Takeaway: In an obviousness combination, the required rationale to combine two references disclosing nearly identical embodiments may be lower as compared to combining two references having few similarities or references which are from widely different fields of endeavor.
In its Final Written Decision, the Board found that Petitioner had demonstrated by a preponderance of the evidence that claims 1-17 of the ’457 patent are unpatentable. The ’457 patent “is directed to systems and methods for monitoring activity of detainees, based on gang affiliation, through search and correlation of one or more databases.”
The Board first addressed claim construction under the broadest reasonable interpretation in light of the specification. The term “database” had been construed in the Decision on Institution “to encompass an electronic source of data or information and does not encompass non-electronic sources of data or information.” The Board saw no reason to alter the construction. All other terms were given their ordinary and customary meaning.
The Board then turned to the grounds of unpatentability, first addressing alleged obviousness of claims 1-5 and 14-17 in view of the Crites, Krebs, and Hodge references. Patent Owner argued that Petitioner did not demonstrate a reason to combine and that the references failed to disclose all elements. The Board was not persuaded, but instead agreed with Petitioner’s arguments and citations to the prior art.
In particular, with regard to the motivation to combine the references, the Board noted that the Federal Circuit in Ecolab, Inc. v. FMC Corp., 569 F.3d 1335, 1350 (Fed Cir. 2009), “has viewed an ‘apparent reason to combine,’ in conjunction with the technical ability to optimize, as sufficient to reach a conclusion of obviousness.” In other words, the Board explained that the rationale to combine two references disclosing “nearly identical embodiments with only obvious variations . . . would be lower as compared to combining two references having few similarities or references which are from widely different fields of endeavor.” Based on the similarities of the applied references, the Board was persuaded that the combination would have been obvious.
The Board also found unpersuasive Patent Owner’s arguments based on the Patent Office’s previous consideration of the Crites reference during prosecution. The Board noted that the Examiner’s analysis would only be partially helpful in light of the lack of clarity regarding what specific disclosure was considered by the Examiner and the fact that a combination of references was being applied to a limitation in the Petition where only Crites was applied by the Examiner.
Thus, the Board was persuaded that claims 1-5 and 14-17 would have been obvious.
Regarding the alleged obviousness of claims 6-13 over Crites, Krebs, Hodge, and additionally in view of Eisen, the Board noted that independent claims 6 and 13 are similar to claim 1, and that Petitioner relied upon the same disclosures of Crites, Krebs, and Hodge as discussed above. Petitioner argued persuasively that Eisen discloses the additional features. Patent Owner argued that Eisen is not analogous art, but the Board disagreed. The Board held that even if “Eisen is directed to a different field of endeavor than the ’457 Patent, . . . Eisen is reasonably pertinent to the particular issues addressed and claimed in the ’457 Patent.” Moreover, the Board noted that “the scope of analogous art must be construed broadly. Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010).”
Thus, the Board was persuaded that claims 6-13 would have been obvious.
Global Tel*Link Corp. v. Securus Tech., Inc., IPR2014-01283
Paper 30: Final Written Decision
Dated: February 18, 2016
Patent: 7,805,457 B1
Before: Kevin F. Turner, Barbara A. Benoit, and Georgianna W. Braden
Written by: Turner
Related Proceedings: Securus Technologies, Inc. v. Global Tel*Link Corporation, 3:13-cv-03009 (N.D. Tex.).