IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`ULTRATEC, INC.,
`Petitioner
`
`v.
`
`SORENSON IP HOLDINGS,
`Patent Owner
`
`Case IPR: _______
`Patent No. 9,336,689
`
`DECLARATION OF IVAN ZATKOVICH
`
`
`
`
`
`
`
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`TABLE OF CONTENTS
`
`
`1
`INTRODUCTION
`I.
`1
`QUALIFICATIONS
`II.
`6
`III. MATERIALS CONSIDERED
`9
`IV. LEGAL STANDARDS
`12
`V.
`BACKGROUND
`A.
`Technology Background .................................................................. 12
`B.
`Overview of the ‘689 Patent ............................................................. 13
`C.
`Prosecution History of the ‘689 Patent ............................................ 18
`D.
`The ‘801 Patent IPR ......................................................................... 19
`VI. QUALIFICATIONS OF THOSE OF ORDINARY SKILL IN THE ART 19
`VII. CLAIM CONSTRUCTION ISSUES
`21
`VIII. PRIOR ART REFERENCES
`22
`A.
`Engelke 2–Engelke 1 ........................................................................ 22
`1.
`Overview of the Engelke 1 Patent ......................................... 22
`2.
`Overview of the Engelke 2 Patent ......................................... 24
`3.
`Engelke 2–Engelke 1 is analogous art ................................... 28
`Cervantes .......................................................................................... 29
`1.
`Overview of the Cervantes Patent ......................................... 29
`2.
`Cervantes is analogous art ..................................................... 30
`Florida Policy ................................................................................... 33
`1.
`Overview of the Florida Policy publication ........................... 33
`2.
`The Florida Policy is analogous art ....................................... 35
`D. Hutchins ............................................................................................ 36
`1.
`Overview of the Hutchins publication ................................... 36
`2.
`Hutchins is analogous art ....................................................... 37
`IX. THE ‘689 PATENT’S CLAIMS ARE NOT PATENTABLE OVER
`39
`THE PRIOR ART
`A.
`Engelke 2–Engelke 1 and Cervantes ................................................ 39
`
`B.
`
`C.
`
`ii
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`1.
`2.
`
`2.
`
`2.
`
`Reason to combine Engelke 2–Engelke 1 with Cervantes .... 39
`Engelke 2–Engelke 1 and Cervantes disclose Claims 1–
`20 of the ‘689 Patent .............................................................. 41
`Engelke 2–Engelke 1, Cervantes, and the Florida Policy ................ 78
`1.
`Reason to combine Engelke 2–Engelke 1 with Cervantes
`and the Florida Policy ............................................................ 78
`Engelke 2–Engelke 1, Cervantes, and the Florida Policy
`disclose Claim 19 of the ‘689 Patent. .................................... 82
`Engelke 2–Engelke 1, Cervantes, and Hutchins .............................. 83
`1.
`Reason to combine Engelke 2–Engelke 1 with Cervantes
`and Hutchins .......................................................................... 84
`Engelke 2–Engelke 1, Cervantes, and Hutchins disclose
`Claim 19 of the ‘689 Patent ................................................... 85
`CONCLUSION
`86
`
`B.
`
`C.
`
`X.
`
`
`
`
`iii
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`I.
`
`INTRODUCTION
`1. My name is Ivan Zatkovich. I have been retained by counsel as an
`
`expert for Petitioner Ultratec, Inc. (“Ultratec” or “Petitioner”) in an inter partes
`
`review proceeding before the Patent Trial and Appeal Board (the “Board”) of U.S.
`
`Patent No. 9,336,689 (“the ‘689 IPR”).
`
`II. QUALIFICATIONS
`2.
`I received a Bachelor’s degree in Computer Science, with a minor in
`
`Electrical Engineering Digital Circuit Design, from the University of Pittsburgh in
`
`1980. I completed a Master’s thesis in Computer Networks. Byte Magazine
`
`published a portion of the results from my Master’s thesis. My curriculum vitae
`
`(Appendix A to this declaration) includes information regarding my professional
`
`career.
`
`3.
`
`I have over thirty years of experience in telecommunications, Internet,
`
`and communication networks. For at least 12 years, my work focused on technology
`
`related to communications such as: Computer Telephony Integration (CTI), call
`
`routing, call relay speech recognition, text to speech and operator assist speech
`
`recognition, audio source synchronization, telecom systems integration, telecom
`
`billing systems, telephone carrier networks including traditional public switched
`
`telephone networks (PSTN), wireless, text messaging systems (e.g. SMS routing and
`
`delivery), and Voice-over-Internet Protocol (VoIP) methodologies. I also have
`
`1
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`experience with multiparty videoconferencing, conferencing and message protocols,
`
`including H.323 and SIP, and network security services, including firewall and
`
`virtual private networks (VPNs).
`
`4.
`
`Currently, I am the Principal Consultant of eComp Consultants, a
`
`position I have held for over 15 years. eComp Consultants provides professional
`
`consulting in the fields of telecommunications, web publishing, eCommerce,
`
`computer related telephony, and network communications. Such consulting services
`
`include working with clients on specific information technology projects, process
`
`improvement, project management and other technology issues, as well as providing
`
`professional expert witness services.
`
`5.
`
`I have consulted for companies such as Verizon, Deutsche Telekom,
`
`PTT Netherlands, Bell Canada, Qwest Communications, McGraw-Hill, Apple, and
`
`Facebook. For these companies I provided consultation on Telecommunications,
`
`Internet, and eCommerce technology, including CTI with specific project consulting
`
`for Contact Center management, video conferencing, and integration of PBX, IVR,
`
`ACD, VoIP, and Unified Messaging technology. I have also implemented contact
`
`centers for large eCommerce implementations (GEICO), Customer service
`
`implementations (Verizon), and customer support
`
`implementations (Utility
`
`Partners).
`
`2
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`6.
`
`From 1980 to 1987, I was employed as a Software Engineer for Digital
`
`Equipment Corporation, a leading vendor of computer systems, including
`
`computers, software and peripherals, where I developed telephone management
`
`systems for an early CTI and computer command system.
`
`7.
`
`From 1987 to 1996, I was employed as a Project Manager of Telecom
`
`Software at GTE Data Services, an eight billion dollar telecommunications
`
`company, which was the predecessor to Verizon. During my employment at GTE
`
`Data Services, I developed Telephone Switch Management and Service Provisioning
`
`software, and implemented: teleconference systems for hands free operation,
`
`multiple microphones and audio sources, and combining and filtering audio
`
`feedback; routing & switching services within a network; and early VoIP gateway
`
`prototypes for Integrated Services Digital Network (“ISDN”) to Internet telephone
`
`services.
`
`8.
`
`From 1999 to 2002, I was employed as an eBusiness Engagement
`
`Manager at Tanning Technology and IMRGlobal, an international systems integrator
`
`specializing in network infrastructure and channel integration for financial markets
`
`and the insurance industry. During my employment at Tanning Technology, I
`
`developed Integrated VoIP contact centers to cross-utilize call center agents for
`
`simultaneous telephone, Interactive Voice Response (“IVR”), chat room, and eMail
`
`support.
`
`3
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`9. My related professional experience:
`
`•
`
`•
`
`•
`
`•
`
`eComp Consultants. Designed Mesh Network applications for
`
`dynamic routing of data messages, text messages, and SMS
`
`message routing.
`
`Verizon. Call Center design and development.
`
`o Implementation of teleconference systems for hands free
`
`operation, multiple microphones and audio sources,
`
`combining and filtering audio feedback.
`
`o Routing & Switching services within the Telco network
`
`including: IVR call flows and Automatic Call routing based
`
`on ANI, DNIS, or dialed digits.
`
`Utility Partners. Developed messaging gateway system for the
`
`creation, transmission, and reception of various messaging
`
`protocols, including cell based text messaging (SMS).
`
`GEICO. Managed the development of Integrated IVR and Web
`
`call center call routing for cross-utilize call center agents for
`
`simultaneous IVR response, Chat room response, and eMail
`
`response.
`
`4
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`•
`
`Digital Equipment Corporation. Developed TMS, (Telephone
`
`management system) for an early Computer Telephony Interface
`
`(CTI) and computer command system.
`
`10. My related case experience:
`
`•
`
`Nuance Communications v. TellMe Networks (Microsoft) –
`
`Patent Litigation. Provided expertise in automated call
`
`processing/routing, speech recognition, operator correction and
`
`auto correction of transcribed text, and call relay to operator
`
`assisted speech to text translation using ‘whisper mode’.
`
`•
`
`Bear Creek Technologies vs. Verizon Business – Patent
`
`Litigation. Testifying expert, provided analysis on Infringement
`
`and Invalidity of VoIP related patents, including expertise on
`
`Call Routing and Setup protocol (including provision of off
`
`hook, ring back, and busy signals).
`
`•
`
`Parus v. Airtran – Patent Litigation. Testifying expert
`
`regarding expertise in voice recognition as applied to a system
`
`converting voice commands into a Command Line Interface
`
`using XML command and parameter sequences, isolated word
`
`recognition, natural speech recognition, unified messaging
`
`systems,
`
`interactive voice response systems, and
`
`travel
`
`5
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`reservation systems for invalidity analysis in Natural Language
`
`command parsing and recognition.
`
`•
`
`Ronald A. Katz v. Echostar, Cox Communication, DHL
`
`Express, Fifth Third Bank – Patent Litigation. Testifying
`
`expert for 4 defendants. Testifying expert providing expertise in
`
`Call Center call routing systems, Central Office switching, and
`
`VoIP work around services.
`
`11. By virtue of the above experience, I have gained a detailed
`
`understanding of the technology that is at issue in this petition.
`
`12.
`
`I am being compensated for my time at my customary rate. I am being
`
`paid for my time, regardless of the facts I know or discover and regardless of the
`
`conclusions or opinions that I reach and express. I have no financial interest in the
`
`outcome of this proceeding.
`
`13. Except as otherwise stated, I have personal knowledge of the facts
`
`stated in this Declaration, and I have formed the opinions expressed in this
`
`Declaration based on my expertise, experience, and information that I have
`
`reviewed.
`
`III. MATERIALS CONSIDERED
`14. The following is a list of materials I have considered when preparing
`
`this declaration.
`
`6
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`• Ex. 1003, U.S. Patent No. 9,336,689 (“the ‘689 Patent”)
`
`• Ex. 1004, U.S. Patent No. 7,881,441 (“Engelke 2”)
`
`• Ex. 1005, U.S. Patent No. 6,567,503 (“Engelke 1”)
`
`• Ex. 1006, U.S. Patent No. 7,428,702 (“Cervantes”)
`
`• Ex. 1007, Florida State Courts System, “Policy on Court Real-Time
`
`Transcription Services for Persons Who are Deaf or Hard of Hearing”
`
`within “Title II Guidelines for the State Courts System of Florida”
`
`(2009) (“Florida Policy”)
`
`• Ex. 1008, Jeff Hutchins and Alan Lambshead, “Closed Captioning
`
`Systems” in National Association of Broadcasters Engineering
`
`Handbook (10th Ed., Taylor & Francis, 2007) (“Hutchins”)
`
`• Ex. 1009, Settlement Agreement Between the United States of
`
`America and the Florida State Courts System (1996) (containing
`
`Florida Policy)
`
`• Ex. 1010 Florida State Courts System, “Provision of Real-Time Court
`
`Reporting Services for Attorneys with Disabilities” (2007) (containing
`
`Florida Policy)
`
`• Ex. 1011, Paper 63, Final Written Decision, IPR2013-00288 (October
`
`30, 2014) (canceling ‘801 Patent claims)
`
`• Ex. 1012, ‘801 Patent IPR Petition
`
`7
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`• Ex. 1013, ’918 Application terminal disclaimer
`
`• Ex. 1014, ’918 Application response to office action re terminal
`
`disclaimer
`
`• Ex. 1015, ’918 Application notice of allowance
`
`• Ex. 1016, ’918 Application petition
`
`• Ex. 1017, ’918 Application notice of abandonment
`
`• Ex. 1018, ’407 Application initial office action
`
`• Ex. 1019, ’407 Application response to office action
`
`• Ex. 1020, ’407 Application office action withdrawing double
`
`patenting rejection
`
`• Ex. 1021, U.S. Patent No. 8,379,801 (“the ‘801 Patent”)
`
`• Ex. 1022, U.S. Patent No. 5,909,482
`
`• Ex. 1023, Marcele M. Soviero, Captioning Could be a Boon to Many
`
`Viewers, Popular Science, (Oct. 1993, Vol. 243 No. 4)
`
`• Ex. 1024, Report, In the Matter of Closed Captioning and Video
`
`Description of Video Programming, FCC MM Docket No. 95-176
`
`(July 29, 1996)
`
`• Ex. 1025, Dorothy Smith, Communication in the Courtroom:
`
`Technology is helping to provide equal access to the law, Gallaudet
`
`Today (Spring 1989)
`
`8
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`• Ex. 1026, U.S. Patent No. 6,260,011
`
`• Ex. 1027, James Martin, Design of Man-Computer Dialogues (Jan. 1,
`
`1973)
`
`Ex. 1028, Joseph Shapiro, Technology No Longer Distances Deaf
`
`Culture (May 1, 2006)
`
`• Ex. 1029, Lloyd Vries, Pagers Become Lifeline For Deaf (Nov. 21,
`
`2003)
`
`• Ex. 1030, Susan Donaldson James and Grace Huang, Deaf and Proud
`
`to Use Sign Language (Dec. 12, 2006)
`
`• Prosecution history of Application No. 12/624,973 (issued as ‘801
`
`Patent)
`
`• Prosecution history of Application No. 13/768,918 (abandoned)
`
`• Prosecution history of Application No. 14/530,407 (issued as ‘689
`
`Patent)
`
`IV. LEGAL STANDARDS
`15.
`I understand that prior art to the ‘689 Patent includes patents and printed
`
`publications in the relevant art that predate its claimed November 24, 2009, filing
`
`date.
`
`16.
`
`I understand that a claim is not patentable if it is anticipated or obvious.
`
`Anticipation of a claim requires that every element of a claim be disclosed expressly
`
`9
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`or inherently in a single prior art reference, in combination, as claimed. Obviousness
`
`of a claim requires that the claim be obvious from the perspective of a person having
`
`ordinary skill in the relevant art at the time the alleged invention was made. I
`
`understand that a claim may be obvious from a combination of two or more prior art
`
`references.
`
`17.
`
`I understand that an obviousness analysis requires an understanding of
`
`the scope and content of the prior art, any differences between the alleged invention
`
`and the prior art, and the level of ordinary skill in evaluating the pertinent art.
`
`18.
`
`I further understand that certain factors may support or rebut the
`
`obviousness of a claim. I understand that such secondary considerations include,
`
`among other things, commercial success of the patented invention, skepticism of
`
`those having ordinary skill in the art at the time of invention, unexpected results of
`
`the invention, any long-felt but unsolved need in the art that was satisfied by the
`
`alleged invention, the failure of others to make the alleged invention, praise of the
`
`alleged invention by those having ordinary skill in the art, and copying of the alleged
`
`invention by others in the field. I understand that there must be a nexus—a
`
`connection—between any such secondary considerations and the alleged invention.
`
`I also understand that contemporaneous and independent invention by others is a
`
`secondary consideration tending to show obviousness.
`
`10
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`19.
`
`I further understand that a claim is obvious if it unites old elements with
`
`no change to their respective functions, or alters prior art by mere substitution of one
`
`element for another known in the field and that combination yields predictable
`
`results. While it may be helpful to identify a reason for this combination, common
`
`sense should guide and no rigid requirement of finding a teaching, suggestion or
`
`motivation to combine is required. When a product is available, design incentives
`
`and other market forces can prompt variations of it, either in the same field or
`
`different one. If a person having ordinary skill in the relevant art can implement a
`
`predictable variation, obviousness likely bars its patentability. For the same reason,
`
`if a technique has been used to improve one device and a person having ordinary
`
`skill in the art would recognize that it would improve similar devices in the same
`
`way, using the technique is obvious. I understand that a claim may be obvious if
`
`common sense directs one to combine multiple prior art references or add missing
`
`features to reproduce the alleged invention recited in the claims.
`
`20.
`
`I understand that prior art can be used to show the obviousness of a
`
`patent only if the prior art is “analogous art” to the patent. I understand that
`
`analogous prior art is art which satisfies either of these tests: (1) whether the art is
`
`from the same field of endeavor as the patent, regardless of the problem addressed
`
`and, (2) if the art is not within the field of endeavor, whether it is reasonably pertinent
`
`to the particular problem with which the patent’s inventor was addressing. I
`
`11
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`understand the field of endeavor is determined by reference to explanations of the
`
`alleged invention’s subject matter in the patent application, including the
`
`embodiments, function, and structure of the claimed invention. I understand that a
`
`reasonably pertinent reference is a reference that—although it may be in a different
`
`field of endeavor—logically would have commended itself to an inventor’s attention
`
`in considering his problem because of the matter with which it deals.
`
`V. BACKGROUND
`A. Technology Background
`21.
`In general, captioning relates to real-time transcribing of voice
`
`communication, often for the benefit of a hearing-impaired person, through a relay
`
`service. In the context of telephone captioning, the hearing-impaired person
`
`typically uses a captioned telephone set with a display for presenting the
`
`transcription. This allows the hearing-impaired person to communicate with a
`
`normal-hearing person (or another hearing-impaired person). The normal hearing
`
`person, on the other hand, uses a regular telephone set.
`
`22.
`
`In one common configuration for telephone captioning, the hearing-
`
`impaired person connects to (patches in) the relay at the beginning of the call, so that
`
`captioning can commence. The relay service includes a human assistant and
`
`specialized equipment with speech recognition software. The speech recognition
`
`software is trained to recognize the human assistant’s speech. The human assistant
`
`12
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`typically listens to the communication and revoices (repeats in his/her own voice)
`
`the normal hearing person’s speech (and often the hearing-impaired person’s
`
`speech). The revoiced speech (i.e., the speech that is revoiced by the human
`
`assistant) is supplied to the speech recognition software, which automatically
`
`converts the revoiced speech into text. The human assistant may edit and correct
`
`speech recognition errors (mistakes in the transcription made by the speech
`
`recognition software). Captions are transmitted to the hearing-impaired person’s
`
`captioned telephone set and presented at its display. See, for example, Ex. 1005,
`
`Engelke 1, at 1:18-49.
`
`
`
`B. Overview of the ‘689 Patent
`23. The ‘689 Patent is related to providing error correction in text
`
`
`
`captioning. Ex. 1003, ‘689 Patent, Abstract. The ‘689 Patent discloses displaying a
`
`block or more of text captions on a display at the relay and on a display at the
`
`hearing-impaired person’s captioned telephone set. Id. The ‘689 Patent further
`
`discloses generating another, corrected, block of text captions, which replaces the
`
`13
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`block of text captions previously displayed on the hearing-impaired person’s
`
`display. Id.
`
`24. The ‘689 Patent discloses one independent system claim (Claim 1), one
`
`independent method claim (Claim 13), and 18 dependent claims. Ex. 1003, ‘689
`
`Patent, Claims 1-20.
`
`25.
`
`Independent Claim 1 of the ‘689 Patent discloses (1) a communication
`
`device for use by a call assistant of a remote captioning service providing captioning
`
`assistance for a hearing-impaired user during a real-time communication session; (2)
`
`a communication device for use by the hearing-impaired user to provide captions
`
`displayed to the hearing-impaired user during the real-time communication session;
`
`(3) that the relay communication device comprises (A) a memory device with speech
`
`recognition program, (B) an input device to receive inputs from the captioning
`
`assistant, and (C) a processor operably coupled with the memory device and the
`
`input device and that the processor is configured to receive a voice signal during a
`
`real-time communication session between at least two parties, the voice signal
`
`including at least audio from a far end user for the real-time communication session;
`
`(4) generating a text transcription for the audio for the far-end user from the voice
`
`signal during the real-time communication session using the speech recognition
`
`program; (5) transmitting a block of text of the text transcription to the hearing-
`
`impaired user communication device for display by the hearing-impaired user
`
`14
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`communication device during the real-time communication session; (6) receiving
`
`the inputs from the call assistant as edits to the text transcription; and (7) transmitting
`
`a replacement block of text with the edits to the hearing-impaired user
`
`communication device after transmission of the first block to the hearing-impaired
`
`user communication device has already occurred, and that the replacement block of
`
`text is an inline correction for the first block of text that was already received and
`
`displayed by the hearing-impaired user communication device; and that the hearing-
`
`impaired user communication device comprises: (A) an electronic display and (B) a
`
`processor operably coupled with the electronic display, and that the processor is
`
`configured to (a) receive the voice signal and (b) during the real-time communication
`
`session to receive the first block of text of the text transcription from the remote
`
`captioning service. Claim 1 also discloses transmitting the first block of text of the
`
`text transcription to be displayed by the hearing-impaired user electronic display as
`
`captions for the hearing-impaired user during the real-time communication session;
`
`discloses receiving the replacement block of text from the remote captioning service
`
`after the first block of text has been received and displayed by the hearing-impaired
`
`user electronic display; and discloses causing the replacement block of text to be
`
`displayed by the hearing-impaired user electronic display as an inline correction for
`
`the first block of text previously displayed by the hearing-impaired user
`
`communication device. Ex. 1003, ‘689 Patent, Claim 1.
`
`15
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`26. Dependent Claims 2-12, which depend from Claim 1, disclose
`
`additional purported features of the ‘689 Patent. For example, Claim 2 discloses
`
`using a telephone network consisting of the Public Switch Telephone Network and
`
`a VOIP network, Claim 9 discloses providing a visual indication that the
`
`replacement block of text has replaced the first block of text, and Claim 10 discloses
`
`that the visual indication includes the replacement block of text being displayed with
`
`highlighting. Ex. 1003, ‘689 Patent, Claims 2-12.
`
`27.
`
`Independent Claim 13 of the ‘689 Patent discloses providing error
`
`correction in a caption-based communication system comprising: (1) receiving, at a
`
`communication device associated with a call assistant within a captioning service, a
`
`voice signal during a real-time communication session between another
`
`communication device associated with a hearing-impaired user and a third
`
`communication device; (2) receiving, at the hearing-impaired user communication
`
`device, the voice signal from the relay communication device within the remote
`
`communication device during the real-time communication session; (3) generating,
`
`at the relay communication device, a text transcription for the voice signal during
`
`the real-time communication session using a speech recognition program;
`
`transmitting, from the relay communication device to the hearing-impaired user
`
`communication device, a block of text of the text transcription; (4) receiving, at the
`
`hearing-impaired user communication device, the first block of text of the text
`
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`transcription of the voice signal from the remote captioning service; (5) displaying
`
`the first block of text on an electronic display of the hearing-impaired user
`
`communication device during the real-time communication session; (6) receiving,
`
`through an input device of the relay communication device, corrections
`
`corresponding to an error within at least a portion of a text transcription after of the
`
`text transcription to the hearing-impaired user communication device has already
`
`occurred; (7) generating, at the relay communication device, a replacement block of
`
`text responsive to the corrections; (8) transmitting the replacement block of text from
`
`the relay communication device to the hearing-impaired user communication device
`
`as an inline correction for the error with instructions for the hearing-impaired user
`
`communication device to indicate that the block of text is a correction for the portion
`
`of the text transcription to be replaced; (9) receiving, at the hearing-impaired user
`
`communication device, the replacement block of text from the remote captioning
`
`service after the first block of text has been received and displayed by the hearing-
`
`impaired user electronic display; and (10) displaying the replacement block of text
`
`on the hearing-impaired user electronic display as an inline correction for the first
`
`block of text previously displayed by the hearing-impaired user communication
`
`device. Ex. 1003, ‘689 Patent, Claim 13.
`
`28. Dependent Claims 14-20, which depend from Claim 13, disclose
`
`additional purported features of the ‘689 Patent. For example, Claim 16 discloses
`
`17
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`displaying a visual indication on the hearing-impaired user electronic display that
`
`the replacement block of text has replaced the first block of text, and Claim 17
`
`discloses that the visual indication includes at least one of a mark or a tag of the
`
`replacement block of text. Ex. 1003, ‘689 Patent, Claims 14-20.
`
`C.
`Prosecution History of the ‘689 Patent
`29. Patent Owner
`filed Application No. 12/624,973
`
`(“the
`
`’973
`
`Application”) on November 24, 2009, which issued as U.S. Patent No. 8,379,801
`
`(“the ‘801 Patent”) on February 19, 2013. Ex. 1021, ‘801 Patent. All claims of the
`
`‘801 Patent were either disclaimed or found unpatentable during an inter partes
`
`review of the ‘801 Patent (“the ‘801 Patent IPR”). See Ex. 1011.
`
`30. On February 15, 2013, Patent Owner filed Application No. 13/768,918
`
`(“the ’918 Application”) as a continuation of the ’973 Application, which was
`
`ultimately abandoned. Ex. 1017.
`
`31. Patent owner
`
`filed Application No. 14/530,407
`
`(“the
`
`’407
`
`Application”) on October 31, 2014, as a continuation of the ’918 Application. Ex.
`
`1003 at (21), (22), (26). The Examiner did not attempt to reject the claims as
`
`unpatentable over the prior art used by the Board in the ‘801 Patent IPR, and he
`
`allowed the claims. E.g., Ex. 1020. The ’407 Application issued as the ‘689 Patent.
`
`Ex. 1003, ‘689 Patent.
`
`18
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`D. The ‘801 Patent IPR
`32. During the ‘801 Patent IPR, Patent Owner disclaimed some claims and
`
`disputed the allegations of unpatentability for the remaining claims. Ex. 1011 at 2.
`
`On October 30, 2014, the Board found all non-disclaimed claims unpatentable. Id.
`
`at 2–3, 25, 28. I understand that decision was not appealed and is now final.
`
`33. The Board canceled all un-disclaimed claims based on the combination
`
`of Engelke 2 (which incorporates by reference Engelke 1) with Cervantes. The
`
`Board found that Engelke 2 (including through its incorporation of Engelke 1) and
`
`Cervantes disclosed all elements of the un-disclaimed claims of the ‘801 Patent and
`
`that a person of ordinary skill in the art would have a reason to combine Engelke 2–
`
`Engelke 1 with Cervantes. Id. at 25, 28. The Board also found that Cervantes was
`
`analogous prior art. Id. at 16
`
`VI. QUALIFICATIONS OF THOSE OF ORDINARY SKILL IN THE
`ART
`34. The ‘801 Patent and ‘689 Patent attempt to solve the same problem.
`
`Ex. 1003, ‘689 Patent at 1:35–2:11; Ex. 1021, ‘801 Patent at 1:38–2:3. The ‘689
`
`Patent says:
`
`A text captioned telephone system employs a relay service in a mode
`where the relay transmits both the voice of the hearing user and a text
`stream of the words spoken by the hearing user….
`
`According to various conventional methods, errors within a text caption
`are corrected by either backspacing an error in a text caption and
`
`19
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`

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`displaying corrected text or providing a corrected portion (e.g., a word
`or a sentence) at the end of a previously provided text caption.
`Although, backspacing an error in a text caption and displaying
`corrected text may provide a hearing-impaired user with a context for
`the correction, this method is distracting to a hearing-impaired user and
`interrupts the continuity of a conversation between a hearing-impaired
`user and a hearing user. Further, providing a corrected portion at the
`end of a previously provided text caption not only interrupts the
`continuity of a conversation but also fails to provide context of the
`correction to the hearing-impaired user. Therefore, a hearing-impaired
`user must determine where the corrected text should be inserted into the
`previously provided text caption.
`
`A need exists to improve text correction of a text captioning system.
`Specifically, there is a need for methods of providing text caption
`correction while providing a user with context of a correction and
`without distracting the user or interrupting the continuity of a
`conversation between a hearing-impaired user and a hearing user.
`
`Ex. 1003, ‘689 Patent at 1:35–2:11.
`
`
`35.
`
`In the ‘801 Patent IPR, the Board found that a person with ordinary skill
`
`in the art would be an individual who possesses a bachelor in science in electrical
`
`engineering, computer science, or computer information systems, along with a
`
`general knowledge and understanding of a text caption communication system,
`
`including the electronic generation, correction, and display of transcribed or
`
`20
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`captioned text that is transmitted to and displayed on an electronic device. Ex. 1011
`
`at 9–10.
`
`36. Since the ‘689 Patent and ‘801 Patent are directly related and attempt
`
`to solve the same problem, I will apply the above definition for a person of ordinary
`
`skill to the ‘689 Patent.
`
`VII. CLAIM CONSTRUCTION ISSUES
`37.
`I understand that claims in an IPR are given their broadest reasonable
`
`construction in light of the specification.
`
`38. The ‘689 Patent claim