        NOTE: This disposition is nonprecedential.


  United States Court of Appeals
      for the Federal Circuit
                     ______________________

          SECURUS TECHNOLOGIES, INC.,
                   Appellant

                                    v.

        GLOBAL TEL*LINK CORPORATION,
                    Appellee
             ______________________

                           2016-1992
                     ______________________

    Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2014-
01278.
   ---------------------------------------------------------------------------

          SECURUS TECHNOLOGIES, INC.,
                   Appellant

                                    v.

        GLOBAL TEL*LINK CORPORATION,
                    Appellee
             ______________________

                           2016-1993
                     ______________________
2              SECURUS TECHS., INC.   v. GLOB. TEL*LINK CORP.



    Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2014-
01282.
                 ______________________

                Decided: April 25, 2017
                ______________________

    DANIEL FLETCHER OLEJKO, Bragalone Conroy PC, Dal-
las, TX, argued for appellant. Also represented by
JEFFREY BRAGALONE, JUSTIN KIMBLE, TERRY SAAD.

   JON WRIGHT, Sterne Kessler Goldstein & Fox, PLLC,
Washington, DC, argued for appellee. Also represented by
ROSS G. HICKS, MICHAEL BRADLEY RAY, MICHAEL D.
SPECHT.
               ______________________

    Before WALLACH, CHEN, and STOLL, Circuit Judges.
CHEN, Circuit Judge,
    Securus Technologies, Inc. (Securus) appeals from the
final written decisions of the United States Patent and
Trademark Office, Patent Trial and Appeal Board
(Board), holding all claims of U.S. Patent No. 7,860,222
(the ’222 patent) unpatentable and denying Securus’s
identical motions to amend in two inter partes reviews
(IPRs) requested by Global Tel*Link Corporation (Global).
See Global Tel*Link Corp. v. Securus Techs., Inc.,
IPR2014-01278, 2016 WL 783391 (PTAB Jan. 21, 2016)
(-1278 IPR Board Decision); Global Tel*Link Corp. v.
Securus Techs., Inc., IPR2014-01282, 2016 WL 783411
(PTAB Jan. 21, 2016) (-1282 IPR Board Decision). Be-
cause the above-captioned appeals address overlapping
claims and issues, we address them in this consolidated
opinion.
SECURUS TECHS., INC.   v. GLOB. TEL*LINK CORP.           3



    In both appeals, we affirm the Board’s findings of un-
patentability for those claims for which the Board provid-
ed a reasoned explanation for its decision. For those
claims for which the Board provided no explanation for its
decision, however, we vacate and remand for the Board to
do so. We affirm the Board’s denial of Securus’s motions
to amend.
                         BACKGROUND
     Securus owns the ’222 patent, which is entitled “Sys-
tems and Methods for Acquiring, Accessing, and Analyz-
ing Investigative Information.” It “relates generally to
information systems and, more particularly, to the acqui-
sition, access, and/or analysis of investigative infor-
mation.” ’222 patent, col. 1, ll. 44–46. In particular, the
’222 patent describes a system and method for reviewing
conversation data for certain events and noting when
something of interest happens. The ʼ222 patent has two
independent claims, which are representative. Claim 1 is
directed to a system that allows a user to (i) bookmark
events of interest in monitored communications; and (ii)
search those communications for particular words:
    1. A system comprising:
   a communication services module operable to pro-
   vide communications between individuals; and
   an investigative tools module in communication
   with said communication service module operable
   to allow a user to monitor said communications
   between individuals and to place event identifiers
   in association with said communications between
   individuals, said event identifiers comprise a plu-
   rality of bookmarks representing different events
   of interest; and
   said investigative tools module comprises a word
   search module to identify particular words within
4               SECURUS TECHS., INC.   v. GLOB. TEL*LINK CORP.



    said communications between individuals and
    place event identifiers in association therewith.
Id. at col. 34, ll. 8–21. Claim 21 recites a method of
monitoring communications and automatically inserting
bookmarks based upon detected events:
    21. A method comprising:
    providing communications between individuals;
    recording said communications between individu-
    als;
    monitoring said communications between indi-
    viduals, said monitoring comprises logic of a call
    processing system analyzing content of said com-
    munications between individuals; and
    placing a plurality of event identifiers in associa-
    tion with a recorded one of said communications
    between individuals based upon events detected
    by said monitoring.
Id. at col. 35, ll. 26–35. The ’222 patent also has thirty-
four dependent claims, directed towards various modifica-
tions to the independent system and method claims. For
example, claim 2 recites that the user of the system is “an
investigator” and claim 4 recites that the communications
at issue are “controlled environment facility visitation
calls.” Id. at col. 34, ll. 22–25, 29–31.
    Global filed two petitions for IPR of the ’222 patent,
alleging that all thirty-six claims were unpatentable as
obvious under 35 U.S.C. § 103. The Board instituted
review of all claims based on Global’s petitions. Specifi-
cally, in the -1278 IPR, the Board instituted review of
claims 1, 3, 7–10, 14–19, 21, and 31–36 on the grounds
that each claim was obvious over U.S. Patent Publication
No, 2004/0081296 A1 (Brown). The Board also instituted
review of claims 2, 4–7, 9, 11–13, 16, 20, and 22–30 on the
grounds that each claim was obvious over Brown in view
SECURUS TECHS., INC.   v. GLOB. TEL*LINK CORP.           5



of various other additional references. 1 In the -1282 IPR,
the Board instituted review of claims 1, 3, 7–9, 14–18, 21,
and 31–35 on the grounds that each was obvious in light
of U.S. Patent No. 6,058,163 (Pattison) and U.S. Patent
No. 7,092,494 (Anders). The Board also instituted review
of the remaining dependent claims on the grounds that
each was obvious over Pattison and Anders in combina-
tion with the same additional references at issue in the
-1278 IPR.
    Securus filed a Patent Owner Response in both IPRs,
challenging Global’s asserted grounds of unpatentability.
Securus also filed identical motions to amend in each
proceeding, seeking to change the antecedent basis for six
dependent claims. Specifically, Securus sought to amend
claims 15–20 to depend from claim 14, rather than from
claim 1. Global filed a Reply and opposed Securus’s
motions to amend.
     The Board issued final written decisions in both IPRs,
finding all claims unpatentable based on the grounds
identified in the institution decisions. For the independ-
ent claims, as well as certain dependent claims, the Board
set forth the specific evidence and reasoning supporting
its conclusion that the claims are unpatentable. For other
dependent claims, however, the Board provided only an
essentially identical, generic sentence: “After considera-
tion of the language recited in [the claims], the Petition,
the Patent Owner Response, and the Petitioner’s Reply,
as well as the relevant evidence discussed in those papers,
we find that one of ordinary skill in the art would have
considered these dependent claims obvious over [the


   1     In the -1278 IPR, the Board instituted on claims
7, 9, and 16 on two grounds: that each claim was obvious
(i) over Brown alone; and (ii) over Brown in view of an
additional reference. The Board did not institute on
alternative grounds for any other claims.
6               SECURUS TECHS., INC.   v. GLOB. TEL*LINK CORP.



asserted art].” -1278 IPR Board Decision, 2016 WL
783391, at *10, *13–15; -1282 IPR Board Decision, 2016
WL 783411, at *10, *12, *15–16. The Board also denied
Securus’s motions to amend because the proposed
amendments were not made in response to a ground of
unpatentability raised in the IPRs as required by 37
C.F.R. § 42.121.
   Securus timely appealed each of the Board’s decisions.
We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
                        DISCUSSION
    We review the Board’s decisions under the standards
set forth in the Administrative Procedure Act (APA), 5
U.S.C. § 706. Pride Mobility Prods. Corp. v. Permobil,
Inc., 818 F.3d 1307, 1313 (Fed. Cir. 2016). We set aside
the Board’s actions if they are “arbitrary, capricious, an
abuse of discretion, or otherwise not in accordance with
law” or “unsupported by substantial evidence.” 5 U.S.C.
§ 706(2). We review the Board’s legal conclusions de novo
and its factual findings for substantial evidence. In re
Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000). A finding
is supported by substantial evidence if a reasonable mind
might accept the evidence as adequate support for the
finding. Consol. Edison Co. v. NLRB, 305 U.S. 197, 229
(1938).
    A claim is unpatentable if the differences between the
claimed subject matter and the prior art are such that the
subject matter as a whole would have been obvious at the
time the invention was made to a person having ordinary
skill in the art. 35 U.S.C. § 103; 2 KSR Int’l Co. v. Teleflex


    2    Congress amended § 103 when it passed the
Leahy-Smith America Invents Act (AIA). Pub. L. No. 112–
29, § 3(c), 125 Stat. at 287. However, because the applica-
tion that led to the subject patent has never contained
(1) a claim having an effective filing date on or after
SECURUS TECHS., INC.   v. GLOB. TEL*LINK CORP.                7



Inc., 550 U.S. 398, 406 (2007). Obviousness is a question
of law based on underlying findings of fact. Harmonic
Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir.
2016). The underlying findings of fact include the scope
and content of the prior art, the differences between the
prior art and the claimed invention, whether there is a
motivation to combine prior art references, the level of
ordinary skill in the art, and relevant objective indicia of
nonobviousness. Merck & Cie v. Gnosis S.P.A., 808 F.3d
829, 833 (Fed. Cir. 2015), cert. denied, 137 S. Ct. 297
(2016).
                I.   -1278 IPR Board Decision
                     A.     Claims 1 and 21
      Securus first challenges the Board’s conclusion that
independent claims 1 and 21 are unpatentable as obvious
over Brown. Securus argues that the Board (i) improperly
adopted arguments raised by Global for the first time in
its Reply and misevaluated Brown’s teachings regarding
the “word search module” limitation of claim 1; and
(ii) failed to provide sufficient justification for its decision
regarding claim 21. We disagree with Securus and affirm
the Board’s decision that independent claims 1 and 21 are
unpatentable as obvious over Brown.
    Brown discloses a personal telephone recording (PTR)
system that records a telephone conference and can replay
the recording (or a portion of the recording) after or
during the telephone conference. J.A. 770. The Brown
PTR system also discloses a variety of features to assist
the user in retrieving and manipulating the recorded
information, including Bookmarking (345) and Data


March 16, 2013; or (2) a reference under 35 U.S.C. §§ 120,
121, or 365(c) to any patent or application that ever
contained such a claim, the pre-AIA § 103 applies. Id. §
3(n)(1), 125 Stat. at 293.
8               SECURUS TECHS., INC.   v. GLOB. TEL*LINK CORP.



Mining (385) components. J.A. 721. Bookmarking com-
ponent 345 allows the PTR user to set bookmarks to, for
example, identify where in the recorded conversation a
certain topic was discussed. J.A. 773. Bookmarks are
also automatically generated when a participant discon-
nects from or rejoins a conference call. Id. According to
Brown, these bookmarks allow the user to identify, re-
trieve, and forward recorded information for a variety of
purposes. Data mining component 385 is used to cull
information from the call data, which is processed by data
mining subcomponents Word Indexing 390 to create
reports and Querying 395 to generate ad hoc queries. Id.
Brown explains that the “[p]rocessing of the recorded call
data may involve, for example, creating an index, anno-
tating the call data, etc.” J.A. 788. And “[a]nnotating the
data may involve searching the call data for keywords and
phrases.” Id.
     In the -1278 IPR Board Decision, the Board first
found that “components of Brown’s command processing
component 340, including data mining component 385,
word indexing component 390, bookmarking component
345, and querying component 395, constitute a ‘word
search module,’ while Brown’s voice receiver, command
filter 215, voice-text converter 245, digital transmitter
285, email/computer system 282, and bookmarking com-
ponent 345 collectively constitute an ‘investigative tools
module.’” -1278 IPR Board Decision, 2016 WL 783391, at
*8. In addition, the Board found that “Brown separately
teaches bookmarking data and annotating the data for
word searches.” Id. It concluded, “a person of ordinary
skill in the art would have understood bookmarking
component 345, which is part of command processing
component 340, to constitute a ‘word search module’ that
would be part of an ‘investigative tools module.’ . . . .
Therefore, based on the record before us, we are satisfied
that Brown teaches or suggests an ‘investigative tools
module’ comprising a ‘word search module.’” Id.
SECURUS TECHS., INC.   v. GLOB. TEL*LINK CORP.            9



    The Board went on to find that, in addition, “Brown
teaches both bookmarking and annotation of data for
word searching,” thereby also meeting by way of this
disclosure the limitations of “(1) an investigative tools
module that allows event identifiers, such as bookmarks,
to be made identifying events of interests that occur
during the communication between individuals, and (2) a
word search module that identifies word[s] in the commu-
nication between individuals and can place event identifi-
ers at particular words.” Id.
    Securus first argues that the Board’s analysis above
impermissibly relied on an argument allegedly raised for
the first time in Global’s Reply—that Brown’s bookmark-
ing component 345 was relevant to the analysis of the
claimed “word search module.” Securus does not mean-
ingfully argue that it was prejudiced in any way by the
Board’s reliance on bookmarking component 345 (in
combination with other components) to conclude that
Brown teaches or suggests the limitation. Nor does
Securus argue that it was not afforded a meaningful
opportunity to respond to this argument. Securus argues
only that because Global did not advance this particular
argument in its petition, the Board was not permitted to
rely on the argument in its final decision. We find Se-
curus’s argument unpersuasive.
    Having reviewed the record, we find no error in the
Board’s consideration of the argument raised in Global’s
reply brief. Global expressly identified bookmarking
component 345 in the petition, linked the setting of book-
marks to bookmarking component 345, and argued that
the setting of bookmarks satisfies the recited limitation of
a word search module to identify particular words within
said communications between individuals and place event
identifiers in association therewith. In its Patent Owner’s
Response, Securus did not dispute that Brown taught
bookmarking functionality, but argued only that Global
did not expressly argue that bookmarking component 345
10              SECURUS TECHS., INC.   v. GLOB. TEL*LINK CORP.



was part of the claimed word search module. In response,
Global clarified that its argument regarding setting
bookmarks necessarily contemplates that Brown’s book-
marking component 345 is part of the disclosed word
search module. We see no error in the Board’s decision to
consider that argument as proper rebuttal. See Ariosa
Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1368
(Fed. Cir. 2015) (“The Board must make judgments about
whether a Petition identified the specific evidence relied
on in a Reply and when a Reply contention crosses the
line from the responsive to the new.”).
    To the extent Securus argues that the Board was not
permitted to formulate an understanding of Brown’s
teachings that is different from what was set forth in
Global’s Petition or in the Institution Decision, we disa-
gree. “There is no requirement, either in the Board’s
regulations, in the APA, or as a matter of due process, for
the institution decision to anticipate and set forth every
legal or factual issue that might arise in the course of the
trial.” Genzyme Therapeutic Prods. v. Biomarin Pharma-
ceutical Inc., 825 F.3d 1360, 1366 (Fed. Cir. 2016). The
relevant question is whether Securus had a fair oppor-
tunity to respond to Global’s argument that was adopted
by the Board in the final decision. Here, Securus has not
shown that the Board’s decision rested on any factual or
legal argument regarding Brown’s bookmarking compo-
nent 345 for which it was denied notice or an opportunity
to be heard in the proceedings below. Moreover, it is
incumbent upon the party complaining of some procedural
violation—such as the inclusion of improper rebuttal in a
reply brief—to first raise the issue below. See Belden Inc.
v. Berk-Tek LLC, 805 F.3d 1064, 1081 (Fed. Cir. 2015)
(“With no Board denial of concrete, focused requests
before us, we are not prepared to find that [the appellant]
was denied a meaningful opportunity to respond.”).
Securus presents no evidence that it availed itself of the
procedures for filing a sur-reply, a motion to strike, or a
SECURUS TECHS., INC.   v. GLOB. TEL*LINK CORP.            11



conference call to challenge this allegedly improper argu-
ment. On the merits, we conclude that substantial evi-
dence supports the Board’s findings that Brown discloses
all of the limitations of claim 1—including the word
search module—and agree that Brown’s teachings render
the claim obvious. We therefore affirm the Board’s deci-
sion that claim 1 is unpatentable.
     Securus next argues that the Board’s analysis of claim
21 is insufficient. Securus contends that the Board’s
reasoning for finding claim 21 unpatentable in the final
decision is identical to the reasoning articulated in the
institution decision. According to Securus, merely restat-
ing the basis for instituting review does not account for
the higher burden of proof that the petitioner bears to
ultimately prevail in showing unpatentability. Thus,
Securus argues the Board erred in failing to cite addition-
al evidence and additional analysis over and above what
it previously stated in the institution decision. In particu-
lar, Securus contends that the Board failed to specifically
refute certain arguments raised by Securus after institu-
tion—in its Patent Owner Reply. We find these argu-
ments unpersuasive.
    Regardless of whether the burden placed on the peti-
tioner to prove unpatentability is greater than the burden
to initiate IPR, there is no requirement that the Board
must identify additional evidence or formulate additional
reasoning in the final decision to account for that different
burden. The operative question is whether the Board has
articulated a reasoned explanation for its conclusion of
unpatentability that is supported by substantial evidence.
Also, the Board is “not require[d] . . . to address every
argument raised by a party or explain every possible
reason supporting its conclusion.” Synopsys, Inc. v.
Mentor Graphics Corp., 814 F.3d 1309, 1322 (Fed. Cir.
2016). Here we are satisfied that the Board considered
Securus’s various arguments. See -1278 IPR Final Deci-
sion, 2016 WL 783391, at *9. Having reviewed the record,
12                SECURUS TECHS., INC.   v. GLOB. TEL*LINK CORP.



we conclude that the Board’s decision that Brown disclos-
es each of the limitations of claim 21, even when viewed
in light of the arguments raised by Securus that may
detract from that conclusion, is supported by substantial
evidence. Specifically, we agree with the Board’s analysis
that Brown’s disclosure of converting voice data to text
data and displaying that converted data—at e.g., J.A.
773–774, 784—satisfies the “monitoring said communica-
tion between individuals, said monitoring comprises logic
of a call processing system analyzing content of said
communications between individuals.”         We therefore
affirm the Board’s decision the claim 21 is unpatentable.
             B.      Claims 2, 4, 6, 10–11, and 13
    Securus also mounts a series of procedural attacks on
the Board’s analysis of specific dependent claims. In
particular, Securus argues the Board improperly relied on
new arguments, shifted the burden to Securus to prove
patentability, and provided insufficient analysis to sup-
port its conclusion that claims 2, 4, 6, 10–11, and 13 are
unpatentable. Having thoroughly reviewed the record, we
find all of these arguments without merit.
    As with Securus’s procedural challenge to the Board’s
analysis of claim 1, we find Securus’s challenge to the
Board’s reliance on these other so-called new arguments
to be similarly misplaced. We are not persuaded that
these arguments were improper rebuttal, nor do we see
any evidence that Securus was denied notice and an
opportunity to respond to them.
    We also find no error in the sufficiency of the Board’s
analysis of these claims. With respect to claim 6, for
example, the Board recounted the parties’ arguments,
identified the specific portion of Global’s petition inform-
ing the Board’s decision, and explained why it found
Securus’s argument unpersuasive. See -1278 IPR Final
Decision, 2016 WL 783391, at *14–15 (specifically identi-
fying J.A. 85–87 and J.A. 769–70 as supporting its analy-
SECURUS TECHS., INC.   v. GLOB. TEL*LINK CORP.           13



sis). We have reviewed the parties’ arguments and the
evidence in the record and find that the Board’s adoption
of Global’s argument, in this case, provides a sufficiently
clear unpatentability rationale supported by substantial
evidence.
    Moreover, we see no evidence that the Board imper-
missibly shifted the burden to Securus in any respect.
For example, as relevant to the analysis of claims 2, 11,
and 13, the Board recounted the parties’ positions, con-
cluded that it found Global’s position to be persuasive,
and provided specific reasons why it considered Securus’s
arguments to be unpersuasive. In identifying the failings
of Securus’s arguments, the Board did not, as Securus
contends, shift the burden to Securus. The Board’s rea-
soning is clear, substantial evidence supports its findings,
and we see no error in its ultimate conclusion of un-
patentability.
    We therefore affirm the Board’s conclusion that
claims 2, 4, 6, 10–11, and 13 are unpatentable.
     C.     Claims 3, 8, 14–15, 17, 19, 22–32, and 34–36
    Securus also argues that the Board failed to articulate
any reason supporting its decision that claims 3, 8, 14–15,
17, 19, 22–32, and 34–36 are unpatentable. We agree.
    As we explained in In re Nuvasive, Inc., two distinct
yet related principles are relevant to our review. 842 F.3d
1376, 1382 (Fed. Cir. 2016). First, the Board must “make
the necessary findings and have an adequate ‘evidentiary
basis for its findings.’” Id. (quoting In re Lee, 277 F.3d
1338, 1344 (Fed. Cir. 2002)). Second, the Board “must
examine the relevant data and articulate a satisfactory
explanation for its action including a rational connection
between the facts found and the choice made.” Id. (citing
Motor Vehicle Mfrs. Ass’n v. State Farm Mut. Auto. Ins.
Co., 463 U.S. 29, 43 (1983)); see also Synopsys, 814 F.3d at
1322 (stating that, as an administrative agency, the
14              SECURUS TECHS., INC.   v. GLOB. TEL*LINK CORP.



Board “must articulate logical and rational reasons for
[its] decisions”).
    We do not require perfect explanations and will up-
hold the Board’s decision “if we may reasonably discern
that it followed a proper path, even if that path is less
than perfectly clear.” Ariosa Diagnostics, 805 F.3d at
1365 (citation omitted). However, “it is not adequate to
summarize and reject arguments without explaining why
the [Board] accepts the prevailing argument.” Nuvasive,
842 F.3d at 1383; see also Cutsforth, Inc. v. MotivePower,
Inc., 636 Fed. App’x 575, 578 (Fed. Cir. 2016) (vacating
and remanding, because “[t]he majority of the Board’s
Final Written Decision is spent summarizing the parties’
arguments and offers only conclusory analysis of its
own.”).
     Here, the Board failed to articulate any reasoning for
reaching its decision as to these claims. While the Board
need not expound upon its reasoning in great detail in all
cases—and we make no comment on the specific level of
detail required to sufficiently address the merits of these
claims in particular—it must provide some reasoned basis
for finding the claims obvious in order to permit meaning-
ful review by this court. See Lee, 277 F.3d at 1346 (em-
phasizing that remand is required where a board decision
“is potentially lawful but insufficiently or inappropriately
explained”). We therefore conclude that the Board’s
holding that claims 3, 8, 14–15, 17, 19, 22–32, and 34–36
are unpatentable is insufficient and remand for further
proceedings. Although we conclude the Board erred as to
this entire group of claims, as will be explained infra, we
remand only claims 3, 8, 14, 17, 22–24, 27, 29–31, and 34–
35. We dismiss as moot the appeal of claims 15, 19, 25–
26, 28, 32, and 36 because we affirm the -1282 IPR Board
Decision that these latter claims are unpatentable.
SECURUS TECHS., INC.   v. GLOB. TEL*LINK CORP.              15



          D.       Claims 5, 7, 9, 12, 16, 18, 20, and 33
     Unlike the preceding groups of claims, Securus does
not raise any argument on appeal regarding the Board’s
decision that the remaining claims—5, 7, 9, 12, 16, 18, 20,
and 33—are unpatentable, separate from its challenge to
the Board’s analysis of the independent claims. As such,
Securus has waived any arguments that those claims
should be analyzed separately from the independent
claims. See In re Kaslow, 707 F.2d 1366, 1376 (Fed. Cir.
1983) (“Since the claims are not separately argued, they
all stand or fall together.” (citation omitted)). Because we
affirm the Board’s finding of unpatentability as to the
independent claims, we also affirm the Board’s finding of
unpatentability with respect to these dependent claims.
                 II.   -1282 IPR Board Decision
     A.        Claims 1–2, 4–7, 9–13, 16, 18, 20–21, and 33
    Our holding above affirming the unpatentability of
claims 1–2, 4–7, 9–13, 16, 18, 20–21, and 33 in the -1278
IPR Board Decision leaves no live issue as to the un-
patentability of these claims in the -1282 IPR Board
Decision. See Synopsys, Inc. v. Lee, 812 F.3d 1076, 1077–
78 (Fed. Cir. 2016); 13C Charles Alan Wright et al.,
Federal Practice and Procedure § 3533.10 (3d ed. 2017)
(“Among the circumstances that create mootness are
rulings in other adjudicatory proceedings, including
rulings by the same court in the same or companion
proceedings . . . .”). We therefore dismiss as moot Se-
curus’s challenge to the Board’s analysis of these claims
in the -1282 IPR Board Decision.
          B.       Claims 15, 19, 25–26, 28, 32, and 36
          i.       Analysis of the Independent Claims
    Although we dismiss as moot Securus’s challenge to
the Board’s holding that independent claims 1 and 21 are
unpatentable, we must nevertheless address the patenta-
16              SECURUS TECHS., INC.   v. GLOB. TEL*LINK CORP.



bility of the remaining dependent claims that we did not
affirm as unpatentable in the -1278 IPR Board Decision.
The Board’s decision that the dependent claims are un-
patentable rests on the premise that the independent
claims are, as an initial matter, obvious over Anders and
Pattison. If the Board incorrectly concluded in the -1282
IPR Board Decision that the independent claims are
unpatentable over this combination of references, its
decision with respect to the dependent claims would
similarly be error. We therefore address Securus’s chal-
lenge to the Board’s analysis of the independent claims.
    Securus first argues that the Board relied upon an ar-
gument not raised by Global regarding the “investigative
tools module” of claim 1—namely, that the Anders refer-
ence alone discloses the limitation. According to Securus,
Global argued only that the combination of Anders and
Pattison teaches the “investigative tools module.” Thus,
Securus contends the Board’s decision, relying on Anders
alone to satisfy this limitation must be reversed. We
disagree with Securus’s characterization of the record.
     The Board’s finding in the final decision that Anders
alone taught the “investigative tools module” was not a
new argument. In the petition, Global argued that both
Anders and Pattison disclose all aspects of the “investiga-
tive tools module” limitation. In the institution decision,
the Board agreed that both Anders and Pattison describe
or suggest the limitation. However, in the analysis that
followed, the Board discussed only how Anders disclosed
the limitation. In the final decision the Board maintained
that both Anders and Pattison disclose the “investigative
tools module” limitation, however, it again relied solely on
Anders to support its conclusion that the references teach
each of the claimed limitations. We see no error in the
Board’s reliance on Anders alone to find that the “investi-
gative tools module” was disclosed by the prior art.
SECURUS TECHS., INC.   v. GLOB. TEL*LINK CORP.             17



     Moreover, the Board’s finding is supported by sub-
stantial evidence. First, the ’222 patent imparts no
significant physical limitation on the term module. See,
e.g., ’222 patent, col. 10, ll. 10–13 (“Each of these vertical
applications and modules may provide features and
functions desirable with respect to the controlled envi-
ronment facility”); id. at col. 11, ll. 57–58 (“The features
and functions provided by vertical applications and mod-
ules . . . .”). The Board’s understanding of a module as
either hardware or software that performs a certain
function is, therefore, correct under the broadest reasona-
ble interpretation of the term. And its conclusion that
Anders teaches the claimed investigative tools module for
monitoring and bookmarking communications is support-
ed by substantial evidence. Anders discloses, for example,
that “[a] voice comparing means 16 is used where key
words or phrases or tone numbers are analyzed.” Id. at
col. 7, ll. 24–26. Moreover, the monitored communication
data “may be modified by marking the call or the word
within the call data.” Id. at col. 8, ll. 4–5. Anders ex-
plains that “[t]his marking is accomplished by a marking
means 23 which is a combination of software and the hard
drive storage in the Controller 3 and ASR/VPN voice
comparing means 16.” Id. at col. 8, ll. 9–11. Given this
disclosure, we find no error with the Board’s finding that
Anders teaches the claimed “investigative tools module”
and conclusion that the combination of Anders and Patti-
son renders the independent claims obvious.
    Securus next makes a similar argument that the
Board erred in finding that Anders alone discloses the
“logic of a call processing system” limitation of claim 21
because that argument was not advanced by Global in the
petition. As with Securus’s argument regarding claim 1,
we disagree with Securus’s characterization of the record.
Just as with claim 1, both Global in the petition and the
Board in the institution decision contended that Anders
alone teaches the limitation. Moreover, we find no error
18                 SECURUS TECHS., INC.   v. GLOB. TEL*LINK CORP.



in the Board’s analysis, at -1282 IPR Decision, 2016 WL
783411, at *9–10, and conclude that its decision that
claim 21 is unpatentable is supported by substantial
evidence.
             ii.      Claims 19, 25–26, 28, and 36
     Securus raises no separate challenge to the Board’s
conclusion that dependent claims 19, 25–26, 28, and 36
are unpatentable. Because we affirm the Board’s finding
of unpatentability as to the independent claims, we also
affirm the Board’s finding of unpatentability with respect
to these dependent claims.
                     iii. Claims 15 and 32
    Securus raises an additional challenge to the Board’s
analysis of dependent claims 15 and 32. Again Securus
argues that the Board incorrectly relied on an argument
not advanced by Global to reach the conclusion that these
two claims are unpatentable. As with Securus’s similar
arguments we rejected above, we also find this argument
meritless.
     In addition, Securus argues that, on the merits, An-
ders fails to satisfy the “communication timeline having
said one or more said event identifiers placed in associa-
tion therewith” limitation. We disagree. Substantial
evidence supports the Board’s finding that Anders, specif-
ically at col. 13, ll. 29–33, teaches or suggests to a person
of skill in the art the claimed communication timeline.
We therefore affirm the Board’s decision that claims 15
and 32 are unpatentable.
     C.   Claims 3, 8, 14, 17, 22–24, 27, 29–31, and 34–35
    As with the -1278 IPR Board Decision, Securus argues
that the Board erred in failing to provide any analysis
supporting its conclusion that claims 2–3, 7–8, 10–11, 13–
14, 16–18, 22–24, 27, 29–31, and 33–35 are unpatentable.
For the same reasons explained above with respect to the
SECURUS TECHS., INC.   v. GLOB. TEL*LINK CORP.              19



-1278 IPR Board Decision, we agree with Securus and
vacate and remand. Because we affirm the -1278 IPR
Board Decision that claims 2, 7, 10–11, 13, 16, 18, 33 are
unpatentable, we vacate and remand for further proceed-
ings only as to claims 3, 8, 14, 17, 22–24, 27, 29–31, and
34–35.
                   D.      Motions to Amend
     Securus finally appeals the denial of Securus’s mo-
tions to amend. We review the Board’s denial of Securus’s
motions to amend under the APA, 5 U.S.C. § 706. Mi-
crosoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1306 (Fed.
Cir. 2015). We set aside the Board’s action only if it is
“arbitrary, capricious, an abuse of discretion, or otherwise
not in accordance with law.” 5 U.S.C. § 706(2)(A). We
affirm.
     “A motion to amend may be denied where: (i) [t]he
amendment does not respond to a ground of unpatentabil-
ity involved in the trial . . . .” 37 C.F.R. § 42.121(a)(2). In
denying Securus’s motions to amend, the Board first
noted that Securus admitted numerous times in its mo-
tions that the proposed changes “are not made in response
to a ground of unpatentability in the [inter partes re-
view].” See -1278 IPR Board Decision, 2016 WL 783391,
at *16; -1282 IPR Board Decision, 2016 WL 783411, at
*17. Moreover, the Board found that even though Se-
curus later argued that its admission was merely a typo-
graphical error carried through both motions, Securus
nevertheless failed to establish how the proposed amend-
ments were in response to a ground of unpatentability.
We find no error in the Board’s analysis. Even if Se-
curus’s repeated admission was merely a typographical
error—made 14 times in the two motions—we agree with
the Board that its motions elsewhere fail to demonstrate
compliance with 37 C.F.R. § 42.121(a)(2)(i). We therefore
affirm the Board denial of Securus’s motions to amend.
20               SECURUS TECHS., INC.   v. GLOB. TEL*LINK CORP.



                        CONCLUSION
     We have considered the remainder of Securus’s argu-
ments and find them to be unpersuasive. For the forego-
ing reasons, we affirm the -1278 IPR Board Decision that
claims 1–2, 4–7, 9–13, 16, 18, 20–21, and 33 are un-
patentable. We also affirm the -1282 IPR Board Decision
that claims 15, 19, 25–26, 28, 32, and 36 are unpatenta-
ble. We dismiss as moot Securus’s appeal of the -1278
IPR Board Decision as to claims 15, 19, 25–26, 28, 32, and
36 because we affirm the -1282 IPR Board Decision that
they are unpatentable. Likewise, we dismiss as moot
Securus’s appeal of the -1282 IPR Board Decision as to
claims 1–2, 4–7, 9–13, 16, 18, 20–21, and 33 because we
affirm the -1278 IPR Board Decision that they are un-
patentable. We vacate and remand as to claims 3, 8, 14,
17, 22–24, 27, 29–31, and 34–35 in both IPRs. We also
affirm the Board’s denial of Securus’s motion to amend in
both IPRs.
  AFFIRMED-IN-PART, DISMISSED-IN-PART,
 VACATED-IN-PART, AND REMANDED IN BOTH
                APPEALS
                           COSTS
     No costs.
