Dialpad Inc v. Flypsi Inc

1. Case Identification

• Case #: IPR2022-01048
• Patent #: 10,334,094
• Filed: June 16, 2022
• Petitioner(s): Dialpad, Inc.
• Patent Owner(s): Flypsi, Inc.
• Challenged Claims: 1-4, 9-12

2. Patent Overview

• Title: Method and Apparatus for Providing Telephone Service
• Brief Description: The ’094 patent describes a method for providing a second telephone number service on a single handset. The system uses a data channel (e.g., IP) to transmit call handling information between the handset and a server, and a separate voice channel (e.g., CDMA/GSM) to transmit the actual voice call.

3. Grounds for Unpatentability

Ground 1: Claims 1-4 and 9-12 are obvious over Backhaus.

• Prior Art Relied Upon: Backhaus (Application # 2013/0295892).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Backhaus teaches a complete method for providing a second line service (SLS) that meets all limitations of the challenged claims. Backhaus’s SLS platform, associated with a server and database, automatically stores an association between a subscriber's primary number and a secondary (SLS) number on a specific handset. The system also automatically associates a unique “relationship number” (a bridge/access number) with each of the subscriber’s third-party contacts. When an outbound call is placed, the handset calls the relationship number over a voice channel (e.g., PSTN or cellular), which constitutes a second channel distinct from the data channel used for setup. The SLS server receives this call via an associated switch, uses the incoming primary number and the called relationship number to look up the intended third-party number, and then connects the call while populating the caller ID field with the subscriber's secondary (SLS) number.
  • Motivation to Combine (for §103 grounds): Not applicable for a single-reference challenge. Petitioner contended that any minor variations, such as the specific use of a switch or the automatic nature of database updates, would have been obvious implementations of the system described in Backhaus.
  • Expectation of Success (for §103 grounds): Not applicable.

Ground 2: Claims 1-4 and 9-12 are obvious over Backhaus in view of Wilson.

• Prior Art Relied Upon: Backhaus (Application # 2013/0295892) and Wilson (U.K. Application # GB 2,454,886).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground asserted that Backhaus provides the foundational second-line service architecture, while Wilson provides specific, well-known teachings for implementing the call switching and routing functions in a cellular environment. Wilson discloses a Voice Services Equipment (VSE) server, analogous to Backhaus’s SLS server, that works with a Mobile Switching Center (MSC) to provide a second-number service. Wilson explicitly teaches the MSC (a switch) receiving a call request from a handset, identifying a special prefix indicating a second-number call, and routing that call to the VSE server. The VSE server then instructs the MSC to connect the call to the third party while modifying the caller ID to display the secondary number. This combination, Petitioner argued, explicitly discloses the switch-related limitations of the claims.
  • Motivation to Combine (for §103 grounds): A POSITA would combine the references because Backhaus teaches a general system and expressly relies on "methods known and understood by those of ordinary skill" for call connection over cellular networks. Wilson provides exactly such a well-known, conventional method using an MSC. Both references solve the same problem of providing a private second line on a mobile phone, making their teachings complementary and their combination logical to improve Backhaus's system with a concrete, widely used call-handling mechanism.
  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success, as the combination involves applying a standard cellular switching technology (Wilson's MSC) to a telephone service platform (Backhaus's SLS) to achieve the predictable result of routing calls.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under Fintiv would be inappropriate. The Western District of Texas trial date was uncertain, and the court had invested minimal effort in the invalidity case. Critically, Petitioner filed a stipulation agreeing not to pursue the same invalidity grounds in district court if the IPR is instituted. This stipulation, along with the fact that claims 9-12 are challenged in the IPR but are not at issue in the co-pending litigation, was argued to weigh heavily in favor of institution. Petitioner also contended that denial under §325(d) was improper because the asserted prior art was never considered during the original prosecution of the ’094 patent.

5. Relief Requested

• Petitioner requests institution of inter partes review and cancellation of claims 1-4 and 9-12 of the ’094 patent as unpatentable.