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,
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`v.
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`
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`VoIP-PAL.COM, INC.,
`
`Patent Owner
`
`
`
`
`Case No. IPR2017-01384
`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. IPR2017-01384
`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 ...................................................................................................... 4
`
`A.
`
`B.
`
`C.
`
`Introduction to Claimed Subject Matter .............................................. 4
`
`Overview of Cited Art ......................................................................... 7
`
`1.
`
`2.
`
`3.
`
`Overview of Nadeau ................................................................. 7
`
`Overview of Kelly ..................................................................... 9
`
`Overview of Vaziri.................................................................. 11
`
`Grounds 1 and 2 fail because the Petition fails to show how
`the combination of Nadeau and Kelly “produc[es] a public
`network routing message for receipt by the call controller,
`said public network routing message identifying a gateway
`to the public network” ....................................................................... 12
`
`1.
`
`2.
`
`3.
`
`The “routing instructions” in Nadeau do not identify
`a gateway to the public network ............................................. 14
`
`The Petitioner’s assertion that the “routing
`instructions” in Nadeau “must” include an
`identification of the IP-PSTN Gateway is
`unsupported ............................................................................. 16
`
`The Petitioner fails to explain how Nadeau would be
`modified such that a public network routing message
`is produced which identifies a gateway to the public
`network as recited in the claims .............................................. 21
`
`a.
`
`Petitioner proposes to use the call packet
`produced by Kelly’s gateway selection process
`as routing instructions in Nadeau ................................. 24
`
`-i-
`
`
`
`TABLE OF CONTENTS
`(cont’d)
`
`Page No.
`
`b.
`
`Petitioner fails to explain how modifying
`Nadeau’s SLC to produce a call packet as
`taught by Kelly, leads to “producing a public
`network routing message for receipt by [a] call
`controller, said public network routing
`message identifying a gateway to [a] public
`network” as claimed ..................................................... 25
`
`i.
`
`ii.
`
`The Petition has not indicated where the
`call packet would be sent ................................... 26
`
`The Petition fails to explain how the call
`packet would be modified such that the
`proposed combination produces a public
`network routing message for receipt by
`the call controller, ... identifying a
`gateway to the public network ........................... 27
`
`D. Ground 2 fails because the Petitioner has failed to identify a
`structure in Nadeau that is functionally equivalent to the
`“means” recited in Claims 50 and 73 ................................................ 30
`
`E.
`
`The Petitioner’s rationale for combining Nadeau-Kelly is
`simplistic and incomplete, and is not fairly based upon the
`cited arts’ teaching ............................................................................. 35
`
`1.
`
`2.
`
`Petitioner overlooks that Nadeau does not need
`Kelly’s solution to perform least cost routing, thus
`there is no motivation to combine ........................................... 37
`
`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 ................................. 41
`
`-ii-
`
`
`
`TABLE OF CONTENTS
`(cont’d)
`
`Page No.
`
`3.
`
`Petitioner’s analysis of the modifications required is
`too truncated and simplistic to establish a reasonable
`expectation of success ............................................................. 46
`
`III. CONCLUSION ................................................................................................ 51
`
`
`
`-iii-
`
`
`
`TABLE OF AUTHORITIES
`
`Page No(s).
`
`Ariosa Diagnostics v. Verinata Health, Inc.,
`805 F.3d 1359 (Fed. Cir. 2015) .......................................................................... 36
`
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`800 F.3d 1375 (Fed. Cir. 2015) .......................................................................... 17
`
`Innogenetics, N.V. v. Abbott Laboratories,
`512 F.3d 1363 ..................................................................................................... 36
`
`Interconnect Planning Corporation v. Feil
`774 F.2d 1132 (1985) .................................................................................... 44, 45
`
`Ex parte Kastelewicz,
`Appeal 2008-004808 (June 9, 2009) ............................................................ 39, 40
`
`Kinetic Concepts, Inc., v. Smith and Nephew, Inc.,
`688 F. 3d. 1342 (Fed. Cir. 2012) ........................................................................ 40
`
`In re Kotzab,
`217 F.3d 1365 (Fed. Cir. 2000) .................................................................... 35, 36
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................... 36, 41
`
`In re McLaughlin,
`443 F.2d 1392 (C.C.P.A. 1971) .......................................................................... 51
`
`In re NuVasive, Inc.,
`842 F.3d 1376 (Fed. Cir. 2016) .......................................................................... 36
`
`PAR Pharma., Inc. v. TWI Pharmas., Inc.,
`773 F.3d 1186 (Fed. Cir. 2014) .......................................................................... 17
`
`Personal Web Technologies, LLC v. Apple, Inc.,
`848 F.3d 987 (Fed. Cir. 2017) ...................................................................... 35, 36
`
`-iv-
`
`
`
`TABLE OF AUTHORITIES
`(cont’d)
`
`Page No(s).
`
`In re Robertson,
`169 F.3d 743, 49 U.S.P.Q.2d 1949 (Fed. Cir. 1999) .......................................... 18
`
`Rohm & Haas Co. v. Brotech Corp.,
`127 F.3d 1089 (Fed. Cir. 1997) .......................................................................... 47
`
`Stryker Corp. v. Karl Storz Endoscopy-America, Inc.,
`IPR2015-00764, Paper 13 (P.T.A.B. Sep. 2, 2015) ............................................ 40
`
`Tietex Int’l, Ltd. v. Precision Fabrics Group, Inc.,
`IPR2014-01248, Paper 39 (P.T.A.B., Jan. 27, 2016) ......................................... 17
`
`In re Warsaw Orthopedic, Inc.,
`832 F.3d 1327 (Fed. Cir. 2016) .......................................................................... 36
`
`In re Wesslau,
`353 F.2d 238, 53 C.C.P.A. 746 (1965) ......................................................... 42, 43
`
`OTHER AUTHORITIES
`
`35 U.S.C. § 103 .............................................................................................. 2, 14, 43
`
`35 U.S.C. § 112 .................................................................................................... 3, 35
`
`35 U.S.C. § 312 .................................................................................................. 22, 30
`
`35 U.S.C. § 313 .......................................................................................................... 1
`
`35 U.S.C. § 314 .......................................................................................................... 2
`
`37 C.F.R. § 42.6 ....................................................................................................... 18
`
`37 C.F.R. § 42.22 ............................................................................................... 22, 30
`
`37 C.F.R. § 42.65 ......................................................................................... 18, 46, 47
`
`37 C.F.R. § 42.104 ............................................................................................. 22, 30
`
`-v-
`
`
`
`TABLE OF AUTHORITIES
`(cont’d)
`
`Page No(s).
`
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. .................................................... 47
`
`
`
`
`
`-vi-
`
`
`
`IPR2017-01384
`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
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`professionals in the open-source software community. Three Ph.D.s with various
`
`engineering backgrounds held the top positions at the Company. Digifonica’s
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`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 1, 24-26, 49, 50 and 73 of the ’005 Patent on
`
`two grounds:
`
`-1-
`
`
`
`IPR2017-01384
`AT&T v. Voip-Pal
`
`1.
`
`Alleged obviousness of Claims 1, 24-26 and 49 under § 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 1”).
`
`2.
`
`Alleged obviousness of Claims 50 and 73 under § 103(a) over Nadeau
`
`in view of Kelly and U.S. Patent No. 7,715,413 to Vaziri (“Vaziri”) (“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 principal ground that addresses independent Claims 1 and 26 is
`
`Nadeau in view of Kelly. This ground does not establish a reasonable likelihood
`
`that the claims will be found obvious because no combination of the references is
`
`shown to leads to all elements of the challenged independent claims. By way of
`
`example, neither Nadeau nor Kelly, nor their combination, discloses or suggests
`
`element [1c] of Claim 1, “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.”
`
`-2-
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`
`
`IPR2017-01384
`AT&T v. Voip-Pal
`
`(emphasis added). Petitioner argues Nadeau’s Service Logic Controller (“SLC”)
`
`produces a routing message that necessarily identifies a gateway to the public
`
`network, and also argues in the alternative that Nadeau could be modified to
`
`produce a routing message that identifies a gateway to the public network as taught
`
`in Kelly’s use of a “call packet” to initiate calls. Petition at 16 (asserting Kelly’s
`
`“call packet” is “analogous to routing instructions”). However, Petitioner’s
`
`inherency argument is incorrect, and Petitioner failed to recognize that Kelly’s
`
`“call packet” cannot be used in Nadeau’s system. As explained below, even if
`
`Nadeau’s SLC were modified to produce Kelly’s “call packet”, the SLC would not
`
`only fail to practice the challenged claims, but it would produce an inoperative
`
`system. However, Petitioner fails to appreciate this, much less explain what
`
`further modifications would need to be made in order for the system to work.
`
`Petitioner also fails to establish a reasonable likelihood that independent
`
`Claim 50 will be found obvious because Petitioner failed to identify anything in the
`
`cited art that would be equivalent to the functionality identified by the Petitioner’s
`
`own claim construction (e.g., Block 269 of the ‘005 Patent). In fact, Nadeau-Kelly
`
`fails to provide the means-plus-function elements [50b] and [50c] recited in Claim
`
`50, as interpreted by the Petitioner under 35 U.S.C. § 112, Paragraph 6.
`
`Finally, 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
`
`-3-
`
`
`
`IPR2017-01384
`AT&T v. Voip-Pal
`
`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 over the PSTN” – without any explanation of
`
`why Kelly’s teachings would be expected to yield such an “improvement.”
`
`Petition at 16. 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 1, 24-26, 49, 50 and 73 of the ’005 Patent are unpatentable.
`
`Thus, the Board should not institute trial in this proceeding.
`
`II. ARGUMENT
`
`A.
`
`Introduction to Claimed Subject Matter
`
`Petitioner has directed most of its analysis to Claims 1 and 50, which recite:
`
`1. [1p] A process for producing a routing message for routing
`communications between a caller and a callee in a communication system,
`the process comprising:
`
`
`[1a] using a caller identifier associated with the caller to locate
`a caller dialing profile comprising a plurality of calling attributes
`associated with the caller;
`
`
`-4-
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`
`
`IPR2017-01384
`AT&T v. Voip-Pal
`
`[1b] 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
`
`[1c] 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.
`
`
`[50p] A call routing controller apparatus for producing a
`50.
`routing message for routing communications between a caller and a
`callee in a communication system, the apparatus comprising:
`
`
`[50a] 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; and
`
`[50b] 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,
`associated with the callee; and
`
`[50c] 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.
`
`
`
`By way of technology background, a public switched telephone network
`
`(PSTN) uses traditional telephone technology including dedicated telephone lines
`
`-5-
`
`
`
`IPR2017-01384
`AT&T v. Voip-Pal
`
`from a service provider to transmit calls over a circuit-switched network. Voice
`
`over Internet protocol (VoIP) is used for the delivery of digital voice
`
`communications and multimedia sessions over Internet protocol (IP) networks,
`
`such as the Internet. Digital information delivered over IP networks is packetized,
`
`and transmission occurs as IP packets over a packet-switched network.
`
`The method of Claim 1 is directed to routing communications in a
`
`communication system. The method involves routing communications that meet
`
`“private network classification criteria” or “a public network classification
`
`criterion” based on at least one calling attribute and at least a portion of the callee
`
`identifier. However, when a communication meets a classification criterion, a
`
`routing message is produced. For example, if the public network classification
`
`criterion is met, the method further involves producing a public network routing
`
`message for receipt by the call controller, the public network routing message
`
`identifying a gateway to the public network, thereby identifying a particular
`
`gateway appropriate for communicating with the callee.
`
`Claim 50 recites subject matter generally similar to that recited in Claim 1,
`
`but in means plus function language.
`
`-6-
`
`
`
`IPR2017-01384
`AT&T v. Voip-Pal
`
`B. Overview of Cited Art
`1. Overview of Nadeau
`Nadeau discloses a method and a system for managing communication
`
`sessions originating in either one of a telecommunications network, such as the
`
`PSTN network or a mobile telephone network, and a data communications network
`
`such as the Internet. Nadeau Abstract. Nadeau discloses that an Automatic Call
`
`Setup (ACS) service permits an improved usage of the Internet domain for calling
`
`purposes. Specifically the 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. Nadeau at 6:16-23.
`
`A Service Logic Controller (SLC) 122 shown in Figure 1, provides
`
`Detection Point Functional Elements (DPFEs), such as the PSTN/Mobile network
`
`DPFE 106 and the Internet DPFE 114 with call processing instructions (Nadeau
`
`7:20-23). For example, Nadeau discloses that the Internet DPFE 114 is
`
`implemented as a VoIP client modified to support the ACS service. Id. at 12:34-39.
`
`-7-
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`
`
`IPR2017-01384
`AT&T v. Voip-Pal
`
`
`
`In order to provide the DPFEs with call processing instructions, the SLC
`
`consults a particular caller’s service profile, consisting in service logic as well as a
`
`list of conditions and events to be used to process the caller’s incoming calls.
`
`Nadeau at 7:23-27.
`
`-8-
`
`
`
`IPR2017-01384
`AT&T v. Voip-Pal
`
`Upon reception of routing instructions from the SLC through a gateway
`
`functional element (GWFE), the DPFE will resume call processing according to
`
`the received instructions and route the incoming call directly to a DPFE or to the
`
`IP/PSTN GWFE 124 if needed. Nadeau at 7:5-9. The objective of the IP/PSTN
`
`GWFE 124 is to route calls between network domains. Id. at 8:39-42.
`
`2. Overview of Kelly
`Kelly discloses a method and apparatus for translating a domain name
`
`representing a telephone number into a network protocol address. Kelly Abstract.
`
`The network of Figure 2 illustrates a hybrid telecommunication environment
`
`including both a traditional switched telephone network as well as Internet and
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`Intranet networks and apparatus bridging between the two. Kelly at 5:62-65.
`
`
`
`-9-
`
`
`
`IPR2017-01384
`AT&T v. Voip-Pal
`
`For WebPhone client to GATEWAY to PSTN calls, a user enters a
`
`traditional phone number through the graphic user interface of the WebPhone client
`
`and establishes a call to the specified telephone exchange on a PSTN. Kelly at
`
`11:51-54. Upon receiving the desired telephone number the WebPhone client
`
`reverses the number and appends the carrier's domain name resulting in a hybrid
`
`telephone/domain name, e.g., having the form “4001-997-561-1.carrier.com”. Id. at
`
`12:7-11. The hybrid telephone number domain name is passed by the WebPhone
`
`client to in an acceptable format the name resolver protocol executing on a DNS
`
`name server on the TCIP/IP network. Id. at 12:3-14.
`
`Referring to Figure 6 (infra), a recursive process of resolving the telephone
`
`number domain name previously entered into the WebPhone client to the
`
`appropriate IP address of a gateway on a PSTN is illustrated. After step 12 of FIG.
`
`6, the call packet containing the entire telephone number domain name entry
`
`“4001.997.561.1.carrier.com” is then sent by the WebPhone 232C to initiate a call
`
`session to the IP address of the gateway, e.g., gateway 218C in FIG. 2 (supra), and
`
`the call is offered. The gateway 218C, depending on available resources, then
`
`evaluates the call packet data, responds accordingly by dialing 1-561-997-4001 and
`
`accepts the call. A call session is then established. Kelly at 13:22-29; 15:12-17.
`
`-10-
`
`
`
`IPR2017-01384
`AT&T v. Voip-Pal
`
`
`
`3. Overview of Vaziri
`Vaziri discloses a multi-network exchange system having a first type
`
`network (PSTN) and a second type network (Internet) and a multi-network
`
`exchange bridge in communication with the first and second type networks for the
`
`transfer of electronic information signals (telephone calls) between the first and
`
`second type networks. Referring specifically to Figure 2, the Multi-Network
`
`Exchange System (MNES) includes one or more MNES bridges 55 and 97 that
`
`allow information in the form of voice or fax telephone calls to be exchanged
`
`between a PSTN network 90 and a digital communications network 85 such as the
`
`Internet, the MNES including a PSTN number translator for parsing dialed digits.
`
`Vaziri at 12:34-40, 29:25-36 and Figures 2 and 12.
`
`-11-
`
`
`
`IPR2017-01384
`AT&T v. Voip-Pal
`
`C. Grounds 1 and 2 fail because the Petition fails to show how the
`combination of Nadeau and Kelly “produc[es] a public network routing
`message for receipt by the call controller, said public network routing
`message identifying a gateway to the public network”
`
`Claim 1 recites: “producing a public network routing message for receipt by
`
`[a] call controller, said public network routing message identifying a gateway to
`
`the public network” and independent claim 50 recites a similar element. Petitioner
`
`argues that Nadeau’s “routing instructions,” produced by Nadeau’s Service Logic
`
`Controller (“SLC”), are equivalent to a public network routing message. Petition
`
`at 27-28. Petitioner then raises two different arguments as to how the “routing
`
`instructions” purportedly identify a gateway to the public network. Petition at 28.
`
`As detailed below, both arguments fail.
`
`First, Petitioner argues that although Nadeau does not explicitly state that the
`
`routing instructions identify the IP-PSTN Gateway to which the call is routed, the
`
`routing instructions must include such an identification to complete the call.
`
`Petition at 28 (emphasis added). As set out below, Petitioner’s argument fails
`
`because, contrary to Petitioner’s assertions, it is not inherent that the routing
`
`instructions in Nadeau must identify the IP-PSTN Gateway to which the call is
`
`routed. The Petitioner’s inherency argument fails for at least the reason that, as
`
`admitted by Petition at 15, Nadeau discloses only one IP-PSTN Gateway to route
`
`the call from the VoIP client to the PSTN, and so other components of Nadeau,
`
`-12-
`
`
`
`IPR2017-01384
`AT&T v. Voip-Pal
`
`such as Nadeau’s VoIP client device may be preprogrammed with the IP address of
`
`the one IP-PSTN Gateway, in advance of receiving any routing instructions.
`
`Petitioner apparently recognizes the weakness of its own inherency
`
`argument because Petitioner proposes a second, alternative, argument that Kelly
`
`teaches a gateway selection process that includes the IP address of the gateway to
`
`initiate a call session (Petition at 28) and that it was obvious to modify the SLC of
`
`Nadeau to perform the gateway selection process taught in Kelly. Id.
`
`However, Petitioner’s second argument also fails because, as set out below,
`
`(a) combining the references as proposed by the Petitioner would be inoperative
`
`unless other changes are made, and (b) Petitioner has failed to specify how the
`
`proposed combination of Nadeau and Kelly would be made such that the
`
`combination produces “a public network routing message for receipt by [a] call
`
`controller, said public network routing message identifying a gateway to the [a]
`
`public network,” as recited in the claims.
`
`In particular, Petitioner proposes to modify Nadeau’s Service Logic
`
`Controller (“SLC”) to, inter alia, produce Kelly’s “call packet” (see Petition at 16,
`
`27-28), but, as detailed below, simply modifying Nadeau’s SLC to produce Kelly’s
`
`“call packet” as proposed by Petitioner, without further changes, would not result
`
`in routing a call to the public network as asserted by Petitioner. As set out below,
`
`Petitioner has not described, and it is not clear, what further modifications of
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`Nadeau’s SLC and/or Kelly’s “call packet” would be necessary in order for
`
`Petitioner’s proposed combination to actually perform the above-noted step recited
`
`in the claims.
`
`Thus, Grounds 1 and 2 fail because Petitioner has failed to demonstrate that
`
`the proposed combination of Nadeau and Kelly would perform the above-noted
`
`claim element. In particular, the “routing instructions” in Nadeau do not identify a
`
`gateway to the public network, and the Petitioner has not shown how the proposed
`
`modification of Nadeau with the teachings of Kelly would result in a public
`
`network routing message identifying a gateway to the public network.
`
`Accordingly, the information presented in the Petition does not demonstrate
`
`a reasonable likelihood that the claims are unpatentable under 35 U.S.C. § 103(a)
`
`having regard to the cited references.
`
`1.
`
`The “routing instructions” in Nadeau do not identify a gateway to
`the public network
`
`The Petition asserts that Nadeau discloses a “public network routing
`
`message,” based on Nadeau’s disclosure of “routing instructions” generated by the
`
`SLC 122, and also asserts that the IP-PSTN Gateway 124 represents the “gateway
`
`to the public network” recited in the claims of the ’005 Patent. Petition at 28.
`
`However, there is no disclosure in Nadeau that the “routing instructions” generated
`
`by the SLC 122 identify IP-PSTN Gateway 124 and a POSITA would understand
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`that there is no need to identify the Gateway 124 if the VoIP client 114 in Nadeau
`
`only uses one gateway.
`
`The Petitioner has admitted that “Nadeau does not explicitly state that the
`
`routing instructions identify the IP-PSTN Gateway …”. Petition at 28 (emphasis
`
`added). The Petition also admits that “[t]he system in Nadeau, however, includes
`
`only one gateway to route the call to the PSTN …” Petition at 15 (emphasis
`
`added). Because there is only one gateway to the PSTN to route the call,
`
`identification of the IP-PSTN Gateway does not need to occur by the SLC when
`
`the call is classified. For example, the VoIP client 114 can be preprogrammed
`
`with information identifying the IP-PSTN Gateway. Alternatively, Internet ACS
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`Gateway 116 can be preprogrammed with such information. Thus, there is no need
`
`for the “routing instructions” from the SLC 122 to identify IP-PSTN Gateway 124.
`
`Nadeau uses the term “routing instructions” and “routing information”
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`interchangeably. See for example Nadeau at 9:38-40 ("The ACS system will then
`
`complete the call according to the routing instructions stored by the user”)
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`(emphasis added) and 9:56-10:20 (“The Subscriber Database 204 as shown in FIG.
`
`2 contains a record for each such subscriber, … such as: … routing information;”)
`
`(emphasis added). Thus, while Nadeau does not provide any explicit disclosure as
`
`to the contents of the “routing instructions” used for an IP to PSTN call, Nadeau
`
`does disclose the contents of “routing information” stored by the SLC 122 and
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`Nadeau does not teach that “routing instructions” would include anything other
`
`than the contents of Nadeau’s “routing information”. Nadeau discloses that the
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`“routing information” stored in a subscriber’s directory entry for PSTN routing is
`
`simply a “directory number (DN)” of the called individual, whereas the entry for
`
`Internet destinations is “an IP address or pseudo-address.” Nadeau at 9:20-23.
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`This means that Nadeau’s “routing instructions” for public network routing is
`
`simply a directory number (DN). Thus, Nadeau does not disclose that anything
`
`identifying the IP-PSTN Gateway is required for Internet-to-PSTN routing.
`
`2.
`
`The Petitioner’s assertion that the “routing instructions” in
`Nadeau “must” include an identification of the IP-PSTN Gateway
`is unsupported
`
`As noted above, the Petitioner admits that Nadeau does not explicitly
`
`disclose that the “routing instructions” identify the IP-PSTN Gateway, and instead
`
`argues that such an identification is inherent. The Petition states that:
`
`Although Nadeau does not explicitly state that the routing instructions
`identify the IP-PSTN Gateway to which the call is routed, a POSITA
`knew that the routing instructions must include such an identification
`to complete the call. (EX1003 at ¶¶ 236–238.)
`
`The Petitioner’s latter assertion (i.e., “the routing instructions must
`
`include...”) is untrue. As explained above in Section 1, Nadeau suggests that a
`
`Petition at 28 (emphasis added)
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`directory number (DN) alone is the “routing information” required for a PSTN call
`
`and, as explained below, because there is only one IP-PSTN Gateway 124 in
`
`Nadeau used by the VoIP client 114 to make calls to the PSTN, there are working
`
`configurations of Nadeau where routing instructions need not identify the gateway.
`
`The Petitioner bears the burden of proving inherency by a preponderance of
`
`evidence. “[T]he burden of proof is on the petitioner to prove unpatentability by a
`
`preponderance of the evidence, and that burden never shifts to the patent owner.”
`
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
`
`2015). See also Tietex Int’l, Ltd. v. Precision Fabrics Group, Inc., IPR2014-
`
`01248, Paper 39 at 11 (Final Written Decision P.T.A.B., Jan. 27, 2016) (“[…]
`
`Petitioner must provide evidence establishing that the claimed [features] are
`
`inherent in the prior art...”. Thus, Patent Owner has no burden to prove that the
`
`alleged properties are not inherent in the cited art.
`
`To rely on inherency, Petitioner must prove that the missing claim
`
`limitations are necessarily present in Nadeau. “A party must, therefore, meet a
`
`high standard in order to rely on inherency to establish the existence of a [missing]
`
`claim limitation in the prior art in an obviousness analysis – the limitation at issue
`
`necessarily must be present, or the natural result of the combination of elements
`
`explicitly disclosed by the prior art.” PAR Pharma., Inc. v. TWI Pharmas., Inc.,
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`773 F.3d 1186, 1195–96 (Fed. Cir. 2014). “To establish inherency, the extrinsic
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`evidence ‘must make clear that the missing descriptive matter is necessarily
`
`present in the thing described in the reference, and that it would be so recognized
`
`by persons of ordinary skill. Inherency, however, may not be established by
`
`probabilities or possibilities. The mere fact that a certain thing may result from a
`
`given set of circumstances is not sufficient.’” In re Robertson, 169 F.3d 743, 745,
`
`49 U.S.P.Q.2d
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