Filed: August 25, 2017
`
`Filed on behalf of:
`Patent Owner Voip-Pal.com Inc.
`By: Kerry Taylor
`John M. Carson
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Tel.: (858) 707-4000
`Fax: (858) 707-4001
`Email:
`BoxDigifonica@knobbe.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.
`
`Petitioner,
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`v.
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`
`
`VOIP-PAL.COM, INC.,
`
`Patent Owner
`
`
`
`
`Case No. IPR2017-01398
`U.S. Patent 9,179,005
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`PATENT OWNER’S PRELIMINARY RESPONSE TO
`PETITION FOR INTER PARTES REVIEW
`
`
`
`
`Filed on behalf of:
`Patent Owner Voip-Pal.com Inc.
`By: Kerry Taylor
`John M. Carson
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Tel.: (858) 707-4000
`Fax: (858) 707-4001
`Email:
`BoxDigifonica@knobbe.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.
`
`Petitioner,
`
`v.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`VOIP-PAL.COM, INC.,
`
`Patent Owner
`
`
`
`
`Case No. IPR2017-01398
`U.S. Patent 9,179,005
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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`
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO
`PETITION FOR INTER PARTES REVIEW
`
`
`
`
`TABLE OF CONTENTS
`
`Page No.
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II. ARGUMENT ................................................................................................... 4
`
`A.
`
`B.
`
`Introduction to Claimed Subject Matter ................................................ 4
`
`Grounds 1 and 2 Fail Because None of the References
`Disclose a Caller [First Participant] Dialing Profile ............................. 6
`
`1.
`
`Chu ’684 Does Not Disclose A Caller Dialing
`Profile As Recited In The Claims ............................................... 7
`
`a.
`
`b.
`
`c.
`
`d.
`
`e.
`
`f.
`
`Overview of Chu ’684 ...................................................... 7
`
`The “Subscriber” Dial Plans in Chu ’684 Are
`Enterprise Dial Plans ........................................................ 9
`
`Petitioner Has Admitted That Chu ’684 Uses
`the Word “Subscriber” To Mean an Enterprise
`Rather Than an Individual Caller ................................... 11
`
`Petitioner Has Admitted That Chu ’684 Does
`Not Disclose a Caller Dialing Profile ............................. 14
`
`Despite Previous Admissions, the Present
`Petition Adopts A Misinterpretation of Chu
`’684 ................................................................................. 18
`
`Enterprise Dial Plans Cannot Be Relied On
`To Demonstrate The Claims Are Obvious ..................... 22
`
`2.
`
`Scott Does Not Disclose a Caller Profile As Recited
`In The Claims ............................................................................ 24
`
`a.
`
`Overview of Scott ........................................................... 24
`
`-i-
`
`
`
`TABLE OF CONTENTS
`(Cont’d)
`
`Page No.
`
`b.
`
`c.
`
`The Gateway Application Settings of Scott Is
`Not a Caller Dialing Profile ............................................ 26
`
`The Petition Does Not Assert That the
`Gateway Application Settings in Scott Are
`Caller-Specific ................................................................ 26
`
`3.
`
`Hinchey Does Not Disclose a Caller Dialing Profile
`As Recited In the Claims .......................................................... 27
`
`a.
`
`b.
`
`c.
`
`Overview of Hinchey ...................................................... 27
`
`The “Dial Plan Schema” of Hinchey Is Not a
`Caller Profile ................................................................... 28
`
`The Petition Does Not Assert That the Dial
`Plan Schemas of Hinchey Are Caller-Specific ............... 29
`
`C.
`
`Grounds 1 and 2 Fail Because Petitioner has Misconstrued
`Claim 1 as Not Requiring an Order of Steps [1a] and steps
`[1b] and [1c] ........................................................................................ 30
`
`1.
`
`2.
`
`3.
`
`Steps [1b] and [1c] depend upon step [1a] ............................... 30
`
`The Board Must Resolve a Claim Construction
`Dispute ...................................................................................... 31
`
`Petitioner Cites to Steps Performed in the Wrong
`Order ......................................................................................... 31
`
`D. Grounds 1 and 2 Fail Because Petitioner’s Proposed
`Combination Would be Inoperative .................................................... 33
`
`1.
`
`Petitioner Has Proposed a Manner of Combining
`Chu ’684 With Scott That Does Not Work............................... 33
`
`-ii-
`
`
`
`TABLE OF CONTENTS
`(Cont’d)
`
`Page No.
`
`2.
`
`3.
`
`4.
`
`Petitioner Acknowledged In the Previous IPR
`Proceedings That the Manner of Combination Was
`Defective ................................................................................... 37
`
`Petitioner Has Not Refuted Patent Owner’s Previous
`Arguments Regarding the Inoperative Nature of the
`Proposed Combinations ............................................................ 42
`
`Reformatting Only Calls Destined for the PSTN
`Would be the Operative Manner of Combination .................... 43
`
`a.
`
`b.
`
`c.
`
`d.
`
`Chu ’684 Classifies Calls Using a Prefix Digit
`As Is Standard For PBX Systems ................................... 43
`
`Petitioner’s Assertion That Chu ’684 Does
`Not Operate Like a Conventional PBX is
`Unsupported .................................................................... 44
`
`Petitioner’s Declarant Admitted That Using a
`Prefix Digit With Chu ’684 Would Solve The
`Corruption Of Private Numbers ..................................... 47
`
`Petitioner’s Proposed Combination Is Based
`on Hindsight .................................................................... 48
`
`E.
`
`Grounds 1 and 2 Fail Because Petitioner’s Proposed
`Motivation to Combine is Flawed ....................................................... 50
`
`1.
`
`2.
`
`Petitioner Cites a Non-Existent Deficiency in Chu
`’684 as a Reason to Combine References ................................. 50
`
`Petitioner’s Arguments That Users of Chu ’684
`Cannot Dial As If On the PSTN Are Unsupported ................... 52
`
`F.
`
`This Follow-On Petition Should be Denied Under 35
`U.S.C. §§ 314(a) and/or 325(d) ........................................................... 53
`
`-iii-
`
`
`
`TABLE OF CONTENTS
`(Cont’d)
`
`Page No.
`
`1.
`
`The Petition Is Unjustified Under the Factors For 35
`U.S.C. § 314(a) ......................................................................... 55
`
`a.
`
`b.
`
`c.
`
`d.
`
`e.
`
`f.
`
`Same petitioner, same independent claims ..................... 56
`
`Petitioner uses the same primary reference,
`and should have known of the second
`reference ......................................................................... 57
`
`The earlier proceeding was far along when
`second Petition was filed ................................................ 58
`
`Nearly a year had lapsed between petition
`filings .............................................................................. 58
`
`Petitioner does not explain the purpose for its
`belated second attack ...................................................... 59
`
`Conclusion ...................................................................... 60
`
`2.
`
`Petitioner will be estopped from maintaining this
`proceeding ................................................................................. 60
`
`III. CONCLUSION .............................................................................................. 65
`
`
`
`-iv-
`
`
`
`TABLE OF AUTHORITIES
`
`Page No(s).
`
`Akamai Technologies, Inc. v. Limelight Networks, Inc.,
`IPR2017-00358, Paper 9 (P.T.A.B. May 2, 2017) ............................................. 56
`
`Alarm.com Inc., v. Vivint, Inc.,
`IPR2016-01124, Paper 11 (P.T.A.B. Dec. 5, 2016) ..................................... 63, 64
`
`Apple Inc. v. Immersion Corp.,
`IPR2017-00896, Paper 10 (P.T.A.B. Aug. 17, 2017) ................................... 55, 60
`
`Apple Inc. v. Immersion Corp.,
`IPR2017-00897, Paper 11 (P.T.A.B. Aug. 17, 2017) ................................... 55, 60
`
`Blue Coat Systems, Inc., v. Finjan, Inc.,
`IPR2016-01441, Paper 14 (P.T.A.B. Jan. 23, 2017) .................................... 64, 65
`
`Callaway Golf Co. v. Acushnet Co.,
`576 F.3d 1331 (Fed. Cir. 2009) .................................................................... 61, 62
`
`CSR, PLC v. Skullcandy, Inc.,
`594 F. App’x 672 (Fed. Cir. 2014) ..................................................................... 31
`
`Cuozzo Speed Technologies, LLC, In re
`793 F.3d 1268 (Fed. Cir. 2015) .......................................................................... 61
`
`Cuozzo Speed Technologies, LLC v Lee
`579 U.S. ___ (2016) ............................................................................................ 61
`
`Homeland Housewares, LLC, v. Whirlpool Corporation,
`No. 16-1511, 2017 WL 3318764 (Fed. Cir. 2017) ............................................. 31
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 51
`
`In re McLaughlin,
`443 F.2d 1392 (C.C.P.A. 1971) .................................................................... 49, 50
`
`-vii-
`
`
`
`TABLE OF AUTHORITIES
`(Cont’d)
`
`Page No(s).
`
`Mformation Techs., Inc. v. Research in Motion Ltd.,
`764 F.3d 1392 (Fed. Cir. 2014) .......................................................................... 30
`
`Toyota Motor Corporation v. Cellport Systems, Inc.,
`IPR2015-01422, Paper 8 (P.T.A.B. Dec. 16, 2015) ........................................... 64
`
`Xactware Sols., Inc. v. Eagle View Techs., Inc.,
`IPR2017-00034, Paper 9 (P.T.A.B. April 13, 2017) .......................................... 56
`
`OTHER AUTHORITIES
`
`35 U.S.C. § 313 .......................................................................................................... 1
`
`35 U.S.C. § 314 ........................................................................................ 2, 53, 55, 56
`
`35 U.S.C. § 315 ........................................................................................................ 60
`
`37 C.F.R. § 42.65 ..................................................................................................... 51
`
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`M.P.E.P. 2143.01(V) ................................................................................................ 37
`
`
`
`-viii-
`
`
`
`IPR2017-01398
`AT&T v. Voip-Pal
`
`EXHIBIT LIST
`
`Exhibit No.
`
`Description
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`2013
`
`2014
`
`Paper 1 in IPR2016-01201 (Petition for Inter Partes Review)
`
`Intentionally Left Blank
`
`Intentionally Left Blank
`
`Intentionally Left Blank
`
`Intentionally Left Blank
`
`Intentionally Left Blank
`
`Intentionally Left Blank
`
`Ex. 1006 in IPR2016-01201, Declaration of Dr. Henry H. Houh
`
`Intentionally Left Blank
`
`Ex. 2043 in IPR2016-01198, Deposition Testimony of Dr. Henry
`Houh, January 25, 2017, Vol. I
`
`Ex. 2044 in IPR2016-01198, Deposition Testimony of Dr. Henry
`Houh, January 26, 2017, Vol. II
`
`Ex. 2047 in IPR2016-01198, Lucent Technologies Merlin
`Communications Systems, Centrex/PBX Connection, March 1985
`
`Ex. 2048 in IPR2016-01198, Telephone Features, Quick
`Reference Guide, Definity
`
`Ex. 2049 in IPR2016-01198, Valder, “Understanding
`Telecommunications Networks,” The Institution of Engineering
`and Technology, 2006, pp. 38-39
`
`2015
`
`Paper 2 in IPR2016-01198 (Petition for Inter Partes Review)
`
`Exhibit List, Page 1
`
`
`
`IPR2017-01398
`AT&T v. Voip-Pal
`
`Exhibit No.
`
`Description
`
`2016
`
`2017
`
`2018
`
`2019
`
`2020
`
`2021
`
`2022
`
`2023
`
`2024
`
`2025
`
`Ex. 1009 in IPR2016-01198, Declaration of Dr. Henry H. Houh
`
`Intentionally Left Blank
`
`Paper 3 in IPR2016-01198 (Notice of Filing Date Accorded)
`
`Paper 17 in IPR2016-01198 (Patent Owner Response to Petition)
`
`Paper 34 in IPR2016-01198 (Petitioner’s Reply to Patent Owner’s
`Response
`
`Paper 40 in IPR2016-01198 (Patent Owner’s Motion to Exclude)
`
`Intentionally Left Blank
`
`Paper 44 in IPR2016-01198 (Petitioner’s Opposition to Patent
`Owner’s Motion to Exclude)
`
`Paper 47 in IPR2016-01198 (Patent Owner’s Reply to Petitioner’s
`Opposition to Motion to Exclude)
`
`Ex. 2016 in IPR2016-01198, Declaration of Bill Mangione-Smith,
`Ph.D.
`
`Exhibit List, Page 2
`
`
`
`IPR2017-01398
`Apple Inc v. Voip-Pal
`
`Pursuant to 35 U.S.C. § 313, 37 C.F.R. § 42.107 and the Notice of Filing
`
`Date Accorded to Petition (Paper 3), dated May 25, 2017, Voip-Pal.com, Inc.
`
`(“Voip-Pal”) hereby timely submits this Preliminary Response to the Petition for
`
`Inter Partes Review of U.S. 9,179,005 (the ’005 Patent) (“Petition,” Paper 1) by
`
`Apple Inc. (“Apple”).
`
`I. INTRODUCTION
`Digifonica, a real party-in-interest to this proceeding and wholly owned
`
`subsidiary of Patent Owner Voip‐Pal, was founded in 2004 with the vision that the
`
`Internet would be the future of telecommunications. As a startup company,
`
`Digifonica did not have existing customers or legacy systems. Instead, Digifonica
`
`had the opportunity to start from a blank slate. Digifonica employed top
`
`professionals in the open‐source software community. Three Ph.D.s with various
`
`engineering backgrounds held the top positions at the Company. Digifonica’s
`
`engineers developed an innovative software solution for routing communications,
`
`which by the mid-2000s, it implemented in four nodes spread across three
`
`geographically different regions. Digifonica also obtained multiple patents on the
`
`technology developed as part of its R&D efforts, including the ’815 Patent, which
`
`is the subject of this proceeding.
`
`Petitioner challenges Claims 8, 12, 13, 33, 37, 38, 41, 57, 61, 62, 81-82, 86,
`
`90, and 91 of the ’005 Patent on two grounds:
`
`-1-
`
`
`
`IPR2017-01398
`Apple Inc v. Voip-Pal
`
`1.
`
`Claims 8, 13, 33, 38, 41, 57, 62, 81-82, 86, 90, and 91 are alleged to
`
`be 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 et al. (“Scott”).
`
`2.
`
`Claims 12, 37, and 61 are alleged to be obvious under §103(a) over
`
`Chu ’684 in view of Scott and in further view of U.S. Patent Publication No.
`
`2002/0122547 to Hinchey et al. (“Hinchey”).
`
`Petitioner also submitted a Declaration by declarant Henry H. Houh, Ph.D.
`
`Ex. 1008 (“Houh Declaration”).
`
`As Voip-Pal explains below, Petitioner’s arguments and assessments of the
`
`cited art fail to establish a reasonable likelihood that Petitioner would prevail as to
`
`its asserted grounds, as required under 35 U.S.C. § 314(a). Accordingly,
`
`institution of this proceeding should be denied as to both asserted grounds.
`
`Petitioner’s two grounds fail to provide all claim elements. In particular,
`
`none of the references disclose a “caller [first participant] dialing profile” as recited
`
`in the claims, nor do the proposed combinations of references teach or suggest
`
`such a feature. In previous IPR proceedings IPR2016-01201 and IPR2016-01198
`
`(“previous IPR proceedings”), Petitioner admitted that Chu ’684 uses the term
`
`“subscriber” to mean an enterprise rather than an individual, and that Chu ’684
`
`does not disclose a “caller dialing profile.” Further, Petitioner points to no
`
`disclosure of a “caller dialing profile” in Scott or Hinchey and does not provide
`
`-2-
`
`
`
`IPR2017-01398
`Apple Inc v. Voip-Pal
`
`any reason why this claim element would be obvious when the references are
`
`combined.
`
`Additionally, Petitioner’s proposed manner of combining Chu ’684 with
`
`Scott would render
`
`the resulting combination
`
`inoperative.
`
` Specifically,
`
`Petitioner’s combination of Chu ’684 with Scott would not work because it would
`
`reformat private numbers. Indeed, Petitioner failed to refute these same arguments
`
`in the previous IPR proceedings, IPR2016-01201 and IPR2016-01198. An
`
`operative combination of Chu ’684 with Scott would need to reformat only
`
`numbers to PSTN destinations after call classification, but such a combination
`
`would not lead to the challenged claims.
`
`Petitioner also fails to articulate a valid reason to combine the cited
`
`references and instead relies on an unsupported alleged deficiency in Chu ’684.
`
`Again, Petitioner failed to dispute this fact when Patent Owner raised it in the
`
`previous IPR proceedings, IPR2016-01201 and IPR2016-01198.
`
` Finally,
`
`Petitioner has misconstrued the claims of the ’005 Patent as not requiring an order
`
`between steps [1a] and steps [1b] and [1c]. According to Petitioners’ obviousness
`
`theory, Chu ’684’s alleged disclosure of steps [1b] and [1c] occurs before Chu
`
`’684’s alleged disclosure of step [1a]. However, the language of the claim clearly
`
`links a result of step [1a] as being used by steps [1b] and [1c], such that steps [1b]
`
`and [1c] must occur after step [1a].
`
`-3-
`
`
`
`IPR2017-01398
`Apple Inc v. Voip-Pal
`
`II. ARGUMENT
`Introduction to Claimed Subject Matter
`
`A.
`
`The Petition is largely based on an analysis of Claim 1. In Petitioner’s claim
`
`chart, the other independent claims upon which the challenged claims depend,
`
`Claims 26, 50 and 74, cite back to the claim chart for Claim 1. Petition at 23-25,
`
`27-29, and 31-34. Claim 1 recites:
`
`1. [1p] A process for producing a routing message for routing
`communications between a caller and a callee in a communication
`system, the process comprising:
`[1a] using a caller identifier associated with the caller to
`locate a caller dialing profile comprising a plurality of calling
`attributes associated with the caller;
`[1b] when at least one of said calling attributes and at
`least a portion of a callee identifier associated with the callee
`meet private network classification criteria, producing a private
`network routing message for receipt by a call controller, said
`private network routing message identifying an address, on the
`private network, associated with the callee; and;
`[1c] when at least one of said calling attributes and at
`least a portion of said callee identifier meet a public network
`classification criterion, producing a public network routing
`message for receipt by the call controller, said public network
`routing message identifying a gateway to the public network.
`
`
`-4-
`
`
`
`IPR2017-01398
`Apple Inc v. Voip-Pal
`
`By way of technology background, a public switched telephone network
`
`(PSTN) uses traditional telephone technology, including dedicated telephone lines
`
`from a service provider to transmit calls over a circuit-switched network. Voice
`
`over Internet protocol (VoIP) is used for the delivery of digital voice
`
`communications and multimedia sessions over Internet protocol (IP) networks,
`
`such as the Internet. Digital information delivered over IP networks is packetized,
`
`and transmission occurs using IP packets over a packet-switched network.
`
`The method of Claim 1 is directed to classification of telecommunications
`
`calls. The method allows a call to be classified for routing as a “public network
`
`call” or as a “private network call.” The method determines whether a call is a
`
`public or private network call based on whether a match of at least one calling
`
`attribute and at least a portion of the callee identifier, meets certain network
`
`criteria. For example, a call to a callee may be classified for routing to a traditional
`
`circuit switched network (e.g., the PSTN), or to a packet switched network (e.g.,
`
`the Internet), based on a calling attribute matching at least a portion of callee
`
`information. The method of Claim 1 does not evaluate the callee identifier in
`
`isolation, but matches the callee identifier based on attributes in the caller’s dialing
`
`profile. Each caller has a dialing profile including a plurality of calling attributes
`
`and at least one caller attribute is matched with at least a portion of a callee
`
`-5-
`
`
`
`IPR2017-01398
`Apple Inc v. Voip-Pal
`
`identifier, e.g., a callee phone number, before the system makes a network
`
`classification decision, e.g., PSTN or Internet routing.
`
`B. Grounds 1 and 2 Fail Because None of the References Disclose a Caller
`[First Participant] Dialing Profile
`
`None of the references disclose a “caller [first participant] dialing profile” as
`
`recited in all of the independent claims upon which the challenged claims depend.
`
`Claims 1, 26 and 50 recite “a caller dialing profile comprising a plurality of calling
`
`attributes associated with the caller.” Claim 74 recites “a first participant profile
`
`comprising a plurality of attributes associated with the first participant”.
`
`The Petition fails to establish that Chu ’684 discloses such a claim element
`
`and further does not cite to any disclosure of such features in Scott or Hinchey. In
`
`particular, the claims require that both the profile and the attributes are caller-
`
`specific (“caller dialing profile”, “attributes associated with the caller”, “first
`
`participant profile”, “attributes associated with the first participant”). However, the
`
`Petition does not identify a profile or attributes that are caller-specific. The Petition
`
`argues that: “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 ….” Petition at 12. In the claim chart, the Petition points to “a dial
`
`-6-
`
`
`
`IPR2017-01398
`Apple Inc v. Voip-Pal
`
`plan that includes calling attributes of the subscriber” in Chu ’684 and “user-
`
`specific information about a local calling area” in Scott. Petition at 17-18.
`
`However, as discussed below, Chu ’684 does not disclose a caller-specific
`
`dial plan, only an enterprise dial plan, and Petitioner and its Declarant have
`
`admitted this in previous IPR proceedings. Further, neither Scott nor Hinchey
`
`disclose any caller-specific attributes, and Petitioner’s Declarant does not even
`
`assert that they do. Thus, the Petition’s only basis for asserting this claim element
`
`is met is mischaracterizing the term “subscriber” in Chu ’684. Because the
`
`Petition fails to cite to any attributes “associated with the caller” and has not
`
`explained how the enterprise dial plans of Chu ’684 would render that feature
`
`obvious, the Petition fails to carry its burden of demonstrating obviousness of the
`
`challenged claims.
`
`1.
`
`Chu ’684 Does Not Disclose A Caller Dialing Profile As Recited In
`The Claims
`a. Overview of Chu ’684
`Chu ’684 discloses a network architecture for providing a voice over IP
`
`virtual private network (VoIP VPN) service to an organization (“subscriber”)
`
`having multiple IP-based phone systems, or private branch exchanges (IP-PBXs),
`
`and a method of connecting all of the IP-PBXs of the organization into a single
`
`logical network. Chu ’684 at 1:44-46, 3:52-56. The organization typically
`
`-7-
`
`
`
`IPR2017-01398
`Apple Inc v. Voip-Pal
`
`“subscribe[s] to many services” (e.g., both data and voice services) from the same
`
`service provider (SP). Id. at 5:3-6. FIG. 2 illustrates a subscribing customer’s IP-
`
`PBX communication system with multiple phones and a server 110 located at the
`
`subscribing customer’s premises 105 and configured to communicate with a soft-
`
`switch 220 and packet switch 210 located at the SP’s central office 205:
`
`
`
`While many organizations, each with multiple locations, may share the SP’s
`
`network infrastructure (e.g., soft-switch 220 and packet switch 210), the system of
`
`Chu ’684 allows each organization to have its own “dial plan” and allows calls to
`
`be routed internally to the IP-PBX, to a different IP-PBX, and to the public
`
`switched telephone network (PSTN). Chu ’684 at 12:60-67 and 8:65-9:1.
`
`-8-
`
`
`
`IPR2017-01398
`Apple Inc v. Voip-Pal
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`b.
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`The “Subscriber” Dial Plans in Chu ’684 Are Enterprise
`Dial Plans
`
`Chu ’684 uses the term “subscriber” to refer to an enterprise or corporate
`
`entity that controls one or more local IP-PBX systems, and not to an individual
`
`person. When Chu ’684 refers to an individual, it uses the term “user.” All of Chu
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`’684’s calling examples disclose that the “user” of an IP phone places or receives
`
`calls: the user “picks up the handset” (8:55-56), receives the dial tone (8:58-59),
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`provides the “dialed digits” (8:60-63), is “alerted” of an incoming call (11:1-2),
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`and “picks up” the phone (11:13-17).
`
`In contrast, Chu ’684 explains that a “subscriber” is associated with multiple
`
`IP-PBX systems, multiple IP addresses and multiple phones:
`
`The VoIP VPN service connects all the IP-PBXs of a subscriber into a
`single logical network. In one embodiment, the present invention
`provides a virtual private network service where subscribers can use
`their own internal dial plan. [...] Similarly, a subscriber can use their
`own IP address assignment plan in assigning IP addresses to the IP-
`PBX server and the IP phones.
`Chu ’684 at 3:55-58, 61-64 emphasis added.
`
`This quote demonstrates that each “subscriber” (i.e. enterprise) controls not
`
`just a single phone, but rather an entire “virtual private network” which can include
`
`multiple inter-connected IP-PBX systems, each comprising an “IP-PBX server”
`
`and “IP phones” (plural) that are assigned respective “IP addresses” (plural) based
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`-9-
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`IPR2017-01398
`Apple Inc v. Voip-Pal
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`on the subscriber’s (i.e., enterprise’s) “own IP address assignment plan”. Id. at
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`12:55-57.
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`FIG. 2 of Chu ’684 illustrates one such IP-PBX system at one particular
`
`subscriber location (i.e., customer premises 105), the IP-PBX system including a
`
`server 110 and multiple phones 101-103. Id. at FIG. 2 (below), 4:24-33.
`
`
`
`Moreover, Chu ’684 repeatedly discloses that a single “subscriber” [i.e.
`
`enterprise] controls multiple “locations” (like Customer Premises 105), each
`
`location having
`
`its own respective IP-PBX
`
`interconnected via
`
`the SP’s
`
`infrastructure to other IP-PBXs to form an enterprise-wide corporate network. Id.
`
`at 1:44-45; 3:66-67 (“[c]onnecting IP-PBXs together to form a corporate
`
`network”); 12:38-39 (“Multiple locations from the same subscriber may be
`
`connected to the same packet switch 210”); 12:59-60 (“establishing a call between
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`-10-
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`IPR2017-01398
`Apple Inc v. Voip-Pal
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`two IP phones at two locations of the same subscriber”); 12:64-65; and 15:22-23
`
`(“FIG. 15 depicts... a call between two locations on the same subscriber...”).
`
`Thus, it is clear that the term “subscriber” in Chu ’684 represents an
`
`enterprise that controls all of the phones within an IP-PBX network of the
`
`enterprise; it does not refer to an individual caller. Chu ’684’s disclosure that each
`
`“subscriber” (i.e. enterprise) has its own “internal dial plan” (id. at 3:58), is not a
`
`disclosure of a user-specific “dial plan”, and is not a disclosure that any user-
`
`specific information is contained in a dial-plan. In fact, there is no disclosure or
`
`suggestion in Chu ’684 that a subscriber (i.e., enterprise) dial plan would contain
`
`any caller-specific information. Rather, Chu ’684 discloses that “subscribers” (i.e.
`
`enterprises) have multiple IP phones sharing a common “dial plan.”
`
`c.
`
`Petitioner Has Admitted That Chu ’684 Uses the Word
`“Subscriber” To Mean an Enterprise Rather Than an
`Individual Caller
`
`In previous IPR proceedings IPR2016-01201 and IPR2016-01198, Petitioner
`
`and Petitioner’s Declarant originally misinterpreted the term “subscriber” in Chu
`
`’684 as referring to an individual caller or user, which is how the term is used in
`
`the ’005 Patent. The Petitions in those previous proceedings and the Declaration
`
`of Petitioner’s Declarant make no reference to any difference in terminology,
`
`despite quoting from both Chu ’684 and the ’005 Patent. The Petition and
`
`Declaration in those proceedings are flawed because Chu ’684 is analyzed based
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`-11-
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`IPR2017-01398
`Apple Inc v. Voip-Pal
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`on this misunderstanding. Ex. 2001, Ex. 2008, Ex. 2015, Ex. 2016, Ex. 2019 at 59-
`
`64.
`
`During his deposition in the previous IPR proceedings, Petitioner’s
`
`Declarant, Dr. Houh, realized his error regarding the meaning of “subscriber” in
`
`Chu ’684, and acknowledged that “subscriber” in Chu ’684 means “enterprise”
`
`whereas the ’815 Patent (and ’005 Patent by implication since the specification is
`
`the same) uses the term “subscriber” to mean “individual user”:
`
`A. Okay. I see that. So I think there is --
`part of the confusion may arise out of the fact that
`the '815 patent also uses the term "subscriber," and
`the '684 patent uses the term "subscriber."
`So -- and they use them in -- I -- I
`suppose, different senses, and -- and that the '815
`patent uses the term "subscriber" as a -- as an
`individual user, and the discussion in '684 does talk
`about subscriber as an enterprise.
`Ex. 2010 at 16:11-19. See also Ex. 2011 at 221:20-222:4,
`
`220:17-24, 178:17-181:4, 223:8-224:8, 215:20-216:6, 214:1-215:19;
`217:10-23 and 218:1-220:9.
`Dr. Houh’s admissions confirm that when Chu ’684 makes reference to a
`
`“subscriber’s dial plan,” this means an enterprise’s dial plan, not a user’s dial plan.
`
`Petitioner also admitted in their Opposition To Patent Owner’s Motion To Exclude
`
`in the previous IPR proceedings, that Dr. Houh had acknowledged the difference in
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`-12-
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`IPR2017-01398
`Apple Inc v. Voip-Pal
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`terminology, stating that Dr. Houh was “explaining that the Challenged Patent and
`
`Chu ’684 use ‘subscriber’ in ‘different senses’” and was “confirming enterprise
`
`meaning of ‘subscriber’ in Chu ’684.” Ex. 2023 at 11.
`
`Petitioner then asserts that “Petitioner’s reliance on these disparate uses of
`
`‘subscriber’ and Dr. Houh’s opinions regarding the same has been entirely
`
`consistent throughout this proceeding” (Id. at 12, emphasis added), but this is a
`
`complete distortion of the facts. Dr. Houh’s Declaration filed in the previous IPR
`
`proceedings is not consistent with his testimony during deposition and subsequent
`
`statements by Petitioner. There is absolutely no acknowledgement in Dr. Houh’s
`
`Declaration that any difference in terminology exists, despite him using the term
`
`“subscriber” in his report (purportedly adopting the ’815 Patent’s usage of that
`
`term) while also quoting the use of the word “subscriber” in Chu ’684 (which Dr.
`
`Houh later admitted had a different meaning). Ex. 2016. There is no credible
`
`explanation for the interchangeable use of two disparate meanings of subscriber
`
`other than that Dr. Houh was unaware of the difference in meaning at the time.
`
`Accordingly, while Petitioner admits that Dr. Houh used the terminology of
`
`the ’815 Patent “adopted for clarity” in his deposition, it is clear from the Petition
`
`and Declaration that Dr. Houh conflated (and failed to clarify) these disparate
`
`meanings of “subscriber” before this issue was pointed out by Patent Owner.
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`-13-
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`IPR2017-01398
`Apple Inc v. Voip-Pal
`
`d.
`
`Petitioner Has Admitted That Chu ’684 Does Not Disclose a
`Caller Dialing Profile
`
`In the previous IPR proceedings IPR2016-01201 and IPR2016-01198,
`
`Petitioner admitted in its Reply that Chu ’684 does not disclose caller dialing
`
`profiles. After realizing that they had misinterpreted Chu ’684 in the original
`
`Petition, Petitioner altered their original position in the Petition and stated that it
`
`was no longer relying on Chu ’684 for caller-specific information stored in dial
`
`plans, as they had originally alleged, but was relying instead on the secondary
`
`references for caller-specific information. Petitioner stated that:
`
`Patent Owner’s second bucket of criticisms is premised on the idea
`that Chu ’684 does not teach user-specific dial plans. See, e.g., Paper
`17, Response at 59-64. This is a subtle shifting of attention away from
`the relevant question because the proposed combinations do not rely
`on the enterprise dial plans discussed in Chu ‘684. Rather, the
`combinations rely on the user-specific profiles taught by the
`Secondary References. Indeed, this is the principle [sic] purpose of
`making the combination in the first place.
`Ex. 2020 at 23 (emphasis omitted and added).
`See also Ex. 2015 at 11-12, 17-18.
`Further, Petitioner confirmed in their Opposition To Patent Owner’s Motion
`
`To Exclude that the secondary references were being used for caller-specific
`
`information, by stating that: “Petitioner’s obvious [sic] combinations rely on the
`
`-14-
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`IPR2017-01398
`Apple Inc v. Voip-Pal
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`caller specific profiles taught in the Secondary References ….” Ex. 2023 at 12.
`
`This implicitly admits that Chu ’684 does not disclose caller-specific information.
`
`Petitioner also admitted that Chu ’684 does not disclose caller-specific
`
`profiles by abandoning their original line of reasoning from the Petition and
`
`adopting a different one with respect to how Chu ’684 operates. Specifically, in
`
`the previous IPR proceedings, Petitioner’s manner for combining the references
`
`relied on caller-specific information in Chu ’684 to
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