Case 6:22-cv-00031-ADA Document 195 Filed 12/05/23 Page 1 of 13
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`FLYPSI, INC., (D/B/A FLYP),
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`Plaintiff,
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`v.
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`GOOGLE LLC,
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`Defendant.
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`
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`CIVIL ACTION NO. 6:22-cv-00031-ADA
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`JURY TRIAL DEMANDED
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`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
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`GOOGLE LLC’S OPPOSITION TO FLYP’S MOTION FOR PARTIAL SUMMARY
`JUDGMENT CONCERNING THE BURNER SYSTEM, OBVIOUSNESS, AND
`GOOGLE'S 35 U.S.C. § 112 ARGUMENTS
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`Case 6:22-cv-00031-ADA Document 195 Filed 12/05/23 Page 2 of 13
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`TABLE OF CONTENTS
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`Page
`INTRODUCTION ............................................................................................................. 1
`ARGUMENT ..................................................................................................................... 1
`A.
`Google Provided Ample Evidence of Motivation to Combine .............................. 1
`B.
`Flyp’s Arguments About the Lack of Motivation to Combine for Google’s
`Single Reference Are Legally and Factually Unsupportable ................................. 4
`Flyp Is Not Entitled to Summary Judgment on Google’s Written
`Description or Enablement Defenses ..................................................................... 6
`Google Is No Longer Relying on Burner as an Anticipatory or
`Obviousness Reference .......................................................................................... 8
`CONCLUSION .................................................................................................................. 8
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`C.
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`D.
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`I.
`II.
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`III.
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`-i-
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`Case 6:22-cv-00031-ADA Document 195 Filed 12/05/23 Page 3 of 13
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
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`ALZA Corp. v. Andrx Pharms., LLC,
`603 F.3d 935 (Fed. Cir. 2010)....................................................................................................7
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`Ariad Pharms., Inc. v. Eli Lilly & Co.,
`598 F.3d 1336 (Fed. Cir. 2010) (en banc) ..................................................................................6
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`Graham v. John Deere Co. of Kansas Cty.,
`383 U.S. 1 (1966) .......................................................................................................................6
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`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................................................3
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`Lockwood v. Am. Airlines, Inc.,
`107 F.3d 1565 (Fed. Cir. 1997)..............................................................................................7, 8
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`SIBIA Neurosciences, Inc. v. Cadus Pharmaceutical Corp.,
`225 F.3d 1349 (Fed. Cir. 2000)..........................................................................................4, 5, 6
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`Statutes
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`35 U.S.C. § 102 ............................................................................................................................3, 6
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`35 U.S.C. § 103 ................................................................................................................................6
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`35 U.S.C. § 112 ................................................................................................................................8
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`-ii-
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`Case 6:22-cv-00031-ADA Document 195 Filed 12/05/23 Page 4 of 13
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`I.
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`INTRODUCTION
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`There is overwhelming evidence that Google Voice has operated the same way with respect
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`to the asserted claims since well before the Asserted Patents’ effective filing date. Yet Flyp accuses
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`Google Voice of infringing the Asserted Patents. Google Voice therefore invalidates the Asserted
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`Patents. In an effort to avoid this reality,
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`. In response, Google proffered an expert’s opinion that, under such a broad
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`reading, the asserted claims are neither sufficiently described nor enabled by the specification.
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`Faced with this evidence, Flyp misstates the law and record in an attempt to eliminate an
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`obstacle to succeeding at trial. Flyp misrepresents the requirements for making a prima facie case
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`of obviousness and conflates the knowledge of a POSITA with Title 35’s requirement that the
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`specification must describe and enable the claimed invention. At most, Flyp’s motion establishes
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`genuine disputes of material fact, demonstrating that summary judgment in its favor is
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`inappropriate. Flyp’s motion for partial summary judgment should therefore be denied.1
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`II.
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`ARGUMENT
`A.
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`Google Provided Ample Evidence of Motivation to Combine
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`In light of the ample evidence Google has presented, Flyp cannot establish that there is no
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`genuine dispute of material fact that Google has shown a motivation to combine Google Voice
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`(“GV”) with other prior art. But even if a dispute exists, such dispute should be presented to the
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`jury and is not appropriate for summary judgment as Flyp requests.
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`1 As discussed in the relevant sections below, in an effort to streamline the case and reduce the
`issues presented to the Court and ultimately the jury, Google withdraws the following defenses
`and arguments subject to the caveats noted below: anticipation and obviousness defenses based
`on the Burner phone reference; and written description and enablement arguments for “primary
`telephone number” and “secondary telephone number.” Accordingly, Flyp’s requests related to
`those defenses and arguments should be denied as moot.
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`Case 6:22-cv-00031-ADA Document 195 Filed 12/05/23 Page 5 of 13
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`Google’s expert Oded Gottesman provided detailed opinions on the motivation to combine
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`GV with other prior art references He stated that “the natural evolution of systems is to integrate
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`more and more networks, in order to offer more versatile features and seamless overall
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`internetwork solutions, especially when there are already pre-existing standards and competitive
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`markets.” Ex. 1 ¶¶ 200, 205; see also id. ¶¶ 196–99, 201–04, Tables T-1 and T-2.2 Dr. Gottesman
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`explained that this natural progression would provide a POSITA with further motivation to
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`combine the prior art Google Voice with systems disclosed in other references. Id.
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`Flyp also ignores that Dr. Gottesman further relies on the fact that
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` before the Asserted Patents effective
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`filing date. Ex. 1 ¶¶ 92, 94, 95. Flyp’s request for summary judgment therefore would require the
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`Court to find there was no motivation
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` even in the face of
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`evidence that that combination was actually made. Such a finding would be nonsensical.
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`Google’s final invalidity contentions, which Dr. Gottesman cites and endorses, further
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`detail the motivation to combine, demonstrating the multiple disputes of material fact here. They
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`state that Google “may rely upon documents, products, testimony, and other evidence to establish
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`bases for, and motivations to make combinations of, certain cited references that render the
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`Asserted Claims obvious.” Ex. 2 at 3. Google’s contentions list the references that underly its
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`obviousness defenses and identify in a page and a half of citations where “[e]ach of these
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`references and systems describes or implements methods for delivering telephone calls using the
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`combination of a data channel and a voice channel.” Id. at 59. The contentions note that the
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`solutions in each of the references “would have been further enhanced and augmented by the other
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`2 Further details about Dr. Gottesman’s opinions can be found in Google’s Opposition to Flyp’s
`motion to strike his expert report.
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`Case 6:22-cv-00031-ADA Document 195 Filed 12/05/23 Page 6 of 13
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`prior art references and systems, which are directed to the same and similar problems,” providing
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`another page of citations to the prior at. Id. at 62–63. Citing KSR Int’l Co. v. Teleflex Inc., 550 U.S.
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`398 (2007), Google’s contentions note that because the prior art references “disclose similar steps
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`and components that are highly compatible with each other, it would be natural for one of ordinary
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`skill in the art to contemplate adding to, or substituting the teachings of any one of these references
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`with the teachings of any one or more of the other references in order to provide additional
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`functionality, to improve upon the basic techniques taught in each reference, and/or to solve similar
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`issues recited in each.” Ex. 2 at 61.
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`Indeed, Flyp’s motion fails under the obviousness test set forth in KSR. “In determining
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`whether the subject matter of a patent claim is obvious, neither the particular motivation nor the
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`avowed purpose of the patentee controls.” 550 U.S. at 419. Instead, a patent’s subject matter can
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`be proven obvious by showing that there was a known problem with an obvious solution
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`encompassed by the patent’s claims. Id. at 419–20. That is precisely what Google’s expert opinions
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`and invalidity contentions demonstrate, making summary judgment of no motivation to combine
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`inappropriate.
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`Flyp relies without support on the publication date of U.S. Patent Application Publication
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`No. 2013/0295892 (“Backhaus”) to establish a lack of motivation to combine the references in Dr.
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`Gottesman’s report. But the Asserted Patents are governed by post-AIA 35 U.S.C. § 102. Section
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`102(a)(2) states that a person shall be entitled to a patent unless “the claimed invention was
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`described in a patent issued under section 151 . . . in which the patent . . . names another inventor
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`and was effectively filed before the effective filing date of the claimed invention.” Backhaus was
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`filed on June 17, 2013 and claims priority to an application filed on May 7, 2012. Ex. 3. The
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`Asserted Patents all claim priority to U.S. Application No. 13/944,853, which was filed on July
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`17, 2013. Backhaus’s latest possible effective filing date (June 17, 2013) is before the Asserted
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`Patents’ earliest possible effective filing date (July 17, 2013). Therefore, Backhaus is prior art
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`regardless of its publication date, and it is appropriate to consider it in an obviousness analysis.
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`Summary judgment of no motivation to combine the references in Dr. Gottesman’s report is
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`therefore inappropriate.
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`B.
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`Flyp’s Arguments About the Lack of Motivation to Combine for Google’s
`Single Reference Are Legally and Factually Unsupportable
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`There is ample evidence that a skilled artisan would have been motivated to modify Google
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`Voice. Flyp argues to the contrary, but its position is based on a misunderstanding of Google’s
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`position and the case law, demonstrating that the parties’ dispute is one of fact that must be
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`submitted to the jury.
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`Flyp mischaracterizes Dr. Gottesman’s report as basing the motivation to modify the
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`Google Voice prior art solely on common sense. But Dr. Gottesman’s opinion is very similar to
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`the expert opinion that the Federal Circuit relied on in invalidating a patent in SIBIA
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`Neurosciences, Inc. v. Cadus Pharmaceutical Corp., 225 F.3d 1349 (Fed. Cir. 2000). There, the
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`Federal Circuit stated that “the motivation to modify a reference can come from the knowledge of
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`those skilled in the art, from the prior art reference itself, or from the nature of the problem to be
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`solved.” The accused infringer in SIBIA made a single-reference obviousness argument based on
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`the Stumpo reference. They relied on other references to support their position that a POSITA
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`would have been motivated to modify Stumpo, rendering the patent-in-suit obvious. SIBIA, 225
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`F.3d at 1357–58. The Federal Circuit found that those teachings, filtered through the knowledge
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`of one skilled in the art and the nature of the problem to be solved, provided a suggestion and
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`motivation to modify Stumpo. Id. at 1358. The Federal Circuit therefore reversed, invalidating the
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`patent-in-suit. Id. at 1359.
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`Case 6:22-cv-00031-ADA Document 195 Filed 12/05/23 Page 8 of 13
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`Here, Dr. Gottesman relied on his years of experience to opine that “the natural evolution
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`of systems is to integrate more and more networks, in order to offer more versatile features and
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`seamless overall internetwork solutions . . . .” Ex. 1 ¶ 200. Dr. Gottesman further stated that “
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`” Ex. 1 ¶ 196.3 Far from relying simply on
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`common sense alone, Dr. Gottesman referred to teachings in the Backhaus and Saksena references
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`to support his arguments, filtered through his knowledge as one skilled in the art and the nature of
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`the problem to be solved. Id. This opinion is at least as detailed as the showing found to be
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`sufficient in SIBIA. Summary judgment of no motivation to modify the Google Voice reference is
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`therefore inappropriate.
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`Even if Flyp’s characterization of Dr. Gottesman’s opinion were correct, Flyp cites no
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`authority granting summary judgment of no motivation to modify where an expert relied, in part,
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`on common sense. Flyp characterizes SIBIA as “reversing a finding of unpatentability for
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`obviousness because the [Patent Trial and Appeal] Board erred in relying on ‘common sense’ to
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`supply a claim limitation that was missing from the one prior art reference relied on to show
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`obviousness.” Mot. (Dkt. 151) at 10. But SIBIA was an appeal from the denial of a JMOL motion,
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`not an appeal of a Patent Trial and Appeal Board finding. And SIBIA never mentions “common
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`sense.” Instead, SIBIA found that “the implicit finding by the jury that there was no suggestion or
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`motivation to modify” the single reference at issue was unsupported by substantial evidence.
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`3 Flyp cites paragraph 205 of Dr. Gottesman’s invalidity report for this point, but that paragraph
`relates to a combination of prior art Google Voice with Winbladh and/or Quon, not single reference
`obviousness.
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`Case 6:22-cv-00031-ADA Document 195 Filed 12/05/23 Page 9 of 13
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`SIBIA, 225 F.3d at 1359. The Federal Circuit therefore reversed the denial of the defendant’s
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`motion for JMOL and invalidated the patent-in-suit. Id.
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`It is immaterial whether prior art Google Voice adhered to modern programming standards
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`or contained inoperative files, as Flyp argues. The appropriate test focuses on the scope and content
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`of the prior art, the differences between the prior art and the claims at issue, the level of ordinary
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`skill in the art, and any secondary considerations. Graham v. John Deere Co. of Kansas Cty., 383
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`U.S. 1, 17–18 (1966). Obviousness is determined using any eligible art under section 102,
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`including prior use. 35 U.S.C. § 103. Flyp cites no authority considering the modernity or
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`robustness of a particular implementation of such art when determining obviousness. At best, Flyp
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`identifies a fact issue for the jury, making summary judgment of no motivation to combine
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`inappropriate.
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`C.
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`Flyp Is Not Entitled to Summary Judgment on Google’s Written Description
`or Enablement Defenses
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`Flyp fails to show there is no dispute of material fact that the Asserted Patents enable or
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`possess adequate written description for (1) VoIP calling, (2) a voice channel and data channel, or
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`(3) the switch and server limitations.4 Flyp argues that summary judgment is appropriate because
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`Google’s expert was able to understand, in light of the specification, each of the claim terms. But
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`that is not the proper test. Instead, the patents are invalid because the specification does not
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`describe the claimed subject matter sufficiently to show that the inventor actually invented what
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`is claimed. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1343–48 (Fed. Cir. 2010) (en
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`4 Google argued that “primary telephone number” and “secondary telephone number” are
`indefinite during claim construction and reserves the right to appeal the Court’s determination. In
`an effort to streamline the case and the issues presented to the Court and ultimately the jury, Google
`hereby withdraws its written description and enablement defenses based on the “primary telephone
`number” and “secondary telephone number” limitations. Accordingly, Flyp’s request related to
`this issue should be denied as moot.
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`Case 6:22-cv-00031-ADA Document 195 Filed 12/05/23 Page 10 of 13
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`banc). One shows that one is in possession of an invention by describing it with all its claimed
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`limitations, not merely by describing enough to render the invention obvious. Lockwood v. Am.
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`Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). The specification also does not teach “those
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`skilled in the art to make and use the full scope of the claimed invention without ‘undue
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`experimentation.’” ALZA Corp. v. Andrx Pharms., LLC, 603 F.3d 935, 940 (Fed. Cir. 2010).
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`First, Flyp cannot establish that the Asserted Patents contain sufficient written description
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`of or enable VoIP calling. The patents indisputably never discuss delivering voice using VoIP and
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`do not describe in any way how to implement the invention using VoIP. Ex. 1 ¶ 232. That VoIP
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`calling was known before the Asserted Patents were filed is irrelevant to the inquiry because the
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`specification is what must describe and enable the invention. Lockwood, 107 F.3d at 1572.
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`Second, Flyp mischaracterizes Google’s argument regarding the lack of written description
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`or enablement for “voice channel” and “data channel.” Dr. Gottesman opined that “there is no
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`support in the specification for the limitations ‘voice channel’ and ‘data channel’ to the extent that
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`plaintiff reads these terms interchangeably to mean the same thing.” Ex. 1 ¶ 233 (emphasis added).
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`Flyp cites testimony from Dr. Gottesman stating he understood that both voice and data generally
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`speaking could be transmitted over an Internet Protocol (“IP”) channel in an effort to obtain
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`summary judgment. Mot. at 13. But that interpretation does not contradict his opinion that the
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`Asserted Patents’ specification did not describe or enable the full scope of “voice channel” and
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`“data channel” as interpreted by Flyp. Lockwood, 107 F.3d at 1572. Moreover, Dr. Gottesman
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`opined in his report and maintained at his deposition that the Asserted Patents’ specification
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`referred to data channels as IP channels and voice channels as conventional voice related channels
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`between a switch, the PSTN, and the handset. Ex. 1 ¶ 150; Ex. 4 at 435:20–436:11. Therefore, Dr.
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`Gottesman’s testimony fully supports Google’s written description and enablement defenses.
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`-7-
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`Case 6:22-cv-00031-ADA Document 195 Filed 12/05/23 Page 11 of 13
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`Third, Flyp similarly uses Dr. Gottesman’s testimony that skilled artisans in 2013 knew
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`about VoIP software switches to try to contradict his opinion that the Asserted Patents’
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`specification does not describe or enable “switch” and “server” to the extent Flyp reads the terms
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`to cover VoIP calling. Mot. at 13; Ex. 1 ¶ 234. Again, the written description and enablement
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`requirements relate to what the specification describes and teaches. Lockwood, 107 F.3d at 1572.
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`Flyp cites no authority that a POSITA’s knowledge is sufficient to provide that written description
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`or enablement. Therefore, genuine issues of material fact preclude summary judgment on Google’s
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`written description and enablement defenses.
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`D.
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`Google Is No Longer Relying on Burner as an Anticipatory or Obviousness
`Reference
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`In an effort to streamline the case and the issues presented to the Court and ultimately the
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`jury, Google withdraws its anticipation and obviousness defenses based on the Burner system.
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`Google reserves the right to rely on the Burner system as evidence of the state of the art as set forth
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`in its invalidity expert report. Ex. 1 ¶¶ 111–19. Flyp’s motion for summary judgment regarding
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`anticipation and obviousness based on the Burner system is therefore moot.
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`III. CONCLUSION
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`For the foregoing reasons, Google respectfully requests that the Court deny Flyp’s motion
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`for partial summary judgment concerning the Burner system, obviousness, and Google’s invalidity
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`arguments under 35 U.S.C. § 112.
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`-8-
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`Case 6:22-cv-00031-ADA Document 195 Filed 12/05/23 Page 12 of 13
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`DATED: November 28, 2023
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`Respectfully Submitted,
`
`/s/ Robert W. Unikel
`Robert W. Unikel (Pro Hac Vice)
`robertunikel@paulhastings.com
`John A. Cotiguala (Pro Hac Vice)
`johncotiguala@paulhastings.com
`Daniel J. Blake (Pro Hac Vice)
`danielblake@paulhastings.com
`Grayson S. Cornwell (Pro Hac Vice)
`graysoncornwell@paulhastings.com
`PAUL HASTINGS LLP
`71 South Wacker Drive, Suite 4500
`Chicago, IL 60606
`Telephone: (312) 499-6000
`Facsimile: (312) 499-6100
`
`Elizabeth Brann (Pro Hac Vice)
`elizabethbrann@paulhastings.com
`Ariell N. Bratton (Pro Hac Vice)
`ariellbratton@paulhastings.com
`PAUL HASTINGS LLP
`4655 Executive Drive, Suite 350
`San Diego, CA 92121
`Telephone: (858) 458-3000
`Facsimile: (858) 458-3005
`
`Robert R. Laurenzi (Pro Hac Vice)
`robertlaurenzi@paulhastings.com
`PAUL HASTINGS LLP
`200 Park Avenue
`New York, NY 10166
`Telephone: (212) 318-6000
`Facsimile: (212) 319-4090
`
`Joshua Yin (Pro Hac Vice)
`joshuayin@paulhastings.com
`PAUL HASTINGS LLP
`1117 S. California Avenue
`Palo Alto, CA 94304
`Telephone: (650) 320-1800
`Facsimile: (650) 320-1900
`
`Dan L. Bagatell (Pro Hac Vice)
`dbagatell@perkinscoie.com
`PERKINS COIE LLP
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`-9-
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`Case 6:22-cv-00031-ADA Document 195 Filed 12/05/23 Page 13 of 13
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`3 Weatherby Road
`Hanover, NH 03755
`Telephone: (602) 351-8250
`Facsimile: (602) 648-7150
`
`Andrew T. Dufresne (Pro Hac Vice)
`adufresne@perkinscoie.com
`PERKINS COIE LLP
`33 E. Main St. Ste. 201
`Madison, WI 53703
`Telephone: (608) 663-7460
`Facsimile: (608) 663-7499
`
`Paige Arnette Amstutz
`State Bar No.: 00796136
`pamstutz@scottdoug.com
`SCOTT, DOUGLASS & MCCONNICO, LLP
`303 Colorado Street, Suite 2400
`Austin, TX 78701
`Telephone: (512) 495-6300
`Facsimile: (512) 495-6399
`
`Attorneys for Defendant Google LLC
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`
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`CERTIFICATE OF SERVICE
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`I hereby certify that on the 28th day of November, 2023, a true and correct copy of the
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`foregoing document was filed electronically with the Clerk of Court using the CM/ECF system.
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`As of this date, all counsel of record have consented to electronic service and are being served
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`with a copy of this document through the Court’s CM/ECF system and by email.
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`/s/ Robert W. Unikel
`Robert W. Unikel
`
`
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`-10-
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