Case 6:22-cv-00031-ADA Document 347-4 Filed 07/31/24 Page 1 of 65
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`Exhibit 4
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`Exhibit 4
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`Trials@uspto.gov
`Paper 33
`571-272-7822
`Date: July 31, 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.
`
`IPR2023-00360
`Patent 9,667,770 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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`INTRODUCTION
`I.
`Google LLC (“Petitioner”) filed a Petition requesting inter partes
`review of claims 1–6 (the “Challenged Claims”) of U.S. Patent
`No. 9,667,770 B2 (Ex. 1001, the “’770 patent”). Paper 1 (“Pet.”), 1.
`Flypsi, Inc. (“Patent Owner”) owns the ’770 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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`2
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`Related Matters
`C.
`The parties each identify the following litigations as matters related to
`the ’770 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 ’770
`patent are the subject of petitions for inter partes review in IPR2022-01048,
`IPR2022-01049, IPR2022-01050, IPR2022-01051, IPR2023-00357,
`IPR2023-00358, IPR2023-00359, and IPR2023-00361. Pet. 2; Paper 12,
`2–3.
`
`The ’770 Patent
`D.
`The ’770 patent, titled “Telephone Network System and Method,”
`issued May 30, 2017, from application US 14/307,052. Ex. 1001, codes
`(54), (45), (21). The ’770 patent ultimately claims priority to application
`US 13/944,853, filed on July 17, 2013. Id. at code (63).
`The ’770 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 ’770 patent “permits the user to select one or more secondary
`telephone numbers to be referenced to a primary telephone number for the
`handset.” Ex. 1001, 4:67–5:2. A “bridge telephone number” may be
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`“assign[ed] . . . to be used to connect the call from the handset 340 to the
`switch 110 and send pre-call information including the bridge telephone
`number to the handset via the data channel.” Id. at 7:50–54. “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 7:55–57. 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 7:57–63. The ’770 patent allows “the secondary telephone number to be
`displayed as the number from which the call appears to have been placed.”
`Id. at 8:22–26.
`Figure 3, reproduced below, illustrates “data channel and voice
`channel connections used to provide telephone service.” Ex. 1001, 3:50–52.
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`As shown in Figure 3, 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, 5:57–59. 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
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`bridge telephone number may be automatically routed to this switch.” Id.
`at 5:66–6:4. 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 6:33–37. The
`’770 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 4:35–46.
`Challenged Claims
`E.
`The Petition challenges claims 1–6. Pet. 3. Claim 1 is the sole
`independent claim, which we reproduce below.
`1. A method of providing telephone service, the method
`comprising:
`associating a secondary telephone number with a primary
`telephone number in at least one computer memory device, the
`primary telephone number being assigned to a handset;
`acquiring first digital information from the handset over at
`least one data channel, the first digital information indicating
`primary call processing rules for handling calls directed to the
`primary telephone number;
`storing the primary call processing rules in the at least one
`computer memory device;
`acquiring second digital information from the handset over
`the at least one data channel, the second digital information
`indicating secondary call processing rules for handling calls
`directed to the secondary telephone number;
`storing the secondary call processing rules in the at least
`one computer memory device;
`receiving an incoming call over at least one voice channel
`at a switch, the switch being associated with a bridge telephone
`number such that calls directed to the bridge telephone number
`are automatically routed to the switch, the incoming call being
`directed to a handset-associated telephone number, the handset-
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`associated telephone number being the primary telephone
`number or the secondary telephone number, and;
`based on the primary call processing rules or the secondary
`call processing rules:
`transmitting pre-call information to the handset over the at
`least one data channel the pre-call information including the
`bridge telephone number and the handset-associated telephone
`number, such that the handset is capable of displaying the
`handset-associated telephone number to a user and, based on user
`input, accepting the incoming call by connecting with the switch
`over the at least one voice channel using the bridge telephone
`number.
`Ex. 1001, 9:65–10:37.
`Prior Art and Asserted Grounds
`F.
`Petitioner asserts that the Challenged Claims are unpatentable based
`on four grounds:
`Claims Challenged
`1–5
`6
`1–5
`6
`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
`
`References/Basis
`Backhaus2, Logan3
`Backhaus, Logan, Saksena4
`Backhaus, Logan, Taylor5
`Backhaus, Logan, Saksena, Taylor
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`35 U.S.C. §
`1031
`103
`103
`103
`
`
`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 ’770 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 2010/0128857 A1, published May 27, 2010 (Ex. 1015, “Logan”).
`4 US 2006/0077956, published Apr. 13, 2006 (Ex. 1008, “Saksena”).
`5 US 2009/0052437, published Feb. 26, 2009 (Ex. 1007, “Taylor”).
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`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.
`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.
`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.
`Logan (Ex. 1015)
`2.
`Logan, titled “Call Forwarding System and Method Employing
`Virtual Phone Numbers Associated with Landline and Other Discrete
`Telephone Units,” published May 27, 2010, from application US
`12/344,073, filed December 24, 2008. Ex. 1015, codes (54), (43), (21), (22).
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`The application claims priority to provisional application US 61/009,177,
`filed December 26, 2007. Id. at code (60).
`Logan “relates to systems and methods for selectively forwarding
`calls to specified phone numbers.” Ex. 1015 ¶ 2. The disclosed systems and
`methods include forwarding multiple “virtual” phone numbers to a user’s
`cellphone, which has a single “base” phone number. Id. ¶ 21. Logan refers
`to this cellphone as a Multi Number Cellphone (“MNC”). Id.
`Relevant to this proceeding, “[i]n the initial set-up of the system, a
`user, via his MNC . . . 140 can enter a set of preferences that are transmitted
`to the system server 130 via datastream 134. These preferences notify the
`system server of which calls a user desires to receive.” Ex. 1015 ¶ 29.
`For example, a user can desire that when at location #1 (home),
`the MNC receives incoming calls directed at virtual #1 (“home”
`phone number). When an incoming telephone call is transmitted
`to the system server, the forwarding application determines if
`the user is at location #1 (home), and if they are, then the
`application forwards the call to the MNC user at step 240. In
`the alternative, if the user is not at the location #1 (home), then
`it is not a desired call for the user, and the call is therefore
`forwarded to a voicemail database at procedure step 250.
`Id. ¶ 39.
`
`Saksena (Ex. 1008)
`3.
`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
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`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.”).
`
`Taylor (Ex. 1007)
`4.
`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 21, 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.
`
`
`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.
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`Petitioner’s asserted grounds of unpatentability are based on
`obviousness under 35 U.S.C. § 103.
`[a] patent for a claimed invention may not be obtained,
`notwithstanding that the claimed invention is not identically
`disclosed as set forth in section 102, if the differences between
`the claimed invention and the prior art are such that the claimed
`invention as a whole would have been obvious before the
`effective filing date of the claimed invention to a person having
`ordinary skill in the art to which the claimed invention pertains.
`Patentability shall not be negated by the manner in which the
`invention was made.
`35 U.S.C. § 103 (2011); see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art; (3)
`the level of ordinary skill in the art; and (4) when available, objective
`evidence, such as commercial success, long felt but unsolved needs, and
`failure of others. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); see
`KSR Int’l Co., 550 U.S. at 407 (“While the sequence of these questions
`might be reordered in any particular case, the [Graham] factors continue to
`define the inquiry that controls.”). The Court in Graham explained that
`these factual inquiries promote “uniformity and definiteness,” for “[w]hat is
`obvious is not a question upon which there is likely to be uniformity of
`thought in every given factual context.” 383 U.S. at 18.
`The Supreme Court made clear that we apply “an expansive and
`flexible approach” to the question of obviousness. KSR Int’l Co., 550 U.S.
`at 415. Whether a patent claiming the combination of prior art elements
`would have been obvious is determined by whether the improvement is more
`than the predictable use of prior art elements according to their established
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`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.
`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 ’770 patent . . . would have had an undergraduate
`degree
`in electrical engineering, computer engineering,
`computer science or a related field along with two years of work
`experience in the field of communication . . . More education can
`supplement practical experience and vice versa.
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`Pet. 4 (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 ’770 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. 7. Patent
`Owner proposes constructions for the terms “channel” and “transmitting pre-
`call information.” PO Resp. 6–17. We address these two terms below.
`“channel”
`1.
`Patent Owner proposes construing “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. 45–46. As
`will be evident from our analysis below, we conclude that it would have
`been obvious to employ an IP-based communication. There is no dispute
`that an IP-based communications channel satisfies the term channel as used
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`in the claims. 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)).
`“transmitting pre-call information”
`2.
`Patent Owner proposes that “[t]he transmission [of pre-call
`information] must occur after the indication of an incoming call is received
`in step [1.f].” PO Resp. 14. Patent Owner argues that the claim term
`requires “[t]he ‘pre-call information’ [to] be information relating to the
`specific call received in step [1.f].” Id. The parties’ dispute centers on what
`point in time information may be considered “pre-call” information.
`Petitioner asserts that a person having ordinary skill in the art
`would have understood that the transmitted information (which
`includes a relationship number) described above corresponds to
`the claimed “pre-call information” because it is transmitted
`before a call is connected between a third party and the
`subscriber (e.g., before a call is connected when the third party
`calls the subscriber as described in the context of Figure 4B).
`
`Pet. 44 (referencing Ex. 1005 ¶¶ 67, 68, 71, 74; Ex. 1002 ¶ 100).
`Patent Owner argues that “the plain language of the claims” supports
`the two requirements posed by Patent Owner’s construction. PO Resp. 14.
`Patent Owner argues that “the claim language clearly indicates that the
`transmitting step must occur after receiving the call by using antecedent
`basis to refer to the already-received call.” Id.; see id. at 15 (reproducing
`limitation 1.g, and emphasizing that the step recites “accepting the
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`incoming call”), id. (citing Hytera Commc’ns Co. v. Motorola Sols., Inc.,
`841 F. App’x 210, 218 (Fed. Cir. 2021)).
`Patent Owner also argues that “the use of ‘the’ to refer to the
`incoming call confirms that the pre-call information must relate to that
`specific call (as opposed to any other calls, or potential hypothetical future
`calls that have not yet been placed).” PO Resp. 15; see also Ex. 2010
`¶¶ 50–52 (relying on the claim reciting “the incoming call,” which refers
`back to “an incoming call” to opine that the plain language of the claims
`requires the transmitting step to occur after receiving the call).
`Patent Owner also argues that the Specification of the ’770 patent, and
`specifically Figure 4 and its description, supports Patent Owner’s proposed
`construction. PO Resp. 16; see also id. at 16–17 (describing Figure 4).
`Petitioner replies that Patent owner’s construction “violates the
`‘general rule [that], “[u]nless the steps of a method [claim] actually recite an
`order, the steps are not ordinarily construed to require one.”’” Pet. Reply 3
`(quoting Mformation Techs., Inc. v. Research In Motion Ltd., 764 F.3d 1392,
`1398 (Fed. Cir. 2014)). Petitioner argues that Patent Owner’s antecedent
`basis argument fails, as the antecedent basis is directed to receiving an
`incoming call and accepting the incoming call, not to transmitting pre-call
`information. Id. at 3–4.
`Petitioner argues that Dr. Akl was “unable to explain what
`information the pre-call information allegedly includes that relates to the
`incoming call.” Pet. Reply 4 (citing Ex. 1102 (Akl Dep.), 96:6–11). Patent
`Owner responds by pointing to Dr. Akl’s statement that the bridge telephone
`number is “relating to an incoming call.” PO Sur-reply 5 (citing Ex. 1102,
`108:18–109:8). On this matter, Dr. Akl’s testimony clearly indicates that
`
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`Case 6:22-cv-00031-ADA Document 347-4 Filed 07/31/24 Page 18 of 65
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`IPR2023-00360
`Patent 9,667,770 B2
`“the claim itself is stating that a bridge telephone number is part of . . . said
`pre-call information.” Ex. 1102, 109:1–3, 24–25.
`Petitioner argues that the Figure 4 example upon which Patent Owner
`and Dr. Akl rely for their positions is merely one non-limiting example
`provided by the ’770 patent. Pet. Reply 5. Petitioner argues that the
`Specification describes that “[t]he incoming pre-call information may be
`received at the handset 340 before or during the call ringing on the handset,”
`which Flyp neglects to address. Id. (quoting Ex. 1001, 6:43–44). Patent
`Owner replies that Petitioner’s “Reply does not identify any examples in the
`[S]pecification that do not follow th[e] order [in Figure 4], and there are
`none.” PO Sur-reply 6. Patent Owner also argues that Petitioner’s reliance
`on when a call is received at the handset is irrelevant, as it is different from
`what is claimed. Id.
`Petitioner argues that the “pre-call” information, in the form of a
`bridge telephone number, may relate to multiple calls because the disclosure
`of the ’770 patent mentions “calls,” in the plural, to the bridge telephone
`number. Pet. Reply 6 (citing Ex. 1001, 6:2–4). Petitioner argues that Patent
`Owner’s preferred construction, requiring a bridge number to be newly sent
`for each call, is consequently at odds with that disclosure in the ’770 patent.
`Id. Patent Owner argues that this description of “calls” to the bridge number
`“is clearly indicating that any call to the bridge number is routed to the
`switch,” and does not relate to the claimed pre-call information because
`pre-call information is not discussed at that part of the patent disclosure. PO
`Sur-reply 6–7.
`We have reviewed the parties’ arguments, and the cited evidence (and,
`in particular, the claims and Specification) and determine that the claims do
`
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`Case 6:22-cv-00031-ADA Document 347-4 Filed 07/31/24 Page 19 of 65
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`IPR2023-00360
`Patent 9,667,770 B2
`not require the pre-call information to be transmitted after the call is
`received at the switch. The “general rule [is that], ‘[u]nless the steps of a
`method [claim] actually recite an order, the steps are not ordinarily
`construed to require one.’” Mformation Techs., Inc., 764 F.3d at 1398. As
`discussed in greater detail below, we do not find the asserted claims, read in
`light of the Specification, 6 to require that the pre-call information having a
`bridge number be transmitted after a call to a secondary number is made.
`We begin with the words of the claim. See, e.g., Phillips, 415 F.3d at
`1314 (“[T]he context in which a term is used in the . . . claim [at issue] can
`be highly instructive.”). The complete “transmitting” step recites:
`transmitting pre-call information to the handset over the at
`least one data channel the pre-call information including the
`bridge telephone number and the handset-associated telephone
`number, such that the handset is capable of displaying the
`handset-associated telephone number to a user and, based on user
`input, accepting the incoming call by connecting with the switch
`over the at least one voice channel using the bridge telephone
`number.
`
`Ex. 1001, 10:29–37. The plain language of the claims requires that the
`pre-call information is transmitted such that the handset is capable of
`displaying the handset-associated telephone number and accepting the
`incoming call. Nothing in this language precludes the pre-call information
`from being transmitted before the incoming call is received at the switch—
`the requirement is that the information makes the handset capable of
`displaying the handset-associated telephone number to a user and accepting
`
`
`6 The prosecution history does not provide any facts helpful to this
`determination. See Ex. 1003.
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`Case 6:22-cv-00031-ADA Document 347-4 Filed 07/31/24 Page 20 of 65
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`IPR2023-00360
`Patent 9,667,770 B2
`the incoming call. Indeed, the term “pre-call” indicates that the information
`is before the call.
`We find Patent Owner’s (and Dr. Akl’s) antecedent basis argument
`unpersuasive. As Petitioner indicates, the antecedent basis supports a
`construction that an incoming call is received at the switch before it is
`accepted at the handset. This timing does not require the transmitting of the
`pre-call information to occur between the time an incoming call is received
`at the switch and it is accepted at the handset. All the claim requires is that
`the pre-call information be transmitted after call processing rules are
`received and stored and before the incoming call is to be accepted at the
`handset, such that the handset is capable of displaying the handset-associated
`telephone number to a user and the user is able, through user input, accept
`the incoming call.
`Our understanding of the order of the actions is not inconsistent with
`the Specification. Cf. Phillips, 415 F.3d at 1315 (“[T]he specification ‘is
`always highly relevant to the claim construction analysis.’”). As Petitioner
`argues, the ’770 patent makes clear that the embodiment of Figure 4 is
`exemplary. See Ex. 1005 ¶¶ 62 (“F[igures] 4A-4D collectively illustrate an
`exemplary method 400 for routing calls between a third party
`telecommunications device, such as third party TD 120, and a
`telecommunications device associated with a subscriber to a second line
`service, such as subscriber device 110.”), 24 (“The word ‘exemplary’ is used
`hereinto mean ‘serving as an example, instance, or illustration.’ Any aspect
`described herein as ‘exemplary’ is not necessarily to be construed as
`preferred or advantageous over other aspects.”). Although we agree with
`Patent Owner that Figure 4’s description has the call received at the switch
`
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`Case 6:22-cv-00031-ADA Document 347-4 Filed 07/31/24 Page 21 of 65
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`IPR2023-00360
`Patent 9,667,770 B2
`before the pre-call information is transmitted, we discern nothing in the
`Specification that requires this order, such that the claims should be so
`limited. Cf. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
`(“[L]imitations are not to be read into the claims from the specification.”).
`Also, as will be evident from our analysis of claim 1 below, one of
`Petitioner’s two alternative unpatentability approaches directed to the
`transmitting step (limitation 1.g) satisfies the claime
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