`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`APPLE INC.
`Petitioner
`
`v.
`
`VOIP-PAL.COM, INC.
`Patent Owner
`____________
`
`
`Case No. TBD
`U.S. Patent No. 9,179,005
`____________
`
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,179,005
`
`
`
`
`
`Voip-Pal Ex. 2015
`IPR2017-01398
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`

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`Petition for Inter Partes Review of U.S. Patent No. 9,179,005
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`
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`TABLE OF CONTENTS
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`I.
`
`II.
`
`INTRODUCTION .......................................................................................... 1
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`SUMMARY OF THE ’005 PATENT ............................................................ 1
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`A. Description of the Alleged Invention of the ’005 Patent ............................... 1
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`B. Summary of the Prosecution History of the ’005 Patent ................................ 3
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`C. The Earliest Possible Priority Date for the Challenged Claims ..................... 4
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`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§ 42.104 .......................................................................................................... 4
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`A. Grounds for Standing Under 37 C.F.R. § 42.104(a) ...................................... 5
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`B. Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested ....................................................................................................... 5
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`C. Claim Construction Under 37 C.F.R. § 42.104(b)(3) ..................................... 6
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`1. Constructions pursuant to 35 U.S.C. § 112, ¶ 6 ........................................ 6
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`(a)
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`“means for using” ............................................................................. 7
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`(b) “means for . . . producing” ............................................................... 7
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`(c)
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`“means for causing” ......................................................................... 8
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`D. Level of Skill of a Person Having Ordinary Skill in the Art .......................... 9
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`IV. THERE IS A REASONABLE LIKELIHOOD THE CHALLENGED
`CLAIMS OF THE ’005 PATENT ARE UNPATENTABLE ........................ 9
`
`A. Chu ’684 in view of Chu ’366 renders the Challenged Claims Obvious
`Under 35 U.S.C. § 103(a) ............................................................................. 10
`
`B. Chu ’684 in view of Chen renders the Challenged Claims Obvious Under 35
`U.S.C. § 103(a) ............................................................................................. 36
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`Petition for Inter Partes Review of U.S. Patent No. 9,179,005
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`V. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) ..................... 60
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`A. Real Party-In-Interest and Related Matters .................................................. 60
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`B. Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3-4) ...................... 61
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`C. Payment of Fees Under 37 C.F.R. § 42.103 ................................................. 62
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`VI. CONCLUSION ............................................................................................ 62
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`Petition for Inter Partes Review of U.S. Patent No. 9,179,005
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`I.
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`INTRODUCTION
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`Petitioner Apple Inc. (“Petitioner”) requests an Inter Partes Review (“IPR”)
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`of claims 1, 24-26, 49-50, 73-79, 83-84, 88-89, 92, 94-96, 98, and 99 (collectively,
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`the “Challenged Claims”) of U.S. Patent No. 9,179,005 (“the ’005 Patent”) issued
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`on November 3, 2015 to Clay Perreault, et al. (“Applicants”). Exhibit 1001, ’005
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`Patent. As demonstrated by Petitioner below, the purportedly distinguishing
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`feature of the ’005 Patent of using attributes about a caller to determine whether a
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`call is routed to a private or public network was present in the prior art.
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`II.
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`SUMMARY OF THE ’005 PATENT
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`A. Description of the Alleged Invention of the ’005 Patent
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`The ’005 Patent generally describes a telephony system in which calls are
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`classified as either public network calls or private network calls and routing
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`messages are generated to route calls accordingly. See Ex. 1001 at Abstract. A
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`call routing controller receives a request to establish a call from a calling party,
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`which includes an identifier of the called party. Id. at 1:59-61. Call routing
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`controller then compares the called party identifier with attributes of the calling
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`party identifier, and may reformat the called party identifier depending on the
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`result of this comparison. Id. at 2:13-31. Based on the comparison of attributes of
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`the calling party and the called party identifier, the call routing controller next
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`Petition for Inter Partes Review of U.S. Patent No. 9,179,005
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`determines whether the called party is a subscriber to a private network. Id. at
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`2:51-53, 3:4-8. If so, a routing message is generated so that the call can be directed
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`to the private network node serving the called party. Id. at 1:64-67. If the called
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`party is not on the private network, the call is classified as a public network call
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`and a routing message is generated so that the call can be directed through a
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`gateway to a public network. Id. at 1:67-2:2.
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`More specifically, the ’005 Patent describes a calling party utilizing a Voice
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`over Internet Protocol (“VoIP”) telephone who is able to call (1) other VoIP
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`subscribers on a private packet-based network or (2) standard public switched
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`telephone network (“PSTN”) customers on the public telephone network. Id. at
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`1:20-2:2. To identify a single destination the calling party is attempting to reach,
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`the ’005 Patent teaches that modifications to the dialed digits may be necessary.
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`Fig. 8B illustrates a variety of modifications, which include, as an example,
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`prepending the calling party’s country code and area code to the dialed digits when
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`the called party dials a local number. Id. at Fig. 8B. With the formatted number, a
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`direct-inward-dial bank (“DID”) table is referenced to determine if the called party
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`is a subscriber to the private packet network. Id. If not, the call is directed to a
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`PSTN gateway and the formatted number is used to connect the call over the
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`public PSTN to the called party. Id.
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`Petition for Inter Partes Review of U.S. Patent No. 9,179,005
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`B.
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`Summary of the Prosecution History of the ’005 Patent
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`The ’005 Patent issued from U.S. Patent Application No. 13/966,096 (“the
`
`’096 Application”), which is a continuation of U.S. Patent Application No.
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`12/513,147 (“the ’147 Application”), which claims priority to International
`
`Application No. PCT/CA2007/001956, which was filed on November 1, 2007 and
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`claims priority to Provisional Application No. 60/856,212 (“the ’212 Provisional”),
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`filed on November 2, 2006. See Ex. 1001.
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`The presented claims in the ’096 Application were subject to a single Office
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`Action rejecting them unpatentable pursuant to 35 U.S.C. § 103(a) over U.S. Patent
`
`No. 6,798,767 to Alexander et al. (“Alexander”), U.S. Patent No 5,917,899 to
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`Moss at al. (“Moss”), U.S. Patent Application 2007/0217354 to Buckley
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`(“Buckley”), U.S. Patent No. 6,597,783 to Tada et al. (“Tada”), and U.S. Patent
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`No. 6,873,599 to Han (“Han”). Ex. 1003, Office Action dated April 9, 2015 at 909-
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`17. Distinguishing Alexander from the rejected claims, the Applicants argued that
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`Alexander does not use any information about the calling party to determine
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`whether the called party is on a public or private network, but instead uses a simple
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`mapping tables to convert dialed digits to an IP address of the target phone. Ex.
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`1002, Office Action Response dated May 15, 2015 at 792-93 (“Alexander is
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`completely silent as to performing any functions related to the caller or caller
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`Petition for Inter Partes Review of U.S. Patent No. 9,179,005
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`dialing profile and only locates a callee telephone number.”) (emphasis in
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`original). Applicant further argued that neither Moss, Buckley, Tada, nor Han
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`cured the deficiencies of Alexander. Id. at 799-803. An interview was conducted
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`with the Examiner on May 28, 2015 during which the Examiner agreed that
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`“Alexander fails to teach claimed limitations of determingng (sic) if a calling
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`attribute meets (matches) a portion of a callee's identifier, and producing a routing
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`message accordingly.” Id., Interview Summary dated June 2, 2015 at 768. The
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`Examiner issued a Notice of Allowance on August 13, 2015 and the Applicants
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`submitted allegedly clerical amendments on September 8, 2015, which were
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`initialed by the Examiner on September 15, 2015.
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`C.
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`The Earliest Possible Priority Date for the Challenged Claims
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`The ’005 Patent claims priority to the ’212 Provisional, filed on November
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`2, 2006. For the purposes of this IPR, it is assumed that all Challenged Claims are
`
`entitled to this earliest priority date without waiving future arguments that certain
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`claim elements are not supported by the disclosure in the ’212 Provisional.
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`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§ 42.104
`
`Each requirement for IPR of the ’005 Patent is satisfied under §42.104.
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`Petition for Inter Partes Review of U.S. Patent No. 9,179,005
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`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`
`Petitioner certifies that the ’005 Patent is available for IPR and that the
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`Petitioner is not barred or estopped from requesting IPR challenging the claims of
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`the ’005 Patent. Specifically, Petitioner states: (1) Petitioner is not the owner of the
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`’005 Patent; (2) Petitioner has not filed a civil action challenging the validity of
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`any claim of the ’005 Patent; and (3) this Petition is not filed one year or more after
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`Petitioner was served with a complaint alleging infringement of the ’005 Patent.
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`B.
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`Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested
`
`In view of the prior art, evidence, and claims charts, the Challenged Claims
`
`are unpatentable and should be cancelled. 37 C.F.R. § 42.104(b)(1).
`
`1.
`
`The Grounds For Challenge
`
`Based on the prior art references identified below, IPR of the Challenged
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`Claims should be granted. 37 C.F.R. § 42.104(b)(2).
`
`Proposed Statutory Rejections for the ’005 Patent
`
`The Challenged Claims are obvious under § 103(a) over U.S.
`Patent No. 7,486,684 to Chu et al. (“Chu ’684”) in view of U.S.
`Patent No. 8,036,366 to Chu (“Chu ’366”).
`The Challenged Claims are obvious under § 103(a) over U.S.
`Patent No. 7,486,684 to Chu et al. (“Chu ’684”) in view of U.S.
`Patent Publication No. 2007/0064919 to Chen et al. (“Chen”).
`
`Reference
`Exhibit No.
`1003, 1004
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`1003, 1005
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`Section IV identifies where each element of the Challenged Claims is found in the
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`Petition for Inter Partes Review of U.S. Patent No. 9,179,005
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`prior art patents. 37 C.F.R. § 42.104(b)(4). The exhibit numbers of the supporting
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`evidence relied upon to support the challenges are provided above and the
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`relevance of the evidence to the challenges raised are provided in Section IV. 37
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`C.F.R. § 42.104(b)(5). Exhibits 1001 – 1006 are also attached.
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`C. Claim Construction Under 37 C.F.R. § 42.104(b)(3)
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`A claim subject to IPR receives the “broadest reasonable construction in
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`light of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b).
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`With the below-noted exceptions, Petitioner proposes as the broadest reasonable
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`construction, for purposes of IPR only, that the claim terms of the ’005 Patent be
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`given their ordinary and customary meaning that the term would have to one of
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`ordinary skill in the art. The claim construction analysis is not, and should not be
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`viewed as, a concession by Petitioner as to the proper scope of any claim term in
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`any litigation. Moreover, these assumptions are not a waiver of any argument in
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`any litigation that claim terms in the ’005 Patent are indefinite or otherwise invalid.
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`1.
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`Constructions pursuant to 35 U.S.C. § 112, ¶ 6
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`Claims 50 and 73 include limitations in means-plus function format, which
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`creates a rebuttable presumption that the Patent Owner intended to invoke § 112, ¶
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`6. Corresponding structure for each means-plus-function limitation is identified
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`below, and Petitioner proposes that the claimed functions recited in each of these
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`Petition for Inter Partes Review of U.S. Patent No. 9,179,005
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`limitations be given its ordinary and customary meaning that the term would have
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`to one of ordinary skill in the art under the broadest reasonable interpretation.
`
`(a)
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`“means for using”
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`Claim 50 recites a “means for using a caller identifier associated with the
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`caller to locate a caller dialing profile comprising a plurality of calling attributes
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`associated with the caller.” At least under the broadest reasonable interpretation,
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`the corresponding structure that performs this recited function is RC processor
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`circuit 200 programmed to implement the algorithm illustrated in cell 254 of Fig.
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`8A. Id. at 19:38-45, FIGS. 7, 8A.
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`(b)
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`“means for . . . producing”
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`Claim 50 recites “means for, when at least one of said calling attributes and
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`at least a portion of a callee identifier associated with the callee meet private
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`network classification criteria, producing a private network routing message for
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`receipt by a call controller, said private network routing message identifying an
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`address, on the private network, associated with the callee” and “means for, when
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`at least one of said calling attributes and at least a portion of said callee identifier
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`meet a public network classification criterion, producing a public network routing
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`message for receipt by the call controller, said public network routing message
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`identifying a gateway to the public network.” At least under the broadest
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`Petition for Inter Partes Review of U.S. Patent No. 9,179,005
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`reasonable interpretation, the corresponding structure that performs the recited
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`functions is processor 202 programmed to implement one or more branches of the
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`algorithm illustrated in Fig. 8B. Id. at 19:58-20:35, FIGS. 7 and 8B. Additionally,
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`Figs. 8A, 8C and 8D detail, among other functions, algorithms which produce
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`network routing messages. However, because Fig. 8D and the corresponding
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`description do not illustrate the basic process of generating the claimed message,
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`Petitioner identifies the claimed function as the disclosed algorithm. At least under
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`the broadest reasonable interpretation, the corresponding structure that generates
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`routing messages as described in these recited functions is processor 202 of RC
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`processor circuit 200, programmed to implement (1) the algorithm illustrated in
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`cell 350 of FIG. 8A or cell 644 of Fig. 8C for private routing messages and (2) the
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`claimed function of “producing a public network routing message” for public
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`routing messages. Id. at 20:37-58, 24:55-25:12, 26:49-57, FIGS. 7, 8A, 8C, 8D, 16,
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`25, 32.
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`(c)
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`“means for causing”
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`Claim 73 recites a “means for causing the private network routing message or
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`the public network routing message to be communicated to a call controller to effect
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`routing of the call.” At least under the broadest reasonable interpretation, the
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`corresponding structure that performs this recited function is processor 202 of RC
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`Petition for Inter Partes Review of U.S. Patent No. 9,179,005
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`processor circuit 200, programmed to perform the algorithms illustrated in cell 381
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`of FIG. 8A, cell 646 of FIG. 8C, or cell 568 of FIG. 8D. Id. at 20:37-58, 24:55-
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`25:12, FIGS. 7, 8A, 8C, 8D.
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`D.
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`Level of Skill of a Person Having Ordinary Skill in the Art
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`A person of ordinary skill in the art at the time of the ’005 Patent would
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`have been a person having at least a bachelor’s degree in electrical engineering, or
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`in a related field, with at least 2-4 years of industry experience in designing or
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`developing packet-based and circuit-switched
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`telecommunication systems.
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`Additional industry experience or technical training may offset less formal
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`education, while advanced degrees or additional formal education may offset lesser
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`levels of industry experience. See Ex. 1009, Houh Declaration, at ¶ 19.
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`IV. THERE IS A REASONABLE LIKELIHOOD THE CHALLENGED
`CLAIMS OF THE ’005 PATENT ARE UNPATENTABLE
`
`Systems and methods for placing calls to either a private network or the
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`public PSTN were prevalent well before November 2, 2006. The following prior
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`art references disclose each limitation of the Challenged Claims either alone or in
`
`combination with another reference. As such, the Challenged Claims are
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`unpatentable. Included in the claim charts below are exemplary citations to the
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`prior art references.
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`Petition for Inter Partes Review of U.S. Patent No. 9,179,005
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`A.
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`Chu ’684 in view of Chu ’366 renders the Challenged Claims
`Obvious Under 35 U.S.C. § 103(a)
`
`U.S. Patent No. 7,486,684 to Chu, et al. (“Chu ’684”) was filed on Sept. 30,
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`2003 and therefore qualifies as prior art with regard to the ’005 Patent at least under 35
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`U.S.C. § 102(e). U.S. Patent No. 8,036,366 to Chu (“Chu ’366”) was filed on Aug. 4,
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`2006 and therefore qualifies as prior art with regard to the ’005 Patent under 35 U.S.C.
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`§ 102(e). Neither reference was cited during prosecution. See Exs. 1002-1005.
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`The system disclosed in the specification of Chu ’684 is nearly identical in form
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`and function to that described by the ’005 Patent. Both Chu ’684 and the ’005 Patent
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`describe telecommunications systems in which a VoIP subscriber can place a call to
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`either another VoIP subscriber on a private packet-based network or to a customer on
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`the public PSTN. Compare Ex. 1006, Chu ’684 at 2:33-64 with Ex. 1001, ’005 Patent
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`at 1:17-2:2. Additionally, both Chu ’684 and the ’005 Patent describe call setup
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`procedures in which a call processor analyzes attributes of the caller and information
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`identifying the callee (e.g., dialed digits) to determine whether the call should be routed
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`to a destination on the private packet network or the public PSTN. Compare Ex. 1006,
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`Chu ’684 at 8:65-9:1 (“At step 608, after receiving all the dialed digits from the phone
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`101, server 110 consults its dial plan to determine whether the call is local, to another
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`on-net phone, or to a phone that is on the PSTN.”) with Ex. 1001, ’005 Patent at Fig.
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`Petition for Inter Partes Review of U.S. Patent No. 9,179,005
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`8B and 1:59-64 (“The process involves, in response to initiation of a call by a calling
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`subscriber, receiving a caller identifier and a callee identifier. The process also involves
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`using call classification criteria associated with the caller identifier to classify the call
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`as a public network call or a private network call.”). Finally, both Chu ’684 and the
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`’005 Patent describe routing a call directly to a callee on a private packet network or
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`through a gateway when the called party is on the public PSTN. Compare Ex. 1006,
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`Chu ’684 at 9:1-38 (Where “the call is to another on-net phone in another location. . .
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`[the] soft-switch 220 determines the . . . IP address of the egress packet switch.”) and
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`13:15-23 (“From the dialed digits [ ], ingress soft-switch 220, determines that this call
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`is for the PSTN. From the same dialed digits, the soft-switch also determines the egress
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`PSTN gateway 1302 and its controlling soft-switch 1304. The ingress soft-switch 220
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`will proceed the call signaling and control as described previously. The gateway 1302
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`acts as an ‘egress packet switch’”) with Ex. 1001, ’005 Patent at 1:64-2:2 (“The
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`process further involves producing a routing message identifying an address, on the
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`private network, associated with the callee when the call is classified as a private
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`network call. The process also involves producing a routing message identifying a
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`gateway to the public network when the call is classified as a public network call.”).
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`While Chu ’684 discloses using attributes of the caller (e.g., the caller’s dial
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`plan) and information identifying the callee (e.g., dialed digits) to determine whether a
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`Petition for Inter Partes Review of U.S. Patent No. 9,179,005
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`call should be terminated to a callee on the private packet network or on the public
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`PSTN, some of the Challenged Claims also describe specific scenarios in which the
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`callee identifier (e.g., dialed digits) is modified based on certain attributes of the called
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`party before determining whether the call is public or private. Fig. 8B from the ’005
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`Patent illustrates these scenarios:
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`Modifying callee identifier (e.g., dialed digits) using attributes of the caller,
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`however, was also well known in the prior art. As an example, Chu ’366 taught
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`precisely the same dialed digit comparison and modification as the ’005 Patent. Fig.
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`6 from Chu ’366 illustrates the striking similarity between the prior art and Fig. 8B
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`from the ’005 Patent:
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`Petition for Inter Partes Review of U.S. Patent No. 9,179,005
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`As these figures illustrate, both Chu ’366 and the ’005 Patent check dialed digits for
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`International Dialing Digits (IDD), National Dialing Digits (NDD), and a number of
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`formatting rules. Additionally, both illustrate using calling party attributes such as
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`country code and area code to reformat the dialed digits into a standard format such as
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`E.164.
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`Chu ’366 explains why such comparison and reformatting is necessary in a
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`VoIP system. Namely, “E.164 [ ] provides a uniform means for identifying any
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`telephone number in the world to any telephony user in the world. . . . When making
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`telephone calls via a traditional PSTN, a subscriber is able to enter abbreviated numbers
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`for local and national telephone calls. For example, for a local call in the United States,
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`a user may simply enter the seven digit telephone number without an E.164 prefix, the
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`country code or the area code. Local and national calls are possible with PSTN systems
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`because the fixed-line phones from which such calls are made are hardwired directly to
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`the local PSTN center. By contrast, there is no such concept of local, long distance or
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`national calls when making a call via Internet telephony. VoIP calls use the Internet,
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`which is world-wide and not tied to any single location.” Ex. 1007, Chu ’366 at 1:18-
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`47. By using caller attributes to reformat dialed digits into an E.164 compatible
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`number, “a user is able to enter telephone numbers for VoIP telephone calls as they
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`would according to a traditional telephone numbering plan for land-line telephone
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`calls.” Id. at 2:1-4. In other words, both Chu ’366 and the ’005 Patent allow VoIP
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`customers to enter dialed digits as if they were calling from a standard PSTN telephone,
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`and the system then reformats the number using attributes of the calling party (e.g.,
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`national and area codes).
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`Petition for Inter Partes Review of U.S. Patent No. 9,179,005
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`There is significant overlap between Chu ’684 and Chu ’366. Both
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`references teach telecommunications systems in which VoIP subscribers can place
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`calls to a customer on the public PSTN. Compare Ex. 1006, Chu ’684 at 8:65-9:1
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`(“At step 608, after receiving all the dialed digits from the phone 101, server 110
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`consults its dial plan to determine whether the call is local, to another on-net phone, or
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`to a phone that is on the PSTN.”) with Ex. 1007, Chu ’366 at 14:30-33 (“[T]here is
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`shown a system for communications between a computing environment 202 including
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`the application program according to the present system and a PSTN telephone 216.”).
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`Both references also teach a process in which dialed digits and caller attributes are used
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`to determine where the call should be routed. Compare Ex. 1006, Chu ’684 at 8:65-9:1
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`(“At step 608, after receiving all the dialed digits from the phone 101, server 110
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`consults its dial plan to determine whether the call is local, to another on-net phone, or
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`to a phone that is on the PSTN.”) with Ex. 1007, Chu ’366 at Fig. 6. Finally, both
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`references expressly reference E.164 as an international standard dial plan. Compare
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`Ex. 1006, Chu ’684 at 3:59-61 (“[E]ach IP phone [may be] assigned its own E.164
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`number (the international standard dial plan) and receiving calls from the PSTN
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`directly.”) with Ex. 1007, Chu ’366 at 1:18-20 (“E.164 [ ] provides a uniform means for
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`identifying any telephone number in the world to any telephony user in the world.”).
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`Petition for Inter Partes Review of U.S. Patent No. 9,179,005
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`It would have been obvious to one of skill in the art to modify the system
`
`described by Chu ’684 with the specific dialed digit reformatting teachings of Chu
`
`’366. Given that the system of Chu ’684 already contains all the infrastructure
`
`needed to support such reformatting, the modification to Chu ’684 would be
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`straightforward, not requiring undue experimentation, and would produce
`
`predictable results. Upon reading the disclosure of Chu ’684, a person of ordinary
`
`skill in the art would have recognized that allowing users to place calls as if they
`
`were dialing from a standard PSTN phone would be desirable, creating a system
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`capable of supporting a more intuitive and user-friendly interface. See Ex. 1009,
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`Houh Decl. at ¶¶ 35-39.
`
`One of ordinary skill would thus have appreciated that these improvements
`
`to Chu ’684 could be achieved by merely programming the system of Chu ’684 to
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`analyze the dialed digits and reformat as necessary using caller attributes such as
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`national and area code. Such modifications are simply a combination of the
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`system of Chu ’684 with elements of Chu ’366 that would have yielded predictable
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`results without requiring undue experimentation. Id. at ¶ 38. Thus, it would have
`
`been natural and an application of nothing more than ordinary skill and common
`
`sense to combine Chu ’684 with the number reformatting of Chu ’366. Id.
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`Petition for Inter Partes Review of U.S. Patent No. 9,179,005
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`Therefore, the Challenged Claims are unpatentable under §103(a) as obvious over
`
`Chu ’684 in view of Chu ’366, as shown in the charts below.
`
`US Patent
`9,179,005
`1. A process for
`producing a routing
`message for routing
`communications
`between a caller and
`a callee in a
`communication
`system, the process
`comprising:
`
`(a) using a caller
`identifier associated
`with the caller to
`locate a caller
`dialing profile
`comprising a
`plurality of calling
`attributes associated
`with the caller;
`
`
`
`
`
`
`
`Obvious over Chu ’684 (Ex. 1003)
`in view of Chu ’366 (Ex. 1004)
`Chu ’684 teaches producing a routing message for routing
`telephone calls (“communications”) between callers and callees
`in a telecommunications system.
`
`Chu ’684 describes “a novel method for establishing and
`managing voice call traffic in an VoIP IP virtual private
`network” including “determining one or more IP addresses to
`egress the communication from the originating point to the
`terminating point.” Ex. 1006, Chu ’684 at 2:34-44.
`
`“An apparatus for IP-based VPN communications includes at
`least one soft-switch and at least one packet switch having an
`interface to said at least one soft-switch. The packet switch has a
`VPN processing module for selectively establishing a VPN
`based on a selection of originating and terminating IP addresses
`of voice calls passed to the at least one soft-switch and at least
`one packet switch. . . . The apparatus may further include a
`PSTN gateway connected to a gateway soft-switch and said at
`least one soft-switch for processing “off-net” calls.” Id. at 2:51-
`64; see also id. at 1:9-13.
`Chu ’684 teaches using a subscriber’s identifying information
`(e.g., the subscriber’s E.164 telephone number) (“a caller
`identifier”) to access a dial plan that includes calling attributes
`of the subscriber.
`
`“The soft-switch is the intelligence of the system. It contains all
`the information regarding the subscribers' VPNs. For example, it
`keeps track of the VPN that a location belongs to, the dial plans
`of the subscribers, the VPN identifier for an VPN (or a particular
`interface) and the like.” Id. at 4:59-63.
`
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`Petition for Inter Partes Review of U.S. Patent No. 9,179,005
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`“[U]pon receipt of the SIP “invite” message from the server 110,
`the soft-switch 220 consults the dial plan for this subscriber. The
`dial plan to use can be determined from the ID of the server
`110.” Id. at 9:30-33.
`
`“Many subscribers, each with multiple locations, can be served
`by the same packet-switch/soft-switch network. Each subscriber
`can use their the [sic] own IP address plan as well as their own
`dial plan.” Id. at 12:60-66; see also id. at 3:56-64 (noting each
`IP phone can be assigned its own E.164 number and IP address);
`Ex. 1009, Houh Declaration at ¶ 45 (noting that because
`multiple subscribers can be associated with a single server, a
`subscriber’s dial plan, in addition to an ID of the server, must
`necessarily include unique subscriber-specific information such
`as an E.164 telephone number, globally unique database key, or
`the like).
`
`Additionally, Chu ’366 teaches that users may set up “call
`origin profiles”
`that
`include calling attributes such as
`geographic location, country code, and area code.
`
`Ex. 1007, Chu ’366 at 2:9-15 (describing call origin location
`profiles).
`As illustrated in Fig. 8B of the ’005 Patent, an initial match
`between the dialed digits (“callee identifier”) and calling
`attributes determines whether the dialed digits must be
`reformatted in order to identify the intended callee. Once
`reformatted (e.g., NDD removed and caller country code
`prepended), the reformatted callee identifier is used to
`determine whether the callee is a subscriber on the private
`network or is a customer on the public network, i.e., whether
`“public network classification criteria” or “private network
`classification criteria” are met. The combination of Chu ’684
`and Chu ’366 performs this precise process.
`
`Chu ’366 teaches reformatting dialed digits to generate an
`E.164 compliant callee identifier when dialed digits “match”
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`(b) 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
`
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`Petition for Inter Partes Review of U.S. Patent No. 9,179,005
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`private network
`routing message
`identifying an
`address, on the
`private network,
`associated with the
`callee; and
`
`(c) 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.
`
`caller attributes, e.g., when the dialed digits equal the national
`dialing length of the caller’s origin designation.
`
`Id. at Abstract (dialed digits are reformatted “as E.164 compliant
`telephone numbers”).
`
`“[A] user is able to enter telephone numbers for VoIP telephone
`calls as they would according to a traditional telephone
`numbering plan for land-line telephone calls. . . . The E.164
`formatting engine receives the entered phone number and
`retrieves the call origin location.” Id. at 1:67-2:20 (emphasis
`added); see also id. at 2:46-53.
`
`“In step 172, if the number of digits entered in a telephone
`number equals the national length of telephone numbers in the
`country of the call origin location (e.g., ten digits in the United
`States), the engine 102 interprets this as a call somewhere within
`the country of the designated call origin location. Accordingly,
`in step 174, the engine 102 concatenates the E.164 prefix, the
`country code for the country of the designated call origin
`location and the entered telephone number to form a fully
`formatted E.164 telephone number.” Id. at 2:14-22 (emphasis
`added).
`
`Compare Id. at Fig. 6 (illustrating numerous number
`reformatting scenarios based on matching dialed digits to caller
`attributes) with Ex. 1001, ’005 Patent at Fig. 8B (same).
`
`Once the callee identifier is reformatted, Chu ’684 determines
`whether the callee is a private packet network subscriber or a
`public PSTN customer (i.e., whether the call “meets public
`network
`classification
`criteria” or “private network
`class