PTAB

IPR2016-00267

Securus Technologies Inc v. Global Tel Link Corp

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Prison Inmate-Visitor Video Conferencing System
  • Brief Description: The ’816 patent describes a system for conducting video visits between participants at distinct endpoints, such as a prison inmate and an outside visitor. The system purports to reduce latency in monitoring by including a "multiplexing means" to split and copy communication data along the data connection path, rather than within a central processing unit.

3. Grounds for Unpatentability

Ground 1: Obviousness over Bulriss and Hesse - Claims 1-15, 18-21, 25-44, 47-50, 54, and 55 are obvious over Bulriss in view of Hesse.

  • Prior Art Relied Upon: Bulriss (Patent 7,061,521) and Hesse (Patent 7,046,779).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Bulriss, which discloses a courtroom-to-jail video conferencing system, teaches the core limitations of the independent claims. Bulriss described a system with distinct endpoints (attorney and inmate terminals), a central "switching device 22" that functions as the claimed data center, and monitoring by a judge. Crucially, Petitioner asserted that Bulriss’s "control interface device 42," described as potentially comprising a multiplexer, performs the key claimed function of "splitting" communication data along a data connection to create a copy for a monitoring station (the judge's control panel). This directly addresses the feature added during prosecution to overcome prior art. Petitioner relied on Hesse, a reference cited by Bulriss itself, to supply secondary features, such as scheduling video conferences at a predetermined time, user authentication (including biometrics), and displaying rules to participants.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine these references because they both address inmate video conferencing. Bulriss explicitly cited the application that matured into the Hesse patent, making Hesse a known and relevant reference. A POSITA would be motivated to integrate Hesse’s advanced scheduling, user management, and security features into the core conferencing architecture of Bulriss to create a more comprehensive, scalable, and commercially robust system. This combination would solve known problems in the art related to managing and securing inmate communications.
    • Expectation of Success: A POSITA would have a reasonable expectation of success in combining the references. The integration involved applying Hesse’s known software-based management processes (like scheduling and authentication) to Bulriss’s disclosed hardware architecture, which was a predictable implementation within the skill of a POSITA.

Ground 2: Obviousness over Bulriss, Hesse, and Rae - Claims 16-17, 22-24, 45-46, and 51-53 are obvious over Bulriss in view of Hesse and further in view of Rae.

  • Prior Art Relied Upon: Bulriss (Patent 7,061,521), Hesse (Patent 7,046,779), and Rae (Patent 7,899,167).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination of Bulriss and Hesse to address dependent claims requiring payment systems and specific high-speed data links. Petitioner argued that Rae, which discloses a centralized call processing system for prisons using Voice over Internet Protocol (VoIP), teaches these missing elements. Rae described using high-speed data connections (T1, DSL, DS3, OC3) identical to those recited in the claims. Furthermore, Rae disclosed a validation and billing system to determine if sufficient funds exist in a prepaid account before a call is connected, directly mapping to the claims’ limitations regarding payment verification.
    • Motivation to Combine: A POSITA would be motivated to add Rae’s teachings to the Bulriss/Hesse system for clear commercial and technical reasons. Given the high cost of prison communication systems, incorporating a payment and billing mechanism as taught by Rae would be an advantageous and logical step to generate revenue. Additionally, a POSITA would be motivated to use the specific high-speed data links disclosed in Rae to improve the video and audio quality of the Bulriss/Hesse conferencing system, which was a well-known objective in the art.
    • Expectation of Success: Implementing Rae’s features would be a predictable task with a high expectation of success. Integrating a known billing system into a communication platform and upgrading network links to higher-speed, commercially available options were routine modifications for a POSITA.

4. Key Claim Construction Positions

  • "multiplexing means" (recited in numerous claims, e.g., claim 30): Petitioner contended this term is a means-plus-function limitation under pre-AIA 35 U.S.C. §112, ¶ 6.
    • Function: "splitting either the original communications data transmitted from... participants to the data center, or... from the data center, to create a copy."
    • Corresponding Structure: "a physical device configured to copy or split a signal rather than redirect it," and its equivalents. Petitioner argued that while the specification mentions a software embodiment, it fails to disclose the necessary algorithm, so only the hardware structure should form part of the construction.
  • "transmitting means" (recited in claim 30): Petitioner also contended this is a means-plus-function limitation.
    • Function: "transmit[ing] all of the original communications data to and from the first and second participants across the computer network and via the data center."
    • Corresponding Structure: "equipment capable of transmitting data via a packet-based, wired or wireless network, such as the Internet," and its equivalents.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that its proposed grounds were not cumulative of issues previously considered by the USPTO. It emphasized that key prior art references forming the basis of each ground of unpatentability, specifically Bulriss and Rae, were not before the Examiner during the original prosecution of the ’816 patent.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-55 of the ’816 patent as unpatentable.