Paper 6
`Trials@uspto.gov
`571-272-7822 Entered: November 21, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VOIP-PAL.COM INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01198
`Patent 9,179,005 B2
`____________
`
`Before BARBARA A. BENOIT, LYNNE E. PETTIGREW, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`MARGOLIES, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`I. INTRODUCTION
`
`
`
`Apple Inc. (“Petitioner”) filed a Petition for inter partes review of
`claims 1, 24–26, 49, 50, 73–79, 83, 84, 88, 89, 92, 94–96, 98, and 99 of U.S.
`Patent No. 9,179,005 B2 (Ex. 1001, “the ’005 patent”). Paper 2 (“Pet.”).
`Voip-Pal.com, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 5
`
`AT&T, Exh. 1008, p. 1
`
`
`Trials@uspto.gov
`571-272-7822 Entered: November 21, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VOIP-PAL.COM INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01198
`Patent 9,179,005 B2
`____________
`
`Before BARBARA A. BENOIT, LYNNE E. PETTIGREW, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`MARGOLIES, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`I. INTRODUCTION
`
`
`
`Apple Inc. (“Petitioner”) filed a Petition for inter partes review of
`claims 1, 24–26, 49, 50, 73–79, 83, 84, 88, 89, 92, 94–96, 98, and 99 of U.S.
`Patent No. 9,179,005 B2 (Ex. 1001, “the ’005 patent”). Paper 2 (“Pet.”).
`Voip-Pal.com, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 5
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`AT&T, Exh. 1008, p. 1
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`(“Prelim. Resp.”). Institution of an inter partes review is authorized by
`statute when “the information presented in the petition . . . and any
`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.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Upon consideration
`of the Petition and the Preliminary Response, we conclude that the
`information presented shows that there is a reasonable likelihood that
`Petitioner would prevail in establishing the unpatentability of claims 1, 24–
`26, 49, 50, 73–79, 83, 84, 88, 89, 92, 94–96, 98, and 99 of the ’005 patent.
`
`A. Related Matters
`The parties identify the following district court proceedings in which
`the ’005 patent has been asserted: Voip-Pal.com, Inc. v. Apple, Inc., Case
`No. 2-16-cv-00260 (D. Nev.); and Voip-Pal.com, Inc. v. Verizon Wireless
`Services, LLC, Case No. 2-16-cv-00271 (D. Nev.). See Pet. 60–61; Paper 4,
`1.
`
`Petitioner also has filed a petition for inter partes review of claims of
`U.S. Patent No. 8,542,815 (“the ’815 patent”) in IPR2016-001201. Another
`petitioner—Unified Patents Inc.—filed a petition for inter partes review of
`claims of the ’815 patent in IPR2016-01082. We did not institute a trial in
`that case.
`
`B. The ’005 Patent
`The ’005 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 ’005 patent, shown
`below, illustrates a routing controller that facilitates communication between
`callers and callees:
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`2
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`AT&T, Exh. 1008, p. 2
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`Id. at Fig. 7, 14:32–33, 17:26–27. As shown in Figure 7, above, 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 17:28–31. Routing controller 16 queries
`database 18 (shown in Figure 1) to produce a routing message to connect
`caller and callee. Id. at 14:18–25, 14:32–42. Program memory 204 includes
`blocks of code for directing processor 202 to carry out various functions of
`the routing controller. Id. at 17:47–49. Those blocks of code include RC
`request message handler 250, which directs the routing controller to produce
`the routing message. Id. at 17:49–53.
`According to the ’005 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
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`3
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`AT&T, Exh. 1008, p. 3
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`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 14:32–42.
`Figures 8A through 8D of the ’005 patent illustrate a flowchart of an
`RC request message handler executed by the RC processor circuit. Id. at
`11:3–4. Figure 8B, shown below, illustrates steps for performing checks on
`the callee identifier:
`
`
`
`
`Id. at Fig. 8B, 19:53–57. Blocks 257, 380, 390, 396, 402 in Figure 8B above
`effectively “establish call classification criteria for classifying the call as a
`public network call or a private network call.” Id. at 22:58–61. 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
`
`4
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`AT&T, Exh. 1008, p. 4
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`predefined format, i.e. is a valid user name and identifies a subscriber to the
`private network . . . .” Id. at 22:61–23:3. Block 269 also classifies the call
`as public or private, depending on whether the callee is a subscriber to the
`system. Id. at 22:61–23:19, 20:23–33; see also id. at 18:63–19:30.
`
`C. Illustrative Claim
`Among the challenged claims, claims 1, 26, 50, 74, 94, and 99 are
`independent. Claims 1 and 74 are illustrative and read:
`1.
`A process for producing a routing message for routing
`communications between a caller and a callee in a communication
`system, the process comprising:
`using a caller identifier associated with the caller to locate a
`caller dialing profile comprising a plurality of calling attributes
`associated with the caller;
`when at least one of said calling attributes and at least a portion
`of a callee identifier associated with the callee meet private network
`classification criteria, 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; and
`when at least one of said calling attributes and at least a portion
`of said callee identifier meet a public network classification criterion,
`producing a public network routing message for receipt by the call
`controller, said public network routing message identifying a gateway
`to the public network.
`74. 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:
`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;
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`5
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`AT&T, Exh. 1008, p. 5
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`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
`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.
`
`Id. at 36:28–46, 43:41–65.
`
`D. Asserted Grounds of Unpatentability
`Petitioner contends that claims 1, 24–26, 49, 50, 73–79, 83, 84, 88,
`89, 92, 94–96, 98, and 99 of the ’005 patent are unpatentable based on the
`following specific grounds (Pet. 5, 10–60):
`
`6
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`AT&T, Exh. 1008, p. 6
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`References
`
`Basis
`
`Chu ’6841 and
`Chu ’3662
`
`Chu ’684 and
`Chen3
`
`35 U.S.C. § 103(a)
`
`35 U.S.C. § 103(a)
`
`Challenged Claims
`1, 24–26, 49, 50, 73–79, 83,
`84, 88, 89, 92, 94–96, 98, and
`99
`1, 24–26, 49, 50, 73–79, 83,
`84, 88, 89, 92, 94–96, 98, and
`99
`
`In its analysis, Petitioner relies on the declaration testimony of Dr. Henry H.
`Houh (Ex. 1009). See, e.g., Pet. 19, 22, 27–30, 32, 36, 40–41, 48–51, 53,
`60–61.
`
`II. DISCUSSION
`
`A. Claim Construction
`In an inter partes review, we construe claim terms in an unexpired
`patent according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016)
`(upholding the use of the broadest reasonable interpretation standard).
`Consistent with the broadest reasonable construction, claim terms are
`presumed to have their ordinary and customary meaning as understood by a
`person of ordinary skill in the art in the context of the entire patent
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). An inventor may provide a meaning for a term that is different from
`its ordinary meaning by defining the term in the specification with
`
`
`1 U.S. Patent No. 7,486,684 B2, filed Sept. 30, 2003 (Ex. 1006, “Chu ’684”).
`2 U.S. Patent No. 8,036,366 B2, filed Aug. 4, 2006 (Ex. 1007, “Chu ’366”).
`3 U.S. Patent Application Publication No. 2007/0064919 A1, filed Sept. 14,
`2005 (Ex. 1008, “Chen”).
`
`7
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`AT&T, Exh. 1008, p. 7
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`reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994).
`Petitioner proposes constructions for the means-plus-function
`limitations of claims 50 and 73. Pet. 6–9; see 37 C.F.R. § 42.104(b)(3)
`(requiring a petition to set forth, “[w]here the claim to be construed contains
`a means-plus-function or step-plus-function limitation as permitted under 35
`U.S.C. 112(f), . . . the specific portions of the specification that describe the
`structure, material, or acts corresponding to each claimed function”). Patent
`Owner does not expressly propose any claim constructions. For purposes of
`this decision, we determine that the means-plus-function limitations require
`only identification of corresponding structure,4 as set forth below, and no
`other terms require express construction.
`
`1. “means for using” (claim 50)
`Claim 50 recites “means for using a caller identifier associated with
`the caller to locate a caller dialing profile comprising a plurality of calling
`attributes associated with the caller.” Petitioner proposes that the
`corresponding structure for this limitation is RC processor circuit 200
`programmed to implement the algorithm illustrated in cell 254 of Figure 8A.
`Pet. 8. Patent Owner does not challenge Petitioner’s contention that this
`limitation is governed by 35 U.S.C. § 112 ¶ 6 or Petitioner’s identification of
`corresponding structure.
`Based on the current record, we determine that this limitation is
`governed by section 112, paragraph 6. See Williamson v. Citrix Online,
`
`
`4 A means-plus-function limitation is construed to cover the corresponding
`structure described in the specification and equivalents thereof. 35 U.S.C.
`§ 112 ¶ 6.
`
`8
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`AT&T, Exh. 1008, p. 8
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`LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc) (“[T]he use of the
`word ‘means’ in a claim element creates a rebuttable presumption that § 112,
`para. 6 applies.”).
`In applying section 112, paragraph 6, structure disclosed in the
`specification “is ‘corresponding’ structure only if the specification or
`prosecution history clearly links or associates that structure to the function
`recited in the claim.” B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419,
`1424 (Fed. Cir. 1997). If “the disclosed structure is a computer, or
`microprocessor, programmed to carry out an algorithm, the disclosed
`structure is not the general purpose computer, but rather the special purpose
`computer programmed to perform the disclosed algorithm.” WMS Gaming
`v. Int’l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999).
`Based on the current record, we determine that the corresponding
`structure for the “means for using” limitation is: RC processor circuit 200
`programmed to implement the algorithm illustrated in block 254 of Figure
`8A. See Ex. 1001, 11:3–4 (“FIGS. 8A-8D is a flowchart of [an] RC request
`message handler executed by the RC processor circuit shown in FIG. 7.”),
`17:61–66, Figs. 7, 8A block 254 (“Use caller field to get dialing profile for
`caller from database”).
`
`2. “means for . . . producing a private network routing message”
`(claim 50)
`Claim 50 recites “means for, when at least one of said calling
`attributes and at least a portion of a callee identifier associated with the
`callee meet private network classification criteria, producing a private
`network routing message for receipt by a call controller, said private
`network routing message identifying an address, on the private network,
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`9
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`associated with the callee.” Petitioner proposes that the corresponding
`structure for this limitation is: (i) processor 202 programmed to implement
`one or more branches of the algorithm illustrated Figure 8B; and
`(ii) processor 202 of RC processor circuit 200, programmed to implement
`the algorithm illustrated in cell 350 of Figure 8A or cell 644 of Figure 8C.
`Pet. 8. Patent Owner does not challenge Petitioner’s contention that this
`limitation is governed by 35 U.S.C. § 112 ¶ 6 or Petitioner’s identification of
`corresponding structure.
`Based on the current record, we determine that this limitation is
`governed by section 112, paragraph 6, and that the corresponding structure
`is: processor 202 programmed to (i) implement one or more branches of the
`algorithm illustrated Figure 8B that leads to the end of block 406 or block
`279, and (ii) implement the algorithm illustrated in block 350 of Figure 8A
`or block 644 of Figure 8C. See Ex. 1001, 11:3–4, 17:47–53, 19:58–20:58,
`21:23–23:3, 26:49–57, Figs. 7, 8A, 8B, 8C, 16, 32.
`
`3. “means for . . . producing a public network routing message”
`(claim 50)
`Claim 50 recites “means for, when at least one of said calling
`attributes and at least a portion of said callee identifier meet a public
`network classification criterion, producing a public network routing message
`for receipt by the call controller, said public network routing message
`identifying a gateway to the public network.” Petitioner proposes that the
`corresponding structure for this limitation includes at least processor 202
`programmed to implement one or more branches of the algorithm illustrated
`Figure 8B. Pet. 7–8. Petitioner states that Figures 8A, 8C, and 8D “detail,
`among other functions, algorithms which produce network routing
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`messages.” Id. at 8. Petitioner adds that “because [Figure] 8D and the
`corresponding description do not illustrate the basic process of generating
`the claimed message, Petitioner identifies the claimed function as the
`disclosed algorithm.” Id. Specifically, Petitioner proposes that the
`corresponding structure for this limitation also includes processor 202 of RC
`processor circuit 200, programmed to implement the claimed function of
`“producing a public network routing message.” Id.
`Patent Owner does not challenge Petitioner’s contention that the
`“means for . . . producing a public network routing message” limitation is
`governed by 35 U.S.C. § 112 ¶ 6 or Petitioner’s purported identification of
`corresponding structure.
`Based on the current record, we determine that this limitation is
`governed by section 112, paragraph 6, and that the corresponding structure
`is: processor 202 programmed to (i) implement one or more branches of the
`algorithm illustrated Figure 8B that leads to the end of block 410, and (ii)
`implement the algorithm illustrated in Figure 8D. See Ex. 1001, 11:3–4,
`17:47–53, 19:58–20:35, 21:27–23:3, 23:59–24:3 (“Referring to FIG. 21, a
`data structure for a supplier list record is shown. . . . . [T]he specific route
`identifier field 546 holds an IP address of a gateway operated by the supplier
`indicated by the supplier ID field 540.”), 24:54–59 (“[R]eferring to FIG. 25,
`the routing message buffer holds a routing message identifying a plurality of
`different suppliers able to provide gateways to the public telephone network
`(i.e. specific routes) to establish at least part of a communication link
`through which the caller may contact the callee.”), 24:65–67 (“Referring
`back to FIG. 8D, block 568 directs the processor 202 of FIG. 7 to send the
`routing message shown in FIG. 25 to the call controller 14 in FIG. 1.”),
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`24:43–25:12, Figs. 7, 8B, 8D, 21–24, 25 (showing IP addresses of
`gateways).
`
`4. “means for causing” (claim 73)
`Claim 73 recites “means for causing the private network routing
`message or the public network routing message to be communicated to a call
`controller to effect routing of the call.” Petitioner proposes that the
`corresponding structure for this limitation is processor 202 of RC processor
`circuit 200, programmed to perform the algorithm illustrated in cell 381 of
`Figure 8A, cell 646 of Figure 8C, or cell 568 of Figure 8D. Pet. 8–9. Patent
`Owner does not challenge Petitioner’s contention that this limitation is
`governed by 35 U.S.C. § 112 ¶ 6 or Petitioner’s identification of
`corresponding structure.
`Based on the current record, we determine that this limitation is
`governed by section 112, paragraph 6, and that the corresponding structure
`is: processor 202 of RC processor circuit 200, programmed to perform the
`algorithm illustrated in block 381 of Figure 8A, block 646 of Figure 8C, and
`block 568 of Figure 8D. See Ex. 1001, 20:37–58, 24:55–25:12, 26:52–53,
`Figs. 7, 8A, 8C, 8D.
`
`B. Asserted Obviousness over Chu ’684 and Chu ’366
`Petitioner contends that claims 1, 24–26, 49, 50, 73–79, 83, 84, 88,
`89, 92, 94–96, 98, and 99 of the ’005 patent are unpatentable under
`35 U.S.C. § 103(a) as obvious over Chu ’684 and Chu ’366. Pet. 1, 5, 10–
`36. Relying in part on the testimony of Dr. Henry H. Houh, Petitioner
`explains how the references allegedly teach or suggest the claim limitations
`and provides purported reasoning for combining the teachings of the
`references. Id. at 10–36.
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`1. Summary of Chu ’684
`Chu ’684 discloses a communications system for managing calls in an
`Internet Protocol (IP) Virtual Private Network (VPN) and calls to the public
`switched telephone network (PSTN). Ex. 1006, Title, Abstract, 2:51–3:3,
`4:13–14. Figure 2 of Chu ’684, shown below, depicts a portion of the
`communications system:
`
`
`
`Id. at 3:14–15. As shown above in Figure 2, communications system 200
`includes customer premises 105 having IP phones 101, 102, and 103 and
`server 110 connected to a voice over IP (VoIP)-VPN Service Provider (SP)
`at SP central office 205. Id. at 4:24–28. Connection 145 between customer
`premises 205 and SP central office 205 is made via one or more routers 140.
`Id. at 4:28–30. Server 110 communicates with soft-switch 220 with an
`agreed-upon signaling protocol such as Session Invitation Protocol (SIP).
`Id. at 4:49–52. Soft-switch 220 sends appropriate commands to packet
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`switch 210. Packet switch 210 is a special media gateway that accepts voice
`packets from an incoming interface and switches these packets to an
`outgoing interface. Id. at 4:36–39. Soft-switch 220 “is the intelligence of
`the system . . . . For example, it keeps track of the VPN that a location
`belongs to, the dial plans of the subscribers, . . . and the like.” Id. at 4:59–
`63.
`
`Chu ’684’s VoIP network carries both on-net (within the same VoIP
`VPN) and off-net (to PSTN) calls. Id. at 5:17–19. Chu ’684 discloses that
`an “On-Net Call” sequence begins when a user picks up the handset at IP
`phone 101. Id. at 8:39–40, 8:55–56. According to Chu ’684, IP phone 101
`collects dialed digits from the user and sends them to server 110. Id. at
`8:62–64. Chu ’684 discloses that “after receiving all the dialed digits from
`the phone 101, server 110 consults its dial plan to determine whether the call
`is local, to another on-net phone, or to a phone that is on the PSTN.” Id. at
`8:65–9:1. In this on-net example, the call is another on-net phone in another
`location. According to Chu ’684, server 110 sends an SIP invite message to
`soft-switch 220 at central office 205. Id. at 9:2–4. Chu ’684 discloses that
`soft-switch 220 “consults the dial plan for this subscriber” based on the ID
`of server 110. Id. at 9:30–33. From the database associated with the dial
`plan, soft-switch 220 determines, among other things, the IP address of the
`egress packet switch. Id. at 9:34–38. Chu ’684 discloses that soft-switch
`220 sends an SIP invite message to the next soft-switch, the SIP message
`including information such as that “the call is an on-net call for a particular
`VPN.” Id. at 9:50–58.
`Figure 13 of Chu ’684 illustrates a configuration for establishing IP-
`VPN service to the PSTN. Id. at 13:1–3. According to Chu ’684, for an
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`14
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`outgoing call from IP phone 101, the operation is very similar to that of an
`intra-net call. Id. at 13:13–15. Chu ’684 states: “From the dialed digits (of
`a destination phone that is being called, PSTN phone 1301), ingress soft-
`switch 220[] determines that this call is for the PSTN.” Id. at 13:15–18.
`From the same dialed digits, the soft-switch also determines egress PSTN
`gateway 1302 and its controlling soft-switch 1304. Id. at 13:18–20.
`
`2. Summary of Chu ’366
`Chu ’366 discloses a system for intelligent formatting of VoIP
`telephone numbers. Ex. 1007, Abstract. By way of background, Chu ’366
`explains that the International Telecommunication Union’s E.164 protocol
`provides a uniform means for identifying any telephone number in the world
`to any telephony user in the world. Id. at 1:18–20. Chu ’366 states that an
`E.164-formatted number has at most 15 digits, and contains an E.164 prefix
`(typically a + sign), a country code, and a subscriber telephone number. Id.
`at 1:29–31. Chu ’366 explains that when making calls via a traditional
`PSTN, a subscriber is able to enter abbreviated numbers for local and
`national telephone calls. Id. at 1:35–37. For example, for a local call in the
`United States, a user may simply enter the seven digit telephone number
`without an E.164 prefix, the country code or the area code. Id. at 1:37–40.
`By contrast, Chu ’366 states, “there is no such concept of local, long
`distance or national calls when making a call via Internet telephony” because
`even for a call between two local points, that call may be routed by servers
`located across the globe. Id. at 1:44–49.
`According to Chu ’366, then-existing global VoIP service providers
`required users to enter fully formatted E.164 telephone numbers. Id. at
`1:49–51. Chu ’366 describes a system that allows users to enter a phone
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`number that is not E.164-compliant, and transforms that number into one
`that is E.164-compliant using, for example, information from a call origin
`location profile. Id. at 1:67–2:4, 2:16–67.
`
`3. Analysis
`Petitioner generally contends that Chu ’684 teaches call set up
`procedures in which a call processor analyzes attributes of the caller (e.g.,
`the caller’s dial plan) and information identifying the callee (e.g., dialed
`digits) to determine whether the call should be routed to a destination on the
`private packet network or the public PSTN, and that Chu ’366 teaches using
`caller attributes such as country code and area code to reformat the dialed
`digits into a standard format before determining whether the call is public or
`private. Pet. 10–14. Petitioner contends that it would have been obvious to
`a skilled artisan to modify the system described in Chu ’684 with the
`specific dialed digit reformatting teachings of Chu ’366 and that a skilled
`artisan would have recognized that allowing users to place calls as if they
`were dialing from a standard PSTN phone would be desirable, creating a
`system capable of supporting a more intuitive and user friendly interface.
`Pet. 15–16 (citing Ex. 1009 (Houh Decl.) ¶¶ 35–39).
`As to the limitations of claim 1, Petitioner contends that Chu ’684
`teaches the “using a caller identifier . . . to locate a caller dialing profile”
`limitation of claim 1 by teaching using a subscriber’s identifying
`information (e.g., E.164 telephone number) to access a dial plan that
`includes attributes of the subscriber.” Pet. 17–18. For this same limitation,
`Petitioner also argues that Chu ’366 teaches call origin profiles “that include
`calling attributes such as geographic location, country code, and area code.”
`Id. at 18.
`
`16
`
`AT&T, Exh. 1008, p. 16
`
`
`
`IPR2016-01198
`Patent 9,179,005 B2
`
`As to the “producing a private network routing message” and
`“producing a public network routing message” limitations, Petitioner relies
`on teachings from Chu ’366 and Chu ’684. Id. at 18–20. Petitioner argues
`that Chu ’366 teaches reformatting dialed digits to generate an E.164-
`compliant callee identifier “when dialed digits ‘match’ caller attributes, e.g.,
`when the dialed digits equal the national dialing length of the caller’s origin
`destination.” Id. at 18–19. Petitioner also argues that Chu ’684 teaches
`determining “whether the call ‘meets public network classification criteria’
`or ‘private network classification criteria,’” citing the following passage
`from Chu ’684:
`At step 608, after receiving all the dialed digits from the phone
`101, server 110 consults its dial plan to determine whether the
`call is local, to another on-net phone, or to a phone that is on
`the PSTN.
`
`Pet. 19–20 (citing Ex. 1006, 8:65–9:1).
`Having reviewed the record, we determine that Petitioner has shown
`sufficiently for institution that the combination of Chu ’684 and Chu ’366
`teaches the recited limitations of claim 1. See id. at 12–20; Ex. 1006, 8:65–
`9:1, 9:30–49, 4:52–56, 13:12–34; Ex. 1007, 2:38–67, 4:65–5:5, Fig. 6.
`Petitioner also has articulated sufficient reasoning with rational
`underpinning for combining the teachings of Chu ’684 and Chu ’366. Pet.
`15–16. We address Patent Owner’s arguments made in its Preliminary
`Response below.
`
`a. Claim 1: classification criteria
`Patent Owner argues that Petitioner fails to make a sufficient showing
`regarding the “classification criteria” requirements of claim 1. Prelim. Resp.
`16–25. Specifically, Patent Owner argues that Chu ’684’s classifying step
`
`17
`
`AT&T, Exh. 1008, p. 17
`
`
`
`IPR2016-01198
`Patent 9,179,005 B2
`
`does not involve meeting classification criteria based on calling attributes, as
`recited in claim 1. Id. at 16–17. Patent Owner relies in part on Figure 6 of
`Chu ’684, shown below:
`
`
`
`Figure 6 of Chu ’684, above, depicts a sequence for handling an on-
`net call. Ex. 1006, 8:39–40. According to Patent Owner, Petitioner relies on
`step 608, in which server 110 consults a dial plan to classify the call, for the
`“classification criteria” requirement, and improperly relies on subsequent
`step 610, in which soft-switch 220 uses a callee identifier to locate a dial
`plan, for the “using a caller identifier . . . to locate” step. Prelim. Resp. 17–
`19. Given the order of steps illustrated in Figure 6 above, Patent Owner
`argues that Chu ’684’s classifying step 608 “is distinct from” the claimed
`steps of “when at least one of said calling attributes and at least a portion of
`a callee identifier associated with the callee meet private network
`classification criteria, producing a private network routing message . . .” and
`“when at least one of said calling attributes and at least a portion of said
`
`18
`
`AT&T, Exh. 1008, p. 18
`
`
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`IPR2016-01198
`Patent 9,179,005 B2
`
`callee identifier meet a public network classification criterion, producing a
`public network routing message . . . .” Id. at 19.
`We determine that Petitioner has made a sufficient showing at this
`stage. Petitioner does not rely exclusively on Chu ’684 for teaching the
`classification criteria limitations. Rather, Petitioner contends that Chu
`’684’s disclosure of classifying the call based on a dial plan combined with
`Chu ’366’s teaching of reformatting dialed digits based on matching dialed
`digits to caller attributes teaches producing a private or a public network
`routing message when a calling attribute and a portion of a callee identifier
`associated with the callee meet private or public network classification
`criteria, respectively. Pet. 18–19. According to Chu ’684, at step 608,
`server 110 consults its dial plan to determine whether the call is to another
`on-net phone or to the PSTN. Ex. 1006, 8:65–9:1. Petitioner sufficiently
`shows for institution that Chu ’684 discloses the claimed classifying a call as
`a public network call based on public network classification criteria and
`classifying the call as a private network call based on private network
`classification criteria. See Pet. 19–20; Ex. 1006, 8:65–9:4. Petitioner also
`sufficiently shows for institution that Chu ’366 teaches reformatting dialed
`digits based on matching dialed digits to caller attributes such as the country
`code and/or area code for the location from which the caller is placing the
`call. Pet. 12–13, 17–19; Ex. 1007, 2:38–67, 4:65–5:5, Fig. 6. Petitioner also
`indicates that Chu’s reformatting is similar to the reformatting illustrated in
`Figure 8B of the ’005 patent. Pet. 11–13. Patent Owner addresses Chu ’684
`and Chu ’366 individually, and does not consider the combined teachings of
`the references. See Prelim. Resp. 16–25; see also In re Mouttet, 686 F.3d
`1322, 1333 (Fed. Cir. 2012) (citing In re Keller, 642 F.2d 413, 425 (CCPA
`
`19
`
`AT&T, Exh. 1008, p. 19
`
`
`
`IPR2016-01198
`Patent 9,179,005 B2
`
`1981)) (“[T]he test for obviousness is what the combined teachings of the
`references would have suggested to those having ordinary skill in the art.”).
`Patent Owner also argues that Chu ’366 does not disclose
`classification criteria as claimed because all calls in Chu ’366 are assumed to
`be destined for the PSTN. Prelim. Resp. 20. As explained above, Petitioner
`relies on the combined teachings of Chu ’684 and Chu ’366 for teaching the
`classification criteria claim limitations. Moreover, Petitioner does not rely
`on Chu ’366 for teaching private or public network classification criteria.
`Pet. 18–20.
`Patent Owner further argues that the proposed combination “would
`not work.” Prelim Resp. 20. Specifically, Patent Owner argues that
`“Petitioner’s proposal to insert Chu ’366’s ‘reformatting’ prior to Chu ’684’s
`‘classification’ of a call would render Chu ’684’s system unreliable.” Id. at
`22. Patent Owner argues that Chu ’366’s reformatting is directed only to
`public telephone numbers, and that Chu ’684’s private numbering plan “is
`distinct from, and works in parallel with, the ‘public E.164 number plan’
`used for placing calls using public telephone numbers.” Id. at 21. Patent
`Owner makes the unsupported statement at this preliminary stage that “[a]
`skilled person would understand that the purpose of using a ‘private
`numbering scheme’ within an organization is precisely to be free from the
`strictures of PSTN dialing conventions.” Id. at 22.
`At this preliminary stage, Petitioner has sufficiently shown on the
`current record that combining the teachings of Chu ’684 and Chu ’366 in the
`manner proposed by Petitioner is simply the combination of familiar
`elements according to known methods to yield predictable results and thus
`would have been obvious to a person of ordinary skill in the art. See Pet. 19;
`
`20
`
`AT&T, Exh. 1008, p. 20
`
`
`
`IPR2016-01198
`Patent 9,179,005 B2
`
`Ex. 1009 ¶ 38; see also KSR Int’l Co. v. Teleflex Inc., 55
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