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

Patent Trial and Appeal Board

Dec 1, 2015

11257703 (P.T.A.B. Dec. 1, 2015)

Trials@uspto.gov Paper 68
Tel: 571-272-7822 Entered: December 1, 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 IPR2013-00542
Patent 7,319,740 B2

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

PETTIGREW, Administrative Patent Judge.

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

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I. INTRODUCTION
Petitioner, CaptionCall, L.L.C., filed a Petition requesting an inter
partes review of claims 1 and 2 of U.S. Patent No. 7,319,740 B2 (Ex. 1001,
“the ’740 patent”). Paper 1 (“Pet.”). We instituted an inter partes review
for claims 1 and 2. Paper 6. In our Final Written Decision, we determined
that Petitioner had shown, by a preponderance of the evidence, that
claims 1 and 2 were unpatentable. Paper 66 (“Final Dec.” or “Final
Decision”). Patent Owner, Ultratec, Inc., requests a rehearing of the Final
Decision by an expanded panel. Paper 67 (“Req.” or “Request”). Having
considered Patent Owner’s Request, we grant the Request for Rehearing for
the limited purpose of modifying our analysis regarding the rationale for
combining the Ryan and McLaughlin references. We deny the Request for
Rehearing in all other respects.
II. DISCUSSION
The party challenging a decision in a request for rehearing bears the
burden of showing the decision should be modified. 37 C.F.R. § 42.71(d).
A request for rehearing “must specifically identify all matters the party
believes the Board misapprehended or overlooked, and the place where each
matter was previously addressed.” Id.
A. Combination of McLaughlin and Ryan
In its Request for Rehearing, Patent Owner contends we
misapprehended the law regarding motivation to combine references in our
discussion of obviousness of claims 1 and 2 of the ’740 patent based on
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McLaughlin
1
and Ryan.
2
Req. 1–3. Patent Owner also contends we
misapprehended the law regarding “teaching away” and overlooked
arguments why a person of ordinary skill in the art would not have
considered McLaughlin. Id. at 3–8. Although we disagree that we
misapprehended the law or overlooked arguments, we grant Patent Owner’s
request for the purpose of modifying our analysis (Final Dec. 24–26) as
described below. As in our Final Decision, we conclude that Petitioner has
articulated sufficient reasoning with some rational underpinning to support
the legal conclusion that the subject matter of the claims would have been
obvious to one of ordinary skill in the art in view of the teachings of
McLaughlin and Ryan. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
418 (2007); Pet. 26–27; Reply 11–13; Ex. 1018 ¶¶ 36–37; Ex. 1040 ¶¶ 54–
56. The remainder of this section replaces Section II.D.3.d at pages 24–26
of the Final Decision.
McLaughlin teaches a captioned telephone device configured to
connect to a relay. McLaughlin, however, does not teach re-voicing the
remote user’s words at the relay using voice recognition software trained to
the voice of the call assistant, as recited in the claims. Instead, McLaughlin
describes a relay service in which a call assistant or automated equipment
mediates telephone calls between a speaking person and a deaf person.
Ex. 1009, 29:20–22. McLaughlin also identifies computerized speech
recognition as one type of automated equipment for translating voice to text,
although McLaughlin acknowledges the limitations of speech recognition

1
U.S. Patent No. 6,181,736 B1, issued Jan. 30, 2001 (Ex. 1009).
2
U.S. Patent No. 5,809,112, issued Sept. 15, 1998 (Ex. 1004).
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software in recognizing certain kinds of speech, including conversational
speech. Id. at 26:59–62.
Ryan teaches using speech recognition software to automate the relay
function. Ex. 1004, 4:19–28. According to Mr. Occhiogrosso, whose
testimony we credit on this point, it was well known in the field of speech
recognition at the time of the invention that speaker-dependent speech
recognition (e.g., trained to the voice of a particular speaker) performed
better than untrained, speaker-independent speech recognition. Ex. 1018
¶¶ 22, 36; Ex. 1040 ¶ 56. This is reflected in Ryan’s teaching that the
accuracy of a relay that uses speech recognition software may be improved
if a call assistant re-voices the remote user’s words into a terminal with
voice recognition software designed to recognize the call assistant’s voice.
Ex. 1004, 4:33–38.
Thus, McLaughlin teaches the use of automated equipment at a relay,
Ex. 1009, 29:20–22, and Ryan teaches a computer with speech recognition
software as one form of automated equipment that can be used at a relay,
Ex. 1004, 4:33–38. McLaughlin also notes the use of computerized speech
recognition in another context, i.e., translation of voice mail messages from
voice to text. Ex. 1009, 26:59–62. A person of ordinary skill in the art
would have recognized that Ryan’s intermediate re-voicing solution—using
voice recognition software trained to the voice of a call assistant at a relay—
would address the shortcomings of applying voice recognition directly to a
remote caller’s voice, acknowledged by McLaughlin. See Pet. 26–27;
Ex. 1018 ¶ 36; Ex. 1040 ¶ 62. As Mr. Occhiogrosso explains, combining the
teachings of McLaughlin and Ryan to achieve the claimed invention
involves nothing more than directing the captioned telephone device of
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McLaughlin to connect to a re-voicing relay, as taught in Ryan, rather than a
conventional relay. Ex. 1040 ¶ 55; see Reply 11. For these reasons, we are
persuaded that a person of ordinary skill in the art would have combined the
teachings of McLaughlin and Ryan, using Ryan’s re-voicing relay in place
of McLaughlin’s relay, along with McLaughlin’s captioned telephone
device.
Patent Owner contends that one of ordinary skill in the art would not
have considered McLaughlin because not all relay services and users had
simultaneous voice and data (SVD) modems like those used in
McLaughlin’s system. Paper 20, 46 (“PO Resp.”). Patent Owner also
contends that one of ordinary skill in the art would not have wanted to use
McLaughlin’s “specialized equipment” in a relay like that taught by Ryan
because such an arrangement would require an expensive overhaul of
Ryan’s system. Id. at 51. An obviousness determination, however, does not
require an actual, physical substitution of elements, but instead focuses on
what the combined teachings of the references would have suggested to
those of ordinary skill in the art. In re Mouttet, 686 F.3d 1322, 1332 (Fed.
Cir. 2012); In re Keller, 642 F.2d 413, 425 (CCPA 1981). As discussed, we
are persuaded that a person of ordinary skill in the art would have combined
the teachings of McLaughlin and Ryan in the manner proposed by
Petitioner.
Patent Owner argues further that one of ordinary skill in the art would
not have considered McLaughlin because it is directed to an internal
company telephone system rather than the functionality of a relay service.
PO Resp. 47. Patent Owner, however, has not cited persuasive evidence that
McLaughlin’s teachings are limited to an intra-company system. See id. In
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addition, Patent Owner argues that McLaughlin discloses connecting to a
traditional, text-only TDD
3
-based relay, and any increased speed offered by
adding re-voicing and voice recognition would not have met an important
design incentive for true TDD-based relay. Id. Patent Owner, however,
does not identify specifically what “design incentive” would not be met,
asserting only that deaf users are not concerned with the speed of captions.
Id. We are not persuaded this is a reason a person of ordinary skill in the art
would not have considered McLaughlin when developing the relay system
of the ’740 patent.
Finally, Patent Owner argues that McLaughlin teaches away from the
use of trained voice recognition software. Id. at 55–57. In particular, Patent
Owner submits that McLaughlin acknowledges the shortcomings of
automated speech recognition technology and, therefore, would have
discouraged one of ordinary skill in the art from attempting to design the
relay claimed in the ’740 patent. Id. at 55 (citing Ex. 1009, 26:54–62).
McLaughlin, however, refers to the limitations of speech recognition in the
context of translating voice mail messages to text for deaf users, not in
connection with relay services discussed in another section of McLaughlin.
See Ex. 1009, 26:54–62. Moreover, as discussed previously, we credit the
testimony of Mr. Occhiogrosso that it was well known in the field of speech
recognition at the time of the invention that speaker-dependent speech
recognition (e.g., trained to the voice of a particular speaker), such as that
used in Ryan’s re-voicing technique, performed better than untrained,
speaker-independent speech recognition, such as would be used in the voice
mail application described in McLaughlin. See Ex. 1018 ¶¶ 22, 36; Ex. 1040

3
“TDD” stands for “telecommunication device for the deaf.” Final Dec. 3.
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¶ 56. On the facts presented here, we are not persuaded that McLaughlin’s
statement regarding limitations of speech recognition technology sufficiently
teaches away from the combination of Ryan’s re-voicing scheme with
McLaughlin’s relay system to establish nonobviousness. See In re Gurley,
27 F.3d 551, 553 (Fed. Cir. 1994).
B. Claim Construction
Because the parties articulated different views on how “trained to the
voice of the call assistant” should be interpreted relative to the asserted prior
art, we analyzed Patent Owner’s implied constructions of the term and
Patent Owner’s declarant’s testimony concerning the same. Final Dec. 9–
10. In its Request for Rehearing, Patent Owner argues that we
“misapprehended claim construction law” in determining software “trained
to the voice of the call assistant” was not limited to training to the voice of
one and only one particular call assistant and did not preclude voice
recognition software that is designed or built in advance of implementation
at the source code level to the voice of a call assistant. Req. 8–12.
First, Patent Owner contends that we erroneously relied on the
disclosure in the ’740 patent of “voice pattern.” Id. at 8–11. We disagree
that our reliance on the “Brief Summary of the Invention,” which refers to “a
speech recognition computer program which has been trained to the voice
pattern of the call assistant,” was improper. See Final Dec. 9 (quoting
Ex. 1001, 2:45-47 (emphasis added)). Rather, in our Final Decision, we
determined that the ’740 patent contemplated software trained to a “voice
pattern of the call assistant,” as set forth in the “Brief Summary of the
Invention,” as well as software “specifically trained to the voice of [a]
particular call assistant,” as described in the context of a particular relay
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embodiment shown in Figure 1. Final Dec. 9–10 (quoting Ex. 1001, 2:45–
47, 6:34–37).
Based on the evidence in the written description (including the
disclosure of “voice pattern”), we determined that the ’740 patent did not
indicate expressly how training occurs. Id. at 10. Giving the claim language
its broadest reasonable construction in light of the specification, we
concluded we would not limit “trained to the voice of the call assistant” to
require training to the voice of one particular call assistant. Id.
We turn next to Patent Owner’s argument in its Request for Rehearing
that we erred in concluding that “trained to the voice of the call assistant”
does not include a temporal constraint that precludes voice recognition
software that is designed or built in advance of implementation at the source
code level to the voice pattern of a call assistant. Req. 12 (citing
Final Dec. 9). Patent Owner asserts that we overlooked an alleged
admission at the Hearing by Petitioner that the claim language inherently
includes a temporal constraint that precludes training when the software is
designed in advance of implementation at the source code level. Req. 12
(citing Paper 65 (Hearing Transcript), 17:3–5). We are not persuaded that
we did so. Rather, we considered Petitioner’s statement at the Hearing in
light of the evidence of record.
In our Final Decision, we determined that the written description
discloses that the voice recognition software package is trained but does not
indicate when or how the training occurs. Final Dec. 10. We rejected Patent
Owner’s argument, relying on its declarant, that software “designed” is not
software that is “trained to recognize individual voices” because we found
insufficient support for Patent Owner’s contention. Id. (citing PO Resp. 29–
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30). As we explained in our Final Decision, Patent Owner’s declarant
testified that a person of ordinary skill in the art would not have understood
“trained” software to include “designed” software because technology to
train software to recognize individual voices did not exist in 1994 and was
not used in telecommunications relay service at that time. Id. (citing PO
Resp. 29–30; Ex. 2001 ¶¶ 30–31; Ex. 2003 ¶¶ 22–26). We weighed this
testimony, which relied on capabilities of technology available in 1994, and
concluded this testimony had little probative value of the understanding of
one of ordinary skill in the art at the time of invention because the earliest
date of invention for claims of the ’740 patent was 2001. Id.
Moreover, Petitioner’s declarant indicates that one of ordinary skill in
the art would have understood that Ryan describes speech recognition
software trained to the voice of a call assistant. Ex. 1040 ¶¶ 45–46. The
testimony of Petitioner’s declarant is supported further by prior art of record
that indicates voice recognition software trained to a particular user in relay
systems was known. See id. ¶ 46 (citing Ex. 1026, 4:37–49). This
testimony further undermines Patent Owner’s position.
Thus, we do not agree with Patent Owner that we erred by not
considering Petitioner’s purported “admission” made at the Hearing. Rather,
we considered Petitioner’s statement in determining that Ryan’s description
of benefits provided by voice recognition software that “is specifically
designed to recognize the voice of particular relay agents” (Ex. 1004, 4:33–
38) discloses the trained software recited in both claims of the ’740 patent.
See Final Dec. 20–23.
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For the reasons given, we are not persuaded that we misapprehended
claim construction law in our construction of “trained to the voice of the call
assistant.”
C. Secondary Considerations
Patent Owner alleges that we improperly made a determination of
obviousness before separately analyzing Patent Owner’s evidence of
secondary considerations. Req. 14. We disagree. Rather, in Section II.D of
our Final Decision, we determined the scope and content of the asserted
prior art (Final Dec. 16–18); discussed the claimed subject matter relative to
the asserted prior art, which included identifying differences between the
claimed subject matter and the prior art in the context of the ordinary level
of skill in the art (Final Dec. 18–24); determined Petitioner, with support of
its declarant, had articulated sufficient reasoning to support a conclusion of
obviousness based on the combined references (Final Dec. 24–26); and
analyzed Patent Owner’s secondary considerations of nonobviousness (Final
Dec. 26–29). See KSR, 550 U.S. at 418; Graham v. John Deere Co., 383
U.S. 1, 17–18 (1966). Only after that fourteen-page discussion in
Section II.D did we discuss the ultimate conclusion of obviousness of the
claimed subject matter by weighing the evidence on both sides:
Accordingly, Patent Owner fails to provide sufficient
credible evidence to support its allegations of nonobviousness
based on secondary considerations. When we balance
Petitioner’s evidence of obviousness against Patent Owner’s
asserted objective evidence of nonobviousness, we determine
that a preponderance of the evidence supports Petitioner’s
position that claims 1 and 2 would have been obvious over
McLaughlin and Ryan.
Final Dec. 29.
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Patent Owner further contends we refused to consider Patent Owner’s
secondary considerations evidence. Req. 14. This is incorrect. We
considered the arguments and evidence presented in Patent Owner’s
Response. Final Dec. 27–28. We concluded Patent Owner did “not provide
sufficient analysis for us to determine whether Patent Owner has provided
adequate evidence of secondary considerations and a nexus between any
such evidence and the merits of the claimed invention.” Id. at 27.
In its Request, Patent Owner seems to suggest that we should have
reviewed and analyzed the entirety of each of three declarations submitted
by Patent Owner in support of its secondary considerations contention
(Exs. 2004, 2006, and 2007). Req. 14–15. This also is incorrect because, in
its Patent Owner Response, Patent Owner merely cited each declaration in
its entirety without citing with particularity portions of these declarations.
PO Resp. 58 (citing “declarations by Brenda Battat (Ex. 2006) and
Constance Phelps (Ex. 2007)” and “declaration of Paul Ludwick
(Ex. 2004)”). We will not scour the 155 pages of declaration evidence
submitted by Patent Owner and generally serve as an advocate for Patent
Owner by finding evidence of secondary considerations in the voluminous
exhibits submitted. Cf. DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th
Cir. 1999) (“A brief must make all arguments accessible to the judges, rather
than ask them to play archaeologist with the record.”); Ernst Haas Studio,
Inc. v. Palm Press, Inc., 164 F.3d 110, 111–12 (2d Cir. 1999) (“Appellant’s
Brief is at best an invitation to the court to scour the record, research any
legal theory that comes to mind, and serve generally as an advocate for
appellant. We decline the invitation.”).
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D. Panel Composition
Patent Owner requests rehearing before an expanded panel and
additionally asserts we exceeded our authority by issuing a Final Written
Decision that did not include a judge that was on the panel of administrative
patent judges who decided to institute the review. Req. 1, 12–14. 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. 13), 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
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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.
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)
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(indicating only the Chief Judge, acting on behalf of the Director, may act to
expand a panel and panels do not authorize panel expansion).
III. ORDER
For the reasons given, it is
ORDERED that Patent Owner’s Request for Rehearing is granted for
the limited purpose of modifying our analysis regarding the rationale for
combining McLaughlin and Ryan as explained herein;
FURTHER ORDERED that Patent Owner’s Request for Rehearing is
denied in all other respects; and
FURTHER ORDERED that, as determined in our Final Decision,
claims 1 and 2 of U.S. Patent No. 7,319,740 B2 are unpatentable.

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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