Trial@uspto.gov
`571-272-7822
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` Paper 10
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` Entered: September 12, 2016
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`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
`Denying Request for Rehearing
`37 C.F.R. §§ 42.71
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 10
`
`
`
`
` Entered: September 12, 2016
`
`
`
`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
`Denying Request for Rehearing
`37 C.F.R. §§ 42.71
`
`
`
`
`
`
`
`Case IPR2016-00267
`Patent 7,256,816 B2
`
`I. INTRODUCTION
`Securus Technologies (“Petitioner”) filed a Request for Rehearing (Paper 9,
`“Reh’g Req.”) of the decision denying institution (Paper 8, “Dec.”), in which the
`Board concluded that Petitioner was not reasonably likely to prevail in
`demonstrating that at least one of the challenged claims of U.S. Patent No.
`7,256,816 B2 (Ex. 1001, “the ’816 Patent”) is not patentable, based on the Petition.
`Dec. 2. Specific to the instant Rehearing Request, we found that Petitioner did not
`demonstrate a reasonable likelihood of prevailing in establishing that challenged
`claims were unpatentable as obvious over Bulriss, Hesse and Rae. Id. at 13.
`In its request, Petitioner argues that “the Board mistakenly relied on the
`privacy-mode description of non-monitored attorney-client communications as the
`basis for denying institution” and those descriptions are not applicable to “the
`public mode described in the reference and presented throughout the Petition.”
`Reh’g Req. 1. Although we consider Petitioner’s arguments below, the Request
`for Rehearing is denied.
`
`
`II. ANALYSIS
`When rehearing a decision on institution, the Board will review the decision
`for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be
`determined if a decision is based on an erroneous interpretation of law, if a factual
`finding is not supported by substantial evidence, or if the decision represents an
`unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. U.S.,
`393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338,
`1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).
`2
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`Case IPR2016-00267
`Patent 7,256,816 B2
`
`Petitioner contends that the prior art reference Bulriss discloses two modes
`of operation —public and privacy. Reh’g Req. 2. According to Petitioner, it
`exclusively relied on the public mode disclosure for teaching the disputed claim
`limitation. Id. at 3–5; see, e.g., Reh’g Req. 1 (“The public-mode disclosure—
`exclusively relied on by Securus—teaches the claimed communications monitoring
`. . . .”). Petitioner argues that we erred because we followed Patent Owner’s lead
`and “overlooked or misapprehended [Petitioner’s] public-mode arguments and
`evidence when denying institution.” Id. at 2. We do not agree.
`The first recitation of the term “mode” in this proceeding occurred in the
`Decision Denying Institution, in a discussion of Bulriss. Dec. 7. Bulriss discusses
`private and public modes (Ex. 1005, 15:35–36), and Patent Owner analyzes the
`types of communication recited in Bulriss (Prelim. Resp. 13–17), but neither party
`discussed the public and privacy modes in the Petition or Preliminary Response.
`Recitations of “private,” “privacy,” “public,” and “mode” in the Petition (Paper 2)
`and Dr. Zatkovich’s declaration (Ex. 1002) are provided in the table below:
`Subject
`Petition [Paper 2]
`Zatkovich Declaration [Exhibit 1002]
`word
`“private” p. 12: “enables private
`communication,” “private
`communication is
`maintained”
`
`¶ 2: “virtual private networks (VPNs);”
`¶ 51: “communicate privately,” ¶ 91:
`“private communication mode;” claim
`chart element 1.pre: “private
`communications;” claim chart element
`1.e: “private location;” claim chart
`element 3: “semi-private location”
`none
`¶ 2, claim chart element 16: “public
`switched telephone networks (PSTN);”
`¶¶ 45, 92, 95, claim chart elements 1.a,
`3
`
`“privacy: none
`“public” pp. 13, 23: “public
`exchange device”
`
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`Case IPR2016-00267
`Patent 7,256,816 B2
`
`1.b, 9, and 30.a: “public exchange
`device;” ¶ 78: “central public exchange
`‘PBX’ device”
`¶ 91: “private communication mode”
`
`“mode” none
`
`As such, it is not clear how Petitioner could have relied solely on the public
`mode of Bulriss when neither the public nor the privacy modes are acknowledged
`in the Petition. If an understanding of the public mode of Bulriss was important in
`the context of Petitioner’s case against the claims of the ’816 Patent, no such
`import or discussion of the public mode was provided in the Petition.
`The Board is tasked with determining whether a petitioner would be
`reasonably likely to prevail in demonstrating that at least one of the challenged
`claims is not patentable in view of the petition filed. 35 U.S.C. § 314(a). It is the
`Petitioner, in its Petition, that must demonstrate whether there is a reasonable
`likelihood that at least one claim is unpatentable under the assert ground. See
`37 C.F.R. § 42.108(c). “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”)). This burden never shifts to Patent Owner. See
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed.
`Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27
`(Fed. Cir. 2008)) (discussing the burden of proof in inter partes review).
`
`4
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`Case IPR2016-00267
`Patent 7,256,816 B2
`
`Petitioner further argues that it “relied [up]on Bulriss’s public mode, where
`communications between an attorney and inmate are displayed for a judge and jury
`to monitor,” and provides citations from the Petition to those specific
`communications in Bulriss. Reh’g Req. 4–5. The cited communications, however,
`are not recited explicitly in Bulriss as occurring only in the “public mode,” where
`Bulriss provides specific recitations of the use of portions of the system in different
`modes, i.e., recites “in a public mode,” etc. See Ex. 1005 15:37–38, 16:26–31, 33–
`40. As well, Bulriss makes clear that attorney-client sidebar station 48 operates
`both in the usual video conference mode and in a private mode (id. at 15:20–22),
`but the Petition does not refer to (or acknowledge) this portion of Bulriss.
`Petitioner’s Request for Rehearing is replete with references to Bulriss’s
`“public mode,” including specific citations, namely “Ex. 1005 at 16:24-31; 18:2-
`8.” See Reh’g Req. 7. Those citations fall short, however, because they were not
`provided in the Petition. The closest citation provided by Petitioner is “Ex. 1005 at
`16:54-17:3,” at page 41 of the Petition. The Board could not have overlooked a
`detailed explanation or analysis not presented in the Petition. A rehearing request
`is not a supplemental petition. The petition, itself, must identify “specific portions
`of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(5). “The Board
`may exclude or give no weight to the evidence where a party has failed to state its
`relevance or to identify specific portions of the evidence that support the
`challenge.” Id. Petitioner has the responsibility to identify and explain in the
`petition specific evidence that supports its arguments. We must make our
`determination regarding institution based on what the Petition actually presented
`and not what it could have reasonably contained had it been reformulated. In re
`
`5
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`Case IPR2016-00267
`Patent 7,256,816 B2
`
`Magnum Oil Tools Int’l, Ltd., No. 2015-1300, 2016 WL 3974202, at *10 (Fed.
`Cir. July 25, 2016) (holding that the Board is not “free to adopt arguments on
`behalf of petitioners that could have been, but were not, raised by the petitioner
`during an IPR”).
`Furthermore, many of Petitioner’s additional arguments rely on Petitioner’s
`assertion that it demonstrated Bulriss’s public mode, of which we are not
`persuaded; so those additional arguments also fail to persuade us. See Reh’g Req.
`5–11.
`Petitioner’s remaining arguments refer to the “scheduling of
`communications” limitation and its proffered motivation to combine Bulriss and
`Hesse. Reh’g Req. 11–14. We have previously discussed and decided these issues
`in the Denial of Institution Decision, and we are not persuaded of error in their
`consideration. Dec. 8–9, 12. As we discussed, the motivation to combine cannot
`come from the subject patent itself, such that even if “[t]he motivation to combine
`is therefore explicit in the references” (Reh’g Req. 14), it does not cure the
`deficiencies of the combination of Bulriss and Hesse provided in the Petition, as
`discussed in the rest of the Decision. Likewise, the new citations to Bulriss (Reh’g
`Req. 12), not found in the Petition, cannot be used to show that we
`misapprehended the arguments supplied in the Petition or that we used
`unreasonable judgment in determining that one of ordinary skill in the art would
`not have been motivated to provide scheduling of video visits in the context of
`Bulriss, in view of Hesse, for the reasons supplied by Petitioner. Dec. 12.
`For the foregoing reasons, Petitioner has not shown that the Board’s findings
`are not supported by substantial evidence, nor that the Board abused its discretion
`
`6
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`Case IPR2016-00267
`Patent 7,256,816 B2
`
`in determining that Petitioner failed to demonstrate that at least one of the
`challenged claims of the ’816 Patent is unpatentable.
`
`
`III. CONCLUSION
`Insofar as we have addressed above the assertions set forth in Petitioner’s
`Request for Rehearing (Paper 9), the Request is granted. In all other respects, the
`Request is denied.
`
`
`
`
`7
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`
`
`Case IPR2016-00267
`Patent 7,256,816 B2
`
`PETITIONER:
`Erika H. Arner
`Jason Stach
`Andrew Strickland
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`erika.arner@finnegan.com
`jason.stach@finnegan.com
`andrew.strickland@finnegan.com
`
`
`
`PATENT OWNER:
`Michael D. Specht
`Lauren C. Schleh
`Michael B. Ray
`Brian Lee
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
`mspecht-PTAB@skgf.com
`lschleh-PTAB@skgf.com
`mray-PTAB@skgf.com
`blee-PTAB@skgf.com
`
`8
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