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
`
`
`
`
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,179,005
`
`TABLE OF CONTENTS
`
`I. Introduction ............................................................................................. 1
`
`Summary Of The ’005 Patent ............................................................ 2
`II.
`A. Description of the Alleged Invention of the ’005 Patent .............. 2
`B.
`Summary of the Prosecution History of the ’005 Patent ............. 3
`C. The Earliest Possible Priority Date for the Challenged Claims . 5
`
`III. Requirements for Inter Partes Review under 37 C.F.R. § 42.104 .. 5
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a) .................... 5
`B.
`Identification of Challenge Under 37 C.F.R. § 42.104(b) and
`Relief Requested ............................................................................. 5
`C. Claim Construction Under 37 C.F.R. § 42.104(b)(3) ................... 6
`D. Level of Skill of a Person Having Ordinary Skill in the Art ....... 9
`
`IV. There Is A Reasonable Likelihood The Challenged Claims of The
`’005 Patent Are Unpatentable ......................................................... 10
`A. Chu ’684 in view of Scott renders Claims 8, 13, 33, 38, 41, 57, 62,
`81-82, 86, 90, and 91 Obvious Under 35 U.S.C. § 103(a) ........... 10
`B. Chu ’684 in view of Scott and in further view of Hinchey renders
`Claims 12, 37, and 61 Obvious Under 35 U.S.C. § 103(a) ......... 38
`
`V. Mandatory Notices Under 37 C.F.R. § 42.8(a)(1) .......................... 45
`
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,179,005
`
`A. Real Party-In-Interest and Related Matters .............................. 45
`B. Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3-4) .... 46
`C. Payment of Fees Under 37 C.F.R. § 42.103 ................................ 47
`
`VI. Conclusion ................................................................................................................ 47
`
`2
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`Petition for Inter Partes Review of U.S. Patent No. 9,179,005
`
`I.
`
`INTRODUCTION
`
`Petitioner Apple Inc. (“Petitioner”) requests an Inter Partes Review (“IPR”)
`
`of claims 8, 12, 13, 33, 37, 38, 41, 57, 61, 62, 81-82, 86, 90, and 91 (collectively,
`
`the “Challenged Claims”) of U.S. Patent No. 9,179,005 (“the ’005 Patent”) issued
`
`on November 3, 2015 to Clay Perreault, et al. (“Applicants”). Ex. 1001, ’005
`
`Patent. As demonstrated by Petitioner below, the purportedly distinguishing
`
`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.
`
`Petitioner notes that certain claims of the ’005 Patent not challenged in the
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`present Petition are the subject of IPR2016-01198. In particular, in IPR2016-01198
`
`Petitioner challenged claims 1, 24-26, 49-50, 73-79, 83-84, 88-89, 92, 94-96, and
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`98-99 of the ’005 Patent, and the Board instituted the IPR on the challenged
`
`claims. IPR2016-01198, Paper 6 at 31 (P.T.A.B. Nov. 21, 2016). The present
`
`Petition challenges a different set of claims of the ’005 Patent than challenged in
`
`IPR2016-01198. Petitioner notes that because the present Challenged Claims
`
`depend from independent or dependent claims otherwise challenged in IPR2016-
`
`01198 (e.g., claim 1), Petitioner provides a mapping in Section IV for such
`
`independent or intervening dependent claims but does not otherwise challenge
`
`such claims in the present Petition.
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`1
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`

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`Petition for Inter Partes Review of U.S. Patent No. 9,179,005
`
`II.
`
`SUMMARY OF THE ’005 PATENT
`
`A. Description of the Alleged Invention of the ’005 Patent
`
`The ’005 Patent generally describes a telephony system in which calls are
`
`classified as either public network calls or private network calls and routing
`
`messages are generated to route calls accordingly. See Ex. 1001 at Abstract. A
`
`call routing controller receives a request to establish a call from a calling party,
`
`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
`
`result of this comparison. Id. at 2:13-31. Based on the comparison of attributes of
`
`the calling party and the called party identifier, the call routing controller next
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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
`
`gateway to a public network. Id. at 1:67-2:2.
`
`More specifically, the ’005 Patent describes a calling party utilizing a Voice
`
`over Internet Protocol (“VoIP”) telephone who is able to call (1) other VoIP
`
`subscribers on a private packet-based network or (2) standard public switched
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`2
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`Petition for Inter Partes Review of U.S. Patent No. 9,179,005
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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,
`
`the ’005 Patent teaches that modifications to the dialed digits may be necessary.
`
`Fig. 8B illustrates a variety of modifications, which include, as an example,
`
`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
`
`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
`
`public PSTN to the called party. Id.
`
`B.
`
`Summary of the Prosecution History of the ’005 Patent
`
`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.
`
`12/513,147 (“the ’147 Application”), which claims priority to International
`
`Application No. PCT/CA2007/001956, which was filed on November 1, 2007 and
`
`claims priority to Provisional Application No. 60/856,212 (“the ’212 Provisional”),
`
`filed on November 2, 2006. See Ex. 1001.
`
`The presented claims in the ’096 Application were subject to a single Office
`
`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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`3
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`Petition for Inter Partes Review of U.S. Patent No. 9,179,005
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`Moss at al. (“Moss”), U.S. Patent Application 2007/0217354 to Buckley
`
`(“Buckley”), U.S. Patent No. 6,597,783 to Tada et al. (“Tada”), and U.S. Patent
`
`No. 6,873,599 to Han (“Han”). Ex. 1003, Office Action dated April 9, 2015 at 909-
`
`17. Distinguishing Alexander from the rejected claims, the Applicants argued that
`
`Alexander does not use any information about the calling party to determine
`
`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
`
`completely silent as to performing any functions related to the caller or caller
`
`dialing profile and only locates a callee telephone number.”) (emphasis in
`
`original). Applicant further argued that neither Moss, Buckley, Tada, nor Han
`
`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 determining (sic) if a calling
`
`attribute meets (matches) a portion of a callee's identifier, and producing a routing
`
`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
`
`initialed by the Examiner on September 15, 2015.
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`4
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`Petition for Inter Partes Review of U.S. Patent No. 9,179,005
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`The Earliest Possible Priority Date for the Challenged Claims
`
`C.
`The ’005 Patent claims priority to the ’212 Provisional, filed on November
`
`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
`
`claim elements are not supported by the disclosure in the ’212 Provisional.
`
`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.
`
`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
`
`Petitioner is not barred or estopped from requesting IPR challenging the
`
`Challenged Claims of the ’005 Patent. Specifically, Petitioner states: (1) Petitioner
`
`is not the owner of the ’005 Patent; (2) Petitioner has not filed a civil action
`
`challenging the validity of any claim of the ’005 Patent; and (3) this Petition is not
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`filed one year or more after Petitioner was served with a complaint alleging
`
`infringement of the ’005 Patent.
`
`B.
`
`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
`
`of the ’005 Patent are unpatentable and should be cancelled. 37 C.F.R.
`
`§ 42.104(b)(1).
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`5
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`Petition for Inter Partes Review of U.S. Patent No. 9,179,005
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`1.
`
`The Grounds For Challenge
`
`Based on the prior art references identified below, IPR of the Challenged
`
`Claims should be granted. 37 C.F.R. § 42.104(b)(2).
`
`Proposed Statutory Rejections for the ’005 Patent
`
`Claims 8, 13, 33, 38, 41, 57, 62, 81-82, 86, 90, and 91 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. 6,760,324 to Scott (“Scott”).
`Claims 12, 37, and 61 are obvious under § 103(a) over Chu ’684
`in view of Scott and in further view of U.S. Patent Pub. No.
`2002/0122547 to Hinchey et al. (“Hinchey”).
`
`Reference
`Exhibit No.
`1006, 1007
`
`1006, 1007,
`
`1009
`
`
`Section IV identifies where each element of the Challenged Claims is found in the
`
`prior art patents. 37 C.F.R. § 42.104(b)(4). The exhibit numbers of the supporting
`
`evidence relied upon to support the challenges are provided above and the
`
`relevance of the evidence to the challenges raised are provided in Section IV. 37
`
`C.F.R. § 42.104(b)(5). Exhibits 1001–1009 are also attached.
`
`C. Claim Construction Under 37 C.F.R. § 42.104(b)(3)
`
`A claim subject to IPR receives the “broadest reasonable construction in
`
`light of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b).
`
`With the below-noted exceptions, Petitioner proposes as the broadest reasonable
`
`construction, for purposes of IPR only, that the claim terms of the ’005 Patent be
`
`given their ordinary and customary meaning that the term would have to one of
`
`ordinary skill in the art. The claim construction analysis is not, and should not be
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`6
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`Petition for Inter Partes Review of U.S. Patent No. 9,179,005
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`viewed as, a concession by Petitioner as to the proper scope of any claim term in
`
`any litigation. Moreover, these assumptions are not a waiver of any argument in
`
`any litigation that claim terms in the ’005 Patent are indefinite or otherwise invalid.
`
`1.
`
`Constructions pursuant to 35 U.S.C. § 112, ¶ 6
`
`Claims 50 and 57 include limitations in means-plus function format, which
`
`creates a rebuttable presumption that the Patent Owner intended to invoke § 112,
`
`¶ 6. Corresponding structure for each means-plus-function limitation is identified
`
`below, and Petitioner proposes that the claimed functions recited in each of these
`
`limitations be given its ordinary and customary meaning that the term would have
`
`to one of ordinary skill in the art under the broadest reasonable interpretation.
`
`(a)
`
`“means for using”
`
`Claim 50 recites a “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.” At least under the broadest reasonable interpretation,
`
`the corresponding structure that performs this recited function is RC processor
`
`circuit 200 programmed to implement the algorithm illustrated in cell 254 of Fig.
`
`8A. Id. at 19:38-45, FIGS. 7, 8A.
`
`(b)
`
`“means for . . . producing”
`
`Claim 50 recites “means for, when at least one of said calling attributes and
`
`at least a portion of a callee identifier associated with the callee meet private
`
`7
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`Petition for Inter Partes Review of U.S. Patent No. 9,179,005
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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
`
`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
`
`identifying a gateway to the public network.” At least under the broadest
`
`reasonable interpretation, the corresponding structure that performs the recited
`
`functions is processor 202 programmed to implement one or more branches of the
`
`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
`
`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
`
`8
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`Petition for Inter Partes Review of U.S. Patent No. 9,179,005
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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.
`
`(c)
`
`“means for accessing”
`
`Claim 57 recites a “means for accessing a database of direct inward dial
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`records each associating at least one direct inward dial number with at least one
`
`subscriber to said communication system.” At least under the broadest reasonable
`
`interpretation, the corresponding structure that performs this recited function is
`
`routing controller 16, including processor 202 of RC processor circuit 200, and
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`database 18. Ex. 1001, ’005 Patent at 17:25-32 (detailing Routing Controller (RC)
`
`16, including RC processor circuit 200, which includes processor 202); 13:18-20
`
`(detailing a database 18); FIGs. 1 and 7 (see DB Request at 210). The processor is
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`programmed to perform the database request at block 269 of FIG. 8B. Id. at 20:18-
`
`35; 19:12-18, 19-30; FIGs. 1 and 8B.
`
`D.
`
`Level of Skill of a Person Having Ordinary Skill in the Art
`
`A person of ordinary skill in the art at the time of the ’005 Patent would
`
`have been a person having 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
`
`telecommunication systems.
`
`Additional industry experience or technical training may offset less formal
`
`9
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`Petition for Inter Partes Review of U.S. Patent No. 9,179,005
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`education, while advanced degrees or additional formal education may offset lesser
`
`levels of industry experience. See Ex. 1008, Houh Declaration, at ¶ 19.
`
`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
`
`public PSTN were prevalent well before November 2, 2006. The following prior
`
`art references disclose each limitation of the Challenged Claims either alone or in
`
`combination with another reference. As such, the Challenged Claims are
`
`unpatentable. Included in the claim charts below are exemplary citations to the
`
`prior art references.
`
`A.
`
`Chu ’684 in view of Scott renders Claims 8, 13, 33, 38, 41, 57, 62, 81-
`82, 86, 90, and 91 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,
`
`2003 and therefore qualifies as prior art with regard to the ’005 Patent at least under 35
`
`U.S.C. § 102(e). U.S. Patent No. 6,760,324 to Scott, et al. (“Scott”) issued on Jul. 6,
`
`2004 and therefore qualifies as prior art with regard to the ’005 Patent under 35 U.S.C.
`
`§ 102(b). Neither reference was cited during prosecution. See Exs. 1002-1005.
`
`The system disclosed in the specification of Chu ’684 is nearly identical in form
`
`and function to that described by the ’005 Patent. Both Chu ’684 and the ’005 Patent
`
`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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`10
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`Petition for Inter Partes Review of U.S. Patent No. 9,179,005
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`the public PSTN. Compare Ex. 1006, Chu ’684 at 2:33-64 with Ex. 1001, ’005 Patent
`
`at 1:17-2:2. Additionally, both Chu ’684 and the ’005 Patent describe call setup
`
`procedures in which a call processor analyzes attributes of the caller and information
`
`identifying the callee (e.g., dialed digits) to determine whether the call should be routed
`
`to a destination on the private packet network or the public PSTN. Compare Ex. 1006,
`
`Chu ’684 at 8:65-9:1 (“At step 608, after receiving all the dialed digits from the phone
`
`101, server 110 consults its dial plan to determine whether the call is local, to another
`
`on-net phone, or to a phone that is on the PSTN.”) with Ex. 1001, ’005 Patent at Fig.
`
`8B and 1:59-64 (“The process involves, in response to initiation of a call by a calling
`
`subscriber, receiving a caller identifier and a callee identifier. The process also involves
`
`using call classification criteria associated with the caller identifier to classify the call
`
`as a public network call or a private network call.”). Finally, both Chu ’684 and the
`
`’005 Patent describe routing a call directly to a callee on a private packet network or
`
`through a gateway when the called party is on the public PSTN. Compare Ex. 1006,
`
`Chu ’684 at 9:1-38 (Where “the call is to another on-net phone in another location. . .
`
`[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
`
`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
`
`will proceed the call signaling and control as described previously. The gateway 1302
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`11
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`Petition for Inter Partes Review of U.S. Patent No. 9,179,005
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`acts as an ‘egress packet switch’”) with Ex. 1001, ’005 Patent at 1:64-2:2 (“The
`
`process further involves producing a routing message identifying an address, on the
`
`private network, associated with the callee when the call is classified as a private
`
`network call. The process also involves producing a routing message identifying a
`
`gateway to the public network when the call is classified as a public network call.”).
`
`While Chu ’684 discloses using attributes of the caller (e.g., the caller’s dial
`
`plan) and information identifying the callee (e.g., dialed digits) to determine whether a
`
`call should be terminated to a callee on the private packet network or on the public
`
`PSTN, some of the Challenged Claims also describe specific scenarios in which the
`
`callee identifier (e.g., dialed digits) is modified based on certain attributes of the called
`
`party before determining whether the call is public or private. Fig. 8B from the ’005
`
`Patent illustrates these scenarios:
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`12
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`Petition for Inter Partes Review of U.S. Patent No. 9,179,005
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`Modifying callee identifier (e.g., dialed digits) using attributes of the caller, however,
`
`was also well known in the prior art. As an example, Scott teaches precisely the same
`
`dialed digit comparison and modification as the ’005 Patent. In particular, Scott
`
`teaches that a user can configure caller parameters in a “country/area code settings
`
`panel,” which “allows one to provide information about your local calling area ….” Ex.
`
`1007, Scott at 67:1-7. Exemplary parameters are the caller’s international prefix,
`
`national prefix, country code, and area code. Id. at 67:7-9. Scott describes reformatting
`
`a dialed number and provides an example with certain identified parameters, e.g., an
`
`international prefix of 011. Id. at 67:26-35. If a dialed number matches the configured
`
`parameter of an international prefix, for example, the number is processed by “stripping
`
`off” the international prefix. Id. at 67:13-16, 29-30 (describing the configured
`
`international prefix for the caller as 011 and the dialed number as 01117035551234,
`
`determining that the dialed number “matches the international prefix” of 011, and
`
`processing the number without the international prefix).
`
`Thus, both the ’005 Patent and Scott check dialed digits for International Dialing
`
`Digits (IDD) and National Dialing Digits (NDD), for example. Additionally, both
`
`illustrate using caller attributes such as country code and area code to reformat the
`
`dialed digits into a standard format. Scott even teaches that reformatting the dialed
`
`number is desirable to assist in processing and route resolution:
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`13
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`Petition for Inter Partes Review of U.S. Patent No. 9,179,005
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`When the dialed number is sent for processing and route resolution, it is
`always required to be in a fully resolved format that contains the country
`code, area code, and local number. This way, routing information can be
`shared between Gateway Servers in different areas without modification.
`If routes were simply based on digits dialed by users, locale differences
`would prevent this from being possible.
` Id. at 67:46-53; see also id. at 69:60-66 (describing that the Scott “routing system is
`
`based on routing numbers in a specific format. Specifically, the routing system in the
`
`present invention is based on routing E.164 numbers, comprised of a country code, an
`
`area code, a local number, and an optional extension.”); id. at 65:41-43 (“The number
`
`dialed by the user is translated using the E.164 translator (described in the section on
`
`routing and number translation) into a standardized format.”); id. at 64:52 (“Remember
`
`that E.164 translation happens prior to routing.”); id. at 16:64-67 (“Distribute E.164
`
`translation data. An important process is how a string of digits entered by the user is
`
`translated into a standard, E.164-style address (e.g. 00117035551234 (+1(703)555-
`
`1234).”). Scott thus recognizes the need for a dialed number to be reformatted into a
`
`standardized E.164 format for ease of routing and processing in a VoIP system.
`
`Both Chu ’684 and Scott teach telecommunications systems in which VoIP
`
`subscribers can place calls to a customer on the public PSTN. Compare Ex. 1006,
`
`Chu ’684 at 8:65-9:1 (“At step 608, after receiving all the dialed digits from the phone
`
`101, server 110 consults its dial plan to determine whether the call is local, to another
`
`on-net phone, or to a phone that is on the PSTN.”) with Ex. 1007, Scott at 5:58-61
`14
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`Petition for Inter Partes Review of U.S. Patent No. 9,179,005
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`(“The present invention provides a variety of PSTN and Packet Network connections
`
`including, but not limited to, internet, analog PSTN lines, ….”); id. at 8:37-45
`
`(discussing that gateway server “performs bridging of calls between the traditional
`
`telecommunications network and an IP network” and “handl[es] calls received on either
`
`IP network 215 or PSTN 205, bridging calls between the two different kinds of
`
`networks (circuit switched and packet switched)”); id. at 6:30-32 (in describing the
`
`VoIP system, “[s]uch voice and data traffic can originate at any type of terminal
`
`equipment at PSTN 205. For example, a call can be placed on an ordinary
`
`telephone 201 or 202.”). Both references also teach a process in which dialed digits and
`
`caller attributes are used to determine where the call should be routed. Compare Ex.
`
`1006, Chu ’684 at 8:65-9:1 (“At step 608, after receiving all the dialed digits from the
`
`phone 101, server 110 consults its dial plan to determine whether the call is local, to
`
`another on-net phone, or to a phone that is on the PSTN.”) with Ex. 1007, Scott at 67:1-
`
`53. Finally, both references expressly reference E.164 as an international standard dial
`
`plan. Compare Ex. 1006, Chu ’684 at 3:59-61 (“[E]ach IP phone [may be] assigned its
`
`own E.164 number (the international standard dial plan) and receiving calls from the
`
`PSTN directly.”) with Ex. 1007, Scott at 16:64-67 (cited above and noting that
`
`translating dialed digits into “a standard, E.164-style address” is an “important
`
`process”).
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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 Scott.
`
`Given that the system of Chu ’684 already contains all the infrastructure needed to
`
`support such reformatting, the modification to Chu ’684 would be 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 capable of supporting a more
`
`intuitive and user-friendly interface. See Ex. 1008, Houh Decl. at ¶¶ 35-40.
`
`Further, Scott provides an express motivation to make such a modification to
`
`systems such as Chu ’684. Namely, Scott teaches that reformatting the dialed number
`
`allows users to enter dialed digits in a standardized manner while still providing
`
`consistency in call processing and route resolution—features that would significantly
`
`benefit the Chu ’684 system. Ex. 1007, Scott at 67:46-53; see also Ex. 1008, Houh
`
`Decl. at ¶ 38.
`
`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
`
`analyze the dialed digits and reformat as necessary using caller attributes such as
`
`international and national prefixes. Such modifications are simply a combination of
`
`the system of Chu ’684 with elements of Scott that would have yielded predictable
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`Petition for Inter Partes Review of U.S. Patent No. 9,179,005
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`results without requiring undue experimentation. See Ex. 1008, Houh Decl. at ¶ 38.
`
`Thus, it would have been an application of nothing more than ordinary skill and
`
`common sense to combine Scott’s number reformatting with the VoIP system of
`
`Chu ’684. Id. at ¶ 39. Therefore, claims 8, 13, 33, 38, 41, 57, 62, 81-82, 86, 90, and
`
`91 are unpatentable under § 103(a) as obvious over Chu ’684 in view of Scott, 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
`
`
`
`Obvious over Chu ’684 (Ex. 1006)
`in view of Scott (Ex. 1007)
`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
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`Petition for Inter Partes Review of U.S. Patent No. 9,179,005
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`plurality of calling
`attributes
`associated with the
`caller;
`
`(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
`
`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.
`
`“[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. 1008, Houh Declaration at ¶ 41 (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, Scott teaches a “country/area code settings
`panel” for providing user-specific information about a local
`calling area, including international prefix, national prefix,
`country code, and area code.
`
`Ex. 1007, Scott at 67:1-12 (describing the “country/area code
`settings panel [that] allows one to provide information about
`your local calling area” and which “is used to provide a dialing
`plan that emulates the dialing plan provided by the local
`telephone company in that area”).
`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
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`Petition for Inter Partes Review of U.S. Patent No. 9,179,005
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`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