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

Patent Trial and Appeal Board

Feb 12, 2015

11061682 (P.T.A.B. Feb. 12, 2015)

Trials@uspto.gov Paper 7
571-272-7822 Entered: February 12, 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
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

I. INTRODUCTION
Petitioner, CaptionCall, L.L.C., filed a Petition for inter partes review
of claims 11–13 of U.S. Patent No. 7,660,398 B2 (Ex. 1001, “the
’398 patent”). Paper 1 (“Pet.”). Patent Owner, Ultratec, Inc., filed a
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Preliminary Response. Paper 6 (“Prelim. Resp.”). Institution of an inter
partes review is authorized by statute when “the information presented in the
petition . . . and any response . . . shows that there is a reasonable likelihood
that the petitioner would prevail with respect to at least 1 of the claims
challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108.
Upon consideration of the Petition and the Preliminary Response, we
conclude the information presented does not show there is a reasonable
likelihood that Petitioner would prevail in establishing the unpatentability of
claims 11–13 of the ’398 patent.
A. Related Matters
The parties indicate that the ’398 patent is being asserted in Ultratec,
Inc. v. Sorenson Communications, Inc., No. 3:14-CV-00066 (W.D. Wis.).
Pet. 4; Paper 5, 2 (Patent Owner’s Mandatory Notice).
B. The ’398 Patent
The ’398 patent relates to a captioned telephone service that provides
assistance to a user who is hard of hearing. Ex. 1001, Abstract. Using a
captioned telephone device, an assisted user receives normal voice from a
remote party, as well as a text transcription of the words spoken by the
remote party. Id. at 1:43–47. The ’398 patent describes a two-line
captioned telephone service in which an assisted user’s captioned telephone
device connects via a first telephone line to a remote user and via a second
telephone line to a relay that provides captioning for a conversation. Id. at
1:66–2:4.
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Figure 2 of the ’398 patent is reproduced below:

Figure 2 is a schematic diagram of captioned telephone device 100 with an
integrated telephone for the assisted user. Id. at 3:8–12. The captioned
telephone device connects to a remote party via telephone line 121 and to a
relay center via telephone line 102. Id. at 3:23–26, 3:43–47. The captioned
telephone device passes the voice signal from telephone line 121 to the
speaker in handset 120 for the assisted user. Id. at 3:43–45. It also passes
the voice signal to codec 118 to be digitized and eventually sent to the relay
over telephone line 102. Id. at 3:35–37. “[E]cho control circuit 116 is used
to remove the voice of the assisted user at . . . handset 120 from the voices of
the other party.” Id. at 3:37–39. The remaining components compress,
format, and send the signal to the relay over telephone line 102. Id. at 3:39–
43. The relay transcribes the remote user’s voice to text, which is sent to the
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captioned telephone device via telephone line 102 and digitized, formatted,
and transferred to visually readable display 112. Id. at 3:23–35.
The ’398 patent compares the use of echo cancellation in two-line
captioned telephone service with its use in one-line captioned telephone
service, in which the relay is interposed between the captioned telephone
device and the remote user. Id. at 7:44–8:20. For one-line captioned
telephone service, echo cancellation at the relay suppresses echo back to the
assisted user and removes or cancels the voice of the assisted user from the
audio received at the relay so the call assistant hears only the voice of the
remote user. Id. at 7:45–56.
For two-line captioned telephone service, “the arrangement of the
echo cancellation is significantly different.” Id. at 7:58–59. The echo
cancellation circuitry is located in the captioned telephone device and
separates the local voice of the assisted user from any other voices received
from the first telephone line. Id. at 7:59–64. In this arrangement, “[t]he
echo cancellation is located between the first telephone line[] [to the remote
user] and the handset microphone of the assisted user, so that the second
telephone line does not transmit to the relay any of the voice of the assisted
user.” Id. at 7:66–8:3. “This makes the job of the call assistant easier, since
the call assistant captions the voice he or she hears,” i.e., only the voice of
the remote user. Id. at 8:5–7.
C. Illustrative Claim
Claim 11 is independent, and claims 12 and 13 each depend directly
from claim 11. Claim 11 is illustrative of the claimed subject matter:
11. A method of operating a captioned telephone call in
which an assisted user is connected by a captioned telephone
device which is connected both to one telephone line to a
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remote user and a second telephone line to a relay providing
captioning for a conversation, the method comprising the steps
of
during a telephone conversation, the captioned telephone
device receiving captioning for spoken words of the remote
user from the relay and displaying the words in a visual display
for the assisted user; and
during the telephone conversation, the captioned
telephone device using echo cancellation to cancel the voice of
the assisted user from the second telephone line so that the
relay does not hear the voice of the assisted user, so the relay
can caption all the words on the second telephone line without
causing confusion to the assisted user.
Ex. 1001, 11:12–12:8 (emphasis added).
D. Asserted Grounds of Unpatentability
Petitioner contends that claims 11–13 of the ’398 patent are
unpatentable based on the following specific grounds (Pet. 4, 18–60):
References Basis Challenged Claims
Engelke ’685,
1
Rao,
2
and
Engelke ’910
3

35 U.S.C. § 103(a) 11–13
Engelke ’685, Vaseghi,
4
and
Engelke ’910
35 U.S.C. § 103(a) 11–13

1
U.S. Patent Application Publ’n 2002/0085685 A1 (Ex. 1004,
“Engelke ’685”). The parties refer to this reference as “the
’685 Publication.”
2
U.S. Patent No. 6,141,415, issued Oct. 31, 2000 (Ex. 1002, “Rao”).
3
U.S. Patent No. 6,504,910 B1, issued Jan. 7, 2003 (Ex. 1005,
“Engelke ’910”). The parties refer to this reference as “the ’910 Patent.”
4
SAEED V. VASEGHI, ADVANCED DIGITAL SIGNAL PROCESSING AND NOISE
REDUCTION 396–415 (2d ed. 2000) (Ex. 1006, “Vaseghi”).
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II. DISCUSSION
A. Claim Construction
In an inter partes review, we construe claim terms in an unexpired
patent according to 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). For purposes of this decision, we determine that no claim
terms require express construction.
B. Asserted Prior Art
1. Engelke ’685
Engelke ’685 describes both one-line and two-line captioned
telephone service. Ex. 1004 ¶¶ 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. ¶ 37. In two-line captioned telephone service, the assisted user has two
telephone lines, as shown in Figure 5:

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
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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.
Engelke ’685 also describes a particular type of relay, referred to as a
“re-voicing relay.” Id. ¶¶ 25–35. In a re-voicing relay, a call assistant uses a
headset with earphones and a microphone to listen to the hearing user’s
voice and repeat the words spoken by the hearing user. Id. ¶ 25. The call
assistant’s headset connects to a computer that has voice recognition
software for translating the call assistant’s spoken words into text. Id. ¶ 26.
The headset’s earphones may have noise cancellation capability “to cancel
the sounds of the call assistant’s own voice” so the call assistant “would be
less likely to be distracted by the words that he or she has spoken.” Id. ¶ 29.
2. Vaseghi
Vaseghi generally describes the use of echo cancellation in
communication systems to address two types of echo—acoustic echo and
telephone line echo. Ex. 1006, 5. Acoustic echo results from a feedback
path between the speaker and microphone in a mobile phone, hands-free
phone, teleconference system, or hearing aid system. Id. Line echo results
from an impedance mismatch at telephone exchange hybrids where a
subscriber’s 2-wire line is connected to a 4-wire line. Id. Vaseghi describes
various mechanisms for echo suppression or cancellation, including an
adaptive echo cancellation system that cancels the echo of a user’s voice
from the signal received by the user. Id. at 10–11, Fig. 14.5.
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3. Rao
Rao describes a speaker-phone system that includes echo cancellation
at each end of the system. Ex. 1002, 1:39–41, 5:57–6:3. In particular, Rao
describes an echo cancellation unit in the speaker-phone of a “near-end”
user. Id. at 5:65–6:1, 6:38–57, Fig. 2. Figure 2 of Rao is reproduced below:

As shown in Figure 2, echo cancellation unit 51 includes line echo
cancellation circuit 63 “that samples a portion of the output signal from the
near-end speech analysis and modification circuit 56, weights it, and
subtracts it from the incoming signal from amplifier 69 . . . before the
incoming signal is applied to the far-end speech analysis and modification
circuit 55.” Id. at 6:50–57. The elements in echo cancellation unit 51 may
be implemented by a digital signal processor. Id. at 6:65–67.
4. Engelke ’910
Engelke ’910 describes a one-line captioned telephone system in
which a relay digitizes a hearing user’s voice, creates digital text
corresponding to the hearing user’s spoken words, combines the digitized
voice and digital text into digital data packets, and transmits the digital data
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packets to an assisted user’s station. Ex. 1005, 2:33–48, 3:14–4:25.
Figure 1 of Engelke ’910 is reproduced below:

Figure 1 illustrates a captioned telephone system with a relay that digitizes a
hearing user’s voice from telephone 12 at codec 18. Id. at 3:15–32. The
output digital signal from codec 18 is connected to line echo cancellation 20,
which is “a circuit or software designed to cancel echo on the telephone
line.” Id. at 3:33–35.
C. Asserted Obviousness Based on Engelke ’685, Rao,
and Engelke ’910
Petitioner contends that claims 11–13 are unpatentable for
obviousness over Engelke ’685, Rao, and Engelke ’910. Pet. 30–47. To
support its contentions, Petitioner provides analysis and claim charts, and
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relies on the Declaration of Mr. Benedict Occhiogrosso. Id. (citing
Ex. 1010).
Independent claim 11 is directed to a method of operating a captioned
call using two-line captioned telephone service, in which a captioned
telephone device is “connected both to one telephone line to a remote user
and a second telephone line to a relay.” Ex. 1001, 11:12–16. In the first
step of the recited method, the captioned telephone device receives
captioning for the spoken words of the remote user from the relay and
displays the words for the assisted user. Id. at 11:18–12:2. Petitioner asserts
that Engelke ’685 and Engelke ’910 each teach this limitation. See Pet. 42–
43. In the second step, “the captioned telephone device us[es] echo
cancellation to cancel the voice of the assisted user from the second
telephone line so that the relay does not hear the voice of the assisted user.”
Ex. 1001, 12:3–6. Petitioner relies on a combination of Engelke ’685, Rao,
and Engelke ’910 for teaching this limitation. Pet. 40, 43–46. Petitioner
also contends that one of ordinary skill in the art would have been motivated
to combine the three references. Pet. 30–40.
Patent Owner argues that the Petition lacks the reasoning necessary to
combine the cited references to support a conclusion of obviousness.
Prelim. Resp. 1. Patent Owner further submits that Petitioner’s arguments
are cursory and based on conclusory statements. Id. at 2. Ultimately, Patent
Owner argues, Petitioner does not present a rationale to combine the
references “beyond an impermissible hindsight reconstruction supported
only by the roadmap provided by the ’398 [p]atent.” Id. at 5 (citing Mintz v.
Dietz & Watson, Inc., 679 F.3d 1372, 1377–78 (Fed. Cir. 2012)).
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Having reviewed both parties’ arguments, we are not persuaded that
Petitioner has provided sufficient rationale for combining the references in
the manner asserted by Petitioner to arrive at the claimed invention. Among
the cited references, only Engelke ’685 teaches two-line captioned telephone
service, such as that recited in claim 11. See Ex. 1004, ¶¶ 38–39, Fig. 5.
Engelke ’685, however, does not teach the use of echo cancellation to cancel
the voice of the assisted user from the second telephone line in two-line
captioned telephone service, or to cancel any user’s voice from any
telephone line. It only teaches noise attenuation or cancellation in the call
assistant’s headset at the relay to reduce or cancel the call assistant’s own
voice from the sounds that the call assistant hears. Id. ¶ 29.
Petitioner contends that one of ordinary skill in the art would have
recognized that switching from a one-line captioned telephone system to a
two-line captioned telephone system would require consideration of certain
design changes. Pet. 32–33 (citing Ex. 1010 ¶ 64). One such design change,
according to Petitioner, would be implementation of line echo cancellation
because one of ordinary skill would have recognized “the known need for
line echo cancellation in ‘direct’ communications” between the assisted
user’s device and the hearing user’s device. Id. at 33 (citing Ex. 1010 ¶ 65).
Petitioner argues that a person of ordinary skill in the art then would be
motivated to look to a reference such as Rao for details on how to implement
line echo cancellation in a telephone. Id. at 33–34. But neither the Petition
nor the cited paragraphs of the Occhiogrosso Declaration explain sufficiently
or point to adequate evidence showing why an ordinarily skilled artisan,
even though familiar with the problem of line echo in telephony systems in
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general, would recognize line echo as a problem in the two-line captioned
telephone system taught by Engelke ’685. See id.; Ex. 1010 ¶¶ 64–65.
Petitioner also relies on Engelke ’910, which teaches the use of line
echo cancellation in one-line captioned telephone service in which the
hearing user’s voice is digitized and, at the relay, combined with digital text
of the hearing user’s voice into data packets, which are transmitted to the
assisted user. Pet. 36, Ex. 1005, 3:15–35, Fig. 1. Citing only a conclusory
statement from the Occhiogrosso Declaration, Petitioner contends that line
echo cancellation in Engelke ’910 prevents the assisted user from hearing
the echo of the assisted user’s own voice. Pet. 36–37 (citing Ex. 1010 ¶ 71).
Then, citing additional unsupported testimony from Mr. Occhiogrosso,
Petitioner submits that, based on Engelke ’910, a person of ordinary skill in
the art would have recognized that echo cancellation in a two-line captioned
telephone system should be located between the hearing user and assisted
user to prevent the user from hearing his own echo and, based on Rao, could
be located in the assisted user’s telephone. Id. at 37 (citing Ex. 1010 ¶¶ 72–
73). On this record, we are not persuaded that Petitioner’s unsupported
arguments show sufficiently that any teachings regarding echo cancellation
in Engelke ’910 would be applied in a two-line captioned telephone system
in the manner set forth by Petitioner.
Furthermore, claim 11 recites that echo cancellation is used in the
captioned telephone device “to cancel the voice of the assisted user from the
second telephone line so that the relay does not hear the voice of the assisted
user.” None of the references teaches using echo cancellation to prevent the
assisted user’s voice from reaching the relay. To the extent echo
cancellation is explained in the references, it is used to prevent a user from
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hearing the echo of his or her own voice. See id. at 35 (citing Rao).
Petitioner’s contention that a person of ordinary skill in the art would
implement echo cancellation in such a manner that the call assistant would
not hear the assisted user’s voice relies only on a conclusory statement from
Mr. Occhiogrosso that lacks evidentiary support. See id. at 39, Ex. 1010
¶ 76.
Petitioner submits that a person of ordinary skill in the art would have
been motivated to combine the known elements of Engelke ’685, Rao, and
Engelke ’910 “according to known methods to yield predictable results.”
Pet. 39. On this record, however, 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 so that the relay does not hear the voice of the assisted user,
as recited in claim 11. Instead, as Patent Owner contends, Petitioner appears
to have engaged in impermissible hindsight reconstruction in combining the
teachings of the references to arrive at the claimed invention. Accordingly,
the information presented does not show a reasonable likelihood that
Petitioner would prevail in establishing that claims 11–13 are unpatentable
for obviousness over Engelke ’685, Rao, and Engelke ’910.
D. Asserted Obviousness Based on Engelke ’685, Vaseghi,
and Engelke ’910
Petitioner contends that claims 11–13 are unpatentable for
obviousness over Engelke ’685, Vaseghi, and Engelke ’910. Pet. 48–60.
Petitioner’s arguments with respect to this combination are similar to those
made with respect to Engelke ’685, Rao, and Engelke ’910, but they rely on
Vaseghi rather than Rao for teaching line echo cancellation generally. Id.
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Although Petitioner asserts that Vaseghi and Rao “each disclose different
details of line echo cancellation that might not be explicitly described within
the other,” Petitioner does not explain how any differences have any bearing
on the obviousness analysis. Id. at 48–49. Thus, for reasons similar to those
discussed above, the information presented does not show a reasonable
likelihood that Petitioner would prevail in establishing that claims 11–13 are
unpatentable for obviousness over Engelke ’685, Vaseghi, and
Engelke ’910.
III. CONCLUSION
For the foregoing reasons, we determine that the information
presented does not establish a reasonable likelihood that Petitioner would
prevail in showing that claims 11–13 of the ’398 patent are unpatentable.
IV. ORDER
Accordingly, it is:
ORDERED that the Petition is denied and no trial is instituted.
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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
Quarles & Brady, LLP
michael.jaskolski@quarles.com
michael.curley@quarles.com
martha.snyder@quarles.com
nikia.gray@quarles.com