Voip-Pal v. Apple Appeal

Case: 20-1241 Document: 26 Page: 1 Filed: 06/10/2020
Docket Nos. 20- 1241, 20-1244
In the
United States Court of Appeals

for the
Federal Circuit
VOIP-PAL.COM, INC.,
Plaintiff-Appellant,
v.
APPLE, INC.,
Defendant-Appellee.
_________________________________
VOIP-PAL.COM, INC.,
Plaintiff-Appellant,
v.
AMAZON.COM, INC. and AMAZON TECHNOLOGIES, INC.,
Defendants-Appellees.
_______________________________________
Appeal from the United States District Court for the Northern District of California
in Case Nos. 5:18-cv-06216-LHK and 5:18-cv-07020-LHK ∙ United States District Judge Lucy H. Koh
APPELLANT’S REPLY BRIEF

LEWIS E. HUDNELL, III, ESQ.
HUDNELL LAW GROUP PC
800 West El Camino Real, Suite 180
Mountain View, California 94040
(650) 564-7720 Telephone
(347) 772-3034 Facsimile
lewis@hudnelllaw.com
Attorney for Plaintiff-Appellant,
Voip-Pal.com, Inc.
COUNSEL PRESS ∙ (213) 680-2300 PRINTED ON RECYCLED PAPER

FORM 9. Certificate of Interest Form 9
Rev. 10/17
UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
VOIP-PAL.COM, INC. v. APPLE, INC.
20-1241, -1244
Case No.
CERTIFICATE OF INTEREST
Counsel for the:

(petitioner) (appellant) (respondent) (appellee) (amicus) (name of party)
VoIP-Pal.com, Inc.
certifies the following (use “None” if applicable; use extra sheets if necessary):
2. Name of Real Party in interest 3. Parent corporations and

1. Full Name of Party (Please only include any real party publicly held companies
Represented by me in interest NOT identified in that own 10% or more of
Question 3) represented by me is: stock in the party
VoIP.Pal.com, Inc. VoIP-Pal.com, Inc. None
4. The names of all law firms and the partners or associates that appeared for the party or amicus now
represented by me in the trial court or agency or are expected to appear in this court (and who have not
or will not enter an appearance in this case) are:
None
FORM 9. Certificate of Interest Form 9
Rev. 10/17
5. The title and number of any case known to counsel to be pending in this or any other court or agency
that will directly affect or be directly affected by this court’s decision in the pending appeal. See Fed. Cir.
R. 47. 4(a)(5) and 47.5(b). (The parties should attach continuation pages as necessary).
VoIP-Pal.com, Inc. v. Amazon.com, Inc. et al., Case No. 20-1244
June 10, 2020 /s/Lewis E. Hudnell, III

Date Signature of counsel
Please Note: All questions must be answered Lewis E. Hudnell, III

Printed name of counsel
cc: All counsel of record
Reset Fields
TABLE OF CONTENTS
TABLE OF AUTHORITIES ................................................................................... iii
TABLE OF ABBREVIATIONS ..............................................................................vi
I. SUMMARY OF REPLY ARGUMENT ......................................................... 1
II. THE TWITTER APPEAL IS NOT RELATED TO THIS APPEAL ............. 2
III. THE DISTRICT COURT ERRONEOUSLY DETERMINED THAT

THE ASSERTED CLAIMS ARE INELIGIBLE ............................................ 4
A. The Asserted Claims Are Not Directed To An Abstract Idea .............. 4
1. VoIP-Pal’s factual allegations are not divorced from the

claims and are relevant at step one ............................................. 5
2. The asserted claims are directed to the benefits alleged by

VoIP-Pal ...................................................................................... 7
a. User-specific calling ......................................................... 7
b. Transparent routing......................................................... 11
3. The district court’s analysis conflicts with this

Court’s precedents..................................................................... 13
B. The Asserted Claims Plausibly Recite Inventive Concepts ................17
1. The asserted claims recite inventive concepts when

considered as an ordered combination ......................................19
2. The asserted claims recite inventive concepts ..........................21
a. User-specific calling ....................................................... 21
b. Transparent routing......................................................... 23
i
IV. THE DISTRICT COURT’S ELIGIBLITY ANALYSIS

WAS ERRONEOUS ..................................................................................... 25
A. The District Court Improperly Chose Representative Claims ............25
B. The District Court Erred By Failing To Conduct

Claim Construction..............................................................................26
C. The Ineligibility Determination Was Premature ................................. 29
V. CONCLUSION..............................................................................................31
CERTIFICATE OF SERVICE ................................................................................32
CERTIFICATE OF COMPLIANCE ....................................................................... 33
ii
TABLE OF AUTHORITIES
CASES
Aatrix Software, Inc. v. Green Shades Software, Inc.,
882 F.3d 1121 (Fed. Cir. 2018) ...............................................................18, 28
Alice Corp. Pty. Ltd. v. CLS Bank Int’l,

134 S. Ct. 2347 (2014)............................................................................... 4, 18
Am. Axle & Mfg. v. Neapco Holdings LLC,
939 F.3d 1355 (Fed. Cir. 2019) ...............................................................14, 15
BASCOM Global Internet Servs. v. AT&T Mobility LLC,
827 F.3d 1341 (Fed. Cir. 2016) .............................................10, 17, 19, 20, 30
Berkheimer v. HP Inc.,
881 F.3d 1360 (Fed. Cir. 2018) .........................................................20, 22, 30
CardioNet, LLC v. InfoBionic, Inc.,
955 F.3d 1358 (Fed. Cir. 2020) ................................................................. 5, 17
Cardpool, Inc. v. Plastic Jungle, Inc.,

817 F.3d 1316 (Fed. Cir. 2016) ....................................................................... 3
Cellspin Soft, Inc. v. Fitbit, Inc.,

927 F.3d 1306 (Fed. Cir. 2019) ...........................................................3, 30, 31
Chavez v. United States,
683 F.3d 1102 (9th Cir. 2012) ....................................................................... 17
DDR Holdings, LLC v. Hotels.com, L.P.,

773 F.3d 1245 (Fed. Cir. 2014) ....................................................................... 7
Elec. Power Group, LLC v. Alstom S.A.,

830 F.3d 1350 (Fed. Cir. 2016) ...............................................................29, 30
Ericsson Inc. v. TCL Commun. Tech. Holdings Ltd.,

955 F.3d 1317 (Fed. Cir. Apr. 14, 2020) .................................................15, 20
Finjan, Inc. v. Blue Coat Sys.,

879 F.3d 1299 (Fed. Cir. 2018) ..................................................................... 16
iii
Intellectual Ventures I LLC v. Symantec Corp.,

838 F.3d 1307 (Fed. Cir. 2016) ..................................................................... 20
Koninklijke KPN N.V. v. Gemalto M2M GmbH,

942 F.3d 1143 (Fed. Cir. 2019) .......................................................5, 6, 11, 16
McRO, Inc. v. Bandai Namco Games Am. Inc.,

837 F.3d 1299 (Fed. Cir. 2016) ..................................................................... 13
MyMail, Ltd. v. ooVoo, LLC,

934 F.3d 1373 (Fed. Cir. 2019) ................................................................27, 28
Neilson v. Harford,
151 Eng. Rep. 1266 (Ex. 1841) ....................................................................... 5
O’Reilly v. Morse,
56 U.S. 62 (1854)...................................................................................4, 5, 10
PPS Data, LLC v. Jack Henry & Assocs.,

404 F. Supp. 3d 1021 (E.D. Tex. 2019) ..................................................25, 26
Pragmatus Telecom, LLC v. Genesys Telecomms. Labs., Inc.,
114 F. Supp. 3d 192 (D. Del. 2015) ..............................................................25
Sage Prods., Inc. v. Devon Indus., Inc.,
126 F.3d 1420 (Fed. Cir. 1997) ..................................................................... 11
SimpleAir, Inc. v. Google LLC,
884 F.3d 1160 (Fed. Cir. 2018) ..................................................................... 17
Synopsys, Inc. v. Mentor Graphics Corp.,
839 F.3d 1138 (Fed. Cir. 2016) ..................................................................... 19
Two-Way Media Ltd v. Comcast Cable Communs., LLC,
874 F.3d 1329 (Fed. Cir. 2017) ...............................................................29, 30
Uniloc USA, Inc. v. LG Elecs. USA, Inc.,
No. 19-1835, 2020 U.S. App. LEXIS 13876 (Fed. Cir. 2020)....................6, 7
Visual Memory LLC v. NVIDIA Corp.,
867 F.3d 1253 (Fed. Cir. 2017) .....................................................4, 10, 14, 15
iv
VoIP-Pal.com, Inc. v. Apple, Inc.,

375 F. Supp. 3d 1110 (N.D. Cal. 2019)......................................................... 17
VoIP-Pal.com, Inc. v. Twitter, Inc.,

798 Fed. Appx. 644 (Fed. Cir. 2020) .............................................................. 2
COURT RULES
Fed. Cir. R. 12 ............................................................................................................ 2

Fed. Cir. R. 47.5(b) .................................................................................................... 2
STATUTES
35 U.S.C. § 101 ......................................................................................................1, 3
35 U.S.C. § 112 ..............................................................................................1, 14, 15
OTHER AUTHORITIES
Jeffrey A. Leftsin, Inventive Application: A History,

67 Fla. L. Rev. 565 (2015)........................................................................... 4, 5
v
TABLE OF ABBREVIATIONS
ABBREVIATION TERM
VoIP-Pal Plaintiff-Appellant VoIP-Pal.com, Inc.
Apple Defendant-Appellee Apple, Inc.
Amazon Defendants-Appellees Amazon.com,

Inc. and Amazon Technologies, Inc.
BB## VoIP-Pal’s Opening Brief at page ##
RB## Appellees’ Response Brief at page ##
The ’762 patent U.S. Patent No. 9,537,762
The ’762 claims Claims 6, 16, 21, 26, and 30 of the ’762
patent
The ’330 claims Claims 3, 4, 12, and 14 of the ’330

patent
The ’002 claims Claims 1, 12, 22, 26, and 29 of the ’002
patent
The ’549 claims Claims 2, 6, 9, 12, 17, and 24 of the

’549 patent.
The patents-in-suit The ’762 patent, the ’330 patent, the

’002 patent, and the ’549 patent
FAC First Amended Complaint
vi
PTAB Patent Trial and Appeal Board
IPR Inter Partes Review
POSITA Person of Ordinary Skill in the Art
The Twitter Appeal VoIP-Pal.com, Inc. v. Twitter, Inc., No.

19-1808 (Lead Case)
The Twitter consolidated cases VoIP-Pal.com, Inc. v. Twitter, Inc., No.

5:18-cv-04523-LHK (N.D. Cal.);
VoIP-Pal.com, Inc. v. Verizon Wireless
Services, LLC, No. 18-cv-06054-LHK
(N.D. Cal.);
VoIP-Pal.com, Inc. v. AT&T Corp.,
No. 3:18-cv-06177-LHK (N.D. Cal.),
and; VoIP-Pal.com, Inc. v. Apple, Inc.
No. 3:18-cv-06217-LHK (N.D. Cal.).
The Apple consolidated cases VoIP-Pal.com, Inc. v. Amazon.com,

Inc., No. 5:18-cv-7020 (N.D. Cal.);
VoIP-Pal.com, Inc. v. Apple Inc., No.
5:18-cv-6216 (N.D. Cal.)
PSTN Public switched telephone network
PBX Private Branch Exchange
vii
I. SUMMARY OF REPLY ARGUMENT
Appellees try to bait the Court into believing that the outcome of this appeal
has already been decided by the Court’s affirmance in the Twitter appeal. It has
not. In this case, the district court found the patents-in-suit ineligible on materially
different grounds, which Appellees strain to justify. At step one, Appellees
concoct terminology and concepts never used by this Court to evaluate eligibility.
In doing so, Appellees, like the district court, turn the §101 analysis into a §112
analysis, which is improper. The asserted claims recite sufficiently specific
improvements over the prior art that illustrate how they achieve the desired
benefits of user-specific calling and transparent routing and therefore pass step
one. At step two, attempting to overcome the district court’s acceptance of VoIP-
Pal’s alleged benefits as significant and unconventional improvements over the
prior art, Appellees argue that the asserted claims do not recite the benefits because
the benefits are not expressly mentioned in the claims or the claims are not limited
to the benefit. These arguments find no footing in this Court’s precedent. The
district court also misapplied this Court’s precedent by not attributing VoIP-Pal’s
factual allegations of unconventionality to the claims, which should have precluded
an ineligibility finding at the Rule 12 stage. The district court compounded this
error by improperly choosing representative claims and failing to conduct claim
construction. Accordingly, the district court’s judgment should be reversed.
1
II. THE TWITTER APPEAL IS NOT RELATED TO THIS APPEAL.
Appellees’ argument that the Twitter appeal is related to this appeal is
disingenuous. RB23-24. Appellees imply that VoIP-Pal should have sought to
consolidate the two appeals. But Appellees could have done the same. See
Practice Note to Fed. Cir. R. 12 (“Other appeals may be consolidated on motion or
by the court sua sponte.”). Tellingly, they did not.
VoIP-Pal did not identify the Twitter appeal as a related case because it does
not fit this Court’s definition of a related case. Whether the district court identified
the Twitter consolidated cases as related to the Apple consolidated cases is
irrelevant. Contra RB24. The district court never indicated that its ineligibility
ruling in the Twitter consolidated cases controlled its ineligibility ruling in this
case. Nor could it. The cases involve different patents and different claims, and
the district court never construed the asserted claims in either case. Thus, the
Court’s affirmance in the Twitter appeal has no direct effect on any issue that the
Court needs to decide in this appeal. See Fed. Cir. R. 47.5(b) (defining related
cases as ones that “will directly affect or be directly affected by this court’s
decision in the pending appeal.”) (emphasis added). Nor was the Court’s decision
in the Twitter appeal even precedential. See VoIP-Pal.com, Inc. v. Twitter, Inc.,
798 Fed. Appx. 644 (Fed. Cir. 2020).
2
The real reason, however, that Appellees argue that the Twitter appeal is
related to this case is because they assert (1) that VoIP-Pal was required to explain
how the claims in the two cases differ for eligibility purposes and (2) that the
Court’s inquiry in this case should be limited to how those differences should yield
a different outcome. RB24-25. Both propositions lack merit. First, Appellees cite
no authority for either proposition. Second, if any party has the burden to show
how the asserted claims in this case are invalid under the ruling in the Twitter
appeal, it is Appellees, not VoIP-Pal. See Cellspin Soft, Inc. v. Fitbit, Inc., 927
F.3d 1306, 1319 (Fed. Cir. 2019). Third, Appellees effectively invite the Court to
apply a form of claim preclusion against an allegedly related patent—an invitation
that this Court should reject. See Cardpool, Inc. v. Plastic Jungle, Inc., 817 F.3d
1316 (Fed. Cir. 2016) (holding that a district court’s finding of invalidity under
§101 did not automatically constitute res judicata as to new claims granted upon
reexamination).
Regardless, significant differences between the Twitter appeal and this case
compel a different outcome. For example, in this case: (1) the district court agreed
that user-specific calling and transparent routing constitute meaningful
improvements in call-routing technology; (2) the asserted claims recite these
features; (3) the district court failed to adopt VoIP-Pal’s proposed claim
constructions, which were fully briefed, despite the fact that Apple urged the same
3
construction to the PTAB; (4) the district court invalidated the asserted claims on
materially different grounds; and (5) new precedent not considered in the Twitter
appeal or below supports reversal. Given these differences and the other
arguments raised in VoIP-Pal’s briefs, the affirmance in the Twitter appeal cannot
control the outcome in this case.
III. THE DISTRICT COURT ERRONEOUSLY DETERMINED THAT

THE ASSERTED CLAIMS ARE INELIGIBLE.
A. The Asserted Claims Are Not Directed To An Abstract Idea.
Like the district court’s, Appellees’ step one arguments rely on irrelevant
concepts. Step one does not ask about the “direction of the claims.” Contra RB26.
It asks what the claims are directed to. See Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
134 S. Ct. 2347, 2355 (2014). Step one also does not ask whether the claims recite
what Appellees call “non-abstract implementation requirements,” whatever that
means. Id.; Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1261 (Fed. Cir.
2017) (explaining that implementation details are not part of the eligibility
inquiry). Appellees improperly conflate disclosure requirements with eligibility, as
evident by their miscitation of O’Reilly v. Morse. RB26. Although Morse is cited
for the abstract idea principle, Morse was decided on disclosure grounds, not
eligibility grounds. See O’Reilly v. Morse, 56 U.S. 62, 119-120 (1854) (“Yet this
claim can derive no aid from the specification filed. It is outside of it, and the
patentee claims beyond it.”) (emphasis added); see also Jeffrey A. Leftsin,
4
Inventive Application: A History, 67 Fla. L. Rev. 565, 594-97 (2015) (explaining
that Morse is about disclosure and scope not eligibility). Indeed, Morse, in
discussing Neilson v. Harford, 151 Eng. Rep. 1266 (Ex. 1841), acknowledged that
Neilson’s invention was patentable because although “Neilson claimed no
particular mode of constructing the receptacle, or of heating it,” the invention was
adequately disclosed. See Morse, 56 U.S. at 115-116 (“The interposition of a
heated receptacle, in any form, was the novelty he invented.”) (emphasis added).
Thus, step one does not require non-abstract implementation details even under
Appellees’ own authority.
1. VoIP-Pal’s factual allegations are not divorced from the

claims and are relevant at step one.
Appellees also attempt to muddle step one by claiming that VoIP-Pal largely
relies on allegations in the complaint as evidence that the asserted claims are not
abstract. RB27. Rather, VoIP-Pal extensively cites specific limitations showing
that the asserted claims are not abstract. See, e.g., BB26-31, BB38-39, BB42-44.
Moreover, it is untrue that allegations in the complaint cannot be relevant at step
one. See CardioNet, LLC v. InfoBionic, Inc., 955 F.3d 1358, 1373-74 (Fed. Cir.
2020). But even without the allegations in the FAC, the asserted claims pass step
one.
Contrary to what Appellees suggest, VoIP-Pal never contended that KPN
supports relying on factual allegations at step one. RB28. Rather, VoIP-Pal relies
5
on KPN for its holding—claims directed to a sufficiently specific implementation
of an existing system that improves the prior art are not abstract. BB50-51. See
Koninklijke KPN N.V. v. Gemalto M2M GmbH, 942 F.3d 1143, 1151 (Fed. Cir.
2019). The asserted claims recite sufficiently specific improvements to prior art
call-routing systems and therefore are not abstract. Id.
Appellees’ argument that the asserted claims are abstract because they fail to
require the benefits alleged in the complaint is erroneous. RB29. The Court
recently confirmed in Uniloc USA, Inc. v. LG Elecs. USA, Inc., which reversed the
same district court as in this case, that claims need not expressly mention the
benefits that they achieve. See Uniloc USA, Inc. v. LG Elecs. USA, Inc., No. 19-
1835, 2020 U.S. App. LEXIS 13876, at *12 (Fed. Cir. 2020).
Appellees misleadingly attempt to distinguish Uniloc by referring to
reduction in communication latency as a “non-abstract benefit” of the Uniloc
claims. RB30. The Court never used the term “non-abstract benefit.” Nor did it
state that benefits must be non-abstract. Rather, the Court found that Uniloc’s
claims were directed to a reduction in communication latency simply by requiring
an additional data field for polling. Id. Significantly, Uniloc found that “like the
claims in DDR, the claimed invention change[d] the normal operation of the
communication system itself.” Id. at *10. Moreover, the improvement did not
need to be defined with reference to physical components. Id. at *13.
6
Arguably, the asserted claims in this case are directed to even more specific
improvements than the Uniloc claims. The asserted claims require routing a call to
a network destination not solely by the digits dialed, but by using the caller’s and
callee’s identifiers, as well as the caller’s profile attributes, to generate a routing
message. Like the claims in DDR Holdings v. Hotels.com, they change the normal
operation of telecommunication nodes. See DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245, 1258 (Fed. Cir. 2014); accord Uniloc, 2020 U.S. App. LEXIS
13876 at *10.
2. The asserted claims are directed to the benefits alleged by

VoIP-Pal.
a. User-specific calling
As Appellees admit, the district court accepted that user-specific calling was
a significant and unconventional improvement over prior technology. RB32;
Appx54; Appx76. The district court, however, erroneously concluded that the
asserted claims do not disclose how to achieve this improvement. Appx76.
Critically, the district court overlooked that the claimed steps taken in response to
initiating a call are predicated on caller-specific profile attributes. Because the
claimed profile attributes, which are used to identify the destination of the call, are
caller specific, the subsequent steps of classifying or determining a destination and
producing a routing message are also necessarily caller specific. Thus, the asserted
claims describe how to handle calls in a caller-specific manner.

7
Appellees assert that VoIP-Pal’s main argument rests merely on factual
allegations. RB31. Appellees, however, ignore that VoIP-Pal repeatedly tied user-
specific calling to specific language reciting the claimed “profile” and “attributes.”
See, e.g., BB26-31; BB38-39; BB42-44. Appellees conceded that these terms
should be construed as user specific, thus undercutting their arguments that the
claims lack any user-specific features. Appx3473-3475; compare BB24.
Appellees also purport not to dispute that the claims recite using user-specific
information to route calls. RB32.
The district court inaccurately oversimplified the allegedly representative
claims as merely stating the abstract idea of “routing a communication based on
characteristics of the participants.” Appx40. The only characteristic of the callee
the district court referenced was the callee’s phone number (second participant
identifier). Id. The district apparently believed that the characteristic of the caller
needed for routing was the caller’s phone number (first participant identifier).
Appx13. The claims, however, recite using a caller’s profile attributes for routing,
not the caller’s phone number. Appx51. The asserted claims require attributes
from a caller’s profile to route the call. Profile attributes are not general
characteristics of the caller—they are specific system settings for controlling how
calls from a particular caller must be handled. See Appx2170-2173, Figs. 8A-D
(blocks 256, 257, 380, 390, 396). But the caller’s profile attributes are distinct
8
from the caller’s phone number both in the claims and specification. Compare
Appx2175, Fig. 11 with Appx2176, Fig. 14 (item 274).
Appellees likewise conflate the caller’s profile attributes with the caller’s
phone number. RB34; RB47. Appellees acknowledge that claim 30 of the ’762
patent recites comparing profile attributes with the second participant identifier.
RB33. But Appellees erroneously claim that the specification discloses that this
comparison involves “a comparison of the phone numbers of the caller and the
callee.” RB34. Rather, the claim and the specification describe comparing the
callee identifier to attributes in the caller’s profile. Appx2070-2171, Fig. 8A-8B,
(blocks 256, 257, 380, 390, 396); Appx2206-2208, 20:14-60, 22:5-23:12. Thus,
the claimed routing controller initiates calls differently for different callers based
on their respective profile attributes.
For example, a Calgary caller would place an international call by dialing
“011”, whereas a London caller would dial “00.” Appx2175, Figs. 11-12 (see IDD
attribute). Moreover, a caller’s profile attributes could be configured differently to
specify different behavior by the routing controller, which would be detected by
the comparison in claims 30-31. Appx2217. If the London caller’s IDD were
changed to “011” or “00011”, then the profile would effectively redefine in a user-
specific manner how the London user placed international calls. Similarly, other
profile attributes, such as length and maximum concurrent calls, could be
9
configured on a per-user basis, to provide user-specific call handling. Appx2206,
19:38-50. Appellees contend that the claimed profile attributes are abstract
because they lack implementation details. RB34. But again, implementation
details are not required at step one. See Visual Memory, 867 F.3d at 1261.
Appellees cite the district court’s conclusion that the producing a new
second participant identifier step is abstract because it “is so broadly worded that it
encompasses literally any form of data manipulation.” RB33. At best this
conclusion raises a patentability issue, not an eligibility issue. See Morse, 56 U.S.
at 116; BASCOM Global Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341,
1354 (Fed. Cir. 2016) (“Claims that are imprecise or that read on prior art or that
are unsupported by description or that are not enabled raise questions of
patentability, not eligibility.”) (Newman, J., concurring). Not only is this
limitation sufficiently specific, the dependent claims provide the allegedly missing
details. Appx2216-2217, claims 13, 14, 15, 36, 37, and 38 of the ’762 patent. Just
because it identified claim 21 of the ’762 patent as representative, which VoIP-Pal
disputes, the district court cannot ignore details plainly disclosed in other claims.
As further proof that Appellees misapply step one, Appellees bizarrely deny
that the claims or specification require translating the second participant identifier
into a new second participant identifier that the routing system understands. RB34.
Appellees also deny the new identifier is used to determine a callee’s registration
10
status. Id. But block 269 of Fig. 8B and claims 1 and 14 of the ’762 patent
disclose and claim this very feature. Appx2171, Fig. 8B; Appx2215-16, 37:59-
38:9, 39:18-24.
Finally, after purporting not to dispute that the asserted claims require user-
specific information, Appellees dispute that the claims are limited to user-specific
call handling because they do not require any particular comparison. RB34-35.
Again, Appellees misunderstand the claims. The claims require a specific
comparison between the callee identifier and the caller’s profile attributes, which
are admittedly user specific, necessitating user-specific handling in subsequent
steps. The asserted claims expressly recite how the goal of the claims is achieved
and therefore are not directed to an abstract idea. See KPN, 942 F.3d at 1151.
b. Transparent routing
Appellees’ claim that the asserted claims do not require transparent routing
is demonstrably false. Appellees principally argue that the claims are broad
enough to read on a traditional PBX implementation in which a caller dials “9” to
manually select an outside line to call someone on the PSTN. See RB29, RB35-36,
RB49, RB58; compare RB5. This argument fails.
First, Appellees never made this argument below and therefore waived it.
See Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1426 (Fed. Cir. 1997).
11
Second, Appellees did not raise this argument in their claim construction
briefs and provide no explanation in their Response Brief as to how the asserted
claims read on a system that requires dialing “9”.
Third, the argument leads to absurd results. For example, if the London
user’s PSTN number is dialed, the system would route the call over the private
network, not over the PSTN. See Appx2123, ¶34; BB9-10, BB31-37, BB40-41,
BB44. Under Appellees’ theory, even if a caller dialed “9,” expecting to call the
London user over the PSTN, then the claimed system would route the call over the
private network, not over the PSTN, thus rendering the dialed “9” ineffective. Id.
But if dialing “9” worked as Appellees expect, then routing the call over the PSTN
to the London subscriber would vitiate the claim limitations requiring
network/node selection based on ascertaining the callee’s system registration status
or profile. Id.
Accordingly, the district court erred by concluding PSTN numbers in the
claimed system have sufficient information to identify the destination network. Id.
Appellees defend the district court by falsely attributing to VoIP-Pal an argument it
never made—that “non-PSTN numbers” are “self-interpreting.” RB36. Rather,
VoIP-Pal explained that PSTN numbers were self-interpreting when operators used
them on the PSTN (operators did not consult a caller’s profile to interpret them).
BB34-36. But in the claimed system, PSTN numbers are not self-interpreting—
12
they can be associated with destinations at any node in the system’s private
network or on an external network. Id.
Lastly, Appellees falsely assume that automation or elimination of process
steps is per se ineligible. RB36. It is not. See McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016). The district court
suggested that “obviating the need for the caller to actively specify the appropriate
network,” such as by dialing “9” is “simple automation of a task previously
performed manually.” Appx48-49; Appx56. But the asserted claims do not
automate a task previously performed manually nor automate a manual routing
decision. RB36. They claim an improved system that transparently selects the
network/node for routing calls irrespective of the digits the caller manually dials.
BB36-37.
Notably, Appellees do not deny that some claims expressly recite transparent
node selection. Appx2123-2124, ¶35; BB20-22, BB40-43. Appellees merely assert
that VoIP-Pal waived this argument by never raising it with the district court.
RB52. VoIP-Pal’s Opposition clearly proves otherwise. Appx3105, 11:14-17;
Appx3118, 24:3-8; Appx3099, 5:16-19.
3. The district court’s analysis conflicts with this Court’s

precedents.
Strain as Appellees might, Appellees cannot align the district court’s step
one analysis with this Court’s precedent in a legally sound manner. By posing at
13
least 25 how questions, the district court erroneously converted its §101 analysis
into a §112 analysis without considering the POSITA’s perspective. See Visual
Memory, 867 F.3d at 1261 (“[W]hether a patent specification teaches an ordinarily
skilled artisan how to implement the claimed invention presents an enablement
issue under 35 U.S.C. § 112, not an eligibility issue under § 101”); Am. Axle &
Mfg. v. Neapco Holdings LLC, 939 F.3d 1355, 1375 (Fed. Cir. 2019) (Moore, J.,
dissenting) (“[§101] should not be used to invalidate claims under standards
identical to those clearly articulated in other statutory sections, but not argued by
the parties. It should not subsume §112.”). Appellees cannot hide this glaring
error by claiming the district court never considered whether the specification
adequately disclosed what was recited in the claims. RB39. Not only is this claim
untrue—the district court incorrectly alleged that the specification does not explain
how Internet addresses are identified for routing messages (Appx45; BB53-54)—it
is a written description issue, which is not the problem. The problem is that,
according to Appellees, the district court considered whether there is anything in
the specification that renders the asserted claims not abstract yet it did not consider
whether the specification answers the how questions that the court claimed made
the claims abstract. RB39. Simply put, the district court cannot frame step one as
a §112 analysis and then not conduct a §112 analysis. This error allowed the §101
analysis to subsume the §112 analysis, which is the same error that the Court has
14
been asked to consider en banc. See Am. Axle & Mfg. v. Neapco Holdings LLC,
No. 18-1786, Dkt. No. 79 at pp. 15-18; see also Ericsson Inc. v. TCL Commun.
Tech. Holdings Ltd., 955 F.3d 1317, 1336 (Fed. Cir. Apr. 14, 2020) (Newman, J.,
dissenting) (“It is not the law and is not the practice that every descriptive and
distinguishing detail from the specification must be stated in the claims.”).
Appellees also use step one to swallow the §112 analysis. They allege that
the asserted claims lack a specific implementation or implementation details.
RB34; RB39. Yet Appellees fail to cite any precedent of this Court holding that
implementation details are required to satisfy step one. Instead, Appellees equate
implementation details with the how of the purported invention. Id. But only a
POSITA needs to know how to implement the invention and “a patent need not
teach, and preferably omits, what is well known in the art.” See Visual Memory,
867 F.3d at 1261.
Appellees also incorrectly assert that Two-Way Media stands for the
proposition that the lack of implementation details is evidence of abstractness.
RB39. Two-Way Media never mentions the need for implementation details to
satisfy step one, nor was functional language the main problem. BB30-31. All
method claims use functional claim language. The eligibility inquiry does not
consider each method step and ask how that step is achieved. RB40. Rather, the
relevant inquiry is whether the claims “focus on a specific means or method that
15
improves the relevant technology or are instead directed to a result or effect that
itself is the abstract idea and merely invoke processes and machinery.” See KPN,
942 F.3d at 1151.
Rather, the asserted claims are no more result-oriented than the
representative claim considered in Finjan, Inc. v. Blue Coat Systems, which the
Court found non-abstract and Appellees deliberately mischaracterize. RB40. The
claim limitation at issue actually reads “generating by the inspector a first
Downloadable security profile that identifies suspicious code in the received
Downloadable.” See Finjan, Inc. v. Blue Coat Sys., 879 F.3d 1299, 1303 (Fed. Cir.
2018). This claim did not explain how the security profile is generated or
implemented. Yet, the Court still held that the claim was not abstract because it
recited a specific step that linked the security profile containing information about
potentially hostile operations produced by a behavior-based virus scan. Id. at
1303, 1305. Similarly, the asserted claims recite specific steps—using user-
specific profile attributes to classify the call as between two distinct networks and
route the call—and are not abstract.
Appellees cite no support for their claim that the district court properly
followed this Court’s practice by analogizing the asserted claims to an allegedly
longstanding practice. RB41. Indeed, the Court recently rejected the notion that
numerous cases have found claims abstract for claiming longstanding practices.
16
See CardioNet, 955 F.3d at 1374. Moreover, neither Appellees nor the district
court cite any record evidence that switchboard operators had a long-standing
practice of using the caller’s phone number to route calls. RB42; see Chavez v.
United States, 683 F.3d 1102, 1108 (9th Cir. 2012); see also VoIP-Pal.com, Inc. v.
Apple, Inc., 375 F. Supp. 3d 1110, 1134 n.6 (N.D. Cal. 2019) (rejecting Appellees’
request to take judicial notice of a YouTube video about historical operators).
Finally, the district court never construed the asserted claims to ascertain
their scope so Appellees have no basis to assert that the Twitter appeal precludes a
different result in this case. See SimpleAir, Inc. v. Google LLC, 884 F.3d 1160,
1167 (Fed. Cir. 2018) (“[W]here different patents are asserted in a first and second
suit, a judgment in the first suit will trigger claim preclusion only if the scope of
the asserted patent claims in the two suits is essentially the same.”). Thus, the
affirmance in the Twitter appeal is not instructive, much less determinative, of step
one in this case. Because the district court here erroneously determined that the
asserted claims are directed to an abstract idea, its decision should be reversed.
B. The Asserted Claims Plausibly Recite Inventive Concepts.
Even if the Court determines that the asserted claims are directed to an
abstract idea, which they are not, the asserted claims are still patent eligible
because they plausibly recite inventive concepts. See BASCOM, 827 F.3d at 1348
(“[S]ome inventions’ basic thrust might more easily be understood as directed to
17
an abstract idea, but under step two . . . , it might become clear that the specific
improvements in the recited computer technology go beyond ‘well-understood,
routine, conventional activit[ies]’ and render the invention patent-eligible.”) (citing
Alice, 134 S. Ct. at 2359). Appellees argue that VoIP-Pal largely ignores the
district court’s step two analysis when, truthfully, Appellees ignore VoIP-Pal’s
arguments. Contrary to what Appellees suggest, VoIP-Pal strongly disputes that
each individual limitation of the allegedly representative claims is directed to a
component of a conventional communication system. In both its Opening Brief
and its Opposition to Appellees’ Motion to Dismiss, VoIP-Pal shows that the
asserted claims recite unconventional steps including using both the caller’s and
the callee’s identifiers, as well as the caller’s profile attributes, to determine the
route of the call. BB55-58; Appx3114-3118. VoIP-Pal also pled unrefuted factual
allegations showing that these steps were unconventional, which precludes
dismissal at the Rule 12 stage. Appx2121-2125, ¶¶23-40; see Aatrix Software, Inc.
v. Green Shades Software, Inc., 882 F.3d 1121, 1125 (Fed. Cir. 2018). The district
court conclusorily asserted that the conventionality of all claim limitations and
every step in Figs. 8A-8D are readily apparent from the patents themselves without
further evidence. Appx67-69. Not does this conclusion strain credulity, it lacks
support and contradicts the record evidence showing that conventional systems did
not perform such steps. See Aatrix, 882 F.3d at 1126-28.
18
1. The asserted claims recite inventive concepts when

considered as an ordered combination.
Appellees’ claim that VoIP-Pal has not argued about the ordering of steps
misses the point. The allegedly representative claims do not just recite new
steps—they recite an unconventional arrangement of unconventional steps. As the
PTAB found, the prior art cited by Apple did not teach using a caller identifier to
access a user-specific profile for routing between two networks as the allegedly
representative claims all recite. See Apple, Inc. v. VoIP-Pal.com, Inc., IPR2019-
01003, -01006, -01008, -01009, Paper 7 at pp. 18-19 (PTAB Nov. 12, 2019);
compare Appx4514-4515, ¶¶63-64. The district court accepted VoIP-Pal’s
allegations that user-specific handling was a significant and unconventional
improvement on prior technology. Appx76; Appx604-605, ¶32. Thus, any
ordering containing these claimed steps must be unconventional.
Appellees’ own authority, Synopsys, Inc. v. Mentor Graphics Corp., admits
that “the contours of what constitutes an inventive concept are far from precise.”
See Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016); RB45. Indeed, Synopsys acknowledged that the customizable filtering
feature in BASCOM was an inventive concept over inflexible one-size-fits-all
schemes. Id. at 1151-52 (citing BASCOM, 827 F.3d at 1350). As in BASCOM, the
user-specific access limitations of the asserted claims improve upon prior art
systems that imposed on all users a one-size-fits-all manner of call initiation. Id. at
19
1152 (recognizing that BASCOM’s solution “overcame defects in prior art
embodiments and elevated an otherwise abstract idea to a patentable invention.”).
Appellees and the district court are silent regarding VoIP-Pal’s BASCOM
analogy. BB55-56. Both have misinterpreted BASCOM’s inventive concept as
merely relating to the location of the filtering server. Appx3455; Appx24-25. But
this Court has rejected that view. See Intellectual Ventures I LLC v. Symantec
Corp., 838 F.3d 1307, 1321 n.13 (Fed. Cir. 2016). If BASCOM’s user-specific
filtering was an inventive concept, then so is VoIP-Pal’s user-specific calling.
Contrary to what Appellees claim, VoIP-Pal does not assert that claims need
only to capture the inventive concept, in the sense of encompass. RB45. VoIP-
Pal’s brief expressly states that user-specific calling and transparent routing are
recited in the asserted claims. BB57. Appellees want the Court to believe that the
asserted claims must be limited to these inventive concepts but that is not the law.
Indeed, under Appellees’ own authority, claims failed step two because they did
not recite an inventive concept, not because they were not limited to the inventive
concept. See Ericsson, 2020 U.S. App. LEXIS 11702, at *22-23 (“[Particular
software arrangement] cannot provide an inventive concept at step two because it
is not recited in claims 1 or 5.”); Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed.
Cir. 2018) (concluding that “claim 1 does not recite an inventive concept”). The
Court should not be duped by Appellees’ attempt to unduly narrow step two.
20
2. The asserted claims recite inventive concepts.
a. User-specific calling
The Court should also not be fooled by Appellees’ attempts to hide their
previous admissions that the asserted claims recite user-specific call handling. The
record plainly shows that Apple and its expert took the position before the PTAB
that the asserted claims require user-specific features—the exact opposite of the
position Appellees take now. Appx3645-3653; Appx4514-4515, ¶¶63-64.
Appellees’ claim that none of the asserted claims require user-specific calling is
not only untrue, it is simply not credible.
First, Appellees dispute that the profile limitation mandates user-specific
calling. RB47. Yet, Appellees proposed construing the limitations “profile” and
“attributes” as a “record” or “characteristics” that was “specific to the respective
[user/participant].” Appx2453; Appx2473. Appellees fundamentally
misunderstand that the claimed profile attributes necessarily require user-specific
calling because the asserted claims require that the call’s destination be determined
by these attributes, which Appellees agree are user specific. Appx2215, 37:55-64.
Underscoring Appellees’ misunderstanding, Appellees mistakenly believe that
these profile attributes, such as national or international dialing digits, are part of
the caller’s phone number. RB47. As explained above, they are not.
21
Second, Appellees fail to support their assertion that “produc[ing] a new
second participant identifier” is not user specific. RB47. Appellees merely refer to
adding the caller’s country and area code to the callee’s number, apparently
referring to the prepending operations in Fig. 8B. Id.; Appx2171 (blocks 388, 394,
400). But these operations are user specific because profile attributes, which
Appellees admit are user specific, are prepended. Appx2473 (Appellees proposing
“attribute” be construed to mean “characteristic specific to the respective
[user/participant].”). Moreover, Fig. 8B illustrates how two different users could
enter the same phone number but have their calls routed to different destinations if
their profiles are different. Appx2171; Appx2206-2208, 20:14-60, 22:5-23:12.
Third, Appellees repeat the same erroneous argument that the claims involve
comparing caller and callee phone numbers. RB47. But the asserted claims, as
Appellees’ own constructions require, recite comparing a callee identifier with
user-specific profile attributes. Appellees do not and cannot explain how a routing
determination that is predicated on user-specific attributes would not be inherently
user specific. RB47. As such, Appellees’ bare assertion that “[t]here is nothing
user-specific about this comparison” can hardly satisfy their burden to prove
ineligibility by clear and convincing evidence. See Berkheimer, 881 F.3d at 1368.
Moreover, the specification undermines Appellees’ argument. For example,
the specification discloses preventing a caller from making calls if that caller’s
22
maximum concurrent calls attribute is violated. Appx2790 (block 256). Different
callers’ profiles may have different user-specific attributes that inform the
controller when to prevent their calls. Appx2795, compare Fig. 11 with Fig. 12.
As another example, the London subscriber’s profile permits dialing local 11-digit
PSTN numbers. Appx2795, Fig. 12. But if the Calgary subscriber did so, the
routing controller would prevent the call because his profile only allows 10-digit
PSTN numbers at most. Id., Fig. 11; Appx2791 (blocks 396, 404).
Furthermore, both Appellees and the district court fail to appreciate that if
the claims did not recite user-specific call handling, then the claims would not need
to consult the caller’s profile attributes or to compare them to the callee identifier.
Rather, routing would use the callee identifier without any user-specific data. The
claimed approach therefore recites an inventive concept because conventional
PSTN and PBX nodes did not rely on user-specific profile attributes. Rather, they
imposed a one-size-fits-all standard for call initiation. Appx2121-2122, ¶32.
b. Transparent routing
Without any support, Appellees proclaim that “nothing in the claims requires
. . . independent routing” and that the claims “also [cover] methods where the
routing is done [solely] based on the phone number of the callee.” RB48. These
ipse dixit statements could not be more inaccurate. The claimed invention
performs network/node selection irrespective of the phone number dialed. All of
23
the limitations that Appellees dispute show that the claims recite transparent
routing.
First, Appellees assert that the limitation “second network classification
criterion is met if the second participant is not registered with the system”
“cover[s] systems where dialing 9 is required for any callees not in the database,”
which is woefully incorrect. RB48. Regardless of what is dialed, if the callee is
not registered with the system, then the claims plainly recite that the call is routed
to “a gateway to a network external to the system.” Appx2215, 38:3-9; Appx2430,
37:56-63, 38:55-59 (transparent network selection); compare Appx2287, 37:50-63
(transparent node selection based on profile search); see also Appx2171 (block
269); Appx2826, 20:61-21:11; Appx2828, 23:52-61. Thus, network/node selection
occurs transparently to the caller based on criteria other than the number dialed.
Second, Appellees claim that the limitation “[d]etermine the Internet address
associated with the [callee] device based on a user profile for the [callee]” does not
preclude “dialing 9 to reach certain callees.” RB49. Again, Appellees are badly
mistaken. The call is routed as either a system communication or an external
communication regardless of what number the caller dialed. Moreover, claim 22
of the ’002 patent, which Appellees cite, concerns system (internal network)
communications, not external network communications. Appx2359, 41:55-60;
Appx2357, 37:36-39, 37:55-38:2. Effectively, Appellees argue that claim 22
24
would cover dialing 9 in order to reach non-PSTN destinations, which is the exact
opposite of dialing 9’s conventional use.
In sum, Appellees’ arguments find no basis in the claims, not VoIP-Pal’s
arguments. The asserted claims plainly recite the inventive concepts of user-
specific calling and transparent routing and therefore are patent eligible.
IV. THE DISTRICT COURT’S ELIGIBLITY ANALYSIS WAS

ERRONEOUS.
A. The District Court Improperly Chose Representative Claims.
The district court compounded the errors in its eligibility analysis by
misidentifying the allegedly representative claims. Appellees conveniently omit
that the district court rejected Appellees’ argument that claim 1 of the ’002 patent
is representative of all the asserted claims. Appx103-104. Even assuming that it is
proper to evaluate the eligibility of individual claims based on allegedly
representative claims, Appellees bore the initial burden to establish the
representative claims. See PPS Data, LLC v. Jack Henry & Assocs., 404 F. Supp.
3d 1021, 1030 (E.D. Tex. 2019); Pragmatus Telecom, LLC v. Genesys Telecomms.
Labs., Inc., 114 F. Supp. 3d 192, 200 (D. Del. 2015). The district court improperly
relieved Appellees of this burden by formulating its own set of allegedly
representative claims. The district court also erred by failing to confine its Alice
analysis to claim 1 of ’002 patent—the claim Appellees actually asserted was
representative. See PPS Data, 404 F. Supp. 3d at 1031. Appellees try to hide
25
these errors by shifting the burden to VoIP-Pal to identify eligibility-determinative
differences between the allegedly representative claims and the non-representative
claims, which is improper because Appellees failed to make a prima facie case of
representativeness as to three of the four allegedly representative claims. Id.
Moreover, at least claim 29 of the ’330 patent and claim 14 of the ’762
patent do matter for eligibility because these claims provide many of the details
allegedly missing from the allegedly representative claims. Appx3402, 42:51-54;
Appx2216. Furthermore, the district court prevented VoIP-Pal from asserting
other claims that recite additional details regarding how the invention achieves its
desired goals in violation of VoIP-Pal’s due process rights. See PPS Data, 404 F.
Supp. 3d at 1032-33; Appx2749-2750, n. 8.; Appx8637-8638; Appx8660-8666.
B. The District Court Erred By Failing To Conduct Claim

Construction.
Appellees’ claim that VoIP-Pal never raised any claim construction dispute
in opposition to Appellees’ motion to dismiss strains credulity. The parties fully
briefed claim construction nearly three months before the district court dismissed
the case. Appx165, # 93-95. By definition, the parties’ claim construction
disputes related to Appellees’ motion to dismiss. Appx2435 (identifying claim
construction disputes). In particular, VoIP-Pal proposed that the disputed terms
“participant profile,” “user profile,” and “attributes” be construed as user specific.
Appx3473-3475. Moreover, VoIP-Pal sought leave to file a supplemental brief in

26
support of its opposition to Appellees’ motion to dismiss to point out that Apple
argued to the PTAB that the asserted claims required user-specific features—the
exact opposite position that Appellees took in their motion to dismiss and take
now. Appx3647-3653. VoIP-Pal expressly argued that “whether the claims
require such user-specific features is material to the Alice analysis.” Appx3652-
3653. Inexplicably, the district court refused to construe the terms, to hold Apple
to the construction it urged to the PTAB, or to adopt VoIP-Pal’s construction of the
terms that VoIP-Pal argued in its opposition should be construed as user-specific.
If VoIP-Pal did not make it clear in its opposition or its claim construction brief
that it was arguing that certain terms should be construed as user specific, then
VoIP-Pal made it abundantly clear in its supplemental brief. Appx3652-3653, n. 7.
Thus, Appellees’ claim that VoIP-Pal did not raise a claim construction dispute or
that VoIP-Pal waived any claim constructions arguments is demonstrably false.
The district court’s failure to adopt VoIP-Pal’s construction of the terms
“participant profile,” “user profile,” and “attributes,” or to perform any claim
construction whatsoever, is especially egregious because the district court violated
this Court’s precedent in MyMail v. ooVoo. The district court in this case is the
same district court in MyMail that the Court found “erred by failing to address the
parties’ claim construction dispute before concluding, on a [Rule 12] motion, that
the MyMail patents [were ineligible].” See MyMail, Ltd. v. ooVoo, LLC, 934 F.3d
27
1373, 1381 (Fed. Cir. 2019). Worse, the district court did not even cite MyMail
though the Court decided MyMail nearly three months earlier.
Appellees’ attempt to show that there was no dispute between the parties’
proposed constructions of “participant profile,” “user profile,” and “attributes”
misses the point. The dispute is not whether the difference in the parties’ proposed
constructions impacts the eligibility analysis. The dispute is that both parties
proposed that the Court construe these terms to be user specific but for the
purposes of its motion to dismiss and this appeal, Appellees repeatedly argue that
the claim requires no user specificity whatsoever. See, e.g., RB20; RB30; RB34-
35; RB46-47; RB48; RB53. This dispute impacts that eligibility analysis because
the district court determined that the asserted claims are not directed to user-
specific handling when both parties’ proposed constructions of the claims require
user-specific handling. Appx55. The district court also rejected user-specific
handling as an inventive concept though no evidence in the record refutes VoIP-
Pal’s factual allegations that user-specific handling is an inventive concept.
Appx71-72; see Aatrix, 882 F.3d at 1125. These disputes “demonstrate a need for
claim construction” and preclude a finding that the asserted claims were well
understood, routine, and conventional. Id. at 1129.
28
C. The Ineligibility Determination Was Premature.
Attempting to drive a wedge between the claims and VoIP-Pal’s plausible
factual allegations that the alleged inventive concepts were not well understood,
routine, or conventional, Appellees again resort to their go-to argument, which is
that the claims do not recite the alleged inventive concepts. As discussed above,
the asserted claims plainly do recite inventive concepts—they just do not, as
Appellees contend, recite the words “user-specific calling” and “transparent
routing.”
But like the district court, Appellees mistakenly believe that the asserted
claims do not recite an inventive concept because they allegedly “lack the requisite
‘how’” to achieve the inventive concept and therefore there is no need to consider
whether the recited inventive concepts were not well understood, routine, or
conventional. RB58; Appx76. The district court adopted this theory from Two-
Way Media, which in turn relies on Electronic Power Group v. Alstom for applying
the how test at step two. See Two-Way Media Ltd v. Comcast Cable Communs.,
LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (“Inquiry therefore must turn to any
requirements for how the desired result is achieved.”) (citing Elec. Power Group,
LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016)). But a closer reading of
both Two-Way Media and Electric Power shows that the Court considered whether
the claims-at-issue recited non-conventional components or a non-conventional
29
and non-generic arrangement of known, conventional pieces under BASCOM. See
Two-Way Media, 874 F.3d at 1339 (citing BASCOM, 827 F.3d at 1350); Electric
Power, 830 F.3d at 1355 (citing BASCOM, 827 F.3d 1341). Thus, contrary to the
district court’s and Appellees’ theory, the not-well understood, non-routine, and
unconventional nature of the asserted claims is the relevant consideration to
determining how the asserted claims achieve their inventive concept. And, as
explained above, the asserted claims satisfy this test. Thus, the district court had
no basis for not attributing the inventive concepts to the asserted claims, even
under the how test.
The district court’s and Appellees’ belief that step two can turn on something
other than the factual determination of whether the asserted claims recite not-well
understood, not routine, and unconventional activities is plainly erroneous. In
Berkheimer v. HP, the Court specifically identified the step two question of
“whether something is well-understood, routine, and conventional” as “a factual
determination.” Id. at 1368-69 (quotation omitted). Not every case presents
factual disputes. But, Berkheimer made clear that step two of the eligibility inquiry
involves questions of fact. See Berkheimer, 881 F.3d at 1367-1368. As the Court
recently stated in Cellspin Soft v. Fitbit, “the principle, implicit in Berkheimer and
explicit in Aatrix, that factual disputes about whether an aspect of the claims is
inventive” is one that “may preclude dismissal at the pleadings stage under § 101.”
30
Cellspin Soft, 927 F.3d at 1318. Thus, the question at the pleadings stage is
whether VoIP-Pal made “plausible and specific factual allegations that aspects of
the claims are inventive,” or merely conclusory allegations, “wholly divorced from
the claims.” Id. at 1317. Because VoIP-Pal made specific, plausible, and unrefuted
factual allegations about why aspects recited in the asserted claims were
unconventional, the district court erred in finding the asserted claims ineligible.
V. CONCLUSION
In conclusion, VoIP-Pal respectfully requests that the Court reverse the
judgment of invalidity of the asserted claims and remand this case to the district
court for further proceedings.
Dated: June 10, 2020 Respectfully submitted,
Hudnell Law Group P.C.
By: /s/ Lewis E. Hudnell, III

Lewis E. Hudnell, III
Attorneys for Plaintiff-Appellant

VoIP-Pal.com, Inc.
31
CERTIFICATE OF SERVICE
I hereby certify that on June 10, 2020, I caused the foregoing brief to be
electronically filed with the Clerk of the Court for the United States Court of
Appeals for the Federal Circuit by using the appellate CM/ECF system.
Participants in the case are registered CM/ECF users and service will therefore be
accomplished by the appellate CM/ECF system.


VoIP-Pal.com, Inc.
32
CERTIFICATE OF COMPLIANCE WITH TYPE-VOLUME LIMITATIONS,

TYPEFACE REQUIREMENTS, AND TYPE STYLE REQUIREMENTS
1. This brief complies with the type-volume limitation of Federal Circuit
Rule 32(a) because it contains 6,937 words, excluding the parts of the brief
exempted by Federal Rule of Appellate Procedure 32(f) and Federal Circuit Rule
32(b).
2. This brief complies with the typeface requirements of Federal Rule of
Appellate Procedure 32(a)(5) and the type style requirements of Federal Rule of
Appellate Procedure 32(a)(6) because it was prepared in a proportionally spaced
font using Microsoft Word in Times New Roman 14-point font.


VoIP-Pal.com, Inc.
33

Voip-Pal v. Apple Appeal

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Voip-Pal v. Apple Appeal

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Case: 20-1241 Document: 26 Page: 1 Filed: 06/10/2020

Docket Nos. 20- 1241, 20-1244

United States Court of Appeals

APPELLANT’S REPLY BRIEF

COUNSEL PRESS ∙ (213) 680-2300 PRINTED ON RECYCLED PAPER

Counsel for the:

2. Name of Real Party in interest 3. Parent corporations and

June 10, 2020 /s/Lewis E. Hudnell, III

Please Note: All questions must be answered Lewis E. Hudnell, III

cc: All counsel of record

TABLE OF AUTHORITIES ................................................................................... iii

TABLE OF ABBREVIATIONS ..............................................................................vi

I. SUMMARY OF REPLY ARGUMENT ......................................................... 1

II. THE TWITTER APPEAL IS NOT RELATED TO THIS APPEAL ............. 2

III. THE DISTRICT COURT ERRONEOUSLY DETERMINED THAT

A. The Asserted Claims Are Not Directed To An Abstract Idea .............. 4

1. VoIP-Pal’s factual allegations are not divorced from the

2. The asserted claims are directed to the benefits alleged by

a. User-specific calling ......................................................... 7

3. The district court’s analysis conflicts with this

B. The Asserted Claims Plausibly Recite Inventive Concepts ................17

1. The asserted claims recite inventive concepts when

2. The asserted claims recite inventive concepts ..........................21

a. User-specific calling ....................................................... 21

IV. THE DISTRICT COURT’S ELIGIBLITY ANALYSIS

A. The District Court Improperly Chose Representative Claims ............25

B. The District Court Erred By Failing To Conduct

C. The Ineligibility Determination Was Premature ................................. 29

CERTIFICATE OF SERVICE ................................................................................32

CERTIFICATE OF COMPLIANCE ....................................................................... 33

Alice Corp. Pty. Ltd. v. CLS Bank Int’l,

Cardpool, Inc. v. Plastic Jungle, Inc.,

Cellspin Soft, Inc. v. Fitbit, Inc.,

DDR Holdings, LLC v. Hotels.com, L.P.,

Elec. Power Group, LLC v. Alstom S.A.,

Ericsson Inc. v. TCL Commun. Tech. Holdings Ltd.,

Finjan, Inc. v. Blue Coat Sys.,

Intellectual Ventures I LLC v. Symantec Corp.,

Koninklijke KPN N.V. v. Gemalto M2M GmbH,

McRO, Inc. v. Bandai Namco Games Am. Inc.,

MyMail, Ltd. v. ooVoo, LLC,

PPS Data, LLC v. Jack Henry & Assocs.,

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

VoIP-Pal.com, Inc. v. Twitter, Inc.,

Fed. Cir. R. 12 ............................................................................................................ 2

Jeffrey A. Leftsin, Inventive Application: A History,

VoIP-Pal Plaintiff-Appellant VoIP-Pal.com, Inc.

Apple Defendant-Appellee Apple, Inc.

Amazon Defendants-Appellees Amazon.com,

BB## VoIP-Pal’s Opening Brief at page ##

RB## Appellees’ Response Brief at page ##

The ’762 patent U.S. Patent No. 9,537,762

The ’330 patent U.S. Patent No. 9,813,330

The ’330 claims Claims 3, 4, 12, and 14 of the ’330

The ’002 patent U.S. Patent No. 9,826,002

The ’549 patent U.S. Patent No. 9,948,549

The ’549 claims Claims 2, 6, 9, 12, 17, and 24 of the

The patents-in-suit The ’762 patent, the ’330 patent, the

FAC First Amended Complaint

PTAB Patent Trial and Appeal Board

IPR Inter Partes Review

POSITA Person of Ordinary Skill in the Art

The Twitter Appeal VoIP-Pal.com, Inc. v. Twitter, Inc., No.

The Twitter consolidated cases VoIP-Pal.com, Inc. v. Twitter, Inc., No.