Trials@uspto.gov Paper 7
`571-272-7822 Entered: October 11, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`SECURUS TECHNOLOGIES, INC.,
`Petitioner,
`
`
`
`
`Before KEVIN F. TURNER, BARBARA A. BENOIT, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`v.
`
`GLOBAL TEL*LINK CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2017-01177
`Patent 9,521,250 B2
`____________
`
`
`
`
`
`
`
`
`571-272-7822 Entered: October 11, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`SECURUS TECHNOLOGIES, INC.,
`Petitioner,
`
`
`
`
`Before KEVIN F. TURNER, BARBARA A. BENOIT, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`v.
`
`GLOBAL TEL*LINK CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2017-01177
`Patent 9,521,250 B2
`____________
`
`
`
`
`
`
`
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`Patent 9,521,250 B2
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`I. INTRODUCTION
`Securus Technologies, Inc. (“Petitioner”) filed a Petition for inter
`partes review of claims 1–20 of U.S. Patent No. 9,521,250 B2 (Ex. 1001,
`“the ’250 Patent”). Paper 2 (“Pet.”). Global Tel*Link Corporation (“Patent
`Owner”) filed a Preliminary Response (Paper 6). We have jurisdiction
`under 35 U.S.C. § 314(a), which provides that an inter partes review may
`not be instituted “unless . . . the information presented in the petition . . . and
`any response . . . shows that there is a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.”
`Upon consideration of the Petition and the Preliminary Response, we
`conclude the information presented shows there is a reasonable likelihood
`that Petitioner would prevail in establishing the unpatentability of claims 1–
`20.
`
`A. Related Matters
`The ’250 Patent is indicated as being the subject of a patent
`infringement lawsuit, brought by Patent Owner, captioned Global Tel*Link
`Corp. v. Securus Techs., Inc., No. 3:16-cv-01338-K (N.D. Tex.). Pet. 67.
`Petitioner also lists currently-pending U.S. patent applications and issued
`U.S. patents that claim priority to one or more of the applications in the
`priority chain of the ’250 Patent. Id.; accord Paper 4, 1–2; Paper 5, 1.
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`B. The ’250 Patent
`The ’250 Patent relates to implementation of a speaker verification
`system to control access to a secure telephone call management system. Ex.
`1001, Abstract. Figure 1 of the ’250 Patent is reproduced below.
`
`
`
`Figure 1 is a schematic view of the call management system configured to
`operate on a wide area network. Id. at 16:42–44. The ’250 Patent describes
`a “telephone call management system using improved identification means
`including biometric identification,” such as through biometric sensor 109.
`Id. at 9:55–57, 18:65–19:4. The system includes means for identifying and
`authenticating the calling party, as well as the called party. Id. at 10:1–3,
`12:56–57. This authentication may be accomplished by using a combination
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`of biometric data and personal information to determine whether an
`unknown user attempting to access a telephone system is actually the same
`person as a known user who previously registered with the system. Id. at
`48:46–64.
`
`C. Illustrative Claim
`Claims 1, 10, and 16 of the ’250 Patent are independent. Claim 1 is
`illustrative of the claimed subject matter:
`1. A system, comprising:
`a database;
`a control platform configured to:
`receive biometric data related to a user;
`store the biometric data in the database;
`receive identifying information related to the user; and
`store the identifying information in the database in
`correspondence with the biometric data of the user; and
`an authentication module configured to:
`receive second biometric data related to a second user;
`receive second identifying information related to the second
`user;
`find in the database third identifying information that
`substantially matches the second identifying information
`received from the second user;
`retrieve from the database third biometric data associated
`with the third identifying information;
`compare the second biometric data received from the user
`with the third biometric data retrieved from the database;
`and
`authenticate the second user based on the comparison.
`Ex. 1001, 54:11–32.
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`D. Asserted Grounds of Unpatentability
`Petitioner contends that claims 1–20 of the ’609 Patent are
`unpatentable based on the following grounds (Pet. 19–67):
`Challenged Claims
`Basis Reference(s)
`1–6 and 8–15
`§ 103 Otto1
`7 and 16–20
`§ 103 Otto, Gainsboro2, and San Martin3
`7 and 16–20
`§ 103 Otto and Hogg4
`
`II. DISCUSSION
`A. Claim Construction / Level of Ordinary Skill in the Art
`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under
`that standard, claim terms are presumed to be given their ordinary and
`customary meaning as would be understood by one of ordinary skill in the
`art in the context of the entire disclosure. In re Translogic Tech., Inc., 504
`F.3d 1249, 1257 (Fed. Cir. 2007). An inventor may provide a meaning for a
`
`
`1 U.S. Patent No. 6,389,397 B1, filed December 23, 1998, issued May 14,
`2002 (Ex. 1005, “Otto”).
`2 U.S. Patent No. 5,655,013, filed August 2, 1995, issued August 5, 1997
`(Ex. 1006, “Gainsboro”).
`3U.S. Patent No. 6,681,205 B1, filed December 17, 1999, issued January 20,
`2004 (Ex. 1007, “San Martin”).
`4 U.S. Publication No. 2008/0118042 A1, filed November 22, 2006,
`published May 22, 2008 (Ex. 1008, “Hogg”).
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`term that is different from its ordinary meaning by defining the term in the
`specification with reasonable clarity, deliberateness, and precision. In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a
`definition, limitations are not to be read from the specification into the
`claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
`Additionally, courts may rely on dictionary definitions when construing
`claim terms, so long as the dictionary definition does not contradict any
`definition found in or ascertained by a reading of the patent documents. See
`Advanced Fiber Tech. (AFT) Trust v. J & L Fiber Servs., Inc., 674 F.3d
`1365, 1374–75 (Fed. Cir. 2012) (internal citations omitted).
`Petitioner alleges that “substantially matches,” recited in independent
`claims 1, 10, and 16, is not defined expressly in the intrinsic record and does
`not otherwise appear in the ’250 Patent outside of the claims. Pet. 7–8.
`Because of this, Petitioner interprets the claim limitation “substantially
`matches” as encompassing at least the matching process disclosed in the
`specification of the ’250 Patent. Id. Patent Owner disputes Petitioner’s
`characterization, further discussed below, but does not offer an alternative
`construction. Prelim. Resp. 8–12.
`Patent Owner argues specifically that Petitioner’s proposed
`construction of “substantially matches” could essentially read out the term
`“substantially.” Id. at 11. If we understood Petitioner to be espousing that
`“substantially matches” is equivalent to “matches,” we would agree;
`however, Petitioner’s argument is that “substantially matches” encompasses
`at least the described matching. We also agree with Petitioner, that
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`“substantially” appears only in the claims of the ’250 Patent, and that most
`of the discussion of matching (Ex. 1001, 11:60–65, 12:52–55, 53:65–54:1)
`applies to matching a PIN, that would likely be exacting matching. Pet. 7–8.
`The likely relevant section applicable to the subject claim limitation is
`recited in the specification as follows: “[i]f the supplied information
`matches the stored information, the user is authenticated and can use the call
`system call management system.” Ex. 1001, 48:57–60. Not finding explicit
`description of the claim limitation in the ’250 Patent, we may turn to
`extrinsic sources to determine how the claim term would have been
`understood by one of ordinary skill in the art.
`With respect to the level of ordinary skill in the art, Petitioner asserts
`that such a person “would have held at least a bachelor’s degree in electrical
`engineering, computer engineering, or a similar field, and had at least two
`years of experience (or the academic equivalent) working with speaker-
`dependent voice recognition in the context of telecommunications.” Pet. 7
`(citing Ex. 1002 ¶¶ 38–41). Patent Owner does not offer an alternate
`characterization at this time. As such, we adopt Petitioner’s statement of the
`level of ordinary skill in the art for purposes of this decision.
`Hence, we determine that “match” would have been understood as
`determining whether two data items are identical or finding a data item that
`is identical to a key. See Ex. 3001. Furthermore, we determine that
`“substantially” would have been understood as to a great or significant
`extent, or for the most part or essentially. See Ex. 3002. Therefore, we
`determine that the broadest reasonable construction, consistent with and in
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`the context of the specification, of “substantially matches” is “determining
`whether two data items are for the most part or essentially identical.” See
`also Verve v. Crane Cams, 311 F.3d 1116, 1120 (Fed. Cir. 2002)
`(“Expressions such as “substantially” are used in patent documents when
`warranted by the nature of the invention, in order to accommodate the minor
`variations that may be appropriate to secure the invention.”)); see, e.g.,
`Ecolab Inc. v. Envirochem, Inc., 264 F.3d 1358, 1367 (Fed. Cir. 2001)
`(explaining that “like the term ‘about,’ the term ‘substantially’ is a
`descriptive term commonly used in patent claims to avoid a strict numerical
`boundary to the specified parameter”) (citation omitted).
`Although Petitioner does not proffer an explicit construction for the
`claim term “substantially matches,” Petitioner does argue that the prior art
`discloses “both exact matches and matches that deviate from exact matches
`by predetermined amounts.” Pet. 29 (citing Ex. 1002 ¶ 74). Therefore, we
`are persuaded that Petitioner is implicitly applying a claim construction of
`“substantially matches” that comports with the broadest reasonable
`construction determined herein.
`B. Patent Owner’s Arguments Regarding Petition
`Patent Owner raises arguments about the grounds raised in the
`Petition, but does not address the substantive teachings of the cited
`references nor the arguments regarding obviousness presented in Petitioner’s
`grounds. See Prelim. Resp. Rather, Patent Owner argues 1) that the first
`two grounds should be denied under 35 U.S.C. § 325(d); 2) that the Petition
`impermissibly challenges the claims under 35 U.S.C. § 112; 3) that the
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`grounds rely on a speculative claim construction; and 4) that the Petition’s
`“intermediate preamble” theory lacks legal authority and fails to set forth its
`challenge to claim 1 “with particularity.” Id. at 4–16. We address each in
`turn, prior to addressing substantively the proffered grounds of
`unpatentability to determine whether the Petitioner has met the threshold for
`institution.
`
`1. 35 U.S.C. § 325(d)
`Patent Owner argues that “[t]he Board should exercise its discretion
`under 35 U.S.C. § 325(d) to deny Grounds 1 and 2 of the Petition because
`‘the same or substantially the same prior art or arguments previously were
`presented to the Office.’” Prelim. Resp. 4.
`Petitioner acknowledges that Otto and Gainsboro were cited “among
`the over 360 ‘References Cited’ in the ’250 patent” but that “there is no
`evidence the Examiner substantively addressed either of these references
`during prosecution of the ’250 patent.” Pet. 65 (citing Ex. 1001, [56]
`“References Cited”; Ex. 1004 (Prosecution history of the application that
`issued as the ’250 patent)). Petitioner also acknowledges that the Examiner
`“cited San Martin as an anticipatory reference under § 102(3) for various
`then-pending claims.” Id. at 65–66 (citing Ex. 1004, 217). Petitioner
`contends that the Examiner withdrew the § 102(e) rejection in view of
`Applicant’s amendments, including the addition of a new claim that would
`become issued claim 7. Id. at 66 (citing Ex. 1004, 289). Moreover,
`Petitioner contends that, in contrast to the Examiner’s reliance on San
`Martin during prosecution, Petitioner here “cites San Martin in the context
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`of claims 7 and 16–20 to demonstrate that one of ordinary skill would have
`understood at the time of the alleged invention how to advantageously refine
`a voiceprint with samples of higher confidence.” Id. Petitioner concludes
`that its asserted “grounds are not cumulative of issues previously presented
`and considered by the Office.” Id.
`Patent Owner argues that Petitioner has acknowledged that the Office
`has previously considered most of the proffered prior art, as well as having
`applied San Martin in an anticipation rejection, and that Petitioner’s reasons
`to reconsider the prior art are flawed. Id. (citing Pet. 4, 65–66; Ex. 1004,
`217). Patent Owner disputes that the Examiner did not consider the instant
`prior art references during prosecution, as well as disputing that the
`arguments presented in the grounds of unpatentability are entirely different
`from the arguments considered by the examiner, because Otto is cumulative
`with San Martin. Id. at 4–7. We do not agree.
`As quoted by Patent Owner, 35 U.S.C. § 325(d) addresses whether
`“the same or substantially the same prior art or arguments previously were
`presented to the Office.” To evaluate this criterion, we examine what
`arguments and art were presented to and considered by the Examiner during
`prosecution. Although Otto was considered by the Examiner (Ex. 1004, 243
`indicates Otto was included in an Information Disclosure Statement by the
`Applicant), the Examiner did not rely on Otto in any rejection of the issued
`claims in view of Otto. We are further persuaded that the Examiner has not
`been shown to have considered Otto in the instant context, i.e., with claims
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`being argued as being obvious over Otto and with declaration testimony
`opining that the claims would have been obvious over Otto (Ex. 1002).
`Patent Owner also faults Petitioner for not distinguishing Otto from
`San Martin (Prelim. Resp. 7), but it is not necessarily incumbent on a
`petitioner to distinguish the disclosures of newly applied and previously
`applied prior art references. Patent Owner points out similarities in the
`disclosures of Otto and San Martin (id. at 6–7), but does not demonstrate
`what similar portions of Otto and San Martin would have been considered in
`finding certain claims allowable. See Ex. 1004, 219. Such a consideration is
`important because Patent Owner incorporated the allowable subject matter
`into the independent claims to gain allowance. See Ex. 1004, 290. At this
`stage of the proceedings, we are persuaded that that there is a reasonable
`likelihood that Petitioner would prevail in showing the subject matter of the
`independent claims are taught or suggested by Otto, and as discussed below,
`we are not persuaded that the disclosures of Otto and San Martin are
`necessarily cumulative.
`2. Alleged Challenges Under 35 U.S.C. § 112
`Patent Owner also argues that Petitioner impermissibly challenges the
`claims under § 112, which is outside the scope of the instant proceeding, and
`that “the Board is unable to properly assess the scope of the claims, and is
`therefore ill-equipped to assess the validity of the claims under § 102 or
`§ 103.” Prelim. Resp. 9. Patent Owner continues that “Petitioner’s admitted
`failure to identify the scope and meaning of the claims demonstrates that the
`Petition’s grounds of unpatentability are fatally flawed because they ‘rely[]
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`on what at best are speculative assumptions as to the meaning of the
`claims.’” Id. at 9–10 (citing In re Steele, 305 F.2d 859, 863 (C.C.P.A.
`1962)). We do not agree.
`As discussed above, we are not persuaded that Petitioner is arguing
`that the claims be found to be indefinite, as a part of this proceeding, and we
`are persuaded that Petitioner has applied a consistent construction of the
`disputed claim term. Although Petitioner cites to Nautilus, Inc. v. Biosig
`Instruments, Inc. 134 S. Ct. 2120, 2129 (2014) (Pet. 8), we are persuaded
`that the proper criterion for determining definiteness is that “[a] claim is
`indefinite when it contains words or phrases whose meaning is unclear,” or
`that “claims are required to be cast in clear ― as opposed to ambiguous,
`vague, indefinite ― terms.” See Ex parte McAward, Appeal No. 2015-
`006416, slip op. at 11 (PTAB Aug. 25, 2017) (precedential) (citing In re
`Packard, 751 F.3d 1310, 1314, 1313 (Fed. Cir. 2014)). Based on the claim
`construction proffered above, we are not persuaded that the claim limitation
`“substantially matches” renders the claims indefinite. Similarly, we do not
`agree that the grounds of unpatentability are “fatally flawed,” as argued by
`Patent Owner.
`
`3. Alleged Speculative Claim Construction
`Patent Owner argues, similar to its arguments discussed above, that
`we should deny the Petition “because the Petition’s grounds of
`unpatentability rely on a speculative claim construction of the term
`‘substantially matches,’ which is recited in each of the independent claims.”
`Prelim. Resp. 10. As discussed above, we are not persuaded that the Petition
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`relies upon speculations and assumptions, that would provide an unreliable
`base for findings of unpatentability over prior art. Rather, we are persuaded
`that Petitioner has applied a consistent construction of the disputed claim
`term, without the alleged speculation.
`4. The Petition’s “Intermediate Preamble” Theory / Mapping
`Patent Owner also argues that a petition must identify with
`particularity how a challenged claims is to be construed, and the instant
`Petition fails in that regard because it fails to properly construe “a database,”
`“a control platform,” and “an authentication module.” Prelim. Resp. 12.
`Patent Owner argues that the Petition refers to particular claim elements as
`“intermediate preamble[s],” and does not provide a clear mapping of the
`subject claim elements to Otto, reading multiple claim elements onto the
`same disclosed portion of Otto’s system. Id. at 13–16. We are not
`persuaded that either argument is fatal to the Petition.
`Although we have reviewed Petitioner’s discussion of “intermediate
`preamble[s],” we are not persuaded that elements of claim 1 must be
`considered as such. We evaluate each element of claim 1 as an element of
`the claims, and not as a preamble, upon which any determination need to be
`made if it is limiting. In addition, the Petition provides alternative
`disclosures for the elements its considers “intermediate preamble[s]” (Pet.
`15–16, 23–25), such that we consider those disclosures below in determining
`the efficacy of the ground of unpatentability. As well, as discussed below,
`we are persuaded that the Petition has mapped claim 1 adequately onto the
`disclosures of Otto. With respect to any overlap, at this stage of the
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`proceeding, we are persuaded by Petitioner’s discussion of overlapping
`functions and how they would lend themselves to implementation with
`similar or the same hardware. Pet. 24–25. Thus, we are not persuaded that
`either argument is fatal to the Petition.
`
`C. Asserted Ground of Obviousness over Otto
`Petitioner asserts that claims 1–6 and 8–15 are unpatentable under
`35 U.S.C. § 103 over Otto. Pet. 9–43. To support its contentions and
`relying on the declaration testimony of Mr. Stuart J. Lipoff, Petitioner
`provides analysis explaining how the cited reference would have conveyed
`to one of ordinary skill in the art the claim limitations and provides reasons
`why one of ordinary skill in the art would have modified the teachings,
`where applicable. Id. (citing Ex. 1002). We begin with a discussion of Otto,
`and then discuss the proffered rationales to modify Otto to reach the subject
`claims.
`
`1. Otto
`Otto is directed to a speaker verification system that uses a user’s
`voiceprint in addition to a name and/or Personal Identification Number
`(PIN) to verify the user before granting access to a secure system. Ex. 1005,
`Abs. The system first requires a registration process, where a user inputs the
`required “user identification data,” which can be in the form of a name or
`PIN and are used thereafter as a sort key. Id. at 4:46–53, 5:18–23, 5:66–6:3.
`The data also include the voiceprint of the user, referred to as a “voice print
`identifying phrase,” where both the sort key and the voiceprint identifying
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`phrase are indexed together and stored in a database. Id. at 4:48–53, 5:18–
`20, Figs. 2–3.
`When a user wants to remotely access the secure telephone system,
`the system determines whether to grant the user access using a process that
`begins with a user establishing a call connection to the secure system. The
`user then provides either a single voice input, which consists of both the sort
`key and a voice print identifying phrase, or separately provides a sort key
`and voice print identifying phrase. Id. at 2:27–30, Fig. 2. This process is
`illustrated in Figure 2, reproduced below.
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`Otto discloses that the spoken words are “converted by a voice to text
`conversion system into a text string” and used as a sort key. Id. at 2:30–32,
`Fig. 2. The text string is then used to sort through the stored voice print data
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`to locate the one, or a small subset thereof, of the stored voice print
`identification phrases that use the sort key. Id. at 2:32–36, Fig. 2. Finally,
`the system uses the voice print identification phrase to “verify” the identity
`of the user by comparing the stored phrase with the user’s voiceprint to
`determine if there is a match. Id. at 2:36–38, 5:52–56, Fig. 2.
`Otto also explains that the database lookup process seeks both exact
`matches and phonetically close entries:
`The processor 105 typically would not only look for exact
`matches between the stored sort keys and the text string output
`by the voice to text conversion system 112, but also phonetically
`close entries, to compensate for any inaccuracy in the text
`generation process. Thus, all sort key entries that differ from the
`text string by less than a predetermined amount are candidates
`for the voice print identification process. The accuracy of this
`presort operation can be regulated by adjusting the [cl]oseness of
`the match that is required for a sort key to be classified as a match
`candidate. This would still produce only a limited number of
`matches and serve the purpose of the system for improved voice
`print identification 100. If no match is determined, the process
`can either be repeated with a less distinct text comparison, or
`default to the processing of the voice print identification phrase
`without presorting the database entries.
`Id. at 5:27–38.
`
`2. Consideration and Modification of Otto
`With respect to claim 1, Petitioner argues that several portions of
`claim 1 are “intermediate preamble[s]” that do not limit the claim because
`they “merely provide[] a descriptive name for a set of claim limitations.”
`Pet. 15. See also Pet. 23 (with respect to the “authentication module”
`limitation). As discussed above, we are not persuaded that we need to
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`consider Petitioner’s theory because Petitioner has provided support for the
`subject limitations being taught or suggested by Otto. Id. We prefer to view
`each element of the claim as limiting, and thus, do not endorse Petitioner’s
`treatment of “intermediate preamble[s].”
`With respect to the limitation “control platform” of claim 1, Petitioner
`argues that one of ordinary skill would have understood that the “control
`platform” comprises “at least the elements of the voice print identification
`system that allows a user to input biometric data and identifying
`information, and that stores both the biometric data and identifying
`information in the database.” Id. at 16. Petitioner contends that the system
`of Otto includes all of the features necessary for providing the relevant
`control aspects of a control platform, pointing to input ports 101, buffer 114,
`database 113, processor 105, and voice-to-text conversion 112, illustrated in
`Fig. 1. Id. We are persuaded that these aspects of Otto’s system are
`sufficient to demonstrate a “control platform,” as recited in claim 1, for
`purposes of institution.
`With respect to the limitation “authentication module” of claim 1,
`Petitioner argues that one of ordinary skill would have understood that the
`“authentication module” comprises the elements of the voiceprint
`identification system that allow a user to perform all of the steps necessary
`to authenticate a user. Id. at 24. Petitioner contends that the system of Otto
`includes all of the features necessary for providing the relevant
`authentication features, pointing to input ports 101, switch 106, buffer 114,
`database 113, processor 105, voice print identification 111, and voice-to-text
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`conversion 112, illustrated in Fig. 1. Id. We are persuaded that these
`aspects of Otto’s system are sufficient to demonstrate an “authentication
`module,” as recited in claim 1, for purposes of institution.
`Also with respect to claim 1, Petitioner argues that Otto discloses
`obtaining the user’s name, which can be used as a sort key, and that one of
`ordinary skill in the art would have understood that the “user identification
`data,” provided during registration, include at least the user’s name. Pet. 20
`(citing Ex. 1005, 4:62–5:11; Ex. 1002 ¶ 63). Petitioner makes similar
`arguments for provision of the PIN. Id. We agree with Petitioner that it
`would have been obvious and beneficial to collect the user’s name and PIN
`at registration for sake of efficiency. See id. at 20–22.
`Petitioner also argues that although Otto focuses on the user’s name as
`a sort key, it would have been an obvious modification to use the PIN as a
`sort key because Otto does not limit its sort keys to only user names. Id. at
`29 (citing Ex. 1005, 4:62–64; 1002 ¶ 75). We agree with Petitioner that one
`of ordinary skill in the art would have been motivated to sort based on a
`user’s PIN because it is often less subject to overlap than names. See id. at
`29–30.
`After review of Petitioner’s assertions with respect to claim 1, we are
`persuaded that the current record supports Petitioner’s assertions and we are
`satisfied there is a reasonable likelihood that the Petitioner would prevail
`with respect to showing the obviousness of claim 1 over Otto, for purposes
`of institution. With respect to dependent claims 2–6, 8, and 9, we have
`reviewed Petitioner’s assertions and arguments regarding the claim
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`limitations and the disclosure Otto, and we are persuaded that the current
`record supports Petitioner’s assertions and we are satisfied there is a
`reasonable likelihood that the Petitioner would prevail with respect to
`showing the obviousness of claims 2–6, 8, and 9, for purposes of institution.
`See id. at 35–40.
`With respect to independent claim 10, Petitioner demonstrates
`correspondences between the elements of claims 1 and 10, and argues that
`the same proof of unpatentability applied to claim 1 is applicable to claim
`10. Id. at 40–41. We agree and we are satisfied there is a reasonable
`likelihood that the Petitioner would prevail with respect to showing the
`obviousness of claim 10 over Otto. With respect to dependent claims 11–15,
`Petitioner demonstrates the similarities of those claims to dependent claims
`2–6, and we are persuaded that there is a reasonable likelihood that the
`Petitioner would prevail with respect to showing the obviousness of claims
`11–15. See id. at 41–43.
`
`3. Conclusion
`On the present record and for purposes of institution, Petitioner has
`made a sufficient showing that Otto as modified would have conveyed to
`one of ordinary skill in the art the limitations of the claims 1–6 and 8–15,
`and has provided a sufficient reason one of ordinary skill in the art would
`have modified Otto to teach or suggest the limitations of the claims. For the
`foregoing reasons, we determine that the information presented in the
`current record, Petitioner establishes a reasonable likelihood that it would
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`prevail in showing claims 1–6 and 8–15 are unpatentable for obviousness
`over Otto.
`D. Asserted Ground of Obviousness over Otto, Gainsboro, and San Martin
`Petitioner asserts that claims 7 and 16–20 are unpatentable under
`35 U.S.C. § 103 over Otto, Gainsboro, and San Martin. Pet. 43–54. To
`support its contentions and relying on the declaration testimony of Mr.
`Lipoff, Petitioner provides analysis explaining how the cited reference
`would have conveyed to one of ordinary skill in the art the claim limitations
`and provides reasons why one of ordinary skill in the art would have
`modified the teachings, where applicable. Id. (citing Ex. 1002). We begin
`with a discussions of Gainsboro and San Martin, and then discuss the
`proffered rationales to modify Otto and combine the teachings of Otto,
`Gainsboro, and San Martin to reach the subject claims.
`1. Gainsboro
`Gainsboro is directed to a method and apparatus for managing
`institutional telephone activity, including call restrictions and privileges and
`call recording. Ex. 1006, Abs. Gainsboro seeks to “ensure that no
`unauthorized callers are participating in a call, and to ensure that inmates are
`not sharing or selling relatively liberal calling privileges associated with a
`particular PIN or inmate account to other inmates that are subject to more
`limited calling privileges.” Id. at 5:24–29. Gainsboro uses biometric voice
`verification to prevent authorized inmates from being forced to provide
`calling privileges. Id. at 5:29–37. Gainsboro also details that “biometric
`monitoring may also be used in a passive call monitoring mode, wherein
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`periodic samples of the caller’s voice are provided . . . to ensure that no
`unauthorized callers are participating in a call.” Id. at 5:22–25.
`2. San Martin
`San Martin is directed to a method and apparatus for enrolling a user
`for voice recognition that utilizes multiple inputs by a speaker to further
`refine the user’s voiceprint. Ex. 1007, Abs. San Martin provides that “[i]f
`the extracted voiceprint matches with sufficient confidence . . . , the
`extracted voiceprint may be optionally used to refine 422 the stored
`voiceprint for the matching account number and the refined voiceprint is
`stored in place of it.” Id. at 11:18–22. San Martin discloses that this process
`allows for more secure and accurate speak verification. Id. at 2:14–19.
`3. Proposed Combination of Otto, Gainsboro, and San Martin
`Petitioner argues that one of ordinary skill also would have had a
`reasonable expectation of success in combining the monitoring system of
`Gainsboro with the speaker verification system of Otto. Pet. 45. Petitioner
`argues that the same hardware would be used by both, and the benefits of
`Gainsboro’s monitoring of audio during the phone call through periodic
`sampling would accrue to the combined system.
`With respect to San Martin, Petitioner argues that one of ordinary skill
`would have understood that the ability to further refine a voiceprint and
`improve the accuracy of the speaker verification process would improve the
`security of the system derived from the combination of Otto and Gainsboro
`and its ability to control access to a telephone system. Id. at 46 (citing Ex.
`1002 ¶ 110).
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