Trials@uspto.gov
`571-272-7822
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`Paper No. 20
`Entered: September 18, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,1
`Patent Owner.
`
`____________
`
`Case IPR2018-00884
`Patent 8,539,552 B1
`____________
`
`
`
`
`Before SALLY C. MEDLEY, KARL D. EASTHOM, and
`SEAN P. O’HANLON, Administrative Patent Judges.
`
`O’HANLON, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`1 At the time the Petition was filed, Uniloc Luxembourg S.A. was the patent
`owner.
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`Paper No. 20
`Entered: September 18, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,1
`Patent Owner.
`
`____________
`
`Case IPR2018-00884
`Patent 8,539,552 B1
`____________
`
`
`
`
`Before SALLY C. MEDLEY, KARL D. EASTHOM, and
`SEAN P. O’HANLON, Administrative Patent Judges.
`
`O’HANLON, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`1 At the time the Petition was filed, Uniloc Luxembourg S.A. was the patent
`owner.
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`
`
`
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`IPR2018-00884
`Patent 8,539,552 B1
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`I. INTRODUCTION
`
`A. Background
`Apple Inc. (“Petitioner”) filed a Petition for inter partes review of
`
`claims 1–25 (“the challenged claims”) of U.S. Patent No. 8,539,552 B1 (Ex.
`1001, “the ’552 patent”). Paper 2 (“Pet.”), 1. Uniloc Luxembourg S.A., a
`predecessor in interest of Uniloc 2017 LLC (“Patent Owner”), filed a
`Preliminary Response. Paper 6 (“Prelim. Resp.”). On October 2, 2018, we
`instituted an inter partes review of the challenged claims on all grounds
`raised in the Petition. Paper 8 (“Institution Decision” or “Inst. Dec.”), 28.
`
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Paper 11, “PO Resp.”), Petitioner filed a Reply to the Patent
`Owner Response (Paper 13, “Pet. Reply”), and Patent Owner filed a Sur-
`Reply to Petitioner’s Reply (Paper 14, “PO Sur-Reply). An oral hearing
`occurred on July 15, 2019. The record includes a transcript of the hearing.
`Paper 19 (“Tr.”).
`
`In our Scheduling Order, we notified the parties that “any arguments
`for patentability not raised in the [Patent Owner] response will be deemed
`waived.”2 Nonetheless, Petitioner bears the burden to show, by a
`preponderance of the evidence, that the challenged claims are unpatentable.
`35 U.S.C. § 316(e).
`
`For the reasons that follow, we conclude that Petitioner has proven by
`a preponderance of the evidence that claims 1–17 and 23–25 of the ’552
`
`
`2 See Paper 9, 5; see also Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,766 (Aug. 14, 2012) (“The patent owner response . . . should
`identify all the involved claims that are believed to be patentable and state
`the basis for that belief.”).
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`patent are unpatentable. It, however, has failed to meet its burden of proof
`regarding the unpatentability of claims 18–22.
`
`B. Related Matters
`The parties indicate that the ’552 patent is not involved in any federal
`
`district court litigation or any other challenges before the Board. Pet. i;
`Paper 7, 2. However, it appears that the ’552 patent is the subject of the
`following litigation:
`Uniloc 2017 LLC v. Apple Inc., No. 1:18-cv-00890 (W.D. Tex.
`filed Oct. 18, 2018),
`Uniloc 2017 LLC v. Apple Inc., No. 1:18-cv-00992 (W.D. Tex.
`filed Nov. 17, 2018), and
`Uniloc 2017 LLC v. Apple Inc., No. 4:19-cv-01949 (N.D. Cal.
`filed Apr. 12, 2019).
`
`C. The Challenged Patent
`The ’552 patent discloses a system and method for network based
`
`policy enforcement of intelligent client features. Ex. 1001, 1:7–10.
`
`In packet-based networks, intelligent end-user clients
`with little or no support and/or knowledge of the network can
`deliver many features and services. For networks to retain
`control over the features and services used by subscribers that
`use intelligent end-user clients, the networks need to be able to
`recognize signaling and call control messages and transactions
`that implement these features and services within the network.
`This is particularly important in next-generation IP telephony
`and IP multimedia networks where many basic and advanced
`services may be signaled, controlled, and/or delivered by
`intelligent end-user clients which are not owned or controlled
`by the network or service providers, thereby enabling the
`potential bypassing by the end user of service agreements or
`other subscription accounting mechanisms.
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`Id. at 2:61–3:7.
`
`The ’552 patent provides network-based policy enforcement to control
`access to and use of features and services. Id. at 3:20–23. A policy
`enforcement point within the core network, to which local networks seek
`access, is used to provide such enforcement. Id. at 7:32–34; see also id. at
`3:48–61 (discussing an exemplary network architecture). The policy
`enforcement point is in the communications path of every call control and
`signaling message between any end-user client and any call control and
`signaling entity of the core network, and uses information regarding the
`sender and/or the intended recipient to determine whether access to the
`services and features of the core network is authorized. Id. at 7:34–52,
`7:66–8:11. Figure 1 illustrates the network and is reproduced below.
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`Figure 1 illustrates the ’552 patent’s network 100, which includes
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`a core packet network 102, and two local packet networks 104
`and 106, as well as intelligent end-user clients 104a-d and
`106a-e associated with the local packet networks 104 and 106.
`Access to the core packet network 102 is available through
`border elements 108 and 110, such as a firewall or application
`layer gateway (ALG) device.
`Id. at 3:50–56.
`
`Figure 3, which is a flowchart depicting one embodiment of a method
`of network-based policy enforcement of intelligent client features (id. at
`2:44–46), is reproduced below:
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`Figure 3 is a flowchart depicting one embodiment of a method 300 of
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`network-based policy enforcement of intelligent client features. Id. at 8:54–
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`5
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`56. Initially, the policy enforcement point receives or intercepts signaling
`and call control messages. Id. at 8:56–58. At block 302, the method
`associates each signaling and/or call control message with a known service
`or feature. Id. at 8:60–63. The policy enforcement point then determines
`whether the sender and/or the intended recipient of the message is authorized
`to use and/or invoke the identified service or feature (block 304), and filters
`each signaling and/or call control message according to whether or not the
`identified service or feature is authorized for the sender and/or intended
`recipient (block 306). Id. at 8:63–9:3. Finally, the policy enforcement point
`communicates with and/or controls one or more network entities responsible
`for monitoring and regulating media data flow across network boundaries in
`order to ensure compliance with the usage authorization at block 308. Id. at
`9:3–8.
`
`D. The Challenged Claims
`Petitioner challenges claims 1–25 of the ’552 patent. Pet. 1, 6–7.
`
`Claims 1, 6, 18, 23, and 24 are independent. Claim 1 is illustrative of the
`challenged claims and is reproduced below:
`1.
`A method for controlling a plurality of services in packet-
`based networks, the method comprising:
`
`[1A] a network entity intercepting a signaling message
`associated with a call between a sender device of the message
`and an intended recipient device of the message, [1B] wherein
`the signaling message includes an indication of one type of the
`plurality of services which the signaling message is intended to
`invoke;
`
`[1C] the network entity making a determination of
`whether either the sender device or the intended recipient
`device is authorized to invoke the type of service indicated in
`the signaling message based in part on a device profile
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`maintained in part on a remote enforcement point, [1D] wherein
`the type of service comprises at least one of caller-ID, call
`waiting, multi-way calling, multi-line service, and codec
`specification; and
`
`[1E] 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.
`Ex. 1001, 19:60–20:14 (alphanumeric characters provided in brackets for
`reference in this Decision).
`
`E. Instituted Grounds of Unpatentability
`We instituted trial based on all asserted claims and grounds of
`
`unpatentability as follows (Inst. Dec. 6, 28):
`
`No.
`
`Reference(s)
`
`Basis3
`
`1
`
`Kalmanek4
`
`2
`3
`
`4
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`35 U.S.C. § 103(a) 17
`
`Challenged
`Claim(s)
`35 U.S.C. § 103(a) 1–4, 6–10, 12–20,
`22, and 23
`Kalmanek and Shaffer5 35 U.S.C. § 103(a) 5 and 11
`Kalmanek and
`35 U.S.C. § 103(a) 21, 24, and 25
`Strathmeyer6
`Kalmanek and
`Gleichauf7
`
`3 The ’552 patent was filed on September 25, 2003, prior to the date when
`the Leahy-Smith America Invents Act (“AIA”) took effect.
`4 US 6,324,279 B1 (issued Nov. 27, 2001) (Ex. 1004, “Kalmanek”).
`5 US 7,023,839 B1 (filed Aug. 19, 1999, issued Apr. 4, 2006) (Ex. 1005,
`“Shaffer”).
`6 US 2001/0026548 A1 (published Oct. 4, 2001) (Ex. 1006, “Strathmeyer”).
`7 US 7,412,598 B1 (filed Dec. 29, 2000, issued Aug. 12, 2008) (Ex. 1007,
`“Gleichauf”).
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`7
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`Pet. 6–7. Petitioner submits a declaration of Dr. Aviel Rubin (Ex. 1003,
`“Rubin Declaration” or “Rubin Decl.”) in support of its contentions in the
`instituted challenges.
`
`II. ANALYSIS
`
`A. Principles of Law
`To prevail in its challenge to Patent Owner’s claims, Petitioner must
`
`demonstrate by a preponderance of the evidence that the claims challenged
`in the Petition are unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
`This burden of persuasion never shifts to the patentee. Dynamic Drinkware,
`LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).
`
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time of the invention to a
`person having ordinary skill in the art. 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) when in evidence,
`objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S.
`1, 17–18 (1966).
`
`B. Level of Ordinary Skill in the Art
`Petitioner contends that a person having ordinary skill in the art
`
`(“POSITA”) would “hav[e] at least a bachelor’s degree in electrical
`engineering, computer science or engineering, or in a related field, with at
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`least 2 years of industry or research experience with packet-based
`telecommunications systems.” Pet. 5 (citing Ex. 1003 ¶¶ 31–33). “Patent
`Owner does not offer a competing definition for POSITA.” PO Resp. 2.8
`
`We find Petitioner’s definition reasonable, and adopt it as our own.
`
`C. Claim Construction
`In an inter partes review filed before November 13, 2018, such as this
`
`one, a claim in an unexpired patent shall be given its broadest reasonable
`construction in light of the specification of the patent in which it appears.
`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.
`2007). The presumption may be overcome by providing a definition of the
`term in the specification with reasonable clarity, deliberateness, and
`precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the
`absence of such a definition, limitations are not to be read from the
`specification into the claims. See In re Van Geuns, 988 F.2d 1181, 1184
`(Fed. Cir. 1993). Only those terms which are in controversy need be
`construed, and only to the extent necessary to resolve the controversy. Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999);
`see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
`
`
`8 Although Patent Owner’s Response uses Roman numerals in its pagination,
`we refer to Arabic numeral equivalents.
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`9
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`1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter
`partes review).
`
`Petitioner proposes constructions for two claim terms. Pet. 8–10.
`Patent Owner asserts that no claim construction is needed and disagrees with
`Petitioner’s proposed constructions. PO Resp. 3–7. We discuss each of the
`terms identified by Petitioner below.
`
`1. intercepting
`Petitioner argues that the broadest reasonable interpretation of
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`“intercepting” as used in claims 1, 6, 18, and 23 means “receiving,” and that
`“[a] POSITA would readily understand that intercepting signaling messages,
`as described by the ’552 Patent, is used to indicate the signaling is received
`by a network entity located between the endpoints of the call (i.e., between
`the caller and callee).” Pet. 8–9 (citing Ex. 1003 ¶ 35).
`
`Patent Owner disputes Petitioner’s interpretation that “intercepting”
`means “receiving.” PO Resp. 4–7. Patent Owner argues that “[t]he term
`‘intercepting’ cannot include simply ‘receiving’ a signaling message”
`because “the specification expressly distinguishes between ‘received’ and
`‘intercepted’ messages.” Id. at 4 (citing Ex. 1001, 8:56–58). Patent Owner
`argues that “intercepted” means “the communicat[ion]s pass[] through (and
`are read) by the policy enforcement point.” Id. at 5. Patent Owner argues
`that “the claims themselves expressly differentiate[] a device ‘intercepting’ a
`message and the ‘intended recipient’ of that message.” Id. at 6. Patent
`Owner argues that “a POSITA would understand that the entity intercepting
`a message would not be one of the intended recipients of that message.” Id.
`
`As we stated in the Institution Decision, Petitioner’s and Patent
`Owner’s arguments assert the same interpretation of intercepting, namely
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`that “a network entity intercepting a signaling message associated with a call
`between a sender device of the message and an intended recipient device of
`the message” means that the network entity receives the message and the
`network entity is not the intended end recipient device. See Inst. Dec. 8–9;
`see also id. (discussing the ordinary usage of the term). This interpretation
`is consistent also with how “intercepting” is used in the ’552 patent, which
`uses the term interchangeably with “receiving.” See, e.g., Ex. 1001 8:56–58
`(“Initially, signaling and call control messages are received or intercepted by
`the policy enforcement point.” (emphasis added)); see also id. at 7:32–42
`(explaining that the “policy enforcement point . . . is . . . in the
`communications path of substantially each and every call control and
`signaling message between any end-user client and any call control and
`signaling entity of the network 202 (including, possibly, another client
`device).”). We note further that the ’552 patent repeatedly states that the
`network entity receives the setup messages, further indicating
`interchangeability of the terms. See, e.g., Ex. 1001, Abstract (“The network
`policy enforcement point receives messages, associates the message with a
`known service, makes a determination as to whether a beneficiary of the
`service is authorized to invoke the service, and then filters the messages
`based on the determination.” (emphasis added)), 9:28–30 (“The interface
`402 [of network policy enforcement point 400] receives signaling messages
`between two network end devices and passes the messages to the processor
`404.”(emphasis added)). Finally, this interpretation is consistent with the
`prosecution history of the application resulting in the ’552 patent, which
`reveals that the patent examiner suggested using the word intercepting in the
`claims to further clarify the applicants’ intention to convey that “the
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`independent claims involve a network entity receiving and filtering
`messages that are sent between two end users.” Ex. 1002, 364–65 (first
`emphasis added); see also id. at 367–68 (distinguishing an intermediate
`entity intercepting a communication between two end user devices, as
`claimed, from a prior art reference in which the intended end recipient
`device (a service verification apparatus) receives and makes determinations
`regarding the signaling message).
`
`Patent Owner criticizes our interpretation in the Institution Decision,
`arguing as follows: “the Institution Decision[’s] ‘fail[ure] to see the
`distinction between a network entity, positioned intermediate the sender
`device and end recipient device, “receiving” the message [] and “getting” the
`message [],[’] . . . creates an independent ground to deny the Petition.” PO
`Resp. 5 (third and fourth alterations in original). Patent Owner’s conclusory
`argument fails to apprise us of error in our interpretation as set forth above
`and in the Institution Decision. Petitioner argues that “[a] POSITA would
`readily understand that intercepting signaling messages, as described by the
`’552 Patent, is used to indicate the signaling is received by a network entity
`located between the endpoints of the call (i.e., between the caller and
`callee).” Pet. 8. Similarly, we noted in the Institution Decision that Patent
`Owner’s declarant opined that “[a]ll the definitions I found, both in standard
`dictionaries and in engineering and telecommunications dictionaries[,] all
`define intercepting as someone other than the intended recipient getting the
`message.” Inst. Dec. 8 (emphasis added, alterations in original) (citing
`Ex. 2001 ¶ 15).9 We fail to see, and Patent Owner fails to explain, a
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`9 Dr. Easttom’s declaration testimony interpreting “receiving” fails to
`consider the full disclosure and prosecution history of the ’552 patent, as
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`distinction between a network entity, positioned intermediate the sender
`device and the intended end recipient device, “receiving” the message and
`“getting” the message, as both parties’ interpretations indicate that the
`message is read by an entity other than the intended end recipient device of
`the message.
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`Patent Owner argues that the ’552 patent distinguishes between
`receiving and intercepting, stating “[t]he ’552 patent consistently and
`repeatedly attributes ‘intercepting’ only to the specific network entity tasked
`with initiating processes for ‘control[ling] access to, and invocation of,
`features and services that may otherwise be delivered to subscribers without
`the knowledge or authorization of the network.’” PO Sur-Reply 3 (second
`alteration in original) (citing Ex. 1001, Abstract, 3:20–25). Initially, we note
`that neither the Abstract nor lines 20–25 of column three contains
`“intercepting”—to the contrary, as noted above, the Abstract states that
`“[t]he network policy enforcement point receives messages” (emphasis
`added). Patent Owner’s arguments are also inconsistent with the disclosure
`and prosecution history of the ’552 patent, as explained above. Moreover,
`Patent Owner fails to explain how the asserted distinction between receiving
`and intercepting differentiates the ’552 patent from Kalmanek. For example,
`it appears that Kalmanek’s network edge devices would “receive” the
`messages and its gate controllers would “intercept” the messages using
`Patent Owner’s interpretations.
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`explained above, and, thus is not entitled to substantial weight. See, e.g.
`Ex. 2001 ¶¶ 8–9; see also PO Resp. 6 (citing same). Additionally, Patent
`Owner hindered or prevented Petitioner from cross-examining Dr. Easttom,
`further undermining the weight given to Dr. Easttom’s testimony. See, e.g.,
`Pet. Reply 2–6; Exs. 1011–24.
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`Patent Owner argues that “Petitioner suggests by its construction that
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`the claimed ‘network entity’ may also itself be characterized as ‘an intended
`recipient device of the message’ if it is addressed by the sending client and
`used to receive and route the message onward.” Id. at 6. This argument
`ignores the full language of claim 1, which recites “a network entity
`intercepting a signaling message associated with a call between a sender
`device of the message and an intended recipient device of the message.”
`Ex. 1001, 19:62–64 (emphases added). By the language of claim 1, the
`recited “intended recipient device” must be the called device, not an
`intermediate network entity.
`
`Accordingly, because it is consistent with the ordinary and customary
`meaning and with the disclosure and prosecution history of the ’552 patent,
`we adopt Petitioner’s proposed construction of a network entity
`“intercepting” a signaling message to mean the signaling message is
`received by a network entity located between the endpoints of the call.
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`2. device profile
`Petitioner argues that although claim 1 recites “whether either the
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`sender device or the intended recipient device is authorized to invoke the
`type of service indicated in the signaling message based in part on a device
`profile,” “there is no ‘device profile’ described in the ’552 Patent. Instead,
`there is a user profile for a user of a particular device.” Pet. 9. According to
`Petitioner, “the ’552 Patent consistently describes an authorization process
`that is (1) based on a user profile and (2) wherein services authorized for a
`device are in fact services authorized for the user of that device.” Id. at 10.
`Thus, Petitioner reasons, the broadest reasonable interpretation of “device
`profile,” as used in claim 1, refers to the profile of the user using the device
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`such that “making a determination of whether either the sender device or the
`intended recipient device is authorized to invoke the type of service
`indicated in the signaling message based in part on a device profile” means
`“determining whether a user of a particular device is authorized to invoke a
`service based on that user’s profile.” Id. (citing Ex. 1003 ¶ 57).
`
`Patent Owner disagrees with Petitioner’s interpretation, but does not
`submit a competing definition. PO Resp. 7–12.
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`We determine that we need not explicitly construe “device profile” to
`resolve the parties’ controversies. See Vivid Techs., 200 F.3d at 803; Nidec,
`868 F.3d at 1017.
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`D. Overview of the Prior Art
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`1. Kalmanek
`Kalmanek discloses a communications system in which resources are
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`reserved and committed based on an authorized quality of service. Ex. 1004,
`1:26–28. Kalmanek recognizes shortcomings in the known signaling
`architecture H.323, which is a signaling architecture appropriate for use in
`networks using connectionless best-effort delivery models. Id. at 1:30–67.
`Such shortcomings include the need for equipment associated with
`gatekeepers to be extremely reliable, difficulty in cost-effective scalability of
`gatekeeper-related equipment, and possible theft of service by bypassing the
`gatekeeper. Id. at 1:56–67.
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`Kalmanek uses a two-phase signal process in which messages for
`setting up the call are exchanged in one phase and messages for connecting
`the call are exchanged in a separate and distinct second phase. Id. at 12:39–
`45. “By separating the messages for setting up the call from the messages
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`for connecting the call, the [latter] messages can be exchanged end to end
`without being routed through the gate controllers that set up the call.” Id. at
`12:45–48. Because “the gate controllers are involved only during the initial
`start of the call but not during the call duration,” the message load is reduced
`such that “the amount of memory need[ed] in the gate controllers is greatly
`reduced” and “the gate controllers can be constructed without the typically
`stringent requirements for reliability.” Id. at 14:39–46.
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`Theft of service can occur when a telephone interface unit fails to
`acknowledge that a call has been initiated or a call has been terminated. Id.
`at 16:15–21, 43–52. Kalmanek overcomes these potential problems by
`using network edge devices to control call setup and termination. Id. at
`16:21–27, 52–56.
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`The gate controllers can authenticate signaling messages and
`authorize requests for service so that communication services and certain
`service features are only provided to authorized subscribers. Id. at 6:49–52.
`Upon receiving a setup request message from a calling party, the gate
`controller can authenticate the identity of the calling party and authorize the
`service sought by the calling party. Id. at 6:52–55. Figure 1 illustrates
`Kalmanek’s network and is reproduced below.
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`Figure 1 illustrates Kalmanek’s network 10, which includes
`communication network 100 which is connected to gate
`controller 110 and gate controller 111, network edge devices
`120 and 121, and telephone network gateway 130. Gate
`controllers 110 and 111 are connected to database storage 140
`and 141, respectively. Network edge devices 120 and 121 are
`connected to access networks 150 and 151, respectively.
`Access networks 150 and 151 are connected to network
`interface units 160 and 161, respectively. Network interface
`units 160 and 161 are connected to telephone interface units
`(TIUs) 170 and 171, respectively, and communication devices
`180 and 181, respectively. TIUs 170 and 171 are connected to
`telephones 190 and 191, respectively. Telephone network
`gateway 130 is connected to telephone network 135 which, in
`turn, is connected to telephone 192.
`Id. at 4:34–49.
`
`2. Shaffer
`Shaffer discloses a telecommunications system that includes a
`
`bandwidth allocation server (“BWAS”) that monitors system bandwidth
`
`17
`
`
`
`IPR2018-00884
`Patent 8,539,552 B1
`
`usage. Ex. 1005, 5:62–64. The BWAS compares the usage to a
`predetermined threshold value, and, if bandwidth usage exceeds the
`threshold, sends a command ordering the terminals connected to the system
`to adjust their coding hierarchies so that a lower speed codec is employed.
`Id. at 5:59–6:15. Network bandwidth can be allocated based on, for
`example, the quality of service requirements for each call. Id. at 5:26–33.
`The BWAS can downgrade codecs being used in existing calls such that
`they require less bandwidth. Id. at 9:27–54.
`
`3. Strathmeyer
`Strathmeyer discloses a packet network telephony call controller that
`
`is arranged to interface with a plurality of external call processing
`applications programs. Ex. 1006 ¶ 10. The call controller includes a call
`processing application computer and a call controller computer that perform
`various call control and processing application functions over a data
`network, and provide call information and control to a user of the
`applications computer. Id. ¶¶ 10, 12.
`
`Although Strathmeyer describes its invention using systems based on
`the H.323 standard, Strathmeyer discloses that other protocols, including
`Session Initiation Protocol (“SIP”), can be used. Id. ¶ 13. Strathmeyer
`further describes these other protocols as being “functionally equivalent” to
`the H.323 protocol. Id.
`
`4. Gleichauf
`Gleichauf discloses a session-based services telephony protocol
`
`(“SSTP”) for use in Internet Protocol (“IP”) telephony that allows a user to
`add services during an IP telephony call session between two clients. Ex.
`
`18
`
`
`
`IPR2018-00884
`Patent 8,539,552 B1
`
`1007, 1:43–53, 2:12–14, 6:48–8:9. In the event that the client initiating the
`call has not subscribed to a requested service prior to initiating the call, a
`system server authenticates the client and adds the requested service to the
`list of services the client is authorized to use. Id. at 4:54–64, 9:1–46. One or
`both of the clients are then charged for use of the requested service. Id. at
`9:47–10:2.
`
`E. Challenge 1 – Kalmanek
`Petitioner asserts that Kalmanek describes all elements of claims 1–4,
`
`6–10, 12–20, 22, and 23. Pet. 18–56. In support of its showing, Petitioner
`relies upon the Rubin Declaration. Id. (citing Ex. 1003). We have reviewed
`the Petition, Patent Owner Response, Petitioner Reply, Patent Owner Sur-
`Reply, and evidence of record and determine that Petitioner has shown, by a
`preponderance of the evidence, that claims 1–4, 6–10, 12–17, and 23 would
`have been obvious in view of Kalmanek and that Petitioner has set forth
`reasoning with rational underpinnings why it would have been obvious to
`modify the teachings of Kalmanek. Petitioner, however, has failed to show,
`by a preponderance of the evidence, that claims 18–20 and 22 would have
`been obvious.
`
`1. Independent Claim 1
`a. Preamble
`Regarding the preamble, Petitioner argues that “Kalmanek discloses a
`
`method of using a ‘gate controller’ for controlling services such as codec
`specification and caller ID within ‘packet telephony’ networks.” Pet. 18
`(citing Ex. 1004, 3:40–45, 6:49–55, 10:13–19, 46:49–52). Patent Owner
`does not challenge this aspect of the Petition.
`
`19
`
`
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`IPR2018-00884
`Patent 8,539,552 B1
`
`We find that the cited portions of Kalmanek support Petitioner’s
`
`contentions.
`
`b. Limitation 1A
`Petitioner argues that Kalmanek’s gate controllers 110, 111 in
`
`conjunction with network edge devices (“NEDs”) 120, 121 correspond to the
`recited network entity. Id. at 21–22. Petitioner argues that “[t]he NED
`provides access to a particular service based on authorization provided by
`that NED’s corresponding gate controller.” Id. at 21 (citing Ex. 1004, 5:9–
`28; Ex. 1003 ¶ 54). Petitioner relies on Kalmanek’s originating telephone
`interface unit (“TIU”) and terminating TIU to correspond to the recited
`sender device and intended recipient device, respectively. Id. at 22–23
`(citing Ex. 1004, 9:40–43; Ex. 1003 ¶ 55). Petitioner argues that “the gate
`controller and NED work together to intercept or receive a message,
`authorize a service level for the message, and implement the service level
`according to the message,” and identifies “a call setup message” as the
`message that is intercepted. Id. at 23 (citing Ex. 1003 ¶¶ 50, 52–56).
`Petitioner argues that a person having ordinary skill in the art would
`understand Kalmanek’s SETUP message to be a call setup signaling
`message, the intended recipient of which is “the device associated with the
`callee.” Id. at 24 (citing Ex. 1003 ¶ 73).
`
`Patent Owner argues that the call setup messages in Kalmanek are not
`intercepted by the gate controllers because the gate controllers are the
`intended recipients of the setup messages. PO Resp. 7–13; PO Sur-Reply 3–
`9. First, Patent Owner faults our finding in the Institution Decision that
`Kalmanek’s setup message is passed through the gate controllers, arguing
`instead that “the gate controller of Kalmanek is the intended recipient of the
`
`20
`
`
`
`IPR2018-00884
`Patent 8,539,552 B1
`
`setup message, which then later, as the originator of the message, forwards it
`along to other recipients.” PO Resp. 8–10. Patent Owner similarly argues
`that “[t]he claim language requires that the required ‘signaling message’ be
`between a sender and [an] intended recipient.” Id. at 14. Continuing, Patent
`Owner argues that “Kalmanek’s ‘setup’ messages are not messages sent
`between caller and callee.” Id.
`
`Patent Owner’s argument fails to set forth any meaningful difference
`between “passing through” versus “receiving and forwarding.”
`Furthermore, Patent Owner’s argument is internally inconsistent and,
`therefore, unconvincing, by referring to Kalmanek’s gate controller as both
`the “intended recipient” and the “originator” of the setup message.
`Moreover, Pa
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