Intellectual Property > IP Newsflash > PTAB Denies Inter Partes Review Where Petitioner Fails to Provide a Contemporaneous Motivation to Combine Prior Art and the Prior Art Omits Several Claimed Limitations
10 Aug '16

On June 3, the Patent Trial and Appeal Board (PTAB) denied institution of an inter partes review on the basis that the Petitioner, Securus Technologies, Inc., failed to show that there would be a reasonable likelihood that the Petitioner’s arguments would prevail in establishing the unpatentability of the claims-at-issue. The patent-at-issue, U.S. Patent No. 7,256,816 (the “’816 Patent”), is generally directed to a system for conducting video visits between two participants, wherein the system minimizes latency and the video visits are monitored. The Patent Owner, Global Tel*Link Corporation, filed a preliminary response, arguing that the Petitioner failed to meet its burden for institution of inter partes review.

The Petitioner argued that the claimed video visit system is unpatentable under 35 U.S.C. § 103 as obvious in view of Bulriss, Hesse, and Rae. The PTAB disagreed, finding that the Petitioner failed to meet its burden of showing (1) a proper motivation to combine the prior art references and (2) that the prior art disclosed each limitation of the claims of the ’816 Patent.

With respect to the motivation to combine the prior art references, the Petitioner argued that problems regarding latency disclosed in the ’816 Patent would provide the necessary motivation. However, the PTAB found that the Petitioner provided no evidence that those problems were actually known in the art before the invention of the ’816 Patent. In particular, the Patent Owner’s own statements in the ’816 Patent were insufficient to show that the problems addressed by the ’816 Patent were known to anyone other than the inventors.

Regarding the missing claim limitations, the PTAB held that the Petitioner failed to show that the prior art disclosed two limitations of the claims of the ’816 Patent: (1) the monitoring of the video visits and (2) scheduling of the video visits in advance. The PTAB noted that the section of Bulriss relied on by the Petitioner to disclose monitoring of video visits did not explicitly disclose monitoring. Instead, according to the PTAB, the Petitioner conflated two separate modes of operation disclosed in Bulriss—one mode is unmonitored and the other mode is broadcast to all users, but not necessarily monitored. The PTAB also agreed with the Patent Owner that Bulriss failed to disclose, and even taught away from, scheduling video visits in advance. The system in Bulriss facilitates contemporaneous communications within a courtroom. The PTAB reasoned that such contemporaneous communications are not amenable to scheduling because they must occur at the time of the courtroom proceeding. Accordingly, the PTAB found that the Petitioner failed to meet its burden and declined to institute the requested inter partes review.

Securus Techs., Inc. v. Global Tel*Link Corp., Case IPR2016-00267 (PTAB June 3, 2016). [Turner (opinion), Benoit, and Braden]