Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 8
`Entered: November 20, 2017
`
`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 IPR2017-01384
`Patent 9,179,005 B2
`____________
`
`
`Before JOSIAH C. COCKS, JENNIFER MEYER CHAGNON, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`CHAGNON, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`571-272-7822
`
`
`Paper No. 8
`Entered: November 20, 2017
`
`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 IPR2017-01384
`Patent 9,179,005 B2
`____________
`
`
`Before JOSIAH C. COCKS, JENNIFER MEYER CHAGNON, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`CHAGNON, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`IPR2017-01384
`Patent 9,179,005 B2
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`
`I.
`
`INTRODUCTION
`AT&T Services, Inc. (“Petitioner”)1 filed a Petition for inter partes
`review of claims 1, 24–26, 49, 50, and 73 (“the challenged claims”) of
`U.S. Patent No. 9,179,005 B2 (Ex. 1001, “the ’005 patent”). Paper 1
`(“Pet.”). Petitioner relies on the Declaration of James Bress (Ex. 1003) to
`support its positions. Voip-Pal.com, Inc. (“Patent Owner”)2 filed a
`Preliminary Response. Paper 5 (“Prelim. Resp.”).
`We have authority to determine whether to institute inter partes
`review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Upon consideration of
`the Petition and the Preliminary Response, and for the reasons explained
`below, we determine that the information presented does not show a
`reasonable likelihood that Petitioner would prevail with respect to any of the
`challenged claims. See 35 U.S.C. § 314(a). Accordingly, no trial is
`instituted.
`
`A. Related Proceedings
`The parties indicate that the ’005 patent is the subject of the following
`district court proceedings: Voip-Pal.com, Inc. v. Verizon Wireless Services,
`LLC & AT&T Corp., Case No. 2:16-cv-00271 (D. Nev.); Voip-Pal.com, Inc.
`v. Apple, Inc., 2-16-cv-00260 (D. Nev.); and Voip-Pal.com, Inc. v. Twitter,
`Inc., 2-16-cv-02338 (D. Nev.). Pet. 2; Paper 4, 1.
`Petitioner concurrently filed a petition for inter partes review of other
`claims of the ’005 patent. Pet. 2; Paper 4, 1; AT&T Services, Inc. v.
`
`1 Petitioner identifies several additional entities as real parties-in-interest.
`See Pet. 1–2.
`2 Patent Owner identifies Digifonica (International) Limited as an additional
`real party-in-interest. Paper 4, 1.
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`Voip-Pal.com, Inc., Case IPR2017-01383. Petitioner also filed a petition for
`inter partes review of related U.S. Patent No. 8,542,815 B2 (“the ’815
`patent”). Paper 4, 1; AT&T Services, Inc. v. Voip-Pal.com, Inc.,
`Case IPR2017-01382.
`The parties also identify the following proceedings, filed by
`Apple, Inc., to which Petitioner is not a party:
`IPR2016-01198, challenging the ’005 patent;
`IPR2016-01201, challenging the ’815 patent;
`IPR2017-01398, challenging the ’005 patent;
`IPR2017-01399, challenging the ’815 patent.
`Pet. 3; Paper 4, 1.
`
`B. The ’005 Patent
`The ’005 patent is titled “Producing Routing Messages for Voice Over
`IP Communications.” Ex. 1001, at [54]. In particular, the ’005 patent
`relates to producing a routing message for routing calls in a communication
`system, where the routing message is based on call classification criteria that
`are used to classify a particular call as a public network call or a private
`network call. Ex. 1001, at [57]. Figure 7 of the ’005 patent is reproduced
`below.
`
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`Figure 7, reproduced above, illustrates routing controller (RC) 16, which
`facilitates communication between callers and callees. Id. at 14:32–33,
`17:26–27. RC processor circuit 200 of routing controller (RC) 16 includes
`processor 202, program memory 204, table memory 206, buffer
`memory 207, and I/O port 208. Id. at 17:27–31. 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 routing controller 16. Id. at 17:47–49. One such block of code
`is RC request message handler 250, which directs routing controller 16 to
`produce a routing message in response to an RC request message. Id. at
`17:49–53.
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`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
`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 process, executed by the RC processor circuit.
`Id. at 11:3–4. Figure 8B of the ’005 patent is reproduced below.
`
`
`Figure 8B, reproduced above, illustrates a portion of the RC request message
`handler process, and in particular illustrates steps for performing checks on
`
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`the callee identifier. Id. at 19:53–57. Blocks 257, 380, 390, 396, 402
`“establish call classification criteria for classifying the call as a public
`network call or a private network call” based on, for example, “whether the
`callee identifier has certain features such as an international dialing digit, a
`national dialing digit, an area code[,] and a length that meet certain criteria.”
`Id. at 22:46–48, 22:58–61. After blocks 257, 380, 390, 396, processor 202
`“reformat[s] the callee identifier . . . into a predetermined target format,”
`which enables block 269 to classify the call as public or private, depending
`on whether the callee is a subscriber to the system. Id. at 22:49–54, 22:61–
`23:19, 20:23–35; see also id. at 18:63–19:30 (describing callee profiles).
`Similarly, 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
`predefined format, i.e. is a valid user name and identifies a subscriber to the
`private network.” Id. at 22:64–23:3.
`
`C. Illustrative Claim
`Of the challenged claims, claims 1, 26, and 50 are independent.
`Claims 24 and 25 depend from claim 1; claim 49 depends from claim 26;
`and claim 73 depends from claim 50. Independent claim 1 of the ’005 patent
`is reproduced below, and is illustrative of the challenged claims.
`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 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
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`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.
`Ex. 1001, 36:28–46.
`
`D. The Applied References
`Petitioner relies on the following references in the asserted grounds.
`Pet. 4.
`
`Reference
`U.S. Patent No. 6,240,449 B1
`(“Nadeau”)
`U.S. Patent No. 6,594,254 B1
`(“Kelly”)
`U.S. Patent No. 7,715,413 B2
`(“Vaziri”)
`
`Date
`
`Exhibit
`
`May 29, 2001
`
`Ex. 1005
`
`July 15, 2003
`
`Ex. 1006
`
`May 11, 2010
`
`Ex. 1007
`
`E. The Asserted Grounds
`Petitioner sets forth its challenges to claims 1, 24–26, 49, 50, and 73
`as follows. Pet. 4.
`
`References
`Nadeau and Kelly
`Nadeau, Kelly, and Vaziri
`
`Basis
`§ 103
`§ 103
`
`Claims Challenged
`1, 24–26, 49
`50, 73
`
`
`
`7
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`II. ANALYSIS
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. See 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). Under the broadest
`reasonable construction standard, claim terms generally are given their
`ordinary and customary meaning, as would be understood by one of ordinary
`skill in the art in the context of the entire disclosure. See In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). The claims, however,
`“should always be read in light of the specification and teachings in the
`underlying patent,” and “[e]ven under the broadest reasonable interpretation,
`the Board’s construction ‘cannot be divorced from the specification and the
`record evidence.’” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298
`(Fed. Cir. 2015) (citations omitted) (overruled on other grounds by Aqua
`Prods. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017). Further, any special
`definition for a claim term must be set forth in the specification with
`reasonable clarity, deliberateness, and precision. See In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994). In the absence of such a definition, however,
`limitations are not to be read from the specification into the claims. In re
`Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
`Petitioner proposes constructions for the means-plus-function claim
`terms in claims 50 and 73. See Pet. 11–14. Petitioner otherwise “interprets
`all . . . claim terms . . . in accordance with their plain and ordinary meaning
`under the [broadest reasonable interpretation] for purposes of this
`
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`proceeding.” Id. at 11. Patent Owner does not propose express construction
`of any claim term. See generally Prelim. Resp. Upon review of the parties’
`contentions and supporting evidence, for purposes of this Decision, we need
`not provide express construction for any claim term. See, e.g., Wellman, Inc.
`v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim
`terms need only be construed ‘to the extent necessary to resolve the
`controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795, 803 (Fed. Cir. 1999)).
`
`B. Principles of Law
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness.3 See Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966). We analyze the asserted grounds of unpatentability in accordance
`with these principles.
`
`
`3 The parties have not directed our attention to any objective evidence of
`non-obviousness.
`
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`C. Level of Ordinary Skill in the Art
`Petitioner asserts that a person of ordinary skill in the art would have
`at least a bachelor’s degree in electrical engineering, or in a
`related field, with at least 2–4 years of industry experience in
`designing or developing packet-based and circuit-switched
`systems. Additional industry experience or technical training
`may offset less formal education, while advanced degrees or
`additional formal education may offset lesser levels of industry
`experience.
`Pet. 10 (citing Ex. 1003 ¶¶ 52–56). Patent Owner does not propose an
`alternative level of ordinary skill in the art. See generally Prelim. Resp. For
`purposes of this Decision, we adopt Petitioner’s proposal regarding the level
`of ordinary skill in the art. The level of ordinary skill in the art further is
`reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d
`1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir.
`1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`
`D. The Asserted Prior Art
`
`1. Nadeau (Ex. 1005)
`Nadeau relates to telephony systems that “provide subscribers with
`communication sessions across a variety of network domains, such as the
`Public Switched Telephone Network (PSTN), the Mobile network and the
`Internet.” Ex. 1005, 1:7–12. Figure 1 of Nadeau is reproduced below.
`
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`Figure 1, reproduced above, “is a block diagram of a multi-domain
`communication session disposition system incorporating an Automatic Call
`Setup [ACS] service.” Id. at 6:1–3. Each of PSTN network domain 100 and
`Internet domain 102 “issue[s] and receive[s] communications that can be
`telephone related messages or data.” Id. at 6:47–54. ACS subscribers may
`originate calls through either PSTN Originating Point Functional Element
`(OPFE) 104 (e.g., a phone in the PSTN network) or Internet OPFE 112 (e.g.,
`a multimedia PC). Id. at 6:58–65. PSTN Detection Point Functional
`
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`Element (DPFE) 106 and Internet DPFE 114 are each responsible for
`identifying call requests that require ACS treatment. Id. at 6:59–7:1.
`Internet DPFE 114 is a voice over Internet Protocol (VoIP) client. Id. at
`12:39. If ACS treatment is needed in the PSTN domain, PSTN DPFE 106
`will suspend call processing and originate a request for instructions to
`Service Logic Controller (SLC) 122 via PSTN Gateway Functional Element
`(GWFE) 108, which is responsible for “mediat[ing] the instruction
`requests/responses from/to the DPFE to/from the SLC.” Id. at 7:1–5, 7:13–
`15. Internet GWFE 116 performs the same function in the Internet domain
`and likewise links Internet DPFE 114 with SLC 122. Id. at 7:15–19, Fig. 1.
`SLC 122 is a server that “includes a memory for storage of program
`elements [for] implementing different functions necessary to the disposition
`of communication sessions.” Id. at 7:31–34. SLC 122 also includes a
`central processing unit and mass storage unit holding a Subscriber Database.
`Id. at 7:34–37. SLC 122 provides call processing instructions to DPFEs
`106, 114. Id. at 7:22–23. Call processing instructions are determined by
`consulting the Subscriber Database for a particular caller’s service profile,
`which includes a list of conditions and events to be used to process that
`caller’s incoming calls. Id. at 7:22–27, 7:36–40. SLC 122 further is coupled
`to Gatekeeper Functional Element (GKFE) 118 in the Internet domain for
`mapping pseudo-addresses into IP addresses. Id. at 4:6–42, 7:41–8:6.
`When a call originating from one domain terminates on the other
`domain, the ACS system forwards the call to PSTN/IP gateway 124 for
`proper bridging. Id. at 11:29–31. Information on how to complete the call
`also is sent to PSTN/IP gateway 124 by SLC 122. Id. at 11:31–33, 12:7–18,
`13:34–41, Figs. 1, 3, 4.
`
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`2. Kelly (Ex. 1006)
`Kelly relates to “a technique for enabling communication connections
`between circuit-switched communication networks and packet-switched data
`processing networks.” Ex. 1006, 1:59–63. The technique “enables
`traditional telephone numbers formatted as domain names to be resolved
`into network protocol addresses.” Id. at 3:45–47. Figure 6 of Kelly is
`reproduced below.
`
`
`
`Figure 6, reproduced above, shows the steps used to resolve a telephone
`number to a network address of a gateway. Id. at 4:65–67. Upon receiving
`a traditional telephone number (e.g., “1-561-997-4001”) from a user,
`Internet telephone/WebPhone client 232 “reverses the number and appends
`the carrier’s domain name[,] resulting in a hybrid telephone/domain name
`having the form ‘4001-997-561-1.carrier.com.’” Id. at 6:58–67, 11:50–
`12:14. With reference to Figure 6, Kelly describes “a recursive process of
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`resolving the telephone number domain name previously entered into the
`WebPhone client to the appropriate IP address of a gateway on a PSTN”:
`In step 1, the WebPhone client 232 forwards the telephone
`number domain name to primary name server 254 in packetized
`form via Internet 220 and ISP 250. Using a name packet, primary
`name server 254 queries the root name server of the domain
`name
`system
`(DNS)
`for
`the
`address
`of
`“4001.997.561.1.carrier.com” in step 2. The name server for the
`DNS root returns a reference to the name server for “.com” in
`step 3. Next, name server 254 queries the referenced name server
`“.com” for the address of “4001.997.561.1.carrier.com” in
`step 4. In response, a referral to “carrier.com” is returned in
`step 5. Name server 254 then queries the name server
`“carrier.com” for “4001.997.561.1.carrier.com” in step 6.
`In response, a referral to “1.carrier.com” is returned in step 7.
`Name server 254 then queries the name server to “1.carrier.com,”
`for “4001.997.561.1.carrier.com” in step 8. In response a
`reference of “561.1.carrier.com”, is returned in step 9. Name
`server
`254
`then
`queries
`name
`server
`10
`for
`“561.1.carrier.com,”
`in
`step
`for
`“4001.997.561.1.carrier.com.” In response, a reference to
`“997.561.1.carrier.com” is returned in step 11. This last
`reference contains the IP address of the desired gateway which
`is then forwarded via Internet 220 and ISP 250 to WebPhone
`client 232 by name server 254 in step 12.
`Id. at 12:32–57.
`After step 12 of the telephone number domain name resolution
`process of Figure 6, “the call packet containing the entire telephone number
`domain name entry ‘4001.997.561.1.carrier.com’ is then sent to initiate a
`call session to the IP address of the gateway . . . , and the call is offered.” Id.
`at 13:22–26.
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`3. Vaziri (Ex. 1007)
`Vaziri relates to a “multi-network exchange system has a first type
`network (PSTN) and a second type network (Internet) and a multinetwork
`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.” Ex. 1007, at [57]. Petitioner relies on
`Vaziri for its teaching of a specific telephone number reformatting process.
`See Pet. 33–34 (citing Ex. 1007, 29:25–36, Fig. 12).
`
`E. Obviousness in View of Nadeau and Kelly
`Petitioner asserts that claims 1, 24–26, and 49 are unpatentable under
`35 U.S.C. § 103(a) as obvious in view of Nadeau and Kelly. Pet. 15–32.
`Patent Owner disagrees. Prelim. Resp. 12–30, 35–51. We have reviewed
`the parties’ contentions and supporting evidence. Given the evidence on this
`record, and for the reasons explained below, we determine that the
`information presented does not show a reasonable likelihood that Petitioner
`would prevail on this asserted ground.
`
`1. Independent Claim 1
`
`a. Petitioner’s Contentions
`According to Petitioner, “[t]o the extent the preamble is limiting,
`Nadeau-Kelly teaches it.” Pet. 18; see also id. at 17–18 (claim chart
`regarding claim 1 preamble). In particular, Petitioner relies on the SLC of
`Nadeau, asserting that the “[SLC] (call routing controller) produces routing
`instructions (routing message) to route calls between callers and callees.”
`Id. at 18 (citing Ex. 1005, 2:49–51, 6:19–23, 7:5–9, 7:22–23, Figs. 1–4;
`Ex. 1003 ¶¶ 198–201).
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`Regarding the claim 1 step of “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 asserts that Nadeau’s
`“SLC ‘consults [the] particular caller’s service profile’ to process the call
`(locate a caller dialing profile). The profile includes a caller’s home
`telephone number (caller identifier associated with the caller).” Id. at 19
`(citing Ex. 1005, 7:24–27, 9:55–64). Petitioner further contends that the
`“SLC locates the caller’s profile using the caller’s home telephone 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 19–20 (citing Ex. 1005, 9:62–64). Petitioner also relies on
`Nadeau’s teaching that the “profile includes a directory containing entries
`for each person that the caller might wish to call.” Id. at 20 (citing Ex. 1005,
`9:18–23, 9:66–67). According to Petitioner, “[e]ach 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. (citing Ex. 1005, 3:56–4:6, 9:66–
`10:20, 12:48–52; Ex. 1003 ¶¶ 202–207).
`Claim 1 further recites:
`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.
`According to Petitioner, the “SLC uses a callee’s name . . . (callee identifier)
`to locate a directory entry for the callee in the caller’s profile by matching
`
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`the callee’s name against the name indicated in the corresponding directory
`entry for the callee (calling attributes).” Pet. 22 (citing Ex. 1005, 4:3–6,
`10:1–2, 11:13–15, 12:42–52). Petitioner contends that the SLC determines
`whether to route the call over the PSTN or an IP network based on the
`routing information in the matched directory entry. Id. at 23 (citing Ex.
`1005, 7:24–37, 10:8–20, 11:27–30).
`For teaching the claimed “meet[ing] a private network classification
`criteria,” Petitioner relies on Nadeau’s teachings with respect to routing a
`call over an IP network based on an available IP address for the callee or
`when a Quality of Service bypass flag is set. Id. (citing Ex. 1005, 10:12,
`10:19–20; Ex. 1003 ¶ 211). Supported by testimony from Mr. Bress,
`Petitioner contends a person of ordinary skill in the art would have known
`that “an IP network includes private networks like intranets and local area
`networks (LANs).” Id. (citing Ex. 1003 ¶ 212; Ex. 10094, 6–44). Petitioner
`also relies on Kelly for teaching that an IP network includes private
`networks like intranets and LANs. Id. (citing Ex. 1006, 2:30–41). Petitioner
`contends a person of ordinary skill in the art would have modified Nadeau’s
`IP network to include intranets and LANs based on Kelly because it is a
`combination of known elements according to known methods that would
`yield predictable results. Id. (citing Ex. 1003 ¶ 213).
`For the claimed “producing a private network routing message,”
`Petitioner contends Nadeau’s SLC “generates and sends ‘routing
`
`
`4 LILLIAN GOLENIEWSKI, TELECOMMUNICATIONS ESSENTIALS: THE
`COMPLETE GLOBAL SOURCE FOR COMMUNICATIONS FUNDAMENTALS, DATA
`NETWORKING AND THE INTERNET, AND NEXT-GENERATION NETWORKS
`(2002). Ex. 1009 is an excerpt of various portions of the textbook. Cited
`pages 6–44 of the exhibit correspond to pages 329–367 of the textbook.
`
`
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`17
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`IPR2017-01384
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`instructions’ (private network routing message) to a detection point
`(‘DPFE’) and/or Internet ACS Gateway (collectively, a call controller).” Id.
`at 24 (citing Ex. 1005, 7:22–23, 12:55–61; Ex. 1003 ¶¶ 215–217). Petitioner
`explains “the ‘routing instructions’ instruct the DPFE to route the call to an
`IP address of the callee.” Id. (citing Ex. 1005, 12:55–61). Regarding the
`claim requirement that the routing message “identif[ies] an address, on the
`private network, associated with the callee,” Petitioner acknowledges that
`Nadeau “does not explicitly disclose that the routing instructions identify the
`callee’s IP address,” but contends this would have been obvious based on
`Nadeau’s teachings that the network is an IP network and that the “SLC
`returns ‘a message indicating to route the call to the IP address retrieved
`from the Internet domain’ . . . , which is the callee’s IP address.” Id.
`(quoting Ex. 1005, 12:55–61; citing Ex. 1005, 11:27; Ex. 1003 ¶¶ 219–221)
`(emphasis omitted). Petitioner explains that a person of ordinary skill in the
`art would have known that an IP address is used to route calls in an IP
`network. Id. (citing Ex. 1003 ¶¶ 219–221).
`Petitioner further contends that, in light of Kelly, a person of ordinary
`skill in the art would have known to modify the programming of Nadeau’s
`SLC so that the callee’s IP address was included in the routing instructions.
`Id. at 24–25 (citing Ex. 1006, 7:56–8:1; Ex. 1003 ¶¶ 222–225). Petitioner
`characterizes this modification as being a known technique yielding
`predictable results that “allows a call to be routed to the callee’s IP
`address . . . which is the same result desired by Nadeau.” Id. at 25 (citing
`Ex. 1005, 10:3, 12:55–61; Ex. 1006, 7:59–67; Ex. 1003 ¶¶ 222–225).
`Petitioner further contends it would have been obvious for a person of
`ordinary skill in the art to try this technique based on similar reasons. Id.
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`(citing Ex. 1005, 7:5–9, 7:22–23, 11:27–28, 12:55– 61; Ex. 1006, 7:64–67;
`Ex. 1003 ¶¶ 222–225).
`Claim 1 further recites: “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.” As discussed above, Petitioner
`contends that the SLC determines whether to route the call over the PSTN or
`an IP network based on the routing information in the matched directory
`entry. See Pet. 27 (referring back to the earlier discussion in the Petition).
`For teaching the claimed “meet[ing] a public network classification
`criterion,” Petitioner relies on Nadeau’s teachings with respect to routing a
`call to the public switched telephone network (PTSN) based on a least cost
`routing rule or a priority list in a subscriber record. Id. (citing Ex. 1005,
`10:11, 10:15–18; Ex. 1003 ¶ 230).
`For the claimed “producing a public network routing message,”
`Petitioner again relies on Nadeau’s SLC purportedly sending “routing
`instructions.” Id. at 27–28 (citing Ex. 1005, 7:5–9, 7:22–23, 12:55–61;
`Ex. 1003 ¶¶ 232–233). Petitioner contends that, to route an IP-originated
`call over the PSTN, “the ‘routing instructions’ direct the DPFE to route the
`call to a IP-PSTN Gateway (gateway to the public network), also known as a
`Gateway Functional Element (GWFE).” Id. at 28 (citing Ex. 1005, 7:5–9,
`8:39–42, 11:29–33). Regarding the claim requirement that the routing
`message “identif[ies] a gateway to the public network,” Petitioner
`acknowledges that Nadeau “does not explicitly state that the routing
`instructions identify the IP-PSTN Gateway to which the call is routed,” but
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`contends a person of ordinary skill in the art would have known “that the
`routing instructions must include such an identification to complete the call.”
`Id. (citing Ex. 1003 ¶¶ 236–238). Petitioner further contends that, in light of
`Kelly, a person of ordinary skill in the art would have known to modify
`Nadeau’s SLC to perform the gateway selection process of Kelly by
`“produc[ing] routing instructions that identify the IP-PSTN Gateway by
`including its IP address.” Id. (citing Ex. 1006, 12:32–35, 12:55–57, 13:22–
`26; Ex. 1003 ¶¶ 195, 196, 227–240).
`Regarding combining the asserted references, Petitioner contends
`Nadeau and Kelly are from the same field of endeavor and are both
`concerned with reducing the cost for making VoIP calls. Pet. 15 (citing
`Ex. 1005, 1:53–2:9, 6:30, 10:11–16; Ex. 1006, 2:42–3:19, 13:46–57).
`Petitioner further contends that a person of ordinary skill in the art “would
`have considered Kelly when implementing or improving Nadeau.” Id.
`(citing Ex. 1003 ¶ 192). Petitioner notes that Nadeau’s SLC may determine
`to route a call over the PSTN based on least cost routing, but that Nadeau
`“includes only one gateway to route the call to the PSTN, so the cost for
`PSTN routing is controlled by that gateway alone.” Id. (citing Ex. 1005,
`7:5–9, 7:22–23, 8:39–40, 10:11–16, 11:27–28, Fig. 1). Petitioner contends
`that Kelly “recognizes that costs may be further reduced by selecting a
`gateway that provides lower cost routing compared to other gateways.” Id.
`(citing Ex. 1006, 13:39–57). In light of this, Petitioner contends a person of
`ordinary skill in the art “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.” Id. at 16
`(citing Ex. 1003 ¶¶ 192–195).
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`b. Patent Owner’s Arguments
`Patent Owner argues that the only “routing instructions” disclosed by
`Nadeau relative to the “public network” consist of “simply a directory
`number (DN).” Prelim. Resp. 16 (citing Ex. 1005, 9:20–23). Thus,
`according to Patent Owner, “Nadeau does not disclose that anything
`identifying the IP-PSTN Gateway is required for Internet-to-PSTN routing.”
`Id. Patent Owner further criticizes Petitioner’s assertion that Nadeau’s
`routing instructions “must include” an identification of a gateway to the
`public network. See id. at 16–21 (citing Pet. 28). Patent Owner
`characterizes this as an assertion of inherency and contends that Petitioner
`has not established Nadeau’s routing instructions necessarily identify a
`gateway. See id. Patent Owner contends Petitioner’s assertion is supported
`only by Mr. Bress’s testimony, which Patent Owner disputes. See id. at 19–
`21. For example, in response to Mr. Bress’s testimony that Nadeau’s DPFE
`and ACS Gateway would need an IP address to route a PSTN call (see
`Ex. 1003 ¶¶ 236–238), Patent Owner provides a counterexample in which
`Nadeau’s single IP-PSTN Gateway is preconfigured to receive all “public”
`calls. Prelim. Resp. 19–20.
`Regarding Petitioner’s proposed modification of Nadeau with Kelly,
`Patent Owner contends Petitioner has failed to “consider[] or describ[e]
`various significant further modifications of the SLC that would be necessary
`in order for the combined references to actually perform” the public network
`routing message limitation. Prelim. Resp. 21. For example, Patent Owner
`contends “Petitioner has not provided guidance regarding how merely
`programming Nadeau’s SLC to produce the call packet of Kelly . . . would
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`result in the SLC ‘producing a public network routing message . . .
`identifying a gateway to [a] public network.’” Id. at 24.
`In particular, Patent Owner highlights a potential inconsistency in
`Petitioner’s proposed combination. Patent Owner notes that Petitioner maps
`Nadeau’s Internet ACS Detection Point/DFPE 114 and Internet ACS
`gateway 116, collectively, to the recited “call controller.” Id. at 27 (citing
`Pet. 28). Patent Owner further notes Nadeau teaches that ACS Service
`Logic Controller 122 provides “routing instructions,” which Petitioner maps
`to the recited “network routing message,” to Internet ACS Detection Point/
`DFPE 114. Id. at 12 (citing Pet. 27–28), 24–25 (citing Ex. 1005, 7:1–12,
`9:38–46, 11:27–32). Patent Owner notes
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