Voip-Pal.com, Inc. v. Apple, Inc.

Filing 1

COMPLAINT against Voip-Pal.com, Inc. (Filing fee $400 receipt number 0978-3994067), filed by Voip-Pal.com, Inc.. Certificate of Interested Parties due by 2/19/2016. Proof of service due by 6/8/2016. (Attachments: # 1 Index, # 2 Exhibit A, # 3 Exhibit B, # 4 Exhibit C, # 5 Exhibit D, # 6 Exhibit D-(Chart 1), # 7 Exhibit D-(Chart 2), # 8 Exhibit D-(Chart 3), # 9 Exhibit D-(Chart 4), # 10 Exhibit E, # 11 Exhibit F, # 12 Exhibit F-Addendum 1, # 13 Civil Cover Sheet, # 14 Summons) (Bonds, Kurt)

Exhibit C

1.

Apple Inc. / Denise Kerstein Phone & E-mail Correspondence May-July 2014

• Early May 2014: Voip-Pal’s Tom Sawyer contacts Denise Kerstein, Head of Patent
Acquisitions for Apple via telephone and introduces Voip-Pal to Apple
• May 27, 2014: Apple’s Denise Kerstein email to Tom Sawyer
Subject: Voip-Pal/Digifonica
From: Denise Kerstein <[e-mail]>
Date: Tue, 27 May 2014 10:54:46 -0700
Cc: Offerings <[e-mail]>
To: "Thomas E. Sawyer" <[e-mail]>
X-Mailer: Apple Mail (2.1874) X-Brightmail-Tracker:
Hello Tom,
Thank you for all the follow up. We have concluded our review of the portfolio and are passing.
I appreciate your bringing the opportunity to Apple.
Regards
Denise


June 25, 2014: Tom Sawyer contacts Denise Kerstein regarding Apple’s announcement
about VoIP/Data Applications

On Jun 25, 2014, at 10:36 AM, Thomas E. Sawyer <[e-mail]> wrote:
Denise,
Again, thank you and your associates at Apple for the technical evaluation of the VoipPal.com patented technology portfolio. Based on recent public announcements, it appears that
Apple is developing a VoIP service application to add to its latest I-phone. We are confident
that Voip-Pal.com technology would greatly enhance such a launch, and would be most willing to
negotiate a licensing agreement with Apple that provides the protection of our patents. Best
wishes for Apple's continued success.
Thomas E. Sawyer, Ph.D


July 2, 2014: Denise Kerstein referred Voip-Pal’s portfolio to Apple’s Legal Counsel-IP
Transactions, Jeffrey Lasker,

At 06:01 PM 7/2/2014, Denise Kerstein wrote:
Hi Tom,
I have asked a colleague to have a look at your portfolio. Jeff Lasker (on cc) will be your
point person going forward.
Thank you,
Denise

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Apple Inc. / Jeffrey Lasker Phone Correspondence July 8 & 14 2014

2.



July 8, 2014: Tom Sawyer confirms having initial contact from Jeffrey Lasker

Thomas E. Sawyer <[e-mail]>

7/9/14

to colinp.tucker, edwincandy, dtchang101, Emil, me
Gentlemen, I was contacted again today by Jeffrey Lasker, Legal Counsel, for Apple. Ed Candy
had revised the Amazon one-page presentation to the attached one-pager for Apple. I anticipate a
follow up from him next week. Our six patents are being reviewed by their engineering again..
Thanks.
Thomas E. Sawyer, Ph.D.


July 14, 2014, Tom Sawyer comments after a positive call with Jeffrey Lasker

Thomas E. Sawyer <[e-mail]>

7/14/14

to me
I think it was quite positive. They are suggesting licensing the technology, but we still need to
have the engineers put together a chart of how they might be infringing our patents. The
conference call with RPX went reasonably well also. They also need the same type of chart, but
covering all VoIP users, thus it would be generic in nature. Konstantin and Ed are on it already.
Thomas E. Sawyer, Ph.D.

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3.

Apple Inc. / Jeffrey Lasker E-Mail July 17 2014 w Attachment 3A

From: "Thomas E. Sawyer" <[e-mail]>
Date: Thu, 17 Jul 2014 12:19:22 -0600
To: Emil Malak <[e-mail]>, <[e-mail]>, Edwin Candy
<[e-mail]>, <[e-mail]>
Cc: Ryan Thomas <[e-mail]>
Subject: Voip-Pal
Tom,
Please see the attached correspondence.
Best regards,
Jeff
Jeffrey V. Lasker
Legal Counsel, IP Transactions
 Apple Inc.
408-862-1377

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3A.

Attachment to E-mail dated July 17 2014

July 17, 2014

Via Email

Thomas E. Sawyer, Ph.D.
Chairman and CEO
Voip-Pal.com, Inc.
P.O. Box 900788
Sandy, Utah 84090
Email: [e-mail]
Dear Tom,
Thank you for taking the time to speak with me earlier this week. I am also in receipt of
your email to me dated July 14, 2014 in which you attached a business plan and indicated that you are preparing “a chart that depicts the potential of Apple infringing [VoipPal’s] patents if Apple were to enter into VoIP offerings.”
Apple respects the valid intellectual property rights of third parties, and we will investigate detailed allegations of infringement. As I explained during our discussion, we have
reviewed the patents and do not believe they cover any products or services offered by
Apple. Thus, we do not believe that any current Apple product requires a license. If you
disagree, please provide detailed claim charts explaining the basis for your assertion.
If you are asking Apple to consider your company’s ideas or to collaborate in some other
way, we cannot do so. Apple has a stated policy of not accepting, reviewing, or considering outside submissions of product ideas for any purpose. We have adopted this policy
due in part to the large volume of mail received and also to avoid potential misunderstandings or disputes when Apple’s products or marketing strategies might seem similar
to ideas submitted to Apple. The policy can be viewed at
http://www.apple.com/legal/policies/ideas.html.
If we have misconstrued your correspondence, please contact us with greater specificity,
including providing claim charts detailing any assertions if any. Please direct all future
correspondence to me.
Regards,

Jeffrey V. Lasker
Legal Counsel, IP Transactions
Apple Inc.
Jeffrey V. Lasker
1 Infinite Loop, MS 169-3IPL
Cupertino, CA 95014
[phone]
jlasker @apple.com

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4. E-Mail to Apple dated September 15 2014 w Attachments 4A, 4B & 4C

Thomas E. Sawyer [e-mail]

9/15/14

to jlasker
Jeffrey,
Attached are the Apple/Voip-Pal IP Assessment and Prior Art search documents for Apple's
information and action. We look forward to Apple's response in the near future. Thanks.
Dr. Thomas E. Sawyer

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4A.

Attachment to E-Mail dated September 15 2014 – Cover Letter

Voip-Pal.com, Inc.
10900 NE 4th Street, Suite 2300
Bellevue, WA, 98004
Corporate Website: http://www.voip-pal.com
Trading Symbol: VPLM

September 15, 2014
Jeffrey V. Lasker
Legal Counsel, IP Transactions
Apple, Inc.
1 Infinite Loop, MS 169-31PL
Cupertino, CA 95014

Dear Jeffrey,
Enclosed are claims that briefly explain the basis of Voip-Pal’s belief and assertion that Apple products
and services currently are, and potentially will be, utilizing technologies contained in the Voip-Pal
patents.
Thank you for your statement that “Apple respects the valid intellectual property rights of third parties,”
and will investigate detailed allegations of infringement. Should you require further information or wish
to discuss the patented technologies with the engineers, please feel free to contact me.
Voip-Pal believes that Apple would greatly benefit from either the purchase of its patented technologies
or acquisition of a nonexclusive license.
Regards,

Dr. Thomas E. Sawyer
Chairman and CEO
[phone]
[e-mail]

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4B.

Attachment to E-Mail dated September 15 2014 – Apple/Voip-Pal IP Assessment

APPLE/VOIP-PAL IP ASSESSMENT

COMPARISON OF APPLE AND VOIP-PAL PATENTED TECHNOLOGIES Page 1

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COMPARISON OF APPLE AND VOIP-PAL PATENTED TECHNOLOGIES
INTRODUCTION
The initial purpose of this document is to provide notice to Apple that its products iMessage
and Text Messaging, appear to employ technology that may be covered by patents held by
Voip-Pal.com, Inc. Voip-Pal has carefully reviewed and, in this notice, documents this apparent
past and present use. In addition, the launch of iPhone 6 (and older versions with the iOS 8
software upgrade 1), and their use of WiFi calling, as well as the hand-off of WiFi calls to a
cellular network,2 will also likely be utilizing Voip-Pal patented technologies.
Voip-Pal believes that there could be significant benefits and opportunities that Voip-Pal’s suite
of patents might add to Apple’s present portfolio. To that end, this document describes the
kind of advantages that a license or purchase of Voip-Pal’s patented technologies might
provide.
The contents of this paper include Comparisons between technology areas, Benefits to Apple,
Providers Using Voip-Pal Technologies, and Summary, as well as three Appendices (Voip-Pal’s
Six Patents disclose the technology for voice and video calls, text and multimedia messaging both for Internet multi-node and Internet-to-Legacy communications; Deployment
Opportunities For Apple; and Benefits To Voice Over LTE (VoLTE)).
COMPARISON
Here are the main technology areas that seem to be used by both parties:
iMessage
When a message is sent from iPhone to iPhone, Apple infrastructure sees that both devices
have Apple IDs, and routes messages through the Internet. When it sees a message from an
iPhone to a phone number without an associated Apple ID, it routes the message through the
Public Switched Telephone Network (“PSTN”), rather than the Internet. This decision-making
1

http://www.cnet.com/news/t-mobile-makes-big-wi-fi-push-on-heels-of-iphone-6s-wi-fi-calling/

2

“With the iPhone 6, Schiller said Apple will allow customers for the first time to hand-off calls from a WiFi
network to a cellular network, when you are walking from inside your house to outdoors, for example.”
http://www.geekwire.com/2014/apple-partners-t-mobile-u-s-advanced-wifi-calling/
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and routing, based on subscribed membership, is exactly the type of routing that is described in
the RBR patent.3
Text Messaging
The iPhone handles text (Short Message Service or SMS) messages with the same user
interface, using a color code to distinguish the two. Text and iMessage are highly integrated
with each other and use processes similar to RBR to decide how to route the message.
WiFi Calling on iPhone6
All mobile carriers that enable the WiFi calling feature of iPhone6, are routing calls via Internet
or PSTN, similar to the RBR patent. iPhone functionality to hand-off voice calls from 3G/4G to
WiFi networks without calls disconnecting, is similar to the Uninterrupted patent.
FaceTime (Video)
As per the VirnetX court case, all FaceTime calls no longer go directly peer-to-peer, but via relay
servers. Currently, FaceTime does not run video to PSTN handsets, although it is possible to
send and receive video through 3G phones. Once Apple decides to send calls to those phones,
the RBR patent will be in use.
FaceTime Audio
FaceTime Audio was recently introduced, which permits routing calls between PSTN and IP
networks, in addition to pure Internet-to-Internet calls. Once Apple decides to send calls to
PSTN, the RBR patent will be in use.

The following table summarizes comparisons of the Voip-Pal applicable patented
technologies and existing Apple FaceTime, FaceTime Audio, and iMessage services:

3

From the RBR patent Abstract: “In response to initiation of a call by a calling subscriber, a caller identifier and a
callee identifier are received. Call classification criteria associated with the caller identifier are used to classify the
call as a public network call or a private network call. A routing message identifying an address, on the private
network, associated with the callee is produced when the call is classified as a private network call and a routing
message identifying a gateway to the public network is produced when the call is classified as a public network
call.”

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Technical
feature
Sending messages
between iPhones

Applicable
Patent
US
8542815

FaceTime

FaceTime
Audio

iMessage

Sending messages to
non-iPhone

US
8542815

Public/private call
routing decision

US
8542815

Internet to PSTN
traffic via relays

US
8542815

Internet to PSTN
traffic via relays

US
8542815

Will be used
for directing
calls to PSTN

VoLTE in iPhone6

US
8542815

Will be used

Lawful Intercept

US
8422507

Maybe used?

Maybe used?

Maybe
used?

Enhanced 911

US
8537805

Will be used

Will be used

Will be
used

Mobile Gateway

US
8630234

Not used

Not used, but
will be
beneficial to
use when

Not used,
but will
be
beneficial

In use,
following
VirnetX
patent
litigation
case
In use, for
sending
messages
to PSTN
In use

Will be used for
directing calls to
PSTN videenabled phones

Future Telco
integration
Vital
functionality

Vital
functionality
Vital for
routing
messages in
Internet and to
PSTN
Critical
functionality
for video call
routing
Internet to
PSTN
Critical
functionality
for audio call
routing
Internet to
PSTN
Core VoLTE
functionality is
RBR
Important for
applicationlevel intercept
(opposed to
network
tapping)
Can be used as
additional or
primary source
of emergency
communication
Valuable
feature for
consumers and
service

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roaming
Uninterrupted

US
8675566

Not used, but will
be beneficial to
use on the move

Not used, but
will be
beneficial to
use on the
move

to use
when
roaming
Not used

providers
In use with
WiFi calling, to
hand off voice
calls from
3G/4G to WiFi
networks
without calls
disconnecting

BENEFITS TO APPLE
Voip-Pal’s 6-patent portfolio resolves major challenges in the current interconnected VoIP and
PSTN world: how to route a communication in private (Internet) and public (Legacy PSTN)
domains and between them, and how to rate the call and charge for it. Communication
includes audio, video, text, and multimedia messages. The foundation patent (Rating, Billing,
and Routing, referenced as “RBR”) is described along with the additional five Voip-Pal patents in
Appendix A. Deployment opportunities are covered in Appendix B. Ownership of such patents
could greatly increase Apple’s value.
Voip-Pal owns the patented technologies needed to deploy comprehensive international VoIP
systems, which in addition to providing a traditional closed user group are able to fully
interoperate with the international telecommunications network.
The patent portfolio ensures that the resulting service for a subscriber is indistinguishable from
that offered by a Telco operator, and can benefit from extensive revenues via calls,
subscriptions, premium services, and number allocation. In addition, by supporting
interconnect and standard call description records, very significant revenues result from call
termination and interconnect revenues from fixed and mobile operators.
Large cell phone (iPhone) vendors, when teaming with data providers and backed by Voip-Pal
patented technologies, would generate additional revenue for Apple by providing attractive
voice/data packages to customers.
Furthermore, Android’s operating system, either natively or via Google Play applications is, or
will be, using telephony features similar to Voip-Pal’s patented technologies. The Voip-Pal
patents would give Apple’s iOS a competitive advantage over the Android system.

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PROVIDERS USING VOIP-PAL TECHNOLOGIES
Cell phone Operators:
Verizon Wireless, T-Mobile, AT&T, Cricket Wireless, Sprint, MetroPCS, Boost Mobile, U.S.
Cellular, Virgin Mobile, Ting, Liberty Wireless, China Mobile, Vodafone Group, Telefonica
Group, China Unicom, Orange Group, China Telecom, Deutsche Telecom, etc.
Internet Providers:
Comcast, Time Warner Cable, Verizon, Cox, AT&T, Charter, Frontier, Suddenlink,
CenturyLink, Cable One, DirecTV, Windstream, EarthLink, etc.
Hardware Vendors:
Samsung, Blackberry, all Android phones, Avaya, CISCO, Nortel, Siemens, Mitel, Polycom,
Alcatel, Grandstream, NetGear, Zyxel, D-Link, Belkin, MagicJack, BasicTalk, etc.
Social Network Providers:
Viber, Twitter, etc.

SUMMARY
As discussed, there are fundamental similarities in Apple’s iMessage and Text Messaging with
Voip-Pal’s patented technologies. In addition, the core functions of VoLTE technology, to be
used in iPhone6 with Verizon, are very similar to the Voip-Pal RBR patent, as well as the
similarity of the Uninterrupted patent to the anticipated seamless hand-off of WiFi calls to a
cellular network.
With WiFi calling and the future expansion of FaceTime and FaceTime Audio, the Voip-Pal
patents could greatly increase Apple’s value by expanding their functionality for customers.
Should Apple own the Voip-Pal technologies, it could leverage the patents with their data
providers to obtain better prices, various associated telecommunications companies could be
indemnified from using the patented technologies, and licensing fees can be charged to all
other operators, enabling Apple to recoup the cost of acquiring the patents.

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Appendix A: VOIP-PAL’S SIX PATENTS
Voip-Pal’s six patents disclose the technology for voice and video calls, text and multimedia
messaging - both for Internet multi-node and Internet-to-Legacy communications.
1. Rating, Billing, and Routing engine (“RBR”- producing routing messages for VoIP
communications): US patent 8,542,815 is the foundation of any modern commercial
VoIP system. It discloses the major challenge in current interconnected VoIP and PSTN
networks – how to route a communication in private and public domains and between
them, as well as how to rate it and charge for it. This base RBR patent has three
independent claims 1, 27, 28 which disclose method and apparatus… “...for facilitating
communication…” which definitely includes voice calls, text and data messaging, audio
and video, and online purchasing. Priority date of this patent is in 2006, at which time
legacy IP Centrex solutions dominated the market by Nortel CICM (Centrex IP Client
Manager) and CISCO H323 protocols. Those legacy solutions proved to be non-scalable
and not efficient for the modern world. Technology turned to SIP (Session Initiation
Protocol), with its advanced voice and data call routing architecture. Multiple
examinations of this patent by PCT, US examiners, and competitors have not discovered
any prior art before 2006 on the market.
RBR claim 1 clearly defines the following 2 points:
Internet-to-Internet call:
“when the call is classified as a private network call, producing a private network
routing message for receipt by a call controller, said private network routing
message identifying an address, on the private network, associated with the callee”;
Internet-to-PSTN call:
“when the call is classified as a public network call, producing a public network
routing message for receipt by the call controller, said public network routing
message identifying a gateway to the public network.”
RBR claim 28 discloses:
“A call routing apparatus for facilitating communications between callers and
callees,” – which can be not only a server, but a mobile phone, performing RBR
functions.
Android can have built-in RBR service, or RBR applications downloaded from Google
Play and installed on Android. Whoever owns these patents, controls Android
telephony functions.

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2. Allocating Charges for Communications Services (“Billing”): US patent 8,774,378 was
applied for in September 2013 as part of a continuation to the RBR patent. This
technology strengthens the RBR patent and enhances the billing aspect of the RBR and
its implementation. This technology will play a vital role as VoIP communication replaces
legacy telephony and new fees and tariffs are assessed. System vendors, network
providers, and mobile carriers are able to utilize this routing and metering technology to
make VoIP more manageable and reliable.
3. Advance Interoperability Solutions (“Uninterrupted” - uninterrupted transmission of
Internet protocol transmissions during end point changes): US patent 8,675,566. The
patent allows the transfer of in-session digital sessions between disparate wireless
technologies enabling subscribers to roam seamlessly between different WiFi, WiMax,
3G, and 4G cell technologies without losing a call. The patent technology demonstrates
the future of Internet voice communication – calls should not be dropped when roaming
from one transport provider to another.
4. Mobile Gateway: US patent 8,630,234. This patent allows a single subscriber device to
connect automatically to WiFi, WiMax, and other wireless data connections. This
technology can be applied to any modern cell phone allowing Internet calls to be
transparent to users. Cell phones may be operated in roaming territory without
incurring roaming charges. Mobile Gateway claims disclose the cell phone application:
- intercepts user attempt to make a call in roaming territory;
- requests and receives temporary local number from the local gateway, preferably
over non-voice network;
- allows cell phone to make the call to that number over cellular network; and
- call is received on the local gateway and forwarded to the final destination over the
Internet.
The advantage of this roaming system is two-fold:
1. On the subscriber side, it avoids roaming charges, because cellular call is local.
Also, this call is completely transparent to subscriber. The caller doesn’t know
that the cell phone was making a call to some local number, instead of the longdistance number dialled.
2. On the carrier side, this patent application retains the subscriber base on its
cellular network, preserving investments in infrastructure. At the same time, it
uses Internet to carry long-distance voice traffic. There is no need for
applications like Skype and Vonage on cell phones, which are taking subscribers
away from carrier.
Every mobile call is now a local call.
5. Lawful Intercept (“LI” - intercepting VoIP communications and other data
communications): US patent 8,422,507 discloses an “application service” type intercept
(section 5.3 of ETSI standard TR 101 943 “Lawful Interception (LI): Concepts of
Interception in a Generic Network Architecture”), that addresses government legislation
to enable law enforcement agencies to perform scheduled and live intercepts on VoIP
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telephone conversations. The advantage of this patent is that it is undetectable by the
intercept target, as opposed to many other technologies. For example, Microsoft patent
application 20110153809 “Legal Intercept” by Ghanem et al. from 2009, which is now in
RCE (Request for Continuing Examination). The Voip-Pal patent does not divert audio
flow to recording equipment. Instead, every media relay is capable of duplicating and
recording audio flow. This way the call path for intercepted calls stays the same as for
non-intercepted ones.
6. Enhanced 911 (“E911” - emergency assistance calling for VoIP communications): US
patent 8,537,805. This technology satisfies the major government requirement for an
enhanced emergency response system, which is the ability to call back the person
making an emergency call in the event of a dropped connection. Average VoIP systems
do not provide this function; they display some non-routable number to the Emergency
Center operator. Instead, this technology assigns a temporary DID (Direct Inward Dial)
number for the emergency call.
This portfolio of patents covers the essential elements of a VoIP and messaging network
including, but not limited to:
•
•
•
•
•
•
•

•

Separation of signaling and media data flows;
The principle of a public (Internet) network / private (VoIP) network call routing decision
prior to call set up;
Elimination of single points of failure common on VPN, VoIP, and PBX implementations;
A system where IP addresses of call originator or call terminator are not visible to each
other (or detectable by network sniffers) such that they only see media relay and call
controller IP addresses by deploying back-to-back user agents B2BUA as call controllers;
Efficient use of call controllers and routing controllers in strategic Internet hubs;
Deployment of media relays and gateways anywhere in the Internet in accordance with
subscriber distribution (media relays being controlled by call controllers);
Elimination of network constraints from administrative, political, or geographical
boundaries, and the ability to monitor or extract data records from any call originated or
terminated from a user with a VoIP provider account anywhere in the world, as long as
it has a VoIP provider account; and
Maintenance of call session state in the routing controller (RBR engine); and transport of
the communication session, via media relays.

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Appendix B: DEPLOYMENT OPPORTUNITIES FOR APPLE
To deploy native VoIP applications on iPhones and the rest of i-family, given the scale of its
current user base of ~500M subscribers, and for future expansion, Apple should:
-

follow best current practice of Internet telephony, not proprietary systems. Skype had to
introduce Fat servers and proxies to bridge private P2P with VoIP and PSTN networks to
avoid scalability bottlenecks. The road to modern scalable technology has been paved by
the RBR patent, as shown in Appendix A.

-

provide government-legislated services, such as Public Safety 911 and Lawful Intercept.

Apple video applications FaceTime and FaceTime Audio are based on modern standards of SIP
and RTP, and function over WiFi, 3G, and LTE – like many other Voice over Internet Protocol
products on the market, including the Voip-Pal technologies.
There are substantial similarities in how FaceTime and FaceTime Audio operate with Voip-Pal
patent US 8,542,815 (Rating, Billing, and Routing) – see Appendix A for details. This patent is
the foundation of modern Internet Telephony, and it covers messaging as well, particularly
iMessage.
With Apple’s VoLTE launch on iPhone6, it is important to mention that VoLTE routing, billing,
and rating functionality is covered by the RBR patent – see Appendix C.
To operate the iPhone voice application in roaming territory, Voip-Pal patent US 8,630,234
(Mobile Gateway) will be used. To carry a call in progress from one transport network to
another (WiFi hot spots, GSM data, LTE) without dropping the call, Voip-Pal patent US
8,675,566 (Uninterrupted) is used.
To support enhanced 911 services, a modern telephony system should provide the ability to call
back the person in an emergency, if the call is dropped –what patent US 8,537,805 (E911)
enables. Modern Lawful Intercept must be truly undetectable with any sophisticated
monitoring tools; meaning, the call flow should not be diverted to a recording facility – US
8,422,507 (Lawful Intercept) patent provides such nondetection. To apply proper charges to
customers and multi-tier providers, and determine accurate allocation of taxes, RBR
continuation patent US 8,774,378 (Billing) is used.

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Appendix C: BENEFITS TO VOICE OVER LTE (VoLTE)
Voice over LTE (VoLTE) deploys functionality, already disclosed by four Voip-Pal patents:
RBR, Lawful Intercept, E911, and Billing – especially by RBR. Two other patents, once
implemented in VoLTE, Uninterrupted and Mobile Gateway, will significantly improve
user VoLTE experience. Altogether, the six Voip-Pal patents, if integrated with VoLTE,
will bring significant competitive advantage to carriers, overthrowing OTT applications
like Skype.
1. Rating, Billing, and Routing engine (“RBR”): US patent 8,542,815 discloses core
functionality of how to route VoIP calls in different networks. In VoLTE architecture
those functions are performed by the following IMS (IP Multimedia Subsystem) blocks:
a. S-CSCF (Serving Call Session Call Function) – central SIP endpoint
b. HSS (Home Subscriber Server) – holds Service Profile (SP) which is a collection of
user-specific information
c. PCRF (Policy & Charging Rules Function)
These blocks, as per the RBR patent, and in response to call initiation, (i) locate caller
dialing profile with plurality of caller attributes, (ii) match some calling attributes with a
portion of the callee identifier, classify the call as a private network call (Internet) or a
public network call (PSTN), and (iii) produces routing messages identifying an address of
callee in the private network or a gateway to the public network. Depending on whether
S-CSCF is the registrar for callee (private call) or not (public call), it may query DNS for
the address of callee’s I-CSCF (Interrogate CSCF) – gateway to callee phone.
2. Allocating Charges for Communications Services (“Billing” - RBR Continuation): US
patent 8,774,378 further discloses charging functionality, performed in VoLTE
architecture by PCRF and HSS above, and CDF (Charging Data Function) which generates
CDRs (Call Detail Records) for postpaid service or OCR (Online Charging System) for
prepaid service.
3. Mobile Gateway: US patent 8,630,234 discloses how a call in roaming territory becomes
a local call; querying the list of local numbers on PSTN-Internet gateway and calling one
of them instead of the long distance number, and lets the gateway complete the call via
Internet. Apparently, VoLTE carriers may take advantage of the Mobile Gateway patent
even further. Since it is natively connected to the Internet, it doesn’t have to call a PSTN
long distance number, but runs the call over the Internet. Moreover, if its IMS has a
connection to the user’s home IMS, a call might be set up between them, leading to
even more savings for both carrier and user.
4. Advanced Interoperability Solutions (“Uninterrupted”): US patent 8,675,566 discloses
the Layer 3 technique to perform seamless handover of calls in progress, while moving
from one transport provider to another (LTE to GSM or WiFi), based on session identifier
COMPARISON OF APPLE AND VOIP-PAL PATENTED TECHNOLOGIES Page 11

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inside RTP header. VoLTE has a few of its own handover techniques, mainly radio
handovers from one eNodeB to another eNodeB (VoLTE) or RNC (3G) tower - PS-PS
(Packet to Packet Switched – VoLTE to VoLTE) or PS-CS (Packet to Circuit Switched –
VoLTE to 3G) handover; the core must be updated afterwards. A native VoLTE handover
works only inside one carrier, not between carriers. The Uninterrupted patent allows
seamless handover between carriers, even different types of carriers (VoLTE, GSM data,
WiFi). VoLTE architecture already has a P-GW element (Packet Data Network Gateway)
which serves as a media relay. It must be updated with the Uninterrupted patent
functionality: on the callee side – call not dropped but waits for media stream with the
same SSRC identifier, on the caller side –the call is not torn down immediately if the
caller disappears, letting the media stream come up on callee side with the same SSRC.
5. Lawful Intercept (“LI”): US patent 8,422,507 discloses public safety VoIP functionality,
legislated for every carrier – how to intercept a call from or to intercept target,
conducted over media relay. In VoLTE architecture, this function is performed by three
entities in EPC (Evolved Packet Core): (1) MME (Mobility Managed Entity) for signaling,
(2) S-GW (Serving Gateway) for roaming media, and (3) P-GW (Packet Data Network
Gateway) for local media.
6. Enhanced 911 (“E911”): US patent 8,537,805 discloses public safety VoIP functionality,
legislated for every carrier – how to handle VoIP calls to Emergency number for all
subscribers: those who have DID (Direct Inward Dial) number assigned and those who
don’t. In VoLTE architecture, this functionality it performed via MME by dedicated SIP
entity E-CSCF (Emergency CSCF), which routes the call to PSAP (Public Safety Answering
Point) – similar to the E911 patent. This patent is more advanced than VoLTE:
- VoLTE subscriber can have multiple identities, like SIP URI, which may be not
possible to call back by PSAP operator. E911 patent always provides PSTN DID
number, which is always reachable from PSAP.
- VoLTE architecture assumes that emergency flag is set up by user handset, according
to statically assigned number, which might be wrong in roaming territory. E911
patent allows dynamic reconfiguration of the emergency number.

COMPARISON OF APPLE AND VOIP-PAL PATENTED TECHNOLOGIES Page 12

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4C. Attachment to E-Mail dated September 15 2014 – Prior Art Review
PRIOR ART REVIEW FOR VOIP-PAL.COM, INC. OF TELEPHONY PATENTS:

8,422,507; 8,542,815; 8,630,234; 8,537,805; 8,675,566 & 8,774,378
tawna

PRIOR ART REVIEW FOR VOIP-PAL.COM, INC.
OF TELEPHONY PATENTS: 8,422,507;
8,542,815; 8,630,234; 8,537,805; 8,675,566
& 8,774,378
An extensive infringement and invalidity patent review

Prepared for
Voip-Pal.com, Inc.
by
Thomas and Thomas,
Attorneys at Law
2740 East 1700 North
Layton, Utah 84040
Client Privileged
Information

VPLM00140
2/9/2016 9:34:11 A

Prior Art Review of Voip-Pal.com, Inc. Telephony Patents
9/9/2014

This review includes the following US Patents:
Producing Routing Messages for VoIP Communications, US Patent 8,542,815
Intercepting VoIP Communications and Other Data Communications, US Patent 8,422,507
Emergency Assistance Calling for VoIP Communications, US Patent 8,537,805
Mobile Gateway, US Patent 8,630,234
Uninterrupted Transmission of Internet Protocol Transmissions during Endpoint Changes, US Patent 8,675,566
Allocating Charges for Communications Services, US Patent 8,774,378

Client: Voip-Pal.com, Inc.

Thomas and Thomas, Attorneys at Law
2740 East 1700 North
Layton, Utah 84040

Client Privileged Information

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Table of Contents

Scope of Search ............................................................................................................................................................ 4

US Patent 8,542,815: VoIP Routing Billing and Rating ............................................................................. 4
A.
B.
1.
2.

Field of the Invention and Related Art .............................................................................................................. 4

Field of Invention .................................................................................................................................................... 4
Description of Related Art................................................................................................................................... 4

Summary of the Invention ....................................................................................................................................... 5

Summary of Major Claims ...................................................................................................................................... 6

C.

Summary of Major Prior Art................................................................................................................................. 7

D.
E.
F.
G.

Additional Sources Considered ............................................................................................................................. 9
Analysis............................................................................................................................................................................ 9

Scope of Search .......................................................................................................................................................... 10

US Patent 8,422,507: LAWFUL INTERCEPT.......................................................................................... 10
A.
B.
1.
2.

Field of the Invention and Related Art ............................................................................................................ 10
Field of Invention ................................................................................................................................................... 10

Description of Related Art................................................................................................................................. 10

Summary of the Invention ..................................................................................................................................... 11

Summary of Major Claims ................................................................................................................................... 13

C.

Summary of Major Prior Art............................................................................................................................... 14

D.
E.
F.
G.

Additional Sources Considered ........................................................................................................................... 17

Analysis.......................................................................................................................................................................... 18

Scope of Search .......................................................................................................................................................... 19

US Patent 8,537,805: Emergency Assistance Calling for VoIP Communications .................................. 19
A.
B.
1.
2.
C.
D.
E.
F.
G.

Patent Related Art Summary and Claims ...................................................................................................... 19

Field of Invention ................................................................................................................................................... 19
Description of Related Art................................................................................................................................. 19

Summary of the Invention ..................................................................................................................................... 20

Summary of Major Claims .................................................................................................................................... 20

Summary of Major Prior Art............................................................................................................................... 21

Additional Sources Considered ........................................................................................................................... 27

Analysis.......................................................................................................................................................................... 27
Scope of Search .......................................................................................................................................................... 28

US Patent 8,630,234: Mobile Telephony .................................................................................................... 28
A.

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Patent Related Art Summary and Claims ...................................................................................................... 28
Summary of the Invention ..................................................................................................................................... 28

B.

Summary of Major Claims ................................................................................................................................... 29

C.

Summary of Major Prior Art............................................................................................................................... 29

D.

Analysis.......................................................................................................................................................................... 32

E.
F.

US Patent 8,675,566: Uninterrupted transmission of internet protocol transmissions during endpoint
changes .......................................................................................................................................................... 33
Scope of Search .......................................................................................................................................................... 33

A.
B.
1.
2.

Field of the Invention and Related Art ............................................................................................................ 33

Field of Invention .................................................................................................................................................. 33

Description of Related Art ................................................................................................................................. 33

Summary of the Invention ..................................................................................................................................... 34

Summary of Major Claims ................................................................................................................................... 34

C.

Summary of Major Prior Art............................................................................................................................... 38

D.
E.
F.
G.

Additional Sources Considered ........................................................................................................................... 41

Analysis.......................................................................................................................................................................... 42

Scope of Search .......................................................................................................................................................... 43

US 8774378: Allocating Charges for Communication Services ............................................................... 43
A.
B.
1.
2.
C.
D.
E.
F.
G.

Field of Invention and Related Art .................................................................................................................... 43
Field of Invention .................................................................................................................................................. 43

Description of Related Art ................................................................................................................................. 43

Summary of the Invention ..................................................................................................................................... 44

Summary of Major Claims .................................................................................................................................... 45

Summary of Major Prior Art ............................................................................................................................... 46

Additional Sources Considered ........................................................................................................................... 48

Analysis.......................................................................................................................................................................... 48

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US PATENT 8,542,815: VOIP ROUTING BILLING AND RATING
Publication date Sep 24, 2013
Filing date
Nov 1, 2007
Priority date
Nov 2, 2006

A. SCOPE OF SEARCH

1.
The prior art search comprises the period between the filing dates 1990 and 2007. The date 1990 began the
search period because VoIP was developed in conjunction with the commercialization of internet in the 1990s. The
end date 2007 was selected as the filing date cutoff because the priority date listed on US Patent 8,542,815 is
November 2, 2006 and in order to predate the priority date and qualify for patent protection an applicant would need to
file within a year of public disclosure under pre and post-Leahy Smith America Invents Act 35 USC 102(b).
2.
The search included the search engines of the World Intellectual Property Organization (WIPO), Google
Patent, Google Scholar and the United States Patent and Trademark Office. The search terms comprise, in various
combinations, the following terms: routing, billing, rating, VoIP, subscriber profiles. The prior art search further
comprises a review of patent citations and references from pertinent patents, found in the word searches, to capture
any additional patent publications not captured in the word searches including broadening reissue patents.
3.
The Search included all US, CA and European patents and applicable professional/technical articles identified
by the search strings.

B. FIELD OF THE INVENTION AND RELATED ART
1.

Field of Invention
This invention relates to methods and apparatus for routing, rating and billing voice over IP and other IP
media-based communications.

2.

Description of Related Art
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 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.
In recent years, Internet protocol (IP) telephones have been seen as an increasingly attractive alternative to
traditional public switched telephone network (PSTN) phones. The rapid growth of “smart” cellular phones
that allow the user access to the Internet from their cellular device has pushed traditional technologies to
provide increased interoperability of IP phones within an existing topography of cellular telephony and
traditional switched circuit networks (SCN). While some interoperable services have been provided, the
differences between IP networks which are based upon “packets” of data that “hop” between multiple
networks to complete communications and PSTN networks that communicate with “end to end”
communications have hampered true interoperability.
One of the advantages of PSTN’s point to point communication is that it allows complex local network nodes
that contain extensive information about a local calling service area including user authentication and call
routing. The PSTN network typically aggregates all information and traffic into a single location or node,

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processes it locally and then passes it on to other network nodes, as necessary, by maintaining route tables at
the node. This information provides much easier routing, rating and billing of PSTN-based calls.

C. SUMMARY OF THE INVENTION

The invention includes processes and implementing apparatuses for operating a call routing controller to facilitate
communication between callers and callees in a system in which there a many nodes with which callers and callees
are associated.
As a call is placed by a subscriber, the routing controller provides a caller identifier and a callee identifier. The
process also includes call classification criteria associated with the caller identifier that identifies the call as a public
network call or a private network call. The call classification criteria may involve searching a database to locate a
record identifying calling attributes associated with a caller that are identified by the caller identifier.
Each database record is a dialing profile with a username associated with the caller, a domain associated with the
caller, and at least one calling attribute. The attribute might be an international dialing digit, IDD, a national dialing
digit, an area code or other pertinent information. For example, the attribute might be a direct in dial (DID) record that
associates the caller with a public telephone number.
The process and associated apparatus may identify that the information in the dialing profile may need to be
reformatted, if the digit count is inappropriate for the call, based upon comparing the number called with the public
telephone number of the caller. For example, if a dialing profile included an IDD or NDD that was not needed
because the destination of the call was domestic, the process would reformat the information so that it would allow the
call to be completed. If, in another case, there was a missing IDD or NDD, the process would add the appropriate
code based upon the area code.
If the call is identified as a private network call, a routing message is created that identifies an address, on the private
network, associated with the callee. Analogously, if the call is classified as a public network call, a routing message
is created that identifies a gateway to the public network. When the node associated with the caller is not the same as
the node associated with the callee, the process involves producing a routing message including the caller identifier,
the reformatted callee identifier and an identification of a private network node associated with the callee and
communicating the routing message to a call controller.
If the node associated with the caller is the same as the node associated with the callee, the process determines whether
to connect the call, forward the call to another party, or block the call and direct the caller to a voicemail server
associated with the callee. Producing the routing message may involve producing a routing message having an
identification of at least one of the callee identifier, an identification of a party to whom the call should be forwarded
and an identification of a voicemail server associated with the callee.
Producing a routing message for a call to a public network will identify a gateway to the public network and may
involve searching a database of route records associating route identifiers with dialing codes or supplier records to
find a route record having a dialing code having a number pattern matching at least a portion of the reformatted
callee identifier. The data structure includes master list records with fields for associating a dialing code with
respective master list identifiers and supplier list records linked to master list records by the master list identifiers. The
supplier list records are database fields for associating with a communications services supplier, a supplier id, a master
list id, a route identifier and a billing rate code, so that communications services suppliers are associated with dialing
codes, in order that dialing codes can be used to locate suppliers capable of providing a communications link
associated with a given dialing code. The routing message is used by a call routing controller as a part of the
communications system.
The process and associated apparatus may involve loading a routing message buffer with the reformatted callee
identifier and an identification of specific routes associated respective ones of the supplier records associated with the
route record and loading the routing message buffer with a time value and a timeout value.

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The process can include various methods for rating, or establishing the cost to be associated with call. These methods
include the ability to calculate time, distance and type of communication in order to assign a cost. Calculating the cost
per unit cost may involve a database with a markup type indicator, a markup value and a billing pattern and setting a
reseller rate equal to the sum of the markup value and the buffer rate.

D. SUMMARY OF MAJOR CLAIMS
1. A process for operating a call routing controller to facilitate communication between callers and callees in a system
comprising a plurality of nodes with which callers and callees are associated, the process comprising:
responding to initiation of a call by a calling subscriber; receiving a caller identifier and a callee identifier;
locating a caller dialing profile comprising a username associated with the caller and a plurality of calling attributes
associated with the caller; determining a match when at least one of said calling attributes matches at least a portion of
said callee identifier; classifying the call as a public network call when said match meets public network classification
criteria and classifying the call as a private network call when said match meets private network classification criteria;
when the call is classified as a private network call, producing a private network routing message for receipt by a call
controller, said private network routing message identifying an address, on the private network, associated with the
callee; when the call is classified as a public network call, producing a public network routing message for receipt by
the call controller, said public network routing message identifying a gateway to the public network.
27. A non-transitory computer readable medium encoded with codes for directing a processor to execute a method of
operating a call routing controller to facilitate communication between callers and callees in a system comprising a
plurality of nodes with which callers and callees are associated, the method comprising: responding to initiation of a
call by a calling subscriber, receiving a caller identifier and a callee identifier; locating a caller dialing profile
comprising a username associated with the caller and a plurality of calling attributes associated with the caller;
determining a match when at least one of said calling attributes matches at least a portion of said callee identifier;
classifying the call as a public network call when said match meets public network classification criteria and
classifying the call as a private network call when said match meets private network classification criteria;
when the call is classified as a private network call, producing a private network routing message for receipt by a call
controller, said private network routing message identifying an address, on the private network, associated with the
callee; and when the call is classified as a public network call, producing a public network routing message for receipt
by a call controller, said public network routing message identifying a gateway to the public network.
28. A call routing apparatus for facilitating communications between callers and callees in a system comprising a
plurality of nodes with which callers and callees are associated, the apparatus comprising: receiving means for
receiving a caller identifier and a callee identifier, in response to initiation of a call by a calling subscriber;
means for locating a caller dialing profile comprising a username associated with the caller and a plurality of calling
attributes associated with the caller; means for determining a match when at least one of said calling attributes matches
at least a portion of said callee identifier; means for classifying the call as a public network call when said match meets
public network classification criteria; means for classifying the call as a private network call when said match meets
private network classification criteria; means for producing a private network routing message for receipt by a call
controller, when the call is classified as a private network call, said private network routing message identifying an
address, on the private network, associated with the callee; and means for producing a public network routing message
for receipt by a call controller, when the call is classified as a public network call, said public network routing message
identifying a gateway to the public network.
41. The apparatus …further comprising searching means for searching a database of records to locate a Direct-InwardDial (DID) bank table record associating a public telephone number with said reformatted callee identifier and wherein
said means for classifying the call as a private network call is operably configured to classify the call as a private
network call when said DID bank table record is found and said means for classifying the call as a public network call
is operably configured to classify the call as a public network call when a DID bank table record is not found.
54. A process for operating a call routing controller to establish a call between a caller and a callee in a communication
system, the process comprising: responding to initiation of a call by a calling subscriber, locating a caller dialing
profile comprising a plurality of calling attributes associated with the caller; and when at least one of said calling
attributes and at least a portion of a callee identifier associated with the callee match and when the match meets a
private network classification criterion, producing a private network routing message for receipt by a call controller,
said private network routing message identifying an address, on a private network, the address being associated with
the callee; and when at least one of said calling attributes and said at least said portion of said callee identifier
associated with the callee match and when the match meets a public network classification criterion, producing a

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public network routing message for receipt by a call controller, said public network routing message identifying a
gateway to a public network.
74. A call routing controller apparatus for establishing a call between a caller and a callee in a communication system,
the apparatus comprising: a processor operably configured to: access a database of caller dialing profiles wherein each
dialing profile associates a plurality of calling attributes with a respective subscriber, to locate a dialing profile
associated with the caller, in response to initiation of a call by a calling subscriber; and
produce a private network routing message for receipt by a call controller, said private network routing message
identifying an address, on a private network, through which the call is to be routed, when at least one of said calling
attributes and at least a portion of a callee identifier associated with the callee match and when the match meets a
private network classification criterion, the address being associated with the callee; and
produce a public network routing message for receipt by a call controller, said public network routing message
identifying a gateway to a public network, when at least one of said calling attributes and said at least said portion of
said callee identifier associated with the callee match and when the match meets a public network classification
criterion.
77. [An] apparatus …wherein said processor is further configured to: access the database of caller dialing profiles to
locate a callee dialing profile for the callee when said callee identifier identifies a callee that is associated with the
same network node as said caller; and retrieve call handling information associated with the callee, where said call
handing information is available, said call handing information including at least one of call blocking information, call
forwarding information, and voicemail information.
93. A call routing controller apparatus for establishing a call between a caller and a callee in a communication system,
the apparatus comprising: means for accessing a database of caller dialing profiles wherein each dialing profile
associates a plurality of calling attributes with a respective subscriber, to locate a dialing profile associated with the
caller, in response to initiation of a call by a calling subscriber; and means for producing a private network routing
message for receipt by a call controller, said private network routing message identifying an address, on a private
network, through which the call is to be routed, when at least one of said calling attributes and at least a portion of a
callee identifier associated with the callee match and when the match meets a private network classification criterion,
the address being associated with the callee; and
means for producing a public network routing message for receipt by a call controller, said public network routing
message identifying a gateway to a public network when at least one of said calling attributes and said at least said
portion of said callee identifier associated with the callee match and when the match meets a public network
classification criterion.
96. [An] apparatus …further comprising: means for accessing the database of caller dialing profiles to locate a callee
dialing profile for the callee when said callee identifier identifies a callee that is associated with the same network
node as said caller; and means for retrieving call handling information associated with the callee, where said call
handing information is available, said call handing information including at least one of call blocking information, call
forwarding information, and voicemail information.

E. SUMMARY OF MAJOR PRIOR ART
The graph below lists some of the more pertinent patents located during the prior art search and describes how said
patents are distinguished from patent US 8,542,815. The patents are organized first by their US patent number in
ascending order followed by their publication numbers from other jurisdictions. In cases where there was not a patent
granted, other US patent publications will follow the granted patents. Also, any foreign patents, without US filings, are
listed in alphabetical and numerical ascending order.
Patent

Dates

Distinguished

US7400881,
CN101069390A,
CN101069390B,
EP1829300A1,
EP1829300A4,
EP1829300B1,
US20060142011,

Priority date
Dec 23, 2004

US 7400881 teaches a method for routing calls and messages in a
communication system. A mobile station registers to a call control
node using a logical name. The logical name is mapped in a directory
to an international mobile subscriber identity. The call control node
performs a location update to a home location register using the
international mobile subscriber identity. The mobile station is
reached using a called party number. As a terminating call or

Filing date
Apr 14, 2005

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WO2006067269A1

Pub date
Jul 15, 2008

message is received to a core network, a roaming number is allocated
for the mobile station, and the call or message is routed to the call
control entity currently serving the mobile station. This patent does
not anticipate US 8,542,815. Although the international mobile
subscriber identity taught in US 7400881 involves a database with
some limited resemblance to the caller dialing profiles of US
8,542,815 , the information in the database record is far less
comprehensive than that of patent US 8,542,815 and the use of the
database solely involves allocating a roaming local number to allow
for local rates to be charged to the subscriber. It anticipates none of
the routing, rating or billing systems of US 8,542,815 .

US 7664495,
US20100105379

Priority date
Apr 21, 2005

US 7664495 teaches systems and methods that provide a single
E.164 number for voice and data call redirection and telephony
services such as caller identification, regardless of in which type of
network a dual mode mobile device operates. When the dual mode
device registers and is active in a GSM network, temporary routing
and status updates are triggered and resultant information is
maintained in both networks. A mobile terminated call is routed
through an enterprise WLAN with call control within the enterprise
being handled by SIP or H.323 signaling, and the call is redirected to
the mobile device in the GSM network, where call control is
assumed by the SS7 network. Services are provided using the
protocols native to the active network, and the single E.164 is used
consistently along with or lieu of the temporary routing information
for subscriber identity specific functions, such as caller identification
and voice mail. The use of a single E.164 number for a dual mode
mobile device has some similarity to the assignment of a single
number in US 8,542,815, but the nature of the database and the
interoperability of the system are significantly different that the
methods and functions disclosed in the instant patent.

Filing date
Dec 5, 2005
Publication
date Feb 16,
2010

US7068668,
US7068668,
US7486667,
US8125982,
US8724643,
US20030095539,
US20060251056,
US20090129566,
US20120113981,
US20140211789

US8204044,
CN101095329A,
CN101095329B,
CN102833232A,
DE112005003306T5,
US7593390,
US8605714,

Priority date
Jan 7, 2000

Filing date
Jan 7, 2000

Publication
date Jun 27,
2006

Priority date
Dec 30, 2004

Filing date
Sep 21, 2009

A real-time interface between the public switched telephone network
(PSTN) and an Internet Protocol (IP) network provides voice to data
and data to voice conversion between the PSTN and the IP network
in a seamless process. The interface, a central communication
network, performs Class 5 switching between the PSTN and the IP
network, besides providing enhanced services. Receiving a call, the
central communication network simultaneously routes the call to a
plurality of preprogrammed numbers on the PSTN and on the IP
network. This patent does provide a real-time interface between a
PSTN and an IP system, but the role of stored number is to facilitate
group broadcast through a centralized server. There is no equivalent
to the dialing profile of US 8,542,815, nor to the purposes and effects
of the interoperable systems it provides.
The method includes receiving a request from a first mobile device
to invite a second mobile device to participate in a VoIP session. The
second device may be identified in the request by a network
identifier. The network identifier is related to a mobile IP (MIP)
address of the second device and a second IP address. An invitation
is sent to the MIP address of the second device which may include a
MIP address of the first device and a first IP address. A response to

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US20060146797,
US20100008345,
US20120250624,
WO2006072099A1,

US 7995589,
EP1266516A2,
EP1266516B1,
US6934279,
US20060007940,
WO2001069899A2,
WO2001069899A3

Publication
date Jun 19,
2012

Priority date
Mar 13, 2000

Filing date
Aug 23, 2005

Publication
date Aug 9,
2011

the invitation may be received from the second device. The response
may be modified to include a first IP header that includes the MIP
address of the second device and a second IP header to include the
second IP address. The modified response is forwarded to the first
device. After receipt of the modified response, the first device is
configured to establish an IP connection for VoIP communication
with the second device. This patent uses a “network identifier”
related to the mobile IP address which appears to serve one of the
functions of the dialing profile of the instant patent. However, the
network identifier is, at most, a single element of the database that
comprises the dialing profile. Functionally this patent suggests only
a small part of the routing and none of the rating and billing
disclosed in US 8,542,815.
A method and apparatus of communicating over a data network
includes providing a user interface in a control system for call
control and to display information relating to a call session. The
control system communicates one or more control messages (e.g.,
Session Initiation Protocol or SIP messages) over the data network to
establish a call session with a remote device in response to receipt of
a request through the user interface. One or more commands are
transmitted to a voice device associated with the control system to
establish the call session between the voice device and the remote
device over the data network. A Real-Time Protocol (RTP) link may
be established between the voice device and the remote device. This
patent does not anticipate the sophisticated database and the
associated routing, billing and rating functions of US 8,542,815.

F. ADDITIONAL SOURCES CONSIDERED
Lin, Yi-Bing, Whai-En Chen, and C-H. Gan. "Effective VoIP call routing in WLAN and cellular integration."
Communications Letters, IEEE 9.10 (2005): 874-876.
Meddour, Djamal-Eddine, et al. "SINR-based routing in multi-hop wireless networks to improve VoIP applications
support." Consumer Communications and Networking Conference, 2007. CCNC 2007. 4th IEEE. IEEE, 2007.
Sripanidkulchai, Kunwadee, Zon-Yin Shae, and Debanjan Saha. "Call routing management in enterprise VoIP
networks." Proceedings of the 2007 SIGCOMM workshop on Internet network management. ACM, 2007.

G. ANALYSIS
Patent US 8,542,815 is not anticipated by the reviewed prior art which involved routing, billing and rating of VoIP
telephony and interoperability of VoIP, cellular telephony and PSTN by routing that involves a database that
associates the subscriber with a DID number, a local relay and other routing information. Some patent publications
teach methods to associate IP telephony with a DID number. Other publications teach methods to route cellular
communication using stored routing information. None include the sophisticated database and associated routing,
billing and rating structures taught by US 8,542,815, nor has the prior art review suggested any likelihood that the
innovations taught by US 8,542,815 would be considered “obvious” extensions of the prior art.

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US PATENT 8,422,507: LAWFUL INTERCEPT
Publication date
Filing date
Priority date

Apr 16, 2013
Nov 29, 2007
Nov 29, 2006

A. SCOPE OF SEARCH

1.
The prior art search comprises the period between the filing dates 1990 and 2007. The date 1990 began the
search period because VoIP was developed in conjunction with the commercialization of internet in the 1990s. The
end date 2007 was selected as the filing date cutoff because the priority date listed on US Patent 8,422,507 is
November 29, 2006 and in order to predate the priority date and qualify for patent protection an applicant would need
to file within a year of public disclosure under pre and post-Leahy Smith America Invents Act 35 USC 102(b).
2.
The search included the search engines of the World Intellectual Property Organization (WIPO), Google
Patent, Google Scholar and the United States Patent and Trademark Office. The search terms comprise, in various
combinations, the following terms: intercepting, VoIP, data, media, communications. The prior art search further
comprises a review of patent citations and references from pertinent patents, found in the word searches, to capture
any additional patent publications not captured in the word searches including broadening reissue patents.
3.
The search included all US, CA and European patents and applicable professional/technical articles identified
by the Google Patent search strings which dealt with VoIP and other data communication intercepts.

B. FIELD OF THE INVENTION AND RELATED ART
1.

Field of Invention
This invention relates to data communications and methods and apparatus for intercepting data
communications, particularly voice over IP data communications, in an IP network.

2.

Description of Related Art
Legal Surveillance. The term "lawful intercept" is used to describe a procedure which allows law enforcement
agencies to perform electronic surveillance of telecommunications. Within the framework of traditional
telecommunications networks, such as, for example, the Public Switched Telephone Network (PSTN) or
cellular networks, lawful intercept generally presents a purely economic problem for the service providers
that have to ensure that sufficient interception equipment and dedicated links to the law enforcement agencies
have been deployed to satisfy lawful intercept requirements mandated by law.
In the context of Voice over Internet Protocol (VoIP) communications, in addition to the economic problems
mentioned above, lawful intercept presents significant technological challenges which often make compliance
with legally mandated lawful intercept requirements exceedingly difficult.
Technological Problems Associated with Lawful Intercept of VoIP Telephony. Traditional
telecommunications networks are "connection-oriented" or "circuit-switched". Once the circuit is established,
all communications traverse from end to end. Interception of such communications is easy as the service
provider can "tap" the circuit at any point in the network that is under its lawful control.
Connectionless VoIP Networks. In contrast to circuit-switched networks, IP-based networks are
"connectionless" by design. A connectionless IP network essentially comprises a plurality of interconnected

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network devices (routers) which establish a plurality of paths from any point on the network to any other
point.
Packetized Data. Information that needs to traverse an IP network is divided into small "packets", each one
comprising an IP header containing source and destination addressing information, and service flags; and user
payload..
Hop by Hop Path. The specific path that each packet in a communication between parties takes across an IP
network is not determined in advance such as in a circuit-switched network. The path is defined on a hop-byhop basis (router-by-router), each router at which the packet arrives examines the source and destination
addresses contained in the IP header and applies a number of service variables such as hop-count (number of
routers between the current router and the destination), latency and bandwidth of available links, and
administrative considerations such as inter-provider agreements, to determine the next hop to which the
packet will be forwarded.
Impossibility of Determining VoIP Paths in Advance. Because the service variables change dynamically, for
example in response to a failure of a link in the network, the available paths may change significantly and it is
impossible to reliably predict the path or paths that the packets that comprise a specific a specific
communication will traverse.
User Datagram Protocol (UDP) Encapsulated IP Packets of Audio Information. The problem of lawful
intercept in VoIP systems is further exacerbated by the distributed technologies often utilized in such
systems. While a VoIP caller typically communicates with a VolP call controller to facilitate the connection
to the VoIP callee, the actual communication between the parties typically occurs by establishing a direct IP
connection between them using the User Datagram Protocol (UDP) to encapsulate audio information into IP
packets.
UDP Packets May Take Any Available Path. These packets may take any available path across the IP network
as described above. Even if a service provider could place an interception device at every point in the network
through which a subscriber's packet could traverse, in order to provide a useful copy of the communication to
a law enforcement agency, the service provider would have to reassemble all of the intercepted packets at a
single device and only then pass the result to the law enforcement agency.
C. SUMMARY OF THE INVENTION

The invention provides methods and apparatuses for intercepting communications in an Internet Protocol (IP) network.
Dialing Profiles with a Unique Username for Each Subsciber. The method involves maintaining dialing profiles for
respective subscribers to the IP network, each dialing profile including a username associated with the corresponding
subscriber.
Associating Intercept Information with the Dialing Profile. The method also involves associating intercept
information with the dialing profile of a subscriber whose communications are to be monitored.
Intercept Information Includes Criteria for Intercept and Destination. The intercept information, including
determination information for determining whether to intercept a communication involving the subscriber and
destination information identifying a device to which intercepted communications involving the subscriber are
maintained.
When the Criteria are met, the Information is sent to a Media Relay. When the determination information meets
intercept criteria, the information is sent to a media relay through which the communications involving the subscriber
will be conducted or are being conducted to cause the media relay to send a copy of the communications to a
mediation device specified by the destination information.

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Intercept information is Associated with the Dialing Profile. Associating intercept information may involve
associating the intercept information with the dialing profile when communications involving the subscriber are either
in or not in progress.
Determination of Information that Meets the Intercept Criteria Produces a Routing Message. The method involves
producing a routing message for routing communications involving the subscriber through components of the IP
network and determining whether the determination information meets the intercept criteria prior to producing the
routing message and including at least some of the intercept information in the routing message when the
determination information meets the intercept criteria.
The Routing Message Results in Communications Being Conducted Through a Pre-associated Media Relay. The
method involves identifying and associating a media relay through which communications involving the subscriber
will be conducted in response to the routing message.
The method may involve invoking an intercept request message handler to find a dialing profile associated with the
subscriber whose communications are to be monitored, and to perform the step of associating the intercept
information with the dialing profile, and to determine whether the intercept criteria are met, and identify a media relay
through which the communications are being conducted.
The method may involve maintaining active call records for communications in progress, and the active call records
may include a username identifier and a media relay identifier identifying the media relay through which the
communications are being conducted and identifying a media relay through which the communications are being
conducted may involve locating an active call record associated with communications of the subscriber whose
communication are to be monitored to find the media relay associated with the communications.
DID Records Associating PST Numbers with Usernames and Dialing Profiles are Stored.. The method may involve
maintaining direct-inward-dialing (DID) records associating PST telephone numbers with usernames of users
subscribing to the IP network, and finding a dialing profile associated with the subscriber whose communications are
to be monitored may involve finding a username in a DID record bearing a PSTN number associated with the
subscriber whose communications are to be monitored. The username may be used to locate a dialing profile
associated with the username.
The Interceptions, Data Associations, Media Gateway and Routing Functions May be Implemented in an Apparatus.
In accordance with another aspect of the invention, there is provided an apparatus for intercepting communications in
an Internet Protocol (IP) network. The apparatus includes provisions for maintaining dialing profiles for respective
subscribers to the IP network, each dialing profile including a username associated with the corresponding subscriber.
The apparatus also includes provisions for associating intercept information with the dialing profile of a subscriber
whose communications are to be monitored, the intercept information including determination information for
determining whether to intercept a communication involving the subscriber, and destination information identifying a
device to which intercepted communications involving the subscriber are to be sent. The apparatus further includes
provisions for communicating with a media relay through which the communications involving the subscriber will be
conducted or are being conducted to cause the media relay to send a copy of the communications to a mediation device
specified by the destination information, when the determination information meets intercept criteria.
By employing a media relay, all VoIP communications traverse a point in the VoIP system that is under a provider's
control and at which the communications can be copied in real-time to a mediation device that passes the intercepted
communication to a law enforcement agency.
By maintaining dialing profiles for respective subscribers and associating intercept information of the type described,
with the dialing profiles of subscribers whose communications are to be monitored, the dialing profile can serve as the
source of determination information for determining whether or not communications involving the subscriber will be
monitored and for providing destination information for specifying where the copy of the communications is to be sent.
Use of the dialing profile in this manner easily facilitates the dialing profile to be considered a respository for intercept
information for a given subscriber and this respository can be addressed whether a call is being initiated or in progress,
thereby simplifying control algorithms because they can cooperate with a common source and format of data in the
dialing profile.

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D. SUMMARY OF MAJOR CLAIMS

1. A method for intercepting communications in an Internet Protocol (IP) network system in which communications
occur through a media relay, the method includes: determining whether information associated with a subscriber
dialing profile meets intercept criteria. When the information meets the intercept criteria, the same media relay
through which communications are relayed produces a copy of the communications and sends it to a mediation device
which is identified by information in the subscriber’s dialing profile.
2. The method… in which a routing message identifies a media relay through which communications involving the
subscriber will be conducted and includes an identification of the media relay in the routing message, so that the
identified media relay acts as the relay through which communications between the subscriber and the another party
are relayed.
3. The method … in which determination information and destination information are associated with the dialing
profile of the subscriber, the intercept request message includes the determination information and the destination
information.
9. The method …involving an intercept request message handler which:
a) finds a dialing profile associated with the subscriber whose communications are to be monitored;
b) associates the determination information and the destination information with the dialing profile;
c) determines whether the intercept criteria are met; and
d) identifies a media relay through which the communications between the subscriber and the another party are
relayed.
11. The method …in which the dialing profile includes a username identifier and maintains active call records for
communications in progress. The active call record includes a username identifier and a media relay identifier that
identifies the media relay through which the communications are being conducted.
12. The method of claim 11, in which direct-in-dial (DID) records associate Public Switched Telephone Network
(PSTN) telephone numbers with the usernames of subscribers so that the PSTN telephone number can be used to
locate the dialing profile of a subscriber by referencing the DID records to locate the dialing profile associated with
the username.
13. The method of claim 3, in which determination information and destination information is included in intercept
information fields in the dialing profile of a subscriber whose communications are to be monitored.
14. An apparatus for intercepting communications in an Internet Protocol (IP) network. The apparatus includes:
a. means for accessing dialing profiles of subscribers of the IP network.
i.
The subscriber dialing profiles include intercept information comprised of:
1.
determination information, which determines whether a call meets the criteria for monitoring and
2.
destination information which identifies a mediation device to which intercepted communications are sent;
b. means for determining whether the determination information meets intercept criteria;
c. means for producing a separate routing message, which includes some of the determination and destination
information, for routing communications involving the subscriber through components of the IP network after
determining that the determination information meets the intercept criteria,
d. means for, in response to the routing message, causing the same media relay through which communications
between the subscriber and the another party are relayed to produce a simultaneous copy of the communications
between the subscriber and the another party, and
e. means for, in response to the routing message, causing the same media relay to send the copy of the
communications to a mediation device identified by the destination information.
27. An apparatus for intercepting communications in an Internet Protocol (IP) network, the apparatus comprising: a
module configured to access dialing profiles associated with respective subscribers of the IP network, at least one of
the dialing profiles being associated with a subscriber whose communications are to be monitored, the dialing profile
of the subscriber whose communications are to be monitored including intercept information including determination
information for determining whether to intercept a communication involving the subscriber, and destination
information identifying a mediation device to which intercepted communications involving the subscriber are to be
sent; a module configured to determine whether the determination information meets intercept criteria; a module
configured to produce a routing message for routing communications involving the subscriber through components of
the IP network, after the determining module has determined that the determination information meets the intercept

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criteria, the routing message being separate from any message sent between the subscriber and the another party, and
the routing message including at least some of the determination information and destination information associated
with the subscriber dialing profile; a module configured to cause, in response to the routing message, the same media
relay through which communications between the subscriber and the another party are relayed to produce a copy of
the communications between the subscriber and the another party, while the media relay relays the communications
between the subscriber and the another party; and a module configured to cause, in response to the routing message,
the same media relay to send the copy of the communications to a mediation device identified by the destination
information.

E. SUMMARY OF MAJOR PRIOR ART
The graph below lists some of the more pertinent patents located during the prior art search and describes how said
patents are distinguished from patent US 8,422,507. The patents are organized first by their US patent number in
ascending order followed by their publication numbers from other jurisdictions. In cases where there was not a patent
granted, other US patent publications will follow the granted patents. Also, any foreign patents, without US filings, are
listed in alphabetical and numerical ascending order.
Patent

US 20040202295,
DE60201827D1,
DE60201827T2,
EP1389862A1,
EP1389862B1

Dates

Priority
Date Aug 8,
2002
Filing date
Jul 25, 2003
Pub Date
Oct 14, 2004

Distinguished
US Patent Application 20040202295 provides an excellent summary of the
prior art with respect to undetectable lawful intercept of IP signals at the time
of its publication in 2004. Its teachings include modification of the Session
Description Protocol (SDP) to allow a marker in a message to be intercepted to
be identified by a Session Initiation Protocol (SIP) proxy server or an Media
Gateway Controller (MGC). If the marker is detected by the SIP server or the
MGC, then an additional set of instructions must be generated by the
identifying device to instruct a Real-time Transport Protocol (RTP) proxy
server to create channels to bypass a media stream to be intercepted via an
intermediate storage medium. It does not described the method for
modification of the SDP marker, does not identify methods for the storage of
data associated with the unidentified markers, nor does it identify the method
of determination that identifies whether the call to be monitored meets criteria.
US 8,422,507, by contrast, teaches a method and an apparatus that allow the
creation of dialing profiles with unique usernames and other data elements and
associations for each subscriber. The dialing profiles include intercept
information, including determination information for determining whether to
intercept a communication involving the subscriber, destination information
identifying a mediation device to which intercepted communications involving
the subscriber are to be sent, a module configured to determine whether the
determination information meets intercept criteria, a module configured to
produce a separate routing message for routing communications involving the
subscriber through specific pre-associated media relay to ensure that all VoIP
communications traverse a point in the VoIP system that is under a provider's
control and at which the communications can be copied in real-time to a
mediation device that passes the intercepted communication to a law
enforcement agency.
US 8,422,507 may further include provisions for maintaining direct-inwarddialing (DID) records associating PST telephone numbers with usernames of
users subscribing to the IP network, and the provisions for finding a dialing

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profile associated with the subscriber whose communications are to be
monitored may be operably configured to find a username in a DID record
bearing a PSTN number associated with the subscriber whose communications
are to be monitored and use the username to locate a dialing profile associated
with the username.
By maintaining dialing profiles for respective subscribers and associating
intercept information of the type described, with the dialing profiles of
subscribers whose communications are to be monitored, the dialing profile can
serve as the source of determination information for determining whether or
not communications involving the subscriber will be monitored and for
providing destination information for specifying where the copy of the
communications is to be sent. Use of the dialing profile in this manner easily
facilitates the dialing profile to be considered a respository for intercept
information for a given subscriber and this repository can be addressed whether
a call is being initiated or in progress, thereby simplifying control algorithms
because they can cooperate with a common source and format of data in the
dialing profile.
Priority
Date
Aug 18, 1999

US6553025

Filing Date
Aug 18, 1999
Pub Date
Apr 22, 2003
Priority
Date
Aug 18, 1999

US6560224

Filing Date
Aug 18,
1999
Pub Date
May 6, 2003
Priority
Date
Jul 2, 1999

US6650641,
US6985440

Filing Date
July 2, 1999
Pub Date
Nov 18, 2003

Priority
Date
Jun 6, 2001

US6993015,
US20020018445

Filing Date
June 6, 2001
Pub Date
Jan 31, 2006

Multiple routing and automatic network detection of a monitored call from an
intercepted targeted IP phone to multiple monitoring locations.
Teaches creating an IP phone monitor center (IPMC). It requires the intercept
to occur as close to the target phone as possible, since there is no uniform way
to identify the caller. It also lacks any system of classification

Automatic IP directory number masking and dynamic packet routing for IP
phone surveillance. Requires an IP Address Mapping check Point without
teaching a method to accurately intercept or classify calls.

Network address translation using a forwarding agent. Somewhat more
sophisticated than the two previous patents, it teaches the need for two-way
communication and classification, but does not provide for the seamless
intercept and data storage of US 8,422,507
Apparatus for intercepting communication data in a packet network . While the
communication terminal apparatus is executing voice communication with
another communication terminal apparatus, the communication intercepting
apparatus transmits a monitor request signal to the communication terminal
apparatus which then instructs the terminal apparatus to store a copy of the
transmission for later delivery to the intercepting apparatus. Lacks synchronous
monitoring.

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Priority
Date
Apr 7, 2000

US7006508,
US20020051518

US7151772,
CA2218218A1,
EP0841832A2,
EP0841832A3,
US20030012196

US20010052081

Filing Date
Apr 5, 2001
Pub Date
Feb 28, 2006
Priority
Date
Nov 8, 1996
Filing Date
Dec 22, 1999
Pub Date
Dec 19, 2006
Priority
Date
Apr 7, 2000
Filing Date
Apr 5, 2001
Pub Date
Dec 13, 2001

US20030179747, CA
2437275A1,
DE60133316D1,
DE60133316T2,
EP1362456A2,
EP1362456A4,
EP1362456B1,
WO2002082782A2,
WO2002082782A3

Priority
Date
Oct 10, 2000
Filing Date
Oct 9, 2001

Filing Date
Feb 12, 2003
Pub Date
Nov 27, 2003
Priority
Date
Feb 24, 2003

US20040165709

Filing Date
Feb 24, 2003
Pub Date
Aug 26, 2004
Priority
Date
Oct 21, 2002

US20040203582, US
6963739

Method for performing lawfully-authorized electronic surveillance. A call
associated with a first party to be surveilled is verified, on a per-call basis.
Packets associated with the call are multicast to a second party and to a
surveillance receiver.
Uses a rudimentary approach to rebroadcast intercepted call.

Communication network with a service agent element and method for
providing surveillance services. A surveillance server responds to trigger
information to establish communications surveillance.
Early discussion of SIP-like information.

Surveillance occurs by stripping the header from a packet, replicating the
payload and adding a second header to replicated payload. Early method for
rebroadcasting message.

Pub Date
Sep 25, 2003
Priority
Date
Feb 12, 2002

US20030219103,
US7277528

Communication network with a collection gateway and method for providing
surveillance services. Communication surveillance to be established by
creating duplicate bearer packets of data packets carrying the communicated
data between the parties.
Has very limited definition of data structures or apparatus.

Filing Date
Oct 21, 2002
Pub Date
Oct 14, 2004

Call-content determinative selection of interception access points in a soft
switch controlled network. By selecting access points specific to the various
components of call-content of a call, a monitoring agency is ensured of
obtaining the call-content of each participant in telephone call. Primarily a
soft-switched system for classification.

Stealth interception of calls within a VoIP network. Soft switch based system.
Soft Switch by provider that offers IP based telephony over a packet network.
Packet Interceptors are deployed in a packet network to non-intrusively
monitor the signaling and media packets. Focuses primarily on the nature of
the interceptors.
Method and apparatus for providing information intercept in an ad-hoc
wireless network . A reporting mobile station operating in an ad-hoc wireless
network, receives designation information identifying a target mobile station,
and stores the designation information. The reporting mobile station then
detects a communication from the target mobile station, and stores information
about the communication. Rudimentary employment of a database.

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US7738384,
US7965645,
US20090268615,
US20100246589

US8024785, CN1010
05503A,
CN101005503B,
US20070174469

Priority
Date Mar
23, 2004
Filing Date
Dec 1, 2004
Pub Date
Jun 15, 2010
Priority
Date
Jan 16, 2006
Filing Date
Jan 5, 2007
Pub Date
Sep 20, 2011
Priority
Date
Jun 22, 2006

US8050273, US2007
0297376

US8427981,
EP2127232A1,
EP2127232A4,
US20080205378,
US20120195415,
WO2008103652A1

US8625578,
US7797459,
US20080056243

Systems and methods for accessing voice transmissions. This extends US
20040202295 to include multiple telephony platforms and identification
through IP address, a telephone number, or a uniform record locator. Does not
have the dialing profile with the associated intercept information, destination
information and relay.
Method and data processing system for intercepting communication between a
client and a service Teaches a method that involves an identifying token that
allows identification of a communication to be monitored. Lacks database
dialing profile with the associated intercept information, destination
information and relay.
Lawful interception in IP networks. Teaches a method based upon creating a
virtual local network in which the object of the surveillance is included.

Filing Date
Jun 22, 2006
Pub Date
Nov 1, 2011
Priority
Date
Feb 23, 2007

System and method for recording and monitoring communications using a
media server. Mimics phone tapping techniques.

Filing Date
Feb 23, 2007
Pub Date
Apr 23, 2013
Priority
Date
Feb 11, 2003
Filing Date
Oct 29, 2007
Pub Date
Jan 7, 2014

Access independent common architecture for real-time communications
services for networking environments. Inter-architecture network utilizing a
single protocol, a plurality of border elements in communication with the
inter-architecture network and with an external network.
Lacks database dialing profile with the associated intercept information,
destination information and relay.

F. ADDITIONAL SOURCES CONSIDERED
Baker, F., B. Foster, and C. Sharp. "Cisco Support for Lawful Intercept In IP Networks." Date Accessed 28 (2003).
Baker, Fred, Bill Foster, and Chip Sharp. "Cisco architecture for lawful intercept in IP networks." Internet Engineering
Task Force, RFC 3924 (2004).
Thernelius F: "SIP, NAT, and Firewalls” Master's Thesis, Kungst Tekniska Hoegskolan, Department of
Teleinformatics-Ericsson, May 2000, Describes a method for performing SIP signaling for a media stream is
disclosed. The method includes receiving a SIP invite message of a first IP party, adapting at least one connection
parameter in the SDP of the received SIP invite message, transmitting the adapted SIP invite message to a second IP
party, receiving a SIP response message from the second IP party, adapting at least one connection parameter in the
SDP of the received SIP response message, and transmitting the adapted SIP response message to the first IP party.

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G. ANALYSIS
Patent US 8,422,507 is not anticipated by the prior art reviewed which involved lawful intercepts of VoIP telephony.
Nor has the prior art review suggested any likelihood that the innovations taught by US 8,422,507 would be
considered “obvious” extensions of the prior art.

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US PATENT 8,537,805: EMERGENCY ASSISTANCE CALLING FOR VOIP
COMMUNICATIONS
Publication date Sep 17, 2013
Filing date Mar 20, 2008
Priority date Mar 26, 2007

A. SCOPE OF SEARCH
1.
The prior art search comprises the period between the filing dates 1990 and 2008. The date 1990 began the
search period because VoIP was developed in conjunction with the commercialization of internet in the 1990s. The
end date 2008 was selected as the filing date cutoff because the priority date listed on US Patent 8,537,805 is March
26, 2007 and in order to predate the priority date and qualify for patent protection an applicant would need to file
within a year of public disclosure under pre and post-Leahy Smith America Invents Act 35 USC 102(b).
2.
The search included the search engines of the World Intellectual Property Organization (WIPO), Google
Patent, Google Scholar and the United States Patent and Trademark Office. The search terms comprise, in various
combinations, the following terms: VoIP, emergency calls, call back, and profiles. The prior art search further
comprises a review of patent citations and references from pertinent patents, found in the word searches, to capture
any additional patent publications not captured in the word searches including broadening reissue patents.
3.
The search included all US, CA and European patents and applicable professional/technical articles identified
by the Google Patent search strings which dealt with VoIP and other data communication intercepts.

B. PATENT RELATED ART SUMMARY AND CLAIMS

1.

Field of Invention
This invention relates to emergency calls to Emergency Response Centers (ERCs) involving callers using
VoIP and more specifically the ability for ERCs to call back callers regardless of whether the callers have
pre-associated direct inward dialing (DID) or not.

2.

Description of Related Art
A feature common of PSTN telephony is that subscribers can make an emergency call using a universal
number in order to reach ERCs (e.g. 911). Because of the architecture of PSTN telephony, a caller is routed to
the nearest ERC with the caller’s phone number and location in compliance with E911 standard. Said
standard has been mandated for PSTN and cellular carriers in North America and other jurisdictions. The
inclusion of the phone number and location enable ERC operators to direct safety personnel to the location of
the caller and call back the caller if the telephony connection becomes disconnected. Given the nonhierarchical architecture of VoIP networks, the implementation of E911 in VoIP requires a means to route the
number to nearest ERC, locate the caller, and provide a call back number that is not inherent in the VoIP
technology.

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C. SUMMARY OF THE INVENTION
Some of the preferred embodiments of the invention comprise a process and an apparatus by which a caller can make
an emergency call using VoIP. This apparatus and process involve receiving a routing request message including a
caller identifier and a callee identifier. Said callee identifier matches an emergency call identifier pre-associated with
the caller which sets an emergency call flag. Setting the emergency call flag may retrieve a dialing profile preassociated with the caller, and this dialing profile may have a field with emergency call center identifier.
The process and apparatus determine whether the caller identifier is associated with a pre-associated direct inward
dialing (DID) identifier or whether the caller needs to be associated with a temporary DID identifier. This may entail
searching a DID database to determine whether a caller identifier is pre-associated with DID identifier or not. If the
caller identifier is not pre-associated, the caller identifier may be associated with a temporary DID identifier from a
pool of pre-determined DID identifiers. This temporary DID identifier may be canceled after a pre-defined time.
The process and apparatus further produce a routing message including the emergency response center identifier and
the temporary or pre-associated DID identifier for receipt by a routing controller operable to cause a route to be
established between the caller and the emergency response center. The routing message may include the DID identifier
and the emergency response center identifier. The routing message may further specify the emergency call’s maximum
time which exceeds an average non-emergency call time.

D. SUMMARY OF MAJOR CLAIMS
1. A process for handling emergency calls from a caller in a voice over IP system, the method comprising:
receiving a routing request message including a caller identifier and a callee identifier;
retrieving a dialing profile associated with the caller, said dialing profile including an emergency call identifier
field and an emergency response center identifier field;
setting an emergency call flag active when the contents of said emergency call identifier field of said dialing profile
match said callee identifier;
determining whether said caller identifier is associated with a pre-associated direct inward dial (DID) identifier by
searching a DID database for a DID record associating a DID identifier with said caller and determining that said
caller identifier is associated with a pre-associated DID identifier when said record associating a DID identifier with
said caller is found and determining that said caller identifier is not associated with a pre-associated DID identifier
when a record associating a DID identifier with said caller is not found; producing a DID identifier for said caller
by:
associating a temporary DID identifier with said caller identifier when said emergency call flag is active and it is
determined that said caller has no pre-associated DID identifier; and
using said pre-associated DID identifier as said DID identifier for said caller when said emergency call flag is
active and it is determined that said caller has a pre-associated DID identifier;
producing a routing message for receipt by a call controller operable to cause a route to be established between the
caller and an emergency response center, said routing message including:
an emergency response center identifier from said emergency response center identifier field of said dialing profile
associated with the caller, said emergency response center identifier being associated with said emergency response
center, and said DID identifier.
11. An apparatus for handling emergency calls from a caller in a voice over IP system, the apparatus comprising:
means for receiving a routing request message including a caller identifier and a callee identifier;

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means for retrieving a dialing profile associated with the caller, said dialing profile comprising an emergency call
identifier field and an emergency response center identifier field;
means for setting an emergency call flag active when the contents of an emergency call identifier field of said
dialing profile match said callee identifier;
means for determining whether said caller identifier is associated with a pre-associated direct inward dial (DID)
identifier by searching a database for a DID record associating a DID identifier with said caller and for
determining that said caller identifier is associated with a pre-associated DID identifier when said record
associating a DID identifier with said caller is found and for determining that said caller identifier is not associated
with a pre-associated DID identifier when a record associating a DID identifier with said caller is not found;
means for producing a DID identifier for said caller comprising:
means for associating a temporary DID identifier with said caller identifier when said emergency call flag is active
and it is determined that said caller has no pre-associated DID identifier; and
means for causing said pre-associated DID identifier to be used as said DID identifier for said caller when said
emergency call flag is active and it is determined that said caller has a pre-associated DID identifier;
means for producing a routing message for receipt by a call controller operable to cause a route to be established
between the caller and an emergency response center, said routing message including:
an emergency response center identifier from said emergency response center identifier field of said dialing profile,
said emergency response center identifier being associated with said emergency response center, and
said DID identifier.

E. SUMMARY OF MAJOR PRIOR ART
The graph below lists some of the more pertinent patents located during the prior art search and how said patents are
distinguished from patent US8537805. The patents are organized first by their US patent number in ascending order
followed by their concomitant publication numbers from other jurisdictions. In cases where there was not a patent
granted, other US patent publication will follow the granted patents. Also, foreign patents, without US filings, are
listed in alphabetical and numerical ascending order.

Patent

Dates

US6775534 B2,
US20020002041,

Priority Date

WO2001080587A
1

Filing Date
Apr 13, 2001
Pub Date Aug
10, 2004

US7027564 B2,
US7944909,

Priority Date

US8437340,
US20050063519,

Filing Date

US20070253429,
US20110176541

Sep 22, 2003
Pub Date

Distinguished
US6775534 B2 teaches a method involving network node for use in a
packet data communications network which can detect an emergency call
indication in a received session activation request and to set up a call even
if normal call setup criteria are not met wherein said node is a SGSN
element and wherein said SGSN element further adapted to create a
packet session with a GGSN, including a further emergency call
indication. This patent does not anticipate US8537805 because it does not
teach a process or apparatus to call back once a telephonic connection is
dropped when the caller calls using VoIP. Nor does it teach a dialing
profile for the caller with different fields nor the other processes of
assessing whether the caller has a pre-associated DID identifier or
temporarily assigning a DID identifier and then where the caller does not
have a pre-associated DID identifier.
US7027564 B2 teaches a method and apparatus for supporting enhanced
911 (E911) emergency services for VoIP where a network is
communicatively coupled to an E911 database management system, a
network access device, and a VoIP telephone communicatively coupled to
an input port of the network access device. The network access device is
adapted to assign a physical location identifier to an input port, receive a
unique device identifier from the VoIP telephone, and transmit the

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Apr 11, 2006

location identifier and the unique device identifier to the E911 database
management system. The E911 database management system is permitted
to store the physical location identifier in association with the unique
device identifier. This is not anticipatory to US8537805 because it does
not teach a dialing profile for the caller with different fields nor the other
processes of assessing whether the caller has a pre-associated DID
identifier and then temporarily assigning a DID identifier where the caller
does not have a pre-associated DID identifier.

US7177399 B2,
EP1721446A1,

Priority Date

US20050190892,
WO2005084002A

Filing Date

US7177399 B2 teaches a method to route and send location information
about an emergency call made from VoIP communications to an
emergency service network node. This is not anticipatory to US8537805
because it does not teach how to callback a VoIP caller from an ERC nor
does it teach a dialing profile for the caller with different fields nor the
other processes of assessing whether the caller has a pre-associated DID
identifier and then temporarily assigning a DID identifier where the caller
does not have a pre-associated DID identifier.

Jun 4, 2004

1
Pub Date Feb
13, 2007

US7440442 B2

Priority Date

EP1526697A2,
EP1526697A3,

Filing Date

US8027333,
US8509225,

Oct 21, 2003

US20050083911,
US20090003535,

Pub Date Oct
21, 2008

US20110267986

US7565131 B2,

Priority Date

US20060205383
Filing Date
Mar 8, 2005
Pub Date

US7573982 B2,
US8462915,
US20060078094,
US20090296900,
US20130272297

Filing Date
Oct 12, 2004
Pub Date
Aug 11, 2009

US7440442 B2 teaches a method of providing E911 services with VoIP
that includes a location record that is associated with the phone's
emergency response location ant transmitting the location record to
monitoring station that ensures that the emergency call is received by a
PSTN gateway and issuing an alarm if the message is not received by the
PSTN gateway. This is not anticipatory to US8537805 because it does not
teach how to callback a VoIP caller from an ERC nor does it teach a
dialing profile for the caller with different fields nor the other processes of
assessing whether the caller has a pre-associated DID identifier and then
temporarily assigning a DID identifier where the caller does not have a
pre-associated DID identifier.
US7565131 B2 teaches a paging identifier for a wireless unit is obtained
using a unique call back identifier for an emergency call placed by the
wireless unit in response to an emergency call back. Then, an emergency
intersystem page, which provides the paging identifier of the wireless unit
and identifies the emergency intersystem page as requesting paging of the
wireless unit for an emergency call back, is sent. Because this patent
teaches a paging method and not a callback method and it does not teach
the processes of assessing whether the caller has a pre-associated DID
identifier and then temporarily assigning a DID identifier where the caller
does not have a pre-associated DID identifier, it does not anticipate
US8537805.
US7573982 B2 teaches methods and systems operate to receive and send
voice over internet protocol (VoIP) communications using a network,
such as an IP network. The methods and systems also operate to receive
and send emergency information over IP and other data networks. Based
on certain criteria, the methods and systems determine whether to transfer
a VoIP communication and/or emergency information to another entity
associated with the IP network. This is not anticipatory to US8537805
because it does not teach a process or apparatus to call back once a
telephonic connection is dropped when the caller calls using VoIP. Nor
does it teach a dialing profile for the caller with different fields nor the
other processes of assessing whether the caller has a pre-associated DID
identifier or temporarily assigning a DID identifier and then where the
caller does not have a pre-associated DID identifier.

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US7639792 B2,

Priority Date

US8189568,
US20070115935,

Filing Date

US20100177671,
US20120314699

Nov 23, 2005
Pub Date
Dec 29, 2009

US7676215,
CN1498029A,

Priority Date

CN1498029B,
DE60317751D1,

Filing Date
Oct 16, 2002

DE60317751T2,
EP1411743B1, ,

Pub Date

US20040203565

Mar 9, 2010

US7702308 B2,
CN1668137A,

Priority Date

EP1575327A1,
US20050202799

Filing Date
Mar 11, 2004
Pub date
Apr 20, 2010

US7715821 B2,
US20060189303

Priority Date
Filing Date
Feb 18, 2005
Pub Date
May 11, 2010

US7764944 B2,
DE602005016188

Priority Date

US7639792 B2 teaches processing VoIP caller data in a server entailing
private identifier (PRID) datum that includes the following data: a user
equipment device identifier, user equipment device mobility, a public
identifier (PUID) for the user equipment, and a network access device
identifier (NID) for the call data. The public identifier and the location
information is then sent to PSAP depending on the NID and the user
equipment mobility with a callback number if the internet access port is a
known location. This patent is not anticipatory to US8537805 because the
PRID, taught in US7639792 B2, includes different fields then the fields
taught as part of dialing profile for the caller in US8537805. Additionally
this patent does not teach the processes of assessing whether the caller has
a pre-associated DID identifier and then temporarily assigning a DID
identifier where the caller does not have a pre-associated DID identifier.
US7676215 teaches assigning an emergency routing number to each
switch in a wireless network. When a switch of the wireless network
routes an emergency call to a Public Service Answering Point (PSAP), the
switch sends the emergency routing number as the calling party number
and provides the PSAP with the identifier of the mobile station. If the
emergency call drops, the PSAP performs a call back using the emergency
routing number as the called party number. The switch that routed the
emergency call from the mobile station to the PSAP receives the call
back. The PSAP also sends the identifier of the mobile station to the
switch. When a switch receives its emergency routing number as the
called party number, the switch recognizes an emergency call back
situation and pages the mobile station identified by the mobile station
identifier received in association with the emergency routing number. The
mobile station is then reconnected with the PSAP. This is not anticipatory
to US8537805 because it does not teach a dialing profile for the caller
with different fields nor the other processes of assessing whether the caller
has a pre-associated DID identifier and then temporarily assigning a DID
identifier where the caller does not have a pre-associated DID identifier.
US7702308 B2 teaches a method which includes the step of receiving at
least one tag identifier in response to the emergency call originating from
the at least one wireless unit. Once the tag identifier is received, a wireless
call back number corresponding with the at least one tag identifier may be
transmitted. A public service answering point emergency call register
(“PSAP-ECR”) may receive the at least one tag identifier and transmits
the wireless call back number over a D interface. This is not anticipatory
to US8537805 because it does not teach a dialing profile for the caller
with different fields nor the other processes of assessing whether the caller
has a pre-associated DID identifier and then temporarily assigning a DID
identifier where the caller does not have a pre-associated DID identifier.
US7715821 B2 teaches a method to update a unique callback number for
a wireless device when a call is placed to ERC whereby the unique
callback number replaces a first unique callback number which is
associated with a mobile equipment identity. This is not anticipatory to
US8537805 because it does not teach a dialing profile for the caller with
different fields nor the other processes of assessing whether the caller has
a pre-associated DID identifier and then temporarily assigning a DID
identifier where the caller does not have a pre-associated DID identifier.
US7764944 B2 teaches a method includes the step of receiving one or
more routing tags associated with a wireless unit originating a “9-1-1” call

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D1,
EP1610583A1,
EP1610583B1,

Filing Date
Jun 25, 2004

US20050287979
Pub Date
Jul 27, 2010

US7907551 B2,
US20070092070,

Priority Date

US20100272242,
US20110013541

Filing Date
Aug 15, 2006
Pub Date
Mar 15, 2011

US8145182 B2,
US20060030290

Priority Date
Filing Date
May 9, 2005
Pub Date
Mar 27, 2012

US8228897 B2,
US8774171,

Priority Date

US20070263609,
US20120282881

Filing Date
May 4, 2006
Pub Date
Jul 24, 2012

such as the following: a string of numbers corresponding with Emergency
Service Routing Digits (“ESRD”) and/or an Emergency Service Routing
Key (“ESRK”). In addition to the routing tag, a mobile equipment
identification number (“MEIN”) and/or a paging identity (“PGID”) may
also be received by a database accessible by wireless network
infrastructure elements, such as an MSC, as well as the emergency call
center, including the local public service answering point, for example. In
response to this receiving step, at least one unique identifier (e.g., unique
call back number) may be generated. This unique identifier may be a
dialable number to enable the emergency call center to call back the
wireless unit originating the “9-1-1” call. Thereafter, the unique identifier
may be transmitted back to the MSC, along with the emergency call
center, for example. Consequently, an emergency call back may be
launched by the emergency call center using the unique identifier to reach
the MSC generally, and more particularly, the wireless unit originating the
“9-1-1” call. This is not anticipatory to US8537805 because it does not
teach a dialing profile for the caller with different fields nor the other
processes of assessing whether the caller has a pre-associated DID
identifier and then temporarily assigning a DID identifier where the caller
does not have a pre-associated DID identifier.
US7907551 B2 teaches a method to establish an emergency conference
call bridge between a caller on a VoIP device, the ERC based on the
location of the VoIP device, and an emergency responder or three
emergency responders. The conference call bridge lasts during the
duration of the emergency call. This is not anticipatory to US8537805
because it does not teach a process or apparatus to call back once a
telephonic connection is dropped when the caller calls using VoIP. Nor
does it teach a dialing profile for the caller with different fields nor the
other processes of assessing whether the caller has a pre-associated DID
identifier or temporarily assigning a DID identifier and then where the
caller does not have a pre-associated DID identifier.
US8145182 B2 teaches a device for identifying an emergency call in a
wireless local area network includes an indicator to identify a call as an
emergency call. The indicator can be a bit flag or an information element.
The information element can include location information regarding the
location of the station that placed the emergency call. This information
can be used to locate the caller. This patent does not anticipate
US8537805 because it does not teach a process or apparatus to call back
once a telephonic connection is dropped when the caller calls using VoIP.
Nor does it teach a dialing profile for the caller with different fields nor
the other processes of assessing whether the caller has a pre-associated
DID identifier or temporarily assigning a DID identifier and then where
the caller does not have a pre-associated DID identifier.
An SS7-based call protocol conversion gateway that translates between
circuit-switched SS7 protocols and session initiation protocol (SIP)
oriented protocol, allowing an E911 call initiated over a switched network
to be routed by a VoIP network. The SS7-based call protocol conversion
gateway provides a PSAP with MSAG quality (street address) information
about a VoIP dual mode phone user without the need for a wireless carrier
to invest in building out an entire VoIP core. Thus, wireless carriers may
continue signaling the way they are today, i.e., using the J-STD-036
standard for CDMA and GSM in North America, yet see benefits of a
VoIP network core, i.e., provision of MSAG quality location data to a

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PSAP. This patent does not anticipate US8537805 because it teaches a
conversion process to continue to signal through CDMA and GSM, but
leverage the benefits of VoIP.
US8244204 B1

Priority Date
Filing Date
Dec 11, 2007
Pub Date
Aug 14, 2012

US8750290 B2,
US20070121593

Priority Date
Filing Date
Oct 18, 2006
Pub Date
Jun 10, 2014

US8768951 B2,
US20070220038

Priority Date
Filing Date
Mar 20, 2006
Pub Date
Jul 1, 2014

US20060281437
A1

Priority Date
Filing Date
Jun 13, 2005

US8244204 B1 teaches a method to suspend or modify incoming call
restrictions for a subscriber station for some time period when it is
detected that an emergency call was made by that subscriber station, so as
to disable the restriction that would otherwise block completion of an
incoming call to that station. This allows a call placed by emergency
personnel in response to the emergency call from the subscriber station
(i.e. when the emergency personnel calls back the user that is involved in
the emergency) to bypass any restrictions setup by the subscriber or by the
network that would otherwise block the callback and allows the
emergency callback to potentially reach the caller. This is not anticipatory
to US8537805 because it does not teach a process or apparatus to call
back once a telephonic connection is dropped when the caller calls using
VoIP. Nor does it teach a dialing profile for the caller with different fields
nor the other processes of assessing whether the caller has a preassociated DID identifier and then temporarily assigning a DID identifier
where the caller does not have a pre-associated DID identifier.
US8750290 B2 teaches routing a call as either a VoIP call over the
Internet or as a conventional call over the PSTN, verifying that at least
one of the VoIP or PSTN telephony connections supports emergency
service and routing calls over that connection or, if there is no connection
supplying emergency service, restricting calling over the VoIP
connection. This is not anticipatory to US8537805 because it does not
teach a process or apparatus to call back once a telephonic connection is
dropped when the caller calls using VoIP. Nor does it teach a dialing
profile for the caller with different fields nor the other processes of
assessing whether the caller has a pre-associated DID identifier and then
temporarily assigning a DID identifier where the caller does not have a
pre-associated DID identifier.
US8768951 B2 teaches a method of populating a location information
database for use in providing a location-based service to a host device that
is an endpoint of a logical connection between the host device and a
network access server. The method comprises receiving from the host
device over the logical connection a request for network access; assigning
a logical identifier to the host device in response to the receiving;
determining a physical location associated with the endpoint of the logical
connection; creating an association between the logical identifier and the
physical location; and storing the association in the location information
database. This is not anticipatory to US8537805 because it does not teach
a process or apparatus to call back once a telephonic connection is
dropped when the caller calls using VoIP. Nor does it teach a dialing
profile for the caller with different fields nor the other processes of
assessing whether the caller has a pre-associated DID identifier and then
temporarily assigning a DID identifier where the caller does not have a
pre-associated DID identifier.
US20060281437 A1 teaches a method by which to identify the
geographic location of a VoIP telephone. The invention generally
provides GPS-based geographic location information to the E911
emergency services network. This is not anticipatory to US8537805
because it does not teach a process or apparatus to call back once a

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Pub Date
Dec 14, 2006

US20080013523

Priority Date

A1
Filing Date
Jul 14, 2006
Pub Date
Jan 17, 2008

US20080188198

Priority Date

A1,
EP1974304A2,

Filing Date

EP1974304A4,
US20090214000,

Sep 4, 2007

WO2007087077A
2,

Pub Date
Aug 7, 2008

WO2007087077A
3

US20080310599
A1,
CA2690236A1,
CN101772929A,

Priority Date

Filing Date

CN101772929B,
EP2165489A1,

Nov 15, 2007

EP2165489A4,
WO2008151406A

Pub Date

1,
WO2008151406A

Dec 18, 2008

telephonic connection is dropped when the caller calls using VoIP. Nor
does it teach a dialing profile for the caller with different fields nor the
other processes of assessing whether the caller has a pre-associated DID
identifier and then temporarily assigning a DID identifier where the caller
does not have a pre-associated DID identifier.
US20080013523 A1 teaches a method including an application server,
the application server communicatively coupled to a service bureau
configured to store location information, and communicatively coupled to
a communication device over an Internet Protocol (IP) network, the
communication device configured to transmit to the application server a
call request message in order to establish a voice communication session,
and to transmit voice information during the voice communication
session; wherein the application server is configured to associate the
communication device with a first telephone number and a second
number, and the second number is associated with the stored location
information. This is not anticipatory to US8537805 because it does not
teach a process or apparatus to call back once a telephonic connection is
dropped when the caller calls using VoIP. Nor does it teach a dialing
profile for the caller with different fields nor the other processes of
assessing whether the caller has a pre-associated DID identifier and then
temporarily assigning a DID identifier where the caller does not have a
pre-associated DID identifier.
US20080188198 A1 teaches a system and method for providing medical,
location information of a subscriber initiating an emergency call, directly to
Public Safety Answering Point (PSAP) at the time of the receipt of the
call. Upon the initiation of an emergency call, the existing infrastructure
f a communication service provider is able to access a central server
he medical and contact information of a subscriber, and relay that
directly to a call center to speed response time and response effectiveness.
nticipatory to US8537805 because it does not teach a process or apparatus
once a telephonic connection is dropped when the caller calls using VoIP.
each a dialing profile for the caller with different fields that is analogous to
while it does have information about a subscriber. Further it does not teach
ocesses of assessing whether the caller has a pre-associated DID identifier
mporarily assigning a DID identifier where the caller does not have a preDID identifier.
US20080310599 A1 teaches a method to make an emergency call back to
user equipment and an access network which includes sending a message
from a PSAP (Public Safety Answering Point) to the user equipment and
the access network with the indication that the emergency call back is
from the PSAP. This patent does not anticipate US8537805 because it
does not teach a process or apparatus to call back once a telephonic
connection is dropped when the caller calls using VoIP. Nor does it teach
a dialing profile for the caller with different fields nor the other processes
of assessing whether the caller has a pre-associated DID identifier and
then temporarily assigning a DID identifier where the caller does not have
a pre-associated DID identifier.

8

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WO2007044454

Priority Date

A2
Filing Date
Oct 4, 2006
Pub Date
Nov 15, 2007

WO2007044454 A2 was filed by the same original assignee as
US7907551 B2 and teaches a similar method of connecting an emergency
caller with an emergency response center through establishing an
emergency conference call and adding third parties to the conference call
such as police, firefighters and ambulance worker. This is not anticipatory
to US8537805 because it does not teach a process or apparatus to call
back once a telephonic connection is dropped when the caller calls using
VoIP. Nor does it teach a dialing profile for the caller with different fields
nor the other processes of assessing whether the caller has a preassociated DID identifier and then temporarily assigning a DID identifier
where the caller does not have a pre-associated DID identifier.

Jajszczyk, Andrzej, and Robert Wójcik. "Emergency Calls in Flow-Aware Networks." IEEE Communications
Letters 11.9 (2007): 753-755.
F. ADDITIONAL SOURCES CONSIDERED

Kim, Jong Yul, Wonsang Song, and Henning Schulzrinne. "An enhanced VoIP emergency services prototype."
ISCRAM, Newark, NJ (2006).

Mintz-Habib, Matthew, et al. "A VoIP emergency services architecture and prototype." Computer
Communications and Networks, 2005. ICCCN 2005. Proceedings. 14th International Conference on. IEEE, 2005.
G. ANALYSIS
Patent US8537805 is not anticipated by the prior art reviewed which involves emergency calls using VoIP telephony,
nor is it an obvious extension of prior art. Some patent publications teach methods to locate callers using VoIP. Other
patent publications teach methods by which ERCs may call back the callers after the telephonic connection is
disconnected including providing callers with temporary DIDs. Patent US8537805 teaches a novel and nonobvious
process and apparatus on how to comply with E911 standards with VoIP and more particularly to do so with a dialing
profile associated with a caller occupied with different fields comprising an emergency call identifier field and an
emergency response center identifier field, and the process of determining whether the caller identifier has a preassociated DID or whether to associate a temporary DID identifier with said caller identifier.

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US PATENT 8,630,234: MOBILE TELEPHONY
Priority date Jul 28, 2008
Filing date Jul 28, 2009
Publication date Jan 14, 2014

A. SCOPE OF SEARCH
1.
The prior art search comprises the period between the filing dates 1990 and 2009. The date 1990 began the
search period because VoIP was developed in conjunction with the commercialization of internet in the 1990s. The
end date 2008 was selected as the filing date cutoff because the filing date listed on US Patent 8,630,234 is July, 28,
2009 and in order to predate the priority date and qualify for patent protection an applicant would need to file within a
year of public disclosure under pre and post-Leahy Smith America Invents Act 35 USC 102(b).
2.
The search included the search engines of the World Intellectual Property Organization (WIPO), Google
Patent, Google Scholar and the United States Patent and Trademark Office. The search terms comprise, in various
combinations, the following terms: mobile gateway, callee, callee identifier, access code, mobile telephone, and access
server. The prior art search further comprises a review of patent citations and references from pertinent patents, found
in the word searches, to capture any additional patent publications not captured in the word searches including
broadening reissue patents.
3.
The search included all US, CA and European patents and applicable professional/technical articles identified
by the Google Patent search strings which dealt with VoIP and other data communication intercepts.
B. PATENT RELATED ART SUMMARY AND CLAIMS

1.

Field of Invention
This invention relates to mobile telephony and the method and apparatus to call a callee from a mobile device
in a manner to avoid long distance charges by calling from a local call.

2.

Description of Related Art
Mobile telephony service providers regularly charge additional fees for long distance calls and for calls made
in another service provider's network. It is commonly known in the art that a caller could use a “calling card”
or a comparable technology to call with a less expensive telephone number, and thus avoid the long distance
call fees. However, calling cards often require a caller to perform a series of complicated steps.
C. SUMMARY OF THE INVENTION

The invention comprises a process and an apparatus by which a caller using a mobile telephone can make a long
distance call using callee and location identifiers associated with the callee. The call is made by transmitting from a
mobile telephone an access code request message. The access code request message comprises the callee identifier
and a location identifier and the location of the mobile telephone. This location identifier may be an IP address of the
mobile telephone, a wireless voice signal station, or a user configured location associated with the mobile telephone.
This transmission may occur through non-voice network.

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An access server receives said access code message and identifies an access code from a pool. Each of these access
codes identify a respective telephone number or Internet Protocol (IP) network address that enables a local call to be
made to the callee.
The caller receives an access code reply message from the access server which may involve a non-voice network. This
reply includes an access code different from the callee identifier and associated with said location identifier and/or
associated with a location pre-associated with the mobile telephone. The access code may be temporarily associated
with the callee identifier. The caller can then initiate a call to the callee with the mobile telephone using the access
code. The access code expires after a period of time.

D. SUMMARY OF MAJOR CLAIMS

1. A method of roaming with a mobile telephone, the method comprising:
receiving, from a user of the mobile telephone, a callee identifier associated with the callee;
transmitting an access code request message to an access server to seek an access code from a pool of access codes
wherein each access code in said pool of access codes identifies a respective telephone number or Internet Protocol
(IP) network address that enables a local call to be made to call the callee identified by the callee identifier, said access
code request message including said callee identifier and a location identifier separate and distinctive from said callee
identifier, said location identifier identifying a location of the mobile telephone;
receiving an access code reply message from the access server in response to said access code request message, said
access code reply message including an access code different from said callee identifier and associated with said
location identifier and/or associated with a location pre-associated with the mobile telephone and wherein said access
code expires after a period of time; andinitiating a call with the mobile telephone using said access code to identify the
callee.
11. A mobile telephone apparatus comprising:
means for receiving, from a user of the mobile telephone, a callee identifier associated with the callee;
transmitting means for transmitting an access code request message to an access server to seek an access code from a
pool of access codes wherein each access code in said pool of access codes identifies a respective telephone number
or Internet Protocol (IP) network address that enables a local call to be made to call the callee identified by the callee
identifier, said access code request message including said callee identifier and a location identifier separate and
distinctive from said callee identifier, said location identifier identifying a location of the mobile telephone;
means for receiving an access code reply message from the access server in response to said access code request
message, said access code reply message including an access code different from said callee identifier and associated
with said location identifier and/or associated with a location pre-associated with the mobile telephone and wherein
said access code expires after a period of time; and
means for initiating a call using said access code to identify the callee.

E. SUMMARY OF MAJOR PRIOR ART

The graph below lists some of the more pertinent patents located during the prior art search and describes how said
patents are distinguished from patent US8630234. The patents are organized first by their US patent number in
ascending order followed by their publication numbers from other jurisdictions. In cases where there was not a patent
granted, other US patent publications will follow the granted patents. Also, foreign patents, without US filings, are
listed in alphabetical and numerical ascending order.
Patent
US5325421 A

Dates
Priority
Date

Distinguished
US5325421 A teaches a method including a caller to place a telephone call
by merely uttering a label identifying a desired called destination and to

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Aug 24,
1992
Filing Date
Aug 24,
1992
Pub Date
Jun 28,
1994

US7929955 B1,
US20110201321

Priority
Date
Apr 28,
2006
Filing Date
Apr 28,
2006
Pub Date
Apr 19,
2011

US8605869 B1

Priority
Date
Aug 8, 2008
Filing Date
Aug 8, 2008
Pub Date
Dec 10,
2013

charge the telephone call to a particular billing account by merely uttering a
label identifying that account. Alternatively, the caller may place the call by
dialing or uttering the telephone number of the called destination or by
entering a speed dial code associated with that telephone number. This
patent does not anticipate US8630234 because it does not teach a process or
apparatus to make a long distance call with a mobile device and more
specifically does not anticipate US8630234 because it does not teach an
access code request message that comprises the callee identifier and a
location identifier associated with the location of the mobile telephone. Nor
does it teach transmitting this request through non-voice network. Nor does
it teach a pool of access codes affiliated with different localities in order to
make local calls to callees. Nor does it teach an access code reply message
comprised with an temporary access code different from the callee identifier
and associated a location identifier.
US7929955 B1 teaches a method comprising a receiver component that
receives a call request, the call request originates from a mobile handset that
is associated with multiple numbers. An analysis component analyzes the
call request and selects a caller line identification (CLI) from amongst a
plurality of CLIs to provide to a called party that is a subject of the call
request. For instance, the mobile handset and/or a network server can
comprise the receiver component and/or the analysis component. While this
patent teaches selecting a CLI from plurality of CLIs much as US8630234
teaches selecting an access code from a pool of access code, this patent is not
anticipatory to US8630234 because it does not teach an access code request
message that comprises the callee identifier and a location identifier
associated with the location of the mobile telephone. Nor does it teach
transmitting this request through non-voice network. Nor does it teach a pool
of access codes affiliated with different localities in order to make local calls
to callees. Nor does it teach an access code reply message comprised with a
temporary access code different from the callee identifier and associated a
location identifier.
US8605869 B1 teaches a method comprising a caller may specify a callee's
telephone number and be connected directly to a carrier provided voice mail
facility associated with the identified the telephone number, even though the
callee's carrier may not be the same as the caller's carrier. In the disclosed
technique, a telephony server places a “Send a call” request to a server which
then sends a signaling call that busies out the channel associated with the
callee. The telephony server places a second call (the actual voice message)
upon confirmation that the signaling call has been initiated, forcing the
second call to the carrier's voice mail facility associated with the callee, since
the first signaling call busied the first channel. This is not anticipatory to
US8630234 because it does not teach how to send a long distance call using
a mobile device with the following steps: transmitting an access code request
message that comprises the callee identifier and a location identifier
associated with the location of the mobile telephone; selecting an access code

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from a pool of access codes affiliated with different localities in order to
make local calls to callees; accessing code reply message comprised with an
temporary access code different from the callee identifier and associated a
location identifier.
US20080167039
A1
US20080166999,
US20080167019,
US20080167020,
US20080188227,
WO2008085614A
2,

Priority
Date
Jan 8, 2007
Filing Date
Nov 30,
2007
Pub Date
Jul 10, 2008

WO2008085614A
3,
WO2008085614A
8,
WO2008086350A
2,
WO2008086350A
3
US20080187122
A1,
WO2006078175A
2,
WO2006078175A
3

Priority
Date
Jan 20,
2005
Filing Date
Jan 17,
2006
Pub Date
Aug 7, 2008

CA2299037 A1,
EP1032224A2,
EP1032224A3

Priority
Date Feb
22, 1999
Filing Date
Feb 21,
2000
Pub Date
Aug 22,
2000

US20080167039 A1 teaches a method of providing a local access number to
a subscriber may include receiving subscriber locale information indicating a
location of a subscriber, mapping the subscriber locale information to one or
more local access numbers, identifying, from the one or more local access
numbers, a local access number corresponding to the subscriber locale
information and transmitting the identified local access number to the
subscriber's mobile device. Although this patent teaches providing local
access numbers to subscribes using mobile devices through receiving the
subscribers locale information and mapping it to access numbers and
transmitting the local access number to the mobile device, this is not
anticipatory to US8630234 because it does not teach all the steps by which
US8630234 performs this service which comprise namely some of the
following: transmitting an access code request message, potentially through
a non-voice network, that comprises the callee identifier and a location
identifier associated with the location of the mobile telephone; and accessing
code reply message comprised with an temporary access code different from
the callee identifier and the associated location identifier.
US20080187122 A1 teaches how to provide a globally useful telephone
number a URI character string which may be similar to an email address
may be provided to a mobile phone server or an internet server for
translation to the actual phone number and establishment of a call to that
number. This patent is not anticipatory to US8630234 because it does not
teach an access code request message that comprises the callee identifier and
a location identifier associated with the location of the mobile telephone.
Nor does it teach transmitting this request through non-voice network. Nor
does it teach a pool of access codes affiliated with different localities in
order to make local calls to callees. Nor does it teach an access code reply
message comprised with an temporary access code different from the callee
identifier and associated a location identifier.
CA2299037 A1 teaches a method allowing a user to set up landline calls
using a mobile telephone. A user initiates outgoing calls by inputting into the
mobile phone the phone numbers of a remote phone of a called party and a
local landline phone convenient for use by the user. A message containing
these phone numbers is sent by the mobile telephone to a remote telephone
call origination platform, which establishes a bridging connection between
the remote phone and the local phone. An incoming call is received by
signaling the user of an incoming call on the mobile phone. The user inputs
the number of a convenient landline phone into the mobile phone, which in
turn signals the remote telephone call origination platform to forward the
incoming call to the designated landline phone. This is not anticipatory to
US8630234 because it teaches sending two telephone numbers through a
data network to a RTCO platform in order to make the communication;
whereas US8630234 teaches a method and apparatus by which an access
server selects a access code that is within the same network or locality of the
callee identifier in order to make the call. Nor does it teach an access code

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request message that comprises the callee identifier and a location identifier
associated with the location of the mobile telephone. Nor does it teach
transmitting this request through non-voice network. Nor does it teach an
access code reply message comprised with a temporary access code different
from the callee identifier and associated a location identifier.

F. ANALYSIS
Patent US8630234 teaches a novel and nonobvious process and apparatus to avoid long distance surcharges by
transmitting an access request to access server with novel steps to receive an access code to make a call to a callee
from a local number. Patent US Patent 8,630,234 is not anticipated by any prior art, nor is there any evidence that it
would be considered an obvious extension of prior art.

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US PATENT 8,675,566: UNINTERRUPTED TRANSMISSION OF INTERNET PROTOCOL
TRANSMISSIONS DURING ENDPOINT CHANGES
Priority Date: September 17, 2009
Filing Date: September 17, 2009
Publication Date: March 24, 2011
A. SCOPE OF SEARCH
1.
The prior art search comprises the period between the filing dates 1990 and 2010. The date 1990 began the
search period because VoIP was developed in conjunction with the commercialization of internet in the 1990s. The
end date 2010 was selected as the filing date cutoff because the filing date listed on US Patent 8,675,566 is September
17, 2009, and in order to predate the priority date and qualify for patent protection an applicant would need to file
within a year of public disclosure under pre and post-Leahy Smith America Invents Act 35 USC 102(b).
2.
The search included the search engines of the World Intellectual Property Organization (WIPO), Google
Patent, Google Scholar and the United States Patent and Trademark Office. The search terms comprise, in various
combinations, the following terms: uninterrupted transmission of internet protocol (IP), real time transport protocol
(RTP), endpoint changes. The prior art search further comprises a review of patent citations and references from
pertinent patents, found in the word searches, to capture any additional patent publications not captured in the word
searches including broadening reissue patents.
3.
The search included all US, CA and European patents and applicable professional/technical articles identified
by the Google Patent search strings which dealt with VoIP, uninterrupted transmission of IP and endpoint changes.

B. FIELD OF THE INVENTION AND RELATED ART
1. Field of Invention
This invention relates to internet protocol (IP) transmissions and, more particularly, to uninterrupted
transmission of IP transmissions containing real time transport protocol (RTP) data during endpoint changes.
2. Description of Related Art
Internet Protocol (IP) transmission systems are known to use media relays to relay IP transmissions from one
endpoint to another. In a telephone system, the media relay relays IP transmissions between a caller and a
callee. An IP session is established by a call controller, which interacts with the media relay, the caller and the
callee to convey to each of these entities the IP addresses and ports to which they should send IP
transmissions and from which they should expect IP transmissions. The media relay is configured to accept
packets conveyed by IP transmissions from specified caller and callee IP addresses and ports. In some
systems, such as mobile telephone systems, a mobile telephone may be in communication with a first base
station while in a certain geographical area and there may be a handoff of the call to another base station
when the mobile telephone is moved to a different geographical location. Communications between the base
stations and the mobile telephones are conducted on a Global System from Mobile Communication (GSM)
network or other cellular network, for example, and the base stations convert messages to and from the GSM

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network and the IP network and thus, the base stations establish the caller and callee IP addresses and ports.
Each base station will have a unique IP address and UDP port number that it associates or assigns to the
mobile telephone with which it has established communication in the conventional manner over the cellular
network. Thus, a conventional media relay will reject IP streams from the new base station after handoff of
the call because such streams are seen as being transmitted by an unauthorized source. This generally
prevents voice over IP telephone calls from being made through systems that employ media relays without
further call handling.
The Session Initiation Protocol (SIP) RFC 3261 provided by the Internet Engineering Task Force (IETF)
specifies a mechanism for an endpoint to notify another endpoint if its IP address changes. This mechanism
employs a signaling message that conveys an identification of new media properties for the endpoint whose
IP address has changed. The use of SIP messages for this purpose, however, adds extra overhead and delays
to the call as signaling messages must be routed through the call controller and the call controller must
communicate with the media relay and endpoints to re-configure the media relay to accept IP transmissions
from the endpoint having the new IP address and to cause IP transmission to be relayed thereto each time a
handoff occurs.

C. SUMMARY OF THE INVENTION

A method apparatus and computer readable medium for facilitating uninterrupted transmission of internet protocol
(IP) transmissions containing real time transport protocol (RTP) data during endpoint changes. When an IP
transmission is received at the caller RTP port or the callee RTP port, a call record having a caller RTP port
identifier or a callee RTP port identifier matching a destination port identifier in the IP transmission is located and
when the destination port identifier in the IP transmission matches the caller RTP port identifier of the record, a
source IP address identifier and source port identifier from the IP transmission are set as the caller IP address
identifier and caller port identifier respectively of the record when the caller IP address identifier and caller port
identifier do not match the source IP address identifier and source port identifier respectively and a received SSRC
identifier in the IP transmission matches the caller SSRC identifier. When the destination port identifier in the IP
transmission matches the callee RTP port identifier of the record, the source IP address identifier and source port
identifier from the IP transmission are set as the callee IP address identifier and callee port identifier respectively of
the record when the callee IP address identifier and callee port identifier do not match the source IP address identifier
and source port identifier respectively and the received SSRC identifier in the IP transmission matches the callee
SSRC identifier.
D. SUMMARY OF MAJOR CLAIMS
1. A method for facilitating uninterrupted transmission of internet protocol (IP) transmissions containing real time
transport protocol (RTP) data during endpoint changes, the method comprising:
maintaining records, each record associating session information, caller information and callee information for a
respective IP communication session;
said session information including caller and callee RTP port identifiers identifying a caller RTP port and a callee
RTP port respectively of a media relay through which IP transmissions of the IP communication session are relayed;

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said caller information including a caller IP address identifier and a caller port identifier to which IP transmissions
received at said callee RTP port are transmitted from the media relay, and a caller synchronization source (SSRC)
identifier; and
said callee information including a callee IP address identifier and a callee port identifier to which IP transmissions
received at said caller RTP port are transmitted from the media relay, and a callee SSRC identifier; and
when an IP transmission is received at said caller RTP port or said callee RTP port:
locating one of said records having said caller RTP port identifier or said callee RTP port identifier matching a
destination port identifier in said IP transmission; and
a) when said one of said records is located and when said destination port identifier in said IP transmission matches
the caller RTP port identifier of said one of said records,
setting a source IP address identifier and source port identifier from said IP transmission as the caller IP address
identifier and caller port identifier respectively of said one of said records when:
said caller IP address identifier and caller port identifier do not match said source IP address identifier and source
port identifier respectively; and
a received SSRC identifier in said IP transmission matches said caller SSRC identifier; and
b) when said one of said records is located and when said destination port identifier in said IP transmission matches
the callee RTP port identifier of said one of said records,
setting said source IP address identifier and source port identifier from said IP transmission as the callee IP address
identifier and callee port identifier respectively of said one of said records when:
said callee IP address identifier and callee port identifier do not match said source IP address identifier and source
port identifier respectively; and
said received SSRC identifier in said IP transmission matches said callee SSRC identifier.
5. A media relay apparatus for facilitating uninterrupted transmission of internet protocol (IP) transmissions
containing real time transport protocol (RTP) data during endpoint changes, the apparatus comprising:
a processor;
input/output interfaces in communication with the processor to provide for connection to an IP network;
non-transitory program memory and storage memory, said program memory encoded with computer executable codes
for directing the processor to:
provide a logical input/output interface interacting with said input/output interfaces to define caller and callee RTP
ports;
maintain call records in said storage memory, each said call record having fields associating session information,
caller information and callee information for a respective IP communication session;
said fields associating session information including caller and callee RTP port identifier fields identifying a caller
RTP port and a callee RTP port respectively, through which IP transmissions of the IP communication session are
relayed;

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said caller information including a caller IP address identifier field and a caller port identifier field to which IP
transmissions received at the callee RTP port are to be transmitted, and a caller synchronization source (SSRC)
identifier field; and
said callee information including a callee IP address identifier field and a callee port identifier field to which IP
transmissions received at said caller RTP port are to be transmitted, and a callee SSRC identifier field; and
to locate one of said records having said caller RTP port identifier field contents or said callee RTP port identifier
field contents matching a destination port identifier in said IP transmission when an IP transmission is received at a
caller RTP port or a callee RTP port;
when said one of said records is located and when said destination port identifier in said IP transmission matches the
contents of the caller RTP port identifier field of said one of said records,
storing a source IP address identifier and source port identifier from said IP transmission in the caller IP address
identifier field and caller port identifier field respectively when:
the contents of said caller IP address field and caller port identifier field do not match said source IP address
identifier and source port identifier respectively; and
a received SSRC identifier in said IP transmission matches the contents of said caller SSRC identifier field; and
when said one of said records is located and when said destination port identifier in said IP transmission matches the
contents of the callee RTP port identifier field of said one of said records,
storing said source IP address identifier and source port identifier from said IP transmission in the callee IP address
identifier field and callee port identifier field respectively when:
said contents of said callee IP address identifier field and said callee port identifier field do not match said source IP
address identifier and source port identifier respectively; and
said received SSRC identifier in said IP transmission matches the contents of said callee SSRC identifier field.
9. A media relay apparatus for facilitating uninterrupted transmission of Internet protocol (IP) transmissions
containing real time transport protocol (RTP) data during endpoint changes, the apparatus comprising:
a processor;
physical connection means for providing physical connections between the processor and an IP network;
means for interacting with said physical connection means and said processor for providing a logical input/output
interface defining caller and callee RTP ports;
means for maintaining call records in memory, each of said call records having means for associating session
information, caller information and callee information for a respective IP communication session including:
means for storing caller and callee RTP port identifiers identifying a caller RTP port and a callee RTP port
respectively through which IP transmissions of the IP communication session are relayed;
means for storing a caller IP address identifier and a caller port identifier to which IP transmissions received at said
callee RTP port are to be transmitted from the media relay apparatus;
means for storing a caller synchronization source (SSRC) identifier;
means for storing a callee IP address identifier and a callee port identifier identifying the callee RTP port to which IP
transmissions received at said caller RTP port are to be transmitted from the media relay apparatus; and

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means for storing a callee SSRC identifier; and
means for locating one of said records having a caller RTP port identifier or a callee RTP port identifier matching a
destination port identifier in an IP transmission when the IP transmission is received at a caller RTP port or a callee
RTP port;
means for determining whether said destination port identifier in said IP transmission matches the caller RTP port
identifier of said one of said records;
means for setting the caller IP address identifier and caller port identifier as the source IP address identifier and
source port identifier respectively from said IP transmission when:
said caller IP address identifier and caller port identifier do not match said source IP address identifier and source
port identifier respectively; and
a received SSRC identifier in said IP transmission matches said caller SSRC identifier; and
means for determining whether said destination port identifier in said IP transmission matches the callee RTP port
identifier of said one of said records, and
means for setting the callee IP address identifier and callee port identifier as the source IP address identifier and
source port identifier respectively from said IP transmission when:
said callee IP address identifier and said callee port identifier do not match said source IP address identifier and
source port identifier respectively; and
said received SSRC identifier in said IP transmission matches said callee SSRC identifier.
13. A non-transitory computer readable medium encoded with computer executable codes for directing a processor of
a media relay to facilitate uninterrupted transmission of internet protocol (IP) transmissions containing real time
transport protocol (RTP) data during endpoint changes, the codes comprising computer executable codes for directing
the processor to:
maintain records, each record associating session information, caller information and callee information for a
respective IP communication session;
said session information including a caller RTP port identifier and a callee RTP port identifier identifying caller and
callee RTP ports respectively of the media relay through which IP transmissions of the IP communication session are
relayed;
said caller information including a caller IP address identifier and a caller port identifier to which IP transmissions
received at said callee RTP port are transmitted from the media relay, and a caller synchronization source (SSRC)
identifier; and
said callee information including a callee IP address identifier and a callee port identifier to which IP transmissions
received at said caller RTP port are transmitted from the media relay, and a callee SSRC identifier; and
when an IP transmission is received at said caller RTP port or said callee RTP port:
locate one of said records having said caller RTP port identifier or said callee RTP port identifier matching a
destination port identifier in said IP transmission;
when said one of said records is located and when said destination port identifier in said IP transmission matches the
caller RTP port identifier of said one of said records,

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set a source IP address identifier and source port identifier from said IP transmission as the caller IP address
identifier and caller port identifier respectively of said one of said records when:
said caller IP address identifier and caller port identifier do not match said source IP address identifier and source
port identifier respectively; and
a received SSRC identifier in said IP transmission matches said caller SSRC identifier; and
when said one of said records is located and when said destination port identifier in said IP transmission matches the
callee RTP port identifier of said one of said records,
set said source IP address identifier and source port identifier from said IP transmission as the callee IP address
identifier and callee port identifier respectively of said one of said records when:
said callee IP address identifier and callee port identifier do not match said source IP address identifier and source
port identifier respectively; and
said received SSRC identifier in said IP transmission matches said callee SSRC identifier.
16. The computer readable medium of claim 13 further comprising computer executable codes for directing the
processor to:
if the IP transmission was received at the caller RTP port, cause the media relay to forward the IP transmission to the
callee at the callee IP address and callee port identified by the callee IP address identifier and callee port identifier
respectively and identify the source of said IP transmission forwarded to the callee with the callee RTP port identifier;
and
if the IP transmission was received at the callee RTP port, cause the media relay to forward the IP transmission to the
caller at the caller IP address and caller port identified by the caller IP address identifier and caller port identifier
respectively and identify the source of said IP transmission forwarded to the caller with the caller RTP port identifier.
E. SUMMARY OF MAJOR PRIOR ART
The graph below lists some of the more pertinent patents located during the prior art search and describes how said
patents are distinguished from patent US 8675566 B2. The patents are organized first by their US patent number in
ascending order followed by their publication numbers from other jurisdictions. In cases where there was not a patent
granted, other US patent publications will follow the granted patents. Also, foreign patents, without US filings, are
listed in alphabetical and numerical ascending order.

Patent

Dates

Distinguished

US7979529,
US20040181599,

Priority Date

US20040181599 teaches a method and telecommunications system for
monitoring a data flow in a data network. When monitoring, the data flow
between the telecommunications is rerouted from the access server via a
monitoring server which makes a copy of the data flow (DAT) and
transmits it to an evaluation unit.

Mar 21, 2001

CN1274114C,
CN1498482A,
DE50211291D1,
EP1244250A1,
EP1371173A1,
EP1371173B1,
WO2002082728A1

Filing Date
Mar 7, 2002

Pub Date

In contrast, although US8675566 has a classification function, it uses that
function in order to facilitate routing to occur in a data system based upon
the stored caller synchronization source (SSRC) identifier and real time
transport protocol (RTP) data to ensure uninterrupted transmission of
internet protocol (IP) transmissions containing real time transport protocol
(RTP) data during endpoint changes.

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Sep 16, 2004

US7436835,

Priority Date
May 30, 2003

US20040240439
Filing Date
May 30, 2003

Pub Date
Dec 2, 2004

US8306063,

Priority date

US20080056302

Aug 29, 2006

Filing date
Aug 29, 2006

Pub date Mar
6, 2008

US20040240439 teaches a method of intercepting call content in a
packet-based Internet Protocol (IP) network. The method includes
targeting bearer packets containing the call content via a Softswitch
controlling the redirection of the targeted bearer packets through a
specified Intercept Router using alias IP addresses for the targeted bearer
packets.
In contrast, US8675566’s classification function facilitates routing to
occur in a data system based upon the stored caller synchronization source
(SSRC) identifier and real time transport protocol (RTP) data to ensure
uninterrupted transmission of internet protocol (IP) transmissions
containing real time transport protocol (RTP) data during endpoint
changes.
US20080056302 teaches a system and method for identifying UDP
packets on an IP network as candidates for characterization as packets of a
RTP stream. UDP packets are identified at a point on the IP network, and
for each identified UDP packet 1) it is determined if a version number in a
RTP header field in the payload of the UDP packet equals a predetermined
value, 2) determined if a packet length associated with the UDP packet is
within a predetermined range, 3) determined if a payload type RTP header
field within the payload of the UDP packet is within a predetermined
range. If all the criteria are satisfied, then the identified UDP packet is
characterized as a candidate RTP packet. It is then determined if the
candidate RTP packet belongs to a previously detected RTP stream, or to a
newly encountered RTP stream. A stream data store is then updated using
the information in the RTP header of the candidate RTP packet.
In contrast, US8675566 utilizes the real time transport protocol (RTP) data
to facilitate routing to occur in a data system based upon the stored caller
synchronization source (SSRC) identifier to to ensure uninterrupted
transmission of internet protocol (IP) transmissions containing real time
transport protocol (RTP) data during endpoint changes.

US20090135735,
WO2009070202A1

Priority date
Nov 27, 2007

Filing date
Apr 8, 2008

Pub date May
28, 2009

US20090141883,
EP2215755A1,
EP2215755A4,

Priority date
Nov 30, 2007

US20090135735 teaches a method and apparatus to track changes to RTP
packets of an RTP session caused by media processing, modify RTP
packet information of the RTP packets based on the tracked changes,
correct RTP control protocol (RTCP) packets corresponding to the RTP
session based on the tracked changes, the corrected RTCP packets being a
measure of the end-to-end reception quality of the RTP session, and report
the end-to-end reception quality of the RTP session by forwarding the
corrected RTCP packets.
In contrast, US8675566 utilizes the real time transport protocol (RTP) data
to facilitate routing to occur in a data system based upon the stored caller
synchronization source (SSRC) identifier to to ensure uninterrupted
transmission of internet protocol (IP) transmissions containing real time
transport protocol (RTP) data during endpoint changes.
US20090141883 comprises a computer-readable medium for performing
IP-based call intercept includes instructions for receiving call initiation
data, a first IP packet from the first communications device, and a second

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US8514841,
WO2009070278A1
Filing date
Nov 30, 2007

Pub date Jun
4, 2009

IP packet from a second communications device, generating copies of the
first IP packet and the second IP packet, and transmitting one of the first
IP packets to the second communications device according to the call
initiation data, another of the first IP packets to a surveilling agency
computer system without encoding a decoding the IP packet, one of the
second IP packets to the first communications device according to the call
initiation data, and another of the second IP packets to the surveilling
agency computer system without encoding or decoding the IP packet.
In contrast, US8675566 utilizes the real time transport protocol (RTP) data
to facilitate routing to occur in a data system based upon the stored caller
synchronization source (SSRC) identifier to to ensure uninterrupted
transmission of internet protocol (IP) transmissions containing real time
transport protocol (RTP) data during endpoint changes.

US20100128729,
US7680114,

Priority date
Aug 26, 2005

US7894441,
US20070047548
Filing date
Jan 27, 2010
Pub date May
27, 2010

US20100128729 comprises a packet forwarding device which minimizes
degradation in packet forwarding performance at the time of execution of
filtering there is provided a technique in which a destination decision
processing unit of a destination decision and filtering unit decides whether
to execute filtering on the basis of at least one of an input interface, an
input port number, an output interface, and an output port number of an
input packet and a plurality of pieces of information constituting the
header of the packet. A filtering unit executes filtering only for a packet
for which execution of filtering is decided. The packet forwarding device
with the destination decision and filtering unit need not execute filtering
for all packets and can minimize degradation in packet forwarding
performance caused by filtering.
In contrast, US8675566 utilizes the real time transport protocol (RTP) data
to facilitate routing to occur in a data system based upon the stored caller
synchronization source (SSRC) identifier to to ensure uninterrupted
transmission of internet protocol (IP) transmissions containing real time
transport protocol (RTP) data during endpoint changes.

US20120099599,
CN102484656A,
EP2449749A1,
EP2449749B1,
US8611354,
WO2011000405A1

Priority date
Jun 29, 2009

Filing date
Jun 29, 2009

Pub date Apr
26, 2012

US20120099599 comprises an apparatus for relaying packets between a
first host and a second host and methods for sending packets between a
first and second host are provided. The apparatus includes a memory for
registering for the first host the following information: a relayed address of
the first host, an address of the second host, and an outbound higher layer
identifier and/or an inbound higher layer identifier. The apparatus further
includes an outbound packet inspector for inspecting packets received
from the first host and addressed to an address of the apparatus to
determine whether they contain a registered outbound higher layer
identifier and, if so, for forwarding the packets to the address of the second
host and/or an inbound packet inspector for inspecting packets received
from the second host and addressed to the relayed address to determine
whether they contain a registered inbound higher layer identifier and, if so,
for forwarding the packets to the address of the first host.
In contrast, US8675566’s classification function facilitates routing to
occur in a data system based upon the stored caller synchronization source
(SSRC) identifier and real time transport protocol (RTP) data to ensure
uninterrupted transmission of internet protocol (IP) transmissions
containing real time transport protocol (RTP) data during endpoint

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changes.
US20120227101,
US8166533,
US8607323,
US20040034793,
US20140101749

Apr 11, 2012
Publication
date Sep 6,
2012
Filing date
Apr 11, 2012
Priority date
Aug 17, 2002

US20120227101 teaches a method for transmitting information packets
across network firewalls. A trusted entity is provisioned with an address
designation for a pinhole through the firewall during setup of a
communication session between two communication devices. This pinhole
address is used throughout the communication session between the two
communication devices to transmit information packets onto and out of
the communication network.
Information packets addressed to the communication device inside the
firewall are received by the trusted entity, which replaces address header
information in the information packet with the address for the pinhole. The
information packet is routed to the pinhole where it passes onto the
network for routing to the communication device inside the firewall.
Information packets transmitted from the network are also routed to the
trusted entity for routing toward the communication device outside the
firewall.
In contrast, US8675566 utilizes the real time transport protocol (RTP) data
to facilitate routing to occur in a data system based upon the stored caller
synchronization source (SSRC) identifier to to ensure uninterrupted
transmission of internet protocol (IP) transmissions containing real time
transport protocol (RTP) data during endpoint changes.

US20130114589,
US8363647, US8804705,
US20020141352

Priority date
Apr 3, 2001

Filing date
Dec 28, 2012

Publication
date May 9,
2013

US20130114589 discloses a system and method for IP telephony. The
system includes an IP telephone (IPT) and a Service Gateway (SG). The
SG receives an identifier, e.g., a vendor class identifier, included in a
DHCP discover message from the IP telephone and determines if the
identifier is valid. If so, the SG issues a DHCP offer comprising DHCP
lease information to the IP telephone, including a range of port numbers
assigned to the IP telephone based on the identifier, where the range of
port numbers comprises ports which are not reserved for use by other IP
protocols. The DHCP lease information includes information indicating
operational software for the IP telephone which the IP telephone executes
to enable IP communications. The SG mediates IP communications
between the IP telephone and an IP device, where the IP telephone uses at
least a subset of the range of port numbers to send or receive IP
communications.
In contrast, US8675566 utilizes the real time transport protocol (RTP) data
to facilitate routing to occur in a data system based upon the stored caller
synchronization source (SSRC) identifier to to ensure uninterrupted
transmission of internet protocol (IP) transmissions containing real time
transport protocol (RTP) data during endpoint changes.

F. ADDITIONAL SOURCES CONSIDERED
Kornfeld, Michael, and Gunther May. "DVB-H and IP datacast—broadcast to handheld devices." Broadcasting, IEEE
Transactions on 53.1 (2007): 161-170.

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Ma, Qinghuai, et al. "Realizing MPEG4 video transmission based on mobile station over GPRS." Wireless
Communications, Networking and Mobile Computing, 2005. Proceedings. 2005 International Conference on. Vol. 2.
IEEE, 2005.
Munir, Muhammad Farukh, Abdelbasset Trad, and Thierry Turletti. "Study of an Adaptive Scheme for Voice
Transmission on IP in a Wireless Networking Environment 802.11 e." ESSI (Ecole Supérieure En Sciences
Informatiques, Université De Nice, France (2005).

G. ANALYSIS
Patent 8,675,566 is not anticipated by any prior art, nor is there any evidence that it would be considered an obvious
extension of prior art.

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US 8774378: ALLOCATING CHARGES FOR COMMUNICATION SERVICES
Priority Date Nov 2, 2006
Filing date Sep 17, 2013
Publication date Jul 8, 2014

A. SCOPE OF SEARCH
1.
The prior art search comprises the period between the filing dates 1990 and 2014. The date 1990 began the
search period because VoIP was developed in conjunction with the commercialization of internet in the 1990s. The
end date 2014 was selected as the filing date cutoff because the filing date listed on US Patent 8774378 is September
17, 2013, and in order to predate the priority date and qualify for patent protection an applicant would need to file
within a year of public disclosure under pre and post-Leahy Smith America Invents Act 35 USC 102(b).
2.
The search included the search engines of the World Intellectual Property Organization (WIPO), Google
Patent, Google Scholar and the United States Patent and Trademark Office. The search terms comprise, in various
combinations, the following terms: routing, billing, rating, VoIP, subscriber profiles. The prior art search further
comprises a review of patent citations and references from pertinent patents, found in the word searches, to capture
any additional patent publications not captured in the word searches including broadening reissue patents.
3.
The Search included all US, CA and European patents and applicable professional/technical articles identified
by the search strings.
B. FIELD OF INVENTION AND RELATED ART

1.

Field of Invention
This invention relates to voice over IP communications and methods and apparatus for allocating charges. It
is a continuation of US Patent 8,542,815.

2.

Description of Related Art
In recent years, Internet protocol (IP) telephones have been seen as an increasingly attractive alternative to
traditional public switched telephone network (PSTN) phones. The rapid growth of “smart” cellular phones
that allow the user access to the Internet from their cellular device has pushed traditional technologies to
provide increased interoperability of IP phones within an existing topography of cellular telephony and
traditional switched circuit networks (SCN). While some interoperable services have been provided, the
differences between IP networks which are based upon “packets” of data that “hop” between multiple
networks to complete communications and PSTN networks that communicate with “end to end”
communications have hampered true interoperability.
One of the advantages of PSTN’s point to point communication is that it allows complex local network nodes
that contain extensive information about a local calling service area including user authentication and call
routing. The PSTN network typically aggregates all information and traffic into a single location or node,
processes it locally and then passes it on to other network nodes, as necessary, by maintaining route tables at
the node. This information provides much easier routing, rating and billing of PSTN-based calls.

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C. SUMMARY OF THE INVENTION
The invention includes a process and an implementing apparatus for operating a call routing controller to facilitate
communication and allocation of charges in that communication, between callers and callees in a system in which
there a many nodes with which callers and callees are associated.
The invention includes processes and implementing apparatuses for operating a call routing controller to facilitate
communication between callers and callees in a system in which there a many nodes with which callers and callees
are associated.
As a call is placed by a subscriber, the routing controller provides a caller identifier and a callee identifier. The
process also includes call classification criteria associated with the caller identifier that identifies the call as a public
network call or a private network call. The call classification criteria may involve searching a database to locate a
record identifying calling attributes associated with a caller that are identified by the caller identifier.
Each database record is a dialing profile with a username associated with the caller, a domain associated with the
caller, and at least one calling attribute. The attribute might be an international dialing digit, IDD, a national dialing
digit, an area code or other pertinent information. For example, the attribute might be a direct in dial (DID) record that
associates the caller with a public telephone number.
The process and associated apparatus may identify that the information in the dialing profile may need to be
reformatted, if the digit count is inappropriate for the call, based upon comparing the number called with the public
telephone number of the caller. For example, if a dialing profile included an IDD or NDD that was not needed
because the destination of the call was domestic, the process would reformat the information so that it would allow the
call to be completed. If, in another case, there was a missing IDD or NDD, the process would add the appropriate
code based upon the area code.
If the call is identified as a private network call, a routing message is created that identifies an address, on the private
network, associated with the callee. Analogously, if the call is classified as a public network call, a routing message
is created that identifies a gateway to the public network. When the node associated with the caller is not the same as
the node associated with the callee, the process involves producing a routing message including the caller identifier,
the reformatted callee identifier and an identification of a private network node associated with the callee and
communicating the routing message to a call controller.
If the node associated with the caller is the same as the node associated with the callee, the process determines whether
to connect the call, forward the call to another party, or block the call and direct the caller to a voicemail server
associated with the callee. Producing the routing message may involve producing a routing message having an
identification of at least one of the callee identifier, an identification of a party to whom the call should be forwarded
and an identification of a voicemail server associated with the callee.
Producing a routing message for a call to a public network will identify a gateway to the public network and may
involve searching a database of route records associating route identifiers with dialing codes or supplier records to
find a route record having a dialing code having a number pattern matching at least a portion of the reformatted
callee identifier. The data structure includes master list records with fields for associating a dialing code with
respective master list identifiers and supplier list records linked to master list records by the master list identifiers. The
supplier list records are database fields for associating with a communications services supplier, a supplier id, a master
list id, a route identifier and a billing rate code, so that communications services suppliers are associated with dialing
codes, in order that dialing codes can be used to locate suppliers capable of providing a communications link
associated with a given dialing code. The routing message is used by a call routing controller as a part of the
communications system.
The process and associated apparatus may involve loading a routing message buffer with the reformatted callee
identifier and an identification of specific routes associated respective ones of the supplier records associated with the
route record and loading the routing message buffer with a time value and a timeout value.

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The process can include various methods for rating, or establishing the cost to be associated with call. These methods
include the ability to calculate time, distance and type of communication in order to assign a cost. Calculating the cost
per unit cost may involve a database with a markup type indicator, a markup value and a billing pattern and setting a
reseller rate equal to the sum of the markup value and the buffer rate.

D. SUMMARY OF MAJOR CLAIMS
1. A computer implemented process for attributing charges for communications services, the process comprising:
causing a processor to determine a first chargeable time in response to a communication session time and a predefined billing pattern;
causing the processor to determine a user cost value in response to the first chargeable time and a free time value
associated with a user of the communications services;
causing the processor to change an account balance associated with the user in response to the user cost value;
causing the processor to change an account balance associated with a reseller of the communications services in
response to a reseller cost per unit time and the communication session time; and
causing the processor to change an account balance associated with an operator of the communications services in
response to an operator cost per unit time and the communication session time.
2. The process of claim 1, wherein determining the first chargeable time comprises:
causing the processor to locate at least one of:
an override record specifying a billing pattern associated with a route associated with the communication session;
a reseller record associated with a reseller of the communications session, the reseller record specifying a billing
pattern associated with the reseller for the communication session; and
a default record specifying a billing pattern; and
causing the processor to set as the pre-defined billing pattern the billing pattern of the located record, wherein the
billing pattern of the located record comprises a first billing interval and a second billing interval.
15. An apparatus for attributing charges for communications services, the apparatus comprising:
a processor operably configured to receive signals representing a communication session time, a pre-defined billing
pattern, a free time value associated with a user of the communications services, a reseller cost per unit time; and an
operator cost per unit time;
a non-transitory computer readable medium encoded with codes for directing the processor to:
receive the signals representing the communication session time, the pre-defined billing pattern, the free time value
associated with a user of the communications services, the reseller cost per unit time, and the operator cost per unit
time;
determine a first chargeable time in response to the communication session time and the pre-defined billing pattern;
determine a user cost value in response to the first chargeable time and the free time value;
cause an account balance associated with the user to be changed in response to the user cost value;

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cause an account balance associated with a reseller of the communications services in response to the reseller cost
per unit time and the communication session time; and
cause an account balance associated with an operator of the communications services to be changed in response to
the operator cost per unit time and the communication session time.
16. The apparatus of claim 15, wherein the codes include codes for directing the processor to determine the first
chargeable time by:
causing the processor to locate at least one of:
an override record specifying a billing pattern associated with a route associated with the communication session;
a reseller record associated with a reseller of the communications session, the reseller record specifying a billing
pattern associated with the reseller for the communication session; and
a default record specifying a billing pattern; and
causing the processor to set as the pre-defined billing pattern the billing pattern of the located record, wherein the
billing pattern of the located record comprises a first billing interval and a second billing interval.

E. SUMMARY OF MAJOR PRIOR ART
The graph below lists some of the more pertinent patents located during the prior art search and describes how said
patents are distinguished from patent US 8774378. The patents are organized first by their US patent number in
ascending order followed by their publication numbers from other jurisdictions. In cases where there was not a patent
granted, other US patent publications will follow the granted patents. Also, foreign patents, without US filings, are
listed in alphabetical and numerical ascending order.

Patent Number

Dates

Distinguished

US 7400881

Priority Date
12/23/2004

The invention discloses a method for routing calls and messages in a
communication system. A mobile station registers to a call control node using a
logical name. The logical name is mapped in a directory to an international
mobile subscriber identity. The call control node performs a location update to a
home location register using the international mobile subscriber identity. The
mobile station is reached using a called party number. As a terminating call or
message is received to a core network, a roaming number is allocated for the
mobile station, and the call or message is routed to the call control entity
currently serving the mobile station.

Filing Date

Publication
Date
7/15/2008

US 7664495

Priority Date
4/21/2005

Although the international mobile subscriber identity bears some limited
resemblance to the caller dialing profiles of the instant patent, The patent
involves allocating a roaming local number to allow for local rates to be charged
to the subscriber. None of the routing, rating or billing systems anticipate the
instant patent.
Systems and methods provide a single E.164 number for voice and data call
redirection and telephony services such as caller identification, regardless of in
which type of network a dual mode mobile device operates. When the dual
mode device registers and is active in a GSM network, temporary routing and
status updates are triggered and resultant information is maintained in both

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Filing Date

Pub Date
2/16/2010

US7068668

Priority Date
1/7/2000

Filing Date

Pub Date
6/27/2006

US8204044

Priority Date
12/30/2004

Filing Date

Pub Date
6/19/2012

networks. A mobile terminated call is routed through an enterprise WLAN with
call control within the enterprise being handled by SIP or H.323 signaling, and
the call is redirected to the mobile device in the GSM network, where call
control is assumed by the SS7 network. Services are provided using the
protocols native to the active network, and the single E.164 is used consistently
along with or lieu of the temporary routing information for subscriber identity
specific functions, such as caller identification and voice mail. The use of a
single E.164 number for a dual mode mobile device has some similarity to the
assignment of a single number in the instant patent, but the nature of the
database and the interoperability of the system are significantly different that the
methods and functions disclosed in the instant patent.
A real-time interface between the public switched telephone network (PSTN)
and an Internet Protocol (IP) network provides voice to data and data to voice
conversion between the PSTN and the IP network in a seamless process. The
interface, a central communication network, performs Class 5 switching
between the PSTN and the IP network, besides providing enhanced services.
Receiving a call, the central communication network simultaneously routes the
call to a plurality of preprogrammed numbers on the PSTN and on the IP
network. This patent does provide a real-time interface between a PSTN and an
IP system, but the role of stored number is to facilitate group broadcast through
a centralized server. There is no equivalent to the dialing profile of the instant
patent nor to the purposes and effects of the interoperable systems it provides.
The method includes receiving a request from a first mobile device to invite a
second mobile device to participate in a VoIP session. The second device may
be identified in the request by a network identifier. The network identifier is
related to a mobile IP (MIP) address of the second device and a second IP
address. An invitation is sent to the MIP address of the second device which
may include a MIP address of the first device and a first IP address. A response
to the invitation may be received from the second device. The response may be
modified to include a first IP header that includes the MIP address of the second
device and a second IP header to include the second IP address. The modified
response is forwarded to the first device. After receipt of the modified response,
the first device is configured to establish an IP connection for VoIP
communication with the second device.
This patent uses a “network identifier” related to the mobile IP address which
appears to serve a function similar to one of the functions of the dialing profile
of the instant patent. However, the network identifier is, at most, a single
element of the database that comprises the dialing profile. Functionally this
patent suggests only a small part of the routing and none of the rating and billing
disclosed in the instant patent.

US 7995589

Priority Date
3/13/2000

Filing Date

Pub Date

A method and apparatus of communicating over a data network includes
providing a user interface in a control system for call control and to display
information relating to a call session. The control system communicates one or
more control messages (e.g., Session Initiation Protocol or SIP messages) over
the data network to establish a call session with a remote device in response to
receipt of a request through the user interface. One or more commands are
transmitted to a voice device associated with the control system to establish the
call session between the voice device and the remote device over the data
network. A Real-Time Protocol (RTP) link may be established between the

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8/9/2011

US 7212522

3/8/2001

Virtual private networks for voice over networks applications

10/10/2006

US 7120682

voice device and the remote device.

Focused on private network Applications.

7/8/2004
5/1/2007

Communicating voice over a packet-switching network
Basic VoIP communication

US 20020116464

3/27/2001
8/22/2002

Electronic communications system and method

US 20040022237

2/12/2003
2/5/2004

Voice over data telecommunications network architecture
Uses soft switching to implement interoperability

F. ADDITIONAL SOURCES CONSIDERED
Bhushan, Bharat, et al. "Federated accounting: Service charging and billing in a business-to-business environment."
Integrated Network Management Proceedings, 2001 IEEE/IFIP International Symposium on. IEEE, 2001.
Lee, Kyu Ouk, Seong Youn Kim, and Kwon Chul Park. "VoIP interoperation with KT-NGN." Advanced
Communication Technology, 2004. The 6th International Conference on. Vol. 1. IEEE, 2004.
Yu, SuJung, et al. "Service-oriented issues: Mobility, security, charging and billing management in mobile next
generation networks." Broadband Convergence Networks, 2006. BcN 2006. The 1st International Workshop on. IEEE,
2006.

G. ANALYSIS

Patent US 8774378 is not anticipated by the prior art reviewed which involved routing, billing and rating of VoIP
telephony and interoperability of VoIP, cellular telephony and PSTN by routing that involves a database that
associates the subscriber with a DID number, a local relay and other routing information. Some patent publications
teach methods to associate IP telephony with a DID number. Other publications teach methods to route cellular
communication using stored routing information. None include the sophisticated database and associated routing,
billing and rating structures taught by US 8774378. Nor has the prior art review suggested any likelihood that the
innovations taught by US 8774378 would be considered “obvious” extensions of the prior art.

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5.

Apple Inc. / J Lasker E-Mail dated September 24 2014

At 12:56 PM 9/24/2014, you wrote:
Tom,
We received the materials and are currently reviewing them. We will endeavor to get you a response
regarding Voip-Pal's patents mentioned in the materials by the end of next week, after we have
completed our initial assessment.
As I have informed you previously, if you are asking Apple to consider your company’s ideas or to
collaborate in some other way, we cannot do so. Apple has a stated policy of not accepting,
reviewing, or considering outside submissions of product ideas for any purpose. We have adopted
this policy due in part to the large volume of mail received and also to avoid potential
misunderstandings or disputes when Apple’s products or marketing strategies might seem similar
to ideas submitted to Apple. The policy can be viewed at
http://www.apple.com/legal/policies/ideas.html.
Jeff
Jeffrey V. Lasker
Legal Counsel, IP Transactions
< Apple Inc.
408-862-1377

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6.

Apple Inc. / J Lasker E-Mail October 8 2014 w Attachment 6A

Tom,
Please see the attached letter.
Regards,
Jeff
Jeffrey V. Lasker
Legal Counsel, IP Transactions
< Apple Inc.
408-862-1377

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6A. Attachment to E-Mail dated October 8 2014

October 8, 2014

Via Email

Thomas E. Sawyer, Ph.D.
Chairman and CEO
Voip-Pal.com, Inc.
P.O. Box 900788
Sandy, Utah 84090
Email: [e-mail]
Re: Voip-Pal.com, Inc.
Dear Tom,
I write to you in response to your letter dated September 15, 2014 and your email dated
September 26, 2014 regarding U.S. Patent Nos. 8,542,815 (’815 patent), 8,422,507 (’507
patent), 8,537,805 (’805 patent), 8,630,234 (’234 patent), 8,774,378 (’378 patent), and
8,675,566 (’566 patent). I am also in receipt of your email dated September 30, 2014.
As my colleague Denise Kerstein previously informed you, Apple is not currently
interested in acquiring Voip-Pal’s patents. Additionally, as I have explained to you
previously, we have reviewed the patents and do not believe they cover any products or
services offered by Apple. I asked that you provide detailed claim charts explaining the
basis for your assertion if you disagree with our conclusion. However, the materials you
provided do not include any charts or other explanation regarding the elements of the
patent claims. Your materials include only vague reference that the patents are allegedly
“in use,” “may be used,” “will be used,” or “not used, but will be beneficial to use.”
In any event, we have carefully reviewed the materials you provided, Voip-Pal’s patents,
and their prosecution histories, and concluded that Voip-Pal’s patents do not cover any
products or services offered by Apple. Accordingly, we do not believe any license to
Voip-Pal’s patents is necessary. We address each of the patents below.

Apple Inc.
Jeffrey V. Lasker
1 Infinite Loop, MS 169-3IPL
Cupertino, CA 95014
[phone]
jlasker @apple.com

VPLM00191
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I.

Patents
A. ’815 patent

Voip-Pal contends that ’815 patent is applicable to iMessage because the patent is
directed to routing “a communication in private (Internet) and public (Legacy PSTN) domains.” However, Voip-Pal’s broad brush application of the ’815 patent runs contrary to
the claims, the specification, and the file history. As an initial matter, all of the claims of
the ’815 patent are directed to routing telephone calls. In contrast, iMessage does not
route telephone calls – it is an instant messaging service.
Additionally, the claims call for routing calls between a private or public network.
Voip-Pal appears to state that, in the context of iMessage, the “private” network is the Internet. But the Internet, by its own term, is not a “private” network. To the contrary, it is a
global system of interconnected computer networks. Indeed, the ’815 patent specification itself distinguishes between a private network and the Internet, stating that:
“[i]t should be noted that throughout the description of the embodiments
of this invention, the IP/UDP addresses of all elements such as the caller
and callee telephones, call controller, media relay, and many others, will be
assumed to be valid IP/UDP addresses directly accessible via the Internet
or a private IP network, for example, depending on the specific implementation of the system.” See, e.g., ‘815 patent at 13:30-36.
Thus, Voip-Pal’s apparent contention that a “private network” is the “Internet” is contrary
to the patent specification itself.
Additionally, Voip-Pal’s assertion that the ’815 patent is applicable to iMessage is
contrary to the file history. In distinguishing prior art, the applicant argued that the prior
art taught searching a database using information associated with the “callee” rather than
the “caller” to determine where to route the call (public or private), whereas the claims
call for using the “caller” information to determine where to route the call. Voip-Pal’s allegations against iMessage fail to articulate how iMessage uses the “caller” information (in
contrast to the “callee” information distinguished during prior art) for routing.
The above noted deficiencies are just some of the non-limiting examples that illustrate why the ’815 patent is not applicable to iMessage, or other Apple products and
services, such as FaceTime.
B. ’566 patent
Voip-Pal also contends that ’566 patent is applicable to Apple’s WiFi calling
technology. We do not see any correlation between claims of the ’566 patent and WiFi
calling. The claims of the ’566 patent include numerous limitations, yet Voip-Pal does not

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explain how any of the limitations are purportedly satisfied by WiFi calling. For example,
each claim of the ’566 patent, among other things, requires a record containing a caller
and callee RTP port identifier that identifies a port on each side of a media relay server
through which the RTP transmissions pass. We do not see how this basic limitation is
satisfied by Apple’s WiFi calling feature. Similarly, we do not see how the other
numerous limitations are satisfied by the WiFi calling technology. Therefore, we do not
believe the ’566 patent is relevant to Apple’s products or services.
C. ’507, ’805, ’378, and ’234 patents
Regarding the ’507, ’805, ’378, and ’234 patents, Voip-Pal does not allege that any
particular claim of these patents is applicable to any of the Apple products. Instead, the
materials include only a table that makes only vague reference that the patents “may be
used,” “will be used,” or “not used, but will be beneficial to use” in Apple’s technology.
Based on our initial review and the information you provided, we do not see how these
patents are relevant to any Apple technology.
II.

Conclusion

For at least these reasons, we do not believe Apple needs a license to Voip-Pal’s
patents. If you disagree with our assessment, please provide me with a detailed
explanation and support for your positions, including detailed claim charts explaining the
basis for your assertion.
Regards,

Jeffrey V. Lasker
Legal Counsel, IP Transactions

VPLM00193
2/9/2016 9:34:11 A

7.

E-Mail to Apple Inc. / J Lasker October 15 2014 w Attachments 7A, 7B and 7C

T.E. Sawyer <[e-mail]>

10/15/1 4

to jlasker
Jeffrey,
This response to your letter of October 8, 2014 to me has been carefully prepared to address your
comments in sufficient detail to confirm areas of overlap between Apple's functionality and the
patented technology of Voip-Pal. In my opinion there is little or no doubt of this conflict after
this draft document. I have made very few edits in order to preserve the technical team's
commentary. While the WiFi is addressed, I am prepared to drop this issue from consideration.
We are sincerely seeking a non litigious solution that will prove to be mutually beneficial to both
Apple and Voip-Pal. Thank you for Apple's further analysis and consideration.
Dr. Thomas E. Sawyer

VPLM00194
2/9/2016 9:34:11 A

7A.

Attachment to E-Mail dated October 15 2014 - Detailed Rebuttal

October 8, 2014

Via Email

Thomas E. Sawyer, Ph.D.
Chairman and CEO
Voip-Pal.com, Inc.
P.O. Box 900788
Sandy, Utah 84090
Email: [e-mail]
Re: Voip-Pal.com, Inc.
Dear Tom,

I write to you in response to your letter dated September 15, 2014 and your email dated September 26, 2014
regarding U.S. Patent Nos. 8,542,815 ('815 patent), 8,422,507 ('507 patent), 8,537,805 ('805 patent), 8,630,234 ('234
patent), 8,774,378 ('378 patent), and 8,675,566 ('566 patent). I am also in receipt of your email dated September 30,
2014.

As my colleague Denise Kerstein previously informed you, Apple is not currently interested in acquiring Voip-Pal's
patents. Additionally, as I have explained to you previously, we have reviewed the patents and do not believe they
cover any products or services offered by Apple. I asked that you provide detailed claim charts explaining the basis
for your assertion if you disagree with our conclusion. However, the materials you provided do not include any charts
or other explanation regarding the elements of the patent claims. Your materials include only vague reference that
the patents are allegedly "in use," "may be used," "will be used," or "not used, but will be beneficial to use."

In any event, we have carefully reviewed the materials you provided, Voip-Pal's patents, and their prosecution
histories, and concluded that Voip-Pal's patents do not cover any products or services offered by Apple. Accordingly,
we do not believe any license to Voip-Pal's patents is necessary. We address each of the patents below.

VPLM00195
2/9/2016 9:34:11 A

I. Patents
A.

'815 patent

Voip-Pal contends that '815 patent is applicable to iMessage because the patent is directed to routing "a
communication in private (Internet) and public (Legacy PSTN) domains." However, Voip-Pal's broad brush application
of the '815 patent runs contrary to the claims, the specification, and the file history. As an initial matter, all of the
claims of the '815 patent are directed to routing telephone calls. In contrast, iMessage does not route telephone calls
- it is an instant messaging service.

‘815 patent discloses (claim 1, col 36, lines 14-17):

“communication” is not only voice calls, but includes video and data (means messaging similar
to iMessges), which is emphasized further:
col. 1, lines 18-21

Additionally, the claims call for routing calls between a private or public network. Voip-Pal appears to state
that, in the context of iMessage, the "private" network is the Internet. But the Internet, by its own term, is not a
"private" network. To the contrary, it is a global system of interconnected computer networks. Indeed, the '815 patent
specification itself distinguishes between a private network and the Internet, stating that:

In the scope of ‘815 patent, Internet incorporates the private networks of large organizations, to
which subscribers are associated, for public access to mobile, WiFi and other operators.
Subscribers acquire the Internet via public accesses then connect to a private network to get
the service. For example, two Apple subscribers, connect to Internet via public accesses of
Verizon Wireless and T-Mobile, to then connect to Apple private network of supporting servers,
to enable iMessage to each other.
"[i]t should be noted that throughout the description of the embodiments of this invention, the IP/UDP
addresses of all elements such as the caller and callee telephones, call controller, media relay, and many
others, will be assumed to be valid IP/UDP addresses directly accessible via the Internet or a private IP
network, for example, depending on the specific implementation of the system." See, e.g., '815 patent at
13:30-36.
Thus, Voip-Pal's apparent contention that a "private network" is the "Internet" is contrary to the patent specification
itself.

VPLM00196
2/9/2016 9:34:11 A

Private network definition is well supported by industry standard specifications, in particular: 
col. 1, lines 17-18

col. 13, lines 30-35

Additionally, Voip-Pal's assertion that the '815 patent is applicable to iMessage is contrary to the file history.
In distinguishing prior art, the applicant argued that the prior art taught searching a database using information
associated with the "callee" rather than the "caller" to determine where to route the call (public or private), whereas
the claims call for using the "caller" information to determine where to route the call. Voip-Pal's allegations against
iMessage fail to articulate how iMessage uses the "caller" information (in contrast to the "callee" information
distinguished during prior art) for routing.

In prior art, well before 2007, the decision on how to route the call was very basic, and based
only on “callee” number – because legacy PSTN was the only network at that time. We
developed and patented the system based on the then PSTN network. When multiple private
networks became available such as Apple servers network and Vonage network, it became
necessary to make routing decisions that consider both “caller” and “callee” identifiers.
It is not correct to say that ‘815 only “claims call for using the "caller" information to determine where to route
the call.” Instead, both “caller” and “callee” identifiers are used. They relate not only to numbers
as identifiers, it is far more encompassing and can take the form of email or SIP addresses like
[e-mail].  Using both identifiers is well summarized in
specification:
col. 14, lines 25-34
iMessage application on the iPhone obviously knows own phone (‘caller’) number and Apple ID.
At call initiation, it obtains from user the destination (‘callee’) identifier, for simplicity, in form of
legacy PSTN number. To learn the destination Apple ID, if any, and whether ‘callee’ is available
in Apple network or not, that number is communicated to Apple servers. Either servers make
routing decision and send message to destination, or they just provide ‘callee’ Apple ID
information back to enable the iPhone to make a routing decision and send message, or more
likely a complex combination of both – it doesn’t matter in view of ‘815 patent. ‘815 patent
includes Method and Process (claims 1 54) and Apparatus (claims 28 74 93) independent
claims, which can be implemented on server or on iPhone.

VPLM00197
2/9/2016 9:34:11 A

If ‘callee’ subscriber is available in the Apple network, he/she is in private network, same as
‘caller’ subscriber. So message is sent as a blue iMessage private-to-private. Either they are
on the same geographical node, or on different nodes, it doesn’t matter. Whether iMessage is
sent via server, or directly from ‘caller’ iPhone to ‘callee’ iPhone (since information is provided
by servers), it doesn’t matter. Previously called numbers and Apple IDs can be cached on the
iPhone. Part of the whole Apple subscriber database can be stored on iPhone or not, that’s
irrelevant. Routing decision to send message as private-to-private is made according to ‘815
patent:
col. 22, lines 27-33

If ‘callee’ subscriber is not achievable in the Apple network, so only legacy PSTN identifier is
available, message is sent as a green SMS message private-to-public. Either server makes
this decision and sends it via the SMS gateway, or that information about ‘callee’ is provided to
‘caller’ iPhone, and it makes routing decision and sends SMS message via its own cellular
provider. It is probably a more complex combination of both, but it doesn’t matter. The routing
decision to send message as private-to-public is made according to ‘815 patent:
col. 22, lines 61-67

The above noted deficiencies are just some of the non-limiting examples that illustrate why the '815
patent is not applicable to iMessage, or other Apple products and services, such as FaceTime.

The same arguments noted above are applicable to Facetime and Facetime Audio, with the
exception that currently both applications run calls between private subscribers, while iMessage
can send SMS to legacy PSTN network. Any telephony application, from Bell’s time, has two
components: signaling (ring in the past) and media (actual conversation). Media these days
includes very different content: audio, video, text and multimedia messages, etc. Signaling, in
the early days of PSTN, served only to set up the call and tear it down. ‘815 patent obviously
deals with signaling, no matter what kind of media will be exchanged – audio, video or text.

VPLM00198
2/9/2016 9:34:11 A

Facetime and Facetime Audio setup private to private communication, assuming callee number
has associated Apple ID (registered by user or auto-generated from the phone number). From
call setup perspective, they make the same decision to route call private-to-private, as disclosed
in ‘815 patent.
See these claims, for references to private networks, on the same and different geographical
nodes:

B.

'566 patent

Voip-Pal also contends that '566 patent is applicable to Apple's WiFi calling technology. We do not see any
correlation between claims of the '566 patent and WiFi calling. The claims of the '566 patent include numerous
limitations, yet Voip-Pal does not explain how any of the limitations are purportedly satisfied by WiFi calling. For
example, each claim of the '566 patent, among other things, requires a record containing a caller and callee RTP port
identifier that identifies a port on each side of a media relay server through which the RTP transmissions pass. We do
not see how this basic limitation is satisfied by Apple's WiFi calling feature. Similarly, we do not see how the other
numerous limitations are satisfied by the WiFi calling technology. Therefore, we do not believe the '566 patent is
relevant to Apple's products or services.
C. '507, '805, '378, and '234 patents
Regarding the '507, '805, '378, and '234 patents, Voip-Pal does not allege that any particular claim of these
patents is applicable to any of the Apple products. Instead, the materials include only a table that makes only vague
reference that the patents "may be used," "will be used," or "not used, but will be beneficial to use" in Apple's
technology. Based on our initial review and the information you provided, we do not see how these patents are
relevant to any Apple technology.
II. Conclusion

VPLM00199
2/9/2016 9:34:11 A

For at least these reasons, we do not believe Apple needs a license to Voip-Pal's patents. If you disagree
with our assessment, please provide me with a detailed explanation and support for your positions, including detailed
claim charts explaining the basis for your assertion.

VPLM00200
2/9/2016 9:34:11 A

7B.

Attachment to E-Mail dated October 15 2014 - Prior Art Search

A table‐based explanation of
how VoIP‐Pal’s patents
extended the utility of the prior
art in Internet‐based telephony

The Centrality of VoIP‐Pal,
Inc.’s Patent Portfolio to
Effective Peer to Peer
Voice over Internet
Protocol Communication

Thomas and Thomas
Attorneys at Law
2740 East 1700 North
Layton, Utah 84040

Client Privileged Information

VPLM00201
2/9/2016 9:34:11 A

The prior art before the granting of the VoIP‐Pal patents provided a very limited set of processes for
accomplishing the peer‐to‐peer communications that are central to current IP‐based telephony,
social media and related web‐based communication. Professor Ed Candy, described systems
existing prior to the granting of the VoIP‐Pal patents as lacking ”access, interconnect, number
management, or comparable services.” Without the VoIP‐Pal patents, Professor Candy continues,
“Most subscriber numbers will be inaccessible and lack appropriate signaling conventions and
prescribed commercial interconnect agreements.”
The following tables, arranged chronologically by priority date, illustrate the fundamental nature of
the VoIP‐Pal patents by addressing two among the six major VoIP‐Pal patents and identify the
patents that constitute the major prior art prior to the VoIP‐Pal patents and describe the
functionality added through the VoIP‐Pal “Routing Billing and Rating” and “Mobile Gateway”
patents.
US 8,542,815
Routing Billing and Rating

Patent

Dates

Major Prior Art

Functionality Added by
VoIP Patents

US7068668,
US7486667,
US8125982,
US8724643,
US20030095539,
US20060251056,
US20090129566,
US20120113981,
US20140211789

Priority
date Jan 7,
2000

US 7068668 teaches a real‐
time interface between the
public switched telephone
network (PSTN) and an
Internet Protocol (IP) network
provides voice to data and data
Filing date
to voice conversion between
Jan 7, 2000
the PSTN and the IP network in
a seamless process. The
interface, which is a central
communication network,
Publication performs Class 5 switching
date Jun
between the PSTN and the IP
27, 2006
network, besides providing
enhanced services. Upon
receiving a call, the central
communication network
simultaneously routes the call
to a plurality of
preprogrammed numbers on
the PSTN and on the IP
network.

US 7068668 teaches a
real‐time interface
between a PSTN and an
IP system, but the role of
stored number is to
facilitate group broadcast
through a centralized
server. There is no
equivalent to the dialing
profile of US 8,542,815,
nor to the purposes and
effects of the
interoperable systems it
provides.

VPLM00202
2/9/2016 9:34:11 A

US 7995589,
EP1266516A2,
EP1266516B1,
US6934279,
US20060007940,
WO2001069899A2,
WO2001069899A3

US 7995589 teaches a method
and an apparatus of
transmitting voice over a data
network. The method
disclosed includes providing a
user interface in a control
Filing date
system for call control and to
Aug 23,
display information relating to
2005
a call session. The control
system communicates one or
more control messages (e.g.,
Publication Session Initiation Protocol or
date Aug 9, SIP messages) over the data
2011
network to establish a call
session with a remote device in
response to receipt of a
request through the user
interface. One or more
commands are transmitted to a
voice device associated with
the control system to establish
the call session between the
voice device and the remote
device over the data network.
A Real‐Time Protocol (RTP)
link may be established
between the voice device and
the remote device.

Although US 7995589
teaches a method and an
apparatus of
communicating over a
data network, it does not
disclose the single
number as part of a
seamless sophisticated
international database
and the associated
routing, billing and rating
functions disclosed by US
8,542,815.

US7400881,
CN101069390A,
CN101069390B,
EP1829300A1,
EP1829300A4,
EP1829300B1,
US20060142011,
WO2006067269A1

Priority
date Dec
23, 2004

Although the
international mobile
subscriber identity
taught in US 7400881
involves a database with
some limited
resemblance to the caller
dialing profiles of US
8,542,815 , the
information in the
database record is far
less comprehensive than
that of patent US
8,542,815 and the use of
the database solely
involves allocating a
roaming local number to
allow for local rates to be
charged to the

Priority
date Mar
13, 2000

Filing date
Apr 14,
2005

Pub date
Jul 15,
2008

US 7400881 teaches a method
for routing calls and messages
in a communication system. A
mobile station registers to a
call control node using a logical
name. The logical name is
mapped in a directory to an
international mobile
subscriber identity. The call
control node performs a
location update to a home
location register using the
international mobile
subscriber identity. The mobile
station is reached using a
called party number. As a
terminating call or message is
received to a core network, a
roaming number is allocated

VPLM00203
2/9/2016 9:34:11 A

for the mobile station, and the
call or message is routed to the
call control entity currently
serving the mobile station.

subscriber. It discloses
none of the routing,
rating or billing systems
of US 8,542,815 .

US 8204044 teaches a method
for receiving a request from a
first mobile device to invite a
second mobile device to
participate in a VoIP session.
The second device may be
Filing date
identified in the request by a
Sep 21,
network identifier. The
2009
network identifier is related to
a mobile IP (MIP) address of
the second device and a second
Publication IP address. An invitation is sent
date Jun
to the MIP address of the
19, 2012
second device which may
include a MIP address of the
first device and a first IP
address. A response to the
invitation may be received
from the second device. The
response may be modified to
include a first IP header that
includes the MIP address of the
second device and a second IP
header to include the second IP
address. The modified
response is forwarded to the
first device. After receipt of the
modified response, the first
device is configured to
establish an IP connection for
VoIP communication with the
second device.

US 8204044 teaches a
method that includes a
“network identifier”
related to a mobile IP
address which appears to
serve one of the functions
of the dialing profile of
US 8,542,815. However,
the network identifier is,
at most, a single element
of the database that
comprises the dialing
profile. Functionally this
patent discloses only a
small part of the routing
and none of the rating
and billing disclosed in
US 8,542,815.

US 7664495 teaches systems
and methods that provide a
single E.164 number for voice
and data call redirection and
telephony services such as
caller identification, regardless
of in which type of network a
dual mode mobile device
operates. When the dual mode
device registers and is active in

The use of a single E.164
number for a dual mode
mobile device, as taught
in US 7664495, has some
similarity to the
assignment of a single
number in US 8,542,815,
but the nature of the
database and the
interoperability of the

US8204044,
CN101095329A,
CN101095329B,
CN102833232A,
DE112005003306T5,
US7593390,
US8605714,
US20060146797,
US20100008345,
US20120250624,
WO2006072099A1

Priority
date Dec
30, 2004

US 7664495,
US20100105379

Priority
date Apr
21, 2005

Filing date
Dec 5,
2005

VPLM00204
2/9/2016 9:34:11 A

a GSM network, temporary
routing and status updates are
Publication triggered and resultant
date Feb
information is maintained in
16, 2010
both networks. A mobile
terminated call is routed
through an enterprise WLAN
with call control within the
enterprise being handled by
SIP or H.323 signaling, and the
call is redirected to the mobile
device in the GSM network,
where call control is assumed
by the SS7 network. Services
are provided using the
protocols native to the active
network and the single E.164 is
used consistently along with or
lieu of the temporary routing
information for subscriber
identity specific functions, such
as caller identification and
voice mail.

system lack the
sophistication and
refined transactional
functions, including the
capacity for billing and
rating that are disclosed
in US 8,542,815.

Patent

Dates

Major Prior Art

Functionality Added by
VoIP Patents

CA2299037 A1,
EP1032224A2,
EP1032224A3

Priority
Date Feb
22, 1999

CA2299037 teaches a method
allowing a user to set up
landline calls using a mobile
telephone. A user initiates
outgoing calls by inputting into
the mobile phone the phone
numbers of a remote phone of
a called party and a local
landline phone convenient for
use by the user. A message
containing these phone
numbers is sent by the mobile
telephone to a remote
telephone call origination
platform, which establishes a

CA2299037 does teach
some of the fundamental
processes of US8630234.
For example, it teaches
sending two telephone
numbers through a data
network to a RTCO
platform in order to
make the
communication; whereas
US8630234 teaches a
method and apparatus by
which an access server
selects a access code that
is within the same

US8630234
Mobile Gateway

Filing Date
Feb 21,
2000
Pub Date
Aug 22,
2000

VPLM00205
2/9/2016 9:34:11 A

network or locality of the
callee identifier in order
to make the call. Nor
does it teach an access
code request message
that comprises the callee
identifier and a location
identifier associated with
the location of the mobile
telephone. Nor does it
teach transmitting this
request through non‐
voice network. Nor does
it teach an access code
reply message comprised
with a temporary access
code different from the
callee identifier and
associated a location
identifier.
US20080187122 A1 fails
Priority
US20080187122 A1 teaches
to provide the
Date Jan 20, how to provide a globally
2005
useful telephone number a URI fundamental
character string which may be functionality of
US8630234 because it
Filing Date similar to an email address
does not teach an access
may be provided to a mobile
Jan 17,
code request message
phone server or an internet
2006
that comprises the callee
server for translation to the
identifier and a location
actual phone number and
Pub Date
identifier associated with
Aug 7, 2008 establishment of a call to that
the location of the mobile
number.
telephone. Nor does it
teach transmitting this
request through non‐
voice network. Nor does
it teach a pool of access
codes affiliated with
different localities in
order to make local calls
to callees. Nor does it
teach an access code
reply message comprised
with an temporary access
code different from the
callee identifier and
associated a location
identifier.
bridging connection between
the remote phone and the local
phone. An incoming call is
received by signaling the user
of an incoming call on the
mobile phone. The user inputs
the number of a convenient
landline phone into the mobile
phone, which in turn signals
the remote telephone call
origination platform to
forward the incoming call to
the designated landline phone.

US20080187122 A1,
WO2006078175A2,
WO2006078175A3

VPLM00206
2/9/2016 9:34:11 A

US7929955 B1,
US20110201321

Priority
Date Apr
28, 2006
Filing Date
Apr 28,
2006
Pub Date
Apr 19,
2011

US20080167039 A1
US20080166999,
US20080167019,
US20080167020,
US20080188227,
WO2008085614A2,
WO2008085614A3,
WO2008085614A8,
WO2008086350A2,
WO2008086350A3

Priority
Date Jan 8,
2007
Filing Date
Nov 30,
2007
Pub Date
Jul 10, 2008

While US7929955
teaches selecting a CLI
from plurality of CLIs
much as US8630234
teaches selecting an
access code from a pool
of access code, it does not
teach an access code
request message that
comprises the callee
identifier and a location
identifier associated with
the location of the mobile
telephone. Nor does it
teach transmitting this
request through non‐
voice network. Nor does
it teach a pool of access
codes affiliated with
different localities in
order to make local calls
to callees. Nor does it
teach an access code
reply message comprised
with a temporary access
code different from the
callee identifier and
associated a location
identifier.
US20080167039 A1 teaches a US20080167039
discloses significantly
method of providing a local
access number to a subscriber less functionality than
US8630234. It does not
may include receiving
teach transmitting an
subscriber locale information
access code request
indicating a location of a
message, potentially
subscriber, mapping the
through a non‐voice
subscriber locale information
network, that comprises
to one or more local access
numbers, identifying, from the the callee identifier and a
location identifier
one or more local access
associated with the
numbers, a local access
location of the mobile
number corresponding to the
telephone; and accessing
subscriber locale information
and transmitting the identified code reply message
comprised with an
local access number to the
temporary access code
subscriber's mobile device.
different from the callee
Although this patent teaches

US7929955 B1 teaches a
method comprising a receiver
component that receives a call
request. The call request
originates from a mobile
handset that is associated with
multiple numbers. An analysis
component analyzes the call
request and selects a caller line
identification (CLI) from
amongst a plurality of CLIs to
provide to a called party that is
a subject of the call request.
For instance, the mobile
handset and/or a network
server can comprise the
receiver component and/or
the analysis component.

VPLM00207
2/9/2016 9:34:11 A

US8605869 B1

providing local access
numbers to subscribes using
mobile devices through
receiving the subscribers
locale information and
mapping it to access numbers
and transmitting the local
access number to the mobile
device.
Priority
US8605869 B1 teaches a
Date Aug 8, method comprising a caller
2008
may specify a callee's
telephone number and be
Filing Date connected directly to a carrier
Aug 8, 2008 provided voice mail facility
associated with the identified
Pub Date
the telephone number, even
Dec 10,
though the callee's carrier may
2013
not be the same as the caller's
carrier. In the disclosed
technique, a telephony server
places a “Send a call” request to
a server which then sends a
signaling call that busies out
the channel associated with the
callee. The telephony server
places a second call (the actual
voice message) upon
confirmation that the signaling
call has been initiated, forcing
the second call to the carrier's
voice mail facility associated
with the callee, since the first
signaling call busied the first
channel.

identifier and the
associated location
identifier.

US8605869 does not
provide the functionality
of US8630234 because it
does not teach how to
send a long distance call
using a mobile device
with the following steps:
transmitting an access
code request message
that comprises the callee
identifier and a location
identifier associated with
the location of the mobile
telephone; selecting an
access code from a pool
of access codes affiliated
with different localities in
order to make local calls
to callees; accessing code
reply message comprised
with an temporary access
code different from the
callee identifier and
associated a location
identifier.

VPLM00208
2/9/2016 9:34:11 A

7C.

Attachment to E-Mail dated October 15 2014 - '815 Patent

US008542815B2

(12) United States Patent
Perreault et a].

(54)

US 8,542,815 B2

(10) Patent N0.:
(45) Date of Patent:
(58)

PRODUCING ROUTING MESSAGES FOR
VOICE OVER IP COMMUNICATIONS

Sep. 24, 2013

Field of Classi?cation Search
USPC

......................... .. 379/14204, 220.01*221.06

See application ?le for complete search history.

(75) Inventors: Clay Perreault, Panama City (PA);

(56)

Steve Nicholson, Hamilton (NZ); Rod
Thomson, North Vancouver (CA);

References Cited
U.S. PATENT DOCUMENTS
4/1990 Katoh

Johan Emil Viktor Bjorsell, Vancouver

(CA); Fuad Arafa, Vancouver (CA)

4,916,491 A

4,992,971 A *

2/1991

(73) Assignee: Digifonica (International) Limited,

(Continued)

Vancouver (CA)
Notice:

FOREIGN PATENT DOCUMENTS

Subject to any disclaimer, the term of this
patent is extended or adjusted under 35

CA
EP

2249668
1 389 862 A1

U.S.C. 154(b) by 853 days.

(21) Appl. No.:

Hayashi ...................... .. 717/140

4/1999
2/2004

(Continued)
OTHER PUBLICATIONS

12/513,147

Supplementary European Search Report for European Application

(22)

PCT Filed:

Nov. 1, 2007

(86)

PCT No.:

PCT/CA2007/001956

§ 371 (0X1)’
(2), (4) Date:

Mar. 1, 2010

No. 07816106 dated Jun. 18, 2012.

(Continued)
Primary Examiner * Simon Sing
(74) Attorney, Agent, or Firm * Knobbe Martens Olson &

Bear LLP

(87)

PCT Pub. No.: WO2008/052340

(57)

PCT Pub. Date: May 8, 2008

ABSTRACT

A process and apparatus to facilitate communication between

(65)

Prior Publication Data

US 2010/0150328 A1

callers and callees in a system comprising a plurality of nodes
with which callers and callees are associated is disclosed. In
response to initiation of a call by a calling subscriber, a caller
identi?er and a callee identi?er are received. Call classi?ca
tion criteria associated with the caller identi?er are used to
classify the call as a public network call or a private network

Jun. 17,2010

Related US. Application Data

(60)

Provisional application No. 60/856,212, ?led on Nov.

call. A routing message identifying an address, on the private
network, associated with the callee is produced when the call

2, 2006.

is classi?ed as a private network call and a routing message

(51)

Int‘ Cl‘

(52)

H04M 7/00
US. Cl.

identifying a gateway to the public network is produced when
(200601)

the call is classi?ed as a public network call.

USPC ............................... .. 379/221.02; 379/142.04

f2]

111 Claims, 32 Drawing Sheets

mull"!

Controller

(21%)

‘

DB Request

RC Ruining

,
..

T178“

Back to am User

s?ystlelslr

/

111

—

118.119

Agent i141’ Proxy

114,116

mus

Sammy

None
_

Shaw

“1,,- ywnr \_=
:’

“18118

<._-

1

H

E

vm.vvr.11igifnni|:a.cum

119 Request Message 112
Call cormlar lcc)

“M11310”

Database

DB Response

'

MB
1a

_

Gateway

2U

a

“ ....

Swim

Gateway
1

SIP
12

Invlte

l5

192.188.11.20

2001 1050 2222

2001 1050 8667

Calgary

VPLM00209
2/9/2016 9:34:11 A

US 8,542,815 B2
Page 2
References Cited

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A
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2007/0127676 A1 *

2007/0253418
2008/0037715
2008/0056235
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2009/0325558
2010/0086119

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Mussman et al.

4/2005 Grabelsky et al.
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2/2007
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Truesdale et a1.
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6/2007 Khadri ................... .. 379/2ll.02

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12/2009
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W0
E50

WO 2007/044454 A2

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W0 2008/052340 A1

5/2008

6,073,013 A

6/2000 Ajére 6‘ *4

W0

W0 2008/064481 A1

6/2008

6,078,647 A *

6/2000 D Eletto .................. ~~

W0

WO 2008/116296 A1

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$1
,

,

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6,674,745
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6,744,858
6,766,159
6,798,767
6,819,929

B1
B1

EeiTh et a1~
es ey

8/2001 Voit

10/2001 Gardell et a1~
2/2002 Galvin et a1~
3/2002 Curry et a1~

8/2002
1/2003
B1
7/2003
B1
1/ 2004
B2
4/ 2004
B1
6/2004
B2
7/ 2004
B1 *
9/
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B2
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Schuster et al.
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Alexander et al. .......... .. 370/352
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FOREIGN PATENT DOCUMENTS

4/2007

OTHER PUBLICATIONS
F. Baker et al. “RFC 39244Cisco Architecture for Lawful Intercept
in IP Networks.” Oct. 2004.

Cisco. “Lawful Intercept Requirements Summary.” http://www.faqs.

org/rfcs/rfc3924.html. Nov. 8, 2006.
Si

SIP B2BUA. “About Si

(“gig/U1, 15, 2009,

ppy

RT

Pp

roX ” ht

y

tp

://www.rt

pp

roX .

y

ETSI Technical Speci?cation. “Lawful Interception (LI); Handover
Interface and Service-Speci?c Details (SSD) for IP delivery; Part 5:
Service-speci?c details for IP Multimedia Services.” Apr. 2008, 25
pgs, v2.3.1, France,
M. Handley et al. “RFC 2543iSIP: Session Initiation Protocol”
Mar. 1999.
The International Search Report and Written Opinion of the Interna
tional Searching Authority completed Jun. 6, 2008 for related PCT/
CA2008/000545.
The International Search Report and Written Opinion of the Interna
tional Searching Authority completed Feb. 6, 2008 for corresponding
PCT/CA2007/001956.

VPLM00210
2/9/2016 9:34:11 A

US 8,542,815 B2
Page 3
The International Preliminary Report on Patentability mailed May
14, 2009 for corresponding PCT/CA2007/001956.
The International Search Report and Written Opinion of the Interna
tional Searching Authority completed Mar. 3, 2008 for related PCT/

The International Preliminary Report on Patentability issued on Sep.
29, 2009 for PCT/CA2008/000545.
The International Preliminary Report on Patentability issued on Mar.
20, 2012 for PCT/CA2009/001317.

CA2007/002150.

ToWnsley, et al.; “RFC 2661iLayer TWo Tunneling Protocol
‘L2TP’”, Aug. 1999.
IP2Location, http://WWW.ip2location.com/; printed Jun. 20, 2012.
DOTS IP Address Validation, “Overview”, http://WWW.

The International Preliminary Report on Patentability mailed Feb.
13, 2009 for related PCT/CA2007/002150.
The International Preliminary Report on Patentability and Written

Opinion of the International Searching Authority mailed Feb. 10,

serviceobj ects.com/products/dotsiipgeo.asp; printed Jun. 21, 2012.

2011 for related PCT Application No. PCT/CA2009/001062, Feb.

List of North American Numbering Plan area codes, http://en.

10, 201 1 .

Wikipedia.org/Wiki/ListiofiNANPiareaicodes; printed Jun. 20,

The International Preliminary Report on Patentability mailed Feb.
13, 2009 for corresponding PCT/CA2007/002150.
The International Preliminary Report on Patentability mailed May
14, 2009 for related PCT/CA2007/001956.
The International Search Report and Written Opinion mailed on Mar.
12, 2010 for corresponding PCT Application No. PCT/CA2009/

2012.

com/demos/PhoneExchangeDemo.asp (URL no longer valid, cur
rent URL is http://WWWserviceobjects.com/products/phone/phone

001062.

Jun. 2002.

The International Search Report and Written Opinion of the Interna
tional Searching Authority completed Feb. 6, 2008 for related PCT/
CA2007/001956.
The International Search Report and Written Opinion of the Interna

Lind AT&T S: “ENUM Call FloWs forVoIP Interworking; draft-lind

VoIP and Other IP Communications: “Numbering for VoIP and other

tional Searching Authority completed Jun. 6, 2008 for corresponding

IP Communications, draft-stastny-enum-numbering-voip-OO.txt”,

PCT/CA2008/000545.
The International Search Report completed on Mar. 3, 2008 for

Oct. 1, 2003, pp. 1-43.

corresponding PCT/CA2007/002150.
The Written Opinion and International Search Report completed on
Jun. 17,2010 for related PCT Application No. PCT/CA2009/001317,
Jun. 17,2010.

DOTS Phone Exchange, “Overview”, http://WWWserviceobjects.
exchange); printed Jun. 21, 2012.
Rosenberg, et al.; “RFC 3261iSIP: Session Initiation Protocol”,

enum-call?oWs-03.txt”, Feb. 1, 2002, No. 3, pp. 1-17.
IETF ENUM WG R Stastny OEFEG Informational Numbering for

EPO, Supplementary European Search Report, dated Nov. 2, 2012,
Application No. 078554367, corresponds to US. Appl. No.
12/5 17,026.

* cited by examiner

VPLM00211
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VPLM00212
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US. Patent

Sep. 24, 2013

Sheet 2 0f 32

US 8,542,815 B2

Phone

Temporary

Program
Memory
34
Username

63
E
(“Dali/L

(2001 1050 8667)
Password

/

30 M9216’ [y

/
Firewall

Dialed #

5_6
ca" 10

E
Audio Path IP

.51

Address
?

SIP Proxy Add

M
53
\“

IP Address
(192.168. 0.20)

NP
Q
\

J

Parameter

48 Internet Connection

Meggory

>

46

1;? Li?dset
—

42

_r’—

Dialing Functions

e

FIG. 2

VPLM00213
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US. Patent

Sep. 24, 2013

Sheet 3 0f 32

US 8,542,815 B2

SIP Invite Message
60~ Caller 2001 1050 8667

BZN Callee 2001 1050 2222

64~ Digest Parameters XXXXXXX
65~ Call I0 FF10@ 192168.020
67~ IP Address 192168.020
69M Caller UDP Port 1

FIG. 3

A/100

Call Controller (14)
SIP Invite to
RC 16

1_2_0

104

Routing to

Gateway

1_2_2_
i

no
E
"9

From Gateway

"8
V0

‘

SIP To Phone ‘

114

Log
SIP From Phone

To VM

'

To Gateway :
"0

To RC

‘

FIG. 4

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Sep. 24, 2013

Sheet 4 or 32

US 8,542,815 B2

C8" COIIUOIIBT PI'OCBSS

/120

Receive SIP Invite

Message

Error Handling

Authenticate

Caller ID
Field Contents=
IP Address?

g

Set Type =

3"1 Party Invite

L2;
4

i

Establish Call ID

@
Prepare RC Request

Message
13

Send RC Request

Message
12_9

FIG. 5

VPLM00215
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Sheet 5 0f 32

US 8,542,815 B2

[150

RC Request Message
152~Caller 2001 1050 8667
154~Callee 2001 1050 2222

156*» Digest XXXXXXX
158~Call ID FF10@ 192168.020
160~Type Subscriber

FIG. 6

207\

Routing Controller (16)
209

200

Cam" I“

“in

Program

RC Request

Callee 10

~

Memory

Message

2%

Handler

Retrieved

Dialing Profile
can Tm Hag
Subscrlber

/

2Q
up

Bundle Record

Username To Domain Table

202

Bundle Override

2206

_

Record

DB Response 21:2
RC Request 21:4

I/O
m

1210 DB Request
2116 Routing Message

FIG. 7

VPLM00216
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Sep. 24, 2013

Sheet 6 0f 32

US 8,542,815 B2

RC Request Message Handler

250\

T

Store contents of RC

[259
Send error

W252

request message in buffer
N

_ l

message to call
controller

_

_

Use caller held to get dialing
profile for caller from P254
database

Subscriber

_

username has same preflx
as caller node‘?

Increment current
concurrent call field

of dialling profile

faoz
Set call type

\

Use callee field to get
dialing profile for

=cross domain

r350
Load routing message
with contents of
caller, callee from BC
request and set route

l

/602

Get call forward, call
block and voicemail
tables from database

= IP address or

domain of callee's;

[610

super node
TTL=99999

Send drop call
message to call
controller

/381
Send routing message
to call controller

A509 @D

Store username and

domain of callee in routing
message buffer
End

/622
Load caller buffer

with 18 CF entries

FIG. 8A

VPLM00217
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Sheet 8 0f 32

US 8,542,815 B2

r640
Store voicemail server
address and seconds

in routing message
buffer

r642
Get TTL (in sec)
based on cost of

routing and user's
balance store in

routing message
buffer

/644
Store address of
current node in

routing message
buffer

i

/646

Send routing
message to call
controller

@
FIG. SC

VPLM00219
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US. Patent

Sep. 24, 2013

Sheet 9 0f 32

?

US 8,542,815 B2

/412

Get supplier ID codes
from supplier tables
based on master

list ID
‘

r560

Load prefix field with

supplier prefix

r562
Load callee field with
modified callee
number for

corresponding supplier
r563
Load route field with
route identifier

564
Get TTL based on

routing cost
+

Store TTL and
timeout value in

A556

routing message
buffer

Repeat

571

until all suppliers
considered?

[568
Send routing message

( End )
FIG. 8D

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US 8,542,815 B2

Sheet 10 0f 32

[253

Dialing Profile for a User
258~Username
26U~Domaln
262~NDD
264~IDD

Assigned on Subscription

268~Caller Minimum Local Length
270~Caller Maximum Local Length

10
10
Retailer
Assigned on Subscription
Assigned on Subscription

Romain Associated with User
011

266~Country Code 1
267~ Local Area Codes 604;778

273*» Reseller
275~ Maximum # of concurrent calls
277~ Current # of concurrent calls

FIG. 9

Dialing Profile for Caller (Vancouver Subscriber)
61

284 £63 A A
70 74
A
258~Usemame

f

276

.Z.9!..1....1..£l5.il.i3§?.Z ....... ._

260~Domam ispluiufidioiib019mm?s»282
262~NDD 1 E86 \ \
264~IDD

266~Country Code
267~Local Area Codes
268~Caller Mlnlmum Local Length
270~Caller Maximum Local Length
273/» Reseller
275~ Maximum # of concurrent calls
277~ Current # of concurrent calls

011

288

290

i
604;778 (Vancouver)
10
10
Klondike
5
0

FIG. 10

VPLM00221
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Sep. 24, 2013

Sheet 11 0f 32

US 8,542,815 B2

Callee Profile for Calgary Subscriber
Username
Domaln
N00
100

Country Code
Local Area Codes

Caller Mlnlmum Local Length
Caller Maximum Local Length
Reseller
Maximum # of concurrent calls
Current # of concurrent calls

2001 1050 2222

spyvrdigifonicacom
$11
403 (Calgary)
10
Deerfoot
5
0

FIG. 11

Callee Pro?le for London Subscriber
Username
Domaln
N00
100

4401 1062 4444

gplhrrligitonicacom

Country Code 44
20 (London)

Local Area Codes

Caller Minimum Local Length
Caller Maximum Local Length
Reseller
Maximum # of concurrent calls
Current # of concurrent calls

10
11
Marble Arch
5
0

FIG. 12

VPLM00222
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Sheet 12 0f32

US 8,542,815 B2

/278
DID Bank Table Record Format
281 NUsername
272~User Domaln
274~ DID

System subscriber
Host name of supernode
E164#

FIG. 13

61

A/300

DID Bank Table Record for Calgary Subscriber
281~Username {27001 1050 2222

272~Userl10main ..$n.-.y..v..[oioitooioas?m
274*’ DID {15.69.4555.52553‘???

zéz/ 2287

2289

FIG. 14

VPLM00223
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Sheet 13 0f 32

US 8,542,815 B2

/352
Routing Message Format
354~ Supplier Prefix ,optlonal Code identifying supplier traffic
356~ Dellmlter optional

Symbol separating fields

358~Callee

PSTN compatible number or Digifonlca number

360~Route

Domain name or IP address

362~ Time to LlvelTTLl
364~0ther

In seconds
TBD

FIG. 15

[366
Example of Routing Message - Different Node

[e-mail];ttl=9999
\

Y

J

k

Y

359

J Q ,__J

361

363

FIG. 16

A/370
Prefix to Supernode Table Record Format
372~ Prefix
374~ Supernode Address

First n digits of callee identifier
IP address or fully qualified domain name

FIG. 17
Prefix to Supernode Table Record for Calgary Subscriber
Prefix

20

Supernode Address sp.yvr.digifonica.com

FIG. 18

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Sheet 14 0f 32

US 8,542,815 B2

Master List Record Format
500~ ml_id
Alphanumeric
502"» Dialing code
Number Sequence
504*» Country code

The country code is the national prefix to be
used when dialing T0 a particular country
FROM another country.

506*» Nat Sign #(Area Code)

Number Sequence

508'» Min Length
510~ Max Length

Numeric
Numeric

512~ NDD

The N00 prefix is the access code used to
make a call WITHIN that country from one city

to another (when calling another city in the
same vicinity, this may not be necessary).
514*" IDD

The 100 prefix is the international prefix
needed to dial a call FROM the country listed
T0 another country.

516*» Buffer rate

Safe change rate above the highest rate

charged by suppliers

FIG. 19

Example: Master List Record with Populated Fields
ml_id
Dialing code
Country code

Nat Sign #(Area Code)

1019
1604
1

604

Min Length
Max Length

7
7

NDD
I00

1
011

Buffer rate

$0.009lmin

FIG. 20

VPLM00225
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Sheet 15 0f 32

US 8,542,815 B2

Suppliers List Record Format
540» Sup_id
542'» Ml_id

Name code
Numeric code

544/» Prefix (optional)

String identifying supplier's traffic #

546» Specific Route
548'» NDDIIDD rewrite

IP address

550~ Rate

Cost per second to Digifonica to use this route

551 ~ Timeout

Maximum time to wait for a response when

requesting this gateway

FIG. 21
Telus Supplier Record
Sup_id
2010 (Telus)
Ml_id

1019

Prefix (optional)

4973#

Specific Route
NDDllDD rewrite
Rate
Timeout

7264.39.58
011
$0.02Imin
20

FIG. 22
Shaw Supplier Record
Sup_id
2011 (Shaw)
Ml_id

1019

Specific Route
NDDIIDD rewrite
Rate

7365.40.59
011
$0.025Imin

Timeout

30

Prefix (optional)

4974#

FIG. 23
Sprint Supplier Record
Sup_id
2012 (Sprint)
Ml_id

1019

Specific Route
NDDIIDD rewrite

74.66.41.60
011

Rate

$0.03Imin

Timeout

40

Prefix (optional)

4975#

FIG. 24

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US. Patent

Sep. 24, 2013

Sheet 16 0132

US 8,542,815 B2

Routing Message Butter for Gateway Call

FIG. 25
Call Block Table Record Format
604~ Username Digifonica #
606~ Block Pattern

PSTN compatible or Digifonica #

FIG. 26
Call Block Table Record for Calgary Callee
604/» Username of Callee
606*» Block Pattern

2001 1050 2222
2001 1050 8664

FIG. 27
Call Forwarding Table Record Format for Callee
614*» Username of Callee
616~0estination Number

618~Sequence Number

Digitonica #
Digifonica #
Integer indicating order to try this

FIG. 28
Call Forwarding Table Record for Calgary Callee
614~Username of Callee
616~0estinatlon Number

618~ Sequence Number

2001 1050 2222
2001 1055 2223

1

FIG. 29

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US. Patent

Sep. 24, 2013

Sheet 17 0132

US 8,542,815 B2

Voicemail Table R900"! Format
624*» Username of Callee Digifonica #
626~ Vrn Server

628~Seconds to Volcemall

domain name

time to wait before engaging voicemail

630*» Enabled yeslno

FIG. 30
Voicemail Table Record for Calgary Callee
Username of Callee

2001 1050 2222

Vm Server vm.yvr.digifonioa.oom
Seconds to Voieemail
Enabled

20
1

FIG. 31

Routing Message Buffer - Same Node

650'» [e-mail];ttl=3600
652*» [e-mail];ttl=3600
654~ vm.yvr.digifonica.com;20;tt|=60
656~ sp.yvr.digifonica.com

FIG. 32

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8.

Apple Inc. / J Lasker E-Mail dated November 5 2014 w Letter Attachment 8A

Tom,
Please see the attached letter.
Regards,
Jeff
Jeffrey V. Lasker
Legal Counsel, IP Transactions
Apple
1 Infinite Loop, MS 169-3IPL
Cupertino, CA 95014, USA
Office 408-862-1377
[e-mail]

VPLM00268
2/9/2016 9:34:11 A

8A. Attachment to E-mail dated November 5 2014 - Response Letter

November 5, 2014

Via Email

Thomas E. Sawyer, Ph.D.
Chairman and CEO
Voip-Pal.com, Inc.
P.O. Box 900788
Sandy, Utah 84090
Email: [e-mail]
Re: Voip-Pal.com, Inc.
Dear Tom,
I write in response to your correspondence dated October 15, 2014, which
responds to my October 8, 2014 letter. As I have indicated previously, please direct all
future correspondence regarding this matter to my attention.
We appreciate your effort to focus the discussion to only the ‘815 patent instead
of the other Voip-Pal patents that are not relevant to any Apple technology for the
reasons expressed in my October 8, 2104 letter. We continue to believe that even the
‘815 patent is not applicable to any Apple products or services.
While I appreciate a quick response from your team regarding the ‘815 patent, I
do note that Voip-Pal still has not provided any claim charts explaining the basis of its
infringement assertion, even though I have now requested that information on multiple
occasions. If Voip-Pal disagrees with our assessment in this letter, I once again request
that you provide detailed claim charts that illustrate how Voip-Pal contends each claim
limitation is satisfied by Apple’s products or services.
We have carefully reviewed Voip-Pal’s response to the issues raised in my October
8 letter regarding the ‘815 patent, and continue to believe that Apple does not require a
license to Voip-Pal’s patents. We address each point raised in your correspondence
below.
In my October 8, 2014 letter, I pointed out that all of the claims of the ’815 patent
are directed to routing telephone calls, as opposed to an instant messaging service such
as iMessage. In response, you assert that the claims are directed to “communication” in
general, and not limited to “calls.” In particular, you cited to the following claim language
(emphasis original):
Apple Inc.
Jeffrey V. Lasker
1 Infinite Loop, MS 169-3IPL
Cupertino, CA 95014
[phone]
jlasker @apple.com

VPLM00269
2/9/2016 9:34:11 A

There are several issues with your response. First, your cited text selectively focuses on one word (“communication”) in the claims, but otherwise completely ignores
the surrounding text. As an initial matter, the claim itself is directed to a process for operating a “call” routing controller to facilitate communication between “callers and
callees” (i.e., a person that makes the telephone call and the person that receives the telephone call). Moreover, your response completely ignores the very next claim limitation
following your cited passage (emphasis added):

As can be seen by the highlighted text, the “receiving” limitation is performed in
response to initiation of a “call.” There are similar “call” related limitations in each of the
other limitations of the claim. Thus, the claim (and all the other claims) of the ‘815 patent
are directed to routing telephone calls. In your letter, you contend that the claims are not
limited to voice calls, but can also include data. But even if calls can include data, that
does not mean that all data transmissions are necessarily “calls.” Indeed, text messaging
is not a “call.” If you have any other basis for alleging the claims are not limited to “calls,”
please let us know so that we can consider your basis.
In my October 8, 2014 letter, I pointed out that Voip-Pal fails to articulate how
iMessage uses the “caller” information for routing, in contrast to the “callee” information
distinguished during prior art. Voip-Pal’s response misconstrues our position when it
states that “[i]t is not correct to say that ‘815 only claims call for using the ‘caller’ information to determine where to route the call.” (emphasis added). Our position is that
even though the Applicant specifically argued during prosecution that the claimed invention routes calls, among other things, based on the “caller” information, your allegations
against iMessage fails to identify any “caller” information that is used. As such, Voip-Pal’s
response still continues to be deficient in this regard since it fails to identify what Voip-Pal
contends satisfies the “caller” information in iMessage.
In my letter dated October 8, 2014, I also pointed out Voip-Pal’s contention that
“Internet” is a “private” network runs contrary to the specification. In response, Voip-Pal
cites to several passages from the specification. But those passages only underscore the

2

VPLM00270
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point that the Internet is not a “private” network. In support of its contention, Voip-Pal
first cites the following passage (emphasis original):

This passage itself distinguishes between the Internet (which is public) and a private network. The other cited passage likewise does not support Voip-Pal’s contention
that the “Internet” is a “private” network. In particular, Voip-Pal cites the following passage (emphasis in the original):

The disjunctive use of “private IP network” and “Internet” in this passage underscores the point that the “Internet” is different from a “private” network. It does not suggest that the Internet is a private network.
Voip-Pal’s response also contends that the ‘815 patent is applicable to Facetime
and Facetime Audio for the same reasons as it is applicable to iMessage. In this regard,
Voip-Pal states that both Facetime “applications run calls between private subscribers,
while can send SMS to legacy PSTN network. In other words, Voip-Pal acknowledges that,
even under its own understanding, Facetime involves only a private-to-private connection and no “public” connection. In view of this, we fail to understand how the ‘815 patent can be applicable to Facetime, particularly since all of the claims call for classifying
the call as either a private network call or a public network call before taking an action.
While Voip-Pal cites to several dependent claims in its response (purportedly to show the
relevance of the ‘815 patent to Facetime), we note that all of those claims depend from
the independent claims that require classifying the call as either private or public network. As such, even these dependent claims include a claim limitation that is not applicable to FaceTime.

3

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For at least the reasons set forth above, we continue to believe that Apple does
not need a license to Voip-Pal's patents. If you disagree with our assessment and have
any additional information for us to consider (including detailed claim charts explaining
the basis for your assertion), please forward them to me for further consideration.
Regards,

Jeffrey V. Lasker
Legal Counsel, IP Transactions

4

VPLM00272
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9.

Email to Apple Inc. / J Lasker dated November 10 2014 w Attachment 9A

Thomas E. Sawyer <[e-mail]>

11/10/14

to Jeffrey
Jeff,
Please review the attached letter responding to you letter of November 5, 2014. You continue to
allege that Apple is not using any of the patented technology developed by Voip-Pal. I know that
it is part of your job as Apple's counsel for IP to take the position of not violating any patented
technology, but it seems obvious to independent expert consultants that Apple is using Voip-Pal's
technology. If we can agree to a mutual non-disclosure, non-compete, we can prepare the Chart of
Claims that you have requested. Without the specifics of the Apple functionality, we cannot be
certain of the claims validity.
I look forward to your response with technical input, rather than the meaning of a call, which
seems evident to all of both in-house senior technical staff and independent senior consultants
that have provided input on the matter.
Thanks and have a great week.
Dr. Thomas E. Sawyer

VPLM00273
2/9/2016 9:34:11 A

9A.

Attachment to E-Mail dated November 10 2014

Voip-Pal

One Number · One World
10900 NE 4th Street, Suite 2300
Bellevue, WA, 98004

November 10, 2014
Jeffrey V. Lasker
Legal Counsel, IP Transactions
Apple Inc.
1 Infinite Loop, MS 169-3IPL
Cupertino, CA 95014
Re: Letter of November 5, 2014
Dear Jeffrey,
In order to respond specifically to the issues raised in your letter of November 5, 2015, I have
reproduced sections from your letter and responses from our engineers (in green):
There are several issues with your response. First, your cited text selectively focuses on one word
(“communication”) in the claims, but otherwise completely ignores the surrounding text. As an initial
matter, the claim itself is directed to a process for operating a “call” routing controller to facilitate
communication between “callers and callees” (i.e., a person that makes the telephone call and the
person that receives the telephone call). Moreover, your response completely ignores the very next
claim limitation following your cited passage (emphasis added):

“Call,” “Caller,” “Callee”: this terminology refers to calls in general.
This is not specific to a telephone call, but any call, including messaging calls.
Therefore, any call (i.e., messaging call).

As can be seen by the highlighted text, the “receiving” limitation is performed in response to initiation of
a “call.” There are similar “call” related limitations in each of the other limitations of the claim. Thus, the
claim (and all the other claims) of the ‘815 patent are directed to routing telephone calls. In your letter,
you contend that the claims are not limited to voice calls, but can also include data. But even if calls can
include data, that does not mean that all data transmissions are necessarily “calls.” Indeed, text
messaging is not a “call.” If you have any other basis for alleging the claims are not limited to “calls,”
please let us know so that we can consider your basis.

VPLM00274
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Voip-Pal

One Number · One World
10900 NE 4th Street, Suite 2300
Bellevue, WA, 98004

In the past, messages like email were subject to deferred delivery. They were not calls by
today’s standards. Modern messages are transmitted instantly. They require signalling to
set up a communication session for transferring the message. Thus, by industry definition
this is a call.
In my October 8, 2014 letter, I pointed out that Voip-Pal fails to articulate how iMessage uses the
“caller” information for routing, in contrast to the “callee” information distinguished during prior art.
Voip-Pal’s response misconstrues our position when it states that “[i]t is not correct to say that ‘815 only
claims call for using the ‘caller’ information to determine where to route the call.” (emphasis added).
Our position is that even though the Applicant specifically argued during prosecution that the claimed
invention routes calls, among other things, based on the “caller” information, your allegations against
iMessage fails to identify any “caller” information that is used. As such, Voip-Pal’s response still
continues to be deficient in this regard since it fails to identify what Voip-Pal contends satisfies the
“caller” information in iMessage.

Given the scale of the current iMessage user base, Apple’s private network of
supporting servers is geographically and logically distributed, resulting in a multi-node
network. When setting up a message transfer, servers must decide whether caller and
callee are on the same node or different nodes. If they are on different nodes, the
servers must then determine the best path between the nodes. Therefore, the RBR
caller and callee identifier procedure is being applied.
In my letter dated October 8, 2014, I also pointed out Voip-Pal’s contention that “Internet” is a “private”
network runs contrary to the specification. In response, Voip-Pal cites to several passages from the
specification. But those passages only underscore the point that the Internet is not a “private” network.
In support of its contention, Voip-Pal first cites the following passage (emphasis original):

This passage itself distinguishes between the Internet (which is public) and a private network. The other
cited passage likewise does not support Voip-Pal’s contention that the “Internet” is a “private” network.
In particular, Voip-Pal cites the following passage (emphasis in the original):

VPLM00275
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Voip-Pal

One Number · One World
10900 NE 4th Street, Suite 2300
Bellevue, WA, 98004

The disjunctive use of “private IP network” and “Internet” in this passage under- scores the point that
the “Internet” is different from a “private” network. It does not suggest that the Internet is a private
network.

In a previous response, we have shown that the Internet consists of public networks.
Inside these public networks, private networks such as Facebook, Apple, Vonage,
Viber, etc are operating. The private networks that operate inside the public networks
consist of supporting servers, with which subscribers become associated.
For example, suscribers connect to the private network of Apple via public Internet
access through Verizon wireless.
Voip-Pal’s response also contends that the ‘815 patent is applicable to Facetime and Facetime Audio for
the same reasons as it is applicable to iMessage. In this regard, Voip-Pal states that both Facetime
“applications run calls between private subscribers, while can send SMS to legacy PSTN network. In
other words, Voip-Pal acknowledges that, even under its own understanding, Facetime involves only a
private-to-private connection and no “public” connection. In view of this, we fail to understand how the
‘815 pa- tent can be applicable to Facetime, particularly since all of the claims call for classifying the call
as either a private network call or a public network call before taking an action. While Voip-Pal cites to
several dependent claims in its response (purportedly to show the relevance of the ‘815 patent to
Facetime), we note that all of those claims depend from the independent claims that require classifying
the call as either private or public network. As such, even these dependent claims include a claim
limitation that is not applicable to FaceTime.

We agree that Facetime audio is only a private-to-private connection and no “public”
connection, but it still requires a call classification procedure in order to route the calls
in a multi-node enviroment. This functionality is covered by the 815 Patent.
For at least the reasons set forth above, we continue to believe that Apple does not need a license to
Voip-Pal's patents. If you disagree with our assessment and have any additional information for us to
consider (including detailed claim charts explaining the basis for your assertion), please forward them to
me for further consideration.

VPLM00276
2/9/2016 9:34:11 A

Voip-Pal

One Number · One World
10900 NE 4th Street, Suite 2300
Bellevue, WA, 98004

Voip-Pal engineers based part of their reports on publicly available information.
Your continued requests for Voip-Pal to provide Apple with detailed claim charts will
only be possible if you would disclose iMessaging architecture for our engineers to
review. Of course, Voip-Pal and its engineers will sign a mutual nondisclosure/confidentiality document with Apple prior to such disclosure.
iMessaging
Apple uses a cloud-based system within which decisions on routing text messages are
made. When text messages are routed from iPhone to iPhone their infrastructure ensures that
both devices - regardless of their phone number - route messages through the Internet. When
they see a text message from an iPhone to a phone number without an associated Apple ID,
they route the message through the phone network, rather than the Internet. This decisionmaking and routing where decisions are made on call (or message) routing based on subscriber
membership in a call plan through either an IP Network or through a phone network is exactly
the type of routing that is described in the RBR patent. We feel confident Voip-Pal has
demonstrated that the basic attributes of RBR patents are being utilized by Apple Messaging.
It appears that you, as legal counsel for Apple’s IP, are attempting to impede the obvious
conclusion that Apple is using Voip-Pal’s patented technology, more specifically RBR’s
functionalities.
It is hoped that this response, in conjunction with earlier correspondence, provides sufficient
evidence for Apple to acquire a license to Voip-Pal’s patented technologies, or to purchase the
patents.
Regards,

Dr. Thomas E. Sawyer
Director, Special Projects
Telephone: [phone]
Cell: 801.860.9944
Email: [e-mail]

VPLM00277
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10. Apple Inc. / J Lasker E-Mail December 22 2014 w Attachment 10A

From: Jeffrey Lasker <[e-mail]>
Date: Mon, 22 Dec 2014 08:11:07 -0800
Subject: Voip-Pal.com, Inc.
To: [e-mail] XMailer: Apple Mail (2.1990.1)
X-Brightmail-Tracker:
Tom,
Please see the attached letter.
I wish you happy holidays and a wonderful New Year.
Regards,
Jeff
Jeffrey V. Lasker
Legal Counsel, IP Transactions
Apple
1 Infinite Loop, MS 169-3IPL
Cupertino, CA 95014, USA
Office 408-862-1377
[e-mail]

VPLM00278
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10A. Attachment to E-Mail dated December 22 2014

December 22, 2014

Via Email

Thomas E. Sawyer, Ph.D.
Chairman and CEO
Voip-Pal.com, Inc.
P.O. Box 900788
Sandy, Utah 84090
Email: [e-mail]
Re: Voip-Pal.com, Inc.
Dear Tom,
I am in receipt of your letter dated November 10, 2014. After carefully reviewing VoipPal’s response, we remain unpersuaded that the ‘815 patent has any applicability to any
Apple products or services for the reasons expressed in my previous letters. Voip-Pal’s
continued inability to provide the requested claim charts only further underscores the
disconnect between the ‘815 patent’s claims and any Apple technology. Indeed, your
response concedes that Voip-Pal lacks the specifics of the Apple functionality, and, as
such, Voip-Pal “cannot be certain of the claims validity.” We are troubled by Voip-Pal’s
persistent allegations that the ‘815 patent is relevant to Apple technology despite (1) its
admission that it lacks the proper understanding of “the Apple functionality” and (2) its
own concerns regarding the claims’ validity.
You request that Apple share the iMessage architecture with Voip-Pal pursuant to a
mutual non-disclosure agreement. While we appreciate your offer, we do not believe
that is necessary or would be productive as the claims of the ‘815 patent themselves
demonstrate that the ‘815 patent has no applicability to iMessage, or even Facetime. As I
explained in detail in my October 8 and November 5 letters, multiple limitations of the
’815 are missing from iMessage and Facetime. Our conclusions are based on publicly
available information. For example, the publicly known fact that text messages of
iMessage are not telephone calls as required by the claims.

Apple Inc.
Jeffrey V. Lasker
1 Infinite Loop, MS 169-3IPL
Cupertino, CA 95014
[phone]
jlasker @apple.com

VPLM00279
2/9/2016 9:34:11 A

In view of our non-infringement positions, we believe any assertion against Apple would
be objectively baseless. Should you have any questions, please contact me.
Regards,

Jeffrey V. Lasker
Legal Counsel, IP Transactions

VPLM00280
2/9/2016 9:34:11 A

11. Letter to Apple dated November 30 2015 sent by Registered Post

VoIP‐Pal.com Inc. 
10900 NE Street, Suite 2300 
Bellevue, WA 98004 

Via E-mail: [e-mail]
and Registered Mail
November 30 2015
Apple Inc.
1 Infinite Loop, MS 169-3IPL
Cupertino, CA 95014
Attention: Jeffrey V. Lasker
Legal Counsel, IP Transactions

Re: VoIP-Pal.com Inc. Patent(s)
Dear Mr. Lasker:
I am the Chief Executive Officer of VoIP-Pal.com Inc. (VoIP-Pal). I am aware that there was
an exchange of communications between your colleague Ms. Denise Kerstein, yourself and Dr.
Thomas E. Sawyer, former Chief Executive Officer of VoIP-Pal, through the fall of 2014. This
letter is an update to that earlier communication.
Early last month, the United States Patent Office issued a continuation of our routing patent US
8,542,815. The continuation patent US 9,179,005 clarifies that routing of messaging and other
electronic communications are covered by US 8,542,815. For your convenience, I am also
including a table of VoIP-Pal patents.
Please feel free to contact me directly if you wish to initiate a conversation about these patents.
My contact information is as follows:
E-mail:
Telephone:
Address:

[e-mail]
[phone]
773 Hornby Street
Vancouver, BC V6Z1S4
Canada

VoIP‐Pal Letter to Apple, 11/30‐2015

1 

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VPLM00282
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VoIP‐Pal / Digifonica Active U.S. Patent Matters as of November 6, 2015 
Country 
Code 

Filing Date/ 
National Phase 
Entry Date 

Application/       
Patent Number 

Title\Subject 

File Status 

US 

05/03/2010 

8422507 

INTERCEPTING VOICE OVER IP COMMUNICATIONS AND 
OTHER DATA COMMUNICATIONS 

Issued  

US 

15/04/2013 

9143608 

INTERCEPTING VOICE OVER IP COMMUNICATIONS AND 
OTHER DATA COMMUNICATIONS 

Issued  

US 

17/07/2015 

14/802929 

INTERCEPTING VOICE OVER IP COMMUNICATIONS AND 
OTHER DATA COMMUNICATIONS 

Pending  

US 

01/03/2010 

8542815 

PRODUCING ROUTING MESSAGES FOR VOICE OVER IP 
COMMUNICATIONS 

Issued 

US 

13/08/2013 

9179005 

PRODUCING ROUTING MESSAGES FOR VOICE OVER IP 
COMMUNICATIONS 

Issued 

US  

17/09/2013 

9137385 

DETERMINING A TIME TO PERMIT A COMMUNICATIONS 

Issued 

US  

17/09/2013 

8774378 

ALLOCATING CHARGES FOR COMMUNICATIONS SERVICES 

Issued 

US 

07/07/2014 

14/325181 

ALLOCATING CHARGES FOR COMMUNICATIONS SERVICES 

Pending  

US 

14/09/2015 

14/853705 

DETERMINING A TIME TO PERMIT A COMMUNICATIONS 
SESSION TO BE CONDUCTED 

Pending  

US 

07/10/2015 

14/877570 

PRODUCING ROUTING MESSAGES FOR VOICE OVER IP 
COMMUNICATIONS 

Pending  

US 

05/03/2010 

8537805 

EMERGENCY ASSISTANCE CALLING FOR VOICE OVER IP 
COMMUNICATIONS SYSTEMS 

Issued  

US 

15/08/2013 

13/968217 

EMERGENCY ASSISTANCE CALLING FOR VOICE OVER IP 
COMMUNICATIONS SYSTEMS 

Pending  

US 

27/01/2011 

8630234 

MOBILE GATEWAY 

Issued 

US 

24/09/2013 

14/035806 

MOBILE GATEWAY 

Pending  

US 

16/03/2012 

8,675,566 

UNINTERRUPTED TRANSMISSION OF INTERNET PROTOCOL 
TRANSMISSIONS DURING ENDPOINT CHANGES 

Issued 

US 

27/11/2013 

9154417 

UNINTERRUPTED TRANSMISSION OF INTERNET PROTOCOL 
TRANSMISSIONS DURING ENDPOINT CHANGES 

Issued 

US 

17/07/2015 

14/802872 

UNINTERRUPTED TRANSMISSION OF INTERNET PROTOCOL 
TRANSMISSIONS DURING ENDPOINT CHANGES 

Pending  

VoIP‐Pal Letter to Apple, 11/30‐2015

3 

VPLM00283
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VoIP‐Pal / Digifonica Active Brazil, Canada, Europe, Indonesia, India Patent Matters 
as of November 6, 2015 
Country 
Code 

Filing Date/ 
National Phase 
Entry Date 

Application 
Number 

Title/Subject 

File Status 

BR 

04/05/2009 

PI0718312‐7 

PRODUCING ROUTING MESSAGES FOR VOICE 
OVER IP COMMUNICATIONS 

Awaiting Examination 

BR 

29/05/2009 

PI0719682‐2 

INTERCEPTING VOICE OVER IP 
COMMUNICATIONS AND OTHER DATA 
COMMUNICATIONS 

Awaiting Examination 

CA 

30/04/2009 

2668025 

PRODUCING ROUTING MESSAGES FOR VOICE 
OVER IP COMMUNICATIONS 

Allowed ‐ Issue Fee Due 
April 14, 2016 

CA 

25/05/2009 

2670510 

INTERCEPTING VOICE OVER IP 
COMMUNICATIONS AND OTHER DATA 
COMMUNICATIONS 

Pending  

CA 

24/09/2009 

2681984 

EMERGENCY ASSISTANCE CALLING FOR VOICE 
OVER IP COMMUNICATIONS SYSTEMS 

Pending  

CA 

26/01/2011 

2732148 

MOBILE GATEWAY 

Response Due Feb 18, 
2016 

CA 

15/03/2013 

2812174 

UNINTERRUPTED TRANSMISSION OF INTERNET 
PROTOCOL TRANSMISSIONS DURING ENDPOINT 
CHANGES 

Pending  

EP 

29/05/2009 

7816106.4 

PRODUCING ROUTING MESSAGES FOR VOICE 
OVER IP COMMUNICATIONS 

Awaiting Examination 

EP 

24/06/2009 

7855436.7 

INTERCEPTING VOICE OVER IP 
COMMUNICATIONS AND OTHER DATA 
COMMUNICATIONS 

Awaiting Examination 

EP 

28/02/2011 

9802316.1 

MOBILE GATEWAY 

Awaiting Examination 

EP 

17/04/2012 

9849358.8 

UNINTERRUPTED TRANSMISSION OF INTERNET 
PROTOCOL TRANSMISSIONS DURING ENDPOINT 
CHANGES 

Allowed ‐ Notice of 
Intention to grant rcvd 
July 2015 

ID 

01/05/2009 

WOO 2009 01165 

PRODUCING ROUTING MESSAGES FOR VOICE 
OVER IP COMMUNICATIONS 

Reinstated 

ID 

27/05/2009 

WOO 2009 01414 

INTERCEPTING VOICE OVER IP 
COMMUNICATIONS AND OTHER DATA 
COMMUNICATIONS 

Response to outstanding 
Examiners Report filed 
Aug 31, 2015 

IN 

29/05/2009 

1047/MUMNP/2009  PRODUCING ROUTING MESSAGES FOR VOICE 
OVER IP COMMUNICATIONS 

Examination Requested 

IN 

29/06/2009 

1227/MUMNP/2009  INTERCEPTING VOICE OVER IP 
COMMUNICATIONS AND OTHER DATA 
COMMUNICATIONS 

Examination Requested 

VoIP‐Pal Letter to Apple, 11/30‐2015

4 

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12. Apple Inc. / J Lasker E-mail dated December 8 2015 w Attachment 12A

From: [e-mail] <[e-mail]> on behalf of Jeffrey Lasker <[e-mail]>
Sent: December 8, 2015 9:46 AM
To: Emil Malak
Cc: [e-mail]; [e-mail]
Subject: Re: VoIP-Pal.com Inc. Patents
Emil,
Please see the attached letter.
Regards,
Jeff
Jeffrey V. Lasker
Legal Counsel, IP Transactions
Apple
1 Infinite Loop, MS 169-3IPL
Cupertino, CA 95014, USA
Office 408-862-1377
[e-mail]
This email and any attachments may be privileged and may contain confidential information intended only for 
the recipient(s) named above. Any other distribution, forwarding, copying or disclosure of this message is 
strictly prohibited. If you have received this email in error, please notify me immediately by telephone or return email, 
and delete this message from your system. 

VPLM00285
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12A. Attachment to E-mail dated December 8 2015

December 8, 2015

Via Email

Emil Malak
CEO & Director
Voip-Pal.com, Inc.
773 Hornby Street
Vancouver, BC V6Z1S4
Canada
Email: [e-mail]
Re: Voip-Pal.com, Inc.
Dear Mr. Malak,
I am in receipt of your letter dated November 30, 2015 in which note that a continuation
patent (U.S. No. 9,179,004) to U.S. Patent No. 8,542,815 has issued since our last
communication with VoIP-Pal back in late 2014. We have reviewed the newly issued ‘004
patent, and believe that this patent is also inapplicable to Apple products or services for
at least the same reasons we identified in our previous correspondence relating to the
‘815 patent. Thus, as noted previously, we do not believe that any license to VoIP-Pal’s
patents is necessary. To the extent you disagree, we request that you provide detailed
claim charts supporting your contentions.
Your letter also notes that Ray Leon of VoIP-Pal has been in contact with my colleague
Denise Kerstein. Denise informed Ray that we are not interested in acquiring Voip-Pal’s
patents.
Regards,

Jeffrey V. Lasker
Legal Counsel, IP Transactions

Apple Inc.
Jeffrey V. Lasker
1 Infinite Loop, MS 169-3IPL
Cupertino, CA 95014
[phone]
[e-mail]

VPLM00286
2/9/2016 9:34:11 A

13. E-mail to Apple sent at 3:24 PM on December 9 2015 w Attachment 13A

From: Emil Malak
Sent: December 9, 2015 3:24 PM
To: Jeffrey Lasker
Cc: [e-mail]; [e-mail]
Subject: Re: VoIP Pal.com Inc. Patents
Jeff:
Please see the attached letter.
Regards,
Emil
Emil Malak
CEO & Director
VoIP Pal.com Inc.

VPLM00287
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13A. Attachment to E-Mail sent at 3:24 PM on December 9 2015

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Technical Overview 
Why  are  Voip‐Pal’s  Classification  and  Routing  Patent  US  8542815  and  US  9179005 
Continuation Patent fundamental to current telecommunications infrastructure? 
The patenting of Dynamic Call Classification is a landmark achievement in the world of modern telecommunications.  
These  patents  articulate  the  technology  required  to  classify  and  route  “call  sessions”  over  a  complex  multiple  node 
structure, whether private or public, or any combination of thereof, all of which may include voice, messaging, video 
and include M2M (Machine to Machine).  
The closest prior art merely disclosed static classification: for example, by the amount of money the subscriber has paid, 
or by available bandwidth, or some other simple criteria.  From the earliest days of phone communication, calls were 
routed solely using the callee number.  Our patents (the first in the industry to do so) utilize caller attributes (in addition 
to callee id) to call classification, making it dynamic).  
Prior to 2005, when legacy PSTN dominated the world, call routing was primitive (akin to the AOL dial up internet model).  
After 2005, multiple private Internet clouds were developed (e.g., Vonage, Apple, Facebook, Google, etc.), each of them 
being geographically distributed over multiple nodes, and the routing decisions became increasingly complex: How could 
we route these communications? Via PSTN or via private clouds in the Internet (and, if the latter, to which node)? Prior 
to 2005, most companies were monetizing by routing PSTN calls via the Internet. We predicted that the vast majority of 
future communication will be not to PSTN, but between multiple private nodes, and called it a ‘Private’ call in our patents. 
Today, millions of people are registered with those private nodes of social portals, and communicating with each other 
seamlessly. Private call classification criteria, using both callee and caller information, are deployed by all social portals 
and  carriers.  They  help  to  connect  subscribers  either  on  the  same  node,  or  between  different  nodes.  Digifonica 
envisioned this structure PRIOR to this massive deployment and described the technology, structure and methodology 
in all of now‐issued patents. 
Voip‐Pal’s 815’ and 005’ patents cover not only telephony audio/video calls but also modern messaging, including M2M 
(intelligent assets). ‘Modern’ means: messages must be able to accommodate and provide immediate real‐time response 
(WhatsApp,  Facebook  Messenger,  iMessage,  Instagram,  Google  Hangouts).  Machine‐to‐Machine  intelligent 
communications requires real‐time routing of messages in complex networks. 
Online payments have at least four parties involved, most of them use geographically distributed redundant multi‐node 
structure. For the financial transactions to succeed, they must be routed dynamically in real‐time. 
Long‐awaited Voice‐over‐LTE (VoLTE) deploys functionality in its IMS (IP Multimedia Subsystem) which is very similar to 
the 815’ and 005’ patents. 

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How  is  it  that  Voip‐Pal  has  developed  these  815’  and  005’  patents,  rather  than  another 
telecommunications company? 
In the years 2003‐2005, Digifonica (a wholly owned subsidiary of Voip‐Pal) had the advantage of not having to support 
existing customers or legacy systems (there were none).  We had the opportunity to start from a “blank slate” while 
taking advantage of vast industry experience accumulated by that time.  All companies before 2005 were developing 
their  own  systems,  such  as  Cisco  with  its  H323.    Digifonica  employed  top  professionals  in  the  open‐source  Linux 
community, some of which are now well‐known and successful (e.g., Sippy Software, Inc., www.sippysoft.com).  Three 
PhDs with various engineering backgrounds held the top positions at the Company.  Digifonica had a vision – which it 
implemented in the three geographically distributed nodes, tested, and patented the core solutions.  Today, Voip‐Pal’s 
815’ and 005’ solutions have been proven by the entire telecommunications industry, who are deploying them virtually 
everywhere. 

VPLM00290
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Technical Comparison Table for Commonly Used Systems & 
VOIP‐PAL’S PATENTS 8,542,815 & 9,179,005

Systems That Are Presently In Use
Geographically distributed multi‐
node Private provider networks 
including Machine to Machine (M2M), 
Internet of Things (IoT) intelligent 
asset management and instant 
messaging systems (which may 
include, text, voice and/or video) with 
the subscribers (humans or machines) 
associated with those nodes

US 8542815 Producing Routing 
Messages for Voice over IP 
Communications
A process for operating a call routing 
controller to 
facilitate communication between 
callers and callees in a system 
comprising a plurality of nodes with 
which callers and callees are associated, 
the process comprising:

US 9179005 Producing Routing 
Messages for Voice over IP 
Communications
A process for producing a routing 
message for 
routing communications  
between a caller and a callee in a 
communication system, the 
process comprising: 

Subscriber 'caller' chooses destination  In response to initiation of a call by a 
'callee' number, account, other 
calling subscriber, receiving a caller 
identifier, or any kind of application‐
identifier and a callee identifier;
level destination address and initiates 
the communication. The provider’s 
system (phone and/or server) 
receives caller and callee identifiers

Using a caller identifier associated 
with the caller to locate a caller 
dialing profile comprising a 
plurality of calling attributes 
associated with the caller;

The provider’s system locates 
subscriber/machine account, with 
associated subscriber attributes, 
defining how and where subscriber 
may be available in provider's 
network ‐ physically or logically

Locating a caller dialing profile 
comprising a username associated with 
the caller and a plurality of calling 
attributes associated with the caller;

See below 

The provider’s system matches a 
portion of the destination 'callee' 
identifier to the subscriber 'caller' 
attributes

Determining a match when at least one 
of said calling attributes matches at 
least a portion of said callee identifier;

See below 

Simplified example:

Classifying the call as a public   network 
call when said match meets public 
network classification criteria and 
classifying the call as a private network 
call when said match meets private 
network classification criteria;

See below 

‐ if callee identifier is totally different 
from caller attributes, that’s a public 
communication to another provider 
cloud
‐ if callee identifier is a bit similar to 
caller attributes, that's a private call 
between provider's subscribers on 
different nodes

VPLM00291
2/9/2016 9:34:11 A

‐ if callee identifier is very similar to 
caller attributes, that's a private call 
between subscribers on the same 
node
If the communication is identified 
as Private call between nodes of the 
same provider, it is sent over the 
Internet to another node. If callee is 
on the same node as caller, call stays 
on the same node.

When the call is classified as a private 
network call, producing a private 
network routing message for receipt by 
a call controller, said private network 
routing message identifying an address, 
on the private network, associated with 
the callee;

When at least one of said calling 
attributes and at least a portion of 
a callee identifier associated with 
the callee meet private network 
classification criteria, producing a 
private network routing message 
for receipt by a call controller, said 
private network routing message 
identifying an address, on the 
private network, associated with 
the callee; and

If the communication is identified 
as Public call between different 
provider’s clouds, or PSTN, it is 
sent   to the gateway to another 
provider, or PSTN telco.

When the call is classified as a public 
network call, producing a public 
network routing message for receipt by 
the call controller, said public network 
routing message identifying a gateway 
to the public network.

When at least one of said calling 
attributes and at least a portion of 
said callee identifier meet a public 
network classification criterion, 
producing a public network routing 
message for receipt by the call 
controller, said public network 
routing message identifying a 
gateway to the public network.

VPLM00292
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14. Apple Inc. E-mail received at 3:59 PM on December 9 2015 w Attachment 14A

From: Jeffrey Lasker <[e-mail]>
Date: 12-09-2015 3:59 PM (GMT-08:00)
To: Emil Malak <[e-mail]>
Cc: [e-mail]
Subject: Re: VoIP-Pal.com Inc. Patents
Emil,
The reference to the ‘004 patent was indeed an error. Attached is a corrected letter.
Regards,
Jeff

VPLM00293
2/9/2016 9:34:11 A

14A. Attachment to E-mail received at 3:59 PM on December 9 2015

December 8, 2015

Via Email

Emil Malak
CEO & Director
Voip-Pal.com, Inc.
773 Hornby Street
Vancouver, BC V6Z1S4
Canada
Email: [e-mail]
Re: Voip-Pal.com, Inc.
Dear Mr. Malak,
I am in receipt of your letter dated November 30, 2015 in which note that a continuation
patent (U.S. No. 9,179,005) to U.S. Patent No. 8,542,815 has issued since our last
communication with VoIP-Pal back in late 2014. We have reviewed the newly issued ‘004
patent, and believe that this patent is also inapplicable to Apple products or services for
at least the same reasons we identified in our previous correspondence relating to the
‘815 patent. Thus, as noted previously, we do not believe that any license to VoIP-Pal’s
patents is necessary. To the extent you disagree, we request that you provide detailed
claim charts supporting your contentions.
Your letter also notes that Ray Leon of VoIP-Pal has been in contact with my colleague
Denise Kerstein. Denise informed Ray that we are not interested in acquiring Voip-Pal’s
patents.
Regards,

Jeffrey V. Lasker
Legal Counsel, IP Transactions

Apple Inc.
Jeffrey V. Lasker
1 Infinite Loop, MS 169-3IPL
Cupertino, CA 95014
[phone]
[e-mail]

VPLM00294
2/9/2016 9:34:11 A