• Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentable
  PTAB · Nov 2, 2015 · IPR2014-00810 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 1–3 and 5–7 are unpatentable as anticipated by Silberschatz; Petitioner did not show claims 4 and 8 unpatentable because Silberschatz does not disclose allocating or de-allocating a specific telecommunications resource.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “In this case, the ’637 patent discloses multiple embodiments of telephony and telecommunication resources being allocated and de-allocated, but during prosecution, the applicant removed the modifying limitation of “telecommunication”3 leaving only the term “resource” in the issued claims. Compare Ex. 1004, 60–69 (Application No. 09/072,436) with Ex. 1002, 44–47. The claims, thus, recite “resource” and do not recite “telecommunications resource” nor do they recite “computer resource.” The lack of a limiting term modifying “resource” indicates a scope broader than the scope encompassed by a “resource” that is limited to only a “telecommunications resource” or “computer resource.” Moreover, the Examiner characterized the claims of the application that issued as the ’637 patent as “broader in scope than the claims [in] the parent patent.” Ex. 1002, 95. The Applicant did not dispute the Examiner’s characterization of the claims. Id. at 107. Although the ’637 patent discloses embodiments using “resources,” the ’637 patent does not define explicitly the term “resource.” Therefore, we look to the ordinary meaning of the term as would be understood by one of 3 The term “telecommunication” was recited in the proposed claims of earlier-filed parent Application No. 09/072,436. The ’637 patent claims priority to patent Application No. 09/072,436. See Ex. 1002, 1. ordinary skill in the art. A technical dictionary, IEEE Dictionary4, defines “resource” as “[a]ny capability that must be scheduled, assigned, or controlled by the underlying implementation to assure non[-]conflicting usage by processes.” Id. at 976. As shown by the dictionary definition, one of ordinary skill in the art would understand “resource” is not limited to a telecommunications resource or a computer resource.5 Thus, the ordinary meaning of “resource” is consistent with the term’s use in the ’637 patent, which readily interchanges the term “resources” with “components” and “capability” in the context of computer telephony resources. Ex. 1001, 1:27–29. For example, in one embodiment in the ’637 patent, the telecommunication “resource” is a telephony line card that is coupled to a telephone. Id. at 9:12–15. In other embodiments, the telecommunication “resources” are components or ports coupled via a data bus to a central processing unit system, a data port system, a video system, a network system, a storage controller, and a high speed communication system. Id. at 8:1–27, 10:64–11:10, 11:14–22. In every embodiment in the ’637 patent, 4 IEEE 100: The Authoritative Dictionary of IEEE Standards Terms: Seventh Edition (Standards Information Network, IEEE Press ©2000) (Ex. 3001) (hereinafter “IEEE Dictionary”). 5 Petitioner’s Declarant, Dr. Forys, testified on cross-examination that a person of ordinary skill in the art would have telecommunications experience because all of the embodiments in the ’637 patent are directed to telecommunications. Ex. 2002, 47:2–14. Based on this testimony, Patent Owner argues that the ’637 patent would be understood by a person of ordinary skill in the art in the context of a telecommunications systems. PO Resp. 8–9. We agree the ’637 patent may have been understood in the context of a telecommunications system, however, that does not indicate that a skilled artisan would have understood “resource” to have been limited to only a telecommunications resource. resources are a component or capability of a system that is managed (i.e., identified, allocated, de-allocated) by some module in the service kernel. Id. at 9:27–39, 10:10–14, 10:64–11:10, 11:14–22. Accordingly, we do not agree with Patent Owner’s position, because” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s Declarant, Dr. Forys, opines that a person of ordinary skill in the art relevant to the ’637 patent “would have a B.S. degree in Electrical Engineering, Computer Science, or an equivalent field and one year to two years of industry experience in telecommunications.” Ex. 1003 ¶ 32. Patent Owner does not disagree with Petitioner’s assertions regarding the level of skill in the art, nor does Patent Owner’s Declarant, Dr. Akl, offer any contrary explanation regarding who would qualify as a person of ordinary skill in the art relevant to the ’637 patent. PO Resp. 9–10; Ex. 2003 ¶ 42. Based on our review of the ’637 patent, the types of problems and solutions described in the ’637 patent and cited prior art, and the testimony of Petitioner’s Declarant, we conclude that a person of ordinary skill in the art at the time of the claimed invention would have had at least a Bachelor’s degree in Electrical Engineering, Computer Science, or a similar discipline, and at least one year of work experience in telecommunications technologies. We further note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 16

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “We do agree with Patent Owner’s argument, however, with regards to dependent claims 4 and 8, which require the return of “the allocated telecommunications resources to control of the management module.” Ex. 1001, 21:52–22:6, 22:44–52; see supra, Section II.A.3. Petitioner has not indicated a disclosure in Silberschatz that demonstrates the allocation or de-allocation of a specific telecommunications resource. Therefore, we determine that Petitioner has failed to meet its burden to show Silberschatz anticipates dependent claims 4 and 8.” slip op. at 21

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We do not agree with Patent Owner’s position, because Petitioner identifies CPU time as a specific resource that is requested (Pet. 23–24), allocated (id. at 25), used (id. at 25), and de-allocated (id. at 26). We credit the testimony of Dr. Forys, who explains how and where Silberschatz discloses each element of the challenged claims. See Ex. 1003 ¶¶ 64–80. Specifically, Dr. Forys testifies regarding the request, allocation, use, and de-allocation of a single type of resource (e.g., CPU time), thereby meeting the limitations of the challenged claims. Id. ¶¶ 74–80. Although Patent Owner correctly points out that Petitioner discusses multiple types of resources, we do not agree that Petitioner discusses or applies the disclosure of Silberschatz inconsistently, because Petitioner at least consistently identifies CPU time as a resource requested, allocated, used, and de-allocated.” slip op. at 21

  Patent outcomesUS 7,324,637 mixed
  Claim construction§ 102 anticipationcites Graham
  Patents in suitUS 7,324,637
• The United States Postal Service (Usps) / The United States Of America, As Represented By The Postmaster General v. Return Mail, Inc.All claims unpatentable
  PTAB · Oct 15, 2015 · CBM2014-00116 · APJ Kevin F Turner · CBM · Final written decision

  Claims 39–44 are unpatentable under § 101 because they claim the abstract idea of relaying mailing address data without significantly more; anticipation by 1997 ACS was not shown.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner

    “II. ANALYSIS A. Claim Construction We construe all terms, whether or not expressly discussed here, using the broadest reasonable construction in light of the ’548 Patent specification. See 37 C.F.R. § 42.300(b); see also In re Cuozzo Speed Techs., LLC, 93 F.3d 1268, 1278–80 (Fed. Cir. 2015) (“Congress implicitly approved the broadest reasonable interpretation standard in enacting the AIA,” and “the standard was properly adopted by PTO regulation.”). During the pre-trial stage of this proceeding, the parties submitted their constructions for specific claim terms and we adopted constructions consistent with the constructions adopted by the U.S. Court of Federal Claims (Ex. 1011). Dec. 8–10. Return Mail does not dispute the constructions adopted. PO Resp. 16–27. Upon review of the parties’ explanations and supporting evidence before us, we discern no reason to modify our claim constructions set forth in the Decision on Institution with respect to these claim terms. Dec. 8–10. For convenience, our claim constructions are reproduced in the table below:” slip op. at 6

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionIneligibleUnpatentable

    “USPS has shown, by a preponderance of the evidence, that claim 39, as a whole, is directed to the processing of returned mail items, involving decoding information, obtaining an updated address, and electronically transmitting that updated address to a transferee. USPS has shown that the steps are directed to the abstract idea of relaying mailing address data, with the inclusion of an electrical transmission step. Regarding whether claim 39 includes limitations that amount to significantly more than the abstract idea of relaying mailing address data, per our claim construction, USPS has shown that the “decoding” step is “deciphering information into useable form,” but that does not necessarily bring it out of the realm of processes performed in the past by human beings. In fact, all of the claimed steps could be performed in the human mind, with the exception of the transmitting step. Additionally, USPS has shown that what the data might be deemed to represent to the human mind — e.g., “information indicating whether the sender wants a corrected address to be provided for the intended recipient” — does not substantially affect the underlying structure or function of the claim or any machine on which it is carried out. Consistent with USPS’s position, the ’548 Patent disclosure does not describe any particular hardware to perform the steps recited in claim 39, but refers merely in broad terms to generic computer hardware and software.” slip op. at 14

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptIneligibleUnpatentable

    “significantly more than the abstract idea of relaying mailing address data, per our claim construction, USPS has shown that the “decoding” step is “deciphering information into useable form,” but that does not necessarily bring it out of the realm of processes performed in the past by human beings. In fact, all of the claimed steps could be performed in the human mind, with the exception of the transmitting step. Additionally, USPS has shown that what the data might be deemed to represent to the human mind — e.g., “information indicating whether the sender wants a corrected address to be provided for the intended recipient” — does not substantially affect the underlying structure or function of the claim or any machine on which it is carried out. Consistent with USPS’s position, the ’548 Patent disclosure does not describe any particular hardware to perform the steps recited in claim 39, but refers merely in broad terms to generic computer hardware and software.” slip op. at 14

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “deciding between the proffered constructions of “[d]ecipher information into useable form” and “[c]onvert information into useable form,” the court concluded that “using the terms ‘decipher’ and ‘deciphered’ more closely follow the customary meaning of the terms and reflects the claim language. This is because decoding must operate on encoded data,” which is recognized in the term “decipher” but not in “convert.” Ex. 1011, 22–23. USPS contends that “the carrier converts into intelligible form the participant code and endorsement thereby performing the claimed ‘decoding.’” Pet. 45. However, we find no support within 1997 ACS that the carrier decodes or deciphers the participant code or endorsement because the carrier (a person) is merely reading those indicators. The indicator “ADRESS SERVICE REQUESTED” is merely read and there is no disclosure that the carrier decodes the participant code or the keyline. We disagree with Dr. Lubenow that the plain-English endorsements “meet the plain and ordinary meaning of the term ‘code.’” Ex. 1028 ¶ 18. As such, we are not persuaded that the carrier in 1997 ACS acts to decode encoded data on the returned mail items.” slip op. at 24

  Patent outcomesUS 6,826,548 unpatentable
  Claim construction§ 101 eligibility§ 102 anticipationcites Alice · Mayo
  Patents in suitUS 6,826,548
• EMC Corporation / Rsa Security LLC v. Secure Axcess, LLCAll claims unpatentable
  PTAB · Sep 8, 2015 · IPR2014-00475 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1–23 and 25–32 are unpatentable: some are anticipated by Arent or Tygar, and the remaining claims are obvious over the stated combinations.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “As an initial matter, in accordance with the plain language of the claims and because the ’191 patent does not provide any special meaning for the term “received data,” we construe “received data” to mean “data that has been received.” The term “received data” implies data has been received but does not itself require the data to be received at a particular time, in a particular manner, by a particular device (such as an authentication host computer), or from a particular device (such as a device other than an authentication host computer). None of independent claims 1, 31, or 32 expressly recites from where the received data is sent, much less recite expressly that the data is sent from a device other than the authentication host computer. Of independent claims 1, 31, and 32, only independent claim 32 expressly requires a particular device—“an authentication host computer”—to receive data. Independent claims 1 and 31 require acting on received data in a certain manner—to transform (claim 1), or format (claim 31), received data in a certain manner to create formatted data. Thus, none of claims 1, 31, or 32 expressly requires an authentication host computer to receive data from a device other than the authentication host computer, as Patent Owner contends.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “We agree with Petitioner that none of the claims requires the authenticity key to locate the preferences file or have the ability to determine the location of a preferences file. First, none of the independent claims recites the authenticity key being used to locate the preferences file.10 Nor is there evidence of written description support for such an interpretation— the ’191 patent does not disclose using an authenticity key to locate the preferences file. Rather, as noted previously, the ’191 patent discloses in a preferred embodiment that a preferences key, which is different than an authenticity key, is used to locate the preferences file. See Ex. 1001, 4:38– 40. This understanding is confirmed by Patent Owner’s declarant Dr. Katz. See Ex. 1034, 164:20–165:5. Further, Dr. Katz acknowledges the 9 To the extent that Patent Owner argues Dr. Tygar’s testimony concerning a particular embodiment disclosed in the ’191 patent acknowledges Patent Owner’s proposed construction here is correct (Paper 23, 2–4), we disagree. Dr. Tygar did not provide testimony about the meaning of the claims, only what a particular embodiment in the ’191 patent described. See Paper 27, 1– 3. 10 Claim 1 recites “returning. . . the formatted data to enable the authenticity key to be retrieved from the formatted data and to locate a preferences file”; independent claim 29 recites “the authenticity key enables location of a preferences file”; independent claims 31 and 32 require retrieving the authenticity key to locate a preferences file. Independent claim 17 does not recite the location of a preferences file. 19 authenticity key does not have information to locate the preferences file. See, e.g., Ex. 1034, 165:6–9. Petitioner’s proposed construction of independent claims 1, 17, 29, 31, and 32 as only requiring some action as a precondition to locating the preferences file better comports with the claims and written description of the ’191 patent. For example, the ’191 patent discloses that after verification of a received digital signature, the preferences key is requested and subsequently used to determine the location of the preferences file. See Ex. 1001, 4:22–40 (referring to Fig. 5). The verification of the received digital signature must occur before the preferences key can be requested and used to determine the location of the preferences file. In other words, verification of the received digital signature is a precondition of requesting and using the preferences key to determine the location of the preferences file. Thus, verification of the received digital signature enables—supplies the opportunity for11—the requested preferences key. We, therefore, adopt Petitioner’s proposed construction that the” slip op. at 19

  • Skill levelSkill level board ownDecided for petitioner

    “The parties propose similar levels of ordinary skill in the art and do not directly challenge the other’s proposal. Ex. 1002 ¶ 12 (testimony by Petitioner’s declarant); Ex. 2007 ¶ 8 (testimony by Patent Owner’s declarant). The parties’ declarants differ in the amount of work experience one with ordinary skill in the art with a bachelor’s degree would have. Patent Owner’s declarant opines two years of work experience would be sufficient, whereas Petitioner’s declarant opines five years of work experience would be necessary for one of ordinary skill in the art with a bachelor’s degree. Id. Despite these initial differences, Petitioner later acknowledged that record evidence supports a level of ordinary skill having two years of work experience. Hearing Tr. 32:1–16; see also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (indicating the level of ordinary skill in the art is reflected by the prior art of record). We adopt the areas of agreement in the parties’ proposals. Therefore, one of ordinary skill in the art would have a bachelor’s degree in computer 23 science (or an equivalent field) and least two years of work experience in the area of information technology.” slip op. at 23

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Weighing the testimony of the declarants, as discussed above, we credit Dr. Tygar’s testimony over Dr. Katz’s testimony that Arent discloses sending the digital signature separately from the message. See, e.g., Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board has discretion to give more weight to one item of evidence over another “unless no reasonable trier of fact could have done so”); In re Am. Acad. of Sci. Tech 31 Ctr., 367 F.3d at 1368 (“[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.”). First, Dr. Katz does not address sufficiently the Petitioner’s position regarding the signed web offer being the formatted data recited in claims 1, 31, and 32. Rather, Dr. Katz focuses his testimony on Arent’s technology for authentication of a merchant, whereas Petitioner relies on Arent’s authentication of the offer. Compare Pet. 29–32, Reply 3–4 with Ex. 1034 153:10–154:21, 159:17–160:19; see also Ex. 1035 ¶ 52 (Dr. Tygar confirming Dr. Katz based his understanding on Arent’s discussion of the authentication of a merchant). Second, Dr. Tygar directly counters Dr. Katz’s testimony. Dr. Tygar testifies that “[c]onventional digital signature techniques would not have sent the message and signature separately, especially in the context of signing web pages.” Ex. 1035 ¶ 53 (explaining how “an elaborate system would be needed to correlate specific instances of web pages for specific user/browser combinations and specific moments in time and the corresponding digital signatures” if digital signatures were sent separately from messages/web pages).” slip op. at 31

  Patent outcomesUS 7,631,191 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,631,191
• PNC Bank, N.A. / U.S. Bank, N. A. et al. v. Secure Axcess, LLCAll claims unpatentable
  PTAB · Sep 8, 2015 · CBM2015-00009 · APJ Barbara A Benoit · CBM · Final written decision

  Claims 1–32 are unpatentable as obvious over the SHTTP document and Arent.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “For the foregoing reasons, we determine that Petitioner has established by a preponderance of the evidence that the subject matter recited in claims 1–32 of the ’191 patent as a whole would have been obvious to one of ordinary skill in the art in view of the teachings of the SHTTP document and Arent. See 35 U.S.C. § 103(a).” slip op. at 71

  • ExcludeMotion to exclude, deniedNot reached

    “Information Prepared by Paul C. Clark” (Ex. 1018). Petitioner opposes, arguing that Exhibit 1018 is Dr. Clark’s notes used during his deposition. We did not refer to or rely on Exhibit 1018 in this Final Written Decision. As such, we need not reach the merits as to Patent Owner’s Motion to Exclude. Accordingly, Patent Owner’s Motion to Exclude certain evidence (Ex. 1018) is dismissed as moot.” slip op. at 71

  • Skill levelSkill level board ownOther

    “Petitioner’s expert adopted the level of ordinary skill in the art at the time of the invention used by Patent Owner’s expert. See Ex. 2006 ¶ 8 (testimony by Patent Owner’s declarant identifying the level of ordinary skill); Ex. 1002 ¶ 29 (testimony by Petitioner’s declarant). We do not 31 disagree with the parties. Therefore, one of ordinary skill in the art would have a bachelor’s degree in computer science, computer engineering, or an equivalent field and least two years of work experience in the area of information technology.” slip op. at 31

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “We agree with Petitioner and its declarant that the provisional application does not disclose the claimed authenticity key or preferences file or the claimed use thereof, as recited in each of independent claims 1, 17, 29, 31, and 32. The provisional application describes the invention in a few sentences. The scarcity of detail fails to provide sufficient disclosure of the claimed steps. For example, we see no disclosure of inserting any data in the provisional application, much less inserting something that could be identified as an authenticity key. Although a shared secret is disclosed, the shared secret is not described as being inserted into the web page or any other data. See id. at 5–6 (“The invention proposes to utilize the shared secret data created as part of being” a credit card holder of a particular credit 33 card company.). Moreover, the record evidence indicates that the provisional application does not disclose the recited “authenticity key.” Pet. 20 (citing Ex. 1002 at 18, ¶ 37). Thus, we agree with Petitioner that the provisional application lacks written description support for “authenticity key,” which is recited by all claims in the ’191 patent. Accordingly, we determine Arent is prior art under 102(a) to the ’191 patent and is available for consideration in this covered business method patent review.” slip op. at 33

  Patent outcomesUS 7,631,191 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 7,631,191
• PNC Bank, N.A. / U.S. Bank, N. A. et al. v. Secure Axcess, LLCAll claims unpatentable
  PTAB · Sep 8, 2015 · CBM2014-00100 · APJ Barbara A Benoit · CBM · Final written decision

  Claims 1–32 are unpatentable as obvious over SHTTP and Arent; the Board found the combined teachings and reason to combine established by a preponderance of the evidence.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “Petitioner’s expert adopted the level of ordinary skill in the art at the time of the invention used by Patent Owner’s expert. See Ex. 2006 ¶ 8 (testimony by Patent Owner’s declarant identifying the level of ordinary skill); Ex. 1002 ¶ 29 (testimony by Petitioner’s declarant). We do not 31 disagree with the parties. Therefore, one of ordinary skill in the art would have a bachelor’s degree in computer science, computer engineering, or an equivalent field and least two years of work experience in the area of information technology.” slip op. at 31

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “We agree with Petitioner and its declarant that the provisional application does not disclose the claimed authenticity key or preferences file or the claimed use thereof, as recited in each of independent claims 1, 17, 29, 31, and 32. The provisional application describes the invention in a few sentences. The scarcity of detail fails to provide sufficient disclosure of the claimed steps. For example, we see no disclosure of inserting any data in the provisional application, much less inserting something that could be identified as an authenticity key. Although a shared secret is disclosed, the shared secret is not described as being inserted into the web page or any other data. See id. at 5–6 (“The invention proposes to utilize the shared secret data created as part of being” a credit card holder of a particular credit 33 card company.). Moreover, the record evidence indicates that the provisional application does not disclose the recited “authenticity key.” Pet. 20 (citing Ex. 1002 at 18, ¶ 37). Thus, we agree with Petitioner that the provisional application lacks written description support for “authenticity key,” which is recited by all claims in the ’191 patent. Accordingly, we determine Arent is prior art under 102(a) to the ’191 patent and is available for consideration in this covered business method patent review.” slip op. at 33

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “10. Conclusion Regarding Obviousness We have resolved the question of obviousness based on factual determinations of (1) the scope and content of the prior art; (2) differences between the subject matter of challenged claims and the teachings of the prior art; and (3) the level of ordinary skill in the art. Graham, 383 U.S. at 17–18. Patent Owner did not put forth any objective evidence of nonobviousness. For the foregoing reasons, we determine that Petitioner has established by a preponderance of the evidence that the subject matter recited in claims 1–32 of the ’191 patent as a whole would have been obvious to one of ordinary skill in the art in view of the teachings of the SHTTP document and Arent. See 35 U.S.C. § 103(a).” slip op. at 71

  Patent outcomesUS 7,631,191 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 7,631,191
• Oracle Corporation v. Thought, Inc.All claims unpatentable
  PTAB · Apr 23, 2015 · IPR2014-00117 · APJ Stacey G White · IPR · Final written decision

  Claims 1–3 are unpatentable as anticipated by Franklin; claim 2 is also unpatentable over Franklin and JVM; claims 6–7 are unpatentable over Franklin and Chang.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “have understood the recited phrase “any other” to mean that the reliable messaging service of claim 1 is a reliable messaging service with capabilities similar to those of the Java Messaging Service (“JMS”). Id. at 11–12 (citing Ex. 2001 ¶ 83). In support of its position, Patent Owner relies upon the testimony of Sam Malek, Ph.D. See Ex. 2001 ¶¶ 80–85. Dr. Malek provides a detailed description of JMS (id. ¶¶ 39–47), however, he does not provide a sufficient factual basis for his assertion that “any other” would be limited to services similar to JMS. During his deposition, Dr. Malek testified that JMS was an example of a messaging service and that there were other messaging services beyond JMS. Ex. 1016, 48:19–24. He, however, asserts that because the ’912 Patent mentions JMS, that in itself is an indication that the claims are directed to a particular form of messaging performed by JMS. Id. at 50:19–51:7. We note, however, that the ’912 Patent does not limit the messaging service to JMS; instead it lists JMS as an example of a messaging service that could be used. Ex. 1001, 5:57–60 (“caching system that utilizes a messaging system such as the Java Messaging Service (JMS)”), 16:28–30 (“the Java Messaging Service (JMS) or to any other reliable messaging service”), 16:46–49 (“JMS . . . or other reliable messaging service), 41:22– 25 (“JMS (or similar) notification caching system”). At most, there is one passing reference in the specification to the messaging system being “similar” to JMS, but the specification does not describe in what way the messaging system should be similar to JMS, nor does it state how similar the messaging system should be to JMS. Thus, we find that the ’912 Patent does not require JMS or any specific features of JMS. Therefore, we determine that the broadest reasonable interpretation of “any other” as recited in claim 1 of the ’912 Patent does not limit the claimed messaging service to those similar to JMS. As to the phrase “available in the object programming language system environment,” Patent Owner argues that this should mean that the recited messaging service has an interface for object oriented programs to use the messaging service. PO Resp. 12 (citing Ex. 2001 ¶ 83). In support of its position, Patent Owner cites Dr. Malek’s testimony. Dr. Malek, however, provides no analysis or factual support for that assertion outside of a discussion of JMS’s program language system environment. Ex. 2001 ¶¶ 82–83. We determine that this term is not limited to the environment of the JMS. Therefore, we determine that the broadest reasonable interpretation of “available in the object programming language system environment” is not limited to having an interface for object oriented programs to use the messaging service. We are not persuaded that express construction is necessary for the terms “any other” and “available in the object programming language system environment.” In addition, after reviewing the evidence of record, we determine that our preliminary construction of “reliable messaging service” to be “a messaging service that sends messages that will be received according to guarantees made by the service” is the broadest reasonable construction of the term and, as such, we do not modify our preliminary construction.” slip op. at 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency foundUnpatentable

    “Ex. 1014 ¶ 9.2.1.1.3.4. We find Dr. Hosking’s testimony to be well reasoned. “‘[A]nticipation by inherent disclosure is appropriate only when the reference discloses prior art that must necessarily include the unstated limitation.’” Rexnord Indus., LLC v. Kappos, 705 F.3d 1347, 1355 (Fed. Cir. 2013) (quoting In re Omeprazole Patent Litigation, 483 F.3d 1364, 1378 (Fed. Cir. 2007)). According to our construction of reliable messaging service, such a service makes guarantees regarding the receipt of messages. Therefore, we find that one of ordinary skill in the art would understand an unreliable messaging service to be one that makes no such guarantees. It follows that if an unreliable messaging service is used, then there is no guarantee that invalidation messages would be received. The stated purpose of the algorithms described in Franklin is “to ensure that such caching does not result in the violation of transaction semantics.” Ex. 1005, 1. Franklin goes on to note that “care must be taken to ensure that the presence of multiple copies [of data] in the distributed system does not jeopardize the correctness of programs.” Id. at 2. The absences of guarantees regarding the receipt of invalidation messages would render the disclosed algorithms ineffective for their stated purpose because one cannot ensure that messages are received if an unreliable messaging system is used. Thus, we find that one of ordinary skill in the art would read Franklin’s disclosure to require a reliable messaging service.” slip op. at 16

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “in element (c) of claim 1. PO Resp. 25–33. We note, however, that “as a general rule the claim is not limited to performance of the steps in the order recited, unless the claim explicitly or implicitly requires a specific order.” Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1345 (Fed. Cir. 2008) (citing Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1342–43 (Fed. Cir. 2001)). This is particularly true here because claim 1 recites a computer system and not a method. According to Patent Owner, the inclusion of the term “when” means that the invalidation message cannot be sent to the clients before the update is persisted in the data source. PO Resp. 29. Patent Owner urges that the term “when” has an ordinary and customary meaning of “at or during which time.” Id. at 29 n.5 (quoting Ex. 2003, 1424). We do not agree with Patent Owner’s narrow interpretation. Franklin discloses the sending of invalidation messages and the commitment to the database to be contemporaneous activities. Ex. 1005, 23–24. Franklin describes that in the O2PL algorithms a “transaction enters its commit phase” then it sends invalidation messages to the server and the client regarding the data to be updated, and then the data is updated in accordance with the algorithm. Id. Thus, one of ordinary skill in the art would have understood that the sending of invalidation messages to be part of the “commit phase.” As such, the sending of invalidation messages would occur “when” the update is being committed. Therefore, we determine that this disclosure meets the limitations of element (c) of claim 1.” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation foundUnpatentable

    “reasoning to combine JVM and Franklin. PO Resp. 38. We are not persuaded by Patent Owner’s assertion. We, instead, are persuaded that the Java Virtual Machine was well-known, and that the implementation of a caching system, such as the one described by Franklin, in the Java Virtual Machine environment would have been within the knowledge of one of ordinary skill, and that such modification would have been motivated by the knowledge of one of ordinary skill. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (“Any judgment on obviousness is . . . necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.”). Therefore, we are not persuaded of improper hindsight reasoning. After considering the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has shown by a preponderance of the evidence that Franklin and JVM would have rendered obvious claim 2.” slip op. at 21

  Patent outcomesUS 6,985,912 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,985,912
• Captioncall, L.L.C. v. Ultratec, Inc.All claims unpatentable
  PTAB · Mar 3, 2015 · IPR2013-00544 · APJ Lynne E Pettigrew · IPR · Final written decision

  Claims 7–11 are unpatentable: claim 7 is anticipated by Ryan and obvious over Wycherley and Yamamoto; claims 8–11 are obvious over Ryan and McLaughlin.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “The steps recited in the body of claim 7—providing words spoken by the remote user to a relay, a call assistant re-voicing the words to create a text stream, and presenting a text stream of the spoken words to the assisted user—define a complete method and do not rely on a recitation of a “captioned telephone service” in the preamble. Thus, “operating a captioned telephone service” is not an essential step that is necessary to give meaning to the claim and only states a purpose or intended use of the claimed method steps. Although claim 7 recites some steps associated with providing a captioned telephone service, notably missing from claim 7 is a limitation that requires providing the voice of the remote user to the assisted user. Because claim 7 does not recite that limitation explicitly, and because the phrase “operating a captioned telephone service” in the preamble is not an essential step of the claim, we do not construe the claim to include the additional limitation of providing the voice of the remote user to the assisted user. Reading the claim as a whole and applying the broadest reasonable construction of the claim language, we conclude that the “operating a captioned telephone service” language in the preamble of claim 7 is not a limitation requiring a remote user’s voice to be transmitted to, or received by, the assisted user. Accordingly, claim 7 has an effective filing date of September 8, 1997.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “The ’578 patent does not set forth a special definition for “training.” In the “Brief Summary of the Invention,” however, the ’578 patent refers to “a speech recognition computer program which has been trained to the voice pattern of the call assistant.” Ex. 1001, 2:44–46 (emphasis added). The ’578 patent incorporates by reference the disclosure of the ’482 patent regarding the use of voice recognition software in a re-voicing relay. Id. at 3:51–53. In that context, the ’482 patent describes “the call assistant operat[ing] at a computer terminal which contains a copy of a voice recognition software package which is specifically trained to the voice of that particular call assistant.” Ex. 1002, 5:44–47 (emphasis added). Thus, the ’578 patent contemplates software trained to “a voice pattern of the call assistant” as well as software “specifically trained to the voice of [a] particular call assistant.” Neither description of training, however, indicates when or how the training occurs. Patent Owner, relying on its declarant Mr. Paul W. Ludwick, asserts that a person of ordinary skill in the art would not have understood software that is “designed” in advance to recognize the voice of particular agents to be software that is “trained to recognize individual voices,” because such technology was not used in telecommunications relay service in 1994. PO Resp. 24 (citing Ex. 2010 ¶¶ 21–22). We note that technology available in 1994 has little probative value here because the earliest date of invention for claims of the ’578 patent is 1997. We give claim language its broadest reasonable construction in light of the specification of the patent in which it appears. Thus, we will not limit “trained to the voice of the call assistant” to require training to the voice of one particular call assistant, because the claim language encompasses the invention as disclosed in the written description of the ’578 patent— software trained to a voice pattern of a call assistant. Ex. 1001, 2:39–47 (“Summary of the Invention”). Nor will we limit “trained to the voice of the call assistant” to a particular time at which training must occur or to a particular manner of training that is not found in the claims or the written description of the ’578 patent.” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “The ’578 patent uses the term “captioned telephone device” consistent with this ordinary meaning. Claim 8 recites receiving spoken words at the captioned telephone device. The written description of the ’578 patent describes a captioned telephone device as a device that receives both voice signals and text information and displays the text information to an assisted user. Id. at 6:36–42 (“The captioned telephone device 72 is constructed to accomplish two objectives. One objective is to filter, or separate, the digital signals carrying the text information from the voice signal. The other objective is to take the digital signals and create a visual display of the text information for the assisted user.”); see also id. at Fig. 4 (showing a simultaneous text and voice connection between captioned telephone device 72 and relay 66). Note that a captioned telephone device need not output any audio signals to the assisted user. See id. at 6:46–48 (stating that a captioned telephone device may be a stand-alone device separate from a telephone at an assisted user’s location); id. at Figs. 4, 5 (illustrating captioned telephone device and telephone as two separate devices). In light of the use of “captioned telephone device” in the ’578 patent and the ordinary meaning of the term, we construe “captioned telephone 7 THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE 286 (3d ed. 1992) (defining “caption” in relevant part as “2. A subtitle in a motion picture.”); THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE 278 (4th ed. 2006) (defining “caption” in relevant part as “2. A series of words . . . that communicate dialogue to the hearing-impaired or translate foreign dialogues.”). device” as a device that transmits and receives voice signals, receives text information, and displays text to an assisted user.” slip op. at 8

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner’s arguments are unpersuasive at the outset because, to testify as an expert under FRE 702, a person need not be a person of ordinary skill in the art, but rather “qualified in the pertinent art.” Sundance, 550 F.3d at 1363–64; see SEB, 594 F.3d at 1372–73; Mytee, 439 Fed. App’x at 886–87. Patent Owner’s arguments are also unpersuasive because they attempt to constrict the “pertinent art,” i.e., the pertinent technology, to a particular subset of individuals who use the pertinent technology, rather than the pertinent technology itself. See Pet. Opp. to Mots. to Exc. 4–5 (arguing that the problems in the pertinent art are not “uniquely related” to the deaf and hard-of-hearing). Moreover, Patent Owner indicates elsewhere that the relevant field of art is telecommunication technologies. See PO Resp. 18 n.1 (Patent Owner indicating its declarant “Mr. Ludwick indisputably is [a person of ordinary skill in the art] in telecommunications technologies, which is the relevant field of art,” to opine on speech recognition software for use in telecommunication relay service settings). Petitioner similarly indicates the relevant field is telecommunication technologies. Pet. Opp. to Mots. to Exc. 6 (“Mr. Occhiogrosso’s qualifications should be analyzed with respect to the pertinent art of telecommunication technologies in which an intermediary facilitates voice-to-text transcription.”). We agree that the pertinent art is telecommunication technologies. The ’578 patent states that the “present invention relates to the general field of telephone communications.” Ex. 1001, 1:25–26. The ’578 patent focuses on a particular application of that technology: people who need assistance in using telecommunications devices. Id. at 1:25–2:34 (describing various prior art assistive technologies to help characterize the evolution of assistive technologies). The ’578 patent also summarizes the invention as the use of a speech recognition computer program trained to the voice of the call assistant to translate promptly the words spoken by an intermediary call assistant into a “high speed digital communication message [that] is then transmitted electronically promptly by telephone to a visual display accessible to the” hearing-assisted user. Id. at 2:47–50. The qualifications of Mr. Occhiogrosso, as summarized in his curriculum vitae (Ex. 1019), qualify him to give expert testimony on the subject of telecommunication technologies. He possesses a Bachelor of Science in Electrical Engineering and a Master of Science in Electrical Engineering. Ex. 1019, 2. Mr. Occhiogrosso testifies that he has more than thirty years of experience in the field of telecommunications and information technology, and he has planned, designed, implemented, and managed large scale projects involving wired and wireless communication systems, including transmission of voice and data. Ex. 1030 ¶ 7; see also Ex. 1019, 2–6 (detailing Mr. Occhiogrosso’s enterprise consulting engagements, research and development, and wireless experience). Moreover, to the extent Mr. Occhiogrosso is more familiar with” slip op. at 16

  Patent outcomesUS 8,213,578 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 8,213,578
• Captioncall, L.L.C. v. Ultratec, Inc.All claims unpatentable
  PTAB · Mar 3, 2015 · IPR2013-00540 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1 and 2 are unpatentable as anticipated by Ryan and obvious over Wycherley and Yamamoto.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “We give claim language its broadest reasonable construction in light of the specification of the patent in which it appears. Thus, we will not limit “trained to the voice of the call assistant” to require training to the voice of only one particular call assistant, because the claim language encompasses the invention as disclosed in the Specification—software trained to a voice pattern of a call assistant. Ex. 1021, 2:41-49 (“Summary of the Invention”). Nor will we limit “trained to the voice of the call assistant” to a particular time in which the training must occur or to a particular manner of training that is not found in the claims nor the Specification. Accordingly, “trained to the voice of the call assistant” does not preclude voice recognition software that is designed or built in advance of implementation at the source code level to the voice pattern of a call assistant. Nor is “trained to the voice of the call assistant” limited to training to the voice of one and only one call assistant. 2. “computer programmed to use a voice recognition computer software” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner

    “We construe “the computer programmed to use a voice recognition computer software package trained to the voice of the call assistant to translate the words spoken in voice by the call assistant into a digital text stream,” recited in claims 1 and 2, in accordance with these principles. No other claim terms require express construction.” slip op. at 6

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner’s arguments are unpersuasive at the outset because, to testify as an expert under FRE 702, a person need not be a person of ordinary skill in the art, but rather “qualified in the pertinent art.” Sundance, 550 F.3d at 1363-64; SEB, 594 F.3d at 1372-73; Mytee, 439 Fed. App’x at 886-87. Patent Owner’s arguments are also unpersuasive because they attempt to constrict the “pertinent art,” i.e., the pertinent technology, to a particular subset of individuals who use the pertinent technology, rather than the pertinent technology itself. See Pet. Opp. to Mots. to Exc. 4-5 (arguing” slip op. at 13

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “expressly “a speaker” or “a digital computer connected to a microphone,” as recited in claims 1 and 2. Pet. 14-15, 17-18. Petitioner, however, asserts that Ryan inherently discloses those components. Pet. 14-15 (citing Ex. 1014 ¶¶ 28-30), 17-18 (citing Ex. 1014 ¶¶ 28-30). We credit Mr. Occhiogrosso’s explanation that a speaker necessarily must be present in Ryan’s relay system for a relay agent to “listen to the caller,” as Ryan expressly discloses. Ex. 1014 ¶ 30 (citing Ex. 1004, 4, l. 36). Also, we credit Mr. Occhiogrosso’s testimony that the recited “a digital computer 23 connected to a microphone” necessarily must be present in Ryan’s relay system for it to process the voice of the relay operator, and a digital computer necessarily must be present for Ryan’s relay system to use speech recognition software. Ex. 1014 ¶¶ 28-29 (citing Ex. 1004, 4:14, 33). Thus, we find that Ryan inherently discloses the recited “a digital computer connected to a microphone” and “a speaker.”” slip op. at 23

  Patent outcomesUS 6,233,314 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 6,233,314
• Captioncall, LLC v. Ultratec, Inc.All claims unpatentable
  PTAB · Mar 3, 2015 · IPR2013-00550 · APJ William V Saindon · IPR · Final written decision

  Claim 1 is unpatentable as anticipated by McLaughlin.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “The preamble of claim 1 is limiting in that it requires a “captioned telephone device.” This is because it provides antecedent basis for the term “the device” later in the body of the claim, and thus serves “as a necessary component of the claimed invention.” Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003). Notwithstanding, Petitioner is correct in that the claim sets forth all of the elements of a captioned telephone device. Accordingly, claim 1 is limited to a “captioned telephone device,” but the body of the claim recites a complete device; the preamble adds no further limitation. Our reasoning follows.” slip op. at 8

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner’s arguments are unpersuasive at the outset because, to testify as an expert under FRE 702, a person need not be a person of ordinary skill in the art, but rather simply “qualified in the pertinent art.” Sundance, 550 F.3d at 1363–64; SEB, 594 F.3d at 1372–73; Mytee, 439 Fed. App’x at 886–87. Notwithstanding, for the reasons we express below in Section II.C, we find Mr. Occhiogrosso to be qualified to testify as to the level of ordinary skill in the art. Patent Owner’s arguments are also unpersuasive because they attempt to constrict the “pertinent art,” i.e., the pertinent technology, to a particular subset of individuals who use the pertinent technology, rather than the pertinent technology itself. See also Pet. Opp. Mot. Excl. 4–5 (arguing that the problems in the pertinent art are not “uniquely related to . . . the deaf and hard-of-hearing”). The technology at issue in the ’082 patent “relates to the general field of telephone communications.” Ex. 1021, 1:21–22. The ’082 patent focuses on a particular application of that technology: people who need assistance in using telecommunications devices. Id. 1:21–2:28 (describing various prior art assistive technologies to help frame the evolution of assistive technologies). Patent Owner would have us define the pertinent art in the narrowest way: “telecommunications technology for the deaf and hard of hearing.” PO Mot. Excl. 3 (emphasis added); see also id. (additionally characterizing the technology as “assistive telecommunications technology”). The Federal Circuit in Sundance, however, used the phrase “qualified in the pertinent art,” however, and did not set forth a rule requiring an expert in the specific technological solution recited in the claims or the particular motivation behind the inventors’ invention. Sundance, 550 F.3d at 1363–64. We determine the pertinent art to be telecommunications systems, because any communications technology would be pertinent art to the ’082 patent. While assistive technology may be more pertinent, and assistive technology for the deaf and hearing impaired, using voice-to-text relays, may be most pertinent, anything in the telecommunications technology field would be pertinent to the inventors when considering their problem. Mr. Occhiogrosso has established that he has knowledge, experience, and education in the field of telecommunications systems. Ex. 1010 ¶¶ 5– 10; Ex. 1030 ¶¶ 4–11. As such, Mr. Occhiogrosso is qualified sufficiently in the pertinent art to testify under FRE 702 in this proceeding, because his testimony helps us to understand aspects of telecommunications technology used in the ’082 patent. Moreover, to the extent Mr. Occhiogrosso is more familiar with” slip op. at 12

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Mr. Occhiogrosso has established that he has knowledge, experience, and education in the field of telecommunications systems. Ex. 1010 ¶¶ 5– 10; Ex. 1030 ¶¶ 4–11. As such, Mr. Occhiogrosso is qualified sufficiently in the pertinent art to testify under FRE 702 in this proceeding, because his testimony helps us to understand aspects of telecommunications technology used in the ’082 patent. Moreover, to the extent Mr. Occhiogrosso is more familiar with general telecommunications technology and less familiar with voice-to-text or its application to the deaf or hearing-impaired, or to the extent that Mr. Occhiogrosso’s testimony is inconsistent or unsupported, we will weigh Mr. Occhiogrosso’s testimony accordingly, taking into account the extent of his expertise in these areas. See, e.g., Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board has discretion to give more weight to one item of evidence over another “unless no reasonable trier of fact could have done so”); 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.”); see also PO Mot. Excl. 5–7 and PO Reply Mot. Excl. 2–4 (arguing Mr. Occhiogrosso does not have sufficient experience with the deaf or hearing impaired); PO Mot. Excl. 8 and PO Reply Mot. Excl. 4–5 (arguing that Mr. Occhiogrosso’s statements are unsupported and unreliable). Under the totality of these circumstances, we decline to exclude the testimony of Mr. Occhiogrosso. Accordingly, Patent Owner’s Motion to Exclude to Mr. Occhiogrosso’s testimony is denied.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “knowledge “of all prior art in the field of the inventor’s endeavor and of prior art solutions for a common problem even if outside that field.” In re Nilssen, 851 F.2d 1401, 1403 (Fed. Cir. 1988). As we explained above in Section II.B, the pertinent art is telecommunication systems. Thus, a person of ordinary skill in the art is a person familiar with at least that technology, by way of background and/or experience. The prior art in the record before us is highly indicative of the level of ordinary skill in this art. Okajima v. Bourdeau, 261 F.3d. 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of skill in the art). Patent Owner argues that Mr. Occhiogrosso has no particular experience in telecommunication relay services (“TRS”) for the deaf and hard of hearing and, as such, is not qualified to testify as to the level of ordinary skill in the art. PO Resp. 7–8. Petitioner replies that Mr. Occhiogrosso has “comprehensive industry experience” that includes experience “relating to each of the component technologies at issue” as well as “applications for the deaf and hard-of-hearing.” Pet. Reply 1 (citing Ex. 1030 ¶¶ 4–11). Patent Owner’s argument is, essentially, that Mr. Occhiogrosso is not qualified sufficiently in this field because he has insufficient experience with a particular intended end user of the claimed invention. PO Resp. 7–8. Although those end users may be a large segment of users of this technology, the same technology is used in other contexts, such as translation of spoken languages and captioning of voices, and Mr. Occhiogrosso has experience in those contexts. Ex. 1030 ¶¶ 9–11. Thus, Patent Owner’s argument is unpersuasive. Moreover, Mr. Occhiogrosso testifies he has experience with voice-to-text technology specifically for deaf and hard-of-hearing persons. Id. ¶ 11. Reviewing the testimony of Mr. Occhiogrosso and his supporting documentation (Exs. 1010, 1011, 1030, 2003, 2004, and 2007), we are persuaded that he is qualified to testify as to the level of ordinary skill in the art in this proceeding.” slip op. at 14

  Patent outcomesUS 7,003,082 unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 7,003,082
• Captioncall, L.L.C. v. Ultratec, Inc.All claims unpatentable
  PTAB · Mar 3, 2015 · IPR2013-00545 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1 and 2 are unpatentable as obvious over Ryan and Alshawi because their combined teachings render the claimed relay system obvious.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “of the specification of the patent in which it appears. Thus, we will not limit “trained to the voice of the call assistant” to require training to the voice of only one particular call assistant, because the claim language encompasses the invention as disclosed in the Specification—software trained to a voice pattern of a call assistant. Ex. 1001, 2:41-49 (“Summary of the Invention”). Nor will we limit “trained to the voice of the call assistant” to a particular time in which the training must occur or to a particular manner of training that is not found in the claims nor the specification. Accordingly, “trained to the voice of the call assistant” does not preclude voice recognition software that is designed or built in advance of implementation at the source code level to the voice pattern of a call assistant. Nor is “trained to the voice of the call assistant” limited to training to the voice of one and only one call assistant.” slip op. at 9

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “For a claim in a later-filed application to be entitled to an earlier filing date, the earlier application must satisfy the written description requirement of 35 U.S.C. § 112, first paragraph. See 35 U.S.C. § 120; In re Huston, 308 F.3d 1267, 1276 (Fed. Cir. 2002). “[T]he purpose of the written description requirement is to ‘ensure that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inventor's contribution to the field of art as described in the patent specification.’” Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336,1353-54 (Fed. Cir. 2010) (en banc) (quoting Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916, 920 (Fed. Cir. 2004)). The written description requirement is met if the specification shows that the inventor has invented what is claimed—that is, the inventor had possession of it. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991).” slip op. at 13

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner’s arguments are unpersuasive at the outset because, to testify as an expert under FRE 702, a person need not be a person of ordinary skill in the art, but rather “qualified in the pertinent art.” Sundance, 550 F.3d at 1363-64; SEB, 594 F.3d at 1372-73; Mytee, 439 Fed. App’x at 886–87. Patent Owner’s arguments are also unpersuasive because they attempt to constrict the “pertinent art,” i.e., the pertinent technology, to a particular subset of individuals who use the pertinent technology, rather than the pertinent technology itself. See Pet. Opp. to Mot. to Exc. 4-5 (arguing that the problems in the pertinent art are not “uniquely related” to the deaf and hard-of-hearing). We agree with Petitioner that the relevant field is telecommunication technologies. See Pet. Opp. to Mot. to Exc. 7 (“Mr. Occhiogrosso’s qualifications should be analyzed with respect to the pertinent art of telecommunication technologies in which an intermediary facilitates voice-to-text transcription.”). The ’346 patent states that the “present invention relates to the general field of telephone communications.” Ex. 1001, 1:16- 17. Patent Owner correctly indicates that the ’346 patent focuses on a particular application of that technology: people who need assistance in using telecommunications devices. PO Mot. to Exc. Occhiogrosso 4 (citing” slip op. at 16

  • Expert testimonyPetitioner expert creditedDecided for petitioner

  Patent outcomesUS 6,594,346 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 6,594,346

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.