Case: 25-1010 Document: 15 Page: 1 Filed: 03/03/2025
`
`
`
`Nos. 2025-1010, -1011, -1012, -1020, -1030
`United States Court of Appeals
`for the Federal Circuit
`____________________
`
`FLYPSI, INC., DBA FLYP,
`Appellant
`
`v.
`
`GOOGLE LLC,
`Appellee
`____________________
`
`Appeals from the United States Patent and Trademark Office
`Patent Trial and Appeal Board, in Nos. IPR2023-00357,
`-00358, -00359, -00360, -00361
`____________________
`
`PRINCIPAL BRIEF FOR APPELLANT
`____________________
`
`
`
`
`
`LOUIS CAMPBELL
`MATTHEW R. MCCULLOUGH
`Winston & Strawn LLP
`255 Shoreline Drive
`Redwood City, CA 94065
`(650) 858-6500
`llcampbell@winston.com
`mrmccullough@winston.com
`
`
`Counsel for Appellant Flypsi, Inc. (d/b/a Flyp)
`
`
`
`
`
`
`
`Nos. 2025-1010, -1011, -1012, -1020, -1030
`United States Court of Appeals
`for the Federal Circuit
`____________________
`
`FLYPSI, INC., DBA FLYP,
`Appellant
`
`v.
`
`GOOGLE LLC,
`Appellee
`____________________
`
`Appeals from the United States Patent and Trademark Office
`Patent Trial and Appeal Board, in Nos. IPR2023-00357,
`-00358, -00359, -00360, -00361
`____________________
`
`PRINCIPAL BRIEF FOR APPELLANT
`____________________
`
`
`
`
`
`LOUIS CAMPBELL
`MATTHEW R. MCCULLOUGH
`Winston & Strawn LLP
`255 Shoreline Drive
`Redwood City, CA 94065
`(650) 858-6500
`llcampbell@winston.com
`mrmccullough@winston.com
`
`
`Counsel for Appellant Flypsi, Inc. (d/b/a Flyp)
`
`
`
`
`
`Case: 25-1010 Document: 15 Page: 2 Filed: 03/03/2025
`
`
`
`CLAIM LANGUAGE
`
`
`U.S. Patent No. 11,218,585 (IPR2023-00357): Claim 1 (Appx228)
`
`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 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.
`
`
`
`
`i
`
`
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`Case: 25-1010 Document: 15 Page: 3 Filed: 03/03/2025
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`
`
`CLAIM LANGUAGE (continued)
`
`
`U.S. Patent No. 10,334,094 (IPR2023-00358): Claim 1 (Appx242)
`
`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 telephone handset in a computer memory
`associated with a server;
`automatically associating a bridge or access telephone number with
`each of a plurality of contact telephone numbers in the computer
`memory;
`automatically transmitting information that indicates the association
`of the bridge or access telephone number with each of a plurality of
`contact telephone numbers to the handset via a data channel;
`automatically associating each primary telephone number and bridge
`or 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 handset to the bridge or access telephone number via a second
`channel;
`receiving, at the server, information from the switch indicating the
`outgoing call is being made to the bridge or 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 associated with the primary telephone number and bridge
`or access telephone number pairing, and (b) identify a telephone
`number from which the outgoing call is being made as the
`secondary telephone number.
`
`
`
`
`
`ii
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`Case: 25-1010 Document: 15 Page: 4 Filed: 03/03/2025
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`
`
`CLAIM LANGUAGE (continued)
`
`
`U.S. Patent No. 11,012,554 (IPR2023-00359): Claim 1 (Appx255)
`
`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.
`
`
`
`
`
`
`
`iii
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`Case: 25-1010 Document: 15 Page: 5 Filed: 03/03/2025
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`
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`CLAIM LANGUAGE (continued)
`
`
`U.S. Patent No. 9,667,770 (IPR2023-00360): Claim 1 (Appx269)
`
`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-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.
`
`iv
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`Case: 25-1010 Document: 15 Page: 6 Filed: 03/03/2025
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`
`
`CLAIM LANGUAGE (continued)
`
`
`U.S. Patent No. 10,051,105 (IPR2023-00361): Claim 1 (Appx282)
`
`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 telephone handset in a computer memory
`associated with a server;
`automatically storing electronic information that indicates a selection
`of call processing rules for the primary telephone number in the
`computer memory;
`automatically storing electronic information that indicates a selection
`of call processing rules for the secondary telephone number in the
`computer memory;
`receiving an electronic indication of an incoming call to the secondary
`telephone number at the server, said electronic indication of an
`incoming call being received from a switch associated with the
`server;
`automatically accessing the call processing rules for the secondary
`telephone number under the control of the server responsive to the
`receipt of the electronic indication of the incoming call to the
`secondary telephone number;
`automatically handing the incoming call in accordance with the
`accessed call processing rules for the secondary telephone number;
`transmitting pre-call information via a data channel to the handset
`under the control of the server, said pre-call information including
`a bridge telephone number for connecting the handset to the
`incoming call at the switch; and
`receiving, at the server via the data channel, an electronic indication
`of a selection of a call processing rule for handling the incoming call
`to the secondary telephone number, or
`establishing a voice channel connection between the handset and the
`switch as a result of the handset calling the switch using the bridge
`telephone number.
`
`
`
`
`
`v
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`Case: 25-1010 Document: 15 Page: 7 Filed: 03/03/2025
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`
`
`CERTIFICATE OF INTEREST
`Appellant’s undersigned counsel certifies that the following infor-
`
`mation is accurate and complete to the best of counsel’s knowledge:
`
`1. Represented Entities. Fed. Cir. R. 47.4(a)(1): “The full name
`of every entity represented in the case by the counsel filing the
`certificate.”
`
`
`
`Flypsi, Inc. (d/b/a Flyp)
`
`
`2. Real Party in Interest. Fed. Cir. R. 47.4(a)(2): “For each entity,
`the name of every real party in interest, if that entity is not the
`real party in interest.”
`
`
`
`N/A
`
`
`3. Parent Corporations and Stockholders. Fed. Cir. R.
`47.4(a)(3): “For each entity, that entity’s parent corporation(s)
`and every publicly held corporation that owns ten percent (10%)
`or more of its stock.”
`
`
`
`N/A
`
`
`4. Legal Representatives. Fed. Cir. R. 47.4(a)(4): “The names of
`all law firms, partners, and associates that have not entered an
`appearance in the appeal, and (A) appeared for the entity in the
`lower tribunal; or (B) are expected to appear for the entity in this
`court.”
`
`
`
`
`
`Winston & Strawn LLP: Michael A. Bittner, William M. Lo-
`gan, Juan C. Yaquian
`
`
`
`
`
`vi
`
`
`
`Case: 25-1010 Document: 15 Page: 8 Filed: 03/03/2025
`
`
`
`5. Represented Entities. Fed. Cir. R. 47.4(a)(1): “The full name
`of every entity represented in the case by the counsel filing the
`certificate.”
`
`
`
`Flypsi, Inc. (d/b/a Flyp)
`
`
`6. Organizational Victims and Bankruptcy Cases. Fed. Cir.
`R. 47.4(a)(6): “All information required by Federal Rule of
`Appellate Procedure 26.1(b) and (c) that identifies
`organizational victims in criminal cases and debtors and
`trustees in bankruptcy cases.”
`
`
`
`Not applicable.
`
`
`
`
`
`
`March 3, 2025
`
`
`
`/s/ Louis Campbell
`LOUIS CAMPBELL
`Counsel for Appellant
`
`vii
`
`
`
`Case: 25-1010 Document: 15 Page: 9 Filed: 03/03/2025
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`
`
`TABLE OF CONTENTS
`
`Page
`CLAIM LANGUAGE ................................................................................... i
`CERTIFICATE OF INTEREST ................................................................ vi
`TABLE OF CONTENTS ......................................................................... viii
`TABLE OF AUTHORITIES ...................................................................... xi
`GLOSSARY OF ABBREVIATIONS ....................................................... xiv
`STATEMENT OF RELATED CASES ..................................................... xv
`INTRODUCTION ....................................................................................... 1
`JURISDICTIONAL STATEMENT ............................................................ 7
`STATEMENT OF ISSUES ......................................................................... 7
`STATEMENT OF THE CASE ................................................................... 8
`A.
`The challenged patents ............................................................ 9
`B.
`The prior art ........................................................................... 16
`1.
`Backhaus ....................................................................... 16
`2.
`Taylor ............................................................................. 17
`3.
`Logan ............................................................................. 18
`Proceedings before the Board ................................................ 19
`1.
`The ’585, ’094, and ’554 (outgoing call) patents .......... 19
`2.
`The ’770 and ’105 (incoming call) patents ................... 23
`a. Google’s first theory and the Board’s
`“unknown caller” rationale .................................. 24
`
`C.
`
`viii
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`Case: 25-1010 Document: 15 Page: 10 Filed: 03/03/2025
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`
`TABLE OF CONTENTS (continued)
`
`
`Page
`
`B.
`
`
`b. Google’s second theory and the Board’s
`construction of “pre-call information” ................. 28
`SUMMARY OF ARGUMENT .................................................................. 30
`STANDARD OF REVIEW ........................................................................ 33
`ARGUMENT ............................................................................................. 34
`I.
`The decisions finding the claims of the ’585, ’094, and ’554
`patents obvious should be reversed or vacated. ............................. 34
`A.
`The Board exceeded its statutory authority in deciding
`its own alternative to Google’s Backhaus and Taylor
`obviousness theory. ................................................................ 35
`The Board erred in finding a POSITA would have been
`motivated to combine Backhaus and Taylor because
`the Board’s factual finding that Backhaus “needs” an
`interface to the PSTN is unsupported by any (let alone
`substantial) evidence. ............................................................ 38
`The Board legally erred in construing “switch.” ................... 45
`C.
`II. The decisions finding the claims of the ’770 patent and claim
`1 of the ’105 patent obvious should be reversed or vacated. ......... 52
`A.
`The “transmitting pre-call information” limitations
`require transmitting a “bridge telephone number” via a
`“data protocol” to the user’s handset. .................................... 53
`The Board exceeded its authority by making a factual
`finding never urged by Google, and which was also
`unsupported by any (let alone substantial) evidence,
`that a POSITA would be motivated to use IP to avoid
`displaying “unknown number.” ............................................. 54
`
`B.
`
`ix
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`Case: 25-1010 Document: 15 Page: 11 Filed: 03/03/2025
`
`
`TABLE OF CONTENTS (continued)
`
`
`Page
`
`C.
`
`
`The Board legally erred in accepting Google’s second
`theory by relying on generic claim construction
`principles to adopt a construction of “transmitting pre-
`call information” that contradicts the intrinsic
`evidence. ................................................................................. 63
`CONCLUSION ......................................................................................... 75
`ADDENDUM
`CERTIFICATE OF SERVICE
`CERTIFICATE OF COMPLIANCE
`
`
`x
`
`
`
`Case: 25-1010 Document: 15 Page: 12 Filed: 03/03/2025
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`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Axonics, Inc. v. Medtronic, Inc.,
`75 F.4th 1374 (Fed. Cir. 2023) ............................................................. 33
`Consol. Edison Co. v. NLRB,
`305 U.S. 197 (1938) .............................................................................. 34
`Ethicon LLC v. Intuitive Surgical, Inc.,
`No. 2020-1528, 2021 WL 3716397 (____________) .............................. 42
`In re Gartside,
`203 F.3d 1305 (Fed. Cir. 2000) ...................................................... 33, 34
`Google Inc. v. Intell. Ventures II LLC,
`701 F. App’x 946 (Fed. Cir. 2017) ........................................................ 42
`Hytera Commc’ns Co. v. Motorola Sols., Inc.,
`841 F. App’x 210 (Fed. Cir. 2021) ............................................ 66, 67, 69
`Icon Health & Fitness, Inc. v. Strava, Inc.,
`849 F.3d 1034 (Fed. Cir. 2017) ................................................ 43, 47, 61
`KSR Int'l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .............................................................................. 39
`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) ...................................................... 38, 55
`Mformation Techs., Inc. v. Rsch. in Motion Ltd.,
`764 F.3d 1392 (Fed. Cir. 2014) .................................................. 6, 64, 66
`PAR Pharm., Inc. v. TWI Pharms., Inc.,
`773 F.3d 1186 (Fed. Cir. 2014) ............................................................ 51
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ............................................ 64
`
`xi
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`
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`Case: 25-1010 Document: 15 Page: 13 Filed: 03/03/2025
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`
`
`
`TABLE OF AUTHORITIES (continued)
`
`Page(s)
`
`
`Polaris Indus., Inc. v. Arctic Cat, Inc.,
`882 F.3d 1056 (Fed. Cir. 2018) ............................................................ 41
`PPC Broadband, Inc. v. Iancu,
`739 F. App’x 615 (Fed. Cir. 2018) ........................................................ 41
`SAS Inst., Inc. v. Iancu,
`584 U.S. 357 (2018) ........................................................ 3, 36, 37, 38, 55
`TQ Delta, LLC v. CISCO Sys., Inc.,
`942 F.3d 1352 (Fed. Cir. 2019) ............................................................ 33
`Vicor Corp. v. SynQor, Inc.,
`869 F.3d 1309 (Fed. Cir. 2017) ...................................................... 70, 72
`Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc.,
`853 F.3d 1272 (Fed. Cir. 2017) ............................................................ 34
`Wi-Lan, Inc. v. Apple, Inc.,
`811 F.3d 455 (Fed. Cir. 2016) .............................................................. 66
`Statutes
`5 U.S.C. § 706 ..................................................................................... 33, 37
`28 U.S.C. § 1295(a)(4)(A) ............................................................................ 7
`35 U.S.C. § 141(c) ........................................................................................ 7
`35 U.S.C. § 142............................................................................................ 7
`35 U.S.C. §§ 311-319 ................................................................................... 7
`35 U.S.C. § 319............................................................................................ 7
`Administrative Procedure Act ........................................................... 33, 41
`
`xii
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`Case: 25-1010 Document: 15 Page: 14 Filed: 03/03/2025
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`
`
`
`TABLE OF AUTHORITIES (continued)
`
`
`Other Authorities
`37 C.F.R. § 90.3(a)(1) .................................................................................. 7
`
`
`Page(s)
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`xiii
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`
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`Case: 25-1010 Document: 15 Page: 15 Filed: 03/03/2025
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`
`
`’585 patent
`’094 patent
`’554 patent
`’770 patent
`’105 patent
`Backhaus
`
`Board
`Flyp
`IP
`IPR
`POSITA
`PSTN
`Taylor
`
`
`
`GLOSSARY OF ABBREVIATIONS
`U.S. Patent No. 11,218,585 (Appx216–229)
`U.S. Patent No. 10,334,094 (Appx230–243)
`U.S. Patent No. 11,012,554 (Appx244–256)
`U.S. Patent No. 9,667,770 (Appx257–269)
`U.S. Patent No. 10,051,105 (Appx270–287)
`U.S. Patent App. Pub. No. 2013/0295892 (Appx1116–
`1144)
`Patent Trial and Appeal Board
`Appellant Flypsi, Inc. (d/b/a Flyp)
`Appellee Google LLC
`Internet protocol
`inter partes review
`person of ordinary skill in the art
`public switched telephone network
`U.S. Patent App. Pub. No. 2009/0052437 (Appx1238–
`1274)
`
`
`
`xiv
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`
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`STATEMENT OF RELATED CASES
`Under Circuit Rule 47.5, Flyp states as follows:
`
`(a) No previous appeal has been taken in this action.
`
`(b) The Court’s decision in this action may directly affect parallel
`
`litigation in which the same patents-at-issue are asserted: Flypsi, Inc. v.
`
`Google LLC, No. 6:22-cv-31-ADA (W.D. Tex.).
`
`
`
`xv
`
`
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`Case: 25-1010 Document: 15 Page: 17 Filed: 03/03/2025
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`
`
`INTRODUCTION
`Long before the COVID-19 pandemic, the explosive rise of Internet-
`
`connected mobile devices changed the way many people communicate
`
`with family, friends, and work colleagues. With the introduction of the
`
`smartphone in 2007, personal and professional communications coa-
`
`lesced around the mobile device. While some chose to segregate their per-
`
`sonal and professional communications with multiple devices, that solu-
`
`tion was financially and physically cumbersome. Rather, a technological
`
`need arose to segregate such communications and manage multiple tele-
`
`phone numbers within a single device. In particular, there was a need for
`
`a device that would maintain caller ID and properly identify a call as
`
`originating from a secondary phone number of the caller, rather than a
`
`conference line number or a randomly generated number.
`
`Flyp invented a technological solution that fulfills this need in a
`
`distinct, inventive manner. Flyp owns a patent portfolio, including the
`
`five patents at issue here, directed to innovations that claim a particular
`
`way of setting up and connecting telephone calls, and delivering infor-
`
`mation related to such telephone calls using IP or other data channels,
`
`while delivering the voice portion of the call. Unlike the standard mobile
`
`1
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`Case: 25-1010 Document: 15 Page: 18 Filed: 03/03/2025
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`
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`phone that connects to a single phone number, Flyp’s patented methods
`
`allow users to create and own multiple phone numbers on a single mobile
`
`device while maintaining caller ID functions. Thus, from a single mobile
`
`phone, users can create alternative and dedicated numbers for business,
`
`social activities, shopping, dating, or any other aspect of their lives.
`
`Simply put, Flyp developed a unique and inventive technology that
`
`enables a user to gain access to an additional, alternative phone number
`
`on his or her mobile device without having to purchase a separate device.
`
`Flyp asserted these patents against Google in district court, where the
`
`jury found Google’s Google Voice product infringed each of the patents at
`
`issue here and that Google had failed to prove any claim invalid.
`
`The PTAB, however, gave Google a second bite at the invalidity ap-
`
`ple. In the five inter partes reviews brought by Google, the Board deter-
`
`mined that Google had shown the challenged claims to be unpatentable
`
`as obvious. However, the Board legally and factually erred in making
`
`these determinations, and its decisions should be reversed or vacated.
`
`The ’585, ’094, and ’554 patents. The first three patents relate to
`
`outgoing calls made from a user’s secondary number. The Board found
`
`the claims of these patents obvious over Backhaus and Taylor. In so
`
`2
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`
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`doing, the Board made three independent errors, each sufficient to over-
`
`turn the decisions.
`
`First, the Board legally erred and exceeded its statutory authority
`
`by adopting an obviousness theory that Google did not present in its Pe-
`
`titions. Google repeatedly made clear it was only asserting obviousness
`
`over Backhaus and Taylor “to the extent” the Board adopted a particular
`
`interpretation of “switch.” Appx353, Appx2777, Appx3334 (Petitions);
`
`Appx522, Appx2938, Appx3497 (Replies). But no party ever advocated for
`
`that interpretation of “switch,” and the Board adopted a different inter-
`
`pretation. Consequently, the condition precedent to Google’s obviousness
`
`theory was never met. Yet the Board ignored Google’s condition and
`
`found the claims unpatentable based on a different theory of the Board’s
`
`own design—violating Congress’s choice to “structure a process in which
`
`it’s the petitioner, not the Director, who gets to define the contours of the
`
`proceeding.” SAS Inst., Inc. v. Iancu, 584 U.S. 357, 364 (2018). For this
`
`reason alone, the Board’s decisions cannot stand.
`
`Second, the Board erred in finding a motivation to combine Back-
`
`haus and Taylor. A central premise of the Board’s finding was its assump-
`
`tion that Backhaus “needs” a public switched telephone network
`
`3
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`
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`(“PSTN”) interface, which Taylor discloses. Appx22, Appx51. But no evi-
`
`dence, much less substantial evidence, supports the Board’s factual find-
`
`ing. Below, everyone agreed that Backhaus, on its own, interfaces with
`
`the PSTN and routes calls through the PSTN. Indeed, Backhaus ex-
`
`pressly teaches that it routes calls through “PSTNs.” Appx1133 ([0032]).
`
`Both Google and its expert admitted that Backhaus had this capability
`
`by itself. E.g., Appx339, Appx787-792 (¶¶ 77-80). The Board’s factual
`
`finding of motivation to combine thus lacks substantial evidence support.
`
`Third, the Board legally erred by adopting an improper and facially
`
`overbroad construction of the term “switch.” No party proposed constru-
`
`ing this term; instead, the Board formed its own construction based on
`
`statements Flyp made in district court. But Google acknowledged these
`
`statements were not a proper construction, they were only an example of
`
`something a switch “may be.” Appx355, Appx2779, Appx3336. Neverthe-
`
`less, the Board improperly converted these statements into an overly
`
`broad construction that would encompass virtually any aspect of a tele-
`
`communications system, including telephone wires and nearly (if not lit-
`
`erally) every element in the figures of the patents. The Board’s construc-
`
`tion is clearly incorrect and necessitates vacating its decisions.
`
`4
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`
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`Case: 25-1010 Document: 15 Page: 21 Filed: 03/03/2025
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`
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`The ’770 and ’105 patents. The remaining two patents pertain to
`
`incoming calls directed to the user’s secondary number. The parties’ dis-
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`pute below focused on the “transmitting pre-call information” step of
`
`claim 1 in each patent. The Board found that Google had demonstrated
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`this step to be obvious under two theories, but the Board erred in analyz-
`
`ing each theory.
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`In analyzing Google’s first theory, the Board exceeded its statutory
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`authority by finding that a person of ordinary skill in the art (“POSITA”)
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`would have been motivated to use IP to transmit the relationship number
`
`in Backhaus to avoid displaying “unknown number” on the user’s hand-
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`set—a theory never advanced by Google (who never even referenced dis-
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`playing “unknown number”) but adopted by the Board in violation of SAS
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`Institute. The Board invented this rationale on its own, based on a single
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`question it posed at oral argument—not any evidence in the record—and
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`even then, the Board completely ignored Flyp’s response to that question.
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`The Board further erred because no evidence in the record supports its
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`invented factual finding and the Board misapplied the claims, warrant-
`
`ing reversal.
`
`5
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`
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`Case: 25-1010 Document: 15 Page: 22 Filed: 03/03/2025
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`
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`In analyzing Google’s second theory, the Board made a legal error
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`by interpreting the term “pre-call information” incorrectly. The dispute
`
`between the parties centers on whether the pre-call information must be
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`transmitted after the
`
`incoming call has been received at the
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`switch/server. The claims themselves clarify that it must: they specify
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`that the pre-call information includes a bridge telephone number for con-
`
`necting to “the incoming call,” using an antecedent basis to refer back to
`
`a call that has already been received by the switch/server in a previous
`
`claim step. Furthermore, the specification reinforces this sequence: every
`
`description of transmitting the pre-call information in the specification
`
`follows the call being received at the switch/server.
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`The Board did not identify a single contrary indication in the claims
`
`or specification but nonetheless issued a construction allowing the claim
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`steps to be performed in any order, relying solely on the general principle
`
`that method steps do not have to be executed sequentially. However, this
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`general principle yields wherever “the claim language, as a matter of
`
`logic or grammar, requires that the steps be performed in the order writ-
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`ten, or the specification directly or implicitly requires an order of steps.”
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`Mformation Techs., Inc. v. Rsch. in Motion Ltd., 764 F.3d 1392, 1398 (Fed.
`
`6
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`
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`Case: 25-1010 Document: 15 Page: 23 Filed: 03/03/2025
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`
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`Cir. 2014) (internal quotation marks omitted). The claim language and
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`specification here clearly meet that test and impose a specific order of
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`steps. Therefore, the Board’s construction was a legal error and should
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`be reversed.
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`JURISDICTIONAL STATEMENT
`These consolidated appeals arise from IPR proceedings under 35
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`U.S.C. §§ 311-319. The Board entered final written decisions on July 26,
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`2024 (IPR2023-00357, -00358, -00359), July 29, 2024 (IPR2023-00361),
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`and July 31, 2024 (IPR2023-00360). Appx1-215. Flyp filed timely notices
`
`appealing each decision. Appx690-722, Appx2980-3012, Appx3539-3581,
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`Appx4126-4194, Appx5190-5248; 35 U.S.C. §§ 142, 319; 37 C.F.R.
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`§ 90.3(a)(1). This Court consolidated the appeals on October 15, 2024.
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`ECF No. 2. This Court has jurisdiction under 35 U.S.C. § 319, 35 U.S.C.
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`§ 141(c), and 28 U.S.C. § 1295(a)(4)(A).
`
`STATEMENT OF ISSUES
`As to the ’585, ’094, and ’554 patents, the issues are:
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`I.A. Whether the Board legally erred by adopting an obviousness
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`theory Google did not present in its petitions, which explicitly conditioned
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`Google’s combination of Backhaus and Taylor on a particular claim inter-
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`pretation that the Board did not adopt.
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`7
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`
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`Case: 25-1010 Document: 15 Page: 24 Filed: 03/03/2025
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`
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`I.B. Whether the Board’s finding of motivation to combine Back-
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`haus and Taylor lacks substantial evidence support, where the Board
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`found that Backhaus “needs” the addition of a PSTN interface, despite
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`all parties agreeing that Backhaus already has this capability.
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`I.C. Whether the Board legally erred in adopting an overbroad
`
`construction of “switch.”
`
`As to the ’770 and ’105 patents, the issues are:
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`II.A. Whether the Board’s adoption of Google’s first obviousness
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`theory lacks substantial evidence support, where the Board based its de-
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`cision on a factual finding urged by no party and finding no support in
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`the record that a POSITA would have been motivated to avoid displaying
`
`“unknown number” on a user’s handset.
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`II.B. Whether the Board legally erred in adopting Google’s second
`
`theory for obviousness in adopting a claim construction at odds with the
`
`claim language and specification, which impose a particular order for the
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`“transmitting pre-call information” step.
`
`STATEMENT OF THE CASE
`Flyp appeals five final written decisions finding that the following
`
`claims were shown to be unpatentable:
`
`8
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`
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`Case: 25-1010 Document: 15 Page: 25 Filed: 03/03/2025
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`
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`• IPR2023-00357: ’585 patent claims 1-4 (Appx1-29)
`• IPR2023-00358: ’094 patent claims 1-4 (Appx30-58)
`• IPR2023-00359: ’554 patent claims 1-4 (Appx59-97)
`• IPR2023-00360: ’770 patent claims 1-6 (Appx98-161)
`• IPR2023-00361: ’105 patent claim 1 (Appx162-215)1
`Below is a summary of the five challenged patents, the key prior art ref-
`
`erences, and the proceedings below.
`
`A. The challenged patents
`The ’585, ’094, ’554, ’770, and ’105 patents ultimately claim priority
`
`to the same parent application, which was filed on July 17, 2013.
`
`Appx216-217, Appx230, Appx244, Appx257, Appx270-271. The patents
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`share a common specification that describes the invention as “delivering
`
`telephone calls using the combination of a data channel and a voice chan-
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`nel,” where the “data channel connection” is “used to set up incoming and
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`outgoing calls which are ultimately connected using a voice channel.”
`
`Appx216 (Abstract).2 The patents explain that using both voice and data
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`
`1 With respect to the ’105 patent, Flyp’s appeal is limited to claim 1. Flyp
`is not appealing any issue for ’105 patent claims 2-11.
`2 The specification of all five patents is substantially identical. As such,
`the citations here are representative of all five patents.
`
`9
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`Case: 25-1010 Document: 15 Page: 26 Filed: 03/03/2025
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`
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`channels “permit[s] the same handset to be associated with multiple sec-
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`ondary telephone numbers from which calls appear to have been made
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`and to which calls appear to have been placed.” Id.
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`Figure 1 shows an embodim
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