Final Written Decision Finding All Claims Not Unpatentable IPR2014-00785


Takeaway: Obviousness requires more than a showing that each element of a claim was known in the prior art; it also requires a reason that would have prompted an ordinary artisan to combine the prior art in the way the claimed invention does.

In its Final Written Decision, the Board held that Petitioner had not shown by a preponderance of the evidence that claims 1-10 of the ’591 patent are unpatentable. The Board denied Petitioner’s Motion to Exclude.

The ’591 patent relates to a method of affecting inmate conduct through providing discounted telephone rates based on certain criteria. The Board stated that all claim terms will be given their ordinary and customary meaning as would have been understood by an ordinary artisan at the time of the invention. Petitioner alleged, and the Board agreed, that an ordinary artisan in the art relevant to the ’591 patent.

Petitioner argued that claims 1-10 of the ’591 patent are obvious in view of Karacki and Gainsboro. Petitioner alleged that an ordinary artisan would have combined these references because the ordinary artisan would have recognized that Gainsboro’s system, using well-known time of day discounts, could be applied to Karacki’s inmate reward system. Petitioner relies upon the declaration of Dr. Forys to support its argument.

Patent Owner argued that Karacki and Gainsboro do not disclose the limitation, “reducing the telephone call charge rate for inmates that meet the measurement of conduct during incarceration.” Patent Owner argued that Karacki merely teaches that youth offenders can build up points that are exchanged for currency, whereby normal market prices are still paid by a youth offender for goods and services. Patent Owner argued that Karacki teaches away from claim limitation “reducing the telephone call charge rate” because Karacki identifies a problem with its reward system “not[ing] that some students have accumulated enough points that they refuse to perform the desired behaviors” and “[a]s points accumulate in their spending accounts over the weeks, some [students] feel they can afford to loaf.” Patent Owner argued that an ordinary artisan would not have combined Karacki and Gainsboro because the references lack structural or functional similarity, and thus, could not be combined. According to Patent Owner, Karacki fails to disclose any structure or function related to telephone call system, and only mentions telephone call in one phrase.

The Board was not persuaded that Petitioner had shown that an ordinary artisan would have combined the reference to arrive at the challenged claims. According to the Board, Karacki does not disclose reducing the rate of telephone calls as reward to an inmate for good behavior, and neither does Gainsboro. Thus, the Board concluded that Petitioner has not explained persuasively why an ordinary artisan would have applied the behavior modification program in Karacki to the automated calling system in Gainsboro so as to change the telephone call rate based on behavior, as recited in the claims. The Board stated that Petitioner is relying on hindsight bias to combine the references.

The Board also denied Petitioner’s Motion to Exclude Evidence because the items sought to be excluded go to the weight to be accorded to the evidence. The Board stated that it was capable of assigning appropriate weight to the evidence. Similarly, the Board denied Patent Owner’s Motion for Observation Regarding Cross-Examination Testimony because the Board had accorded the testimony appropriate weight in rendering its decision.

Paper 41: Final Written Decision
Dated: October 7, 2015
Patent 6,636,591
Before: Kevin F. Turner, Barbara A. Benoit, and Georgianna W. Braden
Written by: Braden