Filed on behalf of Global Tel*Link Corporation.
`By:
`Lori A. Gordon
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`Michael. B. Ray
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`Daniel S. Block
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`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
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`1100 New York Avenue, NW
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`Washington, D.C.
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`Tel: (202) 371-2600
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`Fax: (202) 371-2540
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`PETITION FOR POST-GRANT REVIEW
`OF U.S. PATENT NO. 8,855,280
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`

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`TABLE OF CONTENTS
`
`I.
`
`II.
`
`Mandatory Notices (37 C.F.R. § 42.8(a)(1)) ............................................ 1
`
`Grounds for Standing (37 C.F.R. § 42.204(a)) ........................................ 1
`
`III.
`
`Identification of Challenge (37 C.F.R. § 42.204(b)) ................................ 2
`
`A.
`B.
`IV.
`
`A.
`B.
`C.
`V.
`
`Statutory grounds for the challenge. ............................................................ 2
`Citation of Prior Art ..................................................................................... 2
`The ’280 Patent .......................................................................................... 4
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`Overview of the ’280 Patent ........................................................................ 4
`Level of Ordinary Skill in the Art ............................................................... 5
`Claim Construction ...................................................................................... 6
`Grounds of Rejection ................................................................................. 7
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`B.
`
`A.
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`Ground 1: Claims 1-20 are unpatentable under 35 U.S.C. § 101 because
`they claim the abstract idea of storing the identification of a party to a
`communication along with a file used to identify the party. ....................... 7
`Ground 2: Claims 1-4, 7, 11, 15, and 18 are obvious over Viola and
`Timmins. .................................................................................................... 12
`1. Overview of Viola ...................................................................................... 12
`2. Overview of the combination of Timmins and Viola. ............................... 13
`3. The combination of Viola and Timmins renders claim 1 obvious. ........... 15
`4. The combination of Viola and Timmins renders claim 15 obvious. ......... 19
`5. The combination of Viola and Timmins renders claim 18 obvious. ......... 23
`6. The combination of Viola and Timmins renders claim 2 obvious. ........... 28
`7. The combination of Viola and Timmins renders claim 3 obvious. ........... 28
`8. The combination of Viola and Timmins renders claim 4 obvious. ........... 29
`9. The combination of Viola and Timmins renders claim 7 obvious. ........... 29
`10. The combination of Viola and Timmins renders claim 11 obvious. ......... 30
`C.
`Ground 3: Claims 5, 6, 8, 9, 10, 13, 14, 16, 19 and 20 are obvious over
`Viola, Timmins, and Gongaware. .............................................................. 30
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`

`
`Petition for Post Grant Review of
`U.S. Pat. No. 8,855,280
`1. Overview of Combination of Gongaware and Viola and Timmins. .......... 30
`2. The combination of Viola, Timmins, and Gongaware renders claims
`5, 6, and 14 obvious. .................................................................................. 32
`3. The combination of Viola, Timmins, and Gongaware renders claims 8
`and 9 obvious. ............................................................................................ 34
`4. The combination of Viola, Timmins, and Gongaware renders claims 10
`and 19 obvious. .......................................................................................... 35
`5. The combination of Viola, Timmins, and Gongaware renders claims 12
`obvious. ...................................................................................................... 38
`6. The combination of Viola, Timmins, and Gongaware renders claim 13
`obvious. ...................................................................................................... 39
`7. The combination of Viola, Timmins, and Gongaware renders claim 16
`obvious. ...................................................................................................... 41
`8. The combination of Viola, Timmins, and Gongaware renders claim 17
`obvious. ...................................................................................................... 43
`9. The combination of Viola, Timmins, and Gongaware renders claim 20
`obvious. ...................................................................................................... 45
`Ground 4: Claims 1-4, 7-9, 11, 15, and 18 are obvious over Reinhold
`and Walters. ............................................................................................... 45
`1. Overview of Reinhold. ............................................................................... 45
`2. Overview of the combination of Reinhold and Walters. ........................... 47
`3. The combination of Reinhold and Walters renders claim 1 obvious. ........ 49
`4. The combination of Reinhold and Walters renders claim 15 obvious. ...... 52
`5. The combination of Reinhold and Walters renders claim 18 obvious. ...... 56
`6. The combination of Reinhold and Walters renders claim 2 obvious. ........ 60
`7. The combination of Reinhold and Walters renders claim 3 obvious. ........ 61
`8. The combination of Reinhold and Walters renders claim 4 obvious. ........ 61
`9. The combination of Reinhold and Walters renders claim 7 obvious. ........ 62
`10. The combination of Reinhold and Walters renders claims 8 and 9 obvious
` .................................................................................................................... 62
`11. The combination of Reinhold and Walters renders claim 11 obvious. ...... 63
`E.
`Ground 5: Claims 5, 6, 13, 16, and 20 are obvious over Reinhold,
`Walters, and Dudovich. ............................................................................. 64
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`D.
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`- ii -
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`

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`F.
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`Petition for Post Grant Review of
`U.S. Pat. No. 8,855,280
`1. Overview of the Combination of Dudovich, Reinhold and Walters .......... 64
`2. The combination of Reinhold, Walters, and Dudovich renders claims
`5 and 6 obvious. ......................................................................................... 66
`3. The combination of Reinhold, Walters, and Dudovich renders claim 13
`obvious. ...................................................................................................... 68
`4. The combination of Reinhold, Walters, and Dudovich renders claim 16
`obvious. ...................................................................................................... 69
`5. The combination of Reinhold, Walters, and Dudovich renders claim 20
`obvious. ...................................................................................................... 70
`Ground 6: Claims 10, 12, 14, 17, and 19 are obvious over Reinhold,
`Walters, and Gongaware. ........................................................................... 71
`1. Overview of the combination of Reinhold, Walters, and Gongaware. ...... 71
`2. The combination of Reinhold, Walters, and Gongaware renders claims
`10 and 19 obvious. ..................................................................................... 73
`3. The combination of Reinhold, Walters, and Gongaware renders claims
`12 obvious .................................................................................................. 75
`4. The combination of Reinhold, Walters, and Gongaware renders claim
`14 obvious. ................................................................................................. 77
`5. The combination of Reinhold, Walters, and Gongaware renders claim
`17 obvious. ................................................................................................. 78
`Conclusion ................................................................................................ 80 
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`VI.
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`

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`Petition for Post Grant Review of
`U.S. Pat. No. 8,855,280
`
`TABLE OF AUTHORITIES
`
`Cases:
`
`Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
`134 S.Ct. 2347 (2014) ...................................................................................... 7, 8, 10
`
`Bilski v. Kappos,
`561 U.S. 593 (U.S. 2010) ......................................................................................... 10
`
`CCS Fitness, Inc. v. Brunswick Corp.,
`288 F.3d 1359 (Fed. Cir. 2002) ................................................................................. 6
`
`Mayo Collaborative v. Prometheus Labs.,
`132 S. Ct. 1289 (2012) ........................................................................................... 7, 8
`
`
`Statutes
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`35 U.S.C. § 101 ...................................................................................................... 2, 7
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`35 U.S.C. § 102(a)(1) ........................................................................................passim
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`35 U.S.C. § 103 .......................................................................................................... 2
`
`
`
`Rules
`
`37 C.F.R. § 42.8(a)(1)) ............................................................................................... 1
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`37 C.F.R. § 42.8(b)(3) ............................................................................................... 1
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`37 C.F.R. § 42.10(a) ................................................................................................... 1
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`37 C.F.R. § 42.204(a) ................................................................................................. 1
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`37 C.F.R. § 42.204(b) ................................................................................................ 2
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`- iv -
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`

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`Petition for Post Grant Review of
`U.S. Pat. No. 8,855,280
`
`EXHIBIT LIST
`
`
`U.S. Patent No. 8,855,280
`
`Description
`
`Declaration of Frank Koperda in Support of Petition for Post-Grant
`Review of U.S. Patent No. 8,855,280
`
`U.S. Patent No. 7,494,061 to Reinhold
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`U.S. Patent No. 7,805,457 to Viola, et al.
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`U.S. Patent Publication No. 2005/0041784 to Timmins, et al.
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`U.S. Patent Publication No. 2012/0051604 to Dudovich, et al.
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`U.S. Patent Publication No. 2013/0044867 to Walters, et al.
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`U.S. Patent Publication No. 2013/0263227 to Gongaware, et al.
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`U.S. Patent No. 7,403,766 to Hodge
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`Curriculum Vitae of Frank Koperda
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`GTL
` Exh. No.
`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`Global Tel*Link Corporation petitions for post-grant review of claims 1-21
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`of United States Patent No. 8,855,280 to Passe et al., titled “Communication detail
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`records (CDRs) containing media for communications in controlled-environment
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`facilities.” (GTL 1001.)
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`I. Mandatory Notices (37 C.F.R. § 42.8(a)(1))
`REAL PARTY IN INTEREST: The real party-in-interest of Petitioner is Global
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`Tel*Link Corporation (“GTL”).
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`RELATED MATTERS: None.
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`LEAD AND BACKUP COUNSEL: Pursuant to 37 C.F.R. § 42.8(b)(3) and
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`42.10(a), Petitioners appoint Lori A. Gordon (Reg. No. 50,633) as its lead counsel
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`and Michael B. Ray (Reg. No. 33,997) and Daniel S. Block (Reg. No. 68,395) as
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`its back-up counsel, all at the address: STERNE, KESSLER, GOLDSTEIN & FOX, 1100
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`New York Avenue, N.W., Washington, D.C., 20005, phone number (202)371-
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`2600 and facsimile (202) 371-2540.
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`SERVICE INFORMATION: Petitioners consent to electronic service by email at
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`the email addresses: lgordon-PTAB@skgf.com, mray-PTAB@skgf.com, and
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`dblock-PTAB@skgf.com.
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`II. Grounds for Standing (37 C.F.R. § 42.204(a))
`The undersigned and GTL certify that the ’280 patent is available for post-
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`grant review. The ’280 patent issued on October 7, 2014, which is less than nine
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`- 1-
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`

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`Petition for Post Grant Review of
`U.S. Pat. No. 8,855,280
`months from the date of this petition. GTL also certifies that it is not barred or es-
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`topped from requesting this post-grant review on the grounds identified herein.
`
`III.
`A.
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`Identification of Challenge (37 C.F.R. § 42.204(b))
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`Statutory grounds for the challenge.
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`Petitioner requests review of claims 1-20 on the following six grounds:
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`
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`GROUND 1: Claims 1-20 are unpatentable under 35 U.S.C. § 101;
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`GROUND 2: Claims 1-4, 7, 11, 15, and 18 are unpatentable under 35 U.S.C. §
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`103 as obvious over U.S. Patent No. 7,805,457 to Viola et al. and U.S. Patent Pub-
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`lication 2004/0190688 to Timmins et al.; GROUND 3: Claims 5, 6, 8, 9, 10,12,
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`13, 14, 16, 17, 19, and 20 are unpatentable under 35 U.S.C. § 103 as obvious over
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`Viola, Timmins, and U.S. Patent Publication 2013/0263227 to Gongaware et al.;
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`GROUND 4: Claims 1-4, 7-9, 11, 15, and 18 are unpatentable under 35 U.S.C. §
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`103 as obvious over U.S. Patent No. 7,494,061 to Dennis J. Reinhold in view of
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`U.S. Patent Publication 2013/0044867 to Walters et al. GROUND 5: Claims 5, 6,
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`13, 16, and 20 are unpatentable under 35 U.S.C. § 103 as obvious over Reinhold,
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`Walters, and U.S. Patent Publication 2012/0051604 to Dudovich et al.; GROUND
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`6: Claims 10, 12, 14, 17, and 19 are unpatentable under 35 U.S.C. § 103 as obvious
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`over Reinhold, Walters, and Gongaware.
`
`B. Citation of Prior Art
`Petitioners cite the following prior art references:
`
`U.S. Patent No. 7,805,457 to Viola (Ex. 1004) is prior art under at least 35
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`

`
`Petition for Post Grant Review of
`U.S. Pat. No. 8,855,280
`U.S.C. § 102(a)(1) because it was issued on September 28, 2010, almost three
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`years before the earliest possible priority date of the ’280 patent.
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`U.S. Patent Publication 2004/0190688 to Timmins (Ex. 1005) is prior art
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`under at least 35 U.S.C. § 102(a)(1) because it was published on September 30,
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`2004, almost nine years before the earliest possible priority date of the ’280 patent.
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`U.S. Patent Publication 2013/0263227 to Gongaware (Ex. 1008) is prior art
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`under at least 35 U.S.C. § 102(a)(2) because it was filed on March 15, 2013, more
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`than 6 months before the earliest possible priority date of the ’280 patent.
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`U.S. Patent No. 7,494,061 to Dennis J. Reinhold (Ex. 1003) is prior art un-
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`der at least 35 U.S.C. § 102(a)(1) because it was issued on February 24, 2009, over
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`four years before the earliest possible priority date of the ’280 patent.
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`U.S. Patent Publication 2013/0044867 to Walters (Ex. 1007) is prior art
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`under at least 35 U.S.C. § 102(a)(1) because it was published on February 21,
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`2013, more than 7 months before the earliest possible priority date of the ’280 pa-
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`tent.
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`U.S. Patent Publication 2012/0051604 to Dudovich (Ex. 1006)is prior art
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`under at least 35 U.S.C. § 102(a)(1) because it was published on March 1, 2012,
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`more than 1 year before the earliest possible priority date of the ’280 patent.
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`- 3 -
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`

`
`Petition for Post Grant Review of
`U.S. Pat. No. 8,855,280
`
`IV. The ’280 Patent
`A. Overview of the ’280 Patent
`The ’280 patent generally relates to creating, maintaining, and making avail-
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`able communication detail records (CDRs) including media in “controlled-
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`environment facilities.” (’280 patent (provided as Ex. 1001), Abstract.) According
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`to the ’280 patent, CDRs are “a record produced by a telecommunication device,”
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`and often include “metadata having data fields that describe a specific instance of a
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`telecommunication transaction....” (’280 patent, 1:34-36.) However, CDRs, accord-
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`ing to the ’280 patent “do[] not include audio data or recordings” (i.e., media).
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`(’280 patent, 1:37-38.) Thus, the ’280 patent discloses “systems and methods for
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`creating, maintaining and making available ... CDRs ... containing media....” (’280
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`patent, 1:54-56.)
`
`The ’280 patent describes first “enabling a communication between two or
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`more parties,” where one of the two or more parties is an inmate. (’280 patent,
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`12:56-61.) The “communication” can be a variety of types, such as “telephone call,
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`a video visitation session, an electronic chat session, a video telephone call, a text
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`message, a prerecorded video message, a social network message, and/or an elec-
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`tronic mail message.” (’280 patent, 12:62-65.)
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`Next, “media associated with the communication” is captured. (’280 patent,
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`12:66-67.) The media can be associated with the communication in a variety of dif-
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`

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`Petition for Post Grant Review of
`U.S. Pat. No. 8,855,280
`ferent ways, for example, the media might include “a still photograph, a movie,
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`video, and/or audio of the resident or of a non-resident party.” (’280 patent, 13:1-
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`3.) The media might also be captured from the communication device itself, or a
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`“distinct media capture device disposed within the correctional facility” or a “me-
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`dia capture device disposed of outside of the facility.” (’280 patent, 13:6-7.) In the
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`case where the capture device is disposed outside of the facility, the media may in-
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`clude “an image, movie or audio captured in the vicinity of a non-resident party
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`participating in the communication.” (’280 patent, 13:10-12.)
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`After the media is captured, “one or more biometric recognition operations
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`based, at least in part, upon the captured media file(s)” is performed. (’280 patent,
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`13:16-19.) The biometric operation could be based on facial recognition or voice
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`verification. (See ’280 patent, 13:19-22.) Finally, once the biometric recognition
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`operations are performed, and the identity of at least one of the parties is estab-
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`lished, the ’280 patent describes that “the media file,” “a reference to the media
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`file,” and/or “the identification of the two or more parties” is added to the “CDR
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`associated with the communication.” (’280 patent, 13:36-38.)
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`B. Level of Ordinary Skill in the Art
`A person having ordinary skill in the art (PHOSITA) would have a B.S. de-
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`gree in Electrical Engineering, Computer Engineering, or an equivalent field, as
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`well as at least 2-5 years of academic or industry experience in the telecommunica-
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`

`
`Petition for Post Grant Review of
`U.S. Pat. No. 8,855,280
`tions industry. (Koperda Decl. (provided as Ex. 1002), ¶ 19.)
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`C. Claim Construction
`Except for the exemplary term set forth below, construed under the broadest
`
`reasonable interpretation standard, the terms are to be given their plain and ordi-
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`nary meaning as understood by a PHOSITA and consistent with the disclosure. Pe-
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`titioner reserves the right to present different constructions in another forum where
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`a different claim construction standard applies.
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`“Communication Detail Record (CDR)”
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`Petitioner contends that the broadest reasonable interpretation of the term
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`CDR is “a record produced by a telecommunications device that contains attributes
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`that are specific to a communication of any type (including video, typed communi-
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`cations, transactions, etc.) handled by that device.” (’280 patent, 7:3-7) Although
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`there is a “heavy presumption” that a claim term carries its ordinary and customary
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`meaning in the context of the disclosure, a “claim term will not receive its ordinary
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`meaning if the patentee acted as his own lexicographer and clearly set forth a defi-
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`nition of the disputed claim term in either the specification or prosecution history.”
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`CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (cita-
`
`tion omitted). Here, the Patentee acted as its own lexicographer by stating “[a]s
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`used herein, a CDR is a record produced by a telecommunications device that con-
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`tains attributes that are specific to a communication of any type (including video,
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`Petition for Post Grant Review of
`U.S. Pat. No. 8,855,280
`typed communications, transactions, etc.) handled by that device.” (’280 patent,
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`7:2-7.) Accordingly, the broadest reasonable interpretation of the term CDR is “a
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`record produced by a telecommunications device that contains attributes that are
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`specific to a communication of any type (including video, typed communications,
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`transactions, etc.) handled by that device.” (’280 patent, 7:3-7.)
`
`V. Grounds of Rejection
`A. Ground 1: Claims 1-20 are unpatentable under 35 U.S.C. § 101 because
`they claim the abstract idea of storing the identification of a party to a
`communication along with a file used to identify the party.
`
`The ’280 patent’s claims are not eligible for patenting under § 101 because
`
`they claim the abstract idea of identifying a party to a communication using bio-
`
`metric information, and the claims do not claim any inventive concept, merely add-
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`ing generic communication and computing devices, field-of-use restrictions, and
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`extra-solution activity. In all, the claims of the ’280 amount to nothing more than
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`an attempt to apply the abstract concept of identifying a party to a communication
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`using biometric information in a controlled-environment (i.e. a prison), which does
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`not make them patentable.
`
`In Alice, the Supreme Court clarified the two-step process for analyzing
`
`claims to determine whether they are directed to patent-ineligible subject matter. In
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`the first step, “[a] court must first “determine whether the claims at issue are di-
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`rected to one of those patent-ineligible concepts” such as an abstract idea. Alice
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`

`
`Petition for Post Grant Review of
`U.S. Pat. No. 8,855,280
`Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. 2347, 2355 (2014) (citing Mayo Col-
`
`laborative v. Prometheus Labs., 132 S. Ct. 1289, 1302-03 (2012)). In the second
`
`step, if the claims include an abstract idea, one must consider “the elements of each
`
`claim both individually and ‘as an ordered combination’ to determine whether the
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`additional elements ‘transform the nature of the claim’ into a patent-eligible appli-
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`cation.” Alice, 134 S.Ct. at 2355 (quoting Mayo, 132 S.Ct. at 1297-98). The claims
`
`here cover the abstract idea of identifying a party to a communication using bio-
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`metric information. The technique of identifying a person based on their face,
`
`voice, or other physical attributes is a ubiquitous part of the human experience. For
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`example, human beings use this abstract idea each time they speak face-to-face
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`with a friend or talk on the phone with their mother. What is more, the claims
`
`preempt an idea that itself has been routinely performed by humans with a pen and
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`paper for scores of years. For example, these claims require nothing significantly
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`more than listening to a recording of a call, and writing down the name of a partic-
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`ipant in the call, actions that are routinely performed in police investigations in-
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`cluding wiretap recording of phone calls.
`
`In Mayo v. Prometheus, the Supreme Court held that abstract ideas are not
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`patentable and the addition of “steps consist[ing] of well-understood, routine, con-
`
`ventional activity ... [that] add nothing significant” to the abstract idea does not
`
`render it patentable. 132 S. Ct. at 1298. The Court also rejected the argument that
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`Petition for Post Grant Review of
`U.S. Pat. No. 8,855,280
`limiting the abstract idea to a field of use is a “patentable application” of that ab-
`
`stract idea. Id.
`
`The claims here recite little more than identifying a party to a communica-
`
`tion using biometric information. Consider claim 1, which has just four steps,
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`summarized as follows:
`
`(1) enable a communication between two-parties, where one of the parties is
`an inmate;
`(2) create a record (i.e., a CDR) that references digital media (e.g., a digital
`media file);
`(3) identifying one of the parties based on the digital media; and
`(4) adding the identity of the identified party to the metadata.
`
`Enabling a communication between two parties, creating a record about the com-
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`munication, identifying one of the parties based on digital media (e.g., by using fa-
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`cial recognition, voice verification, etc.), and adding that identification to a record
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`were well-understood, routine, and conventional activities well before the filing
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`date of the ’280 patent. (Koperda Decl. ¶¶ 25-30, 40.) None of these steps adds an-
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`ything inventive to the abstract idea of identifying a party to a communication us-
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`ing biometric information.
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`
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`That the record holding the identification is limited to a communication de-
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`tail record (CDR) does not save these claims—CDRs, as even the ’280 patent rec-
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`ognizes, were well understood, routine, and conventional records that are created
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`

`
`Petition for Post Grant Review of
`U.S. Pat. No. 8,855,280
`with communications. (’280 patent, 1:34-50; see also Koperda Decl., ¶ 25.) Indeed,
`
`for many communications, one or more CDRs have been created routinely for dec-
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`ades. (Koperda Decl., ¶ 25.) Second, that one of the parties is an inmate, is merely
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`a field of use limitation that amounts to “token postsolution components [that do]
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`... not make the concept patentable.” Bilski v. Kappos, 561 U.S. 593, 612 (U.S.
`
`2010). Further, storing digital media in CDRs and performing biometric analysis of
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`such digital media to determine the identity of communication participants were
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`both routinely performed conventional activities, (Koperda Decl. ¶¶ 27, 30.), which
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`amount to nothing more than extra-solution activity to the abstract idea of identify-
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`ing a party to a communication using biometric information.
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`
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`The other challenged claims recite the same abstract idea without adding an
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`inventive concept separate from the abstract idea itself:
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` Claims 15 and 18 contain only minor (“draftsman’s art”) differences when
`
`compared with claim 1. See Alice, 134 S.Ct at 2351.
`
` Claim 2 recites that the “controlled-environment” can be a prison or jail,
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`which is merely a field-of-use limitation that does not transform the inven-
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`tion to being patentable. See Bilski, 561 U.S. at 612.
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` Claim 3 recites that the “communication” can be a “telephone call,” or a
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`variety of other types of communication, which merely recites the types of
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`Petition for Post Grant Review of
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`communication that the claimed invention can act; it is not an inventive
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`concept.
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` Claims 5, 6, 7, recite the types of “recordings” that could be stored or ref-
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`erenced in the data record (i.e., CDR), all of which are merely extra-
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`solution activity routinely used as methods of recording inmates well be-
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`fore the earliest priority date of the ’280 patent. (Koperda Decl., ¶ 27.)
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` Claims 8 and 9 recite that certain remedial actions can be performed if an
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`inmate’s verification fails, which, is merely extra-solution activity that was
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`routinely performed well before the earliest priority date of the ’280 patent.
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` Claims 10, 11, 12, and 19 are merely time restrictions on when the record-
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`ing is captured.
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` Claims 13, 14, 16, and 17 recite the device that captures the recording, all
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`of which were well known, and commonly implemented techniques of cap-
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`turing communications well before the earliest priority date of the ’280 pa-
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`tent. (Koperda Decl., ¶ 30.)
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` Claim 20 is merely a combination of the elements of earlier dependent and
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`independent claims and adds no new concepts itself.
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`Accordingly, none of the other claims in the ’280 patent add anything signif-
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`icant. Instead, they merely recite field of use limitations, rehash concepts found in
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`the independent claims, or disclose extra-solution activity that was routinely ap-
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`Petition for Post Grant Review of
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`plied well before the earliest priority date of the ’280 patent. Indeed, as following
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`sections demonstrated, all of the concepts in the ’280 patent were well-understood
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`routine, and conventional activities.
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`B. Ground 2: Claims 1-4, 7, 11, 15, and 18 are obvious over Viola and
`Timmins.
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`Viola discloses each and every limitation of claims 1-4, 7, 11, 15, and 18 ex-
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`cept that Viola does not expressly state that a “resulting identification” is added to
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`a “communication detail record” (CDR) based on a “comparison between the digi-
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`tal media file and signature.” While this limitation would be obvious in view of the
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`disclosed system in Viola, Timmins expressly discloses a “resulting identification”
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`can be added to a CDR based on a comparison between “a digital media file” and a
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`“signature” As explained in further detail below, it would have been obvious to a
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`PHOSITA at the time of filing the ’280 patent to combine Viola and Timmins.
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`1. Overview of Viola
`Viola is directed to “monitoring activity of detainees” by “searching one or
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`more databases,” such as “call record databases.” (Viola (provided as Ex. 1004),
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`abstract.) Viola explains that “[p]risoners typically have the capability to make tel-
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`ephone calls and may have the capability to receive voice messages and to send
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`and receive text and/or email messages.” (Viola, 8:14-19.) These communications
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`are managed by a “call management system (CMS),” which “may be used at a
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`prison, jail, or other detention facility to provide telephone and/or messaging ser-
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`Petition for Post Grant Review of
`U.S. Pat. No. 8,855,280
`vices to prisoners.” (Viola, 8:16-22.) Prisoners use telephones controlled by the
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`CMS “to make telephone calls to family, friends and other parties.” (Viola, 8:19-
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`23.) These telephone calls, whether live or recorded, may be monitored for “a
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`voice biometric match” and trigger an alert if the inmate who was originally au-
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`thorized is no longer on the call. (Viola, 19-21:22; Koperda Decl., ¶ 35.)
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`Viola also discloses that the CMS maintains a record of each call, referred to
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`as a “Call Detail Record (CDR)” (Viola, 8:37-41.) “The CDR may identify the
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`prisoner by name, account number or other identifier. The CDR preferably in-
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`cludes information to identify the source and destination of the call, such as a
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`called and calling telephone number or IP address.” (Viola, 8:44-48.) The CDR can
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`also include a digital media file, such as a copy of the recording of the call. (Viola,
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`9:13 (Table 7).)
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`2. Overview of the combination of Timmins and Viola.
`Viola discloses that for each call initiated by an inmate, the CMS creates a
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`CDR that includes the “prisoner’s name” and a recording of a call. (Viola, 8:44-49;
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`Viola, 9:13.) Viola, however, does not explicitly disclose how the “prisoner’s
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`name,” which is stored in its CDR, is determined on a call-by-call basis. Although,
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`Viola does disclose that the recorded call can be monitored for “a voice biometric
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`match,” it does not explicitly state that “voice biometrics” could be used to estab-
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`lish the identity of a party to the call. (Viola, 19-15:22.) To the extent that a PHOS-
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`Petition for Post Grant Review of
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`ITA would not just use Viola’s voice biometric match to identify an inmate and
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`add the inmate’s name to a CDR, a PHOSITA would have been motivated to seek
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`out other information for how the identity of callers can be determined before, dur-
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`ing or after a call, and added to a CDR. This would have led a PHOSITA, to Tim-
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`mins, describing a communication system for establishing the identity of callers.
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`Timmins identifies at least one party of a call by comparing a voiceprint to a
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`previously stored sample, and placing the resulting identity of the party in a CDR.
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`(Koperda Decl., ¶ 39.) The system of Timmins identifies “a profile of one of the
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`plurality of users stored by the system based, at least in part, on a voiceprint of the
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`one user received in the call.” (Timmins (provided as Ex. 1005), ¶ [0015].) Tim-
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`mins performs this voiceprint analysis by comparing “a voiceprint of a caller” with
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`“stored voiceprint sample or samples of authorized users of the account to deter-
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`mine if there is an acceptable match.” (Timmins, ¶ [0068].) If there is an accepta-
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`ble match, “an identifier of the individual may be inserted into a call detail record
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`(‘CDR’) for that communication.” (Timmins, ¶ [0124].)
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`It would have been obvious to incorporate Timmins’s voiceprint analysis
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`with Viola’s CMS because it is merely combining known elements to yield pre-
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`dictable results. (Koperda Decl., ¶¶ 41, 50.) Viola describes CDRs containing the
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`identity of inmate-callers and a copy of the recording of the call. (Viola, 8:62-64.)
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`Viola further describes using voiceprint analysis to determine the identity of callers
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`Petition for Post Grant Review of
`U.S. Pat. No. 8,855,280
`on a live or a copy of the recorded call. (Viola, 19:17-22.) Timmins describes a
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`voiceprint analysis that results in an identifie