Filed on behalf of Securus Technologies, Inc.
`By:
`Justin B Kimble (jkimble@bcpc-law. com)
`Jeffrey R. Bragalone (jbragalone@bcpc-law.com)
`Bragalone Conroy PC.
`2200 Ross Ave.
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`Suite 4500 — West
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`Dallas, TX 75201
`Tel: 214.785.6670
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`Fax: 214.786.6680
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`GLOBAL TEL*LINK CORPORATION
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`Petitioner
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`V.
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`SECURUS TECHNOLOGIES, INC.
`Patent Owner
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`Case IPR2014-00785
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`US. Patent No. 6,636,591
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`EXHIBIT 2003: DECLARATION OF DR. ROBERT AKL
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`US. Patent & Trademark Office
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`PO. Box 1450
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`Case IPR2014-00785
`Patent 6,636,591
`Petition for Inter Partes Review of U.S. Patent No. 6,636,591
`Declaration of Dr. Robert Akl
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`I, Robert Akl, do hereby declare and state, that all statements made herein of
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`my own knowledge are true and that all statements made on information and belief
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`are believed to be true; and further that these statements were made with the
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`knowledge that willful false statements and the like so made are punishable by fine
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`or imprisonment, or both, under Section 1001 of Title 18 of the United States Code.
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`Executed this 23rd day of December 2014 in Denton, TX.
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`_________________________
`Dr. Robert Akl, D.Sc.
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`Case IPR2014-00785
`Patent 6,636,591
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`TABLE OF CONTENTS
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`I. 
`
`INTRODUCTION ............................................................................................... 1 
`A.  Engagement ................................................................................................... 1 
`B.  Background and Qualifications ..................................................................... 1 
`C.  Compensation and Prior Expert Witness Experience ................................... 3 
`D. 
`Information Considered ................................................................................. 4 
`II.  LEGAL STANDARDS ....................................................................................... 5 
`III.  THE ’591 PATENT ........................................................................................ 10 
`A.  Effective Filing Date of the ’591 Patent...................................................... 10 
`B.  Overview of the ’591 Patent ........................................................................ 10 
`C.  Claim Construction ...................................................................................... 12 
`D.  Level of Ordinary Skill in the Art ............................................................... 14 
`IV.  ANALYSIS OF GROUND 1: Claims 1-10 Under 103(a) Karacki in view of
`Gainsboro ................................................................................................................. 14 
`A.  Overview of Karacki ................................................................................... 14 
`B.  Overview of Gainsboro ............................................................................... 16 
`Petitioner Failed as a Matter of Law to Meet its Burden of Proving Claims
`C. 
`1-10 Unpatentable by Failing to Show that One of Skill in the Art Would Have
`Reason to Combine Karacki and Gainsboro ........................................................ 16 
`D.  Karacki in View of Gainsboro does not Teach or Suggest Many of the
`Limitations of the ’591 Patent. ............................................................................. 23 
`The Combination of Karacki and Gainsboro Fails to Teach or Suggest
`1. 
`the Element “reducing the telephone call charge rate for inmates that meet the
`measurement of conduct” .................................................................................. 24 
`The Combination of Karacki and Gainsboro Fails to Teach or Suggest
`2. 
`the Element “establishing a discount telephone rate” ....................................... 27 
`The Combination of Karacki and Gainsboro Fails to Teach or Suggest
`3. 
`the Element “a predetermined period of time” ................................................. 29 
`The Combination of Karacki and Gainsboro Fails to Teach or Suggest
`4. 
`the Element “said measurement is a predetermined point total” ...................... 29 
`The Combination of Karacki and Gainsboro Fails to Teach or Suggest
`5. 
`the Element “providing an identification for each inmate” .............................. 31 
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`The Combination of Karacki and Gainsboro Fails to Teach or Suggest
`6. 
`the Element “raising the rate when an inmate no longer meets the measurement
`of conduct during incarceration” (element [2.1]) ............................................. 33 
`The Combination of Karacki and Gainsboro Fails to Teach or Suggest
`7. 
`the Element “associating the reduced charge rate with at least one
`predetermined number” (element [9.4]) ........................................................... 33 
`The Combination of Karacki and Gainsboro Fails to Teach or Suggest
`8. 
`the Element “reduced charge rate for said at least one predetermined
`destination number” (element [10.1]) ............................................................... 34 
`V.  CONCLUSION ................................................................................................. 34 
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`Case IPR2014-00785
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`I.
`INTRODUCTION
`1. The facts set forth below are known to me personally and I have firsthand
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`knowledge of them. I am a U.S. citizen over eighteen years of age. I am fully
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`competent to testify as to the matters addressed in this Declaration. I understand
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`that this Declaration is being submitted along with Patent Owner’s response to the
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`October 9, 2014 Decision on Institution of Inter Partes Review by the Patent Trial
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`and Appeal Board (“PTAB”) for US Patent No. 6,636,591 (hereinafter, “the ’591
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`Patent”) in IPR2014-00785.
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`A. Engagement
`2. I have been retained as a technical expert by Patent Owner to study and
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`provide my opinions on the technology claimed in, and the patentability or
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`nonpatentability of, Claims 1-10 of the ’591 patent.
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`B.
`3.
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`Background and Qualifications
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`I have summarized in this section my educational background, work
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`experience, and other relevant qualifications. A true and accurate copy of my
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`curriculum vitae is attached as Appendix A.
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`4.
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`I earned my Bachelor of Science degrees in Electrical Engineering
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`and Computer Science summa cum laude with a ranking of first in my
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`undergraduate class from Washington University in Saint Louis in 1994. In 1996 I
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`earned my Master of Science degree in Electrical Engineering from Washington
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`University in Saint Louis. I earned my Doctorate of Science in Electrical
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`Case IPR2014-00785
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`Engineering from Washington University in Saint Louis in 2000, with my
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`dissertation on “Cell Design to Maximize Capacity in Cellular Code Division
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`Multiple Access (CDMA) Networks.”
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`5.
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`After obtaining my Doctorate of Science degree, I worked as a Senior
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`Systems Engineer at Comspace Corporation from October of 2000 to December of
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`2001. In this position, I designed, and developed advanced data coding and
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`modulation systems for improving the reliability and increasing the available data
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`rates for cellular communications.
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`6.
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`In January of 2002, I joined the faculty of the University of New
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`Orleans in Louisiana as an Assistant Professor in the Department of Electrical
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`Engineering. While in this position, I designed and taught two new courses called
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`“Computer Systems Design I and II.” I also developed a Computer Engineering
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`Curriculum with strong hardware-design emphasis, formed a wireless research
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`group, and advised graduate and undergraduate students.
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`7.
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`In September of 2002, I received an appointment as an Assistant
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`Professor in the Department of Computer Science and Engineering at the
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`University of North Texas, in Denton, Texas. In May of 2008, I became a tenured
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`Associate Professor in the Department of Computer Science and Engineering. As a
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`faculty member, I have taught courses and directed research in wireless
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`communications, including 2G, 3G, 4G, CDMA/WCDMA, GSM, UMTS, LTE,
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`wireless sensors, VoIP, multi-cell network optimization, call admission control,
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`channel coding, ad-hoc networks, and computer architecture.
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`8.
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`I have authored and co-authored approximately 65
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`journal
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`publications, conference proceedings, technical articles and papers, book chapters,
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`and
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`technical presentations,
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`in a broad array of communications-related
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`technology, including networking and wireless communications. I have also
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`developed and taught over 70 courses related to communications and computer
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`system design, including a number of courses on VoIP, wireless communications,
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`communications systems, computer systems design, and computer architecture.
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`These courses have included introductory courses on communication networks and
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`signals and systems, as well as more advanced courses on wireless
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`communications. A complete list of my publications and the courses I have
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`developed and/or taught is also contained in my curriculum vitae.
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`C. Compensation and Prior Expert Witness Experience
`9.
`I am being compensated for the time I spend on this case at my
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`normal consulting rate of $650 an hour. I am also being reimbursed for reasonable
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`and customary expenses associated with my work and testimony in this
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`investigation. My compensation is not contingent upon the outcome of this matter
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`or the substance of my testimony.
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`10. A complete list of cases in which I have testified at trial, hearing, or
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`by deposition within the preceding four years is provided in my curriculum vitae,
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`which is attached as Appendix A. In the listed cases, I have represented both
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`patent owners as well as accused infringers.
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`D.
`Information Considered
`11. My opinions are based on my years of education, research and
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`experience, as well as my investigation and study of relevant materials. In forming
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`my opinions, I have considered the materials I identify in this report and those
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`listed in Appendix B.
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`12.
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`I may rely upon these materials and/or additional materials to respond
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`to arguments raised by the Petitioner. I may also consider additional documents
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`and information in forming any necessary opinions – including documents that
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`may not yet have been provided to me.
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`13. My analysis of the materials produced in this investigation is ongoing
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`and I will continue to review any new material as it is provided. This report
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`represents only those opinions I have formed to date. I reserve the right to revise,
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`supplement, and/or amend my opinions stated herein based on new information
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`and on my continuing analysis of the materials already provided.
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`II. LEGAL STANDARDS
`14.
`In expressing my opinions and considering the subject matter of the
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`claims of the ’591 patent, I am relying upon certain basic legal principles that
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`counsel has explained to me.
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`15. First, I understand that for an invention claimed in a patent to be
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`found patentable, it must be, among other things, new and not obvious from what
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`was known before the invention was made.
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`16.
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`I understand the information that is used to evaluate whether an
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`invention is new and not obvious is generally referred to as “prior art” and
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`generally
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`includes patents and printed publications (e.g., books,
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`journal
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`publications, articles on websites, product manuals, etc.).
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`17.
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`I understand that in this proceeding Petitioner has the burden of
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`proving that the claims of the ’591 patent are anticipated by or rendered obvious
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`from the prior art by a preponderance of the evidence. I understand that “a
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`preponderance of the evidence” is evidence sufficient to show that a fact is more
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`likely true than it is not.
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`18.
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`I understand that in this proceeding, the claims must be given their
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`broadest reasonable interpretation consistent with the specification. The claims
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`after being construed in this manner are then to be compared to the information in
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`the prior art.
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`19.
`I understand that in this proceeding, the information that may be
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`evaluated is limited to patents and printed publications. My analysis below
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`compares the claims to patents and printed publications that are prior art to the
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`claims.
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`20.
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`I understand that there are two ways in which prior art may render a
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`patent claim unpatentable. First, the prior art can be shown to “anticipate” the
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`claim. Second, the prior art can be shown to have made the claim “obvious” to a
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`person of ordinary skill in the art. I understand that the only ground instituted in
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`this IPR is an obviousness ground. I set forth my understanding of the obviousness
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`standard as follows:
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`21.
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`I understand that a claimed invention is not patentable if it would have
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`been obvious to a person of ordinary skill in the field of the invention at the time
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`the invention was made.
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`22.
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`I understand that the obviousness standard is defined in the patent
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`statute (35 U.S.C. § 103(a)) as follows: A patent may not be obtained though the
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`invention is not identically disclosed or described as set forth in section 102 of this
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`title, if the differences between the subject matter sought to be patented and the
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`prior art are such that the subject matter as a whole would have been obvious at the
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`time the invention was made to a person having ordinary skill in the art to which
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`said subject matter pertains. Patentability shall not be negated by the manner in
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`which the invention was made.
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`23.
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`I understand that to find a claim in a patent obvious, one must make
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`certain findings regarding the claim invention and the prior art. Specifically, I
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`understand that the obviousness question requires consideration of four factors
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`(although not necessarily in the following order):
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`
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`
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`
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`The scope and content of the prior art;
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`The differences between the prior art and the claims at issue;
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`The knowledge of a person of ordinary skill in the pertinent art; and
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` Whatever objective factors indicating obviousness or non-obviousness
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`may be present in any particular case.
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`24.
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`In addition, I understand that the obviousness inquiry should not be
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`done in hindsight, but must be done using the perspective of a person of ordinary
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`skill in the relevant art as of the effective filing date of the patent claim.
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`25.
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`I understand the objective factors indicating obviousness or non-
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`obviousness may include: commercial success of products covered by the patent
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`claims; a long-felt need for the invention; failed attempts by others to make the
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`invention; copying of the invention by others in the field; unexpected results
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`achieved by the invention; praise of the invention by the infringer or others in the
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`field; the taking of licenses under the patent by others; expressions of surprise by
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`experts and those skilled in the art at the making of the invention; and the patentee
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`proceeded contrary to the accepted wisdom of the prior art.
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`26.
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`I understand the combination of familiar elements according to known
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`methods is likely to be obvious when it does no more than yield predictable results.
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`I also understand that an example of a solution in one field of endeavor may make
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`that solution obvious in another related field. I also understand that market
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`demands or design considerations may prompt variations of a prior art system or
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`process, either in the same field or a different one, and that these variations will
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`ordinarily be considered obvious variations of what has been described in the prior
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`art.
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`27.
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`I also understand that if a person of ordinary skill can implement a
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`predictable variation, that variation would have been considered obvious. I
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`understand that for similar reasons, if a technique has been used to improve one
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`device, and a person of ordinary skill in the art would recognize that it would
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`improve similar devices in the same way, using that technique to improve the other
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`device would have been obvious unless its actual application yields unexpected
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`results or challenges in implementation.
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`28.
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`I understand that the obviousness analysis need not seek out precise
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`teachings directed to the specific subject matter of the challenged claim, but
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`instead can take account of the “ordinary innovation” and experimentation that
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`does no more than yield predictable results, which are inferences and creative steps
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`that a person of ordinary skill in the art would employ.
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`29.
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`I understand that sometimes it will be necessary to look to interrelated
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`teachings of multiple patents; the effects of demands known to the design
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`community or present in the marketplace; and the background knowledge
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`possessed by a person having ordinary skill in the art. I understand that all these
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`issues may be considered to determine whether there was an apparent reason to
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`combine the known elements in the fashion claimed by the patent at issue.
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`30.
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`I understand that the obviousness analysis cannot be confined by a
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`rigid formalistic conception of “teaching, suggestion, and motivation” to combine
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`known elements of prior art for purposes of an obviousness analysis as a
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`precondition for finding obviousness.
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`31.
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`I understand that an invention that might be considered an obvious
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`variation or modification of the prior art may be considered non-obvious if one or
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`more prior art references discourages or leads away from the line of inquiry
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`disclosed in the reference(s). A reference does not “teach away” from an invention
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`simply because the reference suggests that another embodiment of the invention is
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`better or preferred. My understanding of the doctrine of teaching away requires a
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`clear indication that the combination should not be attempted (e.g., because it
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`would not work or explicit statements saying the combination should not be made).
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`32.
`I understand that a person of ordinary skill is also a person of ordinary
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`creativity.
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`III. THE ’591 PATENT
`A. Effective Filing Date of the ’591 Patent
`33. The ’591 patent issued from U.S. Application No. 09/640,999, which
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`was filed on August 17, 2000, which for purposes of this IPR, I assume is the
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`priority date of the ’591 patent.
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`B. Overview of the ’591 Patent
`34. The ’591 patent is titled “System and Method for Affecting Inmate
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`Conduct with Good Behavior Discount Telephone Rates.” The ’591 patent
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`“generally relates to institutional telephone systems and more particularly to
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`methods of affecting inmate conduct through providing discounted telephone rates
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`based on certain criteria, such as inmate good behavior.” Ex. 1001 at 1:8-12. As
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`the ’591 patent explains, the cost of calls from inmates to their families and friends
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`is usually borne by those families and friends. Id. at 1:29-30. The ’591 patent notes
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`that “[t]here is presently no known system or method that ties telephone contact
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`with motivation by family members to encourage or promote good behavior on the
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`part of inmates.” Id. at 1:39-45. The ’591 patent inventors recognized that this may
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`be accomplished by rewarding inmates that have passed a threshold of conduct
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`measured in points with a discounted rate on their phone calls. See, e.g., id. at 2:36-
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`55. Thus the inmate is further motivated by his friends and family to maintain good
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`behavior resulting from the lowering of their telephone bills. Id. at 1:42-45; 4:15-
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`22.
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`35. While not the only distinguishing feature of the claims, it is notable
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`that the Petition fails to provide a reference or combination of references that teach
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`or suggest offering discounted telephone rates to inmates for achieving a threshold
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`good behavior.
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`36.
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`Instead, the Petition relies on a reading of Karacki that the use of the
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`alternate monetary system in Karacki (points equivalent to cash) achieves the
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`claimed “rate reduction” by arguing that the phone calls in the Karacki system
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`become free (and thus discounted) merely because a “point” becomes the new unit
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`of currency. Petitioner specifically argues that “Karacki’s disclosure that inmates
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`may pay for telephone calls using their earned points is equivalent to a 100%
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`discount, or a discount telephone rate of $0.00.” Paper 4 (Petition) at 18.
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`37. The Petition attempts to characterize the ’591 patent as merely
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`describing an “obvious combination of the well-known methods of offering
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`discounts to incentivize telephone subscribers and the well-known methods of
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`incentivizing inmates with telephone privileges.” Paper 4 at 9. But, as discussed
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`below, neither of the prior art references disclose offering discounted telephone
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`rates to inmates for good behavior. Thus no prima facie case of obviousness is
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`made because the proposed combination does not arrive at the claimed invention.
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`C. Claim Construction
`38.
`I understand that in an inter partes review proceeding the claims of
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`the patent are to be given their broadest reasonable interpretation consistent with
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`the specification. I will refer to such an interpretation below with the shorthand
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`“broadest reasonable interpretation.”
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`39.
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`I also understand that where a patent applicant provides an explicit
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`definition of a claim term in the specification that definition may control the
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`interpretation of that term in the claim.
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`40.
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`I also understand that if no explicit definition is given to a term in the
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`patent specification the claim terms must be evaluated using the ordinary meaning
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`of the words being used in those claims, evaluated from the perspective of a person
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`of ordinary skill in the art.
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`41.
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`In this Declaration, I adopt the Board’s construction of terms as set
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`forth in Paper 10 in this proceeding without taking a position as to their
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`correctness. Specifically, the Board held that the claim term “establishing a
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`discount telephone rate” “refers to the establishment of rate reductions between
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`the correctional facility and the service provider” and further that the term
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`“reducing the telephone call charge rate” should be construed to mean “reducing
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`the standard telephone charge rate.” Paper 10 at 6-8. As the Board noted, “the
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`’591 patent places no restriction on the amount that a telephone charge rate can be
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`reduced.” Id. at 7.
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`42. As further explained below, Petitioner’s arguments do not align with
`
`the Board’s claim construction. Additionally, Petitioner’s expert refuses to accept
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`or follow the Board’s constructions. See, e.g., Transcript of Videotaped Deposition
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`of Leonard Forys (“Forys Deposition”) (Ex. 2002) at 111:19-21; 112:15 through
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`113:6; 166:23 through 169:23. Petitioner’s expert continues to rely on a contorted
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`argument that disregards the Board’s construction.
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`43.
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`I take no position as to the correctness of the Board’s construction, but
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`I accept the constructions for the purposes of this IPR proceeding.
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`44. The Board, however, did not address Petitioner’s second claim
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`construction for “raising the rate” recited in Claim 2. Petitioner argues that the
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`term “raising the rate” should be construed as “charging a non-discounted
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`telephone rate.” I submit that Petitioner’s construction fails to reflect the term’s
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`broadest reasonable interpretation in light of the ’591 specification.
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`45.
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`In particular, the Board rejected the Petitioner’s argument that an
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`inmate is either charged a discounted telephone rate or a standard telephone rate.
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`Paper 10 at 7. Additionally, I confirm that a person of ordinary skill in August
`
`2000 would not understand the ’591 patent to require the term “raising the rate” to
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`be defined as “charging a non-discounted telephone rate.” The term should be
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`given its plain and ordinary meaning.
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`46. My opinion on claim construction is limited to my analysis performed
`
`in the context of this inter partes review and under the “broadest reasonable
`
`construction” standard. It is possible that in other contexts the claim terms of the
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`’591 patent would benefit from construction.
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`D. Level of Ordinary Skill in the Art
`47.
`In this declaration, I rely on, but take no position on, the Board’s
`
`determination of one of ordinary skill in the art “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
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`work experience in the design and/or development of telecommunications
`
`technologies.” Paper No. 10 at 10.
`
`IV. ANALYSIS OF GROUND 1: Claims 1-10 Under 103(a) Karacki in view
`of Gainsboro
`A. Overview of Karacki
`48. Karacki (Ex. 1012) is the primary reference for the Ground of
`
`rejection instituted in the Petition. Karacki is a 1970 article describing a “token
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`economy system” in which “students earn points for good behaviour.” Ex. 1012 at
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`22. The full citation for Karacki is “Rewards in an Institution for Youthful
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`Offenders,” L. Karacki et al., The Howard Journal of Penology and Crime
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`Prevention, vol. XIII, No. 1, pp. 20-30, 1970 (“Karacki”).
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`49. Karacki discloses a token economy system where students earn points.
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`The students can then use the points to purchase things such as “cigarettes, soap,
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`and toothpaste from the Commissary.” Id. at 24. The points are essentially treated
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`as institutional currency. Indeed, Karacki discloses that the “points have a
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`monetary value (1 point = 1 cent) and can be used for purchase of goods and
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`services.” Id. (emphasis added). In Karacki’s system, there are two ways that the
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`students earn their points: (1) for their performing weekly chores; and (2) “by a
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`bonus point system in which points can be immediately awarded to youths for
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`certain positive behaviour.” Id. at 22-23.
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`50. Karacki teaches that the token currency can be used for telephone
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`calls: (“They can buy telephone calls home, or pay for items ordered from a mail
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`order catalogue; they can pay to attend selected events …”). Id. at 26. But this is
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`the only mention of telephone calls in the entire reference. Karacki certainly does
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`not disclose discounted “telephone rates” for inmates with good behavior nor does
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`Karacki disclose the use of collect calls. Rather, Karacki merely teaches a currency
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`conversion (1 point = 1 cent), whereby market prices are still paid by a student for
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`goods and services – “While no set formula exists for determining how much an
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`item or service should cost, generally the charges are in line with actual prices in
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`the free community.” Id. at 24.
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`B. Overview of Gainsboro
`51. U.S. Patent No. 7,106,843 to Gainsboro (“Gainsboro”) (Exhibit 1004)
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`was filed on August 31, 1998, and issued on September 12, 2006. The Petition uses
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`Gainsboro as a secondary reference. The Abstract of Gainsboro states that it
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`“provides institutional users [e.g., inmates] with fully automated, direct dial and
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`collect calling privileges for local, long distance, and international calls.” Ex. 1004,
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`Abstract. Gainsboro is not concerned with the same ultimate subject matter as the
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`’591 patent, i.e., “affecting inmate conduct through providing discounted telephone
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`rates based on certain criteria, such as inmate good behavior.” Ex. 1001 at 1:8-11.
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`Gainsboro is also not concerned with modifying inmate conduct and never
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`discusses inmate behavior or conduct.
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`C.
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`Petitioner Failed as a Matter of Law to Meet its Burden of
`Proving Claims 1-10 Unpatentable by Failing to Show that One of
`Skill in the Art Would Have Reason to Combine Karacki and
`Gainsboro
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`52.
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`I understand that Petitioner bears the burden of proving that Claims 1-
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`10 are unpatentable by a preponderance of the evidence. I understand that, because
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`Petitioner is relying solely on an obviousness challenge, Petitioner must prove by a
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`preponderance of the evidence that a “skilled artisan would have had reason to
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`combine the teaching of the prior art references to achieve the claimed invention,
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`and that the skilled artisan would have had a reasonable expectation of success
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`from doing so.”
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`53.
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`I understand that Attorney argument, however, is not evidence. I
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`understand that Attorney argument and other conclusory statements thus cannot
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`sustain a finding of obviousness.
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`54.
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`I further understand that although a rigid application of the teaching-
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`suggestion-motivation test is inconsistent with the patent laws, identifying a
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`motivation or reason why a person of ordinary skill would combine prior-art
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`elements to arrive at a claimed invention is still an important part of assessing
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`patentability and protects against hindsight bias.
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`55.
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`Instead of providing evidence of motivation to combine the prior art
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`references, Petitioner relies solely on a conclusory statement. Thus, Petitioner fails
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`to satisfy its burden of proof. For example, Petitioner provides no evidence that a
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`person of ordinary skill would have had a reasonable expectation of success in
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`combining Karacki with Gainsboro to arrive at the inventions claimed in Claims 1-
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`10. Paper 4 at 15-16. Indeed, there is no evidence that a person of ordinary skill
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`would have understood how to combine these references, which respectively
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`disclose a token economy system and an automated phone system. The Petitioner
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`relies on the conclusory statement: “In fact, a person of ordinary skill in the art
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`would be motivated to apply the monitoring and control system of Gainsboro to the
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`inmate reward system of Karacki as it provides automated control of account
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`balances for the institution, prevents transfer of points, and enables a greater range
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`of calling options to the inmates.” Id. at 17. Such argument does not provide
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`evidence of a reason to combine the references, but rather suggests the use of
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`impermissible hindsight.
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`56. Karacki teaches a system of encouraging work and good behavior by
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`awarding token points for students to spend on commissary items and for other
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`privileges. Ex. 1012 at 22-24. Karacki also provides that token points can be taken
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`away for poor behavior thus giving the student less “currency” to spend. Ex. 1012
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`at 24. This is intended to encourage good behavior as a simple reward system.
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`Karacki does not teach or suggest offering discounted telephone rates to inmates
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`for achieving a threshold good behavior. Neither does the secondary reference U.S.
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`Patent No. 7,106,843 to Gainsboro (“Gainsboro”) teach this. Gainsboro teaches an
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`automated telephone access system. One of ordinary skill would find no reason to
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`modify Karacki to include the automated phone system of Gainsboro because the
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`result would not produce the desired effect of providing discounted telephone rates
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`for the inmates that maintain a behavior above a predetermined point total.
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`Because both Karacki and Gainsboro are missing these limitations, a skilled artisan
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`would have no reasonable expectation of success in so modifying the prior art and
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`their combination is improper.
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`57. Furthermore, I understand that a prior art reference must be
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`considered in its entirety, i.e., as a whole, including portions that would lead away
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`from the claimed invention. Petitioner fails to consider Karacki as a whole. In
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`doing so, Petitioner ignores that Karacki teaches away from the inventions in
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`independent claims 1 and 9. Specifically, Karacki teaches away from element [1.4]
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`and [9.3]’s requirement of “reducing the telephone call charge rate” limitation.
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`Karacki