PUBLIC VERSION – REDACTED
`Trials@uspto.gov
`571-272-7822
`
`Paper 62
`Date: April 21, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MMODAL LLC,
`Petitioner,
`v.
`NUANCE COMMUNICATIONS, INC,
`Patent Owner.
`
`IPR2018-01435
`Patent 6,999,933 B2
`
`Before KEN B. BARRETT, NEIL T. POWELL, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`ZADO, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`

`

`IPR2018-01435
`Patent 6,999,933 B2
`
`I.
`INTRODUCTION
`We have authority to hear this inter partes review under 35 U.S.C.
`§ 6. This Final Written Decision issues pursuant to 35 U.S.C. § 318(a) and
`37 C.F.R. § 42.73. For the reasons discussed herein, we determine that
`MModal LLC (“Petitioner”)1 has shown, by a preponderance of the
`evidence, that claims 9–11 (“challenged claims”) of U.S. Patent
`No. 6,999,933 B2 (Ex. 1001, “the ’933 patent”) are unpatentable. See 35
`U.S.C. § 316(e) (2012); 37 C.F.R. § 42.1(d) (2018).
`A.
`Procedural History
`Petitioner filed a Petition for inter partes review of claims 9–11 of the
`’933 patent. Paper 1 (“Pet.” or “Petition”). Nuance Communications, Inc.
`(Patent Owner”)2 subsequently filed a Preliminary Response. Paper 6
`(“Prelim. Resp.”). On February 19, 2019, the Board entered a decision
`instituting an inter partes review of all claims and all grounds presented in
`the Petition. Paper 7 (“Institution Decision” or “Inst. Dec.”).
`After institution, Patent Owner filed a Response to the Petition,
`Paper 33 (“Response” or “PO Resp.”),3 and Motion to Seal and for Entry of
`a Protective Order, Paper 20. Petitioner thereafter filed a Reply to Patent
`Owner’s Response, Paper 37 (“Pet. Reply” or “Reply”) and Supplemental
`Motion to Seal, Paper 34. Patent Owner filed a Sur-reply to Petitioner’s
`
`1 Petitioner identifies as real parties-in-interest to the Petition MModal LLC,
`New MMI Holdings, Inc., MModal Services, Ltd., and Multimodal
`Technologies, LLC. Pet. 5.
`2 Patent Owner identifies only itself as a real party-in-interest to this
`proceeding. Paper 4, 2.
`3 Patent Owner filed two versions of its Response, a public version
`(Paper 33) and a confidential version (Paper 32). Unless expressly stated
`otherwise, herein we refer to the public version.
`
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`IPR2018-01435
`Patent 6,999,933 B2
`Reply to Patent Owner’s Response. Paper 44 (“Sur-reply”).4 Petitioner filed
`a Sur-sur-reply. Paper 53 (“Sur-sur-reply”).
`An oral hearing was held on November 14, 2019. A transcript of the
`hearing is included in the record. Paper 58 (“Tr.”).
`B.
`Related Matters
`The parties advise that the ’933 patent has been asserted in Nuance
`Communications, Inc. v. MModal LLC, 1:17-cv-01484 (D. Del.). Pet. 5;
`Paper 4, 2.
`
`The ’933 Patent
`C.
`The ’933 patent generally relates to editing transcribed text during
`synchronous playback of a corresponding audio recording. Ex. 1001, code
`(57).
`
`The specification of the ’933 patent (“Specification”) describes known
`speech recognition devices, stating that such known devices
`recognize[] text information from the speech
`information of the dictation by the author sent to it,
`with link information also being established. The
`link information marks for each word of the
`recognized text information, part of the speech
`information for which the word was recognized by
`the speech recognition device.
` The speech
`information of the dictation, the recognized text
`information and the link information is transferred
`from the speech recognition device to the computer
`of the corrector [i.e., an employee of a transcription
`service who manually corrects text information
`recognized automatically with a speech recognition
`
`
`4 Patent Owner filed two versions of its Sur-reply, a public version
`(Paper 44) and a confidential version (Paper 43). Unless expressly stated
`otherwise, herein we refer to the public version.
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`IPR2018-01435
`Patent 6,999,933 B2
`program] for correction of the incorrect words in the
`recognized text information.
`Ex. 1001, 1:19–21, 1:29–39.
`The Specification also describes known correction devices, e.g., the
`computer of the corrector, stating that such known devices
`contain[] synchronous play means, with which a
`synchronous play-back mode is made possible.
`When the synchronous playback mode is active in
`the correction device, the speech information of the
`dictation is played back while, in synchronism with
`each acoustically played-back word of the speech
`information, the word recognized from the played-
`back word by the speech recognition system is
`marked with an audio cursor. The audio cursor thus
`marks the position of the word that has just been
`acoustically played-back in the recognized text
`information.
`Id. at 1:40–50.
`The Specification identifies an alleged problem with known correction
`devices. When a corrector recognizes an incorrect word in the text
`information, the corrector must interrupt or deactivate the synchronous
`playback mode, position a text cursor at the location of the incorrect word by
`means of computer keyboard, and only then may edit the incorrect word. Id.
`at 1:52–55. Thereafter, the corrector may reactivate the synchronous
`playback mode and resume looking for incorrect words. Id. at 1:55–58.
`According to the Specification, known correction devices require a large
`number of manual activities to activate/deactivate synchronous playback and
`to position a text cursor, and that such activities are time consuming. Id. at
`2:7–13. The Specification states that a corrector has a major interest in
`saving time and having the lowest possible manual effort, and would
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`IPR2018-01435
`Patent 6,999,933 B2
`therefore seek to enter corrections with minimal manual activity. Id. at
`1:65–2:6.
`The Specification explains that in known correction devices, during
`synchronous playback, a corrector normally is checking the word in text,
`marked by the audio cursor, corresponding to the acoustic playback of that
`word. However, the text cursor denoting where corrections will occur is
`normally at a position totally different from that of the audio cursor. Id. at
`3:44–51. Namely, the text cursor in the known correction device is at the
`position in the text where the previous incorrect word was corrected. Id. at
`3:51–52. The Specification addresses this problem by providing a
`correction device that synchronizes the text cursor with the audio cursor, so
`that the text cursor is positioned at the location marking the latest word
`acoustically played back. Id. at 3:55–58, 3:63–4:4, 4:7–12, 4:16–21, 4:26–
`30.
`
`An excerpt of Figure 1 of the ’933 patent, reproduced below, is
`illustrative of the display screen of a correction device.
`
`
`Ex. 1001, Fig. 1. The excerpt of Figure 1 shows screen 6 displaying written
`text information TI, text cursor TC, and audio cursor AC. Id. Text cursor
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`Patent 6,999,933 B2
`TC is shown as a box marking a single character, whereas audio cursor AC
`is shown as a box marking an entire word. Id.; see also id. at 5:38–42.
`However, the Specification states that cursors can be displayed, for example,
`by underlining or inverting the character shown at the cursor position, with a
`number of other possibilities for display of a cursor being known. Id. at
`5:34–37. In this embodiment, text cursor TC and audio cursor AC are not
`synchronized. Text cursor TC marks the letter “S” in the word “IS” at the
`top of screen 6, and audio cursor AC marks the word “PEST” at the third
`line of text in screen 6. Id. Fig. 1.
`In connection with the flow chart of Figure 2, the Specification
`describes a method for synchronizing the text cursor and audio cursor. Id. at
`6:45–47, 7:5–21, 7:63–67, 8:8–11, 8:20–27.
`In one embodiment, text cursor TC is static, remaining at the position
`of the last correction, whereas audio cursor AC continues to synchronously
`mark words as they are played back acoustically. Id. at 7:7–11. At the point
`where audio cursor AC marks a word that is incorrect, the corrector presses
`the “Alt+right arrow” combination of keys on a keyboard in order to
`synchronize text cursor TC with audio cursor AC. Id. at 7:11–17.
`In another embodiment, text cursor TC and audio cursor AC are
`continuously and automatically synchronized so that, when editing
`information EI is entered by a corrector, the current position of text cursor
`TC and audio cursor AC are the same. Id. at 7:63–67.
`
`In another embodiment, text cursor TC and audio cursor AC are
`continuously and automatically synchronized, but are offset by a number N
`such that one cursor is N words ahead of the other. Id. at 8:8–11.
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`IPR2018-01435
`Patent 6,999,933 B2
`
`Illustrative Claims
`D.
`Of the challenged claims, claim 9 is independent and claims 10 and 11
`depend therefrom. Claim 9 is reproduced below.
`9.[i] A correction method (16) for the correction of
`incorrect words
`in
`text
`information
`(ETI)
`recognized by a speech recognition device (1) from
`speech information (SD), in which the following
`method steps are executed:
`[ii] reception of the speech information (SD), the
`associated recognized text information (ETI) and
`link information (LI), which marks the part of the
`speech information (SD) at which the word was
`recognized by the speech recognition device (1) for
`each word of the recognized text information (ETI);
`[iii] allowing a synchronous playback mode, in
`which, during the acoustic playback of the speech
`information (SD) the word of the recognized text
`information (ETI), which word is marked by the
`link information (LI) for the speech information
`(SD) just played back is marked synchronously,
`while the word just marked features the position of
`an audio cursor (AC);
`[iv] editing of the incorrect word with a text cursor
`(TC) according to editing information (EI) entered
`by a user, the editing of the incorrect word being
`possible with the synchronous playback mode
`activated in the correction device (10).
`Ex. 1001, 9:45–10:20 (brackets and lettering added).
`E.
`Prior Art and Asserted Grounds of Unpatentability
`Petitioner challenges claims 9–11 of the ’933 patent on the following
`grounds. Pet. 19.
`
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`

`35 U.S.C. §
`103(a)
`103(a)
`
`Reference(s)/Basis
`Schulz5
`Schulz, Sumner6
`
`IPR2018-01435
`Patent 6,999,933 B2
`Claims Challenged
`9–11
`9–11
`
`Petitioner relies on the declaration of Mark Clements, Ph.D., Ex. 1003
`(“Clements Declaration”), and the supplemental declaration of Dr. Clements,
`Ex. 1020 (“Clements Supplemental Declaration”), to support its contentions.
`II. ANALYSIS
`A.
`Legal Principles
`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). The question of
`obviousness is resolved on the basis of underlying factual determinations,
`including (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of skill in
`the art; and (4) when in evidence, objective indicia of non-obviousness
`(i.e., secondary considerations). Graham v. John Deere Co., 383 U.S. 1, 17–
`18 (1966). “To satisfy its burden of proving obviousness, a petitioner cannot
`employ mere conclusory statements. The petitioner must instead articulate
`specific reasoning, based on evidence of record, to support the legal
`conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
`1364, 1380 (Fed. Cir. 2016).
`
`
`5 U.S. Patent 6,360,237 B2, filed Oct. 5, 1998 and issued Mar. 19, 2002.
`Ex. 1004 (“Schulz”).
`6 U.S. Patent Publication 2002/0095291 A1, filed Jan. 12, 2001 and
`published July 18, 2002. Ex. 1010 (“Sumner”).
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`Patent 6,999,933 B2
`Level of Ordinary Skill in the Art
`B.
`Petitioner asserts that a person of ordinary skill in the art in the field
`of the ’933 patent would have been familiar with error correction techniques
`that transcriptionists used to correct misspelled words detected by automatic
`speech recognition correction devices; would have had a working knowledge
`of word processing systems, dictation systems, and synchronous playback
`techniques; and would have gained knowledge of these concepts through a
`mixture of training and work experience, such as by having a Bachelor’s
`degree in computer science, computer communications, electrical
`engineering, or equivalent degree, coupled with two years of experience, or
`by obtaining a Master’s degree in computer science, computer
`communications, or electrical engineering, but having no experience, or by
`having no formal education but experience in computer science or computer
`communications of at least four years. Pet. 13 (citing Ex. 1003 ¶ 21).
`Patent Owner asserts that the ordinarily skilled artisan would have had
`at least a Bachelor of Science degree in computer science, electrical
`engineering, or equivalent, plus two years of professional software
`development experience or graduate work, with the aforementioned
`experience with user interface design. PO Resp. 22 (citing Ex. 2007 ¶ 22).
`The parties agree that a person of ordinary skill in the art would have
`had at least a bachelor’s degree in computer science, electrical engineering
`or other relevant computer-related field, or equivalent, plus two years of
`experience or graduate study. We, therefore adopt this as the level of
`ordinary skill in the art. However, our analysis and the outcome of this
`Decision would not be altered had we adopted either Petitioner’s or Patent
`Owner’s proposed level of ordinary skill in the art.
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`Patent 6,999,933 B2
`We note that the level of skill in the art also may be reflected in the
`prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001);
`In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich,
`579 F.2d 86, 91 (CCPA 1978).
`C.
`
`Claim Construction
`Introduction
`1.
`In an inter partes review filed before November 13, 2018, claim terms
`in an unexpired patent are given their broadest reasonable construction in
`light of the specification of the patent.7 37 C.F.R. § 42.100(b). Consistent
`with that standard, we assign claim terms their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art at the
`time of the invention, in the context of the entire patent disclosure. See In re
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`We interpret the term “cursor,” and in particular, whether the claims
`require a “text cursor” and “audio cursor” to each have its own, separate
`visual indicator on a display screen, or whether a single visual indicator can
`denote the position of both cursors. We need not, and do not, construe
`expressly any other term in this proceeding. See Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`(“Because we need only construe terms ‘that are in controversy, and only to
`the extent necessary to resolve the controversy,’ we need not construe [a
`
`
`7 A recent amendment to this rule does not apply here because the Petition
`was filed before November 13, 2018. See Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018)
`(amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (now
`codified at 37 C.F.R. § 42.100(b) (2019)).
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`IPR2018-01435
`Patent 6,999,933 B2
`particular claim limitation] where the construction is not ‘material to the . . .
`dispute.’” (citations omitted)).
`Discussion
`2.
`Patent Owner proposes we construe the term “cursor” as a “moveable
`indicator on a computer screen.” PO Resp. 23–31. Petitioner responds that
`we should construe the term “cursor” as “a displayable item that tracks a
`location.” Reply 3. Neither party’s construction assists in resolving the
`dispute between the parties. The issue central to this Decision is not whether
`a moveable indicator versus a displayable item must be provided on a
`screen. Rather, the central issue is whether using a single visual indication
`on a display to mark the position of both the audio cursor and the text cursor
`falls within the scope of the language of the challenged claims. For reasons
`given below, we determine it does.
`The ’933 patent explains that when an audio recording is converted to
`text by a speech recognition device, errors in transcription may occur.
`Ex. 1001, 1:19–22. Therefore, a human transcriptionist must review the text
`while listening to audio playback of the audio recording to look for errors.
`Id. To facilitate the search for errors, it was well known to display the text
`on a screen and, during audio playback, highlight with an audio cursor the
`text corresponding to the portion of audio that had just been played back. Id.
`at 1:29–50. Highlighting text words as they are played back is referred to as
`synchronous playback mode. Id. It was also well known to use a text cursor
`to make corrections to text by positioning the text cursor at the incorrect
`word then entering the correction. Id. at 1:51–58. The ’933 patent attests
`there was a problem at the time, namely when a transcriptionist identified an
`incorrect word of text, the process to correct the text was time consuming.
`Id. at 2:7–13. The ’933 patent explains that at the time, a transcriptionist
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`Patent 6,999,933 B2
`would have had to manually stop playback of the audio recording, position
`the text cursor at the incorrect word by means of a computer keyboard or
`mouse, enter the correction, then restart playback of the audio recording. Id.
`at 1:51–2:13. The ’933 patent addresses this problem by automatically
`synchronizing the audio cursor with the text cursor, thereby eliminating the
`need for the transcriptionist to stop audio playback, manually position the
`text cursor to the incorrect word, then restart audio playback. Id. at 3:40–
`4:4, 4:15–24, 4:25–30, 6:35–44. The ’933 patent discloses various
`embodiments for synchronizing the audio cursor and text cursor, including:
`1) synchronizing the position of the text cursor to the position of the audio
`curser upon a transcriptionist entering a combination of keystrokes on a
`keyboard, e.g., “Alt+right arrow,” (id. at 4:5–14, 7:5–21); 2) automatically
`and continuously synchronizing the audio cursor and text cursor so that the
`position of the audio cursor is always the same as the position of the text
`cursor (id. at 3:53–4:4, 4:25–30, 8:61–67); and 3) shifting the position of
`one cursor by N words so that it is always within N words of the other cursor
`(id. at 4:15–24, 8:8–27).
`A portion of Figure 1 of the ’933 patent reproduced below displays
`screen 6 of a speech recognition device, and illustrates the first
`aforementioned embodiment.
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`Patent 6,999,933 B2
`
`
`
`Id., Fig. 1. The portion of Figure 1 reproduced above shows screen 6 of a
`speech recognition device that displays text to a user. In this embodiment,
`two cursors are displayed—text cursor TC (highlighting the letter “S”) and
`audio cursor AC (highlighting the word “PEST”). The ’933 patent explains
`that in Figure 1, “both the text cursor TC and the audio cursor AC are
`visible, with the text cursor TC mostly marking one character and the audio
`cursor AC always an entire word.” Id. at 5:39–43. In this particular
`embodiment, the audio cursor continues to advance in position as the audio
`recording is played back, so that the audio cursor is at the position
`corresponding to the text that has just been played back. Id. at 5:20–25, 7:1–
`21. However, the text cursor remains in the position of where the last edit
`took place. Id. at 7:1–21. The text cursor remains in that position until the
`transcriptionist synchronizes the position of the text cursor to the position of
`the audio cursor by entering a combination of key strokes on a keyboard,
`e.g., “Alt+right arrow.” Id. It should be noted Figure 1 illustrates a non-
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`Patent 6,999,933 B2
`limiting embodiment. As we discussed above, the ’933 patent also
`discloses: 1) automatically and continuously synchronizing the audio cursor
`and text cursor so that the position of the audio cursor is always the same as
`the position of the text cursor (id. at 3:53–4:4, 4:25–30, 8:61–67); and 2)
`shifting the position of one cursor by N words so that it is always within N
`words of the other cursor (id. at 4:5–14, 7:5–21).
`Claim 9 is not limited to any one of the particular embodiments
`disclosed in the ’933 patent, and is broad enough to cover various disclosed
`embodiments. Indeed, claims 10–12, which depend directly from claim 9,
`are directed to various embodiments. Claim 10 is directed an embodiment in
`which the audio cursor and text cursor are synchronized depending on the
`editing information entered. Ex. 1001, 10:21–25 (“A correction method (16)
`as claimed in claim 9 in which the text cursor (TC) is synchronized with the
`audio cursor (AC) or the audio cursor (AC) is synchronized with the text
`cursor depending on the editing information entered (EI).”). Claim 11 is
`directed to an embodiment in which a transcriptionist synchronizes the
`positions of the text cursor and audio cursor by manually actuating a
`key/keys on a keyboard. Id. at 10:26–28 (“A correction method (16) as
`claimed in claim 9 in the cursors (AC, TC) are synchronized by manually
`actuating at least one key.”). Claim 12 is directed to an embodiment in
`which the text cursor is positioned a predefined number of words N away
`from the position of the audio cursor. Id. at 10:29–32 (“A correction method
`(16) as claimed in claim 9 in which the text cursor (TC) is positioned a
`predefined number of words N ahead of the audio cursor.”). In addition, we
`determine claim 9 also encompasses automatically and continuously
`synchronizing the audio cursor and text cursor so that the position of the
`audio cursor is always the same as the position of the text cursor.
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`For one of its unpatentability arguments, Petitioner relies on an
`embodiment in the prior art reference Schulz in which a single visual
`indication, cursor 60, marks the position of both the word being reproduced
`acoustically and the location at which an edit to incorrect text will occur
`(“targeted insertion point”). Pet. 37–40 (citing Ex. 1004, 3:29–37, 5:54–58,
`5:67–6:7, 6:18–26, 6:35–37, Fig. 5a–b); see also Ex. 1004, Figs. 4a–b
`(illustrating the position of cursor 60 in displayed text), 6:18–41 (describing
`the position of cursor 60 as aligning with the word just spoken during audio
`playback), 7:33–50 (describing the position of cursor 60 as the targeted
`insertion point of an edit). With regard to this embodiment, Petitioner
`argues Schulz’s cursor 60 denotes the location of both an audio cursor and a
`text cursor. Reply 11. Therefore, this embodiment of Schulz, in which both
`the position of the targeted insertion point and the position of the
`acoustically reproduced word is the same, raises the issue of whether a
`single visual indication can mark the position of two cursors.8
`In the Institution Decision, we preliminarily found that neither claim 9
`nor the disclosure of the ’933 patent “preclude[s] display of a single visual
`marker or indication that denotes the position of both the audio cursor and
`the text cursor.” Inst. Dec. 24–25. Furthermore, we found the embodiment
`of the ’933 patent in which the audio cursor is always in the same position as
`the text cursor, e.g., Ex. 1001, 3:53–4:4, 4:25–30, 8:61–67, suggests a single
`visual indication could be used to mark the position of both the text cursor
`
`8 Schulz discloses another embodiment in which the targeted insertion point
`and point of audio playback are not the same, but rather they are offset by a
`time delay. Ex. 1004, 11:48–13:51. However, in such embodiment,
`cursor 60 marks only the location of audio playback and there is no separate
`visual marker indicating the targeted insertion point. Id.; PO Resp. 35–38;
`Inst. Dec. 25–30.
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`Patent 6,999,933 B2
`and the audio cursor. Inst. Dec. 25. We encouraged the parties, as a matter
`of claim construction, to address “whether a single visual marker or
`indication may denote the position of both the audio cursor and the text
`cursor.” Id.
`In the Response, Patent Owner takes no position as to whether a
`single visual marker or indication may denote the position of both the audio
`cursor and the text cursor. PO Resp. 23–35. Patent Owner argues
`“[c]ursor 60 does not constitute the claimed text cursor because the claim
`requires two cursors, an audio cursor and a text cursor.” PO Resp. 33.
`Notably, although Patent Owner asserts the claims require two cursors,
`Patent Owner does not squarely address whether a single visual marker can
`denote the position of two cursors. Id. at 33–35. Rather, Patent Owner’s
`argument is that Schulz lacks a second cursor, i.e., text cursor, on the
`grounds that the targeted insertion point in Schulz is not a text cursor
`because it does not allow for editing of an incorrect word (it only allows for
`correcting of grammar, according to Patent Owner) during audio playback.
`Id. at 34–35, 48–50.
`The issue Patent Owner raises—e.g., whether a “text cursor” must be
`able to correct “incorrect words”—is separate from the issue of whether a
`single visual marker or indication may denote the position of both the audio
`cursor and the text cursor. We address these two issues separately.
`Regarding the latter issue, we determine a single visual marker or
`indication may denote the position of both the audio cursor and the text
`cursor. Nowhere does claim 9 recite that two separate and distinct visual
`indications must be displayed. The method of claim 9 recites a step in which
`a word marked with link information “features the position of an audio
`cursor,” but the claimed method does not recite the step of displaying an
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`Patent 6,999,933 B2
`audio cursor. Ex. 1001, 10:9–15. The ’933 patent specification describes
`marking a word with link information in which the word features the
`position of an audio cursor. Id. at 5:67–6:3. This step marks the position at
`which an audio cursor should be displayed, but is not itself the step of
`displaying an audio cursor. Id. (“audio cursor information ACI marks in
`each case the word just played back acoustically and thus the position at
`which the audio cursor AC should be displayed”). Accordingly, claim 9
`recites marking a word that features the position of where an audio cursor
`should be displayed, but claim 9 does not recite the step of displaying an
`audio cursor. Similarly, claim 9 does not refer to displaying a text cursor.
`Rather, claim 9 recites “editing of the incorrect word with a text cursor,”
`without any mention of displaying a text cursor. Id. at 10:16–20.
`Even though claim 9 does not recite the step of displaying an audio
`cursor or a text cursor, we acknowledge the ’933 patent describes the
`benefits of displaying a visual indication of the position of an audio cursor,
`namely to provide a transcriptionist with visual indication of which text
`corresponds to the audio playback. Ex. 1001, 1:29–58. However, we do not
`discern any disclosure in the ’933 patent requiring visual display of a text
`cursor. Moreover, there is no express language in the claims, nor
`requirement in the ’933 patent specification, that a visual indication of the
`position of a text cursor must be separate and distinct from a visual
`indication of an audio cursor. Indeed, neither party identifies any language
`in claim 9 that refers to displaying two separate visual cursor indications.
`On the contrary, the ’933 patent specification and claim 10 contemplate an
`embodiment in which the audio cursor and text cursor are in the exact same
`location, suggesting a single visual indication may denote the position of
`both the audio cursor and text cursor. Ex. 1001, 3:53–4:4, 4:25–30, 7:62–
`
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`Patent 6,999,933 B2
`8:20, 8:61–67, 10:21–25. The ’933 patent does not specify either way
`whether, when the cursors are in the exact same location, one or two visual
`indications are used, and therefore encompasses an embodiment in which a
`single visual indication is used to indicate to the user the location of both
`cursors. Id. Moreover, in the embodiment in which the text cursor is offset
`from the audio cursor by a predetermined number of N words, nothing in the
`’933 patent indicates it is necessary to the invention to provide a separate
`visual indicator to show the position of the text cursor, especially given that
`the text cursor is known to be offset from the audio cursor by N words. Id.
`at 8:1–27. On the contrary, the ’933 patent explains that the text cursor
`“could” be displayed continuously, indicating that it need not be displayed at
`all. Id. at 8:20–27 (“Furthermore, the text cursor TC which in the
`synchronous playback mode is coupled with the audio cursor AC with a shift
`of N words could be continuously displayed . . . .”).
`Petitioner argues that in the embodiment in which two cursors are in
`the same location one of ordinary skill in the art would understand a single
`visual indication may denote the location of two cursors “because one cursor
`would obscure the other if they were separately displayed.” Reply 12.
`Patent Owner responds by generating a hypothetical implementation in
`which an audio cursor and text cursor occurring at the same position are
`denoted by two separate visual indications. Sur-reply 10. In the
`hypothetical implementation, the text cursor is denoted by a red outline of a
`box around text and the audio cursor is denoted by highlighting the text. Id.
`In this manner, the two separate visual indications can be positioned and
`displayed at the same word at the same time. Id. This hypothetical
`implementation does not serve to limit the challenged claims. Even though
`Patent Owner has demonstrated it is possible to provide two separate visual
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`Patent 6,999,933 B2
`indications to denote two text cursors positioned at the same location, this
`does not mean the claims require it. Absent specific language in the claims,
`read in light of the specification, imposing such a requirement, we do not
`read such a requirement into the claims.
`We turn next to the issue Patent Owner raises, i.e., whether the
`targeted insertion point in Schulz is the claimed “text cursor.” Patent Owner
`suggests we should read into the term “text cursor” a requirement that the
`cursor must allow for editing of incorrect words during audio playback. PO
`Resp. 33–35. According to Patent Owner, cursor 60 “cannot constitute the
`claimed ‘text cursor’” on grounds that it “cannot also be used to edit an
`incorrect word during audio playback.” Id. at 34–35. We do not address in
`this section, but rather address below, the merits of Patent Owner’s argument
`that Schulz does not teach cursor 60 being used to edit incorrect words
`during audio playback, because such question goes to what the art teaches
`rather than to claim interpretation. Here, we address only whether we
`should interpret the term “text cursor” to require allowing of editing of
`incorrect words during audio playback. We determine we should not.
`Although we agree claim 9 requires editing of an incorrect word using a text
`cursor with the synchronous playback mode activated, the requirement does
`not change the meaning of the term “text cursor” itself. To the extent
`claim 9 requires allowing for the editing of an incorrect word with the
`synchronous playback mode activated, such requirement exists not because
`the term “text cursor” requires it, but rather because the claim recites
`“editing of the incorrect word with a text cursor . . . the editing of the
`incorrect word being possible with the synchronous playback mode
`activated.” The outcome of this Decision would not be