PTAB

IPR2013-00550

CaptionCall LLC v. Ultratec Inc

Key Events

Petition

petition

Title: System for Text Assisted Telephony
Brief Description: The ’082 patent describes a system for assisting hearing-impaired users with a "two-line" captioned telephone. The system allows a user to conduct a voice call with a hearing person on a first telephone line while simultaneously receiving a real-time text transcription of the conversation from a remote relay service over a second telephone line.

Prior Art Relied Upon: McLaughlin (Patent 6,181,736).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that McLaughlin, which is directed to network technology and modems for assisting impaired users, discloses every element of claim 1. Specifically, McLaughlin described a device allowing a deaf user to connect to a hearing user over a first line ("Line A") while simultaneously connecting to a relay service over a second, simultaneous voice and data link ("Line B"). The system forwards the hearing user's voice from Line A to the relay operator on Line B, who then translates the voice into text and transmits it back to the user's display on Line B. Petitioner asserted this directly teaches the claimed two-line architecture for receiving voice on one line and relay-provided text on another.

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 contended that McLaughlin provided the foundational two-line communication architecture. Engelke '405, by the same inventors as the challenged patent, taught modifying existing relay services to accommodate various user impairments beyond deafness. Engelke '405 specifically disclosed a "text enhanced telephone" (TET) system that provides a user with attenuated but functional hearing with both the caller's voice and a simultaneous text transcript of the conversation.
- Motivation to Combine: A POSITA would combine these references because both addressed the known problem of adapting relay services for users with different types of hearing impairments. Since McLaughlin taught a flexible two-line system and Engelke '405 taught the specific feature of providing simultaneous voice and text for the hard-of-hearing, a POSITA would have been motivated to configure McLaughlin’s two-line device to provide the voice-and-text assistance mode described in Engelke '405.
- Expectation of Success: Combining the known assistance feature from Engelke '405 with the known two-line system from McLaughlin would have been straightforward for a POSITA and would have yielded the predictable result of a captioned telephone service for hard-of-hearing users.

Prior Art Relied Upon: The ’685 Publication (Application # 2002/0085685).
Core Argument for this Ground:
- Prior Art Mapping: This ground rested on Petitioner's argument that the ’082 patent was not entitled to its claimed priority date (see Section 4, below). Petitioner asserted that the effective filing date of claim 1 was the patent's actual filing date of August 5, 2003. The ’685 application, which is the published application of the parent ’835 patent, was published on July 4, 2002—more than one year before this effective filing date. Because the ’685 application contains the same disclosure as the challenged ’082 patent, Petitioner argued it constitutes an anticipatory prior art reference under §102(b).
Additional Grounds: Petitioner asserted additional challenges against claim 1, including anticipation by Liebermann (Patent 5,982,853) and an obviousness challenge based on Liebermann in view of Engelke '405.

Priority Date Challenge: The central contention underpinning all grounds was that claim 1 of the ’082 patent is not entitled to the early priority date of its alleged parent applications. Petitioner argued that the key claimed concept—a "two-line captioned telephone" where one line is a direct voice call and the second is for relay text—was new matter first disclosed in the parent ’835 patent, filed August 23, 2001. Therefore, claim 1 could not claim priority to any earlier application.
Improper Continuation Filing: Petitioner further argued that the ’082 patent application was not co-pending with its parent ’835 patent because it was filed on the same day the ’835 patent issued, not "before" the patenting as required by statute. This procedural defect, if accepted, would mean the ’082 patent’s effective priority date is its actual filing date of August 5, 2003. This later date makes critical references, such as the ’685 application, available as prior art.

Petitioner requested the institution of an inter partes review and the cancellation of claim 1 of Patent 7,003,082 as unpatentable.