Trials@uspto. gov
`571-272-7822
`
`Paper 33
`Entered: July 26, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC,
`Petitioner,
`
`V.
`
`FLYPSLINC.,
`Patent Owner.
`
`IPR2023-00357
`Patent 11,218,585 B2
`
`Before ROBERT J. WEINSCHENK, JAMESJ. MAYBERRY,and
`MICHAEL T. CYGAN,Administrative Patent Judges.
`
`WEINSCHENK,Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. $ 318(a)
`
`
`571-272-7822
`
`Paper 33
`Entered: July 26, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC,
`Petitioner,
`
`V.
`
`FLYPSLINC.,
`Patent Owner.
`
`IPR2023-00357
`Patent 11,218,585 B2
`
`Before ROBERT J. WEINSCHENK, JAMESJ. MAYBERRY,and
`MICHAEL T. CYGAN,Administrative Patent Judges.
`
`WEINSCHENK,Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. $ 318(a)
`
`
`
`IPR2023-00357
`Patent 11,218,585 B2
`
`I.
`
`INTRODUCTION
`
`A. Background and Summary
`
`Google LLC (“Petitioner’’) filed a Petition (Paper1, “Pet.”’) requesting
`
`an interpartes review of claims 1-4 (“the challenged claims”) ofU.S. Patent
`
`No. 11,218,585 B2 (Ex. 1001, “the ’585 patent’). Flypsi, Inc. (“Patent
`
`Owner’) filed a Preliminary Response (Paper6, “Prelim. Resp.”’) to the
`
`Petition. Weinstituted an interpartes review ofthe challenged claims on
`
`July 31, 2023. Paper 9 (“Dec. on Inst.”),21. After institution, Patent Owner
`
`filed a Response (Paper 21, “PO Resp.”) to the Petition, Petitioner filed a
`
`Reply (Paper24, “Pet. Reply”) to the Response, and Patent Ownerfiled a
`
`Sur-reply (Paper 26, “PO Sur-reply”) to the Reply. We held an oral hearing
`
`on May7, 2024, and atranscript ofthe hearing 1s included in the record.
`
`Paper 32 (“Tr.”).
`
`For the reasonsset forth below, Petitioner has shown by a
`
`preponderance ofthe evidence that claims 1—4 ofthe ’585 patent are
`
`unpatentable.
`
`B. Real Parties in Interest
`
`The parties identify themselvesas the only real parties in interest.
`
`Pet. 1; Paper 12, 2.
`
`C. RelatedMatters
`
`The parties indicate that the 585 patent is the subject ofthe following
`
`district court cases: 1) Fiypsi, Inc. (d/b/a Flyp) v. Google LLC, No. 6:22-cv-
`
`00031 (W.D. Tex.); and 2) Flypsi, Inc. (d/b/a Flyp) v. Dialpad, Inc., No.
`
`6:21-cv-00642 (W.D. Tex.). Pet. 1; Paper 12,2. The parties also indicate
`
`that patents related to the 585 patentare the subjectofpetitionsfor inter
`
`partes review in IPR2022-01048, IPR2022-01049, IPR2022-01050,
`
`
`
`IPR2023-00357
`Patent 11,218,585 B2
`
`IPR2022-01051, IPR2023-00358, IPR2023-00359, IPR2023-00360, and
`
`IPR2023-00361. Pet. 2; Paper 12, 2-3.
`
`D. The ’585 Patent
`
`The 585 patentrelates to “providing telephoneservice by
`
`transmitting call handling information between a handset and a switch using
`
`an [Internet Protocol (‘IP’)| channel or similar protocol channel and by
`
`transmitting a voice call associated with the call handling information
`
`between the handset and the switch using a voice channel.” Ex. 1001, 1:55—
`
`64. Figure 3 of the °585 patent is reproduced below.
`
`
`
`Id. at Fig. 3. Figure 3 showsserver 100 and telephone handset 340.
`
`/d. at
`
`4:27-32. According to the ’585 patent, server 100 and handset 340 may
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`3
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`IPR2023-00357
`Patent 11,218,585 B2
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`communicate via Internet 316 (1.e.,a data channel) and via Public Switched
`
`Telephone Network (“PSTN”) 310 (.e.,a voice channel).
`
`/d. at 4:49—-60.
`
`The 585 patent explains that handset 340 transmits information to
`
`server 100 via Internet 316 requesting that one or more secondary telephone
`
`numbers be associated with the primary telephone numberassigned to
`
`handset 340 at activation.
`
`/d. at 5:11—22. To place an outgoingcall, handset
`
`340 transmits information to server 100 via Internet 316 selecting one ofthe
`
`aforementioned secondary numbersas the origination numberand selecting
`
`a contact numbertobe called.
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`/d. at 7:42—58. In response, server 100
`
`transmits a bridge numberto handset 340 via Internet 316.
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`/d. at 7:59-8:2.
`
`Handset 340 then calls the bridge number via PSTN 310, and switch 110
`
`connects the outgoing call from handset 340 to the contact number via PSTN
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`310.
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`/d. at 8:21-38. Switch 110 sends information to the contact number
`
`that “causes the secondary telephone number[ofhandset 340] to be
`
`displayed as the numberfrom which the call appears to have been placed.”
`
`Id. at 8:38-42.
`
`FE.
`
`Illustrative Claim
`
`Of the challenged claims, claim 1 is independent and 1s reproduced
`
`below.
`
`1. A methodofproviding telephoneservice, comprising:
`
`automatically storing electronic information that
`indicates an association of a secondary telephone numberand a
`primary telephone number with a mobile device in a computer
`memory associated with a server;
`
`automatically transmitting information that indicates an
`access telephone numberto the mobile device viaa data
`channel;
`
`
`
`IPR2023-00357
`Patent 11,218,585 B2
`
`automatically associating a primary telephone number
`and access telephone numberpairing with a corresponding
`secondary telephone numberand 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
`numberviaasecond channel;
`
`receiving,at the server, information from the switch
`indicating the outgoing call is being made to theaccess
`telephone numberfrom the primary telephone number; and
`
`receiving, at the switch, information from the server
`directing the switch to:
`
`(a) connect the outgoingcall to the contact
`telephone numberofthe secondary telephone number
`and contact telephone numberpairing, and
`
`(b) identify a telephone numberfrom which the
`outgoing call is being made as the secondary telephone
`number.
`
`Ex. 1001, 10:1440.
`
`FI. Evidence
`
`Petitioner submits the following evidence:
`
`“Saksena”
`
`Declaration ofDr. Bill Lin (“Lin Declaration
`Backhaus, US 2013/0295892 A1, published Nov.7, 2013
`ce
`3
`Backhaus
`Taylor, US 2009/0052437 A1, published Feb. 26, 2009
`oe
`29
`(“Taylor”)
`Saksena, US 2006/0077956 A1, published Apr. 13, 2006
`
`1002
`
`1005
`
`1007
`
`1008
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`
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`IPR2023-00357
`Patent 11,218,585 B2
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`Patent Owner submits the Declaration ofDr. Robert Akl. Ex. 2010
`
`(“Akl Declaration’).
`
`G. Asserted Grounds
`
`Petitioner asserts that the challenged claims are unpatentable on the
`
`following grounds:
`
`1,24
`
`
`
`Backhaus, Saksena
`Backhaus, Taylor
`Backhaus, Saksena, Taylor
`
`Il. ANALYSIS
`
`A. Legal Standards
`
`A claim is anticipated if each limitation ofthe claim is disclosed in a
`
`single prior art reference arranged as in the claim. Net MoneyIN, Inc. v.
`
`VeriSign, Inc.,545 F.3d 1359, 1369 (Fed. Cir. 2008). A claim is
`
`unpatentableas obvious under35 U.S.C. § 103(a) ifthe differences between
`
`the claimed subject matter and the priorart are such that the subject matter
`
`as a whole would have been obviousat the time the invention was made toa
`
`person having ordinary skill in the art to which the subject matter pertains.
`
`KSR Int’! Co. v. Teleflex Inc. , 550 U.S. 398, 406 (2007). The question of
`
`obviousness1s resolved on the basis ofunderlying factual determinations,
`
`including 1) the scope and contentofthepriorart; 2) any differences
`
`between the claimed subject matter andthepriorart; 3) the level of ordinary
`
`skill in the art; and 4) any objective indicia ofnon-obviousness. Graham v.
`
`John Deere Co., 383 U.S. 1, 17-18 (1966).
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`
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`IPR2023-00357
`Patent 11,218,585 B2
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`B. Level ofOrdinary Skill in the Art
`
`Petitioner argues that a person ofordinary skill in the art would have
`
`had “an undergraduate degreein electrical engineering, computer
`
`engineering, computerscience ora related field along with two years of
`
`work experience in the field oftelecommunication.” Pet. 4—5 (citing
`
`Ex. 1002 ] 17—18). Patent Ownerdoesnot dispute Petitioner’s description.
`
`PO Resp. 5. We adopt Petitioner’s description for purposesofthis Decision.
`
`C. Claim Construction
`
`In an interpartes review proceeding,a patent claim is construed using
`
`the same standard usedin a civil action under 35 U.S.C. § 282(b), including
`
`construing the claim in accordance with the ordinary and customary
`
`meaning ofthe claim as understood by one of ordinary skill in the art and the
`
`prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b).
`
`Patent Ownerproposes construing theterm “channel”in all
`
`challenged claimsto refer to “[a] channel[that] does not haveto befully
`
`connected on both endsor actually transmittingaparticular type of
`
`information to qualify asa channel.” PO Resp. 6. Petitioner asserts that
`
`Backhausteachestransmitting an access telephone numberviaadata
`
`channel in two ways. Pet. 22—26. Werely only on the “second way”for
`
`purposes ofthis Decision. See Section II.D.3; Pet. 25—26. Patent Owner’s
`
`proposedconstruction ofthe term “channel”does not impactthe parties’
`
`dispute about the “second way” that Backhausteachestransmitting an access
`
`telephone number viaa data channel. PO Resp. 21—23; PO Sur-reply 11;
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`
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`IPR2023-00357
`Patent 11,218,585 B2
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`Tr. 10:2—11, 68:3—24.' Therefore, we determine that the term “channel”
`
`does not require an express construction to resolve the parties’ disputes
`
`regarding the asserted grounds ofunpatentability.
`
`D. Obviousness ofClaims1, 2, and 4 over Backhaus and Taylor
`
`Petitioner argues that claims 1, 2, and 4 would have been obvious over
`
`Backhaus and Taylor. Pet. 8-45, 50-54. For the reasons discussed below,
`
`Petitioner has shownby a preponderance ofthe evidence that claims1, 2,
`
`and 4 would have been obviousover Backhaus and Taylor.
`
`1. Overview ofBackhaus
`
`Backhausdescribes a system “for providing a second line service toa
`
`user of Subscriber Telecommunications Device (‘TD’) 110.” Ex. 1005 431.
`
`Backhaus’s Figure | is reproduced below.
`
`' Patent Ownerargues that we shouldstill address its proposed construction
`of the term “channel” becauseit “significantly impacts the credibility” of
`Petitioner’s declarant, Dr. Bill Lin. Tr. 68:3—-24. Wedisagree. As discussed
`in more detail below, the portions ofthe Lin Declaration that we rely on in
`this Decision are credible because those portions are consistent with and
`supported by the other evidence ofrecord. See Section II.G.
`
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`IPR2023-00357
`Patent 11,218,585 B2
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`wore
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`Id. at Fig. 1. Figure 1 showssystem 110 in which “[a] subscriber to a
`
`second line service (“SLS’)... may receive calls at [subscriber] TD 110 that
`
`are directed to either ofthe primary phone numberprovidedby the primary
`
`service provider or the secondary phone number (“SLS phone number)
`
`provided, serviced and orfacilitated by the SLS platform 115.” /d. § 31.
`
`System 100 also allows subscriber TD 110 to placeacall to third party TD
`
`120A from the SLS phone number. /d. 9/58. “For each subscriber to the
`
`SLS service, a Subscriber Relationship ID Table 310 is... maintained”that
`
`includes “relationship numbers. .
`
`. used to facilitate calls between the
`
`subscriber’s TD 110... andtheSLS platform 115.” /d. 945.
`
`As an example, “Subscriber#1 associated with subscriber TD 110
`
`already has mobile phoneservice via primary service provider 201 using
`
`mobile phone number1.408.544.1212” and “subsequently subscribes to an
`
`SLS service provided by way of SLS platform 115 and is assigned SLS
`
`
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`IPR2023-00357
`Patent 11,218,585 B2
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`number(i.e.,a second line number) 1.770.555.0001.” Jd. § 50. “Subscriber
`
`#1 desires to originate a call to third party associated with 1.305.229.9999
`
`from his SLS number 1.770.555.0001.” Jd. 458. Todo so, subscriber TD
`
`110 “queries Subscriber Relationship ID Table 315 in local SLS database
`
`106 and translates the called third party number 1.305.229.9999 to
`
`relationship number1.678.222.0001.” Jd. 459.
`
`“By calling the relationship number. .
`
`.
`
`, the network 125 routes the
`
`call tothe SLS platform 115 instead of directly tothird party TD 120A.” /d.
`
`“When the SLS platform 115 processesthisfirst leg ofthe call,”it
`
`“[qJuer[ies| the Subscriber RelationshipID Table 310 in central SLS
`
`database 116” and “appl[ies] the following logic: ‘when primary number
`
`1.408.544.1212 calls relationship number1.678.222.0001, it 1s actually SLS
`
`number770.555.0001 calling 1.305.229.9999.’” Id. 460. “[I|n completing
`
`the secondleg ofthe call from Subscriber #1 to the third party TD 120A,the
`
`SLS platform 115 may cause the calling numberto be reflected as the SLS
`
`number1.770.555.0001 instead ofthe actual primary numberof subscriber
`
`TD 110.” /d.
`
`2. Overview ofTaylor
`Taylor describes “a networked computer telephony system including
`
`the Internet and the Public Switched Telephone System.” Ex. 1007 4 2.
`
`Taylor’s Figure 1A is reproduced below.
`
`10
`
`
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`IPR2023-00357
`Patent 11,218,585 B2
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`FIG. YA (Prior Art)
`
`Id. at Fig. 1A. Figure 1A depicts “atypical configuration of a conventional
`
`computer telephony server operating with a Public Switched Telephone
`
`Network (PSTN)and/or the Internet.” /d. 44. Taylorstates that “[t]he CT
`
`50 can be configured to interface via a PSTN interface 52 with an exchange
`
`12 to receive and processcalls pertaining to a predefined set oftelephone
`
`numbers on the PSTN.” /d. 78.
`
`3. Claim 1
`
`Claim 1 recites “[a] method ofproviding telephone service.”
`
`Ex. 1001, 10:14. Backhaus teaches a methodfor routing calls between a
`
`subscriber TD and athird party TD. Pet. 8-14; Ex. 1005 999, 30, code (57).
`
`11
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`IPR2023-00357
`Patent 11,218,585 B2
`
`Patent Ownerdoesnot dispute that the Backhaus and Taylor combination
`
`teachesthe preamble ofclaim 1.?
`
`Claim 1 recites “automatically storing electronic information that
`
`indicates an association of a secondary telephone numberand a primary
`
`telephone number with a mobile device in acomputer memory associated
`
`with a server.” Ex. 1001, 10:15—18. Backhausteaches automatically storing
`
`an association of a primary number and an SLS number(1.e., a secondary
`
`number) for the subscriber TD in aSLS Master ID Table in a SLS platform.
`
`Pet. 15—19; Ex. 1005 99 31, 33-34, 39-40, 42-44, 60, 75, Fig. 3A.
`
`Backhausalso teaches that the subscriber TD is a mobile device. Pet. 15;
`
`Ex. 1005 9 31, 33, 50, 81-83. Patent Owner doesnotdispute that the
`
`Backhaus and Taylor combination teachesthis limitation of claim 1.
`
`Claim 1 recites “automatically transmitting information that indicates
`
`an access telephone numberto the mobile device via a data channel.”
`
`Ex. 1001, 10:19-21. Backhausteaches transmitting a relationship number
`
`(i1.e., an access number) from the SLS platform tothe subscriber TD.
`
`Pet. 25—26; Ex. 1005 9] 71-74, Fig. 4D. Backhausalso teaches that the SLS
`
`platform transmits the relationship numberto the subscriber TD viaa data
`
`channel, suchas an IP channel. Pet. 25—26; Ex. 1005 4 71-74.
`
`Patent Ownerarguesthat Petitioner does not showsufficiently that
`
`Backhausteaches transmitting a relationship numberto the subscriber TD
`
`* Because Petitioner presents evidencethat the prior art teaches the
`recitations in the preamble of claim 1, we need not decide whetherthe
`preambleis limiting.
`
`12
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`IPR2023-00357
`Patent 11,218,585 B2
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`“via a data channel.’ PO Resp. 21—23; PO Sur-reply 11. Specifically,
`
`Patent Owner contendsthat“[t]he fact that some information shared
`
`between the SLS moduleandplatform may occur via IP andthat one piece
`
`of information sharedis a relationship number does not mean that the
`
`relationship numberspecifically is transmitted via IP.” PO Resp. 22 (citing
`
`Ex. 1005 §[§] 72—74; Ex. 20104 72). According to Patent Owner, a person of
`
`ordinary skill in the art “would understand that Backhaus’[s] discussion of
`
`using IP could be referring to other information shared between the SLS
`
`platform and module.” /d. (citing Ex. 2010472). Patent Ownerfurther
`
`contends that “Backhausparagraphs 72 and 73 mention alleged data
`
`protocols, but never once mention the relationship number,” whereas
`
`“paragraph 74 describes a new,separate step oftransmitting a relationship
`
`number... and neveridentifies what protocol is used.” PO Sur-reply 11.
`
`Patent Owner’s argumentis unavailing. Backhaus does not merely
`
`teach transmitting some information via a data channel. Backhaus expressly
`
`teaches transmitting a relationship numberfrom the SLS platform to the
`
`subscriber TD viaa data channel. Ex. 1005 9§] 71—74, Figure 4D.
`
`Specifically, Backhaus teaches that the subscriber TD “provide[s] the
`
`request for the new relationship number, along with thethird party numberit
`
`desires to call, tothe SLS platform.” /d. § 71. Backhaus teachesthat the
`
`subscriber TD then “obtain[s] a relationship number” from theSLS platform
`
`“via a session-based protocol such as, but not limited to, an unstructured
`
`> Petitioner asserts that Backhaus teachestransmitting a relationshipnumber
`to the subscriber TD “via a data channel”in two ways. Pet.22—26. Werely
`only on the “second way”for purposes ofthis Decision. /d. at 25—26. Thus,
`we do not address Patent Owner’s arguments regarding the “first way.”” PO
`Resp. 15—21, 23—28; PO Sur-reply 5-13.
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`Patent 11,218,585 B2
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`supplementary services data(‘USSD’) protocol.” /d. 72 (emphasis added).
`
`Backhausexplains that the USSD protocolis just an example and “an IP-
`
`based interaction... may be used.”* /d. 473. Backhausalso explains that
`
`using a USSD orIP channel“may minimize temporal delaysin allocating
`
`and acquiring relationship numbers between an SLS module 105 and an
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`SLS platform 115.” /d. (emphasis added). Thus, Backhausspecifically
`
`identifies a data channelfor transmitting a relationship number from the SLS
`
`platform to the subscriber TD.
`
`Patent Owneralso arguesthat Petitioner’s “first way” that Backhaus
`
`teaches transmitting a relationship numbervia a data channelincludes
`
`“inconsistent positions,” which “underminesall of [Petitioner’s] arguments
`
`and specifically underminesthe expert’s credibility.” PO Resp. 23-28;
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`PO Sur-reply 11-13. We disagree. Petitioner’s theory regarding the
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`“second way”that Backhausteachestransmitting a relationship numbervia
`
`a data channel1s credible becauseit is consistent with and supported by
`
`Backhaus’s teachings. See Pet. 25—26; Ex. 1002 4 70; Ex. 1005 4§ 71-74;
`
`Section II.G.
`
`Claim 1 recites “automatically associating a primary telephone
`
`numberandaccess telephone numberpairing with a corresponding
`
`secondary telephone numberand contact telephone numberpairing in the
`
`computer memory.” Ex. 1001, 10:22—25. Backhausteachespairing a
`
`primary numberwitharelationship number and pairing a SLS numberwith
`
`a third party number (i.e.,a contact number). Pet. 27—29; Ex. 1005 44 49,
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`4 The evidenceofrecord indicates, and Patent Ownerdoesnotdispute, that
`USSD and IP channels are data channels. Ex. 1002 470; see PO Resp. 21—
`23; PO Sur-reply 11.
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`52-53, 60, 70, Fig. 4C. Backhausalso teaches associating the primary and
`
`relationship numberpairing with the SLS and third party numberpairing.
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`Pet. 29-31; Ex. 1005 ff 10, 13, 15, 46, 52-53, 59, 60. Patent Owner does
`
`not dispute that the Backhaus and Taylor combination teachesthis limitation
`
`of claim 1.
`
`Werefer to the next three limitations of claim 1 collectively as “the
`
`switch limitations.” Claim 1 recites “receiving, at a switch associated with
`
`the server, an outgoing call from the mobile device to the access telephone
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`numberviaa second channel.” Ex. 1001, 10:26—28. Backhaus teachesthat
`
`the subscriber TD calls the relationship number, anda PSTNroutesthe call
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`tothe SLS platform. Pet. 32—34; Ex. 1005 4 32, 49,59. Taylorteachesa
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`PSTNinterface (1.e., a switch) associated with a serverfor receiving calls on
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`aPSTN. Pet. 50-52; Ex. 1007994, 8 (“The CT server 50 can be configured
`
`to interface viaa PSTN interface 52 with an exchange 12 to receive... calls
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`...onthe PSTN.”), Fig. 1A. As discussed in more detail below regarding
`
`the reason to combine, it would have been obviousto a person of ordinary
`
`skill in the art to combine the teachings ofBackhausand Taylorso that
`
`Backhaus’s SLS platform communicates with the PSTN using Taylor’s
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`PSTNinterface. Pet. 52-54; Ex. 1002 997; see Section II.D.6. Patent
`
`Ownerarguesthat Petitioner does not showsufficiently that the Backhaus
`
`and Taylor combination teachesthis limitation of claim 1. PO Resp. 35-38;
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`PO Sur-reply 13—15. We address Patent Owner’s arguments below.
`
`Claim | recites “receiving, at the server, information from the switch
`
`indicating the outgoing call is being made to the access telephone number
`
`from the primary telephone number.” Ex. 1001, 10:29-32. Backhaus
`
`teaches that the SLS platform receives information indicating that the
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`outgoingcall is being madeto the relationship numberfrom the primary
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`number. Pet. 38—40; Ex. 1005 9949, 59-60, 69-70. Taylor teachesthat its
`
`PSTN interface provides information to a server pertaining to a telephone
`
`numberonaPSTN. Pet. 50-52; Ex. 1007 4 4, 8 (“The CT server 50 can be
`
`configured to interface via a PSTN interface 52 with an exchange 12 to
`
`receive and processcalls pertaining to. .
`
`. telephonenumberson the
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`PSTN.”); Fig. LA. As discussed in more detail below regarding the reason
`
`to combine, it would have been obviousto a person ofordinary skill in the
`
`art to combinethe teachings ofBackhausand Taylor so that Backhaus’s SLS
`
`platform communicates with the PSTN using Taylor’s PSTN interface. Pet.
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`52-54; Ex. 1002 § 97; see Section II.D.6. Patent Ownerarguesthat
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`Petitioner does not show sufficiently that the Backhaus and Taylor
`
`combination teachesthis limitation of claim 1. PO Resp. 35-38; PO Sur-
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`reply 13-15. We address Patent Owner’s arguments below.
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`Claim 1 recites “receiving, at the switch, information from the server
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`directing the switch to: (a) connect the outgoing call to the contact telephone
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`numberofthe secondary telephone number and contact telephone number
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`pairing, and (b) identify a telephone numberfrom whichthe outgoingcall is
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`being made as the secondary telephone number.” Ex. 1001, 10:33—40.
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`Backhausteaches that the SLS platform provides information for connecting
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`the outgoing call to the third party numberand identifying the outgoingcall
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`as made from the SLS number. Pet. 40-44; Ex. 1005 960, 70. Taylor
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`teaches that a server communicates information toa PSTN using the PSTN
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`interface. Pet. 50-52; Ex. 1007 4 4 (“External digital communication
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`systemstypically communicate with the PSTNby interfacing with an
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`exchange suchas 12”), 78, Fig. 1A. As discussed in more detail below
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`16
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`regarding the reason to combine,it would have been obviousto a person of
`
`ordinary skill in the art to combine the teachings ofBackhaus and Taylor so
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`that Backhaus’s SLS platform communicates with the PSTN using Taylor’s
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`PSTN interface. Pet. 52-54; Ex. 1002 997; see Section II.D.6. Patent
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`Ownerarguesthat Petitioner does not showsufficiently that the Backhaus
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`and Taylor combination teachesthis limitation of claim 1. PO Resp. 35-38;
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`PO Sur-reply 13—15. We address Patent Owner’s arguments below.
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`Patent Ownerpresents several arguments regarding the switch
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`limitations. First, Patent Owner arguesthat Petitioner does not show
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`sufficiently that Taylor’s PSTN interface is a switch. PO Resp. 35-37; PO
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`Sur-reply 14. Specifically, Patent Owner contendsthat Taylor identifies
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`exchange 12 in Figure 1A as a switch, not PSTN interface 52. PO Resp. 35—
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`36 (citing Ex. 1007 99 4, 8, Fig. 1A; Ex. 2010 4§ 98-99): PO Sur-reply 14.
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`Patent Owneralso contendsthat even ifPetitioneris correct that Taylor’s
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`PSTNinterface is similar to the claimed switch,“similarity is not enough.”
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`PO Resp. 36—37 (citing Pet. 52); PO Sur-reply 14.
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`Patent Owner’s argument is unavailing. Taylor’s labeling of another
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`element in Figure 1A as a switch does not preclude Taylor’s PSTN interface
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`from teaching the switch recitedin claim 1. See Adasa Inc. v. Avery
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`Dennison Corp. , 55 F.4th 900, 910 (Fed. Cir. 2022) (A “reference need not
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`disclose the [claimed] elements in the very same terms used by the patent.”);
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`Inre Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (“this is not an “ipsissimis
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`verbis’ test”). As discussed above, the evidenceofrecord indicates that
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`Taylor’s PSTN interface, when implementedin Backhaus’s system,
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`performs the three steps recited in the switch limitations. Ex. 1002 49 95—
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`99; Ex. 1007 94, 8, Fig. LA. And Patent Ownerdoesnot dispute that
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`17
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`Taylor’s PSTN interface performsthose three steps in the proposed
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`combination. See PO Resp. 34-38; PO Sur-reply 13-15.
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`Further, in this case, Patent Owner does not propose an express
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`construction for the term “switch.” See PO Resp. 6—13, 34-38; PO Sur-
`
`reply 13—15; Tr. 65:16—67:3. But Petitioner points out that, in another
`
`proceeding involving related patents, Patent Ownerstated that “the claims
`
`describe the switch in the same wayas the extrinsic evidence andthe
`
`specification: as an element in the communications networksthat facilitates
`
`connections between transmitters and receivers.” Pet. 52; Ex. 1009, 22.
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`Patent Owner’s interpretation is consistent with the written description ofthe
`
`°585 patent and the testimony ofPatent Owner’s declarant, Dr. Robert Akl,
`
`in this case. See Pet. 52; Pet. Reply 18; Ex. 1001, 2:19-21. 6:5—7, 6:16-18;
`
`Ex. 1102, 89:6—-19; Tr. 120:10-121:17. And, as discussed above, Taylor
`
`teaches that 1ts PSTN interface facilitates a connection between a server and
`
`aPSTN. Pet. 51-52; Pet. Reply 18; Ex. 1007 4 8 (‘The CT server 50 can be
`
`configured to interface viaa PSTN interface 52 with an exchange 12 to
`
`receive and process calls pertaining to a predefined set oftelephone numbers
`
`onthe PSTN.”). Thus, the evidence ofrecord indicates that Taylor’s PSTN
`
`interface satisfies Patent Owner’s interpretation ofthe term “switch.”
`
`According to Patent Owner,Petitioner’s reliance on Patent Owner’s
`
`interpretation from the other proceeding is improperbecauseit is “untimely”
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`and “plainly overbroad.” PO Sur-reply 14; Tr. 64:18—65:3. Wedisagree.
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`Petitioner relied on Patent Owner’s interpretation in the Petition, so it 1s not
`
`a new theory presentedfor the first timein the Reply. Pet. 35n.7,52. In
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`addition, Patent Ownercited specific evidence to support its interpretation of
`
`the term “switch”in the other proceeding, and Patent Ownerdoesnotcite
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`18
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`any evidencein this case indicating that it is overbroad or otherwise
`
`improper. See PO Sur-reply 14; Ex. 1009, 20-22.
`
`Second, Patent Ownerarguesthat Petitioner does not show
`
`sufficiently that Taylor teaches using the same switch for the switch
`
`limitations in claim 1. PO Resp. 37—38; PO Sur-reply 14-15. In particular,
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`Patent OwnercontendsthatPetitioner “does not even attempt to show thatit
`
`would have been obviousto use the same switch for the functionalities
`
`listed” in the switch limitations. PO Resp. 37; see PO Sur-reply 14-15.
`
`Further, according to Patent Owner, “Taylor expressly depicts that a network
`
`consists ofmultiple switches, such as the five shown in Figure 1A.”
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`PO Resp.37.
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`Patent Owner’s argumentis unavailing. Taylor teaches one PSTN
`
`interface that connectsa server with aPSTN. Ex. 100798 (“a PSTN
`
`interface 52”), Fig. 1A. And Petitioner presents evidencethat a person of
`
`ordinary skill in the art “would have been motivatedto includea PSTN
`
`interface similarto that discussed in Taylor when implementing Backhaus’s
`
`telephony service system.” Pet. 52 (emphasis added); see also id. at 53
`
`(“motivated to connect SLS platform 115 withthe PSTN and to also include
`
`a PSTNinterface”) (emphasis added); Ex. 1002 4 97 (“motivated to include
`
`a PSTNinterface”) (emphasis added). Thus, the evidence ofrecord shows
`
`that a person of ordinary skill in theart would have implementeda single
`
`PSTNinterface from Taylorto facilitate a connection between Backhaus’s
`
`SLS platform andthe PSTN. Pet. 52—54; Ex. 1002 9997-99. As discussed
`
`above, that one PSTN interface, when implemented in Backhaus’s system,
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`19
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`performs the three steps recited in the switch limitations.*> Ex. 1002 4 95—
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`99; Ex. 1007 4 4, 8, Fig. 1A.
`
`Third, Patent Owner arguesthat we should not consider the Backhaus
`
`and Taylor combination becauseit is “irrelevant.” PO Sur-reply 14—15;
`
`Tr. 60:1—12, 64:14-17. Specifically, Patent Owner contends that the
`
`Backhausand Taylor combinationis “relevant only ifthe switch must be
`
`‘separate from the PSTN,’” which “Patent Ownerhas not argued.” PO Sur-
`
`reply 14—15; Tr. 60:1—12, 64:14-17. Patent Owner’s argumentis
`
`unavailing. As discussed above, the evidence ofrecord showsthatthe
`
`Backhausand Taylor combination includes one PSTNinterface that
`
`performs the three stepsrecited in the switch limitations. Ex. 1002 49 95—
`
`99; Ex. 1007 94, 8, Fig. LA. Even ifPatent Owneris correct that Petitioner
`
`relies primarily on the Backhaus and Taylor combination to teach a switch
`
`separate from the PSTN,that does not detract from the evidence showing
`
`that the combination includes one switch for performing the three steps
`
`recited in the switch limitations of claim 1.
`
`For the foregoing reasons, on this record, Petitioner showssufficiently
`
`that the Backhaus and Taylor combination teachesthe limitations of claim 1.
`
`4. Claim2
`
`Claim 2 depends from claim 1, and recites “wherein the data channel
`
`is an Internet protocol (IP) channel.” Ex. 1001, 10:41—42. Backhaus
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`teaches that the SLS platform transmits the relationship numberto the
`
`> Even if Patent Owneris correct that the PSTNusesadditional switches to
`complete the outgoingcall, the parties agree that claim 1 does not preclude
`the use of such additional switches. Tr. 12:13-21,47:1—13 (“Every call is
`going to go through multiple switches.”). Claim 1 only requires that the
`same switch perform the specific steps recited in the switch limitations. /d.
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`20
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`subscriber TD via an “IP-based interaction”(1.e., an IP channel). Pet. 25—
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`26, 44; Ex. 1005 § 73. Other than the arguments discussed abovefor claim
`
`1, Patent Owner doesnotdispute that the Backhaus and Taylor combination
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`teaches this limitation of claim 2.
`
`5. Claim 4
`
`Claim 4 depends from claim 1, and recites “wherein the second
`
`channelis not an Intemet Protocol (IP) channel.” Ex. 1001, 10:45—46.
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`Backhausteaches that the subscriber TD calls the relationship number, anda
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`PSTNroutesthe call to the SLS platform using signaling system seven
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`(“SS7”) protocol, which is not an IP channel. Pet. 32—34, 45; Ex. 1005
`
`{4 32, 49, 59. Other than the arguments discussed abovefor claim 1, Patent
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`Ownerdoesnot dispute that the Backhaus and Taylor combination teaches
`
`this limitation of claim 4.
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`6. Reasonto Combine
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`Petitioner asserts that a person of ordinary skill in the art would have
`
`had reason to combinethe cited teachings ofBackhaus and Taylor. Pet. 50—
`
`54 (citing Ex. 1002 99 94-100). We agree with Petitioner’s rationale.
`
`Specifically, 1t would have been obviousto a person ofordinary skill in the
`
`art to combinethe teachings ofBackhausand Taylor so that Backhaus’s SLS
`
`platform communicates with the PSTN using Taylor’s PSTN interface. /d.
`
`at 53; Ex. 1002 4 97. Doing so would have been obvious because Backhaus
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`teaches using its SLS platform with a PSTN, and Taylor provides an
`
`interface that allows an external system, such as Backhaus’s SLS platform,
`
`to communicate withaPSTN. Pet. 52—53; Ex. 1002 997; Ex. 1005
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`32;
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`Ex. 1007 9 4, 8. In addition, a person of ordinary skill in the art would
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`21
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`have hada reasonable expectation of success in using Taylor’s PSTN
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`interface with Backhaus’s SLS platform. Pet. 53-54; Ex. 1002 998.
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`Patent Ownerarguesthat Petitioner does not showsufficiently thatit
`
`would have been obvious to combinethe cited teachings ofBackhaus and
`
`Taylor. PO Resp. 38; PO Sur-reply 15. Specifically, Patent Owner contends
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`that a person of ordinary skill in theart “would understand that Backhaus
`
`already has its own mechanism forinterfacing with the PSTN,”and
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`Petitioner “offers no reason for replacing Backhaus’ PSTN interface with
`
`that of Taylor”or “add[ing] a second, redundant PSTN interface.”
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`PO Resp. 38 (citing Ex. 20104 101); PO Sur-reply 15.
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`Patent Owner’s argumentis unavailing. Petitioner relies on Taylor to
`
`provide a known elementthat is not taught expressly by Backhaus. Pet. 52—
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`54. Specifically, a person of ordinary skill in the art would have recognized
`
`that Backhaus’s system needsaninterface to facilitate a connection between
`
`the SLS platform andthe PSTN. /d. at 53; Ex. 1002 4 97; Ex. 1007 49 4, 8;
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`see KSR, 550 U.S. at 420 (“[A]ny need or problem knownin thefield of
`
`endeavorat the time ofthe invention and addressed by the patent can
`
`provide a reason for combining the elements in the mannerclaimed.”’). But
`
`Backhausdoes not mention such an interface. Thus, a person of ordinary
`
`skill in the art would have had reason to implement Backhaus’s s
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