Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 41
`Filed: October 7, 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 IPR2014-00785
`Patent 6,636,591 B1
`_______________
`
`
`
`Before KEVIN F. TURNER, BARBARA A. BENOIT, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318 and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`571.272.7822
`
`
`Paper No. 41
`Filed: October 7, 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 IPR2014-00785
`Patent 6,636,591 B1
`_______________
`
`
`
`Before KEVIN F. TURNER, BARBARA A. BENOIT, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318 and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`IPR2014-00785
`Patent 6,636,591 B1
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`
`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 not shown by a preponderance of the evidence that claims 1–
`10 of U.S. Patent No. 6,636,591 B1 (Ex. 1001, iss. Oct. 21, 2003, “the ’591
`patent”) are unpatentable. We also address the Petitioner’s Motion to
`Exclude and Patent Owner’s Motion for Observation Regarding Cross-
`Examination Testimony.
`
`A. Procedural History
`Global Tel*Link Corporation (“Petitioner”) filed a Corrected Petition
`(Paper 4, “Pet.”) to institute an inter partes review of claims 1–10 of the
`’591 patent. Securus Technologies, Inc. (“Patent Owner”) filed a
`Preliminary Response (Paper 9, “Prelim. Resp.”). Pursuant to 35 U.S.C.
`§ 314, we instituted an inter partes review of claims 1–10 under 35 U.S.C.
`§ 103(a) as unpatentable in view of Karacki1 and Gainsboro ’8432. See
`Paper 10 (“Dec. to Inst.”), 22.
`After institution of trial, Patent Owner filed a Patent Owner Response
`(Paper 15, “PO Resp.”), to which Petitioner filed a Reply (Paper 21,
`“Reply”). In addition, Petitioner filed a Motion to Exclude. Paper 26 (“Pet.
`Mot. Exclude”). Patent Owner filed an Opposition to Petitioner’s Motion to
`
`1 Loren Karacki & Robert B. Levinson, REWARDS IN AN INSTITUTION FOR
`YOUTHFUL OFFENDERS IN THE HOWARD JOURNAL OF PENOLOGY AND CRIME
`PREVENTION 20–30 (1970) (Ex. 1012, “Karacki”).
`2 U.S. Patent No. 7,106,843 B1, issued Sept. 12, 2006 (Ex. 1004, “Gainsboro
`’843”).
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`Exclude (Paper 34, “PO Exclude Opp.”), and Petitioner filed a Reply (Paper
`35, “Pet. Exclude Reply”). Patent Owner also filed observations on the
`cross-examination of Petitioner’s declarant (Paper 29), to which Petitioner
`filed a response (Paper 33).
`An oral argument was held on June 3, 2015. A transcript (“Tr.”) of
`the oral argument is included in the record.3 Paper 40.
`B. Related Proceedings
`The parties inform us that there are no matters related to the ’591
`patent. Pet. 2; Paper 7, 1; Paper 17, 1.
`C. The ’591 Patent
`The ’591 patent relates to a method of “affecting inmate conduct
`through providing discounted telephone rates based on certain criteria.”
`Ex. 1001, 1:9–11. The method requires a correctional facility to set
`predetermined criteria for obtaining discounted telephone rates. Id. at 2:38–
`40. The criteria can be based on any type of measurement of behavior and
`points are awarded or deducted based on inmate behavior. Id. at 2:45–47.
`When an inmate obtains and maintains a predetermined number of points for
`a predetermined period of time, the inmate is rewarded with the privilege of
`discounted telephone calls. Id. at 1:58–2:18. According to the ’591 patent,
`“[w]hen an inmate receives a reduced rate for his or her telephone calls
`
`
`3 The parties each filed Objections to Demonstrative Exhibits. Papers 38,
`39. In this Final Written Decision, we rely directly on the arguments
`presented properly in the parties’ briefs and the evidence of record. The
`demonstrative exhibits were only considered to the extent they are consistent
`with those arguments and evidence, therefore, the objections are overruled.
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`based on good behavior, the inmate will have an incentive to maintain his or
`her good behavior.” Id. at 2:52–55.
`Figure 1 of the ’591 patent is reproduced below.
`
`
`Figure 1 is a schematic of a telephone network connecting originating
`telephone 10 and destination telephone 20, and connected to one or more
`databases 18. Id. at 3:1–19. The originating telephone 10 is connected to
`premises-based telecommunications system 12. Id. at 3:3–5. An outside
`call made by originating telephone 10 is received by central office 14 and
`routed to service bureau 16. Id. at 3:10–14. Service bureau 16 is linked to
`one or more databases 18 and can route the call to destination telephone 20
`via central office 22. Id. at 3:14–20. According to the ’591 patent,
`databases 18 contain information that can be used to (i) determine if an
`inmate qualifies for a discounted telephone rate and apply such rate to any
`call purchased by the inmate, or (ii) associate a discounted telephone rate
`with a PIN number or a predetermined destination number and apply such
`discounted rate to the PIN or destination number. Id. at 3:42–56.
`D. Illustrative Claims
`As noted above, an inter partes review was instituted as to claims 1–
`10 of the ’591 patent, of which claims 1 and 9 are the only independent
`claims. Claims 1 and 9 are illustrative of the challenged claims and are
`reproduced below (with paragraphing):
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`1. A method of affecting inmate behavior within a correctional
`facility comprising the steps of:
`providing an identification for each inmate;
`establishing a discount telephone rate;
`establishing a measurement of conduct during incarceration for
`the inmates, wherein said measurement is a predetermined
`point total;
`reducing the telephone call charge rate for inmates that meet the
`measurement of conduct during incarceration for a
`predetermined period of time;
`maintaining a record of inmate behavior for each inmate
`according to said identification;
`awarding points to each inmate based on particular behavior;
`and
`deducting points from each inmate based on particular behavior.
`
`9. A method of affecting inmate behavior within a correction
`facility comprising the steps of:
`establishing a discount telephone rate;
`establishing a measurement of conduct during incarceration for
`the inmates, wherein said measurement is a predetermined
`point total;
`reducing the telephone call charge rate for inmates that meet the
`measurement of conduct during
`incarceration
`for a
`predetermined period of time;
`associating
`the reduced charge rate with at
`predetermined destination number;
`maintaining records of inmate behavior for each inmate
`according to an inmate identifier;
`awarding points to inmates based on particular behavior; and
`deducting points from inmates based on particular behavior.
`
`least one
`
`Ex. 1001, 4:29–46, 4:65–6:4.
`
`II. DISCUSSION
`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
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`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
`also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275–79 (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, and absent any special definitions, we give claim terms
`their ordinary and customary meaning, as would be understood by one of
`ordinary skill in the art at the time of the invention. In re Translogic Tech.,
`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`Although we construed the terms “reducing the telephone call charge
`rate” and “establishing a discount telephone rate” in the Decision to Institute
`(see Dec. to Inst. 6–8), we determine that a specific construction of these
`terms is not necessary for our analysis in this Final Written Decision.
`Therefore, all claim terms will be given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art at the
`time of the invention.
`B. Principles of Law
`To prevail in its challenges to the patentability of the claims, a
`petitioner must establish facts supporting its challenges by a preponderance
`of the evidence. 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 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.
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). To establish
`obviousness of a claimed invention, all the claim limitations must be taught
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`or suggested by the prior art. See CFMT, Inc. v. Yieldup Int’l Corp., 349
`F.3d 1333, 1342 (Fed. Cir. 2003); In re Royka, 490 F.2d 981, 985 (CCPA
`1974). A patent claim composed of several elements, however, is not
`proved obvious merely by demonstrating that each of its elements was
`known, independently, in the prior art. KSR, 550 U.S. at 418. In that regard,
`for an obviousness analysis it can be important to identify a reason that
`would have prompted one of skill in the art to combine prior art elements in
`the way the claimed invention does. Id. A precise teaching directed to the
`specific subject matter of a challenged claim, however, is not necessary to
`establish obviousness. Id. Rather, obviousness must be gauged in view of
`common sense and the creativity of an ordinarily skilled artisan. Id. 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 skill in the art; and (4) objective evidence of nonobviousness, i.e.,
`secondary considerations. See Graham v. John Deere Co., 383 U.S. 1, 17–
`18 (1966).
`We analyze the instituted grounds of unpatentability in accordance
`with the above-stated principles.
`C. Level of Ordinary Skill in the Art
`In determining whether an invention would have been obvious at the
`time it was made, we consider 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).
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`Petitioner’s declarant, Dr. Leonard Forys, opines that a person of
`ordinary skill in the art relevant to the ’591 patent “would have an associate
`degree in a technical field such as Electrical Engineering, Computer Science,
`or equivalent experience and a year or two experience in
`telecommunications technologies in order to be able to understand the
`nomenclature and architectures of the invention and the prior art.” Ex. 1010
`¶ 29. Patent Owner does not disagree with Petitioner’s assertions regarding
`the level of skill in the art, nor does Patent Owner offer any contrary
`explanation regarding who would qualify as a person of ordinary skill in the
`art relevant to the ’591 patent. PO Resp. 12–13.
`Based on our review of the ’591 patent, the types of problems and
`solutions described in the ’591 patent and cited prior art, and the testimony
`of Petitioner’s declarant, we conclude that a person of ordinary skill in the
`art at the time of the claimed invention would have had at least a an
`associate degree in Electrical Engineering, Computer Science, or a similar
`discipline, and at least one year of work experience in the design and/or
`development of telecommunications technologies. We further note that the
`applied prior art reflects the appropriate level of skill at the time of the
`claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`Cir. 2001).
`D. Alleged Obviousness of Claims 1–10 in view of Karacki and
`Gainsboro ’843
`Petitioner alleges that claims 1–10 of the ’591 patent are unpatentable
`under 35 U.S.C. § 103 in view of Karacki and Gainsboro ’843. Pet. 14–26.
`Patent Owner disputes Petitioner’s position, arguing that the combined
`references fail to teach or suggest all the elements required by the challenged
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`claims and that a person of ordinary skill in the art would have had no reason
`to combine references. PO Resp. 13–33. We have reviewed the Petition, the
`Patent Owner Response, and Petitioner’s Reply, as well as the relevant
`evidence discussed in those papers. For reasons that follow, we determine
`that Petitioner has not shown by a preponderance of the evidence that claims
`1–10 of the ’591 patent are unpatentable in view of Karacki and Gainsboro
`’843.
`
`1. Overview of Karacki
`Karacki is directed to a behavior modification program in a
`correctional facility, and specifically discloses a point system for youth
`offenders. The offenders are awarded points weekly based on their
`behavior, such as punctuality and productiveness, in various activities
`including chore detail and school work. Ex. 1012, 23. Karacki further
`discloses that these points are converted directly to “money” credited to the
`offender’s accounts, which may be used for a variety of purchases, including
`telephone calls. Id. at 26. According to Karacki, offenders can also be fined
`points for misconduct. Id. at 24.
`2. Overview of Gainsboro ’843
`Gainsboro ’843 discloses a system “for managing institutional
`telephone activity utilizing a computer-based telephony management unit.”
`Ex. 1004, Abstract. The system in Gainsboro ’843 provides for assigning a
`personal identification number or PIN to inmates so that inmates must enter
`their PIN before making a call from an institution telephone. Id. at 1:54–56.
`The telephone service provider delivers a telephone bill to the correctional
`institution that lists the cost of each call and the PIN or name of the inmates
`who made the call. Id. at 1:56–61.
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`One embodiment in Gainsboro ’843 discloses a specific software
`interface that allows institutional staff to vary the internal rate charged to
`inmates for collect calls, as well as to control the maximum length of a call
`an inmate can make and when they are allowed to make telephone calls. Id.
`at 33:57–34:9; Fig. 4C. The system also allows institutional staff to set
`limitations on which telephone calls will be connected, so that either i) only
`calls to pre-approved telephone numbers can be made or ii) calls to restricted
`telephone numbers are prohibited. Id. at 6:43–49.
`Another embodiment in Gainsboro ’843 discloses a system that uses
`biometric verification or voice recognition features. Id. at 7:41–42. The
`system can digitize a sample of a caller’s voice or a called party’s voice;
`then, at a later date, the system can compare the digitized sample with a
`stored voice print, to verify the identity of the caller. Id. at 7:42–45. Such
`monitoring can also be used to ensure that no unauthorized callers are
`participating in a call, and to ensure that inmates are not sharing or selling
`calling privileges associated with a particular PIN or inmate account to other
`inmates that are subject to more limited calling privileges. Id. at 7:45–55.
`According to Gainsboro ’843, the disclosed system utilizes a database
`to store PINs as well as to determine the availability and the application of
`discounts to calls made by specific inmates. Id. at 5:50–53; 105:26–28. The
`database also stores information regarding an inmate’s telephone billing
`account. An inmate may purchase credits for their telephone billing account
`and the credits are applied to any calls made by the inmates. Id. at 9:44–46.
`Gainsboro ’843 teaches that such an account must maintain a positive
`balance. Id.
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`
`3. Analysis
`Independent claims 1 and 9 require “reducing the telephone call
`charge rate for inmates that meet the measurement of conduct during
`incarceration for a predetermined period of time.”
`Petitioner argues that Karacki discloses a correctional facility reward
`system using a predetermined point total as a measurement of conduct for
`inmates, who can earn points with good behavior. Pet. 18 (citing Ex. 1012,
`22); Ex. 1010 ¶ 57. Petitioner then argues that the system described in
`Karacki allows a direct conversion of points to dollars, specifically, 100
`points equals 1 dollar. Id. Petitioner contends that these points may be used
`to pay for telephone calls, creating a 100% discount for the call as a reward
`for the inmate’s accumulated good behavior. Id. (citing Ex. 1012, 26).
`According to Petitioner, the system in Karacki provides reduced rates for
`inmates who met a measurement of conduct without having to modify the
`telephone infrastructure (Ex. 1017 ¶ 6), while Gainsboro’843 discloses an
`electronic system to dynamically reduce telephone rates for inmates
`(Ex. 1004, 105:26–28). Reply 3.
`Petitioner contends a person of ordinary skill in the art would have
`been led to combine the teachings of Karacki and Gainsboro’843, because a
`skilled artisan would have recognized that Gainsboro ’843’s system, using
`well-known time of day discounts, could be applied to Karacki’s inmate
`reward system. Pet. 16–17; Reply 4; see Ex. 1010 ¶ 49; Ex. 1017 ¶ 12.
`According to Petitioner, a person of skill in the art would have been
`motivated to apply the monitoring and control system of Gainsboro ’843 to
`the inmate reward system of Karacki in order to provide automated control
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`of account balances for the institution, prevent transfer of points, and enable
`a greater range of calling options to the inmates. Pet. 17; Ex. 1010 ¶ 49.
`Petitioner supports its position with the declaration of Dr. Forys, who
`testifies that
`Karacki describes an incentive-based points system as a manual
`way to reduce telephone rates for inmates. This allowed
`Karacki to provide reduced rates for inmates who met the
`measurement of conduct without having
`to modify
`the
`telephone infrastructure.
`
`Ex. 1017 ¶ 6.
`
`* * * * *
`
`Applying Gainsboro [’843] to Karacki, [a person of ordinary
`skill in the art] would have understood that Karacki’s manual
`incentive system of reduced rates for phone calls could be
`automated through Gainsboro [’843]’s inmate telephone
`system, and [a person of ordinary skill in the art] would have
`been motivated to do so for the reasons I enumerated in my first
`declaration.
`
`Id. ¶ 9 (citing Ex. 1010 ¶¶ 47–50). Dr. Forys testifies in his first declaration
`that a person of ordinary skill in the art also would have reason to combine
`Gainsboro ’843 with Karacki, because Gainsboro ’843 provides automated
`control of the inmates’ account balances and can vary the internal rate
`charged to inmates for collect telephone calls, thereby saving the
`correctional facility time and money. Ex. 1010 ¶¶ 48–50. Dr. Forys then
`concludes that applying Gainsboro ’843 to Karacki would have been a
`simple combination of known elements easily made by a skilled artisan to
`achieve predictable results, thereby rendering the challenged claims obvious.
`Id. at ¶¶ 49–50.
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`Patent Owner disagrees with Petitioner’s conclusion that Karacki and
`Gainsboro ’843 teach or suggest “reducing the telephone call charge rate for
`inmates that meet the measurement of conduct during incarceration.” PO
`Resp. 22. Patent Owner argues Karacki only mentions telephone calls in
`one passing phrase (“They can buy telephone calls home, or pay for items
`ordered from a mail order catalogue; they can pay to attend selected events .
`. . .”) and does not disclose discounted “telephone rates” for “inmates” with
`good behavior. Id. at 24 (citing Ex. 1012, 26); Ex. 2003 ¶ 68. Patent Owner
`further argues that Karacki fails to even suggest establishing a discounted
`telephone rate or reducing the discounted telephone rate. Id. at 22–23.
`Instead, according to Patent Owner, Karacki merely teaches that youth
`offenders can build up points that are exchanged for currency, whereby
`normal market prices are still paid by a youth offender for goods and
`services. PO Resp. 24–25 (citing Ex. 1012, 24); Ex. 2003 ¶ 69. Patent
`Owner, thus, argues that Karacki is directed to the use of a “different
`currency” but has no effect on the telephone rate charged to an inmate for a
`phone call. PO Resp. 24. Patent Owner also contends Petitioner is
`prohibited from relying on any disclosure in Gainsboro ’843 relating to
`reducing telephone call charge rates, because Petitioner never mentions
`Gainsboro ’843 as meeting this specific claim element. PO Resp. 25;
`Tr. 27:6–12. Therefore, Patent Owner concludes that it would not have been
`obvious to a person of ordinary skill in the art to use “reducing the telephone
`charge rate” as recited in the challenged claims.
`Patent Owner also disputes Petitioner’s conclusion that a person of
`ordinary skill in the art would have had reason to combine the teachings of
`Karacki and Gainsboro ’843 to arrive at the claimed invention. PO
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`Resp. 13–15. First, Patent Owner contends that the references do not teach
`all the limitations of the challenged claims, and therefore, a person of
`ordinary skill in the art would have had no reason to combine Karacki and
`Gainsboro ’843 and would not have had a reasonable expectation of success
`in combining the references to arrive at the claimed invention. Id. at 14.
`According to Patent Owner, Karacki teaches a system of encouraging work
`and good behavior by awarding token points for students to spend on
`commissary items and for other privileges. Id. at 15 (citing Ex. 1012, 22–
`24). Patent Owner argues, however, that Karacki does not teach or suggest
`offering discounted telephone rates to inmates for achieving a threshold
`good behavior. Id. (citing Ex. 1012, 24); Ex. 2003 ¶ 56. Patent Owner
`further argues that Gainsboro ’843 fails to remedy the deficiencies of
`Karacki, because Gainsboro ’843 only teaches an automated telephone
`access system. Id. (citing Ex. 2003 ¶¶ 51, 56). Patent Owner supports its
`position with the declaration of Dr. Robert Akl, who testifies that the
`combined references are missing claim limitations, thus, “[o]ne of ordinary
`skill would find no reason to modify Karacki to include the automated phone
`system of Gainsboro because the result would not produce the desired effect
`of providing discounted telephone rates for the inmates that maintain a
`behavior above a predetermined point total.” Ex. 2003 ¶ 56.
`Second, Patent Owner contends that a skilled artisan would not have
`reason to combine Karacki or Gainsboro ’843, because the disclosure of
`Karacki teaches away from the claimed invention. PO Resp. 16–17. Patent
`Owner specifically argues that Karacki teaches away from claim limitation
`“reducing the telephone call charge rate” because Karacki identifies a
`problem with its reward system “not[ing] that some students have
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`accumulated enough points that they refuse to perform the desired
`behaviors” and “[a]s points accumulate in their spending accounts over the
`weeks, some [students] feel they can afford to loaf.” Id. at 16 (citing
`Ex. 1012, 28). According to Patent Owner, “[i]f telephone call charge rates
`are ‘reduced,’ loafing and refusal to perform desired behaviors will only
`increase because the students of Karacki can afford even more calls.” Id.
`(citing Ex. 2003 ¶ 57). Patent Owner argues that Petitioner never addresses
`whether the combination of Karacki and Gainsboro ’843 would ensure that
`“good things are being earned and not given away in an unrealistically
`generous environment.” Id. at 16–17 (citing Ex. 2003 ¶ 57). Patent Owner
`then concludes that Karacki teaches away from the inventions of
`independent claims 1 and 9, which both require “reducing the telephone
`charge rate.” Id.
`Lastly, Patent Owner contends a skilled artisan would not have
`combined Karacki and Gainsboro ’843, because the references lack
`structural or functional similarity, and thus, could not be combined. Id. at
`19–20. According to Patent Owner, Karacki fails to disclose any structure
`or function related to telephone call system, and only mentions telephone
`call in one phrase. Id. at 20 (citing Ex. 1012, 26). Patent Owner argues that
`Petitioner has failed to show that Karacki or Gainsboro ’843 are structurally
`or functionally similar enough to be combined. Id. at 19 (citing Ex. 2003
`¶ 60). Therefore, Patent Owner concludes Karacki and Gainsboro ’843 are
`not “properly combinable” for an obviousness challenge. Id.
`A patent claim composed of several elements is not proved obvious
`merely by demonstrating that each of its elements was known,
`independently, in the prior art. KSR Int’l Co., 550 U.S. at 419. In that
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`regard, for an obviousness analysis it can be important to identify a reason
`that would have prompted one of skill in the art to combine prior art
`elements in the way the claimed invention does. Id. On the record
`developed at trial, we are not persuaded that Petitioner has shown by a
`preponderance of the evidence that a person of ordinary skill in the art would
`have had a reason to combine the references to arrive at the challenged
`claims. Karacki does not disclose reducing the rate of telephone calls as
`reward to an inmate for good behavior, neither does Gainsboro ’843.
`Petitioner has not explained persuasively why a person of ordinary skill in
`the art would have applied the behavior modification program in Karacki to
`the automated calling system in Gainsboro ’843 so as to change the
`telephone call rate based on behavior, which is required by the claim
`limitation “reducing the telephone call charge rate for inmates that meet the
`measurement of conduct during incarceration for a predetermined period of
`time,” recited in each independent claim. Additionally, we are not
`persuaded that one of ordinary skill in the art would have viewed the
`creation of a 100% discount for the call as a reward to teach or suggest a
`change or reduction in the rate for telephone calls.
`Petitioner’s declarant, Dr. Forys, testifies that “Karacki describes an
`incentive-based points system as a manual way to reduce telephone rates for
`inmates.” Ex. 1017 ¶ 6. We disagree with Dr. Forys’ characterization of
`Karacki. Karacki discloses a behavior modification program in a
`correctional facility, where youth offenders are awarded points weekly based
`on good behavior. Ex. 1012, 23. Karacki further discloses that these points
`are converted directly to “money” credited to the offender’s accounts, which
`may be used for a variety of purchases, including telephone calls. Id. at 26.
`
`16
`
`
`
`IPR2014-00785
`Patent 6,636,591 B1
`
`There is no evidence of record indicating that Karacki describes an
`incentive-based points system as a manual way to reduce telephone rates for
`inmates.
`Dr. Forys then testifies that “[a person of ordinary skill in the art]
`would have understood that Karacki’s manual incentive system of reduced
`rates for phone calls could be automated through Gainsboro [’843]’s inmate
`telephone system.” Id. ¶ 9. Yet, Gainsboro ’843 only discloses that its
`system changes telephone call rates based on call type and time of day; it
`fails to disclose call rate discounts based on inmate behavior. See Ex. 1004,
`33:63–34:7, 105:26–28. There is no evidence of record indicating why a
`person of ordinary skill in the art would change or reduce the telephone rate
`in Gainsboro ’843 based on the behavior of the inmates. Therefore, we are
`not satisfied that a skilled artisan would have found it obvious to “reduc[e]
`the standard telephone charge rate” as a way of applying the rewards system
`of Karacki to the telecommunication system in Gainsboro ’843.
`Given the testimony of Dr. Forys, we find that Petitioner’s argument
`is fraught with hindsight bias. See KSR, 550 U.S. at 418 (“A patent
`composed of several elements is not proved obvious by merely
`demonstrating that each of its elements was, independently, known in the
`prior art.”); Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342,
`1368–69 (Fed. Cir. 2012) (“[Smith & Nephew] never offered evidence
`articulating why a person having ordinary skill in the art would combine the
`primary references to obtain the disclosed inventions.”); Innogenetics, N.V.
`v. Abbott Labs., 512 F.3d 1363, 1373–74 (Fed. Cir. 2008) (“We must still be
`careful not to allow hindsight reconstruction of references to reach the
`claimed invention without any explanation as to how or why the references
`
`17
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`IPR2014-00785
`Patent 6,636,591 B1
`
`would be combined to produce the claimed invention.”). In the absence of
`Karacki teaching telephone call rate reductions or Gainsboro ’843 teaching
`telephone call rate incentives based on inmate behavior, Petitioner needed to
`explain what would have led a person of ordinary skill in the art at the time
`of the invention to consider tying telephone call rate discounts to inmate
`behavior. Petitioner failed to provide such an explanation.
`Petitioner must demonstrate obviousness by a preponderance of the
`evidence. 35 U.S.C. § 316(e). After considering the parties’ arguments and
`evidence, however, we are not persuaded that Petitioner has made a
`sufficient showing that a person of ordinary skill would have combined the
`teachings in the manner contended by Petitioner. Accordingly, we hold that
`Petitioner has not shown by a preponderance of the evidence that
`independent claims 1 and 9 are unpatentable under 35 U.S.C. § 103(a) for
`obviousness in view of Karacki and Gainsboro ’843. For the same reasons,
`we are hold Petitioner has failed to establish the unpatentability of dependent
`claims 2–8 and 10 by a preponderance of the evidence.
`
`III. MOTIONS TO EXCLUDE EVIDENCE AND MOTION FOR
`OBSERVATIONS REGARDING DEPOSITION TESTIMONY
`A. Petitioner’s Motion to Exclude Evidence
`Petitioner filed a Motion to Exclude Evidence seeking to exclude
`“Forys Exhibit 1,” which was introduced during the deposition of
`Petitioner’s Declarant, Dr. Forys. Paper 26 (“Mot.”). The party moving to
`exclude evidence bears the burden of proving that it is entitled to the relief
`requested—namely, that the material sought to be excluded is inadmissible
`under the Federal Rules of Evidence. See 37 C.F.R. §§ 42.20(c), 42.62(a).
`Petitioner’s arguments on these items go to the weight to be accorded to the
`
`18
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`IPR2014-00785
`Patent 6,636,591 B1
`
`evidence. The Board is capable of determining and assigning the
`appropriate weight to the evidence.
`For these reasons, we deny Petitioner’s motion.
`
`B. Patent Owner’s Motion for Observation Regarding Cross-
`Examination Testimony
`Patent Owner’s observations are directed to the cross-examination
`testimony of Dr. Forys. Paper 29 (“Obs.”). Dr. Forys was deposed twice;
`once after Patent Owner filed its Preliminary Response and again after
`Petitioner filed its Reply. See Exs. 2002, 2004. We have considered Patent
`Owner’s observations and Petitioner’s responses (Paper 33, “Obs. Resp.”) in
`rendering our decision, and have accorded the testimony the appropriate
`weight. See Obs. 1–19; Obs. Resp. 1–19.
`
`IV. CONCLUSION
`We conclude Petitioner has not shown by a preponderance of the
`evidence that claims 1–10 of the ’591 patent are unpatentable under
`35 U.S.C. § 103(a) for obviousness over Karacki in view of Gainsboro ’843.
`Petitioner’s Motion to Exclude Forys Exhibit 1 is denied.
`
`V. ORDER
`For the reasons given, it is
`ORDERED that claims 1–10 of the ’591 patent have not been found
`unpatentable;
`FURTHER ORDERED that Petitioner’s Motion to Exclude Forys
`Exhibit 1 is denied;
`FURTHER ORDERED that because this is a Final Written Decision,
`parties to the proceeding seeking
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