of Petition
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`Exhibit List, Page 1
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`IPR2016-01201
`Apple Inc v. Voip-Pal
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`Pursuant to 35 U.S.C. § 313, 37 C.F.R. § 42.107, and the Notice of Filing
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`Date Accorded to Petition (Paper 3), dated June 18, 2016, Voip-Pal.com, Inc.
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`(“Voip-Pal”) hereby timely submits this Preliminary Response to the Petition for
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`Inter Partes Review of U.S. 8,542,815 (the ’815 Patent) (Paper 1) by Apple Inc.
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`(“Apple”).
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`I. INTRODUCTION
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`subsidiary of Patent Owner Voip‐Pal, was founded in 2004 with the vision that the
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`Digifonica, a real party-in-interest to this proceeding and wholly owned
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`Internet would be the future of all forms of telecommunications. As a startup
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`company, Digifonica did not have existing customers or legacy systems. Instead,
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`Digifonica had the opportunity to start from a blank slate. Digifonica employed
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`top professionals in the open‐source software community. Three Ph.D.s with
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`various engineering backgrounds held the top positions at the Company.
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`Digifonica’s engineers developed an innovative software solution for routing
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`communications, which by the mid-2000s it implemented in the four nodes spread
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`across three geographically different regions. Digifonica also obtained patents on
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`this technology, namely the ‘815 Patent, and continuation patent U.S. 9,179,005.
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`The ‘815 Patent, obtained as part of Digifonica’s R&D efforts, is the subject of the
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`present proceeding.
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`-1-
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`IPR2016-01201
`Apple Inc v. Voip-Pal
`Petitioner challenges Claims 1, 7, 27, 28, 34, 54, 72, 73, 74, 92, 93 and 111
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`of the ’815 Patent on two grounds:
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`1. Alleged obviousness under § 103(a) over U.S. Patent No. 7,486,684 to
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`Chu et al. (“Chu ’684”) in view of U.S. Patent No. 8,036,366 to Chu (“Chu ’366”).
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`2.
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`Alleged obviousness under § 103(a) over U.S. Patent No. 7,486,684 to
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`Chu et al. (“Chu ’684”) in view of U.S. Patent Publication No. 2007/0064919 to
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`Chen et al. (“Chen”).
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`Petitioner also submitted a Declaration by declarant Henry H. Houh, Ph.D.
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`Ex. 1006 (“Declaration”).
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`As Voip-Pal explains below, Petitioner’s arguments and assessments of the
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`cited art fail to establish a reasonable likelihood that Petitioner would prevail as to
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`its asserted grounds, as required under 35 U.S.C. § 314(a). Accordingly,
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`institution of this proceeding should be denied as to both asserted grounds.
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`Petitioner’s two grounds fail to provide all claim elements. For example,
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`Chu ‘684 teaches that “classifying” is performed before any “locating,” but the
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`“classifying” as recited in step [1d] is based on information determined in the
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`preceding “locating” step [1b]. Chu ‘684 also does not disclose classifying the call
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`when the “match” meets criteria as recited in step [1d]. Furthermore, the proposed
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`combinations would render the primary reference, Chu ‘684, inoperative or
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`unsuitable for its intended purpose. Most of Petitioner’s obviousness arguments
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`-2-
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`IPR2016-01201
`Apple Inc v. Voip-Pal
`are premised on a fundamental misinterpretation of the term “subscriber” in Chu
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`‘684 as referring to an individual rather than to an enterprise. This error undercuts
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`Petitioner’s assertions that the combined references teach certain claim elements.
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`In particular, this distortion of Chu ‘684 has led to the Petition incorrectly asserting
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`that the “dial plan” of an enterprise subscriber is a disclosure of an individual
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`caller’s “dialing profile.” Petitioner also fails to articulate any plausible reason to
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`combine the cited references, and any motivation to do so is further undermined by
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`the misinterpretation of Chu ‘684.
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`A.
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`Introduction to Claimed Subject Matter
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`II. ARGUMENT
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`Petitioner directed its analysis almost entirely to Claim 1, which recites:
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`1. [1p] A process for operating a call routing controller to
`facilitate communication between callers and callees in a system
`comprising a plurality of nodes with which callers and callees are
`associated, the process comprising:
`
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`[1a] in response to initiation of a call by a calling
`subscriber, receiving a caller identifier and a callee identifier;
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`[1b] locating a caller dialing profile comprising a
`username associated with the caller and a plurality of calling
`attributes associated with the caller;
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`-3-
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`IPR2016-01201
`Apple Inc v. Voip-Pal
`[1c] determining a match when at least one of said
`calling attributes matches at least a portion of said callee
`identifier;
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`[1d] classifying the call as a public network call when
`said match meets public network classification criteria and
`classifying the call as a private network call when said match
`meets private network classification criteria;
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`[1e] when the call is classified as a private network call,
`producing a private network routing message for receipt by a
`call controller, said private network routing message identifying
`an address, on the private network, associated with the callee;
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`[1f] when the call is classified as a public network call,
`producing a public network routing message for receipt by the
`call controller, said public network routing message identifying
`a gateway to the public network.
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`By way of technology background, a public switched telephone network
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`(PSTN) uses traditional telephone technology including dedicated telephone lines
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`from a service provider to transmit calls over a circuit-switched network. Voice
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`over Internet protocol (VoIP) is used for the delivery of digital voice
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`communications and multimedia sessions over Internet protocol (IP) networks,
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`-4-
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`IPR2016-01201
`Apple Inc v. Voip-Pal
`such as the Internet. Digital information delivered over IP networks is packetized,
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`and transmission occurs as IP packets over a packet-switched network.
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`The method of Claim 1 is directed to telecommunications call routing. The
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`routing method allows a call to be classified and routed as a “public network call”
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`or as a “private network call” based on whether a match of at least one calling
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`attribute and at least a portion of the callee identifier, meets certain network
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`criteria. For example, when a caller initiates a call to a callee the call may be
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`routed to, e.g., a traditional circuit switched network such as the PSTN, or to, e.g.,
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`a packet switched network such as the Internet, based on a calling attribute
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`matching at least a portion of callee information. The method of Claim 1 does not
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`evaluate the callee identifier in isolation, but matches the callee identifier based on
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`attributes in the caller’s dialing profile. Each caller has a dialing profile including
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`a plurality of calling attributes, at least one caller attribute of which is matched
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`with at least a portion of a callee identifier, e.g., a callee phone number, before the
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`system makes a network classification decision, e.g., PSTN or Internet routing.
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`B.
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`Petitioner’s two obviousness grounds are redundant
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`The two above obviousness grounds asserted in the Petition are, by
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`Petitioner’s own words, redundant.
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`Petitioner expressly admits that Ground 1 (Chu ‘684 & Chu ‘366) and
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`Ground 2 (Chu ‘684 & Chen) are redundant: “the substance between the two
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`-5-
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`IPR2016-01201
`Apple Inc v. Voip-Pal
`secondary references is largely identical.” Petition at 37. Petitioner explains that
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`Ground 2 is presented “to account for the possibility that the Patent Owner may
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`attempt to ‘swear behind’ the Chu ’366 reference” while Chen predates the ‘815
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`Patent’s priority date “by a significant amount.” Id.
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`Patent Owner agrees with Petitioner’s admission of the redundancy of
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`Grounds 1 and 2. Attached as Exhibit 2001 is a comparison of the arguments
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`presented in Ground 1 to the arguments presented in Ground 2. As is clear from
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`Exhibit 2001, Petitioner relies on identical citations to Chu ‘684 in both grounds,
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`Petitioner’s use of the secondary references is nearly identical, and Petitioner’s
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`arguments in these two Grounds are essentially verbatim.
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`Petitioner fails to explain how Ground 1 is distinct from Ground 2, other
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`than the fact that Patent Owner may antedate Chu ‘366 (Ground 1). As discussed
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`infra, Patent Owner reduced the claimed invention to practice with working source
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`code well before Chu ‘366’s effective date. Accordingly, Patent Owner intends to
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`antedate Chu ‘366 if trial is instituted on Ground 1.
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`The Statute and accompanying Rules provide that administration of IPRs
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`should “secure the just, speedy, and inexpensive resolution of every proceeding.”
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`37 C.F.R. § 42.1(b); 35 U.S.C. § 316(b). Institution on Ground 1, which Petitioner
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`admits is “largely identical” to Ground 2, would run contrary to these goals.
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`-6-
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`IPR2016-01201
`Apple Inc v. Voip-Pal
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., CBM2012-00003, Paper
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`7 (Representative Order) at 2 (P.T.A.B. Oct. 25, 2012).
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`Accordingly, by Petitioner’s own admission, the two Grounds presented are
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`redundant in substance. Since Petitioner asserts Ground 2 is superior by virtue of
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`Chen’s earlier effective date, Petitioner’s own admission dictates that Ground 1
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`should be denied as redundant to Ground 2.
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`C. Chu ‘366 is not prior art under pre-AIA 35 U.S.C. 102(e)
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`In Ground 1, Petitioner asserts that “U.S. Patent No. 8,036,366 to Chu (“Chu
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`’366”) was filed on Aug. 4, 2006 and therefore qualifies as prior art with regard to
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`the ’815 Patent under 35 U.S.C. §102(e).” Petition at 12. But Chu ‘366 can only
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`be prior art if it is “a patent granted on an application for patent by another filed in
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`the United States before the invention by the applicant for patent . . . .” 35 U.S.C.
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`§ 102(e) (emphasis added). Chu ‘366 was not filed before the invention by the
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`inventors of the ‘815 Patent.
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`Prior invention can be established by an actual reduction to practice before
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`the priority date. Eaton v. Evans, 204 F.3d 1094, 1097 (Fed. Cir. 2000). The
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`inventors of the ‘815 Patent reduced the claimed subject matter to practice before
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`Chu ‘366’s filing date of August 4, 2006. The ‘815 Patent inventors started a
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`company in 2004 and subsequently developed a system that allowed calls to be
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`placed between two IP phones and between an IP phone and traditional phones.
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`-7-
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`IPR2016-01201
`Apple Inc v. Voip-Pal
`The system developed by the inventors included four test “supernodes” that were
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`operating before August 4, 2006, one in London, UK, one in Dangaard, Denmark,
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`and two in the Vancouver, Canada area.
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`One of the components of the system developed by the inventors was a
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`software and hardware platform that received information related to the initiation
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`of a call and responded with call routing messages. This platform implemented a
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`call routing controller, which corresponds to the Routing Controller 16 illustrated
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`in Fig. 1 of the ‘815 Patent and discussed in the specification. This platform was
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`engineered, developed, tested and validated before August 4, 2006.
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`All of the claims of the ‘815 Patent challenged in the Petition were practiced
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`by the system that included this call routing platform that was operating before
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`August 4, 2006. Thus, the inventor’s actual reduction to practice preceded the
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`filing date of Chu ‘366 of August 4, 2006. Accordingly, Chu ‘366 is not prior art
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`under 35 U.S.C. § 102(e).
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`If Ground 1 is instituted, Patent Owner intends to submit evidence such as
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`computer source code, design documents and corroborating communications
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`establishing that well before the filing date of Chu ‘366, the inventors of the ‘815
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`Patent reduced to practice the inventions of all of the challenged claims.
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`-8-
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`IPR2016-01201
`Apple Inc v. Voip-Pal
`D. The Petition is flawed and inadequate
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`Petitioner has the burden of explaining “with particularity” the specific
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`evidence that allegedly supports each of the petition’s challenges of the claims. 35
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`U.S.C. § 312(a)(3). A petition must identify “[h]ow the construed claim is
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`unpatentable” and “must specify where each element of the claim is found in the
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`prior art patents or printed publications relied upon . . . .” 37 C.F.R. § 42.104(b)(4).
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`The petition must also include a “full statement of the reasons for the relief
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`requested, including a detailed explanation of the significance of the evidence.” 37
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`C.F.R. § 42.22(a)(2).
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`As discussed below, only the Petition’s claim charts address the claim
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`language and attempt to link the claim language to the cited references to explain
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`“[h]ow the construed claim is unpatentable,” but those explanations are terse and
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`insufficient.
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`The failures of the Petition are not inconsequential. As explained in
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`subsequent sections infra, these shortcomings of the Petition and Declaration belie
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`the insufficiencies of the references to render the claims unpatentable.
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`1.
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`The claim charts fall well below the requirement to explain the
`grounds of unpatentability “with particularity”
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`The entirety of Petitioner’s attempt to link each element of Claim 1 to the
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`teachings of the cited references is found in the claim charts. Patent Owner
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`understands that under the present Rules of practice, it is not improper to include
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`-9-
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`IPR2016-01201
`Apple Inc v. Voip-Pal
`arguments in the claim charts. However, the present Rules cannot be read in a
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`manner that excuses Petitioner from meeting their burden of providing a
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`meaningful explanation with particularity as to the grounds for challenging each
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`claim.
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`The Petition’s claim charts fail to carry Petitioner’s burden.
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`a.
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`The Claim Charts Do Not Explain How The References
`Teach All Claim Elements
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`As discussed in detail below at section II(E)(5)(a), Petitioner has mistakenly
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`interpreted Chu ‘684’s “subscriber” as being the “caller” recited in Claim 1, part b.
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`Petition at 21-22, 43-44. Chu ‘684’s “subscriber” is an enterprise or a corporation,
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`not an individual user such as the “caller” of element [1b]. Infra at II(E)(5)(a). At
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`a minimum, Petitioner was required to explain “with particularity” how the
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`evidence supports each of the Petitioner’s challenge of the claims (35 U.S.C. §
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`312(a)(3)), including explaining “where each element of the claim is found in the
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`prior art patents or printed publications relied upon . . . .” 37 C.F.R. § 42.104(b)(4).
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`The Petition does not attempt to explain how Chu ‘684’s “subscriber” is the
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`“caller” recited in [1b].
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`Instead, the Petition incorporates by reference its Declarant’s explanation.
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`Petition at 22, 43 (citing Ex. 1006, ¶ 45). Even a cursory review of ¶ 45 shows that
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`attempting to link Chu ‘684’s “subscriber” to the “caller” recited in [1b] is a
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`contorted path requiring inferences cobbled from multiple distinct portions of Chu
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`-10-
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`IPR2016-01201
`Apple Inc v. Voip-Pal
`‘684 as well as an invocation of inherency. Ex. 1006, ¶ 45. Thus, Petitioner’s own
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`Declarant put Petitioner on notice that linking Chu ‘684’s “subscriber” to the
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`“caller” in [1b] was non-trivial and required substantial explanation. Yet, instead
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`of complying with the requirements of 37 C.F.R. § 42.104(b)(4) to explain how
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`element [1b] is found in Chu ‘684, the Petition merely cites to the Declaration and
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`summarizes the Declarant’s explanation in a parenthetical. Petition at 22, 44.
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`Absent this improper incorporation by reference (see 37 C.F.R. § 42.6(a)(3)), the
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`Petition fails the statutory requirement to explain “with particularity” how the
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`evidence supports each of the Petitioner’s challenge of the claims. 35 U.S.C. §
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`312(a)(3). And even if the Declarant’s testimony is wholesale incorporated by
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`reference, Chu ‘684’s disclosure still does not meet the requirements of claim
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`element [1b]. See infra at II(E)(5).
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`b.
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`The Claim Charts Do Not Provide Even De Minimis
`Analysis of Claims 27, 28, 34, 54, 73, 74, 92, 93 and 111
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`Even more egregious than the shortcomings of the claim chart in discussing
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`Claim 1, the claim chart’s explanation for nearly all other claims is essentially non-
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`existent. The Petition asserts that 6 independent claims and 12 total claims are
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`obvious. These various claims are directed to different concepts using different
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`language. Yet the claim chart nearly exclusively incorporates by reference its
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`analysis of Claim 1 for the other claims without addressing the subject matter
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`encompassed by those claims or the language used in those claims to explain how
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`-11-
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`IPR2016-01201
`Apple Inc v. Voip-Pal
`the analysis for Claim 1 can be identically applied to render those claims obvious.
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`Four of the five other independent claims (Claims 27, 54, 74 and 93) are attacked
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`by incorporation by reference to the analysis of Claim 1 without explanation. And
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`the fifth independent claim (Claim 28) is attacked solely by incorporation by
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`reference to the analysis of the Declarant, without citation to the text of the
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`asserted references.
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`Regarding the claim chart’s attack on independent Claims 27, 54, 74 and 93
`
`(and also dependent Claim 92) by mere reference to the analysis of Claim 1, the
`
`Board has held that such practice is insufficient to carry Petitioner’s burden: “As
`
`the Federal Circuit has made clear, the Board cannot rely on conclusory statements
`
`by Petitioner that the same analysis applies without further explanation; rather,
`
`Petitioner must present ‘particularized arguments explaining why its arguments . . .
`
`would be cross-applicable.’ . . . Thus, in this case in light of the differences in the
`
`claim language, Petitioner’s conclusory statements implying that the same analysis
`
`for claim 1 also applies to independent claim 17 do not satisfy Petitioner’s burden
`
`to demonstrate obviousness.” Nautilus Hyosung Inc. v. Diebold Inc., IPR2016-
`
`00633, Paper 9 at 32 (P.T.A.B. Aug. 22, 2016) (citing In re Magnum Oil Tools
`
`Int’l, Ltd., No. 2015-1300, 2016 WL 3974202, at *9 (Fed. Cir. July 25, 2016))
`
`(internal citations omitted).
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`-12-
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`IPR2016-01201
`Apple Inc v. Voip-Pal
`The present Petition is even more deficient than the petition discussed in
`
`Nautilus, because the present Petition doesn’t even contain “conclusory statements
`
`implying that the same analysis for claim 1 also applies” to the other claims.
`
`Instead,
`
`the entirety of
`
`the claim chart’s assertion of obviousness of
`
`Claims 27, 28, 54, 74, 92 and 93 consists of incorporation by reference to the
`
`analysis of other claims. There is no consideration of claim language differences
`
`or claim constructions, and no explanation why these arguments are cross-
`
`applicable. As the Board in Nautilus held, such conclusory analysis is insufficient.
`
`Magnum Oil, 2016 WL 3974202 at *9. Thus, at a minimum, the Petition fails for
`
`these claims in which Petitioner chose to do no analysis beyond a simple
`
`incorporation by reference.
`
`For those claims not attacked by mere reference to Claim 1, the attack is
`
`solely by incorporation by reference to the analysis of the Declarant, without
`
`citation to the asserted references themselves. In particular, the claim charts attack
`
`Claims 28, 34, 73 and 111 by citing to one or more paragraphs in the Houh
`
`Declaration. The claim charts allude to the references generally, but without
`
`quoting teachings of the references and without identifying what text of the
`
`references is being relied upon. This is a fundamental failure of the Petition to
`
`explain “with particularity” how the evidence supports each of the Petitioner’s
`
`challenge of the claims (35 U.S.C. § 312(a)(3)) and to identify “where each
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`-13-
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`IPR2016-01201
`Apple Inc v. Voip-Pal
`element of the claim is found in the prior art patents or printed publications relied
`
`upon . . . .” 37 C.F.R. § 42.104(b)(4).
`
`Instead, the Petition relies wholesale on the Declarant’s explanation of how
`
`the evidence supports Petitioner’s challenge. But use of a Declaration to comply
`
`with statutory requirements of a Petition far oversteps the bounds limiting
`
`incorporation by reference in these proceedings. 37 C.F.R. § 42.6(a)(3). The
`
`PTAB has consistently warned parties to avoid such improper incorporation by
`
`reference:
`
`The prohibition against incorporation by reference minimizes the
`chance that an argument would be overlooked and eliminates abuses
`that arise from incorporation and combination. . . . Globespanvirata,
`Inc. v. Tex. Instruments, Inc., 2005 WL 3077915, * 1 (D. N.J. 2005)
`(Defendants provided cursory statements in motion and sought to
`make its case through incorporation of expert declaration and a
`claim chart. Incorporation by reference of argument not in motion
`was held to be a violation of local rules governing page limitations
`and was not permitted by the court) . . . .
`
`Fed. Reg. 77 at 48617 (Aug. 14, 2012).
`
`In fact, Apple, when previously acting as Petitioner, was specifically warned
`
`that information from a supporting declaration cannot be incorporated by
`
`reference:
`
`-14-
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`
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`IPR2016-01201
`Apple Inc v. Voip-Pal
`We decline to consider information presented in a supporting
`declaration, but not discussed in a petition, because, among other
`reasons, doing so would encourage the use of declarations to
`circumvent the page limits that apply to petitions. Along those lines,
`our rules prohibit arguments made in a supporting document from
`being incorporated by reference into a petition. See 37 C.F.R. §
`42.6(a)(3).
`
`Apple Inc. v. Rensselaer Polytechnic Institute, IPR2014-00077, Paper 14 at 5
`
`(P.T.A.B. June 13, 2014). See also Cisco Sys., Inc. v. C-Cation Techs., LLC,
`
`IPR2014-00454, Paper 12 at 9-10 (P.T.A.B. Aug. 29, 2014).
`
`Incorporation by reference in claim charts cannot serve as a substitute for
`
`complying with the statutory requirement of the petition itself to explain “with
`
`particularity” how the evidence supports each of the Petitioner’s challenge of the
`
`claims under 35 U.S.C. § 312(a)(3). As such, the claim charts fail to provide a
`
`reasoned basis for the unpatentability of Claims 28, 34, 73 and 111.
`
`E. Ground 1 fails because the combination of Chu ‘684 and Chu ‘366 does
`not disclose all claim elements and because the combination is not
`obvious
`
`1.
`
`Chu ‘684 and Chu ‘366 are completely unrelated documents
`naming completely different inventors
`
`While the first named inventors of the Chu ‘684 and Chu ‘366 patents share
`
`the same surname, they are two distinct individuals who worked for different
`
`companies in different parts of the country. Chu ‘684 names inventor Thomas P.
`
`-15-
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`IPR2016-01201
`Apple Inc v. Voip-Pal
`Chu of Englishtown, New Jersey, and identifies Alcatel-Lucent as the assignee.
`
`Chu ‘366 names inventor Lon-Chan Chu of Redmond, WA, and identifies the
`
`Microsoft Corporation as the assignee. Thus, despite both being labeled “Chu,”
`
`Chu ‘684 and Chu ‘366 are unrelated documents by unrelated individuals working
`
`at separate locations for unrelated entities.
`
`2. Overview of Chu ‘684
`
`Chu ‘684 discloses a network architecture for providing a voice over IP
`
`virtual private network (VoIP VPN) service to an organization (“subscriber”)
`
`having multiple IP-PBXs, and a method of connecting all of the IP-PBXs of the
`
`organization into a single logical network. See Chu ‘684 at 1:44-46, 3:52-56. The
`
`organization typically “subscribe[s] to many services” (e.g., both data and voice
`
`services) from the same service provider (SP). Id. at 5:3-6. FIG. 2 illustrates a
`
`subscribing customer’s IP-PBX communication system with multiple phones and a
`
`server 110 located at the subscribing customer’s premises 105 and configured to
`
`communicate with a soft-switch 220 and packet switch 210 located at the SP’s
`
`central office 205:
`
`-16-
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`IPR2016-01201
`Apple Inc v. Voip-Pal
`
`
`
`While many organizations, each with multiple locations, may share the SP’s
`
`network infrastructure (e.g., soft-switch 220 and packet switch 210), the system of
`
`Chu ‘684 allows each organization to have its own “dial plan” and allows calls to
`
`be routed internally to the IP-PBX, to a different IP-PBX, and to the public
`
`switched telephone network (PSTN). See Chu ‘684 at 12:60-67 and 8:65-9:1.
`
`3. Overview of Chu ‘366
`
`Chu ‘366 discloses a method of formatting a dialed telephone number
`
`according to the E.164 standard based on a “call origin location profile.” See Chu
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`‘366 at 1:62-2:14. A dialed number in Chu ‘366 can be formatted into the E.164
`
`format based on the PSTN dialing conventions of a variety of geographic locations.
`
`See Chu ‘366 at 2:16-28. Chu ‘366’s method allows travelling users, initiating
`
`VoIP telephone calls from different locations, to selectively adjust their dialing
`
`patterns to the location from which they are dialing. See Chu ‘366 at 5:3-14.
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`-17-
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`
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`IPR2016-01201
`Apple Inc v. Voip-Pal
`4.
`The combination of Chu ‘684 and Chu ‘366 fails to render
`obvious “classifying the call” as recited in element [1d]
`
`Claim 1 recites, inter alia, [1d] “classifying the call as a public network call
`
`when said match meets public network classification criteria and classifying the call
`
`as a private network call when said match meets private network classification
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`criteria.” The combination of Chu ‘684 and Chu ‘366 fai
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