UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`APPLE INC.
`Petitioner
`
`v.
`
`VOIP-PAL.COM, INC.
`Patent Owner
`____________
`
`
`
`Case No. TBD
`U.S. Patent No. 8,542,815
`____________
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,542,815
`
`
`
`
`
`
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,542,815
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`Table of Contents
`
`I.
`
`II.
`
`Introduction .................................................................................................................. 1
`
`Summary Of The ’815 Patent ................................................................................... 2
`
`Description of the Alleged Invention of the ’815 Patent ....................................... 2
`Summary of the Prosecution History of the ’815 Patent ....................................... 3
`The Earliest Possible Priority Date for the Challenged Claims ........................... 4
`Grounds for Standing Under 37 C.F.R. § 42.104(a) .................................................. 5
`Relief Requested ................................................................................................................. 5
`Claim Construction Under 37 C.F.R. § 42.104(b)(3) ................................................ 6
`Level of Skill of a Person Having Ordinary Skill in the Art ................................. 12
`
`Identification of Challenge Under 37 C.F.R. § 42.104(b) and
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`III. Requirements for Inter Partes Review under 37 C.F.R. § 42.104 ................ 5
`
`A.
`B.
`C.
`A.
`B.
`C.
`D.
`A.
`B.
`A.
`B.
`C.
`
`IV. There is A Reasonable Likelihood The Challenged Claims Of The ’815
`
`Patent Are Unpatentable ....................................................................................... 13
`
`Chu ’684 in view of Scott renders the Challenged Claims Obvious Under 35
`
`Chu ’684 in view of Scott and in further view of Hinchey renders Claims 11,
`
`U.S.C. § 103(a) .................................................................................................................... 13
`38, 65, 85, and 104 Obvious Under 35 U.S.C. § 103(a) ......................................... 48
`Real Party-In-Interest and Related Matters ............................................................ 56
`Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3-4) ................................ 57
`Payment of Fees Under 37 C.F.R. § 42.103 ............................................................... 57
`
`V. Mandatory Notices Under 37 C.F.R. § 42.8(a)(1) ........................................... 56
`
`VI.
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`Conclusion ................................................................................................................... 57
`
`
`
`i
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`

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`Petition for Inter Partes Review of U.S. Patent No. 8,542,815
`
`I.
`
`INTRODUCTION
`
`Petitioner Apple Inc. (“Petitioner”) requests an Inter Partes Review (“IPR”)
`
`of claims 3-4, 8-9, 11-12, 14-16, 30-31, 35-36, 38-39, 42-43, 61, 65-66, 81, 85-86,
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`100, and 104-105 (collectively, the “Challenged Claims”) of U.S. Patent No.
`
`8,542,815 (“the ’815 Patent”) issued on September 24, 2013 to Clay Perreault, et
`
`al. (“Applicants”). Exhibit 1001, ’815 Patent. As demonstrated by Petitioner
`
`below, the purportedly distinguishing feature of the ’815 Patent of using attributes
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`about a caller to determine whether a call is routed to a private or public network
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`was present in the prior art.
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`Petitioner notes that certain claims of the ’815 Patent not challenged in the
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`present Petition are the subject of IPR2016-01201. In particular, in IPR2016-01201
`
`Petitioner challenged claims 1, 7, 27, 28, 34, 54, 72-74, 92, 93, and 111 of the ’815
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`Patent, and the Board instituted the IPR on the challenged claims. IPR2016-01201,
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`Paper 6 at 32 (P.T.A.B. Nov. 21, 2016). The present Petition challenges a different
`
`set of claims of the ’815 Patent than challenged in IPR2016-01201. Petitioner notes
`
`that because the present Challenged Claims depend from independent or dependent
`
`claims otherwise challenged in IPR2016-01201 (e.g., claim 1 or claim 7),
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`Petitioner provides a mapping in Section IV for such independent or intervening
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`dependent claims but does not otherwise challenge such claims in the present
`
`Petition.
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`1
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`

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`Petition for Inter Partes Review of U.S. Patent No. 8,542,815
`
`II.
`
`SUMMARY OF THE ’815 PATENT
`
`A. Description of the Alleged Invention of the ’815 Patent
`
`The ’815 Patent generally describes a telephony system in which calls are
`
`classified as either public network calls or private network calls and routing
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`messages are generated to route calls accordingly. See Ex. 1001 at Abstract. A
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`call routing controller receives a request to establish a call from a calling party,
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`which includes an identifier of the called party. Id. at 1:54-56. Call routing
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`controller then compares the called party identifier with attributes of the calling
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`party identifier, and may reformat the called party identifier depending on the
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`result of this comparison. Id. at 2:8-25. Based on the comparison of attributes of
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`the calling party and the called party identifier, the call routing controller next
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`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
`
`call and a routing message is generated so that the call can be directed through a
`
`gateway to a public network. Id. at 1:62-64.
`
`More specifically, the ’815 Patent describes a calling party utilizing a 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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`2
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`Petition for Inter Partes Review of U.S. Patent No. 8,542,815
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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
`
`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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`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.
`
`B.
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`Summary of the Prosecution History of the ’815 Patent
`
`The ’815 Patent issued from U.S. Patent Application No. 12/513,147 (“the
`
`’147 Application”), which claims priority to International Application No.
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`PCT/CA2007/001956, which was filed on November 1, 2007 and claims priority to
`
`Provisional Application No. 60/856,212 (“the ’212 Provisional”), filed on
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`November 2, 2006. See Ex. 1001.
`
`All claims presented in the ’147 Application were subject to a single Office
`
`Action, rejecting them as unpatentable pursuant to 35 U.S.C. § 103(a) over U.S.
`
`Patent No. 6,798,767 to Alexander et al. (“Alexander”). Ex. 1002, Office Action
`
`dated March 1, 2013, at 156. Applicants significantly amended the rejected claims
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`3
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`Petition for Inter Partes Review of U.S. Patent No. 8,542,815
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`in an Office Action Response dated April 29, 2013. The result of these
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`amendments was that each claim in the ’147 Application newly required a
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`comparison of the called party identifier (e.g., the dialed digits) to at least one
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`attribute associated with the caller (e.g., the caller’s area code) prior to determining
`
`whether the call should be classified as a private network call or public network
`
`call. Id., Office Action Response dated April 29, 2013, at 96-125. Distinguishing
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`Alexander from the newly amended claims, the Applicants explained “that
`
`Alexander indicates no call classification per se, but simply looks up the callee
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`number [and] fails to disclose or suggest any criteria that are used in conjunction
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`with the comparison involving calling attributes of the caller recited in the clause
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`discussed above to classify a call.” Id. at 129 (emphasis in original). The Examiner
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`issued a Notice of Allowance on July 16, 2013 and the Applicants submitted
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`allegedly non-substantive amendments on August 9, 2013, which were initialed by
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`the Examiner on August 21, 2013.
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`The Earliest Possible Priority Date for the Challenged Claims
`
`C.
`The ’815 Patent claims priority to the ’212 Provisional, filed on November
`
`2, 2006. For the purposes of this IPR, it is assumed that all Challenged Claims are
`
`entitled to this earliest priority date without waiving future arguments that certain
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`claim elements are not supported by the disclosure in the ’212 Provisional.
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`4
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`Petition for Inter Partes Review of U.S. Patent No. 8,542,815
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`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§ 42.104
`
`Each requirement for IPR of the ’815 Patent is satisfied under § 42.104.
`
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`
`Petitioner certifies that the ’815 Patent is available for IPR and that the
`
`Petitioner is not barred or estopped from requesting IPR challenging the
`
`Challenged Claims of the ’815 Patent. Specifically, Petitioner states: (1) Petitioner
`
`is not the owner of the ’815 Patent; (2) Petitioner has not filed a civil action
`
`challenging the validity of any claim of the ’815 Patent; and (3) this Petition is not
`
`filed one year or more after Petitioner was served with a complaint alleging
`
`infringement of the ’815 Patent.
`
`B.
`
`Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested
`
`In view of the prior art, evidence, and claims charts, the Challenged Claims
`
`of the ’815 Patent are unpatentable and should be cancelled. 37 C.F.R.
`
`§ 42.104(b)(1).
`
`1.
`
`The Grounds For Challenge
`
`Based on the prior art references identified below, IPR of the Challenged
`
`Claims should be granted. 37 C.F.R. § 42.104(b)(2).
`
`5
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`Petition for Inter Partes Review of U.S. Patent No. 8,542,815
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`Proposed Statutory Rejections for the ’815 Patent
`
`Claims 3-4, 8-9, 12, 14-16, 30-31, 35-36, 39, 42-43, 61, 66, 81, 86,
`100, and 105 are obvious under § 103(a) over USPN 7,486,684 to
`Chu et al. (“Chu ’684”) in view of USPN 6,760,324 to Scott, et al.
`(“Scott”).
`Claims 11, 38, 65, 85, and 104 are obvious under § 103(a) over
`Chu ’684 in view of Scott and in further view of US PGPub
`2002/0122547 to Hinchey et al. (“Hinchey”).
`
`Reference
`Exhibit No.
`
`1003, 1004
`
`1003, 1004,
`1006
`
`
`
`Section IV identifies where each element of the Challenged Claims is found
`
`in the cited prior art. 37 C.F.R. § 42.104(b)(4). The exhibit numbers of the
`
`supporting evidence relied upon to support the challenges are provided above and
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`the relevance of the evidence to the challenges raised are provided in Section IV.
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`37 C.F.R. § 42.104(b)(5). Exhibits 1001–1006 are also attached.
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`C. Claim Construction Under 37 C.F.R. § 42.104(b)(3)
`
`A claim subject to IPR receives the “broadest reasonable construction in
`
`light of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b).
`
`With the below-noted exceptions, Petitioner proposes as the broadest reasonable
`
`construction, for purposes of IPR only, that the claim terms of the ’815 Patent be
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`given their ordinary and customary meaning that the term would have to one of
`
`ordinary skill in the art. The claim construction analysis is not, and should not be
`
`viewed as, a concession by Petitioner as to the proper scope of any claim term in
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`6
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`Petition for Inter Partes Review of U.S. Patent No. 8,542,815
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`any litigation. Moreover, these assumptions are not a waiver of any argument in
`
`any litigation that claim terms in the ’815 Patent are indefinite or otherwise invalid.
`
`1.
`
`“Username” is any unique identifier associated with a user
`
`Claims 1 and 28 recite a “username” associated with a caller that is part of
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`“a caller dialing profile.” Though the ’815 Patent provides little detail regarding its
`
`structure or purpose, the patent does describe an exemplary username that
`
`comprises a “twelve digit number” “assigned upon subscription or registration”
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`that “includes … a unique number code 74.” Ex. 1001, ’815 Patent at 15:9-12.
`
`Accordingly, at least under the broadest reasonable interpretation, “username” in
`
`the Challenged Claims should be interpreted to include any unique identifier
`
`associated with a user.
`
`2.
`
`Constructions pursuant to 35 U.S.C. § 112, ¶ 6
`
`Claims 28, 34, 41, 93, and 100 include limitations in means-plus function
`
`format, which creates a rebuttable presumption that the Patent Owner intended to
`
`invoke § 112, ¶ 6. Corresponding structure for each means-plus-function limitation
`
`is identified below, and Petitioner proposes that the claimed functions recited in
`
`each of these limitations be given its ordinary and customary meaning that the term
`
`would have to one of ordinary skill in the art under the broadest reasonable
`
`interpretation.
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`7
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`

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`Petition for Inter Partes Review of U.S. Patent No. 8,542,815
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`(a) Claim 28: “receiving means”
`
`Claim 28 recites a “receiving means for receiving a caller identifier and a
`
`callee identifier, in response to initiation of a call by a calling subscriber.” At least
`
`under the broadest reasonable interpretation, the corresponding structure that
`
`performs this recited function is I/O port 208. Ex. 1001, ’815 Patent at 17:26-37,
`
`FIG. 7.
`
`(b) Claims 28 and 93: “means for locating” and “means
`for accessing”
`
`
`Claim 28 recites a “means for locating a caller dialing profile comprising a
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`username associated with the caller and a plurality of calling attributes associated
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`with the caller.” Claim 93 recites a “means for accessing a database of caller
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`dialing profiles wherein each dialing profile associates a plurality of calling
`
`attributes with a respective subscriber, to locate a dialing profile associated with
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`the caller, in response to initiation of a call by a calling subscriber.” At least under
`
`the broadest reasonable interpretation, the corresponding structure that performs
`
`these recited functions is RC processor circuit 200 programmed to implement the
`
`algorithm illustrated in cell 254 of Fig. 8A. Id. at 19:30-37, FIGS. 7, 8A.
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`8
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`Petition for Inter Partes Review of U.S. Patent No. 8,542,815
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`(c) Claim 28: “means for determining” and “means for
`classifying”
`
`
`Claim 28 recites “means for determining a match when at least one of said
`
`calling attributes matches at least a portion of said callee identifier,” “means for
`
`classifying the call as a public network call when said match meets public network
`
`classification criteria,” and “means for classifying the call as a private network call
`
`when said match meets private network classification criteria.” At least under the
`
`broadest reasonable interpretation, the corresponding structure that performs these
`
`recited functions is processor 202 programmed to implement one or more branches
`
`of the algorithm illustrated in Fig. 8B. Id. at 19:50-20:25, FIGS. 7 and 8B.
`
`(d) Claims 28 and 93: “means for producing”
`
`Claims 28 and 93 recite “means for producing a private network routing
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`message for receipt by a call controller, when the call is classified as a private
`
`network call, said private network routing message identifying an address, on the
`
`private network, associated with the callee” and “means for producing a public
`
`network routing message for receipt by a call controller, when the call is classified
`
`as a public network call, said public network routing message identifying a
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`gateway to the public network.” Figs. 8A, 8C and 8D detail, among other
`
`functions, algorithms that produce network routing messages. However, because
`
`Fig. 8D and its corresponding description in the specification do not illustrate the
`
`basic process of generating a public network routing message identifying a
`9
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`Petition for Inter Partes Review of U.S. Patent No. 8,542,815
`
`gateway, Petitioner has identified the claimed function as the corresponding
`
`algorithm. At least under the broadest reasonable interpretation, the corresponding
`
`structure that generates routing messages as described in these recited functions is
`
`processor 202 of RC processor circuit 200, programmed to implement (1) the
`
`algorithm illustrated in cell 350 of Fig. 8A or cell 644 of Fig. 8C for private
`
`routing messages and (2) the claimed function of “producing a public network
`
`routing message” for public routing messages. Id. at 20:27-48, 24:43-67, 26:37-45,
`
`FIGS. 7, 8A, 8C, 8D, 16, 25, 32.
`
`(e) Claim 93: “means for producing”
`
`Claim 93 recites “means for producing a private network routing message
`
`for receipt by a call controller, said private network routing message identifying an
`
`address, on a private network, through which the call is to be routed, when at least
`
`one of said calling attributes and at least a portion of a callee identifier associated
`
`with the callee match and when the match meets a private network classification
`
`criterion, the address being associated with the callee” and “means for producing a
`
`public network routing message for receipt by a call controller, said public network
`
`routing message identifying a gateway to a public network when at least one of said
`
`calling attributes and said at least said portion of said callee identifier associated with
`
`the callee match and when the match meets a public network classification criterion.”
`
`These limitations merely combine the functions recited in the Claim 28 limitations
`
`10
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`Petition for Inter Partes Review of U.S. Patent No. 8,542,815
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`described above in Sections III.C.2(c-d). Accordingly, at least under the broadest
`
`reasonable interpretation, the corresponding structures for these Claim 93 limitations
`
`are the same as the structures identified for Claim 28.
`
`(f) Claim 34: “formatting means”
`
`Claim 34 recites a “formatting means for formatting said callee identifier
`
`into a pre-defined digit format to produce a re-formatted callee identifier.” At least
`
`under the broadest reasonable construction, the corresponding structure that
`
`performs these recited functions is processor 202 of RC processor circuit 200
`
`programmed to implement one or more branches of the algorithm illustrated in Fig.
`
`8B. Id. at 19:55-63, 21:33-43, 21:54-61, 22:4-13, FIGS. 7, 8B.
`
`(g) Claim 41: “searching means”
`
`Claim 41 recites “searching means for searching a database of records to
`
`locate a Direct-Inward-Dial (DID) bank table record associating a public telephone
`
`number with said reformatted callee identifier and wherein said means for
`
`classifying the call as a private network call is operably configured to classify the
`
`call as a private network call when said DID bank table record is found and said
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`means for classifying the call as a public network call is operably configured to
`
`classify the call as a public network call when a DID bank table record is not
`
`found.” At least under the broadest reasonable interpretation, the corresponding
`
`structure that performs these recited functions is processor 202 of RC processor
`
`11
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`Petition for Inter Partes Review of U.S. Patent No. 8,542,815
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`circuit 200, programmed to implement the algorithm illustrated in cells 269, 279,
`
`408, and 410 of Fig. 8B. Id. at 20:9-25, 22:44-60, 22:61–23:8, FIGS. 7 (see DB
`
`Request at 210) and 8B.
`
`(h) Claim 100: “means for accessing”
`
`Claim 100 recites “means for accessing a database of direct inward dial
`
`records each associating at least one direct inward dial number with at least one
`
`subscriber to said communication system.” At least under the broadest reasonable
`
`interpretation, the corresponding structure that performs this recited function is
`
`routing controller 16, including processor 202 of RC processor circuit 200, and
`
`database 18. Ex. 1001, ’815 Patent at 17:16-23 (detailing Routing Controller (RC)
`
`16, including RC processor circuit 200, which includes processor 202); 13:10-12
`
`(detailing a database 18); FIGs. 1 and 7 (see DB Request at 210). The processor is
`
`programmed to perform the database request at block 269 of FIG. 8B. Id. at 20:9-
`
`25 (detailing database request at block 269 of FIG. 8B to determine if a record is in
`
`the DID table); 19:4-10 (discussing a direct-in-dial (DID) record); 19:11-22
`
`(detailing the contents of a DID field 274, including an E.164 public telephone
`
`number); FIGs. 1 and 8B.
`
`D.
`
`Level of Skill of a Person Having Ordinary Skill in the Art
`
`A person of ordinary skill in the art at the time of the ’815 Patent would
`
`have been a person having at least a bachelor’s degree in electrical engineering, or
`
`12
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`Petition for Inter Partes Review of U.S. Patent No. 8,542,815
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`in a related field, with at least 2-4 years of industry experience in designing or
`
`developing packet-based and circuit-switched
`
`telecommunication systems.
`
`Additional industry experience or technical training may offset less formal
`
`education, while advanced degrees or additional formal education may offset lesser
`
`levels of industry experience. See Ex. 1005, Houh Decl. at ¶ 19.
`
`IV. THERE IS A REASONABLE LIKELIHOOD THE CHALLENGED
`CLAIMS OF THE ’815 PATENT ARE UNPATENTABLE
`
`Systems and methods for placing calls to either a private network or the
`
`public PSTN were prevalent well before November 2, 2006. The following prior
`
`art references disclose each limitation of the Challenged Claims either alone or in
`
`combination with another reference. As such, the Challenged Claims are
`
`unpatentable. Included in the claim charts below are exemplary citations to the
`
`prior art references.
`
`A.
`
`Chu ’684 in view of Scott renders the Challenged Claims Obvious
`Under 35 U.S.C. § 103(a)
`
`USPN 7,486,684 to Chu, et al. (“Chu ’684”) was filed on Sept. 30, 2003 and
`
`therefore qualifies as prior art with regard to the ’815 Patent at least under 35 U.S.C. §
`
`102(e). USPN 6,760,324 to Scott (“Scott”) issued on Jul. 6, 2004 and therefore
`
`qualifies as prior art with regard to the ’815 Patent under 35 U.S.C. § 102(b). Neither
`
`reference was cited during prosecution. See Ex. 1002.
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`13
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`Petition for Inter Partes Review of U.S. Patent No. 8,542,815
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`The system disclosed in the specification of Chu ’684 is nearly identical in form
`
`and function to that described by the ’815 Patent. Both Chu ’684 and the ’815 Patent
`
`describe telecommunications systems in which a VoIP subscriber can place a call to
`
`either another VoIP subscriber on a private packet-based network or to a customer on
`
`the public PSTN. Compare Ex. 1003, Chu ’684 at 2:33-64 with Ex. 1001, ’815 Patent
`
`at 1:12-64. Additionally, both Chu ’684 and the ’815 Patent describe call setup
`
`procedures in which a call processor analyzes attributes of the caller and information
`
`identifying the callee (e.g., dialed digits) to determine whether the call should be routed
`
`to a destination on the private packet network or the public PSTN. Compare Ex. 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. 1001, ’815 Patent at Fig.
`
`8B and 1:54-59 (“The process involves, in response to initiation of a call by a calling
`
`subscriber, receiving a caller identifier and a callee identifier. The process also involves
`
`using call classification criteria associated with the caller identifier to classify the call
`
`as a public network call or a private network call.”). Finally, both Chu ’684 and the
`
`’815 Patent describe routing a call directly to a callee on a private packet network or
`
`through a gateway when the callee is on the public PSTN. Compare Ex. 1003, Chu
`
`’684 at 9:1-38 (Where “the call is to another on-net phone in another location. . . [the]
`
`soft-switch 220 determines the . . . IP address of the egress packet switch.”) and 13:15-
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`14
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`Petition for Inter Partes Review of U.S. Patent No. 8,542,815
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`23 (“From the dialed digits [ ], ingress soft-switch 220, determines that this call is for
`
`the PSTN. From the same dialed digits, the soft-switch also determines the egress
`
`PSTN gateway 1302 and its controlling soft-switch 1304. The ingress soft-switch 220
`
`will proceed the call signaling and control as described previously. The gateway 1302
`
`acts as an ‘egress packet switch’”) with Ex. 1001, ’815 Patent at 1:59-64 (“The process
`
`further involves producing a routing message identifying an address, on the private
`
`network, associated with the callee when the call is classified as a private network call.
`
`The process also involves producing a routing message identifying a gateway to the
`
`public network when the call is classified as a public network call.”).
`
`While Chu ’684 discloses using attributes of the caller (e.g., the caller’s dial
`
`plan) and information identifying the callee (e.g., dialed digits) to determine whether a
`
`call should be terminated to a callee on the private packet network or on the public
`
`PSTN, some of the Challenged Claims also describe specific scenarios in which the
`
`callee identifier (e.g., dialed digits) is modified based on certain attributes of the called
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`party before determining whether the call is public or private. Fig. 8B from the ’815
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`Patent illustrates these scenarios:
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`Modifying a callee identifier (e.g., dialed digits) using attributes of the caller,
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`however, was also well known in the prior art. As an example, Scott teaches precisely
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`the same dialed digit comparison and modification as the ’815 Patent. In particular,
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`Scott teaches that a user can configure caller parameters in a “country/area code
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`settings panel,” which “allows one to provide information about your local calling area
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`….” Ex. 1004, Scott at 67:1-7. Exemplary parameters are the caller’s international
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`prefix, national prefix, country code, and area code. Id. at 67:7-9. Scott describes
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`reformatting a dialed number and provides an example with certain identified
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`parameters, e.g., an international prefix of 011. Id. at 67:26-35. If a dialed number
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`matches the configured parameter of an international prefix, for example, the number is
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`processed by “stripping off” the international prefix. Id. at 67:13-16, 29-30 (describing
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`the configured international prefix for the caller as 011 and the dialed number as
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`01117035551234, determining that the dialed number “matches the international
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`prefix” of 011, and processing the number without the international prefix).
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`Thus, both the ’815 Patent and Scott check dialed digits for International Dialing
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`Digits (IDD) and National Dialing Digits (NDD), for example. Additionally, both
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`illustrate using caller attributes such as country code and area code to reformat the
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`dialed digits into a standard format. Scott even teaches that reformatting the dialed
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`number is desirable to assist in processing and route resolution:
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`When the dialed number is sent for processing and route resolution, it is
`always required to be in a fully resolved format that contains the country
`code, area code, and local number. This way, routing information can be
`shared between Gateway Servers in different areas without modification.
`If routes were simply based on digits dialed by users, locale differences
`would prevent this from being possible.
` Id. at 67:46-53; see also id. at 69:60-66 (describing that the Scott “routing system is
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`based on routing numbers in a specific format. Specifically, the routing system in the
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`present invention is based on routing E.164 numbers, comprised of a country code, an
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`area code, a local number, and an optional extension.”); id. at 65:41-43 (“The number
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`dialed by the user is translated using the E.164 translator (described in the section on
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`routing and number translation) into a standardized format.”); id. at 74:52 (“Remember
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`that E.164 translation happens prior to routing.”); id. at 16:64-67 (“Distribute E.164
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`translation data. An important process is how a string of digits entered by the user is
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`translated into a standard, E.164-style address (e.g. 00117035551234 (+1(703)555-
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`1234).”). Scott thus recognizes the need for a dialed number to be reformatted into a
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`standardized E.164 format for ease of routing and processing in a VoIP system.
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`Both Chu ’684 and Scott teach telecommunications systems in which VoIP
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`subscribers can place calls to a customer on the public PSTN. Compare Ex. 1003,
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`Chu ’684 at 8:65-9:1 (“At step 608, after receiving all the dialed digits from the phone
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`101, server 110 consults its dial plan to determine whether the call is local, to another
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`on-net phone, or to a phone that is on the PSTN.”) with Ex. 1004, Scott at 5:58-61
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`(“The present invention provides a variety of PSTN and Packet Network connections
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`including, but not limited to, internet, analog PSTN lines, ….”); id. at 8:37-45
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`(discussing that gateway server “performs bridging of calls between the traditional
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`telecommunications network and an IP network” and “handl[es] calls received on either
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`IP network 215 or PSTN 205, bridging calls between the two different kinds of
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`networks (circuit switched and packet switched)”); id. at 6:30-32 (in describing the
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`VoIP system, “[s]uch voice and data traffic can originate at any type of terminal
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`equipment at PSTN 205. For example, a call can be placed on an ordinary
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`telephone 201 or 202.”). Both references also teach a process in which dialed digits and
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`caller attributes are used to determine where the call should be routed. Compare Ex.
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`1003, Chu ’684 at 8:65-9:1 (“At step 608, after receiving all the dialed digits from the
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`phone 101, server 110 consults its dial plan to determine whether the call is local, to
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`another on-net phone, or to a phone that is on the PSTN.”) with Ex. 1004, Scott at 67:1-
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`53. Finally, both references expressly reference E.164 as an international standard dial
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`plan. Compare Ex. 1003, Chu ’684 at 3:59-61 (“[E]ach IP phone [may be] assigned its
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`own E.164 number (the international standard dial plan) and receiving calls from the
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`PSTN directly.”) with Ex. 1004, Scott at 16:64-67 (cited above and noting that
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`translating dialed digits into “a standard, E.164-style address” is an “important
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`process”).
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`It would have been obvious to a POSITA to modify the system described by
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`Chu ’684 with the specific dialed digit reformatting teachings of Scott. Given that the
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`system of Chu ’684 already contains all the infrastructure needed to support such
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`reformatting, the modification to Chu ’684 would be straightforward, not requiring
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`undue experimentation, and would produce predictable results. Upon reading the
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`disclosure of Chu ’684, a POSITA would have recognized that allowing users to
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`place calls as if they were dialing from a standard PSTN phone would be desirable,
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`creating a system capable of supporting a more intuitive and user-friendly
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`interface. See Ex. 1005, Houh Decl. at ¶¶ 35-39. Further, Scott provides express
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`motivation to make such a modification to systems such as Chu ’684. Namely,
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`Scott teaches that reformatting the dialed number allows users to enter dialed digits in a
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`normal manner while still providing consistency in call processing and route
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`resolution—features that would significantly benefit the Chu ’684 system. Ex. 1004,
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`Scott at 67:46-53; see also Ex. 1005, Houh Decl. at ¶ 37.
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`Thus, a POSITA would have appreciated that these improvements to Chu
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`’684 could be achieved by merely programming the system of Chu ’684 to analyze
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`the dialed digits and reformat as necessary using caller attributes such as
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`international and national prefixes. Such modifications are simply a combination of
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`the system of Chu ’684 with elements of Scott that would have yielded pre