`
`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
`
`
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`
`
`Voip-Pal Ex. 2001
`IPR2017-01399
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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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`
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`TABLE OF CONTENTS
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`I. INTRODUCTION ........................................................................................... 1
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`II. SUMMARY OF THE ’815 PATENT ............................................................. 1
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`A. Description of the Alleged Invention of the ’815 Patent ............................... 1
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`B. Summary of the Prosecution History of the ’815 Patent ................................ 3
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`C. The Earliest Possible Priority Date for the Challenged Claims ..................... 4
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`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§ 42.104 .......................................................................................................... 4
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`A. Grounds for Standing Under 37 C.F.R. § 42.104(a) ...................................... 4
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`B. Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested ....................................................................................................... 5
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`C. Claim Construction Under 37 C.F.R. § 42.104(b)(3) ..................................... 6
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`1. “Username” is any unique identifier associated with a user ..................... 6
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`2. Constructions pursuant to 35 U.S.C. § 112, ¶ 6 ........................................ 7
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`(a)
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`“receiving means” ............................................................................ 7
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`(b) “means for locating” and “means for accessing” ............................. 7
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`(c)
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`“means for determining” and “means for classifying” .................... 8
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`(d) Claim 28 “means for producing” ..................................................... 8
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`(e) Claim 93 “means for producing” ..................................................... 9
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`(f)
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`“formatting means” ........................................................................ 10
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`(g) “means for causing” ....................................................................... 11
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`D. Level of Skill of a Person Having Ordinary Skill in the Art ........................ 11
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`Petition for Inter Partes Review of U.S. Patent No. 8,542,815
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`IV. THERE IS A REASONABLE LIKELIHOOD THE CHALLENGED
`CLAIMS OF THE ’815 PATENT ARE UNPATENTABLE ...................... 12
`
`A. Chu ’684 in view of Chu ’366 renders the Challenged Claims Obvious
`Under 35 U.S.C. § 103(a) ............................................................................. 12
`
`B. Chu ’684 in view of Chen renders the Challenged Claims Obvious Under 35
`U.S.C. § 103(a) ............................................................................................. 37
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`V. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) ....................... 58
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`A. Real Party-In-Interest and Related Matters .................................................. 58
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`B. Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3-4) ...................... 58
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`C. Payment of Fees Under 37 C.F.R. § 42.103 ................................................. 59
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`VI. CONCLUSION ............................................................................................. 59
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`Petition for Inter Partes Review of U.S. Patent No. 8,542,815
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`I.
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`INTRODUCTION
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`Petitioner Apple Inc. (“Petitioner”) requests an Inter Partes Review (“IPR”)
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`of claims 1, 7, 27-28, 34, 54, 72-74, 92-93, and 111 (collectively, the “Challenged
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`Claims”) of U.S. Patent No. 8,542,815 (“the ’815 Patent”) issued on September 24,
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`2013 to Clay Perreault, et al. (“Applicants”). Exhibit 1001, ’815 Patent. As
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`demonstrated by Petitioner below, the purportedly distinguishing feature of the
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`’815 Patent of using attributes about a caller to determine whether a call is routed
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`to a private or public network was present in the prior art.
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`II.
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`SUMMARY OF THE ’815 PATENT
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`A. Description of the Alleged Invention of the ’815 Patent
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`The ’815 Patent generally describes a telephony system in which calls are
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`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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`Petition for Inter Partes Review of U.S. Patent No. 8,542,815
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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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`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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`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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`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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`Petition for Inter Partes Review of U.S. Patent No. 8,542,815
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`B.
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`Summary of the Prosecution History of the ’815 Patent
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`The ’815 Patent issued from U.S. Patent Application No. 12/513,147 (“the
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`’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
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`Provisional Application No. 60/856,212 (“the ’212 Provisional”), filed on
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`November 2, 2006. See Ex. 1001.
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`All claims presented in the ’147 Application were subject to a single Office
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`Action, rejecting them as unpatentable pursuant to 35 U.S.C. § 103(a) over U.S.
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`Patent No. 6,798,767 to Alexander et al. (“Alexander”). Ex. 1002, Office Action
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`dated March 1, 2013, at 156. Applicants significantly amended the rejected claims
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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
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`whether the call should be classified as a private network call or public network
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`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
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`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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`Petition for Inter Partes Review of U.S. Patent No. 8,542,815
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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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`C.
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`The Earliest Possible Priority Date for the Challenged Claims
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`The ’815 Patent claims priority to the ’212 Provisional, filed on November
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`2, 2006. For the purposes of this IPR, it is assumed that all Challenged Claims are
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`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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`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
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`Petitioner is not barred or estopped from requesting IPR challenging the claims of
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`the ’815 Patent. Specifically, Petitioner states: (1) Petitioner is not the owner of the
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`’815 Patent; (2) Petitioner has not filed a civil action challenging the validity of
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`Petition for Inter Partes Review of U.S. Patent No. 8,542,815
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`any claim of the ’815 Patent; and (3) this Petition is not filed one year or more after
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`Petitioner was served with a complaint alleging infringement of the ’815 Patent.
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`B.
`
`Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested
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`In view of the prior art, evidence, and claims charts, claims 1, 7, 27-28, 34,
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`54, 72-74, 92-93, and 111 of the ’815 Patent are unpatentable and should be
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`cancelled. 37 C.F.R. § 42.104(b)(1).
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`1.
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`The Grounds For Challenge
`
`Based on the prior art references identified below, IPR of the Challenged
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`Claims should be granted. 37 C.F.R. § 42.104(b)(2).
`
`Proposed Statutory Rejections for the ’815 Patent
`
`Claims 1, 7, 27-28, 34, 54, 72-74, 92-93, and 111 are obvious
`under § 103(a) over U.S. Patent No. 7,486,684 to Chu et al. (“Chu
`’684”) in view of U.S. Patent No. 8,036,366 to Chu (“Chu ’366”).
`Claims 1, 7, 27-28, 34, 54, 72-74, 92-93, and 111 are obvious
`under § 103(a) over U.S. Patent No. 7,486,684 to Chu et al. (“Chu
`’684”) in view of U.S. Patent Publication No. 2007/0064919 to
`Chen et al. (“Chen”).
`
`Reference
`Exhibit No.
`1003, 1004
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`1003, 1005
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`Section IV identifies where each element of the Challenged Claims is found in the
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`prior art patents. 37 C.F.R. § 42.104(b)(4). The exhibit numbers of the supporting
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`evidence relied upon to support the challenges are provided above and the
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`relevance of the evidence to the challenges raised are provided in Section IV. 37
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`Petition for Inter Partes Review of U.S. Patent No. 8,542,815
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`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)
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`A claim subject to IPR receives the “broadest reasonable construction in
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`light of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b).
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`With the below-noted exceptions, Petitioner proposes as the broadest reasonable
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`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
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`ordinary skill in the art. The claim construction analysis is not, and should not be
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`viewed as, a concession by Petitioner as to the proper scope of any claim term in
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`any litigation. Moreover, these assumptions are not a waiver of any argument in
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`any litigation that claim terms in the ’815 Patent are indefinite or otherwise invalid.
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`1.
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`“Username” is any unique identifier associated with a user
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`Claims 1, 27, and 28 recite a “username” associated with a caller that is part
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`of “a caller dialing profile.” Though the ’815 Patent provides little detail regarding
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`its structure or purpose, the patent does describe an exemplary username that
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`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.
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`Accordingly, at least under the broadest reasonable interpretation, “username” in
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`Petition for Inter Partes Review of U.S. Patent No. 8,542,815
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`the Challenged Claims should be interpreted to include any unique identifier
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`associated with a user.
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`2.
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`Constructions pursuant to 35 U.S.C. § 112, ¶ 6
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`Claims 28, 34, 93, and 111 include limitations in means-plus function
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`format, which creates a rebuttable presumption that the Patent Owner intended to
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`invoke § 112, ¶ 6. Corresponding structure for each means-plus-function limitation
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`is identified below, and Petitioner proposes that the claimed functions recited in
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`each of these limitations be given its ordinary and customary meaning that the term
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`would have to one of ordinary skill in the art under the broadest reasonable
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`interpretation.
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`(a)
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`“receiving means”
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` Claim 28 recites a “receiving means for receiving a caller identifier and a
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`callee identifier, in response to initiation of a call by a calling subscriber.” At least
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`under the broadest reasonable interpretation, the corresponding structure that
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`performs this recited function is I/O port 208. Ex. 1001, ’815 Patent at 17:26-37,
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`FIG. 7.
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`(b)
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`“means for locating” and “means for accessing”
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` 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
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`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
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`the broadest reasonable interpretation, the corresponding structure that performs
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`these recited functions is RC processor circuit 200 programmed to implement the
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`algorithm illustrated in cell 254 of Fig. 8A. Id. at 19:30-37, FIGS. 7, 8A.
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`(c)
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`“means for determining” and “means for classifying”
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`Claim 28 recites “means for determining a match when at least one of said
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`calling attributes matches at least a portion of said callee identifier,” “means for
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`classifying the call as a public network call when said match meets public network
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`classification criteria,” and “means for classifying the call as a private network call
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`when said match meets private network classification criteria.” At least under the
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`broadest reasonable interpretation, the corresponding structure that performs these
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`recited functions is processor 202 programmed to implement one or more branches
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`of the algorithm illustrated in Fig. 8B. Id. at 19:50-20:25, FIGS. 7 and 8B.
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`(d) Claim 28 “means for producing”
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`Claim 28 recites “means for producing a private network routing message
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`for receipt by a call controller, when the call is classified as a private network call,
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`Petition for Inter Partes Review of U.S. Patent No. 8,542,815
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`said private network routing message identifying an address, on the private
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`network, associated with the callee” and “means for producing a public network
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`routing message for receipt by a call controller, when the call is classified as a
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`public network call, said public network routing message identifying a gateway to
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`the public network.” Figs. 8A, 8C and 8D detail, among other functions,
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`algorithms which produce network routing messages. However, because Fig. 8D
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`and its corresponding description in the specification do not illustrate the basic
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`process of generating a public network routing message identifying a gateway,
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`Petitioner has identified the claimed function as the corresponding algorithm. At
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`least under the broadest reasonable interpretation, the corresponding structure that
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`generates routing messages as described in these recited functions is processor 202
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`of RC processor circuit 200, programmed to implement (1) the algorithm
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`illustrated in cell 350 of Fig. 8A or cell 644 of Fig. 8C for private routing messages
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`and (2) the claimed function of “producing a public network routing message” for
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`public routing messages. Id. at 20:27-48, 24:43-67, 26:37-45, FIGS. 7, 8A, 8C, 8D,
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`16, 25, 32.
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`(e) Claim 93 “means for producing”
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`Claim 93 recites “means for producing a private network routing message
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`for receipt by a call controller, said private network routing message identifying an
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`Petition for Inter Partes Review of U.S. Patent No. 8,542,815
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`address, on a private network, through which the call is to be routed, when at least
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`one of said calling attributes and at least a portion of a callee identifier associated
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`with the callee match and when the match meets a private network classification
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`criterion, the address being associated with the callee” and “means for producing a
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`public network routing message for receipt by a call controller, said public network
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`routing message identifying a gateway to a public network when at least one of said
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`calling attributes and said at least said portion of said callee identifier associated with
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`the callee match and when the match meets a public network classification criterion.”
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`These limitations merely combine the functions recited in the Claim 28 limitations
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`described above in Sections III.C.2(c-d). Accordingly, at least under the broadest
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`reasonable interpretation, the corresponding structures for these Claim 93 limitations
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`are the same as the structures identified for Claim 28.
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`(f)
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`“formatting means”
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`Claim 34 recites a “formatting means for formatting said callee identifier
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`into a pre-defined digit format to produce a re-formatted callee identifier.” At least
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`under the broadest reasonable construction, the corresponding structure that
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`performs these recited functions is processor 202 of RC processor circuit 200
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`programmed to implement one or more branches of the algorithm illustrated in Fig.
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`8B. Id. at 19:55-63, 21:33-43, 21:54-61, 22:4-13, FIGS. 7, 8B.
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`Petition for Inter Partes Review of U.S. Patent No. 8,542,815
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`(g)
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`“means for causing”
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`Claim 111 recites a “means for causing the private network routing message or
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`the public network routing message to be communicated to a call controller to effect
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`routing of the call.” At least under the broadest reasonable interpretation, the
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`corresponding structure that performs this recited function is processor 202 of RC
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`processor circuit 200, programmed to perform the algorithms illustrated in cell 381
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`of FIG. 8A, cell 646 of FIG. 8C, and cell 568 of FIG. 8D. Id. at 20:27-48, 24:43-
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`67, 26:40-41, FIGS. 7, 8A, 8C, 8D.
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`D.
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`Level of Skill of a Person Having Ordinary Skill in the Art
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`A person of ordinary skill in the art at the time of the ’815 Patent would
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`have been a person having at least a bachelor’s degree in electrical engineering, or
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`in a related field, with at least 2-4 years of industry experience in designing or
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`developing packet-based and circuit-switched
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`telecommunication systems.
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`Additional industry experience or technical training may offset less formal
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`education, while advanced degrees or additional formal education may offset lesser
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`levels of industry experience. See Ex. 1006, Houh Declaration, at ¶ 18.
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`Petition for Inter Partes Review of U.S. Patent No. 8,542,815
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`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
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`public PSTN were prevalent well before November 2, 2006. The following prior
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`art references disclose each limitation of the Challenged Claims either alone or in
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`combination with another reference. As such, the Challenged Claims are
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`unpatentable. Included in the claim charts below are exemplary citations to the
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`prior art references.
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`A.
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`Chu ’684 in view of Chu ’366 renders the Challenged Claims
`Obvious Under 35 U.S.C. § 103(a)
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`U.S. Patent No. 7,486,684 to Chu, et al. (“Chu ’684”) was filed on Sept. 30,
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`2003 and therefore qualifies as prior art with regard to the ’815 Patent at least under 35
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`U.S.C. § 102(e). U.S. Patent No. 8,036,366 to Chu (“Chu ’366”) was filed on Aug. 4,
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`2006 and therefore qualifies as prior art with regard to the ’815 Patent under 35 U.S.C.
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`§ 102(e). Neither reference was cited during prosecution. See Ex. 1002.
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`The system disclosed in the specification of Chu ’684 is nearly identical in form
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`and function to that described by the ’815 Patent. Both Chu ’684 and the ’815 Patent
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`describe telecommunications systems in which a VoIP subscriber can place a call to
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`either another VoIP subscriber on a private packet-based network or to a customer on
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`the public PSTN. Compare Ex. 1003, Chu ’684 at 2:33-64 with Ex. 1001, ’815 Patent
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`Petition for Inter Partes Review of U.S. Patent No. 8,542,815
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`at 1:12-64. Additionally, both Chu ’684 and the ’815 Patent describe call setup
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`procedures in which a call processor analyzes attributes of the caller and information
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`identifying the callee (e.g., dialed digits) to determine whether the call should be routed
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`to a destination on the private packet network or 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. 1001, ’815 Patent at Fig.
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`8B and 1:54-59 (“The process involves, in response to initiation of a call by a calling
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`subscriber, receiving a caller identifier and a callee identifier. The process also involves
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`using call classification criteria associated with the caller identifier to classify the call
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`as a public network call or a private network call.”). Finally, both Chu ’684 and the
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`’815 Patent describe routing a call directly to a callee on a private packet network or
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`through a gateway when the callee is on the public PSTN. Compare Ex. 1003, Chu
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`’684 at 9:1-38 (Where “the call is to another on-net phone in another location. . . [the]
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`soft-switch 220 determines the . . . IP address of the egress packet switch.”) and 13:15-
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`23 (“From the dialed digits [ ], ingress soft-switch 220, determines that this call is for
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`the PSTN. From the same dialed digits, the soft-switch also determines the egress
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`PSTN gateway 1302 and its controlling soft-switch 1304. The ingress soft-switch 220
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`will proceed the call signaling and control as described previously. The gateway 1302
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`Petition for Inter Partes Review of U.S. Patent No. 8,542,815
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`acts as an ‘egress packet switch’”) with Ex. 1001, ’815 Patent at 1:59-64 (“The process
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`further involves producing a routing message identifying an address, on the private
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`network, associated with the callee when the call is classified as a private network call.
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`The process also involves producing a routing message identifying a gateway to the
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`public network when the call is classified as a public network call.”).
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`While Chu ’684 discloses using attributes of the caller (e.g., the caller’s dial
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`plan) and information identifying the callee (e.g., dialed digits) to determine whether a
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`call should be terminated to a callee on the private packet network or on the public
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`PSTN, some of the Challenged Claims also describe specific scenarios in which the
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`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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`Petition for Inter Partes Review of U.S. Patent No. 8,542,815
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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, Chu ’366 taught
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`precisely the same dialed digit comparison and modification as the ’815 Patent. Fig.
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`6 from Chu ’366 illustrates the striking similarity between the prior art and Fig. 8B
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`from the ’815 Patent:
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`Petition for Inter Partes Review of U.S. Patent No. 8,542,815
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`As these figures illustrate, both Chu ’366 and the ’815 Patent check dialed digits for
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`International Dialing Digits (IDD), National Dialing Digits (NDD), and a number of
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`formatting rules. Additionally, both illustrate using caller attributes such as country
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`code and area code to reformat the dialed digits into a standard format such as E.164.
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`Chu ’366 explains why such comparison and reformatting is necessary in a
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`VoIP system. Namely, “E.164 [ ] provides a uniform means for identifying any
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`telephone number in the world to any telephony user in the world. . . . When making
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`telephone calls via a traditional PSTN, a subscriber is able to enter abbreviated numbers
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`for local and national telephone calls. For example, for a local call in the United States,
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`a user may simply enter the seven digit telephone number without an E.164 prefix, the
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`country code or the area code. Local and national calls are possible with PSTN systems
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`because the fixed-line phones from which such calls are made are hardwired directly to
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`the local PSTN center. By contrast, there is no such concept of local, long distance or
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`national calls when making a call via Internet telephony. VoIP calls use the Internet,
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`which is world-wide and not tied to any single location.” Ex. 1003, Chu ’366 at 1:18-
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`47. By using caller attributes to reformat dialed digits into an E.164 compatible
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`number, “a user is able to enter telephone numbers for VoIP telephone calls as they
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`would according to a traditional telephone numbering plan for land-line telephone
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`calls.” Id. at 2:1-4. In other words, both Chu ’366 and the ’815 Patent allow VoIP
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`customers to enter dialed digits as if they were calling from a standard PSTN telephone,
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`and the system then reformats the number using attributes of the caller (e.g., national
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`and area codes).
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`There is significant overlap between Chu ’684 and Chu ’366. Both
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`references teach telecommunications systems in which VoIP subscribers can place
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`calls to a customer on the public PSTN. Compare Ex. 1003, Chu ’684 at 8:65-9:1
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`(“At step 608, after receiving all the dialed digits from the phone 101, server 110
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`consults its dial plan to determine whether the call is local, to another on-net phone, or
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`to a phone that is on the PSTN.”) with Ex. 1004, Chu ’366 at 14:30-33 (“[T]here is
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`shown a system for communications between a computing environment 202 including
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`the application program according to the present system and a PSTN telephone 216.”).
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`Both references also teach a process in which dialed digits and caller attributes are used
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`to determine where the call should be routed. Compare Ex. 1003, Chu ’684 at 8:65-9:1
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`(“At step 608, after receiving all the dialed digits from the phone 101, server 110
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`consults its dial plan to determine whether the call is local, to another on-net phone, or
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`to a phone that is on the PSTN.”) with Ex. 1004, Chu ’366 at Fig. 6. Finally, both
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`references expressly reference E.164 as an international standard dial plan. Compare
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`Ex. 1003, Chu ’684 at 3:59-61 (“[E]ach IP phone [may be] assigned its own E.164
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`number (the international standard dial plan) and receiving calls from the PSTN
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`directly.”) with Ex. 1004, Chu ’366 at 1:18-20 (“E.164 [ ] provides a uniform means for
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`identifying any telephone number in the world to any telephony user in the world.”).
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`It would have been obvious to one of skill in the art to modify the system
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`described by Chu ’684 with the specific dialed digit reformatting teachings of Chu
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`’366. Given that the system of Chu ’684 already contains all the infrastructure
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`needed to support such reformatting, the modification to Chu ’684 would be
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`straightforward, not requiring undue experimentation, and would produce
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`predictable results. Upon reading the disclosure of Chu ’684, a person of ordinary
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`skill in the art would have recognized that allowing users to place calls as if they
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`were dialing from a standard PSTN phone would be desirable, creating a system
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`capable of supporting a more intuitive and user-friendly interface. See Ex. 1006,
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`Houh Decl. at ¶¶ 35-39.
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`One of ordinary skill would thus have appreciated that these improvements
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`to Chu ’684 could be achieved by merely programming the system of Chu ’684 to
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`analyze the dialed digits and reformat as necessary using caller attributes such as
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`national and area code. Such modifications are simply a combination of the system
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`of Chu ’684 with elements of Chu ’366 that would have yielded predictable results
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`without requiring undue experimentation. See Ex. 1006, Houh Decl. at ¶ 38. Thus,
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`it would have been natural and an application of nothing more than ordinary skill
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`and common sense to combine Chu ’684 with the number reformatting of Chu ’366.
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`Id.. Therefore, claims 1, 7, 27-28, 34, 54, 72-74, 92-93, and 111 of the ’815 Patent
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`are unpatentable under §103(a) as obvious over Chu ’684 in view of Chu ’366, as
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`shown in the charts below.
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`
`
`US Patent
`8,542,815
`1. A process for
`operating a call
`routing controller to
`facilitate
`communication
`between callers and
`callees in a system
`comprising a
`plurality of nodes
`with which callers
`and callees are
`associated, the
`process comprising:
`
`
`(a) in response to
`initiation of a call by
`a calling subscriber,
`receiving a caller
`identifier and a
`callee identifier;
`
`Obvious over Chu ’684 (Ex. 1003)
`in view of Chu ’366 (Ex. 1004)
`Chu ’684 teaches a process for operating a soft-switch (“call
`routing
`controller”)
`to
`facilitate
`telephone
`calls
`(“communication”) between callers and callees, each of which
`is associated with one of a plurality of network nodes.
`
`Chu ’684 describes “a novel method for establishing and
`managing voice call traffic in an VoIP IP virtual private
`network. The method comprises,
`in one embodiment,
`determining the relative location of a terminating point with
`respect to an originating point of a new communication
`containing the voice data, determining one or more IP addresses
`to egress the communication from the originating point to the
`terminating point.” Ex. 1003, Chu ’684 at 2:34-44.
`
`“An apparatus for IP-based VPN communications includes at
`least one soft-switch and at least one packet switch having an
`interface to said at least one soft-switch. The packet switch has a
`VPN processing module for selectively establishing a VPN
`based on a selection of originating and terminating IP addresses
`of voice calls passed to the at least one soft-switch and at least
`one packet switch. . . . The apparatus may further include a
`PSTN gateway connected to a gateway soft-switch and said at
`least one soft-switch for processing “off-net” calls.” Id. at 2:51-
`64; see also id. at 1:9-13.
`Chu ’684 teaches servers and soft-switches that receive
`subscriber identification (e.g., IP address and ID of IP phone
`connection to server) and dialed digits of the called party
`(“caller identifier and callee identifier”) when a caller initiates
`a call.
`
`“The soft-switch is the intelligence of the system. It contains all
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`the information regarding the subscribers' VPNs. For example, it
`keeps track of the VPN that a location belongs to, the dial plans
`of the subscribers, the VPN identifier for an VPN (or a particular
`interface) and the like.” Id. at 4:59-63.
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`“At step 608, after receiving all the dialed digits from the phone
`101, server