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

Patent Trial and Appeal Board

Mar 3, 2015

10634965 (P.T.A.B. Mar. 3, 2015)

Trials@uspto.gov Paper 57
Tel: 571–272–7822 Entered: March 3, 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
Final Written Decision
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. INTRODUCTION
We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is entered pursuant to 35 U.S.C. § 318(a).
With respect to the grounds asserted in this trial, we have considered
the papers submitted by the parties and the evidence cited therein. For the
reasons discussed below, we determine that Petitioner has shown, by a
preponderance of the evidence, that the subject matter of claim 1 of U.S.
Patent No. 7,003,082 B2 (Ex. 1021, “the ’082 patent”) is unpatentable.
A. Procedural History
CaptionCall, LLC (“Petitioner”) filed a Petition requesting an inter
partes review of claim 1 of the ’082 patent. Paper 1 (“Pet.”). Petitioner
included a Declaration of Mr. Benedict J. Occhiogrosso. Ex. 1010.
Ultratec, Inc. (“Patent Owner”) did not file a Preliminary Response to the
Petition.
In our Decision Instituting Inter Partes Review, we granted review as
to claim 1 of the ’082 patent. Paper 6 (“Inst. Dec.”). Patent Owner filed a
Response to the Petition (Paper 19, “PO Resp.”), which included a
declaration by Mr. James A. Steel, Jr. (Ex. 2001). Petitioner filed a Reply to
the Response (Paper 23, “Pet. Reply”), which included a Supplemental
Declaration of Mr. Occhiogrosso (Ex. 1030).
On November 19, 2014, all parties were present for an oral hearing.
This Decision includes our decision on Patent Owner’s Motion to
Exclude Evidence (Occhiogrosso) (Paper 30, “PO Mot. Excl.”). Petitioner
filed an opposition to Patent Owner’s motion (Paper 36, “Pet. Opp. Mot.
Excl.”), and Patent Owner filed a reply (Paper 37, “PO Reply Mot. Excl.”).
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B. Related Matters
Petitioner stated that, at the time it filed the Petition, the ’082 patent
was asserted against its parent company, Sorenson Communications, Inc., in
Ultratec, Inc. v. Sorenson Communications, Inc., No. 13-CV-00346 (W.D.
Wis.). Pet. 2–3. Petitioner stated that the lawsuit includes certain other
patents asserted against its parent company and that Petitioner has filed
concurrently other petitions for inter partes review. Id.
The concurrently filed petitions are as follows:
Case Patent
IPR2013-00540 US 6,233,314
IPR2013-00541 US 5,909,482
IPR2013-00542 US 7,319,740
IPR2013-00543 US 7,555,104
IPR2013-00544 US 8,213,578
IPR2013-00545 US 6,594,346
IPR2013-00549 US 6,603,835

C. Technology Background
A teletype (TTY), or telecommunications device for the deaf (TDD),
is a device having a keyboard and display that permits a deaf person to
communicate over telephone lines. Ex. 1021 at 1:33–43. If the deaf person
is to communicate with a hearing person, a relay service is utilized. With a
relay service, a relay operator voices the deaf user’s typed words to the
hearing user, and types the hearing user’s voiced words to the deaf person’s
TTY. Id. at 1:64–2:13. Traditionally, the relay service maintains a separate
telephone connection with both the hearing and assisted users, with the relay
service acting, as the name implies, as a relay. A traditional relay service is
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found in Figure 2 of U.S. Patent No. 5,724,405 (Ex. 1005, “Engelke ’405
patent”). Figure 2 of Engelke ’405 is depicted below:

Figure 2 of Engelke ’405 depicts a traditional relay service arrangement in
which a hearing caller speaks with a relay operator over one telephone line
while the relay operator types back and forth with the assisted user over a
second telephone line, using a TTY machine. Ex. 1005, 6:11–14.
D. The ’082 Patent
The ’082 patent describes another way to provide a relay service. In
particular, the ’082 patent describes two separate connections: one between
the assisted and non-assisted user, and one between the assisted user and the
relay service. Ex. 1021, 9:33–43, Fig. 5. Figure 5 depicts this arrangement:
Figure 5 of the ’082 patent depicts a typical, voice-only connection between
the hearing user and assisted user, with a second, simultaneous text and
voice connection between the assisted user and the relay service. Id. at
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9:33–43. The relay service and the hearing user are connected at the assisted
user’s location to allow the relay operator to hear the hearing user’s spoken
words and to voice the assisted user’s typed words. Id. at 9:43–60. Notably,
the hearing and assisted users are connected directly over a telephone
connection, whereas the hearing user and the relay service are connected
indirectly, by way of the assisted user’s separate connection to the relay
service. Id. at 9:37–43.
E. Illustrative Claim
Independent claim 1 is the only claim challenged and is the only claim
in the ’082 patent. Claim 1 is reproduced below.
1. A captioned telephone device for providing
captioned telephone service to an assisted user
communicating with a hearing user through a
telephone connection using a relay having
speech to text translation capability, the hearing
user speaking words in voice, the device
comprising:
a microphone;
a speaker;
a visually readable display;
circuitry to support connection to two
telephone lines; and
a microprocessor programmed to operate the
device to:
receive a telephone call over a first
telephone line directly between the
assisted user and the hearing user;
initiate a telephone connection over a
second telephone line to the relay;
transmit the voice of the hearing user
over the second telephone line to the
relay so that the relay can convert[]
the words spoken by the hearing user
into text and transmit the text created
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by the relay back to the device over
the second telephone line; and
display the text on the display within
sight of the assisted user such that
captioning of the communication
session is provided to the assisted
user.

F. Asserted Ground and Prior Art
We instituted an inter partes review on the ground of anticipation of
claim 1 of the ’082 patent by U.S. Patent No. 6,181,736 B1, issued Jan. 30,
2001 to McLaughlin (Ex. 1006).
II. ANALYSIS
A. Claim Construction
We interpret the claims of an unexpired patent using the broadest
reasonable interpretation in light of the specification of the patent. 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). Under the broadest reasonable
interpretation standard, claim terms are given their ordinary and customary
meaning, as would be understood by one of ordinary skill in the art in the
context of the entire disclosure. In re Translogic Tech. Inc., 504 F.3d 1249,
1257 (Fed. Cir. 2007). Any special definition for a claim term must be set
forth with reasonable clarity, deliberateness, and precision. In re Paulsen,
30 F.3d 1475, 1480 (Fed. Cir. 1994).
1. Assisted User / Hearing User
We previously construed “assisted user” as “the individual making
use of the transcribed text, regardless of the individual’s actual hearing
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abilities.” Inst. Dec. 7. We previously construed “hearing user” as “the
individual in communication with the assisted user.” Id. at 7–8.
These constructions have not been challenged. Although these terms
are not at issue in this Decision, their constructions are useful in
understanding the claimed subject matter.
2. Directly Between
Claim 1 recites a microprocessor programmed to operate a device to
“receive a telephone call over a first telephone line directly between the
assisted user and the hearing user.” We previously construed this phrase to
mean “receiving a telephone call over a first telephone line between the
assisted user and the hearing user without the relay intervening on that line.”
Inst. Dec. 8–9. We maintain this construction; it has not been challenged.
3. Captioned Telephone Device
The preamble of claim 1 recites:
[a] captioned telephone device for providing
captioned telephone service to an assisted user
communicating with a hearing user through a
telephone connection using a relay having speech
to text translation capability, the hearing user
speaking words in voice, the device comprising:
. . . .
We did not construe previously the term “captioned telephone device”
in this proceeding. Patent Owner notes that we did construe this term in
related proceeding IPR2013-00542. PO Resp. 13. Patent Owner notes we
“construed this term in the context of related patents which share the same
specification.” Id. In IPR2013-00542, we construed this term to mean “a
device that transmits and receives voice signals and text information and
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displays text to an assisted user.” CaptionCall, Ltd. v. Ultratec, Inc., Case
IPR2013-00542, slip op. at 8–10 (Paper 6) (PTAB Mar. 5, 2014).
1
Patent
Owner appears to accept to this construction. PO Resp. 14–18 (arguing that
Petitioner’s position fails under Patent Owner’s interpretation of our
construction of “captioned telephone device”). Further, Patent Owner
argues that the preamble is limiting because it provides an antecedent basis
for the “device” referenced in the body of the claim.” Id. at 13. Petitioner
states that the preamble of claim 1 is not limiting because the claim sets
forth “a structurally complete invention in the claim body.” Pet. 20–21
(citing Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)); Pet. Reply 2.
The preamble of claim 1 is limiting in that it requires a “captioned
telephone device.” This is because it provides antecedent basis for the term
“the device” later in the body of the claim, and thus serves “as a necessary
component of the claimed invention.” Eaton Corp. v. Rockwell Int’l Corp.,
323 F.3d 1332, 1339 (Fed. Cir. 2003). Notwithstanding, Petitioner is correct
in that the claim sets forth all of the elements of a captioned telephone
device. Accordingly, claim 1 is limited to a “captioned telephone device,”
but the body of the claim recites a complete device; the preamble adds no
further limitation. Our reasoning follows.
First, we must distinguish between a captioned telephone device and a
captured telephone service. “Captioned telephone service,” also known as
text-assisted telephone, is a telephone service that allows an assisted user to

1
In the Final Written Decision in IPR2013-00542, we clarified that,
consistent with the specification, the device need only receive text. Id., Case
IPR2013-00542, Paper 66 at 8 (PTAB Mar. 3, 2015) (construing this term as
“a device that transmits and receives voice signals, receives text information,
and displays text to an assisted user.”).
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receive captions of the words spoken by a hearing user as well as the voice
of the hearing user. Ex. 1021, 3:11–28. A “captioned telephone device,” on
the other hand, is a device that is used in providing captioned telephone
service. The ’082 patent makes clear, however, that the captioned telephone
device need not provide all aspects of captioned telephone service. For
example, the relay is not part of the captioned telephone device. Id. at 9:40–
43 (“assisted user then uses a personal interpreter/captioned telephone
(‘PICT’) device 74 to connect to a relay 76 over a second telephone line”);
Figs. 4, 5. In addition, the captioned telephone device displays text but need
not output any audio signals to the assisted user. Id. at 9:20–32 (“the
captioned telephone device . . . is illustrated as a separate stand-alone device
from the telephone”), 9:15–20 (stating a captioned telephone device filters
out text signals from voice signals and displays text), 10:67–11:3 (stating a
captioned telephone device may be “a stand-alone appliance” from the
telephone), Figs. 4–6 (depicting the telephone as a separate entity from the
captioned telephone device). Accordingly, we are not persuaded by Patent
Owner’s argument that a “captioned telephone device” must provide an
audio output to the assisted user, because the ’082 patent makes clear that
audio output is an optional feature for a captioned telephone device. See PO
Resp. 14.
In view of the above, we construe “captioned telephone device” as we
do in the Final Written Decision in related proceeding IPR2013-00542: “a
device that transmits and receives voice signals, receives text information,
and displays text to an assisted user.”
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B. The Testimony of Mr. Occhiogrosso is not Excluded
Patent Owner seeks to exclude the testimony of Mr. Benedict
Occhiogrosso (Exs. 1010, 1030, 2003, 2004, and 2007) on the theory that he
is not qualified as an expert under Federal Rule of Evidence 702 (“FRE
702”).
2,3
PO Mot. Excl. 1. FRE 702 permits expert testimony if a witness is
qualified, “by [his or her] knowledge, skill, experience, training, or
education,” and if his or her testimony “will help the trier of fact to
understand the evidence or to determine a fact at issue,” inter alia.
Testimony on the issue of unpatentability proffered by a witness who is not
“qualified in the pertinent art” generally is not admissible under FRE 702.
Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed.
Cir. 2008).
4
In determining who is “qualified in the pertinent art” under

2
Patent Owner also seeks to exclude Mr. Occhiogrosso’s testimony under
37 C.F.R. § 42.65. PO Mot. Excl., 1. Rule 42.65, however, addresses (a)
the weight given to expert testimony that does not disclose underlying facts
or data on which the opinion is based, (b) the showing required if a party
seeks to rely on a technical test or data from such a test, and (c) the
exclusion of expert testimony on United States patent law or patent
examination practice. As such, Rule 42.65 does not apply to a determination
whether to exclude Mr. Occhiogrosso’s testimony.
3
With some enumerated exceptions, the Federal Rules of Evidence apply to
an inter partes review. 37 C.F.R. § 42.62.
4
In Sundance, the court was concerned with allowing improper testimony in
jury trials. Sundance, 550 F.3d at 1365, n.8. The Board, on the other hand,
sitting as a non-jury tribunal with administrative and technical expertise, is
well-positioned to determine and assign appropriate weight to evidence
presented. Gnosis S.P.A. v. S. Alabama Medical Science Foundation,
IPR2013-00118, slip op. at 43 (PTAB June 20, 2014) (Paper 64); see also
Donnelly Garment Co. v. NLRB, 123 F.2d 215, 224 (8th Cir. 1941) (“One
who is capable of ruling accurately upon the admissibility of evidence is
equally capable of sifting it accurately after it has been received.”).
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FRE 702, we need not find a complete overlap between the witness’s
technical qualifications and the problem confronting the inventor or the field
of endeavor for a witness to qualify as an expert. SEB S.A. v. Montgomery
Ward & Co., Inc., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010) (upholding
admission of the testimony of an expert who admittedly lacked expertise in
the design of the patented invention, but had experience with materials
selected for use in the invention); Mytee Prods., Inc. v. Harris Research,
Inc., 439 Fed. App’x 882, 886–87 (Fed. Cir. 2011) (non-precedential)
(upholding admission of the testimony of an expert who “had experience
relevant to the field of the invention,” despite admission that he was not a
person of ordinary skill in the art).
Patent Owner contends that, to qualify as an expert under FRE 702,
Mr. Occhiogrosso must be a person of ordinary skill in the art, and that Mr.
Occhiogrosso is not a person of ordinary skill in the art because he does not
have “general knowledge and understanding of the telecommunications
needs of the deaf and HOH [(hard of hearing)]” or “experience with the
development of assistive telecommunications technology for such
individuals.” Id. at 1–4; see also id. at 5–7 (discussing Mr. Occhiogrosso’s
experience with respect to these factors).
Petitioner responds that Patent Owner’s definition of the level of
ordinary skill in the art conflates a requirement for skill in the relevant
technical art (“telecommunications systems [having] voice-to-text
transcription”) with skill in one particular commercial sector that applies that
technical art (“telecommunications services specifically designed for the
deaf or hard of hearing”). Pet. Opp. Mot. Excl. 1, 4. Petitioner also points
out that, even if we were to adopt Patent Owner’s proposed level of ordinary
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skill in the art, Mr. Occhiogrosso has experience with developing a
telecommunications system for the deaf and hard of hearing. Id. at 12–13.
Patent Owner’s arguments are unpersuasive at the outset because, to
testify as an expert under FRE 702, a person need not be a person of
ordinary skill in the art, but rather simply “qualified in the pertinent art.”
Sundance, 550 F.3d at 1363–64; SEB, 594 F.3d at 1372–73; Mytee, 439 Fed.
App’x at 886–87. Notwithstanding, for the reasons we express below in
Section II.C, we find Mr. Occhiogrosso to be qualified to testify as to the
level of ordinary skill in the art. Patent Owner’s arguments are also
unpersuasive because they attempt to constrict the “pertinent art,” i.e., the
pertinent technology, to a particular subset of individuals who use the
pertinent technology, rather than the pertinent technology itself. See also
Pet. Opp. Mot. Excl. 4–5 (arguing that the problems in the pertinent art are
not “uniquely related to . . . the deaf and hard-of-hearing”).
The technology at issue in the ’082 patent “relates to the general field
of telephone communications.” Ex. 1021, 1:21–22. The ’082 patent focuses
on a particular application of that technology: people who need assistance in
using telecommunications devices. Id. 1:21–2:28 (describing various prior
art assistive technologies to help frame the evolution of assistive
technologies). Patent Owner would have us define the pertinent art in the
narrowest way: “telecommunications technology for the deaf and hard of
hearing.” PO Mot. Excl. 3 (emphasis added); see also id. (additionally
characterizing the technology as “assistive telecommunications
technology”). The Federal Circuit in Sundance, however, used the phrase
“qualified in the pertinent art,” however, and did not set forth a rule
requiring an expert in the specific technological solution recited in the
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claims or the particular motivation behind the inventors’ invention.
Sundance, 550 F.3d at 1363–64. We determine the pertinent art to be
telecommunications systems, because any communications technology
would be pertinent art to the ’082 patent. While assistive technology may be
more pertinent, and assistive technology for the deaf and hearing impaired,
using voice-to-text relays, may be most pertinent, anything in the
telecommunications technology field would be pertinent to the inventors
when considering their problem.
Mr. Occhiogrosso has established that he has knowledge, experience,
and education in the field of telecommunications systems. Ex. 1010 ¶¶ 5–
10; Ex. 1030 ¶¶ 4–11. As such, Mr. Occhiogrosso is qualified sufficiently in
the pertinent art to testify under FRE 702 in this proceeding, because his
testimony helps us to understand aspects of telecommunications technology
used in the ’082 patent.
Moreover, to the extent Mr. Occhiogrosso is more familiar with
general telecommunications technology and less familiar with voice-to-text
or its application to the deaf or hearing-impaired, or to the extent that Mr.
Occhiogrosso’s testimony is inconsistent or unsupported, we will weigh
Mr. Occhiogrosso’s testimony accordingly, taking into account the extent of
his expertise in these areas. See, e.g., Yorkey v. Diab, 601 F.3d 1279, 1284
(Fed. Cir. 2010) (holding the Board has discretion to give more weight to
one item of evidence over another “unless no reasonable trier of fact could
have done so”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed.
Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude
that the lack of factual corroboration warrants discounting the opinions
expressed in the declarations.”); see also PO Mot. Excl. 5–7 and PO Reply
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Mot. Excl. 2–4 (arguing Mr. Occhiogrosso does not have sufficient
experience with the deaf or hearing impaired); PO Mot. Excl. 8 and PO
Reply Mot. Excl. 4–5 (arguing that Mr. Occhiogrosso’s statements are
unsupported and unreliable).
Under the totality of these circumstances, we decline to exclude the
testimony of Mr. Occhiogrosso. Accordingly, Patent Owner’s Motion to
Exclude to Mr. Occhiogrosso’s testimony is denied.
C. Mr. Occhiogrosso Is Qualified to Testify as to the Level of Ordinary
Skill in the Art
The hypothetical person of ordinary skill in the art is attributed with
knowledge “of all prior art in the field of the inventor’s endeavor and of
prior art solutions for a common problem even if outside that field.” In re
Nilssen, 851 F.2d 1401, 1403 (Fed. Cir. 1988). As we explained above in
Section II.B, the pertinent art is telecommunication systems. Thus, a person
of ordinary skill in the art is a person familiar with at least that technology,
by way of background and/or experience. The prior art in the record before
us is highly indicative of the level of ordinary skill in this art. Okajima v.
Bourdeau, 261 F.3d. 1350, 1355 (Fed. Cir. 2001) (holding that the prior art
itself can reflect the appropriate level of skill in the art).
Patent Owner argues that Mr. Occhiogrosso has no particular
experience in telecommunication relay services (“TRS”) for the deaf and
hard of hearing and, as such, is not qualified to testify as to the level of
ordinary skill in the art. PO Resp. 7–8. Petitioner replies that Mr.
Occhiogrosso has “comprehensive industry experience” that includes
experience “relating to each of the component technologies at issue” as well
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as “applications for the deaf and hard-of-hearing.” Pet. Reply 1 (citing Ex.
1030 ¶¶ 4–11).
Patent Owner’s argument is, essentially, that Mr. Occhiogrosso is not
qualified sufficiently in this field because he has insufficient experience with
a particular intended end user of the claimed invention. PO Resp. 7–8.
Although those end users may be a large segment of users of this
technology, the same technology is used in other contexts, such as
translation of spoken languages and captioning of voices, and Mr.
Occhiogrosso has experience in those contexts. Ex. 1030 ¶¶ 9–11. Thus,
Patent Owner’s argument is unpersuasive. Moreover, Mr. Occhiogrosso
testifies he has experience with voice-to-text technology specifically for deaf
and hard-of-hearing persons. Id. ¶ 11.
Reviewing the testimony of Mr. Occhiogrosso and his supporting
documentation (Exs. 1010, 1011, 1030, 2003, 2004, and 2007), we are
persuaded that he is qualified to testify as to the level of ordinary skill in the
art in this proceeding.
D. The McLaughlin Ground
Petitioner asserts that McLaughlin anticipates the subject matter of
claim 1. Pet. 20–26. We first discuss the relevant disclosures in
McLaughlin, and then we move element-by-element through Petitioner’s
ground and Patent Owner’s arguments.
1. McLaughlin
The McLaughlin device is configured to receive a telephone call over
a line directly between the assisted user and the hearing user. Ex. 1006,
30:37–39 (“An object of the invention is to allow a hearing/speaking person
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to call the phone number of a deaf and/or speech impaired person directly.”).
Subsequently, the device initiates a second telephone call to the relay
service. Id. at 30:59–63 (denoting “Line A” for the direct connection and
“Line B” for the relay connection), 31:35–40 (“[T]he answering device will
set up a . . . link with the relay service on Line B. The voice caller will now
be informed that the call can proceed.”). The device transmits the voice of
the hearing user to the relay, which in turn operates to convert the words of
the hearing caller into text for display on the assisted user’s device. Id. at
31:41–47 (“[V]oice sounds from the voice caller on Line A are sent over to
the Line B . . . line,” then “[t]he operator can translate these voice sounds
into text and type back . . . causing this text to appear on the screen of the
. . . device of the deaf user.”).
McLaughlin also discloses features that allow an assisted user’s voice
to carry over to the hearing user (“voice carry over” or “VCO”) and a
hearing user’s voice to carry over to the assisted user (“hearing carry over”
or “HCO”). Id. at 29:28–44.
2. McLaughlin describes “[a] captioned telephone device”
Petitioner asserts that, although the preamble of claim 1 is not
limiting, McLaughlin describes a device that provides the text of a hearing
user’s voice. Pet. 20–21; id. at 22 (citing Ex. 1006, 31:41–52). Patent
Owner argues that the preamble serves as an antecedent basis for later
references in the claim to “the device” and, as such, is limiting. PO Resp.
13. Patent Owner then argues that McLaughlin does not describe a
“captioned telephone device” because “it does not disclose any device or
service that enables an assisted user to receive both voice and captions.” Id.
at 14. By arguing that McLaughlin does not “receive [a] voice,” Patent
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Owner means that McLaughlin’s device does not “provide the audio of the
hearing user’s voice to the deaf user in addition to the text.” Id. at 14–15;
see also id. at 15–18 (making similar arguments).
We agree with Patent Owner that the preamble is limiting, but only
insofar as claim 1 requires a captioned telephone device. It is not limiting
insofar as requiring telephone lines connected to that device, the relay, or
any other structure or thing that is not the captioned telephone device or
otherwise required by the claim. These aspects of the preamble merely
describe the environment in which the captioned telephone device operates.
As we explained in our claim construction section, a captioned telephone
device is only one piece of a captioned telephone service, and the ’082
patent clearly delineates between the captioned telephone device versus
these other things the device operates in conjunction with to provide the
captioned telephone service.
Patent Owner’s argument is that a captioned telephone device must
provide the audio of the hearing user’s voice to the assisted user. A
captioned telephone device, however, need not provide the audio of the
hearing user’s voice, for the reasons we discussed in our claim construction
of the term. Tellingly, claim 1 recites a microprocessor programmed to
operate the captioning device, but does not include a step of transmitting the
voice of the hearing user to the assisted user. Accordingly, we consider the
omission in a claim of an explicitly optional feature to mean that that feature
is not required by the claim.
While claim 1 does require a speaker, it does not require programming
to provide the voice of the hearing user to the assisted user. Claim 1 thus
reads on a captioned telephone device that provides the voice of the hearing
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user to the assisted user as well as a captioned telephone device that does not
provide the voice of the hearing user. Accordingly, we do not render the
speaker redundant by not reading in the optional, unclaimed voice
transmission feature.
Moreover, we understand that, at a broader level, Patent Owner is
arguing that McLaughlin does not provide captioning service because
McLaughlin allegedly does not provide both the hearing user’s voice as well
as the relay’s captions to the assisted user at the same time. Even assuming,
arguendo, that McLaughlin did not provide both voice and caption, we made
clear above and in our claim construction section that claim 1 is directed to a
captioned telephone device; it does not require provision of a complete
captioned telephone service. That is, a captioned telephone device, as
claimed and understood in view of the ’082 patent, need not provide the
voice of the hearing user to the assisted user. Thus, claim 1 only requires
those things set forth in claim 1; it does not require all aspects of the
captioned telephone service to be provided.
In view of the above, we are not persuaded by Patent Owner’s
arguments that McLaughlin does not describe a “captioned telephone
system” in the manner required by the preamble of claim 1.
3. McLaughlin describes “a microphone,” “a speaker,” and
“a visually readable display”
McLaughlin discloses a microphone and a speaker because it
describes a device that has both VCO and HCO modes, which require a
microphone and a speaker, respectively. Ex. 1006, 30:4–12. McLaughlin
also discloses that, if the two users are conversing over the internet, they
“both have audio circuitry or sound cards . . . with microphones and/or
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speakers.” Id. at 33:61–64 (emphasis added). McLaughlin discloses a
display allowing a user to view text converted from the hearing user’s voice.
Id. at 31:43–47, 33:42–46.
Patent Owner does not argue explicitly in its Response that
McLaughlin does not describe a display as required by claim 1. Patent
Owner argues, however, that a VCO mode only requires a microphone, and
a HCO mode only requires a speaker, such that McLaughlin’s disclosure of
VCO and HCO modes only describes one of these structures, but not both.
PO Resp. 18–19. Patent Owner’s declarant, Mr. Steel, testifies that, while
McLaughlin discloses “services to a deaf person who can speak” and “to a
hearing person who cannot speak,” McLaughlin does not disclose a service
for a person that “can both hear and speak, but needs captions to supplement
his or her hearing.” Ex. 2001 ¶ 21.
Patent Owner’s argument is unpersuasive because it does not focus on
whether the claims read on McLaughlin. Claim 1 is anticipated by
McLaughlin if it discloses a device arranged in the manner required by the
claim. Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772 (Fed. Cir. 1983)
(“[I]t is only necessary that the claims under attack, as construed by the
court, ‘read on’ something disclosed in the reference, i.e., all limitations of
the claim are found in the reference, or ‘fully met’ by it.”). Reviewing
Petitioner’s asserted ground, we find the microphone, speaker, and display
limitations properly read on the device described in McLaughlin. See Pet.
22–23.
To the extent Patent Owner is arguing that the VCO and HCO modes
in McLaughlin are strictly mutually exclusive, e.g., if a user had a VCO
model it would have a microphone but not a speaker, we consider this
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argument unpersuasive as well. McLaughlin describes a device for the deaf
and/or speech impaired. See, e.g., Ex. 1006, 29:18–19. As Petitioner’s
declarant, Mr. Occhiogrosso testifies, “[i]t would be illogical” for
McLaughlin to be implying three separate devices when it states “and/or.”
Ex. 1030 ¶ 23. We are persuaded by Mr. Occhiogrosso’s testimony that a
person of ordinary skill in the art would consider McLaughlin to be
disclosing a device capable of all of the HCO/VCO features described
therein. Id. ¶¶ 23–24. In other words, McLaughlin’s disclosure, when
describing a device for a hearing user to call an assisted user (e.g., Ex. 1006,
cols. 29–34), is describing options for a single system, not separate
embodiments. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369
n.5 (Fed. Cir. 2008) (“[C]ourts are not constrained to proceed example-by-
example when reviewing an allegedly anticipating prior art reference.
Rather, the court must, while looking at the reference as a whole, conclude
whether or not that reference discloses all elements of the claimed invention
arranged as in the claim.”). Thus, McLaughlin discloses a device capable of
both HCO and VCO, and such a device has a speaker and a microphone.
In view of the above, we are persuaded that McLaughlin describes “a
microphone,” “a speaker,” and “a visually readable display.”
4. McLaughlin describes “circuitry to support connection to
two telephone lines”
McLaughlin labels the line between the hearing user and the assisted
user as “Line A” and the line between the assisted user and the relay as
“Line B.” Ex. 1006, 30:46–63, 31:37–40. McLaughlin states that “voice
sounds from the voice caller on Line A are sent over to the Line B [and] can
be heard by the relay operator.” Id. at 31:41–43. Specifically, “the Line A
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SVD modem digitizes the sounds of [the hearing user’s] voice and ships this
digital stream over to the Line B SVD modem, either directly in a single
modem enclosure [or] through a bus, serial or parallel ports of a personal
computer.” Id. at 32:41–46. In one option of the described embodiment,
“two SVD modems are attached to a personal computer, and no specialized
hardware is required.” Id. at 32:33–35.
Patent Owner argues that there are other optional configurations in
McLaughlin where the modems may be located in different locations and
that “McLaughlin is silent as to where the two lines are connected.” PO
Resp. 19–21. Patent Owner and its declarant, Mr. Steel, attempt to
characterize McLaughlin as “ambiguous” for this reason. Id.; Ex. 2001
¶¶ 27–31.
Reviewing McLaughlin, we do not find ambiguity but rather a
description of a device that can be configured according to several
enumerated possibilities. Although there may be other options in
McLaughlin wherein the modems are in different locations (assuming,
arguendo, that the claims preclude such a configuration), the option that
Petitioner relies on for this limitation states that the modems for Line A and
Line B are digitally connected in a single modem enclosure. Ex. 1006,
32:41–46. Accordingly, McLaughlin describes modems located in the same
digital device.
In view of the above, we are persuaded that McLaughlin describes
“circuitry to support connection to two telephone lines.”
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5. McLaughlin describes “a telephone call over a first
telephone line directly between the assisted user and the
hearing user”
McLaughlin describes that an advantage of its device is to allow a
hearing user to directly call an assisted user, i.e., without having to call a
relay. Ex. 1006, 33:50–52. McLaughlin calls this first telephone line “Line
A.” See, e.g., id. at 30:61–63.
Patent Owner argues that there is ambiguity as two where the modems
are located in McLaughin, and that McLaughlin merely teaches two
telephone lines “but certainly does not teach that there is a direct line
between the hearing user and the deaf user.” PO Resp. 21–22; see also
Ex. 2001 (Mr. Steel testifying along these lines).
Patent Owner fails to address to our satisfaction the explicit statement
in McLaughlin that its system is set up to allow a hearing user “to directly
call” an assisted user. Ex. 1006, 33:50–52. Mr. Steel characterizes Lines A
and B of McLaughlin as simply two “telephone lines[] that can be used by
the assisted user.” Ex. 2001 ¶ 33. This testimony, however, is undermined
by the explicit disclosure of McLaughlin just cited.
We are persuaded that McLaughlin describes the functions of the two
lines: Line A is the line from the hearing user to the assisted user, and Line
B is the line from the assisted user to the relay. Ex. 1006, 30:37–39, 30:59–
63, 31:41–52, 32:41–65, 33:50–52. The relay is on Line B, such that the line
between the hearing user and assisted user (Line A) does not have a relay
and is, therefore, a direct connection between the two users.
In view of the above, we are persuaded that McLaughlin describes “a
microprocessor programmed to operate the device to: receive a telephone
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call over a first telephone line directly between the assisted user and the
hearing user.”
6. McLaughlin describes “a telephone connection over a
second telephone line to the relay”
McLaughlin describes two lines, wherein Line B is a telephone line to
the relay. Ex. 1006, 31:41–52, 32:41–61. Patent Owner’s arguments with
respect to this limitation are largely similar to its arguments with respect to
the first telephone line limitation. See PO Resp. 22–23. Those arguments
are unpersuasive for similar reasons.
Patent Owner additionally argues that McLaughlin does not teach “the
call to the relay on second Line B is initiated by the assisted user’s device.”
Id. at 23. This argument is unpersuasive because McLaughlin describes that,
upon receiving a call on Line A from a hearing user, “the answering device
will set up a SVD link with the relay service on Line B.” Ex. 1006, 31:37–
40 (emphasis added). Patent Owner’s argument does not address cogently
this disclosure in McLaughlin.
In view of the above, we are persuaded that McLaughlin describes “a
microprocessor programmed to operate the device to: initiate a telephone
connection over a second telephone line to the relay.”
7. McLaughlin describes “converting the words spoken by the
hearing user into text” and “display[ing] the text on the
display”
McLaughlin describes that the hearing user’s voice is sent along Line
B to be transcribed at the relay and subsequently converted into text at the
relay for display on the user’s device. Ex. 1006, 31:41–47. That text is for
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the assisted user to read, such that it would be displayed by a display in sight
of the assisted user. Id.
Patent Owner does not address these limitations explicitly in its
Response. Reviewing the Petition and the evidence cited therein, we are
persuaded that McLaughlin describes these limitations.
E. Conclusion
We have reviewed the papers submitted by the parties and the
evidence cited therein. Upon our review, we determine that Petitioner has
established, by a preponderance of the evidence, that McLaughlin describes
each element of claim 1 of the ’082 patent in the manner prescribed by the
claim. Accordingly, we find that McLaughlin anticipates claim 1.
III. ORDER
In view of the foregoing, it is hereby:
ORDERED that Petitioner has shown by a preponderance of the
evidence that claim 1 of the ’082 patent is unpatentable; and
FURTHER ORDERED that this is a final written decision and that
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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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