Trials@uspto.gov
`571.272.7822
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`
`
`
`
`Paper No. 7
`Filed: Nov. 3, 2017
`
`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
`Patent 9,509,856 B2
`_______________
`
`
`Before KEVIN F. TURNER, BARBARA A. BENOIT, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`571.272.7822
`
`
`
`
`
`
`Paper No. 7
`Filed: Nov. 3, 2017
`
`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
`Patent 9,509,856 B2
`_______________
`
`
`Before KEVIN F. TURNER, BARBARA A. BENOIT, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
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`IPR2017-01279
`Patent 9,509,856 B2
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`
`A. Background
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`I.
`
`INTRODUCTION
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`Securus Technologies, Inc. (“Petitioner”) filed a Petition (Paper 1,
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`“Pet.”) to institute an inter partes review of claims 1–20 of U.S. Patent No.
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`9,509,856 B2 (Ex. 1001, “the ’856 patent”). Global Tel*Link Corporation
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`(“Patent Owner”) timely filed a Preliminary Response (Paper 5, “Prelim.
`
`Resp.”). We have authority under 35 U.S.C. § 314 and 37 C.F.R § 42.4(a),
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`where section 314(a) provides that an inter partes review may not be
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`instituted “unless . . . there is a reasonable likelihood that the petitioner
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`would prevail with respect to at least 1 of the claims challenged in the
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`petition.” See 37 C.F.R § 42.4(a) (delegating authority to institute trial to the
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`Board).
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`Upon consideration of the Petition, Petitioner’s cited evidence, and
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`Patent Owner’s Preliminary Response, we conclude Petitioner has
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`established a reasonable likelihood it would prevail with respect to at least
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`one of the challenged claims. Accordingly, for the reasons that follow, we
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`institute an inter partes review.
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`B. Related Proceedings
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`The parties inform us that the challenged patent is the subject of a
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`district court proceeding in the Northern District of Texas, captioned Global
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`Tel*Link Corp. v. Securus Techs., Inc., No. 3:16-cv-01338-K (N.D. Tex.).
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`Pet. 67; Paper 4, 1 (Patent Owner’s Mandatory Notices).
`
`C. The ’856 Patent
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`The ’856 patent was filed on April 17, 2015, and is titled
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`“Telecommunication Revenue Management System.” Ex. 1001, Title. It
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`describes systems and methods for using a revenue management system with
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`a telecommunication systems that includes a remote server, a user database,
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`and a plurality of other databases. Id. at Abstract. According to the ’856
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`patent, controlled facilities routinely implement collect call billing
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`arrangements in their telephone systems to ensure payment for the call. Id.
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`at 1:21–36. Some service providers for called parties, however, limit certain
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`customer’s ability to receive collect calls, while others are unwilling or
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`unable to pursue their customers to collect on unpaid debts. Id. at 1:37–60.
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`As a result, the ’856 patent explains that controlled facilities had to choose
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`between blocking collect calls to certain destination phone numbers
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`(requiring the calling party to pay for the calls) or accepting the risk that the
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`called party may never pay for the call. Id. at 1:30–2:5. According to the
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`’856 patent use of a revenue management systems helps to manage the risk
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`associated with un-billable telephone calls and the debt generated by calling
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`activities, because the ’856 patent allows a called party to set up a prepaid
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`account to cover charges for calls. Id. at 1:16–19; 10:51–62; 11:11–41.
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`Specifically, when certain conditions are met, the called party can create an
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`account “in real time” while the calling and called parties are attempting to
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`complete the telephone call.
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`One embodiment of the ’856 patent is shown in Figure 4, reproduced
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`below.
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`Figure 4 illustrates the steps for a user to setup an account with the
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`revenue management system if the user does not have an account already.
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`Id. at 10:20–24. According to the ’856 patent, a called party gives account
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`information and payment information to a revenue management system
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`representative, who sets up and activates the account. Id. at 10:24–50. The
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`’856 patent discloses that the account can be setup and activated while a
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`calling party is still connected to the systems, so that if an account is
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`successfully established in step 409 of Figure 4, then the call may be
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`completed. Id. at 10:51–58. If, however, the funds for the account are not
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`received and verified in step 411, then the call is terminated in step 415. Id.
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`at 10:58–62.
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`D. Illustrative Claims
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`As noted above, Petitioner challenges claims 1–20 with claims 1, 9,
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`and 15 being independent. Claim 1 is illustrative of the challenged claims,
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`and is reproduced below:
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`1. A telecommunications management system, comprising:
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`a telephone management system configured to initiate a
`telephone call from a calling party to a called party, the called
`party being associated with a cellular telephone number; and
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`a revenue management system, in communication with the
`telephone management system, the revenue management
`system comprising:
`
`a server configured to:
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`query a plurality of databases to determine whether the
`cellular telephone number is associated with an account,
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`query the plurality of databases to determine whether the
`cellular telephone number is billable,
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`direct the telephone management system to complete the
`telephone call in response to determining that the cellular
`telephone number is associated with an account and is
`billable,
`
`direct 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 the cellular
`telephone number is not associated with an account and is
`billable, and
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`direct the telephone management system to terminate the
`telephone call in response to determining that the cellular
`telephone number is not billable.
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`Ex. 1001, 11:12–41.
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`E. The Evidence of Record
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`The following references are evidence of record:
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`Reference
`Swope
`
`Patent or Publication
`US Pat. No. 6,639,977
`
`Date
`Oct. 28, 2003
`
`Exhibit
`1005
`
`Falcone
`
`US Pat. No. 7,042,992
`
`May 9, 2006
`
`O’Neil
`
`US Pat. No. 6,226,364
`
`May 1, 2001
`
`1006
`
`1007
`
`Rae
`
`US Pat. No. 7,899,167
`
`Mar. 1, 2011
`
`1008
`
`Schwartz
`
`US Pat. No. 6,668,044
`
`Dec. 23, 2003
`
`1009
`
`Gainsboro
`
`US Pat. No. 7,106,843
`
`Sep. 12, 2006
`
`1010
`
`Falcone ’540 US Pat. No. 6,836,540
`
`Dec. 28, 2004
`
`2001
`
`
`
`F. The Asserted Grounds of Unpatentability
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`Petitioner challenges the patentability of claims 1–20 of the ’856
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`patent based on the following grounds (Pet. 4):
`
`Reference(s)
`Swope, Falcone, and
`O’Neil1
`Swope, Falcone, and Rae
`Swope, Falcone, O’Neil,
`and Schwartz
`Swope, Falcone, Rae, and
`Schwartz
`
`Claims Challenged
`Basis
`§ 103(a) 1–3, 6–9, 11–13, 15–18, and 20
`
`§ 103(a) 1–3, 6–9, 11–13, 15–18, and 20
`§ 103(a) 4, 5, and 10
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`§ 103(a) 4, 5, and 10
`
`
`1 The Petition specifically challenges the patentability of the claims in the
`’856 patent based on “Swope and Falcone in view of O’Neil or Rae.” Pet. 4.
`We understand the word “or” to be a grammatical conjunction used to
`indicate the existence of alternative cases that the “or” connects. Therefore,
`the use of “or” indicates that the challenges based on O’Neil are in
`alternative to challenges based on Rae. Accordingly, we have separated the
`challenges.
`
`6
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`Reference(s)
`Swope, Falcone, O’Neil,
`and Gainsboro
`Swope, Falcone, Rae, and
`Gainsboro
`
`Claims Challenged
`Basis
`§ 103(a) 14 and 19
`
`§ 103(a) 14 and 19
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`II. DISCUSSION
`
`A. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are
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`interpreted according to their broadest reasonable construction in light of the
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`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
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`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (“We
`
`conclude that the regulation represents a reasonable exercise of the
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`rulemaking authority that Congress delegated to the Patent Office.”). Under
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`that standard, and absent any special definitions, we give claim terms their
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`ordinary and customary meaning, as would be understood by one of ordinary
`
`skill in the art at the time of the invention. In re Translogic Tech., Inc.,
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`504 F.3d 1249, 1257 (Fed. Cir. 2007). An inventor, however, may provide a
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`meaning for a term that is different from its ordinary meaning by defining
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`the term in the specification with “reasonable clarity, deliberateness, and
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`precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
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`Limitations, however, are not to be read from the specification into the
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`claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). In addition,
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`the Board may not “construe claims during [an inter partes review] so
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`broadly that its constructions are unreasonable under general claim
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`construction principles.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d
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`1292, 1298 (Fed. Cir. 2015).
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`Petitioner proposes a construction for the phrase “complete the
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`telephone call.” Pet. 6. Patent Owner contends that no construction of this
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`phrase is needed. We agree with Patent Owner. Accordingly, for purposes
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`of this Decision and based on the record before us, we do provide express
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`constructions for any claim terms at this stage of the proceeding.
`
`B. Principles of Law
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`A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences
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`between the subject matter sought to be patented and the prior art are such
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`that the subject matter as a whole would have been obvious at the time the
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`invention was made to a person having ordinary skill in the art to which said
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`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
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`(2007). The question of obviousness is resolved on the basis of underlying
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`factual determinations, including: (1) the scope and content of the prior art;
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`(2) any differences between the claimed subject matter and the prior art;
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`(3) the level of skill in the art; and (4) objective evidence of nonobviousness,
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`i.e., secondary considerations. See Graham v. John Deere Co. of Kansas
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`City, 383 U.S. 1, 17–18 (1966).
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`“In an [inter partes review], the petitioner has the burden from the
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`onset to show with particularity why the patent it challenges is
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`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`
`petitions to identify “with particularity . . . the evidence that supports the
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`grounds for the challenge to each claim”)). This burden of persuasion never
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`shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
`
`Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in
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`inter partes review). Furthermore, Petitioner cannot satisfy its burden of
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`proving obviousness by employing “mere conclusory statements.” In re
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`Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
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`Thus, to prevail in an inter partes review, Petitioner must explain how
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`the proposed combinations of prior art would have rendered the challenged
`
`claims unpatentable. At this preliminary stage, we determine whether the
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`information presented in the Petition shows there is a reasonable likelihood
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`that Petitioner would prevail in establishing that one of the challenged
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`claims was anticipated by the cited prior art or would have been obvious
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`over the proposed combinations of prior art.
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`We analyze the challenges presented in the Petition in accordance
`
`with the above-stated principles.
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`C. Level of Ordinary Skill in the Art
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`In determining whether an invention would have been obvious at the
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`time it was made, we consider the level of ordinary skill in the pertinent art
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`at the time of the invention. Graham, 383 U.S. at 17. “The importance of
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`resolving the level of ordinary skill in the art lies in the necessity of
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`maintaining objectivity in the obviousness inquiry.” Ryko Mfg. Co. v.
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`Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991).
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`Petitioner argues that a person of ordinary skill in the art relevant to
`
`the ’856 patent would have had “at least a Bachelor’s Degree in Electrical
`
`Engineering, Computer Engineering, or the equivalent, and two or more
`
`years of industry experience in the relevant field, or academic equivalent
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`thereof.” Pet. 5–6. According to Petitioner, “[s]uch a person would have
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`been familiar with the standard components and methods used at the time of
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`the alleged invention of the ’856 patent for processing collect calls.” Id. at 6
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`(citing Ex. Ex. 1002 ¶¶ 31–33). Petitioner relies on the Declaration of Stuart
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`J. Lipoff, P.E. (Ex. 1002) to support its contentions. Petitioner’s Declarant,
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`Stuart J. Lipoff, P.E. (“Mr. Lipoff”), proffers the same level of skill as that
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`argued by Petitioner. Ex. 1002 ¶ 32.
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`At this stage of the proceeding, Patent Owner does not contest
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`Petitioner’s definition of a person of ordinary skill in the art. See generally
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`Prelim. Resp.
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`Based on our review of the ’856 patent, the types of problems and
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`solutions described in the ’856 patent and cited prior art, and the testimony
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`of Mr. Lipoff, for purposes of this Decision we adopt and apply Petitioner’s
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`definition of a person of ordinary skill in the art. Specifically, we find that a
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`person of ordinary skill in the art at the time of the claimed invention would
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`have had “at least a Bachelor’s Degree in Electrical Engineering, Computer
`
`Engineering, or the equivalent, and two or more years of industry experience
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`in the relevant field, or academic equivalent thereof.”
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`D. Alleged Obviousness of Claims 1–3, 6–9, 11–13, 15–18, and 20 of
`the ’856 Patent in View of Swope, Falcone, and O’Neil
`
`Petitioner contends claims 1–3, 6–9, 11–13, 15–18, and 20 of the ’856
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`patent are unpatentable under 35 U.S.C. § 103(a) in view of Swope, Falcone,
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`and O’Neil. Pet. 18–53. Patent Owner disputes Petitioner’s contentions.
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`Prelim. Resp. 7–30. For reasons that follow, we determine Petitioner has
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`demonstrated a reasonable likelihood of prevailing on its obviousness
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`challenge as to the challenged claims.
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`1. Prior Art Overview
`
`a. Overview of Falcone
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`Falcone is a U.S. Patent titled “Systems and Methods for Account
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`Establishment and Transaction Management Using Interrupt Messaging.”
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`Ex. 1006, Title. Falcone is directed to “providing account setup,
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`management and transaction authorization determinations in real-time using
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`transaction interrupt messaging.” Id. at Abstract. Falcone allows a called
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`party to establish an account to prepay for services requested by another,
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`such as collect telephone calls placed to the called party. See, e.g., id. at
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`4:19–25, 9:50–62. One embodiment disclosed in Falcone is shown in Figure
`
`2, reproduced below.
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`
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`Figure 2, above, illustrates a block diagram of Falcone’s system where
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`transaction processor 210 manages calls from originating party station 211
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`to end party station 240, which “may comprise any number of
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`communication devices such as . . . cellular telephones . . . .” Id. at 10:53–
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`65. The “parties at originating party stations 211 may be desirous of
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`communicating with a party at end party station 240 by placing a collect
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`call.” Id. at 10:66–11:2. According to Falcone, to complete these calls,
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`transaction processor 210 interacts with transaction validation engine 220,
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`which includes prepaid accounting system 229. Id. at 12:17–13:7. Falcone
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`11
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`states that “[p]repaid accounting system 229 may be utilized in establishing,
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`maintaining, and/or servicing accounts which are prepaid.” Id. at 12:37–39.
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`Falcone discloses that when providing its calling services, the system
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`must first verify whether call database 221 associates the called telephone
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`number with a prepaid account. Id. at 13:22–31. If not, according to
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`Falcone, the system allows the called party to establish a prepaid account to
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`pay for the call. Id. at 16:17–57. To do so, “the called party is placed in
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`communication with customer service center 230 to facilitate future calling
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`services, e.g., establishment of an account” in step 321, depicted in the flow
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`diagram of Figures 3A and 3B below. Id. at 16:34–39. The “customer
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`service center 230 may comprise . . . live operators to interact with a party in
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`facilitating calling services.” Id. at 16:41–45.
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`According to Falcone, its invention includes a hierarchy of decision
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`criteria to determine when to allow telephone transactions and when to
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`terminate calls. Id. at 3:42–48. One embodiment of Falcone’s hierarchy is
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`shown in Figures 3a and 3b, reproduced below.
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`As shown in Figures 3A and 3B above, Falcon’s hierarchy of decision
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`criteria allows certain telephone transactions, such as collect calls, that meet
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`at least a “minimal risk threshold to be completed on a first attempt, even
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`where a pre-arranged billing agreement or other business relationship is not
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`in place.” Id. at 3:42–48. Falcon states that collect calls being placed to a
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`dialed number associated with a competitive local exchange carrier (CLEC)
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`or other entity having no billing agreement with a telecommunication
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`service provider initiating the call may result in a “negative determination”
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`in the decision tree. Id. at 3:53–59. Falcone contemplates; however, that
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`such calls may be billed using a direct bill from the telecommunication
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`service provider to the called party, with the confidence that the called party
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`meets a target credit risk threshold. Id. at 3:59–67.
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`Falcone further contemplates that collect calls “may be completed or a
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`message delivered from a caller, whether at no charge or charged as
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`originally attempted, for a controlled amount of time to allow
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`communication between the called and calling parties and thereby establish
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`the need for additional calling services.” Id. at 4:14–19. According to
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`Falcone, the called party in such a situation may be solicited to establish a
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`business relationship, such as by creating a pre-paid account, with the
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`telecommunication service provider initiating the call. Id. at 4:19–22.
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`Falcone states that s”[s]ubsequent calls to the called party and/or by the
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`calling party may be permitted according to the aforementioned business
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`relationship.” Id. at 4:22–25. Falcone illustrates an embodiment for
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`completing such transactions in Figure 4, reproduced below.
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`According to Falcone, as illustrated in Figure 4 above, a call request or other
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`transaction request is initiated at box 410 (such as may be initiated at
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`transaction processor 210 by originating party stations 211 or end party
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`station 250 from Figure 2). Ex. 1006, 18:6–11. Falcone discloses that box
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`420 analyzes the call request to determine if the call is authorized and if
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`there is a means for charging one or more of the parties to the requested call.
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`Id. at 18:16–21. Falcone then states that if the available information and/or a
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`quality metric indicates the transaction should be blocked or that an
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`interaction with one or more of the parties to the transaction is needed, box
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`420 may determine that transaction interruption for such interaction is
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`desirable. Id. at 18:21–25. Box 430 provides for transaction that box 420
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`indicates. Id. at 18:25–27. Per Falcone, box 430 implements transaction
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`interruption and customer interaction, such as may include soliciting
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`information and/or payment from a party. Id. at 18:27–33.
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`According to the Falcone embodiment illustrated in Figure. 4, parties to a
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`transaction may continue to be rescored, e.g., during a particular transaction
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`and/or subsequent to completing a transaction, to update the targeting
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`decision. Id. at 18:47–50. For example, an initial targeting decision made in
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`box 420 may be changed based upon subsequent rescoring and/or interaction
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`at box 450. Id. at 18:50–53.
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`b. Overview of Swope
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`Swope is a U.S. Patent titled “System and Method for Reverse Billing
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`of a Telephone Call” and discloses a system “that allows a calling party to
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`call a destination number and, upon approval of the called party, reverse the
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`billing of the telephone call so that it is deducted from an account owned and
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`maintained by the called party.” Ex. 1005, Title, Abstract. To decide
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`whether to complete the call, Swope discloses that it first “looks up the
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`destination number in its tables to see if calls are permitted to the destination
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`number.” Id. at 4:67–5:1. Swope may then “determine other information
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`related to the destination number,” such as whether the called party has
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`notified its telecommunications provider that no collect calls will be
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`accepted at that number (referred to as “collect denied”). Id. at 5:6–10.
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`According to Swope, if the “destination number is declared to be invalid,”
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`the call is terminated or the system requests an alternative destination
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`number. Id. at 5:11–16. If the number is not declared invalid, however, then
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`the called party in Swope is “prompted to accept or reject the call.” Id. at
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`5:24–25. If the call is accepted, “the called party is prompted . . . for a
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`method of payment, an account number and an optional Customer
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`Identification and Verification (CIV), such as a Personal Identification
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`Number (PIN).” Id. at 5:26–30. Swope’s system then completes the call
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`after verifying the account information and that the account has sufficient
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`funds. Id. at 5:31–6:19. Figures 3A and 3B, reproduced below, illustrate
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`one embodiment of Swope’s operational scheme.
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`To implement the operational functions shown above in Figures 3A and B,
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`Swope provides an architectural overview in the embodiment illustrated in
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`
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`Figure 2, reproduced below.
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`The embodiment in Figure 2 above includes originating and terminating
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`devices 40 and 80, originating and terminating switches 50 and 70, transit
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`network 60, processor 54, detection device 56, database 52, and “network of
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`
`
`multiple databases 58.” Id. at 3:55–4:28.
`
`c. Overview of O’Neil
`
`O’Neil is a U.S. Patent titled “Method and System for Providing
`
`Prepaid and Credit-Limited Telephone Services” and discloses “real-time
`
`telephone call monitoring, rating, and response system including real-time
`
`interfaces and switching centers that create and maintain in-process call
`
`detail records for on-going telephone calls.” Ex. 1007, Title, Abstract.
`
`O’Neil further provides a system to bill calls to a called party’s prepaid
`
`account that is specific for cellular phone users. Id. at 22:33–24:25.
`
`According to O’Neil, 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 updated promptly. Id. at 11:49–65, 12:51–64, 23:24–28.
`
`18
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`
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`IPR2017-01279
`Patent 9,509,856 B2
`
`
`2. Analysis of Cited Art as Applied to Independent Claims 1, 9,
`and 15
`
`a. “establish[ing] a new account . . . while [the parties] are
`attempting to complete the telephone call . . . and then
`complete the telephone call once a new account has been
`established
`The only claim element disputed between the parties at this time is “[a
`
`server configured to] direct 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 the cellular telephone
`
`number is not associated with an account and is billable.” All three
`
`independent claims recite this limitation. Ex. 1001, 11:31–38, 12:37–45,
`
`14:5–12.
`
`Petitioner contends the combined teachings of Swope and Falcone
`
`discloses the challenged. Pet. 31 (citing Ex. 1002 ¶¶ 82–86). According to
`
`Petitioner, Swope explicitly teaches that, after a call is deemed billable (after
`
`step 150 of Fig. 3A), it collects account information from the called party
`
`and attempts to verify that information while the parties are attempting to
`
`complete the call. Id. (citing Ex. 1005, 5:24–60, Fig. 3A). Petitioner then
`
`states that Swope does not state expressly that a called party may create an
`
`account in real time when there is no account associated with the called
`
`number. Id. (citing Ex. 1002 ¶ 82).
`
`Petitioner relies on Falcone for this element, because, as Petitioner
`
`argues, Falcone identifies a need to make reliable transaction authorizations
`
`in real time. Id. (citing Ex. 1006, 2:62–67). According to Petitioner,
`
`Falcone teaches a system that allows called parties to establish accounts by
`
`19
`
`
`
`IPR2017-01279
`Patent 9,509,856 B2
`
`providing billing information to a live operator. Id. (citing Ex. 1006, 9:58–
`
`62). For example, Petitioner notes that in Falcone “the called party may
`
`establish a prepaid account, such as by providing credit card information to a
`
`customer care agent.” Id. (citing (Ex. 1006, 9:58–62; Ex. 1002 ¶ 83).
`
`Petitioner then argues that Falcone explains that this account creation may
`
`occur in real time, because “transaction interrupt techniques, wherein a call .
`
`. . may be . . . prefaced, and/or followed by messaging and/or interaction
`
`(e.g., via IVR and/or customer service representative), . . . with respect to
`
`establishing and maintaining accounts or other customer information and
`
`providing transaction authorization determinations.” Pet. 31–32 (citing Ex.
`
`1006, 7:4–18 (emphasis added), 17:66–18:5). Thus, Petitioner argues that
`
`Falcone teaches establishing accounts before completing calls. Id. at 32
`
`(citing Ex. 1002 ¶ 84).
`
`Petitioner also argues that Falcone teaches that a transaction filter
`
`provides a targeting decision based on the non-payment risk posed by a
`
`called party, but that a party can be rescored after completing a transaction.
`
`Id. (citing Ex. 1006, 18:47–53, Fig. 4). Thus, according to Petitioner, a call
`
`that was initially not completed may be completed once a party creates an
`
`account, which occurs in real time while the parties are attempting to
`
`complete the telephone call. Id. (citing Ex. 1006, 18:47–61; Ex. 1002 ¶ 85).
`
`Petitioner contends that once the new account is created in a Swope/Falcone
`
`system, Swope’s processor 54 (the server) directs the telephone management
`
`system to complete the telephone call, allowing the parties to converse. Id.
`
`(citing Ex. 1002 ¶ 85). Petitioner, thus, concludes that a skilled artisan
`
`would have understood that the combined teachings of Swope and Falcone
`
`disclosed the challenged claim limitation. Id. (citing Ex. 1002 ¶ 86).
`
`20
`
`
`
`IPR2017-01279
`Patent 9,509,856 B2
`
`
`Patent Owner opposes Petitioner’s position, contending that Petitioner
`
`fails to demonstrate that Falcone teaches or suggests establishing a new
`
`account while the parties are attempting to complete the call, and then
`
`completing the telephone call once a new account has been established.
`
`Prelim. Resp. 15. Patent Owner notes that each of independent claims 1, 9,
`
`and 15 provides the ability to “complete the telephone call once a new
`
`account has been established,” where the telephone call being completed is
`
`the very same call initiated from the calling party to the called party earlier
`
`in the claim. According to Patent Owner, between initiation and completion
`
`of the call, a new account is established “in real time while the calling party
`
`and the called party are attempting to complete the telephone call,” and the
`
`original call is then completed once the new account has been established.
`
`Prelim. Resp. 17. Patent Owner acknowledges that Falcone provides some
`
`discussion of real-time transaction authorizations, but Patent Owner
`
`contends its disclosure is insufficient. Id. at 17–18. Patent Owner argues
`
`that the account creation process in Falcone does not occur in real-time
`
`while the parties wait to be connected; rather, Falcone is concerned solely
`
`with future calling services. Id. at 18. Patent Owner further argues that
`
`although “Falcone discusses that transaction interrupt techniques may be
`
`used for purposes of establishing accounts,” Falcone does not provide any
`
`teaching or suggestion to indicate that a call “prefaced” by messaging and/or
`
`interaction is handled any differently than a call “followed” by messaging
`
`and/or interaction.” Id. Patent Owner specifically contends that Falcone
`
`lacks any discussion of how a call behaves when “prefaced” by messaging
`
`and/or interaction, save for the general discussion of account setup as always
`
`being for handling future calls. Id. at 19. Patent Owner notes several
`
`21
`
`
`
`IPR2017-01279
`Patent 9,509,856 B2
`
`examples in Falcone where future calling services are established. Id. at 20–
`
`21 (citing Ex. 1006, 9:13–21, 14:6–21, 16:17–26).
`
`At this stage of the proceeding and based on the record before us, we
`
`are persuaded Petitioner has shown adequately for purposes of institution
`
`that Falcone’s disclosure of prefacing call with an interaction via IVR and/or
`
`a customer service representative for establishing accounts and providing
`
`transaction authorization satisfies the challenged claim limitation. As we
`
`understand Falcone, such prefacing would occur prior to the completion of a
`
`call. Falcone further states that transaction interrupts may occur “at various
`
`point in a transaction” for any number of reasons, including “to establish
`
`customer accounts.” See Ex. 1006, 3:31–36. Moreover, Figure 4 indicates
`
`that subsequent to customer prepayment, direct billing, or billing through a
`
`local exchange carrier, that the call request would be “rescored,” potentially
`
`allowing customer interaction. At this time, we read the “customer
`
`interaction” in Figure 4 to indicate an interaction (or phone conversation)
`
`between a called party and a requesting party following the establishment of
`
`a new account. Accordingly, we are persuaded at this stage of the
`
`proceedings, that Falcone at least teaches or suggests the limitation of
`
`“establish[ing] 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 complet[ing] the telephone call once a
`
`new account has been established.”
`
`b. Remaining claim elements
`
`Petitioner contends the combined disclosures of Swope, Falcone, and
`
`O’Neil renders all other limitations of independent claims 1, 9, and 15
`
`obvious. Pet. 17–31 (citing Ex. 1002 ¶¶ 59–81), 33–34 (citing Ex. 1002
`
`22
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`
`
`IPR2017-01279
`Patent 9,509,856 B2
`
`¶ 87), 42–47 (citing Ex. 1002 ¶¶ 104–108), 49–52 (citing Ex. 1002 ¶¶ 112–
`
`115). Patent Owner does not address the additional limitations of
`
`independent claims 1, 9, and 15, but the burden remains on Petitioner to
`
`demonstrate unpatentability. See Dynamic Drinkware, 800 F.3d at 1378.
`
`We have considered carefully all arguments and supporting evidence
`
`regarding the remaining limitations recited in challenged independent claims
`
`1, 9, and 15. At this stage of the proceeding, we are persuaded that
`
`Petitioner’s analysis as supported by Mr. Lipoff’s testimony is sufficient for
`
`institution. Therefore, we conclude Petitioner has established a reasonable
`
`likelihood it would prevail in showing that challenged independent claims 1,
`
`9, and 15, as written currently, would have been obvious under 35 U.S.C.
`
`§ 103 in view of the combined teachings o
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