CaptionCall LLC v. Ultratec Inc

1. Case Identification

• Case #: IPR2013-00545
• Patent #: 6,594,346
• Filed: August 30, 2013
• Petitioner(s): CaptionCall, L.L.C.
• Patent Owner(s): Ultratec, Inc.
• Challenged Claims: 1-2

2. Patent Overview

• Title: Relay for Personal Interpreter
• Brief Description: The ’346 patent discloses telephone relay services for hearing-impaired individuals. The system uses a human call assistant who "re-voices" a hearing user's speech into a speech-recognition system trained to the assistant's voice, and then simultaneously transmits both the resulting text captions and the original voice audio to the assisted user's "captioned telephone."

3. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Argument: A central contention of the petition was that the challenged claims were not entitled to the priority date of their parent application, Patent 5,909,482. Petitioner argued that the limitation of "transmitting both the digital text message stream and the voice of the hearing user" was new matter first introduced in the ’346 patent. Because the ’482 patent was published more than one year before the ’346 patent’s filing date, Petitioner asserted that the ’482 patent itself qualified as prior art against the challenged claims under 35 U.S.C. §102(b).
• Re-Voicing as a Known Technique: The petition argued that "re-voicing" was a known, intermediate solution in the art to overcome the poor accuracy of speaker-independent voice recognition systems. By having a call assistant repeat a user's speech into a system specifically trained to the assistant's voice (speaker-dependent), the art recognized that translation accuracy could be significantly improved without requiring full automation.

4. Grounds for Unpatentability

Ground 1: Obviousness over Engelke in view of Engelke - Claims 1-2 are obvious over Engelke ’482 in view of Engelke ’405.

• Prior Art Relied Upon: Engelke (Patent 5,909,482) and Engelke (Patent 5,724,405).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Engelke ’482 taught every element of the challenged claims except for the simultaneous transmission of both voice and text to the assisted user. The ’482 patent disclosed a relay method where a call assistant re-voices a hearing person's words into a digital computer with voice recognition software trained to the assistant's voice to create a text stream. Petitioner asserted that the missing element was supplied by Engelke ’405, which explicitly described a "text-enhanced telephone" system that receives and presents both the voice of a hearing user and a corresponding text stream simultaneously to improve communication for the hard of hearing.
  • Motivation to Combine: Petitioner contended a POSITA would combine these references for two primary reasons. First, both patents shared the same inventor and original assignee, making it natural to look to the inventor's related work. Second, both patents aimed to improve telephone relays for hearing-impaired users. A POSITA would have been motivated to incorporate the simultaneous voice-and-text feature from the ’405 patent into the improved re-voicing relay of the ’482 patent to further enhance the "conversational-like interchange" by allowing users to leverage any residual hearing ability.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining the known re-voicing technique of Engelke ’482 with the known simultaneous voice/text transmission of Engelke ’405, as it involved applying a known technique to a known system to achieve a predictable result.

Ground 2: Obviousness over Ryan in view of Engelke ’405 - Claims 1-2 are obvious over Ryan in view of Engelke ’405.

• Prior Art Relied Upon: Ryan (Patent 5,809,112) and Engelke (Patent 5,724,405).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground presented an alternative to Engelke ’482 for the primary reference. Petitioner argued that Ryan, which was not considered during prosecution, disclosed using a re-voicing relay agent to improve accuracy. Ryan taught that a relay agent could "listen to the caller and repeat the voice message into a terminal" with speech recognition software "specifically designed to recognize the voice of particular relay agents." As in Ground 1, Petitioner relied on Engelke ’405 to supply the teaching of simultaneously transmitting both the voice and the generated text to an assisted user's device.
  • Motivation to Combine: The motivation was that both references sought to improve relay communication services for the hearing impaired. A POSITA starting with Ryan's re-voicing system would recognize the benefits of providing both voice and text to the end-user, as taught by Engelke ’405, to improve clarity and leverage the user's residual hearing. Combining Ryan's method for accurate text generation with Engelke '405's method for enhanced media delivery was presented as a common-sense approach to improving the overall user experience.

Ground 3: Obviousness over Engelke ’482 in view of Alshawi - Claims 1-2 are obvious over Engelke ’482 in view of Alshawi.

• Prior Art Relied Upon: Engelke (Patent 5,909,482) and Alshawi (Patent 5,815,196).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground substituted Alshawi for Engelke ’405 as the secondary reference. Petitioner again relied on Engelke ’482 for its disclosure of the re-voicing relay system. Alshawi, also not considered during prosecution, was cited for its teaching of a videophone system where a translation of speech is displayed as text while the "original, untranslated speech is played over a speaker." Alshawi taught that a CPU could output a signal with both an audio portion containing the original speech and a subtitled video portion.
  • Motivation to Combine: Petitioner argued that both Engelke ’482 and Alshawi sought to reduce delays and create a more "conversational-like" exchange. A POSITA would be motivated to implement the simultaneous voice and text transmission described in Alshawi into the re-voicing relay of Engelke ’482 to further this shared goal. This combination would provide more personal communication and improve understanding by allowing the user to benefit from both the text translation and the original audio.
• Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations of Ryan in view of Engelke '405 and Wycherley; Ryan in view of Alshawi; and Ryan in view of Alshawi and Wycherley. These grounds relied on similar rationales, using Wycherley to further support the common knowledge of trained voice recognition in relay systems.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1 and 2 of Patent 6,594,346 as unpatentable.