CALLCOPY, INC.v.Verint Americas, Inc.

Patent Trial and Appeal Board

Feb 5, 2014

11509549 (P.T.A.B. Feb. 5, 2014)

Trials@uspto.gov Paper 14
571-272-7822 Date Entered: February 5, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

CALLCOPY, INC.
Petitioner

v.

VERINT AMERICAS, INC.
Patent Owner
____________

Case IPR2013-00492
Patent RE43,324 E
____________

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

BOUCHER, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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Patent RE43,324 E

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On August 2, 2013, CallCopy, Inc. (―Petitioner‖), filed a petition
(Paper 1) to institute an inter partes review of claims 18–39 of U.S. Patent
No. RE43,324 E (―the ’324 patent‖) pursuant to 35 U.S.C. §§ 311–319. A
corrected petition was filed on August 14, 2013, and a second corrected
petition was filed on September 5, 2013 (Paper 13, ―Pet.‖). Verint
Americas, Inc. (―Patent Owner‖) did not file a preliminary response. For the
reasons that follow, the Board has determined not to institute an inter partes
review.
I. BACKGROUND
The standard for instituting an inter partes review is set forth in 35
U.S.C. § 314(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.
Petitioner challenges claims 18–23 and 33–36 as unpatentable under
35 U.S.C. § 102(e) and challenges claims 18–39 as unpatentable under 35
U.S.C. § 103(a). Pet. 5–7.
A. The ’324 patent (Ex. 1001)
The ’324 patent, titled ―VOIP Voice Interaction Monitor,‖ issued on
April 24, 2012, as a broadening reissue of U.S. Patent No. 6,757,361 (―the
’361 patent‖). The ’324 patent discloses signal-monitoring apparatus,
including ―telecommunications monitoring apparatus which may be
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arranged for monitoring a plurality of telephone conversations.‖ Ex. 1101,
col. 1, ll. 34–36. Figure 1 of the ’324 patent is reproduced below:

Figure 1 illustrates a recording and analysis system such as may be used in
association with a call center. Id. at col. 6, ll. 19–20. Multiple telephone
terminals 12 may be used in customer transactions via exchange switch 14.
Id. at col. 6, ll. 20–24. Digital voice recorder 18 monitors conversation
traffic through exchange switch 14 with high-impedance taps 20 and 22, and
is interfaced though network 30 with replay station 32, configuration
management application 34, and speech and/or data analysis engine 36. Id.
at col. 6, ll. 25–52. Speech or other captured data are stored in a formatted
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packet, id. at col. 6, ll. 53–64, which may be analyzed by the speech and/or
data analysis engine 36 to identify such features as the frequency of use of
certain keywords and variations in a party’s speech pattern, id. at col. 9,
ll. 4–31.
B. Exemplary Claim
Claim 18 of the ’324 patent is exemplary of the claims at issue:
18. A method for capturing a telephone interaction,
comprising:
receiving audio data packets at a switch that are
transmitted over a first network, wherein the audio data packets
include packet headers and packet bodies;
identifying data within the audio data packets at a data
analysis engine that is communicatively connected to the switch
by a second network, the identifying being based on at least one
predetermined parameter associated with a payload of the audio
data packets; and
recording for analysis, at a recorder, any of the received
audio data packets that include the at least one predetermined
parameter, wherein the recorder is communicatively connected
to the data analysis engine by the second network.

C. Asserted Grounds of Unpatentability
1. References Relied Upon
Petitioner relies on the following references as evidence of
unpatentability:
Bell (Ex. 1113) US 3,971,034 Sep. 5, 1972
Williamson (Ex. 1112) US 4,093,821 June 14, 1977
Bronson (Ex. 1105) US 5,136,655 Mar. 26, 1990
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Nunokawa (Ex. 1115) US 5,412,642 June 21, 1993
Alger (Ex. 1108) US 5,396,542 Aug. 31, 1993
Russell (Ex. 1116) US 5,526,407 Mar. 17, 1994
McDonough (Ex. 1109) US 5,625,748 Apr. 18, 1994
Henley (Ex. 1106) US 5,526,353 Dec. 20, 1994
Dev (Ex. 1118) US 5,627,819 Jan. 9, 1995
Gainsboro (Ex. 1107) US 5,655,013 Aug. 2, 1995
Chino (Ex. 1111) US 5,761,637 Aug. 2, 1995
Howe (Ex. 1104) US 5,590,171 Aug. 21, 1995
Dezonno (Ex. 1110) US 5,712,954 Aug. 23, 1995
Power (Ex. 1114) US 5,848,388 Dec. 19, 1995
McCreery (Ex. 1117) US 5,787,253 May 28, 1996
Rous (Ex. 1119) EP 0194785 Feb. 28, 1986

2. Asserted Grounds
Petitioner challenges claims 18–39 on the following grounds:
Reference(s) Basis Claims Challenged
Howe § 102(e) 18–23, 33–36, 38,
and 39
Howe and Bronson § 103(a) 18–23, 27, 29, 33–
36, 38, and 39
Howe, Bronson, and Nunokawa § 103(a) 37
Howe, Bronson, and McDonough § 103(a) 24
Howe, Bronson, and Dezonno § 103(a) 25
Howe, Bronson, and Chino § 103(a) 26
Howe, Bronson, and Rous § 103(a) 28
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Reference(s) Basis Claims Challenged
Howe, Bronson, and Williamson § 103(a) 30
Howe, Bronson, and Bell § 103(a) 31
Howe, Bronson, and Power § 103(a) 32
Henley, Gainsboro, and Alger § 103(a) 18–23, 27, 29, and
33–39
1

Henley, Gainsboro, Alger, and
McDonough
§ 103(a) 24
Henley, Gainsboro, Alger, and Dezonno § 103(a) 25
Henley, Gainsboro, Alger, and Chino § 103(a) 26
Henley, Gainsboro, Alger, and Rous § 103(a) 28
Henley, Gainsboro, Alger, and Williamson § 103(a) 30
Henley, Gainsboro, Alger, and Bell § 103(a) 31
Henley, Gainsboro, Alger, and Power § 103(a) 32
Russell, McCreery, and Dev § 103(a) 18–23, 27, 29, and
33–39
Russell, McCreery, Dev, and McDonough § 103(a) 24
Russell, McCreery, Dev, and Dezonno § 103(a) 25
Russell, McCreery, Dev, and Chino § 103(a) 26
Russell, McCreery, Dev, and Rous § 103(a) 28
Russell, McCreery, Dev, and Williamson § 103(a) 30
Russell, McCreery, Dev, and Bell § 103(a) 31
Russell, McCreery, Dev, and Power § 103(a) 32

D. Related Proceedings
The ’324 patent is currently a subject of the litigation, Verint Systems,
Inc. v. CallCopy, Inc., Case No. 1:13-cv-00562-GMS, in the District of
Delaware. Pet. 1.

1
A typographical error appears in ground 4 on page 5 of the petition.
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II. DISCUSSION
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 ’324 patent are unpatentable.
Petitioner’s asserted grounds can be grouped into (1) grounds based
on Howe; (2) grounds based on Henley, Gainsboro, and Alger; and (3)
grounds based on Russell, McCreery, and Dev. 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 18, 33, and 39 below.
With respect to the grounds based on Howe, several of Petitioner’s
claim charts simultaneously address grounds that Howe anticipates a claim,
that the claim is obvious over Howe alone, and that the claim is obvious over
the combination of Howe and Bronson.
2
See Pet. 19–22, 40, 41, 53–55
(claim charts for claims 18, 33, and 39). The claim charts conflate the three
grounds without providing a clear distinction how the identified disclosures
are applied to the individual grounds, and thus none of the grounds are
supported by sufficient reasoning how the identified disclosures relate to the
claim limitations. We are unwilling to engage in supposition of how to
effect such analysis for the individual grounds as a substitute for Petitioner’s

2
Petitioner includes a claim chart that asserts that claim 38 is anticipated by
Howe, and includes claim charts that assert that claims 18, 33, and 38 are
obvious over Howe alone, but does not identify such grounds in its statement
of ―Specific Grounds of [Unpatentability]‖ at pp. 5–7 of the petition.
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analysis. 35 U.S.C. § 312(a)(3); 37 C.F.R. § 42.104(b)(4). We additionally
note that Petitioner’s expert provides no analysis for the anticipation ground
or the grounds that claims are obvious over Howe alone. See Ex. 1120.
In addressing the combination of Howe and Bronson, Petitioner states:
One of ordinary skill in the art would have understood that the
audio processing disclosed in Bronson could have been
implemented on the service node of Howe for word
recognition, indexing of the recorded audio data, and would
have been motivated to combine Bronson with Howe to limit
the amount of information to be recorded and/or reviewed.

Pet. 22 (citing Ex. 1120 ¶ 100). Such a conclusory statement does not
articulate sufficient reasoning with rational underpinnings to support the
legal conclusion of obviousness. See KSR Intern.l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007). Further, because Petitioner’s expert, Dr. Mangione-
Smith, testifies only about Howe in paragraph 100 of his declaration, that
testimony fails to establish that a skilled artisan would have been motivated
to combine the teachings of Howe and Bronson.
With respect to the grounds based on Henley, Gainsboro, and Alger,
Petitioner states:
One of ordinary skill would have been motivated to combine
the packet-based audio communication system (Henley) with
the monitoring and recording of telephone calls based on
identified keywords or other parameters (Gainsboro, Alger) to
provide a more efficient monitoring system.

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Pet. 24. With respect to the grounds based on Russell, McCreery, and Dev,
Petitioner states:
It would have been obvious to one of ordinary skill in the art to
combine the method of analyzing speech information disclosed
by Russell, with the packet monitoring and/or switched network
tapping features of McCreery and Dev to provide call
monitoring and recording for audio data transmitted in a packet-
switched network.

Pet. 26. Such conclusory statements similarly fail to articulate sufficient
reasoning with rational underpinnings to support the legal conclusion of
obviousness. See KSR at 418.
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.

III. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the petition is denied as to all challenged claims of
the ’324 patent.

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PETITIONER:
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Rex W. Miller, II
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rmiller@hahnlaw.com
PATENT OWNER:
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