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
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`PATENT 8,539,552
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
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`PURSUANT TO 37 C.F.R. §42.107(a)
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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
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`PATENT 8,539,552
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
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`PURSUANT TO 37 C.F.R. §42.107(a)
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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.
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`INTRODUCTION .................................................................................... 1
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`THE ’552 PATENT .................................................................................. 1
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`III.
`
`THE LEVEL OF ORDINARY SKILL IN THE ART ............................. 2
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`IV.
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`PETITIONER DOES NOT PROVE A REASONABLE
`LIKELIHOOD OF UNPATENTABILITY FOR ANY
`CHALLENGED CLAIM .......................................................................... 3
`
`A.
`
`Claim Construction ......................................................................... 3
`
`1.
`
`2.
`
`“intercepting” a message ...................................................... 4
`
`“sender device,” “recipient device,” and “device
`profile” .................................................................................. 6
`
`B.
`
`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” .................................................... 6
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`1.
`
`2.
`
`Independent Claim 1 ............................................................ 6
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`Independent Claims 6, 18, and 23 ...................................... 10
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`C.
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`Kalmanek Does Not Disclose “a signaling message” .................. 10
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`1.
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`2.
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`Independent Claim 1 .......................................................... 11
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`Independent Claims 6, 18, 23, and 24 ................................ 12
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`D.
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`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” ............................................ 13
`
`ii
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`IPR2018-00884
`U.S. Patent 8,539,552
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`1.
`
`2.
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`Independent Claim 1 .......................................................... 13
`
`Independent Claims 6, 18, 23, and 24 ................................ 17
`
`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” ....................................................................... 18
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`1.
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`2.
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`Independent Claim 1 .......................................................... 19
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`Independent Claims 6, 18, 23, and 24 ................................ 20
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`The Petition Redundantly Challenges Claim 17 .......................... 21
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`The Petition Fails As To The Challenged Dependent
`Claims ........................................................................................... 23
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`E.
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`F.
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`G.
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`V.
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`CONCLUSION ....................................................................................... 24
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`
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`List of Exhibits
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`Exhibit No.
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`Description
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`2001
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`2002
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`Declaration of William C. Easttom
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`McGraw-Hill Dictionary of Scientific and Technical Terms,
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`Sixth Edition
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`2003
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`Netwon’s Telecom Dictionary, Sixteenth Edition
`
`iii
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`
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`IPR2018-00884
`U.S. Patent 8,539,552
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`I.
`
`INTRODUCTION
`
`Uniloc Luxembourg S.A. (the “Uniloc” or “Patent Owner”) submits this
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`Preliminary Response to Petition IPR2018-00884 for Inter Partes Review (“Pet.” or
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`“Petition”) of United States Patent No. 8,539,552 (“the ’552 Patent” or “EX1001”)
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`filed by Apple, Inc. (“Petitioner”). The instant Petition is procedurally and
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`substantively defective for at least the reasons set forth herein.
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`II. THE ’552 PATENT
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`The ’552 patent is titled “System and method for network based policy
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`enforcement of intelligent-client features.” The ʼ552 patent issued September 17,
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`2013, from U.S. Patent Application No. 10/671,375 filed September 25, 2003.
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`The inventors of the ’552 patent observed that at the time of the invention,
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`there was an emergence of Internet Protocol (IP) telephony and IP multimedia
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`networks. And to the extent that telephony services and features could be
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`implemented in intelligent clients, the carriers and service provider network's
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`responsibilities included little more than providing data pipes. Therefore, the
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`carrier’s and service providers' ability to enforce the authorization of service usage
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`was important. EX1001, 1:14-55. Accordingly, for networks to retain control over
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`the features and services used by subscribers that use intelligent end-user clients, the
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`networks needed to be able to recognize signaling and call control messages and
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`transactions that implemented those features and services within the network. Id.,
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`2:63-3:7.
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`According to the invention of the ’552 Patent, a system and method for using
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`network-based policy enforcement to control access to, and invocation of, features
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`1
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`IPR2018-00884
`U.S. Patent 8,539,552
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`and services which may otherwise be delivered to subscribers without the knowledge
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`or authorization of the network. An operator of an IP telephony and/or IP multimedia
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`network may enforce authorization or privileges of intelligent end-user clients to
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`utilize or invoke services in the network, even when the capabilities for the requisite
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`signaling and call control of those services may reside in the end-user clients
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`themselves. Id.3:20-30. In one embodiment, a policy enforcement point is
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`maintained in the network by elements that are under control of the network
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`operator. This approach lessens and/or eliminates a need for the network operator to
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`police the selection of client devices, and at the same time, allows end users to install
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`nearly any suitable device of their choosing. Id., 3:31-36.
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`III. THE LEVEL OF ORDINARY SKILL IN THE ART
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`The Petition alleges that “[a] person having ordinary skill in the art at the time
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`of the ’552 Patent would have been a person having at least a bachelor’s degree in
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`electrical engineering, computer science or engineering, or in a related field, with at
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`least 2 years of
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`industry or
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`research experience with packet-based
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`telecommunications systems. Additional industry experience or technical training
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`may offset less formal education, while advanced degrees or additional formal
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`education may offset lesser levels of industry experience.” Pet. 6. Given that
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`Petitioner fails to meet its burden of proof in establishing prima facie anticipation or
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`obviousness when applying its own definition of a person of ordinary skill in the art
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`(“POSITA”), Patent Owner does not offer a competing definition for POSITA at this
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`preliminary stage, though it reserves the right to do so in the event that trial is
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`instituted.
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`2
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`IPR2018-00884
`U.S. Patent 8,539,552
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`IV. PETITIONER DOES NOT PROVE A REASONABLE LIKELIHOOD
`OF UNPATENTABILITY FOR ANY CHALLENGED CLAIM
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`Petitioner has the burden of proof to establish entitlement to relief. 37 C.F.R.
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`§42.108(c) (“review shall not be instituted for a ground of unpatentability unless
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`. . . there is a reasonable likelihood that at least one of the claims challenged . . . is
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`unpatentable”). The Petition should be denied as failing to meet this burden.
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`The raises the following obviousness challenges under 35 U.S.C. § 103:
`Ground
`Claims
`Reference(s)
`Kalmanek1 and knowledge of a Person of
`1
`1-4, 6-10, 12-20, and 22-
`23
`Ordinary Skill in the Art (“POSITA”)
`Kalmanek and knowledge of a POSITA and
`5 and 11
`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
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`Patent Owner submits that the Board need not construe any claim term in a
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`particular manner in order to arrive at the conclusion that the Petition is
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`substantively deficient. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361
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`(Fed. Cir. 2011) (“need only be construed to the extent necessary to resolve the
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`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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`3
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`IPR2018-00884
`U.S. Patent 8,539,552
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`Petitioner proposes constructions. As explained below, Petitioner bases its
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`patentability challenges on erroneous constructions, which provides an independent
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`and fully-dispositive basis to deny the Petition in its entirety. See Mentor Graphics
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`Corp., v. Synopsys, Inc., IPR2014-00287, 2015 WL 3637569, (Paper 31) at *11
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`(P.T.A.B. June 11, 2015), aff'd sub nom. Synopsys, Inc. v. Mentor Graphics Corp.,
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`669 Fed. Appx. 569 (Fed. Cir. 2016) (finding Petitioner’s claim construction
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`unreasonable in light of the specification, and therefore, denying Petition as tainted
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`by reliance on an incorrect claim construction).
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`1.
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`“intercepting” a message
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`Petitioner seeks to improperly broaden and misconstrue the term
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`“intercepting” a signaling message to mean merely “receiving” a message. Pet. 8-
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`9. The term “intercepting” cannot include simply “receiving” a signaling message
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`because it is against the intrinsic evidence and it is against the understanding of a
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`POSITA.
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`First, as the Petition itself points out, the specification expressly
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`distinguishes between “received” and “intercepted” messages: “Initially, signaling
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`and call control messages are received or intercepted by the policy enforcement
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`point.” EX1001, 8:56-58 (emphasis added). Therefore, the patentee knew the
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`difference and articulated the difference between “receiving” and “intercepting” a
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`message, and the specification itself teaches against equating the two.
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`Additionally, the claims themselves expressly differentiates a device
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`“intercepting” a message and the “intended recipient” of that message. For
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`4
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`IPR2018-00884
`U.S. Patent 8,539,552
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`example, Claim 1 recites “a network entity intercepting a signaling message
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`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
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`“intercepting” a message merely meant “receiving” a message, then the claim
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`language above would be wholly redundant, because the “intended recipient” by
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`definition would receive the message.
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`Furthermore, unlike in independent Claims 1, 6, 18, and 23, independent
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`Claim 24 specifically uses the term “receiving” instead of the term “intercepting”.
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`See EX1001, claim 24, 22:47-48 (“a proxy server for receiving a request from the
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`border element…”) (emphasis added). Thus further confirming that the patentee
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`not only knew the different between “intercepting” and “receiving”, but that the
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`terms have different meanings and are not synonyms or interchangeable.
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`Second, as Mr. Easstom testifies, a POSITA would understand that the entity
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`intercepting a message would not be one of the intended recipients of that
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`message. EX2001 ¶¶ 8-9. In other words, a POSITA would understand that the
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`device that is intercepting a message would be a third party to the intended
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`recipients of that message. Id. And as the Petition itself admits, Petitioner
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`specifically seeks to improperly broaden the definition of the term “intercepting”
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`here to include a “gate controller” device, that is specifically the intended recipient
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`of that message. See Pet. 24-25 (“Kalmanek explains that the BTI initiates a
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`transaction with the gate controller via the SETUP message. … Applying this
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`construction, Kalmanek teaches that the setup message is intercepted by the gate
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`controller.”) (emphasis added).
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`5
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`IPR2018-00884
`U.S. Patent 8,539,552
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`Petitioner’s proposed construction improperly seeks to broaden and
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`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
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`construction should be rejected because it is against the intrinsic evidence and it is
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`against the understanding of the meaning of the term to a POSITA.
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`2.
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`“sender device,” “recipient device,” and “device profile”
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`At this preliminary stage, Patent Owner submits that the Board need not
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`construe any claim term, including the terms “sender device,” “recipient device,”
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`and “device profile”, in a particular manner in order to arrive at the conclusion that
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`the Petition is substantively deficient. Wellman, 642 F.3d at 1361. Therefore at this
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`preliminary stage, Patent Owner does not submit a competing definition, however,
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`in the event that trial is instituted, Patent Owner reserves the right to object to
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`Petitioner’s proposed construction and provide Patent Owner’s proposed
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`construction.
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`B.
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`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”
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`1.
`
`Independent Claim 1
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`As discussed above in Section IV.A.1, Petitioner’s proposed claim
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`construction of the term “intercepting” a message is improper, specifically that
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`“intercepting” a message cannot include being the intended, targeted recipient of
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`that message. Further, such a proposed construction goes against the intrinsic
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`evidence and against the understanding of the meaning of the term to a POSITA.
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`6
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`IPR2018-00884
`U.S. Patent 8,539,552
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`As shown below Petitioner bases its patentability challenges on this erroneous
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`construction, and therefore the Petition should be denied in its entirety. See Mentor
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`Graphics Corp., IPR2014-00287, 2015 WL 3637569, (Paper 31) at *11 aff'd sub
`
`nom. Synopsys, Inc., 669 Fed. Appx. 569 (finding Petitioner’s claim construction
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`unreasonable in light of the specification, and therefore, denying Petition as tainted
`
`by reliance on an incorrect claim construction).
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`For this limitation, the Petition argues that “Kalmanek teaches that the gate
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`controllers intercept signaling messages, such as a call setup message.” Pet. 23
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`(emphasis added). However, as the Petition itself plainly shows the “gate
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`controllers” of Kalmanek do not intercept the call setup message, instead the “gate
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`controllers” are the intended recipients of the call setup messages:
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`“Kalmanek explains that the BTI initiates a transaction
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`with the gate controller via the SETUP message.
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`Kalmanek (EX1004) at 21:1-15.”
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`Pet. 24.
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`“In other words, upon receiving a setup request message
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`from a calling party, the gate controller can authenticate
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`the identity of the calling party and authorize the service
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`sought by the calling party.”
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`Pet. 25 (quoting Kalmanek) (emphasis added).
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`“At step 330, the originating TIU 170 sends a setup
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`message to the originating gate controller 110.”
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`Id. (quoting Kalmanek) (emphasis added).
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`7
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`IPR2018-00884
`U.S. Patent 8,539,552
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`That the “gate controllers” of Kalmanek are in fact the intended recipients
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`and targets of the setup message, and therefore do not intercept the setup message
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`is further confirmed by Figure 3 of Kalmanek:
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`
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`8
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`IPR2018-00884
`U.S. Patent 8,539,552
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`EX1004, Fig. 3 (red underlining added).
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`As shown in Figure 3 of Kalmanek, above, the setup message is sent
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`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”
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`a setup message because the “gate controllers” are in fact the targeted and intended
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`recipients of the setup message.
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`Finally, further acknowledging that the claim language itself differentiates a
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`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
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`that this term requires construction, even under Petitioner’s own construction, the
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`claim language makes clear the “intended recipient” and the “intercepting” device
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`are not the same. Because as discussed above in Section IV.B.1, if “intercepting” a
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`message merely meant “receiving” a message, then the claim language would be
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`wholly redundant, because the “intended recipient” by definition would receive the
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`message. In other words, the claim language specifically shows that the device
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`“intercepting” of a message cannot be the “intended recipient” of that message.
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`Petitioner bases its patentability challenges on the erroneous construction
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`that being directly targeted as the intended recipient of a setup message can also
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`mean “intercepting” that message. As previously discussed in Section IV.A.1,
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`above, Petitioner’s proposed construction is improper and against the intrinsic
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`evidence and against the understanding of a POSITA. Therefore, for at least this
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`reason alone, the Petition should be denied in its entirety. See Mentor Graphics
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`Corp., IPR2014-00287, 2015 WL 3637569, (Paper 31) at *11 aff'd sub nom.
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`9
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`IPR2018-00884
`U.S. Patent 8,539,552
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`Synopsys, Inc., 669 Fed. Appx. 569
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`2.
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`Independent Claims 6, 18, and 23
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`For the corresponding limitation of “intercepting” a message in each of
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`independent claims 6, 18, and 23, Petitioner relies exclusively on its discussion of
`
`claim 1:
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`• 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
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`message, wherein the message is also a signaling message for a
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`call.”);
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`• Discussing Claim 18:
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`o See Pet. 52 (“See mapping for Claim 1[A]…”);
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`• Discussing claim 23:
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`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].”);
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`Therefore, for the same reasons discussed in Section IV.B.1, above, the
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`Petition’s challenge against independent Claims 6, 18, and 23 also fail.
`
`C. Kalmanek Does Not Disclose “a signaling message”
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`10
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`IPR2018-00884
`U.S. Patent 8,539,552
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`1.
`
`Independent Claim 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
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`Petition, including in both of Petitioner’s examples here, the Petition relies on
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`Kalmanek’s “setup” or “GATESETUP” messages as allegedly being the required
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`“signaling message”. But because Kalmanek’s “setup” and/or “GATESETUP”
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`messages are 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
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`Petition fails.
`
`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).
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`However, as admitted repeatedly in the Petition, Kalmanek’s setup or
`
`GATESETUP messages are not messages sent between caller and callee. For
`
`11
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`IPR2018-00884
`U.S. Patent 8,539,552
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`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.
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`(quoting Kalmanek) (emphasis added); And “Kalmanek teaches the GATESETUP
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`message sent from the gate controller to the edge router.” Pet. 28 (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 and/or GATESETUP
`
`messages are not sent to the callee device, and thus cannot be the required
`
`“signaling messages”. For this reason alone, the Petition fails.
`
`2.
`
`Independent Claims 6, 18, 23, and 24
`
`For the corresponding limitation of a “signaling message” in each of
`
`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]”)
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`• Discussing Claim 18:
`
`o See Pet. 52 (“See mapping for Claim 1[A]…”);
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`12
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`IPR2018-00884
`U.S. Patent 8,539,552
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`• 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
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`authorized to invoke the service, etc. For each of the steps, see
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`mapping for claims 1[A]-1[E] and claims 6[A]-6[E].”);
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`• Discussing Claim 24:
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`o See Pet. 61 (“As discussed above for claim 1[A], the Kalmanek
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`gate controller in combination with the network edge device
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`serve as a network entity intercepting signaling messages.”)
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`Therefore, for the same reasons discussed in Section IV.C.1, above, the
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`Petition’s challenge 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”
`
`1.
`Independent Claim 1
`The claim language requires that the services are “indicated in the signaling
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`message”. The Petition relies on two alleged “services” of Kalmanek, the so-called
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`caller ID and codec specification “services”. As discussed above in Section IV.C,
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`the SETUP message of Kalmanek cannot be the required “signaling message”, and
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`for at least that reason alone, the Petition fails. However, the SETUP message of
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`Kalmanek further fails to disclose the alleged “services” in the SETUP message.
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`13
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`IPR2018-00884
`U.S. Patent 8,539,552
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`Caller ID [blocking]
`The Petition tacitly admits that the SETUP message of Kalmanek does not
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`disclose “caller-id blocking” by claiming, without support, that “A POSITA would
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`understand that ‘caller-id blocking’ could be included in the originating SETUP
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`message…” Pet. 35 (emphasis added). Petitioner purports to cite to its expert for
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`support, however, its expert provides nothing more than the identical conclusory
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`statement. That is insufficient.
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`“In appropriate circumstances, a single prior art reference can render a claim
`
`obvious. However, there must be a showing of a suggestion or motivation to
`
`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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`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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`14
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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
`
`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
`
`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
`
`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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`“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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`15
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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
`
`The Petition also alleges a “codec specification service” disclosed by
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`Kalmanek. Pet. 36-38. However, the term “codec” never even appears once in
`
`Kalmanek. And “CODEC” was a commonly understood term of art at the time of
`
`the invention, one that the inventors of Kalmanek would have known. EX2001, ¶
`
`44. Further, the Petition itself appears confused as to what it refers to as a “codec”,
`
`instead the Petition points to what is referred to as the “CODING parameter” and
`
`bandwidth management of Kalmanek. Pet. 37.
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`First, the “CODING parameter” of Kalmanek is defined by Kalmanek as
`
`how the message originator encapsulates its message:
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`EX1004, 25:54-60.
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`16
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`The above definition provided by Kalmanek shows that its CODING
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`parameter is merely message originator encapsulation. EX2001, ¶¶ 45-46.
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`Next, neither does the “BANDWIDTH” parameter of Kalmanek disclose a
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`codec:
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`EX1004, 35:6-12 (highlighting added).
`
`
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`As the passage above shows, the “BANDWIDTH” parameter of Kalmanek
`
`makes no mention of a codec, only a coding style, which refers back to the
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`message origination encapsulation.
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`Therefore, because neither the “CODING parameter” or bandwidth
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`management of Kalmanek discloses any “codec specification service”, Kalmanek
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`cannot, and does not disclose an indication of a “codec specification service” in its
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`SETUP message.
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`2.
`
`Independent Claims 6, 18, 23, and 24
`
`For the corresponding limitation of a “the network entity making a
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`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
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`17
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`
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`part on a device profile maintained in part on a remote enforcement point” in each
`
`of independent claims 6, 18, 23, and 24, Petitioner relies exclusively on its
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`discussion of claim 1:
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`• Discussing Claim 6:
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`o See Pet. 44 (“Claim 6[C] is substantially similar in scope to
`
`claim 1[C]. … Therefore, see claim 1[C] for the teachings in
`
`Kalmanek.”);
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`• Discussing Claim 18:
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`o See Pet. 52 (“See mapping for claims 1[C] and 1[D].”);
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`• Discussing Claim 23:
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`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].”);
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`• Discussing Claim 24:
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`o See Pet. 62 (“See mapping for claim 1[B].”; and “See mapping
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`for claims 1[C] and 1[E].”)
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`Therefore, for the same reasons discussed in Section IV.D.1, above, the
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`Petition’s challenge against independent Claims 6, 18, 23, and 24 also fail.
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`E.
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`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
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`18
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`either the sender device or the intended recipient device is
`authorized to invoke the type of service indicated in the signaling
`message”
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`1.
`Independent Claim 1
`For this limitation, the Petition relies solely on the alleged “caller-id
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`blocking” “service”. See Pet. 40. First, Petitioner makes no mention of the alleged
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`“codec specification service” that it discussed in previous limitations, therefore,
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`Petitioner concedes that its alleged “codec specification service” cannot and does
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`not render obvious any of the challenged claims.
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`Second, as discussed above in Section IV.C, the SETUP message of
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`Kalmanek cannot be the required “signaling message”, and for at least that reason
`
`alone, the Petition fails.
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`Third, as discussed above in Section IV.D, Kalmanek itself states that the
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`“caller-ID blocking” discussed in Kalmanek is implemented by its gate controllers,
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`and therefore SETUP message of Kalmanek does not contain an indication of the
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`alleged “caller-id blocking” service, as would be required by the claim language.
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`Thus, for at least the reasons recited above, Kalmanek cannot, and does not
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`disclose “the network entity filtering the signaling message based on the
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`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”, as
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`required by the claim language.
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`19
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`2.
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`Independent Claims 6, 18, 23, and 24
`
`For the corresponding limitation of a “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” in each
`
`of independent claims 6, 18, 23, and 24, Petitioner relies exclusively on its
`
`discussion of claim 1:
`
`• Discussing Claim 6:
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`o See Pet. 45-46 (“Claim 6[E] is substantially similar in scope to
`
`claim 1[E].. … For further detail, see the discussion of Kalmanek
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`at claim 1[E].”);
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`• Discussing Claim 18:
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`o See Pet. 53 (“See mapping for claim 1[E].”);
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`• Discussing Claim 23:
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`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].”);
`
`• Discuss
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