UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`GOOGLE LLC,
`Petitioner
`
`v.
`
`VOIP-PAL.COM, INC.,
`Patent Owner
`
`____________________
`
`Patent No. 10,880,721
`____________________
`
`PETITIONER’S NOTICE
`REGARDING MULTIPLE PETITIONS
`
`
`
`
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`GOOGLE LLC,
`Petitioner
`
`v.
`
`VOIP-PAL.COM, INC.,
`Patent Owner
`
`____________________
`
`Patent No. 10,880,721
`____________________
`
`PETITIONER’S NOTICE
`REGARDING MULTIPLE PETITIONS
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`INTRODUCTION ........................................................................................... 1
`I.
`RANKING ....................................................................................................... 1
`II.
`III. DIFFERENCES BETWEEN THE PETITIONS, WHY THEY ARE
`MATERIAL, AND WHY BOTH SHOULD BE INSTITUTED ................... 2
`IV. CONCLUSION ................................................................................................ 5
`
`
`
`
`
`i
`
`
`
`U.S. Patent No. 10,880,721
`
`I.
`
`INTRODUCTION
`Petitioner is filing two petitions challenging different claims of U.S. Patent
`
`No. 10,880,721 (“the ’721 patent”). “To aid the Board in determining” why “more
`
`than one petition is necessary,” Petitioner provides the information below. See
`
`PTAB Consolidated Trial Practice Guide (“TPG”) (November 2019) at 59-60.
`
`II. RANKING
`While both petitions are meritorious and justified as explained below,
`
`Petitioner requests that the Board consider the petitions in the following order:
`
`1
`
`Rank Petition Challenged
`Claims
`Petition 1 1, 6, 14, 15,
`16, 20, 25,
`34, 38, 39,
`43, 45, 46,
`49, 50, 135,
`136, and
`140
`
`2
`
`Petition 2 51, 57, 63,
`77, 103,
`104, 108,
`109, 110,
`124, 130,
`133, 138,
`
`Grounds
`
`Ground 1: Claims 1, 14, 15, 20, 38, 39, 46 and
`136 Anticipated by Teodosiu;
`Ground 2: Claims 16, 34, and 49 Obvious over
`Teodosiu;
`Ground 3: Claims 6, 25, and 43 Obvious over
`Teodosiu and Kaal;
`Ground 4: Claim 45 Obvious over Teodosiu and
`Guedalia;
`Ground 5: Claims 50 and 140 Obvious over
`Teodosiu and Nix;
`Ground 6: Claim 135 Obvious over Teodosiu
`and Jiang; and
`Ground 7: Claims 34 and 49 Obvious over
`Teodosiu and Rosenberg.
`Ground 1: Claims 51, 57, 77, 103, 104, 108, and
`124 Obvious over Teodosiu;
`Ground 2: Claims 63, 109, 110, 138, and 139
`Obvious over Teodosiu and Nix; and
`Ground 3: Claims 130 and 133 Obvious over
`
`1
`
`
`
`U.S. Patent No. 10,880,721
`
`and 139
`Teodosiu, Nix, and Kaal.
`III. DIFFERENCES BETWEEN THE PETITIONS, WHY THEY ARE
`MATERIAL, AND WHY BOTH SHOULD BE INSTITUTED
`While Petitioner provides the above ranking per the PTAB’s guidance,
`
`Petitioner believes ranking in this instance is inappropriate and/or unnecessary. The
`
`Board should institute both petitions because each petition addresses different claims
`
`that recite different features.
`
` This, coupled with the number of claim
`
`elements/features that need to be addressed across the challenged claims, warrant
`
`the submission of two petitions.
`
`Patent Owner asserts claims 1, 6, 15, 16, 20, 25, 34, 38, 39, 43, 45, 46, 49, 50,
`
`51, 63, 77, 103, 104, 109, 110, 124, 130, 133, 135, 136, 138, 139, and 140 of the
`
`’721 patent against Petitioner in the related litigation, VoIP-Pal.com, Inc. v. Google,
`
`LLC f/k/a Google Inc., 6-21-cv-00667 (WDTX). (See, e.g., Petition 1, Section II.)
`
`Independent claims 1, 20, 38, and 50 relate to the features from the perspective of
`
`the wireless device requesting and receiving an access number from a server, while
`
`independent claims 51, 77, 103, and 130 relate to the features from the perspective
`
`of the server providing an access number to a wireless device. And while
`
`independent claims 1 and 51, for example, include similar limitations, e.g.,
`
`transmitting/receiving an “access code request message,” the claims also recite
`
`limitations that do not overlap and require their own separate explanations, e.g., “in
`
`response to receiving the access code reply message, causing the wireless device to
`
`2
`
`
`
`U.S. Patent No. 10,880,721
`
`use the access code … to initiate communications from the wireless device to the
`
`destination node through the channel identified by the access code …” (cl. 1.i) and
`
`“in response to receiving the access code request message, causing a routing
`
`controller to produce an access code” (cl. 51.c). (Compare EX1001, cls.1, 20, 38,
`
`and 50 with id., cls. 51, 77, 103, and 130.) Thus, thirty-one claims are challenged
`
`across the two petitions.
`
`Moreover, the dependent claims relate to various different features requiring
`
`explanations. For example, claim 133 recites features related to if the destination
`
`node is a PSTN telephone on the public switched telephone network (PSTN).
`
`(Petition 2, 77-80.) Claim 45 recite features related to the location identifier
`
`comprises a user-configured identifier of a location associated with the wireless
`
`apparatus. (Petition 1, 66-69.) Given the different features recited in the challenged
`
`claims, as well as the numerous claims and claim elements, challenging all claims
`
`of the ’721 patent in a single petition is not feasible or administratively efficient.
`
`For instance, Petitioner’s analysis for independent claims 1, 20, 38, and 50 in
`
`Petition 1 occupies about 28 pages (Petition 1, 17-27, 29-42, 76-80) and the analysis
`
`for the dependent claims 6, 14, 15, 16, 20, 25, 34, 39, 43, 45, 46, 49, 135, 136, and
`
`140 occupies another 51 pages (id., 27-29, 42-76, 81-88). Petitioner’s analysis for
`
`independent claims 51, 77, 103, and 130 in Petition 2 occupies about 37 pages
`
`(Petition 2, 13-29, 30-44, 70-76) and the analysis for the dependent claims 57, 63,
`
`3
`
`
`
`U.S. Patent No. 10,880,721
`
`104, 108, 109, 110, 124, 133, 138, and 139 occupies another 31 pages (id., 29-30,
`
`44-69, 76-80). Also, there is no overlap in the challenged claims across the two
`
`petitions. The Board has instituted multiple petitions challenging different claims
`
`of the same patent in similar situations and should do the same here. Microsoft Corp.
`
`v. Synkloud Tech., LLC, IPR2020-01269, Paper 9 at 7–9 (April 7, 2021) (instituting
`
`two petitions for IPR where “the length of the claims, and the difference in scope of
`
`[the independent claims], warranted the filing of two petitions”); Adobe Inc. v.
`
`Synkloud Tech., LLC, IPR2020-01392, Paper 8 at 9–10 (March 11, 2021) (similar).
`
`Accordingly, both petitions warrant institution so the Board may consider
`
`Petitioner’s positions regarding all the challenged claims directed to various
`
`different features. The Board’s decision concerning the patentability of the
`
`challenged claims in each petition would thus be materially different as it would
`
`address the validity of different claims. Thus, exercising discretion to deny one
`
`petition over the other would leave an asserted claim in the related litigation
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`unaddressed. The current circumstances are consistent with the guidance in the
`
`consolidated TPG, which states that “the Board recognizes that there may be
`
`circumstances in which more than one petition may be necessary.” See PTAB
`
`Consolidated TPG at 59–60.
`
`Institution of both petitions is warranted because Petitioner had to address the
`
`different claims in two petitions to ensure the grounds associated with each
`
`4
`
`
`
`U.S. Patent No. 10,880,721
`
`challenged claim contained the required specificity as to how the prior art meets each
`
`claim limitation within the applicable word limit. The level of detail included in the
`
`petitions is appropriate, given it is Petitioner’s burden to establish unpatentability of
`
`the challenged claims. The Board should not penalize Petitioner by exercising its
`
`discretion to deny either petition because of the grounds being presented across two
`
`petitions. Administrative Procedures Act and due process weigh against denying the
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`institution of either petition under 35 U.S.C. § 314(a). The two petitions here do not
`
`constitute an abuse of the process because no petitioner has previously filed any
`
`petition challenging the ’721 patent.
`
`IV. CONCLUSION
`For the reasons given above, the Board should institute both petitions.
`
`Dated: June 3, 2022
`
`Respectfully submitted,
`
`By:/Naveen Modi/
`Naveen Modi (Reg. No. 46,224)
`Counsel for Petitioner
`
`
`
`
`5
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`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on June 3, 2022, I caused a true and correct copy of the
`
`foregoing Petitioner’s Notice Regarding Multiple Petitions to be served via express
`
`mail on the Patent Owner at the following correspondence address of record as listed
`
`on PAIR:
`
`THORPE NORTH & WESTERN, LLP.
`P.O. Box 1219
`SANDY UT 84091-1219
`Customer Number: 20551
`
`A courtesy copy was also sent via electronic mail to the Patent Owner’s
`
`
`
`litigation counsel at the following addresses:
`
`Lewis E. Hudnell, III
`lewis@hudnellaw.com
`Nicolas S. Gikkas
`nick@hudnelllaw.com
`Hudnell Law Group P.C.
`800 W. El Camino Real Suite 180
`Mountain View, California 94040
`T: 650.564.3698
`F: 347.772.3034
`
`By: /Naveen Modi/
` Naveen Modi (Reg. No. 46,224)
` Counsel for Petitioner
`
`
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