PTAB

IPR2022-01050

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 ’554 patent describes a method for providing a secondary telephone number service on a mobile device. The method involves transmitting call handling information between the device and a server over a data channel (e.g., an IP channel) while transmitting the associated voice call over a separate voice channel (e.g., a cellular network).

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 discloses all limitations of the challenged claims. Backhaus teaches a Second-Line Service (SLS) where a server automatically stores an association between a primary number and a secondary (SLS) number in a database (claim 1a). When a user makes an outgoing call to a new third party, the SLS platform automatically generates and transmits a unique "relationship number" (an access number) to the user's mobile device via a data channel (claim 1b). This relationship number is automatically associated with a switch used by the SLS platform (claim 1c). The user's device then places a voice call to this relationship number, which is received by the platform's switch (claim 1d). The server receives call signaling data from the switch, identifying the user's primary number as the caller and the relationship number as the called number (claim 1e). Finally, the server instructs the switch to connect the call to the intended third party while identifying the secondary (SLS) number as the caller ID (claim 1f).
    • Motivation to Combine: Not applicable (single reference ground). Petitioner contended that a person of ordinary skill in the art (POSITA) would find it obvious to implement the claimed method based on Backhaus's express teachings for providing a commercial second-line phone service.
    • Expectation of Success: Not applicable (single reference ground). Petitioner asserted that Backhaus provides a complete system and that implementing its teachings, such as using a switch for call routing over a Public Switched Telephone Network (PSTN), was standard and well-understood.

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: Petitioner asserted that Backhaus provides the foundational system for a second-line service but relies on "methods known and understood by those of ordinary skill" for the underlying call connection mechanics. Wilson was argued to supply these known details. Wilson teaches a method for maintaining the privacy of a primary number by using a secondary number, employing a server called a Voice Services Equipment (VSE) and a Mobile Switching Center (MSC), which is a switch. The combination explicitly teaches a switch (Wilson's MSC) associated with a server (Backhaus's SLS server, analogous to Wilson's VSE) for processing calls in a second-line service. Wilson's use of a prefix flag dialed by the user to route a call through the VSE was presented as analogous to Backhaus's "relationship number," demonstrating the claimed method of using an access number to connect a call via a server.
    • Motivation to Combine: A POSITA would combine the references to implement the call handling functionality that Backhaus describes at a high level. Backhaus expressly motivates using known mechanisms for voice calls over cellular and PSTN networks. Wilson provided a well-known, simple, and effective technique using an MSC to allow a server to make, receive, and connect calls for a second-line service, which is precisely the functionality required by the Backhaus system. Both references teach an SLS service for a mobile phone, making Wilson's teachings complementary and advantageous for implementing Backhaus.
    • Expectation of Success: A POSITA would have a reasonable expectation of success because the combination involved applying Wilson's conventional MSC teachings to implement functionality that Backhaus expressly stated was known in the art. MSCs were common components in widely used GSM networks, and combining these familiar elements to route calls would yield the predictable result of a functioning second-line service.

4. Key Claim Construction Positions

  • "electronic information that indicates an association of a secondary telephone number and a primary telephone number with a mobile device": Petitioner argued this term is satisfied by associating a secondary number with a primary number that is assigned to a mobile device. This construction was asserted to be consistent with the patent's only embodiment and necessary to map Backhaus, which stores an association between the primary and secondary numbers in a server database, where the primary number is known to belong to the subscriber's mobile device.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv would be inappropriate. The key factors cited were: (1) no motion to stay had been filed in the parallel district court litigation; (2) the trial date was uncertain, given the venue's busy docket; (3) the district court had invested minimal effort on invalidity issues; (4) Petitioner filed a stipulation agreeing not to pursue in district court any ground raised or that reasonably could have been raised in the inter partes review (IPR); and (5) the IPR challenges claims 9-12, which were not at issue in the district court case. Petitioner also argued against denial under §325(d), noting that none of the relied-upon prior art was cited or considered during the original prosecution.

6. Relief Requested

  • Petitioner requests institution of IPR and cancellation of claims 1-4 and 9-12 of the ’554 patent as unpatentable.