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.
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`Digifonica (International) Limited
`Patent Owner
`
`––––––––––
`
`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
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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.
`
`
`
`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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`
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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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`IPR Threshold ................................................................................ 5
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`IV.
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`ʼ005 Patent Overview ................................................................................ 5
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`A.
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`B.
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`C.
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`Technical Background ................................................................... 5
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`The Purported Invention ................................................................ 5
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`Prosecution History ....................................................................... 7
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`V.
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`The Prior Art ............................................................................................. 7
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`A.
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`Nadeau’s system routes VoIP calls based on a caller profile. ....... 7
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`i
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`Petition for Inter Partes Review of Patent No. 9,179,005
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`B.
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`Kelly and Vaziri also teach call routing systems. ........................ 10
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`VI. Statements on the Art .............................................................................. 10
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`A.
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`B.
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`Level of ordinary skill in the art .................................................. 10
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`The references are analogous art ................................................. 10
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`VII. Claim Construction ................................................................................. 11
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`A.
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`B.
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`C.
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`D.
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`Claim 50: “means for using” ....................................................... 11
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`Claim 50: “means for...producing a private network routing
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`message” ...................................................................................... 11
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`Claim 50: “means for...producing a public network routing
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`message” ...................................................................................... 12
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`Claim 73: “means for causing” .................................................... 14
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`VIII. The Challenged Claims Are Unpatentable. ............................................. 15
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`A.
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`B.
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`Claims 1, 24–26, and 49 are obvious over Nadeau in view of
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`Kelly. (Ground 1) ........................................................................ 15
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`Claims 50 and 73 are obvious over Nadeau in view of Kelly
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`and Vaziri (Ground 2) .................................................................. 32
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`IX. Conclusion ............................................................................................... 63
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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 Petition 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 No. 6,594,254 (“Kelly”)
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`1007 U.S. Patent No. 7,715,413 (“Vaziri”)
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`1008 Decision of Institution of Inter Partes Review, Case IPR2016-01198,
`Paper 6 (November 21, 2016)
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`1009
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`“Telecommunications Essentials,” by Lillian Goleniewski, copyright
`2002
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`1010
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`IETF RFC 791 (September 1981)
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`1011
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`ITU H.323 (July 2003)
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`1012
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`Telcordia SR-2275, Issue 4, October 2000
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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 1, 24–26, 49–50, and 73 (the “Challenged Claims”) of US Patent No.
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`9,179,005 (“the ’005 Patent”), assigned to Digifonica (International) Limited
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`(“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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`2
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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 $23,000. See 37 C.F.R. § 42.15.
`
`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
`Nadeau in view of Kelly
`1
`1, 24–26, 49
`Nadeau in view of Kelly and Vaziri
`2
`50 and 73
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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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`The grounds in this Petition are not redundant of the grounds set forth in the
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`Apple IPR. (See EX1008 at pp. 6–7.) First, none of the references cited in this
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`Petition were cited in Apple’s petition. Second, each of the references cited in this
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`Petition for Inter Partes Review of Patent No. 9,179,005
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`Petition qualifies as prior art under § 102(b), whereas Apple’s references qualified
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`as prior art only under § 102(e) and could therefore be sworn behind.
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`IPR Threshold
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`C.
`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
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`is obvious in view of the prior art under pre-AIA 35 U.S.C. § 103(a).
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`IV.
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`ʼ005 PATENT OVERVIEW
`A. Technical Background
`The ʼ005 Patent claims priority to a provisional application filed on
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`November 2, 2006 and relates to routing voice-over-IP (“VoIP”) calls, which were
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`well-known at that time. (EX1001 at 1:16–18.) These calls could be routed over
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`circuit-switched networks like the public switched telephone network (“PSTN”) or
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`packet-switched networks like the Internet or private corporate networks,
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`depending on various criteria. (Id. at 1:20–33)
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`Selecting the appropriate routing network was not a new problem. (EX1003
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`at ¶¶ 58–60.) Many telecommunications companies had already filed and received
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`patents addressing this problem. Notably, some of these patents disclosed
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`selecting the appropriate routing network based on a caller profile.
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`The Purported Invention
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`B.
`The ’005 Patent’s purported invention is a system that performs two well-
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`known functions, as illustrated below: (1) determining the type of network to route
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`Petition for Inter Partes Review of Patent No. 9,179,005
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`a VoIP call based on a caller profile; and (2) producing a routing message to route
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`the call.
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`
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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 known for years. (EX1003 at
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`¶¶ 172–188.)
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`Prosecution History
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`C.
`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 based on U.S. Patent
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`6,798,767 to Alexander et al. (“Alexander”) in combination with other references.
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`(EX1002 at pp. 270–271.)
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`The Applicant amended the claims in a Response dated 5/15/2015 and
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`argued that Alexander taught a profile associated with a callee and not a caller
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`profile. (Id. at pp. 337–338.) The Examiner allowed the claims on August 13,
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`2015. (Id. at p. 426.)
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`Therefore, according to the Applicant, the ʼ005 Patent was novel because it
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`claimed 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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`¶¶ 172–188.) Had the Examiner considered this art, the ʼ005 Patent would not
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`have issued.
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`V. THE PRIOR ART
`Nadeau, Kelly, and Vaziri qualify as prior art under 35 U.S.C. § 102(b). The
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`PTO has not considered these references in the context of the ʼ005 Patent.
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`A. Nadeau’s system routes VoIP calls based on a caller profile.
`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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`
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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, it is forwarded to the SLC. (Id. at 6:66–
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`7:5, 12:42–47.) The SLC retrieves the caller profile from the database and locates
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`the callee’s directory entry in the caller profile. (Id. at 7:22–27, 12:48–52.) Based
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`on the routing information in the directory entry, the SLC determines whether the
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`call should be routed over an IP network or the PSTN. (Id. at 10:8–20, 11:27–31.)
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`The SLC then generates and sends routing instructions to an ACS Gateway and a
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`detection point (also referred to as a DPFE and an SSP (Id. at 6:66–7:9, 11:43–46))
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`to route the call over the IP network or to an IP-PSTN Gateway for routing over
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`the PSTN (Id. at 7:5–9, 7:22–23, 11:27–31, 12:59–61).
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`B.
`Kelly and Vaziri 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. (EX1006.) U.S. Patent 7,715,413 (“Vaziri”) was filed on October
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`25, 2004 and published on April 28, 2005. (EX1007.)
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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 was a person having at least a
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`bachelor’s degree in electrical engineering, or in a related field, with at least 2–4
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`years of industry experience in designing or developing packet-based and circuit-
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`switched systems. Additional industry experience or technical training may offset
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`less formal education, while advanced degrees or additional formal education may
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`offset lesser levels of industry experience. (EX1003 at ¶¶ 52–56.)
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`The references are analogous art
`
`B.
`Nadeau, Kelly, and Vaziri are from the same field as the Challenged Claims
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`(telecommunication systems). These references relate at least to VOIP and call
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`routing, which are pertinent to the problems faced by the ’005 Patent. (EX1003 at
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`¶ 171.)
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`VII. CLAIM CONSTRUCTION
`Because the ’005 Patent will not expire during the pendency of these
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`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). Each term
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`identified below is governed by 35 U.S.C. §112, ¶ 6. Petitioner offers
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`constructions under the broadest reasonable interpretation (“BRI”), and identifies
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`corresponding structure only for this Petition. Petitioner interprets all other claim
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`terms in the Challenged Claims in accordance with their plain and ordinary
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`meaning under the BRI for purposes of this proceeding. Petitioner reserves the
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`right to advance different arguments in district court litigation.
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`A. Claim 50: “means for using”
`The corresponding structure is a processor programmed to implement the
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`algorithm illustrated in block 254 of Figure 8A. (EX1001 at 17:61–65, Figures 7,
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`8A.)
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`B. Claim 50: “means for...producing a private network routing
`message”
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`The corresponding structure is a processor programmed to (i) implement one
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`or more branches of the algorithm illustrated in Figure 8B that leads to the end of
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`block 406 or block 279 (EX1001 at 11:3–4, 17:47–53, 19:58–20:35, 21:27–23:3,
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`22:58–61, Figures 7, 8B) and (ii) produce a routing message identifying an
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`address on the private network with which the callee identified by the contents of
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`the callee ID buffer is associated OR implement the algorithm illustrated in block
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`644 of Figure 8C (id. at 20:37–53, 26:49–57).
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`The italicized portion of this proposed construction differs from the Board’s
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`preliminary construction in the Apple IPR. That portion of the Board’s
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`construction instead read “implement the algorithm illustrated in block 350 of
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`Figure 8A.” (EX1008 at p. 10.) However, under the BRI, at least part of Block
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`350 is not necessary for performing the “producing” function. The “producing”
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`function requires that the routing message need only contain “an address, on the
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`private network, associated with the callee.” (EX1001 at 41:26-28). In contrast,
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`Block 350 includes the following elements that are unnecessary to “producing” the
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`claimed “routing message”: “contents of caller, callee from RC request” and
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`“TTL=99999.” (Id. at Fig. 8A.) Moreover, the specification clarifies that any
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`“node on the private network with which the callee is associated” will suffice in
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`place of a “supernode.” (Id. at 20:56-58.) Additionally, the specification teaches
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`the setting of the TTL as separate from the “producing” of the routing message,
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`and treats the TTL=99999 as simply an “example.” (Id. at 20:49-53 (“to produce a
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`routing message … and to set a time to live”).)
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`C. Claim 50: “means for...producing a public network routing
`message”
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`The corresponding structure is a processor programmed to (i) implement one
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`or more branches of the algorithm illustrated in Figure 8B that leads to the end of
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`12
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`block 408 (EX1001 at 11:3–4, 17:47–53, 19:58–20:35, 21:27–23:3, 22:58–61,
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`Figures 7, 8B) and (ii) implement the algorithm in block 563 of Figure 8D (id. at
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`24:41–54, Figure 8D).
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`This proposed construction differs
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`from
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`the Board’s preliminary
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`construction in the Apple IPR in two respects.
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`First, the proposed construction stops at block 408 of Figure 8B and
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`excludes block 410, which is included in the Board’s proposal. (EX1008 at p. 11.)
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`Nothing in the specification teaches that block 410 corresponds to the claimed
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`“producing” function. Although the limitation recites “when at least one of said
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`calling attributes and at least a portion of a callee identifier associated with the
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`callee meet private network classification criteria,” the specification does not
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`teach that block 410 relates to call classification. Rather, the specification teaches
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`that the call classification algorithm concludes at block 408, and describes
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`performing block 410 thereafter. (EX1001 at 23:9-19 (“…the call is classified as a
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`public network call by directing the processor 202 to block 408 of FIG.8B …
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`Then, block 410 of FIG.8B directs the processor (202) …”).)
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`Second, the proposed construction includes only block 563 of Figure 8D,
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`whereas the Board’s preliminary construction includes the entirety of Figure 8D.
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`(EX1008 at p. 11.) Figure 8D includes numerous extraneous steps that are not
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`necessary for performing the claimed “producing” function. The function requires
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`that the routing message produced need only contain an identification of “a
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`gateway to the public network.” (EX1001 at 41:33-34.) The specification teaches
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`that Figure 8D shows a process for producing a routing message “of the type
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`shown in FIG. 15.” (EX1001 at 24:30-32.) Some portions of the Figure 15
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`message are not required by the recited function. Therefore, those blocks of Figure
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`8D related to non-required portions of Figure 15 should be excluded from the
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`corresponding structure. Only item 360 of Figure 15, “Route – Domain name or IP
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`address” is required by the recited function because it is where the “route identifier
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`field” that “holds an IP address of a gateway” is stored. (EX1001 at Fig.15, 24:13-
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`15.) Specifically, block 563 of Figure 8D (“Load route field with route identifier”)
`
`loads the “route identifier field” into the “route field” of the routing message
`
`(EX1001 at Fig. 8D, 24:44-48.) The remaining blocks in Figure 8D relate to other
`
`unnecessary portions of the routing message of Figure 15.
`
`D. Claim 73: “means for causing”
`The corresponding structure is a processor programmed to implement the
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`algorithm illustrated in block 381 of Figure 8A, block 646 of Figure 8C, and block
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`568 of Figure 8D. (EX1001 at 20:37–58, 24:55–25:12, 26:52–53, Figures 8A, 8C,
`
`8D.)
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`14
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`Petition for Inter Partes Review of Patent No. 9,179,005
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`VIII. THE CHALLENGED CLAIMS ARE UNPATENTABLE.
`A. Claims 1, 24–26, and 49 are obvious over Nadeau in view of Kelly.
`(Ground 1)
`Kelly and Nadeau are from the same field of endeavor because they both are
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`from the field of telecommunications systems and address challenges arising from
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`making VoIP calls. (EX1005 at 1:53–2:9; EX1006 at 2:42–3:19.) Additionally,
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`they are concerned with reducing the cost for making VoIP calls. (EX1005 at 2:3–
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`6, 6:30, 10:11–16; EX1006 at 13:46–57.) A POSITA would have considered Kelly
`
`when implementing or improving Nadeau. (EX1003 at ¶ 192.)
`
`Nadeau teaches that if the SLC determines that a VoIP call should be routed
`
`over the PSTN, then the SLC produces routing instructions that instruct other
`
`network elements to route the call to an IP-PSTN Gateway. (EX1005 at 7:5–9,
`
`7:22–23, 8:39–40, 11:27–28.) Nadeau teaches that the SLC may determine to
`
`route the call over the PSTN based on least cost routing. (Id. at 10:11–16.) The
`
`system in Nadeau, however, includes only one gateway to route the call to the
`
`PSTN, so the cost for PSTN routing is controlled by that gateway alone. (Id. at
`
`Figure 1.)
`
`Kelly recognizes that costs may be further reduced by selecting a gateway
`
`that provides lower cost routing compared to other gateways. (EX1006 at 13:39–
`
`57.) Kelly teaches a gateway selection process that (1) transforms a dialed
`
`telephone number (e.g., 1-561-997-4001) into a hybrid telephone number domain
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`15
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`Petition for Inter Partes Review of Patent No. 9,179,005
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`name (e.g., 4001-997561-1.carrier.com) (id. at 11:54–12:11); (2) uses successive
`
`portions of the hybrid telephone number domain name to retrieve references to
`
`name servers that contain an IP address of a carrier gateway (id. at 12:32–57); and
`
`(3) produces a call packet, analogous to routing instructions, containing the hybrid
`
`telephone number domain name and the IP address of the carrier gateway to effect
`
`the call (id. at 13:21–26).
`
`A POSITA would have been motivated to modify the SLC of Nadeau to
`
`perform the gateway selection process taught in Kelly to further reduce the cost of
`
`routing over the PSTN as recognized by Kelly. (EX1003 at ¶¶ 192–195.) Nadeau
`
`explains that it would be desirable to find a least cost routing path for a VoIP call
`
`to avoid “paying unnecessary toll charges.” (EX1005 at 2:3–6; see also id. at 6:30,
`
`10:11–16.) Kelly teaches a way to improve the cost savings desired by Nadeau:
`
`select a gateway that “minimize[s] the toll charges” by performing the gateway
`
`selection process taught in Kelly. (EX1006 at 13:46–57.)
`
`A POSITA could have easily made this modification because it is merely a
`
`combination of prior art elements according to known methods to yield predictable
`
`results. (EX1003 at ¶ 196.) Kelly explains that performing the gateway selection
`
`process minimizes toll charges (EX1006 at 13:46–49), which is the same result
`
`desired by Nadeau (EX1005 at 2:3–6; see also id. at 6:30, 10:11–16). Modifying
`
`the SLC of Nadeau simply involves the known technique of programming the SLC
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`16
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`Petition for Inter Partes Review of Patent No. 9,179,005
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`to perform the gateway selection process taught by Kelly. (EX1003 at ¶ 196.) A
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`POSITA could have made this modification with a reasonable expectation of
`
`success without undue experimentation. (Id.)
`
`1.
`
`Claim 1
`a. Preamble
`
`Limitation
`A process for
`producing
`a
`routing message
`for
`routing
`communications
`between a caller
`and a callee in a
`communication
`system
`
`Nadeau-Kelly
` “[T]he ACS service allows the establishment of a connection
`from a caller (subscriber) to a called party, transparently
`using whichever network (PSTN/Mobile, IP) is best, based on
`conditions specified by the service subscriber and external
`conditions.” (EX1005 at 6:19–23.)
`
`“[T]he invention provides a service logic controller for the
`management of communication sessions.” (Id. at 2:49–51.)
`
`“The primary goal of the SLC 122 is to provide the DPFEs with
`call processing instructions.” (Id. at 7:22–23.)
`
`“Upon reception of routing instructions from the SLC through
`the GWFE, the DPFE will resume call processing according
`to the received instructions and route the incoming call
`directly to a Delivery Point FE or to the IP/PSTN GWFE 124
`if needed.” (Id. at 7:5–9.)
`
`
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`17
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`Petition for Inter Partes Review of Patent No. 9,179,005
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`To the extent the preamble is limiting, Nadeau-Kelly teaches it. A Service
`
`Logic Controller (“SLC”) (call routing controller) produces routing instructions
`
`(routing message) to route calls between callers and callees. (Id. at Figures 1–4;
`
`2:49–51; 6:19–23; 7:5–9;7:22–23; EX1003 at ¶¶ 198-201.)
`
`b. Limitation 1a
`
`Nadeau-Kelly
` “[T]he SLC 122 will consult a particular caller's service
`profile ... to process the caller's incoming calls.” (EX1005 at
`7:24–27; see also 11:13–15.)
`“The Subscriber Database 204…contains a record for each such
`subscriber, where this record includes…information, such as:
`...
`the home phone directory number (if different from the
`subscriber ID) to automatically associate calls made to the
`service from the subscriber's main directory number.” (Id. at
`9:55–64.)
`
`18
`
`Limitation
`using a caller
`identifier
`associated with
`the caller
`to
`locate a caller
`dialing profile
`comprising
`a
`plurality
`of
`calling
`attributes
`associated with
`the caller
`
`
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`Petition for Inter Partes Review of Patent No. 9,179,005
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`“[A]n ACS subscriber first builds a directory of the
`individuals he/she wishes to be able to reach, prior to using the
`include some routing
`ACS system. The directory must
`information for each entry, such as the individual's directory
`number (DN) for the PSTN and an IP address or pseudo-
`address for the Internet.” (Id. at 9:18–23.)
`“the directory itself which contains multiple entries, each entry
`including:
`name of the person, e.g. John Smith;
`directory number;
`...
`routing information;
`time of day routing;
`day of week routing;
`least cost routing, such as:
`complete to VoIP if IP address available;
`complete to called party directory number using IP
`through a terminating VOIP gateway;
`complete to called party directory number using
`PSTN;
`priority list (e.g. IP first, PSTN otherwise if calling from
`IP).” (Id. at 9:66–10:20.)
`“[A]n illustrative script can be: ‘Between 8 and 6 on working
`days, route calls made to John Smith to his office unless his
`cellular phone is activated, in which case calls should be
`routed to the cellular phone.’” (Id. at 3:56–4:6.)
`
`The SLC “consults [the] particular caller’s service profile” to process the
`
`call (locate a caller dialing profile). (EX1005 at 7:24–27.) The profile includes a
`
`caller’s home telephone number (caller identifier associated with the caller). (Id. at
`
`9:55–64.) The SLC locates the caller’s profile using the caller’s home telephone
`
`
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`19
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`Petition for Inter Partes Review of Patent No. 9,179,005
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`number, because the caller’s telephone number in the profile is used to
`
`“automatically associate calls made to the service from the subscriber's main
`
`directory number.” (Id. at 9:62–64.)
`
`The profile includes a directory containing entries for each person that the
`
`caller might wish to call. (Id. at 9:18–23, 9:66–67.) Each directory entry includes
`
`a name or telephone number for a party specified by a caller (calling attributes
`
`associated with the caller) and routing information specified by the caller that
`
`indicates how calls to that party should be routed (calling attributes associated with
`
`the caller). (Id. at 3:56–4:6, 9:66–10:20; see also 4:2-6 (example entry for “John
`
`Smith”), 12:48-52 (example entry for time of day routing); EX1003 at ¶¶ 202–
`
`207.)
`
`Limitation
`when at
`least
`one of
`said
`calling
`and
`attributes
`a
`at
`least
`portion of a
`callee identifier
`associated with
`the callee meet
`private network
`classification
`criteria,
`a
`producing
`private network
`routing
`
`
`
`c. Limitation 1b
`
`Nadeau-Kelly
` “The ACS system uses the routing information associated to a
`particular name in the subscriber's database to decide how to
`handle an outgoing call.” (EX1005 at 11:13–15.)
`“3. The VOIP client sends a message to...the Internet ACS
`GWFE 116. The message contains the subscriber ID (e.g. his
`home phone number) and the name of the person to reach.
`4. The ACS IP GWFE 116 reformats and sends the query to the
`SLC 122.
`5. The SLC 122 uses the received information to access the
`subscriber's database. This record indicates that the call to this
`person should be completed using the Internet between 08:00
`and 18:00 if the person is connected to the Internet.” (Id. at
`12:34–52.)
`
`20
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`Petition for Inter Partes Review of Patent No. 9,179,005
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`for
`message
`receipt by a call
`controller, said
`private network
`routing
`message
`identifying an
`address, on the
`private
`network,
`associated with
`the callee
`
`“the directory itself which contains multiple entries, each entry
`including:
`name of the person, e.g. John Smith;
`directory number;
`IP address or pseudo-address, where a sample pseudoaddress
`would be an email address such as johns@
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