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`Exhibit 1
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`Case 6:22-cv-00031-ADA Document 127-2 Filed 08/18/23 Page 2 of 41
`Trials@uspto.gov
`Paper 9
`571-272-7822
`Entered: August 2, 2023
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC,
`Petitioner,
`v.
`FLYPSI, INC. (D/B/A FLYP),
`Patent Owner.
`
`IPR2023-00360
`Patent 9,667,770 B2
`
`Before ROBERT J. WEINSCHENK, JAMES J. MAYBERRY, and
`MICHAEL T. CYGAN, Administrative Patent Judges.
`MAYBERRY, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
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`INTRODUCTION
`I.
`Background and Summary
`A.
`Google LLC (“Petitioner”) filed a Petition requesting inter partes
`review of claims 1–6 (the “Challenged Claims”) of U.S. Patent
`No. 9,667,770 B2 (Ex. 1001, the “’770 patent”). Paper 1 (“Pet.”), 1. Flypsi,
`Inc. (“Patent Owner”) filed a Preliminary Response to the Petition. Paper 6
`(“Prelim. Resp.”). With our authorization, Petitioner filed a Preliminary
`Reply (“Prelim. Reply,” Paper 7) and Patent Owner filed a Preliminary
`Sur-reply (“Prelim. Sur-Reply,” Paper 8).
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021) (permitting the
`Board to institute trial on behalf of the Director). To institute an inter partes
`review, we must determine that the information presented in the Petition
`shows “a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).
`For the reasons set forth below, upon considering the current record, we
`institute an inter partes review.
`Real Parties-in-Interest
`B.
`Petitioner identifies itself as the real party-in-interest. Pet. 1. Patent
`Owner identifies itself as the real party-in-interest. Paper 4, 2.
`Related Matters
`C.
`The parties identify the following litigations as matters related to the
`’770 patent: Flypsi, Inc., (d/b/a Flyp) v. Google, LLC, No. 6:22-cv-00031
`(W.D. Tex.); Flypsi, Inc. (d/b/a Flyp) v. Dialpad, Inc., No. 6:21-cv-00642
`(W.D. Tex.).
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`The parties identify the following U.S. patents with concurrently filed
`IPR petitions as matters related to the ’770 patent: US 10,051,105 (“the ’105
`patent”), US 11,012,554 (“the ’554 patent”), US 10,334,094 (“the ’094
`patent”), and US 11,218,585 (“the ’585 patent”).
`The ’770 Patent
`D.
`The ’770 patent, titled “Telephone Network System and Method,”
`issued May 30, 2017, from application US 14/307,052. Ex. 1001, codes
`(54), (45), (21). The ’770 patent ultimately claims priority to application
`US 13/944,853, filed on July 17, 2013. Id. at code (63).
`The ’770 patent relates to “[s]ystems for and methods of delivering
`telephone calls using the combination of a data channel and a voice
`channel.” Ex. 1001, Abstract. “A data channel connection with the
`telephone handset may provide pre-call information used to set up incoming
`and outgoing calls which are ultimately connected using a voice channel,”
`and “[u]se of the pre-call information may permit the same handset to be
`associated with multiple secondary telephone numbers from which calls
`appear to have been made and to which calls appear to have been placed.”
`Id.
`
`The ’770 patent “permits the user to select one or more secondary
`telephone numbers to be referenced to a primary telephone number for the
`handset.” Ex. 1001, 4:67–5:2. A “bridge telephone number” may be
`“assign[ed] . . . to be used to connect the call from the handset 340 to the
`switch 110 and send pre-call information including the bridge telephone
`number to the handset via the data channel.” Id. at 7:50–54. “The bridge
`telephone number may be associated with the switch 110, and calls to the
`bridge telephone number may be automatically routed to this switch.” Id.
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`at 7:55–57. The bridge telephone number is associated “with the primary
`telephone number for the handset 340, the secondary telephone number
`selected for the call, and the contact telephone number to be called.” Id.
`at 7:57–63. The ’770 patent allows “the secondary telephone number to be
`displayed as the number from which the call appears to have been placed.”
`Id. at 8:22–26.
`Figure 3, reproduced below, illustrates “data channel and voice
`channel connections used to provide telephone service.” Ex. 1001, 3:50–52.
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`As shown in Figure 3, an “incoming call is routed from the caller’s
`telephone to the PSTN 310,” and “over the PSTN 310 to the switch 110.”
`Ex. 1001, 5:57–59. Then, “the call Manager 104 may assign or look up a
`bridge telephone number to be used for completion of the call,” and the
`“bridge telephone number may be associated with the switch 110, and calls
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`to the bridge telephone number may be automatically routed to this switch.”
`Id. at 5:66–6:4. Call information, including “the assigned/looked up bridge
`telephone number” is transmitted “via the data channel connection, i.e., over
`the Internet 316 and the Mobile Data Network 348.” Id. at 6:33–37. The
`’770 patent differentiates between “IP governed communications . . .
`conducted over a ‘data channel,’” and “CDMA, GSM or like governed
`communications, when used to carry voice information . . . conducted over a
`‘voice channel.’” Id. at 4:35–46.
`Challenged Claims
`E.
`The Petition challenges claims 1–6. Pet. 3. Claim 1 is the sole
`independent claim, which we reproduce below.
`1. A method of providing telephone service, the method
`comprising:
`associating a secondary telephone number with a primary
`telephone number in at least one computer memory device, the
`primary telephone number being assigned to a handset;
`acquiring first digital information from the handset over at
`least one data channel, the first digital information indicating
`primary call processing rules for handling calls directed to the
`primary telephone number;
`storing the primary call processing rules in the at least one
`computer memory device;
`acquiring second digital information from the handset over
`the at least one data channel, the second digital information
`indicating secondary call processing rules for handling calls
`directed to the secondary telephone number;
`storing the secondary call processing rules in the at least
`one computer memory device;
`receiving an incoming call over at least one voice channel
`at a switch, the switch being associated with a bridge telephone
`number such that calls directed to the bridge telephone number
`are automatically routed to the switch, the incoming call being
`directed to a handset-associated telephone number, the handset-
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`associated telephone number being the primary telephone
`number or the secondary telephone number, and;
`based on the primary call processing rules or the secondary
`call processing rules:
`transmitting pre-call information to the handset over the at
`least one data channel the pre-call information including the
`bridge telephone number and the handset-associated telephone
`number, such that the handset is capable of displaying the
`handset-associated telephone number to a user and, based on user
`input, accepting the incoming call by connecting with the switch
`over the at least one voice channel using the bridge telephone
`number.
`Ex. 1001, 10:10–33.
`Prior Art and Asserted Grounds
`F.
`Petitioner asserts that the Challenged Claims are unpatentable based
`on four grounds:
`Claims Challenged
`1–5
`6
`1–5
`6
`Pet. 3.
`Petitioner also relies on the declaration testimony of Dr. Lin.
`Ex. 1002; see also Ex. 1003 (providing Dr. Lin’s Curriculum Vitae).
`
`References/Basis
`Backhaus2, Logan3
`Backhaus, Logan, Saksena4
`Backhaus, Logan, Taylor5
`Backhaus, Logan, Saksena, Taylor
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`35 U.S.C. §
`1031
`103
`103
`103
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 296–07 (2011), took effect on September 16, 2011. The changes
`to 35 U.S.C. §§ 102 and 103 in the AIA do not apply to any patent
`application filed before March 16, 2013. Because the earliest possible
`priority date for the ’770 patent is after March 16, 2013, we refer to the AIA
`version of the statute.
`2 US 2013/0295892; published Nov. 7, 2013 (Ex. 1005, “Backhaus”).
`3 US 2010/0128857 A1, published May 27, 2010 (Ex. 1015, “Logan”).
`4 US 2006/0077956; published Apr. 13, 2006 (Ex. 1008, “Saksena”).
`5 US 2009/0052437; published Feb. 26, 2009 (Ex. 1007, “Taylor”).
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`The following subsections provide brief descriptions of the asserted
`prior art references.
`Backhaus (Ex. 1005)
`1.
`Backhaus, titled “System and Method for Provision of a Second Line
`Service to a Telecommunications Device Using Mixed Protocols,” published
`November 7, 2013 from an application, US 13/920,056, filed June 17, 2013.
`Ex. 1005, codes (54), (43), (21), (22). The application claims priority to a
`parent application, US 13/466,074, filed May 7, 2012, and to a provisional
`application, US 61/660,772, filed June 17, 2012. Id. at codes (63), (60).
`Backhaus relates generally to “routing calls between a third party
`telecommunications device (‘TD’) and a subscriber TD associated with a
`primary service and a second line service (‘SLS’).” Ex. 1005, code (57)
`(Abstract). We reproduce Backhaus’s Figure 1, below, as annotated by
`Petitioner.
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`Pet. 10. Backhaus’s Figure 1 depicts “a system for providing a second line
`service . . . to a user of telecommunications device,” with Petitioner
`annotating the figure by coloring sections of the system. Id.; Ex. 1005 ¶ 17.
`A subscriber TD 110 (in green in the figure above) is associated with a
`primary phone number provided by a telephone service provider and a
`secondary phone number provided by SLS platform 115. Ex. 1005 ¶ 32.
`In operation, any calls placed to the primary or secondary phone
`number from third party TD 120 (in blue in the figure above) to subscriber
`TD 110 are routed through communications network 125 (in yellow in the
`figure above), for example, a cellular network, PSTN, cable network, or the
`Internet. Ex. 1005 ¶ 32. A call made to the primary phone number is routed
`directly to subscriber TD 110. Id. ¶ 33. A call made to the secondary, or
`SLS, number is routed to SLS platform 115 (red in the figure above). At
`SLS platform 115, redirection module 117 queries central SLS database 116
`to determine the subscriber TD associated with the secondary phone number
`called by the third party. Once this determination is made, redirection
`module 117 modifies the call data to reflect its identification as a call for the
`second line number and then makes the call available at the primary number
`associated with subscriber TD 110 associated with the called secondary
`phone number.
`Logan (Ex. 1015)
`2.
`Logan, titled “Call Forwarding System and Method Employing
`Virtual Phone Numbers Associated with Landline and Other Discrete
`Telephone Units,” published May 27, 2010, from application US
`12/344,073, filed December 24, 2008. Ex. 1015, codes (54), (43), (21), (22).
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`The application claims priority to provisional application US 61/009,177,
`filed December 26, 2007. Id. at code (60).
`Logan “relates to systems and methods for selectively forwarding
`calls to specified phone numbers.” Ex. 1015 ¶ 2. The disclosed systems and
`methods include forwarding multiple “virtual” phone numbers to a user’s
`cellphone, which has a single “base” phone number. Id. ¶ 21. Logan refers
`to this cellphone as a Multi Number Cellphone (“MNC”). Id.
`Relevant to this proceeding, “[i]n the initial set-up of the system, a
`user, via his MNC . . . 140 can enter a set of preferences that are transmitted
`to the system server 130 via datastream 134. These preferences notify the
`system server of which calls a user desires to receive.” Ex. 1015 ¶ 29.
`For example, a user can desire that when at location #1 (home),
`the MNC receives incoming calls directed at virtual #1 (“home”
`phone number). When an incoming telephone call is transmitted
`to the system server, the forwarding application determines if
`the user is at location #1 (home), and if they are, then the
`application forwards the call to the MNC user at step 240. In
`the alternative, if the user is not at the location #1 (home), then
`it is not a desired call for the user, and the call is therefore
`forwarded to a voicemail database at procedure step 250.
`Id. ¶ 39.
`
`Saksena (Ex. 1008)
`3.
`Saksena, titled “Common Telephony Services to Multiple Devices
`Associated with Multiple Networks,” published April 13, 2006, from
`application US 10/961,387, filed October 8, 2004. Ex. 1008, codes (54),
`(43), (21), (22). Saksena “relates to common telephony services to multiple
`devices associated with multiple networks.” Id. ¶ 1. One disclosed method
`includes
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`assigning an identical unique identifier to a first telephony device
`and a second telephony device associated with a first network
`and second network, respectively and receiving, via a packet-
`based network, a call set-up request associated with the unique
`identifier. The method includes routing, via the packet-based
`network, a call to or from the first device, the second device, or
`the first and second devices, based on a routing preference.
`Id. ¶ 57.
`
`Taylor (Ex. 1007)
`4.
`Taylor, titled “System and Method for Dynamic Telephony Resource
`Allocation Between Premise and Hosted Facilities,” published February 26,
`2009, from application US 12/195,298, filed August 20, 2008. Ex. 1007,
`codes (54), (43), (21), (22). The application claims priority to provisional
`application US 60/957,151, filed August 12, 2007. Id. at code (60).
`Taylor “relates to telecommunication and a networked computer
`telephony system including the Internet and the Public Switched Telephone
`System, and more particularly to user-configurable allocation of telephony
`resources between a hosted facility and a subscriber’s premise.” Ex. 1007
`¶ 2. Relevant to this proceeding, Taylor discloses PSTN Interface 52, which
`allows Taylor’s Computer Telephony server 50 to interface with a public
`switched telephone network through switch 12. Id. ¶ 8.
`
`
`II. ANALYSIS OF PETITIONER’S CHALLENGES
`Applicable Law
`A.
`Petitioner’s asserted grounds of unpatentability are based on
`obviousness under 35 U.S.C. § 103.
`A patent for a claimed invention may not be obtained,
`notwithstanding that the claimed invention is not identically
`disclosed as set forth in section 102, if the differences between
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`the claimed invention and the prior art are such that the claimed
`invention as a whole would have been obvious before the
`effective filing date of the claimed invention to a person having
`ordinary skill in the art to which the claimed invention pertains.
`Patentability shall not be negated by the manner in which the
`invention was made.
`35 U.S.C. § 103 (2011); see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art; (3)
`the level of ordinary skill in the art; and (4) when available, objective
`evidence, such as commercial success, long felt but unsolved needs, and
`failure of others. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); see
`KSR Int’l Co., 550 U.S. at 407 (“While the sequence of these questions
`might be reordered in any particular case, the [Graham] factors continue to
`define the inquiry that controls.”). The Court in Graham explained that
`these factual inquiries promote “uniformity and definiteness,” for “[w]hat is
`obvious is not a question upon which there is likely to be uniformity of
`thought in every given factual context.” 383 U.S. at 18.
`The Supreme Court made clear that we apply “an expansive and
`flexible approach” to the question of obviousness. KSR Int’l Co., 550 U.S.
`at 415. Whether a patent claiming the combination of prior art elements
`would have been obvious is determined by whether the improvement is more
`than the predictable use of prior art elements according to their established
`functions. Id. at 417. To support this conclusion, however, it is not enough
`to show merely that the prior art includes separate references covering each
`separate limitation in a challenged claim. Unigene Labs., Inc. v. Apotex,
`Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness
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`additionally requires that a person of ordinary skill at the time of the
`invention “would have selected and combined those prior art elements in the
`normal course of research and development to yield the claimed invention.”
`Id.
`
`“[O]bviousness must be determined in light of all the facts, and . . . a
`given course of action often has simultaneous advantages and disadvantages,
`and this does not necessarily obviate motivation to combine” teachings from
`multiple references. Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165
`(Fed. Cir. 2006) (emphasis added); see also PAR Pharm., Inc. v. TWI
`Pharms., Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014) (“The presence or
`absence of a motivation to combine references in an obviousness
`determination is a pure question of fact.”). As a factfinder, we also must be
`aware “of the distortion caused by hindsight bias and must be cautious of
`arguments reliant upon ex post reasoning.” KSR Int’l Co., 550 U.S. at 421.
`For institution, “[t]he ‘reasonable likelihood’ standard is a somewhat
`flexible standard that allows the Board room to exercise judgment.” Patent
`Trial and Appeal Board Consolidated Trial Practice Guide 53 (Nov. 2019),
`available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`Level of Ordinary Skill in the Art
`B.
`The level of skill in the art is “a prism or lens” through which we view
`the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d
`1350, 1355 (Fed. Cir. 2001). Petitioner contends that
`A person of ordinary skill in the art at the time of the alleged
`invention of the ’770 patent
`. . . would have had an
`undergraduate degree in electrical engineering, computer
`engineering, computer science or a related field along with two
`years of work experience in the field of communication. . . .
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`More education can supplement practical experience and vice
`versa.
`Pet. 4 (referencing Ex. 1002 ¶¶ 17–18). Patent Owner does not dispute the
`level of ordinary skill in the art at this stage of the proceeding. Prelim.
`Resp. 5.
`For the purposes of this Decision, we apply Petitioner’s definition of
`the level of ordinary skill in the art. We determine that this definition is
`consistent with the prior art of record and the skill reflected in the
`Specification of the ’770 patent, based on our review of the limited record.
`C. Claim Construction
`In inter partes reviews, we interpret a claim “using the same
`claim construction standard that would be used to construe the claim in a
`civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under this
`standard, we construe the claim “in accordance with the ordinary and
`customary meaning of such claim as understood by one of ordinary skill in
`the art and the prosecution history pertaining to the patent.” Id.
`Petitioner states that “the Board need not construe any terms of the
`challenged claims to resolve the underlying controversy.” Pet. 7. Patent
`Owner also does not propose any constructions. Prelim. Resp. 5.
`We determine that we need not expressly construe any claim terms to
`resolve the parties’ disputes on the current record. See Realtime Data, LLC
`v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to
`construe ‘only those terms that . . . are in controversy, and only to the extent
`necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am.
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). To the extent
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`that the scope of any particular claim term requires discussion, however, we
`provide it in our assessment of the challenges, which we turn to next.
`D. Ground 1: Claims 1–5 as obvious over Backhaus and Logan
`Petitioner contends that the combination of Backhaus and Logan
`teaches or suggests each limitation of claims 1–5. Pet. 8–60. Patent Owner
`disputes Petitioner’s contentions. Prelim. Resp. 5–13.
`Independent claim 1
`1.
`We turn our analysis first to the scope and content of the prior art and
`any differences between the prior art and the subject matter of independent
`claim 1, on a limitation-by-limitation basis.
`Preamble
`a)
`The preamble of claim 1 recites “[a] method of providing telephone
`service.” Ex. 1001, 9:65–66. Petitioner contends that, “[t]o the extent that
`the preamble of claim 1 is limiting, Backhaus discloses” the subject matter.
`Pet. 8 (referencing Ex. 1002 ¶¶ 54–62). Specifically, Petitioner contends
`that Backhaus discloses a second line service to a subscriber with a
`telecommunications device. Id.; see also id. at 9 (providing an annotated
`version of Backhaus’s Figure 1, which is an exemplary telephone service
`system); id. at 8–13 (describing the structure and operation of Backhaus’s
`system, and referencing Ex. 1005 ¶¶ 3–11, 31–36, 52–57, 59–139; Ex. 1002
`¶¶ 55–62).
`Upon review of the information in the Petition and corresponding
`evidence, we determine Petitioner has sufficiently demonstrated, at this stage
`of the proceeding, that Backhaus teaches the subject matter of the preamble.
`In view of this determination, we need not resolve, at this stage of the
`proceeding, whether the preamble is limiting.
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`Patent Owner does not dispute Petitioner’s contentions with respect to
`the preamble at this stage of the proceeding.
`Limitation 1.a.
`b)
`Claim 1 recites “associating a secondary telephone number with a
`primary telephone number in at least one computer memory device, the
`primary telephone number being assigned to a handset.” Ex. 1001, 10:1–4
`(limitation 1.a of claim 1). Petitioner contends that Backhaus’s TD 110
`corresponds to the recited handset, and that a primary number is assigned to
`the handset. Pet. 13 (referencing Ex. 1005 ¶¶ 31, 33, 50, 81–83; Ex. 1002
`¶ 63).
`Petitioner contends that Backhaus discloses that a handset’s primary
`number is associated with a secondary telephone number—an SLS number.
`Pet. 13. Petitioner contends that Backhaus discloses associating the primary
`and SLS numbers and storing the association in Master ID Table 305. Id.
`at 13–14 (referencing Ex. 1005 ¶¶ 66, 50, 60, Fig. 3A; Ex. 1002 ¶¶ 64); see,
`e.g., id. at 15 (providing an annotated version of Backhaus’s Figure 3A,
`depicting the Second Line Service Master ID Table 305 in Central SLS
`Database 116, which shows the association between a subscriber’s primary
`number and secondary number). Petitioner contends that SLS database 116,
`a part of SLS platform 115, corresponds to the recited computer memory
`device. Pet. 15–16 (referencing Ex. 1005 ¶¶ 39–40, 42–43; Ex. 1002
`¶¶ 65–66).
`Upon review of the information in the Petition and corresponding
`evidence, we determine Petitioner has sufficiently demonstrated, at this stage
`of the proceeding, that Backhaus teaches the subject matter of limitation 1.a
`of claim 1.
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`Patent Owner does not dispute Petitioner’s contentions with respect to
`this limitation at this stage of the proceeding.
`Limitation 1.b
`c)
`Claim 1 also recites “acquiring first digital information from the
`handset over at least one data channel, the first digital information indicating
`primary call processing rules for handling calls directed to the primary
`telephone number.” Ex. 1001, 10:5–8 (limitation 1.b of claim 1). Petitioner
`contends that the combination of Backhaus and Logan teaches or suggests
`the subject matter of limitation 1.b. Pet. 16 (referencing Ex. 1002 ¶¶ 67–79).
`Petitioner contends that, when a subscriber elects to not answer an
`incoming call to its SLS number, the call is transferred to voicemail. Pet. 16
`(referencing Ex. 1005 ¶¶ 35, 68). Petitioner contends that, given this
`disclosure, “Backhaus at least suggests features associated with
`voicemail/message services and automated responses are also available for
`calls directed to subscriber’s primary number on subscriber TD 110.” Id.
`(referencing Ex. 1002 ¶ 67). Petitioner contends that these services
`correspond to the recited “primary call processing rules.” Id. at 16–17.
`Alternatively, Petitioner contends that a person having ordinary skill
`in the art “would have found [the subject matter of limitation 1.b] obvious in
`view of Logan.” Pet. 17 (referencing Ex. 1002 ¶ 69). Petitioner contends
`that Logan teaches that a user can enter a set of preferences into the user’s
`MNC and transmit those preferences to the system server, using
`datastream 134. Id. at 19 (referencing Ex. 1015 PP 5, 11, 25, 46, 55;
`Ex. 1002 ¶ 71). Petitioner explains that an exemplary preference includes
`routing calls to a specific phone number (for example, one associated with a
`home location or office location) only when the phone is at a specific
`
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`location (such as the user’s home or office) or at specific times. And, if the
`phone is not at one of the locations or the time is not within the set time, the
`call is routed to voicemail. Id. at 19–20 (referencing Ex. 1015 ¶¶ 11, 27–28,
`39, 43; Ex. 1002 ¶ 72).
`Petitioner contends that a person having ordinary skill in the art would
`have been motivated to implement Logan’s server-based call processing
`rules into Backhaus’s system. Pet. 20–21. Petitioner reasons that
`there would be common situations where subscriber TD 110 is
`not able to provide voicemail/preset responses to the unanswered
`call, e.g., when it is turned off or out of battery. Thus, it would
`have been beneficial to implement voicemail/preset response
`capabilities in a server that is associated with subscriber TD 110,
`i.e., SLS server 205 in SLS platform 115, as it would have
`allowed the server to provide voicemail/preset responses to
`unanswered calls even when subscriber TD 110 is unable to
`provide the same.
`Id. at 21 (referencing Ex. 1002 ¶ 74). Petitioner adds that a person having
`ordinary skill in the art “would have likewise been motivated to acquire the
`voicemail/preset responses and associated user-specified configurations
`from TD 110, and store the same in a database accessible to SLS server 205
`(e.g., central SLS database 116) for responding to incoming calls when
`subscriber TD 110 is not available.” Id. at 21 (referencing Ex. 1002 ¶ 74).
`Petitioner also contends that a person having ordinary skill in the art
`would have found it beneficial to provide these preferences for each of the
`numbers associated with a handset, as disclosed in Logan, to “allow[] the
`subscriber in Backhaus to better manage incoming calls to each of the
`primary and SLS numbers by automatically processing these calls based on
`subscriber-specified preferences set for each number (e.g., location-based
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`and/or time-based call processing/forwarding features).” Pet. 21–22
`(referencing Ex. 1015 ¶ 24; Ex. 1002 ¶ 75).
`Petitioner contends that a person having ordinary skill in the art would
`have had a reasonable expectation of success in making the proposed
`modification to Backhaus’s system, as it was well known to implement
`voicemail and preset responses, and call forwarding on a server of a
`telecommunications system. Pet. 22–23 (referencing Ex. 1005 ¶¶ 31, 38, 50,
`71; 1008 ¶¶ 158–159, 164; Ex. 1015 ¶¶ 25–37; Ex. 1002 ¶ 76). Also,
`Petitioner contends that it was known to have a subscriber provide
`information to configure these features. Id. at 23–24 (referencing Ex. 1008
`¶¶ 96, 154, 159, 160, 164; Ex. 1002 ¶ 77). Petitioner adds that Backhaus
`discloses transmitting information from a handset to the server over a data
`channel. Id. at 25 (referencing Ex. 1005 ¶¶ 29, 32, 71–73; Ex. 1002 ¶ 77).
`Upon review of the information in the Petition and corresponding
`evidence, we determine Petitioner has sufficiently demonstrated, at this stage
`of the proceeding, that the combination of Backhaus and Logan teaches the
`subject matter of limitation 1.b of claim 1. Also, on the current record, we
`determine that Petitioner provides reasons, with rational underpinnings, why
`a person having ordinary skill in the art would have been motivated to
`combine the teachings of Backhaus and Logan. Cf. KSR Int’l Co., 550 U.S.
`at 418 (stating that, to facilitate the analysis of an obviousness position, the
`proponent should provide “some articulated reasoning with some rational
`underpinning to support the legal conclusion of obviousness”).
`Patent Owner does not dispute Petitioner’s contentions with respect to
`this limitation at this stage of the proceeding.
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`Limitation 1.c
`d)
`Claim 1 also recites “storing the primary call processing rules in the at
`least one computer memory device.” Ex. 1001, 10:9–10 (limitation 1.c of
`claim 1). Petitioner contends that Logan teaches “that the user-entered
`‘preferences notify the system server of which calls a user desires to
`receive,’” and “that the server ‘determines if the preferences set up by the
`called party indicate whether the call should be forwarded to the user.’”
`Pet. 25 (referencing Ex. 1015 ¶¶ 28–29). Petitioner contends that a person
`having ordinary skill in the art would have understood that Logan stores the
`processing rules in memory or in a database, at least temporarily, to provide
`these operations. Id. at 25–26 (referencing Ex. 1002 ¶ 80); see also id.
`at 26–27 (discussing reasons to combine the teachings of Backhaus and
`Logan, consistent with the reasoning for limitation 1.b).
`Upon review of the information in the Petition and corresponding
`evidence, and based on our analysis of Petitioner’s reasons to combine the
`teachings of Backhaus and Logan, as discussed above in connection with our
`analysis of limitation 1.b, we determine Petitioner has sufficiently
`demonstrated, at this stage of the proceeding, that the combination of
`Backhaus and Logan teaches the subject matter of limitation 1.c of claim 1.
`Patent Owner does not dispute Petitioner’s contentions with respect to
`this limitation at this stage of the proceeding.
`Limitation 1.d
`e)
`Claim 1 also recites “acqui