Mattersight Corporation

Patent Trials and Appeals Board

Jun 18, 2020

IPR2020-00272 (P.T.A.B. Jun. 18, 2020)

Trials@uspto.gov Paper 8
571-272-7822 Date: June 18, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

CALLMINER, INC.,
Petitioner,
v.
MATTERSIGHT CORPORATION,
Patent Owner.

IPR2020-00272
Patent 8,023,639 B2

Before KEVIN F. TURNER, JUSTIN T. ARBES, and
SHEILA F. McSHANE, Administrative Patent Judges.

McSHANE, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314

IPR2020-00272
Patent 8,023,639 B2
2
I. INTRODUCTION
A. Background and Summary
CallMiner, Inc. (“CallMiner” or “Petitioner”) filed a Petition
requesting inter partes review of claims 1–3, 5–9, and 11–15 of U.S. Patent
No. 8,023,639 B2 (Ex. 1001, “the ’639 patent”) pursuant to 35 U.S.C.
§§ 311–319, along with the supporting Declaration of Benedict
Occhiogrosso. Paper 2 (“Pet.”); Ex. 1007. Mattersight Corporation
(“Mattersight” or “Patent Owner”) filed a Preliminary Response to the
Petition. Paper 7 (“Prelim. Resp.”).
We have authority under 35 U.S.C. § 314(a), which provides that an
inter partes review may not be instituted “unless . . . the information
presented in the petition . . . 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.”
For the reasons that follow, we determine that Petitioner has not
demonstrated that there is a reasonable likelihood that it would prevail in
showing the unpatentability of at least one of the challenged claims. For the
reasons set forth below, and pursuant to 35 U.S.C. § 314, we do not institute
inter partes review of claims 1–3, 5–9, and 11–15 of the ’639 patent.
B. Related Matters
The parties identify NICE Ltd., NICE Systems Inc., and Mattersight
Corporation v. CallMiner, Inc., Civil Action No. 1:18-cv-02024-RGA-SRF
(D. Del.), filed on December 19, 2018, as a related matter. Pet. 4; Paper 4,
1.
IPR2020-00272
Patent 8,023,639 B2
3
C. The ’639 Patent
The ’639 patent is titled “Method and System Determining the
Complexity of a Telephonic Communication Received By a Contact Center”
and issued on September 20, 2011, from an application filed on March 28,
2008. Ex. 1001, codes (22), (45), (54). The ’639 patent also claims priority
to U.S. Provisional Application No. 60/921,060. Id., code (60).
The ’639 patent is directed to a method and system for determining
the complexity of telephonic communications received by a call center.
Ex. 1001, 2:7–9. The patent discloses that this is done by establishing a call
rule based on the following thresholds: a call duration threshold, a
non-interaction threshold, a distress event threshold, a third party dialog
threshold, and a call transfer threshold. Id. at 2:25–19, 4:35–37. Figure 2,
reproduced below, presents a block diagram of a call rule configuration. Id.
at 3:51–52.

IPR2020-00272
Patent 8,023,639 B2
4
As shown in Figure 2, above, call rules are established based on desired
thresholds. Ex. 1001, 4:26–28.
The ’639 patent discloses that telephonic communications are
received by the system and the call attributes of the communications are
determined. Ex. 1001, 4:31–35. Call rules are established by configuring
phone event data thresholds. Id. at 7:28–36. The established call rules are
then compared to the call attributes of the telephonic communications. Id. at
4:37–39. Data indicative of the complexity of the calls are generated by
comparisons. Id. at 4:39–41.
The ’639 patent discloses that output data indicative of the complexity
of the call type are transmitted and the “data indicates whether at least one of
the call sets is self-service eligible.” Ex. 1001, 15:12–15. It further explains
that “if the call attributes meet (either by exceeding or falling below,
depending on the nature of the configuration) the corresponding thresholds
of the call rule,” the output indicates whether “future telephonic
communications of a particular call type or call types may be better suited
for routing through a self-service system such as, for example, an IVR
[interactive voice response] or Internet web portal.” Id. at 15:16–22.
Challenged claims 1, 7, and 12 are independent. Claim 1 of the ’639
patent is reproduced below.
1. A non-transitory computer program for determining the complexity
of a telephonic communication received by a contact center, the
computer program being embodied on a computer readable storage
medium adapted to control a computer and comprising:
a code segment for receiving an input transmission of a
predetermined call rule;
a code segment for receiving a telephonic communication;
IPR2020-00272
Patent 8,023,639 B2
5
a code segment for determining call attributes associated with
the telephonic communication;
a code segment for comparing the call rule to the call attributes
of the telephonic communication; and
a code segment indicative of the complexity of the telephonic
communication and, a code segment for generating a graphical
user interface for viewing the telephonic communication on
display, the graphical user interface being configured to display
a time-based being representation of the telephonic
communication, the time-based representation including
graphical representation of the call attributes associated with the
telephonic communication; wherein the time-based
representation of the telephonic communication includes a
graphical representation of the progress of the audio file being
played.
Ex. 1001, 16:42–65.
D. Asserted Grounds of Unpatentability
Petitioner challenges the patentability of claims of the ’639 patent on
the following grounds:
Claim(s) Challenged 35 U.S.C. § References
1–3, 5, 6, 12 103 Eilbacher1, Peterson2
7–9, 11, 13–15 103 Eilbacher, Peterson, Konig3
8, 13 103 Eilbacher, Peterson, Konig, Blanchard4
6 103 Eilbacher, Peterson, Blair5

1 U.S. Patent No. 6,724,887 B1, filed on January 24, 2000, issued on April
20, 2004. Ex. 1002.
2 U.S. Patent No. 8,102,973 B2, filed on February 22, 2005, issued on
January 24, 2012. Ex. 1003.
3 U.S. Patent No. 7,487,094 B1, filed on June 18, 2004, issued on February
3, 2009. Ex. 1004.
4 U.S. Patent No. 8,204,205 B1, filed on February 8, 2007, issued on June
19, 2012. Ex. 1005.
5 U.S. Patent No. 6,404,857 B1, filed on February 10, 2000, issued on June
11, 2002. Ex. 1006.
IPR2020-00272
Patent 8,023,639 B2
6
Claim(s) Challenged 35 U.S.C. § References
11 103 Eilbacher, Peterson, Konig, Blair
Pet. 6–7. Petitioner asserts that the last two grounds are alternatives based
on means-plus-function claim interpretations. See id. at 6–7, 55–56, 80–81.
II. ANALYSIS
For petitions filed after November 13, 2018, the Board applies the
same claim construction standard as that applied in federal courts. See 37
C.F.R. § 42.100(b) (2019). Under the principles set forth by our reviewing
court, the “words of a claim ‘are generally given their ordinary and
customary meaning,’” as would be understood by a person of ordinary skill
in the art in question at the time of the invention. Phillips v. AWH Corp.,
415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).
Petitioner asserts that several means-plus-function limitations may be
recited in the challenged claims, specifically those reciting “code segments,”
which is a term in all challenged independent claims.6 See Pet. 23–29. For
example, claim 1 recites “a code segment for receiving an input transmission
of a predetermined call rule.” Petitioner discusses legal standards for
assessing whether a limitation is a means-plus-function limitation, but does
not present its position on whether the “code segment” claim elements are
means-plus-function elements. Id. at 16–20, 23; Ex. 1007 ¶¶ 61–66.
Instead, Petitioner states that it presents its arguments for unpatentability
under both a plain and ordinary meaning of the term, as well as a means-

6 Independent claims 1 and 7 recite “code segment” in each of their
limitations, respectfully. See Ex. 1001, 16:42–65, 17:17–18:4. Claim 12
includes “code segment” in only one of its limitations. See id. at 18:18–42.
IPR2020-00272
Patent 8,023,639 B2
7
plus-function interpretation. See Pet. 23; Ex. 1007 ¶ 67. Petitioner presents
a table alleged to identify the proposed function and structure of these
limitations, “[t]o the extent the Patent Owner argues, or the Board
determines” that the “code segment” limitations are mean-plus-function
types. Id. at 23–29.
Patent Owner does not present its proposed construction of the
individual “code segment” claim terms. See generally Prelim. Resp.
However, as we discuss in more detail below, Patent Owner asserts that
Petitioner does not identify specific structures for the means-plus-function
terms. Id. at 30–31.
The use of the word “means” in a claim element creates a rebuttable
presumption that 35 U.S.C. § 112 ¶ 67 applies. See Williamson v. Citrix
Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant
part). Conversely, “the failure to use the word ‘means’ also creates a
rebuttable presumption [that § 112 ¶ 6] does not apply.” Id. The
presumption may be overcome if the term “fails to ‘recite[] sufficiently
definite structure’ or else recites ‘function without reciting sufficient
structure for performing that function.’” Id. Williamson held that “[g]eneric
terms such as ‘mechanism,’ ‘element,’ ‘device,’ and other nonce words that
reflect nothing more than verbal constructs may be used in a claim in a
manner that is tantamount to using the word ‘means’ because they ‘typically
do not connote sufficiently definite structure’ and therefore may invoke

7 Section 4(c) of the Leahy-Smith America Invents Act (“AIA”), Pub. L.
No. 112-29, 125 Stat. 284, 296 (2011) redesignated 35 U.S.C. § 112, sixth
paragraph as 35 U.S.C. § 112(f). Because the application from which the
’639 patent issued was filed before September 16, 2012, the effective date of
the relevant amendment, we refer to the pre-AIA version of § 112.
IPR2020-00272
Patent 8,023,639 B2
8
§ 112, para. 6.” Id. at 1350 (quoting Mass. Inst. of Tech. & Elecs. for
Imaging, Inc. v. Abacus Software, 462 F.3d 1344, 1354 (Fed. Cir. 2006)).
Williamson informs that “[t]he standard is whether the words of the claim
are understood by persons of ordinary skill in the art to have a sufficiently
definite meaning as the name for structure.” Id. at 1349 (citing Greenberg v.
Ethicon Endo–Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996)).
Petitioner fails to provide arguments on whether the “code segment”
terms are means-plus-function terms or to present expert testimony on
whether the limitations sufficiently recite definite structure for performing
the recited functions to one of ordinary skill in the art. See Pet. 16–20, 23;
Ex. 1007 ¶¶ 61–66. On the record presented, our view is that the term “code
segment,” as used in the claim limitations at issue, is properly construed as a
mean-plus-function element under § 112 ¶ 6. Similar to the use of the
phrase “module for” in Williamson, the phrase “code segment for” replaces
the phrase “means for” as a generic description for software code that
performs functions. See Williamson, 792 F.3d at 1350. The “code segment”
term is used in the respective limitations to describe functionality without
identifying any structure. For instance, in claim 1 the code segments are
recited to perform the functions of: “receiving an input transmission of a
predetermined call rule,” “receiving a telephonic communication,”
“determining call attributes,” “comparing the call rule to the call attributes,”
“generating output data,” and “generating a graphical user interface.”
Cases like Zeroclick, LLC v. Apple Inc., which found that the term
“user interface code” was not a means-plus-function term, are
distinguishable. 891 F.3d 1003, 1008 (Fed. Cir. 2018). In Zeroclick, the
Federal Circuit considered the term in context with the surrounding claim
IPR2020-00272
Patent 8,023,639 B2
9
language, which contained details of configuration and what the code did,
such that it could be determined that the terms “are used not as generic terms
or black box recitations of structure or abstractions, but rather as specific
references to conventional graphical user interface programs or code,
existing in prior art at the time of the inventions.” Id.; see also id. at 1006.
Here, the independent claim limitations using the term “code segment” do
not provide similar specific references, nor does Petitioner direct us to any
such references, nor does Petitioner provide expert testimony on the nature
of the claims or on the conventionality of the code. See Pet. 23–27; Ex.
1007 ¶¶ 61–67. Accordingly, on the present record, the “code segment”
limitations, as used in the independent claims at issue, are properly
construed as mean-plus-function elements under § 112 ¶ 6.
By rule, Petitioner is required to identify in its Petition the
corresponding structure in the specification for means-plus-function terms.
See 37 C.F.R. § 42.104(b)(3) (“Where the claim to be construed contains a
means-plus-function . . . limitation . . . the construction of the claim must
identify the specific portions of the specification that describe the structure,
material, or acts corresponding to each claimed function.”) (emphasis
added). Construing a means-plus-function limitation under 35 U.S.C.
§ 112 ¶ 6 involves two steps: (1) identifying the claimed function and
(2) identifying in the specification the corresponding structure that performs
the claimed function. Medical Instrumentation & Diagnostics Corp. v.
Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003); Cardiac Pacemakers, Inc.
v. St. Jude Med., Inc., 296 F.3d 1106, 1119 (Fed. Cir. 2002).
“In cases involving a computer-implemented invention in which the
inventor has invoked means-plus-function claiming, [the Federal Circuit] has
IPR2020-00272
Patent 8,023,639 B2
10
consistently required that the structure disclosed in the specification be more
than simply a general purpose computer or microprocessor.” Aristocrat
Techs. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed.
Cir. 2008). “A computer-implemented means-plus-function term is limited
to the corresponding structure disclosed in the specification and equivalents
thereof, and the corresponding structure is the algorithm.’” Harris Corp. v.
Ericsson Inc., 417 F.3d 1241, 1253 (Fed. Cir. 2005) (quoted with approval
in Aristocrat). “The algorithm may be expressed as a mathematical formula,
in prose, or as a flow chart, or in any other manner that provides sufficient
structure.” Williamson, 792 F.3d at 1352 (citing Noah Sys., Inc. v. Intuit
Inc., 675 F.3d 1302, 1312 (Fed. Cir. 2012)).
Petitioner refers to a table for the means-plus-function terms, stating
that the table “identifies the claimed function[s] in bold italics.” Pet. 23.
Petitioner further contends that “[t]o the extent that corresponding structure
is disclosed in the specification, it can only be at one or more of the citations
in the table.” Id. Reproduced below are portions of the table that Petitioner
provides. Id. at 24.
IPR2020-00272
Patent 8,023,639 B2
11

Pet. 24–25. As shown in portions of the table above, and elsewhere in the
remainder of the table, Petitioner identifies the alleged function of each
IPR2020-00272
Patent 8,023,639 B2
12
means-plus-function terms in the bolded italicized portion of the claim
limitation, and lists portions of the ’639 patent only to identify the alleged
structure. Pet. 23–27.
Although Petitioner lists portions of the ’639 patent for the alleged
structure of the means-plus-function terms—that is, “to the extent that
corresponding structure is disclosed in the specification”—Petitioner fails to
explain or identify what the structure is. See Pet. 23–27; Ex. 1007 ¶¶ 61–67.
We note that some of the portions of the specification cited as allegedly
disclosing structure are extensive, they include multiple figures, absent
identification of specific items in the figures, and some specification
citations cover multiple columns.
Patent Owner argues that what Petitioner has done in the Petition for
the means-plus-function claim terms is contrary to Board rules. Prelim.
Resp. 30–31. Patent Owner asserts that Petitioner never specifies what it
believes the structure is for the means-plus-function elements. Id. at 30.
Patent Owner contends that Petitioner refers to unexplained string citations
to voluminous portions of the specification such as relying on multiple
columns of material and multiple figures, without identifying what portions
of the citations contain the alleged structure. Id. (citing Pet. 24–25). Patent
Owner further asserts that Petitioner leaves its analysis “entirely open-ended,
expecting the Board (and Patent Owner) to figure it out.” Id. As such,
Patent Owner argues that this practice is not envisioned under 37 C.F.R.
§ 42.104(b)(3) or Board decisions. Id. at 30–31 (citing Apple Inc. v.
ContentGuard Holdings, IPR2015-00456, Paper 9 at 6 (PTAB June 15,
2015)). Patent Owner asserts that by Petitioner’s failure to identify
structures for elements invoking § 112 ¶ 6, Petitioner could argue the
IPR2020-00272
Patent 8,023,639 B2
13
meaning of its Petition “in myriad ways” if a trial were instituted. Id. at 31.
Patent Owner further argues that the Petition fails to identify any algorithms
supplying structure for the limitations. Id. at 32–34. Patent Owner refers to
Petitioner’s assertions that the prior art references disclose algorithms that
meet claim limitations without specifying what the algorithms are. Id. at 33
(citing Pet. 40).
We agree with Patent Owner. Petitioner’s string citations to broad
portions of the specification and multiple figures, absent any explanation or
identification of structure, do not fulfill Petitioner’s obligation to identify
corresponding structure under 37 C.F.R. § 42.104(b)(3). Further, there has
been no attempt by Petitioner to address any algorithms corresponding to the
“code segment[s]” in its unpatentability contentions. Although Petitioner
attempts to map portions of the prior art to some means-plus-function terms
with alleged “algorithms” of the claim elements, Petitioner fails to identify
any algorithms or other structures in the first place. See, e.g., Pet. 40–41, 43,
45.
Additionally, the position Petitioner takes in the Petition with respect
to the means-plus-function limitations is improper in that Petitioner contends
that “[t]o the extent that corresponding structure is disclosed in the
specification, it can only be at one or more of the citations in the table.” See
Pet. 23. Effectively, Petitioner is extending an offer to the Board to review
portions of the ’639 patent specification to determine if there is sufficient
support. This, in effect, seeks an advisory opinion from the Board as to
whether the challenged claims are indefinite under 35 U.S.C. § 112 ¶ 2.
Absent any explanation or sufficient identification from Petitioner of
the structure of the means-plus-function terms, we decline to review the
IPR2020-00272
Patent 8,023,639 B2
14
large portions of the specification to try to determine the corresponding
structure of these terms. Additionally, we also decline to take a position on
whether the challenged claims are indefinite. The purpose of a decision on
institution is to make a threshold determination whether Petitioner has
shown a reasonable likelihood of success on the statutory grounds set forth
in § 311(a) (based on obviousness under § 103), not to issue advisory
opinions on issues for which we have no statutory authority. 35 U.S.C.
§ 314(a).
III. CONCLUSION
Petitioner does not set forth sufficient claim construction for the
means-plus-function limitations of the challenged claims. By failing to set
forth such a claim construction, the Petition does not show how the
challenged claims are to be construed in accordance with 37 C.F.R.
§ 42.104(b)(3), and also does not show how, as so construed, they are
unpatentable under the statutory grounds identified in the Petition. See
37 C.F.R. § 42.104(b)(4).
Accordingly, Petitioner has not established a reasonable likelihood
that it would prevail in showing the unpatentability of claims 1–3, 5–9, and
11–15 of the ’639 patent.
IV. ORDER
Accordingly, it is:
ORDERED that the Petition is denied as to the challenged claims 1–3,
5–9, and 11–15 of the ’639 patent; and
FURTHER ORDERED that no inter partes review is instituted.
IPR2020-00272
Patent 8,023,639 B2
15
FOR PETITIONER:
James M. Heintz
Michael Van Handel
DLA Piper LLP (US)
jim.heintz@dlapiper.com
michael.vanhandel@dlapiper.com

FOR PATENT OWNER:
Jeffrey A. Berkowitz
Gerson S. Panitch
Michael V. Young
Christopher C. Johns
Guang-Yu Zhu
Alexander M. Boyer
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
jeffrey.berkowitz@finnegan.com
gerson.panitch@finnegan.com
michael.young@finnegan.com
christopher.johns@finnegan.com
guang-yu.zhu@finnegan.com
alexander.boyer@finnegan.com