Filed on behalf of Global Tel*Link Corporation
`By: (cid:9)
`Michael D. Specht (mspecht-PTAB skgf. corn)
`Michael B. Ray (mray-PTAB@skgf.com )
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`1100 New York Avenue, NW
`Washington, D.C. 20005
`Tel: (202) 371-2600
`Fax: (202) 371-2540
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GLOBAL TEL*LINK CORPORATION
`Petitioner
`V.
`SECURUS TECHNOLOGIES, INC.
`Patent Owner
`
`Case 1PR2014-TBA
`Patent 6,636,591
`
`PETITION FOR INTER PAR TES REVIEW
`OF U.S. PATENT NO. 6 9636,591
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 223 13-1450
`
`

`

`Inter Partes Review of U.S. Patent No. 6,636,591
`
`TABLE OF CONTENTS
`
`I. (cid:9)
`Introduction .......................................................................................................1
`II. (cid:9) Mandatory Notices (37 C.F.R. § 42.8(a)(1)).....................................................2
`A. Real party-in-interest (37 C.F.R. § 42.8(b)(1)) ............................................2
`B. Notice of related matters (37 C.F.R. § 42.8(b)(2)) ......................................2
`C. Designation of lead and back-up counsel (37 C.F.R. § 42.8(b)(3))..............3
`D. Service information (37 C.F.R. § 42.8(b)(4)) ..............................................3
`III. Grounds For Standing (37 C.F.R. § 42.104(a)).................................................3
`IV. Identification of Challenge (37 C.F.R. § 42.104(b)).........................................3
`A. Statutory grounds for the challenge . ............................................................. 3
`B. Citation of Prior Art......................................................................................6
`C. Statement of Relief Requested......................................................................8
`V. (cid:9) The 1 591 Patent..................................................................................................8
`A. (cid:9) Overview of the ’591 (cid:9) Patent .........................................................................8
`B. (cid:9) Summary of the Prosecution History.........................................................
`10
`C. (cid:9) Level of Ordinary Skill in the Art ..............................................................
`11
`D . (cid:9) Claim Construction ....................................................................................
`12
`VI. (cid:9) Grounds of Rejection....................................................................................... 14
`A. Ground 1: Claims 1-10 are rendered obvious by the combination of
`Karacki and Gainsboro (cid:9) ’843 (cid:9) ...................................................................... 14
`1. Overview of Karacki............................................................................. 14
`2. Overview of Gainsboro ’843................................................................. 16
`3. Combination of Karacki and Gainsboro ’843....................................... 16
`B. Ground 2: Claims 1-3, 9 and 10 are rendered obvious by the
`combination of Wormith and Hennessy..................................................... 24
`1. (cid:9) Overview of Wormith........................................................................... 24
`2. (cid:9) Overview of Hennessy .......................................................................... 25
`3. (cid:9) Combination of Wormith and Hennessy............................................... 26
`
`

`

`Inter Partes Review of U.S. Patent No. 6,636,591
`
`C. Ground 3: Claims 1-10 are rendered obvious by the combination of
`Wormith, Hennessy and Gainsboro ’843...................................................37
`1. Combination of Wormith, Hennessy and Gainsboro ’843 ...................39
`D. Ground 4: Claims 1-3, 9-10 are rendered obvious by the combination of
`Wormithand Byers ....................................................................................44
`1. Overview of Byers ................................................................................44
`2. Combination of Wormith and Byers.....................................................45
`E. Ground 5: Claim 4 is rendered obvious by the combination of Wormith,
`Byersand Hird . .......................................................................................... 51
`1. Overview of Hird ..................................................................................51
`2. Combination of Wormith, Byers and Hird ...........................................
`52
`F. Ground 6: Claims 5-8 are rendered obvious by the combination of
`Wormith, Byers and Gainsboro ’013 .........................................................53
`1. Overview of Gainsboro ’013.................................................................54
`2. Combination of Wormith, Byers and Gainsboro ’013..........................54
`CONCLUSION.......................................................................................................
`57
`
`

`

`Inter Partes Review of U.S. Patent No. 6,636,591
`
`TABLE OF AUTHORITIES
`
`Cases
`
`KSR International Co. v. Teleflex Inc.,
`550 U.S. (cid:9) 398 (cid:9) (2007).............................................................................................27
`
`Statutes
`
`35 (cid:9) U.S.C. (cid:9) § (cid:9) 102(b) (cid:9) ................................................................................................6,7
`
`35 (cid:9) U.S.C. (cid:9) § (cid:9) 102(e).................................................................................................6, (cid:9) 7
`
`35 (cid:9) U.S.C. (cid:9) § (cid:9) 103 (cid:9) .......................................................................................................12
`
`35 (cid:9) U.S.C. (cid:9) § (cid:9) 103(a).................................................................................................4, (cid:9) 5
`
`35U.S.C.112 .......................................................................................................
`
`(cid:9) 12
`
`35 (cid:9) U.S.C. (cid:9) § (cid:9) 314(a) ................................................................................................... (cid:9) 56
`
`Regulations
`
`37 (cid:9) C.F.R. (cid:9) § (cid:9) 42.6(d)....................................................................................................3
`
`37 (cid:9) C.F.R. (cid:9) § (cid:9) 42.8(a)(1)...............................................................................................2
`
`37 (cid:9) C.F.R. (cid:9) § (cid:9) 42.8(b)(1)...............................................................................................2
`
`37 (cid:9) C.F.R. (cid:9) § (cid:9) 42.8(b)(2)...............................................................................................2
`
`37 (cid:9) C.F.R. (cid:9) § (cid:9) 42.8(b)(3)...............................................................................................3
`
`37 (cid:9) C.F.R. (cid:9) § (cid:9) 42.8(b)(4)...............................................................................................3
`
`37 (cid:9) C.F.R. (cid:9) § (cid:9) 42.100(b)..............................................................................................12
`
`37 (cid:9) C.F.R. (cid:9) § (cid:9) 42.104(a)................................................................................................3
`
`37 (cid:9) C.F.R. (cid:9) § (cid:9) 42.104(b)................................................................................................3
`
`77 Fed. Reg. 48756 (Aug. (cid:9) 14, 2012).......................................................................12
`
`

`

`Inter Par/es Review of U.S. Patent No. 6,636,591
`
`I. (cid:9)
`
`Introduction
`
`Global Tel*Link Corporation ("Petitioner") petitions for
`
`inter partes review
`
`("Petition") of claims 1-10 of United States Patent No. 6,636,591 to Swope et al.,
`
`titled "System and Method for Affecting Inmate Conduct with Good Behavior
`
`Discount Telephone Rates" (hereinafter "the ’591 patent"). The ’591 patent is
`
`provided as GTL 1001.
`
`The claims of the ’591 patent are directed to providing discounted telephone
`
`rates based on good behavior of prison inmates. These claims should have never
`
`been allowed. In fact at least thirty years prior to the effective filing date of the
`
`’591 patent, programs offering discounted phone service to inmates for good
`
`behavior were already known. Moreover, in describing one such program in the
`
`1970s, the Howard Journal of Penology observed that "[i]t can hardly be said that
`
`there is something new or revolutionary in a correctional method which provides
`
`external rewards for positive behaviour. On the contrary, such reward systems tend
`
`to be the very cornerstone upon which most institutional programmes are built."
`
`(GTL 1012, pp. 24-25). Nonetheless, the Examiner who allowed the claims in the
`
`’591 patent appears to have based that allowance on the addition of an amendment
`
`that simply stated, "awarding points to inmates based on particular behavior; and
`
`deducting points from inmates based on particular behavior," where those points
`
`-1-
`
`

`

`Inter Partes Review of U.S. Patent No. 6,636,591
`
`could then be applied for phone discounts. Such a feature was well-known for
`
`decades and in no way supports patentability of the ’591 patent claims.
`
`Petitioner’s expert, Dr. Leonard Forys, who has over 40 years of experience
`
`working in the telecommunications industry, likewise explains that the purported
`
`novelty of the ’591 patent, discounting telephone services based on a behavior-
`
`based reward system, was a standard practice in telecommunications for at least
`
`several decades prior to the earliest possible priority date of the ’591 patent.
`
`The core purpose of inter partes review, cancellation of unpatentable claims,
`
`is furthered by this Petition, as the challenged claims of the ’591 patent should
`
`never have been issued. Because Petitioner is at a minimum reasonably likely to
`
`prevail in showing unpatentability, the Petition should be granted and trial
`
`instituted on all of the challenged claims as set forth below.
`
`II. (cid:9) Mandatory Notices (37 C.F.R. § 42.8(a)(1))
`
`A.
`
`Real party-in-interest (37 C.F.R. § 42.8(b)(1)):
`
`The real party-in-interest of Petitioner is Global Tel*Link Corporation
`
`("GTL").
`
`B.
`
`Notice of related matters (37 C.F.R. § 42.8(b)(2)):
`
`No matters related to the ’591 patent are known to the Petitioner.
`
`-2-
`
`

`

`Inter Partes Review of U.S. Patent No. 6,636,591
`
`C.
`
`Designation of lead and back-up counsel (37 C.F.R. § 42.8(b)(3)):
`
`Lead Counsel: (cid:9)
`
`Michael D. Specht (Reg. No. 54,463); 202.772.8756
`
`Backup Counsel: Michael B. Ray (Reg. No. 33,997); 202.772.8569
`
`Address: (cid:9)
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.,
`
`1100 New York Avenue, NW, Washington, DC 20005,
`
`202.371.2540 (fax)
`
`D.
`
`Service information (37 C.F.R. § 42.8(b)(4)):
`
`Please address all correspondence to the lead counsel at the address shown
`
`above. Petitioner consents to electronic service by email at: mspecht-
`
`PTAB@skgf.com .
`
`III. Grounds For Standing (37 C.F.R. § 42.104(a))
`
`Petitioner certifies that the patent for which review is sought is eligible for
`
`inter partes review and that the Petitioner is not barred or estopped from requesting
`
`inter partes review challenging the patent claims on the grounds identified in this
`
`Petition. The required fee is paid via online credit card payment. The Office is
`
`authorized to charge fee deficiencies and credit overpayments to Deposit Acct. No.
`
`19-0036 (Customer ID No. 45324).
`
`IV.
`
`Identification of Challenge (37 C.F.R. § 42.104(b))
`
`A. (cid:9)
`
`Statutory grounds for the challenge.
`
`Per 37 C.F.R. § 42.6(d), copies of the references listed in the index below
`
`are filed with this Petition. In support of the proposed Grounds of Unpatentability,
`-3-
`
`

`

`Inter Partes Review of U.S. Patent No. 6,636,591
`
`this Petition is accompanied by a declaration of a technical expert, Dr. Leonard
`
`Forys ("Forys Decl."; GTL 1010,) which explains what the art would have
`
`conveyed to a person of ordinary skill in the art ("POSA"). GTL requests
`
`inter
`
`partes review of claims 1-10 on the following grounds:
`
`GROUND 1: Claims 1-10 are unpatentable under 35 U.S.C. §103(a) as
`
`obvious over "Rewards in an Institution for Youthful Offenders," L. Karacki et al.,
`
`The Howard Journal of Penology and Crime Prevention, vol. XIII, No. 1, pp. 20-
`
`30, 1970, ("Karacki") in view of U.S. Patent No. 7,106,843 to Gainsboro et al.
`
`("Gainsboro ’843").
`
`GROUND 2: Claims 1-3, 9 and 10 are unpatentable under 35 U.S.C.
`
`§103(a) as obvious over "The Development of a Prison Incentive System: A Case
`
`Illustration," J. S. Wormith, The First Annual Forum on Corrections Research, pp.
`
`77-93, March 1989, ("Wormith") in view of U.S. Patent No. 5,991,376 to
`
`Hennessy et al. ("Hennessy")
`
`GROUND 3: Claims 1-10 are unpatentable under 35 U.S.C. §103(a) as
`
`obvious over Wormith in view of Hennessy and in further view of Gainsboro ’843.
`
`GROUND 4: Claims 1-3, 9 and 10 are unpatentable under 35 U.S.C.
`
`§103(a) as obvious over Wormith in view of U.S. Patent No. 5,570,417 to Byers
`
`("Byers")
`
`GROUND 5: Claim 4 is unpatentable under 35 U.S.C. §103(a) as obvious
`
`

`

`Inter Partes Review of U.S. Patent No. 6,636,591
`
`over Wormith in view of Byers and further in view of U.S. Patent No. 4,933,966 to
`
`Hird et al. ("Hird").
`
`GROUND 6: Claims 5-8 are unpatentable under 35 U.S.C. §103(a) as
`
`obvious over Wormith in view of Byers and in further view of U.S. Patent No.
`
`5,655,013 to Gainsboro ("Gainsboro ’013").
`
`These Grounds are each highly relevant, and are neither horizontally nor
`
`vertically redundant. Each combination of obviousness references is stronger in
`
`some instances than the other Grounds of Unpatentability. The Grounds can be
`
`segmented into three groups: Ground 1, Grounds 2-3, and Grounds 4-6. Karacki is
`
`the primary reference for Ground 1, and Wormith is the primary reference for
`
`Grounds 2-6. Karacki and Wormith both establish that points-based incentive
`
`systems to provide rewards to inmates, specifically related to telephone usage,
`
`were well known decades before the filing date of the ’591 patent. The two
`
`references describe different implementations of the same fundamental idea. Thus,
`
`while both cover the fundamental concept upon which the patentability of the ’591
`
`claims appears to be based, they have relative strengths and weaknesses with
`
`respect to various claim features.
`
`The remainder of the cited prior art covers various well-known
`
`implementation details of telecommunication systems not described in Karacki or
`
`Wormith. For example, the two Gainsboro patents disclose systems for control and
`
`-5-
`
`

`

`Inter Partes Review of U.S. Patent No. 6,636,591
`
`monitoring of inmate telephone systems and enable automation of the methods
`
`described in Karacki and Wormith. Furthermore, as described below in the
`
`Summary of the Prosecution History, Hennessy was cited by the Examiner as the
`
`sole basis for an obviousness rejection in both office actions due to its relevance in
`
`providing a discount reward to telephone users.
`
`B. (cid:9)
`
`Citation of Prior Art
`
`The following prior art references are applied in the above grounds:
`
`Karacki: Karacki is prior art under at least 35 U.S.C. 102(b) because it was
`
`published in 1970, more than one year prior to the earliest possible priority date
`
`claimed by the ’591 patent. Karacki was not cited in the prosecution history of the
`
`’591 patent. Karacki is provided as GTL 1012.
`
`Wormith: Wormith is prior art under at least 35 U.S.C. § 102(b) because it
`
`was published in March 1989, more than one year prior to the earliest possible
`
`priority date claimed by the ’591 patent. Wormith was not cited in the prosecution
`
`history of the ’591 patent. Wormith is provided as GTL 1002.
`
`Hennessy: Hennessy is prior art under at least 35 U.S.C. § 102(e) because it
`
`was filed on May 20, 1997, more than one year prior to the earliest possible
`
`priority date claimed by the ’591 patent. The Examiner used Hennessy as a basis
`
`for rejection during the prosecution history of the
`
`’591 patent. Hennessy is
`
`provided as GTL 1003.
`
`S
`
`

`

`Inter Partes Review of U.S. Patent No. 6,636,591
`
`Gainsboro ’843: Gainsboro ’843 is prior art under at least 35 U.S.C. §
`
`102(e) because it was filed on August 31, 1998, more than one year prior to the
`
`earliest possible priority date claimed by the ’591 patent. Gainsboro ’843 was not
`
`cited in the prosecution history of the ’591 patent. Gainsboro ’843 is provided as
`
`GTL 1004.
`
`Byers: Byers is prior art under at least 35 U.S.C. § 102(b) because it issued
`
`on March 28, 1995, more than one year prior to the earliest possible priority date
`
`claimed by the ’591 patent. Byers was not cited in the prosecution history of the
`
`’591 patent. Byers is provided as GTL 1005.
`
`Gainsboro ’013: Gainsboro ’013 is prior art under at least 35 U.S.C. §
`
`102(b) because it issued on August 5, 1997, more than one year prior to the earliest
`
`possible priority date claimed by the ’591 patent. The Patent Owner disclosed
`
`Gainsboro ’013 in an information disclosure statement in the prosecution history of
`
`the ’591 patent. Gainsboro ’013 is provided as GTL 1006.
`
`Hird: Hird is prior art under at least 35 U.S.C. § 102(b) because it issued on
`
`June 12, 1990, more than one year prior to the earliest possible priority date
`
`claimed by the ’591 patent. Hird was not cited in the prosecution history of the
`
`’591 patent. Hird is provided as GTL 1009.
`
`WA
`
`

`

`Inter Partes Review of U.S. Patent No. 6,636,591
`
`C. (cid:9)
`
`Statement of Relief Requested
`
`Petitioner respectfully requests
`
`inter partes review and cancellation of
`
`claims 1-10 of the ’591 patent based on the detailed statements presented below.
`
`V. (cid:9)
`
`The ’591 Patent
`
`A. (cid:9)
`
`Overview of the ’591 Patent
`
`The ’591 patent describes a method of "affecting inmate conduct through
`
`providing discounted telephone rates based on certain criteria." (GTL 1001, 1:9-
`
`11.) The method awards and deducts points based on inmate behavior, though the
`
`nature of the behavior that warrants an addition or deduction of points is not
`
`specifically claimed. When an inmate maintains a predetermined number of points
`
`for a predetermined period of time, the inmate is rewarded with the privilege of
`
`discounted telephone calls. (GTL 1001, 1:58-2:18.)
`
`The figure provided below, which is the only drawing in the
`
`’591 patent and
`
`has nearly no relevance to the claims, is a schematic of a well-known telephone
`
`network connecting originating telephone 10 and destination telephone 20, and
`
`connected to one or more databases 18. The originating telephone 10 is connected
`
`to a premises-based telecommunications system 12. An outside call made by the
`
`originating telephone 10 is received by a central office 14 and routed to a service
`
`bureau 16. The service bureau 16 is linked to one or more databases 18, and can
`
`route the call to the destination telephone 20 via a central office 22. (GTL 1001,
`
`

`

`Inter Partes Review of U.S. Patent No. 6,636,591
`
`3:1-20.) Of the units illustrated in this figure, only the databases 18 are explicitly
`
`mentioned in any of the claims in the
`
`’591 patent, and only the originating
`
`telephone 10 and destination telephone 20 are implicitly referred to in the claims.
`
`18
`
`HSERVICECENTRAL
`CENTRT
`OFFICE
`OFC
`
`10 (cid:9)
`
`12
`
`14 (cid:9)
`
`16
`
`L -
`
`22
`
`20
`
`The ’591 patent does not claim any new technology enabling a correctional
`
`facility to translate earned points into telephone discounts. The only technology
`
`claimed by the ’591 patent is a database used to determine whether an inmate is
`
`eligible for the privilege of a reduced charge rate, and various well-known methods
`
`for identifying a caller in a correctional facility. The
`
`’591 patent merely describes
`
`obvious combination of the well-known methods of offering discounts to
`
`incentivize telephone subscribers and the well-known methods of incentivizing
`
`inmates with telephone privileges.
`
`S
`
`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
`

`

`Inter Partes Review of U.S. Patent No. 6,636,591
`
`B. (cid:9)
`
`Summary of the Prosecution History
`
`The prosecution of the application that matured into the ’591 patent (i.e.,
`
`U.S. Patent Application No. 09/640,999, provided with prosecution history as GTL
`
`1007) included a non-final Office Action, a Response to the non-final Office
`
`Action, a final Office Action, a Response to the final Office Action, and
`
`subsequent allowance of the application. In the final Office Action, the Examiner
`
`rejected all claims that did not recite the feature of "awarding points to inmates
`
`based on particular behavior; and deducting points from inmates based on
`
`particular behavior." (See GTL 1007, p. 76.) In the Response to the final Office
`
`Action, 14 claims were cancelled, 4 dependent claims were added (which issued as
`
`claims 5-8), and the 2 remaining independent claims (which issued as claims 1 and
`
`9) were amended to include the feature of "awarding points to inmates based on
`
`particular behavior; and deducting points from inmates based on particular
`
`behavior." (GTL 1007, p. 87-90.)
`
`From the final Office Action, one can deduce that the feature of "awarding
`
`points to inmates based on particular behavior; and deducting points from inmates
`
`based on particular behavior" was the only feature in the entire application viewed
`
`as novel and non-obvious by the Examiner. Specifically, claims 14-15 and 18-20
`
`were objected to as having allowable content but being dependent on unallowable
`
`claims. Claims 14 and 18 recited only the limitation of awarding and deducting
`
`Mile
`
`

`

`Inter Partes Review of U.S. Patent No. 6,636,591
`
`points. Claim 15 depended on claim 14 with the additional limitation of
`
`"connecting to a database to determine whether an inmate is qualified to receive
`
`the reduced charge rate for said at least one predetermined destination number."
`
`(GTL 1007, p. 89.) Similarly, Claim 19 depended on claim 18 with the additional
`
`limitation of "connecting to a database to determine whether an inmate is qualified
`
`to receive the reduced charge rate." Claim 20 depended on claim 19 with the
`
`additional limitation of "wherein said reduced charge rate is a rate for a collect
`
`call." (GTL 1007, p. 87-90.)
`
`Hennessy, which was the primary basis for the Examiner’s rejection,
`
`explicitly teaches connecting to a database to determine whether a subscriber
`
`qualifies to receive a discount. (GTL 1003, 5:18-22 and 2:41-47.) The Examiner
`
`also cited prior art for collect calls as a basis for rejection in, e.g., claim 4 (GTL
`
`1007, p. 74.)
`
`C. (cid:9)
`
`Level of Ordinary Skill in the Art
`
`A person of ordinary skill in the art ("POSA") is presumed to be aware of all
`
`pertinent art, thinks along conventional wisdom in the art, and is a person of
`
`ordinary creativity. Based on the disclosure of the ’591 patent, one of ordinary skill
`
`in the art would have an associate degree in Electrical Engineering, Computer
`
`Science, or an equivalent field with one to two years of industry experience. (GTL
`
`1010, ¶29.)
`
`UBE
`
`

`

`Inter Partes Review of U.S. Patent No. 6,636,591
`
`D. (cid:9)
`
`Claim Construction
`
`Except as noted below, all claims carry their ordinary and customary
`
`meanings. Consistent with the statute and the legislative history of the AlA, the
`
`Board should construe the claims using the broadest reasonable interpretation.
`
`See
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012); 37
`
`CFR § 42.100(b).
`
`The following claim terms are discussed below’:
`
`(cid:149) Reducing the telephone charge rate
`
`(cid:149) Raising the rate
`
`"Reducing the telephone charge rate"
`
`Claims 1 and 9 recite, inter alia, "reducing the telephone charge rate". The
`
`only "rate" that could serve as antecedent basis for "the telephone charge rate" is
`
`"a discount telephone rate" recited in both claims. The discount telephone rate is,
`
`by definition, already a discount, representing a reduced telephone charge rate. The
`
`Petitioner recognizes that claims cannot be challenged under 35 U.S.C. §
`
`112 within an inter partes review. Petitioner is providing a required claim
`
`construction for demonstrating the invalidity of these claims under 35 U.S.C. § 103
`
`and maintains the right to argue invalidity of these claims under 35 U.S.C. § 112 in
`
`proceedings where such grounds are permitted.
`
`-12-
`
`

`

`Inter Partes Review of U.S. Patent No. 6,636,591
`
`specification demonstrates that the discount telephone rate is not further reduced.
`
`Specifically, the ’591 patent discloses two classes of inmates: those who meet a
`
`predetermined criteria, and those who do not. The former class is associated with a
`
`discounted telephone rate (recited in claims 1 and 9), while the latter class is
`
`associated with a standard telephone rate (not recited in any claims):
`
`When the actual measurements [of an inmate’s behavior]
`
`meet or exceed the predetermined qualifying criteria for a
`
`given period of time, the inmate’s PIN number becomes
`
`associated with a discounted calling rate within the
`
`telephone system.. .The calling rate remains at a given
`
`standard rate for inmates that do not meet or exceed the
`
`predetermined qualifying criteria for the given period of
`
`time. (GTL 1001, 1:63-2:11.)
`
`Consistent with the notion of two telephone charge rates(cid:151)a standard rate
`
`and a discount rate(cid:151)and because the specification never discloses reducing a
`
`discount rate, Petitioner construes "reducing the telephone charge rate" as
`
`"charging the discount telephone rate".
`
`"Raising the rate"
`
`Claim 2 recites the limitation of "raising the rate" for inmates who do not
`
`qualify for the discount. In light of the above construction of claim 1, the only
`
`- 13 -
`
`

`

`Inter Panes Review of U.S. Patent No. 6,636,591
`
`"rate" that could serve as antecedent basis for "the rate" of claim 2 is "a discount
`
`telephone rate" recited in claim 1. The discount telephone rate, however, is not
`
`applicable to inmates who do not meet the measurement of conduct. "The calling
`
`rate remains at a given standard rate for inmates that do not meet or exceed the
`
`predetermined qualifying criteria for the given period of time." (GTL 1001, 1:63-
`
`2:1 1.) That is, inmates not meeting the measurement of conduct are not charged a
`
`"raised discount telephone rate," but are simply charged a standard non-discounted
`
`rate. Petitioner thus construes "raising the rate" as "charging a non-discounted
`
`telephone rate".
`
`VI. Grounds of Rejection
`
`Petitioner now presents each Ground of Rejection, in detail, for claims 1-10
`
`of the ’591 patent. The claim charts that follow reflect the fact that claim
`
`limitations 11.21-11.71 are identical to claim limitations f9.11-[9.31 and [9.51-[9.7],
`
`respectively. Finally, all underlining and bold are added emphasis unless otherwise
`
`noted.
`
`Ground 1: Claims 1-10 are rendered obvious by the combination
`A. (cid:9)
`of Karacki and Gainsboro ’843
`
`1. Overview of Karacki
`
`Karacki is a research paper published in the Howard Journal of Penology
`
`and Crime Prevention. The paper describes a token economy system for young
`
`federal inmates housed at the Robert F. Kennedy Youth Centre near Morgantown,
`-14-
`
`

`

`Inter Partes Review of U.S. Patent No. 6,636,591
`
`West Virginia. Inmates, who are referred to as "students", (GTL 1010, ¶42,) are
`
`awarded points weekly based on their behavior, such as punctuality and
`
`productiveness, in various activities including chore detail and school work. (GTL
`
`1012, p. 23.) These points are directly converted to "money" credited to their
`
`accounts, which may be used for a variety of purchases, including telephone calls.
`
`(GTL 1012, p. 26.) Offenders can also be fined points for misconduct. (GTL 1012,
`
`p. 24.) Karacki was published in 1970, nearly 30 years before the earliest effective
`
`filing date claimed by the ’591 patent, and clearly establishes that methods for
`
`affecting inmate behavior through telephone discounts were implemented decades
`
`before the ’591 patent was filed. As stated in Karacki in 1970:
`
`It can hardly be said that there is something new or revolutionary in a
`
`correctional method which provides external rewards for positive
`
`behaviour. On the contrary, such reward systems tend to be the very
`
`cornerstone upon which most institutional programmes are built. This
`
`principle is reflected in such well established practices as parole,
`
`’good time’, custody grading and institutional work-pay systems.
`
`(GTL 1012, pp. 24-25.)
`
`As described above in the Summary of the Prosecution History, the
`
`Examiner viewed the feature of "awarding points to each inmate based on
`
`particular behavior; and deducting points from each inmate based on particular
`
`MME
`
`

`

`Inter Partes Review of U.S. Patent No. 6,636,591
`
`behavior" as the only novel and non-obvious feature of the ’591 patent claims. As
`
`demonstrated in Claim Chart I, Karacki explicitly discloses this feature in detail.
`
`The Examiner did not find the Karacki article during the prior art search, although
`
`it had been publicly available for over three decades at the time of examination.
`
`2.
`
`Overview of Gainsboro ’843
`
`Gainsboro ’843 discloses "a method and apparatus for managing
`
`institutional telephone activity utilizing a computer-based telephony management
`
`unit". (GTL 1004, Abstract.) Gainsboro ’843 describes a specific software interface
`
`allowing institutional staff to vary the internal rate charged to inmates for collect
`
`calls, as well as to control the maximum length of a call an inmate can make and
`
`when they are allowed to make telephone calls. (GTL 1004, 33:57-34:9 and FIG.
`
`4C.) The system utilizes a database to determine availability of discounts (GTL
`
`1004, 105:26-28.) Gainsboro ’843 also establishes 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. (GTL 1010, ¶48.)
`
`3.
`
`Combination of Karacki and Gainsboro ’843
`
`Both Karacki and Gainsboro ’843 are directed to managing inmates’
`
`financial accounts in relation to the placement of telephone calls. A person of
`
`ordinary skill in the art would recognize that a system that monitors and controls
`
`-16-
`
`

`

`Inter Par/es Review of U.S. Patent No. 6,636,591
`
`communication lines, including account balances, could be applied to an inmate
`
`reward system allowing an inmate to pay for telephone calls using accumulated
`
`points. (GTL 1010, ¶49.) In fact, a person of ordinary skill in the art would be
`
`motivated to apply the monitoring and control system of Gainsboro ’843 to the
`
`inmate reward system of Karacki as it provides automated control of account
`
`balances for the institution, prevents transfer of points, and enables a greater range
`
`of calling options to the inmates. (GTL 1010, ¶49.)
`
`The combination of Karacki and Gainsboro ’843 is a simple combination of
`
`Gainsboro ’843’s control and monitoring with Karacki’ s reward methods utilizing
`
`accumulated points to pay for telephone calls. (GTL 1010, ¶50.) A person of
`
`ordinary skill in the art could have substituted Gainsboro ’843’s control and
`
`monitoring approach to Karacki’s system of rewards and the result of the
`
`substitution would have been predictable. (GTL 1010, ¶50.)
`
`Claim Chart I establishes that Karacki and Gainsboro ’843 establish prima
`
`facie obviousness of claims 1-10.
`
`’591 Patent
`II1 .P1 A method of
`affecting inmate
`behavior within a
`correctional facility
`comprising the steps
`Of..
`
`Claim Chart I - Karacki in view of Gainsboro ’843
`Karacki describes a method of affecting inmate
`behavior in the Robert F. (cid:9) Kennedy Youth (cid:9) Center
`("KYC"), which was a correctional facility for Federal
`inmates ages 15-19. (GTL 1012, p. 20.) (Karacki refers to
`inmates as "students".) (GTL 1010, ¶42.)
`
`The method consists of a token economy where
`inmates are rewarded for good behavior with points that
`are directly convertible into money in an account, which
`
`-17-
`
`

`

`Inter Partes Review of U.S. Patent No. 6,636,591
`
`’ 591 Patent
`
`Claim Chart I - Karacki in view of Gainsboro ’843
`can be used to purchase items such as telephone calls.
`(GTL 1012, p. 22, 26.)
`
`"A major element of the programme at KYC is the
`token economy system: the method by which students are,
`in effect, rewarded for appropriate