Callcopy, Inc.v.Verint Americas, Inc.Download PDFPatent Trial and Appeal BoardFeb 5, 201411395498 (P.T.A.B. Feb. 5, 2014) Copy Citation Trials@uspto.gov Paper 14 571-272-7822 Date Entered: February 5, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ CALLCOPY, INC. Petitioner v. VERINT AMERICAS, INC. Patent Owner ____________ Case IPR2013-00490 Patent 7,852,994 B1 ____________ Before JENNIFER S. BISK, MITCHELL G. WEATHERLY, and PATRICK M. BOUCHER, Administrative Patent Judges. BOUCHER, Administrative Patent Judge. DECISION Denying Institution of Inter Partes Review 37 C.F.R. § 42.108 IPR2013-00490 Patent 7,852,994 2 On August 2, 2013, CallCopy, Inc. (―Petitioner‖), filed a petition (Paper 3) to institute an inter partes review of claims 1–23 of U.S. Patent No. 7,852,994 (―the ’994 patent‖) pursuant to 35 U.S.C. §§ 311–319. A (second) corrected petition (Paper 13, ―Pet.‖) was filed on September 15, 2013. Patent Owner did not file a preliminary response. For the reasons that follow, the Board has determined not to institute an inter partes review. I. BACKGROUND The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a): THRESHOLD—The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition. Petitioner challenges claims 1, 3–10, 12–16, and 19 as unpatentable under 35 U.S.C. § 102(b) and challenges claims 1–23 as unpatentable under 35 U.S.C. § 103(a). Pet. 4–5. A. The ’994 Patent (Ex. 1001) The ’994 patent, titled ―Systems and Methods for Recording Audio,‖ issued on December 14, 2010, based on Application No. 11/395,498. The ’994 patent relates to recording audio. Ex. 1001, col. 1, l. 37. Figure 2 of the ’994 patent is reproduced below: IPR2013-00490 Patent 7,852,994 3 Figure 2 shows system 100 that incorporates central equipment 102, operative to route audio to and from users by receiving audio inputs 104 and directing audio outputs 105–107 to distribution devices 108, 110, and 112. Id. at col. 3, l. 52 – col. 4, l. 5. The distribution devices ―are operative to permit selection and routing of audio to various communication devices, such as handsets, microphones, hands-free units and speakers, based on user inputs received at the distribution devices.‖ Id. at col. 4, ll. 5–9. Communication taps 120–128, such as depicted in the drawing at distribution device 108, handset 114, microphone 116, speaker 118, and IPR2013-00490 Patent 7,852,994 4 central equipment 102, are ―operative to receive audio and provide audio information for recording.‖ Id. at col. 4, ll. 25–26. Audio information corresponding to an audio communication is received, as is parameter information ―corresponding to a manner in which the audio communication is to be provided to a user in audible form.‖ Id. at col. 3, ll. 29–33. ―[P]arameter information‖ is described in the ’994 patent as including ―indications of the date/time of a communication and/or recording thereof, the device used to provide communication to a user in audible form.‖ Id. at col. 3, ll. 39–42. The audio information and the parameter information are provided in the form of internet-protocol (―IP‖) packets, and are recorded. Id. at col. 3, ll. 36–38. The audio can be compressed and/or mixed prior to being directed for recording. Id. at col. 3, ll. 38–39. B. Exemplary Claim Claim 1 of the ’994 patent is exemplary of the claims at issue: 1. A method for recording audio, comprising: receiving audio information corresponding to an audio communication at a communication tap; receiving parameter information corresponding to a manner in which audio communication is to be provided to a user in audible form, the parameter information being information about the audio communication as it was received by the communication tap; providing, by the communication tap, the audio information and the parameter information in the form of Internet Protocol (IP) packets; and IPR2013-00490 Patent 7,852,994 5 recording the audio information and the parameter information provided by the IP packets at a recorder. C. Asserted Grounds of Unpatentability 1. References Relied Upon Petitioner relies on the following references as evidence of unpatentability: Azriel (Ex. 1003) US 7,286,652 B1 Oct. 23, 2007 Dev (Ex. 1004) US 5,627,819 May 6, 1997 Väänänen (Ex. 1005) WO 02/35307 A2 May 2, 2002 Noguchi (Ex. 1006) US 2002/0027977 A1 Mar. 7, 2002 Siegrist (Ex. 1007) US 2002/0101854 A1 Jan. 30, 2001 Nguyen (Ex. 1008) EP 0532509 B1 Mar. 24, 1993 Yano (Ex. 1009) JP 2003-289386 Oct. 10, 2003 2. Asserted Grounds Petitioner challenges claims 1–23 of the ’994 patent on the following grounds: Reference(s) Basis Claims Challenged Noguchi § 102(b) 1, 3–6, 9, 10, and 12–16 Noguchi § 103(a) 1, 3–6, 9, 10, 12–16, and 21 Noguchi and Dev § 103(a) 1, 3–6, 9, 10, 12–16, and 21 Noguchi and Azriel § 103(a) 2 Noguchi and Siegrist § 103(a) 2, 11, 14, 22, and 23 Noguchi and Nguyen § 103(a) 7, 8, and 17–20 Väänänen § 102(b) 1, 9, 10, and 12–16 Väänänen § 103(a) 1, 9, 10, 12–16, and 21 IPR2013-00490 Patent 7,852,994 6 Reference(s) Basis Claims Challenged Väänänen and Dev § 103(a) 1, 9, 10, 12–16, and 21 Väänänen and Azriel § 103(a) 2 Väänänen and Siegrist § 103(a) 2, 11, 14, 22, and 23 Väänänen and Nguyen § 103(a) 7, 8, and 17–20 Yano § 102(b) 1, 4–10, 12, 13, 15–17, and 19 Yano § 103(a) 1, 4–10, 12, 13, 15–17, 19, and 21 Yano and Dev § 103(a) 1, 4–10, 12, 13, 15–17, 19, and 21 Yano and Siegrist § 103(a) 22 D. Related Proceedings The ’994 patent is currently involved in Verint Systems, Inc. et al. v. CallCopy, Inc., Case No. 1:13-cv-00562-GMS, in the District of Delaware. Pet. 1. II. DISCUSSION We turn now to Petitioner’s asserted grounds of unpatentability to determine whether Petitioner has met the threshold standard of 35 U.S.C. § 314(a). A. Claim Construction Consistent with the statute and legislative history of the Leahy-Smith America Invents Act, Pub. L. 112-29, 125 Stat. 284, 329 (2011), the Board interprets claims using the broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see also Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). Under that construction, claim terms are given their ordinary and customary meaning as would be understood by one of ordinary skill in the IPR2013-00490 Patent 7,852,994 7 art in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). That ordinary and customary meaning applies unless the inventor, as his or her own lexicographer, has set forth in the specification a special meaning for the term. Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998). Such definitions must be set forth with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We set forth constructions of certain terms that appear in the claims below. Although Petitioner proffers further constructions, we find it unnecessary to construe additional terms for purposes of this decision. 1. “audio communication” Exemplary embodiments of the ’994 patent are ―implemented in the context of a compliance-recording environment of a trading room, in which traders use a telephony system to facilitate trading.‖ Ex. 1001, col. 2, ll. 44– 46. Although the ’994 patent has ―no intention to limit the invention to this particular type of environment,‖ Ex. 1001, col. 2, ll. 47–48, this context is instructive because the ’994 patent explains that ―disputes can arise in a trading room due to over-hearing and/or mis-hearing of communications provided by [telephony] equipment.‖ Id. at col. 1, ll. 10–12. Applying the broadest reasonable interpretation consistent with this context, we construe ―audio communication‖ as referring to a IPR2013-00490 Patent 7,852,994 8 communication effected with sound. This is similar to Petitioner’s proposed construction. Pet. 6. 2. “parameter information corresponding to a manner in which the audio communication is to be provided to a user in audible form” The ’994 patent provides no explicit definition of ―parameter information corresponding to a manner in which the audio communication is to be provided to a user in audible form,‖ although the phrase appears in block 12 of Figure 1. In proffering its proposed construction of the phrase as ―information relating to the presentation of the audio information of the audio communication to a user,‖ Petitioner notes, Pet. 6–7, that the ’994 patent provides examples of what is meant by ―parameter information‖: ―such information can include indications of the date/time of a communication and/or recording thereof, the device used to provide communication to a user in audible form,‖ Ex. 1001, col. 3, ll. 39–43; ―the parameters can include a time associated with the audio, such as the time the audio was received,‖ id. at col. 4, ll. 51–52; and ―the parameters can include a designation of the communication device to and/or from which the audio is delivered and/or the volume control settings of the communication device,‖ id. at col. 4, ll. 53–56. We disagree with Petitioner’s proposed construction because it focuses only on the recitation of ―parameter information‖ and the examples of such parameter information provided by the ’994 patent. In construing the entire phrase, particularly including the recitation of ―corresponding to a IPR2013-00490 Patent 7,852,994 9 manner in which the audio communication is to be provided to a user in audible form‖ (emphasis added), we observe that the ’994 patent provides the following explanation: Of particular interest is the ability to replay the recorded communications in a manner closely corresponding to the manner in which the original communication was perceived by the user. Clearly, the manner in which the original communication was perceived is related, at least in part, to the device used to provide the communication to the user and the volume control settings of such a device. Thus, when the original communication was provided in audible form to a user via a desktop speaker, the parameter information associated with that speaker can be used to reconstruct the audio characteristics that the user experienced when listening to the communication. In some embodiments, this can be accomplished by correlating the stored parameter information associated with the speaker (at the time of the communication) with the stored audio information. Such reconstruction can even take place if the device used to replay the communication, e.g., a desktop speaker, was not the same type of device used when the original communication was being provided in audible form to the user. For instance, if the original communication was provided via a handset speaker, stored parameter information associated with the communication could be evaluated. Responsive thereto, the replay of the communication could be modified to closely correspond to the audio that was provided to the user via the handset speaker. In particular, the audio that is to be replayed via a desktop speaker could be modified to be more indicative of audio that is provided via a handset speaker. Id. at col. 4, l. 60 – col. 5, l. 20 (emphases added). IPR2013-00490 Patent 7,852,994 10 In light of this description regarding the manner in which audio communications are perceived, we construe the full limitation of ―parameter information corresponding to a manner in which the audio communication is to be provided to a user in audible form‖ as information relating to how the audio communication is presented to a user. Examples of such information include information related to the device used to provide the audio communication to a user and related to the volume control settings of such a device. 3. “means for recording the audio information and the parameter information” We agree with Petitioner, Pet. 8, that a proper construction of ―means for recording the audio information and the parameter information‖ is made in accordance with 35 U.S.C. § 112, sixth paragraph. The function of such means is to record the audio information and the parameter information. Structure disclosed for performing such a function includes both volatile memory (―random access memory RAM, such as DRAM, SRAM, SDRAM, etc.,‖ Ex. 1001, col. 8, ll. 36–37) and nonvolatile memory (―ROM, hard drive, tape, CDROM, etc.,‖ id. at col. 8, ll. 38–39), as well as ―electronic, magnetic, optical, and/or other types of storage media,‖ id. at col. 8, ll. 39– 40. B. Asserted Grounds Based on Noguchi (Ex. 1006) Noguchi ―relates to [a] data recording technique for . . . Internet telephony.‖ Ex. 1006 ¶ 2. Figure 1 of Noguchi is reproduced below: IPR2013-00490 Patent 7,852,994 11 Figure 1 shows a configuration of a data recording system for Internet telephony for an illustrative embodiment of Noguchi. As shown, the Internet telephony system includes multiple Internet-protocol (―IP‖) telephone terminals 100 and 100A and personal computer 400 for data recording, interconnected with IP-based network 500. Id. at ¶ 54. Noguchi contemplates distinct operational modes for the telephone terminals that include a ―recording mode‖ and a ―non-recording mode.‖ Id. at ¶ 64. These modes include many similar characteristics, including the generation of speech IP packets that correspond to a user’s voice data for transmission to an exchange 200, id. at ¶¶ 65, 67, and receipt of speech IP packets sent from the exchange, id. at ¶¶ 65, 68. The recording mode differs from the non- IPR2013-00490 Patent 7,852,994 12 recording mode by including an operation in which IP packets corresponding to the user’s voice also are transmitted to the recording computer. Id. at ¶ 73. Independent claim 1 of the ’994 patent recites ―receiving parameter information corresponding to a manner in which audio communication is to be provided to a user in audible form, the parameter information being information about the audio communication as it was received by the communication tap.‖ Independent claim 15 includes a corresponding limitation. Petitioner contends that Noguchi links the audio data with the real time data that includes information identifying on which phone line the recording originated and the date/time of the recording. This link with real time data is within the scope and definition of ―parameter information‖ . . . . Pet. 14–15 (emphasis added). Although we agree that information identifying (1) the phone line on which the recording originated and (2) the date and time of the recording are ―parameter information,‖ Petitioner has not demonstrated that such information ―correspond[s] to a manner in which the audio communication is to be provided to a user in audible form.‖ Specifically, such information does not relate to how the audio communication is presented to a user, as we have construed the limitation. The information identified by Petitioner relates instead to the temporal and situational origins of the audio communication. Petitioner has not identified IPR2013-00490 Patent 7,852,994 13 adequately any teaching or suggestion in Noguchi that such information relates to how the audio communication is presented to a user. Therefore, we conclude that Petitioner has not demonstrated a reasonable likelihood of prevailing on its contention that independent claims 1 and 15 are unpatentable over Noguchi under 35 U.S.C. §§ 102(b) or 103(a). We similarly conclude that Petitioner has not demonstrated a reasonable likelihood of prevailing on its contentions that dependent claims 2–14 and 16–21 are unpatentable over Noguchi alone or in combination with other art because those contentions rely on the same argument. Independent claim 22 recites a similar limitation, further specifying that ―the parameter information compris[es] information corresponding to an identification of a communication device used to provide the audio communication to the user in audible form and an indication of volume control settings of the communication device at a time the audio communication was being provided to the user in audible form.‖ Petitioner contends that ―Noguchi . . . disclose[s] the identification of a communication device as a parameter‖ and that ―Siegrist further discloses the parameter of volume control settings.‖ Pet. 58. Petitioner asserts: It would have been obvious to one of ordinary skill in the art to store a volume control setting parameter, as taught by Siegrist, while receiving audio information during use of the communication device in recording IP telephony to accurate[ly] reproduce the recorded audio information. IPR2013-00490 Patent 7,852,994 14 Pet. 58–59. Such a conclusory statement insufficiently articulates reasoning with rational underpinnings to support the legal conclusion of obviousness. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Accordingly, we conclude that Petitioner has not demonstrated a reasonable likelihood of prevailing on its contention that independent claim 22, and claim 23, which depends therefrom, are unpatentable over the combination of Noguchi and Siegrist. C. Asserted Grounds Based on Väänänen Väänänen ―relates to a method for a packet switched voice recording with which telephone calls can be recorded and stored in a logical and consistent way.‖ Ex. 1005, p. 1, ll. 4–5. Petitioner characterizes Väänänen as disclosing ―a subscriber terminal . . . that records packet voice recordings . . . to a data file, wherein the data file is signed or named with identifying information . . . related to the conversation recorded.‖ Pet. 15. Petitioner contends that such identifying information corresponds to the ―parameter information‖ recited in the claims. Id. at 15. Väänänen provides examples of such identifying information as including the time of the conversation, the date of the conversation, the telephone number or IP address of a third party and/or multiparty, the name of the caller, the telephone number of the caller, the duration of the conversation, or the name of a third party and/or third multiparty. Ex. 1005, p. 5, ll. 28–32. ―In some preferable embodiments the data files are organized to an order of priority within a directory on the basis of, e.g. IPR2013-00490 Patent 7,852,994 15 alphabetical order, time and date, duration or other identifying information or data file properties.‖ Id. at p. 6, ll. 6–8. Similar to our reasoning above for the grounds based on Noguchi, we agree with Petitioner that such identifying information is ―parameter information.‖ But we are not persuaded that Petitioner has demonstrated that such identifying information ―correspond[s] to a manner in which the audio communication is to be provided to a user in audible form,‖ as recited in the independent claims. Such identifying information does not relate to how the audio communication is presented to a user, as we have construed the limitation. Petitioner also presents arguments that rely on the combination of Väänänen and Siegrist, similar to those we considered above for the combination of Noguchi and Siegrist. Pet. 56–57. For substantially the same reasons, we find such arguments unpersuasive. Accordingly, we conclude that Petitioner has not demonstrated a reasonable likelihood of prevailing on its contention that claims 1, 2, and 7– 23 are unpatentable over Väänänen alone or in combination with other art. D. Grounds Based on Yano Yano ―relates to a communication system that stores voice information transmitted and received between two communication devices.‖ Ex. 1009 ¶ 1. Similar to the ’994 patent, Yano presents its teachings in the context of trading transactions, noting the importance of having accurate records of transaction instructions made by voice. See id. at ¶ 2. Yano IPR2013-00490 Patent 7,852,994 16 specifically identifies problems that may arise when only portions of a set of transactions are recorded or when recorded content subsequently is altered or edited. Id. at ¶ 3. To address these problems, Yano discloses a communications system that may capture and record communications made between two ―communication devices,‖ such as ―telephones, mobile phones and the like,‖ one owned by a customer and one owned by a trading company. Id. at ¶ 15. While a connection is established between the two communication devices, an information processing device ―stores the received voice information as a voice file with a predetermined data format.‖ Id. at ¶ 38. Such a voice file is stored in a database that includes an assigned ―voice call number‖ or ―speech communication number,‖ and is associated with a file name of the voice file. Id. at ¶ 38; Fig. 6. Such storage allows ―instructions for transactions communicated by transmission and reception of voice information [to] be reliably executed and reliably checked after the transaction is executed.‖ Id. at ¶ 4. Petitioner observes, Pet. 16, that Yano additionally teaches associating the voice file with identification information that identifies the communication devices involved with the communication. See Ex. 1009 ¶¶ 5, 7, 12, 55. We are not persuaded that Petitioner has demonstrated that these pieces of information are ―parameter information corresponding to a manner in which the audio communication is to be provided to a user in audible form.‖ First, although we agree that the file name and speech IPR2013-00490 Patent 7,852,994 17 communication number are ―parameter information,‖ we conclude, similar to our analysis of the grounds based on Noguchi and Väänänen, that such information does not relate to how the audio communication is presented to a user. Second, Yano’s disclosure of the communication-device identification information is limited, and is only superficially similar to the ’994 patent’s disclosure of using device information in that both the ’994 patent and Yano disclose recording device information. The ’994 patent describes using the communication-device information to reconstruct audio communications in a way that allows them to be simulated even on devices different from those on which the communications were collected. Ex. 1001, col. 4, l. 60 – col. 5, l. 20. In contrast to disclosing ―parameter information corresponding to a manner in which the audio communication is to be provided to a user in audible form,‖ Yano’s disclosure of recording device information is limited to providing a verification mechanism for avoiding fraud: The other object of the present invention is to provide a communication system and a repeater that is used in said communication system wherein identification information that identifies communication devices is stored together with voice information so that the contents of voice information can be reliably checked after a trade is executed. Id. at ¶ 5; see also id. at ¶¶ 7, 12, 55. Petitioner also presents arguments that rely on the combination of Yano and Siegrist, similar to those we considered above for the combination IPR2013-00490 Patent 7,852,994 18 of Noguchi and Siegrist. Pet. 56–57. For substantially the same reasons, we find such arguments unpersuasive. Accordingly, we conclude that Petitioner has not demonstrated a reasonable likelihood of prevailing on its contention that claims 1, 4–10, 12, 13, 15–17, 19, 21, and 22 are unpatentable over Yano alone or in combination with other art. E. Conclusion We conclude that Petitioner has not demonstrated a reasonable likelihood that at least one of the challenged claims is unpatentable based on the asserted grounds. Therefore, we do not institute an inter partes review on any of the asserted grounds as to any of the challenged claims. III. ORDER In consideration of the foregoing, it is hereby: ORDERED that the petition is denied as to all challenged claims of the ’994 patent. IPR2013-00490 Patent 7,852,994 19 PETITIONER: Error! Reference source not found. Rex W. Miller, II ERROR! REFERENCE SOURCE NOT FOUND. Error! Reference source not found. rmiller@hahnlaw.com PATENT OWNER: Error! Reference source not found. Error! Reference source not found. ERROR! REFERENCE SOURCE NOT FOUND. Error! Reference source not found. Error! Reference source not found. Copy with citationCopy as parenthetical citation