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`Exhibit 4
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`Exhibit 4
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`Trials@uspto.gov
`Paper 9
`571-272-7822
`Date: July 31, 2023
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`GOOGLE LLC,
`Petitioner,
`v.
`FLYPSI, INC. (D/B/A FLYP),
`Patent Owner.
`
`IPR2023-00359
`Patent 11,012,554 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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`Patent 11,012,554 B2
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`INTRODUCTION
`I.
`Background and Summary
`A.
`Google LLC (“Petitioner”) filed a Petition requesting inter partes
`review of claims 1–4 (the “Challenged Claims”) of U.S. Patent
`No. 11,012,554 B2 (Ex. 1001, the “’554 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 Google LLC 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 each identify the following litigations as matters related to
`the ’554 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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`Patent 11,012,554 B2
`The ’554 Patent
`D.
`The ’554 patent, titled “Telephone Network System and Method,”
`issued May 18, 2021, from application US 17/039,566. Ex. 1001,
`codes (54), (45), (21). The ’554 patent ultimately claims priority to
`application, US 13/944,853, filed on July 17, 2013. Id. at code (60).
`The ’554 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 ’554 patent “permits the user to select one or more secondary
`telephone numbers to be referenced to a primary telephone number.”
`Ex. 1001, 5:8–13. 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 7:61–65. “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. at 7:66–8:1. 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 8:4–7. The ’554 patent
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`allows “the secondary telephone number to be displayed as the number from
`which the call appears to have been placed.” Id. at 8:35–43.
`Figure 3, reproduced below, illustrates “data channel and voice
`channel connections used to provide telephone service.” Ex. 1001, 3:62–64.
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`As shown, 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,
`6:1–3. 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 to the
`bridge telephone number may be automatically routed to this switch.” Id. at
`6:10–15. 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 6:44–48. The
`’554 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 4:46–57.
`Challenged Claims
`E.
`The Petition challenges claims 1–4. Pet. 3–4. Claim 1 is the sole
`independent claim, which we reproduce below.
`1. A method of providing telephone service, comprising:
`automatically storing electronic information that indicates
`an association of a secondary telephone number and a primary
`telephone number with a mobile device in a computer memory
`associated with a server;
`automatically transmitting information that indicates an
`access telephone number to the mobile device via a data channel;
`automatically associating the telephone access number
`with a switch associated with the server;
`receiving, at the switch associated with the server, an
`outgoing call from the mobile device to the access telephone
`number via a second channel;
`receiving, at the server, information from the switch
`indicating the outgoing call is being made to the 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:
`(a) connect the outgoing call to a contact telephone
`number indicated by the mobile device, and
`(b) identify a telephone number from which the
`outgoing call is being made as the secondary 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, 2, 4
`3
`1, 2, 4
`3
`Pet. 3–4.
`Petitioner also relies on the declaration testimony of Dr. Lin.
`Ex. 1002; see also Ex. 1003 (providing Dr. Lin’s Curriculum Vitae).
`The following subsections provide brief descriptions of the asserted
`prior art references.
`
`References/Basis
`Backhaus2
`Backhaus, Saksena3
`Backhaus, Taylor4
`Backhaus, Saksena, Taylor
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`35 U.S.C. §
`1021
`103
`103
`103
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`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 ’554 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 2006/0077956; published Apr. 13, 2006 (Ex. 1008, “Saksena”).
`4 US 2009/0052437; published Feb. 26, 2009 (Ex. 1007, “Taylor”).
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`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 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.
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`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.
`Saksena (Ex. 1008)
`2.
`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
`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-
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`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
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`Taylor (Ex. 1007)
`3.
`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 a 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.
`
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`II. ANALYSIS OF PETITIONER’S CHALLENGES
`Applicable Law
`A.
`Petitioner’s asserted grounds of unpatentability are based on
`anticipation under 35 U.S.C. § 102 and on obviousness under 35 U.S.C.
`§ 103. A “prior art reference—in order to anticipate under 35 U.S.C.
`§ 102—must not only disclose all elements of the claim within the four
`corners of the document, but must also disclose those elements ‘arranged as
`in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369
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`(Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542,
`1548 (Fed. Cir. 1983)).
`With respect to 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
`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
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`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
`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.
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`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 ’554 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 . . . More education can
`supplement practical experience and vice versa.
`Pet. 4–5 (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 ’554 patent, based on our review of the limited record.
`Claim Construction
`C.
`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. 8. “Patent
`Owner agrees claim construction is unnecessary at this stage” of the
`proceeding. Prelim. Resp. 5.
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`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
`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, 2, and 5 as anticipated by Backhaus
`Petitioner contends that Backhaus anticipates each limitation of
`claims 1, 2, and 4. Pet. 9–42. We address Petitioner’s contentions, and
`Patent Owner’s counter-arguments, below.
`Independent claim 1
`1.
`Preamble
`a)
`The preamble of claim 1 recites “[a] method or providing telephone
`service.” Ex. 1001, 10:10. Petitioner contends that, “[t]o the extent that the
`preamble of claim 1 is limiting, Backhaus discloses” the subject matter.
`Pet. 9 (referencing Ex. 1002 ¶¶ 58–63). Specifically, Petitioner contends
`that Backhaus discloses a second line service to a subscriber with a
`telecommunications device. Id.; see also id. at 10 (providing an annotated
`version of Backhaus’s Figure 1, which is an exemplary telephone service
`system); id. at 10–15 (describing the structure and operation of Backhaus’s
`system, and referencing Ex. 1005 ¶¶ 3–11, 31, 33–36, 52–57, 59–139;
`Ex. 1002 ¶¶ 51–57).
`Upon review of the information in the Petition and corresponding
`evidence, we determine Petitioner has sufficiently demonstrated, at this stage
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`of the proceeding, that Backhaus discloses 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.
`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 “automatically storing electronic information that
`indicates an association of a secondary telephone number and a primary
`telephone number with a mobile device in a computer memory associated
`with a server.” Ex. 1001, 10:11–14 (limitation 1.a5 of claim 1). Petitioner
`contends that Backhaus’s TD 110 corresponds to the recited mobile device.
`Pet. 15 (referencing Ex. 1005 ¶¶ 31, 33, 50, 81–83; Ex. 1002 ¶¶ 58–59).
`Petitioner contends that Backhaus discloses that TD 110 receives calls
`directed to its primary number or a SLS number (the alleged “secondary
`telephone number”). Pet. 15–16 (referencing Ex. 1005 ¶¶ 31, 33, 34, 60, 75;
`Ex. 1002 ¶ 59). Petitioner contends that Backhaus discloses associating the
`primary and SLS numbers and storing the association in computer memory.
`Id. at 17–19 (referencing Ex. 1005 ¶¶ 39–40, 42–44, Fig. 3A; Ex. 1002
`¶¶ 60–62); see, e.g., id. at 17 (providing an annotated version of Backhaus’s
`Figure 3A, depicting the Second Line Service Master ID Table in Central
`SLS Database 116, which shows the association between a subscriber’s
`primary number and secondary number).
`
`
`5 We use the limitation labels for claim 1 used by Petitioner and Patent
`Owner. See Pet. 9–37 (labeling limitations 1.a–1.f); Prelim. Resp. 1
`(referencing limitations 1.c, 1.d, 1.e, and 1.f).
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`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 discloses the subject matter of limitation
`1.a of claim 1.
`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 “automatically transmitting information that
`indicates an access telephone number to the mobile device via a data
`channel.” Ex. 1001, 10:15–17 (limitation 1.b of claim 1). Petitioner
`contends that Backhaus’s SLS module 105 on TD 110 translates a number
`calling TD 110 into the relationship number associated with the calling
`number and uses the relationship number to access the SLS platform 115
`over telephone network 125. Pet. 20 (referencing Ex. 1005 ¶¶ 43, 49, 57,
`code (57) (Abstract)). Petitioner contends that a person having ordinary skill
`in the art would understand that Backhaus’s relationship number is the
`recited “access telephone number.”
`Petitioner contends that Backhaus discloses that, when a third party
`calls TD 110’s SLS number, SLS Platform 115 determines if the caller has a
`relationship number and, if not, the platform establishes a “dialable”
`relationship number. Pet. 21 (referencing Ex. 1005 ¶¶ 52–53). Petitioner
`adds that Backhaus discloses that the relationship number can be used for
`multiple subscribers, since the combination of the relationship number and
`subscriber SLS number or primary number would be unique. Id.
`(referencing Ex. 1005 ¶ 54; Ex. 1002 65). Petitioner adds that the
`relationship number is stored in SLS database 116. Id. at 21–22 (referencing
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`Ex. 1005 ¶¶ 42, 53–54, Fig. 3A; Ex. 1002 ¶ 66); see id. at 22 (providing
`Figure 3A, which shows the association of a relationship number and third-
`party number for a subscriber’s contacts).
`With respect to the requirement that the access telephone number be
`transmitted to the mobile device “via a data channel,” Petitioner contends
`that Backhaus discloses this aspect “in two ways.” Pet. 22. As to the
`“second way,”6 Petitioner contends that “Backhaus discloses . . . processes
`for handling data communications between subscriber TD 100 and SLS
`platform 115 over network 125.” Id. at 25 (referencing Ex. 1005 ¶¶ 71–74,
`Fig. 4D). Petitioner explains that, for a situation where the subscriber
`wishes to call a third party that does not have a relationship number
`established in the system, SLS Module 105 on subscriber TD 110 requests a
`new relationship number from SLS platform 115. Id. (referencing Ex. 1005
`¶ 71). In response, SLS platform 115 assigns a relationship number and
`returns that number to TD 110. Id. (referencing Ex. 1005 ¶ 74). Petitioner
`adds that Backhaus discloses that communications between SLS
`platform 115 and TD 110 may be through protocols or mechanisms that
`include data channels. Id. at 25–26 (referencing Ex. 1005 ¶¶ 72–73;
`Ex. 1002 ¶ 70).
`Patent Owner argues that “the mere fact that Backhaus describes that
`unspecified communications can occur via various channels is not enough
`for anticipation: Backhaus must teach the specific arrangement of the claims,
`
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`6 We address the “second way” here only. Because we institute trial, both of
`Petitioner’s contended ways of satisfying limitation 1.b will be addressed on
`a complete trial record.
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`in which specific transmissions occur via a ‘data channel’ and other
`transmissions occur via a ‘second channel.’” Prelim. Resp. 15.
`We have considered Patent Owner’s argument and determine, on the
`current record, that Petitioner has made a sufficient showing for institution
`that Backhaus discloses the requirement that the access telephone number be
`automatically transmitted to the mobile device via a data channel. Backhaus
`expressly discloses that “SLS module 105 may communicate with an SLS
`platform 115 to designate and acquire a relationship number to a third party
`who has not been called by the subscriber before via the SLS service” using
`“an unstructured supplementary services data (‘USSD’) protocol.” Ex. 1005
`¶ 72; see also Pet. 25 (referencing Ex. 1005 ¶ 72). Backhaus explains that,
`alternatively, other data channel communications, such as short message
`service (“SMS”) protocol, multimedia messaging service (“MMS”) protocol,
`IP-based interaction, WiFi, Bluetooth technologies, and proprietary wireless
`or wired technologies, may be used. Ex. 1005 ¶ 73; see also Pet. 25–26
`(referencing Ex. 1005 ¶ 73). As discussed below, these communication
`channels differ from the public switched telephone network upon which
`Petitioner relies for the “second channel.” See infra, Section II.D.1.e.
`Upon review of the information in the Petition and corresponding
`evidence, including Patent Owner’s counter arguments, we determine
`Petitioner has sufficiently demonstrated, at this stage of the proceeding, that
`Backhaus discloses the subject matter of limitation 1.b of claim 1.
`Limitation 1.c
`d)
`Claim 1 also recites “automatically associating the telephone access
`number with a switch associated with the server.” Ex. 1001, 10:18–19
`(limitation 1.c of claim 1). Petitioner contends that calls directed to a
`
`17
`
`
`
`Case 6:22-cv-00031-ADA Document 127-5 Filed 08/18/23 Page 19 of 36
`
`IPR2023-00359
`Patent 11,012,554 B2
`subscriber’s primary or SLS numbers are routed through communications
`network 125. Pet. 27 (referencing Ex. 1005 ¶ 32). Petitioner contends that
`Backhaus discloses that network 125 may be a public switched telephone
`network, using signaling system seven (“SS7”) protocol. Id. at 27–28
`(referencing Ex. 1005 ¶ 32; Ex. 1011, 5–6, 103–105; Ex. 1002 ¶ 71).
`Petitioner contends that a person having ordinary skill in the art would
`have understood that a public switched telephone network would include
`signal switching points as a “necessary part” of the network. Pet. 28
`(referencing Ex. 1002 ¶ 72; Ex. 1011 62–63, 81; Ex. 1007 ¶ 4). Petitioner
`contends that a public switched telephone network would include a local
`signal switching point, which “is a switch that connects to a
`telecommunication device or server so as to allow the device/server to
`access the PSTN.” Id. at 29 (referencing Ex. 1011, 6–7, 82; Ex. 1007 ¶ 4).
`Petitioner contends that “in Backhaus, given that subscriber TD 110 ‘uses a
`relationship number to access the SLS platform 115 over the telephone
`network 125,’ a [person having ordinary skill in the art] would have
`understood that a local switch (the claimed ‘switch’) in network 125
`necessarily receives calls directed to a relationship number before routing
`the same to SLS platform 115,” associating the switch with the relationship
`number automatically. Id. at 30–31 (referencing Ex. 1005 ¶ 49; Ex. 1002
`¶ 73). Petitioner adds that the local switch is associated with SLS
`server 205. Id. at 31 (referencing Ex. 1005 ¶¶ 34–35, 39, 40; Ex. 1002 ¶ 74).
`Patent Owner argues that claim 1 requires the recited “switch” to be
`the same switch for each of the steps of claim 1 including a “switch.”
`Prelim. Resp. 5–6. Patent Owner argues that Petitioner has not
`demonstrated that it is necessary for the same switch to perform the steps of
`
`18
`
`
`
`Case 6:22-cv-00031-ADA Document 127-5 Filed 08/18/23 Page 20 of 36
`
`IPR2023-00359
`Patent 11,012,554 B2
`claim 1 reciting the “switch.” Id. at 7. Patent Owner argues that evidence in
`the record confirms that any switch in the U.S. can route a signal to any
`other switch. Id. (referencing Ex. 1011, 40).
`Patent Owner argues that the Petition identifies a calling party’s local
`switch and a destination’s local switch. Prelim. Resp. 8. Patent Owner adds
`that Taylor, to which Petitioner points in support of its inherency argument,
`shows multiple switches in the public switched telephone network. Id. at 9
`(reproducing Taylor’s Figure 1A). As such, there are multiple switches.
`Patent Owner also argues that, even if a telecommunications switch is well
`known, the specific structure recited in the method steps are not well known.
`Id. at 10.
`Patent Owner also argues that Dr. Lin’s Declaration testimony is
`entitled to little weight, as the testimony is “substantially identical to the
`Petition.” Prelim. Resp. 11 (citing Xerox Corp. v. Bytemark, Inc., IPR2022-
`00624, Paper 9 (PTAB Aug. 24, 2022) (precedential) (“Xerox”)).
`We have considered Patent Owner’s arguments and determine, on the
`current record, that Petitioner has made a sufficient showing for institution
`that Backhaus discloses the recited switch, and, as will be discussed in detail
`below, the same switch is used for the method steps of claim 1 reciting the
`switch. Petitioner presents evidence that each telecommunication device or
`server necessarily accesses a PSTN using the same local switch. Ex. 1002
`¶ 73 (“A local SSP is a switch that connects to a telecommunication device
`or server so as to allow the device/server to access the PSTN.” (referenced at
`Pet. 29–30)); Ex. 1007, Fig. 1A (showing a single local switch 12 associated
`with server 50 (referenced at Pet. 29–30)); Ex. 1011, 6–7 (“the calling
`party’s local switch . . . the called party’s local switch” (referenced at
`
`19
`
`
`
`Case 6:22-cv-00031-ADA Document 127-5 Filed 08/18/23 Page 21 of 36
`
`IPR2023-00359
`Patent 11,012,554 B2
`Pet. 29)), 82 (“The End Office provides network access for the subscriber. It
`is located at the bottom of the network hierarchy.” (referenced at Pet. 29)),
`84 (“The Local Exchange network consists of the digital switching nodes
`(EOs) that provide network access to the subscriber. The Local Exchange
`terminates both lines and trunks, providing the subscriber access to the
`PSTN.”). Thus, because Backhaus’s SLS platform accesses the PSTN using
`its same local switch, the same local switch that receives an outgoi
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