Filed: July 3, 2017
`
`Ryan Thomas (pro hac vice)
`
`Ph.: (435) 630-6005
`E-mail:
`thomasattorney711@gmail.com
`
`
`Filed on behalf of Patent Owner Voip-Pal.com Inc.
`By:
`
`Kerry S. Taylor
`John M. Carson
`Brenton R. Babcock
`William R. Zimmerman (pro hac vice)
`KNOBBE, MARTENS, OLSON
`& BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`
`Ph.: (858) 707-4000
`E-mail: BoxDigifonica@knobbe.com
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.
`
`Petitioner,
`
`v.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case No. IPR2016-01201
`U.S. Patent 8,542,815
`
`
`
`
`
`
`PATENT OWNER REPLY TO OPPOSITION TO MOTION TO EXCLUDE
`
`
`VOIP-PAL.COM, INC.,
`
`Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Voip-Pal Ex. 2007
`IPR2017-01399
`
`
`
`Ryan Thomas (pro hac vice)
`
`Ph.: (435) 630-6005
`E-mail:
`thomasattorney711@gmail.com
`
`
`Filed on behalf of Patent Owner Voip-Pal.com Inc.
`By:
`
`Kerry S. Taylor
`John M. Carson
`Brenton R. Babcock
`William R. Zimmerman (pro hac vice)
`KNOBBE, MARTENS, OLSON
`& BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`
`Ph.: (858) 707-4000
`E-mail: BoxDigifonica@knobbe.com
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.
`
`Petitioner,
`
`v.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case No. IPR2016-01201
`U.S. Patent 8,542,815
`
`
`
`
`
`
`PATENT OWNER REPLY TO OPPOSITION TO MOTION TO EXCLUDE
`
`
`VOIP-PAL.COM, INC.,
`
`Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Voip-Pal Ex. 2007
`IPR2017-01399
`
`
`
`IPR2016-01201
`Apple Inc v. Voip-Pal
`
`1. Portions Of The Houh Declaration Should Be Excluded
`
`Apple’s Declarant cites no evidence in ¶¶ 38 & 43 of Ex. 1006, and
`
`misconstrues the meaning of “subscriber”. Regarding unsupported ¶¶ 38 & 43,
`
`Apple briefly points to unrelated paragraphs in the declaration for support and then
`
`dedicates pages of attorney argument attempting to patch the holes in its Petition
`
`and the Houh Declaration. Regarding “subscriber” Apple unabashedly argues that
`
`Dr. Houh knew all along that Chu ’684’s use of the term was distinct from the use
`
`in the ’815 Patent, despite the fact that the Houh Declaration never once hinted at
`
`this discrepancy. Apple’s attempts to rehabilitate Dr. Houh’s flawed Declaration
`
`belie its unreliability. Accordingly, the Houh Declaration should be excluded.
`
`a) Ex. 1006 Lacks Support For Motivation To Modify Chu ’684
`
`Apple fails to refute Voip-Pal’s arguments that ¶¶ 38 & 43 of Dr. Houh’s
`
`Declaration (Ex. 1006) are not based on facts or data as required under FRE 701-
`
`703 and irrelevant and misleading under FRE 401-403.
`
`Apple asserts that additional paragraphs in the Houh Declaration, namely ¶¶
`
`22-44, “work together to inform Houh’s opinion”. Paper 44 at 7. However, ¶¶ 22-
`
`44 are not linked to the conclusory statements in ¶¶ 38 & 43. In his declaration, Dr.
`
`Houh states that his conclusions in ¶¶ 38 & 43 are based “[u]pon reading the
`
`disclosure of Chu ’684….” However, Dr. Houh doesn’t cite to any disclosure of
`
`Chu ’684 for support. Instead of explaining how Dr. Houh relied upon Chu ’684,
`
`-1-
`
`
`
`IPR2016-01201
`Apple Inc v. Voip-Pal
`
`Apple’s argument is that other portions of the Houh Declaration “inform Houh’s
`
`opinion regarding modifications to Chu ’684”. Paper 44 at 7. This ex post
`
`argument is inconsistent with Dr. Houh’s own stated explanation in ¶¶ 38 & 43.
`
`Apple’s argument on opposition attempts
`
`to supplement
`
`the Houh
`
`Declaration by presenting unsupported and
`
`inaccurate attorney arguments
`
`regarding why the skilled artisan might have been motivated to modify Chu ’684.
`
`Apple mistakenly argues: “IP phones, conversely, are not tied to any specific
`
`physical location”. Id. at 8. This is incorrect. IP phones such as those in Chu ’684,
`
`are tied to specific physical locations because they are installed in fixed locations.
`
`Apple’s attorney argument itself is based on no evidence, and is merely an attempt
`
`to explain unsupported testimony via unsupported attorney argument. Apple
`
`concludes that “some additional functionality must be provided to an IP-based
`
`telephony service to allow users to dial as if they were calling from a PSTN
`
`phone.” Id. Again, this is attorney argument without support. In fact, IP/PBX
`
`systems are no different in this respect than traditional PBX systems and are
`
`capable of PSTN dialing based on the PSTN conventions of the installed location.
`
`Apple quotes Chu ’366 that: “existing global VoIP service providers require users
`
`to enter fully formatted E.l64 telephone numbers.” Id at 9. However, no evidence
`
`or argument is presented that Chu ’684’s system would have faced a similar
`
`requirement to reach PSTN destinations, and such requirement is contrary to what
`
`-2-
`
`
`
`IPR2016-01201
`Apple Inc v. Voip-Pal
`
`was known in PBX systems. See Paper 17 at 48-50. Thus, without any evidence or
`
`reasoned explanation, Dr. Houh concocts a motivation to modify Chu ’684 despite
`
`the fact that it does not suffer from any of the problems discussed in Chu ’366.
`
`Apple also states: “Similarly, there is no disagreement between the parties
`
`that Chu ’684 does not teach reformatting dialed digits such that callers could dial
`
`as if they were calling from the PSTN.” Paper 44 at 10. Thus, Apple admits that
`
`Chu ’684 fails to teach reformatting dialed digits, but Apple then inexplicably links
`
`reformatting to dialing “as if … calling from the PSTN”. Id. Chu ’684 describes
`
`how a system can direct dialed calls to either PSTN or IP destinations in a manner
`
`that did not contemplate reformatting of the dialed digits, yet still permitted callers
`
`to dial using local PSTN conventions. Further, Dr. Houh does not explain how the
`
`combination of Chu ’384 and Chu ’366 would be made, and does not base his
`
`rationale on any evidence. Not surprisingly, Dr. Houh’s conclusions in ¶¶ 38 & 43
`
`are not accompanied by citations to evidence because there is no teaching in the
`
`cited references that support his conclusions.
`
`To further muddy the waters, Apple states: “That IP-based telephony
`
`systems did not permit dialing as if on a standard PSTN phone is one of the most
`
`central concepts to the Challenged Patent and this proceeding.” Paper 44 at 10. The
`
`premise of this statement is false (because IP-based systems did permit dialing as if
`
`on a standard PSTN phone) as is the conclusion (because dialing as if on a standard
`
`-3-
`
`
`
`IPR2016-01201
`Apple Inc v. Voip-Pal
`
`PSTN is not one of the central concepts of this case). See, e.g., ’815 Patent at
`
`Abstract & Claim 1. Apple attempts to fundamentally redirect the issues in the case
`
`by making unsupported arguments. Tellingly, these attorney arguments do not
`
`point to the ’815 Patent, the Houh Declaration, or any other evidence for support.
`
`This is a last ditch effort to gloss over a factual deficiency in Apple’s challenge.
`
`For the above reasons, Apple has not refuted the fact that ¶¶ 38 & 43 of the
`
`Houh Declaration are not based on facts or data, are irrelevant and misleading, and
`
`should be excluded under FRE 401-403 & 701-703.
`
`b) Houh’s Misunderstanding Of The Meaning Of “Subscriber”
`Renders His Opinion Irrelevant And Misleading
`
`
`It is undisputed that the ’815 Patent and Chu ’684 use the term “subscriber”
`
`in different ways. Paper 44 at 11. These distinctions resulted in the Houh
`
`Declaration incorrectly characterizing Chu ’684. Thus, ¶¶ 37, 42, and 45 of Ex.
`
`1006 should be excluded under FRE 401-403 as irrelevant and misleading. Apple
`
`attempts to rehabilitate Dr. Houh’s incorrect characterization after the fact by
`
`asserting that Dr. Houh used “his own convention adopted for clarity in his
`
`declaration”. Paper 44 at 11 & 12. This is not credible. The Houh Declaration itself
`
`never recognized or acknowledged this distinction. If Dr. Houh knew this different
`
`usage all along, he should have explained this in his declaration. This confusion of
`
`the meaning of the term “subscriber” led Dr. Houh to an incorrect assumption
`
`-4-
`
`
`
`IPR2016-01201
`Apple Inc v. Voip-Pal
`
`about the enterprise-specific dial plans that are disclosed in Chu ’684 – specifically
`
`that information “in addition to the server ID” is necessary to identify a dial plan,
`
`contrary to the statement in Chu ’684 that the ID of the server is sufficient for such
`
`purpose). Ex. 1006 at ¶ 45. In fact, the point of Dr. Houh’s ¶ 45 was to explain a
`
`non-existent contradiction in Chu ’684 created by his confusion on “subscriber.”
`
`Because Dr. Houh’s opinions in ¶¶ 37, 42, and 45 are premised on an
`
`incorrect interpretation of a term in Chu ’684, these opinions are irrelevant and
`
`misleading and should be excluded under FRE 401-403.
`
`2. Select Statements In Exhibits 1007-1010 & 1012 Should Be Excluded
`
`Apple does not dispute Voip-Pal’s arguments that select statements of Exs.
`
`1007-1010 & 1012 cited in Apple’s Reply are misleading under FRE 401-403 and
`
`incomplete under FRE 106 and should be excluded. Instead, Apple merely argues
`
`that the Motion to Exclude cannot seek to exclude Apple’s arguments on Reply.
`
`Voip-Pal’s Motion to Exclude seeks to exclude select statements of Exs. 1007-
`
`1010 & 1012 cited in Apple’s Reply. Paper 40 at 2 (“Apple selectively uses
`
`deposition statements of Exs. 1007-1010 & 1012 in a misleading fashion, and
`
`should be excluded under FRE 401-403.”). It is unrebutted that these select
`
`statements of Exs. 1007-1010 & 1012 are misleading and incomplete. Because
`
`Apple does not disagree as to the merits of these arguments, these select statements
`
`of Exs. 1007-1010 & 1012 should be excluded under FRE 401-403 and FRE 106.
`
`-5-
`
`
`
`IPR2016-01201
`Apple Inc v. Voip-Pal
`
`
`
`
`
`
`
`
`Dated: July 3, 2017
`
`Respectfully submitted,
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`
`
`By: /Kerry Taylor/
`Kerry Taylor, Reg. No. 43,947
`John M. Carson, Reg. No. 34,303
`Brenton R. Babcock, Reg. No. 39,592
`William R. Zimmerman, appears pro hac vice
`Customer No. 20,995
`(858) 707-4000
`
`Ryan Thomas, appears pro hac vice
`(435) 630-6005
`
`Attorneys for Patent Owner
`Voip-Pal.com, Inc.
`
`
`-6-
`
`
`
`IPR2016-01201
`Apple Inc v. Voip-Pal
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that true and correct copy of PATENT OWNER REPLY
`
`TO OPPOSITION TO MOTION TO EXCLUDE is being served on July 3,
`
`2017, via electronic mail pursuant to 37 C.F.R. § 42.6(e) as addressed below:
`
`Adam P. Seitz
`Eric A. Buresh
`ERISE IPA, P.A.
`6201 College Blvd., Suite 300
`Overland Park, KS 66211
`Telephone: (913) 777-5600
`Adam.seitz@eriseip.com
`eric.buresh@eriseip.com
`
`
`
`
`
`Paul R. Hart
`ERISE IPA, P.A.
`5600 Greenwood Plaza Blvd., Suite 200
`Greenwood Village, CO 80111
`Telephone: (913) 777-5600
`Paul.Hart@EriseIP.com
`
`
`
`
`
`Dated: July 3, 2017
`
`
`
`26240114
`
`
` /Kerry Taylor/
`Kerry Taylor, Reg. No. 43,947
`John M. Carson, Reg. No. 34,303
`Attorneys for Patent Owner
`Voip-Pal.com, Inc.
`
`
`
`-7-
`
`
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