Case 6:22-cv-00031-ADA Document 323 Filed 05/29/24 Page 1 of 16
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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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` vs.
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`GOOGLE LLC,
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` Defendant.
`
`
`Civil Action No. 6:22-cv-31-ADA
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`
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`PLAINTIFF FLYPSI, INC.’S MOTION FOR AN EXCEPTIONAL CASE FINDING
`UNDER 35 U.S.C. § 273(F) AND FOR AN AWARD OF ATTORNEY FEES
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`

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`Case 6:22-cv-00031-ADA Document 323 Filed 05/29/24 Page 2 of 16
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`I.
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`II.
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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION .............................................................................................................. 1
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`FACTUAL BACKGROUND ............................................................................................. 1
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`III.
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`LEGAL STANDARDS ...................................................................................................... 3
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`IV. ARGUMENT ...................................................................................................................... 3
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`A. Google Cannot Show a Reasonable Basis for Asserting a Defense Under § 273 ........ 3
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`1. Google Cannot Show a Reasonable Basis Regarding the Inbound Patents ............ 3
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`2. Google Cannot Show a Reasonable Basis Regarding the Outbound Patents ......... 7
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`B. The Court Should Award Flyp Attorney Fees .............................................................. 9
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`CONCLUSION ................................................................................................................. 11
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`V.
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`i
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`Case 6:22-cv-00031-ADA Document 323 Filed 05/29/24 Page 3 of 16
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`TABLE OF AUTHORITIES
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`Page(s)
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`
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`Cases
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`Coherus Biosciences, Inc. v. Amgen Inc.,
`2020 WL 13634847 (D. Del. June 11, 2020) .............................................................................3
`
`Drop Stop LLC v. Jian Qing Zhu,
`757 Fed. App’x 994 (Fed. Cir. 2019).........................................................................................8
`
`Medtronic Navigation, Inc. v. BrainLAB Medizinische Computersystems Gmbh,
`2008 WL 410413 (D. Col. Feb. 12, 2008) ...............................................................................10
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`Octane Fitness, LLC v. ICON Health & Fitness,
`572 U.S. 545 (2014) ...................................................................................................................3
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`Statutes
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`35 U.S.C. § 103 ................................................................................................................................4
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`35 U.S.C. § 273 ...................................................................................................................... passim
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`35 U.S.C. § 285 ................................................................................................................................3
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`ii
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`Case 6:22-cv-00031-ADA Document 323 Filed 05/29/24 Page 4 of 16
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`I.
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`INTRODUCTION
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`Throughout this case, Google pursued a prior-use defense based on the falsehood that
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`Google Voice had not changed in more than a decade. Google presented this argument to the
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`Court and jury despite
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`. In view of the full
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`record, Google’s maintenance of this defense was unreasonable. As a result, this case is
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`exceptional and an award of fees to Flyp is warranted.
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`II.
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`FACTUAL BACKGROUND
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`Flyp sued Google for infringing five patents (the “Asserted Patents”). Dkt. 103 (Flyp’s
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`Second Am. Compl.). Two of these patents claimed methods for receiving a call on a single mobile
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`device that contained multiple numbers (the “Inbound Patents”), and three claimed methods for
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`making a call from a single mobile device that contained multiple phone numbers (the “Outbound
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`Patents”). See id. Although Google did not plead it (see Dkt. 245 (Google’s First Am. Ans. to
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`Second Am. Compl.)), at trial, Google raised and submitted to the jury a prior-commercial-use
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`defense under 35 U.S.C. § 273 based upon its use of pre-2013 Google Voice. Google argued that
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`the accused versions of Google Voice were the same in all material aspects to the versions of
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`Google Voice in operation before the priority date of the Asserted Patents (the “pre-2013 Google
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`Voice”). The testimony and evidence adduced at trial showed that this defense was unreasonable.
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`For the Inbound Patents, it is indisputable that the accused feature (
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`) did not exist in the Google Voice
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`application
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`. Tr. at 201:17-202:14, 211:6-10, 292:3-10, 1264:17-1266:9. Google thus
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`tried to cobble together a prior-use defense based on other, disparate products—and notably made
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`no argument that
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` feature Flyp had actually accused of infringement was in prior
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`1
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`

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`Case 6:22-cv-00031-ADA Document 323 Filed 05/29/24 Page 5 of 16
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`commercial use. Google’s theory was that a Google Voice precursor, GrandCentral, could forward
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`inbound calls to various telephone numbers. Id. at 920:3-921:16. Google alleged that a
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`GrandCentral user could thus forward calls to a VoIP service called Gizmo5, and therefore receive
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`inbound VoIP calls to a handset. Id. Flyp submitted substantial evidence to the jury that this was
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`not true. Id. at 1249:6-1253:23, 1267:8-12. This proposed combination did not practice key
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`limitations from the inventions, including transmitting the handset-associated telephone number
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`to the handset, which is a feature Google first added to Google Voice using push notification in
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`2019. Id. at 292:3-24, 1203:15-1204:4, 1246:14-1260:17. Worse, Google’s key fact witness on
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`Gizmo, Mr. Matt Reilly, admitted that Gizmo “turned off the servers that were running the Gizmo
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`service” by 2011. Id. at 867:10-14. There was no reasonable basis for Google arguing during trial
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`that the purported Gizmo prior art was in commercial use when Google had abandoned any
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`purported use more than a decade before.
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`Likewise, for the Outbound Patents, pre-2013 Google Voice did not use the inventive
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`telephone number pairings from the claims—a limitation that Google’s expert confirmed was the
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`“genius” of the invention (id. at 1056:11-14)—
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`. See id. at 1037:18-1059:16, 1077:12-18, 1083:23-1285:6,
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`1234:3-1242:2, 1299:13-1309:22, 1310:19-1311:25, 1343:16-1344:5, 1346:12-1347:12. And
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`Google’s engineer, Mr. Tom Ford, who helped launch Google Voice and worked on the project
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`through the priority date of the Asserted Patents, testified that Google never transmitted data to a
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`mobile handset with the bridge telephone number (id. at 1198:4-1201:15), as the invention
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`requires. There was thus no reasonable basis for Google to assert that pre-2013 Google Voice was
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`using these inventions before the priority date either.
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`2
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`Case 6:22-cv-00031-ADA Document 323 Filed 05/29/24 Page 6 of 16
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`III. LEGAL STANDARDS
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`In limited circumstances, an accused infringer may assert prior commercial use as a defense
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`to infringement. 35 U.S.C. § 273(a) (requiring accused instrumentality was “in good faith,
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`commercially used” more than one year before the priority date such that it “would otherwise
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`infringe a claimed invention being asserted”). This defense is unavailable if the accused infringer
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`abandoned the purported prior commercial use. Id. at § 273(e)(4). And the accused infringer bears
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`the burden of showing it did not do so. Tr. at 941:8-942:1.
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`As this defense may be at odds with public patent policies (e.g., encouraging disclosure)
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`and the first-to-file system that Congress also enacted in the America Invents Act, the statute
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`provides a deterrent to misuse—it requires courts to find cases exceptional if an accused infringer
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`asserts the defense unreasonably. 35 U.S.C. § 273(f) (requiring that when an accused infringer
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`“subsequently fails to demonstrate a reasonable basis for asserting the defense, the court shall find
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`the case exceptional for the purpose of awarding attorney fees under section 285”). To determine
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`whether an assertion was unreasonable, courts consider the totality of the circumstances—
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`including the relative weaknesses of the assertion. See Coherus Biosciences, Inc. v. Amgen Inc.,
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`2020 WL 13634847, at *6 (D. Del. June 11, 2020) (citing Octane Fitness, LLC v. ICON Health &
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`Fitness, 572 U.S. 545, 554 (2014)).
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`IV. ARGUMENT
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`A.
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`Google Cannot Show a Reasonable Basis for Asserting a Defense Under § 273
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`1.
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`Google Cannot Show a Reasonable Basis Regarding the Inbound
`Patents
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`Google’s prior-use defense for the Inbound Patents was unreasonable because Google did
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`not incorporate the accused functionality into Google Voice until years after the priority date.
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`Given this plain infirmity, Google improperly and unreasonably cobbled together a prior-use story
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`3
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`based on a combination of products that it abandoned more than a decade before trial, thus failing
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`the continued use requirement of section 273(e)(4).
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`At trial, Google could not dispute that it added the accused functionality—
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`
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`. Tr. at 201:17-202:14, 211:6-10, 292:3-
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`10, 1264:17-1266:9. However, it argued that two “VoIP endpoints” that consumers could allegedly
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`use with pre-2013 Google Voice could have fulfilled this limitation. See, e.g., id. at 728:15-20.
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`The first was a service called Gizmo5. Google’s theory was that a Google Voice precursor called
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`GrandCentral, which was a call forwarding service, “allowed users to enter a Gizmo5 (a third-
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`party, VoIP service) Session Initiation Protocol (‘SIP’) address as a forwarding phone,” and that
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`Google Voice also gave “users the option to forward calls to a Gizmo5 VoIP endpoint, in which
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`case such calls would be sent directly to the Gizmo5 client via SIP.” DX033.005-06 (October 2009
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`letter from Google to FCC allegedly describing pre-2013 Google Voice); see also, e.g., Tr.
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`at 323:16-15 (discussing the FCC letter), 402:17-19 (same).
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`Notably, for the purposes of invalidity, Google presented this as a Section 103 argument—
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`tacitly conceding that this was a combination and not part of a single prior commercial use. Tr.
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`at 952:10-953:2. And Flyp adduced substantial evidence that this proposed combination did not
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`practice all the limitations in the asserted claims, including because it used neither the claimed
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`. Id. at 292:3-24, 1203:15-1204:4, 1246:14-
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`
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`1260:17. Google left much of this evidence largely unrebutted, evidencing the relative weakness
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`of its position.
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`But this is not a situation where Google simply lost based on the balance of the facts.
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`Google’s Gizmo-based theory, even if it satisfied all the claim limitations (it did not), could not
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`4
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`qualify for the prior-use defense as a matter of law because of abandonment. Unrebutted testimony
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`by Google engineer Mr. Matt Reilly established that had Google discontinued Gizmo5 by 2011.
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`Mr. Reilly was an engineer at Gizmo from 2004 until its acquisition by Google in 2009, and he has
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`been at Google ever since. Id. at 839:3-24, 840:12-13, 845:21-846:3. After joining Google,
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`Mr. Reilly continued working on Gizmo, and his job responsibilities included attempting to adapt
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`Gizmo to Google Voice. Id. at 846:19-847:3. He confirmed on cross-examination that Google
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`abandoned whatever functionality it contends Gizmo offered in conjunction with its pre-2013
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`Google Voice product when Google stopped using Gizmo and actually turned off the servers that
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`were running the Gizmo service in 2011:
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`Q. And then I believe you mentioned, moving a little bit further
`ahead in time, that at some point, Google discontinued the Gizmo
`service; is that right?
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`A. Yes. It was about a year and a half after the acquisition.
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`Q. So a year and a half after the acquisition -- what date did you say
`the acquisition was again?
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`A. The acquisition was in November 2009.
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`Q. So we’re talking sometime in 2011; is that right?
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`A. Yes.
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`Q. And after that point, Google had essentially stopped using
`Gizmo, if I’m understanding your testimony correctly, right?
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`A. In 2011, we turned off the servers that were running the Gizmo
`service.
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`Id. at 866:24-867:14.
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`Google did not present any evidence contradicting Mr. Reilly’s testimony that Gizmo was
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`taken offline—totally and finally—two years before the priority date of the Asserted Patents.
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`Whatever the temporal bounds for abandonment, a cessation of use of at least two years before the
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`priority date of July 2013, and thirteen years before Google asserted the defense at trial, qualified.
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`5
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`Moreover, Section 273(a)(2) requires that any alleged commercial use must occur at least one year
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`before the priority date. Here, Google had already abandoned Gizmo even before then. Google’s
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`assertion of the Gizmo-based prior-use defense was therefore unreasonable.
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`The second alleged VoIP endpoint was Gmail (also called “Google Talk” or “Google
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`Hangouts”). Id. at 853:21-854:20. Ostensibly, a Google Voice user could also select Google Talk
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`as an endpoint. But evidence presented at trial through the testimony of Google’s engineer
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`Mr. Anthony Jawad and Google’s own documents established that this likewise did not practice
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`the claim limitation because Gmail was accessed through a browser and the claimed pre-call
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`information was never sent to a handset. See, e.g., id. at 823:24-829:1, 853:21-854:20, 1253:24-
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`1254:24; DX23; DX261; PTX-107. Moreover, like Gizmo, Google Talk was abandoned at least
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`by 2018 or early 2019 (Tr. at 731:3-731:9), long before Google asserted it as commercial prior use
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`during trial.
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`In short, Google’s assertion of a prior-use defense for the Inbound Patents was
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`unreasonable because it was based on a contrived combination of abandoned products that did not
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`even together practice all of the claim limitations. In particular, its presentation of long-abandoned
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`products—like Gizmo and Google Talk—in a prior-use defense was improper as a matter of law
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`and served only to confuse the issues of infringement and validity, elongating and complicating
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`trial (and now post-trial briefing). The Court should therefore find Google’s assertion of the prior-
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`use defense for the Inbound Patents to be unreasonable and to accordingly render this case
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`exceptional for the purposes of awarding attorney fees.
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`6
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`Case 6:22-cv-00031-ADA Document 323 Filed 05/29/24 Page 10 of 16
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`2.
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`Google Cannot Show a Reasonable Basis Regarding the Outbound
`Patents
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`Google’s assertion of a prior-use defense for the Outbound Patents was similarly
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`unreasonable. During trial, Google’s witnesses and documents confirmed that Google Voice did
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`not begin practicing limitations from the Outbound Patents until years after the priority date.
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`This begins with the unique telephone number pairings in the asserted claims. Google’s
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`expert, Dr. Gottesman, confirmed on cross-examination that this pairing was the “genius” of the
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`Outbound Patents. Tr. at 1056:11-14. He also conceded that Google did not implement those
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`pairings
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`testimony
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`time,
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` (id. at 1039:2-1043:21), well after the priority date. That
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`. Id. at 1038:1-1039:4; PTX-385.
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`. Tr. at 1043:22-1044:5.
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`. PTX-385; Tr. at 1045:11-1054:14. At that
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` Tr. at 1057:3-25.
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`. Id. at 1048:7-20.
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`. Id. at 1053:20-1054:2. That is,
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`. Id.; see also PTX-385.
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`This document was not a surprise to Google.
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`. PTX-385; Tr. at 1038:7-9. At trial, Google
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`Case 6:22-cv-00031-ADA Document 323 Filed 05/29/24 Page 11 of 16
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`provided no reasonable explanation for this document other than the clear inference that it
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`unambiguously
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`. A document clearly and
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`, makes Google’s assertion of the prior-use
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`defense for the Outbound Patents unreasonable.
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`And the problems do not end there. Mr. Tom Ford, an engineer who helped launch Google
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`Voice and was there through Flyp’s patents’ priority dates, testified that Google never transmitted
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`data to a mobile handset with the bridge telephone number. Tr. at 1198:4-1201:15. Despite this
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`clear testimony from its own engineer,
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`. Id. at 1231:8-1232:1.
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`. Id. at 1230:3-1232:1.
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` Id.; PTX-646. Presenting and advocating
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`from this weak and very misleading evidence at trial in the face of contradictory testimony from
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`Mr. Ford—the only engineer who testified with firsthand knowledge about the operation of Google
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`Voice from its beginning through the priority date—was unreasonable.
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`In sum, Google’s witnesses and documents confirmed that pre-2013 Google Voice never
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`practiced various limitations in the Outbound Patents, including because
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`Google’s assertion of the prior-use defense for the Outbound Patents to be unreasonable and,
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`accordingly, to render this case exceptional for the purposes of awarding attorney fees.
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`. The Court should accordingly find
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`8
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`Case 6:22-cv-00031-ADA Document 323 Filed 05/29/24 Page 12 of 16
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`B.
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`The Court Should Award Flyp Attorney Fees
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`For the reasons stated above, Google cannot demonstrate a reasonable basis for its assertion
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`of a prior-use defense, and the Court should exercise its discretion and award Flyp attorney fees.
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`Like the analysis for determining whether a case is exceptional, courts use a totality of the
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`circumstances test to evaluate the proper amount of fees. Drop Stop LLC v. Jian Qing Zhu, 757
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`Fed. App’x 994, 998 (Fed. Cir. 2019).
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`Under the totality of the circumstances in this case, the Court should award fees because
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`Google’s unreasonable assertion of the prior-use defense was needlessly cumulative and
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`potentially confusing to the jury. For example, during trial, Google did not deny that Google Voice
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`practiced any limitations from the asserted claims in the Outbound Patents. Tr. at 1174:8-1175:4.
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`Yet Google demanded that the jury be polled on infringement because of its unreasonable prior-
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`use defense, even though there was a separate jury question on prior use. Id. Likewise, Google
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`asserted its Gizmo-based and Google Talk-based theories as obviousness arguments for invalidity
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`but then conflated those systems with the current version of Google Voice by presenting an
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`unreasonable prior-use defense based on this combination of long-abandoned products. Id.
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`at 731:3-731:9, 867:10-14. This needlessly complicated trial, the presentation to the jury, and the
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`jury instructions, not to mention discovery, summary judgment, and post-trial briefing.
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`Google’s assertion of the prior-use defense was also needlessly cumulative. By trial,
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`Google’s only invalidity argument was based upon prior-2013 Google Voice. Never did Flyp argue
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`that pre-2013 Google Voice would not qualify as prior art on the basis that it was not public, or for
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`any other reason that would require Google to avail itself of a prior-use defense instead.
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`Nonetheless, throughout the case, into trial, and through post-trial briefing, Flyp has been forced
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`to conduct discovery, draft briefing, and argue before the Court matters concerning this defense
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`when, in effect, Google was making the same arguments for both. Because the assertion of a
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`Case 6:22-cv-00031-ADA Document 323 Filed 05/29/24 Page 13 of 16
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`
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`section 273 defense is uncommon, Flyp had to dedicate considerable time and expense to
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`researching and briefing the novel issues associated with it. Some of this briefing occurred during
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`trial, when the Court well knows time and resources are precious.
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`Likewise, Google’s assertion of this defense was needlessly confusing to the jury when it
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`offered no practical or legal benefit beyond Google’s invalidity case. Instead, it required the jury
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`to be instructed on another section of the patent code and engage in an additional burden weighing
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`exercise. As the District of Colorado observed, “[p]atent law is complex and not intuitive to the
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`average juror. Parties and counsel have an obligation to refrain from seeking to take advantage of
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`those complexities by employing misleading strategies.” Medtronic Navigation, Inc. v. BrainLAB
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`Medizinische Computersystems Gmbh, 2008 WL 410413, at *9 (D. Col. Feb. 12, 2008). Here,
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`when pre-2013 Google Voice was offered both as prior art and as prior commercial use, and when
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`Google also argued that Google Voice remained unchanged from 2013 to the present day, but also
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`that it did not infringe, the addition of the complexity of a flawed and facially unreasonable prior-
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`use defense was needlessly confusing. The Court should award fees to deter this in the future.
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`Finally, as indicated above, Flyp had to dedicate time and effort to battling Google’s
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`unreasonable defense at strategically disadvantageous times to Flyp. For instance, during trial,
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`Flyp was required to engage in urgent briefing regarding what the proper jury instruction would
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`be on this defense. See Dkt. 285; Dkt. 286. This briefing was entirely Google’s fault because of
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`its misapprehension that it did not carry the burden on the entirety of its proffered defense,
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`including on the abandonment issue. An issue that it suggested it had never considered before
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`trial, despite the fact that Flyp raised it during summary judgment. Dkt. 174 at 10.
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`Given the totality of the circumstances, including the remarkable weaknesses of Google’s
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`prior-use defense as described above, the Court should award Flyp attorney fees to avoid the
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`Case 6:22-cv-00031-ADA Document 323 Filed 05/29/24 Page 14 of 16
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`injustice of Flyp bearing the burden for Google’s unreasonable assertion of the prior-use defense,
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`and to deter such unreasonable assertions in the future.
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`V.
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`CONCLUSION
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`For the reasons expressed above, Flyp respectfully requests this Court hold that Google’s
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`assertion of the prior-use defense was unreasonable and award Flyp its attorney fees in accordance
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`with an accounting of fees and costs to be filed at a time the Court deems appropriate.
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`Case 6:22-cv-00031-ADA Document 323 Filed 05/29/24 Page 15 of 16
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`DATED: May 23, 2024
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`Respectfully submitted,
`
`/s/ Michael A. Bittner
`Thomas M. Melsheimer
`tmelsheimer@winston.com
`M. Brett Johnson
`mbjohnson@winston.com
`Michael A. Bittner
`mbittner@winston.com
`C. Charles Liu
`ccliu@winston.com
`Steven R. Laxton
`slaxton@winston.com
`Jack Myers
`jmyers@winston.com
`WINSTON & STRAWN LLP
`2121 North Pearl Street, Suite 900
`Dallas, TX 75201
`Telephone: (214) 453-6500
`
`Samantha M. Lerner (pro hac vice)
`slerner@winston.com
`WINSTON & STRAWN LLP
`35 W. Wacker Drive, Suite 4100
`Chicago, IL 60601
`Telephone: (312) 558-5600
`
`Matthew R. McCullough
`mrmccullough@winston.com
`WINSTON & STRAWN LLP
`275 Middlefield Road, Suite 205
`Menlo Park, CA 94025
`Telephone: (650) 858-6500
`
`William M. Logan
`wlogan@winston.com
`Evan D. Lewis
`edlewis@winston.com
`WINSTON & STRAWN LLP
`800 Capitol Street, Suite 2400
`Houston, TX 77002
`Telephone: (713) 651-2766
`
`ATTORNEYS FOR PLAINTIFF
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`Case 6:22-cv-00031-ADA Document 323 Filed 05/29/24 Page 16 of 16
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`CERTIFICATE OF SERVICE
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`I hereby certify that a sealed copy of the foregoing document was filed electronically in
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`compliance with Local Rule CV-5. Thereafter, this document was served on all counsel via
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`electronic mail on May 23, 2024.
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`/s/ Michael A. Bittner
`Michael A. Bittner
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`13
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