Callcopy, Inc.v.Verint Americas, Inc.Download PDFPatent Trial and Appeal BoardFeb 5, 201311540086 (P.T.A.B. Feb. 5, 2013) Copy Citation Trials@uspto.gov Paper 11 Tel: 571-272-7822 Entered: February 5, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD CALLCOPY, INC. Petitioner v. Verint Americas, Inc. Patent Owner Case IPR2013-00486 Patent 7,613,290 B2 Before JENNIFER S. BISK, MITCHELL G. WEATHERLY, and PATRICK M. BOUCHER, Administrative Patent Judges. WEATHERLY, Administrative Patent Judge. DECISION Denying Institution of Inter Partes Review 37 C.F.R. § 42.108 Case IPR2013-00486 Patent 7,613,290 B2 2 I. INTRODUCTION A. Background CallCopy, Inc. (―CallCopy‖ or ―Petitioner‖) filed a second corrected petition (Paper 10, ―Pet.‖) to institute an inter partes review of claims 1–49 (the ―challenged claims‖) of U.S. Patent No. 7,613,290 B2, issued Nov. 3, 2009, based on an application filed Sep. 29, 2006 (Ex. 1101, the ―’290 patent‖). 35 U.S.C. § 311. Verint Americas, Inc. (―Verint‖ or ―Patent Owner‖) did not file a Preliminary Response on or before the deadline of November 8, 2013. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides as follows: (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. 35 U.S.C. § 314(a). CallCopy challenges claim 49 as unpatentable under 35 U.S.C. § 102(b) and claims 1–49 as unpatentable under 35 U.S.C. § 103(a). Pet. 5–7. Based on our review of the record, we conclude that CallCopy is not reasonably likely to prevail in demonstrating that at least one of the challenged claims is not patentable. CallCopy identifies the following prior art as relevant to its challenges to the patentability of claims 1–49: Reference Date EP 1 111 892 A2 (Ex. 1103, “EP ’892”) Jun. 27, 2001 WO 03/058914 A1 (Ex. 1104, “WO ’914”) Jul. 17, 2003 Case IPR2013-00486 Patent 7,613,290 B2 3 Reference Date US 2003/0190032 A1 (Ex. 1105, “US ’032”) Oct. 9, 2003 EP 1 389 862 A1 (Ex. 1106, “EP ’862”) Feb. 18, 2004 WO 00/74355 A1 (Ex. 1107, “WO ’355”) Dec. 7, 2000 US 6,760,861 B2 (Ex. 1108, “Fukuhara”) Jul. 6, 2004 Soam Acharya & Brian Smith, Middleman: A Video Caching Proxy Server, 10 TH INTERNATIONAL WORKSHOP ON NETWORK AND OPERATING SYSTEM SUPPORT FOR DIGITAL AUDIO AND VIDEO, June 26–28, 2000, Chapel Hill, NC (Ex. 1109, “Acharya”) Jun. 2000 Jong T. Park, Resilience in GMPLS Path Management: Model and Mechanism, IEEE COMMUNICATIONS MAGAZINE (July 2004) (Ex. 1110, “Park”) Jul. 2004 Azer Bestavros, et al., Distributed Packet Rewriting and its Application to Scalable Server Architectures, COMPUTER SCIENCE DEPT., BOSTON UNIV. (Ex. 1111, “Bestavros”) Dec. 1, 1997 N. Gautam, Performance analysis and optimization of web proxy servers and mirror sites, EUROPEAN JOURNAL OF OPERATIONAL RESEARCH 142 (Ex. 1112, “Gautam”) 2002 Sophia Scoggins, Ph.D., Security Challenges for CALEA in Voice over Packet Networks, TEXAS INSTRUMENTS WHITE PAPER (Ex. 1113, “Scoggins”) Apr. 2004 F. Baker, et al., Cisco Architecture for Lawful Intercept in IP Networks, CISCO SYSTEMS NETWORK WORKING GROUP (Ex. 1114, “Baker”) Oct. 2004 W. Marshall & F. Andreasen, Private Session Initiation Protocol (SIP) Proxy-to-Proxy Extensions for Supporting the PacketCable Distributed Call Signaling Architecture, CISCO SYSTEMS NETWORK WORKING GROUP (Ex. 1115, “Marshall”) Oct. 2003 Case IPR2013-00486 Patent 7,613,290 B2 4 Reference Date Jim Quiggins & Nathan Stearns, A New Approach to Contact Center Optimization, IEX WHITE PAPER (Ex. 1116, “Quiggins”) 2004 US 6,970,829 B1 (Ex. 1117, “Leamon”) Nov. 29, 2005 US 2005/0043986 A1 (Ex. 1118, “McConnell”) Feb. 24, 2005 Wikipedia, Proxy Server, http://web.archive.org/web/20050810013021/http://en.wikipedi a.org/wiki/Proxy_server (Ex. 1119, “Wikipedia – Proxy Server”) Aug. 9, 2005 CallCopy contends that the challenged claims are unpatentable under 35 U.S.C. §§ 102 and/or 103 based on the following grounds (Pet. 14–48): References Basis Claims challenged EP ’892 § 102(b) 49 EP ’892 and WO ’914 § 103 1, 2, 4, 5, 8–14, 24, 25, 27, 28, 31–39, and 49 EP ’892, WO ’914, and Acharya § 103 3, 6, 7, 26, 29, and 30 EP ’892, WO ’914, and Park § 103 15 and 40 EP ’892, WO ’914, Park, and Bestavros § 103 16 and 41 EP ’892, WO ’914, Park, and Gautam § 103 17 and 42 EP ’892, WO ’914, and WO ’355 § 103 18 and 43 EP ’892, WO ’914, and WO ’355 and/or Scoggins § 103 19 and 44 EP ’892, WO ’914, and WO ’355 and/or Baker § 103 20, 21, 45, and 46 EP ’892, WO ’914, and WO ’355, and/or Baker, and/or Marshall § 103 22 Case IPR2013-00486 Patent 7,613,290 B2 5 References Basis Claims challenged EP ’892, WO ’914, Quiggins, and Leamon § 103 23 EP ’892, WO ’914, Quiggins, and McConnell § 103 47 and 48 US ’032 and EP ’862 § 103 1, 2, 4, 8–12, 24, 25, 27, 31–36, and 49 US ’032, EP ’862, and Acharya § 103 3, 6, 7, 26, 29, and 30 US ’032, EP ’862, WO ’355, and/or EP ’892 § 103 5 and 28 US ’032, EP ’862, and Fukuhara § 103 13, 14, 38, and 39 US ’032, EP ’862, and Park § 103 15 and 40 US ’032, EP ’862, Park, and Bestavros § 103 16 and 41 US ’032, EP ’862, Park, and Gautam § 103 17 and 42 US ’032, EP ’862, and WO ’355 § 103 18 and 43 US ’032, EP ’862, and WO ’355 and/or Scoggins § 103 19 and 44 US ’032, EP ’862, and WO ’355 and/or Baker § 103 20, 21, 45, and 46 US ’032, EP ’862, and WO ’355, and/or Baker, and/or Marshall § 103 22 and 37 US ’032, EP ’862, Quiggins, and Leamon § 103 23 US ’032, EP ’862, Quiggins, and McConnell § 103 47 and 48 For the reasons described below, we decline to institute an inter partes review of claims 1–49 on any of the alleged grounds of unpatentability. Case IPR2013-00486 Patent 7,613,290 B2 6 B. Related Proceedings CallCopy identified, as a related proceeding, the co-pending case in the United States District Court for the District of Delaware captioned Verint Sys., Inc. v. CallCopy Inc., Case Number 1:13-cv-00562-GMS, filed April 8, 2013. Pet. 1. The ’290 patent is alleged to be infringed in this litigation. See id. C. The Invention The ’290 patent, titled ―Recording Using Proxy Servers,‖ generally relates to ―recording media streams associated with interaction between customers and agents.‖ Ex. 1101, col. 1, ll. 5–7. Figure 1, which is reproduced below, illustrates an exemplary system for recording media communications using a proxy server. Figure 1 of the ’290 patent illustrates customer telephony system 105 including agent phones 110, 115, and 120, along with CTI server 125 and call control server 130, which collectively communicate to Case IPR2013-00486 Patent 7,613,290 B2 7 recording system 133 having proxy server 135, recorders 140, 145, and 150, and recording control server 155. The ’290 patent describes a customer telephony system 105 coupled to recording system 133 through one or more proxy servers 135. Ex. 1101, col. 3, ll. 40–50. The customer telephony system includes agent phones 110, 115, 120 coupled to computer-telephone integration (CTI) server 125. Id. Recording system 133 includes proxy server 135, recorders 140, 145, 150, and recording server 155. Id. Figure 2, which is reproduced below, ―illustrates an exemplary call flow in recording media streams associated with a call.‖ Id. at col. 6, ll. 22–23. Figure 2 illustrates the manner in which a call from customer 205 to agent phone 220 is handled by call control server 230 and proxy Case IPR2013-00486 Patent 7,613,290 B2 8 server 235 to effect recording of the conversation between customer and agent. Call control server 230 determines whether an incoming call from a customer is to be recorded and sends a call request to proxy server 235 and agent phone 220 to establish dialogs for recording the call via lines 225 and 237 using recorder 245. Id. at col. 6, ll. 23–38. After proxy server 235 establishes the dialog between call control server 230 and recorder 245, call control server 230 instructs agent phone 220 to send duplicate media streams of the call to recorder 245 via line 247. Id. at col. 6, ll. 35–45. D. Exemplary Claims Claims 1, 24, and 49, which are the independent claims in the ’290 patent and are illustrative of the claimed subject matter, recite: 1. A method for recording a communication session of a customer center communication system between a customer and an agent, comprising the steps of: communicating with a customer center communication system via a proxy server; determining whether to record a media stream associated with a communication session based on the communication between the customer center communication system and the proxy server; responsive to determining that the media stream is to be recorded, transmitting instructions to the customer center communication system to duplicate the media stream and transmitting the duplicated media stream to the proxy server, which transmits the duplicated media stream to a recording system; and receiving and recording the duplicated media stream associated with the communication session. 24. A system for recording a communication session of a customer center communication system between a customer and an agent, comprising: a customer center communication system having a communication device, the communication device being operative to Case IPR2013-00486 Patent 7,613,290 B2 9 transmit a media stream associated with a communication session between a customer and an agent; a proxy server being operative to communicate with the customer center communication system to determine whether to record the media stream of the communication session; and a recording system being operative to communicate with the proxy server and the customer center communication system, wherein responsive to determining that the media stream is to be recorded, the proxy server transmits instructions to the customer center communication system to duplicate the media stream and transmit the duplicated media stream to the recording system, the recording system being further operative to record the duplicated media stream. 49. A system for recording a communication session between a customer and an agent, comprising: a proxy server being operative to communicate with a customer center communication system to determine whether to record a media stream associated with a communication session, the proxy server being further operative to transmit instructions to the customer center communication system to duplicate the media stream and transmit the duplicated media stream over a network; and a recording system being operative to communicate with the proxy server and the customer center communication system, the recording system being operative to receive the duplicated media stream over the network and record the duplicated media stream. II. ANALYSIS Petitioner presents insufficient reasoning to satisfy its burden of demonstrating a reasonable likelihood of prevailing on any of its contentions that the claims of the ’290 patent are unpatentable. Petitioner’s asserted grounds can be grouped into (1) grounds based on EP ’892; (2) grounds based on EP ’892 and WO ’914; and (3) grounds based on US ’032 and EP ’862. Because the grounds asserted against the dependent claims suffer from the defects of the grounds asserted against the independent claims, we need to address only the grounds asserted against independent claims 1, 24, and 49 below. Case IPR2013-00486 Patent 7,613,290 B2 10 With respect to the grounds based on EP ’892 alone and the grounds based on EP ’892 and WO ’914, CallCopy’s chart for claim 49 simultaneously addresses grounds that EP ’892 anticipates claim 49 and that claim 49 is obvious over the combination of EP ’892 and WO ’914. Pet. 31–32. This claim chart conflates anticipation and obviousness grounds without providing a clear distinction of how the identified disclosures are applied to the individual grounds. Thus, none of the grounds is supported by sufficient reasoning of how the identified disclosures relate to the limitations of claim 49. We are unwilling to parse CallCopy’s mapping of disclosure in EP ’892 and WO ’914 to elements of claim 49 into separate anticipation and obviousness grounds because doing so would substitute our analysis for CallCopy’s. 35 U.S.C. § 312(a)(3); 37 C.F.R. § 42.104(b)(4). We additionally note that CallCopy’s expert, Dr. Mangione-Smith, never directly analyzes the anticipation ground and does not offer sufficient reasoning to support a conclusion of obviousness. Rather, Dr. Mangione-Smith testifies: ―Each element of claim 49 is present in claim 24. Consequently, the analysis of the references relative to claim 24 applies for claim 49 and renders claim 49 of the ’290 patent obvious to one of ordinary skill in the art.‖ Ex. 1120 ¶ 234. Dr. Mangione-Smith offers another referential statement that ―[c]laim 24 is claim 1 recast from method form into apparatus form‖ and that analysis of claim 1 ―applies‖ to claim 24. Id. at ¶ 173. Without delineating the differences among claims 1, 24, and 49, we note that these claims include differences in their limitations that are addressed insufficiently by either Dr. Mangione-Smith’s direct testimony or by CallCopy’s claim charts. In addressing the combination of EP ’892 and WO ’914 as it relates to the purported obviousness of claim 1, CallCopy states: It would have been obvious to a person of ordinary skill in the art that the edge router of EP ’892 could instead forward the data Case IPR2013-00486 Patent 7,613,290 B2 11 through the proxy server. Such approach would have been attractive in common applications where there is no network connection directly between the edge router and the recording device, e.g., in the case where the proxy server serves a gatekeeper role. Pet. 18 (citing Ex. 1120 ¶ 62). This statement’s circular reasoning lacks sufficient rational underpinnings to support a legal conclusion of obviousness. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Further, because Dr. Mangione- Smith testifies only about EP ’892 in paragraph 62 of his declaration, that testimony fails to establish that a skilled artisan would have been motivated to combine the teachings of EP ’892 and WO ’914. While analyzing claim 1, Dr. Mangione-Smith also testifies that: EP ’892 and WO ’914 both relate to recording telephone calls over a packet network. Thus, it would have been natural for a person of ordinary skill in the art to consider opportunities to combine the technologies disclosed in EP ’892 and WO ’914 in order to solve the problems faced by the inventors of the ’290 Patent. Ex. 1120 ¶ 57. We also find this testimony to be unpersuasive because it provides inadequate reasoning for how or why a skilled artisan would combine teachings of EP ’892 and WO ’914 to practice the inventions set forth in claims 1, 24, and 49. With respect to the grounds based on US ’032 and EP ’862, CallCopy states: One of ordinary skill in the art would have understood, in view of the disclosures in US ’032 and EP ’862, that instructions to duplicate and transmit media streams would have been an obvious design choice. Pet. 35 (citing Ex. 1120 ¶¶ 66–73). We find no persuasive support in the cited portion of Dr. Mangione-Smith’s testimony for the conclusion of ―obvious design choice‖ or any other obviousness analysis. Therefore, the testimony fails to articulate sufficient reasoning with rational underpinnings to support the legal conclusion of obviousness. See KSR, 550 U.S. at 418. Case IPR2013-00486 Patent 7,613,290 B2 12 III. 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. IV. ORDER For the reasons given, it is ORDERED that the Petition is DENIED as to claims 1–49. Case IPR2013-00486 Patent 7,613,290 B2 13 PETITIONER: Arland T. Stein Rex W. Miller, II HAHN, LOESER & PARKS LLP astein@hahnlaw.com rmiller@hahnlaw.com PATENT OWNER: Lawrence A. Aaronson Stephen Schaetzel MEUNIER CARLIN & CURFMAN, LLC laaronson@mcciplaw.com sschaetzel@mcciplaw.com Copy with citationCopy as parenthetical citation