Securus Technologies, Inc.v.Global Tel*Link

Patent Trial and Appeal Board

Apr 7, 2016

12002507 (P.T.A.B. Apr. 7, 2016)

Trials@uspto.gov Paper 30
571-272-7822 Entered: April 7, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SECURUS TECHNOLOGIES, INC.,
Petitioner,

v.

GLOBAL TEL*LINK CORPORATION,
Patent Owner.
____________

Case IPR2015-00155
Patent 7,853,243 B2
____________

Before KEVIN F. TURNER, BEVERLY M. BUNTING, and
PATRICK M. BOUCHER, Administrative Patent Judges.

BOUCHER, 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
A. Background
Securus Technologies, Inc. (“Petitioner”) filed a Petition (Paper 1,
“Pet.”) pursuant to 35 U.S.C. §§ 311–319 to institute an inter partes review
of claims 1–7 of U.S. Patent No. 7,853,243 B2 (“the ’243 patent”). After
consideration of a Preliminary Response (Paper 9) filed by Global Tel*Link
Corporation (“Patent Owner”), the Board instituted trial with respect to
claims 1–6 on May 1, 2015. Paper 10 (“Dec.”).
During the trial, Patent Owner timely filed a Patent Owner Response
(Paper 19, “PO Resp.”), and Petitioner timely filed a Reply to the Patent
Owner Response (Paper 23, “Reply”). An oral hearing was held on January
11, 2016. Paper 29 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6(c). This Decision is a Final
Written Decision under 35 U.S.C. § 318(a) as to the patentability of the
claims on which we instituted trial. Based on the record before us, Petitioner
has not shown, by a preponderance of the evidence, that any claim of the
’243 patent is unpatentable.

B. The ’243 Patent
The ’243 patent was filed on December 17, 2007, and relates to
“telephone communication systems in penal institutions or similar facilities.”
Ex. 1001, col. 1, ll. 17–19. Figure 1 of the ’243 patent is reproduced below.
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Figure 1 depicts a schematic view of a call-management system configured
to operate on a wide-area network. Id. at col. 15, ll. 55–57. Within the
system, telephone bank 103 is connected to electronic switchboard device
105, which regulates calls and connects them to trunk lines 111. Id. at col.
17, ll. 63–67, col. 18, ll. 24–26. Central site server 113 routes all inmate and
call information, including each user’s call restrictions, identification
number, and biometric verification data that are used to limit access to the
system. Id. at col. 19, ll. 10–22. Among other techniques, biometric
verification may be implemented with voiceprint comparison. Id. at col. 12,
ll. 5–14, col. 15, ll. 16–20. A call processing system “controls all routing
and subsystem interaction processes required by the call management
system.” Id. at col. 22, ll. 26–28. When a user attempts to make a call, the
verification information is collected from the user so that the call can be
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“processed and approved” by components of the call processing system. Id.
at col. 22, l. 58–col. 23, l. 17. If approved, the call is connected to
associated network trunk lines 111 and outpulsed. Id. at col. 23, ll. 7–12. If
not approved, a special call treatment is returned to the user to “provide
information concerning why the call could not be completed and processed.”
Id. at col. 23, ll. 12–17.
During connected calls, the system monitors the called party for
switch hook flashes, whose detection may indicate potential activation of
three-way calling features by the called party. Id. at col. 24, ll. 32–39.
Audio recorder 117, connected to server 113, records conversations
performed under the direction of telephone call management system 101. Id.
at col. 19, ll. 39–41. The system may also implement passive recording in
which voice-recognition software is used to listen for certain key words and
phrases in a conversation. Id. at col. 14, ll. 10–18.

C. Illustrative Claim
Claim 1, the only independent claim of the ’243 patent, is illustrative
of the claims at issue:
1. A method for restricting access to a public telephone
network using a telephone call management system, said
method comprising the steps of:
assigning a first identification number to each of a
plurality of potential callers;
recording a first voice print of at least one potential
caller;
storing said first voice print and said first identification
number in a database;
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during each access attempt to said public telephone
network by said potential caller:
prompting said at least one potential caller to input a
second identification number;
recording a second voice print of said at least one
potential caller;
matching said first and second identification numbers;
comparing said second voice print with said first voice
print associated with said first identification number;
granting said at least one potential caller access to said
public telephone network to attempt to place a telephone call if
said second voice print matches said first voice print;
monitoring at least one conversation to detect the
presence of a three-way call attempt; and
recording at least one conversation between said at least
one potential caller and a third-party remotely located from said
at least one potential caller if said recording is permissible; and
detecting the presence of predetermined keywords in audio of
said at least one conversation.

D. Instituted Ground of Unpatentability
We instituted trial based on Petitioner’s asserted ground that claims 1–
6 are unpatentable under 35 U.S.C. § 103(a) over U.S. Patent No. 7,035,386
B1 (Ex. 1002, “Susen”) and U.S. Patent No. 6,064,963 (Ex. 1003,
“Gainsboro”). Dec. 13.

II. ANALYSIS
A. Claim Construction
The Board interprets claims of an unexpired patent using the broadest
reasonable construction in light of the specification of the patent in which
they appear. See 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC,
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793 F.3d 1268, 1278 (Fed. Cir. 2015) (“We conclude that Congress
implicitly approved the broadest reasonable interpretation standard in
enacting the AIA”), cert. granted sub nom. Cuozzo Speed Techs., LLC v.
Lee, 136 S. Ct. 890 (mem.) (2016).
Petitioner does not proffer an explicit construction of any term,
contending that “no construction is necessary of the ’243 patent claim
terms,” but responds in its Reply to constructions proposed by Patent Owner
for “public telephone network” and “access attempt to said public telephone
network.” Pet. 8; Reply 4–7.

1. “public telephone network”
Patent Owner contends that “public telephone network,” as recited in
the phrase “access attempt to said public telephone network,” should be
construed interchangeably with the term “public switched telephone
network” as “a network of telephone communication links and switches, not
associated with any particular person or facility, that carries telephone
signals of the general public.” PO Resp. 10–13. Petitioner responds that the
term “is well understood” without explicit construction and that Patent
Owner’s proposed construction “unnecessarily and improperly limits the
meaning” of the term. Reply 5.
We agree with Petitioner that no express construction is necessary.
Patent Owner’s expert testified at his deposition that a person of ordinary
skill would understand what is meant by “public telephone network” and
that the ’243 patent does not apply any definition of the term outside of its
normally understood definition. Ex. 1009, 110:5–111:9.
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2. “during each access attempt to said public telephone network
by said potential caller”

Independent claim 1 recites that certain steps of the method be
performed “during each access attempt to said public telephone network by
said potential caller.” Patent Owner proposes that “access attempt to said
public telephone network” be construed as “the period of time after the at
least one potential caller has initiated a calling procedure, and before the at
least one potential caller has been connected to the public telephone
network.” PO Resp. 14–16. Petitioner responds that the term “cannot be
defined by a duration of time,” “is easily understood by a person of ordinary
skill in the art,” and requires no express construction. Reply 6–7.
We agree with Petitioner that “access attempt to said public telephone
network” is not appropriately construed as a “period of time.” Nevertheless,
disagreement between the parties over the scope of the fuller phrase, “during
each access attempt to said public telephone network by said potential
caller,” requires resolution—specifically, which of the steps that follow
recitation of the “during” phrase must be performed “during each access
attempt.” A grammatically rigid reading of the claim, which includes two
colons and two instances of the word “and,” suggests an illogical
construction in which the scope of “during each access attempt” includes the
“prompting,” first “recording,” “matching,” “comparing,” “granting,”
“monitoring,” and second “recording” limitations. The parties agree that
such a construction is inappropriate, and we find it inconsistent with the
Specification of the ’243 patent because at least the “monitoring” and second
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“recording” limitations logically require a connection established within the
public telephone network before they can be performed. See PO Resp. 15–
16; Reply 19–20; Tr. 39:18–40:3 (Patent Owner acknowledging “sloppy
draftsmanship”).
Petitioner contends that, because “during each access attempt . . . ” is
followed by a colon without further punctuation or indentation, “[t]he
broadest reasonable interpretation of the claims would apply this limitation
to only the first step following the colon: ‘prompting.’” Reply 19. Patent
Owner contends instead that the “granting” limitation provides a logical
conclusion to the “access attempt” so that each of the “prompting,” first
“recording,” “matching,” “comparing,” and “granting” limitations are within
the scope of “during each access attempt.” PO Resp. 15–16; see Tr. 38:7–20
(confirming Patent Owner’s position that the “granting” limitation is within
scope). Patent Owner supports its position with testimony by Leonard J.
Forys, Ph. D., who testifies as follows:
Simply put, it is my opinion that an “access attempt” is defined
by a starting point (e.g., the beginning of the attempt) and the
point at which the “attempt” either succeeds or fails. In this case,
because the claim recites an “access attempt to said public
telephone network”, the “attempt” will succeed or fail (and thus
conclude) when the caller is granted access to, or ultimately
denied access from, the public telephone network. The period in
between these two events comprises some calling procedure in
which the caller may be asked to provide certain information,
dial the outgoing number, authenticate himself/herself, etc. The
above construction is thus supported by this common sense
approach.

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Ex. 2004 ¶ 47. We credit this testimony, and afford it greater weight on this
point than the testimony of Petitioner’s witness, Robert Akl, Ph. D., who
declined at his deposition to provide meaningful details explaining how he
arrived at his opinion that the scope of the recited “during each access
attempt . . . ” is more limited. See Ex. 2003, 46:24–48:22. We also agree
with Patent Owner that a construction that affords greater scope to “during
each access attempt” is consistent with the Specification of the ’243 patent.
See PO Resp. 14–15.
Accordingly, we construe the scope of “during each access attempt to
said public telephone network by said potential caller” as encompassing the
“prompting,” first “recording,” “matching,” “comparing,” and “granting”
steps.

B. Susen and Gainsboro
Susen “relates to a method for verifying access authorization for voice
telephony in a fixed network line or mobile telephone line as well as a
communications network having such access authorization verification.”
Ex. 1002, col. 1, ll. 9–12. Figure 3A of Susen is reproduced below.
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Figure 3A illustrates a private branch exchange connected to a public
switched telephone network. Id. at col. 8, ll. 57–59. The private branch
exchange has a plurality of extension stations, with user access authorization
to the individual extension stations monitored with an “intelligent
peripheral” assigned to the private branch exchange. Id. at col. 8, l. 59–col.
9, l. 2. The intelligent peripheral has a voice-recognition unit capable of
analyzing recorded voice signals and comparing them with previously stored
reference data records. Id. at col. 9, ll. 2–4.
Susen discloses a “procedural authentication” system that requires
voice recognition and authentication of a user before a connection is
established. Id. at col. 9, ll. 18–38. In addition, the authentication procedure
may require that a user be asked for a password or personal identification
number that is compared with an identifier stored in memory, in addition to
speech patterns being compared with stored patterns using frequency spectra
or speech dynamics. Id. at col. 10, ll. 10–14. Susen explains that, when
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recognizing continuous speech, the system preferably concentrates on
essential characteristics of the language, including consideration of key
words in the entry procedure. Id. at col. 10, ll. 43–49.
Petitioner contends that all limitations of independent claim 1 are
disclosed by this procedure, except for the “monitoring” and “recording at
least one conversation” steps. Pet. 13–22, 25. For those steps, Petitioner
cites Gainsboro, which “relates to a system for providing automatic speech
recognition integrated with a telephone control system and telephone
recording system.” Ex. 1003, col. 1, ll. 6–8. Gainsboro discloses that a
prison phone system “must be able to detect the called party’s flashing the
hook switch in order to prevent the called party from activating three way
(i.e., conference) calling, dialing another number and then connecting the
prisoner to an unauthorized phone number.” Id. at col. 3, ll. 26–29.

1. Access Attempt to Said Public Telephone Network
As Patent Owner contends, Petitioner’s reliance on its position that
the scope of the “during each access attempt . . . ” limitation is limited to the
“prompting” step results in Petitioner failing to demonstrate that other
limitations properly within that scope—namely, the “prompting,” first
“recording,” “matching,” “comparing,” and “granting” steps—are disclosed
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by Susen.1 PO Resp. 37. In its Reply, Petitioner responds that, nevertheless,
“explicit embodiments of Susen . . . require both voice authentication (i.e.
recording a second voice print) and PIN authorization (i.e. prompting for a
second identification number) to occur during each access attempt before the
connection is completed.” Reply 21. Petitioner directs our attention to the
following disclosure in Susen of “[o]ne possible structure for the
authentication procedure”:
For this purpose, the telephone channel is routed to an input of
the [intelligent peripheral]. At this point, subscriber A is asked
by the software of an intelligent voice response system to state
his name or his identifier. After that, he is asked for his password
or his personal identification number PIN. The data is compared
with the identifier stored in memory, and the speech pattern is
compared with the stored patterns either using frequency spectra
or speech dynamics. . . . After authentication in the [intelligent
peripheral], the customer is directed to a menu that requests that
he enter the desired telephone numbers.

Ex. 1002, col. 10, ll. 5–20.
Petitioner’s argument is unpersuasive because the cited portion of
Susen describes a procedure that occurs distinct from—and, therefore, not
“during”—an “access attempt to said public telephone network.” As the

1 The fact that Susen may explicitly disclose embodiments that include
access attempts to the public telephone network in which not all of the steps
are performed, as Patent Owner contends, is irrelevant. See PO Resp. 38–
39. In considering the invalidity of claims, it is not necessary for every
embodiment disclosed in a prior-art reference to meet the claim limitations.
See Hewlett-Packard Co. v. Mustek Sys., Inc., 340 F.3d 1314, 1326 (Fed.
Cir. 2003) (“[A] prior art product that sometimes, but not always, embodies
a claimed method nonetheless teaches that aspect of the invention.”).
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reproduction of Figure 3A of Susen above makes clear, the private branch
exchange is intermediary between the public telephone network and the
intelligent peripheral described as performing authentication:
FIG. 3A shows a private branch exchange (PBX), which is
connected to a public switched telephone network. The private
branch exchange (PBX) has a plurality of extension stations, of
which three are shown here. The access authorization of the
users of the individual extension stations is to be monitored
according to the present invention. For this purpose, an IP
(intelligent peripheral) is assigned to the private branch exchange
(PBX), the IP being capable of accessing the telephone line via
which signals are transmitted from one extension station to an
additional line outside the private branch exchange, and of
recording and storing the signals entered by the extension station
user. In addition, the [intelligent peripheral] has a voice
recognition unit that that is capable of analyzing the recorded
voice signal and comparing it with previously stored reference
data records.

Id. at col. 8, l. 57–col. 9, l. 4. Although Petitioner identifies disclosure of
voice authentication and PIN verification, such steps occur as described by
Susen “during the conversation in progress” or prior to an “access attempt to
said public telephone network.” See id. at col. 9, l. 67–col. 10, l. 1, col. 10,
ll. 5–17.2

2 At the oral hearing, Petitioner identified additional disclosure in Susen that
it contends “requires authentication of the user before the call is connected.”
Tr. 25:10–14. Specifically, Petitioner identified the following:
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Accordingly, we conclude that Petitioner has not demonstrated, by a
preponderance of the evidence, that all steps within the scope of the “during
each access attempt . . . ” limitation are disclosed by Susen as performed
during an “access attempt to said public telephone network.”

2. Combination of Susen and Gainsboro
In the Institution Decision, we noted that “Petitioner offers only
minimal reasoning” to support its contention that one of ordinary skill in the

As an alternative to voice recognition during the connection, the
speaker can be assigned to a billing account before the
connection is established as part of an authentication procedure
that the speaker must undergo. In this case, the telephone user is
requested to provide a voice sample, and the connection is only
established once the voice sample has been identified and the
speaker is identified as authorized.
Ex. 1002, col. 3, ll. 13–19 (emphasis added). Petitioner did not present an
argument with respect to this portion of Susen before the oral hearing, and
we accordingly do not afford it weight. See Patent Trial Practice Guide, 77
Fed. Reg. 48,756, 48,768 (Aug. 14, 2012); see also CBS Interactive Inc. v.
Helferich Patent Licensing, LLC, Case IPR2013-00033, slip op. (PTAB Oct.
23, 2013) (Paper 118). Nevertheless, we observe that, within the structure
described by Susen, the mere disclosure that certain steps occur before a
connection is established within the public telephone network does not
establish that those steps are performed “during an access attempt to said
public telephone network.” A distinction between an access attempt to the
public telephone network and a connection made within the public telephone
network is logically required by claim 1 itself, which recites “granting said
at least one potential caller access to said public telephone network to
attempt to place a telephone call if said second voice print matches said first
voice print” (emphasis added).
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art3 would combine the teachings of Susen and Gainsboro. Dec. 10. After
considering the parties’ positions as developed during the trial, we conclude
that Petitioner’s reasoning is insufficient to support its contention.
The key to supporting a conclusion of unpatentability under 35 U.S.C.
§ 103(a) is the clear articulation of reasons why the claimed invention would
have been obvious. The Supreme Court has clarified the requirements that
must be met to establish a prima facie case of obviousness, emphasizing that
the “analysis should be made explicit.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007). Although the reasoning may draw from numerous
intrinsic and extrinsic sources, conclusions of obviousness “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.” Id. (quoting In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006)).

3 We accept Petitioner’s identification of a person of ordinary skill in the art
as someone who “would have had at least a Bachelor’s Degree in Electrical
Engineering, Computer Engineering, or the equivalent and two or more
years of industry experience in a relevant field, or the academic equivalent
thereof.” Pet. 7 (citing Ex. 1005 ¶ 48). Because the claims do not recite a
prison environment, we do not adopt Patent Owner’s additional requirement
that such an individual have “one to three years of relevant work experience
with wireline communication systems for penal institutions.” See PO Resp.
7 (citing Ex. 2004 ¶¶ 36–38). Accordingly, we disagree with Patent Owner
that Petitioner’s expert, Dr. Akl, is unqualified to testify, and we do not, as a
general matter, discount Dr. Akl’s testimony. See id. at 47–58.
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In addressing the combination of Susen with Gainsboro, Petitioner
provides the following statements without further analysis regarding a
rationale for combining the references:
1. “The combination of Susen and Gainsboro teach[es] every element
of claim 1 of the ’243 patent. Gainsboro is distinguishable from Susen in
that it expressly discloses monitoring a call to detect a three-way call attempt
and detecting keywords in the call. Both prior art patents are in the same
field of telecommunications monitoring and control.” Pet. 12.
2. “Both Gainsboro and the ’243 patent are in the same field and
drawn to systems for managing institutional calls. Thus, a person of
ordinary skill in the art would be motivated to combine Susen with
Gainsboro to include monitoring said telephone call for a hook flash
indicative of three-way calling.” Id. at 23 (citing Ex. 1005 ¶ 75).
3. “Both Gainsboro and the ’243 patent are in the same field and
drawn to systems for managing institutional calls.” Id. at 32.
Petitioner supports its statements with testimony by Dr. Akl, but that
testimony repeats the statements made in the Petition with only minimal
surface changes. See Ex. 1005 ¶¶ 60, 75, 94.4 As Patent Owner contends,
these statements are also made within the context of a broad characterization
of the art, namely “managing institutional calls.” See PO Resp. 21–22. The
cursory assertion that the prior-art references are drawn from the same

4 With respect to the third statement, addressing claim 6, Dr. Akl provides
the additional conclusory assertion that “One skilled in the art would
understand that combining these references would be obvious and beneficial
in that it would enhance the security of the system.” Ex. 1005 ¶ 94.
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broadly characterized field provides insufficient analysis concerning why
and how a person of ordinary skill in the art would have modified or
combined the prior art in the manner asserted, and inadequately articulates
“reasoning with some rational underpinning to support the legal conclusion
of obviousness.” See KSR, 550 U.S. at 418 (“[I]t can be important to
identify a reason that would have prompted a person of ordinary skill in the
relevant field to combine elements in the way the claimed new invention
does.”).
Furthermore, Petitioner’s perfunctory analysis is effectively rebutted
by Dr. Forys, who testifies that “Susen and Gainsboro are directed to
unrelated concepts” and “directed to very different architectures that are not
easily combined.” Ex. 2004 ¶¶ 53, 56. We credit the testimony of Dr. Forys
more strongly than that of Dr. Akl because Dr. Forys provides explicit
reasoning to support his opinion that Susen and Gainsboro are concerned
with different implementation settings, rely on different architecture
structures, have technical incompatibilities, and are drawn from different
fields. See id. ¶¶ 52–61; 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.”).
Accordingly, we conclude that Petitioner has not demonstrated, by a
preponderance of the evidence, that one of ordinary skill in the art would
have combined the disclosures of Susen and Gainsboro in the manner
proposed.

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III. ORDER
It is
ORDERED that, based on a preponderance of the evidence, claims 1–
6 of U.S. Patent No. 7,853,243 B2 have not been shown to be unpatentable;
and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to this proceeding seeking judicial review of our decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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For PETITIONER:
Justin B. Kimble
BRAGALONE CONROY P.C.
jkimble@bcpc-law.com

For PATENT OWNER:
Michael D. Specht
Michael B. Ray
Lauren C. Schleh
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
mspecht-PTAB@skgf.com
mray-PTAB@skgf.com
lschleh-PTAB@skgf.com