Takeaway: If a proposed modification to the prior art in an obviousness ground of unpatentability would result in the elimination of a feature disclosed in the prior art, such a combination may still have been obvious, particularly where that feature is described as being an alternative feature.

In its Final Written Decision, the Board found that Petitioner had established by a preponderance of the evidence that the challenged claims are unpatentable. Prior to the oral hearing, Patent Owner disclaimed challenged claims 1, 2, 7, and 9; therefore, the Final Written Decision did not address these claims.

The ‘801 patent “relates to correcting errors within a text caption system used to facilitate hearing-impaired communication.” The proceeding was instituted with two grounds of unpatentability: (1) claims 1, 2, 7, and 9 as anticipated by Engelke 1; and (2) claims 1, 3-6, and 8-29 as obvious over Engelke 2 and Cervantes.  The first ground was not addressed because Patent Owner had disclaimed those challenged claims.

With respect to claim construction, the Board adopted its construction of the term “block(s) of text” set forth in the Decision to Institute as being the broadest reasonable interpretation. The Board also addressed the pertinent level of skill in the art.  In particular, the Board found that Petitioner had improperly submitted new arguments and evidence regarding the level of skill in the art in a rebuttal declaration of Mr. Steel submitted with its Petitioner’s Reply.  The level of skill set forth in the Petition was not contested by Patent Owner, and therefore, the additional qualifications regarding what was meant by “other attributes” in the original definition were not proper.

Turning to the asserted ground of unpatentability, Patent Owner did not contest that the claimed subject matter was taught by the prior art references. Instead, Patent Owner argued that “(1) because Engelke 2 incorporates by reference Engelke 1, and [Petitioner] relies on Engelke 1 to teach certain claim features recited in these challenged claims, [Petitioner’s] proffered combination of Engelke 2 and Cervantes requires the disclosure of Engelke 1; (2) modifying Engelke 2 with Cervantes’s post transmission error correction would change Engelke 1’s principle of operation, or otherwise render it inoperable for its intended use; and (3) a person of ordinary skill in the art would not modify Engelke 1 with Cervantes’s post transmission error correction.”

Regarding the incorporation by reference argument of Engelke 1 and 2, the Board noted that it was undisputed that Engelke 2 incorporates by reference Engelke 1. The Board also noted that the Petition relied upon both Engelke 1 and 2 to show that certain claim limitations were taught in the prior art and argued that the claims would have been obvious in view of the “solution of the Engelke 1 and Engelke 2 combination.”  Thus, the Board was persuaded by Patent Owner’s argument that modifying Engelke 2 would also require modifying Engelke 1.

The Board then addressed an argument that the reference Cervantes was not analogous art. The Board disagreed, finding that Cervantes is analogous “because its disclosure of correcting errors in an instant message would be reasonably pertinent to the problem faced by the ’801 patent of correcting errors in a text caption.”  Thus, one of ordinary skill in the art would look to Cervantes in modifying the combined Engelke 2 and 1.

Next, the Board was not persuaded by Patent Owner’s argument that the proposed modification would change Engelke 1’s principle of operation or render it unsatisfactory for its intended purpose. In particular, the Board found that Patent Owner’s argument limited Engelke 1’s principle of operation to only pre-transmission error correction, when nothing in the reference limited its disclosure to only pre-transmission correction.  Thus, based on this reason, the Board was not persuaded that the proposed modification was improper.  In addition, the Board found certain of Patent Owner’s arguments related to features the prior art disclosed as being alternatives.  In this regard, the Board noted that the elimination of alternative features would not change the prior art’s principle of operation.  Further, the Board found that Patent Owner’s arguments were not supported by sufficient or credible evidence.

The Board next addressed the argument that Engelke 1 teaches away from the claimed invention. Patent Owner argued that Engelke 1’s teaching related to pre-transmission correction would teach one of ordinary skill in the art away from Cervantes’s teaching related to post-transmission correction.  However, the Board disagreed with the premise that the references were limited to either pre- or post-transmission correction.  Further, the Board found that Patent Owner failed to identify any disclosure in which Engelke 1 “criticizes, discredits, or otherwise discourages using post-transmission error correction to solve the problem of error correction in a text caption communication system.”  Thus, the Board found no teaching away.

Finally, the Board addressed the parties’ Motions to Exclude. The Board did not rely upon the evidence subject to Patent Owner’s Motion to Exclude; therefore, that Motion was dismissed as moot.

Petitioner moved to exclude Patent Owner’s declaration of Mr. Occhiogrosso, arguing that Mr. Occhiogrosso was not qualified to offer expert testimony under FRE 702, and Mr. Occhiogrosso did not identify the level of skill in the art, rendering his testimony unreliable. First, the Board was not persuaded that Mr. Occhiogrosso was unqualified, finding that he “is educated in, and has knowledge of, text caption communication systems even if he has not, for example, worked on a text caption communication system specifically for the deaf or hearing-impaired prior to November 24, 2009.”  With respect to the purported failure to identify the level of skill in the art in the declaration, the Board found this argument to go to the weight of the evidence rather than its admissibility.  Therefore, the Board denied Petitioner’s Motion to Exclude.

Ultratec, Inc. v. CaptionCall, LLC, IPR2013-00288
Paper 63: Final Written Decision
Dated: October 30, 2014
Patent: 8,379,801 B2
Before: Kevin F. Turner, Joni Y. Chang, and Michael R. Zecher
Written by: Zecher
Related Proceeding: Ultratec, Inc. v. Sorenson Communications, Inc., No. 3:13-cv-00346 (W.D. Wisc.)