Trials @uspto. gov
`571-272-7822
`
`Paper 9
`Date: July 31, 2023
`
`UNITED STATES PATENT AND TRADEMARKOFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC,
`Petitioner,
`
`Vv.
`
`FLYPSI, INC.,
`Patent Owner.
`
`IPR2023-00357
`Patent 11,218,585 B2
`
`Before ROBERT J. WEINSCHENK, JAMES J. MAYBERRY,and
`MICHAEL T. CYGAN,Administrative Patent Judges.
`
`WEINSCHENK,Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`571-272-7822
`
`Paper 9
`Date: July 31, 2023
`
`UNITED STATES PATENT AND TRADEMARKOFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC,
`Petitioner,
`
`Vv.
`
`FLYPSI, INC.,
`Patent Owner.
`
`IPR2023-00357
`Patent 11,218,585 B2
`
`Before ROBERT J. WEINSCHENK, JAMES J. MAYBERRY,and
`MICHAEL T. CYGAN,Administrative Patent Judges.
`
`WEINSCHENK,Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`IPR2023-00357
`Patent 11,218,585 B2
`
`I.
`
`INTRODUCTION
`
`A. Background and Summary
`
`Google LLC (“Petitioner”) filed a Petition (Paper1, “Pet.”) requesting
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`an interpartes review of claims 1-4 (“the challenged claims’) of U.S. Patent
`
`No. 11,218,585 B2 (Ex. 1001, “the 585 patent’). Flypsi, Inc. (“Patent
`
`Owner’) filed a Preliminary Response (Paper6, “Prelim. Resp.’”’) to the
`
`Petition. With our authorization, Petitionerfiled a Reply (Paper 7, “Reply”)
`
`to the Preliminary Response, and Patent Ownerfiled a Sur-reply (Paper8,
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`“Sur-reply”) to the Reply.
`
`An interpartes review maynotbe instituted unless “the information
`
`presented in the petition .. . and any response .. . showsthatthere is a
`
`reasonable likelihood that the petitioner would prevail with respect to at least
`
`1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Further, a
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`decision to institute may not institute on fewerthanall claims challenged in
`
`the petition. 37 C.F.R. § 42.108(a). Here, Petitioner demonstrates a
`
`reasonable likelihood of prevailing in showingthat at least one of the
`
`challenged claimsis unpatentable. Thus, weinstitute an interpartes review
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`of the challenged claimsonall the grounds of unpatentability in the Petition.
`
`B. Real Parties in Interest
`
`Theparties identify themselvesas the only real partiesin interest.
`
`Pet. 1; Paper 4, 2.
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`C. Related Matters
`
`Theparties indicate that the °585 patent is the subject of the following
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`district court cases: 1) Flypsi, Inc. (d/b/a Flyp) v. Google LLC, No. 6:22-cv-
`
`00031 (W.D. Tex.) (“District Court Litigation”); and 2) Flypsi, Inc. (d/b/a
`
`Flyp) v. Dialpad, Inc. , No. 6:21-cv-00642 (W.D. Tex.). Pet. 1; Paper 4,2.
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`
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`IPR2023-00357
`Patent 11,218,585 B2
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`The parties also indicate that patents related to the ’585 patent are the subject
`
`of petitions for interpartes review in IPR2022-01048, IPR2022-01049,
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`IPR2022-01050, IPR2022-0105 1, IPR2023-00358, IPR2023-00359,
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`IPR2023-00360, and IPR2023-00361. Pet. 2; Paper 4, 2-3.
`
`D. The ’585 Patent
`
`The ’585 patentrelates to “providing telephoneservice by
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`transmitting call handling information between a handset and a switch using
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`an [Internet Protocol (‘IP’)] channel or similar protocol channel and by
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`transmitting a voice call associated with the call handling information
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`between the handset and the switch using a voice channel.” Ex. 1001, 1:55—
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`64. Figure 3 of the ’585 patent is reproducedbelow.
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`wy ome
`oy
`FIG. S
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`
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`IPR2023-00357
`Patent 11,218,585 B2
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`Id. at Fig. 3. Figure 3 showsserver 100 and telephone handset340. Jd. at
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`4:27-32. According to the ’585 patent, server 100 and handset 340 may
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`communicate via Internet 316 (i.e., a data channel) and via Public Switched
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`Telephone Network (“PSTN”) 310 (.e., a voice channel). Jd. at 4:49-60.
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`The 585 patent explains that handset 340 transmits information to
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`server 100 via Internet 316 requesting that one or more secondary telephone
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`numbersbeassociated with the primary telephone numberassigned to
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`handset 340at activation.
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`/d. at 5:11—22. To place an outgoing call, handset
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`340 transmits information to server 100 via Internet 316 selecting one of the
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`aforementioned secondary numbersas the origination numberandselecting
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`a contact numberto be called. Jd. at 7:42—58. In response, server 100
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`transmits a bridge numberto handset 340 via Internet 316. Jd. at 7:59-8:2.
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`Handset340 then calls the bridge number via PSTN 310, and switch 110
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`connects the outgoing call from handset 340 to the contact number via PSTN
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`310. Id. at 8:21-38. Switch 110 sends information to the contact number
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`that “causes the secondary telephone number[of handset 340] to be
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`displayed as the numberfrom whichthe call appears to have been placed.”
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`Id. at 8:38-42.
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`E.
`
`Illustrative Claim
`
`Of the challenged claims, claim 1 is independent andis reproduced
`
`below.
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`1. A method of providing telephone service, comprising:
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`automatically storing electronic information that
`indicates an association of a secondary telephone numberand a
`primary telephone numberwith a mobile device in a computer
`memoryassociated with a server;
`
`
`
`IPR2023-00357
`Patent 11,218,585 B2
`
`automatically transmitting information that indicates an
`access telephone numberto the mobile device via a data
`channel;
`
`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
`number via a second channel;
`
`receiving, at the server, information from the switch
`indicating the outgoing call is bemg madeto the access
`telephone numberfrom 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 numberof the secondary telephone number
`and contact telephone numberpairing, and
`
`(b) identify a telephone numberfrom whichthe
`outgoing call is beg made as the secondary telephone
`number.
`
`Ex. 1001, 10:1440.
`
`F. Evidence
`
`Petitioner submits the following evidence:
`
`Saksena
`
`Declaration of Dr. Bill Lin
`(“Lin Declaration
`Backhaus, US 2013/0295892 A1, published Nov.7, 2013
`(“Backhaus”’)
`Taylor, US 2009/0052437 A1, published Feb. 26, 2009
`“Taylor”
`Saksena, US 2006/0077956 A1, published Apr. 13, 2006
`«
`>
`
`1002
`1005
`
`1007
`
`1008
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`
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`IPR2023-00357
`Patent 11,218,585 B2
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`G. Asserted Grounds
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`Petitioner asserts that the challenged claims are unpatentable on the
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`following grounds:
`
`
`
`1,24
`
`1,2,4
`
`Backhaus, Saksena
`Backhaus, Taylor
`Backhaus, Saksena, Taylor
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`Il. ANALYSIS
`
`A. 35 U.S.C. §314(a)
`
`Patent Ownerargues that we should exercise our discretion under
`
`35 U.S.C. § 314(a) to deny the Petition. Prelim. Resp. 19-24; Sur-reply 1-3.
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`Section 314(a) states that
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`[t]he Director may not authorize an inter partes review to be
`instituted unless the Director determines that the information
`presentedin the petition filed under section 311 and any
`responsefiled under section 313 showsthat there is a
`reasonable likelihood that the petitioner would prevail with
`respectto at least 1 of the claims challenged in the petition.
`
`Under § 314(a), we have discretion to deny institution of an interpartes
`
`review. Cuozzo Speed Techs., LLC v. Lee, 1368S. Ct. 2131, 2140 (2016).
`
`Weconsiderseveral factors when determining whetherto denyinstitution
`
`under § 314(a) based ona parallel district court proceeding, specifically
`
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceedingisinstituted;
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`
`3.
`
`investmentin the parallel proceeding by the court and the
`parties;
`
`4. overlap betweenissuesraised in the petition and in the
`parallel proceeding;
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`
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`IPR2023-00357
`Patent 11,218,585 B2
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`5. whetherthe petitioner and the defendantin the parallel
`proceeding are the sameparty; and
`
`6. other circumstancesthat impact the Board’s exercise of
`discretion, including the merits.
`
`Apple Inc. v. Fintiv, Inc. ,YPR2020-00019, Paper 11 at 5—6 (PTAB
`
`Mar. 20, 2020) (precedential) (“Fintiv’). We also consider “several
`
`clarifications” madeby the Director of the United States Patent and
`
`Trademark Office (“USPTO”). See USPTO Memorandum,Interim
`
`Procedure for Discretionary Denials in AIA Post-Grant Proceedings with
`
`Parallel District Court Litigation, 2 (June 21, 2022), available at
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`https://www.uspto.gov/sites/default/files/documents/nterim_proc_discretion
`
`ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf
`
`(“Director’s Memo”).
`
`I. Factor 1 — Whetherthe court granted a stay or evidence
`exists that one may be granted ifa proceedingis instituted
`
`Underthefirst Fintiv factor, we consider “whetherthe court granted a
`
`stay or evidence exists that one maybe granted if a proceedingis instituted.”
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`Id. at 6. Petitioner argues that the District Court “previously granted
`
`motions to stay pending instituted IPRs,”so the first factor “weighs against
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`denial”or “is at least neutral.” Reply 1. Patent Ownerarguesthat the
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`District Court denied Petitioner’s “motion for stay relating to [its]
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`mandamuspetition,”so the first factor “is neutral.” Prelim. Resp. 19-20.
`
`Neither party identifies any statements by the District Court or other
`
`evidencethat specifically address a stay of the District Court Litigation
`
`pending this proceeding. See Pet. 56; Prelim. Resp. 19—20; Reply 1; Sur-
`
`reply 1. We decline to speculate based on the record in this case whetherthe
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`District Court would grant a stay of the District Court Litigation. See Apple
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`
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`IPR2023-00357
`Patent 11,218,585 B2
`
`Inc. v. Fintiv, Inc., TPR2020-00019, Paper 15 at 12 (PTAB May13, 2020)
`
`(informative) (“Fintiv IT’). As aresult, we determinethat the first Fintiv
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`factor is neutral.
`
`2. Factor 2— Proximity ofthe court’s trial date to the Board’s
`projected statutory deadlinefor a final written decision
`
`Underthe secondFintiv factor, we considerthe “proximity of the
`
`court’s trial date to the Board’s projected statutory deadline fora final
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`written decision.” Fintiv, Paper 11 at 6. Petitioner argues that the District
`
`Court’s trial date of February 19, 2024 “cannotbereliably used” because
`
`“trial has already been postponed severaltimes.” Reply 1. Petitioner also
`
`arguesthat the District Court’s
`
`median time from filing to trial .. . is more
`
`than 28 months,”so “trial will likely be in May/June 2024.” Pet. 57.
`
`Petitioner concludesthat the second factor “weighs against denialoris at
`
`least neutral.” Reply 1. Patent Ownerarguesthat the secondfactor favors
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`denial because the District Court’s trial date of February 19, 2024 is “around
`
`six months before the expected final written decision date of August 8,
`
`2024.” Prelim. Resp. 20. PatentOwneralso argues that Petitionerrelies on
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`“time-to-trial statistics for the entire Western District of Texas,” but more
`
`specific statistics for the presiding judge showthat“trial is likely to occur
`
`faster” in “December 2023 or January 2024.” Id. at 20-21.
`
`The currenttrial date in the District Court Litigation is February 19,
`
`2024. Ex. 2003, 3. The projected statutory deadline for a final written
`
`decision in this case is in July 2024. However, Petitioner presentsstatistics
`
`indicating that the median timetotrial in the Western District of Texas is 28
`
`months(Ex. 1014, 37), and Patent Ownerpresentsstatistics indicating that
`
`the median time totrial for the presiding judge is 23 months(Ex. 2004, 1).
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`IPR2023-00357
`Patent 11,218,585 B2
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`See Director’s Memoat 8-9. On this record, wefind Petitioner’s statistics
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`more indicative ofthe likely timeto trial because Petitioner’s statistics
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`represent the median timetotrial for civil cases during the recent 12-month
`
`period ending on June 30, 2022. Ex. 1014, 37 (“12-Month Periods Ending
`
`...Jun 30 2022... Civil Only”). Although Patent Owner’s statistics are
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`specific to the presiding judge, Patent Ownerdoesnotassertthatits statistics
`
`are limited to civil cases or to a recent time period. See Prelim. Resp. 20—
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`21; Ex. 2004, 1 (“pending between 2009-01-01 and 2023-05-03... Trial...
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`46 cases”). Based on Petitioner’s statistics, the trial in the District Court
`
`Litigation is likely to occurin May 2024, whichis a couple of months before
`
`the projected statutory deadline for a final written decision in this case. As a
`
`result, we determine that the second Fintiv factor slightly favors
`
`discretionary denial of institution.
`
`3. Factor 3 — Investmentin the parallel proceeding by the
`court and the parties
`
`Underthe third Fintiv factor, we consider the “investment in the
`
`parallel proceeding by the court and the parties.” Fintiv, Paper 11 at 6.
`
`Petitioner argues that “fact discovery and expert discovery do notclose until
`
`after the institution deadline,” so the third factor “favors institution or is at
`
`least neutral.” Reply 2. Patent Owner arguesthat the third factor “strongly
`
`weighs in favor of denying the Petition” because 1) the District Court “has
`
`performed claim construction, decided a motionto transfer, and decided a
`
`motion to stay”; 2) the parties “have engaged in substantial discovery,
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`including production and review of source code, depositions, service of final
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`contentions, written discovery, and document production”; and 3) fact
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`
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`IPR2023-00357
`Patent 11,218,585 B2
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`discovery closes on August 22, 2023, and expert discovery closes in October
`
`2023. Prelim. Resp. 21-22.
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`The evidenceof record indicates that the District Court and the parties
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`have invested only some resourcesin the District Court Litigation as to
`
`issues of unpatentability involving the ’585 patent. The District Court
`
`issued a claim construction orderthat addresses two termsin the *585 patent,
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`but the District Court stated only that those terms have their “[p]lain and
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`ordinary meaning.” Ex. 1016, 2. And the evidence of record indicates that
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`fact discovery is ongoing, expert discovery has not begun, and the deadline
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`for dispositive motionsis not until October 2023. Ex. 2003, 1-2. Thus, we
`
`determinethat the third Fintiv factor weighsslightly against discretionary
`
`denialofinstitution.
`
`4. Factor 4— Overlap between issues raisedin the petition
`and in the parallel proceeding
`
`Underthe fourth Fintiv factor, we consider the “overlap between
`
`issues raised in the petition and in the parallel proceeding.” Fintiv, Paper 11
`
`at 6. Petitioner states that “if the IPR is instituted, Petitioner will not pursue
`
`the IPR groundsin the [D]istrict [C]ourt [L]itigation.” Pet. 57. Thus,
`
`accordingto Petitioner, the fourth factor “weighs against denial.” Jd. Patent
`
`Ownerarguesthat Petitioner’s “narrow|] stipulation only mitigates concerns
`
`about overlap ‘to some degree’ and thus, at best, only ‘weighs marginally in
`
`favor of not exercising discretion to deny institution.’” Prelim. Resp. 22—23.
`
`The Petition challenges claims 1—4, and relies on Backhaus, Saksena,
`
`and Taylor. Pet.3—4. Neither party explains which claims and references
`
`are at issue in the District Court Litigation. See Pet. 57—58; Prelim. Resp.
`
`22-23; Reply 2-3; Sur-reply 2. Thus, on this record, we cannot determine
`
`10
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`IPR2023-00357
`Patent 11,218,585 B2
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`whetherthere is overlap betweenissuesraised in the Petition and District
`
`Court Litigation. Nonetheless, Petitioner’s stipulation that it will not pursue
`
`the groundsasserted in the Petition in the District Court Litigation mitigates
`
`to some degree concernsof duplicative efforts and potentially conflicting
`
`decisions. Pet. 57; see Sand Revolution IT, LLC v. Continental Intermodal
`
`Grp. — Trucking LLC, IPR2019-01393, Paper 24 at 12 (PTAB June 16,
`
`2020) (informative). Thus, even if we assumethat there is overlap between
`
`the issues raised in the Petition and the District Court Litigation, we
`
`determinethat the fourth Fintiv factor weighsslightly against discretionary
`
`denialofinstitution.
`
`5. Factor 5 — Whetherthe petitioner and the defendantin the
`parallel proceeding are the same party
`
`Underthe fifth Fintiv factor, we consider “whetherthe petitioner and
`
`the defendantin the parallel proceeding are the same party.” Fintiv,
`
`Paper 11 at 6. Here, Petitioner is the defendantin the District Court
`
`Litigation. Prelim. Resp. 23. But, as we discussed for the secondfactor, the
`
`projectedtrial date in the District Court Litigation is only a couple months
`
`before the projected statutory deadline for a final written decision in this
`
`case. Underthese circumstances, we determinethatthe fifth Fintiv factor
`
`slightly favors discretionary denial of institution.
`
`6. Factor 6 — Other circumstancesthat impact the Board’s
`exercise ofdiscretion, including the merits
`
`Underthe sixth Fintiv factor, we consider “other circumstancesthat
`
`impact the Board’s exercise of discretion, including the merits.” Fintiv,
`
`Paper 11 at 6. “[W]here the PTAB determinesthat the information
`
`presentedatthe institution stage presents a compelling unpatentability
`
`challenge, that determination alone demonstrates that the PTAB should not
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`11
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`IPR2023-00357
`Patent 11,218,585 B2
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`discretionarily deny institution under Fintiv.” Director’s Memoat 4—5.
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`Petitioner arguesthat the sixth factor “weighs against denial as the merits of
`
`Petitioner’s arguments are compelling.” Pet. 58. Patent Ownerarguesthat
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`the sixth factor “weighs in favor of denial” because “the primary reference
`
`Backhausfails to disclose [several] limitations.” Prelim. Resp. 23—24; see
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`Sur-reply 2-3.
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`Onbalance, we determine that Fintiv factors 1—5 do not favor
`
`discretionary denial ofinstitution. Specifically, we determinethat
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`Petitioner’s stipulation and the parties’ minimal investment in the District
`
`Court Litigation as to issues of unpatentability outweigh the projectedtrial
`
`date. As aresult, we need not decide whetherPetitioner presents a
`
`compelling unpatentability challenge. See CommScope Techs. LLC y. Dali
`
`Wireless, Inc. , TPR2022-01242, Paper 23 at 4-5 (PTAB Feb. 27, 2023)
`
`(decision on Director review) (precedential) (“[I]n circumstances wherethe
`
`Board determinesthat the other Fintiv factors 1—5 do not favor discretionary
`
`denial, the Board shall decline to discretionarily deny under Fintiv without
`
`reaching the compelling merits analysis.”’).
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`7. Summary
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`Based on ourholistic view of the Fintiv factors, we decline to exercise
`
`our discretion under § 314(a) to deny the Petition.
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`B. Level of Ordinary Skillin the Art
`
`Petitioner argues that a person of ordinary skill in the art would have
`
`had “an undergraduate degreein electrical engineering, computer
`
`engineermg, computerscience,or a related field along with two years of
`
`work experience in the field of telecommunication.” Pet. 4—5 (citing
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`Ex. 1002 {| 17-18). Petitioner’s description of the level of ordinary skill in
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`12
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`IPR2023-00357
`Patent 11,218,585 B2
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`the art is supported by the testimony of Petitioner’s declarant, Dr. Bill Lin.
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`Ex. 1002 {| 17-18. PatentOwner doesnot dispute Petitioner’s description
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`at this stage of the proceeding. Prelim. Resp. 5. We adopt Petitioner’s
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`description for purposesof this Decision.
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`C. Claim Construction
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`In an interpartes review proceeding, a patent claim is construed using
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`the same standard used in a civil action under 35 U.S.C. § 282(b), including
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`construing the claim in accordance with the ordinary and customary
`
`meaning of the claim as understood by oneof ordinary skill in the art and the
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`prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Neither
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`party proposes an express construction for any claim terms. Pet. 7—8;
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`Prelim. Resp. 5. We determine that no claim terms require express
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`construction for purposesof this Decision.
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`D. Anticipation of Claims 1, 2, and 4 by Backhaus
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`Petitioner arguesthat claims 1, 2, and 4 are anticipated by Backhaus.
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`Pet. 8-45. For the reasons discussed below, Petitioner demonstrates a
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`reasonable likelihood of prevailing in showingthat claims 1, 2, and 4 are
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`anticipated by Backhaus.
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`I. Claim 1
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`Claim 1 recites “[a] method of providing telephoneservice.”
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`Ex. 1001, 10:14. Petitioner presents evidence that Backhausdiscloses a
`
`methodfor routing calls between a third party telecommunication device
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`(“TD”) anda subscriber TD. Pet. 8—14 (citing 1005 Jf 9, 30, code (57)).
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`Patent Ownerdoesnotdispute that Backhausdiscloses the preamble of
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`13
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`IPR2023-00357
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`clam 1. On this record, Petitioner showssufficiently that Backhaus
`
`discloses the preamble ofclaim 1.!
`
`Claim 1 recites “automatically storing electronic information that
`
`indicates an association of a secondary telephone numberand a primary
`
`telephone numberwith a mobile device in a computer memory associated
`
`with a server.” Ex. 1001, 10:15—18. Petitioner presents evidencethat
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`Backhausdiscloses automatically storing an association of a primary number
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`and an SLS number(1.e., a secondary number) for the subscriber TD in a
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`SLS Master ID Table in a SLS platform. Pet. 15—19 (citing Ex. 1005 {J 31,
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`33-34, 39-40, 42-44, 60, 75, Fig. 3A). Petitioner also presents evidence
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`that Backhaus’s subscriber TD is a mobile device.
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`/d. at 15 (citing Ex. 1005
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`{1 31, 33, 50, 81-83). Patent Ownerdoesnot dispute that Backhaus
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`discloses this limitation of claim 1. On this record, Petitioner shows
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`sufficiently that Backhausdisclosesthis limitation of claim 1.
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`Claim 1 recites “automatically transmitting information that indicates
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`an access telephone numberto the mobile device via a data channel.”
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`Ex. 1001, 10:19—21. Petitioner presents evidence that Backhausdiscloses
`
`transmitting a relationship number(i.e., an access number) from the SLS
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`platform to the subscriber TD. Pet. 20—22 (citing Ex. 1005 {J 43, 49, 52, 53,
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`57, Fig. 3A). Petitioner also presents evidence that Backhaus’s SLS
`
`' BecausePetitioner presents evidencethatthe prior art discloses the
`recitations in the preamble of claim 1, at this stage of the proceeding, we
`need not decide whether the preambleis limiting.
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`14
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`IPR2023-00357
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`platform transmits the information to the subscriber TD via a data channel,
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`such as an IP channel.” /d. at 25—26 (citing Ex. 1005 J] 70-74).
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`Patent Ownerarguesthat Petitioner does not showsufficiently that
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`Backhausdiscloses transmitting a relationship number“via a data channel.”
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`Prelim. Resp. 12—16. Specifically, Patent Owner contendsthat “the mere
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`fact that Backhausdescribesthat unspecified communications can occur via
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`various channels is not enough for anticipation: Backhaus mustteach the
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`specific arrangementof the claims, in which specific transmissions occurvia
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`a ‘datachannel.’” /d. at 15. Onthis record, Patent Owner’s argumentis
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`unavailing. The portion of Backhauscited by Petitioner discloses that “an
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`IP-basedinteraction over the TD’s data service may be used”for “sharing
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`information between the SLS module 105 [of the subscriber TD 110] and the
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`SLS platform 115.” Ex. 1005 7 73; see Pet. 25—26. And Backhausexplains
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`that one piece of information shared betweenthe SLSplatform and the
`
`subscriber TD is a relationship number. Ex. 1005 4 72 (“the SLS module
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`105 may communicate with the SLSplatform 115... to obtam a
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`relationship number’’); id. 74 (“[T ]he determined next available
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`relationship numberis returned to the SLS module 105 of the subscriber TD
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`110.”). Thus, Backhaus refers to a specific transmission—the sharing of a
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`relationship number betweenthe SLSplatform and the subscriber TD—as
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`occurring via an IP data channel.
`
`? Petitioner presents evidence that Backhausdiscloses transmitting a
`relationship numberto the subscriber TD “via a data channel” in two ways.
`Pet. 22—26. For purposesof this Decision, werely on the “second way.” Id.
`at 25—26 (emphasis omitted). Nonetheless, Patent Owner may present
`arguments regarding both waysin the Responseafterinstitution.
`
`15
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`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. Petitioner presents evidencethat
`
`Backhausdiscloses pairing a primary numberwith a relationship number
`
`and pairing a SLS numberwith a third party number(.e., a contact number).
`
`Pet. 27—29 (citing Ex. 1005 {J 49, 52—53, 60, 70, Fig. 4C). Petitioner also
`
`presents evidence that Backhausdiscloses associating the primary and
`
`relationship numberpairing with the SLS and third party numberpairing.
`
`Id. at 29-31 (citing Ex. 1005 J 13, 15, 46, 52-53, 59, 60). Patent Owner
`
`doesnot dispute that Backhausdisclosesthis limitation of claim 1. On this
`
`record, Petitioner showssufficiently that Backhausdisclosesthis limitation
`
`of claim 1.
`
`Claim 1 recites “receiving, at a switch associated with the server, an
`
`outgoing call from the mobile device to the access telephone numbervia a
`
`second channel.” Ex. 1001, 10:26—28. Petitioner presents evidencethat
`
`Backhaus’s subscriber TD calls the relationship number via a PSTN.Pet.
`
`32-34 (citing Ex. 1005 (32, 49, 59). Petitioner also presents evidencethat
`
`the PSTN necessarily includesa local switch associated with the SLS
`
`platform that receives the outgoing call to the relationship number.
`
`/d. at
`
`34-38 (citing Ex. 1002 | 19-26, 78-80; Ex. 1005 {| 34-35, 39-40;
`
`Ex. 1007 { 4, Fig. 1A; Ex. 1011, 6—7, 62-63, 81-82). Patent Ownerargues
`
`that Petitioner does not showsufficiently that Backhausdisclosesthis
`
`limitation of claim 1. We address Patent Owner’s argumentbelow.
`
`Claim 1 recites “receiving, at the server, information from the switch
`
`indicating the outgoing call is being madeto the access telephone number
`
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`from the primary telephone number.” Ex. 1001, 10:29—32. Petitioner
`
`presents evidence that Backhaus’s SLS platform receives information
`
`indicating that the outgoing call is being madeto the relationship number
`
`from the primary number. Pet. 38—40 (citing Ex. 1005 {| 49, 59-60, 69—
`
`70). Petitioner also presents evidence that the SLS platform’s local switch
`
`providesthat information to the SLS platform.
`
`/d. at 34—40 (citing Ex. 1002
`
`{il 19-26, 78-80, 82; Ex. 1005 J] 34-35, 39-40; Ex. 1007 91 4, Fig. 1A; Ex.
`
`1011, 6-7, 62-63, 81-82). Patent Ownerarguesthat Petitioner does not
`
`show sufficiently that Backhausdiscloses this limitation of claim 1. We
`
`address Patent Owner’s argumentbelow.
`
`Claim 1 recites “receiving, at the switch, information from the server
`
`directing the switch to: (a) connect the outgoingcall to the contact telephone
`
`numberof the secondary telephone numberandcontact telephone number
`
`pairing, and (b) identify a telephone number from which the outgoing call is
`
`being madeasthe secondary telephone number.” Ex. 1001, 10:33—40.
`
`Petitioner presents evidence that Backhaus’s SLSplatform provides
`
`information for connecting the outgoing call to the third party number and
`
`identifying the outgoing call as made from the SLS number. Pet. 40-44
`
`(citing Ex. 1005 {| 60, 70). Petitioner also presents evidencethat the SLS
`
`platform providesthat informationto its local switch. Jd. at 34-44 (citing
`
`Ex. 1002 {| 19-26, 78-80, 84, 86; Ex. 1005 Jf 34-35, 39-40; Ex. 1007 4,
`
`Fig. 1A; Ex. 1011, 6-7, 62—63, 81-82). Patent Ownerarguesthat Petitioner
`
`does not show sufficiently that Backhausdisclosesthis limitation of claim 1.
`
`Weaddress Patent Owner’s argument below.
`
`Patent Ownerarguesthat the three abovelimitations of claim 1
`
`“require[] the same ‘switch’ to send or receive information related to the
`
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`call,” and Petitioner’s “inherency argumentfails because using the same
`
`switch to perform all three limitations is merely a possibility or a
`
`probability.” Prelim. Resp. 5—12. Specifically, Patent Owner contendsthat
`
`Petitioner “does not offer any reason why Backhaus would necessarily use
`
`the same switch (as required by the claims), rather than using multiple
`
`switches in the network (as was known in the art).” Jd. at 7. For example,
`
`according to Patent Owner, the evidenceof recordindicates that “multiple
`
`switches,” including “at least one intermediate node,” can be used to route
`
`signals.
`
`Id. at 7-9 (citing Ex. 1007, Fig. 1A; Ex. 1011, 40,53). Patent
`
`Owneralso contendsthat “Backhausteachesthat the SLS platform may be
`
`connected to the subscriber’s device by ‘a first provider network’... , anda
`
`[person of ordinary skill in the art (“POSITA”)] would havereadily
`
`understood that provider networkscould span vastdistances(e.g., across the
`
`US), such that the two endsof a call would not necessarily use the same
`
`‘local’ switch.” 7d. at 10 (citing Ex. 1005] 38).
`
`Onthis record, Patent Owner’s argumentis unavailing. Petitioner
`
`presents evidencethat each telecommunication device or server necessarily
`
`accesses a PSTN using its own local switch. Ex. 1002 4 79 (“A local SSPis
`
`a switch that connects to a telecommunication device or serverso as to allow
`
`the device/server to access the PSTN.”); Ex. 1007, Fig. 1A (showinga local
`
`switch 12 associated with server 50); Ex. 1011, 6—7 (“the calling party’s
`
`local switch .
`
`.
`
`. the called party’s local switch’). Thus, because Backhaus’s
`
`SLSplatform accesses the PSTN usingits own local switch, the same local
`
`switch that receives an outgoing call from the subscriber TD also routes the
`
`outgoing call from the SLS platform to the third party device. Ex. 1002] 79
`
`(“a local switch .
`
`.
`
`. necessarily receives the outgoing calls before routing the
`
`18
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`same to SLS platform 115”’); id. [84 (‘the local switch . .. route[s] the call
`
`to the third party”). Evenif Patent Owneris correct that Backhaus’s PSTN
`
`also includes additional intermediate switches for completing the outgoing
`
`call, we do not find any language in claim | that prohibits such additional
`
`switches. See Ex. 1001, 10:26—40.
`
`Forthe foregoing reasons, on this record, Petitioner showssufficiently
`
`that Backhausdiscloses the limitations of claim 1.
`
`2. Claims 2 and 4
`
`Dependent claims 2 and 4 depend from claim 1. Petitioner presents
`
`evidence that Backhausdiscloses the limitations of claims 2 and 4. Pet. 44—
`
`45. Other than the arguments discussed abovefor claim 1, Patent Owner
`
`does not dispute that Backhausdisclosesthe limitations of claims 2 and 4.
`
`Prelim. Resp. 16. On this record, Petitioner showssufficiently that
`
`Backhausdisclosesthe limitations of claims 2 and 4.
`
`3. Summary
`
`For the foregoing reasons, Petitioner demonstrates a reasonable
`
`likelihood of prevailing in showingthat claims 1, 2, and 4 are anticipated by
`
`Backhaus.
`
`E. Obviousness of Claim 3 over Backhaus and Saksena
`
`Petitioner argues that claim 3 would have been obvious over
`
`Backhausand Saksena. Pet.45—50. Petitioner identifies evidence indicating
`
`that the Backhaus and Saksena combination teaches the limitations of claim
`
`3, and that a person of ordinary skill in the art would have had reason to
`
`combine these references. Jd. Other than the arguments discussed above,
`
`Patent Ownerdoesnot raise any argumentsrelating to this asserted ground.
`
`Prelim. Resp. 16. On this record, Petitioner demonstrates a reasonable
`
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`likelihood of prevailing in showingthat claim 3 would have been obvious
`
`over Backhausand Saksena.
`
`F. Obviousness of Claims 1, 2, and 4 over Backhaus and Taylor
`
`Petitioner arguesthat claims 1, 2, and 4 would have been obvious over
`
`Backhausand Taylor. Pet. 50-54. Petitioner identifies evidence indicating
`
`that the Backhausand Taylor combination teachesthe limitations of claims
`
`1, 2, and 4, and that a person of ordinary skill in the art would have had
`
`reason to combine these references. Jd. In particular, Petitioner asserts that
`
`“to the extent Backhausis read not to disclose the claimed ‘switch,’ it would
`
`have been obvious to modify Backhaus. .. to implement a PSTNinterface
`
`in light of Taylor and a POSITA’s contemporaneous knowledge.” Jd. at 54
`
`(citing Ex. 1002 7 99).
`
`Patent Ownerarguesthat Petitioner “relies on Taylor in relation to the
`
`‘switch,’” but Petitioner “does not even attempt to show that it would have
`
`been obviousto use the same switch for the functionalities listed in” the
`
`three limitations of claim 1 that include the switch. Prelim. Resp. 16—19.
`
`On this record, Patent Owner’s argumentis unavailing. As discussed above,
`
`Petitioner presents evidence that each telecommunication device or server
`
`necessarily is connected toa PSTN byits ownlocal switch. Ex. 1002 7 79;
`
`Ex. 1007, Fig. 1A; Ex. 1011, 6-7. Thus, because Backhaus’s SLS platform
`
`is connected to the PSTNbyits own local switch, the same local switch that
`
`receives an outgoing call from the subscriber TD also routes the outgoing
`
`call from the SLSplatform to the third party device. Ex. 1002 {{] 79, 84.
`
`Forthe foregoing reasons, on this record, Petitioner showssufficiently
`
`that the Backhausand Taylor combination teachesthe limitations of
`
`claims 1, 2, and 4.
`
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`G. Obviousness of Claim 3 over Backhaus, Saksena, and Taylor
`
`Petitioner argues that claim 3 would have been obvious over
`
`Backhaus, Saksena, and Taylor. Pet. 50—54. Petitioner identifies evidence
`
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