PTAB

IPR2014-00780

CaptionCall LLC v. Ultratec Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: System for Text Assisted Telephony
  • Brief Description: The ’835 patent discloses a method and system for providing captioned telephone service to hearing-impaired users. The technology utilizes a "two-line" telephone that allows an assisted user to converse directly with a hearing user over a first telephone line while simultaneously initiating and maintaining a connection to a remote text-relay service over a second telephone line to receive real-time captions of the conversation.

3. Grounds for Unpatentability

Ground 1: Claims 6 and 8 are obvious over Liebermann, Engelke ’405, and Mukherji.

  • Prior Art Relied Upon: Lieberman (Patent 5,982,853), Engelke ’405 (Patent 5,724,405), and Mukherji (Patent 7,117,152).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Liebermann disclosed the foundational two-line architecture, wherein a user connects to another party on a first line while also connecting to a voice-to-text translation "Center" on a second dedicated line. Engelke ’405 was cited for teaching the modification of such systems to provide both voice and text to users with partial hearing (not only deaf users), as well as an "on/off" switch for captioning. Petitioner asserted that the key missing limitation—initiating captioning during an ongoing call—was taught by Mukherji, which disclosed enabling text assistance "at any other appropriate time during the session" via a user control, such as a "DISPLAY button."
    • Motivation to Combine: A POSITA would have been motivated to combine Liebermann and Engelke ’405 to adapt a known two-line system for a broader range of hearing impairments, which was a common design goal in the art. Petitioner argued that a POSITA would then further modify this combined system with Mukherji’s teachings to add the beneficial feature of on-demand captioning. This represented the use of a known technique to improve a similar device, solving the predictable problem of needing transcription only for portions of a call.
    • Expectation of Success: The combination was presented as obvious to try, as the timing of caption initiation involves a finite number of possibilities (e.g., at the start, not at all, or on-demand). Since Mukherji taught one of these finite solutions, its application to the existing two-line architecture of Liebermann would be a simple matter of delaying the second-line connection until a user request, yielding a predictable result.

Ground 2: Claims 6 and 8 are obvious over Liebermann, Engelke ’405, and Schwartz.

  • Prior Art Relied Upon: Liebermann (Patent 5,982,853), Engelke ’405 (Patent 5,724,405), and Schwartz (Patent 6,668,044).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground presented a similar argument to Ground 1, substituting Schwartz for Mukherji. The combination of Liebermann and Engelke ’405 again provided the base two-line captioned telephone system. Schwartz was introduced to teach on-demand initiation, as it disclosed a centralized archiving and transcription facility that could be contacted during an ongoing conversation by "invoking a feature or button on [the] telephone set." Petitioner highlighted that Schwartz explicitly taught using two separate telephone lines to connect to the transcription service if conference calling was unavailable, mirroring Liebermann’s architecture.
    • Motivation to Combine: Petitioner contended that since Schwartz and the Liebermann/Engelke ’405 combination reside in the same field of endeavor (generating text from telephone calls) and solve similar problems, a POSITA would have been motivated to incorporate the on-demand transcription feature of Schwartz into the Liebermann/Engelke ’405 device to improve its functionality and user flexibility.
    • Expectation of Success: Success was argued to be highly predictable. The architecture to support the feature was already present in Liebermann. Implementing the teachings of Schwartz would merely require changing the initiation of the second-line connection from an automatic function to a user-triggered one, a straightforward modification with a known outcome.

Ground 3: Claims 6 and 8 are obvious over Liebermann, Sharman, and Mukherji.

  • Prior Art Relied Upon: Liebermann (Patent 5,982,853), Sharman (Patent 6,100,882), and Mukherji (Patent 7,117,152).
  • Core Argument for this Ground:
    • Prior Art Mapping: In this ground, Sharman was used in place of Engelke ’405. Liebermann again supplied the basic two-line device architecture. Sharman was cited for teaching a teleconferencing system that provides both audible speech and visually displayed text to assist users with impaired hearing, thereby teaching the combination of voice and text for an assisted user. As in Ground 1, Mukherji was relied upon to teach the initiation of text assistance mid-conversation upon a "request from the user."
    • Motivation to Combine: A POSITA would have been motivated to combine Sharman's voice-and-text feature with Liebermann’s two-line architecture to improve the base device for users with some residual hearing. This improved system would then be combined with Mukherji’s on-demand activation feature to provide users the flexibility to enable captioning only when needed. Petitioner noted that Sharman was cited as prior art during the prosecution of Mukherji, suggesting a POSITA would have been aware of both references and motivated to combine their respective teachings.
    • Expectation of Success: Similar to the other grounds, Petitioner argued a POSITA would have had a reasonable expectation of success. Combining these known elements—a two-line system, simultaneous voice/text delivery, and on-demand activation—was a predictable integration of existing technologies to achieve a desired, improved functionality.

4. Key Claim Construction Positions

  • Petitioner argued that the challenged claims should be given their broadest reasonable construction and submitted that the constructions adopted by the PTAB in a prior IPR decision involving the ’835 patent should be applied.
  • Key constructions included:
    • "captioned telephone device": a device that transmits and receives voice signals and text information and displays text to an assisted user.
    • "Control Limitation" (claim 6[a]): This limitation was argued to have three distinct elements: a timing element ("while the assisted user is conversing"), a context element (over a "first direct telephone connection"), and an action element ("operating a control...to initiate a captioning service"). This construction was central to mapping the on-demand features of Mukherji and Schwartz to the claims.

5. Relief Requested

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