UNITED STATES PATENT AND TRADEMARK OFFICE ......2. I have been retained by Securus Technologies as...

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UNITED STATES PATENT AND TRADEMARK OFFICE

_____________________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

_____________________________

Securus Technologies, Inc., Petitioner

v.

Global Tel*Link Corporation, Patent Owner

_____________________________

Case IPR2017-01177 Patent No. 9,521,250

_____________________________

Declaration of Stuart J. Lipoff, in Support of Petition for Inter Partes Review of

U.S. Patent No. 9,521,250

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IPR2017-01177 Declaration of Stuart J. Lipoff

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I. Introduction

1. I, Stuart J. Lipoff, submit this declaration to state my opinions on the

matters described below.

2. I have been retained by Securus Technologies as an independent

expert in this proceeding before the United States Patent and Trademark Office.

3. I understand that this proceeding involves U.S. Patent No. 9,521,250

(“the ’250 patent”), and I have been asked to provide my opinions as to the

patentability of the claims of the ’250 patent. A copy of the ’250 patent is

provided as Exhibit 1001.

4. This declaration sets forth my opinions that I have formed in this

proceeding based on my study of the evidence, my understanding as an expert in

the field, and my education, training, research, knowledge, and personal and

professional experience.

5. I am being compensated for my time at the rate of $375 per hour for

my work. This compensation is in no way contingent upon the nature of my

findings, the presentation of my findings in testimony, or the outcome of this

proceeding.

II. Qualifications and Background

6. I believe that I am well qualified to serve as a technical expert in this

matter based upon my educational and work experience.

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7. My curriculum vitae (“CV”) is filed as Exhibit 1003.

8. I expect to further testify, if asked, regarding the subject matter set

forth in this declaration.

9. I am currently the president of IP Action Partners Inc., which is a

consulting practice serving the telecommunications, information technology,

media, electronics, and e-business industries.

10. I earned a Bachelor of Science degree in Electrical Engineering in

1968 and a second Bachelor of Science degree in Engineering Physics in 1969,

both from Lehigh University. I also earned a Master of Science degree in

Electrical Engineering from Northwestern University in 1974 and a Master of

Business Administration degree from Suffolk University in 1983.

11. I hold a Federal Communications Commission (“FCC”) General

Radiotelephone License. I also hold a Certificate in Data Processing (“CDP”)

from the Association for Computing Machinery (“ACM”)-supported Institute for

the Certification of Computing Professionals (“ICCP”).

12. I am a registered professional engineer in the Commonwealth of

Massachusetts and also in the State of Nevada.

13. I am a fellow of the IEEE Consumer Electronics, Communications,

Computer, Circuits, and Vehicular Technology Groups. I have been a member of

the IEEE Consumer Electronics Society National Board of Governors (formerly

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known as Administrative Committee) from 1981 to the present, and was the

Boston Chapter Chairman of the IEEE Vehicular Technology Society from 1974 to

1976. I previously served as 1996-1997 President of the IEEE Consumer

Electronics Society, and have served as Chairman of the Society’s Technical

Activities and Standards Committee. I am now Vice President of Publications for

the Society. I have also served as an Ibuka Award committee member.

14. I have also prepared and presented many papers at IEEE and other

professional meetings. For example, in Fall 2000, I served as general program

chair for the IEEE Vehicular Technology Conference on advanced wireless

communications technology. I have also organized sessions at The International

Conference on Consumer Electronics and was the 1984 program chairman. I also

conducted an eight-week IEEE sponsored short course on Fiber Optics System

Design. I was awarded IEEE’s Centennial Medal in 1984 and I was awarded the

IEEE’s Millennium Medal in 2000.

15. As Vice President and Standards Group Chairman of the Association

of Computer Users (“ACU”), I served as the ACU representative to the ANSI X3

Standards Group. I also served as Chairman of the task group on user rule

compliance for the FCC’s Citizens Advisory Committee on Citizen’s Band (“CB”)

radio (“PURAC”).

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16. I have been elected to membership in the Society of Cable Television

Engineers (“SCTE”), the ACM, and The Society of Motion Picture and Television

Engineers (“SMPTE”). I also served as a member of the USA advisory board to

the National Science Museum of Israel, presented a short course on international

product development strategies as a faculty member of Technion Institute of

Management in Israel, and served as a member of the board of directors of The

Massachusetts Future Problem Solving Program.

17. I am a named inventor on seven United States patents and have

several publications on data communications topics in Electronics Design,

Microwaves, EDN, The Proceedings of the Frequency Control Symposium,

Optical Spectra, and IEEE publications.

18. For 25 years, I worked for Arthur D. Little, Inc. (“ADL”), where I

became Vice President and Director of Communications, Information Technology,

and Electronics (“CIE”). At ADL, I was responsible for the firm’s global CIE

practice in laboratory-based contract engineering, product development, and

technology-based consulting. While employed at ADL, my projects included

exploring the expansion of an alternate operator services provider who specialized

in providing pay-per-call telephone services to prison inmates. This project

required developing an understanding of the operational and technical logistics of

the services provided in controlled facilities, such as the prisons, and then

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developing recommendations for the client to reposition the communications and

language translation services for end users outside the prison.

19. Prior to my time at ADL, I served as a Section Manager for Bell &

Howell Communications Company for four years. Prior to working at Bell &

Howell, I served as a Project Engineer for Motorola’s Communications Division

for three years. At both Bell & Howell and Motorola, I had project design

responsibility for wireless communication and paging products.

20. During my career, I have been heavily engaged in the study, analysis,

evaluation, design, and implementation of both wired and wireless

communications systems and products. My wired telecommunications work had

been wide ranging and includes projects for Mitel and Tadiran involving business

telephone systems and the analysis of a next generation digital internet protocol

multimedia (IMS) nationally deployed telephone network. My wireless

telecommunications work has been equally wide ranging, and includes

development of multiple access (MAC) layer protocols used in today’s IEEE

802.11 WiFi networks, analysis of alternative cellular air interface technologies

that led to Sprint PCS selecting CDMA as their technology of choice. I have

worked with multiple domestic and international cellular services providers to

assist in securing their license authorizations and develop plans for future services.

I have also worked with manufacturers of cellular handsets and infrastructure

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equipment to evaluate their product offerings and recommend next generation

products.

21. During my tenure at Arthur D. Little Inc, I worked on a number of

assignments related to speech and speaker recognition systems. These projects

typically included a mix of assessment of the state of the art of my client’s

technology in combination with analysis of the suitability of the technology for

particular applications. The scope of the ‘250 patent falls under the umbrella of a

well-known term of art in this field called “Small Vocabulary Speaker Dependent

Voice Recognition” (SVSDVR). Typical projects in my work experience that

would fall under this well-known term of art included two examples: Texas

Instruments and Sprint Communications.

22. In the early 1990’s, I evaluated Texas Instruments’ SVSDVR

technology designed for access control activation of doors into secure

environments such as a computer room. In this application, an end user used a

machine-readable ID card and PIN number whereupon the TI system prompted the

user to speak a passphrase. The ID and PIN retrieved voiceprint templates from a

database and the real-time spoke phrase was compared to the templates. A high

recognition score allowed the access controlled door to unlock.

23. In the early 1980’s, I evaluated a telephone credit card technology for

Sprint Communications to be used by subscribers to Sprint’s discount long

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distance telephone service so that Sprint could authenticate not just a spoken credit

card number but at the same time, also provide biometric verification of the

customer. This Sprint application was designed prior to today’s common

competitive long distance “equal access.” Today under equal access you just dial a

long distance number and the call is routed to your presubscribed provider but in

the time frame of my Sprint project, a subscriber had to dial into an automated

Sprint portal and provide a credit card number along with the number to be called.

Sprint had SVSDVR technology where the subscriber spoke their account number.

The spoken digits were recognized and used to retrieve previously stored

voiceprint templates created during a prior enrollment process. After the stored

templates were retrieved, the previously spoken account number was then analyzed

to extract biometric data which was compared to the template and if there was a

close match, the subscriber was validated and the call was charged to the

subscriber’s account and allowed to proceed.

24. My curriculum vitae, provided as Exhibit 1003, includes a list of my

published works, selected conferences, and Academic Presentations.

III. Summary of Opinions

25. I have also been asked to provide my opinion on whether the claims

of the ’250 patent would have been obvious based on certain prior art references.

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It is my opinion that each of claims 1-20 of the ’250 patent is rendered obvious by

prior art.

IV. Overview of the ’250 Patent

26. The ’250 patent includes three independent claims—claims 1, 10, and

16—directed to the high-level implementation of a speaker verification system to

control access to a secure telephone call management system. (’250 patent,

Abstract.) As the ’250 patent explains, one requirement of a secure telephone call

management system in a penal institution “is the accurate identification of the

telephone call participants.” (’250 patent at 2:60-62.) Generally, such systems

will require a personal identification number (“PIN”), often in addition to either

personal information or a debit card for authentication. (’250 patent at 2:60-3:39.)

But, according to the ’250 patent, these authentication measures provide only

minimal protection because PINs, debit cards, and personal information can all be

obtained from an inmate, with or without force. (’250 patent at 3:16-39.) As a

result, the ’250 patent purportedly identifies a need in the art for a telephone call

management system to provide improved access control. (’250 patent at 9:41-51.)

27. The ’250 patent claims a system and methods of authenticating a party

through the well-known process of speaker verification. (See, e.g., ’250 patent at

48:46-64, claims 1-20.) This verification process may be accomplished by using a

combination of biometric data and personal information to confirm the identity of a

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user. (’250 patent at 48:46-64.) The system and method disclosed by independent

claims 1 and 10 of the ’250 patent operate by first obtaining identifying

information (e.g., a PIN) and biometric data (e.g., a voiceprint) from a user, which

are indexed together in a database. (See, e.g., ’250 patent, claims 1 and 10.) When

a second user1 attempts to access the secure telephone system, an authentication

module receives additional biometric data and identifying information related to

the second user. (’250 patent at 48:46-64.) The authentication module then finds

in the database identifying information that “matches” the identifying information

received from the second user, and based on that indexed identifying information,

accesses stored reference biometric data. (’250 patent at 48:46-64.) The reference

biometric data is then compared to the biometric data received from the second

1 Although labeled a second user, this second user may in fact be the same as

the first user. Because this is a system to verify the identity of a user using

biometric data and identifying information, it is not known whether the first and

second user are the same user until the second user completes the verification

process. (See ’250 patent, claim 9.)

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user, and if the biometric data matches, the authentication module authenticates the

second user.2 (’250 patent at 48:46-64.)

28. Independent claim 16 and dependent claims 2-9, 11-15, and 17-20

disclose narrower implementations of independent claim 1, including monitoring a

telephone call to obtain biometric data, configuring the system to receive more

than one type of identifying information (e.g., a PIN and a name), and the use of a

registration process to register a user with the claimed system. (See, e.g., ’250

patent, claims 2-9 and 11-20.)

29. In my opinion, the ’250 patent merely claims a conventional speaker-

dependent voice recognition, including in some claims well-known call-monitoring

features. For example, independent claim 1 of the ’250 patent recites:

1. A system, comprising

a database;

a control platform configured to:

2 The ’250 patent explains that biometric data “is compared . . . using

complicated algorithms to process the digitized data.” (’250 patent at 48:55-57

(emphasis added).) The ’250 patent does not otherwise explain the operation of a

comparison technique for comparing biometric data stored in a database to that

supplied by a calling party.

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receive biometric data related to a user;

store the biometric data in the database;

receive identifying information related to the user; and

store the identifying information in the database in correspondence

with the biometric data of the user; and

an authentication module configured to:

receive second biometric data related to a second user;

receive second identifying information related to the second user;

find in the database third identifying information that substantially

matches the second identifying information received from the

second user;

retrieve from the database third biometric data associated with the

third identifying information;

compare the second biometric data received from the user with the

third biometric data retrieved from the database; and

authenticate the second user based on the comparison.

V. Legal Standards

30. In forming my opinions and considering the subject matter of the ’250

patent and its claims in light of the prior art, I am relying on certain legal principles

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that counsel in this case explained to me. My understanding of these concepts is

summarized below.

31. I understand that the claims define the invention. I also understand

that an unpatentability analysis is a two-step process. First, the claims of the patent

are construed to determine their meaning and scope. Second, after the claims are

construed, the content of the prior art is compared to the construed claims.

32. I understand that a claimed invention is only patentable when it is

new, useful, and non-obvious in light of the “prior art.” That is, the invention, as

defined by the claims of the patent, must not be anticipated by or rendered obvious

by the prior art.

33. For purposes of this declaration, I have been asked to opine only on

certain issues regarding the technology at issue, the level of ordinary skill in the

art, claim construction, and obviousness. I have been informed of the following

legal standards, which I have applied in forming my opinions.

A. Claim Construction

34. I understand that the United States Patent and Trademark Office

interprets claim terms of an unexpired patent based on the broadest reasonable

interpretation in light of the patent’s specification. Thus, I have been informed that

for each claim term construed in this proceeding, I should use the “broadest

reasonable interpretation” that would have been understood by one of ordinary

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skill in the art when reading the specification and prosecution history of the ’250

patent at the time of the patent’s filing.

35. I have been also advised that a patent claim may be unpatentable as

indefinite under 35 U.S.C. § 112(b) if one of ordinary skill in the art cannot

understand the scope of the construed claims with reasonable certainty.

B. Obviousness Under 35 U.S.C. §103

36. I have been advised that a patent claim may be unpatentable as

obvious under 35 U.S.C. § 103 if the differences between the subject matter

patented and the prior art are such that the subject matter as a whole would have

been obvious to a person of ordinary skill in the art at the time the invention was

made. I have also been advised that several factual inquiries underlie a

determination of obviousness. These inquiries include (1) the scope and content of

the prior art; (2) the level of ordinary skill in the field of the invention; (3) the

differences between the claimed invention and the prior art; and (4) any objective

evidence of non-obviousness.

37. I also have been advised that combining familiar elements according

to known methods and in a predictable way is likely to suggest obviousness when

such a combination would yield predictable results.

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VI. Person of Ordinary Skill in the Art

38. I am informed that patentability must be analyzed from the

perspective of “one of ordinary skill in the art” in the same field as the patents-in-

suit at the time of the invention. I am also informed that several factors are

considered in assessing the level of ordinary skill in the art, including (1) the types

of problems encountered in the art; (2) the prior art solutions to those problems;

(3) the rapidity with which innovations are made; (4) the sophistication of the

technology; and (5) the educational level of active workers in the field.

39. As explained below, the earliest possible time of invention was

August 8, 2002, but certain claims should only be entitled to a priority date of

November 22, 2010. My analysis below of the person of ordinary skill in the art

reflects both August 8, 2002 and November 22, 2010 as the time of invention

(depending on which claims and prior art are being considered).

40. Based on my experience teaching, researching, and consulting, and

considering the factors identified above, I believe a person of ordinary skill at the

time of the alleged invention of the ’250 patent would have held a bachelor’s

degree in electrical engineering, computer engineering, or a similar field and had at

least two years of experience (or the academic equivalent) working with speaker-

dependent voice recognition in the context of telecommunications. In my opinion,

one at this ordinary level of experience would have been familiar with the typical

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components, processes, and protocols used at the time of the alleged invention of

the ’250 patent for speaker-dependent voice recognition systems.

41. As of the at least the earliest possible priority date of the application

for the ’250 patent, I was at least a person of ordinary skill in the art. I am also

familiar with the knowledge of the person of ordinary skill in the art as of the

priority date of the ’250 patent and I am able to opine on how the person of

ordinary skill in the art would have understood the disclosure and claims of the

’250 patent, the disclosures of the prior art, the motivation to combine the prior art,

and what combinations would have been obvious to one of ordinary skill in the art.

VII. Claim Construction

42. In preparing this declaration, I was asked to consider the meaning that

certain claim terms would have had to those of ordinary skill in the art under the

“broadest reasonable interpretation” claim construction principles that I discussed

above in the Legal Standards section.

43. I have followed these claim construction principles in my analysis of

the meaning of the term “substantially matches.” This term is recited in each of

the independent claims of the ’250 patent.

44. In my opinion, the ’250 patent does not inform one of ordinary skill in

the art how to determine whether identifying information “substantially matches,”

as required by independent claims 1, 10, and 16. The ’250 patent, however, does

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use the terms “match” and “matches” in the specification when referring to the

identifying information. (See, e.g., ’250 patent at 11:60-65, “If a corresponding

PIN match is not achieved . . . .”; see also ’250 patent at 12:52-55, 48:46-60,

53:65-54:1.) As a result, one of ordinary skill in the art would understand this

phrase to mean at least “matches.” As a result, to the extent this phrase

“substantially matches” is supported by the ’250 patent’s specification, one of

ordinary skill in the art would understand that “substantially matches”

encompasses at least “matches,” and claim 1 thus covers “find[ing] in the database

third identifying information that [matches] the second identifying information

received from the second user.”

VIII. Opinions

45. The analysis below presents the technical subject matter described in

the ’250 patent, as well as some background known in the art as of the earliest

priority date of the ’250 patent. It also presents my opinions regarding the scope

and patentability of the ’250 patent based on certain references that I considered.

Based on the combination of prior art references discussed in this declaration, it is

my opinion that one of ordinary skill in the art would find that claims 1-20 would

have been obvious.

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IX. Ground 1: Obviousness of Claims 1-6 and 8-15 of the ’250 Patent

46. It is my opinion that claims 1-6 and 8-15 of the ’250 patent are

unpatentable based on Otto. My specific opinions as to unpatentability are set

forth below. For the purpose of this ground, I considered the time of invention to

be August 8, 2002.

A. Overview of Prior Art

1. Overview of Otto

47. U.S. Patent No. 6,389,397, to Mary Rita Otto (“Otto”), entitled “User

Identification System Using Improved Voice Print Identification Processing,” was

filed December 23, 1998, and issued May 14, 2002.

48. Otto, like the ’250 patent, is directed to a speaker verification system

that uses a user’s voiceprint in addition to a name and/or PIN to verify the user

prior to granting access to a secure system. (Ex. 1005, Abstract.) According to

Otto, a conventional voiceprint identification system is particularly time

consuming. (Ex. 1005 at 1:41-2:3.) In these conventional systems, a user first

inputs a predetermined spoken phrase “into the voice print identification system for

use as the ‘benchmark’ against which all future accesses are measured.” (Ex. 1005

at 1:47-50.) To access the system in the future, the user must speak the

predetermined phrase into the system, where it is compared against the benchmark

(or reference) phrase. (Ex. 1005 at 1:50-55.) Otto explains, however, that a

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“difficulty with such a system is that when there are numerous users, the time

required to sequence through a large number of stored benchmark phrases and

perform the voice print identification process is time consuming and can increase

the response time . . . to an unacceptable level.” (Ex. 1005 at 1:60-65.)

49. Otto solves this problem using a “multiple step voice activated user

identification process.” (Ex. 1005 at 2:6-9.) Otto’s system first requires a

registration process, wherein a user inputs the “user identification data.” (Ex. 1005

at 4:46-53, 5:66-6:3.) This data includes personal information in the form of a

name or PIN, which Otto refers to as a “sort key” and can be provided in either

voice or text form. (Ex. 1005 at 5:18-23, 5:66-6:3.) This data also includes the

voiceprint of the user, which Otto refers to as the “voice print identifying phrase.”

(Ex. 1005 at 5:18-23, 5:66-6:3.) Both the sort key and the voiceprint identifying

phrase are indexed together and stored in a database. (Ex. 1005 at 4:48-53, 5:18-

20, Figs. 2 and 3.)

50. Then, when a user wants to access the secure telephone system, Otto’s

system determines whether to grant the user access using the following process:

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(Ex. 1005 at Fig. 2.) The user begins by establishing a call connection to the

secure system and providing a single voice input, which consists of both the sort

key and a voice print identifying phrase. (Ex. 1005 at 2:27-30 (alternatively the

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sort key and voice print identifying phrase can be separately input), Fig. 2 (steps

201-206, 208-210).) The user’s spoken words are “converted by a voice to text

conversion system into a text string” and used as a sort key. (Ex. 1005 at 2:30-32,

Fig. 2 (step 206).) The text string is then used “to sort through the stored voice

print data to locate the one (or a small subset) of the stored voice print

identification phrases that use the sort key.” (Ex. 1005 at 2:32-36, Fig. 2 (step

207).) Finally, the system uses the voice print identification phrase to “verify” the

identity of the user by comparing the stored phrase with the user’s voiceprint to

determine if there is a match. (Ex. 1005 at 2:36-38, 5:52-56, Fig. 2 (steps 211-

214).) Otto’s approach avoids the need for the system to compare the user’s

voiceprint with every voiceprint in the database until it finds a match. Instead, the

set of voiceprints is narrowed down to a small subset using the other identifying

information (such as the sort key), and the user’s voiceprint is then compared with

the smaller set of stored voiceprints to determine whether there is a match.

B. Otto Renders Obvious Each Feature of Claims 1-6 and 8-15

1. Independent Claim 1

a. A “system”

51. For purposes of this declaration, I have been instructed to assume that

the preamble of this claim is limiting. If the preamble is deemed not limiting for

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legal reasons, my opinions expressed in this subsection should not affect the

patentability analysis.

52. Otto discloses a “system for improved voice print identification.”

(E.g., Ex. 1005, Abstract (emphasis added).) In my opinion, one of ordinary skill

in the art would understand that Otto discloses a system.

b. “a database”

53. Otto discloses a database. (E.g., Ex. 1005 at Figs. 2 and 3.)

According to the ’250 patent, a “site server . . . serves as the main database for the

telephone management system.” (’250 patent at 10:33-38.) This “site server 113

stores at a minimum each user’s financial transaction data,” but it can also store

“the digitized audio for voice prompts as well as each user’s call restrictions, PIN,

biometric verification data, etc.” (’250 patent at 51:47-51 (emphasis added); see

also ’250 patent at 48:46-60.) The ’250 patent further explains that, “depending on

the memory requirements, numerous site servers may be employed.” (’250 patent

at 51:51-53.) In particular, “older archived data may also be stored on an integral

or a remote computer system database . . . or kept on additional storage devices on

central site server 113.” (’250 patent at 51: 53-56.)

54. Similarly, Otto discloses “storing the required user identification data,

including voice information, . . . in the database 113 for reference in future user

accesses of the system for improved voice print identification 100.” (Ex. 1005 at

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4:49-53; see also Ex. 1005 at 5:14-15 (“database 114 comprises a memory in

which are stored a plurality of user identity validation entries”).) Database 113 is

shown below in the context of the overall architecture of Otto’s system:

(Ex. 1005 at Fig. 1.) According to Otto, Figure 3 below is “a typical database

architecture”:

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(Ex. 1005 at 3:15-16, Fig. 3.) As shown, the database includes sort keys in the

form of user names, voice print identification phrases, and PINs. (Ex. 1005 at

3:15-16, Fig. 3.) As a result, in my opinion, one of ordinary skill in the art would

understand Otto discloses the claimed “database.”

c. “a control platform configured to”


the first intermediate preamble of this claim is limiting. If the preamble is deemed

not limiting for legal reasons, my opinions expressed in this subsection should not

affect the patentability analysis.

56. Otto discloses this feature of claim 1. The phrase “control platform”

is not expressly defined in the intrinsic record, and does not otherwise appear in the

’250 patent outside of the claims. Based on the language of claim 1, however, one

of ordinary skill in the art would understand that the “control platform” comprises

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at least the elements of the voice print identification system 100 that allow a user to

input biometric data, input identifying information, and store both the biometric

data and identifying information in the database such that the identifying

information is “in correspondence with the biometric data of the user.” (See, e.g.,

’250 patent, claim 1.)

57. In my opinion, one of ordinary skill in the art would understand that

the system for improved voice print identification system 100 includes all of the

features necessary for providing the relevant control aspects of a control platform,

including input ports 101, buffer 114, database 113, processor 105, and voice-to-

text conversion 112. (Ex. 1005 at Fig. 1.) Sections IX.B.1.d through IX.B.1.g

demonstrate that Otto’s improved voice print identification system 100 performs

each of the necessary functions required of the “control platform” in claim 1.

d. “receive biometric data related to a user”

58. Otto discloses a registration system for receiving voiceprints3 from a

user. (Ex. 1005 at 4:46-53.) According to Otto, “it is assumed that the user who is

accessing the system for improved voice print identification 11 has previously

registered with the system.” (Ex. 1005 at 4:46-48.) Otto explains that registration

3 According to the ’250 patent, biometric data can include at least a user’s

voiceprint. (See ’250 patent, claim 4, 5:42-47.)

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“is accomplished in well known fashion by the user storing the required user

identification data, including voice information, that is stored in the database 113

for reference in future user accesses of the system for improved voice print

identification 100.” (Ex. 1005 at 4:49-53 (emphasis added).) Otto thus discloses a

registration process that includes storing “user identification data, including voice

information,” in a database. This “user identification data, including voice

information” includes the step of receiving a voiceprint—the claimed biometric

data—from the user “for reference in future user accesses of the system for

improved voice print identification 100.” (Ex. 1005 at 4:46-53, 5:66-6:3 (“For

example, the user can prestore their name as the user identity validation data. A

text version of this name can function as the sort key while the stored voice input

version of the name can serve as the voice print identifying phrase.”) (emphasis

added); see also Ex. 1005 at 5:16-23.)

e. “store the biometric data in the database”

59. Otto discloses that a user’s voiceprint is stored in a database during

the registration process. (Ex. 1005 at 4:46-53.) Otto explains that registration “is

accomplished in well known fashion by the user storing the required user

identification data, including voice information, that is stored in the database 113

for reference in future user accesses of the system for improved voice print

identification 100.” (Ex. 1005 at 4:50-53 (emphasis added).) In my opinion, one

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of ordinary skill in the art would understand that “user identification data,”

including “voice information,” includes biometric data in the form of a voiceprint,

which is stored in database 113. (Ex. 1005 at 5:66-6:3 (“For example, the user can

prestore their name as the user identity validation data. A text version of this name

can function as the sort key while the stored voice input version of the name can

serve as the voice print identifying phrase.”) (emphasis added); see also Ex. 1005

at 5:16-23.) Figure 3 demonstrates how a user’s voiceprint (301B) is stored in a

typical database architecture:

(Ex. 1005 at Fig. 3, 3:15-16.) In my opinion, one of ordinary skill in the art would

thus understand that Otto discloses a registration system that stores received

voiceprints in a database.

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f. “receive identifying information related to the user”

60. According to the ’250 patent, identifying information can include at

least a PIN or a name of the user. (See ’250 patent, claims 5 and 6.) Otto discloses

a registration system for receiving personal information, including a user’s name or

PIN. (E.g., Ex. 1005 at 4:46-53, 5:66-6:3.) Otto discloses that “the user can

prestore their name as the user identity validation data. A text version of this name

can function as the sort key while the stored voice input version of the name can

serve as the voice print identifying phrase.” (Ex. 1005 at 5:66-6:3.) Claim 1 does

not recite a specific time when the claimed “identifying information” is received

and only requires one form of “identifying information.”

61. Otto also discloses the use of a PIN, teaching that “[t]he user can be

requested to provide a Personal Identification Number (PIN) as verification of their

identity . . . .” (Ex. 1005 at 6:5-7.) Figure 3 illustrates both a user’s name and

PIN, as stored in a typical database architecture:

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(Ex. 1005 at Fig. 3.) Receiving the user’s PIN is separately sufficient to satisfy

this feature of claim 1. Based on Figure 3, one of ordinary skill in the art would

understand that a user’s voiceprint can be separately indexed by a user’s name and

PIN. (See Ex. 1005 at 5:18-20 (Otto further explains that the sort key “is stored in

text searchable form in the database 114.”).)

62. Otto does not expressly disclose when its system receives the user’s

name and PIN for storage in its database, but claim 1 does not specify any

particular timing. In my opinion, to the extent claim 1 requires identifying the

specific timing of the receiving, one of ordinary skill in the art would understand

that it occurs during the same registration process used to receive the user’s

voiceprint biometric data. This understanding is based on Otto’s disclosure that its

registration process is used to receive “user identification data” in addition to

receiving the user’s voice information. (Ex. 1005 at 4:49-53.)

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63. Otto states that this user identification data “is stored in the database

113 for reference in future user accesses of the system for improved voice print

identification 100.” (Ex. 1005 at 4:49-53.) The user’s name is one of the pieces of

information that Otto discloses as being accessed in “future user accesses,” and it

is also disclosed as being used as a sort key, allowing the system to function

quickly and to provide the improved voiceprint identification. (See, e.g., Ex. 1005

at 4:62-5:11.) Based on Otto’s disclosure, in my opinion, one of ordinary skill

would understand that the “user identification data” provided during registration

includes at least the user’s name. And because the user’s PIN is also disclosed as

being stored in the database, one of ordinary skill in the art would understand that

the PIN was provided during the registration process, as no other process is

identified for initially storing that information.

64. Collecting the user name and PIN during registration would have also

been obvious in light of (1) Otto’s disclosure of a registration process for collecting

other user identification data during registration, and (2) Otto’s disclosure that, at

some point, the user’s name and PIN are stored in the database. (See Ex. 1005 at

4:46-53, 5:66-6:3, Fig. 3.) Using Otto’s registration system to collect the user’s

user name and PIN would have been advantageous because it would use Otto’s

registration system for gathering additional identifying data (a user name and PIN)

during a process that is already used for collecting similar identifying information

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from a user. Performing the name and PIN collection at registration would also

avoid the need to approach the user a second time for information necessary to

secure the user’s account. As a result, in my opinion, while Otto does not

expressly disclose when its system receives the name and PIN from the user, it

would have been an obvious change to receive the name and PIN (i.e., types of the

claimed “identifying information”) from the user during registration.

65. The receipt of either the user’s name or the user’s PIN satisfies this

requirement of claim 1, but Otto discloses or suggests receiving both. As a result,

Otto discloses or suggests that its access control system “receive[s] identifying

information related to the user,” as claimed.

g. “store the identifying information in the database in correspondence with the biometric data of the user”

66. Otto also discloses that the user’s PIN or name is stored in the

database alongside the voiceprint data obtained during a registration process. (Ex.

1005 at 4:46-53.) Otto discloses “the user can prestore their name as the user

identity validation data. A text version of this name can function as the sort key

while the stored voice input version of the name can serve as the voice print

identifying phrase.” (Ex. 1005 at 5:66-6:3.) Figure 3 demonstrates a typical

database architecture:

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(Ex. 1005 at Fig. 3.) In my opinion, based on Figure 3 and other disclosures of

how the user’s name is used as a sort key for the voiceprints, one of ordinary skill

in the art would understand that a user’s voiceprint is indexed by a user’s name and

PIN. (See also Ex. 1005 at 5:18-20 (Otto further explains that the sort key “is

stored in text searchable form in the database 114.”).) Thus, Otto discloses storing

the identifying information in the database in correspondence with the biometric

data of the user.

h. “an authentication module configured to”


the second intermediate preamble of this claim is limiting. If the preamble is

deemed not limiting for legal reasons, my opinions expressed in this subsection

should not affect the patentability analysis.

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68. Otto discloses this feature of claim 1. The phrase “authentication

module” is not expressly defined in the ’250 patent, nor does it otherwise appear in

the ’250 patent outside of the claims. Based on the claims, however, one of

ordinary skill in the art would understand that the “authentication module”

comprises the elements of the voice print identification system 100 that allow a

user to perform all of the steps necessary to authenticate a user. (See, e.g., ’250

patent, claim 1.) In my opinion, one of ordinary sill in the art would understand

that the system for improved voice print identification 100 includes all of the

hardware and software needed to authenticate its users, including input ports 101,

switch 106, buffer 114, database 113, processor 105, voice print identification 111,

and voice-to-text conversion 112. Sections IX.B.1.i through IX.B.1.n demonstrate

that Otto’s improved voice print identification system 100 performs each of the

necessary functions required of the “authentication module” in claim 1.

69. These features overlap with the features mapped to the “control

platform” in Section IX.B.1.c. In my opinion, this overlapping mapping makes

sense because the control platform is used to receive and store the initial

identifying and biometric information, and the authentication module receives the

same type of information and further performs a comparison between this newly-

received information and information already in the claimed database. These

overlapping functions lend themselves to implementation with similar or identical

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hardware for purposes of efficiency. In addition, both the control platform and

authentication module expressly require use of the same database, with both

features having features directed to “the database” recited earlier in the claim.

Although the control platform is recited separately from the authentication module,

nothing in the ’250 patent claims or specification would lead one of ordinary skill

to understand that those features utilize distinct components.

i. “receive second biometric data related to a second user”

70. Otto discloses that an authentication model receives a voice input

from a user attempting to access a secure system:

(Ex. 1005 at Fig. 2 (steps 208-210).) According to Otto, “[t]he user”—

corresponding to a user attempting to access a secure telephone system—“can

input a single voice input, which voice input is used for both a sort key and a voice

print identifying phrase or the user can input separate sort key and voice print

identifying phrases.” (Ex. 1005 at 2:27-30; see also Ex. 1005 at 2:15-17, 5:39-46.)

Otto explains that “the voice print identification phrase 301 B is stored in digitized

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form in the database 114 in a manner not to lose the user specific characteristics of

this voice input.” (Ex. 1005 at 5:20-23.) In my opinion, one of ordinary skill in

the art would understand that the “voice print identifying phrase” component of the

voice input is the claimed second biometric data related a second user. Otto’s

system receives this “voice print identifying phrase” from a user intent on

accessing a secure telephone system.

j. “receive second identifying information related to the second user”

71. The ’250 patent explains that second identifying information can

include at least a PIN or a name of the user. (See ’250 patent, claims 5 and 6.)

Similarly, Otto discloses that the speaker verification system receives a username

or PIN from a user attempting to access a secure telephone system:

(Ex. 1005 at Fig. 2 (step 202-206), 4:62-67.) Otto further explains that “[a] typical

operation includes the voice response system 104 instructing the user to input a

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sort key, such as the user's name,” which is provided “in the form of their name

spoken into the system.” (Ex. 1005 at 4:62-67; see also Ex. 1005 at 2:27-30, 4:57-

5:3.) A voice-to-text conversion system produces a “text string indicative of sort

key.” (Ex. 1005 at Fig. 2.)

k. “find in the database third identifying information that substantially matches the second identifying information received from the second user”

72. Otto discloses this limitation in steps 204-207 of Figure 2:

(Ex. 1005 at Fig. 2 (steps 204-207).) At step 204 in Otto’s system, a user provides

a voice input sort key, which can include a name. (Ex. 1005 at Fig. 2, 4:62-67.)

At step 206, the voice to text conversion system produces a “text string indicative

of sort key.” (E.g., Ex. 1005 at Fig. 2.) The personal information contained in this

“text string indicative of sort key” is the second identifying information received

from the second user. (Section IX.B.1.j.) Otto then explains: “The text string

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output by the voice to text conversion system 112 is used . . . to sort through the

entries that are stored in database 113, to locate any entries contained therein

whose sort key corresponds to the text string produced by the voice to text

conversion system 112.” (Ex. 1005 at 5:6-11, Fig 2 (step 207).) Thus, in step 207,

the processor presorts through database entries to locate entries whose sort key

corresponds to the text string. (Ex. 1005 at Fig. 2 (step 207).) The “entries whose

sort key corresponds to the text string” are the claimed “third identifying

information.”

73. Otto explains in detail how this process works:

The processor 105 typically would not only look for exact matches

between the stored sort keys and the text string output by the voice to

text conversion system 112, but also phonetically close entries, to

compensate for any inaccuracy in the text generation process. Thus,

all sort key entries that differ from the text string by less than a

predetermined amount are candidates for the voice print identification

process. The accuracy of this presort operation can be regulated by

adjusting the [closeness] of the match that is required for a sort key to

be classified as a match candidate. This would still produce only a

limited number of matches and serve the purpose of the system for

improved voice print identification 100. If no match is determined,

the process can either be repeated with a less distinct text comparison,

or default to the processing of the voice print identification phrase

without presorting the database entries.

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(Ex. 1005 at 5:27-38 (emphasis added).) Thus, in my opinion, one of ordinary skill

would understand that the processor 105 looks for matches, including “exact

matches,” between the stored sort keys in the database (third identifying

information) and the text string output by the voice to text conversion system

(second identifying information).

74. As discussed in Section VII, the intrinsic record does not otherwise

define the claimed “substantially matches,” but in my opinion, one of ordinary skill

in the art would understand that the phrase at least encompasses “matches.”

Because Otto discloses both exact matches and matches that deviate from exact

matches by predetermined amounts, Otto discloses “find[ing] in the database third

identifying information that substantially matches the second identifying

information received from the second user.”

75. Otto focuses on its sort key being the user’s name, and in my opinion,

this is sufficient for finding that Otto discloses this feature of claim 1. But it also

would have been an obvious change to instead use Otto’s PIN as the sort key to

“find in the database third identifying information that substantially matches the

second identifying information received from the second user.” Otto does not limit

its “sort key” to user names, instead stating that “[a] typical operation includes the

voice response system 104 instructing the user to input a sort key, such as the

user’s name, at step 203.” (Ex. 1005 at 4:62-64.) Otto also discloses that the

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user’s PIN is stored in its database in the same fashion as the user’s name is stored.

See Sections IX.B.1.f and IX.B.1.g, above.

76. As a result, it would have been an obvious and trivial change to use

the user’s PIN as the sort key for finding a subset of database entries. The same

hardware and process described above to find database entries based on the user’s

name would function to sort based on the user’s PIN instead. In my opinion, one

of ordinary skill in the art would have been motivated to sort based on the user’s

PIN instead of the user’s name because PINs are often less subject to overlap than

names, especially when the PINs may comprise both letters and numbers, as shown

in Otto’s Figure 3. Common names can frequently appear in databases multiple

times, and because Otto seeks to find both exact and partial matches, it may return

a larger subset of entries for voiceprint comparison when searching on a name as

opposed to searching on a PIN. By returning a larger subset, Otto’s system would

need to run its slower voiceprint comparison technique more times, slowing its

response time. One of ordinary skill in the art, therefore, would have recognized

the advantage of using Otto’s PIN as the sort key and would have had a reasonable

chance of succeeding in altering Otto’s system to use it as the sort key while

optionally using the user’s name as further information to verify the user.

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l. “retrieve from the database third biometric data associated with the third identifying information”

77. In step 207 the processor presorts through database entries to locate

entries whose sort key corresponds to the name input by the user (in the form of a

text string). (Ex. 1005 at Fig. 2 (step 207).) The entries whose sort key

corresponds to the text string are the claimed “third identifying information.”

Then, at step 211, the processor retrieves voice print identification phrases from

the database corresponding to the sort keys identified in step 207:

(Ex. 1005 at Fig. 2 (step 211); see also Ex. 1005 at 2:15-21, 5:46-52 (“Processor

105 at step 211 seriatim presents ones of the voice print identification phrases

corresponding to sort keys identified at step 207 to the voice print identification

system 111.”).) The “voice print identification phrases” retrieved from the

database are the “third biometric data associated with the third identifying

information.” As a result, one of ordinary skill in the art would understand that

Otto discloses “retriev[ing] from the database third biometric data associated with

the third identifying biometric information.”

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m. “compare the second biometric data received from the user with the third biometric data retrieved from the database”

78. Otto discloses comparing the voiceprint input by the user attempting

to access a secure system with a set of voiceprints retrieved from its database.4

(Ex. 1005 at Fig. 2 (step 212).) As addressed above, Otto’s “initial user voice

input of voice print identification phrase” in step 209 is the “second biometric data

received from the user” and the “voice print identification phrases” retrieved from

4 Claim 1 recites receiving “biometric data related to a user” and receiving

“second biometric data related to a second user.” Claim 1 does not otherwise

recite that this “second biometric data” is also received from any user other than

“the second user.” I have thus been instructed that for claim 1’s recitation of

“second biometric data received from the user,” “the user” should be treated as

“the second user.” Otto, however, discloses that the “user” and the “second user”

can be the same person—indeed, a main purpose of Otto’s system is to determine

whether the second user is in fact the same person as the original user. As a result,

Otto discloses that the “second biometric information” is provided by both the

original user and the second user in those instances where both users are the same

person.

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the database in step 211 are the “third biometric data received from the database.”

(See Sections IX.B.1.i, IX.B.1.l.)

79. The ’250 patent does not disclose how the comparison process works.

Instead, the ’250 patent explains that “information is compared to the biometric

information already located on the site server using complicated algorithms to

process the digitized data.” (’250 patent at 48:55-57 (emphasis added).) The ’250

patent continues, disclosing that “[i]f the supplied information matches the stored

information, the user is authenticated and can use the call system call management

system.” (’250 patent at 48:57-60.) Nowhere does the ’250 patent disclose the

operation of the “complicated algorithms”; it only discloses that there is some sort

of comparison between biometric data.

80. Otto’s speaker verification process also requires a comparison

between biometric data at step 212, and as a result, Otto discloses “compar[ing] the

second biometric data received from the user with the third biometric data

retrieved from the database,” as required by claim 1. According to Otto, at step

212 “[t]he voice print identification system is . . . activated to compare a user

provided voice input to the selected subset of stored user identity validation data to

validate the identity of the user who is requesting access.” (Ex. 1005 at 2:21-25,

Fig. 2 (step 212); see also Ex. 1005 at 5:46-52 (“Processor 105 at step 211 seriatim

presents ones of the voice print identification phrases corresponding to sort keys

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identified at step 207 to the voice print identification system 111, which uses the

presented stored voice print identification phrase at step 212 to compare with the

user provided voice print identification phrase until a match is located.”), 5:20-23.)

In my opinion, Otto thus discloses that its voice print identification system

compares user voice input with certain voiceprint entries identified in a database,

and as a result, Otto’s disclosure of a comparison meets this claim limitation.

n. “authenticate the second user based on the comparison”

81. Otto discloses this limitation. The ’250 patent explains that “[i]f the

supplied information matches the stored information, the user is authenticated and

can use the . . . call management system.” (’250 patent at 48:57-60.) Thus,

according to the intrinsic record, the claimed “authenticate” entails determining

whether the previous comparison step resulted in a match. Otto discloses

authenticating the user attempting to access the secure system based on the

comparison step discussed in Section IX.B.1.m:

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(Ex. 1005 at Fig. 2 (step 211-214), 2:21-25 (“to validate the identity of the user

who is requesting access”), 5:52-60.)

82. Otto explains in Figure 2 that the voice print identification system

either finds a match or a failure to match between the user voice input and the

voiceprints identified in the database. (Ex. 1005 at Fig. 2.) According to Otto,

“[t]he voice print identification system 111 at step 213 then outputs an indication

of a match or lack thereof between the user provided voice print identification

phrase and the stored benchmark phrase for this 55 user.” (Ex. 1005 at 5:52-56.)

Otto continues, explaining that “[i]f there is a failure to match the call connection

is terminated at step 213 and access is denied. If a match is determined, then

switch 106 is activated at step 214 to interconnect the user's call connection with

the secure access system 102.” (Ex. 1005 at 5:56-60.) One of ordinary skill in the

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art would thus understand that Otto discloses determining whether the comparison

step resulted in a match 212, and as a result, Otto discloses the authentication step.

2. Claim 2

a. “The system of claim wherein the control platform is further configured to: receive further information related to the user”5

83. Otto’s control platform receives at least two types of information

related to the user, including the user’s name and PIN, as discussed above in

Section IX.B.1.f. Otto discloses that a “user can prestore their name as the user

identity validation data. A text version of this name can function as the sort key

while the stored voice input version of the name can serve as the voice print

identifying phrase.” (Ex. 1005 at 5:66-6:3.) Otto discloses that “further user

identification validation data can be used to supplement that described above. The

user can be requested to provide a [PIN] as verification of their identity.” (Ex.

1005 at 6:3-7.) One of ordinary skill in the art would understand that, depending

on whether the username or PIN is considered to be the “identifying information,”

Otto discloses that whichever data is not the “identifying information” can be the

5 Claim 2 appears to be a dependent claim, but it does not recite the claim

from which it depends. I have been instructed that for the purpose of this analysis

to assume that claim 2 is dependent on independent claim 1.

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“further information related to the user,” required by claim 2. Thus, Otto discloses

this claim limitation.

b. “store the further information in the database in correspondence with the biometric data of the user”

84. Otto discloses that both the user’s name and PIN are stored in its

database in the same record as the user’s voiceprint (i.e., in correspondence with

the biometric data of the user), as explained above in Section VI.B.1.g. This is

illustrated in Otto’s Figure 3, which shows a “typical database architecture” (Ex.

1005 at 3:15), and depicts a user’s name (in the “sort key” column) and PIN stored

in correspondence with the user’s voiceprint identification phrase:

(Ex. 1005 at Fig. 3.) One of ordinary skill in the art would thus understand that

Otto discloses “stor[ing] the further information in the database in correspondence

with the biometric data of the user.”

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3. Claim 3

a. “The system of claim 2, wherein the further information includes at least one of an identification number, a name of the user, a phone number, a phone number of a called party, and a language preference.”

85. As explained above in Sections IX.B.1.f and IX.B.2.a, Otto discloses

that the “further information” in claim 2 may be either the name of the user or a

PIN, which one of ordinary skill in the art would understand is one type of the

claimed “identification number.” Accordingly, Otto discloses this claim feature.

4. Claim 4

a. “The system of claim 1, wherein the biometric data includes at least one of a voiceprint, a face architecture, a signature architecture, a fingerprint, a retinal print, a hand geometry, and an infrared pattern of the face.”

86. According to Otto, “[t]he voice print identification system is . . .

activated to compare a user provided voice input to the selected subset of stored

user identity validation data to validate the identity of the user who is requesting

access.” (Ex. 1005 at 2:21-25 (emphases added); see also Ex. 1005, Abstract

(“system for improved voice print identification”).) One of ordinary skill in the art

would thus understand that Otto’s “voice print identification system” includes at

least “voiceprints,” as required by claim 4.

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5. Claim 5

a. “The system of claim 1, wherein the identifying information includes a personal identification number.”

87. Otto discloses that a “user can prestore their name as the user identity

validation data. A text version of this name can function as the sort key while the

stored voice input version of the name can serve as the voice print identifying

phrase.” (Ex. 1005 at 5:66-6:3.) Otto also discloses that “further user

identification validation data can be used to supplement that described above. The

user can be requested to provide a [PIN] as verification of their identity.” (Ex.

1005 at 6:3-7.) As a result, and as discussed in Section IX.B.1.f, one of ordinary

skill in the art would understand that “identification validation data” could be

either a name or a PIN.

88. The database architecture of Figure 3 shows that voice print

identification phrases are indexed by both PINs and names:

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(Ex. 1005 at Fig. 3.) As a result, one of ordinary skill in the art would understand

that Otto discloses or suggest the features added by claim 5.

6. Claim 6

a. “The system of claim 1, wherein the identifying information includes a name of the user.”

89. Otto discloses that a “user can prestore their name as the user identity

validation data. A text version of this name can function as the sort key while the

stored voice input version of the name can serve as the voice print identifying

phrase.” (Ex. 1005 at 5:66-6:3, Fig. 3.) In my opinion, one or ordinary skill in the

art would thus understand that “identification validation data” can be a name, and

thus Otto discloses “wherein the identifying information includes a name of the

user.” (See also Section IX.B.1.f.)

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7. Claim 8

a. “The system of claim 1, wherein the biometric data is received during the registration process that is not a part of a call”

90. Otto discloses a registration system that is not a part of a call for

receiving voiceprints6 from a user. (Ex. 1005 at 4:46-53.) According to Otto, “it is

assumed that the user who is accessing the system for improved voice print

identification 11 has previously registered with the system.” (Ex. 1005 at 4:46-48.)

Otto further explains that registration “is accomplished in well known fashion by

the user storing the required user identification data, including voice information,

that is stored in the database 113 for reference in future user accesses of the system

for improved voice print identification 100.” (Ex. 1005 at 4:49-53 (emphasis

added).) Otto also explains that the referenced “voice information” is received and

stored in the form of a voiceprint. (Ex. 1005 at 4:46-53, 5:66-6:3; see also Ex.

1005 at 5:16-23.) In my opinion, one of ordinary skill in the art would understand

that Otto’s statement about using the received information “for reference in future

user accesses of the system” means that the registration process is separate from

6 According to the ’250 patent, biometric data can include at least a user’s

voiceprint. (See ’250 patent, claim 4, 5:42-47.)

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future calls. (See Ex. 1005 at 4:46-57.) Accordingly, Otto teaches this claim

feature.

b. “and the second biometric data is received during an authentication step of a call.”

91. Otto discloses that “[t]he voice print identification system is . . .

activated to compare a user provided voice input to the selected subset of stored

user identity validation data to validate the identity of the user who is requesting

access.” (Ex. 1005 at 2:21-25 (emphasis added), Fig. 2 (steps 208-210).) In my

opinion, one of ordinary skill in the art would understand that the second biometric

data is received during one of Otto’s “future user accesses” (discussed above),

when a user requests access to the secure system and authentication is necessary.

One of ordinary skill would also understand that these “future user accesses” refer

to future calls separate from the registration process. Thus, the second user’s voice

input (the second biometric data) is received during the authentication step of a

call.

8. Claim 9

a. “The system of claim 1, wherein the user and the second user are the same user.”

92. As discussed with respect to claim 1, Otto discloses an authentication

process “to validate the identity of the user who is requesting access.” (Ex. 1005 at

2:24-25.) In my opinion, one of ordinary skill in the art would understand that

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when a user has been validated and granted access to a system, the user and the

second user have been confirmed as the same user. In Otto, the process of

validation requires verifying that the stored voiceprint from a user (acquired during

a registration process) substantially matches the voiceprint from the a user

attempting to access the telephone system. (See Ex. 1005 at 5:52-56 (“The voice

print identification system 111 at step 213 then outputs an indication of a match or

lack thereof between the user provided voice print identification phrase and the

stored benchmark phrase for this user.”), Fig. 2.) If the voiceprints match, the user

and the second user are the same user. (Ex. 1005 at 5:57-60, Fig. 2 (step 214).)


93. The limitations of claim 10 are substantially similar to those in

independent claim 1, so the same proof of unpatentability also demonstrates that

claim 10 is disclosed or suggested by Otto. (See Section IX.B.1.)

10. Claim 11

94. The limitations of claim 11 are substantially similar to those in claim

2, so the same proof of unpatentability also demonstrates that claim 11 is disclosed

or suggested by Otto. (See Section IX.B.2.)

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11. Claim 12

95. The limitation of claim 12 is substantially similar to that in claim 3, so

the same proof of unpatentability also demonstrates that claim 12 is disclosed or

suggested by Otto. (See Section IX.B.3.)

12. Claim 13




13. Claim 14




14. Claim 15




X. Ground 2: Otto in View of Gainsboro and San Martin Renders Obvious Claims 7 and 16-2

99. It is my opinion that claims 7 and 16-20 patent are unpatentable based

on Otto in view of Gainsboro and further in view of San Martin. My specific

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opinions as to unpatentability are set forth below. For the purpose of this ground, I

considered the time of invention to be August 8, 2002.

A. Overview of Prior Art

1. Overview of Gainsboro

100. U.S. Patent No. 5,655,013, to Jay L. Gainsboro (“Gainsboro”),

entitled “Computer-Based Method and Apparatus for Controlling, Monitoring,

Recording, and Reporting Telephone Access,” was filed August 2, 1995, and

issued August 5, 1997.

101. Gainsboro discloses the use of biometric voice verification to prevent

PIN abuse by residents. (Ex. 1006 at 5:39-30.) According to Gainsboro, to

accomplish biometric monitoring, “periodic samples of the caller’s voice are

provided to the [computer control unit (“CCU”)]—and checked against a list of

authorized voice prints—to ensure that no unauthorized callers are participating in

a call.” (Ex. 1006 at 5:21-25.) Gainsboro notes, however, that biometric voice

verification would obviate any problems due to unauthorized PIN access, “as the

voice would be used to validate entry into any inmate account.” (Ex. 1006 at 5:31-

37 (emphasis added).)

102. Gainsboro discloses a method of managing telephone activity in an

institutional environment to improve security and reduce costs. (Ex. 1006 at 3:11-

13.) Gainsboro discloses three levels of monitoring a telephone call: (1) “‘live’

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call (voice) monitoring, where the prison officials actively listen to a live call,”

(Ex. 1006 at 4:30-31); (2) “call recording,” (Ex. 1006 at 4:32); and (3) “‘passive’

line monitoring,” (Ex. 1006 at 4:34-39.)

2. Overview of San Martin

103. U.S. Patent No. 6,681,205, to Michelle San Martin, et al. (“San

Martin”), entitled “Method and Apparatus for Enrolling a User for Voice

Recognition,” was filed December 17, 1999, and issued January 20, 2004.

104. San Martin is directed to a method and apparatus for enrolling a user

in a voice recognition system and teaches an improvement to a conventional

speaker recognition system. (Ex. 1007, Abstract.) In particular, San Martin

teaches that biometric data sampled from a known user can be used to refine a

previously extracted voiceprint if that voiceprint exceeds a certain confidence

level: “If the extracted voiceprint matches with sufficient confidence . . . , the

extracted voiceprint may be optionally used to refine 422 the stored voiceprint for

the matching account number and the refined voiceprint is stored in place of [the

original stored voiceprint].” (Ex. 1007 at 11:18-22.)

B. Rationale to Combine Otto, Gainsboro, and San Martin

105. As addressed above, Otto discloses independent claim 1’s

conventional speaker verification system. As of at least the earliest priority date of

the ’250 patent claims, the prior art recognized concerns with using only a

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conventional speaker verification system during the initiation of a telephone call.

(See, e.g., Ex. 1006 at 5:17-37; Ex. 1010 at 2:41-66.) The prior art explained that

unauthorized users could potentially try and access the system after the phone call

has already been initiated. (See, e.g., Ex. 1006 at 5:17-37; Ex. 1010 at 2:41-66.)

As a result, the prior art taught a number of improvements to conventional speaker

verification systems, including biometric sampling during the telephone call itself.

One of ordinary skill in the art would have been motivated to modify and improve

Otto’s speaker verification system with a well-known technique for monitoring

telephone systems, such as the one taught by Gainsboro.

106. Gainsboro, like the ’250 patent, recognizes concerns with PIN-only

authentication measures and teaches biometric voice verification and monitoring.

(Ex. 1006 at 5:17-37.) Gainsboro teaches that these improvements to a traditional

secure telephone system can be used to:

ensure that no unauthorized callers are participating in a call, and to

ensure that inmates are not sharing or selling relatively liberal calling

privileges associated with a particular PIN or inmate account to other

inmates that are subject to more limited calling privileges. The use of

biometric voice verification (or “voice prints”) can prevent PIN abuse

in general. For example, if a particular inmate with restricted calling

privileges, or no available funds, attempted to force (e.g., by

threatening physical attack) another inmate with relatively non-

restricted calling privileges (or available funds) to turn over his PIN,

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biometric voice verification would obviate this problem, as the voice

would be used to validate entry into any inmate account.

(Ex. 1006 at 5:24-37.)

107. Gainsboro explains that during biometric voice verification the

system “may digitize a sample of the caller’s voice” and then “[compare] the

digitized sample with a stored voice print, to verify the identity of the caller.” (Ex.

1006 at 5:17-21.) The “biometric monitoring may also be used in a passive call

monitoring mode, wherein periodic samples of the caller’s voice are provided to

the [Computer Control Unit] . . . to ensure that no unauthorized callers are

participating in a call.” (Ex. 1006 at 5:22-25.) Thus, Gainsboro recognized that

one way of improving access control for a telephone system was periodically

sampling the voice of the parties to a telephone call. Based on this teaching and

the other teachings in the art, one of ordinary skill would have understood that

implementing Gainsboro’s teachings in Otto’s system would improve the security

of Otto’s speaker verification system.

108. In my opinion, one of ordinary skill in the art also would have had a

reasonable expectation of success in combining Gainsboro’s monitoring system

with Otto’s speaker verification system. Otto’s voice response system already has

the capability to obtain and store voiceprints from a user received via a call

connection through a communication network. (See, e.g., Ex. 1005 at 4:53-5:3.)

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The same hardware used by Otto to receive and store the voiceprints would also be

used by the combined Otto/Gainsboro system once the user’s call connection has

been established with a third party to obtain and store biometric information in a

database.

109. For the monitoring features, through straightforward hardware or

software changes, one of ordinary skill would have modified Otto’s system to

permit monitoring audio during a phone call and taking periodic samples of a

caller’s voice. In one simple implementation, one would need to program Otto’s

already-existing voice prompting system to perform its usual function of

prompting at the start of a call, but then disable the prompts and activate the same

recording and analysis function to occur at defined intervals throughout a call.

Otto’s switch 106 would be configured to maintain the connection between both

the prompting/recording system and the destination the caller is attempting to

reach. In my opinion, this and other straightforward implementations were well

within the capability of one of ordinary skill.

110. The accuracy and security of the Otto/Gainsboro system could be

further improved based on the prior art’s teaching of refining the stored reference

biometric data over time, as taught in San Martin. San Martin teaches that

biometric data sampled from a known user can be used to refine a previously

extracted voiceprint: “If the extracted voiceprint matches with sufficient

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confidence . . . , the extracted voiceprint may be optionally used to refine 422 the

stored voiceprint for the matching account number and the refined voiceprint is

stored in place of” the original stored voiceprint. (Ex. 1007 at 11:18-22.) San

Martin teaches that this feature is part of its system for providing more “secure and

accurate speaker verification.” (Ex. 1007 at 2:36-38; see also Ex. 1007 at 2:14-

19.) In my opinion, based on these teachings, one of ordinary skill would have

understood that the ability to refine a voiceprint and improve the accuracy of the

speaker verification process would improve the security of the Otto/Gainsboro

system and its ability to control access to a telephone system.

111. One skilled in the art also would have had a reasonable expectation of

success in combining San Martin’s teachings with the Otto/Gainsboro system.

Otto/Gainsboro’s speaker verification and monitoring system is already capable of

obtaining and storing voiceprints from a user received during a call, as discussed

above. The same hardware used by the Otto/Gainsboro system would also

function in the combined Otto/Gainsboro/San Martin system to obtain and store

biometric information received during a call in a database. The primary change

would be to add the capability to refine the stored voiceprint by evaluating new

voiceprints and storing those that are believed to more closely represent the user’s

voice. This change could be implemented in software in known fashion, as taught

in San Martin. Because this software would run on the hardware already present in

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the Otto/Gainsboro system, the modification is straightforward and within the

capability of one of ordinary skill.

1. Claim 7

a. “The system of claim 1, wherein the biometric data is received during a call, and the second biometric data is received during the same call.”

112. Otto discloses or suggests the features of claim 1, as explained in

Section IX.B.1 above, but it does not disclose “wherein the biometric data is

received during a call.”

113. San Martin, however, teaches that both the biometric data that is

stored in a database for later comparison and the second biometric data being used

for authentication are received during the same call. It teaches that an extracted

voiceprint may be used to refine a stored voiceprint such that the refined voiceprint

is stored in place of the original reference voiceprint. (Ex. 1007 at 11:19-22.) This

refined voiceprint is stored in a database and “indexed by the user’s account

identifier.” (Ex. 1007 at 6:31-33.)

114. In addition, Gainsboro teaches biometric verification and monitoring:

In addition, the invention may include biometric voice verification

features. The [trunk management unit] for example, may digitize a

sample of the caller's voice. The [computer control unit] then

compares the digitized sample with a stored voice print, to verify the

identity of the caller. Such biometric monitoring may also be used in

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a passive call monitoring mode, wherein periodic samples of the

caller's voice are provided to the [computer control unit]—and

checked against a list of authorized voice prints—to ensure that no

unauthorized callers are participating in a call.

(Ex. 1006 at 5:17-25 (emphasis added).) In my opinion, one of ordinary skill in

the art would understand that “periodic samples of the caller’s voice,” which

Gainsboro explains are digitized samples of the caller’s voice that can be

compared to a stored voice print, consist of the user’s biometric data in the form of

a voiceprint. (Ex. 1006 at 5:17-21.) In my opinion, one of ordinary skill in the art

would thus understand that Gainsboro teaches periodically obtaining a voiceprint

from the parties to a call during the call.

115. The combined Otto/San Martin/Gainsboro system, therefore, operates

by monitoring a call as taught in Gainsboro, obtaining multiple voice samples as

taught in Gainsboro and San Martin, using the voice samples for authentication

purposes (making them the “second biometric data”) as taught in Otto, Gainsboro,

and San Martin, and using San Martin’s technique for refining and updating the

biometric data stored in Otto’s database (making the voice samples used for this

purpose the claimed “biometric data”). In the combined system, this is all

accomplished during the same call. Therefore, the combined system renders

obvious every feature of claim 7.

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a. “A method comprising: monitoring audio information of a telephone call wherein the audio information contains the speech of the user”

116. Otto does not disclose “monitoring audio information of a telephone

call wherein the audio information contains the speech of the user.” Gainsboro,

however, teaches this limitation. According to the ’250 patent, “[t]hree existing

types of call monitoring techniques are known in the art.” (’250 patent at 4:1-2.)

The techniques include live monitoring, recording the telephone conversation

using a record device, or passive monitoring. (’250 patent at 4:1-18, 4:21-24

(“monitoring may occur using any combination of the three methods”).) The ’250

patent explains that “passive monitoring may be activated when certain keywords

are spoken” or “if the telephone call if the telephone call at the termination end is

transferred to a third party via certain known detection means such as “click and

pop” detection, etc.” (’250 patent at 4:13-18.)

117. Gainsboro, like the ’250 patent, teaches that “biometric monitoring

may also be used in a passive call monitoring mode, wherein periodic samples of

the caller’s voice are provided to the [Computer Control Unit].” (Ex. 1006 at 5:22-

24 (emphasis added).) “[P]eriodic samples of the caller’s voice” would necessarily

include audio information containing the speech of the user. In my opinion, one of

ordinary skill in the art would thus understand that Gainsboro teaches the claimed

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“monitoring audio information of a telephone call wherein the audio information

contains the speech of the user.”.

b. “obtaining biometric data related to the user from the audio information”

118. Gainsboro teaches “a passive call monitoring mode, wherein periodic

samples of the caller’s voice are provided to the [Computer Control Unit].” (Ex.

1006 at 5:22-24.) Gainsboro explains that during biometric monitoring the system

“may digitize a sample of the caller’s voice” and then “[compare] the digitized

sample with a stored voice print, to verify the identity of the caller.” (Ex. 1006 at

5:17-21.) In my opinion, one of ordinary skill in the art would understand that

these digitized samples of a caller’s voice are the caller’s biometric data extracted

from the general audio of the telephone call. By obtaining these digitized samples,

Gainsboro teaches “obtaining biometric data related to the user from the audio

information.”

c. “storing the biometric data in a database”

119. Gainsboro and Otto do not disclose that a voiceprint received during a

call (as opposed to during a prior registration step) can be stored in a database for

future use as biometric data related to a user (i.e., a reference voiceprint). San

Martin, however, teaches that an extracted voiceprint—such as the digitized

sample obtained from the monitoring in Gainsboro—may be used to refine a

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previously stored voiceprint such that the refined voiceprint is stored in place of

any previously saved biometric data. (Ex. 1007 at 11:19-22.) This refined

voiceprint is stored in a database and “indexed by the user’s account identifier.”

(Ex. 1007 at 6:31-33.) In my opinion, one of ordinary skill in the art would thus

understand that the digitized sample of the caller’s voice obtained during

Gainsboro’s call monitoring would be stored in Otto’s database in the combined

Otto/Gainsboro/San Martin system and could thereafter be used for use in a future

speaker verification process.

120. In addition, storing a voiceprint in a database was well-known in the

art as of at least the earliest potential priority date of the ’250 patent. (Ex. 1007 at

6:31-33 (teaching that a refined voiceprint is stored in “voiceprint storage” and

“indexed by the user’s account identifier”); see also ’250 patent at 9:1-17

(discussing admitted prior art, and recognizing that “Fujimoto, et al. U.S. Patent

No. 5,893,057” teaches a speaker recognition method that includes storing “voice

characteristic information” in a database for subsequent comparison purposes); Ex.

1016.) And, as discussed in Section IX.B.1.e, Otto discloses storing biometric data

in a database for use in a future speaker verification process. Otto, when viewed in

light of the knowledge of one of ordinary skill, therefore teaches or suggests the

“storing” feature of the claims in the context of the Otto/Gainsboro/San Martin

system.

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d. The remaining limitations of independent claim 16 are substantively identical to limitations (f)-(n) of independent claim 1.

121. The remaining limitations of independent claim 16 are substantially

similar to limitations (f) through (n) in independent claim 1, so the same proof of

unpatentability also demonstrates that these limitations of independent claim 16 are

disclosed or suggested by Otto as part of the Otto/Gainsboro/San Martin system.

i. “receiving identifying information related to the user”

122. This limitation of independent claim 16 is substantially similar to

limitation (f) of independent claim 1, so the same proof of unpatentability also

demonstrates that this limitation of independent claim 16 is disclosed or suggested

by Otto as part of the Otto/Gainsboro/San Martin system. (See Section IX.B.1.f.)

ii. “storing the identifying information in the database in correspondence with the biometric data of the user”


limitation (g) of independent claim 1, so the same proof of unpatentability also


by Otto as part of the Otto/Gainsboro/San Martin system. (See Section IX.B.1.g.)

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iii. “receiving second biometric data related to a second user”


limitation (i) of independent claim 1, so the same proof of unpatentability also


by Otto as part of the Otto/Gainsboro/San Martin system. (See Section IX.B.1.i.)

iv. “receiving second identifying information related to the second user”


limitation (j) of independent claim 1, so the same proof of unpatentability also


by Otto as part of the Otto/Gainsboro/San Martin system. (See Section IX.B.1.j.)

v. “finding in the database third identifying information that substantially matches the second identifying information received from the second user”


limitation (k) of independent claim 1, so the same proof of unpatentability also


by Otto as part of the Otto/Gainsboro/San Martin system. (See Section IX.B.1.k.)

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vi. “retrieving from the database third biometric data associated with the third identifying information”


limitation (l) of independent claim 1, so the same proof of unpatentability also


by Otto as part of the Otto/Gainsboro/San Martin system. (See Section IX.B.1.l.)

vii. “comparing the second biometric data received from the user with the third biometric data retrieved from the database”


limitation (m) of independent claim 1, so the same proof of unpatentability also


by Otto as part of the Otto/Gainsboro/San Martin system. (See Section IX.B.1.m.)

viii. “authenticating the second user based on the comparison”


limitation (n) of independent claim 1, so the same proof of unpatentability also


by Otto as part of the Otto/Gainsboro/San Martin system. (See Section IX.B.1.n.)

ix. Alternative Interpretation

130. Unlike claim 7, claim 16 does not require that the reference biometric

data and the comparative biometric data be received during the same call. But if

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claim 16 is interpreted as having this requirement, the Otto/Gainsboro/San Martin

combination discloses a system that does so, as discussed above for claim 7. (See

Section X.B.1.)

3. Claim 17



or suggested by Otto as part of the Otto/Gainsboro/San Martin system. (See

Section IX.B.4.)

4. Claim 18

132. The limitations of claim 18 are substantially similar to those in claims

5 and 6, so the same proof of unpatentability also demonstrates that claim 18 is

disclosed or suggested by Otto as part of the Otto/Gainsboro/San Martin system.

(See Section IX.B.5, IX.B.6.)

5. Claim 19




Section IX.B.2.)

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6. Claim 20




Section IX.B.3.)

XI. Ground 3: Otto in View of Hogg Renders Obvious Claims 7 and 16-20

A. Priority Date of Claims 7 and 16-20

135. I understand that patent claims must contain written description

support to be entitled to priority from a parent patent application. In my opinion,

one of ordinary skill in the art would understand that claims 7 and 16-20 of the

’250 patent do not contain written description support for the subject matter of

claims 7 and 16-20 in any parent patent applications prior to November 22, 2010.

In particular, U.S. Application Nos. 12/002,507 and 10/215,367 do not contain the

following disclosures from the written description of the ’250 patent: (1) column

15, lines 1-24; (2) column 21, line 53 to column 22, line 10; (3) and column 53,

line 14 to column 54, line 2. (See Ex. 1011; Ex. 1012; Ex. 1013 (comparison of

the ’250 patent and U.S. Application No. 12/002,507).)

136. As an example, claim 7 requires that “the biometric data is received

during a call, and the second biometric is received during the same call.”

Otherwise stated, claim 7 requires that the reference biometric data and the

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comparison sample must both be obtained during the same telephone call. Claim

16 requires that the reference biometric data be obtained by monitoring a telephone

call. Relatedly, the ’250 patent specification discloses that “the record of

voiceprints (or biometric information) may be obtained during the call” (’250

patent at 15:11-13; see also ’250 patent at 21:66-67), and “the record of voiceprints

is taken and established during the conversation . . . [and] may be used for such a

third-party detection by continuous acquisition or sampling voice data from the

telephone conversation” (’250 patent at 53:30-38). U.S. Application Nos.

12/002,507 and 10/215,367 (pre-2010 applications) do not disclose either of these

excerpts from the ’250 specification because neither applications disclose

obtaining biometric data from a call for later use on the same call or monitoring a

telephone call to obtain biometric data that can later be used as a reference for

authentication. As a result, claims 7 and 16-20 are not entitled to a priority date

prior to November 22, 2010.

B. Overview of Prior Art

1. Overview of Hogg

137. U.S. Patent No. 9,020,114, to John S. Hogg, Jr. (“Hogg”), entitled

“Systems and Methods for Detecting a Call Anomaly Using Biometric

Identification,” was filed November 22, 2006, and issued April 28, 2015.

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138. Hogg is generally directed to call monitoring and biometric

identification of the parties to a call. (Ex. 1008 ¶ 17.) In one example, Hogg

teaches that voiceprints may be generated from monitored communications

between a caller and a called party. (Ex. 1008 ¶ 39.) These biometric prints may

be stored to a computer readable data storage medium, including a database. (Ex.

1008 ¶ 36.) After generating the voiceprints, the communications between the

caller and called party may be monitored and compared with the generated

voiceprints to, for example, detect changes in the parties participating on the call.

(Ex. 1008 ¶ 39.)

C. Rationale to Combine Otto and Hogg

139. As explained above in Section X.B, the prior art has long recognized

the advantage of monitoring biometrics during telephone calls as an improvement

to conventional speaker verification systems in penal institutions. (See Ex. 1010 at

2:41-66; Ex. 1006 at 5:17-37.) In my opinion, as a result, one of ordinary skill in

the art would have been motivated to modify and improve Otto’s speaker

verification system with Hogg’s technique for monitoring telephone systems.

140. Like the ’250 patent, Hogg is directed to systems and methods for

controlling access to a telephone system using biometric monitoring. (Ex. 1008,

Abstract.) Hogg also teaches that “monitoring of telephony calls to detect and/or

prevent unauthorized activities is desirable.” (Ex. 1008 ¶ 3 (giving telephone

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systems in correctional facilities as an example).) In particular, Hogg discloses

monitoring a telephone call and collecting biometric data to detect any anomalies,

such as a change in parties during a call. (Ex. 1008, Abstract.) In one example,

Hogg teaches that “biometric print[s] . . . can be generated from the monitored

communications.” (E.g., Ex. 1008 ¶ 39.) It explains: “For instance, in an

embodiment in which caller 11 and called party 13 are to audibly communicate

with each other (e.g., via voice telephony call), then biometric printing logic 108

may generate audio-based biometric prints, such as voice prints.” (Ex. 1008 ¶ 39;

see also Ex. 1008 ¶ 36 (teaching storage of the generated voiceprints in a

database).)

141. One of ordinary skill in the art would have understood that the ability

to monitor a telephone call and generate voiceprints from the monitored

communication would be an improvement over Otto’s known method for speaker

verification. Monitoring, in addition to speaker verification during the initiation of

call, ensures that unauthorized users do not join a telephone call after the initial

authentication. (Ex. 1006 at 5:17-37.)

142. One of ordinary skill in the art also would have had a reasonable

expectation of success in combining Hogg’s monitoring system with Otto’s

speaker verification system. Otto’s voice response system is already capable of

obtaining and storing voiceprints from a user received via a call connection

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through a communication network. (See, e.g., Ex. 1005 at 4:53-5:3.) The same

hardware used by Otto to receive and store the voiceprints would also be used by

the combined Otto/Hogg system once the user’s call connection has been

established with a third party to obtain and store biometric information in a

database.

143. For the monitoring features, through straightforward hardware or

software changes, one of ordinary skill would have modified Otto’s system to

permit monitoring audio during a phone call and taking periodic samples of a

caller’s voice. In one simple implementation, one would need to program Otto’s

already-existing voice prompting system to perform its usual function of

prompting at the start of a call, but then disable the prompts and activate the same

recording and analysis function to occur at defined intervals throughout a call. In a

second simple implementation, one would need to program Otto’s system to

disable the prompts at the start of a call and activate the same recording and

analysis function to occur at defined intervals throughout a call. In either

implementation, Otto’s switch 106 would be configured to maintain the connection

between both the prompting/recording system and the destination the caller is

attempting to reach. In my opinion, this and other straightforward implementations

were well within the capability of one of ordinary skill.

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D. Otto in View of Hogg Teaches or Suggests Each and Every Feature of Claims 7 and 16-20

1. Claim 7

a. “The system of claim 1, wherein the biometric data is received during a call and the second biometric data is received during the same call”

144. Otto discloses or suggests the features of claim 1, as explained in

Section IX.B.1 above, but Otto does not disclose that the biometric data is received

during a call. By November 22, 2010, however, it was known that biometric data

could be received during a call, and further, the prior art taught that monitoring and

sampling during a call was advantageous in certain contexts, such as in

correctional facilities. (Ex. 1006 at 5:17-37; Ex. 1010 at 2:41-66.)

145. Hogg teaches that, “[p]referably, the type of biometric print generated

by biometric printing logic 108 is a type that can be generated from the monitored

communications.” (E.g., Ex. 1008 ¶ 39.) Hogg explains: “For instance, in an

embodiment in which caller 11 and called party 13 are to audibly communicate

with each other (e.g., via voice telephony call), then biometric printing logic 108

may generate audio-based biometric prints, such as voice prints.” (Ex. 1008 ¶ 39.)

In my opinion, one of ordinary skill in the art would understand that a biometric

print, and in particular a voice print, is a type of biometric data. (See ’250 patent,

claim 4 (biometric data can include a voiceprint).) Moreover, one of ordinary skill

in the art would understand that by generating a voiceprint from a monitored

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communication, the claimed voice print is received during a call, as required by

claim 7.

146. Hogg also teaches storing the biometric data obtained in the course of

monitoring a communication in a database. (E.g., Ex. 1008 ¶¶ 36, 43, 44.) For

example, Hogg explains:

A call processing system 12 is provided for monitoring the call. In

this example, call processing system 12 comprises biometric printing

logic 108 that is operable to generate biometric prints 106 and 107 for

caller 11 and called party 13, respectively. As shown, “biometric

prints may be stored to a computer-readable data storage medium 105,

which may comprise a database, file, or other data structure stored to

hard disk, random access memory (RAM), optical disk, magnetic

disk, or other computer-readable data storage medium now known or

later developed.

(Ex. 1008 ¶ 36 (emphasis added).) Because Hogg teaches generating a biometric

print from a monitored communication and storing that print in a database, a

person of ordinary skill in the art would understand that Hogg renders obvious

“wherein the biometric data is received during the call.”

147. In my opinion, Hogg also teaches multiple embodiments for receiving

the second biometric data, at least one of which teaches that it is received during

the same call. As discussed above, Hogg teaches generating a voiceprint based on

a monitored communication. (Ex. 1008 ¶ 39.) Hogg then explains that

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“[t]hereafter, the audible communications between caller 11 and called party 13

may be monitored and compared with the generated audio-based biometric prints

to, for example, detect changes in the parties participating on the call.” (Ex. 1008 ¶

39 (emphasis added).) One of ordinary skill in the art would understand that the

monitoring entails sampling of the audible communications between the parties to

the call, using the previously generated voiceprint for purposes of comparison.

The result is a repeated sampling and comparison that all occurs during the same

call as when the biometric prints that were captured and stored.

148. This embodiment in which the biometric prints are generated during a

call and subsequently used for monitoring during the same call is in contrast to

other embodiments disclosed in Hogg in which biometric prints are generated prior

to the monitored communication, such as during a registration process:

For example, when caller 11 initially attempts to place the call,

biometric printing logic 108 may interrupt the call and prompt the

caller to speak his/her name, and biometric printing logic 108 may use

the audible response from the caller to generate a voice print for the

caller. Similarly, when called party 13 initially answers the call,

biometric printing logic 108 may interrupt the call and prompt the

called party to speak his/her name, and biometric printing logic 108

may use the audible response from the called party to generate a voice

print for the called party.

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(Ex. 1008 ¶ 42.) In this embodiment, the reference voiceprint is generated by

forcing the caller to go through a registration process prior to proceeding with the

call.

149. In a yet additional embodiment, Hogg discloses using a voiceprint

generated during a previous call to monitor to monitor future calls that include the

identified party:

For instance, in certain embodiments, a biometric print may have been

previously generated for caller 11 and/or called party 13, and then

used by call monitoring process 101 for monitoring a call between

such caller 11 and called party 13. For instance, a voice print may

have been generated for caller 11 and/or called party 13 during a

previous call, and such voice print may be stored to a computer-

readable storage medium and associated with the respective party

which it identifies.

(Ex. 1008 ¶ 43.) As a result, one of ordinary skill in the art would understand that

the Otto/Hogg combination renders obvious claim 7.


a. “A method comprising: monitoring audio information of a telephone call wherein the audio information contains the speech of the user”

150. Otto does not disclose “monitoring audio information of a telephone

call wherein the audio information contains the speech of the user.” The ’250

patent discloses that “[t]he third-party call detection feature includes monitoring

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audio in the conversation, either continuously or sampling the audio of the inmate,

of the called party, or of both sides in order to detect audio from a third party

speaker.” (E.g., Ex. ’250 patent at 15:1-4; see also ’250 patent at 4:1-24.) Hogg’s

teaching of monitoring is consistent with the monitoring disclosed in the ’250

patent.

151. Hogg teaches a system in which a “call is . . . monitored and audio

captured during the call.” (E.g., Ex. 1008 ¶ 17; see also Ex. 1008 ¶ 36 (“[a] call

processing system 12 is provided for monitoring the call”).) Hogg further explains

that its “call processing system 12 comprises biometric printing logic 108 that is

operable to generate biometric prints 106 and 107 for caller 11 and called party 13,

respectively.” (Ex. 1008 ¶ 36.) Hogg explains that “the type of biometric print

generated by biometric printing logic 108 is a type that can be generated from the

monitored communications.” (Ex. 1008 ¶ 39.) In my opinion, one of ordinary

skill in the art would understand that the audio, which Hogg teaches is monitored

during a telephone call, must contain the speech of a user because it is used to

generate biometric prints. (See Ex. 1008 ¶ 39 (“For instance, in an embodiment in

which caller 11 and called party 13 are to audibly communicate with each other

(e.g., via voice telephony call), the biometric printing logic 108 may generate

audio-based biometric prints, such as voice prints.”).) As a result, Hogg teaches

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“monitoring audio information of a telephone call wherein the audio information

contains the speech of the user.”

b. “obtaining biometric data related to the user from the audio information”

152. Hogg discloses “generat[ing] audio-based biometric prints, such as

voice prints,” from the monitored communications. (E.g., Ex. 1008 ¶ 39.) In my

opinion, one of ordinary skill in the art would understand that generating a

biometric print from an audio communication necessarily involves “obtaining

biometric data . . . from the audio information.”

c. “storing the biometric data in a database”

153. As discussed in Section IX.B.1.e, Otto discloses storing biometric

data in a database. Storing a voice print in a database was well-known in the art at

the time of the alleged invention. (Ex. 1007 at 6:31-33 (teaching that a refined

voiceprint is stored in “voiceprint storage” and “indexed by the user’s account

identifier”); ’250 patent at 9:1-17 (discussing admitted prior art, and recognizing

that “Fujimoto, et al. U.S. Patent No. 5,893,057” teaches a speaker recognition

method that includes storing “voice characteristic information” in a database for

subsequent comparison purposes).) In my opinion, one of ordinary skill in the art

would thus understand from Otto and the background knowledge of one of

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ordinary skill in the art that biometric data would be stored in a database for

subsequent verification purposes.

154. In addition to Otto, however, Hogg also teaches that “biometric prints

may be stored to a computer-readable data storage medium 105, which may

comprise a database, file, or other data structure stored to hard disk, random

access memory (RAM), optical disk, magnetic disk, or other computer-readable

data storage medium now known or later developed.” (Ex. 1008 ¶ 36; see also Ex.

1008 ¶ 44.) In one example, Hogg teaches that “a voice print may have been

generated for caller 11 and/or called party 13 during a previous call, and such voice

print may be stored to a computer-readable storage medium and associated with

the respective party which it 60 identifies.” (Ex. 1008 ¶ 43.) Hogg continues,

explaining that, “[f]or instance, a voice print previously generated for caller 11

may be associated with a [PIN] that the caller is required to input when initiating a

call.” (Ex. 1008 ¶ 43.) In my opinion, one of ordinary skill in the art would thus

understand from Otto and Hogg that the biometric data obtained from monitoring a

telephone call could be stored in a database.

d. The remaining limitations of independent claim 16 are substantively identical to limitations (f)-(n) of independent claim 1.

155. The remaining limitations of independent claim 16 are substantially

similar to those in independent claim 1, limitations (f) through (n), so the same

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proof of unpatentability also demonstrates that these limitations of independent

claim 16 are disclosed or suggested by Otto as part of the combined Otto/Hogg

system.

i. “receiving identifying information related to the user”


limitation (f) of independent claim 1, so the same proof of unpatentability also


by Otto as part of the combined Otto/Hogg system. (See Section IX.B.1.f.)

ii. “storing the identifying information in the database in correspondence with the biometric data of the user”


limitation (g) of independent claim 1, so the same proof of unpatentability also


by Otto as part of the combined Otto/Hogg system. (See Section IX.B.1.g.)

iii. “receiving second biometric data related to a second user”


limitation (i) of independent claim 1, so the same proof of unpatentability also


by Otto as part of the combined Otto/Hogg system. (See Section IX.B.1.i.)

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iv. “receiving second identifying information related to the second user”


limitation (j) of independent claim 1, so the same proof of unpatentability also


by Otto as part of the combined Otto/Hogg system. (See Section IX.B.1.j.)

v. “finding in the database third identifying information that substantially matches the second identifying information received from the second user”


limitation (k) of independent claim 1, so the same proof of unpatentability also


by Otto as part of the combined Otto/Hogg system. (See Section IX.B.1.k.)

vi. “retrieving from the database third biometric data associated with the third identifying information”


limitation (l) of independent claim 1, so the same proof of unpatentability also


by Otto as part of the combined Otto/Hogg system. (See Section IX.B.1.l.)

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vii. “comparing the second biometric data received from the user with the third biometric data retrieved from the database”


limitation (m) of independent claim 1, so the same proof of unpatentability also


by Otto as part of the combined Otto/Hogg system. (See Section IX.B.1.m.)

viii. “authenticating the second user based on the comparison”


limitation (n) of independent claim 1, so the same proof of unpatentability also


by Otto as part of the combined Otto/Hogg system. (See Section IX.B.1.n.)

ix. Alternative Interpretation

164. Unlike claim 7, claim 16 does not require that the reference biometric

data and the comparative biometric data be received during the same call. But if

claim 16 is interpreted as having this requirement, the Otto/Hogg combination

discloses a system that does so, as discussed above for claim 7. (See Section

XI.D.1.)

3. Claim 17



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suggested by Otto as part of the combined Otto/Hogg system. (See Section

IX.B.4.)

4. Claim 18

166. The limitations of claim 18 are substantially similar to those in claims

5 and 6, so the same proof of unpatentability also demonstrates that claim 18 is

disclosed or suggested by Otto as part of the combined Otto/Hogg system. (See

Section IX.B.5, IX.B.6.)

5. Claim 19



or suggested by Otto as part of the combined Otto/Hogg system. (See Section

IX.B.2.)

6. Claim 20



suggested by Otto as part of the combined Otto/Hogg system. (See Section

IX.B.3.)

XII. Conclusion

169. In signing this declaration, I understand that the declaration will be

filed as evidence in a contested case before the Patent Trial and Appeal Board of

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the United States Patent and Trademark Office. I acknowledge that I may be

subject to cross-examination in this case and that cross-examination will take place

within the United States. If cross-examination is required of me, I will appear for

cross-examination within the United States during the time allotted for cross-

examination.

170. I declare that all statements made herein of my knowledge are true,

that all statements made on information and belief are believed to be true, and that

these statements were made with the knowledge that willful false statements and

the like so made are punishable by fine or imprisonment, or both, under Section

1001 of Title 18 of the United States Code.

Dated: March 29, 2017 By:

STUART J. LIPOFF

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