Global Tel*Link Corporationv.Securus Technologies, Inc.

Patent Trial and Appeal Board

Feb 18, 2016

12031460 (P.T.A.B. Feb. 18, 2016)

Trials@uspto.gov Paper No. 30
571.272.7822 Filed: February 18, 2016

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 IPR2014-01283
Patent 7,805,457 B1
_______________

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

TURNER, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318 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), and 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
1–17 of U.S. Patent No. 7,805,457 B1 (Ex. 1001, “the ’457 Patent”) are
unpatentable.
A. Procedural History
Global Tel*Link Corporation (“Petitioner”) filed a Petition (Paper 1,
“Pet.”) to institute an inter partes review of claims 1–17 of the ’457 Patent.
Securus Technologies, Inc. (“Patent Owner”) filed a Preliminary Response
(Paper 7, “Prelim. Resp.”). Pursuant to 35 U.S.C. § 314(a), we instituted an
inter partes review of claims 1–17 as on the following grounds:
References Basis Claims Challenged
Crites1, Krebs2, and Hodge3 § 103 1–5 and 14–17
Crites, Krebs, Hodge, and Eisen4 § 103 6–13
See Paper 10 (“Dec.”), 18.

1 US Patent Publication No. 2003/0126470 A1, Jul. 3, 2003 (filed Dec. 23,
2002) (Ex. 1008).
2 Valdis E. Krebs, Mapping Networks of Terrorist Cells, 24(3) Connections
43-52 (2002) (Ex. 1009).
3 US Patent Publication No. 2004/0029564 A1, Feb. 12, 2004 (filed Aug. 8,
2002) (Ex. 1006).
4 US Patent Publication No. 2005/0039036 A, Feb. 17, 2005
(filed Aug. 13, 2003) (Ex. 1007).
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After institution of trial, Patent Owner filed a Patent Owner Response
(Paper 13, “PO Resp.”), to which Petitioner filed a Reply (Paper 20,
“Reply”).
An oral argument was held on September 30, 2015. A transcript of
the oral argument is included in the record.5 Paper 28, “Tr.”.

B. Related Proceedings
Petitioner informs us that the ’457 Patent is the subject of U.S. district
court case: Securus Technologies, Inc. v. Global Tel*Link Corporation,
3:13-cv-03009 (N.D. Tex.). Pet. 2.

C. The ’457 Patent
The ’457 Patent is directed to systems and methods for monitoring
activity of detainees, based on gang affiliation, through search and
correlation of one or more databases Ex. 1001, Abs. The databases that can
be searched include information such as called numbers, call billing records,
visitation records of detainees, as well as information about detainee visitors,
and funding for detainee accounts, such as commissary accounts, calling
card accounts, and communication funding accounts, which may be linked
to detainees or funding sources having a known gang affiliation. Id. at 2:3–
20. The system allows “investigators to identify other gang members to
assist in crime investigations for inside and outside the facility walls.” Id. at

5 The parties filed Objections to Demonstrative Exhibits. Papers 26, 27. 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 only considered to the extent they are consistent with those
arguments and evidence; therefore, the objections are overruled.
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1:19–20. The ’457 Patent also describes alerting an investigator upon
identifying notable events related to monitored detainees, where such alerts
can occur when a detainee utters certain words or phrases during a
monitored phone call, and allowing for real time monitoring of ongoing
calls. Id. at 2:52–67, 20:13–18.

D. Illustrative Claims
As noted above, an inter partes review was instituted as to claims
1–17 of the ’457 Patent, of which claims 1, 6, 13, and 14 are independent
claims. Claims 1 and 6 are illustrative and are reproduced below:
1. A method for monitoring activity of detainees, comprising:
identifying a detainee who is affiliated with a gang or correctional
investigation;
searching one or more databases for information associated with the
detainee, wherein the one or more databases include call record
databases, and wherein the information associated with the
detainee includes individuals called by the detainee, individuals
who visit the detainee, telephone numbers called by the detainee,
and sources of funding for the detainee's accounts;
correlating the information to identify individuals who may be
affiliated with the gang or correctional investigation; and
creating an alert that is triggered when a specified word, phrase or
investigative event is detected during a telephone call by the
detainee.

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6. A method for monitoring activity of detainees, comprising:
searching a first plurality of databases for a first level of information
associated with a detainee known to be affiliated with a security
threat group;
searching a second plurality of databases using the first level of
information to identify a second level of information;
wherein the first and second plurality of databases include call record
databases, and wherein the first and second levels of information
associated with the detainee include individuals called by the
detainee, individuals who visit the detainee, telephone numbers
called by the detainee, and sources of funding for the detainee's
accounts;
correlating the second level of information to the detainee to identify
other individuals affiliated with the security threat group; and
creating an alert that is triggered when a specified word or phrase is
detected during a telephone call by the detainee.

II. DISCUSSION
A. Claim Construction
We give claim terms their ordinary and customary meaning, as would
be understood by one of ordinary skill in the art at the time of the invention.
In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
In the Decision to Institute, we construed “database,” to encompass an
electronic source of data or information and does not encompass non-
electronic sources of data or information. See Dec. 5–6. During the course
of the trial, neither party challenged our construction of this claim term or
proffered constructions of other claim terms. PO Resp. 5; Tr. 54–55. We
see no reason to alter the construction as set forth in the Decision to Institute,
and we incorporate our previous analysis for purposes of this decision.
Therefore, for the reasons set forth in the Decision to Institute, we find the
broadest reasonable construction of “database” to encompass an electronic
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source of data or information and does not encompass non-electronic
sources of data or information.
All other claim terms are given their ordinary and customary meaning.

B. Principles of Law
To prevail in its challenges to the patentability of the claims, a
petitioner must establish facts supporting its challenges by a preponderance
of the evidence. 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 subject
matter sought to be patented 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: (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 skill in
the art; and (4) objective evidence of nonobviousness, i.e., secondary
considerations. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
We analyze the instituted grounds of unpatentability in accordance
with the above-stated principles.

C. Level of Ordinary Skill in the Art
In determining whether an invention would have been obvious at the
time it was made, we consider the level of ordinary skill in the pertinent art
at the time of the invention. Graham, 383 U.S. at 17. “The importance of
resolving the level of ordinary skill in the art lies in the necessity of
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maintaining objectivity in the obviousness inquiry.” Ryko Mfg. Co. v. Nu-
Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991).
Petitioner’s declarant, Dr. Kaza, opines that a person of ordinary skill
in the art relevant to the ’457 Patent “would have a B.S. degree in Electrical
Engineering, Computer Science, or an equivalent field as well as at least 3–5
years of academic or industry experience in information systems, or
comparable industry experience.” Ex. 1003 ¶ 20. Patent Owner does not
offer any contrary explanation regarding who would qualify as a person of
ordinary skill in the art relevant to the ’457 Patent (see generally PO Resp.)
and Patent Owner’s declarant, Dr. Akl, uses the level of skill in the art that is
very similar to that articulated by Dr. Kaza (Ex. 2003 ¶ 33).
Based on our review of the ’457 Patent, the types of problems and
solutions described in the ’457 Patent and cited prior art, and the testimony
of Petitioner’s declarant, we adopt and apply Petitioner’s definition of a
person of ordinary skill in the art at the time of the claimed invention. We
note that the applied prior art reflects the appropriate level of skill at the time
of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
(Fed. Cir. 2001).

D. Asserted Obviousness of Claims 1–5 and 14–17 in View of Crites,
Krebs, and Hodge
Petitioner contends claims 1–5 and 14–17 of the ’457 Patent are
unpatentable under 35 U.S.C. § 103 in view of Crites, Krebs, and Hodge.
Pet. 12–32. Patent Owner disputes Petitioner’s position, arguing that
Petitioner has failed to demonstrate a reason to combine the cited references,
and that the cited references fail to disclose all the elements required by the
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challenged claims. PO Resp. 9–17. We have reviewed the Petition, the
Patent Owner’s Response, and Petitioner’s Reply, as well as the relevant
evidence discussed in those papers. For reasons that follow, we determine
that Petitioner has shown by a preponderance of the evidence that the
challenged claims of the ’457 Patent would have been obvious in view of
Crites, Krebs, and Hodge.
1. Overview of Crites
Crites discloses a method and apparatus for providing inmate security
threat group information, where the term security threat group refers to a
group, alliance, gang, or inmate organization that has been determined to be
acting in concert so as to pose a threat to the public, Department of
Corrections staff, other inmates, or to the orderly administration of a
correctional institution. Ex. 1008, Abstract, 1:37–42. Crites discusses that
such affiliations may be identified through associations with known
members by monitoring the inmate’s telephone calls. Id. at 1:45–49.
Crites’ system uses security threat group database server 210 to obtain
and store records of inmate calls and determines correlations, where the
latter may occur automatically. Id. at 4:35–41. In one example, an
investigator may determine whom an inmate has been calling, determine
other inmate activity in connection with the phone number(s) called, and
determine how many other inmates have been calling the numbers that the
specific inmate is calling. Id. at 5:62–6:7. The system also allows for a
determination to be made as to whether the monitored communications meet
the qualifications for being flagged as a security threat, and a designated
party may be notified and/or a filtered or unfiltered report may be generated.
Id. at 10:28–38.
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Petitioner acknowledges that Crites does not disclose specifically how
the above-discussed correlations are performed, and/or how the different
data are weighed in the calculations, as required by the claims but argues
that a person of ordinary skill in the art would have looked to the prior art
for how to perform such correlations and how to weigh the different data
acquired. Pet. 12. Petitioner also acknowledges that Crites does not disclose
explicitly how to monitor communications of inmates at multiple facilities,
although multiple facilities may be served, as required by the claims. Pet.
14.
2. Overview of Krebs
Krebs discloses processes for mapping covert networks. Ex. 1009,
Abstract. Krebs discloses that networks may be mapped through
investigation of records of phone calls, electronic mail, travel records, and
observation of meetings and attendance at common events. Id. at 51. Krebs
also details that bank account and money transfer records, as well as court
records, may be examined to map covert networks. Id. Krebs also discusses
the use of using possible suspects’ “ego networks” to discover additional
suspects and determine areas of overlap. Id.
Petitioner argues that ordinarily skilled artisans would have looked to
Krebs to determine how to weigh and analyze various types of information
in order to determine the strengths of relationships, and that the information
and functions of Krebs could have been combined with the system of Crites
by known methods. Pet. 12–13.
3. Overview of Hodge
Hodge discloses a secure telephone call management system for
authenticating users in an institutional facility, where access may be limited
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based on funds in a user’s account or other limitations. Ex. 1006, Abstract.
Hodge details that an inmate’s debit account may be controlled by others,
including family members, thus limiting the call volume allowed to the
inmate. Id. ¶ 7. Hodge also discloses that penal institutions should monitor
activities and communications of inmates to restrict connections to illegal
activities outside of the institutions. Id. ¶ 11. Such monitoring can include
“shadow monitoring,” where that monitoring occurs without detection,
where a called party’s phone number may be flagged, and where calls may
be automatically be recorded and/or analyzed based on spoken key words or
phrases, via voice recognition software, with alerts being sent to the proper
authorities. Id. ¶¶ 135–136.
Petitioner argues that ordinarily skilled artisans would have looked to
Hodge to determine how to funnel all of the inmate-related data through a
central site server that also provides analysis and monitoring capabilities. Id.
¶ 60; Pet. 14–15.
4. Analysis
a. Claims 1 and 14: Petitioner’s Combination of Crites,
Krebs, and Hodge
Petitioner provides citations to the references and analysis explaining
how the combination of Crites, Krebs, and Hodge would have conveyed to
one of ordinary skill in the art each limitation recited in independent claims
1 and 14 of the ’457 Patent. Pet. 16–20, 23–26. We determine that, for the
reasons described below, Petitioner has established by a preponderance of
the evidence that the combination of Crites, Krebs, and Hodge would have
conveyed to one of ordinary skill in the art the method of monitoring activity
of detainees recited in claim 1 and the method of configuring an alert recited
in claim 14.
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Identifying a detainee
For the recited “identifying a detainee” limitation in claim 1,
Petitioner relies on Crites description of identifying unknown members of a
security threat group by first identifying a known member of the group, such
as through monitoring inmate telephone calls. Id. at 16 (citing Ex. 1008,
1:45–49).
Searching . . . for information associated with the detainee
For the recited “searching one or more databases for information
associated with the detainee” limitation, Petitioner relies on the combination
of Crites, Krebs, and Hodge. Id. at 16–19 (citing Ex. 1008, 3:66–4:10, 4:35–
44). Crites describes a databases of known gang information and
affiliations, a database of information about inmates of a correctional
facility, and “a security threat group database server,” which includes
telephone call records of inmates. Ex. 1008, 3:66–4:10, 4:35–39. Crites
also describes using the security threat group database to identify calls of an
inmate associated with a security threat group (id. at 4:41–44), which
Petitioner contends would have conveyed to one of ordinary skill in the art
“searching one or more databases for information associated with the
detainee” identified as being affiliated with a gang or correctional
investigation, as required by claim 1.
Information associated with the detainee
For the various types of information associated with the detainee
recited in claim 1, Petitioner relies on Crites’s call record information, that
includes the name of the inmate and numbers called, as conveying to one of
ordinary skill in the art “information associated with the detainee
includes . . . telephone numbers called by the detainee.” Pet. 17 (citing
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Ex. 1008, 1:53–56). According to Petitioner, Crites’s description that, as
part of its security threat group database search functionality, a “billing
name and address . . . could be displayed with the called number” would
have conveyed to one of ordinary skill in the art that the information
associated with the detainee includes “individuals called by the detainee.”
Id. at 17–18 (citing Ex. 1008, 8:50–51).
Petitioner contends Krebs and Hodge would have conveyed to one of
ordinary skill in the art that information associated with the detainee
includes information about “sources of funding for the detainee’s accounts,”
as recited in claim 1. Id. at 18–19. Petitioner relies on Hodge’s secure
telephone call management system, for a prison or other type of institutional
facility, which includes accounting software capable of limiting call access
based on funds in an inmate’s account. Id. at 18 (citing Ex. 1006, Abstract).
Petitioner also relies on Hodge’s description that inmate telephone accounts
may be funded by family members. Id. at 19 (citing Ex. 1006, ¶¶ 6–7).
Petitioner further relies on Kreb’s suggestion to monitor bank records to help
identify co-conspirators. Id. at 18 (citing 1009, Table 4).
Lastly for the various types of information associated with the
detainee recited in claim 1, Petitioner contends that the combination of
Crites and Krebs would have conveyed to one of ordinary skill in the art
“information associated with the detainee includes . . . individuals who visit
the detainee.” Reply 12–16; Pet. 18. Petitioner relies on Krebs’s disclosure
that mapping covert networks can benefit from data sources about covert
collaborators including “observation of meetings and attendance at common
events.” Pet. 18 (citing 1009, Table 4). Petitioner contends, with support
from Dr. Kaza’s testimony, that “[w]hen combining Krebs with Crites, it
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would have been obvious to one of ordinary skill in the art to apply Krebs’s
directive to factor in-person meetings to the personal visitations that are
privileged to correctional facility inmates.” Id. at 18 (citing Ex. 1003 ¶ 67).
Thus, Petitioner’s position is that Krebs’ disclosure of the benefits of
considering in-person meetings in detecting co-conspirators would have
conveyed to one of ordinary skill in the art the inclusion of individuals who
visit the detainee in information associated with the detainee.
Correlating the information
For the limitation “correlating the information to identify individuals
who may be affiliated with the gang or correctional investigation,” Petitioner
relies on Crites. Pet. 19–20 (citing Ex. 1008, 4:35–40, 5:62–6:3, 6:22–25).
Crites describes determining correlations using the security threat group
database server to identify inmates who call a telephone number associated
with a particular threat group and determining other correlations by
performing “an investigative query of the database.” Ex. 1008, 4:35–50.
Creating an alert that is triggered
Petitioner contends Hodges discloses “creating an alert that is
triggered when a specified word, phrase or investigative event is detected
during a telephone call by the detainee,” recited in claim 1. Pet. 20 (citing
Ex. 1006 ¶ 136). Hodges’ describes that the central site server, in the secure
telephone call management system, monitors calls and alerts proper
authorities when certain key words or phrases are spoken. Ex. 1006 ¶ 136.
With respect to independent claim 14, that claim is directed to a
method of configuring an alert, having many of the same elements recited in
claim 1, and Petitioner relies on much of that same information discussed
above. Pet. 23–26. Petitioner identifies that a determination is made
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whether the monitored telephone calls meet the qualifications for being
flagged as a security threat, and a designated party is notified of that threat in
Crites. Pet. 23–24; Ex. 1008, 10:34–38, 45–47, 54–57. This disclosure also
is relied upon by Petitioner as disclosing the “notifying a user” step of claim
14. Pet. 25–26. The claim steps of “identifying one or more parameters
associated with a detainee” and “monitoring records comprising the one or
more parameters,” have direct analogs to the steps of claim 1 discussed
above, and Petitioner relies on the same disclosure. Id. at 24. Similarly, for
the limitation specifying what the records include, Petitioner relies on the
same subject matter as discussed above information associated with the
detainee. Id. at 24–25. With respect to the creating an alert that is triggered
when a specified word or phrase is detected, Petitioner relies on Hodge and
its disclosure of passive monitoring, and voice recognition software that may
alert the proper authorities that a violation has occurred. Id. at 26; Ex. 1006
¶¶ 14, 136.
b. Claims 2–5 and 15–17
Petitioner contends, citing to the prior art and relying on Dr. Kaza’s
testimony, the combined disclosures of Crites, Krebs, and Hodge, as
summarized above, teaches or suggests each limitation of dependent claims
2–5 and 15–17 of the ’457 Patent. Pet. 20–23, 26–28. After consideration
of the language recited in claims 2–5 and 15–17 of the ’457 Patent, the
Petition, the Patent Owner Response, and Petitioner’s Reply, as well as the
relevant evidence discussed in those papers, we find that one of ordinary
skill in the art would have considered these dependent claims obvious over
Crites, Krebs, and Hodge for the reasons stated in the Petition.

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c. Rationales to Combine Crites, Krebs, and Hodge
As discussed in detail previously, Petitioner contends the combined
disclosure of Crites, Krebs, and Hodge teaches or suggests each limitation of
claims 1–5 and 14–17 of the ’457 Patent. Pet. 9–28. Petitioner asserts that
both Crites and Krebs describes acquiring information related to calling
records of suspect groups such that “[a] person of ordinary skill in the art
would have looked to the prior art for how to perform such correlations and
how to weigh the different data acquired.” Pet. 12; see Ex. 1003 ¶ 56.
Petitioner also asserts that the combination of Crites and Krebs would have
occurred according to known methods and would have been predictable.
Pet. 13. Petitioner supports its position with the declaration of Dr. Kaza,
who testifies that a desire by persons of ordinary skill in the art to perform
correlations of obtained data would have led such skilled artisans to Krebs
and incorporations of Krebs’s methods. Ex. 1003 ¶¶ 56–57.
With respect to Hodge, Petitioner asserts that Hodge is in the same
field of security threat prevention as Crites and Krebs, and that one of
ordinary skill in the art would have looked to Hodge for how to configure a
system to perform communications monitoring for multiple facilities, where
multiple facilities are specified in Crites but specific methods for monitoring
of those multiple facilities are not disclosed. Pet. 14–15; see Ex. 1003 ¶ 60.
Petitioner also asserts that the combination of Hodge with Crites and Krebs
would have occurred according to known methods and would have been
predictable. Pet. 15. Petitioner supports its position with the declaration of
Dr. Kaza, who testifies that Hodge discloses how to funnel all inmate-related
data through a central site server to provide analysis and monitoring
capabilities. Ex. 1003 ¶¶ 59–60.
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d. Analysis of Patent Owner’s Contentions Regarding
Claims 1–5 and 14–17
For claims 1 and 14, as discussed previously, Petitioner contends that
a person of ordinary skill in the art could have combined the functions of
Krebs and Hodge with the system of Crites and/or Krebs by known methods
and that the combination would have been predictable to a person of
ordinary skill in the art. Pet. 13, 15. Patent Owner argues that the Petition
and Dr. Kaza’s testimony are conclusory, are not a substitute for fact-based
analysis, and should be given no probative weight. PO Resp. 9–11. Patent
Owner continues that the arguments and evidence presented do not “explain
the how, what, and why of the proposed combinations.” Id. at 11. Petitioner
disputes these contentions pointing out that Dr. Kaza’s testimony includes
analysis and that his conclusions are the results of that analysis, citing
portions of Dr. Kaza’s testimony. Reply 1–4; see Ex. 1003 ¶¶ 59–60. Based
on our review, we credit the testimony of Dr. Kaza and we are persuaded
that the Petition provides sufficient rationale to combine the references.
We note that the Federal Circuit has viewed an “apparent reason to
combine,” in conjunction with the technical ability to optimize, as sufficient
to reach a conclusion of obviousness. Ecolab, Inc. v. FMC Corp., 569 F.3d
1335, 1350 (Fed Cir. 2009). We are persuaded that a sufficient rationale
offered to support a combination of references is highly dependent on the
natures and teachings of those references. For example, if two references
disclose nearly identical embodiments with only obvious variations, the
rationale to combine that must be offered would be lower as compared to
combining two references having few similarities or references which are
from widely different fields of endeavor.
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In the instant case, we are persuaded that the similarities of the
disclosures and aims of the cited references would have made the
combinations obvious to one of ordinary skill in the art. With respect to
Hodge and Crites, both discuss the use of their systems in penal institutions
or correctional facilities. Compare Ex. 1006 ¶ 42, with Ex. 1008, 1:63–67.
Given the similarities in purposes of the systems, one of ordinary skill in the
art would not need a high degree of motivation to incorporate one aspect of
one into the other, absent some teachings away or impossibility of the
incorporation. In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). With respect
to Hodge and Crites, we agree with Petitioner that it would have been
predictable for one of ordinary skill in the art to incorporate elements, such
as passive monitoring of Hodge (Pet. 20), into the system of Crites.
Similarly, the Petition addresses Krebs as “evidenc[ing] relationships of a
person to a threat group” (Pet. 18), which is argued as being analogous to
acquiring information related to suspect group members, as discussed in
Crites. Id.; compare Ex. 1008, 4:41–44 (discussing a security threat group),
with Ex. 1009, 49 (discussing mapping in fraud and criminal conspiracy
cases). In view of Petitioner’s suggestions that a person of ordinary skill in
the art could have used known methods to combine the disclosed functions
and the combination would have provided predictable results, we conclude
that the similarities in the cited references render the combination to be
obvious.
Patent Owner also asserts that the claims as issued were found
patentable over Crites during the prosecution of those claims. PO Resp. 6.
Patent Owner continues that “the Crites reference was specifically
considered and addressed by the Examiner during the prosecution history of
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the ’457 patent,” and that Crites “does not render obvious to one ordinarily
skilled in the art at the time of applicant’s invention nor anticipate the
combination of claimed elements including the limitations of independent
claims 1, 8, 16, and 17.” Id. (addressing application claims). We addressed
similar arguments in the Decision to Institute, where we stated that “it is not
clear that [the examiner] considered the specific disclosures of the cited
references in the Petition,” and that “the Examiner’s analysis can only be
partially helpful in terms of the specific grounds now considered.” Paper 10,
16. We remain convinced that the Examiner’s prior consideration has no
preclusive effect on considering Crites in this proceeding in a ground of
unpatentability. Here, for example, Petitioner relies on a combination of
Crites, Krebs, and Hodge for conveying the searching limitation recited in
independent claim 1. Pet. 16–20. By contrast, the Examiner determined that
Crites did not render obvious that specific limitation. Ex. 1002, 79.
Patent Owner also argues that the Petition fails to demonstrate the
disclosure of searching for “individuals called by the detainee” and
“individuals who visit the detainee,” as recited in claims 1 and 14, in the
cited references. PO Resp. 11–17. Patent Owner continues that Crites fails
to disclose individuals called by an inmate as a searchable field, where
Crites limits the list of search parameters for its database. Id. at 11–12.
Additionally, Patent Owner argues that Krebs’s disclosure of the observation
of meetings and attendance at common events is insufficient, even in
combination with Crites, to demonstrate “individuals who visit the
detainee,” and that Krebs acknowledges that the meetings and attendance
data are often impossible to gather. Id. at 14–17. We do not agree with
Patent Owner’s arguments.
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Claim 1 recites, in part, “searching one or more databases for
information associated with the detainee, wherein the one or more databases
include call record databases, and wherein the information associated with
the detainee includes individuals called by the detainee [and] individuals
who visit the detainee.” Claim 1 does not provide any recitations that any
“information associated with the detainee” must be a searchable field, only
that such information can be searched for using the one or more databases.
Thus, if a search of the records in a database can return certain information
by searching via another parameter, that certain information can be obtained
through a search of the database. We are not persuaded that claim 1 requires
more. Additionally, claim 14 does not recite a process of searching, only
monitoring of records, such that Patent Owner’s argument is not directly
applicable to claim 14.
With respect to “individuals who visit the detainee,” we credit the
testimony of Dr. Kaza and we find that Krebs discloses that observations of
meetings occur, even if some information may be impossible to gather. See
Ex. 1003 ¶ 67. We are not persuaded that the difficulty in gathering some
information would dissuade persons of ordinary skill in the art from
considering the observation of meetings and attendance at common events or
appreciating their value. Furthermore, we agree with Petitioner that any
“difficulty of observing in-person meetings vanishes,” when considered in
view of Crites where prisoner monitoring involves known inmates in a
closed environment. Reply 15. As well, claim 1 does not require that
“individuals who visit the detainee” must occur from people outside the
facility, where such internal meeting information “do not have the same
advantages as monitoring the visitations of detainees with people from
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outside of the facility.” PO Resp. 17. Although such internal information
may be less useful, we can find no such requirement recited in claims 1 and
14.
e. Conclusion
Accordingly, we hold that Petitioner has shown by a preponderance of
the evidence that claims 1–5 and 14–17 would have been obvious under 35
U.S.C. § 103 in view of Crites, Krebs, and Hodge.

E. Asserted Obviousness of Claims 6–13 - Crites, Krebs, Hodge, and
Eisen
Petitioner contends claims 6–13 of the ’457 Patent are unpatentable
under 35 U.S.C. § 103 in view of Crites, Krebs, Hodge, and Eisen. Pet. 28–
47. Patent Owner disputes Petitioner’s position with regards to these claims,
arguing that Eisen is not analogous art to the claimed invention, and that the
cited references fail to disclose all the elements required by challenged
claims 7–10. PO Resp. 17–24. We have reviewed the Petition, the Patent
Owner’s Response, and Petitioner’s Reply, as well as the relevant evidence
discussed in those papers. In view of the overview of Crites, Krebs, and
Hodge provided above (see supra Sections II.D.1–3) and for reasons that
follow, we determine that Petitioner has shown by a preponderance of the
evidence that claims 6–13 of the ’457 Patent would have been obvious in
view of Crites, Krebs, Hodge, and Eisen.
1. Overview of Eisen
Eisen discloses a method of detecting fraudulent or erroneous data
from transaction data set, where the transaction data set is queried based on
key values, with the results of the queries added to a suspect transaction
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database. Ex. 1008, Abstract. Eisen details that its underlying assumption is
that an entity submitting fraudulent transaction information may reuse at
least part of the same information from transaction to transaction. Id. ¶ 21.
In an example, Eisen discloses that if one begins with a compromised credit
card number, an email address associated therewith can be used to determine
if further uses of the address may lead to other transactions that may be
fraudulent. Id. ¶ 9. The second transaction can be linked to other potential
transactions, and so on, such that a “tree” of information combinations can
be derived from the initial data element. Id.
2. Analysis
With respect to independent claims 6 and 13, those claims are similar
to claim 1, as discussed above, but both recite that multiple databases are
searched with first, second or third levels of information, or are obtained
through the searches. With respect to elements of claims 6 and 13 similar to
elements recited in claims 1 and 14, Petitioner relies on the same disclosures
of Crites, Krebs, and Hodge discussed above with respect to the latter
claims. Pet. 33–37, 44–47. We discuss the Petitioner’s rationale for
teaching or suggesting the multiple databases and levels of information
below.
Petitioner concedes that Crites is not explicit in detailing a graduated
database search, i.e. using the results of the first search to perform a second
search, because Crites does not detail that the phone number(s) that the
inmate is calling was obtained from the first search. Pet. 29. Petitioner,
however, argues that a person of ordinary skill in the art would have looked
to the prior art on how to perform relationship analysis, which are taught by
Eisen. Id. Petitioner continues that Eisen and the other references, Crites,
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Krebs, and Hodge, are in the same field of security threat detection and use
similar network analysis methods. Id. at 32. Petitioner also argues that the
disclosure of Crites would have led ordinarily skilled artisans to the methods
of Eisen and the combination would have been predictable to a person of
ordinary skill in the art. Id.
As discussed in detail below, Petitioner contends the combined
disclosure of Crites, Krebs, Hodge, and Eisen, as summarized above, teaches
or suggests each limitation of claims 6–13 of the ’457 Patent. Pet. 33–47.
Petitioner further contends that “[a] person of ordinary skill in the art would
have been motivated to combine Crites, Krebs, and Hodge with Eisen
because Eisen is in the same field (security threat detection/prevention) and
uses a substantially similar network analysis method (identifying members
of a class based on their relationships to known class members).” Pet. 32;
see Ex. 1003 ¶ 85. Petitioner supports its position with the declaration of
Dr. Kaza, who testifies that Crites suggests performing graduated database
searches, but does not explicitly disclose how to perform such searches, such
that one of ordinary skill in the art would have applied Eisen “which
explicitly discloses how graduated database searches can be utilized to
identify associations with a known security threat group member.” Ex. 1003
¶ 85.
a. Claims 6–13
Petitioner contends the combined disclosures of Crites, Krebs, Hodge,
and Eisen, as summarized above, teaches or suggests each limitation of
independent claims 6 and 13 of the ’457 Patent. Pet. 28–37, 44–47. In
addition, Petitioner contends that the same combined disclosures teach or
suggest each limitation of dependent claims 7–12. Pet. 37–44.
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Patent Owner argues that the Petition fails to demonstrate a proper
reason to combine the reference with respect to this ground as well. PO
Resp. 9–11. We have addressed this argument above and need not respond
to it with respect to this ground as well. See supra Section II.D.4.a. Patent
Owner also argues that Eisen is not analogous art to the claimed invention,
and that the cited references fail to disclose all the elements required by
challenged claims 7–10. Id. at 17–24. We address each argument below.
i) Eisen is analogous art
Patent Owner argues that Eisen is not analogous to the claimed
invention and each of the other cited prior art references. Id. at 17–18.
Patent Owner cites to In re Klein, 647 F.3d 1341, 1348 (Fed. Cir. 2011), for
its citations of two tests to define the scope of analogous prior art. Id. In an
obviousness analysis, “[t]wo separate tests define the scope of analogous
prior art: (1) whether the art is from the same field of endeavor, regardless
of the problem addressed and, (2) if the reference is not within the field of
the inventor's endeavor, whether the reference still is reasonably pertinent to
the particular problem with which the inventor is involved.” Klein, 647 F.3d
at 1348. Patent Owner argues that Eisen is nonanalogous under either test,
because Eisen is directed to analysis to detect fraud or error based on credit
card information, different from the purpose of the ’457 Patent, and is
directed to a very different problem than the ’457 Patent. PO Resp. 19–20.
We do not agree.
Even if we were to accept that Eisen is directed to a different field of
endeavor than the ’457 Patent, we are persuaded that Eisen is reasonably
pertinent to the particular issues addressed and claimed in the ’457 Patent.
Eisen explicitly discloses how graduated database searches can be utilized to
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identify associations within a group. Pet. 30–31 (citing Ex. 1007, ¶¶ 17–21).
Crites suggests graduated database searches (Ex. 1008, 5:62–6:3), such that
looking to other references detailing those types of searches would have
been obvious to those of ordinary skill in the art. Furthermore, we agree
with Petitioner that both Crites and Eisen, as well as the ’457 Patent, utilize
the process of determining a suspect record and then searching a database
for other records having a relationship to that suspect record. Reply 7.
Furthermore, as informed by KSR, the scope of analogous art must be
construed broadly. Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed.
Cir. 2010). In addition, Dr. Akl identifies technology that is relevant to the
’457 Patent as including telecommunications and information systems or
databases (Ex. 1019, 77:4–9), which would include database systems, such
as those discussed in Eisen, that are used in fraud detection. Lastly, we
agree with Petitioner that Eisen discloses that it methods can be applied to
identify “improper transactions, entries and/or identities,” and is useful “in
rooting out terrorist operations.” Reply 6–7 (citing Ex. 1007 ¶¶ 2, 5). As
such, we are persuaded that Eisen is analogous to the claimed invention and
each of the other cited prior art references, and can be properly combined
with the other cited references in determining obviousness.
ii) Elements of claims 7–10
Patent Owner argues that Eisen fails to disclose the subject matter of
claims 7–10. PO Resp. 21–24. Patent Owner argues that “Eisen discloses
something different than what is disclosed in the ’457 patent,” because Eisen
uses key values to narrow the possible number of fraudulent transactions
down to a cluster, whereas the ’457 patent uses the obtained information to
broaden the network of possible identifications. Id. We do not agree. As
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Petitioner points out, Eisen uses the key values of the found records for
further searching to find additional records, thus “broadening” the search.
Reply. 17–18; Ex. 1003 ¶ 83. Additionally, we are not persuaded that using
information from fraudulent transactions to determine other transactions
would necessarily be narrowing as Patent Owner contests. Moreover, claims
7–10 merely detail specific first and second levels of information (i.e.,
individuals who visited the detainee, and other detainees visited by those
individuals, per claim 10) recited in claim 6, such that if the combination of
references teaches or suggest the use of first and second levels of
information, and those specific types of information, it would have been
obvious to apply those specific types of information, thus rendering claims
7–10 obvious.
b. Conclusion
After consideration of the language recited in claims 6–13 of the ’457
Patent, the Petition, the Patent Owner Response, and Petitioner’s Reply, as
well as the relevant evidence discussed in those papers, we find that one of
ordinary skill in the art would have considered these claims obvious over
Crites, Krebs, Hodge, and Eisen. Accordingly, we determine that Petitioner
has shown by a preponderance of the evidence that claims 6–13 of the ’457
Patent are unpatentable under 35 U.S.C. § 103(a) in view of Crites, Krebs,
Hodge, and Eisen.

III. CONCLUSION
We conclude Petitioner has shown by a preponderance of the evidence
that claims 1–17 of the ’457 Patent would have been obvious in view of the
following prior art references:
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Claims 1–5 and 14–17 under 35 U.S.C. § 103(a) as being unpatentable
in view of Crites, Krebs, and Hodge; and
Claims 6–13 under 35 U.S.C. § 103(a) as being unpatentable in view
of Crites, Krebs, Hodge, and Eisen.

IV. ORDER
For the reasons given, it is
ORDERED that, by a preponderance of the evidence, claims 1–17 of
the ’457 Patent are unpatentable; and
FURTHER ORDERED that because this is a Final Written Decision,
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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FOR PETITIONER:
Michael D. Specht
Michael B. Ray
Lauren C. Schleh
Jonathan Tuminaro
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
mspecht-PTAB@skgf.com
mray-PTAB@skgf.com
lschleh-PTAB@skgf.com
jtuminar-PTAB@skgf.com

FOR PATENT OWNER:
Justin B. Kimble
BRAGALONE CONROY P.C.
jkimble@bcpc-law.com