Trials@uspto.gov
`571-272-7822
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` Paper 57
`Entered: June 26, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TWILIO INC.,
`Petitioner,
`
`v.
`
`TELESIGN CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-00360
`Patent 7,945,034 B2
`____________
`
`
`Before SALLY C. MEDLEY, JUSTIN T. ARBES, and
`KIMBERLY McGRAW, Administrative Patent Judges.
`
`McGRAW, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C § 318 and 37 C.F.R. § 42.73
`
`I. INTRODUCTION
`Petitioner, Twilio Inc., filed a Petition requesting an inter partes
`review of claims 1–4, 6, 7, 9, and 11–14 of U.S. Patent No. 7,945,034 B2
`(Ex. 1001, “the ’034 patent”), which was supported by the declaration of
`Michael Shamos, Ph.D. (Ex. 1002). Paper 2. Following a Motion to Correct
`the Petition, which was granted, Petitioner filed a Corrected Petition. Paper
`11 (“Corrected Pet.”). Patent Owner, TeleSign Corporation, filed a
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`Preliminary Response. Paper 10 (“Prelim. Resp.”). On June 28, 2016, we
`instituted an inter partes review of claims 1–4, 6, 7, 9, and 11–14. Paper 18
`(“Dec. on Inst.”).
`After institution, Patent Owner filed a Patent Owner Response (Paper
`27, “PO Resp.”) and a Contingent Motion to Amend (Paper 28, “Mot. to
`Amend”), both supported by the declaration of Seth Nielson, Ph.D. (Ex.
`2027).
`Petitioner filed a Reply (Paper 45, “Reply”) and an Opposition to
`Patent Owner’s Contingent Motion to Amend (Paper 38), supported by a
`declaration of David H. Williams (Ex. 1039). Patent Owner filed a Reply to
`Petitioner’s Opposition to Patent Owner’s Contingent Motion to Amend.
`(Paper 45).
`Objections to Evidence were filed by both Petitioner (Papers 29, 46)
`and Patent Owner (Papers 21, 39, 40). Transcripts of the depositions of Dr.
`Shamos (Ex. 2025), Dr. Nielson (Ex. 1040), and Mr. Williams (Ex. 2036)
`also were filed. Patent Owner filed a Motion for Observation on the cross-
`examination testimony of Mr. Williams. Paper 49. Petitioner filed an
`Opposition to Patent Owner’s Motion for Observation. Paper 51. Patent
`Owner also filed a Motion to Exclude certain evidence (Paper 50), to which
`Petitioner filed an Opposition (Paper 52), and Patent Owner filed a Reply
`(Paper 53).
`An oral hearing was held on March 27, 2017, and a transcript of the
`hearing has been entered into the record of the proceeding as Paper 56.
`We have jurisdiction under 35 U.S.C. § 6. 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 failed to show
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`by a preponderance of the evidence that claims 1–4, 6, 7, 9, and 11–14 are
`unpatentable. We also dismiss Patent Owner’s Motion to Exclude and
`Patent Owner’s Contingent Motion to Amend as moot.
`II. BACKGROUND
`A. Related Proceedings
`The parties state that the ’034 patent is asserted in TeleSign Corp. v.
`Twilio Inc., No. 2:15-cv-03240, filed on April 30, 2015, currently pending in
`the United States District Court for the Central District of California.
`Corrected Pet. 2, 10; Prelim. Resp. 3.
`Patent Owner states that copending petitions for inter partes review in
`IPR2016-00450, involving U.S. Patent No. 8,462,920 B2, and IPR2016-
`00451, involving U.S. Patent No. 8,687,038 B2, also filed by Petitioner,
`identified this proceeding as a related matter. Prelim. Resp. 3. The Board
`did not institute review in these cases. Petitioner also challenged related
`U.S. Patent No. 9,300,792 B2 in Case CBM2016-00099, in which the Board
`denied institution of a covered business method patent review, and
`Case IPR2016-01688, which is pending.
`
`B. The ’034 Patent (Ex. 1001)
`
`The ’034 patent, titled “Process for Determining Characteristics of a
`Telephone Number,” issued on May 17, 2011, based on U.S. Patent
`Application No. 11/163,788, filed on October 31, 2005, which claims
`priority as a continuation-in-part-application to U.S. Patent Application No.
`11/034,421, filed on January 11, 2005. Ex. 1001, [21], [22], [45], [54], [63].
`The ’034 patent is directed to methods of using a telephone connection to
`prevent fraudulent users from registering on an online website. Id., Abstract,
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`1:7–11. One method includes, inter alia, registering a user for an online
`website by receiving a telephone number; electronically determining the
`type of phone, phone carrier, and geographic characteristics associated with
`the telephone number; communicating a verification message with the
`telephone number; and registering the user based on the type of phone,
`phone carrier, and geographic characteristics associated with the telephone
`number and the verification message. Id. at 2:6–3:3, 10:35–50.
`The ’034 patent explains that one problem with on-line registration is
`that fraudulent users may provide fake names, addresses, or phone numbers.
`Id. at 1:34–38. In order to verify the telephone number entered by the user
`during registration, the system can call the telephone number and provide a
`registration code to the user. Id. at 3:65–4:25. If the telephone number is
`valid and the user has access to the telephone number, the user is able to
`enter the registration code into the online registration form and complete the
`registration process. Id.
`However, the ’034 patent states that because certain telephones are
`not necessarily restricted to a particular geographic location (e.g., voice over
`internet protocol (“VOIP”) phones or mobile phones), this verification
`process may not be enough to prevent fraudulent users who enter a false
`name or address from accessing a website. Id. at 1:39–63, 7:17–24, 8:40–
`44. For example, VOIP technology allows a person to have a “310” area
`code telephone number (traditionally associated with telephones in Los
`Angeles) but actually be located in Nigeria, where many fraudulent schemes
`are alleged to occur. Id. at 1:54–61, 7:20–24. Use of such a phone could
`enable a potential defrauder, who is located in a foreign country, to provide a
`valid telephone number along with a United States address that appears to
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`correspond with the user’s telephone number, but which in fact is a false
`address. Id. at 7:17–41.
`The ’034 patent explains that knowing certain characteristics of the
`user’s telephone number can help determine if the registration information
`provided by the user is fraudulent. See, e.g., id. at 1:61–2:2, 2:11–14, 7:38–
`41, 9:14–16, 9:23–25, 9:42–49. These characteristics include the phone
`type, phone carrier, and geographic characteristics, as well as other phone
`characteristics, such as prepaid cellular phones that do not require any form
`of identification, phone numbers set to automatically forward, and Direct
`Inward Dialing (DID) numbers. Id. at 2:6–14, 8:55–59, 10:39–41.
`Examples of phone types include landline telephones, cellular phones, and
`VOIP phones. Id. at 2:15–18. Examples of phone carriers include Verizon,
`SBC, and Vonage. Id. at 8:17–20. Examples of geographic characteristics
`include the time zone, country, county, city, zip code, and metro area. Id. at
`2:18–21.
`The ’034 patent describes various ways to determine phone
`characteristics. Id. at 3:37–40, Figs. 8–10. For example, in one
`embodiment, a database is queried to determine if the telephone number is
`within the database, and what characteristics are associated with the
`telephone number. Id. at 2:29–34. A “database may comprise one or more
`third party databases,” or the database can be “compiled with telephone
`number characteristics as they are determined.” Id. at 7:55–57. “If the
`database contains the exact telephone number, or certain numbers in
`common with the received telephone number, the database will be able to
`provide certain characteristics of the telephone number,” such as phone type,
`phone carrier, and geographic characteristics. Id. at 8:1–4, 8:17–20, 8:38–
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`40. For example, analyzing the telephone number can assist in determining
`whether the phone associated with the number is wireless, a landline, VOIP,
`toll-free, restricted, or an unknown phone type. Id. at 8:4–8. The database
`can be electronically queried as to whether the type of phone is already in
`the database for a particular telephone number. Id. at 8:9–11. If it is not, the
`first three digits of the telephone number can be examined to determine if
`the number is toll-free or restricted. Id. at 8:11–13.
`The carrier or the phone company of the telephone number also can be
`determined by analyzing the ten digits of the telephone number. Id. at 8:17–
`20. “[I]f the first three digits of the telephone number do not match a toll-
`free or restricted number, the carrier digits are compared to the received
`telephone number to match a carrier to the telephone number.” Id. at 8:20–
`23. For example, if the carrier level is “Level 3,” the phone number is
`determined to be a VOIP number granted by XO Communications or Global
`Crossing. Id. at 8:23–28. “Analyzing the ten digits of the telephone number
`can also indicate the country, time zone, state, city, county, zip code, or
`metro area of the telephone number.” Id. at 8:38–40.
`After the phone characteristics have been determined, a determination
`may be made how to use this data, such as granting or denying a potential
`registrant or user access to a website. Id. at 9:8–12, 9:26–29, Fig. 9. For
`example, the ’034 patent states that various phone characteristics can be
`“weighed” to determine if the user may be fraudulent. Id. at 8:40–44. The
`’034 patent explains that although the ten digits of the telephone number
`may indicate whether geographic characteristics associated with the
`telephone number (e.g., the country, time zone, state, and city) are valid, the
`system will balance or weigh this information with other characteristics of
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`the telephone number that are not necessarily restricted to a particular
`geographic location, such as whether the phone is a landline or cell phone or
`whether the phone number is a VOIP telephone number. Id. at 8:37–44.
`The ’034 patent also explains that distinctions can be made between fixed
`VOIP numbers, such as those numbers that are assigned through a cable
`provider, and equipment-based VOIP numbers, which require particular
`equipment in order to receive the phone call, such as those offered by phone
`carriers Lingo or Vonage. Id. at 8:50–55. In other examples, users may be
`blocked from the website if they are not using a landline, if they are from
`certain geographic regions, or if the information provided by the user is not
`consistent with information in the database. Id. at 9:14–25, 9:36–49.
`
`C. Claims
`
`Petitioner challenges independent claim 1 and dependent claims 2–4,
`6, 7, 9, and 11–14, which depend directly or indirectly from claim 1. Claim
`1, with bracketed material added,1 is reproduced below:
`1.
`A process for telephonically registering a user over
`one or more communication networks through determining
`characteristics of a telephone number, comprising the steps of:
`[a] receiving a telephone number;
`[b] electronically determining the type of phone, the phone
`carrier and geographic characteristics associated with the
`telephone number;
`[c] connecting to a telephone associated with the telephone
`number through at least one of the communication networks;
`
`
`1 Although the bracketed material is not present in the text of claim 1, for
`clarity and consistency, this Decision will use the bracketed nomenclature as
`utilized by both Petitioner and Patent Owner.
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`[d] communicating a verification message with the
`telephone over at least one of the communication networks; and
`[e] registering the user through at least one of the
`communication networks based on the type of phone, the phone
`carrier, the geographic characteristics associated with the
`telephone number and the verification message.
`D. Grounds of Unpatentability at Issue
`We instituted inter partes review of claims 1–4, 6, 7, 9, and 11–14 as
`unpatentable under 35 U.S.C. § 103 over (1) Nguyen,2 (2) Nguyen and De
`Petris,3 and (3) Nguyen, De Petris, and Singhal.4 Dec. on Inst. 24.
`III. ANALYSIS
`A. Level of Ordinary Skill in the Art
`“Section 103(a) forbids issuance of a patent when ‘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) (quoting 35 U.S.C. § 103(a)).
`Petitioner argues that a person of ordinary skill in the art at the time of
`the ’034 patent would have had “at least an undergraduate degree in
`computer science, or equivalent experience, and in addition would be
`familiar with Internet communications and accessing databases.” Corrected
`
`
`2 Nguyen (US 7,577,847 B2, filed Nov. 3, 2004, issued Aug. 18, 2009)
`(Ex. 1003).
`3 De Petris (US 2004/0219904 A1, filed Apr. 6, 2004, pub. Nov. 4, 2004)
`(Ex. 1005).
`4 Singhal (US 2004/0203595 A1, filed Aug. 12, 2002, pub. Oct. 14, 2004)
`(Ex. 1006).
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`Pet. 9–10. Patent Owner does not dispute Petitioner’s assessment. PO Resp.
`10–11. Based on the current record, including our review of the ’034 patent
`and the types of problems and solutions described in the ’034 patent and
`cited prior art, we agree with Petitioner’s assessment of the level of ordinary
`skill in the art and apply it for purposes of this Decision.
`B. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`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). Under the broadest
`reasonable construction 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. See In re
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special
`definition for a claim term must be set forth with reasonable clarity,
`deliberateness, and precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed.
`Cir. 1994). We determine that only the registering step of claim element
`1[e] requires explicit construction and only to the extent necessary to resolve
`the controversy. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d
`1355, 1361 (Fed. Cir. 2011) (noting that claim terms need only be construed
`to the extent necessary to resolve the controversy).
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`“[e] registering the user through at least one of the
`communication networks based on the type of phone, the phone
`carrier, the geographic characteristics associated with the
`telephone number and the verification message”
`
`With respect to the “registering the user” phrase in claim element 1[e],
`we note that the parties appear to agree that the phrase means “storing user-
`specific data.” See Corrected Pet. 22; PO Resp. 14. For the purposes of this
`Decision, we adopt the parties’ construction and construe “registering the
`user” to mean “storing user-specific data.”
`With respect to the “phone carrier” phrase, prior to institution, the
`parties disputed the construction of “phone carrier . . . associated with the
`telephone number” as recited in claim elements 1[b] and 1[e]. See, e.g.,
`Corrected Pet. 28; Prelim. Resp. 13–17. In the Decision on Institution, we
`interpreted “phone carrier . . . associated with the telephone number” as
`encompassing both the phone carrier that is the contracting carrier as well as
`a phone carrier that routes a telephone call for a telephone number. Dec. on
`Inst. 8. As our construction of the “based on” phrase in claim 1 is outcome-
`determinative, for the reasons explained herein, we need not readdress our
`construction of “phone carrier.”
`With respect to the “based on” phrase, neither the Corrected Petition
`nor Patent Owner’s Preliminary Response provided an explicit construction
`of registering the user “based on” phone characteristics (i.e., the type of
`phone, the phone carrier, and the geographic characteristics associated with
`the telephone number) and the verification message as recited in claim
`element 1[e]. See Corrected Pet. 10–11 (stating claim terms are construed to
`have their plain and ordinary meaning); Prelim. Resp. 21–25 (stating
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`registering step of claim element 1[e] is distinct from the “electronically
`determining” step of claim element 1[b]). In our Decision on Institution, we
`determined that, other than the construction of “phone carrier . . . associated
`with the telephone number,” an express construction of the registering step
`of claim element 1[e] was not necessary. Dec. on Inst. 6–10.
`In its Response, Patent Owner again reiterates that the registering step
`of claim element 1[e] is distinct from the determining step of claim element
`1[b]. See, e.g., PO Resp. 13–14. Patent Owner also argues that the broadest
`reasonable interpretation of “registering the user . . . based on [the recited
`items]” is “using the [recited items] as criteria or factors when storing user-
`specific data.” Id. at 37 (bracketed material in original).
`Petitioner then submitted, for the first time in its Reply, a proposed
`interpretation for the “based on” language. Specifically, Petitioner argues
`that the broadest reasonable interpretation “of ‘based on’ should encompass
`the ordinary meaning as a starting point for registration–which encompasses
`both directly and indirectly using [the telephone number’s] carrier in
`registration” (Reply 21) and that “[r]egistering ‘based on’ a characteristic
`means that the characteristic can be either a direct or indirect input into the
`registration process” (id. at 20). See also id. at 19 (stating the broadest
`reasonable interpretation of “‘based on’ encompasses using an input as
`either a direct or indirect input into the registration decision because both
`input types are a starting point”). Petitioner contends that the definition of
`“based” is “to form or make a base for, to find a basis for; establish” and that
`“[b]ase” is also defined as “anything from which a start is made, basis.” Id.
`(citing Ex. 1002 ¶ 141; Ex. 1043, 4).
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`Based on the record before us, we conclude that Petitioner’s
`interpretation of the “registering . . . based on” language in claim 1 is an
`overly broad construction that is not reasonable in light of the Specification.
`Instead, we agree with Patent Owner and interpret the phrase “registering the
`user . . . based on the type of phone, the phone carrier, [and] the geographic
`characteristics associated with the telephone number” as recited in claim
`element 1[e] to mean using the recited items (i.e., phone type, phone carrier,
`and geographic characteristics) as criteria or factors when storing user-
`specific data. Under this construction, the phone carrier is one of the criteria
`or factors that are used when storing user-specific data.
`As an initial matter, we agree with Patent Owner that “registering the
`user . . . based on” the phone characteristics as recited in claim element 1[e]
`is not satisfied by merely determining those characteristics. See, e.g., PO
`Resp. 14–15. The claim language itself recites the determining step as claim
`element 1[b] and the registering step as claim element 1[e]. Thus,
`registering the user based on the phone carrier (step 1[e]) cannot be satisfied
`by merely determining the phone carrier (step 1[b]), as Petitioner’s proposed
`interpretation would appear to permit. Where a claim lists elements
`separately, the clear implication of the claim language is that those elements
`are distinct components of the patented invention. See, e.g., CAE
`Screenplates Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308,
`1317 (Fed. Cir. 2000) (stating that absent evidence to the contrary, “we must
`presume that the use of these different terms in the claims connotes different
`meanings”).
`Our construction that each of the phone characteristics recited in claim
`element 1[e] be used as a criterion or factor when storing user-specific data
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`is supported by the plain meaning of the phrase as understood by one of
`ordinary skill in the art in light of the Specification. We agree with Patent
`Owner’s declarant, Dr. Nielson, who testified that “based on” is used in the
`Specification of the ’034 patent the same way it is used in common parlance,
`namely that “based on” means “in view of,” “considering,” or “using.”
`Ex. 2027 ¶ 7.8. As Dr. Nielson explained, an ordinarily skilled artisan
`would appreciate that the Specification and claims of the ’034 patent
`indicate that “registering ‘based on’ the recited items (phone type, phone
`carrier, geographic characteristics, and the verification message) means in
`view of, or using, those recited items as criteria or factors when storing
`user-specific data.” Id. ¶ 7.9. “These items affect or influence the
`‘registering’ step” of claim element 1[e]. Id. This reading is consistent with
`the dictionary definition of “based” submitted by Petitioner: “To find a
`basis for; establish: based her conclusions on the report.” Ex. 1023, 3.5
`Petitioner’s newly proposed interpretation, which would permit a
`characteristic to be merely an “input” into a process, rather than a criterion
`or factor when registering the user, is an unreasonably broad reading of the
`“based on” claim language. As Patent Owner points out, “[m]erely
`determining something during a process does not mean a related decision
`was based on the thing determined.” PO Resp. 15. “For example, a
`prospective employer might determine an applicant’s eye color or hair color
`
`
`5 We are not persuaded by Petitioner’s arguments regarding the dictionary
`definitions of “base,” as the terminology of the claim is “based on,” not
`“base.” See Reply 19.
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`during a hiring process, but that does not mean a proper hiring decision
`would be based on those characteristics.” Id.
`Our construction that each of the phone characteristics recited in claim
`element 1[e] be used as a criterion or factor when storing user-specific data
`also is supported by the ’034 patent Specification. The Specification states
`that “the present invention is directed to determining the characteristics of
`telephone numbers to assist in making a determination whether the
`telephone number owner is a potential defrauder.” Ex. 1001, 7:37–41
`(emphasis added). The Specification explains that there is a need “to obtain
`information and characteristics of the telephone number to determine if the
`information provided [by the user] is fraudulent.” Id. at 1:66–2:1. The
`telephone characteristics can be “used” to determine whether or not to
`register a user or grant a user access to a website. Id. at 2:44–53. For
`example, the ’034 patent states that various “characteristics of the telephone
`number are determined. If the telephone number is of a type which is
`restricted, or if it is suspected that the telephone number is fraudulent, access
`to the website or system is denied.” Id. at 2:58–60. Importantly, in the
`paragraphs immediately preceding this disclosure, the Specification
`discloses what those “characteristics” are: “the type of phone associated
`with the phone number, the phone carrier of the phone number, and the
`geographic characteristics of the phone number.” Id. at 2:11–14. It is these
`characteristics that are used to determine whether to register the user.
`In another example, the Specification states that the determined phone
`characteristics can be compared with previously provided verification
`information and if the information provided by the registrant is not
`consistent with the previously stored information, the user can be flagged as
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`potentially fraudulent. Id. at 9:46–49. In another example, users who are
`not using landline telephone lines may be blocked. Id. at 9:14–16. In
`another example, the Specification states that certain phone characteristics
`can be used during the registration process to identify risks of fraudulent
`activity. Id. at 1:51–61. In each of these examples, the phone characteristics
`themselves are used to determine whether to register the user. See PO Resp.
`39 (“The entire point of determining the phone-number characteristics in the
`’034 patent is to consider them when registering to help detect fraud. User
`information is stored differently based on the recited characteristics, for
`example, some are not flagged as fraudulent, some are.”).
`In its Reply, Petitioner argues that because the “[S]pecification never
`describes using ‘carrier’ directly in the registration process” and “never
`limits ‘carrier’ to being a direct input into the registration process,” the claim
`must be construed as encompassing “indirect” inputs.6 Reply 21. To
`support this argument, Petitioner asserts that the Specification describes
`using the phone carrier identity as a “starting point” to determine that a call
`within the Los Angeles area code originated from a VOIP phone. Id. at 20
`(citing Ex. 1001, 8:1–597). Petitioner contends that in this example, carrier
`
`
`6 The Specification does not use the term “input”—“direct,” “indirect,” or
`otherwise—when referring to registering the user.
`7 The Specification states that “[t]he carrier [can] be determined given the
`ten digits, and the received telephone number can be analyzed to determine
`the carrier . . . . [I]f the first three digits do not match a toll-free or restricted
`number, the carrier digits are compared to the received telephone number to
`match a carrier to the telephone number. For example, if the carrier level is
`3, . . . the phone number is determined to be a VOIP number . . . granted,
`currently, by XO CommunicationsTM or Global CrossingTM.” Ex. 1001,
`8:17–28.
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`identity is not a “direct” input, but rather a “starting point” to determine
`geographic characteristics. Id. Petitioner further argues that “geographic
`characteristic is the only direct input into the registration process.” Id.
`This argument is not persuasive, as there is no requirement that a
`patent must provide examples of every embodiment encompassed by the
`claim. Moreover, we disagree with Petitioner that the ’034 patent does not
`disclose using the phone carrier in the registration process. The
`Specification states that the phone “characteristics” (which it defines as the
`phone type, phone carrier, and geographic characteristics) are “determined”
`and then “used” in making a decision to register the user. Ex. 1001, 2:11–
`14, 2:44–46, 8:45–59 (explaining how “distinctions can be made between
`different types of telephone numbers” to determine whether to register a
`user), 9:26–49. As noted above, the Specification further states that the
`geographic characteristics of the telephone number (determined by
`analyzing the ten digit phone number) are “weighed” with other
`characteristics, including the phone type and whether the telephone number
`is not necessarily restricted to a particular geographic location. Id. at 8:38–
`44.
`
`Moreover, Petitioner’s argument that the broadest reasonable
`interpretation of “based on” should encompass “indirect” inputs that are a
`“starting point” necessary to completing the registration process is belied by
`the deposition testimony of Petitioner’s own declarant, Dr. Shamos. See
`Reply 21. During his deposition, Dr. Shamos disagreed that registration is
`“based on” something merely because that thing is necessary or “required”
`to the registration process. Ex. 2025, 51:21–52:4. Dr. Shamos stated that
`even though some steps may be “necessary” to a registration process, it is
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`not “logically correct” to say that registration is based on those steps. Id.
`For example, even if electric power to a gaming server is required in order
`for the gaming server to make the decision whether or not to register the
`user, the user is not registered “based on” electrical power. Id. Thus,
`Petitioner’s own declarant disagrees with Petitioner’s argument that “based
`on” includes anything from which a start is made or anything which is a first
`and “necessary” step to registering a user. See, e.g., Reply 19–21.
`Finally, we note that Petitioner’s proposed interpretation, which
`would allow a characteristic to be merely an “indirect” input into the
`registration process, is impermissibly vague. The Specification of the
`’034 patent does not refer to “direct” or “indirect” inputs, and Petitioner does
`not explain sufficiently what it means to be an “indirect” input such that we
`could determine the exact scope of its proposed interpretation. See, e.g.,
`Paper 56, 7:20–8:24, 18:16–20:16, 30:23–31:10. For that reason as well, we
`are not persuaded that Petitioner’s proposal is the broadest reasonable
`interpretation.
`Accordingly, based on the complete record before us, under the
`broadest reasonable interpretation consistent with the Specification of the
`’034 patent, we construe “registering the user . . . based on the type of
`phone, the phone carrier, [and] the geographic characteristics associated with
`the telephone number” to mean using the recited items (i.e., phone type,
`phone carrier, and geographic characteristics) as criteria or factors when
`storing user-specific data.
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`C. Priority Date of the ’034 Patent
`
`Petitioner asserts that the ’034 patent is not entitled to claim priority
`back to the January 11, 2005 filing date of parent U.S. Patent Application
`No. 11/034,421, to which the ’034 patent claims priority as a continuation-
`in-part application. Corrected Pet. 7–9. However, as each of the asserted
`references was filed before the October 31, 2005 filing date of the
`application that gave rise to the ’034 patent, each of the asserted references
`is prior art to the ’034 patent regardless of whether or not the ’034 patent is
`entitled to claim priority to the January 11, 2005 date. As such, we need not,
`and do not, reach this issue.
`
`D. Asserted Obviousness of Claims 1–4, 6, 7, 9, and 11–14 over Nguyen
`
`Petitioner contends claims 1–4, 6, 7, 9, and 11–14 are unpatentable
`under 35 U.S.C. § 103 over Nguyen. Corrected Pet. 21–57. To support its
`contentions, Petitioner provides explanations as to how the prior art
`allegedly teaches each claim limitation and also relies on the Declaration of
`Dr. Shamos (Ex. 1002). Patent Owner opposes. For the reasons set forth
`below, we determine that Petitioner has not shown by a preponderance of the
`evidence that claims 1–4, 6, 7, 9, and 11–14 are unpatentable under 35
`U.S.C. § 103 over Nguyen.
`Obviousness under 35 U.S.C. § 103 requires an assessment of (1) the
`“level of ordinary skill in the pertinent art,” (2) the “scope and content of the
`prior art,” (3) the “differences between the prior art and the claims at issue,”
`and (4) “secondary considerations” of nonobviousness, such as “commercial
`success, long-felt but unsolved needs, failure of others, etc.” KSR, 550 U.S.
`at 406 (quoting Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966)). A
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`party who petitions the Board for a determination of obviousness must show
`that “‘a skilled artisan would have been motivated to combine the teachings
`of the prior art references to achieve the claimed invention, and that the
`skilled artisan would have had a reasonable expectation of success in doing
`so.’” Procter & Ga