Google LLC v. VoIP Palcom Inc

1. Case Identification

• Case #: IPR2023-00650
• Patent #: 10,880,721
• Filed: February 28, 2023
• Petitioner(s): Google LLC
• Patent Owner(s): VOIP-PAL.COM, INC.
• Challenged Claims: 51-52, 57, 60, 63, 65, 67, 73, 77, 103-104, 108-110, 124, 130, 133, and 138-139

2. Patent Overview

• Title: Call Routing Over IP Networks
• Brief Description: The ’721 patent describes a method for routing voice calls over an IP network to avoid charges associated with traditional Public Switched Telephone Networks (PSTNs). The system involves a wireless device requesting a temporary "access code" from a server, which is then used to initiate the call over the IP network.

3. Grounds for Unpatentability

Ground 1: Claims 51-52, 57, 60, 63, 65, 67, 73, 77, 103-104, 108-110, 124, 130, 133, and 138-139 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 routing circuit-switched calls over packet-switched IP networks using Session Initiation Protocol (SIP) messaging. A User Equipment (UE) sends a SIP Invite message (the claimed "access code request message") containing a location identifier (e.g., P-Preferred-ID or caller's SIP URI) to an Application Server (AS). In response, the AS provides a temporary IP Multimedia Routing Number (IMRN), which functions as the claimed "access code." The UE then uses this IMRN to set up the call, which terminates at the AS, allowing the AS to complete the call to the original destination over the IP network.
  • Motivation to Combine (for §103 grounds): Not applicable (single reference ground).
  • Expectation of Success (for §103 grounds): Not applicable (single reference ground).

Ground 2: Claims 63, 109, 130, 133, and 138-139 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 builds on Ground 1, arguing that to the extent Buckley does not explicitly teach that an E.164 number (the IMRN) identifies an IP network address, Ejzak supplies this teaching. Ejzak discloses a DNS/ENUM service that interchangeably maps E.164 telephone numbers to corresponding IP addresses to facilitate routing calls between PSTN and VoIP networks. Petitioner contended that combining Ejzak's DNS/ENUM mapping with Buckley's system would render it obvious that an access code could identify an IP network address as a possible communication channel.
  • Motivation to Combine: A POSITA would combine Buckley and Ejzak to improve the call routing capabilities of Buckley's system. Both references address interworking between circuit-switched and packet-switched networks using SIP. A POSITA would be motivated to incorporate Ejzak's well-known DNS/ENUM functionality to enhance Buckley's system, ensuring calls could be completed to VoIP-only endpoints and achieving Buckley's goal of seamless transitions between networks.
  • Expectation of Success: A POSITA would have a high expectation of success because both systems are based on the flexible and extensible SIP protocol. Integrating a standard DNS/ENUM lookup, as taught by Ejzak, into Buckley's SIP-based call flow would be a straightforward and predictable modification.

Ground 3: Claims 51-52, 57, 60, 63, 65, 67, 73, 77, 103-104, 108-110, 124, 130, 133, and 138-139 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: This ground asserted that if Buckley does not explicitly teach selecting the access code based on the caller's geographic location to enable a local call, Bates provides this missing element. Bates teaches a system for routing emergency calls by selecting a temporary, "geographically-correct" telephone number from a pool based on the caller's current location. This ensures the call is routed to the correct local Public Safety Answering Point (PSAP). Petitioner argued it would have been obvious to apply Bates's technique to Buckley's system for selecting the IMRN, thereby ensuring the generated access code enables a local call and avoids roaming or long-distance charges.
  • Motivation to Combine: A POSITA would combine these references to produce better and more predictable routing results. Buckley already teaches transmitting location information in the SIP Invite message, and Bates provides a known technique and clear rationale for using that location data to select a temporary number. A POSITA would be motivated to use Bates's method to improve Buckley's system to optimize routing, enable local calls, and avoid unnecessary charges, which are known benefits in the art.
  • Expectation of Success: Success would be expected, as both references describe selecting temporary numbers to route calls between different network types. Applying Bates's logic for selecting a geographically-correct number to Buckley's process of selecting an IMRN is a simple application of a known technique to a similar system to achieve a predictable result.

• Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground IV) against claims 63, 109, 130, 133, and 138-139 based on the combination of Buckley in view of Bates and in further view of Ejzak, relying on the combined rationales presented in Grounds II and III.

4. Key Claim Construction Positions

• "gateway" (Claims 51, 77, 103, 133): Petitioner argued for the plain and ordinary meaning of a "device that connects networks that use different communication protocols." This construction is central to arguing that Buckley's Application Server (AS) qualifies as a gateway because it connects the circuit-switched and packet-switched (IMS) networks, which use different protocols.
• "means for causing a routing controller to produce an access code" (Claim 77): Petitioner proposed a construction for this means-plus-function term, identifying the function as "causing a routing control to produce an access code" and the corresponding structure as "an input/output port for transmitting the access code request message... to the routing controller and for receiving... the access code reply message."

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §314(a) and §325(d). This petition was filed with a motion for joinder to an existing IPR (IPR2022-01235).
• §314(a) (Fintiv): Petitioner contended that the co-pending district court litigation was stayed, and no trial date had been set, weighing against denial. Petitioner also stipulated it would not pursue in district court any invalidity ground on which IPR is instituted.
• §325(d) (General Plastic): Petitioner argued this case is distinguishable from precedents where follow-on petitions were denied. It asserted that this "me-too" petition raises identical issues as the IPR it seeks to join, minimizing Board resources. Petitioner also noted it was not aware of the specific prior art analysis in the lead petition until after its own prior petitions (on different grounds) were filed, thus minimizing concerns of strategic "roadmapping."

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 51-52, 57, 60, 63, 65, 67, 73, 77, 103-104, 108-110, 124, 130, 133, and 138-139 of the ’721 patent as unpatentable.