`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`APPLE INC.
`Petitioner
`
`v.
`
`SPEAKWARE, INC.
`Patent Owner
`____________
`
`
`Case No. IPR2019-00874
`U.S. Patent No. 6,397,186
`____________
`
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,397,186
`(CLAIMS 1-20 AND 41-55)
`
`
`
`
`
`
`
`

`

`
`
`IPR2019-00874
`U.S. Patent No. 6,397,186
`Claims 1-20 and 41-55
`
`
`TABLE OF CONTENTS
`
`
`INTRODUCTION ........................................................................................... 1
`I.
`II. SUMMARY OF THE ’186 PATENT ............................................................ 1
`A. DESCRIPTION OF THE ALLEGED INVENTION OF THE ’186 PATENT ................. 1
`B.
`SUMMARY OF UNPATENTABILITY OF THE CHALLENGED CLAIMS ................. 2
`C.
`LEVEL OF SKILL OF A PHOSITA .................................................................. 3
`III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 ......................... 3
`A. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(A) ............................. 3
`B.
`IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R. § 42.104(B) AND RELIEF
`REQUESTED ............................................................................................................ 4
`C.
`CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3) ............................ 5
`IV. THE BOARD’S DISCRETION UNDER 35 U.S.C. § 314(a) ...................... 5
`V. SHOWING OF ANALOGOUS, PRIOR ART ........................................... 10
`A.
`TETSUO IS ANALOGOUS, PRIOR ART ........................................................... 10
`B.
`BISSONNETTE IS ANALOGOUS, PRIOR ART .................................................. 11
`C.
`STANLEY IS ANALOGOUS, PRIOR ART ......................................................... 11
`D. GEILHUFE IS ANALOGOUS, PRIOR ART ....................................................... 12
`E.
`BUCHNER IS ANALOGOUS, PRIOR ART ........................................................ 12
`VI. GROUND 1: THERE IS A REASONABLE LIKELIHOOD CLAIMS 1-
`4, 7-8, 14-18, 41, 43, AND 49-54 ARE OBVIOUS OVER TETSUO IN VIEW
`OF BISSONNETTE .............................................................................................. 13
`A.
`CLAIM 1 ..................................................................................................... 14
`B.
`CLAIMS 2-4 ................................................................................................ 46
`C.
`CLAIM 7 ..................................................................................................... 47
`D.
`CLAIM 8 ..................................................................................................... 48
`E.
`CLAIMS 14-16 ............................................................................................ 49
`F.
`CLAIM 17 ................................................................................................... 53
`G.
`CLAIM 18 ................................................................................................... 56
`H.
`CLAIM 41 ................................................................................................... 58
`I.
`CLAIM 43 ................................................................................................... 59
`J.
`CLAIM 49 ................................................................................................... 59
`K.
`CLAIM 50 ................................................................................................... 59
`L.
`CLAIM 51 ................................................................................................... 59
`
`
`
`i
`
`

`

`IPR2019-00874
`U.S. Patent No. 6,397,186
`Claims 1-20 and 41-55
`
`M. CLAIM 52 ................................................................................................... 59
`N.
`CLAIM 53 ................................................................................................... 60
`O.
`CLAIM 54 ................................................................................................... 60
`VII. GROUND 2: THERE IS A REASONABLE LIKELIHOOD CLAIMS 5-6
`AND 42 ARE OBVIOUS OVER TETSUO IN VIEW OF BISSONNETTE IN
`FURTHER VIEW OF STANLEY ....................................................................... 60
`A.
`CLAIM 5 ..................................................................................................... 60
`B.
`CLAIM 6 ..................................................................................................... 61
`C.
`CLAIM 42 ................................................................................................... 62
`VIII. . GROUND 3: THERE IS A REASONABLE LIKELIHOOD CLAIMS 9-
`13 AND 44-48 ARE OBVIOUS OVER TETSUO IN VIEW OF
`BISSONNETTE IN FURTHER VIEW OF GEILHUFE .................................. 63
`A.
`CLAIM 9 ..................................................................................................... 63
`B.
`CLAIM 10 ................................................................................................... 66
`C.
`CLAIM 11 ................................................................................................... 66
`D.
`CLAIMS 12-13 ............................................................................................ 70
`E.
`CLAIM 44 ................................................................................................... 72
`F.
`CLAIM 45 ................................................................................................... 73
`G.
`CLAIM 46 ................................................................................................... 73
`H.
`CLAIM 47 ................................................................................................... 73
`I.
`CLAIM 48 ................................................................................................... 73
`IX. GROUND 4: THERE IS A REASONABLE LIKELIHOOD THAT
`CLAIMS 19-20 AND 55 ARE OBVIOUS OVER TETSUO IN VIEW OF
`BISSONNETTE IN FURTHER VIEW OF BUCHNER .................................... 73
`A.
`CLAIM 19 ................................................................................................... 73
`B.
`CLAIM 20 ................................................................................................... 76
`C.
`CLAIM 55 ................................................................................................... 78
`X. CONCLUSION .............................................................................................. 78
`XI. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) ..................... 79
`A.
`REAL PARTY-IN-INTEREST ......................................................................... 79
`B.
`RELATED MATTERS .................................................................................... 79
`C.
`LEAD AND BACK-UP COUNSEL .................................................................. 80
`
`
`
`
`
`
`
`
`ii
`
`

`

`IPR2019-00874
`U.S. Patent No. 6,397,186
`Claims 1-20 and 41-55
`
`
`TABLE OF AUTHORITIES
`
`
`Cases:
`
`Eli Lilly and Co. v. Los Angeles Biomedical Research Inst.,
`849 F.3d 1073 (Fed. Cir. 2017)
`
`General Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha,
`IPR2017-01357, Paper 19 (PTAB Sept. 6, 2017)
`
`Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019)
`
`Shenzhen Silver Star Intelligent Tech. Co., Ltd. v. iRobot Corp.,
`IPR2018-00898, Paper 9 (PTAB Oct. 1, 2018)
`
`Valeo North America, Inc. v. Magna Elec., Inc.,
`IPR2015-00251, Paper 18 (PTAB May 26, 2016)
`
`
`Statutes:
`35 U.S.C. § 102(a), (e)
`
`35 U.S.C. § 102(b)
`
`35 U.S.C. 102 or 103
`
`35 U.S.C. § 314(a)
`
`
`Regulations:
`37 C.F.R. § 42.6(e)
`
`37 C.F.R. § 42.8
`
`37 C.F.R. § 42.8(a)(1)
`
`
`13
`
`6
`
`17
`
`8
`
`13
`
`11, 12
`
`10, 11
`
`13
`
`5
`
`91
`
`90
`
`80
`
`
`
`iii
`
`

`

`IPR2019-00874
`U.S. Patent No. 6,397,186
`Claims 1-20 and 41-55
`
`80
`
`81
`
`90
`
`3
`
`4
`
`4
`
`4
`
`5
`
`4
`
`5
`
`91
`
`37 C.F.R. § 42.8(b)(1)
`
`37 C.F.R. § 42.8(b)(3) and (b)(4)
`
`37 C.F.R. § 42.24
`
`37 C.F.R. § 42.104
`
`37 C.F.R. § 42.104(b)
`
`37 C.F.R. § 42.104(b)(1)
`
`37 C.F.R. § 42.104(b)(2)
`
`37 C.F.R. § 42.104(b)(3)
`
`37 C.F.R. § 42.104(b)(4)
`
`37 C.F.R. § 42.104(b)(5)
`
`37 C.F.R. § 42.105
`
`
`
`
`
`
`iv
`
`

`

`IPR2019-00874
`U.S. Patent No. 6,397,186
`Claims 1-20 and 41-55
`
`
`INTRODUCTION
`Petitioner Apple Inc. requests Inter Partes Review of claims 1-20 and 41-55
`
`I.
`
`(collectively, the “Challenged Claims”) of USPN 6,397,186 assigned to SpeakWare,
`
`Inc.1 ’186 Patent (Ex. 1001).
`
`II.
`
`SUMMARY OF THE ’186 PATENT
`A. Description of the Alleged Invention of the ’186 Patent
`The ’186 Patent describes a system and method of remotely controlling an
`
`appliance via spoken commands. ’186 Patent (Ex. 1001), Abstract, 4:28-33. An
`
`appliance control system operates in a low power “sound activation” mode during
`
`periods where no voice commands are being issued. Id. at 6:66–7:15, 7:54-67. Upon
`
`detecting sound of a sufficient amplitude, the appliance control system switches to
`
`a higher power speech recognition mode, recognizing the user’s spoken commands.
`
`Id. at 7:60–8:16, 12:36-47.
`
`
`1 In SpeakWare’s Complaint for infringement against Apple, SpeakWare represents it is
`
`the owner of the ’186 Patent. (Ex. 1014, ¶ 2).
`
`
`
`1
`
`

`

`IPR2019-00874
`U.S. Patent No. 6,397,186
`Claims 1-20 and 41-55
`
`
`B. Summary of Unpatentability of the Challenged Claims
`The purported invention of the ’186 Patent of switching from a low power
`
`sound activation mode to a speech recognition mode as a function of amplitude was
`
`known prior to the ’186 Patent’s priority date. Tetsuo (Ex. 1004) teaches activating
`
`a voice recognition unit of a voice-operated appliance control system when the
`
`volume of spoken words exceeds a prescribed amplitude value:
`
`The present invention provides a voice input unit on the device
`operator, wherein a user provides speech input in the form of spoken
`words towards the voice input unit, and also provides a volume
`detection means on the operator or air conditioner main unit, wherein
`first voice input signal volume (in other words, amplitude or power)
`exceeding a prescribed value is detected, followed by output of
`detection signals indicating this. Then, a voice recognition unit is
`provided initiating operation with detection signal input. The voice
`recognition unit inputs voice signals, and extracts the characteristic
`parameters thereof.
`
`Tetsuo, 3:42–4:4.2
`
`
`2 All emphases added unless otherwise stated.
`2
`
`
`

`

`IPR2019-00874
`U.S. Patent No. 6,397,186
`Claims 1-20 and 41-55
`
`
`C. Level of Skill of a PHOSITA
`A PHOSITA at the time of the ’186 Patent would have been a person having
`
`a bachelor’s degree in electrical engineering, computer science or engineering, or
`
`the equivalent and at least three years of experience working with speech recognition
`
`systems, natural language processing computer control systems, and/or human-
`
`machine interaction systems. Alternatively, the skilled person would have had at
`
`least (1) a master’s degree in electrical engineering, computer science or
`
`engineering, or the equivalent with an emphasis in the above-listed technologies and
`
`(2) at least two years of experience working with the above-listed technologies.
`
`Additional education may substitute for lesser experience and vice-versa. Dec. (Ex.
`
`1003), 26.3
`
`III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`Petitioner certifies the ’186 Patent is available for IPR and Petitioner is not
`
`barred or estopped from requesting IPR challenging the claims of the ’186 Patent.
`
`
`3 All citations to “Dec.” are to paragraph numbers in Ex. 1003, Declaration of Dr. Les
`
`Atlas.
`
`
`
`3
`
`

`

`IPR2019-00874
`U.S. Patent No. 6,397,186
`Claims 1-20 and 41-55
`
`Petitioner is not the owner of the ’186 Patent, has not filed a civil action challenging
`
`the validity of any claim of the ’186 Patent, and this Petition is not filed more than
`
`one year after Petitioner was served with a complaint alleging infringement of the
`
`’186 Patent.
`
`B.
`
`Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested
`In view of the prior art and evidence presented, the Challenged Claims of the
`
`’186 Patent are unpatentable and should be cancelled. 37 C.F.R. § 42.104(b)(1).
`
`Based on the prior art references identified below, IPR of the Challenged Claims
`
`should be granted. 37 C.F.R. § 42.104(b)(2).
`
`Proposed Grounds of Unpatentability
`Ground 1: Claims 1-4, 7-8, 14-18, 41, 43, 49-54 are obvious under
`§ 103(a) over a certified English translation of Japanese Patent Pub.
`No. JP 2708566 to Tetsuo (“Tetsuo” or “Ex. 1004”) in view of PCT
`Pub. WO 94/03020 to Bissonnette (“Bissonnette” or “Ex. 1005”)
`Ground 2: Claims 5-6 and 42 are obvious under § 103(a) over
`Tetsuo in view of Bissonnette in further view of USPN 5,684,924 to
`Stanley (“Stanley” or “Ex. 1006”)
`Ground 3: Claims 9-13 and 44-48 are obvious under § 103(a) over
`Tetsuo in view of Bissonnette in further view of USPN 6,584,439 to
`Geilhufe (“Geilhufe” or “Ex. 1007”)
`
`Exhibits
`
`Ex. 1004,
`Ex. 1005
`
`Ex. 1004,
`Ex. 1005,
`Ex. 1006
`
`Ex. 1004,
`Ex. 1005,
`Ex. 1007
`
`
`
`4
`
`

`

`IPR2019-00874
`U.S. Patent No. 6,397,186
`Claims 1-20 and 41-55
`
`
`Proposed Grounds of Unpatentability
`Ground 4: Claims 19-20 and 55 are obvious under § 103(a) over
`Tetsuo in view of Bissonnette in further view of USPN 6,535,854 to
`Buchner (“Buchner” or “Ex. 1008”)
`
`Exhibits
`
`Ex. 1004,
`Ex. 1005,
`Ex. 1008
`
`
`
`Sections VI-IX identify where each element of the Challenged Claims is
`
`found in the prior art. 37 C.F.R. § 42.104(b)(4). The exhibit numbers of the
`
`supporting evidence relied upon to support the challenges are provided above and
`
`the relevance of the evidence to the challenges raised are provided in Sections VI-
`
`IX. 37 C.F.R. § 42.104(b)(5). Exhibits 1001–1021 are also attached.
`
`C. Claim Construction Under 37 C.F.R. § 42.104(b)(3)
`All claim terms not specifically discussed below should be given their plain
`
`and ordinary meaning in light of the specification. This is not a waiver of any
`
`argument in any future proceedings that might involve applying the claims in a
`
`different context, nor does Petitioner waive its right to raise additional issues of
`
`claim construction that might be relevant to litigation but irrelevant to this
`
`proceeding.
`
`IV. THE BOARD’S DISCRETION UNDER 35 U.S.C. § 314(a)
`
`The ’186 Patent is the subject of the following IPRs:
`
`• IPR2019-00340 and IPR2019-00342, filed by Google LLC (“the Google IPRs”);
`5
`
`
`

`

`• IPR2019-00495, filed by Unified Patents Inc. (“the Unified IPR”); and
`
`IPR2019-00874
`U.S. Patent No. 6,397,186
`Claims 1-20 and 41-55
`
`
`• IPR2019-00758 and IPR2019-00792, filed by Microsoft Corporation (“the
`
`Microsoft IPRs”).
`
`
`
`Petitioner respectfully submits application of the General Plastic factors
`
`heavily weighs in favor of institution of the present IPR. General Plastic Indus. Co.,
`
`Ltd. v. Canon Kabushiki Kaisha, IPR2017-01357, slip op. at 16 (PTAB Sept. 6,
`
`2017) (Paper 19) (precedential as to § II.B.4.i). As an overriding factor, the primary
`
`reference (Tetsuo, Ex. 1004) for the grounds of unpatentability has not been cited in
`
`the prior-filed IPRs. Tetsuo in combination with Bissonnette presents a strong case
`
`for unpatentability of the challenged independent claims. For the dependent claims,
`
`only Bissonnette has been cited in a prior-filed IPR (as the primary reference for the
`
`Microsoft IPRs).
`
` This IPR is the first filed by Petitioner Apple. Petitioner began searching for
`
`prior art related to the ’186 Patent on or about September 2018, after being sued for
`
`infringement by Patent Owner. An extensive number of references were located,
`
`analyzed, and tiered, and claims charts were prepared for the viable references,
`
`requiring considerable time and effort. Petitioner identified the applied prior art on
`
`or about October 2018. Less than four months separate filing of the first IPR (the
`6
`
`
`

`

`IPR2019-00874
`U.S. Patent No. 6,397,186
`Claims 1-20 and 41-55
`
`Google IPRs on November 30, 2018) and the present Petition. Since first locating
`
`the primary reference to Tetsuo, Petitioner and its counsel have worked diligently to
`
`confirm Tetsuo is the best prior art of the myriad art, identified and retained a
`
`Declarant, and prepared the Petition. As the Board can appreciate, these tasks are
`
`time intensive and require a certain specialty and expertise. This is especially true
`
`given filing a petition that is not well-supported, precise, and thorough risks not
`
`complying with the requirements for IPR. Petitioner has not delayed filing of the
`
`Petition, either intentionally or otherwise, and does not obtain any advantage from
`
`any delay. Given the extremely time-intensive preparation process, including the
`
`large number of patent claims, a less than four-month period between the filing of
`
`the first IPR and the present Petition is reasonable and expected.
`
`Regarding the prior-filed IPRs, the Board has not determined whether to
`
`institute review of any of the prior-filed IPRs. The Google IPR POPR was filed
`
`March 12, 2019, three weeks from filing of the present Petition. Because different
`
`art is presented in the present Petition than the Google IPRs, Patent Owner’s
`
`POPR does not comment on art
`
`that could be strategically used by
`
`Petitioner in the present IPR. The POPR also does not provide any claim
`
`constructions that could be analyzed and strategically used by Petitioner. The POPR
`
`7
`
`

`

`IPR2019-00874
`U.S. Patent No. 6,397,186
`Claims 1-20 and 41-55
`
`is primarily directed to procedural issues; the only substantive issue raised is an
`
`alleged lack of a reason to combine, which is irrelevant to the present Petition
`
`because different art is used in the present Petition.
`
`Although the Board does have finite resources, this IPR can be completed
`
`within the statutorily-set time frame. Moreover, the Congressional intent of IPRs is
`
`to provide a mechanism for a party to establish unpatentability. Tetsuo is a very
`
`strong reference and presents a compelling case for unpatentability. Not considering
`
`this prior art would disadvantage not only Petitioner but also forfeit the
`
`Congressional intent for an efficient, fair, and accurate resolution of the
`
`unpatentability of the ’186 Patent.
`
`A separate factor identified by the Board in Shenzhen is the extent to which the
`
`petitioner and any prior petitioner(s) were similarly situated defendants or otherwise
`
`realized a similar-in-time hazard regarding the challenged patent. Shenzhen Silver
`
`Star Intelligent Tech. Co., Ltd. v. iRobot Corp., IPR2018-00898, Paper 9 at 7 (PTAB
`
`Oct. 1, 2018). Although Petitioner was sued on the same day as two of the three
`
`petitioners in the prior-filed IPRs, Petitioner has not, purposefully or otherwise,
`
`engaged in any tactical, serial filings with the other petitioners. (Exs. 1012-1014).
`
`This is not a situation where Petitioner’s challenge to the patentability of the ’186
`8
`
`
`

`

`IPR2019-00874
`U.S. Patent No. 6,397,186
`Claims 1-20 and 41-55
`
`Patent has changed or shifted due to the prior-filed IPRs. This is self-evident because
`
`of the different cited prior art for the independent claims. Petitioner independently
`
`performed its own prior art searching and preparation of the present Petition.
`
`Petitioner had already identified Tetsuo as the likely best reference for use in its
`
`Petition prior to filing of the Google IPRs (the first-filed IPR). Petitioner has not
`
`shifted its unpatentability challenge to address any perceived deficiencies in the
`
`prior-filed IPRs. Neither Petitioner nor its counsel, including litigation counsel and
`
`its separate IPR counsel, has collaborated with any other IPR petitioners or
`
`defendants in litigation with Patent Owner regarding this Petition. Petitioner’s IPR
`
`counsel has not had any communications with any other petitioners or defendants
`
`regarding this Petition, the previously-filed IPRs, or any pending litigation. Further,
`
`the primary drafter of the Petition and Declaration for Petitioner maintains a full
`
`docket, and the present Petition was prepared ahead of even earlier-assigned IPRs.
`
`Patent Owner sued multiple entities for patent infringement and consequently,
`
`should expect it will face a patentability challenge from each sued entity. To allow
`
`Patent Owner to sue multiple entities but otherwise limit the number of IPRs Patent
`
`Owner is required to address provides an inequitable advantage to Patent Owner. It
`
`would be fundamentally unfair to prevent Petitioner, who is a separate entity with
`9
`
`
`

`

`IPR2019-00874
`U.S. Patent No. 6,397,186
`Claims 1-20 and 41-55
`
`no relation to the other petitioners, from filing its own IPR, which uses different
`
`prior art, simply because Petitioner did not rush its IPR to filing.
`
`V.
`
`SHOWING OF ANALOGOUS, PRIOR ART
`A. Tetsuo Is Analogous, Prior Art
`Tetsuo issued February 4, 1998, qualifying as prior art to the ’186 Patent under
`
`at least 35 U.S.C. § 102(b). Tetsuo (Ex. 1004). Tetsuo discloses a voice recognition
`
`controller for controlling an appliance, such as an air conditioner, via voice-provided
`
`commands. Tetsuo, 3:42–4:20, 4:47-49, 5:7-10. Because both Tetsuo and the ’186
`
`Patent are directed to systems for controlling appliances through speech having a
`
`low power mode of operation, Tetsuo is in the same field of endeavor and is
`
`reasonably pertinent to the same problem as the claimed invention in the ’186 Patent.
`
`Dec., 41-42. Therefore, Tetsuo is also analogous to the claimed invention in the ’186
`
`Patent. Tetsuo was not cited or considered during prosecution of the ’186 Patent.
`
`Exhibit 1004 is the certified translated version of Tetsuo annotated to include
`
`column and line numbers for ease of reference and citation. No other changes or
`
`annotations have been made to Ex. 1004 relative to the certified translation of Tetsuo.
`
`
`
`10
`
`

`

`IPR2019-00874
`U.S. Patent No. 6,397,186
`Claims 1-20 and 41-55
`
`
`B. Bissonnette Is Analogous, Prior Art
`Bissonnette published February 3, 1994, qualifying as prior art to the ’186
`
`Patent under 35 U.S.C. § 102(b). Bissonnette (Ex. 1005). Bissonnette discloses a
`
`voice-operated
`
`remote-control apparatus. Bissonnette, Abstract. Because
`
`Bissonnette, like the ’186 Patent, discloses a system and method of remotely
`
`controlling appliances based on a user’s spoken commands, Bissonnette is in the
`
`same field of endeavor and is reasonably pertinent to the same problem as the ’186
`
`Patent. Dec., 44-45. Therefore, Bissonnette is analogous to the claimed invention in
`
`the ’186 Patent. Bissonnette was not cited or considered during prosecution of the
`
`’186 Patent.
`
`C. Stanley Is Analogous, Prior Art
`Stanley published November 4, 1994, qualifying as prior art to the ’186 Patent
`
`under 35 U.S.C. § 102(b). Stanley (Ex. 1006). Stanley describes a speech recognition
`
`system with adjustable parameters. Stanley, Abstract. Because Stanley, like the ’186
`
`Patent, discloses a system and method of recognizing speech with adjustable
`
`parameters, Stanley is in the same field of endeavor and is reasonably pertinent to
`
`the same problem as claimed in the ’186 Patent. Dec., 47. Therefore, Stanley is
`
`
`
`11
`
`

`

`IPR2019-00874
`U.S. Patent No. 6,397,186
`Claims 1-20 and 41-55
`
`analogous to the claimed invention in the ’186 Patent. Stanley was not cited or
`
`considered during prosecution of the ’186 Patent.
`
`D. Geilhufe Is Analogous, Prior Art
`Geilhufe is a U.S. patent filed May 21, 1999, and issued June 24, 2002,
`
`qualifying as prior art to the ’186 Patent under 35 U.S.C. § 102(a), (e). Geilhufe (Ex.
`
`1007). Geilhufe teaches a system configured to provide a voice user interface to
`
`control “appliances,” such as a TV, and an “air conditioner” or cooling system.
`
`Geilhufe, 5:30-58, 11:20-32, 12:34-37. Because Geilhufe, like the ’186 Patent,
`
`discloses a system for voice control of appliances, Geilhufe is in the same field of
`
`endeavor and is reasonably pertinent to the same problem as claimed in the ’186
`
`Patent. Dec., 49. Therefore, Geilhufe is analogous art to the claimed invention in the
`
`’186 Patent. Geilhufe was not cited or considered during prosecution of the ’186
`
`Patent.
`
`E. Buchner Is Analogous, Prior Art
`Buchner is a U.S. patent filed October 19, 1998, and issued March 18, 2003,
`
`qualifying as prior art to the ’186 Patent under 35 U.S.C. § 102(a), (e). Buchner (Ex.
`
`1008). Buchner teaches controlling an environmental control system and a
`
`television. Buchner, 1:7-15. Because Buchner, like the ’186 Patent, discloses a
`
`
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`IPR2019-00874
`U.S. Patent No. 6,397,186
`Claims 1-20 and 41-55
`
`system for voice control of appliances, Buchner is in the same field of endeavor and
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`is reasonably pertinent to the same problem claimed in the ’186 Patent. Dec., 51.
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`Therefore, Buchner is analogous art to the claimed invention in the ’186 Patent.
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`Buchner was not cited or considered during prosecution of the ’186 Patent.
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`VI. GROUND 1: THERE IS A REASONABLE LIKELIHOOD CLAIMS 1-4,
`7-8, 14-18, 41, 43, AND 49-54 ARE OBVIOUS OVER TETSUO IN VIEW
`OF BISSONNETTE
`Petitioner submits Exhibit 1003, Declaration of Dr. Les Atlas, as evidence
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`supporting its arguments. A proper unpatentability analysis entails considering Dr.
`
`Atlas’s reasonable understanding or appreciation of the discussed references. Eli
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`Lilly and Co. v. Los Angeles Biomedical Research Inst., 849 F.3d 1073, 1074-75
`
`(Fed. Cir. 2017); Valeo North America, Inc. v. Magna Elec., Inc., IPR2015-00251,
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`Paper 18 at 18 (PTAB May 26, 2016); MPEP 2112 (“The express, implicit, and
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`inherent disclosures of a prior art reference may be relied upon in the rejection of
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`claims under 35 U.S.C. 102 or 103.”). As such, Dr. Atlas’s understanding of what
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`would reasonably be understood from a reference as of the ’186 Patent’s priority
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`date should properly be considered. Dec., 28.
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`IPR2019-00874
`U.S. Patent No. 6,397,186
`Claims 1-20 and 41-55
`
`
`A. Claim 14
`1.
`Claim 1[Preamble]
`To the extent the preamble is limiting, Tetsuo teaches an audio signal activated
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`control system for controlling appliances, such as an air conditioner. Tetsuo teaches
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`a “voice recognition controller for controlling operation of a device based upon user
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`operation, specifically a voice recognition controller for operating a main device
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`based upon user spoken input.” Tetsuo (Ex. 1004), 1:20-24. The voice recognition
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`controller is illustrated in Fig. 1:
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`4 See the accompanying Claims Listing Appendix for a listing of claims.
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`IPR2019-00874
`U.S. Patent No. 6,397,186
`Claims 1-20 and 41-55
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`Tetsuo, Fig. 1, 4:47-49 (stating Fig. 1 illustrates “an embodiment of a voice
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`recognition controller according to the present invention”). The voice recognition
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`controller is activated in response to audio from a user comprising user spoken input.
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`Tetsuo, 4:5-45 (disclosing the voice recognition unit, a sub-component of the voice
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`recognition controller, starts operation when signals indicative of user spoken input
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`are detected by a volume detection unit), 3:42-60.
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`
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`Tetsuo also teaches the voice recognition controller controls appliances, such
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`as an air conditioner, based upon the user spoken input. Tetsuo, 5:7-10
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`(“Furthermore, an operator is a part allowing input so users can operate the air
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`conditioner, and may be an air conditioner remote control or other device.”).
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`Because an air conditioner is an “appliance,” and further because Tetsuo teaches the
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`invention “may be adopted for all devices other than air conditioners providing
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`control based upon the results of recognizing spoken words that are user spoken
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`input,” a PHOSITA would recognize Tetsuo teaches an audio signal activated
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`control system for controlling appliances. Tetsuo, 1:17-20; Dec., 53 (further
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`discussing the ’186 Patent’s description of an “appliance”).
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`IPR2019-00874
`U.S. Patent No. 6,397,186
`Claims 1-20 and 41-55
`
`
`2.
`Claim 1(a)
`Tetsuo teaches microphone 1 captures a user’s speech to generate analog voice
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`signals. Tetsuo discloses operator 18 “is a part allowing input so users can operate
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`the air condition, and may be an air conditioner remote control or other device. This
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`includes the microphone 1, amplifier 2….”
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`Tetsuo, Fig. 1 (annotated), 5:7-11. Tetsuo teaches “[a]nalog voice signals are input
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`from a microphone 1 via an amplifier 2.” Tetsuo, 4:50-59, 3:42-49 (disclosing a
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`IPR2019-00874
`U.S. Patent No. 6,397,186
`Claims 1-20 and 41-55
`
`“voice input unit” and a user providing “speech input in the form of spoken words
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`towards the voice input unit”); Dec., 54-55 (explaining it is well known to amplify
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`signals outputted from a microphone).
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`A PHOSITA would understand Tetsuo teaches microphone 1 receives an
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`audio signal (e.g., the acoustic signal from a human voice) and converts the audio
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`signal to an electric signal, i.e., the expressly taught “analog voice signals.” Dec.,
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`56. The disclosed “analog voice signals” are electrical signals converted from the
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`originally-received audio (i.e., acoustic) signal. Id.
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`Bissonnette also teaches an Analog Voice Input 2 including a microphone that
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`“converts the audio information in the user’s voice to an analog electrical signal and
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`also conditions this electrical signal for processing” by a microprocessor.
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`Bissonnette (Ex. 1005), 10:10-19, Fig. 1. A PHOSITA would know from Bissonnette
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`microphones are well known to receive the audio signal (the acoustic information
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`spoken by a user), and convert the audio signal into a usable format, i.e., the “analog
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`electrical signal” taught in Bissonnette. Dec., 57; Realtime Data, LLC v. Iancu, 912
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`F.3d 1368, 1373 (Fed. Cir. 2019) (holding the Board need not require a motivation
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`to combine a secondary reference where the secondary reference is not being used
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`to teach a limitation but rather to explain the teachings of a primary reference). Using
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`IPR2019-00874
`U.S. Patent No. 6,397,186
`Claims 1-20 and 41-55
`
`the knowledge of how a microphone operates, as taught by Bissonnette, a PHOSITA
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`would understand Tetsuo’s microphone also receives audio signals and converts the
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`audio signals to electrical signals, as recited in claim 1(a). Id.
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`Alternatively, a PHOSITA would find it obvious to substitute the microphone
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`taught by Tetsuo with the microphone taught by Bissonnette, resulting in a
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`microphone that receives and converts audio signals into electrical signals, as taught
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`by Bissonnette. Dec., 58. Such a substitution is a simple substitution of one known
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`element (the Tetsuo microphone) for another (the Bissonnette microphone) to obtain
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`predictable results, namely the substituted Bissonnette microphone is used by the
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`Tetsuo voice recognition unit to receive audio information from the user, as
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`described in Tetsuo, and convert such audio information to an electrical signal, as
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`taught in Bissonnette. Tetsuo, 4:50-59; Bissonnette, 10:9-13; Dec., 58.
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`3.
`Claim 1(b)
`Tetsuo teaches the claimed “speech recognition system.” Tetsuo’s voice
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`recognition controller comprises volume detection unit 5, voice recognition unit 6,
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`and control unit 7. Tetsuo, 4:5-49, 4:47–5:25 (discussing voice recognition controller
`
`and associated components), Fig. 1. Figure 1 is annotated below to highlight these
`
`three sub-components, and Fig. 3 illustrates the collective units:
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`IPR2019-00874
`U.S. Patent No. 6,397,186
`Claims 1-20 and 41-55
`
`
`
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`Tetsuo, Fig. 1 (annotated), Fig. 3; Dec., 59.
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`
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`A PHOSITA would understand or find it obvious the volume detection unit,
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`voice recognition unit, and control unit collectively operate as a “speech recognition
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`system,” as claimed, because these units perform functions analogous to the
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`functions recited in claim 1 as performed by the claimed “speech recognition
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`system” and include at least one processor. Dec., 59-62; Tetsuo, 4:46–5:25. Because
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`these units are sub-components of the voice recognition controller, a PHOSITA
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`would understand performance of a particular step or function by any one of units
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`IPR2019-00874
`U.S. Patent No. 6,397,186
`Claims 1-20 and 41-55
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`5,6,7 as the mapped “speech recognition system” performing such function. Dec.,
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`6