Paper 8
`
`
`Entered: June 3, 2016
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`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 B2
`____________
`
`
`
`
`
`
`
`
`
`
`Before KEVIN F. TURNER, BARBARA A. BENOIT, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`DECISION
`Denial of Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`Entered: June 3, 2016
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`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 B2
`____________
`
`
`
`
`
`
`
`
`
`
`Before KEVIN F. TURNER, BARBARA A. BENOIT, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`DECISION
`Denial of Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2016-00267
`Patent 7,256,816 B2
`
`
`I. INTRODUCTION
`Securus Technologies (“Petitioner”) filed a Petition for inter partes
`review of claims 1–55 of U.S. Patent No. 7,256,816 B2 (Ex. 1001, “the ’816
`Patent”). Paper 2 (“Pet.”). Patent Owner, Global Tel*Link Corporation,
`filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). We have
`jurisdiction under 35 U.S.C. § 314(a), which provides that an 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 that there is a reasonable
`likelihood that Petitioner would prevail in establishing the unpatentability of
`any one of claims 1–55.
`
`A. Related Matters
`Both parties identify the district court proceeding Securus Tech., Inc.
`v. Global Tel*Link Corp., Case No. 3:14-cv-04233-M (N.D. Tex.), as
`possibly affecting or being affected by the instant proceeding. Pet. 59;
`Paper 4, 2.
`
`
`B. The ’816 Patent
`As Petitioner indicates, “[t]he ’816 patent describes a system for
`conducting video visits between two participants, such as prison inmates and
`outside visitors.” Pet. 2 (citing Ex. 1001, 5:15–21). The ’816 Patent
`discloses that each endpoint of the system, serving the visitors and the
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`inmate, has an audio/video terminal connected through a data center, where
`the data center also houses equipment to schedule and conduct the video
`visits. Id. at 4:19–22, 6:12–14. The system also has an overseer’s terminal
`or station that is used to monitor the video visits, and is capable of
`displaying multiple sets of participants at one time, each selectable so that
`the visit can be observed. Id. at 8:58–9:2. The ’816 Patent also discusses
`prior art systems, including their apparent lack of synchronicity between
`data connections during the conference creating latency, and how those
`deficiencies are overcome by the’816 Patent. Id. at 2:25–3:3.
`
`
`C. Illustrative Claim
`Claims 1 and 30 of the ’816 Patent are independent. Claim 1 is
`illustrative of the claimed subject matter:
`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, the first and
`second participants visiting via the first and second data
`connections;
`capturing video and audio as original communications data
`from the first and second participants;
`transmitting the original communications data to and from the
`first and second participants across a computer network via
`the data center;
`splitting along the first or second data connection either the
`communications data transmitted from one of the first and
`3
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`IPR2016-00267
`Patent 7,256,816 B2
`
`
`second participants to the data center, or the
`communications data transmitted to the one of the first and
`second participants from the data center, to create a copy of
`the video and audio communications data from the original
`video and audio communications data; and
`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.
`Ex. 1001, 16:21–47 (emphases added).
`
`
`D. Asserted Grounds of Unpatentability
`Petitioner contends that claims 1–55 of the ’816 Patent are
`unpatentable based on the following specific grounds (Pet. 12–58):
`Claims Challenged
`Basis
`References
`1–15, 18–21, 25–44, 47–50, 54, and 55 § 103
`Bulriss1 and Hesse2
`Bulriss, Hesse, and
`Rae3
`
`16, 17, 22–24, 45, 46, and 51–53
`
`§ 103
`
`
`
`
`1 US Patent No. 7,061,521 B2, filed December 16, 2003, issued
`June 13, 2006 (Ex. 1005, “Bulriss”).
`2 US Patent No. 7,046,779 B2, filed February 15, 2002, issued May 16, 2006
`(Ex. 1006, “Hesse”).
`3 US Patent No. 7,899,167 B1, filed August 15, 2003, issued March 1, 2011
`(Ex. 1007, “Rae”).
`
`4
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`
`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, 1278–79 (Fed. Cir. 2015),
`cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 890
`(mem.) (2016). Under that standard, claim terms are presumed to be 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 asserts that “multiplexing means” and “transmitting
`means,” recited in certain claims, are means-plus-function limitations, and
`describes the recited functions and the corresponding structures provided in
`the Specification of the ’816 Patent. Pet. 7–12. Patent Owner argues that
`the Petition can be denied without considering Petitioner’s proposed claim
`constructions, but nonetheless also argues that Petitioner’s proposed
`constructions are deficient. Prelim. Resp. 4–9. We agree with Patent Owner
`that neither claim limitation needs to be construed specifically herein.
`As such, for purposes of this Decision, we are not persuaded that any
`specific claim construction must be made in this decision to determine the
`efficacy of Petitioner’s grounds of unpatentability.
`
`
`
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`
`B. Asserted Grounds of Obviousness over Bulriss, Hesse, and Rae
`Claims 1–55
`Petitioner asserts that claims 1–15, 18–21, 25–44, 47–50, 54, and 55
`are unpatentable under 35 U.S.C. § 103 as obvious over Bulriss and Hesse,
`and that claims 16, 17, 22–24, 45, 46, and 51–53 are unpatentable under
`35 U.S.C. § 103 as obvious over Bulriss, Hesse, and Rae. Pet. 12–58. To
`support its contentions, Petitioner relies on the declaration testimony of
`Mr. Ivan Zatkovich. Ex. 1002. Patent Owner argues that the cited
`combinations fail to disclose all of the limitations of the claims, and also
`teach away from the claims of the ’816 Patent. Prelim. Resp. 9–17, 21–25.
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)); see also Intelligent Bio-Systems,
`Inc. v Illumina Cambridge Ltd., No. 2015-1693, 2016 WL 2620512, at *6
`(Fed. Cir. May 9, 2016) (“It was [Petitioner]’s burden to demonstrate both
`that a skilled artisan would have been motivated to combine the teachings of
`the prior art references to achieve the claimed invention, and that the skilled
`artisan would have had a reasonable expectation of success in doing so.”)
`(internal quotation marks removed). Thus, Petitioner must explain how the
`combinations of Bulriss, Hesse, and Rae would have rendered the
`challenged claims unpatentable. For the reasons that follow, we determine
`that Petitioner has not done so.
`
`6
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`
`
`1. Bulriss
`Bulriss is entitled: “Video Conference System Providing Private and
`Attorney-Client Privileged Communications.” Ex. 1005, [54]. We note that
`the title of a patent may be used to aid in the understanding of the invention
`disclosed and claimed. See, e.g., Exxon Chem. Patents, Inc. v. Lubrizol
`Corp., 64 F.3d 1553, 1557 (Fed. Cir. 1995); Titanium Metals Corp. of Am. v.
`Banner, 778 F.2d 775, 780 (Fed. Cir. 1985). Bulriss describes a conference
`system with two conference stations, one for the attorney and one for the
`attorney’s client. Ex. 1005, Abs. The stations are connected by at least one
`communications link, having a single processor for routing signals and a
`control panel that controls signals between the stations “so that the attorney
`and the attorney’s client are permitted to engage in a private communication
`without vitiating the attorney-client privilege.” Id.
`Bulriss also discloses that in prior art systems, “to facilitate a private
`conference between an attorney and an inmate, it has been necessary to
`establish a separate telephone connections between the defense attorney and
`the inmate in the prison,” usually requiring a recess. Id. at 2:33–43. Bulriss
`also discloses that the attorney-client sidebar station may operate in both a
`public and a privacy mode, and when operating in the public mode, “the A/V
`signals are generated by the camera/microphone/monitor 170 and travel
`through the two-way communications link 164.” Id. at 15:35–38, 16-26–29.
`Bulriss also discloses that judge’s control panel selects the inputs
`displayed on the display devices, including the prosecuting attorney, the
`defense attorney, the inmate and the judge, and allows for the parties to be
`recorded by a recording device. Id. at 17:4–12. In addition:
`
`7
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`IPR2016-00267
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`
`When the attorney-client sidebar feature is activated, the
`courtroom station 48 and the inmate's station 62, 172 are the only
`two A/V IO devices that remain active. No other device
`connected to the system 10 participates in the attorney-client
`conversation. All of the devices are "locked out" of the attorney-
`client privileged communication.
`Id. at 18:2–8 (emphasis added). Bulriss also details that its system can be
`used at remote visitation facilities where family members can visit inmates
`via video conference, but no discussion of monitoring is made. Id. at 11:51–
`57. Petitioner points out that Bulriss identifies Hesse as a prior art video
`conferencing system. Pet. 16–17 (citing Ex. 1005, 3:55–58).
`2. Hesse
`Hesse is directed to a video conference system that provides reliable
`video conferencing involving prisoners and their visitors. Ex. 1006, 8:53–
`55. The system can have multiple stations, including a central site, a court, a
`visiting center, and a jail, with the central site having a conference control
`station, including a recorder. Id. at 8:56–9:3. A schedule conference
`process creates, revises, and deletes conference plans, identifies equipment
`and configurations, and provides notice of upcoming conferences. Id. at
`6:56–67, 7:30–33.
`3. Analysis of Petitioner’s Contentions
`Petitioner contends that “[o]ne of ordinary skill in the art at the time
`of the ’816 patent’s filing would have considered the teachings of Bulriss
`and Hesse and would have been motivated to combine them to address the
`problems allegedly solved by the ’816 patent.” Pet. 18. We note Petitioner
`has alleged that problems discussed in the ’816 patent would have served as
`a rationale to combine Bulriss and Hesse, but Petitioner has not shown that
`8
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`IPR2016-00267
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`
`those problems were actually known in the relevant timeframe. See In re
`Nomiya, 509 F.2d 566, 573 (CCPA 1975) (If there is no evidence of record
`that a person of ordinary skill in the art would have expected the problem to
`exist at all, it is not proper to conclude that the invention which solves this
`problem would have been obvious to that hypothetical person of ordinary
`skill in the art); see also KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 420
`(2007) (“Under the correct analysis, any need or problem known in the field
`of endeavor at the time of the invention and addressed by the patent can
`provide a reason for combining the elements in the manner claimed.”)
`(emphasis added). Additionally, Patent Owner points out that even if the
`disclosed problems of latency were known, Bulriss does not explicitly
`address latency in such systems, so that one of ordinary skill in the art would
`have had no reason to look to Bulriss to address those problems. Prelim.
`Resp. 27–28.
`Nonetheless, Petitioner contends that because Bulriss does not
`expressly disclose establishing connections at a scheduled time, one of
`ordinary skill in the art would have been motivated to find and use prior art
`teachings to disclose the same, with one such teaching being Hesse. Pet. 20.
`Petitioner argues that the use of Hesse’s centralized conference management
`system would have been desirable to decrease cost and improve scalability.
`Id. at 21.
`
`4. Analysis of Patent Owner’s Contentions
`Patent Owner argues that the combination of Bulriss and Hesse fails
`to disclose monitoring of communications data between first and second
`participants, as required by independent claims 1 and 30, and additionally
`
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`
`teaches away from monitoring any such communications. Prelim. Resp. 9–
`10. Patent Owner further argues that Petitioner relies on Bulriss to satisfy
`the limitations of the independent claims that pertain to the capturing and
`monitoring of “communications data” between two participants of a video
`visit. Id. at 11–12 (citing Pet. 22–25, 31–33). Patent Owner contends that
`the communication in Bulriss referred to is attorney-client privileged
`communication, and although it may be initiated by the judge, it is not
`monitored and is private. Id. at 12–13. We agree.
`With respect to the preambles of claims 1 and 30, Petitioner argues
`that “[i]n the courtroom, an attorney communicates with an inmate using a
`‘courtroom attorney-client sidebar station 48,’” and this is equivalent to the
`“video visit” recited. Pet. 22. Petitioner continues that “[i]n the Bulriss
`system, a video visit between the attorney and inmate can be monitored by a
`judge (and the rest of the courtroom) using control panel 44 and display
`devices 96.” Pet. 23 (citing Ex. 1005, 17:4–12). The cited section of
`Bulriss, however, does not detail monitoring by the judge or anyone else. If
`the “visit” claimed is the specific communication between the attorney and
`the inmate only, it will not be monitored without vitiating the attorney-client
`privilege. In other words, if utilized in “privacy” mode, as discussed above,
`all other devices would be “locked out,” and the attorney-client sidebar
`stations would not be monitored.
`In Bulriss, if the communication is used in “public mode,” then it is
`not clear that this would be the communication between the inmate and
`attorney that Petitioner relies upon. If it is general communication between
`the inmate and the judge or one of the attorneys, it does not include the
`
`10
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`
`specific use of the attorney-client sidebar station relied upon by Petitioner.
`Such general communication would necessarily have more than those two
`participants, and although it could include exchanges between the inmate
`and his or her attorney, it is not the communication relied upon by Petitioner.
`Additionally, although it is possible that a “video visit” may encompass
`more than communications between the inmate and attorney (see Ex. 1001,
`5:21–38), Petitioner has not relied upon more in its Petition.
`Additionally, with respect to the monitoring step of claim 1, and the
`equivalent recitations of claim 30, Petitioner argues that “Bulriss’s system
`allows a judge and jury to monitor a video conference between a defense
`attorney and an inmate” (Pet. 32), but does not cite to any specific portion of
`Bulriss for the proposition that the specific communications between defense
`attorney and an inmate are monitored. Rather, Petitioner states that the
`Judge’s control panel “receives a copy of the audio/visual data from control
`interface device 42” (id.), but that does not equate to monitoring. Again,
`Bulriss is clear that based on the type of communications, those
`communications may not be monitored.
`Similarly, Petitioner also alleges that Bulriss’s display devices 96 can
`also constitute a “monitoring station” or a “third terminal,” so that “the
`conduct of each of the parties [can] be displayed to the jury” (Pet. 32–33
`(citing Ex. 1005, 17:4–12)), but Petitioner fails to explain how the
`communication between the attorney and the inmate using the attorney-
`client sidebar station, relied upon as the “video visit,” would be part of the
`“conduct of each of the parties.” As explained above, the specific
`communication between the inmate and his or her attorney would not be the
`
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`
`same as the simultaneous depiction of all parties on the display devices. As
`such, we are persuaded by Patent Owner’s arguments that the combination
`of Bulriss and Hesse fails to disclose “monitoring of communications data
`between first and second participants,” as recited in the challenged claims.
`Patent Owner also argues that the combination of Bulriss and Hesse
`teaches away from establishing connections at a scheduled time because
`doing so would impede or delay court proceeding. Prelim. Resp. 21–25. As
`Patent Owner explains, the scheduling of visits to resolve issues during a
`court proceeding would cause unnecessary delay to those same proceedings,
`because at the time that the judge determines that such communications are
`needed, per Bulriss, they would not be scheduled as described in Hesse. Id.
`at 22–23. Patent Owner also points out that the subject communications
`arise ad hoc, they need to be addressed without delay, and are not amenable
`to scheduling. Id. at 23. Lastly, Patent Owner emphasizes that Bulriss is
`concerned with such delays and would teach away from the scheduling
`provided in Hesse. Id. at 24–25 (citing Ex. 1005, 2:33–67, 5:51–64, 6:4–
`10).
`
`We agree with Patent Owner that one of ordinary skill in the art would
`not have been motivated to provide scheduling of video visits, per claims 1
`and 30, in the context of Bulriss, in view of Hesse, for the reasons supplied
`by Petitioner. See Pet. 20–21 (citing Ex. 1002 ¶¶ 74, 86). Thus, for this
`additional reason, we are persuaded that Petitioner has not made a sufficient
`showing that Bulris and Hesse would have rendered claims 1 and 30
`obvious.
`
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`
`
`5. Conclusion
`On the present record, Petitioner has not made a sufficient showing
`that the combination of Bulriss and Hesse would have conveyed to one of
`ordinary skill in the art the limitations of the claims 1 and 30. Similarly, we
`determine that Petitioner does not establish a reasonable likelihood that it
`would prevail in showing claims 2–29 and 31–55, dependent on claims 1
`and 30, are unpatentable for obviousness over combinations of Bulriss,
`Hesse, and Rae.
`
`III. CONCLUSION
`For the foregoing reasons, we determine based on the Petition and the
`Preliminary Response, that Petitioner has not demonstrated a reasonable
`likelihood that it will prevail on its challenges of claims 1–55 of the
`’816 Patent.
`
`IV. ORDER
`After due consideration of the record before us, and for the foregoing
`reasons, it is:
`ORDERED that the Petition is denied as to all challenged claims and
`no trial is instituted.
`
`
`
`
`13
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`IPR2016-00267
`Patent 7,256,816 B2
`
`PETITIONER:
`Erika H. Arner
`Jason E. Stach
`Andrew G. Strickland
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`erika.arner@finnegan.com
`jason.stach@finnegan.com
`Andrew.Strickland@finnegan.com
`
`PATENT OWNER:
`Michael D. Specht
`Michael B. Ray
`Lauren C. Schleh
`Brian Lee
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
`mspecht-PTAB@skgf.com
`mray-PTAB@skgf.com
`lschleh-PTAB@skgf.com
`blee-PTAB@skgf.com
`
`
`
`
`
`14
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