CaptionCall LLC v. Ultratec Inc

1. Case Identification

• Case #: IPR2013-00549
• Patent #: 6,603,835
• Filed: August 30, 2013
• Petitioner(s): CaptionCall, L.L.C.
• Patent Owner(s): Ultratec, Inc.
• Challenged Claims: 1-8

2. Patent Overview

• Title: System for Text Assisted Telephony
• Brief Description: The ’835 patent discloses a telecommunication system for hearing-impaired users. The system uses a "two-line" captioned telephone that establishes a direct voice connection with a hearing user on a first line while simultaneously receiving a text transcription of the hearing user's speech from a remote relay service on a second line.

3. Grounds for Unpatentability

Ground 1: Claims 1-8 are obvious over McLaughlin in view of Engelke ’405.

• Prior Art Relied Upon: McLaughlin (Patent 6,181,736) and Engelke ’405 (Patent 5,724,405).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that McLaughlin taught the core two-line architecture of the challenged claims: a communication device for an impaired user that connects to a hearing user on a first line ("Line A") while also connecting to a relay service on a second line ("Line B"). The device in McLaughlin sends the hearing user's voice from the first line to the relay on the second line for transcription. Engelke ’405 was cited for its teaching of modifying relay services to provide different modes of assistance, including providing both the caller's voice and a textual transcript to a user with attenuated (but still functional) hearing.
  • Motivation to Combine: A POSITA would combine these references because both contemplated using a relay to assist users with different types of hearing impairments. Petitioner asserted it would have been an obvious design choice to configure McLaughlin's established two-line hardware to provide the specific voice-plus-text assistance for a hard-of-hearing user, as explicitly taught by Engelke ’405.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining the known two-line architecture of McLaughlin with the known relay service features of Engelke ’405, as the integration involved predictable telecommunication technologies.

Ground 2: Claims 6 and 8 are obvious over McLaughlin in view of Engelke ’405 and Mukherji.

• Prior Art Relied Upon: McLaughlin (Patent 6,181,736), Engelke ’405 (Patent 5,724,405), and Mukherji (Patent 7,117,152).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built on the McLaughlin/Engelke ’405 combination to specifically address the limitation in claims 6 and 8 requiring an assisted user "operating a control on the captioned telephone device to initiate a captioning service" while already conversing. Petitioner argued Mukherji taught this precise functionality. Mukherji disclosed enabling text assistance for a voice call mid-conversation via a user interface control, such as a "DISPLAY button," in response to a user request or detected degradation in voice quality.
  • Motivation to Combine: A POSITA would have been motivated to add Mukherji's user-initiated control to the base system of McLaughlin/Engelke ’405. Petitioner contended that the underlying problem of assisting compromised voice communication is analogous, whether the compromise is due to hearing loss (McLaughlin/Engelke) or poor network quality (Mukherji), making the solution of on-demand text assistance readily transferable to the assistive telephony art.

Ground 3: Claims 1-8 are obvious over Liebermann in view of Engelke ’405.

• Prior Art Relied Upon: Liebermann (Patent 5,982,853) and Engelke ’405 (Patent 5,724,405).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was presented as an alternative to Ground 1, with Liebermann serving as the primary reference instead of McLaughlin. Petitioner argued Liebermann disclosed a two-line communication device where a hearing-impaired user connects to a hearing user over a first line while also connecting to a voice-to-text translation "Center" over a second "dedicated" line. As in Ground 1, Engelke ’405 was relied upon for the teaching of providing simultaneous voice and text to users with attenuated hearing.
  • Motivation to Combine: The motivation paralleled that of Ground 1. A POSITA would combine the references because tailoring existing assistive systems for various user impairments was a well-known practice. It would have been obvious to configure the known two-line system of Liebermann to support the specific needs of a hard-of-hearing user (as taught by Engelke ’405) by providing both voice and text.
• Additional Grounds: Petitioner asserted additional obviousness challenges based on various combinations of McLaughlin, Liebermann, Engelke '405, Mukherji, and Engelke '482. These grounds were asserted to address specific claim limitations, such as the use of particular voice recognition software and to provide alternative invalidity theories.

4. Key Technical Contentions (Beyond Claim Construction)

• Priority Date of Challenged Claims: A central contention of the petition was that claims 1-8 of the ’835 patent were not entitled to the priority date of their parent applications. Petitioner argued that the core "two-line" telephone concept was new matter first introduced in the ’835 patent application itself, which was filed as a continuation-in-part (CIP). As such, Petitioner contended the effective filing date for the challenged claims was August 23, 2001. This argument was critical because it made the parent ’482 patent (issued June 1, 1999) available as prior art under 35 U.S.C. §102(b).

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-8 of Patent 6,603,835 as unpatentable.