Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 8
`Entered: September 17, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GLOBAL TEL*LINK CORPORATION,
`Petitioner,
`
`v.
`
`SECURUS TECHNOLOGIES, INC.,
`Patent Owner.
`
`Case IPR2014-00493
`Patent 7,899,167 B1
`
`
`
`
`
`
`
`
`
`Before KEVIN F. TURNER, BARBARA A. BENOIT, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 8
`Entered: September 17, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GLOBAL TEL*LINK CORPORATION,
`Petitioner,
`
`v.
`
`SECURUS TECHNOLOGIES, INC.,
`Patent Owner.
`
`Case IPR2014-00493
`Patent 7,899,167 B1
`
`
`
`
`
`
`
`
`
`Before KEVIN F. TURNER, BARBARA A. BENOIT, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`IPR2014-00493
`Patent 7,899,167 B1
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`INTRODUCTION
`Global Tel*Link Corporation (“Petitioner”) filed a Corrected Petition
`(Paper 4, “Pet.”) requesting an inter partes review of claims 1-21 (the
`“challenged claims”) of U.S. Patent No. 7,899,167 B1 (Ex. 1001, “the ’167
`patent”). Patent Owner, Securus Technologies, Inc., filed a Preliminary
`Response. Paper 7 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C.
`§ 314(a), which provides that an inter partes review may not be instituted
`“unless . . . there is a reasonable likelihood that the petitioner would prevail
`with respect to at least 1 of the claims challenged in the petition.”
`After considering the Petition and the Preliminary Response, we
`determine that Petitioner has established a reasonable likelihood of
`prevailing on the claims challenged in the Petition. Accordingly, we
`institute an inter partes review of claims 1-21 of the ’167 patent.
`
`A. Related Matters
`Petitioner represents that the ’167 patent is involved in Securus
`Technologies, Inc. v. Global Tel*Link Corp., No. 3:13-cv-03009 (N.D.
`Tex.). Pet. 2; see also Paper 5 (Patent Owner’s Mandatory Notice).
`Petitioner also has requested inter partes review of related patents—
`U.S. Patent No. 8,577,003 B2 (IPR2014-00749), U.S. Patent
`No. 8,340,260 B1 (IPR2014-00824), and U.S. Patent No. 7,529,357 B1
`(IPR2014-00825).
`
`B. The ’167 Patent
`The ’167 patent, titled “Centralized Call Processing,” issued
`March 1, 2011 from an application filed August 15, 2003. The ’167 patent
`describes a centralized architecture for call processing that uses Voice over
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`Patennt 7,899,1667 B1
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`calling
`n at which m a location”) to carry calls from
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`Interrnet Protoccol (“VoIP
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`serviices are proovided to aa centralizeed call proocessing plaatform. Exx. 1001,
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`Absttract, 1:38--40, 3:15-117. The calll processinng platformm serves mmultiple
`all
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`facillities and pprovides, foor examplee, calling pparty identiification, ca
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`validdation, calll routing, aand connecction to thee public swwitched teleephone
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`netwwork (PSTNN) or a diggital networrk. Id. at AAbstract. TThe call prrocessing
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`platfform may bbe used to provide caalling serviices to prisson facilitiees. Id. at
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`5:53-56.
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`Figure 1
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` of the ’1667 patent iss set forth bbelow:
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`Figure 1 illustrates ccall proces
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`sing systemm 100.
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`Call processing system 100 includes call processing platform 101,
`which communicates with facilities 150, 160, 170, 180 through network 130.
`Id. at 5:41-44. Call processing gateways 140, at or near each facility 150,
`160, 170, 180, convert analog signals associated with telephone
`terminals 141 (or visitation telephones 143) to digital data packets sent over
`network 130. Id. at 6:10-15.
`Call processing platform 101 includes, among other components, call
`application management system 110, which controls completing a call
`between a party using one of telephone terminals 141 (or visitation
`telephones 143) and another party using telephone terminal (not shown),
`over PSTN 192 or digital network 191. Id. at 8:9-65. Call processing
`system 101 also includes unauthorized call activity detection system 114 to
`detect establishment of an unauthorized three-way call. Id. at 9:31-48.
`Billing system 112 collects billing information and deducts fees from
`prepaid accounts. Id. at 11:56-67.
`
`C. Challenged Claims
`Of the challenged claims in the ’167 patent, claims 1 and 17 are
`independent. Claim 1, reproduced below, is illustrative of the claimed
`subject matter:
`1. A centralized call processing system for providing call
`processing services
`to a plurality of prison
`facilities,
`comprising:
`a networking device connected via digital data links to
`call processing gateways at the plurality of prison facilities to
`collect outgoing Voice over Internet Protocol (VoIP) data
`packets associated with calls from the plurality of prison
`facilities and
`to distribute
`incoming VoIP data packets
`associated with the calls to the plurality of prison facilities, the
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`plurality of prison facilities located remotely from the call
`processing system, each of the plurality of prison facilities
`including at least one telephone terminal;
`an unauthorized call activity detection system co-located
`with the networking device and connected to the networking
`device for detecting three-way call activity associated with the
`calls placed from one or more of the plurality of telephone
`terminals, the three-way call activity detection not performed at
`the plurality of the prison facilities;
`a call application management system co-located with the
`networking device and connected to the networking device and
`the unauthorized call activity detection system for at least
`processing the outgoing VoIP data packets from the plurality of
`prison facilities into outgoing call signals and transmitting the
`outgoing call signals to a first telephone carrier network, the
`call application management system receiving incoming call
`signals from the first telephone carrier network and processing
`the incoming call signals into the incoming VoIP data packets
`for distribution to the plurality of prison facilities by the
`networking device; and
`a billing system co-located with said call application
`management system and located remotely from the call
`processing gateways, the billing system connected to the call
`application management system for providing accounting of the
`calls.
`Ex. 1001, 18:58-19:27.
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`D. Asserted Grounds of Unpatentability
`Petitioner contends the challenged claims are unpatentable based on
`the following grounds:
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`Reference(s)
`Spadaro1
`Spadaro and Hodge2
`Spadaro and Bellcore3
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`Bellcore and Hodge
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`Basis
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`§ 103
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`§ 103
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`§ 103
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`§ 103
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`Claim(s) challenged
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`1-7, 12, 14-19, 21
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`8-11, 20
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`13
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`1-21
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`ANALYSIS
`A ground of unpatentability can be instituted only if the petition
`supporting the ground demonstrates that there is a reasonable likelihood that
`at least one challenged claim is unpatentable. 37 C.F.R. 42.108(c). In the
`analysis that follows, we discuss facts as they have been presented thus far
`in this proceeding. Any inferences or conclusions drawn from those facts
`are neither final nor dispositive of any issue related to any ground on which
`we institute review.
`
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their broadest reasonable constructions in light of
`the specification of the patent in which they appear. See 37 C.F.R.
`§ 42.100(b); see also Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,766 (Aug. 14, 2012). Under the broadest reasonable construction
`
`
`1 U.S. Patent No. 7,505,406 B1, issued Mar. 17, 2009, filed July 13, 2001
`(Ex. 1004) (“Spadaro”).
`2 U.S. Patent No. 7,333,798 B2, issued Feb. 19, 2008, filed Aug. 8, 2002
`(Ex. 1005) (“Hodge”).
`3 BELLCORE, Voice Over Packet in Next Generation Networks: An
`Architectural Framework, Special Report SR-4717, Issue 1 (Jan. 1999)
`(Ex. 1006) (“Bellcore”).
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`standard, claim terms are presumed to be given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in the
`context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
`1257 (Fed. Cir. 2007).
`We have considered the claim terms that the parties identify for
`construction. See Pet. 8; Prelim. Resp. 12. We have determined no terms in
`the challenged claims require express construction for this decision.
`
`B. Obviousness over Spadaro
`Petitioner contends claims 1-7, 12, 14-19, and 21 would have been
`obvious under § 103 over Spadaro. Pet. 9-26. Petitioner provides
`explanations and claim charts specifying where claim limitations
`purportedly are disclosed or suggested in Spadaro. Id. Petitioner also relies
`on the declaration of Leonard J. Forys, Ph.D. (Ex. 1017). We determine
`Petitioner has demonstrated a reasonable likelihood that claims 1-7, 12, 14-
`19, and 21 would have been obvious over Spadaro for the reasons that
`follow.
`
`1. Spadaro
`Spadaro describes monitoring and controlling public telephone usage
`by inmates at a prison. Ex. 1004, 2:38-42. Telephones are connected to a
`control computer that establishes a connection to a telephone network, such
`as a public switched telephone network (“PSTN”). Id. at 2:48-57; see also
`id. at Fig. 1. The control computer is located at the prison and provides for
`switching, accessing, routing, timing, billing, and the control of the
`telephones at the prison. Id. at 2:45-49. As a way to control telephone
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`usagge, the conttrol compuuter includees a three-wway call deetection syystem. Id.
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`at 3:35-42; seee also Fig. 1.
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`Spadaro
`is se
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`t forth beloow:
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` describes a multiplee site telephhone systemm in Figurre 3, whichh
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`e system.
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`Figure 3 illuustrates a mmultiple sitee telephon
`See E
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`Ex. 1004, 22:25-26. FFigure 3 shhows four ssites 36, 388, 40, 42, eeach of
`44 to
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`whicch has multiple contrrol computeers 32 connnected throough hubs
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`routeer 46. Id. aat 3:53-55.. Each of tthe sites mmay be a priison in a sttate-wide
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`prisoon system. Id. at 3:61-62. Callls from eacch of the foour sites arre routed
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`fromm each site’’s router 466 to server 48, whichh connects
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`the calls too central
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`officce 34. Id. aat 3:55-57.. Spadaro describes oobtaining llower cost
`and
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`ver Ethernshown in FFigure 3 ov
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`efficciency by ooperating thhe system
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`Voicce over Inteernet Protoocol (“VoIP”) networrks. Id. at
`3:58-62.
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`functions,
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`Spadaro also descrribes telephhone systemms in whicch control
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`over an
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`incluuding the bbilling funcction, are ddistributed
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`to a remotte location
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`Etheernet netwoork (id. at 44:4-10; Figg. 4) and ovver a netwwork that inncludes botth
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`VoIPP and data (id. at 2:300-31; Fig.
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`5). Spadarro’s Figuree 5 is set foorth beloww:
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`et and
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`Figurre 5 illustraates a telepphone systeem
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`that ddistributes control fuunctions to
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`remote loccation over a VoIP anand data neetwork.
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`Ex. 11004, 2:277-30, 4:4-9,, 4:25-27. Figure 5 sshows conttrol functioons—
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`routiing 22, billling 24, annd PIN checcking 28——distributeed to a locaation
`10. Id. at
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`remoote from thhe inmate ttelephones
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`4:6-10, 4:225. Spadaaro explainns
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`that an advantaage of distrributing these functioons to a remmote locatiion is that
`“the
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`functions can be cenntralized wwith the funnctions beinng performmed at a
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`centrral adminisstration loccation.” Idd. at 4:10-113.
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`0a is
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`Also furrther shownn in Figuree 5, “three--way call ddetection 3
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`movved from thhe site, i.e. in the conttrol compuuter 12 as iindicated aat 30, to a
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`poinnt beyond thhe VoIP neetwork.” IId. at 4:27--30. Spadaaro explainns that
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`VoIPP transmisssion requirres voice compressioon and packketizing, wwhich are
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`detrimental to the ability to perform three-way call detection. Id. at 4:30-32.
`“Therefore, three way call detection is performed at 30a after the telephony
`signals have been decompressed and depacketized by the VoIP
`gateway 26a.” Id. at 4:32-35.
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`2. Petitioner’s and Patent Owner’s Contentions
`Petitioner, with support from its declarant, contends that combining
`Spadaro’s “centralized call-processing used to serve multiple prison
`facilities” (as shown in Figure 3) with Spadaro’s “VoIP technology together
`with a centralized call processing system” (as shown in Figure 5) would
`have rendered obvious claim 1. Pet. 11-12.
`Claim 1 requires some devices be located at a prison facility.
`Specifically, claim 1 requires “each of the plurality of prison facilities
`includ[es] at least one telephone terminal” and “call processing gateways”
`are located “at the plurality of prison facilities.” Petitioner contends that
`Spadaro’s telephones 10 at prison facilities disclose or suggest the recited
`telephone terminals and that Spadaro’s control computers (also called
`“Commander™ units” after a particular model) disclose or suggest the
`recited call processing gateways. As noted by Petitioner, Spadaro’s control
`computers are located at sites 36, 38, 40, 42, which may be prison facilities.
`Pet. 13; see Ex. 1004, 3:53-62.
`Claim 1 also requires a call processing system that includes an
`unauthorized call activity detection system, a call application management
`system, and a billing system. According to Petitioner, Spadaro’s three-way
`call detect system 30a discloses or suggests the recited “unauthorized call
`activity detection system for detecting three-way call activity associated with
`calls placed from telephone terminals.” Pet. 15. Spadaro’s VoIP
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`Gateway 26a discloses or suggests the recited “call application management
`system” for processing outgoing VoIP data packets from prison facilities.
`Pet. 15-16. As shown in Figure 5, Spadaro’s VoIP Gateway 26a transmits
`outgoing calls from the telephone terminals in the prison facility to a
`telephone carrier network (Spadaro’s public switch 16). Pet. 16 (citing
`Ex. 1004, 4:49-53). Petitioner relies on Spadaro’s billing function 24 as
`disclosing or suggesting the recited “billing system.” Pet. 17-18.
`Claim 1 further requires that the prison facilities be located remotely
`from the call processing system. According to Petitioner, Spadaro’s
`Figure 3 shows multiple prison sites being administered at a central location.
`Pet. 12-13. Petitioner also relies on Spadaro’s indication that “the billing
`function 24 [is] distributed to a remote location.” Pet. 14 (citing Ex. 1004,
`4:4-13). As noted by Petitioner (Pet. 13), Spadaro indicates distributing
`billing and other functions to a remote location “has the advantage that the
`functions can be centralized with the functions being performed at a central
`administration location.” Ex. 1004, 4:10-13. Regarding the recited
`“unauthorized call activity detection system,” Petitioner indicates Spadaro’s
`three-way call detect system 30a is “moved from the site . . . to a point
`beyond the VoIP network” and “is located remotely [from the] prison
`telephone system.” Pet. 15 (citing Ex. 1004, 4:27-30, 6:4-6 (claim 8)).
`Regarding the recited “call application management system,” Petitioner
`relies on the VoIP gateway 26a, shown in Figure 5, as being separated from
`inmate telephones 10 by WAN 18. See Pet. 15-16 (citing Ex. 1004, 4:10-
`13); see also Pet. 12 (showing Petitioner’s Figure A, which incorporates
`portions of Spadaro’s Figure 5).
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`Claim 1 also requires the recited “unauthorized call activity detection
`system” and the recited “call application management system” be “co-
`located with [a] networking device,” which is “connected via digital data
`links to call processing gateways at the plurality of prison facilities” to
`collect and distribute VoIP data packets associated with calls. According to
`Petitioner, Spadaro’s server 48 discloses or suggests the recited “networking
`device” and Spadaro’s WAN 18 discloses or suggests the recited “digital
`data links to call processing gateways at the plurality of prison facilities.”
`Pet. 13-14; see also Pet. 12 (“FIG. A also edits FIG. 5 to highlight that
`server 48 of FIG. 3 is a device coupled to wide area network (WAN) 18
`connecting the centralized call processor to the individual inmate
`facilities.”).
`In general, Patent Owner challenges Petitioner’s proposed
`combination as improper, for disclosing only “on-premises distribution of
`processing,” and for failing to disclose the recited “networking device.”
`Prelim. Resp. 13, 15-19. Patent Owner also asserts that Petitioner’s analysis
`is inadequate because it fails to make necessary underlying factual
`determinations, as required by Graham v. John Deere Co., 383 U.S. 1, 17
`(1966). Prelim. Resp. 13. Patent Owner further contends, essentially, that
`the Board should give deference to the Examiner’s earlier determination of
`allowability over Spadaro. Id. at 13-15, 29-31.
`
`3. Analysis
`On this record, we are persuaded Petitioner has a reasonable
`likelihood of prevailing in showing that the devices as arranged in claim 1
`would have been obvious over Spadaro. For example, Petitioner’s proposed
`combination relies on Spadaro’s control computers (as disclosing or
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`suggesting the recited call processing gateways), inmate telephones,
`server 48 (as disclosing or suggesting the recited networking device), three-
`way call detect system, VoIP gateway (as disclosing or suggesting the
`recited call application management system), and billing function shown, for
`example, in Figures 3 and 5.
`Petitioner’s proposed combination also relies on Spadaro’s Figure 3,
`which depicts a “multiple site telephone system” (Ex. 1004, 2:25-26) and
`which can be “operated over Ethernet and Voice over Internet Protocol
`networks” to obtain lower cost and efficiency (id. at 3:58-61). According to
`Petitioner, Spadaro’s multiple site telephone system operating over VoIP
`discloses or suggests “outgoing VoIP data packets from the plurality of
`prison facilities,” which “are located remotely from the call processing
`system,” as recited in claim 1.
`Petitioner’s proposed combination also relies on Spadaro’s Figure 5,
`which shows distributing billing functions “to a remote location” over a
`WAN, which “has the advantage that the functions can be centralized with
`the functions being performed at a central administration location.”
`Ex. 1004, 4:4-13; see also id. 2:29-30. According to Petitioner, Spadaro’s
`distribution of billing functions to a remote location discloses or suggests the
`recited “billing system . . . located remotely from the call processing
`gateways,” which are located “at the plurality of prison facilities.”
`On this record, we are not persuaded by Patent Owner’s contentions
`that Petitioner does not have a reasonable likelihood of prevailing. First,
`Patent Owner contends that Petitioner’s proposed combination would not
`render obvious claim 1. Specifically, Patent Owner contends that Spadaro’s
`distributed system includes only on-premises distribution of processing
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`using the control computers and, therefore, is not a centralized system.
`Prelim. Resp. 16; see also id. at 15-19. On this record, we are not persuaded
`that Spadaro includes only “on-premises distribution of processing,” as
`asserted by Patent Owner, because Spadaro’s Figure 3 shows “four sites,”
`each with control computers (Commander™ systems).” Ex. 1004, 3:53-57.
`Each site has a router 46 that “routes the calls to a server 48 which connects
`the calls to central office 34,” which, according to Patent Owner, is a
`connection to a publicly switched telephone network (PSTN). Prelim. Resp.
`20. Thus, on this record, we are persuaded by Petitioner’s contention that
`Spadaro discloses a call processing system serving multiple prison facilities,
`because Spadaro’s Figure 3 shows four sites routing calls to the same server
`48.
`Patent Owner further contends that Spadaro’s server 48 does not
`disclose or suggest the networking device, as recited in claim 1, because
`Spadaro’s server 48 “connects calls to central office 34,” which, according
`to Patent Owner, is a connection to a PSTN and so “there is no disclosure,
`teaching, or suggestion of what routing would occur with respect to server
`48 when Spadaro uses VoIP.” Prelim. Resp. 20-21.
`On this record, we do not agree with Patent Owner, because Petitioner
`does not rely merely on server 48 routing analog calls over a PSTN. Rather,
`Petitioner also relies on Spadaro’s indication that “lower cost and efficiency
`are obtained by operating systems such as shown in FIGS. 2 and 3 [which
`include server 48] over Ethernet and Voice over Internet Protocol networks”
`(Pet. 14 (citing Ex. 1004, 3:58-61)). Thus, we are persuaded, on this record,
`that there is a reasonable likelihood that Spadaro discloses or suggests server
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`48 uses VoIP, and so receives and distributes VoIP data packets, as required
`in claim 1.
`Second, Patent Owner contends Petitioner’s proposed combination of
`Figures 3 and 5 is improper, because it “consolidates descriptions of
`different and disparate systems disclosed in Spadaro.” Prelim. Resp. 13.
`This is not improper, however, because the test for obviousness is what the
`combined teachings of Spadaro’s embodiments would have suggested to an
`ordinarily skilled artisan. Cf. In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir.
`2012) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)) (“[T]he test for
`obviousness is what the combined teachings of the references would have
`suggested to those having ordinary skill in the art.”).
`Third, Patent Owner contends “neither the Petition nor [Petitioner’s
`declarant] provides an adequate analysis of obviousness with respect to the
`Graham factors and application of Spadaro relative to the issued claims.”
`Prelim. Resp. 13. See Graham, 383 U.S. at 17-18 (The question of
`obviousness is resolved on the basis of underlying factual determinations
`including: (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of ordinary
`skill in the art; and (4) objective evidence of nonobviousness.).
`More specifically, Patent Owner contends the Petition does not
`reference the Graham factors. Pet. 13-14. This would not, in and of itself,
`render insufficient for institution an asserted ground based on obviousness.
`Patent Owner further contends that the asserted ground of obviousness
`over Spadaro is insufficient for institution because Petitioner’s declarant did
`not take into account the differences between the prior art and the claims.
`Pet. 13-14 (citing Ex. 1017, p. 11). Petitioner’s declarant, however, states an
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`“invention is obvious when the differences between the subject matter
`sought to be patented and the prior art are such that the subject matter as a
`whole would have been obvious at the time of the invention was made to a
`person having ordinary skill in the art.” Ex. 1017, p. 11, ¶ 27. The
`statement of Petitioner’s declarant made in ¶ 27 indicates accurately the test
`of obviousness articulated in Graham. See Graham, 383 U.S. at 3 (“This is
`the test of obviousness, i.e., whether ‘the subject matter sought to be
`patented and the prior art are such that the subject matter as a whole would
`have been obvious at the time the invention was made to a person having
`ordinary skill in the art to which said subject matter pertains.’”). Given the
`record before us, we are persuaded the asserted ground of obviousness over
`Spadaro is sufficient for institution.
`Fourth, Patent Owner contends the Examiner considered the Spadaro
`reference during prosecution of the application that issued as the ’167 patent,
`and, therefore, essentially, the Board should give deference to the earlier
`determination of allowability over Spadaro. Prelim. Resp. 13-15, 29-31.
`There is no presumption of validity as to the challenged claims in an
`inter partes review.4 Further, under 35 U.S.C. § 325(d), “[i]n determining
`whether to institute or order a proceeding under . . . chapter 31 [Inter Partes
`Review], the Director may take into account whether, and reject the petition
`or request because, the same or substantially the same prior art or arguments
`previously were presented to the Office” (emphasis added). The permissive
`
`
`4 Whereas a patent is presumed “valid” unless overcome by clear and
`convincing evidence before a district court, a petitioner’s burden in an inter
`partes review is to prove “unpatentability” by a preponderance of the
`evidence. Compare 35 U.S.C. § 282(a) with § 316(e).
`
`16
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`IPR2014-00493
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`
`language of the statute indicates that we may consider a petition that
`presents the same prior art or arguments previously presented to the Office.
`Moreover, we are not persuaded that all the issues presented by
`Petitioner’s combination—embodiments related to Spadaro’s Figure 3
`(depicting centralized call processing for multiple sites), Spadaro’s Figure 5
`(depicting integration of VoIP and data networks, in which billing
`function 24 is moved to a remote location and three-way call detection 30a is
`moved to a remote location), and equating Spadaro’s server 48 with the
`recited networking device—have been considered previously by the Office.
`On this record and for purposes of institution, we are satisfied that
`Petitioner has established a reasonable likelihood it would prevail in
`showing that claim 1 would have been obvious over Spadaro. We also are
`persuaded Petitioner has established a reasonable likelihood that it would
`prevail in showing that claims 2-7, 12, 14-19, and 21 would have been
`obvious over Spadaro.
`
`C. Obviousness Over Spadaro and Hodge
`Petitioner also contends that claims 8-11 and claim 20 would have
`been obvious over Spadaro and Hodge. Regarding claims 8-11, which
`depend from independent claim 1, Petitioner asserts Hodge discloses a
`justice application management system for managing inmates, as
`additionally recited in claims 8 and 11; a commerce system for managing
`commissary orders place by inmates, as additionally recited in claim 8; a call
`treatment system, as additionally recited in claim 9; and interactive voice
`response functionality for providing messaging associated with processing
`of the calls, as additionally recited in claim 11. Petitioner relies on Hodge
`for “analyzing content of the calls for particular utterances to determine
`
`17
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`IPR2014-00493
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`
`presence of threats in the calls,” as additionally recited in claim 20, which
`depends from independent claim 17. Pet. 26.
`Hodge describes a secure telephone call management system for use
`in penal institutions. Ex. 1005, Abstract, 9:48-53. Petitioner asserts that
`Hodge describes a site server can be located remotely from inmate facilities
`and some functionality is centralized with the site server. Pet. 26-27 (citing
`Ex. 1005, 10:41-43, 21:13-18). Petitioner further asserts, with support from
`its declarant, the proposed combinations of the functions of Hodge with the
`system of Spadaro could have been accomplished by known methods and is
`a predictable variation. Pet. 27 (citing Ex. 1017, ¶ 130).
`On this record and for purposes of institution, we are persuaded
`Petitioner’s proposed combination of Spadaro and Hodge is a predictable
`variation using prior art elements according to their established functions.
`See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“If a person of
`ordinary skill can implement a predictable variation, § 103 likely bars its
`patentability.”).
`We are persuaded that Petitioner has established a reasonable
`likelihood that it would prevail in showing that claims 8-11 and 20 would
`have been obvious over Spadaro and Hodge.
`
`D. Obviousness Over Spadaro and Bellcore
`Petitioner also contends claim 13 would have been obvious over
`Spadaro and Bellcore. Claim 13 depends from independent claim 1 and
`additionally recites that the carrier network is a MGCP (Media Gateway
`Control Protocol) carrier. Pet. 33. Petitioner asserts that Bellcore describes
`the MGCP. Id. (quoting Ex. 1006, 4-10). Petitioner also contends, with
`support from its declarant, that a person of ordinary skill in the art would
`
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`IPR2014-00493
`Patent 7,899,167 B1
`
`have reason to combine Spadaro and Bellcore, “because Spadaro describes
`VoIP networks and Bellcore describes implementation details for VoIP
`networks.” Id. at 33 (citing Ex. 1017, ¶ 147).
`On this record and for purposes of institution, we are persuaded that
`Petitioner has established a reasonable likelihood that it would prevail in
`showing that claim 13 would have been obvious over Spadaro and Hodge.
`
`E. Obviousness Over Bellcore and Hodge
` The Board has discretion whether to institute a review. See 35 U.S.C.
`§ 314(a) (indicating an inter partes review may not be instituted unless a
`determination is made that there is a reasonable likelihood that the petitioner
`would prevail). We exercise our discretion and do not institute a review on
`the asserted ground that claims 1-21 would have been obvious over Bellcore
`and Hodge. See 35 U.S.C. § 314(a).
`
`CONCLUSION
`For the foregoing reasons, we determine that the information
`presented in the Petition establishes there is a reasonable likelihood that
`Petitioner would prevail in showing that claims 1-21 of the ’167 patent are
`unpatentable. Any discussion of facts in this Decision are made only for the
`purposes of institution and are not dispositive of any issue related to any
`ground on which we institute review. The Board has not made a final
`determination with respect to the patentability of these claims. The Board’s
`final determination will be based on the record as fully developed during
`trial.
`
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`IPR2014-00493
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`
`ORDER
`For the foregoing reasons, it is:
`ORDERED pursuant to 35 U.S.C. § 314(a), inter partes review is
`hereby instituted as to claims 1-21 of the ’167 patent based on the following
`grounds of unpatentability:
`A. Claims 1-7, 12, 14-19, and 21 as unpatentable as anticipated under
`35 U.S.C. § 103 over Spadaro;
`B. Claims 8-11 and 20 as unpatentable as anticipated under 35 U.S.C.
`§ 103 over Spadaro and Hodge; and
`C. Claim 13 as unpatentable for obviousness under 35 U.S.C. § 103
`over Spadaro and Bellcore;
`FURTHER ORDERED that no other grounds of unpatentability
`alleged in the Petition are authorized for this inter partes review; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`partes review of the ’167 patent is instituted commencing on the entry date
`of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4,
`notice is given of the institution of a trial.
`
`20
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`IPR2014-00493
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`PETITIONER:
`
`Lori A. Gordon
`Michael B. Ray
`STERNE, KESSLER, GOLDSTEIN & FOX
`lgordon-PTAB@skgf.com
`mray-PTAB@skgf.com
`
`PATENT OWNER:
`
`Rajiv P. Patel
`Darren E. Donnelly
`FENWICK & WEST LLP
`rpatel-ptab@fenwick.com
`ddonnelly-ptab@fenwick.com
`
`21
`
`
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