IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`PETITION FOR
`INTER PARTES REVIEW
`PURSUANT TO 37
`C.F.R. § 42.100 ET SEQ.
`
`In re U.S. Patent No. 8,542,815
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`Currently in Litigation Styled:
`VoIP-Pal.com, Inc. v. Apple Inc.
`Case No: 2:16-cv-00260-RFB-VCF
`
`Issued: September 24, 2013
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`Application Filed: November 1, 2007
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`Applicant: Clay Perreault, et al.
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`Title: Producing Routing Messages for
`Voice Over IP Communications
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`Mail Stop Inter Partes Review
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`DECLARATION OF HENRY H. HOUH, PhD
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`I. Introduction
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`I, Henry H. Houh, PhD, declare:
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`1.
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`I am making this declaration at the request of Apple Inc. in the
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`matter of the Inter Partes Review of U.S. Patent No. 8,542,815 (“the ’815
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`Patent”) to Perreault, et al.
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`PETITIONER APPLE INC. EX. 1005-1
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`
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`PETITION FOR
`INTER PARTES REVIEW
`PURSUANT TO 37
`C.F.R. § 42.100 ET SEQ.
`
`In re U.S. Patent No. 8,542,815
`
`Currently in Litigation Styled:
`VoIP-Pal.com, Inc. v. Apple Inc.
`Case No: 2:16-cv-00260-RFB-VCF
`
`Issued: September 24, 2013
`
`Application Filed: November 1, 2007
`
`Applicant: Clay Perreault, et al.
`
`Title: Producing Routing Messages for
`Voice Over IP Communications
`
`Mail Stop Inter Partes Review
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`DECLARATION OF HENRY H. HOUH, PhD
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`I. Introduction
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`I, Henry H. Houh, PhD, declare:
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`1.
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`I am making this declaration at the request of Apple Inc. in the
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`matter of the Inter Partes Review of U.S. Patent No. 8,542,815 (“the ’815
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`Patent”) to Perreault, et al.
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`PETITIONER APPLE INC. EX. 1005-1
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`2.
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`I am being compensated for my work in this matter. My
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`compensation in no way depends upon the outcome of this proceeding.
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`3.
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`In the preparation of this declaration, I have studied:
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`(1) The ’815 Patent, Exhibit 1001;
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`(2) The prosecution history of the ’815 Patent, Exhibit 1002;
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`(3) U.S. Patent No. 7,486,684 to Chu et al. (“Chu ’684”), Exhibit 1003;
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`(4) U.S. Patent No. 6,760,324 to Scott (“Scott”), Exhibit 1004; and
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`(5) U.S. Patent Application Publication No. 2002/0122547 to Hinchey et
`al. (“Hinchey”), Exhibit 1006.
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`4.
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`In forming the opinions expressed below, I have considered:
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`(1) The documents listed above,
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`(2) The relevant legal standards, including the standard for obviousness
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`provided in KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007), and
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`(3) My knowledge and experience based upon my work in this area, as
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`described below.
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`II. Qualifications and Professional Experience
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`5. My complete qualifications and professional experience are
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`described in my curriculum vitae, a copy of which can be found attached hereto as
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`Appendix A. The following is a brief summary of my relevant qualifications and
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`professional experience.
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`PETITIONER APPLE INC. EX. 1005-2
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`6.
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`I received a Ph.D. in Electrical Engineering and Computer Science
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`from the Massachusetts Institute of Technology in 1998. I also received a Master
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`of Science degree in Electrical Engineering and Computer Science in 1991, a
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`Bachelor of Science Degree in Electrical Engineering and Computer Science in
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`1989, and a Bachelor of Science Degree in Physics in 1990.
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`7.
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`As further indicated in my C.V., I have worked in the electrical
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`engineering and computer science fields, including in streaming audio and video,
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`on several occasions. As part of my doctoral research at MIT from 1991-1998, I
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`worked as a research assistant in the Telemedia Network Systems (TNS) group at
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`the Laboratory for Computer Science. The TNS group built a high speed gigabit
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`network and applications which ran over the network, such as remote video
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`capture, processing, segmentation and search on computer terminals. In addition
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`to helping design the core network components, designing and building the high
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`speed links, and designing and writing the device drivers for the interface cards, I
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`also set up the group’s web server, which at the time was one of the first several
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`hundred web servers in existence.
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`8.
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` I authored or co-authored
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`twelve papers and conference
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`presentations on our group’s research. I also co-edited the final report of the
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`gigabit networking research effort with the Professor (David Tennenhouse) and
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`PETITIONER APPLE INC. EX. 1005-3
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`Senior Research Scientist of the group (David Clark), who is generally considered
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`to be one of the fathers of the Internet Protocol.
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`9.
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`I started building web servers in 1993, having set up the web server
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`for the MIT Telemedia, Networks, and Systems Group, to which I belonged. It
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`was one of the first several hundred web servers in existence, and went on to
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`provide what was likely one of the first live Internet video sessions initiated from
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`a web site. I co-authored papers on our web server video system and on database-
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`backed web sites for which I attended the first World Wide Web conference to
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`present.
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`10. From 1997 to 1999, I was a Senior Scientist and Engineer at NBX
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`Corporation, a start-up that made business telephone systems that streamed
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`packetized audio over data networks instead of using traditional phone lines. NBX
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`was later acquired by 3Com Corporation, and the phone system is still available
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`and being used at tens of thousands of businesses or more. As part of my work at
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`NBX, I designed the core audio reconstruction algorithms for the telephones, as
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`well as the packet transmission algorithms. I also designed and validated the core
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`packet transport protocol used by the phone system. The protocol is used millions
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`of times daily currently. Two of the company founders and I received US Patent
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`No. 6,967,963 titled “Telecommunication method for ensuring on-time delivery of
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`packets containing time sensitive data,” for some of the work I did there.
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`PETITIONER APPLE INC. EX. 1005-4
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`11. Starting in 2001, I was architect for the next generation of web
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`testing product by Empirix known as e-Test Suite. e-Test Suite is now owned by
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`Oracle Corporation. e-Test provided functional and load testing for web sites. e-
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`Test emulated a user's interaction with a web site and provided web developers
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`with a method of creating various scripts and providing both functional testing
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`(e.g., did the web site provide the correct response) and load testing (e.g., could
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`the web site handle 5000 users on its web site simultaneously). Among Empirix’s
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`customers was H&R Block, who used e-Test Suite to test the tax filing
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`functionality of their web site as whether the web site could handle a large
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`expected load prior to the filing deadline.
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`12. At Empirix, I also conceived, secured internal funding for, and
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`managed the engineering for a new data platform test product known as the
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`PacketSphere. The first capability the PacketSphere provided was to emulate a
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`network so that lab testing could be done under conditions that mimicked the
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`Internet, including configurable latency and packet loss. Later, PacketSphere
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`provided the capability to generate large numbers of Voice-over-IP streams as
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`well as measure the quality of the connection of VoIP streams. As part of my
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`work, I continued to study the development of the Voice-over-IP market and
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`worked with a number of Empirix customers to understand their market and
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`product testing needs. Sonus Networks, a leading manufacturer of Voice-over-IP
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`PETITIONER APPLE INC. EX. 1005-5
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`equipment, was a long-time customer of Empirix and one of the first customers of
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`the PacketSphere product.
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`13. Around 2006, at BBN, I helped create a search engine for audio and
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`video which could be searched based on spoken word content. Our system used
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`speech recognition and natural language processing to create a search index of
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`audio and video files posted publicly on the Internet. During the search process,
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`audio and video with matching spoken words could be streamed to users. As the
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`Vice President of Operations and Technology, I architected and helped build-out
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`the back end of the system, which supported speech recognition, search indexing,
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`and providing the capability for audio and video streaming in search results.
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`Today, at RAMP Inc., the project has grown to a product that is used by media
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`outlets such as ABC, CBS, NBC, Fox, and Reuters. In addition, during this time
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`at BBN, I continued to be engaged with Voice-over-IP related projects through
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`the time I left BBN.
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`14. Around 2008-2009, while I was Chief Technology Officer at Eons, a
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`venture backed company founded by Jeff Taylor, who also founded the hiring
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`web site Monster.com, Eons launched an advertising network. Eons built a
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`network of sites on which advertisements could be placed, fulfilled client
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`advertisement purchases, and tracked delivery of clients’ advertisements. In
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`PETITIONER APPLE INC. EX. 1005-6
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`addition, we utilized the Solr search platform in order to index the millions of
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`items of content added by Eons members, in order to make them searchable.
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`15.
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`I have also continued to develop web sites for various business
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`projects, as well as setting up web sites on a volunteer basis for various groups
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`that I am associated with.
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`16.
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`I am the author of several publications devoted to a wide variety of
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`technologies in the fields of electrical engineering and computer science. These
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`publications are listed on my C.V. (App. A).
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`17.
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`In summary, I have extensive familiarity with systems, networks,
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`architectures,
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`and methods
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`related
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`to
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`traditional
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`circuit-switched
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`telecommunications, packet-based telecommunications, and systems that merged
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`the two technologies, and I am familiar with what the states of these technologies
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`were at the relevant time of the ’815 Patent invention and before.
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`III. Level of Ordinary Skill in the Art
`18.
`I am familiar with the knowledge and capabilities of persons of
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`ordinary skill in packet-based and circuit-switched telecommunication systems in
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`the period around November 2006, the earliest claimed priority date for the ’815
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`Patent. I base this on my experience with VoIP starting with my streaming media
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`work for my PhD thesis in the mid 1990’s, through my first post-degree job at
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`NBX, which shipped the first PBX to work over a computer data network, and my
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`PETITIONER APPLE INC. EX. 1005-7
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`later professional work in the early 2000’s developing VoIP test tools. One of
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`ordinary skill in the art would have been familiar with VoIP gateways, which
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`interfaced packet-based phone systems to the PSTN, softswitches, which provided
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`call control and advanced features for VoIP phone systems, and the SIP and
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`MGCP protocols, which provided signaling and device control for VoIP systems.
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`One of ordinary skill in the art would also have been familiar with the types of
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`features available in a VoIP system, such as the ability for VoIP phones to be
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`moved around in a data network without reprogramming a switch, with
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`softphones, which allowed users to use their computers as a telephone, and with
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`toll bypass, where calls maybe placed out through remote gateways accessible
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`over the data network to avoid long distance telephone charges.
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`19.
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`In my opinion, the level of ordinary skill in the art that one would
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`need in order to have the capability of understanding the scientific and engineering
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`principles applicable to the ’815 Patent is (i) a Bachelor degree (or higher degree)
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`in an academic area emphasizing electrical engineering and (ii) 2-4 years of
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`industry experience in designing or developing packet-based and circuit-switched
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`telecommunication systems. Additional industry experience or technical training
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`may offset less formal education, while advanced degrees or additional formal
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`education may offset lesser levels of industry experience.
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`PETITIONER APPLE INC. EX. 1005-8
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`IV. Relevant Legal Standards
`20. Obviousness
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`a.
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`I have been asked to provide my opinions regarding whether
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`claims 1, 3-4, 7-9, 11-12, 14-16, 28, 30-31, 34-36, 38-39, 41-43, 54, 61, 65-66, 74,
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`81, 85-86, 93, 100, and 104-105 of the ’815 Patent would have been obvious to a
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`person having ordinary skill in the art at the time of the alleged invention, in light
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`of the prior art.
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`b.
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`I have been informed and understand that a patent claim is not
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`patentable under 35 U.S.C. § 103 if the differences between the patent claim and
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`the prior art are such that the claimed subject matter as a whole would have been
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`obvious at the time the claimed invention was made to a person having ordinary
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`skill in the art to which the subject matter pertains. Obviousness, as I have been
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`informed, is based on the scope and content of the prior art, the differences
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`between the prior art and the claim, the level of ordinary skill in the art, and, to the
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`extent that they exist and have an appropriate nexus to the claimed invention (as
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`opposed to prior art features), secondary indicia of non-obviousness.
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`c.
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`I have been informed that whether there are any relevant
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`differences between the prior art and the claimed invention is to be analyzed from
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`the view of a person of ordinary skill in the art at the time of the invention. As
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`such, my opinions below as to a person of ordinary skill in the art are as of the time
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`PETITIONER APPLE INC. EX. 1005-9
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`of the invention, even if not expressly stated as such; for example, even if stated in
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`the present tense.
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`d.
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`In analyzing the relevance of the differences between the
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`claimed invention and the prior art, I have been informed that I must consider the
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`impact, if any, of such differences on the obviousness or non-obviousness of the
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`invention as a whole, not merely some portion of it. The person of ordinary skill
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`faced with a problem is able to apply his or her experience and ability to solve the
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`problem and also look to any available prior art to help solve the problem.
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`e.
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`An invention is obvious if a person of ordinary skill in the art,
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`facing the wide range of needs created by developments in the field, would have
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`seen an obvious benefit to the solutions tried by the applicant. When there is a
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`design need or market pressure to solve a problem and there are a finite number of
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`identified, predictable solutions, it would be obvious to a person of ordinary skill to
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`try the known options. If a technique has been used to improve one device, and a
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`person of ordinary skill in the art would recognize that it would improve similar
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`devices in the same way, using the technique would have been obvious.
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`f.
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`I have been informed that a precise teaching in the prior art
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`directed to the subject matter of the claimed invention is not needed. I have been
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`informed that one may take into account the inferences and creative steps that a
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`person of ordinary skill in the art would have employed in reviewing the prior art
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`PETITIONER APPLE INC. EX. 1005-10
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`at the time of the invention. For example, if the claimed invention combined
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`elements known in the prior art and the combination yielded results that were
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`predictable to a person of ordinary skill in the art at the time of the invention, then
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`this evidence would make it more likely that the claim was obvious. On the other
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`hand, if the combination of known elements yielded unexpected or unpredictable
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`results, or if the prior art teaches away from combining the known elements, then
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`this evidence would make it more likely that the claim that successfully combined
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`those elements was not obvious.
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`g.
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`I have been informed that hindsight must not be used when
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`comparing the prior art to the invention for obviousness.
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`h.
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`Obviousness may also be shown by demonstrating that it would
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`have been obvious to modify what is taught in a single piece of prior art to create
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`the subject matter of the patent claim. Obviousness may be shown by showing that
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`it would have been obvious to combine the teachings of more than one item of
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`prior art. In determining whether a piece of prior art could have been combined
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`with other prior art or combined with or modified in view of other information
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`within the knowledge of one of ordinary skill in the art, the following are examples
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`of approaches and rationales that may be considered:
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`•
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`Combining prior art elements according to known methods to yield
`predictable results;
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`PETITIONER APPLE INC. EX. 1005-11
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`•
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`•
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`•
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`•
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`•
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`•
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`Simple substitution of one known element for another to obtain
`predictable results;
`Use of a known technique to improve similar devices (methods, or
`products) in the same way;
`Applying a known technique to a known device (method, or product)
`ready for improvement to yield predictable results;
`Applying a technique or approach that would have been "obvious to
`try" (choosing from a finite number of identified, predictable
`solutions, with a reasonable expectation of success);
`Known work in one field of endeavor may prompt variations of it for
`use in either the same field or a different one based on design
`incentives or other market forces if the variations would have been
`predictable to one of ordinary skill in the art; or
`Some teaching, suggestion, or motivation in the prior art that would
`have led one of ordinary skill to modify the prior art reference or to
`combine prior art reference teachings to arrive at the claimed
`invention.
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`i.
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`I have been informed that even if a prima facie case of
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`obviousness is established, the final determination of obviousness must also
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`consider "secondary considerations" if presented. In most instances, the patentee
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`raises these secondary considerations of non-obviousness. In that context, the
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`patentee argues an invention would not have been obvious in view of these
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`considerations, which include: (a) commercial success of a product due to the
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`merits of the claimed invention; (b) a long-felt, but unsatisfied need for the
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`PETITIONER APPLE INC. EX. 1005-12
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`invention; (c) failure of others to find the solution provided by the claimed
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`invention; (d) deliberate copying of the invention by others; (e) unexpected results
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`achieved by the invention; (f) praise of the invention by others skilled in the art; (g)
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`lack of independent simultaneous invention within a comparatively short space of
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`time; (h) teaching away from the invention in the prior art.
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`j.
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`I have been informed and further understand that secondary
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`considerations evidence is only relevant if the offering party establishes a
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`connection, or nexus, between the evidence and the claimed invention. The nexus
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`cannot be to prior art features. The establishment of a nexus is a question of fact.
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`21. Claim Construction
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`a.
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`I have been informed that the first step in an invalidity analysis
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`involves construing the claims, as necessary, to determine their scope. And,
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`second, the construed claim language is then compared to the disclosure of the
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`prior art. In proceedings before the USPTO, I have been informed that the claims
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`of an unexpired patent are to be given their broadest reasonable interpretation in
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`view of the specification from the perspective of one skilled in the art. I have been
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`informed that the ’815 Patent has not expired. In comparing the claims of the ’815
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`Patent to the known prior art, I have carefully considered the ’815 Patent and the
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`’815 Patent prosecution history based upon my experience and knowledge in the
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`relevant field. For purposes of this proceeding I have applied the broadest
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`PETITIONER APPLE INC. EX. 1005-13
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`reasonable interpretation of the claim terms of the ’815 Patent that is generally
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`consistent with the terms’ ordinary and customary meaning, as one skilled in the
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`relevant field would have understood them. Because I have been informed that the
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`claim construction standard in this proceeding differs from that used in U.S.
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`district court litigation, nothing herein should be taken as an indication that I
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`consider these constructions to control in a district court setting.
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`b.
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`I have been informed that a special claim construction analysis
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`is applied to claim limitations drafted in means-plus-function format pursuant to 35
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`U.S.C. § 112, ¶ 6. When construing a means-plus-function limitation, I understand
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`that the claimed function must first be identified and then the corresponding
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`structure that actually performs the claimed function must be identified from the
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`specification. A means-plus-function claim term is limited to the disclosed
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`structures and equivalents.
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`c.
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`I have been informed that where the disclosed structure for a
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`means-plus-function limitation is a computer, or microprocessor, programmed to
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`carry out an algorithm, the corresponding structure is not the general purpose
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`computer or processor, but rather is a special purpose computer or processor
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`programmed to perform the disclosed algorithm. In other words, I understand the
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`disclosed algorithm is part of the corresponding structure for computer-
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`implemented means-plus-function limitations.
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`d.
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`I have been informed that where a patent specification fails to
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`adequately disclose corresponding structure for a means-plus-function claim
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`limitation, that claim is invalid as indefinite pursuant to 35 U.S.C. § 112, ¶ 2. But I
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`also understand that indefiniteness may not be challenged in an Inter Partes
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`Review. Accordingly, though it is my opinion that certain means-plus-function
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`claim limitations in the ‘815 Patent Challenged Claims may not have sufficiently
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`described corresponding structure, I have assumed they are definite and have
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`assessed their validity based on the specific structure actually disclosed.
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`e.
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`I have reviewed the proposed claim constructions in Section
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`III.C.1 and III.C.2 of the Petition, agree with these proposed constructions, and
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`have applied these constructions in my analyses herein.
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`V. Overview of the ’815 Patent
`22.
`This overview is not meant to describe my full understanding of the
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`’815 Patent, but is only used to generally describe the relevant functionalities of
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`the ’815 Patent.
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`23.
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`The ’815 Patent generally describes a telephony system in which
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`calls are classified as either public network calls or private network calls and
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`routing messages are generated to route calls accordingly. See Ex. 1001 at
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`Abstract. A call routing controller receives a request to establish a call from a
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`calling party, which includes an identifier of the called party. Id. at 1:54-56. Call
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`routing controller then compares the called party identifier with attributes of the
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`calling party identifier, and may reformat the called party identifier depending on
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`the result of this comparison. Id. at 2:8-25. Based on the comparison of attributes
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`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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`2:45-47, 2:65-3:2. If so, a routing message is generated so that the call can be
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`directed to the private network node serving the called party. Id. at 1:59-62. If the
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`called party is not on the private network, the call is classified as a public network
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`call and a routing message is generated so that the call can be directed through a
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`gateway to a public network. Id. at 1:62-64.
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`24. More specifically, the ’815 Patent describes a calling party utilizing a
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`Voice over Internet Protocol (“VoIP”) telephone who is able to call (1) other VoIP
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`subscribers on a private packet-based network or (2) standard public switched
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`telephone network (“PSTN”) customers on the public telephone network. Id. at
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`1:15-64. To identify a single destination the calling party is attempting to reach, the
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`’815 Patent teaches that modifications to the dialed digits may be necessary. Fig.
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`8B illustrates a variety of modifications, which include, as an example, prepending
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`the calling party’s country code and area code to the dialed digits when the called
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`party dials a local number. Id. at Fig. 8B. With the formatted number, a direct-
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`inward-dial bank (“DID”) table is referenced to determine if the called party is a
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`PETITIONER APPLE INC. EX. 1005-16
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`subscriber to the private packet network. Id. If not, the call is directed to a PSTN
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`gateway and the formatted number is used to connect the call over the public
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`PSTN to the called party. Id.
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`25.
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`Put simply, the ’815 Patent describes a system in which a VoIP
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`subscriber may place calls to other VoIP subscribers or to phones on the PSTN.
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`The described system also enables the calling party to enter dialed digits in a
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`familiar manner as if the caller were placing a call on the PSTN, and the system
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`reformats the dialed digits using caller attributes (e.g., country code, area code,
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`etc.), determines whether the callee is on the private packet network or public
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`PSTN, and routes the call accordingly.
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`VI. State of the Relevant Art in 2006
`26.
`Circuit switched telecommunications networks, packet-switched
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`communications networks, the Internet and the carriage of voice via IP packets
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`over the Internet was well-known by 2006.
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`27.
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`Telephonic communications dates to the 1800’s, where in 1877,
`
`Alexander Graham Bell received U.S. Patent No. 186,787 titled “Improvement in
`
`Electric Telegraphy” which disclosed a device which transmits voice over a circuit,
`
`in which a bell rings when the main circuit is opened.
`
`28.
`
`Packet communications dates to the 1960’s, and was demonstrated
`
`with the creation of the ARPANET, which was funded by the Advanced Research
`
`
`
`
`PETITIONER APPLE INC. EX. 1005-17
`
`
`
`Projects Agency of the U.S. Department of Defense. By 1983, packetized speech
`
`was carried over the ARPANET and interfaced to the PSTN in a system
`
`demonstrated by Weinstein and Forgie.1 This system transported speech packets
`
`over the data network, and provided a packet/circuit interface between packet
`
`switches and the T1 digital carrier format of the telephone network. See Weinstein
`
`at p. 977. Around this time, Dialogic Inc. and Natural Microsystems Inc. were
`
`founded, and eventually these companies produced hardware and software for
`
`computer to telephone system integration. Computer telephony boards made by
`
`these vendors and others were used by the 1990’s to create Voice-over-IP systems.
`
`29.
`
`By the 1990’s the Internet Engineering Task Force, the body tasked
`
`with developing standards for the Internet, began to propose standards that focused
`
`on real-time applications such as VoIP. “RTP: A Transport Protocol for Real-
`
`Time Applications” was released as RFC 1889 in January 1996.2 In 1999, the
`
`IETF published “SIP: Session Initiation Protocol”3 which is used to establish
`
`sessions, or calls, and is used frequently by VoIP systems today. Both these
`
`protocols became widely used by the mid 2000’s.
`
`
`1 See Appendix B, Weinstein and Forgie, “Experience with Speech
`Communications,” IEEE Journal on Selected Areas in Communications, Vol.
`SAC-1, No. 6, December 1983.
`2 See Appendix C https://tools.ietf.org/html/rfc1889 (excerpt)
`3 See Appendix D https://tools.ietf.org/html/rfc2543 (excerpt)
`
`
`
`
`
`PETITIONER APPLE INC. EX. 1005-18
`
`
`
`30.
`
`In 1999, the global telecommunications manufacturer Siemens
`
`announced a VoIP gateway utilizing the Natural Microsystems Fusion platform4
`
`order to “enable[] voice and real-time fax calls over IP-based networks.”5
`
`31.
`
`In the late 1990’s, business telephone systems (also known as private
`
`branch exchanges) that ran over data networks became available. NBX
`
`Corporation and Selsius Systems were among the first to release a PBX for small
`
`and medium sized businesses. Selsius was acquired by Cisco in 19986 and NBX
`
`was acquired by 3Com in 19997. Both 3Com and Cisco were major manufacturers
`
`of packet communications equipment.
`
`32.
`
`By 2000, companies were releasing full VoIP solutions utilizing
`
`gateways and softswitches. A softswitch is a computer running software that is
`
`able to complete calls and handle call features in a packet network that can include
`
`gateways to the PSTN. These solutions were promoted as a lower cost way to
`
`offer telecommunications services as well as lower cost long distance by providing
`
`
`4 See Appendix E http://www.cnet.com/news/fusion-will-help-raise-net-voices/
`5 See Appendix F http://pressreleases.responsesource.com/news/3014/natural-
`microsystems-launches-new-ip-telephony-platform/
`6 See Appendix G
`http://www.cisco.com/chinese/warp/public/146/october98/9810p46-e.html
`7 See Appendix H http://www.nytimes.com/1999/02/23/business/company-news-
`3com-is-acquiring-nbx-for-100-million.html
`
`
`
`
`
`PETITIONER APPLE INC. EX. 1005-19
`
`
`
`long distance backhaul over the Internet or other data network.8 Carrier -class
`
`gateways were available from manufacturers by the late 1990’s9 and carrier-class
`
`softswitches were available from manufacturers by the early 2000’s.10
`
`33.
`
`In the early 2000’s, Voice-over-IP commercial phone service became
`
`available. Vonage, incorporated in 2001, was one of the early pioneers of
`
`consumer VoIP. Such a system is also known as an “over the top” system in that it
`
`is provides telephone service over a consumer’s Internet connection, and thus no
`
`phone lines are required into a subscriber’s residence. By 2005, Vonage
`
`announced that it had one million subscribers.11 Vonage provided features such as
`
`call forwarding, call waiting, area code selection (no matter the actual area code
`
`determined by one’s physical residence12), and voicemail, among others.13
`
`34.
`
`By November 2, 2006, the priority date of the ’815 patent,
`
`softswitches (also known as call controllers), gateways between an IP network and
`
`
`8 See Appendix I “nuVOICE – Next Generation VoIP Solutions,” August 16, 2000.
`9 See, e.g., Appendix J http://www.sonus.net/resources/press-releases/sonus-
`networks-gateway-switch-ip-telephony-suite-are-first-capacity
`10 See, e.g., Appendix K http://www.sonus.net/resources/press-releases/sonus-networks-psx6000-softswitch-sets-
`standard-scalability-reliability
`11 See Appendix L http://www.networkcomputing.com/networking/vonage-hits-
`one-million-subscribers/1486680870
`12 See Appendix M
`https://web.archive.org/web/20051210104545/http://vonage.com/avail.php
`13 See Appendix N
`https://web.archive.org/web/20051210104312/http://vonage.com/features.php?lid=
`nav_features
`
`
`
`
`
`PETITIONER APPLE INC. EX. 1005-20
`
`
`
`the PSTN, the use of the Internet or a data network for saving long distance toll
`
`charges, the ability to place calls within a private network as well as to the PSTN,
`
`and the ability for users to select profile-based features such as their area code,
`
`were well-known and widely used technologies.
`
`VII. Opinions Concerning Chu ’684 and Scott
`35.
`I have been asked to consider whether claims 1, 3-4, 7-9, 12, 14-16,
`
`28, 30-31, 34-36, 39, 41-43, 54, 61, 66, 74, 81, 86, 93, 100, and 105 are obvious
`
`over Chu ’684 in view of Scott. It is my opinion that they are indeed obvious and
`
`that the combination of Chu ’684 and Scott teaches all elements of such claims as
`
`set forth in the claims chart for this combination in the Petition.
`
`36.
`
`For a number of reasons, 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. First, the references are in the same technological
`
`field and substantially overlap in relevant subject matter. For example, both
`
`references teach telecommunications systems in which VoIP subscribers can place
`
`calls to a customer on the public PSTN. Compare Ex. 1003, 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. 1004, Scott at 5:58-61 (“The present
`
`invention provides a variety of PSTN and Packet Network connections including, but
`
`
`
`
`
`PETITIONER APPLE INC. EX. 1005-21
`
`
`
`not limited to, internet, analog PSTN lines, ….”); 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.”).
`
`Additionally, both references teach a process in which dialed digits and caller attributes
`
`are used to determine where the call should be routed. Compare Ex. 1003, 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. 1004, Scott at 67:1-53. Finally,
`
`both references expressly reference E.164 as an internat
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