IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`PETITION FOR INTER PARTES
`REVIEW PURSUANT TO 37
`C.F.R. §42.100 ET SEQ.
`
`In re U.S. Patent No. 9,179,005
`
`Currently in Litigation Styled:
`VoIP-Pal.com, Inc. v. Apple Inc.
`Case No: 2:16-cv-00260-RFB-VCF
`
`Issued: November 3, 2015
`
`Application Filed: August 13, 2013
`
`Applicant: Clay Perreault, et al.
`
`Title: Producing Routing Messages for
`Voice Over IP Communications
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`Mail Stop Inter Partes Review
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`DECLARATION OF HENRY H. HOUH, PhD
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`I. Introduction
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`I, Henry H. Houh, Ph.D., declare:
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`1.
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`I am making this declaration at the request of Apple Inc. in the matter of the
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`Inter Partes Review of U.S. Patent No. 9,179,005 (“the ’005 Patent”) to Perreault, et al.
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`2.
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`I am being compensated for my work in this matter. My compensation in no way
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`depends upon the outcome of this proceeding.
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`3.
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`In the preparation of this declaration, I have studied:
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`PETITIONER APPLE INC. EX. 1009-1
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`Voip-Pal Ex. 2016
`IPR2017-01399
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`(1)
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`(2)
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`(3)
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`(4)
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`(5)
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`4.
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`(1)
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`(2)
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`The ’005 Patent, Exhibit 1001;
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`The prosecution history of the ’005 Patent, Exhibit 1002;
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`U.S. Patent No. 7,486,684 to Chu et al. (“Chu ’684”), Exhibit 1003;
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`U.S. Patent No. 8,036,366 to Chu (“Chu ’366”), Exhibit 1004;
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`U.S. Patent Publication No. 2007/0064919 to Chen et al. (“Chen”), Exhibit 1005;
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`In forming the opinions expressed below, I have considered:
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`The documents listed above,
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`The relevant legal standards, including the standard for obviousness provided in
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`KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007), and
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`(3) My knowledge and experience based upon my work in this area, as described
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`below.
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`II. Qualifications and Professional Experience
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`5.
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`My complete qualifications and professional experience are described in my
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`curriculum vitae, a copy of which can be found attached hereto as Appendix A. The following is
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`a brief summary of my relevant qualifications and professional experience.
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`6.
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`I received a Ph.D. in Electrical Engineering and Computer Science from the
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`Massachusetts Institute of Technology in 1998. I also received a Master of Science degree in
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`Electrical Engineering and Computer Science in 1991, a Bachelor of Science Degree in
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`Electrical Engineering and Computer Science in 1989, and a Bachelor of Science Degree in
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`Physics in 1990.
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`7.
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`As further indicated in my C.V., I have worked in the electrical engineering and
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`computer science fields, including in streaming audio and video, on several occasions. As part
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`of my doctoral research at MIT from 1991-1998, I worked as a research assistant in the
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`Telemedia Network Systems (TNS) group at the Laboratory for Computer Science. The TNS
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`group built a high speed gigabit network and applications which ran over the network, such as
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`remote video capture, processing, segmentation and search on computer terminals. In addition
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`to helping design the core network components, designing and building the high speed links,
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`and designing and writing the device drivers for the interface cards, I also set up the group’s
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`web server, which at the time was one of the first several hundred web servers in existence.
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`8.
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` I authored or co-authored twelve papers and conference presentations on our
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`group’s research. I also co-edited the final report of the gigabit networking research effort with
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`the Professor (David Tennenhouse) and Senior Research Scientist of the group (David Clark),
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`who is generally considered to be one of the fathers of the Internet Protocol.
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`9.
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`I started building web servers in 1993, having set up the web server for the MIT
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`Telemedia, Networks, and Systems Group, to which I belonged. It was one of the first several
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`hundred web servers in existence, and went on to provide what was likely one of the first live
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`Internet video sessions initiated from a web site. I co-authored papers on our web server video
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`system and on database-backed web sites for which I attended the first World Wide Web
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`conference to present.
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`10.
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`From 1997 to 1999, I was a Senior Scientist and Engineer at NBX Corporation, a
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`start-up that made business telephone systems that streamed packetized audio over data
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`networks instead of using traditional phone lines. NBX was later acquired by 3Com
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`Corporation, and the phone system is still available and being used at tens of thousands of
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`businesses or more. As part of my work at NBX, I designed the core audio reconstruction
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`algorithms for the telephones, as well as the packet transmission algorithms. I also designed and
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`validated the core packet transport protocol used by the phone system. The protocol is used
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`millions of times daily currently. Two of the company founders and I received US Patent No.
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`6,967,963 titled “Telecommunication method for ensuring on-time delivery of packets
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`containing time sensitive data,” for some of the work I did there.
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`11.
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`Starting in 2001, I was architect for the next generation of web testing product by
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`Empirix known as e-Test Suite. e-Test Suite is now owned by Oracle Corporation. e-Test
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`provided functional and load testing for web sites. e-Test emulated a user's interaction with a
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`web site and provided web developers with a method of creating various scripts and providing
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`both functional testing (e.g., did the web site provide the correct response) and load testing (e.g.,
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`could the web site handle 5000 users on its web site simultaneously). Among Empirix’s
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`customers was H&R Block, who used e-Test Suite to test the tax filing functionality of their
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`web site as whether the web site could handle a large expected load prior to the filing deadline.
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`12. At Empirix, I also conceived, secured internal funding for, and managed the
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`engineering for a new data platform test product known as the PacketSphere. The first
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`capability the PacketSphere provided was to emulate a network so that lab testing could be done
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`under conditions that mimicked the Internet, including configurable latency and packet loss.
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`Later, PacketSphere provided the capability to generate large numbers of Voice-over-IP streams
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`as well as measure the quality of the connection of VoIP streams. As part of my work, I
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`continued to study the development of the Voice-over-IP market and worked with a number of
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`Empirix customers to understand their market and product testing needs. Sonus Networks, a
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`leading manufacturer of Voice-over-IP equipment, was a long-time customer of Empirix and
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`one of the first customers of the PacketSphere product.
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`13. Around 2006, at BBN, I helped create a search engine for audio and video which
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`could be searched based on spoken word content. Our system used speech recognition and
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`natural language processing to create a search index of audio and video files posted publicly on
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`the Internet. During the search process, audio and video with matching spoken words could be
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`streamed to users. As the Vice President of Operations and Technology, I architected and helped
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`build-out the back end of the system, which supported speech recognition, search indexing, and
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`providing the capability for audio and video streaming in search results. Today, at RAMP Inc.,
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`the project has grown to a product that is used by media outlets such as ABC, CBS, NBC, Fox,
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`and Reuters. In addition, during this time at BBN, I continued to be engaged with Voice-over-
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`IP related projects through the time I left BBN.
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`14. Around 2008-2009, while I was Chief Technology Officer at Eons, a venture
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`backed company founded by Jeff Taylor, who also founded the hiring web site Monster.com,
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`Eons launched an advertising network. Eons built a network of sites on which advertisements
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`could be placed, fulfilled client advertisement purchases, and tracked delivery of clients’
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`advertisements. In addition, we utilized the Solr search platform in order to index the millions of
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`items of content added by Eons members, in order to make them searchable.
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`15.
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`I have also continued to develop web sites for various business projects, as well
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`as setting up web sites on a volunteer basis for various groups that I am associated with.
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`16.
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`I am the author of several publications devoted to a wide variety of technologies
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`in the fields of electrical engineering and computer science. These publications are listed on my
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`C.V. (App. A).
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`17.
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`In summary, I have extensive familiarity with systems, networks, architectures,
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`and methods related
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`to
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`traditional circuit-switched
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`telecommunications, packet-based
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`telecommunications, and systems that merged the two technologies, and I am familiar with what
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`the states of these technologies were at the relevant time of the ’005 Patent invention and before.
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`III. Level of Ordinary Skill in the Art
`18.
`
`I am familiar with the knowledge and capabilities of persons of ordinary skill in
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`packet-based and circuit-switched telecommunication systems in the period around November
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`2006, the earliest claimed priority date for the ’005 Patent. I base this on my experience with
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`VoIP starting with my streaming media work for my PhD thesis in the mid 1990’s, through my
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`first post-degree job at NBX, which shipped the first PBX to work over a computer data network,
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`and my later professional work in the early 2000’s developing VoIP test tools. One of ordinary
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`skill in the art would have been familiar with VoIP gateways, which interfaced packet-based
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`phone systems to the PSTN, softswitches, which provided call control and advanced features for
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`VoIP phone systems, and the SIP and MGCP protocols, which provided signaling and device
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`control for VoIP systems. One of ordinary skill in the art would also have been familiar with the
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`types of features available in a VoIP system, such as the ability for VoIP phones to be moved
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`around in a data network without reprogramming a switch, with softphones, which allowed users
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`to use their computers as a telephone, and with toll bypass, where calls maybe placed out through
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`remote gateways accessible over the data network to avoid long distance telephone charges.
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`19.
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`In my opinion, the level of ordinary skill in the art that one would need in order
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`to have the capability of understanding the scientific and engineering principles applicable to the
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`’005 Patent is (i) a Bachelor degree (or higher degree) in an academic area emphasizing electrical
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`engineering and (ii) 2-4 years of industry experience in designing or developing packet-based
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`and circuit-switched telecommunication systems. Experience and technical training may
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`substitute for educational requirements, while advanced degrees may substitute for experience
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`IV. Relevant Legal Standards
`20.
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`Obviousness
`
`a.
`
`I have been asked to provide my opinions regarding whether the claims 1,
`
`24-26, 49-50, 73-79, 83-84, 88-89, 92, 94-96, 98, and 99 of the ’005 Patent would have been
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`obvious to a person having ordinary skill in the art at the time of the alleged invention, in light of
`
`the prior art.
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`b.
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`I have been informed and understand that a patent claim is not patentable
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`under 35 U.S.C. § 103 if the differences between the patent claim and the prior art are such that
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`the claimed subject matter as a whole would have been obvious at the time the claimed invention
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`was made to a person having ordinary skill in the art to which the subject matter pertains.
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`Obviousness, as I have been informed, is based on the scope and content of the prior art, the
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`differences between the prior art and the claim, the level of ordinary skill in the art, and, to the
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`extent that they exist and have an appropriate nexus to the claimed invention (as opposed to prior
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`art features), secondary indicia of non-obviousness.
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`c.
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`I have been informed that whether there are any relevant differences
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`between the prior art and the claimed invention is to be analyzed from the view of a person of
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`ordinary skill in the art at the time of the invention. As such, my opinions below as to a person of
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`ordinary skill in the art are as of the time of the invention, even if not expressly stated as such;
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`for example, even if stated in the present tense.
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`d.
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`In analyzing the relevance of the differences between the claimed
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`invention and the prior art, I have been informed that I must consider the impact, if any, of such
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`differences on the obviousness or non-obviousness of the invention as a whole, not merely some
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`portion of it. The person of ordinary skill faced with a problem is able to apply his or her
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`experience and ability to solve the problem and also look to any available prior art to help solve
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`the problem.
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`e.
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`An invention is obvious if a person of ordinary skill in the art, facing the
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`wide range of needs created by developments in the field, would have seen an obvious benefit to
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`the solutions tried by the applicant. When there is a design need or market pressure to solve a
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`problem and there are a finite number of identified, predictable solutions, it would be obvious to
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`a person of ordinary skill to try the known options. If a technique has been used to improve one
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`device, and a person of ordinary skill in the art would recognize that it would improve similar
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`devices in the same way, using the technique would have been obvious.
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`f.
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`I have been informed that a precise teaching in the prior art directed to the
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`subject matter of the claimed invention is not needed. I have been informed that one may take
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`into account the inferences and creative steps that a person of ordinary skill in the art would have
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`employed in reviewing the prior art at the time of the invention. For example, if the claimed
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`invention combined elements known in the prior art and the combination yielded results that
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`were predictable to a person of ordinary skill in the art at the time of the invention, then this
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`evidence would make it more likely that the claim was obvious. On the other hand, if the
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`combination of known elements yielded unexpected or unpredictable results, or if the prior art
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`teaches away from combining the known elements, then this evidence would make it more likely
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`that the claim that successfully combined those elements was not obvious.
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`g.
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`I have been informed that hindsight must not be used when comparing the
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`prior art to the invention for obviousness.
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`h.
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`Obviousness may also be shown by demonstrating that it would have been
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`obvious to modify what is taught in a single piece of prior art to create the subject matter of the
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`patent claim. Obviousness may be shown by showing that it would have been obvious to
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`combine the teachings of more than one item of prior art. In determining whether a piece of prior
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`art could have been combined with other prior art or combined with or modified in view of other
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`information within the knowledge of one of ordinary skill in the art, the following are examples
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`of approaches and rationales that may be considered:
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`•
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`•
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`•
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`•
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`•
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`•
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`•
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`Combining prior art elements according to known methods to yield predictable
`results;
`Simple substitution of one known element for another to obtain predictable
`results;
`Use of a known technique to improve similar devices (methods, or products) in
`the same way;
`Applying a known technique to a known device (method, or product) ready for
`improvement to yield predictable results;
`Applying a technique or approach that would have been "obvious to try"
`(choosing from a finite number of identified, predictable solutions, with a
`reasonable expectation of success);
`Known work in one field of endeavor may prompt variations of it for use in either
`the same field or a different one based on design incentives or other market forces
`if the variations would have been predictable to one of ordinary skill in the art; or
`Some teaching, suggestion, or motivation in the prior art that would have led one
`of ordinary skill to modify the prior art reference or to combine prior art reference
`teachings to arrive at the claimed invention.
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`i.
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`I have been informed that even if a prima facie case of obviousness is
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`established,
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`the
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`final determination of obviousness must also consider "secondary
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`considerations"
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`if presented. In most
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`instances,
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`the patentee raises
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`these secondary
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`considerations of non-obviousness. In that context, the patentee argues an invention would not
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`have been obvious in view of these considerations, which include: (a) commercial success of a
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`product due to the merits of the claimed invention; (b) a long-felt, but unsatisfied need for the
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`invention; (c) failure of others to find the solution provided by the claimed invention; (d)
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`deliberate copying of the invention by others; (e) unexpected results achieved by the invention;
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`(f) praise of the invention by others skilled in the art; (g) lack of independent simultaneous
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`invention within a comparatively short space of time; (h) teaching away from the invention in the
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`prior art.
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`j.
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`I have been informed and further understand that secondary considerations
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`evidence is only relevant if the offering party establishes a connection, or nexus, between the
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`evidence and the claimed invention. The nexus cannot be to prior art features. The establishment
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`of a nexus is a question of fact.
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`21. Claim Construction
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`a.
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`I have been informed that the first step in an invalidity analysis involves
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`construing the claims, as necessary, to determine their scope. And, second, the construed claim
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`language is then compared to the disclosure of the prior art. In proceedings before the USPTO, I
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`have been informed that the claims of an unexpired patent are to be given their broadest
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`reasonable interpretation in view of the specification from the perspective of one skilled in the
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`art. I have been informed that the ’005 Patent has not expired. In comparing the claims of the
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`’005 Patent to the known prior art, I have carefully considered the ’005 Patent and the ’005
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`Patent prosecution history based upon my experience and knowledge in the relevant field. For
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`purposes of this proceeding I have applied the broadest reasonable interpretation of the claim
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`terms of the ’005 Patent that is generally consistent with the terms’ ordinary and customary
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`meaning, as one skilled in the relevant field would have understood them. Because I have been
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`informed that the claim construction standard in this proceeding differs from that used in U.S.
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`district court litigation, nothing herein should be taken as an indication that I consider these
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`constructions to control in a district court setting.
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`b.
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`I have been informed that a special claim construction analysis is applied
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`to claim limitations drafted in means-plus-function format pursuant to 35 U.S.C. § 112, ¶ 6.
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`When construing a means-plus-function limitation, I understand that the claimed function must
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`first be identified and then the corresponding structure that actually performs the claimed
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`function must be identified from the specification. A means-plus-function claim term is limited
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`to the disclosed structures and equivalents.
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`c.
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`I have been informed that where the disclosed structure for a means-plus-
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`function limitation is a computer, or microprocessor, programmed to carry out an algorithm, the
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`corresponding structure is not the general purpose computer or processor, but rather is a special
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`purpose computer or processor programmed to perform the disclosed algorithm. In other words, I
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`understand the disclosed algorithm is part of the corresponding structure for computer-
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`implemented means-plus-function limitations.
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`d.
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`I have been informed that where a patent specification fails to adequately
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`disclose corresponding structure for a means-plus-function claim limitation, that claim is invalid
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`as indefinite pursuant to 35 U.S.C. § 112, ¶ 2. But I also understand that indefiniteness may not
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`be challenged in an Inter Partes Review. Accordingly, though it is my opinion that certain
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`means-plus-function claim limitations in the ‘005 Patent Challenged Claims may not have
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`sufficiently described corresponding structure, I have assumed they are definite and have
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`assessed their validity based on the specific structure actually disclosed.
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`e.
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`I have reviewed the proposed claim constructions in Section IV.B.2 of the
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`Petition, agree with these proposed constructions, and have applied these constructions in my
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`analyses herein.
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`V. Overview of the ’005 Patent
`22.
`
`This overview is not meant to describe my full understanding of the ’005 Patent,
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`but is only used to generally describe the relevant functionalities of the ’005 Patent.
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`23.
`
`The ’005 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 messages are
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`generated to route calls accordingly. See Ex. 1001 at Abstract. A call routing controller receives
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`a request to establish a call from a calling party, which includes an identifier of the called party.
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`Id. at 1:59-61. Call routing controller then compares the called party identifier with attributes of
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`the calling party identifier, and may reformat the called party identifier depending on the result
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`of this comparison. Id. at 2:13-31. Based on the comparison of attributes of the calling party
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`and the called party identifier, the call routing controller next determines whether the called party
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`is a subscriber to a private network. Id. at 2:51-53, 3:4-8. If so, a routing message is generated
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`so that the call can be directed to the private network node serving the called party. Id. at 1:64-
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`67. If the called party is not on the private network, the call is classified as a public network call
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`and a routing message is generated so that the call can be directed through a gateway to a public
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`network. Id. at 1:67-2:2.
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`24. More specifically, the ’005 Patent describes a calling party utilizing a Voice over
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`Internet Protocol (“VoIP”) telephone who is able to call (1) other VoIP subscribers on a private
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`packet-based network or (2) standard public switched telephone network (“PSTN”) customers on
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`the public telephone network. Id. at 1:20-2:2. To identify a single destination the calling party is
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`attempting to reach, the ’005 Patent teaches that modifications to the dialed digits may be
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`necessary. Fig. 8B illustrates a variety of modifications, which include, as an example,
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`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-inward-dial bank
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`(“DID”) table is referenced to determine if the called party is a subscriber to the private packet
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`network. Id. If not, the call is directed to a PSTN gateway and the formatted number is used to
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`connect the call over the public PSTN to the called party. Id.
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`25.
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`Put simply, the ’005 Patent describes a system in which a VoIP subscriber may
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`place calls to other VoIP subscribers or to phones on the PSTN. The described system also
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`enables the calling party to enter dialed digits in a familiar manner as if the caller were placing a
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`call on the PSTN, and the system reformats the dialed digits using caller attributes (e.g., country
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`code, area code, etc.), determines whether the callee is on the private packet network or public
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`PSTN, and routes the call accordingly.
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`VI. State of the Relevant Art in 2006
`26.
`
`telecommunications
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`networks,
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`packet-switched
`
`Circuit
`
`switched
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`communications networks, the Internet and the carriage of voice via IP packets over the Internet
`
`was well-known by 2006.
`
`27.
`
`Telephonic communications dates to the 1800’s, where in 1877, Alexander
`
`Graham Bell received U.S. Patent No. 186,787 titled “Improvement in Electric Telegraphy”
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`which disclosed a device which transmits voice over a circuit, in which a bell rings when the
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`main circuit is opened.
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`28.
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`Packet communications dates to the 1960’s, and was demonstrated with the
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`creation of the ARPANET, which was funded by the Advanced Research Projects Agency of the
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`U.S. Department of Defense. By 1983, packetized speech was carried over the ARPANET and
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`interfaced to the PSTN in a system demonstrated by Weinstein and Forgie.1 This system
`
`transported speech packets over the data network, and provided a packet/circuit interface
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`between packet switches and the T1 digital carrier format of the telephone network. See
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`Weinstein at p. 977. Around this time, Dialogic Inc. and Natural Microsystems Inc. were
`
`founded, and eventually these companies produced hardware and software for computer to
`
`telephone system integration. Computer telephony boards made by these vendors and others
`
`were used by the 1990’s to create Voice-over-IP systems.
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`29.
`
`By the 1990’s the Internet Engineering Task Force, the body tasked with
`
`developing standards for the Internet, began to propose standards that focused on real-time
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`applications such as VoIP. “RTP: A Transport Protocol for Real-Time Applications” was
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`released as RFC 1889 in January 1996.2 In 1999, the IETF published “SIP: Session Initiation
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`Protocol”3 which is used to establish sessions, or calls, and is used frequently by VoIP systems
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`today. Both these protocols became widely used by the mid 2000’s.
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`30.
`
`In 1999, the global telecommunications manufacturer Siemens announced a
`
`VoIP gateway utilizing the Natural Microsystems Fusion platform4 order to “enable[] voice and
`
`
`1 See Appendix B, Weinstein and Forgie, “Experience with Speech Communications,” IEEE Journal on Selected
`Areas in Communications, Vol. SAC-1, No. 6, December 1983.
`2 See Appendix C, https://tools.ietf.org/html/rfc1889 (excerpt)
`3 See Appendix D, https://tools.ietf.org/html/rfc2543 (excerpt)
`4 See Appendix E, http://www.cnet.com/news/fusion-will-help-raise-net-voices/
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`
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`PETITIONER APPLE INC. EX. 1009-14
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`

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`real-time fax calls over IP-based networks.”5
`
`31.
`
`In the late 1990’s, business telephone systems (also known as private branch
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`exchanges) that ran over data networks became available. NBX Corporation and Selsius
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`Systems were among the first to release a PBX for small and medium sized businesses. Selsius
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`was acquired by Cisco in 19986 and NBX was acquired by 3Com in 19997. Both 3Com and
`
`Cisco were major manufacturers of packet communications equipment.
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`32.
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`By 2000, companies were releasing full VoIP solutions utilizing gateways and
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`softswitches. A softswitch is a computer running software that is able to complete calls and
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`handle call features in a packet network that can include gateways to the PSTN. These solutions
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`were promoted as a lower cost way to offer telecommunications services as well as lower cost
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`long distance by providing long distance backhaul over the Internet or other data network.8
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`Carrier-class gateways were available from manufacturers by the late 1990’s9 and carrier-class
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`softswitches were available from manufacturers by the early 2000’s.10
`
`33.
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`In the early 2000’s, Voice-over-IP commercial phone service became available.
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`Vonage, incorporated in 2001, was one of the early pioneers of consumer VoIP. Such a system
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`is also known as an “over the top” system in that it is provides telephone service over a
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`consumer’s Internet connection, and thus no phone lines are required into a subscriber’s
`
`
`5 See Appendix F, http://pressreleases.responsesource.com/news/3014/natural-microsystems-launches-new-ip-
`telephony-platform/
`6 See Appendix G, http://www.cisco.com/chinese/warp/public/146/october98/9810p46-e.html
`7 See Appendix H, http://www.nytimes.com/1999/02/23/business/company-news-3com-is-acquiring-nbx-for-100-
`million.html
`8 See Appendix I, “nuVOICE – Next Generation VoIP Solutions,” August 16, 2000.
`9 See, e.g., Appendix J, http://www.sonus.net/resources/press-releases/sonus-networks-gateway-switch-ip-
`telephony-suite-are-first-capacity
`10 See, e.g., Appendix K, http://www.sonus.net/resources/press-releases/sonus-networks-psx6000-softswitch-sets-
`standard-scalability-reliability
`
`
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`PETITIONER APPLE INC. EX. 1009-15
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`residence. By 2005, Vonage announced that it had one million subscribers.11 Vonage provided
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`features such as call forwarding, call waiting, area code selection (no matter the actual area code
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`determined by one’s physical residence12), and voicemail, among others.13
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`34.
`
`By November 2, 2006, the priority date of the ’005 patent, softswitches (also
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`known as call controllers), gateways between an IP network and the PSTN, the use of the
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`Internet or a data network for saving long distance toll charges, the ability to place calls within a
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`private network as well as to the PSTN, and the ability for users to select profile-based features
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`such as their area code, were well-known and widely used technologies.
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`VII. Opinions Concerning Chu ’684 and Chu ’366
`35.
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`I have been asked to consider whether claims 1, 24-26, 49-50, 73-79, 83-84, 88-
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`89, 92, 94-96, 98, and 99 are obvious over Chu ’684 in view of Chu ’366. It is my opinion that
`
`they are indeed obvious and that the combination of Chu ’684 and Chu ’366 teaches all elements
`
`of claims 1, 24-26, 49-50, 73-79, 83-84, 88-89, 92, 94-96, 98, and 99 as set forth in the claim
`
`chart for this combination in the Petition.
`
`36.
`
`For a number of reasons, it would have been obvious to one of skill in the art to
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`modify the system described by Chu ’684 with the specific dialed digit reformatting teachings of
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`Chu ’366. First, the references are in the same technological field and substantially overlap in
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`relevant subject matter. For example, both references teach telecommunications systems in
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`which VoIP subscribers can place calls to a customer on the public PSTN. Compare Ex. 1006,
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`Chu ’684 at 8:65-9:1 (“At step 608, after receiving all the dialed digits from the phone 101, server 110
`
`11 See Appendix L, http://www.networkcomputing.com/networking/vonage-hits-one-million-
`subscribers/1486680870
`12 See Appendix M, https://web.archive.org/web/20051210104545/http://vonage.com/avail.php
`13 See Appendix N,
`https://web.archive.org/web/20051210104312/http://vonage.com/features.php?lid=nav_features
`
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`PETITIONER APPLE INC. EX. 1009-16
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`consults its dial plan to determine whether the call is local, to another on-net phone, or to a phone that
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`is on the PSTN.”) with Ex. 1007, Chu ’366 at 14:30-33 (“[T]here is shown a system for
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`communications between a computing environment 202 including the application program according
`
`to the present system and a PSTN telephone 216.”). Additionally, both references teach a process in
`
`which dialed digits and caller attributes are used to determine where the call should be routed.
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`Compare Ex. 1006, 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
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`phone, or to a phone that is on the PSTN.”) with Ex. 1007, Chu ’366 at Fig. 6. Finally, both references
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`expressly reference E.164 as an international standard dial plan. Compare Ex. 1006, Chu ’684 at 3:59-
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`61 (“[E]ach IP phone [may be] assigned its own E.164 number (the international standard dial plan)
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`and receiving calls from the PSTN directly.”) with Ex. 1007, Chu ’366 at 1:18-20 (“E.164 [ ] provides
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`a uniform means for identifying any telephone number in the world to any telephony user in the
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`world.”).
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`37.
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`Second, the system of Chu ’684 already contains the infrastructure needed to
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`support such reformatting. Chu ’684 expressly discloses geographically dispersed subscribers each
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`of who