Paper 54
`Trials@uspto.gov
`571-272-7822 Entered: November 20, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VOIP-PAL.COM, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01201
`Patent 8,542,815 B2
`____________
`
`
`
`Before JOSIAH C. COCKS, JENNIFER MEYER CHAGNON, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: November 20, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VOIP-PAL.COM, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01201
`Patent 8,542,815 B2
`____________
`
`
`
`Before JOSIAH C. COCKS, JENNIFER MEYER CHAGNON, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
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`I. INTRODUCTION
`Apple Inc. (“Petitioner”) filed a Petition for inter partes review of
`claims 1, 7, 27, 28, 34, 54, 72–74, 92, 93, and 111 of U.S. Patent No.
`8,542,815 B2 (Ex. 1001, “the ’815 patent”). Paper 1 (“Pet.”).
`Voip-Pal.com, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 5
`(“Prelim. Resp.”). Based on those submissions, the Board instituted trial to
`determine whether the above-noted claims would have been obvious over
`(1) Chu ’6841 and Chu ’3662, and (2) Chu ’684 and Chen3. Paper 6 (“Inst.
`Dec.”). Patent Owner’s Request for Rehearing (Paper 9) was denied
`(Paper 11).
`Subsequently, Patent Owner filed a Patent Owner Response. Paper 17
`(“PO Resp.”). As a part of that Patent Owner Response, Patent Owner
`included new evidence on which it relied in contending that the Petitioner
`had not met the enhanced burden of establishing by a “preponderance of the
`evidence” (35 U.S.C. § 316(e)) the unpatentability of any of the claims of
`the ’815 patent. See Exs. 2003–2050. Petitioner filed a Reply. Paper 34
`(“Pet. Reply”). Patent Owner filed a Sur-Reply. Paper 41 (“PO
`Sur-Reply”).4 Patent Owner also filed a Motion to Exclude. Paper 40.
`Petitioner filed an Opposition (Paper 44), to which Patent Owner replied
`
`
`1 U.S. Patent No. 7,486,684 B2 to Chu et al. issued Feb. 3, 2009 (Ex. 1003)
`(“Chu ’684”).
`2 U.S. Patent No. 8,036,366 B2 to Chu issued Oct. 11, 2011 (Ex. 1004)
`(“Chu ’366”).
`3 U.S. Patent Application Publication No. US 2007/0064919 A1 to Chen et
`al. published Mar. 22, 2007 (Ex. 1005) (“Chen”).
`4 The Sur-Reply was authorized by the panel. Paper 37.
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`(Paper 47). Oral argument was conducted on July 20, 2017. A copy of the
`transcript of the argument was entered into the record. Paper 52.
`We have jurisdiction under 35 U.S.C. § 6. This Decision is a final
`written decision under 35 U.S.C. § 318(a) as to the patentability of the
`challenged claims. For the reasons that follow, we determine Petitioner has
`not shown by a preponderance of the evidence that claims 1, 7, 27, 28, 34,
`54, 72–74, 92, 93, and 111 of the ’815 patent are unpatentable.
`
`A. Related Matters
`The parties identify the following district court proceedings in which
`the ’815 patent has been asserted: Voip-Pal.com, Inc. v. Apple, Inc., Case
`No. 2-16-cv-00260 (D. Nev.); and Voip-Pal.com, Inc. v. Verizon Wireless
`Services, LLC, Case No. 2-16-cv-00271 (D. Nev.). See Pet. 58; Paper 4, 1.
`Petitioner also has filed a petition for inter partes review of claims of the
`’815 patent in IPR2017-01399, as well as petitions in connection with
`related U.S. Patent No. 9,179,005 B2 (“the ’005 patent”) in IPR2016-01198
`and IPR2017-01398.5
`
`B. The ’815 Patent
`The ’815 patent is directed to classifying a call as a public network
`call or a private network call and producing a routing message based on that
`classification. Ex. 1001, Abstract. Figure 7 of the ’815 patent is shown
`below.
`
`
`5 Trial was instituted in IPR2016-01198 on November 21, 2016. A decision
`regarding institution of trial in each of IPR2017-01398 and IPR2017-01399
`has not yet been made.
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`
`Figure 7 above illustrates a routing controller that facilitates communication
`between callers and callees. Id. at Fig. 7, 14:24–25, 17:17–18. As shown in
`Figure 7, routing controller (RC) 16 includes RC processor circuit 200,
`which in turn includes processor 202, program memory 204, table memory
`206, buffer memory 207, and I/O port 208. Id. at 17:17–22. Routing
`controller 16 queries database 18 (shown in Figure 1) to produce a routing
`message to connect caller and callee. Id. at 14:10–17, 14:24–34. Program
`memory 204 includes blocks of code for directing processor 202 to carry out
`various functions of the routing controller. Id. at 17:38–40. Those blocks of
`code include RC request message handler 250, which directs the routing
`controller to produce the routing message. Id. at 17:40–44.
`In response to a calling subscriber initiating a call, the routing
`controller of the ’815 patent:
`receiv[es] a callee identifier from the calling subscriber, us[es]
`call classification criteria associated with the calling subscriber
`to classify the call as a public network call or a private network
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`call[,] and produc[es] a routing message identifying an address
`on the private network, associated with the callee[,] when the call
`is classified as a private network call and produc[es] a routing
`message identifying a gateway to the public network when the
`call is classified as a public network call.
`Id. at 14:24–34.
`Figures 8A through 8D of the ’815 patent illustrate a flowchart of an
`RC request message handler executed by the RC processor circuit. Id. at
`10:62–63. Figure 8B is reproduced below.
`
`
`
`
`Figure 8B above illustrates steps for performing checks on the callee
`identifier. Id. at Fig. 8B, 19:45–49. Blocks 257, 380, 390, 396, 402 in
`Figure 8B effectively “establish call classification criteria for classifying the
`call as a public network call or a private network call.” Id. at 22:48–51. For
`example, block 402 “directs the processor 202 of FIG. 7 to classify the call
`as a private network call when the callee identifier complies with a
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`predefined format, i.e. is a valid user name and identifies a subscriber to the
`private network . . . .” Id. at 22:51–60. Block 269 also classifies the call as
`public or private, depending on whether the callee is a subscriber to the
`system. Id. at 22:51–23:8, 20:14–24; see also id. at 18:55–19:22.
`
`C. Illustrative Claim
`Among the challenged claims, claims 1, 27, 28, 54, 74, and 93 are
`independent. Claim 1 is illustrative and reads:
`1.
`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:
`in response to initiation of a call by a calling subscriber,
`receiving a caller identifier and a callee identifier;
`locating a caller dialing profile comprising a username
`associated with the caller and a plurality of calling attributes
`associated with the caller;
`determining a match when at least one of said calling
`attributes matches at least a portion of said callee identifier;
`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;
`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;
`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.
`Id. at 36:14–38.
`
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`II. ANALYSIS
`A. Claim Construction
`In an inter partes review, we construe claim terms in an unexpired
`patent according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016)
`(upholding the use of the broadest reasonable interpretation standard).
`Consistent with the broadest reasonable construction, claim terms are
`presumed to have their ordinary and customary meaning as understood by a
`person of ordinary skill in the art in the context of the entire patent
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). An inventor may provide a meaning for a term that is different from
`its ordinary meaning by defining the term in the specification with
`reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994).
`In the Institution Decision, the panel made express claim
`constructions for the various means-plus-function limitations appearing in
`the challenged claims. Inst. Dec. 7–16. Neither party has challenged those
`constructions, and we do not discern that any of them are in dispute. We do
`not revisit any of those constructions as a part of this Decision.
`In addition, Patent Owner’s arguments require us to consider whether
`certain steps in the challenged claims must be performed in a specific order.
`See PO Resp. 50–57. More particularly, claim 1 requires “locating a caller
`dialing profile” that includes “a plurality of calling attributes associated with
`the caller,” then “determining a match when at least one of said calling
`attributes matches at least a portion of” a “callee identifier.” The claim goes
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`on to dictate that the call is classified as either a public network call or a
`private network call based on that match. Patent Owner contends that,
`because the required “calling attributes” are consulted to determine how a
`message is routed, this necessarily means the act of locating a caller profile
`that incorporates the calling attributes must have occurred prior to the step of
`determining a match using based on those calling attributes. See id.
`In considering whether the steps of a claim must be performed in the
`order written, the first place to look is the claim language itself. See Altris,
`Inc. v. Symantec Corp., 318 F.3d 1363, 1369–70 (Fed. Cir. 2003). In
`claim 1, for instance, the calling attributes of a caller dialing profile that are
`consulted for the purpose of determining a match, which is used to
`determine message routing, must necessarily have been ascertained prior to
`such message routing determination. Because the function of a particular
`component in a prior step is referenced in a subsequent step, it is the logical
`and natural inference that the steps are ordered with respect to one another.
`See Mantech Envtl. Corp. v. Hudson Envtl. Servs., Inc., 152 F.3d 1368,
`1375–76 (Fed. Cir. 1998) (holding that the steps of a method claim had to be
`performed in their written order because each subsequent step referenced
`something logically indicating the prior step had been performed).
`Petitioner does not present arguments regarding the ordering of claim steps.
`We conclude that, for claim 1, the pertinent steps discussed above occur in
`the order in which they appear in the claims. We also reach that conclusion
`for each of the other independent claims involved in this proceeding, all of
`which include a similar requirement.
`We have given all other terms their ordinary and customary meaning
`and conclude that it is unnecessary, for purposes of this Decision, to make
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`any of those meanings explicit as the terms are not in dispute. See Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)
`(“[O]nly those terms need be construed that are in controversy, and only to
`the extent necessary to resolve the controversy.”).
`
`B. The Proposed Grounds of Unpatentability
`Petitioner contends that claims 1, 2, 7, 27, 28, 34, 54, 72–74, 92, 93,
`and 111 of the ’815 patent are unpatentable under 35 U.S.C. § 103(a) as
`obvious over (1) Chu ’684 and Chu ’366, and (2) Chu ’684 and Chen.
`Pet. 1, 6, 10–45. A claim is unpatentable under § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time the invention was
`made to a person having ordinary skill in the art to which said subject matter
`pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
`The question of obviousness is resolved on the basis of underlying factual
`determinations, including: (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of skill in the art; and (4) where in evidence, so-called secondary
`considerations. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).6
`
`1. Level of Skill in the Art
`In determining the level of skill in the art, various factors may be
`considered, including “type of problems encountered in the art; prior art
`solutions to those problems; rapidity with which innovations are made;
`sophistication of the technology; and educational level of active workers in
`
`
`6 No evidence pertaining to “secondary considerations” has been offered by
`either party in connection with this proceeding.
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`the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing
`Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962
`(Fed. Cir. 1986)). Furthermore, the prior art of record in this proceeding
`also is indicative of the level of ordinary skill in the art. See Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579; In
`re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`Petitioner offers the following assessment of the level of ordinary skill
`in the art:
`A person of ordinary skill in the art at the time of the ’815 Patent
`would have been a person having at least a bachelor’s degree in
`electrical engineering, or in a related field, with at least 2-4 years
`of industry experience in designing or developing packet-based
`and circuit-switched telecommunication systems. Additional
`industry experience or technical training may offset less formal
`education, while advanced degrees or additional formal
`education may offset lesser levels of industry experience. See
`Ex. 1006, Houh Declaration, at ¶ 19.
`Pet. 11. Patent Owner’s Declarant, Dr. William Mangione-Smith, responds
`with the following assessment:
`Based on my review of the ’815 Patent and the ‘005 Patent and
`my background and experience in the field of computer science,
`it is my opinion that one of ordinary skill in the art as of the
`priority date would be someone with an undergraduate degree in
`either Computer Science, Computer Engineering, Electrical
`Engineering, or a closely related discipline. Furthermore, I
`believe that such a person would also have 2 years of experience
`in system-level software development. In my opinion a greater
`degree of professional experience could serve to replace some
`degree of formal education. I also believe that some greater
`degree of formal education could serve to replace some degree
`of professional work experience.
`Ex. 2016 ¶ 14.
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`The variation between the parties’ assessments relates to the type of
`industry experience a skilled artisan would have had, i.e., “designing or
`developing packet-based and circuit-switched telecommunication systems”
`versus “system-level software development.”
`In considering the record before us, including the content of the prior
`art, we agree that ordinarily skilled artisans would have had some degree of
`experience with each of system-level software development and
`telecommunication systems. But, as both parties agree, particular industry
`experience and formal education are intertwined. We view the differences
`in the parties’ assessments of the level of ordinary skill in the art as minor,
`but we agree with Petitioner that the record reflects that a skilled artisan’s
`background would include some experience with telecommunication
`systems. Accordingly, in rendering this Final Written Decision, we adopt
`Petitioner’s evaluation of the level of ordinary skill in the art.
`
`2. Dr. Mangione-Smith’s Qualifications
`Petitioner challenges Dr. Mangione-Smith’s qualifications to opine on
`what a person of ordinary skill in the art would have understood from the
`teachings of the prior art. Petitioner asks that we disregard Dr. Mangione-
`Smith’s testimony that has been introduced in the record (Ex. 2016) on the
`basis that he allegedly lacks experience with telephony systems. Pet. Reply
`20.
`
`In reviewing Dr. Mangione-Smith’s credentials and testimony, we
`observe that the record reflects that he has considerable educational
`background, including the following degrees: a Bachelor of Science and
`Engineering, a Master of Science and Engineering, and a Doctor of
`Philosophy awarded from the University of Michigan in Ann Arbor,
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`Michigan. See Ex. 2016 ¶ 4; Ex. 2045 (CV of Dr. Mangione-Smith).
`Dr. Mangione-Smith also testifies that his “technical background covers
`most aspects of computer system design, including low level circuitry,
`computer architecture, computer networking, graphics, application software,
`client-server application, Web technology, and system software (e.g.,
`operating systems and compilers).” Ex. 2016 ¶ 3. Dr. Mangione-Smith also
`has relevant employment experience, including multi-year employment at
`Motorola (see Ex. 2045, 1), which he describes as follows:
`While at Motorola, I was part of a team designing and
`manufacturing the first commercial battery-powered product
`capable of delivering Internet email over a wireless (i.e., radio
`frequency) link and one of the first personal digital assistants.
`I also served as the lead architect on the second-generation of this
`device. Part of my responsibilities at Motorola involved the
`specification, design, and testing of system control Application-
`Specific Integrated Circuits (“ASICs”). I conducted the initial
`research and advanced design that resulted in the Motorola
`M*Core embedded microprocessor. M*Core was designed to
`provide the high performance of desktop microprocessors with
`the low power of contemporaneous embedded processors. The
`M*Core
`received widespread use
`in a number of
`communications products including various telephonic handsets,
`advanced pagers, and embedded infrastructure.
`Ex. 2016 ¶ 5.
`
`Dr. Mangione-Smith also testifies that in the course of his
`employment at the University of California at Los Angeles from 1995 to
`2005 as a professor of Electrical Engineering, his lab developed “the
`Medibench software tool, which is widely used to design and evaluate multi-
`media embedded devices” and includes “software that is essential for
`modern digital telephony.” Id. ¶ 6.
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`In considering Dr. Mangione-Smith’s substantial technical and
`educational background, we are satisfied that Dr. Mangione-Smith is
`qualified to offer testimony in connection with what a person of ordinary
`skill in the art would have understood from the record at hand.
`
`3. Asserted Obviousness over Chu ’684 and Chu ’366
`a. Summary of Chu ’684
`Chu ’684 describes its disclosed invention as “relat[ing] to the field of
`communications systems and more specifically to the management and
`control of voice-over Internet Protocol (VoIP) virtual private networks
`(VPNs) in an IP-based public branch exchange (PBX) environment.”
`Ex. 1003, 1:9–13. Figure 2 of Chu ’684 is shown below.
`
`Figure 2 above depicts a portion of a communications system according to
`an embodiment of Chu ’684’s invention. Id. at 3:14–15. As shown in
`Figure 2, communications system 200 includes customer premises 105
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`having IP phones 101, 102, and 103 and server 110 connected to a voice
`over IP (VoIP)-VPN Service Provider (SP) at SP central office 205. Id. at
`4:24–28. Connection 145 between customer premises 105 and SP central
`office 205 is made via one or more routers 140. Id. at 4:28–30. Server 110
`communicates with soft-switch 220 with an agreed-upon signaling protocol
`such as Session Invitation Protocol (SIP). Id. at 4:49–52. Soft-switch 220
`sends appropriate commands to packet switch 210. Id. at 4:52–55. Packet
`switch 210 is a special media gateway that accepts voice packets from an
`incoming interface and switches these packets to an outgoing interface. Id.
`at 4:36–39. Soft-switch 220 “is the intelligence of the system . . . . For
`example, it keeps track of the VPN that a location belongs to, the dial plans
`of the subscribers, . . . and the like.” Id. at 4:59–63.
`Chu ’684’s VoIP network carries both on-net (within the same VoIP
`VPN) and off-net (to PSTN) calls.7 Id. at 5:17–19. Chu ’684 discloses that
`an “On-Net Call” sequence begins when a user picks up the handset at IP
`phone 101. Id. at 8:39–40, 8:55–56. According to Chu ’684, IP phone 101
`collects dialed digits from the user and sends them to server 110. Id. at
`8:62–64. Chu ’684 discloses that “after receiving all the dialed digits from
`the phone 101, server 110 consults its dial plan to determine whether the call
`is local, to another on-net phone, or to a phone that is on the PSTN.” Id. at
`8:65–9:1. In this on-net example, the call is another on-net phone in another
`location. According to Chu ’684, server 110 sends an SIP invite message to
`soft-switch 220 at central office 205. Id. at 9:2–4. Chu ’684 discloses that
`soft-switch 220 “consults the dial plan for this subscriber” based on the ID
`
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`7 “PSTN” stands for “public switched telephone network.” Id. at 1:34–36.
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`of server 110. Id. at 9:30–33. From the database associated with the dial
`plan, soft-switch 220 determines, among other things, the IP address of the
`egress packet switch. Id. at 9:34–38. Chu ’684 discloses that soft-
`switch 220 sends an SIP invite message to the next soft-switch, the SIP
`message including information such as that “the call is an on-net call for a
`particular VPN.” Id. at 9:50–58.
`Figure 13 of Chu ’684 illustrates a configuration for establishing
`IP-VPN service to the PSTN. Id. at 13:1–3. For an outgoing call from IP
`phone 101, the operation is very similar to that of an intra-net call. Id. at
`13:13–15. Chu ’684 states: “From the dialed digits (of a destination phone
`that is being called, PSTN phone 1301), ingress soft-switch 220[] determines
`that this call is for the PSTN.” Id. at 13:15–18. From the same dialed digits,
`the soft-switch also determines egress PSTN gateway 1302 and its
`controlling soft-switch 1304. Id. at 13:18–20.
`b. Summary of Chu ’366
`Chu ’366 discloses a system for intelligent formatting of VoIP
`telephone numbers. Ex. 1004, Abstract. By way of background, Chu ’366
`explains the following:
`In order to technically accommodate the growing number of
`telephone users around the world, and increased interest in
`Internet telephony, the International Telecommunications Union
`(ITU) has adopted a number of protocols
`to facilitate
`communications. One such protocol is E.164, which provides a
`uniform means for identifying any telephone number in the
`world to any telephony user in the world. This protocol operates
`for standard public switched telephone networks (PSTNs).
`Id. at 1:18–22. Chu ’366 also states that an E.164-formatted number has at
`most 15 digits, and contains an E.164 prefix (typically a + sign), a country
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`code, and a subscriber telephone number. Id. at 1:29–31. Chu ’366 explains
`that when making calls via a traditional PSTN, a subscriber is able to enter
`abbreviated numbers for local and national telephone calls. Id. at 1:35–37.
`For example, for a local call in the United States, a user may simply enter
`the seven digit telephone number without an E.164 prefix, the country code
`or the area code. Id. at 1:37–40. By contrast, Chu ’366 states, “there is no
`such concept of local, long distance or national calls when making a call via
`Internet telephony” because even for a call between two local points, that
`call may be routed by servers located across the globe. Id. at 1:44–49.
`According to Chu ’366, then-existing global VoIP service providers
`required users to enter fully formatted E.164 telephone numbers. Id. at
`1:49–51. Chu ’366 describes a system that allows users to enter a phone
`number that is not E.164-compliant, and transforms that number into one
`that is E.164-compliant using, for example, information from a call origin
`location profile. Id. at 1:67–2:4, 2:16–67.
`c. Discussion–Chu ’684 and Chu ’366
`Claims 1, 27, 28, 54, 74, and 93 involved in this inter partes review
`proceeding are independent. We focus, initially, on claim 1. That claim
`includes the following features:
`in response to initiation of a call by a calling subscriber,
`receiving a caller identifier and a callee identifier;
`locating a caller dialing profile comprising a username
`associated with the caller and a plurality of calling attributes
`associated with the caller;
`determining a match when at least one of said calling
`attributes matches at least a portion of said callee identifier;
`classifying the call as a public network call when said
`match meets public network classification criteria and
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`classifying the call as a private network call when said match
`meets private network classification criteria;
`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;
`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.
`Thus, claim 1 requires that at least one “calling attribute” associated
`with a caller is evaluated to determine if that calling attribute matches a
`portion of a callee identifier. The call is classified as a public network call
`or a private network call based on whether that match meets public or
`private network classification criteria. Either a private network routing
`message is produced for receipt by the call controller identifying a private
`network address associated with the callee, or a public network routing
`address is produced which identifies a gateway to the public network.
`A core basis of dispute between Petitioner and Patent Owner centers
`on the above-noted features of the claims. Specifically, the parties disagree
`as to whether the proposed combination of the teachings of the prior art, e.g.,
`Chu ’684 and Chu ’366, teaches the production of a routing message for a
`call when each of “calling attributes” associated with the caller and a portion
`of a “callee identifier” meet either public or private network classification
`criteria. Compare Pet. 1 (“[T]he purportedly distinguishing feature of the
`’815 Patent of using attributes about a caller to determine whether a call is
`routed to a private or public network was present in the prior art.”), with PO
`Resp. 46 (“The cited references, individually or in combination, fail to
`provide any teaching or suggestion of classifying calls by network (i.e.,
`
`17
`
`
`
`IPR2016-01201
`Patent 8,542,815 B2
`
`private network or public network) based on whether a ‘match’ between the
`caller’s ‘calling attributes’ and the callee identifier meets private or public
`‘network classification criteria’ in the manner recited in the challenged
`claims.”) The parties also disagree whether Petitioner has shown adequate
`reasoning to combine the teachings of Chu ’684 and Chu ’366. We address
`these disagreements between the parties below.
`i. Proposed reasoning to combine
`Petitioner offers the following reasons why a skilled artisan would
`have modified Chu ’684 based on Chu ’366’s disclosure:
`It would have been obvious to one of skill in the art to
`modify the system described by Chu ’684 with the specific dialed
`digit reformatting teachings of Chu ’366. Given that the system
`of Chu ’684 already contains all the infrastructure needed to
`support such reformatting, the modification to Chu ’684 would
`be straightforward, not requiring undue experimentation, and
`would produce predictable results. Upon reading the disclosure
`of Chu ’684, a person of ordinary skill in the art would have
`recognized that allowing users to place calls as if they were
`dialing from a standard PSTN phone would be desirable, creating
`a system capable of supporting a more intuitive and user-friendly
`interface. See Ex. 1006, Houh Decl. at ¶¶ 35-39.
`One of ordinary skill would thus have appreciated that
`these improvements to Chu ’684 could be achieved by merely
`programming the system of Chu ’684 to analyze the dialed digits
`and reformat as necessary using caller attributes such as national
`and area code. Such modifications are simply a combination of
`the system of Chu ’684 with elements of Chu ’366 that would
`have yielded predictable results without requiring undue
`experimentation. See Ex. 1006, Houh Decl. at ¶ 38. Thus, it
`would have been natural and an application of nothing more than
`ordinary skill and common sense to combine Chu ’684 with the
`number reformatting of Chu ’366. Id.
`Pet. 19.
`
`18
`
`
`
`IPR2016-01201
`Patent 8,542,815 B2
`
`The underlying premise of Petitioner’s proposal to combine the
`
`teachings of Chu ’366 with those of Chu ’684 is that a skilled artisan would
`have viewed Chu ’684’s interface as less “intuitive” and less “user-friendly”
`than that of Chu ’366, thus giving rise to a desire to improve Chu ’684’s
`system. Id. As support for that proposal, Petitioner relies on the testimony
`of Dr. Houh spanning paragraphs 35 to 39 of his Declaration. In those
`paragraphs, Dr. Houh essentially expresses the same statements as those
`reproduced above. Notably absent, however, from both the Petition and
`Dr. Houh’s testimony is underlying evidentiary support for the proposition
`that one of ordinary skill in the art would have regarded Chu ’684’s
`teachings as deficient. Indeed, Petitioner’s statement and Dr. Houh’s bare
`testimony that “[u]pon reading the disclosure of Chu ’684,” a person of
`ordinary skill in the art would have sought to improve that very disclosure
`seemingly warrants underlying explanation or citation, yet no adequate
`support in that regard is supplied. See Pet. 19; Ex. 1006 ¶ 38.
`Moreover, this panel has the benefit of Dr. Mangione-Smith’s
`testimony, in which he expresses disagreement with the positions noted
`above taken by Dr. Houh and Petitioner and highlights the potential
`inadequacies in that respect. See Ex. 2016 ¶¶ 65–67. Indeed, we credit
`Dr. Mangione-Smith’s view that Dr. Houh does not explain adequately the
`nature of the deficiency in Chu ’684 that is intended to be addressed. Id.
`¶ 66. We also observe that Chu ’684 characterizes its disclosed invention as
`being “innovative,” “novel,” and overcoming “disadvantages” associated
`with the prior art. Ex. 1003, 2:28–29, 2:33–35. That Chu ’684 praises its
`own disclosure is unsurprising. Petitioner’s contention, however, that
`
`19
`
`
`
`IPR2016-01201
`Patent 8,542,815 B2
`
`Chu ’684 itself would have suggested a deficiency and a need for
`improvement is incongruent with the content of this reference.
`Both Petitioner and Dr. Houh offer “common sense” as an additional
`rationale underlying the combination of Chu ’684 and Chu ’366. Pet. 19;
`Ex. 1006 ¶ 38. Recourse to “common sense” certainly has its place in
`considering the question of obviousness. See KSR, 550 U.S. at 421 (“When
`there is a design need or market pressure to solve a problem and there are a
`finite number of identified, predictable solutions, a person of ordinary skill
`has good reason to pursue the known options within h
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