UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`Google LLC,
`Petitioner
`
`v.
`
`SpeakWare, Inc.,
`Patent Owner
`
`_____________________________
`
`Case IPR2019-00342
`
`U.S. Patent No. 6,397,186
`_____________________________
`
`Declaration of Stuart J. Lipoff,
`in Support of Petition for Inter Partes Review of
`U.S. Patent No. 6,397,186
`
`Page 1 of 129
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`GOOGLE EXHIBIT 1009
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`

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`U.S. Patent No. 6,397,186
`Declaration of Stuart J. Lipoff
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`Table of Contents
`
`V.
`VI.
`
`Introduction
`I.
`Qualifications and Background
`II.
`III. Materials Considered
`IV.
`Legal Standards
`A.
`Claim Construction
`B.
`Obviousness Under 35 U.S.C. § 103
`Background on the State of the Prior Art
`The ’186 Patent
`A.
`Overview of the ’186 Patent
`B.
`Summary of the Prosecution History of the ’186 Patent
`Claim Construction of Terms of the ’186 Patent
`C.
`Person of Ordinary Skill in the Art
`D.
`VII. Summary of Opinions on Unpatentability
`VIII. Salazar in view of Miyazawa (Combination 1A) or Salazar and
`Miyazawa in view of Bossemeyer (Combination 1B) Renders Obvious
`Claims 21, 23-26, 28-36, 39-41, 43-52, and 55
`Background on Salazar
`A.
`B.
`Background on Miyazawa
`C.
`Background on Bossemeyer
`D.
`Rationale and Motivation to Combine Salazar and Miyazawa
`Rationale and Motivation to Combine Salazar-Miyazawa with
`E.
`Bossemeyer
`Claim 21
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`F.
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`1.
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`6.
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`7.
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`8.
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`9.
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`Declaration of Stuart J. Lipoff
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`[21p] “An audio signal activated control system for
`controlling one or more appliances, said control system
`comprising:”
`[21a] “a microphone for receiving audio signals and
`converting said audio signals to electrical signals;”
`[21b] “a speech recognition circuit including a processor”
`[21c] “and having a plurality of modes of operation
`including a speech recognition mode . . . wherein in said
`speech recognition mode said speech recognition circuit
`converts said electrical signals to electrical representative
`signals and said processor decodes said electrical
`representative signals”
`[21d] “and a low power sound activation mode, . . . and
`wherein in said sound activation mode said processor is
`placed in a low power state;”
`[21e] “a sound activation circuit configured for determining
`if the amplitude of said electrical signals exceeds a
`predetermined threshold and causing said speech
`recognition circuit to switch automatically from said sound
`activation mode to another of said plurality of said modes of
`operation;”
`[21f] “said speech recognition circuit configured for
`generating first control signals in said speech recognition
`mode if said electrical signals represent one or more
`predetermined audible commands,”
`[21g] “said speech recognition circuit configured for
`switching automatically from said speech recognition mode
`to another of said plurality of said modes of operation under
`predetermined conditions; and”
`[21h] “an appliance control circuit configured for receiving
`said first control signals from said speech recognition
`circuit and generating second control signals to cause one or
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`G.
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`H.
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`I.
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`J.
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`K.
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`L.
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`N.
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`more appliances to perform one or more functions
`associated with said first control signals.”
`Claim 23 — “The audio signal activated control system as recited
`in claim 21, wherein said appliance control circuit is configured to
`wirelessly transmit said second control signals to said one or more
`appliances.”
`Claim 24 — “The control system as recited in claim 23, wherein
`said second control signals are RF signals.”
`Claim 25 — “The control system as recited in claim 23, wherein
`said second control signals are infrared signals.”
`Claim 26 — “The audio signal activated control system as recited
`in claim 21, wherein said sound activation circuit is configured to
`cause said speech recognition circuit to switch automatically from
`said sound activation mode to another of said plurality of said
`modes of operation, wherein another of said plurality of said
`modes of operation is said speech recognition mode.”
`Claim 28 — “The audio signal activated control system as recited
`in claim 21, wherein said low power state of said processor is a
`sleep state.”
`Claim 29 — “The audio signal activated control system as recited
`in claim 21, wherein said speech recognition circuit is configured
`for switching automatically from said speech recognition mode to
`another of said plurality of said modes of operation under
`predetermined conditions, wherein another of said plurality of said
`modes of operation is said sound activation mode.”
`M. Claim 30 — “The audio signal activated control system as recited
`in claim 21, wherein said predetermined conditions include a
`predetermined period of time.”
`Claim 31 — “The audio signal activated control system as recited
`in claim 21, wherein said predetermined conditions include a
`period of time that is based upon the results of determining if said
`electrical signals represent said predetermined audible
`commands.”
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`U.S. Patent No. 6,397,186
`Declaration of Stuart J. Lipoff
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`O.
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`R.
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`S.
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`T.
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`U.
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`Claim 32 — “The audio signal activated control system as recited
`in claim 21, wherein said predetermined conditions are based
`upon the results of determining if said electrical signals represent
`said predetermined audible commands.”
`Claim 33 — “The audio signal activated control system as recited
`in claim 32, wherein said results include one or more
`predetermined errors detected during said speech recognition
`mode.”
`Claim 34 — “The audio signal activated control system as recited
`in claim 21, wherein said control system further comprises a
`memory for storage of data associated with said second control
`signals.”
`Claim 35 — “The audio signal activated control system as recited
`in claim 21, wherein said control system further comprises a
`memory for storage of data associated with a plurality of said
`second control signals for controlling an appliance.”
`Claim 36 — “The audio signal activated control system as recited
`in claim 21, wherein said control system further comprises a
`memory for storage of data associated with a plurality of said
`second control signals for controlling a plurality of said
`appliances.”
`Claim 39 — “The audio signal activated control system as recited
`in claim 21, wherein said control system further comprises a
`signal circuit for enabling said electrical signals to be in
`communication with said speech recognition circuit in said speech
`recognition mode and for enabling said electrical signals to be in
`communication with said sound activation circuit in said sound
`activation mode .”
`Claim 40 — “The audio signal activated control system as recited
`in claim 39, wherein said signal circuit is further configured for
`detecting when said speech recognition circuit is in said speech
`recognition mode and disabling said communication between said
`electrical signals from said microphone and said sound activation
`circuit.”
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`V.
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`X.
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`Y.
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`Claim 41
`1.
`[41p] “A method for providing hands-free control of
`appliances, comprising:”
`[41a] “providing a speech recognition system having a
`speech recognition mode wherein a processor recognizes
`representations of audible signals as corresponding to
`predetermined audible commands;”
`[41b] “configuring said speech recognition system to have a
`low power sound activation mode wherein said processor is
`in a low power state;”
`[41c] “monitoring said audible signals to detect if the
`amplitude of said audible signals exceeds a predetermined
`threshold;”
`[41d] “enabling said speech recognition system to switch
`automatically from said sound activation mode to said
`speech recognition mode if said amplitude exceeds said
`predetermined threshold;”
`[41e] “generating and decoding representations of said
`audible signals in said speech recognition mode; and;”
`[41f] “generating and transmitting one or more appliance
`control signals for controlling one or more appliances if
`said decoded representations of said audio signals represent
`one or more said predetermined audible commands.”
`W. Claim 43 — “The method for providing hands-free control of
`appliances as recited in claim 41, wherein said low power state of
`said processor is a sleep state.”
`Claim 44 — “The method for providing hands-free control of
`appliances as recited in claim 41, further comprising the step of
`terminating said speech recognition mode automatically and
`returning to said sound activation mode.”
`Claim 45 — “The method for providing hands-free control of
`appliances as recited in claim 41, further comprising the step of
`
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`U.S. Patent No. 6,397,186
`Declaration of Stuart J. Lipoff
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`3.
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`4.
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`5.
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`terminating said speech recognition mode automatically and
`returning to said sound activation mode after a predetermined
`period of time.”
`Claim 46 — “The method for providing hands-free control of
`appliances as recited in claim 41, further comprising the step of
`terminating said speech recognition mode automatically and
`returning to said sound activation mode after a period of time that
`is based upon the results of said decoding of said representations
`of said audible signals.”
`AA. Claim 47 — “The method for providing hands-free control of
`appliances as recited in claim 41, further comprising the step of
`terminating said speech recognition mode automatically and
`returning to said sound activation mode based upon the results of
`said decoding of said representations of said audible signals.”
`BB. Claim 48 — “The method for providing hands-free control of
`appliances as recited in claim 41, further comprising the step of
`terminating said speech recognition mode automatically and
`returning to said sound activation mode based upon the detection
`of one or more predetermined errors during said speech
`recognition mode.”
`CC. Claim 49 — “The method for providing hands-free control of
`appliances as recited in claim 41, wherein said step of generating
`and transmitting one or more appliance control signals comprises
`wirelessly transmitting said one or more appliance control signals
`to one or more appliances.”
`DD. Claim 50 — “The method for providing hands-free control of
`appliances as recited in claim 41, further comprising the step of
`providing a memory for storage of data associated with said
`appliance control signals.”
`EE. Claim 51 — “The method for providing hands-free control of
`appliances as recited in claim 41, further comprising the step of
`providing a memory for storage of data associated with a plurality
`of said appliance control signals for controlling an appliance.”
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`U.S. Patent No. 6,397,186
`Declaration of Stuart J. Lipoff
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`FF. Claim 52 — “The method for providing hands-free control of
`appliances as recited in claim 41, further comprising the step of
`providing a memory for storage of data associated with a plurality
`of said appliance control signals for controlling a plurality of said
`appliances.”
`GG. Claim 55 — “The method for providing hands-free control of
`appliances as recited in claim 41, further comprising the step of
`decoding said representations of said audible signals in said
`speech recognition mode to define an appliance type for defining
`said appliance to which said appliance control signals are
`transmitted.”
`IX. Salazar and Miyazawa in view of Oppendahl (Combination 2A) or
`Salazar, Miyazawa and Bossemeyer in view of Oppendahl (Combination
`2B) Renders Obvious Claims 22 and 42
`A.
`Background on Oppendahl
`B.
`Claim 22 — “The control system as recited in claim 21, wherein
`said predetermined threshold of said sound activation circuit is
`user-adjustable.”
`Claim 42 — “The method for providing hands-free control of
`appliances as recited in claim 41, further comprising the step of
`providing a user-adjustable sound activation sensitivity control to
`enable the level of said predetermined threshold to be varied.”
`Salazar and Miyazawa in view Reichel (Combination 3A) or Salazar,
`Miyazawa and Bossemeyer in view of Reichel (Combination 3B)
`Renders Obvious Claim 27
`A.
`Background on Reichel
`B.
`Claim 27 — “The audio signal activated control system as recited
`in claim 21, wherein said sound activation circuit further includes
`a user-adjustable amplification level control to enable the degree
`of amplification of said amplitude of said electrical signals to be
`varied for controlling the sensitivity of said sound activation
`circuit.”
`
`C.
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`X.
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`Declaration of Stuart J. Lipoff
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`D.
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`E.
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`XI. Salazar and Miyazawa in view of Douma (Combination 4A) or Salazar,
`Miyazawa and Bossemeyer in view of Douma (Combination 4B)
`Renders Obvious Claims 37, 38, 53, and 54
`A.
`Background on Douma
`B.
`Claim 37 — “The audio signal activated control system as recited
`in claim 21, wherein one of said plurality of said modes of
`operation is a programming mode wherein said speech recognition
`circuit is configured to enable a user to define a first control signal
`to be associated with a defined audible command, wherein in said
`speech recognition mode said speech recognition circuit generates
`said defined first control signal if said electrical signals represent
`said predetermined audible command defined in said
`programming mode.”
`Claim 38 — “The audio signal activated control system as recited
`in claim 21, wherein one of said plurality of said modes of
`operation is a programming mode wherein said speech recognition
`circuit is configured to enable a user to define a plurality of first
`control signals to be associated with a defined audible command,
`wherein in said speech recognition mode said speech recognition
`circuit generates said plurality of first control signals if said
`electrical signals represent said predetermined audible command
`defined in said programming mode.”
`Claim 53 — “The method for providing hands-free control of
`appliances as recited in claim 41, further comprising the steps of:
`providing a programming mode for defining an appliance control
`signal to be associated with a defined audible command;
`generating and transmitting said defined appliance control signal
`for controlling one or more appliances if said representations of
`said audio signals decoded in said speech recognition mode
`represent said defined audible command.”
`Claim 54 — “The method for providing hands-free control of
`appliances as recited in claim 41, further comprising the steps of:
`providing a programming mode for defining a plurality of
`appliance control signals to be associated with a defined audible
`command; generating and transmitting said defined plurality of
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`Declaration of Stuart J. Lipoff
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`appliance control signals for controlling one or more appliances if
`said representations of said audio signals decoded in said speech
`recognition mode represent said defined audible command.”
`XII. Conclusion
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`I.
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`U.S. Patent No. 6,397,186
`Declaration of Stuart J. Lipoff
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`INTRODUCTION
`1.
`I, Stuart J. Lipoff, submit this declaration to state my opinions on the
`
`matters described below.
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`2.
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`I have been retained by Petitioner, Google LLC, as an independent
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`expert in this proceeding before the United States Patent and Trademark Office.
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`Although I am being compensated at my usual rate of $375.00 per hour for the
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`time I spend on this matter, no part of my compensation depends on the outcome
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`of this proceeding, and I have no other interest in this proceeding.
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`3.
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`I understand that this proceeding involves U.S. Patent No. 6,397,186
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`(“the ’186 patent”), and I have been asked to provide my opinions as to the
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`patentability of the claims of the ’186 patent. I understand that the application for
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`the ’186 patent was filed on December 22, 1999 as U.S. application no.
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`09/469,707. I also understand that a copy of the ’186 patent has been provided as
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`Exhibit 1001.
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`4.
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`I have been asked to consider whether the claims of the ’186 patent
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`would have been obvious based on certain prior art references. I have also been
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`asked to consider the state of the art and prior art available as of December 22,
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`1999. Based on the combination of prior art references discussed in this
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`declaration, it is my opinion that one of ordinary skill in the art would have found
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`U.S. Patent No. 6,397,186
`Declaration of Stuart J. Lipoff
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`claims 21-55 of the ’186 patent to have been obvious. My opinions are provided
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`below.
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`II. QUALIFICATIONS AND BACKGROUND
`5.
`I am currently the president of IP Action Partners Inc., which is a
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`consulting practice serving the telecommunications, information technology,
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`media, electronics, and e-business industries.
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`6.
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`I earned a Bachelor of Science degree in Electrical Engineering in
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`1968 and a second Bachelor of Science degree in Engineering Physics in 1969,
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`both from Lehigh University. I also earned a Master of Science degree in Electrical
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`Engineering from Northeastern University in 1974 and a Master of Business
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`Administration degree from Suffolk University in 1983.
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`7.
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`I hold a Federal Communications Commission (“FCC”) General
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`Radiotelephone License. I also hold a Certificate in Data Processing from the
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`Institute for the Certification of Computing Professionals (“ICCP”), which is
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`supported by the Association for Computing Machinery (“ACM”).
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`8.
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`I am a registered professional engineer in the Commonwealth of
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`Massachusetts and also in the State of Nevada.
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`9.
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`I am a Fellow of the institute of Electrical and Electronics Engineers
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`(“IEEE”) Consumer Electronics, Communications, Computer, Circuits, and
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`Vehicular Technology Groups. I have been a member of the IEEE Consumer
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`U.S. Patent No. 6,397,186
`Declaration of Stuart J. Lipoff
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`Electronics Society National Board of Governors (formerly known as
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`Administrative Committee) from 1981 to the present, and I was the Boston Chapter
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`Chairman of the IEEE Vehicular Technology Society from 1974 to 1976. I
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`previously served as 1996-1997 President of the IEEE Consumer Electronics
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`Society, and have served as Chairman of the Society’s Technical Activities and
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`Standards Committee. I am now Vice President of Publications for the Society. I
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`have also served as an Ibuka Award committee member.
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`10.
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`I have prepared and presented many papers at IEEE and other
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`professional meetings. For example, in Fall 2000, I served as general program
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`chair for the IEEE Vehicular Technology Conference on advanced wireless
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`communications technology. I have also organized sessions at the International
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`Conference on Consumer Electronics and was the 1984 program chairman. I also
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`conducted an eight-week IEEE sponsored short course on Fiber Optics System
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`Design. I was awarded IEEE’s Centennial Medal in 1984 and I was awarded the
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`IEEE’s Millennium Medal in 2000.
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`11. As Vice President and Standards Group Chairman of the Association
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`of Computer Users (“ACU”), I served as the ACU representative to the ANSI X3
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`Standards Group. I also served as Chairman of the task group on user rule
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`compliance for the FCC’s Citizens Advisory Committee on Citizens Band Radio.
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`12.
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`U.S. Patent No. 6,397,186
`Declaration of Stuart J. Lipoff
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`I have been elected to membership in the Society of Cable Television
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`Engineers, the ACM, and the Society of Motion Picture and Television Engineers.
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`I also served as a member of the USA advisory board to the National Science
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`Museum of Israel, presented a short course on international product development
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`strategies as a faculty member of Technion Institute of Management in Israel, and
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`served as a member of the board of directors of the Massachusetts Future Problem
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`Solving Program.
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`13.
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`I am a named inventor on seven United States patents and have
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`several publications on data communications topics in Electronics Design,
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`Microwaves, EDN, the Proceedings of the Frequency Control Symposium, Optical
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`Spectra, and IEEE publications.
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`14. For 25 years, I worked for Arthur D. Little, Inc. (“ADL”), where I
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`became Vice President and Director of Communications, Information Technology,
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`and Electronics (“CIE”). At ADL, I was responsible for the firm’s global CIE
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`practice in laboratory-based contract engineering, product development, and
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`technology-based consulting.
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`15. Prior to my time at ADL, I served as a Section Manager for Bell &
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`Howell Communications Company for four years. Prior to working at Bell &
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`Howell, I served as a Project Engineer for Motorola’s Communications Division
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`U.S. Patent No. 6,397,186
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`for three years. At both Bell & Howell and Motorola, I had project design
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`responsibility for wireless communication and paging products.
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`16. During my career, I have been heavily engaged in the study, analysis,
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`evaluation, design, and implementation of products and technology associated with
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`consumer electronics and electronic appliances. A particular focus of my
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`professional activities has been improving the man machine interface including
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`voice, speech, and speaker recognition for access control and hands-free
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`commands.
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`17. Example projects involving voice processing I have performed
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`include evaluation of speaker dependent voice typewriter technology for IBM’s
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`Watson Research Labs, developing applications for Texas Instruments speaker
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`recognition technology for control and security access, developing spoken digit
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`telephone number recognition and voiceprint matching for Sprint’s long distance
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`alternative access telephone services, and evaluating the processing power needed
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`to perform various voice recognition applications by Rockwell Semiconductor’s
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`signal processing technology.
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`18.
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`I also have extensive experience in public and private network wired
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`and wireless voice telecommunications. In the course of these telecommunications
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`projects I have encountered a number of applications where audio input and voice
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`are used to activate devices in many cases for the purpose of saving battery power
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`Declaration of Stuart J. Lipoff
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`by entering into low power, so called “sleep” modes. These projects have involved
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`the design of cellular telecommunications systems that implement industry
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`standard means of entering lower power modes in the absence of voice.
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`19. My curriculum vitae, which includes a more detailed summary of my
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`background, experience, patents and publications, is attached as Appendix A.
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`III. MATERIALS CONSIDERED
`20.
`In forming my opinions, I have reviewed the following documents:
`
`Exhibit No.
`1001
`1002
`1003
`1004
`1005
`1006
`1008
`1010
`
`Title of Document
`U.S. Patent No. 6,397,186 to Bush (“Bush”)
`U.S. Patent No. 5,802,467 to Salazar (“Salazar”)
`U.S. Patent No. 5,983,186 to Miyazawa (“Miyazawa”)
`U.S. Patent No. 6,012,027 to Bossemeyer (“Bossemeyer”)
`U.S. Patent No. 5,008,954 to Oppendahl (“Oppendahl”)
`U.S. Patent No. 5,459,792 to Reichel (“Reichel”)
`U.S. Patent No. 5,583,965 to Douma (“Douma”)
`Prosecution History of U.S. Patent Application No. 09/469,707
`(’186 patent)
`Prosecution History of U.S. Patent Application No. 10/168,935
`(child of ’186 patent)
`1012
`U.S. Patent No. 5,268,965 to Badie et al (“Badie”)
`1013 WO 94/03020 to Bissonnette (“Bissonette”)
`1014
`U.S. Patent No. 5,566,271 to Tomitsuka (“Tomitsuka”)
`1015
`U.S. Patent No. 6,112,103 to Puthuff (“Puthuff”)
`1016
`U.S. Patent No. 6,188,986 to Matulich (“Matulich”)
`1017
`U.S. Patent No. 6,606,280 to Knittel (“Knittel”)
`1018
`U.S. Patent 5,668,929 to Foster (“Foster”)
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`1011
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`U.S. Patent No. 6,397,186
`Declaration of Stuart J. Lipoff
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`1019
`1020
`1021
`1022
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`U.S. Patent No. 6,584,439 to Geilhufe (“Geilhufe”)
`Excerpts from Newton’s Telecom Dictionary (15th ed. Feb. 1999)
`U.S. Patent No. 4,484,344 to Mai (“Mai”)
`U.S. Patent No. 5,276,765 to Freeman (“Freeman”)
`
`
`IV. LEGAL STANDARDS
`21.
`In forming my opinions and considering the subject matter of the ’186
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`patent and its claims in light of the prior art, I am relying on certain legal principles
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`that counsel in this case explained to me. My understanding of these concepts is
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`summarized below.
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`22.
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`I understand that the claims define the invention. I also understand
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`that an unpatentability analysis is a two-step process. First, the claims of the patent
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`are construed to determine their meaning and scope. Second, after the claims are
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`construed, the content of the prior art is compared to the construed claims.
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`23.
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`I understand that a claimed invention is only patentable when it is
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`new, useful, and non-obvious in light of the “prior art.” That is, the invention, as
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`defined by the claims of the patent, must not be anticipated by or rendered obvious
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`by the prior art.
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`24. For purposes of this declaration, I have been asked to opine on certain
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`issues regarding the technology at issue, the level of ordinary skill in the art, the
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`scope of the ’186 patent claims, and obviousness. I have been informed of the
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`following legal standards, which I have applied in forming my opinions.
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`U.S. Patent No. 6,397,186
`Declaration of Stuart J. Lipoff
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`A. Claim Construction
`25.
`I understand that the United States Patent and Trademark Office
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`interprets claim terms in an inter partes review proceeding under the same claim
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`construction standard that is used in a United States federal court. I understand that
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`under this standard, the meaning of claim terms is considered from the viewpoint
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`of one of ordinary skill in the art at the time of the alleged invention.
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`26.
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`I have been informed that claim terms are generally given their
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`ordinary and customary meaning as understood by one of ordinary skill in the art
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`in light of the specification and the prosecution history pertaining to the patent. I
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`understand, however, that claim terms are generally not limited by the
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`embodiments described in the specification.
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`27.
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`I understand that in addition to the claims, specification, and
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`prosecution history, other evidence may be considered to ascertain the meaning of
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`claim terms, including textbooks, encyclopedias, articles, and dictionaries. I have
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`been informed that this other evidence is often less significant and less reliable
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`than the claims, specification, and prosecution history.
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`B. Obviousness Under 35 U.S.C. § 103
`28.
`I have been advised that a patent claim may be unpatentable as
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`obvious under 35 U.S.C. § 103 if the differences between the subject matter
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`patented and the prior art are such that the subject matter as a whole would have
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`Declaration of Stuart J. Lipoff
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`been obvious to a person of ordinary skill in the art at the time the invention was
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`made. I have also been advised that several factual inquiries underlie a
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`determination of obviousness. These inquiries include (1) the scope and content of
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`the prior art; (2) the level of ordinary skill in the field of the invention; (3) the
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`differences between the claimed invention and the prior art; and (4) any objective
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`evidence of non-obviousness.
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`29.
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`I have also been advised that example reasons to combine or modify
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`prior art references that may support a conclusion of obviousness include:
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`a. combining prior art elements according to known methods to yield
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`predictable results;
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`b. simple substitution of one known element for another to obtain
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`predictable results;
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`c. use of a known technique to improve similar techniques;
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`d. combining elements in a way that would be “obvious to try,”
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`particularly when there exists a design need or market pressure to
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`solve a problem and there are a finite number of identified,
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`predictable solutions such that a person of ordinary skill in the art
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`would have had good reason to pursue the known options within
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`his or her technical grasp;
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`Declaration of Stuart J. Lipoff
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`e. design incentives or market forces that would prompt variations of
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`known work if those variations were predictable to a person of
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`ordinary skill in the art;
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`f. a teaching, suggestion, or motivation in the prior art to combine or
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`modify prior art references to arrive at the claimed subject matter;
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`and
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`g. optimization of a recognized result-effective variable by a person
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`of ordinary skill in the art if that optimization would be routine.
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`30.
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`I am informed that there are also reasons that would prevent a person
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`of ordinary skill in the art from modifying or combining prior art references.
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`Examples of prior art references that a person of ordinary skill in the art would not
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`combine or modify to achieve the claimed invention include: prior art references
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`that teach away from one another; prior art references that teach away from the
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`claimed invention; prior art references whose combination or modification would
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`change the principle of operation of either prior art reference; and prior art
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`references whose combination or modification would render them inoperable or
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`unsuitable for their intended purpose.
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`31.
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`I am informed that in determining whether a person of ordinary skill
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`in the art would combine or modify prior art references, the entire contents of each
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`U.S. Patent No. 6,397,186
`Declaration of Stuart J. Lipoff
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`prior art reference must be considered, including parts of those references that
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`would suggest against the proposed combination or modification.
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`V. BACKGROUND ON THE STATE OF THE PRIOR ART
`32.
`I understand that the application for the ’186 patent was filed on
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`December 22, 1999. This section provides an overview of the state of the art of
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`remote control technology for electronic equipment, and more specifically, voice-
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`activated and voice-operated technology for remotely controlling appliances prior
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`to that date. As I explain below, voice-activated and voice-operated systems were
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`well known long before the ’186 patent, as was using these systems to remotely
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`control appliances.
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`33. As I discuss below in the summary of the ’186 patent, the ’186 patent
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`admits that the prior art included voice-operated systems for controlling
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`appliances. Indeed, such systems were extremely well-known prior to the ’186
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`patent. In addition to the admitted prior art in the ’186 patent, voice-operated
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`remote control systems were described in great detail in other patents and printed
`
`publications prior to December 22, 1999. For example, WO 94/03020 to
`
`Bissonnette, U.S. Patent No. 5,566,271 to Tomitsuka, U.S. Patent No. 6,112,103 to
`
`Puthuff, U.S. Patent No. 6,188,986 to Matulich, and U.S. Patent No. 6,606,280 to
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`Knittel, all disclose systems that allow for voice-operated remote control of
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`appliances.
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`Declaration of Stuart J. Lipoff
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`34. As discussed below, I also understand that the applicant for the ’186
`
`patent attempted to distinguish the Patent Office’s prior art by arguing that it all
`
`required a push-to-talk switch to switch from a low power mode to a speech
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`recognition mode. Hands-free switching, however, was also well known in the art
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`long before the filing date of the ’186 patent. In addition to being disclosed by the
`
`re