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

Addressing the obviousness issue whether an asserted secondary reference impermissibly changes the principle of operation of a primary reference, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (Board) determined that some of the challenged claims were unpatentable, finding that the secondary reference impermissibly changes the primary reference’s principle of operation only if the secondary reference requires a change that is incompatible with the utility of the primary reference. Ultratec, Inc. v. CaptionCall, L.L.C., Case IPR2013-00288 (PTAB, Oct. 30, 2014) (Zecher, APJ).

CaptionCall owned a patent directed to a closed-captioning error correction technology, to be used primarily by deaf or hearing impaired users. Ultratec filed a petition for inter partes review (IPR) challenging some of the claims.

In its IPR petition, Ultratec argued that the disputed claims were obvious in view of two patents by Engelke II and Cervantes. Patent owner argued that Engelke II incorporated by reference another patent—Engelke I—and that Ultratec relied on Engelke I for some of the teachings that allegedly correspond to the features of the challenged patent.

The patent owner further argued that a skilled person in the art would not combine Engelke I and Cervantes because the combination renders Engelke I inoperable for its intended purpose and changes the principle of operation of Engelke I. Specifically, the patent owner argued that the system of Engelke I is directed to a system where a remote caller telephones a hearing-impaired user. The words spoken by the remote caller are automatically transcribed, and an assistant can view the transcription and make corrections before the transcription is provided to the hearing-impaired user. Cervantes is directed to users in an instant messaging environment being able to edit previous messages and resend the edited versions of the previous messages.

The patent owner argued that one of skill in the art would not combine Engelke I with Cervantes because the purpose and principle of operation of Engelke I are to correct a voice transcription before it is displayed to the hearing impaired recipient. Cervantes requires modifications to instant messages after they are transmitted to the recipient, which is not compatible with the purpose and principle of operation of Engelke I.

The Board disagreed, finding that the purpose and principle of operation of Engelke I are to have an assistant review an automatic transcription that is provided to a hearing impaired user, regardless of whether the assistant makes corrections before or after the transcription is presented to the hearing impaired user. Using this purpose and principle of operation, the Board found that the post-presentation corrections of the secondary reference, Cervantes could be incorporated into the system of Engelke I.

The Board also addressed the issue of expert qualification. The petitioner argued that patent owner’s expert witness was not qualified as an expert because he had never worked on a text captioning system for the hearing-impaired prior to the filing date of the challenged patent. Also, patent owner’s expert failed to specify the level of skill of a person having ordinary skill in the art. In response, the patent owner noted that its expert had a master’s degree in electrical engineering and over 30 years of experience in telecommunications, information technology engineering, and voice and text transmissions, and that the level of skill of the person having ordinary skill in the art could be discerned from other evidence in the record. The Board agreed with patent owner, finding that the petitioner’s arguments went to the weight and value of the expert’s testimony, not to whether he was qualified as an expert.