Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 12
`Entered: May 14, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`SPEAKWARE, INC.,
`Patent Owner.
`____________
`
`Case IPR2019-00340
`Patent 6,397,186 B1
`_______________
`
`
`Before DEBRA K. STEPHENS, DAVID C. MCKONE, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 12
`Entered: May 14, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`SPEAKWARE, INC.,
`Patent Owner.
`____________
`
`Case IPR2019-00340
`Patent 6,397,186 B1
`_______________
`
`
`Before DEBRA K. STEPHENS, DAVID C. MCKONE, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`
`
`IPR2019-00340
`Patent 6,397,186 B1
`
`
`INTRODUCTION
`I.
`Google LLC (“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting
`an inter partes review of claims 1–20 (“the challenged claims”) of U.S.
`Patent No. 6,397,186 B1 (Ex. 1001, “the ’186 patent”). SpeakWare, Inc.
`(“Patent Owner”) filed a Preliminary Response (Paper 7, “Prelim. Resp.”) to
`the Petition. Also, as authorized, Petitioner filed a Reply (Paper 10,
`“Reply”) to the Preliminary Response, and Patent Owner filed a Sur-reply
`(Paper 11, “Sur-reply”) to the Reply.
`An inter partes review may not be instituted unless “the information
`presented in the petition . . . and any response . . . shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Further, a
`decision to institute may not institute on fewer than all claims challenged in
`the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).
`After considering the evidence and arguments presented in the Petition,
`Preliminary Response, Reply, and Sur-reply, we determine that Petitioner
`demonstrates a reasonable likelihood of prevailing in showing that at least
`one of the challenged claims of the ’186 patent is unpatentable.
`Accordingly, we institute an inter partes review as to all the challenged
`claims of the ’186 patent on all the grounds of unpatentability set forth in the
`Petition.
`A.
`Related Proceedings
`The parties indicate that the ’186 patent is or has been the subject of
`several cases in the United States District Court for the Central District of
`California. Pet. 78–79; Paper 4, 1. The parties also indicate that the ’186
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`IPR2019-00340
`Patent 6,397,186 B1
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`patent is the subject of a petition for inter partes review in IPR2019-00342.
`Pet. 78; Paper 4, 2.
`B.
`The ’186 Patent
`The ’186 patent relates to “a wireless, user-programmable, voice-
`activated and voice-operated remote control system for controlling
`appliances.” Ex. 1001, 1:6–9. According to the ’186 patent, “[a]n important
`aspect of the invention relates to voice-actuated mode switching for
`switching the present invention from a low power consumption mode.”
`Id. at 4:31–33.
`The ’186 patent describes a system that includes a microphone, an
`audio switching circuit, a sound activation circuit, a speech recognition
`circuit, and a transmitter. Id. at 7:22–26. The ’186 patent explains that the
`microphone receives sound, converts it into an output signal, and directs the
`output signal to the audio switching circuit. Id. at 7:43–46. If the speech
`recognition circuit is in speech recognition mode (i.e., it is awake), the audio
`switching circuit routes the output signal to the speech recognition circuit.
`Id. at 7:46–50. If, on the other hand, the speech recognition circuit is in
`sound activation mode (i.e., it is asleep), the audio switching circuit routes
`the output signal to the sound activation circuit. Id. at 7:50–53. The sound
`activation circuit includes an amplification circuit and a trigger circuit. Id. at
`7:54–59. “If the amplified [output] signal is of sufficient amplitude to
`activate the trigger circuit . . . , the output of the trigger circuit causes a logic
`state change on the input/output pin of the speech recognition circuit . . . ,
`causing the invention to change modes from a sleep or sound activation
`mode to an awake or speech recognition mode.” Id. at 7:62–67.
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`C.
`Illustrative Claim
`Of the challenged claims, claim 1 is independent and is reproduced
`
`below.
`
`1. An audio signal activated control system for
`controlling appliances comprising:
`a microphone for receiving audio signals and converting
`said audio signals to electrical signals;
`a speech recognition system for receiving said electrical
`signals, said speech recognition system including a processor
`and having a low power sound activation mode for detecting
`the presence of said electrical signals and a speech recognition
`mode for converting said electrical signals to electrical
`representative signals, decoding said electrical representative
`signals and generating control signals for controlling one or
`more appliances, wherein in said speech recognition mode said
`processor decodes said electrical representative signals and
`wherein in said sound activation mode said processor is in a
`low power state, said speech recognition system configured to
`automatically switch from said sound activation mode to said
`speech recognition mode as a function of the amplitude of said
`electrical signals; and
`an appliance control circuit which includes a transmitter,
`said appliance control circuit configured to receive said control
`signals from said speech recognition system and generate and
`automatically transmit one or more appliance control signals to
`said one or more appliances.
`Ex. 1001, 52:3–28.
`D.
`Evidence of Record
`Petitioner submits the following references and declaration (Pet. 2–3):
`Reference or Declaration
`Exhibit No.
`Salazar et al., U.S. Patent No. 5,802,467 (filed Sept. 28,
`Ex. 1002
`1995, issued Sept. 1, 1998) (“Salazar”)
`Miyazawa et al., U.S. Patent No. 5,983,186 (filed Aug. 20,
`1996, issued Nov. 9, 1999) (“Miyazawa”)
`
`Ex. 1003
`
`4
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`35 U.S.C. § 103(a)
`
`35 U.S.C. § 103(a)
`
`5
`
`6
`
`6
`
`8
`
`8
`
`17 and 18
`
`17 and 18
`
`35 U.S.C. § 103(a)
`
`35 U.S.C. § 103(a)
`
`35 U.S.C. § 103(a)
`
`35 U.S.C. § 103(a)
`
`35 U.S.C. § 103(a)
`
`35 U.S.C. § 103(a)
`
`35 U.S.C. § 103(a)
`
`5
`
`Reference or Declaration
`Bossemeyer, Jr., U.S. Patent No. 6,012,027 (filed Sept. 17,
`1997, issued Jan. 4, 2000) (“Bossemeyer”)
`Oppendahl, U.S. Patent No. 5,008,954 (filed Sept. 24, 1990,
`issued Apr. 16, 1991) (“Oppendahl”)
`Reichel et al., U.S. Patent No. 5,459,792 (filed Dec. 15,
`1993, issued Oct. 17, 1995) (“Reichel”)
`Clark et al., U.S. Patent No. 6,425,086 B1 (filed Apr. 30,
`1999, issued July 23, 2002) (“Clark”)
`Douma et al., U.S. Patent No. 5,583,965 (filed Sept. 12,
`1994, issued Dec. 10, 1996) (Douma”)
`Declaration of Stuart J. Lipoff (“Lipoff Declaration”)
`E.
`Asserted Grounds of Unpatentability
`Petitioner asserts that the challenged claims are unpatentable on the
`following grounds (Pet. 3):
`Claim(s)
`Basis
`1–4, 7–16, 19, and
`35 U.S.C. § 103(a)
`20
`1–4, 7–16, 19, and
`20
`5
`
`Exhibit No.
`Ex. 1004
`
`Ex. 1005
`
`Ex. 1006
`
`Ex. 1007
`
`Ex. 1008
`
`Ex. 1009
`
`References
`Salazar and Miyazawa
`
`Salazar, Miyazawa, and
`Bossemeyer
`Salazar, Miyazawa, and
`Oppendahl
`Salazar, Miyazawa,
`Bossemeyer, and Oppendahl
`Salazar, Miyazawa, and
`Reichel
`Salazar, Miyazawa,
`Bossemeyer, and Reichel
`Salazar, Miyazawa, and
`Clark
`Salazar, Miyazawa,
`Bossemeyer, and Clark
`Salazar, Miyazawa, and
`Douma
`Salazar, Miyazawa,
`Bossemeyer, and Douma
`
`
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`Patent 6,397,186 B1
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`
`II. ANALYSIS
`A. Claim Construction
`In an inter partes review proceeding, a claim of a patent is construed
`using the same standard used in federal district court, including construing
`the claim in accordance with the ordinary and customary meaning of the
`claim as understood by one of ordinary skill in the art and the prosecution
`history pertaining to the patent. 37 C.F.R. § 42.100(b). Neither party
`proposes expressly construing any claim terms at this time. See Pet. 7;
`Prelim. Resp. 1–62. On this record and for purposes of this Decision, we
`determine that no claim terms require express construction to resolve the
`parties’ disputes about the asserted grounds of unpatentability. See Section
`II.D; Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed.
`Cir. 1999) (“[O]nly those terms need be construed that are in controversy,
`and only to the extent necessary to resolve the controversy.”).
`B. Word Limit
`Patent Owner argues that “Petitioner attempts to circumvent the word
`limits of 37 C.F.R. § 42.24 by splitting a single challenge to substantially
`identical claims across two petitions.” Prelim. Resp. 2. Specifically, the
`Petition in this case challenges claims 1–20 of the ’186 patent (Pet. 1), and
`the petition in IPR2019-00342 challenges claims 21–55 of the ’186 patent
`(IPR2019-00342, Paper 2, 1). Patent Owner argues that the two petitions
`challenge “substantially the same” claims, “make substantially similar
`arguments,” and “rely on nearly identical disclosures” in the prior art.
`Prelim. Resp. 6–7. Patent Owner contends that because “[t]he challenged
`claim limitations, asserted prior art, asserted arguments, and cited evidence
`are substantially the same across the two Petitions,” the “only reason
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`Petitioner split its challenge across two Petitions is that Petitioner did not
`want to abide by the 14,000-word limit for petitions.” Id. at 12. Patent
`Owner further contends that Petitioner’s approach requires Patent Owner
`and the Board to “needlessly expend significant time and resources
`addressing several petitions where one would have sufficed.” Id.
`We are not persuaded that Petitioner violated the word limit of
`§ 42.24. First, Patent Owner does not assert that the Petition itself exceeds
`the word limit. See Prelim. Resp. 2–12. Second, we are not persuaded that
`Petitioner’s decision to file two petitions, each challenging different claims
`of the ’186 patent, was an attempt to circumvent the word limit. The
`Board’s rules require that a petition for inter partes review provide “a
`statement of the precise relief requested for each claim challenged,”
`including “where each element of the claim is found in the prior art patents
`or printed publications relied upon.” 37 C.F.R. § 42.104(b) (emphasis
`added). Consistent with the Board’s rules, Petitioner explains that it divided
`the 55 claims of the ’186 patent among two petitions in order to provide a
`“claim-specific analysis” on an “element-by-element basis.” Reply 2.
`C.
`35 U.S.C. § 325(d)
`Patent Owner argues that the Petition should be denied under
`35 U.S.C. § 325(d). Prelim. Resp. 14. Section 325(d) provides that in
`determining whether to institute an inter partes review, “the Director 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.” We consider several non-exclusive factors when
`determining whether to deny institution under § 325(d), including
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`(a) the similarities and material differences between the asserted
`art and the prior art involved during examination; (b) the
`cumulative nature of the asserted art and the prior art evaluated
`during examination; (c) the extent to which the asserted art was
`evaluated during examination, including whether the prior art
`was the basis for rejection; (d) the extent of the overlap between
`the arguments made during examination and the manner in
`which Petitioner relies on the prior art or Patent Owner
`distinguishes the prior art; (e) whether Petitioner has pointed
`out sufficiently how the Examiner erred in its evaluation of the
`asserted prior art; and (f) the extent to which additional
`evidence and facts presented in the Petition warrant
`reconsideration of the prior art or arguments.
`Becton, Dickinson & Co. v. B. Braun Melsungen AG, Case IPR2017-01586,
`slip op. at 17–18 (PTAB Dec. 15, 2017) (Paper 8) (informative).
`1.
`Factors One and Two
`Under the first two Becton factors, we consider “the similarities and
`material differences between the asserted art and the prior art involved
`during examination” and “the cumulative nature of the asserted art and the
`prior art evaluated during examination.” Id. at 17. Patent Owner contends
`that, during prosecution, the Examiner rejected the pending claims based on
`Kimura, which describes “a system to control appliances,” and Tran, which
`describes “a device that automatically switched from a low power state to an
`active state as a function of amplitude.” Prelim. Resp. 15, 28. Patent Owner
`asserts that the Petition relies on a similar combination, namely, Salazar,
`which describes “a purported system to control appliances,” and Miyazawa,
`which describes “a device that purportedly switched from a low power state
`to an active state as a function of the amplitude of electrical signals.” Id. at
`21, 28.
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`The first two Becton factors do not favor denying institution. During
`
`prosecution, the Examiner rejected the pending claims based on Kimura and
`Tran, and the Applicant responded by arguing that it would not have been
`obvious to combine those references. Ex. 2001, 272–76, 282–83.
`Specifically, the Applicant argued that
`it should be clear that the push to talk switch used not only in
`the Kimura et al. ‘090 patent but also the Kimura ‘080 patent is
`used to solve a problem associated with prior art systems which
`do not include a push to talk switch. As such, it is clear that the
`Kimura et al. patents actually teach away from combination
`with a system which eliminates the need for the push to talk
`switch as in the Tran patent.
`Id. at 283. In other words, the Applicant argued that it would not have been
`obvious to combine Kimura and Tran because the proposed combination
`would have eliminated a key feature of Kimura—the “push to talk switch.”
`Id. In response to the Applicant’s argument, the Examiner allowed the
`pending claims. Id. at 299. Here, Petitioner’s proposed combination of
`Salazar and Miyazawa does not involve modifying or eliminating a push to
`talk switch. Pet. 8 (“Petitioner does not suggest modifying a trigger-
`activated system to remove its trigger for voice input, as was suggested
`during prosecution.”). As a result, there is a material difference between the
`Examiner’s combination of Kimura and Tran and Petitioner’s combination
`of Salazar and Miyazawa.
`2.
`Factor Three
`Under the third Becton factor, we consider “the extent to which the
`
`asserted art was evaluated during examination, including whether the prior
`art was the basis for rejection.” Becton, slip op. at 17. Patent Owner
`contends that “Miyazawa is cited on the face of the ’186 patent, which
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`Patent 6,397,186 B1
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`means the examiner was aware of it during prosecution.” Prelim. Resp. 23.
`Patent Owner also contends that “because the examiner was aware of
`Miyazawa when he initially rejected the claims, it is reasonable to infer that
`he concluded that Miyazawa was cumulative of (or not as good as) Tran for
`the examiner’s purposes.” Id. at 31.
`The third Becton factor does not favor denying institution. The
`evidence of record does not indicate that the Examiner considered Salazar.
`And, although the Applicant cited Miyazawa in an information disclosure
`statement (Ex. 2001, 266), the Examiner did not rely on Miyazawa as the
`basis for a rejection or otherwise provide an analysis of Miyazawa (id. at
`243–50, 269–77).
`3.
`Factor Four
`Under the fourth Becton factor, we consider “the extent of the overlap
`between the arguments made during examination and the manner in which
`Petitioner relies on the prior art or Patent Owner distinguishes the prior art.”
`Becton, slip op. at 17–18. Patent Owner contends that “just like the
`examiner did during prosecution, the Petitions identify the desire to ‘reduce
`power consumption’ of the system for controlling appliances as the
`purported reason to combine.” Prelim. Resp. 26. Patent Owner further
`contends that “there is complete overlap between the arguments that the
`applicant made to overcome the examiner’s combination, and the arguments
`that Patent Owner makes in this Preliminary Response to overcome the
`arguments in the Petitions.” Id. at 31.
`The fourth Becton factor does not favor denying institution. As
`discussed above, during prosecution, the Applicant argued that it would not
`have been obvious to combine Kimura and Tran because the proposed
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`combination would have eliminated a key feature of Kimura—the “push to
`talk switch.” Ex. 2001, 282–83. In contrast, here, Petitioner explains that it
`“does not suggest modifying a trigger-activated system to remove its trigger
`for voice input, as was suggested during prosecution,” but “instead submits
`that it would have been obvious to combine Salazar’s voice-controlled
`appliance remote system with the voice-activated processor of Miyazawa.”
`Pet. 8. And Patent Owner does not argue that Petitioner’s proposed
`combination would eliminate a push to talk switch. See Prelim. Resp. 35–
`62. Thus, the Applicant’s arguments during prosecution do not overlap with
`the manner in which Petitioner relies on the prior art in the Petition or Patent
`Owner distinguishes the prior art in the Preliminary Response.
`4.
`Factor Five
`Under the fifth Becton factor, we consider “whether Petitioner has
`pointed out sufficiently how the Examiner erred in its evaluation of the
`asserted prior art.” Becton, slip op. at 18. Patent Owner argues that the
`Petitioner does not identify “any error in the examiner’s reasoning or
`decision to allow the claims over the combination of Kimura and Tran.”
`Prelim. Resp. 32.
` The fifth Becton factor does not favor denying institution. Regardless
`of whether the Examiner erred in evaluating the combination of Kimura and
`Tran, the Examiner did not substantively consider the combination of
`Salazar and Miyazawa. See Ex. 2001, 243–50, 269–77. Further, as
`discussed above, there is a material difference between the Examiner’s
`combination of Kimura and Tran and Petitioner’s combination of Salazar
`and Miyazawa. See Section II.C.1.
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`5.
`Factor Six
`Under the fifth Becton factor, we consider “the extent to which
`additional evidence and facts presented in the Petition warrant
`reconsideration of the prior art or arguments.” Becton, slip op. at 18. Patent
`Owner contends that “[t]he only additional evidence that the Petitions cite is
`two expert declarations.” Prelim. Resp. 34. And, according to Patent
`Owner, “for the motivation to combine, the declarations rely on the same
`desire to ‘reduce power consumption’ asserted in the Petitions—which, as
`explained above, is exactly the reason to combine on which the examiner
`initially relied, but that the applicant ultimately overcame.” Id. at 34–35.
`The sixth Becton factor does not favor denying institution. As
`discussed above, there is a material difference between the Examiner’s
`combination of Kimura and Tran and Petitioner’s combination of Salazar
`and Miyazawa. See Section II.C.1. For at least that reason, the additional
`evidence and facts presented in the Petition warrant consideration.
`6.
`Summary
`For the reasons discussed above, none of the Becton factors favor
`denying institution. Therefore, we do not exercise our discretion to deny
`institution under § 325(d).
`D.
`Asserted Grounds of Unpatentability
`1.
`Obviousness of Claims 1–4, 7–16, 19, and 20 Over
`Salazar and Miyazawa, and Over Salazar, Miyazawa,
`and Bossemeyer
`Petitioner argues that claims 1–4, 7–16, 19, and 20 would have been
`obvious over Salazar and Miyazawa, and over Salazar, Miyazawa, and
`Bossemeyer. Pet. 3. For the reasons discussed below, Petitioner
`demonstrates a reasonable likelihood of prevailing in showing that claims 1–
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`4, 7–16, 19, and 20 would have been obvious over Salazar and Miyazawa,
`and over Salazar, Miyazawa, and Bossemeyer.
`a.
`Claim 1
`The preamble of claim 1 recites “[a]n audio signal activated control
`system for controlling appliances.” Ex. 1001, 52:3–4. Petitioner presents
`evidence that Salazar teaches a system that controls appliances based on
`voice commands. Pet. 23–25 (citing Ex. 1002, 3:15–40, 6:31–51, 22:35–
`37).
`
`Claim 1 recites “a microphone for receiving audio signals and
`converting said audio signals to electrical signals.” Ex. 1001, 52:5–6.
`Petitioner presents evidence that Salazar teaches a handset and a base station
`with microphones for receiving audio signals and converting the audio
`signals into electrical signals. Pet. 25–27 (citing Ex. 1002, Abstract, 1:8–14,
`3:32–60, 17:37–65, 21:43–58, 24:37–51).
`Claim 1 recites “a speech recognition system for receiving said
`electrical signals, said speech recognition system including a processor.”
`Ex. 1001, 52:7–9. Petitioner presents evidence that Salazar teaches a speech
`recognition system with a voice activated device integrated circuit (“IC”)
`that receives electrical signals from a microphone. Pet. 28–30 (citing
`Ex. 1002, 3:32–60, 17:57–61, 21:42–56, 24:37–51).
`Claim 1 recites “said speech recognition system . . . having a low
`power sound activation mode for detecting the presence of said electrical
`signals.” Ex. 1001, 52:9–11. Petitioner presents evidence that Miyazawa
`teaches a speech recognition system with a central processing unit (“CPU”)
`that switches from a sleep mode to a speech recognition mode based on
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`detecting electrical signals received from a microphone. Pet. 31–33 (citing
`Ex. 1003, 2:46–53, 3:13–27, 4:10–22, 9:59–10:15, 11:50–67).
`Claim 1 recites “said speech recognition system . . . having . . . a
`speech recognition mode for converting said electrical signals to electrical
`representative signals, [and] decoding said electrical representative signals.”
`Ex. 1001, 52:11–13. Petitioner presents evidence that Miyazawa teaches a
`speech recognition system with a speech recognition mode that converts
`electrical signals received from a microphone into representative signals and
`decodes the representative signals. Pet. 33–38 (citing Ex. 1003, 6:38–9:24).
`Claim 1 recites “said speech recognition system . . . having . . . a
`speech recognition mode for . . . generating control signals for controlling
`one or more appliances.” Ex. 1001, 52:14–15. Petitioner presents evidence
`that Salazar teaches a speech recognition system that generates control
`signals for controlling one or more appliances. Pet. 38–39 (citing Ex. 1002,
`3:53–60).
`Claim 1 recites “wherein in said speech recognition mode said
`processor decodes said electrical representative signals.” Ex. 1001, 52:15–
`17. Petitioner presents evidence that Miyazawa teaches a CPU that decodes
`representative signals in a speech recognition mode. Pet. 39 (citing
`Ex. 1003, 6:38–7:6).
`Claim 1 recites “wherein in said sound activation mode said processor
`is in a low power state.” Ex. 1001, 52:17–18. Petitioner presents evidence
`that Miyazawa teaches a CPU that is in a low power state during a sleep
`mode. Pet. 40 (citing Ex. 1003, 2:46–53, 4:61–5:7, 9:62–10:15).
`Claim 1 recites “said speech recognition system configured to
`automatically switch from said sound activation mode to said speech
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`recognition mode as a function of the amplitude of said electrical signals.”
`Ex. 1001, 52:18–22. Petitioner presents evidence that Miyazawa teaches a
`speech recognition system that automatically switches from sleep mode to
`speech recognition mode based on whether the electrical signals received
`from a microphone are equal to or greater than a threshold.1 Pet. 40–46
`(citing Ex. 1003, Fig. 4).
`Claim 1 recites “an appliance control circuit which includes a
`transmitter, said appliance control circuit configured to receive said control
`signals from said speech recognition system and generate and automatically
`transmit one or more appliance control signals to said one or more
`appliances.” Ex. 1001, 52:23–28. Petitioner presents evidence that Salazar
`teaches an appliance control circuit with transceivers that receive command
`and control signals from a microprocessor and transmit those signals to one
`or more appliances. Pet. 47–49 (citing Ex. 1002, 1:50–2:25, 3:15–40, 3:53–
`60, 4:49–64, 5:39–46, 21:8–46).
`At this stage of the proceeding, Patent Owner does not dispute that the
`combination of Salazar and Miyazawa and the combination of Salazar,
`Miyazawa, and Bossemeyer teach the limitations of claim 1.
`b.
`Claims 2–4, 7–16, 19, and 20
`Claims 2–4, 7–16, 19, and 20 depend, directly or indirectly, from
`claim 1. Petitioner presents evidence that the combination of Salazar and
`Miyazawa and the combination of Salazar, Miyazawa, and Bossemeyer
`
`
`1 Petitioner explains that it includes Bossemeyer to address a potential
`argument by Patent Owner that “Salazar and Miyazawa do not disclose
`switching between modes based on an amplitude of a microphone electrical
`signal.” Pet. 21.
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`
`teach the limitations of claims 2–4, 7–16, 19, and 20. Pet. 49–62. At this
`stage of the proceeding, Patent Owner does not dispute that the combination
`of Salazar and Miyazawa and the combination of Salazar, Miyazawa, and
`Bossemeyer teach the limitations of claims 2–4, 7–16, 19, and 20.
`c.
`Reason to Combine
`Petitioner argues that a person of ordinary skill in the art would have
`had reason to combine the teachings of Salazar and Miyazawa. Pet. 15–20
`(citing Ex. 1009 ¶¶ 61–71). Specifically, Petitioner presents evidence that
`1) a person of ordinary skill in the art “would have found it obvious to
`incorporate Miyazawa’s voice-triggered switching into Salazar’s voice-
`activated appliance control system to further reduce power consumption in
`Salazar”; 2) “[c]ombining Miyazawa with Salazar would have been simply
`combining known techniques of voice control with known battery-saving
`processor modes to yield the predictable result of a system employing voice
`inputs to switch between processor modes that maintains a low power mode
`until a voice command is received;” and 3) a person of ordinary skill in the
`art would have been motivated to combine Salazar and Miyazawa “because
`Miyazawa teaches that multiple CPU functionalities can be consolidated into
`a single processor,” which provides “cost-savings.”2 Pet. 16–20 (citing
`Ex. 1009 ¶¶ 64–65, 69–70). Further, Petitioner presents evidence that
`combining Salazar and Miyazawa would have been straightforward for a
`person of ordinary skill in the art. Pet. 17 (citing Ex. 1009 ¶ 66).
`
`
`2 Petitioner also presents evidence that it would have been obvious to
`combine the teachings of Salazar, Miyazawa, and Bossemeyer. Pet. 21–23
`(citing Ex. 1009 ¶¶ 72–74).
`
`16
`
`
`
`IPR2019-00340
`Patent 6,397,186 B1
`
`
`Patent Owner responds that a person of ordinary skill in the art would
`not have combined Salazar and Miyazawa as Petitioner proposes because
`further reducing power consumption in Salazar would have been
`unnecessary. Prelim. Resp. 37–44. Specifically, Patent Owner argues that
`Salazar teaches a battery save circuit that extends battery life from 15 hours
`to 5–10 days. Id. at 38–40 (citing Ex. 1002, 18:25–50, 19:1–5, 19:31–34,
`19:40–45). According to Patent Owner, “a person of ordinary skill would
`have concluded that there was no need to incorporate any additional
`mechanism to reduce power into the Salazar handset” because “this amount
`of battery life was more than sufficient.” Prelim. Resp. 40–41.
`On this record, Patent Owner’s argument is not persuasive. Patent
`Owner does not identify specific evidence to support its argument that a
`person of ordinary skill in the art would have concluded that there was no
`need to further reduce power consumption in Salazar. See Prelim. Resp. 40–
`41. At this stage of the proceeding, Patent Owner only provides attorney
`argument, which is insufficient to rebut Petitioner’s evidence discussed
`above. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
`Patent Owner also responds that Salazar does not include any teaching
`or suggestion that further power reduction would be desirable. Prelim. Resp.
`44–46. On this record, Patent Owner’s argument is not persuasive. Patent
`Owner focuses on whether Salazar contains a teaching or suggestion that
`would have motivated the proposed combination, but “[t]he obviousness
`analysis cannot be confined by a formalistic conception of the words
`teaching, suggestion, and motivation.” KSR Int’l Co. v. Teleflex Inc., 550
`U.S. 398, 419 (2007). Rather, “[u]nder the correct analysis, any need or
`problem known in the field of endeavor at the time of invention and
`
`17
`
`
`
`IPR2019-00340
`Patent 6,397,186 B1
`
`addressed by the patent can provide a reason for combining the elements in
`the manner claimed.” Id. at 420.
`Patent Owner responds that the proposed combination of Salazar and
`Miyazawa would have increased power consumption, not reduced it.
`Prelim. Resp. 47–53. Specifically, Patent Owner argues that Petitioner
`proposes adding Miyazawa’s “mode-switching mechanism” to Salazar.
`Id. at 50. Thus, according to Patent Owner, the proposed combination
`“would require the Salazar processor to be (1) turned on periodically as
`described in Salazar and, in addition, (2) turned on between periods, to
`implement Miyazawa’s sound-based mode-switching mechanism.” Id. at
`49. Patent Owner concludes that, therefore, “the asserted combination
`would require the processor in Salazar to wake up more frequently than it
`would without Miyazawa’s mode-switching mechanism.” Id. at 52.
`On this record, Patent Owner’s argument is not persuasive. Petitioner
`does not propose combining Salazar and Miyazawa in a manner that would
`require Salazar’s processor to wake up both periodically and between
`periods. For example, Petitioner asserts that “the combined Salazar-
`Miyazawa system would provide a universal remote system with a lower
`power mode that does not process voice commands until one is detected
`using Miyazawa’s thresholding techniques.” Pet. 17. Similarly, Petitioner’s
`declarant, Mr. Stuart Lipoff, explains that
`Salazar discloses that its processor switches out of the sleep
`state (‘stop mode’ in Salazar) based on a hardware interrupt,
`Salazar, 18:30–36, and one skilled in the art would have
`recognized that Miyazawa’s detection of a sound signal results
`in the output of a signal from sound signal power detector 9
`[and] would have been implemented as a hardware interrupt, a
`common processing technique.
`
`18
`
`
`
`IPR2019-00340
`Patent 6,397,186 B1
`
`Ex. 1009 ¶ 66. In other words, Petitioner proposes using Salazar’s hardware
`interrupts to wake up the processor based on Miyazawa’s sound threshold
`instead of just waking up the processor periodically. Pet. 17; Ex. 1009 ¶ 66.
`Patent Owner responds that the proposed combination of Salazar and
`Miyazawa would have increased costs, not reduced them. Prelim. Resp. 53–
`56. In particular, Patent Owner argues that Petitioner does not provide “any
`analysis or evidence showing that their proposed modification of Salazar
`would actually result in cost savings.” Id. at 54. Patent Owner further
`argues that Petitioner’s proposed combination would “require adding
`numerous additional components from Miyazawa to the Salazar system,”
`and, thus, would increase costs. Id. at 54–56. At this stage of the
`proceeding, we need not determine whether Petitioner shows sufficiently
`that the proposed combination would reduce costs because, as discussed
`above, Petitioner shows sufficiently that the proposed combination would
`have 1) reduced power consumption; and 2) been a combination of known
`techniques that yields a predictable result. Pet. 16–17 (citing Ex. 1009
`¶¶ 64–65).
`Patent Owner responds that simply listing similarities between Salazar
`and Miyazawa and asserting that the proposed combination would have been
`straightforward does not demonstrate why it would have been obvious to
`combine them. Prelim. Resp. 56–59. On this record, Patent Owner’s
`argument is not persuasive. Petitioner does not simply assert that there are
`similarities between Salazar and Miya
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