Over the last 18 months, the Federal Circuit has been quietly shoring up the non-obviousness provisions of 35 U.S.C. § 103 by enforcing the requirement that an obviousness argument entails making the full prima facie case. That is, in order to invalidate a claim over two or more prior art references, the challenger needs to (i) establish that all elements of the claim are either present in or suggested by the prior art, (ii) that one of ordinary skill in the art would be motivated to combine these references in a fashion that would result in the claimed invention, and (iii) had a reasonable expectation of success in doing so.
All too often, attacking these two final steps of the obviousness analysis are left out in a § 103 rebuttal. This is hardly surprising, given that many USPTO examiners seem to believe that merely stating that references could be combined (and perhaps providing a terse explanation of the reasons for doing so) is sufficient to establish the motivation prong of the prima facie case. During interviews and in written arguments, it is typically much easier to convince an examiner to withdraw a § 103 rejection by arguing that the references do not teach a particular claim element.
Before the Patent Trial and Appeal Board (PTAB) things can be different. PTAB judges are more open to rebuttals of the challenger's motivation to combine. Thus, patentees are more likely to emphasize such arguments. Nonetheless, the Federal Circuit has had to frequently correct the PTAB's misapplication of this nuance, especially of late (see "Personal Web Technologies, LLC v. Apple, Inc. (Fed. Cir. 2017)" as just one recent example). This case is an example of the Federal Circuit affirming a PTAB decision that "got it right" with respect to § 103.
Petitioner Securus appealed a final written decision from the PTAB in an inter partes review (IPR) of Global Tel*Link's U.S. Patent No. 7,853,243. The PTAB had ruled that Securus did not make out a proper prima facie case of obviousness.
The '243 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." Particularly, the "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." The biometric data can be fingerprints, voiceprints, retinal scans, etc.
Claim 1 of the '243 patent recites:
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.
Notably, the "during" step ends with a colon rather than a semicolon. This subtlety is easy to miss, but turned out to be important even if not determinative.
Securus argued that claim 1 was obvious over the combination of two references, Susen and Gainsboro. Susen "generally discloses the use of voice recognition to verify users before they can access a particular line on [a] PBX or mobile terminals," where "[v]oice recognition can be used in conjunction with PINs in the verification process." Gainsboro "addresses the problem of having employees of [penal] institutions review recorded phone calls for suspicious behavior." These phone calls are made by the inmate. Further, "[Gainsboro] includes automatic speech recognition (ASR) technology to existing telephone systems in these institutions so as to eliminate the need for these employees."
The Court first reviewed a claim construction dispute. Securus took the position that the "during" step only includes the immediately following "prompting" step, because the former ends with the colon as noted above and the later ends with a semicolon. The "recording" step and all following steps would not be part of this combined "during" step. In other words, Securus asserted that a proper construction of claim 1 would be:
* * *
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;
* * *
In contrast, Global Tel*Link's proposed construction was that the "during" step incorporated the next five steps. This construction would read as follows:
* * *
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; 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
* * *
The PTAB adopted Global Tel*Link's construction and found that the relevant reference, Susen, did not disclose all of these steps. The Court agreed, noting that "the most natural reading of the [during] 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," which includes all five elements following the "during" step. The Court found that this construction was logical and explicitly supported by the specification.
The PTAB also ruled 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." Securus challenged this part of decision as well.
The Court set forth the controlling law, noting that "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." Securus contended that since "[b]oth prior art patents are in the same field of telecommunications monitoring and control," one skilled in the art "would be motivated to combine Susen with Gainsboro to include monitoring said telephone call for a hook flash indicative of three-way calling."
The Court agreed with the PTAB, observing that "Securus' case against the patentability of the claimed invention amounts to mere conclusory statements, which fall short of some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness" as required by § 103. Continuing, the Court wrote that "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." Moreover, "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 . . . [s]uch short-cut logic 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."
Consequently, the Court upheld the PTAB's decision that Securus did not meet its burden to establish that the claims were obvious.
There are two main take home points to this case. The most important one should be obvious (pun intended) -- when making obviousness contentions, a well-reasoned motivation to combine must be present. The second is that claim formatting matters. Especially in software claims where there are steps and sub-steps, it can be important to make sure the claim structure itself clearly spells out these relationships. Some practitioners use enumeration, others use indentation or other types of formatting. Both have their pros and cons. Here, Global Tel*Link was fortunate that the PTAB and the Court saw things its way. But patentees should not count on the proper structure being imposed on claims that might not be 100% clear on their face.
Securus Technologies, Inc. v. Global Tel*Link Corp. (Fed. Cir. 2017)
Nonprecedential disposition
Panel: Circuit Judges Newman, Chen, and Stoll
Opinion by Circuit Judge Chen
