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`Exhibit 3
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`Exhibit 3
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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
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`GOOGLE LLC,
`Petitioner,
`v.
`FLYPSI, INC. (D/B/A FLYP),
`Patent Owner.
`
`IPR2023-00359
`Patent 11,012,554 B2
`
`Before ROBERT J. WEINSCHENK, JAMES J. MAYBERRY, and
`MICHAEL T. CYGAN, Administrative Patent Judges.
`MAYBERRY, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
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`IPR2023-00359
`Patent 11,012,554 B2
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`INTRODUCTION
`I.
`Google LLC (“Petitioner”) filed a Petition requesting inter partes
`review of claims 1–4 (the “Challenged Claims”) of U.S. Patent
`No. 11,012,554 B2 (Ex. 1001, the “’554 patent”). Paper 1 (“Pet.”), 1.
`Flypsi, Inc. (“Patent Owner”) owns the ’554 patent. Paper 12, 2.
`For the reasons provided below, we conclude that Petitioner has
`proven, by a preponderance of the evidence, that all of the Challenged
`Claims are unpatentable.
`Procedural History
`A.
`Upon review of the Petition, Preliminary Patent Owner Response
`(Paper 6), Petitioner’s Preliminary Reply (Paper 7), and Patent Owner’s
`Preliminary Sur-reply (Paper 8), and evidence in the record, we instituted an
`inter partes review proceeding on all challenges in the Petition. Paper 9
`(“Inst. Dec.”); see 37 C.F.R. § 42.108(a) (“When instituting inter partes
`review, the Board will authorize the review to proceed on all of the
`challenged claims and on all grounds of unpatentability asserted for each
`claim.”).
`Patent Owner filed a Response to the Petition. Paper 21 (“PO
`Resp.”). Petitioner filed a Reply to the Patent Owner Response. Paper 24
`(“Pet. Reply”). Patent Owner filed a Sur-reply to the Reply. Paper 26 (“PO
`Sur-reply”).
`An oral hearing was held on May 7, 2024, and a transcript is included
`in the record. Paper 32 (“Tr.”).
`Real Parties-in-Interest
`B.
`Petitioner identifies Google LLC as the real party-in-interest. Pet. 1.
`Patent Owner identifies itself as the real party-in-interest. Paper 12, 2.
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`IPR2023-00359
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`Related Matters
`C.
`The parties each identify the following litigations as matters related to
`the ’554 patent: Flypsi, Inc., (d/b/a Flyp) v. Google, LLC, No. 6:22-cv-
`00031 (W.D. Tex.); Flypsi, Inc. (d/b/a Flyp) v. Dialpad, Inc., No. 6:21-cv-
`00642 (W.D. Tex.). The parties also indicate that patents related to the
`’554 patent are the subject of petitions for inter partes review in
`IPR2022-01048, IPR2022-01049, IPR2022-01050, IPR2022-01051,
`IPR2023-00357, IPR2023-00358, IPR2023-00360, and IPR2023-00361.
`Pet. 2; Paper 12, 2–3.
`The ’554 Patent
`D.
`The ’554 patent, titled “Telephone Network System and Method,”
`issued May 18, 2021, from application US 17/039,566. Ex. 1001,
`codes (54), (45), (21). The ’554 patent ultimately claims priority to
`application, US 13/944,853, filed on July 17, 2013. Id. at code (60).
`The ’554 patent relates to “[s]ystems for and methods of delivering
`telephone calls using the combination of a data channel and a voice
`channel.” Ex. 1001, Abstract. “A data channel connection with the
`telephone handset may provide pre-call information used to set up incoming
`and outgoing calls which are ultimately connected using a voice channel,”
`and “[u]se of the pre-call information may permit the same handset to be
`associated with multiple secondary telephone numbers from which calls
`appear to have been made and to which calls appear to have been placed.”
`Id.
`
`The ’554 patent “permits the user to select one or more secondary
`telephone numbers to be referenced to a primary telephone number.”
`Ex. 1001, 5:8–13. A “bridge telephone number” may be “assign[ed] . . . to
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`IPR2023-00359
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`be used to connect the call from the handset 340 to the switch 110 and send
`pre-call information including the bridge telephone number to the handset
`via the data channel.” Id. at 7:61–65. “The bridge telephone number may
`be associated with the switch 110, and calls to the bridge telephone number
`may be automatically routed to this switch.” Id. at 7:66–8:1. The bridge
`telephone number is associated “with the primary telephone number for the
`handset 340, the secondary telephone number selected for the call, and the
`contact telephone number to be called.” Id. at 8:4–7. The ’554 patent
`allows “the secondary telephone number to be displayed as the number from
`which the call appears to have been placed.” Id. at 8:35–43.
`Figure 3, reproduced below, illustrates “data channel and voice
`channel connections used to provide telephone service.” Ex. 1001, 3:62–64.
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`As shown, an “incoming call is routed from the caller’s telephone to
`the PSTN 310,” and “over the PSTN 310 to the switch 110.” Ex. 1001,
`6:1–3. Then, “call Manager 104 may assign or look up a bridge telephone
`number to be used for completion of the call,” and the “bridge telephone
`number may be associated with the switch 110, and calls to the bridge
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`telephone number may be automatically routed to this switch.” Id.
`at 6:10–15. Call information, including “the assigned/looked up bridge
`telephone number” is transmitted “via the data channel connection, i.e., over
`the Internet 316 and the Mobile Data Network 348.” Id. at 6:44–48. The
`’554 patent differentiates between “IP governed communications . . .
`conducted over a ‘data channel,’” and “CDMA, GSM or like governed
`communications, when used to carry voice information . . . conducted over a
`‘voice channel.’” Id. at 4:46–57.
`Challenged Claims
`E.
`The Petition challenges claims 1–4. Pet. 3–4. Claim 1 is the sole
`independent claim, which we reproduce below.
`1. A method of providing telephone service, comprising:
`automatically storing electronic information that indicates
`an association of a secondary telephone number and a primary
`telephone number with a mobile device in a computer memory
`associated with a server;
`automatically transmitting information that indicates an
`access telephone number to the mobile device via a data channel;
`automatically associating the telephone access number
`with a switch associated with the server;
`receiving, at the switch associated with the server, an
`outgoing call from the mobile device to the access telephone
`number via a second channel;
`receiving, at the server, information from the switch
`indicating the outgoing call is being made to the access telephone
`number from the primary telephone number; and
`receiving, at the switch, information from the server
`directing the switch to:
`(a) connect the outgoing call to a contact telephone
`number indicated by the mobile device, and
`(b) identify a telephone number from which the
`outgoing call is being made as the secondary telephone
`number.
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`35 U.S.C. §
`1021
`103
`103
`103
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`References/Basis
`Backhaus2
`Backhaus, Saksena3
`Backhaus, Taylor4
`Backhaus, Saksena, Taylor
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`IPR2023-00359
`Patent 11,012,554 B2
`Ex. 1001, 10:10–33.
`Prior Art and Asserted Grounds
`F.
`Petitioner asserts that the Challenged Claims are unpatentable based
`on four grounds:
`Claims Challenged
`1, 2, 4
`3
`1, 2, 4
`3
`Pet. 3–4.
`Petitioner also relies on the declaration testimony of Dr. Lin.
`Ex. 1002; see also Ex. 1003 (providing Dr. Lin’s Curriculum Vitae). Patent
`Owner’s relies on the declaration testimony of Dr. Akl to support its
`responsive arguments. Ex. 2010.
`The following subsections provide brief descriptions of the asserted
`prior art references.
`Backhaus (Ex. 1005)
`1.
`Backhaus, titled “System and Method for Provision of a Second Line
`Service to a Telecommunications Device Using Mixed Protocols,” published
`November 7, 2013, from application US 13/920,056, filed June 17, 2013.
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 296–07 (2011), took effect on September 16, 2011. The changes to
`35 U.S.C. §§ 102 and 103 in the AIA do not apply to any patent application
`filed before March 16, 2013. Because the earliest possible priority date for
`the ’554 patent is after March 16, 2013, we refer to the AIA version of the
`statute.
`2 US 2013/0295892; published Nov. 7, 2013 (Ex. 1005, “Backhaus”).
`3 US 2006/0077956; published Apr. 13, 2006 (Ex. 1008, “Saksena”).
`4 US 2009/0052437; published Feb. 26, 2009 (Ex. 1007, “Taylor”).
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`Ex. 1005, codes (54), (43), (21), (22). The application claims priority to a
`parent application, US 13/466,074, filed May 7, 2012, and to a provisional
`application, US 61/660,772, filed June 17, 2012. Id. at codes (63), (60).
`Backhaus relates generally to “routing calls between a third party
`telecommunications device (‘TD) and a subscriber TD associated with a
`primary service and a second line service (“SLS”).” Ex. 1005, code (57)
`(Abstract). We reproduce Backhaus’s Figure 1, below, as annotated by
`Petitioner.
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`Pet. 10. Backhaus’s Figure 1 depicts “a system for providing a second line
`service . . . to a user of telecommunications device,” with Petitioner
`annotating the figure by coloring sections of the system. Id.; Ex. 1005 ¶ 17.
`A subscriber TD 110 (in green in the figure above) is associated with a
`primary phone number provided by a telephone service provider and a
`secondary phone number provided by SLS platform 115. Ex. 1005 ¶ 32.
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`In operation, calls placed to the primary or secondary phone number
`from third party TD 120 (in blue in the figure above) to subscriber TD 110
`are routed through communications network 125 (in yellow in the figure
`above), for example, a cellular network, PSTN, cable network, or the
`Internet. Ex. 1005 ¶ 32. A call made to the primary phone number is routed
`directly to subscriber TD 110. Id. ¶ 33. A call made to the secondary, or
`SLS, number is routed to SLS platform 115 (red in the figure above). At
`SLS platform 115, redirection module 117 queries central SLS database 116
`to determine the subscriber TD associated with the secondary phone number
`called by the third party. Once this determination is made, redirection
`module 117 modifies the call data to reflect its identification as a call for the
`second line number and then makes the call available at the primary number
`associated with subscriber TD 110 associated with the called secondary
`phone number.
`Saksena (Ex. 1008)
`2.
`Saksena, titled “Common Telephony Services to Multiple Devices
`Associated with Multiple Networks,” published April 13, 2006, from
`application US 10/961,387, filed October 8, 2004. Ex. 1008, codes (54),
`(43), (21), (22). Saksena “relates to common telephony services to multiple
`devices associated with multiple networks.” Id. ¶ 1. Relevant to this
`proceeding, Saksena discloses CDMA and GSM as standard forms of
`cellular communication. See, e.g., Ex. 1008 ¶ 80 (“The networks 110c and
`110e are cellular phone networks that use cellular phone technology (e.g.,
`based on a CDMA standard, based on a GSM standard) to manage and route
`calls.”).
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`Taylor (Ex. 1007)
`3.
`Taylor, titled “System and Method for Dynamic Telephony Resource
`Allocation Between Premise and Hosted Facilities,” published February 26,
`2009 from application US 12/195,298, filed August 20, 2008. Ex. 1007,
`codes (54), (43), (21), (22). The application claims priority to a provisional
`application, US 60/957,151, filed August 12, 2007. Id. at code (60).
`Taylor “relates to telecommunication and a networked computer
`telephony system including the Internet and the Public Switched Telephone
`System, and more particularly to user-configurable allocation of telephony
`resources between a hosted facility and a subscriber’s premise.” Ex. 1007
`¶ 2. Relevant to this proceeding, Taylor discloses PSTN Interface 52, which
`allows Taylor’s Computer Telephony server 50 to interface with a public
`switched telephone network through switch 12. Id. ¶ 8.
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`II. ANALYSIS OF PETITIONER’S CHALLENGES
`Applicable Law
`A.
`In inter partes reviews, a petitioner bears the burden of proving
`unpatentability of the challenged claims, and the burden of persuasion never
`shifts to the patent owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail in this proceeding,
`Petitioner must support its challenge by a preponderance of the evidence.
`35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). Accordingly, all of our findings
`and conclusions are based on a preponderance of the evidence standard.
`Petitioner’s asserted grounds of unpatentability are based on
`anticipation under 35 U.S.C. § 102 and on obviousness under 35 U.S.C.
`§ 103. A “prior art reference—in order to anticipate under 35 U.S.C.
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`§ 102—must not only disclose all elements of the claim within the four
`corners of the document, but must also disclose those elements ‘arranged as
`in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369
`(Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542,
`1548 (Fed. Cir. 1983)).
`With respect to obviousness under 35 U.S.C. § 103,
`[a] patent for a claimed invention may not be obtained,
`notwithstanding that the claimed invention is not identically
`disclosed as set forth in section 102, if the differences between
`the claimed invention and the prior art are such that the claimed
`invention as a whole would have been obvious before the
`effective filing date of the claimed invention to a person having
`ordinary skill in the art to which the claimed invention pertains.
`Patentability shall not be negated by the manner in which the
`invention was made.
`35 U.S.C. § 103 (2011); see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art; (3)
`the level of ordinary skill in the art; and (4) when available, objective
`evidence, such as commercial success, long felt but unsolved needs, and
`failure of others. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); see
`KSR Int’l Co., 550 U.S. at 407 (“While the sequence of these questions
`might be reordered in any particular case, the [Graham] factors continue to
`define the inquiry that controls.”). The Court in Graham explained that
`these factual inquiries promote “uniformity and definiteness,” for “[w]hat is
`obvious is not a question upon which there is likely to be uniformity of
`thought in every given factual context.” 383 U.S. at 18.
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`The Supreme Court made clear that we apply “an expansive and
`flexible approach” to the question of obviousness. KSR Int’l Co., 550 U.S.
`at 415. Whether a patent claiming the combination of prior art elements
`would have been obvious is determined by “whether the improvement is
`more than the predictable use of prior art elements according to their
`established functions.” Id. at 417. To support this conclusion, however, it is
`not enough to show merely that the prior art includes separate references
`covering each separate limitation in a challenged claim. Unigene Labs., Inc.
`v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness
`additionally requires that a person of ordinary skill at the time of the
`invention “would have selected and combined those prior art elements in the
`normal course of research and development to yield the claimed invention.”
`Id.
`
`“[O]bviousness must be determined in light of all the facts, and . . . a
`given course of action often has simultaneous advantages and disadvantages,
`and this does not necessarily obviate motivation to combine” teachings from
`multiple references. Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165
`(Fed. Cir. 2006) (emphasis added); see also PAR Pharm., Inc. v. TWI
`Pharms., Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014) (“The presence or
`absence of a motivation to combine references in an obviousness
`determination is a pure question of fact.”). As a factfinder, we also must be
`aware “of the distortion caused by hindsight bias and must be cautious of
`arguments reliant upon ex post reasoning.” KSR Int’l Co., 550 U.S. at 421.
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`Level of Ordinary Skill in the Art
`B.
`The level of skill in the art is “a prism or lens” through which we view
`the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d
`1350, 1355 (Fed. Cir. 2001). Petitioner contends that
`A person of ordinary skill in the art . . . at the time of the alleged
`invention of the ’554 patent would have had an undergraduate
`degree
`in electrical engineering, computer engineering,
`computer science or a related field along with two years of work
`experience in the field of telecommunication . . . More education
`can supplement practical experience and vice versa.
`Pet. 4–5 (referencing Ex. 1002 ¶¶ 17–18). Patent Owner does not dispute
`the level of ordinary skill in the art. PO Resp. 5.
`For the purposes of this Decision, we apply Petitioner’s undisputed
`definition of the level of ordinary skill in the art. We find that this definition
`is consistent with the prior art of record and the skill reflected in the
`Specification of the ’554 patent.
`C. Claim Construction
`In inter partes reviews, we interpret a claim “using the same
`claim construction standard that would be used to construe the claim in a
`civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under this
`standard, we construe the claim “in accordance with the ordinary and
`customary meaning of such claim as understood by one of ordinary skill in
`the art and the prosecution history pertaining to the patent.” Id.
`Petitioner states that “the Board need not construe any terms of the
`challenged claims to resolve the underlying controversy.” Pet. 8. Patent
`Owner 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
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`channel.” PO Resp. 6. Petitioner asserts that Backhaus teaches transmitting
`an access telephone number via a data channel in two ways. Pet. 22–26. As
`will be evident from our analysis below, we rely only on the “second way”
`for purposes of this Decision. 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. 21–22; Pet. Reply 3 (“Flyp does not even allege that its
`construction is relevant to the ‘second way’ the Petition addresses limitation
`[1.b].”); PO Sur-reply 11; Tr. 10:2–11, 68:3–24.5 Therefore, we determine
`that the term “channel” does not require an express construction to resolve
`the parties’ disputes regarding the asserted grounds of unpatentability. See
`Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The
`Board is required to construe ‘only those terms that . . . are in controversy,
`and only to the extent necessary to resolve the controversy.’”) (quoting Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`Also, we determine that we need not expressly construe any other
`claim terms to resolve the parties’ disputes. To the extent that the scope of
`any particular claim term requires discussion, however, we provide it in our
`assessment of the challenges, which we turn to next.
`
`
`5 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; see PO Sur-reply 5, n.1.
`We disagree. We address the credibility of testimony at issue in our
`analyses in the individual analyses. We address Patent Owner’s argument
`about Dr. Lin’s declaration testimony in the subsection immediately below.
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`D. Dr. Lin’s Testimony
`Patent Owner argues that Dr. Lin’s declaration testimony should be
`disregarded, because it “is virtually identical to the Petition, highly
`conclusory, internally contradictory, and the expert could not explain his
`opinions at deposition.” PO Resp. 38–39 (citing Xerox Corp. v. Bytemark,
`Inc., IPR2022-00624, Paper 9 (PTAB Aug. 24, 2022) (precedential)
`(“Xerox”)). Patent Owner argues that “[t]he declaration does not contain
`any statement of the legal standards the expert understood or was applying,
`such as standards relating to defining the person of ordinary skill in the art,
`anticipation, or obviousness.” Id. at 39. Patent Owner adds that “[t]he
`expert could not identify a single standard that he applied in his analysis.”
`Id. Patent Owner concludes that “[t]hus, the standards that formed the basis
`of Dr. Lin’s opinion are a complete mystery, rendering his declaration
`conclusory and unreliable.” Id. at 40.
`Patent Owner also argues that “the declaration fails to explain critical
`points and contains contradictory positions.” PO Resp. 40; see id. at 40–47
`(providing examples).
` Patent Owner’s arguments are unavailing to the extent that they
`suggest that we categorially disregard Dr. Lin’s declaration. As a general
`point, our precedential decision in Xerox does not provide a blank
`condemnation of declaration testimony that is identical or virtually identical
`to language in a paper. Xerox found that the “cited declaration testimony is
`conclusory and unsupported, adds little to the conclusory assertion for which
`it is offered to support, and is entitled to little weight.” Xerox at 15; see also
`37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the
`underlying facts or data on which the opinion is based is entitled to little or
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`no weight.”). Here, Dr. Lin cites to evidence to support certain testimony.
`See, e.g., Ex. 1003 ¶ 73 (citing to Ex. 1007 and Ex. 1011).
`Also, we do not rely on the Lin Declaration as evidence of any legal
`standard or for Dr. Lin’s legal conclusions. Rather, we rely on the Lin
`Declaration to support our factual determinations regarding the teachings of
`Backhaus, Saksena, and Taylor, as well as why and how a person of
`ordinary skill in the art would have combined those teachings.
`Finally, Patent Owner’s arguments go to the weight of Dr. Lin’s
`testimony. We assess the appropriate weight to give the testimony in our
`analyses below.
`E. Ground 3: Claims 1, 2, and 4 as Obvious over Backhaus and
`Taylor
`Petitioner contends that the combined teachings of Backhaus and
`Taylor renders obvious each limitation of claims 1, 2, and 4. Pet. 9–42,
`47–51. We turn our analysis to the scope and content of the prior art and
`any differences between the prior art and the subject matter of independent
`claim 1, and dependent claims 2 and 4, on a limitation-by-limitation basis.
`Our analysis of claim 1 includes Petitioner’s reasoning for combining the
`teachings of Backhaus and Taylor.
`Independent claim 1
`1.
`Preamble
`a)
`The preamble of claim 1 recites “[a] method for providing telephone
`service.” Ex. 1001, 10:10. Petitioner contends that, “[t]o the extent that the
`preamble of claim 1 is limiting, Backhaus discloses” the subject matter.
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`Pet. 9 (referencing Ex. 1002 ¶¶ 58–63). 6 Specifically, Petitioner contends
`that Backhaus discloses a second line service to a subscriber with a
`telecommunications device. Id.; see also id. at 10 (providing an annotated
`version of Backhaus’s Figure 1, which is an exemplary telephone service
`system); id. at 10–15 (describing the structure and operation of Backhaus’s
`system, and referencing Ex. 1005 ¶¶ 3–11, 31, 33–36, 52–57, 59–139;
`Ex. 1002 ¶¶ 51–57). Petitioner also contends that “Taylor is directed to
`providing telephone services through communication networks.” Id. at 47
`(referencing Ex. 1007 ¶¶ 4, 8).
`Upon review of the information in the Petition and corresponding
`evidence, we find, on the complete trial record, that Petitioner has proven,
`by a preponderance of the evidence, that the combination of Backhaus and
`Taylor teaches or suggests the subject matter of the preamble. In view of
`this finding, we need not resolve whether the preamble is limiting.
`Patent Owner does not dispute Petitioner’s contentions with respect to
`the preamble.
`
`Limitation 1.a
`b)
`Claim 1 recites “automatically storing electronic information that
`indicates an association of a secondary telephone number and a primary
`telephone number with a mobile device in a computer memory associated
`
`
`6 Petitioner relies on its contentions with respect to Ground 1 for how
`Backhaus teaches or suggests the subject matter of claim 1, except for the
`switch limitations. See Pet. 47. Similarly, Patent Owner’s arguments with
`respect to Ground 3 are limited to Taylor’s teachings. See PO Resp. 17–19.
`As such, we address Patent Owner’s arguments with respect to Backhaus
`and Ground 1 here.
`
`17
`
`
`
`Case 6:22-cv-00031-ADA Document 347-3 Filed 07/31/24 Page 19 of 40
`
`IPR2023-00359
`Patent 11,012,554 B2
`with a server.” Ex. 1001, 10:11–14 (limitation 1.a7 of claim 1). Petitioner
`contends that Backhaus’s TD 110 corresponds to the recited mobile device.
`Pet. 15 (referencing Ex. 1005 ¶¶ 31, 33, 50, 81–83; Ex. 1002 ¶¶ 58–59).
`Petitioner contends that Backhaus discloses that TD 110 receives calls
`directed to its primary number or a SLS number (the alleged “secondary
`telephone number”). Pet. 15–16 (referencing Ex. 1005 ¶¶ 31, 33, 34, 60, 75;
`Ex. 1002 ¶ 59). Petitioner contends that Backhaus discloses associating the
`primary and SLS numbers and storing the association in computer memory.
`Id. at 17–19 (referencing Ex. 1005 ¶¶ 39–40, 42–44, Fig. 3A; Ex. 1002
`¶¶ 60–62); see, e.g., id. at 17 (providing an annotated version of Backhaus’s
`Figure 3A, depicting the Second Line Service Master ID Table in Central
`SLS Database 116, which shows the association between a subscriber’s
`primary number and secondary number).
`Upon review of the information in the Petition and corresponding
`evidence, we find, on the complete trial record, that Petitioner has proven,
`by a preponderance of the evidence, that Backhaus teaches or suggests the
`subject matter of limitation 1.a of claim 1.
`Patent Owner does not dispute Petitioner’s contentions with respect to
`this limitation.
`
`Limitation 1.b
`c)
`Claim 1 also recites “automatically transmitting information that
`indicates an access telephone number to the mobile device via a data
`channel.” Ex. 1001, 10:15–17 (limitation 1.b of claim 1). Petitioner
`
`
`7 We use the limitation labels for claim 1 used by Petitioner and Patent
`Owner. See Pet. 9–37 (labeling limitations 1.a–1.f); PO Resp. 2 (referencing
`limitations 1.c, 1.d, 1.e, and 1.f).
`
`18
`
`
`
`Case 6:22-cv-00031-ADA Document 347-3 Filed 07/31/24 Page 20 of 40
`
`IPR2023-00359
`Patent 11,012,554 B2
`contends that Backhaus’s SLS module 105 on TD 110 translates a number
`calling TD 110 or called by the subscriber using TD 100 into the relationship
`number associated with the calling number and uses the relationship number
`to access the SLS platform 115 over telephone network 125. Pet. 20
`(referencing Ex. 1005 ¶¶ 43, 49, 57, code (57) (Abstract)). Petitioner
`contends that a person having ordinary skill in the art would understand that
`Backhaus’s relationship number is the recited “access telephone number.”
`Petitioner contends that Backhaus discloses establishing and storing a
`relationship number. Pet. 21–22 (referencing Ex. 1005 ¶¶ 42, 52–54,
`Fig. 3A; Ex. 1002 ¶¶ 65–66). Petitioner contends that Backhaus discloses
`that the relationship number can be used for multiple subscribers, since the
`combination of the relationship number and subscriber SLS number or
`primary number would be unique. Id. (referencing Ex. 1005 ¶ 54; Ex. 1002
`¶ 65). Also, Petitioner contends that the relationship number is stored in
`SLS database 116. Id. at 21–22 (referencing Ex. 1005 ¶¶ 42, 53–54, Fig.
`3A; Ex. 1002 ¶ 66); see id. at 22 (providing Figure 3A, which shows the
`association of a relationship number and third-party number for a
`subscriber’s contacts).
`With respect to the requirement that the access telephone number be
`transmitted to the mobile device “via a data channel,” Petitioner contends
`that Backhaus discloses this aspect “in two ways.” Pet. 22. As to the
`“second way,”8 Petitioner contends that “Backhaus discloses . . . processes
`for handling data communications between subscriber TD 100 and SLS
`
`
`8 Because we find the information in the Petition proves that Backhouse
`discloses the subject matter of limitation 1.b under the “second way,” we do
`not address the “first way” here.
`
`19
`
`
`
`Case 6:22-cv-00031-ADA Document 347-3 Filed 07/31/24 Page 21 of 40
`
`IPR2023-00359
`Patent 11,012,554 B2
`platform 115 over network 125.” Id. at 25 (referencing Ex. 1005 ¶¶ 71–74,
`Fig. 4D). Petitioner explains that, for a situation where the subscriber
`wishes to call a third party that does not have a relationship number
`established in the system, SLS Module 105 on subscriber TD 110 requests a
`new relationship number from SLS platform 115. Id. (referencing Ex. 1005
`¶ 71). In response, SLS platform 115 assigns a relationship number and
`returns that number to TD 110. Id. (referencing Ex. 1005 ¶ 74). Petitioner
`adds that Backhaus discloses that communications between SLS
`platform 115 and TD 110 may be through protocols or mechanisms that
`include data channels. Id. at 25–26 (referencing Ex. 1005 ¶¶ 72–73;
`Ex. 1002 ¶ 70).
`Patent Owner argues, with respect to the “second way,” that the
`Petition “does not identify any specific channel as being used for” returning
`the next available relationship number in Backhaus. PO Resp. 21
`(referencing Ex. 1005 ¶ 74, cited at Pet. 25).
`We have considered Patent Owner’s argument and determine, on the
`complete trial record, that Petitioner has proven, by a preponderance of the
`evidence, that Backhaus teaches or suggests the requirement that the access
`telephone number be automatically transmitted to the mobile device 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. And Petitioner relies on this teaching in
`support of its contentions with respect to the “second way” analysis.
`Pet. 25–26.
`We find that Backhaus expressly states that the subscriber TD
`“provide[s] the request for the new relationship number, along with the third
`
`20
`
`
`
`Case 6:22-cv-00031-ADA Document 347-3 Filed 07/31/24 Page 22 of 40
`
`IPR2023-00359
`Patent 11,012,554 B2
`party number it desires to call, to the SLS platform.” Ex. 100
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