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,
`
`v.
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`
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`
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`
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`
`
`VoIP-PAL.COM, INC.,
`
`Patent Owner
`
`
`
`
`Case No. IPR2017-01383
`U.S. Patent 9,179,005
`
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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. IPR2017-01383
`U.S. Patent 9,179,005
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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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.
`Introduction to Claimed Subject Matter ................................................ 5
`B. Ground 1 fails because Fisher and Vu, alone or combined, do not
`disclose claim elements 74b and 74c as recited in Claim 74 ................ 7
`1.
`Overview of Fisher...................................................................... 9
`2.
`Fisher does not disclose that the CPEDRE provides the entire
`routing path for the call to the gateway .................................... 12
`Fisher does not disclose the structure(s) that perform the
`a.
`routing step referred to in ¶0047 .................................... 13
`Fisher teaches that the CPEDRE routes calls only as far
`as the PSTN gateway or the VoIP gateway .................... 15
`Fisher teaches that routing beyond the gateways is
`performed by elements other than the CPEDRE, such as
`the PSTN gateway 126 or the VoIP gateway 132 .......... 17
`The combination of Fisher and Vu fails to disclose or suggest
`the subject matter of Claim 74 .................................................. 19
`C. Ground 1 Fails Because Neither Reference Discloses a First
`Participant Profile as Recited in the Claims ........................................ 21
`There is No Dispute that First Participant Profile Recited in the
`1.
`Claims Requires Caller-Specific Information ........................... 22
`Fisher Does Not Disclose A First Participant Profile As Recited
`In The Claims ............................................................................ 23
`
`3.
`
`2.
`
`b.
`
`c.
`
`-i-
`
`
`
`TABLE OF CONTENTS
`(Cont’d)
`
`Page No.
`
`a.
`
`b.
`
`b.
`
`3.
`
`2.
`
`The “Routing Rules” in Fisher Apply to All Callers
`Using a CPE .................................................................... 23
`Petitioner Has Admitted That Fisher Doesn’t Disclose A
`First Participant Profile ................................................... 23
`Vu Does Not Disclose A First Participant Profile .................... 24
`The “Subscriber Profiles” in Vu are Enterprise Specific
`a.
` ........................................................................................ 24
`The Petitioner’s Assertions That Vu Discloses Caller
`Specific Information Are Unsupported .......................... 25
`D. Ground 1 fails because the motivation to combine is flawed ............. 26
`Calling plans for callers in Vu are not caller-specific and so
`1.
`modifying the routing rules of Fisher to be caller-specific would
`not reduce routing costs. ........................................................... 27
`a.
`Fisher discloses a single calling plan for a CPE ............. 28
`b. Modifying the routing rules of Fisher to be caller-specific
`would not reduce routing costs. ...................................... 30
`The subscriber profiles in Vu are not caller-specific and so the
`combination of Fisher and Vu would not result in caller-specific
`routing rules .............................................................................. 31
`Ground 1 fails with respect to Claim 84 because the combination of
`Fisher and Vu fails to disclose that the address in the first portion is
`accessible through the first participant’s Internet service provider .... 31
`Ground 2 fails because the Petition fails to show how the combination
`of Nadeau and Kelly “produc[es] a second network routing message
`… identifying an address in a second portion of the packet switched
`network, the second portion not controlled by the entity.” ................. 32
`
`E.
`
`F.
`
`-ii-
`
`
`
`1.
`2.
`3.
`
`4.
`
`5.
`
`TABLE OF CONTENTS
`(Cont’d)
`
`Page No.
`
`Overview of Nadeau ................................................................. 33
`Overview of Kelly ..................................................................... 36
`The “routing instructions” in Nadeau do not identify the IP-
`PSTN Gateway .......................................................................... 37
`The Petitioner’s assertion that the “routing instructions” in
`Nadeau “must” include an identification of the IP-PSTN
`Gateway is unsupported ............................................................ 39
`The Petitioner fails to explain how Nadeau would be modified
`such that a second network routing message is produced which
`identifies an address in a second portion of the packet switched
`network, the second portion not controlled by the entity as
`recitd in the claims .................................................................... 43
`Petitioner proposes to use the call packet produced by
`a.
`Kelly’s gateway selection process as routing instructions
`in Nadeau ........................................................................ 46
`Petitioner fails to explain how modifying Nadeau’s SLC
`to produce a call packet as taught by Kelly, leads to
`“producing a second network routing message …
`identifying an address in a second portion of the packet
`switched network, the second portion not controlled by
`the entity” as claimed ..................................................... 46
`The Petition has not indicated where the
`i.
`call packet would be sent ..................................... 47
`The Petition fails to explain how the call
`packet would be modified such that the
`proposed combination produces a
`second network routing message …
`identifying an address in a second
`
`ii.
`
`b.
`
`-iii-
`
`
`
`TABLE OF CONTENTS
`(Cont’d)
`
`Page No.
`
`G.
`
`portion of the packet switched network,
`the second portion not controlled by the
`entity. .................................................................... 49
`The Petitioner’s rationale for combining Nadeau-Kelly is simplistic
`and incomplete, and is not fairly based upon the cited arts’ teachings
` ............................................................................................................. 51
`Petitioner overlooks that Nadeau does not need Kelly’s solution
`1.
`to perform least cost routing, thus there is no motivation to
`combine ..................................................................................... 53
`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 ............................................................. 56
`Petitioner’s analysis of the modifications required is too
`truncated and simplistic to establish a reasonable expectation of
`success ....................................................................................... 60
`III. CONCLUSION .................................................................................................. 65
`
`2.
`
`3.
`
`
`
`-iv-
`
`
`
`TABLE OF AUTHORITIES
`
`Page No(s).
`
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`800 F.3d 1375 (Fed. Cir. 2015) .......................................................................... 40
`
`Innogenetics, N.V. v. Abbott Laboratories,
`512 F.3d 1363 ..................................................................................................... 52
`
`Interconnect Planning Corporation v. Feil
`774 F.2d 1132 (1985) .......................................................................................... 59
`
`Ex parte Kastelewicz,
`Appeal 2008-004808 (June 9, 2009) .................................................................. 55
`
`Kinetic Concepts, Inc., v. Smith and Nephew, Inc.,
`688 F. 3d. 1342 (Fed. Cir. 2012) ........................................................................ 55
`
`In re Kotzab,
`217 F.3d 1365 (Fed. Cir. 2000) .................................................................... 51, 52
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................... 52, 56
`
`In re McLaughlin,
`443 F.2d 1392 (C.C.P.A. 1971) .......................................................................... 64
`
`In re NuVasive, Inc.,
`842 F.3d 1376 (Fed. Cir. 2016) .................................................................... 26, 52
`
`PAR Pharma., Inc. v. TWI Pharmas., Inc.,
`773 F.3d 1186 (Fed. Cir. 2014) .......................................................................... 40
`
`Personal Web Technologies, LLC v. Apple, Inc.,
`848 F.3d 987 (Fed. Cir. 2017) ...................................................................... 26, 51
`
`Rohm & Haas Co. v. Brotech Corp.,
`127 F.3d 1089 (Fed. Cir. 1997) .......................................................................... 60
`
`-v-
`
`
`
`TABLE OF AUTHORITIES
`(Cont’d)
`
`Page No.
`
`Stryker Corp. v. Karl Storz Endoscopy-America, Inc.,
`IPR2015-00764, Paper 13 (P.T.A.B., Sep. 2, 2015) ........................................... 55
`
`In re Wesslau,
`353 F.2d 238, 53 C.C.P.A. 746 (1965) ............................................................... 57
`
`OTHER AUTHORITIES
`
`35 U.S.C. § 103 .................................................................................................... 2, 33
`
`35 U.S.C. § 312 ........................................................................................................ 44
`
`35 U.S.C. § 313 .......................................................................................................... 1
`
`35 U.S.C. § 314 .......................................................................................................... 2
`
`37 C.F.R. § 42.6 ....................................................................................................... 40
`
`37 C.F.R. § 42.22 ..................................................................................................... 44
`
`37 C.F.R. § 42.65 ............................................................................................... 41, 60
`
`37 C.F.R. § 42.104 ................................................................................................... 44
`
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. .................................................... 60
`
`
`
`-vi-
`
`
`
`IPR2017-01383
`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. 9,179,005 (the ’005 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. 9,179,005, which is the subject of the present proceeding.
`
`Petitioner challenges Claims 74-79, 83-84, 88-89, 92, 94-96, and 98-99 of
`
`the ’005 Patent on two grounds:
`
`-1-
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`
`
`IPR2017-01383
`AT&T v. Voip-Pal
`
`1.
`
`Petitioner alleges obviousness of Claims 74-79, 83-84, 88-89, 92, 94-
`
`96, and 98-99 under pre-AIA 35 U.S.C. § 103(a) over U.S. Patent Publication No.
`
`2004/0218748 to Fisher (“Fisher”) in view of U.S. Patent No. 6,674,850 to Vu
`
`(“Vu”) (“Ground 1”).
`
`2.
`
`Petitioner alleges obviousness of Claims 74-79, 83-84, 88-89, 92, 94-
`
`96, and 98-99 under pre-AIA 35 U.S.C. § 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”)
`
`(“Ground 2”).
`
`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 Ground 1 fails because neither Fisher nor Vu taken alone or in
`
`combination discloses or suggests the subject matter recited in the Claims, and in
`
`particular, at least “when at least one of the first participant attributes and at least a
`
`portion of the second participant identifier meet a first network classification
`
`criterion, producing a first network routing message for receipt by a controller, the
`
`first network routing message identifying an address in a first portion of the packet
`
`-2-
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`
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`IPR2017-01383
`AT&T v. Voip-Pal
`
`switched network, the address being associated with the second participant, the
`
`first portion being controlled by an entity” and “when at least one of the first
`
`participant attributes and at least a portion of the second participant identifier meet
`
`a second network classification criterion, producing a second network routing
`
`message for receipt by the controller, the second network routing message
`
`identifying an address in a second portion of the packet switched network, the
`
`second portion not controlled by the entity” as recited in Claim 74. Each of
`
`independent claims 94 and 99 recite similar elements. As detailed below,
`
`Petitioner’s argument that the combination of Fisher and Vu provide the subject
`
`matter of the claims is premised on Petitioner’s flawed understanding of the
`
`functionality of the system in Fisher.
`
`Petitioners Ground 1 also fails because neither Fisher nor Vu discloses a first
`
`participant profile as recited in the claims. As detailed herein, the “first participant
`
`profile” recited in the claims requires caller-specific information and contrary to
`
`Petitioner’s arguments, neither Fisher nor Vu discloses caller-specific information
`
`in a profile.
`
`Petitioner’s Ground 1 also fails because Petitioner’s proposed motivation for
`
`combining Fisher and Vu in the fashion claimed by the ’005 Patent is flawed. As
`
`set out below, contrary to Petitioner’s assertions, calling plans in Fisher are not
`
`caller-specific. Therefore, the least cost choice for a routing selection is
`
`-3-
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`
`
`IPR2017-01383
`AT&T v. Voip-Pal
`
`independent of the particular caller and so modifying the routing rules of Fisher to
`
`be caller-specific would not reduce routing costs.
`
`Petitioner’s Ground 1 also fails with respect to Claim 84 because neither
`
`Fisher nor Vu taken alone or in combination discloses or suggests that the address
`
`in the first portion is accessible through the first participant’s Internet service
`
`provider as recited in Claim 84. As set out below, contrary to Petitioner’s
`
`argument, Fisher does not disclose or suggest that the corporate intranet is
`
`accessible through the ISP 110 and so Fisher does not disclose that the IP address
`
`of a callee on the corporate intranet is accessible through the caller’s ISP.
`
`Petitioner’s Ground 2 also fails. Petitioner’s Ground 2 does not establish a
`
`reasonable likelihood that the claims will be found obvious because Petitioner has
`
`not shown that any combination of the references leads to all elements of the
`
`challenged independent claims at least because Petitioner’s inherency argument is
`
`incorrect, and Petitioner failed to recognize that Kelly’s “call packet” cannot be
`
`used in Nadeau’s system.
`
`Petitioner’s Ground 2 also fails because 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
`
`-4-
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`
`
`IPR2017-01383
`AT&T v. Voip-Pal
`
`over the PSTN” – without any explanation of why Kelly’s teachings would be
`
`expected to yield such an “improvement.” Petition at 56. 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 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 74-79, 83-84, 88-89, 92, 94-96, and 98-99 of the ’005 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 Claim 74, which recites:
`
`74. [74p] A method of routing communications in a packet
`switched network in which a first participant identifier is associated
`with a first participant and a second participant identifier is associated
`with a second participant in a communication, the method comprising:
`
`[74a] after the first participant has accessed the packet switched
`network to initiate the communication, using the first participant
`identifier to locate a first participant profile comprising a plurality of
`attributes associated with the first participant;
`
`-5-
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`
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`IPR2017-01383
`AT&T v. Voip-Pal
`
`
`[74b] when at least one of the first participant attributes and at
`least a portion of the second participant identifier meet a first network
`classification criterion, producing a first network routing message for
`receipt by a controller, the first network routing message identifying
`an address in a first portion of the packet switched network, the
`address being associated with the second participant, the first portion
`being controlled by an entity; and
`
`[74c] when at least one of the first participant attributes and at
`least a portion of the second participant identifier meet a second
`network classification criterion, producing a second network routing
`message for receipt by the controller, the second network routing
`message identifying an address in a second portion of the packet
`switched network, the second portion not controlled by the entity.
`
`
`The method of Claim 74 is directed to telecommunications call routing in a
`
`packet switched network. The routing method facilitates identification of addresses
`
`in first and second portions of a packet switched network based on whether
`
`attributes of a first participant profile and at least a portion of a second participant
`
`identifier meet certain classification criteria. For example, when a first participant
`
`initiates a communication, the communication may be routed to an identified
`
`address by a controller to facilitate communication.
`
`-6-
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`
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`IPR2017-01383
`AT&T v. Voip-Pal
`
`Claim 74 does not simply recite that a call is routed when the attributes of a
`
`first participant profile and at least a portion of a second participant identifier meet
`
`certain classification criteria. Rather, when a classification criterion is met, steps
`
`are taken to facilitate routing the communications to the second participant by
`
`producing a routing message. For example, Claim 74 recites that when a first
`
`network classification criterion is met, a first network routing message is produced
`
`for receipt by a controller, the first network routing message identifying an address
`
`in a first portion of the packet switched network, the address being associated with
`
`the second participant, the first portion being controlled by an entity. Claim 74
`
`also recites that when the second network classification criterion is met, a second
`
`network routing message is produced for receipt by the controller, the second
`
`network routing message identifying an address in a second portion of the packet
`
`switched network, the second portion not controlled by the entity.
`
`B. Ground 1 fails because Fisher and Vu, alone or combined, do not
`disclose claim elements 74b and 74c as recited in Claim 74
`
`Claim element 74b recites “when at least one of the first participant
`
`attributes and at least a portion of the second participant identifier meet a first
`
`network classification criterion, producing a first network routing message for
`
`receipt by a controller, the first network routing message identifying an address in
`
`a first portion of the packet switched network, the address being associated with
`
`-7-
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`
`
`IPR2017-01383
`AT&T v. Voip-Pal
`
`the second participant ...” (emphasis added). Claim element 74c recites “when at
`
`least one of the first participant attributes and at least a portion of the second
`
`participant identifier meet a second network classification criterion, producing a
`
`second network routing message for receipt by the controller, the second network
`
`routing message identifying an address in a second portion of the packet switched
`
`network …” (emphasis added). Similar elements are recited in Claims 94 and 99.
`
`The Petition asserts that these claim elements are taught by Fisher’s “customer
`
`premises equipment dialing rules engine” (“CPEDRE”). (Petition at 31-32 and 35-
`
`36). However, the Petitioner has mistakenly attributed functions to the CPEDRE
`
`that are performed by distinct components of Fisher’s system. For this reason, the
`
`Petitioner’s assumptions about what type of information is sent from the CPEDRE
`
`is flawed. When interpreted correctly, Fisher does not disclose that the CPEDRE
`
`produces “routing messages” that satisfy the features recited in Claim 74.
`
`Specifically, the Petitioner argues that Fisher discloses that the CPEDRE
`
`provides an entire routing path to the gateways disclosed in Fisher and on this basis
`
`proposes that a routing message must be sent by the CPEDRE to the gateway that
`
`includes a destination IP address of the callee or an address on the Internet
`
`(Petition at 32 and 36).
`
`However, the Petition’s argument fails because, as explained below, contrary to
`
`Petitioner’s assertions, Fisher’s CPEDRE does not provide the entire routing path
`
`-8-
`
`
`
`IPR2017-01383
`AT&T v. Voip-Pal
`
`for a call to a VoIP gateway, and, thus, Petitioner’s basis for alleging that the
`
`CPEDRE must send the proposed routing message is flawed. Accordingly,
`
`Fisher’s CPEDRE does not perform the above-noted claim elements 74b & 74c.
`
`1. Overview of Fisher
`
`Fisher discloses “a method and system for providing and using telephone
`
`call routing rules” (Abstract). Referring to Figure 1, Fisher discloses “an
`
`exemplary system 100 includ[ing] a provisioning web site 102 and a management
`
`system 104 coupled to an Internet protocol (IP) backbone 108 within the Internet
`
`106. The IP backbone is coupled to the [customer premises equipment (“CPE”)]
`
`124 via an Internet service provider (ISP) 110. The CPE can also be coupled to the
`
`PSTN 112 and to an intranet, for example a corporate intranet 140.” (¶0022).
`
`-9-
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`IPR2017-01383
`AT&T v. Voip-Pal
`
`
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`“The CPE 124 includes a CPE dialing rules engine [(“CPEDRE”)] 128
`
`which can be coupled to the Internet 106 and to the corporate internet 140 via a
`
`first gateway 132 adapted to provide VoIP communications, network address
`
`translation (NAT), and firewall provisions.” (¶0023). Fisher does not disclose or
`
`suggest that the CPEDRE routes calls beyond the gateways. Rather, Fisher
`
`discloses that the gateways route the calls to the PSTN or to the VoIP network, not
`
`the CPEDRE. (¶0010).
`
`Fisher discloses “a routing table (e.g., Table 1 [at ¶0031]) having routing
`
`rules and associated routing paths downloaded to the CPE 124 and used (via
`
`-10-
`
`
`
`IPR2017-01383
`AT&T v. Voip-Pal
`
`pathway 5, which can be provided within the CPE 124) by the [CPEDRE] 128.
`
`The routing rules and associated routing paths can be used by the CPE 124 to
`
`identify telephone number characteristics of telephone calls received with the
`
`interfaces 130, 134, 136. The CPE can route a telephone call according to the
`
`routing rules, to a selected one of the PSTN 112 and the Internet 106, for example,
`
`as a VoIP telephone call” (¶0029).
`
`
`
`
`
`-11-
`
`
`
`IPR2017-01383
`AT&T v. Voip-Pal
`
`Regarding use of the terms “routing”, “routing path”, and “route”, Fisher
`
`provides the following guidance:
`
`[0020] As used herein, “routing” refers to a selection of one network
`from among two or more networks within which to direct a telephone
`call. Routing provides selection of a “routing path,” or a “route”
`which, as used herein, refers to the one selected network. Therefore, it
`will be understood that, as used herein, the routing path does not
`necessarily correspond to an entire connection path between a source
`of a telephone call and a destination of a telephone call.
`
`Accordingly, Fisher imparts non-traditional and narrow definitions to the words
`
`“routing”, “routing path” and “route”. With these definitions in mind, Fisher
`
`discloses that the CPEDRE includes “a routing processor 208 adapted to route a
`
`telephone call to a selected one of the PSTN gateway 126 [ ] and the VoIP gateway
`
`132 [ ] according to routing rules 212”. (¶0040). By routing the call to the selected
`
`one of the gateways, the CPEDRE provides selection of the “routing path” or
`
`“route”. As detailed below, Fisher does not disclose or suggest that the CPEDRE
`
`routes calls beyond the gateways. Rather, Fisher discloses that the gateways, not
`
`the CPEDRE, route the calls to the PSTN or to the VoIP network. (¶0010).
`
`2.
`
`Fisher does not disclose that the CPEDRE provides the entire
`routing path for the call to the gateway
`
`Petitioner and its Declarant assert that the above-noted Claim elements 74b & c
`
`are met by Fisher’s CPEDRE based on Petitioner’s view that the CPEDRE
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`IPR2017-01383
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`provides the entire routing path for a call to the gateway. (Petition at 31-32 and
`
`35-36; Declaration at ¶¶223, 225, 232, and 234). This is incorrect for at least the
`
`following reasons, detailed in the sections below:
`
`a.
`
`Fisher does not disclose the structure(s) that perform the routing step
`
`referred to in ¶0047;
`
`b.
`
`Fisher teaches that the CPEDRE routes calls only as far as the PSTN
`
`gateway or the VoIP gateway; and
`
`c.
`
`Fisher teaches that routing beyond the gateways is performed by
`
`elements other than the CPEDRE, such as the PSTN gateway 126 or
`
`the VoIP gateway 132.
`
`As detailed below, the CPEDRE in Fisher does not provide the entire routing
`
`path for a call to the gateway and so Petitioner’s basis for proposing that a routing
`
`message is sent by the CPEDRE to the gateway, the routing message including a
`
`destination IP address of the callee or an address on the Internet, is lacking.
`
`a.
`
`Fisher does not disclose the structure(s) that perform the
`routing step referred to in ¶0047
`
`Petitioner and its Declarant’s theory of obviousness relies on ¶0047 as
`
`allegedly providing support for the assertion that the CPEDRE provides the entire
`
`routing path for a call to the gateway. See, for example, pages 31-32 and 35-36 of
`
`the Petition; see ¶¶223, 225, 226, 228, 232, 234, and 235 of the Declaration.
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`IPR2017-01383
`AT&T v. Voip-Pal
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`However, Petitioner’s reliance on ¶0047 is misguided. The portion of ¶0047
`
`relating to routing is reproduced below, with emphasis added on the sentence
`
`relating to providing an entire routing path for a call:
`
`If a match is found, the telephone call is routed at step 320 according
`to the routing rules 212, to a network mapped to the matched
`telephone number characteristic in the routing rules 212, which can be
`a selected one of the PSTN and the Internet. As described above, the
`routing at step 320 provides a selection of a network, but does not
`necessarily form of an entire routing path, generating a connection
`between a source and a destination of the telephone call. However, in
`other embodiments, the routing at step 320 provides the entire routing
`path, generating a connection between a source and a destination of
`the telephone call. (emphasis added).
`
`The final sentence of this paragraph refers to an alternative embodiment of
`
`performing a routing step where the entire routing path is provided, and a
`
`connection between a source and a destination of the telephone call is generated in
`
`the routing step. (¶0047). However, nothing in this paragraph or elsewhere in
`
`Fisher indicates that the routing step of providing the entire routing path is
`
`performed by the CPEDRE.
`
`Rather, ¶0047 of Fisher simply mentions that the routing path is generated
`
`by the routing step without identifying the structure that performs the routing step.
`
`As discussed below, elsewhere Fisher teaches various components that can
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`IPR2017-01383
`AT&T v. Voip-Pal
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`perform routing to complete the connection between source and destination, such
`
`as the PSTN gateway 126 and the VoIP gateway 132 (see ¶0010), the CPEDRE,
`
`and other components from the system 100 shown in Figure 1 (see ¶¶0040 &
`
`0042), or a plurality of these components. Paragraph 0047 does not identify which
`
`structure(s) are involved in the embodiment in which the entire routing path is
`
`provided. As discussed below, a proper reading of Fisher would not lead a
`
`POSITA to believe that the CPEDRE provides the entire routing path itself
`
`because Fisher teaches only a limited role for the CPEDRE.
`
`If Fisher had intended that the routing at step 320 was performed specifically
`
`by the routing processor or the CPEDRE, Fisher would have provided express
`
`disclosure of this. Notably, for steps 316 and 318, which precede routing at step
`
`320, Fisher is explicit in stating that these steps are performed by the telephone
`
`number characteristic detector 204 and the comparison processor 206, respectively.
`
`(¶0047). Therefore, Fisher’s teachings do not support the Petitioner’s argument
`
`that the CPEDRE performs routing that provides the entire routing path of a call to
`
`the gateway.
`
`b.
`
`Fisher teaches that the CPEDRE routes calls only as far as
`the PSTN gateway or the VoIP gateway
`
`Fisher’s teachings do not substantiate the CPEDRE performing the routing
`
`step when routing involves providing the entire routing path for a call because
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`IPR2017-01383
`AT&T v. Voip-Pal
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`Fisher teaches that the CPEDRE routes calls only as far as the PSTN gateway 126
`
`or the VoIP gateway 132.
`
`Fisher provides the following statements regarding how the CPEDRE
`
`performs routing:
`
`The CPE dialing rules engine 202 also includes a comparison
`processor 206 adapted to compare the called telephone number digits
`with routing rules 212, and a routing processor 208 adapted to route
`the telephone call to a selected one of the PSTN gateway 126 (FIG. 1)
`and the VoIP gateway 132 (FIG. 1) according to the routing rules 212.
`[emphasis added] (¶0040)
`[…]
`If a match [is] found, a respective one of the routing selections 212c
`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. (emphasis
`added) (¶0042).
`
`These statements indicate that the call is routed by the CPEDRE only as far
`
`as the PSTN gateway 126 or the VoIP gateway 132. In contrast, when Fisher
`
`describes how the broader CPE 124 or system 100 performs routing, the calls are
`
`described as routed not just to a gateway, but past the gateway to the PSTN 112 or
`
`the Internet 106 (see, for example, ¶¶0029, 0032, 0047, 00
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