Trials@uspto.gov Paper 28
`571-272-7822 Entered: September 11, 2015
`
`
`
`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 IPR2014-00749
`Patent 8,577,003 B2
`____________
`
`
`
`
`
`
`
`
`
`
`
`
`Before KEVIN F. TURNER, BARBARA A. BENOIT, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`
`BENOIT, Administrative Patent Judge.
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`571-272-7822 Entered: September 11, 2015
`
`
`
`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 IPR2014-00749
`Patent 8,577,003 B2
`____________
`
`
`
`
`
`
`
`
`
`
`
`
`Before KEVIN F. TURNER, BARBARA A. BENOIT, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`
`BENOIT, Administrative Patent Judge.
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`IPR2014-00749
`Patent 8,577,003 B2
`
`
`I. INTRODUCTION
`
`We have jurisdiction to hear this inter partes review under 35 U.S.C.
`
`§ 6(c). This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a)
`
`and 37 C.F.R. § 42.73. For the reasons that follow, we determine that
`
`Petitioner has shown by a preponderance of the evidence that claims 1–14 of
`
`U.S. Patent No. 8,577,003 B2 (Ex. 1001; “the ’003 patent”) are
`
`unpatentable.
`
`A. Procedural History
`
`Global Tel*Link Corporation (“Petitioner”) filed a Petition (Paper 1;
`
`“Pet.”) for an inter partes review of claims 1–14 (“the challenged claims”)
`
`of the ’003 patent. Patent Owner, Securus Technologies, Inc., filed a
`
`Preliminary Response opposing institution of a review. On September 17,
`
`2014, pursuant to 35 U.S.C. § 314(a), we instituted an inter partes review
`
`for claims 1–14 of the ’003 patent as unpatentable under 35 U.S.C. § 103(a)
`
`over the following references.
`
`Reference(s)
`Spadaro1
`Spadaro and Hodge2
`
`Claims Challenged
`1–4 and 8–11
`4–7 and 11–14
`
`Paper 6 (“Inst. Dec.”) 22.
`
`Subsequent to institution, Patent Owner filed a Patent Owner
`
`Response (Paper 12; “PO Resp.”), and Petitioner filed a Reply (Paper 16;
`
`
`
`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”).
`
`2
`
`
`
`IPR2014-00749
`Patent 8,577,003 B2
`
`“Reply”). Patent Owner filed observations on the cross-examination of
`
`Petitioner’s declarant (Paper 20), to which Petitioner filed a response
`
`(Paper 21).
`
`An oral hearing was held on June 4, 2015.3
`
`B. Related Matters
`
`A Final Written Decision in an inter partes review of a related
`
`patent—U.S. Patent No. 7,899,167 B1 (IPR2014-00493)—is being issued
`
`concurrently with this decision. See Paper 4 (Related Matters). Inter partes
`
`reviews of related patents—U.S. Patent No. 8,340,260 B1 (IPR2014-00824),
`
`and U.S. Patent No. 7,529,357 B1 (IPR2014-00825)—are pending. Id.
`
`C. The ’003 Patent
`
`The ’003 patent, titled “Centralized Call Processing,” issued
`
`November 5, 2013 from an application that is a continuation of an
`
`application filed August 15, 2003. The ’003 patent describes a centralized
`
`architecture for call processing that uses Voice over Internet Protocol
`
`(“VoIP”) to carry calls from a location at which calling services are provided
`
`to a centralized call processing platform. Ex. 1001, Abstract, 1:41–43, 3:18–
`
`20. The call processing platform serves multiple facilities and provides, for
`
`example, calling party identification, call validation, call routing, and
`
`connection to the public switched telephone network (PSTN) or a digital
`
`
`
`3 At the joint request of the parties, the oral arguments for this proceeding
`and IPR2014-00493 were conducted at the same time. Paper 26, 2. A
`transcript of the oral hearing is included in the record as Paper 27.
`3
`
`
`
`IPR2014-00749
`Patent 8,577,003 B2
`
`network. Id. at Abstract, 8:41–45. The call processing platform may be
`
`used to provide calling services to prison facilities. Id. at 5:57–60.
`
`Figure 1 of the ’003 patent is set forth below:
`
`Figure 1 illustrates call processing system 100.
`
`
`
`Call processing system 100 includes call processing platform 101,
`
`which communicates with facilities 150, 160, 170, 180 through network 130.
`
`Id. at 5:45–48. Call processing gateways 140, at or near each facility 150,
`
`160, 170, 180, convert analog signals associated with telephone
`
`4
`
`
`
`IPR2014-00749
`Patent 8,577,003 B2
`
`terminals 141 (or visitation telephones 143) to digital data packets sent over
`
`network 130. Id. at 6:14–18.
`
`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 8:12–65. Call processing
`
`system 101 also includes validation system 113 and unauthorized call
`
`activity detection system 114 to provide “call intelligence” to determine
`
`whether a particular call should be permitted. Id. at 9:35–39. Billing
`
`system 112, another system of call processing system 101, collects billing
`
`information and deducts fees from prepaid accounts. Id. at 11:58–12:3.
`
`D. Illustrative Claims of the ’003 Patent
`
`Of the challenged claims in the ’003 patent, claims 1 and 8 are
`
`independent. Claims 1 and 8, reproduced below, are illustrative of the
`
`claimed subject matter:
`
`1. A centralized call processing system, comprising:
`
`a networking device connected to a plurality of call
`processing gateways of a plurality of prison facilities located
`remotely from the centralized call processing system via a wide
`area network (WAN), the networking device configured to:
`
` receive outgoing Voice over Internet Protocol
`(VoIP) data packets from prison facilities; and
`
`send incoming VoIP data packets to the prison
`facilities;
`
`5
`
`
`
`IPR2014-00749
`Patent 8,577,003 B2
`
`
`an unauthorized call activity detection system connected
`to the networking device for detecting three-way call activity
`associated with the outgoing VoIP data packets or the incoming
`VoIP data packets via a local area network (LAN);
`
`a call application management system connected via the
`LAN to the networking device for processing the outgoing
`VoIP data packets for transmission to a telephone carrier
`network, the call application management system processing
`signals from the first4 telephone carrier network into the
`incoming VoIP data packets; and
`
`a validation system connected via the LAN to the call
`application management system and configured to allow or
`disallow completion or continuing of a particular call of the
`plurality of prison facilities through the telephone carrier
`network based on the outgoing VoIP data packets or the
`incoming VoIP data packets.
`
`Ex. 1001, 18:57–19:15.
`
`8. A method comprising:
`
`receiving outgoing Voice over Internet Protocol (VoIP)
`data packets from a plurality of prison facilities by a
`networking device via a wide area network (WAN);
`
`sending incoming VoIP data packets to the prison
`facilities via the WAN by the networking device;
`
`routing the outgoing VoIP data packets or the incoming
`VoIP data packets in a local area network (LAN) in a
`centralized call processing system to detect three-way call
`
`
`
`4 We note that claim 1 recites “the first telephone carrier network” (emphasis
`added), which refers by antecedent basis to the only telephone carrier
`network previously recited by claim 1—“a telephone carrier network.” As
`the only telephone carrier network previously recited, “a telephone carrier
`network” necessarily also is the first telephone carrier network.
`6
`
`
`
`IPR2014-00749
`Patent 8,577,003 B2
`
`
`activity associated with the outgoing VoIP data packets or the
`incoming VoIP data packets;
`
`routing the outgoing VoIP data packets via the LAN to
`process the outgoing VoIP data packets for transmission to a
`telephone carrier network;
`
`processing signals from the telephone carrier network
`into the incoming VoIP data;
`
`routing the incoming VoIP data packets via the LAN for
`transmission to the plurality of prison facilities via the WAN;
`and
`
`allowing or disallowing completion or continuation of a
`particular call of the plurality of prison facilities through the
`telephone carrier network based on the outgoing VoIP data
`packets or the incoming VoIP data packets by communicating
`data over the LAN.
`
`Id. at 19:38–20:20.
`
`II. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are
`
`interpreted according to their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
`
`2012); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278, 1279
`
`(Fed. Cir. 2015) (“Congress implicitly approved the broadest reasonable
`
`interpretation standard in enacting the AIA,” and “the standard was properly
`
`adopted by PTO regulation.”), reh’g en banc denied, 793 F.3d 1297 (Fed.
`
`Cir. 2015). Under that standard, claim terms are presumed to be given their
`
`7
`
`
`
`IPR2014-00749
`Patent 8,577,003 B2
`
`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). An inventor may provide a
`
`meaning for a term that is different from its ordinary meaning by defining
`
`the term in the specification with reasonable clarity, deliberateness, and
`
`precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
`We construe “call application management system” and discuss the
`
`dispute over call processing in accordance with these principles. No other
`
`terms require express construction.
`
`Independent claim 1 is directed to a “centralized call processing
`
`system” that includes a networking device, an unauthorized call activity
`
`detection system, a call application management system, and a validation
`
`system. Claim 1 further requires particular system connections. The
`
`networking device, for example, must be connected via a wide area network
`
`(WAN) to call processing gateways of prison facilities. The call application
`
`management system and unauthorized call activity detection system must be
`
`connected to via a local area network (LAN) to the networking device. In
`
`turn, the validation system must be connected via the LAN to the call
`
`application management system.
`
`Claim 1 also recites functions performed by the call application
`
`management system—(1) “processing the outgoing VoIP data packets [from
`
`the prison facilities] for transmission to a telephone carrier network” and
`
`(2) “processing signals from the first telephone carrier network into the
`
`incoming VoIP data packets.”
`
`8
`
`
`
`IPR2014-00749
`Patent 8,577,003 B2
`
`
`A central dispute between the parties concerns the broadest reasonable
`
`construction, in view of the Specification, of the recited “call application
`
`management system.” Patent Owner contends, with support of its declarant
`
`Dr. James L. Olivier and extrinsic evidence, the proper construction of “call
`
`application management system” is “a system performing call processing for
`
`a plurality of prisons.” PO Resp. 16. According to Patent Owner, “call
`
`processing” is a term of art in telephony and is understood as “control a call
`
`from origination, maintenance of that call, and subsequent release of that call
`
`[and] does not include call authorization functionality.”5 PO Resp. 15.
`
`Patent Owner does not identify an express disclosure of a “call
`
`application management system” performing call processing in the way that
`
`“call processing” is defined by Patent Owner (i.e., controlling a call from
`
`origination, maintenance of that call, and subsequent release of that call, and
`
`not including call authorization). See generally PO Resp. 16. Rather, Patent
`
`Owner relies on the ’003 patent’s description of call application
`
`management system 110 as “form[ing] the heart of call processing
`
`functionality provided by call processing platform 101,” which, according to
`
`Patent Owner’s declarant, would be understood by one of ordinary skill in
`
`the art as meaning “that call connection control and switching control is
`
`
`
`5 Patent Owner at one point proposes a different construction of call
`processing—“control a call state model for calls and selectively permit calls
`to connect to an outgoing phone network.” PO Resp. 12. Later, Patent
`Owner seems to abandon this proposed construction in favor of “control a
`call from origination, maintenance of that call, and subsequent release of that
`call [and] does not include call authorization functionality.” See, e.g., PO
`Resp. 15.
`
`9
`
`
`
`IPR2014-00749
`Patent 8,577,003 B2
`
`performed at a centralized location.” Id. (citing Ex. 1001, 8:12–16;
`
`Ex. 2001 ¶ 165).
`
`Petitioner opposes Patent Owner’s proposed construction. Reply 3.
`
`According to Petitioner’s declarant Dr. Leonard J. Forys, the location of and
`
`functions performed by the recited call application management system are
`
`defined within the claim, and call application management system should be
`
`given its ordinary and customary meaning as would be understood by one of
`
`ordinary skill in the art in the context of the entire disclosure, using the
`
`understandable language of claim 1. Ex. 1018 ¶¶ 6, 8; see Reply 3
`
`(indicating “no need exists to go beyond the easily understandable language
`
`of Claim 1”). Further, Petitioner disagrees with Patent Owner’s proposed
`
`constructions as impermissibly narrowing claim 1 and being inconsistent
`
`with the Specification. Reply 3–5.
`
`The plain language of the challenged claims support the position taken
`
`by Petitioner, as explained by its declarant (Ex. 1018 ¶¶ 6, 8), that an express
`
`construction of call application management system is unnecessary. Claim 1
`
`recites the connections required for the call application management
`
`system—the call application management system must be connected via the
`
`LAN to the networking device and a validation system must be connected
`
`via the LAN to the call application management system. Claim 1 further
`
`requires the networking device (to which the call application management
`
`system must be connected via a LAN) to be connected via a WAN to call
`
`processing gateways at the prison facilities, which are located remotely from
`
`the call processing system which includes the networking device and the call
`
`10
`
`
`
`IPR2014-00749
`Patent 8,577,003 B2
`
`application management system, among other components. The plain
`
`language of claim 1 recites certain functions performed by the call
`
`application management system—processing VoIP data packets and signals
`
`from a telephone carrier network in particular ways.
`
`In contrast, the plain language of claim 1 does not recite the functions
`
`of call processing that Patent Owner contends are required to be performed
`
`by the call application management system—controlling a call from
`
`origination, maintenance of that call, and subsequent release of that call, and
`
`not including call authorization. Further, we note that claim 1 recites a “call
`
`application management system”—not a call processing management
`
`system.
`
`Turning to Patent Owner’s proposed construction of call processing,
`
`we note that, although the challenged claims recite a “centralized call
`
`processing system” and “call processing gateways,” none of the challenged
`
`claims recite performing “call processing.” Moreover, Patent Owner’s
`
`proposed definition of call processing as “control a call from origination,
`
`maintenance of that call, and subsequent release of that call [and] does not
`
`include call authorization functionality” (PO Resp. 15) is inconsistent with
`
`the Specification and is not supported by the prosecution history of the
`
`application that issued as U.S. Patent No. 7,899,167 (“the ’167 patent”),
`
`which is the parent of the application that issued as the ’003 patent.
`
`Ex. 1001, 1:4–9 (“This application is a continuation of” the application that
`
`issued as the ’167 patent.).
`
`11
`
`
`
`IPR2014-00749
`Patent 8,577,003 B2
`
`
`The Specification is inconsistent with Patent Owner’s proposed
`
`definition of call processing, because Patent Owner’s proposed definition
`
`excludes call authorization functionality, which is expressly described by the
`
`’003 patent as an example of call processing functionality. See Ex. 1001,
`
`3:23–25 (“call processing functionality, such as . . . call validation”), 9:10–
`
`15 (claim 1 indicates call validation involves call authorization—“a
`
`validation system connected via the LAN to the call application management
`
`system and configured to allow or disallow completion or continuing of a
`
`particular call”).
`
`The Specification descriptions of call processing functionality also
`
`indicate “call processing” is broader than defined by the Patent Owner. For
`
`example, the Specification includes additionally providing call intelligence
`
`as a type of call processing functionality, which is not included in Patent
`
`Owner’s proposed definition. Ex. 1001, 9:33–46. The Specification also
`
`indicates that other elements recited in claim 1—a validation system and an
`
`unauthorized activity detection system—work with a call application
`
`management system to provide call processing. Id. at 7:49–63.
`
`The Specification indicates an earlier patent application,6 which the
`
`’003 patent incorporates by reference, as providing “[d]etail with respect to
`
`
`
`6 U.S. Patent Application No. 10/135,878, titled “Information Management
`and Movement System and Method.” Ex. 1001, 8:31–35; see also id. at
`1:9–12, 36–37 (indicating the patent application number corresponding to
`the patent application titled “Information Management and Movement
`System and Method” and incorporation of that disclosure by reference).
`12
`
`
`
`IPR2014-00749
`Patent 8,577,003 B2
`
`operation in providing call processing by a call application manager.”7
`
`Ex. 1001, 8:31–35. The earlier patent application is inconsistent with Patent
`
`Owner’s proposed definition of “call processing.” Rather, the earlier
`
`application describes8 call application manager 221 as providing distance
`
`telephony, prepaid and postpaid toll calling services, telephonic commerce,
`
`account balance verification and refill, and credit worthiness determination.
`
`Ex. 3001, 47 (¶ 27), 52 (¶ 38). The earlier application also depicts call
`
`application manager 110 as having modules for detainee calling, word
`
`search, and visitation and administration phones. Id. at 52 (¶ 38). The
`
`earlier application further discloses that “calls placed through
`
`communication/transaction services 221” can be analyzed. Id. at 56 (¶ 47).
`
`Neither Patent Owner nor its declarant Dr. Olivier directly addresses the
`
`disclosure of the earlier application.
`
`The prosecution history of the application that issued as the ’167
`
`patent, which is the parent of the continuation application that issued as the
`
`’003 patent, also is inconsistent with Patent Owner’s proposed definition of
`
`“call processing.” During examination of the application that issued as the
`
`
`
`7 The ’003 patent uses the term “call application management system 110”
`interchangeably with “call application manager 110.” Compare Ex. 1001
`8:35–40 (“call application management system 110”) with id. at 8:45–46
`(“call application manager 110”).
`8 To be precise, the earlier application describes call application manager
`221 as operating substantially as communication/transaction services 221,
`which, in turn, is described as “provide distance telephony, prepaid and
`postpaid toll calling services, telephonic commerce, account balance
`verification and refill, and credit worthiness determination.” Ex. 3001
`47 (¶ 27), 52 (¶ 38).
`
`13
`
`
`
`IPR2014-00749
`Patent 8,577,003 B2
`
`’167 patent, the applicant represented that “call processing” included
`
`detection of unauthorized calls. Ex. 3003, 8 (Applicant response to
`
`November 7, 2008 action, p. 8) (“The feature of ‘a networking device
`
`connected via digital data links to call processing gateways at the multiple
`
`prison facilities” is advantageous because various call processing activities
`
`including detection of unauthorized call[s] may be performed at the call
`
`processing platform”). See Microsoft v. Proxyconn, 789 F.3d 1292, 1298
`
`(Fed. Cir. 2015) (“The PTO should also consult the patent’s prosecution
`
`history in proceedings in which the patent has been brought back to the
`
`agency for a second review.”). Applicant’s representation is relevant to the
`
`’003 patent because substantially the same claim limitation is used in both
`
`patents—a networking device connected via digital data links (in the ’167
`
`patent) or via a wide area network (in the ’003 patent) to call processing
`
`gateways at prison facilities. See Advanced Cardiovascular Sys., Inc. v.
`
`Medtronic, Inc., 265 F.3d 1294, 1305 (Fed. Cir. 2001) (“The prosecution
`
`history of a related patent can be relevant if, for example, it addresses a
`
`limitation in common with the patent in suit.”); Elkay Mfg. Co. v. Ebco Mfg.
`
`Co., 192 F.3d 973, 980 (Fed. Cir. 1999) (“When multiple patents derive
`
`from the same initial application, the prosecution history regarding a claim
`
`limitation in any patent that has issued applies with equal force to
`
`subsequently issued patents that contain the same claim limitation.”).
`
`Applicant’s representation that call processing activities include
`
`detection of unauthorized calls does not support Patent Owner’s position that
`
`“call processing” would have been understood by one of ordinary skill in the
`
`14
`
`
`
`IPR2014-00749
`Patent 8,577,003 B2
`
`art as “control a call from origination, maintenance of that call, and
`
`subsequent release of that call [and] does not include call authorization
`
`functionality” (PO Resp. 15).
`
`Next, we examine extrinsic evidence and testimony proffered by
`
`Patent Owner of how one ordinarily skilled in the art would have understood
`
`“call processing.” Specifically, Patent Owner indicates one would have
`
`turned to U.S. Patent No. 6,052,454 (Ex. 2004, “Kek”) to understand the
`
`meaning of “call processing” as used in the ’003 patent and, based on the
`
`disclosure of Kek, would have understood “call processing” as defined by
`
`Patent Owner. See, e.g., PO Resp. 13–15. Kek is referenced in the
`
`“Background of the Invention” section of the ’003 patent discussing
`
`automated systems for providing call processing functions and is
`
`incorporated by reference. Ex. 1001, 1:63–66. According to the ’003
`
`patent, Kek (titled “Telephone Apparatus With Recording of Phone
`
`Conversations on Massive Storage”) teaches call authorization functionality
`
`being remote to a prison facility and teaches call processing being provided
`
`at the prison facility itself. Ex. 1001, 1:63–2:3, 2:10–14. Patent Owner’s
`
`extrinsic evidence provides little probative value, however, because it does
`
`not comport with the detailed description of the invention in the ’003
`
`patent—either the ’003 patent description of call processing functionality or
`
`the earlier patent application’s description of a call application manager for
`
`the reasons discussed earlier.
`
`Weighing Dr. Oliver’s testimony supporting Patent Owner’s
`
`contentions that call application management system performs call
`
`15
`
`
`
`IPR2014-00749
`Patent 8,577,003 B2
`
`processing—meaning controlling a call from origination, maintenance of
`
`that call, and subsequent release of that call, but which does not include call
`
`authorization functionality (PO Resp. 15 (citing Ex. 2001 ¶ 162)) against
`
`evidence of the written description of the term in the Specification and
`
`language of claim 1, we do not agree that call application management
`
`system necessarily must control a call from origination, maintenance of that
`
`call, and subsequent release of that call. It is within our discretion to assign
`
`the appropriate weight to the testimony offered by Dr. Oliver. See, e.g.,
`
`Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board
`
`has discretion to give more weight to one item of evidence over another
`
`“unless no reasonable trier of fact could have done so”); In re Am. Acad. of
`
`Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is
`
`entitled to weigh the declarations and conclude that the lack of factual
`
`corroboration warrants discounting the opinions expressed in the
`
`declarations.”).
`
`First, as discussed above, the Specification and earlier application
`
`provide examples of call processing functionality that contradict Dr. Oliver’s
`
`position and which are not addressed directly by Dr. Olivier. Second, the
`
`inconsistency of Dr. Olivier’s own testimony regarding the definition of call
`
`processing undercuts his position. In his declaration, Dr. Olivier identified
`
`additional functions as part of call processing—including call authorization
`
`which Dr. Olivier testifies is not included in call processing. See Ex. 2001
`
`¶¶ 67 (showing Dr. Olivier’s annotation of Figure 2 of the ’003 patent to
`
`identify call processing), 69, 70, 73. Third, we are unpersuaded by
`
`16
`
`
`
`IPR2014-00749
`Patent 8,577,003 B2
`
`Dr. Olivier’s reliance on a vague statement of the Specification that the call
`
`application management system “forms the heart of call processing
`
`functionality provided by call processing platform 101” (PO Resp. 16 (citing
`
`Ex. 2001 ¶ 165)). Dr. Olivier testifies that the context of “forms the heart”
`
`would be understood by one of ordinary skill in the art as meaning “that call
`
`connection control and switching control is performed at a centralized
`
`location,” because the Specification describes the call application
`
`management system as controlling completing a call between parties
`
`(Ex. 2001 ¶ 165).
`
`We are mindful that, according to the Specification, the call
`
`application management system “control[s] completing a call between” two
`
`parties. Ex. 1001, 8:16–22 (emphasis added). Even so, “controlling
`
`completing a call” on its face seems more limited than Patent Owner’s
`
`position that call application management system is a system performing call
`
`processing—“control a call from origination, maintenance of that call, and
`
`subsequent release of that call.” We also are mindful that Petitioner’s
`
`declarant, Dr. Forys, does not agree with Dr. Olivier’s position regarding
`
`call processing. Ex. 1018 ¶¶ 7–12.
`
`Therefore, in light of the plain language of the claim, the Specification
`
`of the’003 patent, and according Patent Owner’s evidence and the testimony
`
`of Patent Owner’s declarant appropriate weight, we construe “call
`
`application management system” to mean a system that is located as
`
`required by claim 1—“connected via the LAN to the networking device” and
`
`to which a validation system is connected via the LAN—and performs at
`
`17
`
`
`
`IPR2014-00749
`Patent 8,577,003 B2
`
`least the functions recited by claim 1—processing the outgoing VoIP data
`
`packets for transmission to a telephone carrier network and processing
`
`signals from the telephone carrier network into the incoming VoIP data
`
`packets. A “call application management system” is not required to perform
`
`call processing as defined by the Patent Owner—“control a call from
`
`origination, maintenance of that call, and subsequent release of that call
`
`[and] does not include call authorization functionality” (PO Resp. 15).
`
`B. Principles of Law
`
`To prevail in challenging claims 1–14 of the ’003 patent, Petitioner
`
`must demonstrate by a preponderance of the evidence that the claims are
`
`unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is
`
`unpatentable under 35 U.S.C. § 103(a) if the differences between the
`
`claimed subject matter 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.
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`
`obviousness is resolved on the basis of underlying factual determinations
`
`including the following: (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.
`
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`18
`
`
`
`IPR2014-00749
`Patent 8,577,003 B2
`
`
`C. Level of Ordinary Skill in the Art
`
`In determining whether an invention would have been obvious at the
`
`time it was made, 35 U.S.C. § 103 requires us to determine the level of
`
`ordinary skill in the pertinent art at the time of the invention. Graham v.
`
`John Deere, 383 U.S. at 17. “The importance of resolving the level of
`
`ordinary skill in the art lies in the necessity of maintaining objectivity in the
`
`obviousness inquiry.” Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718
`
`(Fed. Cir. 1991). The person of ordinary skill in the art is a hypothetical
`
`person who is presumed to have known the relevant art at the time of the
`
`invention. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Factors
`
`that may be considered in determining the level of ordinary skill in the art
`
`include, but are not limited to, the types of problems encountered in the art,
`
`the sophistication of the technology, and educational level of active workers
`
`in the field. Id. In a given case, one or more factors may predominate. Id.
`
`Generally, it is easier to establish obviousness under a higher level of
`
`ordinary skill in the art. Innovention Toys, LLC v. MGA Entm’t, Inc.,
`
`637 F.3d 1314, 1323 (Fed. Cir. 2011) (“A less sophisticated level of skill
`
`generally favors a determination of nonobviousness . . . while a higher level
`
`of skill favors the reverse.”).
`
`With support of their respective declarants, both Petitioner and Patent
`
`Owner agree that, based on the disclosure of the ’003 patent, one of ordinary
`
`skill in the art would have a Bachelor of Science degree in electrical
`
`engineering, computer science, or an equivalent field, as well as three to five
`
`years of academic or industry experience. Pet. 6 (citing Ex, 1003 ¶ 30); PO
`
`19
`
`
`
`IPR2014-00749
`Patent 8,577,003 B2
`
`Resp. 7 (citing Ex. 2001 ¶ 156). Petitioner indicates communications system
`
`(or comparable industry experience) is the relevant academic or industry
`
`experience (Pet. 6), whereas Patent Owner indicates telephony systems (PO
`
`Resp. 7).
`
`The parties propose similar levels of ordinary skill in the art and do
`
`not directly challenge the other’s proposal. We consider the level of
`
`ordinary skill in the art to be reflected by the prior art of record. See
`
`Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The prior art
`
`references, like the ’003 patent, relate to telephone communication systems.
`
`See Ex. 1001, 1:41–42 (indicating the technical field relates to call
`
`processing); Ex. 1004, 1:7–9 (indicating the field of the invention relates to
`
`the processing of voice telephone calls); Ex. 1005, 1:7–9 (indicating the field
`
`of the invention relates to telephone communication systems).
`
`In general, we adopt the areas of agreement in the parties’ proposals.
`
`Patent Owner’s proposed academic or industry experience of telephony9
`
`systems comports with the level of ordinary skill in the art reflected in the
`
`prior art of record, which relate to telephone communication systems.
`
`Petitioner has not explained sufficiently why the broader field of
`
`communications systems is a more appropriate are of academic or industry
`
`experience than telephony systems. Thus, we generally adopt Patent
`
`Owner’s proposed academic or industry experience in telephony systems.
`
`
`
`9 MCGRAW-HILL DICTIONARY OF SCIENTIFIC AND TECHNICAL TERMS 2112
`(6th ed. 2003) (defining telephony as “[t]he transmission of speech to a
`distant point by means of electric signals”) (Ex. 3002).
`20
`
`
`
`IPR2014-00749
`Patent 8,577,003 B2
`
`
`Therefore, one of ordinary skill in the art would have a Bachelor of
`
`Science degree in electrical engineering, computer science, or an equivalent
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
