UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`SECURUS TECHNOLOGIES, INC.
`Petitioner
`
`v.
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`GLOBAL TEL*LINK CORPORATION
`Patent Owner
`
`
`
`Case IPR2017-00758
`U.S. Patent No. 8,515,031
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,515,031
`PURSUANT TO 35 U.S.C. §§ 321-328 and 37 C.F.R. § 42.200, ET SEQ.
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`TABLE OF CONTENTS
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`
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`I.
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`MANDATORY NOTICES (37 C.F.R. § 42.8) ............................................... 1
`
`A.
`B.
`C.
`
`Real Party-In-Interest (37 C.F.R. § 42.8(b)(1)) .................................... 1
`Related Matters (37 C.F.R. § 42.8(b)(2)) .............................................. 1
`Counsel and Service Information (37 C.F.R. §§ 42.8(b)(3-4)) ............. 1
`
`II.
`
`INTER PARTES REVIEW PETITION REQUIREMENTS ........................... 2
`
`A.
`B.
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`Payment of Fees (37 C.F.R. § 42.103) .................................................. 2
`Grounds for Standing (37 C.F.R. § 42.104(a)) ..................................... 2
`
`III.
`
`(37 C.F.R. § 42.104(b)) AND
`IDENTIFICATION OF CHALLENGE
`RELIEF REQUESTED (37 C.F.R. § 42.22(a)(1)) .......................................... 3
`
`A.
`B.
`
`Citation to Prior Art ............................................................................... 3
`Challenged Claims and Grounds for Unpatentability ........................... 4
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`IV.
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`Introduction ...................................................................................................... 5
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`V. OVERVIEW OF The ’031 Patent ................................................................... 6
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`VI. Claim Construction .......................................................................................... 9
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`VII. Summary of Prior Art ....................................................................................10
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`A. Overview of Falcone ...........................................................................10
`B.
`Overview of Hodge .............................................................................14
`C.
`Overview of Mow ...............................................................................15
`D. Overview of Cree ................................................................................15
`E.
`Overview of Bayne ..............................................................................16
`F.
`Overview of Bauer ..............................................................................18
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`VIII. Level of Ordinary Skill in the Art .................................................................19
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`IX. GROUNDS FOR UNPATENTABILITY .....................................................20
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`A. GROUND 1: Claims 1, 2, 7, 8, 11, 12, 17, and 18 Are Obvious Over
`Falcone and Hodge. .............................................................................20
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`1.
`
`2.
`3.
`4.
`5.
`6.
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`The Combination of Falcone and Hodge Renders Claim 1 of the
`’031 Patent Obvious to a Person of Ordinary Skill. .................20
`Falcone in View of Hodge Renders Claim 11 Obvious. ..........36
`Falcone in View of Hodge Renders Claim 2 Obvious. ............39
`Falcone in View of Hodge Renders Claim 7 Obvious. ............42
`Falcone in View of Hodge Renders Claim 8 Obvious. ............43
`Falcone in View of Hodge Renders Claim 12 Obvious. ..........43
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`ii
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`7.
`8.
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`Falcone in View of Hodge Renders Claim 17 Obvious. ..........45
`Falcone in View of Hodge Renders Claim 18 Obvious. ..........46
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`B.
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`GROUND 2: Claims 3-6, 9-10, and 13-16, and 19-20 Are Obvious
`over Falcone, Hodge, Mow, Cree, Bayne and Bauer. .........................47
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`1.
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`2.
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`3.
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`4.
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`5.
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`6.
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`7.
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`8.
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`9.
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`10.
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`11.
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`12.
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`Falcone and Hodge in View of Mow, Cree, and Bayne Render
`Claim 3 Obvious. ......................................................................47
`Falcone and Hodge in View of Mow, Cree, Bayne, and Bauer
`Render Claim 4 Obvious. ..........................................................52
`Falcone and Hodge in View of Mow, Cree, Bayne, and Bauer
`Render Claim 5 Obvious. ..........................................................58
`Falcone and Hodge in View of Mow, Cree, Bayne, and Bauer
`Render Claim 6 Obvious. ..........................................................60
`Falcone and Hodge in View of Mow, Cree, Bayne, and Bauer
`Render Claim 9 Obvious. ..........................................................61
`Falcone and Hodge in View of Mow, Cree, Bayne, and Bauer
`Render Claim 10 Obvious. ........................................................62
`Falcone and Hodge in View of Mow, Cree, and Bayne Render
`Claim 13 Obvious. ....................................................................63
`Falcone and Hodge in View of Mow, Cree, Bayne, and Bauer
`Render Claim 14 Obvious. ........................................................65
`Falcone and Hodge in View of Mow, Cree, Bayne, and Bauer
`Render Claim 15 Obvious . .......................................................67
`Falcone and Hodge in View of Mow, Cree, Bayne, and Bauer
`Render Claim 16 Obvious. ........................................................69
`Falcone and Hodge in View of Mow, Cree, Bayne, and Bauer
`Render Claim 19 Obvious. ........................................................70
`Falcone and Hodge in View of Mow, Cree, Bayne, and Bauer
`Render Claim 20 Obvious. ........................................................70
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`C.
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`Rationales for Obviousness .................................................................71
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`X.
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`CONCLUSION ..............................................................................................75
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`iii
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`LISTING OF EXHIBITS
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`Exhibit 1001 U.S. Patent No. 8,515,031 to Hodge et al. (the “’031 patent”)
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`Exhibit 1002 Prosecution History of U.S. Patent No. 8,515,031 (“Prosecution
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`History”)
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`Exhibit 1003 Declaration
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`of
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`expert
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`Benedict
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`J.
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`Occhiogrosso
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`(“Occhiogrosso Decl.”)
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`Exhibit 1004 U.S. Patent No. 7,561,680 to Falcone et al. (“Falcone”) titled
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`“System and Method for Called Party Controlled Message Delivery”
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`Exhibit 1005 U.S. Patent Application Pub. No. 2004/0029564 Al to Hodge
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`(“Hodge”)
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`titled “Telecommunication Call Management and
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`Monitoring System”
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`Exhibit 1006 U.S. Patent No. 6,668,045 to Mow (“Mow”) titled “Message
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`Screening, Delivery and Billing System”
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`Exhibit 1007 U.S. Patent No. 6,665,380 Cree et al. (“Cree”) titled “Inmate
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`Messaging System and Method”
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`Exhibit 1008 U.S. Patent Application Pub. No. 2003/0198325 A1 to Bayne
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`(“Bayne”) titled “Pre-paid Calling and Voice Messaging Services for
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`Inmates”
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`Exhibit 1009 U.S. Patent Application Pub. No. 2004/0120475 A1 to Bauer et al.
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`(“Bauer”) titled “Method and Apparatus for Receiving a Message on
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`a Prepaid Card or Calling Card”
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`iv
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`Pursuant
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`to 35 U.S.C. §§ 311-319 and 37 C.F.R. Part 42, Securus
`
`Technologies, Inc. (“Securus”) respectfully requests institution of inter partes
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`review and cancellation of claims 1-20 of the ’031 patent titled “Voice Message
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`Exchange.” According to U.S. Patent and Trademark Office assignment records, the
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`’031 patent is owned by Global Tel*Link Corporation (“GTL”).
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`I. MANDATORY NOTICES (37 C.F.R. § 42.8)
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`A. Real Party-In-Interest (37 C.F.R. § 42.8(b)(1))
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`Securus is the real party-in-interest for this Petition.
`
`B. Related Matters (37 C.F.R. § 42.8(b)(2))
`
`The ’031 patent has pending related applications U.S. App. 14/626,781, U.S.
`
`App. 14/626,804, and U.S. App. 14/946,361. The ’031 patent is currently the subject
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`of a claim of patent infringement brought by the assignee of the ’031 patent, Global
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`Tel*Link Corporation against Petitioner, captioned Securus Techs., Inc. v. Global
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`Tel*Link Corp., U.S. District Court for the Northern District of Texas, Case
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`No. 3:16-cv-01338.
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`C. Counsel and Service Information (37 C.F.R. §§ 42.8(b)(3-4))
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`Securus designates the following counsel at the addresses shown below and
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`consents to electronic service at the email addresses below including a courtesy copy
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`to SecurusIPRCounsel@bcpc-law.com.
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`Lead Counsel:
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`
`
`Justin B. Kimble (Reg. No. 58,591)
`Phone: 214.785.6673
`Email: jkimble@bcpc-law.com
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`1
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`Back-Up Counsel:
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`
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`Jeffrey R. Bragalone (pro hac vice motion to be filed)
`Phone: 214.785.6671
`Email: jbragalone@bcpc-law.com
`
`Daniel F. Olejko (pro hac vice motion to be filed)
`Phone: 214.785.6675
`Email: dolejko@bcpc-law.com
`
`Nicholas C. Kliewer (Reg. No. 72,480)
`Phone: 214.785.6686
`Email: nkliewer@bcpc-law.com
`
`Brian P. Herrmann (Reg. No. 63,145)
`Phone: 214.785.6692
`Email: bherrmann@bcpc-law.com
`
`Bragalone Conroy PC
`2200 Ross Ave., Suite 4500W
`Dallas, TX 75201
`Fax: 214.786.6680
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`A power of attorney designating counsel pursuant to 37 C.F.R. § 42.10(b) is
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`filed with this Petition. Petitioner requests authorization to file a motion for Back-Up
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`Counsel to appear pro hac vice.
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`II.
`
`INTER PARTES REVIEW PETITION REQUIREMENTS
`
`A.
`
`Payment of Fees (37 C.F.R. § 42.103)
`
`Payment for the fees set forth in 37 C.F.R. § 42.15(a) for this Petition
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`accompanies this request.
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`B. Grounds for Standing (37 C.F.R. § 42.104(a))
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`Securus certifies that the ’031 patent is available for review and that Securus
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`is not barred or estopped from requesting review of challenged claims 1-20 on the
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`2
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`grounds identified below.
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`III.
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`IDENTIFICATION OF CHALLENGE (37 C.F.R. § 42.104(B)) AND
`RELIEF REQUESTED (37 C.F.R. § 42.22(A)(1))
`
`Securus respectfully requests review and cancellation as unpatentable
`
`claims 1-20 of the ’031 patent based on the grounds of unpatentability listed below.
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`A. Citation to Prior Art
`
`Securus relies on the following prior art references for the grounds asserted in
`
`this Petition:
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`1. U.S. Patent No. 7,561,680 to Falcone, filed on August 13, 2003;
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`2. U.S. Patent Application Publication No. 2004/0029564 A1 to Hodge, filed on
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`August 8, 2003 and published on February 12, 2004;
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`3. U.S. Patent No. 6,668,045 to Mow, issued on January 9, 1996;
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`4. U.S. Patent No. 6,665,380 to Cree, issued on December 16, 2003;
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`5. U.S. Patent Application Publication No. 2003/0198325 A1 to Bayne,
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`published October 23, 2003; and
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`6. U.S. Patent Application Publication No. 2004/0120475 A1 to Bauer, filed on
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`April 15, 2003 and published on June 24, 2004.
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`Because Mow, Cree, and Bayne were each published over one year prior to
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`the effective filing date of the ’031 patent (January 28, 2005), these references
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`3
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`

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`
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`qualify as prior art at least under 35 U.S.C. § 102(b).1 Because Falcone, Hodge, and
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`Bauer have filing dates before January 28, 2005, Falcone, Hodge, and Bauer each
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`qualify as prior art at least under § 102(e). Additionally, Hodge and Bauer have
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`publication dates prior to January 28, 2005, and thus qualify as prior art at least under
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`§ 102(a).2
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`B. Challenged Claims and Grounds for Unpatentability
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`Claims 1-20 are challenged in this Petition under § 103 as obvious:
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`Ground Basis
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`References
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`Claims Challenged
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`1
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`2
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`§ 103
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`§ 103
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`Falcone and Hodge
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`Falcone, Hodge, Mow, Cree, Bayne,
`and Bauer
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`1, 2, 7, 8, 11-12,
`17-18
`3-6, 9-10, 13-16,
`19-20
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`As detailed below and in the Declaration of Benedict J. Occhiogrosso, these prior
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`art combinations show that the limitations of claims 1-20 of the ’031 patent were
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`well-known in the prior art and that the claims merely combine and apply methods
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`that were known to yield predictable results, substitute one known element for
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`another, or apply a known technique to prior art that is ready for the improvement.
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`1 Because the ’031 patent has an effective filing date before March 16, 2013, all
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`citations herein are based on the pre-AIA versions of 35 U.S.C. §§ 102 and 103.
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`2 Because Hodge and Bauer qualify as § 102(a) prior art, they cannot be disqualified
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`as prior art under § 103(c)(1).
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`4
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`

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`See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Such claims “obviously
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`withdraw[] what already is known into the field of its monopoly and diminish[]
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`resources available to skillful men,” which “is a principal reason for declining to
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`allow patents for what is obvious.” Id. These grounds demonstrate at least “a
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`reasonable likelihood that Petitioner would prevail with respect to at least one of the
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`claims challenged in the petition.” 35 U.S.C. § 314(a).
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`IV.
`
`INTRODUCTION
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`The ’031 patent is drawn to a method and apparatus allowing a resident (e.g.,
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`a prison inmate) to leave a message for a called party when a call attempt fails (e.g.,
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`the call is unanswered) and additionally allows the party who receives the message
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`to reply with a message back to the inmate. ’031 patent, Abstract. However, these
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`features were well-known in the prior art. Automatic redial using the concept of
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`“dialing based on periodic intervals” has been around since at least the 1990s.
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`Occhiogrosso Decl. ¶ 56. Additionally, as shown below, various methods of message
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`retrieval and optional billing have also been long well-known and are generally a
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`simple matter of design choice. Id.
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`As suggested in the prior art, the ’031 patent claims were born from design
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`incentives and market forces calling for an “increase [in] user satisfaction with the
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`calling services provided and [an] increase [in] the opportunity for collecting
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`revenues by the calling service provider.” Falcone, 6:45-49. The ’031 patent claims
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`5
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`simply and without any innovation or extraordinary skill combine old elements,
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`applying nothing more than the teachings of the prior art and common sense.
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`Occhiogrosso Decl. ¶ 168. Moreover, one of ordinary skill in the art would have
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`sought to combine the prior art because the combinations would result in a “more
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`efficient, more economical, and more desirable system.” Occhiogrosso Decl. ¶ 344.
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`V. OVERVIEW OF THE ’031 PATENT
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`The purported invention of the ’031 patent provides “a voice message
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`exchange system and method … between an inmate and a third party” that
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`“enable[es] the inmate to leave a message when a call is not answered.” ’031 patent,
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`Abstract. Additionally, the ’031 patent claims to “further allow[] the third party who
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`receives the message to reply with a message to the inmate.” Id., Abstract. The
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`putative invention also claims to “provide[] monitoring, controlling, recording, and
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`billing means.” Id.
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`Method claim 1 is representative:
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`1. A computer implemented method for regulating unanswered
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`phone calls placed by a registered user of a phone system serving a
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`secured premises, comprising:
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`[1A] verifying whether a unique access identifier provided by the
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`registered user of the phone system is authorized to place a
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`phone call to a destination associated with a phone number
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`entered by the registered user;
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`[1B] attempting to connect the phone call to an end user associated
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`6
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`with the authorized destination for the phone number entered
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`by the registered user;
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`[1C] recording a message provided by the registered user of the
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`phone system for the end user associated with the authorized
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`destination for the phone number entered by the registered user
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`when an attempt to connect the phone call to the end user fails;
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`[1D] storing the recorded message provided by the registered user
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`in a site server located within a telecom platform that supports
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`the secure premises;
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`[1E] dialing the phone number entered by the registered user based
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`on periodic intervals until the phone call is connected to the
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`end user;
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`[1F] playing the recorded message provided by the registered user
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`that is retrieved from the site server for the end user when the
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`phone call is connected to the end user; and
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`[1G] billing an account associated with the unique access identifier
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`provided by the registered user when the recorded message
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`provided by the registered user is played for the end user.
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`’031 patent, 14:56-15:16.
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`An embodiment of claim 1 is shown below in Figure 2, which discloses how
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`an inmate “leaves a voice message for an external party”:
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`7
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`’031 patent, Fig. 2 (annotated), 12:26-29.
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`At step 202, the identity of the inmate is authenticated “as is known in the
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`art.” Id., 12:29-31. Then at step 206, the inmate dials the desired telephone number.
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`8
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`Id., 12:40-42. And at step 203, the system verifies that the user is authorized to call
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`the number that was dialed. Id., 11:42-45. If authorized, the call is placed. If “after
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`a set number of rings the call remains unanswered,” then the inmate may leave a
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`message at step 213. Id., 12:50-52. To leave the message, the inmate records a
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`message (step 215). Id., 12:1-4; 13:16-18. The system then dials the desired number
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`at step 219. Id., 13:20-25.
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`If the system does not reach the calling party, then the call attempt is repeated
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`periodically (annotated above by the red arrows). Id., 13:20-40. “[W]hen the call is
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`answered by a live person,” the recorded message is played (step 229). Id., 13:25-
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`28. The system bills for phone usage to an appropriate party, i.e., either the calling
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`party or the called party. Id., 13:28-30 (“[T]he system bills for usage as appropriate
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`(step 233).”).
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`As is shown below, these steps were all well known, predictable methods long
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`before the filing of the ’031 patent.
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`VI. CLAIM CONSTRUCTION
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`In a inter partes review, claim terms in an unexpired patent are given their
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`broadest reasonable construction in light of the specification of the patent in which
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`they appear. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016). “Under
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`a broadest reasonable interpretation, words of the claim must be given their plain
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`meaning, unless such meaning is inconsistent with the specification and prosecution
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`9
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`history.” Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016)
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`(emphasis added).
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`The Board should give all claim terms their plain and ordinary meaning. 37
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`C.F.R. § 42.100(b). The specification and the prosecution history do not provide any
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`special definitions that conflict with the plain and ordinary meaning of the terms in
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`the claims of the ’031 patent. Occhiogrosso Decl. ¶ 85. Further, all claim terms of
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`the ’031 patent are amenable to the broadest reasonable construction using their plain
`
`and customary meaning, as understood by a person of ordinary skill. Id. Securus
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`reserves the right to respond to, and to offer alternative constructions to, any
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`proposed claim term constructions offered by Patent Owner.3
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`VII. SUMMARY OF PRIOR ART
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`A. Overview of Falcone
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`Falcone was not considered during the prosecution of the ’031 patent.
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`Occhiogrosso Decl. ¶ 92. Falcone is directed to, among other things, a method of
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`providing residents of a controlled environment (e.g., a prison) a way to deliver voice
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`3 Because claims are construed under a different standard in district court, Securus
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`reserves its right to present a different construction there, if applicable. See, e.g.,
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`Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc). But the
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`unpatentability grounds presented here hold under either standard.
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`10
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`messages to a third party when the called party is unavailable (e.g., does not answer
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`or the line is busy). Falcone, 2:17-26. Falcone discloses numerous options for the
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`authentication, delivery, and billing for delivery of the message, and additionally
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`provides that the third party may leave a return message that the inmate may later
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`retrieve. Id., 3:20-53.
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`Id., Fig. 1. A call application manager 101 facilitates various calling services,
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`including inbound and outbound calling and billing functions. Id., 4:4-10. Call
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`application manager 101 may be used to require authentication of the calling party
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`(e.g., by use of a personal identification number) and verification that the called party
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`is authorized to be called by calling party. Id., 4:55-59, 8:52-60 (discussing
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`11
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`additional access control techniques).
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`After authentication, the call application manager 101, in one embodiment,
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`attempts to establish a communication connection with the called party. Falcone,
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`6:15-27. If the called party is unavailable, Falcone recognizes that it would be
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`“advantageous to facilitate delivery of a message from the calling party to the called
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`party.” Id., 6:38-49. To facilitate the message delivery, Falcone’s call application
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`manager can record a message from the inmate and forward it to the messaging
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`system 20 (shown below):
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`Id., Fig. 2, 7:29-37. The messaging system may then attempt to call the called party
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`12
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`by “making periodic call attempts … communicating with network elements of
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`network 104 … to deliver the message.” Id., 7:29-37. In other embodiments, the
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`message may be stored (e.g., at the controlled facility) for later remote retrieval by
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`the called party. Id., 10:37-63. “Message storage/retrieval logic 203 preferably sends
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`the message to message storage drive 204 which could be implemented with any
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`storage device ….” Id., 9:65-10:2. Thereafter, the called party may be called
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`periodically to notify the called party that a message awaits:
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`[T]he called party may be informed of the pending message through
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`periodic call attempts placed to the called party by messaging system
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`20, e.g., placing a series of calls to the called party every 30 minutes
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`until a call is answered or until a threshold or other terminating
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`condition is reached (such as a predetermined period of time, a
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`predetermined number of call attempts, the calling party successfully
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`places a call to the called party, etcetera).
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`Id., 10:51-58 (emphasis added).
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`After the called party accepts delivery of a message, the system “invokes
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`billing authorization functionality to begin processing payment options.” Id., 14:21-
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`24. The appropriate charges for message delivery are deducted according to a
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`payment method (e.g., billed to the inmate’s account), and the message can be
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`retrieved and played. Falcone, 14:66-15:17. Following delivery of the message to
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`the called party, the called party can choose to “record a message to be returned to
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`the calling party.” Id., 13:21-26.
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`13
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`B. Overview of Hodge
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`Hodge was not considered during the prosecution of the ’031 patent.
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`Occhiogrosso Decl. ¶ 109. Hodge
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`is directed
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`to a “computer-based
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`telecommunication system with the capacity to allow an institution to control,
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`record, monitor, and report usage and access to a telephone network.” Hodge,
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`[0001]. More specifically, it is drawn to a “telephone call system including a means
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`for identifying and authenticating an institutional calling party.” Id., [0043]. Like
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`Falcone, the system disclosed in Hodge is designed to be used in prisons, among
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`other places. Id., [0042]. The switchboard call management system 101 disclosed in
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`Hodge is connected to a site server 113, which serves as the main database for the
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`telephone system:
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`Hodge, Figure 1, [0045].
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`This site server is connected to administrative and investigative workstations
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`14
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`to monitor user accounts and calls. Id., [0046]. To enable this type of monitoring,
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`Hodge stores audio files on its site server. Id., [0132]. Hodge also stores other
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`digitized audio files “used for voice prompts as well as each user’s call restrictions,
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`PIN, biometric verification data, etc.” Id., [0131]. Hodge further discloses additional
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`authentication means to access the telephone system such as biometric data in
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`addition to a PIN number. Id., [0056]. Finally, Hodge discloses various call
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`recording techniques, including “voice recognition software to listen for key words
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`or phrases in conversation.” Id., [0068]-[0070].
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`C. Overview of Mow
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`Mow discloses a system that “allows inmates of a correctional institution to
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`communicate with parties outside the facilities via telephone or electronic messaging
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`events.” Mow, Abstract. The system of Mow “administers billing for the
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`communications and controls who the inmates can communicate with.” Id., 3:27-29.
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`D. Overview of Cree
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`Cree discloses “[a]n inmate messaging system and method for notifying an
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`inmate in a prison facility of messages received from a caller outside the prison
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`facility.” Cree, Abstract. Cree addresses the “need within [the] inmate telephone
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`industry to facilitate notification of inmates when a remote party desires to
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`communicate with an inmate via the inmate telephone system.” Id., 1:34-37.
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`Furthermore, Cree seeks to “allocate costs associate with operating the inmate
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`telephone system, and facilitate billing of the appropriate remote parties [and] to
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`function in a prison environment to prevent the inmates from exploiting the system
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`for personal gain or advantage.” Id., 1:36-42. In Cree, remote callers establish an
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`account to access messages for each inmate in the facility. Id., 1:50-59. A PIN “or
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`other identification information” can be utilized to verify account access. Id., 1:55-
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`59. Cree allows a remote caller “to record 370 a message from the remote caller.”
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`Id., 9:54-10:8. The inmate can listen to any pending messages or “leave messages
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`for others.” Id., 10:38-50, 11:3-5, 36-41.
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`E. Overview of Bayne
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`Bayne discloses “processing a call placed by an inmate from a custodial
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`facility using a facility phone.” Bayne, [0006]. In Bayne, inmates may be assigned
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`a voice mailbox. Id., [0009]. Accessing the mailbox may have an associated fee. Id.
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`To access the voice mail system, the inmate is prompted for an access code for
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`authentication. Bayne, [0007]. When an inmate chooses to call an outside party, the
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`party may not answer or may decline charges associated with the call. Id., [0008]-
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`[0009].
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`Id., Fig. 1.
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`In both cases, the inmate has the opportunity to record a voice message for the
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`outside party that is stored in the inmate’s mailbox. Id. “The outside party may
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`subsequently be provided with access to the voice mailbox assigned to the inmate in
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`exchange for an access fee.” Id., [0009]. The outside party can also connect to the
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`voice mail system with an access code “to gain access to the inmate’s voice
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`mailbox.” Bayne, [0038].
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`F. Overview of Bauer
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`Bauer is drawn to a “method and apparatus for storing and retrieving
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`voicemail with a calling card.” Bauer, Abstract. Bauer may be implemented in a
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`network as shown in Figure 1:
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`Id., Fig. 1.
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`A calling-card user interface allows “a calling-card owner or a caller to
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`interface with the voice-messaging platform 108 and the calling card-platform 110.”
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`Bauer, [0050]. The voice-messaging platform provides “voicemail and account
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`processing services,” where the calling-card owner or caller “may record a
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`voicemail.” Id., [0046]. “[R]ecording the voicemail will result in a debit to the
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`prepaid calling card.” Id., [0059]. A calling-card owner “will be given the option to
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`retrieve the recorded message” “whenever the prepaid calling-card owner attempts
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`to use the prepaid calling card.” Id. “[T]he pre-paid calling card owner is charged or
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`their account debited based on the time of the voicemail.” Id., [0060].
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`VIII. LEVEL OF ORDINARY SKILL IN THE ART
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`The relevant field of the ’031 patent is voice messaging systems and
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`telecommunications systems. Occhiogrosso Decl. ¶ 57. One having ordinary skill
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`would have familiarity with such systems, including networking, call processing,
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`data storage, user authentication, security, and resource management relating
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`specifically to voice messaging systems and billing techniques and interfaces for
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`services provided by voice messaging systems. Id. ¶ 80. Based on the relevant
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`factors, a person of ordinary skill in this field would have had at least a bachelor’s
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`degree in electrical engineering, computer engineering, or the equivalent and two or
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`more years of industry experience in a relevant field, or the academic equivalent
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`thereof. Id.; see also In re GPAC, 57 F.3d 1573, 1579 (Fed. Cir. 1995) (discussing
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`the factors). Such a person would have been familiar with the standard components,
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`methods, and protocols used at the time of the invention of the ’031 patent for
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`networking, call processing, data storage, user authentication, security, and billing
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`in a voice messaging system. Id.
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`IX. GROUNDS FOR UNPATENTABILITY
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`A. GROUND 1: Claims 1, 2, 7, 8, 11, 12, 17, and 18 Are Obvious Over
`Falcone and Hodge.
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`1.
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`The Combination of Falcone and Hodge Renders Claim 1 of
`the ’031 Patent Obvious to a Person of Ordinary Skill.
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`Falcone by itself arguably discloses every necessary limitation of claim 1, but
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`even if it does not, certain disclosures from Hodge, especially when coupled with
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`the knowledge of a person of ordinary skill, render claim 1 obvious.
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`a)
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`Falcone Discloses Preamble.
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`Even under the more restrictive claim construction standard in district court,
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`as a “general rule” preamble language is not treated as limiting preamble unless it
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`breathes life and meaning into the claim. Aspex Eyewear, Inc. v. Marchon Eyewear,
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`Inc., 672 F.3d 1335, 1347 (Fed. Cir. 2012). Additionally, statements of intended
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`result or purpose in a preamble are generally not considered to be claim limitations.
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`Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1375 (Fed. Cir.
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`2001).
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`The body of claim 1 recites a complete process. Claim 1’s preamble provides
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`no additional meaning to the claim. It merely states a purpose or intended use of the
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`method. See ’031 patent, claim 1 (e.g., “a computer implemented method for
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`regulating unanswered phone calls placed by a registered user of a phone system
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`serving a secured premises”). Thus, the preamble of claim 1 is not limiting under the
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`broadest reasonable interpretation standard. See Bristol-Myers, 246 F.3d at 1375.
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`To the extent the Board determines that the preamble is limiting, the preamble
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`would have been obvious in view of Falcone. One of ordinary skill in the art would
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`have clearly understood that the implementation of the disclosed system would
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`constitute a “computer implemented method.” Occhiogrosso Decl. ¶ 137. Falcone
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`discloses a call processing system 10 (also called a call management system) adapted
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`for providing message delivery:
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`Falcone, Fig. 1, 3:10-13. The call processing system 10 comprises a messaging
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`system 20 for providing message delivery services and a call application manager
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`101 to facilitate various calling services. Id., 4:4-10. Additionally, the call processing
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`system 10 may include a separate messaging system structure “such as a computer
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`having a central processing unit,” RAM and ROM memory, disk storage, and
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`“suitable input/output devices (voice card, line interface, network interface, and/or
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`the like).” Id., 4:14-33.
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`As shown in Figure 2 below, the messaging system 20 further comprises
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`various memory elements and logic functions that may “comprise program code
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`operable upon [the] processors of call application manager 101 and/or otherwise
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`utilizing resources thereof”:
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`Id., Fig. 2, 4:15-30; see also id., 4:14-33, 16:6-10 (“The structure for controlling the
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`operation described herein could be hardware, software, or a combination thereof
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`….”).
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`Falcone further discloses that its messaging system regulates unanswered
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`phone calls placed by a registered user of a phone system serving a secured premises.
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`Falcone enables a calling party “to leave a message for a called party, such as when
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`a live call to the called party cannot be completed.” Id., 3:20-23. Examples of such
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`incomplete calls include when “the called party does not answer, the called line
`
`returns a busy signal, the attempt reaches an answering machine or answering
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`service, or a problem exists with the called number (mis-dial, disconnected number,
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`etcetera).” Id., 1:63-67.
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`In Falcone, the calling party is a “registered user” (e.g., a prisoner who has
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`been issued a unique PIN that is used to verify the identity of the calling party to
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`control the “calling party’s ability to leave messages”). Id., 8:52-60, 5:6-12 (“Call
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`application manager 101, in conjunction with validation database 102, may perform
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`any number of checks prior to authorizing a calling connection or other calling
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`service.”). Additionally, Falcone expressly acknowledges that “[s]uch techniqu