• Global Tel*link Corporation v. Securus Technologies, Inc.All claims unpatentable
  PTAB · Dec 21, 2016 · IPR2015-01226 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–28 are unpatentable under § 103 over the specified combinations; the motion to amend with substitute claims 29–50 is denied.

  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. Id. at 8. In addition, we determined the evidence did not show that American Securities and Petitioner have “corporate boundaries that were inextricably intertwined.” Id. 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 were involved in the filing of the present proceedings or had the ability to direct the filing of the present proceedings. Id. Nor did we find persuasive evidence that American Securities provided any prior art to Petitioner in the instant proceedings. Id.” slip op. at 11

  • ExcludeNot reached

    “Similar 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 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s declarant, Mr. James R. Bress, testifies that one of ordinary skill in the art “would have a [Bachelor of Science] B.S. degree in Electrical Engineering, Computer Science, or an equivalent or related field (or comparable industry experience), as well as at least 2–3 years of academic or industry experience with call monitoring or recording.” Ex. 1003 ¶ 30; see Pet. 11 (citing Ex. 1003 ¶ 30). Patent Owner’s declarant, Dr. Michael A. Caloyannides, proposes that Petitioner’s definition be 21 adopted. Ex. 2013 ¶ 24. We adopt Mr. Bress’ definition of the level of ordinary skill in the art for the purposes of the analysis below.” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “We determine that Petitioner has articulated sufficient reasoning with some rational underpinning to support the combinations of (1) Schrage and Koga; (2) Schrage, Koga, Creamer, and Peterson; (3) Schrage, Koga, and Glowny; (4) Schrage, Koga, Glowny, Peterson, and Creamer; and (5) Schrage, Koga, Glowny, and Ostrover. See KSR, 550 U.S. at 420 (“Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”). We also credit Mr. Bress’ testimony that one of ordinary skill in the art would have had reason to combine the cited references. Ex. 1003. For these reasons, we determine that Petitioner demonstrates by a preponderance of the evidence that the combination of Schrage and Koga would have conveyed to one of ordinary skill in the art the limitations recited in claim 15. We also determine that Petitioner demonstrates by a preponderance of the evidence articulated reasoning with some rational underpinning to support the legal conclusion that the subject matter of claim 15 would have been obvious to one of ordinary skill in the art in view of the teachings of Schrage and Koga as combined in the manner proposed by Petitioner.” slip op. at 33

  Patent outcomesUS 8,135,115 unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,135,115
• Captioncall, L.L.C. v. Ultratec, Inc.All claims unpatentable
  PTAB · Dec 14, 2016 · IPR2015-01355 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1–13, 15, and 18 are unpatentable under § 103 over the stated combinations of Liebermann, Aronow, O’Toole, and McLaughlin.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not challenge directly Mr. Occhiogrosso’s testimony. See generally PO Resp. 5. Mr. Ivan Zatkovich, Patent Owner’s declarant, does not propose a level of ordinary skill in the art to be adopted, but he does testify that the opinions set forth in his declaration would not change if he “assumed that [one of ordinary skill in the art] had the qualifications set forth in Mr. Occhiogrosso’s declaration.” Ex. 2098 ¶ 24 (citing Ex. 1008 ¶ 27). Having reviewed the prior art asserted in this proceeding (see, e.g., Exs. 1002–1005), we determine that the level of ordinary skill proposed by Petitioner’s declarant and employed by both declarants is consistent with the challenged patent and the referenced prior art, and we adopt Mr. Occhiogrosso’s definition of the level of ordinary skill in the art for the purposes of the analysis below.” slip op. at 11

  • ExcludeMotion to exclude, deniedDenied

    “Turning to the merits of the Motion to Exclude, we find Patent Owner’s assertion that a person of ordinary skill in the art “must know the relevant prior art of telephone technology for the deaf and HOH” (Mot. Exc. 4) lacks sufficient factual corroboration or explanation. For example, Patent 10 Mr. Zatkovich is referring to the level of ordinary skill discussed previously and which we adopted for this proceeding. 14 Owner does not address the sentence that immediately precedes the single citation in the challenged patent on which Patent Owner relies: “[t]he present invention relates to the general field of telephone communications.” Ex. 1001, 1:13–14. Nor does Patent Owner discuss the level of ordinary skill reflected in the prior art of record or other factors that may be considered, including the types of problems encountered in the art, the sophistication of the technology, and educational level of active workers in the field. Okajima, 261 F.3d at 1355. Even if we were to adopt Patent Owner’s definition of a person of ordinary skill in the art, we find Mr. Occhiogrosso meets Patent Owner’s proffered level of ordinary skill: “must know the relevant prior art of telephone technology for the deaf and HOH” (Mot. Exc. 4). Mr. Occhiogrosso’s experience providing expert testimony in proceedings regarding assistive technologies for the deal or hard of hearing is uncontroverted. See Mot. Exc. 4–5 (identifying three inter partes reviews); Ex. 2105, 5:23–6:10 (deposition on August 9, 2016 indicating Mr. Occhiogrosso has been deposed between twelve and twenty times concerning Patent Owner’s patents). Furthermore, the five prior art references Mr. Occhiogrosso considered for this case (Ex. 1008 ¶ 28) all involve telephone technology for the deaf and HOH and support his qualification under the definition of a person of ordinary skill in the art now offers for the first time in its Motion to Exclude (and after it relied on the testimony of its declarant as to a different level). 15” slip op. at 14

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Mr. Occhiogrosso testifies that one of ordinary skill in the art “would consider the screen in Figure 6 [shown on a cellular phone] as analogous to the screen depicted in Figure 8.” Ex. 1043 ¶ 6; see Pet. Reply 9–10 (citing Ex. 1043 ¶ 4–7). Mr. Occhiogrosso’s testimony relies on, and better comports with, Liebermann’s description of Figure 8 as illustrating “a layout for the visual display to present multiple information to the deaf person.” Ex. 1002, 6:29–36; Ex. 1043 ¶ 6. Mr. Occhiogrosso opines that the layout in Figure 8 “can be applied to different devices with displays of varying dimensions,” including the cellular embodiment of Figure 6, the personal computer embodiment in Figure 5a, and the kiosk embodiment in Figure 5c. Ex. 1043 ¶ 6. Mr. Occhiogrosso explains that Figure 8 depicts a “three-part, logical screen layout [that would be] identical and would be scaled appropriately, depending on display size.” Id. We credit Mr. Occhiogrosso’s testimony over that of Mr. Zatkovich because Mr. Occhiogrosso’s testimony better comports with the express disclosure of Liebermann—Figure 8 is not described as being limited to the embodiments in Figures 5a–5c or otherwise not being applicable to the cellular phone embodiment shown in Figure 6. Rather, Figure 8 is described more generally as being “a layout for the visual display.” Ex. 1002, 6:31– 34 36. In addition, Mr. Zatkovich opines that one of ordinary skill in the art purportedly would not incorporate the display shown in Figure 8—that is, the three-part display. At issue here, however, is only a small portion of that display—the incoming text screen—showing the text communication representing a transcription of the voice of the person speaking to a user of the personal interpreter device.” slip op. at 34

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “skill in the art would combine Aronow’s initiation switch into Liebermann’s device to save power. PO Resp. 35–36. We agree with Patent Owner that, because the initiation switch is not an “on/off switch” that would enable a user to turn off the device and save power, Mr. Occhiogrosso’s power saving rationale (Ex. 1008 ¶¶ 58–59) is an insufficient motivation to combine the initiation switch. PO Resp. 35–36 (citing Ex. 2098 ¶ 62; Ex. 2097, 141:21– 142:12). Similarly, we also agree with Patent Owner’s challenge regarding Mr. Occhiogrosso’s testimony that Aronow’s switch improves Liebermann’s communicator by making it a “low cost, self contained telephonic interface device requiring no programming for operation.” Id. at 36. Relying on Mr. Zatkovich’s testimony, Patent Owner indicates “the communicator/cellular phone embodiment of Fig. 6 of Liebermann[] already appears to be a self-contained device.” Id. (citing Ex. 2098 ¶ 61). Nevertheless, we note that there is no dispute that Liebermann’s communicator and cellular telephone implementations provide for a user initiating a call to the center by dialing the center. See, e.g., PO Resp. 36 (“As a special case of a telephone, Liebermann can initiate a call simply by dialing a stored number to the Center.”). We disagree with Patent Owner that the addition of Aronow’s switch would not simplify the communicator 48 of Liebermann. Id. Common sense suggests that a single initiation switch is a simpler way to initiate a call than by dialing the multiple digits of a telephone number. Furthermore, we credit Mr. Occhiogrosso’s testimony of the simplifying benefits of a user-operated initiation switch, which is based on Aronow’s discussion about the benefits of the initiation switch to simplify operations of the telephonic device, especially for elderly people who are hard of hearing. Ex. 1008 ¶ 58. For these reasons, we determine that Petitioner has provided sufficient” slip op. at 48

  Patent outcomesUS 5,974,116 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 5,974,116
• Global Tel*link Corporation v. Securus Technologies, Inc.All claims unpatentable
  PTAB · Dec 9, 2016 · IPR2015-01219 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–32 are unpatentable as obvious over Rae, Sulmar, and Falcone; the motion to amend with substitute claims 33–57 is denied.

  RulingsFinal written decision

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

    “We disagree that Patent Owner has introduced evidence reasonably bringing into question the accuracy of GTL’s identification of the real parties-in-interest in its Petition. First, in its Patent Owner Response, Patent Owner makes conclusory assertions, without explaining how any evidence of record supports Patent Owner’s contentions, such as that the “private equity firm American Securities . . . has the ability to control GTL in general and in [this] proceeding[].” PO Resp. 41 (citing generally Exs. 2002–2011, Discovery Motion, Prelim. Resp.); id. at 41–43 (asserting that its evidence “reasonably brings into question the accuracy” of Petitioner’s identification of the real party-in-interest in its Petition).” slip op. at 10

  • ExcludeNot reached

    “Similar 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” slip op. at 13

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

    “We agree with Petitioner. The subject limitation of claim 1 is “determining whether a charge for message service using message service communication protocol can be billed to the cellular telephone.” As we discussed in the Institution Decision, the Specification discusses two determinations, and we are not persuaded that both determinations must be satisfied to satisfy claim 1. See Dec. 16–17. As understood at the time of the invention of the ’118 Patent, and as understood today, the physical cellular phone may receive a message or call, but does not receive a charge, per se. Patent Owner has not provided any examples of mobile devices that “do their own billing,” i.e., that internally bill a charge and/or process payments, and we are unaware of such mobile devices. Rather, the charges are handled by a mobile carrier, and can follow a myriad of billing arrangements, which can be purely business agreements, subject to negotiation and not subject to technical requirements. We credit the testimony of Dr. Forys, providing that the ’118 Patent focuses on the ability to charge the phone when a message is transmitted to it, not on the ability of the phone to receive a message. Ex. 1026 ¶¶ 25–28. Furthermore, we determine that focusing on technical capabilities of the called party’s phone 21 ignores the role of the carrier, which is the essential entity in the billing process. As such, we maintain our interpretation of the “determining” step of claim 1, and apply it in our consideration of the ground below.” slip op. at 21

  • 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 of Science] B.S. degree in Electrical Engineering, Computer Science, or an equivalent field as well as at least 3–5 years of academic or industry experience in communications systems, or comparable industry experience.” Ex. 1003 ¶ 30; see Pet. 9 (citing Ex. 1003 ¶ 30). Patent Owner’s declarant, Mr. Bradley O. Walton, contends one of ordinary skill in the art “would have a bachelor’s degree in Electrical Engineering, Computer Science, or an equivalent field and at least three years of academic or industry experience in telecommunications 25 systems.” Ex. 2012 ¶¶ 37. We determine the differences in the declarants’ assertions to be negligible and that both definitions are consistent with the ’118 Patent and the referenced prior art, and we adopt Dr. Forys’ definition of the level of ordinary skill in the art for the purposes of the analysis below.” slip op. at 25

  Patent outcomesUS 8,626,118 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,626,118
• Global Tel*link Corporation v. Securus Technologies, Inc.All claims unpatentable
  PTAB · Dec 7, 2016 · IPR2015-01221 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–19 are unpatentable under § 103 over the stated combinations of Falcone, Jiang, Bangor, and Apple.

  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 12

  • 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

  • PTAB / AIA Trials › Motions to amend / substitute claimsOther

    “Patent Owner also filed a Motion to Amend (Paper 27), to which Petitioner filed an Opposition (Paper 32) and Patent Owner filed a Reply (Paper 34). Subsequently, however, Patent Owner filed a Notice of Withdrawal of Patent Owner’s Motion to Amend (Paper 46), making consideration of those papers pertaining to claim amendments moot.” slip op. at 4

  • 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 of Science] B.S. degree in Electrical Engineering, Computer Science, or an equivalent field as well as at least 3–5 years of academic or industry experience in communications systems, or comparable industry experience.” Ex. 1003 ¶ 34; see Pet. 8 (citing Ex. 1003 ¶ 34). Patent Owner’s declarant, Mr. Bradley O. Walton, contends one of ordinary skill in the art “would have a bachelor’s degree in Electrical Engineering, Computer Science, or an equivalent field and at least three years of academic or industry experience in telecommunications systems.” Ex. 2012 ¶¶ 38. We determine the differences in the declarants’ assertions to be negligible, that both definitions are consistent with the ’068 Patent and the referenced prior art, and we adopt Dr. Forys’ definition of the level of ordinary skill in the art for the purposes of the analysis below.” slip op. at 26

  Patent outcomesUS 8,489,068 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,489,068
• Captioncall, L.L.C. / Sorenson Communications, Inc. v. Ultratec, Inc.All claims unpatentable
  PTAB · Sep 7, 2016 · IPR2015-00637 · APJ William V Saindon · IPR · Final written decision

  Claims 1–30 are unpatentable as obvious; Patent Owner’s contingent motion to amend is denied for lack of written-description support and indefiniteness.

  RulingsFinal written decision

  • ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part

    “admitted that the patented features of voice and revoiced text are responsible for ‘giv[ing] the phone back to folks with hearing loss.’” PO Resp. 48 (emphasis added). Thus, Patent Owner is offering the statement for the truth that voice and re-voiced text gives the phone back to folks with hearing loss. Patent Owner’s argument that Mr. Puzey was discussing the existence of features in his company’s product rather than features in Patent Owner’s product does not change that his statement is offered as proof regarding an alleged long-felt need for the features. Accordingly, his testimony is hearsay. slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “art is telecommunication systems. Thus, a [POSA] is a person familiar with at least that technology by way of background and/or experience.” CaptionCall, LLC v. Ultratec, Inc., Case IPR2013-00549, Paper 71, 13 (Final Written Decision) (PTAB 2015); see also CaptionCall, LLC v. Ultratec, Inc., Case IPR2013-00780, Paper 35, 9 (Final Written Decision) (PTAB 2015) (reaffirming our finding in IPR2013- 00549). Patent Owner states that it “does not agree” with that definition of a person of ordinary skill in the art, and that, “without waiving the foregoing objection and reserving all rights,” states that it will “appl[y]” our prior definition of a person of ordinary skill in the art “for purposes of this Response.” PO Resp. 3. By not setting forth arguments advocating a particular definition of the level of ordinary skill in the art, and by applying our prior definition, Patent Owner has waived arguments for any other definition. Accordingly, we adopt Petitioner’s proposed level of ordinary skill in the art, as expressed by its declarant, Mr. Occhiogrosso. Ex. 1009 ¶¶ 26–27. This person typically has “a bachelor’s degree” slip op. at 35

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

    “understand a “communication link,” as claimed, to refer to the “communication line” described in the specification. In particular, the link is “intended not only to apply to a traditional land-line . . . but also to all equivalents that offer similar functionality.” Id. at 8:60–63. A link could be “a portion of the bandwidth” of a particular connection, such that a single mode of connection (e.g., IP) could carry out two types of communication (voice and text), with each type corresponding to a different “communication link.” See id. at 8:44–47, 8:63–65. For example, as explained in the ’838 patent, “[e]ach of the telephone lines could be . . . a portion of the bandwidth of an ISDN or DSL service.” Id. at 8:53–65. Accordingly, we adopt Petitioner’s construction of “communication link” as “any communication session, protocol, link, connection, or path distinguishable from [another] communication link[].”” slip op. at 22

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “3. Combination of References As we discussed above, Petitioner’s combination takes the two-line” slip op. at 43

  Patent outcomesUS 8,908,838 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR
  Patents in suitUS 8,908,838
• Captioncall, L.L.C. / Sorenson Communications, Inc. v. Ultratec, Inc.All claims unpatentable
  PTAB · Sep 7, 2016 · IPR2015-00636 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1–29 are unpatentable as obvious over the identified reference combinations; the contingent motion to amend substitute claims 30–43 is denied.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed

    “Accordingly, we accord Mr. Zatkovich’s testimony little weight. 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.”); Am. Acad. of Sci. Tech Ctr., 367 F.3d at 1368 (indicating the Board is entitled to weigh declaration testimony).” slip op. at 62

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “E. Level of Ordinary Skill In determining whether an invention would have been obvious at the” slip op. at 23

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

    “1. Terms Construed in Prior Proceedings Petitioner suggests that the terms “assisted user” and “hearing user,”” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “Engelke ’405, and Mukherji would have conveyed to one of ordinary skill in the art the limitations in claims 1–7 and 10–29, our inquiry continues because “[a] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. Rather, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” Id. In other words, “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Id. (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 44

  Patent outcomesUS 8,917,822 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,917,822
• Arris Group, Inc. / Cox Communications, Inc. v. C-Cation Technologies, LLCAll claims unpatentable
  PTAB · Jul 28, 2016 · IPR2015-01796 · APJ Lynne E Pettigrew · IPR · Final written decision

  Claims 1, 3, and 4 are unpatentable under § 103: claims 1 and 4 over the MPT Specifications, and claim 3 over those specifications with Zdunek and Dufresne.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “art “printed publications” under 35 U.S.C. §§ 102(b) and 311(b). Pet. 16– 17; PO Resp. 23–26; Pet. Reply 3–5. The determination whether a document is a “printed publication” involves a case-by-case inquiry into the facts and circumstances surrounding its disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art[,] exercising reasonable diligence, can locate it.” Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014) (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)). “[O]nce accessibility is shown, it is unnecessary to show that anyone actually inspected the reference.” In re Lister, 583 F.3d 1307, 1314 (Fed. Cir. 2009).” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “3. Obviousness of Claim 1 As an initial matter, we adopt Petitioner’s proposed level of ordinary skill in the art as a person with an undergraduate degree in electrical engineering, or an equivalent education experience, and three or more years working in a relevant field employing digital communications technology to deliver telecommunication services, or alternatively a relevant field involving the manufacture of telecommunication products. See Pet. 9 (citing Ex. 1002 ¶ 31). Patent Owner’s proposed level of ordinary skill in the art, see Ex. 2023 ¶ 25, is, according to Patent Owner’s expert, “essentially the same” as Petitioner’s proposal, id. ¶ 27.” slip op. at 18

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
  • Expert testimonyPatent owner expert discountedDecided for petitioner

  Patent outcomesUS 5,563,883 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 5,563,883
• T. Rowe Price Investment Services, Inc. v. Secure Axcess, LLCAll claims unpatentable
  PTAB · Jun 13, 2016 · CBM2015-00027 · APJ Barbara A Benoit · CBM · Final written decision

  Claims 1, 3, 5, 16, and 29–32 are unpatentable as anticipated by Houser; claims 2 and 4 are unpatentable as obvious over Houser and Yoshiura.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “Contrary to Petitioner’s contentions, the proper inquiry is whether one is “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008) (holding “it is an abuse of discretion to permit a witness to testify as an expert on the issue[s] of . . . invalidity unless that witness is qualified as an expert in the pertinent art.”). The Federal Circuit continues by noting that being one of ordinary skill in the art would not “automatically entitle[] a witness to testify as an expert” as to invalidity issues, but the Federal Circuit clarifies that it does not “suggest[] that Rule 702 requires a witness to possess something more than ordinary skill in the art to testify as an expert.” Id. at 1363. Furthermore, 6 Dr. Katz’s declaration states that his curriculum vitae is included as Attachment A (Ex. 2008 ¶ 6), which is not correct. Petitioner also incorrectly states in its Motion that Dr. Katz’s declaration from IPR2014-00475 (Ex. 2007) was “submitted as Exhibit 1037 in this proceeding.” Mot. 4. Accordingly, for clarity and completeness of the record in this proceeding, we have entered Dr. Katz’s Declaration, filed as Exhibit 2007 (including its Attachment A) in IPR2014-00475, as Exhibit 3001 in the instant proceeding. 21 the Federal Circuit has upheld admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admitting that he was not a person of ordinary skill in the art. Mytee Prods., Inc. v. Harris Research, Inc., 439 Fed. App’x 882, 886–87 (Fed. Cir. 2011) (non-precedential) (upholding admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admission that he was not a person of ordinary skill in the art). In holding that, to testify as an expert under FRE 702, one must be qualified as an expert in the pertinent art, the Federal Circuit has not placed temporal restrictions, such as requiring an expert be qualified in the pertinent art at the time of the invention.” slip op. at 21

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

    “patent shall be given its broadest reasonable construction, in light of the specification of the patent in which it appears. 37 C.F.R. § 42.300(b); see Versata Dev. Grp., 793 F.3d at 1328 (affirming use of broadest reasonable construction standard in a covered business method patent review); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir. 2015 (“Congress implicitly approved the broadest reasonable interpretation standard in enacting the AIA,” and “the standard was properly adopted by PTO regulation.”), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 890 (mem.) (2016). Under that standard, claim terms are presumed to be given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). A particular embodiment 27 appearing in the written description should not be read into the claim if the claim language is broader than the embodiment. SuperGuide Corp. v. DirecTV Enters, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004); In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Furthermore, “[t]he PTO should also consult the patent’s prosecution history in proceedings in which the patent has been brought back to the agency for a second review.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). We construe the terms below and discuss terms relative to prior art disclosures in accordance with these principles.” slip op. at 27

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

    “specifically, “a preferences file.”7 Challenged independent claims 1, 29, and 31 each recites “an authenticity stamp is retrieved from the preferences file,” and independent claim 32 similarly recites “retrieving an authenticity stamp from the preferences file.” Additionally, each of the challenged claims requires that the authentication key either be retrieved to locate a preferences file or to be able to locate a preferences file. The dependent claims do not recite additional features or functions for a file. Thus, the plain language of the claims requires a “file” to be able to store something that can be retrieved.” slip op. at 29

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languagePlain and ordinary meaningDecided for petitioner

    “We decline to read limitations into a claim from these preferred embodiments described in the Specification when the claim language is broader than the embodiment. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Van Geuns, 988 F.2d at 1184. Here, the claim language is broader than the preferred embodiments describing the location of the preferences file as obscured or not readily known and, therefore, should not be narrowed by embodiments in the ’191 patent. Furthermore, the ’191 patent does not set forth a special definition for that claim term with reasonable clarity, deliberateness, or precision that would impose a special meaning requiring the location of the preferences file be obscured or hidden. See In re Paulsen, 30 F.3d at 1480. Accordingly, neither the term “to locate a preferences file” in claims 1, 31, and 32, nor the term enabling “location of a preferences file” in claim 29, require the location of the preferences file be obscured or hidden. Nor does “enabl[ing] authentication of the authenticity key . . . to retrieve an” slip op. at 52

  Patent outcomesUS 7,631,191 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,631,191
• Global Tel*link Corporation v. Securus Technologies, Inc.All claims unpatentable
  PTAB · Feb 18, 2016 · IPR2014-01283 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–17 are unpatentable as obvious: claims 1–5 and 14–17 over Crites, Krebs, and Hodge; claims 6–13 over those references and Eisen.

  RulingsFinal written decision

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

    “In the Decision to Institute, we construed “database,” to encompass an electronic source of data or information and does not encompass non-electronic sources of data or information. See Dec. 5–6. During the course of the trial, neither party challenged our construction of this claim term or proffered constructions of other claim terms. PO Resp. 5; Tr. 54–55. We see no reason to alter the construction as set forth in the Decision to Institute, and we incorporate our previous analysis for purposes of this decision. Therefore, for the reasons set forth in the Decision to Institute, we find the broadest reasonable construction of “database” to encompass an electronic source of data or information and does not encompass non-electronic sources of data or information. All other claim terms are given their ordinary and customary meaning.” slip op. at 5

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “in the art relevant to the ’457 Patent “would have a B.S. degree in Electrical Engineering, Computer Science, or an equivalent field as well as at least 3–5 years of academic or industry experience in information systems, or comparable industry experience.” Ex. 1003 ¶ 20. Patent Owner does not offer any contrary explanation regarding who would qualify as a person of ordinary skill in the art relevant to the ’457 Patent (see generally PO Resp.) and Patent Owner’s declarant, Dr. Akl, uses the level of skill in the art that is very similar to that articulated by Dr. Kaza (Ex. 2003 ¶ 33). Based on our review of the ’457 Patent, the types of problems and solutions described in the ’457 Patent and cited prior art, and the testimony of Petitioner’s declarant, we adopt and apply Petitioner’s definition of a person of ordinary skill in the art at the time of the claimed invention. We note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “a person of ordinary skill in the art could have combined the functions of Krebs and Hodge with the system of Crites and/or Krebs by known methods and that the combination would have been predictable to a person of ordinary skill in the art. Pet. 13, 15. Patent Owner argues that the Petition and Dr. Kaza’s testimony are conclusory, are not a substitute for fact-based analysis, and should be given no probative weight. PO Resp. 9–11. Patent Owner continues that the arguments and evidence presented do not “explain the how, what, and why of the proposed combinations.” Id. at 11. Petitioner disputes these contentions pointing out that Dr. Kaza’s testimony includes analysis and that his conclusions are the results of that analysis, citing portions of Dr. Kaza’s testimony. Reply 1–4; see Ex. 1003 ¶¶ 59–60. Based on our review, we credit the testimony of Dr. Kaza and we are persuaded that the Petition provides sufficient rationale to combine the references. We note that the Federal Circuit has viewed an “apparent reason to combine,” in conjunction with the technical ability to optimize, as sufficient to reach a conclusion of obviousness. Ecolab, Inc. v. FMC Corp., 569 F.3d 1335, 1350 (Fed Cir. 2009). We are persuaded that a sufficient rationale offered to support a combination of references is highly dependent on the natures and teachings of those references. For example, if two references disclose nearly identical embodiments with only obvious variations, the rationale to combine that must be offered would be lower as compared to combining two references having few similarities or references which are from widely different fields of endeavor.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “We note that the Federal Circuit has viewed an “apparent reason to combine,” in conjunction with the technical ability to optimize, as sufficient to reach a conclusion of obviousness. Ecolab, Inc. v. FMC Corp., 569 F.3d 1335, 1350 (Fed Cir. 2009). We are persuaded that a sufficient rationale offered to support a combination of references is highly dependent on the natures and teachings of those references. For example, if two references disclose nearly identical embodiments with only obvious variations, the rationale to combine that must be offered would be lower as compared to combining two references having few similarities or references which are from widely different fields of endeavor. In the instant case, we are persuaded that the similarities of the disclosures and aims of the cited references would have made the combinations obvious to one of ordinary skill in the art. With respect to Hodge and Crites, both discuss the use of their systems in penal institutions or correctional facilities. Compare Ex. 1006 ¶ 42, with Ex. 1008, 1:63–67. Given the similarities in purposes of the systems, one of ordinary skill in the art would not need a high degree of motivation to incorporate one aspect of one into the other, absent some teachings away or impossibility of the incorporation. In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). With respect to Hodge and Crites, we agree with Petitioner that it would have been predictable for one of ordinary skill in the art to incorporate elements, such as passive monitoring of Hodge (Pet. 20), into the system of Crites. Similarly, the Petition addresses Krebs as “evidenc[ing] relationships of a person to a threat group” (Pet. 18), which is argued as being analogous to acquiring information related to suspect group members, as discussed in Crites. Id.; compare Ex. 1008, 4:41–44 (discussing a security threat group), with Ex. 1009, 49 (discussing mapping in fraud and criminal conspiracy cases). In view of Petitioner’s suggestions that a person of ordinary skill in the art could have used known methods to combine the disclosed functions and the combination would have provided predictable results, we conclude that the similarities in the cited references render the combination to be obvious.” slip op. at 16

  Patent outcomesUS 7,805,457 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,805,457
• Global Tel*link Corporation v. Securus Technologies, Inc.All claims unpatentable
  PTAB · Jan 21, 2016 · IPR2014-01282 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 1–36 are unpatentable as obvious under § 103 on the listed prior-art combinations; the motion to amend claims 15–20 is denied.

  RulingsFinal written decision

  • Prior constructionPrior construction adoptedDecided for petitioner

    “In the Decision to Institute, we construed “logic of a call processing system,” which is recited in claim 21. See Dec. to Inst. 8–10. During the course of the trial, neither party challenged our construction of this claim term. PO Resp. 5; Tr. 6:9–10. We see no reason to alter the construction as set forth in the Decision to Institute, and we incorporate our previous analysis for purposes of this decision. Therefore, for the reasons set forth in the Decision to Institute, we find the broadest reasonable construction of “logic of a call processing system” encompasses automated processes performed using logic elements and does not encompass processes performed solely by human action. All other claim terms are given their plain and ordinary meaning. B. Principles of Law To prevail in its challenges to the patentability of the claims, a” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “in the art relevant to the ’222 patent “would have a B.S. degree in Electrical Engineering, Computer Science, or an equivalent field as well as at least 3–5 years of academic or industry experience in telecommunications/information systems, or comparable industry experience.” Ex. 1004 ¶ 29. Patent Owner does not offer any contrary explanation regarding who would qualify as a person of ordinary skill in the art relevant to the ’222 patent (see generally PO Resp.) and Patent Owner’s declarant, Dr. Akl, uses the level of skill articulated by Dr. Forys (Ex. 2002 ¶ 33). Based on our review of the ’222 patent, the types of problems and solutions described in the ’222 patent and cited prior art, and the testimony of Petitioner’s declarant, we adopt and apply Petitioner’s definition of a person of ordinary skill in the art at the time of the claimed invention. We note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “2. Analysis Petitioner contends the combined disclosure of Pattison, Anders, and Gainsboro, as summarized above, teaches or suggests each limitation of claims 2, 10, 11, 13, 19, 22–24, 27–30, and 36 of the ’222 patent. Pet. 35–45. Petitioner further contends that “[a] person of ordinary skill in the art would have been motivated to combine Pattison, Anders, and Gainsboro because both are in the same field (telephone communications and recording services) and address the same problem—control and management of those communications.” Pet. 35; see Ex. 1004 ¶ 84. Petitioner supports its position with the declaration of Dr. Forys, who testifies that a person of skill in the art would have combined the functions of Gainsboro with the monitoring and event detection systems of Pattison and Anders using known methods, thereby rendering the challenged claims obvious. Ex. 1004 ¶ 87.” slip op. at 25

  Patent outcomesUS 7,860,222 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,860,222

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.