CaptionCall, L.L.C.v.Ultratec, Inc.

Patent Trial and Appeal Board

Dec 1, 2015

10634965 (P.T.A.B. Dec. 1, 2015)

Trials@uspto.gov Paper 59
Tel: 571-272-7822 Entered: December 1, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
CAPTIONCALL, LLC,
Petitioner,

v.

ULTRATEC, INC.,
Patent Owner.
____________

Case IPR2013-00550
Patent 7,003,082 B2

Before WILLIAM V. SAINDON, BARBARA A. BENOIT, and
LYNNE E. PETTIGREW, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION
Patent Owner’s Request for Rehearing
37 C.F.R. § 42.71

IPR2013-00550
Patent 7,003,082 B2

2

I. INTRODUCTION
CaptionCall, LLC (“Petitioner”) filed a Petition requesting an inter
partes review of claim 1 of U.S. Patent No. 7,003,082 (Ex. 1021, “the ’082
patent”). Paper 1 (“Pet.”). In our Decision Instituting Inter Partes Review,
we granted review of claim 1. Paper 6 (“Inst. Dec.”). In our Final Written
Decision, we determined that Petitioner had shown, by a preponderance of
the evidence, that claim 1 was unpatentable. Paper 57 (“Final Dec.” or
“Final Decision”). Patent Owner requests rehearing of the Final Decision.
Paper 58 (“Req. Reh’g” or “Request”). Having considered Patent Owner’s
Request, we decline to modify our Final Decision.
A. Applicable Standard of Review
In inter partes review, the petitioner has the burden of showing
unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e).
The standard of review for rehearing requests is set forth in 37 C.F.R.
§ 42.71(d), which states:
The burden of showing a decision should be
modified lies with the party challenging the
decision. The request must specifically identify all
matters the party believes the Board
misapprehended or overlooked, and the place
where each matter was previously addressed in a
motion, an opposition, or a reply.

B. Analysis
Petitioner alleges that we: (1) “misapprehend[ed] the law of
anticipation and misapplie[d] [our] construction of ‘captioned telephone
device’” (Req. Reh’g 1–11); (2) exceeded our authority by issuing a Final
IPR2013-00550
Patent 7,003,082 B2

3

Written Decision with less than a full panel (id. at 11–13); and (3)
overlooked regulations requiring a written record (id. at 13–15). We address
these allegations in turn.
1. Anticipation
Patent Owner alleges that we misinterpreted a footnote in Net
MoneyIn, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 n.5 (Fed. Cir. 2008),
“for the proposition that anticipation can be based on combining
characteristics of various distinct embodiments in a prior art reference.”
Req. Reh’g 1 (citing to Final Dec. 20). Patent Owner’s argument
mischaracterizes our Final Decision. We pointed to Net MoneyIn in support
of our finding that McLaughlin “is describing options for a single system,
not separate embodiments.” Final Dec. 20 (emphasis added).
Further, Patent Owner overstates the importance of the word
“embodiment”; the anticipation inquiry is whether there is “a single prior art
disclosure of all elements of a claimed invention arranged as in the claim,”
i.e., the word “embodiment” is not itself governing. Net MoneyIn, 545 F.3d
at 1359. In this case, Patent Owner has attempted repeatedly to get around
McLaughlin’s anticipating disclosure by arguing that the various features are
in different “embodiments,” essentially because they are under separate
headings. But Patent Owner fails to address convincingly Petitioner’s
assertions, backed by convincing testimony, that these features are all part of
the same single prior art disclosure and arranged as claimed. In our Final
Decision, we reviewed the facts and found that Petitioner had established
that all of the elements of the claim were found in a single system in
McLaughlin. See generally Final Dec. 15–24.
IPR2013-00550
Patent 7,003,082 B2

4

Patent Owner next alleges that we “explained that a captioned
telephone device is a single device that has the features in the body of the
claim.” Req. Reh’g 2. Patent Owner mischaracterizes our Final Decision;
we made no such statement or implication regarding a “single device.” Our
Final Decision already explains why a construction including the phrase
“single device” is not commensurate with the broadest reasonable
interpretation. See Final Dec. 7–9 (setting forth our construction of the
“captioned telephone device”). Specifically, we pointed out that the
specification of the ’082 patent instructed one of ordinary skill in the art that
“the captured telephone device displays text but need not output any audio
signals,” or, in other words, there was no requirement for all features of the
claims to be found in one housing or a “single device.” Final Dec. 9 (citing,
e.g., an example in the ’082 specification where the speaker/microphone
portion (telephone) was depicted as a separate device from the text display
portion); Ex. 1021, 9:20–32, Figs. 4–6.
Patent Owner then alleges that we erred because McLaughlin’s
system “do[es] not employ devices that contain ‘circuitry to support
connection to two telephone lines.’” Req. Reh’g 3–7. In our Final Decision,
we discussed one way that Petitioner has shown that the various elements of
the claim were described in McLaughlin (see Final Dec. 15–24), and we
direct Patent Owner to pages 20–21, where we specifically address two
telephone lines. The remainder of Patent Owner’s arguments are either a
rehash of prior arguments or are new, waived, and not properly before us.
1

1
It is Patent Owner’s burden to identify where it previously argued each
matter it wishes to be reheard. 37 C.F.R. § 42.72(d). Patent Owner fails to
do so.
IPR2013-00550
Patent 7,003,082 B2

5

Patent Owner lastly alleges that McLaughlin lacks a microphone and
speaker in a single device. Req. Reh’g 7–11. The claim does not require a
“single device,” as we discussed above and determined in our Final
Decision, where we addressed the limitations actually claimed. See, e.g.,
Final Dec. 18–20.
Reviewing Patent Owner’s Request, we determine that Patent Owner
has failed to identify any matters we overlooked or misapprehended on the
topic of anticipation.
2. Panel Composition
Patent Owner asserts we exceeded our authority by issuing a Final
Written Decision “with less than a full panel.” Req. 11–13. Panel
composition for an inter partes review is specified in 35 U.S.C. § 6(c),
which states “[e]ach . . . inter partes review shall be heard by at least 3
members of the Patent Trial and Appeal Board, who shall be designated by
the Director.” The Director’s authority under 35 U.S.C. § 6 to designate
panels has been delegated to the Chief Judge. See Patent Trial and Appeal
Board Standard Operating Procedure 1 (Rev. 14) (May 8, 2015) (“PTAB
SOP 1”).
As acknowledged by Patent Owner (Req. 11–12), the Final Decision
was decided by three administrative patent judges, who are members of the
Board. See 35 U.S.C. § 6(a) (indicating that administrative patent judges,
along with various members of the United States Patent and Trademark
Office, constitute the Patent Trial and Appeal Board). The three
administrative patent judges were designated by the Chief Judge according
to PTAB SOP 1, titled “Assignment of Judges to Merits Panels,
Interlocutory Panels, and Expanded Panels.” The Board, therefore,
IPR2013-00550
Patent 7,003,082 B2

6

complied with the statutory requirements for panel composition.
Accordingly, we did not issue the Final Decision with less than a “full
panel,” as Patent Owner contends.
Moreover, the Chief Judge has discretion to designate judges to
decide inter partes reviews. See PTAB SOP 1 at 2 (§ II.D) (“In general, the
Chief Judge will designate a judge or judges, as appropriate, for all matters
for AIA reviews.”); see also AOL Inc. v. Coho Licensing LLC, Case
IPR2014-00771, slip op. at 2 (PTAB Mar. 24, 2015) (Paper 12)
(informative) (setting forth that the designation of panel members is within
the sole authority of the Chief Judge, as delegated by the Director). Patent
Owner’s Request, therefore, does not show the composition of the panel that
issued the Final Decision was arbitrary, capricious, or an abuse of discretion
by the Board.
3. Written Record
On November 4, 2014, after discovery and briefing were complete
and a month before oral hearing, we held a conference call in which we
denied Patent Owner’s request for authorization for a late submission of
additional evidence. See 37 C.F.R. § 42.20(b) (“A motion will not be
entered without Board authorization”); see also 37 C.F.R. § 42.123(b)
(explaining that the late submission of supplemental information must be in
the interests of justice). Patent Owner argues that the record is incomplete
because we did not issue an order denying its motion. Req. Reh’g 13–14.
Patent Owner’s mischaracterizes the events in this proceeding because no
such motion was denied; we denied Patent Owner’s request for
authorization to submit evidence and, as such, no order denying its motion
IPR2013-00550
Patent 7,003,082 B2

7

was necessary.
2,3
To the extent Patent Owner wishes its denial of
authorization to file late evidence to be further memorialized, this paper
serves such purpose.
4. Request for Expanded Panel
Patent Owner suggests an expanded panel is warranted to decide the
Request in view of the panel composition and various allegations that we
misapprehended the law. Req. 1. For the reasons given, Patent Owner does
not persuade us that we misapprehended the law or the panel of three judges
was deficient. Further, the Board’s procedures provide examples of reasons
for expanding a panel, none of which apply here. PTAB SOP 1 at 3
(§ III.A). For example, an expanded panel may be appropriate when
“serious questions have been raised about the continuing viability of an
apparently applicable precedential decision of the Board, or a panel of the
Board renders a decision that conflicts with a precedential decision of the
Board or an authoritative decision of the Board’s reviewing courts.” Id.
Patent Owner’s Request does not show a conflict or other reason that weighs
in favor of panel expansion. Even so, the panel informed the Chief Judge,
who has authority to expand a panel, of Patent Owner’s request, and the
Chief Judge declined to expand the panel. See PTAB SOP 1 at 4 (§ III.C).

2
Patent Owner also mischaracterizes its request for authorization for a late
submission of supplemental information as “observations,” but observations
only apply to testimony taken during this proceeding. See Paper 7, 4–5
(Scheduling Order, addressing the proper utilization of observations on
cross-examination).
3
Patent Owner also argues that we excluded the evidence it proposed to
submit (Req. Reh’g 15), but no such evidence could be excluded from the
record because it was never entered.
IPR2013-00550
Patent 7,003,082 B2

8

(“The Chief Judge will determine when an expanded panel is to be
designated.”); see also Apple Inc. v. Rensselaer Polytechnic Inst.,
Case IPR2014-00319, slip op. at 2 n.1 (PTAB Dec. 12, 2014) (Paper 20)
(indicating only the Chief Judge, acting on behalf of the Director, may act to
expand a panel and panels do not authorize panel expansion).
C. Conclusion
Having reviewed Petitioner’s Request, we are not persuaded we
misapprehended or overlooked any argument previously presented.
II. ORDER
It is hereby ORDERED that Petitioner’s Request for Rehearing is
denied.

IPR2013-00550
Patent 7,003,082 B2

9

IPR2013-00550
Patent 7,003,082 B2

10

PETITIONER:

Brian W. Oaks
Bryant C. Boren Jr.
Harper S. Batts
Adam F. Smoot
Joseph Gray
BAKER BOTTS L.L.P.
brian.oaks@bakerbotts.com
bryant.c.boren@bakerbotts.com
harper.batts@bakerbotts.com
adam.smoot@bakerbotts.com
joseph.gray@bakerbotts.com

PATENT OWNER:

Michael Jaskolski
Martha Snyder
Nikia L. Gray
Michael J. Curley
QUARLES & BRADY LLP
michael.jaskolski@quarles.com
martha.snyder@quarles.com
nikia.gray@quarles.com
Michael.curley@quarles.com