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GOOD LORD - I PRAY you are right! If we were to go SUBPENNY shortly, before what is before us plays out, I would gather so many shares that the payout upon settlement would make Bill Gates blush.
From your mouth to God's Ears!!
Right now we have proven patents and a battle which has been, at least now measured and calendared in the US. The dates for the European patents which are AT LEAST as valuable, but probably significantly more valuable - to be beyond the challenge stage is approaching fast, with good reason to believe Voip-Pal will prevail, again.
There are infringers, and tech companies who could benefit greatly by owning this portfolio, now that the proving is about done - and adding significant value worldwide with numerous patents abroad. That's gravy.
Some of those infringers are looking at a cost/benefit analysis of proceeding to delay, or settling right now at a price that will be significantly lower than the price later on. And my understanding is that these are NOT the only interested parties.
The next 2 months will be interesting for investors. I, for one, am ready for this ride.
Go VPLM
It's a sales commission. The sale of this patent portfolio is the revenue.
Wrong. Apple's own expert admitted in court documents that Apple was using this technology. And, let's say I have a patent for some kind of buckling for a shoe. You are a shoe manufacturer - but you only make lace up tennis shoes, and would have no use for my buckle patent.
Do you spend an outrageous sum of money trying to overturn my buckle patent? No. You do not. Because no sane person or company would waste their time or money doing so.
So you wouldn't challenge my patents. And if, somehow, I did, erroneously accuse you of infringing on my buckle patent - you would simply answer my accusation with a photo of the laced up shoe that you manufacture, and then sue me for frivolous prosecution. And you'd be right.
Oh, they're infringing. You can take that to the bank.
Precisely. Oh, but none of any of that matters, you see - because you know, today's share price hasn't moved enough to create minor stock trades and add another buck fifty to the month's total... When one is a hammer, everything is a nail.
Fat Stacks!!
Hardly. Check the filings - there are fewer than 500 individual holders of this stock, currently. The vast majority are holding. The trades happen daily through a handful of people who trade small movements on many stocks. There's no dumping - no running - no panic. Fact.
Today is the last day to add parties or amend the pleadings. April 22nd is set for exchange of Preliminary Claim Constructions and Extrinsic Evidence. December 6th would be the last deadline, ending the discovery phase.
Disclosure of Asserted Claims and Infringement
Contentions
January 30, 2019
Last Day to Amend the Pleadings/Add Parties February 13, 2019
Invalidity Contentions March 18, 2019
Exchange of Proposed Terms for Construction April 1, 2019
Exchange of Preliminary Claim Constructions and
Extrinsic Evidence
April 22, 2019
Damages Contentions May 7, 2019
Joint Claim Construction and Prehearing Statement May 17, 2019
Further Case Management Conference May 22, 2019, at 2:00 p.m.
Responsive Damages Contentions
June 13, 2019
Close of Claim Construction Discovery
June 17, 2019
Opening Claim Construction Brief
July 1, 2019
Responsive Claim Construction Brief
July 19, 2019
Reply Claim Construction Brief
July 26, 2019
Claim Construction Hearing
September 5, 2019, at 1:30 p.m.
Close of Fact Discovery
December 6, 2019
Opening Expert Reports
January 10, 2020
Rebuttal Expert Reports
February 7, 2020
Close of Expert Discovery
March 6, 2020
Last Day to File Dispositive Motions and Daubert Motions
April 3, 2020
Hearing on Dispositive Motions and Daubert Motions
May 21, 2020, at 1:30 p.m.
Agreed! And well put
Brilliant? Sounds like a bunch of conspiracy theory rantings...but each to their own -
We'll see. Feel free to mark my posts. We can chat again come May.
I've looked at all of that too. I hope you don't just assume the long holders who stick with the company are just blind to dilution. And if it didn't make logical sense, I would be with you on that. I'm satisfied - and looking forward to next steps - GLTU
One can neither prove, nor disprove someone else's fantasy. Is this an undertaking possible of $5-6 per share. Indeed it is. Will it hit there before something else derails the process and transforms this vehicle into some other entity, thereby shortcutting the ride for the current investors, and instead, melding the portfolio into another company's assets? Probably.
I would be shocked, personally, to receive $5.00 per share. But I will be also surprised, and dismayed, based upon the current patent portfolio, and exact positioning, based upon recent developments to receive less than $2.
This is just my own read - having done what I feel was necessary to suss out the pertinent facts to my own satisfaction -
I think there might be some misunderstanding, and false expectation of stock prices moving on these dates... I don't believe that DB has been saying "look for a jump in share price on this date" - rather, we've been discussing specific and significant markers and events that are happening in the court cases.
These dates point to deadlines - each of which have been met, and many of the papers have been posted here. But the date for a Judge or Panel to weigh in on, and decide upon those things hasn't happened yet - there has been no "official" news yet - just those of us watching the developments - of which, there have been many, recently - and quite significant to the end game.
It's a chess game, and one that requires patience. If one is watching for instant cues in order to do their daytrading - these dates will bring you no joy. But if you are looking for clues about the longterm end game, and have done enough DD to understand the significance and predict the eventual outcome on monetization - which I feel strongly, having done so, is eminent - then these dates have very significant meaning.
I hope that helps -
Saw the trailer...it's gonna be one HECK of a show! GLTA
He really is.
I hear you there! Courts can be unpredictable, however, I believe we drew both a highly intelligent, as well as very ethical judge in Judge Koh - We'll see!
Except it is I, for one, who has an attorney friend. One that I have actually paid to review the filings - and one who has actually practiced before Judge Koh, so - you see - I don't have to rely upon anyone else's "claims" of attorney friends.
Thanks DFL!
And how nobody is talking about .02's and sinking below .05's anymore.... same old arguments, just update the current share price. Weren't those claims of sliding into the 5's and below, like...2 days ago? Nonsense. The whole lot of it.
OH, this is the funniest post all day. You Win the Internet!!!
Apple has, on staff over 500 of the worlds smartest lawyers. They also hire many of the top lawyers, regularly, from around the globe.
At THIS late hour, we are holding our collective breaths for Apple to go out and find a worthy opponent for the lawyers hired by this tiny little company??? One would think they might have considered that 8 IPRs Ago.
Again? Surely you're not referring to me. I've never said they own all of VOIP patents. No need to. VOIP was invented by others - but the ability to route the calls from various types of networks, devices and account for them, seamlessly, invisibly and without any additional participation or effort, or special dialing codes by the user was, in fact created by these inventors.
Remember the early days of VOIP? It required a device. Both parties who wished to call each other needed this specially programmed device in order to place or receive a call.
These patent owners were the first to place a patent application. And now we stand on the precipice of those patents being not only granted, but disputed, then validated, and monetized.
Good luck to you
You're guessing wrong.
There have been enormous amounts of meaningful discussions here, and deep analysis by top level attorneys in this particular field. Apple's briefs are not only far fetched, but also exceptionally poorly written. It's a delay tactic, merely buying additional time, which is about to run out. Watch.
What announcement?? If you are talking about the latest filing in the lawsuit, one needs a Pacer account to retrieve the filings, or know someone who does. Or are you referring to something different?
And I've answered this question, as have others. The company will behave within the rules of the SEC or will be subject to enforcement. As any other fully reporting company would be.
Wrong. I demonstrated this on a rather long post not to long ago. Please feel free to look it up - Consumer confidence amongst the very, very few shareholders who actually own this stock has remained steady, when calculated by share price in relationship to O/S. And we have not even approached the tip of the iceberg on the open market. The vast majority of stock traders are completely unaware of this little bitty stock, so far.
I'm thinking about a catamaran sailboat. What do you have in mind?
Consider the post "Marked" - GLTA
I thought we already were???
It IS brilliant. Since posting, I have had it reviewed by a top IP attorney whom I trust. Exact words: "This is one of the best written, and most compelling responses I have ever seen. I would be proud to put my name on it."
Whatever. Care to post any basis to such a scathing opinion? Or should we just suffice ourselves to trust your personal wisdom? Inquiring minds are dying to know.
Friends in high places!
Thanks DB (blushing) - lol
We are in for a winning ride!
Exceptionally strong.
What the defendants (apple, et al).. continually fail to acknowledge in their arguments is that patents are not validated against today's standards of practice, technology or what would "now" be considered obvious - BUT RATHER - what the standards of those things were back at the time of invention.
We forget how quickly VOIP and progresses in technology have occurred over the past decade or so.
I recall my very first experience with VOIP. It was necessary for one to have a special device, and for the person one wanted to call to ALSO have that special device. Then, and only then could the call be routed over the computer. The concept, rules and application of creating a routing system that identified different types of callers, different types of devices, different ways that each individual circumstance needed to be handled in order to both connect, and also account for, log and potentially bill for those calls in order to monetize the system was ANYTHING but obvious, and most certainly was not in common use at the time of invention.
Nice Try Defendants. You already had your day in court (17 months worth) with the PTAB, and failed to make your point. Why now, would you believe that simply dragging out the same old tired strategy before the District Court will produce new results???
MALEK MOSS PLLC
Kevin N. Malek (pro hac vice)
340 Madison Avenue, FL 19
New York, New York 10173
(212) 812-1491
kevin.malek@malekmoss.com
ALVERSON, TAYLOR,
MORTENSEN & SANDERS
Kurt R. Bonds
Nevada Bar No. 6228
Adam R. Knecht
Nevada Bar No. 13166
7401 W. Charleston Boulevard
Las Vegas, NV 89117
(702) 384-7000
efile@alversontaylor.com
CARLSON & MESSER LLP
David Kaminski
kaminskid@cmtlaw.com
J. Grace Felipe
felipeg@cmtlaw.com
5901 W. Century Boulevard
Suite 1200
Los Angeles, California 90045
Tel: (310) 242-2200
Fax: (310) 242-2222
Attorneys for Plaintiff
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
(SAN JOSE DIVISION)
VOIP-PAL.COM, INC.,
Plaintiff,
v.
APPLE, INC.,
Defendant.
Case No. 18-cv-06217-LHK
VOIP-PAL’S OPPOSITION TO
DEFENDANTS’ CONDOLIDATED
MOTION TO DISMISS PLAINTIFF’S
COMPLAINT: MEMORANDUM OF
POINTS AND AUTHORITIES IN
SUPPORT
Date: March 21, 2019
Time: 1:30 p.m.
Courtroom: 8 – 4th Floor
Judge Lucy H. Koh
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1
VOIP-PAL’S OPPOSITION TO DEFENDANTS’ CONSOLIDATED MOTION TO DISMISS
VOIP-PAL.COM, INC.,
Plaintiff,
v.
AT&T CORP.,
Defendant.
Case No. 18-cv-06177-LHK
VOIP-PAL.COM, INC.,
Plaintiff,
v.
TWITTER INC.,
Defendant.
Case No. 18-cv-04523-LHK
VOIP-PAL.COM, INC.,
Plaintiff,
v.
VERIZON WIRELESS SERVICES, LLC, et al.,
Defendant.
Case No. 18-cv-06054-LHK
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VOIP-PAL’S OPPOSITION TO DEFENDANTS’ CON
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ii
VOIP-PAL’S OPPOSITION TO DEFENDANTS’ CONSOLIDATED MOTION TO DISMISS
TABLE OF AUTHORITIES
CASES
24/7 Customer, Inc. v. LivePerson, Inc., Case No. 15-cv-02897-JST, 2017 WL 2311272, at *3 (N.D.
Cal. May 25, 2017).........................................................................................................................16
772 F.3d 709, 715 (Fed. Cir. 2014)....................................................................................................27
Aatrix Software, Inc. v. Green Shades Software, Inc., No. 2017-1452, 2018 WL 843288 (Fed. Cir.
Feb. 14, 2018)...................................................................................................................................9
Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1338-39 (Fed. Cir.
2013).................................................................................................................................................8
Alice Corp. v. CLS Bank Int’l 134 S. Ct. 2347, 2354 (2014).............................................4, 22, 23, 25
Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016)..........................22, 29
Aristocrat Technologies Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir.
2008)...............................................................................................................................................19
Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) ........................................................................................6
Avocent Huntsville, LLC v. ZPE Sys., Inc., No. 3:17-CV-04319-WHO, 2018 WL 1411100, at *1, 8-
9 (N.D. Cal. Mar. 21, 2018) ...........................................................................................................27
Bascom Research, LLC v. LinkedIn, Inc., 77 F. Supp. 3d 940, 945 (N.D. Cal. 2015).......2, 22, 23, 26
Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007) ........................................................................6
Berkheimer v. HP Inc., 881 F.3d 1360, 1368-69 (Fed. Cir. 2018).................................................9, 31
Broadsoft, Inc. v. Callwave Commc’ns, LLC, 282 F. Supp. 3d 771, 784-85 (D. Del. 2017).............17
Card Verification Solutions, Inc. v. Citigroup, No. 13-cv-06339, 2014 WL 4922524, at *2 (N.D. Ill.
Sept. 29, 2014) .................................................................................................................................2
Cogent Medicine, Inc. v. Elsevier Inc., 70 F. Supp. 3d 1058, 1064 n.3 (N.D. Cal. 2014).................24
Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1345 (Fed. Cir.
2014).................................................................................................................................................8
Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356, 1362-3 (Fed. Cir. 2018)...11, 15
CyberFone Sys., LLC v. CNN Interactive Group, Inc., 558 Fed. Appx. 988 (Fed. Cir. 2014) ..........28
CyberSource Corp. v. Retail Decisions, Inc.......................................................................................27
Data Engine Techs. LLC v. Google LLC, 906 F.3d 999, 1002 (Fed. Cir. 2018) ...............................13
DDR Holdings LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) ..................22, 23, 29
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iii
VOIP-PAL’S OPPOSITION TO DEFENDANTS’ CONSOLIDATED MOTION TO DISMISS
Diamond v. Diehr, 450 U.S. 175, 188 (1981)......................................................................4, 5, 13, 24
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) ...........................16, 26
Enfish v. Microsoft Corp. 822 F.3d 1327 (Fed. Cir. 2016)................................................................13
Evolved Wireless, LLC v. Apple Inc., 221 F. Supp. 3d 485, 494 (D. Del. 2016)...............................11
FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1093 (Fed. Cir. 2016) .......................16
Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1305-6 (Fed. Cir. 2018) .............................23, 24
Geinosky v. City of Chicago, 675 F.3d 743, FN 1 (2012)..................................................................30
Genband US LLC v. Metaswitch Networks Corp., No. 2:14-cv-33-JRG-RSP, 2016 U.S. Dist. LEXIS
37946 (E.D. Tex., Jan. 6, 2016) .......................................................................................................7
Huawei Techs., Co, Ltd v. Samsung Elecs. Co, Ltd., 340 F. Supp. 3d 934, 980 (N.D. Cal. 2018)......4
Immersion Corp. v. Fitbit, Inc., 313 F.Supp. 3d 1005, 1027 – 29 (N.D. Cal. 2018) .........................16
In re Alappat, 33 F.3d 1526, 1545 (Fed. Cir. 1994)...........................................................................19
In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016) ........................12, 13, 16
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1318, 1321 (Fed. Cir. 2016)....................28
Intellectual Ventures II LLC, v. BITCO General Insurance Corp., Case No. 6:18-cv-00298, 00299,
2019 WL 313207, *4 (E.D. Tex. Jan. 24, 2019)............................................................................21
Interval Licensing LLC v. AOL, Inc. 896 F.3d 1335, 1346 (Fed. Cir. 2018) .....................................12
Lawther v. OneWest Bank, FSB, No. C-10-00054 JCS, 2012 U.S. Dist. LEXIS 12062, *3 (N.D. Cal.
Feb. 1, 2012)...................................................................................................................................22
Le Roy v. Tatham, 55 U.S. 156, 175 (1852).........................................................................................3
Lee v. City of Los Angeles, 250 F.3d 668, 688-90 (9th Cir. 2001).....................................................22
Mackay Radio & Telegraph Co. v. Radio of America, 306 U.S. 86, 94 (1939)...................................4
McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, 1313 – 1314 (Fed. Cir. 2016).15
Meetrix IP, LLC v. Citrix Systems, Inc., Case No. 1-16-cv-1033-LY, 2017 WL 5653950, *3 (N.D.
Cal. July 27, 2017) .........................................................................................................................28
Messaging Gateway Sols., LLC v. Amdocs, Inc., No. CV 14-732-RGA, 2015 WL 1744343, at *6 (D.
Del. Apr. 15, 2015).........................................................................................................................29
Parker v Flook, 437 U.S. 584, 590 (1978)...........................................................................................4
Parker v. Flook, 437 U.S. 584, 589 (1978)..........................................................................................3
Parus Holdings, Inc. v. Sallie Mae Bank, 137 F. Supp. 3d 660, 672 (D. Del. 2015).........................17
Pragmatus Telecom, LLC v. Genesys Telecomms. Labs., Inc., 114 F. Supp. 3d 192, 200 (D. Del.
2015)...............................................................................................................................................16
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iv
VOIP-PAL’S OPPOSITION TO DEFENDANTS’ CONSOLIDATED MOTION TO DISMISS
Procter & Gamble Co. v. QuantifiCare Inc., 288 F. Supp. 3d 1002, 1027 (N.D. Cal. 2017)............19
Pure Data Sys., LLC v. Ubisoft, Inc., 329 F. Supp. 3d 1054, 1068 (N.D. Cal. 2018)........................20
Rapid Litigation Management Ltd., v. CellzDirect, Inc., 827 F.3d 1042, 1047 - 1050 (Fed. Cir.
2016).................................................................................................................................................6
Ronald A. Katz Tech. Licensing, L.P. v. FedEx Corp., No. 2:15-cv-02329-JPM-tmp, 2016 U.S. Dist.
LEXIS 38479 (W.D. Tenn. Mar. 24, 2016) .....................................................................................7
Shaterian v. Wells Fargo Bank, Case No. C-11-920 SC, 2011 U.S. Dist. LEXIS 62165, *4 (N.D.
Cal. June 10, 2011).........................................................................................................................22
Telinit Techs., LLC v. Alteva, Inc., No. 2:14-CV-369, 2015 WL 5578604, *16 (E.D. Tex. Sept. 21,
2015)...............................................................................................................................................16
Thales Visonix Inc. v. United States, No. 2015-5150, 2017 WL 914618, at *5 (Fed. Cir. Mar. 8,
2017).................................................................................................................................................6
Twilio, Inc. v. Telesign Corporation, Case No. 16-cv-06925-LHK, 2017 WL 1208588, *32 (N.D.
Cal. March 31, 2017)........................................................................................................................7
Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1337 – 38 (Fed. Cir. 2017)
........................................................................................................................................................14
Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1344 (Fed. Cir. 2013).............................................4
Vaporstream, Inc. v. Snap Inc., No. 217CV00220MLHKSX, 2018 WL 1116530, at *6 (C.D. Cal.
Feb. 27, 2018).................................................................................................................................31
Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1262 (Fed. Cir. 2017).................................25
West View Research, LLC v. Audi AG, 685 F App’x 923, 926 (Fed. Cir. 2017) ...............................16
WMS Gaming Inc. v. International Game Technology, 184 F.3d 1339, 1348 (Fed. Cir. 1999) ........19
STATUTES
35 U.S.C. § 101 ...........................................................................................................................passim
Fed. R. Civ. P. 56 ...............................................................................................................................30
Fed. R. Civ. Proc. 12(b)(6)..........................................................................................................passim
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1
VOIP-PAL’S OPPOSITION TO DEFENDANTS’ CONSOLIDATED MOTION TO DISMISS
Pursuant to Federal Rule of Civil Procedure 12 and the Local Rules of this Court, Plaintiff
VoIP-Pal, Inc. (“VoIP-Pal” or “Plaintiff”), by and through Plaintiff’s undersigned attorneys,
hereby files this response in opposition to Defendants’ Consolidated Motion to Dismiss for failure
to state a claim due to alleged invalidity under 35 U.S.C. § 101 (ECF No. 631
also referred to
herein as the “Motion”). VoIP-Pal’s response and opposition hereunder is made in conjunction
with the Declaration of Kevin N. Malek (“Malek Decl.”) and the Declaration of William Henry
Mangione-Smith (“Mangione-Smith Decl.”). For the following reasons, Plaintiff VoIP-Pal
respectfully requests that Defendants’ Consolidated Motion to Dismiss be denied.
I. INTRODUCTION
Defendants ask this Court to invalidate every asserted claim of the Patents-in-Suit at the
motion to dismiss stage before construction of any claim and in the absence of any factual record.
But this is not the first time VoIP-Pal has faced a challenge to its patents. First, the claims of the
Patents-in-Suit were argued to be invalid in view of prior art challenges brought by both Apple,
Inc. and AT&T Corp. in Inter Partes Review proceedings before the Patent Trial and Appeal
Board in the United States Patent and Trademark Office. With VoIP-Pal having overcome those
challenges, Verizon Wireless and AT&T Corp., only months ago, filed separate motions to
dismiss under Fed. R. Civ. Proc. 12(b)(6), alleging the asserted claims were invalid under 35
U.S.C. § 101. In view of evidence submitted by VoIP-Pal in the form of proposed amendments to
its complaints, both Verizon Wireless and AT&T Corp. withdrew their motion(s) to dismiss,
declining to argue that the amendments were futile, leading to only one obvious conclusion – that
the modest development of the record by VoIP-Pal defeated their early stage attempt to rush this
1 Defendants have filed an identical Motion in each of the captioned actions. For the Court’s convenience, references
herein to ECF numbers are to the ECF numbers in the case styled VoIP-Pal.com, Inc. v. AT&T Corp., Case No. 18-cv06177-LHK (N.D. Cal.). The various complaints are as set forth in Defendants’ Motion at FN 1.
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VOIP-PAL’S OPPOSITION TO DEFENDANTS’ CONSOLIDATED MOTION TO DISMISS
case out of court before VoIP-Pal could defend its United States patents. The bottom line is that
the claims are not ineligible under 35 U.S.C. § 101 and the Motion must be denied for at least the
following reasons:
First, the asserted claims are not directed to an abstract idea, but are instead generally
directed to an improved call routing technology enabling better interoperability of communication
networks by, inter alia, evaluating a callee identifier provided by a caller in conjunction with
caller-specific “attributes” located from a profile associated with the caller, to identify and classify
an intended destination, as between two networks, and based on the classification, producing a
routing message to setup a call controller to establish the call to the intended destination via
identified suitable network communication infrastructure;
Second, the asserted claims constitute an improvement in call controller technology and
are conceptually inventive, because the claims enable transparent routing of calls integrated over
private and public networks based upon caller-specific profile information in conjunction with
information about the callee; and
Third, the Motion is premature in that there are numerous factual disputes made of issue
by the Motion and due to the nature of the evidence that VoIP-Pal would elicit during discovery as
identified in VoIP-Pal’s proffer of evidence submitted herewith.
Defendants fail to even acknowledge the heavy burden they bear on their Motion, namely,
to prove invalidity by “clear and convincing evidence.” Bascom Research, LLC v. LinkedIn, Inc.,
77 F. Supp. 3d 940, 945 (N.D. Cal. 2015) (emphasis added); see also Card Verification Solutions,
Inc. v. Citigroup, No. 13-cv-06339, 2014 WL 4922524, at *2 (N.D. Ill. Sept. 29, 2014) (“dismissal
is appropriate solely when the only plausible reading of the patent is that there is clear and
convincing evidence of ineligibility” (emphasis added)). Yet Defendants rely on unsupported
factual allegations for key arguments and summarily dismiss contrary material facts asserted in
VoIP-Pal’s Complaint.2 The Court should deny the current motion to dismiss because Defendants
have not met its burden.
2Because this Motion is consolidated, VoIP-Pal references only the Third Amended Complaint filed in the AT&T
Action, Case No. 5:18-cv-6177-LHK (ECF. No. 59). See Malek Decl., Exhibit 1. To not burden the Court with
additional filings, VoIP-Pal has not amended each complaint in each action with identical allegations but would do so
if given permission and if necessary to the Court’s analysis of the Motion. Accordingly, VoIP-Pal attaches the Third
Amended Complaint in the AT&T action as an Exhibit to this Brief to be filed in each case in order to preserve the
record. If the Court desires that VoIP-Pal make the same information of record in each case through amended
complaints, then VoIP-Pal respectfully requests permission to amend its complaint in each case to do so. VoIP-Pal
submits that such action would be ministerial at this stage. See Aatrix Software, Inc. v. Green Shades Software, Inc.,
No. 2017-1452, 2018 WL 843288 (Fed. Cir. Feb. 14, 2018).
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3
VOIP-PAL’S OPPOSITION TO DEFENDANTS’ CONSOLIDATED MOTION TO DISMISS
II. ARGUMENT
A. Under Step One, The Claims Are Not Directed To An Abstract Idea.
An abstract idea under §101 “is a fundamental truth; an original cause; a motive.” (Parker
v. Flook, 437 U.S. 584, 589 (1978) (citing Le Roy v. Tatham, 55 U.S. 156, 175 (1852)). The
Patents-In-Suit are directed to improvements in clearly non-abstract technology, namely, a call
routing controller specifically programmed to integrate private networks (e.g., Internet-based
telephony) with public networks (e.g., the public switched telephone networks or “PSTN”) in a
new and useful way. Defendants’ characterization of the claims as simply obtaining and analyzing
participant information to determine where to route a communication dramatically understates the
problem that the claims address.3
(See Motion at p. 13). Courts have cautioned against evaluating
claims at a stripped-down level of generality, as Defendants have done. As the Supreme Court
recognized, “[a]t some level all inventions embody, use, reflect, rest upon, or apply laws of nature,
natural phenomena, or abstract ideas.” Alice Corp. v. CLS Bank Int’l 134 S. Ct. 2347, 2354 (2014)
(internal citations omitted); See also Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1344 (Fed.
Cir. 2013) (subsequent history omitted). At best, some, but not all, claim steps involve “gathering
and processing information” as part of the routing process through an improved call routing
controller. But the Supreme Court has made clear that claims directed to an improved process of
doing something is not barred by § 101, notwithstanding a claim’s incorporation of a law of
nature, natural phenomenon or an abstract concept. See, e.g., Diamond v. Diehr, 450 U.S. 175, 188
(1981); see also Parker v Flook, 437 U.S. 584, 590 (1978).
Defendants have focused on a subset of claim limitations to distort the character of the
ordered combination as a whole. That is error. The Supreme Court has mandated that “claims must
be considered as a whole,” which is “particularly true in a process claim because a new
3 Defendants do not draw any distinction in their analysis for Claim 1 of the ‘815 Patent versus Claim 74 of the ‘005
Patent. The latter differs from the ‘815 Patent’s claim 1 in reciting, inter alia, “first” and “second” portions of a
network, not controlled by the same “entity”. Accordingly, the analysis in this brief focuses primarily on Claim 1 of
the ‘815 Patent. (Compare Malek Decl., Exhibit 2 (‘815 Patent) with Exhibit 3 (‘005 Patent)).
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combination of steps in a process may be patentable even though all of the constituents of the
combination were well known and in common use before the combination was made”. Diamond v.
Diehr, 450 U.S. at 188; see also Mackay Radio & Telegraph Co. v. Radio of America, 306 U.S.
86, 94 (1939); see also Huawei Techs., Co, Ltd v. Samsung Elecs. Co, Ltd., 340 F. Supp. 3d 934,
980 (N.D. Cal. 2018) (rejecting § 101 challenge where the defendant failed “to address the claims
as a whole and ignore[d] the patent’s disclosure of providing an improvement to
telecommunication systems”).
The failure of Defendants’ challenge is exemplified in their false “operator,” “mental
steps” and “pen and paper” analogies. (See Motion at 17-19; see also infra). The Patents-in-Suit
do not claim “fundamental economic practice[s],” “longstanding commercial practice[s]” or
“method[s] of organizing human activity”. Id. at 17. Defendants are well-aware of the patent
prosecution history and eight inter partes reviews filed against the Patents-in-Suit based on prior
art disclosing making routing decisions.4 And yet, following careful review, the U.S. Patent and
Trademark Office rejected all of the cited communication routing art as not rendering the Patentsin-Suit invalid. Clearly, numerous inter-network routing methods exist which do not practice the
Patents-in-Suit. The claims at issue do not preempt the field of routing controllers and
communication network routing. An improved controller that routes communications in a novel
manner by using caller-specific attributes to evaluate a callee identifier against specific criteria to
identify and route to a private network destination (e.g., a VoIP phone) or public network
destination (e.g., a PSTN phone) via the correct network infrastructure, does not represent an
abstract idea, or a fundamental truth, or an original cause or a motive or a scientific truth or a
mathematical expression or a fundamental economic practice or a method of organizing human
activity.
4
IPR2016-01201 and IPR2016-01198, filed by Apple (final written decisions upholding validity of all challenged
claims); IPR2017-01383, IPR2017-01384 and IPR2017-01385, filed by AT&T (all denied institution); and IPR2016-
01082, filed by Unified Patents (denied institution).
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VOIP-PAL’S OPPOSITION TO DEFENDANTS’ CONSOLIDATED MOTION TO DISMISS
1. The Claimed Inventions Improve Call Router Controller Technology.
Claims directed to a more efficient or improved process of doing something have never
been barred by § 101, notwithstanding reliance on judicially excepted subject matter. See, e.g.,
Diamond v. Diehr, 450 at 188. The Federal Circuit has followed the Supreme Court’s lead, finding
claims directed to various “new and useful techniques” for performing tasks to be not abstract.
See, e.g., Thales Visonix Inc. v. United States, No. 2015-5150, 2017 WL 914618, at *5 (Fed. Cir.
Mar. 8, 2017) (finding “claims directed to a new and useful technique for using sensors to more
efficiently track an object on a moving platform” to be not abstract); Rapid Litigation
Management Ltd., v. CellzDirect, Inc., 827 F.3d 1042, 1047 - 1050 (Fed. Cir. 2016).
The patent-eligibility of the claims is borne out in the claims themselves, the specification
of the Patents-in-Suit, and the facts pleaded in the complaint—all of which must be accepted as
true on Defendants’ Rule 12(b)(6) Motion. Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009); Bell Atl.
Corp. v. Twombly, 550 U.S. 544, 555 (2007). The patented inventions are more than ideas; they
actually solve problems arising in the integration and interoperability of voice-over IP and public
switched telephone communication networks. (See Malek Decl., Exhibit 1 (Third Amended
Complaint) at ¶¶ 7-16)). Defendants’ challenges ignore what a person having ordinary skill in the
art would recognize about the problems of integration: the two networks have significant
differences such as the use of incompatible callee identifiers, addressing schemes and protocols.
In particular, the claims relate to processes, systems and methods for the operation of a call
routing controller and the routing of communications, such as telephone calls, within or between
communication networks. The claims improve communications routing (as further explained
infra), in part, through a routing controller operable to apply caller-specific attributes to evaluate
and classify a destination, as between a private and public network, and to produce a routing
message to setup a call controller to route a communication to its destination by using network
infrastructure identified by the aforesaid steps, automatically and transparently to the caller.
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Courts have found similar telephone and other communication routing claims to be
eligible. See, e,g, Genband US LLC v. Metaswitch Networks Corp., No. 2:14-cv-33-JRG-RSP,
2016 U.S. Dist. LEXIS 37946 (E.D. Tex., Jan. 6, 2016); Twilio, Inc. v. Telesign Corporation, Case
No. 16-cv-06925-LHK, 2017 WL 1208588, *32 (N.D. Cal. March 31, 2017); Ronald A. Katz
Tech. Licensing, L.P. v. FedEx Corp., No. 2:15-cv-02329-JPM-tmp, 2016 U.S. Dist. LEXIS 38479
(W.D. Tenn. Mar. 24, 2016).
These facts make inapposite the cases that Defendants rely upon in which claims were
found to be directed to an abstract idea. The claims in those cases did not involve improvements to
technology such as the computer, controller or networking infrastructure, but rather applications
of computer networking technology to automate a human or business process. For example, in
Accenture, the claims involved the generation of tasks (i.e., a to-do list for humans) based on rules.
See Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1338-39 (Fed.
Cir. 2013); Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343,
1345 (Fed. Cir. 2014). In Ultramercial, the claims involved offering free content in exchange for
viewing advertisements. See 772 F.3d at 712. These cases involved applications potentially
running on a technology infrastructure, but not technological improvements to that infrastructure
or its process of operation. By contrast, the claims of the Patents-in-Suit do relate to improvements
to the technology of a call routing controller, its programming and the process of its operation, as
part of a networking infrastructure. (See Malek Decl., Exhibit 1 (Third Amended Complaint) at ¶¶
7-16)). The Supreme Court has acknowledged that claims that “purport to improve the functioning
of a computer itself” or “effect an improvement in any other technology or technical field” are
patent eligible. Alice, 134 S. Ct. at 2359. That is exactly the case here: as in DDR and Bascom, the
claims at issue improve communication routing technology and infrastructure in a manner that
overcomes technical limitations in prior art systems. (See Malek Decl., Exhibit 1 (Third Amended
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VOIP-PAL’S OPPOSITION TO DEFENDANTS’ CONSOLIDATED MOTION TO DISMISS
Complaint) at ¶¶ 7-16)).
5
Defendants admit that “whether a claim recites patent-eligible subject matter under Section
101, is a question of law based on underlying facts, such as whether a claim element is wellunderstood, routine, and conventional.” (Motion at 8, citing Berkheimer v. HP Inc., 881 F.3d
1360, 1368-69 (Fed. Cir. 2018) (emphasis added)). Yet Defendants summarily dismiss material
facts asserted in the pleadings, including: (1) explanations of specific improvements to call routing
controllers and communication networks enabled by the claims, which is material to an Alice Step
1 analysis, and (2) explanations of their unconventional manner of implementation, which is
material to the “inventive concept” analysis in Alice Step 2. (See Motion at p. 25; compare Malek
Decl., Exhibit 1 (Third Amended Complaint) at ¶¶ 7-16); see also Aatrix Software, Inc. v. Green
Shades Software, Inc., No. 2017-1452, 2018 WL 843288 (Fed. Cir. Feb. 14, 2018) (assertions in
the complaint about how the invention solves problems in the prior art can raise factual disputes
sufficient to preclude a Rule 12(b)(6) motion under §101). For example, the Complaint explains
how the claimed invention gives rise to benefits including user-specific calling and transparent
routing—which Defendants have simply ignored:
(1) User-Specific Calling. The call routing controller, system and method of the claimed
invention is improved over prior art technology in a manner that allows user-specific placement of
calls. (See Malek Decl., Exhibit 1 (Third Amended Complaint) at ¶ 12)). As discussed in Section
II(A)(2), Claim 1 of the ‘815 Patent describes using caller-specific “attributes” (“calling attributes
associated with the caller”) to evaluate a “callee identifier” in order to identify an intended
destination (“callee”). (See Malek Decl., Exhibit 2 (‘815 Patent) at col. 36 ll. 15 - 23)). Different
callers with differently configured attributes could dial the same string of digits to reach different
destinations because the meaning of the callee identifier is different based on each caller’s
5 See also Malek Decl., Exhibit 2 (‘815 Patent) at col ll. 12-13 (“invention relates to voice over IP communications
and methods and apparatus for routing”); id. at col. 1 ll. 50-64 (one aspect of the invention relates to a process for
operating a routing controller for routing to private network and public network destinations).
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attributes.6
Thus, in Claim 1 of the ‘815 patent, user-specific calling attributes are used in the
process of classifying the call as either a public network call or a private network call. (See Malek
Decl., Exhibit 2 (‘815 Patent) at Fig. 8A-D, especially 8B; see also Malek Decl., Exhibit 1 (Third
Amended Complaint) at ¶12)).7 User-specific call placement provides benefits such as the ability
to support local PSTN styles (or even unconventional styles) of calling no matter where in the
world a caller is located. (See Malek Decl., Exhibit 2 (‘815 Patent) at col. 15 ll. 10-15 and col. 17
l. 59 – col. 18 l. 10); see also Malek Decl., Exhibit 1 (Third Amended Complaint) at ¶12)). In
PSTN systems, callers were hard-wired to telephony switches via central offices providing
services to a local calling area and call routing was based on the destination number alone. (Id. at
¶¶8, 12). User-specific call placing is embodied in all of the asserted claims.
(2) Transparent Routing. The improved call routing controller, system and method of the
claimed invention also enables using a caller’s attributes to evaluate a callee identifier against
network routing criteria to cause a call to automatically be routed over a system network (“private
network”) or another network interconnected to the system network via a gateway (e.g., a “public
network”) transparently to the user—without the user manually specifying the network to use for
routing by the user’s manner of placing the call (e.g., by dialing a prefix of “9” to make a PSTN
call) and even without the user knowing whether the destination is on the private or public
network. (See Malek Decl., Exhibit 1 (Third Amended Complaint) at ¶¶ 9-10, 13-14)). Thus, a
PSTN-compatible callee identifier can be used to identify a public network destination (e.g., a
6
See, e.g., (See Malek Decl., Exhibit 2 (‘815 Patent) at Fig. 10 (user profile has attributes to allow PSTN dialing
using certain conventions, e.g., using “011” for international dialing digits); Fig. 12 (another user’s profile is different,
e.g., IDD is “00”)). Service preferences can be different for each individual user. (See Malek Decl., Exhibit 2 (‘815
Patent) at col. 18 ll. 1-67 and Fig. 8B (illustrating the processing of a callee identifier based on a caller attributes)).
7 Similarly, e.g., Claim 74 of the ‘005 Patent recites locating “using the first participant identifier to locate a first
participant profile comprising a plurality of attributes associated with the first participant.” For the same reasons as
stated above, these are user-specific attributes that are individually configured for each respective subscriber. Claim
74 of the ‘005 Patent also recites producing a routing message “when at least one of the first participant attributes and
at least a portion of the second participant identifier meet a [first/second] network classification criterion.” As stated
supra, this requires that user-specific attributes are used in the process of routing a call. (See Malek Decl., Exhibit 3
(‘005 Patent) at col. 43 ll. 40 – 65)).
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VOIP-PAL’S OPPOSITION TO DEFENDANTS’ CONSOLIDATED MOTION TO DISMISS
PSTN phone) or a private network destination (e.g., VoIP phone), but which destination type the
callee identifier represents is decided automatically and transparently to the user.
Such routing transparency improves the user interface and functionality over prior systems:
the caller need not or does not know whether a PSTN-style number will be routed to a destination
on the private network (e.g., VoIP) or the public network (PSTN), whereas in some prior systems,
users were required to explicitly dial a prefix to manually classify a call as a public network call or
refrain from dialing a prefix digit to manually classify a call as a private network call. (See Malek
Decl., Exhibit 1 (Third Amended Complaint) at ¶¶ 9-10, 13-14)). Where, as here, claims are
directed to an improvement in the functioning of technology, the claims are not abstract. See, e.g.,
Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356, 1362-3 (Fed. Cir. 2018)
(finding claims eligible under § 101 because the claims were directed to an improvement in the
functioning of computers); Evolved Wireless, LLC v. Apple Inc., 221 F. Supp. 3d 485, 494 (D. Del.
2016) (finding claims eligible under § 101 where they were “directed to technological
improvements resolving specific problems in a wireless communications system”).
Transparent routing is embodied in all the asserted claims (See Malek Decl., Exhibit 2
(‘815 Patent) at col. 36 ll. 15 (showing Claim 1 of ‘815 Patent (“determining a match when at
least one of said calling attributes matches at least a portion of said callee identifier,” and
“classifying the call as a [private or public] network call when said match meets [private or
public] network classification criteria”)). Because classification depends on more than just the
callee identifier, and depends on information other than that provided by the caller, the claimed
classification does not cover the manual user-initiated classification of prior systems. (See Malek
Decl., Exhibit 1 (Third Amended Complaint) at ¶¶9-10, 13-14)).
The Motion acknowledges, only briefly, the specific advantages over the prior art
including user-specific calling, transparent routing and network resiliency (See Motion at p. 25).
But the Motion refuses to engage any of the pleaded facts, instead issuing blanket dismissals based
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VOIP-PAL’S OPPOSITION TO DEFENDANTS’ CONSOLIDATED MOTION TO DISMISS
on conclusory reasoning. First, the Motion alleges the specification of the Asserted Patents is
“wholly devoid of details which describe how this is accomplished”.8 On the contrary, the Patents
provide detailed descriptions of the methods, data structures and network elements used to enable
benefits. Compare (See Malek Decl., Exhibit 2 (‘815 Patent) at Figs. 1, 8A-D)). Recognizing the
facial implausibility of their allegation, Defendants hedge their bets: “But even if disclosed in the
specification, none of the asserted claims recite the purported benefits.” But this bare allegation,
too, is unjustified, as shown above.
And Defendants’ argument that the use of a “call controller,” “gateway” and other
architecture necessarily undermines the eligibility of the patented claims is significantly flawed.
(See Motion at pp. 19 – 20 (citing In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed.
Cir. 2016)). TLI Communications is distinguishable. In TLI Communications, the Federal Circuit
invalidated claims directed to nothing more than “the abstract idea of classifying and storing
digital images in an organized manner.” Id. at 611. The Federal Circuit noted that the specification
recited physical components that “merely provide[d] a generic environment in which to carry out
the abstract idea.” Id. In contrast, the asserted claims are not directed to an abstract idea but are
processes and systems that go beyond mere processing of information; the claims actually use
caller attributes, along with callee information, in order to set up a call controller to route a
communication between public and private networks. See supra; Data Engine Techs. LLC v.
Google LLC, 906 F.3d 999, 1002 (Fed. Cir. 2018) (finding the asserted claims to be eligible where
they were directed to a specific improved method for navigating through complex threedimensional electronic spreadsheets). In summary, the asserted claims, considered in light of the
specification and the state of the prior art, are directed to specific improvements in a call routing
controller, method and system which addresses destinations on two separate communication
8 The Motion inappositely cites to Interval Licensing LLC v. AOL, Inc. 896 F.3d 1335, 1346 (Fed. Cir. 2018) (patent
touting the presentation of an additional set of information, but failing to provide even basic details such as how a
preexisting screen background is altered to enable display of a second set of information, nor how that information is
segregated from the primary set).
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VOIP-PAL’S OPPOSITION TO DEFENDANTS’ CONSOLIDATED MOTION TO DISMISS
networks. As in Enfish v. Microsoft Corp. 822 F.3d 1327 (Fed. Cir. 2016), the improvements
constitute eligible inventions under §101.
2. The Claims Are Not Directed to Acquiring, Analyzing and Presenting
Information.
Defendants’ contention that the claims are abstract because they “gather[] information” is
wrong. Defendants improperly consider only two limitations of the claims in isolation without
giving any effect to other claim limitations or the claim as a whole. Diamond v. Diehr, 450 U.S.
175, 188 (1981) (holding that claims must be considered as a whole). Claim 1 does far more than
acquire, analyze or present information; it “produc[es] a private [or: public] network routing
message... for receipt by [a] call controller”. (See Malek Decl., Exhibit 2 (‘815 Patent) at col. 36
ll. 14 – 47)). The “call controller” is a system element that “cause[s] a communication link… to
be established to the call recipient or callee” in response to a “routing message.” (See Malek Decl.,
Exhibit 2 (‘815 Patent) at col. 14 ll. 10-23; col. 15 ll. 1-4; col. 16 ll. 33-36; col. 26 ll. 40-49)). The
routing message identifies network infrastructure determined to be appropriate for a given call. Id.
(routing message identifying “an address, on the private network, associated with the callee” for a
“private network call” and identifying “a gateway to the public network” for a “public network
call”).9 The “routing message” sets up a “call controller” such that the result of Claim 1 is not
mere information but rather a call controller that is setup to establish the initiated call via suitable
infrastructure.10 Defendants argue that the claims are unpatentable because they do “no more than
describe function or outcome” without “describ[ing] how to achieve these results in a non-abstract
way.” (See Motion at p. 14 (citing Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874
F.3d 1329, 1337 – 38 (Fed. Cir. 2017)). Defendants’ reliance on Two-Way Media is misplaced. In
9
See also Malek Decl., Exhibit 2 (‘815 Patent) at Figures 15 (general routing message format), 16 (example of private
network routing message identifying a different node), 32 (example of private network routing message identifying
same node), and 25 (public network routing message identifying a gateway).
10 Defendants concede that “[t]he routing controller generates a ‘routing message’ that contains information about the
classification and routing of the call, and sends the routing message to a ‘call controller’… [that receives it] as a
request to establish a call”. (See Motion at p. 4).
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VOIP-PAL’S OPPOSITION TO DEFENDANTS’ CONSOLIDATED MOTION TO DISMISS
Two-Way Media, the court took issue with the fact that the claims at issue did not “describe how to
achieve these results in a non-abstract way.”). As described herein, the asserted claims define, with
particularity, the process through which the call controller is set up to route the communications.
In fact, Claim 1’s process does far more than use information. Claim 1 requires “initiation
of a call.” Id. Claim 1’s operation of a call routing controller is in response to that call initiation.
Id. (process is “in response to initiation of a call by a calling subscriber”). (See Malek Decl.,
Exhibit 2 (‘815 Patent) at col. 36, ll. 18 – 19)). Defendants also ignore the internal structure of
Claim 1’s process, including its ordered dependency of steps. For example, Claim 1 requires
“producing” a “routing message” that depends on a preceding “classifying” step. But the
“classifying” step is not merely “based on ‘classification criteria’” in the abstract, as suggested by
Defendants’ truncated description. (See Motion at p. 13). Rather, “classifying” is based on a
“match” meeting “[public or private] network classification criteria”. (See Malek Decl., Exhibit 2
(‘815 Patent) at col. 36 l. 14 – 35 (showing Claim 1)). And the preceding step indicates a “match”
occurs between at least one of the “calling attributes” and at least a portion of the “callee
identifier”. (Id.). The “calling attributes,” in turn, are “locat[ed]” from a “caller dialing profile”
and thus are user-specific (i.e., “associated with the caller”). Therefore, the “routing message” that
sets up the “call controller” is based on a classification of a call destination, which, in turn, was
identified by a caller-specific evaluation of the “callee identifier” (i.e., based on “attributes”
associated with the initiating caller in their “dialing profile.”) (Id.; see also Malek Decl., Exhibit 2
(‘815 Patent) at Figs. 8A-8D)).
Defendants cite various cases for the proposition that the asserted claims are abstract
because they are directed to the steps of gathering, analyzing, and manipulating information.
Foremost, as described herein, the claims do much more than just gather and process information.
(See, infra. generally). Claims organizing or analyzing information are eligible when directed to
something more. See, e.g., McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299,
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VOIP-PAL’S OPPOSITION TO DEFENDANTS’ CONSOLIDATED MOTION TO DISMISS
1313 – 1314 (Fed. Cir. 2016) (finding that claims related to automating part of a 3-D animation
method, and limited to the use of specific rules rather than all rules, are not directed to an abstract
idea); see also Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356, 1362-3 (Fed.
Cir. 2018) (finding claims eligible under § 101 notwithstanding that the claims included the
generic “idea of summarizing information”). Separately, the cases that Defendants cite are entirely
distinguishable because the claims in those cases are limited to the collection, processing and
display of information without anything more and without anything inventive. See Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (finding claims to information
gathering to be abstract because the claims did not use “any particular assertedly inventive
technology for performing those functions”); see also West View Research, LLC v. Audi AG, 685
F App’x 923, 926 (Fed. Cir. 2017) (unpublished) (holding that claims to collecting, analyzing,
retrieving and processing information were ineligible where they did not go beyond “the abstract
idea of collecting and analyzing information”).11 The cases that Defendants cite relate solely to the
steps of processing and displaying information. In contrast, Claim 1 of the ‘815 Patent is directed
11 Defendants’ list of cases on this subject is extensive, but they are all similarly defective in their application here
because the cases all reach a conclusion of ineligibility for claims directed to nothing inventive and nothing more than
processing, analyzing, or gathering information, thereby constituting pure human activity. (See, e.g., Motion a pp. 15 –
16 (citing FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1093 (Fed. Cir. 2016) (agreeing that the
invention was “drawn to the concept of analyzing records [and data] of human activity to detect suspicious behavior”
without anything more (emphasis added)); SAP Am, Inc., 898 F.3d at 1167 – 68 (finding that the focus of the claims
was “on selecting certain information, analyzing it using mathematical techniques, and reporting or displaying the
results of the analysis” without anything more (emphasis added)); In re TLI Commc’ns LLC Patent Litig., 823 F.3d
607, 611 (Fed. Cir. 2016) (claims directed to nothing more than “the abstract idea of classifying and storing digital
images in an organized manner” (emphasis added)); 24/7 Customer, Inc. v. LivePerson, Inc., Case No. 15-cv-02897-
JST, 2017 WL 2311272, at *3 (N.D. Cal. May 25, 2017) (finding claims ineligible because they organized human
activity by “tailoring information to improve customer experience” and nothing else (emphasis added)); Immersion
Corp. v. Fitbit, Inc., 313 F.Supp. 3d 1005, 1027 – 29 (N.D. Cal. 2018) (finding claims ineligible where the claims
described “nothing more than generic data analysis”); Pragmatus Telecom, LLC v. Genesys Telecomms. Labs., Inc.,
114 F. Supp. 3d 192, 200 (D. Del. 2015) (invalidating claims directed to “the abstract idea of communication between
a customer and a business using a call center”); Telinit Techs., LLC v. Alteva, Inc., No. 2:14-CV-369, 2015 WL
5578604, *16 (E.D. Tex. Sept. 21, 2015) (finding claims abstract because they did nothing more than use a generic
data collection limitation to confine data storage and retrieval to a database which, as noted by the court, were “tasks
that human beings” could perform); Parus Holdings, Inc. v. Sallie Mae Bank, 137 F. Supp. 3d 660, 672 (D. Del. 2015)
(invalidating claims where claim language “calls for using a ‘computer and telecommunications network for
receiving, sending and managing information from a subscriber to a network and from the network to a subscriber”)
(subsequent history omitted); Broadsoft, Inc. v. Callwave Commc’ns, LLC, 282 F. Supp. 3d 771, 784-85 (D. Del.
2017) (invalidating claims directed to the abstract idea of storing data, looking up data and processing data (inserting
at least a portion of that data in the already-existing callerID field) (subsequent history omitted)).
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to:
providing an improved call routing controller, in communication with a call
controller, that enables a private communication network (e.g., a VoIP system) to
better interoperate with a traditional public communications network (e.g., the
public switched telephone network or “PSTN”), to reach an intended destination in
either the private or public network, which involves: evaluating the callee identifier
that is provided by the caller in conjunction with (“determining a match” with)
caller-specific “attributes” that are located (from a “caller dialing profile” and
“associated with the caller”) to identify (“classify[]”) the intended destination as
belonging to the private network or the public network (by testing against “public
network criteria” and “private network criteria”), and then, based on the
classification, producing a routing message (“for receipt by the call controller”) to
setup the call controller to establish the call to the intended destination (“callee”)
via the appropriate communication infrastructure (by “identifying an address, on
the private network, associated with the callee” or “identifying a gateway to the
public network,” depending on the classification made) [N.B.: claim language
emphasized in italics]
Defendants’ assertion that the claims are directed to an abstract idea is even less plausible
for means-plus-function claims such as the apparatus in Claim 28 of the ‘815 Patent. While Claim
28 is similar to Claim 1, the “means” recited in Claim 28 are interpreted under pre-AIA 35 U.S.C §
112(6) as directed to corresponding structures disclosed in the patent specification and equivalents
thereof.12 The non-abstract character of Claim 28 is illustrated in the specification, for example, in
Figure 1 and the algorithms disclosed in Figs. 8A-8D, shown below (See Malek Decl., Exhibit 2
(‘815 Patent) at col. 38 ll. 53 – 67)).
13
12 Pre-AIA 35 U.S.C. 112(6): “An element in a claim for a combination may be expressed as a means or step for
performing a specified function without the recital of structure, material, or acts in support thereof, and such claim
shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents
thereof.” Greenberg v. Ethicon Endo-Surgery, Inc. 91 F.3d 1580, 1584 (Fed. Cir. 1996) (“the use of the term ‘means’
has come to be so closely associated with ‘means-plus-function’ claiming that it is fair to say that the use of the term
‘means’ (particularly as used in the phrase ‘means for’) generally invokes section 112(6)”)
13 Referring to Malek Decl., Exhibit 2 (‘815 Patent), and the claim elements of Claim 28, the specification discloses at
least one processor configured to perform the steps of: “receiving means for receiving a caller identifier and a callee
identifier” including input port 208, a “means for locating a caller dialing profile” including Fig. 8A, block 254, a
“means for determining a match [with] calling attributes...,” including Fig. 8B, steps 257, 380, 382, 390, and 396, a
“means for classifying” including one or more branches of Fig. 8B that leads to blocks 408, 406 or 279, “means for
producing a private network routing message” and “means for producing a public network routing message”
including Fig. 8A, block 350, Fig. 8C, block 644 or Fig. 8D, block 563. Thus, Claim 28 is directed to a special
purpose routing controller that improves intra- and inter-public/private network communications and does so in a
specific manner that does not preempt the field.
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VOIP-PAL’S OPPOSITION TO DEFENDANTS’ CONSOLIDATED MOTION TO DISMISS
Defendants merely dismiss the underlying structure of the means plus function claims as
“generic computer components” as if that was dispositive but fail to consider underlying
algorithms. (Motion at p. 18). It is an error of law to interpret a means-plus-function apparatus as a
generic computer in cases where, as here, the specification discloses a detailed underlying
algorithm: this transforms a general purpose computer into a “special purpose computer
programmed to perform the disclosed algorithm.” Aristocrat Technologies Australia Pty Ltd. v.
Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) (citing In re Alappat, 33 F.3d 1526, 1545
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(Fed. Cir. 1994) and WMS Gaming Inc. v. International Game Technology, 184 F.3d 1339, 1348
(Fed. Cir. 1999). Defendants cite a decision finding means-plus-function claims to be abstract, but
in that case, the specification contained an abstract description of the underlying algorithms.
Procter & Gamble Co. v. QuantifiCare Inc., 288 F. Supp. 3d 1002, 1027 (N.D. Cal. 2017).
3. Defendants “brick and mortar” and “pen and paper” arguments fail
Next, Defendants assert the claims have a “clear” “brick and mortar” and related “pen and
paper” analogy, i.e., “human operators using switchboards” in “telephone companies” inserting “a
pair of phone plugs into the appropriate jacks”. (Motion at pp. 17-19). Defendants allege that
switchboard operators “determined where a call should be routed using relevant caller and callee
attributes (e.g., phone numbers, area codes, or international dialing codes).” (Id.). Defendants fail
to explain what might be “relevant” for any given call, and improperly invite the Court to take
judicial notice of “well-known historical facts” in this context. (Id. at p. 17).
By alleging that operators used “relevant caller and callee attributes,” Defendants
misrepresent switchboard operations. (Motion at p. 17). The PSTN was designed for phone
numbers to be self-interpreting. Defendants do not explain how or why human switchboard
operators would have needed information about the caller to route a call. Traditional switchboard
routing used only the callee identifier (i.e., telephone number) to identify, and route to, the
destination (i.e., callee) and did not need information about the caller—which stands in contrast to
the methodology disclosed in the Asserted Patents. (See Malek Decl., Exhibit 1 (Third Amended
Complaint) at ¶¶9-14)). At best, telephone operators might have used a caller’s identity to properly
attribute toll charges, or to record the caller’s number for a call back in case the connection was
lost. Moreover, for some calls (e.g., incoming on trunks from another switchboard operator), no
caller identification was given but the call could still be routed based solely on the callee number.
Defendants assert that “a switchboard operator would receive a caller identifier (i.e., the
caller’s phone number) and locate additional data (i.e., the caller’s local area for phone service)
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VOIP-PAL’S OPPOSITION TO DEFENDANTS’ CONSOLIDATED MOTION TO DISMISS
based on the area code of that identifier” and that “a switchboard operator would determine
whether the callee and the caller share the same local area code.” (Motion at 19). Again, these bare
assertions are made without any evidence. See Pure Data Sys., LLC v. Ubisoft, Inc., 329 F. Supp.
3d 1054, 1068 (N.D. Cal. 2018) (rejecting the asserted comparisons to longstanding commercial
practices and methods of organizing human activity because “the Court has no knowledge of any
actual use of such practice, much less any confidence that the common use of such a practice is
generally known…”). As noted above, switchboard operators did not need information about the
caller to route the call; the callee identifier was sufficient. Nor was an operator required to
disambiguate the meaning of a called number that potentially might identify a destination on any
one of multiple networks, based on the caller. In contrast, the asserted claims do specifically
require caller information to be used in the process of evaluating a callee identifier to determine,
classify, and route to the destination on the appropriate communication network.14 See Intellectual
Ventures II LLC, v. BITCO General Insurance Corp., Case No. 6:18-cv-00298, 00299, 2019 WL
313207, *4 (E.D. Tex. Jan. 24, 2019) (rejecting the asserted brick and mortar analogy where it
“ignored the language” of the asserted claim).
Moreover, in the asserted claims, when a call is placed, the caller identifier that arrives at
the routing controller—even if taken together with the callee identifier—does not contain the
information necessary to route the call. To route a call, the asserted claims do not apply
knowledge of the caller identifier, but rather, knowledge of caller attributes associated with the
caller identifier. And these caller attributes are not provided from the caller—they are located from
a caller-specific profile (whereas the callee identifier is provided from the caller). Defendants’
analogy obfuscates these key differences. Defendants conflate all sources of information and all
14 For example, ‘815 Patent Claim 1 recites “locating a caller dialing profile… [with] a plurality of calling attributes
associated with the caller,” and producing a routing message “when at least one of said calling attributes and at least
a portion of a callee identifier associated with the callee meet [private/public] network classification criteria.” In
some scenarios, the same callee identifier could potentially identify a destination on either the private or public
network. (See Malek Decl., Exhibit 2 (‘815 Patent) at col. 36 ll. 12 – 39)).
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methods of analysis into the inaccurate concept of “determin[ing]… where to route a call as
between two networks based on information about the caller and callee” (See Motion at 17). Thus,
the operator analogy also fails not to mention it is not the proper subject of judicial notice.
15
B. Step 2. The Asserted Claims Recite Inventive Concepts and Are Patent Eligible
As explained above, the claims are not directed to an abstract idea, and Defendants’
Motion must be denied on that basis alone. Under the second step of the patent-eligibility analysis,
the claims recite inventive concepts, providing yet another ground for denial of Defendants’
Motion. See, e.g., DDR Holdings LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014);
Bascom Global Internet Servs., Inc. v. AT&T Mobility, LLC, 827 F.3d 1341, 1349 (Fed. Cir.
2016). In determining whether there is an “inventive concept” in a claim, courts must “consider
the elements of each claim both individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a patent-eligible
application.” Alice, 134 S. Ct. at 2355; see also Berkheimer v. HP, Inc., 881 F.3d 1360 (Fed. Cir.
2018); Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016).
1. Using caller attributes to utilize callee identifiers and caller attributes to
transparently route calls between private/public networks is unconventional.
The claims do not merely recite “well-understood, routine and conventional functions.”
Rather, the claims recite a specially programmed routing controller to provide call placement and
routing in an individually customizable manner for each caller. At the time of the invention(s)
claimed in the Patents-in-Suit, this was entirely unconventional. In DDR Holdings, the patent
claims relating to “creation of a composite web page” were found to include an inventive concept
15 This material is not the proper subject of judicial notice. Under Federal Rule of Evidence 201(b), “[t]he court may
judicially notice a fact that is not subject to reasonable dispute because it: (1) is generally known within the trial
court’s territorial jurisdiction; or (2) can be accurately and readily determined from sources whose accuracy cannot
reasonably be questioned.” A Court may judicially notice “matters of public record,” but “may not take judicial notice
of a fact that is ‘subject to reasonable dispute,”’ nor “the truth of the facts recited within a judicially noticed
document.” Lee v. City of Los Angeles, 250 F.3d 668, 688-90 (9th Cir. 2001); Shaterian v. Wells Fargo Bank, Case
No. C-11-920 SC, 2011 U.S. Dist. LEXIS 62165, *4 (N.D. Cal. June 10, 2011) (“However, the Court may not take
judicial notice of the truth of the facts recited within a judicially noticed document.”); Lawther v. OneWest Bank, FSB,
No. C-10-00054 JCS, 2012 U.S. Dist. LEXIS 12062, *3 (N.D. Cal. Feb. 1, 2012).
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VOIP-PAL’S OPPOSITION TO DEFENDANTS’ CONSOLIDATED MOTION TO DISMISS
because they “recite[d] an invention that is not merely the routine or conventional use of the
Internet.” 773 F.3d at 1259 (emphasis added); see also Bascom, 827 F.3d at 1350 (holding that a
“non-conventional and non-generic arrangement of known, conventional pieces” can yield an
inventive concept); see also Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1305-6 (Fed. Cir.
2018) (claims not abstract because “the claims recite more than a mere result” and instead “recite
specific steps [ ] that accomplish the desired result”). There, the Federal Circuit recognized that
the claims “[did] not attempt to preempt every application of the idea of increasing sales by
making two web pages look the same” but instead “recite[d] a specific way to automate the
creation of a composite web page … that incorporates elements from multiple sources in order to
solve a problem faced by websites on the Internet.” Id. at 1259 (emphasis added). This was a
sufficient “inventive concept” to render the claims patent-eligible. Id. The same reasoning applies
here.
Defendants argue that the asserted claims lack an inventive concept because certain
elements of the claims were allegedly used in pre-Internet telephony routing by human operators.
(Motion at p. 22) (“long ago, humans produced such messages, for example, when verbally
relaying information to the caller or callee or to other operators, or when recording information,
such as the various routes to the desired switchboard for routing the call”). This reasoning is
unsound. First, it proves too much. On this basis, Defendants can dismiss nearly any telephony or
routing technology out of hand—regardless of how inventive or specifically claimed—as not
containing a patent-eligible inventive concept. Second, this reasoning erroneously conflates what
was known in the prior art, which goes to anticipation and obviousness, with what is generic,
which goes to patent eligibility. Diamond v. Diehr, 450 U.S. 175, 191 (1981) (inability to satisfy
novelty or non-obviousness requirements “does not affect the determination that respondents’
claims recited subject matter which was eligible for patent protection under § 101”). The existence
of some methods of routing telephone calls in the prior art says nothing about whether other (or
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improved) methods in a patent claim are “well-understood, routine or conventional.”
Defendants provide no basis for disregarding the specific operation of the call routing
controller as providing an inventive concept for the claims. For example, as discussed in Section
II(A)(2), Claim 1 of the ‘815 Patent has an internal structure that is specific and cannot be
characterized as directed merely to a desired result that leaves unspecified how the result is
achieved. Rather, its structure corresponds to computer-implemented steps, an embodiment of
which is illustrated in Figs. 8A-8D. (See Malek Decl., Exhibit 2 (‘815 Patent)). Such particularity
ensures that the claims are not directed at patenting the concept of acquiring, analyzing and
presenting information itself, but rather cover a specific (and better) way of solving an identified
problem using a routing controller that applies individually customizable routing schemes and
elements. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1262 (Fed. Cir. 2017)
(finding claims eligible and holding that the use of conventional computer components, by itself,
is not “fatal to patent eligibility where the claims ‘are directed to an improvement in the
functioning of a computer.”(citation omitted)); see also Alice, 134 S. Ct. at 2355.
Defendants reliance on the historical fact that telephone operators routed calls in some
fashion has no foundation, given that Defendants’ Motion is one under Rule 12(b)(6) and there is
no record to support such conclusions. See Section II(A)(3). Moreover, the historic operator
analogy is unavailing because the patented inventions are unconventionally distinct from the
methods used by the operators, who routed calls simply on the basis of the callee identifier alone.
Id. Those operators would not even infringe the asserted claims. In PSTN numbering plans,
telephone numbers were self-interpreting (e.g., a country code, area code or exchange code selfevidently facilitated the next step in routing). At no point would an operator need to disambiguate
the telephone number being called or select a different network destination, based on who was
calling. Consequently, even if the claims are directed to an abstract idea (which is denied), it is
clear that they incorporate a feature or ordered combination of features that are distinct from what
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was “well-understood, routine or conventional” in the art.16
Producing a routing message for receipt by a call controller to cause an electronic
communication to be routed (without user-initiated classification of the communication) as
between two different networks, based upon caller-specific profile information (i.e., caller
“attributes”) and information about the callee is inventive because it provides customization of
dialing to follow any local PSTN convention (or other dialing styles), unlike conventional
systems. User-specific customization techniques have been recognized by the Courts as eligible
subject matter under 35 U.S.C. §101. Bascom Global Internet Servs., Inc. v. AT&T Mobility, LLC,
827 F.3d 1341, 1350 (Fed. Cir. 2016) (finding claims for internet content filtering performed at “a
specific location, remote from the end-users, with customizable filtering features specific to each
end user” to be unconventional and eligible).
Defendants present no clear and convincing evidence that an operator in middle of the
twentieth century evaluated the callee identifier with a routing controller to route a call based on
attributes associated with the caller, using private and public network classification criteria, as
described. Rather, as explained, it was conventional for routing destinations to be determined
based on a callee identifier alone as a limitation to the technology. Defendants’ reliance on
Electric Power Group is inapposite: “The claims in this case do not even require a new source or
type of information, or new techniques for analyzing it…” (Motion at 22-23 (quoting Electric
Power Group 830 F.3d at 1354-55) (emphasis added)). The Court’s observation in Electric Power
16 At the conclusion of this Brief, VoIP-Pal illustrates the reasons for denial of Defendants’ Motion based on
prematurity due to the fact that VoIP-Pal requires discovery in order introduce evidence into the record in support of
its arguments against Defendants’ Motion – something that VoIP-Pal has limited capability to do on a Rule 12 motion
to dismiss. In VoIP-Pal’s proffer of evidence at the conclusion of this Brief, VoIP-Pal references evidence that
Defendants’ arguments about what is conventional should be regarded with skepticism absent a fullsome factual
record based on submissions by Defendant Apple in various IPR proceedings. That is because in related IPR
proceedings filed by Defendant Apple and from which VoIP-Pal prevailed, IPR2016-01198 and IPR2016-01201
(analyzing step 608 in U.S. Patent No. 7,486,684 to Chu), Apple argued that a PBX would have “analyze[d] attributes
of the caller… to determine [where] the call should be routed.” (Exhibit 5 (IPR2016-01198, Paper 2 - Petition for
Inter Partes Review) at 10 (citing step 608 in Chu ’684 at 8:65-9:1); see also Exhibit 6 (Declaration of Apple’s expert,
Ex. 1009) in ¶¶ 36 and 41)). The PTAB rejected Apple’s argument in IPR2016-01198. (Exhibit 7 (Paper 53 – Final
Written Decision) at 22), relying on Exhibit 2016 (Malek Declaration, Exhibit 4 (Decl. of Bill Mangione-Smith)
expert witness for VoIP-Pal)).
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Group actually supports a finding of eligibility here: the asserted claims require an unconventional
source of information (a caller profile) and apply unconventional analysis techniques (using
attributes from the caller profile to analyze a callee identifier. (See Malek Decl., Exhibit 2 (‘815
Patent) at Figs. 8A-D)).
In trying to prove that there is no inventive concept embodied in the asserted claims,
Defendants revisit their all too familiar, and deficient, go-to argument that the claims merely
require locating and classifying information and producing a routing instruction as a result. (See
Motion at p. 21). However, as discussed already, the cases Defendants cite illustrate the deficiency
in their logic. In CyberSource Corp. v. Retail Decisions, Inc., the Federal Circuit found the claim
at issue to be ineligible where the steps of the claim “can all be performed in the human mind.”
654 F.3d 1366, 1373 (Fed. Cir. 2018) (“Such a method that can be performed by human thought
alone is merely an abstract idea and is not patent-eligible under § 101.” (emphasis added)). That
really is a step 1 argument revisited and has already been refuted. Likewise, in another case relied
upon by the Defendants, Ultramercial, Inc. v. Hulu, LLC, the patented invention was directed to
the use of advertising as a form of exchange or currency, an abstract concept that could not be
rescued by recitation of generic computer components. 772 F.3d 709, 715 (Fed. Cir. 2014). But
the recital of generic components in a claim is not dispositive. Avocent Huntsville, LLC v. ZPE
Sys., Inc., No. 3:17-CV-04319-WHO, 2018 WL 1411100, at *1, 8-9 (N.D. Cal. Mar. 21, 2018)
(claims reciting generic components found to contain sufficient inventiveness for eligibility).
Moreover, as discussed herein, , the Patents-in-Suit are directed to much more.
Finally, Defendants cite Intellectual Ventures I LLC v. Symantec Corp., in arguing that the
asserted claims cannot be considered inventive because the Patents-in-Suit allegedly teach that
existing VoIP systems “aggregated information, including routing tables, and used that
information to route calls within or between public or private networks.” (See Motion at p. 21
(citing Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1318, 1321 (Fed. Cir. 2016)). But
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Defendants distort the cited quotation, which actually describes PSTN nodes,
17 which is prior art
in the “Background of the Invention” section of the Patents-in-Suit. (See Motion at p. 21 (citing
Malek Decl., Exhibit 3 (‘005 Patent) at col. 1 ll. 20 – 44)).
18 Moreover, Defendants’
characterization is untethered from the claim language. The Patents-in-Suit do not merely claim
routing of calls over VoIP systems using information. To so limit the claims would actually vitiate
important steps and elements from the claims. Moreover, courts have found claims involving
communication and internet technology to be eligible where, like here, the inventions constituted
unconventional solutions to technological problems. See, e.g., Meetrix IP, LLC v. Citrix Systems,
Inc., Case No. 1-16-cv-1033-LY, 2017 WL 5653950, *3 (N.D. Cal. July 27, 2017). Significantly,
in Meetrix IP, the Court found the claims to be eligible notwithstanding that the solution
“include[d] the use of generic components, including PSTN, VoIP, IP, and VPN” because the
limitations worked together to operate in an unconventional manner. Id.
2. The claimed solution is necessarily rooted in computer technology to solve
problems arising in computer networks
The claims are also patent eligible because they are necessarily rooted in computer
technology to overcome problems specifically arising in the realm of computer networks. DDR
Holdings, 773 F.3d at 1257. The asserted claims are eligible for the same reason that the claims in
DDR Holdings were found eligible by the Federal Circuit. See, e.g., DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1259 (Fed. Cir. 2014) (holding that “[w]hen the limitations of
the [ ] asserted claims are taken together as an ordered combination, the claims recite an invention
that is not merely” routine and conventional”). For example, Claim 1 of the ‘815 Patent recites a
process facilitating the interoperability of private and public communication networks in which a
17 (See Malek Decl., Exhibit 3 (‘005 Patent) at col. 1 ll. 36-40): “The PSTN network typically aggregates all
information and traffic into a single location or node… and then passes it on… by maintaining route tables at the
node.” (emphasis added))
18 A reading of the cases cited by Defendants shows the broad brush that Defendants take in applying the cited case
law. (See, e.g., Motion at p. 23 (citing CyberFone Sys., LLC v. CNN Interactive Group, Inc., 558 Fed. Appx. 988 (Fed.
Cir. 2014)) CyberFone Sys. is cited by Defendants in an argument against lack of an inventive concept but it is really
just a case involving claims covering “obtaining, separating, and then sending information.” Id. at 993.
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callee identifier is utilized to identify a destination on either the private or public networks based
on the outcome of a prior caller-specific evaluation of the callee identifier and whether it met
private or public classification criteria, to cause a call controller to setup a call using the
appropriate infrastructure. Both the problem addressed and the claimed solution are rooted in
computer networks. See Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1306 (Fed.
Cir. 2016). In Amdocs, the Federal Circuit found that while the components and functionality of
the claims appeared to “be generic at first blush,” an examination of the claims in light of the
written description revealed “that many of these components and functionalities are in fact neither
generic nor conventional individually or in order combination.” Id. The Federal Circuit found the
claims to be eligible there because “they describe a specific, unconventional technological solution
narrowly drawn to withstand preemption concerns, to a technological problem.” Id.; see also
Messaging Gateway Sols., LLC v. Amdocs, Inc., No. CV 14-732-RGA, 2015 WL 1744343, at *6
(D. Del. Apr. 15, 2015) (the asserted claim “is firmly rooted in technology and is addressed to a
specific problem arising in the realm of mobile device-to-Internet communication. Furthermore, it
contains sufficient limitations to prevent it from preempting an abstract idea.”). Thus, irrespective
of Alice Step 1, the claims separately comply with 35 U.S.C. § 101 because they contain an
unconventional “inventive concept,” implemented in a specific manner (as recited in the asserted
claims), in a new and useful routing controller which improves (e.g., automates and renders
transparent) the interoperability of two different communication networks.
C. Numerous Factual Disputes Show This Rule 12(b)(6) Motion is Premature.
Defendants’ Motion to Dismiss under § 101 should be denied for the separate reason that it
is premature. Not only is claim construction required, but the factual record in this case is as-yet
undeveloped. Given that the Motion is brought under Fed. R. Civ. P. 12(b)(6), VoIP-Pal is limited
to the intrinsic record. Accordingly, VoIP-Pal submits the following as a proffer of evidence and
notes that the material is being submitted for illustrative purposes and is not intended to convert
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VOIP-PAL’S OPPOSITION TO DEFENDANTS’ CONSOLIDATED MOTION TO DISMISS
the Motion into a Fed. R. Civ. P. 56 motion for summary judgment. See, e.g., Geinosky v. City of
Chicago, 675 F.3d 743, FN 1 (2012). If provided the opportunity to engage in discovery, VoIP-Pal
would elicit evidence to show that a VoIP system is inherently a computer network,19 and that a
VoIP system may use non-PSTN protocols such as Session Initiation Protocol (SIP) and a variety
of caller/callee identifiers, including proprietary identifiers that are incompatible with PSTN callee
identifiers.20 Consequently, for any routing controller or call controller intended to interoperate
with both private and public network elements, there is a requirement for computer-based methods
of communication to bridge the divide. Indeed, the patented method could not be performed
without computing equipment such as the routing controller. (See generally, Mangione-Smith
Decl.)). Moreover, as stated in footnote 16 of this Brief, Defendants’ arguments about what is
conventional should be regarded with skepticism absent a fulsome factual record based on
submissions by Defendant Apple in various IPR proceedings.
The Federal Circuit has made clear that many of the inquiries under a § 101 analysis are
deeply factual and not ripe for adjudication on an undeveloped record. Berkheimer v. HP Inc., 881
F.3d 1360, 1369 (Fed. Cir. 2018) (reversing the district court’s holding that the determination of
“[w]hether something is well-understood, routine, and conventional to a skilled artisan at the time
of the patent is a factual determination.”)); see also Vaporstream, Inc. v. Snap Inc., No.
217CV00220MLHKSX, 2018 WL 1116530, at *6 (C.D. Cal. Feb. 27, 2018)). Accordingly, for the
foregoing reasons, VoIP-Pal respectfully requests, in the alternative, that Defendants’ Motion to
Dismiss be denied as premature.
19 See, e.g., Malek Decl., Exhibit 2 (‘815 Patent) at col. 1 ll. 15-25 (VoIP phones may be computers); col. 13 ll. 49-51
(VoIP phones may share networking resources such as Network Address Translation with other computers); col. 12 ll.
50-67 (FIG. 1 illustrating a preferred embodiment of a VoIP system); col. 13 ll. 17-29 (Internet accessibility)).
20 See e.g., Malek Decl., Exhibit 2 (‘815 Patent) at col. 13 ll. 25-27, col. 14 l. 7, col. 15 ll. 20-23 and FIG. 3 (phones
use SIP protocol); col. 16 ll. 29-33 and col. 26 ll. 59-67 (call controller uses SIP protocol, as do communication nodes
and gateways); See id. at Fig. 15 (358), Fig. 51 (904) (callee identifier may be a Digifonica number/username, or a
PSTN compatible number); see also id. at col. 17 ll. 13-15, col. 25 ll. 19-22 and Fig. 26 (606) (caller identifier may be
a PSTN number or a system username); id. at col. 16 ll. 56-62 (caller identifier may be an IP address)).
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VOIP-PAL’S OPPOSITION TO DEFENDANTS’ CONSOLIDATED MOTION TO DISMISS
III. CONCLUSION
For the foregoing reasons, Plaintiff respectfully requests that Defendant’s Motion to
Dismiss Plaintiff’s Second Amended Complaint be denied.
New York, New York Respectfully submitted,
February 7, 2019
/s/ Kevin N. Malek
MALEK MOSS PLLC
Kevin N. Malek (pro hac vice)
340 Madison Avenue, FL 19
New York, New York 10173
(212) 812-1491
kevin.malek@malekmoss.com
CARLSON & MESSER LLP
David Kaminski
kaminskid@cmtlaw.com
J. Grace Felipe
felipeg@cmtlaw.com
5901 W. Century Boulevard
Suite 1200
Los Angeles, California 90045
Tel: (310) 242-2200
Fax: (310) 242-2222
ALVERSON, TAYLOR,
MORTENSEN & SANDERS
Kurt R. Bonds
Nevada Bar No. 6228
Adam R. Knecht
Nevada Bar No. 13166
7401 W. Charleston Boulevard
Las Vegas, NV 89117
(702) 384-7000
efile@alversontaylor.com
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VOIP-PAL’S OPPOSITION TO DEFENDANTS’ CONSOLI
I like that countdown!
DB isn't pressuring anyone to buy - never has. Rather, simply rebutting the never-ending stream of uninformed one-liners on this board, that shout out the same propaganda, day after day, without any actual context or factual basis. Each must make his or her own investment choices - And one who repeatedly reminds others to do their own due diligence is hardly pressuring anyone to buy - IMHO
That's why this is so funny! $700...woo hoo! We can afford to vacation in Fresno now!
Hear Hear!!!
May I ask where the information is regarding these two dates? The PTAB order, dated December 21, 2018 did not provide for a follow up response from Voip-Pal. Only that Petitioner (Apple) had a final response due on 1/29/2019 - which was done. Was there an additional order? If so, it's not on their website.
Also the following is from the Case Management Hearing on January 16, 2019
The Court set the following case schedule:
Scheduled Event Date
Disclosure of Asserted Claims and Infringement Contentions
January 30, 2019
Last Day to Amend the Pleadings/Add Parties
February 13, 2019
Invalidity Contentions
March 18, 2019
Exchange of Proposed Terms for Construction
April 1, 2019
Exchange of Preliminary Claim Constructions and Extrinsic Evidence
April 22, 2019
Damages Contentions
May 7, 2019
Joint Claim Construction and Prehearing Statement
May 17, 2019
Further Case Management Conference
May 22, 2019, at 2:00 p.m. Case 5:18-cv-06216-LHK Document 53 Filed 01/16/19 Page 2 of 3
I'm not seeing anything regarding a Feb 7th date - Where can I find that?