Trials@uspto.gov
`571-272-7822
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`Paper No. 7
`Filed: November 30, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`——————
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`——————
`ULTRATEC, INC.,
`Petitioner,
`
`v.
`
`SORENSON IP HOLDINGS,
`Patent Owner.
`
`——————
`Case IPR2017-01394
`Patent 9,336,689 B2
`——————
`
`Before SALLY C. MEDLEY, STACEY G. WHITE, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`OGDEN, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`571-272-7822
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`Paper No. 7
`Filed: November 30, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`——————
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`——————
`ULTRATEC, INC.,
`Petitioner,
`
`v.
`
`SORENSON IP HOLDINGS,
`Patent Owner.
`
`——————
`Case IPR2017-01394
`Patent 9,336,689 B2
`——————
`
`Before SALLY C. MEDLEY, STACEY G. WHITE, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`OGDEN, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2017-01394
`Patent 9,336,689 B2
`
`
`On May 9, 2017, Petitioner Ultratec, Inc. (“Ultratec”) filed a Petition
`(“Pet.”) to institute an inter partes review of claims 1–20 of U.S. Patent No.
`9,336,689 B2 (Ex. 1003, “the ’689 patent”) pursuant to 35 U.S.C. § 311 et
`seq. Patent Owner Sorenson IP Holdings (“Sorenson”) filed a Preliminary
`Response (“Prelim. Resp.”) to the Petition on September 6, 2017. We have
`authority under 35 U.S.C. § 314.
`Institution of an inter partes review is authorized by statute when “the
`information presented in the petition . . . and any response . . . shows that
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a);
`see also 37 C.F.R. § 42.108.
`Upon consideration of the Petition, we conclude that Ultratec presents
`information showing there is a reasonable likelihood that Ultratec would
`prevail in establishing the unpatentability of claims 1–20 of the ’689 patent.
`
`I.
`
`BACKGROUND
`THE ’689 PATENT (EX. 1003)
`A.
`
`The ’689 patent is directed “generally to text captioning and more
`specifically to correction of errors within a text caption.” Id. at 1:16–18.
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`Figure 1 of the ’689 patent is reproduced below:
`
`
`
`Figure 1 depicts a communication system 100 configured to facilitate a
`communication session between a hearing-impaired user 140 and a hearing-
`capable user 160. Id. at 3:40–42, 65–67. Communication system 100
`includes communication devices 120 and 190, and relay service 110. Id. at
`3:43–45. The two communication devices 120 and 190 are coupled via
`network 180, and relay service 110 is connected to communication device
`120 via network 170. Id. at 3:45–48. Networks 170 and 180 may be, for
`example, telephone networks such as Public Switch Telephone Networks
`(PSTN) or networks (e.g., DSL, cable, or Ethernet) configured to provide
`communications using digital standards such as Voice Over Internet Protocol
`(VOIP). Id. at 3:48–61.
`In one embodiment of a text-captioned communication session,
`communication device 190, a conventional voice phone, transmits the voice
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`of hearing-capable user 160 through network 180 to communication device
`120, which passes the voice to relay service 110. Id. at 3:67–4:10. Relay
`service 110 then provides interpretative services to hearing impaired user
`140. Id. at 3:62–64. A human “call assistant” located at relay service 110
`facilitates the communication session between hearing-impaired user 140
`and hearing-capable user 160. Id. at 3:64–67.
`Communication device 120 may include a captioned telephone, i.e., a
`telephone or any suitable communication device configured to receive and
`display text captions from the relay service, including transcriptions of the
`conversation sent from relay service 110. Id. at 4:11–21. Communication
`device 120 is also able to interact with communication device 190 to convey
`conventional voice-based dialogue between users 140 and 160. Id. at 4:14–
`17.
`
`The communication system 100 also includes a mechanism for
`correcting errors in the transcriptions sent by relay service 110, as illustrated
`in Figure 6, reproduced below:
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`Figure 6 is a flowchart showing steps in the method 600 of correcting one or
`more errors in a text caption. Id. at 6:54–56. Step 612 includes displaying a
`text caption made up of one or more blocks of text on a first device (e.g.,
`part of relay service 110), and a second device (e.g., part of communication
`device 120). Id. at 6:57–59. Step 602 includes identifying one or more
`errors within a block of text within the text caption. Id. at 6:59–61. Step
`604 includes generating a new block of text that corrects the word associated
`with each identified error. Id. at 6:61–62. Step 606 includes replacing the
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`block of text having one or more errors with the new block of text that
`corrects the word(s) associated with each identified error. Id. at 6:62–64.
`Step 608 includes displaying the new block of text in the text caption on the
`second device. Id. at 6:65–67. Finally, step 610 includes tagging each
`corrected word displayed within the text caption. Id. at 6:67–7:2.
`
`B.
`
`ILLUSTRATIVE CLAIM
`
`Independent claim 1 of the ’689 patent illustrates the subject matter at
`issue in the Petition:
`[1.0] 1. A communication 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 during a real-time communication
`session; and
`[1.2] a second communication device specifically configured
`for use by the hearing-impaired user to provide
`captions displayed to the hearing-impaired user during
`the real-time communication session;
`[1.3] wherein the first communication device comprises:
`a first memory device having a speech recognition
`program stored therein;
`a first input device configured to receive inputs from
`the captioning assistant;
`a first processor operably coupled with the first
`memory device and the first input device,
`the first processor 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;
`generate a text transcription for the audio for the far-
`end user from the voice signal during the real-time
`
`[1.7]
`
`
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`[1.4]
`
`[1.5]
`
`[1.6]
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`[1.8]
`
`[1.9]
`
`[1.10]
`
`communication session using the speech
`recognition program;
`transmit a first block of text of the text transcription
`to the second communication device for display by
`the second communication device during the real-
`time communication session;
`receive the inputs from the call assistant as edits to
`the text transcription; and
`transmit a replacement block of text with the edits to
`the second communication device after
`transmission of the first block to the second
`communication device has already occurred, the
`replacement block of text being an inline
`correction for the first block of text that was
`already received and displayed by the second
`communication device; and
`[1.11] wherein the second communication device comprises:
`second electronic display; and
`second processor operably coupled with the second
`electronic display,
`the second processor configured to:
`receive the voice signal and [sic] during the real-
`time communication session;
`receive the first block of text of the text transcription
`from the remote captioning service;
`cause the first block of text of the text transcription to
`be displayed by the second electronic display as
`captions for the hearing-impaired user during the
`real-time communication session;
`receive the replacement block of text from the remote
`captioning service after the first block of text has
`been received and displayed by the second
`electronic display; and
`cause the replacement block of text to be displayed by
`the second electronic [display?] as an inline
`correction for the first block of text previously
`displayed by the second communication device.
`
`[1.12]
`
`[1.13]
`
`[1.14]
`
`[1.15]
`
`[1.16]
`
`[1.17]
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`Ex. 1003, 7:30–8:22 (bracketed reference numbers added by Petitioner to
`identify claim limitations, see Pet. 22–53). Method claim 13 is also
`independent, and substantially corresponds to the functional limitations of
`claim 1. See id. at 9:10–10:10. Claims 2–12 depend directly or indirectly
`from claim 1, and claims 14–20 depend directly or indirectly from claim 13.
`See id. at 8:23–9:9, 10:11–42.
`
`C. ASSERTED GROUNDS OF UNPATENTABILITY
`
`Ultratec challenges claims 1–20 of the ’689 patent on the following
`grounds:
`References
`Engelke 21 and Cervantes2
`Engelke 2, Cervantes, and Florida
`Policy3
`Engelke 2, Cervantes, and Hutchins4
`Pet. 2–3.
`
`Basis Challenged Claim(s)
`§ 103 1–20
`§ 103 19
`
`§ 103 19
`
`
`1 Engelke et al., US 7,881,441 B2 (filed Mar. 28, 2006, issued Feb. 1, 2011)
`[hereinafter Engelke 2] (Ex. 1004). Engelke 2 incorporates by reference
`Engelke et al., US 6,567,503 B2 (issued May 20, 2003) [hereinafter
`Engelke 1] (Ex. 1005). See Ex. 1004, 5:39–42.
`2 Cervantes et al., US 7,428,702 B1 (issued Sept. 23, 2008) [hereinafter
`Cervantes] (Ex. 1006).
`3 Florida Office of the State Courts Administrator, Title II Guidelines for the
`State Courts System of Florida, Jan. 2009 [hereinafter Florida Policy] (Ex.
`1007).
`4 Jeff Hutchins & Alan Lambshead, Closed Captioning Systems, in National
`Association of Broadcasters Engineering Handbook (10th ed. 2007), at
`1435–1452 [hereinafter Hutchins] (Ex. 1008).
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`D. HISTORY OF RELATED PROCEEDINGS
`
`The ’689 patent issued from U.S. Application No. 14/530,407 (filed
`Oct. 31, 2014), which is a continuation of U.S. Application No. 13/768,918
`(filed Feb. 15, 2013) (now abandoned), which is a continuation of U.S.
`Application No. 12/624,973 (filed Nov. 24, 2009), which issued as U.S.
`Patent No. 8,379,801 (“the ’801 patent”). Ex. 1003, front page. The ’801
`patent was the subject of Ultratec, Inc. v. Sorenson Communications, Inc.,
`No. 3:13-cv-00346 (W.D. Wis.) Ex. 1011, 6. The district court in that case
`granted summary judgment on the ground that all non-disclaimed claims
`would have been obvious as a matter of law over the combination of
`Engelke 2 and Cervantes. Ex. 1011, 6.
`The ’801 patent was also the subject of a prior inter-partes review,
`Ultratec, Inc. v. CaptionCall, L.L.C., Case IPR2013-00288 (PTAB), for
`which the Board issued a Final Written Decision on October 30, 2014,
`holding that Ultratec had shown all non-disclaimed claims of the ’801 patent
`to be unpatentable under 35 U.S.C. § 103(a) over the combination of
`Engelke 2 and Cervantes. Ex. 1011, 2–3, 28.
`
`II. ANALYSIS
`A. CLAIM CONSTRUCTION
`
`The Board interprets a challenged claim using the “broadest
`reasonable construction in light of the specification of the patent in which it
`appears.” 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S.
`Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable
`interpretation standard). Consistent with the broadest reasonable
`construction, there is a “heavy presumption” that a claim term carries its
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`ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288
`F.3d 1359, 1366 (Fed. Cir. 2002). While an inventor may give a term a
`meaning other than its ordinary and customary one, “this must be done with
`reasonably clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994).
`For purposes of this decision, we construe certain claim limitations as
`follows:
`
`
`
`“block of text”
`
`In the Final Written Decision in the inter partes review of the ’801
`patent, the Board determined that the term “block(s) of text” is construed as
`“at least one word, sentence, or line of text.” Ex. 1011, 7. Neither party
`contests this construction for purposes of this Petition, see Pet. 3–4; Prelim.
`Resp. 15–16, and we have reviewed the previous analysis and find it to
`apply here. As such, we adopt the Board’s prior construction for purposes of
`this Petition.
`
`
`
`“a first processor”
`
`Independent claim 1 recites “a first processor.” See, e.g., Ex. 1003,
`7:44. While neither party proposes a specific construction for this term, the
`parties interpret the term differently in their discussions of the prior art.
`Ultratec points to Figure 4 of Engelke 1 as implementing the first processor,
`although Figure 4 may include multiple conventional processors and a
`digital signal processor (DSP). Pet. 25–26 (citing Engelke 1, 4:1–11).
`Sorenson’s arguments presume that two or more processors may not
`constitute “a first processor” as that term is used in claim 1. See Prelim.
`Resp. 28–30; see also Ex. 2001 ¶¶ 52–59.
`
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`As a general rule, the use of the indefinite article “a” means “one or
`more” unless the patentee evinces a clear intent to limit “a” to “one.”
`01 Communique Lab., Inc. v. LogMeIn, Inc., 687 F.3d 1292, 1297 (Fed. Cir.
`2012). On the current record, we find nothing in the Specification to
`persuade us that “a first processor” excludes multiple processors cooperating
`to perform the functions recited in claim 1. We also note that Engelke 1 uses
`the term “electronic processor” as “possibly including one or more
`conventional microprocessors.” Engelke 1, 4:2–4. Engelke 1 is therefore an
`example, in the prior art, of using the term “processor” to include multiple
`processors. This suggests that a person of ordinary skill in the art would
`have interpreted the term “a first processor” to include either a single
`processor or multiple processors.
`Therefore, for the purpose of this Decision, we construe “a first
`processor” to mean “a first set of one or more processors.”
`
`
`
`Other Terms
`
`All other terms in each of the challenged claims need not be construed
`at this time. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in
`controversy, and only to the extent necessary to resolve the controversy.”).
`
`B.
`
`LEVEL OF SKILL IN THE ART
`
`In the inter partes review of the ’801 patent, 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, com-
`puter science, or computer information systems, along with a
`general knowledge and understanding of a text caption commu-
`nication system, including “the electronic generation, correction,
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`and display of transcribed or captioned text that is transmitted to
`and displayed on an electronic device.”
`Ex. 1011, 9–10 (citation omitted). Petitioner Ultratec argues that “[s]ince
`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.” Pet. 9. Sorenson does not dispute that the level of skill in the art is
`the same as in the inter partes review for the ’801 patent, “except that
`someone with less technical education but more experience or more
`technical education but less experience would also have been a skilled
`artisan.” Prelim. Resp. 15 (citing Ex. 2001 ¶¶ 29–32).
`Because Sorenson’s qualified acceptance of the Board’s prior
`determination does not substantially alter the level of ordinary skill in the
`art, we adopt the Board’s prior determination for the purpose of this
`Decision.
`
`C. ASSERTED UNPATENTABILITY OF CLAIMS 1–18 AND 20 OVER
`ENGELKE 2 IN VIEW OF CERVANTES
`
`Ultratec first argues that claims 1–18 and 20 of the ’689 patent are
`unpatentable under 35 U.S.C. § 103(a) as obvious over Engelke 2 (including
`Engelke 1 which is incorporated by reference) in view of Cervantes. Pet.
`11–57. Considering the evidence on this record and Sorenson’s arguments
`to the contrary, we determine that Ultratec presents information showing
`there is a reasonable likelihood that it would prevail.
`We first give an overview of Engelke 2, Engelke 1, and Cervantes,
`and then turn to Ultratec analysis, including the disputed issues raised by
`Sorenson.
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`Prior art
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`
`
`Engelke 2
`
`Engelke 2 generally relates to telephone systems that provide for real-
`time text captioning for the deaf or hard of hearing. Ex. 1004, 1:18–20,
`2:19–24. Figure 1 of Engelke 2 is reproduced below:
`
`
`Figure 1 illustrates a text captioned telephone system 10 that uses private
`branch exchange (PBX) telephone terminal 12 for voice communication
`with external telephone terminal 28. See id. at 4:12–14, 53–67. PBX
`telephone terminal 12 may be connected via an office wall jack to PBX
`network 24 using a proprietary communication protocol. Id. at 4:60–62.
`PBX network 24 communicates with PSTN 26, which, in turn, allows PBX
`telephone terminal 12 to connect to external telephone terminal 28. Id. at
`4:62–67.
`The system also includes desktop computer 14, including display
`screen 16, base unit 18 containing a processor, memory, disk drives, and
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`sound card, and keyboard or other entry device 20. Id. at 4:56–59. Voice
`signals received by computer 14 may be encoded as VOIP signals 52 which
`are sent to server 54 associated with relay service 56. See id. at 5:19–23.
`The connection between desktop computer 14 and server 54 may be through
`an Ethernet network 30 connected via router 32 to the Internet 34, using one
`of a number of well-known wireless standards. See id. at 5:1–4.
`In the reverse direction, relay service 56 may also forward captioned
`text 55 over the Internet 34 to the hearing-impaired caller, which appears in
`a text box on display 16 via a web browser plug-in or instant messaging
`program running on computer 14. See id. at 5:25–30, 6:59–61. Engelke 2
`cites Engelke 1 and incorporates it by reference as an example relay system
`that performs these functions. See id. at 5:37–42.
`In Figure 1 of Engelke 2, base unit 18 receives voice signals from the
`PBX line through a voice signal tap 36, which allows the base unit 18 to
`receive the voice signal through a sound card and then encodes it for
`transmission as VOIP signals 52. See id. at 5:5–23. However, one object of
`the invention according to Engelke 2 is “to take advantage of the ubiquity of
`Internet connections in the office environment to avoid the problems
`normally inherent in PBX proprietary lines.” Id. at 3:37–40. Consistent
`with that object, Engelke 2 discloses the related embodiment in Figure 8,
`which is reproduced below:
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`Figure 8 discloses an advanced Internet appliance 14 or 102, connected to
`Internet 34, that “may be used to replace the need for a telephone.” Id. at
`7:45–48. The Internet appliance may be (1) computer 14, equipped with a
`microphone and headphone assembly 100 for making VOIP calls, or (2)
`VOIP telephone 102, which provides display capabilities on screen 104. Id.
`at 7:47–51.
`
`
`
`Engelke 1
`
`As noted above, Engelke 2 cites Engelke 1 and incorporates it by
`reference. See Ex. 1004, 5:37–42. Engelke 1 generally relates to telephone
`systems that facilitate real-time editing of a transcribed text stream by a
`human call assistant in order to achieve higher accuracy. Ex. 1005, 1:18–21.
`In particular, Engelke 1 describes a voice relay used with a caption
`telephone that allows a call assistant to receive a voice signal and re-voice it
`to a computer speech recognition program, and to review the transcribed text
`
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`on a display terminal. Id. at 2:29–34. Figure 1 of Engelke 1 illustrates this
`relay system, as reproduced below:
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`
`
`As shown in Figure 1, relay 10 permits hearing-capable user 12 to converse
`with hearing-impaired user 14 by allowing hearing-capable user 12 to
`receive voice signal 16 from the mouthpiece of handset 13. Id. at 2:66–3:2.
`Relay 10 processes voice signal 16 to produce text stream signal 20, which
`is sent to user terminal 22 and displayed to hearing-impaired user 14. Id. at
`3:2–5. Hearing-impaired user 14 may also receive modified voice signal 24
`at the earpiece of handset 26. Id. at 3:5–7. Hearing-impaired user 14 may
`reply using keyboard 28, or vocally into the mouthpiece of handset 26 to
`produce voice signal 30, which is transmitted directly to the earpiece of
`handset 13. Id. at 3:8–13.
`Engelke 1 also discloses that call assistant 40 may receive voice signal
`16 from hearing-capable user 12, and re-voice it by speaking the same words
`into the mouthpiece of headset 38. Id. at 3:38–40. Speech processor system
`44 receives spoken words 42 from call assistant 40 and, thereafter, provides
`an editing text signal 46 to call assistant display 48 that indicates a
`transcription of the call assistant’s voice, as well as other control outputs.
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`Id. at 3:40–44. Speech processor system 44 may also receive input from call
`assistant keyboard 50. Id. at 3:44–45.
`Figure 4 of Engelke 1 is reproduced below:
`
`
`Figure 4 is a generalized block diagram for the computer system 18 in
`Figure 1 of Engelke 1. See id. at 2:41–44, 4:1. The computer 18 may
`include an electronic processor 56, possibly including one or more
`conventional microprocessors and a digital signal processor joined on a bus
`58 with memory 60. Id. at 4:1–4. The bus may communicate with several
`analog to digital converters 62 and 64 providing for inputs and outputs,
`respectively. Id. at 4:4–7. Among these inputs are voice signals 16, 30, and
`42, and among these outputs are voice signals 17, 24, and 30, and pre-edited
`editing text signal 46. Id. at 4:6–11.
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`Figure 3 of Engelke 1 is reproduced below:
`
`
`This figure illustrates the call assistant display 48, from the perspective of
`call assistant 40, see id. at 2:39–40, 4:58–59. As shown in the figure, call
`assistant display 48 displays text within window 112 as lines 114. Id. at
`5:47–49. Lines 114 organize individual text words 116 from left to right,
`and the lines scroll upward and eventually off window 112. Id. at 5:49–53.
`Preserving the integrity of the lines allows call assistant 40 to easily track the
`location of any individual word 116 during the scrolling action. Id. at 5:53–
`56.
`
`Engelke 1 discloses that call assistant 40 may initiate editing simply
`by touching one of the words in window 112 as it is displayed. Id. at 6:14–
`18. Call assistant 40 may touch the word using a touch screen, or by using a
`conventional control device. Id. at 6:18–21. The touched word 132 is
`flagged and placed in a queue. Id. at 6:21–22. Call assistant 40 then may
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`voice a new word to replace the flagged word, type in a new word, or use
`another conventional text entry technique to replace the flagged word. Id. at
`6:25–30. According to Engelke 1, the mapping of words to spatial locations
`by window 112 allows each word to be identified and replaced quickly while
`it is being moved dynamically through the queue. Id. at 6:30–33.
`
`
`
`Cervantes
`
`Cervantes generally relates to a system that allows users in an instant
`messaging environment to dynamically edit previous messages that have
`been exchanged, and resend the edited version of the message to target
`users. Ex. 1006, 1:42–45. This allows the sending user to modify the
`original message when a mistake has been made. Ex. 1006, 2:39–42.
`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 2:42–45. The corrected
`word(s) may be highlighted, colored, underlined, or otherwise re-formatted
`to notify the other user of the correction. Id. at 2:44–46. The second user
`automatically sees these edits in a new message, or the original message
`dynamically changes to a new, edited version with the noted changes. Id. at
`2:55–60.
`
`
`
`Ultratec’s Contentions
`
`Ultratec uses claim charts to explain its contention, on a limitation-by-
`limitation basis, that the combination of Engelke 2 (including Engelke 1)
`and Cervantes teaches the claimed subject matter. Pet. 22–53; see also id. at
`54–57 (discussing the limitations of claims 18 and 19 in more detail).
`Petitioner also provides a rationale for why a person of ordinary skill in the
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`art would have combined the teachings of Engelke 2 (including Engelke 1)
`with the teachings of Cervantes. See id. at 20–22 (citing the Final Written
`Decision in the prior inter partes review of the ’801 patent which involved
`the same prior art combination, Ex. 1011).
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`Rationale for Combining the References
`
`Ultratec’s rationale for combining Engelke 2–Engelke 1 with
`Cervantes is consistent with the rationale the Board found persuasive in the
`Final Written Decision of the inter partes review of the ’801 patent. Ex.
`1011, 14–25. As Sorenson correctly points out, see Prelim. Resp. 12–15,
`there are substantial differences between the claims of the ’689 patent and
`the claims that were at issue in the prior proceeding. See Prelim. Resp. 12–
`15. However, the limitations relating to correcting and displaying text
`captions (limitations 1.10, 1.16, and 1.17) are substantially similar in claim 1
`of the ’689 patent to corresponding limitations in claim 1 of the ’801 patent,
`in that both claims involve replacing a block of text in a text caption with a
`corrected block of text. Compare Pet. 28–29, with Ex. 1021, 7:30–40.
`Sorenson does not rebut Ultratec’s rationale for combining Engelke 2
`(including Engelke 1) with Cervantes; however, Sorenson argues that the
`Petition does not “allege that a skilled artisan would have modified the
`hardware disclosed in Engelke 2–Engelke 1, or otherwise replace it with
`hardware from Cervantes.” Prelim. Resp. 22 (citing Pet. 20–22). This
`argument is not persuasive because Ultratec’s contention is that a person of
`ordinary skill in the art would have had reason to substitute the error
`correction solution of Cervantes for the error correction solution of Engelke
`2 and Engelke 1. Pet. 21–22. The error correction solution disclosed in
`Cervantes takes place in an “instant messaging environment” using general
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`purpose hardware. See Ex. 1006, 1:60–61, 4:1–9. Sorenson has not pointed
`to any evidence suggesting that this substitute solution may not be run on the
`same processors used by the error-correction solution in Engelke 2–Engelke
`1.
`
`For the above reasons, Ultratec’s rationale for combining Cervantes
`with Engelke 2–Engelke 1 is persuasive based on this record.
`
`
`
`“First Processor” Limitations
`
`Claim 1 recites a “first communication device” corresponding to relay
`service 110 in Figure 1 of the ’689 patent. See Ex. 1003, 7:31–34, 39–43.
`As part of this first communication device, limitation 1.5 recites “a first
`processor operably coupled with the first memory device and the first input
`device.” Id. at 7:44–45; Pet. 25. Limitations 1.6–1.10 recite various
`functions that the first processor is configured to perform. See Ex. 1003,
`7:45–67; Pet. 26–28.
`Ultratec identifies the “first processor” as the electronic processor 56
`depicted in Figure 4 of Engelke 1, with “electronic processor 56 possibly
`including one or more conventional microprocessors and a digital signal
`processor joined on a bus 58 with memory 60.” Pet. 25–26 (citing Engelke
`1, 4:1–11; bold type as in original). Ultratec also identifies limitations 1.6–
`1.9 in Engelke 1, limitations 1.6 and 1.8 in Engelke 2, and limitation 1.10 in
`Cervantes as functions performed by the first processor. Id. at 16–29.
`Sorenson argues that Ultratec does not identify where each of the
`above limitations is performed in the prior art. See Prelim. Resp. 22–23, 26–
`27. In particular, Sorenson argues that Ultratec points to “relay computer
`18” in Engelke 1 as performing limitations 1.5–1.10, but computer 18
`contains multiple processors, and Ultratec does not identify which processor
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`performs all the functions of the first processor. See Prelim. Resp. 28–29.
`Sorenson presents evidence that limitation 1.6 would have been performed
`solely in a DSP, that limitations 1.7 and 1.9 would have been performed by a
`conventional microprocessor and a DSP working together, and that
`limitations 1.8 and 1.10 would have been performed solely in a conventional
`microprocessor. See id. at 29–34; see also Ex. 2001 ¶¶ 52–59.
`Engelke 1 discloses that the functions of the relay computer 18 “may
`be implemented by an electronic processor 56 possibly including one or
`more conventional microprocessors and a digital signal processor.” Ex.
`1005, 4:1–4. Sorenson appears to read this passage as requiring (1) an
`electronic processor 56 that may include multiple conventional
`microprocessors, and (2) a DSP. See, e.g., Prelim. Resp. 28–29. However,
`we note that Figure 4 includes a single box for processor 56 and no separate
`box indicating a DSP. We also note that the above passage contains no
`comma after the reference to “conventional microprocessors,” thus
`suggesting that “one or more conventional microprocessors and a digital
`signal processor,” are all included within electronic processor 56. Thus,
`based on this record, we determine that a person of ordinary skill in the art
`would have interpreted the above passage in Engelke 1 as teaching that the
`processing function in Figure 4 could be performed by a single electronic
`processor 56.
`Even if Engelke 1 teaches that multiple processors are needed to
`perform the functions of limitations 1.5–1.10, we construe “a first processor”
`to mean “a first set of one or more processors.” See supra. Thus, whether
`Engelke 1 implements limitations 1.5–1.10 separately in different processors
`or in multiple processors working together, for purposes of institution we are
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`persuaded that Engelke 1 discloses each recited operation of “a first
`processor” as so construed.
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`“Second Processor” Limitations
`
`Claim 1 recites a “second communication device” corresponding to
`communication device 190 in Figure 1 of the ’689 patent. See Ex. 1003,
`7:35–38, 8:1–22. As part of the second communication device, limitation
`1.12 recites “second processor operably coupled with the second electronic
`display.” Id. at 8:3–4; Pet. 29. Limitations 1.13–1.17 recite various
`functions that the second processor is configured to perform. See Ex. 1003,
`8:4–22; Pet. 29–34.
`Ultratec identifies the “second processor” as the “processor” within
`base unit 18 of desktop computer 14 in Figure 1 of Engelke 2. See Pet. 29;
`Ex. 1004, 4:57–58 (“a base unit 18 (including a processor, memory, disk
`drives and importantly a sound card)”). Ultratec also identifies limitation
`1.13 in Engelke 2, limitations 1.14 and 1.15 in both Engelke 1 and Engelke
`2, and limitations 1.16 and 1.17 in Cervantes as functions performed by the
`second processor. Id. at 29–34. In particular, Ultratec argues that as per
`limitation 1.13, the second processor in Engelke 2 is configured to receive
`voice signals because Engelke 2 discloses that the sound card in base unit 18
`receives a voice signal from tap 36 on the PBX telephone line. See Pet. 29–
`39.
`
`Sorenson argues that Ultratec does not identify where each of the
`above limitations is performed in the prior art. See Prelim. Resp. 22–23, 26–
`27. In particular, Sorenson argues that according to Engelke 2, limitation
`1.13 is only performed by the sound card in base unit 18, and not the
`“processor,” which is a separate component. Prelim. Resp. 34–35. Sorenson
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`further argues that the sound card could not be the second processor, because
`it is not “operably coupled with the second electronic display” as required by
`limitation 1.12. Id. at 36–37; see also Ex. 1003, 8:3–4.
`The sound card in Engelke 2 is the component that directly receives
`the analog voice signal from tap 36 on the PBX line. However, limitation
`1.13 does not require that the second processor directly receives the voice
`signal, only that it is configured to “receive the voice si
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