Petition for Inter Partes Review of Patent No. 8,542,815
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`
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`––––––––––
`
`AT&T Services, Inc.
`Petitioner
`v.
`
`Digifonica (International) Limited
`Patent Owner
`
`––––––––––
`
`Case IPR (To Be Assigned)
`Patent No. 8,542,815
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`––––––––––
`
`PETITION FOR INTER PARTES REVIEW OF
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`U.S. PATENT NO. 8,542,815
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` UNDER 35 U.S.C. §§311-319, AND 37 C.F.R. §42.100 ET SEQ.
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`
`
`Mail Stop: Patent Board
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
`
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––
`
`AT&T Services, Inc.
`Petitioner
`v.
`
`Digifonica (International) Limited
`Patent Owner
`
`––––––––––
`
`Case IPR (To Be Assigned)
`Patent No. 8,542,815
`
`––––––––––
`
`PETITION FOR INTER PARTES REVIEW OF
`
`U.S. PATENT NO. 8,542,815
`
` UNDER 35 U.S.C. §§311-319, AND 37 C.F.R. §42.100 ET SEQ.
`
`
`
`Mail Stop: Patent Board
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`Petition for Inter Partes Review of Patent No. 8,542,815
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`TABLE OF CONTENTS
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`I.
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`Mandatory Notices .................................................................................... 1
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`A.
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`B.
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`C.
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`D.
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`Real parties in Interest under 37 C.F.R. § 42.8(b)(1) .................... 1
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`Related Matters under 37 C.F.R. § 42.8(b)(2) ............................... 2
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`Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3) ............ 3
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`Service Information under 37 C.F.R. §42.8(b)(4) ......................... 3
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`II.
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`Payment of Fees ........................................................................................ 4
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`III. Requirements for IPR ................................................................................ 4
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`A.
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`B.
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`C.
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`Grounds for Standing ..................................................................... 4
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`Identification of Challenge and Statement of Precise Relief
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`Requested ....................................................................................... 4
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`IPR Threshold ................................................................................ 5
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`IV.
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`ʼ815 Patent Overview ................................................................................ 5
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`A.
`
`B.
`
`C.
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`Technical Background ................................................................... 5
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`Purported Invention ....................................................................... 5
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`Prosecution History ....................................................................... 7
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`V.
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`Prior Art ..................................................................................................... 7
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`A.
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`B.
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`Nadeau’s system routes VoIP calls based on a caller profile. ....... 7
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`Kelly and Vaziri also teach call routing systems. ........................ 10
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`-i-
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`Petition for Inter Partes Review of Patent No. 8,542,815
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`VI. Statements on the Art .............................................................................. 10
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`A.
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`B.
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`Level of ordinary skill in the art .................................................. 10
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`The references are analogous art ................................................. 10
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`VII. Claim Construction ................................................................................. 10
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`A.
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`B.
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`C.
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`D.
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`E.
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`F.
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`G.
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`H.
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`I.
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`J.
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`Claim 28: “receiving means” ....................................................... 11
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`Claim 28: “means for locating” and Claim 93: “means for
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`accessing” .................................................................................... 11
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`Claim 28: “means for determining” ............................................. 11
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`Claim 28: “means for classifying the call as a public network
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`call” .............................................................................................. 11
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`Claim 28: “means for classifying the call as a private network
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`call” .............................................................................................. 12
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`Claim 28: “means for producing a private network routing
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`message” ...................................................................................... 12
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`Claim 28: “means for producing a public network routing
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`message” ...................................................................................... 13
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`Claim 34: “formatting means” ..................................................... 14
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`Claim 93: “means for producing a private network routing
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`message” ...................................................................................... 14
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`Claim 93: “means for producing a public network routing
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`-ii-
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`Petition for Inter Partes Review of Patent No. 8,542,815
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`message” ...................................................................................... 15
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`K.
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`Claim 111: “means for causing” .................................................. 16
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`VIII. The Challenged Claims Are Unpatentable. ............................................. 16
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`A.
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`B.
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`Claims 1, 7, 27, 54, 72–74, and 92 are obvious over Nadeau in
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`view of Kelly (Ground 1) ............................................................. 16
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`Claims 28, 34, 93, and 111 are obvious over Nadeau in view
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`of Kelly and Vaziri. (Ground 2) .................................................. 40
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`IX. Conclusion ............................................................................................... 76
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`-iii-
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`Petition for Inter Partes Review of Patent No. 8,542,815
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`PETITIONER’S LIST OF EXHIBITS
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`Ex.
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`Description
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`1001 U.S. Patent No. 8,542,815 (“the ’815 Patent”)
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`1002
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`Prosecution History of the ’815 Patent
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`1003 Declaration of James Bress in Support of Petition for Inter Partes Review
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`1004
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`Curriculum Vitae of James Bress
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`1005 U.S. Patent No. 6,240,449 (“Nadeau”)
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`1006 U.S. Patent No. 6,594,254 (“Kelly”)
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`1007 U.S. Patent No. 7,715,413 (“Vaziri”)
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`1008 Decision of Institution of Inter Partes Review, Case IPR2016-01201,
`Paper 6 (November 21, 2016)
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`1009
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`“Telecommunications Essentials,” by Lillian Goleniewski, copyright
`2002
`
`1010
`
`IETF RFC 791 (September 1981)
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`1011
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`ITU H.323 (July 2003)
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`1012
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`Telcordia SR-2275, Issue 4, October 2000
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`-iv-
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`Petition for Inter Partes Review of Patent No. 8,542,815
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`AT&T Services, Inc. (“Petitioner”) petitions for inter partes review of
`
`Claims 1, 7, 27–28, 34, 54, 72–74, 92–93, and 111 (the “Challenged Claims”) of
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`US Patent No. 8,542,815 (“the ’815 Patent”), assigned to Digifonica (International)
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`Limited (“Patent Owner”).
`
`I. MANDATORY NOTICES
`A. Real parties in Interest under 37 C.F.R. § 42.8(b)(1)
`The Petitioner is AT&T Services, Inc. AT&T Services, Inc. also identifies
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`AT&T Mobility LLC; AT&T Corp.; Southwestern Bell Telephone Company;
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`Pacific Bell Telephone Company; Illinois Bell Telephone Company; Indiana Bell
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`Telephone Company, Incorporated; Michigan Bell Telephone Company; Nevada
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`Bell Telephone Company; The Ohio Bell Telephone Company; Wisconsin Bell,
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`Inc.; and BellSouth Telecommunications, LLC as real parties in interest. Out of an
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`abundance of caution, AT&T Services, Inc. also identifies AT&T Inc. as a real
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`party in interest only for the purpose of this proceeding based on recent decisions
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`of the Patent Trial and Appeal Board, and only to the extent that Patent Owner
`
`contends that this separate legal entity should be named a real party in interest in
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`this IPR. AT&T Inc. is and always has been a holding company that is a legally
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`and factually distinct entity from its subsidiaries. Each of AT&T Inc.’s
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`subsidiaries, including AT&T Mobility LLC and AT&T Services, Inc., maintains
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`its own independent status, identity, and structure. AT&T Inc. does not provide
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`1
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`Petition for Inter Partes Review of Patent No. 8,542,815
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`any of the products and services at issue in the underlying patent infringement
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`lawsuit. Also, out of an abundance of caution, AT&T Services, Inc. identifies the
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`following companies as real parties in interest only for the purpose of this
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`proceeding based on recent decisions of the Patent Trial and Appeal Board, and
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`only to the extent that Patent Owner contends that each separate legal entity should
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`be named a real party in interest in this IPR: AT&T Teleholdings, Inc.; SBC
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`Telecom Inc.; SBC Long Distance, LLC; Bell South Mobile Data, Inc.; and SBC
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`Tower Holdings, LLC. Each of these entities maintains its own independent status,
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`identity, and structure.
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`B. Related Matters under 37 C.F.R. § 42.8(b)(2)
`Petitioner identifies the following related matters. In addition, Petitioner has
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`concurrently filed multiple inter partes review petitions challenging claims in
`
`9,179,005, which is related to the ‘815 Patent.
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`Case No.
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`Parties
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`2:16-CV-271 (D. Nev.)
`
`VOIP-PAL.COM, INC (Plaintiff)
`CELLCO
`PARTNERSHIP D/B/A VERIZON
`WIRELESS (Defendant)
`AT&T CORP. (Defendant)
`DOES I THROUGH X (Defendants)
`VOIP-PAL.COM, INC. (Plaintiff)
`APPLE INC. (Defendant)
`2:16-CV-2338 (D. Nev.) VOIP-PAL.COM, INC. (Plaintiff)
`TWITTER, INC. (Defendant)
`APPLE INC. (Petitioner)
`VOIP-PAL.COM, INC. (Patent Owner)
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`2:16-CV-260 (D. Nev.)
`
`IPR2016-01201
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`2
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`Petition for Inter Partes Review of Patent No. 8,542,815
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`IPR2016-01198
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`
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`APPLE INC. (Petitioner)
`VOIP-PAL.COM, INC. (Patent Owner)
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`C. Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3)
`
`LEAD COUNSEL
`Samir A. Bhavsar (Reg. No. 41,617)
`Baker Botts L.L.P.
`2001 Ross Avenue, #700
`Dallas, TX 75201
`Tel:214-953-6581
`Fax: 214-661-4581
`samir.bhavsar@bakerbotts.com
`
`BACK-UP COUNSEL
`Brian D. Johnston (Reg. No. 69,041)
`Baker Botts L.L.P.
`2001 Ross Avenue, #700
`Dallas, TX 75201
`Tel: 214-953-6629
`Fax: 214-661-4629
`brian.johnston@bakerbotts.com
`
`Charles Yeh (Reg. No. 63,440)
`Baker Botts L.L.P.
`2001 Ross Avenue, #700
`Dallas, TX 75201
`Tel: 214- 953-6792
`Fax: 214-661-4792
`charles.yeh@bakerbotts.com
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`Service Information under 37 C.F.R. §42.8(b)(4)
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`D.
`As identified in the Certificate of Service, a copy of this entire Petition,
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`including all Exhibits and a power of attorney, is being served by FEDERAL
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`EXPRESS, costs prepaid, to the address of the attorney or agent of record for the
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`ʼ815 Patent: Knobbe Martens Olson & Bear LLP, 2040 Main Street, Fourteenth
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`Floor, Irvine, CA 92614.
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`Petitioner may be served at lead counsel’s address provided above and
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`consents to e-mail service at the e-mail addresses provided above for Samir A.
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`Bhavsar, Brian D. Johnston, and Charles Yeh.
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`3
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`Petition for Inter Partes Review of Patent No. 8,542,815
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`II.
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`PAYMENT OF FEES
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`Petitioner concurrently submits fees of $23,000. Any additional fees due in
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`connection with this Petition may be charged to Deposit Account 02-0384.
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`III. REQUIREMENTS FOR IPR
`A. Grounds for Standing
`Petitioner certifies the ’815 Patent is eligible for IPR and that Petitioner is
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`not barred or estopped from requesting IPR challenging the patent claims on the
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`grounds identified herein.
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`B.
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`Identification of Challenge and Statement of Precise Relief
`Requested
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`Petitioner requests IPR under the following grounds:
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`Ground ’815 Patent Claims Obvious under pre-AIA 35 U.S.C. § 103
`1, 7, 27, 54, 72–74,
`Nadeau in view of Kelly
`1
`and 92
`Nadeau in view of Kelly and Vaziri
`2
`28, 34, 93, and 111
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`The grounds are explained in Section VIII of this Petition and are supported
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`by the Declaration of a technical expert, Mr. James Bress (EX1003). The
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`Challenged Claims are unpatentable and should be cancelled.
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`The grounds in this Petition are not redundant of the grounds set forth in the
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`Apple IPR. (See EX1008 at p. 6.) First, none of the references cited in this
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`Petition were cited in Apple’s petition. Second, each of the references cited in this
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`Petition qualifies as prior art under §102(b), whereas Apple’s references qualified
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`as prior art only under §102(e) and could therefore be sworn behind.
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`4
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`Petition for Inter Partes Review of Patent No. 8,542,815
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`IPR Threshold
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`C.
`IPR should be instituted because there is a reasonable likelihood that
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`Petitioner will prevail on at least one Challenged Claim. Each Challenged Claim
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`is obvious in view of the prior art under pre-AIA 35 U.S.C. § 103(a).
`
`IV.
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`ʼ815 PATENT OVERVIEW
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`A. Technical Background
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`The ʼ815 Patent claims priority to a provisional application filed on
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`November 2, 20016 and relates to routing voice-over-IP (“VoIP”) calls, which
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`were well-known at that time. (EX1001 at 1:11–46.) These calls could be routed
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`over circuit-switched networks like the public switched telephone network
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`(“PSTN”) or packet-switched networks like the Internet or private corporate
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`networks, depending on various criteria. (Id.)
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`Selecting the appropriate routing network was not a new problem. (EX1003
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`at ¶¶ 58–60.) Many telecommunications companies had already filed and
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`received patents addressing this problem. Notably, some of these patents
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`disclosed selecting the appropriate routing network based on a caller profile.
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`Purported Invention
`
`B.
`The ‘815 Patent’s purported invention is a system that performs two well-
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`known functions, as illustrated below: (1) determining the type of network to route
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`a VoIP call based on a caller profile; and (2) producing a routing message to route
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`5
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`Petition for Inter Partes Review of Patent No. 8,542,815
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`the call.
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`
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`First, a routing controller receives a call request. (EX1001 at 1:54–56.)
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`Second, the routing controller locates a caller profile that includes caller attributes.
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`(Id. at 2:1–7.) It then compares a callee identifier with these attributes to
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`determine a match. (Id. at 2:8–25.) It then classifies the call based on whether the
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`match meets public or private network classification criteria. (Id. at Abstract.)
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`Third, for a private network call, a private network routing message identifies an
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`address on the private network. (Id.) Fourth, for a public network call, a public
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`network routing message identifies a gateway to the public network. (Id.)
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`6
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`Petition for Inter Partes Review of Patent No. 8,542,815
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`However, classifying and routing a call over either a public or private network
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`based on a caller profile was known for years. (EX1003 at ¶¶ 177-195.)
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`Prosecution History
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`C.
`The ’815 Patent issued from U.S. Patent Application No. 12/513,147 (“the
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`’147 Application”). (EX1001.) All its claims were rejected in view of U.S. Patent
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`No. 6,798,767 to Alexander et al. (“Alexander”). (EX1002 at p. 542.)
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`The Applicant amended the claims in a Response dated 4/29/2013 and
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`argued that Alexander taught (1) a profile associated with a callee, not a caller (id.
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`at pp. 609–610) and (2) calling attributes associated with the callee, not the caller
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`(id. at p. 610–611). The Examiner allowed the claims on 7/16/2013. (Id. at p.
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`630.)
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`Therefore, according to the Applicant, the novelty involved using a caller
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`profile and caller attributes in the profile. However, the prior art presented in this
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`Petition establishes that routing based on caller profiles and caller attributes was
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`well-known. (EX1003 at ¶¶ 177-195.) Had the Examiner considered this prior
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`art, the ʼ815 Patent would not have issued. (Id.)
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`V.
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`PRIOR ART
`Nadeau, Kelly, and Vaziri each qualifies as prior art under 35 U.S.C.
`
`§102(b). The PTO has not considered them for the ʼ815 Patent.
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`A. Nadeau’s system routes VoIP calls based on a caller profile.
`U.S. Patent 6,240,449 (“Nadeau”) was filed on November 2, 1998 and
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`7
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`Petition for Inter Partes Review of Patent No. 8,542,815
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`issued on May 29, 2001. (EX1005.) Nadeau discloses routing VoIP calls over
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`either an IP network or the PSTN based on information in a caller’s profile.
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`A service logic controller (“SLC”), shown below, routes calls.
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`
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`The SLC stores a database of caller profiles. (Id. at 3:56–65.) Each caller
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`profile includes entries for individual called parties. (Id. at 9:18–23, 9:55–10:20.)
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`Each entry includes routing information that indicates whether a call to that called
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`party should be routed over an IP network or the PSTN. (Id. at 3:56–4:6, 9:66–
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`10:20.)
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`8
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`Petition for Inter Partes Review of Patent No. 8,542,815
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`ʼ815 Patent, Figure 1
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`Nadeau, Figure 1+2
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`When a caller initiates a VoIP call, it is forwarded to the SLC. (Id. at 6:66–
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`7:5, 12:42–47.) The SLC retrieves the caller profile from the database and locates
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`the callee’s entry in the profile. (Id. at 7:22–27, 12:48–52.) Based on the routing
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`information in the entry, the SLC determines whether the call should be routed
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`over an IP network or the PSTN. (Id. at 10:8–20, 11:27–31.) The SLC then
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`generates and sends routing instructions to an ACS Gateway and a detection point
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`(also referred to as a DPFE and an SSP (id. at 6:66–7:9, 11:43–46)) to route the
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`call over the IP network or to an IP-PSTN Gateway for routing over the PSTN (Id.
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`at 7:5–9, 7:22–23, 11:27–31, 12:59–61).
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`B.
`Kelly and Vaziri also teach call routing systems.
`U.S. Patent 6,594,254 (“Kelly”) was filed on August 14, 1997 and issued on
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`July 15, 2003. (EX1006.) U.S. Patent 7,715,413 (“Vaziri”) was filed on October
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`25, 2004 and published on April 28, 2005. (EX1007.) They disclose routing calls
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`over an IP network or the PSTN.
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`VI. STATEMENTS ON THE ART
`A. Level of ordinary skill in the art
`When the ’815 Patent was filed, a POSITA had at least a bachelor’s degree
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`in electrical engineering, or a related field, with at least 2–4 years of industry
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`experience in designing or developing packet-based and circuit-switched systems.
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`More or less industry experience or technical training may offset more or less
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`formal education or advanced degrees. (EX1003 at ¶ 55.)
`
`B.
`The references are analogous art
`Nadeau, Kelly, and Vaziri are from the same field as the Challenged Claims
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`(telecommunication systems). These references relate at least to VOIP and call
`
`routing, which are pertinent to the problems faced by the ’815 Patent. (EX1003 at
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`¶ 178.)
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`VII. CLAIM CONSTRUCTION
`Because the ’815 Patent will not expire during these proceedings, the Board
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`should apply the broadest reasonable interpretation (“BRI”) in light of the
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`specification pursuant to 37 C.F.R. § 42.100(b). Each term identified below is
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`10
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`Petition for Inter Partes Review of Patent No. 8,542,815
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`governed by 35 U.S.C. §112, ¶ 6. Petitioner offers constructions under the BRI
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`standard, and identifies corresponding structure only for this Petition. Petitioner
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`interprets all other claim terms in the Challenged Claims in accordance with their
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`plain and ordinary meaning under the BRI for purposes of this proceeding.
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`Petitioner reserves the right to advance different arguments in district court
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`litigation.
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`A. Claim 28: “receiving means”
`The corresponding structure is an I/O port. (EX1001 at 17:26–37, Figure 7.)
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`B. Claim 28: “means for locating” and Claim 93: “means for
`accessing”
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`The corresponding structure is a processor programmed to implement the
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`algorithm illustrated in block 254 of Figure 8A. (EX1001 at 17:52–57, Figures 7,
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`8A.)
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`C. Claim 28: “means for determining”
`The corresponding structure is a processor programmed to implement one or
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`more of the algorithms illustrated in blocks 257, 380, 382, 390, and 396 of Figure
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`8B. (EX1001 at Figure 8B, 19:50–55, 21:19–23, 21:27–31, 21:46–50, 21:65–
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`22:4.)
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`D. Claim 28: “means for classifying the call as a public network call”
`The corresponding structure is a processor programmed to implement one or
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`more branches of the algorithm illustrated in Figure 8B that leads to the end of
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`11
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`Petition for Inter Partes Review of Patent No. 8,542,815
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`block 408. (EX1001 at 10:62–63; 17:38–44; 19:50–20:25; 21:17–22:60; 22:48–
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`51; Figures 7, 8B.) This proposed construction differs from the Board’s in that it
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`stops at block 408, and excludes block 410. (EX1008 at p. 11.) The specification
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`teaches that the call classification algorithm concludes at block 408, and describes
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`performing block 410 thereafter. (EX1001 at 22:66-23:8 (“…the call is classified
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`as a public network call by directing the processor 202 to block 408 of FIG.8B …
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`Then, block 410 of FIG.8B directs the processor (202) …”).)
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`E. Claim 28: “means for classifying the call as a private network
`call”
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`The corresponding structure is a processor programmed to implement one or
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`more braches of the algorithm illustrated in Figure 8B that leads to the end of block
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`406 or 279. (EX1001 at 10:62–63; 17:38–44; 19:50–20:25; 21:17–22:60; 22:48–
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`51; Figures 7, 8B.)
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`F. Claim 28: “means for producing a private network routing
`message”
`The corresponding structure is a processor programmed to (i) produce a
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`routing message identifying an address on the private network with which the
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`callee identified by the contents of the callee ID buffer is associated OR (ii)
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`implement the algorithm illustrated in block 644 of Figure 8C. (EX1001 at 20:27–
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`43, 26:37–45.)
`
`The italicized portion of this proposed construction differs from the Board’s
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`12
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`Petition for Inter Partes Review of Patent No. 8,542,815
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`proposal in the Apple IPR in that the Board’s construction instead read:
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`“implement the algorithm illustrated in block 350 of Figure 8A or block 644 of
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`Figure 8C.” (EX1008 at p. 12.) However, under the BRI, at least part of block
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`350 is unnecessary for performing the “producing” function. The “producing”
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`function requires that the routing message need only contain “an address, on the
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`private network, associated with the callee.” (EX1001 at 39:7-8). In contrast,
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`block 350 includes the following elements that are unnecessary to “producing” the
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`claimed “routing message”: “contents of caller, callee from RC request” and
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`“TTL=99999.” Moreover, the specification clarifies that any “node on the private
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`network with which the callee is associated” will suffice in place of a “supernode.”
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`(Id. at 20:46-48.) Additionally, the specification teaches the setting of the TTL as
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`separate from the “producing” of the routing message, and treats the TTL=99999
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`as simply an “example.” (Id. at 20:39-43 (“to produce a routing message … and to
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`set a time to live”).)
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`G. Claim 28: “means for producing a public network routing
`message”
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`The corresponding structure is a processor programmed to implement the
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`algorithm in block 563 of Fig.8D. (EX1001 at 24:29–42, Figure 8D.) This
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`construction includes only block 563 of Fig.8D whereas the Board’s proposed
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`construction includes the entirety of Fig.8D. (EX1008 at p. 13.) Fig.8D includes
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`numerous extraneous steps that are not necessary for performing the claimed
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`“producing” function. The function requires that the routing message produced
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`need only contain an identification of “a gateway to the public network.” (EX1001
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`at 39:11-12.) The specification teaches that Fig.8D shows a process for producing
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`a routing message “of the type shown in FIG. 15.” (EX1001 at 24:18-20.) Some
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`portions of the Fig.15 message are not required by the recited function. Therefore,
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`those blocks of Fig.8D related to non-required portions of Fig.15 should be
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`excluded from the corresponding structure. Only item 360 of Fig.15, “Route –
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`Domain name or IP address” is required by the recited function because it is where
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`the “route identifier field” that “holds an IP address of a gateway” is stored.
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`(EX1001 at Fig.15, 24:1-3.) Specifically, block 563 of Fig.8D (“Load route field
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`with route identifier”) loads the “route identifier field” into the “route field” of the
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`routing message (EX1001 at Fig. 8D, 24:32–36.) The remaining blocks in Fig.8D
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`relate to other unnecessary portions of the routing message of Fig.15.
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`H. Claim 34: “formatting means”
`The corresponding structure is a processor programmed to implement the
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`algorithm illustrated in blocks 261, 388, 394, or 400 of Figure 8B. (EX1001 at
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`19:55–63, 21:33–43, 21:54–61, 22:4–13, Figure 8B.)
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`I.
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`Claim 93: “means for producing a private network routing
`message”
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`The corresponding structure is a processor programmed to (i) implement one
`
`or more branches of the algorithm illustrated in Figure 8B that leads to the end of
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`block 406 or block 279 (EX1001 at 10:62–63; 17:38–44; 19:50–20:25; 21:17–
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`22:60; Figures 7, 8B) and (ii) produce a routing message identifying an address on
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`the private network with which the callee identified by the contents of the callee ID
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`buffer is associated OR implement the algorithm illustrated in block 644 of Figure
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`8C (Id. at 20:27–43, 26:37–45, Figure 8D).
`
`The italicized portion of this proposed construction differs from the Board’s
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`proposal in the Apple IPR in that the Board’s construction instead read:
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`“implement the algorithm illustrated in block 350 of Figure 8A or block 644 of
`
`Figure 8C.” (EX1008 at p. 14.) However, under the BRI, at least part of block
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`350 is unnecessary for performing the “producing” function for the same reasons
`
`discussed above for Claim 28. See Section VII.F.
`
`J.
`
`Claim 93: “means for producing a public network routing
`message”
`
`The corresponding structure is a processor programmed to (i) implement one
`
`or more branches of the algorithm illustrated in Figure 8B that leads to the end of
`
`block 408 (EX1001 at 10:62–63; 17:38–44; 19:50–20:25; 21:17–22:60; Figures 7,
`
`8B) and (ii) implement the algorithm in block 563 of Figure 8D. (Id. at 24:29–42,
`
`Figure 8D).
`
`This proposed construction differs from the Board’s proposed construction
`
`in two respects. First, the algorithm in prong (i) ends at block 408, instead of block
`
`410, for the same reasons discussed above for Claim 28. See Section VII.D.
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`Second, the algorithm in prong (ii) includes only Block 563 of Fig.8D for the same
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`reasons discussed above for Claim 28, whereas the Board’s proposed construction
`
`includes the entirety of Fig.8D. See Section VII.G.
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`K. Claim 111: “means for causing”
`The corresponding structure is a processor programmed to implement the
`
`algorithm illustrated in block 381 of Figure 8A, block 646 of Figure 8C, and block
`
`568 of Figure 8D. (EX1001 at 20:27–48, 24:43–67, 26:40–41, Figures 8A, 8C,
`
`8D.)
`
`VIII. THE CHALLENGED CLAIMS ARE UNPATENTABLE.
`A. Claims 1, 7, 27, 54, 72–74, and 92 are obvious over Nadeau in view
`of Kelly (Ground 1)
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`Kelly and Nadeau are from the same field of endeavor because they both are
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`from the field of telecommunications systems and address challenges arising from
`
`making VoIP calls. (EX1005 at 1:53–2:9; EX1006 at 2:42–3:19.) Additionally,
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`they are concerned with reducing the cost for making VoIP calls. (EX1005 at 2:3–
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`6, 6:30, 10:11–16; EX1006 at 13:46–57.) A POSITA would have considered Kelly
`
`when implementing or improving Nadeau. (EX1003 at ¶ 199.)
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`Nadeau teaches that if the SLC determines that a VoIP call should be routed
`
`over the PSTN, then the SLC produces routing instructions that instruct other
`
`network elements to route the call to an IP-PSTN Gateway. (EX1005 at 7:5–9,
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`7:22–23, 8:39–40, 11:27–28.) Nadeau teaches that the SLC may determine to
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`route the call over the PSTN based on least cost routing. (Id. at 10:11–16.) The
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`system in Nadeau, however, includes only one gateway to route the call to the
`
`PSTN, so the cost for PSTN routing is controlled by that gateway alone. (Id. at
`
`Figure 1.)
`
`Kelly recognizes that costs may be further reduced by selecting a gateway
`
`that provides lower cost routing compared to other gateways. (EX1006 at 13:39–
`
`57.) Kelly teaches a gateway selection process that (1) transforms a dialed
`
`telephone number (e.g., 1-561-997-4001) into a hybrid telephone number domain
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`name (e.g., 4001-997561-1.carrier.com) (Id. at 11:54–12:11); (2) uses successive
`
`portions of the hybrid telephone number domain name to retrieve references to
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`name servers that contain an IP address of a carrier gateway (Id. at 12:32–57); and
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`(3) produces a call packet, analogous to routing instructions, containing the hybrid
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`telephone number domain name and the IP address of the carrier gateway to effect
`
`the call (Id. at 13:21–26).
`
`A POSITA would have been motivated to modify the SLC of Nadeau to
`
`perform the gateway selection process taught in Kelly to further reduce the cost of
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`routing over the PSTN as recognized by Kelly. (EX1003 at ¶ 202.) Nadeau
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`explains that it would be desirable to find a least cost routing path for a VoIP call
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`to avoid “paying unnecessary toll charges.” (EX1005 at 2:3–6; see also id. at 6:30,
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`10:11–16.) Kelly teaches a way to improve the cost savings desired by Nadeau:
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`select a gateway that “minimize[s] the toll charges” by performing the gateway
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`selection process taught in Kelly. (EX1006 at 13:46–57.)
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`A POSITA could have easily made this modification because it is merely a
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`combination of prior art elements according to known methods to yield predictable
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`results. (EX1003 at ¶ 203.) Kelly explains that performing the gateway selection
`
`process minimizes toll charges (EX1006 at 13:46–49)—the same result desired by
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`Nadeau (EX1005 at 2:3–6; see also id. at 6:30, 10:11–16). Modifying the SLC of
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`Nadeau would simply involve the known technique of programming the SLC to
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`perform the gateway selection process taught by Kelly. (EX1003 at ¶ 203.) A
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`POSITA could have made this modification with a reasonable expectation of
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`success without undue experimentation. (Id.)
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`1.
`
`Claim 1
`a.
`
`Preamble
`
`Nadeau-Kelly
`“[T]he ACS service allows the establishment of a connection
`from a caller (subscriber) to a called party, transparently
`using whichever network (PSTN/Mobile, IP) is best, based on
`conditions specified by the service subscriber and external
`conditions.” (EX1005 at 6:15–23.)
`
`“[T]he invention provides a service logic controller for the
`management of communication sessions.” (Id. at 2:49–51.)
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`“The primary goal of the SLC 122 is to provide the DPFEs with
`call processing instructions.” (Id. at 7:22–23.)
`
`to
`
`Limitation
`A process for
`operating a call
`routing
`controller
`facilitate
`communication
`between callers
`and callees in a
`system
`comprising
`plurality
`nodes
`which
`
`a
`of
`with
`callers
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`and callees are
`associated
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`“An ACS subscriber will originate a call through the ACS
`service by using...a phone in the PSTN network or...a
`multimedia PC.” (Id. at 6:59–65.)
`
`(See also, id. at 7:41–44 (referencing “many different nodes in
`the IP telephony network”); 8:42–50.)
`
`“Finally, examples of an Internet Delivery Point FE 120 include:
`a multimedia PC with: a Voice-over-IP (VoIP) client.” (Id. at
`9:1–4.)
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`A Service Logic Controller (“SLC”) (call routing controller) of an automatic
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`call service performs call routing. (EX1005 at Figures 1–4; 2:49–52; 11:33–
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`12:65.) Callers and callees use telephones, PCs, a DPFE, and a gateway in the
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`system (plurality of nodes with which callers and callees are associated). (Id. at
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`Figures 1, 3, and 4; 6:58–8:6; 8:45–9:7.) (EX1003 at ¶¶ 205-209.)
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`b.
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`Limitation 1a
`
`Nadeau-Kelly
`
`Limitation
`in response to
`initiation of a
`call by a calling
`subscriber,
`a
`receiving
`caller identifier
`and a callee
`identifier
`
`
`“[T]he ACS service allows the establishment of a connection
`from a caller (subscriber) to a called party, transparently using
`whichever network (PSTN/Mobile, IP) is best...” (EX1005 at
`6:19–23.)
`
`“An ACS subscriber will originate a call through the ACS
`service by using...a phone in the PSTN network or...a
`multimedia PC.” (Id. at 6:59–65.)
`
`“1. The user connects to the Internet and starts a VOIP client
`modified to support this service. The user either enters the
`name of the person to call, uses a Speed Dial entry, or speaks
`the name of the person to call if the client is voice-enabled.”
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`(Id. at 12:34–38.)
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`“3. The VOIP client sends a message to a node in the Internet
`domain that acts as the Internet ACS GWFE 116. The message
`contains the subscriber ID (e.g. his home phone number) and
`the name of the person to reach.
`
`4. The ACS IP GWFE 116 reformats and sends the query to the
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