PTAB

IPR2015-01221

Global Tel Link Corp v. Securus Technologies Inc

Log In
Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: System and Method for Completion of All Calls Using Single Call Funding Options
  • Brief Description: The ’068 patent discloses systems for completing telephone calls originating from inmates when the call cannot be billed to the inmate. The system identifies such non-billable calls, redirects them to a call processing platform, and offers the called party one or more alternative payment options (e.g., SMS text billing, credit card billing) to complete the call.

3. Grounds for Unpatentability

Ground 1: Obviousness over Apple in view of Jiang - Claims 1-8 are obvious over Apple in view of Jiang.

  • Prior Art Relied Upon: Apple (Patent 8,295,446) and Jiang (Application # 2009/0042539).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Apple disclosed the core elements of an inmate communication system (ICS) that, upon identifying a non-billable call, offers the called party alternative payment options like a prepaid account or credit card. Apple’s system was capable of sending billing options to a mobile device. However, Petitioner contended Apple did not explicitly disclose presenting these options via a "text message." Jiang was argued to supply this missing element by teaching a "reverse charge service" that allows a called party to pay for a communication, where the request and acceptance are conveyed through an SMS (text message) interface.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Apple and Jiang because both address the same problem in telecommunications: completing a call when the initiating party cannot be billed. As Apple disclosed sending billing options to a mobile device without specifying the method, a POSITA would have looked to the prior art for known techniques. Jiang provided a convenient and well-understood method for notifying a user of an inbound communication and corresponding payment options via SMS.
    • Expectation of Success: The combination of Jiang’s SMS functionality with Apple’s inmate calling system would involve routine networking techniques and yield predictable results.

Ground 2: Obviousness over Apple in view of Bangor - Claims 9 and 11-19 are obvious over Apple in view of Bangor.

  • Prior Art Relied Upon: Apple (Patent 8,295,446) and Bangor (Application # 2008/0175362).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground focused on claims requiring communication via a Session Initiation Protocol (SIP) message. Petitioner asserted that while Apple’s inmate calling system was generally compatible with the "well-known SIP protocol," it failed to detail how SIP messages could be used to convey billing information. Bangor allegedly disclosed this limitation by teaching a method for alternative billing of Voice over Internet Protocol (VoIP) services where a calling party provides billing and payment information using SIP messages, such as a "SIP INFO and/or a SIP OPTIONS message." Bangor further disclosed that such SIP messages include header fields with information associated with the call request.
    • Motivation to Combine: A POSITA would combine Apple and Bangor to implement the specific billing functionality recited in the claims. Because Apple disclosed that its system could be implemented using SIP but did not provide specific guidance, a POSITA would have consulted the prior art for methods of communicating billing information via SIP. This would have led them to Bangor, which explicitly described this functionality.
    • Expectation of Success: The combination was argued to be a predictable implementation of a known protocol (SIP) to transmit a known type of information (billing data) within an established system framework (Apple's ICS).

  • Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations of Falcone (Patent 6,836,540) with Jiang and/or Bangor, as well as three-way combinations of the prior art. These grounds relied on similar theories of adding known messaging functionalities (SMS from Jiang or SIP from Bangor) and billing methods to Falcone's disclosed inmate calling system, which offers services to users associated with previously blocked collect calls.

4. Key Claim Construction Positions

  • "Billing-Status Code" / "Billing Code" / "Code": Petitioner proposed these terms should be construed as "information associated with a reason why a call has been blocked." This construction was argued to be supported by the specification, which describes the system identifying why a call is blocked and assigning a "block-specific code." Petitioner asserted this construction was critical for mapping the claims onto the prior art, such as the "indicat[ed] reason" for call denial in Apple or the "customer score" used to determine billing options in Falcone.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-19 of the ’068 patent as unpatentable.