CaptionCall LLC v. Ultratec Inc

1. Case Identification

• Case #: IPR2015-01358
• Patent #: 7,006,604
• 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 ’604 patent discloses a telecommunication relay system that uses a portable "personal interpreter" device to facilitate communication for an assisted user. The system provides both a real-time, voice-to-text transcription and the original voice audio of a remote hearing user to the assisted user over a single telephone connection.

3. Grounds for Unpatentability

Ground 1: Obviousness over Engelke ’482 and Engelke ’405 - Claim 1 is obvious over Engelke ’482 in view of Engelke ’405.

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

  • Petitioner first established that Engelke ’482, a parent patent to the ’604 patent, qualifies as prior art under 35 U.S.C. §102(b). It argued the ’604 patent was not entitled to the earlier priority date of the ’482 patent because the limitation of transmitting both the hearing user’s voice and the text transcription back to the personal interpreter was new matter not disclosed in Engelke ’482. With a priority date of February 14, 2001, the ’604 patent is subject to Engelke ’482, which was published on June 1, 1999.

  • Prior Art Mapping: Petitioner asserted that Engelke ’482 discloses nearly every element of Claim 1 verbatim, as much of the ’604 patent’s specification is copied directly from it. Engelke ’482 taught a "personal interpreter" system that connects to a remote "re-voicing" relay to provide text transcription for a deaf user. The only feature of Claim 1 not disclosed in Engelke ’482 was the transmission of the hearing user's voice back to the personal interpreter along with the text stream. Petitioner argued this missing element was explicitly taught by Engelke ’405. Engelke ’405 disclosed a "text enhanced telephone" (TET) system designed for hard-of-hearing users, which provided both "normal voice communication" and the transcribed text to assist users who were not completely deaf.

  • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would have been motivated to combine the teachings of the two references for several reasons:

    • Applying a Known Technique: Engelke ’405 taught a known technique for improving a text-only device (for deaf users) to make it more useful for hard-of-hearing users by adding the original audio stream. Applying this known improvement to the analogous base device of Engelke ’482 (the personal interpreter) was a straightforward application of a known technique to improve a similar device, which would yield the predictable result of a system better suited for the hard-of-hearing.
    • Obvious to Try: A POSITA seeking to improve the ’482 system for a broader market would have recognized the need to accommodate hard-of-hearing users. The prior art offered a finite number of known, predictable solutions for assisted communication (e.g., text-only, voice-carry-over, or combined voice-and-text). Selecting the combined voice-and-text approach from Engelke ’405 to augment the ’482 system would have been an obvious choice to solve this recognized need.
    • Common Inventor and Field: Both Engelke ’482 and Engelke ’405 shared a common inventor (Engelke) and were directed to the same technical field of improving telecommunication relay systems for users with hearing impairments. A POSITA would naturally look to an inventor's own related prior art to find solutions for improving a device.
    • Synchronization Benefits: Petitioner also cited secondary references (Van Thong, Bannister, and Hiroi) to show that a known problem in the art was the lack of synchronization between live audio and its transcription. These references taught that delaying the audio at the relay to match the transcription delay, and then sending a synchronized voice-and-text stream to the user, resulted in a more natural and comprehensible experience. This provided a strong technical motivation for the specific claimed method—routing the hearing user's voice to the relay and back—in order to synchronize it with the text before presenting both to the assisted user.

  • Expectation of Success: A POSITA would have a reasonable expectation of success in making the combination. The personal interpreter in Engelke ’482 was already configured to receive and play audio from the relay (specifically, the call assistant's voice). Modifying the relay to also transmit the hearing user's voice, using known analog or digital techniques taught in Engelke ’405, would have been a straightforward and predictable modification.

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 construction, based on an explicit definition in the ’604 patent’s specification, is important because it supports the motivation to combine references to serve a broader user base beyond just deaf individuals, particularly those who are hard-of-hearing and would benefit from receiving both voice and text.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claim 1 of the ’604 patent as unpatentable.