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

Patent Trial and Appeal Board

Mar 3, 2015

11257703 (P.T.A.B. Mar. 3, 2015)

Trials@uspto.gov Paper 66
571-272-7822 Entered: March 3, 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.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

I. INTRODUCTION
We have jurisdiction to hear this inter partes review under 35 U.S.C.
§ 6(c). This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a)
and 37 C.F.R. § 42.73. For the reasons discussed herein, Petitioner has
shown by a preponderance of the evidence that claims 1 and 2 of U.S. Patent
No. 7,319,740 B2 (Ex. 1001, “the ’740 patent”) are unpatentable.
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A. Procedural History
Petitioner, CaptionCall, L.L.C., filed a Petition for inter partes review
of claims 1 and 2 of the ’740 patent. Paper 1 (“Pet.”). Patent Owner,
Ultratec, Inc., did not file a Preliminary Response. On March 5, 2014,
pursuant to 35 U.S.C. § 314, we instituted an inter partes review for
claims 1 and 2 of the ’740 patent on the ground of obviousness under
35 U.S.C. § 103(a) over McLaughlin and Ryan.
1
Paper 6 (“Inst. Dec.”).
Subsequent to institution, Patent Owner filed a Patent Owner
Response (Paper 20, “PO Resp.”), and Petitioner filed a Reply to Patent
Owner’s Response (Paper 33, “Reply”). Patent Owner also filed a Motion to
Exclude Evidence. Paper 42 (“PO Mot. to Exc.”). Petitioner filed an
Opposition (Paper 49, “Pet. Opp. to Mot. to Exc.”) to Patent Owner’s
Motion, and Patent Owner filed a Reply to Petitioner’s Opposition
(Paper 50, “PO Reply to Opp. to Mot. to Exc.”).
An oral hearing was held on November 19, 2014.
2

B. Related Proceedings
Petitioner represents that Patent Owner asserted the ’740 patent
against Petitioner’s parent company in the following district court
proceeding: Ultratec, Inc. v. Sorenson Communications, Inc., No. 13-CV-
00346 (W.D. Wis.). Pet. 3. Petitioner also represents that in the same

1
U.S. Patent No. 6,181,736 B1, issued Jan. 30, 2001 (Ex. 1009,
“McLaughlin”); U.S. Patent No. 5,809,112, issued Sept. 15, 1998 (Ex. 1004,
“Ryan”).
2
This proceeding and IPR2013-00540, IPR2013-00541, IPR2013-00543,
IPR2013-00544, IPR2013-00545, IPR2013-00549, and IPR2013-00550
involve the same parties and similar issues. The oral arguments for all eight
reviews were merged and conducted at the same time. A transcript of the
oral hearing is included in the record as Paper 65.
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district court proceeding, Patent Owner asserted the following patents at
issue in related inter partes reviews: U.S. Patent No. 6,233,314
(Case IPR2013-00540), U.S. Patent No. 5,909,482 (Case IPR2013-00541),
U.S. Patent No. 7,555,104 (Case IPR2013-00543), U.S. Patent
No. 8,213,578 (Case IPR2013-00544), U.S. Patent No. 6,594,346
(Case IPR2013-00545), U.S. Patent No. 6,603,835 (Case IPR2013-00549),
and U.S. Patent No. 7,003,082 (Case IPR2013-00550). Pet. 3.
C. The ’740 Patent
The ’740 patent describes a system that assists deaf, hard of hearing,
or otherwise hearing-impaired individuals in using telephones. Ex. 1001,
1:26–29. A conventional system uses a device that includes a keyboard, a
display, and a specific type of modem, and is known as a telecommunication
device for the deaf (TDD), a text telephone (TT), or a teletype (TTY). Id. at
1:37–43. When a hearing person who does not have access to a TDD wishes
to communicate with a hearing-impaired person who uses a TDD, the parties
may utilize a relay system, in which a human intermediary, known as a “call
assistant,” communicates with the hearing user by voice and with the
hearing-impaired user by using a TDD. Id. at 1:66–2:11. In a conventional
relay system, the call assistant types, at a TDD keyboard, the words spoken
by the hearing user and voices to the hearing user the words received on the
TDD from the hearing-impaired user. Id. at 2:11–16.
The ’740 patent relates to an improved system and method for
providing a captioned telephone service using a relay. Id. at 2:40–56.
Instead of typing the hearing user’s words, the call assistant re-voices those
words into a microphone that transmits the voice of the call assistant to a
computer with voice recognition software trained specifically to the voice of
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the call assistant. Id. at 6:18–37. Using the voice recognition software, the
computer translates the words of the call assistant to digital text, which is
sent to a display of the hearing-impaired user. Id. at 6:50–57.
The ’740 patent also describes a captioned telephone device at the site
of the assisted user. Id. at 9:18–10:4. Figure 4, reproduced below,
illustrates the setup of a telephone call involving captioned telephone
device 72:

As shown in Figure 4, a hearing user at telephone 62 communicates with
relay 66 through telephone line 64. Id. at 9:20–22. The relay communicates
both the voice of the hearing user and a transcription of the text of the
conversation through telephone line 68 to an assisted user. Id. at 9:22–23.
At the assisted user’s site are captioned telephone device 72, which includes
a display for text, and conventional telephone 70. Id. at 9:23–27. The
functions of captioned telephone device 72 and telephone 70 may be
combined into a single device. Id. at 9:36–43.
Figure 5, reproduced below, illustrates an alternative, two-line
embodiment described in the ’740 patent:
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As shown in Figure 5, this embodiment utilizes voice-only telephone
line 64 between telephone 62 of the hearing user and telephone 70 at the
assisted user’s location, and a separate connection—telephone line 78—
carrying text and voice between relay 76 and captioned telephone device 74
at the assisted user’s location. Id. at 9:44–54. The voice of the hearing user
is received at telephone 70 and transferred to telephone line 78 for
transmission to relay 76, which converts the spoken words to a text stream to
be returned to the assisted user via telephone line 78. Id. at 9:54–57, 10:16–
21.
D. Claims
Claims 1 and 2 are the only claims of the ’740 patent and are both
independent. Those claims read:
1. A system for providing captioned telephone
service to an assisted user, the system comprising
a captioned telephone device at the site of the assisted
user, the captioned telephone device capable of connection to
an [I]nternet [P]rotocol connection to receive text and voice
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signals and capable of displaying the text for the assisted user;
and
a relay for converting voice to text, the relay including a
computer with voice recognition software and operated by a
call assistant, the voice recognition software of the relay trained
to the voice of the call assistant to create a text stream of the
words spoken by a remote user, the text stream being sent by
[I]nternet [P]rotocol to the captioned telephone.
2. A method of operating a captioned telephone
service, the method comprising the steps of
arranging a telephone call between an assisted user and a
remote user so that words spoken by the remote user are also
transmitted to a relay;
at the relay, a call assistant listening to the words spoken
by the remote user and re-voicing the words into a computer
with voice recognition software trained to the voice of the call
assistant to create a text stream of the words spoken by the
remote user, the relay transmitting the text stream by [I]nternet
[P]rotocol to the assisted user; and
the assisted user using a captioned telephone device that
receives the text stream from the relay by [I]nternet [P]rotocol
and displays the text on a visually readable display for the
assisted user.
Id. at 12:22–51.
II. ANALYSIS
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). Consistent with the broadest reasonable construction,
claim terms are presumed to have their ordinary and customary meaning, as
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understood by a person of ordinary skill in the art, in the context of the entire
patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
Cir. 2007). An inventor may provide a meaning for a term that is different
from its ordinary meaning by defining the term in the specification with
reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
1475, 1480 (Fed. Cir. 1994).
We construe the claim language below in accordance with these
principles. No other terms require express construction.
1. “captioned telephone device”
Claims 1 and 2 recite a “captioned telephone device.” Ex. 1001,
12:24, 12:48. The ordinary meaning of “telephone” is “[a]n instrument that
converts voice and other sound signals into a form that can be transmitted to
remote locations and that receives and reconverts waves into sound
signals.”
3
In the context of voice communication, a “caption” is text that
communicates dialogue.
4
Thus, according to its ordinary meaning, a
captioned telephone device is a device that transmits and receives voice
signals and displays text.
The ’740 patent uses the term “captioned telephone device” in a way
that is consistent with this ordinary meaning. Independent claim 1 recites “a

3
THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE 1846
(3d ed. 1992); THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH
LANGUAGE 1779 (4th ed. 2006).
4
THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE 286
(3d ed. 1992) (defining “caption” in relevant part as “2. A subtitle in a
motion picture.”); THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH
LANGUAGE 278 (4th ed. 2006) (defining “caption” in relevant part as “2. A
series of words . . . that communicate dialogue to the hearing-impaired or
translate foreign dialogues.”).
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captioned telephone device at the site of the assisted user . . . capable of
connection to an [I]nternet [P]rotocol connection to receive text and voice
signals and capable of displaying the text for the assisted user.” Id. at
12:24–28 (emphasis added). Independent claim 2 recites “the assisted user
using a captioned telephone device that receives the text stream from the
relay by [I]nternet [P]rotocol and displays the text on a visually readable
display for the assisted user.” Id. at 12:48–53 (emphasis added). The
written description of the ’740 patent describes a captioned telephone device
as a device that receives both voice signals and text information and displays
the text information to an assisted user. Id. at 9:26–31 (“The captioned
telephone device 72 is constructed to accomplish two objectives. One
objective is to filter, or separate, the digital signals carrying the text
information from the voice signal. The other objective is to take the digital
signals and create a visual display of the text information for the assisted
user.”); see also id. at Fig. 4 (showing a simultaneous text and voice
connection between captioned telephone device 72 and relay 66). Note that
a captioned telephone device need not output any audio signals to the
assisted user. See id. at 9:36–38 (stating that a captioned telephone device
may be a stand-alone device separate from a telephone at an assisted user’s
location); id. at Figs. 4, 5 (illustrating captioned telephone device and
telephone as two separate devices).
In light of the use of “captioned telephone device” in the ’740 patent
and the ordinary meaning of the term, we construe “captioned telephone
device” as a device that transmits and receives voice signals, receives text
information, and displays text to an assisted user.
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2. “trained to the voice of the call assistant”
Neither party expressly proposes a construction for “trained to the
voice of the call assistant,” which appears in both claims 1 and 2. See
Pet. 5–6; PO Resp. 11–16; Reply 2. In their dispute over the teachings of
the asserted prior art, however, the parties articulate different views as to
how the term should be construed. Patent Owner construes “trained to the
voice of the call assistant” to require training to recognize individual voices,
PO Resp. 29, presumably trained to the voice of one, and only one, call
assistant and to preclude training for a type of speech used by a group of
people (such as a regional accent) that could apply to more than one call
assistant. Patent Owner also seeks to construe “trained to the voice of the
call assistant” as having a temporal constraint so as to preclude training at
the time when the voice recognition computer software package is “designed
in advance of implementation at the source code level.” Id. (emphasis
omitted). According to Patent Owner, “trained to the voice of the call
assistant” precludes software that is “built” to recognize the voice of a
particular agent. Id. at 30. Petitioner disagrees. Reply 7–8.
The ’740 patent does not set forth a special definition for “training.”
In the “Brief Summary of the Invention,” however, the ’740 patent refers to
“a speech recognition computer program which has been trained to the voice
pattern of the call assistant.” Ex. 1001, 2:45–47 (emphasis added). In the
context of describing a relay, the written description explains that “the call
assistant operates at a computer terminal which contains a copy of a voice
recognition software package which is specifically trained to the voice of
that particular call assistant.” Id. at 6:34–37 (emphasis added). Thus, the
’740 patent contemplates software trained to “a voice pattern of the call
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assistant” as well as software “specifically trained to the voice of [a]
particular call assistant.” Neither description of training, however, indicates
when or how the training occurs. Patent Owner, relying on its declarants
Mr. James A. Steel, Jr. and Mr. Paul W. Ludwick, asserts that a person of
ordinary skill in the art would not have understood software that is
“designed” in advance to recognize the voice of particular agents to be
software that is “trained to recognize individual voices,” because such
technology was not used in telecommunications relay service in 1994. PO
Resp. 29–30 (citing Ex. 2001 ¶¶ 30–31; Ex. 2003 ¶¶ 22–26). We note that
technology available in 1994 has little probative value here because the
earliest date of invention for claims of the ’740 patent is 2001.
We give claim language its broadest reasonable construction in light
of the specification of the patent in which it appears. Thus, we will not limit
“trained to the voice of the call assistant” to require training to the voice of
one particular call assistant, because the claim language encompasses the
invention as disclosed in the written description of the ’740 patent—
software trained to a voice pattern of a call assistant. Ex. 1001, 2:45–47
(“Summary of the Invention”). Nor will we limit “trained to the voice of the
call assistant” to a particular time at which training must occur or to a
particular manner of training that is not found in the claims or the written
description of the ’740 patent.
B. Principles of Law
To prevail in challenging Patent Owner’s claims, Petitioner must
demonstrate by a preponderance of the evidence that the claims are
unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is
unpatentable under 35 U.S.C. § 103(a) if the differences between the
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claimed subject matter and the prior art are such that the subject matter, as a
whole, would have been obvious at the time of the invention to a person
having ordinary skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
406 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including: (1) the scope and content of
the prior art; (2) any differences between the claimed subject matter and the
prior art; (3) the level of ordinary skill in the art; and (4) objective evidence
of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
The level of ordinary skill in the art is reflected by the prior art of record.
See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001);
In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).
C. Patent Owner’s Motion to Exclude Testimony by Mr. Occhiogrosso
Patent Owner seeks to exclude the testimony of Mr. Benedict
Occhiogrosso (Exs. 1018, 1040, 2008, 2009, and 2014) on the theory that he
is not qualified as an expert under Federal Rule of Evidence 702
(“FRE 702”).
5,6
PO Mot. to Exc.; PO Resp. 7–11. FRE 702 provides that a
witness qualified as an expert by knowledge, skill, experience, training, or
education may testify in the form of an opinion if (a) the expert’s knowledge

5
Patent Owner also seeks to exclude Mr. Occhiogrosso’s testimony under
37 C.F.R. § 42.65. PO Mot. to Exc. 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.
6
With some enumerated exceptions, the Federal Rules of Evidence apply to
an inter partes review. 37 C.F.R. § 42.62.
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will help the trier of fact to understand the evidence or to determine a fact in
issue, (b) the testimony is based upon sufficient facts or data, (c) the
testimony is the product of reliable principles and methods, and (d) the
witness has applied the principles and methods reliably to the facts of the
case. 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). In determining who is qualified in the pertinent art under
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. See 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.” PO Mot. to Exc. 1–4; see also id. at 5–7 (discussing
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Mr. Occhiogrosso’s experience with respect to these areas). 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. to Mot. to Exc. 1–2.
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 “qualified in the pertinent art.” Sundance,
550 F.3d at 1363–64; see SEB, 594 F.3d at 1372–73; Mytee, 439 Fed. App’x
at 886–87. 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 Pet. Opp. to Mot. to Exc. 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 ’740 patent “relates to the general field
of telephone communications.” Ex. 1001, 1:25–26. The ’740 patent focuses
on a particular application of that technology: people who need assistance in
using telecommunications devices. Id. at 1:25–2:36 (describing various
prior art assistive technologies to help characterize the evolution of assistive
technologies). The ’740 patent also summarizes the invention as the use of a
speech recognition computer program trained to the voice of the call
assistant to translate promptly the words spoken by an intermediary call
assistant into a “high speed digital communication message [that] is then
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transmitted electronically promptly by telephone to a visual display
accessible to the” hearing-assisted user. Id. at 2:46–52. Thus, we determine
the pertinent art to be telecommunications systems, because any
communications technology would be pertinent art to the ’740 patent.
Although 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.
The qualifications of Mr. Occhiogrosso, as summarized in his
curriculum vitae (Ex. 1019), qualify him to give expert testimony on the
subject of telecommunication technologies. He possesses a Bachelor of
Science in Electrical Engineering and a Master of Science in Electrical
Engineering. Ex. 1019, 2. Mr. Occhiogrosso testifies that he has more than
thirty years of experience in the field of telecommunications and information
technology, and he has planned, designed, implemented, and managed large
scale projects involving wired and wireless communication systems,
including transmission of voice and data. Ex. 1018 ¶ 7; see also Ex. 1019,
2–6 (detailing Mr. Occhiogrosso’s enterprise consulting engagements,
research and development, and wireless experience).
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 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
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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.”).
Patent Owner also contends that Mr. Occhiogrosso’s testimony fails to
identify the level of skill in the art in his declaration (Ex. 1018), fails to give
any consideration to what one of ordinary skill in the art would have known
or not known, is unsupported and unreliable, and does not consider
secondary considerations. PO Mot. to Exc. 8; PO Resp. 9–10; PO Reply to
Opp. to Mot. to Exc. 4. Petitioner counters that Mr. Occhiogrosso
“consistently applied his definition of a [person of ordinary skill in the art]
throughout his testimony” and, in a supplemental declaration, “made explicit
the level of ordinary skill he applied” in his first declaration. Pet. Opp. to
Mot. to Exc. 15.
Patent Owner’s argument goes more to the weight we should accord
Mr. Occhiogrosso’s testimony, rather than its admissibility. It is within our
discretion to assign the appropriate weight to the testimony offered by
Mr. Occhiogrosso. See, e.g., Yorkey, 601 F.3d at 1284. Moreover,
Mr. Occhiogrosso provided a supplemental declaration identifying the level
of skill in the art and confirming his opinion presented in the earlier
declaration in view of the level of skill in the art. See Ex. 1040 ¶¶ 12–17,
19. Mr. Occhiogrosso’s testimony also confirmed his legal understanding of
obviousness, including secondary considerations. See id. ¶¶ 20–26.
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Under the totality of these circumstances, we decline to exclude the
testimony of Mr. Occhiogrosso. Accordingly, Patent Owner’s Motion to
Exclude Mr. Occhiogrosso’s testimony is denied.
D. Asserted Ground of Obviousness over McLaughlin and Ryan
Petitioner contends that claims 1 and 2 are unpatentable under
35 U.S.C. § 103(a) as obvious over McLaughlin and Ryan, relying on
declaration testimony of Mr. Occhiogrosso. Pet. 26–39 (citing Ex. 1018).
Patent Owner responds, relying on declaration testimony of Mr. Steel and
Mr. Ludwick. PO Resp. 17–59 (citing Exs. 2001, 2003). Having considered
the parties’ contentions and supporting evidence, we determine that
Petitioner has demonstrated by a preponderance of the evidence that claims
1 and 2 are unpatentable for obviousness over McLaughlin and Ryan.
1. Summary of McLaughlin
McLaughlin describes a simultaneous voice and data (SVD) modem
used in connection with a relay service in which an operator mediates
communications between a hearing person and a hearing-impaired person.
Ex. 1009, 30:13–31:63. In one embodiment described in McLaughlin, the
hearing-impaired user has an answering device or system, comprising two
SVD modems, connected to two communication links, Line A and Line B.
Id. at 30:59–63, 32:17–19. These communication links may use local area
network (LAN), wide area network (WAN), or Internet communications
over analog lines or digital lines, such as Integrated Services Digital
Network (ISDN) or digital subscriber line (DSL) technology. Id. at 30:46–
53. When a voice call from the hearing user arrives on Line A, the
answering device sets up an SVD link with the relay service on Line B.
Id. at 31:35–40. Voice sounds received from the hearing user on Line A are
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sent to the relay operator on Line B. Id. at 31:41–43. The relay operator
translates the voice sounds into text, which is sent over Line B to appear on
the screen of the hearing-impaired user’s answering device. Id. at 31:43–47.
The hearing-impaired user also types responses back to the relay operator
over Line B. Id. at 31:47–49. The relay operator voices the text, and the
relay operator’s voice sounds are carried on Line B to the hearing-impaired
user’s answering device and passed over to Line A to be heard by the
hearing user. Id. at 31:49–52. Conversation among all three parties is “full
duplex,” so that all parties may talk or type simultaneously. Id. at 31:55–62.
2. Summary of Ryan
Ryan describes a relay interface system for communication between a
standard telephone set used by a hearing user and a TDD used by a hearing-
impaired person. Ex. 1004, Abstract, 1:6–10. Figure 1 of Ryan is set forth
below:

As shown in Figure 1, Ryan’s relay interface 10 includes
operator/relay terminal 12 and connects standard telephone set 14 with
TDD 16 having associated display 17. Id. at 3:43–48. Telecommunications
link 18 connects telephone 14 with relay interface 10 through agent
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device 20, and telecommunications link 22 connects TDD 16 with relay
interface 10 through relay terminal 12. Id. at 3:48–52. An operator or relay
agent typically is responsible for manipulating relay terminal 12 using
keyboard 26 to relay messages between telephone 14 and TDD 16.
Id. at 4:19–21. Ryan indicates, however, that speech recognition software
could be used to automate the relay function so that an operator or relay
agent would not be required. Id. at 4:21–24. Ryan specifically describes
using speech recognition software at agent device 20 to interpret a voice
message from a caller at telephone 14 and convert the message from a voice
format to a data format. Id. at 4:24–27. Ryan further indicates:
If the software is specifically designed to recognize the voice of
particular relay agents, the accuracy of the relay service may be
improved by having one of these agents listen to the caller and
repeat the voice message into a terminal adapted to convert the
agent’s voice message into a data message.
Id. at 4:33–38.
3. Claims 1 and 2
Claim 1 is a system claim reciting (i) a captioned telephone device at
the site of an assisted user, and (ii) a relay with voice recognition software
trained to the voice of a call assistant and operated by a call assistant to
create a text stream of the words spoken by a remote user, the text stream
being sent by Internet Protocol (IP) to the captioned telephone device.
Claim 2 is a method claim reciting the steps of (i) arranging a telephone call
between an assisted user and a remote user so that words spoken by the
remote user are also transmitted to a relay, (ii) a call assistant at a relay re-
voicing the remote user’s words into voice recognition software trained to
the voice of the call assistant to create a text stream and transmitting the text
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stream by IP to the assisted user, and (iii) the assisted user using a captioned
telephone device that receives and displays the text stream.
Petitioner asserts that McLaughlin teaches the captioned telephone
device and “arranging a telephone call” limitations with its description of an
assisted user’s answering device that receives voice sounds from a hearing
user on Line A, transmits those sounds to the relay operator on Line B, and
receives text from the relay operator on Line B. Pet. 29–31, 34–36, 38–39
(citing Ex. 1009, 31:41–62, 32:41–52). Petitioner also asserts that
McLaughlin teaches the use of IP for transmitting text. Pet. 33, 37–38
(citing Ex. 1009, 1:31–36, 30:46–53).
For the relay and re-voicing limitations, Petitioner relies on Ryan’s
relay interface system in which a relay agent is responsible for relaying
messages between phone 14 and TDD 16. Pet. 32, 36–37 (citing Ex. 1004,
4:19–38). Specifically, Petitioner relies on Ryan’s description of “speech
recognition software . . . employed at [relay agent] device 20 [and]
specifically designed to recognize the voice of particular relay agents” and
Ryan’s indication that “the accuracy of the relay service may be improved
by having one of these agents listen to the caller and repeat the voice
message into a terminal adapted to convert the agent's voice message into a
data message.” Pet. 32 (citing Ex. 1004, 4:19–38).
We find that Petitioner has shown by a preponderance of the evidence
that the combination of McLaughlin and Ryan teaches all the claim
limitations and has articulated sufficient reasoning for combining the
references. For the reasons explained below, we are not persuaded by Patent
Owner’s arguments to the contrary. See PO Resp. 19–57.
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a. “captioned telephone device”
Patent Owner argues that McLaughlin does not teach a captioned
telephone device because (i) McLaughlin’s answering device does not play
audio of the remote user’s voice to the assisted user, and (ii) McLaughlin
does not teach a device located at an assisted user’s station that performs all
the functions of a captioned telephone device. PO Resp. 19–24. We find
Patent Owner’s arguments unpersuasive. First, the claim language does not
require providing audio of the remote user’s voice to the assisted user.
Claim 1, for example, only requires the captioned telephone device to
receive voice signals. Similarly, our construction of “captioned telephone
device” only requires a device that receives and transmits voice signals, not
one that makes the received voice signals audible to the assisted user.
See supra II.A.1. Second, McLaughlin teaches an answering device that
receives voice on Line A and transmits voice and receives text on line B
using SVD modems, and also includes a screen for displaying text to a
hearing-impaired user, thereby meeting the requirements of a captioned
telephone device as we have construed the term. Ex. 1009, 30:46–48,
30:59–63, 31:41–47; 32:41–52. On this point, based on our review of
McLaughlin, we credit the testimony of Petitioner’s declarant, Mr.
Occhiogrosso, over that of Patent Owner’s declarant, Mr. Steel. See
Ex. 1018 ¶¶ 28–31; Ex. 2001 ¶¶ 48–50.
b. “voice recognition software trained to the
voice of the call assistant”
Patent Owner contends that Ryan does not disclose a relay with
“voice recognition software trained to the voice of the call assistant”
because Ryan’s software is “designed” to recognize the voice of particular
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relay agents. PO Resp. 29–31. According to Patent Owner, software
designed in advance of implementation at the source code level is not the
same as trained software. Id. at 29. As discussed previously, see supra
II.A.2, we do not agree with Patent Owner that trained voice recognition
software, as recited in the claims, precludes software that is trained during
the design phase, which Patent Owner contends is disclosed by Ryan. See
PO Resp. 30. Thus, we are not persuaded by Patent Owner’s argument,
which is premised on an incorrect claim construction. Moreover, Patent
Owner relies on testimony from Mr. Steel and Mr. Ludwick, which we do
not find persuasive because it is grounded in the state of the art in 1994, see
id. (citing Ex. 2001 ¶ 31; Ex. 2003 ¶¶ 22–26), rather than at the time of
invention of the ’740 patent, which is no earlier than 2001, the filing date of
related U.S. Patent No. 6,594,346.
7
See Pet. 9; Reply 2.
Next, relying on Mr. Ludwick’s testimony, Patent Owner contends
that Ryan does not disclose the recited “voice recognition software trained to
the voice of the call assistant,” because Ryan’s “voice recognition software
is written specifically to recognize the voices of a collection or group of
people, rather than a particular, individual call assistant.” PO Resp. 31
(citing Ex. 2003 ¶ 19). For the reasons discussed previously, we do not
agree that the claim language is limited to voice recognition software trained
to one, and only one, call assistant. See supra II.A.2. Thus, even if Ryan’s
software is trained to recognize the voices of a group of people rather than
an individual call assistant, we are not persuaded by Patent Owner’s
argument, which is premised on an incorrect claim construction.

7
The ’346 patent is the subject of related IPR2013-00545.
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Patent Owner also contends that, at most, Ryan is ambiguous as to the
disclosure of a call assistant re-voicing the words spoken by the remote user
into a computer to create a text stream of those words. PO Resp. 32–40. In
particular, Patent Owner contends that Ryan discloses a relay agent using re-
voicing as an error correction mechanism for individual, unrecognized
letters of a word. Id. at 34–40; see Ex. 1004, Abstract. We do not read
Ryan’s disclosure so narrowly. See Ex. 1004, 4:19–38.
Ryan’s technology is intended to “overcome[] the problem associated
with existing telecommunications relay services by providing a system and
method for correcting mistakes before the message is displayed at the end
user’s TDD.” Id. at 2:35–38 (Summary of the Invention). Ryan describes
ways to do so using speech recognition software. Id. at 4:19–38. One way
is automating the relay function so as to eliminate the need for a human
operator. Id. at 4:19–24. Ryan describes using speech recognition software
to convert the voice message from a caller to text “while providing an error
correction feature for words not recognized by the software.” Id. at 4:24–28.
Ryan further describes the error correction feature as having two forms—
phonetic spelling of the unrecognized word by the speech recognition
software or prompting the caller to spell the unrecognized word. Id. at 4:29–
33.
Ryan describes another way to improve the accuracy of a relay system
before the text is displayed at the TDD—if the speech recognition software
is designed specifically to recognize the voice of particular relay agents, a
relay agent “listen[s] to the caller and repeat[s] the voice message into a
terminal adapted to convert the agent’s voice message into a data message.”
Id. at 4:33–38. In contrast to Ryan’s description of the error correction by
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the caller spelling letters of an unrecognized word, here Ryan
unambiguously describes a call agent repeating the voice message of the
caller and using speech recognition software designed specifically to
recognize the voice of the relay agent to convert the agent’s voice message
into a data message.
Finally, we are not persuaded by Patent Owner’s argument that Ryan
must be read narrowly in view of the state of the telecommunications relay
art in 1994, the effective filing date of Ryan. See PO Resp. 40–43. A proper
obviousness analysis considers the prior art from the perspective of a person
having ordinary skill in the art at the time of the invention, which in this case
is no earlier than 2001. See 35 U.S.C. § 103(a); Pet. 9; Reply 2. As
Petitioner indicates, a person of ordinary skill in the art in 2001 would have
had in his possession related U.S. Patent No. 5,909,482 (“the ’482 patent”),
filed in 1997.
8
Reply 10. The ’482 patent expressly discloses the use of a
commercial software package, Dragon Naturally Speaking, for re-voicing a
remote user’s voice into voice recognition software trained to the voice of a
call assistant. Ex. 1002, 5:50–57; see Reply 10. With this background, a
person of ordinary skill in the art in 2001 would have viewed Ryan as
teaching voice recognition software trained to the voice of the call assistant.
c. “arranging a telephone call between an assisted user
and a remote user”
Patent Owner contends that McLaughlin does not teach this limitation
of claim 2 because McLaughlin discloses a relay that interrupts the
communication path from a hearing user to a deaf user, so there is no call

8
The ’482 patent is the subject of related IPR2013-00541.
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between an assisted user and a remote user. PO Resp. 44. According to
Patent Owner, Petitioner and its declarant, Mr. Occhiogrosso, have
misinterpreted the disclosure of McLaughlin. Id. As indicated with respect
to the “captioned telephone device” limitation, based on our review of
McLaughlin, we credit the testimony of Mr. Occhiogrosso over that of
Patent Owner’s declarant, Mr. Steel, as to the teachings of McLaughlin. See
Ex. 1018 ¶¶ 28–31; Ex. 2001 ¶¶ 48–50; Ex. 1040 ¶¶ 38–39. Specifically, we
find that McLaughlin teaches a voice call from a remote user arriving on
Line A at an assisted user’s answering device, which then sends the remote
user’s voice to the relay on Line B. See Ex. 1009, 30:31:41–47;
Ex. 1018 ¶ 28; Ex. 1040 ¶ 39. Thus, McLaughlin teaches “arranging a
telephone call between an assisted user and a remote user,” as recited in
claim 2.
d. Reasons to Combine McLaughlin and Ryan
Petitioner also 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 as combined in the manner proposed
by Petitioner. See KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006)); Pet. 26–27 (citing Ex. 1018 ¶¶ 36–37); Reply 11–13
(citing Ex. 1040 ¶¶ 53–55). 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 with a call assistant, but also
indicates that a relay may use automated equipment. Ex. 1009, 29:20–22.
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Ryan teaches using speech recognition software to automate the relay
function, but further teaches that the accuracy of the relay may be improved
if a call assistant re-voices the remote user’s words into voice recognition
software designed to recognize the call assistant’s voice. Ex. 1004, 4:33–38.
We are persuaded that a person of ordinary skill in the art would have
looked to Ryan for ways to automate the relay function in McLaughlin’s
system and would have recognized that Ryan’s intermediate re-voicing
solution—using voice recognition software trained to the call assistant’s
voice—would perform better than speaker-independent voice recognition
applied directly to the remote user’s voice. See Pet. 27; Ex. 1018 ¶ 36.
Patent Owner contends that one of ordinary skill in the art would not
have wanted to use McLaughlin’s “specialized equipment” in a traditional
relay like that taught by Ryan because such an arrangement would require an
expensive overhaul of Ryan’s system. PO Resp. 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 also argues that McLaughlin teaches away from the use
of trained voice recognition software. PO Resp. 55–57. In particular, Patent
Owner submits that McLaughlin explains the shortcomings of automated
speech recognition technology. Id. (citing Ex. 1009, 26:54–62).
McLaughlin’s statement, however, involves the application of speech
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recognition to voice messages left by callers, not voice recognition software
trained to the voice of a call assistant, i.e., speaker-dependent voice
recognition. McLaughlin, therefore, does not criticize, discredit, or
discourage the combination of Ryan’s re-voicing technique with
McLaughlin’s system. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004).
4. Secondary Considerations
Factual inquiries for an obviousness determination include secondary
considerations based on evaluation and crediting of objective evidence of
nonobviousness. Graham, 383 U.S. at 17–18. Notwithstanding what the
teachings of the prior art would have suggested to one with ordinary skill in
the art at the time of the invention, the totality of the evidence submitted,
including objective evidence of nonobviousness, may lead to a conclusion
that the challenged claims would not have been obvious to one with ordinary
skill in the art. In re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984).
Secondary considerations may include any of the following: long-felt but
unsolved need, failure of others, unexpected results, commercial success,
copying, licensing, and praise. See Graham, 383 U.S. at 17; Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007).
To be relevant, evidence of nonobviousness must be commensurate in
scope with the claimed invention. In re Kao, 639 F.3d 1057, 1068 (Fed. Cir.
2011). Thus, to be accorded substantial weight, there must be a nexus
between the merits of the claimed invention and the evidence of secondary
considerations. GPAC, 57 F.3d at 1580. “Nexus” is a legally and factually
sufficient connection between the objective evidence and the claimed
invention, such that the objective evidence should be considered in
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determining nonobviousness. Demaco Corp. v. F. Von Langsdorff Licensing
Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). The burden of showing that
there is a nexus lies with the Patent Owner. Id.; Paulsen, 30 F.3d at 1482.
Patent Owner alleges “substantial praise for the inventions claimed in
[Patent Owner’s] patents, including the ’740 Patent, the long-felt but
unresolved need of the deaf and hard of hearing community, the commercial
success of the products and services embodying the invention, and the
failure of others to provide a relay service or other solution that provided the
benefits of the claimed inventions.” PO Resp. 58. For support, Patent
Owner proffers declarations by Ms. Brenda Battat (Ex. 2006) and
Ms. Constance Phelps (Ex. 2007) describing general innovations of Patent
Owner’s CapTel Service and its CapTel phone and their benefits to the deaf
and hard of hearing community. PO Resp. 58–59. In an attempt to establish
the requisite nexus, Patent Owner relies on a declaration of Mr. Ludwick
(Ex. 2004) asserting that his expert declaration “explain[s], on a feature by
feature basis, the nexus between those secondary considerations and the
claimed design” and “illustrates, in chart form, that the CapTel system and
various models of CapTel phones embody the claims of the present
invention.” PO Resp. 58–59.
Patent Owner’s Response contains no substantive arguments. Id.
Instead, Patent Owner merely lists various common forms of secondary
considerations evidence, without exposition. This does 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. Thus, Patent
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Owner’s broad contentions regarding secondary considerations in its Patent
Owner Response do not demonstrate nonobviousness.
Moreover, Patent Owner’s declarations fail to establish a nexus
between the merits of the claimed invention and the evidence of secondary
considerations. To show a nexus, Patent Owner relies on Mr. Ludwick’s
declaration, which describes his visit to CapTel, Inc.’s relay center in
Madison, Wisconsin. Ex. 2004 ¶ 54. Mr. Ludwick’s chart presents his
conclusions based on personal observation that the CapTel Service meets
each claim limitation of the ’740 patent. Ex. 2004 ¶ 55 (pp. 44–47). For
example, regarding “a relay for converting voice to text, the relay including
a computer with voice recognition software and operated by a call assistant,
the voice recognition software of the relay trained to the voice of the call
assistant to create a text stream of the words spoken by a remote user, the
text stream being sent by [I]nternet [P]rotocol to the captioned telephone,”
recited in claim 1, Mr. Ludwick asserts:
I personally observed that the CapTel Service meets this
claim element. I inspected a CapTel relay call center and saw
that call assistants use voice recognition software and send
resulting text via IP connections to CapTel phones. I further
confirmed that the voice recognition software is trained to the
voice of the call assistants based on discussions with CapTel
and my own knowledge of CapTel Service. This feature of the
CapTel Service relay is present when the Service is used with
each of the CapTel Phones and has always been included as
part of the CapTel Service.
Ex. 2004 ¶ 55 (p. 45).
Because Mr. Ludwick’s conclusions are based on personal
observations, without sufficient supporting facts or data, his testimony has
little probative value. See Am. Acad. of Sci., 367 F.3d at 1368 (“[T]he Board
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is entitled to weigh the declarations and conclude that the lack of factual
corroboration warrants discounting the opinions expressed in the
declarations.”); see also Fed. R. Evid. 702 (providing one may testify in the
form of an opinion if the testimony is based on sufficient facts or data). As
such, Mr. Ludwick’s conclusory assertions do not provide a sufficient
connection between objective evidence and the claimed invention, and so do
not establish the requisite nexus between the merits of the claimed invention
and the evidence of secondary considerations.
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.
III. CONCLUSION
Based on the evidence and arguments, Petitioner has demonstrated by
a preponderance of the evidence that claims 1 and 2 of the ’740 patent are
unpatentable under 35 U.S.C. § 103(a) for obviousness over McLaughlin
and Ryan.
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IV. ORDER
Accordingly, it is:
ORDERED that claims 1 and 2 of U.S. Patent No. 7,319,740 B2 are
unpatentable; and
FURTHER ORDERED that Patent Owner’s Motion to Exclude
Mr. Occhiogrosso’s testimony is denied.
This is a final decision. 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