CaptionCall, L.L.C.v.Ultratec, Inc.Download PDFPatent Trial and Appeal BoardFeb 12, 201511061682 (P.T.A.B. Feb. 12, 2015) Copy Citation Trials@uspto.gov Paper 7 571-272-7822 Entered: February 12, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ CAPTIONCALL, L.L.C., Petitioner, v. ULTRATEC, INC., Patent Owner. ____________ Case IPR2014-01287 Patent 7,660,398 B2 ____________ Before WILLIAM V. SAINDON, BARBARA A. BENOIT, and LYNNE E. PETTIGREW, Administrative Patent Judges. PETTIGREW, Administrative Patent Judge. DECISION Denying Institution of Inter Partes Review 37 C.F.R. § 42.108 I. INTRODUCTION Petitioner, CaptionCall, L.L.C., filed a Petition for inter partes review of claims 11–13 of U.S. Patent No. 7,660,398 B2 (Ex. 1001, “the ’398 patent”). Paper 1 (“Pet.”). Patent Owner, Ultratec, Inc., filed a IPR2014-01287 Patent 7,660,398 B2 2 Preliminary Response. Paper 6 (“Prelim. Resp.”). Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Upon consideration of the Petition and the Preliminary Response, we conclude the information presented does not show there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of claims 11–13 of the ’398 patent. A. Related Matters The parties indicate that the ’398 patent is being asserted in Ultratec, Inc. v. Sorenson Communications, Inc., No. 3:14-CV-00066 (W.D. Wis.). Pet. 4; Paper 5, 2 (Patent Owner’s Mandatory Notice). B. The ’398 Patent The ’398 patent relates to a captioned telephone service that provides assistance to a user who is hard of hearing. Ex. 1001, Abstract. Using a captioned telephone device, an assisted user receives normal voice from a remote party, as well as a text transcription of the words spoken by the remote party. Id. at 1:43–47. The ’398 patent describes a two-line captioned telephone service in which an assisted user’s captioned telephone device connects via a first telephone line to a remote user and via a second telephone line to a relay that provides captioning for a conversation. Id. at 1:66–2:4. IPR2014-01287 Patent 7,660,398 B2 3 Figure 2 of the ’398 patent is reproduced below: Figure 2 is a schematic diagram of captioned telephone device 100 with an integrated telephone for the assisted user. Id. at 3:8–12. The captioned telephone device connects to a remote party via telephone line 121 and to a relay center via telephone line 102. Id. at 3:23–26, 3:43–47. The captioned telephone device passes the voice signal from telephone line 121 to the speaker in handset 120 for the assisted user. Id. at 3:43–45. It also passes the voice signal to codec 118 to be digitized and eventually sent to the relay over telephone line 102. Id. at 3:35–37. “[E]cho control circuit 116 is used to remove the voice of the assisted user at . . . handset 120 from the voices of the other party.” Id. at 3:37–39. The remaining components compress, format, and send the signal to the relay over telephone line 102. Id. at 3:39– 43. The relay transcribes the remote user’s voice to text, which is sent to the IPR2014-01287 Patent 7,660,398 B2 4 captioned telephone device via telephone line 102 and digitized, formatted, and transferred to visually readable display 112. Id. at 3:23–35. The ’398 patent compares the use of echo cancellation in two-line captioned telephone service with its use in one-line captioned telephone service, in which the relay is interposed between the captioned telephone device and the remote user. Id. at 7:44–8:20. For one-line captioned telephone service, echo cancellation at the relay suppresses echo back to the assisted user and removes or cancels the voice of the assisted user from the audio received at the relay so the call assistant hears only the voice of the remote user. Id. at 7:45–56. For two-line captioned telephone service, “the arrangement of the echo cancellation is significantly different.” Id. at 7:58–59. The echo cancellation circuitry is located in the captioned telephone device and separates the local voice of the assisted user from any other voices received from the first telephone line. Id. at 7:59–64. In this arrangement, “[t]he echo cancellation is located between the first telephone line[] [to the remote user] and the handset microphone of the assisted user, so that the second telephone line does not transmit to the relay any of the voice of the assisted user.” Id. at 7:66–8:3. “This makes the job of the call assistant easier, since the call assistant captions the voice he or she hears,” i.e., only the voice of the remote user. Id. at 8:5–7. C. Illustrative Claim Claim 11 is independent, and claims 12 and 13 each depend directly from claim 11. Claim 11 is illustrative of the claimed subject matter: 11. A method of operating a captioned telephone call in which an assisted user is connected by a captioned telephone device which is connected both to one telephone line to a IPR2014-01287 Patent 7,660,398 B2 5 remote user and a second telephone line to a relay providing captioning for a conversation, the method comprising the steps of during a telephone conversation, the captioned telephone device receiving captioning for spoken words of the remote user from the relay and displaying the words in a visual display for the assisted user; and during the telephone conversation, the captioned telephone device using echo cancellation to cancel the voice of the assisted user from the second telephone line so that the relay does not hear the voice of the assisted user, so the relay can caption all the words on the second telephone line without causing confusion to the assisted user. Ex. 1001, 11:12–12:8 (emphasis added). D. Asserted Grounds of Unpatentability Petitioner contends that claims 11–13 of the ’398 patent are unpatentable based on the following specific grounds (Pet. 4, 18–60): References Basis Challenged Claims Engelke ’685, 1 Rao, 2 and Engelke ’910 3 35 U.S.C. § 103(a) 11–13 Engelke ’685, Vaseghi, 4 and Engelke ’910 35 U.S.C. § 103(a) 11–13 1 U.S. Patent Application Publ’n 2002/0085685 A1 (Ex. 1004, “Engelke ’685”). The parties refer to this reference as “the ’685 Publication.” 2 U.S. Patent No. 6,141,415, issued Oct. 31, 2000 (Ex. 1002, “Rao”). 3 U.S. Patent No. 6,504,910 B1, issued Jan. 7, 2003 (Ex. 1005, “Engelke ’910”). The parties refer to this reference as “the ’910 Patent.” 4 SAEED V. VASEGHI, ADVANCED DIGITAL SIGNAL PROCESSING AND NOISE REDUCTION 396–415 (2d ed. 2000) (Ex. 1006, “Vaseghi”). IPR2014-01287 Patent 7,660,398 B2 6 II. DISCUSSION A. Claim Construction In an inter partes review, we construe claim terms in an unexpired patent according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, No. 2014-1301, slip op. at 11–19 (Fed. Cir. Feb. 4, 2015). For purposes of this decision, we determine that no claim terms require express construction. B. Asserted Prior Art 1. Engelke ’685 Engelke ’685 describes both one-line and two-line captioned telephone service. Ex. 1004 ¶¶ 37–39. In one-line captioned telephone service, a hearing user communicates through a telephone line with a relay, which converts the hearing user’s voice to text and transmits both the text and the hearing user’s voice to an assisted user’s captioned telephone device. Id. ¶ 37. In two-line captioned telephone service, the assisted user has two telephone lines, as shown in Figure 5: Figure 5 illustrates two-line captioned telephone service, in which telephone 62 of the hearing user and telephone 70 of the assisted user are connected by telephone line 64. Id. ¶ 38. The voice of the hearing user is transferred IPR2014-01287 Patent 7,660,398 B2 7 through captioned telephone device 74 to telephone line 78 to be transmitted to relay 76. Id. Relay 76 converts the voice of the hearing user to text, which is transmitted via telephone 78 to captioned telephone device 74 for display to the assisted user. Id. ¶ 39. Engelke ’685 also describes a particular type of relay, referred to as a “re-voicing relay.” Id. ¶¶ 25–35. In a re-voicing relay, a call assistant uses a headset with earphones and a microphone to listen to the hearing user’s voice and repeat the words spoken by the hearing user. Id. ¶ 25. The call assistant’s headset connects to a computer that has voice recognition software for translating the call assistant’s spoken words into text. Id. ¶ 26. The headset’s earphones may have noise cancellation capability “to cancel the sounds of the call assistant’s own voice” so the call assistant “would be less likely to be distracted by the words that he or she has spoken.” Id. ¶ 29. 2. Vaseghi Vaseghi generally describes the use of echo cancellation in communication systems to address two types of echo—acoustic echo and telephone line echo. Ex. 1006, 5. Acoustic echo results from a feedback path between the speaker and microphone in a mobile phone, hands-free phone, teleconference system, or hearing aid system. Id. Line echo results from an impedance mismatch at telephone exchange hybrids where a subscriber’s 2-wire line is connected to a 4-wire line. Id. Vaseghi describes various mechanisms for echo suppression or cancellation, including an adaptive echo cancellation system that cancels the echo of a user’s voice from the signal received by the user. Id. at 10–11, Fig. 14.5. IPR2014-01287 Patent 7,660,398 B2 8 3. Rao Rao describes a speaker-phone system that includes echo cancellation at each end of the system. Ex. 1002, 1:39–41, 5:57–6:3. In particular, Rao describes an echo cancellation unit in the speaker-phone of a “near-end” user. Id. at 5:65–6:1, 6:38–57, Fig. 2. Figure 2 of Rao is reproduced below: As shown in Figure 2, echo cancellation unit 51 includes line echo cancellation circuit 63 “that samples a portion of the output signal from the near-end speech analysis and modification circuit 56, weights it, and subtracts it from the incoming signal from amplifier 69 . . . before the incoming signal is applied to the far-end speech analysis and modification circuit 55.” Id. at 6:50–57. The elements in echo cancellation unit 51 may be implemented by a digital signal processor. Id. at 6:65–67. 4. Engelke ’910 Engelke ’910 describes a one-line captioned telephone system in which a relay digitizes a hearing user’s voice, creates digital text corresponding to the hearing user’s spoken words, combines the digitized voice and digital text into digital data packets, and transmits the digital data IPR2014-01287 Patent 7,660,398 B2 9 packets to an assisted user’s station. Ex. 1005, 2:33–48, 3:14–4:25. Figure 1 of Engelke ’910 is reproduced below: Figure 1 illustrates a captioned telephone system with a relay that digitizes a hearing user’s voice from telephone 12 at codec 18. Id. at 3:15–32. The output digital signal from codec 18 is connected to line echo cancellation 20, which is “a circuit or software designed to cancel echo on the telephone line.” Id. at 3:33–35. C. Asserted Obviousness Based on Engelke ’685, Rao, and Engelke ’910 Petitioner contends that claims 11–13 are unpatentable for obviousness over Engelke ’685, Rao, and Engelke ’910. Pet. 30–47. To support its contentions, Petitioner provides analysis and claim charts, and IPR2014-01287 Patent 7,660,398 B2 10 relies on the Declaration of Mr. Benedict Occhiogrosso. Id. (citing Ex. 1010). Independent claim 11 is directed to a method of operating a captioned call using two-line captioned telephone service, in which a captioned telephone device is “connected both to one telephone line to a remote user and a second telephone line to a relay.” Ex. 1001, 11:12–16. In the first step of the recited method, the captioned telephone device receives captioning for the spoken words of the remote user from the relay and displays the words for the assisted user. Id. at 11:18–12:2. Petitioner asserts that Engelke ’685 and Engelke ’910 each teach this limitation. See Pet. 42– 43. In the second step, “the captioned telephone device us[es] echo cancellation to cancel the voice of the assisted user from the second telephone line so that the relay does not hear the voice of the assisted user.” Ex. 1001, 12:3–6. Petitioner relies on a combination of Engelke ’685, Rao, and Engelke ’910 for teaching this limitation. Pet. 40, 43–46. Petitioner also contends that one of ordinary skill in the art would have been motivated to combine the three references. Pet. 30–40. Patent Owner argues that the Petition lacks the reasoning necessary to combine the cited references to support a conclusion of obviousness. Prelim. Resp. 1. Patent Owner further submits that Petitioner’s arguments are cursory and based on conclusory statements. Id. at 2. Ultimately, Patent Owner argues, Petitioner does not present a rationale to combine the references “beyond an impermissible hindsight reconstruction supported only by the roadmap provided by the ’398 [p]atent.” Id. at 5 (citing Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1377–78 (Fed. Cir. 2012)). IPR2014-01287 Patent 7,660,398 B2 11 Having reviewed both parties’ arguments, we are not persuaded that Petitioner has provided sufficient rationale for combining the references in the manner asserted by Petitioner to arrive at the claimed invention. Among the cited references, only Engelke ’685 teaches two-line captioned telephone service, such as that recited in claim 11. See Ex. 1004, ¶¶ 38–39, Fig. 5. Engelke ’685, however, does not teach the use of echo cancellation to cancel the voice of the assisted user from the second telephone line in two-line captioned telephone service, or to cancel any user’s voice from any telephone line. It only teaches noise attenuation or cancellation in the call assistant’s headset at the relay to reduce or cancel the call assistant’s own voice from the sounds that the call assistant hears. Id. ¶ 29. Petitioner contends that one of ordinary skill in the art would have recognized that switching from a one-line captioned telephone system to a two-line captioned telephone system would require consideration of certain design changes. Pet. 32–33 (citing Ex. 1010 ¶ 64). One such design change, according to Petitioner, would be implementation of line echo cancellation because one of ordinary skill would have recognized “the known need for line echo cancellation in ‘direct’ communications” between the assisted user’s device and the hearing user’s device. Id. at 33 (citing Ex. 1010 ¶ 65). Petitioner argues that a person of ordinary skill in the art then would be motivated to look to a reference such as Rao for details on how to implement line echo cancellation in a telephone. Id. at 33–34. But neither the Petition nor the cited paragraphs of the Occhiogrosso Declaration explain sufficiently or point to adequate evidence showing why an ordinarily skilled artisan, even though familiar with the problem of line echo in telephony systems in IPR2014-01287 Patent 7,660,398 B2 12 general, would recognize line echo as a problem in the two-line captioned telephone system taught by Engelke ’685. See id.; Ex. 1010 ¶¶ 64–65. Petitioner also relies on Engelke ’910, which teaches the use of line echo cancellation in one-line captioned telephone service in which the hearing user’s voice is digitized and, at the relay, combined with digital text of the hearing user’s voice into data packets, which are transmitted to the assisted user. Pet. 36, Ex. 1005, 3:15–35, Fig. 1. Citing only a conclusory statement from the Occhiogrosso Declaration, Petitioner contends that line echo cancellation in Engelke ’910 prevents the assisted user from hearing the echo of the assisted user’s own voice. Pet. 36–37 (citing Ex. 1010 ¶ 71). Then, citing additional unsupported testimony from Mr. Occhiogrosso, Petitioner submits that, based on Engelke ’910, a person of ordinary skill in the art would have recognized that echo cancellation in a two-line captioned telephone system should be located between the hearing user and assisted user to prevent the user from hearing his own echo and, based on Rao, could be located in the assisted user’s telephone. Id. at 37 (citing Ex. 1010 ¶¶ 72– 73). On this record, we are not persuaded that Petitioner’s unsupported arguments show sufficiently that any teachings regarding echo cancellation in Engelke ’910 would be applied in a two-line captioned telephone system in the manner set forth by Petitioner. Furthermore, claim 11 recites that echo cancellation is used in the captioned telephone device “to cancel the voice of the assisted user from the second telephone line so that the relay does not hear the voice of the assisted user.” None of the references teaches using echo cancellation to prevent the assisted user’s voice from reaching the relay. To the extent echo cancellation is explained in the references, it is used to prevent a user from IPR2014-01287 Patent 7,660,398 B2 13 hearing the echo of his or her own voice. See id. at 35 (citing Rao). Petitioner’s contention that a person of ordinary skill in the art would implement echo cancellation in such a manner that the call assistant would not hear the assisted user’s voice relies only on a conclusory statement from Mr. Occhiogrosso that lacks evidentiary support. See id. at 39, Ex. 1010 ¶ 76. Petitioner submits that a person of ordinary skill in the art would have been motivated to combine the known elements of Engelke ’685, Rao, and Engelke ’910 “according to known methods to yield predictable results.” Pet. 39. On this record, however, Petitioner has not presented a convincing rationale as to why one of ordinary skill in the art would have used echo cancellation to cancel the voice of the assisted user from the second telephone line so that the relay does not hear the voice of the assisted user, as recited in claim 11. Instead, as Patent Owner contends, Petitioner appears to have engaged in impermissible hindsight reconstruction in combining the teachings of the references to arrive at the claimed invention. Accordingly, the information presented does not show a reasonable likelihood that Petitioner would prevail in establishing that claims 11–13 are unpatentable for obviousness over Engelke ’685, Rao, and Engelke ’910. D. Asserted Obviousness Based on Engelke ’685, Vaseghi, and Engelke ’910 Petitioner contends that claims 11–13 are unpatentable for obviousness over Engelke ’685, Vaseghi, and Engelke ’910. Pet. 48–60. Petitioner’s arguments with respect to this combination are similar to those made with respect to Engelke ’685, Rao, and Engelke ’910, but they rely on Vaseghi rather than Rao for teaching line echo cancellation generally. Id. IPR2014-01287 Patent 7,660,398 B2 14 Although Petitioner asserts that Vaseghi and Rao “each disclose different details of line echo cancellation that might not be explicitly described within the other,” Petitioner does not explain how any differences have any bearing on the obviousness analysis. Id. at 48–49. Thus, for reasons similar to those discussed above, the information presented does not show a reasonable likelihood that Petitioner would prevail in establishing that claims 11–13 are unpatentable for obviousness over Engelke ’685, Vaseghi, and Engelke ’910. III. CONCLUSION For the foregoing reasons, we determine that the information presented does not establish a reasonable likelihood that Petitioner would prevail in showing that claims 11–13 of the ’398 patent are unpatentable. IV. ORDER Accordingly, it is: ORDERED that the Petition is denied and no trial is instituted. IPR2014-01287 Patent 7,660,398 B2 15 FOR PETITIONER: Brian Oaks Harper Batts Lisa Kelly Baker Botts L.L.P. brian.oaks@bakerbotts.com harper.batts@bakerbotts.com lisa.kelly@bakerbotts.com FOR PATENT OWNER: Michael Jaskolski Michael J. Curley Martha Jahn Snyder Nikia L. Gray Quarles & Brady, LLP michael.jaskolski@quarles.com michael.curley@quarles.com martha.snyder@quarles.com nikia.gray@quarles.com Copy with citationCopy as parenthetical citation