PTAB

IPR2013-00542

CaptionCall LLC v. Ultratec Inc

Key Events

Petition

petition

Title: System for Text Assisted Telephony
Brief Description: The ’740 patent relates to a telephone relay service for hearing-impaired individuals. The technology involves a "captioned telephone device" that receives both voice audio and a corresponding text stream over an internet protocol (IP) connection from a relay center, where a human call assistant "re-voices" a remote user's speech into a voice recognition system trained to the assistant's voice to generate the text.

Prior Art Relied Upon: McLaughlin (Patent 6,181,736) and Ryan (Patent 5,809,112).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that McLaughlin disclosed the core system architecture, including a two-line telephone system for hearing-impaired users that could connect to a relay service via IP-based networks (e.g., LAN, WAN, or the Internet). This system provided both voice from a remote user and text from the relay. Petitioner asserted that Ryan taught the missing element: improving the accuracy of such relay services by using "re-voicing," where a human relay agent listens to a caller and repeats their words into a speech recognition system specifically trained to the agent's voice.
- Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the teachings because Ryan’s re-voicing scheme was a known solution to address the acknowledged shortcomings of accuracy and speed in the automated speech recognition systems contemplated by McLaughlin.
- Expectation of Success: A POSITA would have expected success in combining these elements, as it involved applying a known accuracy-improvement technique (re-voicing) to a known telecommunication system for the hearing impaired, resulting in a predictable increase in transcription quality.

Prior Art Relied Upon: Engelke ’405 (Patent 5,724,405), Ryan (Patent 5,809,112), and Pickett (WO 99/52237).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner contended that Engelke ’405 taught a foundational "captioned telephone service" that provided a user with both the voice of a hearing user and a simultaneous textual translation of that voice over a single telephone line. As in Ground 1, Ryan supplied the teaching of a human-assisted, re-voicing relay using trained speech recognition to improve accuracy. Pickett was introduced to explicitly teach the use of an Internet Protocol connection for transmitting both voice and data, describing a system to "route all calls as voice over IP (‘VoIP’)."
- Motivation to Combine: A POSITA would combine Engelke ’405 and Ryan to improve the efficiency and accuracy of the voice-to-text relay service. This combination would then be integrated with Pickett’s IP-based system to leverage a more modern and efficient network for transmitting simultaneous voice and text data, which Pickett taught could be done with minimal resource consumption.
- Expectation of Success: The combination was argued to be predictable, as it involved upgrading a known service (captioned telephony from Engelke '405) with a known performance enhancement (re-voicing from Ryan) over a known, efficient communication protocol (IP from Pickett).

Prior Art Relied Upon: ’685 Publication (Application # 2002/0085685).
Core Argument for this Ground:
- Prior Art Mapping: This ground hinged on Petitioner's argument that the ’740 patent was not entitled to its claimed priority date earlier than August 5, 2003 (see Section 5 below). The ’685 Publication, which corresponds to the parent ’835 patent, was published on July 4, 2002, and therefore qualified as prior art under 35 U.S.C. §102. Petitioner asserted that the disclosure of the ’685 Publication is identical to that of the ’740 patent and, as such, teaches each and every limitation of the challenged claims.
Additional Grounds: Petitioner asserted several other obviousness challenges based on different combinations of the primary references, including McLaughlin in view of Engelke ’482; McLaughlin in view of Ryan and Engelke ’405; McLaughlin in view of Engelke ’482 and Engelke ’405; and Engelke ’405 in view of Engelke ’482 and Pickett. These grounds relied on similar rationales, substituting Engelke ’482 (which also taught a re-voicing relay) for Ryan.

Term: "also transmitted to a relay" (Claim 2).
Petitioner argued that this phrase was amenable to two constructions, both of which would render the claim unpatentable. The primary "two line construction" would mean that words from the remote user are first sent directly to the assisted user, and then also sent from the assisted user's device to the relay. Alternatively, a broader "single/two line construction" would cover any technique for transmitting the words to the relay.

A central contention of the petition was that the ’740 patent’s effective priority date is no earlier than February 14, 2001, not the claimed 1997 date. Petitioner argued this for two primary reasons:
- A break in the patent's priority chain occurred because an intermediate application was filed on the same day its parent patent issued, which Petitioner argued fails the statutory requirement that a continuation be filed "before" the patenting of the parent.
- Key claim limitations, including the use of an IP connection and a two-line captioned telephone, constitute new matter first introduced in later-filed continuation-in-part applications in 2001.
This later priority date was critical for establishing the validity of several prior art references, including the ’685 Publication relied upon for anticipation.

Petitioner requested the institution of an inter partes review and the cancellation of claims 1 and 2 of Patent 7,319,740 as unpatentable.