IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re post-grant review of:
`U.S. Patent 8,929,525 to Edwards
`
`Filed: Herewith
`For: On-Demand Video
`Communication For Controlled-
`Environment Facility Residents
`
`
`Atty. Docket: 3210.064PGR0
`
`
`
`
`
`Declaration of Dr. Kevin Jeffay in Support of
`Petition for Post-Grant Review of U.S. Patent No. 8,929,525
`
`Mail Stop PATENT BOARD
`
`Attn: Patent Trial and Appeal Board
`Commissioner for Patents
`PO Box 1450
`Alexandria, VA 22313-1450
`
`Commissioner:
`
`
`
`I, Dr. Kevin Jeffay, declare as follows:
`
`1.
`
`I have been retained on behalf of Global Tel*Link Corporation
`
`(“GTL”) for the above-captioned post-grant review proceeding. I understand that
`
`this proceeding involves U.S. Patent No. 8,929,525 (“the ’525 patent”, attached as
`
`GTL 1001)
`
`titled “On-Demand Video Communication For Controlled-
`
`Environment Facility Residents” by Adam C. Edwards and that the ’525 patent is
`
`currently assigned to Securus Technologies, Inc.
`
`
`
`- 1 -
`
`GTL 1002
`PGR of U.S. Pat. No. 8,929,525
`
`

`

`2.
`
`I have reviewed and am familiar with the specification of the ’525
`
`patent, which was filed on July 3, 2014. I understand that the ’525 patent has been
`
`provided as GTL 1001. I will cite to the specification using the following format:
`
`(GTL 1001, 1:1-10). This example citation points to the ’525 patent specification
`
`at column 1, lines 1-10.
`
`3.
`
`I have reviewed and am familiar with the file history of the ’525
`
`patent. I understand that the file history has been provided as GTL 1006.
`
`4.
`
`I have also reviewed and am familiar with the following prior art used
`
`in the Petition for Post-Grant Review of the ’525 patent:
`
`GTL
`Exhibit #
`
`1004
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`Description
`
`David Pogue, iPhone: The Missing Manual (6th ed. 2012) (published
`October 31, 2012) (“iPhone Manual”)
`Torgersrud et al., U.S. Patent No. 8,917,848 (filed March 15, 2013;
`issued December 23, 2014) (“Torgersrud ’848”)
`Cranfill et al., U.S. Patent Publication No. 2011/0249073 (filed June
`6, 2010, published Oct. 13, 2011) (“Cranfill”)
`Virtanen et al., U.S. Patent No. 6,879,828 (filed September 9, 2002;
`issued April 12, 2005) (“Virtanen”)
`Torgersrud et al., U.S. Patent Application Publication No.
`2014/0267547 A1 (filed March 17, 2014; published September 18,
`2014) (“Torgersrud ’547”)
`Torgersrud et al., U.S. Patent Application Publication No.
`2014/0273929 A1 (filed March 15, 2013; published September 18,
`2014) (“Torgersrud ’929”)
`
`
`
`- 2 -
`
`

`

`GTL
`Exhibit #
`
`Description
`
`1012
`
`1013
`
`Torgersrud et al., U.S. Patent Application Publication No.
`2012/0262271 A1 (published October 18, 2012) (“Torgersrud ’271”)
`Torgersrud et al., U.S. Patent Provisional Application No. 61/801,861
`
`5.
`
`The ’525 patent describes “systems and methods” for providing “on-
`
`demand video visitation for controlled-environment facility residents.” (GTL 1001,
`
`1:52-54.) Specifically, “a voice call from a resident of a controlled- environment
`
`facility to another party may be connected by a controlled-environment facility
`
`communications processing system.” (Id., 1:55-58.) I am familiar with the
`
`technology described in the ’525 patent as of its July 3, 2014 filing date.
`
`6.
`
`I have been asked to provide my technical review, analysis, insights,
`
`and opinions regarding the ’525 patent and the above-noted references that form
`
`the basis for the grounds of rejection set forth in the Petition for Post-Grant Review
`
`of the ’525 Patent.
`
`I.
`
`Qualifications
`7.
`
`I am a tenured professor at the University of North Carolina at Chapel
`
`Hill, where I am the Gillian Cell Distinguished Professor of Computer Science. I
`
`also serve as the chair the Department of Computer Science. I have over thirty
`
`years’ experience in the field of computer science, including videoconferencing
`
`and related technologies.
`
`
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`- 3 -
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`

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`8.
`
`I earned my Bachelor of Science degree in Mathematics with Highest
`
`Distinction from University of Illinois at Urbana-Champaign in 1982, a Master of
`
`Science degree in Computer Science from University of Toronto in 1984 and a
`
`Ph.D. in Computer Science from the University of Washington in 1989.
`
`9.
`
`I have been involved in the research and development of networked
`
`computing systems for over thirty years. I have been a faculty member at North
`
`Carolina since 1989, where I have performed research, published, and taught in the
`
`areas of computer networks, multimedia computing and networking,
`
`videoconferencing, operating systems, distributed systems, and embedded and real-
`
`time systems, among others.
`
` These activities were often undertaken in
`
`collaboration with industrial partners. I consider myself an expert in these areas as
`
`well as others.
`
`10.
`
`In my research and teaching I have considered problems of the design
`
`and implementation of computer networks, including issues surrounding video
`
`conferencing over packet-switched networks such as the Internet. For example,
`
`starting in 1991, in collaboration with IBM and Intel my research group
`
`constructed and operated one of the first Internet videoconferencing systems. We
`
`also developed a data conferencing, “shared window system” that was functionally
`
`and visually equivalent to today’s Cisco’s WebEx and Citrix’s GoToMeeting
`
`
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`- 4 -
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`

`

`screen sharing products and services. This was part of a large National Science
`
`Foundation funded project to research and develop (what was then considered)
`
`next generation computer systems for collaboration across distances. I continued to
`
`perform research in computer-mediated conferencing and collaboration systems
`
`until the early 2000s. During this time my research group published numerous
`
`original technical papers on topics related to video and data conferencing. Several
`
`of these papers won awards for their technical contributions (see Ex. 1003,
`
`“Honors and Awards”). I also was invited to chair several international technical
`
`meetings and symposia that brought together leaders in the multimedia computing
`
`and networking fields including videoconferencing system researchers.
`
`11.
`
`I have served as an expert witness and technical consultant in
`
`litigation matters concerning computer networks, telecommunication networks,
`
`and telecommunication systems for cellular, wireline, and voice over IP (VoIP)
`
`telephony, among others. This has included serving as an expert witness on
`
`matters related to video and data conferencing technologies. This work has been
`
`performed on behalf of entities such as Cisco, Citrix, Google, Yahoo!, AT&T,
`
`Lucent, Nortel Networks, Bouygues Telecom, Tandberg SA, AOL, Verizon
`
`Wireless, Cox Communications, Motorola, and SeaChange International, among
`
`others. I have testified in several trials, arbitrations, and claim construction
`
`hearings as an expert witness.
`
`
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`- 5 -
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`

`

`12.
`
`I have also been published in books, peer reviewed domestic and
`
`international conferences, and journals. I co-authored two texts related to advanced
`
`topics in computer networking. I have also edited a number of proceedings of
`
`technical conferences and symposia as well as a text on readings in multimedia
`
`computing and networking. I have received honors and research grants in the
`
`aforementioned fields of computer science, and have been invited to present
`
`distinguished lectures.
`
`13.
`
`I am a named inventor on three United States Patents. One patent, that
`
`was filed jointly by my university and IBM was the result of research performed at
`
`UNC on videoconferencing systems.
`
`14. My Curriculum Vitae is attached as GTL 1003, which contains further
`
`details on my education, experience, publications, and other qualifications to
`
`render an expert opinion. My work on this case is being billed at a rate of $600.00
`
`per hour, with reimbursement for actual expenses. My compensation is not
`
`contingent upon the outcome of this post-grant review.
`
`II. My Understanding of Claim Construction
`
`15.
`
`I understand that, during a post-grant 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.
`
`
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`- 6 -
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`

`

`III. My Understanding of Obviousness
`16.
`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.
`
`17. As part of this inquiry, I have been asked to consider the level of
`
`ordinary skill in the field that someone would have had at the time the claimed
`
`invention was made. In determining 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.
`
`
`18.
`
`I understand that to obtain a patent, a claimed invention must have, as
`
`of the effective filing date, been nonobvious in view of the prior art in the field. I
`
`understand that an invention 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.
`
`
`
`- 7 -
`
`

`

`19.
`
`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, individually 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
`
`or modified to create the invention claimed.
`
`20.
`
`I understand that to, support a conclusion of obviousness, there must
`
`be an apparent reason for a skilled artisan to combine or modify the prior art
`
`references as recited in the claims. To support that reason, considering whether
`
`there is a teaching, suggestion, or motivation for the combination may be helpful,
`
`but a teaching, suggestion, or motivation test should not be applied rigidly or
`
`formalistically. Helpful insights need not become rigid and mandatory formulas.
`
`For example, to support a conclusion of obviousness, the following rationales may
`
`be used:
`
` Combining prior art elements according to known methods to yield
`
`predictable results;
`
` Simple substitution of one known element for another to obtain
`
`predictable results;
`
`
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`- 8 -
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`

`

` Use of known technique to improve similar devices (methods, or
`
`products) in the same way;
`
` Applying a known technique to a known device (method, or product)
`
`ready for improvement to yield predictable results;
`
` “Obvious to try” – choosing from a finite number of identified,
`
`predictable solutions, with a reasonable expectation of success; and
`
` Known work in one field of endeavor may prompt variations of it for
`
`use in either the same field or a different one based on design
`
`incentives or other market forces if the variations are predictable to
`
`one of ordinary skill in the art.
`
`21.
`
`I understand that certain secondary considerations can be important
`
`evidence regarding whether a patent is obvious or nonobvious. Such indicia
`
`include: commercial success of products covered by the patent claims; a long-felt
`
`need for the invention; 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 proceeded contrary to the accepted wisdom of the prior art. Based on
`
`
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`- 9 -
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`

`

`my experience researching, teaching, and consulting and collaborating with
`
`industry in the multimedia computer and networking field, I am not aware of any
`
`secondary considerations pertaining to the ’525 patent.
`
`IV. My Understanding of Anticipation
`22.
`It is my understanding that a reference anticipates a claim if it
`
`discloses each and every element recited in the claim, arranged as claimed. Further,
`
`it is my understanding that an anticipating reference must set forth the elements in
`
`the claim in a sufficiently detailed manner such that it would enable a person of
`
`ordinary skill in the art to make and use the claimed invention without the need for
`
`undue experimentation. The factors that I have considered in determining whether
`
`a reference is enabling with regard to a specific claim include: the breadth of the
`
`claims; the nature of the invention; the state of the prior art; the level of one of
`
`ordinary skill; the level of predictability in the art; the amount of direction
`
`provided in the reference; the existence of working examples; and the quantity of
`
`experimentation needed to make or use the claimed invention.
`
`23. Those elements can be either explicitly described or inherently
`
`described. Inherent elements are those that are not explicitly described, but
`
`nonetheless would necessarily be present if the teachings in the reference are
`
`followed.
`
`
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`- 10 -
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`

`

`V. My Understanding of Patentable Subject Matter
`24.
`I understand that the patent statute defines four categories of
`
`inventions that are eligible for protection: processes, machines, manufactures, and
`
`compositions of matter. I also understand that courts have created exceptions to
`
`these categories, prohibiting patents on natural phenomena, laws of nature, and
`
`abstract ideas. In particular, I understand there to be a two-part framework to
`
`determine whether claims are eligible for patenting.
`
`25. The first step is to determine whether the claims at issue are directed
`
`to an ineligible concept, such as an abstract idea. I understand mere fundamental
`
`economic and conventional business practices are abstract ideas. And I understand
`
`that reciting a particular technological environment will not necessarily save the
`
`claims from being directed to an abstract idea. That said, if the claim solves a
`
`problem specifically arising in a technological realm, such as computer networks,
`
`it may not be drawn to a mere abstract idea.
`
`26.
`
`If the claims are drawn to an abstract idea, I understand that the
`
`second step of the eligibility analysis is to determine whether the claims recite
`
`additional language sufficient to ensure that the patent in practice amounts to
`
`significantly more than a patent upon the abstract idea itself. This second step may
`
`be a search for an inventive concept. In particular, abstract ideas are not made
`
`eligible by well-understood, routine, conventional activity already engaged in by
`
`
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`- 11 -
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`

`

`the scientific community. I understand that, to be meaningful, the claims must
`
`recite more than mere field-of-use limitations, tangential references to technology,
`
`insignificant pre- or post-solution activity, ancillary data-gathering steps, or the
`
`like.
`
`27.
`
`In an example, intermediated settlement is an abstract idea, because it
`
`is a fundamental economic and conventional business practice. Thus, electronic
`
`methods and computer programs for financial-trading systems on which payments
`
`for two-party trades are settled by a third party in ways that reduce the risk of only
`
`one party performing are ineligible, because they are not significantly more than
`
`intermediated settlement, which is abstract.
`
`28.
`
`In another example, using advertising as a currency is an abstract idea,
`
`again because it is a fundamental economic and conventional business practice.
`
`Thus, a method for distributing copyrighted media products over the Internet
`
`where the consumer receives a copyrighted media product at no cost in exchange
`
`for viewing an advertisement, and the advertiser pays for the copyrighted content,
`
`is ineligible, because it is not significantly more than using advertising as a
`
`currency, which is abstract.
`
`29. On the other hand, claims that do not recite a fundamental economic
`
`or longstanding commercial practice, but recite a challenge particular to the
`
`
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`- 12 -
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`Internet may be eligible. For example, a system using an outsource provider having
`
`a web server to direct a visitor to an automatically-generated hybrid web page that
`
`combines visual “look and feel” elements from a host website and product
`
`information from a third-party merchant’s website related to the clicked
`
`advertisement may be eligible. By providing a store within a store, this system
`
`avoids transporting a visitor to the third party’s website upon the click of an
`
`advertisement for a third-party product displayed on a host’s website. Thus, this
`
`system addresses the problem of retaining website visitors that, if adhering to the
`
`routine, conventional functioning of Internet hyperlink protocol, would be instantly
`
`transported away from a host’s website after “clicking” on an advertisement and
`
`activating a hyperlink. I understand that this system is eligible because it does not
`
`merely recite the performance of some business practice known from the pre-
`
`Internet world along with the requirement to perform it on the Internet. Instead, the
`
`it is necessarily rooted in computer technology to overcome a problem specifically
`
`arising in the realm of computer networks.
`
`VI. Level of Ordinary Skill in the Art
`
`30. Based on the disclosure of the ’525 patent, one of ordinary skill in the
`
`art would have a B.S. degree in Computer Science or Computer, Computer
`
`Science, or an equivalent field, as well as at least 2-3 years of academic or industry
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`- 13 -
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`

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`experience in software development, or comparable industry experience. More
`
`practical experience can compensate for less formal training.
`
`31. This opinion is based on my 25 years of experience researching,
`
`teaching, and consulting and collaborating with industry in the multimedia
`
`computer and networking field.
`
`VII. Overview of the ’525 Patent
`32. The ’525 patent discloses providing video communication to a
`
`controlled-environment facility “on demand” and “during a voice call.” (GTL
`
`1001, 1:12-22.) By providing on-demand video communication during a voice call,
`
`the ’525 patent “operate[s] to promot[e] usage of video communication, improv[e]
`
`revenue, and … ‘upsell’ the communication service from a phone call to a video
`
`communication.” (GTL 1001, 4:18-20.) A system for providing the on-demand
`
`video to a controlled-environment facility is illustrated in the ’525 patent’s FIG. 1,
`
`reproduced below.
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`- 14 -
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`
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`33. FIG.
`
`
`
`
`
`
`
`
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`1 illustrattes devicees for bothh residentss and non--residents
`
`
`
`
`
`
`
`controllled-environnment faccility. The
`
`
`
`
`
`
`
`’525 pattent conteemplates tthree type
`
`
`
`
`
`
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`residentt devices:
`
`
`
`(i) “more--or less coonventionall telephon
`
`
`
`
`
`es 115,” (
`
`
`
`ii) “a perssonal
`
`of a
`
`s of
`
`
`
`computer wirelesss device, ssuch as a tablet compputing devvice or smaartphone 1120,”
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`or (iii)
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`“a video
`
`
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`communiccation devvice 125,”
`
`
`
`
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`which maay be “parrt of a kioosk.”
`
`
`
`
`
`(GTL 1
`
`
`
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`001, 4:47--62.) And tthe ’525 paatent conteemplates foour types oof non-resiident
`
`
`
`
`
`
`
`
`
`
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`135,
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`devices
`
`
`
`
`: (i) a devvice 130, wwhich “maay be a moobile phonne,” (ii) a ttelephone
`
`
`
`
`
`
`
`
`
`
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`(iii) “a ppersonal orr laptop coomputer 1555 with a wwebcam, orr (iv) a devvice 150 wwhich
`
`
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`
`
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`
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`“may hhave an inttegrated caamera andd display ((e.g., a smmart phone,, tablet, ettc.).”
`
`
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`
`
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`
`
`
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`(Id., 6:113-40.) Ass shown inn FIG. 1,
`
`
`
`
`
`
`
`the non-reesident devvices are cconnected
`
`
`
`
`
`to a
`
`
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`networkk, such as
`
`a “public
`
`
`
`
`
`
`
`
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`switched ttelephone nnetwork (PPSTN) 1400,” “Integrrated
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`
`
`
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`Services Digital NNetwork (IISDN), Vooice-over-IIP (VoIP),, or packett data netwwork
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`
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`

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`160, such as, for example the Internet.” (Id., 6:13-27.) And the network, in turn, is
`
`connected to a communications processing system 105.
`
`34.
`
` “Communication processing system 105 may provide telephone
`
`services, videoconferencing, online chat, and other communication services to
`
`controlled-environment facility 110.” (Id., 4:33-36.) While FIG. 1 shows system
`
`105 within controlled-environment facility 110, it may also be “remotely located
`
`with respect to one or more controlled-environment facilities.” (Id., 4:38-42.) To
`
`provide the videoconferencing services, the ’525 patent discloses use of
`
`commercial or industry standard protocols such as “SKYPE®,…. ITU H.323,
`
`H.320, H.264, and/or V.80.” (Id., 6:33-40.)
`
`35. The ’525 patent describes example operations of the system in FIG. 1
`
`with respect to its flow charts in FIGs. 2-4. FIG. 2 shows an operation where only
`
`one party agrees to the videoconference, FIG. 3 shows an operation where both
`
`parties agree to the videoconference, and FIG. 4 shows an operation where both
`
`parties agree and
`
`the resident must have authorization
`
`to conduct
`
`the
`
`videoconference. FIG. 3, reproduced below, is illustrative.
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`

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`
`
`36. FIG.
`
`
`
`3 first shoows that a
`
`
`
`voice calll from the
`
`
`
` resident iis connecteed at
`
`
`
`
`
`step 30
`
`
`
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`5. Next, att step 310, one partyy to the caall selects
`
`
`
`
`
`
`
`
`
`
`
`
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`voice caall to a viddeo call. TThe “optionn to conveert the call
`
`
`
`
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`video sscreen of
`
`
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`[the residdent’s and
`
`
`
`nonresideent’s devicces].” (Id.
`
`
`
`
`
`, 8:41-47..) In
`
`an option
`
`t the
`to convert
`
`
`
`can be prresented onn the
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`
`
`
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`particullar, the devvices “couuld providee a (touchhscreen) prrompt to thhe residennt for
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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`selection to conveert the calll to a videoo call.” (Idd., 8:47-555.) Then, aat step 315
`
`
`
`
`
`
`
`
`
`
`
`
`
`, the
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`
`
`
`
`
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`other paarty also aggrees to coonvert to a
`
`
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`video calll. (Id., 10:220-24.) Onnce both paarties
`
`
`
`
`
`
`
`
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`have aggreed, a viddeo call bettween the pparties is eestablishedd at step 3220.
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`37.
`
`
`
`In adddition to
`
`
`
`confirming agreemeent of the
`
`
`
`
`
`parties, thhe ’525 paatent
`
`
`
`also dis
`
`
`
`
`closes thatt, before sttarting the
`
`
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`video, the
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`- 17 -
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`communiccation proccessing sy
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`
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`stem
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`

`may confirm that the resident has permission. In particular, the communication
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`processing system may “confirm that the resident may take part in a video
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`communication, such as by querying a controlled-environment
`
`facility
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`administration and management system (180) (e.g., a Jail Management System
`
`(JMS) in a correctional institution implementation).” (Id., 11:12-20.)
`
`38. Finally, “prior to establishing a video communications link[, the ’525
`
`patent discloses that] payment from the resident or the other party for the video
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`communication may be required. Either party may pay for
`
`the video
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`communication, such [as] by using a prepaid account, debit account, credit card,
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`through a post paid bill, or the like.” (Id., 11:43-47.)
`
`39.
`
`In this way, by offering voice callers an upgrade to video and
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`collecting payment for
`
`the upgrade, the ’525 patent describes upselling
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`communication services.
`
`VIII. State of the Art
`40. As acknowledged in the ‘525 Patent, by 2014, the videoconferencing
`
`art was quite mature (see, e.g., ‘525 patent, 6:30-40). It was common knowledge
`
`that virtually all laptops, tablets, smartphones, all came with video cameras and
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`software that enabled users to make and receive video calls over the Internet or the
`
`cellular network. Third party software such as SKYPE also enabled personal
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`electronic devices to place domestic and international voice and video calls for
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`free. Therefore, it is not surprising that the switching of a call from voice-to-video
`
`described in the ‘525 patent was well known in the art by 2014 and widely used by
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`laypersons.
`
`41. For example, the ’525 patent’s voice-to-video switching was at the
`
`heart of the well-known FaceTime application available on (and often bundled
`
`with) Apple devices such as the iPhone, iPad, iPod, and the Macintosh. In fact, the
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`’525 patent can be succinctly described, in both lay and skilled parlance, as
`
`“FaceTime for prisons” (or “Using FaceTime in Prisons”). As will be set forth
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`below in detail, in my opinion a skilled artisan at the time of the ’525 patent’s 2014
`
`filing date would have found using voice-to-video switching in correctional
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`institutions (and more generally in “controlled environments”) to be obvious,
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`rendering all the ’525 patent’s independent claims unpatentable.
`
`42.
`
`I understand that the ’525 patent claims that “correctional facilities
`
`present numerous difficulties in areas such as security, surveillance, financial
`
`transactions, communications, visitation, investigation, budgetary, etc.; which in
`
`turn make
`
`technological
`
`implementations uniquely challenging
`
`in
`
`those
`
`environments.” (GTL 1001, 3:45-50.) This language in the ’525 patent does not
`
`affect my opinion for two reasons.
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`
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`43. First, while this language alludes to “numerous difficulties,” neither
`
`the ’525 specification nor claims say what those difficulties are. Based on my
`
`experience as a networking professional as well as my experience designing, and
`
`consulting on network design for controlled environment facilities such as
`
`dormitories, hospitals, military facilities, and hotels, I do not see any particular
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`technical challenges in implementing voice to video call switching in 2014 in a
`
`correctional context that a skilled artisan with ordinary creativity, would not have
`
`been able to overcome. As set forth below, to the extent that physical or data
`
`security or financial features are laid out in the claims, they were already known
`
`and used in prison communication systems. I do not believe there to be any
`
`technical difficulty with implementing voice-to-video call switching in those
`
`contexts that a skilled artisan would not have been able to overcome.
`
`44.
`
`In fact, given the sophistication of software packages to manage audio
`
`and video streams on personal devices available in 2014 (e.g., the Android or iOS
`
`SDKs [Software Development Kits]), I believe virtually any bright undergraduate
`
`computer science major could build the claimed voice-to-video call switching. For
`
`example, in approximately 1995 — nearly 20 years before the application date of
`
`the ‘525 patent — I supervised an undergraduate at UNC on a project to manage
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`voice and video calls performed over the Internet to a secure military facility where
`
`a remote collaborator was present. Such a system would automatically switch
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`between voice and video calls depending on the availability of network bandwidth.
`
`Having supported automated voice-to-video call switching, I strongly believe that
`
`this student could have implemented manual call switching.
`
`45. Second,
`
`the claims do not recite “correctional facility,” but
`
`“controlled-environment facility,” which I will explain in the following section is
`
`broader. In controlled environment facilities recited in the ‘525 patent such as
`
`dormitories, the aforementioned “numerous difficulties” in areas such as security,
`
`surveillance, financial transactions, communications, visitation, investigation,
`
`budgetary, etc., need not necessarily exist.
`
`IX. Claim Construction
`46.
`I understand that the terms appearing patent claims are to be given
`
`their plain and ordinary meaning under the broadest reasonable interpretation, as
`
`understood by one of ordinary skill in the art and consistent with the specification.
`
`47.
`
`I reproduce the three independent claims below. I have included
`
`notations for each element. I will use the notations for reference in my analysis
`
`below.
`
`1
`
`P) A method comprising:
` A) connecting a voice call from a resident of a controlled-
`environment facility to another party by a controlled-environment
`facility communications processing system;
` B) offering, by the controlled-environment facility
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`
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`communications processing system, the resident or the other party an
`opportunity to convert the voice call to a video communication; and
` C) establishing, by the controlled-environment facility
`communications processing system, a video communication link
`between a communication device in use by the resident and a
`communication device in use by the other party in response to the
`resident or the other party accepting the offer to convert the voice call
`to a video communication.
`
`11 P) A tangible computer-readable storage medium having program
`instructions stored thereon that, upon execution by a controlled-
`environment facility communications processing system, cause the
`controlled-environment facility communications processing system to:
` A) connect a voice call from a resident of a controlled-
`environment facility to another party;
` B) accept a selection of an option by the resident or the other party
`to convert the voice call to a video communication between the
`resident and the other party;
` C) confirm that the resident or other party, who did not select the
`option to convert the voice call to a video communication, agrees to
`convert the voice call to a video communication; and
` D) establish a video communication link between a
`communication device in use by the resident and a communication
`device in use by the other party, in response to confirmation that the
`resident or other party, who did not select the option to convert the
`voice call to a video communication, agrees to convert the voice call to
`a video communication.
`
`19 P) A controlled-environment facility communications processing
`system comprising:
` A) at least one processor; and
` B) a memory coupled to the at least one processor, wherein the
`memory stores program instructions, and wherein the program
`instructions are executable by the at least one processor to:
`
` C) connect a voice call from a resident of a controlled-
`environment facility to another party;
`
`D) accept a selection of an option by the resident or the other
`party to convert the voice call to a video communication between the
`resident and the other party;
`
`E) confirm that the resident or other party, who did not select the
`
`
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`option to convert the voice call to a video communication, agrees to
`convert the voice call to a video communication;
`
`F) query a controlled-environment facility administration and
`management system to confirm that the resident may take part in a
`video communication; and
`
`G) establish a video communication link between a
`communication device in use by the resident and a communication
`device in use by the other party, in response to confirmation that the
`resident or other party, who did not select the option to convert the
`voice call to a video communication, agrees to convert the voice call to
`a video communication and confirmation that that the resident may
`take part in a video communication.
`
`
`
`48.
`
`I believe three terms need construction. Each is addressed below.
`
`A. “controlled-environment facility”
`49.
`I believe “controlled-environment facility” means “controlled facility
`
`such as a correctional institution, healthcare facility, restricted living quarter (e.g.,
`
`hotel or resort), or the like.”
`
`50. The ’525 patent explains, “Various types of controlled-environment
`
`facilities are present in today’s society, and persons may be voluntary or
`
`involuntary residents of such facilities, whether temporarily or permanently.”
`
`(GTL 1001, 3:34-37.) The ’525 patent gives many examples of controlled-
`
`environment facilities, including “correctional institutions (e.g., municipal jails,
`
`county jails, state prisons, federal prisons, military stockades, juvenile facilities,
`
`detention camps, home incarceration environments, etc.), healthcare facilities (e.g.,
`
`
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`hospitals, nursing homes, mental health facilities, rehabilitation facilities, such as
`
`drug and alcohol rehabilitation facilities, etc.), restricted living quarters (e.g.,
`
`hotels, resorts, camps, dormitories, barracks, etc.), and the like.” (GTL 1001, 3:38-
`
`45.) Reading the specification, a skilled artisan would understand the term
`
`“controlled-environment facility” to include at least the specificati