Google LLC v. Flypsi Inc

1. Case Identification

• Case #: IPR2023-00360
• Patent #: 9,667,770
• Filed: January 10, 2023
• Petitioner(s): Google LLC
• Patent Owner(s): Flypsi, Inc.
• Challenged Claims: 1-6

2. Patent Overview

• Title: Method of Providing Telephone Service
• Brief Description: The ’770 patent describes a method for setting up and connecting phone calls by using a data channel to transmit pre-call information and a separate voice channel to deliver the voice portions of the call. The method facilitates the use of secondary telephone numbers associated with a primary handset.

3. Grounds for Unpatentability

Ground 1: Claims 1-5 are obvious over Backhaus in view of Logan.

• Prior Art Relied Upon: Backhaus (Application # 2013/0295892) and Logan (Application # 2010/0128857).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Backhaus teaches the core limitations of claim 1, including associating a secondary telephone number with a handset's primary number and using a "relationship number" (the claimed "bridge telephone number") to route calls through a server platform. This allows the user to make and receive calls with the secondary number. However, Petitioner contended Backhaus does not explicitly teach acquiring user-defined call processing rules from the handset over a data channel. Logan allegedly supplies this missing element by disclosing a system where a user enters call forwarding preferences on a handset via an internet-based application, which are then transmitted to a server to control call routing based on factors like user location or time of day.
  • Motivation to Combine: A POSITA would combine Logan’s user-configurable rules with Backhaus’s dual-number system to create a more desirable and feature-rich service. This combination would predictably allow users to set different call handling rules for their business (secondary) number versus their personal (primary) number and would enable server-based call handling (e.g., forwarding to voicemail) when the handset is turned off or otherwise unavailable.
  • Expectation of Success: Petitioner asserted that a POSITA would have a high expectation of success. The constituent technologies—server-based call routing, user-preference menus on mobile devices, and transmitting configuration data over an IP network—were all well-known and their combination would yield predictable results.

Ground 2: Claim 6 is obvious over Backhaus, Logan, and Saksena.

• Prior Art Relied Upon: Backhaus (Application # 2013/0295892), Logan (Application # 2010/0128857), and Saksena (Application # 2006/0077956).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addresses claim 6, which depends from claim 5 and adds the limitation that the voice channel is established using a Code Division Multiple Access (CDMA) or Global System for Mobiles (GSM) standard. Petitioner argued that while the Backhaus/Logan combination teaches the base method involving a mobile device, it is silent on the specific cellular network standard. Saksena, which describes providing telephony services to mobile devices, explicitly discloses that cellular networks may operate using either CDMA or GSM standards.
  • Motivation to Combine: A POSITA implementing the system of Backhaus and Logan would be motivated to use a standard wireless protocol like CDMA or GSM. Because these were the dominant, commercially available mobile communication standards at the time, using one of them was an obvious design choice to ensure the resulting device would be compatible with existing cellular networks.
  • Expectation of Success: Petitioner contended success would be certain, as implementing a voice channel over standard CDMA or GSM networks was a routine and fundamental aspect of mobile device design at the time of the invention.

• Additional Grounds: Petitioner asserted additional obviousness challenges (Grounds 3-4) based on the above combinations further in view of Taylor (Application # 2009/0052437). Taylor was introduced to provide an explicit teaching of a computer telephony server with a PSTN interface acting as the claimed "switch," in the event the switch disclosed in Backhaus was found to be integral to the PSTN rather than a separate component.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate under both 35 U.S.C. §325(d) and the Fintiv factors.
• Regarding §325(d), Petitioner noted this is its first IPR petition challenging the ’770 patent. A prior IPR filed by an unrelated third party was terminated before a preliminary response or institution decision, meaning the Board has not previously considered the asserted prior art.
• Regarding discretionary denial under Fintiv, Petitioner argued the factors weigh against denial. It asserted that the co-pending district court case is in its early stages, minimizing any investment overlap. Further, it noted that the median time-to-trial in the district court is not substantially earlier than the projected date for a Final Written Decision in this IPR. Crucially, Petitioner stipulated that if the IPR is instituted, it will not pursue the same invalidity grounds in the district court litigation, which weighs heavily against denial.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-6 of the ’770 patent as unpatentable.