Global Tel*Link Corporationv.Securus Technologies, Inc.

Patent Trial and Appeal Board

Sep 11, 2015

10642532 (P.T.A.B. Sep. 11, 2015)

Trials@uspto.gov Paper 32
571-272-7822 Entered: September 11, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

GLOBAL TEL*LINK CORPORATION,
Petitioner,

v.

SECURUS TECHNOLOGIES, INC.,
Patent Owner.
____________

Case IPR2014-00493
Patent 7,899,167 B1
____________

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

BENOIT, Administrative Patent Judge.

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

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I. INTRODUCTION
We have jurisdiction to hear this inter partes review under 35 U.S.C.
§ 6(c). This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a)
and 37 C.F.R. § 42.73. For the reasons that follow, we determine that
Petitioner has shown by a preponderance of the evidence that claims 1–21 of
U.S. Patent No. 7,899,167 B1 (Ex. 1001; “the ’167 patent”) are
unpatentable.
A. Procedural History
Global Tel*Link Corporation (“Petitioner”) filed a corrected Petition
(Paper 4; “Pet.”) for an inter partes review of claims 1–21 (“the challenged
claims”) of the ’167 patent. Patent Owner, Securus Technologies, Inc., filed
a Preliminary Response opposing institution of a review. On September 17,
2014, pursuant to 35 U.S.C. § 314(a), we instituted an inter partes review
for claims 1–21 of the ’167 patent as unpatentable under 35 U.S.C. § 103(a)
over the following references.
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Reference(s) Claims Challenged
Spadaro
1
1–7, 12, 14–19, and 21
Spadaro

and Hodge
2
8–11 and 20
Spadaro

and Bellcore
3
13
Paper 8 (“Inst. Dec.”) 20.
Subsequent to institution, Patent Owner filed a Patent Owner
Response (Paper 14; “PO Resp.”), and Petitioner filed a Reply (Paper 19;
“Reply”). Patent Owner filed observations on the cross-examination of
Petitioner’s declarant (Paper 23), to which Petitioner filed a response (Paper
24).
An oral hearing was held on June 4, 2015.
4

B. Related Matters
Petitioner represents that the ’167 patent is involved in Securus
Technologies, Inc. v. Global Tel*Link Corp., No. 3:13-cv-03009 (N.D.
Tex.). Pet. 2; see also Paper 5 (Patent Owner’s Mandatory Notice).
Petitioner also has requested inter partes review of related patents—
U.S. Patent No. 8,577,003 B2 (IPR2014-00749), U.S. Patent

1
U.S. Patent No. 7,505,406 B1, issued Mar. 17, 2009, filed July 13, 2001
(Ex. 1004) (“Spadaro”).
2
U.S. Patent No. 7,333,798 B2, issued Feb. 19, 2008, filed Aug. 8, 2002
(Ex. 1005) (“Hodge”).
3
BELLCORE, Voice Over Packet in Next Generation Networks: An
Architectural Framework, Special Report SR-4717, Issue 1 (Jan. 1999)
(Ex. 1006) (“Bellcore”).
4
At the joint request of the parties, the oral arguments for this proceeding
and IPR2014-00749 were conducted at the same time. Paper 29, 2. A
transcript of the oral hearing is included in the record as Paper 31.
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No. 8,340,260 B1 (IPR2014-00824), and U.S. Patent No. 7,529,357 B1
(IPR2014-00825).
C. The ’167 Patent
The ’167 patent, titled “Centralized Call Processing,” issued
March 1, 2011 from an application filed August 15, 2003. The ’167 patent
describes a centralized architecture for call processing that uses Voice over
Internet Protocol (“VoIP”) to carry calls from a location at which calling
services are provided to a centralized call processing platform. Ex. 1001,
Abstract, 1:38–40, 3:15–17. The call processing platform serves multiple
facilities and provides call processing functionality, such as providing call
intelligence to determine whether to allow a particular call to be continued,
as well as calling party identification, call validation, call routing, and
connection to the public switched telephone network (PSTN) or a digital
network. Id. at Abstract, 9:31–37.
Figure 1 of the ’167 patent is set forth below:
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Figure 1 illustrates call processing system 100.
Call processing system 100 includes call processing platform 101,
which communicates with facilities 150, 160, 170, 180 through network 130.
Id. at 5:41–44. Call processing gateways 140, at or near each facility 150,
160, 170, 180, convert analog signals associated with telephone
terminals 141 (or visitation telephones 143) to digital data packets sent over
network 130. Id. at 6:10–15.
Call processing platform 101 includes, among other components, call
application management system 110, which controls completing a call
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between a party using one of telephone terminals 141 (or visitation
telephones 143) and another party using telephone terminal (not shown),
over PSTN 192 or digital network 191. Id. at 8:9–65. Call processing
system 101 also includes unauthorized call activity detection system 114 to
detect establishment of an unauthorized three-way call. Id. at 9:31–48.
Billing system 112, another system of call processing system 101, collects
billing information and deducts fees from prepaid accounts. Id. at 11:56–67.
D. Illustrative Claims of the ’167 Patent
Of the challenged claims in the ’167 patent, claims 1 and 17 are
independent. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A centralized call processing system for providing call
processing services to a plurality of prison facilities,
comprising:
a networking device connected via digital data links to
call processing gateways at the plurality of prison facilities to
collect outgoing Voice over Internet Protocol (VoIP) data
packets associated with calls from the plurality of prison
facilities and to distribute incoming VoIP data packets
associated with the calls to the plurality of prison facilities, the
plurality of prison facilities located remotely from the call
processing system, each of the plurality of prison facilities
including at least one telephone terminal;
an unauthorized call activity detection system co-located
with the networking device and connected to the networking
device for detecting three-way call activity associated with the
calls placed from one or more of the plurality of telephone
terminals, the three-way call activity detection not performed at
the plurality of the prison facilities;
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a call application management system co-located with the
networking device and connected to the networking device and
the unauthorized call activity detection system for at least
processing the outgoing VoIP data packets from the plurality of
prison facilities into outgoing call signals and transmitting the
outgoing call signals to a first telephone carrier network, the
call application management system receiving incoming call
signals from the first telephone carrier network and processing
the incoming call signals into the incoming VoIP data packets
for distribution to the plurality of prison facilities by the
networking device; and
a billing system co-located with said call application
management system and located remotely from the call
processing gateways, the billing system connected to the call
application management system for providing accounting of the
calls.
Ex. 1001, 18:58–19:27.
II. ANALYSIS
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are
interpreted according to their broadest reasonable construction in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
2012); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278, 1279
(Fed. Cir. 2015) (“Congress implicitly approved the broadest reasonable
interpretation standard in enacting the AIA,” and “the standard was properly
adopted by PTO regulation.”), reh’g en banc denied, 793 F.3d 1297 (Fed.
Cir. 2015). Under that standard, claim terms are presumed to be given their
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ordinary and customary meaning as would be understood by one of ordinary
skill in the art in the context of the entire disclosure. In re Translogic Tech.,
Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). An inventor may provide a
meaning for a term that is different from its ordinary meaning by defining
the term in the specification with reasonable clarity, deliberateness, and
precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
We construe “call application management system” and discuss the
dispute over call processing in accordance with these principles. No other
terms require express construction.
Independent claim 1 is directed to a “centralized call processing
system” that includes a networking device, an unauthorized call activity
detection system, a call application management system, and a billing
system. Claim 1 further requires a particular location and particular system
connections for the call application management system—the call
application management system must be (1) “co-located with the networking
device” and (2) “connected to the networking device and the unauthorized
call activity detection system.” Claim 1 also recites functions performed by
the call application management system—(1) “processing the outgoing VoIP
data packets from the plurality of prison facilities into outgoing call signals,”
(2) “transmitting the outgoing call signals to a first telephone carrier
network,” (3) “receiving incoming call signals from the first telephone
carrier network,” and (4) “processing the incoming call signals into the
incoming VoIP data packets for distribution to the plurality of prison
facilities by the networking device.” Claim 15, which depends from claim 1,
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additionally requires the call application management system be further
configured “to process and transmit outgoing call signals from the plurality
of telephone terminals to a second telephone carrier network, the call
application management system selecting either the first telephone carrier
network or the second telephone carrier network to transmit the call signals.”
Claim 16, which depends from claim 15, further requires that the call
application management system establishes connection for the calls over the
first telephone carrier network and switches to connection over the second
telephone carrier network responsive to detecting a predetermined event.
A central dispute between the parties concerns the broadest reasonable
construction, in view of the Specification, of the recited “call application
management system.” Patent Owner contends, with support of its declarant
Dr. James L. Olivier and extrinsic evidence, the proper construction of “call
application management system” is “a system performing call processing for
a plurality of prisons.” PO Resp. 15. According to Patent Owner, “call
processing” is a term of art in telephony and is understood as “control a call
from origination, maintenance of that call, and subsequent release of that call
[and] does not include call authorization functionality.” PO Resp. 15.
Patent Owner does not identify an express disclosure of a “call
application management system” performing call processing in the way that
“call processing” is defined by Patent Owner (i.e., controlling a call from
origination, maintenance of that call, and subsequent release of that call, and
not including call authorization). See generally PO Resp. 15–16. Rather,
Patent Owner relies on the ’167 patent’s description of call application
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management system 110 as “form[ing] the heart of call processing
functionality provided by call processing platform 101,” which, according to
Patent Owner’s declarant, would be understood by one of ordinary skill in
the art as meaning “that call connection control and switching control is
performed at a centralized location.” Id. (citing Ex. 1001, 8:9–13; Ex. 2001
¶ 165).
Petitioner opposes Patent Owner’s proposed construction. Reply 3.
According to Petitioner’s declarant Dr. Leonard J. Forys, the location and
functions performed by the recited call application management system are
defined within the claim, and call application management system should be
given its ordinary and customary meaning as would be understood by one of
ordinary skill in the art in the context of the entire disclosure, using the
understandable language of claim 1. Ex. 1018 ¶¶ 6, 8; see Reply 3
(indicating “no need exists to go beyond the easily understandable language
of Claim 1”). Further, Petitioner disagrees with Patent Owner’s proposed
constructions as impermissibly narrowing claim 1 and being inconsistent
with the Specification. Reply 3.
The plain language of the challenged claims support the position taken
by Petitioner, as explained by its declarant (Ex. 1018 ¶¶ 6, 8), that an express
construction of call application management system is unnecessary. Claim 1
recites the location and connections required by the call application
management system—being co-located with the networking device and
connected to the networking device and the unauthorized call activity
detection system. Claim 1 further requires the networking device to be
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connected to call processing gateways at the prison facilities. The plain
language of claim 1 recites certain functions performed by the call
application management system—processing and transmitting VoIP data
packets in particular ways.
In contrast, the plain language of claim 1 does not recite the functions
of call processing that Patent Owner contends is required to be performed by
the call application management system—controlling a call from origination,
maintenance of that call, and subsequent release of that call, and not
including call authorization. Further, we note that claim 1 recites a “call
application management system”—not a call processing management
system.
Turning to Patent Owner’s proposed construction of call processing,
we note that, although the challenged claims recite a “centralized call
processing system,” “call processing services,” and “call processing
gateways,” none of the challenged claims recite performing “call
processing.” Moreover, Patent Owner’s proposed definition of call
processing as “control a call from origination, maintenance of that call, and
subsequent release of that call [and] does not include call authorization
functionality” (PO Resp. 15) is inconsistent with the Specification and is not
supported by the prosecution history of the application that issued as the
’167 patent.
The Specification is inconsistent with Patent Owner’s proposed
definition of call processing, because Patent Owner’s proposed definition
excludes call authorization functionality, which is expressly described by
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the ’167 patent as an example of call processing functionality. See Ex. 1001,
3:18–24 (“call processing functionality, such as . . . call validation”), 19:42–
47 (claim 7 indicates call validation involves call authorization—“the
validation system connected to said call application management system for
authorizing connecting of said calls to said first telephone carrier network”)
(emphasis added).
The Specification descriptions of call processing functionality also
indicate “call processing” is broader than defined by the Patent Owner. For
example, the Specification includes additional providing call intelligence as
a type of call processing functionality, which is not included in Patent
Owner’s proposed definition. Ex. 1001, 9:31–46. The Specification also
indicates that other elements recited in claim 1—a billing system and an
unauthorized activity detection system—work with a call application
management system to provide call processing. Id. at 7:49–59.
The Specification indicates an earlier patent application,
5
which the
’167 patent incorporates by reference, as providing “[d]etail with respect to
operation in processing providing call processing by a call application
manager.”
6
Ex. 1001, 8:28–32. The earlier patent application is inconsistent

5
U.S. Patent Application No. 10/135,878, titled “Information Management
and Movement System and Method.” Ex. 1001, 8:28–31; see also id. at
1:6–9, 33–34 (indicating the patent application number corresponding to the
patent application titled “Information Management and Movement System
and Method” and incorporation of that disclosure by reference).

6
The ’167 patent uses the term “call application management system 110”
interchangeably with “call application manager 110.” Compare Ex. 1001,
8:34–35, 37 (“call application management system 110”) with id. at 8:42–43
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with Patent Owner’s proposed definition of “call processing.” Rather, the
earlier application describes
7
call application manager 221 as providing
distance telephony, prepaid and postpaid toll calling services, telephonic
commerce, account balance verification and refill, and credit worthiness
determination. Ex. 3001, 47 (¶ 27), 52 (¶ 38). The earlier application also
depicts call application manager 110 as having modules for detainee calling,
word search, and visitation and administration phones. Id. at 52 (¶ 38). The
earlier application further discloses that “calls placed through
communication/transaction services 221” can be analyzed. Id. at 56 (¶ 47).
Neither Patent Owner nor its declarant Dr. Olivier directly addresses the
disclosure of the earlier application.
The prosecution history of the application that issued as the ’167
patent also is inconsistent with Patent Owner’s proposed definition of “call
processing.” During examination, the applicant represented that “call
processing” included detection of unauthorized calls. Ex. 1002, 299
(Applicant response to November 7, 2008 action, p. 8) (indicating “various
call processing activities including detection of unauthorized call[s] may be
performed at the call processing platform”). See Microsoft v. Proxyconn,
789 F.3d 1292, 1298 (Fed. Cir. 2015) (“The PTO should also consult the

(“call application manager 110”).
7
To be precise, the earlier application describes call application
manager 221 as operating substantially as communication/transaction
services 221, which, in turn, is described as “provide distance telephony,
prepaid and postpaid toll calling services, telephonic commerce, account
balance verification and refill, and credit worthiness determination.”
Ex. 3001, 47 (¶ 27), 52 (¶ 38).
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patent’s prosecution history in proceedings in which the patent has been
brought back to the agency for a second review.”). Applicant’s
representation does not support Patent Owner’s position that “call
processing” would have been understood by one of ordinary skill in the art
as “control a call from origination, maintenance of that call, and subsequent
release of that call [and] does not include call authorization functionality”
(PO Resp. 15).
Next, we examine extrinsic evidence and testimony proffered by
Patent Owner of how one ordinarily skilled in the art would have understood
“call processing.” Specifically, Patent Owner indicates one would have
turned to U.S. Patent No. 6,052,454 (Ex. 2004, “Kek”) to understand the
meaning of “call processing” as used in the ’167 patent and, based on the
disclosure of Kek, would have understood “call processing” as defined by
Patent Owner. See, e.g., PO Resp. 13–15. Kek is referenced in the
“Background of the Invention” section of the ’167 patent discussing
automated systems for providing call processing functions and is
incorporated by reference. Ex. 1001, 1:42–45. According to the ’167 patent,
Kek, which is titled “Telephone Apparatus With Recording of Phone
Conversations on Massive Storage,” teaches call authorization functionality
being remote to a prison facility and teaches call processing being provided
at the prison facility itself. Ex. 1001, 1:60–67, 2:7–11. Patent Owner’s
extrinsic evidence provides little probative value because it does not
comport with the detailed description of the invention in the ’167 patent—
either the ’167 patent description of call processing functionality or the
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earlier patent application’s description of a call application manager for the
reasons discussed earlier.
Weighing Dr. Oliver’s testimony supporting Patent Owner’s
contentions that call application management system performs call
processing—meaning controlling a call from origination, maintenance of
that call, and subsequent release of that call, but which does not include call
authorization functionality (PO Resp. 16 (citing Ex. 2001 ¶ 165)) against
evidence of the written description of the term in the Specification and
language of claim 1, we do not agree that call application management
system necessarily must control a call from origination, maintenance of that
call, and subsequent release of that call. It is within our discretion to assign
the appropriate weight to the testimony offered by Dr. Oliver. See, e.g.,
Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board
has discretion to give more weight to one item of evidence over another
“unless no reasonable trier of fact could have done so”); In re Am. Acad. of
Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is
entitled to weigh the declarations and conclude that the lack of factual
corroboration warrants discounting the opinions expressed in the
declarations.”).
First, as discussed above, the Specification and earlier application
provide examples of call processing functionality that contradict Dr. Oliver’s
position and which are not addressed directly by Dr. Olivier. Second, the
inconsistency of Dr. Olivier’s own testimony regarding the definition of call
processing undercuts his position. In his declaration, Dr. Olivier identified
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additional functions as part of call processing—including call authorization
which Dr. Olivier testifies is not included in call processing. See Ex. 2001
¶¶ 67 (showing Dr. Olivier’s annotation of Figure 2 of the ’167 patent to
identify call processing), 69, 70, 73. Third, we are unpersuaded by
Dr. Olivier’s reliance on a vague statement of the Specification that the call
application management system “forms the heart of call processing
functionality provided by call processing platform 101” (PO Resp. 16 (citing
Ex. 2001 ¶ 165)). Dr. Olivier testifies that the context of “forms the heart”
would be understood by one of ordinary skill in the art as meaning “that call
connection control and switching control is performed at a centralized
location,” because the Specification describes the call application
management system as controlling completing a call between parties
(Ex. 2001 ¶ 165).
We are mindful that, according to the Specification, the call
application management system “control[s] completing a call between” two
parties. Ex. 1001, 8:13–19 (emphasis added). Even so, “controlling
completing a call” on its face seems more limited than Patent Owner’s
position that call application management system is a system performing call
processing—“control a call from origination, maintenance of that call, and
subsequent release of that call.” We also are mindful that Petitioner’s
declarant Dr. Forys does not agree with Dr. Olivier’s position regarding call
processing. Ex. 1018 ¶¶ 7–12.
We also address the preamble of claim 1—“[a] centralized call
processing system for providing call processing services to a plurality of
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prison facilities”—because it recites a centralized call processing system and
call processing services, which may be relevant to our analysis of whether
claim 1 requires call processing as defined by the Patent Owner. We view
the preamble as a statement of intended use, rather than as providing
additional limitations. “In general, a preamble limits the invention if it
recites essential structure or steps, or if it is ‘necessary to give life, meaning,
and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com,
Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). A preamble, however, “generally
is not limiting when the claim body describes a structurally complete
invention such that deletion of the preamble phrase does not affect the
structure or steps of the claimed invention.” Id. at 809. One guidepost for
determining the effect of a preamble on claim scope is whether the preamble
language provides antecedent basis for any limitation in the body of the
claim. Id. at 808.
The elements of the centralized call processing system recited in the
body of claim 1 include a networking device connected via digital data links
to call processing gateways at the plurality of prison facilities; an
unauthorized call activity detection system co-located with, and connected
to, the networking device; a call application management system co-located
with, and connected to, the networking device and the unauthorized call
activity detection system; and a billing system co-located with the call
application management system and located remotely from the call
processing gateways. These elements describe a structurally complete
invention because the deletion of the preamble does not affect the structure
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of the claimed invention. The body of claim 1 recites “the plurality of prison
facilities located remotely from the call processing system,” which depends
on “[a] centralized call processing system” for the antecedent basis of “the
call processing system” (emphasis added).
Moreover, a preamble describing the purpose or intended use of an
invention generally does not limit the claim. Catalina Mktg., 289 F.3d at
809. In reciting “for providing call processing services to a plurality of
prison facilities,” claim 1 recites an intended use for the centralized call
processing system and so is not limited for this additional reason.
Even if we were to find the preamble limiting, the claim itself does
not require call processing as Patent Owner defines call processing—
“control a call from origination, maintenance of that call, and subsequent
release of that call [and] does not include call authorization functionality,”
for the reasons previously discussed. Further, claim 1 expressly requires
“processing the outgoing VoIP data packets from the plurality of prison
facilities into outgoing call signals,” and so, even if the preamble requires a
call processing system, the claim itself recites call processing of VoIP data
packets from prison facilities and so recites “providing call processing
services to a plurality of prison facilities.”
Therefore, in light of the plain language of the claim, the Specification
of the’167 patent, and according Patent Owner’s evidence and the testimony
of Patent Owner’s declarant appropriate weight, we construe “call
application management system” to mean a system that is located as
required by claim 1—“with the networking device and connected to the
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networking device and the unauthorized call activity detection system”—and
performs at least the functions recited by claim 1—“processing the outgoing
VoIP data packets from the plurality of prison facilities into outgoing call
signals and transmitting the outgoing call signals to a first telephone carrier
network, the call application management system receiving incoming call
signals from the first telephone carrier network and processing the incoming
call signals into the incoming VoIP data packets for distribution to the
plurality of prison facilities by the networking device.” A “call application
management system” is not required to perform call processing as defined
by the Patent Owner—“control a call from origination, maintenance of that
call, and subsequent release of that call [and] does not include call
authorization functionality” (PO Resp. 15).
B. Principles of Law
To prevail in challenging claims 1–21 of the ’167 patent, Petitioner
must demonstrate by a preponderance of the evidence that the claims are
unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is
unpatentable under 35 U.S.C. § 103(a) if the differences between the
claimed subject matter and the prior art are such that the subject matter, as a
whole, would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including the following: (1) the scope and content of the prior art; (2) any
differences between the claimed subject matter and the prior art; (3) the level
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of ordinary skill in the art; and (4) objective evidence of nonobviousness.
Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
C. Level of Ordinary Skill in the Art
In determining whether an invention would have been obvious at the
time it was made, 35 U.S.C. § 103 requires us to determine the level of
ordinary skill in the pertinent art at the time of the invention. Graham v.
John Deere, 383 U.S. at 17. “The importance of resolving the level of
ordinary skill in the art lies in the necessity of maintaining objectivity in the
obviousness inquiry.” Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718
(Fed. Cir. 1991). The person of ordinary skill in the art is a hypothetical
person who is presumed to have known the relevant art at the time of the
invention. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Factors
that may be considered in determining the level of ordinary skill in the art
include, but are not limited to, the types of problems encountered in the art,
the sophistication of the technology, and educational level of active workers
in the field. Id. In a given case, one or more factors may predominate. Id.
Generally, it is easier to establish obviousness under a higher level of
ordinary skill in the art. Innovention Toys, LLC v. MGA Entm’t, Inc.,
637 F.3d 1314, 1323 (Fed. Cir. 2011) (“A less sophisticated level of skill
generally favors a determination of nonobviousness . . . while a higher level
of skill favors the reverse.”).
With support of their respective declarants, both Petitioner and Patent
Owner agree that, based on the disclosure of the ’167 patent, one of ordinary
skill in the art would have a Bachelor of Science degree in electrical
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engineering, computer science, or an equivalent field, as well as three to five
years of academic or industry experience. Pet. 7–8 (citing Ex, 1017 ¶ 30);
PO Resp. 7 (citing Ex. 2001 ¶ 156). Petitioner indicates communications
system (or comparable industry experience) is the relevant academic or
industry experience (Pet. 8), whereas Patent Owner indicates telephony
systems (PO Resp. 7).
The parties propose similar levels of ordinary skill in the art and do
not directly challenge the other’s proposal. We consider the level of
ordinary skill in the art to be reflected by the prior art of record. See
Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The prior art
references, like the ’167 patent, relate to telephone communication systems.
See Ex. 1001, 1:38–40 (indicating the technical field relates to call
processing); Ex. 1004, 1:7–9 (indicating the field of the invention relates to
the processing of voice telephone calls); Ex. 1005, 1:7–9 (indicating the field
of the invention relates to telephone communication systems); Ex. 1006, 1–3
(indicating the reference provides a framework for support of voice over
packet-based networks).
In general, we adopt the areas of agreement in the parties’ proposals.
Patent Owner’s proposed academic or industry experience of telephony
8

systems comports with the level of ordinary skill in the art reflected in the
prior art of record, which relate to telephone communication systems.

8
MCGRAW-HILL DICTIONARY OF SCIENTIFIC AND TECHNICAL TERMS 2112
(6th ed. 2003) (defining telephony as “[t]he transmission of speech to a
distant point by means of electric signals”) (Ex. 3002).
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Petitioner has not explained sufficiently why the broader field of
communications systems is a more appropriate are of academic or industry
experience than telephony systems. Thus, we generally adopt Patent
Owner’s proposed academic or industry experience in telephony systems.
Therefore, one of ordinary skill in the art would have a Bachelor of
Science degree in electrical engineering, computer science, or an equivalent
field, as well as at least three years of academic or industry experience in
telephony systems.
D. Obviousness over Spadaro
Petitioner contends claims 1–7, 12, 14–19, and 21 are unpatentable
under 35 U.S.C. § 103(a) as obvious over Spadaro. To support its
contentions, Petitioner provides analysis and claim charts, relying on
declaration testimony of Dr. Forys. Pet. 9–26 (citing Ex. 1017). Patent
Owner responds, relying on declaration testimony of Dr. Oliver. PO
Resp. 31–60 (citing Ex. 2001). Having considered the parties’ contentions
and supporting evidence, we determine that Petitioner has demonstrated by a
preponderance of evidence that claims 1–7, 12, 14–19, and 21 are
unpatentable for obviousness over Spadaro.
As an initial matter, Petitioner represents that Spadaro is prior art
under 35 U.S.C. § 102(e) to the challenged claims. Pet. 3. Spadaro is a
patent, which issued from an application filed on July 13, 2001—a date prior
to the earliest effective filing date claimed by the ’167 patent—August 15,
2003. Patent Owner does not dispute that Spadaro is prior art to the
challenged claims.
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1. Summary of Spadaro
Spadaro that describes monitoring and controlling public telephone
usage by inmates at a prison. Ex. 1004, 2:38–42. Telephones are connected
to a control computer that establishes a connection to a telephone network,
such as a public switched telephone network (“PSTN”). Id. at 2:48–57; see
id. at Fig. 1. The control computer is located at the prison and provides for
switching, accessing, routing, timing, billing, and the control of the
telephones at the prison. Id. at 2:45–49. As a way to control telephone
usage, the control computer includes a three-way call detection system. Id.
at 3:35–42; see Fig. 1.
Spadaro describes a multiple site telephone system in Figure 3, which
is set forth below:
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Figure 3 illustrates a multiple site telephone system.
See Ex. 1004, 2:25–26. Figure 3 shows four sites 36, 38, 40, 42, each of
which has multiple control computers 32 connected through hubs 44 to
router 46. Id. at 3:53–55. Each of the sites may be a prison in a state-wide
prison system. Id. at 3:61–62. Calls from each of the four sites are routed
from each site’s router 46 to server 48, which connects the calls to central
office 34. Id. at 3:55–57. Spadaro describes obtaining lower cost and
efficiency by operating the system shown in Figure 3 over Ethernet and
Voice over Internet Protocol (“VoIP”) networks. Id. at 3:58–62.
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Spadaro also describes telephone systems in which control functions,
including the billing function, are distributed to a remote location over an
Ethernet network (id. at 4:4–10; Fig. 4) and over a network that includes
both VoIP and data (id. at 2:30–31; Fig. 5). Spadaro’s Figure 5 is set forth
below:

Figure 5 illustrates a telephone system
that distributes control functions to a
remote location over a VoIP and data network.
Ex. 1004, 2:27–30, 4:4–9, 4:25–27. Figure 5 shows control functions—
routing 22, billing 24, and PIN checking 28—distributed to a location
remote from the inmate telephones 10. Id. at 4:6–10, 4:25. Spadaro
explains that an advantage of distributing these functions to a remote
location is that “the functions can be centralized with the functions being
performed at a central administration location.” Id. at 4:10–13.
Also shown in Figure 5 is “three-way call detection 30a [that] is
moved from the site, i.e. in the control computer 12 as indicated at 30, to a
point beyond the VoIP network.” Id. at 4:27–30. Spadaro explains that
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VoIP transmission requires voice compression and packetizing, which are
detrimental to the ability to perform three-way call detection. Id. at 4:30–32.
“Therefore, three way call detection is performed at 30a after the telephony
signals have been decompressed and depacketized by the VoIP
gateway 26a.” Id. at 4:32–35.
2. Independent Claim 1
We focus our discussion on independent claim 1, the center of the
parties’ dispute. Petitioner and Patent Owner dispute the scope and content
of Spadaro and, thus, dispute the differences between the claimed invention
and the prior art.
Independent claim 1 is a system claim that requires a networking
device, an unauthorized call activity detection system, a call application
management system, and a billing system to perform certain recited
functions, to be located together, and to be located remotely from call
processing gateways, which are located at prison facilities. Claim 1 further
requires some devices be located at a prison facility—a telephone terminal
and “call processing gateways.”
Petitioner’s Contentions Regarding Claim 1
Petitioner, with support from its declarant, generally contends that
combining Spadaro’s “centralized call-processing used to serve multiple
prison facilities” (as shown in Figure 3) with Spadaro’s “VoIP technology
together with a centralized call processing system” (as shown in Figure 5)
would have rendered obvious the subject matter of claim 1. Pet. 11–12;
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see also id. at 9–12 (overview of Spadaro), 12–18 (discussing Spadaro with
respect to claim 1). According to Petitioner, Spadaro’s three-way call detect
system 30a teaches or suggests the recited “unauthorized call activity
detection system for detecting three-way call activity associated with calls
placed from telephone terminals.” Id. at 15. Spadaro’s VoIP Gateway 26a
teaches or suggests the recited “call application management system” for
processing outgoing VoIP data packets from prison facilities. Id. at 15–
16 (citing Ex. 1004, 4:49–53). Petitioner relies on Spadaro’s billing function
24 as teaching or suggesting the recited “billing system.” Id. at 17–18.
Petitioner further contends that, in view of Spadaro’s disclosure that lower
cost and efficiency are obtained by operating the system as shown in Figure
3 over VoIP, Spadaro’s server 48 in Figure 3 discloses or suggests the
recited “networking device.”
For the reasons explained in more detail below, we determine that
Spadaro’s “centralized call-processing used to serve multiple prison
facilities” (as shown in Figure 3) with Spadaro’s “VoIP technology together
with a centralized call processing system” (as shown in Figure 5), combined
as Petitioner proposes, would have conveyed the subject matter of claim 1 as
a whole to one of ordinary skill in the art. This is a pertinent question under
35 U.S.C. § 103(a)—whether the claimed subject matter as a whole would
have been obvious to one of ordinary skill in the art in view of Spadaro, not
merely whether Spadaro discloses the subject matter of each element of
claim 1 individually. See In re Keller, 642 F.2d 413, 425 (CCPA 1981)
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(“the test [for obviousness] is what the combined teachings of the references
would have suggested to those of ordinary skill in the art”).
Patent Owner’s Contentions Regarding Claim 1
Patent Owner contends that Spadaro does not teach centralization of
call processing as defined by Patent Owner and so does not teach many of
the limitations of claim 1, such as the recited “call application management
system” as construed by Patent Owner. Patent Owner also contends that
Spadaro does not teach the recited “networking device,” “three-way call
detection system,” and “billing system” are co-located in a centralized
location. We address these and other contentions by Patent Owner below.
Centralization of Call Processing
Central to many of Patent Owner’s contentions is that Spadaro does
not teach centralization of call processing, but rather teaches distributed call
processing located at the prison facilities. See, e.g., PO Resp. 17–19; see
also id. at 17 (Spadaro “does not teach centralization of call processing”;
“Spadaro does not teach co-location of any of the required functions”
including “call processing”), 18 (“Spadaro teaches a distributed network
architecture, in which call control is performed at each location by a control
computer”), 19 (Spadaro’s Figure 6A “illustrates the call processing,
switching, and control” at the prison facilities), 23 (the claims of the Spadaro
patent “all place call processing functionality at the prisons”), 46 (“Spadaro
explicitly shows that call processing must remain at the prison facility”).
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For the reasons set forth previously in Section II.A., we disagree that
the challenged claims require call processing as defined by Patent Owner to
be performed by a centrally located system and, therefore, are not persuaded
by Patent Owner’s contentions that rely on Patent Owner’s definition of call
processing.
Patent Owner’s Reliance on Extrinsic Evidence
To support various contentions, Patent Owner cites documentation for
an example software architecture (“BubbleLINK
®
”) and documentation for
an example of specific equipment (“Integrator C-2000
®
series,” including
the “Commander II Inmate Control” phone system), both of which are
mentioned in the ’167 patent, as evidence of how one of ordinary skill in the
art would have understood Spadaro. See, e.g., PO Resp. 22, 25 (citing
Science Dynamics Corporation, BubbleLink Software Architecture (2003)
(Ex. 2003)), 24 (citing Science Dynamics Corporation, “Inmate Telephone
Control Systems” (2001) (Ex. 2005)); see also PO Resp. 22–22 (citing
Ex. 1004, 4:15–21) (identifying example software architecture and example
equipment).
To be clear, none of these documents are asserted in any ground
challenging the claims of the ’167 patent. Nor does Spadaro incorporate by
reference any of these documents. Because Spadaro indicates these merely
are examples, we accord some but relatively little weight to these
documents. Ex. 1004, 4:15–16 (“such as BubbleLINK
®
”), 4:18–19 (“[s]uch
equipment includes the Integrator C-2000
®
series”). Another reason for
according relatively little weight to these documents is that Spadaro
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expressly indicates the described technology is not limited to
implementations covered by these documents. Id. at 4:66–52 (”While a
particular embodiment of the invention has been shown and described[,]
various modifications may be made. The appended claims are, therefore,
intended to cover all such modifications within the true spirit and scope of
the invention.”).
“Call Application Management System”
Turning to the elements recited in claim 1, we determine that
Petitioner has demonstrated by a preponderance of evidence that Spadaro
would have conveyed to one of ordinary skill in the art the recited “call
application management system.” Claim 1 recites
a call application management system co-located with the networking
device and connected to the networking device and the unauthorized
call activity detection system for at least processing the outgoing VoIP
data packets from the plurality of prison facilities into outgoing call
signals and transmitting the outgoing call signals to a first telephone
carrier network, the call application management system receiving
incoming call signals from the first telephone carrier network and
processing the incoming call signals into the incoming VoIP data
packets for distribution to the plurality of prison facilities by the
networking device.
Ex. 1001, 19:11–22. Regarding the recited “call application management
system,” Petitioner relies on VoIP gateway 26a, shown in Figure 5, as being
separated from inmate telephones 10 by WAN 18. See Pet. 15–16 (citing
Ex. 1004, 4:10–13); see also id. at 12 (showing Petitioner’s Figure A, which
incorporates portions of Spadaro’s Figure 5).
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We agree with Petitioner (id. at 15–16) that Spadaro’s VoIP
Gateway 26a would have conveyed to one of ordinary skill in the art the
recited “call application management system” for processing outgoing VoIP
data packets from prison facilities. As shown in Figure 5, Spadaro’s VoIP
Gateway 26a transmits outgoing calls from the telephone terminals in the
prison facility to a telephone carrier network (Spadaro’s public switch 16).
Ex. 1004, 4:49–53. As acknowledged by Patent Owner (PO Resp. 35),
Spadaro’s VoIP Gateway 26a performs “decompression and
depacketization” of telephone signals and distributes the signals to a public
switch. Ex. 1004, 4:51–53. As explained by Petitioner’s declarant
Dr. Forys, switches and routers are designed to transmit and receive call
signals and, therefore, a person of ordinary skill in the art would have
understood that the disclosure of distributing outbound calls or data to a
telephone network presumes an analogous ability to handle incoming calls
or data from the telephone network carrier. Pet. 17 (citing Ex. 1017 ¶ 76).
We are not persuaded by Patent Owner’s contentions that rely on its
overly narrow construction of “call application management system” and
which, in turn, rely on Patent Owner’s definition of call processing, which
does not comport with the ’167 patent for the reasons discussed previously
in Section II.A. For this reason, for example, we are not persuaded by
Patent Owner’s contention that calls are routed to one of several possible
VoIP egress points and, therefore, Spadaro does not teach a centralized call
platform. PO Resp. 28–29 (depicting Dr. Olivier’s figure showing multiple
egress points).
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“Networking Device”
We determine that Petitioner has demonstrated by a preponderance of
evidence that Spadaro would have conveyed to one of ordinary skill in the
art the recited “networking device.” Claim 1 recites
[a] centralized call processing system . . . comprising:
a networking device connected via digital data links to call
processing gateways at the plurality of prison facilities to
collect outgoing Voice over Internet Protocol (VoIP) data
packets associated with calls from the plurality of prison
facilities and to distribute incoming VoIP data packets
associated with the calls to the plurality of prison facilities, the
plurality of prison facilities located remotely from the call
processing system, each of the plurality of prison facilities
including at least one telephone terminal.
Ex. 1001, 18:58–19:3. The networking device recited by claim 1 is located
remotely from the prison facilities. Further, the recited networking device
performs two functions—“to collect outgoing Voice over Internet Protocol
(VoIP) data packets associated with calls from the plurality of prison
facilities” and “to distribute incoming VoIP data packets associated with the
calls to the plurality of prison facilities” (emphasis added). These broad
functions of collecting and distributing VoIP data packets are the only
enumerated functions that claim 1 requires the networking device to
perform. For example, it is the recited call application management
system—not the networking device—that processes outgoing VoIP data
packets into call signals and processes incoming call signals into VoIP data
packets.
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Turning to the parties’ contentions regarding the recited “networking
device,” Petitioner contends Spadaro’s server 48 depicted in Figure 3 would
have conveyed to one of ordinary skill the subject matter of the networking
device recited in claim 1. Pet. 13–14. Patent Owner disagrees. PO
Resp. 36–38.
As previously shown in Figure 3, Spadaro “depicts four sites 36, 38,
40, and 42 each of which has a plurality of Commander™ units connected
through hubs 44 to a router 46. The router 46 routes calls to a server 48
which connects the calls to a central office 34” of a Publicly Switched
Telephone Network (PSTN). Ex. 1004, 3:51–57 (emphasis added). Thus,
Spadaro’s server 48 performs two functions. First, Spadaro’s server 48
expressly connects calls from routers 46 located at each site to central office
34—the PSTN. Second, because Spadaro’s router 46 routes calls to
server 48, Spadaro’s server 48 implicitly must receive the calls from router
46 to be able to connect the calls to the PSTN. Accordingly, Spadaro’s
server 48 receives calls made from the sites 36, 38, 40, and 42 and connects
those calls to the PSTN.
Spadaro also discloses that “[i]n accordance with the present
invention, lower cost and efficiency are obtained by operating systems such
as shown in Figs. 2 and 3 over Ethernet and Voice over Internet Protocol
networks.” Ex. 1004, 3:58–61. Thus, Spadaro expressly indicates that the
multiple site telephone system depicted in Figure 3 can be operated using
VoIP and further indicates advantages (“lower cost and efficiency”) obtained
by doing so.
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Therefore, we determine that Spadaro’s server 48 would have
conveyed to one skilled in the art that it receives VoIP data packets from
multiple sites located remotely from the server 48. Accordingly, we agree
with Petitioner’s contention, which is supported by Dr. Forys’ testimony,
that “VoIP packets are collected by the server 48.” Pet. 14 (citing
Ex. 1017 ¶ 65 (relying on Ex. 1004, 3:55–57 to support Spadaro’s
disclosure that “call signals between the sites and the central office 34 are
collected and distributed by server 48”)); see also Ex. 1017 ¶ 68 (“the server
48 is a networking device that collects outgoing VoIP data packets”) (citing
Ex. 1004, 3:53–55, 58–61).
We also note that the determination that Spadaro’s server 48 performs
the functions recited by the networking device is in accordance with the
prosecution history of the application that issued as the ’167 patent.
See Microsoft, 789 F.3d at 1298 (“The PTO should also consult the patent’s
prosecution history in proceedings in which the patent has been brought
back to the agency for a second review.”). In rejecting application claim 1
9

9
Application claim 1, similarly to patent claim 1, recited “a networking
device connected via digital data links to call processing gateways at the
multiple prison facilities to collect outgoing Voice over Internet Protocol
(VoIP) data packets associated with calls from the plurality of prison
facilities and to distribute incoming VoIP data packets associated with the
calls to the plurality of prison facilities, the plurality of prison facilities
located remotely from the call processing system, each of the plurality of
prison facilities including a plurality of telephone terminals.” Ex. 1002, 117
(Amendment of claim 1 filed May 12, 2009).
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as obvious over Spadaro,
10
the examiner relied on Spadaro’s server 48 as
disclosing or suggesting the recited networking device. Ex. 1002, 159–60
(Office action dated January 6, 2010 citing Spadaro, 3:50–57 for the recited
networking device). In response, the applicant argued that “Spadaro does
not disclose any networking device for collecting outgoing VoIP data
packets or distributing incoming VoIP data packets to a plurality of prison
facilities.” Ex. 1002, 125–26. The examiner did not agree and maintained
the rejection based on Spadaro. Ex. 1002, 101–02 (Office action dated
July 21, 2010 citing Spadaro 3:50–57 for the recited networking device). In
response, rather than contesting the examiner’s findings, the applicant
amended application claim 1 to recite a billing system with certain
enumerated characteristics to gain allowance. Ex. 1002, 69 (amending
application claim 1), 72 (amending application claim 59), 78 (applicant
advocating that the rejection of claim 1 is overcome in view of the billing
system amendment to claim 1); see also Ex. 1002, 54 (Notice of Allowance
issued November 1, 2010). Although the prosecution history does not
indicate that Patent Owner acquiesces to the view of the examiner, it does
show the examiner held the same view, as discussed herein, that Spadaro

10
Although Spadaro was before the Office during prosecution, Petitioner’s
arguments concerning Spadaro are not the same arguments applied by the
examiner. For instance, the examiner relied on the Commando™ units in
Figure 3 as disclosing or suggesting the recited call application management
system, whereas Petitioner relies on VoIP Gateway 26 for disclosing or
suggesting the call application management system. Compare Pet. 12, 15–
16 with Ex. 1002, 102–03.
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discloses the recited networking device, in view of the disclosure of the ’167
patent.
We also agree with Petitioner, with support from its declarant
Dr. Forys, that Spadaro’s server 48 performs the corollary function of
distributing incoming VoIP data packets to the prison sites. See also Pet. 14
(“The centralized server 48 of Spadaro ‘collect[s] outgoing Voice over
Internet Protocol (VoIP) data packets associated with calls from the
plurality of prison facilities and . . . distribute[s] incoming VoIP data
packets associated with the calls to the plurality of prison facilities’.”)
(citing Ex. 1017 ¶ 33) (emphasis in original).
Neither Patent Owner nor its declarant Dr. Oliver acknowledges
Spadaro’s server 48 performs the function of receiving VoIP data packets
from the multiple sites. Patent Owner has not provided sufficient argument
or evidence that using Spadaro’s server 48 to receive and distribute VoIP
data packets in the Petitioner’s proposed combination would have been
beyond the level of ordinary skill or would not yield predictable results. We
also note the rather high level of ordinary skill in the art, which requires a
Bachelor of Science in electrical engineering or computer science as well as
at least three years of experience in telephony systems.
Turning to Patent Owner’s contentions that Spadaro does not teach the
recited networking device, Patent Owner first contends, with support from
its declarant Dr. Oliver, that Spadaro’s analog server 48 is not needed in a
VoIP implementation of Spadaro’s invention shown in Figs. 1, 5, 6, and 6B.
PO Resp. 37–38. To support its contention, Patent Owner relies on its
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conclusion that Spadaro’s server 48 is an analog server that “is merely a
connection point between analog calls received from the sites and the central
office 34.” Id. at 37. Spadaro’s server 48, however, is not limited to analog
calls, which undermines Patent Owner’s argument. Patent Owner does not
address directly Spadaro’s express disclosure that the multiple site telephone
system depicted in Figure 3, which includes server 48, can be operated using
VoIP and Spadaro’s indication of the advantages (“lower cost and
efficiency”) of using VoIP (Ex. 1004, 3:58–61).
Patent Owner also contends that Spadaro’s server 48 is not needed in
a VoIP implementation because “voice gateway 26a [depicted in Spadaro’s
Figure 5] distributes the telephone signals to the public switch, obviating
server 48.” PO Resp. 38. Patent Owner, however, does not address
sufficiently Petitioner’s proposed combination that does not rely on
server 48 for distributing signals to the public switch, but rather relies on
server 48 for its other function—receiving calls from the prison sites. See
Pet. 13–14.
We do not agree with Patent Owner that Spadaro’s server 48 would
not be used in a VoIP context because server 48 would be redundant in a
VoIP context. First, as noted above, Spadaro expressly states Figure 3 can
be used in a VoIP context. Spadaro’s server 48 might be duplicative if
Petitioner’s proposed combination relied on server 48 to connect the calls to
the PSTN, but that is not the case. Petitioner’s combination relies on
server 48 to collect and distribute VoIP data packets, not for distributing
telephone signals to a public switch.
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Second, Patent Owner contends that Petitioner’s proposed location of
Spadaro’s server 48 is incongruent with its actual function, because server
48 only connects analog calls to the central office 34. PO Resp. 36–37.
Patent Owner’s contention does not acknowledge, much less address
sufficiently, Spadaro’s express disclosure that the multiple site telephone
system depicted in Figure 3, which includes server 48, can be operated using
VoIP and indicates advantages obtained by doing so (Ex. 1004, 3:58–61).
Moreover, in Petitioner’s proposed combination, Spadaro’s server 48
performs the recited functions of the networking device—to collect VoIP
data packets associated with calls from prison facilities and to distribute
VoIP data packets associated with calls to the prison facilities. Patent
Owner does not address sufficiently that function of Spadaro’s server 48.
Thus, we agree with the location indicated by Dr. Forys, Petitioner’s
declarant, of Spadaro’s server 48 in Petitioner’s proposed combination.
Pet. 12–14; Ex 1017 ¶¶ 61, 65–67.
Third, Patent Owner contends that Spadaro’s server 48 does not
perform “intelligent packet routing” to provide different routing of data and
voice packets, as Patent Owner contends would be required in the
Petitioner’s proposed combination. PO Resp. 38. Patent Owner has not
persuaded us that such intelligent packet routing would not be an inherent
part of any VoIP system, which is disclosed in Spadaro, as discussed above.
Additionally, Patent Owner appears to be arguing that Spadaro’s server 48
cannot be bodily incorporated into system depicted in Spadaro’s Figure 5,
which is not required to show obviousness. See In re Keller, 642 F.2d at 425
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(“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference.”). Patent Owner’s contentions do not take into account
adequately what the collective teachings of Spadaro would have conveyed to
one of ordinary skill in the art. Id. (“[T]he test [for obviousness] is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.”).
“Prison Facilities” and a “Telephone Terminal”
We determine that Petitioner has demonstrated by a preponderance of
evidence that Spadaro would have conveyed to one of ordinary skill in the
art the recited “prison facilities” and “telephone terminal” located at each
prison facility. Claim 1 recites
[a] centralized call processing system . . . comprising:
the plurality of prison facilities located remotely from the call
processing system, each of the plurality of prison facilities
including at least one telephone terminal.
Ex. 1001, 18:67–19:3. Claim 1 further requires multiple prison facilities and
each prison facilities must include a telephone terminal. Claim 1 further
requires that the prison facilities be located remotely from the call
processing system.
Petitioner contends that Spadaro’s Figure 3 shows multiple sites being
administered at a central location. Pet. 12–13 (citing Ex. 1004, Fig. 3, 3:53–
57). Petitioner further contends that Spadaro’s telephones 10 at the prison
facilities disclose or suggest the recited telephone terminals. We agree. See,
e.g., Ex. 1004, Fig. 3 (showing commander control computers 32 at four
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sites 36, 38, 40, 42 and central administration manager, server 48, and
central office 34); Fig. 5 (showing inmate telephones 10 connected to a
voice over IP gateway); Fig. 2 (showing inmate telephones 10 connected to
commander control computers 32).
“Digital Data Links” and “Call Processing Gateways”
We also determine that Petitioner has demonstrated by a
preponderance of evidence that Spadaro would have conveyed to one of
ordinary skill in the art the recited “digital data links” and “call processing
gateways” located at each prison facility. Specifically, claim 1 recites
[a] centralized call processing system . . . comprising:
networking device connected via digital data links to call
processing gateways at the plurality of prison facilities to
collect outgoing Voice over Internet Protocol (VoIP) data
packets associated with calls from the plurality of prison
facilities and to distribute incoming VoIP data packets
associated with the calls to the plurality of prison facilities.
Ex. 1001, 18:61–19:1.
As noted by Petitioner, Spadaro’s control computers (also called
“Commander™ units” after a particular model) are located at each of the
sites 36, 38, 40, 42, which may be prison facilities. Pet. 13; see Ex. 1004,
3:53–62, 2:41–42. According to Petitioner, Spadaro’s control computers,
which each have a VoIP gateway and Ethernet capability, disclose or
suggest the recited call processing gateways. Pet. 13–14 (citing Ex. 1004,
4:1–2, 4:4–13). As Petitioner’s declarant testifies, an IP network is a digital
network and, thus, includes the recited “digital data links.” Pet. 14 (citing
Ex. 1017 ¶ 66).
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We agree with Petitioner that Spadaro would have conveyed to one of
ordinary skill in the art the recited prison facilities and “call processing
gateways at the plurality of prison facilities to collect outgoing Voice over
Internet Protocol (VoIP) data packets associated with calls from the plurality
of prison facilities and to distribute incoming VoIP data packets associated
with the calls to the plurality of prison facilities.”
“Unauthorized Call Activity Detection System” and “Billing
System”
We determine that Petitioner has demonstrated by a preponderance of
evidence that Spadaro would have conveyed to one of ordinary skill in the
art the recited “unauthorized call activity detection system” and “billing
system.”
Turning first to the recited “unauthorized call activity detection
system,” claim 1 recites
an unauthorized call activity detection system co-located with
the networking device and connected to the networking device
for detecting three-way call activity associated with the calls
placed from one or more of the plurality of telephone terminals,
the three-way call activity detection not performed at the
plurality of the prison facilities.
Ex. 1001, 19:4–10.
According to Petitioner, Spadaro’s three-way call detect system 30a
discloses or suggests the recited “unauthorized call activity detection
system . . .for detecting three-way call activity associated with the calls
placed . . .from telephone terminals.” Pet. 15. Petitioner indicates Spadaro’s
three-way call detect system 30a is “moved from the site . . . to a point
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beyond the VoIP network” and “is located remotely [from the] prison
telephone system.” Id. (citing Ex. 1004, 4:27–30, 6:4–6 (claim 8)). Patent
Owner acknowledges that Spadaro performs three-way call detection
between the VoIP network and the PSTN connection. PO Resp. 20–22.
Turning to the recited “billing system,” claim 1 recites
a billing system co-located with said call application
management system and located remotely from the call
processing gateways, the billing system connected to the call
application management system for providing accounting of the
calls.
Ex. 1001, 19:23–27.
Petitioner relies on Spadaro’s billing function 24 as teaching or
suggesting the recited “billing system.” Pet. 17–18. Petitioner also relies on
Spadaro’s disclosure that “the billing function 24 [is] distributed to a remote
location.” Pet. 14 (citing Ex. 1004, 4:4–13). Petitioner further notes that,
during prosecution of the application that issued as the ’167 patent, to
distinguish amended claims that recited a billing system, the applicant
represented to the examiner that Spadaro “fails to disclose anything about
billing.” Pet. 6 (citing Ex. 1002 (Response filed October 18, 2010), 78).
The applicant’s statement was incorrect. See Ex. 1004, FIGS. 4, 5 (showing
BILLING block 24), 2:45–49 (“programmable computer 12 at the site is
provided for . . . billing”), 3:28–30 (“FIG. 1 shows that the computer 12
performs the function of . . . billing”), 4:4–8 (indicating billing function 24 is
distributed to a remote location).
Spadaro indicates that the distribution of the billing function to remote
locations has the advantage that the function can be centralized with
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functions being performed at a centralized administration location.
Ex. 1004, 4:4–13; Pet. 18. Spadaro also discloses “various computing and
switching means . . . arrange the accounting and billing for the public
telephones and calls.” Ex. 1004, 1:24–30. Petitioner’s declarant Dr. Forys
relies on that disclosure as support for his conclusion that the billing
disclosed by Spadaro would be understood by one skilled in the art as
encompassing accounting of calls. Pet. 18 (citing Ex. 1017 ¶ 81).
“Co-located”
We determine that Petitioner has demonstrated by a preponderance of
evidence that Spadaro would have conveyed to one of ordinary skill in the
art the required co-location. Claim 1 requires the unauthorized call activity
detection system, the call application management system, and the billing
system
11
be co-located with the networking device.
According to Petitioner, Spadaro’s Figure 3 shows multiple prison
sites being administered at a central location. Pet. 12–13. Petitioner also
relies on Spadaro’s indication that “the billing function 24 [is] distributed to
a remote location.” Pet. 14 (citing Ex. 1004, 4:4–8). As noted by Petitioner
(id. at 13), Spadaro indicates distributing billing and other functions to a
remote location “has the advantage that the functions can be centralized with
the functions being performed at a central administration location.”
Ex. 1004, 4:10–13. Regarding the recited “unauthorized call activity

11
The recited billing system is required to be co-located with the call
application management system, which, in turn, is required to be co-located
with the networking device.
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detection system,” Petitioner indicates Spadaro’s three-way call detect
system 30a is “moved from the site . . . to a point beyond the VoIP network”
and “is located remotely [from the] prison telephone system.” Pet. 15 (citing
Ex. 1004, 4:27–30, 6:4–6 (claim 8)). Petitioner further indicates that the
three way call fraud detection is one of the control functions that may be
distributed to remote locations. Regarding the recited “call application
management system,” Petitioner relies on the VoIP gateway 26a, shown in
Figure 5, as being separated from inmate telephones 10 by WAN 18. See
Pet. 15–16 (citing Ex. 1004, 4:10–13); see also Pet. 12 (showing Petitioner’s
Figure A, which incorporates portions of Spadaro’s Figure 5).
Patent Owner contends that Spadaro does not disclose a system,
disposed at a central location, that performs call processing, detects
unauthorized three-way call activities, and performs billing with respect to a
call. PO Resp. 38–43. Many of Patent Owner’s contentions are based on
the example software architecture (“BubbleLINK
®
”) and Patent Owner’s
overly narrow definition of call processing (id.), which we do not find
persuasive for the reasons previously discussed. Patent Owner also
contends, with support of its declarant Dr. Olivier, that Spadaro’s billing
system would not be co-located with the call application management
system and the unauthorized call activity detection system because, among
other contentions, Spadaro, in Figure 4, separates billing function 24 from
the VoIP gateway 26a by a wide area network (“WAN”).
Weighing Dr. Olivier’s testimony supporting Patent Owner’s
contention that Spadaro’s billing system would not be located in the same
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location as three-way call detect (Ex. 2001 ¶¶ 128, 137, 190–91) against Dr.
Forys testimony that Spadaro teaches billing and three way call detect each
can be distributed to a remote location and advantageously centralized
(Ex. 1018 ¶ 54), we credit Dr. Forys’ testimony over that of Dr. Olivier,
because Dr. Forys’ testimony better comports with evidence of Spadaro’s
disclosure that control functions—including billing functions 24 and three
way call fraud detection—may be distributed to remote locations and the
advantages of centralization (Ex. 1004, 4:4–8, 10–13, 22–24). We also
discount Dr. Olivier’s testimony based in large measure on documentation
regarding the example BubbleLINK architecture (Ex. 2001 ¶¶ 128, 137–38,
191). It is within our discretion to assign the appropriate weight to the
testimony offered by Dr. Olivier and Dr. Forys. See, e.g., Yorkey, 601 F.3d
at 1279 (holding the Board has discretion to give more weight to one item of
evidence over another “unless no reasonable trier of fact could have done
so”); Am. Acad. of Sci. Tech Ctr., 367 F.3d at 1368 (“[T]he Board is entitled
to weigh the declarations and conclude that the lack of factual corroboration
warrants discounting the opinions expressed in the declarations.”).
Thus, we determine Petitioner has established by a preponderance of
evidence that Spadaro would have conveyed to one of ordinary skill in the
art locating the billing system with the unauthorized call detection system,
the call application management system, and the networking device.
Reason to Combine
Having determined that Petitioner’s position that Spadaro would have
conveyed to one of ordinary skill in the art all of the limitations in claim 1,
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our inquiry continues because “rejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
“Care must be taken to avoid hindsight reconstruction by using ‘the patent in
suit as a guide through the maze of prior art references, combining the right
references in the right way so as to achieve the result of the claims in suit.’”
Grain Processing Corp. v. Am.-Maize Prods. Co., 840 F.2d 902, 907 (Fed.
Cir. 1988) (quoting Orthopedic Equip. Co. v. United States, 702 F.2d 1005,
1012 (Fed. Cir. 1983)).
Petitioner asserts the subject matter of claim 1 would have been
obvious in view of various disclosures of Spadaro—Spadaro’s “centralized
call-processing used to serve multiple prison facilities” (as shown in
Figure 3); Spadaro’s “VoIP technology together with a centralized call
processing system” (as shown in Figure 5); and Spadaro’s disclosure of the
benefits of using VoIP for the system depicted in Figure 3, among others.
Patent Owner contends that Petitioner improperly “blend[s] different
embodiments of Spadaro,” which amounts to improper hindsight
reconstruction. PO Resp. 18. Patent Owner further contends that an
ordinarily skilled artisan would not have modified Spadaro in the manner
that Petitioner contends to centralize control functions, but rather an
ordinarily skilled artisan would have modified Spadaro to distribute control
functions. Id. at 43–44.
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We are not persuaded by Patent Owner. Spadaro itself indicates the
reason one of ordinary skill in the art would combine the “centralized call-
processing used to serve multiple prison facilities” (as shown in Figure 3)
with “VoIP technology together with a centralized call processing system”
(as shown in Figure 5)—“because of the lower cost and efficiency” obtained
by operating systems such as shown in Figure 3 over a Voice over Internet
Protocol network (Ex. 1004, 3:58–65). Although the rote application of the
teaching-suggestion-motivation test (or TSM test), requiring an express
teaching in the prior art, is inappropriate, “[t]here is no necessary
inconsistency between the idea underlying the TSM test and the Graham
analysis.” KSR, 550 U.S. at 419.
Moreover, as noted by the Court in KSR, “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” KSR, 550 U.S. at 416.
Spadaro’s server 48 performs a known function—receiving call signals and,
in a VoIP context noted by Spadaro, collecting VoIP data packets from
multiple sites. Here, in the combination proposed by Petitioner, Spadaro’s
server 48 performs one of the functions for which server 48 is used in
Spadaro—receiving calls from multiple sites. We also note that electrical
arts, such as claimed here, involve predictable factors. See In re Fisher, 427
F.2d 833, 839 (CCPA 1970) (indicating patents in the mechanical or
electrical arts involve predictable factors). Thus, using server 48 in the
proposed combination, used in the same manner as used in Spadaro, yields
predictable results. Cf. Ex. 1017 ¶ 61 (Petitioner’s declarant Dr. Forys
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testifying, in the proposed combination, server 48 connects the centralized
location to the inmate facilities). As another factor favoring a finding of
obviousness, we again note the rather high level of ordinary skill in the art,
which requires a Bachelor of Science in electrical engineering or computer
science as well as at least three years of experience in telephony systems.
Innovention Toys, 637 F.3d at 1314 (“A less sophisticated level of skill
generally favors a determination of nonobviousness . . . while a higher level
of skill favors the reverse.”).
Patent Owner also contends that Spadaro teaches away from
centralizing call processing and transmitting calls to a single egress point.
PO Resp. 44–45. To the contrary, according to Patent Owner, Spadaro
teaches the advantages of a local access circuit at the prison. Id. at 45.
We do not agree that Spadaro teaches away from using server 48 to
route VoIP calls. Id. at 44 (generally stating that Spadaro teaches away).
Rather than criticizing, discrediting, or discouraging the use of VoIP,
Spadaro describes the advantages of using the system depicted in Figure 3,
including server 48, with VoIP. See In re Fulton, 391 F.3d 1195, 1201 (Fed.
Cir. 2004) (To teach away, prior art must “criticize, discredit, or otherwise
discourage the solution claimed.”). Moreover, Patent Owner contends that
Spadaro teaches away “from centralizing call processing” as Patent Owner
defines call processing, with which we do not agree for the reasons
discussed in Section II.A.
Therefore, we determine that Petitioner has established by a
preponderance of evidence that the subject matter recited in claim 1 as a
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whole would have been obvious to one of ordinary skill in the art in view of
Spadaro. See 35 U.S.C. § 103(a).
3. Dependent Claims 2–7, 12, and 14–16
For the reasons that follow, we determine that Petitioner has
established, by a preponderance of evidence, that the subject matter of
claims 2–7, 12, and 14–16, which depend from independent claim 1, as a
whole would have been obvious to one of ordinary skill in the art in view of
Spadaro.
In general, Patent Owner’s contentions regarding Spadaro unduly
focus on specific, isolated capabilities described in Spadaro without
addressing what those capabilities would have suggested to one of ordinary
skill in the art at the time of the invention of the ’167 patent. Further, Patent
Owner’s contentions in large measure amount to attacks on the individual
elements of the dependent claims, without sufficient consideration of what
the disclosure of Spadaro would have suggested to one of ordinary skill in
the art regarding the claimed subject matter as a whole, which is an approach
we find unpersuasive. Indeed, many of Patent Owner’s contentions are more
appropriate to a ground of anticipation, which requires a prior art reference
to disclose, expressly or inherently, every limitation of the claim as arranged
in the claim. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369
(Fed. Cir. 2008). Patent Owner’s arguments are not appropriate for a
challenge of obviousness, which requires an analysis of whether the
differences between the claimed subject matter and the prior art are such that
the subject matter, as a whole, would have been obvious at the time the
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invention was made to a person having ordinary skill in the art to which said
subject matter pertains, 35 U.S.C. § 103(a).
Dependent Claims 2 and 3
Claims 2 and 3, each of which depends from independent claim 1,
recite further limitations for the call processing gateways. For the reasons
that follow, we determine Petitioner has established by a preponderance of
evidence the subject matter recited in claims 2 and 3 as a whole would have
been obvious to one of ordinary skill in the art in view of Spadaro.
Claim 2 additionally recites the call processing gateways comprise
“voice over Internet protocol gateways.” As noted previously, Petitioner
indicates Spadaro’s control computer would have conveyed the recited call
processing gateway to one of ordinary skill in the art. Petitioner relies on
Spadaro’s disclosure that control computer 12 in Figure 1 includes Voice
over IP Gateway 26 for conveying to one of ordinary skill in the art the
“voice over Internet protocol gateway,” recited in claim 2. Pet. 18 (citing
Ex. 1004, FIG. 2, 3:43–50).
Patent Owner contends that, because Spadaro’s control computer
provides call processing, one skilled in the art would not have understood
Spadaro’s control computer to provide “the simple voice over Internet
protocol gateway of claim 2.” PO Resp. 46. We do not agree with Patent
Owner’s position because the language of claim 2 recites “call processing
gateways comprise [VoIP] gateways,” which does not preclude the call
processing gateway from performing additional functions, such as call
processing. Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed.
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Cir. 1997) (“‘Comprising’ is a term of art used in claim language which
means that the named elements are essential, but other elements may be
added and still form a construct within the scope of the claim.”).
Further, Spadaro expressly discloses a control computer 12 that
includes a VoIP gateway. Ex. 1004, FIG. 2, 3:43–50. Moreover, as noted
previously, Spadaro indicates the benefits of operating the system shown in
Figure 3 (that includes control computers 32) over a VoIP network.
Claim 3 additionally recites the call processing gateways “provide at
least one local area network interface for coupling with a computer
workstation.” For this feature, Petitioner indicates
12
that Spadaro depicts the
control computers 32 connected to the Administrative Manager, which is
depicted as a workstation. Pet. 18–19; Reply 17 (citing Ex. 1017 ¶ 87).
Patent Owner opposes by noting that relying on control computers 32 to be
connected through a local area network to Administrative Manager is
inconsistent with Petitioner’s position that the call processing gateways are
remote to the call processing system, as shown in Figure 3. PO Resp. 46–
47.
First, we disagree with Patent Owner’s position. Petitioner’s
combination did not include Spadaro’s Administrative Manager in the
centralized system. See Pet. 12 (showing Petitioner’s proposed combination
of Figures 3 and 5). Moreover, Spadaro expressly shows the control
computer connected through “an Ethernet LAN or WAN” to an

12
We understand Petitioner’s assertion to be based at least in part on
Figure 2. Our understanding is confirmed by the Reply.
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Administration Manager, depicted as a computer workstation. Ex. 1004,
FIG. 2; see also Reply 17 (citing Ex. 1004, FIGS. 2, 3).
Dependent Claims 4 and 5
Claims 4 and 5, each depend from claim 1, further require
communicating with the telephone carrier network using digital data packets
(claim 4) and using analog signals (claim 5). Claim 5 further requires “a
media gateway connected to the networking device.”
Petitioner relies on Spadaro’s express disclosure of communicating
with carrier networks using digital (claim 4) or analog (claim 5) local access
wire circuits. Pet. 19 (citing Ex. 1004, 4:56–61). Patent Owner challenges
Petitioner’s position regarding claim 4 on the basis that claim 4 requires “the
carrier network used for connecting calls outside of the call application
management system uses digital data packets” and that transporting a call to
an Inter-Exchange Carrier (IXC) is insufficient. PO Resp. 47–48 (citing
Ex. 1001, FIG. 1 (showing SIP carrier 191)). Claim 4 requires that the call
application management system “communicate[] with said first telephone
carrier network using digital data packets” and does not recite “VoIP” data
packets as claim 1 does. Nor does claim 4 limit the telephone carrier
network other than implicitly requiring the telephone carrier network to
receive transmitted outgoing call signals and provide incoming call signals.
Thus, because of the broad language of claim 4, and the express disclosure
of Spadaro that local access wire circuits (analog or digital) can be used to a
local exchange carrier and the VoIP portion can be used to transport higher
cost long distance calls to an IXC, we determine Petitioner has demonstrated
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by a preponderance of evidence that the subject matter of claim 4 would
have been conveyed to one of ordinary skill in the art by Spadaro.
Petitioner relies on Spadaro’s VoIP gateway 26a for the media
gateway recited in claim 5. Pet. 19 (citing Ex. 1004, 4:51–53). Spadaro’s
VoIP gateway 26a “distribute[s] telephone signals,” which have been
depacketized, “to a public switch.” Ex. 1004, 4:51–53. Thus, we determine
Petitioner demonstrated by a preponderance of evidence that Spadaro’s VoIP
gateway 26a would convey to one of ordinary skill in the art the required
function of the media gateway to place the outgoing calls on the telephone
carrier network using analog signals.
Patent Owner contends that Petitioner’s declarant Dr. Forys “concedes
the call application management system of his FIG. A includes no further
systems, such [as] the claimed media gateway.” PO Resp. 48 (citing
Ex. 2007 (Forys Dep.), 188:14–189:8). The pertinent question is not
whether the call application management system of Dr. Forys’ FIG. A
includes a media gateway. Rather, the question is whether Spadaro’s
VoIP 26a would have conveyed to one of ordinary skill in the art the recited
media gateway, to which Dr. Forys’ has testified. See Ex. 1017 ¶ 91
(testifying “the VoIP gateway 26a [media gateway] of the call application
management system decompresses and depacketizes the signals from the call
processing gateways [control computer 12] to distribute to a public switch”)
(citing Ex. 1004, 2:53–67, 4:51–53); see Pet. 19.
Patent Owner also challenges Petitioner’s use of Spadaro’s VoIP
gateway 26a for teaching both the recited call application management
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system and the recited media gateway. We are mindful that claim 5 recites
both a call application management system and a media gateway. Like the
call application management system, the media gateway is connected to the
networking device. The call application management system processes
outgoing VoIP data packets into outgoing signals and transmits the outgoing
call signals to a telephone carrier network. The media gateway places the
outgoing calls on the telephone carrier network using analog signals.
Notably, claim 5 does not recite any limitations regarding how the structure
of the recited call application management system relates to the structure of
the recited media gateway. In contrast to claim 5, for example, claim 6
(discussed below) does recite a specific structure between the call
application management system and another element—“a call recording
system connected to said call application management system.” Thus, we
conclude that the call application management system and the media
gateway need not be wholly separate structures. Cf. Powell v. Home Depot
U.S.A., Inc., 663 F.3d 1221, 1231 (Fed. Cir. 2011) (“Nor are we convinced
that the claim language ‘in fluid communication’ requires that ‘cutting box’
and ‘dust collection structure’ be wholly separate structures.”); see
also NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1310
(Fed.Cir.2005) (noting that the asserted claim language did not support a
limitation requiring that the claimed “RF receiver” and “destination
processor” be separate and distinct).
For the foregoing reasons, we determine that Petitioner has
demonstrated by a preponderance of evidence that Spadaro would have
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conveyed to one of ordinary skill in the art the additional limitations recited
in claims 4 and 5.
Dependent Claims 6 and 7
Claims 6 and 7, each of which depend from claim 1, additionally
recite a recording system and a validation system, respectively, connected to
the call application management system.
Spadaro discloses that control functions “can be centralized with the
functions being performed at a central administration location” and one of
the control functions is “real time call recording.” Ex. 1004, 4:4–6, 4:10–13,
4:23–24. Petitioner relies on these disclosures of Spadaro. Pet. 19–20. We
are persuaded that Petitioner has demonstrated that these disclosures would
have conveyed to one of ordinary skill in the art the recording system,
recited in claim 6.
In view of Spadaro’s disclosure that “real time call recording” is a
control function that can be centralized, we do not agree with Patent
Owner’s position that Spadaro discloses only call recording at prisons and
only parameters for the recording can be retrieved from a central location.
PO Resp. 49.
Nor are we persuaded that claim 6 necessarily requires a call
recording system be co-located with the call application management
system, as Patent Owner contends. See PO Resp. 49 (contending the
Petition fails to establish that the subject matter of claim 6 would have been
obvious because “the call recording itself” is not centralized). Claim 6
recites “a call recording system connected to said call application
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management system,” but does not recite that the call recording system is
“co-located” with the call application management system or located
remotely from call processing gateways, as many other claims recite.
Compare claim 6 with claims 1 and 7. We also note that claim 1 recites “a
networking device connected via digital data links to call processing
gateways.” See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (stating that it
is well established that limitations not appearing in the claims cannot be
relied upon for patentability).
We turn to claim 7, which recites “a validation system co-located with
said call application management system and located remotely from the call
processing gateways, the validation system connected to said call application
management system for authorizing connecting of said calls to said first
telephone carrier network.”
Spadaro discloses restrictions on telephone usage based on a PIN
number associated with a calling card and that the PIN checking function
can be performed at a centralized administration location. Ex. 1004, 3:30–
37, 4:4–13. Petitioner, with support from its declarant, relies on these
disclosures of Spardaro for teaching the validation system recited in claim 7.
Pet. 20.
Patent Owner contends that Spadaro’s control computers authorize
and connect calls and that Spadaro’s centralization is only as to an
administrative database. PO Resp. 49–50. Thus, Patent Owner concludes
the subject matter of claim 7 would not have been obvious to one of ordinary
skill in the art.
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We note that claim 7 requires that the validation system is connected
to the call application management system for authorizing connecting the
calls to the telephone carrier network. Claim 7 does not require the
validation system itself to connect the call, as Patent Owner seems to
contend. See PO Resp. 50 (“Dr. Forys misunderstands that the database is
what is distributed—and calls are still connected by the Commander”
control computer). See In re Self, 671 F.2d at 1348 (stating that it is well
established that limitations not appearing in the claims cannot be relied upon
for patentability). Also, in view of Spadaro’s disclosure of restrictions on
telephone usage based on a PIN number associated with a calling card and
that the PIN checking function can be performed at a centralized
administration location (Ex. 1004, 3:30–37, 4:4–13), we are not persuaded
by Patent Owner that Spadaro discloses only call recording at prisons and
only parameters for the recording can be retrieved from a central location.
PO Resp. 49.
For the foregoing reasons, we determine that Petitioner has
demonstrated by a preponderance of evidence that Spadaro would have
conveyed to one of ordinary skill in the art the additional limitations recited
in claims 6 and 7.
Dependent Claims 12 and 14
Claims 12 and 14 recite that the telephone carrier network includes a
SIP (Session Initiation Protocol) carrier and comprises the PSTN (Public
Switched Telephone Network), respectively. Regarding claim 12, as
Petitioner notes (Pet. 21), Spadaro discloses a “VoIP portion [that] transports
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higher cost long distance calls to an Inter-Exchange Carrier (IXC)” and
“control signals could be applied using other protocols such as SIP per
Internet RFC 2543.” Ex. 1004. 4:59–61, 3:26–27. Regarding claim 14,
Spadaro indicates the telephone signals are decompressed and depacketized
by VoIP gateway 26a and distributed to a public switch 16, which (as shown
in FIG. 5) has an arrow labeled PSTN. Ex. 1004, 4:51–53, FIG. 5; see
Pet. 21–22 (citing Ex. 1004, 4:51–53).
Patent Owner contends that Spadaro only teaches providing an analog
connection to the carrier network and only teaches a VoIP transport to an
Inter-Exchange Carrier. PO Resp. 54. We do not agree with Patent Owner’s
position. Rather, we agree with Petitioner that Spadaro’s SIP disclosure
would have conveyed to one of ordinary skill in the art that the telephone
network carrier includes a SIP protocol and comprises the PSTN,
respectively. Patent Owner fails to consider adequately what Spadaro’s
disclosures concerning SIP and VoIP would have suggested to those one of
ordinary skill in the art. In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012)
(“[T]he test for obviousness is what the combined teachings of the
references would have suggested to those having ordinary skill in the art.”
(citing In re Keller, 642 F.2d at 413)).
For the foregoing reasons, we determine that Petitioner has
demonstrated by a preponderance of evidence that Spadaro would have
conveyed to one of ordinary skill in the art the additional limitations recited
in claims 12 and 14.
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Dependent Claims 15 and 16
Claim 15, which depends from claim 1, recites “the call application
management system is further configured to process and transmit outgoing
call signals from the plurality of telephone terminals to a second telephone
carrier network” and “the call application management system selecting
either the first telephone carrier network or the second telephone carrier
network to transmit the call signals.” Claim 16 adds other limitations
concerning the call application management system recited in claim 15—the
call application management system (i) establishes connection for the calls
over the first telephone carrier network and (ii) switches to connection over
the second telephone carrier network responsive to detecting a
predetermined event.
As noted by Petitioner (Pet. 22), Spadaro teaches “least cost routing”
is supported by the control computer. Ex. 1004, 3:19–21. Dr. Forys
explains that “‘least cost routing’ is a well-known telecommunication
function that chooses the lowest cost path to a destination.” Ex. 1017 ¶ 102
(citing Ex. 1004, 3:19–21); see Pet. 22 (citing Ex. 1017 ¶ 102). According
to Dr. Forys, Spadaro further explains least cost routing—Spadaro’s “mixed
modes” uses local access circuits to transport local calls to a Local Exchange
Carrier (LEC) and uses VoIP to transport higher cost long-distance calls to
an Inter-Exchange Carrier (IXC). Ex. 1017 ¶ 102 (citing Ex. 1004, 4:56–
61); see Pet. 22 (citing Ex. 1017 ¶ 102). According to Dr. Forys, Spadaro’s
routing function 22 “selects a carrier (LEC vs. IXC) for transporting a call
based on the rate for the call (cost).” Ex. 1017 ¶ 102.
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Patent Owner’s declarant Dr. Olivier disagrees with Dr. Forys’
interpretation as inconsistent with Spadaro’s configuration and other
teachings. Ex. 2001 ¶¶ 209–13, 251; PO Resp. 56 (citing same). In
reaching his conclusion, Dr. Olivier, however, focuses on Spadaro’s
purported lack of call processing (as defined by Patent Owner) at the
centralized platform, which reduces the probative value of his testimony for
the reasons discussed previously in Section II.A. Ex. 2001 ¶¶ 209–13.
Patent Owner, relying on Dr. Oliver’s testimony, further challenges
Petitioner’s position because it relies on the same section of Spadaro as
teaching both the selection of a carrier network call and the switching of the
call from one carrier network to another carrier network. PO Resp. 57
(citing Ex. 2001 ¶¶ 141–44, 251).
Thus, Patent Owner implicitly construes claim 16 to require switching
a particular call from one carrier network to another. Petitioner argues that
Patent Owner’s reading of the claim is overly narrow and that Spadaro’s
least cost routing meets the limitations in that calls could be connected to the
LEC and when a new long distance call occurs (the recited predetermined
event), the system switches to an IXC connection. Reply 25.
The plain language of claim 16 requires establishing a connection for
plural calls and “switch[ing] to connection over the second telephone carrier
network responsive to detecting a predetermined event.” Patent Owner has
not identified any portion of the Specification to support its position that a
connection for a specific call must be established and then the call switched
to a different carrier based on a predetermined event. See generally PO
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Resp. 56–57; see also In re Self, 671 F.2d at 1348 (stating that it is well
established that limitations not appearing in the claims cannot be relied upon
for patentability).
Based on the plain language of the claim and Spadaro’s disclosure of
mixed mode in which local access circuits transport local calls at lower rates
while VoIP transports higher cost long distance calls (Ex. 1004, 4:56–61),
we determine that Petitioner has demonstrated by a preponderance of
evidence that Spadaro would have conveyed to one of ordinary skill in the
art the additional limitations recited in claims 15 and 16.
4. Claims 17–19 and 21
Independent claim 17 is a method claim that recites a call processing
system that performs certain enumerated functions. Ex. 1001, 20:21–46.
The functions performed by the call processing system are substantially
similar to the functions performed by the elements recited in the body of
independent claim 1. For instance, the call processing system recited in
claim 17 collects, distributes, and processes VoIP data packets; processes
incoming call signals into incoming VoIP data packets; and detects
unauthorized three-way call activity associated with the calls. The call
processing system in claim 17 also recites a billing system, as does claim 1.
The billing system in claim 17 performs billing operations associated with
the calls.
In contending the subject matter of claim 17 would have been obvious
to one of ordinary skill in the art, Petitioner relies on substantially the same
arguments and disclosures in Spadaro as Petitioner did for claim 1. Pet. 23–
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26. Patent Owner maintains that Spadaro does not teach call processing,
according to Patent Owner’s proposed construction, at the central location
performing the functions recited in claim 17. PO Resp. 57–58.
For the reasons indicated previously in Section II.A and with respect
to claim 1, we do not agree with Patent Owner that call processing as
defined by Patent Owner is required to be performed at the central location.
Regarding the billing function recited in claim 17, we agree with Petitioner
that Spadaro’s disclosure of “billing function 24” would convey to one of
ordinary skill in the art a system “performing billing operations associated
with the calls,” as recited in claim 17. Also, for the reasons indicated
previously with respect to claim 1, we determine that Petitioner has
established, by a preponderance of evidence, that the subject matter recited
in claim 1 as a whole would have been obvious to one of ordinary skill in the
art in view of Spadaro. See 35 U.S.C. § 103(a).
Claims 18 and 19, each of which depends from claim 17, further recite
“coupling said call processing system to the telephone carrier network”
either “via an analog interface” (claim 18) or “via a digital interface” (claim
19). As discussed in connection with obviousness of claims 4 and 5,
Petitioner has demonstrated by a preponderance of evidence that Spadaro
would have conveyed to one of ordinary skill in the art communicating with
a telephone carrier network using digital data packets (claim 4) and placing
calls on a telephone network carrier using analog signals (claim 5).
Petitioner relies on the same disclosures in Spadaro and the same arguments
for claims 18 and 19 as Petitioner relies on with connection to claims 4 and
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5. Compare Pet. 25 (discussing claims 18 and 19) with Pet. 19 (discussing
claims 4 and 5).
Patent Owner challenges claim 18 based on Patent Owner’s
construction of call processing, with which we do not agree, and challenges
claim 19 on the basis that Spadaro teaches three-way call detection for
analog calls, which would not work for a digital connection. As discussed in
connection with claim 5, Patent Owner has not provided sufficient argument
or credible evidence to support its position. When we balance Spadaro’s
express disclosure of digital local access wire circuits and VoIP (Ex. 1004,
4:56–61) against Patent Owner’s assertions, we determine that a
preponderance of evidence supports Petitioner’s position that claims 18 and
19 would have been obvious over Spadaro.
Claim 21 depends from independent claim 17 and recites “selecting
one telephone carrier network among a plurality of telephone carrier
networks connected to the call processing system for processing and
transmission of the calls responsive to receiving the calls from the plurality
of telephone terminals.”
Petitioner relies on Spadaro’s disclosure of mixed mode in which
local access circuits transport local calls at lower rates while VoIP transports
higher cost long distance calls, which Petitioner also relies on for claim 15
requiring the call application management system to select one of two carrier
networks to transmit call signals. Pet. 25 (citing Ex. 1004, 4:56–61); see id.
at 22 (discussing claim 15). Patent Owner relies on the same arguments
made in connection with claim 15.
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Similar to our conclusion regarding claim 15, when we balance
Spadaro’s express disclosure of mixed mode (Ex. 1004, 4:56–61) against
Patent Owner’s assertions, we determine that a preponderance of evidence
supports Petitioner’s position that claim 21 would have been obvious over
Spadaro.
5. Conclusion of Obviousness over Spadaro
We have resolved the question of obviousness based on factual
determinations of (1) the scope and content of Spadaro; (2) differences
between the subject matter of claims 1–7, 12, 14–19, and 21 and the
teachings of Spadaro; (3) the level of ordinary skill in the art; and
(4) objective evidence of nonobviousness. Graham, 383 U.S. at 17–18.
Patent Owner has not put forth any evidence of secondary considerations for
us to consider.
For the foregoing reasons, we determine that Petitioner has
established, by a preponderance of evidence, that the subject matter recited
in each of claims 1–7, 12, 14–19, and 21 as a whole would have been
obvious to one of ordinary skill in the art in view of Spadaro. See 35 U.S.C.
§ 103(a).
E. Obviousness over Spadaro and Hodge
Petitioner contends claims 8–11 and 20 are unpatentable under
35 U.S.C. § 103(a) as obvious over Spadaro and Hodge, relying on
declaration testimony of Dr. Forys. Pet. 26–33 (citing Ex. 1017). Patent
Owner responds, relying on declaration testimony of Dr. Oliver. PO Resp.
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52–59 (citing Ex. 2001). Having considered the parties’ contentions and
supporting evidence, we determine that Petitioner has demonstrated by a
preponderance of evidence that claims 8–11 and 20 are unpatentable for
obviousness over Spadaro and Hodge.
1. Summary of Hodge
As an initial matter, Petitioner represents Hodge is prior art under
35 U.S.C. § 102(e) to the challenged claims. Pet. 4. Hodge is a patent,
which issued from an application filed on August 8, 2002—a date prior to
the earliest effective filing date claimed by the ’167 patent—August 15,
2003. Patent Owner does not dispute that Hodge is prior art to the
challenged claims.
Hodge describes a secure telephone call management system for use
in penal institutions. Ex. 1005, Abstract, 9:48–53. Hodge’s secure
telephone call management system includes accounting software capable of
limiting access to the system based on funds in a user’s account. Id. at
Abstract. Among Hodge’s techniques to monitor calls, Hodge describes a
live operator using a “shadow workstation” to monitor telephone calls
without detection. Id. at 20:47–49. If the operator determines a call being
monitored is suspicious, the operator may record the telephone call.
Id. at 20:54–57. Hodge also describes an investigative workstation 125 used
to access recorded conversations and used to detect if a third party is present
during the telephone call. Id. at 21:1–7. Hodge describes a commissary
workstation used “to manage and record a user’s financial transactions.”
Id. at 20:32–34.
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Hodge describes a central site server through which “[a]ll inmate and
call information is routed.” Id. at 19:25, 37–38. According to Hodge, the
shadow workstation, the investigative workstation, and the commissary
workstation may be connected to a central site server through a local area
network or “may be integral within the central site server.” Id. at 20:35–36,
20:46–47, 21:13–16. Hodge further describes a WAN configuration in
which the site server is connected to multiple devices located in separate
institutions, a central database is used for the entire system, and
administrative and investigative workstations are located at a central facility
to administer all user accounts. Id. at 10:41–48 (Summary of Invention).
2. Claims 8–11 and 20
To support its contention that claims 8–11 and 20 would have been
obvious, Petitioner augments its contentions that the challenged independent
claims would have been obvious over Spadaro with assertions based on
Hodge’s description of a secure telephone call management system for use
in penal institutions. Pet. 26–33.
Claims 8 and 10
Claim 8, which depends from independent claim 1, recites “a justice
application management system connected to the networking device for
managing inmates at the plurality of prison facilities” and “a commerce
system for managing commissary orders placed by the inmates at the
plurality of prison facilities.” Petitioner contends Hodge’s shadow
workstation teaches or suggests the recited justice application management
system for managing inmates and Hodge’s commissary workstation teaches
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or suggests a commerce system for managing commissary orders placed by
the inmates. Pet. 28–29.
Petitioner further contends, with support of its declarant, that one of
ordinary skill in the art would have placed the functions of Hodge’s shadow
workstation and commissary workstation at Spadaro’s central administration
location. Id. at 29 (citing Ex. 1017 ¶ 134). Thus, according to Petitioner,
the combination of Spadaro and Hodge would have taught or suggested to
one of ordinary skill in the art the recited justice application management
system and the recited commerce system for managing commissary orders
placed by inmates.
Patent Owner opposes, relying on its declarant testimony that one of
ordinary skill in the art would have understood claim 8 to mean “managing
inmate cells, medications, and other prison administrative functions.” PO
Resp. 52 (citing Ex. 2001 ¶ 273). Notably, Dr. Olivier bases his conclusion
on an example in the ’167 patent. Ex. 2001 ¶ 272 (quoting “[f]or example,
justice application management, which may comprise a back office software
product for a jail to facilitate management of the inmates in the facility (e.g.,
what cells they are assigned to, what medications are to be administered to
them, tracking their medical records, tracking their privileges)”). We find
this approach unpersuasive because we must be careful not to read a
particular embodiment appearing in the written description into the claim if
the claim language is broader than the embodiment. In re Van Geuns, 988
F.2d 1181, 1184 (Fed. Cir. 1993); see also Superguide Corp. v. DirecTV
Enters, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the
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claim language may be aided by the explanations contained in the written
description, it is important not to import into a claim limitations that are not
a part of the claim.”); In re Self, 671 F.2d at 1348 (stating that it is well
established that limitations not appearing in the claims cannot be relied upon
for patentability). Here, the claim language “managing inmates” is broader
than the examples in the’167 patent—inmate assignment to cells,
medications to be administered to inmates, tracking their medical records,
and tracking their privileges.
Moreover, even if we were to accept Dr. Olivier’s conclusion that an
example in the ’167 patent would limit the language of the claim, Dr. Olivier
does not address sufficiently why the example in the ’167 patent of
“managing inmates” by tracking inmate privileges would not encompass the
function of Hodge’s shadow workstation—monitoring inmate telephone
calls. Nor does Dr. Olivier address the expansive description in the ’167
patent that a justice application management system “may correspond to any
number of information management systems providing data collection
and/or sharing among facilities as described herein” (Ex. 1001, 8:4–8).
Weighing Dr. Olivier’s testimony against the Dr. Forys’ testimony,
we credit Dr. Forys’ testimony over that of Dr. Olivier, because Dr. Forys’
testimony better comports with the disclosure of the ’167 patent about a
justice application management system. We also discount Dr. Olivier’s
testimony based on example functions of a justice application management
system, while not addressing adequately evidence that undercuts Patent
Owner’s position. It is within our discretion to assign the appropriate weight
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to the testimony offered by Dr. Olivier and Dr. Forys. See, e.g., Yorkey, 601
F.3d at 1284; Am. Acad. of Sci. Tech Ctr., 367 F.3d at 1368. Thus, we are
not persuaded by Patent Owner’s attempt to construe claim 8 more narrowly
than the broad claim language itself—“a justice application management
system for managing inmates” at the prison facilities—based on unclaimed,
example functions of a justice application management system.
Petitioner also has articulated sufficient reasoning with some rational
underpinning to support the legal conclusion that the subject matter of
claim 8 would have been obvious to one of ordinary skill in the art in view
of Spadaro and Hodge. According to Dr. Forys, because Spadaro describes
that that control functions, including advanced call monitoring and real-time
call recording, “can be centralized with the functions being performed at a
central administrative location,” one of ordinary skill in the art would have
placed the functions provided by Hodge’s shadow workstation, investigative
workstation, and commissary workstation at Spadaro’s central
administrative location. Ex. 1017 ¶ 134 (citing Ex. 1004, 4:10–13); see also
Ex. 1004, 4:21–24 (indicating control functions include advanced call
monitoring, real time call recording, and three-way call fraud detection).
We also note the administrative nature of Hodge’s commissary
workstation—“to manage and record a user’s financial transactions”
(Ex. 1005, 20:32–34) and, as noted by Petitioner (Pet. 27), Spadaro’s
disclosure of a centralizing billing functions, among other functions, at a
“central administration location” (Ex. 1004, 4:10–13).
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Claim 10 depends from claim 8 and additionally recites the “justice
application management system further provides investigative information
with respect to said calls.” For this additional feature, Petitioner further
relies on the capability of Hodge’s shadow workstation to record suspicious
calls and flag the called party’s number in the inmate’s profile, which can
then be used to provide future monitoring of calls. Pet. 31 (citing Ex. 1005,
20:47–61). Petitioner also relies on the capability of Hodge’s investigative
workstation to monitor calls and provide an alert when certain words are
spoken. Id. (citing Ex. 1005, 20:62–67).
Patent Owner relies on an example in the ’167 patent of intelligence
functions provided by the justice application management system to construe
claim 10 as requiring the example from the ’167 patent, an approach which
we find unpersuasive for the reasons given in connection with claim 8. See
PO Resp. 53 (indicating, claim 10 requires “investigative analysis of call and
money flow data, or analyzing call and commerce transaction velocity”
based on the examples provided of investigative information in the ’167
patent); see also Ex. 1001, 14:35–38 (describing “intelligence functionality
(e.g., investigative analysis of call and money flow data, or analyzing call
and commerce transaction velocity)”).
Weighing Patent Owner’s narrow construction of the claim language
based on an example in the ’167 patent against Hodge’s descriptions of
several capabilities that provide information with respect to inmate calls, we
determine Petitioner has shown by a preponderance of evidence that
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Hodge’s descriptions of workstation capabilities provide investigative
information with respect to inmate calls.
Claim 9
Claim 9, which depends directly from claim 7 and indirectly from
independent claim 1, recites “a call treatment system co-located with said
call application management system and located remotely from the call
processing gateways” and “the call treatment system connected to the
validation system for communicating with a signaling network of said first
telephone carrier network to determine whether a call forwarding feature is
activated for call numbers associated with the calls.”
Petitioner relies on Hodge’s description, in the Background of the
Invention section, that conventional systems prevent an inmate from using
call forwarding. Pet. 30 (citing Ex. 1005, 4:60–67). For the recited “call
treatment system,” Petitioner relies on Hodge’s description of another
conventional system’s techniques for “detecting tones commonly associated
with call bridging and call forwarding attempts,” including various types of
signals, such as ring signals and busy signals, which are characteristic of
placing a telephone call. Id. (citing Ex. 1005, 8:21–28). For support of its
position, Petitioner relies on testimony from Dr. Forys. Id. (citing Ex. 1017
¶ 137).
Petitioner further contends, with support of its declarant Dr. Forys,
that one of ordinary skill in the art would have placed Hodge’s call
forwarding detection means at the central administration location of
Spadaro. Id. According to Petitioner’s declarant, Spadaro’s centralized
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three-way call detection (Ex. 1004 4:10–13, 4:21–24) and Hodge’s call
forwarding detection use the same network signaling tones (switch hook
flashes). Id. (citing Ex. 1017 ¶ 137).
Patent Owner contends that Hodge does not teach the recited
“validation system” for the reasons discussed with respect to claim 7. PO
Resp. 51–52; Ex. 2001 ¶ 274 (indicating that Hodge fails to disclose the
recited validation system). Petitioner, however, does not rely on Hodge for
the validation system but relies on Spadaro. Pet. 20, 29–30. Further, for the
reasons discussed in connection with claim 7, we determine that Petitioner
has established that claim 7 would have been obvious in view of Spadaro.
Patent Owner, relying on its declarant, also contends that Hodge does
not disclose signaling that indicates “whether a call forwarding feature is
activated for call numbers associated with the call,” as additionally recited in
claim 9. PO Resp. 51 (citing Ex. 2001 ¶ 274). Dr. Olivier acknowledges
that Hodge indicates another reference “includes a means for detecting tones
commonly associated with call bridging and call forward attempts.”
Ex. 2001 ¶ 274 (citing Ex. 1005, 8:21–28). Dr. Olivier indicates that
“Hodge omits any description of signaling that indicates” the recited feature.
Id..
Patent Owner’s contentions regarding Hodge unduly focus on specific
isolated capabilities described in Hodge without addressing what those
capabilities would have suggested to one of ordinary skill in the art at the
time of the invention of the ’167 patent. Further, Patent Owner’s
contentions in large measure amount to attacks on the individual elements of
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claim 9, without sufficient consideration of what the disclosure of Hodge
would have suggested to one of ordinary skill in the art regarding the
claimed subject matter as a whole, which is an approach we find
unpersuasive. Mouttet, 686 F.3d at 1332 (“[T]he test for obviousness is
what the combined teachings of the references would have suggested to
those having ordinary skill in the art.”).
Thus, we credit Dr. Forys testimony that one of ordinary skill in the
art would place Hodge’s call forwarding detection means at the central
administration location of Spadaro, which supports Dr. Forys’ conclusion
that Spadaro and Hodge would have conveyed the subject matter of claim 9
to one of ordinary skill in the art. For the reasons discussed in connection
with claim 9 and the reasons discussed later, Petitioner has articulated
sufficient reasoning with some rational underpinning to support the legal
conclusion that the subject matter of claim 9 would have been obvious to
one of ordinary skill in the art in view of Spadaro and Hodge.
Claim 11
Claim 11 depends from independent claim 1 and additionally recites
“interactive voice response functionality for providing messaging associated
with processing of the calls.” Petitioner relies on Hodge’s description of a
pre-recorded menu of restrictions informing an inmate of specific
restrictions and different payment options, such as a collect call means or
debit account means. Pet. 31–32 (citing Ex. 1005, 11:52–58). Dr. Forys
testifies that one of ordinary skill in the art would recognize this discussion
as referring to interactive voice response functionality. Ex. 1017 ¶ 141. We
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also note Hodge describes, adjacent to the portion cited by Petitioner, that
the person called may be first prompted to select a language for future voice
prompts, may be informed via voice prompts the identity of the calling party
and location where the calling party is located, and may allow the called
party to accept or reject the caller through voice responses.
Ex. 1005, 11:60–67. Based on the Dr. Forys’ testimony and Hodge’s
description, we are persuaded that Petitioner has established that the
combination of Spadaro and Hodge would have conveyed to one of ordinary
skill in the art the subject matter additionally recited in claim 11—interactive
voice response for providing messaging associated with processing of the
calls.
Patent Owner contends that the subject matter of claim 11 would not
have been obvious in view of the combination of Spadaro and Hodge,
because Spadaro describes call processing being performed local to a prison
and Spadaro’s control computer provides an interactive voice response
system for collecting data. PO Resp. 53. We are not persuaded because
Patent Owner has not considered sufficiently what the combination of
Spadaro and Hodge would have conveyed to one of ordinary skill in the art
in view of Hodge’s description of interactive voice response capability.
Mouttet, 686 F.3d at 1332.
Claim 20
Claim 20, which depends from independent claim 17, additionally
recites “recording the calls from the plurality of telephone terminals,”
similarly to claim 6. Petitioner relies on similar arguments regarding this
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feature as advanced with respect to claim 6. Compare Pet. 32 (regarding
claim 20) with Pet. 19–20 (regarding claim 6). For the reasons discussed in
connection with claim 6, we are persuaded by Petitioner’s contentions.
Claim 20 further recites “analyzing content of the calls for particular
utterances to determine presence of threats in the calls.” For this feature,
Petitioner relies on Hodge’s description of monitoring inmate calls and,
when certain key words are spoken, starting an audio recorder and sending
an alert to authorities that a violation has occurred. Pet. 32–33 (citing
Ex. 1005, 20:62–67); Ex. 1017 ¶ 144 (Dr. Forys’ testimony regarding the
same).
Patent Owner acknowledges that Hodge describes analyzing calls for
particular utterances but contends that is insufficient because Hodge does
not describe doing so for the particular purpose “to determine presence of
threats in the calls,” recited in claim 20. PO Resp. 59.
Hodge describes analyzing calls for particular utterances to determine
when a violation has occurred and to alert authorities about the violation.
Ex. 1005, 20:62–67. Petitioner’s declarant indicates that Hodge’s
description supports his conclusion that the combination of Spadaro and
Hodge would have conveyed to one of ordinary skill in the art the subject
matter of claim 20. Ex. 1017 ¶¶ 142–44.
Weighing Patent Owner’s contentions presented without substantial
support from its declarant against Petitioner’s declarant’s testimony
concerning Hodge’s description of alerting authorities about a violation, we
are persuaded that Petitioner has established by a preponderance of evidence
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that Spadaro and Hodge would have conveyed to one of ordinary skill in the
art the subject matter of claim 20. Hodge’s description of sending an alert to
authorities about a violation when certain key words are spoken in an
inmate’s call is similar to the description of the ’167 patent of using word
search functionality “to alert investigators of a potential threat associated
with a caller’s utterance of words.” Ex. 1001, 10:45–50.
13
Both Hodge and
the ’167 patent describe analyzing content of calls for particular utterances
and sending an alert to authorities or investigators based on an analysis of
call content. Hodge expressly describes alerting authorities about a
violation, whereas the ’167 patent expressly describes alerting investigators
about a potential threat. Dr. Forys at least implicitly indicates that Hodge’s
alerting authorities about a violation would have conveyed to one of
ordinary skill in the art determining presence of a threat in a call. See
Ex. 1017 ¶¶ 142–44.
3. Reason to Support Legal Conclusion of Obviousness
Petitioner has articulated sufficient reasoning with some rational
underpinning to support the legal conclusion that the subject matter of
claims 8–11 and 20 would have been obvious to one of ordinary skill in the
art in view of the teachings of Spadaro and Hodge as combined in the
manner proposed by Petitioner. See KSR, 550 U.S. at 418. For the reasons
discussed regarding independent claims 1 and 17, Spadaro would have

13
The ’167 patent does not provide further details but rather refers to a
different patent application for “[f]urther detail with respect to investigative
uses of such word search functionality.” Ex. 1001, 10:50–54.
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conveyed to one of ordinary skill in the art the limitations of the independent
claims. For the reasons previously discussed, we have determined that
Petitioner has established by a preponderance of evidence that the
combination of Spadaro and Hodge would have conveyed the features of
dependent claims 8–11 and 20.
Petitioner, with support from its declarant, indicates the reason that
one of ordinary skill in the art would have combined Spadaro and Hodge
was the two references were addressing the same problem—control and
management of inmate telecommunications. Pet. 26 (citing Ex. 1017 ¶ 128).
KSR, 550 U.S. at 420 (“Under the correct analysis, any need or problem
known in the field of endeavor at the time of invention and addressed by the
patent can provide a reason for combining the elements in the manner
claimed.”). Petitioner, also relying on its declarant, contends a one of
ordinary skill in the art could have combined the functions of Hodge with
the system of Spadaro by known methods and the results of the combination
would have been predictable to one of ordinary skill in the art. Pet. 27
(citing Ex. 1017 ¶ 130). As noted previously in connection with
independent claims 1 and 17, the electrical arts, such as claimed here,
involve predictable factors. See In re Fisher, 427 F.2d at 833 (indicating
patents in the mechanical or electrical arts involve predictable factors).
4. Conclusion Regarding Obviousness of
Claims 8–11 and 20 in View of Spadaro and Hodge
Accordingly, we determine that the subject matter recited in each of
claims 8–11 and 20 as a whole would have been obvious to one of ordinary
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skill in the art in view of Petitioner’s combination Spadaro and Hodge.
35 U.S.C. § 103(a). We have resolved the question of obviousness based on
factual determinations of (1) the scope and content of Spadaro and Hodge;
(2) differences between the subject matter of claims 8–11 and 20 and the
teachings of Spadaro and Hodge; (3) the level of ordinary skill in the art; and
(4) objective evidence of nonobviousness. Graham, 383 U.S. at 17–18.
Therefore, we determine that Petitioner has shown by a preponderance of the
evidence that the subject matter of claims 8–11 and 20 of the ’167 patent
would have been obvious to a person of ordinary skill in the art in view of
the teachings of Spadaro and Hodge.
F. Obviousness over Spadaro and Bellcore
Claim 13 depends from claim 1 and further recites that the “first
carrier network comprises a MGCP (Media Gateway Control Protocol)
carrier.” Petitioner contends claim 13 is unpatentable for obviousness under
35 U.S.C. § 103 over Spadaro and Bellcore, relying on declaration testimony
of Dr. Forys. Pet. 33 (citing Ex. 1017). Patent Owner responds, relying on
declaration testimony of Dr. Oliver. PO Resp. 54 (citing Ex. 2001).
Bellcore is a technical reference that describes an architectural
framework for voice over packet networks. Ex. 1006. Petitioner represents
that Bellcore is prior art under 35 U.S.C. § 102(b) because it was published
in January 1999, more than four years prior to the filing date of the
application that issued as the ’167 patent. Pet. 4. Patent Owner does not
dispute that Bellcore is prior art to the challenged claims.
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Petitioner acknowledges that Spadaro does not disclose that a VoIP
network may use MGCP and relies on Bellcore’s disclosure that “MGCP
enables external control and management of data communications
equipment operating at the edge of emerging multi-service packet
networks.” Pet. 33 (quoting Ex. 1006, 4–10).
Patent Owner counters that claim 17 is not obvious in view of Spadaro
and Bellcore because a MGCP carrier network “would not provide the
analog connection that Spadaro teaches is required for high-fidelity three-
way call detection.” PO Resp. 54 (citing Ex. 2001 ¶ 107). In the cited
paragraph of Dr. Olivier’s testimony, Dr. Olivier testifies that “[t]o achieve
successful three-way call detection, Spadaro emphasizes that his invention
requires that the three-way call detection is ‘moved beyond the VoIP
network so that signal loss or degradation by VoIP does not interfere with
three way call detection.’” Ex. 2001 ¶ 107 (citing Ex. 1004, 2:12–15).
Dr. Olivier’s testimony cited by Patent Owner, however, does not indicate
expressly or directly that a MGCP carrier network “would not provide the
analog connection that Spadaro teaches is required for high-fidelity three-
way call detection” or conclude that claim 13 would not have been obvious
in view of Spadaro and Bellcore.
We agree with Petitioner (Pet. 23), who contends that Patent Owner
conflates Spadaro’s disclosure of performing three-way call detection in an
analog context with the selection of the type of network carrier—analog or
VoIP. Further, as Petitioner correctly indicates (Reply 23), Spadaro
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discloses both analog and VoIP transport to the carrier (Ex. 1004, 4:56–61),
which further undercuts Patent Owner’s position.
We also determine that Petitioner has articulated sufficient reasoning
with some rational underpinning to support the legal conclusion that the
subject matter of claim 13 would have been obvious to one of ordinary skill
in the art in view of the teachings of Spadaro and Bellcore as combined in
the manner proposed by Petitioner. See KSR, 550 U.S. at 418; Pet. 33 (citing
Ex. 1017 ¶ 147) (indicating Bellcore describes implementation details for
VoIP networks described by Spadaro).
Accordingly, we determine that the subject matter recited in claim 13
as a whole would have been obvious to one of ordinary skill in the art in
view of Petitioner’s combination Spadaro and Hodge. 35 U.S.C. § 103(a).
We have resolved the question of obviousness based on factual
determinations of (1) the scope and content of Spadaro and Bellcore;
(2) differences between the subject matter of claim 13 the teachings of
Spadaro and Bellcore; (3) the level of ordinary skill in the art; and
(4) objective evidence of nonobviousness. Graham, 383 U.S. at 17–18.
Therefore, we determine that Petitioner has shown by a preponderance of the
evidence that the subject matter of claim 13 of the ’167 patent would have
been obvious to a person of ordinary skill in the art in view of the teachings
of Spadaro and Bellcore.
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III. CONCLUSION
Petitioner has proven by a preponderance of the evidence that
claims 1–7, 12, 14–19, and 21 of the ’167 patent are unpatentable under
35 U.S.C. § 103(a) as obvious over Spadaro, claims 8–11 and 20 are
unpatentable as obvious over Spadaro and Hodge, and claim 13 is
unpatentable as obvious over Spadaro and Bellcore.
IV. ORDER
Accordingly, it is hereby
ORDERED that, based on a preponderance of the evidence, claims 1–
21 of U.S. Patent No. 7,899,167 B1 are held unpatentable; and
FURTHER ORDERED that, because this is a Final Written Decision,
the parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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

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