Takeaway: In order to be a qualified expert pursuant to FRE 702, one does not have to be a person of ordinary skill in the art, but has to be qualified in the pertinent technology itself.

In its Final Written Decision, the Board found that both challenged claims of the ’314 Patent, claims 1 and 2, were unpatentable. The ’314 Patent discusses a way to assist deaf, hard of hearing, or otherwise hearing impaired individuals to use the telephone.  The Board began with claim construction, stating that the claim terms should be given their broadest reasonable interpretation in light of the specification. The Board first construed the term “trained to the voice of the call assistant.” The Board noted that neither party expressly proposed a construction of this term, but that in their discussions of the prior art, the parties articulated different views on how the term should be construed. The Board found that the term does not preclude voice recognition software that is designed or built in advance of implementation at the source code level to the voice pattern of a call assistant.

The Board then reviewed the term “computer programmed to use a voice recognition computer software package trained to the voice of the call assistant.” Again, neither party expressly proposed a construction for this term, but Patent Owner stated that this term requires that the voice recognition software be running on the call assistant’s workstation, as opposed to being remotely or virtually run on or from a server. However, the Board disagreed and found that this limitation was not required.

Next, the Board addressed Patent Owner’s Motion to Exclude the testimony of Petitioner’s expert on the basis that he is not qualified as an expert under FRE 702. Patent Owner argued that to qualify as an expert under FRE 702, one must be a person of ordinary skill in the art, and Petitioner’s expert is not. The Board disagreed, and stated one must not be a person of ordinary skill, but rather “qualified in the pertinent art,” and “pertinent art” is the pertinent technology itself, not a particular subset of individuals who use the pertinent technology. The Board ultimately found that Petitioner’s expert is qualified. Regarding Patent Owner’s further arguments that Petitioner’s expert’s testimony should be excluded because it fails to identify the level of skill in the art, fails to give consideration to what one of ordinary skill would have known, is unsupported and unreliable, and does not consider secondary considerations, the Board found that those go to the weight of the testimony, not the admissibility.

The Board then turned to the ground of unpatentability that claims 1 and 2 are anticipated by Ryan. The Board first discussed whether Ryan is prior art under § 102(e). Patent Owner argued that Ryan is not enabled, and therefore is not prior art. The Board weighed the factors in In re Wands, 858 F.2d 731 (Fed. Cir. 1998), to find that at least the state of the prior art, the breadth of the claims, and the predictability of the telecommunications art support a finding that Ryan is enabled as of June 23, 1997. The Board then examined Patent Owner’s argument that Ryan was not enabled in 1994, the filing date claimed by Ryan. The Board found that enablement is only required by the critical date of the challenged patent, which was June 23, 1997 in this case. The Board also dismissed Patent Owner’s argument citing cases regarding the written description requirement, finding them distinguishable from the enablement question.

Next, the Board analyzed claims 1 and 2. Petitioner relied on inherent disclosure of “a speaker” and a “digital computer connected to a microphone.” Petitioner’s expert explained that a speaker must necessarily be present for an agent to listen to the caller, as is expressly disclosed by Ryan. Further, the expert testified that there must be a digital computer present for Ryan’s relay system to use speech recognition software. The Board noted that a central dispute is whether Ryan discloses “a digital computer. . . programmed to use a voice recognition computer software package trained to the voice of the call assistant to translate the words spoken in voice by the call assistant into a digital text stream.” The Board agreed with Petitioner that this limitation is disclosed by Ryan, and did not find any of Patent Owner’s arguments persuasive, finding that Patent Owner based many of its arguments on the state of the art of the technology in 1994, which is of limited probative value because September 1997 is the date of invention. Therefore, the Board found claims 1 and 2 are anticipated by Ryan.

The Board then examined whether claims 1 and 2 are obvious over Wycherley and Yamamoto. Patent Owner first argued that Yamamoto is not prior art because Petitioner has not provided evidence to show that it was publicly available more than a year prior to September 8, 1997, the effective filing date claimed by the ’314 Patent. The Board had accepted supplemental briefing on the subject. Petitioner presented an interview with Mr. Yamamoto who testified that the reference was presented at a conference in March 1996. Patent Owner moved for exclusion of this evidence because it was not sworn, but the Board found that it could be used because Petitioner is admitting it as a transcript from the district court proceeding, not the inter partes proceeding. Patent Owner then argued that the transcript should be excluded because it is inadmissible hearsay, but the Board agreed that it was admissible under FRE 804(b)(1) as former testimony of an unavailable witness and FRE 807. The Board then found that Yamamoto was publicly accessible in March 1996 because it was presented to 100 to 150 people and included in a book of papers that was available for purchase by the conference attendees.

Turning then to the substance of the ground of unpatentability, the Board stated that Petitioner relied on Wycherley for teaching the speaker, microphone, and modem, and a combination of Wycherley and Yamamoto for teaching “a digital computer connected to the microphone, the computer programmed to use a voice recognition computer software package trained to the voice of call assistant to translate the words spoken in voice by the call assistant into a digital text stream.” The Board agreed with Petitioner, and found that Petitioner had articulated sufficient reasoning to show motivation to combine the references. The Board was not persuaded by Patent Owner’s argument because Patent Owner was not looking at obviousness of the combined references as opposed to the references individually, and the Board did not agree with Patent Owner that Wycherley and Yamamoto teach away from the claimed invention.

The Board next reviewed secondary considerations, specifically substantial praise for the invention, long felt need, commercial success, and failure of others. The Board found that Patent Owner’s Response did not contain any substantive arguments, but merely listed the secondary considerations without exposition. The Board also found that the declarations submitted in support of the secondary considerations arguments did not establish a nexus between the merits of the claimed inventions and the secondary considerations. Therefore, the Board found that Patent Owner did not provide evidence of secondary considerations, and claims 1 and 2 are obvious over Wycherley in view of Yamamoto.

CaptionCall, L.L.C. v. Ultratec, Inc., IPR2013-00540

Paper 78: Final Written Decision

Dated: March 3, 2015

Patent 6,233,314 B1

Before: William V. Saidon, Barbara A. Benoit, and Lynne E. Pettigrew

Written by: Benoit

Related Proceedings: Ultratec, Inc. v. Sorenson Communications, Inc., No. 13-cv-00346 (W.D. Wis.); IPR2013-00541; IPR2013-00542; IPR2013-00543; IPR2013-00544; IPR2013-00545; IPR2013-00549; IPR2013-00550