Filed: August 24, 2017
`
`Filed on behalf of:
`Patent Owner Voip-Pal.com Inc.
`By: Kerry Taylor
`John M. Carson
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Tel.: (858) 707-4000
`Fax: (858) 707-4001
`Email:
`BoxDigifonica@knobbe.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AT&T SERVICES, INC.
`
`Petitioner,
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`v.
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`
`
`VoIP-PAL.COM, INC.,
`
`Patent Owner
`
`
`
`
`Case No. IPR2017-01382
`U.S. Patent 8,542,815
`
`
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`PATENT OWNER’S PRELIMINARY RESPONSE TO
`PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`
`Filed on behalf of:
`Patent Owner Voip-Pal.com Inc.
`By: Kerry Taylor
`John M. Carson
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Tel.: (858) 707-4000
`Fax: (858) 707-4001
`Email:
`BoxDigifonica@knobbe.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AT&T SERVICES, INC.
`
`Petitioner,
`
`v.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`VoIP-PAL.COM, INC.,
`
`Patent Owner
`
`
`
`
`Case No. IPR2017-01382
`U.S. Patent 8,542,815
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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`PATENT OWNER’S PRELIMINARY RESPONSE TO
`PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page No.
`
`I. INTRODUCTION .................................................................................................. 1
`
`II. ARGUMENT ........................................................................................................ 5
`
`A.
`
`B.
`
`C.
`
`Introduction to Claimed Subject Matter ................................................ 5
`
`Overview of Cited Art ........................................................................... 9
`
`1.
`
`2.
`
`3.
`
`Overview of Nadeau ................................................................... 9
`
`Overview of Kelly ..................................................................... 11
`
`Overview of Vaziri.................................................................... 13
`
`Grounds 1 and 2 fail because the Petition fails to show how the
`combination of Nadeau and Kelly “produc[es] a public network
`routing message for receipt by [a] call controller, said public network
`routing message identifying a gateway to [a] public network” .......... 14
`
`1.
`
`2.
`
`3.
`
`The “Routing Instructions” In Nadeau Do Not Identify A
`Gateway To The Public Network ............................................. 17
`
`The Petitioner’s assertion that the “routing instructions” in
`Nadeau “must” include an identification of the IP-PSTN
`Gateway is unsupported ............................................................ 19
`
`The Petitioner fails to explain how Nadeau would be modified
`such that a public network routing message is produced which
`identifies a gateway to the public network as recited in the
`claims ........................................................................................ 24
`
`a.
`
`Petitioner proposes to use the call packet
`produced by Kelly’s gateway selection process
`as routing instructions in Nadeau ................................. 27
`
`-i-
`
`
`
`TABLE OF CONTENTS
`(cont’d)
`
`Page No.
`
`b.
`
`Petitioner fails to explain how modifying
`Nadeau’s SLC to produce a call packet as
`taught by Kelly, leads to “producing a public
`network routing message for receipt by [a] call
`controller, said public network routing message
`identifying a gateway to [a] public network” as
`claimed .......................................................................... 28
`
`i.
`
`ii.
`
`The Petition has not indicated where the call
`packet would be sent ............................................ 29
`
`The Petition fails to explain how the call packet
`would be modified such that the proposed
`combination produces a public network routing
`message for receipt by the call controller, said
`public network routing message identifying a
`gateway to the public network ............................. 30
`
`D. Grounds 1 and 2 both fail because the Petitioner’s combination of
`Nadeau-Kelly fails to identify an “address, on a private network,
`through which the call is to be routed,” as recited in Claims 74, 92, 93
`and 111 ................................................................................................ 33
`
`E.
`
`F.
`
`G.
`
`Ground 2 fails because the Petitioner has failed to identify a structure
`in Nadeau that is functionally equivalent to the “means” recited in
`Claims 28, 34, 93 and 111 ................................................................... 41
`
`Ground 1 fails with respect to Claim 7 because the combination of
`Nadeau and Kelly fails to provide a “pre-defined digit format” ......... 46
`
`The Petitioner’s rationale for combining Nadeau-Kelly is simplistic
`and incomplete, and is not fairly based upon the cited arts’ teachings
` ............................................................................................................. 47
`
`-ii-
`
`
`
`TABLE OF CONTENTS
`(cont’d)
`
`Page No.
`
`1.
`
`2.
`
`3.
`
`Petitioner overlooks that Nadeau does not need Kelly’s solution
`to perform least cost routing, thus there is no motivation to
`combine ..................................................................................... 49
`
`Petitioner fails to explain why a POSITA would have been
`motivated to modify Nadeau in a manner that is unsupported by
`the cited art’s teachings ............................................................. 53
`
`Petitioner’s analysis of the modifications required is too
`truncated and simplistic to establish a reasonable expectation of
`success ....................................................................................... 57
`
`III. CONCLUSION .................................................................................................. 63
`
`
`
`
`
`-iii-
`
`
`
`TABLE OF AUTHORITIES
`
`Page No(s).
`
`Ariosa Diagnostics v. Verinata Health, Inc.,
`805 F.3d 1359 (Fed. Cir. 2015) .......................................................................... 48
`
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`800 F.3d 1375 (Fed. Cir. 2015) .................................................................... 19, 20
`
`Innogenetics, N.V. v. Abbott Laboratories,
`512 F.3d 1363 ..................................................................................................... 48
`
`Interconnect Planning Corporation v. Feil
`774 F.2d 1132 (1985) .......................................................................................... 56
`
`Ex parte Kastelewicz,
`Appeal 2008-004808 (June 9, 2009) .................................................................. 52
`
`Kinetic Concepts, Inc., v. Smith and Nephew, Inc.,
`688 F. 3d. 1342 (Fed. Cir. 2012) ........................................................................ 52
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................... 48, 53
`
`In re McLaughlin,
`443 F.2d 1392 (C.C.P.A. 1971) .......................................................................... 62
`
`In re NuVasive, Inc.,
`842 F.3d 1376 (Fed. Cir. 2016) .......................................................................... 48
`
`PAR Pharma., Inc. v. TWI Pharmas., Inc.,
`773 F.3d 1186 (Fed. Cir. 2014) .......................................................................... 20
`
`Personal Web Technologies, LLC v. Apple, Inc.,
`848 F.3d 987 (Fed. Cir. 2017) ............................................................................ 48
`
`In re Robertson,
`169 F.3d 743, 49 U.S.P.Q.2d 1949 (Fed. Cir. 1999) .......................................... 20
`
`-iv-
`
`
`
`TABLE OF AUTHORITIES
`(cont’d)
`
`Page No(s).
`
`Rohm & Haas Co. v. Brotech Corp.,
`127 F.3d 1089 (Fed. Cir. 1997) .......................................................................... 58
`
`Stryker Corp. v. Karl Storz Endoscopy-America, Inc.,
`IPR2015-00764, Paper 13 (P.T.A.B. Sep. 2, 2015) ............................................ 52
`
`Tietex Int’l, Ltd. v. Precision Fabrics Group, Inc.,
`IPR2014-01248, Paper 39 (P.T.A.B., Jan. 27, 2016) ......................................... 20
`
`In re Warsaw Orthopedic, Inc.,
`832 F.3d 1327 (Fed. Cir. 2016) .......................................................................... 48
`
`In re Wesslau,
`353 F.2d 238, 53 C.C.P.A. 746 (1965) ......................................................... 54, 55
`
`OTHER AUTHORITIES
`
`35 U.S.C. § 103 ........................................................................................ 2, 16, 54, 55
`
`35 U.S.C. § 112 ........................................................................................................ 45
`
`35 U.S.C. § 312 ............................................................................................ 25, 33, 40
`
`35 U.S.C. § 313 .......................................................................................................... 1
`
`35 U.S.C. § 314 .......................................................................................................... 2
`
`37 C.F.R. § 42.6 ....................................................................................................... 21
`
`37 C.F.R. § 42.22 ............................................................................................... 24, 33
`
`37 C.F.R. § 42.65 ............................................................................................... 21, 58
`
`37 C.F.R. § 42.104 ............................................................................................. 24, 32
`
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`-v-
`
`
`
`IPR2017-01382
`AT&T v. Voip-Pal
`
`Pursuant to 35 U.S.C. § 313, 37 C.F.R. § 42.107, and the Notice of Filing
`
`Date Accorded to Petition (Paper 3), dated May 24, 2017, Voip-Pal.com, Inc.
`
`(“Voip-Pal”) submits this Preliminary Response to the Petition for Inter Partes
`
`Review of U.S. 8,542,815 (the ’815 Patent) (“Petition,” Paper 1) by AT&T
`
`Services, Inc. (“AT&T”).
`
`I. INTRODUCTION
`Digifonica, a real party-in-interest to this proceeding and wholly owned
`
`subsidiary of Patent Owner Voip‐Pal, was founded in 2004 with the vision that the
`
`Internet would be the future of telecommunications. As a startup company,
`
`Digifonica did not have existing customers or legacy systems. Instead, Digifonica
`
`had the opportunity to start from a blank slate. Digifonica employed top
`
`professionals in the open‐source software community. Three Ph.D.s with various
`
`engineering backgrounds held the top positions at the Company. Digifonica’s
`
`engineers developed an innovative software solution for routing communications,
`
`which by the mid-2000s it implemented in four nodes spread across three
`
`geographic regions. Digifonica’s R&D efforts led to several patents, including
`
`U.S. Patent No. 8,542,815, which is the subject of the present proceeding.
`
`Petitioner challenges Claims 1, 7, 27, 28, 34, 54, 72-74, 92, 93, and 111 of
`
`the ’815 Patent on two grounds:
`
`-1-
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`
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`IPR2017-01382
`AT&T v. Voip-Pal
`
`1.
`
`Alleged obviousness of Claims 1, 7, 27, 54, 72-74, and 92 under §
`
`103(a) over U.S. Patent No. 6,240,449 to Nadeau (“Nadeau”) in view of U.S.
`
`Patent No. 6,594,254 to Kelly (“Kelly”).
`
`2.
`
`Alleged obviousness of Claims 28, 34, 93, and 111 under § 103(a)
`
`over Nadeau in view of Kelly and U.S. Patent No. 7,715,413 to Vaziri (“Vaziri”).
`
`Petitioner also submitted a Declaration by Declarant James Bress Ex. 1003
`
`(“Declaration”).
`
`As Voip-Pal explains below, Petitioner’s arguments and assessments of the
`
`cited art fail to establish a reasonable likelihood that Petitioner would prevail as to
`
`its allegations, as required under 35 U.S.C. § 314(a). Accordingly, institution of
`
`this proceeding should be denied as to both asserted grounds.
`
`Petitioner’s principal ground
`
`that addresses all
`
`independent claims
`
`challenged in the petition is Nadeau in view of Kelly. This ground does not
`
`establish a reasonable likelihood that the claims will be found obvious because no
`
`combination of the references leads to all elements of the challenged independent
`
`claims. By way of example, neither Nadeau nor Kelly, nor their combination,
`
`discloses or suggests element [1f] of Claim 1, “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,” (emphasis added). Petitioner argues Nadeau’s Service Logic
`
`-2-
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`
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`IPR2017-01382
`AT&T v. Voip-Pal
`
`Controller (“SLC”) produces a routing message that necessarily identifies a
`
`gateway to the public network, and also argues in the alternative that Nadeau could
`
`be modified to produce a routing message that identifies a gateway to the public
`
`network as taught in Kelly’s use of a “call packet” to initiate calls. Petition at 17
`
`(asserting Kelly’s “call packet” is “analogous to routing instructions”). However,
`
`Petitioner’s inherency argument is incorrect, and Petitioner failed to recognize that
`
`Kelly’s “call packet” cannot be used in Nadeau’s system. As explained below,
`
`even if Nadeau’s SLC were modified to produce Kelly’s “call packet”, the SLC
`
`would not only fail to practice the challenged claims, but it would produce an
`
`inoperative system. Petitioner fails to appreciate that its proposed combination of
`
`references would produce an inoperative system, much less explain what further
`
`modifications would need to be made in order for the system to work.
`
`Petitioner also fails to establish a reasonable likelihood that Claims 74 and
`
`93 will be found obvious because Petitioner failed to perform a claim construction
`
`on critical elements of the challenged claims, which led to Petitioner’s allegations
`
`failing to establish how those unconstrued features were met by the asserted
`
`references. In particular, Petitioner simply uses its analysis of Claims 1 and 28,
`
`respectively, to challenge Claims 74 and 93. But Petitioner did not recognize the
`
`difference in claim language from Claims 1 and 28, particularly in 74[c] and 93[d],
`
`which recite “identifying an address ... on the private network through which the
`
`-3-
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`
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`IPR2017-01382
`AT&T v. Voip-Pal
`
`call is to be routed.” (emphasis added). This failure to properly construe the claims
`
`led to Petitioner only identifying an alleged destination including the callee’s
`
`device, not an address of a device, on a network, through which the call is routed
`
`to its destination. Petitioner’s arguments as to Claims 74 and 93 are not directed to
`
`the actual identification process recited in those claims, but instead are an
`
`incomplete analysis resulting from a failure to construe the claim language.
`
`The Petition further fails to establish a reasonable likelihood that Claims 28,
`
`34, 93 and 111 will be found obvious because it fails to identify anything in the
`
`cited references that is functionally equivalent to the corresponding structure
`
`disclosed in the ’815 Patent, according to the Petitioner’s own claim construction.
`
`Finally, a person of ordinary skill in the art viewing both Nadeau and Kelly
`
`would not have been motivated to combine Nadeau and Kelly as proposed by the
`
`Petitioner in view of Kelly’s teaching. Specifically, Petitioner provides only a
`
`de minimis explanation for why one of ordinary skill would combine the references
`
`-“to further reduce the cost of routing over the PSTN” – without any explanation of
`
`why Kelly’s teachings would be expected to yield such an “improvement.”
`
`Petition at 17. This superficial reasoning overlooks the fact that Nadeau’s system
`
`already provided a path for reducing the cost of routing, which path is distinct from
`
`the path taught by Kelly. Petitioner’s basis for combining the references does not
`
`-4-
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`
`
`IPR2017-01382
`AT&T v. Voip-Pal
`
`arise from the teachings of the references themselves, but instead only from the
`
`insight Petitioner imported from the claims.
`
`In view of the foregoing, the Petition fails to establish a reasonable
`
`likelihood that Claims 1, 7, 27, 28, 34, 54, 72-74, 92, 93 and 111 of the ’815 Patent
`
`are unpatentable. Thus, the Board should not institute trial in this proceeding.
`
`II. ARGUMENT
`Introduction to Claimed Subject Matter
`
`A.
`
`Petitioner has directed most of its analysis to Claims 1 and 28. Claim 1
`
`recites:
`
`1. [1p] A process for operating a call routing controller to
`facilitate communication between callers and callees in a system
`comprising a plurality of nodes with which callers and callees are
`associated, the process comprising:
`
`
`[1a] in response to initiation of a call by a calling
`subscriber, receiving a caller identifier and a callee identifier;
`
`[1b] locating a caller dialing profile comprising a
`username associated with the caller and a plurality of calling
`attributes associated with the caller;
`
`
`-5-
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`
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`IPR2017-01382
`AT&T v. Voip-Pal
`
`[1c] determining a match when at least one of said
`calling attributes matches at least a portion of said callee
`identifier;
`
`[1d] classifying the call as a public network call when
`said match meets public network classification criteria and
`classifying the call as a private network call when said match
`meets private network classification criteria;
`
`[1e] when the call is classified as a private network call,
`producing a private network routing message for receipt by a
`call controller, said private network routing message identifying
`an address, on the private network, associated with the callee;
`
`[1f] when the call is classified as a public network call,
`producing a public network routing message for receipt by the
`call controller, said public network routing message identifying
`a gateway to the public network.
`
`By way of technology background, a public switched telephone network
`
`(PSTN) uses traditional telephone technology including dedicated telephone lines
`
`from a service provider to transmit calls over a circuit-switched network. Voice
`
`over Internet protocol (VoIP) is used for the delivery of digital voice
`
`communications and multimedia sessions over Internet protocol (IP) networks,
`
`-6-
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`
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`IPR2017-01382
`AT&T v. Voip-Pal
`
`such as the Internet. Digital information delivered over IP networks is packetized,
`
`and transmission occurs as IP packets are sent over a packet-switched network.
`
`The method of Claim 1 is directed to telecommunications call routing. The
`
`routing method allows a call to be classified and routed as a “public network call”
`
`or as a “private network call” based on whether a match of at least one calling
`
`attribute and at least a portion of the callee identifier, meets certain network
`
`criteria. For example, when a caller initiates a call to a callee the call may be
`
`routed to, e.g., a traditional circuit switched network such as the PSTN, or to, e.g.,
`
`a packet switched network such as the Internet, based on a calling attribute
`
`matching at least a portion of callee information. However, Claim 1 does not
`
`simply recite that a call is routed when the call is classified. Rather, when the call
`
`is classified, further steps are taken to route the call to the callee by producing a
`
`routing message for receipt by a call controller. For example, Claim 1 recites that
`
`when the call is classified as a public network call, a public network routing
`
`message is produced for receipt by the call controller, the public network routing
`
`message identifying a gateway to the public network, thereby identifying a
`
`particular gateway appropriate for communicating with the callee.
`
`Claim 28 recites subject matter generally similar to that recited in Claim 1,
`
`but in means plus function language.
`
`-7-
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`
`
`IPR2017-01382
`AT&T v. Voip-Pal
`
`Claim 74 includes elements that are not included in Claim 1 or 28. Claim 74
`
`recites:
`
`74. [74p] A call routing controller apparatus for establishing a
`call between a caller and a callee in a communication system, the
`apparatus comprising:
`
`
`[74a] a processor operably configured to:
`
`[74b] access 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 of a call by a
`calling subscriber; and
`
`[74c] produce 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; and
`
`[74d] produce a public network routing message for
`receipt by a call controller, said public network routing message
`
`-8-
`
`
`
`IPR2017-01382
`AT&T v. Voip-Pal
`
`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.
`
`Thus, Claim 74 claim element [74c] recites “a private network routing
`
`message identifying an address... through which the call is to be routed.” (emphasis
`
`added).
`
`B. Overview of Cited Art
`1. Overview of Nadeau
`Nadeau discloses a method and a system for managing communication
`
`sessions originating in either one of a telecommunications network, such as the
`
`PSTN network or a mobile telephone network, and a data communications network
`
`such as the Internet. Nadeau Abstract. Nadeau discloses that an Automatic Call
`
`Setup (ACS) service that 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. Nadeau at 6:16-23.
`
`A Service Logic Controller (SLC) 122 shown in Figure 1, provides
`
`Detection Point Functional Elements (DPFEs), such as the PSTN/Mobile network
`
`DPFE 106 and the Internet DPFE 114 with call processing instructions (Nadeau
`
`-9-
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`
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`IPR2017-01382
`AT&T v. Voip-Pal
`
`7:20-23). For example, Nadeau discloses that the Internet DPFE 114 is
`
`implemented as a VoIP client modified to support the ACS service. Id. at 12:34-39.
`
`In order to provide the DPFEs with call processing instructions, the SLC
`
`consults “a particular caller’s service profile, consisting in service logic as well as
`
`
`
`-10-
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`
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`IPR2017-01382
`AT&T v. Voip-Pal
`
`a list of conditions and events to be used to process the caller’s incoming calls”.
`
`Nadeau at 7:23-27.
`
`“Upon reception of routing instructions from the SLC through [a gateway
`
`functional element (GWFE)], the DPFE will resume call processing according to
`
`the received instructions and route the incoming call directly to a [DPFE] or to the
`
`IP/PSTN GWFE 124 if needed”. Nadeau at 7:5-9. “The objective of the IP/PSTN
`
`GWFE 124 is to route calls between network domains”. Id. at 8:39-42.
`
`2. Overview of Kelly
`Kelly discloses a method and apparatus for translating a domain name
`
`representing a telephone number into a network protocol address. Kelly Abstract.
`
`The network of Figure 2 illustrates a hybrid telecommunication environment
`
`including both a traditional switched telephone network as well as Internet and
`
`Intranet networks and apparatus bridging between the two. Kelly at 5:62-65.
`
`-11-
`
`
`
`IPR2017-01382
`AT&T v. Voip-Pal
`
`
`
`For WebPhone client to GATEWAY to PSTN calls, a user enters “a
`
`traditional phone number through the graphic user interface of the WebPhone client
`
`and establishes a call to the specified telephone exchange on a PSTN”. Kelly at
`
`11:51-54. “Upon receiving the desired telephone number the WebPhone client
`
`reverses the number and appends the carrier's domain name resulting in a hybrid
`
`telephone/domain name, e.g., having the form ‘4001-997-561-1.carrier.com’. Id. at
`
`12:7-11. The hybrid telephone number domain name … is passed by the
`
`WebPhone client to in an acceptable format the name resolver protocol executing
`
`on a DNS name server on the TCIP/IP network.” Id. at 12:3-14.
`
`Referring to Figure 6 (infra), a recursive process of resolving the telephone
`
`number domain name previously entered into the WebPhone client to the
`
`-12-
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`
`
`IPR2017-01382
`AT&T v. Voip-Pal
`
`appropriate IP address of a gateway on a PSTN is illustrated. After step 12 of FIG.
`
`6, the call packet containing the entire telephone number domain name entry
`
`‘4001.997.561.1.carrier.com’ is then sent by the WebPhone 232 to initiate a call
`
`session to the IP address of the gateway, e.g., gateway 218C in FIG. 2 (supra), and
`
`the call is offered. The gateway 218C, depending on available resources, then
`
`evaluates the call packet data, responds accordingly by dialing 1-561-997-4001 and
`
`accepts the call. A call session is then established. Kelly at 13:22-29; 15:12-17.
`
`3. Overview of Vaziri
`Vaziri discloses a multi-network exchange system having a first type
`
`network (PSTN) and a second type network (Internet) and a multi-network
`
`exchange bridge in communication with the first and second type networks for the
`
`
`
`-13-
`
`
`
`IPR2017-01382
`AT&T v. Voip-Pal
`
`transfer of electronic information signals (telephone calls) between the first and
`
`second type networks. Referring specifically to Figure 2, the Multi-Network
`
`Exchange System (MNES) includes one or more MNES bridges 55 and 97 that
`
`allow information in the form of voice or fax telephone calls to be exchanged
`
`between a PSTN network 90 and a digital communications network 85 such as the
`
`Internet, the MNES including a PSTN number translator for parsing dialed digits.
`
`Vaziri at 12:34-40, 29:25-36 and Figures 2 and 12.
`
`C. Grounds 1 and 2 fail because the Petition fails to show how the
`combination of Nadeau and Kelly “produc[es] a public network routing
`message for receipt by [a] call controller, said public network routing
`message identifying a gateway to [a] public network”
`
`Claim 1 recites: “producing a public network routing message for receipt by
`
`[a] call controller, said public network routing message identifying a gateway to [a]
`
`public network” and each of independent Claims 27, 28, 54, 74 and 93 recites a
`
`similar element. Petitioner argues that Nadeau’s “routing instructions”, produced
`
`by Nadeau’s Service Logic Controller (“SLC”), are equivalent to a public network
`
`routing message. Petition at 29-30. Petitioner then raises two different arguments
`
`as to how the “routing instructions” purportedly identify a gateway to the public
`
`network. Petition at 30. As detailed below, both arguments fail.
`
`First, Petitioner argues that although Nadeau does not explicitly state that the
`
`routing instructions identify the IP-PSTN Gateway to which the call is routed, the
`
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`AT&T v. Voip-Pal
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`routing instructions must include such an identification to complete the call.
`
`Petition at 30 (emphasis added). As set out below, Petitioner’s argument fails
`
`because, contrary to Petitioner’s assertions, it is not inherent that the routing
`
`instructions in Nadeau must identify the IP-PSTN Gateway to which the call is
`
`routed. The Petitioner’s inherency argument fails for at least the reason that, as
`
`admitted by Petition at 17, Nadeau discloses only one IP-PSTN Gateway to route
`
`the call from the VoIP client to the PSTN, and so other components of Nadeau,
`
`such as Nadeau’s VoIP client device may be preprogrammed with the IP address of
`
`the one IP-PSTN Gateway, in advance of receiving any routing instructions.
`
`Petitioner apparently recognizes the weakness of their inherency argument
`
`because Petitioner proposes a second, alternative, argument that Kelly teaches a
`
`gateway selection process that includes the IP address of the gateway to initiate a
`
`call session (Petition at 30) and that it was obvious to modify the SLC of Nadeau
`
`to perform the gateway selection process taught in Kelly. Id.
`
`However, Petitioner’s second argument also fails because, as set out below,
`
`(a) combining the references as proposed by the Petitioner would be inoperative
`
`unless other changes are made, and (b) Petitioner has failed to specify how the
`
`proposed combination of Nadeau and Kelly would be made such that the
`
`combination produces “a public network routing message for receipt by [a] call
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`IPR2017-01382
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`controller, said public network routing message identifying a gateway to [a] public
`
`network” as recited in the claims.
`
`In particular, Petitioner proposes to modify Nadeau’s Service Logic
`
`Controller (“SLC”) to, inter alia, produce Kelly’s “call packet” (See Petition at 17,
`
`29-30), but, as detailed below, simply modifying Nadeau’s SLC to produce Kelly’s
`
`“call packet” as proposed by Petitioner, without further changes, would not result
`
`in routing a call to the public network as asserted by Petitioner. As set out below,
`
`Petitioner has not described, and it is not clear, what further modifications of
`
`Nadeau’s SLC and/or Kelly’s “call packet” would be necessary in order for
`
`Petitioner’s proposed combination to actually perform the above-noted step recited
`
`in the claims.
`
`Thus, Grounds 1 and 2 fail because Petitioner has failed to demonstrate that
`
`the proposed combination of Nadeau and Kelly would perform the above-noted
`
`claim element. In particular, the “routing instructions” in Nadeau do not identify a
`
`gateway to the public network, and the Petitioner has not shown how the proposed
`
`modification of Nadeau with the teachings of Kelly would result in a public
`
`network routing message identifying a gateway to the public network.
`
`Accordingly, the information presented in the Petition fails to establish a
`
`reasonable likelihood that the claims are unpatentable under 35 U.S.C. § 103(a)
`
`having regard to the cited references.
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`IPR2017-01382
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`1.
`
`The “Routing Instructions” In Nadeau Do Not Identify A
`Gateway To The Public Network
`
`The Petition asserts that Nadeau discloses a “public network routing
`
`message,” based on Nadeau’s disclosure of “routing instructions” generated by the
`
`SLC 122, and also asserts that the IP-PSTN Gateway 124 represents the “gateway
`
`to the public network” recited in the claims of the ’815 Patent. Petition at 29-30.
`
`However, there is no disclosure in Nadeau that the “routing instructions” generated
`
`by the SLC 122 identify IP-PSTN Gateway 124 and a POSITA would understand
`
`that there is no need to identify the Gateway 124 if the VoIP client 114 in Nadeau
`
`only uses one gateway.
`
`The Petitioner has admitted that “Nadeau does not explicitly state that the
`
`routing instructions identify the IP-PSTN Gateway …”. Petition at 30 (emphasis
`
`added). The Petition also admits that “[t]he system in Nadeau, however, includes
`
`only one gateway to route the call to the PSTN …” Petition at 17 (emphasis
`
`added). Because there is only one gateway to the PSTN to route the call,
`
`identification of the IP-PSTN Gateway does not need to occur by the SLC when
`
`the call is classified. For example, the VoIP client 114 can be preprogrammed
`
`with information identifying the IP-PSTN Gateway. Alternatively, Internet ACS
`
`Gateway 116 can be preprogrammed with such information. Thus, there is no need
`
`for the “routing instructions” from the SLC 122 to identify IP-PSTN Gateway 124.
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`IPR2017-01382
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`Nadeau uses the term “routing instructions” and “routing information”
`
`interchangeably. See for example Nadeau at 9:38-40 ("The ACS system will then
`
`complete the call according to the routing instructions stored by the user”)
`
`(emphasis added) and 9:56-10:20 (“The Subscriber Database 204 as shown in FIG.
`
`2 contains a record for each such subscriber, … such as: … routing information;”)
`
`(emphasis added). Thus, while Nadeau does not provide any explicit disclosure as
`
`to the contents of the “routing instructions” used for an IP to PSTN call, Nadeau
`
`does disclose the contents of “routing information” stored by the SLC 122 and
`
`Nadeau does not teach that “routing instructions” would include anything other
`
`than the contents of Nadeau’s “routing information”. Nadeau discloses that the
`
`“routing information” stored in a subscriber’s directory entry for public network
`
`routing is simply a “directory number (DN)” of the called individual, whereas the
`
`entry for Internet destinations is “an IP address or pseudo-address.” Nadeau at
`
`9:20-23. This means that Nadeau’s “routing instructions” for public network
`
`routing is simply a directory number (DN). Thus, Nadeau does not disclose that
`
`anything identifying the IP-PSTN Gateway is required for Internet-to-PSTN
`
`routing.
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`IPR2017-01382
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`2.
`
`The Petitioner’s assertion that the “routing instructions” in
`Nadeau “must” include an identification of the IP-PSTN Gateway
`is unsupported
`
`As note
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