IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re inter partes review of:
`U.S. Patent 7,529,357 to Rae et al.
`Filed: Herewith
`For: Inmate Management and Call
`Processing Systems and Methods
`
`
`
`Atty. Docket: 3210.048IPR3
`
`
`
`Declaration of Dr. Leonard J. Forys in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,529,357
`
`Attn: Patent Trial and Appeal Board
`Commissioner for Patents
`PO Box 1450
`Alexandria, VA 22313-1450
`Commissioner:
`
`I, Dr. Leonard J. Forys, declare as follows:
`
`1.
`
`I have been retained on behalf of Global Tel*Link Corporation
`
`("GTL") for the above-captioned inter partes review proceeding. I understand that
`
`this proceeding involves U.S. Patent No. 7,529,357 ("the '357 patent") titled "In-
`
`mate Management and Call Processing Systems and Methods" by Robert L. Rae,
`
`et al., and that the '357 patent is currently assigned to Securus Technologies, Inc. I
`
`understand that claims 1, 3, 4, 6, 7-13, 19 and 20 were found to be unpatentable in
`
`a prior inter partes review proceeding.
`
`SKI Exhibit 2051
`
`1
`
`GTL 1002
`IPR of U.S. Patent No. 7,529,357
`
`Page 1 of 101
`
`
`
`In re inter partes review of:
`U.S. Patent 7,529,357 to Rae et al.
`Filed: Herewith
`For: Inmate Management and Call
`Processing Systems and Methods
`
`
`
`Atty. Docket: 3210.048IPR3
`
`
`
`Declaration of Dr. Leonard J. Forys in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,529,357
`
`Attn: Patent Trial and Appeal Board
`Commissioner for Patents
`PO Box 1450
`Alexandria, VA 22313-1450
`Commissioner:
`
`I, Dr. Leonard J. Forys, declare as follows:
`
`1.
`
`I have been retained on behalf of Global Tel*Link Corporation
`
`("GTL") for the above-captioned inter partes review proceeding. I understand that
`
`this proceeding involves U.S. Patent No. 7,529,357 ("the '357 patent") titled "In-
`
`mate Management and Call Processing Systems and Methods" by Robert L. Rae,
`
`et al., and that the '357 patent is currently assigned to Securus Technologies, Inc. I
`
`understand that claims 1, 3, 4, 6, 7-13, 19 and 20 were found to be unpatentable in
`
`a prior inter partes review proceeding.
`
`SKI Exhibit 2051
`
`1
`
`GTL 1002
`IPR of U.S. Patent No. 7,529,357
`
`Page 1 of 101
`
`
`
`2.
`
`I have reviewed and am familiar with the specification of the '357 pa-
`
`tent. I understand that the '357 patent was filed on July 12, 2007 as a continuation-
`
`in-part of U.S. Patent No. 7,899,167 ("the '167 patent") filed on August 15, 2003. I
`
`understand that the Patent Owner represented that the remaining claims of the '357
`
`patent (claims 2, 5, 8, 9, 11, 12, and 14-18) are only entitled to claim priority to the
`
`July 12, 2007 filing date of the '357 patent. While I disagree with the Patent Own-
`
`er's representation, I used July 12, 2007 as the priority date for the challenged
`
`claims in this proceeding
`
`3.
`
`I have reviewed and am familiar with the file history of the '357 patent.
`
`I understand that the file history has been provided as Exhibit GTL 1002. I have
`
`reviewed and am familiar with the file history of the prior inter partes review pro-
`
`ceeding involving the '357 patent (IPR2014-00825).
`
`4.
`
`I have also reviewed and am familiar with the following prior art used
`
`or cited in the Petition for inter partes review, the Petition for covered business
`
`method review of the '357 patent, the prior inter partes review of the '357 patent,
`
`and the prior inter partes review of the '167 patent:
`
`SR-4717, Voice Over Packet in Next Generation Networks: An
`Architectural Framework by Bellcore ("Bellcore") published in
`January 1999, more than eight years prior to the filing date of the
`
`2
`
`Page 2 of 101
`
`
`
`'357 patent. I understand that Bellcore is provided as Exhibit GTL
`1004.
`
`U.S. Patent No. 7,333,798 to Hodge, titled "Telecommunication
`Call Management and Monitoring System," ("Hodge") published
`on February 12, 2004, over three years prior to the filing date of
`the '357 patent. I understand that Hodge is provided as Exhibit
`
`GTL 1005.
`
`U.S. Patent No. 6,831,556 to Boykin, titled "Composite Mobile
`Digital Information System," ("Boykin") issued on December 14,
`
`2004, more than two years prior to the filing date of the '357 pa-
`tent. I understand that Boykin is provided as Exhibit GTL 1006.
`
`U.S. Patent No. 5,861,810 to Nguyen, titled "System and Method
`for Providing Crime Victims Updated Information and Emergency
`
`Alert Notices," ("Nguyen") issued on January 19, 1999, more than
`
`eight years prior to the filing date of the '357 patent. I understand
`
`that Nguyen is provided as Exhibit GTL 1007.
`
`Criminal Calls: A Review of the Bureau of Prisons' Manage-
`
`ment of Inmate Telephone Privileges ("Criminal Calls") by the
`
`U.S. Department of Justice, Office of the Inspector General pub-
`
`lished in August 1999. I understand that Criminal Calls is provided
`
`as Exhibit GTL 1008.
`
`U.S. Patent No. 4,054,756 to Comella, titled "Method and Appa-
`
`ratus for Automating Special Service Call Handling," ("Comella")
`
`3
`
`Page 3 of 101
`
`
`
`►
`
`issued on October 18, 1977. I understand that Comella is provided
`as Exhibit GTL 1010.
`
`PacketCableTM 1.0 Architecture Framework Technical Re-
`port, PKT-TR-ARCH-V01-001201, by Cable Television Labora-
`
`tories, Inc. published in 1999. I understand that PacketCable is
`
`provided as Exhibit GTL 1011.
`
`Voice Over Internet Protocol (VoIP), Proceedings of the IEEE,
`
`Vol. 90, No. 9, 1495-1517 ("Goode") published in September
`
`2002. I understand that Goode is provided as Exhibit GTL 1012.
`
`U.S. Patent No. 7,899,167 to Rae, titled "Centralized Call Pro-
`
`cessing" ("Rae") issued on March 1, 2011. I understand that Rae is
`
`provided as Exhibit GTL 1013.
`
`U.S. Patent No. 7,505,406 to Spadaro, titled "Public Telephone
`
`Control with Voice over Internet Protocol Transmission," ("Spa-
`
`daro") was filed on July 13, 2001, almost six years prior to the fil-
`
`ing date of the '357 patent. I understand that Spadaro is provided
`
`as Exhibit GTL 1014.
`
`Science Dynamics, SciDyn BubbleLINK ("BubbleLink") ar-
`
`chived June 18, 2006. I understand that BubbleLink is provided as
`
`Exhibit GTL 1017.
`
`BOP Historical Timeline, accessed October 11, 2016. I under-
`stand that BOP Historical Timeline is provided as Exhibit GTL
`
`1018.
`
`-4
`
`Page 4 of 101
`
`
`
`SENTRY Audit Report No. 0325 ("SENTRY Audit Report")
`published in July 2003. I understand that SENTRY Audit Report is
`
`provided as Exhibit GTL 1019.
`
`Privacy Impact Assessment for the SENTRY Inmate Manage-
`
`ment System ("SENTRY Impact Assessment") published in July
`
`2012. I understand that the SENTRY Impact Assessment System is
`
`provided as Exhibit GTL 1020.
`
`U.S. Patent No. 8.031,849 to Apple et al., titled "Telephony Sys-
`
`tem and Method with Enhanced Fraud Control," ("Apple") was
`
`filed on September 2, 2005, more than a year prior to the filing
`
`date of the '357 patent. I understand that Apple is provided as Ex-
`
`hibit GTL 2021.
`
`Inmate Security Designation and Custody Classification Pro-
`
`gram Statement ("SENTRY Program Statement") published in
`
`September 2006. I understand that the SENTRY Program State-
`
`ment is provided as Exhibit GTL 1022.
`
`U.S. Patent No. 7,197,560 to Caslin, titled "Communications Sys-
`
`tem with Fraud Monitoring" ("Caslin") issued on March 27, 2007.
`
`I understand that Caslin is provided as Exhibit GTL 1023.
`
`SIP and IPLink and the Next Generation Network ("SIP and
`
`IPLink") published in 2001. I understand that SIP and IPLink is
`
`provided as Exhibit GTL 1024.
`
`Commander II published March 6, 2002. I understand that Com-
`mander II is provided as Exhibit GTL 1025.
`
`-5
`
`Page 5 of 101
`
`
`
`,
`
`SR-2275, Bellcore Notes on the Networks ("Bellcore Notes")
`published December 1997. I understand that Bellcore Notes is pro-
`
`vided as Exhibit GTL 1026.
`
`Engineering and Operations in the Bell System ("Engineering
`
`and Operations") published in 1984. I understand that Engineering
`
`and Operations is provided as Exhibit GTL 1027.
`
`U.S. Patent No. 4,191,860 to Weber, titled "Data Base Communi-
`
`cation Ca11 Processing Method" ("Weber") issued March 4, 1980. I
`
`understand that Weber is provided as Exhibit 1028.
`
`A Telecommunications Buildings/Power Infrastructure In A
`
`New Era of Public Networking by Nicholas Osifchin (IEEE
`
`2000). I understand that Osifchin is provided as Exhibit GTL 1029.
`
`Murder Suspect Arrested, LAPD News Release, April 24, 2002
`
`(LAPD News Release). I understand that the LAPD News Release
`
`is provided as Exhibit GTL 1032.
`
`5.
`
`The '357 patent describes "systems and methods that provide central-
`
`ized or nodal inmate management and telephone processing capabilities." ('357 pa-
`
`tent, Abstract.) I am familiar with the technology described in the '357 patent as of
`
`its filing date of July 12, 2007 (alleged priority date of the remaining claims).
`
`6.
`
`I have been asked to provide my technical review, analysis, insights,
`
`and opinions regarding the '357 patent and the references discussed in the inter
`
`partes review of the '357 patent.
`
`-6
`
`Page 6 of 101
`
`
`
`I.
`
`Qualifications
`
`7.
`
`I have nearly 50 years of experience in the telecommunications industry
`
`working for corporations including AT&T Bell Telephone Laboratories for almost
`
`two decades and Bellcore (formerly Bell Communications Research), the research
`
`and development organization for the Bell Operating Companies (e.g., Bell Atlan-
`
`tic, Southwestern Bell, US West, etc.), for over a decade. As detailed below, I have
`
`worked on many projects and technologies highly relevant to the subject matter of
`
`the '357 patent.
`
`8. My academic background in electrical engineering and computer sci-
`
`ence provides a technical foundation for work in telephone communications net-
`
`works. I received a Bachelor of Science Degree in Electrical Engineering from the
`
`University of Notre Dame in 1963. I received both a Master of Science in Electri-
`
`cal Engineering and the degree of Electrical Engineer from the Massachusetts In-
`
`stitute of Technology in 1965. I received a degree of Doctor of Philosophy in Elec-
`
`trical Engineering and Computer Science from the University of California at
`
`Berkeley in 1968.
`
`9. While at Berkeley, I was an Assistant Professor of Electrical Engineer-
`
`ing and Computer Science, teaching courses in network theory, systems theory and
`
`communications theory, performing research in communications systems and serv-
`
`ing as faculty advisor to 20 undergraduates.
`
`- 7 -
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`Page 7 of 101
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`
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`10.
`
`From 1968 to 1973, I was a member of the technical staff at Bell Tele-
`
`phone Laboratories (known commonly as Bell Labs). I engaged in various research
`
`activities involving network engineering and performance management in tele-
`
`phone networks. I taught several in-house courses in performance analysis and
`
`traffic engineering in telephone networks.
`
`11.
`
`From 1973 to 1984, I was a Technical Supervisor at Bell Telephone
`
`Laboratories, heading a group of technical experts, primarily Ph.D.'s. I was re-
`
`sponsible for performance management/analysis and development of traffic engi-
`
`neering algorithms for various telecommunications networks and their compo-
`
`nents, primarily processor based voice switches, automatic call distributors, and
`
`Private Branch Exchanges ("PBXs"). As part of this effort, I successfully resched-
`
`uled the processor tasks in several of these systems to increase their capacity and
`
`improve their performance. I also was responsible for all of the call center staffing
`
`algorithms for the Bell System and for the engineering of the network elements
`
`used for call centers such as the TSPS (Traffic Service Position System), Rockwell
`
`ACDs, and the #5 CrossBar ACD. ACDs are Automatic Call Distributors, special
`
`purpose switches used to provide call center functionality. In particular, these net-
`
`work elements were used during this time period to provide collect calling for in-
`
`mate phones as they handled both automatic and operator assisted coin phones and
`
`automatic and assisted collect calling. I note that these network elements were cen-
`
`8
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`Page 8 of 101
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`
`
`tralized, deployed remotely from the prison facilities and served multiple prison
`
`facilities.
`
`12.
`
`From 1984 to 1994, I was a District Manager for Bell Communications
`
`Research ("Bellcore"), heading a group of 7 to 15 technical experts, primarily
`
`Ph.D.'s. I was responsible for the specification and testing of a variety of voice
`
`network components. This work included writing sections of the requirements used
`
`by the Bell Operating Companies to buy network components in their networks. I
`
`also tested the compliance (to the requirements) of several voice switches made by
`
`various companies (e.g., Nortel, Lucent, Ericsson, Fujitsu, NET, and Siemens).
`
`13. During this time period, I further consulted on the engineering and per-
`
`formance of various supplemental telephonic services such as Voice Mail systems,
`
`including those manufactured by Boston Technologies, Unisys, and Digital Sound
`
`Corporation, as well as supporting equipment such as SMDI (Simplified Message
`
`Display Interface) links. Thus, I am familiar with the types of recording technolo-
`
`gies available to record inmate conversations prior to the alleged priority date of
`
`the remaining claims of the '357 patent. I also participated and contributed to vari-
`
`ous national and international voice and data standards organizations.
`
`14. During this period, I continued my involvement with call center tech-
`
`nology. In particular, I was responsible for the engineering of all call centers for
`
`9
`
`Page 9 of 101
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`
`
`the Bell Operating Companies. This included analyzing specific network elements
`
`used to handle inmate telephone calls such as Nortel's TOPS (Traffic Operator Po-
`
`sition System) and MPP (Multi-Purpose Position) systems and AT&T's No. 5
`
`OSPS (Operator Services Position Station).
`
`15. Another of my responsibilities while at Bellcore was analyzing and
`
`providing engineering algorithms for data network components used by the Bell
`
`Operating Companies. As part of this endeavor, I was a leader in developing novel
`
`traffic engineering methods for Internet data networks and other high speed data
`
`networks such as Asynchronous Transfer Mode (ATM) and Frame Relay. This in-
`
`cluded characterizing Internet traffic and developing loading guidelines for net-
`
`work components including routers and switches. Through this effort, I worked on
`
`some of the earliest deployed packet-based networks, some of which included
`
`voice over packet technologies.
`
`16.
`
`I was Bellcore's prime technical leader for determining root causes of,
`
`and proposed solutions for, several Signaling System No. 7 ("SS7") data network
`
`outages, including the famous 1990 AT&T nationwide outage, as well as the 1991
`
`Washington, D.C., Pittsburgh, and Los Angeles outages. I was responsible for writ-
`
`ing new sets of requirements for SS7 networks and was involved in a large scale
`
`testing and analysis program for a wide variety of SS7 network components.
`
`- 10 -
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`Page 10 of 101
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`
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`17.
`
`I was named a Bellcore Fellow in 1992, only the fifth person to receive
`
`such an award.
`
`18.
`
`From 1994 to 1995, I was a Chief Scientist at Bellcore, overseeing the
`
`technical work of 50 technical experts, many of whom had Ph.D.'s. I was involved
`
`in the teaching of teletraffic engineering and performance management to various
`
`bodies, including the Federal Communications Commission, which included vari-
`
`ous aspects of both voice and data networks, including voice mail systems. I served
`
`as a "trouble shooter," responsible for identifying root causes for diverse network
`
`problems involving a variety of technologies including both high speed data net-
`
`works as well as telephone networks. I analyzed the potential impact of earth-
`
`quakes and other natural disasters on telecommunications network performance.
`
`The National Science Foundation sponsored me to be the sole U.S. telecommuni-
`
`cations industry representative at the First International Joint U.S.-Japan Earth-
`
`quake Symposium in 1993.
`
`19.
`
`Since 1995, I have been President of my own company, The Forys
`
`Consulting Group, Inc., providing consulting in voice and data communications
`
`services. Relevant to the subject matter of this case, I used HP's SS7 network mon-
`
`itoring capabilities to analyze Internet traffic patterns in a large metro area. As part
`
`Page 11 of 101
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`
`
`of a team of international experts, I investigated a wide range of issues involving
`
`the introduction of a new line of vendor products in a foreign national network.
`
`20. As a consultant to a large telephone company, I advised them on quality
`
`of service issues in providing voice over ATM (with and without IP), Internet and
`
`Multiprotocol Label Switching (MPLS) networks. I further analyzed various sup-
`
`plier components for providing hybrid fiber coax access in cable networks. I con-
`
`sulted with a large company on the economic and technical problems associated
`
`with providing voice and data communications over a foreign cable network.
`
`21. During this period, I also performed extensive consulting for various
`
`data communications systems, including Internet access using satellite systems in-
`
`cluding LAN in the sky technologies for airplanes. I analyzed the performance,
`
`provided traffic inputs and helped specify traffic network management/congestion
`
`controls for three satellite data communications systems capable of handling both
`
`packetized voice as well as Internet traffic.
`
`22.
`
`I experimented with some of the first VoIP systems, including a 1996
`
`version of Vocaltec's Internet Phone.
`
`23. My Curriculum Vitae is attached as Exhibit GTL 1003, which contains
`
`further details on my education, experience, publications, and other qualifications
`
`to render an expert option. My work on this case is being billed at a rate of $400.00
`
`- 12 -
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`Page 12 of 101
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`
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`per hour, with reimbursement for actual expenses. My compensation is not contin-
`
`gent upon the outcome of this inter partes review.
`
`II. My Understanding of Claim Construction
`
`24.
`
`I understand that, during an inter partes review, claims are to be given
`
`their broadest reasonable construction in light of the specification as would be read
`
`by a person of ordinary skill in the relevant art.
`
`25.
`
`I understand in the prior inter partes review proceeding the Board con-
`
`strued the term "call application management system" as a system that performs
`
`the enumerated function of "connecting a call to or from the telephone terminals
`
`over telephone carrier network responsive to receiving a request for connecting the
`
`call." (IPR2014-00825, Final Written Decision, p. 26.) For purposes of this pro-
`
`ceeding, I adopt this construction.
`
`III. My Understanding of Obviousness
`
`26.
`
`I understand that a patent claim is invalid if the claimed invention
`
`would have been obvious to a person of ordinary skill in the field at the time the
`
`application was filed. This means that even if all of the requirements of the claim
`
`cannot be found in a single prior art reference that would anticipate the claim, the
`
`claim can still be invalid.
`
`- 13 -
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`Page 13 of 101
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`
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`27. As part of this inquiry, I have been asked to consider the level of ordi-
`
`nary skill in the field that someone would have had at the time the claimed inven-
`
`tion was made. In deciding the level of ordinary skill, I considered the following:
`
`•
`
`•
`
`•
`
`the levels of education and experience of persons working in the field;
`
`the types of problems encountered in the field; and
`
`the sophistication of the technology.
`
`28.
`
`To obtain a patent, a claimed invention must have, as of the priority
`
`date, been nonobvious in view of the prior art in the field. I understand that an in-
`
`vention is obvious when the differences between the subject matter sought to be
`
`patented and the prior art are such that the subject matter, as a whole, would have
`
`been obvious at the time the invention was made to a person having ordinary skill
`
`in the art.
`
`29.
`
`I understand that to prove that prior art or a combination of prior art
`
`renders a patent obvious, it is necessary to (1) identify the particular references
`
`that, singly or in combination, make the patent obvious; (2) specifically identify
`
`which elements of the patent claim appear in each of the asserted references; and
`
`(3) explain how the prior art references could have been combined in order to cre-
`
`ate the inventions claimed in the asserted claim.
`
`- 14 -
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`Page 14 of 101
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`30.
`
`I understand that certain objective indicia can be important evidence re-
`
`garding whether a patent is obvious or nonobvious. Such indicia include: commer-
`
`cial success of products covered by the patent claims; a long-felt need for the in-
`
`vention; failed attempts by others to make the invention; copying of the invention
`
`by others in the field; unexpected results achieved by the invention as compared to
`
`the closest prior art; praise of the invention by the infringer or others in the field;
`
`the taking of licenses under the patent by others; expressions of surprise by experts
`
`and those skilled in the art at the making of the invention; and the patentee pro-
`
`ceeding contrary to the accepted wisdom of the prior art. I am not aware of any
`
`secondary considerations of non-obviousness regarding the '357 patent
`
`Iv. Level of Ordinary Skill in the Art
`
`31.
`
`I understand the Board in the prior inter partes review proceeding de-
`
`termined that one of ordinary skill in the art would have a B.S. degree in Electrical
`
`Engineering, Computer Science, or an equivalent field as well as at least three
`
`years of academic or industry experience in telephony systems. (IPR2014-00825,
`
`Final Written Decision, p. 29.) The Board's construction is consistent with the lev-
`
`el of ordinary skill that I proposed in the prior IPR proceeding. For purposes of this
`
`proceeding, I adopt the Board's level of ordinary skill in the art.
`
`- 15 -
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`
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`V. Overview of the '357 patent
`
`32.
`
`The '357 patent describes "systems and methods that provide central-
`
`ized or nodal inmate management and telephone call processing capabilities."
`
`('357 patent, Abstract.) Centralization of information management, according to
`
`the '357 patent, provides the benefits of data sharing, aggregation, and analysis
`
`across multiple served facilities. (See, e.g., '357 patent, 3:65-4:6.)
`
`33.
`
`I understand that the '357 patent is a continuation-in-part of U.S. Patent
`
`No. 7,899,167. The claims of the '167 patent are directed to the "telephone call
`
`processing capabilities" of the system. Independent claim 1 (reproduced below) in-
`
`cludes a networking device, an unauthorized call activity detection system, a call
`
`application management system, and a billing system.
`
`1. A centralized call processing system for providing call processing
`
`services to a plurality of prison facilities, comprising:
`
`a networking device connected via digital data links to call
`
`processing gateways at the plurality of prison facilities to collect
`
`outgoing Voice over Internet Protocol (VoIP) data packets associat-
`ed with calls from the plurality of prison facilities and to distribute
`
`incoming VoIP data packets associated with the calls to the plurality
`
`of prison facilities, the plurality of prison facilities located remotely
`from the call processing gateways, each of the plurality of prison fa-
`
`cilities including at least one telephone terminal;
`
`- 16 -
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`Page 16 of 101
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`
`
`an unauthorized call activity detection system co-located with
`the networking device and connected to the networking device for
`
`detecting three-way call activity associated with the calls placed
`
`from one or more of the plurality of telephone terminals, the three-
`way call activity detection not performed at the plurality of the pris-
`
`on facilities;
`
`a call application management system co-located with the
`
`networking device and connected to the networking device and the
`
`unauthorized call activity detection system for at least processing the
`
`outgoing VoIP data packets from the plurality of prison facilities in-
`
`to outgoing call signals and transmitting the outgoing call signals to
`
`a first telephone carrier network, the call application management
`
`system receiving incoming call signals from the first telephone car-
`
`rier network and processing the incoming call signals into the in-
`
`coming VoIP data packets for distribution to the plurality of prison
`
`facilities by the networking device; and
`
`a billing system co-located with said call application man-
`
`agement system and located remotely from the call processing gate-
`
`ways, the billing system connected to the call application manage-
`
`ment system for providing accounting of the calls.
`
`34.
`
`I understand that the Board found all claims of the '167 patent un-
`
`patentable over the applied art. (IPR2014-00493, Final Written Decision.) I fur-
`
`ther understand that the Federal Circuit affirmed the Board's findings. Securus
`
`- 17 -
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`Page 17 of 101
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`
`
`Technologies, Inc. v. Global Tel Link Corporation, Appeal No. 2016-1372, 2016-
`
`1373, Fed. Cir. R. 36 Affirmance (Dec. 8, 2016).
`
`35.
`
`I further understand that claims 1, 3, 4, 6, 7, 10, 13, 19, and 20 of the
`
`'357 patent were found unpatentable over the applied prior art in the prior inter
`
`partes review proceeding. Independent claim 1 of the '357 patent (reproduced be-
`
`low) has two call processing limitations, "networking device" and the "call appli-
`
`cation management system," and a single date storage/management system com-
`
`ponent: "inmate management system." These claims merely add the component of
`
`centralized data storage and management to portions of the telephone call pro-
`
`cessing capabilities recited in the '167 patent and found unpatentable by the Board
`
`in the '167 IPR proceeding. The '357 patent does not add or purport to add any
`
`new call processing capabilities. The recited information management, networking,
`
`and call processing components recited in claim 1 of the '357 patent are conven-
`
`tional and operate for their usual and intended purpose.
`
`1. A computer-based system, at a plurality of facilities, for
`
`managing inmate information, each of the facilities having one or
`
`more telephone terminals and computer terminals, the computer-
`
`based system located remotely from at least one of the plurality of
`
`facilities, the system comprising:
`
`a networking device exchanging Voice over Internet Proto-
`col (VoIP) data packets with call processing gateways at the plural-
`
`- 18 -
`
`Page 18 of 101
`
`
`
`ity of facilities over digital data links, the call processing gateways
`processing the VoIP data packets to or from the telephone termi-
`nals for transmission over the digital data links;
`an inmate management-system coupled to the networking
`device for providing shared data access of inmate records to com-
`puter terminals at said plurality of facilities, said inmate records
`created with first inmate information collected from a first com-
`puter terminal at a first facility of the plurality of facilities and
`modified responsive to collecting second inmate information from
`a second computer terminal at a second facility of the plurality of
`
`facilities; and
`
`a call application management system connecting a call to
`
`or from the telephone terminals over a telephone carrier network
`
`responsive to receiving a request for connecting the call and the
`
`call being authorized based on the inmate records provided by the
`
`inmate management system.
`
`Independent claim 10 is a method claim corresponding to system claim 1. Claim
`
`10 recites the same conventional actions performed by the conventional compo-
`
`nents of claim 1.
`
`36. As I detail below, the centralized storage and management of data (in-
`
`cluding inmate data) was not only known but it was conventional before the July
`
`12, 2007 filing date of the '357 patent. For example, the Federal BOP used a cen-
`
`tralized system (SENTRY) to store and manage inmate data as early as 1978, as I
`
`discuss in further detail below. (See, e.g., Exh. 1019, SENTRY Audit Report;
`
`- 19 -
`
`Page 19 of 101
`
`
`
`SENTRY Program Statement.) Thus, the '357 patent claims conventional inmate
`
`management and permits access to the centralized inmate management system
`
`from multiple remote facilities. Further, the ability for a first terminal to create a
`
`record in a centralized database and a second terminal at a different location to
`
`modify that record was standard and in-use in database systems prior to the July
`
`12, 2007 filing date of the '357 patent. The SENTRY system is designed to pro-
`
`vide exactly this fiinctionality. The Board recognized that claims 1, 3, 4, 6, 7, 10,
`
`13, 19, and 20 were obvious over the applied Spadaro and Hodge grounds in the
`
`prior IPR proceeding. The remaining dependent claims merely use the convention-
`
`al technology recited in independent claims 1 and 10 and the claims of the '167 pa-
`
`tent in well-known and routine ways.
`
`37. Figure 1 of the '357 patent (reproduced below) illustrates "an inmate
`
`management and call processing system according to an embodiment of the present
`
`invention." ('357 patent, 6:25-26.) The call processing system 100 includes a
`
`"computer-based platform 101 in communication with facilities 150-180 via net-
`
`work 130." ('357 patent, 6:40-42.)
`
`- 20 -
`
`Page 20 of 101
`
`
`
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`38. As illustrated in Figure 1, one or more call processing gateways 140 are
`
`disposed "at or near sites for which inmate management and call processing ser-
`
`vices are to be provided, here facilities 150-180." ('357 patent, 6:67-7:3.) The call
`
`processing gateways 140 "provide interfacing and arbitration between a number of
`
`-21 -
`
`Page 21 of 101
`
`
`
`protocols, signals, and/or interfaces." ('357 patent, 7:3-5.) The '357 patent
`
`acknowledges that the use of VoIP, including call processing gateways that convert
`
`calls to and from VoIP, existed in the prior art: "Embodiments of the present in-
`
`vention utilize commercially available devices, such as the IAD 2400 series of in-
`
`tegrated access devices available from Cisco Systems, Inc., San Jose, Calif., in
`
`providing a call processor gateway." ('357 patent, 7:20-23.)
`
`39. Computer-based platform 101 "includes router-switch 118 coupling
`
`network 130 to various systems and components comprising computer-based plat-
`
`form via network 111." ('357 patent, 8:41-44.) The claims refer to router/switch
`
`118 as a "networking device [that] exchang[es] Voice Over Internet Protocol
`
`(VoIP) data packets with call processing gateways." Routers and switches capable
`
`of exchanging VoIP traffic with other components were known and in common use
`
`before July 12, 2007. For example, Bellcore discloses a core network that uses
`
`routers (Exh. 1026, Bellcore, p. 5-56); and both PacketCable and Goode disclose
`
`the use of routers for VoIP network traffic. (Exh. 1011, PacketCable, p. 10; Exh.
`
`1012, Goode, p. 2.) Exchanging IP packets (including VoIP packets) is a conven-
`
`tional function of a router/switch. Thus, the '357 patent uses its "networking de-
`
`vice" (router/switch) for its ordinary purpose. Computer-based platform 101 also
`
`includes multiple functional components: a call application management system
`
`- 22 -
`
`Page 22 of 101
`
`
`
`110, a billing system 112, a validation system 113, an unauthorized call activity
`
`detection system 114, and a call recording system.
`
`VI. Background of the Technologies Disclosed in the '357 patent
`
`A. Voice over IP Networks
`
`40.
`
`The first commercial VoIP product was introduced by VocalTec Com-
`
`munications Ltd. in 1995. Over the next eight years, VoIP implementations by tel-
`
`ecommunications carriers increased dramatically. In 1999, industry experts esti-
`
`mated that approximately 10% of all voice traffic would be carried over a VoIP
`
`network by 2003. (Bellcore, 1-1.) By the July 12, 2007 filing date of the '357 pa-
`
`tent, the use of VoIP for voice communications was well-established and routine.
`
`41.
`
`The underlying VoIP architecture disclosed and claimed in the '357 pa-
`
`tent was well-known prior to the filing date of the '357 patent (July 12, 2007). This
`
`VoIP architecture was used by local exchange carriers (e.g., Verizon), interex-
`
`change carriers (e.g., MCI and Level 3), and even cable providers (e.g., Cox) be-
`
`fore 2007. For example, SR-4717, Voice over Packet in Next Generation Net-
`
`works: An Architecture Framework by Bellcore, published over eight years before
`
`the '357 patent, describes VoIP networks used by carriers. U.S. Patent No.
`
`7,197,560 to Caslin, et al, filed more than five years and published before the filing
`
`date of the '357 patent, depicts a VoIP architecture utilized by an interexchange
`
`carrier. "PacketCable 1.0 Architecture Framework Technical Report" published in
`
`- 23 -
`
`Page 23 of 101
`
`
`
`1999 (more than seven years before the filing date of the '357 patent) depicts a
`
`VoIP architecture utilized by cable providers. "SIP and IPLink in the Network
`
`Generation Network" by Intel pub
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