- Securus Technologies, Inc. v. Global Tel*link CorporationRehearing grantedPTAB · Sep 12, 2016 · IPR2016-00267 · APJ Kevin F Turner · IPR · Rehearing
The Board granted rehearing only insofar as it addressed the request, but denied rehearing overall and maintained denial of institution because the petition did not show a reasonable likelihood of unpatentability.
RulingsRehearing decision- RehearingRehearing, deniedGranted in part
“public mode,” including specific citations, namely “Ex. 1005 at 16:24-31; 18:2- 8.” See Reh’g Req. 7. Those citations fall short, however, because they were not provided in the Petition. The closest citation provided by Petitioner is “Ex. 1005 at 16:54-17:3,” at page 41 of the Petition. The Board could not have overlooked a detailed explanation or analysis not presented in the Petition. A rehearing request is not a supplemental petition. The petition, itself, must identify “specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(5). “The Board may exclude or give no weight to the evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the challenge.” Id. Petitioner has the responsibility to identify and explain in the petition specific evidence that supports its arguments. We must make our determination regarding institution based on what the Petition actually presented and not what it could have reasonably contained had it been reformulated. In re 5 Magnum Oil Tools Int’l, Ltd., No. 2015-1300, 2016 WL 3974202, at *10 (Fed. Cir. July 25, 2016) (holding that the Board is not “free to adopt arguments on behalf of petitioners that could have been, but were not, raised by the petitioner during an IPR”). slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The Board is tasked with determining whether a petitioner would be reasonably likely to prevail in demonstrating that at least one of the challenged claims is not patentable in view of the petition filed. 35 U.S.C. § 314(a). It is the Petitioner, in its Petition, that must demonstrate whether there is a reasonable likelihood that at least one claim is unpatentable under the assert ground. See 37 C.F.R. § 42.108(c). “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review).” slip op. at 4
- BurdenDecided for patent owner
“As such, it is not clear how Petitioner could have relied solely on the public mode of Bulriss when neither the public nor the privacy modes are acknowledged in the Petition. If an understanding of the public mode of Bulriss was important in the context of Petitioner’s case against the claims of the ’816 Patent, no such import or discussion of the public mode was provided in the Petition. The Board is tasked with determining whether a petitioner would be reasonably likely to prevail in demonstrating that at least one of the challenged claims is not patentable in view of the petition filed. 35 U.S.C. § 314(a). It is the Petitioner, in its Petition, that must demonstrate whether there is a reasonable likelihood that at least one claim is unpatentable under the assert ground. See 37 C.F.R. § 42.108(c). “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review).” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“communications” limitation and its proffered motivation to combine Bulriss and Hesse. Reh’g Req. 11–14. We have previously discussed and decided these issues in the Denial of Institution Decision, and we are not persuaded of error in their consideration. Dec. 8–9, 12. As we discussed, the motivation to combine cannot come from the subject patent itself, such that even if “[t]he motivation to combine is therefore explicit in the references” (Reh’g Req. 14), it does not cure the deficiencies of the combination of Bulriss and Hesse provided in the Petition, as discussed in the rest of the Decision. Likewise, the new citations to Bulriss (Reh’g Req. 12), not found in the Petition, cannot be used to show that we misapprehended the arguments supplied in the Petition or that we used unreasonable judgment in determining that one of ordinary skill in the art would not have been motivated to provide scheduling of video visits in the context of Bulriss, in view of Hesse, for the reasons supplied by Petitioner. Dec. 12. For the foregoing reasons, Petitioner has not shown that the Board’s findings are not supported by substantial evidence, nor that the Board abused its discretion 6 in determining that Petitioner failed to demonstrate that at least one of the challenged claims of the ’816 Patent is unpatentable.” slip op. at 6
§ 103 obviousnessPatents in suitUS 7,256,816 - Captioncall, L.L.C. v. Ultratec, Inc.Rehearing grantedPTAB · Dec 1, 2015 · IPR2013-00544 · APJ Lynne E Pettigrew · IPR · Rehearing
Patent Owner’s rehearing request was granted to modify the Ryan–McLaughlin combination analysis and denied otherwise; claims 7–11 remain unpatentable.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“II. DISCUSSION The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“Patent Owner Response, that for a patent to serve as prior art the patent must be enabled as to its own earliest claimed effective filing date in 1994. Req. 1–4; PO Resp. 15–22. We addressed this argument in the Final Decision and additionally examined the evidence of record as to whether Ryan would have enabled one of ordinary skill in the art to make the invention without undue experimentation prior to the date of invention of the challenged patent. Final Dec. 22–25. We are not persuaded that we overlooked or misapprehended Patent Owner’s prior argument or made an erroneous interpretation of law.” slip op. at 3
- ExcludeDecided for petitioner
“transcript is inadmissible because it does not satisfy the requirements that all testimony, other than uncompelled direct testimony, must be in the form of a deposition transcript, 37 C.F.R. § 42.53(a), and that the witness shall be sworn, 37 C.F.R. § 42.53(f)(1). Req. 5. Therefore, according to Patent Owner, the Yamamoto transcript was “not taken, sought, or filed in accordance with these regulations [and] is not admissible.” Id. (citing 37 C.F.R. § 42.61(a)). Rule 42.53, however, is titled “Taking Testimony,” and applies only to testimony taken “during a testimony period set by the Board” for purposes of a particular review proceeding. 37 C.F.R. § 42.53(b); see also 37 C.F.R. § 42.53(c) (providing time limits set by the Board); id. § 42.53(d) (providing notice requirements). As stated in our Final Decision, Petitioner sought to admit the Yamamoto transcript as a deposition taken in the district court proceeding, not as deposition testimony taken in this inter partes proceeding. Final Dec. 32. And based on the parties’ stipulation in district court, we treated the Yamamoto transcript as sworn deposition testimony taken in the district court. Id. at 32–33 (citing Ex. 1067 ¶ 5). Petitioner filed the Yamamoto transcript as supplemental information under 37 C.F.R. § 42.123(b), establishing that the Yamamoto transcript reasonably could not have been obtained earlier and that its consideration was in the interests of justice. Paper 59, 7–8. Therefore, Petitioner’s filing of the Yamamoto transcript complied with Board rules, and we properly relied on it in determining the public accessibility of Yamamoto. See Final Dec. 35–38. Having reviewed Patent Owner’s Request, we are not persuaded we misapprehended or overlooked any matter relating to the admissibility of the Yamamoto transcript.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“disclosure in the ’578 patent of “voice pattern.” Id. at 7–9. We disagree that our reliance on the “Brief Summary of the Invention,” which refers to “a speech recognition computer program which has been trained to the voice pattern of the call assistant,” was improper. See Final Dec. 12 (quoting Ex. 1001, 2:44–46 (emphasis added)). Rather, in our Final Decision, we determined that the ’578 patent contemplated software trained to a “voice pattern of the call assistant,” as set forth in the “Brief Summary of the Invention,” as well as software “specifically trained to the voice of [a] particular call assistant,” as described in the context of a particular relay embodiment shown in Figure 1. Final Dec. 12 (quoting Ex. 1001, 2:44–46; Ex. 1002, 5:44–47). Based on the evidence in the written description (including the disclosure of “voice pattern”), we determined that the ’578 patent did not indicate expressly how training occurs. Id. Giving the claim language its broadest reasonable construction in light of the specification, we concluded we would not limit “trained to the voice of the call assistant” to require training to the voice of one particular call assistant. Id.” slip op. at 7
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,213,578 - Captioncall, L.L.C. v. Ultratec, Inc.Rehearing grantedPTAB · Dec 1, 2015 · IPR2013-00543 · APJ Lynne E Pettigrew · IPR · Rehearing
The Board granted rehearing only to modify its analysis of combining Ryan and McLaughlin, denied rehearing otherwise, and maintained that claims 1 and 2 are unpatentable.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“II. DISCUSSION The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable
“function. Ex. 1005, 4:19–28. According to Mr. Occhiogrosso, whose testimony we credit on this point, it was well known in the field of speech recognition at the time of the invention that speaker-dependent speech recognition (e.g., trained to the voice of a particular speaker) performed better than untrained, speaker-independent speech recognition. Ex. 1019 ¶¶ 23, 25; Ex. 1036 ¶ 55. This is reflected in Ryan’s teaching that the accuracy of a relay that uses speech recognition software may be improved if a call assistant re-voices the remote user’s words into a terminal with voice recognition software designed to recognize the call assistant’s voice. Ex. 1005, 4:33–38. Thus, McLaughlin teaches the use of automated equipment at a relay, Ex. 1009, 29:20–22, and Ryan teaches a computer with speech recognition software as one form of automated equipment that can be used at a relay, Ex. 1005, 4:33–38. McLaughlin also notes the use of computerized speech recognition in another context, i.e., translation of voice mail messages from voice to text. Ex. 1012, 26:59–62. A person of ordinary skill in the art would have recognized that Ryan’s intermediate re-voicing solution—using voice recognition software trained to the voice of a call assistant at a relay— would address the shortcomings of applying voice recognition directly to a remote caller’s voice, acknowledged by McLaughlin. See Ex. 1036 ¶ 55. As Mr. Occhiogrosso explains, combining the teachings of Ryan and McLaughlin to achieve the claimed invention involves nothing more than directing the captioned telephone device of McLaughlin to connect to a re-voicing relay, as taught in Ryan, rather than a conventional relay. Ex. 1036 ¶ 54; see Reply 12. For these reasons, we are persuaded that a person of ordinary skill in the art would have combined the teachings of Ryan and McLaughlin, using Ryan’s re-voicing relay in place of McLaughlin’s relay, along with McLaughlin’s captioned telephone device.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“use of trained voice recognition software. Id. at 54–55. In particular, Patent Owner submits that McLaughlin acknowledges the shortcomings of automated speech recognition technology and, therefore, would have discouraged one of ordinary skill in the art from attempting to design the relay claimed in the ’104 patent. Id. at 54 (citing Ex. 1012, 26:54–62). McLaughlin, however, refers to the limitations of speech recognition in the context of translating voice mail messages to text for deaf users, not in connection with relay services discussed in another section of McLaughlin. See Ex. 1012, 26:54–62. Moreover, as discussed previously, we credit the testimony of Mr. Occhiogrosso that it was well known in the field of speech recognition at the time of the invention that speaker-dependent speech recognition (e.g., trained to the voice of a particular speaker), such as that used in Ryan’s re-voicing technique, performed better than untrained, speaker-independent speech recognition, such as would be used in the voice mail application described in McLaughlin. See Ex. 1019 ¶¶ 23, 25; Ex. 1036 ¶ 55. On the facts presented here, we are not persuaded that McLaughlin’s statement regarding limitations of speech recognition technology sufficiently teaches away from the combination of Ryan’s re-voicing scheme with McLaughlin’s relay system to establish nonobviousness. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“determined that the ’104 patent contemplated software trained to a “voice pattern of the call assistant,” as set forth in the “Brief Summary of the Invention,” as well as software “specifically trained to the voice of [a] particular call assistant,” as described in the context of a particular relay embodiment shown in Figure 1. Final Dec. 9 (quoting Ex. 1002, 2:54–56, 6:17–20). Based on the evidence in the written description (including the disclosure of “voice pattern”), we determined that the ’104 patent did not indicate expressly how training occurs. Id. Giving the claim language its broadest reasonable construction in light of the specification, we concluded we would not limit “trained to the voice of the call assistant” to require training to the voice of one particular call assistant. Id.” slip op. at 8
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 7,555,104 - Captioncall, LLC v. Ultratec, Inc.Rehearing grantedPTAB · Dec 1, 2015 · IPR2013-00549 · APJ William V Saindon · IPR · Rehearing
Patent Owner’s rehearing request was denied as to the unpatentability outcome for claims 1–5 and 7, but granted to correct “captioned” to “voice-to-text.”
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e). The standard of review for rehearing requests is set forth in 37 C.F.R. § 42.71(d), which states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 2
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
“regarding secondary considerations, but found it to be unsupported by facts or data and determined that “his testimony has little probative value.” Final Dec. 30–31. Patent Owner complains that we improperly disregarded the testimony of its declarant here because “[t]here is no rule requiring documentary, rather than testimonial, evidence of how a system operates.” Req. Reh’g 5–6. We cited proper authority in the Final Decision for why we gave Mr. Ludwick’s testimony little probative value.2 Final Dec. 31 (citing In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) and Fed. R. Evid. 702); see also 37 C.F.R. § 42.65 (“testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight”).” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Liebermann’s disclosure of “party call” compelling. Req. Reh’g 10–14. For example, Patent Owner argues that Petitioner never rebutted Patent Owner’s theory that Liebermann’s “party call” was centrally-switched, versus switched by the Liebermann device as alleged by Petitioner. Id. at 10–12. Patent Owner complains that we placed the burden of proof on it for this reason. Id. at 11. This is incorrect. We made clear in our Decision that Petitioner has the burden of proof. See, e.g., Final Dec. 1 (“we determine that Petitioner has shown, by a preponderance of the evidence . . . .”); id. at 32 (determining that “Petitioner has shown, by a preponderance of the evidence . . . that the subject matter of claim 1 . . . would have been obvious”). We considered Patent Owner’s argument regarding a centrally switched party call mechanism (see, e.g., Final Dec. 18) and found it unconvincing; this does not mean we placed any burden on Patent Owner. Further, we provided an explanation for why Patent Owner’s argument was unpersuasive—namely, that the disclosure of Liebermann provided factual support for Petitioner’s position but not Patent Owner’s. See Final Dec. 18.” slip op. at 7
- Expert testimonyPatent owner expert discountedDecided for petitioner
“regarding secondary considerations, but found it to be unsupported by facts or data and determined that “his testimony has little probative value.” Final Dec. 30–31. Patent Owner complains that we improperly disregarded the testimony of its declarant here because “[t]here is no rule requiring documentary, rather than testimonial, evidence of how a system operates.” Req. Reh’g 5–6. We cited proper authority in the Final Decision for why we gave Mr. Ludwick’s testimony little probative value.2 Final Dec. 31 (citing In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) and Fed. R. Evid. 702); see also 37 C.F.R. § 42.65 (“testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight”).” slip op. at 4
§ 103 obviousnessPatents in suitUS 6,603,835 - Captioncall, L.L.C. v. Ultratec, Inc.Rehearing grantedPTAB · Dec 1, 2015 · IPR2013-00542 · APJ Lynne E Pettigrew · IPR · Rehearing
Patent Owner’s rehearing request was granted to modify the rationale for combining McLaughlin and Ryan, denied in all other respects, and claims 1 and 2 remain unpatentable.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“II. DISCUSSION The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Thus, McLaughlin teaches the use of automated equipment at a relay, Ex. 1009, 29:20–22, and Ryan teaches a computer with speech recognition software as one form of automated equipment that can be used at a relay, Ex. 1004, 4:33–38. McLaughlin also notes the use of computerized speech recognition in another context, i.e., translation of voice mail messages from voice to text. Ex. 1009, 26:59–62. A person of ordinary skill in the art would have recognized that Ryan’s intermediate re-voicing solution—using voice recognition software trained to the voice of a call assistant at a relay— would address the shortcomings of applying voice recognition directly to a remote caller’s voice, acknowledged by McLaughlin. See Pet. 26–27; Ex. 1018 ¶ 36; Ex. 1040 ¶ 62. As Mr. Occhiogrosso explains, combining the teachings of McLaughlin and Ryan to achieve the claimed invention involves nothing more than directing the captioned telephone device of McLaughlin to connect to a re-voicing relay, as taught in Ryan, rather than a conventional relay. Ex. 1040 ¶ 55; see Reply 11. For these reasons, we are persuaded that a person of ordinary skill in the art would have combined the teachings of McLaughlin and Ryan, using Ryan’s re-voicing relay in place of McLaughlin’s relay, along with McLaughlin’s captioned telephone device.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“use of trained voice recognition software. Id. at 55–57. In particular, Patent Owner submits that McLaughlin acknowledges the shortcomings of automated speech recognition technology and, therefore, would have discouraged one of ordinary skill in the art from attempting to design the relay claimed in the ’740 patent. Id. at 55 (citing Ex. 1009, 26:54–62). McLaughlin, however, refers to the limitations of speech recognition in the context of translating voice mail messages to text for deaf users, not in connection with relay services discussed in another section of McLaughlin. See Ex. 1009, 26:54–62. Moreover, as discussed previously, we credit the testimony of Mr. Occhiogrosso that it was well known in the field of speech recognition at the time of the invention that speaker-dependent speech recognition (e.g., trained to the voice of a particular speaker), such as that used in Ryan’s re-voicing technique, performed better than untrained, speaker-independent speech recognition, such as would be used in the voice mail application described in McLaughlin. See Ex. 1018 ¶¶ 22, 36; Ex. 1040 3 “TDD” stands for “telecommunication device for the deaf.” Final Dec. 3. ¶ 56. On the facts presented here, we are not persuaded that McLaughlin’s statement regarding limitations of speech recognition technology sufficiently teaches away from the combination of Ryan’s re-voicing scheme with McLaughlin’s relay system to establish nonobviousness. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“disclosure in the ’740 patent of “voice pattern.” Id. at 8–11. We disagree that our reliance on the “Brief Summary of the Invention,” which refers to “a speech recognition computer program which has been trained to the voice pattern of the call assistant,” was improper. See Final Dec. 9 (quoting Ex. 1001, 2:45-47 (emphasis added)). Rather, in our Final Decision, we determined that the ’740 patent contemplated software trained to a “voice pattern of the call assistant,” as set forth in the “Brief Summary of the Invention,” as well as software “specifically trained to the voice of [a] particular call assistant,” as described in the context of a particular relay embodiment shown in Figure 1. Final Dec. 9–10 (quoting Ex. 1001, 2:45– 47, 6:34–37). Based on the evidence in the written description (including the disclosure of “voice pattern”), we determined that the ’740 patent did not indicate expressly how training occurs. Id. at 10. Giving the claim language its broadest reasonable construction in light of the specification, we concluded we would not limit “trained to the voice of the call assistant” to require training to the voice of one particular call assistant. Id.” slip op. at 7
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 7,319,740
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.