PTAB

IPR2017-01398

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 ’005 patent describes a Voice over Internet Protocol (VoIP) telephony system that classifies calls as either public or private network calls. A call routing controller uses attributes associated with a calling party to determine if a called party is a subscriber to a private network and generates routing messages accordingly, either to a private network node or a public network gateway.

3. Grounds for Unpatentability

Ground 1: Obviousness over Chu and Scott - Claims 8, 13, 33, 38, 41, 57, 62, 81-82, 86, 90-91 are obvious over Chu in view of Scott.

  • Prior Art Relied Upon: Chu (Patent 7,486,684) and Scott (Patent 6,760,324).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Chu teaches a telecommunications system nearly identical to the ’005 patent, wherein a VoIP subscriber can call another VoIP user on a private network or a customer on the public switched telephone network (PSTN). Chu's system analyzes caller attributes (via a dial plan) and a callee identifier (dialed digits) to determine whether to route the call within the private network or to a PSTN gateway. However, Petitioner contended Chu does not explicitly teach modifying the callee identifier based on specific caller attributes before determining the routing path. Scott was alleged to supply this missing element, teaching a system that reformats dialed digits into a standard E.164 format based on configurable caller parameters like international prefix, national prefix, country code, and area code. Scott explicitly teaches stripping prefixes or prepending country and area codes to standardize the number for processing and route resolution.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Scott's number reformatting with Chu’s VoIP system to improve its functionality and user experience. The combination would allow users of Chu's system to dial numbers as they would from a standard PSTN phone, making the interface more intuitive. Scott provides an express motivation for this combination by teaching that number standardization provides consistency in call processing and route resolution, features that would directly benefit the system disclosed in Chu.
    • Expectation of Success: Petitioner asserted that integrating Scott's number reformatting logic into Chu’s existing infrastructure would be a straightforward programming task. A POSITA would have had a high expectation of success, as the combination involved applying a known technique (number standardization) to improve a known system (VoIP routing), yielding predictable results without undue experimentation.

Ground 2: Obviousness over Chu, Scott, and Hinchey - Claims 12, 37, and 61 are obvious over Chu and Scott in further view of Hinchey.

  • Prior Art Relied Upon: Chu (Patent 7,486,684), Scott (Patent 6,760,324), and Hinchey (Application # 2002/0122547).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds upon the Chu and Scott combination from Ground 1 to address claims requiring specific public network classification criteria. These claims require reformatting a callee identifier by adding a caller's country and area code when the dialed number has a length within a specific range of local number lengths. Petitioner argued that while Scott teaches adding the country and area code, it does so as a default action when international (IDD) and national (NDD) prefix matches fail. Hinchey was introduced to teach a more precise method: affirmatively recognizing that a local call has been dialed based on its specific length (e.g., seven digits) and then triggering the number reformatting. Hinchey’s dial plan schema includes rules for interpreting specific dialing formats, such as a local seven-digit number, to trigger corresponding transformation rules.
    • Motivation to Combine: A POSITA would be motivated to incorporate Hinchey’s teachings to make the number reformatting in the combined Chu/Scott system more robust. Instead of relying on a default rule, Hinchey's method of matching a specific local number length provides an explicit check. This common-sense modification ensures that country and area codes are correctly appended to legitimate local calls and not to misdialed non-local numbers, improving the system's accuracy.
    • Expectation of Success: Petitioner argued this combination would be a simple and predictable modification. Implementing an explicit check for local number length before applying number reformatting is a well-understood concept in telephony that would not require undue experimentation.

4. Key Claim Construction Positions

  • Petitioner argued that claims 50 and 57 contain means-plus-function limitations under 35 U.S.C. §112, ¶ 6 and proposed constructions for the corresponding structures.
    • "means for using..." (Claim 50): Petitioner identified the corresponding structure as the "RC processor circuit 200 programmed to implement the algorithm illustrated in cell 254 of Fig. 8A" of the ’005 patent, which uses a caller identifier to locate a caller dialing profile.
    • "means for ... producing" (Claim 50): The structure for producing private and public network routing messages was identified as "processor 202 of RC processor circuit 200, programmed to implement" the algorithms shown in Figures 8A, 8B, and 8C.
    • "means for accessing" (Claim 57): The structure for accessing a database of direct inward dial records was identified as "routing controller 16, including processor 202 of RC processor circuit 200, and database 18," as programmed to perform the database request shown in Figure 8B.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and cancellation of claims 8, 12-13, 33, 37-38, 41, 57, 61-62, 81-82, 86, and 90-91 of the ’005 patent as unpatentable under 35 U.S.C. §103.