UNITED STATES PATENT AND TRADEMARK OFFICE
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`_______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________________
`
`APPLE INC.,
`Petitioner
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`v.
`
`UNILOC LUXEMBOURG S.A.
`Patent Owner
`
`_______________________
`
`Case No. IPR2018-00884
`Patent No. 8,539,552
`_______________________
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`
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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` Petitioner’s Reply to Patent Owner’s Response
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`IPR2018-00884
`Table of Contents
`Introduction ........................................................................................................ 1
`I.
`II. ARGUMENT ..................................................................................................... 1
`A. The Board Correctly Concluded That Kalmanek’s SETUP Message is
`Intercepted by the Gate Controller. .................................................................. 1
`i. An intercepting device need not be an unintended “third party” as Patent
`Owner insists ..................................................................................................... 2
`a) Dr. Easttom was not made available for cross examination—his
`declaration and any reliance thereon should be accorded no weight ............. 2
`b) The two paragraphs from Dr. Easttom’s declaration cited by Patent
`Owner are conclusory and conflict with the intrinsic record ......................... 6
`ii.
`Intercept and receive are not coextensive, but an intermediate device both
`receives and intercepts ....................................................................................... 8
`iii. Kalmanek’s Gate Controllers “intercept” by receiving SETUP messages
`and passing them on toward their intended recipient—the callee ..................... 9
`iv. Patent Owner’s “Intended Recipient” Argument is Immaterially Different
`From its “Intercept” Argument and Fails for the Same Reasons ..................... 10
`B. Kalmanek’s SETUP Message Indicates Both Caller ID and Codec
`Specification ....................................................................................................... 11
`i. The CALLER parameter indicates a user intends to invoke one or more
`aspects of the Caller ID service ....................................................................... 11
`ii. Patent Owner mischaracterizes Kalmanek—Petitioner relies on the
`CODING parameter in the SETUP message ................................................... 13
`C. Both Kalmanek’s Caller ID and Codec Specification Satisfy the
`“Filtering” Limitation ...................................................................................... 14
`i. Consistent with the ’552 specification, the claimed “filtering” need not
`modify or block the SETUP message—passing an authorized SETUP message
`satisfies the limitation ...................................................................................... 16
`ii. Kalmanek forwards the SETUP message to the callee when either caller
`ID or codec specification are authorized ......................................................... 17
`iii. Patent Owner’s remaining arguments, challenging the “filtering” mapping
`for Caller ID Blocking, mischaracterize the Petition ....................................... 18
`III. Conclusion .................................................................................................... 20
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`i
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` Petitioner’s Reply to Patent Owner’s Response
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`IPR2018-00884
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`I.
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`INTRODUCTION
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`Having declined to depose Petitioner’s expert, Patent Owner’s Response is
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`largely a rehash of the arguments presented in its Preliminary Response (POPR).
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`Because Patent Owner presents no new evidence or arguments that support the
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`Board modifying its preliminary findings at institution, the Board should again reject
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`Patent Owner’s contentions and cancel the Challenged Claims.
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`II. ARGUMENT
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`A. The Board Correctly Concluded That Kalmanek’s SETUP
`Message is Intercepted by the Gate Controller.
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`Patent Owner’s primary argument, repeated throughout its Preliminary
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`
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`Response (“POPR”) and Response, is that Kalmanek’s SETUP message is not
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`“intercepted” by the Gate Controller (“GC”) because the message is intentionally
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`sent to the GC. See Paper 11, Response at iv-xii (arguing “‘intercepting’ a message
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`cannot include being the intended, targeted recipient of that message”). At
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`institution, this Board properly rejected Patent Owner’s overly narrow view of
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`“intercepting,” concluding Kalmanek’s SETUP message is “passed through, or
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`intercepted by, the gate controllers” and ultimately delivered to “the terminating
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`telephone interface unit”—the intended recipient of the message. Paper 8,
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`Institution Decision (“ID”) at 17. Patent Owner’s continued insistence that
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`intercepting must be surreptitious is inconsistent with the intrinsic record and should
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`again be rejected.
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`1
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`i.
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` Petitioner’s Reply to Patent Owner’s Response
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`IPR2018-00884
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`An intercepting device need not be an unintended “third
`party” as Patent Owner insists
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`Relying solely on two paragraphs from Dr. Easttom’s original declaration
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`submitted with the POPR, Patent Owner proclaims that “a POSITA would
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`understand that the device that is intercepting a message would be a third party to
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`the intended recipients of that message.” Paper 11, Response at vi. Because Patent
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`Owner did not permit cross examination of its expert, Dr. Easttom’s opinions should
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`be accorded no weight. But, even if the Board were to consider the two paragraphs
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`from Dr. Easttom’s declaration, they are entirely conclusory and in conflict with the
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`intrinsic record.
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`a)
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`Dr. Easttom was not made available for cross
`examination—his declaration and any reliance thereon
`should be accorded no weight
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`Having submitted a declaration relied upon by Patent Owner in its Response,
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`
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`the rules of discovery explicitly allow Petitioner to cross-examine Dr. Easttom. See
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`37 C.F.R. 42.51(b)(1)(ii); 37 C.F.R. 42.53(b)(2). And, the Board has made clear:
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`“[a]s a guiding principle of routine discovery, as defined by our Rules, if a party
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`proffers a witness’s testimony, that party must make that witness available for cross-
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`examination by the other party.” HTC Corp. v. NFC Technology, LLC, IPR2014-
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`01198, Paper 41, at 3 (PTAB Nov. 6, 2015) (emphasis added on “must”). The Board
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`may exercise its authority to strike a declaration when the declarant is not made
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`available for cross-examination. See id at 4. Further, “little to no weight is given to
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`2
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` Petitioner’s Reply to Patent Owner’s Response
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`IPR2018-00884
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`testimony of declarants who are not subject to cross-examination, even if the
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`testimony is not excluded as hearsay.” The Mangrove Partners Master Fund, LTD,
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`et al., v. VirnetX Inc., IPR2015-01047, Paper 52 at 2 (PTAB Apr. 15, 2016); see also
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`Kolmes v. World Fibers Corp. 107 F.3d 1534, 1542 (Fed. Cir. 1997) (holding that
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`evidence was properly disregarded since no opportunity to cross-examine declarant).
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`Here, Petitioner was not afforded an opportunity to cross examine Dr. Easttom and
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`his declaration should be given no weight.
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`Petitioner informed Patent Owner that it intended to depose Dr. Easttom on
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`February 5, 2019. Ex. 1011, 2-5-2019 Email from Hart. In response, Patent Owner
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`stressed the narrowness of its reliance on Dr. Easttom and agreed to strike his
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`declaration, rather than offer him for cross examination. Ex. 1012, 2-7-2019 Email
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`from Mangrum (“Uniloc believes a cross examination of Dr. Easttom is a waste of
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`the parties’ time and resources. If you still disagree, Uniloc would not oppose a
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`motion to strike Dr. Easttom’s declaration.”) (emphasis added). Petitioner agreed
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`that striking Dr. Easttom’s declaration was a suitable alternative to cross
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`examination and requested leave to file an unopposed motion to strike. Ex. 1013, 2-
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`21-2019 Email from Hart to Board. On Feb. 25, 2019, the Board denied this request
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`as premature, noting “Petitioner can explain why the Board should give no weight
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`to Mr. Easttom,” “[i]n the event that Patent Owner does not make Mr. Easttom
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`available for cross-examination.” Paper 12, Order at 2.
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`3
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` Petitioner’s Reply to Patent Owner’s Response
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`IPR2018-00884
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`Following the Board’s instructions, Petitioner reiterated its position on
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`February 28, 2019 that Patent Owner agrees to strike Dr. Easttom’s declaration or
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`provide him for cross examination:
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`Given the Court’s ruling (attached) that striking Easttom’s
`declaration is premature prior to the expiration of our discovery
`period, we wanted to follow up with you all on next steps. To the extent
`that you are maintaining your prior position, please confirm that (1) you
`will not provide Dr. Easttom for cross examination and (2) you will not
`oppose a motion to strike his declaration and any references or citations
`thereto following the close of our discovery period. Otherwise, please
`provide dates of availability for Dr. Easttom so Petitioner can take
`his deposition in advance of our Reply.
`Ex. 1014, 2-28-2019 Email from Hart (emphasis added). Over the course of weeks,
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`Petitioner repeated requested Patent Owner select one of these two options—the
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`only options available under the rules. See Exs. 1015-1017. And Patent Owner
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`repeatedly refused to take a position, baselessly suggesting that Petitioner must
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`intend to violate the rules by demanding a deposition on such narrow subject matter.
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`See Ex. 1018, 3-7-2019 Email from Mangrum (noting “the Patent Owner Response
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`ONLY cites Dr. Easttom’s declaration (EX2001 ¶¶ 8-9) for the sole proposition that
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`‘a POSITA would understand that the entity intercepting a message would not be
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`one of the intended recipients of that message.’ Our position is that it would be a
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`waste of the parties resources to schedule a deposition that, under the rules, must be
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`4
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` Petitioner’s Reply to Patent Owner’s Response
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`IPR2018-00884
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`restricted to that sole proposition. . . . Given your insistence in scheduling a
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`deposition, we can only assume that you intend to expand the scope of the
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`deposition beyond what the rules allow.”) (emphasis added); see also Exs. 1019-
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`1020.
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`On March 28, 2019, under the misapprehension that the Reply deadline was
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`just days away, Patent Owner finally offered Dr. Mangrum for deposition with less
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`than 24 hours’ notice:
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`Dr. Easttom will be made available for deposition tomorrow (March
`28) in the Dallas area (exact location to be determined). Please let us
`know within the next couple of hours if you plan to move forward
`tomorrow.
`Ex. 1021, 3-28-2019 Email from Mangrum (emphasis added); see also Ex. 1022, 3-
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`28-2019 Email from Mangrum (incorrectly claiming only two business days remain
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`before Reply deadline).
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`
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`Petitioner responded, noting that weeks remained before the Reply deadline
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`that had been moved at Patent Owner’s request, and that Petitioner was intent on
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`deposing Dr. Easttom, but could not do so in Dallas with less than 12 hours’ notice.
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`Ex. 1023, 3-28-2019 Email from Seitz. Patent Owner responded that Dr. Mangrum
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`was unavailable for the remaining weeks leading to the Reply deadline. Ex. 1024,
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`3-28-2019 Email from Mangrum. Accordingly, despite having repeatedly requested
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`5
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` Petitioner’s Reply to Patent Owner’s Response
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`IPR2018-00884
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`to depose Dr. Easttom for nearly two full months, he was not made available and his
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`testimony should be accorded no weight.
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`b)
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`The two paragraphs from Dr. Easttom’s declaration
`cited by Patent Owner are conclusory and conflict with
`the intrinsic record
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`To the extent the Board considers the two paragraphs from Mr. Easttom’s
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`
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`declaration relied upon in the Response, the testimony is not persuasive because it
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`is conclusory and conflicts with the intrinsic record. Mr. Easttom asserts in
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`conclusory fashion that intercepted messages “were not sent to the” intercepting
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`device, which must be “a third party” to the communications.” Ex. 2001, Easttom
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`Decl. at ¶¶ 8-9. To be sure, these two paragraphs from Dr. Easttom’s declaration in
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`isolation are wrought with ambiguity. But Patent Owner’s Response clarifies the
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`position. Namely, relying on Dr. Easttom, Patent Owner contends that any device to
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`which a message is intentionally sent is the “intended recipient” of that message and
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`cannot “intercept” that message. For example, discussing Fig. 3 of Kalmanek, which
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`Patent Owner admits teaches the SETUP message intentionally sent to the GCO,
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`forwarded to the GCT, and again forwarded to the TIUT, Patent Owner argues “the
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`‘gate controllers’ do not and cannot ‘intercept’ a setup message because the ‘gate
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`controllers’ are in fact the targeted and intended recipients of the setup
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`message.” Paper 11, Response at ix-x (emphasis added). Under this theory, each
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`individual leg of the message’s travel is analyzed separately such that each leg has
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`6
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` Petitioner’s Reply to Patent Owner’s Response
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`IPR2018-00884
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`its own unique sender and its own intended recipient. Id. at x (“the gate controller of
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`Kalmanek is the intended recipient of the setup message, which then later, as the
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`originator of the message, forwards it along to other recipients”).
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`Thus, Patent Owner and its expert treat each hop of the Kalmanek SETUP
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`message path as an individual pair of sender and intended recipient, thereby
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`excluding a scenario in which a message is forwarded along multiple hops toward
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`its ultimate destination (i.e., the intended recipient). Such a position is entirely at
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`odds with the intrinsic record. The ’552 Patent expressly contemplates multiple
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`intentional and intermediate stops (or interceptions) between the sender and intended
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`recipient. See Ex. 1001, ’552 Patent at 16:19-27 (after the policy enforcement point
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`intercepts a signaling message, it can “forward[] the message on, unaltered, to the
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`next hop in the path to the intended recipient”) (emphasis added). The ’552 Patent
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`thus expressly contemplates that there may be multiple intentionally designed
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`intermediate hops between the sender and the ultimate destination (i.e., the “intended
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`recipient” of the message, using the patent’s language). In other words, that a
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`message is intentionally sent to intermediate stops before being forwarded toward
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`an ultimate destination does (1) not render the intermediate stops the “intended
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`recipient” and (2) does not prevent those intermediate stops from “intercepting” the
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`message.
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`7
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` Petitioner’s Reply to Patent Owner’s Response
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`IPR2018-00884
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`As the Board correctly held at institution, the callee is the “intended recipient”
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`and any entity between the sender and receiver that receives the message and
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`forwards it toward the callee has intercepted the message. Paper 8, ID at 8-9.
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`ii.
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`Intercept and receive are not coextensive, but an intermediate
`device both receives and intercepts
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`Patent Owner’s Response criticizes the Board’s ID preliminary finding on the
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`
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`meaning of “intercept,” alleging that the Board improperly equated receive and
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`intercept by adopting Petitioner’s proposed construction. Paper 11, Response at iv-
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`vi. The Board did no such thing. Instead, the Board correctly concluded that
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`“‘intercepting’ a message [] mean[s] the signal is received by a network entity
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`located between the endpoints of the call.” Paper 8, ID at 9. This construction
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`expressly acknowledges that intercepting involves receiving, but that intercepting
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`and receiving are not coextensive.
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` The distinction between receiving and intercepting is straightforward and is
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`entirely consistent with the Board’s preliminary finding. Namely, any component
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`that gets a message has “received” that message. But only intermediate devices that
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`receive a message and pass that message on toward its final destination have
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`“intercepted” the message. The following illustrates this distinction:
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`8
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` Petitioner’s Reply to Patent Owner’s Response
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`IPR2018-00884
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`In support of its straw man argument that the Board improperly equated
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`receiving and intercepting, Patent Owner cites numerous portions of the ‘552 Patent
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`specification and claims, which it contends evidence a distinction between these
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`actions. Paper 11, Response at iv-vi. Indeed, each example is entirely consistent
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`with the distinction between receive and intercept illustrated above. Accordingly,
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`Patent Owner’s mischaracterization can be dismissed and the Board’s preliminary
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`construction of “intercepting” should be carried over to its Final Written Decision.
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`iii. Kalmanek’s Gate Controllers “intercept” by receiving SETUP
`messages and passing them on toward their intended
`recipient—the callee
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`Applying its overly narrow construction of “intercepting,” Patent Owner
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`
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`argues that Kalmanek’s SETUP message is not “intercepted” by the gate controllers
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`because “the setup message is sent specifically and directly to the ‘gate controllers.’”
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`Paper 11, Response at viii-xii (concluding the GC is the “intended recipient”). In
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`doing so, Patent Owner establishes that the SETUP message is sent from the caller
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`(TIUO) to the originating GC (GCO), which forwards the message to the terminating
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`GC (GCT), which finally forwards the message to the callee (TIUT). Id. (discussing
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`FIG. 3, steps 330, 340, and 350). These steps are illustrated in the following excerpt
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`from Kalmenek Fig. 3:
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`9
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` Petitioner’s Reply to Patent Owner’s Response
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`IPR2018-00884
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`
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`Under the Board’s correct construction of “intercepting,” which requires “a
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`signal is received by a network entity located between the endpoints of the call,”
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`Kalmanek’s SETUP message is “intercepted” by GCO as mapped in the Petition
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`because GCO is located between the endpoints of the call: caller (TIUO/BTIO) and
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`callee (TIUT/BTIT ). See Paper 2, Petition at 21-26.
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`iv.
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`Patent Owner’s “Intended Recipient” Argument is
`Immaterially Different From its “Intercept” Argument and
`Fails for the Same Reasons
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`Patent Owner reiterates its argument that Kalmanek’s SETUP message cannot
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`
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`be the claimed “signaling message.” Paper 11, Response at xiii-xv. In these pages,
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`Patent Owner focuses on the claimed requirement that the signaling message must
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`be sent between the sender and intended recipient, concluding that Kalmanek’s
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`SETUP message fails to meet this limitation because it is intentionally sent to the
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`intermediate Gate Controller. Id. This is the same substantive argument Patent
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`Owner advances with respect to “intercept” and should be rejected for the same
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`10
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` Petitioner’s Reply to Patent Owner’s Response
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`IPR2018-00884
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`reasons. Namely, the claims do not require that the signaling message be
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`surreptitiously intercepted by a third party. As explained above, it is entirely
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`consistent with the ’552 Patent claim language and intrinsic record that the sending
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`devices intends for intermediate devices to intercept the signaling message and
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`forward that message toward an ultimate destination. Thus, the limitation is satisfied
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`by Kalmanek’s teaching that the sender intends for the GCO to intercept the SETUP
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`message and to forward that message on toward its intended recipient (the
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`TIUT/BTIT).
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`B. Kalmanek’s SETUP Message Indicates Both Caller ID and Codec
`Specification
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`Patent Owner next disputes that Kalmanek’s SETUP message indicates Caller
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`
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`ID and Codec Specification services to be invoked in the call. Paper 11, Response
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`at xvi-xx. In doing so, Patent Owner relies almost entirely on arguments identical to
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`those rejected by the Board in its ID. Because Patent Owner has set forth no new
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`justification for reversing the Board’s preliminary finding that Kalmanek’s SETUP
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`message indicates both caller ID and codec specification to be invoked, the Board
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`should confirm its preliminary finding in its Final Written Decision.
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`i.
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`The CALLER parameter indicates a user intends to invoke
`one or more aspects of the Caller ID service
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`The Petition discusses multiple aspects of the Caller ID service indicated in
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`the SETUP message, including the CALLER field, which includes information
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`11
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` Petitioner’s Reply to Patent Owner’s Response
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`IPR2018-00884
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`about the caller or indicates “anonymous” if Caller ID Blocking has been invoked.
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`Paper 2, Petition at 34-36. Patent Owner’s Response alleges (1) that Petitioner
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`inadequately supports whether Caller ID Blocking is included in the SETUP
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`message and (2) that Caller ID Blocking can’t be indicated in the SETUP message
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`because it is a feature implemented by the GCs. Both arguments were included in
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`the POPR, and the Board correctly rejected both arguments in its ID. Paper 8, ID at
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`18-19. Because Patent Owner presents identical arguments in its Response with no
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`explanation of how or why the Board’s preliminary conclusions were in error, the
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`Board should adopt its preliminary findings in its Final Written Decision.
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`
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`Starting with Caller ID Blocking in the SETUP message, the Board correctly
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`rejected Patent Owner’s argument on the basis that Kalmanek expressly teaches “the
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`CALLER portion of the SETUP message will contain an “anonymous” parameter if
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`the originator has specified caller ID blocking. Id. at 18 (citing Ex. 1004, Kalmanek
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`at 25:25–43). Additionally, the Petition explains that a PHOSITA would have
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`understood that a caller could invoke Caller ID Blocking via one or both possible
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`mechanisms—via indication in the SETUP message sent by the caller or via settings
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`in a profile. Paper 2, Petition at 35; Ex. 1003, Rubin Decl. at ¶ 61 (explaining “caller
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`ID blocking is a service encompassed within the rubric of the caller ID service” that
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`12
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` Petitioner’s Reply to Patent Owner’s Response
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`IPR2018-00884
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`can be “manually invoked by the caller and indicated in the originating SETUP
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`message”).1
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`Turning to Patent Owner’s argument that Caller ID Blocking cannot be
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`indicated in the SETUP message because the service is implemented by the GC, the
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`Board correctly rejected the argument as logically flawed. Paper 8, Petition at 18-
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`19 (concluding the fact that Kalmanek’s “gate controllers implement the caller ID
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`blocking service [. . .] does not support Patent Owner’s contention that the SETUP
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`message does not include caller ID blocking.”). Indeed, the GC would implement
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`the service whether Caller ID Blocking is indicated in the original SETUP message
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`or in a profile. Ex. 1003, Rubin Decl. at ¶ 61.
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`Finally, the Board correctly noted “Patent Owner does not address Petitioner’s
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`discussion of caller ID—as opposed to caller ID blocking—as corresponding to a
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`service that the signaling message is intended to invoke.” Id. at 19. No new
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`arguments were added on this point in Patent Owner’s Response.
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`ii.
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`Patent Owner mischaracterizes Kalmanek—Petitioner relies
`on the CODING parameter in the SETUP message
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`Patent Owner next argues that the Petition admits Codec Specification is not
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`
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`indicated in the SETUP message but is instead included exclusively in the
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`1 Patent Owner also erects a strawman, arguing that Petitioner’s expert failed to adequately support
`modifying Kalmanek to include Caller ID Blocking in the SETUP message. Paper 11, Response
`at xvii-xviii. But Dr. Rubin did not propose a modification to Kalmanek. Instead, he explained a
`PHOSITA would understand, pursuant to Kalmanek’s teachings, that Caller ID Blocking must
`either be indicated in the SETUP message or indicated in the caller’s profile.
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` Petitioner’s Reply to Patent Owner’s Response
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`IPR2018-00884
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`SETUPACK and/or GATESETUP messages. Paper 11, Response at xix-xx. Patent
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`Owner is incorrect as the Board previously found. Namely, the Board correctly
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`concluded that Kalmanek’s “CODING parameter includes a ‘third item [that] gives
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`the coding algorithm.’” Paper 8, ID at 19 (quoting Ex. 1004, Kalmanek at 25:58–
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`59). And the Board further found that Patent Owner’s arguments regarding the
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`GATESETUP message “is of no import, however, because Petitioner relies on
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`Kalmanek’s SETUP message, not the GATESETUP message.” Id. at 17-18.
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`Indeed, the Petition was unequivocal that the SETUP message includes a
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`CODING parameter that indicates a specific codec intended to be invoked:
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`Kalmanek discloses that the SETUP message includes a “CODING”
`parameter identifying the codec, and specifically, the G.711 codec,
`along with message size and interval between packets:
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`Paper 2, Petition at 27-28 (citing Ex. 1004, Kalmanek at 21:23-29, 29:18, 30:1-8).
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`C. Both Kalmanek’s Caller ID and Codec Specification Satisfy the
`“Filtering” Limitation
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`Patent Owner incorrectly alleges “the Petition relies solely on the alleged
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`‘caller-id blocking’ ‘service’” for the limitation in Claim 1 that requires “the network
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`entity filtering the signaling message . . . such that the signaling message is
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`14
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` Petitioner’s Reply to Patent Owner’s Response
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`IPR2018-00884
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`transmitted to the intended recipient device if [the caller or callee] is authorized to
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`invoke the type of service indicated.” Paper 11, Response at xxii. Accepting this
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`argument for purposes of institution, because Claim 18 and its dependents require
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`filtering “based on whether the user is authorized to invoke or receive two IP
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`telephone services,” the Board preliminarily found the petition failed to show how
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`the filtering limitation is satisfied for both services. Paper 8, ID at 21.
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`The Petition does focus on Caller ID as an example of modifying the SETUP
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`message when Caller ID Blocking has been invoked and authorized. Paper 2,
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`Petition at 39-41. But modifying a message is not required to satisfy the Challenged
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`Claims. As explained in the Petition, the claimed filtering is satisfied by merely
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`“forwarding the message on unaltered (e.g., for authorized services).” Id. at 39.
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`Because both Caller ID and Codec Specification are indicated in Kalmanek’s
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`SETUP message, both services are authorized, and the SETUP message is forwarded
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`on to the callee when authorization is successful, Petitioner has carried its burden in
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`demonstrating that the “filtering” limitation is satisfied for both services. Id.
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`15
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` Petitioner’s Reply to Patent Owner’s Response
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`IPR2018-00884
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`i.
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`Consistent with the ’552 specification, the claimed “filtering”
`need not modify or block the SETUP message—passing an
`authorized SETUP message satisfies the limitation
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`The ’552 Patent expressly discusses a number of different “filtering” actions,
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`including forwarding the signaling message on unaltered:
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`[A] filtering action may be performed resulting in one of the
`following:
`1. Forwarding the message on, unaltered, to the next hop in the path
`to the intended recipient.
`2. Forwarding the message on, with alterations, to the next hop in
`the path to the intended recipient.
`Ex. 1001, ’552 Patent at 16:20-25 (emphasis added). Elaborating on the first type of
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`filtering, the ’552 Patent explains that filtering results in unaltered messages when
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`the services are authorized:
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`The first possible action of forwarding the message on, unaltered,
`applies to the case of a fully allowed message, i.e., one that is
`unconditionally cleared. For example, if the message is intended for a
`user that is authorized to invoke the service, then the message may be
`forwarded to this user.
`Id. at 16:34-38 (emphasis added).
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`Consistent with this disclosure, Claim 1 encompasses a filtering action by
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`which a signaling message indicating one or more services is merely forwarded on
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`to the intended recipient when the services are authorized:
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`16
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` Petitioner’s Reply to Patent Owner’s Response
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`IPR2018-00884
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`[1(E)] the network entity filtering the signaling message based on the
`determination such that the signaling message is transmitted to the
`intended recipient device if either the sender device or the intended
`recipient device is authorized to invoke the type of service indicated
`in the signaling message
`Id. at Claim 1 (emphasis added). As noted in the Petition, Claim 1 also captures a
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`filtering action by which the signaling message is modified in accordance with an
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`authorized service before being forwarded toward the intended recipient. Paper 2,
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`Petition at 39.
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`Although modifying or blocking signaling messages as a result of detecting
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`an unauthorized service is certainly contemplated by the ’552 Patent, the claimed
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`filtering does not demand those types of filtering. Instead, the filtering limitation of
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`Claim 1 is satisfied when invoked services are authorized and the signaling message
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`is forwarded on toward the intended recipient. Claim 18, which requires any type of
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`authorization-based “filtering,” is similarly satisfied by authorizing multiple services
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`and forwarding the signaling message.
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`ii.
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`Kalmanek forwards the SETUP message to the callee when
`either caller ID or codec specification are authorized
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`Contrary to Patent Owner’s argument, the Petition provides significant detail
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`
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`establishing that Kalmanek teaches and/or renders obvious (1) a SETUP message
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`invoking both Caller ID and Codec Specification, (2) the GC authorizing both Caller
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`ID and Codec Specification, and (3) the SETUP message being forwarded to the
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`17
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` Petitioner’s Reply to Patent Owner’s Response
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`IPR2018-00884
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`intended recipient (i.e., the callee device) when both services are authorized. See
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`Paper 2, Petition at 21-39. That the Petition also shows the SETUP message may
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`be modified when Caller ID Blocking is authorized (id. at 39-41) does not support
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`Patent Owner’s claim that Petitioner has failed to prove Kalmanek teaches the
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`claimed “filtering” for both Caller ID and Codec Specification.
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`iii. Patent Owner’s remaining arguments, challenging the
`“filtering” mapping for Caller ID Blocking, mischaracterize
`the Petition
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`As discussed above, the “filtering” limitations of Claims 1, 18, and their
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`
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`dependents encompass forwarding an altered or unaltered signaling message after
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`the service or services have been authorized. As further discussed above,
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`Kalmanek’s SETUP message is forwarded by the GC toward the intended recipient
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`(the callee) when Caller ID and Codec Specification services are authorized,
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`satisfying the “filtering” limitations. Separately, the Petition established that Caller
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`ID Blocking, a subset of the Caller ID service, results in a modified SETUP message
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`when Caller ID Blocking is authorized. Paper 2, Petition at 39-41. Namely, “[i]f the
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`originator of the call has specified caller-id blocking [], the SETUP message
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`transmitted from the GCT to the TIUT/BTIT will remove any identifying
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`information.” Id. (citing ’552 Patent at 25:39-43). Patent Owner argues that this
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`altered SETUP message cannot satisfy the “filtering” limitations because it is not
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`the particular message sent by the caller device (and intercepted by the GC). Paper
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`18
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` Petitioner’s Reply to Patent Owner’s Response
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`IPR2018-00884
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`11, Response at xxii-xxiii. Patent Owner is incorrect. The SETUP message that is
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`altered and sent to the callee is in fact the particular message mapped to the preceding
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`limitations.
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`Kalmanek teaches two alternative implementations of this relied-upon
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`functionality. First, Kalmanek teaches that when the SETUP signaling message
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`reaches the callee (TIUT/BTIT), a SETUPACK is returned to the GCT that requests
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`Caller ID information. Paper 2, Petition at 39-40 (discussing ‘552 Patent at Fig. 23,
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`25:39-43 and 56:24-25). The GCT then sends another SETUP message that either (1)
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`includes caller identifying information or (2) removes any caller identifying
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`information if the caller has specified Caller ID Blocking. Id. That the altered
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`SETUP message is not the first SETUP message received by the callee (TIUT/BTIT)
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`is of no moment. The claimed “signaling message” in all preceding limitations is
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`satisfied by Kalmanek’s SETUP message, and it is that precise message that is
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`altered and forwarded on to the callee (TIUT/BTIT).
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`Even if Patent Owner were correct that the claims require the altered signaling
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`message must be the first SETUP message received by the callee (TIUT/BTIT),
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`Kalmanek teaches this exact alternate implementation. See Ex. 1004, Kalmanek at
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`56:36-44 (noting the “alternative d