PTAB

IPR2016-01201

Apple Inc v. VoIP Palcom Inc

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1. Case Identification

2. Patent Overview

  • Title: Producing Routing Messages for Voice Over IP Communications
  • Brief Description: The ’815 patent discloses a telephony system that classifies calls as either public or private network calls. A call routing controller uses attributes of the calling party to determine how to route a call to the called party, including whether to reformat the called party's identifier before routing.

3. Grounds for Unpatentability

Ground 1: Claims 1, 7, 27-28, 34, 54, 72-74, 92-93, and 111 are obvious over Chu ’684 in view of Chu ’366.

  • Prior Art Relied Upon: Chu (Patent 7,486,684) and Chu (Patent 8,036,366).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Chu ’684 discloses the foundational telecommunications system of the ’815 patent, teaching a Voice over Internet Protocol (VoIP) system where a subscriber can call other private network (on-net) subscribers or public switched telephone network (PSTN) customers. Chu ’684’s system uses a call processor (a soft-switch) that analyzes dialed digits against a dial plan to determine if a call is on-net or off-net and routes it accordingly. However, Petitioner contended that Chu ’684 does not explicitly teach modifying the callee identifier based on caller attributes. This limitation, central to the challenged claims, is supplied by Chu ’366. Chu ’366 teaches a system for reformatting dialed digits into a standard E.164 format by using caller attributes, such as the caller’s country and area code, to intelligently prepend necessary digits to a locally dialed number. Petitioner asserted that combining Chu ’684’s routing system with Chu ’366’s number-reformatting logic renders the challenged claims obvious.
    • Motivation to Combine: A POSITA would combine these references to improve the user experience of the VoIP system in Chu ’684. The combination allows VoIP users to dial numbers using familiar local or national conventions, just as they would on a traditional PSTN phone. Chu ’366 explicitly addresses this known issue in VoIP systems, providing a clear solution—reformatting numbers based on caller location attributes—that would have been a natural and desirable improvement to the system of Chu ’684.
    • Expectation of Success: A POSITA would have a reasonable expectation of success because the system in Chu ’684 already possessed the necessary infrastructure (e.g., call processors and databases) to implement the number-reformatting logic taught by Chu ’366. The modification would primarily involve programming the existing system, which would be a straightforward task yielding predictable results without undue experimentation.

Ground 2: Claims 1, 7, 27-28, 34, 54, 72-74, 92-93, and 111 are obvious over Chu ’684 in view of Chen.

  • Prior Art Relied Upon: Chu (Patent 7,486,684) and Chen (Application # 2007/0064919).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground was presented as an alternative to Ground 1. Petitioner argued that the teachings of Chen are substantively identical to Chu ’366 concerning the key limitation of number reformatting. Like Chu ’366, Chen teaches a method for reformatting dialed digits into a standard E.164 format by using caller attributes (e.g., country code, area code) to allow users to "place phone calls in a familiar manner." This combination again relies on Chu ’684 for the base VoIP routing system and uses Chen to supply the intelligent number-reformatting feature. Petitioner asserted this alternative ground to preempt any attempt by the Patent Owner to "swear behind" the Chu ’366 reference, as Chen predates the ’815 patent's priority date by a significant margin.
    • Motivation to Combine: The motivation is identical to that in Ground 1: to enhance the Chu ’684 system with a more intuitive, user-friendly dialing interface by incorporating the known number reformatting techniques taught by Chen.
    • Expectation of Success: Similar to the first ground, a POSITA would expect success because combining Chen’s software-based reformatting rules with the existing hardware and call logic of Chu ’684 would be a predictable integration of known technologies to achieve a desired improvement.

4. Key Claim Construction Positions

  • "Username": Petitioner proposed that "username" should be construed as "any unique identifier associated with a user." This broad construction is based on the ’815 patent’s description of an exemplary username as a "twelve digit number" assigned upon registration.
  • Means-Plus-Function Limitations: Petitioner argued that claims 28, 34, 93, and 111 contain multiple means-plus-function limitations subject to 35 U.S.C. §112, ¶ 6. For each such limitation (e.g., "receiving means," "means for locating," "means for determining," "formatting means"), Petitioner identified the corresponding structure within the ’815 patent specification, typically as a processor or processor circuit programmed to implement specific algorithms illustrated in the patent’s figures.

5. Relief Requested

  • Petitioner requests the institution of an inter partes review and the cancellation of claims 1, 7, 27-28, 34, 54, 72-74, 92-93, and 111 of the ’815 patent as unpatentable.