UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VOIP-PAL.COM, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01399
`Patent 8,542,815 B2
`____________
`
`
`
`Before JOSIAH C. COCKS, JENNIFER MEYER CHAGNON, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`
`
` Paper No. 6
`Trials@uspto.gov
`571-272-7822 Entered: November 20, 2017
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
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`IPR2017-01399
`Patent 8,542,815 B2
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`I. INTRODUCTION
`
`Apple Inc. (“Petitioner”) filed a Petition for inter partes review of
`claims 3, 4, 8, 9, 11, 12, 14–16, 30, 31, 35, 36, 38, 39, 42, 43, 61, 65, 66, 81,
`85, 86, 100, 104, and 105 of U.S. Patent No. 8,542,815 B2 (Ex. 1001, “the
`’815 patent”). Paper 1 (“Pet.”). Voip-Pal.com, Inc. (“Patent Owner”) filed a
`Preliminary Response. Paper 5 (“Prelim. Resp.”).
`We have authority to determine whether to institute inter partes
`review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Upon consideration of
`the Petition and the Preliminary Response, we conclude that the information
`presented does not show reasonable likelihood that Petitioner would prevail
`in establishing the unpatentability of claims 3, 4, 8, 9, 11 12, 14–16, 30, 31,
`35, 36, 38, 39, 42, 43, 61, 65, 66, 81, 86, 100, 104, and 105 of the
`’815 patent.
`
`A. Related Matters
`The parties identify the following district court proceedings in which
`the ’815 patent has been asserted: Voip-Pal.com, Inc. v. Apple, Inc., Case
`No. 2-16-cv-00260 (D. Nev.); Voip-Pal.com, Inc. v. Verizon Wireless
`Services, LLC, Case No. 2-16-cv-00271 (D. Nev.); Voip-Pal.com, Inc. v.
`Twitter, Inc., 2:-16-cv-00260 (D. Nev. Feb. 9, 2016). Paper 4, 1; See
`Pet. 56–57. Petitioner also has filed a petition for inter partes review of
`claims of the ’815 patent in IPR2016-01201, as well as petitions in
`connection with related U.S. Patent No. 9,179,005 (“the ’005 patent”) in
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`IPR2016-0198 and IPR2017-01398.1 Patent Owner further identifies the
`following proceedings to which Petitioner is not a party:
`IPR2016-01382, challenging the ’815 patent;
`IPR2016-01383, challenging the ’005 patent; and
`IPR2016-01384, challenging the ’005 patent.
`
`Paper 4, 1.
`
`B. The ’815 Patent
`The ’815 patent is directed to classifying a call as a public network
`call or a private network call and producing a routing message based on that
`classification. Ex. 1001, Abstract. Figure 7 of the ’815 patent is shown
`below.
`
`
`
`
`1 Trial was instituted in each of IPR2016-01198 and IPR2016-01201 on
`November 21, 2016. A decision regarding institution of trial in IPR2017-
`01398 is being mailed concurrently with this decision.
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`Figure 7 above illustrates a routing controller that facilitates communication
`between callers and callees. Id. at Fig. 7, 14:24–25, 17:16–17. As shown in
`Figure 7, above, routing controller (RC) 16 includes RC processor circuit
`200, which in turn includes processor 202, program memory 204, table
`memory 206, buffer memory 207, and I/O port 208. Id. at 17:17–22.
`Routing controller 16 queries database 18 (shown in Figure 1) to produce a
`routing message to connect caller and callee. Id. at 14:10–17, 14:24–34.
`Program memory 204 includes blocks of code for directing processor 202 to
`carry out various functions of the routing controller. Id. at 17:38–40. Those
`blocks of code include RC request message handler 250, which directs the
`routing controller to produce the routing message. Id. at 17:40–44.
`In response to a calling subscriber initiating a call, the routing
`controller of the ’815 patent:
`receiv[es] a callee identifier from the calling subscriber, us[es]
`call classification criteria associated with the calling subscriber
`to classify the call as a public network call or a private network
`call[,] and produc[es] a routing message identifying an address
`on the private network, associated with the callee[,] when the call
`is classified as a private network call and produc[es] a routing
`message identifying a gateway to the public network when the
`call is classified as a public network call.
`Id. at 14:24–34.
`Figures 8A through 8D of the ’815 patent illustrate a flowchart of an
`RC request message handler executed by the RC processor circuit. Id. at
`10:62–63. Figure 8B is reproduced below.
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`Figure 8B above illustrates steps for performing checks on the callee
`identifier. Id. at Fig. 8B, 19:45–49. Blocks 257, 380, 390, 396, 402 in
`Figure 8B above effectively “establish call classification criteria for
`classifying the call as a public network call or a private network call.” Id. at
`22:48–51. For example, block 402 “directs the processor 202 of FIG. 7 to
`classify the call as a private network call when the callee identifier complies
`with a predefined format, i.e. is a valid user name and identifies a subscriber
`to the private network . . . .” Id. at 22:51–60. Block 269 also classifies the
`call as public or private, depending on whether the callee is a subscriber to
`the system. Id. at 22:51–23:8, 20:14–24; see also id. at 18:55–19:22.
`
`C. Illustrative Claims
`Each of claims 3, 4, 8, 9, 11, 12, 14–16, 30, 31, 35, 36, 38, 39, 42, 43,
`61, 65, 66, 81, 85, 86, 100, 104, and 105 is a dependent claim. Claim 3
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`depends from claim 1. Claims 1 and 3 are illustrative and are reproduced
`below:
`
`A process for operating a call routing controller to
`1.
`facilitate communication between callers and callees in a system
`comprising a plurality of nodes with which callers and callees are
`associated, the process comprising:
`in response to initiation of a call by a calling subscriber,
`receiving a caller identifier and a callee identifier;
`locating a caller dialing profile comprising a username
`associated with the caller and a plurality of calling attributes
`associated with the caller;
`determining a match when at least one of said calling
`attributes matches at least a portion of said callee identifier;
`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;
`when the call is classified as a private network call,
`producing a private network routing message for receipt by a call
`controller, said private network routing message identifying an
`address, on the private network, associated with the callee;
`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.
`3.
`The process of claim 1 wherein determining said match
`comprises determining said match when said callee identifier
`includes a portion that matches an International Dialing Digit
`(IDD) associated with said caller dialing profile.
`
`Id. at 36:14–38, 42–45.
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`D. Asserted Grounds of Unpatentability
`Petitioner contends that claims 3, 4, 8, 9, 11, 12, 14–16, 30, 31, 35,
`36, 38, 39, 42, 43, 61, 65, 66, 81, 85, 86, 100, 104, and 105 of the
`’815 patent are unpatentable based on the following grounds:
`
`References
`
`Basis
`
`Chu ’6842 and
`Scott3
`Chu ’684, Scott,
`and Hinchey4
`
`35 U.S.C. § 103(a)
`
`35 U.S.C. § 103(a)
`
`Challenged Claims
`3, 4, 8, 9, 12, 14–16, 30, 31, 35,
`36, 39, 42, 43, 61, 66, 81, 86,
`100, and 105
`11, 38, 65, 85, and 104
`
`
`
`II. ANALYSIS
`
`A. Claim Construction
`In an inter partes review, we construe claim terms in an unexpired
`patent according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016)
`(upholding the use of the broadest reasonable interpretation standard).
`Consistent with the broadest reasonable construction, claim terms are
`presumed to have their ordinary and customary meaning as understood by a
`person of ordinary skill in the art in the context of the entire patent
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`
`
`2 U.S. Patent No. 7,486,684 B2, issued Feb. 3, 2009 (Ex. 1003, “Chu ’684”)
`3 U.S. Patent No. 6,760,324 B1, issued July 6, 2004 (Ex. 1004, “Scott”)
`4 U.S. Patent Application Publication No. 2002/0122547 A1, published
`Sept. 5, 2002 (Ex. 1006, “Hinchey”)
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`2007). An inventor may provide a meaning for a term that is different from
`its ordinary meaning by defining the term in the specification with
`reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994).
`Petitioner proposes constructions for the means-plus-function
`limitations of claims 28, 34, 41, 93, and 100. Pet. 7–12; see 37 C.F.R.
`§ 42.104(b)(3) (requiring a petition to set forth “[w]here the claim to be
`construed contains a means-plus-function or step-plus-function limitation as
`permitted under 35 U.S.C. 112(f), . . . the specific portions of the
`specification that describe the structure, material, or acts corresponding to
`each claimed function”). Patent Owner does not dispute any of Petitioner’s
`proposed claim constructions. For purposes of this Decision, we determine
`that it is unnecessary to address the claim constructions proposed by
`Petitioner.
`Patent Owner, however, has presented arguments that require us to
`consider whether certain steps of the challenged claims must be performed
`in a specific order. See Prelim. Resp. 30–33. More particularly, claim 1
`requires “locating a caller dialing profile” that includes “a plurality of calling
`attributes associated with the caller,” then “determining a match when at
`least one of said calling attributes matches at least a portion of” a “callee
`identifier.” The claim goes on to dictate that the call is classified as either a
`public network call or a private network call based on that match. Patent
`Owner contends that, because the required “calling attributes” are consulted
`to determine how a message is routed, this necessarily means the act of
`locating a caller profile that incorporates the calling attributes must have
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`occurred prior to the step of determining a match using based on those
`calling attributes. See id.
`In considering whether the steps of a claim must be performed in the
`order written, the first place to look is the claim language itself. See Altris,
`Inc. v. Symantec Corp., 318 F.3d 1363, 1369–70 (Fed. Cir. 2003). In
`claim 1, for instance, the calling attributes of a caller dialing profile that are
`consulted for the purpose of determining message routing must necessarily
`have been ascertained prior to such message routing determination. Because
`the function of a particular component in a prior step is referenced in a
`subsequent step, it is the logical and natural inference that the steps are
`ordered with respect to one another. See Mantech Envtl. Corp. v. Hudson
`Envtl. Servs., Inc., 152 F.3d 1368, 1375–76 (Fed. Cir. 1998) (holding that
`the steps of a method claim had to be performed in their written order
`because each subsequent step referenced something logically indicating the
`prior step had been performed). Petitioner does not present arguments
`regarding the ordering of claim steps. We conclude that, for claim 1, the
`pertinent steps discussed above occur in the order in which they appear in
`the claims. We also reach that conclusion for each of the other independent
`claims involved in this proceeding, all of which include a similar
`requirement.
`We have given all other terms their ordinary and customary meaning
`and conclude that it is unnecessary, for purposes of this Decision, to make
`any of those meanings explicit as the terms are not in dispute. See Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)
`(“[O]nly those terms need be construed that are in controversy, and only to
`the extent necessary to resolve the controversy.”).
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`B. Principles of Law
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness.5 See Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966). We analyze the asserted grounds of unpatentability in accordance
`with these principles.
`
`C. Level of Ordinary Skill in the Art
`Petitioner asserts that a person of ordinary skill in the art would have
`at least a bachelor’s degree in electrical engineering, or in a
`related field, with at least 2–4 years of industry experience in
`designing or developing packet-based and circuit-switched
`systems. Additional industry experience or technical training
`may offset less formal education, while advanced degrees or
`additional formal education may offset lesser levels of industry
`experience.
`
`Pet. 12–13 (citing Ex. 1005 ¶ 19). In connection with this proceeding,
`Patent Owner does not propose, or otherwise rely upon, an alternative level
`of ordinary skill in the art. See generally Prelim. Resp. For purposes of this
`Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill
`
`
`5 The parties have not presented any objective evidence of non-obviousness.
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`in the art. The level of ordinary skill in the art further is reflected by the
`prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re
`Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`
`D. Asserted Obviousness over Chu ’684 and Scott
`Petitioner contends that claims 3, 4, 8, 9, 12, 14–16, 30, 31, 35, 36,
`39, 42, 43, 61, 66, 81, 86, 100, and 105 of the ’815 patent are unpatentable
`under 35 U.S.C. § 103(a) as obvious over Chu ’684 and Scott. Pet. 6, 13–
`48. Patent Owner disagrees with Petitioner’s contention. See generally
`Prelim. Resp.
`
`1. Summary of Chu ’684
`Chu ’684 discloses a communications system for managing calls in an
`Internet Protocol (IP) Virtual Private Network (VPN) and calls to the public
`switched telephone network (PSTN). Ex. 1003, Title, Abstract, 2:51–3:3,
`4:13–14. Figure 2 of Chu ’684 is shown below.
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`Figure 2 above depicts a portion of a communications system according to
`an embodiment of Chu ’684’s invention. Id. at 3:14–15. As shown above in
`Figure 2, communications system 200 includes customer premises 105
`having IP phones 101, 102, and 103 and server 110 connected to a voice
`over IP (VoIP)-VPN Service Provider (SP) at SP central office 205. Id. at
`4:24–28. Connection 145 between customer premises 205 and SP central
`office 205 is made via one or more routers 140. Id. at 4:28–30. Server 110
`communicates with soft-switch 220 with an agreed-upon signaling protocol
`such as Session Invitation Protocol (SIP). Id. at 4:49–52. Soft-switch 220
`sends appropriate commands to packet switch 210. Packet switch 210 is a
`special media gateway that accepts voice packets from an incoming interface
`and switches these packets to an outgoing interface. Id. at 4:36–39. Soft-
`switch 220 “is the intelligence of the system. . . . For example, it keeps track
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`of the VPN that a location belongs to, the dial plans of the subscribers, . . .
`and the like.” Id. at 4:59–63.
`Chu ’684’s VoIP network carries both on-net (within the same VoIP
`VPN) and off-net (to PSTN) calls. Id. at 5:17–19. Chu ’684 discloses that
`an “On-Net Call” sequence begins when a user picks up the handset at IP
`phone 101. Id. at 8:39–40, 8:55–56. According to Chu ’684, IP phone 101
`collects dialed digits from the user and sends them to server 110. Id. at
`8:62–64. Chu ’684 discloses that “after receiving all the dialed digits from
`the phone 101, server 110 consults its dial plan to determine whether the call
`is local, to another on-net phone, or to a phone that is on the PSTN.” Id. at
`8:65–9:1. In this on-net example, the call is another on-net phone in another
`location. According to Chu ’684, server 110 sends an SIP invite message to
`soft-switch 220 at central office 205. Id. at 9:2–4. Chu ’684 discloses that
`soft-switch 220 “consults the dial plan for this subscriber” based on the ID
`of server 110. Id. at 9:30–33. From the database associated with the dial
`plan, soft-switch 220 determines, among other things, the IP address of the
`egress packet switch. Id. at 9:34–38. Chu ’684 discloses that soft-
`switch 220 sends an SIP invite message to the next soft-switch, the SIP
`message including information such as that “the call is an on-net call for a
`particular VPN.” Id. at 9:50–58.
`Figure 13 of Chu ’684 illustrates a configuration for establishing
`IP-VPN service to the PSTN. Id. at 13:1–3. According to Chu ’684, for an
`outgoing call from IP phone 101, the operation is very similar to that of an
`intra-net call. Id. at 13:13–15. Chu ’684 states: “From the dialed digits (of
`a destination phone that is being called, PSTN phone 1301), ingress soft-
`switch 220[] determines that this call is for the PSTN.” Id. at 13:15–18.
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`From the same dialed digits, the soft-switch also determines egress PSTN
`gateway 1302 and its controlling soft-switch 1304. Id. at 13:18–20.
`
`2. Summary of Scott
`Scott discloses “[a] method, system, and computer program product
`
`that provides voice over the Internet communication.” Ex. 1004, 2:41–42.
`Scott’s Figure 2 is reproduced below.
`
`Figure 2 above depicts “a diagram of a VoIP system.” Id. at 3:12–13.
`“VoIP system 200 . . . allows traffic (e.g. voice or fax date) originating on a
`circuit-switched network to be carried over a packet-switched network” and
`“acts as a bridge between a public switch telephone network [PSTN] 205
`and an IP network 215.” Id. at 6:23–29. Scott describes the operation of
`
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`VoIP system 200 as follows:
`[V]oice and data traffic can originate at any type of terminal
`equipment at PSTN 205. For example, a call can be placed on
`an ordinary telephone 201 or 202. A call can be placed from an
`ordinary telephone 203 using a prepaid service and autodialer
`204. Calls can also originate from a speaker or conference-type
`phone 206 through a private branch exchange (PBX) 207. Such
`calls can terminate at an IP phone 293 or an ordinary telephone
`291, 292.
`
`Id. at 6:30–37. Based on that above description, Scott states that a person of
`ordinary skill in the art would know that any type of computer or telephone
`equipment can be used to originate and terminate voice calls over the VoIP
`system 200. Id. at 6:38–42.
`
`3. Discussion–Chu ’684 and Scott
`Each of the dependent claims challenged in this proceeding ultimately
`depends from one of independent claims 1, 28, 54, 74, and 93. We focus,
`initially, on claim 1. That claim includes the following features:
`in response to initiation of a call by a calling subscriber,
`receiving a caller identifier and a callee identifier;
`locating a caller dialing profile comprising a username
`associated with the caller and a plurality of calling attributes
`associated with the caller;
`determining a match when at least one of said calling
`attributes matches at least a portion of said callee identifier;
`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;
`when the call is classified as a private network call,
`producing a private network routing message for receipt by a call
`controller, said private network routing message identifying an
`address, on the private network, associated with the callee;
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`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.
`
`Ex. 1001, 36:18–38.
`Thus, claim 1 requires that at least one “calling attribute” associated
`with a caller is evaluated to determine if that calling attribute matches a
`portion of a callee identifier. The call is classified as a public network call
`or a private network call based on whether that match meets public or
`private network classification criteria. Either a private network routing
`message is produced for receipt by the call controller identifying a private
`network address associated with the callee, or a public network routing
`address is produced which identifies a gateway to the public network.
`a. Issues pertaining to ordering of steps
`As discussed above, we construe all the challenged claims of the ’815
`patent as requiring an act of locating a caller dialing profile comprising a
`plurality of calling attributes associated with a caller, and then evaluating
`those attributes in producing a routing message. See supra (§ II.A. Claim
`Construction). Correspondingly, Patent Owner contends Petitioner has not
`accounted properly for the step ordering required by the claims in its
`grounds of unpatentability. See Prelim. Resp. 30–33. In conjunction with
`the step in claim 1 of locating a caller dialing profile comprising a plurality
`of calling attributes associated with a caller, Petitioner points to Chu ’684’s
`disclosure at column 9, lines 30–33. Pet. 17–18. This portion of Chu ’684
`concerns its disclosed “step 610” and reads: “[a]t step 610, upon receipt of
`the SIP “invite” message from the server 110, the soft-switch 220 consults
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`the dial plan for this subscriber. The dial plan to use can be determined from
`the ID of the server 110.” Ex. 1006, 9:30–33.
`Petitioner subsequently relies on Chu ’684’s disclosure at column 8,
`line 65 through column 9, line 1, pertaining to Chu ’684’s “step 608” to
`account for the act of “determining a match” and “classifying the call” based
`on that match to determine whether public or private network criteria have
`been met. Pet. 22–23. Nevertheless, the performance of Chu ’684’s
`“step 608” occurs temporally before the performance of “step 610.” That
`Petitioner relies on Chu ’684’s “step 610” for “locating a caller dialing
`profile,” and then relies on Chu ’684’s prior “step 608” for the subsequent
`claim steps of “determining a match” and “classifying the call” is at odds, or
`is inconsistent, with the step ordering that is required by the claims of the
`’815 patent. In that respect, we agree with Patent Owner that Petitioner’s
`reliance on “Chu ’684’s ‘classifying’ step 608 at the server [which] is
`performed before the ‘locating’ step 610,” is an order that is not
`commensurate with the required sequence of steps in claim 1. See Prelim.
`Resp. 32–33. The same deficiency also emerges in Petitioner’s analysis of
`independent claims 28, 54, 74, and 93. That deficiency likewise manifests
`with respect to each of claims 3, 4, 8, 9, 11, 12, 14–16, 30, 31, 35, 36, 39,
`42, 43, 61, 66, 81, 86, 88, 100, and 105, which depend, directly or indirectly,
`from one of claims 1, 28, 54, 74, and 93.
`b. Proposed reasons to combine
`There also is disagreement between the parties as to whether
`Petitioner has shown adequate reasons to combine the teachings of Chu ’684
`and Scott. Petitioner offers the following as reasoning that purportedly
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`would have prompted a skilled artisan to seek to modify Chu ’684 based on
`Scott’s disclosure:
`It would have been obvious to a POSITA to modify the
`system described by Chu ’684 with the specific dialed digit
`reformatting teachings of Scott. Given that the system of Chu
`’684 already contains all the infrastructure needed to support
`such reformatting, the modification to Chu ’684 would be
`straightforward, not requiring undue experimentation, and would
`produce predictable results. Upon reading the disclosure of Chu
`’684, a POSITA would have recognized that allowing users to
`place calls as if they were dialing from a standard PSTN phone
`would be desirable, creating a system capable of supporting a
`more intuitive and user-friendly interface. See Ex. 1005, Houh
`Decl. at ¶¶ 35-39. Further, Scott provides express motivation to
`make such a modification to systems such as Chu ’684. Namely,
`Scott teaches that reformatting the dialed number allows users to
`enter dialed digits in a normal manner while still providing
`consistency in call processing and route resolution—features that
`would significantly benefit the Chu ’684 system. Ex. 1004, Scott
`at 67:46-53; see also Ex. 1005, Houh Decl. at ¶ 37.
`Thus, a POSITA would have appreciated that these
`improvements to Chu ’684 could be achieved by merely
`programming the system of Chu ’684 to analyze the dialed digits
`and reformat as necessary using caller attributes such as
`international and national prefixes. Such modifications are
`simply a combination of the system of Chu ’684 with elements
`of Scott that would have yielded predictable results without
`requiring undue experimentation. See Ex. 1005, Houh Decl. at
`¶ 38. Thus, it would have been an application of nothing more
`than ordinary skill and common sense to combine Scott’s number
`reformatting with the VoIP system of Chu ’684. Id.
`
`Pet. 19–20.
`
`An underlying premise of Petitioner’s proposal to combine the
`
`teachings of Scott with those of Chu ’684 is that a skilled artisan would have
`viewed Chu ’684’s interface as one less “intuitive” and less “user-friendly,”
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`than that of Scott, thus giving rise to a desire to improve Chu ’684’s system.
`Id. As support for that proposal, Petitioner relies on the testimony of Dr.
`Houh spanning paragraphs 35 to 39 of his Declaration (Ex. 1005). In those
`paragraphs, Dr. Houh essentially expresses the same statements as those
`reproduced above. Notably absent, however, from both the Petition and Dr.
`Houh’s testimony is underlying evidentiary support for the proposition that
`one of ordinary skill in the art would have regarded Chu ’684’s teachings as
`deficient. Indeed, Petitioner’s statement and Dr. Houh’s bare testimony that
`“[u]pon reading the disclosure of Chu ’684,” a person of ordinary skill in the
`art would have sought to improve that very disclosure seemingly warrants
`underlying explanation or citation, yet no adequate support in that regard is
`supplied. See Pet. 16; Ex. 1005 ¶ 38. We also take note that Chu ’684
`characterizes its disclosed invention as being “innovative,” “novel,” and
`overcoming “disadvantages” associated with the prior art. Ex. 1003, 2:28–
`29, 2:33–35. That Chu ’684 praises its own disclosure is unsurprising.
`Petitioner’s contention, however, that Chu ’684 itself would have suggested
`a deficiency and a need for improvement is incongruent with the content of
`this reference.
`Petitioner also points to Scott’s disclosure as additionally providing
`“express motivation” to modify Chu’s system. Pet. 19 (citing Ex. 1004,
`67:46–53). According to Petitioner and Dr. Houh, Scott conveys that
`“reformatting the dialed number allows users to enter dialed digits in a
`standardized manner while still providing consistency in call processing and
`route resolution—features that would significantly benefit the Chu ’684
`system.” Id. at 19–20; Ex. 1008 ¶ 37. The cited portion of Scott describes
`reformatting dialed digits into a “fully resolved format” that allows “routing
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`information [to] be shared between Gateway Servers in different areas
`without modification.” Ex. 1004, 67:46–53. Petitioner and Dr. Houh,
`however, do not explain adequately why and how that disclosure “would
`significantly benefit” Chu ’684’s particular communication system. The
`general premise that Chu ’684’s system would benefit without explanation
`of what that benefit entails, without more, casts doubt that Petitioner has
`established the requisite “articulated reasoning with some rational
`underpinning” that is necessary to support a motivation to combine
`teachings. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
`Moreover, Petitioner contends that the claims are rendered obvious
`“by merely programming the system of Chu ’684 to analyze the dialed digits
`and reformat as necessary using caller attributes such as national and area
`code.” Pet. 20 (second emphasis added). Left wanting from that contention
`is adequate support in the record as to why or how one of ordinary skill
`would evaluate when it is “necessary” to reprogram Chu ’684’s system
`based on Scott’s teachings. Petitioner’s position in that regard is not
`grounded in what a skilled artisan would have gleaned from the teachings of
`the prior art, and is instead an impermissible exercise of hindsight with the
`claims of the ’815 patent serving as a guide. Such a position is not
`appropriate for a conclusion of obviousness. See Otsuka Pharm. Co., Ltd. v.
`Sandoz, Inc., 678 F.3d 1280, 1296 (“The inventor’s own path itself never
`leads to a conclusion of obviousness; that is hindsight.”).
`Lastly, Petitioner and Dr. Houh offer “common sense” as an
`additional rationale underlying the combination of Chu ’684 and Scott.
`Pet. 20; Ex. 1008 ¶ 38. Recourse to “common sense” certainly has its place
`in considering the question of obviousness. See KSR , 550 U.S. at 421
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`(“When there is a design need or market pressure to solve a problem and
`there are a finite number of identified, predictable solutions, a person of
`ordinary skill has good reason to pursue the known options within his or her
`technical grasp. If this leads to the anticipated success, it is likely the
`product not of innovation but of ordinary skill and common sense.”). Yet,
`here, the reliance on a theory of “common sense” is unexplained. As our
`reviewing court has observed, “[a]bsent some articulated rationale, a finding
`that a combination of prior art would have been ‘common sense’ or
`‘intuitive’ is no different than merely stating that the combination ‘would
`have been obvious.’” In re Van Os, 844 F.3d 1359, 1361 (Fed. Cir. 2017).
`On this record, we do not agree that a skilled artisan would have regarded
`Chu ’684 as deficient and ripe for improvement. Accordingly, we determine
`that Petitioner has not articulated persuasive reasoning with a rational
`underpinning for combining the teachings of Chu ’684 and Scott.
`c. Conclusion–Chu ’684 and Scott
`We have carefully considered the Petition and Patent Owner’s
`
`Preliminary Response. For the reasons discussed above, we determine that
`Petitioner has not shown a reasonable likelihood of success in challenging
`claims 3, 4, 8, 9, 12, 14–16, 30, 31, 35, 36, 39, 42, 43, 61, 66, 81, 86, 100,
`and 105 based on Chu ’684 and Scott. We, thus, conclude that institution of
`trial is not warranted as to those claims.
`
`E. Asserted Obviousness over Chu ’684, Scott, and Hinchey
`Petitioner also contends that claims 11, 38, 65, 85, and 104 are
`
`unpatentable based on Chu ’684, Scott, and Hinchey. Pet. 6, 48–55. Each
`of claims 11, 38, 65, 85, and 104 ultimately depends from one of
`independent claims 1, 28, 54, 74, and 93. Petitioner does not rely on
`
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