CaptionCall LLC v. Ultratec Inc

1. Case Identification

• Case #: IPR2013-00544
• Patent #: 8,213,578
• Filed: August 30, 2013
• Petitioner(s): CaptionCall, L.L.C.
• Patent Owner(s): Ultratec, Inc.
• Challenged Claims: 7-11

2. Patent Overview

• Title: System for Text Assisted Telephony
• Brief Description: The ’578 patent relates to telephone relay services for the hearing impaired. It describes a method where a human call assistant "re-voices" a hearing user's speech into a voice recognition system trained specifically to the assistant's voice to generate text captions for an assisted user.

3. Key Technical Contentions (Beyond Claim Construction)

• Petitioner’s core invalidity case relied on establishing a later priority date for the challenged claims than the one asserted by the Patent Owner. Petitioner argued that the ’578 patent was not entitled to its claimed priority date of September 8, 1997, for two primary reasons:
  • Broken Priority Chain: An intermediate application in the chain (leading to the ’082 patent) was filed on the same day its parent patent (’835 patent) issued. Petitioner contended this failed the 35 U.S.C. §120 requirement that a continuation be filed "before the patenting" of the parent, breaking the priority chain and resetting the effective priority date to August 5, 2003.
  • New Matter Introduction: Key limitations in the challenged claims, such as "captioned telephone service" (claim 7 preamble), a two-line telephone arrangement (claims 8-10), and IP connections (claim 11), were not disclosed in the original 1997 application. Petitioner argued this new matter limited the priority dates for claims 7-11 to 2001 or later.
• This priority date argument was critical for establishing that several key references, including publications by the same inventor (Engelke ’482) and the patent’s own parent application (’685 application), qualified as prior art against the challenged claims.

4. Grounds for Unpatentability

Ground 1: Claims 7-11 are obvious over Ryan in view of McLaughlin

• Prior Art Relied Upon: Ryan (Patent 5,809,112) and McLaughlin (Patent 6,181,736).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Ryan taught the core "re-voicing" concept of claim 7. Ryan explicitly disclosed improving relay service accuracy by having a relay agent listen to a caller and "repeat the voice message" into a terminal with speaker-dependent recognition software trained to the agent's voice. McLaughlin taught advanced relay systems, including a two-line captioned telephone arrangement where an assisted user connects directly to a hearing user on one line while connecting to a relay service on a second line. McLaughlin also disclosed using various network connections, including cellular, wireless, and IP, to facilitate these calls. The combination of Ryan's re-voicing method with McLaughlin's two-line system and network capabilities allegedly rendered claims 7-11 obvious.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the teachings because Ryan’s re-voicing technique directly addressed the known shortcomings of automated speech recognition accuracy that McLaughlin acknowledged. A POSITA would have found it obvious to incorporate Ryan's superior accuracy method into McLaughlin's more advanced and flexible two-line system to create a more robust and effective relay service.
  • Expectation of Success: The combination involved applying a known technique for improving accuracy (re-voicing) to an existing relay service framework, making the integration predictable and success highly likely.

Ground 2: Claim 7 is obvious over Wycherley in view of Yamamoto

• Prior Art Relied Upon: Wycherley (Patent 5,163,081) and Yamamoto (a March 1996 conference paper).
• Core Argument for this Ground:
  • Prior Art Mapping: Wycherley taught a relay service for the hearing impaired that used speaker-dependent voice recognition on an unimpaired caller's voice, with the option to transfer the call to a human attendant for manual transcription if automation failed. Yamamoto, in the context of a general telephone operator system, taught that voice recognition technology was not yet practical for direct use on a random user's voice. As an intermediate solution, Yamamoto disclosed a "preliminary step" of having an operator repeat the user's question and applying more accurate voice recognition to the operator's trained voice.
  • Motivation to Combine: A POSITA would combine Yamamoto's re-voicing technique with Wycherley's relay system to improve efficiency when full automation was not practical. In situations where Wycherley's system failed and transferred a call to a human attendant (e.g., for a new caller without a voice template), incorporating Yamamoto's re-voicing would allow the attendant to generate text faster and more accurately than manual typing. This would recapture the efficiency benefits of voice recognition that were the goal of Wycherley's system.
  • Expectation of Success: Both references operated in the field of telephone-based voice recognition, making the combination a straightforward application of a known solution to a known problem.

Ground 3: Claims 7-11 are anticipated by the ’685 application

• Prior Art Relied Upon: ’685 application (Application # 2002/0085685).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground relied on Petitioner's argument that the ’578 patent’s priority date was no earlier than August 5, 2003. The ’685 application, which corresponds to a parent patent in the asserted priority chain, was published on July 4, 2002, qualifying it as prior art under 35 U.S.C. §102(b). Petitioner asserted that the disclosure of the ’685 application was nearly identical to that of the ’578 patent and that it explicitly taught every limitation of challenged claims 7-11. This included the method of re-voicing by a call assistant, a two-line captioned telephone device, and transmitting words to the relay via cellular, wireless, or IP connections.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Engelke ’482 (by the same inventor) in view of Engelke ’405, Liebermann, and Pickett, which collectively taught the concepts of re-voicing, captioned telephones, two-line systems, and IP connections.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 7-11 of the ’578 patent as unpatentable.