Callcopy, Inc.v.Verint Americas, Inc.

Patent Trial and Appeal Board

Feb 5, 2013

11540086 (P.T.A.B. Feb. 5, 2013)

Trials@uspto.gov Paper 11
Tel: 571-272-7822 Entered: February 5, 2013
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

CALLCOPY, INC.
Petitioner
v.
Verint Americas, Inc.
Patent Owner

Case IPR2013-00486
Patent 7,613,290 B2

Before JENNIFER S. BISK, MITCHELL G. WEATHERLY, and
PATRICK M. BOUCHER, Administrative Patent Judges.

WEATHERLY, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108
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I. INTRODUCTION
A. Background
CallCopy, Inc. (―CallCopy‖ or ―Petitioner‖) filed a second corrected petition
(Paper 10, ―Pet.‖) to institute an inter partes review of claims 1–49 (the
―challenged claims‖) of U.S. Patent No. 7,613,290 B2, issued Nov. 3, 2009, based
on an application filed Sep. 29, 2006 (Ex. 1101, the ―’290 patent‖). 35 U.S.C.
§ 311. Verint Americas, Inc. (―Verint‖ or ―Patent Owner‖) did not file a
Preliminary Response on or before the deadline of November 8, 2013. The
standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a),
which provides as follows:
(a) THRESHOLD.—The Director may not authorize an inter partes
review to be instituted unless the Director determines that the
information presented in the petition filed under section 311 and any
response filed under section 313 shows that there is a reasonable
likelihood that the petitioner would prevail with respect to at least 1 of
the claims challenged in the petition.
35 U.S.C. § 314(a).
CallCopy challenges claim 49 as unpatentable under 35 U.S.C. § 102(b) and
claims 1–49 as unpatentable under 35 U.S.C. § 103(a). Pet. 5–7. Based on our
review of the record, we conclude that CallCopy is not reasonably likely to prevail
in demonstrating that at least one of the challenged claims is not patentable.
CallCopy identifies the following prior art as relevant to its challenges to the
patentability of claims 1–49:
Reference Date
EP 1 111 892 A2 (Ex. 1103, “EP ’892”) Jun. 27, 2001
WO 03/058914 A1 (Ex. 1104, “WO ’914”) Jul. 17, 2003
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Reference Date
US 2003/0190032 A1 (Ex. 1105, “US ’032”) Oct. 9, 2003
EP 1 389 862 A1 (Ex. 1106, “EP ’862”) Feb. 18, 2004
WO 00/74355 A1 (Ex. 1107, “WO ’355”) Dec. 7, 2000
US 6,760,861 B2 (Ex. 1108, “Fukuhara”) Jul. 6, 2004
Soam Acharya & Brian Smith, Middleman: A Video Caching
Proxy Server, 10
TH
INTERNATIONAL WORKSHOP ON NETWORK
AND OPERATING SYSTEM SUPPORT FOR DIGITAL AUDIO AND
VIDEO, June 26–28, 2000, Chapel Hill, NC (Ex. 1109,
“Acharya”)
Jun. 2000
Jong T. Park, Resilience in GMPLS Path Management: Model
and Mechanism, IEEE COMMUNICATIONS MAGAZINE (July
2004) (Ex. 1110, “Park”)
Jul. 2004
Azer Bestavros, et al., Distributed Packet Rewriting and its
Application to Scalable Server Architectures, COMPUTER
SCIENCE DEPT., BOSTON UNIV. (Ex. 1111, “Bestavros”)
Dec. 1, 1997
N. Gautam, Performance analysis and optimization of web
proxy servers and mirror sites, EUROPEAN JOURNAL OF
OPERATIONAL RESEARCH 142 (Ex. 1112, “Gautam”)
2002
Sophia Scoggins, Ph.D., Security Challenges for CALEA in
Voice over Packet Networks, TEXAS INSTRUMENTS WHITE
PAPER (Ex. 1113, “Scoggins”)
Apr. 2004
F. Baker, et al., Cisco Architecture for Lawful Intercept in IP
Networks, CISCO SYSTEMS NETWORK WORKING GROUP
(Ex. 1114, “Baker”)
Oct. 2004
W. Marshall & F. Andreasen, Private Session Initiation
Protocol (SIP) Proxy-to-Proxy Extensions for Supporting the
PacketCable Distributed Call Signaling Architecture, CISCO
SYSTEMS NETWORK WORKING GROUP (Ex. 1115, “Marshall”)
Oct. 2003
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Reference Date
Jim Quiggins & Nathan Stearns, A New Approach to Contact
Center Optimization, IEX WHITE PAPER (Ex. 1116, “Quiggins”)
2004
US 6,970,829 B1 (Ex. 1117, “Leamon”) Nov. 29, 2005
US 2005/0043986 A1 (Ex. 1118, “McConnell”) Feb. 24, 2005
Wikipedia, Proxy Server,
http://web.archive.org/web/20050810013021/http://en.wikipedi
a.org/wiki/Proxy_server (Ex. 1119, “Wikipedia – Proxy
Server”)
Aug. 9, 2005
CallCopy contends that the challenged claims are unpatentable under 35
U.S.C. §§ 102 and/or 103 based on the following grounds (Pet. 14–48):
References Basis Claims challenged
EP ’892 § 102(b) 49
EP ’892 and WO ’914 § 103
1, 2, 4, 5, 8–14, 24, 25,
27, 28, 31–39, and 49
EP ’892, WO ’914, and Acharya § 103 3, 6, 7, 26, 29, and 30
EP ’892, WO ’914, and Park § 103 15 and 40
EP ’892, WO ’914, Park, and Bestavros § 103 16 and 41
EP ’892, WO ’914, Park, and Gautam § 103 17 and 42
EP ’892, WO ’914, and WO ’355 § 103 18 and 43
EP ’892, WO ’914, and WO ’355 and/or
Scoggins
§ 103 19 and 44
EP ’892, WO ’914, and WO ’355 and/or Baker § 103 20, 21, 45, and 46
EP ’892, WO ’914, and WO ’355, and/or
Baker, and/or Marshall
§ 103 22
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References Basis Claims challenged
EP ’892, WO ’914, Quiggins, and Leamon § 103 23
EP ’892, WO ’914, Quiggins, and McConnell § 103 47 and 48
US ’032 and EP ’862 § 103
1, 2, 4, 8–12, 24, 25,
27, 31–36, and 49
US ’032, EP ’862, and Acharya § 103 3, 6, 7, 26, 29, and 30
US ’032, EP ’862, WO ’355, and/or EP ’892 § 103 5 and 28
US ’032, EP ’862, and Fukuhara § 103 13, 14, 38, and 39
US ’032, EP ’862, and Park § 103 15 and 40
US ’032, EP ’862, Park, and Bestavros § 103 16 and 41
US ’032, EP ’862, Park, and Gautam § 103 17 and 42
US ’032, EP ’862, and WO ’355 § 103 18 and 43
US ’032, EP ’862, and WO ’355 and/or
Scoggins
§ 103 19 and 44
US ’032, EP ’862, and WO ’355 and/or Baker § 103 20, 21, 45, and 46
US ’032, EP ’862, and WO ’355, and/or
Baker, and/or Marshall
§ 103 22 and 37
US ’032, EP ’862, Quiggins, and Leamon § 103 23
US ’032, EP ’862, Quiggins, and McConnell § 103 47 and 48
For the reasons described below, we decline to institute an inter partes
review of claims 1–49 on any of the alleged grounds of unpatentability.
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B. Related Proceedings
CallCopy identified, as a related proceeding, the co-pending case in the
United States District Court for the District of Delaware captioned Verint Sys., Inc.
v. CallCopy Inc., Case Number 1:13-cv-00562-GMS, filed April 8, 2013. Pet. 1.
The ’290 patent is alleged to be infringed in this litigation. See id.
C. The Invention
The ’290 patent, titled ―Recording Using Proxy Servers,‖ generally relates to
―recording media streams associated with interaction between customers and
agents.‖ Ex. 1101, col. 1, ll. 5–7. Figure 1, which is reproduced below, illustrates
an exemplary system for recording media communications using a proxy server.

Figure 1 of the ’290 patent illustrates customer telephony system 105
including agent phones 110, 115, and 120, along with CTI server 125
and call control server 130, which collectively communicate to
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recording system 133 having proxy server 135, recorders 140, 145,
and 150, and recording control server 155.
The ’290 patent describes a customer telephony system 105 coupled to
recording system 133 through one or more proxy servers 135. Ex. 1101, col. 3,
ll. 40–50. The customer telephony system includes agent phones 110, 115, 120
coupled to computer-telephone integration (CTI) server 125. Id. Recording
system 133 includes proxy server 135, recorders 140, 145, 150, and recording
server 155. Id.
Figure 2, which is reproduced below, ―illustrates an exemplary call flow in
recording media streams associated with a call.‖ Id. at col. 6, ll. 22–23.

Figure 2 illustrates the manner in which a call from customer 205 to
agent phone 220 is handled by call control server 230 and proxy
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server 235 to effect recording of the conversation between customer
and agent.
Call control server 230 determines whether an incoming call from a
customer is to be recorded and sends a call request to proxy server 235 and agent
phone 220 to establish dialogs for recording the call via lines 225 and 237 using
recorder 245. Id. at col. 6, ll. 23–38. After proxy server 235 establishes the dialog
between call control server 230 and recorder 245, call control server 230 instructs
agent phone 220 to send duplicate media streams of the call to recorder 245 via
line 247. Id. at col. 6, ll. 35–45.
D. Exemplary Claims
Claims 1, 24, and 49, which are the independent claims in the ’290 patent
and are illustrative of the claimed subject matter, recite:
1. A method for recording a communication session of a
customer center communication system between a customer and an
agent, comprising the steps of:
communicating with a customer center communication system
via a proxy server;
determining whether to record a media stream associated with a
communication session based on the communication between the
customer center communication system and the proxy server;
responsive to determining that the media stream is to be
recorded, transmitting instructions to the customer center
communication system to duplicate the media stream and transmitting
the duplicated media stream to the proxy server, which transmits the
duplicated media stream to a recording system; and
receiving and recording the duplicated media stream associated
with the communication session.
24. A system for recording a communication session of a
customer center communication system between a customer and an
agent, comprising:
a customer center communication system having a
communication device, the communication device being operative to
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transmit a media stream associated with a communication session
between a customer and an agent;
a proxy server being operative to communicate with the
customer center communication system to determine whether to
record the media stream of the communication session; and
a recording system being operative to communicate with the
proxy server and the customer center communication system, wherein
responsive to determining that the media stream is to be recorded, the
proxy server transmits instructions to the customer center
communication system to duplicate the media stream and transmit the
duplicated media stream to the recording system, the recording system
being further operative to record the duplicated media stream.
49. A system for recording a communication session between a
customer and an agent, comprising:
a proxy server being operative to communicate with a customer
center communication system to determine whether to record a media
stream associated with a communication session, the proxy server
being further operative to transmit instructions to the customer center
communication system to duplicate the media stream and transmit the
duplicated media stream over a network; and
a recording system being operative to communicate with the
proxy server and the customer center communication system, the
recording system being operative to receive the duplicated media
stream over the network and record the duplicated media stream.
II. ANALYSIS
Petitioner presents insufficient reasoning to satisfy its burden of
demonstrating a reasonable likelihood of prevailing on any of its contentions that
the claims of the ’290 patent are unpatentable. Petitioner’s asserted grounds can be
grouped into (1) grounds based on EP ’892; (2) grounds based on EP ’892 and WO
’914; and (3) grounds based on US ’032 and EP ’862. Because the grounds
asserted against the dependent claims suffer from the defects of the grounds
asserted against the independent claims, we need to address only the grounds
asserted against independent claims 1, 24, and 49 below.
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With respect to the grounds based on EP ’892 alone and the grounds based
on EP ’892 and WO ’914, CallCopy’s chart for claim 49 simultaneously addresses
grounds that EP ’892 anticipates claim 49 and that claim 49 is obvious over the
combination of EP ’892 and WO ’914. Pet. 31–32. This claim chart conflates
anticipation and obviousness grounds without providing a clear distinction of how
the identified disclosures are applied to the individual grounds. Thus, none of the
grounds is supported by sufficient reasoning of how the identified disclosures
relate to the limitations of claim 49. We are unwilling to parse CallCopy’s
mapping of disclosure in EP ’892 and WO ’914 to elements of claim 49 into
separate anticipation and obviousness grounds because doing so would substitute
our analysis for CallCopy’s. 35 U.S.C. § 312(a)(3); 37 C.F.R. § 42.104(b)(4).
We additionally note that CallCopy’s expert, Dr. Mangione-Smith, never
directly analyzes the anticipation ground and does not offer sufficient reasoning to
support a conclusion of obviousness. Rather, Dr. Mangione-Smith testifies: ―Each
element of claim 49 is present in claim 24. Consequently, the analysis of the
references relative to claim 24 applies for claim 49 and renders claim 49 of the
’290 patent obvious to one of ordinary skill in the art.‖ Ex. 1120 ¶ 234.
Dr. Mangione-Smith offers another referential statement that ―[c]laim 24 is claim 1
recast from method form into apparatus form‖ and that analysis of claim 1
―applies‖ to claim 24. Id. at ¶ 173. Without delineating the differences among
claims 1, 24, and 49, we note that these claims include differences in their
limitations that are addressed insufficiently by either Dr. Mangione-Smith’s direct
testimony or by CallCopy’s claim charts.
In addressing the combination of EP ’892 and WO ’914 as it relates to the
purported obviousness of claim 1, CallCopy states:
It would have been obvious to a person of ordinary skill in the
art that the edge router of EP ’892 could instead forward the data
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through the proxy server. Such approach would have been attractive
in common applications where there is no network connection directly
between the edge router and the recording device, e.g., in the case
where the proxy server serves a gatekeeper role.
Pet. 18 (citing Ex. 1120 ¶ 62). This statement’s circular reasoning lacks sufficient
rational underpinnings to support a legal conclusion of obviousness. See KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Further, because Dr. Mangione-
Smith testifies only about EP ’892 in paragraph 62 of his declaration, that
testimony fails to establish that a skilled artisan would have been motivated to
combine the teachings of EP ’892 and WO ’914.
While analyzing claim 1, Dr. Mangione-Smith also testifies that:
EP ’892 and WO ’914 both relate to recording telephone calls
over a packet network. Thus, it would have been natural for a person
of ordinary skill in the art to consider opportunities to combine the
technologies disclosed in EP ’892 and WO ’914 in order to solve the
problems faced by the inventors of the ’290 Patent.
Ex. 1120 ¶ 57. We also find this testimony to be unpersuasive because it provides
inadequate reasoning for how or why a skilled artisan would combine teachings of
EP ’892 and WO ’914 to practice the inventions set forth in claims 1, 24, and 49.
With respect to the grounds based on US ’032 and EP ’862, CallCopy states:
One of ordinary skill in the art would have understood, in view
of the disclosures in US ’032 and EP ’862, that instructions to
duplicate and transmit media streams would have been an obvious
design choice.
Pet. 35 (citing Ex. 1120 ¶¶ 66–73). We find no persuasive support in the cited
portion of Dr. Mangione-Smith’s testimony for the conclusion of ―obvious design
choice‖ or any other obviousness analysis. Therefore, the testimony fails to
articulate sufficient reasoning with rational underpinnings to support the legal
conclusion of obviousness. See KSR, 550 U.S. at 418.
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III. CONCLUSION
We conclude that Petitioner has not demonstrated a reasonable likelihood
that at least one of the challenged claims is unpatentable based on the asserted
grounds. Therefore, we do not institute an inter partes review on any of the
asserted grounds as to any of the challenged claims.
IV. ORDER
For the reasons given, it is ORDERED that the Petition is DENIED as to
claims 1–49.
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PETITIONER:
Arland T. Stein
Rex W. Miller, II
HAHN, LOESER & PARKS LLP
astein@hahnlaw.com
rmiller@hahnlaw.com

PATENT OWNER:
Lawrence A. Aaronson
Stephen Schaetzel
MEUNIER CARLIN & CURFMAN, LLC
laaronson@mcciplaw.com
sschaetzel@mcciplaw.com