PTAB

IPR2023-00358

Google LLC v. Flypsi Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Providing Telephone Service
  • Brief Description: The ’094 patent discloses methods for providing telephone service by associating a secondary telephone number with a primary telephone number on a handset. The system uses a data channel for call setup and management with a server, and a separate voice channel for the actual call audio.

3. Grounds for Unpatentability

Ground 1: Claims 1, 2, and 4 are anticipated by Backhaus

  • Prior Art Relied Upon: Backhaus (Application # 2013/0295892).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Backhaus discloses every limitation of claims 1, 2, and 4. Backhaus describes a "Second Line Service" (SLS) platform that provides a secondary number (an "SLS number") to a subscriber's device, which already has a primary number. This platform stores the association between the primary and secondary numbers in a central database on a server. Backhaus further discloses using a "relationship number"—a bridge or access number—to route calls between the subscriber and third parties, effectively acting as an intermediary. Petitioner contended this relationship number and its association with third-party contact numbers are automatically created and stored in the server's memory. Information about these associations is then transmitted to the user's handset via a data channel (e.g., IP-based interaction) for storage in a local database. For outgoing calls, the handset calls the relationship number over a voice channel (a "second channel"), which is received by a switch associated with the server. The server then processes the call, connects it to the intended third-party number, and modifies the caller ID to display the secondary SLS number, thus mapping to all steps of independent claim 1. Dependent claim 2 is allegedly met because Backhaus teaches using IP-based interaction for the data channel, and claim 4 is met because the "second channel" is a conventional voice channel over the PSTN, which is not an IP channel.

Ground 2: Claim 3 is obvious over Backhaus in view of Saksena

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

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted that Backhaus teaches every element of the base claims but is silent on the specific wireless standard used for its voice channel (the "second channel"). Claim 3 requires this channel to be established using a CDMA or GSM standard. Saksena, which describes providing telephony services across different networks, explicitly discloses that mobile devices may operate using either GSM or CDMA standards to establish a voice channel.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) implementing the mobile telephony system of Backhaus would combine its teachings with Saksena because CDMA and GSM were the dominant, well-known telecommunication standards for mobile devices at the time. To provide a functional voice channel for the mobile handsets described in Backhaus, a POSITA would have naturally and obviously looked to these standard protocols.
    • Expectation of Success: A POSITA would have a high expectation of success in implementing a CDMA or GSM voice channel in the Backhaus system. This would involve applying known mobile communication protocols to a known type of telephony system to achieve the predictable result of a functional mobile voice call.

  • Additional Grounds: Petitioner asserted additional obviousness challenges (Grounds 3 and 4) by adding Taylor (Application # 2009/0052437) to the foregoing combinations. Taylor was introduced to argue that, to the extent the "switch" in the claims is interpreted as a device separate from the PSTN, Taylor's disclosure of a computer telephony server with a distinct PSTN interface would have made it obvious to implement such a switch in the Backhaus system.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial of institution under 35 U.S.C. §325 would be improper because a prior inter partes review (IPR) on the ’094 patent was filed by an unrelated party and was terminated before any preliminary response or institution decision.
  • Petitioner further argued that denial under Fintiv is not warranted. It asserted that the district court case is in its early stages with minimal investment, and the projected IPR final written decision would issue around the same time as the median time-to-trial in the district. Crucially, Petitioner stipulated that if the IPR is instituted, it will not pursue the same invalidity grounds in the parallel district court litigation, which weighs strongly against denial.

5. Relief Requested

  • Petitioner requests institution of an IPR and cancellation of claims 1-4 of the ’094 patent as unpatentable.