Trials@uspto.gov
`Tel: 571–272–7822
`
`
`Paper 98
`Entered: September 7, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`CAPTIONCALL, L.L.C., and
`SORENSON COMMUNICATIONS, INC.,
`Petitioner,
`
`v.
`
`ULTRATEC, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00637
`Patent 8,908,838 B2
`____________
`
`
`
`Before WILLIAM V. SAINDON, BARBARA A. BENOIT, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`
`
`DECISION
`
`Final Written Decision
`Denying Patent Owner’s Motion to Amend
`Granting Patent Owner’s Motions to Seal
`Granting-in-Part Petitioner’s Motion to Exclude
`37 C.F.R. §§ 42.73, 42.121, 42.54, 42.64
`
`
`
`
`

`

`IPR2015-00637
`Patent 8,908,838 B2
`
`
`I. INTRODUCTION
`
`We have jurisdiction under 35 U.S.C. § 6(c). This Final Written Decision is
`entered pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`With respect to the grounds asserted in this trial, we have considered the
`papers submitted by the parties and the evidence cited therein. For the reasons
`discussed below, we determine that Petitioner has shown, by a preponderance of
`the evidence, that the subject matter of claims 1–30 of U.S. Patent No. 8,908,838
`B2 (Ex. 1001, “the ’838 patent”) is unpatentable. Furthermore, we deny Patent
`Owner’s Motion to Amend, grant in part Petitioner’s Motion to Exclude, and grant
`Patent Owner’s Motions to Seal.
`
`A. Procedural History
`
`CaptionCall, L.L.C., and Sorenson Communications, Inc. (collectively,
`
`“Petitioner”) filed a Petition to institute an inter partes review (Paper 1, “Pet.”) of
`claims 1–30 of the ’838 patent. Pet. 1. Ultratec, Inc. (“Patent Owner”) filed a
`Preliminary Response. Paper 6 (“Prelim. Resp.”). We instituted an inter partes
`review of all challenged claims. Paper 8 (“Dec. on Inst.”). Patent Owner then
`filed its Response to the Petition (Paper 15, “PO Resp.”), to which Petitioner filed
`its Reply (Paper 23, “Pet. Reply”). An oral hearing was held on July 14, 2015.
`Paper 90 (“Tr.”).
`This Decision also addresses several outstanding motions. Patent Owner
`filed a Contingent Motion to Amend (Paper 16, “Mot. Amend”), to which
`Petitioner filed an Opposition (Paper 24, “Opp. Mot. Amend”) and Patent Owner
`filed a Reply (Paper 54, “Reply Mot. Amend”). Petitioner filed a Motion to
`Exclude Evidence (Paper 64, “Mot. Exclude”), to which Patent Owner filed an
`
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`IPR2015-00637
`Patent 8,908,838 B2
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`Opposition (Paper 75, “Opp. Mot. Exclude”)1 and Petitioner filed a Reply (Paper
`78, “Reply Mot. Exclude”). Patent Owner filed several unopposed Motions to Seal
`and modifications to the Motions to Seal (Papers 29, 42, 48, 57, 67, 80, and 85).
`Petitioner filed a Motion for Observations (Paper 65), to which Patent Owner filed
`an Opposition (Paper 73). Patent Owner filed a Motion for Observations (Paper
`66), to which Petitioner filed a Reply (Paper 74).2
`
`B. Related Matters
`
`The ’838 patent claims priority to U.S. Patent No. 6,603,835 B2 (Ex. 1003,
`“the ’835 patent”), which was the subject of two inter partes reviews, CaptionCall,
`LLC v. Ultratec, Inc., Case IPR2013-00549 (PTAB) (Final Written Decision issued
`March 3, 2015, finding claims 1–5 and 7 unpatentable; notice of appeal has been
`filed) and CaptionCall, LLC v. Ultratec, Inc., Case IPR2014-00780 (PTAB) (Final
`Written Decision issued December 1, 2015, finding claims 6 and 8 unpatentable;
`notice of appeal has been filed). See Pet. 3; Paper 4.
`The Petition in this case was filed concurrently with another petition
`challenging U.S. Patent No. 8,917,822 B2 (Ex. 1002), which also claims priority to
`the ’835 patent. Pet. 3 (directing our attention to IPR2015-00636). A number of
`other inter partes reviews involving related patents are in various stages of review.
`See Paper 4.
`The parties are involved in a pending lawsuit involving the ’838 patent,
`Ultratec, Inc. v. Sorenson Communications, Inc., No. 14-CV-00847 (W.D. Wis.).
`
`
`1 Patent Owner filed an original opposition as Paper 71, but later filed Paper 75 as
`a corrected opposition.
`2 The contents of the motions for observations have been considered but do not
`require any ruling.
`
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`IPR2015-00637
`Patent 8,908,838 B2
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`Pet. 2; Paper 4. The parties are involved in another lawsuit involving the above-
`mentioned related patents, Ultratec, Inc. v. Sorenson Communications, Inc., Case
`No. 3:13-CV-00346 (W.D. Wis.).
`
`C. The ’838 Patent
`
`The ’838 patent “relates to the general field of telephone communications”
`and, in particular, “relates to systems to assist telephone communications by those
`persons who are deaf, hard of hearing, or otherwise have impaired hearing
`capability.” Ex. 1001, 1:23–27. In traditional telecommunication devices for the
`deaf (TDD, TT, or TTY), a relay provides a service whereby a person serves as a
`human intermediary between the hearing and deaf user, typing the hearing user’s
`spoken words for display at the deaf user’s machine, and speaking the deaf user’s
`typed words for transmission to the hearing user’s telephone. Id. at 1:31–40, 2:1–
`15.
`
`The ’838 patent describes a system with more features than the traditional
`TDD, by extending the TDD device to users who are not deaf but are hard-of-
`hearing, and who may use the relay service to supplement what they hear. Id. at
`2:17–21. This is achieved by providing the hard-of-hearing person with the voice
`of the hearing user as well as a text transcription of the hearing user’s spoken
`words. See id. at Abstract. This is called text-assisted telephone, or captioned
`telephone. Id. at 3:14–17. Another feature claimed in the ’838 patent is directed to
`an “activator” that allows the relay to be dialed in on demand, such that the call
`may begin as a voice-only call, but when a user decides hearing assistance is
`needed, he or she may activate, using the activator, the relay service while the call
`is in progress. Id. at 7:13–20.
`
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`IPR2015-00637
`Patent 8,908,838 B2
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`
`D. Exemplary Claim
`
`Petitioner challenges all claims of the ’838 patent, of which claims 1, 12,
`
`and 19 are independent. Claim 1 is exemplary:
`1. A system for providing text captioned telephony
`services to an assisted user communicating with a
`hearing person, the system comprising:
`a relay;
`an assisted user's captioned device comprising:
`(1) a captioned device processor linkable to first and
`second communication links;
`(2) a visual display linked to the captioned device
`processor;
`(3) a microphone linked to the captioned device processor
`for receiving voice signals from the assisted user using
`the assisted user's captioned device;
`(4) a speaker linked to the captioned device processor for
`broadcasting voice signals received by the captioned
`device to the ear of the assisted user as voice signals
`from the hearing person are received at the captioned
`device;
`(5) an activator linked to the captioned device processor,
`the activator controllable by the assisted user to invoke
`a captioning service;
`the captioned device processor configured to perform the
`steps of:
`(i) establishing-the first communication link between the
`assisted user's captioned device and the hearing person;
`(ii) obtaining voice signals from the assisted user via the
`microphone;
`(iii) transmitting the assisted user's voice signals from the
`captioned device to the hearing person via the first
`communication link;
`(iv) receiving voice signals from the hearing person via the
`first communication link;
`(v) broadcasting the voice signals from the hearing person
`via the speaker to the assisted user as the voice signals
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`IPR2015-00637
`Patent 8,908,838 B2
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`
`from the hearing person are received at the captioned
`device;
`(vi) receiving a signal from the activator to invoke the
`captioning service;
`(vii) in response to receiving a signal from the activator:
`(a) transmitting the hearing person's voice signals received
`at the captioned device to the relay via the second
`communication link;
`(b) receiving text corresponding to the hearing person's
`voice signals
`from
`the
`relay via
`the second
`communication link; and
`(c) displaying the text received from the relay via the
`visual display for the assisted user to view;
`wherein the activator is activatable to establish the second
`communication link and invoke the captioning service
`subsequent to broadcasting at least some voice signals
`from the hearing person to the assisted user while a
`voice call between the assisted user and the hearing
`person is progressing; and
`wherein the activator is further activatable to establish the
`second communication link and invoke the captioning
`service prior to broadcasting any of the hearing
`person's voice signals to the assisted user.
`
`
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`IPR2015-00637
`Patent 8,908,838 B2
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`
`E. Prior Art & Instituted Grounds
`
`We instituted inter partes review on the following grounds of
`unpatentability under 35 U.S.C. § 103:
`References
`Liebermann,3 Engelke ’405,4
`and Mukherji5
`
`Claims Challenged
`1–9, 11–17, 19–25,
`and 27–29
`
`Liebermann, Engelke ’405,
`Mukherji, and Engelke ’4826
`
`10, 18, 26, and 30
`
`Dec. on Inst. 23–24.
`
`II. ANALYSIS
`
`We first address Petitioner’s Motion to Exclude. We then turn to the
`motions to seal, the claim constructions relevant to this proceeding, the relevant
`prior art, the asserted grounds of unpatentability, and finally to Patent Owner’s
`Contingent Motion to Amend.
`
`A. Petitioner’s Motion to Exclude
`
`Petitioner filed a Motion to Exclude (Paper 64) portions of the declaration of
`Mr. Zatkovich (Ex. 2094), the entirety of the declarations of Ms. Kretschman (Exs.
`2016 and 2096), as well as Exhibits 2045, 2046, 2048, and 2062. Mot. Excl. 1.
`
`
`3 U.S. Patent No. 5,982,853, issued Nov. 9, 1999 (Ex. 1006).
`4 U.S. Patent No. 5,724,405, issued Mar. 3, 1998 (Ex. 1005).
`5 U.S. Patent No. 7,117,152 B1, filed June 30, 2000, issued Oct. 3, 2006 (Ex.
`1007).
`6 U.S. Patent No. 5,909,482, issued June 1, 1999 (Ex. 1004).
`
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`IPR2015-00637
`Patent 8,908,838 B2
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`
`1. Certain Testimony of Mr. Zatkovich (Ex. 2094)
`
`As to the portions of Mr. Zatkovich’s testimony, Petitioner alleges that his
`testimony regarding “substantially simultaneously,” found in proposed substitute
`claims 33 and 35, should be excluded because it is allegedly beyond the scope of
`his expertise. Mot. Excl. 4–7. Petitioner explains that, during cross examination,
`Mr. Zatkovich characterized himself as “an expert in the use of speech recognition
`for things like call centers,” but that he would not be “a person of ordinary skill in
`the art that would know the expected rate of speaker-dependent voice recognition
`at the time of the invention.” Id. at 6 (quoting Ex. 1043, 171:15–172:4). Patent
`Owner counters that it is not improper for us to consider testimony from persons
`who are not exactly persons of ordinary skill in the art. Opp. Mot. Excl. 3–5.7
`Indeed, the relevant inquiry as to when we can consider testimony is whether
`the declarant is qualified in the pertinent art. Sundance, Inc. v. DeMonte
`Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008) (holding that testimony
`on the issue of unpatentability proffered by a witness who is not “qualified in the
`pertinent art” generally is not admissible under FRE 702). In determining who is
`“qualified in the pertinent art” under Federal Rule of Evidence (“FRE”) 702, we
`need not find a complete overlap between the witness’s technical qualifications and
`the problem confronting the inventor or the field of endeavor for a witness to
`qualify as an expert. SEB S.A. v. Montgomery Ward & Co., Inc., 594 F.3d 1360,
`
`
`7 Patent Owner cites our prior decision making a similar ruling in CaptionCall,
`LLC v. Ultratec, Inc., IPR2013-00549, 2015 WL 1263006 *6 (PTAB March 3,
`2015). Patent Owner, however, mischaracterizes our ruling in that case, where we
`held that Mr. Occhiogrosso was qualified to testify as to the level of ordinary skill
`in the art. 2015 WL 1263006, at *6 (“we find Mr. Occhiogrosso to be qualified to
`testify as to the level of ordinary skill in the art”).
`
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`Patent 8,908,838 B2
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`1372–73 (Fed. Cir. 2010) (upholding admission of the testimony of an expert who
`admittedly lacked expertise in the design of the patented invention, but had
`experience with materials selected for use in the invention); Mytee Prods., Inc. v.
`Harris Research, Inc., 439 Fed. App’x 882, 886–87 (Fed. Cir. 2011) (non-
`precedential) (upholding admission of the testimony of an expert who “had
`experience relevant to the field of the invention,” despite admission that he was not
`a person of ordinary skill in the art). This is appropriate because a person of
`ordinary skill in the art is a fictional construct that, for example, is aware of all
`prior art in existence. Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807
`F.2d 955, 962 (Fed. Cir. 1986) (“The person of ordinary skill in the art is a
`hypothetical person who is presumed to know the pertinent prior art.”); Kimberly-
`Clark Corp. v. Johnson & Johnson, 745 F.2d 1437 (Fed. Cir. 1984) (stating that
`“[r]eal inventors, as a class, vary in their capacities from ignorant geniuses to
`Nobel laureates; the courts have always applied a standard based on an imaginary
`worker of their own devising”); see also id. at 1449–54 (providing a
`comprehensive discourse on the evolution of the person of ordinary skill body of
`law). Thus, experts and witnesses offer approximations of this fictional construct
`and need not perfectly align with it.
`In this spirit, we deny Petitioner’s motion to exclude portions of the
`testimony of Mr. Zatkovich. Mr. Zatkovich has experience in telecommunications
`and text-to-speech, which constitute pertinent technological knowledge for
`purposes of this proceeding. See, e.g., Ex. 2013 ¶ 3. To the extent we consider his
`testimony regarding “substantially simultaneous,” we will take into account his
`statements regarding his skills, and weigh his testimony accordingly.8
`
`8 The parties also discuss a timeliness aspect of Petitioner’s objection to Mr.
`Zatkovich’s testimony. See PO Opp. Mot. Excl. 1–3; Reply Mot. Excl. 1–2.
`
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`IPR2015-00637
`Patent 8,908,838 B2
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`
`2. Testimony of Ms. Kretschman (Exs. 2016, 2096)
`
`Petitioner asserts that Ms. Kretschman provided expert testimony (Ex. 2016)
`but that Patent Owner did not provide evidence supporting her purported expertise
`in the field. Mot. Excl. 7–8. Petitioner timely objected (Paper 18, 2) and Patent
`Owner timely served supplemental evidence (see Paper 19; Ex. 2113; Ex. 2063).
`Patent Owner sought authorization in a conference call to supplement Ms.
`Kretschman’s declaration to overcome Petitioner’s objection. Ex. 2064 (transcript
`of the call). We denied authorization to file a motion for a supplemental
`declaration and instead instructed the parties to follow the motion to exclude
`practice in Rule 42.64(c). Paper 19, 2–3. Patent Owner then filed a second
`declaration of Ms. Kretschman (Ex. 2096) with its Response. Petitioner objected
`again. Paper 59. The parties dispute whether the proper procedures for
`supplemental evidence were followed. See Mot. Excl. 7–9; Opp. Mot. Excl. 6–8;
`Reply Mot. Excl. 2–3. We see little benefit in sorting through the extensive
`procedural dispute. In the end, Patent Owner submitted to Petitioner its
`supplemental evidence in an attempt to overcome the objection, and Petitioner has
`maintained the objection. Accordingly, we proceed to the merits.
`Patent Owner is holding Ms. Kretschman out as an expert in how CapTel
`operates. See Opp. Mot. Excl. 9. She is an employee at CapTel, and has
`experience as a call assistant and as the training and quality manager overseeing
`the training and evaluation of the call assistants. Id. (citing Ex. 2016 ¶ 1). Her
`testimony is not cited in Patent Owner’s papers, and is only cited by another of
`
`
`Arguments not to consider papers because they are filed past a deadline should be
`made near the deadline that was missed. Because Patent Owner did not raise this
`issue timely, our ability to address and remedy the alleged defect is constrained.
`Accordingly, we deem Petitioner’s objections here to be timely filed.
`
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`Patent 8,908,838 B2
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`Patent Owner’s declarants, Mr. Ludwick, in connection with his opinions on nexus
`between Patent Owner’s secondary considerations evidence and the claimed
`invention. Opp. Mot. Excl. 11. We find Ms. Kretschman sufficiently qualified as
`to the features of CapTel, and deny Petitioner’s motion to exclude her testimony.
`As Patent Owner acknowledges, to the extent she offers testimony outside her area
`of expertise, we have “broad discretion to accord those particular statements less
`weight.” Id. at 11–12 (citing Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010)
`(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.”)).
`
`3. Trial Transcripts (Exs. 2045, 2046, 2048, 2062)
`
`Petitioner argues that Exhibits 2045, 2046, 2048, and 2062, which are
`transcripts of district court deposition testimony and trial testimony from current
`and former employees of Petitioner, are inadmissible hearsay. Mot. Excl. 12–13.
`Patent Owner responds that Exhibits 2045, 2046, and 2062 are not hearsay under
`FRE 801(d)(2) because they are statements of the opposing party (the testimony
`being given by current employees of Petitioner).9 Mot. Excl. 13. As to Exhibit
`
`9 FRE 801(d)(2) reads:
`An Opposing Party’s Statement. The statement is offered against an opposing party
`and: (A) was made by the party in an individual or representative capacity; (B) is
`one the party manifested that it adopted or believed to be true; (C) was made by a
`person whom the party authorized to make a statement on the subject; (D) was made
`by the party’s agent or employee on a matter within the scope of that relationship
`and while it existed; or (E) was made by the party’s coconspirator during and in
`furtherance of the conspiracy.
`
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`IPR2015-00637
`Patent 8,908,838 B2
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`2048, the testimony of Mr. Puzey, a former employee of Petitioner, Patent Owner
`argues that his testimony is not being offered for the truth of the matter asserted or
`that his testimony is admissible because he is not available as a witness. Id. at 13–
`14. Patent Owner also argues that the residual exception to hearsay is also
`applicable. Id. at 14–15.
`a. Patent Owner’s FRE 801(d)(2) Argument
`Patent Owner offers the testimony with respect to secondary considerations
`of non-obviousness. PO Resp. 43 (citing Ex. 2062 (regarding alleged commercial
`success)), 46 (citing Ex. 2045 (regarding alleged copying)), 48 (citing Ex. 2048
`(regarding alleged industry praise)), 49 (citing Ex. 2046 (regarding alleged
`industry praise)). Reviewing these passages, we are not persuaded that the exhibits
`fall under FRE 801(d)(2) because the testimony does not contain the admissions
`Patent Owner alleges were made.
`Patent Owner cites Exhibit 2045 (testimony of Brian Chevrier, an employee
`of Petitioner), on page 46 of its Response. Patent Owner states:
`Petitioner not only tested CapTel phones and service, but they had a
`third party vendor “tear down” CapTel phones to better observe
`CapTel’s technology. Ex. 2040, ¶ 5, Ex. 2045 at 49:16–50:7.
`PO Resp. 46. At the cited portion of Exhibit 2045, Mr. Chevrier testifies that he
`“heard” that a teardown “has happened.” Ex. 2045, 50:7. This statement is offered
`for the truth of the matter asserted (that a teardown happened) but is not an
`admission against interest about copying, and is itself hearsay. Patent Owner
`makes no specific arguments explaining how Mr. Chevrier’s testimony here falls
`
`
`The statement must be considered but does not by itself establish the declarant’s
`authority under (C); the existence or scope of the relationship under (D); or the
`existence of the conspiracy or participation in it under (E).
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`under FRE 801(d)(2). Therefore, we are not persuaded that this testimony
`qualifies under FRE 801(d)(2) as an opposing party statement.
`Patent Owner cites Exhibit 2046 (testimony of Pat Nola, an employee of
`Petitioner) on page 49 of its Response. Patent Owner states:
`Petitioner’s own internal documents and testimony make clear that
`Petitioners were praising the patented inventions before designing the
`CaptionCall phone and service, recognizing, for example, that revoiced
`captions would “improve” the service and that CapTel set the standard
`they were trying to meet. Ex. 2040 ¶ 7, Ex. 2047 at 3, 6; ¶ 6, Ex. 2046
`at 71:16-72:15.
`PO Resp. 48–49. At the cited portion of Exhibit 2046, Mr. Nola testifies that
`“[t]he first company to do [voice recognition software with a relay] was CapTel.”
`Ex. 2046, 72:15. It is not clear to us how the cited testimony provides support for
`the statement Patent Owner makes that we reproduced above regarding praise.
`Further, it is not clear to us how this is a statement against interest. Patent Owner
`makes no specific arguments explaining how Mr. Nola’s testimony here falls under
`FRE 801(d)(2). Therefore, we are not persuaded that this testimony qualifies
`under FRE 801(d)(2) as an opposing party statement.
`Patent Owner cites Exhibit 2048 (testimony of Robert Puzey, a former
`employee of Petitioner) on page 48 of its Response. Patent Owner states:
`Mr. Puzey admitted that the patented features of voice and revoiced text
`are responsible for “giv[ing] the phone back to folks with hearing loss.”
`Ex. 2040, ¶ 8, Ex. 2048 at 13:04-14:21.
`PO Resp. 48. At the cited portion of Exhibit 2048, Mr. Puzey testifies as follows:
`Q. As it was developed. What [do] you refer to when you think of the
`CaptionCall product?
`A. The CaptionCall product is a solution which provides -- which gives
`the phone back to folks with hearing loss. It allows those with hearing
`loss to -- to be able to use the phone again.
`. . .
`
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`Q. How does the – what’s the solution that allows that?
`A. There are multiple aspects to the solution.
`. . .
`A. Captioning.
`Ex. 2048, 13:4–14:7.
`
`It is not clear to us that there is an admission here, and Patent Owner
`provides no analysis in support of its blanket assertion. Primarily, there is no
`discussion of re-voicing in the cited testimony. See Ex. 2048, 13:4–14:21.
`Therefore, we are not persuaded that this testimony qualifies under FRE 801(d)(2)
`as an opposing party statement.
`Patent Owner cites Exhibit 2062 (further testimony of Mr. Nola) on page 43
`of its Response. Patent Owner states:
`Even Petitioner’s President and CEO admitted that commercial success
`of captioned telephones was attributable to Patent Owner’s claimed
`inventions; specifically, delivery of captions and voice using voice
`recognition software and two-line captioned telephone service. Ex.
`2040 (Hilley Decl.), ¶ 21, Ex. 2062 at 106:23–116:6.
`PO Resp. 34. At the cited portion of Exhibit 2062, Mr. Nola fields many questions
`regarding the features of Petitioner’s product, and questions asking Mr. Nola to
`guess as to whether various features were important to Petitioner’s customers. See
`Ex. 2062, 106:23–116:6. The only discussion regarding Patent Owner in the cited
`portion is:
`Q. All right. And you knew that Ultratec was already in the captioning
`market?
`A. Yes.
`Id. at 116:4–6. Again, it is not clear to us how this statement is an admission
`regarding commercial success, and Patent Owner provides no analysis in support
`
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`of its assertion. Therefore, we are not persuaded that this testimony qualifies under
`FRE 801(d)(2) as an opposing party statement.
`b. Patent Owner’s Non-Hearsay Argument
`Patent Owner also argues that Mr. Puzey’s testimony in Exhibit 2048 is not
`offered for the truth of the matter asserted. Opp. Mot. Excl. 14–15. As we stated
`above, Mr. Puzey’s testimony is that CaptionCall (Petitioner’s product) “gives the
`phone back to folks with hearing loss” by using, among other features, captioning.
`Ex. 2048, 13:4–14:7. Patent Owner argues:
`Patent Owner has not offered the evidence for the truth of that
`statement. See Patent Owner Opp. (Paper 15) at 2, 45-60. Mr. Puzey’s
`testimony is offered as evidence of a long-felt need for close to real-
`time captioning, which would be met by the invention, not CaptionCall,
`Patent Owner’s competitor.
`Opp. Mot. Excl. 14.
`
`Patent Owner is offering the testimony of Mr. Puzey to show that he
`“admitted that the patented features of voice and revoiced text are responsible for
`‘giv[ing] the phone back to folks with hearing loss.’” PO Resp. 48 (emphasis
`added). Thus, Patent Owner is offering the statement for the truth that voice and
`re-voiced text gives the phone back to folks with hearing loss. Patent Owner’s
`argument that Mr. Puzey was discussing the existence of features in his company’s
`product rather than features in Patent Owner’s product does not change that his
`statement is offered as proof regarding an alleged long-felt need for the features.
`Accordingly, his testimony is hearsay.
`c. Patent Owner’s FRE 804(b)(1) Argument
`Patent Owner alleges that “Mr. Puzey is unavailable as a witness in this
`
`proceeding” and argues his testimony is admissible under FRE 804(b)(1). Opp.
`Mot. Excl. 14. Patent Owner’s evidence that Mr. Puzey is unavailable in this
`
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`Patent 8,908,838 B2
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`proceeding is his motion to quash a subpoena in co-pending district court litigation
`(Ex. 2114). Patent Owner brings to our attention no attempt to bring Mr. Puzey
`forward as a witness in this proceeding. Accordingly, we do not find that he is
`unavailable in this proceeding, and FRE 804(b)(1) does not apply to Exhibit 2048.
`d. Patent Owner’s Residual Exception Argument
`Patent Owner lastly argues that the exhibits are admissible under the residual
`exception of FRE 807. The residual exception is to be “reserved for exceptional
`cases”10 and requires four elements:
`(1)
`the statement has equivalent circumstantial guarantees of
`trustworthiness;
`(2) it is offered as evidence of a material fact;
`(3) it is more probative on the point for which it is offered than any
`other evidence that the proponent can obtain through reasonable efforts;
`and
`(4) admitting it will best serve the purposes of these rules and the
`interests of justice.
`FRE 807.
`Patent Owner’s analysis (Opp. Mot. Excl. 14–15) alleges that the testimony
`is “offered regarding highly material facts relating to secondary considerations and
`is more probative on the point than any other evidence reasonabl[y] available to
`Patent Owner.” Id. at 15. As should be clear from our analysis above of why the
`testimony in the exhibits are not admissions, however, the testimony generally is
`not useful in showing the various things for which Patent Owner offers it. As we
`will discuss below in our analysis of Patent Owner’s evidence of secondary
`considerations of non-obviousness (Section II.I), Patent Owner has offered much
`more probative evidence in the form of declarations, fund reports, internal
`
`10 Conoco v. Dep’t of Energy, 99 F.3d 387, 392 (Fed. Cir. 1996).
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`IPR2015-00637
`Patent 8,908,838 B2
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`documents from Petitioner, and the like, that are more probative on the point of
`secondary considerations than these out-of-court statements. See United States v.
`Ismoila, 100 F.3d 380, 393 (5th Cir. 1996) (requiring exceptions under the residual
`exception to be “sufficiently material [and] probative”). In addition, we are not
`persuaded why admission would be in the interests of justice—Patent Owner’s
`argument here is simply an allegation that it is in the interests of justice.
`Accordingly, we do not find that Exhibits 2045, 2046, 2048, and 2062 should be
`admitted under the residual exception.
`e. Conclusion Regarding Trial Transcripts
`Exhibits 2045, 2046, 2048, and 2062 are hearsay, and we have not been
`persuaded that they are admissible under any exception. Accordingly, we grant
`Petitioner’s Motion to Exclude them and do not consider them while making our
`Decision.
`
`B. Motions to Seal
`
`Patent Owner filed several unopposed Motions to Seal and modifications to
`the Motions to Seal (Papers 29, 42, 48, 57, 67, 80, and 85). We grant them all.
`The Motion to Seal in Paper 29 addresses Exhibit 2071. A Supplemental
`Motion to Seal was filed (Paper 42) also addresses Exhibit 2071. Patent Owner
`asserts that Exhibit 2071 “contain[s] previously-proposed license terms between
`[the parties] which are of a competitively-sensitive nature.” Paper 29, 3. Patent
`Owner also asserts that Exhibit 2071 is in support of its Motion for Additional
`Discovery, not the case in chief. Id. at 2. Given the nature of the document’s
`contents and its use in this case, we grant Patent Owner’s Motion to Seal Exhibit
`2071.
`
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`The Motion to Seal in Paper 48 addresses Exhibits 2086 and 2091, the
`redacted portions of Patent Owner’s Motion to Dismiss (Paper 46), and the Motion
`to Seal itself. These exhibits and papers are directed to Patent Owner’s Motion to
`Dismiss, not the case in chief. The Motion to Seal in Paper 57 addresses Exhibits
`2107 and 2106. Patent Owner offers these documents, containing Petitioner’s
`financial statements, with respect to its Motion to Dismiss (Paper 46). The Motion
`to Seal in Paper 67 addresses portions of its Reply in Support of the Motion to
`Dismiss (Paper 68), as well as the Motion to Seal itself. The Motion to Seal in
`Paper 80 addresses Exhibit 2121 and the Motion to Seal itself. Exhibit 2121
`contains Patent Owner’s demonstratives on the subject of Patent Owner’s Motion
`to Dismiss. The Modified Motion to Seal in Paper 85 modifies the Motion in
`Paper 80 to refer to Exhibit 2123, Patent Owner’s re-filed demonstratives, which
`include discussion on the subject of Patent Owner’s Motion to Dismiss.
`We denied Patent Owner’s Motion to Dismiss. See Paper 96. Given the
`sensitive nature of the contents of the documents Patent Owner wishes to seal, and
`those documents’ ultimate use in this case (i.e., in a denied motion to dismiss and
`not in the case-in-chief), we grant Patent Owner’s Motion to Seal Exhibits 2086,
`2091, 2107, 2106, 2121, and 2123, the redacted portions of Papers 46 and 68, and
`the entirety of Papers 48, 67, and 80.
`We remind the parties that the documents in a proceeding may be made
`public. 37 C.F.R. § 42.14. The parties may move to expunge confidential
`information from the record after final judgment (and appeals, if any). 37 C.F.R.
`§ 42.56.
`
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`C. Claim Construction
`
`We interpret the claims of an unexpired patent using the broadest reasonable
`interpretation in light of the specification of the patent. 37 C.F.R. § 42.100(b);
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the
`use of the broadest reasonable interpretation standard in inter partes
`reviews). Under the broadest reasonable interpretation standard, claim terms are
`generally given their ordinary and customary meaning, as would be understood by
`one of ordinary skill in the art in the context of the entire disclosure. In re
`Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special
`definition for a claim term must be set forth with reasonable clarity, deliberateness,
`and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
`1. Terms Construed in Prior Proceedings
`
`Petitioner suggests that the terms “assisted user” and “hearing user,”
`
`construed in the inter partes reviews involving the parent of the ’838 patent,
`should also be applied to