Filed on behalf of Global Tel*Link Corporation.
`By:
`Michael D. Specht, Reg. No. 54,463
`
`Joseph E. Mutschelknaus, Reg. No. 63,285
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`Sterne, Kessler, Goldstein & Fox P.L.L.C.
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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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`
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`GLOBAL TEL*LINK CORPORATION
`Petitioner
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`v.
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`SECURUS TECHNOLOGIES, INC.
`Patent Owner
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`
`
`
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,007,420
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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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`
`
`
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`

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`IPR Petition of U.S. Patent No. 9,007,420
`
`I. 
`
`II. 
`
`B. 
`
` TABLE OF CONTENTS
`INTRODUCTION AND RELIEF REQUESTED (37 C.F.R. § 42.22(a)) 1 
`A. 
`The features that led to the ’420 patent allowance received only
`cursory examination. ............................................................................. 2 
`Connecting a video conference in response to a face detection is
`obvious in view of Kenoyer. ................................................................. 9 
`IDENTIFICATION OF CHALLENGE (37 C.F.R. § 42.104(b)) ............ 11 
`A. 
`Citation of Prior Art ............................................................................ 11 
`B. 
`Statutory grounds for the challenge. ................................................... 12 
`III.  THE ’420 PATENT ..................................................................................... 12 
`A. 
`Specification ........................................................................................ 13 
`B. 
`Ordinary Skill in the Art ...................................................................... 16 
`C. 
`Claims for Review ............................................................................... 17 
`1. 
`Claims 1, 11, and 20: Independent claims ................................ 17 
`2. 
`Claims 2 and 12: Prompting the user ........................................ 20 
`3. 
`Claims 3, 4, 13, and 14: Capturing still image and video ......... 20 
`4. 
`Claims 5, 10, 15 and 20: Facial recognition and 3D face
`detection .................................................................................... 20 
`Claims 6 and 16: Storing the captured image ........................... 21 
`Claims 7, 8, 17, and 18: In or out of the controlled-environment
`facility ....................................................................................... 21 
`Claims 9 and 19: Action when face not in image ..................... 21 
`7. 
`Claim Construction ............................................................................. 21 
`1. 
`“Electronic visitation session” means “an electronic
`communication, such as by text, video, or voice, with a resident
`of a controlled environment facility.” ....................................... 22 
`“Feature detection process” means “a process for detecting
`characteristics of an image, such as measurements of features of
`a face at a plurality of points on the image.” ............................ 23 
`IV.  GROUNDS OF REJECTION .................................................................... 24 
`A.  Ground 1: Claims 1-9 and 11-19 are obvious over Torgersrud in view
`of Kenoyer. .......................................................................................... 25 
`
`D. 
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`5. 
`6. 
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`2. 
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`- i -
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`

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`IPR Petition of U.S. Patent No. 9,007,420
`
`1. 
`2. 
`3. 
`4. 
`5. 
`6. 
`7. 
`
`Claim 1 ...................................................................................... 26 
`Claim 11 .................................................................................... 42 
`Claims 2 and 12: Prompting the user ........................................ 44 
`Claims 3, 4, 13, and 14: Capturing still image and video ......... 45 
`Claims 5 and 15: Facial recognition ......................................... 45 
`Claims 6 and 16: Storing the captured image ........................... 46 
`Claims 7, 8, 17, and 18: In or out of the controlled-environment
`facility ....................................................................................... 47 
`Claims 9 and 19: Action when face not in image ..................... 49 
`8. 
`Ground 2: Claims 10, 20, and 21 are obvious over Torgersrud in view
`of Kenoyer in further view of Zhang. ................................................. 50 
`1. 
`Claims 10 and 20....................................................................... 51 
`2. 
`Claim 21 .................................................................................... 53 
`V.  GROUNDS FOR STANDING (37 C.F.R. § 42.104(a)) ............................ 59 
`VI.  MANDATORY NOTICES (37 C.F.R. § 42.8(a)(1)) ................................. 59 
`VII.  CONCLUSION ............................................................................................ 60 
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`B. 
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`- ii -
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`IPR Petition of U.S. Patent No. 9,007,420
`
`EXHIBIT LIST
`
`Description
`
`
`
`GTL
`Exhibit #
`1001
`
`U.S. Patent No. 9,007,420 to Passe, filed January 10, 2014, issued
`April 14, 2015.
`Prosecution History of U.S. Patent No. 9,007,420.
`U.S. Patent Application Publication No. 2012/0262271 by Torgersrud
`et al., filed April 18, 2011, published October 18, 2012.
`U.S. Patent No. 8,218,829 to Kenoyer, filed July 31, 2006, issued July
`10, 2012.
`U.S. Patent No. 7,436,988 to Zhang et al., filed June 3, 2005, issued
`Oct. 14, 2008.
`Declaration of Dr. Hoyamoon Beigi.
`E. Hjelmås et al., “Face detection: A Survey,” Computer Vision and
`Image Understanding, Vol. 83, No. 3, September 2001; pp. 236-74.
`1008 M. Yang et al., “Detecting Faces in Images: A Survey,” IEEE
`Transactions on Pattern Analysis and Machine Intelligence, Vol. 24,
`No. 1, January 2002; pp. 34-58.
`C. Zhang et al., “A Survey of Recent Advances in Face Detection,”
`Microsoft Research Technical Report No. MSR-TR-2010-66,
`Microsoft Corporation, 2010.
`1010 M. Kirby et al., “Application of the Karhunen-Loeve Procedure for
`the Characterization of Human Faces,”, IEEE Transactions on Pattern
`Analysis and Machine Intelligence, Vol. 12, No. 1, January 1990; pp.
`103-08.
`1011 M. Turk et al., “Eigenfaces for Recognition,” Journal of Cognitive
`Neuroscience, Vol. 3, No. 1, 1991; pp. 71-86.
`J. Cartoux et al., “Face Authentication or Recognition by Profile
`Extraction from Range Images,” IEEE Proceedings of the Workshop
`on Interpretation of 3D Scenes, November 1989; pp. 194-99.
`K. Bowyer et al., “A survey of approaches and challenges in 3D and
`multi-modal 3D+2D face recognition,” Computer Vision and Image
`Understanding, Vol. 101, No. 1, 2006; pp. 1-15.
`U.S. Patent No. 9,064,257 to Beigi, filed November 2, 2011, issued
`June 23, 2015.
`
`1002
`1003
`
`1004
`
`1005
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`1006
`1007
`
`1009
`
`1012
`
`1013
`
`1014
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`- iii -
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`

`
`IPR Petition of U.S. Patent No. 9,007,420
`
`Description
`
`GTL
`Exhibit #
`1015
`
`U.S. Patent No. 6,219,640 to Basu et al., filed August 6, 1999, issued
`April 17, 2001.
`P. Viola et al., “Rapid Object Detection Using a Boosted Cascade of
`Simple Features,” Computer Vision and Pattern Recognition, 2001.
`L.Sanchez Lopez, “Local Binary Patterns Applied to Face Detection
`and Face Recognition,” Final Research Project, Universitat
`Politecnica de Catalunya, November 2010.
`Y. H. Huang et al., “Face Detection and Smile Detection,”
`Proceedings of IPPR Conference on Computer Vision, Graphics, and
`Image Processing, Shitou, Taiwan, A5-6, 2009.
`1019 M. Felsberg, “Robot Vision Systems, PhD course spring term 2015,”
`Computer Vision Laboratory PowerPoint Presentation, 2015.
`
`1016
`
`1017
`
`1018
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`- iv -
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`

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`IPR Petition of U.S. Patent No. 9,007,420
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`I.
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`INTRODUCTION AND RELIEF REQUESTED (37 C.F.R. § 42.22(a))
`Global Tel*Link (“GTL”) petitions for inter partes review of all claims of
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`U.S. Patent No. 9,007,420 (“the ’420 patent”), which is assigned to Securus
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`Technologies Inc. (“Securus”). The ’420 patent relates to video conferencing with
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`inmates of a correctional facility, such as a prison. The ’420 patent was filed just
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`30 months ago in January 2014. With the ’420 patent, Securus claims to have
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`invented using face recognition during a video conference with an inmate. This
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`Petition shows that use of facial recognition during an inmate video conference
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`was known years before the ’420 patent’s 2014 filing. For this reason and as
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`detailed herein, the ’420 patent is obvious, and its claims should be cancelled.
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`A review the ’420 patent’s prosecution history shows that the feature that led
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`to its allowance received only cursory examination. The examiner added the
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`feature late in prosecution, and his search missed key prior art references. One such
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`reference is presented in this petition: U.S. Patent Application No. 2012/0262271
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`to Torgersrud. Like the ’420 patent, Torgersrud teaches using facial recognition
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`before and during an inmate video visitation session. Numerous other references
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`corroborate this view, which is also supported by the expert declaration of Dr.
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`Beigi.
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`Torgersrud’s disclosure is so similar to what is disclosed and claimed in the
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`’420 patent that Torgersrud would anticipate the ’420 patent claims were it not for
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`- 1 -
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`

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`IPR Petition of U.S. Patent No. 9,007,420
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`the ’420 patent’s claim recitation that the connection occur “in response to” the
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`face detection. When Torgersrud detects a face, it presents to the user a menu with
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`an option to connect the visitation session. When the user selects an option,
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`Torgersrud connects the session. Thus, Torgersrud discloses some user interaction
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`between detection of a face and connection of the visitation session. Even if the
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`’420 patent’s “in response to” language did not allow any user interaction between
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`the detection and connection, such automatic operation would be obvious. Each of
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`these points is addressed below.
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`A. The features that led to the ’420 patent allowance received only
`cursory examination.
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`The ’420 patent’s claim 1 recites capturing and analyzing two images. On
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`the first image, a face is detected. In response to the detection, a communication
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`session, which the ’420 patent calls an electronic visitation session, is connected.
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`This electronic visitation session may, for example, be a videoconference. Then,
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`during the electronic visitation session, the second image is captured. The second
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`image is evaluated to recognize that the detected face from the first image is in the
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`second image.
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`Through most of the ’420 patent’s prosecution, claim 1 only recited the first
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`image’s capture and analysis. (Ex. 1002, 33, 54, 100.) The examiner twice rejected
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`this subject matter as obvious. (Id., 45, 68.) After two rejections, Securus utilized
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`the after-final pilot program and tried to add the words “three-dimensional” to the
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`- 2 -
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`IPR Petition of U.S. Patent No. 9,007,420
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`claims, broadly specifying the techniques that could be used to detect a face in the
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`first image. (Id., 33.) During an after-final interview, the examiner rebuffed the
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`proposed amendment, stating that the “amendment does not place the application
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`in condition for allowance.” (Id., 21.)
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`While rebuffing Securus’s proposal, the examiner provided Securus a path
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`for patenting. At the interview, the “examiner discussed and proposed features that
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`would place the aplication [sic] in condition for allowance.” (Id.) The prosecuting
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`attorney “agree[d] and [would] discuss the subject matter with his client and
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`submit the proposed claim amendment upon approval to be use [sic] with the
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`examiner Amendment [sic].” (Id.)
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`The next day Securus’s attorney apparently gave authorization for the
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`proposed examiner’s amendment. (Id., 12.) The examiner’s amendment nearly
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`doubled the length of claim 1, adding a requirement to capture and analyze a
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`second image. (Id., 12.) The amendment also made similar changes to what is now
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`claim 11 and added what is now claim 21. (Id., 15, 18.) The examiner recited his
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`amendment in his Notice of Allowance:
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`- 3 -
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`IPR Pettition of UU.S. Patent
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`No. 9,0077,420
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`(IId., 12.) AApparently,, this “second” imagge limitatioon is whatt the examminer
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`thoughtt was alloowable, evven thouggh it essenntially miirrors the
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`“first” immage
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`limitatioon that thee examinerr previously found oobvious. TThe examinner reporteed to
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`have uppdated his
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`search, butt did not iddentify thee referencees presente
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`d here, norr did
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`Securuss. In fact,, Securus
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`did not file any ID
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`prosecutioon of the
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`’420
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`patent.1
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`Torgersruud disclosees continuuous face ddetection tto determinne whetheer an
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`1 In fact, deespite beingg on noticee for over aa year, Seccurus has nnot yet citedd
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`Torgerssrud in the ’420 patennt’s pendinng continuaation. Secuurus was nnotified of
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`- 4 -
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`IPR Pettition of UU.S. Patent
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`No. 9,0077,420
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`electronnic visitatiion sessioon is authhorized. AAs mentiooned abovve, Torgerrsrud
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`describees nearly eevery featuure of the
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`’420 patennt’s claim
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`1. Like thhe ’420 paatent,
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`Torgerssrud descriibes electronic visitaation, suchh as througgh voice,
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`And likke the ’4200 patent, TTorgersrud
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`describes
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`how an innmate can
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`use a kiossk to
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`participate in a viddeo visitattion. (Comppare Ex. 11001, 6:33--35 with EEx. 1003, ¶
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`text, or viideo.
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`54.)
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`Illustrattions of the kiosks frfrom the ’4420 patent’’s FIG. 2
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`and Torgeersrud’s FIIG. 3
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`are reprroduced sidde-by-side below.
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`’4200 Patent’s KKiosk
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`Torgersruud’s Kiosk
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`Torgerssrud at leasst as of Maay 11, 20155, because,, on that daay, Securuss was serveed a
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`post-graant review petition, PPGR2015-000014, citi
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`ng the refeerence.
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`IPR Pettition of UU.S. Patent
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`No. 9,0077,420
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`To log intoo the kioskk, Torgerssrud detectts and reccognizes thhe user’s fface.
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`Torgerssrud’s “FIGG. 5,” reprroduced beelow, “illusstrates an
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`example i
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`dle screenn 501
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`of the kkiosk interrface (i.e.,
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`[a] touchsscreen 3011).” (Id., ¶
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`59 (a refeerence nummber
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`removed).) As illuustrated in
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`FIG. 5, “aa resident ccan select llogin icon
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`503 to loggin to
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`the systtem.” (Id.,
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`activateed.” (Id., ¶
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`¶ 60.) “Duuring the loog in proccess, the caamera of thhe kiosk 1002 is
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`64.) “[T]hhe kiosk 1002 will use facial deteection softtware to ennsure
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`that a faace is pressent in the
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`camera fieeld of vieww.” (Id.) “
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`If no face
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`examplee, becausee a resident is bloccking the
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`camera wwith their
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`obstructtion), the ssystem willl not permiit a log in tto be comppleted.” (IId.)
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`TTorgersrud’ss Login Screeen
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`Screen Durring Login
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`cognition
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`IPR Petition of U.S. Patent No. 9,007,420
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`In addition to the face detection, facial recognition may also be performed
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`on login, as illustrated in FIG. 9. (Id., ¶ 66.) “FIG. 9 illustrates a facial recognition
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`verification screen 901 of the kiosk interface.” (Id.) “The display requests that the
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`resident line up their eyes with the eye level marks 903 displayed next to the video
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`preview window 902.” (Id.) “When the resident selects the verify icon 904, facial
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`verification
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`is performed.” (Id.) “[F]acial verification processing
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`includes
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`comparing an image captured by the camera 303 of the kiosk 102 with a pre-stored
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`image of the resident. The facial recognition system uses facial ‘landmarks’
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`generated by mathematical formulas to present a score which indicates a likelihood
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`that the captured image matches the pre-stored image.” (Id., ¶ 67.)
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`“Once a resident has logged into the system, [she is] presented with the main
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`screen 1011 of the kiosk interface, illustrated in FIG. 10.” (Id., ¶ 68.)
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`“Communications features are central to the kiosk functionality. Residents can
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`communicate via voice, video, or text messaging.” (Id., ¶ 69.) To communicate via
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`voice, video, or text, main screen 1011 illustrates a phone icon 1001, a messaging
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`icon 1003, and a video icon 1004 respectively. The user selects the respective icon
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`to initiate the visitation session. (Id., ¶¶ 69-71, 78-82.)
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`- 7 -
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`IPR Pettition of UU.S. Patent
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`No. 9,0077,420
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`NNot only dooes Torgerrsrud’s faccial detectioon and reccognition ooccur on loogin,
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`it also
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`occurs duuring the vvideo visiitation. (Exx. 1003, ¶¶ 86.) “Faacial detecction
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`e is utilizzed to proovide addiitional seccurity and
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`to monittor use off the
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`videocoonferencingg feature.”” (Id., ¶ 855.) “The faacial detecttion softwware uses vvideo
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`analysiss of individdual framees of videoo to detect
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`that a humman face iss present innside
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`the videeo frame. IIf a face is not deteccted, the ssystem bluurs or otherrwise obsccures
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`the imagge.” (Id.)
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`The facial
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`software mmay also pperiodicallyy pass imaages to a ffacial
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`verificaation systemm. The faccial verificaation systeem comparres a detec
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`ted face immage
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`86.) If thee face doees not matcch, a
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`be loggedd off. (Id.)) In this wway,
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`IPR Petition of U.S. Patent No. 9,007,420
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`Torgersrud describes performing face detection and recognition on an inmate both
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`at login and throughout a video visitation session.
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`Not only does Torgersrud describe verifying a user’s face during a video
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`visitation, Torgersrud also describes performing face recognition during other
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`types of electronic visitation sessions, such as via voice or text: “The facial
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`verification feature can be active even when the resident is not intentionally using
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`the camera, such as when the resident is using entertainment or text messaging
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`features. Images taken periodically and compared against pre-stored images ensure
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`that only authorized residents are accessing system features.” (Ex. 1003, ¶ 87
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`(emphasis added).)
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`Finally, Torgersrud discloses that facial verification may be used not only on
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`inmates, but also outsiders: “Facial verification may also be used on video being
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`captured by an outsider user during a video conference or video message. . . . This
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`ensures that only authorized individuals are communicating with a resident during
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`a conference.” (Id.)
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`Thus, Torgersrud detects and recognizes faces both before and during an
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`electronic visitation session.
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`B. Connecting a video conference in response to a face detection is
`obvious in view of Kenoyer.
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`As mentioned above, Torgersrud teaches every feature of the ’420 patent’s
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`claim 1, except, at least arguably, that the connection is established “in response
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`- 9 -
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`IPR Petition of U.S. Patent No. 9,007,420
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`to” the inmate’s face detection. Securus may argue that, because Torgersrud
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`connects a visitation session only on user selection, Torgersrud does not connect a
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`visitation session “in response to” face detection as claimed.
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`Should Securus make that argument, that distinction would not make the
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`’420 patent claims patentable. The Federal Circuit has stated, “it is well settled that
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`it is not ‘invention’ to broadly provide a[n] … automatic means to replace manual
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`activity which has accomplished the same result.” See In re Venner, 262 F.2d 91,
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`95 (CCPA 1958); MPEP 2144.04.III. Here, the claim does not recite any specific
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`way to make the connection occur automatically “in response to” detection of a
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`face. Thus, at the generality that the ’420 patent claims and discloses it, the “in
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`response to” feature is obvious as a matter of law in light of Torgersrud. Moreover,
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`the feature is also taught in Kenoyer.
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`Kenoyer explains that, in prior art systems, “a videoconference user must
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`manually execute complex and time consuming procedures to initiate and maintain
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`a videoconference.” (Ex. 1004, 2:24-26.) Thus, Kenoyer identified “a need for a
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`system and method of videoconferencing the provides ease-of-use, enhanced
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`security, and personalization features.” (Id., 2:27-30.) Satisfying that need,
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`Kenoyer “detects facial images of a user, generates biometrics of the detected
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`facial images, and compares the generated biometrics with biometrics information
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`of authorized users.” (Ex. 1004, Abstract.) “If a match is found, then the user is
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`IPR Petition of U.S. Patent No. 9,007,420
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`automatically
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`logged
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`into
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`the videoconference network
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`through
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`the
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`videoconference system. … Once the user is logged into the videoconference
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`network, a videoconference connection may be automatically established.” (Ex.
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`1004, 2:51-67.) Thus, Kenoyer discloses connecting a video conference in
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`response to face detection as claimed. Kenoyer extolls the benefits of usability and
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`security that automatic connection in response to face detection provides. (Id.,
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`Abstract.) Because a skilled artisan would motivated by these teachings, Kenoyer
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`renders obvious connecting a video conference in response to a face detection.
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`For these reasons, as further set out below, the Board should institute inter
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`partes review on the ’420 patent. First, the Petition identifies the cited art and
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`grounds for unpatentability. Second, the Petition provides a tutorial on the ’420
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`patent and claims, and provides any claim constructions. Third, the Petition details
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`the specific basis for each proposed ground. Fourth, the Petition provides GTL’s
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`grounds for standing. Fifth and finally, the Petition provides mandatory notices
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`required by the rules of practice.
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`II.
`IDENTIFICATION OF CHALLENGE (37 C.F.R. § 42.104(b))
`A. Citation of Prior Art
`GTL cites the following references. All are prior art because each was
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`published or filed before the ’420 patent’s effective filing on January 10, 2014:
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` U.S. Patent Publication No. 2012/0262271 to Torgersrud et al. was
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`IPR Petition of U.S. Patent No. 9,007,420
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`published October 18, 2012, making it prior art under at least 35 U.S.C. §
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`102(a)(1), and filed April 18, 2011, making it prior art under 35 U.S.C. §
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`102(a)(2).
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` U.S. Patent No. 8,218,829 to Kenoyer issued on July 10, 2012, making it
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`prior art under 35 U.S.C. § 102(a)(1), and, by virtue of an earlier
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`continuation, was effectively filed at least by August 20, 2002, making it
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`prior art under 35 U.S.C. § 102(a)(2).
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` U.S. Patent No. 7,436,988 to Zhang issued on October 14, 2008, making it
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`prior art under 35 U.S.C. § 102(a)(1), and, by virtue of an earlier
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`continuation, was effectively filed at least by June 3, 2005, making it prior
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`art under 35 U.S.C. § 102(a)(2).
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`B.
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`Statutory grounds for the challenge.
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`GTL requests review of all the ’420 patent’s claims for being unpatentable
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`under 35 U.S.C. § 103. In particular, GTL requests review on two grounds:
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`Ground 1 — Claims 1-9 and 11-19 are unpatentable under § 103 over
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`Torgersrud in view of Kenoyer; and
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`Ground 2 — Claims 10, 20, and 21 are unpatentable under § 103 over
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`Torgersrud in view of Kenoyer in further view of Zhang.
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`III. THE ’420 PATENT
`This section provides a tutorial on the ’420 patent, the claims for review,
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`IPR Petition of U.S. Patent No. 9,007,420
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`level of skill in the art, and any terms needing construction.
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`Specification
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`A.
`In its background, the ’420 patent states that “[c]orrectional facilities provide
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`various options for visitation with inmates.” (Ex. 1001, 1:14-15.) “Options include
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`in-person visitation, room to room visitation through a divider, telephone
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`visitation, and video visitation.” (Id., 1:15-17.) Correctional facilities restrict which
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`visitors an inmate is allowed to see. When visiting in-person, the visitor’s “identity
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`may be determined by providing identification documents to staff of the
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`controlled-environment
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`facility
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`for
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`verification.”
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`(Id.,
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`1:20-23.) But,
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`“[i]dentification of visitors is more difficult with telephone or video visitation.”
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`(Id., 1:27-28.)
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`To provide such identification, the ’420 patent describes a “system[] for
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`verifying presence of authorized persons during electronic visitation.” (Id., 1:40-
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`41.) An “electronic visitation session could include a telephone call, a video
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`visitation, an instant message visitation, etc.” (Id., 9:43-44.) The ’420 patent’s FIG.
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`6, reproduced below, illustrates “an apparatus for verifying presence of authorized
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`persons during an electronic visitation.” (Id., 10:5-6.) And the ’420 patent’s FIG. 5,
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`also reproduced below, illustrates a method for verifying presence of authorized
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`persons during an electronic visitation. FIG. 5’s “method 500 is carried out, at least
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`in part, by a smart terminal 103” illustrated in FIG. 6. The smart terminal 103
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`includess a webcamm 205. (Id., 10:8-12.))
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`IPR Pettition of UU.S. Patent
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`No. 9,0077,420
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`Inn an exammple operatiion, “the vvisitation ssystem [maay] receivee[] a requeest to
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`initiate
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`electronic
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`visitationn session”
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`at block 5501. (Id., 99:20-21.) TThen, at bblock
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`502, “aa video visitation deevice, suchh as smarrt terminall 103,… mmay displaay a
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`textual
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`prompt to
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`the user.”” (Id., 9:266-28.) The
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`prompt mmay “instrucct[] the us
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`er to
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`positionn his/her fface in froont of the
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`camera.”
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`(Id., 9:255-26.) Alteernatively,
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`“an
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`image ccapture guiide, such aas an oval ooverlaid onn a video iimage, maay be displaayed
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`IPR Petition of U.S. Patent No. 9,007,420
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`to instruct the user regarding a position for presenting his/her face. (Id., 9:28-31.)
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`In this way, “[w]hen an inmate attempts to participate in an electronic visitation
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`session, the smart terminal activates the webcam 205 and requires that the inmate
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`show his/her face 601.” (Id., 10:9-13.)
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`After prompting the user to present her face, “the image capture device,”
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`such as webcam 205 (id., 3:57-58), “may then capture an image or a series of
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`images or video frames as shown at block 503.” (Id., 9:31-33.) Once the image is
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`captured, a processor “perform[s] a 3D facial recognition process on the image(s)
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`to affirmatively identify the user as an authorized user as shown at block 504.” (Id.,
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`9:34-36.) This 3-D recognition process may involve “perform[ing] a three-
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`dimensional (3D) feature detection process on the captured image to verify that an
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`actual face is present in the image,” in other words to detect a face. (Id., 8:67-9:2.)
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`The “3D feature detection process may identify three-dimensional characteristics
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`of an image, including measurements of features of a face at a plurality of points
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`on the image.” (Id., 9:2-5.) “Not only is facial detection required,” but to recognize
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`a face, “the face must be matched against a known likeness of the inmate. A match
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`to a known face [] of the inmate… [provides] confirmation of the inmate’s identity
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`so as to preclude unauthorized use.” (Id., 10:34-40.)
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`“If the face matches an authorized user as shown at block 505 then the
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`visitation system [] may connect the parties on an electronic visitation session as
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`IPR Petition of U.S. Patent No. 9,007,420
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`shown at block 506.” (Id., 9:39-43.) Otherwise, “the captured images may be
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`stored … in a data storage device … for further review.” (Id., 9:47-49.)
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`“[F]acial detection may be required before and after logging into select
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`functions.” (Id., 10:24-26.) In particular, after connecting the video, “a second
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`image of the user[] may be captured at a second time as shown at block 507. The
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`second time may be at a predetermined time after connection of the visitation
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`session.” (Id., 9:50-53.) “The second image may be processed according to the 3D
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`facial recognition process, and it may be further determined whether the face in the
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`second image matches an authorized user as shown at block 508.” (Id., 9:55-58.)
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`“If the face does not match an authorized user, then a responsive action may be
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`taken.” (Id., 9:58-60.) The responsive action may be, for example, disconnecting
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`the visitation session, sounding alert, or notifying an administrator of the visitation
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`system. (Id., 9:64-66.)
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`In this way, the ’420 patent discloses using facial recognition both before
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`and during an electronic visitation session.
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`B. Ordinary Skill in the Art
`One of ordinary skill in the art would have a B.S. degree in Computer
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`Science or Computer Engineering, or an equivalent field, as well as at least 2-3
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`years of academic or industry experience in software development, or comparable
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`industry experience. More practical experience can compensate for less formal
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`IPR Petition of U.S. Patent No. 9,007,420
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`training. (Ex. 1006, ¶ 23.)
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`C. Claims for Review
`GTL requests review of all 21 claims of the ’420 patent. Claims 1, 11, and
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`21 are independent, and claims 2-10 and 12-20 are dependent. Each claim is
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`discussed below.
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`Claims 1, 11, and 20: Independent claims
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`1.
`Claim 1 is a method claim reciting six steps. The first step is to receive a
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`request to initiate an electronic visitation session. Steps two and three recite
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`capturing an image in response to the request and performing a feature detection
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`process on the image. Step four recites connecting the electronic visitation session
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`in response to a determination that the actual face is present in the image. Finally,
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`steps five and six recite capturing a second image during the electronic visitation
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`session and performing the detection process on the second image to verify that the
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`actual face is present in the image. Claim 1 is reproduced below with identifiers for
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`reference:
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`[1.P] A method comprising:
`[1.A] receiving a request to initiate an electronic
`visitation session;
`[1.B] capturing an image, with an image capture device,
`of a user in response to the request;
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`IPR Petition of U.S. Patent No. 9,007,420
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`[1.C] performing a feature detection process, with a
`processor, on the image to verify that an actual face was
`present in the image;
`[1.D] connecting the electronic visitation session in
`response to a determination that the actual face was
`present in the image;
`[1.E] capturing a second image of the user with the image
`capture device during the electronic visitation session;
`[1.F] performing the detection process on the second
`image, with the processor, to verify that the actual face is
`present in the second image.
`Notably, the feature detection process is claimed somewhat differently in
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`steps [1.C] and [1.F]. In step [1.C], the feature detection process verifies that an
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`actual face was present in the image, in other words detects a face. As Dr. Beigi
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`explains, face detection is a necessary prerequisite to face recognition, but they are
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`distinct concepts. (Ex. 1006, ¶ 25.) Step [1.F], in contrast, uses the feature
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`detection process to determine that the actual face detected earlier is present in an
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`image. To determine that the actual face detected earlier is present in an image, a
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`face in the image must be compared with data describing the user’s face, in other
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`words the face in the image is recognized.
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`Claim 11 is similar to claim 1, but drafted as an apparatus claim. In
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`particular, claim 11 recites an apparatus comprising an image capture device and a
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`processing device coupled to the image capture device. As recited in claim 1’s step
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`IPR Petition of U.S. Patent No. 9,007,420
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`1.B, the image capture device is configured to capture an image of the user in
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`response to a request. A processing device is configured to perform claim 1’s steps
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`1.C-1.F.
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`Claim 21 is similar to claim 1, except claim 21 recites 3D facial recognition
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`while claim 1 recites feature detection. Claim 21 also recites “performing a
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`responsive action in response to a determination that a face in the second image
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`does not match an authorized user.” For reference, claims 1 and 21 are reproduced
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`side-by-side below w