Petition for Inter Partes Review of U.S. Patent No. 7,092,509 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD inContact, Inc. Petitioner v. Microlog Corp. Patent Owner U.S. Patent No. 7,092,509 Filing Date: September 21, 1999 Issue Date: August 15, 2006 Title: CONTACT CENTER SYSTEM CAPABLE OF HANDLING MULTIPLE MEDIA TYPES OF CONTACTS AND METHOD FOR USING THE SAME PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,092,509 Inter Partes Review No. 2015‐___
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Petition for Inter Partes Review of U.S. Patent No. 7,092,509
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
inContact, Inc. Petitioner
v.
Microlog Corp. Patent Owner
U.S. Patent No. 7,092,509
Filing Date: September 21, 1999 Issue Date: August 15, 2006
Title: CONTACT CENTER SYSTEM CAPABLE OF HANDLING MULTIPLE MEDIA
TYPES OF CONTACTS AND METHOD FOR USING THE SAME
PETITION FOR INTER PARTES REVIEW
OF U.S. PATENT NO. 7,092,509
Inter Partes Review No. 2015‐___
Table of Contents
Page
‐i‐
I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) .................................. 1
A. Real Party‐ln‐lnterest under 37 C.F.R. § 42.8(b)(1) ............................. 1
B. Related Matters under 37 C.F.R. § 42.8(b)(2) ..................................... 1
C. Lead and Back‐Up Counsel under 37 C.F.R. § 42.8(b)(3) .................... 1
D. Service Information ............................................................................ 2
E. Power of Attorney .............................................................................. 2
II. PAYMENT OF FEES ‐ 37 C.F.R. § 42.103 ........................................................ 3
III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R. §§ 42.104 AND 42.108 ....................................................................................... 3
A. Grounds for Standing under 37 C.F.R. § 42.104(a) ............................. 3
B. Identification of Challenge Under 37 C.F.R. § 42.104(b) and Statement of Precise Relief Requested .............................................. 3
C. Requirements for Inter Partes Review 37 C.F.R. § 42.108(c) .............. 4
IV. TECHNOLOGY BACKGROUND RELEVANT TO THE ’509 PATENT .................... 4
V. SUMMARY OF THE ’509 PATENT................................................................... 5
A. The Specification of the ’509 Patent ................................................... 5
B. Claims 1‐6 and 8‐13 of the ’509 Patent ............................................ 13
VI. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3) ............................ 14
A. “contact(s)” ....................................................................................... 15
VII. CLAIMS 1‐6 AND 8‐13 OF THE ’509 PATENT ARE UNPATENTABLE ............. 17
A. Ground 1 – Claims 1‐6 and 8‐13 Are Anticipated by Haigh Under 35 U.S.C. § 102(b) .................................................................. 18
1. Claim 1 is Anticipated by Haigh .............................................. 19
a. Claim 1[a] – queuing component ................................. 22
b. Claim 1[b] – routing component .................................. 25
2. Claim 2 is Anticipated by Haigh .............................................. 29
Table of Contents (continued)
Page
ii
3. Claim 3 is Anticipated by Haigh .............................................. 31
4. Claim 4 is Anticipated by Haigh .............................................. 32
5. Claim 5 is Anticipated by Haigh .............................................. 35
6. Claim 6 is Anticipated by Haigh .............................................. 38
7. Claims 8‐13 are Anticipated by Haigh ..................................... 38
B. Ground 2 – Claims 1‐6 and 8‐13 Are Anticipated by Berkowitz Under 35 U.S.C. § 102(e) .................................................................. 40
1. Claim 1 is Anticipated by Berkowitz ....................................... 42
a. Claim 1[a] – queuing component ................................. 44
b. Claim 1[b] – routing component .................................. 46
2. Claim 2 is Anticipated by Berkowitz ....................................... 50
3. Claim 3 is Anticipated by Berkowitz ....................................... 52
4. Claim 4 is Anticipated by Berkowitz ....................................... 53
5. Claim 5 is Anticipated by Berkowitz ....................................... 54
6. Claim 6 is Anticipated by Berkowitz ....................................... 56
7. Claims 8‐13 are Anticipated by Berkowitz .............................. 56
VIII. REDUNDANCY ............................................................................................. 58
IX. CONCLUSION .............................................................................................. 60
Petition for Inter Partes Review of U.S. Patent No. 7,092,509
List of Exhibits
iii
Exhibit No. Title of Document
1001 U.S. Patent No. 7,092,509 to John C. Mears et al.
1002 U.S. Patent No. 5,793,861 to Steven Paul Haigh
1003 U.S. Patent No. 5,903,877 to Patricia Ann Berkowitz et al.
1004 U.S. Patent No. 5,465,286 William K. Clare et al.
1005 File History of U.S. Patent No. 7,092,509
Petition for Inter Partes Review of U.S. Patent No. 7,092,509
1
Petitioner inContact, Inc. (“Petitioner”) respectfully submits this Petition for
Inter Partes Review of claims 1‐6 and 8‐13 of U.S. Patent No. 7,092,509 [Ex. 1001]
(“the ’509 patent”).
I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1)
A. Real Party‐ln‐lnterest under 37 C.F.R. § 42.8(b)(1)
Petitioner inContact, Inc. is the real party‐in‐interest.
B. Related Matters under 37 C.F.R. § 42.8(b)(2)
The Petitioner is aware of two pending litigations involving the ’509 patent.
The patent owner, Microlog Corp., filed four actions in the U.S. District Court for
the District of Delaware and one action in the U.S. District Court for the District of
Maryland on January 14, 2014. The action in which Petitioner is named as a
defendant is entitled Microlog Corp. v. inContact, Inc., Case No. 14‐47 (LPS) (D.
Del. filed Jan. 14, 2014).
C. Lead and Back‐Up Counsel under 37 C.F.R. § 42.8(b)(3)
Petitioner provides the following designation of counsel.
Petition for Inter Partes Review of U.S. Patent No. 7,092,509
2
LEAD COUNSEL BACK‐UP COUNSEL
Erik B. Milch (Reg. No. 42,887) [email protected][email protected] COOLEY LLP, ATTN: Patent Group 1299 Pennsylvania Ave., NW, Suite 700 Washington, DC 20004 Tel: (703) 456‐8573 Fax: (703) 456‐8100
John R. Mills (Reg. No. 56,414) [email protected][email protected] COOLEY LLP, ATTN: Patent Group 1299 Pennsylvania Ave., NW, Suite 700 Washington, DC 20004 Tel: (703) 456‐8171 Fax: (703) 456‐8100
Petitioner will file a motion to appear pro hac vice for additional proposed
back‐up counsel, Laura J. Cunningham, an experienced patent litigator and
counsel for Petitioner. The earliest date on which such motion may be filed is
twenty‐one (21) days after service of the Petition on the patent owner. See
“Order – Authorizing Motion for Pro Hac Vice Admission,” in IPR2013‐00639.
D. Service Information
This Petition is being served by USPS EXPRESS MAIL®, costs prepaid, to the
attorney of record for the ’509 patent, ROYLANCE, ABRAMS, BERDO & GOODMAN, LLP,
1300 19th Street, NW, Suite 600, Washington, DC 20036. The Petitioner may be
served at the address provided immediately above in Section I.C. The Petitioner
also consents to electronic service by e‐mail at the e‐mail addresses provided
above.
E. Power of Attorney under 37 C.F.R. § 42.10(b)
A Power of Attorney is filed concurrently with this Petition.
Petition for Inter Partes Review of U.S. Patent No. 7,092,509
3
II. PAYMENT OF FEES ‐ 37 C.F.R. § 42.103
This Petition requests review of 12 claims of the ’509 patent and is
accompanied by a payment of $23,000 for 12 claims. See 37 C.F.R. § 42.15. This
Petition therefore meets the fee requirements under 35 U.S.C. § 312(a)(1).
III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R. §§ 42.104 AND 42.108
A. Grounds for Standing under 37 C.F.R. § 42.104(a)
The Petitioner certifies that the ’509 patent is available for inter partes
review, and that the Petitioner is not barred or otherwise estopped from
requesting inter partes review on the grounds identified in the present Petition.
B. Identification of Challenge Under 37 C.F.R. § 42.104(b) and Statement of Precise Relief Requested
The Petitioner respectfully requests that the Board initiate inter partes
review of claims 1‐6 and 8‐13 of the ’509 patent, and find them unpatentable.
This Petition cites the following prior art references:
Ex. No. Prior Art Document
1002 U.S. Patent No. 5,793,861 to Steven Paul Haigh (“Haigh”)
1003 U.S. Patent No. 5,903,877 to Patricia Ann Berkowitz et al.
(“Berkowitz”)
1004 U.S. Patent No. 5,465,286 William K. Clare et al. (“Clare”)
The grounds on which this Petition is based are listed in the table below.
Petition for Inter Partes Review of U.S. Patent No. 7,092,509
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Ground No.
Claims Affected
Proposed Ground for Inter Partes Review
1 1‐6, 8‐13 Anticipated by Haigh under 35 U.S.C. § 102(b)
2 1‐6, 8‐13 Anticipated by Berkowitz under 35 U.S.C. § 102(e)
As reflected in the chart above, this Petition is being filed with a first
ground of rejection based on Haigh and a second ground of rejection based on
Berkowitz. A specific explanation of each of the two grounds listed above is set
forth in Section VII below.
C. Requirements for Inter Partes Review 37 C.F.R. § 42.108(c)
Inter partes review of claims 1‐6 and 8‐13 of the ’509 patent should be
instituted because this Petition establishes a reasonable likelihood that the
Petitioner will prevail with respect to each challenged claim. See 35 U.S.C. §
314(a). Each limitation of each claim challenged herein is disclosed and/or
suggested by the prior art, as explained in detail below.
IV. TECHNOLOGY BACKGROUND RELEVANT TO THE ’509 PATENT
The ’509 patent relates generally to contact centers having customer
service representatives or agents who assist customers. (See, e.g., ’509, 1:21‐30,
1:31‐38.) These contact centers are used by many businesses, such as
commercial retailers, financial institutions (e.g., banks and lending companies),
credit card companies, and telemarketing companies. (Id., 1:32‐36; see also, e.g.,
Petition for Inter Partes Review of U.S. Patent No. 7,092,509
5
U.S. Patent No. 5,793,861 to Steven Paul Haigh [Ex. 1002] (“Haigh”), 1:22‐35; U.S.
Patent No. 5,903,877 to Patricia Ann Berkowitz et al. [Ex. 1003] (“Berkowitz”),
1:13‐31.) An example of a contact center is a call center, where customer service
agents assist customers by telephone and each agent is assigned to a telephone
having a particular extension number. (See ’509, 1:32‐39; see also Berkowitz,
1:26‐67.)
V. SUMMARY OF THE ’509 PATENT
A. The Specification of the ’509 Patent
The specification of the ’509 patent is voluminous and describes
“exemplary embodiments” of the purported invention in great detail. (See ’509,
63:17‐18.) Indeed, the recitation of claims does not begin until page 105 of the
’509 patent. Being constrained by a page limit and striving to reduce the burden
on the Board, the Petitioner provides herein a description of the specification that
is relevant to the challenged claims.
The purported invention of the ’509 patent is directed to a contact center
“capable of handling different types of media contacts.” (Id., 1:21‐22.) The
“Description of the Related Art” acknowledges that contact centers handling
customer telephone calls (i.e., call centers)—including call centers using computer
terminals to display certain information to agents in response to an incoming
Petition for Inter Partes Review of U.S. Patent No. 7,092,509
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telephone call being routed to a particular agent—were known in the prior art.
(See, e.g., id., 1:44‐53, 2:1‐7.) The ’509 patent states, however, that “traditional
call centers are incapable of efficiently handling requests made in media other
than telephony.” (Id., 2:24‐25.)
The ’509 patent purports to disclose a contact center “capable of handling
different types of media contacts,” including contacts made in media other than
telephony such as e‐mails, faxes, web chats, and voice over internet protocol
communications. (See id., 1:20‐26.) The purported invention of such a contact
center includes multiple “agent workstations,” “a queuing component,” and “a
routing component.” (Id., Abstract.) Each agent workstation “includes a
computer terminal” and is associated with a telephone, so as to enable an agent
to interact with customers. (See id., 8:28‐31, 39‐41.) The queuing component
“receiv[es] contacts of different media‐types, . . . and maintain[s] the different
media types [sic] contacts in a common queue” while they “await[] routing to the
agent workstations.” (Id., Abstract.) The routing component “routes the queued
contacts to the agents based on criteria of the contacts, criteria of the agents, or
both.” (Id., Abstract.)
The specification of the ’509 patent describes embodiments that use
hardware and software components to achieve the queuing and routing
Petition for Inter Partes Review of U.S. Patent No. 7,092,509
7
functionalities of the purported invention. One such embodiment, labeled
“contact center 100,” is illustrated by Fig. 1 of the ’509 patent (shown below).
(See id., 8:24‐25.)
Petition for Inter Partes Review of U.S. Patent No. 7,092,509
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According to the specification of the ’509 patent, the embodiment of
contact center 100 “includes a plurality of agent workstations 102,” each
operated by an agent or customer service representative. (Id., 8:25‐28.) As
depicted above, contact center 100 is capable of receiving normal (i.e., non‐IVR)
telephone calls and IVR telephone calls from customer telephone 110, faxes from
customer fax 112, and emails, web chats, web callback requests, and voice over IP
communications from customer PC 144. (See id., 41:49‐52.) The “software and
related hardware” of contact center 100 “provide unified queuing” of the
received contacts (of different media types) “into a single unified queue” and
“provide skills‐based and priority‐based routing of these contacts to agents.” (See
id., 10:14‐22.) “[T]he basic manner in which the contact center system 100
receives contacts of different media types, retains the different media types in a
common queue, and routes the queued contacts to the appropriate agents” can
be seen in Fig. 50 of the ’509 patent (shown below). (Id., 41:45‐49.)
Petition for Inter Partes Review of U.S. Patent No. 7,092,509
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Within contact center 100, according to one embodiment of the purported
invention, the hardware and software components of contact server 122 (shown
at right1) place the contacts of different
media types received from customers in a
common queue. (See id., 46:40‐43 (“FIG.
65 shows components of the contact
center server 122, namely, the routing
manager, route request broker, assignment
manager, and agent manager, that are involved in placing a contact in the queue
as will now be described, . . .”).) More specifically, the “routing manager” of
contact server 122 calculates priority information for a received contact, including
1 Contact server 122 is also shown in Fig. 1 above (towards the top of the figure).
Petition for Inter Partes Review of U.S. Patent No. 7,092,509
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“initial queue priority, priority incremental frequency and
priority incremental rates,” and the “assignment
manager” of contact server 122 “adds the contact to the
‘in memory’ queue,” where all contacts awaiting routing
are maintained. (Id., 47:4‐11.) An added contact will be
“bumped higher up in the queue” as time passes (in
accordance with the contact’s priority information) and
as other queued contacts are routed from the queue.
(See id., 66:59‐65; see also Fig. 68.)
The hardware and software components of contact
server 122 (shown at left), according to one embodiment,
also route the queued contacts to agents of contact
center 100. (See id., 47:14‐18 (“FIG. 67 is a conceptual
block diagram illustrating components of the contact center server 122, namely,
the media proxy, routing manager, assignment manager, agent manager, and
agent Java interface involved in routing a queued contact to an agent.”).) In
particular, the “assignment manager” of contact center server 122 “identifies the
highest priority queued contact,” “interacts with the agent manager . . . to
identify the logged on agents who are capable of handling the highest priority
Petition for Inter Partes Review of U.S. Patent No. 7,092,509
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contact,” and “matches [the] contact to an agent.” (Id., 47:28‐53.) In one
embodiment, the step of identifying agents who are capable of handling the
highest priority contact, described as “step 2110” by the specification (shown in
relevant part at below right), involves identifying agents based on criteria of the
contact (e.g., contact campaign2, contact media type) and criteria of the agents
(e.g., agent media skills, agent language skills, agent general skills). (See, e.g., id.,
47:36‐38 (“The assignment manager interacts with
the agent manager in step 2110 to identify the
2 See id., 9:50‐60 (“Campaigns are often thought of as outbound telemarketing
campaigns where a plan is organized, a list of contacts are identified, a time frame
for running the campaign is decided, a script is developed, and a desired response
is sought. Once initiated, specific results are recorded to measure the success of
the campaign. Generally, and for purposes of this disclosure, a campaign is
defined as a focused set of resources targeted towards achieving a specific goal
according to a pre‐established plan. Campaigns are not restricted to outbound
telemarketing activities.”).
Petition for Inter Partes Review of U.S. Patent No. 7,092,509
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logged on agents who are capable of handling the highest priority contact.”), Fig.
68 (illustrating identifying agents based on criteria of the contact and criteria of
the agents in step 2110).) Once the assignment manager matches a contact to an
appropriate agent, the “agent manager” of contact center server 122 routes the
contact to that agent’s workstation. (See, e.g., id., 47:58‐59, 48:60‐63, 52:34‐36,
53:3‐6, 56:38‐41, 58:38‐40, 59:14‐17, 59:49‐
51.) The routing of a contact from contact
system server 122 to an agent workstation 102
is illustrated by Fig. 70 of the ’509 patent
(shown at right). (Id., 6:56‐58.)
Upon receiving a routed contact, in some
embodiments, an agent workstation 102 will
display or “pop‐up” a “screen presentation”
that includes information related to the
contact or information related to the customer. (See, e.g., id., 48:63‐49:3 (“In
step 2320, the agent receives the contact and retrieves specified contact data for
preparation of a screen presentation on his or her workstation. This data can be
retrieved, for example, from the customer database 128 and/or the customer
legacy system 130. Further details of the types of customer information that can
Petition for Inter Partes Review of U.S. Patent No. 7,092,509
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be retrieved are described in U.S. patent application Ser. No. 09/260,549,
referenced above.”), 2:4‐7 (“[A] computer telephony system which controls an
agent’s computer terminal to display or ‘pop‐up’ certain information in response
to an incoming telephone call routed to that agent.”); see also, e.g., 52:36‐40,
53:6‐9, 56:41‐44, 58:40‐44, 59:17‐20, 59:51‐54.) The computer‐generated
displays allow an agent to better assist a customer originating a contact. (See,
e.g., id., 2:19‐21, 49:55‐59.) For example, the display screen may include
customer information such as “name, telephone number, credit card number, or
the like” retrieved from a customer database. (See, e.g., id., 1:61‐64, 2:14‐16.) If
a customer wishes to place an order, for instance, the display screen may also
include “a computer‐generated order form” into which information may be
entered. (Id., 1:58‐60.)
In instances where the routed contact is a telephone call, a telephone 104
assigned to the workstation receiving the routed call will start ringing. (See id.,
49:33‐39.)
B. Claims 1‐6 and 8‐13 of the ’509 Patent
The two independent claims addressed in this Petition—claims 1 and 8—
purport to recite a system and method for receiving and distributing contacts of
Petition for Inter Partes Review of U.S. Patent No. 7,092,509
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different media types. The first independent claim addressed is claim 1, which
recites:
1. A system for receiving and distributing contacts of different media
types to a plurality of workstations, comprising:
[a] a queuing component, adapted to receive said different
media‐type contacts and maintain said contacts in a common
queue while said contacts are awaiting routing to said
workstations; and
[b] a routing component, adapted to route the queued contacts to
said workstations based on designated criteria.
(’509, 67:2‐10 (Claim 1).) Independent claim 8 is substantially similar to
independent claim 1 but is written as a “method” claim.
The additional claims addressed in this Petition—i.e., claims 2‐6 and 9‐13—
depend from independent claims 1 and 8 mentioned above. This Petition will
address those claims in detail in Section VII below.
VI. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(b)(3)
A claim subject to inter partes review must be given its “broadest
reasonable construction in light of the specification of the patent in which it
appears.” 37 C.F.R. § 42.100(b). As the Federal Circuit has recognized, the
“broadest reasonable construction” standard is different from the manner in
Petition for Inter Partes Review of U.S. Patent No. 7,092,509
15
which the scope of a claim is determined in litigation. See In re Swanson, 540 F.3d
1368, 1377‐78 (Fed. Cir. 2008). Under the broadest reasonable construction
standard, claim terms are presumed to be given their ordinary and customary
meaning, as would be understood by one of ordinary skill in the art in the context
of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
2007). Accordingly, the Petitioner respectfully requests that the Board adopt the
ordinary and customary meaning of the challenged claims under the broadest
reasonable construction standard, and, to the extent the Board determines
express construction to be necessary, supplies the following construction.
A. “contact(s)”
The term “contact(s)” may be construed as “communication(s).” This
construction is supported by the specification of the ’509 patent, which describes
that “[c]ontacts will come from telephone calls, e‐mails, web site ‘hits’, facsimile
devices and other forms of contact.” (’509, 15:28‐29; see also, e.g., 1:23‐26
(“[T]he present invention relates to a contact center system capable of receiving
contacts of different media types, such as telephone calls, e‐mails, facsimiles, web
chat, voice over Internet protocol, and so on, . . .”), 3:11‐14 (“A further object of
the present invention is to provide a contact center system capable of receiving
contacts of different media types, such as telephone calls, e‐mails, facsimiles, web
Petition for Inter Partes Review of U.S. Patent No. 7,092,509
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chat, voice over Internet protocol, and so on, . . .”); 3:22‐24 (“[C]ontacts of
different media‐types, such as telephone calls, e‐mails, facsimiles, web callbacks,
web chat, voice over internet protocol, and so on, . . .”), 41:39‐41 (“[C]ontacts of
different media types, such as telephony, facsimile, e‐mail, Internet‐based
contacts, and so on, . . .”).) The principal characteristic shared by and underlying
these examples of “contact(s),” repeated throughout the specification, is that
they are all “communication(s).” This construction is further supported by the use
of the term in the dependent claims. (See id., 67:27‐32 (“A system as claimed in
claim 1, wherein said contacts include at least one of the following: a voice
communication; a facsimile communication; an e‐mail communication; and data
transmittable over the Internet.”) (Claim 6); see also, e.g., 68:10‐15 (Claim 13),
68:66‐69:7 (Claim 20).). Finally, this construction is consistent with the file
history, in which the patentee implicitly distinguished “contact(s)” from “contact
object(s)” in claims similar to the two independent claims (claims 1 and 8)
challenged herein. (See, e.g., File History of U.S. Patent No. 7,092,509 [Ex. 1005],
Amendment Dated October 7, 2005, p. 7 (“25. (New) A system for receiving and
distributing contacts of different media types to a plurality of workstations,
comprising: a queuing component, adapted to receive said different media‐type
contacts and maintain said contacts in a common queue while said contacts are
Petition for Inter Partes Review of U.S. Patent No. 7,092,509
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awaiting routing to said workstations; and a routing component, adapted to route
the queued contacts to said workstations based on designated criteria; wherein
the queuing component comprises a routing manager, at least one of a proxy and
a computer telephony integration (CTI) server to receive a contact and send a
route request to the routing manager, the routing manager creating a contact
object in response thereto, . . .”), pp. 8‐9 (“34. (New) A method for receiving and
distributing contacts of different media types to a plurality of workstations,
comprising the steps of: maintaining said different media‐type contacts in a
common queue while said contacts are awaiting routing to said workstations; and
routing the queued contacts to the workstations based on designated criteria
wherein the maintaining step comprises the steps of receiving a contact from at
least one of a proxy and a computer telephony integration (CTI) server, creating a
contact object for the contact, . . .”).)
Therefore, to the extent that “contact(s)” requires express construction,
the Board should construe “contact(s)” as “communication(s).”
VII. CLAIMS 1‐6 AND 8‐13 OF THE ’509 PATENT ARE UNPATENTABLE
Petition for Inter Partes Review of U.S. Patent No. 7,092,509
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A. Ground 1 – Claims 1‐6 and 8‐13 Are Anticipated by Haigh Under 35 U.S.C. § 102(b)
Each limitation of claims 1‐6 and 8‐13 is disclosed by U.S. Patent No.
5,793,861 to Steven Paul Haigh [Ex. 1002] (“Haigh”). Haigh qualifies as prior art
to the ’509 patent under at least 35 U.S.C. § 102(b) (pre‐AIA) because it is a patent
that issued on August 11, 1998, more than one year prior to September 21, 1999,
the filing date of the ’509 patent.
Haigh, entitled “Transaction Processing System and Method,” discloses a
system and method for “the management and processing of transactions
including inbound and outbound telephone calls as well as other transactions
such as electronic mail, voice mail, video calls, facsimile transmissions, data
packets over the Internet, etc.” (Haigh, Abstract.) Haigh explains that “previous
call processing systems have been limited to processing transactions involving
telephone calls,” and therefore, a system that processes “inbound and outbound
telephone calls as well as other transactions such as electronic mail, voice mail,
video calls, facsimile transmissions, data packets over the Internet, etc. would
facilitate improved productivity in telemarketing activities.” (Id., 1:25‐35.) Haigh
further teaches embodiments that use hardware and software components to
Petition for Inter Partes Review of U.S. Patent No. 7,092,509
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implement such a system. (See id., 1:63‐2:24.) Thus, Haigh discloses a system
essentially identical to the one later described and claimed in the ’509 patent.
1. Claim 1 is Anticipated by Haigh
The preamble of claim 1 recites “[a] system for receiving and distributing
contacts of different media types to a plurality of workstations.” Haigh discloses
the claimed “system” in the form of a system 10, shown in Fig. 1 below.
Petition for Inter Partes Review of U.S. Patent No. 7,092,509
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Fig. 2 is “a flowchart illustrating the method of operation” of system 10.
System 10 and its method of operation are described in more detail in connection
with the claim limitations below.
Petition for Inter Partes Review of U.S. Patent No. 7,092,509
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Haigh discloses that this system is “for receiving and distributing contacts .
. . to a plurality of workstations,” as recited in claim 1. According to Haigh, “[t]he
system 10 is capable of receiving transactions from entities.” (Haigh, 2:2‐3; see
also step 46 of Fig. 2 (reproduced above).) The term “transaction,” as used in
Haigh, includes communications from customers. (See id., 5:10‐14 (“The
transaction processing system 12 then receives a transaction from . . . outside the
system 10, such as inbound calls and E‐mail from customers.”).) The received
transactions are “process[ed] and rout[ed] to appropriate stations 32, 34.” (Id.,
4:9‐10; see also, e.g., 6:48‐49 (“[S]ends a next queued transaction to the available
agent in step 60.”), step 60 of Fig. 2 (reproduced above), 10:17‐20 (“4. The
transaction processing system of claim 1 further comprising: a plurality of agent
stations associated with a respective agent for processing transactions.”) (Claim
4), 12:7‐9 (Claim 16).)
Haigh further discloses that contacts are “of different media types,” as
recited in claim 1. Haigh describes “handling various types of transactions, such
as E‐mail, voice mail, graphics, video calls, etc.” (Id., 4:53‐54.) Haigh additionally
states that “the transactions may include electronic mail (E‐mail), voice mail,
video calls, facsimile (fax) transmissions, etc.,” and that “[t]he transactions include
one of incoming video calls, telephone calls, voice mail transmissions, E‐mail
Petition for Inter Partes Review of U.S. Patent No. 7,092,509
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transmissions, facsimile transmissions, internet transmissions, downloaded files,
etc.” (Id., 2:4‐6, 5:14‐17; see also step 46 of Fig. 2 (reproduced above).)
Transaction types disclosed by Haigh also include “outbound [telephone] calls.”
8: “[a] method for receiving and distributing contacts of different media types to a plurality of workstations.”
1: “[a] system for receiving and distributing contacts of different media types to a plurality of workstations.”
Section VII.A.1
8[a]: “maintaining said different media‐type contacts in a common queue while said contacts are awaiting routing to said workstations.”
1[a]: “a queuing component, adapted to receive said different media‐type contacts and maintain said contacts in a common queue while said contacts are awaiting routing to said workstations.”
Section VII.A.1.a
8[b]: “routing the queued contacts to the workstations based on designated criteria.”
1[b]: “a routing component, adapted to route the queued contacts to said workstations based on designated criteria.”
Section VII.A.1.b
9: “said designated criteria includes at least one of criteria of said queued contacts and criteria assigned to agents operating said workstations.”
2: “said designated criteria includes at least one of criteria of said queued contacts and criteria assigned to agents operating said workstations.”
Section VII.A.2
10: “said designated criteria includes criteria of said queued contacts and criteria assigned to agents operating said workstations.”
3: “said designated criteria includes said criteria of said queued contacts and said criteria assigned to said agents.”
Section VII.A.3
Petition for Inter Partes Review of U.S. Patent No. 7,092,509
11: “initiating an event at any of said workstations in response to said contact being routed thereto.”
4: “a contact handling component, adapted to initiate an event at any of said workstations in response to said contact being routed thereto.”
Section VII.A.4
12: “said event initiating step includes at least one of the following steps: ringing a telephone assigned to said any workstation; and causing said any workstation to generate a display on its display screen.”
5: “said event includes at least one of ringing a telephone assigned to said any workstation and causing said any workstation to generate a display on its display screen.”
Section VII.A.5
13: “receiving said contacts as at least one of the following: voice communication; facsimile communication; e‐mail communication; and data transmittable over the Internet.”
6: “said contacts include at least one of the following: a voice communication; a facsimile communication; an e‐mail communication; and data transmittable over the Internet.”
Section VII.A.6
B. Ground 2 – Claims 1‐6 and 8‐13 Are Anticipated by Berkowitz Under 35 U.S.C. § 102(e)
Each limitation of claims 1‐6 and 8‐13 is disclosed or suggested by U.S.
Patent No. 5,903,877 to Patricia Ann Berkowitz et al. [Ex. 1003] (“Berkowitz”).
Berkowitz qualifies as prior art to the ’509 patent under at least 35 U.S.C. § 102(e)
(pre‐AIA) because the issued patent of Berkowitz was filed in the United States on
Petition for Inter Partes Review of U.S. Patent No. 7,092,509
41
September 30, 1996, prior to the filing date of the ’509 patent, September 21,
1999. Berkowitz, entitled “Transaction Center for Processing Customer
Transaction Requests from Alternative Media Sources,” discloses “[a] transaction
center including a transaction processing platform having an automatic call
distribution system for queuing customer transaction requests, for choosing an
appropriate service agent according to information gathered about the
transaction requests, and for determining when the appropriate service agent is
available. (Berkowitz, Abstract.)
Berkowitz explains that “[t]raditional call centers consist[ed] solely of
customers trying to reach service agents by telephone,” during which process
“calls are placed into a queue where they wait until a service agent is available to
service them.” (Id., 1:27‐31.) “Keeping up with the rising volume of calls,”
however, “can be costly and inefficient.” (Id., 2:22‐23.) On the other hand,
existing “[a]lternative routes for customers to communicate their requests,” such
as voice mail, facsimile, electronic mail, regular mail and live multi‐media,
“provide the benefit of reducing the number of direct telephone calls that a
business . . . must handle” (see id., 2:23‐41), but result in “[f]ragment[ed]
customer service among these many media” (see id., 2:46‐47). To improve upon
these methods of servicing customers, Berkowitz teaches “processing customer
Petition for Inter Partes Review of U.S. Patent No. 7,092,509
42
transaction requests in the form of alternative media, such as facsimile, voice
mail, electronic mail, regular mail and video, among others” in a “transaction
center.” (See id., 1:6‐10.) Berkowitz further describes embodiments that use
hardware and software components to implement the transaction center. (See
id., e.g., 3:40‐44 (“[T]ransaction processing platform 10 can take on many other
forms, such as a PC platform or the like, as long as it has the ability to be loaded
with and run the ACD system and the monitoring and reporting software as
described.”), 4:16‐18 (“[T]he transaction center shown in FIG. 1 is provided with
computer telephone integration, or CTI, software which is well known in the
art.”).) Thus, Berkowitz discloses a transaction center very similar to the one later
described and claimed in the ’509 patent.
1. Claim 1 is Anticipated by Berkowitz
Berkowitz discloses “system” of claim 1 in the form of a transaction center,
shown in Fig. 1 and described in more detail in connection with the claim
limitations below. (See Berkowitz, 3:24‐25 (“FIG. 1 is a block diagram of a
transaction center according to a preferred embodiment of the present
invention.”)
Petition for Inter Partes Review of U.S. Patent No. 7,092,509
43
Berkowitz discloses that this transaction center is “for receiving and
distributing contacts . . . to a plurality of workstations,” as recited in claim 1.
Berkowitz describes, at a high level, that “transaction processing platform 10 [of
the transaction center] is able to receive customer transaction requests, place the
transaction requests in a service queue, and eventually route the customer
transaction requests to an appropriate available service agent for processing.”
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(Id., 3:44‐48.) Each service agent, according to Berkowitz, has a personal
computer or “workstation” (see Service Agent PC 90 in Fig. 1 above) that receives
the routed customer requests and displays them to the agent. (See id., 4:41‐45.)
As discussed in connection with the claim limitations below, Berkowitz also
describes, in detail, a “preferred embodiment” of the transaction center. (See,
e.g., id., 3:24‐25, 5:12‐13.)
Berkowitz further discloses that contacts are “of different media types,” as
recited in claim 1. Berkowitz states that the transaction center “process[es]
customer transaction requests in the form of alternative media, such as facsimile,
voice mail, electronic mail, regular mail and video, among others.” (Id., 1:7‐10.)
Forms of transaction requests disclosed by Berkowitz also include “live multi‐
media” and telephone call. (See id., 5:19‐29.)
a. Claim 1[a] – queuing component
Berkowitz discloses “a queuing component” in
the form of transaction processing platform 10,
shown in Fig. 1 (reproduced in relevant part at right).
According to Berkowitz, transaction processing platform 10 includes hardware
and software components. Berkowitz explains that transaction processing
Petition for Inter Partes Review of U.S. Patent No. 7,092,509
45
platform 10 may be “a PC platform” with “the ability to be loaded with and run
the ACD system and the monitoring and reporting software.” (Id., 3:40‐44.)
The transaction processing platform 10 in Berkowitz is “adapted to receive
said different media‐type contacts,” as recited by claim 1. According to
Berkowitz, the transaction processing platform 10 “is able to receive customer
transaction requests” (id., 3:45‐46) and, as discussed above, the received
transaction requests are of different media types, including facsimile, voice mail,
electronic mail, regular mail, video, live multi‐media, and telephone call (see, e.g.,
id., 1:7‐10, 4:44‐45, 5:19‐29).
The transaction processing platform 10 in Berkowitz is further adapted to
“maintain said contacts in a common queue while said contacts are awaiting
routing to said workstations,” as recited by claim 1. Berkowitz explains that
“transaction processing platform 10 . . . place[s] the transaction requests in a
service queue” in transaction processing platform 10 before the customer
transaction requests are eventually routed to an appropriate available service
agent for processing. (Id., 3:44‐47; see also 5:41‐45 (“The transaction request is
then placed in the service queue by transaction processing platform 10, . . .
Because the transaction request is in the queue in transaction processing
platform 10, it can be routed . . .”), 6:36‐39 (“. . . [A] transaction processing
Petition for Inter Partes Review of U.S. Patent No. 7,092,509
46
platform, said transaction processing platform having an automatic transaction
distribution system for queuing said transaction requests, . . .”) (Claim 1), 8:22‐24
(Claim 22).). Each service agent in Berkowitz has a “workstation” that includes a
personal computer able to receive the routed customer transaction requests,
“whether [they] be in facsimile, electronic mail, voice mail, regular mail or video
format.” (See id., 4:41‐45.)
b. Claim 1[b] – routing component
Berkowitz discloses “a routing component” in the form of hardware and
8: “[a] method for receiving and distributing contacts of different media types to a plurality of workstations.”
1: “[a] system for receiving and distributing contacts of different media types to a plurality of workstations.”
Section VII.B.1
8[a]: “maintaining said different media‐type contacts in a common queue while said contacts are awaiting routing to said workstations.”
1[a]: “a queuing component, adapted to receive said different media‐type contacts and maintain said contacts in a common queue while said contacts are awaiting routing to said workstations.”
Section VII.B.1.a
8[b]: “routing the queued contacts to the workstations based on designated criteria.”
1[b]: “a routing component, adapted to route the queued contacts to said workstations based on designated criteria.”
Section VII.B.1.b
9: “said designated criteria includes at least one of criteria of said queued contacts and criteria assigned to agents operating said workstations.”
2: “said designated criteria includes at least one of criteria of said queued contacts and criteria assigned to agents operating said workstations.”
Section VII.B.2
10: “said designated criteria includes criteria of said queued contacts and criteria assigned to agents operating said workstations.”
3: “said designated criteria includes said criteria of said queued contacts and said criteria assigned to said agents.”
Section VII.B.3
11: “initiating an event at any of said workstations in response to said contact being routed thereto.”
4: “a contact handling component, adapted to initiate an event at any of said workstations in response to said contact being routed thereto.”
Section VII.B.4
Petition for Inter Partes Review of U.S. Patent No. 7,092,509
12: “said event initiating step includes at least one of the following steps: ringing a telephone assigned to said any workstation; and causing said any workstation to generate a display on its display screen.”
5: “said event includes at least one of ringing a telephone assigned to said any workstation and causing said any workstation to generate a display on its display screen.”
Section VII.B.5
13: “receiving said contacts as at least one of the following: voice communication; facsimile communication; e‐mail communication; and data transmittable over the Internet.”
6: “said contacts include at least one of the following: a voice communication; a facsimile communication; an e‐mail communication; and data transmittable over the Internet.”
Section VII.B.6
VIII. REDUNDANCY
This petition is being filed with one ground of rejection based on Haigh and
one ground of rejection based on Berkowitz. Although numerous prior art
references related to contact centers disclose queuing received contacts in a
common queue and routing contacts based on designated criteria, Petitioner has
presented only those grounds necessary to sufficiently demonstrate that claims 1‐
6 and 8‐13 of the ’509 patent are not patentable, having demonstrated how the
teachings of Haigh and Berkowitz address the claims divergently.
Petition for Inter Partes Review of U.S. Patent No. 7,092,509
59
Petitioner submits that Haigh and Berkowitz raise two non‐redundant
grounds of rejections because Haigh and Berkowitz are prior art under different
sections of the statute (i.e., 102(b) v. 102(e)), and also because of their different
treatment of the “routing” recited in claims 1‐6 and 8‐13.
adapted to route the queued contacts to said workstations.” Claim 8 (from which
claims 9‐13 depend) recites “routing the queued contacts to the workstations.”
As discussed in Section VII.A.1.a and Section VII.A.1.b above, Haigh discloses
routing contacts to workstations directly from queue 82, where each contact is
stored as a concatenation of the contact bit sequence and a contact identifier. On
the other hand, as discussed in Section VII.B.1.b above, Berkowitz discloses
routing contacts to workstations involving steps including: (1) transaction
processing platform 10 sending a signal to CTI platform 30, (2) CTI platform 30
sending a signal to transaction request server 20, where contacts are stored in
electronic format, and (3) transaction request server 20 delivering a contact to a
workstation. While both are believed to “rout[e] the queued contacts” to
workstations, they are believed to be non‐redundant in the manner in which they
meet this feature.
Petition for Inter Partes Review of U.S. Patent No. 7,092,509
60
Accordingly, Petitioner respectfully requests that the Board institute
rejections on both grounds presented in this petition, in part because Petitioners
have worked hard to reduce the burden on the PTAB through presentation of just
two grounds, and in part to avoid prejudicing the Petitioners based on at least the
differentiated treatment of “routing” mentioned above. However, to the extent
the Board declines to institute both grounds presented, Petitioner requests that
the Board institute the ground of rejection based on Haigh.
IX. CONCLUSION
The Petitioner respectfully requests that the Board institute inter partes
review of claims 1‐6 and 8‐13 of the ’509 patent, and find them unpatentable,
based on the two grounds presented in this Petition.
Dated: January 15, 2015 COOLEY LLP ATTN: Patent Group 1299 Pennsylvania Ave., NW, Suite 700 Washington, DC 20004 Tel: (703) 456‐8000 Fax: (202) 842‐7899
Respectfully submitted,
By: /Erik B. Milch/ Erik B. Milch Reg. No. 42,887 Counsel for Petitioner
inContact, Inc.
Petition for Inter Partes Review of U.S. Patent No. 7,162,509
61
CERTIFICATE OF SERVICE I hereby certify, pursuant to 37 C.F.R. Sections 42.6 and 42.105, that a complete copy of the attached PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,092,509, including all exhibits (Nos. 1001‐1005, being included on a compact disc (CD)), are being served via USPS EXPRESS MAIL®, costs prepaid, on the 15th day of January, 2015, the same day as the filing of the above‐identified document in the United States Patent and Trademark Office/Patent Trial and Appeal Board, upon
(1) the Patent Owner by serving the correspondence address of record with the USPTO, and
(2) upon counsel of record for the Patent Owner in the litigation pending before the U.S. District Court for the District of Delaware entitled Microlog Corp. v. inContact, Inc., Case No. 14‐47 (LPS) (D. Del.):
ROYLANCE, ABRAMS, BERDO & GOODMAN, LLP 1300 19th Street, NW, Suite 600 Washington, DC 20036
Jay D. EllwangerDiNOVO PRICE ELLWANGER & HARDY LLP 7000 North MoPac Expressway Suite 350 Austin, TX 78731
/Erik B. Milch/ Erik B. Milch Reg. No. 42,887
COOLEY LLP ATTN: Erik B. Milch Patent Docketing 1299 Pennsylvania Ave. NW, Suite 700 Washington, D.C. 20004 Tel: (703) 456‐8573 Fax: (703) 456‐8100