Case 6:22-cv-00031-ADA Document 127-4 Filed 08/18/23 Page 1 of 27
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`Exhibit 3
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`Case 6:22-cv-00031-ADA Document 127-4 Filed 08/18/23 Page 2 of 27
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`Trials@uspto.gov
`571-272-7822
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`
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`Paper 9
`Date: July 31, 2023
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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.
`____________
`
`IPR2023-00358
`Patent 10,334,094 B1
`_______________
`
`
`Before ROBERT J. WEINSCHENK, JAMES J. MAYBERRY, and
`MICHAEL T. CYGAN, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
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`

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`I.
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`INTRODUCTION
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`A. Background and Summary
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`Google LLC (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
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`an inter partes review of claims 1–4 (“the challenged claims”) of U.S. Patent
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`No. 10,334,094 B1 (Ex. 1001, “the ’094 patent”). Flypsi, Inc. (“Patent
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`Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”) to the
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`Petition. With our authorization, Petitioner filed a Reply (Paper 7, “Reply”)
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`to the Preliminary Response, and Patent Owner filed a Sur-reply (Paper 8,
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`“Sur-reply”) to the Reply.
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`An inter partes review may not be instituted unless “the information
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`presented in the petition . . . and any response . . . shows that there is a
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`reasonable likelihood that the petitioner would prevail with respect to at least
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`1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Further, a
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`decision to institute may not institute on fewer than all claims challenged in
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`the petition. 37 C.F.R. § 42.108(a). Here, Petitioner demonstrates a
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`reasonable likelihood of prevailing in showing that at least one of the
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`challenged claims is unpatentable. Thus, we institute an inter partes review
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`of the challenged claims on all the grounds of unpatentability in the Petition.
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`B. Real Parties in Interest
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`The parties identify themselves as the only real parties in interest.
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`Pet. 1; Paper 4, 2.
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`C. Related Matters
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`The parties indicate that the ’094 patent is the subject of the following
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`district court cases: 1) Flypsi, Inc. (d/b/a Flyp) v. Google LLC, No. 6:22-cv-
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`00031 (W.D. Tex.) (“District Court Litigation”); and 2) Flypsi, Inc. (d/b/a
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`Flyp) v. Dialpad, Inc., No. 6:21-cv-00642 (W.D. Tex.). Pet. 1; Paper 4, 2.
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`2
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`The parties also indicate that the ’094 patent is the subject of a petition for
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`inter partes review in IPR2022-01048, and that patents related to the ’094
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`patent are the subject of petitions for inter partes review in IPR2022-01049,
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`IPR2022-01050, IPR2022-01051, IPR2023-00357, IPR2023-00359,
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`IPR2023-00360, and IPR2023-00361. Pet. 2; Paper 4, 2–3.
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`D. The ’094 Patent
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`The ’094 patent relates to “providing telephone service by
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`transmitting call handling information between a handset and a switch using
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`an [Internet Protocol (‘IP’)] channel or similar protocol channel and by
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`transmitting a voice call associated with the call handling information
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`between the handset and the switch using a voice channel.” Ex. 1001, 1:50–
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`59. Figure 3 of the ’094 patent is reproduced below.
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`3
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`Id. at Fig. 3. Figure 3 shows server 100 and telephone handset 340. Id. at
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`4:22–27. According to the ’094 patent, server 100 and handset 340 may
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`communicate via Internet 316 (i.e., a data channel) and via Public Switched
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`Telephone Network (“PSTN”) 310 (i.e., a voice channel). Id. at 4:44–55.
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`
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`The ’094 patent explains that handset 340 transmits information to
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`server 100 via Internet 316 requesting that one or more secondary telephone
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`numbers be associated with the primary telephone number assigned to
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`handset 340 at activation. Id. at 5:6–17. To place an outgoing call, handset
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`340 transmits information to server 100 via Internet 316 selecting one of the
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`aforementioned secondary numbers as the origination number and selecting
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`a contact number to be called. Id. at 7:36–52. In response, server 100
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`4
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`transmits a bridge number to handset 340 via Internet 316. Id. at 7:53–63.
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`Handset 340 then calls the bridge number via PSTN 310, and switch 110
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`connects the outgoing call from handset 340 to the contact number via PSTN
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`310. Id. at 8:14–31. Switch 110 sends information to the contact number
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`that “causes the secondary telephone number [of handset 340] to be
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`displayed as the number from which the call appears to have been placed.”
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`Id. at 8:31–35.
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`E. Illustrative Claim
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`
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`Of the challenged claims, claim 1 is independent and is reproduced
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`below.
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`1. A method of providing telephone service, comprising:
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`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;
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`automatically associating a bridge or access telephone
`number with each of a plurality of contact telephone numbers in
`the computer memory;
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`automatically transmitting information that indicates the
`association of the bridge or access telephone number with each
`of a plurality of contact telephone numbers to the handset via a
`data channel;
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`automatically associating each primary telephone number
`and bridge or access telephone number pairing with a
`corresponding secondary telephone number and contact
`telephone number pairing in the computer memory;
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`receiving, at a switch associated with the server, an
`outgoing call from the handset to the bridge or access telephone
`number via a second channel;
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`receiving, at the server, information from the switch
`indicating the outgoing call is being made to the bridge or
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`5
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`access telephone number from the primary telephone number;
`and
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`receiving, at the switch, information from the server
`directing the switch to:
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`(a) connect the outgoing call to a contact telephone
`number associated with the primary telephone number
`and bridge or access telephone number pairing, and
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`(b) identify a telephone number from which the
`outgoing call is being made as the secondary telephone
`number.
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`Ex. 1001, 10:7–36.
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`F. Evidence
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`Petitioner submits the following evidence:
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`Evidence
`
`Declaration of Dr. Bill Lin (“Lin Declaration”)
`Backhaus, US 2013/0295892 A1, published Nov. 7, 2013
`(“Backhaus”)
`Taylor, US 2009/0052437 A1, published Feb. 26, 2009
`(“Taylor”)
`Saksena, US 2006/0077956 A1, published Apr. 13, 2006
`(“Saksena”)
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`G. Asserted Grounds
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`Exhibit
`No.
`1002
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`1005
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`1007
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`1008
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`Petitioner asserts that the challenged claims are unpatentable on the
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`following grounds:
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`Claim(s) Challenged
`1, 2, 4
`3
`1, 2, 4
`3
`
`35 U.S.C. §
`102
`103
`103
`103
`
`Reference(s)/Basis
`Backhaus
`Backhaus, Saksena
`Backhaus, Taylor
`Backhaus, Saksena, Taylor
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`6
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`II. ANALYSIS
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`A. 35 U.S.C. § 314(a)
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`Patent Owner argues that we should exercise our discretion under
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`35 U.S.C. § 314(a) to deny the Petition. Prelim. Resp. 25–30; Sur-reply 1–3.
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`Section 314(a) states that
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`[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.
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`Under § 314(a), we have discretion to deny institution of an inter partes
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`review. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016).
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`We consider several factors when determining whether to deny institution
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`under § 314(a) based on a parallel district court proceeding, specifically
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`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
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`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
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`3. investment in the parallel proceeding by the court and the
`parties;
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`4. overlap between issues raised in the petition and in the
`parallel proceeding;
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`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
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`Mar. 20, 2020) (precedential) (“Fintiv”). We also consider “several
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`clarifications” made by the Director of the United States Patent and
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`Trademark Office (“USPTO”). See USPTO Memorandum, Interim
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`Procedure for Discretionary Denials in AIA Post-Grant Proceedings with
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`Parallel District Court Litigation, 2 (June 21, 2022), available at
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`https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion
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`ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf
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`(“Director’s Memo”).
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`1. Factor 1 – Whether the court granted a stay or evidence
`exists that one may be granted if a proceeding is instituted
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`Under the first Fintiv factor, we consider “whether the court granted a
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`stay or evidence exists that one may be granted if a proceeding is instituted.”
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`Id. at 6. Petitioner argues that the District Court “previously granted
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`motions to stay pending instituted IPRs,” so the first factor “weighs against
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`denial” or “is at least neutral.” Reply 1. Patent Owner argues that the
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`District Court denied Petitioner’s “motion for stay relating to [its]
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`mandamus petition,” so the first factor “is neutral.” Prelim. Resp. 25–26.
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`Neither party identifies any statements by the District Court or other
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`evidence that specifically addresses a stay of the District Court Litigation
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`pending this proceeding. See Pet. 58–59; Prelim. Resp. 25–26; Reply 1;
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`Sur-reply 1. We decline to speculate based on the record in this case
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`whether the District Court would grant a stay of the District Court Litigation.
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`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
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`first Fintiv factor is neutral.
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`2. Factor 2 – Proximity of the court’s trial date to the Board’s
`projected statutory deadline for a final written decision
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`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
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`8
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`written decision.” Fintiv, Paper 11 at 6. Petitioner argues that the District
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`Court’s trial date of February 19, 2024 “cannot be reliably used” because
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`“[t]rial has already been postponed several times.” Reply 1. Petitioner also
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`argues that the District Court’s “median time from filing to trial . . . is more
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`than 28 months,” so “trial will likely be in May/June 2024.” Pet. 59.
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`Petitioner concludes that the second factor “weighs against denial or is at
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`least neutral.” Reply 1. Patent Owner argues that the second factor favors
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`denial because the District Court’s trial date of February 19, 2024 is “around
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`six months before the expected final written decision date of August 8,
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`2024.” Prelim. Resp. 26. Patent Owner also argues that Petitioner relies on
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`“time-to-trial statistics for the entire Western District of Texas,” but more
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`specific statistics for the presiding judge show that “trial is likely to occur
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`faster” in “December 2023 or January 2024.” Id. at 26–27.
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`The current trial date in the District Court Litigation is February 19,
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`2024. Ex. 2003, 3. The projected statutory deadline for a final written
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`decision in this case is in July 2024. However, Petitioner presents statistics
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`indicating that the median time to trial in the Western District of Texas is 28
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`months (Ex. 1014, 37), and Patent Owner presents statistics indicating that
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`the median time to trial for the presiding judge is 23 months (Ex. 2004, 1).
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`See Director’s Memo at 8–9. On this record, we find Petitioner’s statistics
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`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
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`period ending on June 30, 2022. Ex. 1014, 37 (“12-Month Periods Ending
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`. . . Jun 30 2022 . . . Civil Only”). Although Patent Owner’s statistics are
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`specific to the presiding judge, Patent Owner does not assert that its statistics
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`are limited to civil cases or to a recent time period. See Prelim. Resp. 26–
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`27; Ex. 2004, 1 (“pending between 2009-01-01 and 2023-05-03 . . . Trial . . .
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`46 cases”). Based on Petitioner’s statistics, the trial in the District Court
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`Litigation is likely to occur in May 2024, which is a couple months before
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`the projected statutory deadline for a final written decision in this case. As a
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`result, we determine that the second Fintiv factor slightly favors
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`discretionary denial of institution.
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`3. Factor 3 – Investment in the parallel proceeding by the
`court and the parties
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`Under the third Fintiv factor, we consider the “investment in the
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`parallel proceeding by the court and the parties.” Fintiv, Paper 11 at 6.
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`Petitioner argues that “fact discovery and expert discovery do not close until
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`after the institution deadline,” so the third factor “favors institution or is at
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`least neutral.” Reply 2. Patent Owner argues that the third factor “strongly
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`weighs in favor of denying the Petition” because 1) the District Court “has
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`performed claim construction, decided a motion to transfer, and decided a
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`motion to stay”; 2) the parties “have engaged in substantial discovery,
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`including production and review of source code, depositions, service of final
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`contentions, written discovery, and document production”; and 3) fact
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`discovery closes on August 22, 2023, and expert discovery closes in October
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`2023. Prelim. Resp. 27–28.
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`The evidence of record indicates that the District Court and the parties
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`have invested only some resources in the District Court Litigation as to
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`issues of unpatentability involving the ’094 patent. The District Court
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`issued a claim construction order that addresses two terms in the ’094 patent,
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`but the District Court stated only that those terms have their “[p]lain and
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`ordinary meaning.” Ex. 1016, 2. And the evidence of record indicates that
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`fact discovery is ongoing, expert discovery has not begun, and the deadline
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`for dispositive motions is not until October 2023. Ex. 2003, 1–2. Thus, we
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`determine that the third Fintiv factor weighs slightly against discretionary
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`denial of institution.
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`4. Factor 4 – Overlap between issues raised in the petition
`and in the parallel proceeding
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`Under the fourth Fintiv factor, we consider the “overlap between
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`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
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`the IPR grounds in the [D]istrict [C]ourt [L]itigation.” Pet. 59. Thus,
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`according to Petitioner, the fourth factor “weighs against denial.” Id. Patent
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`Owner argues that Petitioner’s “narrow[] stipulation only mitigates concerns
`
`about overlap ‘to some degree’ and thus, at best, only ‘weighs marginally in
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`favor of not exercising discretion to deny institution.’” Prelim. Resp. 28–29.
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`The Petition challenges claims 1–4, and relies on Backhaus, Saksena,
`
`and Taylor. Pet. 3. Neither party explains which claims and references are
`
`at issue in the District Court Litigation. See Pet. 59–60; Prelim. Resp. 28–
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`29; Reply 2–3; Sur-reply 2. Thus, on this record, we cannot determine
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`whether there is overlap between issues raised in the Petition and District
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`Court Litigation. Nonetheless, Petitioner’s stipulation that it will not pursue
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`the grounds asserted in the Petition in the District Court Litigation mitigates
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`to some degree concerns of duplicative efforts and potentially conflicting
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`decisions. Pet. 59; see Sand Revolution II, LLC v. Continental Intermodal
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`Grp. – Trucking LLC, IPR2019-01393, Paper 24 at 12 (PTAB June 16,
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`2020) (informative). Thus, even if we assume that there is overlap between
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`the issues raised in the Petition and the District Court Litigation, we
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`determine that the fourth Fintiv factor weighs slightly against discretionary
`
`denial of institution.
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`5. Factor 5 – Whether the petitioner and the defendant in the
`parallel proceeding are the same party
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`Under the fifth Fintiv factor, we consider “whether the petitioner and
`
`the defendant in the parallel proceeding are the same party.” Fintiv,
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`Paper 11 at 6. Here, Petitioner is the defendant in the District Court
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`Litigation. Prelim. Resp. 29. But, as we discussed for the second factor, the
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`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
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`case. Under these circumstances, we determine that the fifth Fintiv factor
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`slightly favors discretionary denial of institution.
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`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,
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`Paper 11 at 6. “[W]here the PTAB determines that the information
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`presented at the institution stage presents a compelling unpatentability
`
`challenge, that determination alone demonstrates that the PTAB should not
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`discretionarily deny institution under Fintiv.” Director’s Memo at 4–5.
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`Petitioner argues that the sixth factor “weighs against denial as the merits of
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`Petitioner’s arguments are compelling.” Pet. 60. Patent Owner argues that
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`the sixth factor “weighs in favor of denial” because “the primary reference
`
`Backhaus fails to disclose [several] limitations.” Prelim. Resp. 29–30; see
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`Sur-reply 2–3.
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`On balance, we determine that Fintiv factors 1–5 do not favor
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`discretionary denial of institution. Specifically, we determine that
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`Petitioner’s stipulation and the parties’ minimal investment in the District
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`Court Litigation as to issues of unpatentability outweigh the projected trial
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`date. As a result, we need not decide whether Petitioner presents a
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`compelling unpatentability challenge. See CommScope Techs. LLC v. Dali
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`Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023)
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`(decision on Director review) (precedential) (“[I]n circumstances where the
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`Board determines that the other Fintiv factors 1–5 do not favor discretionary
`
`denial, the Board shall decline to discretionarily deny under Fintiv without
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`reaching the compelling merits analysis.”).
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`7. Summary
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`Based on our holistic view of the Fintiv factors, we decline to exercise
`
`our discretion under § 314(a) to deny the Petition.
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`B. Level of Ordinary Skill in the Art
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`Petitioner argues that a person of ordinary skill in the art would have
`
`had “an undergraduate degree in electrical engineering, computer
`
`engineering, computer science, or a related field along with two years of
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`work experience in the field of telecommunication.” Pet. 4 (citing Ex. 1002
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`¶¶ 17–18). Petitioner’s description of the level of ordinary skill in the art is
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`supported by the testimony of Petitioner’s declarant, Dr. Bill Lin. Ex. 1002
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`¶¶ 17–18. Patent Owner does not dispute Petitioner’s description at this
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`stage of the proceeding. Prelim. Resp. 5. We adopt Petitioner’s description
`
`for purposes of this Decision.
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`C. Claim Construction
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`In an inter partes review proceeding, a patent claim is construed using
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`the same standard used in a civil action under 35 U.S.C. § 282(b), including
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`construing the claim in accordance with the ordinary and customary
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`meaning of the claim as understood by one of ordinary skill in the art and the
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`prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Neither
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`party proposes an express construction for any claim terms. Pet. 7; Prelim.
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`Resp. 6. We determine that no claim terms require express construction for
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`purposes of this Decision.
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`D. Anticipation of Claims 1, 2, and 4 by Backhaus
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`Petitioner argues that claims 1, 2, and 4 are anticipated by Backhaus.
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`Pet. 8–48. For the reasons discussed below, Petitioner demonstrates a
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`reasonable likelihood of prevailing in showing that claims 1, 2, and 4 are
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`anticipated by Backhaus.
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`1. Claim 1
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`Claim 1 recites “[a] method of providing telephone service.”
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`Ex. 1001, 10:7. Petitioner presents evidence that Backhaus discloses a
`
`method for routing calls between a third party telecommunication device
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`(“TD”) and a subscriber TD. Pet. 8–14 (citing 1005 ¶¶ 9, 30, code (57)).
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`Patent Owner does not dispute that Backhaus discloses the preamble of
`
`claim 1. On this record, Petitioner shows sufficiently that Backhaus
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`discloses the preamble of claim 1.1
`
`Claim 1 recites “automatically storing electronic information that
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`indicates an association of a secondary telephone number and a primary
`
`telephone number with a telephone handset in a computer memory
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`associated with a server.” Ex. 1001, 10:8–11. Petitioner presents evidence
`
`that Backhaus discloses automatically storing an association of a primary
`
`
`1 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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`number and an SLS number (i.e., a secondary number) for the subscriber TD
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`in a SLS Master ID Table in a SLS platform. Pet. 14–19 (citing Ex. 1005 ¶¶
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`31, 33–34, 39–40, 42–44, 60, 75, Fig. 3A). Petitioner also presents evidence
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`that Backhaus’s subscriber TD is a wireless handset. Id. at 14 (citing Ex.
`
`1005 ¶¶ 29, 31, 33, 50, 81–83). Patent Owner does not dispute that
`
`Backhaus discloses this limitation of claim 1. On this record, Petitioner
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`shows sufficiently that Backhaus discloses this limitation of claim 1.
`
`Claim 1 recites “automatically associating a bridge or access
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`telephone number with each of a plurality of contact telephone numbers in
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`the computer memory.” Ex. 1001, 10:12–14. Petitioner presents evidence
`
`that Backhaus discloses associating a relationship number (i.e., a bridge or
`
`access number) with each of a plurality of third party numbers (i.e., contact
`
`numbers) in memory. Pet. 20–23 (citing Ex. 1005 ¶¶ 42–43, 46–47, 49, 52–
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`54, 57, code (57), Fig. 3A).
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`Patent Owner argues that Petitioner does not show sufficiently that
`
`Backhaus discloses associating a relationship number with “each of a
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`plurality” of third party numbers. Prelim. Resp. 13–15. Specifically, Patent
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`Owner contends that Petitioner “fails to address the word ‘each’ at all,” and
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`“at most shows that Backhaus associates a single relationship number with a
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`single third party number.” Id. at 13–14. According to Patent Owner, the
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`portion of Backhaus cited by Petitioner indicates “that relationship numbers
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`may be used for a ‘plurality of subscriber number and third-party number
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`combinations,’ i.e., for two or more users (subscribers) in combination with
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`a third-party number for each user, not two or more contact telephone
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`numbers.” Id. at 15.
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`15
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`On this record, Patent Owner’s argument is unavailing. The portion
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`of Backhaus cited by Petitioner discloses “that certain relationship numbers
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`may be used for a plurality of subscriber number and third party number
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`combinations, i.e., in certain embodiments a given relationship number may
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`not be unique to a given subscriber number and third party number
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`combination.” Ex. 1005 ¶ 47 (emphasis added); see Pet. 22–23. Patent
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`Owner appears to interpret the phrase “plurality of subscriber number and
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`third party number combinations” in Backhaus as indicating that a
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`relationship number may be associated with “two or more . . . subscriber”
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`numbers, but “not two or more [third party] numbers.” See Prelim. Resp. 15
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`(emphasis omitted). We disagree. On this record, we see no reason to
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`interpret the phrase “plurality of subscriber number and third party number
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`combinations” in Backhaus as excluding combinations of one subscriber
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`number with two or more third party numbers. See Ex. 1005 ¶ 47.
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`Claim 1 recites “automatically transmitting information that indicates
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`the association of the bridge or access telephone number with each of a
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`plurality of contact telephone numbers to the handset via a data channel.”
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`Ex. 1001, 10:15–18. Petitioner presents evidence that Backhaus discloses
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`transmitting the relationship number for each of the plurality of third party
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`numbers from the SLS platform to the subscriber TD. Pet. 26–28 (citing Ex.
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`1005 ¶¶ 62–63, 67, 71–74). Petitioner also presents evidence that
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`Backhaus’s SLS platform transmits the information to the subscriber TD via
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`16
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`a data channel, such as an IP channel.2 Id. at 28–29 (citing Ex. 1005 ¶¶ 54–
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`55, 72–74).
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`Patent Owner argues that Petitioner does not show sufficiently that
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`Backhaus discloses transmitting information that indicates the association of
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`the relationship number “with each of a plurality” of third party numbers.
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`Prelim. Resp. 16–18. First, Patent Owner contends that Petitioner presents
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`“inconsistent arguments” because Petitioner relies on “an incoming call” for
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`the “associating” limitation of claim 1, and relies on “an outgoing call” for
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`the “transmitting” limitation of claim 1. Id. at 17. On this record, Patent
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`Owner’s argument is unavailing. Petitioner’s argument regarding the
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`“associating” limitation of claim 1 is not limited to just an incoming call.
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`For example, Petitioner cites to a portion of Backhaus that discloses
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`associating a relationship number with a third party number for both
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`incoming and outgoing calls. Ex. 1005 ¶ 53 (“The SLS platform 115 creates
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`the following relationship . . . [w]hen 1.770.555.0001 receives (or places) a
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`call from/to 1.305.229.9999.”) (emphasis added); see Pet. 21. Thus, on this
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`record, we find no inconsistency in Petitioner’s arguments regarding the
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`“associating” and transmitting” limitations of claim 1.
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`Second, Patent Owner argues that “Backhaus at most discloses a
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`single alleged association of a single relationship number to a single contact
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`number.” Prelim. Resp. 17–18. According to Patent Owner, the portion of
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`Backhaus cited by Petitioner discloses “an alleged association that occurs
`
`
`2 Petitioner presents evidence that Backhaus discloses transmitting the
`relationship number to the subscriber TD “via a data channel” in two ways.
`Pet. 23–29. For purposes of this Decision, we rely on the “second way.” Id.
`at 26–29 (emphasis omitted). Nonetheless, Patent Owner may present
`arguments regarding both ways in the Response after institution.
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`17
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`during a single outgoing call to a single third party number, and thus does
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`not disclose transmitting information regarding an association of a bridge
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`number with ‘each’ of two or more contact telephone numbers.” Id. On this
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`record, Patent Owner’s argument is unavailing. As discussed above,
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`Petitioner shows sufficiently that Backhaus discloses associating a
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`relationship number with a plurality of third party numbers. Pet. 22–23;
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`Ex. 1005 ¶ 47. Even if Patent Owner is correct that Backhaus only discloses
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`transmitting one association at a time, we nonetheless are persuaded that
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`Backhaus discloses the disputed limitation. Specifically, on this record, we
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`find nothing in the claim language or the written description of the ’094
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`patent that precludes transmitting the associations separately, i.e.,
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`transmitting the relationship number for one third party number during an
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`outgoing call and then transmitting the same relationship number for a
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`different third party number during another outgoing call. See Ex. 1001,
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`7:42–63, 10:15–18.
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`Patent Owner also argues that Petitioner does not show sufficiently
`
`that Backhaus discloses transmitting a relationship number “via a data
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`channel.” Prelim. Resp. 18–22. Specifically, Patent Owner contends that
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`“the mere fact that Backhaus describes that unspecified communications can
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`occur via various channels is not enough for anticipation: Backhaus must
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`teach the specific arrangement of the claims, in which specific transmissions
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`occur via a ‘data channel.’” Id. at 22. On this record, Patent Owner’s
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`argument is unavailing. The portion of Backhaus cited by Petitioner
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`discloses that “an IP-based interaction over the TD’s data service may be
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`used” for “sharing information between the SLS module 105 [of the
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`subscriber TD 110] and the SLS platform 115.” Ex. 1005 ¶ 73; see Pet. 28–
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`18
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`29. And Backhaus explains that one piece of information shared between
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`the SLS platform and the subscriber TD is a relationship number. Ex. 1005
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`¶ 72 (“the SLS module 105 may communicate with the SLS platform 115
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`. . . to obtain a relationship number”); id. ¶ 74 (“[T]he determined next
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`available relationship number is returned to the SLS module 105 of the
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`subscriber TD 110.”). Thus, Backhaus refers to a specific transmission—the
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`sharing of a relationship number between the SLS platform and the
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`subscriber TD—as occurring via an IP data channel.
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`Claim 1 recites “automatically associating each primary telephone
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`number and bridge or access telephone number pairing with a corresponding
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`secondary telephone number and contact telephone number pairing in the
`
`computer memory.” Ex. 1001, 10:19–22. Petitioner presents evidence that
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`Backhaus discloses pairing a primary number with a relationship number
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`and pairing a SLS number with a third party number. Pet. 30–32 (citing Ex.
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`1005 ¶¶ 49, 52–53, 60, 70, Fig. 4C). Petitioner also presents evidence that
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`Backhaus discloses associating the primary and relationship number pairing
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`with the SLS and third party number pairing. Id. at 32–35 (citing Ex. 1005
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`¶¶ 10, 15, 44, 46, 53, 59, 60). Patent Owner does not dispute that Backhaus
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`discloses this limitation of claim 1. On this record, Petitioner shows
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`sufficiently that Backhaus discloses this limitation of claim 1.
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`Claim 1 recites “receiving, at a switch associated with the server, an
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`outgoing call from the handset to the bridge or access telephone number via
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`a second channel.” Ex. 1001, 10:23–25. Petitioner presents evidence that
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`Backhaus’s subscriber TD calls the relationship number via a PSTN. Pet.
`
`35