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 No. 7,256,816
`_________________________
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,256,816
`
`
`
`

`
`I.
`II.
`
`TABLE OF CONTENTS
`
`Introduction ...................................................................................................... 1
`Statement of Precise Relief Requested for Each Claim Challenged ............... 1
`Claims for Which Review Is Requested ............................................... 1
`A.
`
`Statutory Grounds of Challenge ............................................................ 1
`B.
`
`III. Overview of the ’816 Patent ............................................................................ 2
`IV. The Level of Ordinary Skill in the Art ............................................................ 6
`V.
`Claim Construction .......................................................................................... 6
`“multiplexing means ...” ........................................................................ 7
`A.
`
`“transmitting means ...” .......................................................................11
`B.
`
`VI. Bulriss in View of Hesse Renders Obvious Claims 1-15, 18-21, 25-44,
`47-50, 54, and 55 ...........................................................................................12
`
` Overview of Bulriss.............................................................................12 A.
`Overview of Hesse ..............................................................................17
`B.
`
`Rationale to Combine Bulriss and Hesse ............................................18
`C.
`
`Bulriss and Hesse Collectively Teach Each and Every Feature
`D.
`
`of Claims 1-15, 18-21, 25-44, 47-50, 54, and 55 ................................21
`VII. Bulriss in View of Hesse and Further in View of Rae Renders
`Obvious Claims 16-17, 22-24, 45-46, and 51-53 ..........................................51
`
` Overview of Rae ..................................................................................51 A.
`Rationale to Combine Bulriss, Hesse, and Rae ...................................52
`B.
`
`Bulriss, Hesse, and Rae Collectively Teach Each and Every
`C.
`
`Feature of Claims 16-17, 22-24, 45-46, and 51-53 .............................55
`VIII. Petitioner Presents New Grounds of Rejection .............................................58
`
`
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`- ii -
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`B.
`
`Related Matters .................................................................................. ..5 9
`
`D.
`
`Service Information ........................................................................... ..59
`
`IX. Mandatory Notices Under 37 C.F.R. § 42.8 ..................................................58
`Mandatory Notices Under 37 C.F.R. § 42.8 ................................................ ..58
`Real Party-in-Interest ..........................................................................58
`A.
`
`Real Party—in—Interest ........................................................................ ..58
`A.
`Related Matters ....................................................................................59
`B.
`
`Lead and Backup Counsel ...................................................................59
`C.
`
`Lead and Backup Counsel ................................................................. ..59
`C.
`Service Information .............................................................................59
`D.
`
`X. Grounds for Standing .....................................................................................59
`Grounds for Standing ................................................................................... ..59
`XI. Fee Payment ...................................................................................................60
`Fee Payment ................................................................................................. ..6O
`XII. Conclusion .....................................................................................................60
`
`XI.
`
`XII.
`
`Conclusion ................................................................................................... ..6O
`
`
`
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`—iii—
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`

`
`LIST OF EXHIBITS
`
`Exhibit
`
`Description
`
`Ex. 1009 Defendant Global Tel*Link Corporation’s Answer to Original
`Complaint and C ounterclaims
`
`_iV_
`
`

`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Federal Cases
`Altiris, Inc. v. Symantec Corp.,
`318 F.3d 1363 (Fed. Cir. 2003) ............................................................................ 7
`Bosch v. Snap-on, Inc.,
`769 F.3d 1094 (Fed. Cir. 2014) ............................................................................ 7
`In re GPAC,
`57 F.3d 1573 (Fed. Cir. 1995) .............................................................................. 6
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 54
`Noah Sys., Inc. v. Intuit, Inc.,
`675 F.3d 1302 (Fed. Cir. 2012) ............................................................................ 9
`Pfizer, Inc. v. Ranbaxy Labs. Ltd.,
`457 F.3d 1284 (Fed. Cir. 2006) .......................................................................... 10
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ............................................................ 7
`Securus Technologies, Inc. v. Global Tel*Link Corp.,
`Case No. 3:14-cv-04233-M (N.D. Tex.)............................................................. 59
`Federal Statutes
`35 U.S.C. § 102(e) ................................................................................................. 1, 2
`35 U.S.C § 103 ........................................................................................................... 2
`35 U.S.C. § 112 ...................................................................................... 7, 8, 9, 10, 11
`35 U.S.C. § 311 .................................................................................................... 1, 11
`Regulations
`37 C.F.R. § 42.8 ....................................................................................................... 60
`
`
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`37 C.F.R. § 42.15(b)(1) ............................................................................................ 60
`37 C.F.R. § 42.100(b) ............................................................................................ 6, 7
`37 C.F.R. § 42.104(a) ............................................................................................... 60
`77 Fed. Reg. 48756, 48764 (Aug. 14, 2012) ............................................................. 7
`Other Authorities
`M.P.E.P. § 2131.03 .................................................................................................... 6
`
`
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`I.
`
`Introduction
`
`Petitioner requests inter partes review of claims 1-55 of the ’816 patent. The
`
`’8l6 patent pertains to a prison inmate-visitor video conferencing system. Video
`
`conferencing systems for inmate visitation were well—known in the art at the time
`
`of the ’816 patent’s filing- Given the state of the art, the Patent Office had rejected
`
`the claims until the independent claims recited splitting and copying
`
`communications data in a particular way. But, unknown to the Patent Office, the
`
`prior art included an inmate-visitor video conferencing system disclosing this same
`
`feature. The claimed invention is obvious, and Petitioner respectfully requests the
`
`Board institute review of, and cancel, claims 1-55.
`
`H.
`
`Statement of Precise Relief Requested for Each Claim Challenged
`
`A.
`
`Claims for Which Review Is Requested
`
`Petitioner respectfully requests review under 35 U.S.C. § 311 of claims 1-55
`
`of the ’816 patent and cancellation of those claims as unpatentable.
`
`B.
`
`Statutory Grounds of Challenge
`
`Claims 1-55 of the ’8l6 patent are unpatentable and should be canceled in
`
`View of the following prior art references and grounds:
`
`Bulriss, U.S. Patent No. 7,061,521 (Ex. 1005); issued on June 13,
`
`Prior Art References
`
`2003; prior art under at least pre—AIA 35 U.S.C. § 102(e).
`
`2006, from an application filed in the United States on December 16,
`
`

`
`Hesse, U_S_ Patent No. 7,046,779 (Ex- 1006); issued on May 16, 2006,
`
`Prior Art References
`
`from a United States application filed February 15, 2002; prior art
`
`under at least pre—AIA 35 U.S_C. § 102(e).
`
`Rae, U.S. Patent No. 7,899,167 (Ex. 1007); issued on March 1, 2011,
`
`from an application filed in the United States on August 15, 2003;
`
`prior art under at least pre-AIA 35 U.S_C- § 102(e)_
`
`2
`
`Grounds of Un n atentabili
`
`Bulriss in View of Hesse renders obvious claims 1-15, 18-21, 25-44,
`
`47-50, 54, and 55 under 35 U.S.C § 103.
`
`Bulriss in View of Hesse and further in view of Rae renders obvious
`
`claims 16-17, 22-24, 45-46, and 51-53 under 35 U.S.C § 103.
`
`HI. Overview of the ’8l6 Patent
`
`The ’8l6 patent describes a system for conducting video visits between two
`
`participants, such as prison inmates and outside visitors. (See Ex. 1001 at 5:15-21;
`
`Ex. 1002 at 1] [025]). Figure 1 shows that the system includes two endpoints, one
`
`for the Visitor and one for the inmate. Each endpoint has terminals for conducting
`
`the video visit:
`
`

`
`
`
`As shown in Figure 1, “[l]inked between the visit office 115 and the prison
`
`110 is a data center 120, which provides the connection between the visit office
`
`115 and the prison 110.” (Ex. 1001 at 4:19-22.) The data center initiates
`
`audio/video connections between the visitor and the inmate, (Ex. 1001 at 4:19-22),
`
`and “houses the equipment 130 used to schedule and conduct the video visits.”
`
`(Ex. 1001 at 6:12-14.) The ’816 patent system also includes an “overseer’s
`
`terminal 245” or “overseer station 145” used to “monitor[] each of the inmates’
`
`video visits.” (Ex. 1001 at 8:58-63; Ex. 1002 at ¶ [026]) “[T]he overseer’s
`
`terminal 245 may be capable of displaying multiple sets of participants at one time.
`
`In such embodiments, the overseer may be able to select any one of the video visits
`
`to focus on and listen to the dialog taking place.” (Ex. 1001 at 8:65-9:2.)
`
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`Video conferencing between inmates and visitors predates the ’816 patent.
`
`(See e.g., Ex. 1005 at 3:1-5:25, “the general concept of a courtroom/jail video
`
`conference system is not new”; Ex. 1002 at ¶ [030]) The ’816 patent acknowledges
`
`that “traditional video conferencing equipment could potentially be used in the
`
`prison scenario,” but it identifies some problems doing so. (Ex. 1001 at 2:10-11.)
`
`According to the ’816 patent, “[p]erhaps the most important reason why traditional
`
`video conferencing would not be workable for prison visitation and other similar
`
`situations is the lack of synchronicity between data connections during the
`
`conference ... [A]s each participant in the video conference connects to the
`
`conversation, a new data connection, or path, is created ... [and] an inherent latency
`
`exists between these multiple connections ... Because of latency in the data path
`
`during data transmission, communication is not instantaneous.” (Ex. 1001 at 2:25-
`
`38.)
`
`To “greatly reduce, and in most cases eliminate, difference in latency in
`
`transmissions/streams used in conventional video conferencing” the ’816 patent
`
`system includes “multiplexing means ... provided at strategic points proximate to
`
`endpoints of the communication path where two or more connections are needed or
`
`desired.” (Ex. 1001 at 7:16-21.) In one embodiment, the multiplexing means is
`
`disposed between the data center and the inmate terminals and “will generate two
`
`identical data streams during the video visit ... with one stream going to a terminal
`
`
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`- 4 -
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`125 in the prison (where the inmate can use it for the visit) and the other stream
`
`going to the overseer’s terminal 145. Thus, virtually no significant latencies exist
`
`between ... what the inmate sees, hears, or does, and what the overseer receives on
`
`his terminal.” (Ex. 1001 at 7:51-58; Ex. 1002 at ¶¶ [027-028].)
`
`The ’816 patent contends that its technology differs from the prior art
`
`because in “traditional video conferencing systems, the visitor, the inmate, and the
`
`overseer would connect into a Multi-point Control Unit (MCU) such that three
`
`distinct data connections are made with a central location,” resulting in “latency
`
`between any two or more connections.” (Ex. 1001 at 7:29-37.) Since the
`
`“multiplexing means 140a, b receives a single, unicast connection from the data
`
`center, and then generates a copied data signal based on the communication data ...
`
`no significant latencies exist between the signals” and multiple terminals on the
`
`same side of the data center see and hear the transmitted A/V signals with little to
`
`no latency. (Ex. 1001 at 7:45-67; Ex. 1002 at ¶¶ [027-028].)
`
`The function of splitting communication data along the first or second data
`
`connection (i.e., on either side of the data center) was critical for the applicant
`
`during prosecution. (Ex. 1002 at ¶ [029]) The Examiner did not allow the
`
`challenged claims until the applicant amended claim 12 (issued as claim 1) to
`
`recite “splitting along the first or second data connection” and claim 41 (issued as
`
`claim 30) to recite a “multiplexing means along the first or second data connection
`
`
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`... configured to split ... original communications data.” (Ex. 1004 at 91-95,
`
`12/8/2006 Claim Amendment, underlining shows added claim language.) The
`
`applicant contended that the amended claims distinguished over the prior art
`
`because they “split[] the audio and video data along the data connections, rather
`
`than within the data center,” which applicant alleged was advantageous because
`
`“no discernible delay is imparted on to the copied signals.” (Ex. 1004 at 101,
`
`12/8/2006 Comments, p. 13.)
`
`IV. The Level of Ordinary Skill in the Art
`Several factors define the level of ordinary skill in the art. They include:
`
`(1) the types of problems encountered in the art; (2) the prior art solutions to those
`
`problems; (3) the rapidity with which innovations are made; (4) the sophistication
`
`of the technology; and (5) the educational level of active workers in the field. See
`
`M.P.E.P. § 2131.03 (citing In re GPAC, 57 F.3d 1573, 1579 (Fed. Cir. 1995)).
`
`Based on these factors, a person of ordinary skill at the time of the alleged
`
`invention of the ’816 patent would have held a bachelor’s or master’s degree in
`
`computer or electrical engineering, computer science, or a related field, and at least
`
`three years of experience working with computerized communication systems. (Ex.
`
`1002 at ¶ [019].)
`
`V. Claim Construction
`A claim in an unexpired patent subject to inter partes review “shall be given
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`its broadest reasonable construction in light of the specification of the patent in
`
`which it appears.” 37 C.F.R. § 42.100(b). The constructions provided below are
`
`solely for this proceeding. Claim terms not addressed below should be given their
`
`plain and ordinary meaning under the broadest reasonable interpretation standard.
`
`37 C.F.R. § 42.100(b); Office Patent Trial Practice Guide, 77 Fed. Reg. 48756,
`
`48764 (Aug. 14, 2012). Because claims are construed under a different standard in
`
`district court, Petitioner reserves its right to present a different construction there.
`
`See, e.g., Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en
`
`banc). But the unpatentability grounds presented here hold under either standard.
`
` A.
`“multiplexing means ...”
`
`Claims 2, 4, 5, 7, 8, 30, 33, 34, 36, 37, and 54 recite a “multiplexing means.”
`
`The use of the term “means” in a claim term triggers a rebuttable presumption that
`
`pre-AIA 35 U.S.C. § 112, ¶ 6 governs its construction. See Bosch v. Snap-on, Inc.,
`
`769 F.3d 1094, 1097 (Fed. Cir. 2014). The presumption can be rebutted where the
`
`claim recites structure sufficient to perform the claimed function in its entirety.
`
`Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1375 (Fed. Cir. 2003). If the patent
`
`claim term invokes § 112, ¶ 6, it is limited to the corresponding structure, material,
`
`or acts described in the specification, and their equivalents, performing the claimed
`
`function. Bosch 769 F.3d at 1097.
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`According to the plain language of claim 2, the multiplexing means “split[s]
`
`the original communications data” as part of the “splitting” step of claim 1. (Ex.
`
`1001 at 16:48-50; Ex. 1002 at [032].) The “splitting” of “original communications
`
`data” in claim 1 includes “splitting along the first or second data connection ... the
`
`communications data transmitted from one of the first and second participants to
`
`the data center ... to create a copy of the video and audio communications data
`
`from the original video and audio communications data.” (Ex. 1001 at 16:35-42;
`
`Ex. 1002 at [033].)
`
`Claim 30 similarly recites “multiplexing means along the first or second data
`
`connection configured to split either the original communications data transmitted
`
`from one of the first or second participants to the data center, or the original
`
`communications data transmitted to the one of the first or 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.” (Ex. 1001 at 16:48-50.) Claims
`
`4, 5, 7, 8, 33, 34, 36, 37, and 54 either depend from claims 2 and 30 or recite
`
`features similar to those claims. Thus, the plain language of the claims requires that
`
`the claimed function of the “multiplexing means” is “splitting either the original
`
`communications data transmitted from one of the first or second participants to the
`
`data center, or the original communications data transmitted to the one of the first
`
`
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`or 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.”
`
`The claims do not recite sufficient structure for performing the recited
`
`function, so the presumption that § 112, ¶ 6 applies cannot be rebutted here. (See
`
`Ex. 1002 at ¶ [034].) Turning to the specification for the corresponding structure,
`
`the ’816 patent describes that the “multiplexing means 250 is a physical device,
`
`similar in function to a router, but is configured to copy or split the signal rather
`
`than redirect it. In other embodiments ... the multiplexing means 250 may be
`
`entirely software-based, such as a software daemon ... [and,] multiplexing means
`
`250 could be a piece of code that runs on a networking server, or a cluster of
`
`servers ... [or] may be running on servers that are located in the local LAN.” (Ex.
`
`1001 at 9:27-36; Ex. 1002 at [035].)
`
`Although the specification states that the multiplexing means may be
`
`implemented in software and identifies where that software may be located, it does
`
`not provide any algorithm that could qualify as corresponding structure under
`
`§ 112, ¶ 6. (See Ex. 1002 at ¶ [036].) For software-based structure, the
`
`specification must “‘disclose an algorithm for performing the claimed function.’”
`
`Noah Sys., Inc. v. Intuit, Inc., 675 F.3d 1302, 1312 (Fed. Cir. 2012). With no
`
`algorithm, the pure software embodiment should not form part of the construction
`
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`- 9 -
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`for the “multiplexing means.”1 Regardless, the prior art discloses a hardware
`
`embodiment, so the outcome here is unaffected by the software embodiment. Thus,
`
`the structure corresponding to the function of the “multiplexing means” is a
`
`“physical device configured to copy or split a signal rather than redirect it,” and its
`
`equivalents. (Ex. 1002 at [037].)
`
`Putting the function and structure together, the appropriate construction for
`
`the “multiplexing means” clause is “a physical device configured to copy or split a
`
`signal rather than redirect it, and the physical device’s equivalents, that splits either
`
`the original communications data transmitted from one of the first or second
`
`participants to the data center, or the original communications data transmitted to
`
`the one of the first or 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.” (Ex. 1002 at [038].)
`
`
`1 Claim 54’s limitation that “the multiplexing means is embodied in
`
`hardware, software, or a combination of both” does not alter this conclusion
`
`because the specification does not support a software-only embodiment. Any
`
`additional breadth in the dependent claims would render those claims unpatentable
`
`under pre-AIA 35 U.S.C. § 112, ¶ 4. Pfizer, Inc. v. Ranbaxy Labs. Ltd., 457 F.3d
`
`1284, 1291 (Fed. Cir. 2006).
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` B.
` “transmitting means ...”
`
`Claim 30 recites a “transmitting means” having the function “transmit[ing]
`
`all of the original communications data to and from the first and second
`
`participants across the computer network and via the data center.” (Ex. 1001 at
`
`18:23-25; Ex. 1002 at [039].)
`
`While the ’816 patent does not link any specific structure to this function,2 it
`
`does describe that “computer network 205 may be a packet-based network, such as
`
`the Internet, capable of transmitting communications signals used in conducting
`
`the video visits via data packets.” (Ex. 1001 at 8:22-29; Ex. 1002 at [040].) The
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`’816 patent also describes that “high-speed connections are provided using
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`conventionally available high-speed data connections, such as a T1 connection,”
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`(Ex. 1001 at 7:13-16), and “[a]ny type of connection may be employed ...
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`includ[ing] 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 8:41-46.)
`
`Based on this disclosure, the structure corresponding to the “transmitting means” is
`
`
`2 Petitioner reserves the right to later challenge one or more claims (and
`
`claim terms) of the ’816 patent for failure to satisfy the requirements of 35 U.S.C.
`
`§ 112, which is an issue that cannot be raised in this proceeding. See 35 U.S.C.
`
`§ 311(b).
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`“equipment capable of transmitting data via a packet-based, wired or wireless
`
`network, such as the Internet,” and its equivalents. (Ex. 1002 at ¶ [041].)
`
`Taking the function and structure together, the appropriate construction of
`
`the entire “transmitting means” clause is “equipment capable of transmitting data
`
`via a packet-based, wired or wireless network, such as the Internet, and its
`
`equivalent equipment, configured to transmit all of the original communications
`
`data to and from the first and second participants across the computer network and
`
`via the data center.” (Ex. 1002 at ¶ [042].)
`
`VI. Bulriss in View of Hesse Renders Obvious Claims 1-15, 18-21, 25-44, 47-
`50, 54, and 55
` Overview of Bulriss A.
`
`Bulriss discloses “a video conferencing system connecting a courtroom with
`
`a jail.” (Ex. 1005 at 1:9-10; Ex. 1002 at [043]) It admits that “the general concept
`
`of a courtroom/jail video conference system is not new,” (Ex. 1005 at 3:1-2), but
`
`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.” (Ex. 1005 at 1:10-12.)
`
`Bulriss’s “basic configuration ... is depicted in FIG. 1A. ... [T]he system 10
`
`is installed between a courthouse 12 and a jail 14 ... [and] permits point-to-point
`
`communication between one or more individuals located within a courtroom 16 in
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`- 12 -
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`the courthouse 12 and an inmate physically located in the jail 14.” (Ex. 1005 at
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`9:37-44; Ex. 1002 at [044].)
`
`
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`The Bulriss system includes switching device 22 that “basically operates as a
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`public exchange device (otherwise referred to as a ‘PBX’ device). The A/V signals
`
`from the A/V IO device 20 in each of the courtrooms 16 are collected, processed,
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`and routed by the switching device 22 to various recipients, including the inmate
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`conference room 18 at the jail 14. In other words, the switching device 22 is
`
`responsible for establishing a point-to-point communications link between a
`
`selected courtroom 16 and a selected inmate conference room 18 or jail 14, as
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`appropriate.” (Ex. 1005 at 10:1-10; Ex. 1002 at [045]) In some embodiments, “the
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`switching device 22 may be used to collect, process, and route signals from
`
`multiple courthouses 12 connected thereto. In such a configuration, the switching
`
`device 22 may connect several courthouses 12 together in instances where a single
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`
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`- 13 -
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`switching device 22 for a single courthouse 12 is not economically justified.” (Ex.
`
`1005 at 10:11-16.) Bulriss also refers to the switching device 22 as a “signal
`
`processor” in its Summary of Invention. (Ex. 1002 at ¶ [053].) One of ordinary
`
`skill in the art would also understand that the operations of the switching device
`
`could be implemented using a computing system that has been programmed to
`
`perform its operations and that a powerful computing system may be needed in
`
`embodiments where one “switching device” performed operations for multiple
`
`courthouses. (Ex. 1002 at ¶ [054].)
`
`Annotated Figure 2A provides a more detailed illustration of the system:
`
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`- 14 -
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`On the courthouse side, the inmate’s attorney uses “courtroom attorney-
`
`client sidebar station 48,” which “generates an A/V signal that is processed by the
`
`system 10 and sent to the jail A/V IO device 28.” (Ex. 1005 at 13:18-22; Ex. 1002
`
`at ¶ [047].) A judge uses judge control panel 44 to control the system, including
`
`selecting “the preferred display format for the display devices 96. In one example,
`
`the judge may select a format where the prosecuting attorney, the defense attorney,
`
`the inmate, and the judge are simultaneously depicted on the display devices 96. In
`
`this manner, not only can the conduct of each of the parties be displayed to the
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`jury, but the conduct of each of the parties may be recorded by the recording
`
`device 58.” (Ex. 1005 at 17:5-12; Ex. 1002 at ¶ [049].)
`
`On the jail side, the inmate uses “inmate attorney-client sidebar station 62”
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`and “whatever image or images are projected on the display devices 96 within the
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`courtroom 16, the same image or images may be transmitted to the inmate and may
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`be displayed to the inmate via the inmate’s station 62.” (Ex. 1005 at 17:20-23; Ex.
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`1002 at ¶ [051].)
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`As shown in Figure 2A, A/V signals to and from the courtroom pass through
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`control interface device 42 and switching device 22 before coming from, and going
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`to, the jail side. (Ex. 1002 at ¶ [050].) For example, “[f]rom the courtroom
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`attorney-client sidebar station 48, the A/V signals travel through the control
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`interface device 42, through the switching device 22, through the courthouse
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`interface device 24, and through the jail interface device 26. From the jail interface
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`device 26, the A/V signals travel through the jail control interface device 60 and
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`are retrieved and played on the inmate attorney-client sidebar station 62.” (Ex.
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`1005 at 13:5-12.)
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`On the courtroom side, “control interface device 42 is connected, in turn, to
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`a judge’s control panel 44 through a two-way communications link 46. The control
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`interface device 42 is also connected to the courtroom attorney-client sidebar
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`station 48 via a two-way communications link 50.” (Ex. 1005 at 11:66-12:6.) As
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`shown in Figure 2A, control interface device 42 “which may comprise a
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`multiplexer,” splits signals going to and from the switching device 22 for the judge
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`control panel 44 and the courtroom attorney-client sidebar station 48. (See id.; see
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`also Ex. 1005 at 12:64-13:14; Ex. 1002 at ¶ [048])
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`Bulriss describes several prior art inmate video conferencing visitation
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`systems. “Such visitation systems include (1) a visitor center, remotely located
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`from the prison, connected to (2) an inmate center, located within the prison. The
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`visitor center and the prison are connected to one another via the video conference
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`system so that prisoners and visitors may engage in face-to-face discussions.” (Ex.
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`1005 at 1:62-67.) As an example of a “prior art video conferencing system
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`designed for courtroom use,” Bulriss identifies a Hesse published application,
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`which matured into the Hesse patent relied on in this petition. (Ex. 1005 at 3:55-
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`58; Ex. 1002 at ¶ [055]) Petitioner relies on Bulriss as teaching most of the claimed
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`features, but relies on Hesse for its more explicit disclosure of scheduling and
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`security features.
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` Overview of Hesse B.
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`Hesse discloses a “video conference system according to system architecture
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`200 [that] provides reliable video conferencing involving prisoners” and their
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`visitors. (Ex. 1006 at 8:53-55.) While one embodiment “includes stations at six
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`sites: central site 301, court 310, office 311, visiting center 312, jail 313, and jail
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`314 ... [a]lternate implementations of system 300 include any number of sites and
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`any number of stations per site.” (Ex. 1006 at 8:56-67.) The central site 301
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`includes a conference control station 306. (Ex. 1006 at 9:1-3; Ex. 1002 at ¶ [056].)
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`Hesse’s system architecture 200 includes several processes including, among
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`others, “schedule conference process 204 [and] conduct conference process 210.”
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`(Ex. 1006 at 6:22-29.) The “schedule conference process 204 creates, revises, and
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`deletes ... conference plans 208 to establish a conference to be held at a date and
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`time in the future.” (Ex. 1006 at 7:30-33.) The “conduct conference process 210
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`reviews conference plans 208 and when the start time of a conference approaches
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`[it] ... (a) identifies equipment and configurations ... ; (b) directs network I/O
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`process 214 to establish or assure links 101 via network I/O circuits 232 will be
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`effective for the conference; (c) confirms identification of human participants prior
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`to allowing participation; and (d) directs provide notice process 216 to provide
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`notice of the upcoming conference … .” (Ex. 1006 at 6:56-67; Ex. 1002 at ¶ [057].)
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`Hesse’s architecture “is not restricted to particular details of any physical
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`implementation ... any number of processors may perform the processes ... [and
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`they] may be located centrally or grouped with instances of equipment 218.” (Ex.
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`1006 at 6:29-36.) While Hesse does not expressly identify the structure of
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`equipment 218, one of ordinary skill in the art would understand it as hardware or
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`software used in the video conference. (Ex. 1002 at ¶ [058].) Also, although Hesse
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`explains that its architecture is not limited to any particular physical
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`implementation, one of ordinary skill in the art would understand from Hesse’s
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`disclosure that conference control station 306 can perform schedule conference
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`process 204 and conduct conference process 210. (Ex. 1002 at ¶ [060].)
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` Rationale to Combine Bulriss and Hesse C.
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`One of ordinary skill in the art at the time of the ’816 patent’s filing would
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`have considered the teachings of Bulriss and Hesse and would have been
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`motivated to combine them to address the problems allegedly solved by the ’816
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`patent. (See Ex. 1001 at 2:25-37; 2:10-14; Ex. 1002 at ¶ [082]) Both references are
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`directed to inmate video conferencing systems and offer solutions to the latency
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`and limited endpoint control problems identified by the ’816 patent. (Ex. 1002 at
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`¶¶ [069-070]) And, Bulriss expressly mentions Hesse’s disclosure3 as a relevant
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`“prior art video conferencing system designed for courtroom use,” (Ex. 1005 at
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`3:55-58), so one of ordinary skill in the art when considering Bulriss would have
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`also known of and considered Hesse and its teachings. (Ex. 1002 at ¶ [075].)
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`According to the ’816 patent, the “most important reason why traditional
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`video conferencing would not be workable for prison visitation ... is the lack of
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`synchronicity between data connections during the conference” because “[i]n a
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`prison situation, at least three data paths would be present: one for the inmate, one
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`for the visitor, and one for the overseer monitoring the conversation.
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`Unfortunately, an inherent latency exists between these multiple connections ...
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`[and] communication is not