Trials@uspto.gov Paper 19
`571-272-7822 Entered: December 16, 2015
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`
`
`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 IPR2015-01223
`Patent 7,961,860 B1
`____________
`
`
`
`
`
`
`
`
`
`
`Before KEVIN F. TURNER, BARBARA A. BENOIT, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`571-272-7822 Entered: December 16, 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 IPR2015-01223
`Patent 7,961,860 B1
`____________
`
`
`
`
`
`
`
`
`
`
`Before KEVIN F. TURNER, BARBARA A. BENOIT, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
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`IPR2015-01223
`Patent 7,961,860 B1
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`I. INTRODUCTION
`Global Tel*Link Corporation (“Petitioner”) filed a corrected Petition
`for inter partes review of claims 1–31 of U.S. Patent No. 7,961,860 B1
`(Ex. 1001, “the ’860 patent”). Paper 5 (“Pet.”). Patent Owner, Securus
`Technologies, Inc., filed a Preliminary Response. Paper 18 (“Prelim.
`Resp.”). We have jurisdiction under 35 U.S.C. § 314(a), which provides that
`inter partes review may not be instituted “unless . . . the information
`presented in the petition . . . and any response . . . shows that 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 the Preliminary Response, we
`conclude the information presented does not show there is a reasonable
`likelihood that Petitioner would prevail in establishing the unpatentability of
`claims 1–31 of the ’860 patent. Accordingly, we deny institution of an inter
`partes review.
`
`A. Related Matters
`Each party represents no judicial or administrative matters would
`affect or be affected by this proceeding. Pet. 60; Paper 4 (Patent Owner’s
`Mandatory Notices).
`
`B. The ’860 Patent
`The ’860 patent relates to techniques to display graphically call
`processing operations related to signals in a telephone call and the results of
`event detection algorithms used to analyze those signals. Ex. 1001, Abs.,
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`2:7–20. Figure 2, reproduced below, shows a display screen 200 of an
`example graphical display system showing signals related to a telephone
`call. Id. at 5:4–7.
`
`
`The display screen 200 of Figure 2 shows waveform 201 that is based on the
`signal in the telephone line and is continuously “scrolling . . . to give a
`realtime view of the telephone call.” Id. at 5:6–10. “Threshold levels 202
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`and 210 are levels used by the [digital signal processing1] algorithm for
`detecting events” and enable an administrator viewing the display screen to
`see the thresholds in relation to the amplitude of the waveform representing
`the telephone call. Id. at 5:11–15. The ’860 patent explains that, when a
`threshold is crossed, the DSP algorithm typically reacts in some way, such
`as by indicating an event has occurred. Id. at 5:15–19.
`
`C. Illustrative Claim
`Claims 1, 11, 20, and 25 of the challenged claims in the ’860 patent
`are independent. Claim 1 is illustrative of the claimed subject matter:
`1. A method for graphically demonstrating a call-processing
`operation, said method comprising:
`receiving data representing signals in a telephone call and data
`from an event-detecting algorithm, said data from said
`event-detecting algorithm describing an operation of said
`algorithm on said telephone call;
`generating a graphical display including a waveform based on
`said data representing signals in said telephone call and a
`graph of said operation of said event-detection algorithm,
`said graphical display further including one or more
`parameters used by said algorithm to analyze said telephone
`call depicted in relation to said waveform.
`Ex. 1001, 10:58–11:7.
`
`
`1 Compare Ex. 1001, 4:11–14 (indicating “a Digital Signal Processor (DSP)
`chip perform[s] the algorithm by sampling, digitizing, analyzing signals on
`telephone line[s] and identifying phenomena that are indicative of various
`events,” with id. at 5:11–12 (indicating “levels used by the DSP algorithm”).
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`D. Asserted Grounds of Unpatentability
`Petitioner contends that claims 1–31 of the ’860 patent are
`unpatentable based on the following specific grounds (Pet. 8–59):
`Reference[s]
`Basis
`Challenged Claims
`§ 103 1–5, 7–9, 11, 13, 14, 17, and
`18
`§ 103 10 and 19
`§ 103 6, 15, 20, and 23–27
`§ 103 12 and 16
`§ 103 28 and 30
`§ 103 21, 22, 29, and 31
`
`Bress2
`Bress and Easton3
`Bress and Hodge4
`Bress and McNitt5
`Bress, Hodge, and McNitt
`Bress, Hodge, and Kitchin6
`
`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
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
`In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278, 1279 (Fed. Cir.
`2015) (“Congress implicitly approved the broadest reasonable interpretation
`standard in enacting the AIA,” and “the standard was properly adopted by
`PTO regulation.”). Under that standard, claim terms are presumed to be
`
`2 U.S. Patent No. 7,076,031 B1, issued July 11, 2006 (Ex. 1004, “Bress” or
`“the Bress Patent”).
`3 U.S. Patent No. 5,371,842, issued Dec. 6, 1994 (Ex. 1009, “Easton”).
`4 US 2005/0259809 A1, pub. Nov. 24, 2005 (Ex. 1005, “Hodge”).
`5 U.S. Patent No. 7,079,637 B1, issued July 18, 2006 (Ex. 1007, “McNitt”).
`6 U.S. Patent No. 5,319,702, issued June 7, 1994 (Ex. 1008, “Kitchin”).
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`given their ordinary and customary meaning as would be understood by one
`of ordinary skill in the art in the context of the entire disclosure. In re
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`Petitioner proposes constructions for various terms that recite “means”
`in claims 25–317. Pet. 5–8. Patent Owner contends that Petitioner’s
`proposed constructions do not satisfy the requirements of
`37 C.F.R. § 42.104(b)(3), which requires a petition to “identify the specific
`portions of the specification that describe the structure, material, or acts
`corresponding to each claimed function” in a means-plus-function limitation
`recited in a challenged claim. Prelim. Resp. 16–21. For the reasons
`explained later with regard to grounds asserted against claims 25–31, we
`need not reach this issue.
`Furthermore, we determine that no claim terms need express
`construction for this decision.
`
`B. Real Parties-in-Interest
`Section 312(a) of Title 35 of the United States Code provides that a
`petition for inter partes review under 35 U.S.C. § 311 may be considered
`only if, among other things, the petition identifies all real parties-in-interest.
`35 U.S.C. § 312(a)(2).
`Patent Owner contends that an inter partes review should not be
`instituted because Petitioner failed to identify all real parties-in-interest.
`Prelim. Resp. 4–15. Patent Owner raised this argument, prior to the filing of
`
`7 We note that claims 26–31 each depend, directly or indirectly, from
`method claim 24 but rely on terms in system claim 25 for antecedent bases.
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`its Preliminary Response, in a Motion for Additional Discovery. Paper 11.
`Patent Owner’s arguments and evidence in its Preliminary Response are not
`different substantively from the arguments and evidence presented in its
`Motion for Additional Discovery, or find their basis in the earlier presented
`arguments. Id. The arguments and evidence are unpersuasive for same
`reasons explained in our Decision Denying Patent Owner’s Motion for
`Additional Discovery (Paper 17). We adopt and incorporate by reference
`the findings and conclusions of that Order.
`
`C. Claims 1–24
`Petitioner asserts that independent claims 1 and 11 are unpatentable
`under 35 U.S.C. § 103 as obvious over the Bress Patent and independent
`claim 20 is unpatentable under 35 U.S.C. § 103 as obvious over the Bress
`Patent and Hodge. To support its contentions and relying on the declaration
`testimony of Mr. James R. Bress, Petitioner provides analysis purportedly
`explaining what the Bress Patent would have conveyed to one of ordinary
`skill in the art the claim limitations. Pet. 9–14, 18–21 (citing Ex. 1003).
`
`1. Summary of the Bress Patent
`The Bress Patent is a United States patent directed to collecting,
`processing, and analyzing telephone call signals. Ex. 1004, Abs. The Bress
`Patent incorporates U.S. Provisional Application No. 60/377,763 (Ex. 1006,
`“the Bress Provisional Application”) “in its entirety by reference.” Id.
`at 1:6–8. The Bress Provisional Application, in turn, incorporates the
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`contents of a “computer program appendix”8 on compact disc. Ex. 1006, 1
`(“A computer program appendix accompanies this application on compact
`disc . . ., the contents of which are incorporated by reference.”); see
`Pet. (Appendix A–Exhibit List) (describing Ex. 1010 as “Appendices A–G
`of U.S. Provisional Patent Publication No. 60/377,763 to Bress”).
`The Bress Patent describes a portable field unit that records telephone
`call signals based on user instructions, monitors call signaling for a set of
`predefined signals, and records signals that match the predefined types.
`Ex. 1004, 1:6–8. Bress’s portable field unit includes a signal recorder with
`“a user interface to allow for manual starting or stopping recording over the
`specified period or a programmable triggering function for starting or
`stopping recording over the specified period.” Id. at 3:25–30, 3:65–4:2. The
`Bress Patent provides examples of programmable triggering functions,
`including various predefined functions and “user defined events.” Id. at 4:2–
`6.
`
`The Bress Patent also details transferring data files from the portable
`field unit to a remote signal analysis system. Id. at 5:3–25. The Bress
`Patent further describes its signal analysis system as having a “graphical user
`interface which allows signal analysis including: . . . [g]raphic display of
`signal parameters.” Id. at 5:57–62. The Bress Patent also describes a
`“visual display for graphical output of the reconstructed telephone signal and
`results of the telephone signal analysis.” Id. at 4:27–29.
`
`
`8 We refer to Ex. 1010 as “the Bress Appendix” or “the computer program
`appendix.”
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`The Bress Patent indicates analysis software that “is used to view and
`conduct in depth analysis on captured telephone signals.” Id. at 14:27–30.
`A preferred embodiment of the software includes various “View” menu
`selections enabling a user to depict and analyze the waveform generated
`from the telephone call on the graphical display. Id. at 15:16–18, 15:36–42,
`15:63–66; see generally id. at 15:36–17:2. The software analyzes the
`waveform to find “all possible signals in the waveform.” Id. at 15:36–40.
`“The analysis is controlled by parameters that have been optimized to detect
`the widest variety of known signals on a telephone line.” Id. at 15:40–42.
`Also, a user can alter the views of the waveform by zooming in on a
`particular section. Id. at 15:63–65.
`Among the examples provided in the Bress Patent is an “AC view,”
`which shows an AC coupled signal. Id. at 18:23–25. The AC view
`“window can be zoomed in both the vertical (amplitude) and horizontal
`(time) axes.” Id. at 18:24–26. At the top of the AC view is a “hit-line” that
`shows signals identified by the analyses. Id. at 18:26–28. A user can use a
`pointing device (i.e., a “mouse”) to identify a particular signal (i.e., a “hit”)
`for which summary information is displayed. Id. at 18:30–33.
`
`2. Summary of Hodge
`Hodge is a United States Patent Application Publication directed to a
`three-way call detection system used with a telephone management system.
`Ex. 1005, Abs. Hodge describes techniques “for detecting a pulse of energy
`having components with a common phase delay.” Id. ¶ 1. According to
`Hodge, “a pulse with this characteristic is indicative of a three-way call
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`attempt.” Id. Hodge details “comput[ing] the Fast Fourier Transform (FFT)
`to calculate phases” of the pulse components. Id.
`
`3. Independent Claim 1
`Independent claim 1 recites, among other limitations, “generating a
`graphical display including” three elements—(i) a waveform based on data
`representing signals in a telephone call, (ii) a graph of an operation of an
`event-detecting algorithm describing an operation of the algorithm on the
`telephone call and (iii) one or more parameters used by the event-detecting
`algorithm to analyze the telephone call depicted in relation to the waveform.
`
`i. Petitioner’s Contentions
`Petitioner relies on the Bress Patent (Ex. 1004) as well as the Bress
`Provisional Application (Ex. 1006) incorporated by reference by the Bress
`Patent and the Bress Appendix (i.e., the “computer program appendix,”
`Ex. 1010) incorporated by reference by the Bress Provisional Application.
`Petitioner also relies on testimony by Mr. Bress that one of ordinary skill in
`the art would have understood the Bress Patent (including some of the
`material from the “computer program appendix” incorporated by reference
`into the Bress Provisional Application) to teach or suggest the limitations in
`claim 1. Pet. 9–14 (citing Ex. 1003). Petitioner relies on the Bress Patent
`description of a graphical user interface of its signal analysis system for the
`three graphical display elements recited in claim 1.
`First, regarding the recited “a graphical display including a waveform
`based on said data representing signals in said telephone call,” Petitioner
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`contends the discussion of the Bress Patent of the “View” menu selection,
`which enables a user to depict and analyze the waveform generated from the
`telephone call on the graphical display, would have taught or suggested the
`graphical display of the required waveform. Id. at 12 (citing Ex. 1004,
`15:36–17:2, 18:18–45); see id. at 15:16–18, 15:36–42, 15:63–66 (describing
`the waveform).
`With regard to the second element of the graphic display, Petitioner
`contends that one of ordinary skill in the art “would have readily
`understood” that the analyses that identify signals within the waveform are
`performed by an event detection algorithm and that the signals shown in the
`“hit-line” described in the Bress Patent are a graph of the operation of the
`event-detection algorithm, as required by claim 1.
`With regard to the third element of the graphic display, Petitioner
`contends that the Bress Patent disclosure of the “[g]raphic display of signal
`parameters” (Ex. 1004, 5:57–63) would be understood by one of ordinary
`skill in the art as being parameters used by the analyzing algorithm to
`identify such signals. Pet. 13. Petitioner further contends that “the graphic
`display of signal parameters” (Ex. 1004, 5:57–63) discloses displaying
`parameters used by the analyses (i.e., the event-detecting algorithm
`describing an operation of the algorithm on the telephone call) “in relation to
`the signal waveforms,” as required by claim 1. Pet. 13.
`
`ii. Analysis
`In response, Patent Owner contends that the Bress Patent (including
`the Bress Provisional Application and its “computer program appendix”)
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`does not “disclose a graphical display including one or more parameters
`used by an algorithm in relation to a waveform,” as required by claim 1.
`Prelim. Resp. 23.
`We agree with Patent Owner’s position, and we do not agree with
`Petitioner’s assertion that the description “[g]raphic display of signal
`parameters” “discloses displaying the parameters used by the event-
`detecting algorithm in relation to the signal waveforms,” as required by
`claim 1. Pet. 13–14 (citing Ex. 1004, 5:60– 65). Petitioner does not explain
`the relevance of displaying signal parameters to displaying them “in relation
`to the signal waveforms.” As such, Petitioner does not properly account for
`the limitation–in relation to the signal waveforms.” Accordingly, we
`determine that Petitioner does not explain adequately how the description of
`displaying signal parameters would have conveyed to one of ordinary skill in
`the art a graphical display including the parameters depicted in relation to
`the waveform included in the graphical display, as required in claim 1.
`For similar reasons, Petitioner’s reliance on the program interface
`shown in the Bress Appendix is unavailing. Id. at 14 (citing, without
`discussing, Ex. 1010, 87, 89, Ex. 1003 ¶¶ 75–79). Even if we were to find
`that Petitioner’s citations, without explanation, to the Bress Appendix and to
`Mr. Bress’s declaration do not amount to improper incorporation by
`reference, Petitioner has not provided sufficient analysis or evidence that the
`Bress Appendix would have conveyed to one of ordinary skill in the art the
`required graphic display of signal parameters. See 37 C.F.R. § 42.6(a)(3)
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`(“Arguments must not be incorporated by reference from one document into
`another document.”).
`The Bress Appendix indicates “options within the [analysis] program
`to define the parameters of the signals that can be detected and decoded. . . .
`Generally, the options have been placed at default to accept a wide variety
`of [call] signals and should only be changed by experienced users.”
`Ex. 1010, 87. As shown below9, the parameter option display is presented
`as “options” user interface through which parameters may be changed. Id. at
`89; see id. at 88 (describing how a user may “choose” various values for
`parameter options).
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`Id. at 89. The Bress Appendix is consistent with the Bress Patent that
`describes the display of parameters and allows a user to change parameters.
`See Ex. 1004, 5:60–65, 14:43–47). Petitioner, however, has not provided
`sufficient evidence or argument concerning the relevance of the user
`interface shown in the Bress Appendix to a graphical display including
`parameters depicted in relation to the waveform based on data representing
`signals in a telephone call. Thus, Petitioner has not presented sufficient
`evidence or argument that the Bress Appendix would have conveyed to one
`of ordinary skill in the art a display including parameters for an algorithm
`that are depicted in relation to the waveform based on signals in the
`telephone call, as required by claim 1.
`Regarding Mr. Bress’s testimony, the Petition does nothing more than
`cite to portions of it without explaining its relevance:
`Bress discloses displaying the parameters used by the event-
`detecting algorithm in relation to the signal waveforms. (Id. at
`5:60–65 (disclosing “[g]raphic display of signal parameters”);
`Bress Dec. [Ex. 1003] ¶¶ 76–77.) This concept is further
`illustrated in the figures on pages 0087 and 0089 of the Bress
`Appendix. (Bress Appendix [Ex. 1010], pp. 0087, 0089; Bress
`Dec. [Ex. 1003] ¶¶ 75–79.) Accordingly, Bress teaches or
`suggests claim element [“said graphical display further
`including one or more parameters used by said algorithm to
`analyze said telephone call depicted in relation to said
`representation of said signals”]. (Bress Dec. [Ex. 1003] ¶¶ 74–
`80.)
`Pet. 13–14.
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`Thus, Petitioner does not present sufficient argument or evidence
`regarding how the options interface is depicted in relation to a graph of a
`waveform of a telephone call. We determine, therefore, that the Petitioner
`does not present sufficient evidence and argument that one of ordinary skill
`in the art would understand the parameter display described in the Bress
`Patent, the Bress Provisional Application, and the Bress Appendix to convey
`a graphical display that includes one or more parameters used by the event-
`detecting algorithm to analyze the telephone call depicted in relation to the
`waveform parameters in relation to the signal waveform.
`Accordingly, we determine that Petitioner has not shown the Bress
`Patent would have conveyed to one of ordinary skill in the art “generating a
`graphical display including” three elements—(i) a waveform based on data
`representing signals in a telephone call, (ii) a graph of an operation of an
`event-detecting algorithm describing an operation of the algorithm on the
`telephone call and (iii) one or more parameters used by the event-detecting
`algorithm to analyze the telephone call depicted in relation to the waveform.
`For these reasons, we determine that the Petition does not present
`sufficient information to show a reasonable likelihood that Petitioner would
`prevail in establishing claim 1 is unpatentable.
`
`4. Independent Claim 11
`Independent claim 11 recites, among other limitations, “a graphical
`display system . . . operable to display a representation of said signals on
`said telephone line and a representation of said result of said analyzing
`algorithm, said graphical display further including one or more parameters
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`used by said algorithm to analyze said telephone call depicted in relation to
`said representation of said signals.” Thus, similarly to independent claim 1,
`independent claim 11 requires a graphical display of (i) data representing
`signals in a telephone line, (ii) the result of performing an analyzing
`algorithm on signals on the telephone line, and (iii) one or more parameters
`used by the algorithm to analyze said telephone call depicted in relation to
`said representation of the signals. Compare Ex. 1001, 11:46–59 (claim 11),
`with id. at 10:62–11:7.
`Regarding the parameters required in claim 11, Petitioner again relies
`on the Bress Patent’s disclosure of a graphic display of signal parameters.
`Pet. 20–21 (citing Ex.1004, 5:58–63, 18:26–28). For the reasons articulated
`with respect to claim 1, we find this argument unpersuasive.
`Petitioner further relies on the Bress Patent’s description of a data
`analysis method that includes “displaying parametric data wherein the
`parametric data comprises at least one of duration, amplitude, and twist.”
`Pet. 21 (citing Ex. 1004, 5:28–45) (quoting “a method of data analysis for
`CAS tone of telephone signal data on a remote signal analysis system. . . .
`The method also includes displaying parametric data wherein the parametric
`data comprises at least one of duration, amplitude, and twist.”).
`Petitioner, however, does not explain adequately how displaying
`parametric data of a certain type for a data analysis would have conveyed to
`one of ordinary skill in the art a graphical display depicting a parameter in
`relation to the representation of the signals on the telephone call. Petitioner
`contends that the “concept is further illustrated in the figures on pages 0087
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`and 0089 of the Bress Appendix.” The figures10 on pages 0087 and 0089 are
`presented below.
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`Ex. 1010, 87.
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`Ex. 1010, 89. According to Petitioner:
`[T]he figure on page 0087 shows the result of the event-
`detection algorithm, and the figure on page 0089 shows the
`parameter value of AC voltage threshold, together with the
`waveform of signals from a telephone call, together with the
`result of the event-detecting algorithm. (Bress Dec. [Ex. 1003]
`¶ 107).
`Pet. 21. Here, too, Petitioner’s conclusory assertions do not explain how the
`options interface in the figure on page 89, which apparently is displayed
`over the interface displayed by itself in the figure on page 87 (or a
`substantially similar interface), would have conveyed to one of ordinary skill
`in the art a graphical display with the three elements, including “said
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`graphical display further including one or more parameters used by said
`algorithm to analyze said telephone call depicted in relation to said
`representation of said signals,” as required in claim 11.
`Mr. Bress’s testimony cited by Petitioner similarly is inadequate
`because the testimony does not explain how the quoted portions of the
`reference relate to the subject matter recited in claim 11. Id. (citing Ex. 1003
`¶ 107). See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose
`the underlying facts or data on which the opinion is based is entitled to little
`or no weight.”). Rather, Mr. Bress states:
`Furthermore, Bress teaches or suggests that these parameters
`are “depicted in relation to said representation of said signals,”
`as recited in claim 11. (Id. at 5:43–45) (“The method also
`includes displaying parametric data wherein the parametric data
`comprises at least one of duration, amplitude, and twist.”); see
`also figures on pages 0087 and 0089 of Bress Appendix,
`reproduced earlier in Section XI.A.1.e)[.] As such, Bress
`discloses “said graphical display further including one or more
`parameters used by said algorithm to analyze said telephone
`call depicted in relation to said representation of said signals,”
`as recited in claim 11.
`Ex. 1003 ¶ 107. Thus, Mr. Bress quotes, without explanation, a portion of
`the Bress Patent that the Petition quoted (Ex. 1004, 5:43–45) and merely
`references the location in the Declaration where figures of the Bress
`Appendix are shown. Ex. 1003 ¶ 107 (“see also figures on pages 0087 and
`0089 of Bress Appendix, reproduced earlier in Section XI.A.1.e.”).
`For these reasons, we determine that Petitioner has not shown the
`Bress Patent would have conveyed to one of ordinary skill in the art the
`graphical display system and graphical display recited in claim 11.
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`Accordingly, we determine that the Petition does not present sufficient
`information to show a reasonable likelihood that Petitioner would prevail in
`establishing claim 11 is unpatentable.
`
`5. Independent Claim 20
`Independent claim 20 recites “render[ing] a graphical display of said
`telephone signals and one or more parameters used . . . to analyze said
`signals, said one or more parameters depicted in relation to said graphical
`display of said telephone signals.” Petitioner relies on the same arguments
`made for the parameters recited by independent claim 1. Pet. 36 (indicating
`the Bress Patent discloses the parameter limitation in independent claim 20
`“for the same reasons presented earlier with respect to” the parameter
`limitation in independent claim 1).
`Thus, for the same reasons articulated above, we determine that the
`Petition does not present sufficient information to show a reasonable
`likelihood that Petitioner would prevail in establishing claim 20 is
`unpatentable.
`
`6. Dependent Claims
`Having concluded that the information in the Petition does not present
`sufficient information to show a reasonable likelihood that Petitioner would
`prevail in establishing independent claims 1, 11, and 20 would be
`unpatentable, we also determine that the Petition does not show a reasonable
`likelihood that Petitioner would prevail in establishing claims that directly or
`indirectly depend from independent claims 1, 11, or 20 would be
`
`20
`
`
`
`IPR2015-01223
`Patent 7,961,860 B1
`
`unpatentable over the Bress Patent, alone or in combination with another
`reference. Thus, we determine that Petitioner does not have a reasonable
`likelihood in showing claims 2–5, 7–9, 13, 14, 17, and 18 would have been
`obvious over the Bress Patent; claims 10 and 19 would have been obvious
`over the Bress Patent and Easton; claims 12 and 16 would have been
`obvious over the Bress Patent and McNitt; claims 6, 15, 20, 23, and 24
`would have been obvious over the Bress Patent and Hodge; and claims 21
`and 22 would have been obvious over the Bress Patent, Hodge, and Kitchin.
`
`D. Claims 25–31
`Petitioner asserts that independent claim 25 is unpatentable under
`35 U.S.C. § 103 as obvious over the Bress Patent and Hodge. Pet. 30–31,
`39–42. To support its contentions and relying on the declaration testimony
`of Mr. Bress, Petitioner provides analysis purportedly explaining how the
`combination of the Bress Patent and Hodge would have conveyed to one of
`ordinary skill in the art the claim limitations. Id. (citing Ex. 1003).
`Asserting the combination of the Bress Patent and Hodge would have
`conveyed to one of ordinary skill in the art the limitations in claim 25,
`however, is insufficient to show unpatentability. An asserted ground of
`obviousness also must demonstrate articulated reasoning with rational
`underpinning to support the legal conclusion of obviousness. In re Kahn,
`441 F.3d 977, 988 (Fed. Cir. 2006). Mere conclusory statements are not
`sufficient. Id. Furthermore, “[c]are must be taken to avoid hindsight
`reconstruction by using ‘the patent in suit as a guide through the maze of
`prior art references, combining the right references in the right way so as to
`
`21
`
`
`
`IPR2015-01223
`Patent 7,961,860 B1
`
`achieve the result of the claims in suit.’” Grain Processing Corp. v. Am.-
`Maize Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (quoting Orthopedic
`Equip. Co. v. United States, 702 F.2d 1005, 1012 (Fed. Cir. 1983)).
`Petitioner asserts one of ordinary skill in the art would have combined
`Hodge’s “functionality for detecting and preventing three-way calls” with
`techniques described in the Bress Patent. Pet. 31. Petitioner states that both
`Bress and Hodge use analyzing algorithms to perform event detection during
`telephone calls by analyzing telephone call signaling data. Id. Petitioner
`further asserts that one of ordinary skill in the art “interested in telephone
`call signaling data analysis and display [described in the Bress Patent] would
`have been motivated to add the additional functionality detecting and
`preventing three-way call attempts particularly in restricted facilities such as
`inmate facilities.” Id.
`For support, Petitioner indicates “Hodge is explicitly disclosed to be
`applicable to inmate facilities.” Id. (citing Ex. 1003 ¶ 147). Petitioner does
`not explain adequately why one of ordinary skill in the art would seek to add
`Hodge’s three-way call detection techniques to the telephone call signaling
`data analysis display in the Bress Patent. The Bress Patent is directed to
`“telephone signal collection and analysis for verification and
`troubleshooting.” Ex. 1004, 1:14–19. Thus, Petitioner’s conclusory
`statement that one of ordinary skill in the art would combine the references
`to prevent three-way call attempts in inmate facilities is insufficient.
`
`22
`
`
`
`IPR2015-01223
`Patent 7,961,860 B1
`
`
`Also, Petitioner’s citation to a paragraph in Mr. Bress’s Declaration
`for support is inadequate. Pet. 31 (citing Ex. 1003 ¶ 147). The testimony of
`Mr. Bress states:
`A [person of ordinary skill in the art] interested in telephone
`call data analysis and display for detection and prevention of
`three-way call attempts in inmate facilities would have been
`motivated to combine the call analysis and display teachings of
`[the Bress Patent] with Hodge’s systems and methods of three-
`way call detection and monitoring expressly recited to be
`applicable to inmate facilities.
`Ex. 1003 ¶ 147. Mr. Bress’s testimony, however, does not provide sufficient
`explanation why one of ordinary skill in the art would have combined the
`Bress Patent’s call analysis and display teachings with Hodge’s three-way
`call detection. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not
`disclose the underlying facts or data on which the opinion is based is entitled
`to little or no weight.”).
`For these reasons, we determine that the Petition falls short of
`providing an articulated reasoning with rational underpinning for combining
`the teachings of the Bress Patent and Hodge. See KSR Int’l Co. v. Teleflex,
`Inc., 550 U.S. 398, 418 (“a patent composed of se
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