throbber
Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 10
`Filed: October 9, 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 IPR2014-00785
`Patent 6,636,591 B1
`_______________
`
`Before KEVIN F. TURNER, BARBARA A. BENOIT, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`

`
`IPR2014-00785
`Patent 6,636,591 B1
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`
`I.
`
`INTRODUCTION
`
`A. Background
`Global Tel*Link Corporation (“Petitioner”) filed a Corrected Petition
`(Paper 4, “Pet.”) to institute an inter partes review of claims 1–10 of U.S.
`Patent No. 6,636,591 B1 (Ex. 1001, iss. Oct. 21, 2003, “the ’591 patent”).
`Securus Technologies, Inc. (“Patent Owner”) filed a Preliminary Response
`(Paper 9, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314,
`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.”
`Upon consideration of the Petition and Patent Owner’s Preliminary
`Response, we conclude Petitioner has established a reasonable likelihood it
`would prevail with respect to at least one of the challenged claims.
`Accordingly, for the reasons that follow, we institute an inter partes review
`of claims 1–10 of the ’591 patent.
`B. Related Proceedings
`Petitioner informs us that there are no matters related to the ’591
`patent. Pet. 2.
`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
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`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
`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.
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`D. Illustrative Claims
`As noted above, Petitioner challenges 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:
`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
`
`
`
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`E. The Evidence of Record
`Petitioner relies upon the following references, as well as the
`Declaration of Leonard J. Forys, Ph.D. (Ex. 1010):
`Reference
`Patent/Printed Publication
`Wormith
`J. S. Wormith. “The Development of
`a Prison Incentive System: A Case
`Illustration,” The First Annual
`Corrections Research Forum,
`pp.77–93, March 1989
`U.S. Patent No. 5,991,376
`
`Date
`Mar. 1989
`
`Hennessy
`
`Gainsboro
`’843
`Byers
`
`Gainsboro
`’013
`Hird
`
`U.S. Patent No. 7,106,843 B1
`
`U.S. Patent No. 5,570,417
`
`U.S. Patent No. 5,655,013
`
`U.S. Patent No. 4,933,966
`
`Nov. 23,
`1999
`Sept. 12,
`2006
`Oct. 29,
`1996
`Aug. 5,
`1997
`June 12,
`1990
`1970
`
`Exhibit
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1009
`
`1012
`
`L. Karacki et al., “Rewards in an
`Institution for Youthful Offenders,”
`The Howard Journal of Penology
`and Crime Prevention, vol. XIII,
`No. 1, pp. 20–30, 1970
`F. The Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of claims 1–10 of the ’591
`patent based on the following grounds:
`References
`Karacki and Gainsboro ’843
`Wormith and Hennessy
`Wormith, Hennessy, and Gainsboro
`’843
`Wormith and Byers
`
`Karacki
`
`5
`
`Basis
`§ 103
`§ 103
`§ 103
`
`Claims Challenged
`1–10
`1–3, 9, and 10
`1–10
`
`§ 103
`
`1–3, 9, and 10
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`
`References
`Wormith, Byers, and Hird
`
`Basis
`§ 103
`
`4
`
`Claims Challenged
`
`Wormith, Byers, and Gainsboro ’013
`
`§ 103
`
`5–8
`
`
`
`II. DISCUSSION
`In the analysis that follows, we discuss facts as they have been
`presented thus far in this proceeding. Any inferences or conclusions that we
`draw from those facts as reflected in this decision are neither final nor
`dispositive of any issue related to any ground on which we institute review.
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their broadest reasonable 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). 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).
`1. “Reducing the Telephone Call Charge Rate”
`Claims 1 and 9 each recite “establishing a discount telephone rate”
`and “reducing the telephone call charge rate.” Petitioner contends the only
`“rate” that could serve as antecedent basis for “the telephone charge rate” is
`“a discount telephone rate” that is recited in both claims. Pet. 12. Petitioner
`further contends that the “discount telephone rate” is, by definition, already
`at a discount, representing a reduced telephone charge rate. Id. According
`to Petitioner, the Specification never discloses “reducing a discount rate,”
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`but instead provides embodiments where the established discount telephone
`rate is not further reduced. Id. at 12–13. Petitioner argues the embodiments
`in the’591 patent teach two classes of inmates: (1) those who meet
`predetermined criteria and receive the discounted telephone rate (recited in
`claims 1 and 9), and (2) those who do not and receive a standard telephone
`rate (not recited in any claims). Id. at 13 (citing Ex. 1001, 1:63–2:11).
`Petitioner concludes that the claim limitation “reducing the telephone charge
`rate” should be construed as “charging the discount telephone rate.” Id.
`Patent Owner does not contest or take a position on Petitioner’s
`proposed claim construction. Prelim. Resp. 11.
`We are unpersuaded by Petitioner’s argument that “discounted
`telephone rate” is necessarily the antecedent basis for “the telephone charge
`rate.” The ’591 patent discloses that “rate reductions are determined by
`agreement between the correctional facility and the telecommunications
`service provider for the facility.” Ex. 1001, 3:62–64. Thus, given this
`disclosure, the claim limitation “establishing a discount telephone rate”
`refers to the establishment of rate reductions between the correctional
`facility and the service provider.
`We are also unpersuaded by Petitioner’s argument that an inmate is
`either charged “a discounted telephone rate” or “a standard telephone rate
`(not recited in any claims).” Pet. 12. We find insufficient evidence in the
`record to indicate that the claims must be read so that “reducing the
`telephone call charge rate” means that only the established “discounted rate”
`can be charged to an inmate. Rather, the ’591 patent places no restriction on
`the amount that a telephone charge rate can be reduced, i.e., the rate may be
`reduced compared to the standard rate charged to inmates, but it may not be
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`as low a rate as the discounted rate established between the correctional
`facility and the telecommunications service provider. Therefore, we find the
`broadest reasonable construction of “reducing the telephone call charge rate”
`to be “reducing the standard telephone charge rate.”
`2. Other Claim Terms
`For purposes of this decision and based on the record before us, we
`need not provide express constructions for any other claim terms at this
`stage of the proceeding.
`B. Principles of Law
`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 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 Int’l Co.,
`550 U.S. at 419. 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.
`However, a precise teaching directed to the specific subject matter of a
`challenged claim is not necessary to establish obviousness. Id. Rather,
`obviousness must be gauged in view of common sense and the creativity of
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`an ordinarily skilled artisan. Id. Moreover, obviousness can be established
`when the prior art itself would have suggested the claimed subject matter to
`a person of ordinary skill in the art. In re Rinehart, 531 F.2d 1048, 1051
`(CCPA 1976).
`We analyze the challenges presented in the Petition 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, 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. 1, 17 (1966). “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). “Instead of ascertaining what was subjectively obvious to
`the inventor at the time of invention, [we] must ascertain what would have
`been objectively obvious to one of ordinary skill in the art at such time.” Id.
`Thus, “the level of ordinary skill in the art is a factual question that must be
`resolved and considered.” Id.
`According to Petitioner’s witness, Dr. Leonard Forys, 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.
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`Patent Owner does not disagree with Petitioner’s assertions regarding
`the level of skill in the art, nor does Patent Owner offer at this time any
`contrary explanation regarding who would qualify as a person of ordinary
`skill in the art relevant to the ’591 patent. 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
`preliminarily, based on the record before us, that a person of ordinary skill in
`the art at the time of the claimed invention would have had a 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.
`D. Asserted Obviousness of Claims 1–10 in view of Karacki and
`Gainsboro ’843
`Petitioner contends 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.
`For reasons that follow, we determine Petitioner has demonstrated a
`reasonable likelihood of prevailing as to claims 1–10.
`1. Overview of Karacki
`Karacki discloses a point system for youth offenders at a youth
`facility. 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.
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`
`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.
`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 number 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.
`
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`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.
`
`3. Analysis
`Petitioner contends the combined disclosure of Karacki and Gainsboro
`’843, as summarized above, teaches or suggests each limitation of claims 1–
`10 of the ’591 patent.
`a. Independent Claims 1 and 9
`Independent claim 1 requires the establishment of a “discount
`telephone rate,” “a measurement of conduct during incarceration for the
`inmates, wherein said measurement is a predetermine point total,” and
`“reducing the telephone call charge rate for inmates that meet the
`measurement of conduct during incarceration for a predetermined period of
`time.” Independent claim 9 requires “a measurement of conduct during
`incarceration for the inmates, wherein said measurement is a predetermine
`point total,” “reducing the telephone call charge rate for inmates that meet
`the measurement of conduct during incarceration for a predetermined period
`of time,” and “associating the reduced charge rate with at least one
`predetermined destination number.”
`Petitioner argues that Karacki discloses a correctional facility reward
`system using a predetermined point total as a measurement of conduct for
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`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.)
`Petitioner then explains that Gainsboro ’843 discloses biometric voice
`recognition, collect call PIN numbers, and pre-paid calling cards (in the form
`of pre-paid accounts) at least two years before the ’591 patent was filed. Id.
`at 16; Ex. 1010 ¶ 48.
`According to Petitioner, a person of ordinary skill in the art would
`recognize that a system that monitors and controls communication lines,
`including account balances, could be applied to an inmate reward system
`allowing an inmate to pay for telephone calls using accumulated points.
`Pet. 16–17; see Ex. 1010 ¶ 49. Petitioner supports its position with the
`declaration of Dr. Forys, who testifies that a person of ordinary skill in the
`art would have reason to apply the communication monitoring and control
`system of Gainsboro ’843 to the inmate reward system of Karacki, because
`Gainsboro ’843 provides automated control of the inmates’ account
`balances, thereby saving the correctional facility time and money. Ex. 1010
`¶¶ 49–50. Dr. Forys concludes that the combination of Karacki and
`Gainsboro ’843 is a simple combination of known elements easily made by a
`skilled artisan to achieve predictable results, thereby rendering the
`challenged claims obvious. Id. at ¶ 48.
`Patent Owner disagrees with Petitioner’s conclusion that Karacki and
`Gainsboro ’843 teach or suggest “reducing the telephone call charge rate for
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`inmates that meet the measurement of conduct during incarceration for a
`predetermined period of time.” Prelim. Resp. 11–15, 17. Patent Owner
`explains 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 12
`(citing Ex. 1012, 26). Patent Owner contends that Karacki fails to even
`suggest establishing a discounted telephone rate or reducing the discounted
`telephone rate. Id. at 12–13. 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. Id. at 13 (citing Ex. 1012, 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. Id. at 13.
`Patent Owner then contends Petitioner fails to mention how either
`Karacki or Gainsboro ’843 meets the following limitations recited in claims
`1 and 9: “predetermined period of time,” “maintaining a record of inmate
`behavior for each inmate according to said identification,” and “establishing
`a measurement of conduct [that] is a predetermined point total.” Id. at 14–
`16.
`
`Based on the record before us, we are persuaded at this stage of the
`proceeding by Petitioner’s argument that challenged claims 1–10 would
`have been obvious over Karacki and Gainsboro ’843. First, we are
`persuaded by Petitioner’s reasoning and the current evidentiary record that
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`Karacki teaches a correctional facility reward system that could have been
`implemented using the telecommunication system disclosed in Gainsboro
`’843. We are further persuaded by Dr. Forys’s opinion that one of ordinary
`skill in the art would have had reason to combine the teachings of Karacki
`with Gainsboro ’843 and would have been able to make and use the claimed
`invention without anything more than routine experimentation. See Ex.
`1010 ¶¶ 49–50.
`Second, the arguments presented by Patent Owner appear to attack the
`references individually, rather than in combination. Prelim. Resp. 11–16.
`Nonobviousness cannot be established by attacking the references
`individually when a challenge is predicated upon a combination of prior art
`disclosures. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
`1986). In attacking the references individually, Patent Owner fails to
`address Petitioner’s actual challenges and establish an insufficiency in the
`combined teachings of the references and show Petitioner has not met its
`burden in arguing obviousness of the challenged claims.
`Lastly, one of Patent Owner’s arguments against Karacki and
`Gainsboro ’843 is that neither reference teaches “maintaining a record of
`inmate behavior for each inmate according to said identification.” Prelim.
`Resp. 14–15. We do not agree. Petitioner points out the teaching in
`Gainsboro ’843 that discloses “providing an identification for each inmate.”
`Pet. 20. Specifically, Gainsboro ’843 discloses assigning a personal
`identification number or PIN to each inmate, and an inmate must enter their
`PIN in order to initiate a telephone call. Id. (citing Ex. 1004, 1:54–57). On
`this record, Petitioner’s contention regarding Gainsboro ’843 is persuasive
`because the ’591 patent also uses a PIN assigned to each inmate as a form of
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`identification that must be used when making a telephone call. Ex. 1001,
`1:58–63.
`Therefore, we conclude Petitioner has established a reasonable
`likelihood it would prevail in showing that claims 1 and 9 would have been
`obvious under 35 U.S.C. § 103 in view of the disclosures of the Karacki and
`Gainsboro ’843.
`
`b. Dependent Claim 2
`Claim 2 depends directly from claim 1 and requires that the telephone
`charge rate be raised when an inmate no longer meets the measurement of
`conduct during incarceration. Petitioner contends Karacki discloses up to a
`“100% discount telephone rate for inmates meeting the measurement of
`conduct during incarceration.” Pet. 22 (citing Ex. 1012, 26). Dr. Forys,
`declarant for Petitioner, testifies that an inmate who did not meet the
`measurement of conduct would not receive reward points. Ex. 1010 ¶ 64.
`According to Dr. Forys, an inmate without enough points to purchase a
`telephone call using reward points does not receive a discount. Id. Thus, it
`would have been obvious to a skilled artisan that the “telephone charge rate”
`would necessarily be raised compared to those inmates who met the
`measurement of conduct and received the reward points. Id. Patent Owner
`argues that Karacki does not disclose telephone charge rates, and specifically
`fails to teach raising telephone charge rates based on inmate behavior.
`Prelim. Resp. 16.
`At this stage of the proceeding, we are persuaded by Petitioner’s
`analysis, supported by Dr. Forys’s opinion. Therefore, we conclude
`Petitioner has established a reasonable likelihood it would prevail in
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`showing that claim 2 would have been obvious under 35 U.S.C. § 103 in
`view of the disclosures of Karacki and Gainsboro ’843.
`c. Dependent Claim 3
`Claim 3 depends from claims 1 and requires “connecting to a database
`to determine whether an inmate is qualified to receive the reduced charge
`rate.” Petitioner contends that Gainsboro ’843 discloses connecting to a
`database, which stores information relating to inmates’ PINs, their calling
`privileges, allowed destination numbers, and prohibited destination numbers.
`Pet. 22, 25 (citing Ex. 1004, 5:41–53). According to Petitioner, Gainsboro
`’843 also discloses that information stored in the database may include the
`cost charged to an inmate for telephone calls. Id. (citing Ex. 1004, Fig. 4).
`Patent Owner does not make arguments specific to dependent claim 3.
`We are persuaded at this stage of the proceeding by Petitioner’s
`contention. Therefore, we conclude Petitioner has established a reasonable
`likelihood it would prevail in showing that claim 3 would have been obvious
`under 35 U.S.C. § 103 in view of the disclosures of Karacki and Gainsboro
`’843.
`
`d. Dependent Claim 4
`Claim 4 depends directly from claim 1 and requires that the “reduced
`charge rate is a rate for a collect call.” Petitioner contends that Gainsboro
`’843 provides a discount telephone rate for a collect call. Pet. 23 (citing Ex.
`1004, 105:26–28). Patent Owner does not make arguments specific to
`dependent claim 4.
`We are persuaded at this stage of the proceeding by Petitioner’s
`contention. Therefore, we conclude Petitioner has established a reasonable
`likelihood it would prevail in showing that claim 4 would have been obvious
`
`17
`
`

`
`IPR2014-00785
`Patent 6,636,591 B1
`
`under 35 U.S.C. § 103 in view of the disclosures of Karacki and Gainsboro
`’843.
`
`e. Dependent Claim 5
`Claim 5 depends directly from claim 1 and requires that the
`“identification is a respective PIN number assigned to each inmate for
`placing collect calls.” Petitioner contends that Gainsboro ’843 teaches the
`use of a PIN for collect calls. Pet. 23 (citing Ex. 1004, 1:54–57). Patent
`Owner does not make arguments specific to dependent claim 5.
`We are persuaded at this stage of the proceeding by Petitioner’s
`contention. Therefore, we conclude Petitioner has established a reasonable
`likelihood it would prevail in showing that claim 5 would have been obvious
`under 35 U.S.C. § 103 in view of the disclosures of Karacki and Gainsboro
`’843.
`
`f. Dependent Claim 6
`Claim 6 depends directly from claim 1 and requires that the
`“identification is a respective number associated with a prepaid calling
`card.” Petitioner contends that Gainsboro ’843 teaches using a prepaid
`calling account for making telephone calls: “Each inmate is provided with a
`telephone billing account, and the inmate may purchase credits for the
`account. The balance of the account must stay positive.” Pet. 24 (citing Ex.
`1004, 9:45–47). Petitioner further contends that Gainsboro ’843 teaches that
`a Phone Access Code is used to identify the inmates when they make phone
`calls. Id. (citing Ex. 1004, 48:7–13; 49:4–6). Dr. Forys, declarant for
`Petitioner, testifies that associating a prepaid calling card to a PIN or Phone
`Access Code would have been obvious to a person of ordinary skill in the art
`based on the disclosure of a prepaid calling account that is associated with a
`
`18
`
`

`
`IPR2014-00785
`Patent 6,636,591 B1
`
`PIN or Phone Access Code, such as that taught by Gainsboro’843. Ex. 1010
`¶¶ 73–74. Patent Owner disagrees that the Phone Access Code of Gainsboro
`’843 is used for “maintaining a record of inmate behavior for each inmate
`according to said identification.” Prelim. Resp. 17. According to Patent
`Owner, there is no discussion in the Petition as to how a Phone Access Code
`could be modified so as to teach the limitation of claim 6.
`At this stage of the proceeding, we are persuaded by Petitioner’s
`analysis, supported by Dr. Forys’s opinion, that the PIN of Gainsboro ’843,
`similar to the PIN of the ’591 patent, can be i) associated with an inmate, ii)
`used as an identification number for an inmate, and iii) can be associated in a
`database with an inmate’s behavior record and any discounted telephone
`calling rate. We are also persuaded by the record currently before us that a
`prepaid calling card would have been obvious to a skilled artisan in view of
`a prepaid calling account. Therefore, we conclude Petitioner has established
`a reasonable likelihood it would prevail in showing that claim 6 would have
`been obvious under 35 U.S.C. § 103 in view of the disclosures of Karacki
`and Gainsboro ’843.
`g. Dependent Claims 7 and 8
`Claims 7 and 8 depend directly from claim 1 and require that the
`“identification is effected through voice recognition” or “identification is
`effected through biometric reading techniques,” respectively. Petitioner
`contends that Gainsboro ’843 discloses a system that uses biometric
`verification or voice recognition features. Pet. 24–25 (citing Ex. 1004, 7:41–
`42). Petitioner explains that the system in Gainsboro ’843 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
`
`19
`
`

`
`IPR2014-00785
`Patent 6,636,591 B1
`
`the identity of the caller. Pet. 24–25 (citing Ex. 1004, 7:42–45). Patent
`Owner does not make arguments specific to dependent claims 7 and 8.
`We are persuaded at this stage of the proceeding by Petitioner’s
`contention. Therefore, we conclude Petitioner has established a reasonable
`likelihood it would prevail in showing that claims 7 and 8 would have been
`obvious under 35 U.S.C. § 103 in view of the disclosures of Karacki and
`Gainsboro ’843.
`
`h. Dependent Claim 10
`Claim 10 depends from claim 9 and requires “connecting to a
`database to determine whether an inmate is qualified to receive the reduced
`charge rate for said at least one predetermined destination number.”
`Petitioner contends that Gainsboro ’

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