By Mark Engstrom, J.D.
In an inter partes review (IPR) of a Global Tel*Link patent on a system for authenticating the identity of individuals placing telephone calls from controlled institutional environments, Securus Technologies failed to show that the challenged claims were unpatentable as obvious, the U.S. Court of Appeals for the Federal Circuit has ruled. Because the Patent Trial and Appeal Board (PTAB) had correctly found that Securus failed to provide an adequate basis for combining the prior art references of Susen and Gainsboro, the decision of the Board was affirmed (Securus Technologies, Inc. v. Global Tel*Link Corp., July 14, 2017, Chen, R.).
Patent. Global Tel*Link Corp. (GTL) owns U.S. Patent No. 7,853,243, which describes a "Telecommunication call management and monitoring system" for authenticating the identity of users seeking to make telephone calls from penal institutions or similar facilities. The PTAB instituted an IPR on Securus’ assertion that six claims of the ‘243 patent were unpatentable as obvious over Susen and Gainsboro.
According to Securus, the "access attempt" limitation of the representative claim had just one step: "prompting said at least one potential caller to input a second identification number." GTL argued that the limitation included five additional steps: the prompting step, recording step, matching step, comparing voice step, and granting step.
IPR ruling. The Board found that Susen did not disclose all of the steps in the access attempt limitation. It also found that Securus had failed to explain why a person of ordinary skill in the art would combine Susen and Gainsboro to arrive at the claimed invention. According to the Board, Securus offered only conclusory expert testimony that a skilled artisan would combine those references because both were generally in the same field of art. Securus thus failed to prove that the challenged claims were unpatentable as obvious.
Appeal. The parties disputed the broadest reasonable interpretation of the phrase "during each access attempt to said public telephone network by said potential caller" (the "access attempt" limitation). Securus challenged the Board’s construction of the "access attempt" limitation because: (1) the Board had improperly relied on the ipse dixit testimony of GTL’s expert, who had stated that the limitation began with the prompting step and ended with the granting step, and (2) the limitation was followed by a colon and the prompting step, but the other steps were offset by semicolons; the limitation thus included the prompting step alone, which was the only step that followed the colon.
The court disagreed. The Board "may have been quick to consult" expert testimony in construing the access attempt limitation, the court acknowledged, but the Board had obtained the proper interpretation, in light of the intrinsic evidence.
The most natural reading of the limitation was one that incorporated all of the steps, "from the beginning of the attempt to access the telephone network to the end of that attempt," which necessarily included the recording step, the matching step, the comparing voice step, and the granting step. An attempt to access the telephone network ended with the grant of access, the court added, and the specification supported that construction by explicitly identifying multiple steps that had to occur between the start of the user’s attempt to access and the conclusion of that attempt.
For those reasons, the Board had "properly afforded the access attempt limitation its broadest reasonable interpretation consistent with the specification," the court decided.
Obviousness. Securus failed to show that a skilled artisan would have been motivated to combine Susen and Gainsboro. According to the court, Securus had merely asserted that, because Susen and Gainsboro were drawn from the same general field of art, a skilled artisan would have turned to them to solve the problems that were identified in the '243 patent.
Securus offered nothing beyond "conclusory statements," the court noted, and the broad characterization of Susen and Gainsboro as "falling within the same alleged field of telecommunications monitoring and control" was insufficient to present an adequate rationale for an obviousness finding.
The case is No. 2016-2573.
Attorneys: Daniel Fletcher Olejko (Bragalone Conroy PC) for Securus Technologies, Inc. Byron Leroy Pickard (Sterne, Kessler, Goldstein & Fox, PLLC) for Global Tel*Link Corp.
Companies: Securus Technologies, Inc.; Global Tel*Link Corp.
MainStory: TopStory Patent FedCirNews
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