UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`MICROSOFT CORPORATION, SAMSUNG ELECTRONICS CO. LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., AND ZTE (USA), INC.,
`Petitioner,
`
`v.
`
`
`
`
`
`
`Trials@uspto.gov Paper No. 13
`571-272-7822
` Entered: September 11, 2017
`
`
`
`
`
`
`
` IXI MOBILE (R&D) LTD.,
`Patent Owner.
`____________
`
`Case IPR2017-00898
`Patent 7,552,124 B2
`____________
`
`
`Before BRYAN F. MOORE, TREVOR M. JEFFERSON, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`

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`IPR2017-00898
`Patent 7,552,124 B2
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`I. INTRODUCTION
`Microsoft Corporation, Samsung Electronics Co. Ltd., Samsung
`Electronics America, Inc., and ZTE (USA), Inc. (“Petitioner”) filed a
`Petition (Paper 4, “Pet.”) pursuant to 35 U.S.C. §§ 311–19 to institute an
`inter partes review of claims 1–10 of U.S. Patent No. 7,552,124 B2 (“the
`’124 patent,” Ex. 1001). The Petition is supported by the Declaration of
`John D. Villasenor, Ph.D. (Ex. 1002). IXI Mobile (R&D) Ltd. (“Patent
`Owner”) filed a Preliminary Response (“Prelim. Resp.,” Paper 11).
`For the reasons set forth below, we institute an inter partes review of
`claims 1–5 of the ’124 patent, but we do not institute an inter partes review
`of claims 6–10 of the ’124 patent.
`A. Related Matters
`Petitioner advises us that the following District Court lawsuits may
`affect or be affected by this proceeding: IXI Mobile (R&D) Ltd. v.
`BlackBerry Limited, No. 2:15-cv-01883 (E.D. Tex.); IXI IP, LLC v. HTC
`Corp., No. 2:15-cv-1884 (E.D. Tex.); IXI IP, LLC v. Samsung Elecs. Co.,
`Ltd., No. 2:15-cv-01885 (E.D. Tex.); IXI IP, LLC v. ZTE Corp., No. 2:15-
`cv-01886 (E.D. Tex.); and Google Inc. v. IXI Mobile (R&D) Ltd., No. 5:16-
`cv-04173 (N.D. Cal). Pet. 1. Petitioner also identifies Google Inc. v. IXI IP,
`LLC, IPR2016-01669, filed August 25, 2016, as involving the ’124 patent.
`Paper 8, 1.
`
`B. The ’124 Patent
`The ’124 patent, titled “Natural language for programming a
`specialized computing system,” is directed to a method and corresponding
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`system for “programming a mobile communication device based on a high-
`level code comprising operative language.” Ex. 1001, Title, Abstract. A
`user provides “[h]igh-level code 150 [which] may comprise one or more
`sentences, wherein each sentence comprises at least one operative language
`(i.e. keyword) defining an instruction for a function or an operation to be
`performed.” Id. at 4:10–21. “[I]f high-level code 150 comprises a complex
`set of instructions, then high-level code 150 is transmitted to network server
`100,” but
`if high-level code 150 comprises a less complex structure, then
`application software 1122 or a portion thereof is installed and
`executed on mobile device 120 to process high-level code 150 to
`produce executable code 160, without the need for transferring
`high-level code 150 to a more powerful processing environment
`implemented on network server 100.
`
`Id. at 4:49–51, 4:58–64.
`
`C. Illustrative Claim
`Of the challenged claims, claims 1 and 6 are the only independent
`claims.
`Claim 1, reproduced below, is illustrative.
`1. A method for programming a mobile communication device based on a
`high-level code comprising operative language, the method comprising:
`receiving a high-level code comprising one or more
`keywords, wherein the high-level code is provided by a user of a
`mobile communication device to control the operation of the
`mobile communication device without having to select from
`menu items provided by an operating system running on the
`mobile communication device;
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`parsing the high-level code for the keywords to recognize
`the operative language associated with controlling one or more
`operations of the mobile communication device;
`determining at least one operation associated with the
`operative language;
`determining whether high-level code comprises keywords
`defining one or more relationships and conditions corresponding
`to the operative language;
`producing an executable code that can be executed by a
`microcontroller of the mobile communication device to perform the
`respective operation associated with the operative language;
`determining level of complexity and implementation of the
`high-level code; and
`designating an application software to process the high level
`
`code,
`
`wherein the high-level code comprises at least one sentence
`formatted in accordance with a first context,
`wherein the high-level code is processed by a natural language
`compiler comprised of one or more modules executed on one or more
`independent computing systems, depending on the level of complexity
`and the implementation of the high-level code,
`wherein application software is executed on a distributed
`environment comprising the mobile communication device and a
`network server connected to the mobile communication device, and
`the application software performs the parsing and determining steps
`depending on implementation, and
`wherein when the high-level code comprises a complex
`structure the parsing and determining steps are performed by
`application software executed on a network server connected to the
`mobile communication device and when the high-level code
`comprises a less complex structure the parsing and determining steps
`are performed by application software executed on the mobile
`communication device.
`
`Ex. 1001, 8:59–9:38.
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`D. Prior Art Relied Upon
`Petitioner relies upon the following prior art references:
`
`Maes
`US 7,003,463 B1
`Feb. 21, 20061 (Ex. 1005)
`Preston
`US 2003/0046061 A1
`Mar. 6, 2003
`(Ex. 1006)
`Pazandak US 7,027,975 B1
`Apr. 11, 20062 (Ex. 1007)
`White
`US 2002/0072918 A1
`June 13, 2002
`(Ex. 1008)
`Manson
`US 7,085,708 B2
`Aug. 1, 20063
`(Ex. 1009)
`Maes II4 US 5,937,383 A
`Aug. 10, 19995 (Ex. 1010)
`
`
`E. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability (Pet. 4):
`
`Challenged Claims
`
`Basis
`
`References
`
`1–10
`
`1–10
`
`
`
`§ 103 Maes, Maes II, and Preston
`
`§ 103
`
`Pazandak, White, and Manson
`
`
`1 From a PCT with a 35 U.S.C. § 371(c)(1) date of June 25, 2001.
`2 Filed August 8, 2000.
`3 Filed June 18, 2001.
`4 Although Maes is not the first named inventor on this patent, we
`nonetheless refer to this patent as Maes II to be consistent with the parties’
`nomenclature.
`5 Filed June 4, 1997.
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`II. ANALYSIS
`A. 325(d)
`This Petition is the second petition for inter partes review challenging
`all claims of the ’124 patent. The first petition (“the 1669 Petition”) was
`filed by Google, Inc. (hereafter “Google”) on August 25, 2016, and was
`assigned inter partes review number IPR2016-01669 (“the 1669 IPR”). In
`the 1669 Petition, Google challenged claims 1–10 as being obvious on the
`basis of two grounds: i) obvious over Maes in view of Preston; and ii)
`obvious over Pazandak in view of White and Manson.
`On March 8, 2017 (subsequent to the filing of this 898 Petition), the
`Board instituted the 1669 IPR with respect to claims 1–5 on both grounds
`asserted by Google––obviousness over the combination of Maes and Preston
`and obviousness over Pazandak, White, and Manson. 1669 IPR Inst. Dec.
`14, 24, 29, and 40. Institution was denied with respect to claims 6–10. Id. at
`7–9.
`
`Considering the particular circumstances of this case, we address the
`merits of the Petition and do not exercise our discretion under 35 U.S.C.
`§ 325(d) (indicating “if another proceeding or matter involving the patent is
`before the Office, the Director may determine the manner in which the post-
`grant review or other proceeding or matter may proceed . . . [and ]may take
`into account whether, and reject the petition or request because, the same or
`substantially the same prior art or arguments previously were presented to
`the Office”) and/or 35 U.S.C. § 314(a) (authorizing institution of an inter
`partes review under particular circumstances, but not requiring institution
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`under any circumstances). See 37 C.F.R. § 42.108(a) (“the Board may
`authorize the review to proceed”) (emphasis added); Harmonic Inc. v. Avid
`Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (explaining that under
`§ 314(a), “the PTO is permitted, but never compelled, to institute an IPR
`proceeding”). Petitioner was not a party to any of the prior proceedings. In
`addition, this Petition raises new issues, including asserting obviousness in
`view of at least one reference not at issue in the previous proceeding. Pet.
`4–5.
`
`B. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs.,
`LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under the broadest
`reasonable interpretation standard, claim terms are given their ordinary and
`customary meaning as would be understood by one of ordinary skill in the
`art in the context of the entire disclosure. In re Translogic Tech., Inc., 504
`F.3d 1249, 1257 (Fed. Cir. 2007).
`1. “determining level of complexity and implementation of the high-
`level code”
`
`Claim 1 recites “determining level of complexity and implementation
`of the high-level code.” We determine that the terms “complexity” and
`“implementation” as used in the ’124 patent refer to different aspects of the
`high-level code. See 1669 IPR Inst. Dec. at 21.
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`Although the Federal Circuit has construed “and” to mean “or” when
`the specification so requires, see, e.g., Ortho–McNeil Pharm., Inc. v. Mylan
`Labs., Inc., 520 F.3d 1358, 1361 (Fed. Cir. 2008) (“In light of . . . the
`specification, . . . this court sustains the trial court’s ruling that . . . claim 1’s
`use of the term and means or.”), in Ortho–McNeil, the Federal Circuit held
`that “and” meant “or” because “as used in [the] claim, and conjoins mutually
`exclusive possibilities.” Id. at 1362. Here, complexity and implementation
`are not described as mutually exclusive. For example, the Specification
`states “if high-level code 150 comprises a complex set of instructions, then
`high-level code 150 is transmitted to network server 100, so that a more
`powerful system is utilized to process and compile high-level code 150,”
`“[and] depending on implementation, a first part of high-level code 150 is
`processed by application software 1122 executed on mobile device 120 and
`a second part of high-level code 150 is processed by application software
`1122 executed on network server 100.” Ex. 1001, 4:49–53, 4:67–5:4
`(emphasis added). These passages suggest that the complexity and
`implementation are separately considered.
`Petitioner points out that Patent Owner in the 1669 IPR asserted
`“[i]mplementation . . . would have been understood to refer to the impact of
`the location, functionality, and execution procedures of the application
`software that would be processing and compiling the high-level code into an
`executable code.” 1669 IPR Prelim. Resp. 22 (quoted at Pet. 32). The
`Specification states “depending on implementation . . . application software
`[is] executed on mobile device 120 and . . . application software [is]
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`executed on network server 100” (Ex. 1001, 4:67–5:4 (emphasis added)) and
`states “[d]epending on system implementation, certain aspects of software
`environment 1120 can be loaded on one or more hardware environments
`1110.” Id. at 7:42–45.
`We read these passages to suggest that “implementation,” as used in
`the ’124 patent, relates to the hardware environment in which the system is
`implemented. Specifically, “implementation” is considering whether
`application software is implemented on a mobile device, a network server, or
`both.
`The parties should address the interpretation of “implementation” and
`provide their respective positions during trial.
`2. Means-Plus-Function
`Petitioner recognizes that claims 6–106 contain limitations written in
`means-plus-function format7 and that, as such, there is a rebuttable
`
`
`6 Claims 7–10 depend ultimately from claim 6 and incorporate the means
`plus-function limitations of claim 6.
`7 Specifically, “means for receiving a high-level code comprising one or
`more keywords”; “means for parsing the high-level code for the keywords to
`recognize the operative language associated with controlling one or more
`operations of the mobile communication device”; “means for determining at
`least one operation associated with the operative language”; “means for
`determining whether high-level code comprises keywords defining one or
`more relationships and conditions corresponding to the operative language”;
`“means for producing an executable code”; “means for determining level of
`complexity and implementation of the high-level code”; and “means for
`designation an application software to process the high-level code.” Ex.
`1001, 9:47–10:50
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`presumption that they are governed by section 112, paragraph 6. Pet. 9; See
`Personalized Media Communications, LLC v. International Trade
`Commission, 161 F.3d 696, 703–04 (Fed. Cir. 1998). On the present record,
`we determine that section 112, paragraph 6 governs these limitations, as they
`use the word “means,” and no rebuttal evidence has been presented. Id.
`Thus, pursuant to the statute, they are to be construed to cover the
`corresponding structure described in the specification and equivalents. See
`35 U.S.C. § 112 ¶ 6.
`As an example, one of the limitations at issue recites “means for
`parsing the high-level code for the keywords to recognize the operative
`language associated with controlling one or more operations of the mobile
`communication device.” Pet. 10. Petitioner contends that the structure that
`should relied upon for the recited function for this limitation—and as to all
`but one of these limitations8—is “application software executing on one or
`more processors to perform the identified functions or equivalents thereof.”
`Id. at 10–12. Petitioner also asserts that “Patent Owner has pointed to
`‘application software 1122.’” Pet. 12 (citing Ex. 1018 (District Court Joint
`Claim Construction and Prehearing Statement), 7–11). However, Petitioner
`does not point to any algorithm for performing the functions contained in the
`
`
`
` 8
`
` Petitioner asserts that the corresponding structure for the term “means for
`receiving a high-level code comprising one or more keywords” is “a user
`interface, including a keypad, pointing device, touchscreen, keyboard,
`microphone, or equivalents thereof.” Pet. 10.
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`relevant limitations of claims 6–10. Pet. 11–13; see also Function Media,
`LLC v. Google, Inc., 708 F.3d 1310, 1318 (Fed. Cir. 2013) (holding that a
`computer-implemented means-plus-function limitation is indefinite because
`the specification failed to disclose the specific algorithm used by the
`computer to perform the recited function).
`The ’124 patent Specification states “application software 1122
`pareses [sic] high-level code 150 for keywords in an attempt to recognize
`any operative language included in high-level code 150 (S220).” Ex. 1001,
`5:36–39. However, the Specification does not explain sufficiently how the
`application software recognizes the keywords. C.f. TecSec, Inc. v. Int’l Bus.
`Machines Corp., 731 F.3d 1336, 1348–49 (Fed. Cir. 2013) (finding that an
`algorithm was shown despite the specification’s reference to generic
`software because the specification explains how the generic software
`works.). Such “black box” disclosures of software can be too generic to
`provide corresponding structure for computer-implemented means-plus-
`function limitations. Blackboard, Inc. v. Desire2Learn Inc., 574 F.3d 1371,
`1383 (Fed. Cir. 2009) (“The ACM is essentially a black box that performs a
`recited function. But how it does so is left undisclosed.”); ePlus, Inc. v.
`Lawson Software, Inc., 700 F.3d 509, 518 (Fed. Cir. 2012) (holding that
`“black box” labeled “Purchase Orders” was insufficient structure to perform
`the “generate purchase orders” function); Noah Sys., Inc. v. Intuit Inc., 675
`F.3d 1302, 1316–17 (Fed. Cir. 2012) (“the disclosure must identify the
`method for performing the function, whether or not a skilled artisan might
`otherwise be able to glean such a method from other sources or from his
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`own understanding.”). That is the case here. Thus, Petitioner has not shown
`sufficiently that the Specification discloses an algorithm for the function of
`parsing a keyword or any other structure to enable us to determine if the
`asserted prior art teaches such structure.
`Thus, Petitioner fails to demonstrate a reasonable likelihood of
`prevailing in its challenge to claims 6–10, and the Petition as to those claims
`is denied. See Blackberry Corp. v. MobileMedia Ideas, LLC, IPR2013-
`00036, Paper No. 65 (Mar. 7, 2014) (terminating inter partes review
`proceeding because specification did not disclose specific algorithm to
`perform recited function of a computer-implemented means-plus-function
`term).
`
`3. Other Claim Terms
`For purposes of this Decision and based on the record before us, we
`determine it is unnecessary to provide express constructions for any other
`claim terms at this stage of the proceeding.
`C. Principles of Law
`A patent claim is unpatentable under 35 U.S.C. § 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;
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`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`In that regard, an obviousness analysis “need not seek out precise
`teachings directed to the specific subject matter of the challenged claim, for
`a court can take account of the inferences and creative steps that a person of
`ordinary skill in the art would employ.” KSR, 550 U.S. at 418; see also
`Translogic, 504 F.3d at 1259, 1262 (quoting KSR, 550 U.S. at 418).
`The level of ordinary skill in the art is reflected by the prior art of
`record. 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).
`D. Obviousness of Claims over Maes, Maes II, and Preston
`Petitioner asserts that claims 1–5 are unpatentable under 35 U.S.C.
`§ 103(a) as obvious over Maes, Maes II,9 and Preston. Pet. 4. To support its
`contentions, Petitioner provides explanations as to how the prior art
`allegedly teaches each claim limitation. Id. at 13–47.
`1. Maes
`Maes (Ex. 1005), entitled “System and Method for Providing Network
`Coordinated Conversational Services,” is generally directed to a “system and
`
`
`9 Petitioner asserts “[t]o the extent that IXI argues that ‘parsing . . . for
`keywords’ means ‘keyword spotting,’ Ex. 1012 at 23, this is disclosed by
`Maes in combination with Maes II.” Pet. 18. Patent Owner does not make
`such an argument so, at this juncture, we do not need to rely on Maes II.
`Nevertheless, Maes II and Petitioner’s contentions pertaining thereto remain
`part of the asserted ground on which we institute trial.
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`method for providing automatic and coordinated sharing of conversational
`resources, e.g., functions and arguments, between network-connected
`servers and devices and their corresponding applications.” Ex. 1005,
`Abstract. Maes provides third party applications access to conversational
`services that are, in general, complex, resource-intensive, and expensive to
`operate (e.g., speech recognition, natural language understanding, text-to-
`speech generation, natural language generation, and speaker identification).
`See, e.g., id. at 1:49–60, 4:24–29, 4:57–62, 8:13–16. Maes describes a
`system in which networked devices are made “conversationally aware” of
`each other by using conversational network protocols to transmit messages,
`processed by dialog managers, to automatically share conversational
`resources and functions among the networked devices, and the method of
`operating such a system. Id. at 2:35–48, 5:19–25.
`2. Preston
`Preston (Ex. 1006), entitled “Apparatus for Automatically Generating
`Source Code,” provides “[a] method of automatically generating software
`from one or more predefined functions in accordance with an input
`statement entered in natural language.” Ex. 1006, Abstract. Preston further
`“relates to apparatus for automatically generating source code, and is
`particularly, but not exclusively, suitable for generating source code for
`communication services.” Id. ¶ 1.
`Preston explains that a non-programmer should be able to program a
`system without the need to learn a particular programming language and
`identifies that there are “many situations where it is desirable for a non-
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`programmer to be able to program a system so that it can subsequently act
`on his or her behalf without further interaction.” Id. ¶¶ 7, 8.
`Preston describes a method to allow a user (e.g., a non-programmer)
`to input a natural language instruction and have it analyzed to generate
`source code customized for carrying out the user’s wishes. Id. ¶ 49. Preston
`provides that certain natural language descriptions are associated with
`predefined functions and their relationships are stored in data storage. Id.
`¶ 57. After a user inputs natural language, it is determined whether the input
`natural language is associated with any of the pre-defined functions in the
`data storage. Id. ¶ 61. If the user’s input is associated with a function
`contained in the data storage, a code generator generates source code
`corresponding to the pre-defined function. Id.
`3. Analysis
`
`a. Claim 1
`i. “receiving a high-level code . . .”
`Petitioner establishes sufficiently for purposes of this Decision that
`Maes teaches “receiving a high-level code comprising one or more
`keywords, wherein the high-level code is provided by a user of a mobile
`communication device to control the operation of the mobile communication
`device without having to select from menu items provided by an operating
`system running on the mobile communication device.” Pet. 16–17; Ex.
`1005, 3:11–12, 8:42–44; 10:59–62, 15:33–35, 46–61; Ex. 1002, ¶¶ 88–90.
`For example, Petitioner asserts “Maes is silent regarding the use of menus
`and a [person of ordinary skill in the art] would understand that ‘a full
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`fledged conversational user interface’ would of necessity enable a user to
`provide ‘high-level code comprising one or more keywords’ to the mobile
`device without selection of items from a menu.” Pet. 17 (citing Ex. 1002, ¶
`90).
`
`ii. “parsing the high-level code for the keywords . . .”
`Petitioner establishes sufficiently for purposes of this Decision that
`the combination of Maes and Preston teaches “parsing the high-level code
`for the keywords to recognize the operative language associated with
`controlling one or more operations of the mobile communication device.”
`Pet. 17–19; Ex. 1005, 2:6–10, 3:1–10; 4:24–29, 4:54–62, 8:31–35, 11:23–
`33, 15:49–61, FIG. 2; Ex. 1002 ¶¶ 92–93. For example, Petitioner asserts
`that “Maes uses the above-described architecture to parse for keywords (e.g.,
`‘dial,’ ‘home,’ ‘office,’ etc.) to recognize operative language (e.g., ‘dial’) in
`the user’s command associated with controlling operations of the mobile
`communication device (e.g., dialing a phone number).” Pet. 17–18 (citing
`Ex. 1005, 15:49–61; Ex. 1002, ¶ 93).
`Petitioner also asserts
`To the extent that IXI argues that “parsing . . . for keywords”
`means “keyword spotting,” Ex. 1012 at 23, this is disclosed by
`Maes in combination with Maes II. Maes incorporates Maes II
`by reference, Ex. 1005, 12:39-50, and suggests “preferably”
`using the methods of Maes II, id., 12:39-55. Thus, to the extent
`Maes II is not considered a part of Maes, a [person of ordinary
`skill in the art] would be motivated to combine the teachings of
`Maes II with Maes. Ex. 1002, ¶98.
`
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`Pet. 18 (footnote omitted). Patent Owner does not make such an argument
`so, at this juncture, we do not need to rely on Maes II. Nevertheless, as
`stated above, Maes II and Petitioner’s contentions pertaining thereto remain
`part of the asserted ground on which we institute trial.
`iii. “determining at least one operation . . .”
`Petitioner establishes sufficiently for purposes of this Decision that
`Maes teaches “determining at least one operation associated with the
`operative language.” Pet. 19–20; Ex. 1005, 4:24–29, 57–62, 11:46–47, 62–
`63, 15:49–61, 16:11–13; Ex. 1002, ¶¶ 104–6.
`iv. “determining whether high-level code comprises
`keywords . . .”
`
`Petitioner establishes sufficiently for purposes of this Decision that
`the combination of Maes and Preston teaches “determining whether high-
`level code comprises keywords defining one or more relationships and
`conditions corresponding to the operative language.” Pet. 21–26; Ex. 1005,
`15:46–55, 16:9–11, Fig. 2, Ex. 1006 ¶¶ 49, 91, 100–102, 116, 123; Ex. 1002
`¶¶ 108–20. For example, Petitioner relies on Preston to show keywords
`defining relationships and conditions. Pet. 23; Ex. 1006 ¶¶ 49, 92, 99–102,
`123. Preston discloses “input statements, which are entered in natural
`language, . . . may comprise condition/action information.” Ex. 1006 ¶ 99.
`On the present record, Petitioner articulates sufficient reasons for combining
`Maes and Preston including at least that the combination uses known
`methods to obtain predictable results. Pet. 24–25. For example, Petitioner
`asserts:
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`A POSITA would have been motivated to combine the
`teachings of Preston with Maes. Both references address the
`common need, widely recognized among those of skill in the art
`at the time, to make it easier for users to engage with devices
`using natural forms of interaction such as spoken or written
`natural language. Ex. 1002, ¶116. As noted previously, Maes
`disclosed that “[a]dvantageously, the present invention offers a
`full fledged conversational user interface on any device” Ex.
`1005, 3:11-12 (emphasis added). A POSITA would have
`understood this to encompass conditional user requests. Ex.
`1002, ¶116. This is consistent with Preston, which states that
`conditional user commands arise frequently: “[t]here are many
`situations where it is desirable for a non-programmer to be able
`to program a system so that it can subsequently act on his or her
`behalf without further interaction.” Ex. 1006, [0007]; Ex. 1002,
`¶116. In addition, Preston teaches that “[i]n a preferred
`embodiment, the invention is used for control of terminal devices
`used in a communications system.” Ex. 1006, [0183]. Ex. 1002,
`¶117.
`
`A POSITA would have further understood that the
`teachings of Preston could be used in a mobile communication
`device, such as that disclosed by Maes. Ex. 1002 ¶118-119.
`And, in particular, a POSITA, aware of both Maes and Preston,
`would have understood that the user interaction with the mobile
`devices disclosed in Maes would be more flexible (and full
`fledged) if those mobile devices could be responsive to high-
`level code comprising keywords defining one or more conditions
`corresponding to operative language. Ex. 1002, ¶119. This
`would have involved a combination of prior art elements from
`Maes (e.g., speech recognition, conversational engines, and
`control of a device such as a phone) and Preston (e.g., keywords
`defining relationships and conditions corresponding to operative
`language), according to known methods, to yield predictable
`results (e.g., Maes’s conversational system and natural language
`understanding engines being augmented to be able to process
`additional natural language statements pertaining to additional
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`scenarios, thereby expanding the user’s ability to program the
`device). Ex. 1002 at ¶119. Such a modification or combination
`would have been within the skill of a POSITA and would have
`required minimal change to downstream processing related to
`controlling the mobile communication device. Id., ¶¶118-119.
`
`
`Id.
`
`v. “producing an executable code . . .”
`Petitioner establishes sufficiently for purposes of this Decision that
`the combination of Maes and Preston teaches “producing an executable code
`that can be executed by a microcontroller of the mobile communication
`device to perform the respective operation associated with the operative
`language.” Pet. 26–30; Ex. 1005, 1:63–65, 2:56–58, 3:60–67, 4:24–29,
`5:52–64, 6:11–37; Ex. 1006 ¶¶ 7, 49, 61, 69, 77–82, 144, 185; Ex. 1002
`¶¶ 125–130. On the present record, Petitioner articulates sufficient reasons
`for combining Maes and Preston including at least that the combination uses
`known method to obtain predictable results. Pet. 28–29. For example,
`Petitioner relies on the reasons stated in the quoted section above.
`Additionally, Petitioner asserts:
`Given the common goals and similar approaches of Maes
`and Preston, a POSITA would have found it natural to combine
`them such that Maes utilized the executable code generation of
`Preston. Ex. 1002, ¶¶126-127. For example, just like Maes,
`Preston teaches processing natural language that a user inputs to
`a mobile device. E.g., Ex. 1006, [0055] (“The software generator
`100 may be built into … a mobile phone using speech
`recognition ….”). The similarity of the user inputs in Maes and
`Preston illustrates the complementary nature of these two
`references. A POSITA would have been motivated to use
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`Preston’s source code generation in the Maes system in order to
`carry out immediate user directives like those specifically
`described in Maes, e.g., “dial another person” or “tell me a stock
`price.” Moreover, Preston’s teachings allow the Maes system
`and method to handle prospective or rule-based commands like
`those include as examples in Preston, e.g., “[p]lease divert my
`phone to Frank.” This further Maes’ stated goal of “offer[ing] a
`full fledged conversational user interface.” Ex. 1005, 3:11-18.
`This combination would provide users with more flexibility in
`using their mobile communication devices, such as smartphones.
`Ex. 1002, ¶126; supra Section IX.A.1.e. Finally, the use in Maes
`of Preston’s executable code generation is a mere combination
`of known methods that would yield the predictable result of
`generating executable code for carrying out the desired user
`commands / requests. Ex. 1002, ¶127.
`
`
`Id.
`
`vi. “determining level of complexity and
`implementation of the high-level code”
`
`Petitioner establishes sufficiently for purposes of this Decision that
`Maes teaches “determining level of complexity and implementation of the
`high-level code.” Pet. 30–34; Ex. 1005, 3:1–5, 4:36–44; 16:42–47; Ex. 1002
`¶¶ 132, 139.
`Above, in Section II.B.1., we explain that the terms ‘complexity’ and
`‘implementation’ as used in the ’124 patent refer to different aspects of the
`high-level code. Additionally, we explained “implementation” is
`considering whether application software is implemented on a mobile
`device, a network server, or both.
`Consiste