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

Patent Trial and Appeal Board

Nov 5, 2015

11061682 (P.T.A.B. Nov. 5, 2015)

Trials@uspto.gov Paper 13
571-272-7822 Entered: November 5, 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 IPR2014-01287
Patent 7,660,398 B2
____________

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

PETTIGREW, Administrative Patent Judge.

DECISION
Petitioner’s Request for Rehearing
37 C.F.R. § 42.71

I. INTRODUCTION
Petitioner, CaptionCall, L.L.C., requests rehearing of our decision
(Paper 7, “Decision” or “Dec.”) denying institution of inter partes review of
claims 11–13 of U.S. Patent No. 7,660,398 B2 (Ex. 1001, “the ’398 patent”).
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Paper 8 (“Request” or “Req.”). We grant the Request for the limited
purpose of modifying the Decision as discussed below, but we decline to
modify our conclusion that the information presented in the Petition
(Paper 1, “Pet.”) and the Preliminary Response (Paper 6, “Prelim. Resp.”)
filed by Patent Owner, Ultratec, Inc., does not establish a reasonable
likelihood that Petitioner would prevail in showing that claims 11–13 of the
’398 patent are unpatentable.
II. DISCUSSION
The party challenging a decision in a request for rehearing bears the
burden of showing the decision should be modified. 37 C.F.R. § 42.71(d).
A request for rehearing “must specifically identify all matters the party
believes the Board misapprehended or overlooked, and the place where each
matter was previously addressed.” Id.
A. Engelke ’910
1

Petitioner contends we overlooked or misapprehended certain
teachings of Engelke ’910. Req. 3–7. First, Petitioner asserts that the
following statement on page 11 of the Decision is factually incorrect:
“Among the cited references, only Engelke ’685
[2]
teaches two-line
captioned telephone service, such as that recited in claim 11.” Req. 3. We
agree that this statement in the Decision overlooks the teaching of
Engelke ’910, cited in the Petition, that the relay protocol described in
connection with the one-line captioned telephone system in Figure 1 of

1
U.S. Patent No. 6,504,910 B1, issued Jan. 7, 2003 (Ex. 1005,
“Engelke ’910”).
2
U.S. Patent Application Publ’n 2002/0085685 A1 (Ex. 1004,
“Engelke ’685”).
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Engelke ’910 “may be used using two or more telephone lines.” Ex. 1005,
7:12–13; Pet. 38 (quoting Ex. 1005, 6:59–7:14). Accordingly, we grant
Petitioner’s Request for the purpose of modifying the second sentence on
page 11 of the Decision to read: “Engelke ’685 teaches two-line captioned
telephone service, such as that recited in claim 11.”
Second, Petitioner contends that we overlooked or misapprehended
the alleged teaching of Engelke ’910 that echo cancellation may be used in
captioned telephone service to cancel the assisted user’s voice. Req. 5.
According to Petitioner, the Petition specifically identifies disclosure in
Engelke ’910 of using echo cancellation to prevent the assisted user’s voice
from reaching the call assistant at the relay. Id. at 6 (citing Pet. 2–3, 36–37,
44–45). The cited portions of the Petition refer to the one-line captioned
telephone service shown in Figure 1 of Engelke ’910 and the following
sentence describing elements of Figure 1 (Ex. 1005, 3:33–35): “The output
digital signal from the codec 18 is then connected to a circuit or software
designed to cancel echo on the telephone line, as indicated at [line echo
cancellation] 20.” We remain unpersuaded that the arguments in the Petition
regarding this disclosure show sufficiently that Engelke ’910 teaches that the
line echo cancellation in Figure 1 prevents the assisted user’s voice from
reaching the relay. See Dec. 12.
The Request cites an additional sentence from Engelke ’910 that we
could not have overlooked because it was not cited in the Petition. See
Req. 6 (citing Ex. 1005, 3:62–64). In any event, that sentence merely states
that the voice of the hearing user is transmitted to the call assistant; it does
not state, as Petitioner contends, that the call assistant receives only the voice
of the hearing user. See id.
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Petitioner further contends we overlooked a prior art teaching
allegedly admitted by the ’398 patent regarding the use of echo cancellation
in one-line captioned telephone service to prevent the call assistant at the
relay from hearing the assisted user, and that such teaching supports a
finding that Engelke ’910 teaches using echo cancellation to prevent the
assisted user’s voice from reaching the relay. Id. at 6–7 (citing Pet. 3;
Dec. 4). It is not clear, however, that the discussion of using echo
cancellation in single-line captioned telephone service in the ’398 patent
refers to prior art, much less to the configuration described in Engelke ’910.
See Ex. 1001, 7:45–56.
Based on its contention that we overlooked or misapprehended
aspects of Engelke ’910’s disclosure, Petitioner argues we concluded
erroneously that the Petition fails to provide sufficient rationale for
combining the references in the manner asserted. Req. 7–10. As discussed,
we remain unpersuaded by Petitioner’s arguments that Engelke ’910
sufficiently teaches the use of echo cancellation to prevent the assisted user’s
voice from reaching the relay. Although we agree with Petitioner that
Engelke ’910 teaches two-line captioned telephone service, that does not
change our conclusion that Petitioner has not presented a convincing
rationale as to why one of ordinary skill in the art would have used echo
cancellation to cancel the voice of the assisted user from the second
telephone line in two-line captioned telephone service so the relay does not
hear the voice of the assisted user, as recited in claim 11. See Dec. 13.
Accordingly, we decline to modify our conclusion that the information
presented does not establish a reasonable likelihood that Petitioner would
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prevail in showing that claims 11–13 of the ’398 patent are unpatentable.
See id. at 14.
B. Alleged Contradictory Positions by Patent Owner
Petitioner also contends that the Decision relied on a statement in the
Preliminary Response regarding the scope of claim 11 that is inconsistent
with Patent Owner’s infringement contentions in related district court
litigation. Req. 11–15. According to Petitioner, Patent Owner should not be
permitted to avoid institution of trial based on a distinction between different
uses of echo cancellation that Patent Owner simultaneously argues is
irrelevant for purposes of infringement. Id. at 12–13. Apparently
recognizing that its argument does not identify a matter we misapprehended
or overlooked or that was addressed previously, see 37 C.F.R. § 42.71(d),
Petitioner contends we are permitted to consider inconsistent positions such
as those alleged here as a basis for granting a request for rehearing under
37 C.F.R. § 42.5(b), which provides that the Board may waive or suspend a
requirement of Board rules. Id. at 15.
Petitioner has not persuaded us that Patent Owner’s alleged
contradictory positions provide a sufficient basis for granting its Request for
Rehearing. First, contrary to Petitioner’s argument, our Decision did not
rely on any statements regarding claim scope made by Patent Owner in the
Preliminary Response. See Dec. 12–13. Furthermore, Petitioner provides
no reasoning for why we should waive the requirement that a request for
rehearing be based on matters allegedly overlooked or misapprehended by
the Board. See id. at 15. We also note that Petitioner was aware of Patent
Owner’s infringement contentions prior to our Decision, but only raises the
issue now.
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For these reasons, we decline to grant the Request for Rehearing on
the basis of alleged inconsistent positions by Patent Owner.
III. ORDER
Accordingly, it is:
ORDERED that Petitioner’s Request for Rehearing is granted for the
limited purpose of modifying the second sentence on page 11 of the
Decision as explained herein; and
FURTHER ORDERED that Petitioner’s Request for Rehearing is
denied in all other respects.
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FOR PETITIONER:
Brian Oaks
Harper Batts
Lisa Kelly
Baker Botts L.L.P.
brian.oaks@bakerbotts.com
harper.batts@bakerbotts.com
lisa.kelly@bakerbotts.com

FOR PATENT OWNER:
Michael Jaskolski
Michael J. Curley
Martha Jahn Snyder
Nikia L. Gray
Stephen J. Gardner
Quarles & Brady, LLP
michael.jaskolski@quarles.com
michael.curley@quarles.com
martha.snyder@quarles.com
nikia.gray@quarles.com
stephen.gardner@quarles.com