Case 6:22-cv-00031-ADA Document 347-1 Filed 07/31/24 Page 1 of 30
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`Exhibit 1
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`Exhibit 1
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`Trials@uspto.gov
`Paper 33
`571-272-7822
`Entered: July 26, 2024
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`FLYPSI, INC.,
`Patent Owner.
`_______________
`
`IPR2023-00357
`Patent 11,218,585 B2
`_______________
`
`
`Before ROBERT J. WEINSCHENK, JAMES J. MAYBERRY, and
`MICHAEL T. CYGAN, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
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`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
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`INTRODUCTION
`I.
`A. Background and Summary
`Google LLC (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
`an inter partes review of claims 1–4 (“the challenged claims”) of U.S. Patent
`No. 11,218,585 B2 (Ex. 1001, “the ’585 patent”). Flypsi, Inc. (“Patent
`Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”) to the
`Petition. We instituted an inter partes review of the challenged claims on
`July 31, 2023. Paper 9 (“Dec. on Inst.”), 21. After institution, Patent Owner
`filed a Response (Paper 21, “PO Resp.”) to the Petition, Petitioner filed a
`Reply (Paper 24, “Pet. Reply”) to the Response, and Patent Owner filed a
`Sur-reply (Paper 26, “PO Sur-reply”) to the Reply. We held an oral hearing
`on May 7, 2024, and a transcript of the hearing is included in the record.
`Paper 32 (“Tr.”).
`For the reasons set forth below, Petitioner has shown by a
`preponderance of the evidence that claims 1–4 of the ’585 patent are
`unpatentable.
`B. Real Parties in Interest
`The parties identify themselves as the only real parties in interest.
`Pet. 1; Paper 12, 2.
`C. Related Matters
`The parties indicate that the ’585 patent is the subject of the following
`district court cases: 1) Flypsi, Inc. (d/b/a Flyp) v. Google LLC, No. 6:22-cv-
`00031 (W.D. Tex.); and 2) Flypsi, Inc. (d/b/a Flyp) v. Dialpad, Inc., No.
`6:21-cv-00642 (W.D. Tex.). Pet. 1; Paper 12, 2. The parties also indicate
`that patents related to the ’585 patent are the subject of petitions for inter
`partes review in IPR2022-01048, IPR2022-01049, IPR2022-01050,
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`IPR2022-01051, IPR2023-00358, IPR2023-00359, IPR2023-00360, and
`IPR2023-00361. Pet. 2; Paper 12, 2–3.
`D. The ’585 Patent
`The ’585 patent relates to “providing telephone service by
`transmitting call handling information between a handset and a switch using
`an [Internet Protocol (‘IP’)] channel or similar protocol channel and by
`transmitting a voice call associated with the call handling information
`between the handset and the switch using a voice channel.” Ex. 1001, 1:55–
`64. Figure 3 of the ’585 patent is reproduced below.
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`Id. at Fig. 3. Figure 3 shows server 100 and telephone handset 340. Id. at
`4:27–32. According to the ’585 patent, server 100 and handset 340 may
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`communicate via Internet 316 (i.e., a data channel) and via Public Switched
`Telephone Network (“PSTN”) 310 (i.e., a voice channel). Id. at 4:49–60.
`The ’585 patent explains that handset 340 transmits information to
`server 100 via Internet 316 requesting that one or more secondary telephone
`numbers be associated with the primary telephone number assigned to
`handset 340 at activation. Id. at 5:11–22. To place an outgoing call, handset
`340 transmits information to server 100 via Internet 316 selecting one of the
`aforementioned secondary numbers as the origination number and selecting
`a contact number to be called. Id. at 7:42–58. In response, server 100
`transmits a bridge number to handset 340 via Internet 316. Id. at 7:59–8:2.
`Handset 340 then calls the bridge number via PSTN 310, and switch 110
`connects the outgoing call from handset 340 to the contact number via PSTN
`310. Id. at 8:21–38. Switch 110 sends information to the contact number
`that “causes the secondary telephone number [of handset 340] to be
`displayed as the number from which the call appears to have been placed.”
`Id. at 8:38–42.
`E. Illustrative Claim
`Of the challenged claims, claim 1 is independent and is reproduced
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`below.
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`1. A method of providing telephone service, comprising:
`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;
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`automatically associating a primary telephone number
`and access telephone number pairing with a corresponding
`secondary telephone number and contact telephone number
`pairing in the computer memory;
`receiving, at a 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
`receiving, at the switch, information from the server
`directing the switch to:
`(a) connect the outgoing call to the contact
`telephone number of the secondary telephone number
`and contact telephone number pairing, and
`(b) identify a telephone number from which the
`outgoing call is being made as the secondary telephone
`number.
`Ex. 1001, 10:14–40.
`F. Evidence
`Petitioner submits the following evidence:
`
`Evidence
`Declaration of Dr. Bill Lin (“Lin Declaration”)
`Backhaus, US 2013/0295892 A1, published Nov. 7, 2013
`(“Backhaus”)
`Taylor, US 2009/0052437 A1, published Feb. 26, 2009
`(“Taylor”)
`Saksena, US 2006/0077956 A1, published Apr. 13, 2006
`(“Saksena”)
`
`Exhibit
`No.
`1002
`1005
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`1007
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`1008
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`5
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`Patent Owner submits the Declaration of Dr. Robert Akl. Ex. 2010
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`(“Akl Declaration”).
`G. Asserted Grounds
`Petitioner asserts that the challenged claims are unpatentable on the
`following grounds:
`Claim(s) Challenged
`1, 2, 4
`3
`1, 2, 4
`3
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`Reference(s)/Basis
`35 U.S.C. §
`Backhaus
`102
`Backhaus, Saksena
`103
`Backhaus, Taylor
`103
`Backhaus, Saksena, Taylor
`103
`II. ANALYSIS
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`A. Legal Standards
`A claim is anticipated if each limitation of the claim is disclosed in a
`single prior art reference arranged as in the claim. Net MoneyIN, Inc. v.
`VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). A claim is
`unpatentable as obvious under 35 U.S.C. § 103(a) if the differences between
`the claimed subject matter and the prior art are such that the subject matter
`as a whole would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which the subject matter pertains.
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations,
`including 1) the scope and content of the prior art; 2) any differences
`between the claimed subject matter and the prior art; 3) the level of ordinary
`skill in the art; and 4) any objective indicia of non-obviousness. Graham v.
`John Deere Co., 383 U.S. 1, 17–18 (1966).
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`B. Level of Ordinary Skill in the Art
`Petitioner argues that a person of ordinary skill in the art would have
`had “an undergraduate degree in electrical engineering, computer
`engineering, computer science or a related field along with two years of
`work experience in the field of telecommunication.” Pet. 4–5 (citing
`Ex. 1002 ¶¶ 17–18). Patent Owner does not dispute Petitioner’s description.
`PO Resp. 5. We adopt Petitioner’s description for purposes of this Decision.
`C. Claim Construction
`In an inter partes review proceeding, a patent claim is construed using
`the same standard used in a civil action under 35 U.S.C. § 282(b), including
`construing the claim in accordance with the ordinary and customary
`meaning of the claim as understood by one of ordinary skill in the art and the
`prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b).
`Patent Owner proposes construing the term “channel” in all
`challenged claims to refer to “[a] channel [that] does not have to be fully
`connected on both ends or actually transmitting a particular type of
`information to qualify as a channel.” PO Resp. 6. Petitioner asserts that
`Backhaus teaches transmitting an access telephone number via a data
`channel in two ways. Pet. 22–26. We rely only on the “second way” for
`purposes of this Decision. See Section II.D.3; Pet. 25–26. Patent Owner’s
`proposed construction of the term “channel” does not impact the parties’
`dispute about the “second way” that Backhaus teaches transmitting an access
`telephone number via a data channel. PO Resp. 21–23; PO Sur-reply 11;
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`Tr. 10:2–11, 68:3–24. 1 Therefore, we determine that the term “channel”
`does not require an express construction to resolve the parties’ disputes
`regarding the asserted grounds of unpatentability.
`D. Obviousness of Claims 1, 2, and 4 over Backhaus and Taylor
`Petitioner argues that claims 1, 2, and 4 would have been obvious over
`Backhaus and Taylor. Pet. 8–45, 50–54. For the reasons discussed below,
`Petitioner has shown by a preponderance of the evidence that claims 1, 2,
`and 4 would have been obvious over Backhaus and Taylor.
`1. Overview of Backhaus
`Backhaus describes a system “for providing a second line service to a
`user of Subscriber Telecommunications Device (‘TD’) 110.” Ex. 1005 ¶ 31.
`Backhaus’s Figure 1 is reproduced below.
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`1 Patent Owner argues that we should still address its proposed construction
`of the term “channel” because it “significantly impacts the credibility” of
`Petitioner’s declarant, Dr. Bill Lin. Tr. 68:3–24. We disagree. As discussed
`in more detail below, the portions of the Lin Declaration that we rely on in
`this Decision are credible because those portions are consistent with and
`supported by the other evidence of record. See Section II.G.
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`Id. at Fig. 1. Figure 1 shows system 110 in which “[a] subscriber to a
`second line service (‘SLS’) . . . may receive calls at [subscriber] TD 110 that
`are directed to either of the primary phone number provided by the primary
`service provider or the secondary phone number (‘SLS phone number’)
`provided, serviced and or facilitated by the SLS platform 115.” Id. ¶ 31.
`System 100 also allows subscriber TD 110 to place a call to third party TD
`120A from the SLS phone number. Id. ¶ 58. “For each subscriber to the
`SLS service, a Subscriber Relationship ID Table 310 is . . . maintained” that
`includes “relationship numbers . . . used to facilitate calls between the
`subscriber’s TD 110 . . . and the SLS platform 115.” Id. ¶ 45.
`As an example, “Subscriber #1 associated with subscriber TD 110
`already has mobile phone service via primary service provider 201 using
`mobile phone number 1.408.544.1212” and “subsequently subscribes to an
`SLS service provided by way of SLS platform 115 and is assigned SLS
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`number (i.e., a second line number) 1.770.555.0001.” Id. ¶ 50. “Subscriber
`#1 desires to originate a call to third party associated with 1.305.229.9999
`from his SLS number 1.770.555.0001.” Id. ¶ 58. To do so, subscriber TD
`110 “queries Subscriber Relationship ID Table 315 in local SLS database
`106 and translates the called third party number 1.305.229.9999 to
`relationship number 1.678.222.0001.” Id. ¶ 59.
`“By calling the relationship number . . . , the network 125 routes the
`call to the SLS platform 115 instead of directly to third party TD 120A.” Id.
`“When the SLS platform 115 processes this first leg of the call,” it
`“[q]uer[ies] the Subscriber Relationship ID Table 310 in central SLS
`database 116” and “appl[ies] the following logic: ‘when primary number
`1.408.544.1212 calls relationship number 1.678.222.0001, it is actually SLS
`number 770.555.0001 calling 1.305.229.9999.’” Id. ¶ 60. “[I]n completing
`the second leg of the call from Subscriber #1 to the third party TD 120A, the
`SLS platform 115 may cause the calling number to be reflected as the SLS
`number 1.770.555.0001 instead of the actual primary number of subscriber
`TD 110.” Id.
`2. Overview of Taylor
`Taylor describes “a networked computer telephony system including
`the Internet and the Public Switched Telephone System.” Ex. 1007 ¶ 2.
`Taylor’s Figure 1A is reproduced below.
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`Id. at Fig. 1A. Figure 1A depicts “a typical configuration of a conventional
`computer telephony server operating with a Public Switched Telephone
`Network (PSTN) and/or the Internet.” Id. ¶ 4. Taylor states that “[t]he CT
`50 can be configured to interface via a PSTN interface 52 with an exchange
`12 to receive and process calls pertaining to a predefined set of telephone
`numbers on the PSTN.” Id. ¶ 8.
`3. Claim 1
`Claim 1 recites “[a] method of providing telephone service.”
`Ex. 1001, 10:14. Backhaus teaches a method for routing calls between a
`subscriber TD and a third party TD. Pet. 8–14; Ex. 1005 ¶¶ 9, 30, code (57).
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`Patent Owner does not dispute that the Backhaus and Taylor combination
`teaches the preamble of claim 1. 2
`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, 10:15–18. Backhaus teaches automatically storing
`an association of a primary number and an SLS number (i.e., a secondary
`number) for the subscriber TD in a SLS Master ID Table in a SLS platform.
`Pet. 15–19; Ex. 1005 ¶¶ 31, 33–34, 39–40, 42–44, 60, 75, Fig. 3A.
`Backhaus also teaches that the subscriber TD is a mobile device. Pet. 15;
`Ex. 1005 ¶¶ 31, 33, 50, 81–83. Patent Owner does not dispute that the
`Backhaus and Taylor combination teaches this limitation of claim 1.
`Claim 1 recites “automatically transmitting information that indicates
`an access telephone number to the mobile device via a data channel.”
`Ex. 1001, 10:19–21. Backhaus teaches transmitting a relationship number
`(i.e., an access number) from the SLS platform to the subscriber TD.
`Pet. 25–26; Ex. 1005 ¶¶ 71–74, Fig. 4D. Backhaus also teaches that the SLS
`platform transmits the relationship number to the subscriber TD via a data
`channel, such as an IP channel. Pet. 25–26; Ex. 1005 ¶¶ 71–74.
`Patent Owner argues that Petitioner does not show sufficiently that
`Backhaus teaches transmitting a relationship number to the subscriber TD
`
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`2 Because Petitioner presents evidence that the prior art teaches the
`recitations in the preamble of claim 1, we need not decide whether the
`preamble is limiting.
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`“via a data channel.”3 PO Resp. 21–23; PO Sur-reply 11. Specifically,
`Patent Owner contends that “[t]he fact that some information shared
`between the SLS module and platform may occur via IP and that one piece
`of information shared is a relationship number does not mean that the
`relationship number specifically is transmitted via IP.” PO Resp. 22 (citing
`Ex. 1005 ¶¶ 72–74; Ex. 2010 ¶ 72). According to Patent Owner, a person of
`ordinary skill in the art “would understand that Backhaus’[s] discussion of
`using IP could be referring to other information shared between the SLS
`platform and module.” Id. (citing Ex. 2010 ¶ 72). Patent Owner further
`contends that “Backhaus paragraphs 72 and 73 mention alleged data
`protocols, but never once mention the relationship number,” whereas
`“paragraph 74 describes a new, separate step of transmitting a relationship
`number . . . and never identifies what protocol is used.” PO Sur-reply 11.
`Patent Owner’s argument is unavailing. Backhaus does not merely
`teach transmitting some information via a data channel. Backhaus expressly
`teaches transmitting a relationship number from the SLS platform to the
`subscriber TD via a data channel. Ex. 1005 ¶¶ 71–74, Figure 4D.
`Specifically, Backhaus teaches that the subscriber TD “provide[s] the
`request for the new relationship number, along with the third party number it
`desires to call, to the SLS platform.” Id. ¶ 71. Backhaus teaches that the
`subscriber TD then “obtain[s] a relationship number” from the SLS platform
`“via a session-based protocol such as, but not limited to, an unstructured
`
`3 Petitioner asserts that Backhaus teaches transmitting a relationship number
`to the subscriber TD “via a data channel” in two ways. Pet. 22–26. We rely
`only on the “second way” for purposes of this Decision. Id. at 25–26. Thus,
`we do not address Patent Owner’s arguments regarding the “first way.” PO
`Resp. 15–21, 23–28; PO Sur-reply 5–13.
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`supplementary services data (‘USSD’) protocol.” Id. ¶ 72 (emphasis added).
`Backhaus explains that the USSD protocol is just an example and “an IP-
`based interaction . . . may be used.”4 Id. ¶ 73. Backhaus also explains that
`using a USSD or IP channel “may minimize temporal delays in allocating
`and acquiring relationship numbers between an SLS module 105 and an
`SLS platform 115.” Id. (emphasis added). Thus, Backhaus specifically
`identifies a data channel for transmitting a relationship number from the SLS
`platform to the subscriber TD.
`Patent Owner also argues that Petitioner’s “first way” that Backhaus
`teaches transmitting a relationship number via a data channel includes
`“inconsistent positions,” which “undermines all of [Petitioner’s] arguments
`and specifically undermines the expert’s credibility.” PO Resp. 23–28;
`PO Sur-reply 11–13. We disagree. Petitioner’s theory regarding the
`“second way” that Backhaus teaches transmitting a relationship number via
`a data channel is credible because it is consistent with and supported by
`Backhaus’s teachings. See Pet. 25–26; Ex. 1002 ¶ 70; Ex. 1005 ¶¶ 71–74;
`Section II.G.
`Claim 1 recites “automatically associating a primary telephone
`number and access telephone number pairing with a corresponding
`secondary telephone number and contact telephone number pairing in the
`computer memory.” Ex. 1001, 10:22–25. Backhaus teaches pairing a
`primary number with a relationship number and pairing a SLS number with
`a third party number (i.e., a contact number). Pet. 27–29; Ex. 1005 ¶¶ 49,
`
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`4 The evidence of record indicates, and Patent Owner does not dispute, that
`USSD and IP channels are data channels. Ex. 1002 ¶ 70; see PO Resp. 21–
`23; PO Sur-reply 11.
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`52–53, 60, 70, Fig. 4C. Backhaus also teaches associating the primary and
`relationship number pairing with the SLS and third party number pairing.
`Pet. 29–31; Ex. 1005 ¶¶ 10, 13, 15, 46, 52–53, 59, 60. Patent Owner does
`not dispute that the Backhaus and Taylor combination teaches this limitation
`of claim 1.
`We refer to the next three limitations of claim 1 collectively as “the
`switch limitations.” Claim 1 recites “receiving, at a switch associated with
`the server, an outgoing call from the mobile device to the access telephone
`number via a second channel.” Ex. 1001, 10:26–28. Backhaus teaches that
`the subscriber TD calls the relationship number, and a PSTN routes the call
`to the SLS platform. Pet. 32–34; Ex. 1005 ¶¶ 32, 49, 59. Taylor teaches a
`PSTN interface (i.e., a switch) associated with a server for receiving calls on
`a PSTN. Pet. 50–52; Ex. 1007 ¶¶ 4, 8 (“The CT server 50 can be configured
`to interface via a PSTN interface 52 with an exchange 12 to receive . . . calls
`. . . on the PSTN.”), Fig. 1A. As discussed in more detail below regarding
`the reason to combine, it would have been obvious to a person of ordinary
`skill in the art to combine the teachings of Backhaus and Taylor so that
`Backhaus’s SLS platform communicates with the PSTN using Taylor’s
`PSTN interface. Pet. 52–54; Ex. 1002 ¶ 97; see Section II.D.6. Patent
`Owner argues that Petitioner does not show sufficiently that the Backhaus
`and Taylor combination teaches this limitation of claim 1. PO Resp. 35–38;
`PO Sur-reply 13–15. We address Patent Owner’s arguments below.
`Claim 1 recites “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.” Ex. 1001, 10:29–32. Backhaus
`teaches that the SLS platform receives information indicating that the
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`outgoing call is being made to the relationship number from the primary
`number. Pet. 38–40; Ex. 1005 ¶¶ 49, 59–60, 69–70. Taylor teaches that its
`PSTN interface provides information to a server pertaining to a telephone
`number on a PSTN. Pet. 50–52; Ex. 1007 ¶¶ 4, 8 (“The CT server 50 can be
`configured to interface via a PSTN interface 52 with an exchange 12 to
`receive and process calls pertaining to . . . telephone numbers on the
`PSTN.”); Fig. 1A. As discussed in more detail below regarding the reason
`to combine, it would have been obvious to a person of ordinary skill in the
`art to combine the teachings of Backhaus and Taylor so that Backhaus’s SLS
`platform communicates with the PSTN using Taylor’s PSTN interface. Pet.
`52–54; Ex. 1002 ¶ 97; see Section II.D.6. Patent Owner argues that
`Petitioner does not show sufficiently that the Backhaus and Taylor
`combination teaches this limitation of claim 1. PO Resp. 35–38; PO Sur-
`reply 13–15. We address Patent Owner’s arguments below.
`Claim 1 recites “receiving, at the switch, information from the server
`directing the switch to: (a) connect the outgoing call to the contact telephone
`number of the secondary telephone number and contact telephone number
`pairing, and (b) identify a telephone number from which the outgoing call is
`being made as the secondary telephone number.” Ex. 1001, 10:33–40.
`Backhaus teaches that the SLS platform provides information for connecting
`the outgoing call to the third party number and identifying the outgoing call
`as made from the SLS number. Pet. 40–44; Ex. 1005 ¶¶ 60, 70. Taylor
`teaches that a server communicates information to a PSTN using the PSTN
`interface. Pet. 50–52; Ex. 1007 ¶ 4 (“External digital communication
`systems typically communicate with the PSTN by interfacing with an
`exchange such as 12”), ¶ 8, Fig. 1A. As discussed in more detail below
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`regarding the reason to combine, it would have been obvious to a person of
`ordinary skill in the art to combine the teachings of Backhaus and Taylor so
`that Backhaus’s SLS platform communicates with the PSTN using Taylor’s
`PSTN interface. Pet. 52–54; Ex. 1002 ¶ 97; see Section II.D.6. Patent
`Owner argues that Petitioner does not show sufficiently that the Backhaus
`and Taylor combination teaches this limitation of claim 1. PO Resp. 35–38;
`PO Sur-reply 13–15. We address Patent Owner’s arguments below.
`Patent Owner presents several arguments regarding the switch
`limitations. First, Patent Owner argues that Petitioner does not show
`sufficiently that Taylor’s PSTN interface is a switch. PO Resp. 35–37; PO
`Sur-reply 14. Specifically, Patent Owner contends that Taylor identifies
`exchange 12 in Figure 1A as a switch, not PSTN interface 52. PO Resp. 35–
`36 (citing Ex. 1007 ¶¶ 4, 8, Fig. 1A; Ex. 2010 ¶¶ 98–99); PO Sur-reply 14.
`Patent Owner also contends that even if Petitioner is correct that Taylor’s
`PSTN interface is similar to the claimed switch, “similarity is not enough.”
`PO Resp. 36–37 (citing Pet. 52); PO Sur-reply 14.
`Patent Owner’s argument is unavailing. Taylor’s labeling of another
`element in Figure 1A as a switch does not preclude Taylor’s PSTN interface
`from teaching the switch recited in claim 1. See Adasa Inc. v. Avery
`Dennison Corp., 55 F.4th 900, 910 (Fed. Cir. 2022) (A “reference need not
`disclose the [claimed] elements in the very same terms used by the patent.”);
`In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (“this is not an ‘ipsissimis
`verbis’ test”). As discussed above, the evidence of record indicates that
`Taylor’s PSTN interface, when implemented in Backhaus’s system,
`performs the three steps recited in the switch limitations. Ex. 1002 ¶¶ 95–
`99; Ex. 1007 ¶¶ 4, 8, Fig. 1A. And Patent Owner does not dispute that
`
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`Taylor’s PSTN interface performs those three steps in the proposed
`combination. See PO Resp. 34–38; PO Sur-reply 13–15.
`Further, in this case, Patent Owner does not propose an express
`construction for the term “switch.” See PO Resp. 6–13, 34–38; PO Sur-
`reply 13–15; Tr. 65:16–67:3. But Petitioner points out that, in another
`proceeding involving related patents, Patent Owner stated that “the claims
`describe the switch in the same way as the extrinsic evidence and the
`specification: as an element in the communications networks that facilitates
`connections between transmitters and receivers.” Pet. 52; Ex. 1009, 22.
`Patent Owner’s interpretation is consistent with the written description of the
`’585 patent and the testimony of Patent Owner’s declarant, Dr. Robert Akl,
`in this case. See Pet. 52; Pet. Reply 18; Ex. 1001, 2:19–21. 6:5–7, 6:16–18;
`Ex. 1102, 89:6–19; Tr. 120:10–121:17. And, as discussed above, Taylor
`teaches that its PSTN interface facilitates a connection between a server and
`a PSTN. Pet. 51–52; Pet. Reply 18; Ex. 1007 ¶ 8 (“The CT server 50 can be
`configured to interface via a PSTN interface 52 with an exchange 12 to
`receive and process calls pertaining to a predefined set of telephone numbers
`on the PSTN.”). Thus, the evidence of record indicates that Taylor’s PSTN
`interface satisfies Patent Owner’s interpretation of the term “switch.”
`According to Patent Owner, Petitioner’s reliance on Patent Owner’s
`interpretation from the other proceeding is improper because it is “untimely”
`and “plainly overbroad.” PO Sur-reply 14; Tr. 64:18–65:3. We disagree.
`Petitioner relied on Patent Owner’s interpretation in the Petition, so it is not
`a new theory presented for the first time in the Reply. Pet. 35 n.7, 52. In
`addition, Patent Owner cited specific evidence to support its interpretation of
`the term “switch” in the other proceeding, and Patent Owner does not cite
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`any evidence in this case indicating that it is overbroad or otherwise
`improper. See PO Sur-reply 14; Ex. 1009, 20–22.
`Second, Patent Owner argues that Petitioner does not show
`sufficiently that Taylor teaches using the same switch for the switch
`limitations in claim 1. PO Resp. 37–38; PO Sur-reply 14–15. In particular,
`Patent Owner contends that Petitioner “does not even attempt to show that it
`would have been obvious to use the same switch for the functionalities
`listed” in the switch limitations. PO Resp. 37; see PO Sur-reply 14–15.
`Further, according to Patent Owner, “Taylor expressly depicts that a network
`consists of multiple switches, such as the five shown in Figure 1A.”
`PO Resp. 37.
`Patent Owner’s argument is unavailing. Taylor teaches one PSTN
`interface that connects a server with a PSTN. Ex. 1007 ¶ 8 (“a PSTN
`interface 52”), Fig. 1A. And Petitioner presents evidence that a person of
`ordinary skill in the art “would have been motivated to include a PSTN
`interface similar to that discussed in Taylor when implementing Backhaus’s
`telephony service system.” Pet. 52 (emphasis added); see also id. at 53
`(“motivated to connect SLS platform 115 with the PSTN and to also include
`a PSTN interface”) (emphasis added); Ex. 1002 ¶ 97 (“motivated to include
`a PSTN interface”) (emphasis added). Thus, the evidence of record shows
`that a person of ordinary skill in the art would have implemented a single
`PSTN interface from Taylor to facilitate a connection between Backhaus’s
`SLS platform and the PSTN. Pet. 52–54; Ex. 1002 ¶¶ 97–99. As discussed
`above, that one PSTN interface, when implemented in Backhaus’s system,
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`performs the three steps recited in the switch limitations.5 Ex. 1002 ¶¶ 95–
`99; Ex. 1007 ¶¶ 4, 8, Fig. 1A.
`Third, Patent Owner argues that we should not consider the Backhaus
`and Taylor combination because it is “irrelevant.” PO Sur-reply 14–15;
`Tr. 60:1–12, 64:14–17. Specifically, Patent Owner contends that the
`Backhaus and Taylor combination is “relevant only if the switch must be
`‘separate from the PSTN,’” which “Patent Owner has not argued.” PO Sur-
`reply 14–15; Tr. 60:1–12, 64:14–17. Patent Owner’s argument is
`unavailing. As discussed above, the evidence of record shows that the
`Backhaus and Taylor combination includes one PSTN interface that
`performs the three steps recited in the switch limitations. Ex. 1002 ¶¶ 95–
`99; Ex. 1007 ¶¶ 4, 8, Fig. 1A. Even if Patent Owner is correct that Petitioner
`relies primarily on the Backhaus and Taylor combination to teach a switch
`separate from the PSTN, that does not detract from the evidence showing
`that the combination includes one switch for performing the three steps
`recited in the switch limitations of claim 1.
`For the foregoing reasons, on this record, Petitioner shows sufficiently
`that the Backhaus and Taylor combination teaches the limitations of claim 1.
`4. Claim 2
`Claim 2 depends from claim 1, and recites “wherein the data channel
`is an Internet protocol (IP) channel.” Ex. 1001, 10:41–42. Backhaus
`teaches that the SLS platform transmits the relationship number to the
`
`5 Even if Patent Owner is correct that the PSTN uses additional switches to
`complete the outgoing call, the parties agree that claim 1 does not preclude
`the use of such additional switches. Tr. 12:13–21, 47:1–13 (“Every call is
`going to go through multiple switches.”). Claim 1 only requires that the
`same switch perform the specific steps recited in the switch limitations. Id.
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`subscriber TD via an “IP-based interaction” (i.e., an IP channel). Pet. 25–
`26, 44; Ex. 1005 ¶ 73. Other than the arguments discussed above for claim
`1, Patent Owner does not dispute that the Backhaus and Taylor combination
`teaches this limitation of claim 2.
`5. Claim 4
`Claim 4 depends from claim 1, and recites “wherein the second
`channel is not an Internet Protocol (IP) channel.” Ex. 1001, 10:45–46.
`Backhaus teaches that the subscriber TD calls the relationship number, and a
`PSTN routes the call to the SLS platform using signaling system seven
`(“SS7”) protocol, which is not an IP channel. Pet. 32–34, 45; Ex. 1005
`¶¶ 32, 49, 59. Other than the arguments discussed above for claim 1, Patent
`Owne
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