N OTE : This disposition is nonprecedential.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

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D ANIEL F LETCHER O LEJKO , Bragalone Conroy PC, Dallas, TX, argued for appellant. Also represented by J EFFREY B RAGALONE , J USTIN K IMBLE , T ERRY S AAD

.

B YRON L EROY P ICKARD , Sterne Kessler Goldstein & Fox, PLLC, Washington, DC, argued for appellee. Also represented by J ON W RIGHT , M ICHAEL B RADLEY R AY , L AUREN C. S CHLEH , M ICHAEL D. S PECHT

.

______________________SECURUS TECHS ., INC

. v. GLOBAL TEL * LINK CORP

. 2

Before N EWMAN , C HEN , and S TOLL , Circuit Judges.

C HEN , Circuit Judge

. Securus Technologies, In c. (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 ( ʼ 243 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

. B ACKGROUND

A. The ʼ 243 Patent
Global Tel*Link Corp. (GTL) owns the ʼ 243 Patent. The patent relates to a secure telephone call management system that can authenticate the identity of users seeking
to ma ke a telephone call from the inside of penal instit utions or similar facilities. See, e.g.

, ʼ 243 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

. I d. col. 12 ll. 18

– 30

. Biomet ric data in clude “voiceprints, face architecture, signature architecture, finge rprints, 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 n ecessary. See id. col. 14 ll. 27

– 32.
Independent claim 1 is represent ative of the claimed invention:SECURUS TECHS ., INC

. v. GLOBAL TEL * LINK CORP

. 3

1. A method for restricting access to a public tel ephone network using a telephone call manag ement system, said method comprising the steps of:
assigning a first identification number to each of a

p lurality of potential callers;
recording a first voice print of at least one pote ntial caller;
storing said first voice print and said first identification number in a database;
during each access attempt to said public tel ephone ne twork by said potential caller:
prompting said at least one potential caller to i nput a second identification number;
recording a second voice print of said at least one potent ial caller;
matching said first and second identification

num bers;
comparing said second voice print with said first voice print associated with sa id 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 c all attempt; and
recording at least one conversation between said at least one potential caller and a third

- party r emotely located from said at least one potential caller if said recording is permissible; and
detecting the presence of predetermined keywo rds in audio of said at least one conversation.SECURUS TECHS ., INC

. v. GLOBAL TEL * LINK CORP

. 4

Id. col. 51 l. 13

– col. 52 l. 8.

B. The Prior Art

U.S . Patent No. 7,035,386 (Susen) addresses the pro blem of unauthorized access to telephone lines in private branch exchanges (PBX) of companies or mobile term in als, 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 fr equently 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
t elephone, the account of the lawful owner is alw ays charged without the ow ner being able to directly prevent this .” Id. col. 1 ll. 24

– 27. To combat th ese issues, Susen
gen erally 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 alg orithms and compared with a reference data record or several reference data records for purposes of assig nment.”). Voice recognition can be used in conjunction with PINs in the verification process. See id. col 10 ll. 5– 20

. Unlike Susen, U.S. P atent 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 re view re corded phone calls for suspicious behavior. See id. ; see also id. col. 3 l. 55

– col. 4 l. 10. Gainsboro’s invention includes automatic speech recogn ition (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 aut omate the monitoring and review of both live and recordedSECURUS TECHS ., INC

. v. GLOBAL TEL * LINK CORP

. 5

calls for certain words or phrases that are potentially indicative of suspic ious 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 Gain sboro.
The parties disputed the broadest reasonable inte rpretatio n 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 “fo llowed by a colon without further punctuation and inde ntation, ” and the limitation thus can only include t he prompt ing step as it is the only step that follows the colon. Id. at 18. GTL countered that the access attempt limitation i ncluded not only the prompting step, but also the additio nal 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 fi rst 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 step s in claim 1 are irrelevant to the appeal.SECURUS TECHS ., INC

. v. GLOBAL TEL * LINK CORP

. 6

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 provi ded a “logical conclusion” to the access attempt limitation. Id. The Board agreed with GTL, pointing to testimony from GTL’s expert, Dr. Leo nard Forys, for support

. See id.
Using this claim construction, the Board then found that, contrary to Securus’ contentio n, Susen did not disclose all the steps in the access attempt limitation. See id. at 21

– 24. N otwithstanding this deficiency, the Board also found that Securus failed to explain why a person of ordinary skill in the art (skilled artisan) would co mbine 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 pu rsuant to 28 U.S.C. § 1295(a)(4)(A) (2012).

S TANDARD S OF R EVIEW We review the Board’s broadest reasonable interpr etation 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 evidenc e. Veritas Techs. LLC v. Veeam Software Corp.

, 835 F.3d 1406, 1411 (Fed. Cir. 2016). Substantial ev idence is “such relevant evidence [that] a reasonable mind might accept as adequate to support a conclusion.” BlueSECURUS 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)).

D ISCUSSION

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 pr ompting step follows that colon, while the other steps are offset by semicolons

, a nd (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 gran ting step. See Appellant Br. at 32

– 34. We disagree.
In an IPR, the Board affords claim terms their broa dest reasonable interpretation consistent with the specification

. Cuozzo Speed Techs., LLC v. Lee

, __ U.S. __, 1 36 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 129 7 (“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 indic ative 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 beginni ng of the attempt to access the telephone network to the end of th at attempt. And
t his entails more than just the prompting step

— it nece ssarily includes the recording step, the matching step, the comparing voice step, and the granting step. Only uponSECURUS TECHS ., INC

. v. GLOBAL TEL * LINK CORP

. 8

bei ng granted access to the telephone network does the
attem pt to access th at network end.
The specification supports this construction. It expli citly identifies multiple steps that must occur between the start of the user’s attempt to access the telephone ne twork and t he conclusion of that attempt:

When a user attempts to access the telephone sy stem . . . , the user may hear a series of voice prompts directing the user to first supply a PIN and then supply

. . . [a] form of biometric info rmation that is st ored in [a] database. For exa mple, 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 conver ting 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 w ould 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 limita tion its broadest reasonable interpretation consistent with the specification

. B. Obviousness
Securus also contends that the Board erred in finding that Sec urus had not demonstrated that the skilled artisan would have been motivated to combine Susen and Gainsboro. See Appellant Br. at 4 6– 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 preponde rance of the evidence. Redline Detection, LLC v. Star Envirotech, Inc. , 81 1 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 non

obviousness. ” 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 limit ations; 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) (quo ting 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 applica tion that led to the ʼ 243 Patent was filed before the effective date of the AIA , the pre

- AIA version of § 103 applies

.SECURUS TECHS ., INC

. v. GLOBAL TEL * LINK CORP

. 10

See id. (citing Pregis Corp. v. Kappos

, 700 F.3d 1348, 1353 (Fed. Cir. 2012)).
Here, the Board correctly observed that Securus’ pr oposed 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
t he way of the claimed invention

. See J.A. at 26

– 27. In Securus’ IPR petition, it asserted , without more, that because Suse n 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 ʼ 243 P atent. See J.A. at 45 (“Both prior art patents are in the same field of telecommunications monitorin g and co ntrol.”); 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 ren dered obvious unde r 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 authenticatio n 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 a mounts 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 ex ample, 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 Gain sboro 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. 2 016) (“[The] Board correctly concluded that [the petitioner] did not articulate a sufficient motiv ation to combine. With respect to [certain challenged claims], [the petitioner] gave no reason for the motivation of a person of ordinary skill to combine [t he two refe rences] except that the references were directed to the same art or same tech niques . . . .”). Such short

- cut logic

3 We no te that U.S. Patent No. 5,655,013 ( ʼ 013 P atent), which is cited in the ’243 Patent

, purportedly a ddresses “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 ’0 13 Patent thus ap pears to indicate that it was known to require users of phones inside a penal instit ution to enter an authenticating PIN and that the phone calls would then be monitored

.SECURUS TECHS ., INC

. v. GLOBAL TEL * LINK CORP

. 12

would lead to the conclusion that any and all combin ations of elements known in this broad field would aut omatically be obvious

, without the need for any further analysis

. The Board, therefore, properly rejected Securus’ assertion of obviousness. 4

C ONCLUSION 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 u npatentable 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.

C OSTS Costs to appellee.

AFFIRMED

4 Because Securus has not demonstrated that a skilled artisan woul d have combined Susen and Gain sboro , we decline to address the Board’s finding that Susen does not disclose all the steps of the access attempt lim itation, as well as any of Securus’ arguments tied to that finding , including those that Securus has disguise d as claim construction arguments. See Appellant Br. at 34

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

– 04.