Ultratec, Inc.

Patent Trials and Appeals Board

Jan 27, 2021

IPR2020-01215 (P.T.A.B. Jan. 27, 2021)

Trials@uspto.gov Paper 6
571-272-7822 Date: January 27, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

CAPTIONCALL, LLC,
Petitioner,
v.
ULTRATEC, INC.,
Patent Owner.

IPR2020-01215
Patent 10,469,660 B2

Before WILLIAM V. SAINDON, NATHAN A. ENGELS, and
SCOTT B. HOWARD, Administrative Patent Judges.

ENGELS, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314

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I. INTRODUCTION
Petitioner CaptionCall, LLC filed a Petition (Paper 1, “Pet.”)
requesting inter partes review of claims 1–45 of U.S. Patent No. 10,469,660
B2 (Ex. 1001, “the ’660 patent”). Patent Owner, Ultratec, Inc. did not file a
Preliminary Response.
Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
unless the information presented in the Petition and any response thereto
shows “there is a reasonable likelihood that the petitioner would prevail with
respect to at least 1 of the claims challenged in the petition.” Upon
consideration of the Petition and the evidence of record, we determine that
Petitioner has not demonstrated a reasonable likelihood of prevailing in
establishing unpatentability of at least one claim of the ’660 patent.
Accordingly, we deny the Petition and do not institute an inter partes
review.
A. Related Matters
The parties identify U.S. Patent Nos. 10,015,311; 8,917,821;
8,416,925; and 7,881,441 (which was subject to IPR2015-01886) as related
patents that may be affected by this proceeding. Pet. 1–2; Paper 3, 2. Patent
Owner additionally identifies US Patent Application No. 16/559,172 and US
Patent Application No. 16/559,323 as related applications. Paper 3, 1.
B. Real Parties in Interest
Petitioner identifies CaptionCall LLC and Sorenson Communications,
LLC as the real parties-in-interest. Pet. 1.
Patent Owner identifies Ultratec, Inc. and CapTel, Inc. as the real
party in interest. Paper 3, 1.

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C. The ’660 Patent
The ’660 patent “relates generally to telephone systems and
specifically to telephone systems that provide for real-time text captioning
for the hard of hearing.” Ex. 1001, 1:25–27. The ’660 patent states that
features of such systems include text telephone (“TTY”), also known as
telecommunications devices for the deaf (“TDD”). According to the ’660
patent:
Hearing users may communicate with deaf users who have
TTY devices through so-called “relays.” A relay is a service
funded by telephone communication surcharges that provides a
“call assistant” who intermediates between a deaf user and a
hearing user. The call assistant communicates with the deaf user
using a TTY and communicates with the hearing user by voice
over a standard telephone line.
Id. at 1:35–41.
The ’660 patent describes an embodiment in which “a standard desk
top computer 14 may work in conjunction with a standard telephone (i.e.,
not text captioned), in this case a cell telephone 72 . . . without a direct
connection between the cell telephone 72 and the computer 14.” Id. at
12:39–45. This embodiment is pictured in Figure 5, reproduced below.

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Figure 5 depicts computer 14 connected by Internet 34 to relay service 56,
with relay service 56 also connected to external telephone 28 and to cell
phone 72 by public switched telephone network 26. Id. at 12:39–53.
D. Illustrative Claim
Claims 1, 25, and 38 are independent claims. Claim 1, reproduced
below, is illustrative of the subject matter of the challenged claims.
1. A communication system, comprising:
a wireless mobile device that includes a mobile device processor
and a mobile device display;
an appliance including a display configured to display text
captions corresponding to voice communications between
a wireless mobile device and a hearing user’s device that
is located remotely from the appliance to enable an
assisted user using the mobile device to participate in
communication sessions with a hearing user using the
hearing user’s device, wherein the appliance has a first
network address and the mobile device is associated with
a second address that is different than the first network
address and wherein the appliance is independent of the
mobile device, the first and second addresses useable to
link to the appliance and the mobile device for
communication therewith, respectively, the mobile device
including a mobile device display and a processor, the
appliance comprising:
at least one communication component configured to enable the
appliance to communicate with a relay;
an appliance display; and
an appliance processor operably coupled to the at least one
communication component and the display;
wherein, the mobile device processor is configured to, upon an
incoming call being received by the mobile device, present
a first indication of the call via the mobile device display;
the appliance processor configured to:
upon answering an incoming call, while at least one of the mobile
device and the appliance is used by the assisted user to
communicate via voice signals with the hearing user’s
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device, independent of any user action to associate the
mobile device and the appliance subsequent to the call
being received, receive text originating at the relay, the
text corresponding to a transcript of the hearing user’s
voice signal originating at the hearing user’s device,
wherein the text signal is received from the relay; and
(ii) cause text captions corresponding to the received text to be
displayed on the appliance display; and
wherein the mobile device is only wirelessly linked to other
devices within the communication system.

E. Alleged Grounds of Unpatentability
Petitioner asserts that claims 1–45 would have been unpatentable on
the following grounds:
Claims Challenged 35 U.S.C. §1 Reference(s)/Basis
1–21, 23–38, 41, 43–45 102 McLaughlin ’1692
1–21, 23–38, 41, 43–45 103 McLaughlin ’169
1–21, 23–38, 41, 43–45 102 McLaughlin ’7953
1–21, 23–38, 41, 43–45 103 McLaughlin ’795
22, 42 103 McLaughlin ’169,
August4
22, 42 103 McLaughlin ’795,
August

1 The Leahy-Smith America Invents Act (“AIA”) included revisions to
35 U.S.C. § 103 that became effective on March 16, 2013. Because the ’660
patent claims the benefit of the filing date from an application filed before
March 16, 2013, we apply the pre-AIA version of the statutory basis for
unpatentability. See Ex. 1001, code (63).
2 US 2005/0232169 A1, published Oct. 20, 2005 (Exhibit 1004)
(“McLaughlin ’169”).
3 US Provisional Patent Application 60/562,795. (Exhibit 1005)
(“McLaughlin ’795”).
4 US 5,671,267, issued Sept. 23, 1997 (Exhibit 1007) (“August”).
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39, 40 103 McLaughlin ’169,
Michaelis5
39, 40 103 McLaughlin ’795,
Michaelis
1–7, 9–15, 17–21, 23–25,
28–30, 32–38, 41, 43
103 Engelke6
8, 31 103 Engelke, McClelland7
22, 42 103 Engelke, August
39, 40 103 Engelke, Michaelis
Petitioner also relies upon the testimony of Benedict J. Occhiogrosso
(Ex. 1019).
II. ANALYSIS
A. Legal Standards
As noted above, Petitioner asserts grounds of both anticipation and
obviousness. “Because the hallmark of anticipation is prior invention, the
prior art reference—in order to anticipate under 35 U.S.C. § 102—must not
only disclose all elements of the claim within the four corners of the
document, but must also disclose those elements arranged as in the claim.”
Net MoneyIn, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008)
(internal quotation marks omitted). For obviousness, the Supreme Court set
out a framework for assessing obviousness under § 103 that requires
consideration of four factors: (1) the “level of ordinary skill in the pertinent
art,” (2) the “scope and content of the prior art,” (3) the “differences between
the prior art and the claims at issue,” and (4) “secondary considerations” of

5 US 2005/0063520 A1, published Mar. 24, 2005 (Exhibit 1008)
(“Michaelis”).
6 US 2002/0085685 A1, published July 4, 2002 (Exhibit 1009) (“Engelke”).
7 US 2005/0129185 A1, published June 16, 2005 (Exhibit 1010)
(“McClelland”).
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non-obviousness such as “commercial success, long felt but unsolved needs,
failure of others, etc.” Graham v. John Deere Co, 383 U.S. 1, 17–18 (1966).
B. Level of Ordinary Skill in the Art
Factors pertinent to a determination of the level of ordinary skill in the
art include “(1) the educational level of the inventor; (2) type of problems
encountered in the art; (3) prior art solutions to those problems; (4) rapidity
with which innovations are made; (5) sophistication of the technology; and
(6) educational level of active workers in the field.” Envtl. Designs, Ltd. v.
Union Oil Co. of Cal., 713 F.2d 693, 696–697 (Fed. Cir. 1983) (citing
Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376,
1381–82 (Fed. Cir. 1983)). “Not all such factors may be present in every
case, and one or more of these or other factors may predominate in a
particular case.” Id.
Petitioner contends a person of ordinary skill in the art at the time of
the invention “would have been a person with a bachelor’s degree in
electrical engineering (or electrical and computer engineering) and a few
years of experience with telephone communication system architecture,
design and implementation, digitization of voice, and/or traditional relay
systems.” Pet. 6 (citing Ex. 1019 ¶¶ 34–38).
Because Petitioner’s recitation of the level of skill in the art is
supported by the testimony of Mr. Occhiogrosso and not disputed at this
time by Patent Owner, we adopt Petitioner’s proposed level of ordinary skill
for the purposes of this Decision.
C. Claim Construction
We construe claims “using the same claim construction standard that
would be used to construe the claim in a civil action under 35 U.S.C.
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282(b).” 37 C.F.R. § 42.100(b) (2019). Specifically, we apply the
principles set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed.
Cir. 2005) (en banc). Under that standard, the words of a claim are generally
given their “ordinary and customary meaning,” which is the meaning the
term would have to a person of ordinary skill at the time of the invention, in
the context of the entire patent including the specification. Phillips, 415
F.3d at 1312–13.
Petitioner states that it applied the ordinary and customary meaning as
understood by a person of ordinary skill and does not propose any specific
construction for any term. Pet. 7. Petitioner additionally states “Petitioner
does not believe that any of the claim terms of the ’660 Patent need-be
construed according to 35 U.S.C. § 112 ¶ 6,” but Petitioner notes that the
terms “communication component” of claim 1 and “communication link” of
claims 23 and 24 “might be argued as being subject to § 112 ¶ 6.” Id.
Because no express constructions are needed to resolve any dispute in
this proceeding, we do not expressly construe any of the claim limitations.
See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that
are in controversy, and only to the extent necessary to resolve the
controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
795, 803 (Fed. Cir. 1999))).
D. Summary of Prior Art References
1. McLaughlin ’169 (Ex. 1004)
McLaughlin ’169 “relates to relay-assisted telecommunication for the
hearing and speech-impaired.” Ex. 1004 ¶ 2. McLaughlin ’169 describes “a
multimedia conference bridge and a ‘relay-on-demand’ technique to
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facilitate relay calls,” where incoming calls are directed to a “bridge to
detect if relay services are required.” Id. ¶ 15. “If the multimedia
conference bridge detects a disparity in the party’s capabilities, e.g., a party
is hearing and speaking and the other is hearing or speech-impaired, then the
conference bridge automatically places a call to a relay operator.” Id.
McLaughlin ’169 describes that a “voice user 118 operates a voice
telephone 120 to communicate with an impaired user 122,” who “may
operate a text device 124 . . . [which] may include a TTY, personal computer
with a web browser, PDA, or other device capable of reading or generating
text data.” Ex. 1004 ¶ 31. The “hearing-impaired user 122 may operate a
telephone 126 to deliver voice and read text from the text device 124,”
where “text is received from a relay operator who translates the text from
voice.” Id.
McLaughlin ’169 states that in “one embodiment, the conventional
telephone 126 manages the voice while a text channel is transmitted to a
separate text device.” Ex. 1004 ¶ 31. McLaughlin ’169 also states that
[i]n an alternative embodiment, the telephone 126 is embodied
as a specialized telephone that manages both voice and text data.
The telephone 126 provides voice and includes a display to show
readable text. Some conventional telephones include an
addressable display and may be incorporated into the teachings
of the present invention.
Id. ¶ 32.
Figure 5, reproduced below, shows an embodiment of communication
in a conference call with relay service. Ex. 1004 ¶ 9.
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Figure 5 depicts voice user 118 connected with audio communications to
call center 128 and to hearing-impaired user 122, with operator 130 at call
center 128 also connected to hearing-impaired user 122 by audio and text
communications between the call center and telephone 126 and computer
124 of hearing-impaired user 122. Id. ¶ 56.
McLaughlin ’169 claims priority to and states that it incorporates
McLaughlin ’795 by reference. Ex. 1004, code (60), ¶ 1.
2. McLaughlin ’795 (Ex. 1005)
McLaughlin ’795 is a provisional patent application made up of a
121-page collection of notes, white papers, and other disclosures relating to
TTY services. See Ex. 1005. Among other things, McLaughlin ’795
describes “[r]elay mediated voice/text calls,” involving voice participant A,
hard of hearing participant B, and relay operator C. Id. at 120.8 McLaughlin
’795 states that participant A may use a VoIP phone, analog phone, PBX
phone, or “wireless ‘cell’ phone.” Id. at 121. Participant B “requires a full
duplex or 2-way audio device, and also requires a text display.” Id.
Participant B’s audio device “can be any of the types of devices discussed

8 References to page numbers in Exhibit 1005 refer to the page numbers
added by Petitioner.
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above available to participant A,” and examples of Participant B’s text
devices include “(a) a text [display] on a phone, (b) a computer screen where
the computer is running a program (like the NTS client), browser, etc., (c) a
PDA or other wireless device with a display, (d) a TTY or ITU modem
device.” Id.
3. Engelke (Ex. 1009)
Engelke “relates to systems to assist telephone communications by
those persons who are deaf, hard of hearing, or otherwise have impaired
hearing capability.” Ex. 1009 ¶ 3. Engelke states its system “is intended to
take advantage of two developments in the field of assisted telephone
services, the personal interpreter and the re-voicing relay.” Id. ¶ 18. The
“personal interpreter” is
a small portable device capable of delivering, with the support of
a relay, text to a deaf user of any human conversation occurring
in the presence of the personal interpreter. The personal
interpreter is set up to connect telephonically to a relay, transmit
spoken words to the relay, and then display for the assisted user
the text of the words transmitted over the telephone connection
to the relay.
Id. ¶ 19. The personal interpreter “is preferably wired to a cellular
telephone 20 included within the case of the personal interpreter 10.” Id.
¶ 22.
Engelke describes both one-line and two-line captioned telephone
service. Ex. 1009 ¶¶ 37–39. In one-line captioned telephone service, a
hearing user communicates through a telephone line with a relay, which
converts the hearing user’s voice to text and transmits both the text and the
hearing user’s voice to an assisted user’s captioned telephone device. Id. ¶
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37. In two-line captioned telephone service, the assisted user has two
telephone lines, as shown in Engelke’s Figure 5, reproduced below:

Figure 5 illustrates two-line captioned telephone service, in which telephone
62 of the hearing user and telephone 70 of the assisted user are connected by
telephone line 64. Id. ¶ 38. The voice of the hearing user is transferred
through captioned telephone device 74 to telephone line 78 to be transmitted
to relay 76. Id. Relay 76 converts the voice of the hearing user to text,
which is transmitted via telephone 78 to captioned telephone device 74 for
display to the assisted user. Id. ¶ 39.
E. Grounds 1–4
The Petition combines Grounds 1–4 into one claim chart providing a
claim-by-claim, limitation-by-limitation comparison of claims 1–21, 23–38,
41, and 43–45 to both McLaughlin ’169 and McLaughlin ’795, with
citations to Mr. Occhiogrosso’s testimony as support. Pet. 22–37.
Each of independent claims 1, 25, and 38 includes limitations relating
to a hearing-assisted user using a wireless mobile device having voice
communications. Our analysis of Grounds 1–4 focuses primarily on these
limitations, which we find dispositive for Grounds 1–4.
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1. The “wireless mobile device” limitations
As noted above, McLaughlin ’169 incorporates McLaughlin ’795 by
reference. Below we first address the references’ disclosures individually,
followed by discussion of the references’ teachings as incorporated by
reference.
a) McLaughlin ’169
In the Petition’s claim chart, Petitioner states that McLaughlin ’169
“discloses a telephone (telephone 126) of a hearing assisted user (impaired
user 122)” (Pet. 22 (citing Ex. 1004 ¶ 30, Fig. 5)) and “mobile phone
(telephone 126)” (Pet. 23–24 (citing Ex. 1004 ¶¶ 31–32)). But the cited
portions of McLaughlin ’169 state only that telephone 126 is a “conventional
telephone 126” in one embodiment (Ex. 1004 ¶ 31) and a “specialized
telephone” in an alternative embodiment (Ex. 1004 ¶ 32). Paragraph 30 of
McLaughlin ’169 mentions “wireless devices,” stating “[t]he network 116
provides communication between telephones, facsimile machines, TTY,
wireless devices, and the like,” but Petitioner does not adequately explain
how that, Figure 5, or other disclosures in McLaughlin ’169 supports
Petitioner’s assertion that McLaughlin ’169 “discloses” a “mobile phone.”
McLaughlin ’169 cannot anticipate the challenged claims at least
because it does not disclose the limitations requiring a wireless mobile
device. Petitioner does not allege that, at the time of invention of the ’660
patent, a person of ordinary skill “would at once envisage” a wireless mobile
device in the system of McLaughlin ’169 as arranged in the claim. Cf.
Microsoft Corp. v. Biscotti, Inc., 878 F.3d 1052, 1069 (Fed. Cir. 2017)
(analyzing evidence cited in an anticipation argument to determine whether
a person of ordinary skill would have at once envisaged a disputed element).
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The Petition instead just states that McLaughlin ’169 “discloses” a mobile
phone with insufficient explanation. Pet. 22.
The Petition also lacks adequate explanation regarding how Petitioner
contends the challenged claims would have been obviousness in view of
McLaughlin ’169. In fact, Petitioner does not specifically address single-
reference obviousness regarding a mobile phone and McLaughlin ’169. See
Pet. 22. We will not surmise what Petitioner could have written. See SAS
Institute Inc. v. Iancu, 138 S.Ct. 1348, 1355 (2018) (“in an inter partes
review the petitioner is master of its complaint,” “it’s the petitioner . . . who
gets to define the contours of the proceeding”).
b) McLaughlin ’795
Petitioner asserts that McLaughlin ’795 “discloses an audio device of
the hearing assisted user (participant B) as a wireless mobile phone device
(mobile phone), such as a wireless cell phone, that is only wirelessly linked
to other communication devices within the communication system.” Pet. 22
(citing Ex. 1005 p. 121). As cited by Petitioner, McLaughlin ’795 states that
a “hearing/speaking participant A will typically use a phone or other audio
device.” Ex. 1005 p. 121. McLaughlin ’795 further states “[t]he phone
could be on a phone extension from a PBX or key type phone system, or
could be a wireless ‘cell’ phone. Any type of audio device can be used,
including computers with microphones and speakers, or a phone
headset/handset connecting to a computing device.” Ex. 1005 p. 121.
Describing a “hard of hearing participant B,” McLaughlin ’795 states
that participant B “requires a full duplex or 2-way audio device, and also
requires a text display for showing incoming text characters. The audio
device can be any of the types of devices discussed above available to
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participant A. The text device can be any device capable of receiving
incoming text sent by [a relay operator,] participant C.” Ex. 1005 p. 121.
Although McLaughlin ’795 states that hard-of-hearing participant B
could use any type of audio device listed for participant A, including a
“wireless ‘cell’ phone,” the Petition does not adequately explain how
McLaughlin ’795 discloses a wireless cell phone in combination with the
remaining claim elements arranged as in the claim. Specifically, claim 1
separately recites “a wireless mobile device that includes . . . a mobile
device display” and “an appliance including a display configured to display
text captions . . . wherein the appliance is independent of the mobile device.”
For the mobile device display, the Petition cites McLaughlin ’795’s
disclosure of a “display on a phone itself.” Pet. 23 (citing p. 120; quoting
p. 121). That language, however, describes a text display for providing
closed captioning, separate from McLaughlin ’795’s list of audio devices:
The audio device can be any of those types of devices discussed
above available to participant A. The text device can be any
device capable of receiving incoming text sent by participant C.
Examples of text devices include: (a) a text diisplay [sic] on a
phone, (b) a computer screen . . ., (c) a PDA or other wireless
device with a display, (d) a TTY or ITU modem device.
-- It is noted in particular that a display on a phone itself is
an attractive choice in Call Type 1. The hard of hearing
person B can answer a phone call, and on the phone itself
see ‘closed captioning’ of the incoming voice sounds.

Ex. 1005 p. 121 (underline and italics added).
The Petition cites the italicized passage for the recited “wireless
mobile display” (Pet. 23) and the underlined passage for the recited
“appliance including a display configured to display text captions” (Pet. 23–
24). Both passages are examples of what McLaughlin ’795’s describes as a
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“text display,” yet the Petition ascribes McLaughlin ’795’s text displays to
two different claim elements. Pet. 23–24.
McLaughlin ’795 does not describe a system having two separate text
displays, and the Petition does not reconcile McLaughlin ’795’s disclosure
with the fact that the claim expressly recites two separate displays. Instead,
the Petition’s assertions amount to picking and choosing elements from
McLaughlin ’795. As cited by the Petition, McLaughlin ’795 does not
disclosure all claim elements arranged as in the claims, as required for
anticipation.9
In fact, Petitioner does not reconcile the requirement for two separate
display elements in either the anticipation context or in the context of
obviousness. As with McLaughlin ’169, the Petition lacks adequate
explanation regarding the asserted single-reference obviousness ground
based on McLaughlin ’169.
c) McLaughlin ’169’s Incorporation by Reference
As noted above, McLaughlin ’169 incorporates McLaughlin ’795 by
reference, and McLaughlin ’795 mentions a wireless cell phone, while
McLaughlin ’169 does not. Even with the incorporation by reference,

9 We also note that the Petition provides only a conclusory statement that
McLaughlin ’795 satisfies the limitation “independent of any user action to
associate the mobile device and the appliance subsequent to the call being
received, receive text originating at the relay” of claim 1. Pet. 26–27 (citing
Ex. 1005 p. 120; Ex. 1019 ¶¶ 70–71). Neither the Petition nor Mr.
Occhiogrosso adequately explains how McLaughlin ’795 satisfies that claim
element. In fact, McLaughlin ’795 expressly describes initiating relay
services after a call is answered: “If relay services are not needed, then the
present invention will allow the call to proceed, but if relay services are
needed, then the invention will ‘conference’ a relay operator into the call on
an as-needed basis.” Ex. 1005 p. 122.
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though, anticipation requires more than a showing of all claim elements
within the four corners of a reference. Net MoneyIn, 545 F.3d at 1369.
Anticipation requires all elements arranged as in the claim without the need
to pick and choose elements from different disclosures (id.), but the lack of
explanation in the Petition again requires picking and choosing different
elements from different disclosures.
Although McLaughlin ’795 mentions a “wireless ‘cell’ phone,” the
Petition cites McLaughlin 169’s disclosure that “telephone 126 . . . includes
a display.” Pet. 23 (citing Ex. 1004 ¶ 32). The cited paragraph 32 of
McLaughlin ’169, however, expressly states “[i]n an alternative
embodiment, the telephone 126 is embodied as a specialized telephone that
manages both voice and text data.” Not only is this “alternative
embodiment” distinct from the “conventional telephone” described in
paragraph 31, there is no explanation of how these disclosures would be
compatible with the “wireless ‘cell’ phone” that is generically mentioned in
McLaughlin ’795, and it is unclear from the Petition whether the
incorporation by reference of McLaughlin ’795’s wireless cell phone would
take the place of the “specialized telephone” of paragraph 32 or the
“conventional telephone” of paragraph 31. Moreover, the Petition does not
explain how the combination of references discloses or teaches the separate
requirements of a “wireless mobile display” and an “appliance including a
display configured to display text captions . . . independent of the mobile
device.”
To any extent that the Petition’s mention of “a mobile device [second]
display” (e.g., Pet. 23) is intended to argue that nothing in claim 1 forecloses
the possibility that text captions can be displayed on both the mobile display
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device and the appliance’s display (a) the Petition does not adequately make
that argument, and (b) the Petition does not cite evidence suggesting that
either reference teaches displaying text captions on two different devices.
No evidence supports an argument that McLaughlin ’169, including the
disclosure of McLaughlin ’795 by reference, anticipates claim 1 by
disclosing a system displaying text captions on two separate displays, and
Petitioner does not argue that such a system would have been obvious.
Moreover, to the extent that Petitioner relies on Mr. Occhiogrosso’s
testimony to fill in holes or make up for the lack of explanation in the
Petition, such a strategy would amount to incorporation by reference, and
our rules do not allow parties to incorporate arguments into a petition by
reference. 37 C.F.R. § 42.6(a)(3); see Boston Scientific Neuromodulation
Corp. v. Nevro Corp., 813 F. App’x 572, 582 (Fed. Cir. May 29, 2020)
(affirming the Board’s decision to exclude portions of an expert declaration
where missing elements were only addressed in the expert declaration as an
attempt to incorporate arguments by reference) (unpublished); General
Access Solutions, Ltd. v. Sprint Spectrum L.P., 811 F. App’x 654, 657 (Fed.
Cir. May 11, 2020) (explaining that the prohibition on incorporation by
reference prevents the Board from being forced to “play archeologist with
the record” and search for arguments that might have been made outside of
the parties’ briefing) (citation omitted) (unpublished).
Accordingly, having considered Petitioner’s arguments in light of the
evidence of record, we determine Petitioner has not satisfied its burden to
show a reasonable likelihood that it would prevail in any of Grounds 1–4.
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F. Grounds 5–8
Petitioner’s Grounds 5–8 include either McLaughlin ’169 or
McLaughlin ’795 as a primary reference in combination with August or
Michaelis, and Grounds 5–8 address only dependent claims 22, 39, 40, and
42. Petitioner’s citations of secondary references do not addresses the
deficiencies addressed above in Petitioner’s arguments regarding the
independent claims.
Accordingly, for the same reasons addressed above, we determine
Petitioner has not satisfied its burden to show a reasonable likelihood that it
would prevail on any of grounds 5–8.
G. Grounds 9–12
Each of Grounds 9–12 includes Engelke as the primary reference
either alone (Ground 9) or in combination with additional references
(Grounds 10–12). The Petition includes a claim-by-claim, limitation-by-
limitation claim chart for each of Grounds 9–12, with citations to Mr.
Occhiogrosso’s testimony as support. Pet. 44–60.
Unlike Grounds 1–8, which are deficient in addressing the limitation
for a wireless phone, Petitioner explains how Engelke describes a wireless
phone. Id. at 44–45. Thus, we focus on other limitations. Each of
independent claims 1, 25, and 38 includes limitations relating to a hearing-
assisted user associating with an appliance “independent of any user action
subsequent to [a] call being received.” Our analysis focuses on those
limitations, which we find dispositive for Grounds 9–12.
1. The “independent of any user action” limitations
As noted above, independent claim 1 recites “independent of any user
action to associate the mobile device and the appliance subsequent to the call
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being received, receive text originating at the relay.” For this limitation,
Petitioner argues that Engelke discloses associating the appliance (cited as
Engelke’s personal interpreter 74) with the assisted user’s telephone 70
independent of any user action subsequent to the call being received
“because any such action to associate the telephone 70 and the personal
interpreter 74 may take place prior to the call being received.” Pet. 47
(citing Ex. 1009 ¶¶ 38, 39, 42; Ex. 1019 ¶ 144).
As cited by Petitioner, paragraph 38 of Engelke describes hardware
setup, teaching physically placing a microphone near an assisted user’s
phone. Paragraph 39 states, in part,
if the assisted user decides captioning would be helpful to his or
her understanding of the conversation, the captioning service can
be added while the call is in progress. To add the captioning
service, the assisted user simply has the [personal interpreter 74]
dial the relay over the second telephone line.
Ex. 1019 ¶ 144 (quoting Ex. 1009 ¶ 39). And paragraph 42 states: “The
captioned telephone feature would be activated by a button or key, which
would cause the unit to dial a pre-selected relay and set up a captioning
session, whether or not a call on the other line is yet in progress.” Ex. 1009
¶ 42 (emphasis added). According to Mr. Occhiogrosso,
a person of ordinary skill in the art would have understood that
the assisted user could push the button disclosed in [paragraph
42 of Engelke] and thus establish the link to the relay (relay 76)
before answering or placing a call. In that context, there would
be no action by the assisted user to associate the mobile phone
(telephone 70) and the appliance/computer device (personal
interpreter 74) after the answering of the call, both because the
microphone is placed near the mobile phone (telephone 70)
before the call has come in or is answered, and because the
button is pushed to get captions before the call is answered.

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Ex. 1019 ¶ 144 (citing Ex. 1009 ¶ 42) (emphasis added).
We determine Petitioner has not satisfied its burden with respect to
this limitation, as the evidence does not support Petitioner’s arguments. To
the contrary, Engelke plainly describes an assisted user taking action after
receiving a call (e.g., after the phone begins to ring), even if those actions
can be taken before answering the call (e.g., the user picks up the phone and
begins to speak to the caller). In paragraph 39, Engelke describes a “single
line” embodiment in which “for an incoming call, the call must [be] directed
through the relay to the assisted user at the beginning of the call.” Ex. 1009
¶ 29 (emphasis added). Engelke also describes that “[f]or a two-line
captioned telephone call, however, the call can be started as a normal
telephone communication session, without the relay or the captioning. Then,
if the assisted user decides captioning would be helpful . . ., the captioning
service can be added while the call is in progress.” Ex. 1009 ¶ 39 (emphasis
added).
Both scenarios of paragraph 39 plainly describe action by the assisted
user subsequent to a call being received, and we are not persuaded on this
record that paragraph 42 supports a different reading. Describing the two-
line captioned telephone call depicted in Figure 5 (as also described in
paragraphs 38 and 39), Engelke only describes that an assisted user can dial
a pre-selected relay to set up a captioning session, “whether or not a call on
the other line is yet in progress.” Ex. 1009 ¶ 42 (emphasis added).
Consistent with paragraph 39, and inconsistent with Petitioner’s arguments,
the sentence immediately following the cited portion of paragraph 42 states
that “[t]he voice signals incoming on the first telephone line from the
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hearing user would be transferred electronically to the telephone line to the
relay.” Ex. 1009 ¶ 42.
In other words, in both paragraphs 39 and 42, Engelke teaches that an
assisted user may set up a captioning session after receiving a call, when
“voice signals [are] incoming,” “whether or not a call on the other line is yet
in progress.” Ex. 1009 ¶ 42. Engelke does not teach or reasonably suggest
that an assisted user would activate “a button or key, which would cause the
unit to dial a pre-selected relay and set up a captioning session” before
receiving an incoming call. Ex. 1009 ¶ 42 (emphasis added).
Mr. Occhiogrosso’s testimony similarly evidences action by an
assisted user subsequent to receiving an incoming call, even if such action is
taken prior to answering the call. As quoted above, Mr. Occhiogrosso states
that a person of ordinary skill would have understood that an assisted user
“could push the button . . . and thus establish the link to the relay (relay 76)
before answering or placing a call.” Ex. 1019 ¶ 144 (emphasis added).
Similarly, Mr. Occhiogrosso states that there would be no action by the
assisted user to associate the mobile phone and personal interpreter “after the
answering of the call . . . because the button is pushed to get captions before
the call is answered.” Ex. 1019 ¶ 144. Mr. Occhiogrosso’s testimony
regarding action “before answering” a call does not support Petitioner’s
argument that Engelke teaches or suggests the limitation of claim 1 that
requires “independent of any user action to associate the mobile device and
the appliance subsequent to the call being received, receive text originating
at the relay.”
Petitioner relies on the same evidence and arguments for equivalent
limitations of independent claims 25 and 38 (Pet. 50 (addressing claim 25
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23
with reference to claim 1), 52 (addressing claim 38 with reference to claim
1)), and Petitioner does not allege that any of the secondary references
addresses these limitation (see Pet. 47–60).
Accordingly, having considered Petitioner’s arguments in light of the
evidence of record, we determine Petitioner has not satisfied its burden to
show a reasonable likelihood that it would prevail in any of Grounds 9–12.
III. CONCLUSION
For the reasons set forth above, we determine that Petitioner has not
demonstrated a reasonable likelihood of prevailing with respect to at least
one claim of the ’660 patent. Accordingly, we do not institute an inter
partes review.
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that, pursuant to 35 U.S.C. § 314, no inter partes review
is instituted as to any claim of the ’660 patent.

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FOR PETITIONER:
Adam Smoot
John Gadd
Brian Parke
asmoot@mabr.com
jgadd@mabr.com
bparke@mabr.com

FOR PATENT OWNER:

Michael Jaskolski
Martha Snyder
Michael.jaskolski@quarles.com
Martha.snyder@quarles.com