Google LLC v. Flypsi Inc

1. Case Identification

• Case #: IPR2023-00361
• Patent #: 10,051,105
• Filed: January 10, 2023
• Petitioner(s): Google LLC
• Patent Owner(s): Flypsi, Inc.
• Challenged Claims: 1-11

2. Patent Overview

• Title: Method for Providing Telephone Service with Multiple Numbers
• Brief Description: The ’105 patent describes a method for providing telephone service to a handset that has both a primary and a secondary telephone number. The system uses a server to store call processing rules and manage incoming calls to either number, including connecting calls using a bridge telephone number.

3. Grounds for Unpatentability

Ground 1: Claim 1 is 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 discloses the core elements of claim 1, including a method for providing a second line service (SLS) where a server platform associates a secondary number with a handset's primary number. Backhaus’s server receives incoming calls to the secondary number and connects them. To the extent Backhaus was found not to disclose automatically storing user-selected call processing rules (e.g., voicemail preferences), Petitioner asserted Logan teaches this element. Logan describes a system where a user can set preferences on their device (e.g., based on time or location) which are transmitted to and stored on a server to determine how to route incoming calls, such as forwarding them to voicemail.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Logan’s server-based call processing with Backhaus’s multi-number system to enhance its functionality. It would have been beneficial and predictable to allow the server in Backhaus to handle call routing (like sending to voicemail) when the handset is unavailable, a feature Logan teaches is highly desirable for managing calls to different numbers (e.g., business vs. personal) on a single device.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in this combination. It involved applying known server-side call-forwarding and voicemail technologies, as taught by Logan, to the known multi-number architecture of Backhaus to yield the predictable result of more robust call management.

Ground 2: Claims 2-4 and 6-11 are obvious over Backhaus in view of Winbladh

• Prior Art Relied Upon: Backhaus (Application # 2013/0295892) and Winbladh (Application # 2009/0310598A).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addresses claims requiring the use of a "bridge telephone number" to complete calls. Petitioner contended Backhaus discloses the foundational system, where its "relationship number" functions as the claimed bridge number, retrieved by a server from a database to connect an incoming call to the handset via a switch. To the extent Backhaus did not fully teach using this bridge number to accept an incoming call, Petitioner asserted Winbladh supplies the missing element. Winbladh describes a system that, to reduce costs, allows a user to reconnect a disconnected call leg by making a new call to a predefined "bridge" number, which the system then uses to re-establish the connection.
  • Motivation to Combine: A POSITA would combine Winbladh's call-back method with Backhaus's system to achieve cost savings, particularly for long-distance calls. Winbladh explicitly teaches its call-back feature allows a connection to be re-established at a lower local-call rate. Implementing this known, cost-efficient feature into Backhaus's two-legged call connection system would have been a desirable and logical improvement.
  • Expectation of Success: Success would have been expected because both systems rely on a similar architecture of using a central server and database to manage two-legged call connections. Integrating a known call-back technique for cost reduction into such a system was a predictable application of known telecommunication principles.

Ground 3: Claim 5 is obvious over Backhaus in view of Winbladh and Logan

• Prior Art Relied Upon: Backhaus (Application # 2013/0295892), Winbladh (Application # 2009/0310598A), and Logan (Application # 2010/0128857).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground builds on the Backhaus and Winbladh combination to address claim 5, which adds the limitation of receiving user input at the handset regarding call handling choices (e.g., send to voicemail, drop call). Petitioner argued that Logan teaches this functionality. Logan discloses that a user can receive a pending call and activate a command on the handset to forward or decline it, with that selection being communicated to the server for execution.
  • Motivation to Combine: A POSITA would be motivated to add Logan’s user-selectable call handling features to the system established by Backhaus and Winbladh. This would provide the user with greater control over incoming calls in real-time, which is a common and expected feature in modern telephony systems. The motivation is to improve the user experience by adding flexible, on-the-fly call management options.
  • Expectation of Success: A POSITA would have expected success in adding user-input call handling to the combined Backhaus/Winbladh system. The integration involved standard user interface inputs communicating with a network server, a well-understood paradigm in telecommunications.

• Additional Grounds: Petitioner asserted additional obviousness challenges (Grounds 4-6) based on adding Taylor (Application # 2009/0052437A1) to each of the combinations in Grounds 1-3. Taylor was cited to explicitly teach a computer telephony server with a distinct PSTN interface, which Petitioner argued would render obvious the claimed "switch" if the primary combinations were found not to disclose it.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) was inappropriate because a previously filed IPR on the ’105 patent was filed by an unrelated third party and was terminated before any preliminary response or institution decision.
• Petitioner further argued against discretionary denial under Fintiv, asserting that the relevant factors weigh in favor of institution. Petitioner contended that the district court case is in its early stages, a stay is likely, the trial date and the projected Final Written Decision date are proximate, and Petitioner stipulated it would not pursue the same invalidity grounds in district court if the IPR is instituted.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-11 of the ’105 patent as unpatentable.