Trials@uspto.gov
`571.272.7822
`
`
`Paper 15
`Filed: May 12, 2017
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SECURUS TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`JOHN D. PROFANCHIK, SR.,
`Patent Owner.
`_______________
`
`Case IPR2016-00268
`Patent 8,315,367 B2
`_______________
`
`Before KEVIN F. TURNER, BARBARA A. BENOIT, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318 and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`571.272.7822
`
`
`Paper 15
`Filed: May 12, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SECURUS TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`JOHN D. PROFANCHIK, SR.,
`Patent Owner.
`_______________
`
`Case IPR2016-00268
`Patent 8,315,367 B2
`_______________
`
`Before KEVIN F. TURNER, BARBARA A. BENOIT, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318 and 37 C.F.R. § 42.73
`
`
`
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`IPR2016-00268
`Patent 8,315,367 B2
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`
`INTRODUCTION
`I.
`We have jurisdiction to hear this inter partes review under 35 U.S.C.
`§ 6(c), and this Final Written Decision is issued pursuant to 35 U.S.C.
`§ 318(a) and 37 C.F.R. § 42.73. For the reasons that follow, we determine
`that Petitioner has shown by a preponderance of the evidence that claims 1–
`20 of U.S. Patent No. 8,315,367 B2 (Ex. 1001, “the ’367 patent”) are
`unpatentable.
`A. Procedural History
`Securus Technologies, Inc. (“Petitioner”) filed a Petition (Paper 1,
`“Pet.”) to institute an inter partes review of claims 1–20 of the ’367 patent.
`On the cover of its Petition for inter partes review, Petitioner indicated that
`Global Tel*Link Corporation was the patent owner. Global Tel*Link
`Corporation, however, informed the Board that John D. Profanchik, Sr. is
`the patent owner and real party-in-interest. Paper 4, 2; Paper 5, 1. John D.
`Profanchik, Sr. (“Patent Owner”) timely filed a Preliminary Response (Paper
`5, “Prelim. Resp.”). In its Preliminary Response, Patent Owner pointed out
`citation errors in the Petition. Petitioner then filed a Corrected Petition.
`Paper 7.1 Based on Petitioner’s filing of a Corrected Petition after the filing
`of Patent Owner’s Preliminary Response, Patent Owner filed a pleading
`responsive to the Corrected Petition. Papers 9 (Board’s Order authorizing
`Patent Owner’s responsive pleading), 10 (Patent Owner’s Responsive
`Pleading).
`Pursuant to 35 U.S.C. § 314(a), we instituted an inter partes review of
`(1) claims 1–7, 9–17, 19, and 20 as unpatentable under 35 U.S.C. § 102(e) in
`
`
`1 All citations in this Decision are to the Corrected Petition, Paper 7.
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`view of Polozola 2; (2) claim 3 and 13 unpatentable under 35 U.S.C. § 103(a)
`in view of Polozola and Csabai 3; (3) claim 4, 8, 14, and 18 unpatentable
`under 35 U.S.C. § 103(a) in view of Polozola and Hansen4; (4) claims 1–3,
`5–7, 9–13, 15–17, 19, and 20 under 35 U.S.C. § 103(a) as unpatentable over
`Reinhold5, Csabai, and Polozola; and (5) claims 4, 8, 14, and 18 under
`35 U.S.C. § 103(a) as unpatentable over Reinhold, Csabai, Polozola, and
`Hansen. See Paper 11 (“Dec. to Inst.”), 40.6
`After institution of trial, Patent Owner indicated that it would not file
`a Patent Owner’s Response or otherwise continue participating in this
`proceeding. See Paper 14 (Conduct of Proceeding Order). Under the
`particular circumstances of this case, the Board, however, has considered
`Patent Owner’s arguments from its Preliminary Response during the
`deliberations and decision-making for this Final Written Decision. Oral
`argument was not requested by either party.
`B. Related Proceedings
`The parties inform us that no other related matters would affect or be
`affected by this proceeding. Pet. 59; see Paper 4 (Patent Owner’s
`Mandatory Notices), 2–3.
`
`
`2 US Patent No. 8,031,052 B2 (filed Nov. 22, 2006) (“Polozola,” Ex. 1005).
`3 WO 2006/097775 A1 (filed July 21, 2005) (“Csabai,” Ex. 1007).
`4 US Pub. No. 2006/0180647 A1 (filed Feb. 11, 2005) (“Hansen,” Ex. 1008).
`5 US Patent No. 7,494,061 B2 (filed June 30, 2006) (“Reinhold,” Ex. 1006).
`6 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35
`U.S.C. § 100 et seq. effective on March 16, 2013. The ’367 patent issued
`from an application filed before March 16, 2013, therefore, we apply the
`pre-AIA versions of the statutory bases for unpatentability.
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`C. The ’367 Patent
`The ’367 patent discloses “systems and methods for preventing
`unauthorized persons from using an electronic device within a facility.”
`Ex. 1001, Abst. The ’367 patent teaches a radio frequency identification
`(RFID) system that identifies prison inmates within an RFID coverage zone
`during use of the telephone. The system determines whether the phone call
`can continue to proceed based on the proximity of one or more inmates to
`the telephone. Id. at 1:49–53, 2:16–20.
`One embodiment of the ’367 patent provides an RFID access system
`that includes RFID tags having unique identification information associated
`with wearers of the RFID tags. Id. at 2:39–41. The RFID tag “having
`unique identification information associated with a wearer of the RFID tag,”
`which may be contained in “a non-removable item worn by the wearer, such
`as a bracelet.” Id. at 2:40–43. RFID tags may be constructed such that they
`cannot be removed and are tamperproof. Id. at 5:26–28. The RFID system
`includes a reader having an RFID coverage zone for detecting RFID tags
`within the zone. Id. at 2:43–45. One embodiment of an RFID tag reader
`and RFID coverage zone is illustrated in Figure 2, reproduced below.
`
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`As shown above in Figure 2 of the ’367 patent, system 200 includes inmate
`telephone 210, RFID coverage zone 230, and RFID tag reader 240. Id. at
`5:36–38, Fig. 2. In this specific embodiment, RFID coverage zone 230 is
`generated around telephone 210 by RFID reader 240, which is integrated
`within telephone 210. Id. at 5:37–39.
`Another embodiment of the ’367 patent provides a call management
`system that connects the reader and determines whether wearers in the
`coverage zone are authorized to use the electronic device (e.g., a telephone)
`based on a detected RFID tag’s unique identification information. Id. at
`2:45–50, 7:19–21, claim 1, Fig. 3. An example of a process by which an
`RFID-based access management system may be used to ensure only
`authorized persons use an electronic device in a facility is shown in Figure 3,
`reproduced below.
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`As shown above in Figure 3 of the ’367 patent at step 350, the call
`management system deactivates the electronic device if it determines an
`unauthorized wearer is detected in the coverage zone. Id. at 2:50–52, 3:22–
`26, 7:25–28, Fig. 3.
`
`D. Illustrative Claims
`
`As noted above, an inter partes review was instituted as to claims 1–
`20 of the ’367 patent, of which claims 1 and 11 are the only independent
`claims. Claims 1 and 11 are illustrative of the challenged claims and are
`reproduced below (with paragraphing):
`1. An access management system for preventing unauthorized
`persons from using an electronic communication device in a
`custodial facility, the system comprising:
`identification
`a RFID
`tag configurable
`to have unique
`information that can be associated with a wearer of the RFID tag,
`wherein the RFID tag is configured to be comprised in a non-
`removable item worn by the wearer;
`a reader configurable to be associated with the electronic
`communication device, the reader configurable to have a RFID
`coverage zone for detecting RFID tags within the coverage zone;
`and
`a call management system configurable to be connected to the
`reader and configurable to determine whether a wearer is
`authorized to use the electronic communication device based at
`least in part on an RFID tag's detected unique identification
`information;
`wherein the reader is configured to detect when the RFID tag is
`within the coverage zone, the call management system activating
`the electronic communication device if it determines the wearer
`is authorized to use the electronic communication device.
`
`Ex. 1001, 9:33–52.
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`11. A method of preventing unauthorized persons from using an
`electronic communication device in a custodial facility, the
`method comprising:
`providing a RFID tag configurable to have unique identification
`information that can be associated with a wearer of the RFID tag,
`wherein the RFID tag is configurable to be comprised in a non-
`removable item worn by the wearer;
`creating an RFID coverage zone around
`communication device;
`detecting when the RFID tag is within the coverage zone;
`determining whether the wearer of the RFID tag is authorized to
`use the electronic communication device based at least in part on
`the detected unique identification information; and
`activating the electronic communication device for use by the
`wearer of the RFID tag if it is determined that the wearer of the
`RFID tag is authorized to use the electronic communication
`device while the detected RFID tag is in the coverage zone.
`Id. at 10:16–35.
`
`the electronic
`
`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
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (“We
`conclude that the regulation represents a reasonable exercise of the
`rulemaking authority that Congress delegated to the Patent Office.”). Under
`that standard, and absent any special definitions, we give claim terms their
`ordinary and customary meaning, as would be understood by one of ordinary
`skill in the art at the time of the invention. In re Translogic Tech., Inc., 504
`F.3d 1249, 1257 (Fed. Cir. 2007).
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`Petitioner proposes construction for the claim term “non-removable
`item” recited in certain claims. Pet. 7–20. Patent Owner originally disputed
`Petitioner’s proposed construction for “non-removable item.” Prelim. Resp.
`12. Patent Owner also proposed a construction for the term “RFID coverage
`zone” in its Preliminary Response. Id. at 13.
`In the Decision to Institute, we determined that the broadest
`reasonable construction of “non-removable item” is “an item that cannot be
`removed by unauthorized persons without it ceasing to function properly,”
`while “RFID coverage zone” encompasses “an area in which a radio
`frequency identification can be detected.” See Dec. to Inst. 9–10. As
`discussed previously, Patent Owner chose not to file a Patent Owner’s
`Response, which precluded Petitioner from filing a Reply. See Paper 14
`(Conduct of Proceeding Order). Thus, neither party has challenged our
`construction of these claim terms. Having considered whether the
`constructions set forth in the Decision to Institute should be changed, we see
`no reason to alter the constructions of these claim terms as set forth in the
`Decision to Institute, and we incorporate our previous analysis for purposes
`of this Decision. See Dec. to Inst. 9–10. Therefore, for the reasons set forth
`in the Decision to Institute, we interpret “non-removable item” as “an item
`that cannot be removed by unauthorized persons without it ceasing to
`function properly,” and “RFID coverage zone” as encompassing “an area in
`which a radio frequency identification can be detected.” See id.
`After analyzing the claims and supporting specification of the
`’367 patent, we determine that we need not provide express constructions for
`any other claim terms.
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`B. Principles of Law
`A claim is unpatentable under 35 U.S.C. § 102 if a prior art reference
`discloses every limitation of the claimed invention, either explicitly or
`inherently. Glaxo Inc. v. Novopharm Ltd., 52 F.3d 1043, 1047 (Fed. Cir.
`1995). If the prior art reference does not expressly set forth a particular
`element of the claim, that reference still may anticipate if that element is
`inherent in its disclosure. In re Robertson, 169 F.3d 743,745 (Fed. Cir.
`1999).
`A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) objective evidence of nonobviousness,
`i.e., secondary considerations. See Graham v. John Deere Co. of Kansas
`City, 383 U.S. 1, 17–18 (1966).
`“A determination of whether a patent claim is invalid as obvious
`under § 103 requires consideration of all four Graham factors, and it is error
`to reach a conclusion of obviousness until all those factors are considered.”
`Apple Inc. v. Samsung Elecs. Co., Ltd., 839 F.3d 1034, 1048 (Fed. Cir. 2016)
`(en banc) (citations omitted). “This requirement is in recognition of the fact
`that each of the Graham factors helps inform the ultimate obviousness
`determination.” Id.
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`“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) (discussing the burden of proof in inter
`partes review). Furthermore, Petitioner cannot satisfy its burden of proving
`obviousness by employing “mere conclusory statements.” In re Magnum
`Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
`Thus, to prevail in an inter partes review, Petitioner must explain how
`the proposed combinations of prior art would have rendered the challenged
`claims unpatentable. At this final stage, we determine whether a
`preponderance of the evidence of record shows that the challenged claims
`would have been obvious over the proposed combinations of prior art.
`We analyze the instituted grounds of unpatentability in accordance
`with the above-stated principles.
`C. Level of Ordinary Skill in the Art
`In determining whether an invention would have been obvious at the
`time it was made, we consider the level of ordinary skill in the pertinent art
`at the time of the invention. Graham, 383 U.S. at 17. “The importance of
`resolving the level of ordinary skill in the art lies in the necessity of
`maintaining objectivity in the obviousness inquiry.” Ryko Mfg. Co. v. Nu-
`Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991).
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`Petitioner’s Declarant, Dr. Caloyannides, opines that a person of
`ordinary skill in the art relevant to the ’367 patent “would have held a
`bachelor’s or master’s degree in electrical engineering and had at least three
`years of experience working with access control systems, or the equivalent
`thereof.” Ex. 1003 ¶ 37. Although Patent Owner makes no argument
`regarding who would qualify as a person of ordinary skill in the art relevant
`to the ’367 patent, the burden remains on Petitioner to make its case. See
`Dynamic Drinkware, 800 F.3d at 1378.
`Based on our review of the ’367 patent, the types of problems and
`solutions described in the ’367 patent and cited prior art, and the testimony
`of Petitioner’s Declarant, we adopt and apply Petitioner’s definition of a
`person of ordinary skill in the art at the time of the claimed invention. We
`note that the applied prior art reflects generally the appropriate level of skill
`at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d
`1350, 1355 (Fed. Cir. 2001).
`D. Alleged Anticipation of Claims 1–7, 9–17, 19, and 20 by Polozola
`Petitioner contends claims 1–7, 9–17, 19, and 20 of the ’367 patent
`are unpatentable under 35 U.S.C. § 102(e) as anticipated by Polozola.
`Pet. 9–26. Patent Owner disputes Petitioner’s contentions in its Preliminary
`Response. Prelim. Resp. 14–23. Although Patent Owner chose not to
`participate in the proceeding and makes no arguments regarding these claims
`following our Decision to Institute, the burden remains on Petitioner to
`demonstrate unpatentability. See Dynamic Drinkware, 800 F.3d at 1378.
`For reasons that follow, we determine Petitioner has demonstrated by a
`preponderance of evidence the unpatentability of these claims.
`
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`1. Overview of Polozola
`Polozola discloses systems and methods for “providing radio
`frequency identification (RFID) of individuals, as may be implemented with
`respect to a controlled environment facility, using RFID transducer
`technology deployed in association with a user terminal, such as telephone
`or multimedia kiosk.” Ex. 1005, Abst. RFID tags “identify residents of a
`controlled environment facility and control one or more transactions
`associated with the residents and/or actions of the residents using a RFID
`system in which a user presents a RFID transponder in proximity to a RFID
`transducer for identification.” Id.
`One embodiment in Polozola of an RFID system adapted to control
`calls or other transactions (e.g., commissary purchases) within a controlled
`environment facility is illustrated in Figure 4, reproduced below.
`
`
`As shown in Figure 4, a user with RFID tag 12 approaches RFID tag
`reader 42 and is prompted to present RFID tag 12, which transmits the user’s
`identification via communication link 18 to RFID tag reader 42. Id. at 8:27–
`32, 9:61–62.
`A processing system for identifying the user based on the RFID tag’s
`information is illustrated in Figure 6, reproduced below.
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`As shown in Figure 6, the processing system at step 606 “determines if the
`user is authorized to conduct the desired transaction, such as to place a call
`to a phone number input by the user.” Id. at 11:36–39, Fig. 6. If the “user is
`authorized to place the call, for example, [the] processing system[] connects
`the call,” and the transaction is allowed to proceed. Id. at 11:59–61, Fig. 6
`step 607. If the user is not authorized, the call is not connected, the
`transaction may be terminated, and an investigator may be notified of the
`attempt to make an unauthorized call. Id. at 11:61–67, Fig. 6 step 614.
`Another embodiment in Polozola discloses using RFID tags to
`determine whether an inmate is authorized to use other electronic devices,
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`“such as computers, personal digital assistants (PDAs), cellular telephones,
`and/or the like,” and whether the inmate can pass through a door or gate. Id.
`at 4:34–36, 8:50–55.
`2. Analysis
`a. Independent Claims 1 and 11
`Claim 1 specifically recites “a reader . . . configurable to have a[n]
`RFID coverage zone for detecting RFID tags within the coverage zone,”
`while claim 11 recites “creating an RFID coverage zone around the
`electronic communication device.” Ex. 1001, 9:33–52, 10:16–35.
`Petitioner contends Polozola discloses each of the elements recited in
`claims 1 and 11 (Pet. 11–20), and specifically contends that Polozola
`discloses “an RFID coverage zone” as required by the challenged claims.
`Id. at 15–18. According to Petitioner, Polozola discloses that RFID reader
`42 includes RFID interrogator 26, which “contains an antenna and is
`operable to communicate with RFID tag 12 (FIG. 1) via communication link
`18 (FIG. 1)” when the RFID tag is within the “proximity of RFID reader
`42.” Id. at 15 (citing Ex. 1005, 7:19–23, 9:61–62, Fig. 6 step 602; Ex. 1003
`¶¶ 73, 74). Petitioner explains that “RFID tag 12 responds with data stored
`therein, sending the data back over communication link 18 to RFID
`interrogator 26,” such as an “identification number.” Id. (citing Ex. 1005,
`10:53–56, Fig. 6 step 603; Ex. 1003 ¶ 74). Petitioner, thus, concludes that
`Polozola discloses a “reader is configured to detect when the RFID tag is
`within the coverage zone,” as recited in claim 1, at least because the tag is
`close enough to send information to the reader. Id. (citing Ex. 1003 ¶ 74).
`For claim 11, Petitioner argues that communication link 18 creates an RFID
`coverage zone around the telephone connected to the tag reader, because
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`communication between the tag and the reader only occurs when the RFID
`tag is within the “proximity of RFID reader 42.” Id. at 18 (citing Ex. 1005,
`9:61–62; Fig. 6, step 602; Ex. 1003 ¶ 115).
`Patent Owner contests Petitioner’s position in its Preliminary
`Response, contending Polozola fails to disclose the required “RFID
`coverage zone” for several reasons. Prelim. Resp. 14–23. First, Patent
`Owner contends that communication link 18 in Polozola is a point-to-point
`connection while the claimed coverage zone covers a predetermined zone
`around RFID tag reader 42. Id. at 15 (citing Ex. 1001, Fig. 2; Ex. 1005, Fig.
`4). Patent Owner argues that, a point-to-point connection is not a coverage
`zone, and communication link 18 does not “detect[] RFID tags within the
`coverage zone,” as required by claim 1. Id. at 15–16. Patent Owner further
`argues that a communication link does not necessarily imply detection of a
`device within a “coverage zone,” because one can easily communicate
`wirelessly with a device outside of a defined “coverage zone,” particularly if
`the link is a point-to-point connection. Id. at 16.
`Second, Patent Owner contends Petitioner fails to demonstrate how
`bringing RFID tag 12 “in proximity of RFID reader 42” to communicate
`with RFID reader 42 relates to the claimed “RFID coverage zone.” Id. at
`17–18. According to Patent Owner, Petitioner never argues that the claimed
`“RFID coverage zone” corresponds to Polozola’s “proximity of RFID reader
`42” and that statements made by Petitioner’s Declarant cannot be relied
`upon to support the Petition due to a prohibition of incorporation by
`reference. Id. at 18 (citing 37 C.F.R. § 42.6(a)(3), which states “[a]rguments
`must not be incorporated by reference from one document into another
`document”). Patent Owner further contends that (1) communication within
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`“proximity” of a device does not necessarily mean the device has a coverage
`zone (id. at 19); (2) although RFID tag 12 communicates with RFID reader
`42 in the proximity of reader 42, that does not necessarily mean reader 42
`has a coverage zone for detecting tag 12, because there need not be a
`coverage zone at all, or tag 12 could be configured to have a “coverage
`zone” rather than reader 42 having one (id. at 19–20); and (3) Polozola does
`not spell out an “RFID coverage zone” anywhere or specifically use
`anything like it or even contemplate the use of an “RFID coverage zone” (id.
`at 22).
`Lastly, Patent Owner contends that there are significant differences
`between the RFID coverage zone in the ’367 patent and communication link
`18 in Polozola. Specifically, Patent Owner argues (1) the RFID coverage
`zone in the ’367 patent can detect multiple RFID tags (including first and
`second RFID tags) within the zone (id. at 16 (citing Ex. 1001, 2:59–3:5, 6:5–
`10 (“another RFID tag enters within the coverage zone 230”))), whereas
`communication link 18 in Polozola only works for one tag 12 and different
`tags require different point-to-point links for communication with the
`reader;7 (2) Polozola’s communication link 18 has a dynamic length
`depending on the distance between RFID tag 12 and RFID reader 42, which
`may change even during active communication as the tag moves about,
`whereas the claimed coverage zone has a predetermined size (e.g., 1.5 m or
`30 feet) (id. at 16–17 (citing Ex. 1001, 5:50–56)); (3) the existence of
`Polozola’s communication link 18 necessarily requires active
`communication between RFID tag 12 and RFID reader 42, whereas the
`
`7 Patent Owner does not provide a citation to support its characterization of
`Polozola.
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`claimed coverage zone is “predetermined” by a reader alone, meaning that
`the coverage zone does not require communication between the reader and
`any RFID tag (i.e., the coverage zone exists even if there is no RFID tag
`near the reader) (id. at 16–17 (citing Ex. 1001, 4:28–29, 5:50–53)); and (4)
`Polozola’s communication link 18 cannot achieve certain security features of
`the claimed coverage zone, whereas by using the coverage zone in the ’367
`patent, “system 200 may be implemented so that only one inmate is allowed
`in proximity of the telephone 210” (id. at 16–17 (citing Ex. 1001, 5:44–62)).
`Patent Owner concludes that challenges to claims 1 and 11 should be
`rejected because Polozola fails to disclose specifically or inherently an
`“RFID coverage zone,” and Petitioner has failed to show that Polozola’s
`communication link 18 creates an “RFID coverage zone.” Id. at 23.
`Even taking into account Patent Owner’s arguments in its Preliminary
`Response and recognizing the burden remains on Petitioner to demonstrate
`unpatentability, we agree with Petitioner’s position that Polozola discloses
`“an RFID coverage zone.” See Pet. 22. Specifically, we find that one of
`ordinary skill in the art would have understood that Polozola’s
`communication link 18 creates an “RFID coverage zone” as required by
`claims 1 and 11. We credit the testimony of Dr. Caloyannides that
`communication between RFID tag 12 only occurs when tag 12 is within the
`“proximity of RFID reader 42,” thus, we find that one of ordinary skill in the
`art would have understood “proximity of [the] RFID reader 42” as being the
`coverage zone of RFID reader 42. See Ex. 1003 ¶ 74 (citing Ex. 1005, 9:61–
`62, Fig. 6, step 603).
`
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`b. Dependent Claims 2–7, 9, 10, 12–17, 19, and 20
`
`Claims 2–7, 9, and 10 depend from claim 1, while claims 12–17, 19,
`and 20 depend from claim 11. Ex. 1001, 9:54–10:15, 10:36–10:64.
`Petitioner contends that Polozola, as summarized above, discloses each
`limitation of the challenged dependent claims. Pet. 20–26. Patent Owner
`does not provide contentions regarding additional limitations recited in the
`dependent claims. See Prelim. Resp. 23; Paper 14. The burden, however,
`remains on Petitioner to demonstrate unpatentability. See Dynamic
`Drinkware, 800 F.3d at 1378.
`As discussed below, we have reviewed the Petition and the supporting
`evidence, and find that Polozola discloses each limitation of the challenged
`dependent claims.
`
`(1) Dependent Claims 2, 12
`Claims 2 and 12 recite “wherein the custodial facility is a prison, jail,
`detention facility or correctional facility, and wherein the wearer is an
`inmate[ ] in the prison, jail, detention facility or correctional facility.”
`Ex. 1001, 9:53–56, 10:36–39. We find that Polozola teaches the custodial
`facility portion recited in the claims by teaching that its systems and
`methods “provide a reliable and low-cost alternative for identifying residents
`and controlling actions associated with a controlled environment facility,
`such as a prison facility (e.g. jail, stockade, prison, penitentiary, etcetera) . . .
`.” See Ex. 1005, 3:54–59. We also find that Polozola discloses that the
`RFID tags can “identify[] residents” of a prison, which includes “inmate[s]”
`of “prison facilities” where “a prison facility may tag an inmate” to identify
`the inmate. See id. at 1:36–39, 2:1–4, 4:50–53.
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`(2) Dependent Claims 3, 13
`Claim 3 recites “wherein the unique identification information is
`permanently associated with the corresponding wearer at the time the wearer
`arrives at the custodial facility,” and claim 13 recites the substantively
`similar “permanently associating the unique identification information with
`the corresponding wearer at the time the wearer arrives at the custodial
`facility.” Ex. 1001, 9:57–60, 10:40–43. We find Polozola teaches these
`features by disclosing that the “RFID tags are preferably provided in a
`configuration readily associated with an individual, whether permanently or
`temporarily.” Ex. 1005, 2:63–66. We also find that Polozola teaches that
`the facilities “‘tag’ each resident of the controlled environment facility to be
`identified by securely associating a RFID tag to each resident, such as using
`a bracelet or other substantially permanently associated or attached item.”
`Ex. 1005, 4:9–12. We credit the testimony provided by Dr. Caloyannides,
`and find that one of ordinary skill in the art would understand “tag[ging]”
`residents with “permanently-associated” RFID bracelets describes tagging
`the inmate when it arrives at the facility so that the inmate’s actions can be
`tracked and controlled, as described in the background of Polozola. See id.
`at 1:36–2:30; Ex. 1003 ¶¶ 83, 131.
`(3) Dependent Claims 4, 14
`Claims 4 and 14 both recite “wherein the unique identification
`information associated with the RFID tag is reprogrammable depending on a
`wearer of the RFID tag.” Ex. 1001, 9:61–63, 10:44–46. We find Polozola
`teaches this feature by teaching that “RFID tags are preferably provided in a
`configuration readily associable with an individual, whether permanently or
`temporarily.” Ex. 1005, 2:63–66. We also find that Polozola teaches that
`
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`facilities can “tag a visitor” with an RFID tag “so that a visitation call may
`be subject to monitoring and/or control by a processing system in association
`therewith.” See id. at 4:50–53. Additionally, we find that the tag’s
`identification information can include “an individual’s identification
`number, identification code, name, picture, social security number, date of
`birth, age, nationality, race, height, weight, eye color, hair color, and/or any
`other information that may be used for identification purposes.” Id. at 2:57–
`62. We credit the testimony provided by Dr. Caloyannides, and find that
`because information such as names, pictures, social security numbers, date
`of birth, etc., are unique to an individual, associating RFID tags with visitors
`is implemented by reprogrammable tags that are reprogrammed with new
`identification data for each visitor. See Ex. 1003 ¶¶ 87, 136.
`(4) Dependent Claims 5, 15
`Claim 5 recites that “the call management system is further configured
`to issue a notification when an RFID tag associated with an unauthorized
`wearer is detected in the coverage zone,” and claim 15 recites the
`substantively similar “issuing a notification when an RFID tag associated
`with an unauthorized wearer is detected in the coverage zone.” Ex. 1001,
`9:64–10:2, 10:47–49. We find that Polozola teaches these features. As
`explained above for claims 1 and 11, Polozola’s call processing system
`determines whether a user is authorized to use an electronic communication
`device based on the information from the RFID tag in the coverage zone.
`When a wearer is not authorized to perform the requested function, Polozola
`teaches in an alternative embodiment that an “investigator or other personnel
`may be notified of such [unauthorized] calls, perhaps in realtime . . . .” See
`Ex. 1005, 11:63–12:2. Thus, we find that if the processing system detects
`
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`“an unauthorized call” based on the received data in the coverage zone, the
`system issues the notification to an investigator. Id. at 11:63–12:2, Fig. 6 at
`steps 605, 606.
`
`(5) Dependent Claims 6, 16
`Claims 6 and 16 both recite “wherein the electronic communication
`device is an audiovisual device.” Ex. 1001, 10:3–4, 10:50–51. We credit
`Dr. Caloyannides’ testimony that computers, multimedia kiosks, and
`personal digital assists would have been understood by one of ordinary skill
`in the art to describe audiovisual devices (Ex.1003 ¶ 95). Accordingly, we
`find Polozola teaches this feature by teaching that its methods are “deployed
`
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