Filed on behalf of: Unified Patents Inc. By: P. Andrew Riley

Kai Rajan Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. 901 New York Avenue, NW Washington, DC 20001–4413 Telephone: 202-408-4000 E–mail: VoIP-Pal-815-IPR@finnegan.com

Jonathan Stroud

Unified Patents Inc. 1875 Connecticut Ave. NW, Floor 10 Washington, D.C., 20009

Telephone: 202-805-8931 E–mail: jonathan@unifiedpatents.com

UNITED STATES PATENT AND TRADEMARK OFFICE

____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________

UNIFIED PATENTS INC.,

Petitioner

v.

VOIP-PAL.COM INC., Patent Owner

____________

IPR2016-01082 Patent 8,542,815

Producing Routing Messages for Voice Over IP Communications ____________

PETITION FOR INTER PARTES REVIEW OF U.S. PATENT 8,542,815

ii

TABLE OF CONTENTS

I. INTRODUCTION ................................................................................... 1

II. MANDATORY NOTICES ....................................................................... 4

A. Real Party-in-Interest ....................................................................................... 4

B. Related Matters ................................................................................................. 4

C. Lead and Back-Up Counsel, and Service Information ............................. 4

III. FEE PAYMENT ....................................................................................... 5

IV. STATEMENT OF PRECISE RELIEF REQUESTED .......................... 5

A. Claims for Which Review Is Requested ...................................................... 5

B. Statutory Grounds of Challenge .................................................................... 5

C. The Level of Ordinary Skill in the Art at the Time of the Claimed Invention ............................................................................................ 6

V. THE ’815 PATENT .................................................................................. 6

A. Overview of the Disclosure ............................................................................ 6

B. Prosecution History .......................................................................................... 8

VI. GROUNDS FOR STANDING ................................................................. 9

A. Claim Construction ........................................................................................ 10

“Caller dialing profile” ...................................................................... 10 1.

“Calling attributes” ............................................................................. 11 2.

“Means for receiving” ........................................................................ 12 3.

“Means for locating a caller dialing profile” ................................ 12 4.

“Means for determining a match” ................................................... 13 5.

iii

“Means for classifying the call” ...................................................... 13 6.

“Means for producing a [public/private] network routing 7.message” ............................................................................................... 13

“Means for accessing a database” ................................................... 14 8.

“Means for formatting said callee identifier” ............................... 14 9.

“Means for causing the private network routing message 10.or the public network message to be communicated to a call controller” ..................................................................................... 14

VII. CLAIMS 1, 2, 7, 27, 28, 29, 34, 54, 72, 73, 74, 92, 93 and 111 OF THE ’815 PATENT ARE ANTICIPATED UNDER 35 U.S.C. § 102(e) AND/OR UNPATENTABLE UNDER 35 U.S.C. § 103(a) ..................................................................................................... 15

A. Turner is Prior Art Under 35 U.S.C. § 102(e) .......................................... 15

B. Kaczmarczyk is Prior Art Under 35 U.S.C. § 102(b) .............................. 15

C. Ground 1: Turner anticipates claims 1, 2, 7, 27, 28, 29, 34, 54, 72, 73, 74, 92, 93 and 111 under 35 U.S.C. 102(b) ................................. 15

D. Ground 2: Kaczmarczyk in view of Turner renders claims 1, 2, 7, 27, 28, 29, 34, 54, 72, 73, 74, 92, 93 and 111 obvious under 35 U.S.C. § 103(a) .......................................................................................... 34

VIII. CONCLUSION....................................................................................... 56

iv

TABLE OF AUTHORITIES

Page(s)

Cases

Voip-Pal.com, Inc. v. Verizon Wireless Services, LLC et al., 2-16-cv-00271 (D. Nev.) ..................................................................................... 4

Voip-Pal.com, Inc. v. Apple, Inc., 2-16-cv-00260 (D. Nev.) ..................................................................................... 4

Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) ............................................................ 9

Federal Statutes

35 U.S.C. § 102(b) ................................................................................................. 15

35 U.S.C. § 102(e) .............................................................................................. 5, 15

35 U.S.C. § 103(a) ......................................................................................... 5, 15, 34

35 U.S.C. § 112 ........................................................................................... 12, 13, 14

35 U.S.C. § 311 .......................................................................................................... 5

Regulations

37 C.F.R. § 42.8(b)(1) ................................................................................................ 4

37 C.F.R. § 42.15(a) ................................................................................................... 5

37 C.F.R. § 42.100(b) .............................................................................................. 10

37 C.F.R. § 42.103(a) ................................................................................................. 5

37 C.F.R. § 42.104(a) ................................................................................................. 9

IPR2016-01082Patent 8,542,815

1

I. INTRODUCTION

Petitioner Unified Patents Inc. (“Unified”) requests Inter Partes Review

(“IPR”) of claims 1, 2, 7, 27, 28, 29, 34, 54, 72, 73, 74, 92, 93 and 111 of U.S.

Patent No. 8,542,815 (“the ’815 patent”) assigned to Digifonica (International)

Limited (“Digifonica”) (EX1001).

The ’815 patent has a filing date of March 1, 2010, and is a § 371 national

stage application of PCT no. PCT/CA2007/001956, filed November 1, 2007. This

application claims priority to U.S. provisional application no. 60/856,212, filed

November 2, 2006. The ’815 patent describes a process and apparatus for

facilitating communication between callers and callees in a system that generates

routing messages identifying private network addresses or public network

gateways. EX1001 at Abstract. The ’815 patent alleges that the invention relates to

voice over IP (“VoIP”) communication, id. at 12–13, though the independent

claims are not so limited. EX1002 ¶¶ 23, 24. The ’815 patent suggests that it

uniquely fills gaps in bridging communication between private networks (such as

VoIP networks) and public networks such as Public Switched Telephone Networks

(“PSTN”). The ’815 patent states:

Existing VoIP systems do not allow for high availability and

resiliency in delivering Voice Over IP based Session Initiation

Protocol (SIP) Protocol service over a geographically dispersed area

such as a city, region or continent. Most resiliency originates from the

IPR2016-01082Patent 8,542,815

2

provision of IP based telephone services to one location or a small

number of locations such as a single office or network of branch

offices.

Id. at 1:40–46.

Technologies that enable public and private communication network

connections have long been well-known in the art. The claimed “public network”

includes, for example, a PSTN, which has existed, in evolving forms, for more

than a century—i.e., since the invention of the telephone in 1876.1 The claimed

“private network” includes private phone networks or Internet Protocol networks

that use VoIP communication protocols. These types of networks were invented

more than twenty years ago—at least a decade prior to the ’815 patent priority

date. 2 Moreover, a plethora of systems connecting VoIP private networks and

PSTN public networks have existed since well before the ’815 patent. One good

example, U.S. Patent No. 8,594,298 to Klein et al. (“Klein”, attached as EX1006)

1 EX1007: Livengood, Daniel, et al. “Public Switched Telephone Networks: A

Network Analysis of Emerging Networks. Massachusetts Institute of Technology,

submitted May 16, 2006, pg. 5-6.

2 EX1008: Hallock, Joe, “A Brief History of VoIP: Document One - The Past,”

Evolution and Trends in Digital Media Technologies - COM 538, University of

Washington, November 26, 2004, pg. 7.

IPR2016-01082Patent 8,542,815

3

discloses such a system. Klein, which was filed on February 20, 2004, and

published on September 15, 2005, and discloses connecting PSTN 103 to PBX

104C (Private Branch Exchange) in figures 1 and 14. Thus, these types of networks

and connections existed long before the ’815 patent claims to have invented them,

providing motivation to interconnect individual users through the various methods

of known communication networks. EX1002 ¶ 24.

Other features of the ’815 patent, such as the use of caller profiles and

“attributes” associated with callers, are at least as old as the decades-old VoIP

technology. Indeed, the ’815 patent specification itself concedes that “attributes”

contained in caller profiles consist of standard information such as location codes,

country codes, and international dialing digits. EX1001 at 18:1–54. In other words,

technologies using the claimed types of information were widely known prior to

the application for the ’815 patent and its priority date. EX1002 ¶¶ 25, 26.

Years before the ’815 patent’s effective filing date, a myriad of prior art

patents and printed publications disclosed the claimed combination of elements,

though we are limited to addressing just a few good examples. As this petition

demonstrates, the disclosures of Turner (EX1003) and Kaczmarczyk (EX1004),

among other patents and publications, warrant the cancellation of claims 1, 2, 7,

27, 28, 29, 34, 54, 72, 73, 74, 92, 93 and 111.

IPR2016-01082Patent 8,542,815

4

II. MANDATORY NOTICES

A. Real Party-in-Interest

Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner certifies that Unified is the real

party-in-interest, and further certifies that no other party exercised control or could

exercise control over Unified’s participation in this proceeding, the filing of this

petition, or the conduct of any ensuing trial. In this regard, Unified has submitted

voluntary discovery. See EX1009 (Petitioner’s Voluntary Interrogatory

Responses).

B. Related Matters

Upon information and belief, the ’815 patent has been thus far asserted in

the following cases: Voip-Pal.com, Inc. v. Verizon Wireless Services, LLC &

AT&T Corp., 2-16-cv-00271 (D. Nev. Feb. 9, 2016), and Voip-Pal.com, Inc. v.

Apple, Inc., 2-16-cv-00260 (D. Nev. Feb. 9, 2016). VoIP-PAL.com, Inc., in a

public press release filed on February 11, 2016, announced it seeks to monetize

this and one other patent for over $7 billion in damages. See EX1010.

C. Lead and Back-Up Counsel, and Service Information

The signature block of this petition designates lead counsel, backup counsel,

and service information for each petitioner. Unified designates P. Andrew Riley

(Reg. No. 66,290) as lead counsel and designates Kai Rajan (Reg. No. 70,110) as

backup counsel. Both can be reached at Finnegan, Henderson, Farabow, Garrett &

Dunner, LLP, 901 New York Avenue, NW, Washington, DC 20001-4413 (phone:

IPR2016-01082Patent 8,542,815

6

C. The Level of Ordinary Skill in the Art at the Time of the Claimed Invention

The ’815 patent ultimately claims priority to U.S. Provisional Application

No. 60/856,212, filed November 2, 2006. At that time, a person having ordinary

skill in the art (hereafter, “POSA”) of telecommunication (i.e., in the art for the

’815 patent) would have (i) a B.S. degree in computer engineering, electrical

engineering, computer science, or equivalent field, and (ii) approximately two

years of experience or research on switched circuit telephony and packetized

telephony, such as VoIP. See EX1002 at ¶ 28.

V. THE ’815 PATENT

A. Overview of the Disclosure

The ’815 patent describes a process and apparatus for facilitating

communication between callers and callees by generating routing messages

identifying private network addresses or public network gateways. EX1001 at

Abstract.

The ’815 patent alleges that the invention relates to voice over IP (“VoIP”)

communication (Id. at 12–13), though the independent claims are not so limited.

In the specification, the ’815 patent describes the general process for the

invention as involving (1) receiving a callee identifier [such as a dialed number]

from a calling subscriber, (2) classifying the call as a public network or private

network call using criteria [attributes] associated with the calling subscriber, and

IPR2016-01082Patent 8,542,815

7

(3) producing a routing message identifying either a private network address or a

public network gateway. EX1001 at 14:24–35, EX1002 ¶ 21. The ’815 patent

specification concedes that “attributes” contained in caller profiles include standard

information such as location codes, country codes, and international dialing digits.

EX1001 at 18:1–54, EX1002, ¶ 25.

The ’815 patent describes “dialing profiles” that can contain criteria

associated with the calling subscriber that is used to classify the call. Figure 9 of

the ’815 patent (reproduced below) shows an example of a dialing profile. As

shown, a dialing profile can include information such as a country code or local

area codes associated with a caller, a username, a domain of the caller,

international dialing digits (IDD), and national dialing digits (NDD) associated

with the caller.

Thus, the dialing profile

identifies where the caller is located and

the numbers the caller would need to

dial to make a local, national, or

international call.

Once a call is placed, a routing controller

receives a message such as a Session Initiation

Protocol (SIP) message having information such

IPR2016-01082Patent 8,542,815

8

as the number or ID of the caller, and the dialed number/ID of the callee, as shown

in Fig. 3 of the ’815 patent:

The system looks up information associated with the caller (such as the

caller ID/number in the dialing profile), and proceeds to identify matches between

the caller ID and the callee ID. For example, the phone numbers of the caller and

callee can be compared to determine whether there is a match in area codes or a

portion of the caller and callee usernames. As another example, certain dialed

digits can be recognized as initiating an international call, depending on the IDD

information associated with the caller. EX1001 at 21:8–22:60. The identified

matches are then classified using public/private criterion to determine whether the

call is a public network or private network call. Id. at 22:48–23:3. The system then

generates a routing message for the private or public call, and transmits the routing

message. Id. at 24:18–67, 26:37–45.

B. Prosecution History

The application was filed on April 30, 2009, EX1005 at 880–1,166, but was

granted a § 371 date of March 1, 2010. Id. at 847. The application was filed as a

national stage application of PCT No. PCT/CA2007/001956, with the PCT

claiming the priority of U.S. provisional application No. 60/856,212, filed

November 2, 2006. Id. at 911. Thus, the ’815 patent may have an effective filing

date of November 2, 2006, provided it contains and maintains full support in the

IPR2016-01082Patent 8,542,815

9

provisional application.

The Examiner opened prosecution in March 2013, by rejecting the original

fifty-nine claims under 35 U.S.C. § 102. EX1005 at 154–178. In response, the

applicant amended all of the pending independent claims to incorporate multiple

dependent claims, cancelled the incorporated dependent claims, and added 58 new

claims to the remaining claims. Id. at 95–136. The Examiner conducted a search

confined to specific terminology or specific patent subclasses. Id. at 88 (Ref. Nos.

S1–S13). In July 2013, the Examiner mailed a Notice of Allowance including an

Examiner’s Amendment that narrowed the scope of the independent claims. Id. at

54–81. There, the Examiner declared that the allowable subject matter in the

independent claims consisted of “matching one of calling attributes, retrieved from

a calling party’s profile, with at least a portion of a callee identifier, and based on

the match [identifying] a public or private network for call routing.” Id. at 80.

Notably, the “allowable subject matter” was first added to the independent claims

in the Examiner’s Amendment. Id. at 54–81.

VI. GROUNDS FOR STANDING

Unified certifies that the ’815 patent is available for IPR and it is not barred

or estopped from requesting IPR challenging the ’815 patent on the grounds

identified. See 37 C.F.R. § 42.104(a). Specifically: (1) Unified is not the owner of

the ’815 patent; (2) Unified is not barred or estopped from requesting IPR; and (3)

IPR2016-01082Patent 8,542,815

10

Unified has not been served with a complaint alleging infringement of the ’815

patent.

A. Claim Construction

Claim terms are given their ordinary and customary meaning as understood

by a POSA. Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en

banc). A claim in an unexpired patent subject to inter partes review receives the

“broadest reasonable construction in light of the specification of the patent in

which it appears.” 37 C.F.R. § 42.100(b). The majority of the claims are common

terms that deserve their ordinary and customary meaning. Unified suggests the

following terms from the claims of the ’815 patent require construction.3

“Caller dialing profile” 1.

Independent claims 1, 27, 28, 54, 73, 74, and 93 all specify that a “caller

dialing profile” is accessed or located, and the caller dialing profile comprises “a

plurality of calling attributes associated with the caller.” EX1001 at 36:20-22,

38:33-35, 60-62, 41:28-29, 43:20-22, 27-31, and 45:31-32. The specification

discusses the “caller dialing profile” or “dialing profile” with multiple examples.

3 The broadest reasonable interpretation should be applied to any claim terms not

addressed below, though Unified believes a claim construction under either a

Phillips standard or an interpretation under the broadest reasonable construction

are consistent.

IPR2016-01082Patent 8,542,815

11

For example, with respect to Fig. 9, the ’815 patent discusses a “data structure for a

dialing profile” which can include a “user name field,” a “domain field” and

“calling attributes.” EX1001 at 17:59-18:4, Fig. 9. The specification further states

that “dialing profiles represent calling attributes of respective subscribers.” Id. at

18:3-4.

Taking into account the examples of information included in the “caller

dialing profile” in the specification, and the inventor’s characterizations in the

specification, the term “caller dialing profile” should be construed to mean

“information associated with a caller.” This construction is consistent with the

breadth of the various examples of data that is associated with the caller in the ’815

patent.

“Calling attributes” 2.

Independent claims 1, 27, 28, 54, 73, 74, and 93 all specify that a caller

dialing profile comprises “a plurality of calling attributes associated with the

caller.” EX1001 at 36:21-22, 38:34-35, 62, 41:29, 43:20-22, 28-29, 45:32. The

specification does not define the term “calling attributes,” and merely provides

examples such as “national dialing digits (NDD) . . . an international dialing digits

(IDD) . . . a country code . . . a local area codes . . . a caller minimum local

length . . . a caller maximum local length . . . a reseller . . . a maximum number of

IPR2016-01082Patent 8,542,815

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concurrent calls . . . and a current number of concurrent calls.” EX1001 at 17:62–

67, FIGS. 9, 10.

Considering the specification’s examples of information related to called

numbers or call statistics, coupled with the lack of any explicit definition of the

term in the specification, the term “calling attributes” can reasonably be construed

to mean “information associated with a user, calls placed by the user, or calls

directed toward the user.”

“Means for receiving” 3.

“Means for receiving” is a means-plus-function term in claim 28 (EX1001 at

38:57) that invokes 35 U.S.C. § 112, 6th paragraph. Broadly and reasonably, the

specification may provide the following structure to provide the claimed

“receiving” function: a call controller circuit 100 that receives messages (such as

an SIP message) via an input 108. See EX1001 at 15:63–64; 16:2–8.

“Means for locating a caller dialing profile” 4.

“Means for locating a caller dialing profile” is a means-plus-function term in

claim 28 (EX1001 at 38:60) that invokes 35 U.S.C. § 112, 6th paragraph. Broadly

and reasonably, the specification may provide the following structure to provide

the claimed “locating a caller dialing profile” function: RC processor circuit (200).

See EX1001 at 17:46–56, Fig. 7.

IPR2016-01082Patent 8,542,815

13

“Means for determining a match” 5.

“Means for determining a match” is a means-plus-function term in claim 28

(EX1001 at 38:63) that invokes 35 U.S.C. §112, 6th paragraph. Broadly and

reasonably, the specification provides the following structure to provide the

claimed “determining a match” function: Processor 202 of RC processor circuit

200. See EX1001 at 19:50–55, FIGS. 5B, 7.

“Means for classifying the call” 6.

“Means for classifying the call” is a means-plus-function term in clam 28

(EX1001 at 38:66, 39:1) that invokes 35 U.S.C. §112, 6th paragraph. Broadly and

reasonably, the specification may provide the following structure to provide the

claimed “classifying the call” function: Processor 202 of RC processor circuit 200.

See EX1001 at 22:51–55, FIG. 7.

“Means for producing a [public/private] network routing 7.message”

“Means for producing a [public/private] network routing message” is a

means-plus-function term in claims 28 and 93 (EX1001 at 39:4, 8, 45:36, 44) that

invokes 35 U.S.C. § 112, 6th paragraph. Broadly and reasonably, the specification

may provide the following structure to provide the claimed “producing a

[public/private] network routing message” function: Processor 202 of the RC

processing circuit 200. See EX1001 at 17:40–43, 20:39–40.

IPR2016-01082Patent 8,542,815

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“Means for accessing a database” 8.

“Means for accessing a database” is a means-plus-function term in claim 93

(EX1001 at 45:30) that invokes 35 U.S.C. § 112, 6th paragraph. Under the

broadest reasonable construction standard, the specification provides the following

structure to provide the claimed “accessing a database” function: RC processing

circuit 200. See EX1001 at 17:46–56.

“Means for formatting said callee identifier” 9.

“Means for formatting said callee identifier” is a means-plus-function term

in claim 34 (EX1001 at 39:40) that invokes 35 U.S.C. § 112, 6th paragraph.

Broadly and reasonably, the specification may provide the following structure to

provide the claimed “accessing a database” function: Processor 202 of the RC

processing circuit 200. See EX1001 at 19:55–60.

“Means for causing the private network routing message or the 10.public network message to be communicated to a call controller”

“Means for causing the private network routing message or the public

network message to be communicated to a call controller” is a means-plus-function

term in claim 111 (EX1001 at 47:22-25) that invokes 35 U.S.C. § 112, 6th

paragraph. Broadly and reasonably, the specification provides the following

structure to provide the claimed “causing the . . . message to be communicated”

IPR2016-01082Patent 8,542,815

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function: Processor 202 of the RC processing circuit 200. See EX1001 at 24:65–

67.

VII. CLAIMS 1, 2, 7, 27, 28, 29, 34, 54, 72, 73, 74, 92, 93 and 111 OF THE ’815 PATENT ARE ANTICIPATED UNDER 35 U.S.C. § 102(e) AND/OR UNPATENTABLE UNDER 35 U.S.C. § 103(a)

A. Turner is Prior Art Under 35 U.S.C. § 102(e)

U.S. Patent No. 7,218,722 B1 (EX1003, “Turner”), was filed on December

18, 2000, and is prior art under at least 35 U.S.C. § 102(e) based on at least its

filing date. Turner predates the earliest priority date claimed in the ’815 patent

(November 2, 2006) by more than six years.

B. Kaczmarczyk is Prior Art Under 35 U.S.C. § 102(b)

U.S. Patent No. 6,961,334 B1 (EX1004, “Kaczmarczyk”), filed on March 29,

2001, was patented on November 1, 2005. Kaczmarczyk is prior art under 35

U.S.C. § 102(b) because it was patented/published more than a year before the

earliest priority date claimed in the ’815 patent (November 2, 2006).

C. Ground 1: Turner anticipates claims 1, 2, 7, 27, 28, 29, 34, 54, 72, 73, 74, 92, 93 and 111 under 35 U.S.C. 102(b)

Turner discloses a computerized method and system for routing calls

between parties at different locations. EX1003, Abstract. Calling and called parties

can be located on private networks such as Internet Protocol networks connected to

a gateway, or on public networks such as a PSTN. EX1003, FIG. 1, EX1002 ¶ 36.

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17

profile data. Id. at FIG. 3, EX1002 ¶ 38.

The user profile and linked network address object (data structure) include

information associated with the caller such as a customer address (CA) and

network address (NA). EX1003 at 7:29–61. The network address and customer

address include information such as a telephone number or number indicative of a

location of the caller. Id. at 9:13–36, 10:25–53. For example, the CA and NA are

indicative of a network in which the caller is located, a gateway associated with the

caller, and/or a location of the caller. Id. The NA can be updated to reflect a current

location if the caller roams to a new location. Id. at 22:2–8. Thus, the data stored

and accessed by the Directory Server for a caller includes data associated with the

caller (caller attributes) such as addresses and preferences. EX1002 ¶ 39.

After retrieving the caller’s profile, the call agent determines whether the

called party is within the same gateway as the caller. EX1003 at 9:24–36. Turner’s

example discusses translating a called CA number to a NA, such as by translating

“2002” to “313-555-2002.” Id. The translated NA is then compared to the caller

number (313-555-2001), and the call agent determines that the matching numbers

(“333-555”) indicate that the caller and callee are within the same gateway. Id.

Another example from Turner discusses that a caller may dial a number

(3001), and that the call agent may assign the NA identifying the caller as “313-

555-2002.” EX1003 at 10:25–48. The call agent then queries the Directory Server,

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18

which retrieves a user profile for the caller and translates the dialed number (3001)

to a NA for the callee—in this example it is “709-555.” Id. Based on the NA, the

call agent recognizes the network locations of the caller and callee and recognizes

that the called party is within the private network but is located on a different

gateway. Id. Thus, the call agent determines matches between the numbers in the

callee and caller information, as well as locations of the numbers based on stored

information associated with the caller and callee numbers (e.g., attributes).

EX1002 ¶ 41.

Based on the analysis of the NA and/or CA of the caller and the callee, as

well as stored information associated with the NA and CA, the call agent of Turner

determines whether the callee is within the same gateway as the caller and can be

processed internally, such as a private network call. EX1002 ¶ 42. The call agent

also determines whether the call is directed toward a

callee on another gateway, such as a public network

call. EX1003 at 9:30–36, FIG. 4A (portion reproduced

to the right). Therefore, the call agent classifies the call as a private network call or

a public network call. EX1002 ¶ 42.

In addition to the analysis of the CA and NA, the Directory Server analyzes

the called address to identify codes or digits that are associated with the caller as

being numbers for “private trunk network access” or “escape to the PSTN.”

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address attribute table, and route plan table. Id. at 7:47–59, FIG. 2B (reproduced

below).

Using the accessed tables, the call control engine determines a call type and an

appropriate route for the call. The call control engine locates the calling address in

a calling address attribute table, and then “screens” the called address by

comparing and analyzing the called address number to components from the

calling address attribute table. Id. at 9:15–67, FIG. 4B (reproduced below),

EX1002 ¶ 49.

To screen the called address number, the

call control engine determines a call type based

on comparing the called address to a “called

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36

digits analysis table,” and attributes in the attributes tables. EX1004 at 9:41–53,

FIG. 4B (right), 5A (portion reproduced below), EX1002 ¶ 50.

Based on the determined call type and analysis of attributes, the call control

engine determines services available to the caller, and selects an appropriate route,

such as routing a call from an IP network caller to a PSTN callee. EX1004 at 7:28–

41, 9:53–67. Based on the selected route, the call routing and signaling system

generates and sends instructions for routing the call through a media gateway to the

PSTN. Id. at 6:62–7:10, 7:22–27, 8:42–48, 10:58–66, FIG. 4A (below), EX1002

¶ 51.

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In particular, Turner discloses a call agent that receives a called address

from an IP gateway associated with a caller, after the caller dials a number of a

callee. Id. at 9:13-22. Similar to Kaczmarczyk, Turner discloses

reformatting/translating the addresses of the caller, and then accessing a profile

having information about the caller. Id. at 9:22–30, 22:9–15, FIG. 6, elements 602–

606, FIG. 3, EX1002 ¶ 54.

After retrieving the caller’s profile, the call

agent of Turner determines whether the called party is

within the same gateway as the caller. EX1003 at

9:24–36. That is, based on the analysis of the NA and/or CA of the caller and the

callee, as well as stored information associated with the NA and CA, the call agent

of Turner determines whether the callee is within the same gateway as the caller

and can be processed internally, such as a private network call. The call agent also

determines whether the call is directed toward a callee on another gateway, such as

a public network call. EX1003 at 9:30–36, FIG. 4A (portion reproduced to the

right). Therefore, the call agent classifies the call as a private network call or a

public network call. EX1002 ¶ 55.

If the call can be processed internally and thus is classified as a private

network call in the Turner system, the call agent sends setup instructions to the

gateway, EX1004 at FIG. 4B step 186, by composing a local IP address where the

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Respectfully submitted,

Dated: May 24, 2016 By: /P. Andrew Riley/ P. Andrew Riley Reg. No. 66,290 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP 901 New York Avenue, NW Washington, DC 20001-4413 Telephone: 202-408-4266 Facsimile: 202-408-4400 E-mail: VoIP-Pal-815-IPR@finnegan.com Kai Rajan, Backup Counsel Reg. No. 70,110 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP 901 New York Avenue, NW Washington, DC 20001-4413 Telephone: 202-408-4307 Facsimile: 202-408-4400 E-mail: VoIP-Pal-815-IPR@finnegan.com Jonathan Stroud, Backup Counsel Reg. No. 72,518 Unified Patents Inc. 1875 Connecticut Ave. NW, Floor 10 Telephone: 202-805-8931 Facsimile: 650-887-0349 E-mail: jonathan@unifiedpatents.com

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CERTIFICATION UNDER 37 CFR § 42.24(d) Under the provisions of 37 CFR § 42.24(d), the undersigned hereby certifies

that the word count for the foregoing Petition for Inter Partes Review totals 13,939

words, which is less than the 14,000 words allowed under 42.24(a)(i).

Dated: May 24, 2016 By: /P. Andrew Riley/ P. Andrew Riley Reg. No. 66,290 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP 901 New York Avenue, NW Washington, DC 20001-4413 Telephone: 202-408-4266 Facsimile: 202-408-4400 E-mail: VoIP-Pal-815-IPR@finnegan.com

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59

CERTIFICATE OF SERVICE The undersigned certifies that the foregoing Petition for Inter Partes Review

and the associated Exhibits 1001 through 1010 were served on May 24, 2016, by

Overnight Express Mail at the following address of record for the subject patent.

Knobbe Martens Olson & Bear LLP 2040 Main Street, Fourteenth Floor Irvine, CA 92614 Kurt R. Bonds Adam R Knecht Alverson Taylor Mortensen & Sander 7401 W. Charleston Blvd. Las Vegas, NV 89117 Telephone: 702-384-7000 Facsimile: 702-385-7000 Email: efile@alversontaylor.com LEAD ATTORNEY ATTORNEY TO BE NOTICED

Dated: May 24, 2016 By: /Lauren K. Young/ Lauren K. Young Legal Assistant FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P.