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 PGR2015-00013
`Patent 8,855,280 B1
`__________________
`
`PETITIONER GLOBAL TEL*LINK CORPORATION’S
`REPLY TO PATENT OWNER RESPONSE
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`

`
`The combination of Reinhold and Walters teaches or suggests each
`and every limitation of the independent claims. .............................................. 1
`A.
`The specification does not require a “communication detail
`record” to be created for each communication. .................................... 1
`1.
`The claims do not require a communication detail record
`to be created for each communication. ....................................... 3
`The specification does not limit a communication detail
`record to a record created for each communication. ................... 4
`A call detail record does not have to be created for every
`call. .............................................................................................. 5
`Conclusion .................................................................................. 6
`4.
`The combination of Reinhold and Walters teaches or suggests a
`“communication detail record.” ............................................................ 6
`Reinhold and Walters render obvious identifying a party based
`on comparing the included digital media file with a signature. ..........10
`Dependent claims 5, 6, 13,16, and 20 are obvious over Reinhold,
`Walters and Dudovich. ..................................................................................13
`1.
`Dudovich is analogous art .........................................................13
`2.
`The combination of Reinhold, Walters, and Dudovich
`renders obvious claims 5 and 6. ................................................16
`III. Claims 12 and 17 are obvious over Reinhold, Walters, and
`Gongaware. ....................................................................................................18
`A. Gongaware suggests that the contents of a media file can be
`obtained after termination of the communication. ..............................18
`Gongaware suggests obtaining a media file using a device
`separate from the communication device used by the non-
`resident. ...............................................................................................21
`IV. GTL properly identified all real parties-in-interest in the Petition;
`Securus’ challenge is legally insufficient and factually unsupported. ..........22
`Conclusion .....................................................................................................25
`
`2.
`
`3.
`
`B.
`
`C.
`
`B.
`
`
`I.
`
`II.
`
`V.
`
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`Case PGR2015-00013
`Patent No. 8,855,280
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`
`TABLE OF CONTENTS
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`Case PGR2015-00013
`Patent No. 8,855,280
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`
`TABLE OF AUTHORITIES
`
`
`Cases:
`
`Aruze Gaming Macau, Ltd. v. MGT Gaming, Inc.,
`IPR2014-01288, Paper 13 (Feb. 20, 2015) .............................................................. 24
`
`CCS Fitness, Inc. v. Brunswick Corp.,
`288 F.3d 1359 (Fed. Cir. 2002).................................................................................. 2
`
`In re Clay,
`966 F.2d 656 (Fed. Cir. 1992) .................................................................................. 15
`
`Jurgens v. McKasy,
`927 F.2d 1552 (Fed.Cir.1991) .................................................................................. 14
`
`KSR Int’l v. Teleflex Inc.,
`550 U.S. 398 (2007) ................................................................................................. 12
`
`Oatey Co. v. IPS Corp.,
`514 F.3d 1271 (Fed. Cir. 2008).................................................................................. 4
`
`Par Pharm., Inc. v. Horizon Therapeutics, Inc.,
`IPR2015-01117, Paper 13 (Nov. 4, 2015) ............................................................... 24
`
`Petroleum Geo-Services Inc. v. Westerngeco LLC,
`IPR2014-00687, Paper 33 (Dec. 15, 2014) .............................................................. 25
`
`Toshiba et al. v. Gold Charm Ltd.,
`IPR2015-01497, Paper 12 (Dec. 28, 2015) .............................................................. 24
`
`Other Authority:
`
`Trial Practice Guide, 77 Fed. Reg. 48,695 ............................................................... 24
`Trial Practice Guide, 77 Fed. Reg. 48,759 ............................................................... 24
`
`
`
`
`-iii-
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`

`
`GTL
`Exhibit
`No.
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
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`Case PGR2015-00013
`Patent No. 8,855,280
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`
`EXHIBIT LIST
`
`
`Description
`U.S. Patent No. 8,855,280
`
`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
`
`U.S. Patent No. 7,805,457 to Viola, et al.
`
`U.S. Patent Publication No. 2005/0041784 to
`Timmins, et al.
`
`U.S. Patent Publication No. 2012/0051604 to
`Dudovich, et al.
`
`U.S. Patent Publication No. 2013/0044867 to
`Walters, et al.
`
`U.S. Patent Publication No. 2013/0263227 to
`Gongaware, et al.
`
`U.S. Patent No. 7,403,766 to Hodge
`
`Curriculum Vitae of Frank Koperda
`
`Declaration of Brian D. Oliver
`
`December 12, 2013 Email chain between Dennis
`Reinhold and David Silverman
`
`CDR Programming
`
`Avaya – Call Detail Recording Fundamentals
`
`Asterisk – The Open Source Telephony Project
`
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`Deposition Transcript of Stuart Lipoff
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`Case PGR2015-00013
`Patent No. 8,855,280
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`Reply Declaration of Frank Koperda
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`1016
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`1017
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`The Board correctly instituted post-grant review after determining a
`
`Case PGR2015-00013
`Patent No. 8,855,280
`
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`
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`reasonable likelihood existed that claims 1–20 of U.S. Patent No. 8,855,280 (“the
`
`’280 patent”) are invalid over the instituted grounds. Patent Owner (PO) bases its
`
`arguments on an overly narrow construction of the term “communication detail
`
`record” and mischaracterizations of the applied references. In this Reply, Petitioner
`
`demonstrates that PO’s response is technically and legally flawed confirming that
`
`claims 1–20 are unpatentable.
`
`I. The combination of Reinhold and Walters teaches or suggests each and
`every limitation of the independent claims.
`
`PO alleges that the combination of Reinhold and Walters fails to teach or
`
`suggest two limitations of the independent claims: (1) a “communication detail
`
`record” and (2) “identifying a party based on comparing the digital media file
`
`included or referenced in the CDR with a signature.” (POR, p. 14.) PO bases its
`
`arguments on an improper construction for the term “communication detail
`
`record,” mischaracterizations of Reinhold, and a misunderstanding of the law.
`
`When the proper construction and the accurate record is considered, the Board
`
`should find the claims unpatentable over Reinhold and Walters.
`
`A. The specification does not require a “communication detail record” to
`be created for each communication.
`
`The term “communication detail record” is not a term of art in the
`
`telecommunications field. Indeed, the ’280 patent distinguishes this term from the
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`commonly used term “call detail record.” For this reason, and to avoid confusion,
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`Patent No. 8,855,280
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`PO carefully defined the term “communication detail record” in the specification.
`
`Petitioner adopted PO’s explicit definition: “As used herein, a CDR
`
`[communication detail record] is a record produced by a telecommunications
`
`device that contains attributes that are specific to a communication of any type
`
`(including video, typed communications, transactions, etc.) handled by that
`
`device.” (Exhibit 1001, ’280 patent, 7:3–7.) The Board should adopt this
`
`construction because a communication detail record has no ordinary meaning and
`
`PO acted as its own lexicographer. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d
`
`1359, 1366 (Fed. Cir. 2002) (“claim term will not receive its ordinary meaning if
`
`the patentee acted as his own lexicographer and clearly set forth a definition of the
`
`disputed claim term in either the specification or prosecution history”).
`
`To avoid the prior art, PO turns away from its representations to the public
`
`as to the meaning of the term set forth in its specification, and attempts to import
`
`the limitation that a communication detail record must be created for each
`
`communication. But, PO’s construction is inconsistent with the language of the
`
`claims and the teachings of the specification. PO’s primary support for this
`
`position appears to be its belief that the prior art “call detail record” must be
`
`generated for each call. PO and its expert, Mr. Lipoff, are simply incorrect—a call
`
`detail record need not be created for each and every communication.
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`1. The claims do not require a communication detail record to
`be created for each communication.
`
`None of the independent claims require the creation of a communication
`
`detail record for each and every communication. For example, claim 1 recites
`
`“enabling, at least in part via one or more communication systems, a
`
`communication between two or more parties” and “creating, at least in part via the
`
`one or more communication systems, a Communication Detail Record (CDR)
`
`associated with the communication,” but does not specify that such a
`
`“Communication Detail Record” is created for every communication (See e.g.,
`
`claim 1.) Similarly, claim 15 recites “enabl[ing] a communication between an
`
`inmate operating a communication device disposed within a correctional facility
`
`and a non-resident of the correctional facility” and “add[ing] a media file to a
`
`Communication Detail Record (CDR) associated with the communication,” but
`
`does not specify that “a Communication Detail Record” is associated with every
`
`communication. And, claim 18 recites “receiv[ing] a digital multimedia file
`
`included or referenced in a Communication Detail Record (CDR) associated with
`
`a communication between an inmate operating a communication device within a
`
`correctional facility and a non-resident outside of the correctional facility,” but
`
`does not require that every communication have an associated “Communication
`
`Detail Record.”
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`2. The specification does not limit a communication detail rec-
`ord to a record created for each communication.
`
`PO’s construction is also inconsistent with the usage of the term
`
`“communication detail record” in the specification. First, as explained above, the
`
`’280 patent provides an explicit definition for the term that does not include a
`
`requirement that the communication detail record be created for each call. Second,
`
`PO’s “each communication” requirement excludes embodiments disclosed in the
`
`’280 specification: “In some cases, a separate CDR may be created for each call or
`
`other communication,” implying that in other cases “communication detail
`
`records” are not created for each call. (’280 patent, 7:12–13). Such an approach is
`
`improper. See Oatey Co. v. IPS Corp., 514 F.3d 1271,1276 (Fed. Cir. 2008) (“We
`
`normally do not interpret claim terms in a way that excludes embodiments
`
`disclosed in the specification.”). Moreover, the citations provided by PO in support
`
`of its construction are only embodiments and are not limiting. (See POR, p. 12 (“in
`
`some embodiments … a record of that communication is created”); Id. (citing ’280
`
`patent, 1:42–43 (“a CDR may include attribute such as … the billing phone
`
`number that is charged for the call); Id (citing ’280 patent, 2:9–10 (“the CDR may
`
`also include other information such as … a billing account charged for the
`
`communication.”)).)
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`3. A call detail record does not have to be created for every call.
`The specification of the ’280 patent goes to great length to distinguish the
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`well-known “call detail record” from the allegedly novel “communication detail
`
`record” of the ’280 patent. PO, ignoring these statements, asks the Board to
`
`construe the term “communication detail record” in light of the meaning of the
`
`term “call detail record.” But, PO misunderstands the meaning of a “call detail
`
`record.”
`
`The term “call detail record” is used broadly in the industry and is merely a
`
`record that includes details associated with a call. A person of ordinary skill in the
`
`art (POSITA) would understand that “call detail records” need not be created for
`
`every call on a device. (Exhibit 1017, Koperda Reply Decl. ¶¶ 20-27.) For
`
`example, the Nortel Meridien PBX allows a user to limit call detail record creation
`
`to only calls destined outside of the PBX network. (Koperda Reply Decl. ¶ 24.)
`
`Likewise, the Asterisk PBX allows a user to limit call detail record creation to only
`
`calls that are answered, and can even be configured to shut off call detail record
`
`creation completely. (Koperda Reply Decl. ¶¶ 26-27.) Avaya Communication
`
`Server 100 can also limit call detail record creation to only outgoing calls.
`
`(Koperda Reply Decl. ¶ 25.) These are only a few examples of the flexibility
`
`provided in telecommunications equipment related to the generation of call detail
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`records. Thus, contrary to PO’s understanding, call detail records are not
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`Case PGR2015-00013
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`universally created for every call.
`
`4. Conclusion
`The Board should adopt the construction set forth in the specification of the
`
`’280 patent. As described above, this construction is consistent with both the
`
`claims and the usage of the term throughout the specification.
`
`B. The combination of Reinhold and Walters teaches or suggests a
`“communication detail record.”
`
`Petitioner established in the Petition and the supporting declaration that
`
`when the proper construction is applied, the combination of Reinhold and Walters
`
`teaches or suggests the recited “communication detail record.” (Petition, pp. 50–
`
`51; Exhibit 1002, Koperda Decl., ¶¶ 121–122, 129–131.) Based on its
`
`impermissibly narrow claim construction, PO argues that Reinhold’s activity log
`
`records cannot be the claimed “communication detail record” because according to
`
`PO the activity log records are only created when there is a failed authentication
`
`attempt. (POR, pp. 15–17.) But, PO mischaracterizes Reinhold. Reinhold explicitly
`
`discloses that its activity log records are created for each call. And, in any event,
`
`even if Reinhold’s activity log only created records in the cases of a failed
`
`authentication attempts (which it does not), a POSITA would immediately
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`appreciate that Reinhold’s records, having information such as call start time and
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`end time and party information, could be created for each call.
`
`Reinhold repeatedly discloses that the records in its activity log are created
`
`to record usage information for each call: “Processor 104 may record usage and
`
`other information in activity log database 107, including which operations were
`
`performed, the begin and end times of each operation, the biometric traits of the
`
`operator, the identity of the operator, as well as particular characteristics of the
`
`operation (e.g., telephone number dialed, a website visited, etc.), among others.”
`
`(Exhibit 1003, Reinhold, 5:18–23.) Reinhold further explains that one of its goals
`
`is to “monitor and record the identity of a person who is actually participating in a
`
`telephone call, even if that person’s identity is not susceptible to verification prior
`
`to, or during the ongoing call,” which would not be possible if Reinhold only
`
`added such information to its activity log for failed authentication attempts.
`
`(Koperda Reply Decl., ¶ 34.) Indeed, as Reinhold explains, the purpose of the
`
`activity log is so “an investigator may later retrieve those records and determine
`
`the identities of one or more of the parties that actually participated in the call
`
`and/or of one or more parties that participated in the call at particular times during
`
`the call.” (Reinhold, 3:22–30.) It would frustrate the purpose of such
`
`investigations, if records were only available for a subset of phone calls. (Koperda
`
`Reply Decl., ¶ 34.)
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`PO overlooks these statements, attempting to limit Reinhold’s disclosure of
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`recording usage information in its activity log to only when an authentication
`
`failure occurs. (POR, p. 15.) But, the snippet from Reinhold cited by PO only
`
`describes a single embodiment related to actions that may be taken during the
`
`failure of an authentication action: “[o]thers actions may include recording usage
`
`parameters, including the called or calling number, the begin and end times of the
`
`call, the biometric traits of the inmate who initially authenticated the call along
`
`with her identity, the biometric traits of the inmate who actually participated in the
`
`call along with her identity, and/or a recording of the conversation.” (Reinhold,
`
`8:29–30.) But, as explained above, Reinhold describes other embodiments that
`
`create a record for each call.
`
`Moreover, even if PO were correct that records in Reinhold’s activity log
`
`were only created in the case of authentication failures, it would still be obvious to
`
`modify Reinhold to create such records for all calls. (Koperda Reply Decl., ¶ 37.)
`
`As Mr. Lipoff testified, it was well understood long before the earliest priority date
`
`of the ’280 patent that telephone systems, although not required to do so, often
`
`created records for every call. (Exhibit 2012, Lipoff Decl., ¶ 44.) These records,
`
`known as call-detail records, contain much of the same information stored in
`
`Reinhold’s activity log: “the begin and end times of each operation…telephone
`
`number dialed….” (Lipoff Decl., ¶ 42; Exhibit 1016, Lipoff Tr., 95:14–96:18.)
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`Thus, to the extent embodiments of Reinhold could be considered as creating
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`records in the activity log only for failed authentication attempts, it would have
`
`been obvious to modify Reinhold’s activity log to create records for every call
`
`given the fact that the records in Reinhold’s activity log stored similar information
`
`to conventional call-detail records, which can be created for every call. (Koperda
`
`Reply Decl., ¶ 37.) This would make the Reinhold system more efficient, as there
`
`would be no need to duplicate information in separate records. (Id.)
`
`Finally, PO argues that the plain and ordinary meaning of the term “activity
`
`log” supports its assertion that Reinhold’s “activity log” does not have records for
`
`every call. (POR., p. 17.) Specifically, PO argues that Mr. Koperda testified that
`
`“one of the dominant uses” of a “log” was to “track failures for troubleshooting
`
`purposes.” (Id.) PO mischaracterizes Mr. Koperda’s testimony. Mr. Koperda’s
`
`testimony related to “logs” specifically kept for “troubleshooting purposes” not an
`
`“activity log” as described in Reinhold. (Exhibit 2017, Koperda Tr., 15:19–16:1
`
`(“Q Were there ever logs kept to track failures for troubleshooting purposes and
`
`things like that? A That is one of the dominant uses of it….”).) And, whether or not
`
`a “log” was used for troubleshooting purposes does not mean it is not created for
`
`each call. As Mr. Lipoff testified, CDRs can be used for the same troubleshooting
`
`purpose, which according to Mr. Lipoff must be created for every call: “So the
`
`very same call detail record that was created by the MTSO might be fed to a billing
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`system for billing purposes to a separate traffic engineering system for line
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`utilization and traffic analysis to a maintenance system, which might identify
`
`failures or outages and that sort of thing….” (Lipoff Tr., 91:13–22; see also Lipoff
`
`Tr., 91:22–92:6; Koperda Decl., ¶ 25.)
`
`C. Reinhold and Walters render obvious identifying a party based on
`comparing the included digital media file with a signature.
`
`PO next argues that the combination of Reinhold and Walters fails to teach
`
`or suggest “identifying a party based on comparing the digital media file included
`
`or referenced in a CDR with a signature.” (POR, pp. 18–21.) Specifically, PO
`
`alleges that although Walters discloses identifying a party based on a digital media
`
`file, Walters does not disclose that such a digital media file is stored in a
`
`communication detail record and a POSITA would not have combined Walters and
`
`Reinhold. (POR, pp. 18–19.) But, PO’s argument mischaracterizes the proposed
`
`combination as well as the teachings of Reinhold and Walters.
`
`PO attacks Reinhold and Walters in isolation, ignoring the combination
`
`presented in the Petition. (POR, pp. 18–21.) For this reason alone, PO’s argument
`
`fails. But, PO’s argument fails for a more fundamental reason—it is incorrect. As
`
`explained in the Petition, a POSITA would have been motivated to apply Walters’
`
`technique of identifying a party based on a digital media file to the stored
`
`biometric of Reinhold. (Petition, pp. 48–49, 51.) Petitioner explained in detail how
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`the proposed combination of Reinhold and Walters teaches or suggests the
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`identifying limitation of the independent claims and explained why a person of
`
`ordinary skill in the art would combine Reinhold with Walters.
`
`For ease of the Board, Petitioner restates its argument from the Petition here.
`
`Reinhold discloses storing call recordings in its activity log (i.e., communication
`
`detail records (CDRs)): “where the device is telephone, the telephone conversation
`
`may be stored in database 107 along with the associated usage information”
`
`(Petition, p. 47 (quoting Reinhold, 5:26–30).) Reinhold further discloses
`
`performing voice biometrics on telephone calls: “an inmate may initiate the
`
`authentication procedure by having a biometric trait acquired by a biometric
`
`sensor.” (Petition, pp. 45–46 (quoting Reinhold, 8:16–18); see also Reinhold 4:35–
`
`38 (explaining that the biometric trait can be “voice or sound”).) And, as explained
`
`in the Petition, the result of this authentication is stored in Reinhold’s activity log:
`
`Processor 104 may record usage and other information in activity log database 107,
`
`including … the identity of the operator….” (Petition, p. 46 (quoting Reinhold,
`
`5:18–23).) Walters discloses performing voice biometrics on call recordings to
`
`establish the identity of the callers: “the voice biometrics module 22 can identify
`
`call participant ... voice prints ... in a postprocessing fashion, i.e., communications
`
`stored into memory 24.” (Petition, p. 48 (quoting Exhibit 1007, Walters,
`
`¶ [0024]).)
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`A POSITA would have understood that one could apply Walters’ teachings
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`of performing voice biometrics to identify callers in call recordings to Reinhold’s
`
`call recordings stored in its activity logs. (Petition, p. 51 (citing Koperda Decl.,
`
`¶¶ 133–134.) As explained in the Petition, this would result in the claimed
`
`invention of the ’280 patent because Reinhold’s system, which already identifies
`
`callers, stores their identities in CDRs along with a recording (i.e. a digital media
`
`file), would then further use that digital media file to determine the identity of the
`
`callers according to the techniques disclosed in Walters. (Petition, p. 50 (citing
`
`Koperda Decl., ¶¶ 123–126.) Both Reinhold and Walters relate to identifying
`
`inmates using voice biometrics during telephone calls. (Petition, p. 51 (citing
`
`Koperda Decl., ¶¶ 133–134.) Applying Walters’ teaching of voice biometrics on
`
`call recordings to Reinhold is nothing more than using a known technique to
`
`improve similar devices. Accordingly, a POSITA would have found it obvious to
`
`combine Walters and Reinhold.
`
`PO further argues that no motivation exists to combine Walters with
`
`Reinhold because “neither Reinhold nor Walters suggest any problem with their
`
`systems that would motivate one to include or reference a digital media file in a
`
`CDR and then identify a participant to a call based on that digital media file.”
`
`(POR, p. 20.) PO misstates the law—Petitioner is not required to identify where
`
`Reinhold or Walters suggest such a modification. KSR Int’l v. Teleflex Inc., 550
`
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`U.S. 398, 402 (2007) (“any need or problem known in the field of endeavor at the
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`Case PGR2015-00013
`Patent No. 8,855,280
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`time of invention and addressed by the patent can provide a reason for combining
`
`the elements in the manner claimed”).
`
`As Petitioner explained, a POSITA would also have been motivated to
`
`combine Walters and Reinhold. (Petition, pp. 48–49 (Koperda Decl., ¶ 124.)
`
`Performing voice biometrics continuously and in real-time, as described in
`
`Reinhold, across the many calls that can occur in a correctional facility is well-
`
`known to be a processor intensive task. (Petition, p 48 (citing Koperda Decl.,
`
`¶¶ 28, 123–124). ) This would have motivated a POSITA to seek out solutions that
`
`obviate the need to for such a large amount of processing resources, which would
`
`have led a POSITA to Walters, which describes performing voice biometrics in a
`
`post-processing fashion. (Petition, pp. 48–49 (Koperda Decl., ¶ 124.)
`
`II. Dependent claims 5, 6, 13,16, and 20 are obvious over Reinhold, Walters
`and Dudovich.
`A. Dudovich is analogous art.
`PO urges the Board to disregard Dudovich (describing monitoring persons in
`
`an airport) alleging that Dudovich is not from the same field of endeavor as the
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`’280 patent because an airport is “a large public venue” and not a “controlled-
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`environment.” (POR, p. 23.) As an initial matter, PO’s definition of the relevant
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`field of endeavor is overly narrow. Both patents relate to communications systems
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`and thus are in the same field. But, even if the Board adopts PO’s narrow view,
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`Dudovich relates to communication in a controlled environment.
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`First, PO’s argument that Dudovich is “directed to preventing crime or
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`identifying terrorists in large public venues…,” and thus a POSITA would
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`understand “that Dudovich’s field of endeavor pertains to methods and systems for
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`combining a communication location subsystem with a video surveillance system
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`to identify and track individuals in areas-of-interest in public settings” and not
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`“controlled-environment facilities” misstates the law. ( POR, pp. 22–23.) Different
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`objectives between references does not necessitate a finding of non-analogous art.
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`See Jurgens v. McKasy, 927 F.2d 1552, 1558 (Fed.Cir.1991) (finding that whether
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`prior art, which had a far different primary purpose, was analogous art was for jury
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`to resolve); see also KSR Int’l, 550 U.S. at 402 (instructing courts to construe the
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`scope of analogous art broadly).
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`Second, an airport is a “controlled-environment” within the broad definition
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`of the ’280 patent:
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`Examples of controlled environment facilities may in-
`clude … healthcare facilities (e.g., hospitals, nursing
`homes, mental health facilities, rehabilitation clinics,
`such as drug and alcohol rehabilitation facilities, etc.), re-
`stricted living quarters (e.g., hotels, resorts, camps, dor-
`mitories, barracks, etc.), and the like.
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`(’280 patent, 3:61–4:2.). Indeed, the ’280 patent stresses this broad meaning:
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`“systems and methods described herein may also be applicable to other types of
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`controlled environment facilities and their respective residents …, in some cases,
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`may be applicable to environments that are not controlled at all.” (’280 patent,
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`4:23–29.) An airport shares many of the same characteristics of the examples of
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`controlled-environment facilities listed in the ’280 patent. For example, like a
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`correctional facility, airports must have the ability to restrict access to certain
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`areas, such as the runway or the air traffic tower. Moreover, airports restrict access
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`to the gate area. Like a correctional facility, airports also have sophisticated
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`security measures, including metal detectors, X-ray machines, etc. Given these
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`similarities, a POSITA would also have understood that given the large number of
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`surveillance cameras available in both airports and other controlled-environments,
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`Dudovich’s teachings are easily translatable to other controlled-environments, like
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`correctional facilities. (Koperda Reply Decl., ¶ 42.) Accordingly, Dudovich is from
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`the same field of endeavor as the ’280 patent.
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`
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`Third, even if Dudovich was considered to be in a separate field of endeavor,
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`the techniques disclosed in Dudovich are still pertinent to problem disclosed in the
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`’280 patent. In re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992) (explaining that a
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`reference can still be analogous if it is “reasonably pertinent to the particular
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`problem with which the inventor is involved”). Dudovich discloses monitoring
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`individuals using a communication device, recording their conversations, and
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`concurrently identifying them using video surveillance systems. (See Exhibit 1006,
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`Dudovich, Abstract). This is similar to the teachings of the ’280 patent, which
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`include identifying inmates using video surveillance cameras. (See ’280 patent,
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`2:40–46 )
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`1. The combination of Reinhold, Walters, and Dudovich ren-
`ders obvious claims 5 and 6.
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`Claims 5 and 6 recite respectively “wherein the digital media file” includes a
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`“still photograph” (claim 5) or “a movie” (claim 6) that is “captured via the
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`communication device.” PO argues that the combination of Reinhold, Walters and
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`Dudovich does not disclose “a still photograph” or “movie” captured “via the
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`communication device.” PO is incorrect.
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`As explained in the Petition, “Dudovich discloses monitoring
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`communications, such as telephone calls, in ‘areas of interest’ with video
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`surveillance cameras.” (Petition, p. 66 (citing Dudovich, ¶ 66.).) Dudovich also
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`“identifies individuals by using an image recognition process: ‘the video
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`subsystem applies an image recognition process that automatically identifies
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`individuals who are engaged in a phone conversation….’” (Petition, pp. 66–67
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`(quoting Dudovich, ¶ [0024]).) And, Reinhold discloses performing facial
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`recognition from a sensor located within a telephone. Specifically, Reinhold
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`discloses establishing the identity of a caller using a “visual biometric trait,” such
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`as a “face.” (Petition, p. 46 (citing Reinhold, 8:18–20).) Reinhold’s biometrics are
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`collected using a “biometric array” that can be located in the telephones:
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`“biometric telephone handsets 301 may comprise biometric array 101….”
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`(Reinhold, 7:12–14.)
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`Given that Reinhold discloses performing facial recognition from a sensor
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`located within its telephone, a POSITA would have understood that this sensor
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`must be an image capture device because facial recognition can only be performed
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`if an image is captured of an individual’s face. (Koperda Reply Decl., ¶¶ 46-47.)
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`Indeed, Reinhold even discloses using computer systems as communication
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`devices, which as Mr. Lipoff testified were well-known to include cameras: “a user
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`may operate a computer system in order to make or receive a VoIP call.”
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`(Reinhold,7:27–29: see also Lipoff Tr., 56:1–7.) And, the fact that cameras were
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`integrated into prison telephone terminals was also well-known. (Exhibit 1008,
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`Gongaware, ¶ [0083].)
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`Reinhold, however, does not disclose specifically how such facial
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`recognition would be performed. But, as the Petition explains, Dudovich discloses
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`this technique: “the video subsystem applies an image recognition process that
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`automatically identifies individuals who are engaged in a phone conversation….”
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`(Petition, pp. 66–67 (quoting Dudovich, ¶ [0024]).) Like Reinhold, Dudovich also
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`discloses storing a digital media file that includes a movie (e.g., video footage) or a
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`still image (image of the individual’s face) i