Global Tel*Link Corporationv.Securus Technologies, Inc.

Patent Trial and Appeal Board

Oct 7, 2015

09640999 (P.T.A.B. Oct. 7, 2015)

Trials@uspto.gov Paper No. 41
571.272.7822 Filed: October 7, 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 IPR2014-00785
Patent 6,636,591 B1
_______________

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

BRADEN, 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). 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 not shown by a preponderance of the evidence that claims 1–
10 of U.S. Patent No. 6,636,591 B1 (Ex. 1001, iss. Oct. 21, 2003, “the ’591
patent”) are unpatentable. We also address the Petitioner’s Motion to
Exclude and Patent Owner’s Motion for Observation Regarding Cross-
Examination Testimony.
A. Procedural History
Global Tel*Link Corporation (“Petitioner”) filed a Corrected Petition
(Paper 4, “Pet.”) to institute an inter partes review of claims 1–10 of the
’591 patent. Securus Technologies, Inc. (“Patent Owner”) filed a
Preliminary Response (Paper 9, “Prelim. Resp.”). Pursuant to 35 U.S.C.
§ 314, we instituted an inter partes review of claims 1–10 under 35 U.S.C.
§ 103(a) as unpatentable in view of Karacki1 and Gainsboro ’8432. See
Paper 10 (“Dec. to Inst.”), 22.
After institution of trial, Patent Owner filed a Patent Owner Response
(Paper 15, “PO Resp.”), to which Petitioner filed a Reply (Paper 21,
“Reply”). In addition, Petitioner filed a Motion to Exclude. Paper 26 (“Pet.
Mot. Exclude”). Patent Owner filed an Opposition to Petitioner’s Motion to

1 Loren Karacki & Robert B. Levinson, REWARDS IN AN INSTITUTION FOR
YOUTHFUL OFFENDERS IN THE HOWARD JOURNAL OF PENOLOGY AND CRIME
PREVENTION 20–30 (1970) (Ex. 1012, “Karacki”).
2 U.S. Patent No. 7,106,843 B1, issued Sept. 12, 2006 (Ex. 1004, “Gainsboro
’843”).
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Exclude (Paper 34, “PO Exclude Opp.”), and Petitioner filed a Reply (Paper
35, “Pet. Exclude Reply”). Patent Owner also filed observations on the
cross-examination of Petitioner’s declarant (Paper 29), to which Petitioner
filed a response (Paper 33).
An oral argument was held on June 3, 2015. A transcript (“Tr.”) of
the oral argument is included in the record.3 Paper 40.
B. Related Proceedings
The parties inform us that there are no matters related to the ’591
patent. Pet. 2; Paper 7, 1; Paper 17, 1.
C. The ’591 Patent
The ’591 patent relates to a method of “affecting inmate conduct
through providing discounted telephone rates based on certain criteria.”
Ex. 1001, 1:9–11. The method requires a correctional facility to set
predetermined criteria for obtaining discounted telephone rates. Id. at 2:38–
40. The criteria can be based on any type of measurement of behavior and
points are awarded or deducted based on inmate behavior. Id. at 2:45–47.
When an inmate obtains and maintains a predetermined number of points for
a predetermined period of time, the inmate is rewarded with the privilege of
discounted telephone calls. Id. at 1:58–2:18. According to the ’591 patent,
“[w]hen an inmate receives a reduced rate for his or her telephone calls

3 The parties each filed Objections to Demonstrative Exhibits. Papers 38,
39. 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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based on good behavior, the inmate will have an incentive to maintain his or
her good behavior.” Id. at 2:52–55.
Figure 1 of the ’591 patent is reproduced below.

Figure 1 is a schematic of a telephone network connecting originating
telephone 10 and destination telephone 20, and connected to one or more
databases 18. Id. at 3:1–19. The originating telephone 10 is connected to
premises-based telecommunications system 12. Id. at 3:3–5. An outside
call made by originating telephone 10 is received by central office 14 and
routed to service bureau 16. Id. at 3:10–14. Service bureau 16 is linked to
one or more databases 18 and can route the call to destination telephone 20
via central office 22. Id. at 3:14–20. According to the ’591 patent,
databases 18 contain information that can be used to (i) determine if an
inmate qualifies for a discounted telephone rate and apply such rate to any
call purchased by the inmate, or (ii) associate a discounted telephone rate
with a PIN number or a predetermined destination number and apply such
discounted rate to the PIN or destination number. Id. at 3:42–56.
D. Illustrative Claims
As noted above, an inter partes review was instituted as to claims 1–
10 of the ’591 patent, of which claims 1 and 9 are the only independent
claims. Claims 1 and 9 are illustrative of the challenged claims and are
reproduced below (with paragraphing):
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1. A method of affecting inmate behavior within a correctional
facility comprising the steps of:
providing an identification for each inmate;
establishing a discount telephone rate;
establishing a measurement of conduct during incarceration for
the inmates, wherein said measurement is a predetermined
point total;
reducing the telephone call charge rate for inmates that meet the
measurement of conduct during incarceration for a
predetermined period of time;
maintaining a record of inmate behavior for each inmate
according to said identification;
awarding points to each inmate based on particular behavior;
and
deducting points from each inmate based on particular behavior.

9. A method of affecting inmate behavior within a correction
facility comprising the steps of:
establishing a discount telephone rate;
establishing a measurement of conduct during incarceration for
the inmates, wherein said measurement is a predetermined
point total;
reducing the telephone call charge rate for inmates that meet the
measurement of conduct during incarceration for a
predetermined period of time;
associating the reduced charge rate with at least one
predetermined destination number;
maintaining records of inmate behavior for each inmate
according to an inmate identifier;
awarding points to inmates based on particular behavior; and
deducting points from inmates based on particular behavior.
Ex. 1001, 4:29–46, 4:65–6:4.
II. DISCUSSION
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are
interpreted according to their broadest reasonable construction in light of the
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specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275–79 (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, and absent any special definitions, 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).
Although we construed the terms “reducing the telephone call charge
rate” and “establishing a discount telephone rate” in the Decision to Institute
(see Dec. to Inst. 6–8), we determine that a specific construction of these
terms is not necessary for our analysis in this Final Written Decision.
Therefore, all claim terms will be given their ordinary and customary
meaning, as would be understood by one of ordinary skill in the art at the
time of the invention.
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). To establish
obviousness of a claimed invention, all the claim limitations must be taught
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or suggested by the prior art. See CFMT, Inc. v. Yieldup Int’l Corp., 349
F.3d 1333, 1342 (Fed. Cir. 2003); In re Royka, 490 F.2d 981, 985 (CCPA
1974). A patent claim composed of several elements, however, is not
proved obvious merely by demonstrating that each of its elements was
known, independently, in the prior art. KSR, 550 U.S. at 418. In that regard,
for an obviousness analysis it can be important to identify a reason that
would have prompted one of skill in the art to combine prior art elements in
the way the claimed invention does. Id. A precise teaching directed to the
specific subject matter of a challenged claim, however, is not necessary to
establish obviousness. Id. Rather, obviousness must be gauged in view of
common sense and the creativity of an ordinarily skilled artisan. Id. 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 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).
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Petitioner’s declarant, Dr. Leonard Forys, opines that a person of
ordinary skill in the art relevant to the ’591 patent “would have an associate
degree in a technical field such as Electrical Engineering, Computer Science,
or equivalent experience and a year or two experience in
telecommunications technologies in order to be able to understand the
nomenclature and architectures of the invention and the prior art.” Ex. 1010
¶ 29. Patent Owner does not disagree with Petitioner’s assertions regarding
the level of skill in the art, nor does Patent Owner offer any contrary
explanation regarding who would qualify as a person of ordinary skill in the
art relevant to the ’591 patent. PO Resp. 12–13.
Based on our review of the ’591 patent, the types of problems and
solutions described in the ’591 patent and cited prior art, and the testimony
of Petitioner’s declarant, we conclude that a person of ordinary skill in the
art at the time of the claimed invention would have had at least a an
associate degree in Electrical Engineering, Computer Science, or a similar
discipline, and at least one year of work experience in the design and/or
development of telecommunications technologies. We further 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. Alleged Obviousness of Claims 1–10 in view of Karacki and
Gainsboro ’843
Petitioner alleges that claims 1–10 of the ’591 patent are unpatentable
under 35 U.S.C. § 103 in view of Karacki and Gainsboro ’843. Pet. 14–26.
Patent Owner disputes Petitioner’s position, arguing that the combined
references fail to teach or suggest all the elements required by the challenged
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claims and that a person of ordinary skill in the art would have had no reason
to combine references. PO Resp. 13–33. We have reviewed the Petition, the
Patent Owner Response, and Petitioner’s Reply, as well as the relevant
evidence discussed in those papers. For reasons that follow, we determine
that Petitioner has not shown by a preponderance of the evidence that claims
1–10 of the ’591 patent are unpatentable in view of Karacki and Gainsboro
’843.
1. Overview of Karacki
Karacki is directed to a behavior modification program in a
correctional facility, and specifically discloses a point system for youth
offenders. The offenders are awarded points weekly based on their
behavior, such as punctuality and productiveness, in various activities
including chore detail and school work. Ex. 1012, 23. Karacki further
discloses that these points are converted directly to “money” credited to the
offender’s accounts, which may be used for a variety of purchases, including
telephone calls. Id. at 26. According to Karacki, offenders can also be fined
points for misconduct. Id. at 24.
2. Overview of Gainsboro ’843
Gainsboro ’843 discloses a system “for managing institutional
telephone activity utilizing a computer-based telephony management unit.”
Ex. 1004, Abstract. The system in Gainsboro ’843 provides for assigning a
personal identification number or PIN to inmates so that inmates must enter
their PIN before making a call from an institution telephone. Id. at 1:54–56.
The telephone service provider delivers a telephone bill to the correctional
institution that lists the cost of each call and the PIN or name of the inmates
who made the call. Id. at 1:56–61.
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One embodiment in Gainsboro ’843 discloses a specific software
interface that allows institutional staff to vary the internal rate charged to
inmates for collect calls, as well as to control the maximum length of a call
an inmate can make and when they are allowed to make telephone calls. Id.
at 33:57–34:9; Fig. 4C. The system also allows institutional staff to set
limitations on which telephone calls will be connected, so that either i) only
calls to pre-approved telephone numbers can be made or ii) calls to restricted
telephone numbers are prohibited. Id. at 6:43–49.
Another embodiment in Gainsboro ’843 discloses a system that uses
biometric verification or voice recognition features. Id. at 7:41–42. The
system can digitize a sample of a caller’s voice or a called party’s voice;
then, at a later date, the system can compare the digitized sample with a
stored voice print, to verify the identity of the caller. Id. at 7:42–45. Such
monitoring can also be used to ensure that no unauthorized callers are
participating in a call, and to ensure that inmates are not sharing or selling
calling privileges associated with a particular PIN or inmate account to other
inmates that are subject to more limited calling privileges. Id. at 7:45–55.
According to Gainsboro ’843, the disclosed system utilizes a database
to store PINs as well as to determine the availability and the application of
discounts to calls made by specific inmates. Id. at 5:50–53; 105:26–28. The
database also stores information regarding an inmate’s telephone billing
account. An inmate may purchase credits for their telephone billing account
and the credits are applied to any calls made by the inmates. Id. at 9:44–46.
Gainsboro ’843 teaches that such an account must maintain a positive
balance. Id.
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3. Analysis
Independent claims 1 and 9 require “reducing the telephone call
charge rate for inmates that meet the measurement of conduct during
incarceration for a predetermined period of time.”
Petitioner argues that Karacki discloses a correctional facility reward
system using a predetermined point total as a measurement of conduct for
inmates, who can earn points with good behavior. Pet. 18 (citing Ex. 1012,
22); Ex. 1010 ¶ 57. Petitioner then argues that the system described in
Karacki allows a direct conversion of points to dollars, specifically, 100
points equals 1 dollar. Id. Petitioner contends that these points may be used
to pay for telephone calls, creating a 100% discount for the call as a reward
for the inmate’s accumulated good behavior. Id. (citing Ex. 1012, 26).
According to Petitioner, the system in Karacki provides reduced rates for
inmates who met a measurement of conduct without having to modify the
telephone infrastructure (Ex. 1017 ¶ 6), while Gainsboro’843 discloses an
electronic system to dynamically reduce telephone rates for inmates
(Ex. 1004, 105:26–28). Reply 3.
Petitioner contends a person of ordinary skill in the art would have
been led to combine the teachings of Karacki and Gainsboro’843, because a
skilled artisan would have recognized that Gainsboro ’843’s system, using
well-known time of day discounts, could be applied to Karacki’s inmate
reward system. Pet. 16–17; Reply 4; see Ex. 1010 ¶ 49; Ex. 1017 ¶ 12.
According to Petitioner, a person of skill in the art would have been
motivated to apply the monitoring and control system of Gainsboro ’843 to
the inmate reward system of Karacki in order to provide automated control
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of account balances for the institution, prevent transfer of points, and enable
a greater range of calling options to the inmates. Pet. 17; Ex. 1010 ¶ 49.
Petitioner supports its position with the declaration of Dr. Forys, who
testifies that
Karacki describes an incentive-based points system as a manual
way to reduce telephone rates for inmates. This allowed
Karacki to provide reduced rates for inmates who met the
measurement of conduct without having to modify the
telephone infrastructure.
Ex. 1017 ¶ 6.
* * * * *
Applying Gainsboro [’843] to Karacki, [a person of ordinary
skill in the art] would have understood that Karacki’s manual
incentive system of reduced rates for phone calls could be
automated through Gainsboro [’843]’s inmate telephone
system, and [a person of ordinary skill in the art] would have
been motivated to do so for the reasons I enumerated in my first
declaration.
Id. ¶ 9 (citing Ex. 1010 ¶¶ 47–50). Dr. Forys testifies in his first declaration
that a person of ordinary skill in the art also would have reason to combine
Gainsboro ’843 with Karacki, because Gainsboro ’843 provides automated
control of the inmates’ account balances and can vary the internal rate
charged to inmates for collect telephone calls, thereby saving the
correctional facility time and money. Ex. 1010 ¶¶ 48–50. Dr. Forys then
concludes that applying Gainsboro ’843 to Karacki would have been a
simple combination of known elements easily made by a skilled artisan to
achieve predictable results, thereby rendering the challenged claims obvious.
Id. at ¶¶ 49–50.
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Patent Owner disagrees with Petitioner’s conclusion that Karacki and
Gainsboro ’843 teach or suggest “reducing the telephone call charge rate for
inmates that meet the measurement of conduct during incarceration.” PO
Resp. 22. Patent Owner argues Karacki only mentions telephone calls in
one passing phrase (“They can buy telephone calls home, or pay for items
ordered from a mail order catalogue; they can pay to attend selected events .
. . .”) and does not disclose discounted “telephone rates” for “inmates” with
good behavior. Id. at 24 (citing Ex. 1012, 26); Ex. 2003 ¶ 68. Patent Owner
further argues that Karacki fails to even suggest establishing a discounted
telephone rate or reducing the discounted telephone rate. Id. at 22–23.
Instead, according to Patent Owner, Karacki merely teaches that youth
offenders can build up points that are exchanged for currency, whereby
normal market prices are still paid by a youth offender for goods and
services. PO Resp. 24–25 (citing Ex. 1012, 24); Ex. 2003 ¶ 69. Patent
Owner, thus, argues that Karacki is directed to the use of a “different
currency” but has no effect on the telephone rate charged to an inmate for a
phone call. PO Resp. 24. Patent Owner also contends Petitioner is
prohibited from relying on any disclosure in Gainsboro ’843 relating to
reducing telephone call charge rates, because Petitioner never mentions
Gainsboro ’843 as meeting this specific claim element. PO Resp. 25;
Tr. 27:6–12. Therefore, Patent Owner concludes that it would not have been
obvious to a person of ordinary skill in the art to use “reducing the telephone
charge rate” as recited in the challenged claims.
Patent Owner also disputes Petitioner’s conclusion that a person of
ordinary skill in the art would have had reason to combine the teachings of
Karacki and Gainsboro ’843 to arrive at the claimed invention. PO
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Resp. 13–15. First, Patent Owner contends that the references do not teach
all the limitations of the challenged claims, and therefore, a person of
ordinary skill in the art would have had no reason to combine Karacki and
Gainsboro ’843 and would not have had a reasonable expectation of success
in combining the references to arrive at the claimed invention. Id. at 14.
According to Patent Owner, Karacki teaches a system of encouraging work
and good behavior by awarding token points for students to spend on
commissary items and for other privileges. Id. at 15 (citing Ex. 1012, 22–
24). Patent Owner argues, however, that Karacki does not teach or suggest
offering discounted telephone rates to inmates for achieving a threshold
good behavior. Id. (citing Ex. 1012, 24); Ex. 2003 ¶ 56. Patent Owner
further argues that Gainsboro ’843 fails to remedy the deficiencies of
Karacki, because Gainsboro ’843 only teaches an automated telephone
access system. Id. (citing Ex. 2003 ¶¶ 51, 56). Patent Owner supports its
position with the declaration of Dr. Robert Akl, who testifies that the
combined references are missing claim limitations, thus, “[o]ne of ordinary
skill would find no reason to modify Karacki to include the automated phone
system of Gainsboro because the result would not produce the desired effect
of providing discounted telephone rates for the inmates that maintain a
behavior above a predetermined point total.” Ex. 2003 ¶ 56.
Second, Patent Owner contends that a skilled artisan would not have
reason to combine Karacki or Gainsboro ’843, because the disclosure of
Karacki teaches away from the claimed invention. PO Resp. 16–17. Patent
Owner specifically argues that Karacki teaches away from claim limitation
“reducing the telephone call charge rate” because Karacki identifies a
problem with its reward system “not[ing] that some students have
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accumulated enough points that they refuse to perform the desired
behaviors” and “[a]s points accumulate in their spending accounts over the
weeks, some [students] feel they can afford to loaf.” Id. at 16 (citing
Ex. 1012, 28). According to Patent Owner, “[i]f telephone call charge rates
are ‘reduced,’ loafing and refusal to perform desired behaviors will only
increase because the students of Karacki can afford even more calls.” Id.
(citing Ex. 2003 ¶ 57). Patent Owner argues that Petitioner never addresses
whether the combination of Karacki and Gainsboro ’843 would ensure that
“good things are being earned and not given away in an unrealistically
generous environment.” Id. at 16–17 (citing Ex. 2003 ¶ 57). Patent Owner
then concludes that Karacki teaches away from the inventions of
independent claims 1 and 9, which both require “reducing the telephone
charge rate.” Id.
Lastly, Patent Owner contends a skilled artisan would not have
combined Karacki and Gainsboro ’843, because the references lack
structural or functional similarity, and thus, could not be combined. Id. at
19–20. According to Patent Owner, Karacki fails to disclose any structure
or function related to telephone call system, and only mentions telephone
call in one phrase. Id. at 20 (citing Ex. 1012, 26). Patent Owner argues that
Petitioner has failed to show that Karacki or Gainsboro ’843 are structurally
or functionally similar enough to be combined. Id. at 19 (citing Ex. 2003
¶ 60). Therefore, Patent Owner concludes Karacki and Gainsboro ’843 are
not “properly combinable” for an obviousness challenge. Id.
A patent claim composed of several elements is not proved obvious
merely by demonstrating that each of its elements was known,
independently, in the prior art. KSR Int’l Co., 550 U.S. at 419. In that
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regard, for an obviousness analysis it can be important to identify a reason
that would have prompted one of skill in the art to combine prior art
elements in the way the claimed invention does. Id. On the record
developed at trial, we are not persuaded that Petitioner has shown by a
preponderance of the evidence that a person of ordinary skill in the art would
have had a reason to combine the references to arrive at the challenged
claims. Karacki does not disclose reducing the rate of telephone calls as
reward to an inmate for good behavior, neither does Gainsboro ’843.
Petitioner has not explained persuasively why a person of ordinary skill in
the art would have applied the behavior modification program in Karacki to
the automated calling system in Gainsboro ’843 so as to change the
telephone call rate based on behavior, which is required by the claim
limitation “reducing the telephone call charge rate for inmates that meet the
measurement of conduct during incarceration for a predetermined period of
time,” recited in each independent claim. Additionally, we are not
persuaded that one of ordinary skill in the art would have viewed the
creation of a 100% discount for the call as a reward to teach or suggest a
change or reduction in the rate for telephone calls.
Petitioner’s declarant, Dr. Forys, testifies that “Karacki describes an
incentive-based points system as a manual way to reduce telephone rates for
inmates.” Ex. 1017 ¶ 6. We disagree with Dr. Forys’ characterization of
Karacki. Karacki discloses a behavior modification program in a
correctional facility, where youth offenders are awarded points weekly based
on good behavior. Ex. 1012, 23. Karacki further discloses that these points
are converted directly to “money” credited to the offender’s accounts, which
may be used for a variety of purchases, including telephone calls. Id. at 26.
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There is no evidence of record indicating that Karacki describes an
incentive-based points system as a manual way to reduce telephone rates for
inmates.
Dr. Forys then testifies that “[a person of ordinary skill in the art]
would have understood that Karacki’s manual incentive system of reduced
rates for phone calls could be automated through Gainsboro [’843]’s inmate
telephone system.” Id. ¶ 9. Yet, Gainsboro ’843 only discloses that its
system changes telephone call rates based on call type and time of day; it
fails to disclose call rate discounts based on inmate behavior. See Ex. 1004,
33:63–34:7, 105:26–28. There is no evidence of record indicating why a
person of ordinary skill in the art would change or reduce the telephone rate
in Gainsboro ’843 based on the behavior of the inmates. Therefore, we are
not satisfied that a skilled artisan would have found it obvious to “reduc[e]
the standard telephone charge rate” as a way of applying the rewards system
of Karacki to the telecommunication system in Gainsboro ’843.
Given the testimony of Dr. Forys, we find that Petitioner’s argument
is fraught with hindsight bias. See KSR, 550 U.S. at 418 (“A patent
composed of several elements is not proved obvious by merely
demonstrating that each of its elements was, independently, known in the
prior art.”); Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342,
1368–69 (Fed. Cir. 2012) (“[Smith & Nephew] never offered evidence
articulating why a person having ordinary skill in the art would combine the
primary references to obtain the disclosed inventions.”); Innogenetics, N.V.
v. Abbott Labs., 512 F.3d 1363, 1373–74 (Fed. Cir. 2008) (“We must still be
careful not to allow hindsight reconstruction of references to reach the
claimed invention without any explanation as to how or why the references
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would be combined to produce the claimed invention.”). In the absence of
Karacki teaching telephone call rate reductions or Gainsboro ’843 teaching
telephone call rate incentives based on inmate behavior, Petitioner needed to
explain what would have led a person of ordinary skill in the art at the time
of the invention to consider tying telephone call rate discounts to inmate
behavior. Petitioner failed to provide such an explanation.
Petitioner must demonstrate obviousness by a preponderance of the
evidence. 35 U.S.C. § 316(e). After considering the parties’ arguments and
evidence, however, we are not persuaded that Petitioner has made a
sufficient showing that a person of ordinary skill would have combined the
teachings in the manner contended by Petitioner. Accordingly, we hold that
Petitioner has not shown by a preponderance of the evidence that
independent claims 1 and 9 are unpatentable under 35 U.S.C. § 103(a) for
obviousness in view of Karacki and Gainsboro ’843. For the same reasons,
we are hold Petitioner has failed to establish the unpatentability of dependent
claims 2–8 and 10 by a preponderance of the evidence.
III. MOTIONS TO EXCLUDE EVIDENCE AND MOTION FOR
OBSERVATIONS REGARDING DEPOSITION TESTIMONY
A. Petitioner’s Motion to Exclude Evidence
Petitioner filed a Motion to Exclude Evidence seeking to exclude
“Forys Exhibit 1,” which was introduced during the deposition of
Petitioner’s Declarant, Dr. Forys. Paper 26 (“Mot.”). The party moving to
exclude evidence bears the burden of proving that it is entitled to the relief
requested—namely, that the material sought to be excluded is inadmissible
under the Federal Rules of Evidence. See 37 C.F.R. §§ 42.20(c), 42.62(a).
Petitioner’s arguments on these items go to the weight to be accorded to the
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evidence. The Board is capable of determining and assigning the
appropriate weight to the evidence.
For these reasons, we deny Petitioner’s motion.
B. Patent Owner’s Motion for Observation Regarding Cross-
Examination Testimony
Patent Owner’s observations are directed to the cross-examination
testimony of Dr. Forys. Paper 29 (“Obs.”). Dr. Forys was deposed twice;
once after Patent Owner filed its Preliminary Response and again after
Petitioner filed its Reply. See Exs. 2002, 2004. We have considered Patent
Owner’s observations and Petitioner’s responses (Paper 33, “Obs. Resp.”) in
rendering our decision, and have accorded the testimony the appropriate
weight. See Obs. 1–19; Obs. Resp. 1–19.
IV. CONCLUSION
We conclude Petitioner has not shown by a preponderance of the
evidence that claims 1–10 of the ’591 patent are unpatentable under
35 U.S.C. § 103(a) for obviousness over Karacki in view of Gainsboro ’843.
Petitioner’s Motion to Exclude Forys Exhibit 1 is denied.
V. ORDER
For the reasons given, it is
ORDERED that claims 1–10 of the ’591 patent have not been found
unpatentable;
FURTHER ORDERED that Petitioner’s Motion to Exclude Forys
Exhibit 1 is denied;
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.
IPR2014-00785
Patent 6,636,591 B1

20
FOR PETITIONER:
Michael D. Specht
mspecht-PTAB@skgf.com

Michael B. Ray
mray-PTAB@skgf.com

Daniel E. Yonan
dyonan-PTAB@skgf.com

Steven W. Peters
speters-PTAB@skgf.com

STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 New York Avenue, NW,
Washington, DC 20005

FOR PATENT OWNER:
Justin B. Kimble
jkimble@bcpc-law.com

Jeffrey R. Bragalone
jbragalone@bcpc-law.com

Terry A. Saad
tsaad@bcpc-law.com

Nicholas C. Kliewer
nkliewer@bcpc-law.com

Bragalone Conroy P.C.
2200 Ross Avenue
Suite 4500-West
Dallas, TX 75201