Filed: August 25, 2017
`
`Filed on behalf of:
`Patent Owner Voip-Pal.com Inc.
`By: Kerry Taylor
`John M. Carson
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Tel.: (858) 707-4000
`Fax: (858) 707-4001
`Email:
`BoxDigifonica@knobbe.com
`
`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. IPR2017-01399
`U.S. Patent 8,542,815
`
`
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`
`PATENT OWNER’S PRELIMINARY RESPONSE TO
`PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`Filed on behalf of:
`Patent Owner Voip-Pal.com Inc.
`By: Kerry Taylor
`John M. Carson
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Tel.: (858) 707-4000
`Fax: (858) 707-4001
`Email:
`BoxDigifonica@knobbe.com
`
`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. IPR2017-01399
`U.S. Patent 8,542,815
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO
`PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`
`Page No.
`
`INTRODUCTION ........................................................................................... 1
`
`ARGUMENT ................................................................................................... 4
`
`A.
`
`B.
`
`Introduction to Claimed Subject Matter ................................................ 4
`
`Grounds 1 and 2 Fail Because None of the References Disclose a
`Caller Dialing Profile ............................................................................ 6
`
`1.
`
`Chu ’684 Does Not Disclose A Caller Dialing Profile As
`Recited In The Claims ................................................................ 8
`
`a.
`
`b.
`
`c.
`
`d.
`
`e.
`
`f.
`
`Overview of Chu ’684 ...................................................... 8
`
`The “Subscriber” Dial Plans in Chu ’684 Are
`Enterprise Dial Plans ........................................................ 9
`
`Petitioner Has Admitted That Chu ’684 Uses the
`Word “Subscriber” To Mean an Enterprise Rather
`Than an Individual Caller ............................................... 11
`
`Petitioner Has Admitted That Chu ’684 Does Not
`Disclose a Caller Dialing Profile .................................... 14
`
`Despite Previous Admissions, the Present Petition
`Adopts A Misinterpretation of Chu ’684 ........................ 18
`
`Enterprise Dial Plans Cannot Be Relied On To
`Demonstrate The Claims Are Obvious ........................... 23
`
`2.
`
`Scott Does Not Disclose a Caller Profile As Recited In The
`Claims ....................................................................................... 24
`
`a.
`
`b.
`
`Overview of Scott ........................................................... 24
`
`The Gateway Application Settings of Scott Is Not a
`Caller Dialing Profile ...................................................... 26
`
`-i-
`
`
`
`TABLE OF CONTENTS
`(cont'd.)
`
`Page No.
`
`
`
`c.
`
`The Petition Does Not Assert That the Gateway
`Application Settings in Scott Are Caller-Specific .......... 26
`
`3.
`
`Hinchey Does Not Disclose a Caller Dialing Profile As
`Recited In the Claims ................................................................ 27
`
`a.
`
`b.
`
`c.
`
`Overview of Hinchey ...................................................... 27
`
`The “Dial Plan Schema” of Hinchey Is Not a Caller
`Profile ............................................................................. 28
`
`The Petition Does Not Assert That the Dial Plan
`Schemas of Hinchey Are Caller-Specific ....................... 29
`
`C.
`
`Grounds 1 and 2 Fail Because Petitioner has Misconstrued Claim
`1 as Not Requiring an Order of Steps [1b] and [1d] ........................... 30
`
`1.
`
`2.
`
`3.
`
`Step [1d] depends upon step [1b] ............................................. 30
`
`The Board Must Resolve a Claim Construction Dispute.......... 31
`
`Petitioner Cites to Steps Performed in the Wrong Order ......... 31
`
`D. Grounds 1 and 2 Fail Because Petitioner’s Proposed Combination
`Would be Inoperative .......................................................................... 33
`
`1.
`
`2.
`
`3.
`
`4.
`
`Petitioner Has Proposed a Manner of Combining Chu ’684
`With Scott That Does Not Work ............................................... 34
`
`Petitioner Acknowledged In the Previous IPR Proceedings
`That the Manner of Combination Was Defective ..................... 37
`
`Petitioner Has Not Refuted the Patent Owner’s Previous
`Arguments Regarding the Inoperative Nature of the
`Proposed Combinations ............................................................ 42
`
`Reformatting Only Calls Destined for the PSTN Would be
`the Operative Manner of Combination ..................................... 43
`
`-ii-
`
`
`
`TABLE OF CONTENTS
`(cont'd.)
`
`Page No.
`
`
`
`Chu ’684 Classifies Calls Using a Prefix Digit As Is
`Standard For PBX Systems ............................................ 43
`
`Petitioner’s Assertion That Chu ’684 Does Not
`Operate Like a Conventional PBX is Unsupported ........ 44
`
`Petitioner’s Declarant Admitted That Using a Prefix
`Digit With Chu ’684 Would Solve The Corruption
`Of Private Numbers ........................................................ 47
`
`Petitioner’s Proposed Combination Is Based on
`Hindsight ......................................................................... 49
`
`a.
`
`b.
`
`c.
`
`d.
`
`E.
`
`Grounds 1 and 2 Fail Because Petitioner’s Proposed Motivation
`to Combine is Flawed .......................................................................... 50
`
`1.
`
`2.
`
`Petitioner Cites to a Non-Existent Deficiency in Chu ’684
`as a Reason to Combine References ......................................... 51
`
`Petitioner’s Arguments That Users of Chu ’684 Cannot
`Dial As If On the PSTN Are Unsupported ............................... 52
`
`F.
`
`This Follow-On Petition Should be Denied Under 35 U.S.C. §§
`314(a) and/or 325(d) ............................................................................ 54
`
`1.
`
`The Petition Is Unjustified Under the Factors For 35
`U.S.C. § 314(a) ......................................................................... 56
`
`a.
`
`b.
`
`c.
`
`Same petitioner, same independent claims ..................... 57
`
`Petitioner uses the same primary reference, and
`should have known of the second reference ................... 57
`
`The earlier proceeding was far along when second
`Petition was filed ............................................................ 58
`
`d. Nearly a year had lapsed between petition filings .......... 59
`
`-iii-
`
`
`
`TABLE OF CONTENTS
`(cont'd.)
`
`Page No.
`
`
`
`e.
`
`Petitioner does not explain the purpose for its
`belated second attack ...................................................... 59
`
`f.
`
`Conclusion ...................................................................... 60
`
`2.
`
`Petitioner will be estopped from maintaining this
`proceeding ................................................................................. 61
`
`III. CONCLUSION .............................................................................................. 66
`
`
`
`
`-iv-
`
`
`
`TABLE OF AUTHORITIES
`
`
`
`Akamai Technologies, Inc. v. Limelight Networks, Inc.,
`IPR2017-00358, Paper 9 (P.T.A.B. May 2, 2017) ....................................... 56, 57
`
`Page No(s).
`
`
`Alarm.com Inc., v. Vivint, Inc.,
`IPR2016-01124, Paper 11 (P.T.A.B. Dec. 5, 2016) ..................................... 63, 64
`
`Apple Inc. v. Immersion Corp.,
`IPR2017-00896, Paper 10 (P.T.A.B. Aug. 17, 2017) ................................... 55, 60
`
`Apple Inc. v. Immersion Corp.,
`IPR2017-00897, Paper 11 (P.T.A.B. Aug. 17, 2017) .................................. 55, 60
`
`Blue Coat Systems, Inc., v. Finjan, Inc.,
`IPR2016-01441, Paper 14 (P.T.A.B. January 23, 2017) ............................. 64, 65
`
`Callaway Golf Co. v. Acushnet Co.,
`576 F.3d 1331 (Fed. Cir. 2009) .......................................................................... 62
`
`CSR, PLC v. Skullcandy, Inc.,
`594 F. App’x 672 (Fed. Cir. 2014) ..................................................................... 31
`
`In re Cuozzo Speed Technologies, LLC
`793 F.3d 1268 (Fed. Cir. 2015) .......................................................................... 62
`
`Cuozzo Speed Technologies, LLC v Lee
`579 U.S. ___ (2016) ...................................................................................... 61, 62
`
`Homeland Housewares, LLC, v. Whirlpool Corporation
`No. 16-1511, 2017 WL 3318764, (Fed. Cir. 2017) ........................................... 31
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 52
`
`In re McLaughlin,
`443 F.2d 1392 (C.C.P.A. 1971) .......................................................................... 50
`
`Mformation Techs., Inc. v. Research in Motion Ltd.,
`764 F.3d 1392 (Fed. Cir. 2014) .......................................................................... 30
`
`-v-
`
`
`
`TABLE OF AUTHORITIES
`(cont'd.)
`
`
`Toyota Motor Corporation v. Cellport Systems, Inc.,
`IPR2015-01422, Paper 8 (P.T.A.B. Dec. 16, 2015) ........................................... 64
`
`Page No(s).
`
`
`Xactware Sols., Inc. v. Eagle View Techs., Inc.,
`IPR2017-00034, Paper 9 (P.T.A.B. April 13, 2017) .......................................... 57
`
`OTHER AUTHORITIES
`
`35 U.S.C. § 313 .......................................................................................................... 1
`
`35 U.S.C. § 314 ........................................................................................ 2, 54, 55, 56
`
`35 U.S.C. § 315 ........................................................................................................ 61
`
`37 C.F.R. § 42.6 ....................................................................................................... 68
`
`37 C.F.R. § 42.24 ..................................................................................................... 67
`
`37 C.F.R. § 42.65 ..................................................................................................... 52
`
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`M.P.E.P. 2143.01(V) ................................................................................................ 37
`
`
`
`-vi-
`
`
`
`IPR2017-01399
`AT&T v. Voip-Pal
`
`EXHIBIT LIST
`
`Exhibit No.
`
`Description
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`Paper 1 in IPR2016-01201 (Petition for Inter Partes Review)
`
`Paper 17 in IPR2016-01201(Patent Owner Response to Petition)
`
`Paper 34 in IPR2016-01201 (Petitioner’s Reply to Patent Owner’s
`Response)
`
`Paper 40 in IPR2016-01201 (Patent Owner’s Motion to Exclude)
`
`Intentionally Left Blank
`
`Paper 44 in IPR2016-01201 (Petitioner’s Opposition to Patent
`Owner’s Motion to Exclude)
`
`Paper 47 in IPR2016-01201 (Patent Owner’s Reply to Petitioner’s
`Opposition to Motion to Exclude)
`
`2008
`
`Ex. 1006 in IPR2016-01201, Declaration of Dr. Henry H. Houh
`
`2009
`
`2010
`
`2011
`
`2012
`
`2013
`
`Ex. 2016 in IPR2016-01201, Declaration of Bill Mangione-Smith,
`Ph.D.
`
`Ex. 2043 in IPR2016-01201, Deposition Testimony of Dr. Henry
`Houh, January 25, 2017, Vol. I
`
`Ex. 2044 in IPR2016-01201, Deposition Testimony of Dr. Henry
`Houh, January 26, 2017, Vol. II
`
`Ex. 2047 in IPR2016-01201, Lucent Technologies Merlin
`Communications Systems, Centrex/PBX Connection, March 1985
`
`Ex. 2048 in IPR2016-01201, Telephone Features, Quick
`Reference Guide, Definity
`
`Exhibit List, Page 1
`
`
`
`IPR2017-01399
`AT&T v. Voip-Pal
`
`Exhibit No.
`
`Description
`
`2014
`
`2015
`
`2016
`
`2017
`
`Ex. 2049 in IPR2016-01201, Valder, “Understanding
`Telecommunications Networks,” The Institution of Engineering
`and Technology, 2006, pp. 38-39
`
`Paper 2 in IPR2016-01198 (Petition for Inter Partes Review)
`
`Ex. 1009 in IPR2016-01198, Declaration of Dr. Henry H. Houh
`
`Paper 3 in IPR2016-01201 (Notice of Filing Date Accorded)
`
`Exhibit List, Page 2
`
`
`
`IPR2017-01399
`Apple Inc v. Voip-Pal
`
`Pursuant to 35 U.S.C. § 313, 37 C.F.R. § 42.107 and the Notice of Filing
`
`Date Accorded to Petition (Paper 3), dated May 25, 2017, Voip-Pal.com, Inc.
`
`(“Voip-Pal”) hereby timely submits this Preliminary Response to the Petition for
`
`Inter Partes Review of U.S. 8,542,815 (the ’815 Patent) (“Petition,” Paper 1) by
`
`Apple Inc. (“Apple”).
`
`I.
`
`INTRODUCTION
`
`subsidiary of Patent Owner Voip‐Pal, was founded in 2004 with the vision that the
`
`Digifonica, a real party-in-interest to this proceeding and wholly owned
`
`Internet would be the future of telecommunications. As a startup company,
`
`Digifonica did not have existing customers or legacy systems. Instead, Digifonica
`
`had the opportunity to start from a blank slate. Digifonica employed top
`
`professionals in the open‐source software community. Three Ph.D.s with various
`
`engineering backgrounds held the top positions at the Company. Digifonica’s
`
`engineers developed an innovative software solution for routing communications,
`
`which by the mid-2000s, it implemented in four nodes spread across three
`
`geographically different regions. Digifonica also obtained multiple patents on the
`
`technology developed as part of its R&D efforts, including the ’815 Patent, which
`
`is the subject of this proceeding.
`
`Petitioner challenges Claims 3-4, 8-9, 11-12, 14-16, 30-31, 35-36, 38-39, 42-
`
`43, 61, 65-66, 81, 85-86, 100, and 104-105 of the ’815 Patent on two grounds:
`
`-1-
`
`
`
`IPR2017-01399
`Apple Inc v. Voip-Pal
`
`1.
`
`Claims 3-4, 8-9, 12, 14-16, 30-31, 35-36, 39, 42-43, 61, 66, 81, 86,
`
`100, and 105 are alleged to be 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. 6,760,324 to Scott
`
`et al. (“Scott”).
`
`2.
`
`Claims 11, 38, 65, 85, and 104 are alleged to be obvious under
`
`§103(a) over Chu ’684 in view of Scott and in further view of U.S. Patent
`
`Publication No. 2002/0122547 to Hinchey et al. (“Hinchey”).
`
`Petitioner also submitted a Declaration by declarant Henry H. Houh, Ph.D.
`
`Ex. 1005 (“Houh Declaration”).
`
`As Voip-Pal explains below, Petitioner’s arguments and assessments of the
`
`cited art fail to establish a reasonable likelihood that Petitioner would prevail as to
`
`its asserted grounds, as required under 35 U.S.C. § 314(a). Accordingly,
`
`institution of this proceeding should be denied as to both asserted grounds.
`
`Petitioner’s two grounds fail to provide all claim elements. In particular,
`
`none of the references disclose a “caller dialing profile” as recited in the claims,
`
`nor do the proposed combinations of references teach or suggest such a feature. In
`
`previous IPR proceedings IPR2016-01201 and IPR2016-01198 (“previous IPR
`
`proceedings”), Petitioner admitted that Chu ’684 uses the term “subscriber” to
`
`mean an enterprise rather than an individual, and that Chu ’684 does not disclose a
`
`“caller dialing profile.” Further, Petitioner points to no disclosure of a “caller
`
`-2-
`
`
`
`IPR2017-01399
`Apple Inc v. Voip-Pal
`
`dialing profile” in Scott or Hinchey and does not provide any reason why this
`
`claim element would be obvious when the references are combined.
`
`Additionally, Petitioner’s proposed manner of combining Chu ’684 with
`
`Scott would render
`
`the resulting combination
`
`inoperative.
`
` Specifically,
`
`Petitioner’s combination of Chu ‘684 with Scott would not work because it would
`
`reformat private numbers. Indeed, Petitioner failed to refute these same arguments
`
`in the previous IPR proceedings, IPR2016-01201 and IPR2016-01198. An
`
`operative combination of Chu ‘684 with Scott would need to reformat only
`
`numbers to PSTN destinations after call classification, but such a combination
`
`would not lead to the challenged claims.
`
`Petitioner also fails to articulate a valid reason to combine the cited
`
`references and instead relies on an unsupported alleged deficiency in Chu ’684.
`
`Again, Petitioner failed to dispute this fact when Patent Owner raised it in the
`
`previous IPR proceedings, IPR2016-01201 and IPR2016-01198.
`
` Finally,
`
`Petitioner has misconstrued the claims of the ’815 Patent as not requiring an order
`
`between steps [1b] and [1d]. According to Petitioners’ obviousness theory, Chu
`
`‘684’s alleged disclosure of step [1d] occurs before Chu 684’s alleged disclosure
`
`of step [1b]. However, the language of the claim clearly links a result of step [1b]
`
`as being used by step [1d], such that [1d] must occur after step [1b].
`
`-3-
`
`
`
`IPR2017-01399
`Apple Inc v. Voip-Pal
`
`II. ARGUMENT
`
`A.
`
`Introduction to Claimed Subject Matter
`
`The Petition is largely based on an analysis of Claim 1. In Petitioner’s claim
`
`chart, the other independent claims upon which the challenged claims depend,
`
`Claims 28, 54, 74 and 93, cite back to the claim chart for Claim 1. See Petition at
`
`32-34, 39-40, 41-43 and 44-46. Claim 1 recites:
`
`1. [1p] 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:
`[1a] in response to initiation of a call by a calling
`subscriber, receiving a caller identifier and a callee identifier;
`[1b] locating a caller dialing profile comprising a
`username associated with the caller and a plurality of calling
`attributes associated with the caller;
`[1c] determining a match when at least one of said
`calling attributes matches at least a portion of said callee
`identifier;
`[1d] classifying the call as a public network call when
`said match meets public network classification criteria and
`classifying the call as a private network call when said match
`meets private network classification criteria;
`[1e] when the call is classified as a private network call,
`producing a private network routing message for receipt by a
`
`-4-
`
`
`
`IPR2017-01399
`Apple Inc v. Voip-Pal
`
`call controller, said private network routing message identifying
`an address, on the private network, associated with the callee;
`[1f] when the call is classified as a public network call,
`producing a public network routing message for receipt by the
`call controller, said public network routing message identifying
`a gateway to the public network.
`
`By way of technology background, a public switched telephone network
`
`(PSTN) uses traditional telephone technology, including dedicated telephone lines
`
`from a service provider to transmit calls over a circuit-switched network. Voice
`
`over Internet protocol (VoIP) is used for the delivery of digital voice
`
`communications and multimedia sessions over Internet protocol (IP) networks,
`
`such as the Internet. Digital information delivered over IP networks is packetized,
`
`and transmission occurs using IP packets over a packet-switched network.
`
`The method of Claim 1 is directed to classification of telecommunications
`
`calls. The method allows a call to be classified for routing as a “public network
`
`call” or as a “private network call.” The method determines whether a call is a
`
`public or private network call based on whether a match of at least one calling
`
`attribute and at least a portion of the callee identifier, meets certain network
`
`criteria. For example, a call to a callee may be classified for routing to a traditional
`
`circuit switched network (e.g., the PSTN), or to a packet switched network (e.g.,
`
`-5-
`
`
`
`IPR2017-01399
`Apple Inc v. Voip-Pal
`
`the Internet), based on a calling attribute matching at least a portion of callee
`
`information. The method of Claim 1 does not evaluate the callee identifier in
`
`isolation, but matches the callee identifier based on attributes in the caller’s dialing
`
`profile. Each caller has a dialing profile including a plurality of calling attributes
`
`and at least one caller attribute is matched with at least a portion of a callee
`
`identifier, e.g., a callee phone number, before the system makes a network
`
`classification decision, e.g., PSTN or Internet routing.
`
`B. Grounds 1 and 2 Fail Because None of the References Disclose a Caller
`Dialing Profile
`
`None of the references disclose a “caller dialing profile” as recited in all of
`
`the independent claims upon which the challenged claims depend. Claims 1 and
`
`28 recite “a caller dialing profile comprising a username associated with the caller
`
`and a plurality of calling attributes associated with the caller,” Claim 54 recites “a
`
`caller dialing profile comprising a plurality of calling attributes associated with the
`
`caller,” and Claims 74 and 93 recite “a dialing profile”, wherein “each dialing
`
`profile associates a plurality of calling attributes with a respective subscriber.”
`
`The Petition fails to establish that Chu ’684 discloses such a claim element
`
`and further does not cite to any disclosure of such features in Scott or Hinchey. In
`
`particular, the claims require that both the profile and the attributes are caller-
`
`specific (“caller dialing profile”, “attributes associated with the caller”). However,
`
`-6-
`
`
`
`IPR2017-01399
`Apple Inc v. Voip-Pal
`
`the Petition does not identify a profile or attributes that are caller-specific. The
`
`Petition argues that: “Chu ’684 discloses using attributes of the caller (e.g., the
`
`caller’s dial plan) and information identifying the callee (e.g., dialed digits) to
`
`determine whether a call should be terminated to a callee on the private packet
`
`network or on the public PSTN ….” Petition at 15. In the claim chart, the Petition
`
`points to the “subscriber’s dial plan” of Chu ’684 and “a dialing plan that emulates
`
`the dialing plan provided by the local telephone company in that area” in Scott.
`
`Petition at 21-22.
`
`However, as discussed below, Chu ’684 does not disclose a caller-specific
`
`dial plan, only an enterprise dial plan, and Petitioner and its Declarant have
`
`admitted this in previous IPR proceedings. Further, neither Scott nor Hinchey
`
`disclose any caller-specific attributes, and neither the Petition nor Dr. Houh even
`
`assert that they do. Thus, the Petition’s only basis for asserting this claim element
`
`is mischaracterizing the term “subscriber” in Chu ’684. Because the Petition fails
`
`to cite to any attributes “associated with the caller” and has not explained how the
`
`enterprise dial plans of Chu ‘684 would render that feature obvious, the Petition
`
`fails to carry its burden of demonstrating obviousness of the challenged claims.
`
`-7-
`
`
`
`IPR2017-01399
`Apple Inc v. Voip-Pal
`
`1.
`
`Chu ’684 Does Not Disclose A Caller Dialing Profile As Recited In
`The Claims
`
`a. Overview of Chu ’684
`
`Chu ‘684 discloses a network architecture for providing a voice over IP
`
`virtual private network (VoIP VPN) service to an organization (“subscriber”)
`
`having multiple IP-based phone systems, or private branch exchanges (IP-PBXs),
`
`and a method of connecting all of the IP-PBXs of the organization into a single
`
`logical network. Chu ’684 at 1:44-46, 3:52-56. The organization typically
`
`“subscribe[s] to many services” (e.g., both data and voice services) from the same
`
`service provider (SP). Id. at 5:3-6. FIG. 2 illustrates a subscribing customer’s IP-
`
`PBX communication system with multiple phones and a server 110 located at the
`
`subscribing customer’s premises 105 and configured to communicate with a soft-
`
`switch 220 and packet switch 210 located at the SP’s central office 205:
`
`
`
`-8-
`
`
`
`IPR2017-01399
`Apple Inc v. Voip-Pal
`
`While many organizations, each with multiple locations, may share the SP’s
`
`network infrastructure (e.g., soft-switch 220 and packet switch 210), the system of
`
`Chu ’684 allows each organization to have its own “dial plan” and allows calls to
`
`be routed internally to the IP-PBX, to a different IP-PBX, and to the public
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`switched telephone network (PSTN). Chu ’684 at 12:60-67 and 8:65-9:1.
`
`b.
`
`The “Subscriber” Dial Plans in Chu ’684 Are Enterprise
`Dial Plans
`
`Chu ’684 uses the term “subscriber” to refer to an enterprise or corporate
`
`entity that controls one or more local IP-PBX systems, and not to an individual
`
`person. When Chu ’684 refers to an individual, it uses the term “user.” All of Chu
`
`’684’s calling examples disclose that the “user” of an IP phone places or receives
`
`calls: the user “picks up the handset” (8:55-56), receives the dial tone (8:58-59),
`
`provides the “dialed digits” (8:60-63), is “alerted” of an incoming call (11:1-2),
`
`and “picks up” the phone (11:13-17).
`
`In contrast, Chu ’684 explains that a “subscriber” is associated with multiple
`
`IP-PBX systems, multiple IP addresses and multiple phones:
`
`The VoIP VPN service connects all the IP-PBXs of a subscriber into a
`single logical network. In one embodiment, the present invention
`provides a virtual private network service where subscribers can use
`their own internal dial plan. [...] Similarly, a subscriber can use their
`own IP address assignment plan in assigning IP addresses to the IP-
`PBX server and the IP phones.
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`Chu ’684 at 3:55-58, 61-64 emphasis added.
`
`This quote demonstrates that each “subscriber” (i.e., enterprise) controls not
`
`just a single phone, but rather an entire “virtual private network” which can include
`
`multiple inter-connected IP-PBX systems, each comprising an “IP-PBX server”
`
`and “IP phones” (plural) that are assigned respective “IP addresses” (plural) based
`
`on the subscriber’s (i.e., enterprise’s) “own IP address assignment plan”. See also
`
`id. at 12:55-57.
`
`FIG. 2 of Chu ’684 illustrates one such IP-PBX system at one particular
`
`subscriber location (i.e., customer premises 105), the IP-PBX system including a
`
`server 110 and multiple phones 101-103. Id. at FIG. 2 (below), 4:24-33.
`
`Moreover, Chu ’684 repeatedly discloses that a single “subscriber” [i.e.
`
`enterprise] controls multiple “locations” (like Customer Premises 105), each
`
`
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`location having
`
`its own respective IP-PBX
`
`interconnected via
`
`the SP’s
`
`infrastructure to other IP-PBXs to form an enterprise-wide corporate network. Id.
`
`at 1:44-45; 3:66-67 (“[c]onnecting IP-PBXs together to form a corporate
`
`network”); 12:38-39 (“Multiple locations from the same subscriber may be
`
`connected to the same packet switch 210”); 12:59-60 (“establishing a call between
`
`two IP phones at two locations of the same subscriber”); 12:64-65; and 15:22-23
`
`(“FIG. 15 depicts... a call between two locations on the same subscriber...”).
`
`Thus, it is clear that the term “subscriber” in Chu ’684 represents an
`
`enterprise that controls all of the phones within an IP-PBX network of the
`
`enterprise; it does not refer to an individual caller. Chu ’684’s disclosure that each
`
`“subscriber” (i.e. enterprise) has its own “internal dial plan” (id. at 3:58), is not a
`
`disclosure of a user-specific “dial plan”, and is not a disclosure that any user-
`
`specific information is contained in a dial-plan. In fact, there is no disclosure or
`
`suggestion in Chu ’684 that a subscriber (i.e., enterprise) dial plan would contain
`
`any caller-specific information. Rather, Chu ’684 discloses that “subscribers” (i.e.,
`
`enterprises) have multiple IP phones sharing a common “dial plan.”
`
`c.
`
`Petitioner Has Admitted That Chu ’684 Uses the Word
`“Subscriber” To Mean an Enterprise Rather Than an
`Individual Caller
`
`In previous IPR proceedings IPR2016-01201 and IPR2016-01198, Petitioner
`
`and Petitioner’s Declarant originally misinterpreted the term “subscriber” in Chu
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`-11-
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`’684 as referring to an individual caller or user, which is how the term is used in
`
`the ’815 Patent. The Petitions in those previous proceedings and the Declaration
`
`of Petitioner’s Declarant make no reference to any difference in terminology,
`
`despite quoting from both Chu ’684 and the ’815 Patent. The Petition and
`
`Declaration in those proceedings are flawed because Chu ’684 is analyzed based
`
`on this misunderstanding. See Ex. 2001, Ex. 2008, Ex. 2015, Ex. 2016, Ex. 2002
`
`at 59-64.
`
`During his deposition in the previous IPR proceedings, Petitioner’s
`
`Declarant, Dr. Houh, realized his error regarding the meaning of “subscriber” in
`
`Chu ’684, and acknowledged that “subscriber” in Chu ’684 means “enterprise”
`
`whereas the ’815 Patent uses the term “subscriber” to mean “individual user”:
`
`A. Okay. I see that. So I think there is --
` part of the confusion may arise out of the fact that
`the '815 patent also uses the term "subscriber," and
`the '684 patent uses the term "subscriber."
`So -- and they use them in -- I -- I
`suppose, different senses, and -- and that the '815
`patent uses the term "subscriber" as a -- as an
`individual user, and the discussion in '684 does talk
`about subscriber as an enterprise.
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`Ex. 2010 at 16:11-19. See also Ex. 2011 at 221:20-222:4,
`
`220:17-24, 178:17-181:4, 223:8-224:8, 215:20-216:6, 214:1-215:19;
`217:10-23 and 218:1-220:9.
`Dr. Houh’s admissions confirm that when Chu ’684 makes reference to a
`
`“subscriber’s dial plan,” this means an enterprise’s dial plan, not a user’s dial plan.
`
`Petitioner also admitted in their Opposition To Patent Owner’s Motion To Exclude
`
`in the previous IPR proceedings, that Dr. Houh had acknowledged the difference in
`
`terminology, stating that Dr. Houh was “explaining that the Challenged Patent and
`
`Chu ’684 use ‘subscriber’ in ‘different senses’” and was “confirming enterprise
`
`meaning of ‘subscriber’ in Chu ’684.” Ex. 2006 at 11.
`
`Petitioner then asserts that “Petitioner’s reliance on these disparate uses of
`
`‘subscriber’ and Dr. Houh’s opinions regarding the same has been entirely
`
`consistent throughout this proceeding” ( Id. at 12, emphasis added), but this is a
`
`complete distortion of the facts. Dr. Houh’s Declaration filed in the previous IPR
`
`proceedings is not consistent with his testimony during deposition and subsequent
`
`statements by Petitioner. There is absolutely no acknowledgement in Dr. Houh’s
`
`Declaration that any difference in terminology exists, despite him using the term
`
`“subscriber” in his report (purportedly adopting the ’815 Patent’s usage of that
`
`term) while also quoting the use of the word “subscriber” in Chu ’684 (which Dr.
`
`Houh later admitted had a different meaning). Ex. 2008. There is no credible
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`-13-
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`explanation for the interchangeable use of two disparate meanings of subscriber
`
`other than that Dr. Houh was unaware of the difference in meaning at the time.
`
`Accordingly, while Petitioner admits that Dr. Houh used the terminology of
`
`the ’815 Patent “adopted for clarity” in his deposition, it is clear from the Petition
`
`and Declaration that Dr. Houh conflated (and failed to clarify) these disparate
`
`meanings of “subscriber” before this issue was pointed out by the Patent Owner.
`
`d.
`
`Petitioner Has Admitted That Chu ’684 Does Not Disclose a
`Caller Dialing Profile
`
`In the previous IPR proceedings IPR2016-01201 and IPR2016-01198,
`
`Petitioner admitted in its Reply that Chu ’684 does not disclose caller dialing
`
`profiles. After realizing that they had misinterpreted Chu ’684 in the original
`
`Petition, Petitioner altered their original position in the Petition and stated that it
`
`was no longer relying on Chu ’684 for caller-specific information stored in dial
`
`plans, as they had originally alleged, but was relying instead on the secondary
`
`references for caller-specific information. Petitioner stated that:
`
`Patent Owner’s second bucket of criticisms is premised on the idea
`that Chu ‘684 does not teach user-specific dial plans. See, e.g., Paper
`17, Response at 59-64. This is a subtle shifting of attention away from
`the relevant question because the proposed combinations do not rely
`on the enterprise dial plans discussed in Chu ‘684. Rather, the
`combinations rely on the user-specific profiles taught by the
`
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`Secondary References. Indeed, this is the principle [sic] purpose of
`making the combination in the first place.
`Ex. 2003 at 23 (emphasis omitted and added). See also Ex.
`2001 at 14, 21-22.
`
`
`Further, Petitioner confirmed in their Opposition To Patent Owner’s Motion
`
`To Exclude that the secondary references were being used for caller-specific
`
`information, by stating that: “Petitioner’s obvious [sic] combinations rely on the
`
`caller specific profiles taught in the Secondary References ….” Ex. 2006 at 12.
`
`This implicitly admits that Chu ‘684 does not disclose caller-specific information.
`
`Petitioner also admitted that Chu ’684 does not disclose caller-specific
`
`profiles by abandoning their original line of reasoning from the Petition and
`
`adopting a different one with respect to how Chu ’684 operates. Specifically, in
`
`the previous IPR proceedings, Petitioner’s manner for combining
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