Petition for Inter Partes Review of Patent 7,092,509...

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


Table of Contents (continued)

Page

ii





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






7. Claims 8‐13 are Anticipated by Berkowitz .............................. 56

VIII. REDUNDANCY ............................................................................................. 58

IX. CONCLUSION .............................................................................................. 60


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


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.


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.


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.


4

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.,


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


6

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


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.)


8

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.)


9

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).


10

“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


11

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.”).


12

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


13

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


14

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


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


16

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


17

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


18

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


19

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.


20

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.


21

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


22

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.”

(See, e.g., id., 1:22, 2:43‐44, 2:58, 5:12, 6:7, 6:19, 6:58, 6:62.)

a. Claim 1[a] – queuing component

Claim 1[a] recites “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.” Haigh discloses “a queuing

component” in the form of transaction processing system 12, shown in Fig. 1 and

reproduced in relevant part below.

As shown in Fig. 1, above, transaction processing system 12 includes

hardware and software components. (See, e.g., id., 2:10‐24, 2:41‐58.) The

hardware and software components of transaction processing system 12 include


23

memory 14, queue 16, transaction controller 18, and identifier generator 20. (Id.,

2:10‐14.)

The transaction processing system 12 in Haigh is “adapted to receive said

different media‐type contacts,” as recited by claim 1. The transaction processing

system 12, according to Haigh, “receives [] transaction[s] from . . . outside the

system 10, such as inbound calls and E‐mail from customers.” (Id., 5:10‐13; see

also, e.g., 2:25‐27, 2:34‐

36.) As discussed above

and as further illustrated by Fig. 2 (shown in relevant part above), the received

transactions are of different media types, including video calls, telephone calls,

voice mail transmissions, E‐mail transmissions, facsimile transmissions, internet

transmissions, and downloaded files. (See id., 2:4‐6, 5:14‐17.)

The transaction processing system 12 in Haigh 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. As explained in Haigh,

“[u]pon receiving a transaction, the transaction controller 18 [of transaction

processing system 12] queues the transaction in at least one queue 16” included

in memory 16 of transaction processing system 12. (Id., 2:34‐36; see also, e.g.,

step 52 of Fig. 2, 9:63‐64 (“. . . [A] memory for storing the transactions in at least


24

one queue; . . .”) (Claim 1), 10:12‐16 (“3. The transaction processing system of

claim 1 wherein the memory stores transactions including one of an inbound call,

an outbound call, a facsimile signal, an E‐mail signal, a voice mail signal, a video

signal, a multimedia signal, and a data file.”) (Claim 3), 10:53‐54 (Claim 11), 11:15‐

16 (Claim 13), 11:42‐43 (Claim 15), 12:19‐20 (Claim 18).) In one embodiment,

queue 16 includes “a common queue” in the form

of a single queue 82 (shown at left). (See id., 2:36‐

40 (“The queue 16 may include a plurality of classes

or types of queues, such as E‐mail queues and

facsimile queues, and may include at least one

queue and/or subqueue for each class or type of

queue.”), 5:51‐53 (“Alternatively, as shown in FIG. 4,

multiple transactions of diverse types may be queued in a single queue 82, . . .”).)

Furthermore, “multiple transactions of diverse types may be queued in [the]

single queue 82” while they await “process[ing],” i.e., routing to “one of the agent

stations 34.” (See id., 5:51‐59 (“[A]s shown in FIG. 4, multiple transactions of

diverse types may be queued in a single queue 82, and queued transactions may

be processed by transaction type order or by queued order, regardless of the

transaction type. For example, although facsimile transaction FC‐1 [sic] 84 is the


25

first transaction in the queue 82, an inbound agent at one of the agent stations 34

may access the first inbound call IC‐1 86 in the queue 82 instead of the facsimile

transaction 84.”).) Each received transaction may be maintained in single queue

82 as a concatenation of the transaction bit sequence and a transaction identifier

generated by identifier generator 20 of transaction processing system 12. (See

id., 5:40‐53 (“In an illustrative embodiment shown in FIG. 3, a facsimile

transaction FT‐L 70, which may be a concatenation of a facsimile bit sequence 72

received through the transaction interface 24 and the respective identifier L 74

from the identifier generator 20, is queued in a facsimile queue 76, . . .

Alternatively, as shown in FIG. 4, multiple transactions of diverse types may be

queued in a single queue 82, . . .”); see also, e.g., Fig. 3 (illustrating concatenation

of a bit sequence and an identifier), 10:3‐5 (“. . . [S]aid transaction controller

queuing each transaction with an associated transaction type signal concatenated

with the transaction.”) (Claim 1), 10:58‐60 (Claim 11), 11:19‐22 (Claim 13), 12:3‐6

(Claim 15), 12:27‐30 (Claim 18).)

b. Claim 1[b] – routing component

Claim 1[b] recites “a routing component, adapted to route the queued

contacts to said workstations based on designated criteria.” Haigh discloses “a

routing component,” also in the form of transaction processing system 12 shown


26

in Fig. 1 and reproduced in the Section VII.A.1.a above. The hardware and

software components of transaction processing system 12 are additionally

“adapted to route the queued contacts,” as recited in claim 1.3 As Haigh

explains, transaction controller 18 of transaction processing system 12 “may

automatically send the queued transactions” upon identifying “a next available

3 As the Federal Circuit has recognized, “the use of two terms in a claim requires

that they connote different meanings, not that they necessarily refer to two

different structures. The prosecution history, specification, comparison with

other claims in the patent, and other evidence may require that two terms in a

claim refer to different structures, but preserving claim integrity does not.”

Applied Medical Research Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1333 n.3

(Fed. Cir. 2006) (emphasis in original) (internal citations omitted). As discussed on

Section V.A above, the specification of the ’509 patent makes clear that the

hardware and software components of contact server 122 perform both

functionalities of queuing and routing. Accordingly, the Petition properly cites to

the hardware and software components of transaction processing system 12 as

anticipating both “a queuing component” and “a routing component,” as recited

by claim 1.


27

agent.” (Id., 5:65‐67; see also, e.g., 6:45‐49, step 60 in Fig. 2, 10:56‐58 (“. . . [A]

transaction controller for conveying a queued transaction having a predetermined

transaction type to the at least one agent station, . . .”) (Claim 11), 11:18‐19

(Claim 13), 12:25‐27 (Claim 18).) Haigh further discloses that the queued contacts

are routed “to said workstations,” as recited in claim 1. According to Haigh,

transactions are “rout[ed]” to the claimed “workstations” in the form of agent

stations 34. (See id., 4:6‐10, 5:55‐59; see also 1:10‐15.)

Finally, Haigh discloses that the queued contacts are routed “based on

designated criteria,” as recited by claim 1. As explained in Haigh, transactions are

“process[ed],” for example, “in a First‐In, First‐Out (FIFO) order.” (See id., 2:25‐34

(“The transaction controller 18 processes transactions . . ., and controls the queue

16 to store received transactions, for example, in a First‐In, First‐Out (FIFO) order,

which may be a default queue processing order capable of being modified by a

supervisor.”), 10:47‐50 (“. . . [T]o determine a first‐in, first‐out (FIFO) order in the

queue; and the transaction controller responds to the identifiers to provide a

first‐out transaction to an available agent.”) (Claim 10).) Haigh also explains that

“other known queue processing techniques may be used, such a Last‐In, First‐Out

(LIFO) ordering of transactions, selective processing of transactions in a queue,

and queue processing based on . . . the current loading or length of the queue.”


28

(Id., 2:30‐34.)

Haigh further discloses that transactions “may be processed by transaction

type order” and agent designations (e.g., inbound agents). (See, e.g., id., 5:53‐59

(“[Q]ueued transactions may be processed by transaction type order . . . For

example, although facsimile transaction FC‐1 [sic] 84 is the first transaction in the

queue 82, an inbound agent at one of the agent stations 34 may access the first

inbound call IC‐1 86 in the queue 82 instead of the facsimile transaction 84.”).)

For example, “agents may be designated . . . as inbound agents and outbound

agents which exclusively handle inbound calls and outbound calls, respectively.”

(Id., 6:4‐7.) Agents may also be designated to handle “specific types of

transactions.” (Id., 5:67‐6:4; see also, e.g., 6:9‐10, 10: 23‐24 (“. . . [A]n agent

associated with a predetermined transaction type.”) (Claim 5), 10:29‐35 (“7. The

transaction processing system of claim 5 wherein the memory stores a

designation of each respective agent to receive at least one type of transaction;

and the transaction controller responds to a corresponding designation of an

agent to convey a transaction of the agent, with the transaction having a

transaction type associated with the designation of the agent.”) (Claim 7),

12:10‐14 (Claim 17).) In fact, “specific agents may be assigned to primarily

process a specific transaction, such as facsimiles, voice mail, E‐mail, etc., but


29

may have a standby status for secondary types, tertiary types, or other types of

transactions beyond tertiary transactions.” (Id., 6:21‐25.)

Finally, Haigh discloses that transactions may be processed based on

transaction designations and agent skills. (See id., 6:31‐34 (“Alternatively, the

transactions may have designations associated therewith which are set for the

skills of the agent or person getting the transactions.”).)

In summary, Haigh discloses designated criteria in the form of First‐In, First‐

Out (FIFO), Last‐In, First‐Out (LIFO), selective processing, processing based on the

current loading or length of the queue, transaction type, agent designations,

transaction designations, and agent skills. Designated criteria in Haigh may be

“modified,” for example, “by a supervisor.” (See id., 2:29‐30 (“[A] default queue

processing order capable of being modified by a supervisor.”); see also, e.g., 6:7‐

10 (“[A]gents may be redesignated as either inbound or outbound as queue

processing requires such redesignation to make more agents available to handle a

specific type of transaction.”), 10:37‐38 (“[D]esignation means for redesignating

the designation of an agent to receive specific transaction types.”) (Claim 8).)


Claim 2 depends from claim 1 and recites: “A system as claimed in claim 1,

wherein: said designated criteria includes at least one of criteria of said queued


30

contacts and criteria assigned to agents operating said workstations.” Each

limitation of independent claim 1, from which claim 2 depends, is disclosed by

Haigh as explained in Section VII.A.1 above. The additional limitation of claim 2 is

satisfied by designated criteria disclosed by Haigh in the form of First‐In, First‐Out

(FIFO), Last‐In, First‐Out (LIFO), selective processing, processing based on the

current loading or length of the queue, transaction type, agent designations,

transaction designations, and agent skills, as explained in Section VII.A.1.b above.

To anticipate claim 2, Haigh must disclose designated criteria that “includes

at least one of” criteria of queued contacts and criteria assigned to agents. Haigh

discloses “criteria of said queued contacts,” as recited by claim 2, at least in the

form of (1) transaction type (see Haigh, 5:53‐59) and (2) transaction designations,

including “designations . . . set for the skills of the agent or person getting the

transactions (id., 6:31‐34). Haigh further discloses “criteria assigned to agents

operating said workstations,” as recited by claim 2, at least in the form of (1)

agent designations, including designations to handle “specific types of

transactions” (id., 5:67‐6:4; see also, e.g., 6:10, 6:21‐25) and designations to

exclusively handle “inbound” transactions or “outbound transactions” (see id.,

6:4‐7; see also, e.g., 1:12‐18, 5:55‐59, 6:15‐20), and (2) agent skills (see id., 6:31‐

34). Accordingly, designated criteria disclosed by Haigh “includes at least one of


31

criteria of said queued contacts and criteria assigned to agents operating said

workstations,” as recited by the claim.



wherein: said designated criteria includes said criteria of said queued contacts

and said criteria assigned to said agents.” Each limitation of independent claim 1,

from which claim 3 depends by virtue of being dependent on claim 2, is disclosed

by Haigh as explained in Section VII.A.1 above. The one limitation added by claim

2 to claim 1 is also disclosed by Haigh as explained in Section VII.A.2 above.

Claim 3 is similar to claim 2 but differs in that designated criteria must

include both criteria of said queued contacts and criteria assigned to said agents.

As discussed in Section VII.A.2 above, Haigh discloses (1) “criteria of said queued

contacts” at least in the form of (a) transaction type (see Haigh, 5:53‐59) and (b)

transaction designations, including “designations . . . set for the skills of the agent

or person getting the transactions. (Id., 6:31‐34). As further discussed in Section

VII.A.2 above, Haigh discloses (2) “criteria assigned to said agents” at least in the

form of (a) agent designations, including designations to handle “specific types of

transactions” (id., 5:67‐6:4; see also, e.g., 6:10, 6:21‐25) and designations to

exclusively handle “inbound” transactions or “outbound transactions” (see id.,


32

6:4‐7; see also, e.g., 1:12‐18, 5:55‐59, 6:15‐20), and (b) agent skills (see id., 6:31‐

34).

Moreover, Haigh describes an example of routing based on (1) criteria of

queued contacts and (2) criteria assigned to agents. As Haigh explains, “multiple

transactions of diverse types may be queued in a single queue 82, and queued

transactions may be processed by transaction type order . . . For example,

although facsimile transaction FC‐1 [sic] 84 is the first transaction in the queue 82,

an inbound agent [criteria of assigned agent in the form of a designation to

exclusively handle ‘inbound’ transactions] at one of the agent stations 34 may

access the first inbound call IC‐1 86 [criteria of queued contact in the form of

transaction type] in the queue 82 instead of the facsimile transaction 84.” (Id.,

5:51‐59.) Therefore, Haigh discloses that “designated criteria includes said

criteria of said queued contacts and said criteria assigned to said agents,” as

recited by claim 3.



further comprising: a contact handling component, adapted to initiate an event at

any of said workstations in response to said contact being routed thereto.” Each

limitation of independent claim 1, from which claim 4 depends, is disclosed by


33

Haigh as explained in Section VII.A.1 above.

Haigh also discloses “a contact handling component” in the form of

“transaction processing hardware and[] software” included in each agent station

34 “for handling various types of transactions.” (Haigh, 4:53‐56.) Each agent

station 34, as explained in Haigh, “may be a terminal, a personal computer,

and/or a workstation using, for example, the ‘INTEL’ ‘PENTIUM’ microprocessor,

memory devices such as a 1 GB hard drive and 16 MB of RAM, and various input

and output devices such as a telephone handset or headset, a mouse, a keyboard,

and/or a display.” (Id., 4:39‐44.) Each agent station 34 further “operate[s]

custom telemarketing software . . . to perform various telemarketing and

supervisory functions.” (Id., 4:47‐50.)

The transaction processing hardware and software of agent station 34 is

“adapted to initiate an event at any of said workstations in response to said

contact being routed thereto,” as recited by claim 4. According to Haigh, each

agent station 34 “includes an individual VGA video board to generate graphical

displays such as user menus for facilitating telemarketing capabilities and call

management by the agents.” (Id., 6:60‐63; see also, e.g., 11:5‐11 (“12. The

transaction processing system of claim 11 wherein the agent interface of at least

one agent station includes a display; and the agent station, responsive to the


34

transaction type signal, generates a screen on the display associated with the

transaction type of the transaction being conveyed for facilitating processing of

the transaction by an agent.”) (Claim 12), 12:36‐42 (Claim 19).) Haigh further

explains that in response to receiving a transaction from transaction processing

system 12, agent station 34 may perform an “[a]utomated look‐up . . . to a

customer host database . . . to match the transaction to a particular customer

record and to present the appropriate host screens and information to the

agent.” (See id., 7:3‐7.) Accordingly, Haigh discloses “initiat[ing] an event at any

of said workstations in response to said contact being routed thereto” in the form

of a presentation, at agent station 34, of host screens and information to the

agent.

The presentation of host screens and information, for example, may

include “data . . . concerning the transaction, such as the biographical data of a

caller.” (See id., 6:65‐7:1.) The presentation of host screens and information may

also include “an input screen on a display allowing an agent to input data in data

fields having associated labels or questions.” (Id., 7:8‐10.) Furthermore, “in

anticipation of receiving an outbound call, the agent station 34 may generate an

outbound call processing screen for inputting data as the agent transacts with the

called party.” (Id., 7:14‐17.) “In addition, in anticipation of receiving data from


35

the Internet such as downloaded multimedia files, the agent station 34 may log

onto the Internet and execute an Internet browser to process the downloaded

multimedia files.” (Id., 7:18‐21.) Finally, “in preparation to receive E‐mail, the

agent station 34 may automatically generate an E‐mail screen.” (Id., 7:22‐23.)



wherein: 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.” Each limitation of independent claim 1, from which claim 5

depends by virtue of being dependent on claim 4, is disclosed by Haigh as

explained in Section VII.A.1 above. The one limitation added by claim 4 to claim 1

is also disclosed by Haigh as explained in Section VII.A.4 above.

Claim 5 specifies that “said event [initiated at workstations] 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.” To anticipate claim

5, Haigh must disclose an “event” that is either (1) “ringing a telephone assigned

to said any workstation” or (2) “causing said any workstation to generate a display

on its display screen.” As explained in Section VII.A.4 above, Haigh discloses

“initiat[ing] an event” in the form of a presentation, at agent station 34, of host


36

screens and information to the agent, thereby disclosing “causing said any

workstation to generate a display on its display screen,” as recited by claim 5.

Thus, Haigh’s disclosure of a presentation, at agent station 34, of host screens and

information to the agent is sufficient to anticipate claim 5.

Haigh also discloses an “event” that is “ringing a telephone assigned to

said any workstation,” as recited by claim 5. Each agent station 34, according to

Haigh, may be assigned a

telephone 110 (shown at

right). (See id., 8:39‐46

(“[A]s shown in FIG. 7 in conjunction with FIG. 1, an ACD system 102 may include

a plurality of agent desktops 104, each including . . . a telephone 110 including a

telephone base 112 and a telephone headset 114, with such components being

incorporated in the agent station corresponding to the agent station 34 in FIG.

1.”).) In response to receiving a telephone call signal, agent station 34 may

“facilitat[e] the execution of an interactive transaction processing protocol by the

agent,” which “may be set of aural prompts,” i.e., ringing of telephone 110, heard

by the agent. (See id., 6:65‐7:13.) Additionally, Haigh explains that “[t]he

operation of the transaction processing system 12 may incorporate automatic call

distribution (ACD) techniques known in the art” (id., 2:41‐43), including those


37

disclosed in U.S. Patent No. 5,465,286 William K. Clare et al. [Ex. 1004] (“Clare”), a

reference expressly incorporated by Haigh so as to become part of Haigh’s

disclosure (see id., 2:48‐53).4 And according to Clare, “[a]n ACD call ring[s] an

agent’s extension.” (Claire, 7:40‐41.) Haigh, therefore, discloses an “event” in the

form of ringing a telephone assigned to an agent station 34.

Because claim 5 requires that “said event include[] 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,” Haigh’s disclosure of either (1) a

presentation, at agent station 34, of host screens and information to the agent

(qualifying as “causing said any workstation to generate a display on its display

screen,” as recited by the claim), or (2) ringing a telephone assigned to an agent

station 34 (qualifying as “ringing a telephone assigned to said any workstation,” as

recited by the claim) is sufficient to anticipate.

4 As the Federal Circuit has recognized, “[w]hen a document is ‘incorporated by

reference’ into a host document, such as a patent, the referenced document

becomes effectively part of the host document as if it were explicitly contained

therein.” Telemac Cellular Corp. v. Topp Telecom, Inc. 247 F.3d 1316, 1329 (Fed.

Cir. 2001).


38



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.” Each limitation of independent claim 1, from

which claim 6 depends, is disclosed by Haigh as explained in Section VII.A.1

above. Haigh also discloses that contacts include (1) “a voice communication” in

the form of (a) inbound telephone calls (see Haigh, e.g., 1:31‐32, 2:43‐44, 2:58,

5:13, 5:45, 5:58, 6:6, 6:16, 6:57, 6:61, 7:55), (b) outbound telephone calls (see id.,

e.g., 1:31‐32, 2:43‐44, 2:58, 6:7, 6:61), and (c) and voice mails (see id., e.g.,

Abstract, 1:33, 2:5, 4:54, 5:15‐16, 6:22, 6:59); (2) “a facsimile communication”

(see id., e.g., Abstract, 1:33, 2:5, 3:1, 4:64, 5:16‐17, 5:28, 5:41, 5:55, 5:58, 6:22,

6:25, 6:58); (3) “an e‐mail communication” (see id., e.g., 2:5, 3:63, 5:12, 5:14,

5:16, 6:22, 6:28, 6:59); and (4) “data transmittable over the Internet” in the form

of (a) video calls (see id., e.g., Abstract, 1:33, 2:5, 4:54, 4:57), (b) internet

transmissions (see id., 5:17, Fig. 2), and downloaded files (see id., 5:17, Fig. 2).

7. Claims 8‐13 are Anticipated by Haigh

The lookup table below summarizes the proposed ground of rejection

based on anticipation by Haigh for claims 8‐13, for the same reasons as set forth


39

above in the referenced claims and argument sections.

Claim / Recited Limitation Corresponding Claim / Recited Limitation

Corresponding Argument

Section

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.”


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


40



Section

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


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


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.”)


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.”


44

(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


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


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

software components (1) transaction processing platform 10, (2) transaction

request server 20, and (3) CTI platform 30, shown in relevant part at below left.

As discussed in the previous section, transaction processing 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.)

“Transaction request server 20

may be, for example, a multi‐


47

media messaging platform such as Lucent Technologies, Inc.’s INTUITY AUDIX

system, or any other device that is capable of receiving and storing transaction

requests.” (Id., 4:5‐9.) Finally, CTI platform 30 includes “three software

modules”—message controller 50, workflow manager 60, and CTI controller 70—

“stored on a separate PC platform,” “on transaction processing platform 10 or on

transaction request server 20.” (See id., 4:19‐25.)

The hardware and software components (1) transaction processing

platform 10, (2) transaction request server 20, and (3) CTI platform 30 are

“adapted to route the queued contacts to said workstations.” As discussed

below, Berkowitz describes the operation of these hardware and software

components “in detail.” (See id., 5:12‐13.)

First, “a transaction request is received by transaction request server 20

from customer 5.” (Id., 5:14‐15.) If the received transaction request is in the

form of a “proxy,”5 the transaction request is stored in transaction request server

5 A “proxy” is a type of transaction request that does not require the customer to

wait in a queue in real time (e.g., a facsimile, a voice mail, a letter, an electronic

mail message or video message), as the customer would, for example, for a live

telephone call. (See Berkowitz, 2:39‐45.)


48

20 in electronic format. (See id., 5:28‐29; see also, e.g., 3:67‐4:5 (“The customer

requests received and stored by transaction request server 20 must be in

electronic format. Thus, in the case of a customer request in the form of regular

mail, the customer request must be converted into an electronic form by scanner

7 prior to being stored by transaction request server 20.”), 6:32‐45 (“1. A

transaction center having a plurality of service agents for automatically servicing a

plurality of transaction requests including transaction requests placed by proxy,

the transaction center comprising: . . . a transaction request server for receiving

and storing one of said transaction requests placed by proxy; . . .”), 7:34‐35 (Claim

12), 8:30‐31 (Claim 22).) Live telephone calls that do not result in a voice mail are

not stored in transaction request server 20. (See id., 5:23‐29.)

Next, CTI platform 30 informs transaction processing platform 10 of receipt

of the transaction request. (See id., 5:29‐41.) More specifically, “message

controller 50 [of CTI platform 30] detects that a transaction request has been

received . . . and sends a signal to workflow manager 60 [of CTI platform 30]

indicating [receipt].” (Id., 29‐33.) “Workflow manager 60 [of CTI platform 30]

then sends a signal to CTI controller 70 [of CTI platform 30] instructing it to send a

signal,” for example, over API 80, “to transaction processing platform 10

indicating that a customer transaction request has been received.” (See id., 5:33‐


49

41.)

Transaction processing platform 10 then “place[s] [the received

transaction request] in the service queue” (in transaction processing platform

10), from where it is “routed by the ACD system provided in transaction

processing platform 10.” (Id., 5:41‐46.) Routing, however, involves hardware

and software components beyond transaction processing platform 10 because

transaction requests received in the form of a proxy remain stored in transaction

request server 20. (See id., 5:55‐61; see also 3:67‐4:5.) As explained in Berkowitz,

“[w]hen the ACD system of transaction processing platform 10 determines that an

appropriate service agent is available,” transaction processing platform 10 sends a

signal to CTI controller 70 of CTI platform 30, and workflow manager 60 of CTI

platform 30 sends a signal to transaction request server 20 requesting

“transaction request server 20 [to] deliver the transaction request to an

appropriate . . . service agent’s PC 90.” (See id., 5:55‐61.)

After “[t]he service agent . . . processes the [routed] transaction request,”

“CTI controller 70 [of CTI platform 30] sends a signal to transaction processing

platform 10 indicating that the transaction request has been processed,” so that

“the software contained in transaction processing platform 10[] knows that the

customer request has been successfully processed.” (See id., 5:62‐6:10.)


50

Berkowitz also discloses that the queued contacts are routed “based on

designated criteria,” as recited by claim 1. Berkowitz explains that the ACD

system of transaction processing platform 10 may route transaction requests

“based on a variety of factors relating to the customer request or the service

agents.” (See id., 1:44‐46.) According to Berkowitz, factors on which routing may

be based include geographical origin of the transaction request, whether the

transaction request is related to sales or service, whether there should be a

priority assigned to the transaction request based on the requester, type of skills

necessary to properly service the request, and relative workloads of the service

agents. (See id., 1:46‐53.) As explained in Berkowitz, the criteria used to route

transaction requests are typically “selectable and programmable by the

organization utilizing the call center,” and that contacts “are ultimately routed

based upon a set of programmable rules.” (See id., 1:63‐67.) Thus, Berkowitz

discloses that individual criterion may be selected and combined to form “a set”

of criteria that ultimately determine routing.


Each limitation of independent claim 1, from which claim 2 depends, is

disclosed by Berkowitz as explained in Section VII.B.1 above. The additional

limitation of claim 2 is satisfied by designated criteria disclosed in Berkowitz in the


51

form of geographical origin of the transaction request, whether the transaction

request is related to sales or service, whether there should be a priority assigned

to the transaction request based on the requester, type of skills necessary to

properly service the request, and relative workloads of the service agents, as

explained in Section VII.B.1.b above.

To anticipate claim 2, Berkowitz must disclose designated criteria that

“includes at least one of” criteria of queued contacts and criteria assigned to

agents. Berkowitz discloses “criteria of said queued contacts,” as recited by claim

2, at least in the form of (1) geographical origin of the transaction request (see

Berkowitz, 1:47), (2) whether the transaction request is related to sales or service

(see id., 1:48‐49), and (3) whether there should be a priority assigned to the

transaction request based on the requester (see id., 1:49‐50). Berkowitz further

discloses “criteria assigned to agents operating said workstations,” as recited by

claim 2, at least in the form of (1) type of skills necessary to properly service the

request (see id., 1:50‐51) and (2) relative workloads of the service agents (see id.,

1:52‐53). Accordingly, designated criteria disclosed by Berkowitz “includes at

least one of criteria of said queued contacts and criteria assigned to agents

operating said workstations,” as recited by the claim.


52


Each limitation of independent claim 1, from which claim 3 depends by

virtue of being dependent on claim 2, is disclosed by Berkowitz as explained in

Section VII.B.1 above. The one limitation added to claim 1 by claim 2 is also

disclosed by Berkowitz as explained in Section VII.B.2 above.

Claim 3 is similar to claim 2 but differs in that designated criteria must

include both criteria of said queued contacts and criteria assigned to said agents.

As discussed in Section VII.B.2 above, Berkowitz discloses (1) “criteria of said

queued contacts,” at least in the form of (a) geographical origin of the transaction

request (see Berkowitz, 1:47), (b) whether the transaction request is related to

sales or service (see id., 1:48‐49), and (c) whether there should be a priority

assigned to the transaction request based on the requester. (See id., 1:49‐50). As

further discussed in Section VII.B.2 above, Berkowitz discloses (2) “criteria

assigned to said agents” at least in the form of (a) type of skills necessary to

properly service the request (see id., 1:50‐51), and (b) relative workloads of the

service agents (see id., 1:52‐53). And as discussed in Section VII.B.1, Berkowitz

discloses that individual criterion may be selected and combined to form “a set”

of criteria that ultimately determine routing. (See id., 1:63‐67.) Accordingly,

Berkowitz discloses that “designated criteria includes said criteria of said queued


53

contacts and said criteria assigned to said agents,” as recited by claim 3.




Berkowitz additionally discloses “a contact handling component” in the

form of hardware and software components of each service agent’s PC 90. (See

id., 4:41‐43 (“Each of a plurality of service agents 90 preferably has a personal

computer, or PC, which is provided with desktop software . . .”).) The hardware

and software components of each service agent’s PC 90 are “adapted to initiate

an event at any of said workstations in response to said contact being routed

thereto,” as recited by claim 4. As described in Berkowitz, PC 90 receives the

routed customer requests of various types, including facsimile, electronic mail,

voice mail, regular mail or video, and displays them to the agent. (See id., 4:41‐

45.) Accordingly, Berkowitz discloses “initiat[ing] an event at any of said

workstations in response to said contact being routed thereto” in the form of a

display of customer requests, at PC 90, to the agent.

Berkowitz further explains that “the desktop software [of PC 90] has what is

commonly known in the art as a ‘screen pop’ capability[,] which presents the

customer information to the service agent on the screen of the service agent’s PC


54

90 just prior to the time that the agent receives the customer request.” (See id.,

5:5‐11.) Accordingly, Berkowitz also discloses “initiat[ing] an event at any of said

workstations in response to said contact being routed thereto” in the form of a

“screen pop.”

Finally, Berkowitz discloses that each service agent’s PC 90 is connected to

that service agent’s telephone. (See id., 4:41‐49 (“Each of a plurality of service

agents 90 preferably has a personal computer, or PC, which is provided with

desktop software which enables the service agent to receive and/or view each

customer request whether it be in facsimile, electronic mail, voice mail, regular

mail or video format. In the case of voice mail messages, the customer request

can be played back to the service agent . . . over the service agent's telephone

connection.”).) In instances where “a customer transaction request in the form of

a live telephone call . . . is handled by a service agent as a live call” (id., 5:25‐28),

then, the hardware and software components of PC 90 initiate an event in the

form of ringing a telephone.


Each limitation of independent claim 1, from which claim 5 depends by

virtue of being dependent on claim 4, is disclosed by Berkowitz as explained in

Section VII.B.1 above. The one limitation added by claim 4 to claim 1 is also


55


Claim 5 specifies that “said event [initiated at workstations] 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.” To anticipate claim

5, Berkowitz must disclose an “event” that is either (1) “ringing a telephone

assigned to said any workstation” or (2) “causing said any workstation to generate

a display on its display screen.” As explained in Section VII.B.4 above, Berkowitz

discloses initiating an event in the form of (1) a display of customer requests, at

PC 90, to the agent (see id., 4:41‐45), and (2) a “screen pop” at PC 90 (see id., 5:5‐

11), thereby disclosing “causing said any workstation to generate a display on its

display screen,” as recited by claim 5. Thus, these disclosures from Berkowitz are

sufficient to anticipate claim 5.

Berkowitz also discloses an “event” that is “ringing a telephone assigned to

said any workstation,” as recited by claim 5. As explained in Section VII.B.4

above, Berkowitz discloses initiating an event in the form of ringing a telephone

(see Berkowitz 4:41‐49, 5:25‐28).

Because claim 5 requires that “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,” Berkowitz’s disclosure of either (1) a


56

display of customer requests, at PC 90, to the agent, and/or a “screen pop” at PC

90 (each qualifying as “causing said any workstation to generate a display on its

display screen,” as recited by the claim); or (2) ringing a telephone (qualifying as

“ringing a telephone assigned to said any workstation,” as recited by the claim) is

sufficient to anticipate.



disclosed by Berkowitz as explained in Section VII.B.1 above. Berkowitz also

discloses that contacts include (1) “a voice communication” in the form of (a)

telephone calls (see Berkowitz, e.g., 2:40, 5:26), and (b) voice mails (see id., e.g.,

1:9, 3:56, 4:45, 4:46); (2) “a facsimile communication” (see id., e.g., 1:9, 3:56,

4:44, 4:58, 5:17, 6:19); (3) “an e‐mail communication” (see id., e.g., 1:9, 3:56,

4:45, 4:58, 5:17, 6:19); and (4) “data transmittable over the Internet” in the form

of live multi‐media requests (see id., 5:20.)

7. Claims 8‐13 are Anticipated by Berkowitz

The following lookup table summarizes the proposed ground of rejection

based on anticipation by Berkowitz for claims 8‐13, for the same reasons as set

forth above in the referenced claims and argument sections.


57



Section

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



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


58



Section

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.


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.

Claim 1 (from which claims 2‐6 depend) recites “a routing component,

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.


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.


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

Petition for Inter Partes Review of Patent 7,092,509...

Documents

Transcript of Petition for Inter Partes Review of Patent 7,092,509...