`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`In re inter partes review of:
`
` U.S. Patent 6,636,591 to Swope et al.
`Atty. Docket: 3210.050IPR0
`Filed: August 17, 2000
`Issued: October 21, 2003
`Title: System and Method for Affecting
`Inmate Conduct with Good
`Behavior Discount Telephone Rates
`
`
`
`
`
`
`Declaration of Dr. Leonard J. Forys in Support of
`Petition for Inter Partes Review of U.S. Patent No. 6,636,591
`
`Mail Stop Inter Partes Review
`
`Attn: Patent Trial and Appeal Board
`Commissioner for Patents
`PO Box 1450
`Alexandria, VA 22313-1450
`
`Commissioner:
`
`
`
`I, Dr. Leonard J. Forys, declare as follows:
`
`1.
`
`I have been retained on behalf of Global Tel*Link Corporation
`
`(“GTL”) for the above-captioned inter partes review proceeding. I understand that
`
`this proceeding involves U.S. Patent No. 6,636,591 (“the ‘591 patent”) titled
`
`“System and Method for Affecting Inmate Conduct with Good Behavior Discount
`
`Telephone Rates” by Bobb Swope et al. and that the ‘591 patent is currently
`
`assigned to Securus Technologies, Inc.
`
`
`
`
`
`GTL 1010
`IPR of U.S. Patent 6,636,591
`
`
`
`2.
`
`I have reviewed and am familiar with the specification of the ’591
`
`patent filed on August 17, 2000. I understand that the ’591 patent has been
`
`provided as GTL 1001. I will cite to the specification using the following format:
`
`(GTL 1001, 1:1-10). This example citation points to the ’591 patent specification
`
`at column 1, lines 1-10.
`
`3.
`
`I have reviewed and am familiar with the file history of the ‘591
`
`patent. I understand that the file history has been provided as GTL 1007.
`
`4.
`
`I have also reviewed and am familiar with the following prior art used
`
`in the Petition for Inter Partes Review of the ’591 patent:
`
`Rewards in an Institution for Youthful Offenders by Karacki et
`al. (“Karacki”). Karacki was published in The Howard Journal of
`Penology and Crime Prevention 1970, 30 years prior to the filing
`date of the ’591 patent. I understand that Karacki has been
`provided as GTL 1012.
`
`The Development of a Prison Incentive System: A Case
`Illustration by Wormith (“Wormith”). Wormith was published in
`The First Annual Forum on Corrections Research in March 1989,
`more than 11 years prior to the filing date of the ’591 patent. I
`understand that Wormith has been provided as GTL 1002.
`
`U.S. Patent No. 5,991,376 to Hennessy et al., titled “Subscriber
`Reward Method,” (“Hennessy”). Hennessy was filed on May 20,
`
`
`
`- 2 -
`
`
`
`1997, prior to the filing date of the ’591 patent. I understand that
`Hennessy has been provided as GTL 1003.
`
`U.S. Patent No. 7,106,843 to Gainsboro et al., titled “Computer-
`Based Method and Apparatus for Controlling, Monitoring,
`Recording and Reporting Telephone Access,” (“Gainsboro ’843”).
`Gainsboro ’843 was filed on August 31, 1998, prior to the filing
`date of the ’591 patent. I understand that Gainsboro ’843 has been
`provided as GTL 1004.
`
`U.S. Patent No. 5,570,417
`titled “System for
`to Byers,
`Automatically Providing Customer Access
`to Alternative
`Telephony Service Providers,” (“Byers”). Byers was issued on
`October 29, 1996, more than 4 years prior to the filing date of the
`’591 patent. I understand that Byers has been provided as GTL
`1005.
`
`U.S. Patent No. 5,655,013 to Gainsboro, titled “Computer-Based
`Method and Apparatus for Controlling, Monitoring, Recording and
`Reporting Telephone Access,” (“Gainsboro ’013”). Gainsboro
`’013 was issued on August 5, 1997, more than 3 years prior to the
`filing date of the ’591 patent. I understand that Gainsboro ’013 has
`been provided as GTL 1006.
`
`U.S. Patent No. 4,933,966 to Hird et al., titled “Method and
`Apparatus for Performing an Automated Collect Call,” (“Hird”).
`Hird was issued on June 12, 1990, more than 10 years prior to the
`filing date of the ’591 patent. I understand that Hird has been
`provided as GTL 1009.
`
`
`
`- 3 -
`
`
`
`5.
`
`The ’591 patent describes “a system and method of affecting inmate
`
`behavior within a correctional facility through providing discount telephone calling
`
`rates to inmates who qualify for the discounted rates based on predetermined
`
`criteria”. (’591 patent, Abstract.) I am familiar with the technology described in
`
`the ’591 patent as of its August 17, 2000 filing date.
`
`6.
`
`I have been asked to provide my technical review, analysis, insights,
`
`and opinions regarding the ‘591 patent and the above-noted references that form
`
`the basis for the grounds of rejection set forth in the Petition for Inter Partes
`
`Review of the ‘591 Patent.
`
`I.
`
`Qualifications
`
`7.
`
`I have over 40 years of experience in the telecommunications industry
`
`working for corporations including AT&T Bell Telephone Laboratories for almost
`
`two decades and Bellcore (formerly Bell Communications Research), the research
`
`and development organization for the Bell Operating Companies (e.g., Bell
`
`Atlantic, Southwestern Bell, U S West, etc.), for over a decade. As detailed below,
`
`I have worked on many projects and technologies highly relevant to the subject
`
`matter of the ‘591 patent.
`
`8. My academic background in electrical engineering and computer
`
`science provides a technical foundation for work in telephone communications
`
`
`
`- 4 -
`
`
`
`networks. I received a Bachelor of Science Degree in Electrical Engineering from
`
`the University of Notre Dame in 1963. I received both a Master of Science in
`
`Electrical Engineering and
`
`the degree of Electrical Engineer from
`
`the
`
`Massachusetts Institute of Technology in 1965. I received a degree of Doctor of
`
`Philosophy in Electrical Engineering and Computer Science from the University of
`
`California at Berkeley in 1968.
`
`9. While at Berkeley, I was an Assistant Professor of Electrical
`
`Engineering and Computer Science, teaching courses in network theory, systems
`
`theory and communications theory, performing research in communications
`
`systems and serving as faculty advisor to 20 undergraduates.
`
`10. From 1968 to 1973, I was a member of the technical staff at Bell
`
`Telephone Laboratories (known commonly as Bell Labs). I engaged in various
`
`research activities involving network engineering and performance management in
`
`telephone networks. I taught several in-house courses in performance analysis and
`
`traffic engineering in telephone networks.
`
`11. From 1973 to 1984, I was Technical Supervisor at Bell Telephone
`
`Laboratories, heading a group of technical experts, primarily Ph.D.’s. I was
`
`responsible for performance management/analysis and development of traffic
`
`engineering algorithms for various telecommunications networks and their
`
`
`
`- 5 -
`
`
`
`components, primarily processor based voice switches, automatic call distributors,
`
`and Private Branch Exchanges (“PBXs”). As part of this effort, I successfully
`
`rescheduled the processor tasks in several of these systems to increase their
`
`capacity and improve their performance. I also was responsible for all of the call
`
`center staffing algorithms for the Bell System and for the engineering of the
`
`network elements used for call centers such as the TSPS (Traffic Service Position
`
`System), Rockwell ACDs, and the #5 CrossBar ACD. ACDs are Automatic Call
`
`Distributors, special purpose switches used to provide call center functionality. In
`
`particular, these network elements were used during this time period to provide
`
`collect calling for inmate phones as they handled both automatic and operator
`
`assisted coin phones and automatic and assisted collect calling. I note that these
`
`network elements were centralized, deployed remotely from the prison facilities
`
`and served multiple prison facilities.
`
`12. From 1984 to 1994, I was District Manager for Bell Communications
`
`Research (“Bellcore”), heading a group of 7 to 15 technical experts, primarily
`
`Ph.D.’s. I was responsible for the specification and testing of a variety of voice
`
`network components. This work included writing sections of the requirements
`
`used by the Bell Operating Companies to buy network components in their
`
`networks. I also tested the compliance (to the requirements) of several voice
`
`
`
`- 6 -
`
`
`
`switches made by various companies, e.g., Nortel, Lucent, Ericsson, Fujitsu, NET,
`
`and Siemens.
`
`13. During this time period, I further consulted on the engineering and
`
`performance of various supplemental telephonic services such as Voice Mail
`
`systems, including those manufactured by Boston Technologies, Unisys, and
`
`Digital Sound Corporation, as well as supporting equipment such as SMDI
`
`(Simplified Message Display Interface) links. I also participated and contributed to
`
`various national and international voice and data standards organizations.
`
`14. During this period, I continued my involvement with call center
`
`technology. In particular, I was responsible for the engineering of all call centers
`
`for the Bell Operating Companies. This included analyzing specific network
`
`elements used to handle inmate telephone calls such as Nortel’s TOPS (Traffic
`
`Operator Position System) and MPP (Multi-Purpose Position) systems and
`
`AT&T’s No. 5 OSPS (Operator Services Position Station). Calls from inmate
`
`telephones were detected by such systems through the use of Automatic Number
`
`Identification (ANI) techniques. These were then flagged by the systems when
`
`presented to operators who would follow prescribed protocols. I worked on several
`
`of the features that allowed inmates to use telephones such as coin station
`
`
`
`- 7 -
`
`
`
`technology, collect calling, credit card calling (alternative billing features). These
`
`features are prominent in the asserted patent.
`
`15. Another of my responsibilities while at Bellcore was analyzing and
`
`providing engineering algorithms for data network components used by the Bell
`
`Operating Companies. As part of this endeavor, I was a leader in developing novel
`
`traffic engineering methods for Internet data networks and other high speed data
`
`networks such as Asynchronous Transfer Mode (ATM) and Frame Relay. This
`
`included characterizing Internet traffic and developing loading guidelines for
`
`network components including routers and switches. Through this effort, I worked
`
`on some of the earliest deployed packet-based networks, some of which included
`
`voice over packet technologies.
`
`16.
`
`I was Bellcore’s prime technical leader for determining root causes of,
`
`and proposed solutions for, several Signaling System No. 7 (“SS7”) data network
`
`outages, including the famous 1990 AT&T nationwide outage, as well as the 1991
`
`Washington, D.C., Pittsburgh, and Los Angeles outages. I was responsible for
`
`writing new sets of requirements for SS7 networks and was involved in a large
`
`scale testing and analysis program for a wide variety of SS7 network components.
`
`17.
`
`I was named a Bellcore Fellow in 1992, only the fifth person to
`
`receive such an award.
`
`
`
`- 8 -
`
`
`
`18. From 1994 to 1995, I was a Chief Scientist at Bellcore, overseeing the
`
`technical work of 50 technical experts, many of whom had Ph.D.’s. I was involved
`
`in the teaching of teletraffic engineering and performance management to various
`
`bodies, including the Federal Communications Commission, which included
`
`various aspects of both voice and data networks, including voice mail systems. I
`
`served as a “trouble shooter,” responsible for identifying root causes for diverse
`
`network problems involving a variety of technologies including both high speed
`
`data networks as well as telephone networks. I analyzed the potential impact of
`
`earthquakes and other natural disasters on
`
`telecommunications network
`
`performance. The National Science Foundation sponsored me to be the sole U.S.
`
`telecommunications industry representative at the First International Joint U.S.-
`
`Japan Earthquake Symposium in 1993.
`
`19. Since 1995, I have been President of my own company, The Forys
`
`Consulting Group, Inc., providing consulting in voice and data communications
`
`services. As part of a team of international experts, I investigated a wide range of
`
`issues involving the introduction of a new line of vendor products in a foreign
`
`national network.
`
`20. As a consultant to several large telephone companies, I did studies on
`
`operator services systems used to provide inmate calling services. I also formed a
`
`
`
`- 9 -
`
`
`
`group of experts which developed a product for determining optimal staffing
`
`requirements for call centers. This product is called “IRENE®”, a work force
`
`management system, and one of several products of ISC Consultants, Inc. I am the
`
`chief algorithm specialist for ISC. I wrote several of the white papers on their
`
`website (www.isc.com).
`
`21. During this period, I also performed extensive consulting for various
`
`data communications systems, including Internet access using satellite systems
`
`including LAN in the sky technologies for airplanes. I analyzed the performance,
`
`provided traffic inputs and helped specify traffic network management/congestion
`
`controls for three satellite data communications systems capable of handling both
`
`packetized voice as well as Internet traffic.
`
`22. My Curriculum Vitae is attached as Appendix A, which contains
`
`further details on my education, experience, publications, and other qualifications
`
`to render an expert option. My work on this case is being billed at a rate of
`
`$400.00 per hour, with reimbursement for actual expenses. My compensation is
`
`not contingent upon the outcome of this inter partes review.
`
`
`
`- 10 -
`
`
`
`II. My Understanding of Claim Construction
`
`23.
`
`I understand that, during an inter partes review, claims are to be given
`
`their broadest reasonable construction in light of the specification as would be read
`
`by a person of ordinary skill in the relevant art.
`
`III. My Understanding of Obviousness
`I understand that a patent claim is invalid if the claimed invention
`24.
`
`would have been obvious to a person of ordinary skill in the field at the time the
`
`application was filed. This means that even if all of the requirements of the claim
`
`cannot be found in a single prior art reference that would anticipate the claim, the
`
`claim can still be invalid.
`
`25. As part of this inquiry, I have been asked to consider the level of
`
`ordinary skill in the field that someone would have had at the time the claimed
`
`invention was made. In deciding the level of ordinary skill, I considered the
`
`following:
`
`• the levels of education and experience of persons working in the field;
`
`• the types of problems encountered in the field; and
`
`• the sophistication of the technology.
`
`
`26. To obtain a patent, a claimed invention must have, as of the priority
`
`date, been nonobvious in view of the prior art in the field. I understand that an
`
`
`
`- 11 -
`
`
`
`invention is obvious when the differences between the subject matter sought to be
`
`patented and the prior art are such that the subject matter as a whole would have
`
`been obvious at the time the invention was made to a person having ordinary skill
`
`in the art.
`
`27.
`
`I understand that to prove that prior art or a combination of prior art
`
`renders a patent obvious, it is necessary to (1) identify the particular references
`
`that, singly or in combination, make the patent obvious; (2) specifically identify
`
`which elements of the patent claim appear in each of the asserted references; and
`
`(3) explain how the prior art references could have been combined in order to
`
`create the inventions claimed in the asserted claim.
`
`28.
`
`I understand that certain objective indicia can be important evidence
`
`regarding whether a patent is obvious or nonobvious. Such indicia include:
`
`commercial success of products covered by the patent claims; a long-felt need for
`
`the invention; failed attempts by others to make the invention; copying of the
`
`invention by others in the field; unexpected results achieved by the invention as
`
`compared to the closest prior art; praise of the invention by the infringer or others
`
`in the field; the taking of licenses under the patent by others; expressions of
`
`surprise by experts and those skilled in the art at the making of the invention; and
`
`the patentee proceeded contrary to the accepted wisdom of the prior art.
`
`
`
`- 12 -
`
`
`
`IV. Level of Ordinary Skill in the Art
`
`29. Based on the disclosure of the ’591 patent, one of ordinary skill in the
`
`art would have an associate degree in a technical field such as Electrical
`
`Engineering, Computer Science, or equivalent experience and a year or two
`
`experience in telecommunications technologies in order to be able to understand
`
`the nomenclature and architectures of the invention and the prior art.
`
`V. Overview of the ’591 Patent
`30. The ’591 patent describes “a system and method for affecting inmate
`
`behavior within a correctional facility” through providing telephone call discounts.
`
`(’591 patent, Abstract.) According to the ’591 patent, the offering of a telephone
`
`discount for good behavior effectively introduces a familial motivator on inmates
`
`to behave well, since institutional phone calls are expensive and are typically paid
`
`for by the inmate’s family. (’591 patent, 1:15-45.)
`
`31. FIG. 1 of the ’591 patent (reproduced below) illustrates a telephone
`
`network connected to a premises-based telecommunications system as may be
`
`implemented at a correctional facility. “An inmate initiates a telephone call from
`
`the originating telephone 10 [connected to a premises-based telecommunications
`
`system 12] to a called party as a typical collect call…The call is received at a
`
`central office 14 of a typical telecommunications system network, such as the
`
`[public switched telephone network], and routed to a service bureau 16…The
`
`
`
`- 13 -
`
`
`
`service bureau 16 includes the necessary equipment to facilitate the method of the
`
`present invention, including a processor (not shown) that can link to one or more
`
`databases 18 and a collection and detection device (not shown)”. (‘591 patent, 3:7-
`
`19.)
`
`
`
`
`I note that the ‘591 patent acknowledges that the call made by the
`
`32.
`
`inmate
`
`is a “typical collect call”, and
`
`that
`
`the network
`
`is a “typical
`
`telecommunications system network”. (‘591 patent, 3:9-13.)
`
`33. The service bureau “connects to one or more of the databases 18 to
`
`determine the rate associated with the [inmate identification].” (‘591 patent, 3:42-
`
`45.) “The call is then completed at the given telephone rate to a destination
`
`telephone 20 associated with the destination number through a central office 22”.
`
`(‘591 patent, 57-59.)
`
`
`
`- 14 -
`
`
`
`34.
`
`I note that the ‘591 patent only contains method claims despite the
`
`indication of a system in the title, abstract, and FIG. 1. (See ‘591 patent, 4:29-6:8.)
`
`“The present invention generally relates to institutional telephone systems and
`
`more particularly to methods of affecting inmate conduct through providing
`
`discounted telephone rates based on certain criteria such as inmate good behavior.”
`
`(‘591 patent, 1:8-12.)
`
`
`VI. Background of the Technologies Disclosed in the ‘591 Patent
`A. History of Prison Communications
`35. The use of telephones by prison inmates was nearly non-existent up
`
`until the early 1970s. (GTL 1011, 2.2.2.)1 Federal inmates were limited to one
`
`collect call every three months using staff telephones and this had to be reserved
`
`upon written request. (GTL 1011, 2.2.2.) In the 1970s, payphones were installed
`
`throughout most of the federal prison system, with no restrictions on the number of
`
`calls that could be made. (GTL 1011, 2.2.2.)
`
`36. Collect calls and coin phones, including collect calls from prison
`
`facilities, were normally handled by operator services switches managed by a
`
`
`1 “Criminal Calls: A Review of the Bureau of Prisons’ Management of
`
`Inmate Telephone Privileges” (U.S. Department of Justice, Office of the Inspector
`
`General, August 1999) is provided at GTL 1011.
`
`
`
`- 15 -
`
`
`
`carrier such as AT&T. These operator services switches were centralized in the
`
`carrier network and handled calls from multiple remote prison facilities. Using
`
`Automatic Number Identification (ANIs), the operator services switches, such as
`
`the switches described in Comella, would access a database to determine, for
`
`example, that the origination was from a coin phone at a prison. Using this
`
`information, the switch and operators who handled the collect calls would be aware
`
`of any restrictions that might be made on such prison-originated calls.
`
`37. By the late 1980s, there was a movement away from solely using
`
`collect calls at prison facilities. Because of this trend, functionality for processing
`
`inmate calls was distributed to systems within individual prison facilities. For
`
`example, an Inmate Telephone System (ITS) was developed for the Federal Bureau
`
`of Prisons (BOP) in 1988. The ITS system consisted of computer hardware and
`
`software programs that enabled the BOP to debit inmates’ commissary accounts
`
`for the cost of their calls. ITS used a computer, a telephone switch, and software
`
`that could control and record data regarding calls placed on telephones. Under ITS,
`
`each inmate received a “phone access code” (PAC), much like the calling card
`
`PIN, to facilitate this debiting and to (at least theoretically) permit correctional
`
`staff to identify which inmate made each call without visually checking the
`
`telephone area.
`
`
`
`- 16 -
`
`
`
`B. Inmate Rewards
`38. The notion of “good time,” where inmates are rewarded for good
`
`behavior with early release, was first passed into law in New York in 1817, and
`
`was intended to control inmate behavior and reduce prison population. By 1970,
`
`inmate incentive programs such as “good time,” parole, custody grading, and
`
`work-pay systems were commonplace. (GTL 1012 at 25.) Around this time,
`
`researchers experimented with operant conditioning, previously used for the
`
`mentally ill and disabled, in incentive programs to aid in rehabilitation of inmates.
`
`(GTL 1012 at 22.) The incentives initially promoted education among the
`
`imprisoned population. (See, e.g., GTL 1015 and GTL 1012.)2
`
`39.
`
`In the 1990s, as “truth in sentencing” laws began to displace “good
`
`time” programs, prisons began implementing the experimental good behavior
`
`incentive programs that provided day-to-day privileges. These privileges often
`
`
`2 “Rapid Educational Rehabilitation for Prison Inmates” (Kandel et al.,
`
`Behavior Research and Therapy, vol. 14, no. 1, pp. 323-331, 1976) is provided as
`
`GTL 1015.
`
`
`
`- 17 -
`
`
`
`included telephone access, such as additional telephone calls or reward of a calling
`
`card. (GTL 1013 at 25.) 3
`
`C. Telephone Discount Rewards
`40. Telephone companies have been rewarding and
`
`incentivizing
`
`subscribers with discounts since at least the 1920s. One example of an incentive
`
`discount is a time-of-day discount, where telephone calls are cheaper at night
`
`during off-peak hours. Even in 1927, a call to a destination 90 miles away cost
`
`almost 50% less at night than during the day. (GTL 1014 at 62.)4 In the 1970s,
`
`AT&T began offering discounts for direct-dialing (rather than using an operator).
`
`(GTL 1014 at 61.) In the 1990s, increased competition in the long-distance market
`
`led to more creative discount rewards, such as discounts for subscribers who
`
`maintained their carrier for more than 12 months, discounts based on call volume,
`
`
`3 “Incentives and Earned Privileges Revisited: Fairness, Discretion, and the
`
`Quality of Prison Life” (Liebling, Journal of Scandinavian Studies in Criminology
`
`and Crime Prevention, 2008) is provided at GTL 1013.
`
`4 “Reference Book of Rates Price Indices and Household Expenditures for
`
`Telephone Service” (FCC Industry Analysis Division, 1997) is provided at GTL
`
`1014.
`
`
`
`- 18 -
`
`
`
`and discounts for subscribers who spend above a given threshold (specifically,
`
`$10/month for AT&T and MCI) on long-distance calls. (GTL 1014 at 63-64.)
`
`VII. Karacki in view of Gainsboro ’843
`41. The article written by L. Karacki et al. titled “Rewards in an
`
`Institution for Youthful Offenders,” (“Karacki”) was published in The Howard
`
`Journal of Penology and Crime Prevention in 1970, 30 years prior to the filing of
`
`the ’591 patent.
`
`A. Overview of Karacki
`
`42. Karacki describes a “method by which [young federal inmates] are, in
`
`effect, rewarded for appropriate behavior”, implemented at the Robert F. Kennedy
`
`Youth Centre near Morgantown, West Virginia. (GTL 1012 at 20.) Inmates, which
`
`are limited to federal offenders ages 15-19, are referred to as “students”, since all
`
`of them participate in an educational program while detained at the facility.
`
`Karacki points out that incentive systems for good behavior have had a long
`
`history in penal institutions: “It can hardly be said that there is something new or
`
`revolutionary in a correctional method which provides external rewards for
`
`positive behavior. On the contrary, such reward systems tend to be the very
`
`cornerstone upon which most institutional programmes are built.” (GTL 1012 at
`
`24-25)
`
`
`
`- 19 -
`
`
`
`43. The incentive system described in Karacki is a “token economy”.
`
`Points are awarded for desirable behavior, and the points can be used to purchase
`
`items or privileges with a value of $0.01 for each point. (GTL 1012 at 22.)
`
`Desirable behavior
`
`includes punctuality and productiveness, but can be
`
`individualized based on an inmate’s character. (GTL 1012 at 23.) Points are
`
`normally awarded on a weekly basis but can also be awarded immediately as a
`
`bonus for “especially meritorious behaviour.” (GTL 1012 at 23.)
`
`44. The inmates are able to (and, in some cases, are forced to) use their
`
`points for a wide selection of items and services, including a savings account, room
`
`rental, a community tax, fines, commissary and snack bar purchases, recreation and
`
`special services, and miscellaneous charges such as purchase of civilian clothing.
`
`(GTL 1012 at 23-24.)
`
`[Inmates] can buy telephone calls home, or pay for items ordered from
`
`a mail order catalogue; they can pay to attend selected events in the
`
`community such as athletic games, concerts, plays, dances and parties;
`
`they can pay to use recreation equipment and facilities during their
`
`leisure hours, etc. This variety of choice makes the token economy
`
`system significant and meaningful. (GTL 1012 at 26.)
`
`
`
`- 20 -
`
`
`
`45. Points are redeemable via a spending card with markings for five and
`
`ten points, totaling 200 points. Facility staff punch holes in the cards to record
`
`purchases made. (GTL 1012 at 24.) Karacki notes that “[p]oints earned are
`
`nontransferable”, but does not explicitly disclose how punch cards are associated
`
`with their owners to prevent transfer between inmates. One straightforward way of
`
`preventing transfer would be to have signatures attached to each card, as is done
`
`with credit cards. Another way would be to have photo IDs attached to the card.
`
`46. Even in 1970, the token economy system described in Karacki was
`
`not novel, though its application on a large scale to a correctional facility was the
`
`first of its kind to the knowledge of the authors.
`
`Based upon operant conditioning principles of modifying behaviour
`
`through external rewards, this approach to retraining has been
`
`successful in such diverse fields as mental health and work with the
`
`mentally retarded and emotionally disturbed. Its application in the
`
`field of corrections, however, has been limited to small experimental
`
`studies. (GTL 1012 at 22, internal references omitted.)
`
`B. Overview of Gainsboro ‘843
`47. U.S. Patent No. 7,106,843 to Gainsboro et al. was filed on August 31,
`
`1998 and describes a computer system for controlling and monitoring institutional
`
`
`
`- 21 -
`
`
`
`telephone calls, including those in a correctional facility. Gainsboro ‘843 provides
`
`specific motivation for combining Wormith, Hennessy, and Gainsboro ‘843. The
`
`latter explicitly discloses a motivation to “modify the extent of a particular
`
`inmate’s calling privileges” to enhance “security and discipline”. (GTL 1004, 2:46-
`
`55.) An inmate's calling privileges include the cost of a phone call. (GTL 1004,
`
`FIG. 4C.)
`
`48. Regarding claim 4, Gainsboro '843 discloses a specific software
`
`interface allowing institutional staff to vary the internal rate charged to inmates for
`
`collect calls. Regarding claims 5-8, Gainsboro '843 demonstrates, inter alia, that
`
`biometric voice recognition, collect call PIN numbers, and pre-paid calling cards
`
`were all well-known identification methods for inmates at least 2 years before the
`
`'591 patent was filed.
`
`49. A person of ordinary skill in the art would recognize that a system that
`
`monitors and controls communication lines, including account balances, could be
`
`applied to an inmate reward system allowing an inmate to pay for telephone calls
`
`using accumulated points. In fact, it would be a natural way to do so. A person of
`
`ordinary skill in the art would be motivated to combine Karacki’s inmate reward
`
`system and the inmate telephone system of Gainsboro ‘843 to provide automated
`
`control of the inmates’ points, saving the correctional facility time and money. It
`
`
`
`- 22 -
`
`
`
`also would prevent the transfer of points, which Karacki prioritizes (GTL 1012 at
`
`23,) and enables a greater range of privileges for the inmates.
`
`50. The combination of Karacki and Gainsboro ‘843 is a simple
`
`combination of Gainsboro ‘843’s inmate telephone system with Karacki’s reward
`
`methods utilizing accumulated points to pay for telephone calls. A person of
`
`ordinary skill in the art could have applied Gainsboro ‘843’s control and
`
`monitoring approach to Karacki’s system of rewards and the result would have
`
`been predictable.
`
`C. Claims 1-10 are rendered obvious by Karacki and Gainsboro ‘843.
`1. The combination of Karacki and Gainsboro ‘843 discloses the
`subject matter of claim 1.
`51. The combination of Karacki and Gainsboro ‘843 discloses the subject
`
`matter recited in claim 1. Claim 1 is reproduced below. The claim limitations have
`
`been labeled for ease of discussion.
`
`1. [P] A method of affecting inmate behavior within a correctional
`facility comprising the steps of:
`
`[A] providing an identification for each inmate;
`
`[B] establishing a discount telephone rate;
`
`[C] establishing a measurement of conduct during
`incarceration for the inmates, wherein said measurement is a
`predetermined point total;
`
`
`
`- 23 -
`
`
`
`[D] reducing the telephone call charge rate for inmates that
`
`meet the measurement of conduct during incarceration for a
`predetermined period of time;
`
`[E] maintaining a record of inmate behavior for each inmate
`according to said identification;
`
`[F] awarding points to each inmate based on particular
`behavior; and
`
`[G] deducting points from each inmate based on particular
`behavior.
`
`inmate behavior within a
`a) “method of affecting
`correctional facility” (limitation 1[P])
`
`52. Karacki describes a method of affecting inmate behavior in the Robert
`
`F. Kennedy Youth Center (“KYC”), which was a correctional facility for federal
`
`offenders ages 15-19. “A major element of the programme at KYC is the token
`
`economy system: the method by which students are, in effect, rewarded for
`
`appropriate behaviour.” (GTL 1012 at 22.)
`
`b) “providing an
`(limitation 1[A])
`
`identification
`
`for each
`
`inmate.”
`
`53. Gainsboro ‘843 discloses that providing an identification for each
`
`inmate was prior art at the time Gainsboro ‘843 was filed. “[A]ccountability is
`
`typically achieved through use of a personal identification numbers [sic] (‘PIN’).
`
`Before making a call from an institution phone, an individual must enter his PIN.”
`
`
`
`- 24 -
`
`
`
`(GTL 1004, 1:54-57.) Karacki implies an identification through a card that is “non-
`
`transferable”. (GTL 1012, p. 23.)
`
`c) “establishing a discount telephone rate.” (limitation
`1[B])
`
`54. Karacki discloses that inmates may pay for telephone calls using their
`
`earned points in the token economy. “[Inmates] can buy telephone calls home”.
`
`(GTL 1012 at 26.) The use of points earned through good behavior to pay for a
`
`telephone call constitutes a 100% discount for the telephone call, or an established
`
`discount telephone rate of $0.00.
`
`55. Gainsboro ‘843 discloses establishing a discount t
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
