Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 8
`Filed: Dec. 16, 2016
`
`
`
`
`
`
`
`Before KEVIN F. TURNER, BARBARA A. BENOIT, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`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
`Patent 9,007,420 B1
`_______________
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`571.272.7822
`
`
`Paper No. 8
`Filed: Dec. 16, 2016
`
`
`
`
`
`
`
`Before KEVIN F. TURNER, BARBARA A. BENOIT, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`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
`Patent 9,007,420 B1
`_______________
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`IPR2016-01220
`Patent 9,007,420 B1
`
`
`I.
`
`INTRODUCTION
`
`A. Background
`Global Tel*Link Corporation (“Petitioner”) filed a Petition (Paper 2,
`“Pet.”) to institute an inter partes review of claims 1–21 of U.S. Patent No.
`9,007,420 B1 (Ex. 1001, “the ’420 patent”). Securus Technologies, Inc.
`(“Patent Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”).
`We have jurisdiction under 35 U.S.C. § 314, which provides that an inter
`partes review may not be instituted “unless . . . there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” See also 37 C.F.R § 42.4(a) (delegating
`authority to the Board).
`Upon consideration of the Petition, Petitioner’s cited evidence, Patent
`Owner’s Preliminary Response and associated evidence, we conclude
`Petitioner has established a reasonable likelihood it would prevail with
`respect to at least one of the challenged claims. Accordingly, for the reasons
`that follow, we institute an inter partes review.
`B. Related Proceedings
`Petitioner informs us that Patent Application No. 14/683,655, filed
`April 10, 2015, is a continuation of the ’420 patent and it may affect or be
`affected by this proceeding. Pet. 59–60.
`C. The ’420 Patent
`The ’420 patent was filed on January 10, 2014, and is titled
`“Verifying Presence of Authorized Persons During an Electronic Visitation”
`and is directed “to methods and systems for verifying presence of authorized
`persons during an electronic visitation.” Ex. 1001, Title, 1:5–10. Many
`institutions, such as prisons, provide various options for inmates to
`2
`
`
`
`
`
`IPR2016-01220
`Patent 9,007,420 B1
`
`communicate with visitors and other parties outside the prison. Id. at 1:14–
`15. According to the ’420 patent, options include in-person visitation, room-
`to-room visitation through a divider, telephone visitation, and video
`visitation. Inmates of controlled-environment facilities are typically
`restricted to receiving visitation from approved persons. Id. at 1:15–19. The
`’420 patent states that identification of visitors is more difficult with
`telephone or video visitation. 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. at 1:27–32.
`The ’420 patent teaches methods, apparatuses, and systems for
`verifying presence of authorized persons during an electronic visitation. Id.
`at 1:39–41. Specifically, in one embodiment shown in Figure 1 reproduced
`below, the ’420 patent teaches a system for verifying presence of authorized
`persons during an electronic visitation.
`
`
`
`3
`
`
`
`
`
`IPR2016-01220
`Patent 9,007,420 B1
`
`Figure 1 is an illustration of controlled environment facility with processing
`system 101 and visitation system 130 used for verifying the presence of
`authorized persons during an electronic visitation. Id. at 3:8–11.
`Another embodiment of the ’420 patent, shown in Figure 3
`reproduced below, teaches a processing device configurable as an apparatus
`for verifying presence of authorized persons during a video visitation. Id. at
`6:31–38; Fig. 3.
`
`
`Figure 3 depicts a schematic diagram of computer system 300 that includes
`processors 310, system memory 320, program instructions 325, and I/O
`interface 330 that connects to input/output devices 350. Id. at 6:39–8:15.
`The ’420 patent further teaches the embodiment shown in Figure 4,
`reproduced below.
`
`
`
`4
`
`
`
`IPR2016-01220
`Patent 9,007,420 B1
`
`
`
`Figure 4 is a schematic flowchart diagram illustrating one embodiment for
`verifying presence of authorized persons during an electronic visitation. Id.
`at 8:45–47. Visitation system 130 may instruct the user’s device to capture
`an image of the user in response to the request as shown at block 402. Id. at
`8:55–57. Additionally, visitation system 130 may capture instruct each
`users’ device to capture an image, so that each user may be authenticated
`and authorized to participate in the electronic visitation. Id. at 8:57–61.
`According to the ’420 patent, the captured image may include either a still
`frame photograph or a video image. Id. at 8:61–62.
`The ’420 patent specifically teaches that in certain embodiments,
`processor 310 of visitation system 130 may perform a three-dimensional
`(3D) feature detection process on the captured image to verify that an actual
`face is present in the image as shown at block 403. Id. at 8:66–9:2.
`According to the ’420 patent, a 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. The
`’420 patent teaches that changes in the measurements from frame to frame
`5
`
`
`
`
`
`IPR2016-01220
`Patent 9,007,420 B1
`
`of a video image may indicate that the person is an actual person and not
`simply a photograph presented to trick the system. Id. at 9:5–8.
`The ’420 patent goes on to teach the embodiment shown in Figure 5,
`reproduced below.
`
`
`Figure 5 is a schematic flowchart diagram illustrating an embodiment for
`verifying presence of authorized persons during an electronic visitation. Id.
`at 9:17–19.
`
`
`
`6
`
`
`
`D. Illustrative Claims
`As noted above, Petitioner challenges claims 1–21, with claims 1, 11,
`and 21 being independent claims. Claim 1 is illustrative of the challenged
`claims, and is reproduced below:
`1. 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 to a
`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.
`Ex. 1001, 11:4–19.
`E. The Evidence of Record
`Petitioner relies upon the following references, as well as the
`Declaration of Dr. Homayoon Beigi (Ex. 1006):
`Reference
`Patent/Printed
`Publication
`Torgersrud US Patent Pub. No.
`US2012/0262271
`US Patent No. 8,218,829
`
`IPR2016-01220
`Patent 9,007,420 B1
`
`
`Kenoyer
`
`Zhang
`
`US Patent No. 7,436,988
`
`
`
`
`
`7
`
`Date
`
`Exhibit
`
`Pub. Oct. 18, 2012
`
`Issued Jul. 10, 2012
`
`Issued Oct. 14, 2008
`
`
`1003
`
`1004
`
`1005
`
`
`
`IPR2016-01220
`Patent 9,007,420 B1
`
`
`F. The Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of the ’420 patent based on the
`following grounds under 35 U.S.C. § 103:
`Reference(s)
`Torgersrud and Kenoyer
`Torgersrud, Kenoyer, and Zhang
`
`Basis
`§ 103
`§ 103
`
`Claims Challenged
`1–9 and 11-19
`10, 20, and 21
`
`Pet. 12.
`
`II. DISCUSSION
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (“We
`conclude that the regulation represents a reasonable exercise of the
`rulemaking authority that Congress delegated to the Patent Office.”). Under
`that standard, and absent any special definitions, we give claim terms their
`ordinary and customary meaning, as would be understood by one of ordinary
`skill in the art at the time of the invention. In re Translogic Tech., Inc.,
`504 F.3d 1249, 1257 (Fed. Cir. 2007). An inventor, however, may provide a
`meaning for a term that is different from its ordinary meaning by defining
`the term in the specification with “reasonable clarity, deliberateness, and
`precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`Limitations, however, are not to be read from the specification into the
`claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). In addition,
`the Board may not “construe claims during [an inter partes review] so
`broadly that its constructions are unreasonable under general claim
`8
`
`
`
`
`
`IPR2016-01220
`Patent 9,007,420 B1
`
`construction principles.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d
`1292, 1298 (Fed. Cir. 2015). We construe the challenged claims according
`to these principles.
`
`Petitioner proposes construction for the claim terms “electronic
`visitation session” and “feature detection process.” Pet. 21–24. Patent
`Owner disputes Petitioner’s proposed constructions for these terms, and
`proposes a construction for the limitation “three-dimensional (3D) facial
`recognition process . . . to identify the user.” Prelim. Resp. 9–17. On this
`preliminary record, the issues presented show that the following terms or
`limitations require express construction at this stage of the proceeding.
`1. “electronic visitation session”
`Independent claims 1, 11, and 21 recite an “electronic visitation
`session.” Petitioner contends that the term should be construed as “an
`electronic communication, such as by text, video, or voice, with a resident of
`a controlled environment facility.” Pet. 22. Petitioner first argues that the
`“electronic visitation” in the ’420 patent is not just with inmates of a
`correctional facility, but more broadly, covers residents of a controlled
`environment facility, such as hotels and hospitals. Id. at 22–23 (citing Ex.
`1001, 1:14–17, 2:52–3:5). According to Petitioner, the ’420 patent describes
`that in addition to voice and video, the communication may be via text,
`stating: “communication processing system 101 may provide telephone
`services, videoconferencing, online chat, and other communication services
`to a controlled-environment facility.” Id. at 23 (citing Ex. 1001, 3:11–14).
`In light of this disclosure, Petitioner argues that a skilled artisan would
`understand the term “electronic visitation session” to mean “an electronic
`
`
`
`9
`
`
`
`IPR2016-01220
`Patent 9,007,420 B1
`
`communication, such as by text, video, or voice, with a resident of a
`controlled environment facility.” Id. (citing Ex. 1006 ¶ 63).
`Patent Owner disputes Petitioner’s proposed construction of
`“electronic visitation session” as unreasonably broad. Prelim. Resp. 9–12.
`Patent Owner contends 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 connected and ends
`when it is disconnected.” Id. at 11–12. Patent Owner specifically contends
`that the term “session” connotes certain temporal limitations under its plain
`meaning, and in view of the specification. Id. at 9–10 (citing Ex. 2001).
`Patent Owner further contends that a “visitation” is not just a
`communication with a resident of a controlled environment facility, rather a
`visitation is well understood to be a controlled visit of a non-resident with a
`resident of a controlled environment facility. Id. at 10–11 (citing Ex. 1001,
`3:51–55). According to Patent Owner, in the context of the ’420 Patent, a
`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 11 (citing Ex. 1001, Fig. 1, 3:8–23,
`8:45–9:16, 10:12–20). Patent Owner argues that an “electronic visitation
`session” has a beginning and an end. Id. Thus, Patent Owner concludes,
`“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)
`10
`
`
`
`
`
`IPR2016-01220
`Patent 9,007,420 B1
`
`and ends when the communication processing system and visitation system
`disconnects the communication between the inmate and the remote visitor.”
`Prelim. Resp. 11 (citing Ex. 1001, 9:39–49).
`We agree with Petitioner that “electronic visitation” in the ’420 patent
`is not just with inmates of a correctional facility, but covers residents of a
`controlled environment facility, such as hotels and hospitals. Pet. 22–23;
`Ex. 1001, 1:14–17, 2:52–3:5. We also agree, however, with Patent Owner
`that the term “session” has a temporal component indicating that the
`“electronic visitation” has a beginning and an end. Prelim. Resp. 9–10. A
`technical dictionary, the IEEE Dictionary, defines “session” as “the period
`of time during which a user of a terminal can communicate with an
`interactive system, usually equal to elapsed time between logon and logoff.”
`See IEEE 100: THE AUTHORITATIVE DICTIONARY OF IEEE STANDARDS
`TERMS, (IEEE Press, Standards Information Network 7th ed. 2000) (Ex.
`3001, 1035). Such a definition supports Patent Owner’s position.
`We do not agree, however, with Patent Owner that a “visitation” only
`occurs through a communication processing system and visitation system
`that establishes a controlled and monitored connection between the resident
`and the non-resident. See Prelim. Resp. 10–11. To the contrary, the ’420
`patent teaches that the various forms and uses for communication processing
`system 101 and visitation system 130 are illustrative embodiments, but are
`the claims are not so narrowly written as to only encompass these illustrative
`embodiments. See Ex. 1001, 3:8–24, 4:27–52, 10:50–11:2. In addition, we
`must be careful not to import limitations improperly into the claims or to
`read a particular embodiment appearing in the written description into the
`claim if the claim language is broader than the embodiment. In re Van
`11
`
`
`
`
`
`IPR2016-01220
`Patent 9,007,420 B1
`
`Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Therefore, at this stage of the
`proceeding, we not persuaded that an “electronic visitation session” only
`uses communication processing system 101 and visitation system 130 as
`described in the ’420 patent. Rather, based on the record before us and for
`purposes of this Decision, we are persuaded that “electronic visitation
`session” encompasses the period of time during which a resident of a
`controlled environment facility participates in an electronic communication.
`2. “feature detection process”
`Independent claims 1 and 11 recite a “feature detection process.”
`Petitioner contends that the term should 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. 23. Petitioner first argues
`that independent claims 1 and 11 do not recite that the feature detection
`process must be three-dimensional. Id. Petitioner then argues that because
`dependent claims 10 and 19 specifically recite that the feature detection
`process must be a three-dimensional process, claims 1 and 11 must have a
`broader and different scope. Id. at 23–24. According to Petitioner, to read
`in the requirement for a three-dimensional feature detection process would
`render claims 10 and 19 meaningless. Id. (citing Versa Corp. v. Ag-Bag
`Int’l, Ltd., 392 F. 3d 1325, 1329-1330 (Fed. Cir. 2004)). Petitioner,
`therefore, concludes that a skilled artisan would understand the claimed
`“feature detection process” to mean “a process for detecting characteristics
`of an image, such as, for example measurements of features of a face at a
`plurality of points on the image.” Id. at 24 (citing Ex. 1006 ¶ 66).
`Patent Owner disputes Petitioner’s proposed construction of “feature
`detection process.” Prelim. Resp. 12–14. Patent Owner contends that the
`12
`
`
`
`
`
`IPR2016-01220
`Patent 9,007,420 B1
`
`Board should construe the entire claim limitation “performing a [feature]
`detection process . . . on the [second] image to verify that [an/the] actual face
`[was/is] present in the [second] image.” Id. at 12 (citing Ex. 1001, 10:21–
`24). Patent Owner argues that claims 1 and 11 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. (citing Ex. 1001, 1:51–59).
`According to Patent Owner, the ’420 patent performs this detection to
`determine “that the person is an actual person and not simply a photograph
`presented to trick the system.” Id. at 12–13 (citing Ex. 1001, 9:5–8).
`Patent Owner further argues that the specification provides that a
`“captured image may include either a still frame photograph or a video
`image.” Id. at 12–13 (citing Ex. 1001, 8:55–65). The ’420 patent teaches
`that the captured image may be a “single video frame” or a “plurality of
`video frames.” Ex. 1001, 8:55–65. 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, according to Patent Owner, 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.” Id. at 13 (citing 8:66–9:12). Patent Owner, therefore, argues
`that we should reject Petitioner’s overbroad proposed construction because it
`ignores a critical aspect of the claimed “feature detection process.” Id.
`13
`
`
`
`
`
`IPR2016-01220
`Patent 9,007,420 B1
`
`
`Patent Owner then reiterates its position that the claim limitation be
`construed as “performing a process 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.” Prelim. Resp. 13–14. Patent Owner
`argues that the doctrine of claim differentiation does not require otherwise
`because “claim differentiation is a guide, not a rigid rule.” Id. (citing
`Marine Polymer Techs., Inc. v. Hemcon, Inc., 672 F.3d 1350, 1359 (Fed.
`Cir. 2012)). According to Patent Owner, although 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. (citing Ex.
`1001, Abstract, Fig. 4, 1:45–47, 1:54–57, 8:67–9:2). Patent Owner
`concludes that 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, Petitioner’s claim-differentiation argument is
`unpersuasive. Id. (citing Wi-LAN USA, Inc. v. Apple Inc., 830 F.3d 1374,
`1391–92 (Fed. Cir. 2016)).
`Despite Patent Owner’s argument, we agree with Petitioner’s position.
`Patent Owner’s proposed construction of “feature detection process” is too
`narrow and improperly incorporates embodiments from the specification as
`limitations. “Though understanding the claim language may be aided by the
`explanations contained in the written description, it is important not to
`14
`
`
`
`
`
`IPR2016-01220
`Patent 9,007,420 B1
`
`import into a claim limitations that are not a part of the claim. For example,
`a particular embodiment appearing in the written description may not be
`read into a claim when the claim language is broader than the embodiment.”
`Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir.
`2004). For the instant case, the specification discloses multiple processes for
`verifying that an actual face is present in an image. See Ex. 1001, 8:55–
`9:60, 10:21–24, 10:33–40. As such, we determine that Patent Owner’s
`proposed construction is overly narrow, when compared to a broadest
`reasonable construction, consistent with the Specification.
`Additionally, independent claims 1 and 11 specifically recite that a
`“feature detection process” is used on an image “to verify that an actual face
`was present in the image.” If we were to adopt Patent Owner’ proposed
`construction that would render the explicit claim language of verify, “an
`actual face was present in the image” redundant and superfluous. See Bicon,
`Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed.Cir.2006) (“The notice
`function of a claim would be undermined if courts construed claims so as to
`render physical structures and characteristics specifically described in those
`claims superfluous.”); Haemonetics Corp. v. Baxter Healthcare Corp., 607
`F.3d 776, 781 (Fed. Cir. 2010) (“we construe claims with an eye toward
`giving effect to all of their terms”). Therefore, we cannot agree with Patent
`Owner’s construction.
`Thus, based on the current record before us, we determine that
`“feature detection process” encompasses “a process for detecting feature
`characteristics of an image.”
`
`
`
`15
`
`
`
`IPR2016-01220
`Patent 9,007,420 B1
`
`
`3. “performing a three-dimensional (3D) facial recognition
`process . . . to identify the user”
`Independent claim 21 recites a “performing a three-dimensional (3D)
`facial recognition process . . . to identify the user.” See Prelim. Resp. 15.
`For purposes of this Decision and based on the record before us, we need not
`provide express construction for this claim term at this stage of the
`proceeding.
`B. Principles of Law
`A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved based on underlying factual
`determinations, including: (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of skill in the art; and (4) objective evidence of nonobviousness, i.e.,
`secondary considerations. See Graham v. John Deere Co. of Kansas City,
`383 U.S. 1, 17–18 (1966).
`“A determination of whether a patent claim is invalid as obvious
`under § 103 requires consideration of all four Graham factors, and it is error
`to reach a conclusion of obviousness until all those factors are considered.”
`Apple v. Samsung Elecs. Co., Ltd., 839 F.3d 1034, 1048 (Fed. Cir. 2016) (en
`banc) (citations omitted). “This requirement is in recognition of the fact that
`each of the Graham factors helps inform the ultimate obviousness
`determination.” Id.
`
`
`
`16
`
`
`
`IPR2016-01220
`Patent 9,007,420 B1
`
`
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)). This burden never shifts to
`Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800
`F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek,
`Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of
`proof in inter partes review). Furthermore, Petitioner cannot satisfy its
`burden of proving obviousness by employing “mere conclusory statements.”
`In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
`Thus, to prevail in an inter partes review, Petitioner must explain how
`the proposed combinations of prior art would have rendered the challenged
`claims unpatentable. At this preliminary stage, we determine whether the
`information presented in the Petition shows there is a reasonable likelihood
`that Petitioner would prevail in establishing that one of the challenged
`claims would have been obvious over the proposed combinations of prior
`art.
`
`We analyze the challenges presented in the Petition in accordance
`with the above-stated principles.
`C. Level of Ordinary Skill in the Art
`In determining whether an invention would have been obvious at the
`time, when it was made, we consider the level of ordinary skill in the
`pertinent art at the time of the invention. Graham, 383 U.S. at 17. “The
`importance of resolving the level of ordinary skill in the art lies in the
`17
`
`
`
`
`
`IPR2016-01220
`Patent 9,007,420 B1
`
`necessity of maintaining objectivity in the obviousness inquiry.” Ryko Mfg.
`Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991).
`Petitioner’s Declarant, Dr. Homayoon Beigi (“Dr. Beigi”), opines that
`a person of ordinary skill in the art relevant to the ’420 patent would have
`had “a B.S. degree in Computer Science or equivalent field, as well as at
`least 2-3 years of academic or industry experience in software development,
`or comparable industry experience.” Ex. 1006 ¶ 23.
`Patent Owner does not dispute Dr. Beigi’ testimony or proffer its own
`assessment regarding a person of ordinary skill in the art relevant to the ’420
`patent at the time of the invention. See generally Prelim. Resp.
`Based on our review of the ’420 patent, the types of problems and
`solutions described in the ’420 patent and cited prior art, and the testimony
`of Dr. Beigi, we adopt and apply Dr. Beigi’s definition of a person of
`ordinary skill in the art at the time of the claimed invention for purposes of
`this Decision. We also note that the applied prior art reflects the appropriate
`level of skill at the time of the claimed invention. See Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
`D. Alleged Obviousness of Claims 1–9 and 11–19 in view of
`Torgersrud and Kenoyer
`Petitioner contends claims 1–9 and 11–19 of the ’420 patent are
`unpatentable under 35 U.S.C. § 103 in view of Torgersrud and Kenoyer.
`Pet. 25–50. Patent Owner disputes Petitioner’s contentions. Prelim. Resp.
`17–26. For reasons that follow, we determine Petitioner has demonstrated a
`reasonable likelihood of prevailing as to claims 1–9 and 11–19.
`
`
`
`18
`
`
`
`IPR2016-01220
`Patent 9,007,420 B1
`
`
`1. Overview of Torgersrud
`Torgersrud is a published patent application titled “Interactive
`Audio/Video System and Device for Use in a Secure Facility.” Ex. 1003
`Title. Torgersrud indicates that inmates of controlled facilities, such as
`prisons “require additional levels of monitoring and oversight that are not
`required when similar services provided to other populations.” Id. ¶ 2.
`Torgersrud teaches a customized interactive audio/video platform for
`providing administrative services that includes kiosks at secure facilities that
`are interconnected via a central processing platform for providing enhanced
`security and monitoring services. Id. ¶ 22. One embodiment of the platform
`disclosed in Torgersrud is shown in Figure 1, reproduced below.
`
`
`
`Figure 1 illustrates interactive audio/video platform 25 that includes kiosks
`102 for providing administrative services at multiple facilities 100. Id. ¶ 26.
`Torgersrud indicates its invention provides platform 25, which includes
`processing center 150 connected to one or more facilities 100 through a
`network such as, e.g., internet 190. Id. According to Torgersrud, facilities
`
`
`
`19
`
`
`
`IPR2016-01220
`Patent 9,007,420 B1
`
`100 may be any facilities requiring voice, video, and/ or information
`services, especially those with security requirements and large traffic
`volumes, including secure facilities such as prisons or other government
`detention facilities. Id. Each facility 100 contains at least one kiosk 102.
`Id.
`
`Another embodiment of the platform disclosed in Torgersrud is shown
`in Figure 2, reproduced below.
`
`
`Figure 2 illustrates multiple facilities 200, each connected to internet 290 via
`router 204, and which may include at least one kiosk to communicate via
`internet 290 with processing center 250 that is made up of multiple call
`clusters 251-254. Id. ¶ 33. Torgersrud indicates its invention provides first
`central processing cluster 251 in location A, second central processing
`cluster 252 in location B, third central processing cluster 253 in location C,
`and fourth central processing cluster 254 in location D. Id. ¶ 34, Fig. 2.
`
`
`
`20
`
`
`
`IPR2016-01220
`Patent 9,007,420 B1
`
`Central processing clusters 251-254 together operate as processing center
`250, and each cluster may include one or many computers functioning
`together to perform various tasks. Id.
`In one embodiment in Torgersrud, kiosk 102 includes an integrated
`camera 303 that can be used for video communications or for user
`authentication via facial recognition. Id. ¶ 54, Fig. 3. According to
`Torgersrud, when a resident of a secure facility starts to log in to kiosk 102,
`“the camera of the kiosk 102 is activated.” Id. ¶ 64, Fig. 7. The log in
`screen on kiosk 102 is illustrated in Figure 7, reproduced below.
`
`
`As shown in Figure 7, above, Torgersrud indicates its invention provides
`that an image or video of the resident logging on is recorded, and is stored
`along with a record of the attempted log in. Id. ¶ 64, Fig. 7. Administrators
`can later view images or video of these log in attempts. Id. In addition,
`kiosk 102 will use facial detection software to ensure that a face is present in
`the camera field of view. Id. If no face is present (for example, because a
`resident is blocking the camera with their hand or other obstruction), the
`
`
`
`21
`
`
`
`IPR2016-01220
`Patent 9,007,420 B1
`
`system will not permit a log in to be completed. Id. Torgersrud teaches that
`during a resident’s log in, kiosk 102 may display video feed 705 on login
`screen 701, providing a visual reminder to the resident that the images are
`being recorded. Id. Additional secondary verification systems (such as
`voice biometrics and individualized facial recognition) may also be used. Id.
`2. Overview of Kenoyer
`Kenoyer is titled “System and Method for Using Biometrics
`Technology in Conferencing” and discloses a biometrics engine that detects
`facial images of a user, generates biometrics of the detected facial images,
`and compares the generated biometrics with biometrics information of
`authorized users. Ex. 1004, Title, Abstract. To accomplish this, Kenoyer
`uses a face detect module, a biometrics generation module, a face match
`module, and an optional face tracking module. Id. at 2:45–47. The face
`detect module detects a facial image in the captured image of the user. Id. at
`2:47–49. The facial image is then forward to the biometrics generation
`module, which generates biometrics information for the facial image. Id. at
`2:49–51. Subsequently, the face match module takes the biometrics
`information for the facial image and compares the biometrics information
`with information for authorized users obtained from the data storage device.
`Id. at 2:51–54. If a match is found, then the user is automatically logged
`into the videoconference network through the videoconference system. I
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
