Case 6:22-cv-00031-ADA Document 127-3 Filed 08/18/23 Page 1 of 38
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`Exhibit 2
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`Case 6:22-cv-00031-ADA Document 127-3 Filed 08/18/23 Page 2 of 38
`Trials@uspto.gov
`Paper 9
`571-272-7822
`Entered: July 31, 2023
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`
`
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`FLYPSI, INC,
`Patent Owner.
`
`IPR2023-00361
`Patent 10,051,105 B2
`
`Before ROBERT J. WEINSCHENK, JAMES J. MAYBERRY, and
`MICHAEL T. CYGAN, Administrative Patent Judges.
`CYGAN, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`

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`Case 6:22-cv-00031-ADA Document 127-3 Filed 08/18/23 Page 3 of 38
`IPR2023-00361
`Patent 10,051,105 B2
`
`INTRODUCTION
`I.
`Background and Summary
`A.
`Google LLC (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
`institution of inter partes review of claims 1–11 of U.S. Patent No.
`10,869,105 B2 (Ex. 1001, the “’105 patent”). Flypsi, Inc. (“Patent Owner”)
`filed a Preliminary Response (“Prelim. Resp.”). Paper 6. After obtaining
`authorization from the Board, Petitioner filed a Reply (Paper 7, “Pet.
`Reply”) and Patent Owner filed a Sur-reply (Paper 8, “PO Sur-reply”).
`Pursuant to 35 U.S.C. § 314(a), an inter partes review may be
`instituted only if “the information presented in the petition . . . and any
`[preliminary] response . . . shows that there is a reasonable likelihood that
`the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.”
`For the reasons given below, on this record Petitioner has established
`a reasonable likelihood that it would prevail in showing the unpatentability
`of at least claims 1 and 2 of the ’105 patent. Accordingly, we institute an
`inter partes review as to claims 1–11 of the ’105 patent and all of the
`asserted grounds of unpatentability.
`Real Parties in Interest
`B.
`Petitioner identifies Google LLC as the real party in interest. Pet. 1.
`Petitioner identifies Google LLC as a subsidiary of XXVI Holdings, Inc.,
`which is a subsidiary of Alphabet Inc., but states that XXVI Holdings Inc.
`and Alphabet Inc. are not real parties in interest to this proceeding. Id. n.1.
`Patent Owner identifies itself as the real party in interest. Paper 4, 2.
`Related Matters
`C.
`The parties represent that the ’105 patent is involved in Flypsi Inc.
`d/b/a Flyp v. Google, LLC, No. 6:22-cv-00031 (W.D. Texas). Pet. 1; Paper
`
`2
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`Case 6:22-cv-00031-ADA Document 127-3 Filed 08/18/23 Page 4 of 38
`IPR2023-00361
`Patent 10,051,105 B2
`4, 2. The parties further represent that Petitioner has filed, at the same time
`that this Petition was filed, petitions for inter partes review against related
`family members U.S. Patent No. 9,667,770 B2 (IPR2023-00360), U.S.
`Patent No. 11,012,554 B2 (IPR2023-00359), U.S. Patent No. 10,334,094 B2
`(IPR2023-00358), and U.S. Patent No. 11,218,585 B2 (IPR2023-00357).
`Pet. 1–2; Paper 4, 2–3.
`
`The ’105 Patent
`D.
`The ’105 patent is titled “Telephone Network System and Method.”
`Ex. 1001, code (54). The ’105 patent issued from Application Serial No.
`15/582,091, filed on April 28, 2017, and claims priority through a chain of
`continuation and continuation-in-part applications to Application No.
`13/944,853, filed on July 17, 2013. Id. at codes (21), (22), (63).
`The ’105 patent
`relates to systems and method for setting up and
`connecting telephone calls, and delivering information related to
`such telephone calls using an Internet Protocol (IP) or other data
`channel while delivering the voice portion of the call in
`accordance with CDMA, GSM, or like voice channel delivery
`standards.
`Id. at 1:18–23.
`
`Illustrative Claims
`E.
`Claims 1 and 2 are illustrative. Claim 1 recites as follows:1
`[1.pre] A method of providing telephone service, comprising:
`[1.a] automatically storing electronic information that indicates
`an association of a secondary telephone number and a primary
`telephone number with a telephone handset in a computer
`memory associated with a server;
`
`
`1 Petitioner’s bracketing indicia have been added.
`
`3
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`IPR2023-00361
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`[1.b] automatically storing electronic information that indicates
`a selection of call processing rules for the primary telephone
`number in the computer memory;
`[1.c] automatically storing electronic information that indicates
`a selection of call processing rules for the secondary telephone
`number in the computer memory;
`[1.d] receiving an electronic indication of an incoming call to the
`secondary telephone number at the server, said electronic
`indication of an incoming call being received from a switch
`associated with the server;
`[1.e] automatically accessing the call processing rules for the
`secondary telephone number under the control of the server
`responsive to the receipt of the electronic indication of the
`incoming call to the secondary telephone number;
`[1.f] automatically handing the incoming call in accordance with
`the accessed call processing rules for the secondary telephone
`number;
`[1.g] transmitting pre-call information via a data channel to the
`handset under the control of the server, said pre-call information
`including a bridge telephone number for connecting the handset
`to the incoming call at the switch; and
`[1.h] receiving, at the server via the data channel, an electronic
`indication of a selection of a call processing rule for handling the
`incoming call to the secondary telephone number, or
`[1.i] establishing a voice channel connection between the handset
`and the switch as a result of the handset calling the switch using
`the bridge telephone number.
`Claim 2 recites as follows:
`[2.pre] A method for providing telephone service to a telephone
`handset having a primary telephone number assigned to the telephone
`handset, wherein at least a secondary telephone number is associated
`with the primary telephone number assigned to the telephone handset,
`the method comprising:
`[2.a] A) in response to an incoming call to the secondary
`telephone number received by a switch, retrieving, by a server from a
`
`4
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`IPR2023-00361
`Patent 10,051,105 B2
`database, a first bridge telephone number to be used for completion of
`the incoming call to the secondary telephone number, wherein the first
`bridge telephone number is associated with the switch such that calls to
`the first bridge telephone number are automatically routed to the
`switch; and
`[2.b] B) transmitting, from the server to the telephone handset via at
`least one data channel, pre-call information including the first bridge
`telephone number, whereby the pre-call information allows the telephone
`handset to accept the incoming call to the secondary telephone number by
`making a first bridge call using the first bridge telephone number to connect
`the incoming call to the telephone handset via the switch.
`Evidence
`F.
`Petitioner relies on the following patent evidence.
`Name
`Patent Document
`Backhaus
`U.S. Pub. No. 2013/0295892 A1,
`issued Nov. 7, 2013, and filed
`Aug. 20, 2018.
`U.S. Pub. No. 2010/0128857 A,
`published May 27, 2010.
`U.S. Pub. No. 2009/0310598 A1,
`published Dec. 17, 2009.
`U.S. Pub. No. 2009/0052437 A1,
`Feb. 26, 2009.
`Petitioner relies upon a declaration by Dr. Bill Lin. Ex. 1002.
`Prior Art and Asserted Grounds
`G.
`Petitioner asserts that claims 1–11 would have been unpatentable on
`the following grounds:
`Claim(s) Challenged
`1
`2–4, 6–11
`5
`
`35 U.S.C. §
`1032
`103
`103
`
`Reference(s)/Basis
`Backhaus, Logan
`Backhaus, Winbladh
`Backhaus, Winbladh, Logan
`
`
`2 Petitioner asserts, and we agree for purposes of institution, that the
`AIA patentability scheme applies to the ’105 patent. See Pet. 4.
`
`5
`
`Logan
`
`Winbladh
`
`Taylor
`
`Exhibit
`
`1005
`
`1015
`
`1020
`
`1007
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`Case 6:22-cv-00031-ADA Document 127-3 Filed 08/18/23 Page 7 of 38
`IPR2023-00361
`Patent 10,051,105 B2
`Claim(s) Challenged
`1
`
`Reference(s)/Basis
`Backhaus, Logan, Taylor
`
`35 U.S.C. §
`103
`
`2–4, 6–11
`
`103
`
`Backhaus, Winbladh, Taylor
`
`5
`
`103
`
`Backhaus, Winbladh, Logan,
`Taylor
`II. ANALYSIS
`35 U.S.C. § 314(a)
`A.
`Patent Owner argues that we should exercise our discretion under
`35 U.S.C. § 314(a) to deny the Petition. Prelim. Resp. 21; PO Sur-reply 1.
`Section 314(a) states that
`[t]he Director may not authorize an inter partes review to be
`instituted unless the Director determines that the information
`presented in the petition filed under section 311 and any response
`filed under section 313 shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.
`Under § 314(a), we have discretion to deny institution of an inter
`partes review. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140
`(2016). We consider several factors when determining whether to deny
`institution under § 314(a) based on a parallel district court proceeding,
`specifically
`1. whether the court granted a stay or evidence exists that one may
`be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`3. investment in the parallel proceeding by the court and the
`parties;
`4. overlap between issues raised in the petition and in the parallel
`proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`
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`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB
`Mar. 20, 2020) (precedential) (“Fintiv”). We also consider “several
`clarifications” made by the Director of the United States Patent and
`Trademark Office (“USPTO”). See USPTO Memorandum, Interim
`Procedure for Discretionary Denials in AIA Post-Grant Proceedings with
`Parallel District Court Litigation, 2 (June 21, 2022), available at
`https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion
`ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf
`(“Director’s Memo”).
`1. Factor 1 – Whether the court granted a stay or evidence exists
`that one may be granted if a proceeding is instituted
`Under the first Fintiv factor, we consider “whether the court granted a
`stay or evidence exists that one may be granted if a proceeding is instituted.”
`Id. at 6. Petitioner argues that the District Court “previously granted
`motions to stay pending instituted IPRs,” so the first factor “weighs against
`denial” or “is at least neutral.” Pet. Reply 1. Patent Owner argues that the
`District Court denied Petitioner’s “motion for stay relating to [its]
`mandamus petition,” so the first factor “is neutral.” Prelim. Resp. 19–20.
`Neither party identifies any statements by the District Court or other
`evidence that specifically addresses a stay of the District Court Litigation
`pending this proceeding. See Pet. 80; Prelim. Resp. 21–22; Pet. Reply 1; PO
`Sur-reply 1. We decline to speculate based on the record in this case
`whether the District Court would grant a stay of the District Court Litigation.
`See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 12 (PTAB
`
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`May 13, 2020) (informative) (“Fintiv II”). As a result, we determine that the
`first Fintiv factor is neutral.
`2. Factor 2 – Proximity of the court’s trial date to the Board’s
`projected statutory deadline for a final written decision
`Under the second Fintiv factor, we consider the “proximity of the
`court’s trial date to the Board’s projected statutory deadline for a final
`written decision.” Fintiv, Paper 11 at 6. Petitioner argues that the District
`Court’s trial date of February 19, 2024 “cannot be reliably used” because
`“[t]rial has already been postponed several times.” Pet. Reply 1. Petitioner
`also argues that the District Court’s “median time from filing to trial . . . is
`more than 28 months,” so “trial will likely be in May/June 2024.” Pet. 57.
`Petitioner concludes that the second factor “weighs against denial or is at
`least neutral.” Pet. Reply 1. Patent Owner argues that the second factor
`favors denial because the District Court’s trial date of February 19, 2024 is
`“around six months before the expected final written decision date of August
`8, 2024.” Prelim. Resp. 22. Patent Owner also argues that Petitioner relies
`on “time-to-trial statistics for the entire Western District of Texas,” but more
`specific statistics for the presiding judge show that “trial is likely to occur
`faster” in “December 2023 or January 2024.” Id. at 23.
`The current trial date in the District Court Litigation is February 19,
`2024. Ex. 2003, 3. The projected statutory deadline for a final written
`decision in this case is in July 2024. However, Petitioner presents statistics
`indicating that the median time to trial in the Western District of Texas is 28
`months (Ex. 1014, 37), and Patent Owner presents statistics indicating that
`the median time to trial for the presiding judge is 23 months (Ex. 2004, 1).
`See Director’s Memo at 8–9. On this record, we find Petitioner’s statistics
`more indicative of the likely time to trial because Petitioner’s statistics
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`represent the median time to trial for civil cases during the recent 12-month
`period ending on June 30, 2022. Ex. 1014, 37 (“12-Month Periods Ending .
`. . Jun 30 2022 . . . Civil Only”). Although Patent Owner’s statistics are
`specific to the presiding judge, Patent Owner does not assert that its statistics
`are limited to civil cases or to a recent time period. See Prelim. Resp. 20–
`21; Ex. 2004, 1 (“pending between 2009-01-01 and 2023-05-03 . . . Trial . . .
`46 cases”). Based on Petitioner’s statistics, the trial in the District Court
`Litigation is likely to occur in May 2024, which is a couple of months before
`the projected statutory deadline for a final written decision in this case. As a
`result, we determine that the second Fintiv factor slightly favors
`discretionary denial of institution.
`3. Factor 3 – Investment in the parallel proceeding by the court and
`the parties
`Under the third Fintiv factor, we consider the “investment in the
`parallel proceeding by the court and the parties.” Fintiv, Paper 11 at 6.
`Petitioner argues that “fact discovery and expert discovery do not close until
`after the institution deadline,” so the third factor “favors institution or is at
`least neutral.” Pet. Reply 2. Patent Owner argues that the third factor
`“strongly weighs in favor of denying the Petition” because 1) the District
`Court “has performed claim construction, decided a motion to transfer, and
`decided a motion to stay”; 2) the parties “have engaged in substantial
`discovery, including production and review of source code, depositions,
`service of final contentions, written discovery, and document production”;
`and 3) fact discovery closes on August 22, 2023, and expert discovery closes
`in October 2023. Prelim. Resp. 21–22.
`The evidence of record indicates that the District Court and the parties
`have invested only some resources in the District Court Litigation as to
`
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`IPR2023-00361
`Patent 10,051,105 B2
`issues of unpatentability involving the ’105 patent. The District Court
`issued a claim construction order that addresses two terms in the ’585 patent,
`but the District Court stated only that those terms have their “[p]lain and
`ordinary meaning.” Ex. 1016, 2. And the evidence of record indicates that
`fact discovery is ongoing, expert discovery has not begun, and the deadline
`for dispositive motions is not until October 2023. Ex. 2003, 1–2. Thus, we
`determine that the third Fintiv factor weighs slightly against discretionary
`denial of institution.
`4. Factor 4 – Overlap between issues raised in the petition and in the
`parallel proceeding
`Under the fourth Fintiv factor, we consider the “overlap between
`issues raised in the petition and in the parallel proceeding.” Fintiv, Paper 11
`at 6. Petitioner states that “if the IPR is instituted, Petitioner will not pursue
`the IPR grounds in the [D]istrict [C]ourt [L]itigation.” Pet. 81. Thus,
`according to Petitioner, the fourth factor “weighs against denial.” Id. Patent
`Owner argues that Petitioner’s “narrow[] stipulation only mitigates concerns
`about overlap ‘to some degree’ and thus, at best, only ‘weighs marginally in
`favor of not exercising discretion to deny institution.’” Prelim. Resp. 24.
`The Petition challenges claims 1–11, and relies on Backhaus,
`Winbladh, Logan, and Taylor. Pet. 3–4. Neither party explains which
`claims and references are at issue in the District Court Litigation. See Pet.
`81; Prelim. Resp. 24–25; Pet. Reply 2–3; PO Sur-reply 2. Thus, on this
`record, we cannot determine whether there is overlap between issues raised
`in the Petition and District Court Litigation. Nonetheless, Petitioner’s
`stipulation that it will not pursue the grounds asserted in the Petition in the
`District Court Litigation mitigates to some degree concerns of duplicative
`efforts and potentially conflicting decisions. Pet. 81; see Sand Revolution II,
`
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`Case 6:22-cv-00031-ADA Document 127-3 Filed 08/18/23 Page 12 of 38
`IPR2023-00361
`Patent 10,051,105 B2
`LLC v. Continental Intermodal Grp. – Trucking LLC, IPR2019-01393, Paper
`24 at 12 (PTAB June 16, 2020) (informative). Thus, even if we assume that
`there is overlap between the issues raised in the Petition and the District
`Court Litigation, we determine that the fourth Fintiv factor weighs slightly
`against discretionary denial of institution.
`5. Factor 5 – Whether the petitioner and the defendant in the
`parallel proceeding are the same party
`Under the fifth Fintiv factor, we consider “whether the petitioner and
`the defendant in the parallel proceeding are the same party.” Fintiv,
`Paper 11 at 6. Here, Petitioner is the defendant in the District Court
`Litigation. Prelim. Resp. 25. But, as we discussed for the second factor, the
`projected trial date in the District Court Litigation is only a couple months
`before the projected statutory deadline for a final written decision in this
`case. Under these circumstances, we determine that the fifth Fintiv factor
`slightly favors discretionary denial of institution.
`6. Factor 6 – Other circumstances that impact the Board’s
`exercise of discretion, including the merits
`Under the sixth Fintiv factor, we consider “other circumstances that
`impact the Board’s exercise of discretion, including the merits.” Fintiv,
`Paper 11 at 6. “[W]here the PTAB determines that the information
`presented at the institution stage presents a compelling unpatentability
`challenge, that determination alone demonstrates that the PTAB should not
`discretionarily deny institution under Fintiv.” Director’s Memo at 4–5.
`Petitioner argues, without explication, that the sixth factor “weighs against
`denial as the merits of Petitioner’s arguments are compelling.” Pet. 81.
`Patent Owner argues that the sixth factor “weighs in favor of denial”
`
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`IPR2023-00361
`Patent 10,051,105 B2
`because “the primary reference Backhaus fails to disclose [several]
`limitations.” Prelim. Resp. 25–26; see PO Sur-reply 2–3.
`On balance, we determine that Fintiv factors 1–5 do not favor
`discretionary denial of institution. Specifically, we determine that
`Petitioner’s stipulation and the parties’ minimal investment in the District
`Court Litigation as to issues of unpatentability outweigh the projected trial
`date. As a result, we need not decide whether Petitioner presents a
`compelling unpatentability challenge. See CommScope Techs. LLC v. Dali
`Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023)
`(decision on Director review) (precedential) (“[I]n circumstances where the
`Board determines that the other Fintiv factors 1–5 do not favor discretionary
`denial, the Board shall decline to discretionarily deny under Fintiv without
`reaching the compelling merits analysis.”).
`7. Summary
`Based on our holistic view of the Fintiv factors, we decline to exercise
`our discretion under § 314(a) to deny the Petition.
`
`
`Legal Standards
`B.
`A patent claim is unpatentable under 35 U.S.C. § 103 if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, “would have been obvious at the time the
`invention was made to a person having ordinary skill in the art [to which
`said subject matter pertains].” 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) objective evidence
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`of non-obviousness. 3 See Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966).
`
`Level of Ordinary Skill in the Art
`C.
`Petitioner asserts that a person of ordinary skill in the art at the critical
`time “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 telecommunication. . . . More
`education can supplement practical experience and vice versa.” Pet. 4–5
`(citing Ex. 1002 ¶¶ 17–18).
`Patent Owner does not dispute Petitioner’s assessment of the level of
`ordinary skill for the purposes of institution. Prelim. Resp. 9. Determining
`the level of ordinary skill in the art involves various factors, including the
`“type of problems encountered in the art; prior art solutions to those
`problems; rapidity with which innovations are made; sophistication of the
`technology; and educational level of active workers in the field.” In re
`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The
`prior art of record also reflects the level of ordinary skill in the art. See
`Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes
`of this Institution Decision, we adopt the assessment offered by Petitioner, as
`it is consistent with the ’105 patent and the asserted prior art.
`D. Claim Construction
`In an inter partes review, we construe a patent 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) (2019).
`
`
`3 Neither party presents evidence or arguments regarding objective evidence
`of non-obviousness at this stage.
`
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`Under this standard, the words of a claim generally are given their “ordinary
`and customary meaning,” which is the meaning the term would have to a
`person of ordinary skill at the time of the invention, in the context of the
`entire patent including the specification. Phillips v. AWH Corp., 415 F.3d
`1303, 1312–13 (Fed. Cir. 2005) (en banc). We “need only construe terms
`‘that are in controversy, and only to the extent necessary to resolve the
`controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
`868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci.
`& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`Here, Petitioner contends that no claims require construction at this
`time. Pet. 5. Patent Owner agrees. Prelim. Resp. 6. However, the parties
`disagree whether “pre-call” information is information prior to the entire
`call, or prior to a voice connection during a call. Petitioner asserts that
`information is the claimed ‘pre-call information” if it is “transmitted before
`connecting the voice call between the calling and called parties.” Pet. 33.
`Patent Owner argues that Petitioner “relies on a transmission that is part of
`the call itself.” Prelim. Resp. 1, 7. Patent Owner argues that Petitioner
`instead focuses its arguments on “when a voice path” for an incoming call is
`connected. Id. at 8. Although Patent Owner presents these arguments to
`distinguish the “via a data channel” limitations, the disagreement necessarily
`involves the question of when the claimed “call” begins.
`For purposes of institution, we need not reach a firm construction of
`the term because Petitioner provides a “second way” of meeting the “pre-
`call” limitation in which a prior outgoing call has provided the pre-call
`information that is stored, and then later used when an incoming call is
`received from the same number. However, because Patent Owner also
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`IPR2023-00361
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`disputes Petitioner’s showing for this second way, the parties are invited to
`further explain the scope of “pre-call” information.
`E. Obviousness over Backhaus and Logan
`Petitioner asserts that claim 1 is unpatentable under § 103 as obvious
`over Backhaus and Logan. Patent Owner provides arguments and evidence
`against these assertions.
`Upon consideration of Petitioner’s explanations and the totality of
`evidence in this current record, we are persuaded that Petitioner has
`demonstrated a reasonable likelihood of prevailing in showing that claim 1 is
`unpatentable under § 103 as obvious over Backhaus and Logan.
`1. Backhaus (Ex. 1005)
` Backhaus relates to routing calls between two telecommunications
`
`device: a subscriber device associated with a primary service and a second
`line service (”SLS”), and a third party device. Ex. 1005 ¶ 9. An SLS
`platform is interposed between the service providers of the two devices. Id.
`When a third party device places a call to the SLS of the subscriber device,
`the call is instead routed to the SLS platform, which redirects the call to the
`primary number of the subscriber, based on mapping from a local database.
`Id. ¶ 10. That mapping may then be saved on the subscriber device. Id.
`Figure 1 illustrates a configuration of devices according to the invention:
`
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`IPR2023-00361
`Patent 10,051,105 B2
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`Figure 1 portrays a third party telecommunications devices 120A, 120B, and
`120C communicating with communications network 125, which may be an
`Internet, Cell Network, Cable Network or PSTN. Id. at Fig. 1. The
`communications network 125 communicates with an SLS Platform,
`containing a central SLS database 116 and redirection module 117. Id. The
`communications network 125 also communicates with a subscriber
`telecommunications device 110, which has a local SLS database 106, SLS
`module 105, display 103, and radio transceiver 104.
`2. Logan (Ex. 1015)
`Logan relates to forwarding phone calls to virtual phone numbers.
`Ex. 1015, code (57). The user’s cellular telephone receives phone calls
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`Case 6:22-cv-00031-ADA Document 127-3 Filed 08/18/23 Page 18 of 38
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`Patent 10,051,105 B2
`associated with virtual phone numbers based upon user-specified
`preferences. Id.
`
`3. Analysis of Claim 1
`We begin our analysis of Petitioner’s obviousness contentions with
`Petitioner’s assertions as to claim 1.
`[1.pre] A method of providing telephone service, comprising:
`Petitioner asserts that this limitation, to the extent limiting, is
`described by Backhaus. Pet. 6. Petitioner points to Backhaus’s description
`of routing calls between two telecommunication devices, where the call
`routing is facilitated by using a relationship number. Id. at 6–7 (citing Ex.
`1005 ¶¶ 9, 30, Fig. 1; Ex. 1002 ¶ 58). Patent Owner does not dispute that
`Backhaus discloses the preamble of claim 1. On this record, Petitioner
`shows sufficiently that Backhaus teaches the preamble of claim 1. 4
`[1.a] automatically storing electronic information that indicates an
`association of a secondary telephone number and a primary telephone
`number with a telephone handset in a computer memory associated
`with a server;
`Petitioner asserts that this limitation is described by Backhaus.
`Petitioner points to Backhaus’s description of associating a primary and
`secondary telephone number with telephone handset 110. Id. at 8 (citing Ex.
`1005 ¶¶ 29, 31). Petitioner points to Backhaus’s SLS Master ID Table 305
`as containing that association in a stored form in a computer memory 116
`associated with a server 205. Id. at 9–12 (citing Ex. 1005 ¶¶ 42, 69, 71–72,
`Fig. 3A; Ex. 1002 ¶¶ 71–72). Patent Owner does not dispute that Backhaus
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`4 Because Petitioner presents evidence that the prior art discloses the
`recitations in the preamble of claim 1, at this stage of the proceeding, we
`need not decide whether the preamble is limiting.
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`Case 6:22-cv-00031-ADA Document 127-3 Filed 08/18/23 Page 19 of 38
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`teaches this limitation of claim 1. On this record, Petitioner shows
`sufficiently that Backhaus teaches this limitation of claim 1.
` [1.b] automatically storing electronic information that indicates a
`selection of call processing rules for the primary telephone number in
`the computer memory;
`[1.c] automatically storing electronic information that indicates a
`selection of call processing rules for the secondary telephone number
`in the computer memory;
`Petitioner asserts that these limitations are described by Backhaus in
`view of Logan. Id. at 12. Petitioner asserts that Backhaus describes call
`processing rules for the primary phone number in the form of a voicemail
`service or message service that responds when a subscriber elects not
`answering a call. Id. (citing Ex. 1005 ¶¶ 35, 68, 73). Petitioner asserts that
`Logan provides user-specified preferences that cause a server to forward
`calls either to the user’s cellphone 140 or to a voicemail database. Id. at 12–
`14, 19–20 (citing Ex. 1015 ¶¶ 26–27, Fig. 1). Petitioner points to Logan’s
`description that the user’s preferences may be specified for each of a base
`number and virtual number associated with the cellphone 140; i.e., its
`primary number and secondary number. Id. at 14, 19–20 (citing Ex. 1015
`¶¶ 5, 11, 27–29, 39, 43, 46, 55, 79).
`Petitioner asserts that a person having ordinary skill in the art would
`have been motivated to implement Logan’s server-based call processing
`features in Backhaus. Petitioner asserts that Logan’s features would permit
`Backhaus’s server 205 to provide voicemail and preset responses to
`unanswered calls even when the subscriber’s handset 110 is unable to do so.
`Id. at 16–17 (citing Ex. 1002 ¶ 81). Petitioner also asserts that it would have
`been obvious to use Logan’s teaching of providing responses for both the
`primary and secondary numbers, because Logan describes such features as
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`“highly desirable,” and would allow the subscriber to better manage calls.
`Id. at 17–18 (citing Ex. 1015 ¶¶ 24, 40, 43; Ex. 1002 ¶ 82).
`Petitioner further asserts that, because it was well known to
`implement such features on a server associated with a telecommunication
`device, and because Backhaus’s SLS platform provides features for both
`primary and secondary numbers, a person having ordinary skill in the art
`would have expected success in such combination. Id. at 18 (citing Ex. 1008
`¶¶ 158–159, 164; Ex. 1015 ¶¶ 25–38, 50, 71; Ex. 1002 ¶ 83). Patent Owner
`does not dispute that Backhaus discloses these limitations of claim 1. On
`this record, Petitioner shows sufficiently that Backhaus in view of Logan
`teaches these limitations of claim 1.
` [1.d] receiving an electronic i