Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 63
`
`
` Entered: October 30, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`ULTRATEC, INC.,
`Petitioner,
`
`v.
`
`CAPTIONCALL, L.L.C.,
`Patent Owner.
`____________
`
`Case IPR2013-00288
`Patent 8,379,801 B2
`____________
`
`
`Before KEVIN F. TURNER, JONI Y. CHANG, and
`MICHAEL R. ZECHER, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`Ultratec Exhibit 1011
`Ultratec v Sorenson IP Holdings Page 1 of 29
`
`

`

`IPR2013-00288
`Patent 8,379,801 B2
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`
`I. INTRODUCTION
`
`
`
`Petitioner, Ultratec, Inc. (“Ultratec”), filed a Petition requesting an
`
`inter partes review of claims 1–29 of U.S. Patent No. 8,379,801 B2 (Ex.
`
`1001, “the ’801 patent”). Paper 2 (“Pet.”). Patent Owner, CaptionCall,
`
`L.L.C.1 (“CaptionCall”), did not file a Preliminary Response. Upon
`
`reviewing the information presented in the Petition, the Board determined
`
`that there was a reasonable likelihood that Ultratec would prevail in
`
`challenging claims 1–29 as unpatentable under 35 U.S.C. §§ 102(b)
`
`and 103(a). Pursuant to 35 U.S.C. § 314, the Board instituted this
`
`proceeding on November 13, 2013, as to these claims of the ’801 patent.
`
`Paper 14 (“Dec.”).
`
`During this proceeding, CaptionCall timely filed a Patent Owner
`
`Response (Paper 24, “PO Resp.”), and Ultratec timely filed a Reply to the
`
`Patent Owner Response (Paper 34, “Pet. Reply”). Shortly before an oral
`
`hearing was held on July 10, 2014 (Paper 62), 2 CaptionCall filed a notice
`
`indicating that it disclaimed claims 1, 2, 7, and 9 of the ’801 patent (Paper
`
`52; Ex. 2007). As a result, the patentability of claims 1, 2, 7, and 9 will not
`
`be addressed further herein.
`
`We have jurisdiction under 35 U.S.C. § 6(c). This decision is a final
`
`written decision under 35 U.S.C. § 318(a) as to the patentability of claims
`
`3–6, 8, and 10–29 of the ’801 patent. Based on the record before us,
`
`
`
`1 On July 15, 2013, Patent Owner filed an updated mandatory notice
`indicating that Sorenson Communications, Inc., assigned its interest in the
`’801 patent to CaptionCall, L.L.C. Paper 13, 1.
`2 Paper 62 is a transcript of the oral hearing.
`
`2
`
`Ultratec Exhibit 1011
`Ultratec v Sorenson IP Holdings Page 2 of 29
`
`

`

`IPR2013-00288
`Patent 8,379,801 B2
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`Ultratec has demonstrated by a preponderance of the evidence that these
`
`claims are unpatentable.
`
`A. The’801 Patent
`
`The’801 patent generally relates to correcting errors within a text
`
`caption system used to facilitate hearing-impaired communication.
`
`Ex. 1001, 1:6–8. Figure 1 of the ’801 patent, reproduced below, illustrates
`
`hearing-impaired communication system 100. Id. at 2:45–47, 3:38–41.
`
`
`
`As shown in Figure 1 of the ’801 patent, communication system 100
`
`includes communication device 120, communication device 190, and relay
`
`service 110. Ex. 1001, 3:41–43. 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 3:43–46. Relay
`
`service 110 may be configured to provide interpretative services to hearing-
`
`impaired user 140. Id. at 3:60–62. 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 3:62–65.
`
`Communication device 190 may include a conventional telephone that
`
`hearing-capable user 160 uses to interact with communication device 120.
`
`Ex. 1001, 3:65–4:3. The voice of hearing-capable user 160 may be
`
`3
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`IPR2013-00288
`Patent 8,379,801 B2
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`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 4:3–8. 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 4:9–12. 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. Ex. 1001, 4:15–19. 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 4:12–15.
`
`Figure 6 of the ’801 patent, reproduced below, illustrates method 600
`
`for correcting one or more textual errors within a text caption. Ex. 1001,
`
`2:56–58; 6:54–57.
`
`
`
`4
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`IPR2013-00288
`Patent 8,379,801 B2
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`
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`As shown in Figure 6 of the ’801 patent, step 612 includes displaying
`
`a text caption made up of one or more blocks of text on a first device, e.g., a
`
`device located at relay service 110, and a second device, e.g.,
`
`communication device 120. Ex. 1001, 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 block of text having one or more errors with the
`
`new block of text that corrects the word(s) associated with each identified
`
`error. Ex. 1001, 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
`
`
`
`Of the challenged claims remaining in this proceeding, claims 14, 17,
`
`25, and 29 are independent claims. Claims 3–6 and 8 directly or indirectly
`
`depend from independent claim 1, claims 10–13 directly depend from
`
`independent claim 9, claims 15 and 16 directly or indirectly depend from
`
`independent claim 14, claims 18–24 directly or indirectly depend from
`
`independent claim 17, and claims 26–28 directly depend from independent
`
`claim 25. Independent claim 14 is illustrative of the ’801 patent and is
`
`reproduced below:
`
`14. A computer-readable media storage medium
`
`storing instructions that when executed by a processor cause the
`processor to perform a method for providing error correction in
`a text caption, the method comprising:
`
`displaying a text caption representing a text transcription
`of a voice signal transmitted between a first device and a
`
`5
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`Ultratec Exhibit 1011
`Ultratec v Sorenson IP Holdings Page 5 of 29
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`

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`IPR2013-00288
`Patent 8,379,801 B2
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`
`second device, the text caption including at least one block of
`text; and
`
`displaying another block of text within the text caption
`on at least one of the first device and the second device by
`replacing the at least one block of text by the another block of
`text at a location of the at least one block of text within the text
`caption.
`
`Ex. 1001, 8:32–44.
`
`C. Related Proceeding
`
`
`
`CaptionCall indicates that it asserted the ’801 patent against Ultratec
`
`in a patent infringement counterclaim in Ultratec, Inc. v. Sorenson
`
`Communications, Inc., No. 3:13-cv-00346, which was filed in the United
`
`States District Court for the Western District of Wisconsin. Paper 13, 1.
`
`After the oral hearing in this proceeding was held on July 10, 2014, Ultratec
`
`filed, separately as an exhibit, a copy of an opinion and order from that
`
`district court proceeding granting Ultratec’s Motion for Summary Judgment
`
`on the grounds that claims 3–6, 8, and 10–29 would have been obvious as a
`
`matter of law over the combination of U.S. Patent No. 7,881,441 B2
`
`(“Engelke 2”) and U.S. Patent No. 7,428,702 B1 (“Cervantes”). Ex. 1024.
`
`D. Prior Art Relied Upon
`
`
`
`Ultratec relies upon the following prior art references:
`
`US 6,567,503 B2 May 20, 2003
`
`
`
`Ex. 1006
`
`Engelke
`(“Engelke 1”)
`Engelke
`(“Engelke 2”)
`Cervantes
`
`
`
`
`
`US 7,881,441 B2 Feb. 1, 2011
`
`
`
`(filed Mar. 28, 2006)
`US 7,428,702 B1 Sept. 23, 2008
`
`
`E. Instituted Grounds of Unpatentability
`
`Ex. 1008
`
`Ex. 1009
`
`We instituted this proceeding based on the asserted grounds of
`
`unpatentability set forth in the table below.
`
`6
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`Ultratec Exhibit 1011
`Ultratec v Sorenson IP Holdings Page 6 of 29
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`

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`IPR2013-00288
`Patent 8,379,801 B2
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`Challenged Claims
`
`Basis
`
`Reference(s)
`
`1, 2, 7, and 9
`
`§ 102(b)
`
`Engelke 13
`
`1, 3–6, and 8–29
`
`§ 103(a)
`
`Engelke 2 and Cervantes
`
`
`
`II. ANALYSIS
`
`A. Claim Construction
`
`
`
`In an inter partes review, we construe a claim by applying the
`
`broadest reasonable interpretation in light of the specification of the patent in
`
`which it appears. 37 C.F.R. § 42.100(b); Office Patent Trial Practice Guide,
`
`77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).
`
`1. “block(s) of text” (claims 3–5, 10, 11, 13–17, 19, and 24–29)
`
`
`
`In its Petition, Ultratec proposes that the claim phrase “block(s) of
`
`text” should be construed as “at least one word, sentence, or line of text.”
`
`Pet. 2 (citing Ex. 1001, 5:13–16, 60–63; 6:14–16, 29–37; figs. 3, 4). We
`
`adopted this claim construction in our Decision to Institute because it was
`
`the broadest reasonable interpretation consistent with the ordinary and
`
`customary meaning of “block(s) of text,” as would be understood by one
`
`with ordinary skill in the art in the context of the ’801 patent. Dec. 8–9.
`
`CaptionCall does not propose an alternative claim construction in its Patent
`
`Owner Response. We discern no reason to alter the claim construction
`
`proposed by Ultratec its Petition, and adopted by us in the Decision to
`
`Institute, for this Final Written Decision.
`
`
`
`3 We no longer need to address this ground of unpatentability because, as we
`explained previously, CaptionCall disclaimed claims 1, 2, 7, and 9. Paper
`52; Ex. 2007.
`
`7
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`IPR2013-00288
`Patent 8,379,801 B2
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`B. The Level of Skill in the Art
`
`In determining the level of skill in the art, various factors may be
`
`considered, including “type of problems encountered in the art; prior art
`
`solutions to those problems; rapidity with which innovations are made;
`
`sophistication of the technology; and educational level of active workers in
`
`the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing
`
`Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962
`
`(Fed. Cir. 1986)). In its Petition, Ultratec asserts that a person with ordinary
`
`skill in the art would be an individual that possesses, “among other
`
`attributes, familiar[ity] with the electronic generation, correction, and
`
`display of transcribed or captioned text that is transmitted to and displayed
`
`on an electronic device.” Pet. 2 (citing Ex. 1001, 3:11–19; 5:5–11). In its
`
`Patent Owner Response, CaptionCall does not contest Ultratec’s assertion in
`
`this regard.
`
`Notwithstanding Ultratec’s uncontested assertion regarding the level
`
`of skill in the art, Ultratec presents the Rebuttal Declaration of James. A.
`
`Steel, Jr. (Ex. 1021) with its Reply to expand upon what it meant by “other
`
`attributes” a witness must possess before he or she is qualified to offer
`
`testimony on the subject matter of the ’801 patent. This new argument and
`
`evidence are improper because they do not respond to any argument raised
`
`in the Patent Owner Response. 37 C.F.R. § 42.23(b) (“A reply may only
`
`respond to arguments raised in the corresponding . . . patent owner
`
`response.”). As discussed below, even considering Mr. Steel’s Declaration,
`
`we do not agree with Ultratec’s description of the level of skill in the art.
`
`In his Rebuttal Declaration, Mr. Steel testifies that a person with
`
`ordinary skill in the art would be an individual that possesses an
`
`8
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`IPR2013-00288
`Patent 8,379,801 B2
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`undergraduate degree in one or more of the following areas: electrical
`
`engineering, computer science, or computer information systems. Id. at 7.
`
`Mr. Steel further testifies that a person with ordinary skill in the art would
`
`have a general knowledge of programming software applications for real-
`
`time transcriptions, as well as a general knowledge and understanding of the
`
`telecommunications needs of the deaf and hearing-impaired and the design
`
`goals and limitations of existing telecommunications technology for the deaf
`
`and hearing-impaired. Id.
`
`We credit Mr. Steel’s testimony regarding the education level of a
`
`person with ordinary skill in the art, but do not credit his testimony that a
`
`person with ordinary skill in the art must possess a general knowledge and
`
`understanding of the telecommunication needs, design goals, and limitations
`
`of text caption communication systems specifically for the deaf or hearing-
`
`impaired. The ’801 patent purportedly addresses the problem of correcting
`
`errors within a transcript displayed on a text caption communication system.
`
`See Ex. 1001, 1:38–64. Although the ’801 patent discusses this problem in
`
`the context of displaying a corrected transcript on, for example, a text
`
`captioned telephone for a deaf or hearing-impaired user, there is no
`
`indication that the problem must be narrowly focused such that it precludes
`
`correcting the transcript for a specific type of recipient. In our view, the
`
`problem addressed by the ’801 patent is correcting errors in a transcript
`
`displayed in a text caption communication system, regardless of whether the
`
`prospective recipient of the corrected transcript is deaf or hearing-impaired.
`
`In summary, 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
`
`9
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`Ultratec v Sorenson IP Holdings Page 9 of 29
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`IPR2013-00288
`Patent 8,379,801 B2
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`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.”
`
`Pet. 2 (quoting Ultratec’s uncontested assertion regarding the level of skill in
`
`the art).
`
`C. 35 U.S.C. § 103(a) Ground of Unpatentability Based on the
`Combination of Engelke 2 and Cervantes
`
`In its Petition, Ultratec contends that claims 3–6, 8, and 10–29 are
`
`unpatentable under 35 U.S.C. § 103(a) over the combination of Engelke 2
`
`and Cervantes. Pet. 19–46. In support of this asserted ground of
`
`unpatentability, Ultratec relies upon claim charts to explain how the
`
`proffered combination teaches the claimed subject matter recited in each of
`
`these challenged claims. Id.
`
`In its Patent Owner Response, CaptionCall does not contest that the
`
`combination of Engelke 2 and Cervantes teaches the claimed subject matter
`
`recited in claims 3–6, 8, and 10–29, but instead presents a number of
`
`arguments based on the following notions: (1) because Engelke 2
`
`incorporates by reference Engelke 1, and Ultratec relies on Engelke 1 to
`
`teach certain claim features recited in these challenged claims, Ultratec’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. PO Resp. 21–56.
`
`10
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`IPR2013-00288
`Patent 8,379,801 B2
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`
`
`We begin our analysis with the principles of law that generally apply
`
`to a ground of unpatentability based on obviousness, followed by brief
`
`discussions of Engelke 2 and Cervantes, and then we address each of
`
`CaptionCall’s arguments in turn.
`
`1. 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). 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) where in evidence, so-called secondary considerations.
`
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We also recognize
`
`that prior art references must be “considered together with the knowledge of
`
`one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480
`
`(Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)).
`
`We analyze the ground of unpatentability based on the combination of
`
`Engelke 2 and Cervantes with the principles identified above in mind.
`
`2. Engelke 2
`
`
`
`Engelke 2 generally relates to telephone systems that provide real-
`
`time text captioning for an individual who is hearing-impaired. Ex. 1008,
`
`1:18–20. Figure 1 of Engelke 2, reproduced below, illustrates text captioned
`
`telephone system 10 that uses private branch exchange (“PBX”) telephone
`
`terminal 12 and desk top computer 14. Id. at 4:12–14, 53–56.
`
`11
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`IPR2013-00288
`Patent 8,379,801 B2
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`
`
`As shown in Figure 1 of Engelke 2, desk top 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. Ex. 1008, 4:56–59.
`
`PBX telephone terminal 12 may be connected via an office wall jack 22 to
`
`PBX network 24 using a proprietary communication protocol. Id. at 4:60–
`
`62. PBX network 24 communicates with public switched telephone network
`
`26, which, in turn, allows PBX telephone terminal 12 to connect to external
`
`telephone terminal 28. Id. at 4:62–67. Desk top computer 14 may connect
`
`to any one of the following: (1) Ethernet network 30 through an Ethernet
`
`card; (2) Internet 24 by passing local router 34; or (3) local router 32 by
`
`using one of a number of well-known wireless standards. Ex. 1008, 5:1–4.
`
`
`
`In one embodiment, 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 desk
`
`top computer 14. Ex. 1008, 6:59–61. 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.
`
`
`
`
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`12
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`3. 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. 1009, 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. 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. Ex. 1009, 2:28–31.
`
`
`
`The invention disclosed in Cervantes purportedly solves this problem
`
`by allowing the first user to modify the original message when a mistake has
`
`been made. Ex. 1009, 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 (“post-
`
`transmission error correction”). 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. 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. Ex. 1009, 2:55–60.
`
`
`
`
`
`13
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`4. Ultratec’s Asserted Ground of Unpatentability Based on the
`Combination of Engelke 2 and Cervantes Requires the
`Disclosure of Engelke 1
`
`In its Petition, Ultratec contends that Engelke 2 incorporates by
`
`
`
`reference the entire disclosure of Engelke 1. Pet. 20. Ultratec then relies on
`
`the disclosure of Engelke 1 to teach certain claim features recited in claims
`
`3–6, 8, and 10–29. See, e.g., id. at 23, 29, 32–33, 35–38, 41–42. In its
`
`Patent Owner Response, CaptionCall contends that, because Engelke 2
`
`incorporates by reference Engelke 1, and Ultratec relies on the disclosure of
`
`Engelke 1 to teach certain claim features recited in these challenged claims,
`
`a proposed modification of Engelke 2 would require a modification to
`
`Engelke 1. PO Resp. 22–25.
`
`
`
`As an initial matter, it is undisputed that Engelke 2 incorporates by
`
`reference Engelke 1. Ex. 1008, 5:37–42. Indeed, Ultratec relies upon
`
`specific teachings in Engelke 1 to explain how the combination of Engelke 2
`
`and Cervantes renders obvious certain claim features recited in independent
`
`claims 14, 17, 25, and 29. For instance, Ultratec relies upon both Engelke
`
`1’s system that enables communication between hearing-capable user 12 and
`
`hearing-impaired user 14, and Engelke 2’s system that enables text
`
`communication between a hearing-capable user and a hearing-impaired user
`
`via an Internet connection, to teach the “displaying a text caption
`
`representing a text transcription of a voice signal transmitted between a first
`
`device and a second device,” as recited in independent claim 14. Pet. 29–30
`
`(citing Ex. 1006 1:18–21, 33–38; Ex. 1008, Abstract, 6:1–9, 5:19–30, figs. 1,
`
`3). To justify its conclusion of obviousness regarding this claim feature
`
`recited in independent claim 14, Ultratec asserts that it would have been
`
`14
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`IPR2013-00288
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`obvious to one with ordinary skill in the art to substitute the error correction
`
`solution taught by Cervantes for the error correction solution of the Engelke
`
`1 and Engelke 2 combination to yield the predictable result of in-line
`
`correction of previously transmitted erroneous text. Id. at 30.
`
`
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`Based on the undisputed fact that Engelke 2 incorporates by reference
`
`Engelke 1, as well as Ultratec’s reliance on the disclosure of Engelke 1 when
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`formulating the asserted grounds of unpatentability based on the
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`combination of Engelke 2 and Cervantes, we are persuaded by CaptionCall’s
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`argument that a proposed modification of Engelke 2 also would require a
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`modification to Engelke 1.
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`5. Cervantes is Analogous Art to the Invention Claimed in the
` ’801 Patent Because it is Reasonably Pertinent to the Problem With
`Which the ’801 Patent was Concerned
`
`In its Patent Owner Response, CaptionCall contends that a person of
`
`
`
`ordinary skill in the art would not look to Cervantes for suggestions to
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`modify Engelke 1. PO Resp. 54. In particular, CaptionCall argues that
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`Cervantes does not recognize or address the same problem with which the
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`’801 patent was concerned. Id. at 55. In its Reply, Ultratec contends that
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`fields where text are displayed to a user, including the instant messaging
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`system taught by Cervantes, would have commended themselves to the
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`attention of the inventors of the ’801 patent. Pet. Reply. 14.
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`
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`We understand CaptionCall’s position to be that Cervantes is not
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`analogous art to the invention claimed in the ’801 patent because it is not
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`reasonably pertinent to the problem with which the ’801 patent was
`
`concerned. We disagree. “A reference is reasonably pertinent if, even
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`though it may be in a different field from that of the inventor’s endeavor, it
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`15
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`Ultratec v Sorenson IP Holdings Page 15 of 29
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`is one which, because of the matter with which it deals, logically would have
`
`commended itself to an inventor’s attention in considering his problem.” In
`
`re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). “In other words, ‘familiar
`
`items may have obvious uses beyond their primary purposes.”’ In re ICON
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`Health and Fitness, Inc., 496 F.3d 1374, 1380 (Fed. Cir. 2007) (quoting
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`KSR, 550 U.S. at 420).
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`
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`The ’801 patent discloses that there is a problem in the art of text
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`caption communication systems with correcting errors in a text caption, and
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`providing the corrected word(s) to a hearing-impaired user, such that he or
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`she can understand the context of the correction without distracting from, or
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`interrupting the continuity of, a conversation. See Ex. 1001, 1:38–2:3.
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`Although Cervantes acknowledges that there are some advantages of using
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`instant messaging instead of a phone service (Ex. 1009, 1:14–18), Cervantes
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`nonetheless discloses that there is a problem in the art of instant messaging
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`systems with correcting errors in instant messages exchanged between users.
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`See id. at 1:21–39. Cervantes is analogous art to the invention claimed in
`
`the ’801 patent because its disclosure of correcting errors in an instant
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`message would be reasonably pertinent to the problem faced by the ’801
`
`patent of correcting errors in a text caption. Therefore, contrary to
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`CaptionCall’s argument, a person with ordinary skill in the art may look to
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`Cervantes’s post-transmission error correction for suggestions to modify
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`Engelke 2, which incorporates by reference Engelke 1.
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`6. Modifying Engelke 1 with Cervantes’s Post-transmission Error
` Correction Would Not Change Engelke 1’s Principle of Operation
`
`
`
`In its Patent Owner Response, CaptionCall contends that the principle
`
`of operation of Engelke 1 requires correcting the text of a transcript prior to
`
`16
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`transmitting the transcript to a hearing-impaired user (“pre-transmission
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`error correction”). PO Resp. 27 (citing Ex. 2003 ¶¶ 45–50). To support its
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`contention that Engelke 1’s principle of operation is pre-transmission error
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`correction, CaptionCall directs us to various disclosures in Engelke 1. Id. at
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`28–33 (citing Ex. 1006, Abstract (“An editing system . . . displays
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`transcribed text on a screen prior to transmission so that a human call
`
`assistant may . . . initiate a correction of . . . words either through speech or
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`text entry.”); 3:60–67 (“The editing text signal 46 causes [the text of the
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`transcription] to appear on call assistant display 48 [so] that [it] may be
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`reviewed by the call assistant 40 for possible correction using voicing or the
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`keyboard 50 prior to be converted to a text stream signal 20.”); 6:13–15
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`(“Prior to the words being colored the second color 126 and transmitted
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`(thus while the words are still in the queue 122), a correction of transcription
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`errors may occur.”); figs. 3, 6. CaptionCall then asserts that modifying
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`Engelke 1 with Cervantes’s post-transmission error correction would change
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`Engelke 1’s principle of operation. Id. at 26–27 n. 5 (citing In re Ratti, 270
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`F.2d 810, 813 (CCPA 1959), 33–37.
`
`
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`In its Reply, Ultratec contends that Engelke 1 generally relates to an
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`editing and correction system for real-time remote transcriptions for the deaf
`
`or hearing-impaired. Pet. Reply 7 (citing Ex. 1006, Abstract; 1:56–59).
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`Ultratec further contends that Engelke 2 emphasizes that Engelke 1’s basic
`
`principle of operation is to provide a telecommunications relay service using
`
`“‘human operations working with speech recognition engines to rapidly
`
`translate voice signals into text streams.’” Id. (quoting Ex.1008, 5:37–42).
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`Ultratec then asserts that modifying Engelke 1 with Cervantes’s post-
`
`17
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`transmission error correction would not change the basic functionality of the
`
`telecommunications relay service taught by Engelke 1 or Engelke 2. Id.
`
`
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`We are not persuaded by CaptionCall’s argument because it limits
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`Engelke 1’s principle of operation to pre-transmission error correction. The
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`title of Engelke 1 is “Real-Time Transcription Correction System.”
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`Ex. 1006, at [54]. Engelke 1 generally relates to a system for transcribing
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`voice communication into text and, in particular, to a system for facilitating
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`real-time editing of a transcribed text stream by a human call assistant for
`
`higher accuracy. Ex. 1006, 1:19–22. Of particular importance is Engelke
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`1’s stated objective to “generally improve the speed and accuracy of the
`
`transcription.” Id. at 1:52–56.
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`
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`There is no indication in these cited disclosures, or throughout the
`
`remaining disclosure in Engelke 1, that the timing of error correction by call
`
`assistant 40 is a critical or essential aspect of the relay service offered by
`
`Engelke 1’s text caption communication system. Although CaptionCall
`
`directs us to various disclosures in Engelke 1 to support its assertion that
`
`error correction in a transcript only occurs prior to transmitting the transcript
`
`to a hearing-impaired user, those disclosures, by themselves, do not preclude
`
`post-transmission error correction. For instance, each of the disclosures in
`
`Engelke 1 relied upon by CaptionCall uses permissive language such as
`
`“may” when referring to the error corrections made by call assistant 40 prior
`
`to transmission. See, e.g., Ex. 1006, Abstract; 3:60–67; 6:13–15.
`
`
`
`In summary, we are not persuaded that Engelke 1’s principle of
`
`operation should be limited to pre-transmission error correction. Instead, the
`
`principle of operation that more accurately epitomizes Engelke 1 is using a
`
`call assistant or operator to perform error correction in a text caption
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`18
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`communication system, regardless if the error correction occurs pre-
`
`transmission, post-transmission, or both.
`
`
`
`With this in mind, we turn to CaptionCall’s arguments that modifying
`
`Engelke 1 with Cervantes’s post-transmission error correction would require
`
`a substantial reconstruction and redesign of certain features disclosed in
`
`Engelke 1—namely, circular buffer 85, macro keys 135, slider control 152,
`
`and call assistant display 48. We will address each of these features
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`disclosed by Engelke 1 in turn.
`
`a. Circular Buffer 85 and Macro Keys 135
`
`
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`In its Patent Owner Response, CaptionCall contends that modifying
`
`Engelke 1 with Cervantes’s post-transmission error correction would
`
`eliminate or bypass Engelke 1’s circular buffer 85, which, in turn, would
`
`prevent or seriously hinder the use of Engelke 1’s macro keys 135. PO
`
`Resp. 37–42 (citing Ex. 1006, 4:38–40; 6:4–5, 35–60; fig.6; Ex. 2003 ¶¶ 54–
`
`58). In its Reply, Ultratec contends that, because Engelke 1 discloses that
`
`macro keys 135 are an alternative to other embodiments, the modification or
`
`elimination of this feature would not change Engelke 1’s principle of
`
`operation. Pet. Reply 8 (citing Ex. 1006, 6:35–38).
`
`
`
`For a number of reasons, we are not persuaded by CaptionCall’s
`
`argument that modifying Engelke 1 with Cervantes’s post-transmission error
`
`correction would require a substantial reconstruction and redesign of
`
`Engelke 1’s circular buffer 85 and macro keys 135. First, this argument is
`
`predicated on t