Google LLC v. Flypsi Inc

1. Case Identification

• Case #: IPR2023-00357
• Patent #: 11,218,585
• Filed: January 10, 2023
• Petitioner(s): Google LLC
• Patent Owner(s): Flypsi, Inc.
• Challenged Claims: 1-4

2. Patent Overview

• Title: Providing Telephone Service
• Brief Description: The ’585 patent describes a method for providing telephone service by associating a secondary telephone number with a mobile device's primary number. The system uses a data channel to transmit an access number to the device and a separate voice channel to handle call routing through a server, allowing outgoing calls to appear as if originating from the secondary number.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1, 2, and 4 by Backhaus

• Prior Art Relied Upon: Backhaus (Application # 2013/0295892).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Backhaus disclosed every limitation of claims 1, 2, and 4. Backhaus described a "Second Line Service" (SLS) platform that provided a secondary number (an "SLS number") to a subscriber's mobile device, which already had a primary number. The system stored this association in a central server database. For outgoing calls, the mobile device used a "relationship number" (the claimed "access telephone number") to route the call to the SLS platform over a communications network (the claimed "second channel," such as the PSTN). The platform would then recognize the incoming call was from the subscriber's primary number to the relationship number, and in response, complete the call to the third party while populating the calling line ID with the subscriber's secondary SLS number. Petitioner asserted Backhaus met claim 2's "IP channel" limitation by disclosing "IP-based interaction" for data communications, and met claim 4's "not an IP channel" limitation for the second channel by disclosing use of the PSTN, which operates on protocols like SS7.
  • Key Aspects: The core of the argument was a direct mapping of Backhaus's SLS system architecture and call flow to the steps recited in claim 1.

Ground 2: Obviousness of Claim 3 over Backhaus and Saksena

• Prior Art Relied Upon: Backhaus (Application # 2013/0295892) and Saksena (Application # 2006/0077956).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that claim 3, which requires the "second channel" of claim 2 to be established via a CDMA or GSM standard, was obvious over the combination. Backhaus disclosed using a voice channel over a cellular network or PSTN as the second channel but was silent on the specific mobile telecommunication standard used. Saksena, which described a similar telephony service system, explicitly taught that mobile devices operate on cellular networks using prevailing standards, including GSM and CDMA.
  • Motivation to Combine: A POSITA implementing the system in Backhaus would be motivated to use the well-known and widely adopted CDMA or GSM standards taught by Saksena. Doing so was a common design choice to ensure compatibility with existing mobile devices and carrier networks, making the resulting system commercially viable and functional. The choice represented one of a finite number of identified, predictable solutions.
  • Expectation of Success: A POSITA would have had a high expectation of success. Integrating a known call routing method like that in Backhaus with a standard mobile communication protocol like CDMA or GSM was a routine task involving the application of known technologies to yield a predictable result.

• Additional Grounds: Petitioner asserted additional obviousness challenges (Grounds 3 and 4) by adding Taylor (Application # 2009/0052437) to the combinations above. These grounds were presented as a fallback, arguing that to the extent Backhaus's "switch" was not considered a device separate from the PSTN, Taylor explicitly disclosed a computer telephony server with a distinct PSTN interface that functioned as the claimed switch.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate. Against denial under §325(d), Petitioner contended that although Backhaus was cited in an Information Disclosure Statement during prosecution, it was submitted late and was never substantively applied or discussed by the Examiner.
• Against discretionary denial under Fintiv, Petitioner argued the factors weighed against denial. The parallel district court case was in its early stages, and the median time-to-trial in the district was over 28 months, creating no conflict with the IPR timeline. Further, Petitioner stipulated that if the IPR was instituted, it would not pursue the same invalidity grounds in the district court litigation, promoting system efficiency.

5. Relief Requested

• Petitioner requested institution of an IPR and cancellation of claims 1-4 of the ’585 patent as unpatentable.