PTAB

IPR2020-01215

CaptionCall LLC v. Ultratec Inc

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1. Case Identification

2. Patent Overview

  • Title: Device Independent Text Captioned Telephone Service
  • Brief Description: The ’660 patent describes systems and methods for providing real-time text captions to a hard-of-hearing user during a phone call. The system involves a mobile phone for the assisted user, a separate appliance/computer device to display captions, and a remote relay service that transcribes a hearing user's voice into text captions for display on the appliance.

3. Grounds for Unpatentability

Ground 1: Obviousness over McLaughlin

  • Claims Challenged: 1-21, 23-38, 41, and 43-45 are obvious under 35 U.S.C. §103 over McLaughlin. Petitioner also asserted anticipation under 35 U.S.C. §102.
  • Prior Art Relied Upon: McLaughlin ’169 (Application # 2005/0232169), which incorporates by reference McLaughlin ’795 (Application # 60/562,795).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that McLaughlin teaches all elements of the challenged claims. Specifically, McLaughlin discloses a "relay on demand" communication system where a hard-of-hearing user (impaired user 122) uses a telephone (126) and a separate text device (124, the "appliance/computer device"). During a call with a hearing user, a relay operator (130) is conferenced in to provide transcriptions, which are sent to and displayed on the text device (124). Petitioner contended that McLaughlin '795 explicitly describes the user's phone as a wireless mobile phone and the text device as a wireless device (e.g., a PDA), directly mapping to the key limitations of independent claims 1, 25, and 38.
    • Motivation to Combine (for §103 grounds): The motivation for any minor modifications to arrive at the claimed invention would be inherent in McLaughlin's goal of providing a transparent captioning experience. Since McLaughlin '169 expressly incorporates the entire disclosure of '795, a person of ordinary skill in the art (POSITA) would have naturally looked to '795's teachings, including the use of wireless cell phones and PDAs, to implement the system.
    • Expectation of Success: A POSITA would have had a high expectation of success as implementing the relay-on-demand service with then-commonplace wireless phones and PDAs involved applying known technologies for their intended purposes.

Ground 2: Obviousness over McLaughlin in view of August

  • Claims Challenged: 22 and 42 are obvious over McLaughlin ’169 or ’795 in view of August.
  • Prior Art Relied Upon: McLaughlin ’169 (Application # 2005/0232169) or McLaughlin '795 (Application # 60/562,795), and August (Patent 5,671,267).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addresses dependent claims 22 and 42, which add the limitation of presenting a "second indication" of an incoming call (i.e., caller-ID) on the appliance display. Petitioner asserted that while McLaughlin teaches presenting caller-ID on the mobile phone, August teaches a dual-display caller-ID system where call information is shown simultaneously on a telephone and a second device like a computer or television screen.
    • Motivation to Combine: A POSITA would combine these references to enhance user convenience. In the McLaughlin system, the assisted user might be focused on the appliance/computer display when a call arrives. A POSITA would recognize the benefit of displaying the caller-ID on the appliance screen in addition to the phone, ensuring the user sees the incoming call information regardless of which device they are looking at, thereby allowing for quicker call screening.
    • Expectation of Success: The combination would have been straightforward. A POSITA would have found it a simple matter to transmit the caller-ID data, already received by the mobile phone in McLaughlin, to the connected appliance for display, as taught by August.

Ground 3: Obviousness over Engelke

  • Claims Challenged: 1-7, 9-15, 17-21, 23-25, 28-30, 32-38, 41, and 43 are obvious over Engelke.

  • Prior Art Relied Upon: Engelke (Application # 2002/0085685).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Engelke, which is owned by the Patent Owner and shares inventors with the ’660 patent, discloses the claimed invention. Engelke describes a two-line captioned telephone system where an assisted user uses a "conventional" telephone (70), which could be a cell phone, and a separate, standalone "personal interpreter" device (74). The personal interpreter captures audio from the phone, sends it to a relay (76), and receives and displays corresponding text captions on its own screen (14). Petitioner mapped Engelke's telephone (70) to the claimed "mobile phone" and the personal interpreter (74) to the claimed "appliance/computer device," arguing it met all limitations of the independent claims.
    • Motivation to Combine: Not applicable as this is a single-reference ground. Petitioner contended Engelke alone renders the claims obvious.
    • Expectation of Success: Not applicable. Engelke's teachings were presented as being substantially the same as the claimed invention, making it obvious.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations of McLaughlin with Michaelis (to add an on-screen notification that a call is text-assisted), Engelke with McClelland (to add user account registration), Engelke with August (for dual-display caller-ID), and Engelke with Michaelis (for text-assisted call notification). These grounds relied on similar principles of combining known features to improve the user experience.

4. Key Claim Construction Positions

  • Petitioner argued that while all claim terms should be given their plain and ordinary meaning, certain terms might be argued by the Patent Owner as means-plus-function limitations under 35 U.S.C. §112 ¶ 6.
  • "communication component" (claim 1): Petitioner preemptively argued that should this be found to be a means-plus-function term for enabling the appliance to communicate with a relay, the ’660 patent discloses corresponding structure such as an "Ethernet card." Further, the prior art (McLaughlin and Engelke) discloses corresponding structures like a PDA's wireless device or a cellular/IP connection component.
  • "communication link" (claim 23): Similarly, for the function of enabling communication between the mobile phone and a hearing user, the patent discloses structures like a "PBX network" or "cellular service." Petitioner argued the prior art discloses corresponding conference bridges or telephone lines.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-45 of the ’660 patent as unpatentable.