CaptionCall LLC v. Ultratec Inc

1. Case Identification

• Case #: IPR2015-01357
• Patent #: 6,934,366
• Filed: June 8, 2015
• Petitioner(s): CaptionCall, L.L.C.
• Patent Owner(s): Ultratec, Inc.
• Challenged Claims: 1

2. Patent Overview

• Title: Relay for Personal Interpreter
• Brief Description: The ’366 patent relates to a method for operating a telecommunications relay system to facilitate communication for an assisted user. The system uses a call assistant to "re-voice" a hearing user's speech, which is then converted to text via voice recognition software and transmitted, along with the original (delayed) voice audio, to the assisted user's device for synchronized display and playback.

3. Grounds for Unpatentability

Ground 1: Claim 1 is obvious over Engelke ’482, Engelke ’405, and Hiroi.

• Prior Art Relied Upon: Engelke ’482 (Patent 5,909,482), Engelke ’405 (Patent 5,724,405), and Hiroi (Japanese Patent Publication 10-234016).
• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner’s argument hinged on establishing that Engelke ’482 qualifies as prior art. Petitioner argued that Claim 1 of the ’366 patent was not entitled to the priority date of its parent application (which became Engelke ’482) because key limitations—specifically, transmitting both voice and text to the user and delaying the voice for synchrony—constituted new matter first introduced in a later continuation-in-part application. Because Engelke ’482 was published more than one year before this later priority date, Petitioner asserted it is valid prior art under 35 U.S.C. §102(b).

  • Petitioner argued that the combination of the three references taught every limitation of the challenged claim:

    • Engelke ’482 taught the foundational "revoicing relay" system. It disclosed a method where a call assistant listens to a hearing user, speaks (re-voices) those words into a computer with voice recognition software trained to the assistant's voice, and transmits the resulting digital text stream to a deaf user. Petitioner contended that Engelke ’482 disclosed the core method of using a call assistant and voice recognition to facilitate communication but was limited to transmitting only text to the end-user.
    • Engelke ’405 addressed the needs of hard-of-hearing users, as opposed to deaf users. It taught a "text enhanced telephony" system that explicitly disclosed transmitting both the normal voice communication and the transcribed text to the assisted user simultaneously over a single telephone line. Petitioner argued this reference supplied the limitation of transmitting both voice and text, which was missing from the text-only system of Engelke ’482.
    • Hiroi addressed the problem of synchronizing text captions with associated audio. It explicitly disclosed a system that uses a buffer to delay an audio signal for a fixed or variable period until the corresponding text transcription is generated. This allows the audio and text to be transmitted or displayed synchronously. Petitioner mapped this teaching directly to the final limitation of Claim 1, which requires delaying the hearing user's voice to make the received text and voice "closer to the synchrony."

  • Motivation to Combine:

    • A person of ordinary skill in the art (POSITA) would combine Engelke ’482 and Engelke ’405 because they share a common inventor, address the same technological field of relay services, and are fully compatible. Engelke ’405 provided a known technique—adding voice to the text stream—to improve a similar device (the text-only relay of Engelke ’482) for a known purpose: better serving hard-of-hearing users. This presented a predictable solution to a known market need.
    • A POSITA, having combined the Engelke references to create a system that transmits both voice and text, would immediately recognize the well-known problem of latency between the live audio and the generated captions. Hiroi provided an explicit solution to this known problem. A POSITA would combine Hiroi’s audio delay buffer into the Engelke system to improve its functionality and provide a more natural and comprehensible user experience, which was the overarching goal of such relay systems.

  • Expectation of Success:

    • Petitioner argued that a POSITA would have had a high expectation of success. The combination of Engelke ’482 and ’405 involved integrating compatible technologies from the same inventor to achieve a predictable result. Furthermore, implementing the audio delay taught by Hiroi was technically straightforward. Engelke ’482 already disclosed a computer and a "voice input buffer" at the relay. A POSITA could have readily configured the existing microprocessor and memory to perform the buffering function described in Hiroi, yielding the predictable result of synchronized voice and text output.

4. Key Claim Construction Positions

• Petitioner argued that the term "assisted user" should be construed to mean "a user who may be deaf or hard of hearing, but who also may be a normally hearing person who simply wants text assistance for some reason."
• This proposed construction was based on an explicit definition provided in the specification of the ’366 patent. The construction was material to the obviousness argument, as it aligned the scope of the challenged claim with the teachings of Engelke ’405, which was specifically directed at improving relay systems for hard-of-hearing users who benefit from receiving both audio and text.

5. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claim 1 of Patent 6,934,366 as unpatentable.