Petition for Inter Partes Review of Patent No. 9,179,005
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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
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`––––––––––
`
`Case IPR (To Be Assigned)
`Patent No. 9,179,005
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`––––––––––
`
`PETITION FOR INTER PARTES REVIEW OF
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`U.S. PATENT NO. 9,179,005
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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. 9,179,005
`
`––––––––––
`
`PETITION FOR INTER PARTES REVIEW OF
`
`U.S. PATENT NO. 9,179,005
`
` 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. 9,179,005
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`Page
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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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`Threshold for Inter Partes Review ................................................ 5
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`IV. Overview of the ʼ005 Patent ...................................................................... 6
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`A.
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`B.
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`C.
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`Technical Background ................................................................... 6
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`The Purported Invention ................................................................ 6
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`The Prosecution History ................................................................ 8
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`V.
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`Prior Art ..................................................................................................... 8
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`A.
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`Fisher teaches a system that routes VoIP calls based on a caller
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`-i-
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`Petition for Inter Partes Review of Patent No. 9,179,005
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`profile. ............................................................................................ 8
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`Nadeau teaches a system that routes VoIP calls based on a
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`caller profile. ................................................................................ 10
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`Kelly and Vu also teach call routing systems. .............................. 13
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`B.
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`C.
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`VI. Statements on the Art .............................................................................. 13
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`A.
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`B.
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`Level of ordinary skill in the art .................................................. 13
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`The references are analogous art ................................................. 13
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`VII. Claim Construction ................................................................................. 13
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`VIII. The Challenged Claims Are Unpatentable. ............................................. 14
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`A.
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`B.
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`Claims 74–79, 83–84, 88–89, 92, 94–96, and 98–99 are
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`obvious over Fisher in view of Vu. (Ground 1) ......................... 14
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`Claims 74–79, 83–84, 88–89, 92, 94–96, and 98–99 are
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`obvious over Nadeau in view of Kelly. (Ground 2) ................... 54
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`IX. Conclusion ............................................................................................... 85
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`Petition for Inter Partes Review of Patent No. 9,179,005
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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. 9,179,005 (“the ’005 Patent”)
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`1002
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`Prosecution History of the ’005 Patent
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`1003 Declaration of James Bress in Support of Petitions 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 Publication No. 2004/0218748 (“Fisher”)
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`1007 U.S. Patent No. 6,594,254 (“Kelly”)
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`1008 U.S. Patent No. 6,674,850 (“Vu”)
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`1009 Decision of Institution of Inter Partes Review, Case IPR2016-01198,
`Paper 6 (November 21, 2016)
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`1010
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`Patent Owner Response to Petition, Case IPR2016-01198, Paper 17
`(February 10, 2017)
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`-iii-
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`Petition for Inter Partes Review of Patent No. 9,179,005
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`AT&T Services, Inc. (“Petitioner”) petitions for inter partes review of
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`Claims 74–79, 83–84, 88–89, 92, 94–96, and 98–99 (the “Challenged Claims”) of
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`U.S. Patent No. 9,179,005 (“the ’005 Patent”), assigned
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`to Digifonica
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`(International) Limited (“Patent Owner”).
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`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
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`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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`Petition for Inter Partes Review of Patent No. 9,179,005
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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 an inter partes review petition challenging claims in 8,542,815,
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`which is related to the ’005 Patent. Petitioner has also concurrently filed another
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`inter partes review petition challenging claims in the ’005 Patent.
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`Case No.
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`Parties
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`2:16-CV-271 (D. Nev.)
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`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)
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`2:16-CV-260 (D. Nev.)
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`Petition for Inter Partes Review of Patent No. 9,179,005
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`IPR2016-01201
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`IPR2016-01198
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`APPLE INC. (Petitioner)
`VOIP-PAL.COM, INC. (Patent Owner)
`APPLE INC. (Petitioner)
`VOIP-PAL.COM, INC. (Patent Owner)
`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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`ʼ005 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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`Petition for Inter Partes Review of Patent No. 9,179,005
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`Bhavsar, Brian D. Johnston, and Charles Yeh.
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`II.
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`PAYMENT OF FEES
`Petitioner concurrently submits fees of $23,400. See 37 C.F.R. § 42.15.
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`Any additional fees due in connection with this Petition may be charged to Deposit
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`Account 02-0384.
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`III. REQUIREMENTS FOR IPR
`A. Grounds for Standing
`Petitioner certifies the ’005 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 ’005 Patent Claims Obvious under pre-AIA 35 U.S.C. § 103
`74–79, 83–84, 88–
`89, 92, 94–96, and
`98–99
`74–79, 83–84, 88–
`89, 92, 94–96, and
`98–99
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`1
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`2
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`Fisher in view of Vu
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`Nadeau in view of Kelly
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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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`Grounds 1 and 2 are not redundant. The Challenged Claims could possibly
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`Petition for Inter Partes Review of Patent No. 9,179,005
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`be read to cover different network topologies. Fisher and Nadeau disclose
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`different network topologies for performing call routing. Whereas Nadeau teaches
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`an independent Service Logic Controller (“SLC”) to perform many recited
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`functions, Fisher teaches performing many recited functions in the customer
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`premises equipment (“CPE”).
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` Thus, Nadeau and Fisher apply different
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`approaches that disclose the recited claim elements in different ways. Moreover,
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`in the Apple IPR, the Patent Owner argued that the recited “caller dialing profile”
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`must be “user-specific” as opposed to “enterprise-specific.” (EX1010 at p. 71.)
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`Although Fisher, standing alone, may not explicitly disclose a “user-specific”
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`“participant profile,” Nadeau does. Therefore, Nadeau shows that the Challenged
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`Claims are invalid notwithstanding Patent Owner’s arguments regarding a “caller
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`dialing profile.”
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`Additionally, these grounds are not redundant of those in the Apple IPR.
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`(See EX1009 at pp. 6–7.) First, none of the references cited in this Petition were
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`cited in Apple’s petition. Second, each of the references cited in this Petition
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`qualifies as prior art under § 102(b), whereas Apple’s references qualified as prior
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`art only under § 102(e) and could therefore be sworn behind.
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`C. Threshold for Inter Partes Review
`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 is
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`disclosed by and/or obvious in light of the prior art under pre-AIA 35 U.S.C.
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`§ 103(a).
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`IV. OVERVIEW OF THE ʼ005 PATENT
`The ʼ005 Patent claims priority to a provisional application filed on
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`November 2, 2006.
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`A. Technical Background
`The ʼ005 Patent relates to routing voice-over-IP (“VoIP”) calls, a type of call
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`that was well known at the time of the ʼ005 Patent. (EX1001 at 1:16–51.) These
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`calls could be routed over circuit-switched networks like the public switched
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`telephone network (“PSTN”) or packet-switched networks like the Internet or
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`private corporate networks, depending on various criteria. (Id.)
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`However, selecting the appropriate routing network was not a new problem.
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`(EX1003 at ¶¶ 168–189.) Many telecommunications companies had already filed
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`and 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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`The Purported Invention
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`B.
`The purported invention is a system that performs two, insignificant and
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`well-known functions: (1) determining what type of network should be used to
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`route a VoIP call based on a caller profile and (2) producing a routing message to
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`route the call. The general operation of the system is shown below.
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`First, a routing controller receives a call request. (EX1001 at 1:59–61.)
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`Second, the routing controller locates a caller profile that includes caller attributes.
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`(Id. at 2:6–13.) It then compares a callee identifier with these attributes to
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`determine a match. (Id. at 2:13–31.) It then classifies the call based on whether
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`the match meets public or private network classification criteria. (Id. at Abstract.)
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`Third, if the call is classified as a private network call, it produces a private
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`network routing message that identifies an address on the private network. (Id.)
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`Fourth, if the call is classified as a public network call, the routing controller
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`produces a public network routing message that identifies a gateway to the public
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`network. (Id.) However, classifying and routing a call over either a public or
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`private network based on a caller profile was not new—it had been known for
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`years. (EX1003 at ¶¶ 168–189.)
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`C. The Prosecution History
`The ’005 Patent issued from U.S. Patent Application 13/966,096 (“the ’096
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`Application”). (EX1001.) All of 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. 271.)
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`To distinguish Alexander, the Applicant argued that Alexander taught a
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`profile associated with a callee, rather than a caller. (Id. at pp. 337–338.) The
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`Examiner allowed the claims on August 13, 2015. (Id. at p. 426.)
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`Therefore, according to the Applicant, the ʼ005 Patent is novel because it
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`claims using a caller profile. However, the prior art presented in this Petition
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`establishes that routing based on caller profiles was well-known. (EX1003 at
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`¶¶ 168–189.) Had the Examiner considered this art, the ’005 Patent would not
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`have issued. (Id.)
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`V.
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`PRIOR ART
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`Each of the asserted prior art references qualify as prior art under 35 U.S.C.
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`§ 102(b). The PTO has not considered these references in the context of the ʼ005
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`Patent.
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`A. Fisher teaches a system that routes VoIP calls based on a caller
`profile.
`U.S. Patent Publication 2004/0218748 (“Fisher”) was filed on December 23,
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`2003 and published on November 4, 2004. (EX1006.) Fisher discloses routing
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`VoIP calls over the PSTN, Internet, or corporate intranet based on routing rules
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`implemented by a customer premises equipment (“CPE”), shown below.
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`ʼ005 Patent, Figure 1
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`Fisher, Figure 1
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`
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`When a caller initiates a call, the CPE accesses a set of routing rules
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`generated based on the telephone calling plan associated with the customer using
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`the CPE. (Id. at ¶¶ [0032]–[0036].) The routing rules map telephone number
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`characteristics—such as selected area codes, country codes, or other digit
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`patterns—to specific call categories and routing selections. (Id. at ¶¶ [0030]–
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`[0031].) The routing rules are a caller profile for the customer. The CPE
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`compares the dialed number with telephone number characteristics in the routing
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`rules to determine a routing network, such as the PSTN, a corporate intranet for
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`intra-company calls, a partner VoIP network (reached via the Internet) for calls to a
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`partner organization. (Id. at ¶¶ [0023], [0029], [0030], [0031], [0042], [0047],
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`[0051]–[0052].)
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`B. Nadeau teaches a system that routes VoIP calls based on a caller
`profile.
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`U.S. Patent 6,240,449 (“Nadeau”) was filed on November 2, 1998 and
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`issued on May 29, 2001. (EX1005.) Nadeau teaches a system for routing VoIP
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`calls over either an IP network or the PSTN based on information in a caller’s
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`profile.
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`A service logic controller (“SLC”), shown below, routes calls.
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`The SLC stores a database of caller profiles. (Id. at 3:56–65.) Each caller
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`profile contains information about the caller as well as the caller’s personal
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`directory, which includes entries for individual called parties. (Id. at 9:18–23,
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`9:55–10:20.) Each directory entry includes routing information that indicates
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`whether a call to that called party should be routed over an IP network or the
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`PSTN. (Id. at 3:56–4:6, 9:66–10:20.)
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`ʼ005 Patent, Figure 1
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`Nadeau, Figure 1+2
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`When a caller initiates a VoIP call, the call is forwarded to the SLC. (Id. at
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`6:66–7:5, 12:42–47.) The SLC retrieves the caller profile from the database and
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`locates the directory entry for the callee in the caller profile. (Id. at 7:22–27,
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`12:48–52.) Based on the routing information in the directory entry, the SLC
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`determines whether the call should be routed over an IP network or the PSTN. (Id.
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`at 10:8–20, 11:27–31.) The SLC then generates and sends routing instructions to
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`an ACS Gateway and a detection point (also referred to as a DPFE and an SSP (Id.
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`at 6:66–7:9, 11:43–46)) to route the call over the IP network or to an IP-PSTN
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`Gateway for routing over the PSTN (id. at 7:5–9, 7:22–23, 11:27–31, 12:59–61).
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`C. Kelly and Vu 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. (EX1007.) U.S. Patent 6,674,850 (“Vu”) was filed on January 9,
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`2001 and issued on January 6, 2004. (EX1008.)
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`These references disclose systems that route calls over an IP network or the
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`PSTN.
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`VI. STATEMENTS ON THE ART
`A. Level of ordinary skill in the art
`When the ’005 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 ¶¶ 52–53.)
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`B.
`The references are analogous art
`Nadeau, Fisher, Kelly, and Vu are from the same field as the Challenged
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`Claims (telecommunication systems). These references relate to VOIP and call
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`routing, which are pertinent to the problems faced by the ’005 Patent inventors.
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`(EX1003 at ¶ 167.)
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`VII. CLAIM CONSTRUCTION
`Because the ’005 Patent will not expire during the pendency of these
`
`proceedings, the Board should apply the broadest reasonable interpretation (“BRI”)
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`in light of the specification pursuant to 37 C.F.R. § 42.100(b). Petitioner interprets
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`all claim terms in the Challenged Claims in accordance with their plain and
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`ordinary meaning under the BRI for purposes of this proceeding. Petitioner
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`reserves the right to seek a different claim construction in litigation.
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`VIII. THE CHALLENGED CLAIMS ARE UNPATENTABLE.
`A. Claims 74–79, 83–84, 88–89, 92, 94–96, and 98–99 are obvious
`over Fisher in view of Vu. (Ground 1)
`Fisher and Vu are from the same field of endeavor because they’re both
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`from the field of telecommunications systems and address challenges arising from
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`making VoIP calls. (EX1006 at ¶ [0004]; EX1008 at 1:54–2:6.) Additionally,
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`both Fisher and Vu are concerned with routing VoIP calls. (EX1006 at ¶¶ [0004],
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`[0008]; EX1008 at 10:16–11:6.) Therefore, a POSITA would have considered Vu
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`when implementing or improving Fisher. (EX1003 at ¶ 194.)
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`As discussed in more detail below, Fisher teaches a customer premises
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`equipment (CPE) that includes a CPEDRE that routes calls to a VoIP Gateway or a
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`PSTN Gateway based on routing rules. (EX1006 at ¶ [0008].) Fisher recognizes
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`that routing calls based on the routing rules can reduce the cost of making calls.
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`(Id. at ¶ [0033].) However, Fisher does not disclose that the routing rules are
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`caller-specific. Rather, Fisher suggests that all callers who use the CPE are subject
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`to the same set of routing rules. (Id. at ¶ [0029].) As a result, the routing rules
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`may not reduce the cost of making calls for a user, especially if that user has a
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`Petition for Inter Partes Review of Patent No. 9,179,005
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`different calling plan or cost structure than the one used to generate the routing
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`rules. (Id. at ¶ [0035].)
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`However, as discussed in more detail below, Vu teaches a unified access
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`switch that maintains a database of caller-specific subscriber profiles. (EX1008 at
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`3:36–38, 4:25–28.) Each of the profiles define “appropriate routing procedures for
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`respective call termination types.” (Id. at 3:39–41.) Through the profiles, the
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`unified access switch can provide “appropriate routing” of a call. (Id. at 8:7–9.)
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`A POSITA would be motivated to modify the routing rules of Fisher to be
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`caller-specific like the subscriber profiles of Vu to reduce the cost of making calls.
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`(EX1003 at ¶¶ 200–206.) Fisher already recognizes a desire to reduce routing
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`costs. (EX1006 at ¶ [0033].) By modifying the routing rules to be caller-specific,
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`the CPEDRE would be able to route calls on a caller-by-caller basis—based on a
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`user’s preferred calling plan or cost structure—thereby reducing routing costs for
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`individual users. (EX1003 at ¶ 205.)
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`A POSITA could easily modify the routing rules to be caller-specific.
`
`(EX1003 at ¶ 206.) This modification would simply involve the known technique
`
`of programming the CPE to perform the ordinary task of storing multiple sets of
`
`routing rules that are each tied to a particular user. (Id.) Furthermore, modifying
`
`the routing rules to be caller-specific would yield the predictable result of allowing
`
`calls to be routed on a caller-by-caller basis. (Id.)
`
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`Petition for Inter Partes Review of Patent No. 9,179,005
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`1.
`
`Claim 74
`a. Preamble
`
`Fisher-Vu
`“Referring now to FIG. 1, an exemplary system 100 for
`providing and using call routing rules in accordance with the
`present invention allows call routing rules to be downloaded to
`and used by a customer premises equipment (CPE) 124 in
`order to intelligently and automatically route telephone
`calls to one or the other of the PSTN 112 and a VoIP
`network.” (EX1006 at ¶ [0021].)
`
`“The CPE 124 includes a CPE dialing rules engine 128
`which can be coupled to the Internet 106 and to the
`corporate [intranet] 140 via a first gateway 132 adapted to
`provide VoIP
`communications,
`network
`address
`translation (NAT), and firewall provisions.”
` (Id. at
`¶ [0023].)
`
`of
`
`Limitation
`A method
`routing
`communications
`in
`a
`packet
`switched network
`in which a first
`participant
`is
`identifier
`associated with a
`first
`participant
`and
`a
`second
`participant
`is
`identifier
`associated with a
`second participant
`in
`a
`communication
`
`“The CPE 124 can also include an interface 134 for receiving
`signals from IP telephones, and an interface 136 for receiving
`signals from wireless telephones.” (Id. at ¶ [0024].)
`
`“In operation, the CPE dialing rules engine 202 receives a
`
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`Petition for Inter Partes Review of Patent No. 9,179,005
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`telephone call having a called telephone number from an
`interface…. The telephone number characteristic detector 204
`identifies digits within the called telephone number and the
`comparison processor 206 compares the digits within the
`telephone number characteristics 212 a to identify a match.
`If a match if found, a respective one of the routing selections
`212 c directs the routing processor 208 to route the telephone
`call to a selected one of the PSTN gateway 126 and the
`VoIP gateway 132 for transmission to the PSTN or the
`Internet accordingly.” (Id. at ¶ [0042]; see also, id. at ¶
`[0023].)
`
`
` “The configuration manager 144 can provision and/or store
`configuration information associated with the CPE 124, for
`example...routing rules as in Table 1 described more fully
`below.” (Id. at ¶ [0023].)
`
`“The provisioning web site 102 can provide to the PC 150, for
`example, a registration web page to a user (not shown), with
`which the user can register the CPE 124 for services. The
`provisioning web site can also, for example, provide a login
`screen to the user.” (Id. at ¶ [0026].)
`
`“As is also known, at a particular location, a customer can
`often select one of a variety of calling plans, each usually
`having a different cost structure. For example, the customer
`can elect to have a calling plan with free long distance
`calls.” (Id. at ¶ [0035].)
`
`“The CPE 124 can not only be configured for a customer's
`particular calling plans, but can also route calls which do not
`generate revenue for the VoIP service provider (such as local
`and E911 calls) over the PSTN network.” (Id. at ¶ [0058].)
`
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`Petition for Inter Partes Review of Patent No. 9,179,005
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`“At step 308, the management system 104 identifies a
`telephone calling plan associated with the customer...
`
`At step 310, the management system 104 generates routing
`rules...the management system 104 downloads the routing
`rules to the CPE 124, which are provided at step 312 to the
`configuration manager 144 (FIG. 1).” (Id. at ¶¶ [0044]–
`[0045].)
`
`“[T]he management system can provide a routing table (e.g.,
`Table 1 below) having routing rules and associated routing
`paths downloaded to the CPE 124 and used (via pathway 5,
`which can be provided within the CPE 124) by the CPE
`dialing rules engine 128.” (Id. at ¶ [0029].)
`
`
`“A screening class associated with the call originator is
`retrieved from a subscriber profile maintained on the
`originating party. Generally, each calling party accessing the
`switch for originating a call therefrom will have a subscriber
`profile maintained within the switch describing the
`originator's subscription services. The originator's profile
`may include various data relating to call services of the
`subscriber and includes any call screening functions and
`special routing services subscribed to by the originator.”
`
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`Petition for Inter Partes Review of Patent No. 9,179,005
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`(EX1008 at 4:21–30.)
`
`To the extent the preamble is limiting, Fisher-Vu teaches it. (EX1003 at
`
`¶¶ 196–210.) The CPE includes a CPEDRE that routes calls through an IP
`
`network, such as the Internet or corporate intranet (routing communications in a
`
`packet switched network). (EX1006 at ¶ [0042].)
`
`When a caller (first participant) initiates a call (communication) with an IP
`
`phone, the CPEDRE receives a called telephone number (second participant
`
`identifier) for a callee (second participant). (Id. at ¶¶ [0024], [0043].)
`
`Although Fisher-Vu does not explicitly disclose a caller (first participant)
`
`identifier associated with the caller (first participant), a POSITA understood that
`
`there would be such an identifier. (EX1003 at ¶ 207–208.) At a minimum, the
`
`caller utilizing an IP telephone as described in Fisher to place a call would have an
`
`associated IP address for the IP telephone. (EX1003 at ¶ 207.) A POSITA knew
`
`that IP telephones communicate using IP messages, which include headers that
`
`identify the source of the message by providing a source IP address. (EX1003 at
`
`¶¶ 92–94, 207–209.) In placing a call, the IP telephone would communicates that
`
`caller identifier (IP address) to the CPEDRE. (Id.)
`
`In addition, the CPEDRE as modified by Vu in the manner described above
`
`in Section VIII.A locates caller-specific routing rules in the configuration manager.
`
`(EX1006 at ¶¶ [0023], [0029]; EX1008 at 4:21–30.) A POSITA would understand
`
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`Petition for Inter Partes Review of Patent No. 9,179,005
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`that for a system using caller-specific rules to function, the those rules must
`
`include a caller identifier associated with the caller to identify the rules as
`
`belonging to that caller. (EX1003 at ¶ 207.) According to Mr. Bress, if a caller
`
`identifier was not included in the caller-specific routing rules, then it would not be
`
`possible to discern which set of caller-specific routing rules should be retrieved
`
`and referenced when a caller initiates a call. (Id.) Use of the caller’s IP address,
`
`username, or telephone number are all suggested to a POSITA by Fisher-Vu and
`
`any of the three would be obvious to try and simply a matter of design choice.
`
`(EX1003 at ¶ 208.)
`
`b. Limitation 74a
`
`Limitation
`after
`the first
`participant has
`accessed
`the
`packet switched
`network
`to
`initiate
`the
`communication,
`using the first
`participant
`identifier
`locate a
`participant
`profile
`comprising
`plurality
`attributes
`associated with
`the
`first
`participant
`
`to
`first
`
`a
`of
`
`Fisher-Vu
` “The configuration manager 144 can provision and/or store
`configuration information associated with the CPE 124, for
`example...routing rules as in Table 1 described more fully
`below.” (EX1006 at ¶ [0023].)
`
`“The provisioning web site 102 can provide to the PC 150 … a
`registration web page to a user (not shown), with which the user
`can register the CPE 124 for services. The provisioning web
`site can also, for example, provide a login screen to the user.”
`(Id. at ¶ [0026].)
`
`“[A] customer can often select one of a variety of calling
`plans, each usually having a different cost structure. For
`example, the customer can elect to have a calling plan with
`free long distance calls.” (Id. at ¶ [0035].)
`
`“The CPE 124 can not only be configured for a customer's
`particular calling plans, but can also route calls which do not
`generate revenue for the VoIP service provider … over the
`
`
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`Petition for Inter Partes Review of Patent No. 9,179,005
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`PSTN network.” (Id. at ¶ [0058].)
`
`“At step 308, the management system 104 identifies a telephone
`calling plan associated with the customer...
`
`At step 310, the management system 104 generates routing
`rules...the management system 104 downloads the routing
`rules to the CPE 124, which are provided at step 312 to the
`configuration manager 144 (FIG. 1).” (Id. at ¶¶ [0044]–[0045].)
`
`“[T]he management system can provide a routing table (e.g.,
`Table 1 below) having routing rules and associated routing
`paths downloaded to the CPE 124 and used (via pathway 5,
`which can be provided within the CPE 124) by the CPE
`dialing rules engine 128.” (Id. at ¶ [0029].)
`
`
`“[T]he routing rules can include a mapping of telephone
`number characteristics with routing selections. The telephone
`number characteristics…can include...selected country codes
`(for example 011 as the first three digits)...The routing
`selections shown in Table 1 include, but are not limited to, the
`PSTN 112 and the Internet 106 as VoIP.” (Id. at ¶ [0030].)
`
`“The routing rules can also include a listing of telephone call
`
`
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`Petition for Inter Partes Review of Patent No. 9,179,005
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`categories. As shown in Table 1, the telephone call categories
`include, but are not limited to, a local PSTN destination
`category,...a
`local
`intra-company VoIP
`destination
`category,...a local partner VoIP destination category.” (Id. at
`¶ [0031].)
`
`
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`Petition for Inter Partes Review of Patent No. 9,179,005
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`“A database of subscriber profiles is preferably maintained
`within the unified access switch 10 and defines various services
`subscribed to by the subscribers. These services may define
`appropriate routing procedures for respective call termination
`types and may be associated with voice as well as data services
`calls.” (EX1008 at 3:36–49.)
`
`“A screening class associated with the call originator is retrieved
`
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