Ultratec, Inc. et al v. Sorenson Communications, Inc. et al

Filing 802

ORDER FOR INJUNCTION. Signed by District Judge James D. Peterson on 10/11/18. (jat)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF WISCONSIN

ULTRATEC, INC., and CAPTEL, INC.,
Plaintiffs,
v.

ORDER FOR INJUNCTION

SORENSON COMMUNICATIONS, INC., and
CAPTIONCALL, LLC,

14-cv-66-jdp

Defendants.
WHEREAS:
Plaintiffs Ultratec, Inc. and CapTel, Inc. are the owners of U.S. Patent No. 7,660,398
(“the ’398 Patent”).
On

February

3,

2014,

Plaintiffs

filed

suit

against

Defendants

Sorenson

Communications, Inc. and CaptionCall, LLC for, inter alia, infringement of the ’398 Patent.
Plaintiffs asserted that Defendants’ captioned telephones and captioned telephone service
infringed Claims 11, 12, and 13 of the ’398 Patent. Claim 11 claims:
A method of operating a captioned telephone call in which an
assisted user is connected by a captioned telephone device which
is connected both to one telephone line to a remote user and a
second telephone line to a relay providing captioning for a
conversation, the method comprising the steps of
during a telephone conversation, the captioned telephone
device receiving captioning for spoken words of the remote
user from the relay and displaying the words in a visual
display for the assisted user; and
during the telephone conversation, the captioned
telephone device using echo cancellation to cancel the
voice of the assisted user from the second telephone line
so that the relay does not hear the voice of the assisted
user, so the relay can caption all the words on the second

telephone line without causing confusion to the assisted
user.
Claims 12 and 13 depend from independent Claim 11. Thus Claim 11 is the broadest of the
asserted claims, and for the purposes of this order, Claim 11 constitutes the invention of the
’398 Patent.
Over the course of the litigation, the court construed and explained parts of the claim
language as follows:
“Telephone line” means “a communication line capable of
carrying voice and/or data.”
The claim term “using echo cancellation to cancel the voice of the
assisted user” would be satisfied so long as the voice of the assisted
user is inaudible, even if the call assistant at the relay could still
hear some remnant of the signal. This claim limitation is satisfied
so long as a call assistant with normal hearing would not hear the
words spoken by the assisted user while captioning a call.
Cancellation that leaves audio bleed-through that consists of only
buzzing would fall within the claim limitation. Cancellation that
leaves audible words would not.
The reference to “from the second line” requires that it is the
“captioned telephone device” that uses echo cancellation to cancel
the voice of the assisted user, which means that the assisted user’s
voice would not be transmitted to the relay.
Claim 11 is written in open form using the term “comprising,”
and thus the claim does not exclude methods that include
additional steps or components.
Defendants stipulated that they infringed Claims 11, 12, and 13 of the ’398 Patent
during some of defendants’ captioned telephone calls.
The jury found that Claims 11, 12, and 13 of the ’398 Patent were not invalid and that
approximately 88 percent of defendants’ captioned telephone calls infringed Claims 11, 12,
and 13. The court granted defendants’ motion for judgment as a matter of law that Claims 11,
12, and 13 of the ’398 Patent were invalid as obvious, but the Court of Appeals for the Federal

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Circuit reversed the court’s decision on invalidity, thus reinstating the jury’s finding that
Claims 11, 12, and 13 were not invalid.
After the Federal Circuit issued the mandate, plaintiffs renewed their motion for an
injunction, which the court granted on August 31, 2018. The Court found that (1) plaintiffs
would suffer irreparable injury without an injunction, (2) plaintiffs had no adequate remedy at
law, (3) the balance of the hardships favored an injunction, and (4) the public interest would
be served by an injunction.

NOW THEREFORE, for the reasons stated above, and under the authority of 35 U.S.C.
§ 283, and Fed. R. Civ. P. 65(d), it is hereby ORDERED:
Defendants and their officers, agents, servants, employees, partners, affiliates, licensees,
successors, assigns, and attorneys, and all persons in active concert or participation with any of
them are enjoined from:
1. Offering for sale, selling, or using in the United States or its territories any captioned
telephone service that practices the method of Claim 11 of the ’398 Patent, or any
method that is no more than colorably different from that method.
2. Importing, making, offering for sale, selling, or using in the United States or its
territories any captioned telephone that is specially made or adapted to practice the
method of Claim 11 of the ’398 Patent, or any method that is no more than
colorably different from that method.
3. For purposes of this injunction order, an offer for sale includes any communication
that encourages, promotes, or facilitates the sale or use of an infringing product or

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service, including an advertisement, brochure, price quotation, product manual,
webpage, or verbal offer for sale.
4. This injunction shall run until the expiration of the ’398 Patent, unless Claims 11,
12, and 13 of the ’398 Patent are adjudicated to be invalid or unenforceable before
the expiration of the ’398 Patent.
5. Defendants must promptly, and in no case later than 30 days from the date of this
order, provide written notice of this injunction to their officers, agents, servants,
employees, partners, affiliates, licensees, successors, assigns, and attorneys, and all
persons in active concert or participation with any of them. Defendants must take
all necessary and appropriate means to ensure that the aforementioned comply with
this order.
Entered October 11, 2018.
BY THE COURT:
/s/
________________________________________
JAMES D. PETERSON
District Judge

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