Securus Technologies, Inc.v.Global Tel*Link Corporation

Patent Trial and Appeal Board

Apr 29, 2016

11005816 (P.T.A.B. Apr. 29, 2016)

Trials@uspto.gov Paper 33
571-272-7822 Entered: April 29, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SECURUS TECHNOLOGIES, INC.,
Petitioner,

v.

GLOBAL TEL*LINK CORPORATION,
Patent Owner.
____________

Case IPR2015-00156
Patent 7,551,732 B1
____________

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

BUNTING, Administrative Patent Judge.

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

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I. BACKGROUND
A. Introduction
Securus Technologies, Inc. (“Petitioner”), filed a Petition requesting
an inter partes review of claims 1–27 of U.S. Patent No. 7,551,732 B2
(Ex. 1001, “the ’732 patent”) pursuant to 35 U.S.C. §§ 311–319. Paper 1
(“Pet.”). Global Tel*Link Corporation (“Patent Owner”), timely filed a
Preliminary Response (“Prelim. Resp.”) to the Petition. Paper 11 (“Prelim.
Resp.”). Taking into account the arguments presented in the Preliminary
Response, we determined that the information presented in the Petition
established a reasonable likelihood that Petitioner would prevail on its
challenge of claims 1–8 and 11–27 (“the challenged claims”) of the ’732
patent under 35 U.S.C. § 102(e). Pursuant to 35 U.S.C. § 314, we instituted
this trial on May 1, 2015, as to these claims based on the following asserted
ground of unpatentability (“ground”):1 claims 1–8 and 11–27 of the ’732
patent as anticipated under 35 U.S.C. § 102(e) by Rae. Paper 12 (“Decision
on Institution” or “Dec. on Inst.”).
During the course of trial, Patent Owner timely filed a Patent Owner
Response (Paper 21 (“PO Resp.”)), and Petitioner timely filed a Reply
thereto (Paper 25 (“Pet. Reply”)). Patent Owner then filed Objections to
Petitioner’s Reply Evidence (Paper 26). An oral hearing was conducted on
January 11, 2016, and a transcript of the hearing is entered in the record.
Paper 31 (“Tr.”).

1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, took
effect on March 18, 2013. Because the application from which the ’732
patent issued was filed before that date, our citations to 35 U.S.C. §§ 102
and 103 are to the pre-AIA version.
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We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is entered pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 as
to the patentability of the challenged claims of the ’732 patent. For the
reasons that follow, we determine that Petitioner has demonstrated, by a
preponderance of the evidence, that claims 1–8 and 11–27 of the ’732 patent
are unpatentable.

B. Related Matters
Patent Owner indicates that the ’732 patent is the subject of the
following civil actions: Global Tel*Link Corporation v. Securus
Technologies, Inc., No. 3:13-cv-00713-JRS (E.D. Va. filed October 21,
2013) and Global Tel*Link Corporation v. Securus Technologies, Inc.,
Case No. 3:14-cv-0829K (N.D. Tex., filed March 5, 2014). Paper 10, 1. In
addition, Petitioner identified the following petitions challenging the
patentability of a certain subset of claims in the following patents owned by
Patent Owner: U.S. Patent No. 7,783,021 (Case IPR2015-00153) and U.S.
Patent No. 7,853,243 (Case IPR2015-00155). Pet. 1. We did not institute
trial in Case IPR2015-0153, Paper 12 (PTAB May 1, 2015), and entered a
Final Written Decision in Case IPR2015-00155, Paper 30 (PTAB April 7,
2016).

C. The ’732 Patent (Ex. 1001)
The ’732 patent, titled “Centralized Voice Over IP Recording and
Retrieval Method and Apparatus” issued June 23, 2009, from U.S. Patent
Application No. 11/005,816, filed on December 7, 2004. Ex. 1001, [54],
[45], [21], and [22]. The ’732 patent claims to the benefit of the filing date
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of U.S. Provisional Application No. 60/527,918, filed on December 8, 2003.
Id. at [60].
The ’732 patent relates generally to an apparatus and methodology for
recording, at a centralized location, telephone conversations conducted at a
remote location, such as penal institutions. Ex. 1001, 1:17–19. Figure 1 of
the ’732 patent is reproduced below.

Figure 1 is a flow diagram illustrating the methodology for recording
telephone conversations and storing at a central data center.

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The audio recording system includes origination telephone 10, which,
in the provided example, may be used by inmates of a penal facility to make
telephone calls. Id. at 5:2–3. Conversations from the origination phone are
transmitted as analog voice data 20 over a link to integrated access device
(IAD) 30, for conversion to digital data, and the digital data are further
processed into highly compressed data by a compression module within the
IAD. Id. at 5:37–50. The IAD may be co-located at the same facility as the
origination phone, or at a remote location. Id. The highly compressed data
are routed to the central data center 110 via data circuits, such as Ethernet
and telephone network interface and WAN 70, which may include the
internet or other network capable of transporting data. Id. at 5:50–57. The
highly compressed voice data are processed further for storage on storage
device 220. Id. at 5:64–6:2. Workstation 170 is coupled to the central data
center via the Internet 180 as well as to the IAD. Id. at 6:25–39. An
operator of the workstation may search the recordings stored in the central
database based on search criteria, and a list of matching call records is
presented to the workstation operator. Id. at 6:43–45. In addition,
[if] the operator chooses to listen to a recorded conversation, the
selected compressed data is passed from storage device 220 to
the digital data/voice converter 230 which converts the
compressed voice data into a “streaming” format and passes the
converted voice data back out over the WAN to workstation 170'
or over the Internet 180 to one or more requesting workstation(s)
170.

Id. at 8:2–8.

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D. Illustrative Claim
Of the challenged claims, claims 1, 8, 15, and 20 are independent.
Independent claim 8 is illustrative of the challenged claims and is
reproduced below:
8. An audio monitoring and recording system,
comprising:
a first telephone instrument located at a first location
within a prison environment and configured for communications
with a second telephone instrument located at a second location;
an analog to digital converter at said first location having
an analog input and a digital output, said first telephone
instrument coupled to said input of said analog to digital
converter;
a storage device located at a third location physically
remote from said first location and said second location coupled
to said output of said analog to digital converter, said storage
device being configured to store recorded conversation data files
corresponding to said digital output of said analog to digital
converter;
a streaming converter coupled to said storage device; and
a workstation coupled to said streaming converter,
whereby audio originating from said telephone instrument may
be monitored at said workstation.
Ex. 1001, 9:14–30.
E. Prior Art
Petitioner relies upon U.S. Patent No. 7,899,167 B1, issued March 1,
2011 (Ex. 1002, “Rae”). Pet. 2–3.

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F. Instituted Ground
As explained in the Introduction section above, we instituted trial
based on the following asserted ground of unpatentability: claims 1–8 and
11–27 as anticipated under 35 U.S.C. § 102(e) by Rae. Dec. on Inst. 23.

II. ANALYSIS
A. Level of Skill in the Art
In determining the level of skill in the art, various factors may be
considered, including the “type of problems encountered in the art; prior art
solutions to those problems; rapidity with which innovations are made;
sophistication of the technology; and educational level of active workers in
the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing
Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962
(Fed. Cir. 1986)). There is evidence in the record before us that reflects the
knowledge level of a person with ordinary skill in the art. Petitioner’s expert
witness, Dr. Akl, attests that a person with ordinary skill in the art in the
relevant time frame would be an individual who possesses a combination of
experience and education in the field of telecommunications, including “data
storage, data transmission and analog/digital signal processing.” Ex. 1003
¶ 46. According to Dr. Akl, this would consist of the following: (1) a
minimum of a Bachelor’s Degree in electrical engineering, computer
engineering or the equivalent; and (2) 2 or more years of industry or
academic experience in the relevant field. Id. Petitioner’s rebuttal witness,
Dr. Forys, offers testimony as to the knowledge level of a person with
ordinary skill in the art at the relevant time frame that is essentially the same
as Dr. Akl’s assessment. Ex. 2010 ¶ 29.
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Additionally, we note that the prior art of record in this proceeding—
namely, Rae—is indicative of the level of ordinary skill in the art. See
Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d
at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
B. Claim Construction
In an inter partes review, we interpret a claim term in an unexpired
patent according to the broadest reasonable construction in light of the
specification of the patent in which it appears. 37 C.F.R. § 42.100(b); see
also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278 (Fed. Cir. 2015)
(“We conclude that Congress implicitly approved the broadest reasonable
interpretation standard in enacting the AIA”), cert. granted sub nom. Cuozzo
Speed Techs., LLC v. Lee, 136 S. Ct. 890 (mem.) (2016).
Under the broadest reasonable interpretation standard, and absent any
special definitions, claims terms are given their ordinary and customary
meaning, as would be understood by one of ordinary skill in the art in the
context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
1257 (Fed. Cir. 2007). Any special definitions for claim terms or phrases
must be set forth with reasonable clarity, deliberateness, and precision. In re
Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a
definition, limitations are not to be read from the specification into the
claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). We
apply these general principles in construing the claims of the ’732 patent.
1. Claim Phrases construed in the Decision on Institution
In its Petition, Petitioner asserted no “special definition has been
provided in the specification for any claim term” and thus did not propose a
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claim construction for any of the claim terms. Pet. 6–7 (citing Ex. 1003
¶ 50). Patent Owner, in its Preliminary Response, proposed a claim
construction for the claim term “streaming converter.” Prelim. Resp. 6–8.
For purposes of the Decision on Institution only, we agreed with Patent
Owner that the claim term “streaming converter” should be construed as
“hardware and/or software that converts compressed voice data into a
streaming format.” Dec. on Inst. 8.
2. “Streaming Converter”
Throughout trial, Patent Owner maintained that our preliminary
construction, namely, “hardware and/or software that converts compressed
voice data into a streaming format,” is correct. PO Resp. 6–9. Petitioner
challenged this preliminary construction in its Reply, arguing that it
“improperly attempts to read limitations in from the specification.” Reply 3.
According to Petitioner, the intrinsic or extrinsic evidence does not limit the
“streaming converter” to compressed voice data. Id. Petitioner argued that
the “broadest reasonable interpretation of ’streaming converter’ would at
least include ‘hardware and/or software that converts voice data into a
streaming format.’” Id. Petitioner appears to agree that the “streaming
converter” receives data from the storage device, and based on the scope of
independent claims 1, 3, 8, 15, 20, and 22, argued that the independent
claims do not require that the storage device only receives compressed data.
Id. at 4. At the oral hearing, Patent Owner reiterated its view that the
preliminary construction is the broadest reasonable interpretation of this
claim term “because it is consistent with the specification.” Tr. 126:16–17.
Now, with the full record before us, we consider again the parties’
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arguments and evidence concerning the construction of “streaming
converter.” We first look to the full phrase that includes this claim term,
namely, “a streaming converter coupled to said storage device.” The claim
language informs us of the connection between the “streaming converter”
and the storage device, i.e., “coupled,” and is not concerned necessarily with
the format of the data, i.e. compressed. Patent Owner’s arguments, however,
seemingly interpret “streaming converter” in the context of the data, without
consideration of the entire claim phrase. Patent Owner does not direct us to,
nor do we discern, language in the claim itself requiring the data be
compressed.
As for the portions of the specification identified by Patent Owner, all
refer to the function performed by the streaming converter, namely to
convert the compressed conversation data into a streaming format.
Although the cited passages describe the voice data themselves as
“compressed,” Patent Owner does not direct us to, nor can we find,
disclosure in the specification necessarily limiting the voice data to a
particular format for transmission, such as a compressed format. Indeed, our
review of the specification reveals that:
the present technology provides an Integrated Access Device
(IAD) 30 wherein voice signals are converted to a digital format
and routed by way of a wide area network (WAN) transport
mechanism to the central data center 110 for storage. IAD 30
may be embodied as a device more commonly known as a
Voice over Internet Protocol (VoIP) Gateway. It is to be
specifically understood, however, that the present technology
does not require specific devices or systems for implementation
but rather is more broadly directed to the inclusion of devices
and systems designed to convert analog voice signals into a
digital format suitable for transmission over a digital network.
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Ex. 1001, 4:46–57.
Based on the arguments and evidence presented during trial, Petitioner
argues persuasively that Patent Owner’s arguments fail to support a narrow
construction of “streaming converter.” For example, at the oral hearing,
Petitioner’s counsel testified:
there is nothing in the streaming converter that actually requires
that the data be compressed. All it does is it transfers voice
data into a streaming format. There is nothing that require [sic]
that to be compressed or uncompressed. It is going to operate
the same way, either way, whether that data is compressed or
not.
Tr. 135:13–18.
Having considered the full record developed during trial, we conclude
that the broadest reasonable interpretation of “streaming converter” as would
be understood by one of skill in the art in the context of the ’732 patent is
“hardware and/or software that converts voice data into a streaming format.”
3. “logical search”
Claims 11 and 16 each recite, in relevant part, “wherein said
workstation is configured to perform logical searches of said conversation
identifying data.” Ex. 1001, 9:42–43, 10:3–5. Claim 17 similarly recites, in
relevant part, “wherein said workstation is configured to perform searches of
said data files.” Id. at 10:6–8. Relying on the testimony of its declarant, Dr.
Forys, Patent Owner asserts that the claim term “logical search” “is well-
understood in the communications field” (PO Resp. 9 (citing Ex. 2010
¶ 50)), and that a “logical search” is commonly referred to as a Boolean
search (id. (citing Ex. 2010 ¶ 51)). Patent Owner concludes that the plain
and ordinary meaning of “logical search” is “a search that uses Boolean
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operators,” (id. (citing Ex. 2010 ¶ 50)) and proffers extrinsic evidence of the
dictionary definition of “Boolean” to support its position (id. at 9–10 (citing
Ex. 2001, 67, 69)).
Petitioner counters that the proffered extrinsic evidence regarding the
dictionary definition of “Boolean search” does not support Patent Owner’s
assertion that one of skill in the art would understand “logical search” to
mean “Boolean search.” Reply 5–6. We agree. The proffered extrinsic
evidence does not inform us sufficiently that one of skill in the art in the
relevant time frame would equate a logical search with a Boolean search.
Moreover, Patent Owner does not direct us to, nor can we find, any
disclosure in the specification that supports Patent Owner’s proposed
definition. Indeed, “logical search” is recited only in claims 16 and 17.
We are not persuaded by Patent Owner’s arguments and evidence that
the plain and ordinary meaning of “logical search” is a Boolean search.
Nevertheless, the parties seemingly agree that a “logical search” is
understood by one of skill in the communications field. PO Resp. 9; Reply
5; See Tr. 119:21–23 (“logical search was a well-known term”). Therefore,
based on the record before us, we conclude the claim term “logical search”
need not be construed expressly for purposes of this decision.
4. “file”
Independent claim 8 recites, in relevant part, “said storage device
being configured to store recorded conversation data files corresponding to
said digital output of said analog to digital converter.” Ex. 1001, 9:25–27
(“the ‘data file’ limitation”). Independent claim 15 similarly recites the
“data file” limitation. Id. at 9:53. Although neither party proposed a
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construction of the term “file,” based on the record developed during trial,
we consider the proper construction of this claim term.
Patent Owner, relying on the testimony of its declarant, Dr. Forys,
contends that data may be stored in different ways, including as a data block,
on a disk, or as a file. PO. Resp. 11 (citing Ex. 2010 ¶ 54). Patent Owner’s
proposed construction is based on a special purpose dictionary definition of
“file” as a “[c]omplete, named collection of information, such as a program,
a set of data used by a program, or a user-created document.” Id. (citing Ex.
2001, 211). During oral argument, Patent Owner’s counsel maintained that
“claims 8 and 15 make it clear that they are talking about a specific format.
And that is conversation data files.” Tr. 96:6–7. Patent Owner’s counsel
clarified its position that:
[d]ata is a broader term, and it could be stored any way. So
you could store the data as files, or you could store it in a
database, or when we specifically refer to files, we are referring
to the storage format, which is a file.
Id. at 97:9–13. With respect to data block storage, Patent Owner’s counsel
further argued “you could think of a file as the name[d] collection of data
blocks.” Id. at 97:19–20.
In the context of the entire claim phrase, the term “file” refers to
“recorded conversation data files corresponding to said digital output of said
analog to digital converter.” Patent Owner does not inform us, nor can we
find, language in the claim itself requiring that the data be stored in a
particular manner, such as a data block, a disk, or a file. In its Reply,
Petitioner responded that Patent Owner’s proposed definition of “file”
recognized that “a file can simply be ‘a set of data used by a program.’”
Reply 7.
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As to the specification, Patent Owner does not direct us to, nor can we
find, disclosure in the specification of the ’732 patent detailing that the data
be stored in a particular way. Indeed, our review of the specification reveals
that the term “file” is not defined explicitly or implicitly. For example, the
specification describes how
at the end of the conversation, the entire conversation is written
in the compressed data format to a file on the storage device
220 (FIG. 2) at the central data center 110. Also upon
completion of the conversation, the file is closed and
identifying information is written to a database with which the
compressed conversation data is associated.
Ex. 1001 5:66 – 6:5. This passage belies the position that a “file” must be
“complete” and “named” at all times in the disclosed processes. The
specification also describes an embodiment in which storage of the
compressed conversation data “may be, but is not limited to, a so-called
relational database arrangement.” Id. at 7:62–63.
Because the claim term “file” is commonly understood, we also
consult a general purpose dictionary, which defines “file” as “(1): a
collection of related data records (as for a computer) (2): a complete
collection of data (as text or a program) treated by a computer as a unit
especially for purposes of input and output).”2 Having considered the
arguments and evidence of record, and absent an explicit or implicit
definition, we accord this claim term its ordinary and customary meaning, as
would be understood by one of ordinary skill in the art, in the context of the
entire disclosure of the ’732 patent. See Translogic, 504 F.3d at 1257.

2 See Merriam-Webster.com, http://www.merriam-
webster.com/dictionary/file, (last viewed April 23, 2016).
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Thus, we conclude that the broadest reasonable interpretation of “file” is “a
collection of data.”

C. Anticipation by Rae
A claim is anticipated if each limitation of the claim is disclosed in a
single prior art reference arranged as in the claim. Net MoneyIN, Inc. v.
VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). As recently reiterated
by the Federal Circuit, “a reference can anticipate a claim even if it ‘d[oes]
not expressly spell out’ all the limitations arranged or combined as in the
claim, if a person of skill in the art, reading the reference, would ‘at once
envisage’ the claimed arrangement or combination.” Kennametal, Inc. v.
Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (quoting In
re Petering, 301 F.2d 676, 681 (CCPA 1962)). We analyze this ground
based on anticipation in accordance with the above-stated principles.
Petitioner contends that claims 1–8 and 11–27 are anticipated under
35 U.S.C. § 102(e) by Rae. Pet. 9–60. In its Petition, Petitioner explains
how Rae describes the claimed subject matter of each challenged claim, and
relies upon the Declaration of Dr. Akl (Ex. 1003) to support the analysis
advocated in the Petition. Id. Patent Owner disagrees, and focuses its
arguments on challenging the teachings of Rae with respect to claims 3, 5–
19, 22, and 24–27.3 PO Resp. 10–44. For the reasons given below, after
consideration of the Petition, the arguments in the Patent Owner Response,
Petitioner’s Reply, and the evidence of record, we conclude that Petitioner

3 Trial was not instituted as to claims 9 and 10. Dec. on Inst. 22.
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has demonstrated, by a preponderance of the evidence, that each of claims
1–8 and 11–27 of the ’732 patent is anticipated by Rae. We begin our
analysis with a discussion of the parties’ assertions regarding the experts,
followed by a brief summary of the cited references, and then we address the
parties’ contentions in turn.
1. Dr. Akl
In its Patent Owner Response, Patent Owner contends that we should
accord the testimony of Petitioner’s expert witness, Dr. Akl, “little or no
weight.” PO Resp. 38–44. Specifically, Patent Owner argues that Dr. Akl
provides conclusory statements, without providing real analysis. Id. at 39.
To support its contention, Patent Owner cites various statements made by
Dr. Akl with which it disagrees. See e.g., id. (“A person of ordinary skill in
the art would understand the ‘IP Frame Network’ shown in Figure 1 to be a
wide area network operating on the Internet Protocol (IP) communications
protocol, also understood as ‘the Internet.’”) (citing Ex. 1003 ¶ 120).
We have reviewed the expert testimony from both sides, and find that
both experts have, at times, taken liberties in proffering conclusory
statements without real analysis.4 As such, it is within our discretion to
assign the appropriate weight to the testimony of both Dr. Akl and Dr.
Forys. 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)

4 Under our rules, expert testimony that does not have a proper basis is
entitled to little or no weight. 37 C.F.R. § 42.65(a).
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(“[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.”).
We are not persuaded by Patent Owner’s contentions that Dr. Akl’s
testimony be disregarded. Thus, we accord the testimony of both Dr. Akl
and Dr. Forys the appropriate weight in view of the arguments and evidence
of record in this trial.
2. Overview of Rae (Ex. 1002)
U.S. Patent No. 7,899,167 B1 to Rae has a filing date of August 15,
2003, and issued on March 1, 2011. Ex. 1002, at [10], [22], and [45]. Rae
relates generally to a centralized call processing system for use in a facility
such as a prison. Id. at 1:38–39, 2:6–7. Figure 1 of Rae is reproduced
below.
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Figure 1 is a diagrammatic view of a centralized call processing system.
Call processing system 100 includes call processing platform 101 in
communication with facilities 150–180 via network 130. Id. at 5:41–44.
Facilities include a telephone 141, workstation 142, visitation telephones
143, and call processing gateway 140. Id. at 6:10–14. Call processing
gateways 140 positioned at or near facilities provide interfacing and
arbitration between devices, including analog telephone line interfaces and
WAN interface for coupling to a data network. Id. at 6:1–10. In addition,
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the call processing gateway converts analog signals associated with the
telephone terminals and visitation telephones 143 and digital data packets of
the packet switched network to a VoIP gateway. Id. at 6:10–14. Rae also
discloses that the call processing gateway can “provide such communication
arbitration, e.g., analog to VoIP and VoIP to analog functionality, to provide
a data stream to call processing platform 101 containing the communication
content between such terminals, such as to provide word search and/or call
recording.” Id. at 6:33–39.
Rae further discloses that the call processing platform includes call
recording system 116 capable of storing data with respect to calls, and is
coupled to the call application management system 110. Id. at 9:49–67. In
addition to storing various types of information pertaining to calls, the call
recording system may include processor based functionality to analyze call
content, such as word searches. Id. at 10:39–50.
3. Discussion
a. Claims 1, 2, 4, 20, 21, and 23
Petitioner relies on Rae to describe each of the limitations recited in
independent claims 1 and 20, as well as claims 2 and 4, which depend from
claim 1, and claims 21 and 23, which depend from claim 20. Pet. 9–19, 20–
21, 26, 53–58. Patent Owner, in its Patent Owner Response, does not
challenge Petitioner’s contentions as to claims 1, 2, 4, 20, 21, and 23. We
agree that the passages of Rae cited by Petitioner describe the limitations of
each of these claims. Thus, having considered the evidence of record, we
are persuaded that Petitioner has demonstrated by a preponderance of the
evidence that claims 1, 2, 4, 20, 21, and 23 are anticipated by Rae. See
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Paper 13 (The patent owner is cautioned that any arguments for patentability
not raised in the response will be deemed waived.).
b. Claims 8, 11–19, and 26
Petitioner relies on Rae to describe each of the limitations recited in
independent claims 8 and 15. Pet. 27–37, 45–51. In its Patent
Owner Response, Patent Owner challenges the sufficiency of Petitioner’s
proofs in several respects that we discuss infra. We note, however, that
most of the claim elements are undisputed, and agree that the passages of
Rae cited by Petitioner describe the limitations of each of these claims.
With respect to the undisputed limitations, we find that, based on the
evidence cited in the Petition, Petitioner has presented sufficient evidence to
support a finding that those limitations are disclosed by Rae. We address the
parties’ positions regarding these disputed limitations in turn.
i) “data files”
Independent claim 8 recites, in relevant part, “said storage device
being configured to store recorded conversation data files corresponding to
said digital output of said analog to digital converter.” Ex. 1001, 9:25–27.
Independent claim 15 similarly recites this limitation. Id. at 9:53. In its
Petition, Petitioner argues that the storage device claim term is satisfied by
the disclosure in Rae of a storage device, and related discussion of how
conversation data are recorded and stored by call recording system 116. Pet.
30–31 (citing Ex. 1002, 4:34–39, Figure 1; Ex. 1003 ¶¶ 97–98).
Additionally, Petitioner argues that the “data file” limitation is met by the
disclosure in Rae describing
[t]he conversation data files stored “may comprise the content
of the call, i.e., record the conversation or exchange of data
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provided by the call,” but also “information stored by recording
system 116 may comprise ancillary call information, such as
identification of the calling and/or called party, calling number
(e.g., automatic number information (ANI)), called number
(e.g., dialed number information service (DNIS)), time of call,
duration of call, account information, entity responsible for
billing the call, and/or the like.”
Id. at 31 (citing Ex. 1002, 9:53–62).
Patent Owner argues that Rae does not disclose that the conversation
data are stored as “a specific type of format for storage–a file.” PO Resp.
11. In particular, Patent Owner argues that Rae does not disclose expressly
the format used to store call content, and that Petitioner has not argued that
Rae inherently discloses the use of files for storage. Id. at 12.
Petitioner counters that Rae satisfies the “data file” limitation because
the disclosure in Rae regarding storage of the content of the call is
representative of a set of data used by a program. Reply 7 (citing 1002,
9:63–67). As discussed supra, we construe the claim term “file” to mean “a
collection of data.” Petitioner’s position regarding Rae’s disclosure of
storage of the call content is consistent with this claim construction.
Having considered the record in its entirety, Petitioner presents
persuasive evidence to support a finding that Rae describes “said storage
device being configured to store recorded conversation data files
corresponding to said digital output of said analog to digital converter”
limitation of claim 8 and 15.
ii) “streaming converter”
Claims 8 and 15 recite, in relevant part, “a streaming converter
coupled to said data storage device.” Ex. 1001, 9:28, 9:60. In the Petition,
Petitioner relies on the testimony of its Declarant, Dr. Akl, in asserting that
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the call processing gateway taught by Rae is a “streaming converter”
because it may be implemented as a VoIP gateway which “operates to
convert analog voice signals to digital data in a streaming format for
transmission of live voice conversations.” Pet. 33 (citing Ex. 1003 ¶ 102).
According to Petitioner, Rae references ‘“data streams’ output from the call
processing gateways throughout its disclosure.” Id. at 33–34 (citing Ex.
1002, 6:32–39, 16:16–21, 17:21–26, Fig. 1; Ex. 1003 ¶ 103–104).
Patent Owner, in its Patent Owner Response, asserts that “Rae’s VoIP
gateway cannot be the recited ‘streaming converter’ for one fundamental
reason––it does not convert compressed data into a streaming format.” PO
Resp. 14. Relying on the testimony of Dr. Forys, Patent Owner argues that
Rae fails to disclose that the VoIP gateway performs compression prior to
transmission of the VoIP data stream, and “compression is not necessarily
present in a VoIP gateway.” Id. at 15 (citing Ex. 2010 ¶ 63). Patent Owner
argues further that Petitioner has not demonstrated that “compression
necessarily occurs before the voice data is converted into VoIP packets (the
alleged “streaming format”).” Id. at 16.
In its Reply, Petitioner maintains that the VoIP gateway described in
Rae is a streaming converter because it converts digital voice data into a
streaming format for playback. Reply 8 (citing Ex. 1003 ¶ 102). Petitioner
asserts that although the parties agree the call processing gateway of Rae
converts voice data into a streaming format, Patent Owner adheres to its
narrow claim construction of “streaming converter.” Id. (citing Ex. 1009,
94:7–17; see also PO Resp. 16).
As discussed in the claim construction section above, we construed
the claim term “streaming converter” to mean “hardware and/or software
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that converts voice data into a streaming format.” Petitioner argues
persuasively that Rae’s disclosure of a VoIP gateway, that converts analog
voice signals to digital data in a streaming format for transmission of live
voice conversations, is consistent with this claim construction. We are not
persuaded by Patent Owner’s argument regarding timing of any data
compression relative to conversion into VoIP packets, because this argument
is not commensurate in scope with the “streaming converter” limitation. See
In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (stating that limitations not
appearing in the claims cannot be relied upon for patentability). Patent
Owner does not direct us to, nor can we find, language in this claim
limitation that requires the compression to occur before the voice data are
converted into VoIP packets. We, therefore, decline Patent Owner’s
invitation to narrow the scope of this disputed claim limitation by
incorporating an extraneous timing requirement.
Moreover, Petitioner argues persuasively that Rae discloses this claim
limitation even under Patent Owner’s proposed construction. Relying on the
testimony of Dr. Akl, Petitioner demonstrates sufficiently that data
compression was necessarily part of the commercially available Cisco IAD
2420 VoIP gateway described by Rae. Id. at 9 (citing Ex. 1003, ¶ 75).
Next, Patent Owner argues that “[t]he call processing gateway (VoIP
gateway) of Rae cannot be the ‘streaming converter’ of claims 8 and 26 for
one additional reason––Petitioner relies on the same VoIP gateway to meet
the ‘analog to digital converter’ claim element.” PO. Resp. 16. Patent
Owner contends “that Petitioner does not identify ‘how both an analog to
digital converter and a streaming converter could reside within the call
processing gateway’ described in Rae.” Id. at 16–17. According to Patent
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Owner, the “streaming converter” and “analog to digital converter” are
recited as “two separate and discrete components” (Id. at 17) as evidenced
by Figures 1 and 2 of the ’732 patent (Id. (citing Ex. 1001, Figures 1 and 2)).
In its Reply, Petitioner refutes Patent Owner’s argument that the
“analog to digital converter” and “streaming converter” claim elements
cannot be separate structures, because the claims define both “by the
function they perform, and not by the structure of the element.” Reply 11.
Petitioner supports its position by directing us to an embodiment described
in the ’732 patent itself of IAD 30, which performs both the function of
converting analog information into digital data and compressing the digital
data by the compression module. Id. at 11 (citing Ex. 1001 5:38–40, 48–50).
Our review of the specification as well as Figures 1 and 2 reveals that
IAD 30 “may be co-located at the same facility as the origination telephone
or may be at a more remote location and coupled to the origination
telephone.” Ex. 1001, 5:41–43. Use of the permissive term “may” suggests
that IAD 30 could be located at a “first location” or another location. While
claim 8 expressly recites that both the first telephone and analog to digital
converter are located “at a first location,” and the storage device is located at
a “third location physically remote from said first location,” the location of
the streaming converter is not expressly recited. Id. at 9:15–16, 18, 22–23,
and 28. Thus, Petitioner explains persuasively how the VoIP gateway in
Rae meets both the “analog to digital converter” and “streaming converter”
claim elements of claims 8 and 15.
In considering the record in its entirety, Petitioner has presented
persuasive evidence to support a finding that Rae describes the “streaming
converter” claim limitation recited in independent claims 8 and 15.
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iii) Summary
Based on further review of the record, and for the reasons discussed
above, Petitioner has demonstrated, by a preponderance of the evidence, that
claims 8 and 15 of the ’732 patent are anticipated by Rae.
c. Claims 5, 11, 12, 16, 17, 24, and 27
The ’732 patent contains two sets of dependent claims directed to the
search capability of the workstation. In the first set, dependent claims 5, 12,
17, and 24 require that the workstation be configured to search conversation
data. The second set, dependent claims 11, 16, and 27, each require that the
workstation be configured to perform a logical search of the conversation
data. Patent Owner argues that Petitioner fails to establish that Rae
expressly or inherently discloses the “search” element of these two sets of
claims because: 1) “[t]he claims limit where the search of the call content
and conversation identifying information occurs” (PO Resp. 20–21); 2)
“[t]he ’732 patent distinguishes between the search of words or phrases in
call content from a logical search of conversation identifying data” (id. at
22–23); 3) “Rae does not anticipate dependent claims 5, 12, 17, and 24
because it does not disclose a workstation that is configured to search the
recorded conversation data” (id. at 23–26); and 4) “Rae does not anticipate
dependent claims 11, 16, and 27 because it does not disclose a workstation
that ‘is configured to perform logical searches of said conversation
identifying data’” (id. at 26–30). We consider the parties’ arguments
directed to these two sets of claims in turn.
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i) The claims limit where the search of the call content and
conversation identifying information occurs.
With respect to the first set of claims, Petitioner describes how Rae
discloses that the call recording system includes word search functionality,
and workstation 142 can search accessed recorded conversation data stored
by the call recording system via a wide area network (WAN). Pet. 21–24,
43–44, 52, and 58 (citing Ex. 1002, 10:39–50, 13:10–21, 13:64–14:1, 17:21–
30, Fig. 1; Ex. 1003 ¶¶ 79–81, 116). As to the second set of claims,
Petitioner describes how Rae meets this limitation in disclosing that
conversation data are recorded and stored by the call recording system, the
stored data comprise the content of the call, and identifying information
associated with the call content, and word search functionality are utilized to
analyze the content of the calls. Pet. 40–43, 51–52 , and 60 (citing Ex. 1002,
4:34–39, 9:53–62, 9:64–67, 10:1–7, 10:39–50, 12:63–66; Ex. 1003 ¶¶ 112–
115).
As to both sets of claims, Patent Owner argues in its Patent Owner
Response that the use of the functional language “configured to” means that
the workstation itself “must be designed or adapted to perform the recited
search,” and that “a general purpose computer that simply receives the
results of the search would not meet the language of the claim.” PO Resp.
20. To support its argument that the ’732 patent describes a client server
architecture for searching stored data, Patent Owner cites a passage in the
specification describing an embodiment in which the workstation “may be
provided with a web-based application [client] so that an operator [may]
enter criteria for a search of the central database [server].” Id. at 21 (citing
Ex. 1001, 6:40-41). Based on this disclosure regarding the central database
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functioning as a database engine that returns the results of the search to the
client application for processing and presentation to the user, Patent Owner
asserts the fact that the workstation in Rae “works in concert with the central
database to effectuate the search does not remove the requirement that the
workstation must be adapted to or designed with the recited search
functionality.” Id. at 21.
Taking a contrary position, Petitioner argues that neither the claim nor
the cited passages of the specification limit the search to taking place on the
workstation. Reply 12. Citing the same passage from the specification as
Patent Owner, Petitioner contends that the referred to “web-based
application” searches the central database (Id. (citing Ex. 1001, 6:39–42),
and further that “a web-based application defines the workstation (i.e.,
client) as the interface to the functionality accessible on a server (i.e., the
database) via the web (i.e., a network).” Id. Based on this example in the
specification of a web-based application, Petitioner asserts that the search
engine (i.e. database engine) resides at the central database and not on the
workstation. Id. Petitioner supports its position by noting that the work
station sends the search criteria to the central database and further that the
workstation presents the results of that search to the user. Id. at 13 (citing
Ex. 1001 6:40–45). The centralized search facility of Rae is implemented
the same way, according to Petitioner. Id. (citing Ex. 1001, 13:10–21).
We are not persuaded by the evidence and arguments presented by
Patent Owner that the claim phrase “a work station configured to search”
means that the search must occur on the workstation. Instead, Petitioner
argues persuasively that both the ’732 patent and Rae operate the same way
because “search criteria are sent from the workstation to the database server
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and the results of the search are provided to the workstation for presenting to
the user.” Pet. 13. Petitioner reiterated its position at the oral hearing. Tr.
88:1–16.
ii) The ’732 patent distinguishes between the search of words
or phrases in call content from a logical search of
conversation identifying data.

Next, Patent Owner notes that “claims 5, 12, 17, and 24 require that
the search is of the recorded conversation data files. And, claims 11, 16,
and 27 require that the search is a logical search of the conversation
identifying data.” PO Resp. 22. Directing our attention to the
specification, Patent Owner contends that “call content data (the recorded
conversation data file) is separate and distinct from call identifying
information.” Id. at 23 (citing Ex. 1001, 5:55–6:1, 6:2–5). In its Reply,
Petitioner argues that Rae discloses both these limitations because Rae
discloses a call recording system that records the call content, “i.e., record[s]
the conversations or exchange of data provided by the call” (Id. at 14 (citing
Ex. 1002, 9:53-56)), and call identifying information associated with call
content, i.e., “information stored by call recording system 116 may comprise
ancillary call information, such as identification of the calling and/or called
party, calling number (e.g., automatic number information (ANI)), called
number (e.g., dialed number information service (DNIS)), time of call,
duration of call, account information, entity responsible for billing the call,
and/or the like” (id. (citing Ex. 1002, 9:56-67)).
Based on the evidence and arguments presented during trial, Petitioner
argues persuasively that Rae discloses both call content data and call
identifying information. For example, Rae describes information stored by
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the call recording system may include the content of the call, and
“[a]dditionally or alternatively, information stored by the call recording
system 116 may comprise ancillary call information.” Ex. 1002 9:56–58.
iii) Claims 5, 12, 17, and 24
Patent Owner argues that Rae does not disclose the claim element of a
“workstation configured to search the recorded conversation data” as recited
in the first set of claims, i.e., claims 5, 12, 17, and 24. PO Resp. 23. Patent
Owner challenges whether the “virtual local facility call processor system”
described in Rae can be stretched to mean that the functionality of call
processing platform 101 is also distributed to each remote facility. Id. at 24–
25 (citing Ex. 2010 ¶79). Relying on the testimony of its declarant, Patent
Owner characterizes Rae as disclosing “that the results of certain centralized
functions may be made available to a user via a workstation 142—e.g., a
recorded inmate conversation stored at call recording system 116 may be
played back on workstation 142.” Id. at 25 (citing Ex. 2010 ¶ 79). Patent
owner concludes “[t]he fact that a workstation may have search functionality
is insufficient to establish anticipation.” Id. at 26.
Petitioner maintains in its Reply that the workstation of Rae performs
searches of conversation data. Reply 15–16 (citing Ex. 1002, 10:42–46,
13:10–21, Figure 1; Ex. 1003 ¶¶ 79, 81). As discussed supra, we agree with
Petitioner that the “configured to” language in the claims means that the
search itself need not occur on the workstation. Id. at 15. Moreover,
Petitioner argues persuasively that the “virtual local facility call processor
system” in Rae is “no different from the web-based application in the ’732
patent” because both systems run a query on a remote database and return
the results to the workstation. Id. at 15–16.
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iv) Claims 11, 16, and 27
Patent Owner contends that Rae’s workstation is not “configured to
perform logical searches of said conversation identifying data.” PO Resp.
26. Patent Owner first argues Rae does not anticipate because “recognizing
‘words or phrases within the content of a call’ is not the claimed logical
search of conversation identifying data.” Id. at 27. Patent Owner explains
that Rae searches the call content and not the conversation identifying data.
Id. at 27.
Petitioner counters that Patent Owner’s interpretation of this claim
phrase is not the broadest reasonable interpretation based on the
specification’s broad disclosure of what conversation identifying data
include. Reply 17. For example, Petitioner notes that the ’732 patent
describes identifying information as “information necessary to retrieve the
stored compressed conversation data and may include, but is not limited to,
such information as prisoner’s name, origination number, destination
number, time and date of call, facility location, and any other such
identifying information as may be desirable for any particular installation or
circumstance.” Id. (citing Ex. 1002, 6:5–11). Thus, Petitioner explains
persuasively how the keyword identification technique described in Rae falls
with the broadest reasonable interpretation of “conversation identifying
data” as recited in the claims. Id.
Next, Patent Owner argues that Rae does not disclose a workstation
configured to perform a logical search, and instead discloses that call
recording system 116 performs the word search. PO Resp. 27. Relying on
the testimony of its declarant, Dr. Forys, Patent Owner contends that the
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workstation described by Rae has neither express nor inherent search
capability. Id. at 27–28 (citing Ex. 2010 ¶ 87).
Petitioner notes that during the deposition of Dr. Forys, when asked
about the role of the workstation in performing a search of a centralized
database like that described in the ’732 patent, “Dr. Forys confirmed that a
search is performed at the workstation if the workstation sends search
parameters to the database for identification of the results,” (Reply 19 (citing
Ex. 1009, 121:4–122:9)), and that this technology was well known in the
time-frame of the ’732 patent (id. (citing Ex. 1009, 124:22–125:4)).
Petitioner also draws our attention to the testimony of Dr. Forys’ regarding
the search functionality discussed in Rae, e.g., “[t]he only thing Rae says is
that I can access information. That doesn’t mean you search it.” Id. at 20
(citing Ex. 1009, 128:11–129:22).
We do not credit the testimony of Dr. Forys that one of skill in the art
would not understand the description in Rae regarding accessing information
to encompass a search for the information. Ex. 1009, 128:11–129:22.
Indeed, Dr. Forys acknowledges that searching a database remotely from a
web-based application was generally known in 2003. Ex. 1009, 124:22–
125:4.
Second, Patent Owner argues that Rae fails explicitly or inherently to
disclose the “logical search” claim element. PO Resp. 28–30. Specifically,
Patent Owner argues that the access control mechanism described in Rae
does not require any type of search, let alone a logical search. Id. at 28.
Based on its proposed narrow interpretation of “logical search” as a “search
that uses Boolean operators,” which we do not adopt, Patent Owner argues
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further that Rae never discloses searching conversation identifying data. Id.
at 29.
Petitioner replies that Rae discloses logical searching even under
Patent Owner’s proposed narrow construction because “any standard search
mechanism is a logical search.” Reply 16. Petitioner notes that Dr. Forys
agreed that “a keyword search of a single word would be the Boolean
equivalent of the Boolean operation: AND .” Id. at
16–17 (citing Ex. 1009, 156:21– 157:9).
We are not persuaded by Patent Owner’s arguments in this regard.
We determined above that the claim term “logical search” is well understood
by one of skill in the art. In the Petition, Petitioner explained how the
disclosure in Rae concerning recognizing words or phrases within the
content of a call satisfies the logical word search claim limitation. Petitioner
supported its assertion that the retrieval mechanisms used for accessing
recorded call content and word-search functionality would be understood by
a person of ordinary skill in the art to include logical searching with the
testimony by Dr. Akl. Pet. 42–43 (citing Ex. 1003 ¶ 115). As discussed
supra, Petitioner proffers evidence from the specification tending to show
that “conversation identifying data” are broadly described as any
information used to identify the call (Reply 17 (citing Ex. 1001 6:5–11)),
and further, that “call content can constitute ‘conversation identifying data,’
as the content of a call can be used to identify the call” (Id.). Patent Owner,
however, does not direct us to, nor can we find, a disclosure in the ’732
patent that distinguishes the recognition of words or phrases in call content
from a logical word search.
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Patent Owner’s further argument, that Rae does not disclose that the
workstation is configured to perform the logical search of conversation
identifying data, is likewise not persuasive. Petitioner explains sufficiently
how the disclosure in Rae regarding user access to previously recorded
conversation identifying data and content from a workstation
communicating with the call recording system over a network satisfies the
“workstation configured to” claim language. Pet. 42 (citing Ex. 1002, 9:64–
67; Ex. 1003 ¶ 115).
v) Summary
In considering the record in its entirety, Petitioner has presented
persuasive evidence to support a finding that Rae describes the “workstation
be configured to search” claim limitation recited in dependent claims 5, 12,
17, and 24, as well as the “workstation be configured to perform logical
searches” claim limitation recited in dependent claims 11, 16, and 27.
Based on further review of the record, and for the reasons discussed
above, Petitioner has demonstrated, by a preponderance of the evidence, that
claims 5, 11, 12, 16, 17, 24, and 27 of the ’732 patent are anticipated by Rae.
d. Claims 3 and 225
Claims 3 and 22 depend from claims 1 and 20, respectively, and recite
in relevant part “a data compressor coupled to said output of said analog to

5 We note that claim 22 explicitly recites “a data compressor coupled to said
output of said analog to digital converter.” Claim 23, however, recites “a
workstation coupled to said data storage device and configured to access
recorded inmate conversation data stored in said storage device.” Ex. 1001,
10:42–44. Therefore, we consider the parties’ arguments as directed to
claim 22.
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digital converter.” Ex. 1001, 8:64–65, 10:38–39. Petitioner argues that Rae
discloses a call processing gateway, such as an integrated access device or
VoIP gateway, and provides an example of a commercially available
integrated access device, the IAD 2400 series available from Cisco System.
Pet. 19 (citing Ex. 1002, 3:34–39).
Patent Owner argues that a data compressor is not inherently present
in a VoIP gateway. PO Resp. 30. According to Patent Owner, Petitioner’s
reference to a commercially available IAD, the IAD 2400 series gateway, is
misplaced because Dr. Akl “provides no analysis, just a conclusion, based
on one line that appears in the boot sequence on initial startup of IAD 2420
that lists a 6-DSP (slot 2) High Performance Compression Module. Id. at 31
(citing Ex. 1003 ¶ 75). Patent Owner presents the testimony of Dr. Forys,
who opines that “certain VoIP networks that use Cisco IAD 2400 series
routers do not necessarily implement the claimed “data compression”
feature.” Id. at 32 (citing Ex. 2010 ¶ 94). According to Dr. Forys, the
placement of the compression module in “slot 2” of the IAD suggests to a
person of ordinary skill in the art that the compression module is removable.
Id. (citing Ex. 2010 ¶ 95). Patent Owner contends there is no evidence that
the Cisco IAD 2400 “would necessarily have this High Performance
Compression Module inserted into ‘slot 2” or any slot. Id. (citing Ex. 2010 ¶
95).
Petitioner argues persuasively that Patent Owner’s contentions
regarding the removability of the High Performance Compression Module
from the Cisco IAD 2420 “does not change the fact that a data compressor is
disclosed as a component of Rae’s system and the Cisco IAD 2420.” Reply
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21. As noted by Petitioner, the Initial Configuration Guide for the Cisco
IAD 2420 describes the presence of this module. Id.
Second, Patent Owner argues that Petitioner’s inherency arguments
mischaracterize Rae’s disclosure because one of ordinary skill in the art
“would recognize that Rae’s statement does not necessarily imply that data
compression has taken place.” PO Resp. 32–33 (citing Ex. 2010 ¶ 96).
Relying on the testimony of Dr. Forys, Patent Owner asserts that “the VoIP
packets produced by Rae’s call processing gateway 140 can be distributed
over an aggregate link (i.e. a link comprising multiple individual links) in a
manner that reduces the overall bandwidth usage.” Id. at 33 (citing Ex. 2010
¶ 96). Patent Owner asserts that VoIP would not use voice compression
when aggregating calls into less bandwidth. Id. (citing Ex. 2010 ¶ 97).
Petitioner counters that VoIP includes compression, and that the ’732
patent describes how data compression may be part of a VoIP gateway.
Reply 21 (citing Ex. 1001, 4:50–52, 5:47–50). According to Petitioner, Dr.
Forys confirmed in deposition that the IAD disclosed by Rae would be
understood by one of ordinary skill in the art to include the same
functionalities as IAD 30 of the ’732 patent, including, converting analog to
digital, data compression, and interfacing with an Ethernet network. Id. at
22 (citing Ex. 1009, 99:20–101:1).
Finally, relying on the testimony of Dr. Forys, Patent Owner
challenges Dr. Akl’s statement that “VoIP is a standardized protocol that
was well known by a person of ordinary skill in the art in 2003” and was
well known to “include[] data compression by necessity.” PO Resp. 34
(citing Ex. 1003 ¶ 74). We are persuaded by Petitioner that Dr. Forys’
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awareness “of a VoIP standard that required compression misses the point”
because all VoIP standards support compression. Reply 22.
In considering the record in its entirety, Petitioner has presented
persuasive evidence to support a finding that Rae describes the “data
compressor coupled to the analog to digital converter” claim limitation
recited in dependent claims 3 and 22.
Based on further review of the record, and for the reasons discussed
above, Petitioner has demonstrated, by a preponderance of the evidence, that
claims 3 and 22 of the ’732 patent are anticipated by Rae.
e. Claims 6 and 25
Dependent claims 6 and 25 recite in relevant part “a workstation
coupled to said analog to digital converter and configured to access ongoing
conversations.” Ex. 1001, 9:10–11, 10:51–52. Petitioner asserts that Rae
meets these limitations. Pet. 24–26, 59. In particular, Petitioner points to
the disclosure in Rae concerning real-time monitoring of the call by the call
application management system. Id. at 25 (citing Ex. 1002, 17:21–30; Ex.
1003 ¶ 83). Petitioner contends “[w]orkstations 142 (also referred to as
‘management terminals’) serve as the user interface to access the data and
functionality made available by call processing platform 101.” Id. (citing
Ex. 1002, 13:10–21; Ex. 1003 ¶ 84).
Patent Owner challenges Petitioner’s contentions, first arguing that
Petitioner provides no evidence tending to show that Rae expressly or
inherently discloses that the workstation accesses an ongoing conversation
because Rae describes how “real-time monitoring” is performed at the
centralized call application management system 11. PO Resp. 35 (citing Ex.
2010 ¶ 105). In addition, Patent Owner argues 1) it is not inherent that
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Rae’s virtual local call facility accesses ongoing conversations; and 2)
Petitioner’s contention that “real-time monitoring equates to accessing
ongoing conversations” is unsupported. Id. at 35. According to Patent
Owner, one of ordinary skill in the art would recognize that “real-time
monitoring of the call . . . is not a monitoring of the call content itself.” Id.
(citing Ex. 2010 ¶ 105). Instead, Patent Owner argues that the call
application management system monitors call events. Id. Next, Patent
Owner challenges Petitioner’s contention that Rae discloses monitoring a
call at an investigator’s telephone. Id. at 35–36. According to Patent
Owner, the ’732 patent distinguishes a workstation from a telephone. Id. at
36. Finally, Patent owner asserts that Petitioner has not established that the
telephone is coupled to the analog to digital converter, as required by the
claims. Id.
Petitioner responds that Patent Owner’s arguments ignore the explicit
language in Rae disclosing “call content data streams from the call
processing gateway to the call processing platform, such as for . . . real-time
monitoring of the call.” Reply 22 (citing Ex. 1002, 17:21-30). According to
Petitioner, Patent Owner’s suggestion that real-time monitoring is limited to
call events ignores the word “content.” Id. Petitioner points out that the
’732 patent similarly uses “monitor real-time conversations” language in
describing how the workstations access ongoing content. Id. (citing Ex.
1001, 8:54–55).
Based on the record developed during trial, Patent Owner’s arguments
are not persuasive. Petitioner presents persuasive arguments and evidence
demonstrating how the workstation disclosed in Rae is “configured to”
access ongoing conversations. The “configured to” claim language does not
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limit the technique by which the workstation accesses the ongoing
conversation.
In considering the record in its entirety, Petitioner has presented
persuasive evidence to support a finding that Rae describes the “a
workstation coupled to said analog to digital converter and configured to
access ongoing conversations” claim limitation recited in dependent claims 6
and 25.
Based on further review of the record, and for the reasons discussed
above, Petitioner has demonstrated, by a preponderance of the evidence, that
claims 6 and 25 of the ’732 patent are anticipated by Rae.
f. Claims 7, 14, and 19
Dependent claims 7, 14, and 19 recite in relevant part that “the wide
area network is the Internet.” Ex. 1001, 9:13, 9:51, and 10:13. Patent
Owner argues, that Petitioner fails to show that the workstation of Rae is
coupled to the call processing gateway (i.e., the streaming converter of the
’732 patent) over the Internet. PO Resp. 37. Patent Owner contends that
one of skill in the art would not understand the IP Frame Network of Rae to
be the Internet because the IP Frame Network in Rae is a private data
network. Id. (citing Ex. 2010 ¶ 110). Patent Owner explains that use of the
Internet suite of protocols by the frame network “does not turn a private
network into the Internet.” Id. (citing Ex. 2010 ¶ 110). Patent Owner
acknowledges that Rae describes the coupling of a workstation to call
processing platform 101 via the Internet, but not the coupling of the
workstation to the call processing gateway via the Internet. Id.
Petitioner explains persuasively how Rae discloses a workstation
having a WAN connection to the call processing gateway (Ex. 1002, 6:64–
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7:8, and that the WAN connecting elements can be the Internet (i.e., “IP
Frame Network”). Reply 23, (citing Ex. 1002, Figure 1; Ex. 1003 ¶ 118).
We find persuasive Petitioner’s assertion that “[o]ne of ordinary skill in the
art would understand this “IP Frame Network” to be a wide area network
operating on the Internet Protocol (IP) communications protocol, which
includes “the Internet.” Id. (citing Ex. 1003 ¶ 85). Petitioner supports its
position by citing the passage in Rae describing how “the data and
functionality of the system ‘may be provided via the Internet’ to a client,”
and reasons that this statement would apply to all WAN connections,
including the WAN connection between the workstation and call processing
gateway. Id. (citing Ex. 1002, 5:1–3, 6:64–7:8, 13:64-14:3). According to
Petitioner, Rae does not describe the WAN as a private network, and
characterizes Patent Owner’s position in this regard as “unsupported.” Id.
In considering the record in its entirety, Petitioner has presented
persuasive evidence to support a finding that Rae describes the “the Internet”
claim limitation recited in dependent claims 7, 14, and 19.
Based on further review of the record, and for the reasons discussed
above, Petitioner has demonstrated, by a preponderance of the evidence, that
claims 7, 14, and of the ’732 patent are anticipated by Rae.

IV. CONCLUSION
For the foregoing reasons, we determine that Petitioner has
demonstrated, by a preponderance of the evidence, that 1–8 and 11–27 of the
’732 patent are anticipated under 35 U.S.C. §102(e) by Rae.

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V. ORDER
In consideration of the foregoing, it is
ORDERED that claims 1–8 and 11–27 of the ’732 patent are held to
be unpatentable;
FURTHER ORDERED that, because this is a Final Written
Decision, parties to the proceeding seeking judicial review of the decision
must comply with the notice and service requirements of 37 C.F.R. § 90.2.

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41
For PETITIONER:
Justin B. Kimble
BRAGALONE CONROY P.C.
jkimble@bcpc-law.com

For PATENT OWNER:

Lori Gordon
Daniel Block
Michael B. Ray
Ryan Richardson
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
lgordon-PTAB@skgf.com
dblock-PTAB@skgf.com
mray-PTAB@skgf.com
rrichardson-PTAB@skgf.com