Filed on behalf of Securus Technologies, Inc.
`By:
`Justin B. Kimble (jkimble@bcpc-law.com)
`
`Jeffrey R. Bragalone (jbragalone@bcpc-law.com)
`
`Daniel F. Olejko (dolejko@bcpc-law.com)
`
`Bragalone Conroy P.C.
`
`2200 Ross Ave.
`
`Suite 4500 – West
`
`Dallas, TX 75201
`
`Tel: 214.785.6670
`
`Fax: 214.786.6680
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GLOBAL TEL*LINK CORPORATION,
`Petitioner,
`
`v.
`
`SECURUS TECHNOLOGIES, INC.,
`Patent Owner.
`
`
`
`Case IPR2016-01220
`U.S. Patent No. 9,007,420 B1
`
`
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`

`
`Case IPR2016-01220
`Patent 9,007,420
`Table of Contents
`
`I. 
`
`INTRODUCTION ............................................................................................... 2 
`A.  Grounds in the Petition .................................................................................. 2 
`B.  The ’420 Patent – The Challenged Patent ..................................................... 3 
`II.  CLAIM CONSTRUCTION ............................................................................. 7 
`A.  Petitioner’s Construction of “Electronic Visitation Session” is
`Unreasonably Broad. .............................................................................................. 9 
`Petitioner’s Construction of “Feature Detection Process” Is Overbroad and
`B. 
`Ignores the Teachings of the Specification. ......................................................... 12 
`Performing a “three-dimensional (3D) facial recognition process . . . to
`C. 
`identify the user” means “performing a process utilizing algorithms for detecting
`3D facial features in a frame, determining whether the facial features in the
`frame match an authorized user, and identifying changes or differences in
`measurements of those features from measurements of features in another frame
`to verify that an actual face (e.g., not a photograph) is present in the image.” .... 15 
`III.  ARGUMENT .................................................................................................. 17 
`A.  The Combination of Torgersrud and Kenoyer Fails to Disclose the
`Limitations Requiring Determining or Verifying the Presence of an “Actual
`Face” in Independent Claims 1, 11, and 21. ......................................................... 17 
`B.  Torgersrud Fails to Disclose Capturing an Image, with an Image Capture
`Device, of a User “in Response to” the “Request to Initiate an Electronic
`Visitation Session” in Independent Claims 1, 11, and 21. ................................... 23 
`C. 
`Petitioner Fails to Consider Claim 21 as a Whole. ..................................... 26 
`IV.  CONCLUSION .............................................................................................. 28 
`
`
`1
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`

`
`Case IPR2016-01220
`Patent 9,007,420
`I.
`INTRODUCTION
`
`Patent Owner Securus Technologies, Inc. (“Securus” or “Patent Owner”)
`
`hereby files this preliminary response (“Preliminary Response”) to the Petition
`
`(Paper 2) (the “Petition”) for Inter Partes Review of U.S. Patent No. 9,007,420 (Ex.
`
`1001) (the “’420 Patent”) in IPR2016-01220 filed by Global Tel*Link Corporation
`
`(“GTL” or “Petitioner”).
`
`The Petitioner’s challenge to the ’420 Patent claims should be rejected
`
`because (1) the prior art lacks material claim limitations; (2) Petitioner has failed to
`
`consider claims as a whole; and (3) Petitioner’s grounds of unpatentability rely on
`
`erroneous claim constructions.
`
`This Response is timely under 35 U.S.C. § 313 and 37 C.F.R. § 42.107(b), as
`
`it is filed within three months of the June 22, 2016 mailing date of the Notice of
`
`Filing Date Accorded to Petition and Time for Filing Patent Owner Preliminary
`
`Response. (Paper 3). For purposes of this Preliminary Response, Patent Owner has
`
`limited its identification of deficiencies in the Petition and does not intend to waive
`
`any arguments not addressed in this Preliminary Response.
`
`A. Grounds in the Petition
`The Petition includes two grounds of alleged invalidity; both of the grounds
`
`rely on
`
`the combination of Torgersrud
`
`(U.S. Patent App. Pub. No.
`
`2012/0262271 A1) and Kenoyer (U.S. Patent No. 8,218,829) for allegedly rendering
`
`2
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`

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`Case IPR2016-01220
`Patent 9,007,420
`obvious independent claims 1 and 11 of the ’420 Patent under 35 U.S.C. § 103.
`
`Ground 2 additionally relies upon Zhang (U.S. Patent No. 7,436,988).
`
`Ground References Combined
`
`1
`2
`
`
`Pet. at 12.
`
`Torgersrud and Kenoyer
`Torgersrud, Kenoyer, and
`Zhang
`
`Independent
`Claims
`1, 11
`21
`
`Dependent
`Claims
`2-9, 12-19
`10, 20
`
`As discussed in more detail below, none of the references above, either
`
`separately or in combination, disclose all limitations in the independent claims,
`
`including, for example, the detection of the presence of an “actual face.”
`
`Additionally, none of the references cited disclose the capture of a user’s image in
`
`response to a request to initiate an electronic visitation session. Thus, the Petition
`
`does not demonstrate a reasonable likelihood that any of the proposed grounds of
`
`unpatentability will succeed for any claim of the ’420 patent.
`
`B. The ’420 Patent – The Challenged Patent
`The ’420 Patent titled “Verifying Presence of Authorized Persons During an
`
`Electronic Visitation” was filed on January 10, 2014 and is directed “to methods and
`
`systems for verifying presence of authorized persons during an electronic visitation.”
`
`’420 Patent at 1:5-10. One important goal of the ’420 Patent is to prevent
`
`circumvention of the authentication process by users who may use a photograph to
`
`fool prior art facial detection and recognition techniques. Id. at 1:27-35; 8:66-9:12.
`
`3
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`Case IPR2016-01220
`Patent 9,007,420
`To this end, the ’420 Patent provides a system and method that uses a “feature
`
`detection process on the captured image,” such as “a 3D feature detection process,”
`
`to verify the user’s presence by, among other things, determining if the user’s “actual
`
`face” (i.e., a person’s corporeal face) is shown in the captured image, as opposed to
`
`a photograph or other facsimile. Id.
`
`A controlled-environment facility such as a prison may provide various
`
`options for inmates to communicate with visitors and other parties outside the prison.
`
`One of these options includes video visitation. These outside parties (e.g., family
`
`members) are sometimes located long distances from the inmate, making travel to
`
`the prison onerous or impractical. In some cases, outside parties may visit with an
`
`inmate remotely using a personal computer with an image capture device such as a
`
`web-cam. This is sometimes referred to as “at home visitation,” and occurs via
`
`“electronic visitation sessions.” However, inmates are typically restricted to
`
`receiving visitation only from approved persons. Id. at 1:14-34.
`
`When an individual visits an inmate in person, the individual’s identity may
`
`easily be determined by providing identification documents to staff of the controlled-
`
`environment facility for verification. Id. The identification documents may include
`
`a photo-ID such as a driver’s license or the like and the staff members may cross-
`
`reference the individual’s name with a list of individuals on the inmate’s approved
`
`visitor list.
`
`4
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`Case IPR2016-01220
`Patent 9,007,420
`But identification of visitors is more difficult with telephone or video
`
`visitation. Id. at 1:27-35. This is especially true in the case of at-home visitation
`
`because there are no staff to physically verify the physical presence and identity of
`
`the authorized visitor. The individual may provide a personal identification number,
`
`phrase, or pass code, but it is often difficult to ascertain whether the person providing
`
`the identifying information is in fact the authorized visitor without visual
`
`confirmation of the person’s identity. Id. Unauthorized parties may attempt to defeat
`
`or circumvent verification of a user’s identity. Id. For example, an authorized visitor
`
`may pass identification information to unauthorized individuals so that they may
`
`pose as an authorized visitor for the electronic visitation. Id.
`
`Moreover, the inventor recognized that it is difficult to confirm that an actual
`
`person is taking part in a video visitation and that typical facial recognition
`
`verification techniques may be susceptible to circumvention. See id. at 1:27-35;
`
`8:66-9:12. For example, inmates or unauthorized outside parties may present a
`
`photograph to the camera of an authorized individual when prompted to verify their
`
`identity. The ’420 Patent addresses and solves these problems, in part, by providing
`
`embodiments for verifying the genuine presence of an actual person. For this
`
`purpose, exemplary embodiments perform specialized methods of face recognition,
`
`including, for example, three-dimensional facial recognition. See id. Each
`
`embodiment also includes certain triggers and event timing in order perform the user
`
`5
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`Case IPR2016-01220
`Patent 9,007,420
`verification. Id. at 11:4-12:53. For example, each claimed embodiment includes
`
`receiving a request to initiate an electronic visitation session and capturing a user
`
`image in response to the request. Id. Furthermore, the claimed embodiments involve
`
`verification of the actual face at particular times during the process, including
`
`continued confirmation of the actual face based on a second image captured during
`
`the electronic visitation session. Id.
`
`In some embodiments, the ’420 Patent teaches that “actual,” i.e., corporeal,
`
`face detection may include examining differences from a plurality of captured
`
`frames. See id. at 8:66-9:12. Additionally, a facial feature detection process may be
`
`performed to verify that an actual corporeal human face is present. Id. This feature
`
`detection process may include identifying three-dimensional characteristics of an
`
`image to include measurements of features of a face at a plurality of points on the
`
`image. Id.
`
`Furthermore, the claimed system of the ’420 Patent prevents connection of
`
`the electronic visitation session until after a determination that the actual face is
`
`present in the captured image. Id. at 11:4-12:53. Various embodiments may perform
`
`other actions in response to a determination that a corporeal human face is not
`
`present in the captured image. Id. Further embodiments may include performing a
`
`facial recognition process on the captured image, following performance of the
`
`feature detection process and/or in response to a determination that a corporeal
`
`6
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`Patent 9,007,420
`human face is present in the captured image, to identify the user and/or to confirm
`
`an identity of the user. Id. The processing device may be further configured to
`
`connect the electronic visitation session in response to a verification that the actual
`
`corporeal human face was present in the captured image. Id.
`
`The Petition attempts to characterize the ’420 Patent as merely describing
`
`“using face recognition during a video conference.” Pet. at 9 (“Securus claims to
`
`have invented using face recognition during a video conference with an inmate.”).
`
`But, as discussed above and further analyzed below, the Petition mischaracterizes
`
`the claimed embodiments of the ’420 Patent. While “face recognition” is an element
`
`of some of the claimed embodiments, none of the prior art references disclose, teach,
`
`or suggest, separately or in combination, all of the limitations of any of the claims.
`
`Thus no prima facie case of obviousness is made because the Petitioner has not
`
`shown that one having ordinary skill in the art would have combined the cited art
`
`since the proposed combinations of prior art do not result in disclosure of the claimed
`
`invention.
`
`II. CLAIM CONSTRUCTION
`Petitioner proposes construction of two terms: “electronic visitation session”
`
`and “feature detection process.” Pet. at 21-24. The term “electronic visitation
`
`session” is used in each of the independent claims of the ’420 Patent. The term
`
`“feature detection process” is used in independent claims 1 & 11 and also used in
`
`7
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`Case IPR2016-01220
`Patent 9,007,420
`dependent claims 5, 10, and 20 of the ’420 Patent. Petitioner argues that these terms
`
`need to be construed, but does not offer any explanation as to why these terms cannot
`
`be given their “plain and ordinary meaning.” See In re Translogic Tech., Inc., 504
`
`F.3d 1249, 1257 (Fed. Cir. 2007) (holding that claim terms are presumed to be given
`
`their ordinary and customary meaning as would be understood by one of ordinary
`
`skill in the art in the context of the entire disclosure). Indeed, Petitioner’s proposed
`
`constructions are not offered because these terms require construction, but instead,
`
`so that Petitioner can attempt to match the prior art to the challenged claims. This is
`
`an improper reason for construing these terms. And further, Petitioner’s improper
`
`constructions undermine its arguments that the prior art renders the challenged
`
`claims obvious.
`
`Even under the broadest reasonable interpretation standard applicable here,
`
`claim constructions must be consistent with the patent specification. Servicenow,
`
`Inc. v. Hewlett-Packard Co., No. IPR2015-00702, Paper No. 12, Decision Denying
`
`Institution of Inter Partes Review at 6 (PTAB Aug. 21, 2015) (citing Microsoft Corp.
`
`v. Proxyconn, Inc., 789 F.3d 1291, 1298 (Fed. Cir. 2015)). As the Board has
`
`acknowledged, a claim’s construction “should always be read in light of the
`
`specification and teaching in the underlying patent,” and “cannot be divorced from
`
`the specification.” Id. Indeed, “the specification ‘is the single best guide to the
`
`meaning of a disputed term.’” In re Translogic Tech., at 1257 (Fed. Cir. 2007)
`
`8
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`Case IPR2016-01220
`Patent 9,007,420
`(quoting Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005)). Because the
`
`Petitioner’s constructions are unreasonable in light of the specification they cannot
`
`be correct. Servicenow, Inc., No. IPR2015-00702, Paper No. 12 at 6 (quoting
`
`Microsoft Corp., 789 F.3d at 1298) (“The Board . . . may not ‘construe claims during
`
`IPR so broadly that its constructions are unreasonable under general claim
`
`construction principles.’”).
`
`A. Petitioner’s Construction of “Electronic Visitation Session” is
`Unreasonably Broad.
`
`Petitioner suggests that the term “electronic visitation session” should be
`
`interpreted to mean “an electronic communication, such as by text, video, or voice,
`
`with a resident of a controlled environment facility.” Pet. at 23. But this construction
`
`is unreasonably broad. It essentially covers any “electronic communication” with an
`
`inmate. Petitioner’s construction completely ignores the word “session” in the term
`
`“electronic visitation session.” Thus, Petitioner’s construction improperly removes
`
`the temporal limitations inherent in the term.
`
`The term “session” connotes certain temporal limitations under its plain
`
`meaning,1 and in view of the specification. For example, a visitation session at a
`
`
`1 See, e.g., Xerxes Mazda & Fraidoon Mazda, The Focal Illustrated Dictionary of
`
`Telecommunications 555 (1999) (defining “Session” as “The period of time during
`
`9
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`Case IPR2016-01220
`Patent 9,007,420
`correctional facility would begin when the visitor and the inmate are joined in the
`
`same room, and would end when either the visitor or the inmate leaves the room. If
`
`the visitor came back the next week, that visitation would constitute a separate
`
`visitation session.
`
`Further, Petitioner’s construction does not apply the proper meaning to the
`
`term “visitation.” A “visitation” is not just a communication with a resident of a
`
`controlled environment facility. Such communications could occur with other
`
`residents of the controlled environment facility, and would not be consistent with
`
`the well-understood meaning of visitation within a controlled environment. A
`
`visitation is, in fact, well-understood to be a controlled visit of a non-resident with a
`
`
`which two terminals on a network are connected together by a transmission path, to
`
`allow
`
`communications
`
`to
`
`occur
`
`between
`
`them.”),
`
`available
`
`at
`
`https://books.google.com/books?id=i5ZNAGQOX18C&pg=PA555
`
`(last visited
`
`Sept. 21, 2016); Mrinal Talukdar, Dictionary of Computer & Information
`
`Technology 272 (2013) (“In telecommunications, a session is a series of interactions
`
`between two communication end points that occur during the span of a single
`
`connection.”),
`
`available
`
`at
`
`https://books.google.com/books?id=NsswBQAAQBAJ&pg=PA272 (last visited
`
`Sept. 21, 2016) (Ex. 2001).
`
`10
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`Patent 9,007,420
`resident of a controlled environment facility. ’420 Patent at 3:51-55. Further, in the
`
`context of the ’420 Patent, the visitation occurs through a communication processing
`
`system and visitation system that establishes a controlled and monitored connection
`
`between the resident and the non-resident. Id. at Fig. 1, 3:8-23, 8:45-9:16, 10:12-20.
`
`Thus, Petitioner’s proposed construction expands
`
`the broadest reasonable
`
`interpretation of this claim limitation and should be rejected.
`
`An “electronic visitation session” has a beginning and an end. An electronic
`
`visitation session begins when the communication processing system and visitation
`
`system connect the inmate and remote visitor to allow electronic communication
`
`(e.g., voice call, videoconference, or online chat) (which is analogous to the two
`
`participants being placed into the same room). See id. at 9:39-44. And, similarly, an
`
`electronic visitation session ends when the communication processing system and
`
`visitation system disconnects the communication between the inmate and the remote
`
`visitor. See id. at 9:44-49.
`
`Accordingly, the term “electronic visitation session” should be construed as
`
`“a period of time during which a resident of a controlled environment facility and a
`
`non-resident visitor are connected together by a communication processing system
`
`and a visitation system to allow the controlled and monitored exchange of electronic
`
`communications, wherein the session begins when the electronic communication is
`
`11
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`Patent 9,007,420
`connected and ends when it is disconnected.” This construction is consistent with
`
`the plain meaning of the term and the specification.
`
`B. Petitioner’s Construction of “Feature Detection Process” Is
`Overbroad and Ignores the Teachings of the Specification.
`
`Petitioner suggests the term “feature detection process” be construed as “a
`
`process for detecting characteristics of an image, such as measurements of features
`
`of a face at a plurality of points on the image.” Pet. at 23. However, Petitioner ignores
`
`the purpose of the “feature detection,” the teachings of the specification, and the
`
`plain meaning of the word “feature” in view of the specification. In each instance
`
`where the term “feature detection process” (or “the detection process”) is recited in
`
`the claims, it refers to the phrase “to verify that an actual face is present.” See ’420
`
`Patent at 11:9-11, 11:49-50, 12:3-5. Petitioner’s proposed construction of “feature
`
`detection process” ignores this important aspect of the claims and should be rejected.
`
`An appropriate claim construction must include construction of the entire phrase
`
`“performing a [feature] detection process . . . on the [second] image to verify that
`
`[an/the] actual face [was/is] present in the [second] image.” ’420 Patent at 10:21-24.
`
`The ’420 Patent’s “feature detection process” is included in independent
`
`claims 1 and 11. Each of these claims provide that the feature detection process
`
`operates on a captured image, and is used “to verify that an actual face was present
`
`in the image.” Id. at 1:51-59. The ’420 Patent performs this detection to determine
`
`“that the person is an actual person and not simply a photograph presented to trick
`
`12
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`the system.” Id. at 9:5-8. Furthermore, the specification provides that a “captured
`
`image may include either a still frame photograph or a video image.” Id. at 8:55-65.
`
`That is, the captured image may be a “single video frame” or a “plurality of video
`
`frames.” Id. In the disclosed embodiments, the process includes “measurements of
`
`features of a face at a plurality of points on the image.” Id. at 9:2-5.
`
`In order to detect whether the captured image is an “actual face” as opposed
`
`to a photograph, embodiments of the process evaluate “changes in the measurements
`
`from frame to frame of a video image” or may use “a plurality of still frame
`
`photograms” that “may be captured and differences in measurements may be
`
`calculated.” Id. at 9:5-12. Thus, changes in the captured image from frame to frame,
`
`such as movement of the lips, eyes, etc. allow the feature detection process “to
`
`determine if the presented person is an actual person or a photograph.” See id.
`
`at 8:66-9:12.
`
`The Board should reject GTL’s overbroad proposed construction because it
`
`ignores this critical aspect of the claimed “feature detection process.” It is
`
`inappropriate to construe the term “feature detection process” in isolation. Instead,
`
`the more complete phrase “performing a [feature] detection process . . . on the
`
`[second] image to verify that [an/the] actual face [was/is] present in the [second]
`
`image” should be construed. Consistent with the plain meaning and in view of the
`
`specification, the claim limitation should be construed as “performing a process
`
`13
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`utilizing algorithms for detecting features in a frame and identifying changes or
`
`differences in those features from features in another frame to verify that an actual
`
`face (e.g., not a photograph) is present in the image.”
`
`Claim differentiation does not require otherwise. “Claim differentiation is a
`
`guide, not a rigid rule.” Marine Polymer Techs., Inc. v. Hemcon, Inc., 672 F.3d 1350,
`
`1359 (Fed. Cir. 2012). While dependent claims 10 and 19 specifically “utilize[]
`
`three-dimensional (3D) feature detection,” they do not render superfluous the
`
`requirement in independent claim 1 that the “feature detection process . . . verify that
`
`an actual face was present in the image.” Indeed, throughout the specification, the
`
`“feature detection process” is described as a process “to verify that an actual face
`
`was present in the image,” even outside of the context of 3D feature detection. Id.
`
`at Abstract, Fig. 4, 1:45-47, 1:54-57, 8:67-9:2. Because the specification does not
`
`limit the process of detecting changes or differences in features from frame to frame
`
`to the 3D feature detection process, GTL’s claim-differentiation argument is
`
`unpersuasive. See, e.g., Wi-LAN USA, Inc. v. Apple Inc., --- F.3d ----, 2016 WL
`
`4073324, at *11-12 (Fed. Cir. Aug. 1, 2016).
`
`14
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`C. Performing a “three-dimensional (3D) facial recognition process . . .
`to identify the user” means “performing a process utilizing
`algorithms for detecting 3D facial features in a frame, determining
`whether the facial features in the frame match an authorized user,
`and identifying changes or differences in measurements of those
`features from measurements of features in another frame to verify
`that an actual face (e.g., not a photograph) is present in the image.”
`
`Independent claim 21 recites “performing a three-dimensional (3D) facial
`
`recognition process . . . to identify the user.” In the context of method 500 depicted
`
`in Figure 5, the specification states that the “3D facial recognition process” is used
`
`“to affirmatively identify the user as an authorized user as shown in block 504.” Id.
`
`at Fig. 5, 9:34-36. “For example, the visitation system 130 may verify that the inmate
`
`present matches a PIN entered by the inmate and that the remote user is a member
`
`of the inmate’s PAC list.” Id. at 9:37-39. It further states that “[t]he second image
`
`may be processed according to the 3D facial recognition process, and it may be
`
`further determined whether the face in the second image matches an authorized user
`
`as shown at block 508.” Id. at 9:55-58.
`
`In the context of Figure 6, the specification states that “[t]his embodiment may
`
`also further demonstrate the method 500 described in FIG. 5.” Id. at 10:4-8. “In this
`
`embodiment, the method 500 is carried, at least in part, by a smart terminal 103.” Id.
`
`at 10:8-9. “During the use of the electronic visitation session, the visitation system
`
`130 may monitor webcam 801 to ensure that the actual authorized person’s face 601
`
`is still present . . . .” Id. at 10:13-16. “If the monitoring application no longer detects
`
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`an actual authorized face 601 within camera field of view 603, the existing login
`
`session and display information are closed.” Id. at 10:16-20.
`
`The specification further notes that the inmate smart terminal 103 “utilizes
`
`algorithms for detecting 3D facial features to verify that a human face is presented
`
`to the camera.” Id. at 10:21-24. The “3D feature detection process may identify
`
`three-dimensional characteristics of an image, including measurements of features
`
`of a face at a plurality of points on the image.” Id. at 9:2-5. Further, the specification
`
`explains that the “facial identification process” requires not only “facial detection,”
`
`“but the face must be matched against a known likeness of the inmate.” Id. at 10:33-
`
`36. “A match to the known face 601 of the inmate then acts not only as a means of
`
`maintaining the electronic visitation session but also as an additional level of
`
`confirmation of the inmate’s identity so as to preclude unauthorized use.” Id. at
`
`10:36-40.
`
`Thus, according to the specification, the “three-dimensional (3D) facial
`
`recognition process” has multiple aspects: (1) it utilizes 3D feature detection to
`
`analyze each image; (2) it determines whether the face present matches the likeness
`
`of a known person that is authorized to make the call; and (3) it determines whether
`
`the face present is the actual authorized face (e.g., not a photograph used to trick the
`
`system) by comparing differences in an image captured by the system (e.g., changes
`
`in the measurements from frame to frame in the captured image). In light of this
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`disclosure, the phrase “performing a three-dimensional (3D) facial recognition
`
`process . . . to identify the user” should be construed as “performing a process
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`utilizing algorithms for detecting 3D facial features in a frame, determining whether
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`the facial features in the frame match an authorized user, and identifying changes or
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`differences in measurements of those features from measurements of features in
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`another frame to verify that an actual face (e.g., not a photograph) is present in the
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`image.”
`
`III. ARGUMENT
`A. The Combination of Torgersrud and Kenoyer Fails to Disclose the
`Limitations Requiring Determining or Verifying the Presence of an
`“Actual Face” in Independent Claims 1, 11, and 21.
`
`Independent claims 1, 11, and 21 of the ’420 Patent require, among other
`
`things, determining or verifying an “actual face” in the captured image so as to
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`prevent users from circumventing the verification system by presenting a photograph
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`to the image capture devices. The ’420 Patent differentiates between simply
`
`detecting a “face” and detecting an “actual face” in order to allow the system to
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`distinguish whether a user is an “actual person and not simply a photograph
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`presented to trick the system.” ’420 Patent at 9:5-8. Hence, the embodiments in
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`claims 1, 11, and 21 include, among other verification techniques, the prevention of
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`users from circumventing the authentication process by displaying a photograph to
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`the visitation system’s camera.
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`17
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`Case IPR2016-01220
`Patent 9,007,420
`Specifically, claim 1 recites a method comprising:
`
`receiving a request to initiate an electronic visitation session;
`capturing an image, with an image capture device, of a user in response
`to the request;
`performing a feature detection process, with a processor, on the image
`to verify that an actual face was present in the image;
`connecting
`the electronic visitation session
`in response
`determination that the actual face was present in the image;
`capturing a second image of the user with the image capture device
`during the electronic visitation session;
`performing the detection process on the second image, with the
`processor, to verify that the actual face is present in the second image.
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`to a
`
`’420 Patent at 11:4-19. System claim 11 contains similar limitations. Id. at 11:43-
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`12:5. Claim 21 requires “performing a three-dimensional (3D) facial recognition
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`process . . . to identify the user” (id. at 11:33-52), which, as discussed, also involves
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`detecting whether an actual face is present.
`
`The combination of Torgersrud and Kenoyer, however, fails to teach or
`
`suggest these limitations. Petitioner ignores the claim language “actual face” and
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`instead analyzes the claim term as if it were simply substituted with “face.” See Pet.
`
`at 18 (“[T]he feature detection process verifies that an actual face was present in the
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`image, in other words detects a face.” (emphasis added)). Such a substitution is
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`legal error. See In re Greene, 22 F.3d 1104, 1994 WL 89035, at *2 (Fed. Cir. 1994)
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`(unpublished disposition) (reversing the Board’s finding of obviousness based on an
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`Case IPR2016-01220
`Patent 9,007,420
`interpretation of the claim term “deformable hinge” that ignored the meaning of
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`“deformable” in light of the specification); see also In re Wilson, 424 F.2d 1382,
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`1385 (C.C.P.A. 1970) (“All words in a claim must be considered in judging the
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`patentability of that claim against the prior art.”). Furthermore, Petitioner’s
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`interpretation is inconsistent with the specification which distinguishes the
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`modifying term “actual” as “not simply a photograph presented to trick the system.”
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`’420 Patent at 9:5-12.
`
`Torgersrud is drawn to an interactive communications kiosk for use in a
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`secure facility that “provides access to services including internet services, text-
`
`based messaging, tele-medical services, religious and educational materials,
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`commissary ordering, and entertainment.” Torgersrud at Abstract. Torgersrud’s
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`kiosk provides for verification of users by facial recognition. Id. (“The kiosk is
`
`configured to authenticate the identity of a user by verifying a personal identification
`
`number entered by the user and also performing one or more of a facial recognition
`
`via the camera or a biometric voice recognition via the microphone.”). In fact,
`
`Torgersrud focuses primarily on facial recognition, i.e., recognizing the identity of
`
`a person—not feature detection for determining the presence of an actual face. See
`
`Torgersrud ¶ [0040] (“The platform 225 may also include voice and/or facial
`
`recognition features, described in more detail below.”); id. ¶ [0054] (“The kiosk 102
`
`19
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`Case IPR2016-01220
`Patent 9,007,420
`includes an integrated camera 303 that can be used for video communications or for
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`user authentication via facial recognition.”).
`
`Torgersrud also claims to perform “facial detection,” but this “detection” is
`
`precisely the type of verification technique that is susceptible to circumvention when
`
`users present a photograph to the camera. And this is exactly a problem the
`
`’420 Patent solves over the prior art. ’420 Patent at 8:66-9:12. Torgersrud’s
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`detection technique looks at individual frames of video to verify if a face is present
`
`in the frame. Torgersrud ¶ [0085] (“The facial detection software uses video analysis
`
`of individual frames of video to detect that a human face is present inside the video
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`frame.”). If Torgersrud does not detect a “face” in the frame (such as when the
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`camera is covered up), it prevents system access or perturbs the video image. Id.
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`¶¶ [0064], [0085]. But detecting a face in a video frame image as is disclosed in
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`Torgersrud is not the same as detecting the presence of an “actual face” as claimed
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`in the ’420 Patent.
`
`Petitioner appears to recognize the weakness in its arg