Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 9
`Entered: July 1, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`SPEAKWARE, INC.,
`Patent Owner.
`____________
`
`Case IPR2019-00495
`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)
`
`
`
`
`
`

`

`IPR2019-00495
`Patent 6,397,186 B1
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`
`INTRODUCTION
`I.
`Unified Patents Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`requesting an inter partes review of claims 1–4, 7, 9, 10, 12, 14, 16–21, 23–
`26, 28–31, 39, 41, and 43 (“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.
`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 and
`Preliminary Response, 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. 1–2; Paper 3, 1. The parties also indicate that the ’186
`patent is the subject of petitions for inter partes review in IPR2019-00340
`and IPR2019-00342. Pet. 2; Paper 3, 2.
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`IPR2019-00495
`Patent 6,397,186 B1
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`
`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.
`C.
`Illustrative Claim
`Of the challenged claims, claims 1, 21, and 41 are independent.
`
`Claim 1 is reproduced below.
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`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. 4–5):
`Reference or Declaration
`Exhibit No.
`Declaration of Bruce McNair (“McNair Declaration”)
`Ex. 1003
`Bissonnette et al., PCT Publication No. WO 94/03020 (filed
`Ex. 1006
`July 15, 1993, published Feb. 3, 1994) (“Bissonnette”)
`McCall et al., U.S. Patent No. 6,591,239 B1 (filed Dec. 9,
`1999, issued July 8, 2003) (“McCall”)
`Miyazawa et al., U.S. Patent No. 5,983,186 (filed Aug. 20,
`1996, issued Nov. 9, 1999) (“Miyazawa”)
`Salazar et al., U.S. Patent No. 5,774,841 (filed Sept. 20,
`1995, issued June 30, 1998) (“Salazar”)
`
`Ex. 1007
`
`Ex. 1008
`
`Ex. 1009
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`35 U.S.C. § 103(a)
`
`19 and 20
`
`35 U.S.C. § 103(a)
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`IPR2019-00495
`Patent 6,397,186 B1
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`
`References
`Bissonnette and Miyazawa
`
`E.
`Asserted Grounds of Unpatentability
`Petitioner asserts that the challenged claims are unpatentable on the
`following grounds (Pet. 7):
`Claims
`Basis
`1–4, 7, 9, 10, 12,
`35 U.S.C. § 103(a)
`14, 16, 21,
`23–26, 28–31, 39,
`41, and 43
`17 and 18
`
`Bissonnette, Miyazawa, and
`Salazar
`Bissonnette, Miyazawa, and
`McCall
`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. 11;
`Prelim. Resp. 1–63. On this record and for purposes of this Decision, we
`determine that none of the 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.
`35 U.S.C. § 325(d)
`Patent Owner argues that the Petition should be denied under
`35 U.S.C. § 325(d). Prelim. Resp. 1–3. Section 325(d) provides that in
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`Patent 6,397,186 B1
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`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
`(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 A and B
`Under Becton factors A and B, 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. 4, 17. Patent Owner
`asserts that the Petition relies on a similar combination, namely, Bissonnette,
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`which describes “a purported system to control appliances that made use of a
`talk switch to switch modes,” 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 10, 17.
`
`Becton factors A and B 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. 1002, 61–65, 75–76. Specifically,
`the Applicant pointed out that Kimura includes a push to talk switch that
`prevents the system “from being triggered into an erroneous operation due to
`surrounding noise.” Id. at 75–76. The Applicant then 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. The present invention provides an alternative
`solution to the problem not contemplated or considered by the
`Kimura et al. patents. In particular, in accordance with an
`important aspect of the invention, the push to talk switch is
`eliminated contrary to the teachings of the Kimura et al. patents,
`while at the same time preventing false operations of the
`controlled device due to background noise by detecting the
`amplitude of an input signal and switching to a speech
`recognition mode if the input signal amplitude exceeds a certain
`threshold.
`Id. at 76. 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”—
`that prevented erroneous operation of the speech recognition system. Id. In
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`response to the Applicant’s argument, the Examiner allowed the pending
`claims. Id. at 88.
`Here, Petitioner proposes replacing Bissonnette’s manual voice keys
`with Miyazawa’s automatic voice activation. Pet. 18. But, as Petitioner
`points out, Miyazawa’s automatic voice activation includes techniques for
`preventing erroneous operation. Pet. 15–16; Ex. 1008, 4:14–5:7, 11:50–67.
`Thus, Petitioner’s proposed combination of Bissonnette and Miyazawa
`would still include techniques for preventing erroneous operation, whereas
`the Applicant characterized the Examiner’s combination of Kimura and Tran
`as eliminating a feature that prevents erroneous operation. As a result, on
`this record, Petitioner’s proposed combination is materially different than
`the prior art applied by the Examiner during prosecution.
`2.
`Factor C
`Under Becton factor C, 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 means the
`examiner was aware of it during prosecution.” Prelim. Resp. 13. 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 18.
`Becton factor C does not favor denying institution. The evidence of
`record does not indicate that the Examiner considered Bissonnette. And,
`although the Applicant cited Miyazawa in an information disclosure
`statement (Ex. 1002, 55), the Examiner did not rely on Miyazawa as the
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`basis for a rejection or otherwise provide an analysis of Miyazawa (id. at
`31–39, 58–66).
`3.
`Factor D
`Under Becton factor D, 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 “[j]ust like the
`examiner did during prosecution, the Petition identifies (1) a desire to
`replace a manual activity (pressing a voice key) with an automatic means ‘so
`the user did not need to turn on the switch every time’; and (2) a desire to
`‘maximiz[e] battery life by using idle and sleep modes to reduce power drain
`from the voice recognition components’ as the purported motivations to
`combine.” Prelim. Resp. 15 (citing Pet. 18–20; Ex. 1002, 61–62). Patent
`Owner further contends that “in this Preliminary Response, the Patent
`Owner makes the same argument the applicant made to overcome the
`examiner’s combination: that there is no reason or motivation to combine the
`asserted references, and in fact the primary reference (in the Petition’s case,
`Bissonnette) actually teaches away.” Id. at 19.
`Becton factor D 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 combination
`would have eliminated a key feature of Kimura—the “push to talk switch”—
`that prevented erroneous operation of the speech recognition system.
`Ex. 1002, 75–76. Here, Petitioner proposes replacing Bissonnette’s manual
`voice keys with Miyazawa’s automatic voice activation. Pet. 18. But, as
`Petitioner points out, Miyazawa’s automatic voice activation includes
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`techniques for preventing erroneous operation. Pet. 15–16; Ex. 1008, 4:14–
`5:7, 11:50–67. Thus, Petitioner’s proposed combination of Bissonnette and
`Miyazawa would still include techniques for preventing erroneous operation,
`whereas the Applicant characterized the Examiner’s combination of Kimura
`and Tran as eliminating a feature that prevents erroneous operation. Thus,
`the Applicant’s arguments during prosecution do not overlap with the
`manner in which Petitioner relies on the prior art in the Petition.
`4.
`Factor E
`Under Becton factor E, 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 Petitioner “does not
`assert any error in the examiner’s reasoning or decision to allow the claims
`over the combination of Kimura and Tran.” Prelim. Resp. 19.
` Becton factor E 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
`Bissonnette and Miyazawa. See Ex. 1002, 31–39, 58–66. Further, as
`discussed above, on this record, there is a material difference between the
`Examiner’s combination of Kimura and Tran and Petitioner’s combination
`of Bissonnette and Miyazawa. See Section II.B.1.
`5.
`Factor F
`Under Becton factor F, 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 Petition cites is an expert
`declaration.” Prelim. Resp. 19. And, according to Patent Owner, “for the
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`motivation to combine, the declaration relies on the same desire to ‘automate
`. . . Bissonnette’s manual switching’ and ‘maximizing battery life’ asserted
`in the Petition—which, as explained above, are exactly the motivations to
`combine on which the examiner initially relied, but that the applicant
`ultimately overcame.” Id. at 20.
`Becton factor F does not favor denying institution. As discussed
`above, on this record, there is a material difference between the Examiner’s
`combination of Kimura and Tran and Petitioner’s combination of
`Bissonnette and Miyazawa. See Section II.B.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).
`35 U.S.C. § 314(a)
`C.
`Patent Owner argues that the Petition should be denied under
`35 U.S.C. § 314(a). Prelim. Resp. 24. Section 314(a) states that
`[t]he Director may not authorize an inter partes review to be
`instituted unless the Director determines that the information
`presented in the petition filed under section 311 and any response
`filed under section 313 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.
`Under § 314(a), the Director has discretion to deny institution of an inter
`partes review. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140
`(2016) (“[T]he agency’s decision to deny a petition is a matter committed to
`the Patent Office’s discretion.”). We consider several non-exclusive factors
`when determining whether to deny institution under § 314(a), including
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`1. whether the same petitioner previously filed a petition
`directed to the same claims of the same patent;
`2. whether at the time of filing of the first petition the petitioner
`knew of the prior art asserted in the second petition or should
`have known of it;
`3. whether at the time of filing of the second petition the
`petitioner already received the patent owner’s preliminary
`response to the first petition or received the Board’s decision
`on whether to institute review in the first petition;
`4. the length of time that elapsed between the time the petitioner
`learned of the prior art asserted in the second petition and the
`filing of the second petition;
`5. whether the petitioner provides adequate explanation for the
`time elapsed between the filings of multiple petitions directed
`to the same claims of the same patent;
`6. the finite resources of the Board; and
`7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final
`determination not later than 1 year after the date on which the
`Director notices institution of review.
`General Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, Case IPR2016-
`01357, slip op. at 15–16 (PTAB Sept. 6, 2017) (Paper 19) (precedential).
`1.
`Factor One
`Under the first General Plastic factor, we consider “whether the same
`petitioner previously filed a petition directed to the same claims of the same
`patent.” Id. at 16. However, “our application of the General Plastic factors
`is not limited solely to instances when multiple petitions are filed by the
`same petitioner.” Valve Corp. v. Elec. Scripting Prods., Inc., Case IPR2019-
`00062, slip op. at 9 (PTAB Apr. 2, 2019) (Paper 11) (precedential). “Rather,
`when different petitioners challenge the same patent, we consider any
`relationship between those petitioners when weighing the General Plastic
`factors.” Id.
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`Patent Owner argues that there is a significant relationship between
`Petitioner and Google LLC (“Google”), who previously filed two petitions
`for inter partes review of the ’186 patent in IPR2019-00340 and IPR2019-
`00342 (“the 340 and 342 IPRs”). Prelim. Resp. 29. Patent Owner contends
`that Google pays Petitioner a membership fee “specifically in exchange for
`[Petitioner] undertaking ‘NPE-deterrent activities,’ including filing ‘post-
`grant review requests’ like this one.” Id. Patent Owner also contends that
`the challenged claims in this case “completely overlap” with the challenged
`claims in the 340 and 342 IPRs. Id. at 30.
`We need not determine whether the alleged relationship between
`Petitioner and Google is sufficient for the first General Plastic factor to
`favor denying institution. As discussed below, most of the General Plastic
`factors do not favor denying institution. Thus, even if the first General
`Plastic factor did favor denying institution, we would still decline to
`exercise our discretion under § 314(a) to deny institution.
`2.
`Factor Two
`Under the second General Plastic factor, we consider “whether at the
`time of filing of the first petition the petitioner knew of the prior art asserted
`in the second petition or should have known of it.” General Plastic, slip op.
`at 16. This factor includes considering whether the prior art relied on in the
`later petition “could have been found with reasonable diligence.” Id. at 20.
`Patent Owner points out that three of the four references Petitioner relies
`on—Bissonnette, Miyazawa, and Salazar—are cited in Google’s petitions in
`the 340 and 342 IPRs. Prelim. Resp. 31. Thus, according to Patent Owner,
`Petitioner knew of those references at least as of the time when Google filed
`its petitions in the 340 and 342 IPRs. Id. at 31–32.
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`We determine that the second General Plastic factor slightly favors
`denying institution. Because Bissonnette, Miyazawa, and Salazar are cited
`in Google’s petitions in the 340 and 342 IPRs (see, e.g., IPR2019-00340,
`Paper 2, viii), which were filed about one month before Petitioner filed its
`Petition, Petitioner knew or should have known of those references around
`the time Google filed its petitions.
`3.
`Factor Three
`Under the third General Plastic factor, we consider “whether at the
`time of filing of the second petition the petitioner already received the patent
`owner’s preliminary response to the first petition or received the Board’s
`decision on whether to institute review in the first petition.” General
`Plastic, slip op. at 16. The Board previously explained that
`factor 3 is directed to Petitioner’s potential benefit from
`receiving and having the opportunity to study Patent Owner’s
`Preliminary Response, as well as our institution decisions on the
`first-filed petitions, prior to its filing of follow-on petitions. . . .
`Multiple, staggered petitions challenging the same patent and
`same claims raise the potential for abuse. The absence of any
`restrictions on follow-on petitions would allow petitioners the
`opportunity to strategically stage their prior art and arguments in
`multiple petitions, using our decisions as a roadmap, until a
`ground is found that results in the grant of review. All other
`factors aside, this is unfair to patent owners and is an inefficient
`use of the inter partes review process and other post-grant review
`processes.
`Id. at 17–18 (internal citation and footnote omitted). Patent Owner
`acknowledges that when Petitioner filed the Petition in this case, “Petitioner
`had not received [Patent Owner’s] Preliminary Response to Google’s
`petitions or the Board’s decision on whether to institute those petitions.”
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`Prelim. Resp. 32. Patent Owner argues, though, that “Petitioner did receive
`Google’s Petition” and used it “as a roadmap.” Id. at 33.
`We determine that the third General Plastic factor does not favor
`denying institution. As Patent Owner acknowledges, when Petitioner filed
`the Petition in this case, Petitioner had not received Patent Owner’s
`preliminary response or the Board’s decision on institution in the 340 and
`342 IPRs. Id. at 32. Thus, there is no indication that Petitioner strategically
`staged its prior art and arguments in order to use Patent Owner’s preliminary
`response or the Board’s decision on institution as a roadmap.
`4.
`Factors Four and Five
`Under the fourth and fifth General Plastic factors, we consider “the
`length of time that elapsed between the time the petitioner learned of the
`prior art asserted in the second petition and the filing of the second petition”
`and “whether the petitioner provides adequate explanation for the time
`elapsed between the filings of multiple petitions directed to the same claims
`of the same patent.” General Plastic, slip op. at 16. Patent Owner argues
`that “Petitioner provides no explanation (much less an adequate one) for the
`time elapsed between the filing of the Google 340 and 342 Petitions and this
`one.” Prelim. Resp. 34.
`We determine that the fourth and fifth General Plastic factors do not
`favor denying institution. Petitioner filed the Petition in this case only about
`one month after Google filed its petitions in the 340 and 342 cases.
`Compare Paper 5, 1, with IPR2019-00340, Paper 3, 1. And, as discussed
`above, when Petitioner filed the Petition in this case, Petitioner had not
`received Patent Owner’s preliminary response or the Board’s decision on
`institution in the 340 and 342 IPRs. Prelim. Resp. 32.
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`5.
`Factors Six and Seven
`Under the sixth and seventh General Plastic factors, we consider “the
`finite resources of the Board” and “the requirement under 35 U.S.C.
`§ 316(a)(11) to issue a final determination not later than 1 year after the date
`on which the Director notices institution of review.” General Plastic, slip
`op. at 16. Patent Owner argues that “the Petition is not the last in the series”
`because “[t]here are five more—a total of eight—all filed by the Related
`Petitioners, and all challenging overlapping claims of the same patent.”
`Prelim Resp. 35.
`We determine that the sixth and seventh General Plastic factors do
`not favor denying institution. Petitioner filed a single petition challenging
`the ’186 patent about one month after Google filed its petitions in the 340
`and 342 IPRs. Compare Paper 5, 1, with IPR2019-00340, Paper 3, 1. Thus,
`we are not persuaded that this case implicates the efficiency concerns of the
`sixth and seventh General Plastic factors.
`6.
`Summary
`For the reasons discussed above, five of the seven General Plastic
`factors do not favor denying institution. Even if Petitioner had the alleged
`relationship with the previous petitioner and Petitioner was aware of the
`asserted references at the time of the previous petitions, our analysis of the
`General Plastic factors indicates that this case does not implicate the
`fairness and efficiency concerns underlying the General Plastic factors.
`Thus, upon weighing the General Plastic factors, we decline to exercise our
`discretion under § 314(a) to deny institution.
`
`16
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`

`IPR2019-00495
`Patent 6,397,186 B1
`
`
`D.
`
`Asserted Grounds of Unpatentability
`1.
`Obviousness of Claims 1–4, 7, 9, 10, 12, 14, 16, 21, 23–
`26, 28–31, 39, 41, and 43 Over Bissonnette and
`Miyazawa
`Petitioner argues that claims 1–4, 7, 9, 10, 12, 14, 16, 21, 23–26, 28–
`31, 39, 41, and 43 would have been obvious over Bissonnette and
`Miyazawa. Pet. 7. For the reasons discussed below, Petitioner demonstrates
`a reasonable likelihood of prevailing in showing that claims 1–4, 7, 9, 10,
`12, 14, 16, 21, 23–26, 28–31, 39, 41, and 43 would have been obvious over
`Bissonnette and Miyazawa.
`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 Bissonnette teaches an audio signal control system for
`controlling appliances. Pet. 20–21 (citing Ex. 1006, Abstract, 2:34–3:2,
`Fig. 1).
`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 Bissonnette teaches a microphone for
`receiving audio signals and converting the audio signals into electrical
`signals. Pet. 22–23 (citing Ex. 1006, 10:8–19, 10:30–11:22, 32:15–17,
`48:7–9, Fig. 1).
`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 Bissonnette teaches a
`speech recognition system with a processor for receiving the electrical
`signals. Pet. 23–24 (citing Ex. 1006, 11:36–12:10, 14:25–27, Fig. 1).
`
`17
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`

`

`IPR2019-00495
`Patent 6,397,186 B1
`
`
`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 low power sleep mode that
`detects the presence of the electrical signals. Pet. 26–27 (citing Ex. 1008,
`10:3–16, 11:50–67).
`Claim 1 recites “said speech recognition system . . . having . . . a
`speech recognition mode for converting said electrical signals to electrical
`representative signals.” Ex. 1001, 52:11–13. Petitioner presents evidence
`that Bissonnette teaches a speech recognition system with a speech
`recognition mode that converts the electrical signals into representative
`signals. Pet. 24–25 (citing Ex. 1006, 6:12–14, 12:7–10, 31:4–7, 32:13–32,
`33:19–23, 48:19–22, Fig. 3).
`Claim 1 recites “said speech recognition system . . . having . . . a
`speech recognition mode for . . . decoding said electrical representative
`signals and generating control signals for controlling one or more
`appliances.” Ex. 1001, 52:13–15. Petitioner presents evidence that
`Bissonnette teaches a speech recognition system with a speech recognition
`mode that decodes the representative signals and generates control signals
`for controlling one or more appliances. Pet. 27–29 (citing Ex. 1006, 12:3–
`10, 25:19–30, 29:16–27, 34:22–25, 37:15–31, 38:21–25, 48:19–28).
`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 Bissonnette teaches a processor that
`decodes the representative signals in speech recognition mode. Pet. 29
`(citing Ex. 1006, 12:3–10, 38:21–25, 48:19–26).
`
`18
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`

`

`IPR2019-00495
`Patent 6,397,186 B1
`
`
`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 processor that is in a low power state during sleep
`mode. Pet. 29–30 (citing Ex. 1008, 3:18–20, 9:67–10:2, 11:50–67).
`Claim 1 recites “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.”
`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 amplitude of the electrical
`signals is equal to or greater than a threshold. Pet. 31–32 (citing Ex. 1008,
`Abstract, 3:13–17, 4:10–13, 10:8–21).
`Claim 1 recites