`
`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 IPR2017-01279
`U.S. Patent No. 9,509,856
`_________________________
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,509,856
`
`
`
`
`
`

`

`Case IPR2017-01279
`U.S. Patent No. 9,509,856
`
`
`TABLE OF CONTENTS
`
`I.
`
`
`II.
`
`
`Introduction ...................................................................................................... 1
`
`Statement of Precise Relief Requested for Each Claim Challenged ............... 2
`
`A.
`
`
`B.
`
`
`Claims for Which Review Is Requested ............................................... 2
`
`Statutory Grounds.................................................................................. 2
`
`III.
`
`
`’856 Patent Prosecution History ...................................................................... 4
`
`
`
` The Level of Ordinary Skill in the Art ............................................................ 5 IV.
`
`V.
`
`
`Claim Construction - “Complete the Telephone Call” .................................... 6
`
` Ground 1: Swope and Falcone, in View of O’Neil or Rae, Render VI.
`
`
`Obvious Claims 1-3, 6-9, 11-13, 15-18, and 20 .............................................. 7
`
`
`
` Overview of Swope ............................................................................... 7 A.
`
`
`
` Overview of Falcone ............................................................................. 9 B.
`
`C.
`
`
`D.
`
`
`Rationale to Combine Swope and Falcone .........................................12
`
`Swope and Falcone, in View of O’Neil or Rae, Teach Each
`Feature of Claims 1-3, 6-9, 11-13, 15-18, and 20 ...............................17
`
` Ground 2: Swope and Falcone, in View of O’Neil or Rae, and Further VII.
`
`
`in View of Schwartz, Render Obvious Claims 4, 5, and 10 ..........................53
`
`
`
` Overview of Schwartz .........................................................................53 A.
`
`B.
`
`
`C.
`
`
`Rationale to Combine Schwartz with Swope and Falcone .................54
`
`Swope and Falcone, in View of O’Neil or Rae, and Further in
`View of Schwartz, Teach Each Feature of Claims 4, 5, and 10 ..........56
`
` Ground 3: Swope and Falcone, in View of O’Neil or Rae, and Further VIII.
`
`
`in View of Gainsboro, Render Obvious Claims 14 and 19 ..........................61
`
`
`
` Overview of Gainsboro .......................................................................61 A.
`
`–ii–
`
`

`

`Rationale to Combine Gainsboro with the Swope/Falcone
`System .................................................................................................63
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`Case IPR2017-01279
`U.S. Patent No. 9,509,856
`
`
`Swope and Falcone, in View of O’Neil or Rae, and Further in
`View of Gainsboro, Teach Each Feature of Claims 14 and 19 ..........65
`
`B.
`
`
`C.
`
`
`
`
` Mandatory Notices Under 37 C.F.R. § 42.8 ..................................................67 IX.
`
`A.
`
`
`B.
`
`
`C.
`
`
`D.
`
`
`Real Party-in-Interest ..........................................................................67
`
`Related Matters ....................................................................................67
`
`Lead and Backup Counsel ...................................................................67
`
`Service Information .............................................................................68
`
`
`
` Grounds for Standing .....................................................................................68 X.
`
`
`
` Conclusion .....................................................................................................68 XI.
`
`
`
`
`
`–iii–
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`

`

`Case IPR2017-01279
`U.S. Patent No. 9,509,856
`
`
`LIST OF EXHIBITS
`
`Exhibit 1001
`
`U.S. Patent No. 9,509,856 to Heaton et al. (“the ’856 patent”)
`
`Exhibit 1002
`
`Declaration of Stuart J. Lipoff
`
`Exhibit 1003
`
`Curriculum Vitae of Stuart J. Lipoff
`
`Exhibit 1004
`
`Prosecution History Excerpts of U.S. Patent No. 9,509,856
`
`Exhibit 1005
`
`U.S. Patent No. 6,639,977 to Swope et al. (“Swope”)
`
`Exhibit 1006
`
`U.S. Patent No. 7,042,992 to Falcone et al. (“Falcone”)
`
`Exhibit 1007
`
`U.S. Patent No. 6,226,364 to O’Neil (“O’Neil”)
`
`Exhibit 1008
`
`U.S. Patent No. 7,899,167 to Rae (“Rae”)
`
`Exhibit 1009
`
`U.S. Patent No. 6,668,044 to Schwartz et al. (“Schwartz”)
`
`Exhibit 1010
`
`U.S. Patent No. 7,106,843 to Gainsboro et al. (“Gainsboro”)
`
`Exhibit 1011
`
`U.S. Publication No. 2005/0125411 to Kilian et al. (“Kilian”)
`
`Exhibit 1012
`
`U.S. Patent No. 6,134,660 to Boneh et al. (“Boneh”)
`
`Exhibit 1013
`
`Amended Complaint for Patent Infringement, Global Tel*Link
`Corp. v. Securus Techs., Inc., No. 3:16-cv-01338-K (N.D. Tex.,
`Jan. 9, 2017)
`
`
`
`
`
`
`
`–iv–
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`Case IPR2017-01279
`U.S. Patent No. 9,509,856
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Statutes
`
`35 U.S.C. § 102(a) ..................................................................................................... 3
`
`35 U.S.C. § 102(b) ..................................................................................................... 3
`
`35 U.S.C. § 102(e) ................................................................................................. 3, 4
`
`35 U.S.C. § 103 ...................................................................................................... 4, 7
`
`35 U.S.C. § 311 .......................................................................................................... 2
`
`35 U.S.C. § 311(c) ................................................................................................... 68
`
`35 U.S.C. § 315(b) ................................................................................................... 68
`
`
`
`Regulations
`
`37 C.F.R. § 42.8 ....................................................................................................... 67
`
`37 C.F.R. § 42.100(b) ................................................................................................ 6
`
`37 C.F.R. § 42.104(a) ............................................................................................... 68
`
`
`
`Other Authority
`
`Office Patent Trial Practice Guide,
`77 Fed. Reg. 48756 (Aug. 14, 2012) .................................................................... 6
`
`
`
`–v–
`
`

`

`Introduction
`Securus Technologies, Inc. requests inter partes review of claims 1-20 of
`
`Case IPR2017-01279
`U.S. Patent No. 9,509,856
`
`
`I.
`
`
`U.S. Patent No. 9,509,856 (“the ’856 patent”) (Ex. 1001). The ’856 patent
`
`discloses ways of connecting and billing reverse-charge calls, which are commonly
`
`referred to as “collect calls.” (Ex. 1001 at Abstract.) These calls allow a calling
`
`party to shift payment for the call to the person they seek to reach. As the ’856
`
`patent acknowledges, penal
`
`institutions and other controlled
`
`institutional
`
`environments routinely implement this billing arrangement in their telephone
`
`systems to ensure payment. (Ex. 1001 at 1:21-36.) However, some service
`
`providers for called parties may limit their ability to receive collect calls, while
`
`others are unwilling or unable to pursue their customers to collect on unpaid debts.
`
`(See id. at 1:37-60.) As a result, according to the ’856 patent, controlled institutions
`
`had to choose between blocking collect calls to certain destination phone numbers
`
`(requiring the calling party to pay for the calls) or accepting the risk that the called
`
`party may never pay for the call. (See id. at 1:30-2:5.)
`
`The ’856 patent attempts to address these issues by allowing a called party to
`
`set up a prepaid account to cover charges for the call. (See, e.g., id. at 11:11-41.)
`
`When certain conditions are met, the called party can create the account in real
`
`time while the calling and called parties are attempting to complete the telephone
`
`call. The system completes the call once the called party establishes a new account,
`
`–1–
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`Case IPR2017-01279
`U.S. Patent No. 9,509,856
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`guaranteeing or increasing the likelihood that the telecommunications service
`
`provider will be able to collect payment for the call. Using this technique, service
`
`providers have the option of allowing calls that they previously would have
`
`blocked due to the low likelihood of collecting payment. This technique, however,
`
`was obvious as of the ’856 patent’s priority date.
`
`Systems such as those disclosed in Swope (Ex. 1005) and Falcone
`
`(Ex. 1006) already provided the ability for called parties to use prepaid accounts
`
`for collect calls, and Falcone allowed a called party to create an account in real
`
`time if one did not already exist. As explained in detail below, these prior art
`
`systems and others render obvious every technique claimed in the ’856 patent.
`
`II.
`
`
`Statement of Precise Relief Requested for Each Claim Challenged
`
` Claims for Which Review Is Requested A.
`Petitioner respectfully requests review under 35 U.S.C. § 311 of claims 1-20
`
`of the ’856 patent and cancellation of those claims as unpatentable.
`
`Statutory Grounds
`
`B.
`
`Claims 1-20 of the ’856 patent are unpatentable and should be canceled in
`
`view of the following prior art references and grounds.
`
`–2–
`
`

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`Case IPR2017-01279
`U.S. Patent No. 9,509,856
`
`
`Prior Art References
`
`Ref. 1:
`
`Swope, U.S. Patent No. 6,639,977 (Ex. 1005); issued October 28,
`
`2003; filed in the United States on August 17, 2000; prior art under
`
`at least pre-AIA 35 U.S.C. §§ 102(a) and 102(e).
`
`Ref. 2: Falcone, U.S. Patent No. 7,042,992 (Ex. 1006); issued May 9, 2006;
`
`filed in the United States on February 7, 2003; prior art under at least
`
`pre-AIA 35 U.S.C. § 102(e).
`
`Ref. 3: O’Neil, U.S. Patent No. 6,226,364 (Ex. 1007); issued May 1, 2001;
`
`filed in the United States on December 8, 1997; prior art under at
`
`least pre-AIA 35 U.S.C. §§ 102(a), 102(b), and 102(e).
`
`Ref. 4: Rae, U.S. Patent No. 7,899,167 (Ex. 1008); issued March 1, 2011;
`
`filed in the United States on August 15, 2003; prior art under at least
`
`pre-AIA 35 U.S.C. § 102(e).
`
`Ref. 5:
`
`Schwartz, U.S. Patent No. 6,668,044 (Ex. 1009); issued December
`
`23, 2003; filed in the United States on July 19, 2000; prior art under
`
`at least pre-AIA 35 U.S.C. §§ 102(a) and 102(e).
`
`–3–
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`

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`Case IPR2017-01279
`U.S. Patent No. 9,509,856
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`
`Prior Art References
`
`Ref. 6: Gainsboro, U.S. Patent No. 7,106,843 (Ex. 1010); issued September
`
`12, 2006; filed in the United States on August 31, 1998; prior art
`
`under at least pre-AIA 35 U.S.C. § 102(e).
`
`
`
`Ground
`
`1
`
`2
`
`Grounds of Unpatentability
`
`Swope and Falcone in view of O’Neil or Rae renders obvious claims
`
`1-3, 6-9, 11-13, 15-18, and 20 under 35 U.S.C. § 103.
`
`Swope and Falcone in view of O’Neil or Rae, and further in view of
`
`Schwartz, renders obvious claims 4, 5, and 10 under
`
`35 U.S.C. § 103.
`
`3
`
`Swope and Falcone in view of O’Neil or Rae, and further in view of
`
`Gainsboro, renders obvious claims 14 and 19 under 35 U.S.C. § 103.
`
`
`’856 Patent Prosecution History
`
`III.
`
`
`The ’856 patent was filed on April 17, 2015, as U.S. Patent Application No.
`
`14/689,521. Its earliest claimed priority date is April 27, 2004.
`
`–4–
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`In response to the first Office Action, which rejected all claims as
`
`anticipated by U.S. Patent No. 6,836,540, the Applicant amended the claims to
`
`include establishing a new account in real time while the calling party and the
`
`called party are attempting to complete the telephone call and “then complete the
`
`telephone call once a new account has been established.” (Ex. 1004 at 185-191;
`
`Ex. 1001 at 11:31-38.) The Examiner allowed the application to issue because:
`
`[T]he prior art of record fails to disclose or specifically
`suggest[] direct[ing] the telephone management system
`to establish a new account associated with the cellular
`telephone number in real time while the calling party and
`the called party are attempting to complete the telephone
`call and then complete the telephone call once a new
`account has been established in response to determining
`that when the cellular telephone number is not associated
`with [] an account and is billable.
`
`(Ex. 1004 at 206-207.) The prior art, however, taught or suggested this feature and
`
`the other claimed features, rendering the claims obvious for the reasons explained
`
`below.
`
` The Level of Ordinary Skill in the Art IV.
`
`
`A person of ordinary skill at the time of the alleged invention of the ’856
`
`patent would have held at least a Bachelor’s Degree in Electrical Engineering,
`
`Computer Engineering, or the equivalent, and two or more years of industry
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`–5–
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`experience in the relevant field, or the academic equivalent thereof. Such a person
`
`would have been familiar with the standard components and methods used at the
`
`time of the alleged invention of the ’856 patent for processing collect calls.
`
`(Ex. 1002 ¶¶ 31-33.)
`
` Claim Construction - “Complete the Telephone Call” V.
`
`
`A claim in an unexpired patent subject to inter partes review “shall be given
`
`its broadest reasonable construction in light of the specification of the patent in
`
`which it appears.” 37 C.F.R. § 42.100(b). The construction provided below is
`
`solely for purposes of this proceeding. Claim terms not addressed below should be
`
`given their plain and ordinary meaning under the broadest reasonable interpretation
`
`standard. 37 C.F.R. § 42.100(b); Office Patent Trial Practice Guide, 77 Fed. Reg.
`
`48756, 48764 (Aug. 14, 2012).
`
`The phrase “complete the telephone call” appears in each independent claim
`
`(claims 1, 9, and 15) and is separately recited in several dependent claims (claims
`
`3, 4, and 20). The ’856 patent expressly defines this term in its specification,
`
`stating that “the call is completed (i.e., the called party and the calling party can
`
`converse) . . . .” (Ex. 1001 at 10:59-61.) Based on this express definition, one of
`
`ordinary skill would understand that, in the context of the ’856 patent, “complete
`
`the telephone call” means establishing a connection such that the called party and
`
`the calling party can converse. (Ex. 1002 ¶¶ 34-36.)
`
`–6–
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`

`

`Case IPR2017-01279
`U.S. Patent No. 9,509,856
`
`
` Ground 1: Swope and Falcone, in View of O’Neil or Rae, Render
`VI.
`Obvious Claims 1-3, 6-9, 11-13, 15-18, and 20
` Overview of Swope
`A.
`Swope discloses a system “that allows a calling party to call a destination
`
`number and, upon approval of the called party, reverse the billing of the telephone
`
`call so that it is deducted from an account owned and maintained by the called
`
`party.” (Ex. 1005, Abstract.) To decide whether to complete the call, Swope first
`
`“looks up the destination number in its tables to see if calls are permitted to the
`
`destination number.” (Id. at 4:67-5:1.) It may then “determine other information
`
`related to the destination number,” such as whether the called party has notified its
`
`telecommunications provider that no collect calls will be accepted at that number
`
`(referred to as “collect denied”). (Id. at 5:6-10.)
`
`If the “destination number is declared to be invalid,” the call is terminated or
`
`the system requests an alternative destination number. (Id. at 5:11-16.) But if the
`
`number is not declared invalid, the called party is “prompted to accept or reject the
`
`call.” (Id. at 5:24-25.) If the call is accepted, “the called party is prompted . . . for a
`
`method of payment, an account number and an optional Customer Identification
`
`and Verification (CIV), such as a Personal Identification Number (PIN).” (Id. at
`
`5:26-30.) Swope’s system then completes the call after verifying the account
`
`–7–
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`information and that the account has sufficient funds. (Id. at 5:31-6:19.) These
`
`operations, among others, are depicted in Swope’s Figures 3A and 3B below.
`
`To implement these functions, Swope provides an architectural overview in
`
`
`
`Figure 2, shown below.
`
`
`
`–8–
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`U.S. Patent No. 9,509,856
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`
`
`
`It includes originating and terminating devices 40 and 80, originating and
`
`terminating switches 50 and 70, a transit network 60, a processor 54, detection
`
`device 56, database 52, and “network of multiple databases 58.” (Id. at 3:55-4:28;
`
`see also Ex. 1002 ¶¶ 39-43.)
`
` Overview of Falcone
`B.
`Falcone discloses systems and methods for “providing account setup,
`
`management and transaction authorization determinations in real-time using
`
`transaction interrupt messaging.” (Ex. 1006 at Abstract.) Its system allows a called
`
`party to establish an account to prepay for services requested by another, such as
`
`collect telephone calls placed to the called party. (See, e.g., id. at 4:19-25, 9:50-62.)
`
`An exemplary embodiment of Falcone’s system is illustrated in its Figure 2,
`
`reproduced below.
`
`–9–
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`Case IPR2017-01279
`U.S. Patent No. 9,509,856
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`
`
`
`In Falcone, transaction processor 210 manages calls from originating party
`
`station 211 to end party station 240, which “may comprise any number of
`
`communication devices such as . . . cellular telephones . . . .” (Id. at 10:53-65.) The
`
`“parties at party stations 211 may be desirous of communicating with a party at
`
`end party station 240 by placing a collect call.” (Id. at 10:66-11:2.) To complete
`
`these calls, transaction processor 210 interacts with transaction validation engine
`
`220, which includes a prepaid accounting system 229. (Id. at 12:17-13:7.) The
`
`“[p]repaid accounting system 229 may be utilized in establishing, maintaining,
`
`and/or servicing accounts which are prepaid.” (Id. at 12:37-39.)
`
`–10–
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`When providing its calling services, Falcone first verifies whether call
`
`database 221 associates the called telephone number with a prepaid account. (Id. at
`
`13:22-31.) If not, the system allows the called party to establish a prepaid account
`
`to pay for the call. (Id. at 16:17-57.) To do so, “the called party is placed in
`
`communication with customer service center 230 to facilitate future calling
`
`services, e.g., establishment of an account” in step 321, depicted in the flow
`
`diagram of Figures 3A and 3B below. (Id. at 16:34-39.) The “customer service
`
`center 230 may comprise . . . live operators to interact with a party in facilitating
`
`calling services.” (Id. at 16:41-45.)
`
`
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`–11–
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`(Id. at Figs. 3A and 3B, annotated to show the process flow through branches A
`
`and B.) After an account is created, Falcone’s system may complete the call so the
`
`parties can converse with one another. (See, e.g., id. at 3:42-48; see also Ex. 1002
`
`¶¶ 44-47.)
`
` Rationale to Combine Swope and Falcone
`C.
`One of ordinary skill would have been motivated to extend Swope’s system
`
`to service cellular telephones, as taught by Falcone, to achieve several technical,
`
`financial, and user-experience advantages. For example, one of ordinary skill
`
`would have recognized that extending Swope’s system to call cellular telephones
`
`would increase the number of parties that the calling party could dial, resulting in
`
`fewer blocked calls and a decrease in the associated user frustration blocked calls
`
`typically cause. (Ex. 1002 ¶ 48.) Increasing the number of completed calls would
`
`also increase the number of calls generating revenue for the telecommunications
`
`service provider. (Id.) Falcone itself recognizes this benefit, stating that “blocked
`
`calls represent lost potential revenue and profit that the provider would have
`
`generated.” (Ex. 1006 at 2:52-53.) By extending Swope’s system to support calling
`
`cellular telephones, Swope would expand its revenue base at a time when the
`
`number of cellular phones in use began to drastically increase. (Ex. 1002 ¶ 48.)
`
`A skilled artisan also would have been motivated to incorporate Falcone’s
`
`new-account creation functions into Swope’s system. (Ex. 1002 ¶ 49.) Instead of
`
`–12–
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`ending a call and creating an account that can only be used on future calls,
`
`Falcone’s system allows called parties to create accounts when a called party does
`
`not have a pre-paid account but the line is otherwise billable. (Id.) One skilled in
`
`the art would recognize that doing so would result in both users being more
`
`satisfied with their experience because they could more quickly and easily
`
`complete their call so they could converse. (Id.)
`
`One of ordinary skill would also understand that creating accounts in the
`
`manner taught by Falcone would avoid the need for the calling party to dial the
`
`called party again at a later time, after the account is created. (Id. ¶ 50.) In a prison
`
`context, inmates often have limited times when they can place calls, so excessive
`
`delays in completing calls can result in the inmate losing the opportunity to place
`
`the call until another day. (Id.) For example, being able to immediately connect a
`
`family member that could post bond may mean the difference between being
`
`released from jail the same day, rather than unnecessarily spending multiple days
`
`in confinement, wasting the resources of the inmate and the correctional facility.
`
`(Id.) The result is a frustrated pair of parties to the communication and reduced
`
`revenue for the service provider on the day the call was originally placed, among
`
`other potential losses. (Id.)
`
`While these motivations based on Swope and Falcone alone would have
`
`been sufficient to motivate combining Falcone’s teachings into Swope, O’Neil’s
`
`–13–
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`teachings provide a further motivation to combine. (Id. ¶ 51.) Like Swope, O’Neil
`
`discloses a system and method to bill calls to a called party’s prepaid account. (See
`
`Ex. 1007 at 22:33-24:25.) And, as taught in Falcone, O’Neil’s prepaid accounts are
`
`tied to the called party’s cellular telephone. (Id.) O’Neil explains that cellular
`
`telephone providers prefer to use prepaid accounts because they “experience costly
`
`problems with postpaid accounts.” Id. at 2:46-51.) For example, due to their
`
`mobility, cellular telephones present the unique challenge of billing a roaming
`
`user. (Id. at 4:49-65.) Service providers to roaming cellular phones may take on
`
`added financial risk in providing post-paid service, including billing for received
`
`calls, because these cellular telephone users’ clearinghouse profiles may not be
`
`promptly updated. (Id. at 11:49-65, 12:51-64, 23:24-28; Ex. 1002 ¶ 51.)
`
`While the ’856 patent’s disclosure focuses on billing called parties for
`
`collect calls, the patent claims are more generally directed to billing a called party
`
`regardless of whether the call is reverse billed or some other type of transaction.
`
`(See, e.g., Ex. 1001 at 11:12-41; Ex. 1002 ¶ 52.) One of these other types of
`
`transactions is where a cellular phone provider wants to bill the called party but
`
`may have trouble doing so, such as when the called party is roaming on another
`
`provider’s network. (Ex. 1002 ¶ 53.) O’Neil explains this problem and identifies
`
`the need to extend prepaid calling features to cover called parties using cellular
`
`telephones. (See Ex. 1007 at 4:49-65, 11:49-65, 12:51-64, 23:24-28.) Based on
`
`–14–
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`Case IPR2017-01279
`U.S. Patent No. 9,509,856
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`O’Neil’s disclosure, one of ordinary skill would have been motivated to extend a
`
`billing platform like Swope’s to serve cellular telephones, such as in the manner
`
`disclosed in Falcone. (Ex. 1002 ¶ 53.) Therefore, O’Neil provides a further reason
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`to combine Swope and Falcone. (Id.)
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`Rae provides a separate motivation to combine Swope and Falcone because
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`it expressly incorporates their teachings by reference, (Ex. 1008 at 1:13-15,
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`1:25-27), and explains that a single system may incorporate both of their teachings,
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`(id. at 11:56-12:9, 12:24-39.) In particular, when discussing its “billing system
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`112,” Rae states that “[d]etail with respect to accounting, billing, and reconciliation
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`functionality is provided in ‘System and Method for Reverse Billing of a
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`Telephone Call,’” which refers to Swope. (Id. at 11:56-12:9; Ex. 1002 ¶ 54.) Two
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`paragraphs later, when describing the same “billing system 112,” Rae explains that
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`“embodiments of the present invention provide the ability to set up a call account
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`real-time” and that “[d]etail with respect to such functionality is shown in . . .
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`‘System and Method for Account Establishment and Transaction Management
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`Using Interrupt Messaging,’” which refers to Falcone. (Ex. 1008 at 12:32-39;
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`Ex. 1002 ¶ 54.) One of ordinary skill, therefore, would have understood that
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`combining Swope and Falcone would have been beneficial and feasible, as others
`
`in the art had already combined them. (Ex. 1002 ¶ 55.)
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`Case IPR2017-01279
`U.S. Patent No. 9,509,856
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`Regarding the technical aspects of the combination, one would have
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`recognized that Falcone’s prepaid account system (229), which handles account
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`creation and maintenance, as well as its customer service center (230), mirrors the
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`structure of Swope’s processor (54), including its connections with databases (52,
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`58). (Id. ¶ 56.) Rather than directing the switch to disconnect calls when no
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`account is associated with the telephone number, Swope would route the call to its
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`customer service agents, as is done in Falcone’s system, to set up a new prepaid
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`account. (Id.) And Swope’s live agents’ workstations would return an indication
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`confirming account setup to trigger Swope’s switch to complete the call, like in
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`Falcone’s system. (Id.) One skilled in the art would have had a reasonable
`
`expectation of success in combining these teachings, as they already independently
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`perform complementary functions and interface with similar systems in their
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`respective disclosures. (Id.)
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`Further, not only do Swope and Falcone exist in the same field of endeavor,
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`namely telephone payment systems, they also address the same problems, such as
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`how to implement collect calls with pre-paid accounts of called parties. (Id. ¶ 57.)
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`One skilled in the art would also recognize that nothing in Swope precludes this
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`combination. (Id.) Falcone’s teachings merely extend Swope’s system to perform
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`additional functions on which Swope is silent, such as calling parties using cellular
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`phones and setting up prepaid accounts for the called parties in real time. (Id.)
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`Case IPR2017-01279
`U.S. Patent No. 9,509,856
`
`
`D.
`
`
`Swope and Falcone, in View of O’Neil or Rae, Teach Each
`Feature of Claims 1-3, 6-9, 11-13, 15-18, and 20
`Claim 1
`i.
`
`“A telecommunications management system”
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`The Swope/Falcone system discloses the claimed “telecommunications
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`management system.” (Ex. 1002 ¶ 58.) It teaches “a system … that allows a calling
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`party to call a destination number and, upon approval of the called party, reverse
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`the billing of the telephone call.” (Ex. 1005 at Abstract; see also id. at 3:55-60,
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`4:3-5, 4:19-28.) As depicted in Figure 2 below, the system may include
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`“originating switch 50,” “processor 54,” “detection device 56,” “database 52,” and
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`“databases 58.” (Id. at 3:61-4:28.)
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`A skilled artisan would have understood this to be a system to manage
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`telecommunications because it controls administration of a call. (Ex. 1002 ¶ 58.)
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`
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`

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`“a telephone management system configured to
`telephone call from a calling party to a called party”
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`Case IPR2017-01279
`U.S. Patent No. 9,509,856
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`
`initiate a
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`The Swope/Falcone system discloses this feature at least through Swope’s
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`teaching that “[t]he processor 54 uses the collection and detection device 56 to
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`collect the entry of the destination number from the calling party.” (Ex. 1005 at
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`4:52-54.) Next, “the originating switch 50 routes the call through the transit
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`network 60 to the termination switch 70,” which connects to the called party using
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`terminating device 80. (Id. at 5:17-21.) Thus, Swope discloses receiving a
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`telephone number from a calling party to initiate a call from the calling party to a
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`called party who corresponds to the received telephone number. (Ex. 1002 ¶ 59.)
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`One of ordinary skill would recognize that at least originating switch 50, transit
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`network 60, and terminating switch 70 are part of a telephone management system,
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`as claimed, because these elements manage call connections. (Id.) For example,
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`when a party sends a request to initiate a call, the call is connected through at least
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`these three system elements. (Ex. 1005 at 4:19-28.)
`
`“the called party being associated with a cellular telephone
`number”
`
`The Swope/Falcone system discloses “the called party being associated with
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`a cellular telephone number.” (Ex. 1002 ¶ 60.) Swope discloses that “the
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`originating switch 50 utilizes processor 54 to prompt the calling party for the
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`destination number.” (Ex. 1005 at 4:49-50.) While Swope discloses that “[t]he
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`U.S. Patent No. 9,509,856
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`destination number is a 10-digit number of the destination that the calling party
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`wishes to reach” (Ex. 1005 at 4:51-52), it does not expressly state that the number
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`is a “cellular telephone number.” (Ex. 1002 ¶ 60.)
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`Falcone, however, discloses that its telephone management system is
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`configured to initiate calls between two parties where the “dialed number may be
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`associated with a number for which collect calling services are not typically
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`allowed by a telecommunication service provider, such as cell phones.” (Ex. 1006
`
`at 5:28-31, emphasis added; Ex. 1002 ¶ 61.)
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`If one were to read Swope as not already encompassing telephone numbers
`
`associated with cellular phones, one of ordinary skill would have been motivated to
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`extend Swope’s system to do so because it would increase the number of parties
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`that the calling party could dial. (Ex. 1002 ¶ 62.) The resulting system would
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`improve the customer experience by not refusing as many calls, and the service
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`providers would benefit from this modification because connecting additional calls
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`would increase the revenue generated by Swope’s system. (Id.; see also Ex. 1006 at
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`2:52-53, “blocked calls represent lost potential revenue and profit that the provider
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`would have generated.”) Indeed, before the earliest priority date of the ’856 patent,
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`the number of cellular phones in use began to drastically increase. (Ex. 1002 ¶ 62.)
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`Telecommunications service providers, wanting to increase revenue, sought to
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`Case IPR2017-01279
`U.S. Patent No. 9,509,856
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`extend their systems to be capable of receiving call requests for as many types of
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`communication lines as possible, including cellular telephones. (Id.)
`
`Nothing in Swope precludes its calls from being made to cell phones, and
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`allowing calls to cell phones helps achieve Swope’s stated objectives. (See, e.g.,
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`Ex. 1005 at 1:18-2:44 (describing prior art deficiencies and a summary of
`
`technology overcoming those deficiencies); Ex. 1002 ¶ 63.) For example, Swope
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`discloses that “a relative, friend, or business associate of a calling party, may have
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`an important need for establishing telephone communications with the calling
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`party that allows the called party to accept the cost of the call while maintaining
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`ownership and control of the charged account.” (Ex. 1005 at 1:41-46.) If the called
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`party was associated with a cellular phone, this “important need” could not be
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`satisfied unless Swope’s system could accommodate calls to cellular phones.
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`(Ex. 1002 ¶ 63.)
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`Accordingly, one of ordinary skill would have had ample reason to modify
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`Swope as disclosed by Falcone to receive a call request for a called party that is
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`associated with a cellular phone number. (Id. ¶ 64.) The Swope/Falcone system,
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`therefore, teaches “the called party being associated with a cellular telephone
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`number,” as claimed. (Id.)
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`–20–
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`

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`“a revenue management system, in communication with the
`telephone management system”
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`Case IPR2017-01279
`U.S. Patent No. 9,509,856
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`
`The Swope/Falcone system discloses this feature at least through Swope’s
`
`teaching of a system that communicates with the telephone management system
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`and includes several elements for managing revenue. Swope’s system, for example,
`
`includes database 52, which confirms billing information for a particular number,
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`such as whether the party associated with that number has already indicated that it
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`will not accept collect call