`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`SECURUS TECHNOLOGIES, INC.
`Petitioner
`
`v.
`
`GLOBAL TEL*LINK CORPORATION
`Patent Owner
`
`____________________
`
`Case IPR2017-00758
`Patent 8,515,031
`____________________
`
`
`PATENT OWNER PRELIMINARY RESPONSE
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`

`

`
`
`
`
`IPR2017-00758
`U.S. Patent No. 8,515,031
`
`TABLE OF CONTENTS
`
`Introduction ........................................................................................................ 1
`
`I.
`
`II. The ’031 Patent Overview ................................................................................. 4
`
`III. Claim Construction ............................................................................................ 5
`
`IV. Petitioner Fails to Establish a Reasonable Likelihood that independent Claims
`1 and 11 are Obvious over Falcone and Hodge. ........................................................ 6
`
`A. Petitioner does not prove that Falcone in view of Hodge discloses the
`“verifying” elements of claims 1 and 11. ............................................................... 7
`
`B. Petitioner does not prove that Falcone in view of Hodge discloses the claim
`1 and 11 “playing the recorded message” elements. ...........................................11
`
`
`V. Petitioner Fails to Establish a Reasonable Likelihood that Dependent Claims 2
`and 12 are Obvious over Falcone and Hodge. .........................................................14
`
`VI. Petitioner Fails to Establish a Reasonable Likelihood that Dependent Claims 8
`and 18 are Obvious over Falcone and Hodge. .........................................................16
`
`A. Petitioner fails to prove that Falcone in view of Hodge discloses claim 8. .16
`
`B. Petitioner fails to prove that Falcone in view of Hodge discloses claim
`18.
` ......................................................................................................................17
`
`
`VII. Petitioner Fails to Demonstrate a Reasonable Likelihood that Dependent
`Claims 4 and 14 are Obvious over Falcone, Hodge, Mow, Cree, Bayne, and
`Bauer. .......................................................................................................................19
`
`A. Petitioner fails to prove that Falcone in view of Hodge, Mow, Cree, and
`Bayne discloses claim 4. ......................................................................................19
`
`B. Petitioner fails to prove that Falcone in view of Hodge, Mow, Cree, and
`Bayne discloses claim 14. ....................................................................................21
`
`
`VIII. Petitioner Fails to Demonstrate a Reasonable Likelihood that Dependent
`Claims 10 and 20 are Obvious over Falcone, Hodge, Mow, Cree, Bayne, and
`Bauer. .......................................................................................................................23
`
`- i -
`
`

`

`
`
`
`
`IPR2017-00758
`U.S. Patent No. 8,515,031
`
`
`A. Petitioner fails to prove that Falcone in view of Hodge, Mow, Cree, Bayne
`and Bauer discloses claim 10. ..............................................................................23
`
`B. Petitioner fails to prove that Falcone in view of Hodge, Mow, Cree, Bayne
`and Bauer discloses claim 20. ..............................................................................26
`
`
`IX. Petitioner Fails to Establish a prima facie Case of Obviousness Because
`Petitioner Does Not Provide Sufficient Reasons Why a POSITA Would Have Been
`Motivated to Combine Falcone and Hodge and How Falcone and Hodge Would
`Have Been Combined. .............................................................................................26
`
`X. Conclusion .......................................................................................................32
`
`
`
`
`
`
`
`- ii -
`
`

`

`
`
`
`
`IPR2017-00758
`U.S. Patent No. 8,515,031
`TABLE OF AUTHORITIES
`
`
`Cases
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) .................................................................6, 33
`
`Apotex Inc. v. Wyeth LLC,
`IPR2014-00115, Paper 94 (P.T.A.B. Apr. 20, 2015) ....................................27
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) .......................................................................19
`
`KSR Intern. Co. v. Teleflex Inc.,
`550 U.S. 398 (2007)........................................................................ 6, 8, 27, 29
`
`One World Tech, Inc. v. The Chamberlain Group, Inc.,
`IPR2016-01774, Paper 8 (P.T.A.B. Feb. 21, 2017) ......................................28
`
`Proctor & Gamble Co. v. Teva Pharms. USA, Inc.,
`566 F.3d 989 (Fed. Cir. 2009) .......................................................................27
`
`Rolls-Royce, PLC v. United Techs. Corp.,
`603 F.3d 1325 (Fed. Cir. 2010) ....................................................................... 8
`
`Sanofi-Synthelabo v. Apotex, Inc.,
`550 F.3d 1075 (Fed. Cir. 2008) ...................................................................6, 7
`
`Securus Technologies, Inc. v. Global Tel*Link Corporation,
`IPR2015-00155, Paper 30 (P.T.A.B. Apr. 7, 2016) ............................... 29, 30
`
`Statutes
`
`35 U.S.C. § 103 .......................................................................................................... 6
`
`35 U.S.C. § 316(e) ...................................................................................................11
`
`35 U.S.C. § 322(a)(3) ...............................................................................................11
`
`
`
`- iii -
`
`

`

`
`
`I.
`
`
`
`IPR2017-00758
`U.S. Patent No. 8,515,031
`
`Introduction
`The Board should not institute Inter Partes Review (“IPR”) of claims 1-20
`
`of U.S. Patent No. 8,515,031 (Exhibit 1001) (“’031 patent”). Four independent
`
`grounds for denying the Petition exist. Additionally, separate grounds exist for
`
`denying institution of IPR review of dependent claims 2, 4-6, 8, 10, 12, 14-16, 18,
`
`and 20.1
`
`First, the Board should deny the Petition because Petitioner fails to consider
`
`the claims of the ‘031 patent as a whole. A determination of obviousness is made
`
`with respect to the claims as a whole, not piecemeal as Petitioner has done. In
`
`particular, claims 1 and 11 include temporal limitations that must be considered
`
`together and in a particular sequence. Petitioner fails to conduct this analysis, and
`
`therefore the Petition should be denied.
`
`Second, the Board should deny the Petition because Petitioner fails to
`
`establish a reasonable likelihood that Falcone (Exhibit 1004) in view of Hodge
`
`(Exhibit 1005) discloses the “verifying” elements of independent claims 1 and 11.
`
`1 Grounds for denying institution of claims 5, 6, and 10 exist based on their
`
`dependency on claim 4, which Petitioner has failed to show a reasonable likelihood
`
`exists that the claim is obvious. Grounds for denying institution of claims 15, 16,
`
`and 20 exist based on their dependency on claim 14, which Petitioner has failed to
`
`show a reasonable likelihood exists that the claim is obvious.
`
`
`
`- 1 -
`
`

`

`
`
`IPR2017-00758
`U.S. Patent No. 8,515,031
`Petitioner recognizes that neither Falcone nor Hodge discloses this element by
`
`
`
`noting that “approval to connect a phone call to a destination associated with a
`
`phone number would have been obvious to try….” (Petition, p. 24, emphasis
`
`added.) Despite case precedent detailing the facts a party must establish to prove a
`
`modification would have been obvious to try, the Petition provides no analysis or
`
`factual support for its argument. Rather, as is common throughout the Petition,
`
`Petitioner merely glosses over the shortcomings in the prior art and provides
`
`conclusory statements in a futile attempt to address those shortcomings.
`
`Third, the Board should deny the Petition because Petitioner fails to
`
`establish a reasonable likelihood that Falcone in view of Hodge discloses the
`
`“playing the recorded message” elements of independent claims 1 and 11. The
`
`Petition does not prove that Falcone plays the recorded message when the phone
`
`call is connected to the end user after dialing the phone number entered by the
`
`registered user based on periodic intervals. Rather, Falcone’s system plays a
`
`notification message that a recorded message awaits retrieval. In other words
`
`Falcone does not play a recorded message when the phone is connected to the end
`
`user as required by the independent claims, but rather plays a notification message
`
`that requires a called party to take an action to retrieve a recorded message.
`
`Petitioner addresses this shortcoming by mischaracterizing Falcone and taking
`
`statements out of context to give the illusion that Falcone discloses this element.
`
`
`
`- 2 -
`
`

`

`
`
`IPR2017-00758
`U.S. Patent No. 8,515,031
`Fourth, the Board should deny the Petition because Petitioner fails to
`
`
`
`provide sufficient reasons as to why a person of ordinary skill in the art
`
`(“POSITA”) would have been motivated to combine Falcone and Hodge, and how
`
`a POSITA would have combined Falcone and Hodge. Petitioner suggests alleged
`
`advantages of the combination, but these advantages do not actually address the
`
`specific combination (which is not identified), but rather provides generic
`
`advantages – simplify architecture, increase security, and use less memory. There
`
`is no detailed description of why or how the systems of Falcone and Hodge would
`
`be combined to form the specific invention claimed, and therefore no reasonable
`
`basis why any of these generic advantages would be realized or serve to motivate a
`
`POSITA to combine the references. Finally, Petitioner alleges that a POSITA
`
`would have been motivated to combine the references based on features appearing
`
`in the Hodge reference. But these same features already existed in the Falcone
`
`reference. Thus, a POSITA would not be motivated to combine the references
`
`based on the Hodge features that already existed in the Falcone system. In essence
`
`Petitioner ignores existing features of Falcone to fabricate reasons why a POSITA
`
`would combine the references.
`
`In the event that the Board does institute trial, the Board should not institute
`
`trial as to dependent claims 2, 4-6, 8, 10, 12, 14-16, 18, and 20. The Petitioners fail
`
`
`
`- 3 -
`
`

`

`
`
`IPR2017-00758
`U.S. Patent No. 8,515,031
`to establish a reasonable likelihood that the prior art of record render these claims
`
`
`
`obvious.
`
`II. The ’031 Patent Overview
`Constrained by unique security and control concerns of correctional
`
`facilities, the inventors of the ’031 Patent developed a novel approach to enhance
`
`communications between prison inmates and called parties outside of a prison.
`
`Prison inmates have limited privileges to make telephone calls, including
`
`significant limitations on the number of calls they can attempt. (’031 patent, 5:14-
`
`16.) Often when making telephone calls to family and friends, the calls go
`
`unanswered. Therefore, call attempts are wasted and an inmate is unable to
`
`communicate with friends and family when those parties become available, leading
`
`to frustration. (Id. at 1:43-46, 5:11-14.) Easier and more efficient communication
`
`has been found to foster less agitated behavior and help in an inmate’s
`
`rehabilitation process. (Id. at 9:41-50.) Thus, inhibiting inmates’ ability to
`
`communicate with friends and family was a significant problem.
`
` Prior art systems addressed the problem, but had severe shortcomings. In
`
`particular, prior art systems did not notify the outside party of the existence of a
`
`message, leaving many inmates’ messages left unheard. (Id. at 8:56-59.)
`
`Additionally, other prior art systems restricted the inmate from leaving a message
`
`
`
`- 4 -
`
`

`

`
`
`IPR2017-00758
`U.S. Patent No. 8,515,031
`after a failed call attempt, “requir[ing] that the inmate choose either to leave a
`
`
`
`voice message or attempt a live call.” (Id. at 8:59-61.)
`
`The inventors of the ’031 patent recognized the problem and the
`
`shortcomings of prior art systems. They devised a novel approach to permit an
`
`inmate to record a message when a call went unanswered and store the message on
`
`a site server for the prison. A site platform then makes repeated call attempts to the
`
`originally called end user and plays the recorded message to the originally called
`
`end user when a call attempt is successful. When one of the repeated call attempts
`
`is successful, the claimed invention does not merely provide a notification message
`
`to a called end user indicating that a recorded message is available. The claimed
`
`invention instead plays the recorded message to the called end user when the phone
`
`call is connected to the end user. By not merely sending a notification message, the
`
`invention reduces call-flow steps and reduces processing requirements on the
`
`inmate telecommunications system, which supports an objective for the invention
`
`to “be easily incorporated into inmate telecommunications systems.” (Id. at 10:49-
`
`51.)
`
`III.
`
` Claim Construction
`
`For purposes of this preliminary response, Patent Owner agrees with
`
`Petitioner that the claims should be given their plain and ordinary meanings. Patent
`
`Owner reserves the right to advance different construction positions in its Patent
`
`
`
`- 5 -
`
`

`

`
`
`IPR2017-00758
`U.S. Patent No. 8,515,031
`Owner Response, should the Board decide to institute trial. Patent Owner further
`
`
`
`reserves the right to advance different claim constructions in other forums.
`
`IV. Petitioner Fails to Establish a Reasonable Likelihood that independent
`Claims 1 and 11 are Obvious over Falcone and Hodge.
`
`The ’031 patent includes two independent claims 1 and 11. Claim 1 is a
`
`method claim, and claim 11 is a system claim that has similar elements to those of
`
`independent claim 1. Petitioner fails to prove that Falcone in view of Hodge
`
`discloses at least the “verifying” and “playing the recorded message” elements of
`
`claims 1 and 11.
`
`Moreover, obviousness is determined by assessing whether 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, 417-18 (2007); ActiveVideo Networks, Inc.
`
`v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1327 (Fed. Cir. 2012) (“A patent
`
`composed of several elements is not proved obvious by merely demonstrating that
`
`each of its elements was, independently, known in the prior art.”).
`
`The test for obviousness is not whether individual elements alone would
`
`have been obvious. See Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1086
`
`(Fed. Cir. 2008). Rather, the test for obviousness requires an analysis of whether
`
`“the claimed invention as a whole would have been obvious.” 35 U.S.C. § 103;
`
`
`
`- 6 -
`
`

`

`
`
`IPR2017-00758
`U.S. Patent No. 8,515,031
`Sanofi-Synthelabo, 550 F.3d at 1086 (“The determination of obviousness is made
`
`
`
`with respect to the subject matter as a whole, not separate pieces of the claim.”).
`
`Here, Petitioner fails to consider the claimed invention as a whole and
`
`recognize that the “playing the recorded message” element occurs after the claim
`
`element of “dialing the phone number entered by the registered user based on
`
`periodic intervals until the phone call is connected to the end user” and that
`
`“playing the recorded message” occurs “when the phone call is connected to the
`
`end user.” These temporal limitations of the ’031 patent are ignored by Petitioner.
`
`By not considering the claimed invention as a whole, Petitioner fails to establish a
`
`reasonable likelihood that claims 1 and 11 are obvious.
`
`In general, Petitioner simply does not appreciate the nuances of the ‘031
`
`patent and Falcone. Rather, Petitioner conflates disclosures related to notification
`
`messages and recorded messages and mixes and matches incompatible Falcone
`
`embodiments without explanation, while ignoring key distinctions within the ‘031
`
`patent. Therefore, Petitioner cannot and does not demonstrate how Falcone in view
`
`of Hodge renders obvious claims 1 and 11 of the ‘031 patent.
`
`A.
`
`Petitioner does not prove that Falcone in view of Hodge discloses
`the “verifying” elements of claims 1 and 11.
`The Petition fails to show that Falcone in view of Hodge “verif[ies whether
`
`a unique access identifier provided by the registered user of the phone system is
`
`authorized to place a phone call to a destination associated with a phone number
`
`
`
`- 7 -
`
`

`

`
`
`IPR2017-00758
`U.S. Patent No. 8,515,031
`entered by the registered user” (“verifying” elements) as recited in independent
`
`
`
`claims 1 and 11.
`
`Recognizing that Falcone does not teach this claim element, Petitioner relies
`
`on an obvious-to-try argument: “approval to connect a phone call to a destination
`
`associated with a phone number would have been obvious to try . . . .” (Petition, p.
`
`24.) Petitioner’s reliance on this obvious-to-try argument fails as a matter of law.
`
`To establish obviousness of a claimed invention based on a modification
`
`being “obvious to try,” a petitioner must show that the modification would have
`
`been made from choosing from a finite number of identified, predictable solutions,
`
`with a reasonable expectation of success. See KSR, 550 U.S. at 402; Rolls-Royce,
`
`PLC v. United Techs. Corp., 603 F.3d 1325, 1339 (Fed. Cir. 2010) (“The important
`
`question is whether the invention is an ‘identified, predictable solution’ and an
`
`‘anticipated success.’”). Moreover, “[a] particular course or selection is not
`
`obvious to try unless some design need or market pressure or other motivation
`
`would suggest to one of ordinary skill to pursue the claimed course or selection.”
`
`Rolls-Royce, PLC, 603 F.3d at 1339 (citing KSR, 550 U.S. at 421 (a POSITA must
`
`have “good reason to pursue the known options within his or her technical
`
`grasp”)). Despite precedent about the facts a party must establish to prove a
`
`modification would have been obvious to try, the Petition provides no analysis or
`
`factual support for its argument. The Petition merely concludes: “approval to
`
`
`
`- 8 -
`
`

`

`
`
`IPR2017-00758
`U.S. Patent No. 8,515,031
`connect a phone call to a destination associated with a phone number would have
`
`
`
`been obvious to try since Falcone controls a calling party’s ability to leave
`
`messages through the verification of the number called and the inmate’s PIN or
`
`biometrics.” (Petition, p. 24.) The Petition does not explain why this modification
`
`would have been a predictable solution to a known problem. The Petition does not
`
`explain why the modification would have led to an anticipated success. And the
`
`Petition does not explain why market pressure or other motivation would have led
`
`to this particular modification. The Petition merely jumps to its conclusion, without
`
`factual support, that modifying Falcone to authorize destinations was obvious.
`
`Dr. Occhiogrosso’s declaration (Ex. 1003) does not support Petitioner’s
`
`position that such a modification was “obvious to try.” The Petition cites to
`
`paragraph 141 of the Occhiogrosso declaration. The entirety of this paragraph is
`
`reproduced below to show that this paragraph has nothing to do with an obvious-
`
`to-try analysis.
`
`141. The PIN provided by the inmate in the methods of
`Falcone would have been understood to be a unique identifier
`of the inmate used for identifying the inmate. Furthermore, the
`inmate’s PIN is one of a predictable set of unique identifiers
`that could have been provided by the inmate. Other examples
`disclosed by Falcone include a personal access number and
`biometrics, and each would have been known to be unique
`information that may have been known only to the user or
`
`
`
`- 9 -
`
`

`

`
`
`
`
`IPR2017-00758
`U.S. Patent No. 8,515,031
`unique to the user for purposes of authorizing the calling party
`to place a phone call within a controlled and secure telephone
`system. Thus, all of the potential identifiers from Falcone
`would have been obvious to use to authorize one to make a call
`within a secured telephone system. The benefits of using such
`unique identifiers are numerous: it allows officials to screen all
`calls, keeps costs down by stopping unauthorized calls, and
`prevents unwanted harassment of outside parties.
`
`(Occhiogrosso Dec., ¶ 141.) Not only does this paragraph not include a single
`
`citation, the paragraph is about Falcone’s use of PIN numbers, not about whether
`
`modifying Falcone such that its system verifies whether a unique access identifier
`
`is authorized to place a phone call to a destination would have been obvious to try.
`
` “[T]he petitioner shall have the burden of proving a proposition of
`
`unpatentability by a preponderance of the evidence.” 35 U.S.C. § 316(e). And
`
`petitioners must identify “with particularity” the “evidence that supports the
`
`grounds for the challenge to each claim.” 35 U.S.C. § 322(a)(3). Petitioner fails to
`
`meet this burden because the Petition does not supply any reasoned basis or factual
`
`support to conclude that Falcone in view of Hodge teaches or suggests the element
`
`of “verifying whether a unique access identifier . . . is authorized to place a phone
`
`call to a destination.” Because Petitioner fails to meet its burden with respect to
`
`independent claims 1 and 11, and this burden never shifts to either Patent Owner or
`
`the Board, the Petition should be denied.
`
`
`
`- 10 -
`
`

`

`
`
`
`B.
`
`
`
`IPR2017-00758
`U.S. Patent No. 8,515,031
`
`Petitioner does not prove that Falcone in view of Hodge discloses
`the claim 1 and 11 “playing the recorded message” elements.
`
`The Petition fails to show that Falcone in view of Hodge discloses the
`
`element of “playing the recorded message provided by the registered user that is
`
`retrieved from the site server for the end user when the phone call is connected to
`
`the end user,” (“playing the recorded message” elements) as recited in independent
`
`claim 1. Claim 11 includes a similar “playing the recorded message” element. For
`
`these elements, the Petition relies solely on Falcone. But the Petition does not
`
`prove that Falcone plays the recorded message when the phone call is connected to
`
`the end user. Rather, Falcone’s system only plays a notification message that a
`
`recorded message awaits retrieval.
`
`In independent claims 1 and 11, when an attempt to connect the phone call
`
`to the end user fails, the registered user records a message. Independent claims 1
`
`and 11 then recite “dial[ing] the phone number entered by the registered user
`
`based on periodic intervals until the phone call is connected to the end user.”
`
`“[W]hen the phone call is connected to the end user,” the system and method
`
`“play[s] [the]/[a] the recoded message provided by the registered user.”
`
`Falcone does not play a recorded messaged provided by the registered user
`
`when the phone call is connected to the end user because Falcone merely provides
`
`a notification message that informs the called party that a message awaits
`
`
`
`- 11 -
`
`

`

`
`
`IPR2017-00758
`U.S. Patent No. 8,515,031
`retrieval. (See, e.g., Falcone, 7:29-37, 10:48-51.) When an attempt reaches the
`
`
`
`called party, “the called party may be informed of the pending message.” (Id. at
`
`10:51-58.) Falcone’s messaging system 20 therefore “is used to inform the called
`
`party, such as called party 103, that a message is waiting in the system.” (Id. at
`
`10:46-63; see also id. at Abstract (“a message can be stored awaiting retrieval by
`
`the called party”).) Other embodiments reinforce this point because the other
`
`embodiments also are focused on informing the called party of the existence of a
`
`message: “the called party may be informed of the pending message by messaging
`
`system 20 providing a signal that actuates a lamp, buzzer, special ring tone, special
`
`dial tone, or other indicator . . . .” (See id. at 10:64-11:3; see also 11:3-10 (sending
`
`an email to inform the called party).) But informing the called party of the
`
`existence of a message does not equate to playing the message when the phone call
`
`is connected to the end user.
`
`The Petition incorrectly alleges that Falcone discloses two response options.
`
`According to the Petition, “[t]he first option is to simply deliver the stored
`
`message, (see Falcone, 7:15-37) while another discussed option is to deliver a
`
`notification to the called party that the messaging system has a stored message
`
`awaiting retrieval (see Falcone, 10:46-63).” (See Petition, pp. 32-33.) Falcone
`
`never refers to its message-delivery system as having a “first option” and “second
`
`option.” Petitioner instead manufactures this “first option” by taking citations to
`
`
`
`- 12 -
`
`

`

`
`
`IPR2017-00758
`U.S. Patent No. 8,515,031
`Falcone out of context. Petitioner primarily relies on Falcone’s statement that
`
`
`
`“[a]fter receiving a message, messaging system 20 preferably initiates
`
`communication with called party 103, such as making periodic call attempts to the
`
`called party. . . to deliver the message.” (See Petition, p. 32, citing Falcone, 7:29-
`
`37.) But this delivered message is not the recorded message, but rather merely a
`
`notification: “messages indicating that the calling party has stored a message can
`
`be delivered.” (Id. at 7:47-52.) As this example demonstrates, when Falcone is read
`
`in its entirety (not just the selected portions in the Petition), Falcone reveals a
`
`consistent teaching—its system plays notification messages.
`
`The Petition’s assertion that Falcone’s message trigger logic 206 sends
`
`recorded messages when the phone call is connected to the called party is also
`
`unsound. As the Petition states, “[m]essage trigger logic 206 of embodiments of
`
`[Falcone’s alleged] invention supports inbound and/or outbound communications
`
`from/to a called party for notification and/or delivery of a pending message.”
`
`(Petition, p. 33 (citing Falcone, 11:23-26) (emphasis in the Petition).) Again, the
`
`Petition presents an incomplete story. Falcone does disclose a message trigger
`
`logic 206 that supports inbound and outbound communications. (Falcone, 11:23-
`
`54.) But the inbound communications are for when the “message trigger logic 206
`
`may receive a call from called party 103 to query message trigger logic 206 as to
`
`whether any undelivered messages are pending.” (Id. at 11:26-28.) And the
`
`
`
`- 13 -
`
`

`

`
`
`IPR2017-00758
`U.S. Patent No. 8,515,031
`outbound communications are to “determin[e] when a called party is available to
`
`
`
`receive notification of a pending message.” (Id. at 11:49-54.) Nowhere does
`
`Falcone specify that the outbound communications are for delivering the recorded
`
`message to the called party when the phone call is connected to the called party.
`
`This characterization of Falcone as disclosing two delivery options is therefore at
`
`best a misinterpretation and at worst disingenuous.
`
`The Petition does not prove that Falcone “play[s] the recorded message . . .
`
`when the phone call is connected to the end user.” When the phone call is
`
`connected to the end user, Falcone plays only an indicator to notify the called party
`
`that a message awaits retrieval. Falcone then requires the called party to dial an
`
`additional number to call (or a server to access) for message retrieval. (Id. at 11:20-
`
`22.) The Petition does not prove that Falcone (or a secondary reference) teaches
`
`this element, so the Petition should be denied.
`
`V.
`
`Petitioner Fails to Establish a Reasonable Likelihood that Dependent
`Claims 2 and 12 are Obvious over Falcone and Hodge.
`The Petition fails to show that Falcone in view of Hodge “reject[s] the
`
`message provided by the registered user from being stored in the site server
`
`[located within the telecom platform that supports the secure premises] when the
`
`recorded message provided by the registered user includes unacceptable content,”
`
`(“reject message” element) as recited in dependent claims 2 and 12. According to
`
`the Petition, “it would have been obvious in view of Hodge to modify the system
`
`
`
`- 14 -
`
`

`

`
`
`IPR2017-00758
`U.S. Patent No. 8,515,031
`of Falcone to reject messages from the inmate based on their content during the
`
`
`
`security review of Falcone and prior to delivery to an outside party.” (Petition, p.
`
`42). But this statement fails to explain why a POSITA would have found it obvious
`
`to reject the message from being stored in the site server.
`
`Rather than rejecting messages from being stored in its messaging system
`
`(the alleged server), Falcone stores all recorded messages in its messaging system
`
`before security review. Falcone recognizes that “in some situations it may be
`
`desirable, for security reasons, to store messages for security review (or to review
`
`the messages prior to delivery).” (Falcone, 10:37-39.) “In such situations,
`
`storage/retrieval logic 203, in cooperation with storage drive 204, would control
`
`such security review.” (Id. at 10:39-41.) Indeed, Falcone has a reason to store all
`
`messages in its site server—to facilitate security review by a third-party contractor.
`
`(See id. at 10:44-45 (“This review would be by a third party”).) Not only is this
`
`understanding of Falcone evident from Falcone’s specification, Falcone’s claims
`
`confirm the system stores recorded messages before security review, claiming a
`
`method comprising: “allowing review of any said stored message by a third party.”
`
`(Id. at claim 45, emphasis added.)
`
`Despite Falcone specifying that its messages are stored before security
`
`review, the Petition nowhere alleges it would have been obvious to reject a
`
`message having unacceptable content from being stored in a server. The Petition
`
`
`
`- 15 -
`
`

`

`
`
`IPR2017-00758
`U.S. Patent No. 8,515,031
`only alleges that it was obvious to reject messages having unacceptable content
`
`
`
`sometime before the message is sent to an outside party: “it would have been
`
`obvious in view of Hodge to modify the system of Falcone to reject messages from
`
`the inmate based on their content during the security review of Falcone and prior to
`
`delivery to an outside party.” (Petition, p. 42.) Because the Petition does not
`
`account for this missing teaching in Falcone and does not articulate reasons why a
`
`POSITA may have been motivated to reject messages having unacceptable content
`
`from being stored in Falcone’s messaging system, the Petition is deficient as to
`
`dependent claims 2 and 12.
`
`VI. Petitioner Fails to Establish a Reasonable Likelihood that Dependent
`Claims 8 and 18 are Obvious over Falcone and Hodge.
`A.
`
`Petitioner fails to prove that Falcone in view of Hodge discloses
`claim 8.
`Claim 8 recites “playing the recorded message provided by the registered
`
`user that is retrieved from the site server for the end user when the telecom
`
`platform is accessed by the end user after the quantity of failed attempts to connect
`
`the phone call to the end user exceeds the threshold.”
`
`Petitioner relies solely on Falcone for disclosing this feature, arguing that
`
`Falcone discloses informing the called party “as to whether any undelivered
`
`messages are pending.” (Petition, p. 43 citing Falcone, 11:26-28 (emphasis in the
`
`Petition).) Petitioner cites nothing in Falcone to teach that the “undelivered
`
`
`
`- 16 -
`
`

`

`
`
`IPR2017-00758
`U.S. Patent No. 8,515,031
`messages” are messages for which the number of “failed attempts to connect the
`
`
`
`phone call to the end user exceeds the threshold,” as recited in claim 8. To address
`
`this flaw, Petitioner argues that “[i]n one obvious scenario, the called party could
`
`be notified of undelivered messages after the predetermined number of failed call
`
`attempts.” (Id. at 43.) But Petitioner’s argument is unsupported by Falcone, which
`
`is silent regarding what is done with messages after callback attempts have ceased.
`
`Further, a POSITA would have understood that storing such messages would
`
`consume valuable memory space. And Petitioner does not explain why a POSITA
`
`would have been motivated to store messages after callback attempts have ceased
`
`in violation of Petitioner’s stated advantage of “using less memory space.” (Id. at
`
`31.) Thus, Petitioner’s argument is deficient and conclusory, and is thus
`
`insufficient to support the legal conclusion of obviousness.
`
`B.
`
`Petitioner fail