Trials@uspto.gov Paper 75
`571-272-7822 Entered: December 14, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`CAPTIONCALL, L.L.C.,
`Petitioner,
`
`v.
`
`ULTRATEC, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01355
`Patent 5,974,116
`____________
`
`
`
`
`
`
`
`
`Before WILLIAM V. SAINDON, BARBARA A. BENOIT, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`
`BENOIT, Administrative Patent Judge.
`
`
`
`DECISION
`Final Written Decision
`37 C.F.R. § 42.73
`
`
`571-272-7822 Entered: December 14, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`CAPTIONCALL, L.L.C.,
`Petitioner,
`
`v.
`
`ULTRATEC, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01355
`Patent 5,974,116
`____________
`
`
`
`
`
`
`
`
`Before WILLIAM V. SAINDON, BARBARA A. BENOIT, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`
`BENOIT, Administrative Patent Judge.
`
`
`
`DECISION
`Final Written Decision
`37 C.F.R. § 42.73
`
`
`
`IPR2015-01355
`Patent 5,974,116
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`
`I. INTRODUCTION
`
`This inter partes review, instituted pursuant to 35 U.S.C. § 314,
`
`challenges the patentability of certain claims of U.S. Patent No. 5,974,116
`
`(Ex. 1001, “the ’116 patent” or “the challenged patent”), owned by
`
`Ultratec, Inc. (“Patent Owner”). We have jurisdiction under 35 U.S.C. § 6.
`
`This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a) and 37
`
`C.F.R. § 42.73.
`
`For the reasons discussed below, Petitioner has shown by a
`
`preponderance of the evidence that claims 1–13, 15, and 18 (“the challenged
`
`claims”) of the ’116 patent are unpatentable. Furthermore, we deny Patent
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`Owner’s Motion to Exclude and grant Patent Owner’s Motions to Seal.
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`A. Procedural History
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`CaptionCall, L.L.C. (“Petitioner”) filed a Petition for inter partes
`
`review of claims 1–18 of the ’116 patent. Paper 1 (“Pet.”). Patent Owner
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`filed a Preliminary Response. Paper 8 (“Prelim. Resp.”). We instituted an
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`inter partes review of claims 1–13, 15, and 18 of the ’116 patent as
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`unpatentable under 35 U.S.C. § 103(a)1 over the following references.
`
`Paper 9 (“Institution Decision” or “Dec.”).
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`
`
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), revised 35 U.S.C. §§ 102 and 103, effective March
`16, 2013. Because the challenged patent was filed before March 16, 2013,
`we refer to the pre-AIA version of §§ 102 and 103 in this decision.
`2
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`IPR2015-01355
`Patent 5,974,116
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`
`References
`Liebermann2 and Aronow3
`Liebermann, Aronow, and O’Toole4
`Liebermann, Aronow, and McLaughlin5
`
`Claims Challenged
`1–3, 5, 9, 10, and 18
`4, 6, 11–13, and 15
`7 and 8
`
`Id. at 33.
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`Subsequent to institution, Patent Owner filed a Patent Owner
`
`Response to the Petition (Paper 46, “PO Resp.”), to which Petitioner filed a
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`Reply (Paper 56, “Pet. Reply”). Patent Owner also filed a Motion to
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`Exclude (Paper 63, “Mot. Exc.”) certain exhibits, to which Petitioner filed an
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`Opposition (Paper 68, “Opp. Exc.”). In turn, Patent Owner filed a Reply
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`(Paper 70, “Reply Exc.”). Patent Owner further filed observations on
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`deposition testimony of Mr. Benedict J. Occhiogrosso (Paper 64), to which
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`Petitioner filed a Response (Paper 67).
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`No oral argument was held, at the request of the parties. Paper 74.
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`B. Related Matters
`
`The Petition was filed concurrently with three other petitions
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`challenging patents owned by Patent Owner: IPR2015-01357 (U.S. Patent
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`6,934,366), IPR2015-01358 (U.S. Patent 7,006,604), and IPR2015-01359
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`(U.S. Patent 6,493,426). Pet. 4. These patents are related to a number of
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`Patent Owner’s patents upon which Petitioner also has filed a petition,
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`
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`2 U.S. Patent No. 5,982,853, issued Nov. 9, 1999 (Ex. 1002, “Liebermann”).
`3 U.S. Patent No. 5,521,960, issued May 28, 1996 (Ex. 1003, “Aronow”).
`4 U.S. Patent No. 5,889,856, issued Mar. 30, 1999 (Ex. 1004, “O’Toole”).
`5 U.S. Patent No. 6,181,736 B1, filed Mar. 18, 1998, issued Jan. 30, 2001
`(Ex. 1005, “McLaughlin”).
`
`3
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`IPR2015-01355
`Patent 5,974,116
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`including IPR2013-00540–545, 549, 550, IPR2014-00780, and IPR2015-
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`00636 and 637. Id.; Paper 6. We have issued Final Written Decisions in
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`each of those cases.
`
`The parties are involved in several lawsuits involving patents covering
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`related subject matter: Ultratec, Inc. v. Sorenson Communications, Inc.,
`
`No. 13-CV-00346 (W.D. Wis.), Ultratec, Inc. v. Sorenson Communications,
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`Inc., No. 14-CV-00066 (W.D. Wis.), and Ultratec, Inc. v. Sorenson
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`Communications, Inc., No. 14-CV-00847 (W.D. Wis.). Pet. 3; Paper 6.
`
`C. The ’116 Patent
`
`The challenged patent relates to ways to assist communications
`
`between hearing impaired individuals and normally hearing individuals.
`
`Ex. 1001, 1:13–18. Conventional assistance uses a device having a
`
`keyboard and display, which may be called a text telephone (TT), a teletype
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`(TTY), or a telecommunication device for the deaf (TDD). Id. at 1:29–39.
`
`A human intermediary facilitates communication between a hearing user and
`
`a hearing impaired user by communicating by voice with the hearing user
`
`and using a TDD to communicate with the hearing impaired user. Id. at
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`1:66–2:4. The system of voice-to-TDD communication used by the human
`
`intermediary (called an operator or call assistant) is referred to as a relay. Id.
`
`The challenged patent describes a small, hand-held or portable device,
`
`with a microphone, a keyboard, and a display, that a hearing impaired person
`
`can carry and use to facilitate a conversation between himself or herself and
`
`a person with normal hearing. Id. at 3:31–60. The challenged patent
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`explains that “the current state of the art in electronic miniaturization and
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`voice recognition does not yet permit the design of a totally integrated and
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`self-sufficient portable interpreter” that others have “predicted . . . might be
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`available someday.” Id. at 3:37–39.
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`According to the challenged patent, “the key to making this truly
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`portable device available with current technology is to base the operation of
`
`this device on the presently available relay system to provide the actual
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`voice to text conversion” of the hearing person’s voice. Id. at 3:42–45. The
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`challenged patent terms such as a device “a personal interpreter” and further
`
`describes that it uses “a telephone function” to communicate with the relay.
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`Id. at 3:34–37, 3:45; see id. at Abstract (“By using a wireless telephone
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`connection, the device is made portable.”). “By using the relay system, the
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`personal interpreter can provide effective and accurate voice to text
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`interpretation for the deaf user with, to all outward appearances, a totally
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`portable and small device.” Id. at 3:45–48.
`
`Figure 1 of the challenged patent, set forth below, shows an
`
`illustration of “a personal interpreter constructed in accordance with the
`
`present invention.” Id. at 3:21–22.
`
`Personal interpreter 10 shown in Figure 1 is described as “a small, self-
`
`contained, portable hand held device typically the size of a hardbound
`
`book,” having a “keyboard of minimal size but useable by a deaf person”
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`and “preferably hav[ing] a two to four line display.” Id. at 3:52–58. The
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`personal interpreter “would also typically have a key or switch which would
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`initiate its operation.” Id. at 3:59–60.
`
`In general, when in proximity to a normally hearing person, a hearing
`
`impaired person uses the device to translate words spoken by the normally
`
`hearing person into text displayed on the device for the hearing impaired
`
`person to read. Id. at 6:19–22. Words spoken by a normally hearing person
`
`are picked up by a microphone of the device. Id. at 6:24–26. The device
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`transmits the words through a telephone connection to a relay, which
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`transmits back to the device a digital stream of the words spoken by the
`
`normally hearing person. Id. at 6:26–33. The device then presents the
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`words on a display screen for the hearing impaired person to read. Id. at
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`6:33–37.
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`To use the device to communicate to a normally hearing person, the
`
`hearing impaired person uses the device’s keyboard to type words, which
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`then are sent to the relay. Id. at 6:40–42. A call assistant at the relay reads
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`the words typed by the hearing impaired person and speaks those same
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`words, which are transmitted in voice over a telephone connection to the
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`device. Id. at 6:42–45. The device, which is equipped with a speaker,
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`broadcasts the words as a voice communication understandable to the
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`normally hearing person. Id. at 6:45–48.
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`The challenged patent also describes an implementation of a relay that
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`is equipped with voice recognition software. Id. at 7:31–59, 8:55–61. In
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`such an implementation, a call assistant at the relay hears the words spoken
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`by the normally hearing person and then repeats (or “re-voices”) the
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`normally hearing person’s words into a microphone at the relay. Id. at 8:55–
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`57. A computer having voice recognition software at the relay translates the
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`call assistant’s speech into a digital text stream, which is sent to the device
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`for display to the hearing impaired person. Id. at 8:57–64. The challenged
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`patent indicates that the delay between the time the normally hearing person
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`speaks into the microphone of the device and the time the words appear on
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`the display of the device is “a modest number of seconds,” which the
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`challenged patent characterizes as “receiving near to real time or
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`simultaneous voice to text translation or captioning.” Id. at 8:64–9:3.
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`D. Illustrative Claim
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`Of the challenged claims in the ’116 patent, claims 1, 9, 12, and 18 are
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`independent. Claim 1 is illustrative of the claimed subject matter.
`
`1. A digital electronic personal interpreter device adapted to
`use a telephone relay service, the digital electronic personal
`interpreter device comprising:
`
`a microphone allowing the reception of a voice of a person
`speaking to a user of the digital electronic personal
`interpreter device;
`
`[a] microprocessor;
`
`a modem;
`
`a visual display readable by the user of the digital electronic
`personal interpreter device; and
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`a telephone connection which can connect to the relay;
`
`the microphone connected so that the voice picked up is
`transmitted to the relay;
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`the modem connected to receive digital text communications
`representing a transcription of the voice from the relay over
`the telephone connection and to transmit that text to the
`microprocessor; and
`
`the microprocessor connected to display the words of the text
`communications received through the modem on the
`display.
`
`Ex. 1001, 10:21–41.
`
`II. DISCUSSION
`
`A. Principles of Law
`
`To prevail in challenging Patent Owner’s claims, Petitioner must
`
`demonstrate by a preponderance of the evidence that the claims are
`
`unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). “In an [inter partes
`
`review], the petitioner has the burden from the onset to show with
`
`particularity why the patent it challenges is unpatentable.” Harmonic Inc. v.
`
`Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C.
`
`§ 312(a)(3) (requiring inter partes review petitions to identify “with
`
`particularity . . . the evidence that supports the grounds for the challenge to
`
`each claim”)). This burden never shifts to Patent Owner. See Dynamic
`
`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed.
`
`Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316,
`
`1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes
`
`review). Furthermore, Petitioner cannot satisfy its burden of proving
`
`obviousness by employing “mere conclusory statements.” In re Magnum
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`Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
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`Petitioner has asserted each of the claims in the ’061 patent is
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`unpatentable under 35 U.S.C. § 103(a) over various references. A claim is
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`unpatentable under 35 U.S.C. § 103(a) if the differences between the
`
`claimed subject matter and the prior art are such that the subject matter, as a
`
`whole, would have been obvious at the time of the invention to a person
`
`having ordinary skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
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`406 (2007). The question of obviousness is resolved on the basis of
`
`underlying factual determinations including: (1) the scope and content of
`
`the prior art; (2) any differences between the claimed subject matter and the
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`prior art; (3) the level of ordinary skill in the art; and (4) objective evidence
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`of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
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`“A determination of whether a patent claim is invalid as obvious under § 103
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`requires consideration of all four Graham factors, and it is error to reach a
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`conclusion of obviousness until all those factors are considered.” Apple v.
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`Samsung Elecs. Co., 839 F.3d 1034, 1048 (Fed. Cir. 2016) (en banc)
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`(citations omitted). “This requirement is in recognition of the fact that each
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`of the Graham factors helps inform the ultimate obviousness determination.”
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`Id.
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`B. Level of Ordinary Skill
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`In determining whether an invention would have been obvious at the
`
`time it was made, 35 U.S.C. § 103 requires us to resolve the level of
`
`ordinary skill in the pertinent art at the time of the invention. Graham, 383
`
`U.S. at 17. “The importance of resolving the level of ordinary skill in the art
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`lies in the necessity of maintaining objectivity in the obviousness inquiry.”
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`Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). The
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`person of ordinary skill in the art is a hypothetical person who is presumed
`
`to have known the relevant art at the time of the invention. In re GPAC,
`
`Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). The level of ordinary skill in the
`
`art is reflected by the prior art of record. Okajima v. Bourdeau,
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`261 F.3d 1350, 1355 (Fed. Cir. 2001). Factors that may be considered in
`
`determining the level of ordinary skill in the art include, but are not limited
`
`to, the types of problems encountered in the art, the sophistication of the
`
`technology, and educational level of active workers in the field. Id. In a
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`given case, one or more factors may predominate. Id. Generally, it is easier
`
`to establish obviousness under a higher level of ordinary skill in the art.
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`Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir.
`
`2011) (“A less sophisticated level of skill generally favors a determination of
`
`nonobviousness . . . while a higher level of skill favors the reverse.”).
`
`Petitioner’s declarant Mr. Occhiogrosso concludes that one of
`
`ordinary skill in the art “would have been a person with a bachelor’s degree
`
`in electrical engineering (or electrical and computer engineering) and a few
`
`years of experience with telephone communication system architecture,
`
`design and implementation, digitization of voice, speech recognition
`
`technology, and/or traditional relay systems.” Ex. 1008 ¶ 27. Mr.
`
`Occhiogrosso also offers that “someone with less technical education but
`
`more experience, or more technical education but less experience would
`
`have also met this standard.” Id. Mr. Occhiogrosso enumerates several
`
`factors which he considered in determining the characteristics of a
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`hypothetical person of ordinary skill in the art of the ’116 patent as of
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`July 2, 1998. Id. at ¶ 26. Among the factors, Mr. Occhiogrosso identifies
`
`“various approaches to designing and implementing telephone
`
`communication systems in the prior art, the type of problems encountered,
`
`and the rapidity with which innovations were made in this field.” Id.
`
`Patent Owner does not challenge directly Mr. Occhiogrosso’s
`
`testimony. See generally PO Resp. 5. Mr. Ivan Zatkovich, Patent Owner’s
`
`declarant, does not propose a level of ordinary skill in the art to be adopted,
`
`but he does testify that the opinions set forth in his declaration would not
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`change if he “assumed that [one of ordinary skill in the art] had the
`
`qualifications set forth in Mr. Occhiogrosso’s declaration.” Ex. 2098 ¶ 24
`
`(citing Ex. 1008 ¶ 27).
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`Having reviewed the prior art asserted in this proceeding (see, e.g.,
`
`Exs. 1002–1005), we determine that the level of ordinary skill proposed by
`
`Petitioner’s declarant and employed by both declarants is consistent with the
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`challenged patent and the referenced prior art, and we adopt Mr.
`
`Occhiogrosso’s definition of the level of ordinary skill in the art for the
`
`purposes of the analysis below.
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`C. Patent Owner’s Motion to Exclude
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`Patent Owner filed a Motion to Exclude (Paper 63) to exclude all of
`
`the testimony of Petitioner’s declarant, Mr. Occhiogrosso, regarding
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`patentability and the perspectives of those skilled in the art. Mot. Exc. 1–2,
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`6. In its Reply to Petitioner’s Opposition, Patent Owner specified, with
`
`particularity, exhibits to be excluded in their entirety: Mr. Occhiogrosso’s
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`declaration (Ex. 1008) filed in support of the Petition, Mr. Occhiogrosso’s
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`supplemental declaration (Ex. 1043) filed in support of Petitioner’s Reply to
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`Patent Owner’s Response to the Petition, and Mr. Occhiogrosso’s deposition
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`testimony taken in this proceeding (Ex. 2105) and in other proceedings
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`concerning similar subject matter (Exs. 2106, 2107, 2108). Reply Exc. 2.
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`Patent Owner seeks to exclude, under Federal Rule of
`
`Evidence (“FRE”) 702,6 the testimony of Petitioner’s declarant because,
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`according to Patent Owner, Mr. Occhiogrosso is not qualified as an expert
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`on the subject matter of the challenged patent.7,8 Mot. Exc. 1. To testify
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`under FRE 702, one must be qualified as an expert in the “pertinent art” to
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`testify regarding issues calling for consideration of evidence from the
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`perspective of a person of ordinary skill in the art. Sundance, Inc. v.
`
`
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`6 Under 37 C.F.R. § 42.62(a), the Federal Rules of Evidence generally apply
`to this inter partes review.
`7 The parties also discuss whether Patent Owner properly objected to
`Mr. Occhiogrosso’s declaration (Ex. 1008) and Mr. Occhiogrosso’s
`deposition testimony. Opp. Exc. 1, 3–4; Reply Exc. 1–4. Patent Owner
`filed objections to Mr. Occhiogrosso’s declaration (Paper 11 ¶ 2) and
`supplemental declarations (Paper 57 ¶ 1). Patent Owner made a clerical
`error in Paper 11, however, identifying Mr. Occhiogrosso’s declaration as
`Exhibit 1009, instead of Exhibit 1008. The exhibit to which Patent Owner
`objected is clear from the context of the objection, so we do not perceive any
`prejudice to Petitioner. We need not reach the issue of transcripts, however,
`because we deny the Motion on other grounds.
`8 Because we deny the Motion on other grounds we also need not reach the
`issue of whether this Motion should be denied based on Board rulings in
`other proceedings that are on appeal to the Federal Circuit. See Opp. Exc.
`1–3.
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`DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008). This
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`is because issues of unpatentability “are analyzed in great part from the
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`perspective of a person of ordinary skill in the art, and testimony explaining
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`the technical evidence from that perspective may be of great utility to the
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`factfinder.” Id. at 1361.
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`Based on a single sentence with a single citation to the challenged
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`patent, Patent Owner asserts “[a]ccordingly, to be a person of ordinary skill
`
`in the relevant art (POSA) in the context of the [challenged patent] one must
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`know the relevant prior art of telephone technology for the deaf and HOH.”9
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`Mot. Exc. 4 (citing Ex. 1001, 1:14–18). Patent Owner asserts that
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`Mr. Occhiogrosso is not a person of ordinary skill in the art under Patent
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`Owner’s proffered definition and therefore is not qualified to testify as an
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`expert in this proceeding. Id. at 4, 6.
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`Patent Owner, however, expressly states that it applied a definition of
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`a person of ordinary skill in the art as “a person familiar with at least”
`
`telecommunication systems in its Patent Owner Response to the Petition.
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`PO Resp. 5–6 (citing Ex. 2098 ¶ 24). Moreover, Patent Owner’s own
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`declarant, who Patent Owner put forth as qualified to testify under FRE 702
`
`as an expert (Mr. Zatkovich), indicates that the opinions set forth in his
`
`declaration (Ex. 2098) are from the perspective of a person of ordinary skill
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`in the art “defined as a person familiar with telecommunications systems.”
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`Ex. 2098 ¶ 24. Mr. Zatkovich further testified that “[t]he opinions set forth
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`9 HOH is a common abbreviation for “hard of hearing.”
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`in my declaration would not change if I assumed that a POSA had the
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`qualifications set forth in Mr. Occhiogrosso’s declaration.”10 Id.
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`Noticeably lacking in Mr. Zatkovich’s declaration is testimony
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`indicating that his testimony would be the same (or how it would be
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`different) if a person of ordinary skill in the art “must know the relevant
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`prior art of telephone technology for the deaf and HOH,” as Patent Owner
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`contends in its Motion to Exclude. Compare Ex. 2098 ¶ 24, with Mot.
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`Exc. 4. In its Patent Owner Response, Patent Owner omits any express
`
`reference to applying the definition on which it now seeks to exclude
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`Mr. Occhiogrosso’s testimony. Compare PO Resp. 5 –6, with Mot. Exc. 4.
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`Thus, Patent Owner, to exclude Mr. Occhiogrosso’s testimony,
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`advocates in its Motion to Exclude a different definition of a person of
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`ordinary skill in the art than used by its own declarant and in its Patent
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`Owner Response. Thus, granting Patent Owner’s Motion to Exclude
`
`Mr. Occhiogrosso’s testimony would lead to discrediting Patent Owner’s
`
`own declarant’s testimony and Patent Owner’s Response. Patent Owner
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`does not acknowledge this procedural posture in its Motion to Exclude or
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`Reply.
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`Turning to the merits of the Motion to Exclude, we find Patent
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`Owner’s assertion that a person of ordinary skill in the art “must know the
`
`relevant prior art of telephone technology for the deaf and HOH” (Mot. Exc.
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`4) lacks sufficient factual corroboration or explanation. For example, Patent
`
`
`
`10 Mr. Zatkovich is referring to the level of ordinary skill discussed
`previously and which we adopted for this proceeding.
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`Owner does not address the sentence that immediately precedes the single
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`citation in the challenged patent on which Patent Owner relies: “[t]he
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`present invention relates to the general field of telephone communications.”
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`Ex. 1001, 1:13–14. Nor does Patent Owner discuss the level of ordinary
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`skill reflected in the prior art of record or other factors that may be
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`considered, including the types of problems encountered in the art, the
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`sophistication of the technology, and educational level of active workers in
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`the field. Okajima, 261 F.3d at 1355.
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`Even if we were to adopt Patent Owner’s definition of a person of
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`ordinary skill in the art, we find Mr. Occhiogrosso meets Patent Owner’s
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`proffered level of ordinary skill: “must know the relevant prior art of
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`telephone technology for the deaf and HOH” (Mot. Exc. 4).
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`Mr. Occhiogrosso’s experience providing expert testimony in proceedings
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`regarding assistive technologies for the deal or hard of hearing is
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`uncontroverted. See Mot. Exc. 4–5 (identifying three inter partes reviews);
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`Ex. 2105, 5:23–6:10 (deposition on August 9, 2016 indicating
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`Mr. Occhiogrosso has been deposed between twelve and twenty times
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`concerning Patent Owner’s patents). Furthermore, the five prior art
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`references Mr. Occhiogrosso considered for this case (Ex. 1008 ¶ 28) all
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`involve telephone technology for the deaf and HOH and support his
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`qualification under the definition of a person of ordinary skill in the art now
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`offers for the first time in its Motion to Exclude (and after it relied on the
`
`testimony of its declarant as to a different level).
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`15
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`Moreover, the qualifications of Mr. Occhiogrosso, as summarized in
`
`his curriculum vitae (Ex. 1009), qualify him to give expert testimony on the
`
`subject of telecommunication technologies. For example, Mr. Occhiogrosso
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`earned a Bachelor of Science in Electrical Engineering and a Master of
`
`Science in Electrical Engineering in 1975 and has decades of experience in
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`the field of telecommunications and information technology. Ex. 1009, 1–2.
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`His experience includes cellular telephony, wireless communications
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`systems, packet speech/Voice over Internet Protocol, telephone switching
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`systems, voice digitization/voice processing, automated out dialing systems,
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`and video digitization. Id. at 1.
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`His extensive telecommunication experience and academic degrees
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`further support a finding that he qualifies as an expert, even if a person of
`
`ordinary skill in the art would need to know the relevant prior art of
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`telephone technology for the deaf and HOH, as Patent Owner proffered in its
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`Motion to Exclude.
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`Furthermore, we disagree with Patent Owner’s arguments purportedly
`
`regarding why Mr. Occhiogrosso would not qualify as an expert: “no
`
`experience with TRS systems for the deaf and HOH; . . . never designed a
`
`TRS system for impaired users, has never analyzed a TRS system; has never
`
`used a TDD device . . . and ha[s] never visited a TRS relay center.” Mot.
`
`Exc. 5. We find Patent Owner’s arguments to be unduly narrow in view of
`
`its proffered definition: one must know the relevant prior art of telephone
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`technology for the deaf and HOH. Direct hands-on experience or work
`
`experience in TRS systems is not required for knowing the relevant prior art
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`16
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`of telephone technology for the deaf and HOH.
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`For these reasons, we deny Patent Owner’s Motion to Exclude
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`Mr. Occhiogrosso’s testimony under FRE 702.
`
`D. Claim Construction
`
`In an inter partes review, the Board interprets claims in an unexpired
`
`patent using the “broadest reasonable construction in light of the
`
`specification of the patent in which [they] appear[].” 37 C.F.R. § 42.100(b);
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`see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016)
`
`(upholding the use of broadest reasonable construction standard). Consistent
`
`with the broadest reasonable construction standard, claim terms are
`
`presumed to have their ordinary and customary meaning as understood by
`
`one of ordinary skill in the art in the context of the entire patent disclosure at
`
`the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257
`
`(Fed. Cir. 2007). An inventor may provide a meaning for a term that is
`
`different from its ordinary meaning by defining the term in the specification
`
`with “reasonable clarity, deliberateness, and precision.” In re Paulsen,
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`30 F.3d 1475, 1480 (Fed. Cir. 1994). Moreover, limitations are not to be
`
`read from the specification into the claims. In re Van Geuns, 988 F.2d 1181,
`
`1184 (Fed. Cir. 1993). In addition, the Board may not “construe claims
`
`during [an inter partes review] so broadly that its constructions are
`
`unreasonable under general claim construction principles.” Microsoft Corp.
`
`v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015).
`
`We construe the challenged claims according to these principles. To
`
`the extent it is necessary for us to expressly construe other claim terms in
`
`17
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`this decision, we do so below in the context of analyzing whether the prior
`
`art renders the claims unpatentable.
`
`E. Asserted Ground of Obviousness over Liebermann and Aronow
`
`Petitioner contends that claims 1–3, 5, 9, 10, and 18 are unpatentable
`
`under 35 U.S.C. § 103 over Liebermann and Aronow. Pet. 13–39.
`
`Petitioner liberally cites to the prior art references and relies on declaration
`
`testimony of Mr. Occhiogrosso. Id. (citing Ex. 1008). Furthermore,
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`Petitioner provides analysis purportedly explaining how the combination
`
`would have conveyed to one of ordinary skill in the art the claim limitations
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`and provides reasons why one of ordinary skill in the art would have
`
`combined the teachings of the references. Id. at 14–18.
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`With support of the declaration of Mr. Zatkovich (Ex. 2098), Patent
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`Owner challenges Petitioner’s contentions, arguing that Petitioner failed to
`
`show several claim limitations and would not have been motivated to
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`combine the references in the manner proposed by Petitioner. PO Resp. 9–
`
`37. In reply, Petitioner maintains its position that the claims would have
`
`been obvious. Pet. Reply 2–18.
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`We have reviewed the Petition, Patent Owner’s Response, and
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`Petitioner’s Reply, as well as the relevant evidence discussed in those
`
`papers. For reasons that follow, we determine that Petitioner has shown by a
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`preponderance of the evidence the subject matter of claims 1–3, 5, 9, 10, and
`
`18 would have been obvious.
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`18
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`1. Summary of Prior Art References
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`a. Summary of Liebermann
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`Liebermann is a United States patent that describes a device that uses
`
`a central processing facility employing speech recognition algorithms for
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`providing telephone service to a deaf person communicating with a normally
`
`hearing person. Ex. 1002, 1:11–14, 5:14–19, 5:21–23. Although
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`Liebermann’s device enables a deaf person to communicate through the use
`
`of sign language to a normally hearing person, of particular relevance to the
`
`challenged claims are Liebermann’s techniques for how text of the normally
`
`hearing person’s words is displayed to the deaf person and Liebermann’s
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`cellular telephone implementation called a “communicator.” See, e.g., id.
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`at 1:11–15, 5:53–54, 6:29–36, 7:18–43, Figs. 6, 8.
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`In one embodiment, the normally hearing person speaks into a
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`telephone and the deaf person receives a visual display of “a continuous
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`dynamic set of animated sign language motions which portray the content of
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`the spoken language uttered as speech by the normally hearing person.” Id.
`
`at 5:14–34. Liebermann’s telephone service involves a central processing
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`facility (called a “center”) that facilitates the communication between the
`
`deaf person and the normally hearing person. See, e.g., id. at 5:14–25.
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`More specifically, the central processing facility receives the voice of
`
`the normally hearing person from a telephone, employs “speech recognition
`
`algorithms [to] convert spoken word to text,” then converts this “recognized
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`speech” into “its equivalent signing content vocabulary and then into text.”
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`Id. at 5:14–19, 5:21–23. “The text is sent via telephone lines to the device
`
`used by the deaf person and converted to signing animation.” Id. at 5:23–25.
`19
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`The sign images then appear on the screen of the monitor used by the deaf
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`person. Id. at 5:30–31.
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`Liebermann describes various embodiments of an apparatus that
`
`enables an deaf person to communicate through the use of sign language,
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`including “a personal computer and video camera” (shown in Figure 5a), “a
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`television set with a video camera” (shown in Figure 5b), “a public kiosk”
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`(shown in Figure 5c), and “a cellular telephone” (shown in Figure 6). Id. at
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`4:15–22, 5:53–54; see id. at 1:11–15 (describing the invention).
`
`Of particular importance to the challenged claims is an embodiment
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`that directly follows Liebermann’s description of its cellular phone
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`embodiment and describes a phone equipped with a microphone and a
`
`speaker, which “turns” the phone into a “communicator” that can be used by
`
`a deaf person to communicate with a nearby normally hearing person. Id. at
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`7:29–41; see id. at 7:24–25 (indicating the device is a cellular phone).
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`Liebermann explains that “[t]he communicator enables the deaf person to
`
`conduct a ‘conversation’ with any normally hearing person in the close
`
`proximity.” Id. at 7:33–35. The speech of “the normally hearing person” is
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`“picked up by the microphone and sent to the center for processing.” Id. at
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`7:39–41.
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`Figure 8, set forth below, depicts a layout for the visual display of
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`Liebermann’s device.
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`Figure 8 depicts presenting, to the de
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