Paper 6
`Trials@uspto.gov
`571-272-7822 Entered: November 21, 2016
`
`
`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 BARBARA A. BENOIT, LYNNE E. PETTIGREW, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`MARGOLIES, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`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
`
`AT&T, Exh. 1008, p. 1
`
`
`Trials@uspto.gov
`571-272-7822 Entered: November 21, 2016
`
`
`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 BARBARA A. BENOIT, LYNNE E. PETTIGREW, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`MARGOLIES, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`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
`
`AT&T, Exh. 1008, p. 1
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`(“Prelim. Resp.”). Institution of an inter partes review is authorized by
`statute when “the information presented in the petition . . . and any
`response . . . shows that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Upon consideration
`of the Petition and the Preliminary Response, we conclude that the
`information presented shows that there is a reasonable likelihood that
`Petitioner would prevail in establishing the unpatentability of claims 1, 7,
`27, 28, 34, 54, 72–74, 92, 93, and 111 of the ’815 patent.
`
`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
`U.S. Patent No. 9,179,005—a continuation of the ’815 patent—in IPR2016-
`001198. Another petitioner—Unified Patents Inc.—filed a petition for inter
`partes review of claims of the ’815 patent in IPR2016-01082. We did not
`institute a trial in that case.
`
`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, shown
`below, illustrates a routing controller that facilitates communication between
`callers and callees:
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`2
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`AT&T, Exh. 1008, p. 2
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`Id. at Fig. 7, 14:24–25, 17:16–17. As shown in Figure 7, above, 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.
`According to the ’815 patent, in response to a calling subscriber
`initiating a call, the routing controller:
`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
`call[,] and produc[es] a routing message identifying an address
`
`3
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`AT&T, Exh. 1008, p. 3
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`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, shown below, 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 above
`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
`
`4
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`AT&T, Exh. 1008, p. 4
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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.
`
`5
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`AT&T, Exh. 1008, p. 5
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`D. Asserted Grounds of Unpatentability
`Petitioner contends that claims 1, 7, 27, 28, 34, 54, 72–74, 92, 93, and
`111 of the ’815 patent are unpatentable based on the following specific
`grounds (Pet. 5, 12–59):
`
`References
`Chu ’6841 and
`Chu ’3662
`Chu ’684 and
`Chen3
`
`Basis
`
`35 U.S.C. § 103(a)
`
`35 U.S.C. § 103(a)
`
`Challenged Claims
`1, 7, 27, 28, 34, 54, 72–74,
`92, 93, and 111
`1, 7, 27, 28, 34, 54, 72–74,
`92, 93, and 111
`
`In its analysis, Petitioner relies on the declaration testimony of Dr. Henry H.
`Houh (Ex. 1006). See, e.g., Pet. 19, 22, 27–30, 32, 36, 40–41, 48–51, 53,
`60–61.
`
`II. DISCUSSION
`
`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
`
`
`1 U.S. Patent No. 7,486,684 B2, filed Sept. 30, 2003 (Ex. 1003, “Chu ’684”).
`2 U.S. Patent No. 8,036,366 B2, filed Aug. 4, 2006 (Ex. 1004, “Chu ’366”).
`3 U.S. Patent Application Publication No. 2007/0064919 A1, filed Sept. 14,
`2005 (Ex. 1005, “Chen”).
`
`6
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`AT&T, Exh. 1008, p. 6
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`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).
`Petitioner proposes constructions for “username” and various means-
`plus-function limitations. Pet. 6–11; see 37 C.F.R. § 42.104(b)(3) (requiring
`a petition to set forth, “[w]here the claim to be construed contains a means-
`plus-function or step-plus-function limitation as permitted under 35 U.S.C.
`112(f), . . . the specific portions of the specification that describe the
`structure, material, or acts corresponding to each claimed function”). Patent
`Owner does not expressly propose any claim constructions. For purposes of
`this decision, we determine that the means-plus-function limitations require
`only identification of corresponding structure,4 as set forth below, and no
`other terms require express construction.
`
`1. “receiving means” (claim 28)
`Claim 28 recites “receiving means for receiving a caller identifier and
`a callee identifier, in response to initiation of a call by a calling subscriber.”
`Petitioner proposes that the corresponding structure is I/O port 208. Pet. 7.
`Patent Owner does not challenge Petitioner’s contention that this limitation
`is governed by 35 U.S.C. § 112 ¶ 6 or Petitioner’s identification of
`corresponding structure.
`
`
`4 A means-plus-function limitation is construed to cover the corresponding
`structure described in the specification and equivalents thereof. 35 U.S.C.
`§ 112 ¶ 6.
`
`7
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`AT&T, Exh. 1008, p. 7
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`Based on the current record, we determine that this limitation is
`governed by section 112, paragraph 6. See Williamson v. Citrix Online,
`LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc) (“[T]he use of the
`word ‘means’ in a claim element creates a rebuttable presumption that § 112,
`para. 6 applies.”). We also determine, based on the current record, that the
`corresponding structure is I/O port 208. See Ex. 1001, 17:26–37.
`
`2. “means for locating” (claim 28) and
`“means for accessing” (claim 93)
`Claim 28 recites “means for locating a caller dialing profile
`comprising a username associated with the caller and a plurality of calling
`attributes associated with the caller.” Claim 93 similarly recites “means for
`accessing a database of caller dialing profiles wherein each dialing profile
`associates a plurality of calling attributes with a respective subscriber, to
`locate a dialing profile associated with the caller, in response to initiation by
`a calling subscriber.” Petitioner proposes that the corresponding structure
`for each of these limitations is RC processor circuit 200 programmed to
`implement the algorithm illustrated in cell 254 of Figure 8A. Pet. 8 (citing
`Ex. 1001, 19:30–37, Figs. 7, 8A). Patent Owner does not challenge
`Petitioner’s contention that these limitations are governed by 35 U.S.C.
`§ 112 ¶ 6 or Petitioner’s identification of corresponding structure.
`Based on the current record, we determine that the “means for
`locating” and “means for accessing” limitations are governed by section 112,
`paragraph 6. See Williamson, 792 F.3d at 1348.
`In applying section 112, paragraph 6, structure disclosed in the
`specification “is ‘corresponding’ structure only if the specification or
`prosecution history clearly links or associates that structure to the function
`
`8
`
`AT&T, Exh. 1008, p. 8
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`recited in the claim.” B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419,
`1424 (Fed. Cir. 1997). If “the disclosed structure is a computer, or
`microprocessor, programmed to carry out an algorithm, the disclosed
`structure is not the general purpose computer, but rather the special purpose
`computer programmed to perform the disclosed algorithm.” WMS Gaming
`v. Int’l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999).
`Based on the current record, we determine that the corresponding
`structure for each of “means for locating” and “means for accessing” is: RC
`processor circuit 200 programmed to implement the algorithm illustrated in
`block 254 of Figure 8A. See Ex. 1001, 10:62–63 (“FIGS. 8A-8D is a
`flowchart of [an] RC request message handler executed by the RC processor
`circuit shown in FIG. 7.”), 17:52–57, Figs. 7, 8A block 254 (“Use caller
`field to get dialing profile for caller from database”).
`
`3. “means for determining” (claim 28)
`Claim 28 recites “means for determining a match when at least one of
`said calling attributes matches at least a portion of said callee identifier.”
`Petitioner groups this limitation with the “means for classifying” limitations
`of claim 28 and proposes that the corresponding structure for all three
`limitations is processor 202 programmed to implement one or more branches
`of the algorithm illustrated in Figure 8B. Pet. 8 (citing Ex. 1001, 19:50–
`20:25, Figs. 7, 8B). Patent Owner does not challenge Petitioner’s contention
`that the “means for determining” limitation is governed by 35 U.S.C. § 112
`¶ 6 or Petitioner’s identification of corresponding structure.
`Based on the current record, we determine that the “means for
`determining” limitation is governed by section 112, paragraph 6 and that its
`corresponding structure is: processor 202 programmed to implement one or
`
`9
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`AT&T, Exh. 1008, p. 9
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`more of the algorithms illustrated in blocks 257, 380, 382, 390, and 396 of
`Figure 8B. See Ex. 1001, 10:62–63, 19:50–55 (“[T]he processor . . . is
`directed to a first block 257 that causes it to determine whether a digit
`pattern of the callee identifier . . . includes a pattern that matches the
`contents of the international dialing digits (IDD) field 264 in the caller
`profile shown in FIG. 10.”), 21:17–23 (“[B]lock 380 directs the processor
`(202) to determine whether or not the callee identifier begins with the same
`national dial digit code as assigned to the caller. To do this, the processor
`(202) is directed to refer to the retrieved caller dialing profile as shown in
`FIG. 10.”), 21:27–31 (“Block 382 directs the processor . . . to examine the
`callee identifier to determine whether or not the digits following the NDD
`digit identify an area code that is the same as any of the area codes identified
`in the local area code field 267 of the caller dialing profile 276 shown in
`FIG. 10.”), 21:46–53 (“. . . The processor (202) determines whether or not
`the first few digits of the callee identifier identify an area code
`corresponding to the local area code field 267 of the retrieved caller dialing
`profile.”), 21:64–22:4, Figs. 7, 8B.
`
`4. “means for classifying the call as a private network call” and
`“means for classifying the call as a public network call” (claim 28)
`Claim 28 recites “means for classifying the call as a public network
`call when said match meets public network classification criteria” and
`“means for classifying the call as a private network call when said match
`meets private network classification criteria.” Petitioner groups these
`limitations with the “means for determining” limitation of claim 28 and
`proposes that the corresponding structure for all three limitations is
`processor 202 programmed to implement one or more branches of the
`
`10
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`AT&T, Exh. 1008, p. 10
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`algorithm illustrated in Figure 8B. Pet. 8 (citing Ex. 1001, 19:50–20:25,
`Figs. 7, 8B). Patent Owner does not challenge Petitioner’s contention that
`these limitations are governed by 35 U.S.C. § 112 ¶ 6 or Petitioner’s
`identification of corresponding structure.
`Based on the current record, we determine that the “means for
`classifying” limitations of claim 28 are governed by section 112, paragraph
`6. We also determine that the corresponding structure of “means for
`classifying the call as a public network call when said match meets public
`network classification criteria” is processor 202 programmed to implement
`one or more branches of the algorithm illustrated in Figure 8B that leads to
`the end of block 410 and that the corresponding structure of “means for
`classifying the call as a private network call when said match meets private
`network classification criteria” is processor 202 programmed to implement
`one or more branches of the algorithm illustrated in Figure 8B that leads to
`the end of block 406 or block 279. See Ex. 1001, 22:48–51 (“Effectively,
`therefore blocks 257, 380, 390, 396 and 402 establish call classification
`criteria for classifying the call as a public network call or a private network
`call.”); 10:62–63, 17:38–44, 19:50–20:25, 21:17–22:60, Figs. 7, 8B.
`
`5. “means for producing a private network routing message” (claim 28)
`Claim 28 recites “means for producing a private network routing
`message for receipt by a call controller, when the call is classified as a
`private network call, said private network routing message identifying an
`address, on the private network, associated with the callee.” Petitioner states
`that Figures 8A, 8C, and 8D “detail, among other functions, algorithms
`which produce network routing messages.” Pet. 9. Petitioner proposes that
`the corresponding structure for this limitation is processor 202 of RC
`
`11
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`AT&T, Exh. 1008, p. 11
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`processor circuit 200, programmed to implement the algorithm illustrated in
`cell 350 of Figure 8A or cell 644 of Figure 8C. Id. Patent Owner does not
`challenge Petitioner’s contention that this limitation is governed by 35
`U.S.C. § 112 ¶ 6 or Petitioner’s identification of corresponding structure.
`Based on the current record, we determine that this limitation is
`governed by section 112, paragraph 6, and that the corresponding structure
`is: processor 202 of RC processor circuit 200, programmed to implement
`the algorithm illustrated in block 350 of Figure 8A or block 644 of Figure
`8C. See Ex. 1001, 20:27–48, 21:13–16, 26:37–45, Figs. 7, 8A, 8C, 16, 32.
`
`6. “means for producing a public network routing message” (claim 28)
`Claim 28 recites “means for producing a public network routing
`message for receipt by the call controller, when the call is classified as a
`public network call, said public network routing message identifying a
`gateway to the public network.” Petitioner states that Figures 8A, 8C, and
`8D “detail, among other functions, algorithms which produce network
`routing messages.” Pet. 9. Petitioner adds that “because [Figure] 8D and its
`corresponding description in the specification do not illustrate the basic
`process of generating a public network routing message identifying a
`gateway, Petitioner has identified the claimed function as the corresponding
`algorithm.” Id. Specifically, Petitioner proposes that the corresponding
`structure for this limitation is processor 202 of RC processor circuit 200,
`programmed to implement the claimed function of “producing a public
`network routing message.” Id. Patent Owner does not challenge Petitioner’s
`contention that this limitation is governed by 35 U.S.C. § 112 ¶ 6 or
`Petitioner’s contention regarding the corresponding structure.
`
`12
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`AT&T, Exh. 1008, p. 12
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`Based on the current record, we determine that this limitation is
`governed by section 112, paragraph 6 and that the corresponding structure
`is: processor 202 of RC processor circuit 200, programmed to implement
`the algorithm illustrated in Figure 8D. See Ex. 1001, 23:59–24:3
`(“Referring to FIG. 21, a data structure for a supplier list record is shown. . .
`. . [T]he specific route identifier field 546 holds an IP address of a gateway
`operated by the supplier indicated by the supplier ID field 540.”), 24:54–59
`(“[R]eferring to FIG. 25, the routing message buffer holds a routing message
`identifying a plurality of different suppliers able to provide gateways to the
`public telephone network (i.e. specific routes) to establish at least part of a
`communication link through which the caller may contact the callee.”),
`24:65–67 (“Referring back to FIG. 8D, block 568 directs the processor 202
`of FIG. 7 to send the routing message shown in FIG. 25 to the call controller
`14 in FIG. 1.”), 24:43–67, Figs. 8D, 21–24, 25 (showing IP addresses of
`gateways).
`
`7. “means for producing a private network routing message” (claim 93)
`Claim 93 recites “means for producing a private network routing
`message for receipt by a call controller, said private network routing
`message identifying an address, on a private network, through which the call
`is to be routed, when at least one of said calling attributes and at least a
`portion of a callee identifier associated with the callee match and when the
`match meets a private network classification criterion, the address being
`associated with the callee.” Petitioner notes that this limitation of claim 93
`combines functions recited in the means for determining, means for
`classifying, and means for producing of claim 28, and proposes that the
`corresponding structure for this limitation is the structure identified in
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`13
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`AT&T, Exh. 1008, p. 13
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`connection with those claim 28 limitations. Pet. 10. Patent Owner does not
`challenge Petitioner’s contention that the “means for producing a private
`network routing message” limitation of claim 93 is governed by 35 U.S.C.
`§ 112 ¶ 6 or Petitioner’s identification of corresponding structure.
`Based on the current record, we determine that this limitation is
`governed by section 112, paragraph 6, and that the corresponding structure
`is: processor 202 programmed to (i) implement one or more branches of the
`algorithm illustrated Figure 8B that leads to the end of block 406 or block
`279, and (ii) implement the algorithm illustrated in block 350 of Figure 8A
`or block 644 of Figure 8C. See Ex. 1001, 10:62–63, 17:38–44, 19:50–20:48,
`21:13–22:60, 26:37–45, Figs. 7, 8A, 8B, 8C, 16, 32.
`
`8. “means for producing a public network routing message” (claim 93)
`Claim 93 recites “means for producing a public network routing
`message for receipt by a call controller, said public network routing message
`identifying a gateway to a public network when at least one of said calling
`attributes and said at least said portion of said callee identifier associated
`with the callee match and when the match meets a public network
`classification criterion.” Petitioner notes that this limitation of claim 93
`combines functions recited in the means for determining, means for
`classifying, and means for producing of claim 28, and proposes that the
`corresponding structure for this limitation is the structure identified in
`connected with those claim 28 limitations. Pet. 10. Patent Owner does not
`challenge Petitioner’s contention that the “means for producing a public
`network routing message” limitation of claim 93 is governed by 35 U.S.C.
`§ 112 ¶ 6 or Petitioner’s identification of corresponding structure.
`
`14
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`AT&T, Exh. 1008, p. 14
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`Based on the current record, we determine that this limitation is
`governed by section 112, paragraph 6, and that the corresponding structure
`is: processor 202 programmed to (i) implement one or more branches of the
`algorithm illustrated Figure 8B that leads to the end of block 410, and (ii)
`implement the algorithm illustrated in Figure 8D. See Ex. 1001, 10:62–63,
`17:38–44, 19:50–20:25, 21:17–22:60, 23:59–24:3, 24:43–67, Figs. 7, 8B,
`8D, 21–25.
`
`9. “formatting means” (claim 34)
`Claim 34 recites “formatting means for formatting said callee
`identifier into a pre-defined digit format to produce a re-formatted callee
`identifier.” Petitioner proposes that the corresponding structure for this
`limitation is processor 202 of RC processor circuit 200 programmed to
`implement one or more branches of the algorithm illustrated in Figure 8B.
`Pet. 10. Patent Owner does not challenge Petitioner’s contention that this
`limitation is governed by 35 U.S.C. § 112 ¶ 6 or Petitioner’s identification of
`corresponding structure.
`Based on the current record, we determine that this limitation is
`governed by section 112, paragraph 6, and that the corresponding structure
`is: processor 202 of RC processor circuit 200 programmed to implement the
`algorithm illustrated in block 261, block 388, block 394, or block 400 of
`Figure 8B. See Ex. 1001, 19:55–63, 21:33–43, 21:54–61, 22:4–13, Figs. 7,
`8B.
`
`10. “means for causing” (claim 111)
`Claim 111 recites “means for causing the private network routing
`message or the public network routing message to be communicated to a call
`controller to effect routing of the call.” Petitioner proposes that the
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`15
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`corresponding structure for this limitation is processor 202 of RC processor
`circuit 200, programmed to perform the algorithm illustrated in cell 381 of
`Figure 8A, cell 646 of Figure 8C, and cell 568 of Figure 8D. Pet. 11. Patent
`Owner does not challenge Petitioner’s contention that this limitation is
`governed by 35 U.S.C. § 112 ¶ 6 or Petitioner’s identification of
`corresponding structure.
`Based on the current record, we determine that this limitation is
`governed by section 112, paragraph 6, and that the corresponding structure
`is: processor 202 of RC processor circuit 200, programmed to perform the
`algorithm illustrated in block 381 of Figure 8A, block 646 of Figure 8C, and
`block 568 of Figure 8D. See Ex. 1001, 20:27–48, 24:43–67, 26:40–41, Figs.
`7, 8A, 8C, 8D.
`
`B. Asserted Obviousness Over Chu ’684 and Chu ’366
`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 Chu ’684 and Chu ’366. Pet. 5, 12–36. Relying in part on the
`testimony of Dr. Henry H. Houh, Petitioner explains how the references
`allegedly teach or suggest the claim limitations and provides purported
`reasoning for combining the teachings of the references. Id. at 12–36.
`
`1. Summary of Chu ’684
`Chu ’684 discloses a communications system for managing calls in an
`Internet Protocol (IP) Virtual Private Network (VPN) and calls to the public
`switched telephone network (PSTN). Ex. 1003, Title, Abstract, 2:51–3:3,
`4:13–14. Figure 2 of Chu ’684, shown below, depicts a portion of the
`communications system:
`
`16
`
`AT&T, Exh. 1008, p. 16
`
`
`
`IPR2016-01201
`Patent 8,542,815 B2
`
`
`
`Id. at 3:14–15. As shown above in Figure 2, communications system 200
`includes customer premises 105 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 205 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. 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.
`
`17
`
`AT&T, Exh. 1008, p. 17
`
`
`
`IPR2016-01201
`Patent 8,542,815 B2
`
`Chu ’684’s VoIP network carries both on-net (within the same VoIP
`VPN) and off-net (to PSTN) calls. 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
`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. According to Chu ’684, 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.
`
`18
`
`AT&T, Exh. 1008, p. 18
`
`
`
`IPR2016-01201
`Patent 8,542,815 B2
`
`2. 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 that the International Telecommunication Union’s E.164 protocol
`provides a uniform means for identifying any telephone number in the world
`to any telephony user in the world. Id. at 1:18–20. Chu ’366 states that an
`E.164-formatted number has at most 15 digits, and contains an E.164 prefix
`(typically a + sign), a country 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.
`
`3. Analysis
`Petitioner generally contends that Chu ’684 teaches call set up
`procedures in which a call processor analyzes attributes of the caller (e.g.,
`
`19
`
`AT&T, Exh. 1008, p. 19
`
`
`
`IPR2016-01201
`Patent 8,542,815 B2
`
`the caller’s dial plan) and information identifying the callee (e.g., dialed
`digits) to determine whether the call should be routed to a destination on the
`private packet network or the public PSTN, and that Chu ’366 teaches using
`caller attributes such as country code and area code to reformat the dialed
`digits into a standard format before determining whether the call is public or
`private. Pet. 13–16. Petitioner contends that it would have been obvious to
`a skilled artisan to modify the system described in Chu ’684 with the
`specific dialed digit reformatting teachings of Chu ’366 and that a skilled
`artisan would have recognized that allowing users to place calls as if they
`were dialing from a standard PSTN phone would be desirable, creating
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