PTAB

IPR2017-01399

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 private or public network calls. The system uses attributes associated with a calling party to analyze a called party identifier (e.g., dialed digits) and generate appropriate routing messages for either a private, packet-based network or a public switched telephone network (PSTN).

3. Grounds for Unpatentability

Ground 1: Obviousness over Chu and Scott - Claims 3-4, 8-9, 12, 14-16, 30-31, 35-36, 39, 42-43, 61, 66, 81, 86, 100, and 105 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 taught the core functionality of the ’815 patent: a Voice over Internet Protocol (VoIP) system with a call routing controller (soft-switch) that analyzes dialed digits and caller attributes (a dial plan) to determine whether a call is for a user on the private network or the public PSTN, and routes the call accordingly. However, Petitioner contended that Chu did not explicitly disclose modifying the callee identifier (dialed digits) based on caller attributes before classification. Scott was asserted to supply this teaching. Scott disclosed a system where dialed numbers are reformatted into a standard E.164 format based on caller-specific parameters (e.g., international prefix, national prefix, country code, area code). Scott taught stripping prefixes or prepending codes to standardize the number for routing.
    • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would combine Scott’s number reformatting teachings with Chu’s VoIP routing system to improve usability and routing consistency. Scott explicitly stated that reformatting numbers into a standard format is desirable so that routing information can be shared between servers in different areas without modification. This would allow users to dial numbers in a familiar, local manner while the system handled the necessary backend standardization, a predictable improvement to Chu’s system.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success because implementing Scott's reformatting logic into Chu's software-based system was a matter of straightforward programming that would yield predictable results.

Ground 2: Obviousness over Chu, Scott, and Hinchey - Claims 11, 38, 65, 85, and 104 are obvious over Chu in view of Scott and 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 built upon the combination of Chu and Scott to address claims requiring number reformatting based on local dialing conventions (e.g., number length). Petitioner asserted that while Scott taught prepending a caller's country and area code as a default action when international or national prefixes are not detected, it did not teach affirmatively identifying a local number first. Hinchey was introduced to supply this limitation. Hinchey taught using a dial plan schema to recognize specific dialing formats, such as a seven-digit local number, and trigger corresponding number reformatting rules. This provided an affirmative trigger for local number reformatting rather than a default fallback.
    • Motivation to Combine: Petitioner argued a POSITA would be motivated to incorporate Hinchey's affirmative local number recognition into the Chu/Scott system as a common-sense improvement. Affirmatively matching the length of dialed digits to a local dialing convention before prepending country and area codes would be a more robust approach than Scott’s default method. This would prevent the system from incorrectly formatting a misdialed non-local number as a local one, thus improving the accuracy of the call routing system.
    • Expectation of Success: The modification was presented as a simple and predictable programming adjustment, adding a condition based on number length, which a POSITA could implement with a high expectation of success.

4. Key Claim Construction Positions

  • "Username": Petitioner proposed that "username" should be construed as "any unique identifier associated with a user," based on the specification's description of an exemplary username as a "twelve digit number" that includes a "unique number code."
  • Means-Plus-Function Limitations: The petition addressed numerous means-plus-function terms recited in the claims (e.g., "receiving means," "means for locating," "means for determining," "means for producing"). For each term, Petitioner argued the function should be given its ordinary meaning and proposed that the corresponding structure was the specific processor (e.g., processor 202 of RC processor circuit 200) disclosed in the ’815 patent, programmed to implement the specific algorithms illustrated in figures such as Fig. 8A and 8B.

5. Relief Requested

  • Petitioner requests the institution of an inter partes review and the cancellation of claims 3-4, 8-9, 11-12, 14-16, 30-31, 35-36, 38-39, 42-43, 61, 65-66, 81, 85-86, 100, and 104-105 of Patent 8,542,815 as unpatentable.