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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`AMAZON.COM, INC., AMAZON.COM SERVICES, LLC,
`AMAZON WEB SERVICES, INC,
`and T-MOBILE USA, INC.,
`Petitioners,
`
`v.
`
`VOIP-PAL.COM, INC.,
`Patent Owner.
`
`
`
`Case Nos. IPR2022-01180, IPR2022-01181
`U.S. Patent No. 10,880,721
`
`
`
`
`PETITIONERS’ NOTICE OF MULTIPLE PETITIONS
`
`
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`
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`I.
`
`INTRODUCTION
`
`Notice of Multiple Petitions
`IPR2022-01180, IPR2022-01181
`
`Petitioners are filing two petitions challenging different claims of U.S. Pa-
`
`tent No. 10,880,721 (“the ’721 patent”). “To aid the Board in determining” why
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`“more than one petition is necessary,” Petitioners provide the information below.1
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`See PTAB Consolidated Trial Practice Guide (“TPG”) (November 2019) at 59-60.
`
`II. RANKING
`
`While both petitions are meritorious and justified as explained below, Peti-
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`tioners request that the Board consider the petitions in the following order:
`
`Order
`
`Petition
`
`1
`
`Petition 1
`(IPR2022-
`01180)
`
`Challenged
`Claims
`1, 6, 14-16,
`20, 25, 34, 38-
`39, 43, 45-46,
`49-50, 135-
`136, and 140
`
`Grounds
`
`Ground 1: Claims 1, 14, 15, 20, 38, 39,
`46 and 136 – Anticipated by Teodosiu;
`
`Ground 2: Claims 16, 34, and 49 – Ob-
`vious over Teodosiu;
`
`Ground 3: Claims 6, 25, and 43 – Obvi-
`ous over Teodosiu and Kaal;
`
`Ground 4: Claim 45 – Obvious over Te-
`odosiu and Guedalia;
`
`
`
`1 To ease the Board’s analysis, this Notice of Multiple Proceedings is substan-
`
`tively the same as the Notice of Multiple Proceedings filed in Google LLC v. VoIP-
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`Pal, Inc., IPR2022-01074 (“the 1074 proceeding”), filed on June 3, 2022, for U.S.
`
`Patent No. 10,880,721 at Paper 3.
`
`
`
`2
`
`
`
`
`
`Notice of Multiple Petitions
`IPR2022-01180, IPR2022-01181
`
`Order
`
`Petition
`
`Challenged
`Claims
`
`Grounds
`
`2
`
`Petition 2
`(IPR2022-
`01181)
`
`51, 57, 63, 77,
`103-104, 108-
`110, 124, 130,
`133, 138-139
`
`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 – Obvi-
`ous over Teodosiu, Nix, and Kaal.
`
`
`
`III. DIFFERENCES BETWEEN THE PETITIONS, WHY THEY ARE
`MATERIAL, AND WHY BOTH SHOULD BE INSTITUTED
`
`While Petitioners provide the above ranking per the PTAB’s guidance, Peti-
`
`tioners believe ranking in this instance is inappropriate and/or unnecessary. The
`
`Board should institute both petitions because each petition addresses different
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`claims that recite different features. This, coupled with the number of claim ele-
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`ments/features that need to be addressed across the challenged claims, warrant the
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`submission of two petitions. Patent Owner asserts claims 1, 6, 15, 16, 20, 25, 34,
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`38, 39, 43, 45, 46, 49, 50, 51, 63, 77, 103, 104, 109, 110, 124, 130, 133, 135, 136,
`
`
`
`3
`
`
`
`
`
`Notice of Multiple Petitions
`IPR2022-01180, IPR2022-01181
`
`138, 139, and 140 of the ’721 patent against Petitioners in the related litigations,
`
`VoIP-Pal.com, Inc. v. Amazon.com, Inc., et al., Case No. 6-21-cv-00668 (W.D.
`
`Tex.) and VoIP-Pal.com, Inc. v. T-Mobile USA, Inc., Case No. 6-21-cv-00674
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`(W.D. Tex.). (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
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`receiving an access number from a server, while independent claims 51, 77, 103,
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`and 130 relate to the features from the perspective of the server providing an ac-
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`cess number to a wireless device. And while independent claims 1 and 51, for ex-
`
`ample, include similar limitations, e.g., transmitting/receiving an “access code re-
`
`quest message,” the claims also recite limitations that do not overlap and require
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`their own separate explanations, e.g., “in response to receiving the access code re-
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`ply message, causing the wireless device to use the access code … to initiate com-
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`munications from the wireless device to the destination node through the channel
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`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). (Pe-
`
`
`
`4
`
`
`
`
`
`Notice of Multiple Petitions
`IPR2022-01180, IPR2022-01181
`
`tition 2, 78-81.) Claim 45 recite features related to the location identifier compris-
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`es a user-configured identifier of a location associated with the wireless apparatus.
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`(Petition 1, 64-68.) 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, Petitioners’ analysis for independent claims 1, 20, 38, and 50
`
`in Petition 1 occupies about 29 pages (Petition 1, 17-26, 28-41, 74-78) and the
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`analysis for the dependent claims 6, 14, 15, 16, 20, 25, 34, 39, 43, 45, 46, 49, 135,
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`136, and 140 occupies another 42 pages (id., 26-28, 41-74, 78-82). Petitioners’
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`analysis for independent claims 51, 77, 103, and 130 in Petition 2 occupies about
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`39 pages (Petition 2, 15-46, 71-77) and the analysis for the dependent claims 57,
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`63, 104, 108, 109, 110, 124, 133, 138, and 139 occupies another 30 pages (id., 32,
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`46-70, 78-81). 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) (in-
`
`stituting two petitions for IPR where “the length of the claims, and the difference
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`in scope of [the independent claims], warranted the filing of two petitions”); Adobe
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`Inc. v. Synkloud Tech., LLC, IPR2020-01392, Paper 8 at 9–10 (March 11, 2021)
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`(similar).
`
`
`
`5
`
`
`
`
`
`Notice of Multiple Petitions
`IPR2022-01180, IPR2022-01181
`
`Accordingly, both petitions warrant institution so the Board may consider
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`Petitioners’ positions regarding all the challenged claims directed to various differ-
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`ent features. The Board’s decision concerning the patentability of the challenged
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`claims in each petition would thus be materially different as it would address the
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`validity of different claims. Thus, exercising discretion to deny one petition over
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`the other would leave an asserted claim in the related litigation unaddressed. The
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`current circumstances are consistent with the guidance in the consolidated TPG,
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`which states that “the Board recognizes that there may be circumstances in which
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`more than one petition may be necessary.” See PTAB Consolidated TPG at 59–60.
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`Institution of both petitions is warranted because Petitioners had to address
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`the different claims in two petitions to ensure the grounds associated with each
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`challenged claim contained the required specificity as to how the prior art meets
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`each claim limitation within the applicable word limit. The level of detail included
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`in the petitions is appropriate, given it is Petitioners’ burden to establish unpatenta-
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`bility of the challenged claims. The Board should not penalize Petitioners by exer-
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`cising its discretion to deny either petition because of the grounds being presented
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`across two petitions. The Administrative Procedures Act and due process weigh
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`against denying the institution of either petition under 35 U.S.C. § 314(a). The two
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`petitions here do not constitute an abuse of the process because, while Google has
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`previously filed petitions challenging the ’721 patent, Petitioners will seek to join
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`
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`6
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`
`
`
`
`Notice of Multiple Petitions
`IPR2022-01180, IPR2022-01181
`
`the Google IPRs in an understudy role to protect their interests should Google dis-
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`continue participating in the IPRs, as explained in detail in the concurrently-filed
`
`Motion for Joinder.
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`IV. CONCLUSION
`
`For the reasons given above, the Board should institute both petitions.
`
`
`
`
`
`Dated: June 27, 2022
`
`PERKINS COIE LLP
`1900 Sixteenth Street, Suite 1400
`Denver, Colorado 80202
`Phone: 303-291-2300
`Fax: 303-291-2400
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/Kourtney Mueller Merrill/
`Lead Counsel
`Kourtney Mueller Merrill, Reg. No. 58,195
`
`Backup Counsel
`
`Daniel T. Shvodian, Reg. No. 42,148
`Amanda Tessar, Reg. No. 53,683
`Christopher L. Kelley, Reg. No. 42,714
`
`Counsel for Petitioners
`
`7
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`
`
`
`
`
`
`Notice of Multiple Petitions
`IPR2022-01180, IPR2022-01181
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on June 27, 2022, I caused a true and correct copy of the
`
`foregoing PETITIONERS’ NOTICE OF MULTIPLE PETITIONS to be
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`served via USPS Priority Mail Express on the Patent Owner at the following corre-
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`spondence address of record as listed on PAIR:
`
`THORPE NORTH & WESTERN, LLP.
`P.O. Box 1219
`SANDY UT 84091-1219
`
`A courtesy copy was also sent via electronic mail to the Patent Owner’s
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`
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`litigation counsel at the following email addresses:
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`
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`Dated: June 27, 2022
`
`PERKINS COIE LLP
`1900 Sixteenth Street, Suite 1400
`Denver, Colorado 80202
`Phone: 303-291-2300
`Fax: 303-291-2400
`
`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
`
`Respectfully submitted,
`
`/Kourtney Mueller Merrill/
`Lead Counsel
`Kourtney Mueller Merrill, Reg. No. 58,195
`
`Backup Counsel
`
`Daniel T. Shvodian, Reg. No. 42,148
`Amanda Tessar, Reg. No. 53,683
`Christopher L. Kelley, Reg. No. 42,714
`
`Counsel for Petitioners
`
`
`
`
`
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