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

Patent Trial and Appeal Board

Mar 3, 2015

09783679 (P.T.A.B. Mar. 3, 2015)

Trials@uspto.gov Paper 65
571-272-7822 Entered: March 3, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

CAPTIONCALL, L.L.C.,
Petitioner,

v.

ULTRATEC, INC.,
Patent Owner.
____________

Case IPR2013-00545
Patent 6,594,346 B2
____________

Before WILLIAM V. SAINDON, BARBARA A. BENOIT, and
LYNNE E. PETTIGREW, Administrative Patent Judges.

BENOIT, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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I. INTRODUCTION
We have jurisdiction to hear this inter partes review under 35 U.S.C.
§ 6(c). This final written decision is issued pursuant to 35 U.S.C. § 318(a)
and 37 C.F.R. § 42.73. For the reasons that follow, we determine that
Petitioner has shown by a preponderance of the evidence that claims 1 and 2
of U.S. Patent No. 6,594,346 B2 (Ex. 1001; “the ’346 patent”) are
unpatentable.
A. Procedural History
CaptionCall, L.L.C. (“Petitioner”) filed a Petition requesting an inter
partes review

of claims 1 and 2 of the ’346 patent pursuant to 35 U.S.C.
§§ 311-319. Paper 1 (“Pet.”). Patent Owner, Ultratec, Inc., did not file a
preliminary response. On March 5, 2014, pursuant to 35 U.S.C. § 314(a),
we instituted an inter partes review for claims 1 and 2 of the ’346 patent as
unpatentable under 35 U.S.C. § 103(a) for obviousness over Ryan
1
and
Alshawi.
2
Paper 6 (“Inst. Dec.”).
Subsequent to institution, Patent Owner filed a Patent Owner
Response (Paper 19; “PO Resp.”), and Petitioner filed a Reply (Paper 32;
“Reply”). Patent Owner also filed a Motion to Exclude Evidence. Paper 41
(“PO Mot. to Exc. Occhiogrosso”). Petitioner filed an Opposition (Paper 55;
“Pet. Opp. to Mot. to Exc.”) to Patent Owner’s Motion, and Patent Owner
filed a Reply to Petitioner’s Opposition (Paper 48; “PO Reply to Opp. to
Mot. to Exc.”).

1
U.S. Patent No. 5,809,112 (Ex. 1004) (“Ryan”).
2
U.S. Patent No. 5,815,196 (Ex. 1010) (“Alshawi”).
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An oral hearing was held on November 19, 2014.
3

B. Related Proceedings
Petitioner represents that the ’346 patent was asserted against its
parent company in Ultratec, Inc. v. Sorenson Communications, Inc., No. 13-
CV-00346 (W.D. Wis.). Pet. 2. Petitioner also represents that the lawsuit
included other patents related to the ’346 patent and for which Petitioner
also requested inter partes review— U.S. Patent No. 6,233,314 B1
(Case IPR2013-00540), U.S. Patent No. 5,909,482 (Case IPR2013-00541),
U.S. Patent No. 7,319,740 (Case IPR2013-00542), U.S. Patent
No. 7,555,104 (Case IPR2013-00543), U.S. Patent No. 8,213,578
(Case IPR2013-00544), U.S. Patent No. 6,603,835 (Case IPR2013-00549),
and U.S. Patent No. 7,003,082 (Case IPR2013-00550).
C. The ’346 Patent
The ’346 patent describes a computer-assisted relay system to provide
text translation of telephone conversation to assist a person who has hearing
difficulties (referred to as an “assisted user”). Ex. 1001, 3:20-21, 35-40. A
human intermediary (referred to as a “call assistant”) facilitates a telephone
conversation between a hearing user and an assisted user by communicating
by voice with the hearing user and repeating the hearing user’s words to a
computer provided with voice recognition software trained to the voice of

3
This proceeding, as well as IPR2013-00540, IPR2013-00541, IPR2013-
00542, IPR2013-00543, IPR2013-00544, IPR2013-00549, and IPR2013-
00550 involve the same parties and some similar issues. The oral arguments
for all eight reviews were merged and conducted at the same time. A
transcript of the oral hearing is included in the record as Paper 64.
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the call assistant. See id. at 1:62-2:11; 3:20-28, 35-39; 6:13-36. The
computer of the call assistant sends the text transcription created by the
voice recognition software to a display located adjacent to the assisted user.
See id. at 6:13-44.
Figure 4 of the ’346 patent shows a captioned telephone service
supported by a relay. See id. at 3:15-16; 8:63-65. Figure 4 of the ’346
patent is set forth below:

Figure 4 illustrates a telephone call
involving a captioned telephone.
As shown in Figure 4, a hearing user at telephone 62 communicates through
telephone line 64 with relay 66. See id. at 8:63-66. The relay communicates
both the voice of the hearing user and a transcription of the text of the
conversation through telephone line 68 to captioned telephone device 72 and
conventional telephone 70, both at the site of the assisted user. See id. at
8:66-9:7. The captioned telephone assists “the user to understand a greater
portion of the conversation by providing a visually readable transcription of
the text of the telephone conversation so that the assisted user can read any
words that he or she cannot hear properly.” Id. at 9:9-13.
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D. Claims of the ’346 Patent
Petitioner challenges both claims of the ’346 patent. Claims 1 and 2
are independent claims.
1. A method of operating a relay system using a call
assistant to facilitate communication between a hearing user
and an assisted user by telephone, the hearing user speaking
words in voice, the method comprising the steps of
transmitting the voice of the hearing user when speaking
to the ear of the call assistant;
the call assistant speaking in voice the same words that
the call assistant hears spoken by the hearing user into a
microphone connected to a digital computer;
the digital computer using voice recognition computer
software trained to the voice of the call assistant to translate the
words of the voice spoken by the call assistant into a digital text
message stream containing the words spoken by the call
assistant;
transmitting both the digital text message stream and the
voice of the hearing user by telephone connection to the
assisted user;
displaying the digital text message stream to a captioned
telephone display device within sight of the assisted person; and
transmitting the voice of the hearing user to the assisted
user.
2. A relay to facilitate communications between [a]
hearing user, speaking words in voice, and an assisted user, the
relay operated by a call assistant, the relay comprising
a speaker connected to receive the voice from the hearing
user and to transmit that voice to the ear of the call assistant so
that the call assistant may voice those words;
a microphone connected to pick up the voice of the call
assistant;
a digital computer connected to the microphone, the
computer programmed to use a voice recognition computer
software package to translate the words spoken by the call
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assistant into a digital text stream; and
a telephonic connection to transmit both the digital text
stream and the voice of the hearing user over a telephonic
connection to the assisted user.
Id. at 10:2-42.
II. ANALYSIS
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are given
their broadest reasonable construction in light of the specification of the
patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo
Speed Techs., LLC, No. 2014-1301, slip op. at 11–19 (Fed. Cir. Feb. 4,
2015). Under the broadest reasonable construction standard, claim terms are
presumed to be given their ordinary and customary meaning, as would be
understood by one of ordinary skill in the art in the context of the entire
disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
2007). An inventor may provide a meaning for a term that is different from
its ordinary meaning by defining the term in the specification with
reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
1475, 1480 (Fed. Cir. 1994).
We construe the claim language below in accordance with these
principles. No other terms require express construction.
1. “software trained to the voice of the call assistant”
Independent claim 1 recites “software trained to the voice of the call
assistant,” whereas independent claim 2 does not. Patent Owner incorrectly
asserts that, under our preliminary constructions of “voice recognition
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computer software” and “voice recognition computer software package,”
independent claim 2 also requires “software trained to the voice of the call
assistant.” PO Resp. 12-13. As Petitioner recognizes (Reply 2), we did not
import the limitation “trained to the voice of the call assistant” into claim 2.
Rather, we expressly construed the recited software as “a separately
compilable software component for voice recognition that is ready to be
used on a computer.” Inst. Dec. 11-12 (“[W]e construe ‘voice recognition
computer software package’ as ‘a separately compilable software component
for voice recognition that is ready to be used on a computer.’ . . . [W]e also
construe ‘voice recognition computer software’ as ‘a separately compilable
software component for voice recognition that is ready to be used on a
computer.’”).
In the parties’ dispute over the teachings of the asserted prior art, they
articulate different views in how the term “software trained to the voice of
the call assistant” should be construed. Patent Owner construes “trained to
the voice of the call assistant” to require training to recognize individual
voices (PO Resp. 23-24), presumably trained to the voice of one and only
one call assistant and precluding training for a type of speech used by a
group of people (such as a regional accent) that could apply to more than
one call assistant. Patent Owner also seeks to construe “trained to the voice
of the call assistant” as having a temporal constraint so as to preclude
training at the time when the voice recognition computer software package is
“designed in advance of implementation at the source code level.” PO
Resp. 21. According to Patent Owner, “trained to the voice of the call
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assistant” precludes software that is “built to” recognize the voice of a
particular agent. PO Resp. 22. Petitioner disagrees. Reply 4-5.
The Specification of the ’346 patent does not set forth a special
definition for “training.” The Specification, however, in its “Brief Summary
of the Invention” indicates “a speech recognition computer program which
has been trained to the voice pattern of the call assistant.” Ex. 1001, 2:51-54
(emphasis added). In the context of describing the relay shown in Figure 1,
the Specification describes “the call assistant operat[ing] at a computer
terminal which contains a copy of a voice recognition software package
which is specifically trained to the voice of that particular call assistant.”
Id. at 6:21-24 (emphasis added). The Specification, however, does not
indicate expressly that the voice recognition software is trained to the voice
of only that particular call assistant or otherwise indicate the voice
recognition software is trained to the voice of only one call assistant. As
such, the Specification contemplates software trained to “a voice pattern of
the call assistant” as well as software “specifically trained to the voice of [a]
particular call assistant.”
Further, the Specification indicates, in those passages, that the voice
recognition software package is trained but does not indicate when or how
the training occurs. Id. at 2:51-54, 6:21-24. Patent Owner, relying on its
declarant Mr. Ludwick, asserts software “designed” is not software that is
“trained to recognize individual voices.” PO Resp. 21 (citing Ex. 2001
¶¶ 19-20). According to Mr. Ludwick, a person of ordinary skill in the art
would not have understood “trained” software to include “designed”
software because speech recognition technology was not used in
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telecommunications relay service in 1994. Ex. 2001 ¶¶ 19-20. The use of
speech recognition technology in 1994 has little probative value here
because the date of invention is February 14, 2001 for the reasons discussed
below.
We give claim language its broadest reasonable construction in light
of the specification of the patent in which it appears. Thus, we will not limit
“trained to the voice of the call assistant” to require training to the voice of
only one particular call assistant, because the claim language encompasses
the invention as disclosed in the Specification—software trained to a voice
pattern of a call assistant. Ex. 1001, 2:41-49 (“Summary of the Invention”).
Nor will we limit “trained to the voice of the call assistant” to a particular
time in which the training must occur or to a particular manner of training
that is not found in the claims nor the specification.
Accordingly, “trained to the voice of the call assistant” does not
preclude voice recognition software that is designed or built in advance of
implementation at the source code level to the voice pattern of a call
assistant. Nor is “trained to the voice of the call assistant” limited to training
to the voice of one and only one call assistant.
2. “captioned telephone display device”
Independent claim 1 recites “displaying the digital text message
stream to a captioned telephone display device within sight of the assisted
user.” Ex. 1001, 10:21-23 (emphasis added). The ordinary meaning of
“telephone” is “[a]n instrument that converts voice and other sound signals
into a form that can be transmitted to remote locations and that receives and
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reconverts waves into sound signals.”
4
In the context of voice
communication, a “caption” is text that communicates dialogue.
5
Thus,
according to its ordinary meaning, a captioned telephone display device is a
device that transmits and receives voice signals, and displays text.
The ’346 patent, however, uses a similar term “captioned telephone
device” in a way that is consistent with the ordinary meaning of captioned
telephone display device. Claim 1 recites “transmitting . . . the digital text
message stream . . . by telephone connection to the assisted user” and
“displaying the digital text message stream to a captioned telephone display
device within sight of the assisted person.” Thus, claim 1 requires the digital
text message stream, which is transmitted by telephone connection to the
assisted user, to be received by the captioned telephone display device
before the captioned telephone display device can display the digital text
message stream.
Other than in claim 1, the ’346 patent does not use the precise term
“captioned telephone display device.” The written description of the ’346
patent describes a captioned telephone device as a device that receives both
voice signals and text information, and displays the text information to an

4
THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE 1846
(3d ed. 1992); THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH
LANGUAGE 1779 (4th ed. 2006).
5
THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE 286
(3d ed. 1992) (defining “caption” in relevant part as “2. A subtitle in a
motion picture.”); THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH
LANGUAGE 278 (4th ed. 2006) (defining “caption” in relevant part as “2. A
series of words . . . that communicate dialogue to the hearing-impaired or
translate foreign dialogues.”).
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assisted user. Id. at 9:3-9 (“The captioned telephone device 72 is
constructed to accomplish two objectives. One objective is to filter, or
separate, the digital signals carrying the text information from the voice
signal. The other objective is to take the digital signals and create a visual
display of the text information for the assisted user.”); see also id. at Fig. 4
(showing a simultaneous text and voice connection between captioned
telephone device 72 and relay 66). Note that a captioned telephone device
need not output any audio signals to the assisted user. See id. at 9:1-3
(describing a captioned telephone device and telephone at an assisted user’s
location as two separate devices), Fig. 4 (illustrating captioned telephone
device 72 and telephone 70 as two separate devices).
In light of the use of “captioned telephone display device” in claim 1,
the use of “captioned telephone device” in the written description of the ’346
patent, and the ordinary meaning of the term, we construe “captioned
telephone display device” as a device that transmits and receives voice
signals, receives text information, and displays text to an assisted user.
B. Principles of Law
To prevail in challenging claims 1 and 2 of the ’346 patent, Petitioner
must demonstrate by a preponderance of the evidence that the claims are
unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is
unpatentable under 35 U.S.C. § 103(a) if the differences between the
claimed subject matter and the prior art are such that the subject matter, as a
whole, would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.
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KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including: (1) the scope and content of the prior art; (2) any differences
between the claimed subject matter and the prior art; (3) the level of ordinary
skill in the art; and (4) objective evidence of nonobviousness. Graham v.
John Deere Co., 383 U.S. 1, 17-18 (1966). The level of ordinary skill in the
art is reflected by the prior art of record. See Okajima v. Bourdeau,
261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579
(Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
C. Effective Filing Date of Claims 1 and 2
The ’346 patent was filed on February 14, 2001 and claims the benefit
of earlier filing dates of applications that issued as the ’314 and ’482 patents.
The ’346 patent includes disclosure that is not included in the ’314 and ’482
patents, which share a common disclosure. For example, the ’346 patent
describes transmitting both text and voice over a telephone line. See
Ex. 1001, 3:35-40, 8:61-9:39, Fig. 4. The references asserted here, Ryan and
Alshawi, predate the earliest filing date claimed by the ’346 patent, but
obviousness is determined as of the time of the invention. See 35 U.S.C.
§ 103(a) (“A patent may not be obtained . . . if the differences between the
subject matter sought to be patented and the prior art are such that the
subject matter as a whole would have been obvious at the time the invention
was made to a person having ordinary skill in the art to which said subject
matter pertains.”) (emphasis added). Patent Owner asserts that the subject
matter of the claimed invention would not have been obvious to one of skill
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in the art in 1994 and 1995, and so seems to assert an effective filing date for
the ’346 patent earlier than its filing date, February 14, 2001. Accordingly,
we now determine the effective filing date of the subject matter of
independent claims 1 and 2. Cf. PO Resp. 32-35 (asserting that Ryan must
be read narrowly in view of the state of the relevant art in 1994); id. at 18
(“Patent Owner does not concede that claims 1 and 2 of the ’346 Patent are
not entitled” to an earlier effective filing date).
For a claim in a later-filed application to be entitled to an earlier filing
date, the earlier application must satisfy the written description requirement
of 35 U.S.C. § 112, first paragraph. See 35 U.S.C. § 120; In re Huston, 308
F.3d 1267, 1276 (Fed. Cir. 2002). “[T]he purpose of the written description
requirement is to ‘ensure that the scope of the right to exclude, as set forth in
the claims, does not overreach the scope of the inventor's contribution to the
field of art as described in the patent specification.’” Ariad Pharms., Inc. v.
Eli Lilly and Co., 598 F.3d 1336,1353-54 (Fed. Cir. 2010) (en banc)
(quoting Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916, 920 (Fed.
Cir. 2004)). The written description requirement is met if the specification
shows that the inventor has invented what is claimed—that is, the inventor
had possession of it. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64
(Fed. Cir. 1991).
Independent claim 1 recites “transmitting both the digital text message
stream and the voice of the hearing user by telephone connection to the
assisted user,” and independent claim 2 recites “a telephonic connection to
transmit both the digital text stream and the voice of the hearing user over a
telephonic connection to the assisted user.” The earlier applications, which
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issued as the ’482 and ’314 patents, do not disclose transmitting both text
and voice over a telephone line, as claimed in independent claims 1 and 2 of
the ’346 patent. As such, the earlier applications do not meet the written
description requirement for claims 1 and 2. Therefore, independent claims 1
and 2 only are entitled to a priority date of February 14, 2001, the filing date
of the application that issued as the ’346 patent.
D. Patent Owner’s Motion to Exclude Testimony by Mr. Occhiogrosso
Patent Owner seeks to exclude the testimony of Mr. Benedict
Occhiogrosso (Exs. 1019, 1037, 2006, 2007, and 2012) on the theory that he
is not qualified as an expert under Federal Rule of Evidence 702
(“FRE 702”).
6,7
PO Mot. to Exc. Occhiogrosso; PO Resp. 4-8. FRE 702
provides that a witness qualified as an expert by knowledge, skill,
experience, training, or education may testify in the form of an opinion if
(a) the expert’s knowledge will help the trier of fact to understand the
evidence or to determine a fact in issue, (b) the testimony is based upon
sufficient facts or data, (c) the testimony is the product of reliable principles

6
Patent Owner also seeks to exclude Mr. Occhiogrosso’s testimony under
37 C.F.R. § 42.65. PO Mot. to Exc. Occhiogrosso 1. Rule 42.65, however,
addresses (a) the weight given to expert testimony that does not disclose
underlying facts or data on which the opinion is based, (b) the showing
required if a party seeks to rely on a technical test or data from such a test,
and (c) the exclusion of expert testimony on United States patent law or
patent examination practice. As such, Rule 42.65 does not apply to a
determination whether to exclude Mr. Occhiogrosso’s testimony.
7
With some enumerated exceptions, the Federal Rules of Evidence apply to
an inter partes review. 37 C.F.R. § 42.62.
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and methods, and (d) the witness has applied the principles and methods
reliably to the facts of the case.
Testimony on the issue of unpatentability proffered by a witness who
is not “qualified in the pertinent art” generally is not admissible under
FRE 702. Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356,
1363–64 (Fed. Cir. 2008). In determining who is qualified in the pertinent
art under FRE 702, we need not find a complete overlap between the
witness’s technical qualifications and the problem confronting the inventor
or the field of endeavor. See SEB S.A. v. Montgomery Ward & Co., Inc., 594
F.3d 1360, 1372–73 (Fed. Cir. 2010) (upholding admission of the testimony
of an expert who admittedly lacked expertise in the design of the patented
invention, but had experience with materials selected for use in the
invention); Mytee Prods., Inc. v. Harris Research, Inc., 439 Fed. App’x 882,
886–87 (Fed. Cir. 2011) (non-precedential) (upholding admission of the
testimony of an expert who “had experience relevant to the field of the
invention,” despite admission that he was not a person of ordinary skill in
the art).
Patent Owner contends that, to qualify as an expert under FRE 702,
Mr. Occhiogrosso must be a person of ordinary skill in the art, and that
Mr. Occhiogrosso is not a person of ordinary skill in the art because “he is
an information technology (“IT”) generalist” and does not have “any
specific experience in the context of [telecommunications relay systems] for
the deal and the HOH [hear of hearing].” PO Mot. to Exc. Occhiogrosso 5;
see also id. at 2-4 (discussing the definition of a person of ordinary skill in
the art); 5-7 (discussing Mr. Occhiogrosso’s experience with respect to these
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factors). Petitioner responds that Patent Owner’s definition of the level of
ordinary skill in the art conflates a requirement for skill in the relevant
technical art (“telecommunications systems [having] voice-to-text
transcription”) with skill in one particular commercial sector that applies that
technical art (telecommunications services for deaf or hard of hearing users).
Pet. Opp. to Mot. to Exc. 1, 6-7.
Patent Owner’s arguments are unpersuasive at the outset because, to
testify as an expert under FRE 702, a person need not be a person of
ordinary skill in the art, but rather “qualified in the pertinent art.” Sundance,
550 F.3d at 1363-64; SEB, 594 F.3d at 1372-73; Mytee, 439 Fed. App’x at
886–87. Patent Owner’s arguments are also unpersuasive because they
attempt to constrict the “pertinent art,” i.e., the pertinent technology, to a
particular subset of individuals who use the pertinent technology, rather than
the pertinent technology itself. See Pet. Opp. to Mot. to Exc. 4-5 (arguing
that the problems in the pertinent art are not “uniquely related” to the deaf
and hard-of-hearing).
We agree with Petitioner that the relevant field is telecommunication
technologies. See Pet. Opp. to Mot. to Exc. 7 (“Mr. Occhiogrosso’s
qualifications should be analyzed with respect to the pertinent art of
telecommunication technologies in which an intermediary facilitates voice-
to-text transcription.”). The ’346 patent states that the “present invention
relates to the general field of telephone communications.” Ex. 1001, 1:16-
17. Patent Owner correctly indicates that the ’346 patent focuses on a
particular application of that technology: people who need assistance in
using telecommunications devices. PO Mot. to Exc. Occhiogrosso 4 (citing
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Ex. 1001, 1:16-20). That focus, however, is not sufficient to dismiss the
express statement of the ’346 patent that the “invention relates to the general
field of telephone communications.” Ex. 1001, 1:16-17. The ’346 patent
also summarizes the invention as the use of a speech recognition computer
program trained to the voice of the call assistant to translate promptly the
words spoken by an intermediary call assistant into a “high speed digital
communication message [that] is then transmitted electronically promptly by
telephone to a visual display accessible to the” hearing-assisted user. Id. at
2:51-58.
Thus, we determine the pertinent art to be telecommunications
systems, because any communications technology would be pertinent art to
the ’346 patent. Although assistive technology may be more pertinent, and
assistive technology for the deaf and hearing impaired, using voice-to-text
relays, may be most pertinent, anything in the telecommunications
technology field would be pertinent to the inventor when considering the
problem.
The qualifications of Mr. Occhiogrosso, as summarized in his
curriculum vitae (Ex. 1020), qualify him to give expert testimony on the
subject of telecommunication technologies. He possesses a Bachelor of
Science in Electrical Engineering and a Master of Science in Electrical
Engineering. Ex. 1020, 2. Mr. Occhiogrosso testifies that he has more than
thirty years of experience in the field of telecommunications and information
technology, and he has planned, designed, implemented, and managed large
scale projects involving wired and wireless communication systems,
including transmission of voice and data. Ex. 1019 ¶ 6; see also Ex. 1020,
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2-6 (detailing Mr. Occhiogrosso’s enterprise consulting engagements,
research and development, and wireless experience).
Moreover, to the extent Mr. Occhiogrosso is more familiar with
general telecommunications technology and less familiar with voice-to-text
or its application to the deaf or hearing-impaired, or to the extent that
Mr. Occhiogrosso’s testimony is inconsistent or unsupported, we weigh
Mr. Occhiogrosso’s testimony accordingly, taking into account the extent of
his expertise in these areas. See, e.g., Yorkey v. Diab, 601 F.3d 1279, 1284
(Fed. Cir. 2010) (holding the Board has discretion to give more weight to
one item of evidence over another “unless no reasonable trier of fact could
have done so”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed.
Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude
that the lack of factual corroboration warrants discounting the opinions
expressed in the declarations.”).
Patent Owner also contends that Mr. Occhiogrosso’s testimony fails to
identify the level of skill in the art in his declaration (Ex. 1019), fails to give
any consideration to what one of ordinary skill in the art would have known
or not known, is unsupported and unreliable, and does not consider
secondary considerations. PO Mot. to Exc. Occhiogrosso 8; PO Resp. 7-9;
PO Reply to Opp. to Mot. to Exc. 2-3. Petitioner counters that
Mr. Occhiogrosso “consistently applied his definition of a [person of
ordinary skill in the art] throughout his testimony” and, in a supplemental
declaration, Mr. Occhiogrosso “made explicit the level of ordinary skill he
applied” in Exhibit 1019. Pet. Opp. to Mot. to Exc. 15 (citing Ex. 1037
¶ 12).
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Patent Owner’s argument goes more to the weight we should accord
Mr. Occhiogrosso’s testimony, rather than its admissibility. It is within our
discretion to assign the appropriate weight to the testimony offered by
Mr. Occhiogrosso. See, e.g., Yorkey, 601 F.3d at 1284. Moreover,
Mr. Occhiogrosso provided a supplemental declaration identifying the level
of skill in the art and confirming his opinion presented in the earlier
declaration (Ex. 1019) in view of the level of skill in the art. See Ex. 1037
¶¶ 12-17, 19. Mr. Occhiogrosso testimony also confirmed his legal
understanding of obviousness, including secondary considerations. See
Ex. 1037 ¶¶ 20-25.
Under the totality of these circumstances, we decline to exclude the
testimony of Mr. Occhiogrosso. Accordingly, Patent Owner’s Motion to
Exclude Mr. Occhiogrosso’s testimony (Paper 41) is denied.
E. Obviousness over Ryan and Alshawi
Petitioner asserts that claims 1 and 2 of the ’346 patent are
unpatentable under 35 U.S.C. § 103(a) for obviousness over Ryan and
Alshawi. Pet. 52-57 (referring to Pet. 33-39, 50-52). Patent Owner
challenges Petitioner’s assertion. PO Resp. 18-47.
To support its contention that claims 1 and 2 would have been obvious
over Ryan and Alshawi, Petitioner relies on analysis provided with respect
to the references and declaration testimony by Mr. Occhiogrosso. Pet. 31-
40, 50-57 (citing Ex. 1019). Patent Owner responds, relying on declaration
testimony by Mr. Ludwick and others. PO Resp. 20-47 (citing Exs. 2001-
2005, 2010). Having considered the parties’ contentions and supporting
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evidence, we determine that Petitioner has demonstrated by a preponderance
of the evidence that claims 1 and 2 are unpatentable for obviousness over
Ryan and Alshawi for the reasons set forth below.
1. Summary of Ryan
Ryan discloses a telecommunications relay system with a relay
interface for communicating between a standard telephone set and a TDD
for a hearing impaired person. Ex. 1005, Abstract. Figure 1 of Ryan is set
forth below:

Figure 1 is a diagram of the
telecommunications relay system.
As shown in Figure 1, Ryan’s telecommunications relay interface 10
includes operator/relay terminal 12 and couples standard telephone set 14
with TDD 16. Ex. 1005, 3:34-35, 43-51. An operator or relay agent
typically is responsible for manipulating relay terminal 12 to relay messages
between telephone 14 and TDD 16. Ryan indicates, however, that speech
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recognition software could be used to automate the relay function so that an
operator or relay agent would not be required. Id. at 4:19-24. Ryan
specifically describes using speech recognition software at agent device 20
to interpret a voice message from a caller at telephone 14 and convert the
message from a voice format to a data format. Id. at 4:24-27. Ryan further
indicates:
If the software is specifically designed to recognize the voice of
particular relay agents, the accuracy of the relay service may be
improved by having one of these agents listen to the caller and
repeat the voice message into a terminal adapted to convert the
agent’s voice message into a data message.
Id. at 4:33-38.
2. Summary of Alshawi
Alshawi describes a videophone providing “speech-to-subtitles
translation for communication between people speaking different
languages.” Ex. 1010, 1:6-9; Title. To address the problem of “delay
between one party speaking and the other party hearing the synthesized
translation which can make communication awkward and unnatural” (id. at
1:31-33), Alshawi’s system continuously displays a translation of each
user’s speech in text form on the other user’s videophone screen. “At the
same time, the original, untranslated speech is played over a speaker.” Id. at
1:49-52. Alshawi indicates “[h]earing the original speech can also reduce
misunderstanding because emotional clues are available to the listener.” Id.
at 2:1-3.
Figure 3 of Alshawi is set forth below:
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Figure 3 is a diagram illustrating subtitle generation being
performed by a telephone service provider network.
Alshawi describes an embodiment, shown in Figure 3, in which
continuous speech-to-subtitles translation is provided by a telephone service
provider. Id. at 4:4-7. Videophone 62 outputs standard videophone signal
66, which is sent to telephone service provider network 60, which, in turn,
generates translated subtitles corresponding to the original speech of the
person using videophone 62. Id. at 3:58-65. Central processing unit
(“CPU”) 68 at telephone service provider network 60 outputs signal 72,
which consists of an audio signal containing the sending party’s original
speech and a subtitled video portion. Id. at 3:65-4:1. Signal 72 is sent to
videophone 74, where it can be viewed by the receiving party. Id. at 4:1-3.
3. Independent Claim 1
Petitioner has established that the combination of Ryan and Alshawi
teaches or suggests each limitation of claim 1. We review each of
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Petitioner’s assertions and Patent Owner’s arguments for each limitation of
claim 1.
a. relay system “transmitting the voice of the
hearing user when speaking to the ear of the call assistant”
Ryan teaches or suggests “operating a relay system using a call
assistant to facilitate communication between a hearing user and an assisted
user by telephone, the hearing user speaking words in voice.” Ex. 1005,
3:34-35, 43-51; Fig. 1 (Ryan’s telecommunications relay interface 10
includes operator/relay terminal 12 and couples standard telephone set 14
with TDD 16); see also id. at 1:53-67 (describing a relay agent receiving a
message over a voice channel from a standard telephone and transforming
the voice message to be transmitted to a TDD for an assisted user); Pet. 33,
54.
Ryan, in this description, also teaches or suggests “transmitting the
voice of the hearing user when speaking to the ear of the call assistant,” as
recited in claim 1. Ex. 1005, 1:53-67 (describing a relay agent receiving a
message over a voice channel from a standard telephone and transforming
the voice message to be transmitted to a TDD for an assisted user).
b. “the call assistant speaking” and “digital computer” limitations
Ryan teaches or suggests “the call assistant speaking in voice
the same words that the call assistant hears spoken by the hearing
user into a microphone connected to a digital computer” and “digital
computer using voice recognition computer software trained to the voice of
the call assistant to translate the words of the voice spoken by the call
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assistant into a digital text message stream containing the words spoken by
the call assistant,” as recited in claim 1.
Ryan teaches or suggests “the call assistant speaking” and “digital
computer” limitations in describing the use of speech recognition software at
agent device 20 (1) to interpret a voice message from a caller at telephone 14
and convert the message from a voice format to a data format and (2) for
improved accuracy of the relay service when the relay agent repeats the
voice message from the caller and speech recognition software, designed to
recognize the voice of a particular relay agent, is used for converting the
relay agent’s voice message to a data message. See Ex. 1005, 4:24-27
(“[S]peech recognition software could be employed at device 20 to interpret
a voice message from a caller at phone 14 and convert the message from a
voice format to a data format.”); id. at 4:33-38 (“If the [voice recognition]
software is specifically designed to recognize the voice of particular relay
agents, the accuracy of the relay service may be improved by having one of
these agents listen to the caller and repeat the voice message into a terminal
adapted to convert the agent’s voice message into a data message.”); see also
Pet. 34-36, 54-55 (Petitioner asserting the same).
We also credit the testimony of Petitioner’s declarant, Mr.
Occhiogrosso, that “a microphone connected to a digital computer” is
present necessarily in Ryan’s relay system to convert the relay agent’s voice
message into a data message using speech recognition software. Ex. 1019
¶ 27; see Pet. 34. Thus, we find that Ryan suggests the recited “microphone
connected to a digital computer.”
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Patent Owner argues that Ryan does not teach the recited digital
computer. First, Patent Owner contends that Ryan does not teach the recited
“voice recognition computer software trained to the voice of the call
assistant.” PO Resp. 20-23. According to Patent Owner, Ryan’s software is
not trained as required by Patent Owner’s interpretation of the required
training. Rather, according to Patent Owner, Ryan discloses voice
recognition software that is “designed,” which means the software is
designed in advance of implementation at the source code level and,
therefore, the software is not trained.
For the reasons noted previously, we do not agree the recited trained
voice recognition software precludes training during software design, which
Patent Owner acknowledges is disclosed by Ryan. PO Resp. 22 (“Ryan is
disclosing software that has been construed to recognize the voice of
particular relay agents.”). Thus, we do not agree with Patent Owner’s
argument because it is not commensurate in scope with the claims.
Moreover, Patent Owner relies on Mr. Ludwick’s testimony asserting
Ryan does not teach “voice recognition computer software trained to the
voice of the call assistant.” PO Resp. 25-27 (citing Ex. 2001 ¶¶ 19-20). We
do not find Mr. Ludwick’s testimony that Ryan’s voice recognition software
is “designed to recognize the voice of particular relay agents” to be
persuasive because Mr. Ludwick grounded his testimony in the state of the
art in 1994, when the date of invention is 2001. See Ex. 2001 ¶ 19 (referring
to the telecommunications relay service field in 1994), ¶ 20 (noting the
needed technology “did not then exist”).
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Second, Patent Owner, relying on Mr. Ludwick’s testimony, contends
that Ryan does not disclose the recited “voice recognition software trained to
the voice of the call assistant,” because Ryan’s “voice recognition software
is written specifically to recognize the voices of a collection or group of
people, rather than a particular, individual call assistant.” PO Resp. 23-24
(citing Ex. 2001 ¶ 21). For the reasons noted previously, we do not agree
that the claims are limited to voice recognition software trained to one and
only one call assistant. Thus, we do not agree with Patent Owner’s
argument because it is not commensurate in scope with the claims.
Moreover, we are not persuaded by Patent Owner that a person of
ordinary skill in the art would interpret Ryan as only disclosing software
written specifically for a group of people (PO Resp. 23-24). Patent Owner’s
argument is unpersuasive because it relies on the level of ordinary skill in
the art as reflected in a prior art patent filed in 1994, when the invention date
of the challenged claims is February 14, 2001. See PO Resp. 24 (citing
Ex. 2008, U.S. Patent No. 5,553,119 (“McAllister”) filed on July 7, 1994).
Third, Patent Owner argues that Ryan does not teach “translat[ing] the
words . . . spoken by the call assistant into a digital text message stream
containing the words spoken by the call assistant,” as recited in claim 1. PO
Resp. 24-32. According to Patent Owner, Ryan, at most, is ambiguous as to
the disclosure of a call agent translating the words spoken in voice by the
call assistant into a digital text stream. Id. at 25-26. Patent Owner contends,
based on the goals of Ryan to correct errors before displaying words and the
context of the passage, that Ryan discloses a relay agent using “revoicing” as
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an error correction mechanism for individual, unrecognized letters of a
word. PO Resp. 26-31.
We are not persuaded. Ryan’s technology is intended to “overcome[]
the problem associated with existing telecommunications relay services by
providing a system and method for correcting mistakes before the message is
displayed at the end user’s TDD” (i.e., telecommunications device for the
deaf). Ex. 1005, 2:35-38 (“Summary of the Invention”). In the above-
quoted passage, Ryan describes ways to do so using speech recognition
software. One way is automating the relay function so as to eliminate the
need for a human operator. Id. at 4:19-24. To do so, Ryan describes using
speech recognition software to convert the voice message from a caller to
text “while providing an error correction feature for words not recognized by
the software.” Id. at 4:24-28. Ryan further describes the error correction
feature as having two forms—phonetic spelling of the unrecognized word by
the speech recognition software or prompting the caller to spell the
unrecognized word. Id. at 4:29-33. Ryan describes, in the passage, another
way to improve the accuracy of a relay system before the text is displayed at
the TDD—if the speech recognition software is designed specifically to
recognize the voice of particular relay agents, a relay agent “listen[s] to the
caller and repeat[s] the voice message into a terminal adapted to convert the
agent’s voice message into a data message.” Id. at 4:33-38.
In contrast to Ryan’s description of the error correction by the caller
spelling letters of an unrecognized word, Ryan unambiguously describes a
relay agent repeating the voice message of the caller and having speech
recognition software, designed specifically to recognize the voice of the
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relay agent, convert the agent’s voice message into a data message. Thus,
we are not persuaded that Ryan is ambiguous as to its disclosure of
translating the words spoken by the call assistant, and we are not persuaded
that Ryan discloses only the translation of letters (rather than words).
Fourth, Patent Owner argues that Ryan must be read narrowly in view
of the state of the art of speech recognition software used in
telecommunications relay service in 1994. PO Resp. 32-35. Patent Owner’s
argument is unpersuasive because the state of the art of the relevant
technology in 1994 has limited probative value. Rather, the state of the art
of the relevant technology at the time of invention, which is February 14,
2001 for the reasons discussed previously, is of greater significance. See
35 U.S.C. § 103(a) (“A patent may not be obtained . . . if the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.”) (emphasis added). The ’346 patent itself describes
the state of voice recognition technology as being “capable of transcribing
the words of the voice of the call assistant at the speed of a normal human
communication” and identifies two commercially available software
packages able to do that. Ex. 1001, 6:24-36.
For these reasons, we determine Ryan teaches or suggests a relay
system that “transmit[s] the voice of the hearing user when speaking to the
ear of the call assistant”; a relay system in which “the call assistant speak[s]
in voice the same words that the call assistant hears spoken by the hearing
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user into a microphone connected to a digital computer”; and the recited
digital computer.
c. “transmitting” limitations and “displaying the digital text
message to a captioned telephone device” limitation
For claim 1 as a whole, Petitioner relies on a relay service that
combines Ryan’s relay service with the transmission of both voice and text
as described in Alshawi. See Pet. 54 (“By combining the transmission of
both voice and text as described in Alshawi with the relay service of Ryan,
the relay service would improve clarity in communications for the hearing
impaired.”). In addition to the limitations discussed above, claim 1 further
requires transmitting to the assisted user (i) “the voice of the hearing user”
and (ii) “both the digital text message stream and the voice of the hearing
user by telephone connection.” Claim 1 also recites “displaying the digital
text message stream to a captioned telephone display device within sight of
the assisted person.”
Alshawi’s describes a continuous speech-to-subtitles translation
service provided by a telephone service provider for videophones to
facilitate communication between people speaking different languages. Ex.
1010, 1:6-9, 3:54-4:7. Alshawi describes a videophone sending a standard
videophone signal to telephone service provider network 60, which, in turn,
generates translated subtitles corresponding to the original speech of the
person using videophone. Id. at 3:58-65. The signal sent to the receiving
videophone consists of an audio portion, which contains the sending party’s
original speech, and a subtitled video portion. Id. at 3:54-4:3. The
translated text can be viewed by the receiving party. Id. As such, Alshawi
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describes transmitting both the translated text and the audio of the sending
party’s original speech to a videophone, where the transcribed text is
displayed.
Petitioner’s proposed combination, which combines Ryan’s relay
service with the transmission of both voice and text as described in Alshawi
(Pet. 54), teaches or suggests the required transmitting and displaying
limitations recited in claim 1. Alshawi’s signal sent from the service
provider includes the original speech of the person, and the translated text is
sent to a videophone where the text is displayed to the user being assisted
with language translation. This teaches or suggests “transmitting both the
digital text message stream and the voice of the hearing user by telephone
connection to the assisted user” and “transmitting the voice of the hearing
user to the assisted user,” as recited in claim 1. Further, Alshawi describes a
videophone that transmits and receives voice signals, receives text
information, and displays text to an assisted user—a captioned telephone
display device.
Patent Owner argues that Ryan alone does not disclose the
transmitting or displaying limitations (PO Resp. 24-36) and argues that
Alshawi alone does not disclose the transmitting or displaying limitations
(PO Resp. 35-38). We are not persuaded that Ryan does not teach or
suggest the displaying limitation for the reasons discussed previously.
Moreover, the pertinent question is whether the claimed subject matter
as a whole would have been obvious to one of ordinary skill in the art in
view of the combined references, not whether the references in the asserted
combination individually teach the subject matter of claims 1 and 2.
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35 U.S.C. § 103(a); See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“the
test [for obviousness] is what the combined teachings of the references
would have suggested to those of ordinary skill in the art”). Thus, we find
unpersuasive Patent Owner’s arguments that amount to attacks on Ryan and
Alshawi individually, without sufficient consideration of the combination of
Ryan and Alshawi.
Further, Patent Owner argues that Alshawi does not disclose the
digital text test message stream because the words are translated and,
therefore, are not the “same words that the call assistant hears spoken by the
call assistant.” PO Resp. 37-38. We find this unpersuasive because
Petitioner’s combination relies on Ryan as teaching or suggesting “the call
assistant speaking in voice” limitation. Pet. 54.
Having reviewed the papers submitted by the parties and the evidence
cited therein, we determine that Petitioner has shown by a preponderance of
the evidence that the subject matter of claim 1 of the ’346 patent would have
been obvious to a person of ordinary skill in the art in view of the teachings
of Ryan and Alshawi.
4. Independent Claim 2
Petitioner’s treatment of independent claim 2 is similar substantially
to its treatment of independent claim 1. Compare Pet. 33-37 (indicating
portions of Ryan that teach or suggest claim 1) with id. at 37-40 (indicating
portions of Ryan that teach or suggest claim 2); compare id. at 50-51
(indicating portions of Alshawi that teach or suggest claim 1) with id. at 52
(indicating portions of Alshawi that teach or suggest claim 2).
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Patent Owner does not set forth separate arguments for claim 2. PO
Resp. 20-37 (arguing the combination of Ryan and Alshawi fails to disclose
all of the elements of claims 1 and 2). Having reviewed the papers
submitted by the parties and the evidence cited therein, we determine that
Petitioner has shown, by a preponderance of the evidence, that the subject
matter of claim 2 of the ’346 patent would have been obvious to a person of
ordinary skill in the art in view of the teachings of Ryan and Alshawi.
5. Reason to Combine Ryan and Alshawi
Petitioner, relying on testimony of its declarant, Mr. Occhiogrosso,
contends that it would have been obvious to combine “the transmission of
both voice and text as described in Alshawi with the relay service of Ryan
[to] improve clarity in communications for the hearing impaired.” Pet. 54
(citing Ex. 1019 ¶ 43-44). According to Mr. Occhiogrosso, Ryan recognized
that “the accuracy of the relay service” would be improved by having the
relay agent repeat the voice message of the caller and use speech recognition
software to convert the caller’s words to a data message to send to the
assisted caller. Ex. 1019 ¶ 43 (citing Ex. 1005, 4:33-38); Pet. 53.
Mr. Occhiogrosso further explains that, like Ryan, Alshawi “was also
concerned with accuracy in communication, and recognized that
misunderstandings could be reduced by providing both voice and text to a
caller.” Ex. 1019 ¶ 43 (citing Ex. 1010, 2:1-10); Pet. 53. Thus, to improve
clarity in communications for the hearing impaired, a person of ordinary
skill in the art would combine the relay services of Ryan with the
transmission of both voice and text in Alshawi to provide both voice of the
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hearing user and text of the hearing user’s words to the hearing impaired
user of Ryan’s relay. Ex. 1019 ¶¶ 43-44; Pet. 53-54.
Patent Owner argues there is insufficient reason to combine Ryan and
Alshawi. First, Patent Owner contends that a person of skill in the art
“would have no incentive to incorporate voice and text transmission from
Alshawi since the system of Ryan is incompatible with voice and text
transmission.” PO Resp. 39. We find unpersuasive Patent Owner’s
arguments that seem to require bodily incorporation of Alshawi’s parts into
Ryan’s system as of 1994 and 1995. PO Resp. 40-41. A determination of
obviousness is based not on bodily incorporation of parts from one disclosed
system into another, but what the combined teachings would have suggested
to one with ordinary skill in the art. In re Mouttet, 686 F.3d 1322, 1332
(Fed. Cir. 2012); Keller, 642 F.2d at 425.
Moreover, the relevant date is not the earliest effective filing date of
Ryan (1994) or Alshawi (1995). Rather, the relevant date is the date of the
invention of the ’346 patent, February 2001. See 35 U.S.C. § 103(a) (“A
patent may not be obtained . . . if the differences between the subject matter
sought to be patented and the prior art are such that the subject matter as a
whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter
pertains.”) (emphasis added).
Further, we are not persuaded by Patent Owner’s assertion that a
person of ordinary skill would not combine Alshawi’s video call with
Ryan’s relay system because video call “users could simply sign, rather than
speak, which would make transcription of voice unnecessary.” PO Resp. 42
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(citing Ex. 2001 ¶ 35). We credit Mr. Occhiogrosso’s explanation that
improved accuracy would result by providing both voice and text (Ex. 1019
¶ 44). The general principle of Mr. Occhiogrosso’s testimony is additional
channels of communication improve communication. This undercuts Mr.
Ludwick’s position that video call “users could simply sign, rather than
speak, [in a] video relay service making transcription of voice unnecessary”
(Ex. 1019 ¶ 44). It is within our discretion to assign the appropriate weight
to the testimony offered by Mr. Occhiogrosso and Mr. Ludwick. See, e.g.,
Yorkey, 601 F.3d at 1284.
Second, Patent Owner argues Alshawi and Ryan each teach away
from the proposed combination. PO Resp. 42-44. According to Patent
Owner, Alshawi emphasizes that a voice signal and translated text must be
presented simultaneously and continuously. PO Resp. 42-43. As such,
Ryan’s error correction techniques would delay the presentation of text,
which “would result in precisely the sort of awkward and unnatural
experience that Alshawi teaches against.” PO Resp. 43.
We do not agree with Patent Owner that Alshawi teaches away from
the claimed invention. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004) (prior art does not teach away from claimed subject matter merely by
disclosing a different solution to a similar problem unless the prior art also
criticizes, discredits, or otherwise discourages the solution claimed). Rather,
as Petitioner notes (Reply 11), a person of ordinary skill in the art need not
include the error correction of Ryan in the combination because the claims
do not require error correction.
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For a similar reason, we do not agree with Patent Owner’s argument
(PO Resp. 43-44) that, because Ryan “teaches the desirability of delaying
transmission of text until the text has been checked and corrected,” Ryan
teaches away from the claimed invention. The combination need not include
Ryan’s error correction. Accordingly, Ryan does not teach away from the
claimed invention.
Patent Owner then argues that the proposed modification would
change the principle of operation of Ryan. PO Resp. 44-47. We disagree
because we credit the testimony of Mr. Occhiogrosso that the principle of
operation of the portion of Ryan used in the combination is having a relay
agent repeat a hearing user’s words to provide text to an assisted user and
that principle of operation is unchanged in the combination. See Ex. 1037
¶ 64; Reply 12. It is within our discretion to assign the appropriate weight to
the testimony offered by Mr. Occhiogrosso. See, e.g., Yorkey, 601 F.3d at
1284.
In view of the foregoing, we are persuaded that Petitioner, with
support of its declarant, has articulated a sufficient reason to support a
conclusion of obviousness in view of Petitioner’s combination of Ryan and
Alshawi. See KSR, 550 U.S. at 418 (“[T]here must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.”) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
6. Secondary Considerations
Factual inquiries for an obviousness determination include secondary
considerations based on evaluation and crediting of objective evidence of
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nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
Notwithstanding what the teachings of the prior art would have suggested to
one with ordinary skill in the art at the time of the ’346 patent’s invention,
the totality of the evidence submitted, including objective evidence of
nonobviousness, may lead to a conclusion that the challenged claims would
not have been obvious to one with ordinary skill in the art. In re Piasecki,
745 F.2d 1468, 1471–72 (Fed. Cir. 1984). Secondary considerations may
include any of the following: long-felt but unsolved need, failure of others,
unexpected results, commercial success, copying, licensing, and praise. See
Graham, 383 U.S. at 17; Leapfrog Enters., 485 F.3d at 1162.
To be relevant, evidence of nonobviousness must be commensurate in
scope with the claimed invention. In re Kao, 639 F.3d 1057, 1068 (Fed. Cir.
2011) (citing In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)); In re Hiniker
Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998). Thus, to be accorded substantial
weight, there must be a nexus between the merits of the claimed invention
and the evidence of secondary considerations. In re GPAC, 57 F.3d at 1580.
“Nexus” is a legally and factually sufficient connection between the
objective evidence and the claimed invention, such that the objective
evidence should be considered in determining nonobviousness. Demaco
Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir.
1988). The burden of showing that there is a nexus lies with the Patent
Owner. Id.; see Paulsen, 30 F.3d at 1482.
Patent Owner alleges “substantial praise for the inventions claimed in
[Patent Owner’s] patents, including the ’346 Patent, the long-felt but
unresolved need of the deaf and hard of hearing community, the commercial
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success of the products and services embodying the invention, and the
failure of others to provide a relay service or other solution that provided the
benefits of the claimed inventions.” PO Resp. 49-51. For support, Patent
Owner proffers declarations by Ms. Brenda Battat (Ex. 2004) and
Ms. Constance Phelps (Ex. 2005) describing general innovations of Patent
Owner’s CapTel Service and its CapTel phone and describing their benefits
to the deaf and hard of hearing community. PO Resp. 50-51; see Ex. 2004
¶¶ 18-19, 25-41.
In an attempt to establish the requisite nexus, Patent Owner relies on a
declaration of Mr. Ludwick (Ex. 2002) asserting that it “explain[s], on a
feature by feature basis, the nexus between those secondary considerations
and the claimed design” and “illustrates, in chart form, that the CapTel
system and various models of CapTel phones embody the claims of the
present invention.” PO Resp. 51.
Patent Owner’s Response contains no substantive arguments. Id.
Instead, Patent Owner merely lists various common forms of secondary
considerations evidence, without exposition. This does not provide
sufficient analysis for us to determine whether Patent Owner has provided
adequate evidence of secondary considerations and a nexus between any
such evidence and the merits of the claimed invention. Thus, Patent
Owner’s broad contentions regarding secondary considerations in its Patent
Owner Response do not demonstrate nonobviousness.
Moreover, Patent Owner’s declarations fail to establish a nexus
between the merits of the claimed invention and the evidence of secondary
considerations. To show a nexus, Patent Owner relies on Mr. Ludwick’s
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declaration, which describes his visit to CapTel, Inc.’s relay center in
Madison, Wisconsin. Ex. 2002 ¶ 47. Mr. Ludwick’s chart presents his
conclusions based on personal observation that the CapTel Service meets
each claim limitation of the ’346 patent. Ex. 2002 ¶ 48 (pages 28-30). For
example, regarding “a digital computer connected to the microphone, the
computer programmed to use a voice recognition computer software
package trained to the voice of the call assistant to translate the words
spoken in voice by the call assistant into a digital text stream,” recited in
claims 1 and 2, Mr. Ludwick asserts:
I personally observed that the CapTel Service meets this claim
element. I further confirmed this from my own knowledge of
CapTel Service. This feature of the CapTel Service relay is
present when the Service is used with each of the CapTel
Phones and has always been included as part of the CapTel
Service.
Ex. 2002 ¶ 48 (page 28).
Because Mr. Ludwick’s conclusions are based on personal
observations, without sufficient supporting facts or data, his testimony has
little probative value. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d at
1368 (“[T]he Board is entitled to weigh the declarations and conclude that
the lack of factual corroboration warrants discounting the opinions expressed
in the declarations.”); see also Fed. R. Evid. 702 (providing one may testify
in the form of an opinion if the testimony is based on sufficient facts or
data). As such, Mr. Ludwick’s conclusory assertions do not provide a
sufficient connection between objective evidence and the claimed invention,
IPR2013-00545
Patent 6,594,346 B2
39
and so do not establish the requisite nexus between the merits of the claimed
invention and the evidence of secondary considerations.
Accordingly, Patent Owner fails to provide sufficient credible
evidence to support its allegations of nonobviousness based on secondary
considerations. When we balance Petitioner’s evidence of obviousness
against Patent Owner’s asserted objective evidence of nonobviousness, we
determine that a preponderance of the evidence supports Petitioner’s
position that claims 1 and 2 would have been obvious over Ryan and
Alshawi.
III. CONCLUSION
Petitioner has proven by a preponderance of the evidence that
claims 1 and 2 of the ’346 patent are unpatentable under 35 U.S.C. § 103(a)
as obvious over Ryan and Alshawi.
Patent Owner’s Motion to Exclude Evidence (Paper 41) is denied.
IV. ORDER
Accordingly, it is hereby:
ORDERED that Petitioner has demonstrated by a preponderance of
the evidence that claims 1 and 2 of U.S. Patent No. 6,594,346 B2 are
unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Exclude
Evidence (Paper 41) is denied; and
IPR2013-00545
Patent 6,594,346 B2
40
FURTHER ORDERED that, because this is a final written decision,
the parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

IPR2013-00545
Patent 6,594,346 B2
41
PETITIONER:

Brian W. Oaks
Bryant C. Boren Jr.
Harper S. Batts
Adam F. Smoot
Joseph Gray
BAKER BOTTS L.L.P.
brian.oaks@bakerbotts.com
bryant.c.boren@bakerbotts.com
harper.batts@bakerbotts.com
adam.smoot@bakerbotts.com
joseph.gray@bakerbotts.com

PATENT OWNER:

Michael Jaskolski
Martha Snyder
Nikia L. Gray
Michael J. Curley
QUARLES & BRADY LLP
michael.jaskolski@quarles.com
martha.snyder@quarles.com
nikia.gray@quarles.com
Michael.curley@quarles.com