Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper No. 8
`Entered: November 20, 2017
`
`
`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 IPR2017-01382
`Patent 8,542,815 B2
`____________
`
`
`
`Before JOSIAH C. COCKS, JENNIFER MEYER CHAGNON, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`Petitioner, AT&T Services, Inc. (“Petitioner”), filed a Petition
`(Paper 1, “Pet.”) requesting an 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”) pursuant to 35 U.S.C. §§ 311–319. Petitioner proffered a
`Declaration of James Bress (Ex. 1003) with its Petition. Patent Owner,
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`IPR2017-01382
`Patent 8,542,815 B2
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`Voip-Pal.com, Inc. (“Patent Owner”), filed a Preliminary Response (Paper 5,
`“Prelim. Resp.”) to the Petition.
`Under 35 U.S.C. § 314(a), the Director may not authorize an inter
`partes review unless the information in the petition and preliminary 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.” For the
`reasons that follow, we do not institute an inter partes review of the
`’815 patent.
`
`
`
`I. BACKGROUND
`
`Related Proceedings
`A.
`The parties identify the following district court cases related to the
`
`’815 patent (Pet. 2; Paper 4, 1):
`Voip-Pal.com, Inc. v. Verizon Wireless Services, LLC, 2-16-cv-00271
`(D. Nev. filed Feb. 9, 2016);
`Voip-Pal.com, Inc. v. Apple, Inc., 2-16-cv-00260 (D. Nev. filed
`Feb. 9, 2016); and
`Voip-Pal.com, Inc. v. Twitter, Inc., 2:16-cv-2338 (D. Nev. filed
`Oct. 6, 2016).
`The parties also state that the ’815 patent is being challenged or was
`challenged in IPR2016-01082, IPR2016-01201, and IPR2017-01399.
`Pet. 2–3; Paper 4, 1. In addition, Petitioner also has challenged related U.S.
`Patent 9,179,005 (“the ’005 patent”), which also is owned by Patent Owner,
`in IPR2017-01383 and IPR2017-01384. Paper 4, 1. Patent Owner also
`states that the ’005 patent is being challenged or was challenged by another
`Petitioner in IPR2016-01198 and IPR2017-01398. Id.
`
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`IPR2017-01382
`Patent 8,542,815 B2
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`B.
`
`The ’815 patent
`The ’815 patent is directed to classifying a call as a public network
`call or a private network call and producing a routing message based on that
`classification. Ex. 1001, Abstract. Figure 7 of the ’815 patent is shown
`below:
`
`
`
`Figure 7 illustrates a routing controller that facilitates communication
`between callers and callees. Id. at Fig. 7, 14:24–25, 17:16–17. 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
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`Patent 8,542,815 B2
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`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
`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 of the ’815 patent is shown below:
`
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`Patent 8,542,815 B2
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`Figure 8B illustrates steps for performing checks on the callee identifier. Id.
`at 19:45–49, Fig. 8B. Blocks 257, 380, 390, 396, 402 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 predefined format, i.e. is a valid user
`name and identifies a subscriber to the private network . . . .” Id. at 22:54–
`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
`Of the challenged claims of the ’815 patent, claims 1, 27, 28, 54, 74,
`and 93 are independent. Claim 7 depends from claim 1; claim 34 depends
`from claim 28; claims 72 and 73 depend from claim 54; claim 92 depends
`from claim 74; and claim 111 depends from claim 93. Claim 1 is illustrative
`of the challenged claims and recites:
`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;
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`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.
`
`D.
`
`The Prior Art
`Petitioner relies on the following prior art:
`Nadeau, U.S. Patent No. 6,240,449 B1, filed Nov. 2, 1998,
`issued May 29, 2001 (Ex. 1005, “Nadeau”);
`Kelly, U.S. Patent No. 6,594,254 B1, filed Aug. 14. 1997,
`issued July 15, 2003 (Ex. 1006, “Kelly”); and
`Vaziri et al., U.S. Patent No. 7,715,413 B2, filed Oct. 25,
`2004, issued May 11, 2010 (Ex. 1007, “Vaziri”).
`
`The Asserted Grounds
`Petitioner challenges claims 1, 7, 27, 28, 34, 54, 72–74, 92, 93, and
`111 of the ’815 patent on the following grounds (Pet. 4):
`References
`Basis
`Claims Challenged
`
`E.
`
`Nadeau and Kelly
`
`Nadeau, Kelly, and
`Vaziri
`
`35 U.S.C. § 103(a) 1, 7, 27, 54, 72–74, and
`92
`35 U.S.C. § 103(a) 28, 34, 93, and 111
`
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`F.
`
`Claim Interpretation
`In an inter partes review, we construe claims by applying the broadest
`reasonable interpretation in light of the specification. 37 C.F.R. § 42.100(b);
`see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016).
`Under the broadest reasonable interpretation standard, and absent any
`special definitions, claim terms are given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in the
`context of the entire disclosure. See In re Translogic Tech. Inc., 504 F.3d
`1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms or
`phrases must be set forth “with reasonable clarity, deliberateness, and
`precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`On the current record, we determine that no terms require explicit
`construction at this time. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed
`that are in controversy, and only to the extent necessary to resolve the
`controversy”).
`
`
`II. ANALYSIS
`We now consider Petitioner’s asserted grounds and Patent Owner’s
`arguments in the Preliminary Response to determine whether Petitioner has
`met the “reasonable likelihood” threshold standard for institution under
`35 U.S.C. § 314(a).
`
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`Patent 8,542,815 B2
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`A.
`
`Obviousness Ground Based on Nadeau and Kelly
`Petitioner contends claims 1, 7, 27, 54, 72–74, and 92 would have
`been obvious over Nadeau and Kelly. Pet. 16–39. Patent Owner disputes
`Petitioner’s contention. Prelim. Resp. 14–41, 46–62.
`
`Nadeau
`1.
`Nadeau is a patent directed to telephony systems that “provide
`subscribers with communication sessions across a variety of network
`domains, such as the Public Switched Telephone Network (PSTN), the
`Mobile network and the Internet.” Ex. 1005, 1:7–12. Figure 1 of Nadeau is
`reproduced below.
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`
`Figure 1 “is a block diagram of a multi-domain communication session
`disposition system incorporating an Automatic Call Setup [ACS] service.”
`Id. at 6:1–3. Figure 1 depicts PSTN network domain 100 and Internet
`domain 102, each of which issue and receive communications that can be
`telephone-related messages or data. Id. at 6:47–54. ACS subscribers
`originate calls through either PSTN Originating Point Functional Element
`(OPFE) 104 (e.g., a phone in the PSTN network) or Internet OPFE 112 (e.g.,
`a multimedia PC). Id. at 6:58–65. PSTN Detection Point Functional
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`Element (DPFE) 106 and Internet DPFE 114 are each responsible for
`identifying call requests that require ACS treatment. Id. at 6:59–7:1.
`Internet DPFE 114 is a voice over Internet Protocol (VoIP) client. Id. at
`12:39. If ACS treatment is needed in the PSTN domain, PSTN DPFE 106
`will suspend call processing and originate a request for instructions to
`Service Logic Controller (SLC) 122 via a PSTN Gateway Functional
`Element (GWFE) 108, which is responsible for “mediat[ing] the instruction
`requests/responses from/to the DPFE to/from the SLC.” Id. at 7:1–5, 7:13–
`15. Internet GWFE 116 performs the same function in the Internet domain
`and likewise links Internet DPFE 114 with SLC 122. Id. at 7:15–19.
`SLC 122 is a server that includes a memory for storage of program
`elements for implementing different functions necessary to the disposition of
`communication sessions. Id. at 7:31–34. SLC 122 includes a central
`processing unit and mass storage unit holding a Subscriber Database. Id. at
`7:34–36. SLC 122 provides DPFEs with call processing instructions by
`consulting the Subscriber Database for a particular caller’s service profile
`and a list of conditions and events to be used to process the caller’s
`incoming calls. Id. at 7:24–27, 7:36–40. SLC 122 is coupled to Gatekeeper
`Functional Element (GKFE) 118 in the Internet domain for mapping pseudo-
`addresses into IP addresses. Id. at 4:6–42, 7:41–8:6.
`When a call originating from one domain terminates on the other
`domain, the ACS system forwards the call to PSTN/IP gateway 124 for
`proper bridging. Id. at 11:29–31. Information on how to complete the call
`also is sent to PSTN/IP gateway 124 by SLC 122. Id. at 11:31–33, 12:11–
`18, 13:34–41, Figs. 1, 3, 4.
`
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`Kelly
`2.
`Kelly is a patent directed to “a technique for enabling communication
`connections between circuit-switched communication networks and packet-
`switched data processing networks.” Ex. 1006, 1:59–63. The technique
`“enables traditional telephone numbers formatted as domain names to be
`resolved into network protocol addresses.” Id. at 3:45–47. Figure 6 of Kelly
`is reproduced below.
`
`
`
`Figure 6 depicts the steps utilized to resolve a telephone number to a
`network address of a gateway. Id. at 4:65–67. Upon receiving a traditional
`telephone number (e.g., “1-561-997-4001”) from a user, Internet
`telephone/WebPhone client 232 “reverses the number and appends the
`carrier’s domain name[,] resulting in a hybrid telephone/domain name
`having the form ‘4001-997-561-1.carrier.com.’” Id. at 6:58–67, 11:50–
`12:14. Kelly goes on to describe “a recursive process of resolving the
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`telephone number domain name previously entered into the WebPhone
`client to the appropriate IP address of a gateway on a PSTN”:
`In step 1, the WebPhone client 232 forwards the telephone
`number domain name to primary name server 254 in packetized
`form via Internet 220 and ISP 250. Using a name packet, primary
`name server 254 queries the root name server of the domain
`name
`system
`(DNS)
`for
`the
`address
`of
`“4001.997.561.1.carrier.com” in step 2. The name server for the
`DNS root returns a reference to the name server for “.com” in
`step 3. Next, name server 254 queries the referenced name server
`“.com” for the address of “4001.997.561.1.carrier.com” in
`step 4. In response, a referral to “carrier.com” is returned in
`step 5. Name server 254 then queries the name server
`“carrier.com” for “4001.997.561.1.carrier.com” in step 6. In
`response, a referral to “1.carrier.com” is returned in step 7.
`Name server 254 then queries the name server to “1.carrier.com,”
`for “4001.997.561.1.carrier.com” in step 8. In response a
`reference of “561.1.carrier.com”, is returned in step 9. Name
`server 254 then queries name server for “561.1.carrier.com,” in
`step 10 for “4001.997.561.1.carrier.com.” In response, a
`reference to “997.561.1.carrier.com” is returned in step 11. This
`last reference contains the IP address of the desired gateway
`which is then forwarded via Internet 220 and ISP 250 to
`WebPhone client 232 by name server 254 in step 12.
`Id. at 12:32–57.
`After step 12, “the call packet containing the entire telephone number
`domain name entry ‘4001.997.561.1.carrier.com’ is then sent to initiate a
`call session to the IP address of the gateway . . . , and the call is offered.” Id.
`at 13:22–26.
`
`Claim 1
`3.
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
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`matter, as a whole, would have been obvious at the time the invention was
`made to a person having ordinary skill in the art to which said subject matter
`pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
`The question of obviousness is resolved on the basis of underlying factual
`determinations, including: (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of skill in the art; and (4) where in evidence, so-called secondary
`considerations. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`We also recognize that prior art references must be “considered together
`with the knowledge of one of ordinary skill in the pertinent art.” In re
`Paulsen, 30 F.3d at 1480 (citing In re Samour, 571 F.2d 559, 562 (CCPA
`1978)). We analyze Petitioner’s obviousness grounds with the principles
`identified above in mind.
`
`
`Petitioner’s Obviousness Analysis
`a.
`In its obviousness analysis for claim 1, Petitioner maps Nadeau’s
`Service Logic Controller (SLC) to the recited “call routing controller.”
`Pet. 18–19 (citing Ex. 1005, 2:49–52; 7:22–23; 11:33–12:65, Figs. 1–4).
`According to Petitioner, Nadeau’s SLC manages communications sessions
`between callers and called parties using telephones, PCs, a Detection Point
`Functional Element (DPFE), and a gateway, which Petitioner maps
`collectively to the “plurality of nodes.” Id. (citing Ex. 1003 ¶¶ 205–209;
`Ex. 1005, 6:58–8:6; 8:45–9:7, Figs. 1, 3, 4).
`For initiating a call, Petitioner cites Nadeau’s teaching on originating
`a call through an Automatic Call Setup (ACS service) using an Internet
`Originating Point Functional Element (OPFE), such as a multimedia PC. Id.
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`at 20–21 (citing Ex. 1005, 6:58–65). Petitioner contends that, after a “caller
`enters ‘the name of the person to call’ into a VoIP client,” the SLC receives
`the caller’s home phone number (i.e., “a caller identifier”) and the name of
`the person to reach (i.e., “a callee identifier”). Id. at 21 (citing Ex. 1005,
`12:34–38, 12:42–47). For “locating a caller dialing profile,” Petitioner
`contends Nadeau’s SLC consults a caller’s service profile in a Subscriber
`Database, which includes a subscriber ID and directory entries for callees.
`Id. at 21–23 (citing Ex. 1005, 3:56–65, 4:2–6, 7:24–27, 7:34–40, 9:18–23,
`9:55–10:20, 12:48–52). Petitioner likens the subscriber ID to “a username
`associated with the caller” and the contents of the callee directory entries,
`such as name or telephone number and routing information, to the “calling
`attributes.” Id.
`Regarding the “determining a match” limitation, Petitioner contends
`Nadeau’s “SLC uses a callee’s name (callee identifier) to locate a directory
`entry for the callee in the caller profile.” Id. at 23–24 (citing Ex. 1003
`¶¶ 219–222; Ex. 1005, 4:3–6, 10:1–2, 11:13–15, 12:42–52). For
`“classifying the call,” Petitioner contends that the SLC determines where to
`route a call based on “routing information in a matched directory entry for
`the callee in the caller’s profile.” Id. at 24–25 (citing Ex. 1005, 7:24–27,
`10:8–20, 11:27–30). Petitioner cites Nadeau’s teachings on routing a call to
`the public switched telephone network (PTSN) based on a least cost routing
`rule or a priority list in a subscriber record as being associated with
`classifying a call as a public network call. Id. at 26 (citing Ex. 1005, 10:11,
`10:15–18). Petitioner also cites Nadeau’s teachings on routing a call over an
`IP network based on an available IP address for the callee or Quality of
`Service flag in a subscriber record as being associated with classifying a call
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`as a private network call. Id. at 25 (citing Ex. 1005, 7:24–27, 10:8–20,
`11:27–30). Supported by testimony from Mr. Bress, Petitioner contends an
`ordinarily skilled artisan would have known that “an IP network includes
`private networks like intranets and local area networks (LANs).” Id. at 26
`(citing Ex. 1003 ¶ 227; Ex. 1009, 6–44). Petitioner further cites Kelly for
`teaching that an IP network includes private networks like intranets and
`LANs. Id. (citing Ex. 1006, 2:30–41). Petitioner contends an ordinarily
`skilled artisan would have modified Nadeau’s IP network to include
`intranets and LANs based on Kelly because it is a combination of known
`elements according to known methods that would yield predictable results.
`Id. (citing Ex. 1003 ¶ 228).
`For “producing a private network routing message,” Petitioner
`contends Nadeau’s “SLC generates and sends ‘routing instructions’ (private
`network routing message) to a detection point (‘DPFE’) or Internet ACS
`Gateway (collectively a call controller).” Id. at 26–27 (citing Ex. 1003
`¶¶ 234–235; Ex. 1005, 7:22–23, 12:55–61). Petitioner explains “the routing
`instructions instruct the DPFE to route the call to an IP address of the
`callee.” Id. at 27 (citing Ex. 1005, 12:55–61). Regarding the routing
`message “identifying an address, on the private network, associated with the
`callee,” Petitioner acknowledges that Nadeau “does not explicitly disclose
`that the routing instructions identify the callees’ IP address,” but Petitioner
`contends this would have been obvious based on Nadeau’s teachings that the
`network is an IP network and that the SLC returns “a message indicating to
`route the call to the IP address retrieved from the Internet domain’ . . . ,
`which is the callees’ IP address.” Id. at 27–28 (quoting Ex. 1005, 12:55–61
`and citing Ex. 1003 ¶¶ 237–238; Ex. 1005, 11:27) (emphasis omitted).
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`Petitioner explains that an ordinarily skilled artisan would have known that
`an IP address is used to route calls in an IP network. Id. at 28 (citing
`Ex. 1003 ¶¶ 237–238). Petitioner further contends that, in light of Kelly, an
`ordinarily skilled artisan would have known to modify the programming of
`Nadeau’s SLC so that the callee’s IP address was included in the routing
`instructions. Id. (citing Ex. 1003 ¶ 241; Ex. 1006, 7:56–8:1). Petitioner
`characterizes this modification as being a known technique yielding
`predictable results that “allows a call to be routed to the callee’s IP address
`. . . which is the same result desired by Nadeau.” Id. (citing Ex. 1003 ¶ 241;
`Ex. 1005, 10:3, 12:55–61; Ex. 1006, 7:59–67). Petitioner also contends it
`would have been obvious for an ordinarily skilled artisan to try this
`technique based on similar reasons. Id. at 28–29 (citing Ex. 1003 ¶ 242;
`Ex. 1005, 7:5–9, 7:22–23, 11:27–28, 12:55– 61; Ex. 1006, 7:64–67).
`For “producing a public network routing message,” Petitioner again
`relies on Nadeau’s SLC purportedly sending “routing instructions.” Id. at
`29–30 (citing Ex. 1005, 7:5–9, 7:22–23). Petitioner contends that, to route
`an IP-originated call over the PSTN, “the routing instructions instruct the
`DPFE and Internet ACS Gateway to route the call to an IP-PSTN Gateway,
`also known as a Gateway Functional Element (GWFE).” Id. at 30 (citing
`Ex. 1005, 7:5–9, 8:39–42, 11:29–33). Regarding the routing message
`“identifying a gateway to the public network,” Petitioner acknowledges that
`Nadeau “does not explicitly state that the routing instructions identify the
`IP-PSTN Gateway to which the call is routed,” but Petitioner contends an
`ordinarily skilled artisan would have known “that the routing instructions
`must include such an identification to complete the call.” Id. (citing
`Ex. 1003 ¶¶ 251–252). Petitioner also contends that, in light of Kelly, an
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`ordinarily skilled artisan would have known to modify Nadeau’s SLC to
`perform the gateway selection process of Kelly by “produc[ing] routing
`instructions that identify the IP-PSTN Gateway by including its IP address.”
`Id. (citing Ex. 1003 ¶¶ 202–204, 244–254; Ex. 1006, 12:32–35, 12:55–57,
`13:22–26).
`Petitioner contends Nadeau and Kelly are from the same field of
`endeavor and are both concerned with reducing the cost for making VoIP
`calls. Id. at 16 (citing Ex. 1005, 1:53–2:9, 6:30, 10:11–16; Ex. 1006, 2:42–
`3:19, 13:46–57). Petitioner notes that Nadeau’s SLC may determine to route
`a call over the PSTN based on least cost routing, but that Nadeau “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 16–17 (citing Ex. 1005, 7:5–9,
`7:22–23, 8:39–40, 10:11–16, 11:27–28, Fig. 1). Correspondingly, Petitioner
`contends that Kelly “recognizes that costs may be further reduced by
`selecting a gateway that provides lower cost routing compared to other
`gateways.” Id. at 17 (citing Ex. 1006, 13:39–57). In light of this, Petitioner
`contends an ordinarily skilled artisan “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 routing over the PSTN as recognized by Kelly.”
`Id. (citing Ex. 1003 ¶ 202).
`
`
`Patent Owner’s Arguments
`b.
`Patent Owner argues that the only “routing instructions” disclosed by
`Nadeau relative to the “public network” consist of “simply a directory
`number (DN).” Prelim. Resp. 18 (citing Ex. 1005, 9:20–23). Accordingly,
`Patent Owner argues “Nadeau does not disclose that anything identifying the
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`IP-PSTN Gateway is required for Internet-to-PSTN routing.” Id. Patent
`Owner further criticizes Petitioner’s assertion that Nadeau’s routing
`instructions “must include” an identification of a gateway to the public
`network. See id. at 19–23 (citing Pet. 30). Patent Owner characterizes this
`as an assertion of inherency, and Patent Owner contends Petitioner has not
`established that Nadeau’s routing instructions necessarily identify a gateway.
`See id. Patent Owner contends Petitioner’s assertion is supported only by
`Mr. Bress’s testimony, which Patent Owner disputes. See id. at 21–23. For
`example, in response to Mr. Bress’s testimony that Nadeau’s DPFE and
`ACS Gateway would need an IP address to route a PSTN call (see Ex. 1003
`¶¶ 251–252), Patent Owner posits a counterexample in which there is only
`one IP-PSTN Gateway preconfigured to receive all “public” calls. Prelim.
`Resp. 22.
`Regarding Petitioner’s proposed modification of Nadeau with Kelly,
`Patent Owner contends Petitioner has failed to “consider[] or describ[e]
`various significant further modifications of the SLC that would be necessary
`in order for the combined references to actually perform” the public network
`limitation. Prelim. Resp. 24. For example, Patent Owner contends
`“Petitioner has not provided guidance regarding how merely programming
`Nadeau’s SLC to produce the call packet of Kelly . . . would result in the
`SLC ‘producing a public network routing message.’” Id. at 26.
`In particular, Patent Owner highlights a potential inconsistency in
`Petitioner’s proposed combination. Patent Owner notes that Petitioner maps
`collectively Nadeau’s Internet ACS Detection Point/DFPE 114 and Internet
`ACS gateway 116 to the recited “call controller.” Id. at 29 (citing Pet. 30).
`Patent Owner further notes Nadeau teaches that ACS Service Logic
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`Controller 122 provides “routing instructions,” which Petitioner maps to the
`recited “network routing message,” to Internet ACS Detection Point/
`DFPE 114. Id. at 14 (citing Pet. 29–30), 27 (citing Ex. 1005, 7:1–12, 9:38–
`46, 11:27–32). Patent Owner notes Internet ACS Detection Point/
`DFPE 114—the place where Nadeau’s SLC 122 sends routing instructions—
`is a VoIP client. Id. at 10 (citing Ex. 1005, 12:34–39), 27. Patent Owner
`then turns to Petitioner’s cited teachings from Kelly and alleges
`inconsistencies between Kelly and Nadeau. Specifically, Patent Owner
`notes that Petitioner considers Kelly’s “call packet” to be analogous to the
`“routing instructions” of Nadeau. Id. (citing Pet. 17). Patent Owner
`contends “the call packet in Kelly is configured to be sent to an IP-PSTN
`gateway, not a VoIP client device” as with Nadeau’s routing instructions.
`Id. at 30 (citing Ex. 1006, 13:22–26, 15:12–17). As such, Patent Owner
`contends additional modifications of the references would be necessary to
`teach the “public network routing message for receipt by the call controller.”
`Id. at 30–33. Patent Owner further contends “Kelly does not disclose that
`the contents of the call packet include the IP address of the gateway.” Id. at
`31 (citing Ex. 1006, 13:22–26, 15:12–17).
`
`
`c.
`
`Petitioner’s Proposed Combination Does Not Teach a
`“public network routing message identifying a gateway
`to the public network”
`We are persuaded by Patent Owner’s arguments, because Petitioner
`has not established that the combination of Nadeau and Kelly teaches a
`“public network routing message identifying a gateway to the public
`network” that is “for receipt by the call controller.” At the outset, we note
`Petitioner acknowledges that Nadeau does not explicitly disclose routing
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`instructions that identify a gateway to the public network. Pet. 30.
`Although Petitioner contends “routing instructions must include such an
`identification to complete the call” (id. (citing Ex. 1003 ¶¶ 251–252)
`(emphasis added)), Petitioner’s evidence does not establish this.
`First, Patent Owner is correct (Prelim. Resp. 22) that the only “routing
`information” described in Nadeau that is applicable to public calls is “the
`individual’s directory number (DN) for the PSTN.” Ex. 1005, 9:20–23.
`Second, Petitioner relies on dubious logic from Mr. Bress, who testifies that,
`“[b]ecause Nadeau discloses that routing is occurring in an IP network, one
`of ordinary skill in the art would know that, an IP address is used to identify
`the IP-PSTN Gateway.” Ex. 1003 ¶ 252; see also Pet. 30 (citing same).
`Even if this is true, it does not substantiate that Nadeau’s routing instructions
`must include the IP address of the gateway. As pointed out by Patent
`Owner, Mr. Bress “has not established that the caller’s VoIP client can only
`receive the gateway identification information from the SLC 122 and that
`the caller’s VoIP client can only receive this information from the routing
`instructions.” Prelim. Resp. 22. Further, Patent Owner is correct that
`identification of Nadeau’s lone gateway “could be preconfigured into the
`caller’s VoIP client.” Id. Accordingly, we are not persuaded that Nadeau’s
`routing instruction must identify the gateway.
`Because Nadeau does not teach a “public network routing message
`. . . identifying a gateway to the public network,” Petitioner relies on Kelly.
`See Pet. 30 (citing Ex. 1006, 12:32–35, 12:55–57, 13:22–26). Yet even if
`Nadeau’s routing instructions are modified to include the contents of Kelly’s
`call packet, the combination does not teach that the modified routing
`instructions identify a public network gateway. Specifically, Petitioner
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`proposes programming Nadeau’s SLC to “perform the gateway selection
`process taught by Kelly.” Id. at 17–18. According to Petitioner, Kelly’s
`gateway selection process:
`(1) transforms a dialed telephone number (e.g., 1-561-997-4001)
`into a hybrid
`telephone number domain name
`(e.g.,
`4001-997561-1.carrier.com) . . . ; (2) uses successive portions of
`the hybrid telephone number domain name to retrieve references
`to name servers that contain an IP address of a carrier gateway
`. . . ; and (3) produces a call packet, analogous to routing
`instructions, containing the hybrid telephone number domain
`name and the IP address of the carrier gateway to effect the call.
`Id. at 17 (citing Ex. 1006, 11:54–12:11, 12:32–57, 13:21–26). We do not
`agree with Petitioner’s characterization of part (3), however, because Kelly’s
`call packet actually contains the “entire telephone number domain name
`entry” (e.g., “4001.997.561.1.carrier.com”). Ex. 1006, 13:22–26. In
`contrast, the example provided in Kelly states that the “IP address of the
`desired gateway” is “997.561.1.carrier.com.”1 Id. at 12:53–57. Although a
`call packet with the “entire telephone number domain name entry” is sent to
`the IP address of the gateway, id. at 13:22–26, this does not mean that the
`
`
`1 To the extent Petitioner and Mr. Bress cite column 12, lines 55–57 of Kelly
`for the proposition that “the IP address of the desired gateway . . . is then
`forwarded via Internet 220 and ISP 250 to WebPhone client 232 by name
`server 254 in step 12” (Pet. 29; Ex. 1003 ¶ 253 (emphasis omitted)), this
`teaching relates to “a recursive process” by name server 254 for “resolving
`the telephone number domain name previously entered into the WebPhone
`client to the appropriate IP address of a gateway on a PSTN.” Ex. 1006,
`12:32–35. Once resolved, the IP address of the gateway is forwarded from
`name server 254 to WebPhone client 232. Id. at 12:55–57. As such, the
`forwarded gateway IP address is not part of Kelly’s call packet that is cited
`by Petitioner.
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`gateway IP address necessarily is part of the call packet. As stated above
`with respect to Nadeau, we do not agree with Petitioner’s argument (see,
`e.g., Pet. 30 (citing Ex. 1003 ¶¶ 251–252)) that the IP address of the gateway
`must be part of the call packet simply because the call packet is sent to th