Takeaway: Petitioner has the burden of demonstrating that a prior art patent relying on the priority date of an earlier provisional application qualifies as prior art under 35 U.S.C. § 102(e).

In its Decision on Institution, the Board denied the Petition challenging claims 1-23 of the ’021 patent. According to the Board, Petitioner had not demonstrated a reasonable likelihood of prevailing on its challenge with respect to these claims.

Petitioner had sought inter partes review of claims 1-23 of the ’021 patent, which relates to telephone systems for use in institutions, such as penal facilities. In its analysis, the Board referenced independent claim 1, which is directed to an inmate telecommunication call processing system.

The only ground upon which the challenge to claims 1-23 was based was anticipation under 35 U.S.C. § 102 in view of a U.S. patent to Apple. As characterized by the Board, Apple claimed domestic priority based on at least six provisional patent applications under 35 U.S.C. § 119(e). Only one of these – the ’447 provisional application – had a filing date that preceded that of the challenged ’021 patent. Thus, as summarized by the Board, Apple was “prior art only to the extent that its content is supported by disclosure of the ’447 application in a manner that complies with 35 U.S.C. § 112, first paragraph.”

Although Petitioner had asserted that all of the relevant subject matter of Apple was supported by the ’447 provisional application, Petitioner did not submit any analysis in support of this assertion and did not ever make any citation to the ’447 provisional application. Instead, Petitioner had relied on the declaration testimony of its expert, Dr. Akl, who stated that “[b]ased on my review, all subject matter of [Apple] is supported by [the ’447 application].” The Board’s view was that this statement was deficient at least because it was not accompanied any explanation of the criteria that Dr. Akl had relied on to reach this conclusion. The Board concluded by stating that “[b]ecause Petitioner [failed] to demonstrate that all parts of Apple relied on for its challenge to claims 1-23 are prior art to the ’021 patent, [the Board concludes] that Petitioner has not demonstrated a reasonable likelihood of prevailing on that challenge.”

Securus Technologies, Inc. v. Global Tel*Link Corporation, IPR2015-00153
Paper 12: Decision Denying Institution of Inter Partes Review
Dated: May 1, 2015
Patent: 7,783,021 B2
Before: Kevin F. Turner, Beverly M. Bunting, and Patrick M. Boucher
Written by: Boucher
Related Proceedings: Global Tel*Link Corp. v. Securus Technologies, Inc., Civil Action 3:14-cv-0829-K (N.D. Tex.); IPR2015-00156; and IPR2015-00155