Global Tel*Link Corporationv.SECURUS TECHNOLOGIES, INC.

Patent Trial and Appeal Board

Sep 11, 2015

13009483 (P.T.A.B. Sep. 11, 2015)

Trials@uspto.gov Paper 28
571-272-7822 Entered: September 11, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

GLOBAL TEL*LINK CORPORATION,
Petitioner,

v.

SECURUS TECHNOLOGIES, INC.,
Patent Owner.
____________

Case IPR2014-00749
Patent 8,577,003 B2
____________

Before KEVIN F. TURNER, BARBARA A. BENOIT, and
GEORGIANNA W. BRADEN, Administrative Patent Judges.

BENOIT, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. INTRODUCTION
We have jurisdiction to hear this inter partes review under 35 U.S.C.
§ 6(c). This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a)
and 37 C.F.R. § 42.73. For the reasons that follow, we determine that
Petitioner has shown by a preponderance of the evidence that claims 1–14 of
U.S. Patent No. 8,577,003 B2 (Ex. 1001; “the ’003 patent”) are
unpatentable.
A. Procedural History
Global Tel*Link Corporation (“Petitioner”) filed a Petition (Paper 1;
“Pet.”) for an inter partes review of claims 1–14 (“the challenged claims”)
of the ’003 patent. Patent Owner, Securus Technologies, Inc., filed a
Preliminary Response opposing institution of a review. On September 17,
2014, pursuant to 35 U.S.C. § 314(a), we instituted an inter partes review
for claims 1–14 of the ’003 patent as unpatentable under 35 U.S.C. § 103(a)
over the following references.
Reference(s) Claims Challenged
Spadaro
1
1–4 and 8–11
Spadaro

and Hodge
2
4–7 and 11–14
Paper 6 (“Inst. Dec.”) 22.
Subsequent to institution, Patent Owner filed a Patent Owner
Response (Paper 12; “PO Resp.”), and Petitioner filed a Reply (Paper 16;

1
U.S. Patent No. 7,505,406 B1, issued Mar. 17, 2009, filed July 13, 2001
(Ex. 1004; “Spadaro”).
2
U.S. Patent No. 7,333,798 B2, issued Feb. 19, 2008, filed Aug. 8, 2002
(Ex. 1005; “Hodge”).
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“Reply”). Patent Owner filed observations on the cross-examination of
Petitioner’s declarant (Paper 20), to which Petitioner filed a response
(Paper 21).
An oral hearing was held on June 4, 2015.
3

B. Related Matters
A Final Written Decision in an inter partes review of a related
patent—U.S. Patent No. 7,899,167 B1 (IPR2014-00493)—is being issued
concurrently with this decision. See Paper 4 (Related Matters). Inter partes
reviews of related patents—U.S. Patent No. 8,340,260 B1 (IPR2014-00824),
and U.S. Patent No. 7,529,357 B1 (IPR2014-00825)—are pending. Id.
C. The ’003 Patent
The ’003 patent, titled “Centralized Call Processing,” issued
November 5, 2013 from an application that is a continuation of an
application filed August 15, 2003. The ’003 patent describes a centralized
architecture for call processing that uses Voice over Internet Protocol
(“VoIP”) to carry calls from a location at which calling services are provided
to a centralized call processing platform. Ex. 1001, Abstract, 1:41–43, 3:18–
20. The call processing platform serves multiple facilities and provides, for
example, calling party identification, call validation, call routing, and
connection to the public switched telephone network (PSTN) or a digital

3
At the joint request of the parties, the oral arguments for this proceeding
and IPR2014-00493 were conducted at the same time. Paper 26, 2. A
transcript of the oral hearing is included in the record as Paper 27.
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network. Id. at Abstract, 8:41–45. The call processing platform may be
used to provide calling services to prison facilities. Id. at 5:57–60.
Figure 1 of the ’003 patent is set forth below:

Figure 1 illustrates call processing system 100.
Call processing system 100 includes call processing platform 101,
which communicates with facilities 150, 160, 170, 180 through network 130.
Id. at 5:45–48. Call processing gateways 140, at or near each facility 150,
160, 170, 180, convert analog signals associated with telephone
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terminals 141 (or visitation telephones 143) to digital data packets sent over
network 130. Id. at 6:14–18.
Call processing platform 101 includes, among other components, call
application management system 110, which controls completing a call
between a party using one of telephone terminals 141 (or visitation
telephones 143) and another party using telephone terminal (not shown),
over PSTN 192 or digital network 191. Id. at 8:12–65. Call processing
system 101 also includes validation system 113 and unauthorized call
activity detection system 114 to provide “call intelligence” to determine
whether a particular call should be permitted. Id. at 9:35–39. Billing
system 112, another system of call processing system 101, collects billing
information and deducts fees from prepaid accounts. Id. at 11:58–12:3.
D. Illustrative Claims of the ’003 Patent
Of the challenged claims in the ’003 patent, claims 1 and 8 are
independent. Claims 1 and 8, reproduced below, are illustrative of the
claimed subject matter:
1. A centralized call processing system, comprising:
a networking device connected to a plurality of call
processing gateways of a plurality of prison facilities located
remotely from the centralized call processing system via a wide
area network (WAN), the networking device configured to:
receive outgoing Voice over Internet Protocol
(VoIP) data packets from prison facilities; and
send incoming VoIP data packets to the prison
facilities;
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an unauthorized call activity detection system connected
to the networking device for detecting three-way call activity
associated with the outgoing VoIP data packets or the incoming
VoIP data packets via a local area network (LAN);
a call application management system connected via the
LAN to the networking device for processing the outgoing
VoIP data packets for transmission to a telephone carrier
network, the call application management system processing
signals from the first
4
telephone carrier network into the
incoming VoIP data packets; and
a validation system connected via the LAN to the call
application management system and configured to allow or
disallow completion or continuing of a particular call of the
plurality of prison facilities through the telephone carrier
network based on the outgoing VoIP data packets or the
incoming VoIP data packets.
Ex. 1001, 18:57–19:15.
8. A method comprising:
receiving outgoing Voice over Internet Protocol (VoIP)
data packets from a plurality of prison facilities by a
networking device via a wide area network (WAN);
sending incoming VoIP data packets to the prison
facilities via the WAN by the networking device;
routing the outgoing VoIP data packets or the incoming
VoIP data packets in a local area network (LAN) in a
centralized call processing system to detect three-way call

4
We note that claim 1 recites “the first telephone carrier network” (emphasis
added), which refers by antecedent basis to the only telephone carrier
network previously recited by claim 1—“a telephone carrier network.” As
the only telephone carrier network previously recited, “a telephone carrier
network” necessarily also is the first telephone carrier network.
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activity associated with the outgoing VoIP data packets or the
incoming VoIP data packets;
routing the outgoing VoIP data packets via the LAN to
process the outgoing VoIP data packets for transmission to a
telephone carrier network;
processing signals from the telephone carrier network
into the incoming VoIP data;
routing the incoming VoIP data packets via the LAN for
transmission to the plurality of prison facilities via the WAN;
and
allowing or disallowing completion or continuation of a
particular call of the plurality of prison facilities through the
telephone carrier network based on the outgoing VoIP data
packets or the incoming VoIP data packets by communicating
data over the LAN.
Id. at 19:38–20:20.
II. ANALYSIS
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are
interpreted according to their broadest reasonable construction in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
2012); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278, 1279
(Fed. Cir. 2015) (“Congress implicitly approved the broadest reasonable
interpretation standard in enacting the AIA,” and “the standard was properly
adopted by PTO regulation.”), reh’g en banc denied, 793 F.3d 1297 (Fed.
Cir. 2015). Under that standard, claim terms are presumed to be given their
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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). An inventor may provide a
meaning for a term that is different from its ordinary meaning by defining
the term in the specification with reasonable clarity, deliberateness, and
precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
We construe “call application management system” and discuss the
dispute over call processing in accordance with these principles. No other
terms require express construction.
Independent claim 1 is directed to a “centralized call processing
system” that includes a networking device, an unauthorized call activity
detection system, a call application management system, and a validation
system. Claim 1 further requires particular system connections. The
networking device, for example, must be connected via a wide area network
(WAN) to call processing gateways of prison facilities. The call application
management system and unauthorized call activity detection system must be
connected to via a local area network (LAN) to the networking device. In
turn, the validation system must be connected via the LAN to the call
application management system.
Claim 1 also recites functions performed by the call application
management system—(1) “processing the outgoing VoIP data packets [from
the prison facilities] for transmission to a telephone carrier network” and
(2) “processing signals from the first telephone carrier network into the
incoming VoIP data packets.”
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A central dispute between the parties concerns the broadest reasonable
construction, in view of the Specification, of the recited “call application
management system.” Patent Owner contends, with support of its declarant
Dr. James L. Olivier and extrinsic evidence, the proper construction of “call
application management system” is “a system performing call processing for
a plurality of prisons.” PO Resp. 16. According to Patent Owner, “call
processing” is a term of art in telephony and is understood as “control a call
from origination, maintenance of that call, and subsequent release of that call
[and] does not include call authorization functionality.”
5
PO Resp. 15.
Patent Owner does not identify an express disclosure of a “call
application management system” performing call processing in the way that
“call processing” is defined by Patent Owner (i.e., controlling a call from
origination, maintenance of that call, and subsequent release of that call, and
not including call authorization). See generally PO Resp. 16. Rather, Patent
Owner relies on the ’003 patent’s description of call application
management system 110 as “form[ing] the heart of call processing
functionality provided by call processing platform 101,” which, according to
Patent Owner’s declarant, would be understood by one of ordinary skill in
the art as meaning “that call connection control and switching control is

5
Patent Owner at one point proposes a different construction of call
processing—“control a call state model for calls and selectively permit calls
to connect to an outgoing phone network.” PO Resp. 12. Later, Patent
Owner seems to abandon this proposed construction in favor of “control a
call from origination, maintenance of that call, and subsequent release of that
call [and] does not include call authorization functionality.” See, e.g., PO
Resp. 15.
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performed at a centralized location.” Id. (citing Ex. 1001, 8:12–16;
Ex. 2001 ¶ 165).
Petitioner opposes Patent Owner’s proposed construction. Reply 3.
According to Petitioner’s declarant Dr. Leonard J. Forys, the location of and
functions performed by the recited call application management system are
defined within the claim, and call application management system should be
given its ordinary and customary meaning as would be understood by one of
ordinary skill in the art in the context of the entire disclosure, using the
understandable language of claim 1. Ex. 1018 ¶¶ 6, 8; see Reply 3
(indicating “no need exists to go beyond the easily understandable language
of Claim 1”). Further, Petitioner disagrees with Patent Owner’s proposed
constructions as impermissibly narrowing claim 1 and being inconsistent
with the Specification. Reply 3–5.
The plain language of the challenged claims support the position taken
by Petitioner, as explained by its declarant (Ex. 1018 ¶¶ 6, 8), that an express
construction of call application management system is unnecessary. Claim 1
recites the connections required for the call application management
system—the call application management system must be connected via the
LAN to the networking device and a validation system must be connected
via the LAN to the call application management system. Claim 1 further
requires the networking device (to which the call application management
system must be connected via a LAN) to be connected via a WAN to call
processing gateways at the prison facilities, which are located remotely from
the call processing system which includes the networking device and the call
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application management system, among other components. The plain
language of claim 1 recites certain functions performed by the call
application management system—processing VoIP data packets and signals
from a telephone carrier network in particular ways.
In contrast, the plain language of claim 1 does not recite the functions
of call processing that Patent Owner contends are required to be performed
by the call application management system—controlling a call from
origination, maintenance of that call, and subsequent release of that call, and
not including call authorization. Further, we note that claim 1 recites a “call
application management system”—not a call processing management
system.
Turning to Patent Owner’s proposed construction of call processing,
we note that, although the challenged claims recite a “centralized call
processing system” and “call processing gateways,” none of the challenged
claims recite performing “call processing.” Moreover, Patent Owner’s
proposed definition of call processing as “control a call from origination,
maintenance of that call, and subsequent release of that call [and] does not
include call authorization functionality” (PO Resp. 15) is inconsistent with
the Specification and is not supported by the prosecution history of the
application that issued as U.S. Patent No. 7,899,167 (“the ’167 patent”),
which is the parent of the application that issued as the ’003 patent.
Ex. 1001, 1:4–9 (“This application is a continuation of” the application that
issued as the ’167 patent.).
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The Specification is inconsistent with Patent Owner’s proposed
definition of call processing, because Patent Owner’s proposed definition
excludes call authorization functionality, which is expressly described by the
’003 patent as an example of call processing functionality. See Ex. 1001,
3:23–25 (“call processing functionality, such as . . . call validation”), 9:10–
15 (claim 1 indicates call validation involves call authorization—“a
validation system connected via the LAN to the call application management
system and configured to allow or disallow completion or continuing of a
particular call”).
The Specification descriptions of call processing functionality also
indicate “call processing” is broader than defined by the Patent Owner. For
example, the Specification includes additionally providing call intelligence
as a type of call processing functionality, which is not included in Patent
Owner’s proposed definition. Ex. 1001, 9:33–46. The Specification also
indicates that other elements recited in claim 1—a validation system and an
unauthorized activity detection system—work with a call application
management system to provide call processing. Id. at 7:49–63.
The Specification indicates an earlier patent application,
6
which the
’003 patent incorporates by reference, as providing “[d]etail with respect to

6
U.S. Patent Application No. 10/135,878, titled “Information Management
and Movement System and Method.” Ex. 1001, 8:31–35; see also id. at
1:9–12, 36–37 (indicating the patent application number corresponding to
the patent application titled “Information Management and Movement
System and Method” and incorporation of that disclosure by reference).

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operation in providing call processing by a call application manager.”
7

Ex. 1001, 8:31–35. The earlier patent application is inconsistent with Patent
Owner’s proposed definition of “call processing.” Rather, the earlier
application describes
8
call application manager 221 as providing distance
telephony, prepaid and postpaid toll calling services, telephonic commerce,
account balance verification and refill, and credit worthiness determination.
Ex. 3001, 47 (¶ 27), 52 (¶ 38). The earlier application also depicts call
application manager 110 as having modules for detainee calling, word
search, and visitation and administration phones. Id. at 52 (¶ 38). The
earlier application further discloses that “calls placed through
communication/transaction services 221” can be analyzed. Id. at 56 (¶ 47).
Neither Patent Owner nor its declarant Dr. Olivier directly addresses the
disclosure of the earlier application.
The prosecution history of the application that issued as the ’167
patent, which is the parent of the continuation application that issued as the
’003 patent, also is inconsistent with Patent Owner’s proposed definition of
“call processing.” During examination of the application that issued as the

7
The ’003 patent uses the term “call application management system 110”
interchangeably with “call application manager 110.” Compare Ex. 1001
8:35–40 (“call application management system 110”) with id. at 8:45–46
(“call application manager 110”).
8
To be precise, the earlier application describes call application manager
221 as operating substantially as communication/transaction services 221,
which, in turn, is described as “provide distance telephony, prepaid and
postpaid toll calling services, telephonic commerce, account balance
verification and refill, and credit worthiness determination.” Ex. 3001
47 (¶ 27), 52 (¶ 38).
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’167 patent, the applicant represented that “call processing” included
detection of unauthorized calls. Ex. 3003, 8 (Applicant response to
November 7, 2008 action, p. 8) (“The feature of ‘a networking device
connected via digital data links to call processing gateways at the multiple
prison facilities” is advantageous because various call processing activities
including detection of unauthorized call[s] may be performed at the call
processing platform”). See Microsoft v. Proxyconn, 789 F.3d 1292, 1298
(Fed. Cir. 2015) (“The 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.”). Applicant’s representation is relevant to the
’003 patent because substantially the same claim limitation is used in both
patents—a networking device connected via digital data links (in the ’167
patent) or via a wide area network (in the ’003 patent) to call processing
gateways at prison facilities. See Advanced Cardiovascular Sys., Inc. v.
Medtronic, Inc., 265 F.3d 1294, 1305 (Fed. Cir. 2001) (“The prosecution
history of a related patent can be relevant if, for example, it addresses a
limitation in common with the patent in suit.”); Elkay Mfg. Co. v. Ebco Mfg.
Co., 192 F.3d 973, 980 (Fed. Cir. 1999) (“When multiple patents derive
from the same initial application, the prosecution history regarding a claim
limitation in any patent that has issued applies with equal force to
subsequently issued patents that contain the same claim limitation.”).
Applicant’s representation that call processing activities include
detection of unauthorized calls does not support Patent Owner’s position that
“call processing” would have been understood by one of ordinary skill in the
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art as “control a call from origination, maintenance of that call, and
subsequent release of that call [and] does not include call authorization
functionality” (PO Resp. 15).
Next, we examine extrinsic evidence and testimony proffered by
Patent Owner of how one ordinarily skilled in the art would have understood
“call processing.” Specifically, Patent Owner indicates one would have
turned to U.S. Patent No. 6,052,454 (Ex. 2004, “Kek”) to understand the
meaning of “call processing” as used in the ’003 patent and, based on the
disclosure of Kek, would have understood “call processing” as defined by
Patent Owner. See, e.g., PO Resp. 13–15. Kek is referenced in the
“Background of the Invention” section of the ’003 patent discussing
automated systems for providing call processing functions and is
incorporated by reference. Ex. 1001, 1:63–66. According to the ’003
patent, Kek (titled “Telephone Apparatus With Recording of Phone
Conversations on Massive Storage”) teaches call authorization functionality
being remote to a prison facility and teaches call processing being provided
at the prison facility itself. Ex. 1001, 1:63–2:3, 2:10–14. Patent Owner’s
extrinsic evidence provides little probative value, however, because it does
not comport with the detailed description of the invention in the ’003
patent—either the ’003 patent description of call processing functionality or
the earlier patent application’s description of a call application manager for
the reasons discussed earlier.
Weighing Dr. Oliver’s testimony supporting Patent Owner’s
contentions that call application management system performs call
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processing—meaning controlling a call from origination, maintenance of
that call, and subsequent release of that call, but which does not include call
authorization functionality (PO Resp. 15 (citing Ex. 2001 ¶ 162)) against
evidence of the written description of the term in the Specification and
language of claim 1, we do not agree that call application management
system necessarily must control a call from origination, maintenance of that
call, and subsequent release of that call. It is within our discretion to assign
the appropriate weight to the testimony offered by Dr. Oliver. See, e.g.,
Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board
has discretion to give more weight to one item of evidence over another
“unless no reasonable trier of fact could have done so”); In re Am. Acad. of
Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is
entitled to weigh the declarations and conclude that the lack of factual
corroboration warrants discounting the opinions expressed in the
declarations.”).
First, as discussed above, the Specification and earlier application
provide examples of call processing functionality that contradict Dr. Oliver’s
position and which are not addressed directly by Dr. Olivier. Second, the
inconsistency of Dr. Olivier’s own testimony regarding the definition of call
processing undercuts his position. In his declaration, Dr. Olivier identified
additional functions as part of call processing—including call authorization
which Dr. Olivier testifies is not included in call processing. See Ex. 2001
¶¶ 67 (showing Dr. Olivier’s annotation of Figure 2 of the ’003 patent to
identify call processing), 69, 70, 73. Third, we are unpersuaded by
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Dr. Olivier’s reliance on a vague statement of the Specification that the call
application management system “forms the heart of call processing
functionality provided by call processing platform 101” (PO Resp. 16 (citing
Ex. 2001 ¶ 165)). Dr. Olivier testifies that the context of “forms the heart”
would be understood by one of ordinary skill in the art as meaning “that call
connection control and switching control is performed at a centralized
location,” because the Specification describes the call application
management system as controlling completing a call between parties
(Ex. 2001 ¶ 165).
We are mindful that, according to the Specification, the call
application management system “control[s] completing a call between” two
parties. Ex. 1001, 8:16–22 (emphasis added). Even so, “controlling
completing a call” on its face seems more limited than Patent Owner’s
position that call application management system is a system performing call
processing—“control a call from origination, maintenance of that call, and
subsequent release of that call.” We also are mindful that Petitioner’s
declarant, Dr. Forys, does not agree with Dr. Olivier’s position regarding
call processing. Ex. 1018 ¶¶ 7–12.
Therefore, in light of the plain language of the claim, the Specification
of the’003 patent, and according Patent Owner’s evidence and the testimony
of Patent Owner’s declarant appropriate weight, we construe “call
application management system” to mean a system that is located as
required by claim 1—“connected via the LAN to the networking device” and
to which a validation system is connected via the LAN—and performs at
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least the functions recited by claim 1—processing the outgoing VoIP data
packets for transmission to a telephone carrier network and processing
signals from the telephone carrier network into the incoming VoIP data
packets. A “call application management system” is not required to perform
call processing as defined by the Patent Owner—“control a call from
origination, maintenance of that call, and subsequent release of that call
[and] does not include call authorization functionality” (PO Resp. 15).
B. Principles of Law
To prevail in challenging claims 1–14 of the ’003 patent, Petitioner
must demonstrate by a preponderance of the evidence that the claims are
unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is
unpatentable under 35 U.S.C. § 103(a) if the differences between the
claimed subject matter and the prior art are such that the subject matter, as a
whole, would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including the following: (1) the scope and content of the prior art; (2) any
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) objective evidence of nonobviousness.
Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
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C. Level of Ordinary Skill in the Art
In determining whether an invention would have been obvious at the
time it was made, 35 U.S.C. § 103 requires us to determine the level of
ordinary skill in the pertinent art at the time of the invention. Graham v.
John Deere, 383 U.S. at 17. “The importance of resolving the level of
ordinary skill in the art lies in the necessity of maintaining objectivity in the
obviousness inquiry.” Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718
(Fed. Cir. 1991). The person of ordinary skill in the art is a hypothetical
person who is presumed to have known the relevant art at the time of the
invention. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Factors
that may be considered in determining the level of ordinary skill in the art
include, but are not limited to, the types of problems encountered in the art,
the sophistication of the technology, and educational level of active workers
in the field. Id. In a given case, one or more factors may predominate. Id.
Generally, it is easier to establish obviousness under a higher level of
ordinary skill in the art. Innovention Toys, LLC v. MGA Entm’t, Inc.,
637 F.3d 1314, 1323 (Fed. Cir. 2011) (“A less sophisticated level of skill
generally favors a determination of nonobviousness . . . while a higher level
of skill favors the reverse.”).
With support of their respective declarants, both Petitioner and Patent
Owner agree that, based on the disclosure of the ’003 patent, 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 three to five
years of academic or industry experience. Pet. 6 (citing Ex, 1003 ¶ 30); PO
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Resp. 7 (citing Ex. 2001 ¶ 156). Petitioner indicates communications system
(or comparable industry experience) is the relevant academic or industry
experience (Pet. 6), whereas Patent Owner indicates telephony systems (PO
Resp. 7).
The parties propose similar levels of ordinary skill in the art and do
not directly challenge the other’s proposal. We consider the level of
ordinary skill in the art to be reflected by the prior art of record. See
Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The prior art
references, like the ’003 patent, relate to telephone communication systems.
See Ex. 1001, 1:41–42 (indicating the technical field relates to call
processing); Ex. 1004, 1:7–9 (indicating the field of the invention relates to
the processing of voice telephone calls); Ex. 1005, 1:7–9 (indicating the field
of the invention relates to telephone communication systems).
In general, we adopt the areas of agreement in the parties’ proposals.
Patent Owner’s proposed academic or industry experience of telephony
9

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 are of academic or industry
experience than telephony systems. Thus, we generally adopt Patent
Owner’s proposed academic or industry experience in telephony systems.

9
MCGRAW-HILL DICTIONARY OF SCIENTIFIC AND TECHNICAL TERMS 2112
(6th ed. 2003) (defining telephony as “[t]he transmission of speech to a
distant point by means of electric signals”) (Ex. 3002).
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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.
D. Obviousness over Spadaro
Petitioner contends claims 1–4 and 8–11 are unpatentable under
35 U.S.C. § 103(a) as obvious over Spadaro. To support its contentions,
Petitioner provides analysis and claim charts, relying on declaration
testimony of Dr. Forys. Pet. 7–25 (citing Ex. 1003). Patent Owner
responds, relying on declaration testimony of Dr. Oliver. PO Resp. 32–60
(citing Ex. 2001). Having considered the parties’ contentions and
supporting evidence, we determine that Petitioner has demonstrated by a
preponderance of evidence that claims 1–3 and 8–11 are unpatentable for
obviousness over Spadaro. We determine that Petitioner has not
demonstrated by a preponderance of evidence that claim 4 is unpatentable
for obviousness over Spadaro.
As an initial matter, Petitioner represents that Spadaro is prior art
under 35 U.S.C. § 102(e) to the challenged claims. Pet. 3–4. Spadaro is a
patent, which issued from an application filed on July 13, 2001—a date prior
to the earliest effective filing date claimed by the ’003 patent—August 15,
2003. Patent Owner does not dispute that Spadaro is prior art to the
challenged claims.
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1. Summary of Spadaro
Spadaro that describes monitoring and controlling public telephone
usage by inmates at a prison. Ex. 1004, 2:38–42. Telephones are connected
to a control computer that establishes a connection to a telephone network,
such as a public switched telephone network (“PSTN”). Id. at 2:48–57; see
id. at Fig. 1. The control computer is located at the prison and provides for
switching, accessing, routing, timing, billing, and the control of the
telephones at the prison. Id. at 2:45–49. As a way to control telephone
usage, the control computer includes a three-way call detection system. Id.
at 3:35–42; see Fig. 1.
Spadaro describes a multiple site telephone system in Figure 3, which
is set forth below:
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Figure 3 illustrates a multiple site telephone system.
See Ex. 1004, 2:25–26. Figure 3 shows four sites 36, 38, 40, 42, each of
which has multiple control computers 32 connected through hubs 44 to
router 46. Id. at 3:53–55. Each of the sites may be a prison in a state-wide
prison system. Id. at 3:61–62. Calls from each of the four sites are routed
from each site’s router 46 to server 48, which connects the calls to central
office 34. Id. at 3:55–57. Spadaro describes obtaining lower cost and
efficiency by operating the system shown in Figure 3 over Ethernet and
Voice over Internet Protocol (“VoIP”) networks. Id. at 3:58–62.
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Spadaro also describes telephone systems in which control functions,
including the billing function, are distributed to a remote location over an
Ethernet network (id. at 4:4–10; Fig. 4) and over a network that includes
both VoIP and data (id. at 2:30–31; Fig. 5). Spadaro’s Figure 5 is set forth
below:

Figure 5 illustrates a telephone system
that distributes control functions to a
remote location over a VoIP and data network.
Ex. 1004, 2:27–30, 4:4–9, 4:25–27. Figure 5 shows control functions—
routing 22, billing 24, and PIN checking 28—distributed to a location
remote from the inmate telephones 10. Id. at 4:6–10, 4:25. Spadaro
explains that an advantage of distributing these functions to a remote
location is that “the functions can be centralized with the functions being
performed at a central administration location.” Id. at 4:10–13.
Also shown in Figure 5 is “three-way call detection 30a [that] is
moved from the site, i.e. in the control computer 12 as indicated at 30, to a
point beyond the VoIP network.” Id. at 4:27–30. Spadaro explains that
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VoIP transmission requires voice compression and packetizing, which are
detrimental to the ability to perform three-way call detection. Id. at 4:30–32.
“Therefore, three way call detection is performed at 30a after the telephony
signals have been decompressed and depacketized by the VoIP
gateway 26a.” Id. at 4:32–35.
2. Independent Claim 1
We focus our discussion on independent claim 1, the center of the
parties’ dispute. Petitioner and Patent Owner dispute the scope and content
of Spadaro and, thus, dispute the differences between the claimed invention
and the prior art.
Independent claim 1 is a claim directed to a “centralized call
processing system” that requires a networking device, an unauthorized call
activity detection system, a call application management system, and a
validation system to perform certain recited functions and to be connected
via a LAN. Claim 1 further requires “call processing gateways” be located
at prison facilities, which are located remotely from the centralized call
processing system. The call processing gateways are connected via a WAN
to the networking device.
Petitioner’s Contentions Regarding Claim 1
Petitioner, with support from its declarant, generally contends that
combining Spadaro’s “centralized call-processing used to serve multiple
prison facilities” (as shown in Figure 3) with Spadaro’s “VoIP technology
together with a centralized call processing system” (as shown in Figure 5)
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would have rendered obvious the subject matter of claim 1. Pet. 10; see also
id. at 7–13 (overview of Spadaro), 14–20 (discussing Spadaro with respect
to claim 1).
According to Petitioner, Spadaro’s three-way call detect system 30a
discloses or suggests the recited “unauthorized call activity detection system
. . . for detecting three-way call activity associated with the outgoing VoIP
data packets [from prison facilities] or the incoming VoIP data packets” sent
to the prison facilities. Pet. 16–17. Spadaro’s VoIP Gateway 26a discloses
or suggests the recited “call application management system” for processing
outgoing VoIP data packets from prison facilities for transmission to a
telephone carrier network. Id. at 17–18. As shown in Figure 5 and noted by
Petitioner, Spadaro’s VoIP Gateway 26a transmits outgoing calls from the
telephone terminals in the prison facility to a telephone carrier network
(Spadaro’s public switch 16). Id. at 17–19 (citing Ex. 1004, 4:49-53).
Petitioner relies on Spadaro’s PIN checking 28 as disclosing or suggesting
the recited “validation system.” Pet. 19–20.
For the recited “call processing gateways,” Petitioner relies on control
computers (also called “Commander™ units” after a particular model) are
located at each of the sites 36, 38, 40, 42, which may be prison facilities. Id.
at 14–15; see Ex. 1004, 3:53–62, 2:41–42. Petitioner notes Spadaro
discloses that each of the control computers have a VoIP gateway and
Ethernet capability. Pet. 14–15 (citing Ex. 1004, 3:67–4:3); see Ex. 1004,
4:4–13; see Ex. 1003 ¶¶ 65–66. Petitioner further relies on Spadaro’s
disclosures that remote functions being distributed over a WAN and that the
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IP network may be a WAN. Pet. 15 (citing Ex. 1004, 4:9–10, 3:1–6); see
Ex. 1003 ¶ 66.
According to Petitioner, Spadaro’s server 48 discloses or suggests the
recited “networking device.” Pet. 14–15. For the recited “LAN,” Petitioner
relies on its declarant’s explanation that one skilled in the art would
recognize that associated systems implementing functions at a central
administration location would be connected via a LAN. See Id. at 17 (citing
Ex. 1003, ¶ 71 (concerning the recited “unauthorized call activity detection
system”)), 18 (citing Ex. 1003, ¶ 72 (concerning the recited “call application
management system”)), 19 (citing Ex. 1003, ¶ 77 (concerning the recited
“validation system”)).
For the reasons explained in more detail below, we determine that
Spadaro’s “centralized call-processing used to serve multiple prison
facilities” (as shown in Figure 3) with Spadaro’s “VoIP technology together
with a centralized call processing system” (as shown in Figure 5), combined
as Petitioner proposes, would have conveyed the subject matter of claim 1 as
a whole to one of ordinary skill in the art. This is a pertinent question under
35 U.S.C. § 103(a)—whether the claimed subject matter as a whole would
have been obvious to one of ordinary skill in the art in view of Spadaro, not
merely whether Spadaro discloses the subject matter of each element of
claim 1 individually. See In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir.
2012) (“[T]he test for obviousness is what the combined teachings of the
references would have suggested to those having ordinary skill in the art.”
(citing In re Keller, 642 F.2d 413, 425 (CCPA 1981))).
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Patent Owner’s Contentions Regarding Claim 1
Patent Owner contends that Spadaro does not teach centralization of
call processing as defined by Patent Owner and so does not teach many of
the limitations of claim 1, such as the recited “call application management
system” as construed by Patent Owner. Patent Owner also contends that
Spadaro does not teach the recited “networking device,” “three-way call
detection system,” and “validation system.” We address these and other
contentions by Patent Owner below.
Centralization of Call Processing
Central to many of Patent Owner’s contentions is that Spadaro does
not teach centralization of call processing, but rather teaches distributed call
processing located at the prison facilities. See, e.g., PO Resp. 17–19; see
also id. at 17 (Spadaro “does not teach centralization of call processing”),
18 (“Spadaro teaches a distributed network architecture, in which call
control is performed at each location by a control computer”), 19 (Spadaro’s
Figure 6 “illustrates the call processing, switching, and control” at the prison
facilities), 24 (the claims of the Spadaro patent “all place call processing
functionality at the prisons”), 50 (“Spadaro explicitly shows that call
processing must remain at the prison facility”).
For the reasons set forth previously, we disagree that the challenged
claims require call processing as defined by Patent Owner to be performed
by a centrally located system and, therefore, are not persuaded by Patent
Owner’s contentions that rely on Patent Owner’s definition of call
processing.
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Patent Owner’s Reliance on Extrinsic Evidence
To support various contentions, Patent Owner cites documentation for
an example software architecture (“BubbleLINK
®
”) and documentation for
an example of specific equipment (“Integrator C-2000
®
series,” including
the “Commander II Inmate Control” phone system), both of which are
mentioned in the ’003 patent, as evidence of how one of ordinary skill in the
art would have understood Spadaro. See, e.g., PO Resp. 23 (citing Ex. 1004,
4:15–21) (identifying example software architecture and example
equipment), 23, 26–28 (citing Science Dynamics Corporation, BubbleLink
Software Architecture (2003) (Ex. 2003)), 25 (citing Science Dynamics
Corporation, “Inmate Telephone Control Systems” (2001) (Ex. 2005)).
To be clear, none of these documents is asserted in any ground
challenging the claims of the ’003 patent. Nor does Spadaro incorporate by
reference any of these documents. Because Spadaro indicates these merely
are examples, we accord some but relatively little weight to these
documents. Ex. 1004, 4:15–16 (“such as BubbleLINK
®
”), 4:18–19 (“[s]uch
equipment includes the Integrator C-2000
®
series”). Another reason for
according relatively little weight to these documents is that Spadaro
expressly indicates the described technology is not limited to
implementations covered by these documents. Id. at 4:66–52 (”While a
particular embodiment of the invention has been shown and described[,]
various modifications may be made. The appended claims are, therefore,
intended to cover all such modifications within the true spirit and scope of
the invention.”).
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“Call Application Management System”
Turning to the elements recited in claim 1, we determine that
Petitioner has demonstrated by a preponderance of evidence that Spadaro
would have conveyed to one of ordinary skill in the art the recited “call
application management system.” Claim 1 recites
a call application management system connected via the LAN to the
networking device for processing the outgoing VoIP data packets for
transmission to a telephone carrier network, the call application
management system processing signals from the first telephone carrier
network into the incoming VoIP data packets.
Ex. 1001, 19:4–9. Regarding the recited “call application management
system,” Petitioner relies on VoIP gateway 26a, shown in Figure 5, as being
separated from inmate telephones 10 by WAN 18. See Pet. 17–19 (citing
Ex. 1004, 4:49–53); see also id. at 11 (showing Petitioner’s Figure A, which
incorporates portions of Spadaro’s Figure 5).
We agree with Petitioner (id. at 17–18) that Spadaro’s VoIP
Gateway 26a would have conveyed to one of ordinary skill in the art the
recited “call application management system” for processing the outgoing
VoIP data packets for transmission to a telephone carrier network. As
shown in Figure 5, Spadaro’s VoIP Gateway 26a transmits outgoing calls
from the telephone terminals in the prison facility to a telephone carrier
network (Spadaro’s public switch 16). Ex. 1004, 4:49–53. As
acknowledged by Patent Owner (PO Resp. 36), Spadaro’s VoIP Gateway
26a performs “decompression and depacketization” of telephone signals and
distributes the signals to a public switch. Ex. 1004, 4:51–53. As explained
by Petitioner’s declarant Dr. Forys, switches and routers are designed to
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transmit and receive call signals and, therefore, a person of ordinary skill in
the art would have understood that the disclosure of distributing outbound
calls or data to a telephone network presumes an analogous ability to handle
incoming calls or data from the telephone network carrier. Pet. 18–19
(citing Ex. 1003 ¶ 74).
We are not persuaded by Patent Owner’s contentions that rely on its
overly narrow construction of “call application management system” and
which, in turn, rely on Patent Owner’s definition of call processing, which
does not comport with the ’003 patent for the reasons discussed previously
in Section II.A. For this reason, for example, we are not persuaded by
Patent Owner’s contention that calls are routed to one of several possible
VoIP egress points and, therefore, Spadaro does not teach a centralized call
platform. PO Resp. 29–31 (depicting and discussing Dr. Olivier’s figure
showing multiple egress points).
“Networking Device”
We determine that Petitioner has demonstrated by a preponderance of
evidence that Spadaro would have conveyed to one of ordinary skill in the
art the recited “networking device.” Claim 1 recites
[a] centralized call processing system . . . comprising:
a networking device connected to a plurality of call processing
gateways of a plurality of prison facilities located remotely
from the centralized call processing system via a wide area
network (WAN), the networking device configured to:
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receive outgoing Voice over Internet Protocol (VoIP)
data packets from prison facilities; and
send incoming VoIP data packets to the prison facilities.
Ex. 1001, 18:57–19:3. The networking device recited by claim 1 is included
as an element in the centralized call processing system, which is located
remotely from the prison facilities. The networking device also must be
connected by a WAN to call processing gateways, which are located at the
prison facilities. Further, the recited networking device is configured to
perform two functions—“receive outgoing Voice over Internet Protocol
(VoIP) data packets from prison facilities; and send incoming VoIP data
packets to the prison facilities” (emphasis added). These broad functions of
receiving and sending VoIP data packets are the only enumerated functions
that claim 1 requires the networking device to perform. For example, it is
the recited call application management system—not the networking
device—that processes outgoing VoIP data packets for transmission by a
telephone carrier network and processes signals from the telephone carrier
network into VoIP data packets.
Turning to the parties’ contentions regarding the recited “networking
device,” Petitioner contends Spadaro’s server 48 depicted in Figure 3 would
have conveyed to one of ordinary skill the subject matter of the networking
device recited in claim 1. Pet. 14–16. Patent Owner disagrees.
PO Resp. 38–41.
As shown previously in Figure 3, Spadaro “depicts four sites 36, 38,
40, and 42 each of which has a plurality of Commander™ units connected
through hubs 44 to a router 46. The router 46 routes calls to a server 48
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which connects the calls to a central office 34” of a Publicly Switched
Telephone Network (PSTN). Ex. 1004, 3:51–57 (emphasis added). Thus,
Spadaro’s server 48 performs two functions. First, Spadaro’s server 48
expressly connects calls from routers 46 located at each site to central office
34—the PSTN. Second, because Spadaro’s router 46 routes calls to
server 48, Spadaro’s server 48 implicitly must receive the calls from router
46 to be able to connect the calls to the PSTN. Accordingly, Spadaro’s
server 48 receives calls made from the sites 36, 38, 40, and 42 and connects
those calls to the PSTN.
Spadaro also discloses that “[i]n accordance with the present
invention, lower cost and efficiency are obtained by operating systems such
as shown in Figs. 2 and 3 over Ethernet and Voice over Internet Protocol
networks.” Ex. 1004, 3:58–61. Thus, Spadaro expressly indicates that the
multiple site telephone system depicted in Figure 3 can be operated using
VoIP and further indicates advantages (“lower cost and efficiency”) obtained
by doing so.
Therefore, we determine that Spadaro’s server 48 would have
conveyed to one skilled in the art that it receives VoIP data packets from
multiple sites located remotely from the server 48. Accordingly, we agree
with Petitioner’s contention, which is supported by Dr. Forys’ testimony,
that “VoIP packets are collected by the server 48 and directed to their
destinations.” Pet. 15 (citing Ex. 1003 ¶ 65 (relying on Ex. 1004, 3:55–57 to
support Spadaro’s disclosure that “call signals between the sites and the
central office 34 are collected and distributed by server 48”)). We also agree
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with Petitioner that, because Spadaro discloses advantages of operating
systems shown in Figure 3 over Ethernet and VoIP, the centralized server 48
“receive[s] outgoing Voice over Internet Protocol (VoIP) data packets from
prison facilities; and send[s] incoming VoIP data packets to the prison
facilities,” as recited in claim 1. See Pet. 15 (citing Ex. 1004, 3:58–61).
We also note that the determination that Spadaro’s server 48 performs
the functions recited by the networking device is in accordance with the
prosecution history of the application that issued as the ’003 patent.
See Microsoft, 789 F.3d at 1298 (“The 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.”). In rejecting application claim 1
10

as obvious over Spadaro,
11
the examiner relied on Spadaro’s server 48 as
disclosing or suggesting the recited networking device. Ex. 1002, 68 (Office

10
Application claim 1, similarly to patent claim 1, recited “a networking
device connected to a plurality of call processing gateways of a plurality of
prison facilities located remotely from the centralized call processing system
via a wide area network (WAN), the networking device configured to:
receive outgoing Voice over Internet Protocol (VoIP) data packets from
prison facilities; and send incoming VoIP data packets to the prison
facilities.” Ex. 1002, 39 (Amendment in response to Office action of June 4,
2013).
11
Although Spadaro was before the Office during prosecution, Petitioner’s
arguments concerning Spadaro are not the same arguments applied by the
examiner. For instance, the examiner relied on the Commando™ units in
Figure 3 as disclosing or suggesting the recited call application management
system, whereas Petitioner relies on VoIP Gateway 26 for disclosing or
suggesting the call application management system. Compare Pet. 17–18
with Ex. 1002, 68 (citing Spadaro 3:50–57 (describing the Commander units
at each site) for the recited “call application management system.”
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action dated June 4, 2013 citing Spadaro, 3:50–57 for the recited networking
device).
In response, rather than contesting the examiner’s findings, the
applicant amended application claim 1 to recite a validation system with
certain enumerated characteristics and argued that Spadaro does not
“disclose the feature of “centralized call processing system comprising . . . a
validation system . . .” as recited in amended claim 1. Ex. 1002, 47; see
Ex. 1002, 39 (amending application claim 1), 41 (amending application
claim 9. The application subsequently was allowed. See Ex. 1002, 13
(Notice of Allowance issued September 18, 2013). Although the
prosecution history does not indicate that Patent Owner acquiesces to the
view of the examiner concerning the recited networking device, the
prosecution history does show the examiner held the same view, as
discussed herein, that Spadaro discloses the recited networking device, in
view of the disclosure of the ’003 patent.
Neither Patent Owner nor its declarant Dr. Oliver acknowledges
Spadaro’s server 48 performs the function of receiving VoIP data packets
from the multiple sites. Patent Owner has not provided sufficient argument
or evidence that using Spadaro’s server 48 to receive and distribute VoIP
data packets in the Petitioner’s proposed combination would have been
beyond the level of ordinary skill or would not yield predictable results. We
also note the rather high level of ordinary skill in the art, which requires a
Bachelor of Science in electrical engineering or computer science as well as
at least three years of experience in telephony systems.
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Turning to Patent Owner’s contentions that Spadaro does not teach the
recited networking device, Patent Owner first contends that Petitioner’s
proposed location of Spadaro’s server 48 is incongruent with its actual
function, because server 48 only connects analog calls to the central office.
PO Resp. 38–40. Patent Owner’s contention does not acknowledge, much
less address sufficiently, Spadaro’s express disclosure that the multiple site
telephone system depicted in Figure 3, which includes server 48, can be
operated using VoIP and indicates advantages obtained by doing so
(Ex. 1004, 3:58–61).
Patent Owner also contends, with support from its declarant
Dr. Oliver, that Spadaro’s analog server 48 is not needed in a VoIP
implementation of Spadaro’s invention. PO Resp. 40. To support its
contention, Patent Owner relies on its conclusion that Spadaro’s server 48 is
an analog server having its “only function . . . to connect calls received from
the sites to the analog central office 34.” Id. Spadaro’s server 48, however,
is not limited to analog calls, which undermines Patent Owner’s argument.
Patent Owner does not address directly Spadaro’s express disclosure that the
multiple site telephone system depicted in Figure 3, which includes server
48, can be operated using VoIP and Spadaro’s indication of the advantages
(“lower cost and efficiency”) of using VoIP (Ex. 1004, 3:58–61). Nor does
Patent Owner address sufficiently Petitioner’s proposed combination that
does not rely on server 48 for distributing signals to the public switch, but
rather relies on server 48 for its other function—receiving calls from the
prison sites. See Pet. 15 (concluding that the centralized server 48 receives
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outgoing VoIP data packets); Ex. 1004, 3:55–57 (“The router 46 routes calls
to a server 48 which connects the calls to central office 34”).
We do not agree with Patent Owner that Spadaro’s server 48 would
not be used in a VoIP context because server 48 would be redundant in a
VoIP context. First, as noted above, Spadaro expressly states Figure 3 can
be used in a VoIP context. Spadaro’s server 48 might be duplicative if
Petitioner’s proposed combination relied on server 48 to connect the calls to
the PSTN, but that is not the case. Petitioner’s combination relies on
server 48 to collect and distribute VoIP data packets, not for distributing
telephone signals to a public switch.
Moreover, in Petitioner’s proposed combination, Spadaro’s server 48
performs the recited functions of the networking device—to collect VoIP
data packets associated with calls from prison facilities and to distribute
VoIP data packets associated with calls to the prison facilities. Patent
Owner does not address sufficiently that function of Spadaro’s server 48.
Thus, we agree with the location indicated by Dr. Forys, Petitioner’s
declarant, of Spadaro’s server 48 in Petitioner’s proposed combination.
Pet. 14–16; Ex 1003 ¶ 65.
Third, Patent Owner contends that Spadaro’s server 48 does not
perform “intelligent packet routing” to provide different routing of data and
voice packets, as Patent Owner contends would be required in the
Petitioner’s proposed combination. PO Resp. 38. Patent Owner has not
persuaded us that such intelligent packet routing would not be an inherent
part of any VoIP system, which is disclosed in Spadaro, as discussed above.
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Additionally, Patent Owner appears to be arguing that Spadaro’s server 48
cannot be bodily incorporated into system depicted in Spadaro’s Figure 5,
which is not required to show obviousness. See In re Keller, 642 F.2d
at 425) (“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference.”). Patent Owner’s contentions do not take into account
adequately what the collective teachings of Spadaro would have conveyed to
one of ordinary skill in the art. Id. (“[T]he test [for obviousness] is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.”). In addition, we agree with Petitioner, with
support from its declarant, that “[b]ecause server 48 serves multiple sites [as
shown in Figure 3], server 48 must be able to determine which site among
the multiple sites to route (distribute) the incoming VoIP data packets
associated with the calls.” Reply 7 (citing Ex. 1018 ¶ 33).
“Unauthorized Call Activity Detection System
We determine that Petitioner has demonstrated by a preponderance of
evidence that Spadaro would have conveyed to one of ordinary skill in the
art the recited “unauthorized call activity detection system.” Claim 1 recites
an unauthorized call activity detection system connected to the
networking device for detecting three-way call activity
associated with the outgoing VoIP data packets or the incoming
VoIP data packets via a local area network (LAN).
Ex. 1001, 18:66–19:3.
According to Petitioner, Spadaro’s three-way call detect system 30a
discloses or suggests the recited “unauthorized call activity detection
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system . . .for detecting three-way call activity associated with” VoIP data
packets.” Pet. 16–17. Petitioner indicates Spadaro’s three-way call detect
system 30a is “moved from the site . . . to a point beyond the VoIP network”
and “is located remotely [from the] prison telephone system.” Id. at 17
(citing Ex. 1004, 4:27–30).
Patent Owner acknowledges that Spadaro performs three-way call
detection between the call processing gateway 26a and the PSTN (PO
Resp. 42) and asserts, with support from its declarant, that Spadaro and
Salibrici performs three-way call detection on an analog line (id. at 41
(citing Ex. 2001 ¶¶ 50–54)). According to Patent Owner, this is insufficient
because claim 1 “requires that the three-way call activity is detected based
on” the VoIP data packets. PO Resp. 41. According to Patent Owner’s
arguments, Patent Owner seems to assert that the prohibited activity must be
detected by processing VoIP data packets and cannot be detected by
processing analog packets that are associated with the VoIP data packets of
calls. PO Resp. 41–42 (contending that Spadaro “cannot adequately detect
three-way calls on VoIP packets” and Spadaro does not have a “viable three-
way call detection system for VoIP”).
We disagree with Patent Owner’s understanding of the scope of
claim 1. Rather, the plain language of claim 1 requires “an unauthorized call
activity detection system . . . for detecting three-way call activity associated
with” VoIP data packets. Ex. 1001, 18:66–19:2 (emphasis added).
Further, the ’003 patent does not support Patent Owner’s contention
that three-way call detection must be made by processing VoIP data packets.
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The ’003 patent indicates the unauthorized call activity detection system 114
may use silence detection techniques and refers to two patent applications as
disclosing further detail, which are incorporated by reference. Ex. 1001,
9:43–50 (identifying two patent applications, one of which issued as U.S.
Patent No. 7,079,636), 1:22–24, 35–37 (indicating the two patent
applications are incorporated by reference); see also Ex. 2015 (U.S. Patent
No. 7,079,636, which issued from application 10/252,956 titled “Three-way
Telephone Call Prevention System and Method”). Both Patent Owner and
Petitioner’s declarants agree that these references disclose performing three-
way call detection in the analog domain using silence detection. Ex. 1019,
167:8–168:23; Ex.1018 ¶¶ 45–47. Thus, we are not persuaded that an
“unauthorized call activity detection system . . . for detecting three-way call
activity associated with” VoIP data packets precludes determining three-way
call activity using analog signals that represent the same call as the VoIP
data packets.
Accordingly, we agree with Petitioner and its declarant that “the
analog signals resulting from decompression and depacketization of the
VoIP data packets are ‘associated’ with the VoIP data packets [because] the
analog signals and VoIP data packets represent the same call.” Reply 10
(citing Pet. 16–17).
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“Validation System”
We determine that Petitioner has demonstrated by a preponderance of
evidence that Spadaro would have conveyed to one of ordinary skill in the
art the recited “validation system.” Claim 1 recites
[a] centralized call processing system . . . comprising:
a validation system connected via the LAN to the call
application management system and configured to allow or
disallow completion or continuing of a particular call of the
plurality of prison facilities through the telephone carrier
network based on the outgoing VoIP data packets or the
incoming VoIP data packets.
Ex. 1001, 19:10–15.
Spadaro describes checking a personal identification number (“PIN”)
entered by a caller before authorizing a call. Ex. 1004, 3:30–34 (“[A] prison
environment . . . has rules and regulations regarding what each inmate is
allowed for telephone usage. The telephone user first dials a calling card
number and a PIN code which is checked at [function] 28.”); see also id. at
6:27–30 (claim 16 reciting “authorizing the call responsive to receiving a
person identification number (PIN) associated with an account stored in the
centralized system.”). Petitioner relies on Spadaro’s PIN checking
function 28 as disclosing or suggesting the recited “validation system.”
Pet. 19–20 (citing Ex. 1004, 3:30–34, 6:27–30 (claim 16)). Spadaro
discloses the PIN checking function can be distributed to a centralized
location by a network, which could be either a LAN or a WAN.
Ex. 1004, 4:4–13. Spadaro indicates that the distribution of the PIN
checking function to remote locations has the advantage that the function
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can be centralized with functions being performed at a centralized
administration location. Id.; Pet. 19. Petitioner’s declarant relies on this
disclosure for support that Spadaro would have conveyed to one of ordinary
skill in the art that these functions would be connected via a LAN. Pet 19
(citing Ex. 1003 ¶ 77).
Patent Owner contends that Spadaro does not disclose the requisite
“validation system connected via the LAN to the call application
management system.” PO Resp. 43–46. According to Patent Owner,
Spadaro’s Figure 4 shows a WAN, not a LAN connection; the BubbleLINK
software architecture document undermines the testimony of Petitioner’s
declarant Dr. Forys; and the recited call application management system
would be located necessarily in Spadaro’s system next to the PSTN. PO
Resp. 44–46. Therefore, Patent Owner concludes, Spadaro’s PIN checking
function (corresponding to the recited “validation system”) would not be
connected to VoIP gateway 26a (corresponding to the recited “call
application management system”) via a LAN and, thus, would not teach the
recited “validation system.” PO Resp. 43–44.
Patent Owner, however, does not address what Spadaro’s disclosures
of centralization, LANs, and WANs would have conveyed to one of ordinary
skill in the art, which is the test for obviousness. Thus, Patent Owner’s
contentions do not take into account adequately what the collective
teachings of Spadaro would have conveyed to one of ordinary skill in the art.
See In re Mouttet, 686 F.3d at 1332 (“[T]he test for obviousness is what the
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combined teachings of the references would have suggested to those having
ordinary skill in the art.” (citing In re Keller, 642 F.2d at 425)).
Patent Owner also contends that Spadaro does not teach that the
validation system determines completion or continuing a call “based on the
outgoing VoIP data packets or the incoming VoIP data packets,” as recited
in claim 1. PO Resp. 46–48. According to Patent Owner, this is because
Spadaro’s PIN check function is performed prior to completing a call and,
thus, Spadaro does not teach continuing a call. Id. at 47. Patent Owner’s
contention is not persuasive because the plain language of claim 1, which
recites “allow or disallow completion or continuing of a particular call”
(emphasis added). The conjunction “or” indicates the only one of
“completion” or “continuing” is required. As Patent Owner acknowledges,
Spadaro’s PIN check is performed prior to completing a call (PO Resp. 47)
and, therefore, Spadaro’s PIN checking function discloses the validation
system determining completion of a call.
Patent Owner also contends that Spadaro’s PIN check is not
performed on VoIP packets. PO Resp. 47. According to Patent Owner, such
processing is inconsistent with Commander documentation (id.), which we
do not find persuasive for the reasons regarding extrinsic evidence discussed
earlier. Moreover, we credit Dr. Forys’ testimony that Spadaro’s disclosure
of a PIN entered by a caller at a prison and PIN checking function being
performed at a centralized location would have conveyed to one of ordinary
skill in the art that “the dialed PIN would be transmitted to the centralized
location in one or more outgoing VoIP data packets from a prison facility.”
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Ex. 1003 ¶ 76; see also Pet. 19 (citing Ex. 1003 ¶ 76). We are not persuaded
that the plain language of claim 1 requires the PIN checking to be performed
on VoIP data packets that are processed into outgoing analog call signals.
Rather, the plain language of claim 1, which broadly recites “based on,”
encompasses the activity to which Dr. Forys testified: transmitting the
dialed PIN to a centralized location in one or more outgoing VoIP data
packets from a prison facility.
Reason to Combine
Despite having determined that Petitioner’s position that Spadaro
would have conveyed to one of ordinary skill in the art all of the limitations
in claim 1 is supported by a preponderance of the evidence, our inquiry
nonetheless continues because “rejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
“Care must be taken to avoid hindsight reconstruction by using ‘the patent in
suit as a guide through the maze of prior art references, combining the right
references in the right way so as to achieve the result of the claims in suit.’”
Grain Processing Corp. v. Am.-Maize Prods. Co., 840 F.2d 902, 907 (Fed.
Cir. 1988) (quoting Orthopedic Equip. Co. v. United States, 702 F.2d 1005,
1012 (Fed. Cir. 1983)).
As discussed previously, Petitioner asserts the subject matter of
claim 1 would have been obvious in view of various disclosures of
Spadaro—Spadaro’s “centralized call-processing used to serve multiple
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prison facilities” (as shown in Figure 3); Spadaro’s “VoIP technology
together with a centralized call processing system” (as shown in Figure 5);
and Spadaro’s disclosure of the benefits of using VoIP for the system
depicted in Figure 3, among others.
Patent Owner contends that Petitioner improperly “blend[s] different
embodiments of Spadaro” and amounts to improper hindsight
reconstruction. PO Resp. 18. Patent Owner further contends that an
ordinarily skilled artisan would not have modified Spadaro in the manner
that Petitioner contends to centralize control functions, but rather an
ordinarily skilled artisan would have modified Spadaro to distribute control
functions. Id. at 48–49.
We are not persuaded by Patent Owner. Spadaro itself indicates the
reason one of ordinary skill in the art would combine the “centralized call-
processing used to serve multiple prison facilities” (as shown in Figure 3)
with “VoIP technology together with a centralized call processing system”
(as shown in Figure 5)—“because of the lower cost and efficiency” obtained
by operating systems such as shown in Figure 3 over a Voice over Internet
Protocol network (Ex. 1004, 3:58–65). Although the rote application of the
teaching-suggestion-motivation test (or TSM test), requiring an express
teaching in the prior art, is inappropriate, “[t]here is no necessary
inconsistency between the idea underlying the TSM test and the Graham
analysis.” KSR, 550 U.S. at 419.
Moreover, as noted by the Court in KSR, “[t]he combination of
familiar elements according to known methods is likely to be obvious when
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it does no more than yield predictable results.” KSR, 550 U.S. at 416.
Spadaro’s server 48 performs a known function—receiving call signals and,
in a VoIP context noted by Spadaro, collecting VoIP data packets from
multiple sites. Here, in the combination proposed by Petitioner, Spadaro’s
server 48 performs one of the functions for which server 48 is used in
Spadaro—receiving calls from multiple sites. We also note that electrical
arts, such as claimed here, involve predictable factors. See In re Fisher, 427
F.2d 833, 839 (CCPA 1970) (indicating patents in the mechanical or
electrical arts involve predictable factors). Thus, using server 48 in the
proposed combination, used in the same manner as used in Spadaro, yields
predictable results. Cf. Ex. 1003 ¶ 61 (Petitioner’s declarant Dr. Forys
testifying, in the proposed combination, server 48 connects the centralized
location to the inmate facilities). As another factor favoring a finding of
obviousness, we again note the rather high level of ordinary skill in the art,
which requires a Bachelor of Science in electrical engineering or computer
science as well as at least three years of experience in telephony systems.
Innovention Toys, 637 F.3d at 1314 (“A less sophisticated level of skill
generally favors a determination of nonobviousness . . . while a higher level
of skill favors the reverse.”).
Patent Owner also contends that Spadaro teaches away from
centralizing call processing and transmitting calls to a single egress point.
PO Resp. 48–49. To the contrary, according to Patent Owner, Spadaro
teaches the advantages of a local access circuit at the prison. Id. at 49.
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We do not agree that Spadaro teaches away from using server 48 to
route VoIP calls. Id. at 44 (generally stating that Spadaro teaches away).
Rather than criticizing, discrediting, or discouraging the use of VoIP,
Spadaro describes the advantages of using the system depicted in Figure 3,
including server 48, with VoIP. See In re Fulton, 391 F.3d 1195, 1201 (Fed.
Cir. 2004) (To teach away, prior art must “criticize, discredit, or otherwise
discourage the solution claimed.”). Moreover, Patent Owner contends that
Spadaro teaches away “from centralizing call processing” as Patent Owner
defines call processing, with which we do not agree for the reasons
discussed previously.
Therefore, we determine that Petitioner has established by a
preponderance of evidence that the subject matter recited in claim 1 as a
whole would have been obvious to one of ordinary skill in the art in view of
Spadaro. See 35 U.S.C. § 103(a).
3. Independent Claim 8
As recognized by both parties, independent claim 8 is a method claim
that recites many similar limitations as recited by independent claim 1.
Pet. 22; PO Resp. 57. For instance, the method of claim 8 recites “receiving
outgoing Voice over Internet Protocol (VoIP) data packets from a plurality
of prison facilities by a networking device via a wide area network (WAN)”
and “sending incoming VoIP data packets to the prison facilities via the
WAN by the networking device.” These steps are substantially similar to
the functions recited as being performed by the networking device required
by claim 1. In another example, method claim 8 also recites “processing
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signals from the telephone carrier network into the incoming VoIP data
packets,” which is substantially similar to a function performed by the call
application management system recited in claim 1. Method claim 8 also
recites “allowing or disallowing completion or continuation of a particular
call of the plurality of prison facilities through the telephone carrier network
based on the outgoing VoIP data packets or the incoming VoIP data packets
by communicating data over the LAN.” Claim 1 requires the recited
validation system be configured to perform a substantially similar function.
Method claim 8 recites three “routing” steps that require routing VoIP
data packets in a LAN in a centralized call processing system. Similarly to
the function performed an unauthorized call activity detection system recited
in claim 1, claim 8 recites “routing the outgoing . . . or the incoming VoIP
data packets in a local area network (LAN) in a centralized call processing
system to detect three-way call activity associated with the outgoing VoIP
data packets or the incoming VoIP data packets.” Similarly to the function
performed by the call application management system recited in claim 1,
claim 8 recites “routing the outgoing VoIP data packets via the LAN to
process the outgoing VoIP data packets for transmission to a telephone
carrier network.” Unlike claim 1, independent claim 8 does not recite
“processing signals from the first telephone carrier network into the
incoming VoIP data packets.” Claim 8, however, recites “routing the
incoming VoIP data packets via the LAN for transmission to the plurality of
prison facilities via the WAN.”
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In contending the subject matter of claim 8 would have been obvious
to one of ordinary skill in the art, Petitioner relies on substantially the same
arguments and disclosures in Spadaro as Petitioner did for claim 1. Pet. 22–
24.
Patent Owner maintains that Spadaro does not teach call processing,
according to Patent Owner’s proposed construction, at the central location
performing the functions recited in claim 8. PO Resp. 56–57. For the
reasons indicated previously and with respect to claim 1, we do not agree
with Patent Owner that call processing as defined by Patent Owner is
required to be performed at the central location.
Patent Owner points out that claim 8 expressly requires routing VoIP
data packets in a LAN in a centralized call processing system to detect three-
way call activity, to process outgoing VoIP data packets for transmission to
a telephone carrier network, and for transmission to the prison facilities via
the WAN. PO Resp. 57 (noting claim 8 requires “various features of the
method are performed . . . via routing VoIP data packets on the LAN”).
Patent Owner also points out that claim 8 expressly requires allowing or
disallowing particular calls “by communicating data over the LAN.” Id.
(noting claim requires “various features of the method are performed on a
LAN”).
Patent Owner, however, does not provide sufficient argument or
evidence as to why such express statements would render the steps recited in
claim 8 nonobvious in view of the previous discussion as to the reasons that
the subject matter recited in claim 1 as a whole would have been obvious to
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one of ordinary skill in the art in view of Spadaro. Indeed, many of Patent
Owner’s contentions are more appropriate to a ground of anticipation, which
requires a prior art reference to disclose, expressly or inherently, every
limitation of the claim as arranged in the claim. See Net MoneyIN, Inc. v.
VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008).
More specifically, Patent Owner contends that “[r]elative to claim 1,
claim 8 further emphasizes that the three-way call detect is performed within
a centralized location where the VoIP data packets are collected by expressly
routing the data packets for the three-way call detection.” PO Resp. 57.
Based on its argument, Patent Owner seems to further contend that claim 8
requires performing the three-way call detect “on VoIP packets,” instead of
using analog signals associated with VoIP data packets as Spadaro discloses.
Id.
Patent Owner, however, does not provide sufficient argument or
evidence as to the routing limitation related to detecting three-way call
activity requires performing three-way call detect on VoIP data packets, in
view of the plain language of claim 8 that recites “to detect three-way call
activity associated with” VoIP data packets. For the reasons discussed with
respect to claim 1, we are not persuaded that “associated with VoIP data
packets” requires performing three-way call activity on VoIP data packets.
Because we do not agree that claim 8 requires performing three-way call
activity on VoIP data packets, we also do not agree that Spadaro teaches
away from what is claimed because Spadaro describes disadvantages of
performing three-way call detection on VoIP data packets. PO Resp. 57.
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Nor are we persuaded that claim 8 requires collecting VoIP data
packets by expressly routing the data packets for three-way call detection
(see PO Resp. 57). The plain language of claim 8 does not recite
“collecting.” Moreover, as discussed with a similar limitation recited by
claim 1 and as seen in Spadaro’s Figure 5, VoIP packets are received by
WAN 18 and routed to the three way call detect 30a function, which “is
moved . . . to a point beyond the VoIP network.” Ex. 1004, 4:27–30; see
Pet. 17 (discussing three-way call detection with respect to claim 1).
Petitioner notes that Spadaro discloses the VoIP packets “can be applied
through the WAN 18, or a LAN, to the VoIP Gateway 26a.” Pet. 18 (citing
Ex. 1004, 4:49–53 with respect to claim 1), 22–24 (contentions regarding
claim 8 referring back to contentions regarding claim 1). As noted by
Petitioner with respect to claim 8, Spadaro also discloses that the IP network
18 may be a WAN or a LAN. Pet. 22 (citing Ex. 1004, 3:1–6).
Therefore, we determine that Petitioner has established by a
preponderance of evidence that the subject matter recited in independent
claim 8 as a whole would have been obvious to one of ordinary skill in the
art in view of Spadaro. See 35 U.S.C. § 103(a).
4. Dependent Claims 2 and 9
Claim 2, which depends from independent claim 1, additionally
recites “a billing system connected to the LAN and configured to manage
billing associated with the calls made through the system.” Similarly,
claim 9, which depends from independent claim 8, additionally recites
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“managing billing associated with the calls made through the networking
device by communicating data over the LAN.”
For these additional features, Petitioner relies on Spadaro’s disclosure
of telecommunications billing as including “various computing and
switching means which record the call numbers and timing and further
arrange the accounting and billing for the public telephones and calls.”
Pet. 20 (citing Ex. 1004, 1:24–30); see Pet. 24–25 (regarding claim 9).
Petitioner further relies on Spadaro’s billing function 24, which is another of
Spadaro’s control functions that Spadaro discloses can be centralized.
Pet. 20 (citing Ex. 1004, 3:28–30, 4:10–13, Figs. 4, 5); see Pet. 24–25
(regarding claim 9). Petitioner further points to Spadaro’s claim 10, which
recites a call processing system “providing billing with respect to [an]
authorized call.” Id. at 20.
Based on the disclosures of Spadaro, Petitioner’s declarant testifies
that one of ordinary skill in the art would understand Spadaro’s billing
function 24 “manage[s] billing associated with calls made through the
system.” Id. (citing Ex. 1003 ¶ 81). Also, according to Petitioner’s
declarant, because Spadaro discloses the centralization of various functions,
one of ordinary skill in the art would understand the billing function, three-
way call detection, PIN checking, the VoIP gateway would be connected by
a LAN. Id. (citing Ex. 1003 ¶ 80).
Patent Owner relies on the same arguments in its contentions
regarding claims 2 and 9. See PO Resp. 58. Patent Owner challenges,
without relying on testimony by its declarant, Petitioner’s contentions that
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the three-way call detection would be connected to a WAN and, therefore,
Spadaro’s billing function 24 would not be connected to the LAN or co-
located with other functions performed by the claimed centralized call
processing system, as required by claims 2 and 9. See PO Resp. 51–52, 58.
We are not persuaded by Patent Owner’s challenge based on the
extrinsic evidence of documents describing the BubbleLINK software
architecture or assertions that Spadaro’s three-way call detection is
distributed geographically to multiple egress points for the reasons discussed
previously.
Nor are we persuaded that Spadaro’s Figures 4 and 5 showing the
billing function 24 separated from the three-way call detection function by a
WAN precludes the billing function 24, PIN checking function 28, and three
way call detection being centralized and connected via a LAN. First, we
credit Petitioner’s declarant’s testimony (Pet. 20 (citing (citing Ex. 1003
¶ 81)), which is not countered by Patent Owner’s declarant, that Spadaro
would have conveyed to one of ordinary skill in the art the billing function,
three-way call detection, PIN checking, the VoIP gateway would be
connected by a LAN. Further, Spadaro supports the testimony of Patent
Owner’s declarant—Spadaro teaches that control functions, including the
billing function 24, PIN checking function 28, and three way call detection
can be centralized and connected by a LAN. See Ex. 1004, 4:4–13 (noting
“the programming of control functions may be distributed to remote
locations over the Ethernet network,” which may be a LAN or a WAN;
identifying PIN checking 28 and the billing function 24 as functions that
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may be centralized at a remote location and the advantage of doing so),
4:22–24 (identifying three way call fraud detection as a control function).
Spadaro also supports the testimony of Petitioner’s declarant, at least
somewhat, by disclosing that various networks of Spadaro may be a LAN or
a WAN. See Ex. 1004, 4:8–10 (“As shown in FIG. 4, the network 50 is a
local area network (LAN). However these functions may also be distributed
over a WAN.”), 4:49–51 (“The packets are processed in the Ethernet
network interface 60 so that they can be applied through the WAN 18, or a
LAN, to the VoIP Gateway 26a.”).
Second, Spadaro’s express disclosure undermines Patent Owner’s
reliance on WAN 18 in Figures 4 and 5. As noted above, Spadaro discloses
that WAN 18 that transports packets to the VoIP gateway 26a may be a
LAN. Ex. 1004, 4:49–51 (discussing WAN 18 in the context of FIG. 6B);
compare Fig. 6B (showing WAN 18 connected to three way call detect 30a
with voice over IP gateway 26a) with Figs. 4 and 5 (showing same).
For the foregoing reasons, we determine that Petitioner has
demonstrated by a preponderance of evidence that Spadaro would have
conveyed to one of ordinary skill in the art the additional limitations recited
in claims 2 and 9.
5. Dependent Claims 3 and 10
Claim 3, which depends from independent claim 1, additionally
recites “a call recording system connected to the LAN and configured to
record at least part of the calls made through the system.” Similarly, claim
10, which depends from independent claim 8, additionally recites “recording
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at least part of the calls made through the networking device by
communicating data over the LAN.”
For these additional features, Petitioner relies on Spadaro’s disclosure
of “real time call recording” as a control function. Pet. 21 (citing Ex. 1004,
4:21–24), 25; see also Ex. 1004, 6:7–8 (claim 9 reciting the “call processing
system recording the authorized call”). As noted previously, Spadaro also
discloses control functions can be centralized with the other control
functions. Ex. 1004, 4:4–13. Based on Spadaro’s disclosure that real time
call recording can be centralized with the other functions, including three
way call detection, PIN checking, and the VoIP gateway, Petitioner’s
declarant testifies that Spadaro would have conveyed to one of ordinary skill
in the art that “the associated systems implementing these functions would
be connected via a LAN.” Ex. 1003 ¶ 83; see Pet. 21 (citing Ex. 1003 ¶ 83).
PO relies on the same arguments in its contentions regarding claims 3
and 10. See PO Resp. 58. Patent Owner contends that Spadaro’s claim 9
discloses real time recording at the control computers located at the prisons
and, as such, would not disclose the centralized call application management
system or unauthorized call detection systems as required by claim 3. PO
Resp. 52–53. First, Patent Owner’s contentions are more appropriate to a
ground of anticipation, which requires a prior art reference to disclose,
expressly or inherently, every limitation of the claim as arranged in the
claim. See Net MoneyIN, 545 F.3d at 1369. Patent Owner’s arguments are
not appropriate for a challenge of obviousness, which requires an analysis of
whether the differences between the claimed subject matter and the prior art
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are such that the subject matter, as a whole, would have been obvious at the
time the invention was made to a person having ordinary skill in the art to
which said subject matter pertains, 35 U.S.C. § 103(a). Second, Patent
Owner does not address persuasively Petitioner’s contention based on
Spadaro’s disclosure of real time call recording as a control function that can
be centralized.
Further, we are persuaded by the testimony of Petitioner’s declarant,
which is based on Spadaro’s disclosure that real time call recording can be
centralized with the other functions, including three way call detection, PIN
checking, and the VoIP gateway, that Spadaro would have conveyed to one
of ordinary skill in the art that “the associated systems implementing these
functions would be connected via a LAN.” Ex. 1003 ¶ 61.
For the foregoing reasons, we determine that Petitioner has
demonstrated by a preponderance of evidence that Spadaro would have
conveyed to one of ordinary skill in the art the additional limitations recited
in claims 3 and 10.
6. Dependent Claims 4 and 11
Claim 4, which depends directly from dependent claim 3 and
indirectly from independent claim 1, additionally recites “the call application
management system is configured to select calls to be recorded by the call
recording system.” Similarly, claim 11, which depends directly from
dependent claim 10 and indirectly from independent claim 8, additionally
recites “selecting calls to be recorded by communicating data over the
LAN.”
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According to Petitioner, Spadaro’s disclosure of a call processing
system that records calls (as discussed above with respect to claims 3 and
10) inherently must select a call before the call can be recorded. Pet. 21, 25.
Petitioner’s declarant supports Petitioner’s position. Ex. 1003 ¶ 85. Patent
Owner argues that the plain language of claim 4 requires the call application
management system to be configured to select the call. PO Resp. 53.
We agree with Petitioner, and its declarant, that recording a call
necessarily requires a call to be selected. We also, however, agree with
Patent Owner that selecting a call does not mean necessarily that a particular
device—here, Spadaro’s VoIP Gateway 26a (corresponding to the recited
call application management system)—selects a call for the recording.
Thus, we determine that Petitioner has not demonstrated by a
preponderance of evidence that Spadaro would have conveyed to one of
ordinary skill in the art the additional limitations recited in claim 4.
PO relies on the same arguments in its contentions regarding claims 4
and 11. See PO Resp. 58. Claim 11, however, does not require a particular
device to select a call to be recorded. Rather, Claim 11 requires “selecting
calls to be recorded by communicating data over the LAN.”
As noted previously, we agree with Petitioner, and its declarant, that
recording a call necessarily requires a call to be selected. We determine,
therefore, that Petitioner has demonstrated by a preponderance of evidence
that Spadaro would have conveyed to one of ordinary skill in the art the
additional limitations recited in claim 11.
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7. Conclusion of Obviousness over Spadaro
We have resolved the question of obviousness based on factual
determinations of (1) the scope and content of Spadaro; (2) differences
between the subject matter of claims 1–4 and 8–11 and the teachings of
Spadaro; (3) the level of ordinary skill in the art; and (4) objective evidence
of nonobviousness. Graham, 383 U.S. at 17–18. Patent Owner has not put
forth any evidence of secondary considerations for us to consider.
For the foregoing reasons, we determine that Petitioner has
established, by a preponderance of evidence, that the subject matter recited
in each of claims 1–3 and 8–11 as a whole would have been obvious to one
of ordinary skill in the art in view of Spadaro. See 35 U.S.C. § 103(a). We
determine, however, Petitioner has not established, by a preponderance of
evidence, that the subject matter in claim 4 as a whole would have been
obvious to one of ordinary skill in the art in view of Spadaro.
E. Obviousness over Spadaro and Hodge
Petitioner contends claims 4–7 and 11–14 are unpatentable under
35 U.S.C. § 103(a) as obvious over Spadaro and Hodge, relying on
declaration testimony of Dr. Forys. Pet. 26–33 (citing Ex. 1003). Patent
Owner responds, relying on declaration testimony of Dr. Oliver. PO Resp.
52–59 (citing Ex. 2001). Having considered the parties’ contentions and
supporting evidence, we determine that Petitioner has demonstrated by a
preponderance of evidence that claims 4–7 and 11–14 are unpatentable for
obviousness over Spadaro and Hodge.
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1. Summary of Hodge
As an initial matter, Petitioner represents Hodge is prior art under
35 U.S.C. § 102(e) to the challenged claims. Pet. 4. Hodge is a patent,
which issued from an application filed on August 8, 2002—a date prior to
the earliest effective filing date claimed by the ’003 patent—August 15,
2003. Patent Owner does not dispute that Hodge is prior art to the
challenged claims.
Hodge describes a secure telephone call management system for use
in penal institutions. Ex. 1005, Abstract, 9:48–53. Hodge’s secure
telephone call management system includes accounting software capable of
limiting access to the system based on funds in a user’s account. Id. at
Abstract. Among Hodge’s techniques to monitor calls, Hodge describes a
live operator using a “shadow workstation” to monitor telephone calls
without detection. Id. at 20:47–49. If the operator determines a call being
monitored is suspicious, the operator may record the telephone call.
Id. at 20:54–57. Hodge also describes an investigative workstation 125 used
to access recorded conversations and used to detect if a third party is present
during the telephone call. Id. at 21:1–7. Hodge describes a commissary
workstation used “to manage and record a user’s financial transactions.”
Id. at 20:32–34.
Hodge describes a central site server through which “[a]ll inmate and
call information is routed.” Id. at 19:25, 37–38. Hodge further describes
software on the central site server that is used to monitor calls and activate
an audio recorder when “certain key words or phrases are spoken. Id. at
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20:62–67. According to Hodge, the shadow workstation, the investigative
workstation, and the commissary workstation may be connected to a central
site server through a local area network or “may be integral within the
central site server.” Id. at 20:35–36, 20:46–47, 21:13–16. Hodge further
describes a WAN configuration in which the site server is connected to
multiple devices located in separate institutions, a central database is used
for the entire system, and administrative and investigative workstations are
located at a central facility to administer all user accounts. Id. at 10:41–48
(Summary of Invention).
2. Claims 4–8 and 11–14
To support its contention that claims 4–8 and 11–14 would have been
obvious, Petitioner augments its contentions that the challenged independent
claims would have been obvious over Spadaro with assertions based on
Hodge’s description of a secure telephone call management system for use
in penal institutions. Pet. 25–33.
Claims 4 and 11
As noted previously, claims 4 and 11 depend indirectly from either
independent claim 1 or independent claim 8 and additionally require features
related to selecting calls to be recorded. We are persuaded that Petitioner
has demonstrated by a preponderance of evidence that the combination of
Spadaro and Hodge would have conveyed to one of ordinary skill in the art
the additional limitations recited in claims 4 and 11.
Petitioner supplements its assertions regarding obviousness of
claims 4 and 11 over Spadaro with assertions relying on Hodge’s call
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management system. Specifically, Petitioner relies on Hodge’s central site
server 133 that includes software used to monitor calls and activate an audio
recorder when “certain key words or phrases are spoken.” Pet. 27 (citing
Ex. 1005, 20:62–67), 32. Petitioner relies on Hodge discloses that the
software can be located on its central site server, through which “[a]ll inmate
and call information is routed.” Ex. 1005, 19:25, 19: 37–38, 20:62–67.
Based on these disclosures, Petitioner contends that Hodge discloses a call
application management system “configured to select calls to be recorded by
the call recording system,” as recited in claim 4.
Patent Owner contends that Petitioner’s contentions are insufficient
because Petitioner’s declarant does not explain how Spadaro’s “simple VoIP
gateway” would be able to be combined with Hodge’s central site server
through which all call information is routed and which includes software
used to monitor calls and activate an audio recorder when certain key words
or phrases are spoken. PO Resp. 53. We are not persuaded by Patent
Owner’s contentions, which seem to require bodily incorporation of Hodge’s
recording software in Spadaro’s VoIP gateway 26a. See In re Keller, 642
F.2d at 425 (“The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference.”).
Moreover, Patent Owner does not address sufficiently what Hodge’s
disclosures would have conveyed to one of ordinary skill in the art. Thus,
Patent Owner’s contentions do not take into account adequately what the
collective teachings of Spadaro and Hodge would have conveyed to one of
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ordinary skill in the art. In re Mouttet, 686 F.3d at 1332 (“[T]he test for
obviousness is what the combined teachings of the references would have
suggested to those having ordinary skill in the art.” (citing In re Keller, 642
F.2d at 425)).
Patent Owner relies on the substantially similar arguments in its
contentions regarding claims 4 and 11. See PO Resp. 53, 58. With regard to
claim 11, Patent Owner relies on its contentions regarding claim 4 and
concludes “Spadaro and Hodge provide no teaching that selecting a call to
record is based on communicating data over the LAN.” PO Resp. 58.
Claim 11 recites “selecting calls to be recorded by communicating
data over the LAN” and does not require the act of selecting is based on
communicating data over the LAN, for the reasons discussed previously
with respect to Petitioner’s assertion that claim 11 would have been obvious
over Spadaro. Rather, claim 11 requires the act of recording involve
“communicated data over the LAN.” As Petitioner notes, Hodge expressly
discloses that “[t]he system of the current invention is designed to operate on
either a local area network (LAN) or a wide area network (WAN).” Pet. 32
(quoting Ex. 1005, 9:62–64). Petitioner’s position is supported by its
declarant (Ex. 1003 ¶ 123), which we find credible.
Claims 5 and 12
Claim 5 depends from independent claim 1 and additionally recites “a
justice application management system connected to the LAN and
configured to manage information about inmates at the prison facilities.”
Petitioner, with support from its declarant, contends Hodge’s shadow
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workstation teaches or suggests the recited justice application management
system for managing inmates. Pet. 28–29 (citing Ex. 1003 ¶ 115).
Petitioner further contends, with support of its declarant, that one of ordinary
skill in the art would have placed the functions of Hodge’s shadow
workstation at Spadaro’s central administration location. Id. at 29 (citing
Ex. 1003 ¶ 115). Thus, according to Petitioner, the combination of Spadaro
and Hodge would have taught or suggested to one of ordinary skill in the art
the recited justice application management system.
Patent Owner opposes, relying on its declarant testimony that Hodge’s
shadow workstation “has nothing to do with inmate management, such as
assigned cells, medications, scheduling, [and] facility resources. . . as
claimed.” PO Resp. 54 (citing Ex. 2001 ¶¶ 263–64). Notably, Dr. Olivier
bases his conclusion on an example in the ’003 patent. Ex. 2001 ¶ 263
(quoting Ex. 1001, 14:25– 30 (“[f]or example, justice application
management, which may comprise a back office software product for a jail
to facilitate management of the inmates in the facility (e.g., what cells they
are assigned to, what medications are to be administered to them, tracking
their medical records, tracking their privileges”)).
We find this approach unpersuasive because we must be careful not to
read a particular embodiment appearing in the written description into the
claim if the claim language is broader than the embodiment. In re Van
Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993); see also Superguide Corp. v.
DirecTV Enters, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though
understanding the claim language may be aided by the explanations
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contained in the written description, it is important not to import into a claim
limitations that are not a part of the claim.”); In re Self, 671 F.2d at 1348
(stating that it is well established that limitations not appearing in the claims
cannot be relied upon for patentability). Here, the claim language
“managing inmates” is broader than the examples in the ’003 patent—
inmate assignment to cells, medications to be administered to inmates,
tracking their medical records, and tracking their privileges.
Moreover, even if we were to accept Dr. Olivier’s conclusion that an
example in the ’003 patent would limit the language of the claim, Dr. Olivier
does not address sufficiently why the example in the ’003 patent of
“managing inmates” by tracking inmate privileges would not encompass the
function of Hodge’s shadow workstation—monitoring inmate telephone
calls. Nor does Dr. Olivier address the expansive description in the ’003
patent that a justice application management system “may correspond to any
number of information management systems providing data collection
and/or sharing among facilities as described herein” (Ex. 1001, 8:7–11).
Weighing Dr. Olivier’s testimony against the Dr. Forys’ testimony,
we credit Dr. Forys’ testimony over that of Dr. Olivier, because Dr. Forys’
testimony better comports with the disclosure of the ’003 patent about a
justice application management system. We also discount Dr. Olivier’s
testimony based on example functions of a justice application management
system, while not addressing adequately evidence that undercuts Patent
Owner’s position. It is within our discretion to assign the appropriate weight
to the testimony offered by Dr. Olivier and Dr. Forys. See, e.g., Yorkey, 601
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F.3d at 1284; Am. Acad. of Sci. Tech Ctr., 367 F.3d at 1368. Thus, we are
not persuaded by Patent Owner’s attempt to construe claim 5 more narrowly
than the broad claim language itself—“a justice application management
system . . . configured to manage information about inmates at the prison
facilities”—based on unclaimed, example functions of a justice application
management system.
Claim 12 depends from independent claim 8 and additionally recites
“managing information about inmates at the prison facilities by
communicating data over the LAN.” Similarly to claim 5, Petitioner relies
on Hodge’s shadow workstation in combination with Spadaro’s disclosure.
Petitioner further relies, similarly to claim 11, Hodge’s disclosure that “[t]he
system of the current invention is designed to operate on either a local area
network (LAN) or a wide area network (WAN)” and testimony by its
declarant supporting its position that the combination of Spadaro and Hodge
would have conveyed the subject matter in claim 12 to one of ordinary skill
in the art. Pet. 32–33 (citing Ex. 1005, 9:62–64; referring to its contentions
regarding claim 5, which includes citing Ex. 1003 ¶ 115).
With regard to claim 12, Patent Owner relies on its contentions
regarding claim 5 and concludes “Spadaro and Hodge fail to provide for
management of inmates via a LAN connected to a call application
management system.” PO Resp. 59. We are not persuaded for the reasons
discussed previously with respect to claim 5.
Based on the foregoing, we determine that Petitioner has
demonstrated by a preponderance of evidence that the combination of
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Spadaro and Hodge would have conveyed to one of ordinary skill in the art
the additional limitations recited in claims 5 and 12.
Claims 6 and 13
Claim 6 depends from independent claim 1 and additionally recites “a
commerce system connected to the LAN and configured to manage
commissary orders placed by inmates at the prison facilities.” Claim 13
depends from independent claim 8 and additionally recites “managing
commissary orders placed by inmates at the prison facilities by
communicating data over the LAN.”
Petitioner relies on Hodge’s commissary workstation 121 “used to
manage and record a user’s financial transactions.” Pet. 30 (citing Ex. 1005,
20:32–34, 51:37–41. Petitioner further contends, with support of its
declarant, that one of ordinary skill in the art would have placed the
functions of Hodge’s shadow workstation at Spadaro’s central
administration location and it would have been obvious to one of ordinary
skill in the art to connect the commissary workstation to the LAN. Id. at 30
(citing Ex. 1003 ¶ 118). Thus, according to Petitioner, the combination of
Spadaro and Hodge would have taught or suggested to one of ordinary skill
in the art the recited managing commissary orders placed by inmates, as
required by claims 6 and 13.
Patent Owner contends, without supporting testimony by its declarant,
that one of ordinary skill in the art would not centralize commissary
workstation and notes that Petitioner’s declarant does not provide a reason
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why the commissionary workstation would be centralized. PO Resp. 54–55;
see also id. at 59 (regarding claim 13).
A central dispute between the partiesconcerns Spadaro’s
centralization of administrative functions. Although Petitioner’s declarant
does not provide in paragraph 118 a particular reason why Spadaro’s
commissionary workstation would be centralized (see Ex. 1003 ¶ 118),
Petitioner has asserted—with support of its declarant and as we have
discussed previously—that Spadaro discloses control functions (including
the billing function, PIN checking, real time call recording, and three-way
call fraud detection) as being centralized with functions being performed
advantageously at a central administration location.. Ex. 1004, 4:4–24.
Spadaro further discloses expressly “the advantage that the functions can be
centralized,” on which Petitioner and its declarant have relied and which we
have discussed previously. See Ex. 1004, 4:10–13. Thus, at this point, we
cannot ignore the express disclosure of Spadaro regarding the advantage of
centralizing functions that would be performed by a commissionary
workstation.
Accordingly, we are persuaded that Petitioner has demonstrated by a
preponderance of evidence that the combination of Spadaro and Hodge
would have conveyed to one of ordinary skill in the art the additional
limitations recited in claims 6 and 13.
Claims 7 and 14
Claim 7 depends from independent claim 1 and further recites “a call
treatment system connected to the LAN and configured to communicate
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with a signaling network of the telephone carrier network to determine
whether a call forwarding feature is activated for call numbers associated
with the calls made through the system.” Claim 14 depends from claim 8
and similarly further recites “communicating with a signaling network of the
telephone carrier network to determine whether a call forwarding feature is
activated for call numbers associated with the calls made through the
networking device.”
Petitioner relies on Petitioner relies on Hodge’s description, in the
Background of the Invention section, that conventional systems prevent an
inmate from using call forwarding. Pet. 31 (citing Ex. 1005, 4:60–67). For
the recited “call treatment system,” Petitioner relies on Hodge’s description
of another conventional system’s techniques for “detecting tones commonly
associated with call bridging and call forwarding attempts,” including
various types of signals, such as ring signals and busy signals, which are
characteristic of placing a telephone call. Id. (citing Ex. 1005, 8:21–28).
For support of its position, Petitioner relies on testimony from Dr. Forys. Id.
(citing Ex. 1003 ¶ 120).
Petitioner further contends, with support of its declarant Dr. Forys,
that one of ordinary skill in the art would have placed Hodge’s call
forwarding detection means at the central administration location of
Spadaro. Id. (citing Ex. 1003 ¶ 121). According to Petitioner’s declarant,
Spadaro’s centralized three-way call detection (Ex. 1004, 4:10–13) and
Hodge’s call forwarding detection use the same network signaling tones
(switch hook flashes). Id. at 31–32 (citing Ex. 1003 ¶ 121). Petitioner’s
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declarant also testifies that one of ordinary skill in the art would recognize
that Hodge’s call forwarding detection means would be connected to the
LAN. Id. at 32 (citing Ex. 1003 ¶ 121). Thus, according to Petitioner and
its declarant, the combination of Spadaro and Hodge would have disclosed
“a call treatment system connected to the LAN.” Pet. 32; Ex. 1003 ¶ 121.
Patent Owner contends, with support from its declarant Dr. Olivier,
that “the references fail to describe any signaling that indicates ‘whether a
call forwarding feature is activated for call numbers associated with the
calls,’” as recited by claims 7 and 14. PO Resp. 56 (citing Ex. 2001 ¶ 270),
59–60. Dr. Olivier acknowledges that Hodge indicates another reference
“includes a means for detecting tones commonly associated with call
bridging and call forward attempts.” Ex. 2001 ¶ 270 (citing Ex. 1005, 8:21–
28). Dr. Olivier indicates that “Hodge omits any description of signaling
that indicates” the recited feature. Id.
Patent Owner’s contentions regarding Hodge unduly focus on specific
isolated capabilities described in Hodge without addressing what those
capabilities would have suggested to one of ordinary skill in the art at the
time of the invention of the ’003 patent. Further, Patent Owner’s
contentions in large measure amount to attacks on the individual elements of
claims 7 and 14, without sufficient consideration of what the disclosure of
Hodge would have suggested to one of ordinary skill in the art regarding the
claimed subject matter as a whole, which is an approach we find
unpersuasive. Mouttet, 686 F.3d at 1332 (“[T]he test for obviousness is
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what the combined teachings of the references would have suggested to
those having ordinary skill in the art.”).
Thus, we credit Dr. Forys testimony that one of ordinary skill in the
art would place Hodge’s call forwarding detection means at the central
administration location of Spadaro, which supports Dr. Forys’ conclusion
that Spadaro and Hodge would have conveyed the subject matter of claims 7
and 14 to one of ordinary skill in the art.
Accordingly, we are persuaded that Petitioner has demonstrated by a
preponderance of evidence that the combination of Spadaro and Hodge
would have conveyed to one of ordinary skill in the art the additional
limitations recited in claims 7 and 14.
3. Reason to Support Legal Conclusion of Obviousness
Petitioner has articulated sufficient reasoning with some rational
underpinning to support the legal conclusion that the subject matter of
claims 4–8 and 11–14 would have been obvious to one of ordinary skill in
the art in view of the teachings of Spadaro and Hodge as combined in the
manner proposed by Petitioner. See KSR, 550 U.S. at 418. For the reasons
discussed regarding independent claims 1 and 8, Spadaro would have
conveyed to one of ordinary skill in the art the limitations of the independent
claims. For the reasons previously discussed, we have determined that
Petitioner has established by a preponderance of evidence that the
combination of Spadaro and Hodge would have conveyed the features of
dependent claims 4–8 and 11–14.
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Petitioner, with support from its declarant, indicates the reason that
one of ordinary skill in the art would have combined Spadaro and Hodge
was the two references were addressing the same problem—control and
management of inmate telecommunications. Pet. 26 (citing Ex. 1003 ¶ 108).
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.”). Petitioner, also relying on its declarant, contends a one of
ordinary skill in the art could have combined the functions of Hodge with
the system of Spadaro by known methods and the results of the combination
would have been predictable to one of ordinary skill in the art. Pet. 27
(citing Ex. 1003 ¶ 110). As noted previously in connection with
independent claims 1 and 8, the electrical arts, such as claimed here, involve
predictable factors. See In re Fisher, 427 F.2d at 833 (indicating patents in
the mechanical or electrical arts involve predictable factors).
4. Conclusion Regarding Obviousness of
Claims 4–7 and 11–14 in View of Spadaro and Hodge
Accordingly, we determine that the subject matter recited in each of
claims 4–7 and 11–14 as a whole would have been obvious to one of
ordinary skill in the art in view of Petitioner’s combination Spadaro and
Hodge. 35 U.S.C. § 103(a). We have resolved the question of obviousness
based on factual determinations of (1) the scope and content of Spadaro and
Hodge; (2) differences between the subject matter of claims 4–7 and 11–14
and the teachings of Spadaro and Hodge; (3) the level of ordinary skill in the
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art; and (4) objective evidence of nonobviousness. Graham, 383 U.S. at 17–
18. Therefore, we determine that Petitioner has shown by a preponderance
of the evidence that the subject matter of claims 4–7 and 11–14 of the ’003
patent would have been obvious to a person of ordinary skill in the art in
view of the teachings of Spadaro and Hodge.
III. CONCLUSION
Petitioner has proven by a preponderance of the evidence that
claims 1–3 and 8–11 of the ’003 patent are unpatentable under 35 U.S.C.
§ 103(a) as obvious over Spadaro and claims 4–7 and 11–14 are
unpatentable as obvious over Spadaro and Hodge. Petitioner, however, has
not proven by a preponderance of the evidence that claim 4 of the ’003
patent is unpatentable as obvious over Spadaro.
IV. ORDER
Accordingly, it is hereby
ORDERED that, based on a preponderance of the evidence, claims 1–
14 of U.S. Patent No. 8,577,003 B2 are held unpatentable; and
FURTHER ORDERED that, because this is a Final Written Decision,
the parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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PETITIONER:
Lori A. Gordon
Michael B. Ray
Ryan Richardson
STERNE, KESSLER, GOLDSTEIN & FOX
lgordon-PTAB@skgf.com
mray-PTAB@skgf.com
rrichardson-PTAB@skgf.com

PATENT OWNER:
Rajiv Patel
Darren Donnelly
Fenwick & West LLP
Rpatel-ptab@fenwick.com
Ddonnelly-ptab@fenwick.com