PTAB

IPR2022-01392

Samsung Electronics Co Ltd v. VoIP Palcom Inc

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Call Routing Using a Temporary Local Number
  • Brief Description: The ’721 patent discloses a technique for routing phone calls to avoid long-distance and roaming charges. The system involves a mobile device sending a request with its location and a destination identifier to a server, which responds with a temporary, local number (an "access code") used to route the call over an IP network.

3. Grounds for Unpatentability

Ground I: Obviousness over Buckley - Claims 1-2, 6, 9, 14-16, 20, 25, 34, 38-39, 43, 46, 49-50, 135-136, and 140 are obvious over Buckley.

  • Prior Art Relied Upon: Buckley (Patent 7,668,159).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Buckley teaches all limitations of the challenged claims. Buckley discloses a method for routing circuit-switched (CS) calls over a packet-switched (PS) IP Multimedia Subsystem (IMS) network. In Buckley, a user equipment (UE) sends a Session Initiation Protocol (SIP) Invite message (the "access code request message") containing a destination identifier (callee's URI) and location identifiers to an Application Server (AS). The AS, acting as an access server and gateway, selects a temporary IP Multimedia Routing Number (IMRN) (the "access code") from a pool and sends it back to the UE. The UE then uses this temporary IMRN to initiate a call that terminates on the AS, which then routes the call over the IP network to the original destination, thereby bridging the CS and PS networks.

Ground II: Obviousness over Buckley in view of Bates - Claims 1-2, 6, 9, 14-16, 20, 25, 34, 38-39, 43, 45-46, 49-50, 135-136, and 140 are obvious over Buckley in view of Bates.

  • Prior Art Relied Upon: Buckley (Patent 7,668,159) and Bates (Patent 8,731,163).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Buckley teaches the foundational system of using a temporary number for call routing, while Bates provides the specific motivation and technique for selecting that number based on geographic location to ensure a local call. Bates teaches selecting a "geographically-correct telephone number" from a pool based on the user's current location to route calls, particularly emergency calls, to the appropriate local service point. This directly supplies the rationale for modifying Buckley’s system to ensure the temporary IMRN is selected based on the user's location identifier to optimize routing, which was an explicit goal of the ’721 patent.
    • Motivation to Combine: A POSITA would combine Buckley and Bates because both address improving call routing across mixed CS and PS networks. Bates’s technique of using location to select a geographically-correct number is a known and logical improvement to apply to Buckley’s system, which already uses location information. This combination would predictably optimize routing, enable local calls to avoid roaming charges, and improve emergency call handling, a scenario expressly contemplated by Buckley.
    • Expectation of Success: A POSITA would have a high expectation of success due to the substantial architectural overlap between the references. Both systems involve selecting temporary numbers from a pool in response to a request containing location information, making the integration of Bates's specific selection logic into Buckley's framework straightforward.

Ground III: Obviousness over Buckley in view of Ejzak - Claims 50 and 140 are obvious over Buckley in view of Ejzak.

  • Prior Art Relied Upon: Buckley (Patent 7,668,159) and Ejzak (Patent 6,954,654).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground focused on claims requiring the access code to identify an IP address. Petitioner argued that while Buckley teaches using a telephone number (E.164) as the temporary IMRN, Ejzak teaches using a DNS/ENUM server to map such telephone numbers to corresponding IP addresses to facilitate call routing over an IP network. Combining the references would involve modifying Buckley's AS to incorporate Ejzak’s DNS/ENUM functionality, thereby enabling the system to provide an IP address as the access code, as required by claims 50 and 140.
    • Motivation to Combine: A POSITA would combine these references to enhance Buckley’s system for seamless transitions between CS and PS networks. Using Ejzak’s DNS/ENUM functionality would ensure that calls could be completed to VoIP-only endpoints that lack direct PSTN access, a key goal in mixed-network environments. This modification would represent a known solution to a known problem, improving the reach and operability of Buckley's system.
    • Expectation of Success: Success was reasonably expected because both systems rely on the flexible and extensible SIP messaging protocol. The network architectures are similar, and a POSITA would have readily understood how to integrate Ejzak’s DNS/ENUM server functionality into Buckley’s message flow to resolve a temporary number into an IP address for call completion.
  • Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 50 and 140 based on the combination of Buckley, Bates, and Ejzak, relying on the same core motivations to combine as in Grounds II and III.

4. Key Claim Construction Positions

  • "gateway" (Claims 1, 20, 38): Petitioner argued for the plain and ordinary meaning of "a device that connects networks that use different communication protocols." This construction was asserted to be critical because it allows Buckley’s Application Server (AS) to qualify as a gateway. The AS meets this definition by converting a circuit-switched network call setup into a packet-switched SIP call setup on an IP network, which inherently involves adjusting traffic between different protocols.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial would be inappropriate under both §314(a) (Fintiv factors) and §325(d).
  • Fintiv Factors: Petitioner contended the parallel district court litigation was in its early stages, with trial unlikely to occur before a Final Written Decision (FWD). Petitioner also stipulated that it would not pursue the same invalidity grounds in the district court if the IPR is instituted.
  • Other Factors: Petitioner asserted this is not a "follow-on" petition, and that the prior art references (Buckley, Bates, and Ejzak) were not applied during the ’721 patent's prosecution, weighing against denial under §325(d). The petition was filed as a "copycat" petition with a motion to join an earlier-filed IPR by another party, for which Petitioner argued the General Plastic factors are not relevant.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1, 2, 6, 9, 14-16, 20, 25, 34, 38-39, 43, 45-46, 49-50, 135-136, and 140 as unpatentable.