UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`Ultratec, Inc.,
`
`Petitioner
`
`v.
`
`Sorenson IP Holdings,
`
`Patent Owner
`
`
`
`Case IPR: Unassigned
`
`Patent No. 9,336,689
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,336,689
`
`
`
`
`
`
`
`

`

`CONTENTS
`
`I. MANDATORY NOTICES ................................................................................ 1
`A. Real Parties In Interest ................................................................................... 1
`B. Related Matters ............................................................................................... 1
`C. Lead And Back-Up Counsel And Service Information ................................. 1
`II. GROUNDS FOR STANDING AND IDENTIFICATION OF CHALLENGE 2
`A. Standing .......................................................................................................... 2
`B. Statutory Grounds For Each Claim ................................................................ 2
`C. Claim Construction ......................................................................................... 3
`D. How The Challenged Claims Are Unpatentable And Evidence
`Supporting Challenge ..................................................................................... 4
`III. THE PROSECUTION HISTORY OF THE ’689 PATENT AND THE
`UNPATENTABILITY OF THE ’689 PATENT’S PARENT ........................... 4
`A. Relevant History Of The ’689 Patent’s Predecessor Applications ................ 4
`B. The ’801 Patent IPR ....................................................................................... 6
`IV. THE CHALLENGED CLAIMS ARE UNPATENTABLE .............................. 6
`A. Description Of The Alleged Inventions ......................................................... 6
`B. The Level Of Skill In The Art ........................................................................ 9
`C. Principles Of Law ........................................................................................... 9
`D. Ground 1: Claims 1–20 Are Rendered Obvious By Engelke 2 (Including
`Its Incorporation Of Engelke 1) And Cervantes .......................................... 11
`1. The prior art .......................................................................................... 11
`2. The prior art is analogous art ................................................................ 19
`3. A person of ordinary skill in the art would have reason to combine
`Engelke 2–Engelke 1 with Cervantes ................................................... 20
`
`i
`
`

`

`4. The combination of Engelke 2–Engelke 1 and Cervantes discloses
`every element of Claims 1–20 .............................................................. 22
`E. Ground 2: Claim 19 Is Rendered Obvious By Engelke 2 (Including Its
`Incorporation Of Engelke 1), Cervantes, And The Florida Policy .............. 57
`1. The prior art .......................................................................................... 57
`2. The prior art is analogous art ................................................................ 60
`3. A person of ordinary skill in the art would have reason to combine
`Engelke 2–Engelke 1 with Cervantes and the Florida Policy .............. 61
`4. The combination of Engelke 2–Engelke 1, Cervantes, and the
`Florida Policy discloses every element of Claim 19 ............................ 64
`F. Ground 3: Claim 19 Rendered Obvious By Engelke 2 (Including Its
`Incorporation Of Engelke 1), Cervantes, And Hutchins .............................. 65
`1. The prior art .......................................................................................... 65
`2. The prior art is analogous art ................................................................ 67
`3. A person of ordinary skill in the art would have reason to combine
`Engelke 2–Engelke 1 with Cervantes and Hutchins ............................ 69
`4. The combination of Engelke 2–Engelke 1, Cervantes, and Hutchins
`discloses every element of Claim 19 .................................................... 70
`V. CONCLUSION ................................................................................................ 71
`
`
`
`ii
`
`

`

`Exhibit List
`
`Exhibit Description
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`Zatkovich Declaration
`
`Hilley Declaration
`
`U.S. Patent No. 9,336,689 (“the ’689 Patent”)
`
`U.S. Patent No. 7,881,441 (“Engelke 2”)
`
`U.S. Patent No. 6,567,503 (“Engelke 1”)
`
`U.S. Patent No. 7,428,702 (“Cervantes”)
`
`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”)
`
`Jeff Hutchins and Alan Lambshead, “Closed Captioning Systems” in
`National Association of Broadcasters Engineering Handbook (10th Ed.,
`Taylor & Francis, 2007) (“Hutchins”)
`
`Settlement Agreement Between the United States of America and the
`Florida State Courts System (1996) (containing Florida Policy)
`
`Florida State Courts System, “Provision of Real-Time Court Reporting
`Services for Attorneys with Disabilities” (2007) (containing Florida
`Policy)
`
`Paper 63, Final Written Decision, IPR2013-00288 (October 30, 2014)
`(“the ’801 Patent IPR”)
`
`’801 Patent IPR Petition
`
`’918 Application terminal disclaimer
`
`’918 Application response to office action re terminal disclaimer
`
`iii
`
`

`

`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`’918 Application notice of allowance
`
`’918 Application petition
`
`’918 Application notice of abandonment
`
`’407 Application initial office action
`
`’407 Application response to office action
`
`’407 Application notice of allowance
`
`U.S. Patent No. 8,379,801 (“the ’801 Patent”)
`
`U.S. Patent No. 5,909,482
`
`1023 Marcele M. Soviero, Captioning Could be a Boon to Many Viewers,
`Popular Science (Oct. 1993, Vol. 243 No. 4)
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`Report, In the Matter of Closed Captioning and Video Description of
`Video Programming, FCC MM Docket No. 95-176 (July 29, 1996)
`
`Dorothy Smith, Communication in the Courtroom: Technology is
`helping to provide equal access to the law, Gallaudet Today (Spring
`1989)
`
`U.S. Patent No. 6,260,011
`
`Excerpts from James Martin, Design of Man-Computer Dialogues (Jan.
`1, 1973)
`
`Joseph Shapiro, Technology No Longer Distances Deaf Culture (May 1,
`2006)
`
`Lloyd Vries, Pagers Become Lifeline For Deaf (Nov. 21, 2003)
`
`Susan Donaldson James and Grace Huang, Deaf and Proud to Use Sign
`Language (Dec. 12, 2006)
`
`iv
`
`

`

`In accordance with 35 U.S.C. § 311, Petitioner Ultratec, Inc. respectfully
`
`requests inter partes review (“IPR”) of Claims 1–20 of U.S. Patent No. 9,336,689
`
`(“the ’689 Patent”), attached hereto as Exhibit 1003.
`
`I. MANDATORY NOTICES
`A. Real Parties In Interest
`
`The real parties-in-interest, pursuant to 37 C.F.R. § 42.8(b)(1), are Ultratec,
`
`Inc. (“Petitioner”) and CapTel, Inc. (“CapTel”), both having a place of business at
`
`450 Science Drive, Madison, Wisconsin 53711.
`
`B. Related Matters
`
`U.S. App. No. 15/096,087 filed on April 11, 2016, which claims the benefit
`
`of the ’689 Patent, may be affected by a decision in this proceeding.
`
`C. Lead And Back-Up Counsel And Service Information
`
`Petitioner provides the following designation of counsel, to which all
`
`correspondence should be addressed.
`
`Lead Counsel
`Michael Jaskolski (Reg. No. 37,551)
`michael.jaskolski@quarles.com
`QUARLES & BRADY LLP
`411 East Wisconsin Avenue, Suite 2400
`Milwaukee, Wisconsin 53202
`Telephone: (414) 277-5711
`Fax: (414) 978-8711
`
`Backup Counsel
`Louis A. Klapp (Reg. No. 73,603)
`louis.klapp@quarles.com
`QUARLES & BRADY LLP
`300 North LaSalle Street, Suite 4000
`Chicago, Illinois 60654
`Telephone: (312) 715-2712
`Fax: (312) 632-1948
`
`1
`
`

`

`Nikia L. Gray (Reg. No. 57,770)
`nikia.gray@quarles.com
`QUARLES & BRADY LLP
`1701 Pennsylvania Ave NW, Suite 700
`Washington, DC 20006
`Telephone: (202) 372-9517
`Fax: (202) 372-9599
`
`
`
`II. GROUNDS FOR STANDING AND
`CHALLENGE
`A.
`
`Standing
`
`IDENTIFICATION OF
`
`Petitioner certifies that the ’689 Patent is available for inter partes review.
`
`Petitioner is not barred or estopped from requesting this inter partes review.
`
`B.
`
`Statutory Grounds For Each Claim
`
`Petitioner requests IPR of Claims 1–20 of the ’689 Patent (the “Challenged
`
`Claims”). IPR of the Challenged Claims is requested in view of the following:
`
`1
`
`Ground
`
`Proposed Statutory Rejections for the ’689 Patent
`Claims 1–20 are obvious under 35 U.S.C. § 103 in view of the
`combination of U.S. Patent Nos. 7,881,441 (“Engelke 2”)1 and
`7,428,702 (“Cervantes”).
`Claim 19 is obvious under 35 U.S.C. § 103 in view of the
`2
`
`1 Engelke 2 includes its incorporation by reference of U.S. Patent No. 6,567,503
`
`(“Engelke 1”).
`
`2
`
`

`

`combination of Engelke 2, Cervantes, and the Florida State
`Courts’ Policy on Court Real-Time Transcription Services for
`Persons Who are Deaf or Hard of Hearing (“Florida Policy”).
`Claim 19 is obvious under 35 U.S.C. § 103 in view of the
`combination of Engelke 2, Cervantes, and Closed Captioning
`Systems by Jeff Hutchins and Alan Lambshead (“Hutchins”).
`
`3
`
`The ’689 Patent claims priority to a November 24, 2009, filing date.
`
`Ex.1003 at (63). As explained in sections IV.D.1, IV.E.1, and IV.F.1 below,
`
`Engelke 2, Cervantes, the Florida Policy, and Hutchins qualify as prior art under
`
`35 U.S.C. § 102.
`
`C. Claim Construction
`
`The Challenged Claims are given their “broadest reasonable construction in
`
`light of the specification.” See 37 C.F.R. § 42.200(b).
`
`“Block of text” should be construed as “at least one word, sentence, or line
`
`of text.” This usage is consistent with how the term is used in the ’689 Patent.
`
`Ex.1003 at 5:15–18 (“a block of text may comprise one or more words, one or
`
`more sentences, one or more lines of text, or any combination thereof”); see also
`
`5:61–65; 6:15–17; 6:29-27; Figs. 3–4; Ex.1001 ¶¶ 38–39. Furthermore, during the
`
`IPR of the ’689 Patent’s parent patent—the ’801 Patent IPR (see Section III.B
`
`below)—the Board adopted this construction. Ex.1011 at 7. This construction was
`
`based on the identical usage of “block of text” in the specification of the ’801
`
`3
`
`

`

`Patent IPR (Ex.1011 at 7 (citing Ex.1021, ’801 Patent), and there are no
`
`differences between the ’689 Patent and ’801 Patent that would compel a different
`
`construction here. Ex.1001 ¶¶ 38–39.
`
`D. How The Challenged Claims Are Unpatentable And Evidence
`Supporting Challenge
`
`A detailed explanation of how the Challenged Claims are unpatentable is
`
`provided in the following sections. An Exhibit list is attached. See p.iii above.
`
`Relevance of the evidence, including identifying the specific portions of the
`
`evidence that support the challenge, may be found in the following sections.
`
`III. THE PROSECUTION HISTORY OF THE ’689 PATENT AND THE
`UNPATENTABILITY OF THE ’689 PATENT’S PARENT
`A. Relevant History Of The ’689 Patent’s Predecessor Applications
`
`Patent Owner2 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. Soon thereafter, Patent Owner asserted the ’801
`
`Patent against Petitioner in a district court litigation, and Petitioner responded by
`
`2 According to the PTO’s assignment records, Sorenson IP Holdings, LLC is the
`
`current owner of the ’698 Patent. Ex.1002 ¶ 3. The ’698 Patent and its parent
`
`applications have been owned by Sorenson Communications, Inc. and CaptionCall,
`
`LLC. Id. For purposes of this petition, Petitioner will use the term “Patent Owner”
`
`to refer to Sorenson IP Holdings, LLC and these predecessor entities.
`
`4
`
`

`

`petitioning the Board for inter partes review of the ’801 Patent (“the ’801 Patent
`
`IPR”). See Ex.1011 at 2, 6. During the ’801 Patent IPR, Patent Owner disclaimed
`
`some claims and disputed the allegations of unpatentability for the remaining
`
`claims. Id at 2. On October 30, 2014, the Board found all non-disclaimed claims
`
`unpatentable. Id. at 2–3. That decision was not appealed and is now final. See
`
`Ex.1002 ¶ 2.
`
`On February 15, 2013, Patent Owner filed Application No. 13/768,918 (“the
`
`’918 Application”) as a continuation of the ’973 Application. Ex.1003 at (63);
`
`Ex.1021 at (45). After the Board issued its decision in the ’801 Patent IPR on
`
`October 30, 2014 (Ex.1011), Patent Owner ceased prosecution of the ’918
`
`Application and a notice of abandonment was issued on June 17, 2015. Ex.1017.
`
`The patent challenged
`
`in
`
`this IPR—the ’689 Patent—issued from
`
`Application No. 14/530,407 (“the ’407 Application”). Before the ’918 Application
`
`was officially abandoned, Patent Owner filed the ’407 Application on October 31,
`
`2014, as a continuation of the ’918 Application. Ex.1003 at (21), (22), (63). For
`
`reasons that are not clear, the Examiner did not attempt to reject the claims as
`
`unpatentable over the art used by the Board in the ’801 Patent IPR, and he allowed
`
`the claims. Ex.1020.
`
`5
`
`

`

`B.
`
`The ’801 Patent IPR
`
`Although the Board instituted the ’801 Patent IPR on several grounds, the
`
`Board canceled all un-disclaimed claims based on the combination of U.S. Patent
`
`No. 7,881,441 (“Engelke 2”)—which incorporates by reference U.S. Patent No.
`
`6,567,503 (“Engelke 1”)—with U.S. Patent No. 7,428,702 (“Cervantes”). Ex.1011
`
`at 10, 28. 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. See id. at 25.
`
`IV. THE CHALLENGED CLAIMS ARE UNPATENTABLE
`A. Description Of The Alleged Inventions
`
`The ’689 Patent generally relates to correcting errors within a text caption
`
`system used to facilitate hearing-impaired communication. Ex.1003 at 1:16–18.
`
`Figure 1 of the ’689 Patent illustrates a hearing-impaired communication system
`
`100. Id. at 2:51–52, 3:40–43.
`
`6
`
`

`

`
`As shown in Figure 1 of the ’689 Patent, communication system 100
`
`includes communication device 120, communication device 190, and relay service
`
`110. Id. at 3:44–45. Communication device 190 is coupled to communication
`
`device 120 via network 180, and communication device 120 is coupled to relay
`
`service 110 via network 170. Id. at 3:45–48. Relay service 110 may be configured
`
`to provide interpretative services to hearing-impaired user 140. Id. at 3:62–64. For
`
`instance, a human “call assistant” located at relay service 110 may facilitate a
`
`communication session between hearing-impaired user 140 and hearing-capable
`
`user 160. Id. at 3:64–67.
`
`Communication device 190 may include a conventional telephone that
`
`hearing-capable user 160 uses to interact with communication device 120. Id.
`
`3:67–4:5. The voice of hearing-capable user 160 may be transmitted through
`
`communication device 190 over network 180 to communication device 120,
`
`which, in turn, conveys the voice over network 170 to relay service 110. Id. at 4:5–
`
`7
`
`

`

`10. Communication device 120 may include a captioned telephone, i.e., a
`
`telephone or any suitable communication device capable of receiving and
`
`displaying text messages. Id. at 4:11–14. As such, communication device 120 may
`
`be configured to receive and display text messages of the voice communication
`
`sent from relay service 110 via network 170. Id. 4:17–21. In response, the voice of
`
`hearing-impaired user 140 may be transmitted through communication device 120
`
`over network 180 to communication device 190. Id. at 4:14–17.
`
`Figure 6 of the ’689 Patent, reproduced below, illustrates method 600 for
`
`correcting one or more textual errors within a text caption. Id. at 2:60–63; 6:54–56.
`
`Id. at Fig. 6.
`
`
`
`8
`
`

`

`B.
`
`The Level Of Skill In The Art
`
`In the ’801 Patent IPR, the Board held 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
`
`captioned text that is transmitted to and displayed on an electronic device. Ex.1011
`
`at 9–10. Since the ’689 Patent is a continuation of the ’801 Patent and purports to
`
`address the same problem, Petitioner applies the Board’s prior definition in this
`
`IPR.3
`
`C.
`
`Principles Of Law
`
`A claim is unpatentable under § 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 the invention was made to a person having
`
`ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v.
`
`Teleflex Inc., 550 U.S. 398, 406 (2007).
`
`When a patent claims a combination of elements already known in the art,
`
`that patent should be deemed obvious if, at the time of the alleged invention, a
`
`3 Petitioner does so without waiving arguments it may have in other proceedings
`
`involving patents not at issue in this IPR.
`
`9
`
`

`

`person of ordinary skill in the art would have had a reason to combine those known
`
`elements in the manner claimed by the patent. See id. at 416–18. A “reason to
`
`combine” can be found if the combination is “a predictable variation” of what was
`
`already known it the art, or uses a technique that “has been used to improve one
`
`device, and a person of ordinary skill in the art would recognize that it would
`
`improve similar devices in the same way.” Id. at 417. The reason to combine can
`
`also be found in the “interrelated teachings of multiple patents; the effects of
`
`demands known to the design community or present in the marketplace; and the
`
`background knowledge possessed by a person having ordinary skill in the art.” Id.
`
`at 418.
`
`Prior art can be used to show the obviousness of a patent if the reference is
`
`“analogous art” to the patent, which means (1) the reference is from the same field
`
`of endeavor as the patent, regardless of the problem addressed or, (2) if the
`
`reference is not within the field of endeavor, it is reasonably pertinent to the
`
`particular problem with which the patent’s inventor was addressing. In re Bigio,
`
`381 F.3d 1320, 1325 (Fed. Cir. 2004). 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. Id. at 13256–26. A reasonably pertinent reference is one that—although
`
`it may be in a different field of endeavor—logically would have commended itself
`
`10
`
`

`

`to an inventor’s attention in considering his problem because of the matter with
`
`which it deals. Sci. Plastic Prod., Inc. v. Biotage AB, 766 F.3d 1355, 1359 (Fed.
`
`Cir. 2014).
`
`D. Ground 1: Claims 1–20 Are Rendered Obvious By Engelke 2
`(Including Its Incorporation Of Engelke 1) And Cervantes
`
`Claims 1–20 are rendered obvious by the combination of Engelke 2,
`
`including its incorporation of Engelke 1 (“Engelke 2–Engelke 1”), and Cervantes.
`
`Each and every element of Claims 1–20 are disclosed by Engelke 2–Engelke 1 or
`
`Cervantes, and a person of ordinary skill in the art would have reason to combine
`
`Engelke 2–Engelke 1 with Cervantes.
`
`1.
`
`The prior art
`a.
`
`Engelke 2
`
`Engelke 2 qualifies as prior art to the ’689 Patent under 35 U.S.C. § 102(e)
`
`because its effective filing date is no later than March 28, 2006 (which is before
`
`the ’689 Patent’s November 24, 2009, claimed priority date) and because it issued
`
`as a patent. Ex.1004 at (22).
`
`Engelke 2 generally relates to telephone systems that provide real-time text
`
`captioning for an individual who is hearing-impaired. Ex.1004 at 1:18–20. Figure 1
`
`of Engelke 2 illustrates text captioned telephone system 10 that uses telephone
`
`terminal 12 and desk top computer 14. Id. at 4:12–14, 53–56.
`
`11
`
`

`

`
`Desktop computer 14 includes display screen 16, base unit 18 containing a
`
`processor, memory, disk drives, and sound card, and keyboard or other entry
`
`device 20. Id. at 4:56–59. PBX telephone terminal 12 connects to external
`
`telephone terminal 28. Id. at 4:62–67. Desktop computer 14 may connect to a
`
`network through any one of a number of well-known wired or wireless standards.
`
`Id. 5:1–4.
`
`Engelke 2 discloses that relay service 56 is capable of forwarding captioning
`
`text 55 over the Internet to a caller through a text box 92 (illustrated in Figure 7)
`
`displayed within webpage 86 on desktop computer 14. Id. at 6:59–61.
`
`12
`
`

`

`
`Text box 92 may use a browser plug-in or instant messaging program to provide
`
`the caller with consistent updating of the text as it is received. Id. at 6:61–64. See
`
`also id. at Figs. 3, 9 (other embodiments showing text captioning on computer 14).
`
`Engelke 2 discloses multiple ways in which the hearing user’s voice can be
`
`transmitted from telephone terminal 28 to relay 56. For example, in the
`
`embodiment associated with Figure 1, the hearing-impaired user’s computer 14
`
`receives the hearing user’s voice from telephone terminal 28 and transmits it to the
`
`relay 56.
`
`
`
`13
`
`

`

`Id. at Fig. 1. In the embodiment associated with Figure 5, telephone terminal 28
`
`connects to relay 56, which acts as a bridge between the hearing user’s telephone
`
`terminal 28 and the hearing impaired user’s telephone 72. Id. at 6:56–59, Fig. 5.
`
`
`
`Although Engelke 2 discloses that relay 56 transmits text captions to the
`
`hearing-impaired user’s captioning device (14, 102) and receives and/or transmits
`
`voice signals from/to the hearing-impaired user’s audio device (12, 72, 102) and
`
`hearing user’s telephone terminal 28 (e.g., id. at Figs. 1, 5, 8), Engelke 2 does not
`
`provide great detail about the underlying relay 56. Instead, it incorporates Engelke
`
`1 by reference. Id. at 5:37–42.
`
`b.
`
`Engelke 1
`
`Engelke 1 discloses a relay that can be used in conjunction with a caption
`
`telephone to allow a hearing-impaired user to communicate with a hearing user.
`
`Ex.1005 at 1:25–28, 2:29–34, 2:66–3:51.
`
`14
`
`

`

`
`Id. at Fig. 1 (annotated); Ex.1001 ¶ 41. More specifically, Engelke 1 discloses a
`
`relay 10—including call assistant 40—which permits a hearing user 12 to converse
`
`with a hearing impaired user 14. Id. at 2:66–3:1, 3:38–40. The relay receives a
`
`voice signal 16 from the mouthpiece of handset 13 of the hearing user 12 (green
`
`arrow in the annotated figure above). Id. at 2:66–3:2. The voice signal 16 is
`
`processed by the relay 10 to produce a text stream signal 20 sent to the hearing
`
`impaired user 14 where it is displayed at a user terminal 22 (blue arrow). Id. at
`
`3:2–5. A modified version of hearing user 12 voice signal 16—modified voice
`
`signal 24—is provided to the earpiece of a handset 26 used by the hearing impaired
`
`user 14 (purple arrow). Id. at 3:5–7. The hearing impaired user 14 may reply by
`
`spoken word into the mouthpiece of handset 26 to produce voice signal 30, which
`
`is transmitted to the earpiece of handset 13 of the hearing user 12 (red arrow). Id.
`
`at 3:8–13.
`
`15
`
`

`

`The relay generates captions of the hearing user’s voice. Id. at Fig. 1, Fig. 2,
`
`3:60–67. The call assistant 40 hears the hearing user voice 16 on her headset 38.
`
`Id. at 3:38–40. She re-voices the words, which are received by a speech processor
`
`system 44, which causes a text transcription of the voice signal to appear on call
`
`assistant display 48. Id. at 3:38–50. The hearing user’s voice is held in a buffer
`
`while call assistant 40 generates the transcription. Id. at 6:61–67. Once she has
`
`done so, she releases the voice (modified voice signal 24) and captions (text stream
`
`signal 20) such that they are received “at approximately the same time” at the
`
`hearing impaired user’s device. Id. at 3:2–5, 6:61–67.
`
`Prior to transmitting the captions and voice to the hearing impaired user, call
`
`assistant 40 may review and edit any errors in the text (including with keyboard
`
`50). Id. at 3:60–67, 6:13–25.
`
`c.
`
`Cervantes
`
`Cervantes generally relates to allowing users in an instant messaging
`
`environment to edit previous messages that have been exchanged and re-send the
`
`edited version of the message to target users. Ex.1006 at 1:42–45. In a typical
`
`conversation in an instant messaging system, a first user sends a message to a
`
`second user. Id. at 2:17–21. As soon as the first user sends the message, the first
`
`user may notice several mistakes in the message and, as a result, attempt to send a
`
`corrected message as soon as possible. Id. at 2:21–24.
`
`16
`
`

`

`
`Id. at Fig. 2 (showing prior art). At this point, in order to understand what was
`
`meant by the original message, the second user needs to return to the original
`
`message received, read it again, and then read the corrected message. Id. at 2:28–
`
`31.
`
`Cervantes purportedly solves this problem by allowing the first user to
`
`modify the original message when a mistake has been made. Id. at 2:38–41. In
`
`particular, when the first user notices a mistake in the original message, the first
`
`user puts a cursor over the original message, edits it, and once the revision is made,
`
`presses ENTER. Id. at 2:41–44. The corrected word(s) may be highlighted,
`
`colored, underlined, or otherwise re-formatted for the purpose of notification. Id. at
`
`2:44–46.
`
`17
`
`

`

`
`Id. at Fig. 3. The second user automatically sees these edits in a new message or,
`
`alternatively, the original message received by the second user dynamically
`
`changes to a new, edited version with the same color schemes. Id. at 2:55–60.
`
`Cervantes qualifies as prior art to the ’689 Patent under 35 U.S.C. § 102(e)
`
`because its filing date is January 27, 2008 (which is before the ’689 Patent’s
`
`November 24, 2009, claimed priority date) and because it issued as a patent.
`
`Ex.1006 at (22).
`
`18
`
`

`

`2.
`
`The prior art is analogous art
`a.
`
`Engelke 2–Engelke 1
`
`The ’689 Patent and Engelke 2–Engelke 1 are from the field of text
`
`captioning (including error correction within text captioning), making Engelke 2–
`
`Engelke 1 analogous art to the ’689 Patent. Compare Ex.1003 at 1:16–18 with
`
`Ex.1004 at 1:18–20 and Ex.1005 at 1:18–21; Ex.1001 ¶¶ 49–50.
`
`b.
`
`Cervantes
`
`Cervantes is analogous art to the ’689 Patent because it is reasonably
`
`pertinent to the problem with which the ’689 Patent was concerned. Ex.1001 ¶¶
`
`55–59. The ’689 Patent discloses that there is a problem in the art of text caption
`
`communication systems with correcting errors in a text caption, and providing the
`
`corrected words to a hearing-impaired user, such that he or she can understand the
`
`context of the correction without distracting from, or interrupting the continuity of,
`
`a conversation. See Ex.1003 at 1:36–2:10. Cervantes discloses that there is a
`
`problem in the art of instant messaging systems with correcting errors in instant
`
`messages exchanged between users. See Ex.1006 at 1:21–39, 2:13–16. By
`
`disclosing methods and systems for correcting errors in an instant message such
`
`that the recipient can easily understand the context of the correction, Cervantes
`
`would have commended itself to the attention of an inventor faced with the
`
`19
`
`

`

`problem addressed by the’689 Patent because—like Cervantes—it concerned
`
`correcting errors in a textual message. Ex.1001 ¶ 57.
`
`The Board already reached this conclusion. In the ’801 Patent IPR, the
`
`Board determined that Cervantes was analogous art to the ’801 Patent based on
`
`precisely the same logic as explained above. Ex.1011 at 15–16. Although, of
`
`course, the Board cited the problem addressed by the ’801 Patent (not the ’698
`
`Patent)—the patents address exactly the same problem. Compare Ex.1003, ’689
`
`Patent at 1:36–2:10 with Ex.1021, ’801 Patent at 1:38–2:3.
`
`3.
`
`A person of ordinary skill in the art would have reason to
`combine Engelke 2–Engelke 1 with Cervantes
`
`As the Board already determined in the ’801 Patent IPR, a person of
`
`ordinary skill in the art would have a reason to combine Engelke 2 (including its
`
`incorporation by reference of Engelke 1) with Cervantes. Ex.1011 at 25; see also
`
`Ex.1001 ¶¶ 72–76. Relay 10 of the text captioning system and methods disclosed
`
`in Engelke 2–Engelke 1 corrects errors in the text caption before the text caption is
`
`sent to the hearing impaired user’s terminal 22. Ex.1011 at 25 (citing Ex.1012 at
`
`30–31); Ex.1001 ¶¶ 73–76. Cervantes teaches an alternative text caption error
`
`correction solution in which errors in the text caption are corrected after the text
`
`caption has been sent to the recipient. Id. Both Engelke 2–Engelke 1 and Cervantes
`
`disclose that text is transmitted with an instant messaging program. See Ex.1011 at
`
`25 (citing Ex.1012 at 30–31); Ex.1001 a¶¶ 73–76; see also Ex.1004 at 6:61–64,
`
`20
`
`

`

`Ex.1006 at 1:42–45. It would have been obvious to one of ordinary skill in the art
`
`to substitute the error correction solution of Cervantes (one known element) for the
`
`error correction solution of Engelke 2–Engelke 1 (another known element) to yield
`
`a predictable result (e.g., in-line correction of previously transmitted erroneous
`
`text). Ex.1011 at 25 (citing Ex.1012 at 30–31); Ex.1001 ¶¶ 73–76. By combining
`
`the teachings of Cervantes and Engelke 2–Engelke 1, the unedited text caption in
`
`the system of Engelke 2–Engelke 1 could be sent directly from the relay 10 to the
`
`text caption display on the hearing impaired user’s terminal 22, and then error
`
`corrections could be transmitted by the relay 10 afterward (i.e., in the manner
`
`taught by Cervantes), so that the hearing impaired user could see the text caption
`
`faster by not having to wait for corrections to be made. Id.
`
`Furthermore, given that the two solutions of Engelke 2–Engelke 1 and
`
`Cervantes are two of a finite number of concepts for displaying error corrections in
`
`transmitted text conversations (errors can either be corrected before or after the
`
`text caption is sent to a user), it would have been obvious to try substituting the
`
`solution of Cervantes for the teachings of Engelke 2–Engelke 1, with a reasonable
`
`expectation of success. Id.
`
`In addition, Cervantes teaches that prior correction methods displayed
`
`corrected text on a target device as a new message instead of as in-line corrected
`
`text within the originally transmitted text block, see, e.g., Ex.1006 at Fig. 2.
`
`21
`
`

`

`Ex.1011 at 25 (citing Ex.1012 at 30–31); Ex.1001 ¶¶ 73–76. Cervantes recognizes
`
`that the prior art solution required a user of the target device to return to an original
`
`received block of text and read the text again along with the new corrected text in
`
`order to understand the correction, id. at 2:29-31 and Fig. 2. Ex.1011 at 24;
`
`Ex.1012 at 31(citing Ex.1012 at 30–31). In other words, Cervantes recognizes and
`
`addresses the same problem subsequently described in the ’689 Patent, Ex.1003 at
`
`1:57–2:5. Ex.1011 at 25 (citing Ex.1012 at 30–31); Ex.1001 ¶¶ 73–76. Thus, one
`
`skilled in the art would have understood that Cervantes’ text correction solution
`
`(which is essentially the same technique as disclosed in the ’689 Patent) was an
`
`obvious design choice for error correction in transmitted text conversations such as
`
`those in Engelke 2–Engelke 1. Id.
`
`4.
`
`The combination of Engelke 2–Engelke 1 and Cervantes
`discloses every element of Claims 1–20
`
`The claim chart in Section IV.D.4.a below shows that the combination of
`
`Engelke 2 (including its incorporation of Engelke 1 by reference) and Cervantes
`
`discloses every element of Claims 1–20 of the ’689 Patent. See also Ex.1001 ¶¶
`
`77–87. Sections IV.D.4.b–IV.D.4.c below the claim chart provide additional
`
`discussion for those claim elements where further analysis is helpful.
`
`a.
`
`Claim Chart for all Challenged Claims
`
`’689 Patent
`[1.0] A
`communication
`
`Combination of Engelke 2–Engelke 1 with Cervantes
`Engelke 2
`“Text captioned telephony, in which a telephone conversation is
`
`22
`
`

`

`’689 Patent
`system
`including:
`
`[1.1] a first
`communication
`device
`specifically
`configured for
`use by a call
`assistant of a
`remote
`captioning
`service
`providing
`captioning
`assistance for a
`hearing-
`impaired user
`durin