Filed on behalf of Global Tel*Link Corporation
`By:
`Lori A. Gordon
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`Michael B. Ray
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`Sterne, Kessler, Goldstein & Fox PLLC
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`1100 New York Avenue, NW
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`Washington, D.C.
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`Tel: (202) 371-2600
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`Fax: (202) 371-2540
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,626,118
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`

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`Petition for Inter Partes Review of
`U.S. Pat. No. 8,626,118
`
`TABLE OF CONTENTS
`
`Mandatory Notices (37 C.F.R. § 42.8(a)(1)) ................................................... 2
`Grounds for Standing (37 C.F.R. § 42.104(a)) ................................................ 3
`Identification of Challenge (37 C.F.R. § 42.104(b)) ....................................... 3
`Statutory grounds for the challenge. ................................................................ 3
`Citation of Prior Art ......................................................................................... 3
`The ’118 Patent ................................................................................................ 4
`Overview of the ’118 Patent ............................................................................ 4
`Summary of the Prosecution History ............................................................... 7
`Level of Ordinary Skill in the Art ................................................................... 9
`Claim Construction .......................................................................................... 9
`Ground of Rejection: The combination of Rae, Sulmar, and Falcone renders
`claims 1–32 obvious. ..................................................................................... 10
`Overview of Rae, Sulmar, and Falcone ......................................................... 10
`The combination of Rae, Sulmar, and Falcone renders claim 1 obvious. ..... 13
`The combination of Rae, Sulmar, and Falcone renders claim 2 obvious. ..... 25
`The combination of Rae, Sulmar, and Falcone renders claim 3 obvious. ..... 26
`The combination of Rae, Sulmar, and Falcone renders claim 4 obvious. ..... 26
`The combination of Rae, Sulmar, and Falcone renders claim 5 obvious. ..... 27
`The combination of Rae, Sulmar, and Falcone renders claim 6 obvious. ..... 30
`The combination of Rae, Sulmar, and Falcone renders claims 7 and 10
`obvious. .......................................................................................................... 31
`The combination of Rae, Sulmar, and Falcone renders claim 8 obvious. ..... 32
`The combination of Rae, Sulmar, and Falcone renders claim 9 obvious. ..... 33
`The combination of Rae, Sulmar, and Falcone renders claim 11 obvious. ... 33
`The combination of Rae, Sulmar, and Falcone renders claim 12 obvious. ... 36
`The combination of Rae, Sulmar, and Falcone renders claim 13 obvious. ... 37
`The combination of Rae, Sulmar, and Falcone renders claim 14 obvious. ... 38
`The combination of Rae, Sulmar, and Falcone renders claim 15 obvious. ... 38
`The combination of Rae, Sulmar, and Falcone renders claim 16 obvious. ... 39
`The combination of Rae, Sulmar, and Falcone renders claim 17 obvious. ... 40
`- i -
`
`
`I.
`II.
`III.
`A.
`B.
`IV.
`A.
`B.
`C.
`D.
`V.
`
`A.
`B.
`C.
`D.
`E.
`F.
`G.
`H.
`
`I.
`J.
`K.
`L.
`M.
`N.
`O.
`P.
`Q.
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`
`
`
`

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`W.
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`X.
`Y.
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`R.
`S.
`T.
`U.
`V.
`
`Petition for Inter Partes Review of
`U.S. Pat. No. 8,626,118
`The combination of Rae, Sulmar, and Falcone renders claim 18 obvious. ... 41
`The combination of Rae, Sulmar, and Falcone renders claim 19 obvious. ... 42
`The combination of Rae, Sulmar, and Falcone renders claim 20 obvious. ... 43
`The combination of Rae, Sulmar, and Falcone renders claim 21 obvious. ... 44
`The combination of Rae, Sulmar, and Falcone renders claims 22 and 23
`obvious. .......................................................................................................... 45
`The combination of Rae, Sulmar, and Falcone renders independent claim
`24 obvious. ..................................................................................................... 45
`The combination of Rae, Sulmar, and Falcone renders claim 25 obvious. ... 54
`The combination of Rae, Sulmar, and Falcone renders claims 26 and 27
`obvious. .......................................................................................................... 54
`The combination of Rae, Sulmar, and Falcone render claim 28 obvious. .... 54
`Z.
`AA. The combination of Rae, Sulmar, and Falcone renders claim 29 obvious. ... 56
`BB. The combination of Rae, Sulmar, and Falcone renders claim 30 obvious. ... 57
`CC. The combination of Rae, Sulmar, and Falcone renders claim 31 obvious. ... 58
`DD. The combination of Rae, Sulmar, and Falcone renders claim 32 obvious. ... 59
`VI.
`No Secondary Considerations of Nonobviousness Exist. ............................. 60
`VII.
`Conclusion ..................................................................................................... 60
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`- ii -
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`

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`Petition for Inter Partes Review of
`U.S. Pat. No. 8,626,118
`
`TABLE OF AUTHORITIES
`
`
`CASES
`Kyocera Corp. et al. v. Softview LLC,
`IPR2013–00007, Paper 51 ....................................................................................... 65
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`
`
`STATUTES
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`35 U.S.C. § 102(b) ..................................................................................................... 9
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`35 U.S.C. § 102(e) ................................................................................................. 8, 9
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`35 U.S.C. § 103 .......................................................................................................... 8
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`35 U.S.C. § 103(c) ..................................................................................................... 8
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`
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`RULES
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`37 C.F.R. § 42.8(a)(1) ................................................................................................ 7
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`37 C.F.R. § 42.8(b)(3) ................................................................................................ 7
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`37 C.F.R. § 42.104(a) ................................................................................................. 8
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`37 C.F.R. § 42.104(b) ................................................................................................ 8
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`

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`Petition for Inter Partes Review of
`U.S. Pat. No. 8,626,118
`
`EXHIBIT LIST
`
`GTL
` Exh. No.
`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`1012
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`1013
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`1014
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`1015
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`1016
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`Description
`U.S. Patent 8, 626,118 to Smith, et al.
`
`File History for U.S. Patent 8,626,118
`
`Declaration of Dr. Leonard J. Forys in Support of Petition for Inter
`Partes Review of U.S. Patent No. 8,626,118
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`File Wrapper for Reexamination Application No. 90/012,802
`
`U.S. Provisional Application No. 60/935,634
`
`File History for U.S. Patent No. 8,190,121
`
`(Not Used)
`
`Assignment of U.S. Patent No. 8,190,121 and U.S. Application No.
`13/449,308
`
`U.S. Patent No. 7,496,345 to Rae et al. (“Rae”)
`
`U.S. Patent Application Publication No. 2006/0149644 to Sulmar et
`al. (“Sulmar”)
`
`(Not Used)
`
`(Not Used)
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`U.S. Patent Application Publication No. 2003/0086546 to Falcone et
`al. (“Falcone”)
`
`U.S. Patent No. 7,106,843 to Gainsboro et al. (“Gainsboro”)
`
`How to Build an SMS Service, Schwartz et al., O’Reilly, 2007.
`(“Schwartz”)
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`“Mobile Terminated SMS Billing – Exploits and Security Analysis,”
`Garner et al., IEEE International Conference on Information Tech-
`nology: New Generations, 2006. (“Garner”)
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`
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`

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`Petition for Inter Partes Review of
`U.S. Pat. No. 8,626,118
`
`GTL
` Exh. No.
`1017
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`1018
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`1019
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`1020
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`1021
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`1022
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`Description
` “SMS: The Short Message Service,” Brown et al., Computer, vol.
`40, no. 12, 2007. (“Brown”)
`
`U.S. Patent No. 6,639,977 to Swope et al. (“Swope”)
`
`“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. (“Bureau of Prisons”)
`
`U.S. Patent No. 4,054,756 to Comella et al. (“Comella”)
`
`“Why Can’t You Make a Collect Call to a Cell Phone,” National
`Public Radio, June 30, 2008. (Accessed via
`http://www.npr.org/templates/story/story.php?storyId=92021561 on
`April 6, 2015)
`
`“Investigating mobile payment: Supporting technologies, methods,
`and use,” Valcourt et al., IEEE International Conference on Wireless
`and Mobile Computing, Networking, and Communications, 2005.
`(“Valcourt”)
`
`1023
`
`Curriculum Vitae of Dr. Leonard J. Forys
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`

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`Petition for Inter Partes Review of
`U.S. Pat. No. 8,626,118
`Global Tel*Link Corporation petitions for inter partes review of claims 1–32
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`
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`of United States Patent No. 8,626,118 to Smith et al., titled “System and Method for
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`Authorizing and Monetizing Collect Cellular Telephone Calls” (hereinafter “the
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`ʼ118 patent”).
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`
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`Petitioner Global Tel*Link Corporation will demonstrate that a reasonable
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`likelihood exists that all 32 claims of U.S. Patent No. 8,626,118 (“the ’118 patent”)1
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`are unpatentable. The claims of the ’118 patent are directed to systems and methods
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`for billing collect calls made to cellular telephones. Collect calling is typically used
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`in restricted environments such as prisons. However, prison telephone systems were
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`often unable to place collect calls to cellular phones because cellular carriers typi-
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`cally do not have reverse-charge billing arrangements. (GTL 1005, Provisional
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`App., p. 7.) To address this, the ’118 patent describes billing for a flat-rate text mes-
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`sage sent to the called mobile phone prior to connecting the call. (See e.g., ’118 pa-
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`tent, claim 1.) Thus, the ’118 patent merely combines collect calling with text mes-
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`saging and its associated billing.
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`Both collect calling and text message billing were well-known before the pur-
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`ported August 2007 effective filing date of the ’118 patent, as admitted by the Ap-
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`plicants. (See ’118 patent, 1:22–34, 2:43–53, and 5:34–38.) Petitioner’s expert, Dr.
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`Leonard Forys, who has over 40 years of experience working in the telecommunica-
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`1 The ’118 patent is provided as GTL 1001.
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`Petition for Inter Partes Review of
`U.S. Pat. No. 8,626,118
`tions industry, explains that text messages had been used in the billing of telecom-
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`munications services for several years prior to the effective filing date of the ’118
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`patent. (Forys Dec., ¶ 37.)2 Indeed, patents describing the use of text messages for
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`billing of collect calls existed well before August 2007. For example, U.S. Patent
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`No. 7,496,3453 to Rae et al., filed in 2004, suggested “us[ing] text messaging to
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`contact a called party for collect call acceptance, to provide prepayment for a call,
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`etcetera.” (Rae, 13:48–50.) Accordingly, Petitioner respectfully requests that the
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`Board institute trial on the grounds set forth herein.
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`I. Mandatory Notices (37 C.F.R. § 42.8(a)(1))
`REAL PARTY IN INTEREST: The real party-in-interest of Petitioner is Global
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`Tel*Link Corporation (“GTL”).
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`RELATED MATTERS: U.S. Application No. 14/090,527, filed on 11/26/2013,
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`claims the benefit of the ’118 patent. No other matters related to the ’118 patent are
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`known to the Petitioner.
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`LEAD AND BACKUP COUNSEL: Pursuant to 37 C.F.R. § 42.8(b)(3) and
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`42.10(a), Petitioner appoints Lori A. Gordon (Reg. No. 50,633) as its lead counsel
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`and Michael B. Ray (Reg. No. 33,997) as its back-up counsel, both at the address:
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`STERNE, KESSLER, GOLDSTEIN & FOX, 1100 New York Avenue, N.W., Washington,
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`2 The Forys Declaration is provided as GTL 1003.
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`3 The ’345 patent (“Rae”) is provided as GTL 1009.
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`- 2 -
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`

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`Petition for Inter Partes Review of
`U.S. Pat. No. 8,626,118
`D.C., 20005, phone number (202)772-8997 and facsimile (202)371-2540.
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`SERVICE INFORMATION: Petitioner consents to electronic service by email at
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`the email addresses: lgordon-PTAB@skgf.com and mray-PTAB@skgf.com.
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`II. Grounds for Standing (37 C.F.R. § 42.104(a))
`The undersigned and GTL certify that the ʼ118 patent is available for inter
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`partes review. GTL certifies that it is not barred or estopped from requesting this in-
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`ter partes review on the grounds identified herein.
`
`III.
`Identification of Challenge (37 C.F.R. § 42.104(b))
`A. Statutory grounds for the challenge.
`GTL requests review of claims 1–32 on the following ground: GROUND 1:
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`Claims 1–32 are unpatentable under 35 U.S.C. § 103 as obvious over U.S. Patent
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`No. 7,496,345 to Rae et al. (“Rae”) in view of U.S. Patent Application Publication
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`No. 2006/0149644 to Sulmar et al. (“Sulmar”).
`
`B. Citation of Prior Art
`In support of the grounds of unpatentability cited above, GTL cites the fol-
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`lowing prior art references:
`
`U.S. Patent No. 7,496,345 to Rae et al., titled “Systems and Methods for
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`Processing Calls Directed to Telephones Having a Portable Interface,” provided as
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`GTL 1009 is prior art under at least 35 U.S.C. § 102(e) because it was filed on Sep-
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`tember 30, 2004, prior to the earliest possible priority date of the ʼ118 patent. Alt-
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`hough both Rae and the ’118 patent are now owned by Securus, Rae is not subject to
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`
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`- 3 -
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`

`
`Petition for Inter Partes Review of
`U.S. Pat. No. 8,626,118
`a 35 U.S.C. § 103(c) exception because Rae and the alleged invention claimed in the
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`’118 patent were not, at the time of the alleged invention, owned by the same person
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`or subject to an obligation of assignment to the same person. At the time of inven-
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`tion, which was no later than April 15, 2008, the ’118 patent was assigned to 3C In-
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`teractive, LLC (Assignment, Exhibit 1008, p. 3), whereas Rae was assigned to Se-
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`curus’ predecessor, Evercom. (Rae, p. 1, element (73).)
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`U.S. Patent Application Publication No. 2006/0149644 to Sulmar et al., ti-
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`tled “Premium SMS Billing Method,” provided as GTL 1010, is prior art under at
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`least 35 U.S.C. § 102(b) because it published on July 6, 2006, more than one year
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`prior to the earliest possible priority date of the ʼ118 patent.
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`U.S. Patent Application Publication No. 2003/0086546 to Falcone et al., ti-
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`tled “Systems and Methods for Offering a Service to a Party Associated with a
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`Blocked Call,” provided as GTL 1013, is prior art under at least 35 U.S.C. § 102(b)
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`because it published on May 8, 2003, more than one year prior to the earliest possi-
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`ble priority date of the ’118 patent.
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`IV. The ’118 Patent
`A. Overview of the ’118 Patent
`The claims of the ’118 patent are nothing more than the application of a
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`known billing method (text messaging) to a known telecommunications service (col-
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`lect calling). The ’118 patent relates to “a system, a method and programming in-
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`structions … for authorizing and monetizing collect cellular telephone calls” utiliz-
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`

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`Petition for Inter Partes Review of
`U.S. Pat. No. 8,626,118
`ing text message billing such as premium SMS. (’118 patent, 2:33–36.) FIG. 1 of the
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`’118 patent (reproduced below) illustrates a system that allows a calling party 10 to
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`make a collect call to a cellular subscriber 30. In this system, the operator service
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`provider (OSP) 18 and a cell phone connect service (CCS) 20 work in conjunction
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`to provide the collect calling service. The OSP need not be physically distinct from
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`CCS 20, and may simply be “a combination of software modules (provided by CCS
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`20).” (’118 patent, 4:53.)
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`FIGs. 2A and 2B (reproduced below) depict a flowchart of an embodiment of
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`the claimed system and methods. When a collect call is placed to a cell phone (step
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`50), the system determines whether the associated cellular carrier can be charged for
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`SMS services (step 54), and, if so, the system proceeds to call the cell number (step
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`

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`Petition for Inter Partes Review of
`U.S. Pat. No. 8,626,118
`64). (’118 patent, FIGs 2A, 2B.) An interactive voice response (IVR) system then
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`asks the called party to authorize a collect call via text message billing (steps 68–
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`74), at which point the billable text message is sent to the user (steps 78–80) and the
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`parties are connected for a predetermined period of time (steps 82–92).
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`
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`(’118 patent, FIGs. 2 and 2A.)
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`The ’118 patent focuses on billing for collect calls using text message ser-
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`vices such as Premium SMS where text messages to a phone may cost a mobile sub-
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`scriber “$10 or higher per unit event.” (’118 patent, 4:5.) As Dr. Forys explains, as
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`of the earliest possible priority date of the ’118 patent, carriers used Premium SMS
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`

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`Petition for Inter Partes Review of
`U.S. Pat. No. 8,626,118
`to bill for items and services such as ringtones, parking, or even calling time. (Forys
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`Decl., ¶ 37.) The ’118 patent itself acknowledges that Premium SMS was known
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`prior to the ’118 patent: “In the prior art, it is known that … SMS premium charges
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`may be permitted by both the cellular carrier and the cell phone.” (’118 patent,
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`2:43–49.)
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`B. Summary of the Prosecution History
`The ’118 patent originated as application 13/449,308, a divisional of U.S. Pa-
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`tent No. 8,190,121 (“the ’121 patent”).4 During prosecution of the ’121 patent, the
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`Examiner identified the following two features as allowable:
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`wherein transmission of a message to the cellular telephone by message
`service comprises transmission of a text message to the telephone number
`associated with the cellular telephone [transmission limitation]
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`wherein the charge for message service made to the cellular telephone
`monetizes the telephone communication between the calling party and
`the cellular telephone as a collect call [monetization limitation]
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`(See Exh. 1006, ’121 File History, pp. 201, 202, 225, and 298) With respect to the
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`’118 patent, both independent claims 1 and 24 include the transmission limitation
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`and independent claim 31 includes the monetization limitation.
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`4 At the time the ’118 application was filed, both the ’121 and ’118 patents
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`were assigned to 3C Interactive LLC. Both were subsequently assigned to Securus
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`on November 7, 2012. (See Assignment, Exhibit 1008, pp. 3, 6.)
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`

`
`Petition for Inter Partes Review of
`U.S. Pat. No. 8,626,118
`An ex parte reexamination was ordered on the ’121 patent on March 15,
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`2013. (Order Granting Reexamination, p. 169.) The reexamination concluded with
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`the confirmation of 57 of the original 59 claims. (Id., p. 572.) In the Notice of Intent
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`to Issue a Reexamination Certificate, the Examiner identified the following limita-
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`tion as “[t]he major differentiating characteristic of the ’121 Patent” (Exh. 1004,
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`Reexamination Wrapper, p. 568):
`
`determining whether a charge for message service can be billed through
`the service provider when a message is transmitted to the cellular tele-
`phone.
`
`(Id. at 567–68.) The Examiner stated that while “[d]etermining a preauthorization of
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`a Party that is already part of a transaction is known (as shown by the art), the ’121
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`Patent provides the novel characteristic of being able to check to-be-invited parties
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`(called parties) ability to pay via a ‘charge for message service’ prior to establishing
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`the connection.” (Id.) Dr. Forys explains that checking called parties’ ability to pay
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`prior to establishing the connection that the Examiner found lacking was well-
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`known. (Forys Decl., ¶ 42.)
`
`During prosecution of the ’118 patent, the Patent Owner added a new set of
`
`32 claims, arguing the claims were allowable because they directly mapped to al-
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`lowable claims in the ’121 patent. (See Exh. 1002, ’118 File History, pp. 106–108.)
`
`However, during prosecution of the ’121 patent, the ’118 patent, and the ex parte
`
`reexamination, the Examiner did not consider Rae, Sulmar, and Falcone, alone or in
`
`
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`

`
`Petition for Inter Partes Review of
`U.S. Pat. No. 8,626,118
`combination. If the Examiner had considered these references, the claims of the ’118
`
`patent would not have issued for the reasons discussed in detail below.
`
`C. Level of Ordinary Skill in the Art
`Based on the disclosure of the ’118 patent, a person having ordinary skill in
`
`the art (PHOSITA) would have a B.S. degree in Electrical Engineering, Computer
`
`Science, or an equivalent field as well as at least 3-5 years of academic or industry
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`experience in communications systems, or comparable industry experience. (Forys
`
`Decl., ¶ 30.)
`
`D. Claim Construction
`Except for the exemplary terms set forth below, construed under the broadest
`
`reasonable interpretation standard, the terms are to be given their plain and ordinary
`
`meaning as understood by a PHOSITA and consistent with the disclosure. Petitioner
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`reserves the right to present different constructions in another forum where a differ-
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`ent claim construction standard applies.
`
`Connect Service Provider [claims 3, 4, 18, 19, 24 and 32]
`
`The term “connect service provider” is not used anywhere in the specification
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`and was not a standard term of art that had an ordinary meaning to a skilled artisan.
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`(Forys Decl., ¶ 56.) The claims define a connect service provider as a service pro-
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`vider that facilitates a billing charge to the cellular telephone (claim 3), sends billing
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`data to the cellular carrier (claim 18), interacts with the calling party using IVR
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`(claim 19), and obtains authorization for the message (claims 24 and 32). Accord-
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`
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`Petition for Inter Partes Review of
`U.S. Pat. No. 8,626,118
`ingly, connect service provider should be construed as “a provider facilitating the
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`connection of collect calls to cellular phones.” (Forys Decl., ¶ 57.)
`
`V. Ground of Rejection: The combination of Rae, Sulmar, and Falcone ren-
`ders claims 1–32 obvious.
`A. Overview of Rae, Sulmar, and Falcone
`Rae, like the ’118 patent, is directed to enabling collect calls to mobile
`
`phones. FIG. 2 of Rae (reproduced at right)
`
`depicts the process of enabling collect calls
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`to a cellular (mobile) phone. In Rae, a call-
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`ing party, for example a prison inmate,
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`places a call and “provide[s] call infor-
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`mation, such as a telephone number to
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`which a call is to be placed, identification
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`of the inmate…, an indication that the call
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`is to be collect, [etc.].” (Rae, 8:20–24.) The
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`call is then validated by, for example, veri-
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`fying “that the called party will receive
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`calls … from the called party, … [and] that a billing arrangement exists.” (Rae,
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`8:32–48.) After determining that the call is associated with a portable interface such
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`as a cellular phone, the system contacts the called party to “solicit acceptance of the
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`charges” using an IVR system. (Rae, 12:9–10.) Once a billing method has been es-
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`

`
`Petition for Inter Partes Review of
`U.S. Pat. No. 8,626,118
`tablished for the call, the system connects the calling party to the called party.
`
`Rae discloses that text messaging may be used “to contact a called party for
`
`collect call acceptance, to provide prepayment for a call, etc.” (Rae, 13:48–50.) Alt-
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`hough Rae does not explicitly disclose how text messaging could be used in the
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`charging/payment process, Sulmar discloses these features.
`
`Sulmar describes a method of premium SMS billing that can be used for “any
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`product or service” including “telecommunications product[s]…[such as] pre-paid
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`time for cellular telephones, and pre-
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`paid calling cards.” (Sulmar, ¶¶
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`[0018]–[0019].) In Sulmar’s billing
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`method, which is embodied in FIG. 2
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`(reproduced at left),a consumer au-
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`thorizes a purchase using an IVR and
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`the system sends a premium text
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`message to the consumer’s mobile
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`phone number to bill for the pur-
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`chased item or service and delivers
`
`the purchased item or service. These
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`steps can be performed in a variety of orders, as shown in FIG. 2.
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`Falcone relates “to a system and method for authorizing collect calls to a par-
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`Petition for Inter Partes Review of
`U.S. Pat. No. 8,626,118
`ty associated with a dialed number.” (Exh. 1013, Falcone, ¶ [0002].) Falcone origi-
`
`nates from U.S. Patent Application No. 10/190,315, which Rae incorporates by ref-
`
`erence. (Rae, 1:14–16.) Rae describes Falcone as providing “[d]etail with respect to
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`call validation functionality” (Rae, 8:41–46) and “further processing with respect to
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`a blocked call.” (Rae, 8:54–58.) Thus, details regarding call validation and blocking
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`that Rae viewed as compatible with his invention (and incorporated by reference)
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`are disclosed in Falcone, and Rae provides a PHOSITA with an express motivation
`
`to combine the two. (Forys Decl., ¶ 52.)
`
`The collect calling technique of Rae and Falcone could be combined with the
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`opt-in techniques of Sulmar. For example, the method illustrated in FIG. 2 of Rae
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`for collect calling could proceed, with validation details from Falcone, to the point
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`of making the call to the called party to solicit acceptance of the charges. At this
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`point, the opt-in protocol of Sulmar would solicit authorization for the collect call
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`for a predetermined charge that would be billed to the called party’s cellular tele-
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`phone bill via a premium SMS charge.
`
`A PHOSITA would have combined the collect calling techniques of Rae and
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`Falcone with the Premium SMS billing of Sulmar. (Forys Decl., ¶ 54.) Rae, Sulmar,
`
`and Falcone are in the same field (i.e., billing for telecommunication services). Rae
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`describes using text messaging to provide payment for a call. Thus, a PHOSITA
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`would have looked to the prior art for how to use text messaging to bill a mobile
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`Petition for Inter Partes Review of
`U.S. Pat. No. 8,626,118
`phone subscriber for a service. (Id.) This would have led that person to Sulmar,
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`which discloses methods for Premium SMS billing for telecommunications services.
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`(Forys Decl., ¶ 54.) Sulmar’s billing system would have been a natural fit for re-
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`verse-billing for calls to cellular phones because Premium SMS was itself a general-
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`purpose reverse-billing system for cellular phones. (Id.)
`
`As described in further detail below, a PHOSITA could have combined the
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`functionality of Rae, Sulmar, and Falcone using known methods, and would have
`
`had no reason not to expect success in doing so. The results of the combination
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`would have been predictable because Rae already teaches using text messages for
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`billing of calls to mobile phones, and Sulmar teaches using Premium SMS messages
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`for telecommunications services. (Forys Decl., ¶ 55.)
`
`B. The combination of Rae, Sulmar, and Falcone renders claim 1 obvious.
`1. The combination of Rae, Sulmar, and Falcone discloses a method for
`“monetizing a telephone communication that has been initiated by a
`calling party over a telecommunications system to a called party us-
`ing a cellular telephone having a telephone number and that is asso-
`ciated with a service provider” [1P].
`
`The system and methods of Rae monetizes telephone communication initiated
`
`by a calling party to a called party using a cellular telephone: “The present invention
`
`relates … more particularly to, processing calls directed to telephones having a port-
`
`able interface, including wireless telephones.” (Rae, 1:32–34.) As highlighted in
`
`FIG. 2 of Rae (reproduced below), a user places “a call at block 201.” (Rae, 8:18–
`
`19.) The user is therefore the calling party and is initiating a telephone communica-
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`Petition for Inter Partes Review of
`U.S. Pat. No. 8,626,118
`tion. Rae, like the ’118 patent, discloses that the telephone communication is a col-
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`lect call. (Rae, 8:20–24.) The user, which may be a prison inmate, “provide[s] call
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`information, such as a telephone number to
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`which a call is to be placed…or an indication
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`that the call is to be collect” (Rae, 8:20–24.)
`
`Using the call information, Rae’s sys-
`
`tem determines at block 206 whether the call
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`is being placed to a portable interface (cellu-
`
`lar phone) (Rae, 9:24–30) and, if so, evalu-
`
`ates at block 209 “whether a billing and/or
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`payment arrangement is in place which is
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`suitable or acceptable for use in completing
`
`the call.” (Rae, 10:37–39.) One way the sys-
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`tem may do this for collect calls is by determining “whether a billing and collections
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`relationship is in place between the [wireless] carrier and the calling service provid-
`
`er operating the call processing system.” (Rae, 10:47–49.) At block 211, Rae “con-
`
`nect[s] the calling and called parties, [and] charge[s] [the] call according to [an] ap-
`
`propriate rate.” (Rae, FIG. 2.) Rae therefore monetizes the telephone communication
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`initiated by the calling party over Rae’s telecommunications system to a called party
`
`using a wireless telephone having a telephone number and that is associated with a
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`Petition for Inter Partes Review of
`U.S. Pat. No. 8,626,118
`
`wireless carrier.
`
`2. The combination of Rae, Sulmar, and Falcone discloses “determin-
`ing whether a charge for message service using message service
`communication protocol can be billed to the cellular telephone asso-
`ciated with the service provider when a message is transmitted to the
`cellular telephone” [1A].
`
`Rae determines whether a charge for a service can be billed to a called party
`
`associated with a service provider. Rae determines “whether a billing and collec-
`
`tions relationship is in place between the carrier and the calling service provider op-
`
`erating the call processing system.” (Rae, 10:47–49.) Indeed, one of the main objec-
`
`tives of Rae is to prevent fraud related to telephone calls, stressing the importance of
`
`knowing whether payment will actually be obtained:
`
`[V]alidation system 113 may verify…that the called party will receive
`calls or is authorized to receive calls from the calling party, that the
`calling party and/or called party have not exceeded a particular velocity
`of calls or a preselected value point (e.g., billing limit), that an identi-
`fied pre-paid account has sufficient monies to fund the call, that, in the
`case of a collect call, a billing arrangement exists between an entity
`responsible for billing calls to the called party and the calling ser-
`vice provider and that the called party presents an acceptable col-
`lection risk, etcetera.
`
` (Rae, 8:30–41 (emphasis added).) Falcone, which Rae describes as providing
`
`“[d]etail with respect to call validation functionality” (Rae, 8:41–42), expressly
`
`states that the call validation process establishes whether “there [is] a billing ar-
`
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`Petition for Inter Partes Review of
`U.S. Pat. No. 8,626,118
`rangement with the local exchange carrier (LEC) or the called party.” (1013, Fal-
`
`cone, ¶ [0006] (emphasis added).)
`
`The ’118 patent describes Premium SMS as an example of a message service
`
`using a message service communication protocol. (’118 patent, 1:63–64; see also
`
`claim 25.) Sulmar uses Premium SMS to bill a cellular telephone associated with a
`
`service provided when a message is transmitted to the cellular telephone. “Premium
`
`SMS (‘PSMS’) refers to a method of charging users a premium fee for sending or
`
`receiving SMS messages.… If the charge is made to a recipient of a PSMS message,
`
`the message may be referred to as being ‘MT-PSMS’, for ‘mobile-terminated pre-
`
`mium SMS’.” (Sulmar, ¶ [0006].) Sulmar specifies that a user is “charged for the
`
`purchase [of a product or service] by allowing the amount of the charge to be put on
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`the user’s mobile telephone bill by being sent an MT-PSMS message.” (Sulmar,
`
`¶ [0013].) Thus, the charge for a collect call could be put on the called party’s mo-
`
`bile telephone bill through a Premium SMS message.
`
`With that knowledge, and the disclosures of Rae, Sulmar, and Falcone, it
`
`would have been obvious to a PHOSITA to determine whether the carrier would
`
`permit the called cell phone to accept the MT-PSMS charge. (Forys Decl., ¶ 72.)
`
`The determination would have been consistent with Rae, whose system queries a da-
`
`tabase to obtain “information with respect to [telephone] account status” about the
`
`called party. (Rae, 10:52.) Such an evaluation constitutes determining whether the
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`Petition for Inter Partes Review of
`U.S. Pat. No. 8,626,118
`message charge can be billed to the cellular telephone as recited in claim 1.
`
`In fact, the ’118 patent itself admits that prior to the earliest possible priority
`
`date of the ’118 patent, carriers determin