Replies to post #38090 on Voip Pal Com Inc (VPLM)

[CEOs]

What? That's unpossible! How can they say no to VPLM and Emil Malak?

[invergaard]

FROM THE USPTO TODAY:

We disagree. We did not overlook or misapprehend Patent Owner’s
argument regarding the ordering of steps. First, we explicitly cited Patent Owner’s argument and repeated Patent Owner’s explanation of the argument
in the context of Figure 6 of Chu ’684..

As shown above, we expressly referenced
Patent Owner’s argument that Petitioner’s analysis improperly relies on
performing the locating step after performing the producing steps. Id.
Second, in our Institution Decision, we explained that Petitioner sufficiently
met its burden at the preliminary stage to show that the combined teachings
of the references rendered the subject matter of the claims obvious, and that
Patent Owner’s attempt to distinguish the single reference Chu ’684 did not
address Petitioner’s showing that the combination teaches the claimed steps.
Id. at 19–20 (citing In re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012) and
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“[T]he test for obviousness is
what the combined teachings of the references would have suggested to
those having ordinary skill in the art.”)); see also id. at 16 (addressing
Petitioner’s reliance on both Chu ’684 and Chu ’366 for teaching the
locating step, including Petitioner’s reliance on Chu ’366 for teaching call
origin profiles that include calling attributes such as geographic location,
country code, and area code); Pet. 17–18 (relying on both Chu ’684 and Chu
’366 for teaching the locating step of claim 1), 42–43 (relying on both Chu
’684 and Chen for teaching the locating step of claim 1). Patent Owner
again raises the same argument it raised in its Preliminary Response—that
IPR2016-01198 Patent 9,179,005 B25 Petitioner’s obviousness analysis fails because Chu ’684’s ordering of steps is distinct—without explaining how we overlooked a previously-made argument that squarely addresses Petitioner’s proposed combinations.

See,e.g., Reh’g Req. 4 (arguing that Petitioner “premised its obviousness theory
on Chu ’684’s ordering of steps, which are distinct from those in claim 1”),
5 (arguing that “Chu ’684 teaches a method distinct from that of claim 1
because Chu ’684 performs its method in an order different from that
required by claim 1”), 5 (arguing that the Institution Decision overlooked
“Patent Owner’s arguments showing that the Petition’s obviousness
arguments fail due to Chu ’684’s distinct ordering of steps”).
For the above reasons, we are not persuaded that we overlooked or
misapprehended the ordering of steps argument in our Institution Decision.