PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO

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Rodney Daniels
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Filed on behalf of Global Tel*Link Corporation By: Michael B. Ray, Reg. No. 33,997 Michael D. Specht, Reg. No. 54,463 Ryan C. Richardson, Reg. No. 67,254 Sterne, Kessler, Goldstein & Fox P.L.L.C. 1100 New York Avenue, NW Washington, D.

1 Filed on behalf of Global Tel*Link Corporation By: Michael B. Ray, Reg. No. 33,997 Michael D. Specht, Reg. No. 54,463 Ryan C. Richardson, Reg. No. 67,254 Sterne, Kessler, Goldstein & Fox P.L.L.C New York Avenue, NW Washington, D.C Tel: (202) Fax: (202) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD GLOBAL TEL*LINK CORPORATION Petitioner SECURUS TECHNOLOGIES, INC. Patent Owner Case 1PR2015-TBA Patent 8,489,068 PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO Mail Stop "PA TENT BOARD" Patent Trial and Appeal Board U.S. Patent & Trademark Office P.O. Box 1450 Alexandria, VA

TABLE OF CONTENTS I. Mandatory Notices (37 C.F.R. 42.8(a)(1))...3 II. III. Grounds for Standing (37 C.F.R. 42.104(a))...3 Identification of Challenge (37 C.F.R. 42.104(b))...3 A.

2 TABLE OF CONTENTS I. Mandatory Notices (37 C.F.R. 42.8(a)(1))...3 II. III. Grounds for Standing (37 C.F.R (a))...3 Identification of Challenge (37 C.F.R (b))...3 A. Statutory grounds for the challenge B. Citation of Prior Art...4 The 068 Patent... 5 A. Overview of the 068 Patent... 5 B. Summary of the Prosecution History...7 C. Level of Ordinary Skill in the Art...8 D. Claim Construction...8 V. Grounds of Rejection...9 A. Ground 1: Claims 1-8 are obvious over Apple in view of Jiang Overview The combination of Apple and Jiang renders claim 1 obvious The combination of Apple and Jiang renders claim 2 obvious The combination of Apple and Jiang renders claim 3 obvious The combination of Apple and Jiang renders claim 4 obvious The combination of Apple and Jiang renders claim 5 obvious The combination of Apple and Jiang renders claim 6 obvious The combination of Apple and Jiang renders claim 7 obvious The combination of Apple and Jiang renders claim 8 obvious B. Ground 2: Claims 9 and are obvious over Apple in view of Bangor Overview The combination of Apple and Bangor renders claim 9 obvious The combination of Apple and Bangor renders claim 11 obvious The combination of Apple and Bangor renders claim 12 obvious The combination of Apple and Bangor renders claim 13 obvious The combination of Apple and Bangor renders claim 14 obvious

VI. Conclusion 7. The combination of Apple and Bangor renders claim 15 obvious.... 35 8. The combination of Apple and Bangor renders claim 16 obvious.... 35 9.

3 VI. Conclusion 7. The combination of Apple and Bangor renders claim 15 obvious The combination of Apple and Bangor renders claim 16 obvious The combination of Apple and Bangor renders claim 17 obvious The combination of Apple and Bangor renders claim 18 obvious The combination of Apple and Bangor renders claim 19 obvious C. Ground 3: Claim 10 is obvious over Apple in view of Bangor and Jiang.39 D. Ground 4: Claims 1-6 and 8 are obvious over Falcone in view of Jiang Overview The combination of Falcone and Jiang renders claim 1 obvious The combination of Falcone and Jiang renders claim 2 obvious The combination of Falcone and Jiang renders claim 3 obvious The combination of Falcone and Jiang renders claim 4 obvious The combination of Falcone and Jiang renders claim 5 obvious The combination of Falcone and Jiang renders claim 6 obvious The combination of Falcone and Jiang renders claim 8 obvious E. Ground 5: Claims 9, 11-14, 16, 17, and 19 are obvious over Falcone in viewof Bangor Overview The combination of Falcone and Bangor renders claim 9 obvious The combination of Falcone and Bangor renders claim 11 obvious The combination of Falcone and Bangor renders claim 12 obvious The combination of Falcone and Bangor renders claim 13 obvious The combination of Falcone and Bangor renders claim 14 obvious The combination of Falcone and Bangor renders claim 16 obvious The combination of Falcone and Bangor renders claim 17 obvious The combination of Falcone and Bangor renders claim 19 obvious F. Ground 6: Claims 7, 15, and 18 are obvious over Falcone in view of Jiang andapple G. Ground 7: Claim 10 is obvious over Falcone in view of Bangor and Jiang

4 Global Tel*Link Corporation petitions for inter partes review of claims 1-19 of United States Patent No. 8,489,068 to Edwards et al., titled "System and Method for Completion of All Calls Using Single Call Funding Options" (hereinafter "the 068 patent"). The 068 patent is provided as GTL Global Tel*Link will demonstrate that a reasonable likelihood exists that all 19 claims of the 068 patent are unpatentable. The claims of the 068 patent are directed to completing telephone calls placed by inmates using alternative, called party-based, billing options. The 068 patent describes a call routing system that "identif[ies] non-billable calls and connects these non-billable calls to a called party or destination number." ( 068 patent, 1:42-46.) The call routing system "offers the called party one or more options to pay for the call" (id.) when "the calling party is unable to pay for the call" (id., 1:55-58). These billing options include SMS text billing, credit card billing, or billing via a prepaid account. (Id., 1:46-49.) Both call routing and called party-based billing options were well-known before April 23, 2010, the earliest possible priority date of the 068 patent. Petitioner s expert, Dr. Leonard J. Forys, who has over 40 years of experience working in the telecommunications industryspecifically working with call funding and billing systemsexplains that the purported novelty of the 068 patent, completing Each of the references presented in this petition is dated prior to April

calls using called party-based billing methods, was standard practice in telecommunications decades prior to the filing date of the 068 patent.

5 calls using called party-based billing methods, was standard practice in telecommunications decades prior to the filing date of the 068 patent. This is also true for prison communications systems, as such systems began routing non-billable calls to destination numbers using called party-based billing methods well before the 068 patent. For example, U.S. Patent No. 4,054,756 to Comella et al., issued in 1977, introduced call processing facilities for completing special service calls using billing information received from the called party. These call processing platforms also handled inmate calls from correctional facilities. (Forys Dec., GTL 1003, 53.) U.S. Patent Nos. 8,295,446 to Apple et al. and 6,836,540 to Falcone et al. applied the well-known called party-based billing concepts to inmate communications systems several years before the 068 patent. Further, U.S. Patent Appi. Pub. No. 2009/ to Jiang et al., applied the concept of using text messages to offer, and convey acceptance of, called party-based billing options more than two years before the 068 patent. And U.S. Patent Appl. Pub. No. 2008/ to Bangor et al. applied the concept of communicating billing and/or payment information using session initiation protocol (SIP) messages more than three years before the filing date of the 068 patent. Thus, Petitioner respectfully requests that the Board institute trial on the grounds set forth herein. -2-

I. Mandatory Notices (37 C.F.R. 42.8(a)(1)) REAL PARTY IN INTEREST: Tel*Link Corporation ("GTL"). The real party-in-interest of Petitioner is Global RELATED MATTERS: None.

6 I. Mandatory Notices (37 C.F.R. 42.8(a)(1)) REAL PARTY IN INTEREST: Tel*Link Corporation ("GTL"). The real party-in-interest of Petitioner is Global RELATED MATTERS: None. LEAD AND BACKUP COUNSEL: Pursuant to 37 C.F.R. 42.8(b)(3) and 42.10(a), Petitioner appoints Michael B. Ray (Reg. No. 33,997) as its lead counsel, and Michael D. Specht (Reg. No. 54,463) and Ryan C. Richardson (Reg. No. 67,254) as its back-up counsel, all at the address: STERNE, KESSLER, GOLDSTEIN & Fox, 1100 New York Avenue, N.W., Washington, D.C., 20005, phone (202) and facsimile (202) SERVICE INFORMATION: Petitioner consents to electronic service by at the addresses: m ray-ptabskgf.com, mspecht-ptab@skgf.com and rrichardson-ptabskgf.com. II. Grounds for Standing (37 C.F.R (a)) The undersigned and GTL certify that the 068 patent is available for inter partes review. GTL certifies that it is not barred or estopped from requesting this inter partes review on the grounds identified herein. III. Identification of Challenge (37 C.F.R (b)) A. Statutory grounds for the challenge. GTL requests review of claims 1-19 on seven grounds: GROUND 1: Claims 1-8 are unpatentable under 35 U.S.C. 103 as obvious over U.S. Patent No. -3-

8,295,446 to Apple et al. ("Apple") in view of U.S. Patent Appi. Pub. No. 2009/0042539 to Jiang et al. ("Jiang").

7 8,295,446 to Apple et al. ("Apple") in view of U.S. Patent Appi. Pub. No. 2009/ to Jiang et al. ("Jiang"). GROUND 2: Claims 9 and are unpatentable under 103 as obvious over Apple in view of U.S. Patent Appi. Pub. No. 2008/ to Bangor et al. ("Bangor"). GROUND 3: Claim 10 is unpatentable under 103 as obvious over Apple in view of Bangor and Jiang. GROUND 4: Claims 1-6 and 8 are unpatentable under 103 as obvious over U.S. Patent No. 6,836,540 to Falcone et al. ("Falcone") in view of Jiang. GROUND 5: Claims 9, 11-14, 16, 17, and 19 are unpatentable under 103 as obvious over Falcone in view of Bangor. GROUND 6: Claims 7, 15, and 18 are unpatentable under 103 as obvious over Falcone in view of Jiang and Apple. GROUND 7: Claim 10 is unpatentable under 103 as obvious over Falcone in view of Bangor and Jiang. B. Citation of Prior Art In support of the grounds of unpatentability cited above, GTL cites the following prior art references: U.S. Patent No. 8,295,446 to Apple et al., titled "Telephony System and Method with Enhanced Call Monitoring, Recording and Retrieval" ("Apple"), is prior art under at least 102(e) as it was filed on September 2, 2005, prior to the earliest possible priority date of the 068 patent. Apple is provided as GTL U.S. Patent App!. Publication No. 2009/ to Jiang et al., titled "Reverse Charging Service" ("Jiang"), is prior art under at least 102(b) because it was A

Petition for Inter Panes Review of U.S. Patent No. 8,489,068 published on February 12, 2009, more than a year prior to the earliest possible priority date of the 068 patent.

8 Petition for Inter Panes Review of U.S. Patent No. 8,489,068 published on February 12, 2009, more than a year prior to the earliest possible priority date of the 068 patent. Jiang is provided as GTL U.S. Patent Appi. Publication No. 2008/ to Bangor et al., titled "Methods and Apparatus for Alternative Billing of Voice Over Internet Protocol (VOIP) Services" ("Bangor"), is prior art under at least 102(b) because it was published on July 24, 2008, more than a year and a half prior to the earliest priority date of the 068 patent. Bangor is provided as GTL U.S. Patent No. 6,836,540 to Falcone et al., titled "Systems and Methods for Offering a Service to a Party Associated with a Blocked Call" ("Falcone"), is prior art under at least 102(b) because it issued as a patent on December 28, 2004, more than five years prior to the earliest possible priority date of the 068 patent. Falcone is provided as GTL IV. The 068 Patent A. Overview of the 068 Patent The 068 patent describes "identif[ing] requested call connections that cannot be billed by a call management system and redirects those calls to a call processing platform." ( 068 patent, Abstract.) The call processing platform then "identifies one or more payment options that are not available for use by the call management system and offers the called party the opportunity to accept one of the payment options to complete the requested call connection." (Id.) FIG. 5 of the 068 patent illustrates an example call routing scheme that is implemented when - 5 -

9 the call management system is unable to bill a calling party for the requested call connection. As shown in FIG. 5, facility telephone system 501 "determines that it is unable to adequately bill the call and... route[s the call] through a third-party billing service 504." (Id., 8:42-46.) Billing service 504 then routes the call to destination number 507, and offers destination number 507 payment options, such as billing via SMS text, credit card, or a pre-paid account. (Id., 7:61-63 and 8:27-62.) The 068 patent also describes the use of text messages or SIP messages to convey information about the call connection request and/or possible payment options to the called party. (See id., 2:1-8, 6:33-46, and 8:4-10.) An interactive voice response (IVR) system is also described, which can be used to assist the called party in implementing a desired payment option. (Id.) The specific payment options offered to the called party may depend on a block-specific code associated with a reason why a call cannot be billed by the call management system. (Id., 4:32-36.) The 068 patent does not purport to invent new call routing functionality or even new billing methods. Instead, the 068 patent purports to add text and/or SIP messaging functionality to these known called party-based billing systems, as evidenced by the prosecution history of the 068 patent (discussed below). (See also, id., 6:33-46 and 8:4-10.) According to the 068 patent, called party-based billing methods provide various benefits. And as explained by Dr. Forys, these same resulting benefits motivated the use of called party-based billing options in the tele-

10 Petition for Inter Panes Review of U.S. Patent No. 8,489,068 communications industry well before the 068 patent. (Forys Dec., 40.) B. Summary of the Prosecution History During prosecution of the 068 patent, the PTO only issued a single Non- Final Rejection. But, Patent Owner s response to the rejection provides significant insight into what features it believed to be novel. Rather than arguing the novelty of any of the originally claimed features, Patent Owner instead amended the claims to include the above-referenced text and SIP messaging functionality, respectively. (See 068 Patent File History, pp (amending claim 1 to recite "... the at least one billing option presented to the called party via a text message...") and 0061 (amending claim 9 to recite "sending a session initiation protocol (SIP) message comprising a header with information associated with the requested call connection ))2 Moreover, Patent Owner s remarks only alleged that the applied references failed to disclose the newly added text and SIP messaging functionality. Thus, the prosecution of the 068 patent makes it clear that Patent Owner believed the text and SIP messaging functionality to be the novel limitations of the claims. But, as explained in Petitioner s grounds below, the concept of conveying information about a requested call connection and/or billing information to a called party via text message or SIP message existed well before the filing date of the 068 patent. 2 The prosecution history of the 068 patent is provided as GTL

degree in Electrical Engineering, Computer Science, or an equivalent field as well as at least 3-5 years of academic or industry experience in communications systems, or comparable industry

11 C. Level of Ordinary Skill in the Art Based on the disclosure of the 068 patent, one of ordinary skill in the art would have a B.S. degree in Electrical Engineering, Computer Science, or an equivalent field as well as at least 3-5 years of academic or industry experience in communications systems, or comparable industry experience. (Forys Dec., 34.) D. Claim Construction Except for the exemplary terms set forth below, the terms of the 068 patent are to be given their plain and ordinary meaning under the broadest reasonable interpretation, as understood by a person having ordinary skill in the art ("PHOST- TA") and consistent with the disclosure. "Billing-Status Code"/"Billing Code"/"Code": For purposes of this proceeding, "billing-status code," "billing code," and "code" should each be construed as "information associated with a reason why a call has been blocked." The term "billing-status code" is recited repeatedly in claims 1 and 3-5, the term "billing code" is recited repeatedly in claims 9 and 11, and the term "code" is recited repeatedly in claims 16 and 17. These claims, as well as the specification, support this proposed construction because they each similarly describe these codes as "indicating a reason why the call management system cannot complete a call connection between the calling party and the called party." (See 068 patent, Claims 1, 9, and 16 and 4:25-37 ("The system identifies why the call has been blocked and assigns a block-specific code to the call"); Forys Dec., J54-56.)

V. Grounds of Rejection Claims 1-19 are unpatentable for at least the reasons set forth below. A. Ground 1: Claims 1-8 are obvious over Apple in view of Jiang. 1. Overview Apple, like the 068 patent, is directed to the field of inmate communications.

" (Apple, Abstract.) As an initial matter, numerous systems existed for implementing "special billing arrangements" in the context of "Inmate Calling Services (ICS)," even prior to Apple. (Id.

12 V. Grounds of Rejection Claims 1-19 are unpatentable for at least the reasons set forth below. A. Ground 1: Claims 1-8 are obvious over Apple in view of Jiang. 1. Overview Apple, like the 068 patent, is directed to the field of inmate communications. Apple generally discloses an "[i]nmate communications system" having "[d]istributed processing of call control and billing [so as to] provide flexible interactive call payment processes." (Apple, Abstract.) As an initial matter, numerous systems existed for implementing "special billing arrangements" in the context of "Inmate Calling Services (ICS)," even prior to Apple. (Id., 2:17-42.) Apple specifically identifies one such example, Comella, which discloses "a system and method for automating many operator services, including playing of recorded announcements, collection of information from calling and called parties, call setup and billing based on such inputs." (Id.) Apple expands on these prior systems by developing a flexible call processing system that implements alternative payment methods where a called party can pay for calls received from an inmate at a correctional facility. (See id., Abstract and 7:59-8:26.) Specifically, Apple discloses that the ICS system is first implemented when an ICS call connection request is generated at the correctional facility. (Id., 10:41-45, 20:6-24, 23 :41-52, and 28:60-29:20.) Included in the call connection request is a billing status code that can be used to identify the calling party and to verify that

13 Petition for Inter Panes Review of U.S. Patent No. 8,489,068 the called party number can receive and bill a call. (Id., 19:57-60 and 29:18-34.) Based on the billing code, the ICS system determines which payment options to offer the called party for completing the call connection. These options inelude, inter a/ia, utilizing a "pre-paid [account], credit card [or] other call payment options..." (id., 10:45-47), "an alternative collect call billing account," or offering the called party "a one-time-only abbreviated call at no charge" (id., 29:41-50). After a payment option is accepted, the ICS system "bridg[es] the calling telephone to the connection to the called party number to complete the call." (Id., 11:1-4.) Following completion of the call, a "[c]all detail record is created in [a] local database to store call information for later retrieval." (Id., 28:64-65.) Despite its extensive discussion of various billing and call control functionalities, Apple fails to explicitly disclose that the payment options can be presented to the called party via a "text message." But, Jiang does disclose this limitation. Jiang, like Apple, also describes a system that "allows a calling party to initiate mobile communication like Mobile Originated (MO) calls or Short Message Service (SMS) for which a called party pays"i.e., a "reverse charge service." (Jiang, [0020] and FIG. 5.) The system is capable of receiving a request from a calling party "to initiate mobile communication with called party 108, and accordingly charge called party 108 for the initiated mobile communication using an interface provided by service node 104." (Id., [0029].) Subsequently, the system - 10-

Petition for Inter Panes Review of U.S. Patent No. 8,489,068 "sends a notification to called party 108 informing about the request made by calling party 106.

14 Petition for Inter Panes Review of U.S. Patent No. 8,489,068 "sends a notification to called party 108 informing about the request made by calling party 106. Thereafter, called party 108 responds to the request from calling party 106 via the interface provided by service node In one embodiment [], the response of called party 108 is an approval to bear the charges of the requested mobile communication" (Id.), in which case, "service node 104 establishes mobile communication between calling party 106 and called party 108" (Id, [0030]). Jiang explicitly discloses that the interface provided by service node 104 can be an "SMS interface," thereby facilitating the transmission of SMS messages ("text messages") between the parties. (See id., {[0029] and [0042]-[0043].) A PHOSITA would have been motivated to combine Apple and Jiang because both are in the same field (telecommunications) and address the same problemcompleting, and charging for, a requested communication when a communication system is unable to bill the initiating party. (Forys Dec., [68-72.) In addition, Apple discloses sending billing options to a mobile device. (See Apple, 3:59-4:43 and 19:25-32.) Because Apple does not describe specific techniques for presenting billing options to the mobile device, a PHOSITA would have looked to the prior art for possible techniques to communicate these billing options. (Forys Dec., 68.) This would have led that person to Jiang, which describes a convenient way to notify a user of an inbound communication attempt and corresponding payment

15 Petition for Inter Panes Review of U.S. Patent No. 8,489,068 option(s) for accepting that communication. (Id., 70.) For this additional reason, a PHOSITA would have been motivated to combine Apple with Jiang. As discussed further below, a PHOSITA could have combined the functions of Jiang with the system of Apple by known methodsthe results of which would have been predictable to a PHOSITA. (Id., 72.) 2. The combination of Apple and Jiang renders claim 1 obvious. a) The combination of Apple and Jiang discloses the "receiving a call connection request" limitation. Apple discloses a series of "Typical Functions Performed in Completion of ICS [Inmate Calling Services] Telephone Calls." (Apple, 10:41-11:16.) These ICS call completion functions include generating, and subsequently receiving, an ICS call connection request. (See id., 10:41-55; Forys Dec., 74.) An ICS call connection request is first generated "at the correctional facility[] by performing a Sequence of steps including some combination of the following: (1) authenticating the caller, as by verifying one or more... of a [] UserID and a (private) Personal Identification Number (PIN), [and] (2) if the caller is authenticated, receiving digits keyed by the caller to identify the called party (called number)." (Apple, 10:41-55 (emphasis added), FIGS. 4 and 11, 20:6-24 ("following off-hook detection at 402, responses to user (caller) ID and password prompts at 404 and 406 are verified at If verified, a prompt [for a CALLED #] is issued at 410.")(emphasis added), 23 :41-52, and 28:60-29:20.) - 12-

Apple discloses that the ICS call connection request also includes a A PHOSITA would understand that a "UserID" and "Personal Identification Number (PIN)" represent two exemplary ways of "identifying

) Apple also states that the ICS call connection request is generated by, and received from, telephone facility 200 ("call management system") located at the correctional facility. (See Apple, FIG.

16 Apple discloses that the ICS call connection request also includes a A PHOSITA would understand that a "UserID" and "Personal Identification Number (PIN)" represent two exemplary ways of "identifying a calling party." (Forys Dec., 75.) Likewise, that person would also understand that a "called number" represents and exemplary way of "identifying... a called party." (Id.) Apple also states that the ICS call connection request is generated by, and received from, telephone facility 200 ("call management system") located at the correctional facility. (See Apple, FIG. 2, 12:32-58, 14:37-46, 11:58-12:59, 19:51-60 (information from interface 210, included within telephone facility 200, is passed to billing verification block 367 to perform "[s]uch verification operations as validating a calling party (inmate) login or other ID, and... [checking] a list of authorized called parties for each authorized calling party"), and 28:60-29:20.) "billingstatus code... indicating a reason why the call management system cannot complete a call connection between the calling party and the called party." As discussed above, the "billing-status code" should be construed as "information associated with a reason why a call has been blocked." And the 068 patent discloses that such reasons can include, inter alia, "the resident s commissary or prepaid accounts have insufficient funds... [or] the called number is associated with a [LEC] that does not have a billing arrangement with the service provider, or for any other reason." ( 068 patent, 4:26-32.)

Apple discloses that "[i]f Collect Call is chosen"e.g., because a calling party lacks sufficient funds to pay for the callthen "IPTS performs verification of number to call." (Apple, 29:18-20.

with LEC, number unable to accept collect calls, delinquent account or prior bad debt losses, etc.)." (Id., 29:28-34 and 19:57-60.

17 Apple discloses that "[i]f Collect Call is chosen"e.g., because a calling party lacks sufficient funds to pay for the callthen "IPTS performs verification of number to call." (Apple, 29:18-20.) This verification process includes checking the called number "against [an] intra-company database of numbers to be blocked due to customer requests or for billing reasons (no billing agreement with LEC, number unable to accept collect calls, delinquent account or prior bad debt losses, etc.)." (Id., 29:28-34 and 19:57-60.) If the connection request is denied, based on the called number, then the system "play[s a] message to caller indicating [the] reason." (Id., 29:35-36.) Apple also discloses that the "10-digit line number" is associated with particular "billing specifications," which both correspond to the "indicat[ed] reason" why the connection request was denied. (See id., 19:44-47.) A PHOSITA thus would recognize that the "indicat[ed] reason" is a "billing-status code" b it provides information about "why a call has been blocked." (Forys Dec., 79.) For example, if a calling party attempts to connect with a called party who is using a mobile device that is associated with a local exchange carrier (LEC) that does not have a billing arrangement with the service provider, then the called number and corresponding "reason" will indicate as much. (Id.) b) The combination of Apple and Jiang discloses the "offering the called party at least one billing option" limitation. Apple discloses that after receiving the ICS call connection request, the called party is "offer[ed]... at least one billing option to accept the call connec

Petition for Inter Par/es Review of U.S. Patent No. 8,489,068 tion": "it is possible to arrange for alternative payment methods by which a called party can pay for received calls..." (Apple, 5:2-5.

, 10:45-47), "set[ting] up an alternative collect call billing account," or offering the called party "a one-time-only abbreviated call at no charge... a so-called First Call feature" (id., 29:41-50).

18 Petition for Inter Par/es Review of U.S. Patent No. 8,489,068 tion": "it is possible to arrange for alternative payment methods by which a called party can pay for received calls..." (Apple, 5:2-5.)(emphasis added) The alternative payment methods can include, inter a/ia, a "pre-paid [account], credit card and other call payment options..." (id., 10:45-47), "set[ting] up an alternative collect call billing account," or offering the called party "a one-time-only abbreviated call at no charge... a so-called First Call feature" (id., 29:41-50). These alternative payment methods represent billing options that are "not available for use by the call management system." The 068 patent explains that "a payment method is not available" at the call management system when "... the resident s commissary or prepaid accounts have insufficient funds [or] the resident lacks a prepaid account..." ( 068 patent, 4:25-37.) Apple discloses such a situation where "[i]f debit billing is not chosen"e.g., the calling party s debit account (commissary account) is emptythe called party is presented with alternative payment methods not available for use by the calling party at telephone facility 200 ("call management system"). (See Apple, 29:41-50 (explaining that the called party can "set up an alternative collect call billing account").) A PHOSITA would understand that having the called party pay for the call connection via an alternative collect call billing account represents "at least one billing option not available for use by the call management system." (Forys Dec., 82.) Apple s alternative payment methods are also "presented to the called party

call placed at 418 is answered, an announcement (419) identifies the call as being a collect call (or other specially billed call) and (optionally) identifying the calleras by playing a previously

19 Petition for Inter Panes Review of U.S. Patent No. 8,489,068 via a [J message, the [] message indicating that an inbound voice call is being attempted and that the voice call may be completed if the called party indicates acceptance": "[w]hen the call placed at 418 is answered, an announcement (419) identifies the call as being a collect call (or other specially billed call) and (optionally) identifying the calleras by playing a previously recorded identification speech segment generated by the calling party. A request (420) is then made to the party answering the call to accept or not accept charges for the call." (Apple, 20:25-35 (emphasis added), and 10:63-67; Forys Dec., 83.) Apple does not explicitly state that the message presented to the called partyindicating an attempted inbound voice call and presenting the at least one billing optioncan be a "text message," but Jiang does disclose this limitation. Jiang generally discloses "allow[ing] a calling party to initiate mobile communication like Mobile Originated (MO) calls or Short Message Service (SMS) for which a called party pays." (Jiang, [0020].) Specifically, Jiang discloses receiving a request from a calling party "to initiate mobile communication with called party 108, and accordingly charge called party 108 for the initiated mobile communication using an interface provided by service node 104." (Id., [0029].) Subsequently, "a notification [is sent] to called party 108 informing about the request made by calling party 106. Thereafter, called party 108 responds to the request from calling party 106 via the interface provided by service node In one embodiment [] - 16-

20 the response of called party 108 is an approval to bear the charges of the requested mobile communication" (id.), in which case, "service node 104 establishes mobile communication between calling party 106 and called party 108" (id, [0030]). Jiang discloses that "calling party 106 and called party 108 can be either prepaid or postpaid subscribers." (Id., [0021].) Thus, the called party is given multiple billing options to accept the communication request: charging a "prepaid account" in real time (e.g., when the called party is a prepaid subscriber), or paying for the communication at a later time (when the called party is a postpaid subscriber), using a credit card, for example. (See, e.g., id., J[0052] and [0079]-[0080].) Jiang also discloses that the interface provided by service node 104 can be an "SMS interface," thereby facilitating the transmission of SMS messages ("text messages") between the parties. (See id., J[0029] and [0042]-[0043] ("service node 104 sends an SMS to SMSC 112 [which further sends the notification SMS to party B ] to notify party B about the request made by party A to bear the charge of the MO call... In an embodiment of the present invention, party B accepts the request of party A... and send an SMS with OK indicating his acceptance").) It would have been obvious to a PHOSITA to incorporate Jiang s SMS messaging functionality into Apple s system for completing ICS calls because Apple s system specifically identifies sending billing options to a mobile device (see Apple, 3:59-4:43 (identifying "calls to a called party at a cellular account number") - 17-

and 19:25-32), and because both Apple and Jiang disclose alternative payment methods for communicating between two parties when the originating party lacks sufficient funds to pay for the desired

) That person could have also combined Jiang s SMS messaging functionality with Apple s system for completing ICS telephone calls using known networking techniques (e.g., wireless routing). (Id.

21 and 19:25-32), and because both Apple and Jiang disclose alternative payment methods for communicating between two parties when the originating party lacks sufficient funds to pay for the desired communication. (Forys Dec., [88-89.) That person could have also combined Jiang s SMS messaging functionality with Apple s system for completing ICS telephone calls using known networking techniques (e.g., wireless routing). (Id.) Such a combination would have been routine, and the corresponding results would have been predictable to a PHOSITA. (Id.) c) The combination of Apple and Jiang discloses the "completing the call connection" limitation. Apple also discloses "completing the call connection between the calling party and the called party upon the indication of acceptance of the [] message by the called party": "upon receipt at the ICS system of a response indicating willingness to accept charges for the call, bridging the calling telephone to the connection to the called party number to complete the call." (Apple, 11:1-4 (emphasis added), 20:32-39, and 30:38-39.) Although Apple does not explicitly state that the message being accepted by the called party is a "text message," Jiang does disclose this limitation. (See Section V.A.2.b. and Jiang, J[0029] and [0042]-[0043] ("party B accepts the request of party A... and sends an SMS with Ok indicating his acceptance").) d) The combination of Apple and Jiang discloses the "sending the call management system a message" limitation. Following the completion of a call between the calling party and the called

Petition for Inter Panes Review of U.S. Patent No. 8,489,068 party, Apple explains that a "[c]all detail record is created in [a] local database to store call information for later retrieval.

22 Petition for Inter Panes Review of U.S. Patent No. 8,489,068 party, Apple explains that a "[c]all detail record is created in [a] local database to store call information for later retrieval." (Apple, 28:64-65.) A PHOSITA would understand that the local database could be located at the correctional facility, and included within "the call management system." (Forys Dec., 93.) Additionally, Apple s call detail record includes "billing data for the completed call connection" because it can include data such as: a "time recording to determine charges for each completed call" (Apple, 11:5-8); and "previously acceptable billing data, e.g., collect call acceptances for identified authorized numbers, or validated credit card information used in processing prior calls" (id., 19:65-20:1). 3. The combination of Apple and Jiang renders claim 2 obvious. Apple s system for completing ICS calls includes "identifying a carrier for the called party." Apple explains that "many [cellular devices] do not provide billing collection services for calls placed by wireline ICS providers, [thus] an important step in insuring payment for ICS is to verify the type of service subscribed to by the called party for ICS calls"e.g., whether the called party uses a Competitive Local Exchange Carrier (CLEC) or incumbent local exchange carriers (ILECs). (Apple, 4: )(emphasis added) This verification process includes checking a called number "against [an] intra-company database of numbers to be blocked due to customer requests or for billing reasons (no billing agreement with LEC...)." (Id., 29:28-34.)(emphasis added) - 19-

Petition for Inter Panes Review of U.S. Patent No. 8,489,068 Apple also discloses "determining the at least one billing option based upon the identified carrier.

23 Petition for Inter Panes Review of U.S. Patent No. 8,489,068 Apple also discloses "determining the at least one billing option based upon the identified carrier." Specifically, Apple discloses that if "no billing agreement [exists] with the LEC (identified carrier)," the system offers to "set up an alternative collect call billing account" for the called party. (Id., 29:28-50.) Apple also discloses performing a "network validation" process to determine if there are any billing concerns relating to the called party s carrier. (See id., FIG. 11 (boxes 1144 and 1148) and 25: ) If the network is deemed invalid, then a First Call feature is implemented. (Id., 25 :33-55 and 29:41-50.) But, if the network is deemed valid, then a "collect call" is placed using either a "pre-paid [account], credit card [or] other call payment options..." (Id., 10:45-47 and 25 :33-55.) 4. The combination of Apple and Jiang renders claim 3 obvious. Apple explains that, in certain cases, a called party may be offered "a onetime-only abbreviated call at no charge... a so-called First Call feature." (Apple, 29:41-50.) The First Call feature represents "a case where a particular calling party is seeking to call a particular called party for the first time while seeking to have the called party pay for the call." (Id., 24:35-38.) "[A]bsent easily recognizable or defined exceptions, a first call will include exactly one call to a particular called party identified with a particular called number." (Id., 24:47-51.)(emphasis added) Apple explains that a determination must be made as to whether a call placed to a specific number is the "first call" to that numberi.e., "determining -20-

$11 and 24:56-25:32.) Apple also discloses "the maximum number of attempts corresponding to the billing-status code," because as discussed in Section \T.A.2.a., the "indicat[ed] reason" in Apple s system represents a "billing-status code," which is necessarily used to determine whether to implement the First Call feature.$

24 Petition for Inter Panes Review of U.S. Patent No. 8,489,068 that a maximum number of attempts [one] to use the at least one billing option [First Call feature] has not been exceeded." (See, id., FIG. 11 and 24:56-25:32.) Apple also discloses "the maximum number of attempts corresponding to the billing-status code," because as discussed in Section \T.A.2.a., the "indicat[ed] reason" in Apple s system represents a "billing-status code," which is necessarily used to determine whether to implement the First Call feature. (Forys Dec., 100.) Further, Apple s determination of whether to use the First Call feature necessarily occurs "prior to offering the called party the at least one billing option." (See id., FIG. 11, 24:56-58 (a "determination [that] the call is a first call[] results in the placement of the call to the called party" using the First Call feature), and 25:23-32 ("if a called number is found... not to be a first call... then the call will be ended," or the called party will be "connect[ed] to a Customer Service Representative (CSR) of the ICS provider" to discuss additional payment options).) 5. The combination of Apple and Jiang renders claim 4 obvious. Apple discloses "identifying the at least one billing option among a plurality of other billing options": alternative payment methods can include, inter alia, a "pre-paid [account], credit card and other call payment options..." (Apple, 10:45-47), "set[ting] up an alternative collect call billing account" or offering the called party "a [] First Call feature" (id., 29:41-50). Apple also explains that the alternative payment method is identified based on the called number and "indicat[ed] rea

Petition for Inter Panes Review of U.S. Patent No. 8,489,068 son" ("billing-status code"): "[i]f Collect Call is chosen," then "IPTS performs verification of number to call" (id.

number unable to accept collect calls, delinquent account or prior bad debt losses, etc.)" (id., 29:28-34 and 19:57-60).

25 Petition for Inter Panes Review of U.S. Patent No. 8,489,068 son" ("billing-status code"): "[i]f Collect Call is chosen," then "IPTS performs verification of number to call" (id., 29:18-20), which includes checking the called number "against [an] intra-company database of numbers to be blocked due to customer requests or for billing reasons (no billing agreement with LEC, number unable to accept collect calls, delinquent account or prior bad debt losses, etc.)" (id., 29:28-34 and 19:57-60). A PHOSITA would understand that the identified payment method would be based on the results of this called number verification processe.g., implementing the First Call feature if there is no billing agreement with the called number s LEC. (Id., 25:33-55; Forys Dec., 103.) 6. The combination of Apple and Jiang renders claim 5 obvious. Apple also explains that "... a number of databases are maintained by the telephone industry for checking the status of particular telephone lines. In particular, so-called Line Identification Databases (LIDB databases) provide a variety of information for telephone lines. Thus, a database query launched to a LIDB or similar database for a call can provide some information relating to whether calls to a particular line (and the account and phone number associated with it) can be counted on (or not) to be billed by the number provider." (Apple, 4:30-43 (emphasis added), 4:44-52, and 16:54-58.) Apple, therefore, discloses performing a database look-up": LIDB 366 "is typically accessed in the course of setting up a call," which "includes checking -22-

26 Petition for Inter Panes Review of U.S. Patent No. 8,489,068 for the existence of, and the type of station corresponding to, the called party telephone" in order to "derive service profile information for a called subscriber, typically before allowing a call to be completed." (Id., 19:25-44 (emphasis added), 29:28-34 (a called number is checked "against [an] intra-company database of numbers to be blocked due to customer requests or for billing reasons...").) Apple also discloses that the accessing of LIDB 366 is performed "using the billing-status code": "[s]uch called party information [stored in a LIDB database] will typically include 10-digit line number, service provider ID, equipment indicator, and billing specifications." (Id., 19:44-47.)(emphasis added) And as discussed in Section V.A.2.a., a 10-digit line number (i.e., a called number), and the and billing specifications represent the "billing-status code." (Forys Dec., 107.) Moreover, Apple discloses that LIDB 366 is accessed "to determine the at least one billing option": "[t]he LIDB information will generally be used in determining whether to block calls to certain end users, whether to allow collect calls, how to validate account information and the like." (Apple, 19:47-50.) Apple explains that a database of "authorized called parties for each authorized calling party is checked, as are any entries relating to prior difficulties regarding acceptance of calls (or collect calls), or other billing issues. If an attempted call is found to be directed to a called party that does not wish to accept calls, or if some other inconsistency appears, then the call may be canceled or special call treatment invoked." -23-

As discussed in Section V.A.2.b., Apple discloses "wherein the at least one billing option is selected from the group consisting of.

27 (Id., 19:57-63.) This special call treatment can include various "billing options" such as implementing the First Call feature (id., 29:41-50) or using either a "prepaid [account], credit card [or] other call payment options..." (id., 10:45-47). 7. The combination of Apple and Jiang renders claim 6 obvious. As discussed in Section V.A.2.b., Apple discloses "wherein the at least one billing option is selected from the group consisting of... credit card billing, and prepaid account": alternative payment methods can include, inter alia, a "pre-paid [account], credit card and other call payment options..." (Apple, 10:45-47.) Additionally, Jiang discloses that the at least one billing option can be "SMS text billing": "the SMSs sent by calling party 106 with the help of reverse charge service (i.e., via service node 104) to called party 108, for which called party 108 pays is hereinafter interchangeably referred to as Collect SMS." (Jiang, [0020].) 8. The combination of Apple and Jiang renders claim 7 obvious. Apple discloses allowing the calling party and the called party to engage in a "short-term courtesy call." For example, Apple states that the called party may be offered "a one-time-only abbreviated call at no charge... a so-called First Call feature." (Apple, 29:41-50.)(emphasis added) This feature involves allowing a call "to proceed without charge to either the calling or called party" (id., 8:4-7 and 24:56-58) "for a reasonable, but limited, time" (id., 8:24-26). Apple also discloses that the First Call feature ("short-term courtesy call") occurs "prior to offering the called party one or more of the at least one billing op-

28 Petition for Inter Panes Review of U.S. Patent No. 8,489,068 tion to accept the call connection." Specifically, Apple states that a determination that a call connection between the calling party and the called party represents "a first call[] results in the placement of the call to the called party number." (Id., 24:56-58.) If the call is acceptede.g., either using a "pre-paid [account], credit card [or] other call payment options..." (id., 10:45-47)--"then call timing is commenced at step 1126, otherwise the call is terminated as shown at step 1125." (Id., 25:8-10, FIG. 11, 24:56-58, and 25:23-32.) 9. The combination of Apple and Jiang renders claim 8 obvious. Apple discloses "wherein the call management system is a telephone system serving a detention facility, and wherein the calling party is an inmate at the detention facility": "embodiments of the present invention relates to such telecommunications systems and methods as applied to inmate telephone calling systems and methods for providing telephone calling services to inmates in correctional and other confinement facilities." (Id., 1:53-61 (emphasis added) and 11:57-63.) B. Ground 2: Claims 9 and are obvious over Apple in view of Bangor 1. Overview As discussed above, Apple generally discloses an "[i]nmate communications system" having "[d]istributed processing of call control and billing [so as to] provide flexible interactive call payment processes." (Apple, Abstract.) In the event that Apple fails to explicitly disclose that a "SIP message" can be used to corn

) Specifically, Bangor discloses that a calling party "provides [] billing and/or payment information to the alternative billing call feature server 125 via, for example, a second data VoIP protocol

29 municate "information associated with [a] requested call connection" (see id., FIG. 2, 14:62-67), Bangor does disclose this limitation. Bangor, like Apple, also describes "[m]ethods and apparatus for alternative billing of VoIP services." (Bangor, Abstract.) Specifically, Bangor discloses that a calling party "provides [] billing and/or payment information to the alternative billing call feature server 125 via, for example, a second data VoIP protocol message." (Id., [0025].) And as stated by Bangor, "[e]xample VoIP protocol messages indude, but are not limited to, a SIP INFO and/or a SIP OPTIONS message." (Id.) A PHOSITA would have been motivated to combine Apple and Bangor because both are in the same field (telecommunications) and address the same problemcompleting a call connection, and collecting fees associated therewith, when the call connection request is initially denied. (Forys Dec., 122.) In addition, Apple discloses that its system can be implemented in accordance with "the wellknown SIP protocol." (See Apple, 9:4-20, 14:55-15:8, 29:65-30:3 and 31:8-12.) Because Apple does not specifically describe how the SIP protocol could be carried out, or what type of information could be communicated using an SIP message, a PHOSITA would have looked to the prior art for guidance on how to implement this protocol. (Forys Dec., 122.) This would have led that person to Bangor, which specifically describes communicating billing and/or payment infor- S

mation via an SIP message. (Id., J123-24.) For this additional reason, a PHOSITA would have been motivated to combine Apple with Bangor.

30 mation via an SIP message. (Id., J ) For this additional reason, a PHOSITA would have been motivated to combine Apple with Bangor. As described in further detail below, a PHOSITA could have combined the functions of Bangor with the system of Apple by known methodsthe results of which would have been predictable to a PHOSITA. (Id., 125.) 2. The combination of Apple and Bangor renders claim 9 obvious. a) The combination of Apple and Bangor discloses the "establishing a first leg of a call connection" limitation. For at least the reasons discussed in Sections V.A.2.a. and V.A.2.b., Apple discloses this limitation. Specifically, Apple discloses establishing a "trunk port" ("a first leg of a call connection") between an inmate at a correctional facility ("a calling party") and IP Telephony Switch (IPTS) 320 ("a call processing service"). (See Apple, 28:60-30:47.) A PHOSITA would understand that IPTS 320 represents the claimed "call processing service" because both elements are configured to perform the same functionalitye.g., IPTS 320 is "programmed and configured to provide centralized or regional call control functions and administrative functions[, which]... include caller authentication, call setup, billing control, billing validation, call progress, security, quality control, and other functions[, and]... include maintenance of allowed-caller lists, allowed 3-way call parties, account status, billing records and others." (Id., 7:37-48; Forys Dec., 127.) -27-

31 Additionally, Apple states that in a situation where "debit billing is not chosen"e.g., if the calling party s debit account is emptythe called party is presented with alternative payment methods not available to the calling party. (See Apple, 29:41-50 (such alternative payment methods can include having the called party "set up an alternative collect call billing account").) A PHOSITA would understand that the called party paying for the call connection via an alternative collect call billing account represents a situation where the "call management system that is unable to bill for a requested call connection between the calling party and a called party." (Forys Dec., T 128.) b) The combination of Apple and Bangor discloses the "sending a session initiation protocol (SIP) message" limitation. First, it is noted that "the billing service" lacks antecedent basis as this limitation is not found anywhere else in claim 9, or any other claim of the 068 patent. Thus, claim 9 is indefinite under 35 U.S.C. 112, second paragraph. Nonetheless, for at least the reasons discussed in Section V.A.2.a., Apple discloses "sending a [] message from the call management system to the billing service, the [] message comprising [] information associated with the requested call connection." Specifically, Apple discloses that an ICS call connection request is first generated "at the correctional facility [] by performing a sequence of steps including some combination of the following: (1) authenticating the caller, as by verifying one or more... of a [] UserID and a (private) Personal Identification

Petition for Inter Panes Review of U.S. Patent No. 8,489,068 Number (PIN), [and] (2) if the caller is authenticated, receiving digits keyed by the caller to identify the called party (called number).

) The ICS call connection request is then sent from telephone facility 200 located at the correctional facility ("call management system") to IPTS 320 ("billing service"), which is "programmed and

32 Petition for Inter Panes Review of U.S. Patent No. 8,489,068 Number (PIN), [and] (2) if the caller is authenticated, receiving digits keyed by the caller to identify the called party (called number)." (Apple, 10:41-55 (emphasis added), 20:6-24, 23:41-52, and 28:60-29:20.) The ICS call connection request is then sent from telephone facility 200 located at the correctional facility ("call management system") to IPTS 320 ("billing service"), which is "programmed and configured to provide centralized or regional call control functions and administrative functions." (See id., 7:37-48 and FIGS. 2 and 5.) A PHOSITA would understand that a "UserID," a "Personal Identification Number (PIN)," and a "called number" each represent "information associated with the requested call connection." (Forys Dec., 13 1.) Again, for at least the reasons discussed in Section V.A.2.a., Apple discloses that the message sent from the call management system "compris[es] information identifying a billing code for the requested call connection, the billing code associated with a reason that the requested call connection is not billable by the call management system." Specifically, Apple discloses that "[i]f Collect Call is chosen"e.g., because a calling party lacks sufficient funds to pay for the callthen "IPTS performs verification of [the] number to call" that is included in the ICS call connection request. (Apple, 29:18-20.) This verification process includes checking the called number "against [an] intra-company database of numbers to be blocked due to customer requests or for billing reasons (no billing agreement -29-

) Apple also discloses that the "1 0-digit line number" (called number) is associated with particular "billing specifications," which both correspond to the "indicat[ed] reason" why the connection

33 with LEC, number unable to accept collect calls, delinquent account or prior bad debt losses, etc.)." (Id., 29:28-34 (emphasis added) and 19:57-60.) If the connection request is denied, based on the called number, then the system "play[s a] message to caller indicating [the] reason." (Id., 29:35-36.) Apple also discloses that the "1 0-digit line number" (called number) is associated with particular "billing specifications," which both correspond to the "indicat[ed] reason" why the connection request was denied. (See id., 19:44-47.) Thus, a PHOSITA would recognize that the "indicat[ed] reason" is a "billing-status code" because it provides information as to "why a call has been blocked." (Forys Dec., J ) However, Apple does not explicitly state that the message sent from telephone facility 200 located at the correctional facility to IPTS 320 can be an "SIP message comprising a header with information associated with the requested call connection, [and]... information identifying a billing code for the requested call connection." But, Bangor does disclose these limitations. Bangor discloses that a calling party "provides [] billing and/or payment information to the alternative billing call feature server 125 via, for example, a second data VoIP protocol message. Example VoIP protocol messages include, but are not limited to, a SIP INFO and/or a SIP OPTIONS message." (Bangor, [0025].)(emphasis added) Bangor explains that such a SIP message "includes one or more header fields," the header fields "includ[ing], but [] not limited to, a -30-

from field, a caller identification field, a command sequence number field, and/or payload length field" (collectively, or individually, representing "information associated with the requested call

) The SIP message also includes "a name field 405" that "identifies a destination for the [] message" and a payload 420 that contains "alternative billing and/or payment information," which can be

34 from field, a caller identification field, a command sequence number field, and/or payload length field" (collectively, or individually, representing "information associated with the requested call connection"). (Id., [0049]-[005 1] (emphasis added); Forys Dec., 135.) The SIP message also includes "a name field 405" that "identifies a destination for the [] message" and a payload 420 that contains "alternative billing and/or payment information," which can be replaced with "an alphanumeric string (e.g., CALL BLOCKED ) that signifies that the requested VoIP communication session is blocked unless alternative billing and/or payment information is provided by the calling party." (Bangor, J[0050] and [0052].) A PHOSITA would understand that any one of the destination identification, "alternative billing and/or payment information," or "CALL BLOCKED" string could represent "a billing code." (Forys Dec., 136.) Further, Bangor states that "the fields and/or data [included in a SIP message] may be combined, divided, rearranged, eliminated and/or implemented in any of a variety of ways." (Bangor, [0053].) Thus, a PHOSITA would understand that the destination identification, "alternative billing and/or payment information," or "CALL BLOCKED" string can be redistributed to the "one or more header fields." (Forys Dec., 136.) A PHOSITA would also have found it obvious to add Bangor s SIP messaging functionality into Apple s system for completing ICS calls because Apple explicitly states that its system can be implemented in accordance with "the well

known SIP protocol" (see Apple, 9:4-20 (emphasis added), 14:55-15:8, 29:65-30:3 and 31:8-12), and because both Apple and Bangor disclose alternative payment methods for completing calls between two

) Such a combination would have been routine, and the corresponding results would have been predictable to a PHOSITA. (Id., 139.

35 known SIP protocol" (see Apple, 9:4-20 (emphasis added), 14:55-15:8, 29:65-30:3 and 31:8-12), and because both Apple and Bangor disclose alternative payment methods for completing calls between two parties. (Forys Dec., 137.) That person could have also combined Bangor s SIP messaging functionality with Apple s system using known networking techniques (e.g., wireless routing). (Id., f ) Such a combination would have been routine, and the corresponding results would have been predictable to a PHOSITA. (Id., 139.) c) The combination of Apple and Bangor discloses the "offering one or more payment options" limitation. For the reasons discussed in Sections V.A.2.b. and A.5., Apple discloses this limitation. Apple discloses "arrang[ing] for alternative payment methods by which a called party can pay for received calls..." (Apple, 5:2-5.)(emphasis added) These alternative payment methods can include, inter alia, "set[ting] up an alternative collect call billing account" or offering the called party "a [] First Call feature." (Id., 29:41-50.) A PHOSITA would understand that these payment methods represent "payment options [that] are not available for use by the call management system" located at the correctional facility. (Forys Dec., 141.) Apple s alternative payment methods are also identified, at least in part, by the called number and "indicat[ed] reason" ("identified based upon the billing code"). Apple discloses that "[i]f Collect Call is chosen," then "IPTS performs verification of number to call" (Apple, 29:18-20), which includes checking the called -32-

number "against [an] intra-company database of numbers to be blocked due to customer requests or for billing reasons (no billing agreement with LEC, number unable to accept collect calls, delinquent

36 number "against [an] intra-company database of numbers to be blocked due to customer requests or for billing reasons (no billing agreement with LEC, number unable to accept collect calls, delinquent account or prior bad debt losses, etc.)" (id., 29:28-34, 19:57-60). A PHOSITA would understand that the identified payment methods would be based on the results of this verification processe.g., "set[ting] up an alternative collect call billing account" if there is "no billing agreement with [the called number s] LEC." (Id., 25:33-55 and 29:28-45; Forys Dec., 142.) d) The combination of Apple and Bangor discloses the "receiving an acceptance of a payment option from the called party" limitation. For at least the reasons discussed in Section V.A.2.c., Apple discloses this limitation. (See Apple, 11:1-4; 20:32-39, and 30:38-39; Forys Dec., 144.) e) The combination of Apple and Bangor discloses the "establishing a second leg of the call connection" limitation. For at least the reasons discussed in Section V.A.2.c., Apple discloses this limitation. (Forys Dec., 145.) Additionally, Apple discloses establishing a "station port" ("second leg of the call connection") between IP Telephony Switch (TPTS) 320 ("call processing service") and "the called party." (See Apple, 28:60-30:47.) f) The combination of Apple and Bangor discloses the "bridging the first leg and the second leg" limitation. For at least the reasons discussed in Section V.A.2.c., Apple discloses this limitation: "upon receipt at the ICS system of a response indicating willingness to accept charges for the call, bridging the calling telephone to the connection to the called party number to complete the call." (Apple, 11:1-4 (emphasis added),

Apple explains that, following the completion of a call between the calling party and the called party, a "[c]all detail record is created in [a] local database to store call information for later

37 20:32-39, and 30:38-39 ("[u]pon acceptance of charges, station port is bridged to trunk port to complete call")(emphasis added); Forys Dec., 146.) g) The combination of Apple and Bangor discloses the "sending a call detail record" limitation. For at least the reasons discussed in Section V.A.2.d., Apple discloses this limitation. Apple explains that, following the completion of a call between the calling party and the called party, a "[c]all detail record is created in [a] local database to store call information for later retrieval." (Apple, 28:64-65.)(emphasis added.) A PHOSITA would understand that the information needed to create Apple s call detail record (id., 28:64-65)--e.g., a "time recording to determine charges for each completed call" (id., 11:5-8) and "previously acceptable billing data" (id., 19:65-20:1)--would be sent from IP Telephony Switch (IPTS) 320 ("call processing service") to the local database, which could be located at the correctional facilityand included within "the call management system." (Forys Dec., 147.) 3. The combination of Apple and Bangor renders claim 11 obvious. For at least the reasons discussed in Section V.A.4., Apple discloses claim 11. (See Apple, FIG. 11,24:33-25:32, and 29:41-50; Forys Dec., J ) 4. The combination of Apple and Bangor renders claim 12 obvious. As discussed in Section V.A.4., Apple discloses that in certain cases, a called party may be offered "a one-time-only abbreviated call at no charge" ("a maximum usage of the one or more payment options"). (Apple, 29:41-50.) And the circumstances giving rise to this First Call feature can be particular to the called -34-

38 Petition for Inter Panes Review of U.S. Patent No. 8,489,068 party: "the reason that a [first call] test at step 1142 might yield a NO response is that the called party may have moved or otherwise caused a change in his/her line number or service provider in the recent pastso that data in the local database may be in transition. These and other conditions can be deemed by an ICS provider to give rise to a first call determination..." (Id., 24:38-51.)(emphasis added) 5. The combination of Apple and Bangor renders claim 13 obvious. Apple also discloses "wherein the maximum usage is particular to the calling party": the "[f]irst call may, be deemed by an ICS provider to include the first time these circumstances have arisen... since the occurrence of a particular eventsuch as a prior release of the calling party from incarceration or other such conditions." (Apple, 24:38-43.)(emphasis added) 6. The combination of Apple and Bangor renders claim 14 obvious. For at least the reasons discussed in Section V.A.2.d., Apple discloses claim 14. (See Apple, 11:5-8, 19:65-20:1, and 28:64-65; Forys Dec., f ) 7. The combination of Apple and Bangor renders claim 15 obvious. For at least the reasons discussed in Section V.A.8., Apple discloses claim 15. (See Apple, FIG. 11, 8:4-7, 8:24-26, 10:45-47, 24:56-58, 25:6-10, and 29:41-50; Forys Dec., f ) 8. The combination of Apple and Bangor renders claim 16 obvious. a) The combination of Apple and Bangor discloses the "[a] call processing platform" limitation. For at least the reasons discussed in Section V.13.2.a., Apple discloses this

limitation: IP Telephony Switch (TPTS) 320 ("a call processing platform") that can be "programmed and configured to provide centralized or regional call control functions and administrative

39 limitation: IP Telephony Switch (TPTS) 320 ("a call processing platform") that can be "programmed and configured to provide centralized or regional call control functions and administrative functions[, which]... include caller authentication, call setup, billing control, billing validation, call progress, security, quality control, and other functions[, and]... include maintenance of allowed-caller lists, allowed 3-way call parties, account status, billing records and others." (Apple, 7:37-48.) b) The combination of Apple and Bangor discloses the "interface to a call management system" limitation. For at least the reasons discussed in Section V.13.2.a., Apple discloses this limitation. Apple discloses establishing a call connection between telephone facility 200 at a correctional facility ("a call management system") (see Id., 12:32-58, FIGS. 2 and 5, 11:57-12:58, 14:37-46, 19:51-60, and 28:60-29:20) and IPTS 320 ("call processing platform") via gateway 321 ("an interface"), "which will illustratively include FXS functionality for interfacing with telephone-data-network interface 210" implemented at the correctional facility (Id., 15:53-57, FIGS. 2 and 3A). c) The combination of Apple and Bangor discloses the "interface to one or more service providers" limitation. For at least the reasons discussed in Section V.13.2.e., Apple discloses this limitation. Apple discloses establishing a call connection between IPTS 320 ("call processing platform") and "one or more service providers serving called parties" (see id., 28:60-30:47) via gateway 322 ("an interface"), which converts the digital information "to an appropriate format for delivery to PSTN 120" (id., 16:23-30). -36-

Petition for Inter Panes Review of U.S. Patent No. 8,489,068 d) The combination of Apple and Bangor discloses the "interactive voice response (IVR) system" limitation.

40 Petition for Inter Panes Review of U.S. Patent No. 8,489,068 d) The combination of Apple and Bangor discloses the "interactive voice response (IVR) system" limitation. For at least the reasons discussed Section V.A.2.b., Apple discloses a "system adapted to interact with the called parties to present one or more payment options to the called parties, wherein the payment options are not available for use by the call management system." (See id., 5:2-5, 10:45-47, and 29:41-50; Forys Dec., f81-83.) Although Apple does not explicitly state that the system can be an "interactive voice response (IVR) system," Bangor does disclose this limitation. Bangor discloses that "[a]n example alternative billing call feature server 125 implements an interactive voice response system that provides one or more audible signals and/or messages that instruct and/or prompt the calling party to, for example, speak and/or press keys on the VoIP user device to provide billing and/or payment information (e.g., a credit card number, a calling card number, and/or an account number) to the alternative billing call feature server 125." (Bangor, [0024].)(emphasis added) A PHOSITA would have found it obvious to add Bangor s IVR functionality to Apple s system for completing ICS calls because, although Apple s system "present[s] one or more payment options to the called parties" through "flexible interactive call payment processes" (see Apple, Abstract, 5:2-5, 10:45-47, and 29:41-50), Apple does not specifically describe a process for interacting with wellknown voice responses from a called party. That person would have thus looked to -37-

) For this additional reason, a PHOSITA would have been motivated to combine Apple with Bangor.

41 the prior art for guidance on how to present payment options to a called party after receiving voice responses. This would have led that person to Bangor, which specifically describes using IVR functionality to provide billing and/or payment information to a called party. (Forys Dec., f ) For this additional reason, a PHOSITA would have been motivated to combine Apple with Bangor. That person could have also combined Bangor s IVR functionality with the system of Apple using known call processing techniques. (Id., f ) Such a combination would have been routine, and the corresponding results would have been predictable to a PHOSITA. (Id.) e) The combination of Apple and Bangor discloses the "processor adapted to receive [SIP] messages" limitation. For at least the reasons discussed in Sections V.B.2.b. and V.B.2.c., the combination of Apple and Bangor discloses this limitation. (See Apple, FIGS. 2, 4, 5, and 11, 7:37-48, 9:4-20, 10:41-45, 14:55-15:8, 19:57-60, 20:6-24, 23:41-52, 28:60-29:34, 29:65-30:3, and 31:8-12; Bangor, Abstract, J[0025] and [0049]- [0053]; Forys Dec., f ) 9. The combination of Apple and Bangor renders claim 17 obvious. For at least the reasons discussed in Sections V.A.4. and V.13.3., Apple discloses claim 17. (See Apple, 24:33-25:32, and 29:41-50; Forys Dec., f ) 10. The combination of Apple and Bangor renders claim 18 obvious. For at least the reasons discussed in Sections V.A.8. and V.13.7., Apple discloses claim 18. (See Apple, FIG. 11, 8:4-7, 8:24-26, 10:45-47, 24:56-25:8, 25:6-

10, and 29:41-50; Forys Dec., J192-94.) 11. The combination of Apple and Bangor renders claim 19 obvious. For at least the reasons discussed in Section V.A.7., Apple discloses claim 19.

42 10, and 29:41-50; Forys Dec., J ) 11. The combination of Apple and Bangor renders claim 19 obvious. For at least the reasons discussed in Section V.A.7., Apple discloses claim 19. (See Apple, 10:45-47; Forys Dec., J ) C. Ground 3: Claim 10 is obvious over Apple in view of Bangor and Jiang. As shown in Section V.A.2.b., Jiang discloses that the message presented to the receiving party is an SMS message ("text message"). (See Jiang, J[0020], [0029], [0042], [0043], [0070], and [0083].) A PHOSITA would have found it obvious to add Jiang s SMS messaging functionality into the combined system of Apple and Bangor because Apple specifically identifies sending billing options to a mobile device (see Apple, 3:59-4:43 and 19:25-32), and because both Apple and Jiang disclose alternative payment methods for communicating between two parties when the originating party lacks sufficient funds to pay for the desired communication. Additionally, the combination would result in a more efficient system that is capable of sending notifications to the called party via multiple different media. (See Section V.B.2.b.; Forys Dec., J81-90 and 198.) Thus, the combination of Apple, Bangor, and Jiang discloses claim 10. D. Ground 4: Claims 1-6 and 8 are obvious over Falcone in view of Jiang. 1. Overview Falcone, like the 068 patent, is directed to the field of inmate communications. (See Falcone 1:50-54.) Falcone generally discloses a system and method for -39-

Specifically, Falcone discloses that icbs 10 is first implemented when "an inmate enters phone number/transaction request 20 into a prison phone, which requests the transaction of a collect call.

43 offering telecommunication services "to a user associated with a phone number of a previously blocked collect call." (Id., 4:60-65.) FIGS. 1 and 2 of Falcone illustrate an example intelligent call and billing management solution (icbs) 10. Specifically, Falcone discloses that icbs 10 is first implemented when "an inmate enters phone number/transaction request 20 into a prison phone, which requests the transaction of a collect call." (Id., 7:36-39 and 10:5-11.) Included in this transaction request 20, is a customer score that is used to identify and verify the called party. (Id., 7:2-12.) Based on the customer, icbs 10 determines which payment options to offer the called party for completing the call connection. These alternative payment methods can include, inter alia, "standard post-paid products or prepaid products." (See id., 9:4-7, 5:39-55, 6:30-39, 7:59-62, 8:23-32, 9:33-43, 11:28-44, and 14:30-34.) After the called party accepts one of the payment options, Falcone s system connects the calling party to the called party, thereby completing the call. (Id., 5:56-59, 6:44-46, 7:53-62, and 14:37-39.) Following completion of the call, "[c]all processing application 810 may create a call record in call transaction database 811," which may include "identification of the origination source, the called phone number, whether the call was connected or blocked, the length of the phone call (if applicable), and/or the like" (id., 6:19-26) as well as "the payment history of a particular customer or owner of the destination number... [or] the type of transaction A

44 Petition for Inter Panes Review of U.S. Patent No. 8,489,068 requested" (id., 10:23-33). (See also id., 5:16-18, 7:14-19, and 14:58-15:6.) Despite its discussion of this billing and call control functionality, Falcone fails to explicitly disclose that the payment options can be presented to the called party via a "text message." But as shown above, Jiang does disclose this limitation. A PHOSITA would have been motivated to combine Falcone and Jiang because both are in the same field (telecommunications) and address the same problemcompleting a requested communication, and collecting fees associated therewith, when a communication system is unable to bill the initiating party. (Forys Dec., 205.) In addition, Falcone discloses sending billing options to a subscriber device (see Falcone, 5:62-6:46), which a PHOSITA would recognize could be a mobile device. (Forys Dec., 205.) Because Falcone does not specifically identify how "the different identified prepaid and/or post-paid products are presented to the customer" (see Falcone, 14:30-34), a PHOSITA would have looked to the prior art for flexible and economical techniques for doing so (e.g., techniques that took advantage of the mobile device s SMS capabilities). (Forys Dec., 205.) This would have led that person to Jiang, which describes such a convenient technique. (Forys Dec., J ) For this additional reason, a PHOSITA would have been motivated to combine Falcone with Jiang. BEIM

PHOSITA. (Forys Dec., 208.) 2. The combination of Falcone and Jiang renders claim 1 obvious. a) The combination of Falcone and Jiang discloses the "receiving a call connection request" limitation.

45 Petition for Inter Panes Review of U.S. Patent No. 8,489,068 As described in further detail below, that person could have combined the functions of Jiang with the system of Falcone by known methodsthe results of which would have been predictable to a PHOSITA. (Forys Dec., 208.) 2. The combination of Falcone and Jiang renders claim 1 obvious. a) The combination of Falcone and Jiang discloses the "receiving a call connection request" limitation. Falcone discloses "receiving a call connection request from a call management system" because Falcone discloses "receiving a dialed number from a request to initiate a collect telephone call from an origination source." (Falcone, Abstract (emphasis added), 3:57-4:3, 4:60-65, and 12:58-13:13.) Falcone explains that processing of a call connection request begins when "an inmate enters phone number/transaction request 20 into a prison phone, which requests the transaction of a collect call." (Id., 7:36-39 and 10:5-11.)(emphasis added) A PHOSITA would understand that some type of system would necessarily exist at the prison facility to transmit the phone number/transaction request 20 to intelligent call and billing management solution (icbs) 10 for processing. (Forys Dec., 2 10.) Moreover, Falcone explains that the phone number/transaction request 20 ("call connection request") "ident(f[iesj a calling party and a called party": "[a]n outgoing call may also preferably be placed by [an] IVR system to [a] blocked called party. The outgoing call preferably informs the called party that an inmate was attempting to reach the called party but was blocked..." (Falcone, -42-

about the calling party. (Forys Dec., 211.) That person would also understand that the "enter[ed] phone number" included in the transaction request 20 necessarily "identf[ies]... a called party." (Id.

46 7:57-62.)(emphasis added) A PHOSITA would understand that for the called party to be informed that an inmate was trying to call them, transaction request 20 would need to include identifying information about the calling party. (Forys Dec., 211.) That person would also understand that the "enter[ed] phone number" included in the transaction request 20 necessarily "identf[ies]... a called party." (Id.) Additionally, the transaction request 20 is also associated with a customer score ("a billing-status code"): "a customer score may represent a predicted risk management score used to authorize or deny requested transactions" and the "intelligent direct billing system (idbs) select[s] any one of a number of direct billing products for a customer responsive to customer score-based determinations made within irom 101." (Falcone, 7:2-12.) Therefore, "a higher risk customer score may be paired with a low-risk billing and collection method" (id., 8:19-23)-- e.g., "a prepayment plan to permit the answering party to receive the subsequent call or calls..." (id., 5:39-50). A PHOSITA would understand that such a "higher risk customer score," and the corresponding implementation of a called-party based "prepayment plan," would represent "a reason why the call management system cannot complete a call connection between the calling party and the called party." (Forys Dec., T213; Falcone, 7:49-57 and 8:35-52 (the customer score providing "the reason why the call -43-

Petition for Inter Panes Review of U.S. Patent No. 8,489,068 was blocked"e.g., "if the prison telecommunications service provider does not have a billing arrangement with a LEC").

Falcone discloses "offering the called party at least one billing option to accept the call connection": "establishing a telephone connection with the dialed number to communicate an offer for the

47 Petition for Inter Panes Review of U.S. Patent No. 8,489,068 was blocked"e.g., "if the prison telecommunications service provider does not have a billing arrangement with a LEC").) b) The combination of Falcone and Jiang discloses the "offering the called party at least one billing option" limitation. Falcone discloses "offering the called party at least one billing option to accept the call connection": "establishing a telephone connection with the dialed number to communicate an offer for the service to a user associated with the dialed number" (Falcone, Abstract), where the offer "may include products such as standard post-paid products or prepaid products" (id., 9:4-7). (See also id., 5:39-55, 6:30-39, 7:59-62, 8:23-32, 9:33-43, 11:28-44, and 14:30-34.) Falcone also discloses that "the at least one billing option [is] not available for use by the call management system": "[t]he payment for the prepaid service may be completed by initiating an electronic transfer of funds (e.g., from a bank account) or by debiting a credit account (e.g., a credit card account)." (Id., 5:47-51.) A PHOSITA would understand that an electronic transfer of called party funds and the debiting of a called party credit card account would not be carried out by the call management system located at the prison. (Forys Dec., T216.) Additionally, Falcone explains that the offered payment options can be conveyed to the called party via "a message... indicating that an inbound voice call is being attempted and that the voice call may be completed if the called party indicates acceptance of the text message": a message may be sent to the called party

"inform[ing] the called party that an inmate was attempting to reach the called party but was blocked, and offers the called party alternative products for arranging future calls from the inmate.

48 "inform[ing] the called party that an inmate was attempting to reach the called party but was blocked, and offers the called party alternative products for arranging future calls from the inmate." (Falcone, 7:53-62.) Falcone does not explicitly state that the message sent to the called party can be a "text message." But, as discussed in Section V.A.2.b., Jiang does disclose this limitation. (See Jiang, J[0020], [0021], [0029], [0030], [0042], [0043], [0052], [0070], [0079], [0080], and [0083]; Forys Dec., T218.) A PHOSITA would have found it obvious to incorporate Jiang s text messaging functionality into Falcone s system for offering a service to a party associated with a blocked call because Falcone s system specifically identifies sending billing options to a subscriber device (see Falcone, 5:62-6:46), which a PHOSITA would recognize could be a mobile device, and because both Falcone and Jiang disclose alternative payment methods for communicating between two parties, when the originating party lacks sufficient funds to pay for the desired communication. (Forys Dec., J ) That person could have also combined Jiang s SMS messaging functionality with Apple s system for completing ICS telephone calls using known networking techniques (e.g., wireless routing). (Id.) Such a combination would have been routine, and the corresponding results would have been predictable to a PHOSITA. (Id.) c) The combination of Falcone and Jiang discloses the "completing the call connection" limitation. -45-

Falcone also discloses "completing the call connection between the calling party and the called party upon the indication of acceptance of the [] message by the called party": after a chosen payment

49 Falcone also discloses "completing the call connection between the calling party and the called party upon the indication of acceptance of the [] message by the called party": after a chosen payment option is implemented, "[c]all processing application 810 may then connect subsequent collect calls to subscriber device 804." (Falcone, 6:44-46 (emphasis added), 5:56-59, 7:53-62, and 14:37-39.) Falcone does not explicitly state that the message being accepted by the called party is a "text message." But, Jiang does disclose this feature as set forth in Sections V.A.2.b. and V.A.2.c. (See Jiang, f[0029] and [0043] ("party B accepts the request of party A... and sends an SMS with Ok indicating his acceptance").) d) The combination of Falcone and Jiang discloses the "sending the call management system a message" limitation. Further, Falcone discloses "sending the call management system a message including billing data for the completed call connection": "[c]all processing application 810 may create a call record in call transaction database 811. The call record may include identification of the origination source, the called phone number, whether the call was connected or blocked, the length of the phone call (if applicable), and/or the like" (Falcone, 6:19-26)(emphasis added), and may also include "the payment history of a particular customer or owner of the destination number... [or] the type of transaction requested" (id., 10:23-33)(emphasis added). (See also id., 5:16-18, 7:14-19, and 14:58-15:6.) 3. The combination of Falcone and Jiang renders claim 2 obvious.

serviced by a LEC [local exchange carrier] which does not have a billing arrangement with the prison telecommunication service provider..." (Falcone, 11:28-44, 2:28-3:13 and 8:33-52.

50 Petition for Inter Panes Review of U.S. Patent No. 8,489,068 Falcone discloses the limitations of claim 2, because Falcone discloses that the called party s carrier needs to be identified to determine "if phone number/transaction request 20 is serviced by a LEC [local exchange carrier] which does not have a billing arrangement with the prison telecommunication service provider..." (Falcone, 11:28-44, 2:28-3:13 and 8:33-52.) If the identified LEC does not have a billing arrangement with the prison telecommunication service provider, then "MOM 101 may select to offer different prepaid calling packages to the called party..." (Id., 11:47-53), but if such a billing arrangement does exist, then the called party may be offered a "post-pay system that bills each customer for the telephone activity that occurred over the last thirty days" (id., 2:28-3:13). 4. The combination of Falcone and Jiang renders claim 3 obvious. Falcone discloses the limitations of claim 3, because Falcone discloses that "depending on the customer score of a particular called party, the inmate would be capable of making calls to that called party up to an individually tailored limit on a transaction-by-transaction basis." (Id., 9:44-65.)(emphasis added) Further, Falcone discloses that the determination of whether a maximum number of attempts has been exceeded necessarily occurs "prior to offering the called party the at least one billing option": "considering an initial customer score,... the system may set a lower usage limit for the allowed costs of the single call. If, during the course of the call, the usage limit is reached, the called party may either be discon

Falcone discloses the limitations of claim 4, because Falcone discloses that ICBS 10 also includes "(idbs) 102, associated with irom 101, for selecting any one of a number of direct billing products

51 Petition for Inter Panes Review of U.S. Patent No. 8,489,068 nected, or provided a message and options for paying to extend the call." (Id.) 5. The combination of Falcone and Jiang renders claim 4 obvious. Falcone discloses the limitations of claim 4, because Falcone discloses that ICBS 10 also includes "(idbs) 102, associated with irom 101, for selecting any one of a number of direct billing products for a customer responsive to customer score-based determinations made within irom 101." (Falcone, 7:8-12 (emphasis added), 5:39-55, 8:19-32, 9:33-43, and 11:28-64.) 6. The combination of Falcone and Jiang renders claim 5 obvious. Falcone discloses the limitations of claim 5, because Falcone discloses that "[un step 301, the system checks the local database for validation (validation may comprise the verification that a billing mechanism is in place to bill the requested transaction)... In step 303, the local database is again checked for the telephone number. If the record of the phone number is not found in the local database, the system preferably checks for an initial customer score related to the telephone number in step In step 306, using both the profitability information and the initial customer score, the system determines whether the requested transaction is expected to be profitable... If not, the transaction is denied in step 307 and then transferred to the MOM in step 308." (Falcone, 12:65-13:13 (emphasis added), 2:1-15, 7:12-19, 10:16-33, and 13:34-51.) A PHOSITA would understand that such local database checks could be performed using the customer score ("billing-status code"). (Forys Dec., 234.) Once the transaction is transferred to the MIKE

irom, the irom makes a "determination of a revenue opportunity product to be offered to the called party." (Falcone, 11:15-27.) 7. The combination of Falcone and Jiang renders claim 6 obvious.

prepaid products" (Falcone, 9:4-7)--e.g., "debiting... a credit card account" or using "a bank account" (id., 5:39-5 1).

52 irom, the irom makes a "determination of a revenue opportunity product to be offered to the called party." (Falcone, 11:15-27.) 7. The combination of Falcone and Jiang renders claim 6 obvious. Falcone discloses that the "at least one billing option" is "credit card billing" or a "prepaid account": "different payment products [] may include products such as standard post-paid products or prepaid products" (Falcone, 9:4-7)--e.g., "debiting... a credit card account" or using "a bank account" (id., 5:39-5 1). Additionally, Jiang discloses that the billing option can be "SMS text billing," as discussed in Section V.A.7. (See Jiang, [0020].) 8. The combination of Falcone and Jiang renders claim 8 obvious. Falcone discloses the limitations of claim 8, because Falcone discloses that "call processing platform 801 may be implemented as a telephony system at a controlled facility such as a correctional institution" (Falcone, 6:6-10) where "prisoners attempt to make out-going calls from the prison" (id., 7:36-39). E. Ground 5: Claims 9, 11-14, 16, 17, and 19 are obvious over Falcone in view of Bangor. 1. Overview As discussed above, Falcone discloses a system and method for offering telecommunication services "to a user associated with a phone number of a previously blocked collect call." (Id., 4:60-65.) But despite its extensive discussion of billing and call control functionality, Falcone fails to explicitly disclose that SIP mes- A.

sages can be used to communicate "information associated with the requested call connection." As discussed above, however, Bangor does disclose this limitation.

53 sages can be used to communicate "information associated with the requested call connection." As discussed above, however, Bangor does disclose this limitation. A PHOSITA would have been motivated to combine Falcone and Bangor because both are in the same field (telecommunications) and address the same problemcompleting a call connection, and collecting fees associated therewith, when the call connection request is initially denied. (Forys Dec., T241.) In addition, Falcone discloses that a call connection request can be received using any "suitable communication protocol." (See Falcone, 6:11-14.) Because Falcone does not specifically describe what constitutes a "suitable communication protocol," or how such a protocol could be implemented, a PHOSITA would have looked to the prior art for guidance. (Forys Dec., 241.) This would have led that person to Bangor, which specifically describes communicating billing and/or payment information via an SIP message. (Id., J ) For this additional reason, a PHOSITA would have been motivated to combine Falcone with Bangor. As described in further detail below, a PHOSITA could have combined the functions of Bangor with the system of Falcone by known methodsthe results of which would have been predictable to a PHOSITA. (Id., 244.) 2. The combination of Falcone and Bangor renders claim 9 obvious. a) The combination of Falcone and Bangor discloses the "establishing a first leg of a call connection" limitation

telephone call from an origination source ["a calling party"]; processing the dialed number to determine whether payment may be received for the collect telephone call, wherein the processing blocks

54 Petition for Inter Panes Review of U.S. Patent No. 8,489,068 For at least the reasons discussed in Section V.D.2.a., Falcone discloses this limitation. Specifically, Falcone discloses "establishing a first leg of a call connection between a calling party and a call processing service": "receiving a dialed number from a request to initiate a collect telephone call from an origination source ["a calling party"]; processing the dialed number to determine whether payment may be received for the collect telephone call, wherein the processing blocks the collect call and stores the dialed number when the processing determines that payment may not be received for the collect telephone call." (Falcone, 3:46-55, 6:1-10 and 10:5-1 1.) A PHOSITA would understand that the processing of the dialed number would occur at "a call processing service" such as intelligent call and billing management solution (icbs) 10. (Forys Dec., 246.) Therefore, "a first leg of a call connection" is created upon receipt of the dialed number at icbs 10 from an inmate at a correctional institution. (Id.) A PHOSITA would also understand that some type of system (e.g., "a call management system") would necessarily exist at the correctional institution to transmit the "enter[ed] phone number/transaction request 20" to icbs 10 for processing. (Forys Dec., 247; Falcone, FIGS. 1 and 2 and 10:5-8.) Falcone also discloses that the transaction request 20 is associated with a customer score that is used for billing purposes. (See Falcone, 7:2-12.) Specifically, Falcone explains that "a higher risk customer score may be paired with a low

risk billing and collection method" (id., 8:19-23)--e.g., "a prepayment plan to permit the answering party to receive a subsequent phone call or calls..." (id., 5:40-51).

55 risk billing and collection method" (id., 8:19-23)--e.g., "a prepayment plan to permit the answering party to receive a subsequent phone call or calls..." (id., 5:40-51). A PHOSITA would understand that the implementation of such a called party-based prepayment plan could result in the call management system being "unable to bill for a requested call connection between the calling party and a called party." (Forys Dec., 248; Falcone, 7:49-57 and 8:35-52.) b) The combination of Falcone and Bangor discloses the "sending a session initiation protocol (SIP) message" limitation. For at least the reasons discussed in Section V.D.2.a., Falcone discloses "sending a [] message from the call management system to the billing service." Specifically, Falcone discloses that "an inmate enters phone number/transaction request 20 into a prison phone, which requests the transaction of a collect call." (Falcone, 7:36-39 and 10:5-11.)(emphasis added) And as discussed above, "the call management system" would exist at the correctional institution to transmit the transaction request 20 ("a message") to icbs 10 ("billing service") for processing. (Forys Dec., 250; Falcone, FIGS. 1 and 2.) Falcone also explains that the transaction request 20 comprises "information associated with the requested call connection": an "outgoing call preferably informs the called party that an inmate was attempting to reach the called party but was blocked..." (Falcone, 7:57-62.) A PHOSITA would understand that for the called party to be informed that an inmate was attempting to call them, the transac

56 tion request 20 would need to include identifying information about the calling party. (Forys Dec., 251.) And as discussed above, the transaction request 20 is associated with a customer score that is used for billing purposes. (Falcone, 7:2-12.) As such, both the identity of the calling party and the customer score represent "information associated with the requested call connection." (Forys Dec., 251.) Moreover, Falcone discloses that "a higher risk customer score may be paired with a low-risk billing and collection method" (Falcone, 8:19-23)--e.g., "a prepayment plan" (id., 5:39-50). And as discussed in Section V.D.2.a., a PHOSITA would understand that such a "higher risk customer score," and the associated prepayment plan, would represent "billing code associated with a reason that the requested call connection is not billable by the call management system." (Forys Dec., 252; Falcone, 7:49-57 and 8:35-52 (the customer score providing "the reason why the call was blocked"e.g., "if the prison telecommunications service provider does not have a billing arrangement with a LEC").) Falcone, however, does not explicitly state that the message sent from the correctional institution to icbs 10 can be an "SIP message comprising a header with information associated with the requested call connection, [and]... information identifying a billing code for the requested call connection." But, Bangor does disclose these limitations for the reasons discussed in Section V.B.2.b. (See Bangor, Abstract, J[0025], and [0049]-[0053]; Forys Dec., J )

that the transaction request 20 can be communicated using any "suitable communication protocol" (see Falcone, 6:11-14), and because both Falcone and Bangor disclose alternative payment methods for

57 Petition for Inter Panes Review of U.S. Patent No. 8,489,068 A PHOSITA would have found it obvious to incorporate Bangor s SIP messaging functionality into Falcone s system for processing a call connection request because Falcone specifically states that the transaction request 20 can be communicated using any "suitable communication protocol" (see Falcone, 6:11-14), and because both Falcone and Bangor disclose alternative payment methods for enabling communications between two parties. (Forys Dec., f ) That person could have also combined Bangor s SIP messaging functionality with the system of Falcone using known networking techniques (e.g., wireless routing). (Id.) Such a combination would have been routine, and the corresponding results would have been predictable to a PHOSITA. (Id.) c) The combination of Falcone and Bangor discloses the "offering one or more payment options" limitation. For at least the reasons in Sections V.D.2.b. and V.D.5., Falcone discloses this limitation. Specifically, Falcone discloses that ICBS 10 includes "(idbs) 102, associated with MOM 101, for selecting any one of a number of direct billing products for a customer responsive to customer score-based determinations made within irom 101." (Falcone, 7:8-12, 5:39-55, 8:19-32, 9:33-43, and 11:28-64.) A PHOSITA would again understand that the implementation of such prepayment plans, associated with the called party, represent "payment options [that] are not available for use by the call management system." (Forys Dec., 260.) d) The combination of Falcone and Bangor discloses the "receiving - 54-

Petition for Inter Panes Review of U.S. Patent No. 8,489,068 an acceptance of a payment option from the called party" limitation. For at least the reasons in Section V.D.2.c., Falcone discloses this limitation.

For at least the reasons discussed in Section V.D.2.c., Falcone discloses this limitation.

58 Petition for Inter Panes Review of U.S. Patent No. 8,489,068 an acceptance of a payment option from the called party" limitation. For at least the reasons in Section V.D.2.c., Falcone discloses this limitation. (See Falcone, 5:56-59, 6:44-46, 7:53-62, and 14:37-39; Forys Dec., 261.) e) The combination of Falcone and Bangor discloses the "establishing a second leg of the call connection" limitation. For at least the reasons discussed in Section V.D.2.c., Falcone discloses this limitation. Falcone discloses that the call processing system "establish[es] a telephone connection with the dialed number to communicate an offer for the service to a user associated with the dialed number." (See Falcone, Abstract, 3:46-4:3, 6:30-46, and 7:53-65.) I) The combination of Falcone and Bangor discloses the "bridging the first leg and the second leg" limitation. For at least the reasons discussed in Section V.D.2.c., Falcone discloses this limitation. Specifically, Falcone discloses that once the called party accepts one of the offered payment products, the system "may then connect subsequent collect calls to subscriber device 804." (Falcone, 6:27-46, 5:56-59, 7:53-62 (call completion processing applies to both "the requested or future calls") (emphasis added), 9:18-32, and 14:37-39.) g) The combination of Falcone and Bangor discloses the "sending a call detail record" limitation. For at least the reasons in Section V.D.2.d., Falcone discloses this limitation. (See id., 5:16-18, 6:19-26, 7:14-19, 10:23-33, and 14:58-15:6; Forys Dec., 264.) 3. The combination of Falcone and Bangor renders claim 11 obvious

For at least the reasons discussed in Section V.D.4., Falcone discloses claim 11. (See Falcone, 9:44-65; Forys Dec., 266-67.) 4. The combination of Falcone and Bangor renders claim 12 obvious.

59 For at least the reasons discussed in Section V.D.4., Falcone discloses claim 11. (See Falcone, 9:44-65; Forys Dec., ) 4. The combination of Falcone and Bangor renders claim 12 obvious. As discussed in Section V.D.4., Falcone discloses "wherein the maximum usage is particular to the called party": "depending on the customer score of a particular called party, the inmate would be capable of making calls to that called party up to an individually tailored limit on a transaction-by-transaction basis." (Falcone, 9:44-65.)(emphasis added.) 5. The combination of Falcone and Bangor renders claim 13 obvious. As similarly discussed in Section V.D.4., the circumstances that can cause Falcone s system to institute a maximum usage limit can also be particular to the calling party: when "making [a] determination of possible revenue opportunity applications and products"including whether to institute a maximum usage limit the system considers the "customer score or risk metric [and] the general length of the inmate s incarceration..." (Falcone, 8:53-9:17.)(emphasis added) 6. The combination of Falcone and Bangor renders claim 14 obvious. For at least the reasons in Section V.D.2.d., Falcone discloses claim 14. (See, id., 5:16-18, 6:19-26, 7:14-19, 10:23-33, and 14:58-15:6; see also, Forys Dec., J ) 7. The combination of Falcone and Bangor renders claim 16 obvious. a) The combination of Falcone and Bangor discloses the "call processing platform" limitation. -56-

(MOM) 101 for processing the customer score received from icss 100 to produce a recommended revenue opportunity application," which can be used to provide calling services when the calling party

60 Petition for Inter Panes Review of U.S. Patent No. 8,489,068 For at least the reasons in Section V.D.2.a., Falcone discloses the preamble of claim 16. Falcone discloses icbs 10 ("a call processing platform") that "includes intelligent customer scoring system (icss) 100 for establishing a customer score, and intelligent revenue opportunity module (MOM) 101 for processing the customer score received from icss 100 to produce a recommended revenue opportunity application," which can be used to provide calling services when the calling party lacks sufficient funds to pay for the call connection. (Falcone, 6:61-7:1 and 3:46-4:3 ("the present invention is directed to a call processing platform").) b) The combination of Falcone and Bangor discloses the "interface to a call management system" limitation. For at least the reasons in Section V.D.2.a., Falcone discloses this limitation. Falcone discloses that "[t]he call processing platform comprises an interface for receiving a dialed number from a request to initiate a collect telephone call from an origination source." (Id., 3:46-4:3.) The origination source representing an inmate at a prison facility ("a call management system serving calling parties"). (See id., FIGS. 1 and 2, Abstract, 3:57-4:3, 4:60-65, 7:36-39, 10:5-11, and 12:58-13:13.) c) The combination of Falcone and Bangor discloses the "interface to one or more service providers" limitation. For at least the reasons discussed in Section V.E.2.e., Falcone discloses this limitation. Falcone discloses establishing a call connection between "call processing platform" and "one or more service providers serving called parties" via "an interface": icbs 10 "establish[es] a telephone connection with the dialed IWIFA

61 Petition for Inter Panes Review of U.S. Patent No. 8,489,068 number to communicate an offer for the service to a user associated with the dialed number" (see Falcone, Abstract, 3:46-4:3, 6:30-46, and 7:53-65), where "[t]he service provider would either present the list of possible products to the customer for selection, or select the most desirable product automatically" (id., 11:28-44). d) The combination of Falcone and Bangor discloses the "interactive voice response (IVR) system" limitation. For at least the reasons discussed in Section V.D.2.b., Falcone discloses this limitation. Additionally, Falcone discloses that the system can be an "interactive voice response (IVR) system": "[i]f a call is blocked,... lain outgoing call may [] preferably be placed by the IVR system to the blocked called party. The outgoing call preferably informs the called party that an inmate was attempting to reach the called party but was blocked, and offers the called party alternative products for arranging future calls from the inmate." (Falcone, 7:49-62 (emphasis added), 6:30-46 and 8:28-32.) e) The combination of Falcone and Bangor discloses the "processor adapted to receive SIP messages" limitation. For at least the reasons discussed in Sections V.E.2.b. and V.E.2.c., the combination of Falcone and Bangor discloses this limitation. (See Falcone, FIGS. 1 and 2, 3:46-4:3 (disclosing a processor for "processing the dialed number to determine whether payment may be received for the collect telephone call"), 5:39-55, 6:11-14, 7:2-12, 7:36-39, 7:49-62, 8:19-23, 8:35-52, 9:33-43, 10:5-11, and 11:28-64 (disclosing a processor for "determining appropriate revenue or profit oppor-

tunity products or applications to offer or select for the called party"); Bangor, Abstract, J[0025] and [0049]-[0053] (disclosing SIP messaging functionality); Forys Dec., 280.) 8.

62 tunity products or applications to offer or select for the called party"); Bangor, Abstract, J[0025] and [0049]-[0053] (disclosing SIP messaging functionality); Forys Dec., 280.) 8. The combination of Falcone and Bangor renders claim 17 obvious. For at least the reasons discussed in Section V.D.4. and V.E.3, Falcone discloses claim 17. (See Falcone, 9:44-65; Forys Dec., J ) 9. The combination of Falcone and Bangor renders claim 19 obvious. For at least the reasons discussed in Section V.D.7., Falcone discloses claim 19. (Falcone, 5:39-51 and 9:4-7; Forys Dec., J ) F. Ground 6: Claims 7, 15, and 18 are obvious over Falcone in view of Jiang and Apple. As discussed in Sections \7.A.8., V.B.7., and V.B.10, Apple discloses claims 7, 15, and 18. (See Apple, FIG. 11, 8:4-7, 8:24-26, 10:45-47, 24:56-58, 25:6-10, and 29:41-50 (stating that the called party may be offered "a one-time-only abbreviated call at no charge" ("short-term courtesy call")).) A PHOSITA would have found it obvious to add Apple s First Call feature into the combined system of Falcone and Jiang because Falcone specifically discloses "set[ting] a lower usage limit for the allowed costs of the single call" when the call "represents a first transaction request for that called number" (see Falcone, 9:50-65), and Falcone, Jiang, and Apple all disclose alternative payment methods for enabling communications between parties. (Forys Dec., J ) G. Ground 7: Claim 10 is obvious over Falcone in view of Bangor and

63 Jiang. As shown in Sections V.A.2.b. and V.D.2.b., Jiang discloses that the message presented to the receiving party is an SMS message ("text message"). (See Jiang, J[0020], [0029], [0042], [0043], [0070], and [0083].) A PHOSITA would have found it obvious to add Jiang s SMS messaging functionality into the combined system of Falcone and Bangor because Falcone specifically states that a transaction request can be communicated using any "suitable communication protocol." (Falcone, 6:11-14.) Additionally, the combination would result in a more efficient system that is capable of sending notifications to the called party via multiple different media. (See Sections V.D.2.b. and V.E.2.b.; Forys Dec., 289.) Thus, the combination of Falcone, Bangor, and Jiang discloses claim 10. VI. Conclusion For the reasons provided above, inter partes review of claims 1-19 of U.S. Patent No. 8,489,068 is requested. Date: May 19, New York Avenue, N.W. Washington, D.C Tel: (202) Respectfully submitted, STERN SSLER, GOLDSTEIN & Fox P.L.L.C. A - ichael B. Ray, Registration No. 33,997 Michael D. Specht, Registration No. 54,463 Ryan C. Richardson, Registration No. 67,254 Attorneys for Petitioner

GTL Exh. No. APPENDIX A - EXHIBIT LIST Description 1001 U.S. Patent No. 8,489,068 to Edwards et al. ("068 Patent") 1002 1003 File History of U.S. Patent No. 8,489,068 ("068 Patent File History") Declaration of Dr.

64 GTL Exh. No. APPENDIX A - EXHIBIT LIST Description 1001 U.S. Patent No. 8,489,068 to Edwards et al. ("068 Patent") File History of U.S. Patent No. 8,489,068 ("068 Patent File History") Declaration of Dr. Leonard J. Forys in Support of Petition for Inter Partes Review of U.S. Patent No. 8,489,068 ("Forys Dec.") 1004 U.S. Patent No. 8,295, 446 to Apple et al. ("Apple") U.S. Patent Application Publication No. 2009/ to Jiang et al. ("Jiang") U.S. Patent Application Publication No. 2008/ to Bangor et al. ("Bangor") 1007 U.S. Patent No. 6,836,540 to Falcone et al. ("Falcone") U.S. Department of Justice, Office of the Inspector General, Crimi nal Calls: A Review of the Bureau of Prisons Management of In- mate Telephone Privileges (Aug. 1999) ("Criminal Calls") Survey of Telephone Switching: Chapter 11, accessed at survey chapter 11.html, 1009 archived by web.archive.org on July 14, 2009 ("Telephone Switching Survey ") 1010 U.S. Patent No. 4,054,756 to Comella et al. ("Comella") "Automated Coin Toll System (ACTS)," accessed at archived by web.archive.org on February 28, 2009 ("ACTS") "Customer Owned Coin Operated Telephones (COCOT)," accessed 1012 at archived by web.archive.org on January 27, 2009 ("COCOT") Ismail, et al., "Prepaid and Postpaid VoIP Service Enhancements 1013 and Hybrid Network Performance Measurement," Information Technology Journal, Vol. 5, Issue 2, 2006 ("Ismail") "Logical History and Key Milestones," accessed at archived by web.archive.org on December 24, 2009 ("Logica Mile- stones")

CERTIFICATION OF SERVICE (37 C.F.R. 42.6(e), 42.105(a)) The undersigned hereby certifies that the above-captioned PETITION FOR INTER PAR TES REVIEW OF U.S. PATENT NO.

65 CERTIFICATION OF SERVICE (37 C.F.R. 42.6(e), (a)) The undersigned hereby certifies that the above-captioned PETITION FOR INTER PAR TES REVIEW OF U.S. PATENT NO. 8,489,068, its associated exhibits, and Petitioner s Power of Attorney were served in their entireties on May 19, 2015, upon the following parties via FedEx fi or Express Mail: Fogarty, L.L.C. P.O. Box Dallas TX Patent owner s correspondence ad- Jeffrey R. Bragalone Bragalone Conroy P.C Ross Avenue Suite 4500 W Dallas, Texas dress of record for US. Patent No. Additional address known to Petitioner 8,489,068 as likely to effect service STERNE, KESSLER, GOLDSTEIN & Fox P.L.L.C. Date: May 19, New York Avenue, N. W. Washington, D.C (202) Mi ci B. Ra " Attorney for Petitioner Registration No. 33,997

PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,301,833 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,301,833 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE IN THE UNITED STATES PATENT AND TRADEMARK OFFICE In the Inter Partes Review of U.S. Patent No. 8,301,833 Trial No.: Not Yet Assigned Issued: October 30, 2012 Filed: September 29, 2008 Inventors: Chi-She