IPR2018-00884
`U.S. Patent 8,539,552
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`
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`APPLE INC.
`Petitioner
`
`v.
`
`UNILOC LUXEMBOURG S.A.
`Patent Owner
`____________
`
`
`Case No. IPR2018-00884
`U.S. Patent No. 8,539,552
`____________
`
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,539,552
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`IPR2018-00884
`U.S. Patent 8,539,552
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`
`TABLE OF CONTENTS
`
`
`INTRODUCTION ........................................................................................................................................ 1
`I.
`II. SUMMARY OF THE ’552 PATENT ....................................................................................................... 1
`A. DESCRIPTION OF THE ALLEGED INVENTION OF THE ’552 PATENT .......................................................................... 1
`B. SUMMARY OF THE PROSECUTION HISTORY OF THE ’552 PATENT ........................................................................... 4
`C. LEVEL OF A POSITA .............................................................................................................................................................. 5
`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R. § 42.104 ............................. 6
`A. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(A)......................................................................................... 6
`B.
`IDENTIFICATION OF CHALLENGED CLAIMS UNDER 37 C.F.R. § 42.104(B) AND RELIEF REQUESTED .......... 6
`C. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3) ....................................................................................... 7
`1. Claims 1, 6, 18, and 23: “intercepting” a message ........................................................ 8
`2. Claim 1: “sender device,” “recipient device,” and “device profile” ............................... 9
`IV. THERE IS A REASONABLE LIKELIHOOD THAT THE CHALLENGED CLAIMS OF THE ’552
`PATENT ARE UNPATENTABLE .................................................................................................................. 10
`A. SUMMARY OF KALMANEK (EX1004) .............................................................................................................................10
`B. SHOWING OF ANALOGOUS ART AND PRIOR ART TO THE ’552 PATENT................................................................16
`1. Kalmanek Is Analogous, Prior Art .............................................................................. 16
`2. Shaffer Is Analogous, Prior Art .................................................................................. 17
`3. Strathmeyer Is Analogous, Prior Art ........................................................................... 17
`4. Gleichauf Is Analogous, Prior Art .............................................................................. 18
`C. GROUND 1: KALMANEK IN VIEW OF THE KNOWLEDGE OF A POSITA RENDERS CLAIMS 1-4, 6-10, 12-20,
`AND 22-23 OBVIOUS.....................................................................................................................................................................18
`D. GROUND 2: CLAIMS 5 AND 11 ARE OBVIOUS OVER KALMANEK IN VIEW OF SHAFFER....................................57
`E. GROUND 3: CLAIMS 21, 24, AND 25: OBVIOUS OVER KALMANEK IN VIEW OF STRATHMEYER ....................59
`F. GROUND 4: CLAIM 17 IS OBVIOUS OVER KALMANEK IN VIEW OF GLEICHAUF...................................................64
`V. CONCLUSION .......................................................................................................................................... 67
`VI. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) ................................................................. I
`A. REAL PARTY-IN-INTEREST .................................................................................................................................................... I
`B. RELATED MATTERS ................................................................................................................................................................. I
`C. LEAD AND BACK-UP COUNSEL .............................................................................................................................................. I
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`I.
`
`INTRODUCTION
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`IPR2018-00884
`U.S. Patent No. 8,539,552
`
`
`Petitioner Apple Inc. (“Apple” or “Petitioner”) requests an Inter Partes
`
`Review (“IPR”) of claims 1-25 (collectively, the “Challenged Claims”) of U.S.
`
`Patent No. 8,539,552 (“the ’552 Patent”). (EX1001).
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`The ’552 Patent discloses a telephony system in which endpoints request
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`certain services and features in call signaling messages. To ensure only authorized
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`services and features are permitted, signaling messages are received and analyzed
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`by non-endpoint network components to ensure the users have subscribed to the
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`requested services and features. As demonstrated by Petitioner below, the
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`purportedly distinguishing feature of the ’552 Patent of intercepting signaling
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`messages to authorize requested services and features was present in the prior art.
`
`II.
`
`SUMMARY OF THE ’552 PATENT
`A. Description of the Alleged Invention of the ’552 Patent
`The ’552 Patent discloses a telephony network 100, which “support[s]
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`packet-based telephony and multimedia sessions and services. The network 100
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`includes a core packet network 102, and two local packet networks 104 and 106, as
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`well as intelligent end-user clients 104a-d and 106a-e associated with the local
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`packet networks 104 and 106.” ’552 Patent (EX1001) at 3:48-54, FIG. 1. The ’552
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`Patent also describes a specific example of the packet-based network, namely IP
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`IPR2018-00884
`U.S. Patent No. 8,539,552
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`network 200, which implements session initiation protocol (SIP) signaling. Id. at
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`4:46-49.
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`As explained in the ’552 Patent, intelligent end-user clients can handle
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`telephony services and features such as signaling and call-control functionality. Id.
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`at 1:23-25. This leaves “the carriers and service provider network’s responsib[le
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`for] little more than providing data pipes.” Id. at 1:23-30.
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`The use of intelligent end-user clients presents the problem, however, that
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`services “may be signaled, controlled, and/or delivered by intelligent end-user
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`clients that are not owned or controlled by the network providers, thereby enabling
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`potential bypassing by the end user of service agreements or other subscription
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`accounting mechanisms.” Id. at 1:48-55. Thus, the intelligent end-user clients may
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`bypass authorization by the network and provide a service to a subscriber not
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`authorized to receive the service. Id. at 2:61–3:7.
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` To address this problem, the ’552 Patent describes a “policy enforcement
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`point” within the network, which “control[s] access to, and invocation of, features
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`and services which may otherwise be delivered to subscribers without the
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`knowledge or authorization of the network.” Id. at 1:59-60, 3:20-36, 12:50-13:5
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`(identifying caller ID as a service), 13:6-28 (identifying call waiting and multi-line
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`service as services), 13:66–14:5 (providing additional listing of services that may
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`be authorized in a user (subscriber) profile), Abstract. The subscriber is authorized
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`IPR2018-00884
`U.S. Patent No. 8,539,552
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`to receive certain services, which are documented in the subscriber’s profile. Id. at
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`2:8-14, 7:2-7, 13:36-51.
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`At call setup, the policy enforcement point receives signaling messages and
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`analyzes them to identify services requested in the message. Id. at 8:56-58, 11:55-
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`64 (signaling matched against database to identify requested services). Requested
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`services are authenticated and network resources are allocated accordingly, as
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`illustrated in FIG. 3 below:
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`
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`See also id. at 8:60–9:8.
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`Although the policy enforcement point can be a single physical network
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`component, the ’552 Patent explains that “the term policy enforcement point is a
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`IPR2018-00884
`U.S. Patent No. 8,539,552
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`reference to a logical localization of a set of tasks and functions that may actually
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`be embodied in one or more physical devices, and/or in a distributed manner.” Id.
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`at 7:61-65; see also id. at 8:32-37.
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`Summary of the Prosecution History of the ’552 Patent
`
`B.
`The application that resulted in the ’552 Patent (“the ’552 Patent
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`Application”) was filed on September 25, 2003. ’552 Patent File History (EX1002)
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`at 1-2. For purposes of this proceeding, Petitioner applies September 25, 2003 as
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`the priority date for the Challenged Claims. Id. at 5, 62. The ’552 Patent
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`Application underwent an extensive prosecution history. Rather than undertake a
`
`review of each Office Action and corresponding response, the below discussion is
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`most relevant to the Challenged Claims and the proposed grounds of rejection.
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`In an Office Action dated September 14, 2011, the pending independent
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`claims were rejected as unpatentable over USPN 7,136,373 to Ma (“Ma”) in view
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`of USPGPub 2002/0116643 to Raanan (“Raanan”). Id. at 375. Applicant
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`conducted an interview with the Examiner on November 2, 2011, and the
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`Examiner Interview Summary details a disagreement on claim language:
`
`The primary subject of the interview was the interpretation of the
`limitation “whether the sender device [or] the intended recipient
`device is authorized [to] invoke the type of service.” The Examiners’
`interpretation of the claim is that only one of the devices . . . needs to
`be checked. However, Applicant argued that both needed to be
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`checked. . . . [I]n the end both parties had to agree to disagree on the
`interpretation of the claim language.
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`IPR2018-00884
`U.S. Patent No. 8,539,552
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`Id. at 399.
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`The Applicant’s Amendment responsive to the Office Action further
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`asserted that the claims require both devices to be authorized. Id. at 419-420;
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`compare to id. at 357-363 (listing claim amendments prior to 9/14/2011 Office
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`Action). Applicant agreed that Raanan disclosed determining if the sender was
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`allowed to request an action or command, but disputed that Raanan taught
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`determining whether both the sender device and recipient device is authorized. Id.
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`at 419; see also id. at 420, last paragraph (arguing that Raanan does not teach
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`determining that “any beneficiary” is authorized to invoke the service). Two
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`additional Office Actions followed, and with no express resolution of the proper
`
`interpretation of this key claim language, the ’552 Patent was allowed on July 8,
`
`2013. Id. at 522. For purposes of this petition only, Petitioner assumes the claims
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`require both caller and callee to be authorized for a requested service.
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`C.
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`Level of a POSITA
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`A person having ordinary skill in the art at the time of the ’552 Patent would
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`have been a person having at least a bachelor’s degree in electrical engineering,
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`computer science or engineering, or in a related field, with at least 2 years of
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`industry or research experience with packet-based telecommunications systems.
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`U.S. Patent No. 8,539,552
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`Additional industry experience or technical training may offset less formal
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`education, while advanced degrees or additional formal education may offset lesser
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`levels of industry experience. Rubin Decl. (EX1003) at ¶¶ 31-33.
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`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§ 42.104
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`Petitioner certifies that the ’552 Patent is available for IPR and that the
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`Petitioner is not barred or estopped from requesting IPR challenging the claims of
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`the ’552 Patent.
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`B.
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`Identification of Challenged Claims Under 37 C.F.R. § 42.104(b)
`and Relief Requested
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`In view of the prior art and evidence presented, claims 1-25 of the ’552
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`Patent are unpatentable and should be cancelled. 37 C.F.R. § 42.104(b)(1).
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`Further, based on the prior art references identified below, IPR of the Challenged
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`Claims should be granted. 37 C.F.R. § 42.104(b)(2).
`
`Proposed Grounds of Unpatentability
`Ground 1: Claims 1-4, 6-10, 12-20, and 22-23 are obvious under
`pre-AIA 35 U.S.C. § 103(a) (“Section 103”) over U.S. Patent No.
`6,324,279 to Kalmanek et al. (“Kalmanek”) in view of the
`knowledge of a Person of Ordinary Skill in the Art (“POSITA”)
`Ground 2: Claims 5 and 11 are obvious under Section 103 over
`Kalmanek in view of the knowledge of a POSITA and in further
`view of U.S. Patent No. 7,023,839 to Shaffer et al. (“Shaffer”)
`
`Exhibits
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`1004
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`1004,
`1005
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`IPR2018-00884
`U.S. Patent No. 8,539,552
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`
`Exhibits
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`Proposed Grounds of Unpatentability
`Ground 3: Claims 21, 24, and 25 are obvious under Section 103
`over Kalmanek in view of the knowledge of a POSITA and in
`further view of U.S. Patent Pub. No. 2001/0026548 to Strathmeyer
`et al. (“Strathmeyer”)
`Ground 4: Claim 17 is obvious under Section 103 over Kalmanek
`in view of the knowledge of a POSITA and in further view of U.S.
`Patent No. 7,412,598 to Gleichauf (“Gleichauf”)
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`1004,
`1006
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`1004,
`1007
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`
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`Section IV identifies where each element of the Challenged Claims is found
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`in the prior art. 37 C.F.R. § 42.104(b)(4). The exhibit numbers of the supporting
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`evidence relied upon to support the challenges are provided above and the
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`relevance of the evidence to the challenges raised are provided in Section IV. 37
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`C.F.R. § 42.104(b)(5). Exhibits EX1001–EX1010 are also attached.
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`C. Claim Construction Under 37 C.F.R. § 42.104(b)(3)
`In this proceeding, claim terms of an unexpired patent should be given their
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`“broadest reasonable construction in light of the specification.” 37 C.F.R.
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`§ 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144-46 (2016).
`
`Adherence to the rules of construction is not a waiver of any argument, in any
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`litigation, that claim terms in the ’552 Patent should not be construed differently or
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`are otherwise invalid (including under 35 U.S.C. § 112).
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`Claims 1, 6, 18, and 23: “intercepting” a message
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`1.
`Claims 1, 6, 18, and 23 recite the network entity intercepting a signaling
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`IPR2018-00884
`U.S. Patent No. 8,539,552
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`message. The ’552 Patent uses the term “intercept” or variants thereof only three
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`times in the specification:
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`(1) “[t]he signaling and call control server 112 intercepts call set-up
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`messages sent between the end-user clients, e.g., intelligent client 104c, and the
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`core packet network 102 …” ’552 Patent (EX1001) at 3:64-67;
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`(2) “Initially, signaling and call control messages are received or intercepted
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`by the policy enforcement point.” Id. at 8:56-58; and
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`(3) “The policy enforcement point may be a border element between a local
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`network and a core network, for example, that intercepts all signaling messages
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`sent in between.” Id. at 8:58-60.
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`A POSITA would readily understand that intercepting signaling messages,
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`as described by the ’552 Patent, is used to indicate the signaling is received by a
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`network entity located between the endpoints of the call (i.e., between the caller
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`and callee). Rubin Decl. (EX1003) at ¶35. In each Challenged Claim that includes
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`the term “intercept,” the component that “intercepts” is a “network entity.” See
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`’552 Patent (EX1001) at Claims 1, 6, 18, and 23. A POSITA would recognize that
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`any such “network entity” is necessarily located between the endpoints of the call.
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`U.S. Patent No. 8,539,552
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`Accordingly, Apple submits that the Broadest Reasonable Interpretation (“BRI”)
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`for “intercepting” means “receiving.”
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`2.
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`Claim 1: “sender device,” “recipient device,” and “device
`profile”
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`Claim 1 recites determining “whether either the sender device or the
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`intended recipient device is authorized to invoke the type of service indicated in
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`the signaling message based in part on a device profile.” Dependent claims 2, 4,
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`and 5 also characterize the invention in terms of services the “sender device” or
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`“recipient device” are authorized to invoke. But the ’552 Patent describes this
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`concept exclusively in terms of user profiles that define services the user is
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`authorized to invoke. See, e.g., id. at 7:3-7 (“[A]uthorization for use of services
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`could be determined according to a user profile stored in the authentication and
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`authorization server 210. The user profile might list services and features to
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`which the user has subscribed.”) (emphasis added). Put simply, there is no
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`“device profile” described in the ’552 Patent. Instead, there is a user profile for a
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`user of a particular device. Further, where the ’552 Patent does reference the end
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`device in the context of the authorization process, it does so only for the common
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`sense proposition that the user is tied to a device. Id. at 2:21-26 (“The proxy server
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`may receive a request from the border element for a user profile of at least one of
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`the end devices, and in response, send the user profile to the at least one of the end
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`U.S. Patent No. 8,539,552
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`devices. The user profile specifies which services the at least one end device is
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`authorized to use.”). In sum, the ’552 Patent consistently describes an
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`authorization process that is (1) based on a user profile and (2) wherein services
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`authorized for a device are in fact services authorized for the user of that device.
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`Accordingly, the BRI of a “determin[ing] whether [a] device . . . is authorized to
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`invoke [a] service . . . based . . . on a device profile” is broad enough to capture the
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`sole embodiment described in the ’552 Patent—determining whether a user of a
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`particular device is authorized to invoke a service based on that user’s profile. See
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`Rubin Decl. (EX1003) at ¶57.
`
`IV. THERE
`IS A REASONABLE LIKELIHOOD THAT THE
`CHALLENGED CLAIMS OF THE
`’552 PATENT ARE
`UNPATENTABLE
`A.
`Kalmanek “relate[s] to call authorization, call signaling, network resource
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`Summary of Kalmanek (EX1004)
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`management and end-to-end signaling between communication devices (e.g.,
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`telephones, personal computers, etc.).” Kalmanek (EX1004) at 3:54-57. As
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`discussed below, Kalmanek relies on intelligent endpoints and recognizes the same
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`problem addressed by the ’552 Patent—theft of service and invoking unauthorized
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`services in a network. Id. at 3:65–4:11. To address these problems while
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`maintaining certain benefits of intelligent end-user clients, the Kalmanek invention
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`includes a method of “allocating network resources” and “reserving and
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`U.S. Patent No. 8,539,552
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`committing network resources based on an authorized quality of service” that relies
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`on intelligent network components between intelligent endpoints. Id. at 1:26-29;
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`see also id. at 1:36-39, 9:6-21 (“Quality of service is a measure of communication
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`service quality during a call, and can include, for example, the bandwidth, delay
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`and latency associated with the call.”). Kalmanek also teaches authorizing custom
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`calling services for a call, such as a caller ID. Id. at 6:49-52 (describing gate
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`controller authorizing services), 46:49-52 (describing signaling architecture for
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`calls with custom calling features), 56:17-44 (describing call flow for caller ID
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`service).
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`Kalmanek describes network 10 having a communications network 100 that
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`supports Internet Protocol (IP) signaling. Id. at 4:33-56. Kalmanek teaches a gate
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`controller in communication with a telephone interface unit (TIU) and a network
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`edge device (NED). Id. The TIUs in Kalmanek may incorporate a broadband
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`interface and therefore, are also referred to in Kalmanek as BTIs. Id. at 5:41-44.
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`Further, the network edge devices may be implemented as routers at the network
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`edge and therefore, are also referred to as edge routers or ERs. Id. at 5:5-8. A
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`schematic of the Kalmanek network is provided in below FIG. 1:
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`To begin a call, the originating telephony interface unit (TIUO) associated
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`with a calling party sends a SETUP message that is received and processed by an
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`originating gate controller (GCO), which in turn sends the setup message to a
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`terminating gate controller (GCT) associated with a called party. Id. at 9:40-50,
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`FIG. 2, Step 210, 13:18-29, FIG. 3, Step 330. Upon the terminating gate controller
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`(GCT) receiving the SETUP message, a gate for the call is established, utilizing the
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`terminating NED. Id. at 9:51-57, 13:29-32, 12:11-15 (noting a gate setup message
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`“is received through a network edge device connecting a trusted network to an
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`untrusted network”). Establishing the gates at the network edge devices, rather than
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`at the gate controllers, allows state information for the call to be maintained at a
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`network entity through which the call is routed, i.e., the NED. Id. at 9:62-66;
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`EX1003 at ¶50 (explaining that the referenced “network entity through which the
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`call is routed” at Kalmanek, 9:65-66 is the NED, i.e., the edge router for the
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`particular domain). Kalmanek further explains that each NED obtains authorization
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`for a particular quality of service, e.g., bandwidth, from its associated gate
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`controller and then provides access to the authorized quality of service for the call.
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`Id. at 5:9-28; see also id. at 27:44-46 (“Resource allocation messages are
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`exchanged between the BTI and the Edge Router for reservation and release of
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`network resources.”), FIG. 23 (illustrating a SETUP message proceeding from a
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`gate controller, through an edge router, and to a BTI (i.e., a broadband TIU)).
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`When
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`the SETUP message
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`is
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`received by
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`the TIUT, a setup
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`acknowledgement (SETUPACK) message is returned to the TIUO. Id. at 13:33-41.
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`The network resources are reserved, with each TIU sending a reserve message to
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`its corresponding NED. Id. at 10:6-19. The reserve message is “part of the
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`reservation process where an allocation of network resources is requested.” Id.
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`The basic call flow for Kalmanek is shown in the below excerpted FIG. 6:
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`Id. at FIG. 6 (excerpt); see also id. at 48:9–50:4 (describing basic connect call flow
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`
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`descriptors).
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`To summarize this stage in the call process, TIUO (or, as shown in FIG. 6,
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`BTIO) has sent a connection request, via the first SETUP message shown in FIG. 6,
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`that is received by its gate controller (GCO). See id. at 21:1–22:67 (describing the
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`SETUP protocol). The GCO authenticates the user and requested services. See id.
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`(“The Gate Controller must verify that this caller-id is valid.”); see also id. at
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`48:36-42 (“GCO authenticates the BTI upon receipt of a SETUP message” and
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`“also performs service-specific admission control.”). The resources are then
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`allocated, via GATEALLOC and GATEALLOCACK messages shown in FIG. 6.
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`See id. at 12:11-17 (noting that state information is contained within a
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`GATEALLOC message), 33:55–34:36 (describing the gate allocation protocol
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`between GC and ER). Each gate controller then establishes a gate at its
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`corresponding NED/ER, via GATESETUP messages. See id. at 34:46–35:38. Each
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`TIU/BTI has also sent a reserve message to its corresponding NED/ER allocating
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`the network resources, which includes information on auxiliary services associated
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`with the call. Rubin Decl. (EX1003) at ¶51 (citing EX1004 at 8:26-28). At this
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`stage, each NED/ER has obtained the needed authorization information to
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`implement the call from its corresponding gate controller. Kalmanek (EX1004) at
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`5:13-22, 27:44-46, 33:56-64 (discussing that the gate controller implements all
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`allocation policies and uses that information to manage the set of gates
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`implemented by the edge routers). The NED/ER is now ready to implement the
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`particular service authorized by the associated gate controller based on gate
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`information provided by the gate controller. Rubin Decl. (EX1003) at ¶52.
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`As explained by Kalmanek, the gate controller authorizes requested services
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`(including quality of service), implements the allocation policy for the services,
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`and establishes the gates based on the allocated policy, wherein the gates are then
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`implemented by the edge routers. Kalmanek (EX1004) at 33:55-64, 48:36-42.
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`Subsequently, end-to-end messages are exchanged between the originating and
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`terminating TIUs/BTIs. Id. at 11:5-14, FIG. 2, Step 260, 13:50-55, FIG. 3, Step
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`395.
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`Once the reserved network resources are committed, each NED can verify
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`“that the actual quality of service sought by the associated TIU is no greater than
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`the quality of service reserved during the reservation process.” Id. at 11:43-47; see
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`also id. at 14:17-27 (explaining that a user only receives authorized quality of
`
`service).
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`B.
`
`Showing of Analogous Art and Prior Art to the ’552 Patent
`1.
`Kalmanek is a U.S. patent with an issue date of November 27, 2001, and
`
`Kalmanek Is Analogous, Prior Art
`
`therefore, is prior art at least under § 102(b).
`
`Kalmanek is also analogous prior art to the ’552 Patent. Kalmanek is
`
`directed to the same problem as the ’552 Patent, namely theft of service or
`
`providing an unauthorized service in a network. Kalmanek (EX1004) at 3:65–4:11.
`
`Kalmanek is also in the same field as the ’552 Patent, as it is directed to a method
`
`of “allocating network resources,” “reserving and committing network resources
`
`based on an authorized quality of service,” and authorizing custom calling services
`
`for a call, such as a caller ID. Id. at 1:26-29, 1:36-39, 9:6-21, 8:18-25; Rubin Decl.
`
`(EX1003) at ¶¶39-40.
`
`
`
` 16
`
`

`

`Shaffer Is Analogous, Prior Art
`
`2.
`Shaffer is a U.S. patent with a filing date of August 19, 1999, and an issue
`
`IPR2018-00884
`U.S. Patent No. 8,539,552
`
`
`date of April 4, 2006. Shaffer claims priority as a continuation-in-part to USPN
`
`6,757,277. Applying the filing date of August 19, 1999, Shaffer is prior art to the
`
`’552 Patent under at least § 102(e). Should Patent Owner attempt to swear behind
`
`the August 19, 1999, filing date, Apple reserves the right to establish an earlier
`
`priority date for Shaffer based on the parent patent disclosure.
`
`Shaffer is also analogous prior art to the ’552 Patent. Shaffer is in the same
`
`field as the ’552 Patent, as it is directed to a bandwidth adjustment or allocation
`
`server (BWAS) that monitors system bandwidth usage in a packet network. Shaffer
`
`(EX1005) at 1:49-61, 2:49-52; see also Rubin Decl. (EX1003) at ¶¶42-43.
`
`Strathmeyer Is Analogous, Prior Art
`
`3.
`Strathmeyer is a U.S. patent application publication with a publication date
`
`of October 4, 2001, and therefore, is prior art to the ’552 Patent under, at the least,
`
`§ 102(b).
`
`Strathmeyer is also analogous prior art to the ’552 Patent. Strathmeyer is in
`
`the same field as the ’552 Patent, as it is directed to call control and signaling in a
`
`packet switched telephone network. Strathmeyer (EX1006) at ¶¶ 0010-0012; see
`
`also Rubin Decl. (EX1003) at ¶¶45-46.
`
`
`
` 17
`
`

`

`Gleichauf Is Analogous, Prior Art
`
`4.
`Gleichauf is a U.S. patent with a filing date of December 29, 2000 and an
`
`IPR2018-00884
`U.S. Patent No. 8,539,552
`
`
`issue date of August 12, 2008, and therefore, is prior art to the ’552 Patent under at
`
`least § 102(e).
`
`Gleichauf is also analogous prior art to the ’552 Patent. Gleichauf is in the
`
`same field as the ’552 Patent, as it is directed to invoking services such as Caller
`
`ID in a packet switched telephone network. Gleichauf (EX1007) at 1:15-39; see
`
`also Rubin Decl. (EX1003) at ¶¶ 48-49.
`
`C. Ground 1: Kalmanek in View of the Knowledge of a POSITA
`Renders Claims 1-4, 6-10, 12-20, and 22-23 Obvious
`1.
`
`1[Preamble]: “A method for controlling a plurality of
`services
`in packet-based networks,
`the method
`comprising”
`
`Claim 1
`
`
`Kalmanek discloses a method of controlling services provided in a network,
`
`including a packet-based network. Specifically, Kalmanek discloses a method of
`
`using a “gate controller” for controlling services (Kalmanek (EX1004) at 6:49-55)
`
`such as codec specification and caller ID (Id. at 10:13-19, 46:49-52) within “packet
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`telephony” networks (Id. at 3:40-45).
`
`Kalmanek addresses the problem of theft of service or providing an
`
`unauthorized service: “embodiments of the present invention protect against theft
`
`of service, and minimize the cost and complexity associated with providing
`
`
`
` 18
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`

`

`IPR2018-00884
`U.S. Patent No. 8,539,552
`
`reliable service.” Id. at 4:9-11. To control access to services, such that a subscriber
`
`only receives authorized services, Kalmanek teaches a method wherein “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. 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.” Id. at 6:49-55; see also
`
`id. at 1:26-29, 3:54-64 (“Embodiments of the present invention relate to call
`
`authorization, call signaling, network resource management and end-to-end
`
`signaling between communication devices (e.g., telephones, personal computers,
`
`etc.).”).
`
`The Kalmanek method allows for authorization of both the bandwidth and
`
`the custom-calling services accessible during a call. Rubin Decl. (EX1003) at ¶53.
`
`For example, and as discussed in detail below, the system enforces a “quality of
`
`service” for the call, i.e., a particular bandwidth for the call, which is defined by a
`
`selected codec. Kalmanek (EX1004) at 9:6-21, 5:9-22, 10:13-19 (discussing that
`
`the gate controllers authorize a quality of service for a call using authentication
`
`databases and customer profile information)). Additionally, the gate controllers
`
`permit only authorized services, such as caller ID, to be invoked by the subscriber.
`
`Id. at 46:49-52 (Section 8 of Kalmanek detailing the signaling architecture for call
`
`
`
` 19
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`

`

`IPR2018-00884
`U.S. Patent No. 8,539,552
`
`flows, including custom calling features such as caller ID), 6:49-52 (teaching that
`
`gate controllers authorize requests for service, including communication services
`
`and certain service features), 56:17-44 (discussing that a gate controller checks to
`
`determine if the customer has subscribed to caller ID), 25:37-43 (discussing that
`
`caller ID information is only provided if the customer has subscribed to it).
`
`
`
`Kalmanek teaches that its method is employed in a communication system
`
`including a packet-based network Id. at 3:49-53 (noting “packet telephony” can be
`
`implemented in the present invention); see also id. at 3:40-45. Kalmanek further
`
`teaches that its communication network 100 may be an Internet Protocol (IP)
`
`network, similar to the ’552 Patent. Compare ’552 Patent (EX1001) at 4:46-48
`
`(“FIG. 2 illustrates a specific example of a network 200, similar to that illustrated
`
`in FIG. 1, in which the packet networks are IP networks.”), with Kalmanek
`
`(EX1004) at 4:50-53 (“Communication network 100 can be a network that
`
`supports, for example, Internet Protocol (IP) signaling, IP media transport, and/or
`
`asynchronous transfer mode (ATM) media transport.”).
`
`
`
` 20
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`

`

`IPR2018-00884
`U.S. Patent No. 8,539,552
`
` Claim 1[A]: “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”
`
`As explained in detail below, Kalmanek teaches a network entity that
`
`intercepts call setup signaling messages between the sender (the caller) and an
`
`intended recipient device (the callee).
`
`Network Entity
`
`Kalmanek teaches a network entity that intercepts signaling messages
`
`between sender and recipient devices. Namely, Kalmanek teaches gate controllers
`
`110 and 111 within network 10, which are in communication with network edge
`
`devices (NEDs) 120 and 121—routers or bridges that connect communication
`
`network 100 to access networks 150 and 151. Kalmanek (EX1004) at 4:33–5:8
`
`(noting NEDs are also referred to as “edge routers”), FIG. 1. The NED provides
`
`access to a particular service based on authorization provided by that NED’s
`
`corresponding gate controller. Id. at 5:9-28, Rubin Decl. (EX1003) at ¶54