Ultratec, Inc.

Patent Trials and Appeals Board

Jan 27, 2021

IPR2020-01216 (P.T.A.B. Jan. 27, 2021)

Trials@uspto.gov Paper 9
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.

IPR2020-01216
Patent 10,491,746 B2

Before WILLIAM V. SAINDON, NATHAN A. ENGELS and
SCOTT B. HOWARD, Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314

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Patent 10,491,746 B2
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INTRODUCTION
A. Background and Summary
CaptionCall, LLC (“Petitioner”) filed a Petition to institute an inter
partes review of claims 3, 4, 5, and 12 of U.S. Patent No. 10,491,746 B2
(Ex. 1001, “the ’746 patent”). Paper 1 (“Pet.”). Ultratec, Inc. (“Patent
Owner”) filed a Patent Owner’s Preliminary Response. Paper 6 (“Prelim.
Resp.”). Pursuant to our authorization (Ex. 3001), Petitioner filed a Reply
directed to Petitioner’s argument that we exercise our discretion pursuant to
35 U.S.C. § 325(d) to deny institution (Paper 7), and Patent Owner
submitted a Sur-reply (Paper 8).
B. Real Parties in Interest
Petitioner identifies CaptionCall LLC and Sorenson Communications,
LLC as the real parties in interest. Pet. 3.
Patent Owner identifies Ultratec, Inc. and CapTel, Inc. as the real
parties in interest. Paper 3, 1 (Patent Owner’s Mandatory Notices).
C. Related Matters
The parties identify U.S. Patent Nos. 10,587,751 (which is subject to a
pending petition in IPR2020-01217), 8,515,024, and 7,660,398 and U.S.
Patent Application No. 16/677,293 as related patents or patent applications
which may be affected by this proceeding. Pet. 3; Paper 3, 1–2. The parties
also identify U.S. Patent No. 7,660,398 (“the ’398 patent”) and proceedings
involving the ’398, including CaptionCall LLC v. Ultratec, Inc., IPR2014-
01287 (“IPR ’1287”), which may affect the decision here. Pet. 3; Paper 3, 2.
D. The ’746 Patent
The ’746 patent relates to a captioned telephone service that provides
assistance to a user who is hard of hearing. Ex. 1001, code (57). Using a
captioned telephone device, an assisted user receives normal voice from a
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remote party, as well as a text transcription of the words spoken by the
remote party. Id. at 1:50–57. The ’746 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
2:10–15.
Figure 2 of the ’746 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 3:24–28. The captioned
telephone device connects to a remote party via telephone line 121 and to a
relay center via telephone line 102. Id. at 3:40–42, 3:60–64. The captioned
telephone device passes the voice signal from telephone line 121 to the
speaker in handset 120 for the assisted user. Id. at 3:60–62. It also passes
the voice signal to codec 118 to be digitized and eventually sent to the relay
over telephone line 102. Id. at 3:52–54. “[E]cho control circuit 116 is used
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to remove the voice of the assisted user at . . . handset 120 from the voices of
the other party.” Id. at 3:54–57. The remaining components compress,
format, and send the signal to the relay over telephone line 102. Id. at 3:57–
60. The relay transcribes the remote user’s voice to text, which is sent to the
captioned telephone device via telephone line 102 and digitized, formatted,
and transferred to visually readable display 112. Id. at 3:40–52.
E. Illustrative Claims
Claim 3 is an independent claim. Claim 3, reproduced below, is
illustrative of the subject matter of the challenged claims.
3. A method of facilitating a captioned telephone call
using a captioned telephone device used by an assisted user, the
captioned telephone device connectable by a first line to a remote
user and a second line to a relay providing captioning for a
conversation, wherein the captioned telephone device includes at
least one caption control feature for selecting automated
captioning upon reception of an incoming call, the method
comprising the steps of:
upon detecting an incoming call on the first line, without
any assisted user input subsequent to the start of the call, the
captioned telephone device checking a status of the caption
control feature and, when a captioning default is selected,
automatically calling the relay on the second line to initiate
captioning service set up;
at the relay, a call assistant assigned to the call to generate
text captions corresponding to words spoken by the remote user;
the captioned telephone device passing spoken words
received from the remote user on the first line to the second line;
and
the relay providing text captions of the spoken words back
to the captioned telephone device on the second line, wherein
words received on the first line include words spoken by the
assisted user and words spoken by the remote user, the step of
passing spoken words on the first line to the second line
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including cancelling the words spoken by the assisted user and
only passing words spoken by the remote user to the second line.
Ex. 1001, 11:1–28
F. Prior Art and Asserted Grounds
Petitioner asserts that claims 3, 4, 5, and 12 would have been
unpatentable on the following grounds:
Claim(s) Challenged 35 U.S.C. §1 Reference(s)/Basis
3, 12 103(a) Engelke ’685,
2 Nelson,3
Cannon4
4, 5 103(a) Engelke ’685, Nelson, Cannon, Millios5
3, 12 103(a) Engelke ’685, Nelson, Johnson6
4, 5 103(a) Engelke ’685, Nelson, Johnson, Millios
3,12 103(a) Engelke ’685, Kinoshita7
4, 5 103(a) Engelke ’685, Kinoshita, Millios
Petitioner also relies upon the testimony of Benedict J. Occhiogrosso
(Ex. 1003).

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 ’746
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 2002/0085685 A1, published July 4, 2002 (Ex. 1004).
3 US 2003/0097262 A1, published May 22, 2003 (Ex. 1005).
4 US 6,430,270 B1, issued August 6, 2002 (Ex. 1006).
5 US 5,463,665, issued October 31, 1995 (Ex. 1008).
6 WO 87/50222, published December 31, 1997 (Ex. 1007).
7 US 2003/0045329 A1, published March 6, 2003 (Ex. 1009).
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ANALYSIS
A. Legal Standards
In Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966), the
Supreme Court set out a framework for assessing obviousness under
35 U.S.C. § 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) objective evidence of non-obviousness such as “commercial success,
long-felt but unsolved needs, failure of others, etc.” Id. at 17–18. “While
the sequence of these questions might be reordered in any particular case,”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 407 (2007), the U.S. Court of
Appeals for Federal Circuit has “repeatedly emphasized that an obviousness
inquiry requires examination of all four Graham factors and that an
obviousness determination can be made only after consideration of each
factor,” Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1335 (Fed. Cir. 2016),
overruled on other grounds by Aqua Prods., Inc. v. Matal, 872 F.3d 1290
(Fed. Cir. 2017) (en banc). We note that, with respect to the fourth Graham
factor, the parties have not presented argument or evidence directed to
objective evidence of nonobviousness. See generally Pet.; Prelim. Resp.
Because neither party addressed objective evidence of obviousness at the
time (see generally Pet.; Prelim. Resp.), the analysis below only addresses
the first three Graham factors.
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
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(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 argues that a person having ordinary skill in the art
(“POSITA” or “POSA”) “would have had 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.
8 (citing Ex. 1003 ¶¶ 38–41). Petitioner further argues that “[a] person with
less technical education but more experience, or vice versa, would have also
met this standard.” Id.
Patent Owner does not explicitly address the level of skill. See
Prelim. Resp. 11 (arguing “Petitioner’s arguments fail even under its recited
definition of a [person having ordinary skill in the art]”). Id.
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.
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.
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
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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.
Neither Petitioner nor Patent Owner requests that we construe any
claim limitations. See Pet. 8; Prelim. Resp. 11.
Because no express construction is needed to resolve any dispute in
this proceeding, we do not 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. Engelke ’685, Nelson, and Cannon, both without and with Millios
Petitioner argues that claims 3 and 12 would have been obvious over
Engelke ’685, Nelson, and Cannon, and that claims 4 and 5 would have been
obvious over Engelke ’685, Nelson, Cannon, and Millios. Based on the
current record and for the reasons that follow, we are not persuaded that
Petitioner has established a reasonable likelihood of prevailing with respect
to any of the challenged claims.
1. Engelke ’685
Engelke ’685 is titled “System for Text Assisted Telephony” and
describes both a one-line and a two-line captioned telephone service.
Ex. 1004, code (54), ¶¶ 37–39. In a 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 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. Personal interpreter/captioned telephone
“PICT” device 74 transmits the voice signals on the first telephone line 64 to
the second telephone line 78. Id. ¶ 40. 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.
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2. Nelson
Nelson is titled “Handheld Device Having Speech-To Text
Conversion Functionality” and is directed to “a handheld computing device
having speech-to-text conversion functionality.” Ex. 1005, code (54), ¶ 1.
More specifically, Nelson describes “[a] method of receiving voice
communications, converting the voice communications to text, and
displaying the text to a user.” Id. ¶ 17. As explained in Nelson Figure 3 (not
reproduced) and paragraph 17, as a result of following the disclosed method,
“the user may receive the telephone call as audible speech on the speaker
and as visible text on the display.” Id. ¶ 17, Fig. 3.
3. Cannon
Cannon is titled “Automatic Conversational Record” and is directed
“to customer premises equipment which automatically records the
conversation between the user and the calling or called party based on a
comparison of predetermined call related information relating to the calling
or called party with predetermined entries in an appropriate table.”
Ex. 1006, code (54), 1:9–14. Cannon describes, inter alia, how “only one
side of the conversation may be recorded using an appropriate hybrid echo
canceler (HEC). For instance, the far end voice may be canceled from the
conversation leaving only the near end user’s voice for recording.” Id. at
5:13–17.
4. Millios
Millios is titled “Relaying of Messages Between Hearing Impaired
Callers Using Keyboards and Other Callers” and is directed to “relaying
calls between hearing impaired telephone callers using TDD
(Telecommunications Device for the Deaf) or ASCII (a computer protocol)
technology and other users including voice users, and particularly to
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automatically connecting and completing such relay calls.” Ex. 1008, code
(54), 1:6–11. More specifically, Millios discusses how the platform (CP1)
monitors the call’s progress. For example, in discussing Figure 4 (not
reproduced), Millios states that
the platform CP1 then asks whether the call has been answered.
If yes, the call proceeds to step 414 and the platform CP1 bridges
a CA [(communications assistant)] at one of the positions PO1
onto the call to perform the relay. If the answer is no, that is, the
line is busy, out of order, or gives no answer, the platform CP1
in step 417 informs the caller automatically and no CA is needed
unless requested. Because a large number of calls are either busy
or give no answer, the use of the steps in FIG. 4 reduces the
overall work time by avoiding use of the CA’s for calls that
cannot be completed.
Id. at 5:11–20.
5. Analysis of Claims 3–5 and 12
a) Petitioner’s Arguments
Petitioner argues that a person having ordinary skill in the art would
have been motivated to modify the teachings of Engelke ’685 in view of
Cannon. See Pet. 23–28. Specifically, Petitioner argues that “Engelke ’685
already recognized that the call assistant is undertaking a difficult task to re-
voice the sounds heard in the call assistant’s ear.” Pet. 24 (citing Ex. 1004
¶ 29).8 According to Petitioner, Engelke ’685 teaches using “noise-
cancelling headphones so that the call assistant would not hear their own
voice, and thus avoid distraction while generating a transcription of the
hearing user’s voice.” Id. (citing Ex. 1004 ¶ 29).

8 The parties italicize the names of prior art references. This Decision omits
the italics.
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Petitioner further argues that a reference by the same inventor,
Engleke ’8259 discusses
how the call assistant must be allowed to clearly distinguish
between the two callers, or in other words, must be able to avoid
the difficulty and distraction of determining which of the two
voices on the telephone call to transcribe. To facilitate
overcoming that issue, in Engelke ’825, Engelke taught that the
assisted user’s voice could be attenuated, pitch shifted, or filtered
so that the call assistant is better able to discriminate between the
two voices, the one to be transcribed and the one to be ignored.
Pet. 24 (citing Ex. 1010 ¶ 23; Ex. 1003 ¶¶ 58–59).
Petitioner further argues that “simply attenuating, pitch shifting,
filtering, or otherwise modifying the voice of the assisted user is only a
partial solution, as the call assistant would still hear the words spoken by the
assisted user.” Pet. 24–25. Petitioner further argues that “[a] POSITA
would recognize that complete removal of the assisted user’s voice such that
the call assistant receives only the hearing user’s voice would distract the
call assistant even less than the partial solution of Engelke ’825.” Id. at 25.
According to Petitioner, a person having ordinary skill in the art “would
have been motivated to incorporate the complete removal of the words
spoken by the assisted user’s voice, effectively isolating one side of the
telephone conversation for processing, to further avoid distraction for the
call assistant when generating a transcription of the hearing user’s voice on
the call.” Id. (citing Ex. 1003 ¶ 60).
As further support, Petitioner argues that Engelke ’685 “includes
teachings that suggest that only the voice of the hearing user is sent to the
relay in the two-line captioned telephone embodiment.” Pet. 25–26 (citing

9 US 2001/0005825, published June 28, 2001 (Ex. 1010).
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Ex. 1004 ¶¶ 38, 39). According to Petitioner, Engelke ’685 does not provide
an explicit teaching on how to achieve that feature and that “a POSITA
would have looked to other telephony art at the time where one side of a
conversation is isolated to independently process only that side of the
conversation.” Id. at 26 (citing Ex. 1003 ¶ 61). One such reference
identified by Petitioner is Cannon. Id. at 26–28 (citing Ex. 1003 ¶¶ 62–66;
Ex. 1006, code (54), 1:6–14).
b) Patent Owner’s Arguments
Patent Owner argues that Petitioner has failed to show that a person
having ordinary skill in the art “would have recognized that it was
problematic for the call assistant to receive the assisted user’s voice” or
“would have been motivated to look to general telephony art to solve this
unrecognized problem.” Prelim. Resp. 28; see also id. at 28–32.
First, Patent Owner argues that “Engelke ’685 does not provide
motivation to cancel the assisted user’s voice in a two-line system.” Prelim.
Resp. 28. Accordingly to Patent Owner, “[i]n Engelke ’685’s two-line
system, voices of the hearing user and assisted user are sent to the call
assistant at the relay.” Id. (citing Ex. 1004 ¶ 40). Patent Owner further
argues that “the Board previously rejected Petitioner’s argument that the
‘assisted user’s device transmits only the hearing user’s voice signal to the
call assistant’, finding that Engelke ’685 ‘does not cancel any user’s voice
from any telephone line.’” Id. at 29 (quoting Ex. 2003, 18–19; Ex. 2002,
11); see also id. at 29–30 (discussing Engelke ’685 in detail) (citing Ex.
1004 ¶¶ 38–40, Ex. 2002, 3).
Patent Owner further argues that Engelke ’685 “is limited to
distraction by the call assistant’s own voice and does not suggest that the call
assistant is distracted by the assisted user’s voice, as opposed to assisted by
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the context of the other side of the conversation.” Prelim. Resp. 30
(discussing Ex. 1004 ¶ 29).
Second, Patent Owner argues that “Engelke ’825 similarly fails to
teach or motivate a POSA to cancel the assisted user’s voice and, in fact,
discourages cancelling the assisted user’s voice.” Prelim. Resp. 30. Patent
Owner further argues that Engelke ’825 explicitly teaches transmitting the
assisted user’s voice to supply context to the call assistant: “The call
assistant hearing the assisted user’s voice is by design because, as explained
by Engelke ’825, the assisted user’s ‘voice signal 30 [the assisted user’s
voice] provides the call assistant 40 with context for a transcribed portion of
the conversation.’” Id. at 30–31 (quoting Ex. 1010 ¶ 23). According to
Patent Owner, “[b]ased on this disclosure, a POSA would not be motivated
to cancel the assisted user’s voice because it would remove the taught
beneficial context for the transcribed portion of the call.” Id. at 31.
Third, Patent Owner argues that “Mr. Occhiogrosso’s declaration is
conclusory and unsupported.” Prelim. Resp. 31. Specifically, Patent Owner
argues that “Mr. Occhiogrosso provides no support that a POSA would have
thought to cancel the assisted user’s voice at the captioned telephone device
based on the disclosure of a call assistant’s headphones cancelling the call
assistant’s voice.” Id. (citing Ex. 1003 ¶ 60; Ex. 2002, 11–13).
c) Our Analysis
Arguments for unpatentability based on obviousness must be
supported by “articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418. The
requirement for a reason to combine the reference acts as a check on the
potential for the improper use of hindsight. See Plantronics, Inc. v. Aliph,
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Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013) (holding that an articulated
reasoning “is especially important to guard against the dangers of hindsight
bias”). Based on the current record, we are not sufficiently persuaded by
Petitioner’s argument that a person having ordinary skill in the art would
have modified Engelke ’685 to cancel the words spoken by the assisted user.
First, we agree with Patent Owner that Engelke ’685 does not address
cancelling the words spoken by the assisted user. The only discussion of
cancellation is in paragraph 29, which discusses cancelling the words spoken
by the call assistant, not the assisted user, to prevent distractions associated
with hearing their own voice:
It is a further enhancement to the operation of the relay
constructed in accordance with the present invention that the
earphones 38 have noise attenuating capability. Noise canceling
earphones are commercially available today or, for this purpose,
the computer 42 can be provided with noise canceling sound
generation software which would create sound transmitted to the
earphone 38 so as to cancel the sounds of the call assistant’s own
voice. The noise attenuation or cancellation avoids distracting
the call assistant, since he or she would then be less distracted by
the words that he or she has spoken, and thus would be less likely
to be distracted from the concentration of the task of re-voicing
the sounds of the voice heard in the call assistant’s ear.
Ex. 1004 ¶ 29 (emphasis added). Nothing in paragraph 29 teaches or
suggest cancelling the words spoken the assisted user. See id.
We are also not persuaded by Petitioner’s argument that Engelke ’685
paragraphs 38 and 39 teach not transmitting the words of the assisted user.
Those paragraphs simply state that the voice of the hearing user is
transmitted to the call assistant; they do not state, as Petitioner contends, that
the call assistant receives only the voice of the hearing user. See Ex. 1004
¶¶ 38–39. As the following paragraph explains, the “device automatically
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transmits the voice signals on the first telephone line to the second telephone
line (through the low-pass filter 86) for transmission to the relay.” Id. ¶ 40.
The first line is used to transmit voice signals of both the remote user and the
assisted user. Indeed, even Petitioner and its expert concede that the
conversation of both the assisted user and hearing user are transmitted on the
second line to the call assistant. See Pet. 12–13 (“A captioning device 74
includes a second line 78 that conveys the audio of the conversation between
the assisted user and the hearing user on the first line 64 to a call assistant at
a relay 76.”); Ex. 1003 ¶ 44 (same).
Second, we are not sufficiently persuaded by Petitioner’s arguments
that Engelke ’825 teaches cancelling the words of the assisted user.
Although Engelke ’825 teaches attenuating, pitch shifting, or filtering one of
the voices to help the call assistant distinguish the two voice, Engelke ’825
teaches the importance of the call assistant hearing both voices to provide
context:
The voice signal 30 provides the call assistant 40 with context
for a transcribed portion of the conversation. The attenuator 23
modifies the voice signal 30 so as to allow the call assistant 40
to clearly distinguish it from the principal transcribed
conversation from user 12. Other forms of discriminating
between these two voices may be provided including, for
example, slight pitch shifting or filtering.
Ex. 1010 ¶ 23. Accordingly, Engelke ’825 does not teach cancelling the
words of the assisted user.
To the contrary, Engelke ’825 teaches away from cancelling the
words of the assisted user. “A reference may be said to teach away when a
person of ordinary skill, upon reading the reference, would be discouraged
from following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant.” DePuy
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Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed.
Cir. 2009) (quoting Ricoh Co. v. Quanta Comput. Inc., 550 F.3d 1325, 1332
(Fed. Cir. 2008)). However, “[a] reference does not teach away, however, if
it merely expresses a general preference for an alternative invention but does
not ‘criticize, discredit, or otherwise discourage’ investigation into the
invention claimed.” Id. (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed.
Cir. 2004)).
In this case, Engelke ’825 does more than express a general
preference. Rather, Engelke ’825 discusses the importance of the call
assistant hearing both the remote user and the assisted user in order to
provide context:
In operation, the relay 10 receives the voice signal 16 [of
hearing user 12] at computer 18 through an automatic gain
control 36 providing an adjustment in gain to compensate for
various attenuations of the voice signal 16 in its transmission. It
is then combined with an attenuated version of the voice signal
30 (the other half of the conversation [by the deaf or hearing
impaired user]) arriving via attenuator 23. The voice signal 30
provides the call assistant 40 with context for a transcribed
portion of the conversation.
Ex. 1010 ¶ 29 (emphasis added); see also id. at Fig. 1, ¶ 20 (support for
modifications). The discussion of the importance of context would have
discouraged a person having ordinary skill in the art from cancelling the
words to the assisted user and removing context.
Third, we do not find Mr. Occhiogrosso’s testimony sufficiently
persuasive. Mr. Occhiogrosso’s testimony is substantially the same as
Petitioner’s arguments and suffers the same defects discussed above.
Compare Pet. 23–28, with Ex. 1003 ¶¶ 57–66.
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Moreover, the crux of Mr. Occhiogrosso’s testimony is paragraph 59,
which explains why a person having ordinary skill in the art would have
gone from “attenuating, pitch shifting, filtering, or otherwise modifying the
voice of the assisted user” to the “complete removal of the assisted user’s
voice.” See Ex. 1003 ¶ 59. However, Mr. Occhiogrosso provides no
support for his opinion and does not cite any prior art reference that
recognizes the problem he is purporting to solve. See id. We give such
conclusory, unsupported assertions little weight. See 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.”);
Verlander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (Board has
discretion to accord little weight to broad conclusory statements from expert
witness); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d
281, 294 (Fed. Cir. 1985) (noting that the “[l]ack of factual support” for an
expert opinion “may render the testimony of little probative value”); 37
C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying
facts or data on which the opinion is based is entitled to little or no
weight.”).
Accordingly, for the reasons discussed above, Petitioner has not
provided sufficient reasoning with rational underpinning to prove why a
person having ordinary skill in the art would have modified Engelke ’685
with Cannon’s noise cancelling technology. Therefore, the Petition has not
demonstrated a reasonable likelihood of success in challenging claims 3 and
12 as obvious under 35 U.S.C. § 103(a) over Engelke ’685 in view of Nelson
and Cannon or claims 4 and 5 as obvious under 35 U.S.C. § 103(a) over
Engelke ’685 in view of Nelson, Cannon, and Millios.
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E. Grounds Based on Engelke ’685 and either Johnson or Kinoshita
1. Johnson
Johnson is titled “Wireless Smart Phone” and is directed “to a
telephone device that includes a computer system that enable the telephone
device to perform data processing functions.” Ex. 1007, code (54), 1:4–8.
Relevant to this proceeding, Johnson teaches recording both parties to a
phone call or only one of the parties:
A recording can also be made while a telephone call is in
progress. It is possible to record not only the user of the
telephone device of the present invention, but also the connected
party on the other end of the telephone call. To record both sides
of a telephone call in progress, switch 240 and switch 241 are
both closed. By closing switch 240, the connected party is being
recorded. By closing switch 241, the user of the telephone device
that is speaking into microphone 108 is being recorded.
Id. at 16:16–23.
2. Kinoshita
Kinoshita is titled “Mobile Terminal Device and Method for
Recording and Processing Telephone Call” and is directed to “a mobile
terminal device for performing voice recognition, recording, and editing of a
telephone call conversation in the mobile terminal device.” Ex. 1009, code
(54), ¶ 2. Relevant to this proceeding, Kinoshita teaches that the controller
of the cellular telephone could “take call packets of a caller and recognize
only the caller’s voice” such that “only the caller’s part of the conversation
(received voice) is transformed into [text] strings and stored.” Id. ¶¶ 39, 43.
3. Our analysis
In addition to the grounds based on combing Engelke ’685 and
Cannon, the Petition also sets forth grounds based on the combination of
Engelke ’685 with either Johnson or Kinoshita. See Pet. 6–7. As with the
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grounds discussed in the previous section, Petitioner relies on Engelke ’685
for the two-line captioned telephone service and either Johnson or Kinoshita
for noise cancellation technology. See Pet. 37–54. Although the secondary
reference is different in these additional grounds, Petitioner relies on
substantially the same rationale for why a person having ordinary skill in the
art would have modified Engelke ’685. See, e.g., Pet. 37 (“[A] POSITA
would also have been motivated, at the time of the alleged invention of the
’746 Patent, to modify the teachings of Engelke ’685 with those of Johnson.
For example, for the same reason as described above for Ground 1, a
POSITA would have been motivated to modify the two-line captioned
telephone device of Engelke ’685 to include a feature to send only the words
spoken by the remote user to the relay over the second line by isolating one
side of the conversation.” (Emphasis added)), 46 (“Therefore, as described
above with respect to Ground 1, a POSITA would have looked to other
telephony art where one side of a conversation is isolated. Kinoshita
provided another example of such a teaching.” (Emphasis added)).
Because Petitioner’s reason to combine is substantially the same as
the reason given to combine Engelke ’685 and Cannon, for the same reason
as discussed above, Petitioner has not provided sufficient reasoning with
rational underpinning to prove why a person having ordinary skill in the art
would have modified Engelke ’685 with Johnson’s or Kinoshita’s noise
cancelling technology. Therefore, the Petition has not demonstrated a
reasonable likelihood of success in challenging (1) claims 3 and 12 as
obvious under 35 U.S.C. § 103(a) over Engelke ’685 in view of Nelson and
Johnson; (2) claims 4 and 5 as obvious under 35 U.S.C. § 103(a) over
Engelke ’685 in view of Nelson, Johnson, and Millios; (3) claims 3 and 12
as obvious under 35 U.S.C. § 103(a) over Engelke ’685 in view of
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Kinoshita; or (4) claims 4 and 5 as obvious under 35 U.S.C. § 103(a) over
Engelke ’685 in view of Kinoshita and Millios.
F. Discretionary Denial Pursuant to 35 U.S.C. § 325(d)
Patent Owner also argues that because a panel in an inter partes
review involving a related patent determined “that a POSA would not have
been motivated to modify Engelke ’685 with a voice cancellation reference
to cancel the assisted user’s voice in a two-line system,” we “should exercise
its discretion to deny institution now.” Prelim. Resp. 11; see also id. at 12–
26 (substance of argument).
Because we determine that Petitioner failed to show a reasonable
likelihood that claims 3–5 and 12 are unpatentable based on the grounds
presented, we do not address this argument.
CONCLUSION
For the foregoing reasons, we determine that Petitioner has failed to
show a reasonable likelihood that claims 3–5 and 12 are unpatentable based
on the grounds presented. Accordingly, we do not institute inter partes
review of those challenged claims based on the current Petition.
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 ’746 patent.

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PETITIONER:

Adam F. Smoot
John T. Gadd
Brian Parke
MASCHOFF BRENNAN
asmoot@mabr.com
jgadd@mabr.com
bparke@mabr.com
aalvey@mabr.com

PATENT OWNER:

Michael Jaskolski
Martha Snyder
QUARLES & BRADY LLP
411 East Wisconsin Avenue
Suite 2350
Milwaukee, Wisconsin 53202
michael.jaskolski@quarles.com
martha.snyder@quarles.com