Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 6
`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 IPR2014-00749
`Patent 8,577,003 B2
`
`
`
`
`
`
`
`
`
`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 6
`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 IPR2014-00749
`Patent 8,577,003 B2
`
`
`
`
`
`
`
`
`
`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
`
`
`
`
`
`
`IPR2014-00749
`Patent 8,577,003 B2
`
`INTRODUCTION
`Global Tel*Link Corporation (“Petitioner”) filed a Petition (Paper 1,
`“Pet.”) requesting an inter partes review of claims 1-14 (the “challenged
`claims”) of U.S. Patent No. 8,577,003 B2 (Ex. 1001, “the ’003 patent”).
`Patent Owner, Securus Technologies, Inc., filed a Preliminary Response.
`Paper 5 (“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 1-14 of the ’003 patent.
`
`A. Related Matters
`Petitioner has requested inter partes review of related patents—
`U.S. Patent No. 7,899,167 B1 (IPR2014-00493), U.S. Patent
`No. 8,340,260 B1 (IPR2014-00824), and U.S. Patent No. 7,529,357 B1
`(IPR2014-00825).
`
`B. 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-
`
`2
`
`
`
`
`
`IPR22014-007449
`
`
`Patennt 8,577,0003 B2
`
`ies and proovides, for r
`
`
`
`
`
`
`20. The call prrocessing pplatform seerves multiiple facilit
`
`
`
`
`
`
`
`
`exammple, callinng party iddentificationn, call valiidation, calll routing,
`and
`
`
`
`
`
`
`
`connnection to tthe public switched teelephone nnetwork (PPSTN) or aa digital
`
`
`
`
`
`
`
`netwwork. Id. att Abstract, 8:41-45. The call prrocessing pplatform mmay be use
`
`
`to prrovide calliing servicees to prisonn facilities.. Id. at 5:557-60.
`
`
`
`
`
`
`
`
`Figure 1 of the ’0003 patent iss set forth bbelow:
`
`d
`
`
`sing systemm 100.
`
`
`Figure 1 illustrates ccall proces
`Call pro
`
`
`
`
`
`cessing system 100 iincludes caall processiing platforrm 101,
`
`
`
`
`
`whicch communnicates witth facilitiess 150, 160,, 170, 180
`
`
`
`
`
`
`Id. aat 5:45-48. Call proceessing gateeways 140
`
`
`, at or nearr each facillity 150,
`
`through neetwork 1300.
`
`
`
`3
`
`
`
`IPR2014-00749
`Patent 8,577,003 B2
`
`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 6:14-18.
`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.
`
`C. Challenged Claims
`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;
`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);
`
`4
`
`
`
`IPR2014-00749
`Patent 8,577,003 B2
`
`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 first 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
`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
`
`5
`
`
`
`IPR2014-00749
`Patent 8,577,003 B2
`
`packets or the incoming VoIP data packets by communicating
`data over the LAN.
`Id. at 19:38-20:20.
`
`D. Asserted Grounds of Unpatentability
`Petitioner contends the challenged claims are unpatentable based on
`the following grounds:
`
`Reference(s)
`Spadaro1
`Spadaro and Hodge2
`Bellcore3 and Hodge
`
`Basis
`
`§ 103
`
`§ 103
`
`§ 103
`
`Claims challenged
`
`1-4, 8-11
`
`4-7, 11-14
`
`1-14
`
`ANALYSIS
`A ground of unpatentability can be instituted only if the petition
`supporting the ground demonstrates 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.
`
`
`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”).
`
`6
`
`
`
`IPR2014-00749
`Patent 8,577,003 B2
`
`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
`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. 6-7; Prelim. Resp. 21-22. We have determined no
`terms in the challenged claims require express construction for this decision.
`
`B. Obviousness over Spadaro
`Petitioner contends claims 1-4 and 8-11 would have been obvious
`under § 103 over Spadaro. Pet. 7-25. 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. 1003). We determine Petitioner has
`demonstrated a reasonable likelihood that claims 1-4 and 8-11 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
`
`7
`
`
`
`
`
`IPR22014-007449
`
`
`Patennt 8,577,0003 B2
`
`
`
`as a public swiitched telepphone netwwork (“PSTTN”). Id. aat 2:48-57
`; see also
`
`
`
`
`
`
`
`
`id. att Fig. 1. TThe controll computer is located
`
`
`at the prisson and proovides for
`
`
`
`
`switcching, acceessing, rouuting, timinng, billing,
`
`
` and the coontrol of thhe
`
`
`
`
`
`telepphones at thhe prison. Id. at 2:455-49. As aa way to coontrol telepphone
`
`
`
`
`
`
`
`
`
`usagge, the conttrol compuuter includees a three-wway call deetection syystem and
`
`
`
`
`
`
`
`PIN checking tto restrict ttelephone uusage baseed on a PINN associateed with a
`
`
`
`callinng card nuumber. Id. at 3:32-422; see also
`
`Fig. 1.
` describes
`Spadaro
`
`
`
`
`
`is set forth beloow:
`
`
`
`
`
`a multiplee site telephhone systemm in Figurre 3, whichh
`
`
`e system.
`e telephonmultiple siteustrates a mFigure 3 illu
`
`
`
`
`
`
`
`
`
`
`
`See EEx. 1004, 22:25-26. FFigure 3 shhows four ssites 36, 388, 40, 42, eeach of
`44 to
`
`
`
`
`
`
`whicch has multiple contrrol computeers 32 connnected throough hubs
`
`8
`
`
`
`
`
`IPR22014-007449
`
`
`Patennt 8,577,0003 B2
`
`
`
`
`
`
`
`
`routeer 46. Id. aat 3:53-55.. Each of tthe sites mmay be a priison in a sttate-wide
`
`
`
`
`
`
`prisoon system. Id. at 3:61-62. Callls from eacch of the foour sites arre routed
`
`
`
`
`fromm each site’’s router 466 to server
`
`48, whichh connects
`
`the calls too central
`
`
`
`
`
`
`officce 34. Id. aat 3:55-57.. Spadaro describes oobtaining llower cost
`and
`et and
`
`
`
`efficciency by ooperating thhe system
`
`
`shown in FFigure 3 ovver Ethern
`
`Voicce over Inteernet Protoocol (“VoIP”) networrks. Id. at
`3:58-62.
`
`
`
`
`functions,
`
`
`Spadaro also descrribes telephhone systemms in whicch control
`
`
`
`
`an Etherneet
`
`
`
`
`
`
`incluuding PIN checking, are distributed to a reemote locaation over
`
`
`
`
`
`
`
`netwwork (id. att 4:4-10; Fiig. 4) and oover a netwwork that inncludes booth VoIP
`
`
`
`
`
`
`
`and ddata (id. att 2:30-31; FFig. 5). Sppadaro desscribes resttricting teleephone
`
`
`
`
`
`usagge associateed with a PPIN, whichh, in turn, i
`
`s associateed with a c
`
`
`
`
`
`nummber used too place a call. See idd. at 3:30-337. Spadarro’s Figuree 5 is set
`
`
`
`forthh below:
`
`alling cardd
`
`em phone systeates a telepFigurre 5 illustra
`
`
`
`
`a
`
`
`
`that ddistributes control fuunctions to
`
`
`
`
`remote loccation over a VoIP anand data neetwork.
`
`
`Ex. 11004, 2:277-30, 4:4-9,, 4:25-27.
`
`
`
`
`
`
`9
`
`
`
`IPR2014-00749
`Patent 8,577,003 B2
`
`Figure 5 shows control functions—routing 22, billing 24, and PIN
`checking 28—distributed to a location remote from the inmate
`telephones 10. Id. at 4:6-10, 4:25. Spadaro explains that an advantage of
`distributing these functions to a remote location is that “the functions can be
`centralized with the functions being performed at a central administration
`location.” Id. at 4:10-13.
`Also further shown in Figure 5, “three-way call detection 30a is
`moved from the site, i.e. in the control computer 12 as indicated at 30, to a
`point beyond the VoIP network.” Id. at 4:27-30. Spadaro explains that
`VoIP transmission requires voice compression and packetizing, which are
`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.
`
`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. 10.
`Claim 1 requires some devices be located at a prison facility.
`Specifically, claim 1 requires “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.” Petitioner contends that Spadaro’s control
`
`10
`
`
`
`IPR2014-00749
`Patent 8,577,003 B2
`
`computers (also called “Commander™ units” after a particular model)
`disclose or suggest the recited call processing gateways. Pet. 11. As noted
`by Petitioner, Spadaro’s control computers are located at sites 36, 38, 40, 42,
`which may be prison facilities. Pet. 8; 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 validation 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 the outgoing VoIP data packets [from prison facilities] or the
`incoming VoIP data packets” sent to the prison facilities. Pet. 16-17.
`Spadaro’s VoIP Gateway 26a discloses or suggests the recited “call
`application management system” for processing outgoing VoIP data packets
`from prison facilities for transmission to a telephone carrier network.
`Pet. 17-18. As shown in Figure 5 and noted by Petitioner, 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. 17-19 (citing Ex. 1004, 4:49-53). Petitioner relies on Spadaro’s PIN
`checking 28 as disclosing or suggesting the recited “validation system.”
`Pet. 19-20.
`Claim 1 further requires that the prison facilities be located remotely
`from the centralized call processing system. According to Petitioner,
`Spadaro’s Figure 3 shows multiple prison sites being administered at a
`central location. Pet. 8. Petitioner also relies on Spadaro’s indication that
`“PIN checking 28 [is] distributed to a remote location or locations.” Pet. 14
`(citing Ex. 1004, 4:6-8). As noted by Petitioner (Pet. 14), Spadaro indicates
`
`11
`
`
`
`IPR2014-00749
`Patent 8,577,003 B2
`
`distributing PIN checking and other functions to remote locations “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. 17 (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 the prison facilities by a WAN.
`See Pet. 10-11, 18; see also id. at 11 (showing Petitioner’s Figure A, which
`incorporates portions of Spadaro’s Figure 5).
`Claim 1 also requires the recited “unauthorized call activity detection
`system” and the recited “call application management system” be connected
`via a local area network (LAN) to a networking device, which, in turn, is
`connected to prison facilities “via a wide area network (WAN).” The
`networking device is configured to “receive outgoing Voice over Internet
`Protocol (VoIP) data packets from prison facilities[] and send incoming
`VoIP data packets to the prison facilities.” Claim 1 also requires the
`“validation system” be “connected via the LAN to the call application
`management system.”
`According to Petitioner, Spadaro’s server 48 discloses or suggests the
`recited “networking device.” Pet. 14-15. For the recited “LAN,” Petitioner
`relies on its declarant’s explanation that one skilled in the art would
`recognize that associated systems implementing functions at a central
`administration location would be connected via a LAN. See Pet. 17 (citing
`
`12
`
`
`
`IPR2014-00749
`Patent 8,577,003 B2
`
`Ex. 1003, ¶ 71 (concerning the recited “unauthorized call activity detection
`system”)); Pet. 18 (citing Ex. 1003, ¶ 72 (concerning the recited “call
`application management system”)); Pet. 19 (citing Ex. 1003, ¶ 77
`(concerning the recited “validation system”)).
`In general, Patent Owner challenges Petitioner’s proposed
`combination as not disclosing: a centralized call processing system; the
`recited “prison facilities located remotely from the centralized processing
`system”; the recited “networking device,” the recited “validation system,”
`and the recited “connections via a local area network.” Prelim. Resp. 2-4,
`21-22, 25-33. 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). Id. at 4-5, 23-25. Patent Owner further contends, essentially, that
`the Board should give deference to the Examiner’s earlier determination of
`allowability over Spadaro. Id. at 1, 24-25, 34-35.
`
`3. Analysis
`On this record, we are persuaded Petitioner has demonstrated a
`reasonable likelihood of prevailing in showing that the devices recited in
`claim 1 and connected in the manner recited in claim 1 would have been
`obvious over Spadaro. For example, Petitioner’s proposed combination
`relies on Spadaro’s control computers (as disclosing or suggesting the
`recited call processing gateways), server 48 (as disclosing or suggesting the
`recited networking device), three-way call detect system (as disclosing or
`suggesting the recited unauthorized call activity detection system), VoIP
`gateway (as disclosing or suggesting the recited call application management
`
`13
`
`
`
`IPR2014-00749
`Patent 8,577,003 B2
`
`system), and PIN checking 38 (as disclosing or suggesting the recited
`“validation system”) 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 PIN checking “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 PIN checking to a remote location discloses or suggests the recited
`“validation system . . . 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.” Petitioner further relies on its declarant’s
`explanation that a person of ordinary skill in the art would recognize that the
`dialed PIN would be transmitted to the centralized location in outgoing VoIP
`data packets from the prison facility where the call was placed. Pet. 19
`(citing Ex. 1003, ¶ 76).
`On this record, we are not persuaded by Patent Owner’s contentions
`that Petitioner fails to have a reasonable likelihood of prevailing. First,
`
`14
`
`
`
`IPR2014-00749
`Patent 8,577,003 B2
`
`Patent Owner contends that Petitioner’s proposed combination would not
`render obvious claim 1. Specifically, Patent Owner contends that Spadaro
`describes distribution of functions by a call processing system at prison
`facilities and, therefore, is not a centralized system. Prelim. Resp. 4, 21-22,
`25-27. 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. 28. Thus, on this record, we are
`persuaded by Petitioner’s contention that Spadaro discloses or suggests 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. 28.
`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 description that inmate calls are routed
`over VoIP (Pet. 15 (citing Ex. 1004, 3:63-65) and 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. 15 (quoting Ex. 1004, 3:58-61)). Thus, we
`are persuaded, on this record, that there is a reasonable likelihood that
`
`15
`
`
`
`IPR2014-00749
`Patent 8,577,003 B2
`
`Petitioner will prevail in showing Spadaro discloses or suggests server 48
`uses VoIP, and so receives and distributes VoIP data packets, as required by
`claim 1.
`Patent Owner also contends that Spadaro does not teach the recited
`“validation system” because Spadaro does not describe PIN checking based
`on the outgoing VoIP data packets or the incoming VoIP data packets, as
`required in claim 1. Prelim. Resp. 29-31. Instead, according to Patent
`Owner, Spadaro describes PIN checking occurring at the control computers
`at the prison facilities and describes PIN checking, at a remote location, that
`is based on data packets that are not VOIP data packets. Prelim. Resp. 30.
`Patent Owner further contends that Petitioner’s declarant’s conclusion “that
`one skilled in the art would recognize that the dialed PIN would be
`transmitted to the centralized location in one or more outgoing VoIP data
`packets” is unsupported and should be discounted in view of the “clear
`separation of [data and VoIP] packet types shown” in Spadaro’s Figures 4
`and 5. Id. at 30-31.
`For purposes of institution and on this record, we are persuaded that
`there is a reasonable likelihood that Spadaro’s description of checking PIN
`discloses or suggests the recited “a validation system . . . 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.” Spadaro describes
`telephone systems in which control functions, including PIN checking, are
`distributed to a remote location over an Ethernet network (id. at 4:4-10;
`Fig. 4) and over a network that includes both VoIP and data (id. at 2:30-31;
`Fig. 5). At this juncture and on this record, Patent Owner’s contentions, in
`
`16
`
`
`
`IPR2014-00749
`Patent 8,577,003 B2
`
`its Preliminary Response, focus on the specific structure present in the prior
`art—separation of data and VoIP packet types shown in one of the networks
`shown in Spadaro’s Figures 4 and 5—and fail to consider sufficiently
`Petitioner’s combination and the capabilities of the ordinarily skilled artisan.
`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.”). Moreover, as noted by the Court in KSR, “[a] person of
`ordinary skill is also a person of ordinary creativity, not an automaton.”
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
`Patent Owner also contends that Spadaro fails to disclose or suggest
`the various recited components in claim 1 are connected via a LAN. Prelim.
`Resp. 31-35. Rather, Patent Owner contends that Spadaro’s describes
`centralized administration of routing, billing, and PIN checking, but not
`centralized call processing. Id. at 31. Patent Owner further contends that
`Spadaro does not describe the remote components performing three-way call
`detection connected via a LAN to, or being located in the same place as, the
`systems performing “‘distributed’ routing, billing, and PIN checking
`functions,” which are shown connected to one another by a LAN. Id. at 33.
`We are persuaded that there is a reasonable likelihood that Petitioner
`will prevail in demonstrating Spadaro discloses or suggests the recited
`unauthorized call activity detection system, call application management
`system, validation system, and networking device are connected via a LAN
`in the manner required by claim 1. Spadaro describes routing, billing, and
`
`17
`
`
`
`IPR2014-00749
`Patent 8,577,003 B2
`
`PIN checking connected by a LAN, as acknowledged by Patent Owner.
`Ex. 1004, Fig. 4; Prelim. Resp. 33. Spadaro describes the three-way call
`detection system 30a “being moved from the site . . . to a point beyond the
`VoIP network.” Ex. 1004, 4:27-30. Petitioner’s declarant contends a person
`of ordinary skill in the art would understand associated systems in the same
`central administration location would be connected via a LAN. See Pet. 17
`(citing Ex. 1003, ¶ 71 (concerning the recited “unauthorized call activity
`detection system”)); Pet. 18 (citing Ex. 1003, ¶ 72 (concerning the recited
`“call application management system”)); Pet. 19 (citing Ex. 1003, ¶ 77
`(concerning the recited “validation system”)). Thus, we are persuaded, for
`purposes of institution, that there is a reasonable likelihood Petitioner will
`prevail in showing an ordinarily skilled artisan would understand Spadaro as
`suggesting the recited components of the centralized call processing system
`to be in the same location and connected via a LAN.
`Second, Patent Owner contends “neither the Petition nor [Petitioner’s
`declarant] provide an adequate analysis of obviousness with respect to the
`Graham factors and application of Spadaro relative to the issued claims.”
`Prelim. Resp. 23; see also id. at 4-5. 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 Declaration on which
`the Petitioner relies “explains how the prior art references could have been
`combined in order to create the inventions claimed in the asserted claims.”
`Prelim. Resp. 23. As such, the Declaration “supplants the actual test of the
`
`18
`
`
`
`IPR2014-00749
`Patent 8,577,003 B2
`
`[obviousness] statute and Graham with a ‘could . . . create the inventions’
`standard.” Id.
`On this record, we do not agree that “the [obviousness] framework in
`the Declaration is deficient,” as Patent Owner contends (Prelim. Resp. 23).
`Petitioner’s declarant states an “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. 1003,
`¶ 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.
`Third, Patent Owner contends the Examiner considered the Spadaro
`reference during prosecution of the application that issued as the ’003 patent,
`and, therefore, essentially, the Board should give deference to the earlier
`determination of allowability over Spadaro. Prelim. Resp. 1, 24-25, 33-35.
`There is no presumption of validity as to the challenged claims 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
`
`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).
`
`19
`
`
`
`IPR2014-00749
`Patent 8,577,003 B2
`
`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
`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 PIN checking 28
`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 2-4 and 8-11 would have been obvious over
`Spadaro.
`
`C. Obviousness Over Spadaro and Hodge
`Petitioner also contends that claims 4-7 and 11-14 would have been
`obvious over Spadaro and Hodge. Claims 4-7 depend from independent
`claim 1, and claims 11-14 depend from independent claim 8. Petitioner
`asserts Hodge discloses or suggests a call application management system
`configured to select calls to be recorded by the call recording system, as
`additionally recited
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
