Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 58
`Entered: March 29, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`COMCAST CABLE COMMUNICATIONS, LLC,
`Petitioner,
`
`v.
`
`PROMPTU SYSTEMS CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2018-00341
`Patent 7,260,538 B2
`____________
`
`
`
`Before JAMESON LEE, ROBERT L. KINDER, and
`ALEX S. YAP, Administrative Patent Judges.
`
`YAP, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`Paper 58
`Entered: March 29, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`COMCAST CABLE COMMUNICATIONS, LLC,
`Petitioner,
`
`v.
`
`PROMPTU SYSTEMS CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2018-00341
`Patent 7,260,538 B2
`____________
`
`
`
`Before JAMESON LEE, ROBERT L. KINDER, and
`ALEX S. YAP, Administrative Patent Judges.
`
`YAP, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`IPR2018-00341
`Patent 7,260,538 B2
`
`
`INTRODUCTION
`I.
`Petitioner, Comcast Cable Communications, LLC. (“Comcast”), filed
`a Petition (Paper 1, “Pet.”) requesting an inter partes review of claims 34,
`35, 37, 40, and 41 of U.S. Patent 7,260,538 B2 (Ex. 1001, “the ’538
`Patent”). We instituted review of claims 34, 35, 37, 40, and 41 on all
`grounds asserted in the Petition. Paper 10. Patent Owner, Promptu Systems
`Corporation. (“Promptu”), filed a Response. Paper 20 (“Resp.”). Petitioner
`filed a Reply (Paper 29) and Patent Owner filed a Sur-Reply (Paper 37). An
`oral hearing was held on January 28, 2019. A copy of the transcript for the
`oral hearing has been entered as Paper 55 (“Tr.”).
`As discussed below, Petitioner has not shown, by a preponderance of
`the evidence, that any of claims 34, 35, 37, 40, and 41 is unpatentable under
`any asserted grounds.
`
`Related Matters
`A.
`The ’538 Patent is the subject of a pending civil action, Promptu
`
`Systems Corporation v. Comcast Corporation and Comcast Cable
`Communications, LLC, Case No. 2:16-cv-06516 (E.D. Pa.). Patent Owner’s
`Mandatory Notices (Paper 6), 2. Another petition for inter partes review has
`been filed by Petitioner on this patent in IPR2017-00340, which is pending
`before the Board. Pet. xi; see also IPR2018-00340, Paper 1. According to
`Patent Owner, the District Court stayed the pending civil action after the
`Board instituted trial in this matter. Patent Owner’s Updated Mandatory
`Notice (Paper 16), 2.
`
`The ’538 Patent
`B.
`The ’538 Patent, titled “Method and Apparatus for Voice Control of a
`
`Television Control Device,” was issued on August 21, 2007. Ex. 1001, [45].
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`It issued from U.S. Patent Application 10/338,591, filed on January 7, 2003,
`and claims the benefit of U.S. Provisional Application No. 60/346,899 filed
`on January 8, 2002. Id. at [21], [22], [60]. The ’538 Patent generally relates
`to a “method and apparatus [] for remotely processing voice commands for
`controlling a television.” Ex. 1001, Abstract. Figure 1 of the ’538 Patent is
`reproduced below.
`
`
`Figure 1 “is a diagram illustrating elements of the voice control television
`system according to the invention.” Id. at 2:52–53. According to the
`Specification, a “problem with the prior art voice recognition systems is that
`they require a sophisticated voice recognition system in close proximity to
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`the user, requiring individual units[,] which is quite costly.” Id. at 1:59–62.
`The Specification discloses “method and apparatus [] for remotely
`processing voice commands,” purportedly solving one of the alleged
`problems in prior art systems. Id. at Abstract. A user’s voice command “is
`received by a microphone contained in a [] remote control.” Id. at 2:23–25.
`The microphone in the remote control “is activated by the depression of a
`push-to-talk (PTT) button or by word activation.” Id. at 2:41–42. “The
`voice command is modulated and wirelessly transmitted to a wireless
`receiver connected to the set-top box.” Id. at 2:25–26. “The voice
`command is then transmitted, for example, to a central processing station
`located at a cable television head-end unit[, which] processes the voice
`command for voice command recognition.” Id. at 2:29–33. “Once the voice
`command is determined a command function is created [and] transmitted
`back to the set-top box where the set-top box performs the command
`function.” Id. at 2:33–37.
`Challenged Claims
`C.
`Claims 34, 40, and 41 are independent. Claims 34 and 40 are system
`
`claims directed to “[a] centralized multi-user voice operated television
`control system” (id. at 13:37–61, 14:37–64), while claim 41 is a method
`claim directed to “[a] method for operating a centralized multi-user voice
`operated television control system that includes . . . .” (id. at 14:65–16:14).
`Claims 35 and 37 depend directly from claim 34. Independent claims 34,
`40, and 41, reproduced below, are illustrative of the challenged claims.
`34. A centralized multi-user voice operated television control
`system, comprising:
`television remote controls configured to directly
`and wirelessly control television sets and additionally to
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`receive user voice input and wirelessly transmit first
`output representative of the voice input to television set-
`top boxes;
`television set top boxes configured to receive
`television input signals via cable television link and
`provide
`television output signals compatible with
`television sets, the set top boxes additionally responsive to
`receiving the first output from the television remote
`controls to transmit representative second output to a
`central processing station via the cable television link;
`a centralized processing station configured to
`receive and process second output from a multitude of
`television set top boxes by applying voice recognition to
`the second output
`to
`identify user-intended voice
`commands, to derive set-top-box-compatible instructions
`to carry out the identified voice commands, and returning
`signals representing the instructions to respective top
`boxes via the cable television link;
`where the set top boxes are further responsive to
`receiving the signals representing the instructions from the
`central processing station to execute the instructions.
`Ex. 1001, 13:37–61.
`40. A centralized multi-user voice operated television control
`system, comprising:
`a plurality of television remote control means each
`for directly and wirelessly controlling television sets and
`additionally receiving user voice input and wirelessly
`transmitting first output representative of the voice input
`to a television set-top box means;
`a plurality of television set top box means each for
`receiving television input signals via cable television link
`and providing television output signals compatible with
`television sets, and responsive to receiving the first output
`from one of the television remote control means to
`transmit representative second output
`to a central
`processing station via the cable television link;
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`
`a centralized processing station configured to
`receive and process second output from a multitude of
`television set top box means by applying voice recognition
`to the second output to identify user-intended voice
`commands,
`to derive set-top-box-means-compatible
`instructions to carry out the identified voice commands,
`and returning signals representing the instructions to
`respective set top box means via the cable television link;
`where each set top box means is further responsive
`to receiving the signals representing the instructions from
`the central processing station to execute the instructions.
`Ex. 1001, 14:37–64.
`41. A method for operating a centralized multi-user
`voice operated television control system that includes a
`multitude of television remote controls situated at various
`television viewing sites, a multitude of set top boxes
`situated at the television sites to receive television input
`signals via cable television link and provide television
`output signals compatible with television sets at the
`television viewing sites, and a centralized processing
`station remote from the television viewing sites and
`coupled to the set top boxes via the cable television link,
`the method comprising operations of:
`operating the television remote controls to
`perform additional operations including receiving
`user voice input and wirelessly transmitting first
`output representative of the voice input to set-top
`boxes;
`operating the set top boxes to perform
`additional operations
`including, responsive
`to
`receiving the first output from the television remote
`controls, transmitting representative second output
`to a central processing station via the cable
`television link;
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`
`operating the centralized processing station
`to receive and process second output from a
`multitude of set top boxes by applying voice
`recognition to the second outputs to identify user-
`intended voice commands, to derive set-top-box
`compatible instructions to carry out the identified
`voice commands, and to return signals representing
`the instructions to the set top boxes via the cable
`television link;
`operating the set top boxes to perform further
`operations including, responsive to receiving the
`signals representing the instructions from the
`central
`processing
`station,
`executing
`the
`instructions.
`Ex. 1001, 14:65–16:14.
`References Relied Upon
`D.
`Petitioner relies on the following references:
`
`Exhibit
`
`1017
`
`1018
`
`1019
`
`Reference
`United States Patent No. 6,513,063 B1, filed March 14,
`2000 (“Julia”).
`
`United States Patent No. 7,013,283 B1, filed November
`
`16, 2000 (“Murdock”).
`
`United States Patent No. 5,774,859, issued June 30, 1998
`(“Houser”).
`
`Pet. 2–3. Petitioner also relies on the Declaration of Anthony
`Wechselberger (Ex. 1022, “Wechselberger Declaration”), the Reply
`Declaration of Anthony Wechselberger (Ex. 1032), and the Declaration of
`Daniel C. Callaway (Ex. 1021).
`Julia (Ex. 1017)
`1.
`Julia describes a “navigation of electronic data by means of spoken
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`natural language requests.” Ex. 1017, 1:16–18. Figure 1a of Julia is
`reproduced below.
`
`
`Figure 1a “illustrates a system providing a spoken natural language interface
`for network-based information navigation . . . with server-side processing of
`requests.” Id. at 3:6–9. “[A] user’s voice input data is captured by a voice
`input device 102, such as a microphone[, which p]referably [] includes a
`button or the like that can be pressed or held down to activate a listening
`mode.” Id. at 3:39–43. Input device 102 can be also be “a portable remote
`control device with an integrated microphone, and the voice data is
`transmitted from device 102 preferably via infrared (or other wireless) link
`to [a receiver in] communications box 104.” Id. at 3:46–52. “The voice data
`is then transmitted across network 106 to a remote server or servers 108.”
`Id. at 3:54–55. The voice data “is processed by request processing logic 300
`in order to understand the user’s request and construct an appropriate query
`or request for navigation of remote data.” Id. at 3:61–64. “Once the desired
`
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`information has been retrieved from data source 110, it is electronically
`transmitted via network 106 to the user for viewing on client display device
`112.” Id. at 4:18–20. Communications box 104 is used for “receiving and
`decoding/formatting the desired electronic information that is received
`across communications network 106.” Id. at 4:27–30. It is “preferabl[e to
`use] the same [] communications box 104, but [it] may also be a separate
`unit) for receiving and decoding/formatting the desired electronic
`information that is received across communications network 106.” Id. at
`4:25–30.
`
`2. Murdock (Ex. 1018)
`Murdock describes a “system and a concomitant method for providing
`programming content in response to an audio signal.” Ex. 1018, Abstract.
`Figure 1 of Murdock is reproduced below.
`
`
`Figure 1 “depicts a high-level block diagram of a voice control system.”
`Ex. 1018, 1:64–65. The program control device 110 can be “a portable or
`hand-held controller.” Id. at 2:35–36. It can “capture[] the input verbal
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`command signal from the user of the voice activated control system 100.”
`Id. at 2:22–24. “Once the input command signal is received, the program
`control device 110 performs a transmission, e.g., a wireless transmission, of
`the command signal to the local processing unit 120,” which “may include a
`set top terminal, a cable box, and the like.” Id. at 2:31–34, 45–47. The input
`command signal is then transmitted to remote server computer 130 via back
`channel 134. Id. at 3:1–12. Remote server computer 130 “performs speech
`recognition on the received signal, . . . retrieves the requested program
`content from a program database and transmits the retrieved program
`content via the forward channel 132 to the local processing unit 120.” Id. at
`3:15–36. “Upon receipt of the requested programming content, the local
`processing unit 120 transmits the received content to the video player
`122 or the television recorder 124.” Id. at 2:61–66.
`Houser (Ex. 1019)
`3.
`Houser describes a “system for controlling a device such as a
`television and for controlling access to broadcast information such as video,
`audio, and/or text information.” Ex. 1019, Abstract. Figure 1 of Houser is
`reproduced below.
`
`
`
`10
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`
`
`Figure 1 of Houser “is a generalized block diagram of an information system
`in accordance with” the claimed invention. Ex. 1019, 4:60–61. A remote
`control, which includes a microphone, captures “sounds or words spoken by
`a user” and transmits the sound data signals to terminal unit 16. Id. at 6:33–
`7:24. “Terminal unit 16 includes a processor for executing a speech
`recognition algorithm . . . to recognize, for example, commands for
`controlling device 18 or commands for accessing information transmitted by
`information distribution center 12.” Id. at 5:62–5:67. The information is
`then retrieved from “information distribution center 12[,] which receives
`information from one or more remotely located information providers
`14-1, . . . 14-n[,] and supplies or broadcasts this information to a terminal
`unit 16.” Id. at 5:39–44. “Terminal unit 16 then [] generates a command for
`controlling device 18.” Id. at 5:67–6:2. “Device 18 may be any device
`[that] is capable of being operated in response to user supplied commands.”
`Id. at 7:27–29.
`
`Asserted Grounds of Unpatentability
`E.
`Petitioner challenges claims 34, 35, 37, 40, and 41 of the ’538 Patent
`
`based on the asserted grounds of unpatentability set forth in the following
`table. Pet. 1–3, 17–71.
`
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`
`Ground
`1
`
`Julia
`
`Reference(s)
`
`Basis1
`§ 103(a)
`
`Claims Challenged
`34, 35, 37, 40, and 41
`
`Julia and Houser
`
`§ 103(a)
`
`34, 35, 37, 40, and 41
`
`Murdock
`
`§ 103(a)
`
`34, 35, 37, 40, and 41
`
`Murdock and Houser
`
`§ 103(a)
`
`34, 35, 37, 40, and 41
`
`2
`
`3
`
`4
`
`
`II. ANALYSIS
`
`Level of Ordinary Skill in the Art
`A.
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “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)
`(citation omitted). In that regard, Petitioner and Mr. Wechselberger contend
`that a person of ordinary skill in the relevant art would have:
`(i) an undergraduate degree (or equivalent) in electrical
`engineering, computer science, or a comparable subject and at
`least three years of work experience in the field of analog and
`digital television systems with exposure to interactive networks
`and associated control technologies; or (ii) an advanced degree
`(or equivalent) in electrical engineering, computer science, or a
`comparable subject and at least one year of post-graduate
`research or work experience in the same field.
`
`
`1 The relevant section of the Leahy-Smith America Invents Act (“AIA”),
`Pub. L. No. 112–29, took effect on March 16, 2013. Because the application
`from which the ’538 Patent issued was filed before that date, the pre-AIA
`statutory framework applies.
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`Pet. 8, emphases added; see also Ex. 1022 ¶¶ 101–102.
`Quoting Petitioner’s proposal for the level of ordinary skill to be
`applied in connection with the reviews of related patents, Patent Owner
`contends that a person of ordinary skill in the relevant art would have:
`(i) an undergraduate degree (or equivalent) in electrical
`engineering, computer science, or a comparable subject and at
`least three years of professional work experience in the field of
`multi-media systems including in particular speech recognition
`and control technologies, or (ii) an advanced degree (or
`equivalent) in electrical engineering, computer science, or a
`comparable subject and at least one year of post-graduate
`research or work experience in the field of multi-media systems
`including in particular speech recognition and control
`technologies.
`Resp. 7 (quoting Comcast Cable Commc’ns, LLC v. Promptu Sys. Corp.,
`IPR2018-00342, Pet. at 8–9 (PTAB Dec. 19, 2017) (Paper 1)); see also
`Resp. 7–9 (asserting the level of ordinary skill as proposed by Petitioner in
`related IPR proceedings is appropriate for this case); Ex. 2033 ¶¶ 22–29
`(same). As Patent Owner explains, its proposed definition is the same as
`that proposed by Petitioner in Case Nos. IPR2018-00342, IPR2018-00343,
`IPR2018-00344, and IPR2018-00345 (“other Comcast IPR proceedings”),
`which differs from Petitioner’s proposed definition in this proceeding in that
`the proposed definition in those other Comcast IPR proceedings includes a
`further requirement that the person of ordinary skill in the art at the time of
`the invention must also have experience in the field of multi-media systems
`“including in particular speech recognition and control technologies.”
`Resp. 6–9. Patent Owner explains that Petitioner’s proposed definition in
`this proceeding “would not necessarily include expertise with voice
`recognition technology, at least because ‘interactive networks and associated
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`control technologies’ at the time of the invention for analog and digital
`television systems would not have included voice control, which was not
`commercially available (or well known) for television systems.” Id. at 8–9.
`Patent Owner also points out that “Promptu’s patents[, in this proceeding
`and the other Comcast IPR proceedings,] all relate to the same technology
`and claim various aspects of television voice command recognition and
`processing.” Id. at 6.
`
`We agree with Petitioner that the definitions for a person of ordinary
`skill in the art involving unrelated patents in different proceedings need not
`be the same in each proceeding. Reply 2–4. Although the patents in each
`proceeding before us are issued to the same assignee and have some of the
`same inventors, the specific goal of each patent differ between proceedings.
`We also agree with Mr. Wechselberger that “[w]hile the ’538 Patent
`discloses a system that includes voice recognition processing,” it discusses
`voice recognition technology only as a component part of the system, and
`expertise in voice recognition technology was not required to understand the
`’538 Patent because it does not discuss any particular voice recognition
`techniques or algorithms. Ex. 1032 ¶¶ 6–7. Therefore, we agree with Mr.
`Wechselberger that a practitioner would have understood how to implement
`existing voice recognition products in a cable television network without
`having special knowledge or experience with voice recognition algorithms.
`Id. ¶¶ 5–7.
`
`For the foregoing reasons, we credit the testimony of
`Mr. Wechselberger regarding the person of ordinary skill in the art and
`adopt, with modification (e.g., removing the words “at least” from
`Petitioner’s proposed definition), Petitioner’s definition of a person of
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`ordinary skill in the art:
`(i) an undergraduate degree (or equivalent) in electrical
`engineering, computer science, or a comparable subject and three
`years of work experience in the field of analog and digital
`television systems with exposure to interactive networks and
`associated control technologies; or
`(ii) a Master’s of Science degree (or equivalent) in electrical
`engineering, computer science, or a comparable subject and one
`year of post-graduate research or work experience in the same
`field.
`We further note that the prior art in the instant proceeding reflects the
`level of ordinary skill in the art at the time of the invention. See Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For example, as reflected
`in Julia, a person of ordinary skill in the art would have familiarity with
`using a spoken natural language as an input into control systems. See
`Ex. 1017, 1:39–48.
`
`Claim Construction
`B.
`General Principles
`1.
`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. See 37 C.F.R. § 42.100(b) (2017);2 Cuozzo
`Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the
`use of the broadest reasonable interpretation standard as the claim
`
`
`2 A recent amendment to this rule does not apply here, because the Petition
`was filed before November 13, 2018. See “Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`the Patent Trial and Appeal Board,” 83 Fed. Reg. 51,340 (Oct. 11, 2018)
`(amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (to be
`codified at 37 C.F.R. pt. 42).
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`construction standard to be applied in an inter partes review proceeding).
`Under the broadest reasonable interpretation standard, claim terms generally
`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. See In
`re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`Construction of a “means-plus-function” limitation under 35 U.S.C.
`§ 112, sixth paragraph, involves two steps: first identifying the function
`explicitly recited in the claim, and then identifying the corresponding
`structure set forth in the written description that performs the particular
`function set forth in the claim. Asyst Techs, Inc. v. Empak, Inc., 268 F.3d
`1364, 1369–70 (Fed. Cir. 2001).
`
`Terms Containing “means . . . for” and “means [each] for”
`2.
`Petitioner proposes that the following terms, in claim 40, containing
`the words “means . . . for” should not be construed as means-plus-function
`terms: “a plurality of television remote control means each for . . . ,”
`“receiver means for . . . ,” “transmitter means for . . . ,” and “a plurality of
`television set top box means each for . . . .” Pet. 8–10 (citing to Ex. 1022
`¶¶ 139, 143). Patent Owner does not propose any alternative definitions nor
`does Patent Owner respond to Petitioner’s proposal. See generally Resp.
`The use of the term “means” triggers a rebuttable presumption that
`§ 112, ¶ 6 applies. TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259 (Fed.
`Cir. 2008). One way in which this presumption can be overcome is if “the
`claim recites sufficient structure for performing the described functions in
`their entirety.” Id. To determine if the claim recites sufficient structure, “it
`is sufficient if the claim term is used in common parlance or by persons of
`skill in the pertinent art to designate structure, even if the term covers a
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`broad class of structures and even if the term identifies the structures by their
`function.” Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354,
`1359–60 (Fed. Cir. 2004).
`Here, for each limitation, the claim recites sufficient structure for
`performing the described functions. For example, a television remote
`control is sufficient structure “for directly and wirelessly controlling
`television sets and additionally receiving user voice input and wirelessly
`transmitting first output representative of the voice input to a television set-
`top box means” (Ex. 1022 ¶ 139) and a television set-top box is sufficient
`structure for “receiving television input signals via cable television link and
`providing television output signals compatible with television sets, and
`responsive to receiving the first output from one of the television remote
`control means to transmit representative second output to a central
`processing station via the cable television link.” (id. ¶ 143). Therefore,
`based on our review of the record before us, we are persuaded by Petitioner
`that these terms do not invoke 35 U.S.C. § 112, ¶ 6.
`
`C. Obviousness
`General Principles
`1.
`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
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`the art; and (4) when in evidence, objective indicia of non-obviousness
`(i.e., secondary considerations). Graham v. John Deere Co., 383 U.S. 1, 17–
`18 (1966).
`An invention “composed of several elements is not proved obvious
`merely by demonstrating that each of its elements was, independently,
`known in the prior art.” KSR, 550 U.S. at 418. Rather, to establish
`obviousness, petitioner bears the “burden to demonstrate both that a skilled
`artisan would have been motivated to combine the teachings of the prior art
`references to achieve the claimed invention, and that the skilled artisan
`would have had a reasonable expectation of success in doing so.” In re
`Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (internal
`quotations omitted); see KSR, 550 U.S. at 418. Moreover, a petitioner
`cannot satisfy this burden by “employ[ing] mere conclusory statements” and
`“must instead articulate specific reasoning, based on evidence of record” to
`support an obviousness determination. Magnum Oil, 829 F.3d at 1380.
`Stated differently, there must be “articulated reasoning with some rational
`underpinning to support the legal conclusion of obviousness.” KSR, 550
`U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
`The “factual inquiry” into the reasons for “combin[ing] references
`must be thorough and searching, and the need for specificity pervades . . . .”
`In re Nuvasive, Inc., 842 F.3d 1376, 1381–82 (Fed. Cir. 2016) (internal
`quotations and brackets omitted). A determination of obviousness cannot be
`reached where the record lacks “explanation as to how or why the references
`would be combined to produce the claimed invention.” TriVascular, Inc. v.
`Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016); see Nuvasive, 842 F.3d
`at 1382–86 (holding that an obviousness determination cannot be reached
`
`18
`
`
`
`IPR2018-00341
`Patent 7,260,538 B2
`
`where there is no “articulat[ion of] a reason why a [person having ordinary
`skill in the art] would combine” and “modify” the prior art teachings). This
`required explanation as to how and why the references would be combined
`avoids an impermissible “hindsight reconstruction,” using “the patent in suit
`as a guide through the maze of prior art references, combining the right
`references in the right way so as to achieve the result of the claims in suit.”
`TriVascular, 812 F.3d at 1066; see also In re NTP, Inc., 654 F.3d 1279,
`1299 (Fed. Cir. 2011). We analyze the asserted grounds based on
`obviousness with these principles in mind.
`
`2.
`
`Combination Grounds – Obviousness over Julia in view of Houser
`and Obviousness over Murdock in view of Houser
`Patent Owner contends that “Petitioner’s combinations fail because
`[Petitioner] did not articulate a sufficient motivation to combine the features
`of the prior art to yield the claimed invention.” Resp. 12–13. According to
`Patent Owner, “[t]he entirety of the [P]etition’s discussion of a motivation to
`combine Julia with Houser (or Murdock with Houser) falls within a mere
`three paragraphs of each ground.” Id. at 13–15.
`Petitioner notes that a person of ordinary skill in the art would have
`been motivated to combine Julia with Houser and Murdock with Houser
`because the references “all relate to interactive television systems with voice
`recognition capabilities” (i.e., analogous art) and that they all “have
`numerous similarities to each other and the challenged patent.” Pet. 35–36,
`56. Petitioner also states that “a person of ordinary skill in the art would
`have recognize[d] the benefits of combining” the references and that such a
`combination “would have been no more than combining prior art elements
`
`19
`
`
`
`IPR2018-00341
`Patent 7,260,538 B2
`
`according to known methods to yield predictable results.” Pet. 36–38, 57–
`58.
`
`Petitioner’s conclusory rationale for the combinations, however, is
`untethered to any claim limitations. See Pet. 35–38, 56–58 (citing to Ex.
`1022 ¶¶ 226–229, 232–234; 299–300, 304–306). For example, when
`discussing the combination of the references for a particular limitation,
`Petitioner starts with a discussion of either Julia or Murdock, followed by a
`discussion of Houser, and then provides a conclusory assertion that the
`combination would disclose the limitation at issue. See, e.g., Pet. 24–25
`(“Julia also discloses . . . . In addition, Houser discloses . . . . Thus, Julia
`alone or combined with Houser discloses . . .”), 26–27 (“As explained
`above, Julia discloses . . . . In addition, Houser also discloses . . . . Thus,
`Julia alone or combined with Houser discloses . . .”). These discussions do
`not articulate, with respect to any specific limitation, or for any claim as a
`whole, why or how Julia or Murdock can and should be combined with
`Houser.
`A determination of obviousness cannot be reached where the record
`lacks “explanation as to how or why the references would be combined to
`produce the claimed invention.” TriVascular, 812 F.3d at 1066. The
`Petitioner also states that “a skilled artisan would have been capable of
`combining the teaching[s] of [the prior art references because such]
`combination[s] would have been no more than combining prior art elements
`according to known methods to yield predictable results.” However, this
`discussion is similarly untethered to any claim element, or to the claim as a
`whole. Pet. 37–38, 58 (citing to Ex. 1022 ¶¶ 233, 306–307.) And, again, we
`are not informed what teaching of one reference is proposed to be combined
`
`20
`
`
`
`IPR2018-00341
`Patent 7,260,538 B2
`
`with what teaching of the other reference, or why and how the combination
`would have been made. To the extent Petitioner’s position is that once it
`establishes that two prior art references are within the same field and are
`directed to solving the same problem, then all features within one reference
`can be used within the other, and vice versa, without need for further
`explanation, it cites no authority to support that broad position and we are
`aware of none.
`Therefore, we determine that Petitioner has not established, by a
`preponderance of the evidence, that claims 34, 35, 37, 40, and 41 would
`have been obvious over Julia in view of Houser or Murdock in view of
`Houser.
`
`3.
`
`Single Reference Obviousness Grounds – Obvious over Julia alone or
`Obvious over Murdock Alone
`Claims 34, 35, 37, 40, and 41
`a.
`Petitioner contends that claims 34, 35, 37, 40, and 41 are unpatentable
`over Julia alone or Murdock alone under 35 U.S.C. § 103(a), relying on the
`supporting testimony of Mr. Wechselberger (Exs. 1022, 1032). Pet. 17–56;
`see also Reply 4–13.
`Patent Owner makes numerous arguments regarding how Julia or
`M
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