UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`
`
`
`
`SECURUS TECHNOLOGIES, INC.
`Petitioner
`
`v.
`
`GLOBAL TEL*LINK CORPORATION
`Patent Owner
`
`____________________
`
`
`
`Case IPR2016-00267
`Patent 7,256,816
`
`____________________
`
`
`
`PATENT OWNER PRELIMINARY RESPONSE
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`
`
`
`
`
`
`I. 
`
`
`
`
`IPR2016-00267
`U.S. Pat. No. 7,256,816
`
`TABLE OF CONTENTS
`
`Securus’ Petition is based on a combination of references that not only fails
`to disclose all of the limitations but also teaches away from the claims of the
`’816 Patent, and therefore the Petition should be denied. ............................... 1 
`
`II. 
`
`Although the Petition construes two means-plus-function limitations, their
`constructions are unnecessary in concluding that the Petition is deficient. .... 4 
`
`A. 
`
`B. 
`
`Contrary to Securus’ contention, the ’816 Patent discloses a software
`algorithm for the “multiplexing means.” .............................................. 6 
`
`Contrary to Securus’ contention, the ’816 Patent discloses additional
`structure for “transmitting means.” ....................................................... 8 
`
`III.  The combination of Bulriss and Hesse fails to disclose and teaches away
`from at least two limitations of the independent claims of the ’816 Patent
`and accordingly, both of the Petition’s proposed Grounds 1 and 2 of
`invalidity fail. ................................................................................................... 9 
`
`A. 
`
`B. 
`
`The combination of Bulriss and Hesse fails to disclose and teaches
`away from monitoring “communications data” between a first and a
`second participant, as required by the independent claims of the ’816
`Patent. .................................................................................................... 9 
`
`The combination of Bulriss and Hesse fails to disclose and teaches
`away from “establishing” a “data connection” at a “scheduled time” as
`required by the independent claims of the ’816 Patent. ...................... 17 
`
`IV.  The Petition’s rationale for combining Bulriss and Hesse is not valid, and for
`that reason as well, the Petition’s proposed Grounds 1 and 2 of invalidity
`fail. ................................................................................................................. 25 
`
`V. 
`
`For at least all of the aforementioned reasons, Securus’ Petition is deficient
`and should be denied. .................................................................................... 28 
`
`
`
`
`
`- i -
`
`
`
`
`
`

`
`
`
`
`I.
`
`
`
`
`IPR2016-00267
`U.S. Pat. No. 7,256,816
`
`Securus’ Petition is based on a combination of references that not only
`fails to disclose all of the limitations but also teaches away from the
`claims of the ’816 Patent, and therefore the Petition should be denied.
`
`The Board should deny Securus’ Petition because each of its proposed
`
`Grounds 1 and 2 of invalidity is premised on a combination of references that fails
`
`to disclose every limitation of the challenged claims and, in fact, teaches away
`
`from the claims of the ’816 Patent.
`
`Both of Securus’ proposed Grounds 1 and 2 of invalidity depend on the
`
`combination of Bulriss and Hesse rendering obvious the independent claims of the
`
`’816 Patent, as summarized in the table below:
`
`Proposed
`Ground
`
`References
`Combined1
`
`1
`
`2
`
`Bulriss,
`Hesse
`Bulriss,
`Hesse,
`Rae
`
`Independent
`Claims
`Challenged
`1, 30
`
`(none)
`
`Dependent Claims Challenged
`(each depends from one of the
`Independent Claims 1 and 30)
`2-15, 18-21, 25-29, 31-44, 47-50,
`54, 55
`16, 17, 22-24, 45, 46, 51-53
`
`
`(Petition at 2.) Hence, Securus predicates both of its proposed Grounds of
`
`invalidity on the proposition that the combination of Bulriss and Hesse renders
`
`obvious both independent claims 1 and 30 of the ’816 Patent.
`
`The Petition acknowledges that independent claims 1 and 30 of the ’816
`
`
`1 References combined in the Petition are: Bulriss (Ex. 1005), Hesse (Ex.
`
`1006), and Rae (Ex. 1007).
`
`
`
`- 1 -
`
`

`
`
`
`
`Patent require monitoring a communication between two participants, but the
`
`IPR2016-00267
`U.S. Pat. No. 7,256,816
`
`
`
`
`combination of Bulriss and Hesse would never lead to such monitoring because
`
`doing so in the combination would cause infringement upon a communication
`
`protected by the attorney-client privilege. (Infra III.A.) The Petition identifies in
`
`the combination of Bulriss and Hesse a private video conference during trial
`
`between an attorney and her incarcerated client as the claimed “communications
`
`data” of the independent claims of the ’816 patent. (Id.) The combination of
`
`Bulriss and Hesse not only fails to disclose monitoring of such communications,
`
`but, in fact, teaches away from monitoring such attorney-client privileged
`
`communications because Bulriss
`
`is aimed squarely at maintaining such
`
`communications “in confidence” so as not to lose “its protected status under … the
`
`attorney-client privilege.” (Id.; Ex. 1005 at 1:8-14.)
`
`
`
`Additionally, the Petition acknowledges that independent claims 1 and 30 of
`
`the ’816 Patent require that a “data connection” be established at a scheduled time
`
`to facilitate transmission of the claimed “communications data” between the two
`
`participants, but the “communications data” identified in the Petition is not
`
`amenable to scheduling in the future. (Infra III.B.) As noted above, the Petition
`
`identifies in the combination of Bulriss and Hesse a private video conference
`
`during trial between an attorney and her incarcerated client as the claimed
`
`“communications data” of the independent claims of the ’816 Patent. (Id.) The
`
`
`
`- 2 -
`
`

`
`
`
`
`need for such attorney-client privileged communications at
`
`
`
`
`IPR2016-00267
`U.S. Pat. No. 7,256,816
`
`trial would
`
`undoubtedly be ad-hoc and would need to be handled immediately to keep the trial
`
`progressing forward. Hence, the alleged claimed “communications data” in Bulriss
`
`and Hesse is not susceptible to scheduling, and the combination of Bulriss and
`
`Hesse teaches away from the requirement of the claims of the ’816 Patent that the
`
`claimed “data connection” associated with the claimed “communications data” be
`
`established at a scheduled time in the future.
`
`
`
`Furthermore, the Petition alleges that one of skill in the art would have been
`
`motivated to combine Bulriss with Hesse because Bulriss is allegedly directed to
`
`resolving network latency issues identified in the ’816 Patent, but Securus provides
`
`no credible support that Bulriss is directed to resolving such issues. In fact, Bulriss
`
`is devoid of any discussions on network latencies and is directed instead to
`
`enabling “private communication between an attorney and his incarcerated client
`
`during trial such that the private communication is maintained in confidence.” (Ex.
`
`1005 at 1:10-14.) Accordingly, the Petition fails to provide any credible rationale
`
`for one of skill in the art to consider Bulriss or to combine it with another reference
`
`such as Hesse to arrive allegedly at the claims of the ’816 Patent.
`
`
`
`Although it is inexplicable why Securus would submit a Petition challenging
`
`the claims of the ’816 Patent based on a supposed combination of references –
`
`Bulriss and Hesse – that fails to disclose and instead teaches away from the claims
`
`
`
`- 3 -
`
`

`
`
`
`
`of the ’816 Patent, Securus cannot cure the above noted deficiencies during an
`
`IPR2016-00267
`U.S. Pat. No. 7,256,816
`
`
`
`
`inter partes review proceeding. (Office Patent Trial Practice Guide, 77 Fed. Reg.
`
`48,756 at 48,767 (Aug. 14, 2012) (“a reply that raises a new issue or belatedly
`
`presents evidence will not be considered”).) Accordingly, for the above reasons
`
`and the additional reasons detailed below, the Board should deny Securus’ Petition.
`
`II. Although the Petition construes two means-plus-function limitations,
`their constructions are unnecessary in concluding that the Petition is
`deficient.
`
`Because the Petition’s proposed Grounds of invalidity are deficient with
`
`respect to several claim limitations of the ’816 Patent that require no construction,
`
`the Petition can be denied without considering Securus’ proposed claim
`
`constructions. In the Petition, Securus proposes constructions only for two means-
`
`plus-function
`
`limitations: “multiplexing means” and “transmitting means.”
`
`(Petition at 7-12.) Those means-plus-function
`
`limitations appear only
`
`in
`
`independent claim 30 and various dependent claims2 of the ’816 Patent, and do not
`
`appear in independent claim 1 of the ’816 Patent. As noted above and detailed
`
`below (infra III.A-B), the Petition’s proposed Grounds of invalidity fail to disclose
`
`
`2 “multiplexing means” also appears explicitly in dependent claims 2, 4, 5, 7,
`
`8, 33, 34, 36, 37, and 54 of the ’816 Patent. “transmitting means” does not appear
`
`explicitly in any dependent claims of the ’816 Patent.
`
`
`
`- 4 -
`
`

`
`
`
`
`and teach away from at least two non-means-plus-function limitations in
`
`IPR2016-00267
`U.S. Pat. No. 7,256,816
`
`
`
`
`independent claims 1 and 30 of the ’816 Patent relating to monitoring of
`
`communications data3 and establishing of data connections.4 Hence, the Petition
`
`
`3 Independent claim 1 of the ’816 Patent requires “monitoring the video visit
`
`by receiving the copy of the communications data at a monitoring station
`
`substantially simultaneously with the transmitting of the original communications
`
`data to and from the one of the first and second participants,” and independent
`
`claim 30 of the ’816 Patent requires “a third terminal … configured to receive the
`
`copy of the communications data substantially simultaneously with the
`
`transmitting of all of the original communications data to and from the one of the
`
`first and second participants for use in monitoring the video visit.” (emphasis
`
`added.)
`
`4 Independent claim 1 of the ’816 Patent requires, “establishing a first data
`
`connection from a data center and the first participant at a scheduled time” and
`
`“establishing a second data connection from the data center and the second
`
`participant at the scheduled time,” and independent claim 30 of the ’816 Patent
`
`requires “a first data connection between the data center and the first terminal
`
`established by the data center at a scheduled time” and “a second data connection
`
`
`
`- 5 -
`
`

`
`
`
`
`can be denied without having to reach Securus’ proposed constructions for the two
`
`IPR2016-00267
`U.S. Pat. No. 7,256,816
`
`
`
`
`means-plus-function limitations. But in any case, Securus’ proposed constructions
`
`for the two means-plus-function limitations are deficient for at least the reasons
`
`detailed below.
`
`A. Contrary to Securus’ contention, the ’816 Patent discloses a
`software algorithm for the “multiplexing means.”
`
`Although Securus acknowledges that the ’816 Patent discloses at least a
`
`hardware embodiment and a software embodiment for the corresponding structure
`
`of the “multiplexing means,” Securus incorrectly concludes that the ’816 Patent
`
`does not disclose an algorithm to support a software embodiment. (Petition at 9-
`
`10.)
`
`As Securus recognizes (id. at 9), the ’816 Patent discloses that the structure
`
`of the “multiplexing means” includes, “In some embodiments, [] a physical device,
`
`similar in function to a router, but is configured to copy or split the signal rather
`
`than redirect it,” and that “[i]n other embodiments, [] the multiplexing means 250
`
`may be entirely software-based [and] could be a piece of code that runs on a
`
`networking server, or a cluster of servers.” (Ex. 1001 at 9:27-36 (emphasis
`
`added).) The ’816 Patent further discloses that, “In a broad aspect, the system also
`
`
`between the data center and the second terminal established by the data center at
`
`the scheduled time.” (emphasis added.)
`
`
`
`- 6 -
`
`

`
`
`
`
`includes a multiplexing means, which may be embodied in hardware, software, of
`
`IPR2016-00267
`U.S. Pat. No. 7,256,816
`
`
`
`
`a combination of both, that is configured to receive communication data,
`
`encrypted or unencrypted, sent between the first and second participants during
`
`the audio/video communication, and to generate copied data based on the
`
`communication data.” (Id. at 4:32-38 (emphasis added).) Additionally, the ’816
`
`Patent discloses that, “As a result, the multiplexing means 140 [] in this example
`
`will generate two identical data streams during the video visit [], with one stream
`
`going to a terminal [] (where the inmate can use it for the visit) and the other
`
`stream going to the overseer's terminal 145.” (Id. at 7:44-59 (emphasis added).)
`
`“In addition, such a system would include an overseer coupled to the multiplexing
`
`means and configured to receive the copied data and to monitor the audio/video
`
`communication between the first and second participants using the received
`
`copied data.” (Id. at 4:38-42 (emphasis added).)
`
`Accordingly, the ’816 Patent discloses as structure for the “multiplexing
`
`means” not only “a physical device similar in function to a router, but is configured
`
`to copy or split the signal rather than redirect it” as acknowledged by Securus
`
`(Petition at 9) but also software executing on a computer such as a server. And,
`
`the ’816 Patent discloses in prose, as shown in emphasis in the preceding
`
`paragraph above, at least one algorithm for such software, which includes, for
`
`example, the steps of (1) receiving communication data between two participants
`
`
`
`- 7 -
`
`

`
`
`
`
`(Ex. 1001 at 4:32-38), (2) copying or splitting the communication data (id. at 4:32-
`
`IPR2016-00267
`U.S. Pat. No. 7,256,816
`
`
`
`
`42, 7:44-59, 8:1-20, 9:27-36), (3) allowing the communication data to continue to
`
`one of the participants (e.g., for a video visit) (id.), and (4) providing the copied or
`
`split communication data to another destination (e.g., to allow an overseer to
`
`monitor the video visit) (id.). (Chicago Bd. Options Exch., Inc. v. Int'l Sec. Exch.,
`
`LLC, 748 F.3d 1134, 1140-41 (Fed. Cir. 2014), reh'g denied (May 5, 2014) (noting
`
`that the structure for a computer-implemented means-plus-function limitation is an
`
`algorithm and that the “algorithm may be expressed in any understandable terms
`
`including [] in prose”).)
`
`Hence, contrary to Securus’ contention, the ’816 Patent discloses both
`
`hardware and software-based structures for the “multiplexing means” and discloses
`
`in prose at least one algorithm for the software-based structure.
`
`B. Contrary to Securus’ contention, the ’816 Patent discloses
`additional structure for “transmitting means.”
`
`While Securus acknowledges that the ’816 Patent discloses as structure at
`
`least “equipment capable of transmitting data via a packet-based, wired or wireless
`
`network, such as the Internet” for the “transmitting means” (Petition at 11-12), the
`
`’816 Patent discloses additional structures. The function of the “transmitting
`
`means” is recited in independent claim 30 of the ’816 Patent and is stated as
`
`“transmit[ing] all of the original communications data to and from the first and
`
`
`
`- 8 -
`
`

`
`
`
`
`second participants across the computer network and via the data center.” The ’816
`
`IPR2016-00267
`U.S. Pat. No. 7,256,816
`
`
`
`
`Patent discloses that such transmissions across a computer network can also
`
`include transmissions over “T1, T3, T4, DSL, SHDSL, DS3, OC3, a satellite link,
`
`and other types of wired or wireless high-speed data communications links.” (Ex.
`
`1001 at 8:22-46.) Accordingly, combining at least these additional structures with
`
`the structure acknowledged by Securus, the structure of the “transmitting means”
`
`includes at least “equipment capable of transmitting data via a packet-based, wired
`
`or wireless network, such as the Internet as well as via a T1, T3, T4, DSL, SHDSL,
`
`DS3, OC3, a satellite link, and other types of wired or wireless high-speed data
`
`communications links.”
`
`III. The combination of Bulriss and Hesse fails to disclose and teaches away
`from at least two limitations of the independent claims of the ’816
`Patent and accordingly, both of the Petition’s proposed Grounds 1 and
`2 of invalidity fail.
`
`Both of Securus’ proposed Grounds of invalidity 1 and 2 are predicated on
`
`the combination of Bulriss and Hesse rendering obvious the independent claims 1
`
`and 30 of the ’816 Patent (Petition at 2), but the combination of Bulriss and Hesse
`
`fails to disclose and teaches away from the independent claims of the ’816 Patent.
`
`A. The combination of Bulriss and Hesse fails to disclose and teaches
`away from monitoring “communications data” between a first
`and a second participant, as required by the independent claims
`of the ’816 Patent.
`
`Both independent claims 1 and 30 of the ’816 Patent require that
`
`
`
`- 9 -
`
`

`
`
`
`
`communications between participants of a video visit be monitored, but as
`
`IPR2016-00267
`U.S. Pat. No. 7,256,816
`
`
`
`
`explained below, the combination of Bulriss and Hesse fails to disclose and instead
`
`teaches away from monitoring any such communications.
`
`1.
`
`The claims of the ’816 Patent require capturing and
`monitoring “communications data” between a first and a
`second participant of a video visit.
`
`The independent claims of the ’816 Patent require capturing and monitoring
`
`of “communications data” between participants of a video visit. More specifically,
`
`independent claim 1 of the ’816 Patent recites, in part:
`
`1. A method of monitoring a video visit between at least
`a first participant and a second participant located at
`distinct endpoints, the method comprising:
`…
`capturing video and audio as original communications
`data from the first and second participants;
`…
`monitoring the video visit by receiving the copy of the
`communications data at a monitoring
`station
`substantially simultaneously with the transmitting of the
`original communications data to and from the one of the
`first and second participants.
`
`
`(emphasis added) Likewise, independent claim 30 of the ’816 Patent recites, in
`
`part:
`
`
`
`- 10 -
`
`

`
`
`
`
`
`
`
`
`IPR2016-00267
`U.S. Pat. No. 7,256,816
`
`30. A system for monitoring a video visit between at least
`a first participant and a second participant located at
`distinct endpoints, the system comprising:
`…
`a first terminal associated with the first participant and
`configured to capture video and audio as original
`communications data from the first participant during
`the video visit;
`a second terminal associated with the second participant
`and configured to capture video and audio as further
`original communications data
`from
`the
`second
`participant during the video visit;
`…
`a third terminal [] configured to receive the copy of the
`communications data substantially simultaneously with
`the transmitting of all of the original communications
`data to and from the one of the first and second
`participants for use in monitoring the video visit.
`
`
`(emphasis added) Hence, both independent claims of the ’816 Patent require
`
`capturing and monitoring “communications data” between a “first participant” and
`
`a “second participant” during a video visit.
`
`2.
`
`The alleged claimed “communications data” identified by
`Securus in the combination of Bulriss and Hesse is an
`attorney-client privileged communication.
`Securus relies on Bulriss in the combination of Bulriss and Hesse to satisfy
`
`- 11 -
`
`
`
`
`
`

`
`
`
`
`the limitations of the independent claims of the ’816 Patent that pertain to the
`
`IPR2016-00267
`U.S. Pat. No. 7,256,816
`
`
`
`
`capturing and monitoring of “communications data” between two participants of a
`
`video visit. (Petition at 22-25, 31-33.) In doing so, Securus points to what turns out
`
`to be an attorney-client privileged communication in Bulriss as satisfying the
`
`“communications data” element of the independent claims of the ’816 Patent.
`
`
`
`Bulriss is directed to a system that allows “video conferencing [] between a
`
`courtroom and a jail” so that court proceedings such as a trial can occur with an
`
`incarcerated defendant remaining in jail while all other participants (e.g., judge,
`
`prosecuting attorney, defense attorney, witness, etc.) are in court. (Ex. 1005 at
`
`9:17-23, 1:8-10, 7:37-42, 9:37-44, 10:59-11:1, 11:21-25.) To enable private
`
`attorney-client privileged communication during such proceedings between the
`
`defense attorney in court and her incarcerated defendant in jail, Bulriss provides a
`
`private video conferencing feature referred to as the attorney-client sidebar
`
`feature. (Id. at 1:10-14, 17:36-18:17.) When a judge during a courtroom
`
`proceeding determines that a private attorney-client communication is needed, the
`
`judge is empowered to initiate the attorney-client sidebar feature to enable private
`
`attorney-client privileged communications. (Id. at 17:55-59.) More specifically, the
`
`judge activates a courtroom attorney-client sidebar station for the defense attorney
`
`in the courtroom and an inmate attorney-client sidebar station for the incarcerated
`
`defendant in jail to carry out the attorney-client privileged communication. (Id. at
`
`
`
`- 12 -
`
`

`
`
`
`
`17:65-18:8.)
`
`
`
`
`IPR2016-00267
`U.S. Pat. No. 7,256,816
`
`
`
`In its Petition, Securus maps the attorney, inmate, and the communication
`
`permitted by the attorney-client sidebar feature in Bulriss as the claimed “first
`
`participant,” “second participant,” and the “communications data” of the
`
`independent claims of the ’816 Patent. (Petition at 24-25.) More specifically,
`
`Securus identifies the communication carried out between the attorney and the
`
`inmate using their respective courtroom attorney-client sidebar station and the
`
`inmate attorney-client sidebar station as the claimed “communications data” of the
`
`’816 Patent. (Id.)
`
`
`
`Bulriss makes clear that the communication enabled by the courtroom and
`
`inmate attorney-client sidebar stations are private, attorney-client privileged
`
`communications—a highly significant facet of Bulriss that Securus fails to
`
`mention. (Ex. 1005 at 17:55-59, 17:65-18:8.) For example, Bulriss states, “If the
`
`judge agrees to permit the defense attorney and the inmate to confer about a
`
`specific issue protected by the attorney-client privilege, the judge selects the
`
`attorney-client sidebar option.” (Id. at 17:55-59 (emphasis added).) And, Bulriss
`
`continues, “When the attorney-client sidebar feature is activated, the courtroom
`
`attorney-client sidebar station 48 is activated and the inmate's station 62 is
`
`activated such that the inmate may communicate with the defense attorney…. No
`
`other device connected to the system [of Bulriss] participates in the attorney-client
`
`
`
`- 13 -
`
`

`
`
`
`
`conversation.” (Id. at 17:65-18:8 (emphasis added).)
`
`
`
`
`IPR2016-00267
`U.S. Pat. No. 7,256,816
`
`
`
`Hence, Securus in its Petition maps the communications enabled by the
`
`courtroom and inmate attorney-client sidebar stations in Bulriss as the claimed
`
`“communications data” of the independent claims of the ’816 Patent (Petition at
`
`24-25) while omitting the key fact that such communications are attorney-client
`
`privileged communications in which no one else participates.
`
`3.
`
`The combination of Bulriss and Hesse fails to disclose and
`teaches away from monitoring the alleged “communications
`data” identified by Securus because doing so would infringe
`an attorney-client privileged communication.
`
`Given that Securus is mapping attorney-client privileged communications as
`
`the claimed “communications data” of the ’816 Patent, the combination of Bulriss
`
`and Hesse cannot possibly satisfy the requirement of the independent claims of the
`
`’816 Patent that the claimed “communications data” be monitored because the
`
`combination of Bulriss and Hesse not only fails to disclose such monitoring but, in
`
`fact, teaches away from monitoring any attorney-client privileged communications.
`
`First, Securus’ contention that the alleged “communications data,” which it
`
`identifies as originating from the courtroom attorney-client sidebar station, is
`
`monitored in the system of Bulriss by either a judge control panel or display
`
`devices in a courtroom (Petition at 32-33) is flatly contradicted by the disclosure of
`
`Bulriss itself. Bulriss states that when the courtroom attorney-client sidebar station
`
`
`
`- 14 -
`
`

`
`
`
`
`is activated, “No other device connected to the system [of Bulriss] participates in
`
`IPR2016-00267
`U.S. Pat. No. 7,256,816
`
`
`
`
`the attorney-client conversation” between the attorney and her incarcerated
`
`defendant. (Ex. 1005 at 17:65-18:7.) Additionally, Bulriss continues that “All of
`
`the
`
`[other] devices are
`
`‘locked out’ of
`
`the attorney-client privileged
`
`communication.” (Id. at 18:7-8.) Furthermore, Bulriss states that “activation of the
`
`attorney-client sidebar feature initiates a control signal to stop all projection of
`
`information to the display devices” in the courtroom. (Id. at 17:62-64.) And,
`
`Securus does not contend that Hesse monitors such attorney-client privileged
`
`communications. Accordingly, the combination of Bulriss and Hesse simply fails
`
`to disclose monitoring of the alleged “communications data” originating from the
`
`courtroom attorney-client sidebar station of Bulriss as required by the independent
`
`claims of the ’816 Patent.
`
`Second, Bulriss takes a step further and teaches away from monitoring any
`
`such attorney-client privileged communications, which Securus, as discussed
`
`above, identifies as the claimed “communications data.” Bulriss makes clear that
`
`its system is designed to ensure that attorney-client privileged communication are
`
`maintained in confidence and not monitored. For example, Bulriss states that its
`
`“system enables private communication between an attorney and his incarcerated
`
`client during trial such that the private communication is maintained in confidence
`
`and, therefore, does not lose its protected status under the legal doctrine of the
`
`
`
`- 15 -
`
`

`
`
`
`
`attorney-client privilege.” (Ex. 1005 at 1:10-14 (emphasis added).) For that
`
`IPR2016-00267
`U.S. Pat. No. 7,256,816
`
`
`
`
`purpose, Bulriss indicates that the courtroom attorney-client sidebar station (which
`
`allows for attorney-client communications that Securus identifies as the claimed
`
`“communications data”) be preferably “located in the courtroom [in] a semi-
`
`private location, out of earshot from the remaining participants in the courtroom
`
`proceeding” and that handsets be used to “permit the attorney and client to engage
`
`in a private communication without vitiating the attorney-client privilege.” (Id. at
`
`8:1-6, 17:44-48.) Hesse does not contradict Bulriss’ teaching that the attorney
`
`client privilege should be preserved. Hence, the combination of Bulriss and Hesse
`
`teaches away from monitoring the alleged “communications data,” which Securus
`
`as discussed above maps to attorney-client privileged communications.
`
`Accordingly, the combination of Bulriss and Hesse, which Securus depends
`
`on for both of its proposed Grounds of invalidity 1 and 2, fails to disclose the
`
`limitations of the independent claims of the ’816 Patent that require “monitoring
`
`the video visit by receiving the copy of the communications data” as recited in
`
`independent claim 1 and “receive[ing] the copy of the communications data …
`
`for use in monitoring the video visit” as recited in independent claim 30. As
`
`discussed above, the alleged claimed “communications data” identified by Securus
`
`in
`
`the combination of Bulriss and Hesse are attorney-client privileged
`
`communications and as further elaborated above, the combination of Bulriss and
`
`
`
`- 16 -
`
`

`
`
`
`
`Hesse not only fails to disclose monitoring of such communications but teaches
`
`IPR2016-00267
`U.S. Pat. No. 7,256,816
`
`
`
`
`away from doing so.
`
`B.
`
`The combination of Bulriss and Hesse fails to disclose and teaches
`away from “establishing” a “data connection” at a “scheduled
`time” as required by the independent claims of the ’816 Patent.
`
`Both independent claims 1 and 30 of the ’816 Patent require that “data
`
`connections” be “established” at a “scheduled time”, but as explained below, the
`
`combination of Bulriss and Hesse fails to disclose and instead teaches away from
`
`establishing the alleged “data connections” at a schedule time.
`
`1.
`
`The claims of the ’816 Patent require establishing “data
`connections” at a scheduled time between a first and a
`second participant of a video visit.
`
`The independent claims of the ’816 Patent require establishing at a
`
`scheduled time a “first data connection” and a “second data connection” to
`
`facilitate transmission of communications data between two participants of a video
`
`visit. More specifically, independent claim 1 of the ’816 Patent recites, in part:
`
`1. A method of monitoring a video visit between at least
`a first participant and a second participant located at
`distinct endpoints, the method comprising:
`establishing a first data connection from a data center
`and the first participant at a scheduled time;
`establishing a second data connection from the data
`center and the second participant at the scheduled time,
`
`
`
`- 17 -
`
`

`
`
`
`
`
`
`
`
`IPR2016-00267
`U.S. Pat. No. 7,256,816
`
`the first and second participants visiting via the first and
`second data connections;
`….
`monitoring the video visit by receiving the copy of the
`communications data at a monitoring station substantially
`simultaneously with the transmitting of the original
`communications data to and from the one of the first
`and second participants.
`
`
`(emphasis added) Likewise, independent claim 30 of the ’816 Patent recites, in
`
`part:
`
`30. A system for monitoring a video visit between at least
`a first participant and a second participant located at
`distinct endpoints, the system comprising:
`…
`a first terminal associated with the first participant …;
`a
`second
`terminal associated with
`the
`second
`participant …;
`a first data connection between the data center and the
`first terminal established by the data center at a
`scheduled time;
`a second data connection between the data center and
`the second terminal established by the data center at the
`scheduled time;
`…
`
`
`
`- 18 -
`
`

`
`
`
`
`
`
`
`
`IPR2016-00267
`U.S. Pat. No. 7,256,816
`
`a third terminal [] configured to receive the copy of the
`communications data substantially simultaneously with
`the transmitting of all of the original communications
`data to and from the one of the first and second
`participants for use in monitoring the video visit.
`
`
`(emphasis added) Hence, both independent claims of the ’816 Patent require
`
`establishing a “first data connection” and a “second data connection” at a
`
`scheduled time to facilitate transmission of communications data between first and
`
`second participants during a video visit.
`
`2.
`
`The alleged claimed “data connections” identified by
`Securus in the combination of Bulriss and Hesse are
`connections used during court proceedings for attorney-
`client privileged communications.
`Securus, in its Petition, relies on Bulriss in the combination of Bulriss and
`
`Hesse to satisfy the “first data connection” and the “second data connection”
`
`limitations of the independent claims of the ’816 Patent. (Petition at 25-26.)
`
`Although Securus does not state in its Petition, when both of those alleged “data
`
`connections” are activated in Bulriss, they are used for attorney-client privileged
`
`communications.
`
`More specifically, Securus in its Petition identifies a data connection
`
`originating from the courtroom attorney-client sidebar station 48 of Bulriss as the
`
`alleged “first data connection” of the ’816 Patent, and a data connection originating
`
`
`
`- 19 -
`
`

`
`
`
`
`from the inmate attorney-client sidebar station 62 of Bulriss as the alleged “second
`
`IPR2016-00267
`U.S. Pat. No. 7,256,816
`
`
`
`
`data connection” of the ’816 Patent. (Id.) Both of those alleged data connections in
`
`Bulriss are activated only when they are used together to form a communications
`
`link to allow for private attorney-client privileged communication during a court
`
`proceeding such as a trial. For exam