• Callminer, Inc. v. Nice Ltd.Some claims unpatentable
  PTAB · Jul 12, 2021 · IPR2020-00245 · APJ Stacy B Margolies · IPR · Final written decision

  Claims 1, 2, and 4 are unpatentable as obvious over Margulies I and Wentink; claims 5 and 6 were not shown unpatentable because the references do not establish the claimed quota.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner disagrees with Petitioner’s assessment of the level of ordinary skill, asserting that the educational background is too narrow and that the work experience is incorrect. PO Resp. 8–10. Specifically, Patent Owner asserts that an ordinarily skilled artisan “would have held a bachelor’s degree in electrical engineering, computer engineering, telecommunications engineering, computer science, or a related field, and would have had 1 to 3 years of experience working in call or contact center design and operations, including work force quality management.” PO Resp. 9–10 (citing Ex. 2005 ¶ 29). Like Petitioner, Patent Owner asserts that “[a]dditional formal technical education could substitute for less technical experience, and vice versa.” Id. at 10. Neither party asserts that the patentability issues turn on the level of ordinary skill that we adopt. See Tr. 36:14–19; Ex. 2005 ¶ 25 (Patent Owner’s declarant stating that, “[w]hile I disagree with Petitioner’s proposed definition of a [person of ordinary skill in the art, my opinions would not change if Petitioner’s level of ordinary skill was adopted in this proceeding”). We determine that the level of ordinary skill proposed by Petitioner is consistent with the challenged patent and the asserted prior art and we therefore adopt that level for purposes of our analysis below.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “We agree with Patent Owner that the statement in the specification on which Petitioner relies for its construction is not definitional, because it states how the quality task “may be viewed” rather than how the task is necessarily viewed. See Ex. 1001, 6:5–9. Also, because the passage from the specification is a broad description of what the quality plan may encompass, we do not find Petitioner’s proposal helpful in delineating the scope of “quality task” in the context of the patentability issues raised in this proceeding. However, we do acknowledge that the ’872 patent describes a “quality task” quite broadly, and provides options for what a quality task may encompass. As explained below, we are not persuaded that we should adopt Patent Owner’s construction because the specification does not clearly describe the quality task itself as performing a quality evaluation for one or more interaction recordings. Rather, the patent describes a quality task as facilitating a person such as a manager to perform the evaluation. Figures 2A–2E of the ’872 patent illustrate examples of computer screens used to define a quality task. Ex. 1001, 6:13–14. Figures 2A and 2B show that defining a quality task includes defining “various aspects of a quality task’s logic.” Id. at Figs. 2A, 2B, 6:26–30. Figures 2A and 2D illustrate that “an evaluation form may be associated with a quality task.” Id. at Figs. 2A, 2D, 8:10–28. According to the ’872 patent, the “associated evaluation form may be provided to a quality manager who may use the evaluation form to evaluate an interaction.” Id. at 8:11–13.” slip op. at 12

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “Petitioner provides persuasive reasoning with rational underpinning for combining the teachings of Margulies I (incorporating Margulies II) and Wentink. Pet. 44, 47, 48–49 (citing Ex. 1006 ¶¶ 97, 106–108). Petitioner persuasively shows that it would have been obvious to a person of ordinary skill in the art to substitute the manual selection of interaction recordings disclosed in Margulies I and Margulies II “with a system that automatically and non-randomly selects the interaction recordings for evaluation, using certain predetermined criteria, as disclosed in Wentink.” Pet. 44 (citing Ex. 1006 ¶ 97) (emphasis omitted). An ordinarily skilled artisan would have made this substitution (replacing a manual selection process with an automated, business rules-driven process) to cure the inefficiency disclosed in Wentink that “quality management systems in the prior art ‘often require additional personnel and distract contact center employees from their primary task of speaking with customers.’” Ex. 1005 ¶ 4; Ex. 1006 ¶ 108. Moreover, the substitution would have no unexpected results and would have required nothing more than a straightforward software modification of replacing the manual selection code disclosed in Margulies I and II with automated rules to determine which interaction recordings to select based on parameters defined by a user, as disclosed in Wentink. Ex. 1006 ¶¶ 106– 108.” slip op. at 26

  Patent outcomesUS 8,553,872 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,553,872
• Callminer, Inc. v. Nice Ltd.Some claims unpatentable
  PTAB · Jun 16, 2021 · IPR2020-00221 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–10 are unpatentable as obvious under § 103; CallMiner did not show claims 11–17 unpatentable because its petition lacked sufficiently specific § 112(f) structure analysis.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Considering the subject matter of the ’475 Patent, the background technical field, and the prior art, we adopt Patent Owner’s submission on the level of ordinary skill in the art. We agree with Petitioner that the minor change in the level of ordinary skill in the art does not affect whether the cited art demonstrates the patentability of the challenged claims. As such, we determine that a person of ordinary skill in the art the time of the invention would have had (1) a Ph.D. in electrical engineering, computer science, linguistics, or a related field; (2) a Master’s degree in the same with one year of experience implementing systems performing speech analysis; or (3) a Bachelor’s degree in the same with three years of experience implementing systems performing speech analysis.” PO Resp. 8. However, even under Petitioner’s definition of the level of ordinary skill, we reach the same conclusions below regarding patentability of the challenged claims.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Under Phillips, we begin with the language of the claim itself. Phillips, 415 F.3d at 1314 (“the claims themselves provide substantial guidance as to the meaning of particular claim terms”). Here, claim 1 recites “performing an initial processing on the audio signal for locating an at least one event within the audio signal,” and “performing additional processing on a part of the audio signal.” Ex. 1001, 10:43–44, 47–48. It is clear from the claim that the processing events, i.e., initial and additional processing steps, are separate processing steps, although the language of claim 1 does not recite the distinctiveness that Patent Owner asserts, i.e., that there cannot be any overlap in techniques that fall under the different processing steps. The initial processing must “locat[e] an at least one event,” and the additional processing must “provide[e] output related to the audio signal,” per claim 1. Id. Given the language of the claim, including the “comprising” recitation, we are not persuaded that the initial processing could not also provide some output related to the audio signal, of which the location of the event would generally fall under a type of output related to that signal. In other words, we are not persuaded that each processing step is fulfilled by a separate and distinct set of analysis processes.” slip op. at 10

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner

    “We concur with Patent Owner’s assertions that elements of claims 11– 17 should be properly construed under 35 U.S.C. § 112 ¶ 6. We find Dr. Cohen’s testimony to be helpful in that he testifies that the “component” language of claims 11 and 13 are “functional terms,” and although those claims do not use the word “means,” he testifies that “a skilled artisan would need to review the specification to understand the scope and meaning of these terms.” Ex. 2004 ¶ 86. Dr. Stern’s testimony provides citations to the Specification, and attempts to provide the corresponding structure in Petitioner’s “alternative constructions.” See Ex. 1005 ¶¶ 60–61. As such, both parties acknowledge the functional natures of claims 11–17 and suggest the possibility that the claims need to be evaluated under § 112 ¶ 6. Weighing the testimony of both declarants and reviewing the language of independent claim 11 and claims dependent thereon, we are persuaded that those claims recite structures in functional terms such that they recite meansplus-function limitations. We agree that Petitioner’s analysis provides citations to the Specification that are not sufficiently specific or explained to identify the portions of the Specification that describe the corresponding structure. For example, claim 11 recites “initial processing component for,” which Petitioner states has the function of “activating an at least one initial processing engine,” and Petitioner cites to the Abstract, three figures and eleven sections of the ’475 Patent. Pet. 17–18. The citations are wide-ranging but not specific, so that no particular element from the Specification of the ’475 Patent is asserted by Petitioner to be structure invoked. For the next limitation of claim 11, “initial processing engine for,” nearly the same citations are provided with the same lack of specificity. Petitioner cannot be said to have provided specific structures to the functional limitations of claims 11–17 through the descriptions provided in the Petition. See Pet. 17– 22. As such, we determine by a preponderance of evidence that the Petition fails, under 37 C.F.R. § 42.104(b)(3), to challenge claims 11–17 with sufficient specificity. Thus, Petitioner has failed to establish based on a preponderance of evidence that claims 11–17 are unpatentable as obvious under 35 U.S.C. § 103. Given this, we limit our obviousness analysis to consideration of claims 1–10 below.” slip op. at 22

  • BurdenNot shown unpatentable

    “We agree that Petitioner’s analysis provides citations to the Specification that are not sufficiently specific or explained to identify the portions of the Specification that describe the corresponding structure. For example, claim 11 recites “initial processing component for,” which Petitioner states has the function of “activating an at least one initial processing engine,” and Petitioner cites to the Abstract, three figures and eleven sections of the ’475 Patent. Pet. 17–18. The citations are wide-ranging but not specific, so that no particular element from the Specification of the ’475 Patent is asserted by Petitioner to be structure invoked. For the next limitation of claim 11, “initial processing engine for,” nearly the same citations are provided with the same lack of specificity. Petitioner cannot be said to have provided specific structures to the functional limitations of claims 11–17 through the descriptions provided in the Petition. See Pet. 17– 22. As such, we determine by a preponderance of evidence that the Petition fails, under 37 C.F.R. § 42.104(b)(3), to challenge claims 11–17 with sufficient specificity. Thus, Petitioner has failed to establish based on a preponderance of evidence that claims 11–17 are unpatentable as obvious under 35 U.S.C. § 103. Given this, we limit our obviousness analysis to consideration of claims 1–10 below.” slip op. at 22

  Patent outcomesUS 7,599,475 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,599,475
• Edwards Lifesciences Corporation v. Boston Scientific Scimed, Inc.Some claims unpatentable
  PTAB · Oct 31, 2018 · IPR2017-01281 · APJ James A Tartal · IPR · Final written decision

  Claims 5, 6, 8–12, 14, 16, and 17 are unpatentable: claim 5 is anticipated by Dlugos; the remaining claims are obvious over the specified combinations.

  RulingsFinal written decision

  • BurdenMixed

    “evidence discussed in the Petition, including the declaration of Mr. Trotta. For the reasons that follow, we determine that Petitioner has shown by a preponderance of the evidence that claim 5 is anticipated by Dlugos and would have been obvious over Dlugos and Eskaros; that claim 8 would have been obvious over Dlugos, Eskaros, and Hijlkema; that claims 6, 14, and 16 would have been obvious over Dlugos, Eskaros, and Forman; that claims 9, 10, and 12 would have been obvious over Dlugos, Eskaros, and Traxler; that claim 11 would have been obvious over Dlugos, Eskaros, Traxler, and Forman; and that claim 17 would have been obvious over Dlugos, Eskaros, Forman, and Becker.” slip op. at 24

  • Expert testimonyPetitioner expert discountedOther

    “shown that Dlugos necessarily teaches first and second cone regions of the balloon having at least one fold in the fully inflated state. Moreover, we find Mr. Trotta’s testimony in support of Petitioner’s contention insufficient. According to Mr. Trotta: When folds are welded down, as shown in the figure 3, it would necessarily result in folds remaining in the transition/cone regions of the balloon when the balloon is inflated, and even when fully inflated to the specifications on the label. Because the folds are captured within the welded region, even when the balloon is fully inflated, the pressure will distribute such that there is more pressure in the working region and less pressure at the transition regions. Thus, there is insufficient pressure in the transition cone regions for the folds to be completely removed. Ex. 1005 ¶ 119. Mr. Trotta cites no support for his opinions and offers no plausible explanation for why “pressure will distribute such that there is more pressure in the working region and less pressure at the transition regions,” rather than equal pressure throughout the interior space of a balloon. Nor are we persuaded that statements by the Examiner during prosecution identified by Petitioner, which Patent Owner contends were later abandoned by the Examiner, are sufficient to establish the inherency of the claimed feature. See Pet. 39–40; Prelim. Resp. 14–15. Petitioner has not shown by a preponderance of the evidence that Dlugos teaches “first and second cone regions of the balloon having at least one fold in the fully inflated state” because Petitioner has not shown that Dlugos necessarily teaches any cone region having at least one fold in the fully inflated state, much less both a first and a second cone region, in the absence of a persuasive showing that Dlugos teaches welding both ends of the balloon to the shaft.” slip op. at 40

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “of the claimed invention would have had either of the following qualifications: (1) “an undergraduate degree in mechanical manufacturing or material science engineering, as well as at least five years of experience in the industry working with catheters and balloons and the manufacturing of those devices; or without an undergraduate degree,” or (2) “ten years of working experience designing, manufacturing and/or overseeing the processes for designing and/or manufacturing the tools and/or the devices.” Pet. 14. Mr. Trotta supports Petitioner’s contention with regard to the level of ordinary skill in the art. Ex. 1005 ¶ 57. Patent Owner does not contest Petitioner’s asserted level of ordinary skill in the art. See Prelim. Resp. 6 n.3. Based on the evidence provided, including the prior art of record, we agree with Petitioner’s proposed level of ordinary skill and also find that the prior art of record further reflects the level of ordinary skill in the art. See also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art of record may reflect the level of ordinary skill in the art).” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner

    “For the following reasons, we find insufficiently supported and unreasonably broad Petitioner’s contention that “fold” broadly includes all “lobes,” “wraps,” “wrappings,” and “protrusions,” even if those terms appear in some context in patent applications incorporated by reference to the ’767 patent. Petitioner neither identifies precisely where that context can be found in the record of this proceeding nor offers any explanation of that context to demonstrate by a preponderance of the evidence that the term, reasonably construed in light of the Specification of the ’767 patent, defines “fold” as including all “lobes,” “wraps,” “wrappings,” and “protrusions.” The mere incorporation by reference of other applications into the Specification of the ’767, absent further persuasive explanation, does not sufficiently support the proposition that the term “fold” broadly encompasses, for example, any “protrusion.” Moreover, Petitioner provides no explanation for why “examples of methods of balloon folding” that “reference” the terms “lobes,” “wraps,” “wrappings,” and “protrusions” demonstrate that the meaning of “fold” encompasses those terms. Finally, the ’767 patent expressly states that the term “fold”’ includes “pleats, wings, and any similar structure.” Ex. 1001, 3:62–63. Petitioner, however, makes no persuasive showing supported by more than conclusory assertions that all “lobes,” “wraps,” “wrappings,” and “protrusions” constitute “similar structure” to folds, pleats, or wings. Accordingly, we find the term “fold” in the ’767 patent encompasses “pleats, wings, and any similar structure.” Thus, “fold” also encompasses lobes, wraps, wrappings, or protrusions (or any other feature) only to the extent such feature constitutes “similar structure” to folds, pleats, or wings.” slip op. at 14

  Patent outcomesUS 7,828,767 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,828,767
• Edwards Lifesciences Corporation v. Boston Scientific Scimed, Inc.Some claims unpatentable
  PTAB · Jun 28, 2018 · IPR2017-00444 · APJ James A Tartal · IPR · Final written decision

  Claims 10, 11, 14, 15, 17–19, 23, 25–28, 31, 33–35, 37, 39, and 40 are unpatentable as obvious; claims 1, 2, 6, 8, and 9 were not shown obvious.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “seeks. See 37 C.F.R. 42.20(c) (“The moving party has the burden of proof to establish that it is entitled to the requested relief.”). First, a motion to exclude deals with the admissibility of evidence under the Federal Rules of Evidence. See 37 C.F.R. §§ 42.62 (applying the Federal Rules of Evidence to inter partes reviews), 42.64; Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,758 (August 14, 2012) (“Admissibility of evidence is generally governed by the Federal Rules of Evidence.”). As stated in the Office Patent Trial Practice Guide, the parties may submit motions to exclude regarding evidence “believed to be inadmissible.” Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,758. Further, a motion to exclude “must explain why the evidence is not admissible (e.g., relevance or hearsay).” Id. at 48,767. Patent Owner has made no showing that the Supplemental Declaration or Petitioner’s Reply are inadmissible. We further agree with prior panels of the Board, which have determined under similar circumstances that a “motion to exclude evidence filed for the purpose of striking or excluding an opponent’s brief and/or evidence that a party believes goes beyond what is permitted under 37 CFR § 42.23 is improper.” Palo Alto Networks, Inc. v. Finjan Inc., Case IPR2015-01979, Paper 62, 66 (PTAB Mar. 15, 2017) (stating that an “allegation that evidence does not comply with 37 CFR § 42.23 is not a sufficient reason under the Federal Rules of Evidence for making an objection and requesting exclusion of such evidence”); see also Blackberry Corp. v. Zipit Wireless, Inc., Case IPR2014-01508, Paper 49, 40 (PTAB Mar. 29, 2016) (“a motion to exclude is not a proper vehicle for a party to raise the issue of arguments exceeding the permissible scope of a reply”).” slip op. at 11

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Second, if “linear” motion were required, Petitioner has persuasively explained that the dies taught in Yasumi move in the same manner as the dies claimed in the ’560 patent. Ex. 1105 ¶¶ 95–104, 127–129, 136; Ex. 1127 ¶¶ 50–53. We credit the testimony of Mr. Sheehan over Dr. Solar on this point because we find Mr. Sheehan’s testimony to be most consistent with the teachings of Yasumi. Indeed, Patent Owner does not dispute that Yasumi teaches “a rotatable actuation device coupled to the dies,” as claimed, or that rotation of the actuation device causes the aperture to increase or decrease in size. See generally PO Resp. Patent Owner offers no plausible theory in rebuttal, much less any evidence, to suggest that the aperture of Yasumi formed by the inward facing straight sides of the dies increases and decreases with the rotation of the actuation device, but that the faces do not “move inward and reduce the size of the aperture or outward so as to increase the size of the aperture,” as claimed. To the extent Patent Owner is merely arguing that Petitioner has not made the necessary showing, we find such argument in this case unpersuasive as Petitioner has shown by a preponderance of the evidence that Yasumi teaches every limitation of claim 10. See, e.g., Pet. 66 (citing Ex. 1103, 8:42–54).” slip op. at 34

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “We agree with Petitioner that the preamble recitation of “[a] stent crimper comprising” is not limiting as to any of the challenged claims. The preamble language merely provides a name to the claimed invention that describes a use for the invention, whereas the body of each claim describes a structurally complete invention. See Catalina Mktg., 289 F.3d at 809. Because “the preamble offers no distinct definition of any of the claimed invention’s limitations, but rather merely states . . . the purpose or intended use of the invention, . . . the preamble is of no significance to claim construction.” Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999), citing Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997); Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989); Kropa v. Robie, 187 F.2d 150, 152 (CCPA 1951). Moreover, contrary to Patent Owner’s arguments, the ’560 patent makes clear that the claimed invention is not intended to be limited to a stent crimper. As Petitioner notes, “the specification provides broad disclosure of multiple alternative applications for the invention,” including manipulating other medical devices and as a balloon mold. Pet. Reply. 7–8 (citing Ex. 1101, 2:48–55, 3:14–22, 3:36–37, 8:65–9:62, Figs. 12, 13); Ex. 1101, 2:48–55, 3:16–21, 3:36–37, 8:65–9:62, Figs. 12, 13.” slip op. at 16

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner

    “To the extent Petitioner’s proposal divorces the recited “engaged” from the “operation” of the apparatus, we agree the meaning would be too broad. However, we discern little substantive difference in the arguments made by both parties with regard to what “operatively engaged” encompasses, even if they dispute the full scope of the meaning of the term. There is no reasonable dispute that an element is “operatively engaged” if it is engaged, directly or indirectly, in the operation of the device. See, e.g., Tr. 24:13–25:12; see also Ex. 1126, 60:18–25 (Dr. Solar equating operative engagement to “whether it’s fixed or connected in some manner that explains how that part works”). No further express construction is necessary.” slip op. at 19

  Patent outcomesUS 6,915,560 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,915,560
• Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentable
  PTAB · Dec 15, 2016 · IPR2015-01222 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–11 and 13–15 are unpatentable as obvious over Strubbe and Rae; claims 12 and 16–20 were not shown unpatentable because the petition did not tie the connection-fee limitation to those references.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “We found Patent Owner’s arguments and evidence to be insufficient to show a real party-in-interest issue. Discovery Order 8–10. First, we found the mere existence of the relationship between Petitioner and a parent company (American Securities) to be insufficient to demonstrate a real party-in-interest issue. Discovery Order 8. In addition, we determined the evidence did not show that American Securities and Petitioner have “corporate boundaries that were inextricably intertwined.” Discovery Order 8. Second, we found the existence of common directors or employees between American Securities and Petitioner to be insufficient to show a real party-in-interest issue, unless the directors controlled or participated in the filing of the proceedings. Discovery Order 9. We found insufficient evidence that common officers between American Securities and Petitioner 9 were involved in the filing of the present proceedings or had the ability to direct the filing of the present proceedings. Discovery Order 9. Nor did we find persuasive evidence that American Securities provided any prior art to Petitioner in the instant proceedings. Discovery Order 9. Third, we found ambiguous and unreliable statements made by a non- lawyer CEO during settlement negotiations covering “ongoing intellectual property disputes” (see Discovery Motion 1) failed to demonstrate that American Securities funded and controlled the instant proceeding. Discovery Order 9; see Exs. 2006, 2011.” slip op. at 9

  • ExcludeMotion to exclude, deniedDenied

    “Similarly to the posture of Petitioner’s First Motion to Exclude, the current situation does not require us to assess the merits of Petitioner’s Second Motion to Exclude. See Discovery Order, 13 (indicating that Patent Owner’s evidence was insufficient, “even without excluding Patent Owner’s supporting evidence”). According to Petitioner, the two declarations filed by Patent Owner in support of its Motion for Additional Discovery allegedly recount statements made by Petitioner’s CEO during settlement discussions between Patent Owner and GTL. Mot. Exc. 2nd, 1–2.” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “We agree with Petitioner. One portion of the Specification cited by Patent Owner details: “[t]he list of items displayed for the inmate may be selected based upon data stored in the inmate's profile on JAMS database 115.” Ex. 1001, 3:61–63 (emphasis added). The conditional nature of the selection need not be incorporated into claim 8. In addition, the instant claim language would also read on a display of all items, with indications of 18 availability with each item for the inmate, such that all items would be displayed instead of Patent Owner’s truncated listing. As such, we conclude that Patent Owner’s proposed construction of the language of claim 8 is overly narrow and is not adopted in the analysis that follows.” slip op. at 18

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s declarant, Dr. Leonard J. Forys, testifies that one of ordinary skill in the art “would have a bachelor’s degree in Electrical Engineering, Computer Science, or an equivalent field as well as at least 2–3 years of academic or industry experience in a call center technology particularly computer telephony integration and in telephone networks in general.” Ex. 1003 ¶ 30; see Pet. 10 (citing Ex. 1003 ¶¶ 29–30). Patent Owner’s declarant, Mr. Ivan Zatkovich, proposes that Petitioner’s definition be adopted. Ex. 2012 ¶ 31. As such, we adopt Dr. Forys’ definition of the level of ordinary skill in the art for the purposes of the analysis below.” slip op. at 21

  Patent outcomesUS 8,750,486 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,750,486
• Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentable
  PTAB · Dec 14, 2016 · IPR2015-01225 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1–4 and 6–8 are unpatentable as obvious over the instituted combinations; claim 5 was not shown unpatentable over Magee, Nussbaum, and Juang.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “We found Patent Owner’s arguments and evidence to be insufficient to show a real party-in-interest issue. Discovery Order 8–10; Inst. Dec. 18. First, we found the mere existence of the relationship between Petitioner and a parent company (American Securities) to be insufficient to demonstrate a real party-in-interest issue. Discovery Order 8; Inst. Dec. 18. In addition, we determined the evidence did not show that American Securities and Petitioner have “corporate boundaries that were inextricably intertwined.” Discovery Order 8; Inst. Dec. 18.” slip op. at 15

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther

    “In the Decision to Institute, after considering constructions of SCF rating proffered by Petitioner and Patent Owner, we determined that the ’663 patent did not provide the requisite clarity, deliberateness, and precision necessary to define the term SCF rating, and we declined to read the limitation from the preferred embodiment into claim 1. Inst. Dec. 10–14 (citing Paulsen, 30 F.3d at 1480; Superguide Corp. v. DirecTV Enter., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004); Am. Academy of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004); Van Geuns, 988 F.2d at 1184). We credited the testimony of Petitioner’s declarant, Homayoon Beigi, D. Eng’g Sci., that “[t]here is no definition of ‘Suspicious Call Finder (SCF) rating’ that would be immediately known to a person of ordinary skill in the art.” Inst. Dec. 14 (quoting Ex. 1003 ¶ 45).” slip op. at 24

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownOther

    “data from said selected portion of speech.” In the Decision to Institute, we determined that “prosody” needed express construction, although neither party had proffered an express construction for the term. Inst. Dec. 15–16. We identified an express definition of “prosody” in the Specification: The word “prosody” (defined at Princeton University as ‘the patterns of stress and intonation in a language’) is often used in the field of affective computing (computing relating to emotion) to refer to emotion-indicating characteristics of speech.” Ex. 1001, 6:36–40; see Inst. Dec. 15 (quoting Ex. 1001, 6:36–40). Based on that definition, we preliminarily construed “prosody data” to mean “data reflecting emotion-indicating characteristics of speech” in our Decision to Institute and further determined that, on the partially-developed, pre-institution record, that the prosody construction was consistent with the plain language of claim 8. Inst. Dec. 15.” slip op. at 26

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s declarant, Dr. Beigi, testifies that one of ordinary skill in the art “would have a B.S. degree in Electrical Engineering, Computer Science, or an equivalent or related field (or comparable industry experience), as well as at least 1–3 years of academic or industry experience in speech processing.” Ex. 1003 ¶ 23; see Pet. 9–10 (citing Ex. 1003 ¶ 32) (asserting level of ordinary skill in the art). Patent Owner adopts Petitioner’s definition without contesting it. PO Resp. 10. Having reviewed the prior art asserted in this proceeding (see, e.g., Exs. 1007–1011), we also adopt the level of ordinary skill in the art employed by both Petitioner and Patent Owner.” slip op. at 30

  Patent outcomesUS 8,886,663 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,886,663
• Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentable
  PTAB · Dec 7, 2016 · PGR2015-00013 · APJ Kevin F Turner · PGR · Final written decision

  Claims 1–4, 7–19 were held unpatentable as obvious; claims 5, 6, and 20 were not shown unpatentable over Reinhold, Walters, and Dudovich.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “We found Patent Owner’s arguments and evidence to be insufficient to show a real party-in-interest issue. Discovery Order 8–10; Dec. 8. First, we found the mere existence of the relationship between Petitioner and a parent company (American Securities) to be insufficient to demonstrate a real party-in-interest issue. Discovery Order 8. In addition, we determined the evidence did not show that American Securities and Petitioner have “corporate boundaries that were inextricably intertwined.” Discovery Order 8. Second, we found the existence of common directors or employees between American Securities and Petitioner to be insufficient to show a real party-in-interest issue, unless the directors controlled or participated in the filing of the proceedings. Discovery Order 9. We found insufficient evidence that common officers between the American Securities and Petitioner were involved in the filing of the present proceedings or had the ability to direct the filing of the present proceedings. Discovery Order 9. Nor did we find persuasive evidence that American Securities provided any prior art to Petitioner in the instant proceedings. Discovery Order 9.” slip op. at 11

  • PTAB / AIA Trials › Motions to amend / substitute claimsNot reached
  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner’s motion to exclude Exhibits 1013, 1014 and 1015 is denied. As Patent Owner points out, 37 C.F.R. § 42.6(a)(3) indicates that “[a]rguments must not be incorporated by reference from one document into another document.” We are not persuaded, however, that Petitioner is attempting to incorporate by reference; Exhibits 1013, 1014, and 1015 are cited by Petitioner’s declarant, not incorporated by reference. If Petitioner’s declarant or the cited exhibits contained arguments not made in a paper, we would likely ignore such arguments. In this instance, Petitioner is making of record the documents cited, which is generally laudatory, so that a reader can determine for herself that cited facts are supported. We are not persuaded that the cited exhibits are “irrelevant.” Additionally, we find no support for Patent Owner’s contention that exhibits must be cited by “papers,” and not other exhibits. Many exhibits, such as declarations, prior art references, and deposition transcripts, cite to other exhibits in normal trial practice. Accordingly, Patent Owner’s Motion to Exclude Exhibits 1013, 1014, and 1015 is denied.” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s declarant, Mr. Frank Koperda, testifies that one of ordinary skill in the art would have a Bachelor of Science degree in electrical engineering, computer science, or an equivalent field, as well as at least 2–5 years of academic or industry experience in the telecommunications industry. Ex. 1002 ¶ 19; see Pet. 5 (asserting level of ordinary skill in the art). Patent Owner’s declarant, Mr. Stuart J. Lipoff, largely adopts Mr. Koperda’s level of ordinary skill in the art, adding that such artisans should have experience “in the generation of billing statements or cost accounting reports.” Ex. 2012 ¶ 33. We are not persuaded that such billing or accounting experience is necessary “to fully understand the ’280 patent disclosure.” Id. Having reviewed the prior art asserted in this proceeding (see, e.g., Exs. 1003, 1007, 1006, 1008), we also adopt the level of ordinary skill in the art employed by Petitioner’s declarant, where Patent Owner’s declarant acknowledges that his analysis would be the same under Mr. Koperda’s level of ordinary skill in the art. Ex. 2012 ¶ 34.” slip op. at 23

  Patent outcomesUS 8,855,280 mixed
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 8,855,280
• Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentable
  PTAB · Nov 30, 2016 · IPR2015-01220 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1–5 and 12–17 are unpatentable as obvious; claims 7, 9–11, and 18–26 were not shown unpatentable on the asserted combinations.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “Thus, Patent Owner has not introduced evidence reasonably bringing into question Petitioner’s identification of the real party-in-interest in this proceeding. Accordingly, the evidence of record does not support a determination that American Securities had a role in funding or controlling this proceeding, or could have exercised control over this proceeding. 11 For these reasons, we determine that a preponderance of the evidence does not show that American Securities is an unnamed real party-in-interest in this proceeding. As such, we determine that Petitioner’s real party-in-interest identification at the time of filing the Petition remains valid.” slip op. at 11

  • ExcludeMotion to exclude, deniedDenied

    “For these additional reasons, we determine that, even without excluding Exhibits 2006 and 2011, the preponderance of evidence does not show that American Securities is an unnamed real party-in-interest in this proceeding. Accordingly, Petitioner’s Second Motion to Exclude Exhibits 2006 and 2011 is dismissed as moot.” slip op. at 15

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “construed also undermine Petitioner’s position. “In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). On the other hand, a preamble, however, “generally is not limiting when the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention.” Id. at 809. The only limitations in the body of independent claim 22—the two biometric sensors—are not structurally complete in themselves. Rather, the telephone handset is required to describe a structurally complete invention that includes two biometric sensors. Without the telephone handset as an element, the claim merely recites two unconnected biometric sensors without any structure—a structurally incomplete invention. Furthermore, the telephone handset recited in the preamble does not duplicate the biosensor limitations in the body of the claim. Thus, we conclude that the telephone handset is essential structure and is necessary to give life, meaning, and vitality to the claim. This weighs toward a determination that independent claim 22 requires a telephone handset. See Catalina Mktg. Int’l, 389 F.3d at 808–09.” slip op. at 25

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner, however, does not acknowledge that both Dr. Beigi and Dr. Caloyannides include electrical engineering as a field of study in the respective level of ordinary skill. Thus, we do not agree with Patent Owner’s statement that Dr. Beigi’s proposed “academic requirements do not provide this background. See Ex. 1003 ¶ 34 (Dr. Beigi opining that “one of ordinary skill in the art (a “POSA”) would have a Bachelor of Science (B.S.) degree in electrical engineering, computer science, or an equivalent or related field”). Because both experts specify electrical engineering as an academic field of study but only Dr. Beigi specifies computer science, we understand the disagreement of the parties to be whether computer science is a relevant academic field of study. We do not agree with Patent Owner’s contention that “bachelor’s level degree in electrical engineering or physics is necessary to understand both the various data/network communication aspects of the claimed invention as well as the mathematics underlying biometric systems.” See PO Resp. 7. Contrary to Patent Owner’s contention, the invention as claimed recites elements and functions using a high-level of abstraction with little, if any, technical detail regarding “the data/network communication aspects of the claimed invention.” For example, independent claims 1 and 12 recite methods that include broad functional steps of authorizing, continuously monitoring, verifying, and monitoring a biometric training with 30 little, if any, technical detail. Similarly, the call processing system recited in independent claim 13 and the biometric telephone handset recited in independent claim 22 recite elements that perform broad functions with little, if any, technical detail. Thus, the plain language of the claims undermines Patent Owner’s contention that an understanding of “both the various data/network communication aspects of the claimed invention as well as the mathematics underlying biometric system” necessitate an electrical engineering or physics academic degree.” slip op. at 30

  Patent outcomesUS 7,494,061 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,494,061
• Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentable
  PTAB · Nov 29, 2016 · PGR2015-00014 · APJ Barbara A Benoit · PGR · Final written decision

  Claims 1, 4–10, and 13–18 are unpatentable as obvious; claims 2, 3, 11, 12, and 19–25 were not shown unpatentable because the prior art did not teach the required video-communication eligibility query and confirmation.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “Thus, Patent Owner has not introduced evidence reasonably bringing into question Petitioner’s identification of the real party-in-interest in this proceeding. Accordingly, the evidence of record does not support a determination that American Securities had a role in funding or controlling this proceeding, or could have exercised control over this proceeding. For these reasons, we determine that a preponderance of the evidence does not show that American Securities is an unnamed real party-in-interest in this proceeding. As such, we determine that Petitioner’s real party-in-interest identification at the time of filing the Petition remains valid.” slip op. at 16

  • ExcludeDenied

    “Similarly to the posture of Petitioner’s First Motion to Exclude, the current situation does not require us to assess the merits of Petitioner’s Second Motion to Exclude. See Discovery Order, 13 (indicating that Patent Owner’s evidence was insufficient, “even without excluding Patent Owner’s supporting evidence”). According to Petitioner, the two declarations filed by Patent Owner in support of its Motion for Additional Discovery allegedly recount statements made by Petitioner’s CEO during settlement discussions between Patent Owner and GTL. Mot. Exc. 2nd, 1–2.” slip op. at 18

  • Skill levelSkill level board ownOther

    “Petitioner’s declarant, Kevin Jeffay, Ph.D., testifies that one of ordinary skill in the art would have a Bachelor of Science degree in computer science (or an equivalent field), as well as at least 2–3 years of academic or industry experience in software development (or comparable industry experience). Ex. 1002 ¶ 30; see Pet. 12 (citing Ex. 1002 ¶ 30) (asserting level of ordinary skill in the art). Dr. Jeffay indicates that he bases his opinion of the level of ordinary skill on the disclosure of the ’525 patent. Ex. 1002 ¶ 30. Patent Owner’s declarant, Mr. Stuart J. Lipoff, adopts Dr. Jeffay’s level of ordinary skill in the art. Ex. 2014 ¶ 36. Having reviewed the prior art asserted in this proceeding (see, e.g., Exs. 1009, 1010, 1012), we also adopt the level of ordinary skill in the art employed by both Petitioner’s declarant and Patent Owner’s declarant.” slip op. at 26

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedOther

    “Furthermore, we credit Dr. Jeffay’s testimony that a skilled artisan would have been able to incorporate Virtanen’s voice-to-video switching in Torgersrud’s computer system. Ex. 1002 ¶ 44. Dr. Jeffay’s testimony relied on “sophistication of software packages to manage audio and video streams on personal devices available in 2014” and identified specific “Software Development Kits” available to develop software for mobile devices. Id. Moreover, he testified that an undergraduate student would have been able to implement the necessary modification and testified that he was aware of a specific example of such a system that one of his undergraduate students developed in 1995. Id. We weigh Dr. Jeffay’s testimony more heavily than Mr. Lipoff’s testimony. Dr. Jeffay’s testimony is based on specific reasons, whereas Mr. Lipoff’s testimony lacks sufficient supporting analysis and is based on a faulty premise that a central communications processing system would need to be inserted in Torgersrud’s system. Compare Ex. 1002 ¶ 44, with Ex. 2014 ¶¶ 63–64 (“I believe a skilled artisan would need to be familiar with communication processing systems of a controlled facility, like in” slip op. at 56

  Patent outcomesUS 8,929,525 mixed
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 8,929,525
• Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentable
  PTAB · Dec 2, 2015 · IPR2014-00825 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1, 3, 4, 6, 7, 10, 13, 19, and 20 are unpatentable as obvious; the petition did not prove claims 2, 5, 8, 9, 11, 12, and 14–18 unpatentable.

  RulingsFinal written decision

  • BurdenDecided for patent owner

    “Applying these principles to the instant case, in an inter partes review, the burden of persuasion is on Petitioner to prove “unpatentability by a preponderance of the evidence,” 35 U.S.C. § 316(e), and that burden never shifts to the Patent Owner. See Dynamic Drinkware, 800 F.3d at 1379. (explaining petitioner “had the burden of persuasion to prove unpatentability by a preponderance of the evidence, and this burden never shifted”). Petitioner also has the initial burden of production. Id. Petitioner satisfied its burden of production by arguing in its Petition that Spadaro was prior art under § 102(e) and, in combination with one or more other prior art references, would have rendered claims 1–20 obvious at the time the invention was made under § 103(a). Pet. 4–5, 13–36.” slip op. at 11

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable

    “Even if we were to find that Petitioner’s citation to two pages of its declarant’s testimony, without explanation, does not amount to improper incorporation by reference, the testimony of Petitioner’s declarant, Leonard J. Forys, Ph.D., is insufficient to show one of ordinary skill in the art was in possession of the subject matter of the claims at issue. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). First, the testimony of Petitioner’s declarant, Dr. Forys, is conclusory, merely quoting some portions of the ’357 patent without adequately explaining how the quoted portions relate to the subject matter recited by the claims. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Moreover, during cross-examination Dr. Forys explained his analysis, “I just went through the ’167 patent and just picked a few things out that seem to indicate that they are already there. . . . So it was illustrative. It’s not a detailed analysis. It is just suggestive.” Ex. 2006, 48:1–7.” slip op. at 20

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner

    “The ’357 patent does not set forth a special definition for “call application management system.” As confirmed by Dr. Forys (id.), the plain language of the claim specifies the function required to be performed by the call application management system—connecting calls responsive to receiving a request to connect the call. Although Dr. Forys found Patent Owner’s proposed construction to be “reasonable,” Patent Owner’s proposed construction unnecessarily introduces the term “call processing,” which is not recited by the claim itself and on its face seems broader than the recited function of a call application management system—to connect a call. We do not agree with Patent Owner that a call application management system must perform examples of call processing described by the Specification, but not recited in the claim. Limitations from embodiments are not to be imported into the claims. See In re Van Geuns, 988 F.2d at 1184. Furthermore, we find that Patent Owner’s contention— the name “the call application management system of Claim 1 would be understood [by one of ordinary skill in the art] to manage, from start to finish, each call placed or received at the plurality of prisons” (PO Resp. 6)—places too much weight on the term “management” without sufficiently addressing the term “application.” We credit the testimony of Petitioner’s declarant, who disagrees that call application management system is 25 required to manage “all call processing, ‘from start to finish.’” Ex. 1020 ¶ 8 (emphasis omitted). Therefore, in light of the plain language of the claim, the Specification of the ’357 patent, and according the testimony of Patent Owner’s declarant and Petitioner’s declarant appropriate weight, we construe “call application management system” to mean a system that performs the enumerated function—“connecting a call to or from the telephone terminals over a telephone carrier network responsive to receiving a request for connecting the call.”” slip op. at 25

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “In general, we adopt the areas of agreement in the parties’ proposals. Patent Owner’s proposed academic or industry experience of telephony14 systems comports with the level of ordinary skill in the art reflected in the prior art of record, which relate to telephone communication systems. Petitioner has not explained sufficiently why the broader field of communications systems is a more appropriate area of academic or industry experience than telephony systems. Thus, we generally adopt Patent Owner’s proposed academic or industry experience in telephony systems. Therefore, one of ordinary skill in the art would have a Bachelor of Science degree in electrical engineering, computer science, or an equivalent field, as well as at least three years of academic or industry experience in telephony systems.” slip op. at 29

  Patent outcomesUS 7,529,357 mixed
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 7,529,357

Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.