NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

SECURUS TECHNOLOGIES, INC.,

Appellant

v.

GLOBAL TEL*LINK CORPORATION,

Appellee

______________________ 

2016-2573

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. IPR2015-

00155.

______________________ 

Decided: July 14, 2017

______________________ 

 DANIEL FLETCHER OLEJKO, Bragalone Conroy PC, 

Dallas, TX, argued for appellant. Also represented by 

JEFFREY BRAGALONE, JUSTIN KIMBLE, TERRY SAAD. 

 BYRON LEROY PICKARD, Sterne Kessler Goldstein &

Fox, PLLC, Washington, DC, argued for appellee. Also 

represented by JON WRIGHT, MICHAEL BRADLEY RAY,

LAUREN C. SCHLEH, MICHAEL D. SPECHT. 

______________________ 
2 SECURUS TECHS., INC. v. GLOBAL TEL*LINK CORP. 

Before NEWMAN, CHEN, and STOLL, Circuit Judges.

CHEN, Circuit Judge. 

Securus Technologies, Inc. (Securus) appeals a final 

written decision from the United States Patent and 

Trademark Office Patent Trial and Appeal Board (Board) 

in an inter partes review (IPR) of claims 1–6 of U.S. 

Patent No. 7,853,243 (ʼ243 Patent). The Board concluded 

that Securus did not meet its burden of proving that these 

challenged claims are unpatentable as obvious. Because 

the Board did not err in its conclusion, we affirm. 

BACKGROUND 

A. The ʼ243 Patent 

Global Tel*Link Corp. (GTL) owns the ʼ243 Patent. 

The patent relates to a secure telephone call management 

system that can authenticate the identity of users seeking 

to make a telephone call from the inside of penal institutions or similar facilities. See, e.g., ʼ243 Patent col. 9 ll. 

42–50. The claimed telephone system authenticates users 

before they attempt to make a phone call by requiring a 

user to first supply his or her pre-assigned personal 

identification number (PIN), as well as certain biometric 

data. Id. col. 12 ll. 18–30. Biometric data include “voiceprints, face architecture, signature architecture, fingerprints, retinal prints, hand geometry, and the infrared 

pattern of the face.” Id. col. 12 ll. 8–11; see also id. col. 5 

ll. 30–34. 

The claimed telephone system also includes means for 

monitoring and recording the calls after they have been 

placed. See, e.g., id. col. 13 l. 63–col. 14 l. 3. Specifically, 

those means can monitor when unauthorized third parties 

join the calls and the system can then disconnect those 

calls if necessary. See id. col. 14 ll. 27–32.

Independent claim 1 is representative of the claimed 

invention:
SECURUS TECHS., INC. v. GLOBAL TEL*LINK CORP. 3

1. A method for restricting access to a public telephone network using a telephone call management system, said method comprising the steps of:

assigning a first identification number to each of a 

plurality of potential callers; 

recording a first voice print of at least one potential caller;

storing said first voice print and said first identification number in a database;

during each access attempt to said public telephone network by said potential caller:

prompting said at least one potential caller to input a second identification number;

recording a second voice print of said at least one 

potential caller;

matching said first and second identification 

numbers;

comparing said second voice print with said first 

voice print associated with said first identification 

number;

granting said at least one potential caller access to 

said public telephone network to attempt to place 

a telephone call if said second voice print matches 

said first voice print;

monitoring at least one conversation to detect the 

presence of a three-way call attempt; and 

recording at least one conversation between said 

at least one potential caller and a third-party remotely located from said at least one potential 

caller if said recording is permissible; and 

detecting the presence of predetermined keywords 

in audio of said at least one conversation.
4 SECURUS TECHS., INC. v. GLOBAL TEL*LINK CORP. 

Id. col. 51 l. 13–col. 52 l. 8.

B. The Prior Art 

U.S. Patent No. 7,035,386 (Susen) addresses the problem of unauthorized access to telephone lines in private 

branch exchanges (PBX) of companies or mobile terminals, which can lead authorized users of those lines to 

incur unwanted expenses. See Susen col. 1 ll. 17–27. “For 

example, [employees’] personal conversations are frequently held via PBX lines of large corporations at the 

employer’s expense.” Id. col. 1 ll. 22–24. “Moreover, when 

telephone calls are made from a stolen or lost mobile

telephone, the account of the lawful owner is always 

charged without the owner being able to directly prevent 

this.” Id. col. 1 ll. 24–27. To combat these issues, Susen 

generally discloses the use of voice recognition to verify 

users before they can access a particular line on the PBX

or mobile terminals. See, e.g., id. col. 1 ll. 9–12; see also

id. col. 2 ll. 54–61 (“[T]he voice signal of the subscriber 

placing the call is analyzed by voice recognition algorithms and compared with a reference data record or 

several reference data records for purposes of assignment.”). Voice recognition can be used in conjunction with 

PINs in the verification process. See id. col 10 ll. 5–20. 

Unlike Susen, U.S. Patent No. 6,064,963 (Gainsboro) 

is specifically targeted for use at penal institutions. See

Gainsboro col. 1 ll. 6–15. Within these environments, 

Gainsboro addresses the problem of having employees of 

the institutions review recorded phone calls for suspicious 

behavior. See id.; see also id. col. 3 l. 55–col. 4 l. 10. 

Gainsboro’s invention includes automatic speech recognition (ASR) technology to existing telephone systems in 

these institutions so as to eliminate the need for these 

employees. See id. col. 4 ll. 11–45. The integration of the 

ASR technology allows institutions, inter alia, to automate the monitoring and review of both live and recorded 
SECURUS TECHS., INC. v. GLOBAL TEL*LINK CORP. 5

calls for certain words or phrases that are potentially 

indicative of suspicious behavior. See id. 

C. The IPR

The Board instituted an IPR on Securus’ assertion 

that the challenged claims are unpatentable as obvious 

under 35 U.S.C. § 103(a) (2012) over Susen and Gainsboro. 

The parties disputed the broadest reasonable interpretation of the term “during each access attempt to said 

public telephone network by said potential caller” (access 

attempt limitation). See J.A. at 17–19. Specifically, 

Securus argued that the access attempt limitation only 

included the step of “prompting said at least one potential 

caller to input a second identification number” (prompting 

step). See id. at 17, 18. In support of this argument, 

Securus noted that the access attempt limitation is “followed by a colon without further punctuation and indentation,” and the limitation thus can only include the 

prompting step as it is the only step that follows the

colon. Id. at 18. 

GTL countered that the access attempt limitation included not only the prompting step, but also the additional steps of: (1) “recording a second voice print of said at 

least one potential caller” (recording step)1; (2) “matching 

said first and second identification numbers” (matching 

step); (3) “comparing said second voice print with said 

first voice print associated with said first identification 

number” (comparing voice step); and (4) “granting said at 

least one potential caller access to said public telephone 

network to attempt to place a telephone call if said second 

voice print matches said first voice print” (granting step). 

See id. In other words, an attempt to access the telephone 

 

1 The other recording steps in claim 1 are irrelevant 

to the appeal. 
6 SECURUS TECHS., INC. v. GLOBAL TEL*LINK CORP. 

network requires the prompting step, recording step, the 

matching step, and the comparing voice step, before 

ending on the granting step. See id. at 18. GTL argued 

that the granting step provided a “logical conclusion” to 

the access attempt limitation. Id. The Board agreed with 

GTL, pointing to testimony from GTL’s expert, Dr. Leonard Forys, for support. See id. 

Using this claim construction, the Board then found 

that, contrary to Securus’ contention, Susen did not 

disclose all the steps in the access attempt limitation. See

id. at 21–24. Notwithstanding this deficiency, the Board 

also found that Securus failed to explain why a person of 

ordinary skill in the art (skilled artisan) would combine 

Susen and Gainsboro to arrive at the claimed invention. 

See id. at 24–27. Securus, said the Board, only offered 

conclusory testimony from its expert, Dr. Robert Akl, that 

the skilled artisan would combine the references because 

they were generally in the same field of art. See id. at 26. 

The Board, therefore, concluded that Securus did not 

meet its burden of proving that the challenged claims are 

unpatentable as obvious. See id. at 27.

Securus timely appealed. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A) (2012).

STANDARDS OF REVIEW

We review the Board’s broadest reasonable interpretation of a claim term de novo, but its findings concerning 

extrinsic evidence for substantial evidence. See Microsoft 

Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1297 (Fed. Cir. 

2015) (citing Teva Pharm. USA, Inc. v. Sandoz, Inc., __ 

U.S. __, 135 S. Ct. 831, 841–42 (2015)). Likewise, we 

review the Board’s ultimate conclusion of obviousness de 

novo, but the underlying factual findings for substantial 

evidence. Veritas Techs. LLC v. Veeam Software Corp., 

835 F.3d 1406, 1411 (Fed. Cir. 2016). Substantial evidence is “such relevant evidence [that] a reasonable mind 

might accept as adequate to support a conclusion.” Blue 
SECURUS TECHS., INC. v. GLOBAL TEL*LINK CORP. 7

Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1337 (Fed. 

Cir. 2016) (quoting Consol. Edison Co. of N.Y. v. NLRB, 

305 U.S. 197, 217 (1938)). 

DISCUSSION

A. Claim Construction

Securus contends that the Board erred in construing 

the access attempt limitation because (1) the limitation is 

followed by a colon and only the prompting step follows 

that colon, while the other steps are offset by semicolons, 

and (2) the Board improperly relied on the ipse dixit 

testimony of Dr. Forys that the access attempt limitation 

begins with the prompting step and ends with the granting step. See Appellant Br. at 32–34. We disagree.

In an IPR, the Board affords claim terms their broadest reasonable interpretation consistent with the specification. Cuozzo Speed Techs., LLC v. Lee, __ U.S. __, 136 

S. Ct. 2131, 2142–46 (2016).

Here, although the Board may have been quick to 

consult Dr. Forys’ testimony in construing the access 

attempt limitation, the Board still arrived at the proper 

interpretation in light of the intrinsic evidence. See

Microsoft Corp., 789 F.3d at 1297 (“To the extent the 

Board considered extrinsic evidence when construing the 

claims, we need not consider the Board’s findings on that 

evidence because the intrinsic record is clear.” (citing

Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 

2005) (en banc))). We generally agree with Securus that 

the colon following the access attempt limitation is indicative that a list of particulars is to follow. But the most 

natural reading of the limitation is one that incorporates

all the steps from the beginning of the attempt to access 

the telephone network to the end of that attempt. And 

this entails more than just the prompting step—it necessarily includes the recording step, the matching step, the 

comparing voice step, and the granting step. Only upon 
8 SECURUS TECHS., INC. v. GLOBAL TEL*LINK CORP. 

being granted access to the telephone network does the 

attempt to access that network end. 

The specification supports this construction. It explicitly identifies multiple steps that must occur between the 

start of the user’s attempt to access the telephone network and the conclusion of that attempt: 

When a user attempts to access the telephone system . . . , the user may hear a series of voice 

prompts directing the user to first supply a PIN 

and then supply . . . [a] form of biometric information that is stored in [a] database. For example, if the user’s . . . [biometric information] was 

stored digitally in the database, the user would 

have to supply . . . [the biometric information] to a 

device capable of . . . [recognizing] it and converting the resulting data to the same format as the 

information in the database. The . . . [recognized] 

data would then be compared to the information 

maintained in the storage database. If a positive 

match occurs based on the PIN and biometric data 

entered, then the user would be granted access to 

the system subject to user specific restrictions.

Id. col. 12 ll. 18–30 (emphasis added); see also id. col. 46 

ll. 45–58. 

Accordingly, the Board properly afforded the access 

attempt limitation its broadest reasonable interpretation

consistent with the specification. 

B. Obviousness

Securus also contends that the Board erred in finding 

that Securus had not demonstrated that the skilled 

artisan would have been motivated to combine Susen and 

Gainsboro. See Appellant Br. at 46–49. The Board’s 

finding, however, is supported by substantial evidence.
SECURUS TECHS., INC. v. GLOBAL TEL*LINK CORP. 9

In an IPR, the petitioner has the burden of proving 

unpatentability of the challenged claims by a preponderance of the evidence. Redline Detection, LLC v. Star 

Envirotech, Inc., 811 F.3d 435, 449 (Fed. Cir. 2015) (citing 

35 U.S.C. § 316(e)). A claimed invention is unpatentable 

as obvious if the differences between the invention and 

the prior art are such that the invention would have been 

obvious to a skilled artisan. See 35 U.S.C. § 103.2 An 

obviousness inquiry requires an examination of “the scope 

and content of the prior art, differences between the prior 

art and the claims at issue, the level of ordinary skill in 

the pertinent art, and any objective indicia of nonobviousness.” Randall Mfg. v. Rea, 733 F.3d 1355, 1362 

(Fed. Cir. 2013) (first citing KSR Int’l Co. v. Teleflex Inc., 

550 U.S. 398, 406 (2007); and then citing Graham v. John 

Deere Co. of Kan. City, 383 U.S. 1, 17–18 (1966)). The 

inquiry is a flexible one. See Nike, Inc. v. Adidas AG, 812 

F.3d 1326, 1335 (Fed. Cir. 2016) (citing Kinetic Concepts, 

Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1360 (Fed. 

Cir. 2012)). Importantly, “it is not enough to simply show 

that the [prior art] references disclose the claim limitations; in addition,‘it can be important to identify a reason 

that would have prompted [the skilled artisan] to combine 

the elements as the new invention does.’” Transocean 

Offshore Deepwater Drilling, Inc. v. Maersk Contractors 

USA, Inc., 617 F.3d 1296, 1303–04 (Fed. Cir. 2010) (quoting KSR, 550 U.S. at 401). Whether the skilled artisan 

would have had a reason to combine teachings in the prior 

art to arrive at the claimed invention is a question of fact. 

 

2 Congress amended § 103 when it passed the

Leahy-Smith America Invents Act (AIA). Pub. L. No. 

112–29, § 3(c), 125 Stat. 287 (2011). But because the 

application that led to the ʼ243 Patent was filed before the 

effective date of the AIA, the pre-AIA version of § 103 

applies. 
10 SECURUS TECHS., INC. v. GLOBAL TEL*LINK CORP. 

See id. (citing Pregis Corp. v. Kappos, 700 F.3d 1348, 1353 

(Fed. Cir. 2012)). 

Here, the Board correctly observed that Securus’ proposed rationale to combine the teachings of Susen and 

Gainsboro was simply too conclusory to satisfy its burden 

of proving by a preponderance of the evidence that the 

skilled artisan would have combined these references in 

the way of the claimed invention. See J.A. at 26–27. In 

Securus’ IPR petition, it asserted, without more, that 

because Susen and Gainsboro were drawn from the same 

general field of art, the skilled artisan would have turned 

to them to solve the problems identified in the ʼ243 Patent. See J.A. at 45 (“Both prior art patents are in the 

same field of telecommunications monitoring and control.”); id. at 56 (“Both Gainsboro and the ’243 [P]atent 

are in the same field and drawn to systems for managing 

institutional calls. Thus, a [skilled artisan] would be 

motivated to combine Susen with Gainsboro to include 

monitoring said telephone call for a hook flash indicative 

of three-way calling.” (citation omitted)); id. at 66 (“Thus, 

the combination of Susen and Gainsboro discloses each 

and every limitation of . . . [the challenged claims]. [They] 

. . . are therefore rendered obvious under 35 U.S.C. 

§ 103.”). Its assertion remained just as thin in its reply

brief submitted to the Board. See id. at 1308 (“[The 

skilled artisan] would have been motivated to combine the 

teachings of the Susen and Gainsboro patents given their 

similar purpose of telecommunications monitoring and 

control. Specifically, each of these references is a part of 

the relevant art that a person of ordinary skill would have 

sought out when facing the problems allegedly solved by 

the ’243 [P]atent—enhanced authentication of callers and 

monitoring of inmate calls.” (citations omitted)); see also

id. at 1308–25. And Securus’ expert, Dr. Akl, did little to 

develop the assertion. See id. at 208–12, 19–25. 

Securus’ case against the patentability of the claimed 

invention amounts to “mere conclusory statements,” 
SECURUS TECHS., INC. v. GLOBAL TEL*LINK CORP. 11

which fall short of “some articulated reasoning with some 

rational underpinning to support the legal conclusion of 

obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 

441 F.3d 977, 988 (Fed. Cir. 2006)). For example, Securus 

failed to explain how or why the skilled artisan would 

combine the teachings of Susen, which are generally 

directed to authorizing telephone access through voice 

recognition in corporate settings, with the teachings of 

Gainsboro, which are generally directed to listening in on

and reviewing phone conversations in penal settings, to 

arrive at the claimed invention.3 We agree with the 

Board that a broad characterization of Susen and Gainsboro as both falling within the same alleged field of “telecommunications monitoring and control,” without more, is 

not enough for Securus to meet its burden of presenting a 

sufficient rationale to support an obviousness conclusion. 

See, e.g., Microsoft Corp. v. Enfish, LLC, 662 F. App’x 981, 

990 (Fed. Cir. 2016) (“[The] Board correctly concluded 

that [the petitioner] did not articulate a sufficient motivation to combine. With respect to [certain challenged 

claims], [the petitioner] gave no reason for the motivation 

of a person of ordinary skill to combine [the two references] except that the references were directed to the 

same art or same techniques . . . .”). Such short-cut logic 

 

3 We note that U.S. Patent No. 5,655,013 (ʼ013 Patent), which is cited in the ’243 Patent, purportedly addresses “the need for a control management and 

monitoring system in . . . [penal] settings.” ’243 Patent 

col. 8 ll. 6–14. And it apparently discloses a system that 

“deals primarily with the identification of a user through 

use of a PIN and restricting telephone communications 

through a profile accessed by the PIN.” Id. col. 8 ll. 10–

12. The ’013 Patent thus appears to indicate that it was 

known to require users of phones inside a penal institution to enter an authenticating PIN and that the phone 

calls would then be monitored. 
12 SECURUS TECHS., INC. v. GLOBAL TEL*LINK CORP. 

would lead to the conclusion that any and all combinations of elements known in this broad field would automatically be obvious, without the need for any further 

analysis. The Board, therefore, properly rejected Securus’ 

assertion of obviousness.4 

CONCLUSION

For the foregoing reasons, we affirm the judgment of 

the Board, concluding that Securus did not meet its 

burden of proving that the challenged claims are unpatentable as obvious by a preponderance of the evidence. 

On the limited grounds before the Board, the Board 

appropriately found that Securus did not articulate an 

adequate rationale to combine Susen and Gainsboro.

COSTS

Costs to appellee. 

AFFIRMED

 

4 Because Securus has not demonstrated that a 

skilled artisan would have combined Susen and Gainsboro, we decline to address the Board’s finding that Susen 

does not disclose all the steps of the access attempt limitation, as well as any of Securus’ arguments tied to that 

finding, including those that Securus has disguised as 

claim construction arguments. See Appellant Br. at 34–

38; see also Transocean, 617 F.3d at 1303–04.