Instituting Post Grant Review on Obviousness but not Patent-Ineligibility Grounds PGR2015-00013


Takeaway:  Analysis of a claim with respect to patent eligibility under Section 101 requires consideration of the claim as a whole, and the recitation of an abstract idea does not render the claim unpatentable where the claim does not attempt to preempt the idea.

In its Decision, the Board found that the Petition “demonstrates it is more likely than not that at least one of the challenged claims is unpatentable,” and instituted post-grant review of claims 1-20 of the ’280 patent.  The ’280 patent “relates to creating, maintaining, and making available communication detail records (CDRs) including media in ‘controlled-environment facilities.’”

The Board first addressed the eligibility of the ’280 patent for post-grant review, which is available for a patent “that contains or contained at any time a claim to a claimed invention that has an effective filing date on or after March 16, 2013.”  In addition, a petition “may only be filed not later than the date that is 9 months after the date of the grant of the patent or of the issuance of a reissue patent.”  The Board found that the ’280 patent qualifies for post-grant review.

The Board then turned to claim construction under the broadest reasonable construction in light of the specification.  Although Petitioner offered an undisputed construction for one claim term, the Board found that no claim term needs an express construction.

Next, the Board addressed Patent Owner’s argument that the Petition should be denied for Petitioner’s alleged failure to identify all real parties-in-interest.  The Board noted that Patent Owner raised this same argument prior to filing its Preliminary Response in a Motion for Additional Discovery.  The Board was not convinced by the arguments in the Motion and adopted the analysis in its Order denying the Motion in refusing to deny the Petition on this ground.

The Board then addressed patent-eligibility of claims 1-20 under Section 101.  Petitioner alleged that claims 1-20 are drawn to the “abstract concept of ‘identifying a party to a communication using biometric information,’ which is ‘a ubiquitous part of the human experience’ and attempts to ‘preempt an idea that itself has been routinely performed by humans with a pen and paper for scores of years.’”  Analyzing claim 1 as a whole, the Board found that the claim recites “more than merely identifying a party to a communication,” and therefore, found that Petitioner did not establish that it is more likely than not that claims 1-20 are patent-ineligible.

The Board next analyzed the asserted grounds of obviousness.  First, with respect to the alleged obviousness of claims 1-4, 7-9, 11, 15, and 18 over Reinhold and Walters, the Board was persuaded that the Petition and the supporting evidence established that it is more likely than not that the challenged claims are unpatentable.

With regard to the alleged obviousness of claims 5, 6, 13, 16, and 20 over Reinhold, Walters, and Dudovich, and obviousness of claims 10, 12, 14, 17, and 19 over Reinhold, Walters, and Gongaware, Patent Owner did not offer counter arguments to these grounds, and the Board found that Petitioner established that it is more likely than not the challenged claims are unpatentable.

Finally, the Board exercised its discretion to deny institution of review based on two additional obviousness grounds “for reasons of administrative necessity to ensure timely completion of the instituted proceeding.”

Global Tel*Link Corporation v. Securus Technologies, Inc., PGR2015-00013
Paper 18: Decision on Institution of Post-Grant Review
Dated: December 8, 2015
Patent: 8,855,280 B1
Before: Kevin F. Turner, Barbara A. Benoit, and Georgianna W. Braden
Written by: Turner