`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VOIP-PAL.COM, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01398
`Patent 9,179,005 B2
`____________
`
`
`
`Before JOSIAH C. COCKS, JENNIFER MEYER CHAGNON, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`
`
` Paper No. 6
`Trials@uspto.gov
`571-272-7822 Entered: November 20, 2017
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
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`I. INTRODUCTION
`
`Apple Inc. (“Petitioner”) filed a Petition for inter partes review of
`claims 8, 12, 13, 33, 37, 38, 41, 57, 61, 62, 81, 82, 86, 90, and 91 of U.S.
`Patent No. 9,179,005 B2 (Ex. 1001, “the ’005 patent”). Paper 2 (“Pet.”).
`Voip-Pal.com, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 5
`(“Prelim. Resp.”).
`We have authority to determine whether to institute inter partes
`review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Upon consideration of
`the Petition and the Preliminary Response, we conclude that the information
`presented does not show reasonable likelihood that Petitioner would prevail
`in establishing the unpatentability of claims 8, 12, 13, 33, 37, 38, 41, 57, 61,
`62, 81, 82, 86, 90, and 91 of the ’005 patent.
`
`A. Related Matters
`The parties identify the following district court proceedings in which
`the ’005 patent has been asserted: Voip-Pal.com, Inc. v. Apple, Inc., Case
`No. 2-16-cv-00260 (D. Nev.); Voip-Pal.com, Inc. v. Verizon Wireless
`Services, LLC, Case No. 2-16-cv-00271 (D. Nev.); and Voip-Pal.com, Inc. v.
`Twitter, Inc., 2:-16-cv-00260 (D. Nev. Feb. 9, 2016). Paper 4, 1; See
`Pet. 45–46. Petitioner also has filed a petition for inter partes review of
`claims of the ’005 patent in IPR2016-01198, as well as petitions in
`connection with related U.S. Patent No. 8,542,815 (“the ’815 patent”) in
`IPR2016-01201 and IPR2017-01399.1 Patent Owner further identifies the
`following proceedings to which Petitioner is not a party:
`
`1 Trial was instituted in each of IPR2016-01198 and IPR2016-01201 on
`November 21, 2016. A decision regarding institution of trial in
`IPR2017-01399 is being mailed concurrently with this decision.
`
`2
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`IPR2016-01382, challenging the ’815 patent;
`IPR2016-01383, challenging the ’005 patent; and
`IPR2016-01384, challenging the ’005 patent.
`
`Paper 4, 1.
`
`B. The ’005 Patent
`The ’005 patent is directed to classifying a call as a public network
`call or a private network call and producing a routing message based on that
`classification. Ex. 1001, Abstract. Figure 7 of the ’005 patent is shown
`below.
`
`
`Figure 7 above illustrates a routing controller that facilitates communication
`between callers and callees. Id. at Fig. 7, 14:32–33, 17:26–27. As shown in
`Figure 7, routing controller (RC) 16 includes RC processor circuit 200,
`which in turn includes processor 202, program memory 204, table memory
`206, buffer memory 207, and I/O port 208. Id. at 17:28–31. Routing
`controller 16 queries database 18 (shown in Figure 1) to produce a routing
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`message to connect caller and callee. Id. at 14:18–25, 14:32–42. Program
`memory 204 includes blocks of code for directing processor 202 to carry out
`various functions of the routing controller. Id. at 17:47–49. Those blocks of
`code include RC request message handler 250, which directs the routing
`controller to produce the routing message. Id. at 17:49–53.
`In response to a calling subscriber initiating a call, the routing
`controller of the ’005 patent:
`receiv[es] a callee identifier from the calling subscriber, us[es]
`call classification criteria associated with the calling subscriber
`to classify the call as a public network call or a private network
`call[,] and produc[es] a routing message identifying an address
`on the private network, associated with the callee[,] when the call
`is classified as a private network call and produc[es] a routing
`message identifying a gateway to the public network when the
`call is classified as a public network call.
`Id. at 14:32–42.
`Figures 8A through 8D of the ’005 patent illustrate a flowchart of an
`RC request message handler executed by the RC processor circuit. Id. at
`11:3–4. Figure 8B, shown below, illustrates steps for performing checks on
`the callee identifier:
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`Id. at Fig. 8B, 19:53–57. Blocks 257, 380, 390, 396, 402 in Figure 8B above
`effectively “establish call classification criteria for classifying the call as a
`public network call or a private network call.” Id. at 22:58–61. For
`example, block 402 “directs the processor 202 of FIG. 7 to classify the call
`as a private network call when the callee identifier complies with a
`predefined format, i.e. is a valid user name and identifies a subscriber to the
`private network . . . .” Id. at 22:61–23:3. Block 269 also classifies the call
`as public or private, depending on whether the callee is a subscriber to the
`system. Id. at 22:61–23:19, 20:23–33; see also id. at 18:63–19:30.
`
`C. Illustrative Claims
`Each of claims 8, 12, 13, 33, 37, 38, 41, 57, 61, 62, 81, 82, 86, 90, and
`91 is a dependent claim. Claim 8 depends from claim 1. Claims 1 and 8 are
`illustrative and are reproduced below:
`
`5
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`A process for producing a routing message for
`1.
`routing communications between a caller and a callee in a
`communication system, the process comprising:
`using a caller identifier associated with the caller to locate
`a caller dialing profile comprising a plurality of calling attributes
`associated with the caller;
`when at least one of said calling attributes and at least a
`portion of a callee identifier associated with the callee meet
`private network classification criteria, producing a private
`network routing message for receipt by a call controller, said
`private network routing message identifying an address, on the
`private network, associated with the callee; and
`when at least one of said calling attributes and at least a
`portion of said callee identifier meet a public network
`classification criterion, producing a public network routing
`message for receipt by the call controller, said public network
`routing message identifying a gateway to the public network.
`8.
`The process of claim 1, further comprising
`associating at least one direct inward dial (DID) record with at
`least one subscriber to said communication system, each of said
`at least one direct inward dial records comprising a field storing
`a direct inward dial number associated with said at least one
`subscriber.
`
`Id. at 36:28–46, 37:20–25.
`
`D. Asserted Grounds of Unpatentability
`Petitioner contends that claims 8, 12, 13, 33, 37, 38, 41, 57, 61, 62,
`81, 82, 86, 90, and 91 of the ’005 patent are unpatentable based on the
`following grounds:
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`References
`Chu ’6842 and
`Scott3
`Chu ’684, Scott,
`and Hinchey4
`
`
`
`Basis
`Challenged Claims
`35 U.S.C. § 103(a) 8, 13, 33, 38, 41, 57, 62, 81, 82,
`86, 90, and 91
`12, 37, and 61
`
`35 U.S.C. § 103(a)
`
`II. ANALYSIS
`
`A. Claim Construction
`In an inter partes review, we construe claim terms in an unexpired
`patent according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016)
`(upholding the use of the broadest reasonable interpretation standard).
`Consistent with the broadest reasonable construction, claim terms are
`presumed to have their ordinary and customary meaning as understood by a
`person of ordinary skill in the art in the context of the entire patent
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). An inventor may provide a meaning for a term that is different from
`its ordinary meaning by defining the term in the specification with
`reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994).
`
`
`2 U.S. Patent No. 7,486,684 B2, issued Feb. 3, 2009 (Ex. 1006, “Chu ’684”)
`3 U.S. Patent No. 6,760,324 B1, issued July 6, 2004 (Ex. 1007, “Scott”)
`4 U.S. Patent Application Publication No. 2002/0122547 A1, published
`Sept. 5, 2002 (Ex. 1009, “Hinchey”)
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`Petitioner proposes constructions for the means-plus-function
`limitations of claims 50 and 57. Pet. 7–9; see 37 C.F.R. § 42.104(b)(3)
`(requiring a petition to set forth “[w]here the claim to be construed contains
`a means-plus-function or step-plus-function limitation as permitted under
`35 U.S.C. 112(f), . . . the specific portions of the specification that describe
`the structure, material, or acts corresponding to each claimed function”).5
`Patent Owner does not dispute any of Petitioner’s proposed claim
`constructions. For purpose of this Decision, we determine that it is
`unnecessary to address the claim constructions proposed by Petitioner.
`Patent Owner, however, has presented arguments that require us to
`consider whether certain steps of the challenged claims must be performed
`in a specific order. See Prelim. Resp. 30–33. More particularly, claim 1
`recites that “a caller identifier associated with the caller” is used “to locate a
`caller dialing profile comprising a plurality of calling attributes associated
`with the caller.” The claim further dictates that “at least one of said calling
`attributes” is factored into a determination of whether either “private
`network classification criteria” or “public network classification criterion” is
`met in producing a network routing message. Patent Owner contends that,
`because the required “calling attributes” are consulted to determine how a
`message is routed, this necessarily means the act of locating a caller profile
`that incorporates the calling attributes must have occurred prior to the step
`
`
`5 Paragraph six of 35 U.S.C. § 112 was replaced with newly designated
`§ 112(f) when § 4(c) of the America Invents Act (AIA), Pub. L. No. 112–29,
`took effect on September 16, 2012. Because the application resulting in the
`’482 patent was filed before that date, we refer to the pre-AIA version of
`§ 112.
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`producing a particular routing message based on those calling attributes. See
`id.
`
`In considering whether the steps of a claim must be performed in the
`order written, the first place to look is the claim language itself. See Altris,
`Inc. v. Symantec Corp., 318 F.3d 1363, 1369–70 (Fed. Cir. 2003). In
`claim 1, for instance, the calling attributes of a caller dialing profile that are
`consulted for the purpose of determining message routing must necessarily
`have been ascertained prior to such message routing determination. Because
`the function of a particular component in a prior step is referenced in a
`subsequent step, it is the logical and natural inference that the steps are
`ordered with respect to one another. See Mantech Envtl. Corp. v. Hudson
`Envtl. Servs., Inc., 152 F.3d 1368, 1375–76 (Fed. Cir. 1998) (holding that
`the steps of a method claim had to be performed in their written order
`because each subsequent step referenced something logically indicating the
`prior step had been performed). Petitioner does not present arguments
`regarding the ordering of claim steps. We conclude that, for claim 1, the
`pertinent steps discussed above occur in the order in which they appear in
`the claims. We also reach that conclusion for each of the other independent
`claims involved in this proceeding, all of which include a similar
`requirement.
`We have given all other terms their ordinary and customary meaning
`and conclude that it is unnecessary, for purposes of this Decision, to make
`any of those meanings explicit. See Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be
`construed that are in controversy, and only to the extent necessary to resolve
`the controversy.”).
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`B. Principles of Law
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness.6 See Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966). We analyze the asserted grounds of unpatentability in accordance
`with these principles.
`
`C. Level of Ordinary Skill in the Art
`Petitioner asserts that a person of ordinary skill in the art would have
`“at least a bachelor’s degree in electrical engineering, or in a related field,
`with at least 2–4 years of industry experience in designing or developing
`packet-based and circuit-switched systems. Additional industry experience
`or technical training may offset less formal education, while advanced
`degrees or additional formal education may offset lesser levels of industry
`experience.” Pet. 9–10 (citing Ex. 1008 ¶ 19). In connection with this
`proceeding, Patent Owner does not propose, or otherwise rely upon, an
`alternative level of ordinary skill in the art. See generally Prelim. Resp. For
`purposes of this Decision, we adopt Petitioner’s proposal regarding the level
`
`
`6 The parties have not presented any objective evidence of non-obviousness.
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`of ordinary skill in the art. The level of ordinary skill in the art further is
`reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d
`1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir.
`1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`
`D. Asserted Obviousness over Chu ’684 and Scott
`Petitioner contends that claims 8, 13, 33, 38, 41, 57, 62, 81, 82, 86,
`90, and 91 of the ’005 patent are unpatentable under 35 U.S.C. § 103(a) as
`obvious over Chu ’684 and Scott. Pet. 1, 6, 10–38. Patent Owner disagrees
`with Petitioner’s contention. See generally Prelim. Resp.
`
`1. Summary of Chu ’684
`Chu ’684 discloses a communications system for managing calls in an
`Internet Protocol (IP) Virtual Private Network (VPN) and calls to the public
`switched telephone network (PSTN). Ex. 1006, Title, Abstract, 2:51–3:3,
`4:13–14. Figure 2 of Chu ’684, shown below, depicts a portion of the
`communications system:
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`Id. at 3:14–15. As shown above in Figure 2, communications system 200
`includes customer premises 105 having IP phones 101, 102, and 103 and
`server 110 connected to a voice over IP (VoIP)-VPN Service Provider (SP)
`at SP central office 205. Id. at 4:24–28. Connection 145 between customer
`premises 205 and SP central office 205 is made via one or more routers 140.
`Id. at 4:28–30. Server 110 communicates with soft-switch 220 with an
`agreed-upon signaling protocol such as Session Invitation Protocol (SIP).
`Id. at 4:49–52. Soft-switch 220 sends appropriate commands to packet
`switch 210. Packet switch 210 is a special media gateway that accepts voice
`packets from an incoming interface and switches these packets to an
`outgoing interface. Id. at 4:36–39. Soft-switch 220 “is the intelligence of
`the system. . . . For example, it keeps track of the VPN that a location
`belongs to, the dial plans of the subscribers, . . . and the like.” Id. at 4:59–
`63.
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`Chu ’684’s VoIP network carries both on-net (within the same VoIP
`VPN) and off-net (to PSTN) calls. Id. at 5:17–19. Chu ’684 discloses that
`an “On-Net Call” sequence begins when a user picks up the handset at IP
`phone 101. Id. at 8:39–40, 8:55–56. According to Chu ’684, IP phone 101
`collects dialed digits from the user and sends them to server 110. Id. at
`8:62–64. Chu ’684 discloses that “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.” Id. at
`8:65–9:1. In this on-net example, the call is another on-net phone in another
`location. According to Chu ’684, server 110 sends an SIP invite message to
`soft-switch 220 at central office 205. Id. at 9:2–4. Chu ’684 discloses that
`soft-switch 220 “consults the dial plan for this subscriber” based on the ID
`of server 110. Id. at 9:30–33. From the database associated with the dial
`plan, soft-switch 220 determines, among other things, the IP address of the
`egress packet switch. Id. at 9:34–38. Chu ’684 discloses that soft-switch
`220 sends an SIP invite message to the next soft-switch, the SIP message
`including information such as that “the call is an on-net call for a particular
`VPN.” Id. at 9:50–58.
`Figure 13 of Chu ’684 illustrates a configuration for establishing
`IP-VPN service to the PSTN. Id. at 13:1–3. According to Chu ’684, for an
`outgoing call from IP phone 101, the operation is very similar to that of an
`intra-net call. Id. at 13:13–15. Chu ’684 states: “From the dialed digits
`(of a destination phone that is being called, PSTN phone 1301), ingress
`soft-switch 220[] determines that this call is for the PSTN.” Id. at 13:15–18.
`From the same dialed digits, the soft-switch also determines egress PSTN
`gateway 1302 and its controlling soft-switch 1304. Id. at 13:18–20.
`
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`2. Summary of Scott
`Scott discloses “[a] method, system, and computer program product
`
`that provides voice over the Internet communication.” Ex. 1007, 2:41–42.
`Scott’s Figure 2 is reproduced below.
`
`
`
`Figure 2 above depicts “a diagram of a VoIP system according to one
`embodiment of the present invention.” Id. at 3:12–13. “VoIP system 200
`. . . allows traffic (e.g. voice or fax date) originating on a circuit-switched
`network to be carried over a packet-switched network” and “acts as a bridge
`between a public switch telephone network [PSTN] 205 and an IP
`network 215.” Id. at 6:23–29. Scott describes the operation of VoIP system
`200 as follows:
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`[V]oice 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. A call can be placed from an
`ordinary telephone 203 using a prepaid service and autodialer
`204. Calls can also originate from a speaker or conference-type
`phone 206 through a private branch exchange (PBX) 207. Such
`calls can terminate at an IP phone 293 or an ordinary telephone
`291, 292.
`
`Id. at 6:30–37. Based on that above description, Scott states that a person of
`ordinary skill in the art would know that any type of computer or telephone
`equipment can be used to originate and terminate voice calls over the VoIP
`system 200. Id. at 6:38–42.
`
`3. Discussion–Chu ’684 and Scott
`Each of the dependent claims challenged in this proceeding ultimately
`depends from one of independent claims 1, 26, 50, and 74. We focus,
`initially, on claim 1. That claim includes the following features:
`using a caller identifier associated with the caller to locate
`a caller dialing profile comprising a plurality of calling attributes
`associated with the caller;
`when at least one of said calling attributes and at least a
`portion of a callee identifier associated with the callee meet
`private network classification criteria, producing a private
`network routing message for receipt by a call controller, said
`private network routing message identifying an address, on the
`private network, associated with the callee; and
`when at least one of said calling attributes and at least a
`portion of said callee identifier meet a public network
`classification criterion, producing a public network routing
`message for receipt by the call controller, said public network
`routing message identifying a gateway to the public network.
`
`Ex. 1001, 36:28–46
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`Thus, claim 1 requires that at least one “calling attribute” associated
`with a caller dialing profile and a least a portion of a “callee identifier” are
`evaluated to determine if either private network classification criteria or a
`public network classification criterion has been met. Based on that
`evaluation, either a private network routing message is produced for receipt
`by the call controller identifying a private network address associated with
`the callee, or a public network routing address is produced which identifies a
`gateway to the public network.
`a. Issues pertaining to ordering of steps
`At the outset, as discussed above, we construe all the challenged
`claims of the ’005 patent as requiring an act of locating a caller dialing
`profile comprising a plurality of calling attributes associated with a caller,
`and then evaluating those attributes in producing a routing message. See
`supra (§ II.A. Claim Construction). Correspondingly, Patent Owner
`contends Petitioner has not accounted properly for the step ordering required
`by the claims in its grounds of unpatentability. See Prelim. Resp. 30–33. In
`conjunction with the step in claim 1 of locating a caller dialing profile
`comprising a plurality of calling attributes associated with a caller, Petitioner
`points to Chu ’684’s disclosure at column 9, lines 30–33. Pet. 17–18. This
`portion of Chu ’684 concerns its disclosed “step 610” and reads: “[a]t step
`610, upon 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.” Ex. 1006, 9:30–33.
`Petitioner subsequently relies on Chu ’684’s disclosure at column 8,
`line 65 through column 9, line 1, pertaining to Chu ’684’s “step 608” to
`account for the evaluation of the claimed “calling attributes” to determine
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`whether public or private network criteria have been met. Pet. 20–21.
`Nevertheless, the performance of Chu ’684’s “step 608” occurs temporally
`before the performance of “step 610.” That the Petitioner relies on the
`occurrence of Chu ’684’s “step 610” as accounting for the claim requirement
`of locating a caller dialing plan, and then relies on Chu ’684’s prior “step
`608” as accounting for the subsequent claim requirement of using a caller
`attribute of that caller dialing plan is at odds, or is inconsistent, with the step
`ordering that is required by the claims of the ’005 patent. In that respect, we
`agree with Patent Owner that Petitioner’s reliance on “Chu ’684’s
`‘classifying’ step 608 and ‘locating’ step 610 occur in the wrong order,” and,
`in particular, an order that is not commensurate with the required sequence
`of steps in claim 1. See Prelim. Resp. 32–33. The same deficiency also
`emerges in Petitioner’s analysis of independent claims 26, 50, and 74. That
`deficiency likewise manifests with respect to each of claims 8, 13, 33, 38,
`41, 57, 62, 81, 82, 86, 90, and 91, which depend, directly or indirectly, from
`one of claims 1, 26, 50, and 74.
`b. Proposed reasons to combine
`There also is disagreement between the parties as to whether
`Petitioner has shown adequate reasons to combine the teachings of Chu ’684
`and Scott. Petitioner offers the following as reasoning that purportedly
`would have prompted a skilled artisan to seek to modify Chu ’684 based on
`Scott’s disclosure:
`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
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`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 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.
`
`Pet. 16–17.
`
`An underlying premise of Petitioner’s proposal to combine the
`teachings of Scott with those of Chu ’684 is that a skilled artisan would have
`viewed Chu ’684’s interface as one that is not “intuitive” and “user-
`friendly,” thus giving rise to a desire to improve Chu ’684’s system. Id. As
`support for that proposal, Petitioner relies on the testimony of Dr. Houh
`spanning paragraphs 35 to 39 of his Declaration (Ex. 1008). In those
`paragraphs, Dr. Houh essentially expresses the same statements as those
`reproduced above. Notably absent, however, from both the Petition and Dr.
`Houh’s testimony is underlying evidentiary support for the proposition that
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`one of ordinary skill in the art would have regarded Chu ’684’s teachings as
`deficient. Indeed, Petitioner’s statement and Dr. Houh’s bare testimony that
`“[u]pon reading the disclosure of Chu ’684,” a person of ordinary skill in the
`art would have sought to improve that very disclosure seemingly warrants
`underlying explanation or citation, yet no adequate support in that regard is
`supplied. See Pet. 16; Ex. 1008 ¶ 38. We also take note that Chu ’684
`characterizes its disclosed invention as being “innovative,” “novel,” and
`overcoming “disadvantages” associated with the prior art. Ex. 1006, 2:28–
`29, 2:33–35. That Chu ’684 praises its own disclosure is unsurprising.
`Petitioner’s contention, however, that Chu ’684 itself would have suggested
`a deficiency and a need for improvement is incongruent with the content of
`this reference.
`Petitioner also points to Scott’s disclosure as additionally providing
`“express motivation” to modify Chu’s system. Pet. 16 (citing Ex. 1007,
`67:46–53). According to Petitioner and Dr. Houh, Scott conveys 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.” Id.; Ex. 1008 ¶ 38. The cited portion of Scott describes
`reformatting dialed digits into a “fully resolved format” that allows “routing
`information [to] be shared between Gateway Servers in different areas
`without modification.” Ex. 1007, 67:46–53. Petitioner and Dr. Houh,
`however, do not explain adequately why and how that disclosure “would
`significantly benefit” Chu ’684’s particular communication system. The
`general premise that Chu ’684’s system would benefit without explanation
`of what that benefit entails, without more, casts doubt that Petitioner has
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`established the requisite “articulated reasoning with some rational
`underpinning” that is necessary to support a motivation to combine
`teachings. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
`Moreover, Petitioner contends that the claims are rendered obvious
`“by merely programming the system of Chu ’684 to analyze the dialed digits
`and reformat as necessary using caller attributes such as national and area
`code.” Pet. 16 (second emphasis added). Left wanting from that contention
`is adequate support in the record as to why or how one of ordinary skill
`would evaluate when it is “necessary” to reprogram Chu ’684’s system
`based on Scott’s teachings. Petitioner’s position in that regard is not
`grounded in what a skilled artisan would have gleaned from the teachings of
`the prior art, and is instead an impermissible exercise of hindsight with the
`claims of the ’005 patent serving as a guide. Such a position is not
`appropriate for a conclusion of obviousness. See Otsuka Pharm. Co., Ltd. v.
`Sandoz, Inc., 678 F.3d 1280, 1296 (“The inventor’s own path itself never
`leads to a conclusion of obviousness; that is hindsight.”).
`Lastly, Petitioner and Dr. Houh offer “common sense” as an
`additional rationale underlying the combination of Chu ’684 and Scott. Pet.
`17; Ex. 1008 ¶ 39. Recourse to “common sense” certainly has its place in
`considering the question of obviousness. See KSR, 550 U.S. at 421 (“When
`there is a design need or market pressure to solve a problem and there are a
`finite number of identified, predictable solutions, a person of ordinary skill
`has good reason to pursue the known options within his or her technical
`grasp. If this leads to the anticipated success, it is likely the product not of
`innovation but of ordinary skill and common sense.”). Yet, here, the
`reliance on a theory of “common sense” is unexplained. As our reviewing
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`court has observed, “[a]bsent some articulated rationale, a finding that a
`combination of prior art would have been ‘common sense’ or ‘intuitive’ is
`no different than merely stating that the combination ‘would have been
`obvious.’” In re Van Os, 844 F.3d 1359, 1361 (Fed. Cir. 2017). On this
`record, we do not agree that a skilled artisan would have regarded Chu ’684
`as deficient and ripe for improvement. Accordingly, we determine that
`Petitioner has not articulated persuasive reasoning with a rational
`underpinning for combining the teachings of Chu ’684 and Scott.
`c. Conclusion–Chu ’684 and Scott
`We have carefully considered the Petition and Patent Owner’s
`
`Preliminary Response. For the reasons discussed above, we determine that
`Petitioner has not shown a reasonable likelihood of success in challenging
`claims 8, 13, 33, 38, 41, 57, 62, 81, 82, 86, 90, and 91 based on Chu ’684
`and Scott. We, thus, conclude that institution of trial is not warranted as to
`those claims.
`
`E. Asserted Obviousness over Chu ’684, Scott, and Hinchey
`Petitioner also contends that claims 12, 37, and 61 are unpatentable
`
`based on Chu ’684, Scott, and Hinchey. Pet. 6, 38–45. Each of claims 12,
`37, and 61 ultimately depends from one of independent claims 1, 26, and 50.
`Petitioner does not rely on Hinchey to make up for any of the deficiencies
`discussed above in conjunction with the ground of unpatentability based on
`Chu ’684 and Scott. We also conclude that Petitioner has not shown a
`reasonable likelihood of success in challenging the patentability of claims
`12, 37, and 61.
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`III. CONCLUSION
`
`For the above