Voip Pal Com Inc (VPLM)

[GTCar]

I love the quote "Declarants shifting position", I guess they mean shifting in his seat as he squirms around...

PETITIONER FAILS TO ARTICULATE A PROPER REASON TO
COMBINE AND OVERLOOKS WHY THE COMBINATIONS ARE
UNDESIRABLE
1. No articulated reasoning for reason to combine
Petitioner fails to provide articulated reasoning with rational underpinning to
support the legal conclusion of obviousness. KSR Int’l. Co. v. Teleflex, Inc., 550
U.S. 398, 418 (2007).
The Petition refers mostly to irrelevant factors (e.g., both references route
calls to the PSTN) incapable of providing a proper motivation to combine the
IPR2016-01198
Apple Inc. v. Voip-Pal
-70-
references, before providing a single, conclusory sentence of motivation alleging
that Chu ‘684 does not allow users “to place calls as if they were dialing from a
standard PSTN phone”. Petition at 16 and 40. The Petition does not cite Chu ‘684
or explain how Chu ‘684 possesses this deficiency. Such conclusory statements,
even if parroted by an expert, are inadequate. In re NuVasive, Inc. 842 F.3d 1376,
1384 (holding that a declarant’s asserted “‘uses [that] were not disclosed in the
cited prior art references’” were insufficient to address either “the benefits that
could have been obtained by combining the prior art references []or the
PHOSITA’s motivation to combine at the time of the invention.”).
In deposition, the Petitioner’s Declarant shifted to a different reason to
combine: “the call origin profile allows the user to do, for example, seven-digit
dialing... in places where ten-digit dialing is--is required.” Ex. 2043 at 26:12-15 &
27:1-3. This justification finds no basis in Chu ‘684, and involves the user dialing
according to rules that are in conflict with PSTN dialing. Ex. 2016 at ¶ 66. Such a
justification is inconsistent with Petitioner’s original “reason” to combine, and fails
to address any actual defect in Chu ‘684. Id. As such, it is not a proper reason to
combine references.
Declarant’s shifting positions on how to combine the references undermines
Petitioner’s assertion that the claims are merely a simple combination of the
references. Petition at 16, 40-41. The references themselves provide no such
IPR2016-01198
Apple Inc. v. Voip-Pal
-71-
combination, as evidenced by Declarant’s shifting theories unsupported by the
references.