Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 11
`Filed: May 24, 2016
`
`
`
`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.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`571.272.7822
`
`
`Paper No. 11
`Filed: May 24, 2016
`
`
`
`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.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
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`IPR2016-00268
`Patent 8,315,367 B2
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`I.
`
`INTRODUCTION
`
`A. Background
`Securus Technologies, Inc. (“Petitioner”) filed a Petition (Paper 1,
`“Pet.”) to institute an inter partes review of claims 1–20 of U.S. Patent No.
`8,315,367 B2 (Ex. 1001, “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.”). We have
`jurisdiction under 35 U.S.C. § 314(a), which provides that an inter partes
`review may not be instituted “unless . . . 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 Corrected Petition, the Petition’s
`supporting evidence, Patent Owner’s Preliminary Response, and Patent
`Owner’s responsive pleading regarding amended citations found in the
`Corrected Petitioner (Paper 10) we conclude Petitioner has established a
`reasonable likelihood it would prevail with respect to at least one of the
`challenged claims. Accordingly, for the reasons that follow, we institute an
`inter partes review.
`B. Related Proceedings
`Petitioner informs us that no other related matters would affect or be
`affected by this proceeding. Pet. 59; see Paper 4, 2–3.
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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, cl. 1, Fig. 3. An example of a process by which an RFID-
`based access management system may be used to ensure only authorized
`person 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, Petitioner challenges 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.
`E. The Evidence of Record
`Petitioner relies upon the following references, as well as the
`Declaration of Michael Caloyannides, Ph.D. (Ex. 1003):
`Reference
`Patent/Printed Publication
`Filing Date
`Polozola
`US Patent No. 8,031,052 B2
`Nov. 22, 2006
`Reinhold US Patent No. 7,494,061 B2
`June 30, 2006
`Csabai
`WO 2006/097775 A1
`July 21, 2005
`Hansen
`US Pub. No. 2006/0180647 A1 Feb. 11, 2005
`
`Exhibit
`1005
`1006
`1007
`1008
`
`F. The Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of claims 1–20 of the ’367
`patent based on the following grounds:
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`References
`Polozola
`Polozola and Csabai
`Polozola and Hansen
`Reinhold, Csabai, and
`Polozola
`Reinhold, Csabai,
`Polozola, and Hansen
`
`Basis
`§ 102
`§ 103
`§ 103
`§ 103
`
`Claims Challenged
`1–7, 9–17, 19, and 20
`3 and 13
`4, 8, 14, and 18
`1–3, 5–7, 9–13, 15–17, 19, and 20
`
`§ 103
`
`4, 8, 14, and 18
`
`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
`also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir.
`2015 (“Congress implicitly approved the broadest reasonable interpretation
`standard in enacting the AIA,” and “the standard was properly adopted by
`PTO regulation.”), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 890 (mem.) (2016). 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). Our analysis in this Decision is not impacted by whether we apply
`the broadest reasonable interpretation or the Phillips standard.
`See Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005).
`1. “non-removable item”
`The term “non-removable item” is recited expressly in claims 1, 8–11,
`and 18–20. Petitioner contends that the broadest reasonable interpretation of
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`the claim term “non-removable item” is “an item that cannot be removed by
`unauthorized persons without it ceasing to function properly.” Pet. 8–9
`(citing Ex. 1003 ¶¶ 42, 47). According to Petitioner, one of ordinary skill
`would not understand “non-removable item” to mean an item that can never
`be removed (id. ¶ 43), because the ’367 patent states that an RFID bracelet
`may be constructed so it “cannot be removed by unauthorized persons.” See
`Ex. 1001, 8:16–18; Ex. 1003 ¶ 44.
`Petitioner argues that ’367 patent supports its construction because the
`Specification describes a custodial facility environment, where (1) the “non-
`removable” bracelets must be removed when the wearer is released from the
`facility (Ex. 1003 ¶ 45), and (2) if tampering of a bracelet is detected, the
`bracelet will cease to function properly and would have to be removed and
`replaced (Ex. 1001, 8:48–63; Ex. 1003 ¶ 46). Pet 8. Petitioner, thus,
`concludes that one of ordinary skill in the art reading the ’367 patent would
`understand that the item should be non-removable by the wearer but should
`be removable by authorized personnel when necessary. Id. (citing Ex. 1003
`¶¶ 42, 45, 47).
`Patent Owner contests Petitioner’s proposed claim construction,
`explaining that the term is commonly understood and does not require
`construction. Prelim. Resp. 12. Nevertheless, Patent Owner argues that if
`the Board does construe the term, then one of ordinary skill in the art would
`understand it to mean “items that cannot be removed and are tamperproof.”
`Id. at 13.
`Based on the record before us, including the disclosure in the ’367
`patent of the term “non-removable item,” and crediting the testimony of Dr.
`Caloyannides regarding how the term would have been understood by one of
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`ordinary skill in the art, we are persuaded by Petitioner’s position.
`Therefore, we find the broadest reasonable construction of “non-removable
`item,” for purposes of this Decision, to be “an item that cannot be removed
`by unauthorized persons without it ceasing to function properly.”
`2. “RFID coverage zone”
`Patent Owner contends that the broadest reasonable interpretation of
`the claim term “RFID coverage zone” is “a zone of RFID coverage with a
`predetermined size.” Prelim. Resp. 13. Patent Owner argues that the ’367
`patent discloses that the RFID coverage zone can cover “any size,” where
`this size is predetermined and fixed. Id. (citing Ex. 1001, 5:50–56 (“RFID
`reader 240 would detect RFID tags that enter the predetermined RFID
`coverage zone 230 generated around the telephone 210. In one example the
`coverage zone 230 may be about 1.5m, however, any size coverage zone 230
`is envisioned. For example, the RFID reader 240 may be capable of reading
`RFID tags within a maximum range of 30 feet or longer, but alternatively,
`shorter distances may be desired in some applications.”)); see Ex. 1001,
`4:27–29, 6:40–43. Petitioner does not provide a proposed construction for
`this term.
`Although the Specification uses the term “RFID coverage zone” in
`connection with a predetermined area, we must be careful not to import
`limitations improperly into the claims or to read a particular embodiment
`appearing in the written description into the claim if the claim language is
`broader than the embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
`Cir. 1993). Accordingly, we look to the ordinary meaning of the term as
`would be understood by one of ordinary skill in the art. A non-technical
`dictionary, the Merriam-Webster Dictionary, defines “zone” as “an area that
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`is different from other areas in a particular way.” Ex. 3001. An area where
`a radio frequency identification signal can be detected is different from an
`area where such a signal cannot be detected. Thus, we are persuaded at this
`time that one of ordinary skill in the art would understand “RFID coverage
`zone” to be an area in which a radio frequency identification can be
`detected. The ordinary meaning of “RFID coverage zone” is consistent with
`the term’s use in the ’367 patent. Ex. 1001, 4:27–29, 5:36–39, 5:50–56,
`6:3–10, 6:40–43, 7:16–17, 7:35–47.
`Given the disclosure in the ’367 patent and the ordinary meaning of
`the term “RFID coverage zone,” as would be understood by one of ordinary
`skill in the art, based on the record before us, we find the broadest
`reasonable construction of “RFID coverage zone,” for purposes of this
`Decision, to encompass an area in which a radio frequency identification can
`be detected.
`
`3. Other Claim Terms
`For purposes of this Decision and based on the record before us, we
`need not provide express constructions for any other claim terms at this
`stage of the proceeding.
`B. Principles of Law
`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;
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`(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., 383 U.S. 1,
`17–18 (1966).
`We analyze the challenges presented in the Petition 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).
`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. Patent Owner does not offer any contrary
`explanation regarding who would qualify as a person of ordinary skill in the
`art relevant to the ’367 patent. See generally PO Resp.
`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 the appropriate level of skill at the time
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`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. Prelim. Resp.
`14–23. For reasons that follow, we determine Petitioner has demonstrated a
`reasonable likelihood of prevailing as to these claims.
`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.
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`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.
`
`
`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
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`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,
`“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,
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`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
`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, 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
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`“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
`“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, (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;1 (2) Polozola’s
`
`
`1 Patent Owner does not provide a citation to support its characterization of
`Polozola.
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`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 that 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 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.
`At this stage of the proceeding, we are persuaded by Petitioner’s
`position that Polozola discloses “an RFID coverage zone.” See Pet. 22. On
`the record before us, we are satisfied 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. Specifically, 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,”
`
`17
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`thus, 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. Ex.
`1003 ¶ 74 (citing Ex. 1005, 9:61–62, Fig. 6 step 603). Furthermore, based
`on the record before us at this time, we are unpersuaded by Patent Owner’s
`characterization of Polozola’s communication link 18 as a point-to-point
`communication, because there does not appear to be any disclosure in
`Polozola that RFID tag 12 must be at a specific location to communicate
`with RFID reader 42. Although, Polozola discloses a preferred embodiment
`where “the user places RFID tag 12 less than 3 inches away from RFID
`reader 42,” we do not have sufficient evidence at this time to indicate that
`such a preferred embodiment prevents communication link 18 from being
`considered a “coverage zone” as recited by claims 1 and 11.
`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 separate contentions regarding additional limitations
`recited in the dependent claims. Prelim. Resp. 23. On the record before us
`and for purposes of this Decision, we are persuaded by Petitioner’s
`contentions regarding dependent claims 2–7, 9, 10, 12–17, 19, and 20.
`c. Summary
`On this record and for purposes of this Decision, we conclude that
`Petitioner has established a reasonable likelihood it would prevail in
`showing that claims 1–7, 9–17, 19, and 20 are anticipated under 35 U.S.C.
`§ 102(e) by Polozola.
`
`18
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`E. Alleged Obviousness of Claims 3 and 13 in View of Polozola and
`Csabai
`Claims 3 and 13 require that the unique identification information
`from claims 1 and 11 be permanently associated with the corresponding
`wearer at the time the wearer arrives at the custodial facility. See Ex. 1001,
`9:57–60, 10:40–43. Petitioner contends claims 3 and 13 of the ’367 patent
`are unpatentable under 35 U.S.C. § 103 in view of Polozola and Csabai.
`Pet. 26–30. Patent Owner disputes Petitioner’s contention. Prelim. Resp.
`23–24. For the reasons that follow, we determine Petitioner has
`demonstrated a reasonable likelihood of prevailing as to these claims.
`1. Overview of Polozola
`See Section II.D.1.
`2. Overview of Csabai
`Csabai describes a “supervisory communication system serving
`callers with restricted freedom, connected to a local telephone exchange and
`to a local computer network that comprises a data base storing relevant data
`concerning each possible caller.” Ex. 1007, 1:3–5. The system includes “a
`personal identification means for identifying any caller” and “call units (11)
`are activated by the caller when identifying himself.” Id. at 2:12–13. Csabai
`teaches using bar codes to identify prisoners and that “instead of bar codes
`any appropriate carrier can be used (magnetic stripe, 3D code or an RFID
`tag).” Id. at 6:18–19.
`Csabai further teaches that “[p]risoners are identified by their name
`and by the personal identification data, which is generally a coded number
`under which they are registered,” and that “[e]ach prisoner has a specific
`record, which includes what restrictions are applied to them.” Id. at 1:15–
`17. When a prisoner attempts to use a supervised device, such as a
`
`19
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`telephone, a communication server accesses a database containing the
`prisoner’s calling restrictions and determines, for example, “whether the
`number dialed is among the stored numbers permitted for the [prisoner].”
`Id. at 6:28–7:1; 8:3–12.
`3. Analysis
`Petitioner contends Polozola teaches that unique identification
`information is associated with “with an individual, whether permanently or
`temporarily,” while Csabai teaches that “[p]risoners are identified by their
`name and by the personal identification data, which is generally a coded
`number under which they are registered.” Pet. 28 (citing Ex. 1005, 2:63–66;
`Ex. 1007, 1:15–17; Ex. 1003 ¶¶ 166, 172). According to Petitioner, one of
`ordinary skill in the art would have understood that registration of a prisoner
`takes place when the prisoner arrives at the custodial facility. Id. (citing Ex.
`1003 ¶¶ 167, 173). Petitioner also argues that one of ordinary skill in the art
`would have found it obvious to modify the system of Polozola and its
`permanent association of identification information with associating the
`identification information at the time of registration when the wearer arrives
`at the custodial facility, as taught by Csabai. Id. at 28–29 (citing Ex. 1003
`¶¶ 168–169, 174–175).
`Petitioner contends that it would have been obvious to a person of
`ordinary skill in the art to combine the teachings of Polozola and Csabai,
`because such a combination merely would have used a known technique to
`improve similar devices and methods in the same way. Pet. 11–12 (citing
`Ex. 1003 ¶ 31). According to Petitioner, Polozola and Csabai would have
`been combined because both references relate to access control restrictions
`for prisoners in controlled facilities. Id. at 29 (citing Ex. 1005, Abst.; Ex.
`
`20
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`1007, 1:3–5; Ex. 1003 ¶ 174). Petitioner argues that a person of ordinary
`skill in the art would have been motivated to combine Polozola and Csabai
`to associate a prisoner’s unique identification when the prisoner arrives at
`the prison to ensure that the restrictions are properly applied during the
`prisoner’s entire time at the prison (see Ex. 1003 ¶¶ 168, 174), and that such
`modification would have been well within the grasp of a person of ordinary
`skill in the art without the need for undue experimentation (see Ex. 1003 ¶¶
`169, 175). Pet. 29–30.
`Patent Owner contests Petitioner’s position, contending that claims 3
`and 13 are patentable for the same reasons claims 1 and 11 are patentable
`and that Csabai fails to remedy the flaws that Patent Owner finds in
`Polozola. Prelim. Resp. 23–24.
`Despite Patent Owner’s arguments, at this stage of the proceeding, we
`are persuaded by Petitioner that Polozola and Csabai at least suggest that the
`unique identification information from claims 1 and 11 would be
`permanently associated with the corresponding wearer at the time the wearer
`arrives at the custodial facility as required by claims 3 and 13. See Pet. 26–
`29. We credit the testimony of Petitioner’s Declarant, Dr. Caloyannides,
`st
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