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

Patent Trial and Appeal Board

Dec 1, 2015

09938194 (P.T.A.B. Dec. 1, 2015)

Trials@uspto.gov Paper 73
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 IPR2013-00549
Patent 6,603,835 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

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I. INTRODUCTION
CaptionCall, LLC (“Petitioner”) filed a Petition requesting an inter
partes review of claims 1–8 of U.S. Patent No. 6,603,835 B2 (Ex. 1001, “the
’835 patent”). Paper 1 (“Pet.”). In our Decision Instituting Inter Partes
Review, we granted review of claims 1–5 and 7. Paper 7 (“Inst. Dec.”).
1
In
our Final Written Decision, we determined that Petitioner had shown, by a
preponderance of the evidence, that claims 1–5 and 7 were unpatentable.
Paper 71 (“Final Dec.” or “Final Decision”). Patent Owner requests a
rehearing of the Final Decision. Paper 72 (“Req. Reh’g” or “Request”).
Having considered Patent Owner’s Request, we modify our Final Decision
as outlined below, but decline to modify our conclusion that Petitioner has
shown that claims 1–5 and 7 are unpatentable.
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.

1
We later instituted review of claims 6 and 8 in IPR2014-00780.
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B. Analysis
Petitioner alleges that we: (1) misapprehended the law of obviousness
and improperly discounted evidence of secondary considerations (Req.
Reh’g 1–5); (2) misapprehended administrative law in disregarding evidence
of nexus and secondary considerations (id. at 5–8); (3) misapprehended
Liebermann’s discussion of a party call (id. at 10–14); (4) misapprehended
Liebermann’s disclosure of converting voice signals (id. at 14–15);
(5) misapprehended the content of Liebermann in our background discussion
of the reference (id. at 15); and (6) improperly issued our Final Decision
with a different panel of judges than those that instituted trial (id. at 8–10).
We address these allegations in turn.
1. Law of Obviousness
Patent Owner alleges that we “first determine[d] obviousness and then
analyze[d] secondary considerations.” Req. Reh’g 1–2. This is a
mischaracterization of our Final Decision. In our Final Decision, we agreed
with Petitioner’s statement that “it would have been obvious ‘to configure
the two-line device disclosed in Liebermann to provide both voice and text
to a user who, as described in Engelke ’405, had attenuated but functional
hearing.’” Final Dec. 25 (quoting Pet. 39). This was not a determination
that any claim would have been obvious, but rather our indication that we
were persuaded by Petitioner’s reason for combination. Confirming this, our
next sentence was “[a]s such, Petitioner has established a reason with
rational underpinnings for combining the teachings [of the prior art] in the
manner proposed.” Our analysis then discussed, over five pages, Patent
Owner’s evidence of secondary considerations. Final Dec. 28–32. Only
after that did we discuss the ultimate conclusion of obviousness of the
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claimed subject matter. Id. at 32. Accordingly, Patent Owner’s argument is
premised on a mischaracterization of the Final Decision.
Patent Owner then argues that “there was no finding by the Board that
Liebermann by itself taught all limitations of claims 1–5 or 7 relating to the
two-line captioned telephone service feature.” Req. Reh’g. 3–5 (emphasis
omitted). It is well settled that obviousness need not be established by a
single reference; likewise, there is no requirement for Liebermann to teach
all aspects of the claims. We were persuaded that Petitioner had shown by a
preponderance of the evidence that Liebermann discloses the two-line
feature insofar as it teaches separate connections between the hearing user
and assisted user and between the assisted user and the relay. See, e.g., Final
Dec. 17–19 (discussing how Liebermann shows two lines). Our statement
that Liebermann teaches that two-line service was known in the prior art is
based on this understanding. See Final Decision 32 (“as to two-line service,
Liebermann discloses this feature”). Whether Liebermann discloses two-
line captioned telephone service is a strawman argument and not a
component of Petitioner’s asserted ground nor a basis for us finding such
ground persuasive.
In view of the above, Patent Owner’s Request does not persuade us
that we misapprehended or overlooked any matter previously raised
regarding this topic.
2. Administrative Law
In our Final Decision, we considered the testimony of Mr. Ludwick
regarding secondary considerations, but found it to be unsupported by facts
or data and determined that “his testimony has little probative value.” Final
Dec. 30–31. Patent Owner complains that we improperly disregarded the
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testimony of its declarant here because “[t]here is no rule requiring
documentary, rather than testimonial, evidence of how a system operates.”
Req. Reh’g 5–6. We cited proper authority in the Final Decision for why we
gave Mr. Ludwick’s testimony little probative value.
2
Final Dec. 31 (citing
In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) and
Fed. R. Evid. 702); see also 37 C.F.R. § 42.65 (“testimony that does not
disclose the underlying facts or data on which the opinion is based is entitled
to little or no weight”).
Patent Owner next alleges that its Response “contained arguments
identifying strong objective indicia of non-obviousness” and “set[] out its
arguments concerning secondary considerations and explaining the
relevance of Patent Owner’s factual support.” Req. Reh’g 6–7. Patent
Owner’s “arguments” and “expla[nation],” however, are three paragraphs
that contain virtually no substance. The first paragraph is legal boilerplate.
PO Resp. 40–41. The third paragraph is a generic conclusion. Id. at 42.
The second paragraph is, at best, a list of common things that could be raised
during a secondary considerations discussion, but it contains no meaningful
argument. Id. at 41–42. Patent Owner’s only citations are to three exhibits
in their entirety, with no meaningful discussion. Id. at 41 (citing Exs. 2003,
2004, 2007). Such a course of action by Patent Owner does not comply with
our Rules, which prohibit incorporation by reference and require specific
arguments to be made in the briefs. See, e.g., 37 C.F.R. § 42.23 (requiring a
patent owner’s response to state the relief requested in the response); id.

2
We did not “dismiss” or “disregard” Mr. Ludwick’s testimony, as Patent
Owner complains; we gave it little probative value. Final Dec. 31 (“Mr.
Ludwick’s conclusory assertions do not provide a sufficient connection
between the objective evidence and the claimed invention”).
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§ 42.120 (designating a patent owner response as an opposition subject to
rule 42.23); id. § 42.6(a)(3) (prohibiting incorporation by reference). Patent
Owner’s Response essentially invited us to read other documents and then to
step into Patent Owner’s shoes. We declined to do so in our Decision. Final
Dec. 30 (“Patent Owner’s Response contains no substantive arguments. . . .
Thus, Patent Owner’s broad contentions regarding secondary considerations
in its Patent Owner Response do not demonstrate nonobviousness”). We
could not have overlooked arguments not made.
Lastly, Patent Owner complains that we “did not apply such a
rigorous standard to Petitioner, and relied on arguments presented only in
Petitioner’s affidavits and not even cited.” Req. Reh’g 8. In the examples
provided by Patent Owner, however, we cited specific portions of
Petitioner’s evidence as further support for detailed arguments already made
by Petitioner with citations to evidence.
In contrast, Patent Owner cited to no paragraphs or portions of the
evidence it sought to rely upon, and developed no cogent arguments. PO
Resp. 40–42. Instead, it listed the names of common arguments made in
nearly all secondary considerations analyses. See, e.g., id. at 41 (“Submitted
with the present Response are declarations . . . establishing the substantial
praise for the inventions . . . , the long-felt but unresolved need . . . , and the
failure of others”). We require the parties’ papers to contain more than mere
pleadings. 37 C.F.R. § 42.22(a)(2) (requiring papers to provide “A full
statement of the reasons for the relief requested, including a detailed
explanation of the significance of the evidence including material facts, and
the governing law, rules, and precedent”); see also id. §§ 42.23(a), 42.120(a)
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(holding patent owner responses, as oppositions, to the content requirements
for motions). Accordingly, we held neither party to a different standard.
In view of the above, Patent Owner’s Request does not persuade us
that we misapprehended or overlooked any matter previously raised
regarding this topic.
3. Liebermann’s Party Call Disclosure
Patent Owner complains that we did not find its argument regarding
Liebermann’s disclosure of “party call” compelling. Req. Reh’g 10–14. For
example, Patent Owner argues that Petitioner never rebutted Patent Owner’s
theory that Liebermann’s “party call” was centrally-switched, versus
switched by the Liebermann device as alleged by Petitioner. Id. at 10–12.
Patent Owner complains that we placed the burden of proof on it for this
reason. Id. at 11. This is incorrect. We made clear in our Decision that
Petitioner has the burden of proof. See, e.g., Final Dec. 1 (“we determine
that Petitioner has shown, by a preponderance of the evidence . . . .”); id. at
32 (determining that “Petitioner has shown, by a preponderance of the
evidence . . . that the subject matter of claim 1 . . . would have been
obvious”). We considered Patent Owner’s argument regarding a centrally
switched party call mechanism (see, e.g., Final Dec. 18) and found it
unconvincing; this does not mean we placed any burden on Patent Owner.
Further, we provided an explanation for why Patent Owner’s argument was
unpersuasive—namely, that the disclosure of Liebermann provided factual
support for Petitioner’s position but not Patent Owner’s. See Final Dec. 18.
Patent Owner lastly complains that our explanation for why
Petitioner’s assertions were correct “was not part of the adopted ground on
which the Board instituted trial.” Req. Reh’g 13–14. Patent Owner, by
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these words, appears to have a misunderstanding of inter partes review.
Notably, at no point does the Board “adopt” or “rely” on a ground in an inter
partes review. In other words, in an inter partes review, the grounds belong
to, and are advocated exclusively by, Petitioner. The Board’s part is to first
serve a gatekeeper role as to which grounds are sufficient to permit trial and
second, if a trial is permitted, to then review the instituted grounds to
determine if Petitioner has met its burden by a preponderance of the
evidence. 35 U.S.C. § 314(a); id. § 318(a). In making these determinations,
the Board provides its explanation for why it believes one side or the other
has the better argument, but it is not stepping into the shoes of either. See 35
U.S.C. § 316(e) (placing the burden on Petitioner to show unpatentability);
37 C.F.R. § 42.104 (requiring Petitioner to set forth grounds with
specificity).
In our Final Decision, we explained why we were persuaded that
Liebermann discloses two-line, device-switched calling as required by the
claims, rather than centrally switched calling as alleged by Patent Owner.
Final Dec. 17–21. See id. For example, we explained that no such central
switch was disclosed in the text of Liebermann. Id. at 18. On the other
hand, we found the evidence to support Petitioner’s argument that the device
provided the switching (Pet. 40–42; Pet. Reply 3–5) where Liebermann
disclosed two distinct lines. Final Dec. 17–21 (discussing the disclosures of
Liebermann relating to two lines and switching). We discussed the
disclosures that supported Petitioner’s assertion that Liebermann showed
two separate lines: one between the assisted and hearing users, and one
between the assisted user and the call center. Final Dec. 17 (citing Ex. 1008,
7:7–9, 25–26, describing two separate lines); see also id. at 19–20 (setting
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forth the evidence in the record supporting Petitioner’s assertions); id. at 21
(disclosures supporting Petitioner’s assertion that Liebermann discloses
switching at the device).
In contrast to this evidence, Patent Owner only offered up a theory
based on an interpretation of the phrase “‘party call’” in Liebermann (Ex.
1008, 7:3) to mean a centrally switched calling scheme, based on extrinsic
evidence provided by its declarant. See PO Resp. 14–16. As we explained
in our Decision, however, Petitioner’s position is better supported by the
record because Patent Owner’s assertion was not supported by any express
disclosure in Liebermann whereas Petitioner’s was, and indeed Patent
Owner’s assertion runs contrary to the examples in Liebermann, cited above,
that explicitly discuss two separate lines. See generally Final Dec. 17–21.
Further, to the extent Patent Owner’s complaint is that we bolstered
our understanding of how Liebermann’s device works by citing to portions
of Liebermann not cited in the Petition, we fail to see any prejudice in the
matter in this instance because the Petition still provided the ground we
found convincing. Our citation to, for example, Exhibit 1008, column 7,
lines 25–26 (see, e.g., Final Dec. 19) was merely to show the propriety of
Petitioner’s position. Specifically, the disclosure of Liebermann relied on by
Petitioner (Pet. 40–41, citing Ex. 1008, 6:64–7:3, 7:10–14) had a missing
word
3
and the disclosure later in that column, where “operation is much the
same” (Ex. 1008, 7:18–19), we found the same arrangement described

3
Ex. 1008, 6:64–7:14 includes the following summary sentence that is
missing a word, presumably “center”: “Thus, the line between the normally
hearing person and the deaf person is analog for voice content only, while
the line between the deaf person [and the center] (and now the normally
hearing person too) is analog but transfers both voice and data.”
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without a missing word, which supported Petitioner’s original interpretation.
Compare Ex. 1008, 7:7–9 with 7:25–26; see also Req. Reh’g 13 (Patent
Owner acknowledging that the operation of Liebermann described in column
7, lines 25–26 is much the same as in column 7, lines 7–9). In both portions,
talking about the same arrangement, we were persuaded that there were two
separate lines, not a centrally switched call.
4
Thus, our cited portion merely
supported our understanding of the portion discussed earlier in Liebermann
to which Petitioner originally cited. Lastly, we note that Patent Owner was
aware of this teaching in Liebermann and it was discussed without objection
during the Oral Hearing, i.e., Patent Owner had an opportunity for its views
on the matter to be heard and considered. Tr. 158:13–24.
In view of the above, Patent Owner’s Request does not persuade us
that we misapprehended or overlooked any matter previously raised
regarding the party call limitation.
4. Converting Voice Signals Limitation
Patent Owner argues that claims 1 and 7 require “at the relay,
converting the words spoken by the hearing user into text using voice
recognition software,” and that “[w]hile Liebermann may transmit text
created by the Center, that text is not the type of text recited in the claims.”
Req. Reh’g 14–15. Patent Owner’s Request is a rehash of previous
arguments that we found unpersuasive. Compare Req. Reh’g 14–15 with
PO Resp. 22–23. We found that Liebermann describes sending text as
claimed and we noted that Patent Owner offered no persuasive argument or

4
The only difference between the two examples is one uses cell phones and
one uses “hard wire telephone”; thus, the arrangement of the connections
between each party is otherwise the same. Ex. 1008, 7:18–19, 7:24–25.
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claim construction in support of adding the limitations it wishes to read into
the claims. See Final Dec. 23. In view of the above, Patent Owner’s
Request does not persuade us that we misapprehended or overlooked any
matter previously raised regarding the voice signals limitation.
5. Background Discussion in Liebermann
In our Final Decision, we set forth various background information
regarding Liebermann and, in relevant part, we stated that “Liebermann
discloses a method for providing captioned telephone service to an assisted
user communicating with a hearing user.” Final Dec. 14 (emphasis added).
Patent Owner argues we mischaracterized Liebermann to the extent it
disclosed “providing captioned telephone service.” Req. Reh’g 15. Patent
Owner does not argue that any error in fact or law was made in consequence
of this statement. See id.
We agree that we misspoke in this respect, and Patent Owner’s
Request is granted insofar as we modify this sentence to read: “Liebermann
discloses a method for providing voice-to-text telephone service to an
assisted user communicating with a hearing user.” This correction does not
affect any portion of our analysis.
6. Panel Composition
Patent Owner asserts we exceeded our authority by issuing a Final
Written Decision with less than a “full panel.” Req. 9–10. 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
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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. 9–10), 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,
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.
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7. 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).
(“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 Patent Owner’s Request, we are not persuaded we
misapprehended or overlooked any argument previously presented. Thus,
we decline to modify the substance of our Decision. In view of our
discussion in Section 6 above, we modify our Decision to replace the word
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“captioned” with “voice-to-text” in the identified passage on page 14 of the
Final Decision.
II. ORDER
It is hereby ORDERED that Patent Owner’s Request for Rehearing is
denied insofar as we do not modify the outcome of our Final Decision; and
FURTHER ORDERED that Patent Owner’s Request for Rehearing is
granted insofar as we replace the word “captioned” with “voice-to-text” in
the first sentence of Section II.D.1, near the bottom of page 14 of the Final
Decision.

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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