TrustID Inc v. Next Caller Inc

1. Case Identification

• Case #: IPR2018-01066
• Patent #: 9,143,612
• Filed: May 11, 2018
• Petitioner(s): TrustID, Inc.
• Patent Owner(s): Next Caller, Inc.
• Challenged Claims: 1-20

2. Patent Overview

• Title: Centralized Caller Profile System
• Brief Description: The ’612 patent discloses a system and method for providing a caller’s profile information to a called party during a telephone connection. The system uses a centralized, internet-connected “Cloud Database” that stores caller profiles, which can be maintained and updated by a service provider, the user (caller), and a third party (e.g., the called party’s agent).

3. Grounds for Unpatentability

Ground 1: Claims 1-20 are obvious over Bushnell in view of Pickering and further in view of Bala.

• Prior Art Relied Upon: Bushnell (Application # 2004/0196966), Pickering (Application # 2011/0125498), and Bala (Patent 6,798,876).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of Bushnell, Pickering, and Bala teaches every element of the challenged claims. Bushnell, which Petitioner asserted was the basis for the ’612 patent’s disclosure, teaches a centralized caller profile system that delivers profile information to a called party. However, Bushnell does not explicitly disclose a "Cloud Database" or specify how to use a "Unique Identifier" to retrieve profiles. Pickering was cited to cure the first deficiency, as it expressly teaches a computer-telephony integration system implemented on a cloud computing platform (e.g., Amazon) that uses a CRM database to store caller information. Petitioner contended this supplies the "Cloud Database" limitation. Bala was cited to cure the second deficiency, as it teaches a call center system that uses Automatic Number Identification (ANI) to retrieve a caller's unique telephone number and then uses that number as an identifier to query a database and access the customer’s profile. Petitioner argued this teaches retrieving and using a "Unique Identifier" as claimed. The combination also allegedly teaches that the database is "maintained" by a service provider and a user (from Bushnell) and a third party/agent (from Pickering).
  • Motivation to Combine: A POSITA would combine Bushnell with Pickering to gain the well-known benefits of cloud computing, which Pickering explicitly detailed, such as improved scalability, cost-efficiency, and hardware independence. These benefits would have been a predictable improvement to Bushnell’s system. A POSITA would have further incorporated Bala’s use of ANI because it provided a well-established and reliable method for retrieving a caller's telephone number to use as a unique key for database queries, a specific implementation detail that Bushnell's disclosure lacked.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because the combination involved applying a known technology (cloud hosting from Pickering) to an existing system (caller profiles from Bushnell) and using a conventional technique (ANI-based retrieval from Bala) to achieve a predictable result.

4. Key Claim Construction Positions

• "maintained" (claims 1, 11): Petitioner argued that based on amendments and arguments made during prosecution, the broadest reasonable interpretation of "maintained" is "accessible and revisable or updatable." This construction was central to Petitioner's argument that the prior art teaches the database is maintained by three distinct parties (a service provider, a user, and a third party), as Bushnell and Pickering disclose these parties having access to and the ability to update the profile database.
• "Cloud Database" (claims 1, 11): Petitioner relied on the patent's own definition of a "Cloud Database" as one that "typically runs on a cloud computing platform," noting the patent's admission that platforms like Amazon EC2 were already popular and well-known. This construction supported the argument that Pickering's disclosure of a CRM database housed in a cloud (e.g., Amazon) directly meets this limitation and its combination with Bushnell would have been obvious.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise discretionary denial under 35 U.S.C. §325(d). Although the primary reference, Bushnell, was cited during the original prosecution, it was never applied in a rejection. Furthermore, the secondary references, Pickering and Bala, which Petitioner contended were critical to rendering the claims obvious, were not previously considered by the Patent Office.

6. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-20 of the ’612 patent as unpatentable under 35 U.S.C. §103.