Global Tel*Link Corporationv.Securus Technologies, Inc.

Patent Trial and Appeal Board

Dec 2, 2015

12410378 (P.T.A.B. Dec. 2, 2015)

Trials@uspto.gov Paper 36
571-272-7822 Entered: December 2, 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 IPR2014-00824
Patent 8,340,260 B1
____________

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, 3, 4,
6, 7, 10, 13, 19, and 20 of U.S. Patent No. 8,340,260 B1 (Ex. 1001, “the
’260 patent”) are unpatentable, but has not shown by a preponderance of the
evidence that claims 2, 5, 8, 9, 11, 12, and 14–18 are unpatentable.
A. Procedural History
Global Tel*Link Corporation (“Petitioner”) filed a Petition (Paper 1;
“Pet.”) for an inter partes review of claims 1–20 (“the challenged claims”)
of the ’260 patent. Patent Owner, Securus Technologies, Inc., filed a
Preliminary Response opposing institution of a review. Paper 8. On
December 8, 2014, pursuant to 35 U.S.C. § 314(a), we instituted an inter
partes review for claims 1–20 of the ’260 patent as unpatentable under
35 U.S.C. § 103(a) over the following references.
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Reference(s) Claims Challenged
Spadaro1 and Hodge2 1–4, 6–11, 14, 16, 17, 19, and 20
Spadaro, Hodge, and Boykin3 5 and 12
Spadaro, Hodge, and Cree4 13
Spadaro, Hodge, and Nguyen5 15 and 18
Paper 9 (“Inst. Dec.”), 35.
Subsequent to institution, Patent Owner filed a Patent Owner
Response (Paper 15, “PO Resp.”), and Petitioner filed a Reply (Paper 19,
“Reply”). Patent Owner filed observations on the cross-examination of
Petitioner’s declarant (Paper 22), to which Petitioner filed a response (Paper
27). An oral hearing was held on July 7, 2015.6 A transcript of the oral
hearing is included in the record.7 Paper 35 (“Tr.”).

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”).
3 U.S. Patent No. 6,831,556 B1, issued Dec. 14, 2004, filed May 16, 2001
(Ex. 1007, “Boykin”).
4 U.S. Patent No. 6,665,380 B1, issued Dec. 16, 2003, filed Jan. 11, 1999
(Ex. 1008, “Cree”).
5 U.S. Patent No. 5,861,810, issued Jan. 19, 1999, filed Sept. 27, 1996
(Ex. 1009, “Nguyen”).
6 The oral arguments for this proceeding and IPR2014-00825 were
conducted at the same time. Paper 26, 2.
7 The parties filed Objections to Demonstrative Exhibits. Papers 28–31. In
this Final Written Decision, we rely directly on the arguments presented
properly in the parties’ briefs and the evidence of record. The demonstrative
exhibits were considered only to the extent that they were consistent with
those arguments and evidence. The objections, therefore, are overruled.
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B. Related Matters
Petitioner requested inter partes review of related patents—
U.S. Patent No. 7,899,167 B1 (IPR2014-00493), U.S. Patent No.
8,577,003 B2 (Case IPR2014-00749), and U.S. Patent No. 7,529,357 B1
(Case IPR2014-00825). Final written decisions have been entered in Cases
IPR2014-00493 and IPR2014-00749. A final written decision in Case
IPR2014-00825 is being issued concurrently with the one in this case.
C. The ’260 Patent
The ’260 patent, titled “Inmate Management and Call Processing
Systems and Methods,” issued December 25, 2012 from an application that
is a continuation of an application filed July 12, 2007 (U.S. Patent Appln.
No. 11/777,168, “parent”), which, in turn, is a continuation-in-part of an
application filed on August 15, 2003 (U.S. Patent Appln. No. 10/642,532,
“grandparent”).8 The parent issued as U.S. Patent No. 7,529,357 (Ex. 3004,
“the ’357 patent”), and the grandparent issued as U.S. Patent No. 7,899,167
(Ex. 3003, “the ’167 patent”). Both the ’260 patent and the ’357 patent
include additional description not part of the ’167 patent. See, e.g.,
Ex. 1001, Fig. 2, 18:15–19:17; Ex. 3003, Figs. 1–2; Ex. 3004, Fig. 2, 18:15–
19:7.

8 A continuation-in-part application contains a portion or all of the disclosure
of an earlier application together with added matter not present in that earlier
application. Transco Prods., Inc. v. Performance Contracting, Inc., 38 F.3d
551, 555 (Fed. Cir. 1994) (citing Manual of Patent Examining Procedure
§ 201.08).
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The ’260 patent describes providing centralized inmate management
and call processing capabilities to controlled-environment facilities, such as
prisons. Ex. 1001, Abstract, 2:62–65. The described techniques, for
example, address information management problems that may occur when
an inmate is transferred to a different facility. Id. at 2:52–59; see generally
id. at 1:65–2:51. Such problems include gathering information multiple
times, processing the same information by multiple facilities, and storing
information about an inmate in different systems so that multiple systems
must be accessed to obtain information about an inmate. Id. at 2:52–59.
Figure 1 of the ’260 patent is set forth below:
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Figure 1 illustrates a centralized inmate management
and call processing system 100.
Centralized inmate management and call processing system 100
provides calling services to facilities 150, 160, 170, 180 and includes
computer-based platform 101, which communicates with facilities 150, 160,
170, 180 through network 130. Id. at 6:37–42, 6:53–55. Call processing
gateways 140, at or near sites for which inmate management and calling
services are to be provided (i.e., facilities 150, 160, 170, 180), convert
analog signals associated with telephone terminals 141 (or visitation
telephones 143) to digital data packets sent over network 130. Id. at 6:66–
7:3, 7:12–16.
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Computer-based 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 a telephone terminal (not shown),
over PSTN 192 or digital network 191. Id. at 9:14–21. Call application
management system 110 provides a data interface coupling call application
management system 110 through network 130 and providing Voice over
Internet Protocol (“VoIP”) communication between call application
management system 110 and facilities 150, 160, 170, 180. Id. at 9:34–38.
Computer-based platform 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 10:33–39.
Computer-based platform 101 further includes justice application
management system 121, which is an information management system
providing data collection and sharing among facilities 150, 160, 170, 180.
Id. at 8:60–9:9. An inmate management database includes information
about inmates and may be managed by justice application management
system 121 or a similar inmate management system. Id. at 14:47–53.
Information for an inmate record may include biometric data (such as finger
prints, voice prints, and retina scans), information about an inmate’s arrest,
visitation records, call records, medical records, and contact information of
third parties known to the inmate, who may be notified of an inmate’s
transfer between facilities. Id. at 16:7–13, 16:30–47, 17:37–42.
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Records stored into the inmate management database are accessible to
multiple facilities, such as county and municipal jails, state penitentiaries,
and federal prisons. Id. at 17:15–19. An inmate record created upon arrest
or during incarceration at a first facility may be used when the inmate is
transferred to a subsequent facility. Id. at 18:56–59. The ’260 patent
describes an example in which a person is arrested and taken by a police
squad car to the police department. Id. at 15:28–32. An inmate record is
created in the squad car and then transmitted to the inmate management
database of computer-based platform 101, from which the information is
accessed during a booking procedure at the police department. Id. at 15:28–
32, 15:45–51.
D. Illustrative Claims of the ’260 Patent
Of the claims in the ’260 patent, claims 1 and 10, reproduced below,
are independent and illustrative of the claimed subject matter:
1. A computer-based system, at a plurality of facilities,
for managing inmate information, each of the facilities having
one or more telephone terminals and computer terminals, the
computer-based system located remotely from at least one of
the plurality of facilities, the system comprising:
a networking device exchanging Voice over Internet
Protocol (VoIP) data packets with call processing gateways at
the plurality of facilities over communication links, the call
processing gateways processing the VoIP data packets to or
from the telephone terminals for transmission over the
communication links;
an inmate management system coupled to the networking
device for providing shared data access of inmate records to
computer terminals at said plurality of facilities, said inmate
records created with first inmate information collected from a
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first computer terminal at a first facility of the plurality of
facilities and second inmate information from a second
computer terminal at a second facility of the plurality of
facilities; and
a call application management system connecting a call
to or from the telephone terminals over a telephone carrier
network responsive to receiving a request for connecting the
call and the call being authorized based on the inmate records
provided by the inmate management system.
Ex. 1001, 25:32–55.
10. A method for managing inmate information at
multiple facilities including a first facility and a second facility,
each facility comprising multiple telephone terminals and
computer terminals, the method carried out in a computer-based
system located remotely from at least one of the multiple
facilities, the method comprising:
receiving, from a first computer terminal at the first
facility, first inmate information associated with an inmate;
receiving, from a second computer terminal at the second
facility, second inmate information associated with the inmate;
generating an inmate record based on the first inmate
information and the second inmate information;
storing the inmate record in the computer-based system
for shared access across to the inmate record computer
terminals in the multiple facilities;
receiving a request from one of the multiple telephone
terminals for connection of a call over a telephone carrier
network; and
connecting the call from one of the telephone terminals
over a telephone carrier network and a communication link
responsive to authorizing the call based on the inmate records
stored in the computer-based system.
Id. at 26:16–39.
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II. DISCUSSION
A. Disqualification of Spadaro as Prior Art
Patent Owner contends that Spadaro is disqualified prior art under
35 U.S.C. § 103(c)(1)9 for claims 2, 5, 8, 9, 11, 12, and 14–18 (“the claims
at issue”). Section 103(c)(1) provides:
Subject matter developed by another person, which qualifies as
prior art only under . . . [section 102 (e)] of this title, shall not
preclude patentability under this section where the subject
matter and the claimed invention were, at the time the claimed
invention was made, owned by the same person or subject to an
obligation of assignment to the same person.
35 U.S.C. § 103(c)(1).
Crucial to the resolution of this dispute is the allocation of the burdens
of proof between Petitioner and Patent Owner when entitlement to an earlier
filing date is at issue in an obviousness challenge in an inter partes review.10
In addition, application of the written description requirement to the claims
at issue is critical to the resolution of this inter partes review.
We begin by discussing the allocation of the burdens of proof.
“[T]here are two distinct burdens of proof: a burden of persuasion and a
burden of production.” Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,

9 We refer to the pre-AIA version of § 103(c)(1) because the application of
the patent at issue in this case was filed before the date when the Leahy-
Smith America Invents Act (“AIA”), Pub. L. No. 112–29 took effect.
10 The Board requested briefing about the burden shifting framework to be
applied to disqualification of prior art under § 103(c)(1) in an inter partes
proceeding. See Paper 32 (Order requesting post-hearing briefing); Paper 33
(Petitioner’s post-hearing brief); Paper 34 (Patent Owner’s post-hearing
brief).
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800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v.
Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)).11 “The burden of
persuasion ‘is the ultimate burden assigned to a party who must prove
something to a specified degree of certainty.’” Id. (quoting Tech. Licensing,
545 F.3d at 1326). “Failure to prove the matter as required by the applicable
standard means the party with the burden of persuasion loses on that point.”
Id. at 1378–79 (quoting Tech. Licensing, 545 F.3d at 1327).
“A quite different burden is that of going forward with evidence—
sometimes referred to as the burden of production—a shifting burden the
allocation of which depends on where in the process of trial the issue arises.”
Tech. Licensing, 545 F.3d at 1327 (citations omitted). The burden of
production may shift between the parties and may involve “producing
additional evidence and presenting persuasive argument based on new
evidence or evidence already of record.” Dynamic Drinkware, 800 F.3d at
1379 (quoting Tech. Licensing, 545 F.3d at 1327). In Dynamic Drinkware,
the Federal Circuit affirmed the Board’s use of the burden shifting
framework in the analysis of a prior art reference relied upon in an
anticipation challenge. Id.
Applying these principles to the instant case, in an inter partes review,
the burden of persuasion is on Petitioner to prove “unpatentability by a
preponderance of evidence,” 35 U.S.C. § 316(e), and that burden never
shifts to the Patent Owner. See id. (explaining petitioner “had the burden of

11 Dynamic Drinkware issued after the time of the trial hearing and post-
hearing briefing.
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persuasion to prove unpatentability by a preponderance of the evidence, and
this burden never shifted”). Petitioner also has the initial burden of
production. Id. Petitioner satisfied its burden of production by arguing in its
Petition that Spadaro was prior art under § 102(e) and, in combination with
one or more other prior art references, would have rendered claims 1–20
obvious at the time the invention was made under § 103(a). Pet. 4–5, 19–35.
1. Patent Owner’s Burden of Production
The burden of production then shifted to Patent Owner to argue or
produce evidence that Spadaro was not prior art. Patent Owner responded
by arguing in its Patent Owner Response that Spadaro is disqualified prior
art to the claims at issue because § 103(c)(1) precludes such use of Spadaro.
PO Resp. 8–10. According to Patent Owner, both applications that issued as
Spadaro and the ’357 patent (the parent of the ’260 patent) were owned by
Evercom Systems, Inc. (“Evercom”) at the time the claimed invention was
made. PO Resp. 8–10. Thus, according to Patent Owner, both the subject
matter in Spadaro and the claimed invention of the ’260 patent were owned
by the same person at the time the claimed invention was made, which under
35 U.S.C. § 103(c) disqualifies Spadaro as prior art to those claims.
Id. (Patent Owner Response Section III heading reads “Spadaro is not prior
art under 35 U.S.C. § 103 for [the claims at issue] of the ’260 patent because
their applications were owned by the same person at the time the claimed
inventions were made”) (capitalization removed).
Patent Owner proffered assignment records of Spadaro (Ex. 2004), the
’357 patent (Ex. 2005), and the ’260 patent (Ex. 2007) as evidence of co-
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ownership required under § 103(c). The assignment records of Spadaro
support Patent Owner’s representation that Evercom12 acquired Spadaro on
January 28, 2004 and maintained ownership from that time onward.
Ex. 2004.
The assignment records of the ’357 patent and the ’260 patent further
support Patent Owner’s representation that the subject matter of those
patents was assigned to Evercom as of the filing date of the ’357 patent (i.e.,
the parent). See PO Resp. 8; Ex. 2005, 2 (indicating assignment from
inventors to Evercom was recorded at Reel/Frame 019552/0045); id. at 7–12
(documents showing assignment from inventors to Evercom); Ex. 2007.
The assignment of the parent to Evercom includes “inventions and
application for Letters Patent, and . . . continuations . . . of said application.”
Ex. 2005, 9. Thus, we agree with Patent Owner that the subject matter in
the ’260 patent, which issued from a continuation of the parent application,
was assigned to Evercom as of the assignment of the parent of the ’260
patent to Evercom.
Also, as correctly noted by Patent Owner, Office procedure applies a
recorded, prior assignment to a continuation. See Manual of Patent
Examining Procedure (“MPEP”) § 306 (2015) (indicating “a prior
assignment recorded against the original application is applied (effective) to

12 Patent Owner represents Evercom changed its name to Securus
Technologies, Inc. and provides supporting evidence from PTO Records.
PO Resp. 8 (citing Ex. 2007 at Reel/Frame: 25663/0353, 5–8 (recorded
patent assignment documents, including certificate of amendment of
certificate of incorporation of the State of Delaware, for the ’260 patent)).
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the . . . continuation application because the assignment recorded against the
original application gives the assignee rights to the subject matter common
to both applications”); see also Hyatt v. Dudas, 492 F.3d 1365, 1369 n.2
(Fed. Cir. 2007) (“Although the MPEP ‘does not have the force of law,’
Molins PLC v. Textron, Inc., 48 F.3d 1172, 1180 n.10 (Fed.Cir.1995), the
MPEP ‘is made available to the public and . . . describe[s] procedures on
which the public can rely,’ Patlex Corp. v. Mossinghoff, 758 F.2d 594, 606
(Fed.Cir.1985).”). Based on the foregoing, Patent Owner provided sufficient
evidence of common ownership of Spadaro and the invention of the claims
at issue on July 12, 2007, the filing date of the parent.
Patent Owner also met its burden of production that July 12, 2007 was
the time the invention was made. Patent Owner represents that the
inventions in the claims at issue “are based on material not constructively
reduced to practice until the filing of the [parent]” on July 12, 2007. PO
Resp. 9. The filing of a patent application serves as both conception and
constructive reduction to practice of the subject matter described in the
application. Hyatt v. Boone, 146 F.3d 1348, 1352 (Fed. Cir. 1998); see also
Yasuko Kawai v. Metlesics, 480 F.2d 880, 885 (CCPA 1973) (“[T]he act of
filing the United States application has the legal effect of being,
constructively at least, a simultaneous conception and reduction to practice
of the invention.”).
Furthermore, courts sometimes use the filing date of an application as
a presumptive date that an invention was made. See, e.g., Phillips v. AWH
Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (“at the time of the invention,
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i.e., as of the effective filing date of the patent application”); Vas-Cath Inc.
v. Mahurkar, 935 F.2d 1555, 1562 (Fed. Cir. 1991) (“the prima facie date of
invention can fairly be held to be the filing date of the application”).
Notably, courts do this in the context of an obviousness challenge, which
requires showing “the subject matter as a whole would have been obvious at
the time the invention was made.” 35 U.S.C. § 103(a) (emphasis added);
see, e.g., Bausch & Lomb, Inc. v. Barnes-Hind/Hydrocurve, Inc., 796 F.2d
443, 449 (Fed. Cir. 1986) (equating the filing date of the patent with “the
time of the present invention” in analyzing an obviousness challenge). The
Board has done so in analyzing a challenge under § 103(c)(1) to prior art in
an inter partes review. The Board found that, absent credible factual
support to the contrary, the claimed invention was made on the effective
filing date. Corning Inc. v. DSM IP Assets B.V., Case IPR2013-00053,
Paper 66, at 19 (PTAB May 1, 2014).
Based on the above analysis, we determine that Patent Owner met its
burden of production to show the subject matter in Spadaro and the claimed
invention of the ’260 patent were assigned to the same person at the time the
claimed invention was made. Accordingly, Patent Owner met its burden of
production to show Spadaro is disqualified prior art as to the claims at issue.
Our determination accords with Office practice that requires a
statement, by the applicant seeking to disqualify a prior art reference, of
common ownership at the time of the invention was made. See
MPEP 706.02(l)(2); see also Dynamic Drinkware, 800 F.3d at 1380
(“[MPEP] is ‘commonly relied upon as a guide to patent attorneys and
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patent examiners on procedural matters,’ Litton Sys., Inc. v. Whirlpool
Corp., 728 F.2d 1423, 1439 (Fed.Cir.1984)”). The MPEP provides an
example of a statement providing sufficient evidence to establish common
ownership of the application and the reference asserted as prior art by the
examiner and disqualify the reference under § 103(c):
Applications and references (whether patents, patent
applications, patent application publications, etc.) will be
considered by the examiner to be owned by, or subject to an
obligation of assignment to the same person, at the time the
invention was made, if the applicant(s) or patent owner(s)
make(s) a statement to the effect that the application and the
reference were, at the time the invention was made, owned by,
or subject to an obligation of assignment to, the same person.
MPEP 706.02(I)(2) (II. Evidence Required to Establish Common
Ownership) (2015). Patent Owner represented in its Patent Owner’s
Response that the time the inventions of the issued claims were made is the
filing date of the parent application (PO Resp. 9) and the prior art reference
(Spadaro) and the application both were assigned to Evercom on that date.
As a result of Patent Owner’s arguments and evidenced cited in its
Patent Owner Response, the burden of production returned to Petitioner to
show Spadaro was not disqualified prior art under § 103(c).
2. Petitioner’s Burden of Production
Petitioner responds that Patent Owner did not meet its burden of
production for two reasons. First, Petitioner contends Patent Owner did not
provide sufficient argument or evidence to establish that the ’260 patent was
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not entitled to the filing date of the ’167 patent (grandparent).13 Reply 6
(“[Patent Owner] provides no argument or evidence to establish that [the
claims at issue] do[] not get the benefit of the filing date of the ’167
patent.”). Petitioner’s argument implies a presumption exists that a
continuation-in-part (here, the ’260 patent) of an earlier filed application
(here, the grandparent) is entitled to the filing date of the earlier filed
application.
The Federal Circuit has rejected this argument. PowerOasis v. T-
Mobile USA, 522 F.3d 1299, 1304–06 (Fed. Cir. 2008) (a party seeking to
use a priority date of a continuation-in-part had the burden to come forward
with evidence to prove a continuation-in-part application is entitled to claim
priority to an earlier filing date). Furthermore, in the instant case, Petitioner
(not Patent Owner) seeks to use the filing date of the ’167 patent
(grandfather) to show Spadaro is not disqualified as prior art under
§ 103(c)(1). Accordingly, Petitioner has the burden of production to prove
entitlement to the filing date of the ’167 patent (grandparent). Id.
Therefore, we do not agree with Petitioner that Patent Owner had to
establish the ’260 patent was not entitled to the filing date of the ’167 patent
(grandparent) to meet its burden of production.
Second, Petitioner contends that Patent Owner did not produce
evidence identifying the time of conception as required because “at the time

13 The relevance of Petitioner’s contention is that it is undisputed that
Evercom did not own Spadaro until after the filing date of the ’167 patent
(grandparent) and so the common ownership required by § 103(c)(1) would
not have been met at the time the invention was made.
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the claimed invention was made” required by § 103(c) means at the time of
conception. Reply 8–10; Petitioner Post-hearing Br. 3–4.
As Petitioner correctly indicates, “[t]he primary meaning of the word
‘invention’ in the Patent Act unquestionably refers to the inventor’s
conception.” Pfaff v. Well Elecs., Inc., 525 U.S. 55, 60 (1998); see Reply 9
(quoting same); Petitioner’s Post-hearing Br. 3 (quoting same). The Pfaff
court, however, further explained that “invention” in § 102(b) means a
complete conception. Pfaff, 525 U.S. at 66; see also Robotic Vision Sys.,
Inc. v. View Eng’g, Inc., 249 F.3d 1307, 1313 (Fed. Cir. 2001) (indicating
the Pfaff court defined the term “invention” in § 102(b) to mean a complete
conception). The test for whether an invention is complete requires proof
that the invention was enabled prior to the critical date. Robotic Vision, 249
F.3d at 1313 (citing Pfaff, 525 U.S. at 67). The Pfaff court also indicated
that “reduction to practice ordinarily provides the best evidence that an
invention is complete.” Pfaff, 525 U.S. at 66; see also Space Sys./Loral, Inc.
v. Lockheed Martin Corp., 271 F.3d 1076, 1080 (Fed. Cir. 2001) (“the Court
[in Pfaff] in defining ‘invention’ was not saying that conception alone equals
‘ready for patenting.’”).
To support its position, Petitioner cites to August Technology Corp. v.
Camtek, Ltd., 655 F.3d 1278, 1288–89 (Fed. Cir. 2011). Petitioner’s Post-
hearing Br. 4. Petitioner’s reliance on August Technology, however, is
unpersuasive. In August Technology, the Federal Circuit addressed the
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timing between the two Pfaff requirements14 for an on-sale bar. August
Technology, 655 F.3d at 1288. Specifically, the court addressed “whether
the invention must be ready for patenting at the time the alleged offer [for
sale] is made.” Id. The court determined that a commercial offer for sale
can only occur after its conception date but may occur before the invention
is ready for patenting. Id. at 1289. The timing of a commercial-offer-for-
sale relative to when the invention was ready-for-patenting in determining
§ 102(b) on-sale bar has limited probative value in determining what Patent
Owner is required to show to meet its burden of production regarding
disqualification under § 103(c)(1).
In further support of its position that the date of conception is the time
the invention was made and, therefore, Patent Owner did not provide
evidence of common ownership as of the date of conception, Petitioner
contends similar language, “the time the invention was made in this
country,” in § 102(g)(2) informs “the time the invention was made” under
§ 103(c)(1). See Reply 10 (quoting same); Petitioner’s Post-hearing Br. 4.
According to Petitioner, “the Federal Circuit has held that the language ‘the
invention was made in this country’ requires conception, not reduction to
practice or filing, in the United States.” Reply 10 (citing Solvay SA v.

14 Pfaff, 525 U.S. at 67 defines a two-prong test to determine whether a
commercial offer for sale bars patentability of an invention under § 102(b).
The Supreme Court held that the § 102(b) on-sale bar applies when two
conditions are met before the critical date of the invention: (1) the product
must be the subject of a commercial offer for sale, and (2) the invention
must be ready for patenting. Id.
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Honeywell Int’l, 622 F.3d 1367, 1376–78 (Fed. Cir. 2010)); Petitioner’s
Post-hearing Br. 4. Petitioner apparently relies on the court’s statement in
Solvay that “when [§ 102(g)(2)] uses the words ‘the invention was made in
this country,’ it is referring to the act of inventing in the United States.”
See Solvay, 622 F.3d at 1376. The Federal Circuit continued in Solvay by
reiterating two ways to prove prior inventorship under § 102(g)(2)—by
showing (1) reduction to practice of the invention or (2) conception and
reasonable diligence in reducing the invention to practice. Id. (citing
Mycogen Plant Sci., Inc. v. Monsanto Co., 243 F.3d 1316, 1332 (Fed. Cir.
2001)). Rather than supporting Petitioner’s position, Solvay undercuts
Petitioner’s position that language “the invention was made in this country”
in § 102(g)(2) requires only conception, not reduction to practice or filing.
Cf. MPEP § 2138.02 (“An invention is made [in the context of § 102(g)]
when there is a conception and a reduction to practice.”).
For these reasons, Petitioner has not demonstrated persuasively that
“the time the invention was made” under § 103(c)(1) requires Patent Owner
to have done more than what Patent Owner has done in this case. As noted
previously, Patent Owner has (i) represented “the time the invention was
made” for each of the claims at issue is the filing date of the parent because
claims at issue “are based on material not constructively reduced to practice
until the filing of the [parent]” and (ii) shown Spadaro was assigned to
Evercom nearly three-and-a-half years prior to conception and constructive
reduction to practice of the claimed invention. See Hyatt v. Boone, 146 F.3d
at 1352 (indicating the filing of a patent application serves as both
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conception and constructive reduction to practice of the subject matter
described in the application). No evidence of record indicates that the
claimed inventions were made prior to the start of that lengthy period
following the assignment of Spadaro.
In addition to contending Patent Owner did not carry its burden of
production under § 103(c)(1), Petitioner contends it carried its burden of
production to show that the ’167 patent (grandparent) sufficiently would
have conveyed to one of ordinary skill in the art that the Patent Owner had
possession of the claimed subject matter and, therefore, the ’260 patent is
entitled to the benefit of the filing date of the ’167 patent. Reply 7. As
Petitioner recognizes (Reply 6), a claim in an application is entitled, under
35 U.S.C. § 120, to the benefit of the filing date of an earlier filed
application only if the disclosure of the earlier application provides support
for the claims in the later application, as required by 35 U.S.C. § 112. 35
U.S.C. § 120; In re Chu, 66 F.3d 292 (Fed. Cir. 1995).
Petitioner’s argument consists of a single paragraph identifying claim
numbers and locations where the ’167 patent purportedly describes the
subject matter of most, but not all, of the claims at issue and a citation to a
single paragraph in its declarant’s supplemental declaration supporting
Petitioner’s Reply. Reply 7 (listing claims 2, 8, 9, 11, and 14–18, but not
listing claims 5 and 12; citing Ex. 1020 ¶ 16).
Even if we were to find that Petitioner’s citation to two pages of its
declarant’s testimony, without explanation, does not amount to improper
incorporation by reference, the testimony of Petitioner’s declarant,
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Leonard J. Forys, Ph.D., is insufficient to show one of ordinary skill in the
art was in possession of the subject matter of the claims at issue. See 37
C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from
one document into another document.”).
First, the testimony of Petitioner’s declarant, Dr. Forys, is conclusory,
merely quoting some portions of the ’260 patent without adequately
explaining how the quoted portions relate to the subject matter recited by the
claims. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose
the underlying facts or data on which the opinion is based is entitled to little
or no weight.”). Moreover, during cross-examination Dr. Forys explained
his analysis, “I didn’t do a detailed analysis. . . . This is a cursory review. I
am sure if I had more time I would find more, but this generally points to
that fact.” Ex. 2008, 49:14–18; see Paper 22 (Motion for Observation),
Obs. 7 (citing Ex. 2008, 49:9–50:4, 51:7–9, 51:12–15). Dr. Forys continues
by calling his analysis “a very preliminary analysis.” Id. at 50:7–10 (stating
“it is a very preliminary analysis. I didn’t go to any great depth. This is
suggestive that they had possession”). Petitioner recognizes that Dr. Forys
“didn’t do a detailed analysis” and explains that this “was because ‘the
burden proof is on [Patent Owner’s declarant]’ to show” the claims at issue
are not supported by the ’167 patent. Paper 27, Petitioner’s Resp. to Obs. 10
(citing Ex. 2008, 47:23–48:13) (quoting Dr. Forys).
Second, Petitioner expressly stated in its Petition—“Petitioner does
not concede that the claims of the ’260 patent are entitled to the benefit of
the filing date of the [grandparent].” Pet. 2 n.2. Petitioner’s equivocal
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Petition statement, which is not explained or acknowledged in its Reply,
exemplifies Petitioner’s conclusory treatment of written description support
in the grandparent.
Third, Petitioner does not provide any explanation as to where the
subject matter of independent claims 1 and 10, from which the claims at
issue depend, is supported in the ’167 patent. Although independent claim 1
in each of the ’167 patent and the ’260 patent challenged here are similar,
the claim limitations are not identical. For example, challenged claim 1
recites an inmate management system and challenged claim 10 recites
receiving inmate information from different facilities. In addition, claim 1 in
the ’260 patent is directed to a computer-based system for managing inmate
information, whereas claim 1 in the ’167 patent is directed to a centralized
call processing system for providing call processing services to multiple
prison facilities. Similarly, independent claim 10 in the ’260 patent is
directed to a method for managing inmate information at multiple facilities,
whereas method independent claim 17 in the ’167 patent is directed to a
method for processing calls for prison facilities. Petitioner has not shown
why the cited portions of the ’167 patent provide adequate support for each
limitation of each claim at issue.
For these reasons, we determine Petitioner has not demonstrated that
the claims at issue are entitled to the benefit of the filing date of the ’167
patent. Petitioner, therefore, has not met its burden to demonstrate that
Spadaro is not disqualified under § 103(c).
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3. Conclusion
Based on the foregoing, we are persuaded that under § 103(c) Spadaro
is disqualified prior art and so is not available to preclude patentability in an
obviousness challenge under § 103(a) against claims 2, 5, 8, 9, 11, 12, and
14–18. We conclude, therefore, that Petitioner has not met its burden of
persuasion to demonstrate by a preponderance of the evidence that
(i) claims 2, 8, 9, 11, 14, 16, and 17 would have been obvious over Spadaro
and Hodge, (ii) claims 5 and 12 would have been obvious over Spadaro,
Hodge, and Boykin, or (iii) claims 15 and 18 would have been obvious over
Spadaro, Hodge, and Nguyen.
B. 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 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
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by defining the term in the specification with reasonable clarity,
deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
1994). In the absence of such a definition, limitations are not to be read
from the specification into the claims. In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993).
The only term that requires express construction is “call application
management system.” Independent claim 1 recites “a call application
management system” and expressly recites the functions performed by it—
“connecting a call to or from the telephone terminals over a telephone carrier
network responsive to receiving a request for connecting the call.”
The parties dispute the broadest reasonable construction, in view of
the Specification, of “call application management system.” Patent Owner
contends, with support of embodiments described in the Specification and
support of its declarant, Robert Akl, D.Sc., the proper construction of “call
application management system” is “a system performing call processing for
a plurality of prisons.” PO Resp. 5–7 (citing Ex. 1001, 9:10–14, 9:21–29,
10:33–39; Ex. 2002 ¶¶ 35–37). In essence, Patent Owner seeks to replace
the express recitation of a function—“connecting a call to or from the
telephone terminals over a telephone carrier network responsive to receiving
a request for connecting the call”—with the non-specific term “call
processing.” Patent Owner and its declarant rely on descriptions of call
processing being performed by an embodiment of a call application
management system—call application management system 110 in
Figure 1—as support for “call processing” functions to be performed by the
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call application management system. PO Resp. 5–8 (citing Ex. 1001, 9:10–
14, 9:21–29, 10:33–39; Ex. 2002 ¶¶ 35–37). Patent Owner and Dr. Akl
contend that the name “the call application management system of Claim 1
would be understood [by one of ordinary skill in the art] to manage, from
start to finish, each call placed or received at the plurality of prisons,”
presumably because of the term “management.” Id. at 6 (citing Ex. 2002
¶ 36).
Petitioner responds that Patent Owner’s proposed construction
improperly includes call processing functionality not recited in the claim.
Reply 1–2. Patent Owner contends Dr. Forys agrees with Patent Owner’s
claim construction. Paper 22, Obs. 2. Petitioner’s declarant found Patent
Owner’s construction of a call application management system as “a system
performing call processing for a plurality of prisons” reasonable. Ex. 2008,
25:20–24. Dr. Forys, however, also testified that the “functionality being
performed by the ‘call application management system’ [is] clearly defined
within the claim [and it] is merely required to ‘connect[] a call to from the
telephone terminals over a telephone carrier network responsive to receiving
a request for connecting the call and the call being authorized being
authorized based on the inmate records provided by the inmate management
system.’” Ex. 1020 ¶ 9.
The ’260 patent does not set forth a special definition for “call
application management system.” As confirmed by Dr. Forys (id.), the plain
language of the claim specifies the function required to be performed by the
call application management system—connecting calls responsive to
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receiving a request to connect the call. Although Dr. Forys found Patent
Owner’s proposed construction to be “reasonable,” Patent Owner’s proposed
construction unnecessarily introduces the term “call processing,” which is
not recited by the claim itself and on its face seems broader than the recited
function of a call application management system—to connect a call.
We do not agree with Patent Owner that a call application
management system must perform examples of call processing described by
the Specification, but not recited in the claim. Limitations from
embodiments are not to be imported into the claims. See In re Van Geuns,
988 F.2d at 1184. Furthermore, we find that Patent Owner’s contention—
the name “the call application management system would be understood [by
one of ordinary skill in the art] to manage, from start to finish, each call
placed or received at the plurality of prisons” (PO Resp. 6)—places too
much weight on the term “management” without sufficiently addressing the
term “application.” We credit the testimony of Petitioner’s declarant, who
disagrees that call application management system is required to manage “all
call processing, ‘from start to finish.’” Ex. 1020 ¶ 8.
Therefore, in light of the plain language of the claim, the Specification
of the ’260 patent, and according the testimony of Patent Owner’s declarant
and Petitioner’s declarant appropriate weight, we construe “call application
management system” to mean a system that performs the enumerated
function—“connecting a call to or from the telephone terminals over a
telephone carrier network responsive to receiving a request for connecting
the call.”
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C. Principles of Law
To prevail in challenging claims of the ’260 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).
In that regard, an obviousness analysis “need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR, 550 U.S. at 418; see
Translogic, 504 F.3d at 1259. A prima facie case of obviousness is
established when the prior art itself would appear to have suggested the
claimed subject matter to a person of ordinary skill in the art. In re Rinehart,
531 F.2d 1048, 1051 (CCPA 1976).
We analyze the asserted grounds of unpatentability in accordance with
the above-stated principles.
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D. 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 ’260 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. 7 (citing Ex, 1003 ¶ 30); PO
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Resp. 7 (citing Ex. 2002 ¶ 39). Petitioner indicates communications system
(or comparable industry experience) is the relevant academic or industry
experience (Pet. 7), 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); In re GPAC
Inc., 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). The
prior art references, like the ’260 patent, relate to telephone communication
systems. See Ex. 1001, 1:60–62 (indicating the technical field relates to
inmate management and 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 telephony15
systems comports with the level of ordinary skill in the art reflected in the
prior art of record, which relate to telephone communication systems.
Petitioner has not explained sufficiently why the broader field of
communications systems is a more appropriate area of academic or industry

15 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. 3001).
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experience than telephony systems. Thus, we generally adopt Patent
Owner’s proposed academic or industry experience in telephony systems.
Therefore, one of ordinary skill in the art would have a Bachelor of
Science degree in electrical engineering, computer science, or an equivalent
field, as well as at least three years of academic or industry experience in
telephony systems.
E. Obviousness over Spadaro and Hodge
Of the claims not discussed above, Petitioner contends claims 1, 3, 4,
6, 7, 10, 19, and 20 are unpatentable under 35 U.S.C. § 103(a) as obvious
over the combination of Spadaro and Hodge. To support its contentions,
Petitioner provides analysis and claim charts, relying on declaration
testimony of Dr. Forys. Pet. 8–30 (citing Ex. 1003). Patent Owner
responds, relying on declaration testimony of Dr. Akl. PO Resp. 10–32
(citing Ex. 2002). Having considered the parties’ contentions and
supporting evidence, for the reasons that follow, we determine that
Petitioner has demonstrated by a preponderance of evidence that claims 1, 3,
4, 6, 7, 10, 19, and 20 are unpatentable for obviousness over the combination
of Spadaro and Hodge.
1. Summary of Spadaro
Spadaro 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, Fig. 1.
The control computer is located at the prison and provides for switching,
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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, Fig. 1.
Spadaro describes a multiple site telephone system in Figure 3, which
is set forth below:

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
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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.
Spadaro also describes telephone systems in which control functions
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.
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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
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 [three-way call detect
system] 30a after the telephony signals have been decompressed and
depacketized by the VoIP gateway 26a.” Id. at 4:32–35.
2. 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 ’260 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
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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 central site server through which “[a]ll inmate and
call information is routed.” Id. at 19:25, 37–38. According to Hodge, the
shadow workstation and the investigative 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).
3. Independent Claim 1
Independent claim 1 is a system claim that requires a networking
device, an inmate management system, and a call application management
system. The networking device is coupled to the inmate management
system and exchanges VoIP data packets with call processing gateways
located at multiple facilities. The call application management system
connects, over a telephone carrier network and under certain conditions,
calls to or from telephone terminals located at the facilities.
Petitioner, with support from its declarant, contends that the
combination of Spadaro and Hodge would have conveyed to one of ordinary
skill in the art the subject matter of claim 1. Pet. 8–9. Petitioner generally
relies on Spadaro as describing centralized call processing systems for
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prisons and Hodge as describing shared information management for
centralized prison call processing platforms. Id. at 2.
Patent Owner opposes, relying on the testimony of its declarant. PO
Resp. 10–32 (citing Ex. 2002).
Networking Device
Petitioner, with support of its declarant, contends Spadaro’s server 48
depicted in Figure 3 teaches or suggests the networking device recited in
claim 1. Pet. 8–9, 15–16. Petitioner also contends that Spadaro’s control
computers (also called “Commander™ units” after a particular model) have
“a VoIP gateway and Ethernet capability” and so teach or suggest the recited
call processing gateways, with which the networking device exchanges VoIP
data packets over communication links. Pet. 15 (citing Ex. 1004, 4:1–2).
As shown in Figure 3 (previously shown), 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 which connects the calls to a central office 34” of a Publicly
Switched Telephone Network (PSTN). Ex. 1004, 3:51–57 (emphasis
added); Pet. 8–9, 15 (citing Ex. 1003 ¶ 72). According to Petitioner’s
declarant, Spadaro’s server 48 collects and distributes “call signals between
the sites and the central office.” Ex. 1003 ¶ 72. 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
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calls to the PSTN. Relying on Dr. Forys’ testimony, Petitioner contends
“VoIP packets are collected by the server 48.” Pet. 15 (citing Ex. 1003 ¶ 72
(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”)). Accordingly, Spadaro’s server 48 receives calls
made from the sites 36, 38, 40, and 42 and connects those calls to the PSTN.
Petitioner relies on Spadaro’s statement 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.” Pet. 9, 16 (citing Ex. 1004, 3:58–61). Based
on this express description, we agree that Spadaro 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.
We do not agree with Patent Owner that Spadaro’s server 48 would be
redundant in a VoIP context. PO Resp. 17. As noted above, Spadaro
expressly states Figure 3 can be used in a VoIP context. Although Spadaro’s
server 48 might be duplicative if Petitioner’s proposed combination relied on
server 48 to connect the calls to the PSTN, that is not Petitioner’s position.
Pet. 15–16. Petitioner’s combination relies on server 48 to exchange VoIP
data packets with call processing gateways at the facilities, not for
distributing telephone signals to a public switch. Id. (citing Ex. 1003 ¶ 72).
Patent Owner also contends that Petitioner’s proposed location of
Spadaro’s server 48 is incongruent with its actual function, because server
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48 only connects analog calls to the central office 34. PO Resp. 15–16.
Patent Owner 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).
Moreover, in Petitioner’s proposed combination, Spadaro’s server 48
performs the recited functions of the networking device—to exchange VoIP
data packets with call processing gateways at the facilities. Patent Owner
does not address sufficiently that function of Spadaro’s server 48. Thus, we
do not agree with Patent Owner that the location of Spadaro’s server 48, as
indicated by Dr. Forys, in Petitioner’s proposed combination is improper.
Pet. 11; Ex 1003 ¶ 61.
Patent Owner further contends that Spadaro’s server 48 does not
perform “intelligent routing” of calls based on the content (voice or data) of
the call, as Patent Owner contends would be required in the Petitioner’s
proposed combination. PO Resp. 17 (citing Ex. 2002 ¶ 55). Dr. Akl’s
testimony does not explain sufficiently why server 48 would require “greatly
enhanced functionality” for the interpretation of Petitioner’s declarant or
why that functionality would not be an inherent part of any VoIP system,
which is disclosed in Spadaro. See Ex. 2002 ¶ 55.
Patent Owner also contends that Petitioner’s reliance on a diagram
(“Figure A”), which was created by its declarant and combines Spadaro’s
Figures 3 and 5, is improper. PO Resp. 13 (citing Pet. 10–11). According to
Patent Owner, using Spadaro’s server 48 from Figure 3 in Figure 5 to
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perform the functions of the networking device in claim 1 is “unsupported
by Figure 3, Figure 5, or any disclosure in Spadaro.” Id. at 14. According to
Patent Owner, a modification of a prior art reference would not be obvious
absent the suggestion of the desirability of the modification. Id. at 13 (citing
In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984); In re Fritch, 972 F.2d
1260, 1266 (Fed. Cir. 1992)).
Petitioner replies that Patent Owner applies “stale case law” and
argues a more recent case, Boston Scientific Scimed, Inc. v. Cordis Corp.,
554 F.3d 982 (Fed. Cir. 2009), is more relevant to the instant case.
Reply 13. In Boston Scientific Scimed, the Federal Circuit held that
limitations found in two embodiments pictured side by side (rather than in a
single embodiment) in a prior art patent rendered a claim obvious when the
combination of two embodiments does no more than yield predictable
results. Boston Scientific Scimed, 554 F.3d at 991 (citing KSR, 550 U.S. at
417 (“If a person of ordinary skill can implement a predictable variation,
§ 103 likely bars its patentability”)); see also Boston Scientific Scimed, 554
at 991. (“Combining two embodiments disclosed adjacent to each other in a
prior art patent does not require a leap of inventiveness.”).
In the combination proposed by Petitioner in the instant case,
Spadaro’s server 48 performs one of the functions for which server 48 is
used in Spadaro—receiving calls from multiple sites. The claims are
directed to the electrical arts, which 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). This further
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supports a finding of obviousness for the reasons given in Boston Scientific
Scimed. See also KSR, 550 U.S. at 416 (“[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results”). There is insufficient argument or
evidence of record that using Spadaro’s server 48 to exchange VoIP data
packets in the Petitioner’s proposed combination would have been beyond
the level of ordinary skill or would not yield predictable results.
Another factor favoring a finding of obviousness in combining
Spadaro’s Figures 3 and 5 as proposed by Petitioner is the relatively high
level of ordinary skill in the art. Innovention Toys, 637 F.3d at 1323 (“A
less sophisticated level of skill generally favors a determination of
nonobviousness . . . while a higher level of skill favors the reverse.”). For
the reasons discussed previously, the level here requires a Bachelor of
Science in electrical engineering or computer science as well as at least three
years of experience in telephony systems.
Moreover, as Petitioner correctly indicates (Reply 13–14), that
contrary to Patent Owner’s position (PO Resp. 14), Spadaro describes 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). As noted previously, Patent Owner does not
acknowledge or address sufficiently this express disclosure of Spadaro.
Additionally, to the extent that a reason to combine Spadaro’s Figures 3 and
5 using server 48 must be found in the reference itself, Spadaro discloses
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advantages of operating the embodiment including server 48 (Figure 3)
using VoIP. Ex. 1004, 3:58–61.
Therefore, we determine that Spadaro’s server 48 would have
conveyed to one skilled in the art that it exchanges VoIP data packets with
Spadaro’s control computers at the multiple sites—the function performed
by the recited networking device.
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 ’167 patent (i.e., the
grandparent of the ’260 patent). 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.”). During examination of the
application that issued as the ’167 patent, the Examiner rejected a limitation
reciting a networking device that was connected via digital data links to call
processing gateways located at prison facilities and collected VoIP data
packets associated with calls from prison facilities. Ex. 3002, 63–64 (Office
action dated January 6, 2010). Specifically, the Examiner relied on
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Spadaro’s server 4816 as teaching or suggesting that networking device. Id.
at 63–64 (Office action dated January 6, 2010 citing Spadaro, 3:50–57 for
the recited networking device). The Examiner allowed the application after
the claim was amended to add a feature unrelated to the networking device.
See id. at 31–32 (Office action dated July 21, 2010 continuing to cite
Spadaro, 3:50–57 for the recited networking device); id. at 9, 18 (applicant
advocating that the rejection of claim 1 is overcome in view of the billing
system amendment to claim 1); see also id. at 1–4 (Notice of Allowance
issued November 1, 2010).
Inmate Management System
For the recited inmate management system, Petitioner, with support of
its declarant, relies on Hodge’s description of a site server that is “connected
to multiple switchboard devices that are located in separate institutions” and
that “serves as the database location for the entire system.” Pet. 16
(citing Ex. 1005, 10:41–45; Ex. 1003 ¶ 76). At the site server, inmate
information, including user call information, financial transaction data, call
restrictions, personal identification numbers (PINs), and biometric data, is
“digitized for efficient data transfer and efficient record keeping.” Id. at 16–

16 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 Spadaro’s VoIP Gateway 26 in
combination with Hodge for teaching or suggesting the call application
management system. Compare Pet. 11, 18–19, with Ex. 3002, 32–33, 64–
65.
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17 (citing Ex. 1005, 19:39–44). Administrative workstations, located at
each facility, are used to create, edit, and monitor user accounts and
telephone calls. Id. at 17 (citing Ex. 1005, 10:35–40). Thus, according to
Petitioner and its declarant, Hodge would have taught one of ordinary skill
in the art shared data access and creation of inmate records based on data
received from different facilities. Id. at 16–18 (citing Ex. 1003 ¶¶ 77–78).
Patent Owner, with support of its declarant and citing different
portions of Hodge, concludes the opposite—that Hodge indicates that there
is not the requisite shared access. PO Resp. 18–22. Patent Owner and its
declarant, Dr. Akl, rely on Hodge’s description, which relates to a sample
screen of user information, that a “user must have a system account
established in order to make telephone calls from a specific facility” and
“[w]hen an inmate is transferred from one facility to another, only the
inmate’s account information, [class of service17], and telephone lists are
transferred to that facility.” PO Resp. 20–21 (quoting Ex. 1005, 42:14–15,
17–20); see Ex. 1005, 42:1–2. According to Patent Owner and Dr. Akl, the
need to transfer information indicates there is not shared data access across
facilities. PO Resp. 21.
Dr. Akl’s testimony does not address sufficiently the descriptions on
which Petitioner relies (Pet. 16–17)—the central site server “serves as the
database location for the entire system” and stores various data, including
user call information, call restrictions, and PINs (Ex. 1005, 10:41–45,

17 Ex. 1005, 36:24–25 (indicating “COS” is an abbreviation for “class of
service”).
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19:39–44). Pet. 16–17 (citing same). Furthermore, Patent Owner indicates
Hodge also teaches inmate information (i.e., “inmate profile”) may be stored
on the administrative workstation or the central site server. PO Resp. 21
(citing Ex. 1005, 20:57–59). Patent Owner and its declarant contend that
“[t]his would suggest to one of ordinary skill in the art that Hodge does not
disclose shared access across all facilities.” Id. We disagree because this
description in Hodge indicates that the inmate profile may be stored “in a
central site server.” Rather than supporting Patent Owner’s position, this
description in Hodge undermines Patent Owner’s position that Hodge does
not disclose shared data access to inmate records.
Weighing the arguments and evidence of Patent Owner18 and its
declarant with those of Petitioner and its declarant, we are persuaded that
Petitioner has established by a preponderance of the evidence that Hodge
would have conveyed to one of ordinary skill in the art an inmate
management system for providing shared data access of inmate records and
the creation of inmate records, as required by claim 1.
Call Application Management System
Petitioner asserts the combination of Spadaro and Hodge teach or
suggest for the recited call application management system. Pet. 18–19.
Regarding Spadaro, Petitioner relies on VoIP Gateway 26a connecting a call

18 We need not address Patent Owner’s contention that Hodge does not
disclose “inmate records . . . modified responsive to collecting second
inmate information” (PO Resp. 21–22) because no claim in the ’260 patent
recites such a limitation.
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to or from the telephone terminals over a telephone carrier network. Id. 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. (citing
Ex. 1004, 4:49–53). Furthermore, according to Petitioner, Spadaro describes
restricting telephone usage associated with a PIN, which teaches or suggests
authorizing calls based on inmate records. Id. at 19 (citing Ex. 1004, 3:35–
37).
Relying on support from its declarant, Petitioner asserts that a person
of ordinary skill in the art would understand Spadaro’s call connection as
being “responsive to receiving a request for connecting a call,” noting the
everyday experience of telephone users in which calls are placed responsive
to a request by a caller (i.e., dialing a telephone number to be called). Id.
at 18–19 (emphasis omitted)(citing Ex. 1003 ¶ 81).
Petitioner also relies on Hodge’s description of managing inmate call
restrictions at the centralized site server by comparing information in the site
server’s database with a PIN and denying access to the phone system after
enough failed attempts by the user to enter a correct PIN. Id. at 19 (citing
Ex. 1005, 10:44–45, 11:45–48). Thus, Petitioner contends the combination
of Hodge and Spadaro discloses “a call application management system
connecting a call . . . responsive to . . . the call being authorized based on the
inmate records provided by the inmate management system,” as recited in
claim 1. Id. (emphasis omitted).
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Patent Owner opposes. Furthermore, as discussed above, we have
construed “call application management system” to mean a system that
performs its enumerated function—“connecting a call to or from the
telephone terminals over a telephone carrier network responsive to receiving
a request for connecting the call.” For the reasons discussed previously, we
reject Patent Owner’s contention that additional functions must be
performed by the call application management system. Thus, we do not
agree with Patent Owner’s position (PO Resp. 23–24) that Spadaro’s VoIP
gateway 26a could not perform additional processing functions that Patent
Owner alleges are required by a call application management system.
Patent Owner also contends that the combination of Spadaro and
Hodge does not disclose the recited call application management system
because Spadaro’s VoIP gateway 26a does not have the capability to
authorize calls. PO Resp. 24. The call application management system
recited in claim 1, however, is required by the plain language of the claim
only to connect a call “responsive to receiving a request for connecting the
call and the call being authorized based on the inmate records provided by
the inmate management system.” The call application management system
itself is not required to authorize the call—only that it connects a call that
has been authorized based on the inmate records provided by the inmate
management system.
Weighing the arguments and evidence of Patent Owner and its
declarant with those of Petitioner and its declarant, we are persuaded that
Petitioner has established by a preponderance of the evidence that the
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combination of Spadaro and Hodge would have conveyed to one of ordinary
skill in the art the call management system recited in claim 1.
Reason to Combine
Having determined that Petitioner’s combination of Spadaro and
Hodge would have conveyed to one of ordinary skill in the art the limitations
in claim 1, our inquiry 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)).
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. 12 (citing Ex. 1003 ¶ 63).
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.”).
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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. 13 (citing Ex.
1003 ¶ 66). Patent Owner disagrees and contends this conclusion of
Petitioner’s declarant is unsupported and insufficient to articulate the
requisite reason to combine. PO Resp. 11. Patent Owner, however, does not
provide evidence or argument as to why Petitioner’s proposed combination
would not yield predictable results, as Petitioner’s declarant contends.
As noted by the Court in KSR, “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR, 550 U.S. at 416. Here, Petitioner relies
on the combination of Hodge’s teaching of central database for providing
shared access to inmate records created with inmate information from two
facilities with Spadaro’s centrally stored inmate PIN used for authorizing
inmate calls. This combination involves the electrical arts, which involve
predictable factors and so the record may more readily show a motivation to
combine known elements to yield a predictable result. See In re Fisher, 427
F.2d at 833 (indicating patents in the mechanical or electrical arts involve
predictable factors); Rothman v. Target Corp., 556 F.3d 1310, 1319 (Fed.
Cir. 2009) (“In the predictable arts, a trial record may more readily show a
motivation to combine known elements to yield a predictable result, thus
rendering a claimed invention obvious.”) (citing KSR, 550 U.S. at 418).
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Petitioner further contends, with support from its declarant, a person
of ordinary skill in the art would have looked to Hodge for how to store and
manage the centralized information described by Spadaro. Id. at 12–13
(citing Ex. 1003 ¶ 63). As an example, Dr. Forys indicates Spadaro’s
centralized PIN checking function requires a centrally stored inmate PIN,
but “Spadaro does not describe how such information would be created,
edited, and/or stored at the central call processing system.” Id. (citing
Ex. 1003 ¶ 63). Thus, according to Dr. Forys, one of ordinary skill in the art
would look “to Hodge, which describes how to create and edit inmate
information on a centralized call processing system.” Id. at 13 (citing
Ex. 1003 ¶ 63).
Patent Owner contends that Petitioner “does not explain the need for a
person of ordinary skill in the art to seek the separate teachings of Hodge to
understand how to create, edit and/or store information.” PO Resp. 12. We
disagree. As noted above, Petitioner indicates Spadaro uses centralized
information but does not teach how to create and edit inmate information,
and so, for that reason, would look to Hodge. Pet. 12–13. The rather high
level of ordinary skill in the art also favors a finding of obviousness for the
reasons discussed earlier.
For these reasons, we determine that Petitioner has articulated
sufficient reasoning with some rational underpinning to support the legal
conclusion that the subject matter of claim 1 would have been obvious to
one of ordinary skill in the art in view of the teachings of Spadaro and
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Hodge as combined in the manner proposed by Petitioner. See KSR, 550
U.S. at 418.
We, therefore, determine that Petitioner has shown, by a
preponderance of the 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 and Hodge. See 35 U.S.C. § 103(a).
4. Adequacy of Petitioner’s Claim Chart
for Claims 10, 19, and 20
Petitioner indicates independent claim 10 and its dependent claims 19
and 20 are method claims that include substantially the same limitations as
independent claim 1 and its dependent claims 6 and 7. Pet. 23. Petitioner
presents a claim chart that maps the limitations of claims 10, 19, and 20 to
specific portions of Spadaro and Hodge. Id. at 23–29. The cited portions of
Spadaro and Hodge in the claim chart correspond to portions of Spadaro and
Hodge used in Petitioner’s analysis of claims 1, 6, and 7 and refer back to
previous sections of analysis in the Petition. Id.
Patent Owner repeats, in its Patent Owner Response, its argument in
its Preliminary Response that the Petition is in inadequate to establish
obviousness of claims 10, 19, and 20 because 37 C.F.R. § 42.22(a)(2)
requires a petition to contain a “full statement of the reasons for the relief
requested, including a detailed explanation of the significance of the
evidence” and 37 C.F.R. § 42.6(a)(3) prohibits incorporation of arguments
from another document. Compare PO Resp. 26–28, with Paper 8 (Patent
Owner’s Preliminary Response to Petition), 24–25.
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As explained in our Decision to Institute, Petitioner’s claim charts are
adequate and do not violate 37 C.F.R. § 42.22(a)(2). Inst. Dec. 23–25.
5. Independent Claim 10
Independent method claim 10 recites various steps that are similar to
the functions recited by the independent system claim 1. For example,
claim 1 recites “inmate records created with first inmate information
collected from a first computer terminal at a first facility of the plurality of
facilities and second inmate information from a second computer terminal at
a second facility of the plurality of facilities,” whereas claim 10 recites
“receiving, from a first computer terminal at the first facility, first inmate
information associated with an inmate; receiving, from a second computer
terminal at the second facility, second inmate information associated with
the inmate; and generating an inmate record based on the first inmate
information and the second inmate information.”
In another example, claim 1 recites “an inmate management
system . . . for providing shared data access of inmate records to computer
terminals at said plurality of facilities,” whereas claim 10 recites “storing the
inmate record in the computer-based system for shared access across to the
inmate record computer terminals in the multiple facilities.” In yet another
example, claim 1 recites “connecting a call . . . responsive to . . . the call
being authorized based on the inmate records provided by the inmate
management system,” whereas claim 10 recites “connecting the call . . .
responsive to authorizing the call based on the inmate records stored in the
computer-based system.”
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In contending the subject matter of claim 10 would have been obvious
to one of ordinary skill in the art, Petitioner relies on cited portions of
Spadaro and Hodge that substantially correspond to portions of Spadaro and
Hodge used in Petitioner’s analysis of claim 1 and relies on substantially the
same arguments. Pet. 23–27.
Patent Owner contends that Hodge does not disclose “storing the
inmate record in the computer-based system for shared access across to the
inmate record computer terminals in the multiple facilities,” as recited by
independent claim 10. PO Resp. 28–29. Patent Owner relies on
substantially the same arguments made regarding the “inmate management
system . . . for providing shared data access of inmate records to computer
terminals at [multiple] facilities,” recited in claim 1. Compare PO Resp. 28–
29, with id. at 20–21. For the reasons indicated previously with respect to
claim 1, we do not agree with Patent Owner.
For the reasons previously discussed with respect to claim 1, we
determine that Petitioner by a preponderance of the evidence has
demonstrated that the subject matter recited in claim 10 as a whole would
have been obvious to one of ordinary skill in the art in view of Spadaro and
Hodge. See 35 U.S.C. § 103(a).
6. Dependent Claims 3, 4, 6, 7, 19, and 20
Claim 3, which depends from independent claim 1, additionally
recites “wherein said inmate records comprise a call record associated with
inmates.” For this feature, Petitioner relies on Hodge’s teaching of logging
data about each call and “call detail records” that are generated for inmate
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calls and stored in a server database on the central site server. Pet. 21 (citing
Ex. 1005, 11:32, 25:49–52).
Claim 4, which depends from independent claim 1, additionally
recites “wherein said records comprise a call recording associated with
inmates.” For this feature, Petitioner relies on Hodge’s teaching recording
the telephone calls and storing the recordings in a database. Pet. 21 (citing
Ex. 1005, 10:28–31).
Claims 6 and 19, which respectively depend from independent claim 1
and independent claim 10, each additionally recite the facilities comprise
different types of facilities. For this feature, Petitioner relies on Hodge’s
teaching that “[i]t is common to utilize a controlled telephone system
capable of monitoring outgoing telephone connections in many types of
institutional environments.” Pet. 21, 29 (emphasis omitted) (citing Ex. 1005,
1:19–24). Hodge continues by providing examples, including “penal
institutions, military institutions, . . . or specific types of government
institutions.” Id. Petitioner’s declarant testifies that:
[because] the claimed computer system is ‘for managing inmate
information,’ [it would have been obvious to a person of
ordinary skill in the art that] . . . two different types of
institutions associated with managing inmate information
would likely have interests in the same information and call
processing functions (e.g., three way call detection, PIN
checking, etc.).
Ex. 1003 ¶ 94 (emphasis omitted); see also Pet. 21 (discussing and citing
Ex. 1003 ¶ 94). Petitioner’s declarant then concludes that “it would have
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been obvious for a government institution (e.g., police, Court system) to
share data with prison facilities.” Id.
Claims 7 and 20, which respectively depend from independent claim 1
and independent claim 10, each require controlling access to the inmate
records based on logon information received from the computer terminals.
For this feature, Petitioner, with support of its declarant, relies on Hodge’s
teaching that “only authorized staff members may have access to customize
system settings, based upon individual staff member security levels” and the
staff member levels may be “determined when a user first logs into the
system . . . based on username and the access level that has been set for each
user name by a user manager.” Pet. 22 (quoting Ex. 1005, 36:19–24)
(citing Ex. 1003 ¶ 96).
Patent Owner does not advance arguments particular to the subject
matter additionally recited in claims 3, 4, 6, 7, 19, and 20. Having reviewed
the papers submitted by Petitioner and Patent Owner and the evidence cited
therein, we determine that Petitioner has demonstrated by a preponderance
of the evidence that the combination of Spadaro and Hodge would have
conveyed to one of ordinary skill in the art the subject matter of claims 3, 4,
6, 7, 19, and 20.
7. Conclusion of Obviousness over Spadaro and Hodge
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 1, 3, 4, 6, 7, 10, 19,
and 20 and the teachings of Spadaro; (3) the level of ordinary skill in the art;
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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 the evidence, that the subject matter
recited in each of claims 1, 3, 4, 6, 7, 10, 19, and 20 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).
F. Obviousness over Spadaro, Hodge, and Cree
Petitioner contends claim 13 is unpatentable under 35 U.S.C. § 103(a)
as obvious over Spadaro, Hodge, and Cree relying on declaration testimony
of Dr. Forys. Pet. 31–32 (citing Ex. 1003). Patent Owner opposes, relying
on declaration testimony of Dr. Akl. PO Resp. 40–43 (citing Ex. 2002).
Cree is a patent that describes an inmate messaging system for
notifying an inmate in a prison facility of messages received from a caller
outside the prison facility. Ex. 1008, Abstract. Cree also describes “an
active list of inmates” that may be contacted by a remote caller. Id. at 5:51–
52. An active list of inmates is included for each account in an account
database. Id. at 5:50–51. The active list is updated regularly “to account for
the release or transfer of inmates.” Id. at 5:55–58.
Claim 13, depends from independent claim 10 and additionally recites
“modifying said inmate record responsive to transferring the inmate from
one facility of the multiple facilities to another facility of the multiple
facilities.” For the reasons discussed previously regarding independent
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claim 10, we determined that Petitioner had demonstrated by a
preponderance of the evidence that the combination of Spadaro and Hodge
would have conveyed to one of ordinary skill in the art the limitations
recited in independent claim 10. Notably with regard to claim 13, Petitioner
relies on Hodge as teaching creating and editing inmate records, as required
by independent claim 10. See, e.g., Pet. 25–26 (citing Ex. 1005, 10:19–22,
10:35–37, 10:41–48, 19:37–44).
1. Modifying Said Inmate Records Responsive to Inmate Transfer
Petitioner contends that Cree’s disclosure of an active list of inmates
stored in a database that is updated when inmates are transferred, in
combination with Spadaro and Hodge, would have rendered obvious
claim 13. Pet. 32. Petitioner also relies on Hodge’s description that inmate
account information is transferred when the inmate is transferred to another
facility. Id. at 31–32 (citing Ex. 1005, 42:17–20).
Patent Owner opposes, contending that Cree does not disclose an
inmate record that is modified responsive to the transfer of an inmate. PO
Resp. 42. Rather, according to Patent Owner, Cree only discloses updating
information associated with a remote caller, not an inmate, upon transfer of
an inmate. Id.
Patent Owner’s contentions unduly focus on only capabilities
described in Cree. First, this is inconsistent with Petitioner’s asserted
ground, which also relies on Hodge for teaching inmate records. Patent
Owner does not acknowledge, much less address sufficiently, that the “said
inmate records” recited in dependent claim 13 are the inmate records for
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which Petitioner relies on Hodge. Specifically, Petitioner relies on Hodge
for the teaching creating and editing inmate records and transferring inmate
information to the new facility when an inmate is transferred. Pet. 31; see
also id. at 25–26 (citing Ex. 1005, 10:19–22, 10:35–37, 10:41–48, 19:37–
44); Reply 23 (reiterating its combination of Hodge and Cree as relying on
Hodge for the creation and modification of inmate records (citing Ex. 1005,
10:35–46) and relying on Cree for modifying records based on transfer of
inmates (citing Ex. 1008, 5:55–58)). Petitioner relies on Cree as teaching
updating inmate information responsive to the transfer of an inmate. Pet. 31.
Second, Patent Owner’s contention amounts to an attack on the
teaching of Cree alone, without sufficient consideration of what the teaching
of Cree in combination with the teaching of Hodge would have suggested to
one of ordinary skill in the art regarding the claimed subject matter as a
whole. We find this approach unpersuasive. In re Mouttet, 686 F.3d 1322,
1333 (Fed. Cir. 2012) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981))
(“[T]he test for obviousness is what the combined teachings of the
references would have suggested to those having ordinary skill in the art.”).
Nor do we agree with Patent Owner’s assertion (PO Resp. 42) that,
during his deposition, Petitioner’s declarant, Dr. Forys, “confirmed that he
did not base his analysis on an accurate understanding of [Cree’s] active list”
(citing Ex. 2003, 255:1–5) and “Petitioner’s theory regarding the
obviousness of [claim 13] is misled by the false understanding of Dr. Forys”
(citing Ex. 2002 ¶ 92). Dr. Forys explains that he did not base his analysis
on an inaccurate understanding of Cree’s active list. Rather, as Dr. Forys
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explains in the same sentence of which a fragment was cited by Patent
Owner that his theory relies only on Cree for the “cell block telephone
number, which is the contact number of the inmate.” Ex. 2003, 255:5–7
(Declarant’s complete answer reads: “That’s my understanding, yes, but
again -- but really, all I use it for is a cell block telephone number, which is
the contact number of the inmate.”). Thus, Dr. Forys does not rely on Cree’s
active list as being associated with an inmate. Rather, Dr. Forys relies on
Cree’s active list for including inmate information (cell block telephone
number) that is updated to account for the transfer of inmates. See Pet. 32
(citing Ex. 1008, 5:55–58). This is an accurate understanding of Cree and is
not disputed by Patent Owner. See id. Accordingly, Petitioner’s theory
regarding the obviousness of claim 13 is not undermined by Dr. Forys’
understanding of the entity with which an active list is associated (i.e., a
remote caller).
Patent Owner also contends that we should defer to the Examiner’s
findings regarding Cree in the prosecution history of the ’357 patent. PO
Resp. 40–41 (citing Ex. 2006 “Excerpts from Prosecution History of [the
’357 Patent]”). Patent Owner indicates that “[e]ssentially, the Examiner
considered the exact same prior art reference for the exact same claim, citing
almost identical sections of Cree and found the claim, as allowed, was
patentable.” Id.
Patent Owner is correct that the Examiner relied on Cree in rejecting
the limitation “modifying said inmate record responsive to transferring the
inmate from one facility of the multiple facilities to another facility of the
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multiple facilities,” which is the same as the additional limitation recited in
claim 13. As explained previously, however, Petitioner’s combination relies
on Hodge for teaching modifying inmate records and on Cree for teaching
modifying inmate information when an inmate is transferred to another
facility. This combination was not before the Examiner and thus, the
Examiner did not consider “the exact same prior art reference for the exact
same claim.”
2. Reason to Combine
Petitioner contends, with support from its declarant, that one of
ordinary skill in the art would have combined the functions of Spadaro and
Hodge with those of Cree because both address inmate communications in a
prison environment and deal with the transfer of inmates between facilities.
Pet. 31–32 (citing Ex. 1003 ¶ 150); see also 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 contends the
functions of Spadaro and Hodge could have been combined with those of
Cree by using known data management and networking methods, which
would have had predictable results. Id. at 32 (citing Ex. 1003 ¶ 150). This
combination involves the electrical arts, which involve predictable factors
and, thus, the record may more readily show a motivation to combine known
elements to yield a predictable result. See In re Fisher, 427 F.2d at 833
(indicating patents in the mechanical or electrical arts involve predictable
factors); see Rothman v. Target Corp., 556 F.3d at 1310 (“In the predictable
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arts, a trial record may more readily show a motivation to combine known
elements to yield a predictable result, thus rendering a claimed invention
obvious.”) (citing KSR, 550 U.S. at 418). Another factor favoring a finding
of obviousness is the rather high level of ordinary skill in the art for the
reasons discussed earlier.
For these reasons, we determine that Petitioner has articulated
sufficient reasoning with some rational underpinning to support the legal
conclusion that the subject matter of claim 13 would have been obvious to
one of ordinary skill in the art in view of the teachings of Spadaro, Hodge,
and Cree as combined in the manner proposed by Petitioner. See KSR, 550
U.S. at 418.
3. Conclusion
We, therefore, determine that Petitioner has demonstrated, by a
preponderance of the evidence, that the subject matter recited in claim 13 as
a whole would have been obvious to one of ordinary skill in the art in view
of the combination of Spadaro, Hodge, and Cree. See 35 U.S.C. § 103(a).
III. PATENT OWNER’S MOTION FOR OBSERVATION
REGARDING CROSS-EXAMINATION TESTIMONY
Patent Owner’s observations are directed to the cross-examination
testimony of Dr. Forys obtained on May 7, 2015 and concerning his second
declaration (Ex. 1020), which was provided in support of Petitioner’s Reply.
Paper 22; Ex. 2008 (Deposition Transcript). We have considered Patent
Owner’s observations and Petitioner’s responses (Paper 27, “Obs. Resp.”) in
rendering our decision, and have accorded the testimony appropriate weight.
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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.”).
IV. CONCLUSION
Petitioner has proven by a preponderance of the evidence that
claims 1, 3, 4, 6, 7, 10, 19, and 20 of the ’260 patent are unpatentable under
35 U.S.C. § 103(a) as obvious over Spadaro and Hodge, and claim 13 is
unpatentable as obvious over Spadaro, Hodge, and Cree. Petitioner has not
shown that claims 2, 5, 8, 9, 11, 12, or 14–18 are unpatentable.
V. ORDER
Accordingly, it is hereby
ORDERED that, based on a preponderance of the evidence,
claims 1, 3, 4, 6, 7, 10, 13, 19, and 20 of U.S. Patent No. 8,340,260 B1 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:
Justin B. Kimble
Jeffrey R. Bragalone
Terry A. Saad
Nicholas C. Kliewer
BRAGALONE CONROY P.C.
jkimble@bcpc-law.com
jbragalone@bcpc-law.com
tsaad@bcpc-law.com
nkliewer@bcpc-law.com