Paper 7
`Trials@uspto.gov
`571-272-7822 Entered: December 4, 2017
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GLOBAL TEL*LINK CORPORATION,
`Petitioner,
`
`v.
`
`SECURUS TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01437
`Patent 7,916,845 B2
`____________
`
`
`
`Before KEVIN F. TURNER, BARBARA A. BENOIT, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: December 4, 2017
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GLOBAL TEL*LINK CORPORATION,
`Petitioner,
`
`v.
`
`SECURUS TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01437
`Patent 7,916,845 B2
`____________
`
`
`
`Before KEVIN F. TURNER, BARBARA A. BENOIT, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`
`
`
`IPR2017-01437
`Patent 7,916,845 B2
`
`I. INTRODUCTION
`Global Tel*Link Corporation (“Petitioner”) filed a Petition for inter
`partes review of claims 1–41 of U.S. Patent No. 7,916,845 B2 (Ex. 1001,
`“the ’845 patent” or “the challenged patent”). Paper 2 (“Pet.”). Securus
`Technologies, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 6
`(“Prelim. Resp.”). Institution of an inter partes review is authorized by
`statute when “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.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108 (regarding institution
`of inter partes review); 37 C.F.R § 42.4(a) (delegating authority to institute
`trial to the Board). Upon consideration of the Petition and the Preliminary
`Response, we conclude that the information presented shows that there is a
`reasonable likelihood that Petitioner would prevail in establishing the
`unpatentability of at least one of the challenged claims of the ’845 patent.
`
`A. Related Matters
`The parties inform us that the challenged patent is the subject of a
`district court proceeding in the Northern District of Texas, captioned
`Securus Technologies, Inc. v. Global Tel*Link Corp., No. 3:16-cv-01338-K
`(N.D. Tex.). Pet. 68; Paper 3, 2 (Patent Owner’s Mandatory Notices); see 37
`C.F.R. § 42.8(b)(2) (requiring parties to identify “other judicial or
`administrative matter that would affect, or be affected by, a decision in the
`proceeding”).
`
`B. The ’845 Patent
`The ’845 patent is titled “Unauthorized Call Activity Detection and
`Prevention Systems and Methods for a Voice over Internet Protocol
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`Patent 7,916,845 B2
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`Environment.” Ex. 1001, [54]. The patent issued on March 29, 2011 from
`an application filed on April 13, 2006. Id. at [45], [22]. Although the patent
`identifies and incorporates by reference other commonly owned
`applications, the patent does not include a claim to an earlier filing date. Id.
`at 1:6–25. The patent describes techniques that relate to detecting three-way
`calls in a Voice over Internet Protocol (“VoIP”) environment, particularly in
`a prison (or another type of controlled environment) that monitors and
`controls the use of telephones. Id. at 5:28–29, 6:23–26.
`
`1. The Written Description
`The ’845 patent explains that telephone systems at correctional
`facilities or other controlled-environment facilities purposefully prevent
`inmates or residents from contacting unauthorized parties. Ex. 1001, 1:40–
`46. The patent describes the problem that the inmate may call an authorized
`party and, then be “connected to a third party at an unauthorized number via
`the three-way call feature by a party at the authorized number.” Id. at 1:51–
`57. The challenged patent describes the process for connecting such a call:
`A three-way call may be initiated when the originally called party
`(e.g. an authorized party outside the private telephone system)
`depresses the hook switch on the telephone, generating a hook
`flash signal. This signals the telephone central office to put the
`resident on hold and provide a dial tone to the originally called
`party. On receipt of the dial tone, the originally-called party dials
`the number of an unauthorized third party, and when the
`connection is completed, the resident and the unauthorized third
`party can communicate through the connection established
`outside the private system.
`Id. at 2:1–11. One method of detecting a three-way call is to monitor the
`telephone signals of a call to detect a hook flash. Id. at 2:12–14. To do so,
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`the frequency bands used in the telephone signal may be monitored for
`“energies about a selected threshold.” Id. at 2:15–22.
`The ’845 patent describes particular problems that arise for detecting
`three-way calls in a VoIP environment. Id. at 5:28–29. One such problem is
`that “a packetized VoIP environment” may not pass a hook flash or silence
`that may be used to detect a three-way call. Id. at 5:32–34.
`The patent further indicates that “when sound drops below some
`threshold level it is deemed to be silence and not transmitted.” Id. at 5:38–
`40. The patent continues by explaining that “VoIP data transmission
`bandwidth usage may be minimized through the use of Voice Activation
`Detection (VAD), or other methods. VAD allows a data network carrying
`voice traffic over the Internet to detect the absence of audio and conserve
`bandwidth by preventing the transmission of ‘silent packets’ over the
`network.” Id. at 5:40–46. “[S]ince conventional three-way call detection
`may analyze different ‘thresholds of silence’ to determine whether or not a
`caller is ‘away’ setting up a three-way call, conventional three-way call
`detection in VoIP calls is problematic.” Id. at 5:60–64.
`Figure 1 of the challenged patent is set forth below:
`
`
`
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`Figure 1 shows a telephone communication system 100 that includes
`telephone terminals 110–113 located at a prison or other controlled-
`environment facility. Id. at 6:18–26. Telephone terminals 110–113, which
`may be VoIP telephones or may be conventional analog telephones, are
`connected to “processor-based call processing system 120.” Id. at 6:40–41,
`43–46, 62–63. “Line interface 123 provides interfacing between the signals
`native to terminals 110-113 and a processor or processors of call processing
`system 120.” Id. at 6:63–65.
`VoIP gateway 126 provides voice connectivity via WAN 180, which
`may be any data network—such as an intranet, an extranet, the Internet, a
`public network, or a private network. Id. at 6:66–7:2. VoIP gateway 126
`includes compressor and packetizer 125, which produces compressed data
`packets from the telephony signals. Id. at 7:21–24. “These packets are
`processed in [Ethernet] network interface 127” and sent over “WAN 180 to
`corresponding VoIP gateway” (not shown). Id. at 7:24–26. VoIP gateway
`126 may also decompress and depacketize incoming VoIP data packets to
`provide telephony signals to terminals 110–113. Id. at 7:25–30.
`The patent explains that a corresponding VoIP gateway may be
`“disposed at an edge of WAN 180 and coupled to PSTN 160, or otherwise
`associated with WAN 180 and/or PSTN 160.” Id. at 7:12–15. This VoIP
`gateway receives, decompresses, depacketizes, and distributes the telephone
`signals to a public switch of PSTN 160. Id. at 7:26–28. In this way,
`telephone terminal 155 connected to PSTN 160 may be connected with
`telephone 110. Id. at 7:10–14.
`The call processing system 120 also includes “unauthorized call
`activity detection control block” 129 that provides “real-time intelligence”
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`concerning “unauthorized three-way call detection,” among other types of
`fraud. Id. at 8:25–35. In some embodiments, information gathered from the
`VoIP data stream may be used in three-way call detection. Id. at 8:48–52.
`The patent also describes ways to detect unauthorized three-way calls.
`Id. at 9:43–10:60. For example, “out-of-band signaling coming from an
`SS71 environment of the PSTN-based call” may be monitored for signals
`indicative of a three-way call. Id. at 9:43–54, 10:10–26. In another
`example, “the use of in-band signals for three-way call detection might
`include monitoring return of VAD idle noise . . . as the equivalent of
`silence.” Id. at 9:54–56; see id. at 9:56–10:9. In yet another example, “a
`three-way call attempt may be deduced from a model of unacceptable packet
`loss which persists from a predetermined time period.” Id. at 10:27–29.
`Finally, to detect three-way calls, “a call . . . may be monitored to listen to
`all of the voices engaged in the call.” Id. at 10:58–60; see id. at 10:60–
`11:15.
`
`2. Illustrative Claims
`Petitioner challenges all claims in the’845 patent (claims 1–41), of
`which claims 1, 13, 30, and 36 are independent. Pet. 1. Claims 1, 2, 5, and
`30 are illustrative of the subject matter of the challenged claims and read as
`follows:
`1. A method for providing call processing in a controlled-
`environment facility, comprising:
`receiving a request to place a call from a terminal accessed
`by a calling party in the controlled-environment facility;
`connecting the call to a called party outside the controlled-
`environment facility via a Voice over Internet Protocol (VoIP)
`
`1 SS7 means “signaling system 7.”
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`gateway between the terminal and a public switched telephone
`network (PSTN) or between the terminal and a wide area
`network (WAN); and
`detecting three-way call activity in the call by monitoring
`VoIP signals transmitted between the VoIP gateway and the
`terminal.
`Ex. 1001, 13:45–56.
`
`2. The method of claim 1, wherein monitoring the VoIP signals
`comprises detecting voice activation detection (VAD) idle noise
`in the VoIP signals.
`Ex. 1001, 13:57–59.
`
`5. The method of claim 1 wherein said monitoring comprises
`detecting packet loss for a predetermined time to determine
`presence of the three-way call activity.
`Ex. 1001, 13:65–67.
`
`30. A method for providing call processing in a controlled-
`environment facility, comprising:
`receiving a request to place a call from a terminal in the
`controlled-environment facility;
`connecting the call to a called party outside the controlled-
`environment facility via a Voice over Internet Protocol (VoIP)
`gateway between the terminal and a public switched telephone
`network (PSTN) or between the terminal and a wide area
`network (WAN);
`receiving an out-of-band signal associated with the call
`from the PSTN; and
`detecting a three-way call activity in the call by analyzing
`the received out-of-band signal at the VoIP gateway.
`Ex. 1001, 15:46–58.
`
`7
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`IPR2017-01437
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`C. Asserted Grounds of Unpatentability
`Petitioner contends that claims 1–41 of the challenged patent are
`unpatentable under 35 U.S.C. § 103(a)2 based on the following specific
`grounds (Pet. 2–3, 11–67).
`
`References
`
`Apple3
`Apple and RFC 33894
`Apple and Black5
`Apple, Farris,6 and Russell7
`
`Challenged Claims
`1, 3, 6–13, 15, and 18–29
`2, 4, 14, and 17
`5 and 16
`30–41
`
`In its analysis, Petitioner relies on citations to the asserted references and the
`declaration testimony of Leonard J. Forys, Ph.D. (Ex. 1003).
`
`II. DISCUSSION
`
`A. Principles of Law
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time of the invention to a
`
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125
`Stat. 284, 287–88 (2011), revised 35 U.S.C. § 103, effective March 16,
`2013. Because the challenged patent was filed before March 16, 2013, we
`refer to the pre-AIA version of § 103 in this Decision.
`3 U.S. Patent No. 8,031,849 B1, issued Oct. 4, 2011, filed Sept. 2, 2005
`(Ex. 1005, “Apple”).
`4 Internet Engineering Task Force (“IETF”), Real-time Transport Protocol
`(RTP) Payload for Comfort Noise (CN). Available at
`https://tools.ietf.org/html/rfc3389, September 2002 (Ex. 1009, “RFC3389”).
`5 Ulysses Black, Voice over IP, 2d ed., 2002 (Ex. 1007, “Black”).
`6 U.S. Patent No. 5,802,145, issued Sept. 1, 1998 (Ex. 1006, “Farris”).
`7 Travis Russell, Signaling System #7, 4th ed., 2002 (Ex. 1008, “Russell”).
`8
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`person having ordinary skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550
`U.S. 398, 406 (2007). The question of obviousness is resolved on the basis
`of underlying factual determinations including (1) the scope and content of
`the prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of ordinary skill in the art; and (4) objective evidence
`of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`Consideration of the Graham factors “helps inform the ultimate obviousness
`determination.” Apple v. Samsung Elecs. Co., 839 F.3d 1034, 1048 (Fed.
`Cir. 2016) (en banc), cert. denied (Nov. 6, 2017).
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`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
`grounds for the challenge to each claim”)). This burden of persuasion never
`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
`inter partes review). Furthermore, Petitioner cannot satisfy its burden of
`proving obviousness by employing “mere conclusory statements.” In re
`Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
`Thus, to prevail in an inter partes review, Petitioner must explain how
`the proposed combinations of prior art would have rendered the challenged
`claims unpatentable. At this preliminary stage, we determine whether the
`information presented in the Petition shows there is a reasonable likelihood
`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
`over the proposed combinations of prior art.
`We analyze the challenges presented in the Petition in accordance
`with the above-stated principles.
`
`B. Level of Ordinary Skill
`In determining whether an invention would have been obvious at the
`time it was made, we consider the level of ordinary skill in the pertinent art
`at the time of the invention. Graham, 383 U.S. at 17. “The importance of
`resolving the level of ordinary skill in the art lies in the necessity of
`maintaining objectivity in the obviousness inquiry.” Ryko Mfg. Co. v.
`Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991).
`Petitioner contends, relying on Dr. Forys’ declaration testimony, that
`based on the technologies disclosed in the ’845 patent, one of ordinary skill
`in the art relevant to the challenged patent would have had a bachelor of
`science degree “in Electrical Engineering, Computer Science, or an
`equivalent field as well as at least 3–5 years of academic or industry
`experience in communications systems, or comparable industry experience.”
`Pet. 10–11 (citing Ex. 1003 ¶ 30).
`At this preliminary stage, Patent Owner does not contest Petitioner’s
`proffered level of ordinary skill or propose an alternative definition for the
`level of ordinary skill in the art. See generally Prelim. Resp.
`We determine on the current record that the level of ordinary skill
`proposed by Petitioner is consistent with the challenged patent and the
`asserted prior art. We, therefore, adopt that level for the purposes of this
`decision.
`
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`C. Claim Construction
`In an inter partes review, we interpret claim terms in the challenged
`patent 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); see
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016)
`(upholding the use of broadest reasonable construction standard in inter
`partes review). Consistent with the broadest reasonable construction
`standard, the challenged claims 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). To rebut this presumption by acting as a
`lexicographer, the patentee must give the term a particular meaning in the
`specification with “reasonable clarity, deliberateness, and precision.” In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In addition, the broadest
`reasonable construction of a claim term cannot be so broad that the
`construction is unreasonable under general claim construction principles.
`Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015)
`(discussing broadest reasonable construction in the context of an inter partes
`review). Nor should limitations be read from the specification into the
`claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). We
`construe the challenged claims according to these principles.
`Petitioner does not propose an express construction for any claim
`terms. Pet. 11. In the context of discussing the asserted prior art, Patent
`Owner contends that “monitoring VoIP signals” (recited in independent
`claims 1 and 13) does not encompass certain silence detection techniques.
`Prelim. Resp. 22–25.
`
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`We discuss Patent Owner’s contentions later in the context of
`analyzing the asserted grounds. In addition, we determine that no claim
`terms require express construction to determine whether to institute an inter
`partes review.
`
`D. Whether RFC 3389, Black, and Russell
`Are Prior Art Printed Publications
`Patent Owner argues that Petitioner has failed to set forth sufficient
`evidence that RFC 3389, Black, or Russell are prior art printed publications
`and, therefore, institution should be denied of asserted grounds relying on
`any of those references. Prelim. Resp. 3-21. For the reasons explained
`below, we determine that Petitioner has set forth sufficient evidence for
`purposes of institution.
`To be clear, we have not yet made a determination that Petitioner has
`established RFC 3389, Black, and Russell are prior art printed publications.
`Rather, at this preliminary stage, we have determined only that Petitioner’s
`evidence is sufficient for institution of asserted grounds relying on
`RFC 3389, Black, and Russell.
`
`1. RFC 3389 (Ex. 1009)
`Petitioner contends that RFC 3389 (Ex. 1009), titled “Real-time
`Transport Protocol (RTP) Payload for Comfort Noise (CN),” is prior art to
`the challenged claims because it was published in September 2002. Pet. 2.
`In support of its position, Petitioner cites three paragraphs of Dr. Forys’
`declaration testimony, which, in turn, cites three exhibits for support. Pet. 2
`(citing Ex. 1003 ¶¶ 201–204 (citing Ex. 1035–1038)).
`The first page of Exhibit 1009 identifies the title of the document as
`“Real-time Transport Protocol (RTP) Payload for Comfort Noise (CN)” and
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`further identifies the document as a request for comment having a date of
`September 2002. Ex. 1009, 1. The first page also includes a copyright
`notice of 2002 to “The Internet Society.” Ex. 1009, 1. The first page further
`indicates the status of the document (referred to as a memo) as:
`This document specifies an Internet standards track protocol for
`the Internet community, and requests discussion and suggestions
`for improvements . . . . Distribution of this memo is unlimited.
`Ex. 1009, 1. Thus, Exhibit 1009 facially appears to be what Petitioner
`contends the document to be in its Petition (Pet. 2)—a request for comment
`by the Internet Engineering Task Force (IETF) having a date of around
`September 2002, nearly four years before the filing date of the application
`that issued as the challenged patent. The document’s status statement
`requesting discussion and suggestions for improvements from the “Internet
`community” and indicating the distribution of the document is “unlimited”
`also provide support for Petitioner’s position that the document is a prior art
`printed publication. We also note that the challenged patent, in its
`Background of the Invention section, appears to refer to two IEFT Requests
`for Comment—“Internet RFC 1889” titled “Real-Time Transport Protocol
`(RTP)” and “Internet RFC 2543 titled “Session Initiation Protocol (SIP).”
`Ex.1001, 3:1–5.
`For these reasons, we conclude that Petitioner has made a sufficient
`showing at this preliminary stage for institution that RFC 3389 is prior art to
`the challenged claims.
`
`2. Russell (Ex. 1008)
`Petitioner contends that the document titled Signaling System #7
`(Ex. 1008) is a book published at least as early as November 13, 2002 based
`on the document’s copyright page with a Library of Congress date stamp of
`
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`that date. Pet. 2 (indicating “See [Exhibit 1008] Copyright page with
`Library of Congress date stamp”).
`The document appears to be what Petitioner purports it to be—the
`fourth edition of a nearly five-hundred page book by Travis Russell titled
`Signaling System #7, published by a well-known publisher, and having
`copyright date of 2002. Exhibit 1008 includes what appears to be (i) a cover
`of a book with the title, author’s name, and edition of the book, (ii) a title
`page further identifying the publisher, (iii) a copyright page identifying the
`publisher, indicating copyright dates of 2002, 2000, 1998, and 1994,
`presenting an ISBN, stating “Cataloging-in-Publication Data is on file with
`the Library of Congress,” and having other information that evinces
`publication of a book (such as the name of the sponsoring editor “for this
`book” and a notice that “[t]his book is printed on recycled paper”), and
`(iv) an eight-page table of contents for eleven chapters, three appendices, a
`bibliography, and an index. Ex. 1008, 1 (book cover), 5 (title page),
`6 (copyright page), 8–15 (table of contents). Petitioner specifically notes
`(Pet. 2) that the copyright page includes a Library of Congress date stamp of
`November 13, 2002, which appears to be the case. Ex. 1008, 6. We also
`note that the purported publication date of 2002 predates the filing date of
`the challenged patent (April 13, 2006) by nearly four years.
`For these reasons, we conclude that Petitioner has made a sufficient
`showing at this preliminary stage for institution that Russell is prior art to the
`challenged claims.
`
`3. Black (Ex. 1007)
`Petitioner contends that the document titled Voice Over IP (Ex. 1007)
`is a book published at least as early as November 23, 2001 based on the
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`document’s copyright page with a Library of Congress date stamp of that
`date. Pet. 2 (indicating “See [Exhibit 1007] Copyright page with Library of
`Congress date stamp”).
`The document appears to be what Petitioner purports it to be—the
`second edition of a three-hundred page book by Ulyess Black titled Voice
`over IP, published by a well-known publisher, and having copyright date of
`2002. Exhibit 1008 includes what appears to be (i) a cover of a book with
`the title, author’s name, and edition of the book, (ii) a title page further
`identifying the publisher, (iii) a copyright page identifying the publisher,
`indicating copyright dates of 2002, presenting an ISBN, stating “Library of
`Congress Cataloging-in-Publication Data” followed by information
`including the author’s name, book title, edition, and what appear to be
`subject matter categories (“1. Internet telephony. 2. TCP/IP (Computer
`network protocol”) and having other information that evinces publication of
`a book (such as names of seven individuals involved in production and
`marketing of the book) and various references to “this book”), and (iv) an
`eight-page table of contents for twelve chapters, three appendices, a list of
`acronyms, references, and an index. Ex. 1008, 1 (book cover), 7 (title page),
`8 (copyright page), 13–20 (table of contents). Petitioner specifically notes
`(Pet. 2) that the copyright page includes a Library of Congress date stamp of
`November 23, 2001, which appears to be the case.8 Ex. 1008, 6. We also
`note that the purported publication date of 2001 predates the filing date of
`the challenged patent (April 13, 2006) by more than four years.
`
`
`8 The date stamp in Exhibit 1007 is partially illegible but is quite similar in
`appearance to the purported Library of Congress date stamp in Exhibit 1008
`discussed previously, except that a different date is evident.
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`For these reasons, we conclude that Petitioner has made a sufficient
`showing at this preliminary stage for institution that Black is prior art to the
`challenged claims.
`
`4. Patent Owner’s Contentions
`We do not agree with Patent Owner that Petitioner has not sufficiently
`demonstrated for institution that any of RFC 3389, Black, or Russell is a
`prior art printed publication. Prelim. Resp. 6–21. For the reasons indicated
`previously,
`The contested references in this case are distinguishable from the
`various cases identified by Patent Owner in which the Board has not
`instituted an inter partes review. See Prelim. Resp. 6 (identifying IPR2015-
`00370, Paper 15, 2–4), 18 (IPR2016-01083, Paper 14, 13–14), 19
`(identifying IPR2016-00155, Paper 14, 11–12; IPR2015-00369, Paper 14, 5–
`6). Each of RFC 3389, Black, and Russell evinces indicia of publication—
`RFC 3389 indicating unlimited dissemination and requesting comment from
`“the Internet community” (Ex. 1009, 4) and Black and Russell evince indicia
`of being lengthy books published by well-known publishers and catalogued
`by the Library of Congress.
`In contrast, the cases identified by Patent Owner address public
`accessibility of a thesis or a manual with an express limitation on use and
`dissemination; see Symantec Corp. v. Columbia University, IPR2015-00370,
`Paper 15, 2 (PTAB Aug. 7, 2015) (discussing public accessibility of “a
`master’s thesis”); Microsoft Corp. v. Corel Software, LLC, IPR2016-01083,
`Paper 14, 13–14 (PTAB Dec. 1, 2016) (discussing public availability of a
`manual that had an express limitation on its use and dissemination);
`Alarm.com Inc. v. Vivint, Inc., IPR2016-00155, Paper 14, 7, 11–12 (PTAB
`
`16
`
`
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`IPR2017-01437
`Patent 7,916,845 B2
`
`Apr. 28, 2016) (discussing public accessibility of a technical manual for
`automatic control for commercial buildings based on a copyright date);
`Apple Inc. v. DSS Tech. Mgmt, Inc., IPR2015-00369, Paper 14, 2 n.1, 5–6
`(PTAB Aug. 12, 2015) (discussing public accessibility of an MIT thesis);
`see IPR2016-01083, Paper 14, 13 (acknowledging that a copyright notice
`may be evidence of the date of a reference).
`Patent Owner also relies on In re Lister, 583 F.3d 1307, 1312–1313
`(Fed. Cir. 2009), for the proposition that copyright registration does not
`demonstrate that a document was cataloged or indexed to permit an
`interested researcher to locate the document. Prelim. Resp. 19. In Lister,
`the Court determined that a manuscript submitted to the Copyright Office
`was a prior art printed publication because it was made available to an
`interested researcher for inspection at the Copyright Office and an interested
`researcher exercising reasonable diligence could find the manuscript because
`the manuscript was included in a database that permitted key word searching
`of titles. 583 F.3d at 1313–1317. The Court also noted in Lister that
`“neither cataloging nor indexing is a necessary condition for a reference to
`be publicly accessible” but rather the determination is made “on a case-by-
`case basis based on the facts and circumstances surrounding the reference's
`disclosure to members of the public.” 583 F.3d at 1311–1312 (citation and
`internal quotation marks omitted). In contrast to the manuscript submitted to
`the Library of Congress in Lister, at issue here is the publication of what
`appears, for the reasons identified previously, to be lengthy books published
`by well-known publishers nearly four or five years before the filing date of
`the application that issued as the challenged patent, or, in the case of
`RFC 3389, a request for comment directed to “the Internet community”
`
`17
`
`
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`IPR2017-01437
`Patent 7,916,845 B2
`
`eliciting comments and issued without restrictions on dissemination
`(Ex. 1009, 1).
`Patent Owner will have the opportunity to contest whether RFC 3389,
`Black, and Russell are prior art printed publications during the inter partes
`review. An inter partes review provides for raising such challenges in a
`Patent Owner Response filed under 37 C.F.R. § 42.120 (“A patent owner
`may file a response to the petition addressing any ground for unpatentability
`not already denied.”). In other words, Patent Owner may raise again the
`arguments raised in its Preliminary Response (see generally Prelim. Resp.
`6–18), which we find are insufficient at this preliminary stage, as well as
`other arguments contesting the public availability of RFC 3389.
`
`E. Obviousness over Apple
`Petitioner contends that claims 1, 3, 6–13, 15, and 18–29 are
`unpatentable under 35 U.S.C. § 103(a) as obvious over Apple. Pet. 2, 11–
`41. Relying in part on the testimony of Dr. Forys and numerous citations to
`the references, Petitioner explains how the references purportedly would
`have conveyed the claim limitations and provides purported reasoning for
`combining the teachings of the references. Id. at 11–41.
`
`1. Disclosure of Apple
`Apple is a U.S. patent titled “Telephony System and Method with
`Enhanced Fraud Control.” Ex. 1005, [54]. Apple discloses inmate
`communications systems that “provide a feature-rich platform with a high
`degree of flexibility and security employing call control facilities located off
`institutional premises.” Id. at Abstract. “Preferred embodiments feature
`voice over IP transmission and control featuring controlled access to avoid
`addition of unauthorized third-party call participants.” Id. Apple identifies
`
`18
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`IPR2017-01437
`Patent 7,916,845 B2
`
`various benefits of using VoIP in an inmate calling service,9 including
`“flexibility, added feature functionality, and reduction in operating costs
`needed to support significant upgrading of existing [inmate calling services]
`and systems.” Id. at 6:27–30. Apple also recognizes the problem of
`unauthorized three-way calling. Id. at 5:59–62.
`Figure 2 of Apple, below, illustrates an inmate calling service system
`for use in a correctional facility. Id. at 2:57–59, 9:30–31.
`
`
`As illustrated in Figure 2 above, telephone facility 200 is located at a
`correctional facility and includes telephones 201 used by inmates. Id. at
`11:57–60. Telephone-data network interface 210 interfaces telephones 201
`to data network 220, which may be the Internet or another IP network. Id. at
`11:61–65. Telephone-data network interface 210 can convert analog signals
`
`
`9 Ex. 1005, 2:20 (indicating “ICS” means “inmate calling services”).
`19
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`IPR2017-01437
`Patent 7,916,845 B2
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`received from telephone interface 210 to data signals suitable for
`transmission on data network 220. Id. at 12:62–65.
`According to Apple, VoIP processing capabilities of data network 220
`are shown for “emphasis only” as “separate network cloud 225,” although
`“no such separate grouping of facilities is necessary.” Id. at 14:1–6. Apple
`explains that, “[t]o the contrary, it proves advantageous in many applications
`and configurations to have processing for performing VoIP and other
`network-based functions distributed in network 220 in a manner best suited
`to the geographical, functional and economic constraints and requirements,
`goals and tasks at hand.” Id. at 14:6–11.
`As Figure 2 shows, “data network 220 (supported by its VoIP
`processing components shown as 225)” is connected “through gateway 222
`to Public Switched Telephone Network (PSTN) 120 for completion of calls
`to stations su
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