UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SECURUS TECHNOLOGIES, INC.
`Petitioner
`
`v.
`
`GLOBAL TEL*LINK CORPORATION
`Patent Owner
`
`Case PGR2016-00044
`U.S. Patent No. 9,225,838
`
`DECLARATION OF TIM A. WILLIAMS, Ph.D.
`
`PAGE 1
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`SECURUS EXHIBIT 1003
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`

`
`Petition for Post Grant Review of U.S. Patent No. 9,225,838
`Declaration of Tim A. Williams, Ph.D.
`
`I, Tim A. Williams, do hereby declare and state, under penalty of perjury
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`under the laws of the United States of America, that all statements made herein of
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`my own knowledge are true and correct and that all statements made on
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`information and belief are believed to be true; and further that these statements
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`were made with the knowledge that willful false statements and the like so made
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`are punishable by fine or imprisonment, or both, under Section 1001 of Title 18 of
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`the United States Code.
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`Executed on September 29, 2016, at Danville, CA.
`
`_________________________
`
`Tim A. Williams
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`PAGE 2
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`TABLE OF CONTENTS
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`TABLE OF CONTENTS
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`
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`I.
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`I.
`
`INTRODUCTION ............................................................................................... 7
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`INTRODUCTION ............................................................................................. ..7
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`A. Engagement ................................................................................................... 7
`A.
`Engagement ................................................................................................. ..7
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`B. Background and Qualifications ....................................................................... 7
`B. Background and Qualifications ..................................................................... ..7
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`C. Compensation and Prior Expert Witness Experience ...................................... 9
`C. Compensation and Prior Expert Witness Experience .................................... ..9
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`D. Materials and Information Considered .......................................................... 9
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`D. Materials and Information Considered ........................................................ ..9
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`II. LEGAL STANDARDS .....................................................................................10
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`II. LEGAL STANDARDS ................................................................................... ..10
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`III. THE ’838 PATENT .......................................................................................17
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`THE ’838 PATENT ..................................................................................... ..17
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`III.
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`A. Overview of the ’838 Patent ........................................................................17
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`A. Overview of the ’838 Patent...................................................................... ..17
`
`B. The Prosecution History of the ’838 Patent ..................................................36
`B. The Prosecution History of the ’838 Patent ................................................ ..36
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`C. Effective Filing Date of the ’838 Patent Claims ...........................................39
`C. Effective Filing Date of the ’838 Patent Claims ......................................... ..39
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`D. Level of Ordinary Skill in the Relevant Field and in the Relevant
`D.
`Level of Ordinary Skill in the Relevant Field and in the Relevant
`
`Timeframe.............................................................................................................41
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`Timeframe ........................................................................................................... ..4l
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`E. Claim Construction ........................................................................................48
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`E. Claim Construction ...................................................................................... ..48
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`IV. Prior Art References ......................................................................................49
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`Prior Art References .................................................................................... ..49
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`IV.
`
`A. Overview of Kitchin_702 ............................................................................49
`A. Overview of Kitchin_702 .......................................................................... ..49
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`B. Overview of Hodge_200 ...............................................................................55
`B. Overview of Hodge_2OO ............................................................................. ..55
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`PAGE 3
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`PAGE 3
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`C. Overview of McNitt .......................................................................................61
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`D. Overview of Gainsboro ...............................................................................67
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`E. Overview of Gupta ........................................................................................69
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`F. Overview of Li ...............................................................................................73
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`V.
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`PATENTABILITY ANALYSIS OF THE ’838 PATENT ...........................74
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`A. Claims 1–20 are Rendered Obvious Under 35 U.S.C. § 103(a) by
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`Kitchin_702 in View of Hodge_200, McNitt, Li, and Gupta. .............................75
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`1. Claim 1 Would Have Been Obvious Over Kitchin_702 in View of
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`Hodge_200, McNitt, Gainsboro, Li, and Gupta................................................75
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`2.
`
`The Limitations of Claim 2 Would Have Been Obvious Over
`
`Kitchin_702 in View of Hodge_200, McNitt, Gainsboro, Li, and Gupta. .....102
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`3.
`
`The Limitations of Claim 3 Would Have Been Obvious Over
`
`Kitchin_702 in View of Hodge_200, McNitt, Gainsboro, Li, and Gupta. .....104
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`4.
`
`The Limitations of Claim 4 Would Have Been Obvious Over
`
`Kitchin_702 in View of Hodge_200, McNitt, Gainsboro, Li, and Gupta ......106
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`5.
`
`The Limitations of Claim 5 Would Have Been Obvious Over
`
`Kitchin_702 in View of Hodge_200, McNitt, Gainsboro, Li, and Gupta. .....109
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`PAGE 4
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`6.
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`The Limitations of Claim 6 Would Have Been Obvious Over
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`Kitchin_702 in View of Hodge_200, McNitt, Gainsboro, Li, and Gupta. .....110
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`7.
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`The Limitations of Claim 7 Would Have Been Obvious Over
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`Kitchin_702 in view of Hodge_200, McNitt, Gainsboro, Li, and Gupta. ......112
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`8. Claim 8 Would Have Been Obvious Over Kitchin_702 in View of
`
`Hodge_200, McNitt, Gainsboro, Gupta, and Li..............................................117
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`9.
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`The Limitations of Claim 9 Would Have Been Obvious Over
`
`Kitchin_702 in View of Hodge_200, McNitt, Gainsboro, Li, and Gupta. .....126
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`10. The Limitations of Claim 10 Would Have Been Obvious Over
`
`Kitchin_702 in view of Hodge_200, McNitt, Gainsboro, Gupta and Li. .......128
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`11. The Limitations of Claim 11 Would Have Been Obvious Over
`
`Kitchin_702 in View of Hodge_200, McNitt, Gainsboro, Gupta, and Li. .....129
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`12. The Limitations of Claim 12 Would Have Been Obvious Over
`
`Kitchin_702 in View of Hodge, McNitt, Gainsboro, Li, and Gupta. .............131
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`13. The Limitations of Claim 13 Would Have Been Obvious Over
`
`Kitchin_702 in View of Hodge_200, McNitt, Gainsboro, Li, and Gupta. .....132
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`14. The Limitations of Claim 14 Would Have Been Obvious Over
`
`Kitchin_702 in View of Hodge_200, McNitt, Gainsboro, Li, and Gupta. .....133
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`PAGE 5
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`15. Claim 15 Would Have Been Obvious Over Kitchin_702 in View of
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`Hodge, McNitt, Gainsboro, Gupta, and Li......................................................133
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`16. The Limitations of Claim 16 Would Have Been Obvious Over
`
`Kitchin_702 in View of Hodge_200, McNitt, Gainsboro, Li, and Gupta. .....146
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`17. The Limitations of Claim 17 Would Have Been Obvious in View of
`
`Kitchin_702 in view of Hodge_200, McNitt, Gainsboro, Li, and Gupta. ......148
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`18. The Limitations of Claim 18 Would Have Been Obvious Over
`
`Kitchin_702 in view of Hodge_200, McNitt, Gainsboro, Li, and Gupta. ......149
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`19. The Limitations of Claim 19 Would Have Been Obvious Over
`
`Kitchin_702 in view of Hodge_200, McNitt, Gainsboro, Li, and Gupta. ......150
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`20. The Limitations of Claim 20 Would Have Been Obvious Over
`
`Kitchin_702 in view of Hodge_200, McNitt, Gainsboro, Li, and Gupta. ......151
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`B. Rationales to Support Obviousness .............................................................153
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`C. Indefiniteness of Claims 8-14 ......................................................................164
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`D. Written Description ...................................................................................167
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`E. Claims 1-20 are Drawn to Unpatentable Subject Matter Under 35 U.S.C. §
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`
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`101 169
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`PAGE 6
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`I.
`
`INTRODUCTION
`A. Engagement
`1. My name is Tim A. Williams. I have been asked to submit this
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`declaration on behalf of Securus Technologies, Inc. (“Securus” or “Petitioner”) in
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`connection with a petition for post grant review of U.S. Patent No. 9,225,838 to
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`Hodge et al., Securus Exhibit 1001 (the “’838 patent”), that I understand is being
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`submitted to the Patent Trial and Appeal Board (“PTAB”) of the United States Patent
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`and Trademark Office (“USPTO”) by Securus.
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`2.
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`I have been retained as a technical expert by Petitioner to study and
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`provide my opinions on the technology claimed in, and the patentability or non-
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`patentability of, claims 1–20 of the ’838 patent.
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`B. Background and Qualifications
`I have summarized in this section my educational background, work
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`3.
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`experience, and other relevant qualifications. A true and accurate copy of my
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`curriculum vitae is attached as Appendix A.
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`4.
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`I was the Chief Technology Officer of Picazo Communications from
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`1998 to 2000. Picazo Communications designed, manufactured and sold
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`telecommunications products for PSTN and VoIP based telephone networks. These
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`products included telephone switches, telephone handsets, software based telephone
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`clients and other telephony functions.
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`PAGE 7
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`5. While working as an engineer at Motorola from 1976 to 1991, I
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`designed semiconductor devices for use in the PSTN telephone networks. Some of
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`these devices include CODECs, line card interface circuits, ISDN modems,
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`telephone modems, voice processing ICs and circuits.
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`6.
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`I am a partner in a private equity investment company Through
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`Technology Group. Companies invested in by Through Technology Group market
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`and sell software-based telephone equipment and data networking point of presence
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`network solutions in Asia and the Americas.
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`7.
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`I have studied and practiced in the fields of electrical engineering,
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`computer engineering, and computer science for 40 years. In addition, I am a
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`registered USPTO Patent Agent although my opinions expressed in this report
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`reflect those of one who is at least of ordinary skill in the art.
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`8.
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`I received a Ph.D. in Electrical Engineering from the University of
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`Texas at Austin in 1985, in the field of digital signal processing. I received my
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`Masters of Engineering degree in Electrical Engineering (MSEE) from the
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`University of Texas at Austin in 1982, in the specialization of digital speech
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`processing. I received my Bachelor of Engineering (BSEE) degree in Electrical
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`Engineering in 1976 from Michigan Technological University, with a concentration
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`in communications.
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`PAGE 8
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`C. Compensation and Prior Expert Witness Experience
`I am being compensated for the time I spend on this case at my normal
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`9.
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`consulting rate. I am also being reimbursed for reasonable and customary expenses
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`associated with my work and testimony in this investigation. My compensation is
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`not contingent upon the outcome of this matter or the substance of my testimony.
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`10. A complete list of all cases in which I have testified at trial, hearing, or
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`by deposition is provided in my curriculum vitae, which is attached as Appendix A.
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`In the listed cases, I have represented both patent owners asserting infringement of
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`their patents, as well as parties accused of infringement.
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`D. Materials and Information Considered
`11. My opinions are based on my years of education, research and
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`experience, and background in the fields discussed above, as well as my
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`investigation and study of relevant materials and the information contained therein.
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`12.
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`In forming my opinions, I have considered the materials I identify in
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`this declaration and those listed in Appendix B.
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`13.
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`I am also aware of, and in some cases base my statements below on,
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`information that would have been generally available to, and relied upon by, persons
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`of ordinary skill in the art during the relevant timeframe, including, but not limited
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`to, technical reference materials, for example textbooks, manuals, technical papers,
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`technical dictionaries, articles and the like.
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`PAGE 9
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`14.
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`I may rely upon these materials and/or additional materials to respond
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`to arguments raised by Patent Owner. I may also consider additional documents and
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`information in forming any necessary opinions–including documents that may not
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`yet have been provided to me.
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`15. My analysis of the materials produced in this investigation is ongoing
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`and I will continue to review any new material as it is provided. This declaration
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`represents only those opinions I have formed to date. I reserve the right to revise,
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`supplement, and/or amend my opinions stated herein based on new information an
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`on my continuing analysis of the materials already provided.
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`II. LEGAL STANDARDS
`In expressing my opinions and considering the subject matter of the
`16.
`
`claims of the ’838 patent, I am relying upon certain basic legal principles that counsel
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`for Petitioner has explained to me.
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`17. First, I understand that for an invention claimed in a patent to be found
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`patentable, it must be, among other things, new and not obvious from what was
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`known before the invention was made.
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`18.
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`I understand the information that is used to evaluate whether an
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`invention is new and not obvious is generally referred to as “prior art” and generally
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`includes patents and printed publications (e.g., books, journal publications, articles
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`on websites, product manuals, etc.).
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`PAGE 10
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`19.
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`I understand that in this proceeding Securus has the burden of proving
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`that the claims of the ’838 patent are rendered obvious from the prior art by a
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`preponderance of the evidence. I understand that “a preponderance of the evidence”
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`is evidence sufficient to show that a fact is more likely true than it is not.
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`20.
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`I understand that in this proceeding, the unexpired claims of the ’838
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`patent must be given their broadest reasonable interpretation consistent with the
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`specification. The claims after being construed in this manner are then to be
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`compared to the information in the prior art.
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`21.
`
`I understand that in this proceeding, the information that may be
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`evaluated is limited to patents and printed publications. My analysis below compares
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`the claims to patents and printed publications that are prior art to the claims.
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`22.
`
`I understand that there are two ways in which prior art may render a
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`patent claim unpatentable. First, the prior art can be shown to “anticipate” the claim.
`
`Second, the prior art can be shown to have made the claim “obvious” to a person of
`
`ordinary skill in the art. I understand that Securus’ current grounds for challenging
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`the ’838 patent rest on obviousness. My understanding of the relevant legal standards
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`for obviousness is set forth below.
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`23.
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`I understand that a claimed invention is not patentable if it would have
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`been obvious to a person of ordinary skill in the field of the invention at the time the
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`invention was made.
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`PAGE 11
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`24.
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`I understand that the obviousness standard is defined in the patent
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`statute (35 U.S.C. § 103(a)) as follows: A patent may not be obtained though the
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`invention is not identically disclosed or described as set forth in section 102 of this
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`title, if the differences between the subject matter sought to be patented and the prior
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`art are such that the subject matter as a whole would have been obvious at the time
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`the invention was made to a person having ordinary skill in the art to which said
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`subject matter pertains. Patentability shall not be negatived by the manner in which
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`the invention was made.
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`25.
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`I understand that the following standards govern the determination of
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`whether a claim in a patent is obvious. I have applied these standards in my
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`evaluation of whether claims 1–20 of the ’838 patent would have been considered
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`obvious.
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`26.
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`I understand that to find a claim in a patent obvious, one must make
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`certain findings regarding the claimed invention and the prior art. Specifically, I
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`understand that the obviousness question requires consideration of four factors
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`(although not necessarily in the following order):
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`The scope and content of the prior art;
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`The differences between the prior art and the claims at issue;
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`The knowledge of a person of ordinary skill in the pertinent art; and
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`•
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`•
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`•
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`PAGE 12
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`• Whatever objective factors indicating obviousness or non-obviousness
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`(also commonly referred to as “secondary considerations”) may be
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`present in any particular case.
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`27.
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`In addition, I understand that the obviousness inquiry should not be
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`done in hindsight, but must be done using the perspective of a person of ordinary
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`skill in the relevant art at the time of the invention.
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`28. Further, I appreciate that secondary considerations must be assessed as
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`part of the overall obviousness analysis (i.e., as opposed to analyzing the prior art,
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`reaching a tentative conclusion, and then assessing whether objective indicia alter
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`that conclusion). I understand the objective factors indicating obviousness or non-
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`obviousness may include: commercial success of products covered by the patent
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`claims; a long-felt need for the invention; failed attempts by others to make the
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`invention; copying of the invention by others in the field; unexpected results
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`achieved by the invention; praise of the invention by the infringer or others in the
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`field; the taking of licenses under the patent by others; expressions of surprise by
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`experts and those skilled in the art at the making of the invention; and the patentee
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`proceeded contrary to the accepted wisdom of the prior art.
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`29.
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`I understand the combination of familiar elements according to known
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`methods is likely to be obvious when it does no more than yield predictable results.
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`I also understand that an example of a solution in one field of endeavor may make
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`PAGE 13
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`that solution obvious in another related field. I also understand that market demands
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`or design considerations may prompt variations of a prior art system or process,
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`either in the same field or a different one, and that these variations will ordinarily be
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`considered obvious variations of what has been described in the prior art.
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`30.
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`I also understand that if a person of ordinary skill can implement a
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`predictable variation, that variation would have been considered obvious. I
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`understand that for similar reasons, if a technique has been used to improve one
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`device, and a person of ordinary skill in the art would recognize that it would
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`improve similar devices in the same way, using that technique to improve the other
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`device would have been obvious unless its actual application yields unexpected
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`results or challenges in implementation.
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`31.
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`I understand that the obviousness analysis need not seek out precise
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`teachings directed to the specific subject matter of the challenged claim, but instead
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`can take account of the “ordinary innovation” and experimentation that does no more
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`than yield predictable results, which are inferences and creative steps that a person
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`of ordinary skill in the art would employ.
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`32.
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`I understand that sometimes it will be necessary to look to interrelated
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`teachings of multiple patents; the effects of demands known to the design
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`community or present in the marketplace; and the background knowledge possessed
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`by a person having ordinary skill in the art. I understand that all these issues may be
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`PAGE 14
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`considered to determine whether there was an apparent reason to combine the known
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`elements in the fashion claimed by the patent at issue.
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`33.
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`I understand that the obviousness analysis cannot be confined by a
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`formalistic conception of the words “teaching, suggestion, and motivation.” I
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`understand that in 2007, the Supreme Court issued its decision in KSR International
`
`Co. v. Teleflex, Inc. where the Court rejected the previous requirement of a
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`“teaching, suggestion, or motivation to combine” known elements of prior art for
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`purposes of an obviousness analysis as a precondition for finding obviousness. It is
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`my understanding that KSR confirms that any motivation that would have been
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`known to a person of skill in the art, including common sense, or derived from the
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`nature of the problem to be solved, is sufficient to explain why references would
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`have been combined.
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`34.
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`I understand that a person of ordinary skill attempting to solve a
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`problem will not be led only to those elements of prior art designed to solve the same
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`problem. I understand that under the KSR standard, steps suggested by common
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`sense are important and should be considered. Common sense teaches that familiar
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`items may have obvious uses beyond the particular application being described in a
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`reference, that if something can be done once it is obvious to do it multiple times,
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`and in many cases a person of ordinary skill will be able to fit the teachings of
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`multiple patents together like pieces of a puzzle. As such, the prior art considered
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`PAGE 15
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`can be directed to any need or problem known in the field of endeavor at the time of
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`invention and can provide a reason for combining the elements of the prior art in the
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`manner claimed. In other words, the prior art does not need to be directed towards
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`solving the same problem that is addressed in the patent. Further, the individual prior
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`art references themselves need not all be directed towards solving the same problem.
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`35.
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`I understand that an invention that might be considered an obvious
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`variation or modification of the prior art may be considered non-obvious if one or
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`more prior art references discourages or teaches away from the line of inquiry
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`disclosed in the reference(s). A reference does not “teach away” from an invention
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`simply because the reference suggests that another embodiment of the invention is
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`better or preferred. My understanding of the doctrine of teaching away requires a
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`clear indication that the combination should not be attempted (e.g., because it would
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`not work or explicit statements saying the combination should not be made).
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`36.
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`I understand that a person of ordinary skill is also a person of ordinary
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`creativity.
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`37.
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`I further understand that in many fields, it may be that there is little
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`discussion of obvious techniques or combinations, and it often may be the case that
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`market demand, rather than scientific literature or knowledge, will drive design
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`trends. Where there is such a design need or market pressure to solve a problem and
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`there are a finite number of identified, predictable solutions, a person of ordinary
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`PAGE 16
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`skill has good reason to pursue the known options within their technical grasp. If
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`this leads to the anticipated success, it is likely the product not of innovation but of
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`ordinary skill and common sense. In that instance the fact that a combination was
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`obvious to try might show that it was obvious. The fact that a particular combination
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`of prior art elements was “obvious to try” may indicate that the combination was
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`obvious even if no one attempted the combination. If the combination was obvious
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`to try (regardless of whether it was actually tried) or leads to anticipated success,
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`then it is likely the result of ordinary skill and common sense rather than innovation.
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`III. THE ’838 PATENT
`A. Overview of the ’838 Patent
`38. The ’838 patent is directed to the field of telecommunications
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`monitoring and control systems capable of being used
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`in “controlled
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`telecommunications systems” of institutions, “such as prisons, nursing homes,
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`mental institutions, etc.” and is drawn to “detecting three-way call attempts.”
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`’838 patent at column 1, lines 19–39. The ’838 patent states that “the present
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`invention relates to a system and method for preventing a user from successfully
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`circumventing or masking a three-way call attempt by generating a continuous or
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`constant noise.” ’838 patent at column 1, lines 15–39, 53–67.
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`39.
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`It was common at the time of the invention to detect a hook-flash click
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`to determine if an inmate was trying to talk to an unauthorized party by way of a
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`three-way call. ’838 patent at column 2, lines 1–48. Other systems were known “for
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`detecting tones commonly associated with call bridging and call forwarding
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`attempts,” including “call progress tones” that were known to be “characteristic of
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`the placement of a telephone call.” ’838 patent at column 4, lines 1–9 (emphasis is
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`mine).
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`40. The ’838 patent purports to address the need to “accurately detect[]
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`three-way call attempts” by detecting a continuous noise, i.e., an audio signal,
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`attributable to a hook-flash click, to a masking sound, and to a call progress tone,
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`which are each “indicative of a three-way call attempt.” ’838 patent at column 4,
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`lines 15–26 and 55–59. The ’838 patent posits that detecting a call progress tone in
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`response to detection of a hook flash signal was an improvement over the prior art.
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`41. Confirming that a hook-flash signal was a three-way call event by
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`further examining and analyzing the audio signal was also well-known in the art.
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`’838 patent at column 2, lines 1–48. For example, U.S. Patent No. 7,079,637
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`(“McNitt”), which is attached to the Petition as Exhibit 1008, implements signal
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`sampling “within a predetermined window following the detected high signal energy
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`event.” McNitt at column 6, lines 12–16 (emphasis is mine). And U.S. Patent
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`No. 8,050,393 (“Apple”) describes that other known 3-way call events include
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`“detection of one or more signals, such as a hook-flash signal or certain call
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`PAGE 18
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`progress tones that are associated with an attempt to set up a 3-way or conference
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`call.” Apple at column 7, line 61 through column 8, line 17 (emphasis is mine).
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`42. The ’838 patent indicates, “[p]rior art systems are not designed to nor
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`are they capable of detecting such a continuous noise.” ’838 patent at column 5, lines
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`3–7. As discussed in this overview, the ’838 patent and its parent, U.S. Patent
`
`No. 8,630,726 to Hodge et al. (the “’726 patent”), use the same method for detecting
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`a continuous noise to detect hook-flash signals, as for detecting the continuous noise
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`of a call progress tone. This method, however, was already known in the prior art
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`and was taught by at least U.S. Patent No. 8,396,200 (“Hodge_200”), which is
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`attached to the Petition as Exhibit 1006.
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`43. During the relevant timeframe, controlled telecommunications systems
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`already “monitor[ed] and control[led] the telephone activity of each inmate and
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`resident.” ’838 patent at column 1, lines 42–44. The background of the ’838 patent
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`acknowledges that signal processing techniques were commonly used to “examine
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`the digital signal[] to determine spectral characteristics (i.e. time, duration,
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`frequency and energy level)” to detect a three-way call attempt. ’838 patent at
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`column 2, lines 55–65.
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`44. The ’838 patent discloses many prior art systems known in the art for
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`detecting three-way call attempts.” ’838 patent at column 2, lines 1–9. One system
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`detects sounds with an “energy detector,” a “filter,” a “predetermined magnitude” of
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`energy pulse, a “predetermined time window,” a “timer,” and a “counter” for
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`counting energy pulses. ’838 patent at column 2, lines 10–36. In this system, a
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`software window analyzer “cooperates with the energy detector to detect specific
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`events during a predetermined time after the detection of the aforementioned energy
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`pulse.” ’838 patent at column 2, lines 19–24.
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`45.
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`In other systems, “the presence of an energy pulse indicative of a hook-
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`flash” was “confirmed by digital signal processing equipment which identifies a
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`rapid drop-off in energy.” ’838 patent at column 2, lines 37–44. Or the system
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`“confirmed” the three-way call by monitoring sound that occurred “in the
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`telecommunication during a predetermined period following the first hook-flash
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`signal.” ’838 patent at column 2, lines 44–48.
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`46.
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`In yet another known method, all telephone lines are monitored “for
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`indicia representative of a three-way call attempt.” ’838 patent at column 2, lines
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`56–58. Upon detection of a suspected three-way call, the detection circuit examines
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`the spectral characteristics of a release pulse (i.e. the hook-flash signal). ’838 patent
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`at column 2, lines 60–65. The system utilized pattern recognition techniques to
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`compare the suspected release pulse with a reference pulse. ’838 patent at column 2,
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`lines 65–67.
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`47. The ’838 patent discloses still other known systems “distinguish[ed]
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`voice and line-generated audio signals from audio signals” from the “three-way call
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`attempts.” ’838 patent at column 3, lines 9–35. Other systems utilized the
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`characteristic reflection, or echo, idiosyncratic to a three-way call connection. ’838
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`patent at column 3, lines 50–67, and column 4, lines 1–21. These were known
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`systems during the relevant timeframe and show that persons of ordinary skill in the
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`art were familiar with a number of audio signal processing algorithms to solve
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`problems relating to three-way call detection.
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`48.
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`It was known that inmates began circumventing the prior art’s hook-
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`flash detection by making a loud noise such as “a constant hum or a constant hiss”
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`into the phone’s receiver so an institution’s attempt to identify the hook-flash was
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`blocked by the “noise.” ’838 patent at column 4, line 65 through column 5, line 3. It
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`was “important to prevent inmates or residents from exploiting loopholes [that]
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`bypass the control features of the system.” ’838 patent at column 1, lines 53–56. It
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`was “critical to monitor all outgoing telephone calls for three-way call attempts”
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`otherwise many of the features of the system would be “rendered ineffective.” ’838
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`patent at column 2, lines 2–4.
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`49. Persons of ordinary skill in the art, therefore, already knew that
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`monitoring was critical and that distinguishing authorized call activity, e.g. filtering
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`for false positives, from unauthorized call activity accuracy and efficiency of the
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`telecommunications system. For example, the reference McNitt which I rely on in
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`my obviousness analysis in the grounds for unpatentability teaches that it was known
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`that calling parties in prison facilities are often under the belief that blowing into a
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`receiver will defeat detection of three-way calls” and the same solution (monitoring
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`the phone call for sounds above a certain level for two seconds). See McNitt at
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`column 9, lines 48–63. The ’838 patent also acknowledges that many of the pre-
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`existing systems were “inaccurate and subject to both false positives and false
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`negatives.” ’838 patent at column 2, lines 6–9.
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`50. To address this problem the ’838 patent states:
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`The three-way call detection circuit of the present invention is utilized
`each time a telephone call is placed by a user of the telephone
`management system. The circuit constantly monitors all active trunk
`lines and telephone conversations. During a telephone call, the three-
`way call detection circuit monitors the connection for pulses of energy
`associated with the act of the called party initiating a three-way call.
`The system of the present invention monitors the presence of audio
`signals generated by the central office switching activity (hereinafter,
`“clicks”) indicative of a three-way call initiation attempt.
`’838 patent at column 4, lines 49–59.
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`51. The
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`three-way call detection circuit 101
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`is shown
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`in
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`the
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`telecommunications system 100 of Figure 1:
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`’838 patent at Figure 1. The three-way call detection circuit 101 monitors “telephone
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`calls between an inmate [at telephone 103] and called party telephone 111.” ’838
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`patent at column 6, lines 54–60. The circuit 101 monitors connection 107 through
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`interface 113, and communicates with host computer 115 to i