PTAB

IPR2022-01049

Dialpad Inc v. Flypsi Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method of Providing Telephone Service
  • Brief Description: The ’105 patent describes a method for providing telephone service by transmitting call handling information between a handset and a switch using a data channel (e.g., IP), and separately transmitting the associated voice call using a standard voice channel (e.g., CDMA, GSM). The method involves a server that stores associations between a primary telephone number and one or more secondary telephone numbers assigned to a handset.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 2-11 over Backhaus and Burg

  • Prior Art Relied Upon: Backhaus (Application # 2013/0295892) and Burg (European Patent No. EP1119168).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Backhaus discloses a Second Line Service (SLS) platform where a server manages calls to a secondary number, associates it with a user's primary number, and uses "relationship numbers" (bridge numbers) to connect calls. Burg discloses a solution for cellular networks that could not handle simultaneous voice and data (e.g., CDMA). Burg teaches sending an incoming call alert over a data channel to a handset that is busy with a data session; to accept the call, the handset initiates a new outbound call to a bridge number, which is then connected to the original incoming call. Petitioner contended that Backhaus teaches the core system of claim 2, including a server retrieving a bridge number from a database in response to an incoming call to a secondary number. The combination with Burg teaches transmitting this bridge number as pre-call information over a data channel, allowing the handset to accept the incoming call by making a bridge call via a switch.
    • Motivation to Combine: A POSITA would combine Burg’s teachings with Backhaus’s SLS system to solve a known problem: allowing subscribers to receive calls to their secondary number even when their handset was using data on a network that lacked simultaneous voice and data capabilities. This combination would enhance the functionality of the Backhaus system using a known technique for a predictable result.
    • Expectation of Success: Petitioner asserted a high expectation of success, as the combination involved applying a known call-handling technique (from Burg) to a standard second-line service architecture (from Backhaus). Both references utilize servers, switches, data channels, and bridge numbers, making their integration straightforward for a POSITA.

Ground 2: Obviousness of Claim 1 over Backhaus and Logan

  • Prior Art Relied Upon: Backhaus (Application # 2013/0295892) and Logan (Application # 2010/0128857).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted that claim 1 recites automatically storing associations and call processing rules for primary and secondary numbers on a server, which then handles incoming calls according to those rules. Backhaus was argued to teach the foundational system of automatically storing associations between primary and secondary numbers in a server database. Logan was asserted to teach the remaining limitations by disclosing a system for forwarding calls to virtual (secondary) numbers based on customizable, user-defined call processing rules (e.g., based on time, location, or caller ID). Logan teaches that these user preferences are stored on a server and automatically accessed and applied when an incoming call is received.
    • Motivation to Combine: A POSITA would be motivated to incorporate Logan's advanced call-handling features into Backhaus's basic SLS system to provide a more flexible and powerful service. Offering customizable call-processing rules was a common and desirable feature in telephony services by 2013, and adding such functionality to the Backhaus server would have been a predictable and valuable improvement.
    • Expectation of Success: Success was expected because both systems rely on a similar client-server architecture for managing virtual numbers. Integrating Logan's software-based call processing algorithms into the Backhaus server infrastructure would be a simple addition of known software elements to a known hardware platform to achieve predictable improvements in functionality.

  • Additional Grounds: Petitioner asserted that claim 1 is also obvious over the three-way combination of Backhaus, Logan, and Burg, arguing that the motivations to combine are the same as those for the two-reference grounds and that Burg’s teachings on switches further reinforce the obviousness of the claimed method.

4. Key Claim Construction Positions

  • "pre-call information": Petitioner argued a POSITA would understand this term to mean "information received by a handset before or during a notification for a call." This construction is based on the patent's specification and is important for establishing that the bridge number transmitted to the handset constitutes "pre-call information."
  • "electronic information that indicates an association of a secondary telephone number and a primary telephone number with a telephone handset": Petitioner proposed this term is satisfied by associating a secondary number with a primary number that is assigned to a handset. This construction is central to mapping Backhaus, which discloses databases linking secondary SLS numbers to the primary numbers of subscribers' handsets.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv would be inappropriate. The trial date in the parallel Western District of Texas litigation was April 3, 2023, but Petitioner contended this date was uncertain given the court's busy docket. Petitioner asserted that the district court had invested minimal effort in the invalidity issues, weighing against denial. Critically, Petitioner filed a stipulation agreeing not to pursue in district court any ground raised or that reasonably could have been raised in the IPR, which it argued weighs strongly in favor of institution. Petitioner also noted that the prior art in the petition was not considered during the patent's original prosecution, further supporting review.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-11 of the ’105 patent as unpatentable under 35 U.S.C. §103.