UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE, INC.
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`Petitioner
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`v.
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`UNILOC LUXEMBOURG, S.A.
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`Patent Owner
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`IPR2018-00884
`PATENT 8,539,552
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`PATENT OWNER RESPONSE TO PETITION
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`PURSUANT TO 37 C.F.R. §42.120
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE, INC.
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`Petitioner
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`v.
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`UNILOC LUXEMBOURG, S.A.
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`Patent Owner
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`IPR2018-00884
`PATENT 8,539,552
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`PATENT OWNER RESPONSE TO PETITION
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`PURSUANT TO 37 C.F.R. §42.120
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`IPR2018-00884
`U.S. Patent 8,539,552
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`Table of Contents
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`
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`I.
`II.
`III.
`IV.
`
`B.
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`INTRODUCTION .................................................................................... I
`THE ’552 PATENT .................................................................................. I
`THE LEVEL OF ORDINARY SKILL IN THE ART ............................ II
`PETITIONER DOES NOT PROVE A REASONABLE
`LIKELIHOOD OF UNPATENTABILITY FOR ANY
`CHALLENGED CLAIM ........................................................................ III
`A.
`Claim Construction ....................................................................... iii
`1.
`“intercepting” a message ..................................................... iv
`2.
`“sender device,” “recipient device,” and “device
`profile” ................................................................................vii
`Kalmanek Does Not Disclose “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” .................................................. vii
`1.
`Independent Claim 1 ..........................................................vii
`2.
`Independent Claims 6, 18, and 23 ......................................xii
`Kalmanek Does Not Disclose “a signaling message” ................ xiii
`1.
`Independent Claim 1 ........................................................ xiii
`2.
`Independent Claims 6, 18, 23, and 24 ............................... xiv
`Kalmanek Does Not Disclose “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 maintained in
`part on a remote enforcement point” ........................................... xvi
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`C.
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`D.
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`ii
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`E.
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`Independent Claim 1 ......................................................... xvi
`1.
`Independent Claims 6, 18, 23, and 24 ............................... xxi
`2.
`Kalmanek Does Not Disclose “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” ..................................................................... xxii
`1.
`Independent Claim 1 ....................................................... xxii
`2.
`Independent Claims 6, 18, 23, and 24 ............................. xxiv
`The Petition Fails As To The Challenged Dependent
`Claims ......................................................................................... xxv
`THE CONSTITUTIONALITY OF INTER PARTES REVIEW
`IS THE SUBJECT OF A PENDING APPEAL ............................... XXVI
`CONCLUSION ................................................................................. XXVI
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`F.
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`V.
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`VI.
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`
`
`List of Exhibits
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`Exhibit No.
`2001
`2002
`
`2003
`
`Description
`Declaration of William C. Easttom (previously filed)
`McGraw-Hill Dictionary of Scientific and Technical Terms,
`Sixth Edition (previously filed)
`Netwon’s Telecom Dictionary, Sixteenth Edition (previously
`filed)
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`I.
`
`INTRODUCTION
`Uniloc Luxembourg S.A. (the “Uniloc” or “Patent Owner”) submits this
`Response to Petition IPR2018-00884 for Inter Partes Review (“Pet.” or “Petition”)
`of United States Patent No. 8,539,552 (“the ’552 Patent” or “EX1001”) filed by
`Apple, Inc. (“Petitioner”). The instant Petition is procedurally and substantively
`defective for at least the reasons set forth herein.
`
`II. THE ’552 PATENT
`The ’552 patent is titled “System and method for network based policy
`enforcement of intelligent-client features.” The ʼ552 patent issued September 17,
`2013, from U.S. Patent Application No. 10/671,375 filed September 25, 2003.
`The inventors of the ’552 patent observed that at the time of the invention,
`there was an emergence of Internet Protocol (IP) telephony and IP multimedia
`networks. And to the extent that telephony services and features could be
`implemented in intelligent clients, the carriers and service provider network's
`responsibilities included little more than providing data pipes. Therefore, the
`carrier’s and service providers' ability to enforce the authorization of service usage
`was important. EX1001, 1:14-55. Accordingly, for networks to retain control over
`the features and services used by subscribers that use intelligent end-user clients, the
`networks needed to be able to recognize signaling and call control messages and
`transactions that implemented those features and services within the network. Id.,
`2:63-3:7.
`According to the invention of the ’552 Patent, a system and method for using
`network-based policy enforcement to control access to, and invocation of, features
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`and services which may otherwise be delivered to subscribers without the knowledge
`or authorization of the network. An operator of an IP telephony and/or IP multimedia
`network may enforce authorization or privileges of intelligent end-user clients to
`utilize or invoke services in the network, even when the capabilities for the requisite
`signaling and call control of those services may reside in the end-user clients
`themselves. Id.3:20-30. In one embodiment, a policy enforcement point is
`maintained in the network by elements that are under control of the network
`operator. This approach lessens and/or eliminates a need for the network operator to
`police the selection of client devices, and at the same time, allows end users to install
`nearly any suitable device of their choosing. Id., 3:31-36.
`
`III. THE LEVEL OF ORDINARY SKILL IN THE ART
`The Petition alleges that “[a] person having ordinary skill in the art at the time
`of the ’552 Patent would have been a person having at least a bachelor’s degree in
`electrical engineering, computer science or engineering, or in a related field, with at
`least 2 years of
`industry or
`research experience with packet-based
`telecommunications 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. 6. Given that
`Petitioner fails to meet its burden of proof in establishing prima facie anticipation or
`obviousness when applying its own definition of a person of ordinary skill in the art
`(“POSITA”), Patent Owner does not offer a competing definition for POSITA.
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`IV. PETITIONER DOES NOT PROVE A REASONABLE LIKELIHOOD
`OF UNPATENTABILITY FOR ANY CHALLENGED CLAIM
`Petitioner has the burden of proof to establish entitlement to relief. 37 C.F.R.
`§42.108(c) (“review shall not be instituted for a ground of unpatentability unless
`. . . there is a reasonable likelihood that at least one of the claims challenged . . . is
`unpatentable”). The Petition should be denied as failing to meet this burden.
`The raises the following obviousness challenges under 35 U.S.C. § 103:
`Ground
`Claims
`Reference(s)
`1
`1-4, 6-10, 12-20, and 22-
`Kalmanek1 and knowledge of a Person of
`23
`Ordinary Skill in the Art (“POSITA”)
`5 and 11
`Kalmanek and knowledge of a POSITA and
`Shaffer 2
`Kalmanek and knowledge of a POSITA and
`Strathmeyer 3
`Kalmanek and knowledge of a POSITA and
`Gleichauf4
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`2
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`3
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`21, 24, and 25
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`4
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`17
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`A. Claim Construction
`Patent Owner submits that the Board need not construe any claim term in a
`particular manner in order to arrive at the conclusion that the Petition is
`substantively deficient. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361
`(Fed. Cir. 2011) (“need only be construed to the extent necessary to resolve the
`controversy”). Nevertheless, Patent Owner addresses those terms for which the
`
`
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` 1
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` EX1004, U.S. Patent No. 6,324,279
`2 EX1005, U.S. Patent No. 7,023,839
`3 EX1006, U.S. Patent Pub. No. 2001/0026548
`4 EX1007, U.S. Patent No. 7,412,598
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`Petitioner proposes constructions. As explained below, Petitioner bases its
`patentability challenges on erroneous constructions, which provides an independent
`and fully-dispositive basis to deny the Petition in its entirety. See Mentor Graphics
`Corp., v. Synopsys, Inc., IPR2014-00287, 2015 WL 3637569, (Paper 31) at *11
`(P.T.A.B. June 11, 2015), aff'd sub nom. Synopsys, Inc. v. Mentor Graphics Corp.,
`669 Fed. Appx. 569 (Fed. Cir. 2016) (finding Petitioner’s claim construction
`unreasonable in light of the specification, and therefore, denying Petition as tainted
`by reliance on an incorrect claim construction).
`
`“intercepting” a message
`1.
`Petitioner seeks to improperly broaden and misconstrue the term
`“intercepting” a signaling message to mean merely “receiving” a message. Pet. 8-
`9. The term “intercepting” cannot include simply “receiving” a signaling message
`because it is against the intrinsic evidence and it is against the understanding of a
`POSITA. The Institution Decision erroneously adopts Petitioner’s proposed
`construction. See Paper 8 at 9.
`First, as the Petition itself points out, the specification expressly
`distinguishes between “received” and “intercepted” messages: “Initially, signaling
`and call control messages are received or intercepted by the policy enforcement
`point.” EX1001, 8:56-58 (emphasis added). Therefore, the patentee knew the
`difference and articulated the difference between “receiving” and “intercepting” a
`message, and the specification itself teaches against equating the two. The
`Institution Decision chooses to interpret the “or” as equating the “received” and
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`“intercepted”, however, the Institution Decision’s own cited evidence contradicts
`such a mis-interpretation. The Institution Decision cites to column 7, lines 32-42 of
`the ’552 patent, which states:
`
`
`
`EX1001, 7:32-42 (highlighting added).
`As shown above, the specification consistently differentiates between the
`terms “received” and “intercepted”. The first example shows “intercepted”, where
`the communicates passes through (and are read) by the policy enforcement point.
`The second example shows “received”, where the communications directly involve
`(i.e., communicate with) the policy enforcement point. That the Institution
`Decision “fail[s] to see the distinction between a network entity, positioned
`intermediate the sender device and end recipient device, ‘receiving’ the message []
`and ‘getting’ the message [], and that the Institution Decision “adopt[s] Petitioner’s
`proposed construction” creates an independent ground to deny the Petition.
`Additionally, the claims themselves expressly differentiates a device
`“intercepting” a message and the “intended recipient” of that message. For
`example, Claim 1 recites “a network entity intercepting a signaling message
`associated with a call between a sender device of the message and an intended
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`recipient device of the message” EX1001, 19:62-64 (emphasis added). If
`“intercepting” a message merely meant “receiving” a message, then the claim
`language above would be wholly redundant, because the “intended recipient” by
`definition would receive the message.
`Furthermore, unlike in independent Claims 1, 6, 18, and 23, independent
`Claim 24 specifically uses the term “receiving” instead of the term “intercepting”.
`See EX1001, claim 24, 22:47-48 (“a proxy server for receiving a request from the
`border element…”) (emphasis added). Thus, further confirming that the patentee
`not only knew the different between “intercepting” and “receiving”, but that the
`terms have different meanings and are not synonyms or interchangeable.
`Second, as Mr. Easstom testifies, a POSITA would understand that the entity
`intercepting a message would not be one of the intended recipients of that
`message. EX2001 ¶¶ 8-9. In other words, a POSITA would understand that the
`device that is intercepting a message would be a third party to the intended
`recipients of that message. Id. And as the Petition itself admits, Petitioner
`specifically seeks to improperly broaden the definition of the term “intercepting”
`here to include a “gate controller” device, that is specifically the intended recipient
`of that message. See Pet. 24-25 (“Kalmanek explains that the BTI initiates a
`transaction with the gate controller via the SETUP message. … Applying this
`construction, Kalmanek teaches that the setup message is intercepted by the gate
`controller.”) (emphasis added).
`Petitioner’s proposed construction improperly seeks to broaden and
`misconstrue the term “intercepting” a message to include and be synonymous with
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`being the intended and targeted recipient of that message. Petitioner’s proposed
`construction should be rejected because it is against the intrinsic evidence and is
`contra to the meaning of the term as understood by a POSITA.
`
`“sender device,” “recipient device,” and “device profile”
`2.
`The Institution Decision declined to construe these terms. See Paper 8 at 10.
`Patent Owner submits that the Board need not construe any claim term, including
`the terms “sender device,” “recipient device,” and “device profile”, in a particular
`manner in order to arrive at the conclusion that the Petition is substantively
`deficient. Wellman, 642 F.3d at 1361.
`Kalmanek Does Not Disclose “a network entity intercepting a
`B.
`signaling message associated with a call between a sender device
`of the message and an intended recipient device of the message”
`Independent Claim 1
`1.
`As discussed above in Section IV.A.1, Petitioner’s proposed claim
`construction of the term “intercepting” a message is improper, specifically that
`“intercepting” a message cannot include being the intended, targeted recipient of
`that message. Further, as also shown above in the same section, the Institution
`Decision adopting Petitioner’s proposed construction is improper and as a result
`taints the remainder of the Institution Decision. As shown below Petitioner bases
`its patentability challenges (and the Institution Decision bases its institution
`decision) on this erroneous construction, and therefore the Petition should be
`denied in its entirety. See Mentor Graphics Corp., IPR2014-00287, 2015 WL
`3637569, (Paper 31) at *11 aff'd sub nom. Synopsys, Inc., 669 Fed. Appx. 569
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`(finding Petitioner’s claim construction unreasonable in light of the specification,
`and therefore, denying Petition as tainted by reliance on an incorrect claim
`construction).
`For this limitation, the Petition argues that “Kalmanek teaches that the gate
`controllers intercept signaling messages, such as a call setup message.” Pet. 23
`(emphasis added). However, as the Petition itself plainly shows the “gate
`controllers” of Kalmanek do not intercept the call setup message, instead the “gate
`controllers” are the intended recipients of the call setup messages:
`“Kalmanek explains that the BTI initiates a transaction
`with the gate controller via the SETUP message.
`Kalmanek (EX1004) at 21:1-15.”
`Pet. 24.
`“In other words, 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.”
`Pet. 25 (quoting Kalmanek) (emphasis added).
`“At step 330, the originating TIU 170 sends a setup
`message to the originating gate controller 110.”
`Id. (quoting Kalmanek) (emphasis added).
`That the “gate controllers” of Kalmanek are in fact the intended recipients
`and targets of the setup message, and therefore do not intercept the setup message
`is further confirmed by Figure 3 of Kalmanek:
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`viii
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`
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`EX1004, Fig. 3 (red underlining added).
`As shown in Figure 3 of Kalmanek, above, the setup message is sent
`specifically and directly to the “gate controllers”. Therefore, as shown over and
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`over again by Kalmanek itself, the “gate controllers” do not and cannot “intercept”
`a setup message because the “gate controllers” are in fact the targeted and intended
`recipients of the setup message. The Institution Decision argues that step 350
`allegedly shows the setup messages are intercepted by the gate controllers (see
`Paper 8 at 17), however a review of Figure 3 above shows that is not the case. Step
`330 plainly states that the setup message is sent to the gate controller. And then,
`afterwards, the setup message is forwarded along, including at step 350 where it is
`forwarded to the terminating telephone interface unit. Therefore, Figure 3,
`including step 350, is consistent in showing that the gate controller of Kalmanek is
`the intended recipient of the setup message, which then later, as the originator of
`the message, forwards it along to other recipients. Nothing in Figure 3 supports the
`Institution Decision’s argument that the setup message is intercepted by the gate
`controllers are required by the claim language.
`The Institution Decision also argues that Kalmanek allegedly discloses that
`signaling messages are sent through the gate controller. See Paper 8 at 16.
`However, the cited passages by the Institution Decision are merely from a
`background section and a single paragraph paraphrasing of Kalmanek. Nothing in
`the cited portions of Kalmanek cited by the Institution Decision refutes the above
`cited technical disclosures of Kalmanek.
`First, the Institution Decision cites to the “BACKGROUND OF THE
`INVENTION” in Kalmanek (Paper 8 at 16-17), but there is no evidence or support
`in the Institution Decision that the system described in the “background” section is
`the system of Kalmanek. Further, in the immediately following paragraph of the
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`x
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`same section, Kalmanek itself disparages and details the shortcomings of the H.323
`gatekeeper implementation:
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`
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`EX1004, 1:55-67 (highlighting added).
`Second, the Institution Decision cites to a sentence from the single
`paragraph “SUMMARY OF THE INVENTION” section of Kalmanek. That single
`sentence states: “A setup message for the call is exchanged through at least one
`gate controller.” See Paper 8 at 16. That single sentence is not only vague, it does
`not provide evidence or support of the required “intercepting” by the claim
`language. Nor does it refute the disclosure of Kalmanek discussed above. Indeed,
`there are numerous disclosures in Kalmanek that makes plain that its gate
`controller is the intended recipient of the setup message, as another example:
`
`
`EX1004, 13:18-19 (highlighting added).
`Finally, further acknowledging that the claim language itself differentiates a
`device “intercepting” a message from the “intended recipient”, Petitioner argues
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`that the “intended recipient” is the “callee”. Pet. 24. While Patent Owner disagrees
`that this term requires construction, even under Petitioner’s own construction, the
`claim language makes clear the “intended recipient” and the “intercepting” device
`are not the same. Because as discussed above in Section IV.B.1, if “intercepting” a
`message merely meant “receiving” a message, then the claim language would be
`wholly redundant, because the “intended recipient” by definition would receive the
`message. In other words, the claim language specifically shows that the device
`“intercepting” of a message cannot be the “intended recipient” of that message.
`Petitioner bases its patentability challenges on the erroneous construction
`that being directly targeted as the intended recipient of a setup message can also
`mean “intercepting” that message. As previously discussed in Section IV.A.1,
`above, Petitioner’s proposed construction is improper and against the intrinsic
`evidence and against the understanding of a POSITA. Therefore, for at least this
`reason alone, the Petition should be denied in its entirety. See Mentor Graphics
`Corp., IPR2014-00287, 2015 WL 3637569, (Paper 31) at *11 aff'd sub nom.
`Synopsys, Inc., 669 Fed. Appx. 569
`
`Independent Claims 6, 18, and 23
`2.
`For the corresponding limitation of “intercepting” a message in each of
`independent claims 6, 18, and 23, Petitioner relies exclusively on its discussion of
`claim 1:
`
`• Discussing Claim 6:
`o See Pet. 43 (“To the extent that there is any difference in scope
`between claim 1[A] and claim 6[A], the mapping for claim 1[A]
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`establishes that Kalmanek teaches a network intercepting a
`message, wherein the message is also a signaling message for a
`call.”);
`• Discussing Claim 18:
`o See Pet. 52 (“See mapping for Claim 1[A]…”);
`• Discussing claim 23:
`o See Pet. 56 (“Claim 23[E] lists a series of steps performed by the
`program logic, including intercepting a message, associating the
`message with a service, determining if an end device is
`authorized to invoke the service, etc. For each of the steps, see
`mapping for claims 1[A]-1[E] and claims 6[A]-6[E].”);
`Therefore, for the same reasons discussed in Section IV.B.1, above, the
`Petition’s challenge against independent Claims 6, 18, and 23 also fail.
`
`C. Kalmanek Does Not Disclose “a signaling message”
`Independent Claim 1
`1.
`Petitioner argues that Kalmanek discloses this limitation in two instances,
`“codec specification and caller-ID”. See Pet. 26. However, both examples fail to
`show the required “signaling messages” of the claim language. Throughout the
`Petition, including in both of Petitioner’s examples here, the Petition relies on
`Kalmanek’s “setup” message as allegedly being the required “signaling message”.
`But because Kalmanek’s “setup” message is not sent by the sender to the “intended
`recipient device”, which is the callee, as required by the previously discussed
`limitation (see Section IV.B), the Petition fails.
`
`xiii
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`The claim language requires that the required “signaling message” be
`between a sender and intended recipient. For example, Claim 1 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” EX1001,
`19:62-64 (emphasis added). A plain reading of the claim language shows that the
`“signaling message” must be between the caller and the callee. And this plain
`understanding of the claim language is supported by Petitioner’s own proposed
`claim construction that “intended recipient” must mean “callee”. See Pet. 24 (“A
`POSITA would further recognize that the “intended recipient device” of a call
`setup signaling message is the device associated with the callee.”) (emphasis
`added).
`However, as admitted repeatedly in the Petition, Kalmanek’s setup messages
`are not messages sent between caller and callee. For example, the Petition, citing to
`Kalmanek, recites: “At step 330, the originating TIU 170 sends a setup message to
`the originating gate controller 110.” Pet 25. (quoting Kalmanek) (emphasis added);
`And “[a]s explained by Kalmanek at 56:18-24 and FIG. 23, the GCT sends a
`SETUP message to BTIT” Pet. 30 (emphasis added).
`Therefore, as required by the claim language, and as admitted by Petitioner’s
`own proposed claim construction, Kalmanek’s setup messages are not sent to the
`callee device, and thus cannot be the required “signaling messages”. For this
`reason alone, the Petition fails.
`Independent Claims 6, 18, 23, and 24
`2.
`For the corresponding limitation of a “signaling message” in each of
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`independent claims 6, 18, 23, and 24, Petitioner relies exclusively on its discussion
`of claim 1:
`• Discussing Claim 6:
`o See Pet. 43 (“To the extent that there is any difference in scope
`between claim 1[A] and claim 6[A], the mapping for claim 1[A]
`establishes that Kalmanek teaches a network intercepting a
`message, wherein the message is also a signaling message for a
`call.”);
`o See also Pet. 44 (“See mapping for claim 1[B]”)
`• Discussing Claim 18:
`o See Pet. 52 (“See mapping for Claim 1[A]…”);
`• Discussing Claim 23:
`o See Pet. 56 (“Claim 23[E] lists a series of steps performed by the
`program logic, including intercepting a message, associating the
`message with a service, determining if an end device is
`authorized to invoke the service, etc. For each of the steps, see
`mapping for claims 1[A]-1[E] and claims 6[A]-6[E].”);
`• Discussing Claim 24:
`o See Pet. 61 (“As discussed above for claim 1[A], the Kalmanek
`gate controller in combination with the network edge device
`serve as a network entity intercepting signaling messages.”)
`Therefore, for the same reasons discussed in Section IV.C.1, above, the
`Petition’s challenges against independent Claims 6, 18, 23, and 24 also fail.
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`D. Kalmanek Does Not Disclose “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 maintained in part on a remote enforcement point”
`Independent Claim 1
`1.
`The claim language requires that the services are “indicated in the signaling
`
`message”. The Petition relies on two alleged “services” of Kalmanek, the so-called
`
`caller ID and codec specification “services”. As discussed above in Section IV.C,
`
`the SETUP message of Kalmanek cannot be the required “signaling message”, and
`
`for at least that reason alone, the Petition fails. However, the SETUP message of
`
`Kalmanek further fails to disclose the alleged “services” in the SETUP message.
`
`Caller ID [blocking]
`As a threshold matter, the Petition’s reference to “caller ID” cannot be
`
`indicated in the the required “signaling message”, because the Petition’s citation to
`
`Kalmanek expressly shows that the SETUP message used in that instance is from
`
`“BTI to Gate Controller”. EX1004, 21:1-21 (“The BIT initiates transactions with
`
`the Gate Controller…”) (emphasis added). Or from “Gate Controller to BTI”.
`
`EX1004, 25:13-25 (“Messages initiated by the Gate Controller…”) (emphasis
`
`added). In other words, as discussed above in Sections IV.B and IV.C, the
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`particular SETUP message containing the alleged “caller ID” cited by the Petition
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`fails because (1) this particular SETUP message is not “intercepted” by the gate
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`controller because it is a “[m]essage[] initiated by the Gate Controller”, or
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`xvi
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`IPR2018-00884
`U.S. Patent 8,539,552
`“transaction with the Gate Controller” and (2) this particular SETUP message
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`also cannot be the required “signaling message” because this particular SETUP
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`message not sent between the caller and callee device, as required by the claim
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`language and as required by Petitioner’s own proposed claim construction. See
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`Section IV.C, supra.
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`Next, the Petition tacitly admits that the SETUP message of Kalmanek does
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`not disclose “caller-id blocking” by claiming, without support, that “A POSITA
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`would understand that ‘caller-id blocking’ could be included in the originating
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`SETUP message…” Pet. 35 (emphasis added). Petitioner purports to cite to its
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`expert for support, however, its expert provides nothing more than the identical
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`conclusory statement. That is insufficient.
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`“In appropriate circumstances, a single prior art reference can render a claim
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`obvious. However, there must be a showing of a suggestion or motivation to
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`modify the teachings of that reference to the claimed invention in order to support
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`the obviousness conclusion.” SIBIA Neurosciences, Inc. v. Cadus Pharm. Corp.,
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`225 F.3d 1349, 1356 (Fed. Cir. 2000), aff'd, 659 F.3d 1109 (Fed. Cir. 2011). The
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`obviousness analysis must focus on the knowledge and motivations of the skilled
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`artisan at the time of the invention. InTouch Techs., Inc. v. VGO Commc'ns, Inc.,
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`751 F.3d 1327, 1348 (Fed. Cir. 2014). In a case of obviousness, there must be an
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`explanation of why a person of ordinary skill in the art would modify the prior art
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`xvii
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`IPR2018-00884
`U.S. Patent 8,539,552
`references to create the claimed invention. Cutsforth, Inc. v. MotivePower, Inc.,
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`636 Fed. Appx. 575, 577–78 (Fed. Cir. 2016) citing In re Kotzab, 217 F.3d 1365,
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`1371 (Fed.Cir.2000); In re Rouffet, 149 F.3d 1350, 1359 (Fed.Cir.1998).
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`Here, Petitioner merely speculates that the SETUP message of Kalmanek
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`could contain “caller-id blocking”, but neither Petitioner nor its expert provides
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`any of the required evidence or explanation as to why a person of ordinary skill in
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`the art at the time of the invention would modify Kalmanek as such. SIBIA, 225
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`F.3d at1356; InTouch Techs., 751 F.3d at1348; In re Kotzab, 217 F.3d at 1371; In
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`re Rouffet, 149 F.3d at 1359. If Petitioner was allowed to simply present as
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`evidence mere speculation about anything that could have been invented by
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`Kalmanek, then indeed, Kalmanek “could” contain every invention past, present,
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`and future.
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`Moreover, Kalmanek itself states that “caller-id blocking” is an inherent
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`feature of the gate controllers in the Kalmanek system, and therefore “caller-id
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`blocking” is not part of the SETUP message of Kalmanek. See EX1004, 7:19-21
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`(“Service features that depend on the privacy of the calling information, such as
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`caller-ID blocking, are implemented by the gate controllers.”)
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`For sake of completeness, in section “Claim 1[B]” of the Petition, Petitioner
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`points to an “alternative” for “Caller ID/Calling Name Delivery”. See Pet. 31.
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`First, caller ID is not the “caller-id blocking” alleged by Petitioner in section
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`xviii
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`IPR2018-00884
`U.S. Patent 8,539,552
`“Claim 1[C]” of the Petition. Therefore, it is unclear how the disparate “caller ID”
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`discussions throughout the Petition relates to one another. Second, the passage
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`quoted by the Petition in its section “Claim 1[B]” only further confirms that no
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`“caller ID” or “caller-ID blocking” “services” are included in the SETUP message
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`of Kalmanek. Instead, the passage further confirms that it is wholly in the control
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`of the gate controllers in the system of Kalmanek, and that the only thing that
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`would appear in the SETUP message is name of the caller (i.e., the result of caller-
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`ID, not an indication of the alleged service, as required by the claim language). See
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`Pet. 31.
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`Codec Specification
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`The Petition also alleges a “codec specification service” disclosed by
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`Kalmanek. Pet. 36-38. However, just as with the “caller ID [blocking]”, above, the
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`Petition’s citations to an alleged “codec specification service” by Kalmanek cannot
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`be indicated in the required “signaling message”, because the Petition expressly
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`admits that the “codec specification service” of Kalmanek is not indicated
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`anywhere in the SETUP message of Kalmanek. Instead, as expressly admitted by
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`the Petition, the alleged “codec specification service” is at best indicated in
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`SETUPACK and/or GATESETUP messages that are sent “After the SETUP
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`message reaches the called party…” Pet. 37 (emphasis added). In other words,
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`the Petition admits that the alleged “codec specification service” if indicated
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`xix
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`IPR2018-00884
`U.S. Patent 8,539,552
`anywhere at all, is not indicated in the SETUP message (or “signaling message”)
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`as required by the claim language.
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`Furthermore, while the Petition does not so argue, neither the SETUPACK
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`message nor the GATESETUP message could be the required “signaling message”
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`either because (1) neither the SETUPACK or GATESETUP message are
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`“intercepted” by the gate controller as required by the claim language because the
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`Petition’s citation for the SETUPACK message shows that it is under the heading
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`of messages from “BTI to Gate Controller” (see EX1004, 21:1-22:31), and the
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`GATESETUP m
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