Voip Pal Com Inc (VPLM)

[BigRaj]

Filed: January 22, 2018
Filed on behalf of:
Patent Owner Voip-Pal.com Inc.
By: Kevin N. Malek
MALEK MOSS PLLC
340 Madison Avenue, 19th Floor
New York, NY 10173
Tel.: [phone]
Tel.: [phone]
Fax: [phone]
Email: [e-mail]
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
APPLE INC.
Petitioner,
v.
VOIP-PAL.COM, INC.,
Patent Owner
Case No. IPR2016-01198
U.S. Patent 9,179,005
PATENT OWNER’S OPPOSITION TO APPLE’S REQUEST FOR REHEARING PURSUANT TO BOARD ORDER OF DECEMBER 21, 2018
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TABLE OF CONTENTS
Page No.
I. INTRODUCTION ........................................................................................... 1
II. LEGAL STANDARD ON REVIEW .............................................................. 2
III. ARGUMENT ................................................................................................... 3
A. The Board Reviewed and Rejected Petitioner’s Motivation to Combine the Prior Art References. ....................................................... 4
1. The Board considered and rejected all of Petitioner’s arguments. ................................................................................... 4
2. The Second Panel relied on evidence from Patent Owner’s expert to reject Petitioner’s interpretation of Chu ‘684 .............. 6
3. The Second Panel did not “overlook” or “ignore” Petitioner’s motivation to combine arguments .............................................10
B. The Second Panel Understood the Proposed Combination And Rejected It As Unsupported ................................................................12
1. The Second Panel did not misunderstand the combination; it rejected Petitioner’s underlying assumptions about Chu ‘684 .13
2. Petitioner’s reliance on Chu ‘684’s alleged “infrastructure” for applying calling attributes was refuted by expert evidence ......15
3. Petitioner’s proposal ignores corruption of private numbers ...16
4. The Petitioner distorts the record in alleging that the Patent Owner “mischaracterized” its Proposed Combinations ............17
C. Petitioner’s Arguments Are Moot Due to Reliance on Uncitable Prior Art ........................................................................................................20
IV. CONCLUSION ..............................................................................................21
TABLE OF AUTHORITIES
Page No(s).
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Amerigen Pharm. Ltd. v. Janssen Oncology, Inc., IPR2016-00286, 2018 WL 6317959 (P.T.A.B. Dec. 3, 2018) ............................. 3
Arnold P'ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004) .................................................................. 3
Belden Inc. v. Berk-Tek LLC, Nos. 2014-1575, -1576 (Fed. Cir. Nov. 5, 2015) ........................................... 9, 20
Dynamic Drinkware v. National Graphics, 800 F.3d 1375 (Fed. Cir. 2015) ............................................................................ 5
In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000) ............................................................ 3
In re Gordon, 733 F.2d 900 (Fed. Cir. 1984) ............................................................................ 16
Intelligent Biosystems v. Illumina Cambridge, 821 F.3d 1359, 1367-1368 (Fed. Cir. 2016) ......................................................... 5
PTAB Trial Guide 77 Fed. Reg. 48763 (Aug. 14, 2012) ................................................................... 6
Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005) .................................................................. 3
OTHER AUTHORITIES
35 U.S.C. § 102 .................................................................................................... 2, 20
35 U.S.C. § 312 ........................................................................................................ 19
35 U.S.C. § 316 .......................................................................................................... 5
TABLE OF AUTHORITIES
(cont’d)
Page No(s).
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37 C.F.R. § 42.65 ....................................................................................................... 6
37 C.F.R. § 42.71 ......................................................................................... 1, 3, 7, 13
37 C.F.R. § 42.104 ................................................................................................. 5, 6
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Patent Owner Voip-Pal.com, Inc. (“Voip-Pal”) hereby opposes Petitioner Apple’s Motion for Rehearing (Paper 71) and respectfully requests denial thereof.
I. INTRODUCTION
Petitioner alleges that, following institution of inter partes review of U.S. Patent 9,179,005 (“the ‘005 Patent”) (Paper 6) by an original panel of the Board (“First Panel”), a replacement panel of the Board (“Second Panel”) erred in ruling against Petitioner in a Final Written Decision (“FWD,” Paper 53), specifically because it misapprehended or overlooked Petitioner’s arguments. In the present Motion (Paper 71), Petitioner seeks rehearing under 37 C.F.R. § 42.71(d) of the FWD before a new panel (“Third Panel”) of the Board as authorized in Paper 70.
Through blanket speculation and mischaracterization of the record, Petitioner tries to mislead the Board into finding error where there has been none. Petitioner mischaracterizes the scope of review by the Board in arriving at the FWD in order to create the illusion that the Board misapprehended and overlooked its arguments. But the evidence shows that the FWD was based on a full review of the entire record, and that Petitioner’s attempt at a do-over should be denied—for multiple reasons:
First, the Second Panel did not misapprehend or overlook Petitioner’s motivation to combine argument or the related testimony of Petitioner’s expert, but rather, rejected it as insufficient and/or implausible in light of the well-supported evidence of Patent Owner’s expert evidence—which was not before the First Panel;
Second, the Second Panel did not misapprehend or overlook the Proposed
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Combinations including Petitioner’s reliance on Chu ‘366 to provide reformatting of dialed digits. Rather, the Board recognized—in light of expert evidence—that Petitioner had not shown that Chu ‘684’s step of assessing dialed digits (step 608) would work for reformatted numbers, and further, that Petitioner had failed to explain the necessary reprogramming to achieve operability; and
Third, while the above findings already mandate denial of Petitioner’s Motion for Rehearing, the Second Panel also considered and rejected an alternative ordering of steps suggested in the Petition (now abandoned by Petitioner). Petitioner seizes on this finding in isolation to allege “misapprehension” of its position, but fails to recognize that earlier in the FWD the Panel had already dealt with Petitioner’s preferred ordering of steps and, relying on Patent Owner’s expert evidence and arguments, rejected it as unsupported. Petitioner repeatedly (and incorrectly) alleges “mischaracterization” of its position by the Patent Owner, but the evidence shows that Petitioner itself distorts the record in a belated attempt to shift its position.
Separately, the FWD should be upheld because Petitioner’s arguments rely on antedated prior art which is not citable under 35 U.S.C. § 102(e). Petitioner filed no expert evidence to challenge Patent Owner’s meticulous antedating case, in which multiple lines of evidence, supported by expert evidence, show actual reduction to practice of the invention in June 2005 prior to the dates of Chu ‘366 and Chen.
II. LEGAL STANDARD ON REVIEW
A party requesting rehearing bears the burden of showing the decision should
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be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters the Board misapprehended or overlooked, and where each matter was addressed previously in a motion, an opposition, or a reply. Id. The decision is reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law or if a factual finding is not supported by substantial evidence. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P'ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). Accordingly, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence. See Amerigen Pharm. Ltd. v. Janssen Oncology, Inc., No. IPR2016-00286, 2018 WL 6317959, at *1 (P.T.A.B. Dec. 3, 2018).
III. ARGUMENT
The FWD (Paper 53) was not based on an erroneous interpretation of the law. Moreover, the FWD was supported by substantial evidence. In addition, Petitioner fails to meet the standard for rehearing under 37 C.F.R. § 42.71(d) by failing to identify how or why the Panel misapprehended or overlooked its position. The FWD correctly concluded that Petitioner’s arguments were conclusory and insufficient and rejected evidence presented through Petitioner’s expert, Dr. Houh, while crediting the unrefuted testimony of Patent Owner’s expert, Dr. Mangione-Smith. For the following reasons, Petitioner’s Motion for Rehearing should be denied.
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A. The Board Reviewed and Rejected Petitioner’s Motivation to Combine the Prior Art References.
1. The Board considered and rejected all of Petitioner’s arguments.
The thrust of Petitioner’s Motion is that “[t]he Replacement Panel entirely overlooked the explanation of the motivation to combine provided in the Petition.” See Paper 71 at 14. Petitioner’s speculation about what the Board did and did not review in considering Petitioner’s motivation to combine arguments ignores and mischaracterizes the FWD. Indeed, the Board’s own expression in the FWD indicates fulsome review, demonstrating the inaccuracy in Petitioner’s argument:
We have considered the Petition and its underlying supporting evidence. We also considered the record that has developed during the course of the trial, which includes the Patent Owner Response and all its underlying supporting evidence.
* * *
After careful review of the record at hand, we find that Petitioner’s reasons for combining the teachings of Chu ‘684 and Chu ‘366 to be conclusory and insufficient to carry the burden of demonstrating unpatentability by a preponderance of the evidence.
See Paper 53 at 20-21 (emphasis added). Accordingly, the argument advanced in the Motion that the Board “overlooked the explanation of the motivation to combine provided in the Petition” is flatly contradicted by the Board itself. Indeed, the FWD is resoundingly supported by the evidence and demonstrates that the Board understood and considered Petitioner’s arguments—but rejected them as insufficient. It is the Petitioner that bears the burden to establish a motivation to
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combine the cited prior art. Intelligent Biosystems v. Illumina Cambridge, 821 F.3d 1359, 1367-1368 (Fed. Cir. 2016); Dynamic Drinkware v. National Graphics, 800 F. 3d 1375, 1378-1379 (Fed. Cir. 2015) (“In an inter partes review, the burden of persuasion is on the petitioner to prove ‘unpatentability by a preponderance of the evidence,’ 35 U.S.C. § 316(e), and that burden never shifts to the patentee. ‘Failure to prove the matter as required by the applicable standard means that the party with the burden of persuasion loses on that point—thus, if the fact trier of the issue is left uncertain, the party with the burden loses.’” (citing Technology Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008)). See FWD, Paper 53, at 20.
The Second Panel found that Petitioner had failed to carry its burden to prove a motivation to combine the cited art. Id. at 21. Petitioner’s vague allegation that Chu ‘684’s system was somehow deficient and thus ripe for improvement, were rejected due to Petitioner’s lack of “underlying explanation or citation”:
“Notably absent, however, from both the Petition and Dr. Houh’s testimony is underlying evidentiary support for the proposition that one of ordinary skill in the art would have regarded Chu ’684’s teachings as deficient. Indeed, Petitioner’s statement and Dr. Houh’s bare testimony that “pon reading the disclosure of Chu ’684,” a person of ordinary skill in the art would have sought to improve that very disclosure seemingly warrants underlying explanation or citation, yet no adequate support in that regard is supplied.” (id. at 19; see 37 C.F.R. § 42.104)
Indeed, Petitioner’s lack of citation to Chu ‘684 is remarkable. Petitioner tries to prove a deficiency in Chu ‘684, not by citing to Chu ‘684, but by citing to a problem disclosed in a different secondary reference (Chu ‘366 or Chen)—and then
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baldly alleges that Chu ‘684 necessarily (inherently) has the same problem, even though these systems involve completely different operating environments—a logical leap to which the Board need not give any weight: 37 C.F.R. § 42.104(b)(5).
The Board was also entitled to assign little or no weight to Dr. Houh’s lack of evidence and explanation. PTAB Trial Guide, 77 Fed. Reg. 48763 (Aug. 14, 2012) (“Affidavits expressing an opinion of an expert must disclose the underlying facts or data upon which the opinion is based. See Fed. R. Evid. 705; and § 42.65. Opinions expressed without disclosing the underlying facts or data may be given little or no weight. Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997)”)
2. The Second Panel relied on evidence from Patent Owner’s expert to reject Petitioner’s interpretation of Chu ‘684
The Board’s decision, rejecting a motivation to combine, is supported by substantial evidence. The Motion for Rehearing is curiously silent regarding the Board’s express reliance on Dr. Mangione-Smith’s evidence, especially its indication that it discounted Dr. Houh’s evidence—on which Petitioner’s case rests:
“Moreover, this panel has the benefit of Dr. Mangione-Smith’s testimony, in which he expresses disagreement with the positions noted above taken by Dr. Houh and Petitioner and highlights the potential inadequacies in that respect. See Ex. 2016 ¶¶ 65–67. Indeed, we credit Dr. Mangione-Smith’s view that Dr. Houh does not explain adequately the nature of the deficiency in Chu ’684 that is intended to be addressed. Id. ¶ 66.” (id. at 19)
The Panel’s reliance on at least Ex. 2016 ¶¶ 65–67 and 71 establishes that the Panel rejected Petitioner’s interpretation of Chu ‘684 in a number of respects.
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All of Petitioner’s arguments critically rely on the unproven assumption that Chu ‘684 requires the dialing of long-form E.164 numbers:1
“The Proposed Combinations each propose that Chu ’684 would benefit if its users could employ short form dialing—as is common for
local PSTN calls on a standard landline (e.g., 555-1234)—rather than being required to use full E.164-compliant numbers (e.g., [phone]) as contemplated by Chu ’684.” (Paper 71, Mot. for Reh’g, at 3-4)
“the Proposed Combinations recognized that Chu ‘684 required a user to dial a complete (long form) E.164 compatible number” (id. at 8)
“Chu ‘684 did not contemplate allowing short form dialing” (id. at 17)
[emphasis added]
Contrary to 37 C.F.R. § 42.71(d), Petitioner cannot provide pinpoint cites to show where these very specific technical assertions were made in the record; at best, Petitioner pointed out that phones in Chu ‘684 could have a PSTN (E.164) number.2
But even if these assertions had been made from the outset by Petitioner, the Panel’s adoption of Dr. Mangione-Smith’s testimony indicates that it rejected Petitioner’s underlying assumptions about Chu ‘684’s operation as unproven.
1 The FWD at 15 cites Chu ‘366 to explain that the E.164 format “contains an E.164 prefix (typically a + sign), a country code, and a subscriber telephone number.”
2 E.g., the Motion at 8 cites Paper 34 at 21-23, citing Chu ‘684 at 13:1-11, but the cited passage has nothing to do with dialing. It discloses that IP-PBX phones can be assigned a private telephone number and a public E.164 telephone number (e.g., to allow calls from the PSTN). But how an E.164 compatible telephone number would be dialed would depend on the dialing plan in the caller’s area. See Ex. 2016 ¶ 66. See also Chu ‘684 at 13:4 (example of phone numbers, “732-949-xxxx”, is not in a long-form E.164 format, which would require a “+” sign and country code, but rather, in the local 10-digit dialing format in use in area code 732 (New Jersey) at the time the patent was filed. See: https://www.state.nj.us/rpa/fallwin0002.PDF at 2
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Dr. Mangione-Smith opined in Ex. 2016 ¶ 66, based in part on accompanying extensive evidence of how PBX systems worked, that: (1) Dr. Houh was unable to adequately explain either in his declaration—or during his deposition testimony (Ex. 2043)—what deficiency in Chu ‘684 was being addressed; (2) PBX phone systems such as Chu ‘684 “provided all the features of ordinary phones connected to the PSTN, and in addition, supported the dialing of private extension numbers;” (3) Dr. Houh’s personal desire for a PBX system that would support dialing in a manner inconsistent with the public numbering plan in his area, as described during deposition, was his subjective preference and not an objective “defect” in Chu ‘684 requiring remedy; and that (4) in Chu ‘684, “users would dial PSTN ‘public numbers’ based on the location of the customer premises 105” (i.e., “dialing according to the dialing conventions of [that] geographic area”) [emphasis added].
Given the Second Panel’s express reliance on Dr. Mangione-Smith in Ex. 2016 ¶ 66, these facts, especially the last one, eviscerate Petitioner’s “motivation to combine” argument, which is not only unsupported and inadequately explained but also technically incorrect. Like other PBX systems cited by Dr. Mangione-Smith in his declaration (id. at ¶¶ 66, 71-72, Exs. 30-47), Chu ‘684 did not require a complete (long form) E.164 number to be entered; rather, Chu ‘684’s PBX would allow users to dial PSTN numbers based on the dialing conventions of their location. Id.
The instant Motion for Rehearing makes no attempt to challenge Dr. Mangione-Smith’s declaration, and, tellingly, Petitioner chose not to submit any
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new expert evidence with its reply to refute Patent Owner’s expert. Belden Inc. v. Berk-Tek LLC, Nos. 2014-1575, -1576 (Fed. Cir. Nov. 5, 2015) (aff’g Petitioner’s right to submit new expert evidence on reply). The Panel’s reliance on Dr. Mangione-Smith’s unrefuted testimony thus provides substantial evidence for its conclusions that Petitioner’s “motivation to combine” argument is fatally flawed. Petitioner also undermines its own argument—and inadvertently supports Dr. Mangione-Smith’s conclusions that Chu ‘684 supported dialing based on location—when it explains the basis for the alleged inherent deficiency of “IP phones”:
“Traditional PSTN phones are hardwired to a physical central office location, which enables PSTN callers to dial short form numbers (e.g., 7 digit local numbers) without entering the full E.164 international standard number corresponding to the callee. Using its known geographic information, the PSTN can “complete” the callee number and route the call correctly. IP phones, conversely, are not tied to any specific physical location and thus do not inherently provide the user an option to dial short form numbers. Thus some additional functionality must be provided to an IP-based telephone service to allow users to dial as if they were calling from a PSTN phone.” [emphasis added] (Paper 44, Pet.’s Opp. To PO Mot. to Exclude, at 8)
(Cited in Petitioner’s Motion for Rehearing, Paper 71, at 16)
But if the reason some IP phones do not inherently support “short form numbers” is that they are “not tied to any specific location,” then, clearly, Chu ‘684 avoids this problem. The Panel expressly cited Fig. 2 of Chu ‘684, which shows the PBX is tied to a specific location, namely, “Customer Premises 105,” which in turn, is hardwired to a “Central Office 205.” FWD at 13. The Panel also pointed out that a soft-switch 220 at the central office 205 “keeps track of the VPN that a location
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belongs to…”. Id. at 14 (citing Chu ‘684 at 4:59-63 [emphasis added]). Petitioner’s own argument supports the Panel’s rejection of the Petitioner’s interpretation of Chu ‘684 because Chu ‘684 would use the location of customer premises to support short form dialing in the manner stated by Dr. Mangione-Smith (Ex. 2016 ¶ 66).
As a further problem, Dr. Houh’s testimony during deposition does not align with the Petitioner’s assumption that Chu ‘684 would have required dialing a full long-form E.164 number. On the contrary, Dr. Houh implicitly supported Dr. Mangione-Smith’s view by asserting that the combination of Chu ‘684 with the secondary references, would allow seven-digit dialing in an area (Boston) that would otherwise have required ten-digit dialing. Ex. 2044 at 156:14-157:15, 158:1-20. In effect, Dr. Houh assumed that Chu ‘684’s PBX system itself (before any reformatting step is added), would have forced the user to use ten-digit dialing in the Boston area—but this means that Dr. Houh was assuming that Chu ‘684’s PBX would not have required full long-form E.164 numbers to be dialed:
“And this is exactly the part of the -- part of the motivation for the combination of the two, so that users may just dial seven digits, and the system of the combination would expand that number out to the required ten digits” (emphasis added; id. at 158:11-15)
3. The Second Panel did not “overlook” or “ignore” Petitioner’s motivation to combine arguments
Petitioner asserts the Second Panel “ignored” the motivation to combine “expressly provided by the Secondary References” (Paper 71 at 16) and “entirely overlooked the explanation of the motivation to combine provided in the Petition,”
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(id. at 14), citing to a lengthy quotation from Chu ‘366 from page 14 of the Petition, with much bold emphasis added. Id. at 15. But Petitioner omits that the very portions of Chu ‘366 quoted by the Petition are expressly quoted or cited in the Board’s discussion of Chu ‘366. Compare id. at 15 and Paper 53, FWD, at 15-16 (both documents quote or cite Ex. 1007, Chu ‘366, at 1:18-20, 1:35-37, 1:37-40, 1:44-47 and 2:1-4, inter alia). For example, Petitioner’s alleged “benefit” of short form numbers (Id. at 14: “the benefit gained is to allow customer to dial using… short form numbers (PSTN)”) is also cited in the FWD (“…a subscriber is able to enter abbreviated numbers…”: FWD at 16, quoting Chu ‘366 at 1:35-37). Thus, the Motion is wrong to claim that “at no point… is there any recognition of these key motivations” (Paper 71 at 16). Unfortunately, the Petitioner’s “key motivations” rely on a speculative and unproven premise—that Chu ‘684’s system necessarily has the same problems as the secondary references—to justify combining those references.
In a final desperate attempt to identify a motivation in the record, the Motion cites Paper 44 at pp. 7-11, which, it vaguely alleges, “rebut[s] many of the critiques advanced in the FWD.” Id. at 16. However, the cited pages merely: (1) answer the criticism that Dr. Houh’s opinions are “unsupported by any citation to Chu ‘684 or explanation” by urging the Panel to do a “simple review” of Dr. Houh’s declaration at ¶¶ 22-25, 26-34 and 35-44—yet offer no pinpoint cites [id. at 7]; (2) raise the self-refuting “physical location” argument [id. at 8; see Section III(A)(2)]; and (3) cite, again, to the information in Chu ‘366’s background section [id. at 9].
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The need to go on such a wild goose chase through the record highlights not only Petitioner’s failure to identify a motivation to combine—it belies the Petition’s claim that a skilled person would have identified a defect in Chu ‘684 merely “pon reading the disclosure of Chu ‘684.” See FWD at 19, Petition at 16, 40.
Finally, Petitioner’s allegation that Patent Owner “mischaracterized” the Petitioner’s position in a rehearing request challenging the Petitioner’s motivation to combine, has no merit. Paper 71 at 1, 4 (citing Paper 9). Contra Petitioner, the First Panel did not state Patent Owner’s motivation argument was a mischaracterization; rather, the First Panel “particularly” relied on Dr. Houh’s testimony given his “educational background and experience in the field.” Paper 11 at 6. It is understandable the First Panel would accept Dr. Houh’s testimony “for purposes of institution” given the absence of expert testimony from Patent Owner (at that stage). But the First Panel had before it none of Dr. Mangione-Smith’s evidence refuting Dr. Houh, thus Petitioner’s assertion—that the FWD relied on the “same arguments” as rejected by the First Panel (Paper 71 at 1)—is a gross mischaracterization.
B. The Second Panel Understood the Proposed Combination And Rejected It As Unsupported
The Board found that Petitioner’s proposed combinations did not adequately account for claim limitations requiring that caller attributes form the basis, in-part, for ultimately assessing whether private network or public network classification criteria have been met and routing accordingly. Paper 53, FWD at 24. In particular, the Panel found Petitioner’s proposal to modify Chu ‘684, by inserting Chu ‘366’s
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“reformatting” steps, to be implausible and unsupported. Id. at 21-24.
Petitioner had proposed reformatting dialed digits as taught in Chu ‘366, and then, “[o]nce the callee identifier is reformatted, Chu ‘684 determin[ed] whether the callee is a private packet network subscriber or a public PSTN customer.” Id. at 21-22 (citing Petition at 19). But Chu ‘684 determined call type based on “dialed digits” alone, noted the Panel. The Panel therefore questioned Petitioner’s failure to explain why or how Chu ‘684’s step of assessing dialed digits (step 608) would even work for reformatted numbers. Id. at 23 (citing expert evidence in Ex. 2016 ¶ 71).
1. The Second Panel did not misunderstand the combination; it rejected Petitioner’s underlying assumptions about Chu ‘684
Petitioner points to the Panel’s criticism of Petitioner for “failing to explain how Chu ‘684 can process a reformatted number,” as evidence of the Panel’s “misapprehension” of the Petitioner’s proposed combination, in which, allegedly, “Chu ‘684 contemplates receiving long form E.164 compatible numbers,” and thus, “the reformatted number supplied to Chu ‘684 is in the same E.164 compatible format that Chu ‘684 expressly contemplates using.” Id. at 9 (emphasis added). But Petitioner fails to identify where in the record it argued that Chu ‘684 could not process short form E.164 numbers. 37 C.F.R. § 42.71(d). For example, the assertion, “Chu ‘684 required… a complete (long form) E.164 compatible number[s]” (id. at 8) is cited to the Petition at 14—which explains how Chu ‘366 has this problem.
Careful review of the FWD shows that the Second Panel did not misapprehend or overlook the Petitioner’s preferred manner of combining the
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references: it expressly recognized that “Petitioner turns to Chu ‘366 to account for the requirement that…[a] calling attribute associated with a caller [is] employed” to process a call. FWD at 21. The Panel also understood that “the ‘reformatting’ of dialed digits is the distinct basis for Petitioner’s reliance on Chu ‘366” (id. at 22) and that Chu ‘366 taught reformatting “using… information from a call origin location profile” (id. at 16). Further, the Panel’s concern about whether Chu ‘684’s teaching would apply to a reformatted number (id. at 23) shows that the Panel understood that the reformatted number was being used in Chu ‘684’s algorithm.
However, as explained in Section III(A)(2) supra, the Panel rejected Petitioner’s assumptions about Chu ‘684 as unsupported by plausible explanation or citation to Chu ‘684 and also as inconsistent with Dr. Mangione-Smith’s unrefuted evidence (Ex. 2016). By crediting Dr. Mangione-Smith, the Panel in effect rejected the Petitioner’s view that dialing in Chu ‘684 required entry of “long form” E.164 numbers; rather, in Chu ‘684, “users would dial PSTN ‘public numbers’ based on the location of the customer premises 105”. Ex. 2016 ¶ 66 (cited in FWD at 19).
But if Chu ‘684 does not require “long form” E.164 number dialing (as assumed by Petitioner), then Petitioner’s arguments fall apart. In this case, inserting reformatting prior to step 608 in Chu ‘684 would result in sending “reformatted” dialed digits to step 608—which previously only received unaltered dialed digits. Thus, the Panel was correct to question Petitioner’s naïve assumptions about the obviousness of the combination (e.g., whether Chu ‘684’s “evaluation” or “analysis”
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in step 608 would be “applicable” to a reformatted number) and was supported in making its adverse finding by expert evidence. Id. at 22-23 (citing Ex. 2016 ¶ 71).
2. Petitioner’s reliance on Chu ‘684’s alleged “infrastructure” for applying calling attributes was refuted by expert evidence
Dr. Mangione-Smith’s criticism in Ex. 2016 ¶¶ 70-71 highlights a false premise found in the Petition and also in Dr. Houh’s evidence, namely, that Chu ‘684 itself, in step 608, would have relied on attributes of the caller:
“Chu ‘684… describe[s] call setup procedures in which a call processor analyzes attributes of the caller… to determine whether the call should be routed to… the private packet network or the public PSTN” (Petition at 10, citing to Chu ‘684 at 8:65-9:1 (“step 608”) [emphasis added])
[B]oth references [including Chu ‘684] teach a process in which dialed digits and caller attributes are used to determine where the call should be routed. (id. at 15 and 39, citing Chu ‘684 at 8:65-9:1 [emphasis added]; see also same quote in Houh Decl., Ex. 1009 ¶¶ 36 and 41)
However, the Second Panel agreed with Dr. Mangione-Smith that call classification in step 608 of Chu ‘684 was not premised on using any caller-specific information (e.g., caller “attributes”), but rather, relied on the “dialed digits” alone. FWD at 22 (citing Ex. 2016 ¶71; see also his supporting explanation in ¶¶58-70).
As shown by the quotations above, the same incorrect assertion about the operation of Chu ‘684’s “step 608” is repeated in both Dr. Houh’s declaration and in the Petition, where it is specifically relied upon to argue the obviousness of modifying Chu ‘684 to add reformatting based on caller attributes. Thus, this error in the Petition (e.g., id. at 15 and 39) undermines a key rationale at the heart of the Petitioner’s obviousness argument: “Given that the system of Chu ’684 already
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contains all the infrastructure needed to support such reformatting, the modification to Chu ’684 would be straightforward” (id. at 16 and 40). Petitioner’s error about the availability of relevant infrastructure in Chu ‘684 further supports the Second Panel’s finding that Petitioner’s arguments were unsupported. FWD at 22-23.
3. Petitioner’s proposal ignores corruption of private numbers
The Panel identified a further inadequacy in Petitioner’s proposed modification of Chu ‘684 when it cited Ex. 2016 ¶ 67 (cited in FWD at 19). Here, Dr. Mangione-Smith’s criticized Dr. Houh’s attempt to explain how reformatting would be integrated without rendering the “private number” dialing features of Chu ‘684 inoperable. Dr. Mangione-Smith cited Dr. Houh’s deposition testimony (Ex. 2044 at 133:15-156:5) during cross-examination and stated that it was evasive and ad hoc as Dr. Houh tried to salvage the Petitioner’s proposed combination in light of evidence that it would have corrupted certain numbers and was thus unsatisfactory.
The Panel also cited Patent Owner’s arguments explaining that Petitioner’s proposed combinations had an “order of steps” problem. FWD at 24, citing PO Res. (Paper 17) at 59-66. Patent Owner argued, citing to Dr. Mangione-Smith in Ex. 2016 ¶ 67, that Petitioner’s ordering of steps in combining Chu 366’s reformatting and step 610 in Chu ‘684 was not obvious because the modification would corrupt private number dialing.3 In re Gordon, 733 F.2d 900 (Fed. Cir. 1984) (indicating non-obviousness if a device, when modified as proposed, “would be rendered
3 Chu ‘684’s PBX disclosed support for the dialing of both “public telephone number[s]” and “private number[s]” (extensions). See Chu ‘684 at 13:1-9; 16:49-54.
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inoperable for its intended purpose”). Far from improving Chu ‘684, Petitioner’s combination created new problems in Chu ‘684 that Petitioner and Dr. Houh failed to anticipate. Ex. 2016 ¶ 67. The only reason Petitioner combined reformatting and step 608 in the manner proposed was hindsight based on Patent Owner’s claims—a PHOSITA would not have adopted an ordering of steps that, in effect, damaged “private number” dialing in Chu ‘684. See Paper 17 at 59-66. For example, if a user dialed a short private extension number (e.g., “101”) and it was reformatted as per Chu ‘366 or Chen, it would be corrupted, causing the call to fail. See Ex. 2016 at ¶¶ 67, 78-82. The Motion pretends that all numbers would be dialed “pursuant to standard public dialing conventions” (i.e., PSTN numbers) but neglects to say what would happen if a private extension (“101”) was dialed: see Paper 71 at 7, step 2.
The Second Panel agreed with Patent Owner and Dr. Mangione-Smith in finding that Petitioner’s bare allegation that Chu ‘684 could be modified “by merely programming… as necessary”, was inadequate and also “an impermissible exercise of hindsight with the claims of the ’005 patent serving as a guide.” See FWD at 23.
Petitioner’s obviousness argument thus fails in view of the above findings of the Second Panel, based on substantial evidence, that Petitioner’s proposed combinations are incapable of applying “attributes” to dialed digits, or at least, that Petitioner had failed to carry its burden to plausibly explain the modification. Id.
4. The Petitioner distorts the record in alleging that the Patent Owner “mischaracterized” its Proposed Combinations
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Petitioner repeatedly alleges that the Patent Owner “mischaracterized” its proposed combination by criticizing (e.g., in Papers 5 and 9) the Petition’s reliance on Chu ‘684’s soft-switch for the step of “locat[ing]” a caller dialing profile in the challenged claims. Paper 71 at 1, 3-4, 13. Petitioner alleges the First Panel rejected Patent Owner’s arguments in a rehearing request but that the Second Panel was misled by crediting the “same arguments” in the FWD. Id. Petitioner’s allegations are so devoid of merit that they can only be characterized as deliberately misleading:
(1) The Petition at 18 and 42 expressly cites Chu ‘684 at 9:30-33 for the step of “locat[ing]” a caller dialing profile. Petitioner valiantly tries to explain this away:
“…the Secondary References provide the user-specific caller profiles and that the citations to Chu ’684 for the ‘locating’ limitation establish that Chu ’684 includes the infrastructure necessary to make use of the Secondary Reference caller profiles and number reformatting, not that Chu ’684 itself is relied upon for locating a caller profile”
(Paper 71 at 11-12 [emphasis added])
Petitioner’s belated excuse that Chu ‘684 at 9:30-33 (i.e., soft-switch 220 in step 610) was relied upon merely to establish that Chu ‘684 has the necessary “infrastructure” for utilizing profiles and reformatting is disingenuous because Petitioner’s entire argument depends on such reformatting happening at a different piece of infrastructure, viz., the server 110, prior to step 608. See Petition at 10, 19, 39 and 44; Chu ‘684 at 8:65-9:1 (“step 608”), 9:30-33 (“step 610”), FIG. 6.
(2) Misleadingly, the above-quoted argument suggests that Petitioner never relied on Chu ‘684 itself for the step of “locating” a caller profile. Paper 71 at 12.
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At best, this represents a shift in the Petitioner’s position, but it was not Petitioner’s position at the outset. Indeed, Dr. Houh’s declaration contradicts the Petitioner:
“45. I have been asked to assess whether Chu ’684 discloses using a caller identifier to locate a caller dialing profile comprising caller attributes... In my opinion, it does.”
(Ex. 1009, Hough Decl., at ¶ 45 [emphasis added])
Dr. Houh goes on to conclude that Chu ‘684 itself teaches “locating a caller dialing profile using a caller identifier,” relying on Chu ‘684 at 9:30-33 (i.e., step 610, which is performed at the soft-switch). Similarly, in ¶ 47, Dr. Houh points inter alia to Chu ‘684 at 9:30-33 as “detailing soft-switch locating caller dial plan” and concludes that Chu ‘684 discloses a “processor[] for locating caller dialing profiles.”
In short, the Petition’s claim chart (at 19) cites to both Chu ‘366 and Chu ‘684 for the “locating” step. The claim chart also cites to underlying support from Dr. Houh in Ex. 1009 ¶ 45, which relies on Chu ‘684 itself performing the “locating” step at the soft-switch 220. Given this unexplained ambiguity, Patent Owner and the Panel were justified to challenge Petitioner’s reliance on Chu ‘684 for the step of “locating” in the alternative. But this is not a “mischaracterization” on the part of the Patent Owner; it is, rather, a failure by the Petitioner to state its invalidity challenge “with particularity” in the Petition: see 35 U.S.C. § 312(a)(3).
Petitioner seizes on the Panel’s treatment of this particular ordering problem in the Petition as if it was representative of all of the Panel’s findings. It is not. As explained supra (see Section III(B)(1)), the Panel understood the Petitioner’s
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proposed combinations (using its preferred ordering) and gave multiple dispositive reasons for rejecting those combinations as unsupported—and only then turned to refute the combinations having this alternative ordering (also found in the Petition).
C. Petitioner’s Arguments Are Moot Due to Reliance on Uncitable Prior Art
Separately, the FWD should be upheld because Petitioner’s arguments rely on antedated prior art, which is not citable under pre-AIA 35 U.S.C. § 102(e). See Motion, Paper 71, at 4-5 (citing Patent Owner’s “swear behind” arguments).
In Patent Owner’s Response and Sur-Reply (Papers 17 and 41), Patent Owner presented multiple interlocking lines of evidence showing that the invention set forth in the ‘005 Patent claims was actually reduced to practice and was tested to work for its intended purpose at least as early as June 2005, thereby antedating the Chu ‘366/Chen references, for example: (1) authenticated copies of “RBR v361” software code; (2) multiple witness testimony (co-inventors, employees, outside consultants, plus expert witness, Dr. Mangione-Smith) that the RBR code was able to perform the patented invention in June 2005; and (3) contemporaneous emails corroborating that the code was deployed and tested on June 6, 2005.
Notably, Petitioner filed no expert evidence to challenge Patent Owner’s meticulous antedating case. Belden Inc. v. Berk-Tek LLC, Nos. 2014-1575, -1576 (Fed. Cir. Nov. 5, 2015) (aff’g Petitioner’s right to submit new expert evidence on reply). Therefore, the Board should reject Petitioner’s obviousness arguments as moot due to their reliance on un-citable prior art. See Pre-AIA 35 U.S.C. § 102(e).
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IV. CONCLUSION
For all these reasons, Patent Owner respectfully requests that the Board deny the Petitioner’s Motion for Rehearing of the Final Written Decision.
Respectfully submitted,
MALEK MOSS PLLC
Dated: January 22, 2018 By: /s/ Kevin N. Malek
Kevin Malek, Reg. No. 53,938
340 Madison Avenue, FL 19
New York, New York 10173
Attorney for Patent Owner
Voip-Pal.com, Inc.
Phone: [phone]
Email: [e-mail]
Attorneys for Voip-Pal.com Inc.
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CERTIFICATE OF SERVICE
I hereby certify that true and correct copy of PATENT OWNER’S OPPOSITION TO APPLE’S REQUEST FOR REHEARING PURSUANT TO BOARD ORDER OF DECEMBER 21, 2018 is being served on January 22, 2018, via FedEx Priority Overnight pursuant to 37 C.F.R. § 42.6(e) and as a courtesy via electronic mail, for Petitioners as addressed below:
Adam P. Seitz
Eric A. Buresh
ERISE IPA, P.A.
6201 College Blvd., Suite 300
Overland Park, KS 66211
Telephone: [phone]
[e-mail]
[e-mail]
Paul R. Hart
ERISE IPA, P.A.
5600 Greenwood Plaza Blvd., Suite 200
Greenwood Village, CO 80111
Telephone: [phone]
[e-mail]
Dated: January 22, 2018 /s/ Kevin N.Malek
Kevin Malek, Reg. No. 53,938
MALEK MOSS PLLC
340 Madison Avenue, FL 19
New York, New York 10173
Phone: [phone]
Fax: [phone]
[e-mail]
Attorneys for Voip-Pal.com Inc.