Final Written Decision Holding that CIP Not Presumed to be Entitled to Earlier Filing Date IPR2014-00824


Takeaway: A continuation-in-part application is not presumed to be entitled to the filing date of an earlier filed application, and the burden of production falls on the party asserting that an application is entitled to an earlier filing date.

In its Final Written Decision, the Board found that, of the challenged claims 1-20, Petitioner had shown by a preponderance of the evidence that claims 1, 3, 4, 6, 7, 10, 13, 19, and 20 of the ’260 patent are unpatentable.  The Board was not persuaded that claims 2, 5, 8, 9, 11, 12, and 14-18 are unpatentable.  The ’260 patent “describes providing centralized inmate management and call processing capabilities to controlled-environment facilities, such as prisons.”

The ’260 patent issued from a patent application claiming priority to a long chain of applications.  As the Board summarized:

The ’260 patent, titled “Inmate Management and Call Processing Systems and Methods,” issued December 25, 2012 from an application that is a continuation of an application filed July 12, 2007 (U.S. Patent Appln. No. 11/777,168, “parent”), which, in turn, is a continuation-in-part of an application filed on August 15, 2003 (U.S. Patent Appln. No. 10/642,532, “grandparent”). The parent issued as U.S. Patent No. 7,529,357 (Ex. 3004, “the ’357 patent”), and the grandparent issued as U.S. Patent No. 7,899,167 (Ex. 3003, “the ’167 patent”). Both the ’260 patent and the ’357 patent include additional description not part of the ’167 patent.

The Board first addressed arguments related to whether the Spadaro reference qualifies as prior art to only challenged claims 2, 5, 8, 9, 11, 12, and 14-18 in light of the ’260 patent’s claims to an earlier filing date.  In this regard, Patent Owner argued that Spadaro should be disqualified under 35 U.S.C. § 103(c)(1) because the reference only qualifies as prior art under 35 U.S.C. § 102(e), and the subject matter of Spadaro and the claimed invention were “owned by the same person or subject to an obligation of assignment to the same person.”

The Board began its analysis by discussing the allocation of the burdens of proof.  The Board noted that Petitioner has the burden of persuasion to prove unpatentability by a preponderance of the evidence, and that this burden never shifts to Patent Owner.  Petitioner also has the initial burden of production, which in this case was satisfied by the argument in the Petition that Spadaro is prior art under Section 102(e) and that the claims are unpatentable over certain prior art combinations under Section 103(a).

Upon Petitioner’s satisfaction of its initial burden, the burden of production then shifts to Patent Owner “to argue or produce evidence that Spadaro was not prior art.”  Patent Owner argued, citing assignment records of Spadaro, the ’357 patent, and the ’260 patent, that Spadaro and the challenged ’260 patent were owned by the same person at the time of the invention, and therefore, Spadaro does not qualify as prior art pursuant to Section 103(c)(1).  The Board was persuaded that Patent Owner “met its burden of production to show the subject matter in Spadaro and the claimed invention of the ’260 patent were assigned to the same person at the time the claimed invention was made.”

The burden of production again shifted to Petitioner to show Spadaro was not disqualified.  Petitioner argued that Spadaro was not disqualified because (1) “Patent Owner did not provide sufficient argument or evidence to establish that the ’260 patent was not entitled to the filing date of the ’167 patent (grandparent)” and (2) “Patent Owner did not produce evidence identifying the time of conception as required because ‘at the time the claimed invention was made” required by § 103(c) means at the time of conception.”  Therefore, Petitioner asserted that Patent Owner had not proven common ownership at the relevant time.

The Board noted that Petitioner’s first argument implied a presumption that a continuation-in-part application “is entitled to the filing date of the earlier filed application.  The Board stated that the Federal Circuit had rejected the presumption, and because Petitioner sought to use the filing date of the ’167 patent (grandfather), Petitioner had the burden of production.  Moreover, the Board found that Petitioner had not met its burden to prove the challenged patent was entitled to the filing date of the ’167 patent.

With regard to Petitioner’s second contention, the Board noted that although it agreed with Petitioner that “invention” primarily means “conception,” invention according to Section 102 means a complete conception, which requires the invention be enabled.  The Board was not persuaded by Petitioner’s argument and distinguished the case law cited by Petitioner.  In particular, Petitioner relied upon cases concerning the on-sale bar and related determinations related to when an invention was “ready for patenting.”  “The timing of a commercial-offer-for-sale relative to when the invention was ready-for-patenting in determining § 102(b) on-sale bar has limited probative value in determining what Patent Owner is required to show to meet its burden of production regarding disqualification under § 103(c)(1).”  The Board concluded:

Petitioner has not demonstrated persuasively that “the time the invention was made” under § 103(c)(1) requires Patent Owner to have done more than what Patent Owner has done in this case. As noted previously, Patent Owner has (i) represented “the time the invention was made” for each of the claims at issue is the filing date of the parent because claims at issue “are based on material not constructively reduced to practice until the filing of the [parent]” and (ii) shown Spadaro was assigned to Evercom nearly three-and-a-half years prior to conception and constructive reduction to practice of the claimed invention. . . . No evidence of record indicates that the claimed inventions were made prior to the start of that lengthy period following the assignment of Spadaro.

Therefore, the Board found that Spadaro is disqualified as prior art as to claims 2, 5, 8, 9, 11, 12, and 14-18 of the ’260 patent, and Petitioner therefore did not demonstrate by a preponderance of the evidence that claims 2, 5, 8, 9, 11, 12, and 14-18 are unpatentable based on Spadaro.  The Board then addressed the merits of the patentability challenges as to the remaining claims (claims 1, 3, 4, 6, 7, 10, 19, and 20).

The Board addressed claim construction under the broadest reasonable construction in light of the specification.  The Board only construed the term “call application management system,” disagreeing with Patent Owner’s proposal as importing limitations from the specification.  The Board defined the term to mean “a system that performs the enumerated function—‘connecting a call to or from the telephone terminals over a telephone carrier network responsive to receiving a request for connecting the call.’”

The Board then analyzed the cited references in turn.  The Board was persuaded that Petitioner had shown by a preponderance of the evidence that “that the subject matter recited in claim 1 as a whole would have been obvious to one of ordinary skill in the art in view of Spadaro and Hodge,” even though Spadaro had been previously considered during examination.  As to claims 10, 19, and 20, Patent Owner argued that the claim charts in the Petition constituted improper incorporation by reference because they “refer back to previous sections of analysis in the Petition.”  The Board disagreed for the same reasons provided in its Decision on Institution.  The Board was persuaded by Petitioner’s arguments as to claim 10 for similar reasons discussed with respect to claim 1.  The Board was also persuaded by Petitioner regarding dependent claims 3, 4, 6, 7, 19, and 20, which Patent Owner did not specifically argue.

As to the ground of alleged obviousness of claim 13 in view of Spadaro, Hodge, and Cree, the Board found that Patent Owner’s arguments “unduly focus on only capabilities described in Cree” rather than the “teaching of Cree in combination with the teaching of Hodge.”  Moreover, the Board was not persuaded by Patent Owner’s reliance upon the Examiner’s analysis during prosecution because Petitioner’s arguments differed from those of the Examiner.  Thus, the Board determined that Petitioner demonstrated by a preponderance of the evidence that claim 13 is unpatentable over Spadaro, Hodge, and Cree.

Accordingly, the Board found that Petitioner had shown that claims 1, 3, 4, 6, 7, 10, 19, and 20 are unpatentable, and Petitioner had not shown that claims 2, 5, 8, 9, 11, 12, or 14–18 are unpatentable.

Finally, in a footnote, the Board addressed the parties’ respective Objections to Demonstrative Exhibits.  Because the exhibits were only considered “to the extent that they were consistent” with the arguments and evidence of record, the Board overruled the objections.

Global Tel*Link Corporation v. Securus Technologies, Inc., IPR2014-00824
Paper 36: Final Written Decision
Dated: December 2, 2015
Patent: 8,340,260 B1
Before: Kevin F. Turner, Barbara A. Benoit, and Georgianna W. Braden
Written by: Benoit
Related Proceedings: IPR2014-00493 (U.S. Patent No. 7,899,167 B1); IPR2014-00749 (U.S. Patent No. 8,577,003 B2); IPR2014-00825 (U.S. Patent No. 7,529,357 B1)