PTAB

IPR2015-01219

Global Tel Link Corp v. Securus Technologies Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: System and Method for Authorizing and Monetizing Collect Cellular Telephone Calls
  • Brief Description: The ’118 patent discloses systems and methods for billing collect calls made to cellular telephones. The technology addresses the problem of cellular carriers typically not supporting reverse-charge billing by using a billable text message, such as a premium SMS, to charge the called party's cellular account for the collect call prior to connecting the parties.

3. Grounds for Unpatentability

Ground 1: Claims 1-32 are obvious over Rae in view of Sulmar and Falcone.

  • Prior Art Relied Upon: Rae (Patent 7,496,345), Sulmar (Application # 2006/0149644), and Falcone (Application # 2003/0086546).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of the prior art references teaches every limitation of the challenged claims. Rae disclosed the foundational system for processing collect calls to mobile phones, which involved validating that a billing arrangement exists, determining if the call is to a wireless device, and using an Interactive Voice Response (IVR) system to solicit acceptance of charges from the called party. While Rae suggested using text messaging for collect call acceptance or prepayment, it did not explicitly detail the text-based billing mechanism. Sulmar filled this gap by teaching a method of billing for telecommunications services (including prepaid calling time) using premium SMS (PSMS). Sulmar’s method involved a user authorizing a purchase via an IVR, after which a premium text message was sent to the user’s mobile phone to place the charge on their cellular bill. Falcone, which was expressly incorporated by reference in Rae, provided additional detail regarding call validation and blocking functionalities. Petitioner asserted that combining Rae’s collect call framework with Sulmar’s PSMS billing method and Falcone’s validation details renders the claimed invention obvious.
    • Motivation to Combine: Petitioner contended that a person of ordinary skill in the art (POSITA), starting with Rae’s system for enabling collect calls to mobile phones, would have been motivated to implement Rae’s suggestion of using text messaging for payment. A POSITA would have looked to the prior art for known methods of text-based billing and found Sulmar’s PSMS system. Sulmar’s system was described as a natural fit, as PSMS was a general-purpose reverse-billing system for cellular phones well-suited for the telecommunications services described in Rae. Furthermore, Rae provided an express motivation to combine its teachings with Falcone by incorporating it by reference for its call validation details. All three references are in the same technical field of billing for telecommunication services.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining the references. The proposed combination involved applying a known billing technology (Sulmar’s PSMS) to a known telecommunications system (Rae’s mobile collect call platform) to solve a known problem (the inability to bill collect calls to cellular phones). Petitioner argued the result would have been predictable because Rae already taught the concept of using text messages for billing mobile calls, and Sulmar provided a well-understood, off-the-shelf method for implementing it.

4. Key Claim Construction Positions

  • Connect Service Provider: Petitioner argued that this term, which appears in claims 3, 4, 18, 19, 24, and 32, was not used in the patent’s specification and was not a standard term of art. Based on the functional language in the claims, Petitioner proposed that the term should be construed as "a provider facilitating the connection of collect calls to cellular phones." This construction was asserted to be critical for mapping the functions of the systems disclosed in the prior art, such as Rae’s call processing system and Sulmar’s billing vendor, to the limitations of the claims.

5. Relief Requested

  • Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-32 of Patent 8,626,118 as unpatentable under 35 U.S.C. §103.