PTAB

IPR2019-00318

CaptionCall, L.L.C. v. Ultratec, Inc.

Log In

1. Case Identification

2. Patent Overview

  • Title: System for Text Assisted Telephony
  • Brief Description: The ’380 patent relates to systems and methods for facilitating telephone communication between a hearing user and a hard-of-hearing user. The technology involves a hard-of-hearing user utilizing both a phone and a separate, “independent” captioned device that receives and displays text transcriptions of the hearing user’s speech from a relay service.

3. Grounds for Unpatentability

Ground 1: Obviousness over Liebermann, Engelke '405, and Mukherji - Claims 1-50 and 52-63 are obvious over Liebermann in view of Engelke '405 and Mukherji.

  • Prior Art Relied Upon: Liebermann (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 the combination of these references taught every element of the challenged claims. Liebermann disclosed the foundational two-line communication system where a device for a "deaf" user connects to a hearing user on a first line and a voice-to-text transcription center on a second line. Engelke ’405 taught modifying such systems for hard-of-hearing users by providing simultaneous voice and text. Critically, Engelke ’405 disclosed that the captioned device (with a processor and display) could be a physically separate, stand-alone appliance that connects to a conventional telephone, directly teaching the ’380 patent’s "independent" device limitation. Mukherji taught a system where a user could initiate text assistance at any time during a call via an activation button, supplying the basis for the claimed on-demand captioning feature.
    • Motivation to Combine: Petitioner asserted that a person of ordinary skill in the art (POSA) would have been motivated to combine the teachings of Liebermann and Engelke ’405 to improve Liebermann’s system. This combination would adapt a device for deaf users to the larger market of hard-of-hearing individuals and provide the flexibility of using a separate, independent captioned device with any standard telephone, as taught by Engelke ’405. A POSA would then be further motivated to incorporate Mukherji's teaching of a mid-call activation button to provide the user with greater control and convenience, which was a known method for improving similar communication systems.
    • Expectation of Success: A POSA would have had a reasonable expectation of success in making this combination. The proposed modifications involved applying known techniques (independent modules, on-demand user input) to a known system architecture (captioned telephony) to achieve predictable improvements in usability and functionality.

Ground 2: Obviousness over Liebermann, Engelke, Mukherji, and POSA Knowledge - Claim 51 is obvious over Liebermann in view of Engelke '405, Mukherji, and the knowledge of a person of ordinary skill in the art.

  • Prior Art Relied Upon: Liebermann (Patent 5,982,853), Engelke '405 (Patent 5,724,405), Mukherji (Patent 7,117,152), and the general knowledge of a POSA regarding telecommunications.
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground specifically addressed dependent claim 51, which requires the captioned device to receive text communication from the relay on the first communication link (the voice link), in addition to the second link recited in its parent claim. Petitioner argued that while the primary combination of references establishes two separate communication links (one for voice, one for text), a POSA would have found it obvious to also send text over the voice link.
    • Motivation to Combine: The primary motivation was to provide redundancy and improve the reliability of the captioning service. Petitioner argued that sending text data on both links would create a "failover" capability. If the primary digital text link was unavailable or degraded, the system could still deliver captions audibly over the voice connection (e.g., using Baudot protocol), a well-known technique in telecommunications for ensuring service continuity. This would increase the likelihood that the hard-of-hearing user would receive captions under various network conditions.
    • Expectation of Success: Implementing redundant communication pathways was a common and well-understood engineering principle for improving system robustness. A POSA would have had a high expectation of success in applying this known technique to a captioned telephony system to achieve the predictable result of increased reliability.

4. Key Claim Construction Positions

  • "independent": Petitioner argued that this term, which describes the relationship between the hard-of-hearing user’s phone and the captioned device, should be construed to mean a "separate, stand-alone device." This construction was central to the invalidity argument, as it allowed Petitioner to map the stand-alone appliance taught in Engelke '405 onto the claimed invention.
  • "hard of hearing user" / "hearing user": Petitioner asserted that these terms should be construed consistently with prior Board decisions in related cases. "Hard of hearing user" was proposed to mean "the individual making use of the transcribed text, regardless of the individual's actual hearing abilities," and "hearing user" as "the individual in communication with the hard of hearing user."

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-63 of Patent 9,967,380 as unpatentable.