UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Samsung Electronics Co., LTD and Samsung Electronics America, Inc.,
`Petitioners
`v.
`SpeakWare, Inc.,
`Patent Owner
`
`Case IPR2019-01147
`U.S. Patent No. 6,397,186
`
`Petition for Inter Partes Review of
`U.S. Patent No. 6,397,186
`
`

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`IPR2019-01147
`U.S. Patent No. 6,397,186
`
`I.
`II.
`
`Table of Contents
`Introduction ...................................................................................................... 1
`Statement of Precise Relief Requested for Each Claim Challenged ............... 2
`A.
`Claims and Statutory Grounds .............................................................. 2
`III. Overview of the ’186 Patent ............................................................................ 3
`A.
`Summary ............................................................................................... 3
`B.
`Prosecution History ............................................................................... 5
`C.
`Level of Ordinary Skill in the Art ......................................................... 5
`D.
`Claim Construction................................................................................ 6
`E.
`The Board Should Institute Review ...................................................... 6
`F.
`General Plastic Factors are Inapplicable........................................... 9
`IV. GROUNDS 1A/1B: SALAZAR IN VIEW OF MIYAZAWA, AND
`SALAZAR AND MIYAZAWA IN VIEW OF BOSSEMEYER RENDER
`OBVIOUS CLAIMS 21, 23-26, 28-36, 39-41, 43-52, AND 55 ..................... 9
`A.
`Salazar Overview .................................................................................. 9
`B. Miyazawa Overview............................................................................11
`C.
`Bossemeyer Overview .........................................................................14
`D.
`Combining Salazar, Miyazawa, and Bossemeyer ...............................15
`E.
`Claim 21 ..............................................................................................23
`[21p] “An audio signal activated control system for controlling one or
`more appliances, said control system comprising:” .................23
`[21a] “a microphone for receiving audio signals and converting said
`audio signals to electrical signals” ............................................24
`[21b] “a speech recognition circuit including a processor” ................27
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`U.S. Patent No. 6,397,186
`[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” .........................31
`[21d] “and a low power sound activation mode, . . . and wherein in
`said sound activation mode said processor is placed in a low
`power state;” .............................................................................36
`[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;” ...............................37
`[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,” ...............................................................................44
`[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” ........................................................................45
`[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 more
`appliances to perform one or more functions associated with
`said first control signals.” .........................................................48
`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.” .........................................................................................50
`Claim 24 — “The control system as recited in claim 23, wherein said
`second control signals are RF signals.” ...............................................51
`Claim 25 — “The control system as recited in claim 23, wherein said
`second control signals are infrared signals.” .......................................51
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`H.
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`U.S. Patent No. 6,397,186
`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.” .......................................................51
`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.” ...................................................................................................51
`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.” ...........................................52
`Claim 30 — “The audio signal activated control system as recited in
`claim 21, wherein said predetermined conditions include a
`predetermined period of time.” ...........................................................52
`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.” ................53
`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.” ....................................................54
`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.” ......................54
`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.” .............56
`Claim 35 — “The audio signal activated control system as recited in
`claim 21, wherein said control system further comprises a memory for
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`IPR2019-01147
`U.S. Patent No. 6,397,186
`storage of data associated with a plurality of said second control
`signals for controlling an appliance.” ..................................................57
`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.” ........................57
`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.”....................58
`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.” ................................................................................................60
`Claim 41 ..............................................................................................61
`[41p] “A method for providing hands-free control of appliances,
`comprising:” ..............................................................................61
`[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;” .........................................62
`[41b] “configuring said speech recognition system to have a low
`power sound activation mode wherein said processor is in a low
`power state;” .............................................................................67
`[41c] “monitoring said audible signals to detect if the amplitude of
`said audible signals exceeds a predetermined threshold” .........67
`[41d] “enabling said speech recognition system to switch
`automatically from said sound activation mode to said speech
`
`iv
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`V.
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`IPR2019-01147
`U.S. Patent No. 6,397,186
`recognition mode if said amplitude exceeds said predetermined
`threshold;” .................................................................................67
`[41e] “generating and decoding representations of said audible
`signals in said speech recognition mode; and” .........................67
`[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.” .........................................67
`V.
`Claims 43-52 .......................................................................................68
`W. 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.” ..69
`GROUNDS 2A/2B: SALAZAR AND MIYAZAWA IN VIEW OF
`OPPENDAHL, AND SALAZAR, MIYAZAWA, AND BOSSEMEYER IN
`VIEW OF OPPENDAHL RENDERS OBVIOUS CLAIMS 22 AND 42 ....71
`A.
`Oppendahl Overview ...........................................................................71
`B.
`Combining Salazar, Miyazawa, and Bossemeyer with Oppendahl ....71
`C.
`Claim 22 — “The control system as recited in claim 21, wherein said
`predetermined threshold of said sound activation circuit is user-
`adjustable.” ..........................................................................................73
`D.
`Claim 42 ..............................................................................................74
`VI. GROUNDS 3A/3B: SALAZAR AND MIYAZAWA IN VIEW OF
`REICHEL, AND SALAZAR, MIYAZAWA AND BOSSEMEYER IN
`VIEW OF REICHEL RENDERS OBVIOUS CLAIM 27 ............................75
`A.
`Reichel Overview ................................................................................75
`B.
`Combining Salazar, Miyazawa, and Bossemeyer with Reichel .........76
`C.
`Claim 27 — “The audio signal activated control system as recited in
`claim 21, wherein said sound activation circuit further includes a user-
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`IPR2019-01147
`U.S. Patent No. 6,397,186
`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.” .........77
`VII. GROUNDS 4A/4B: SALAZAR AND MIYAZAWA IN VIEW OF
`DOUMA, AND SALAZAR, MIYAZAWA, AND BOSSEMEYER IN
`VIEW OF DOUMA RENDERS OBVIOUS CLAIMS 37, 38, 53, AND 54
` .......................................................................................................................78
`A.
`Douma Overview ................................................................................78
`B.
`Combining Salazar, Miyazawa, and Bossemeyer with Douma ..........79
`C.
`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.”
` .............................................................................................................80
`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.” .................................................................................................81
`E.
`Claim 53 ..............................................................................................82
`F.
`Claim 54 ..............................................................................................82
`VIII. Mandatory Notices Under 37C.F.R. § 42.8 ...................................................83
`A.
`Real Party-in-Interest ..........................................................................83
`B.
`Related Matters ....................................................................................83
`
`D.
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`U.S. Patent No. 6,397,186
`C.
`Lead and Backup Counsel ...................................................................84
`D.
`Service Information .............................................................................85
`IX. Grounds for Standing .....................................................................................85
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`IPR2019-01147
`U.S. Patent No. 6,397,186
`
`TABLE OF EXHIBITS
`Description
`Exhibit
`1001 U.S. Patent No. 6,397,186 to Bush et al. (“the ’186 patent”)
`1002 U.S. Patent No. 5,802,467 to Salazar et al. (“Salazar”)
`1003 U.S. Patent No. 5,983,186 to Miyazawa et al. (“Miyazawa”)
`1004 U.S. Patent No. 6,012,027 to Bossemeyer, Jr. (“Bossemeyer”)
`1005 U.S. Patent No. 5,008,954 to Oppendahl (“Oppendahl”)
`1006 U.S. Patent No. 5,459,792 to Reichel (“Reichel”)
`1007 RESERVED
`1008 U.S. Patent No. 5,583,965 to Douma et al. (“Douma”)
`1009 Declaration of Nathaniel Polish (“Polish”)
`1010 Prosecution History of U.S. Patent Application No. 09/469,707
`1011 Prosecution History of U.S. Patent Application No. 10/168,935
`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”)
`1019 U.S. Patent No. 6,584,439 to Geilhufe (“Geilhufe”)
`1020 Excerpts from Newton’s Telecom Dictionary (15th ed. Feb. 1999)
`
`viii
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`IPR2019-01147
`U.S. Patent No. 6,397,186
`
`Description
`Exhibit
`1021 U.S. Patent No. 4,484,344 to Mai (“Mai”)
`1022 U.S. Patent No. 5,276,765 to Freeman (“Freeman”)
`
`ix
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`IPR2019-01147
`U.S. Patent No. 6,397,186
`TABLE OF AUTHORITIES
`
`Cases
`Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC,
`825 F.3d 1373 (Fed. Cir. 2016) ............................................................................17
`Apple Inc. v. Uniloc 2017 LLC,
`IPR2018-00580 (PTAB Aug. 21, 2018) ................................................................ 9
`DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co.,
`464 F.3d 1356 (Fed. Cir. 2006) ............................................................... 16, 19, 22
`General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha,
`IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) .................................................. 9
`In re GPAC Inc.,
`57 F.3d 1573 (Fed. Cir. 1995) ................................................................................ 6
`In re Sneed,
`710 F.2d 1544 (Fed. Cir. 1983) ............................................................................17
`Intex Recreation Corp. v. Team Worldwide Corp.,
`Case IPR2018-00871, Paper 14 (PTAB Sept. 14, 2018) ....................................... 7
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................... 17, 21
`Praxair Distribution, Inc. v. Ino Therapeutics, LLC,
`IPR2015-00893, paper 14 (PTAB Sept. 22, 2015) ................................................ 7
`Statutes
`35 U.S.C. § 102(b) ..................................................................................................... 2
`35 U.S.C. § 103 .......................................................................................................... 3
`35 U.S.C. § 311 .......................................................................................................... 2
`35 U.S.C. §§ 102(a) ................................................................................................... 2
`35 U.S.C. §§ 102(e) ................................................................................................... 2
`37C.F.R. § 42.8 ........................................................................................................83
`Rules
`83 Fed. Reg. 51 .......................................................................................................... 6
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`IPR2019-01147
`U.S. Patent No. 6,397,186
`
`I.
`
`INTRODUCTION
`Petitioners Samsung Electronics Co., LTD and Samsung Electronics America,
`
`Inc. (“Samsung”) request inter partes review of claims 21-55 of U.S. Patent No.
`
`6,397,186. The ’186 patent is directed to a sound-activated and voice-operated
`
`remote control for controlling appliances. Abstract. Independent claim 21 requires
`
`four elements: a microphone for receiving and converting audio signals to electrical
`
`signals, a speech recognition circuit for receiving the electrical signals and
`
`generating signals for controlling an appliance, a sound activation circuit for causing
`
`the speech recognition circuit to switch modes, and an appliance control circuit for
`
`transmitting an appliance control signal to an appliance. ’186 patent, claim 21. But
`
`the patent admits, and the prior art confirms, that these features were well known.
`
`See Section III.A. And despite the ’186 patent and its applicant distinguishing the
`
`claims from the prior art by arguing that they provide hands-free control of
`
`appliances using a system that switches between a low-power mode and an active
`
`speech recognition mode based solely on voice input, these features were also not
`
`new. As demonstrated, the prior art disclosed these features and rendered obvious
`
`each of claims 21-55 before the ’186 patent.
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`1
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`II.
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`IPR2019-01147
`U.S. Patent No. 6,397,186
`STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH CLAIM
`CHALLENGED
`A.
`Claims and Statutory Grounds
`Samsung requests review and cancellation under 35 U.S.C. § 311 of claims
`
`21-55 in view of:
`
`Prior Art
`
`Salazar, U.S. Patent No. 5,802,467 (Ex. 1002); issued Sept. 1, 1998; prior art
`under pre-AIA 35 U.S.C. § 102(b).
`
`Miyazawa, U.S. Patent No. 5,983,186 (Ex. 1003); filed Aug. 20, 1996, issued on
`November 9, 1999; prior art under 35 U.S.C. §§ 102(a), (e).
`
`Bossemeyer, U.S. Patent No. 6,012,027 (Ex. 1004); filed Sept. 17, 1997; prior art
`under § 102(e).
`
`Oppendahl, U.S. Patent No. 5,008,954 (Ex. 1005); issued Sept. 24, 1990; prior
`art under § 102(b).
`
`Reichel, U.S. Patent No. 5,459,792 (Ex. 1006); issued Oct. 17, 1995; prior art
`under § 102(b).
`
`Douma, U.S. Patent No. 5,583,965 (Ex. 1008); issued Dec. 10, 1996; prior art
`under § 102(b).
`
`2
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`

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`IPR2019-01147
`U.S. Patent No. 6,397,186
`
`Grounds of Unpatentability
`
`1A/1B
`
`2A/2B
`
`3A/3B
`
`4A/4B
`
`Salazar in view of Miyazawa (1A), and Salazar and Miyazawa in view
`of Bossemeyer (1B) renders obvious claims 21, 23-26, 28-36, 39-41,
`43-52, and 55 under 35 U.S.C. § 103.
`
`Salazar and Miyazawa in view of Oppendahl (2A), and Salazar,
`Miyazawa and Bossemeyer in view of Oppendahl (2B) renders obvious
`claims 22 and 42 under 35 U.S.C. § 103.
`
`Salazar and Miyazawa in view of Reichel (3A), and Salazar,
`Miyazawa, and Bossemeyer in view of Reichel (3B) renders obvious
`claim 27 under 35 U.S.C. § 103.
`
`Salazar and Miyazawa in view of Douma (4A), and Salazar,
`Miyazawa, and Bossemeyer in view of Douma (4B) renders obvious
`claims 37, 38, 53, and 54 under 35 U.S.C. § 103.
`
`III. OVERVIEW OF THE ’186 PATENT
`A.
`Summary
`The ’186 patent discloses a sound-activated, universal remote system for
`
`controlling appliances using voice. ; Polish, ¶ 33; ’186 patent, Abstract, 4:33-51A
`
`microphone captures voice input, and one or more circuits convert and apply speech
`
`recognition methods to the captured voice signals. Id., 7:22-32, 10:5-46. Using the
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`voice input, the system generates control signals that are wirelessly transmitted to
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`U.S. Patent No. 6,397,186
`an appliance. Id., 8:17-38. The ’186 patent admits, however, that all these elements
`
`were known, including:
`
` commercially available microphone, Id., 7:33:43;
`
` processing and recognizing speech in signals received from the
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`microphone, Id., 10:20-21, 10:40-11:7, 23:16-28;
`
` using speech recognition to control appliances, Id., 2:43-62;
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` controlling multiple appliances with a universal remote, Id., 1:11-67;
`
` “continuous listening software routines” of its speech recognition
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`mode, Id., 21:39-49 (citing Fig. 5, S508 through S517), 23:16-28; and
`
` “signal amplification and triggering circuits,” Id., 19:57-20:19.
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`Polish, ¶ 34.
`
`The sole improvement over the admitted prior art is purportedly providing
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`“truly hands-free” voice input for interacting with appliances. Id., 2:7-42, 6:66-7:4,
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`8:36-38; Polish, ¶ 35. The patent discloses accomplishing this using two operating
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`modes: a speech recognition mode and a sound activation mode. ’186 patent, 4:27-
`
`33, 7:4-15, 7:54-8:16. The speech recognition mode recognizes speech in a captured
`
`voice signal to determine commands. Id., 11:34-67. The sound activation mode is
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`a low-power mode. Id., 7:54-8:16. The system remains in the low-power sound
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`activation mode until a voice signal is received that exceeds a threshold, triggering
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`the speech recognition mode. Id. If a command is recognized from the captured
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`IPR2019-01147
`U.S. Patent No. 6,397,186
`voice signal, the system generates a corresponding control signal that is sent to an
`
`appliance. Id., 8:1-16. The ’186 patent contends that these features improved the
`
`prior art by eliminating the need for a “talk switch” found in earlier systems. Id.,
`
`2:1-42. As this petition and its cited evidence demonstrate, these features were well
`
`known in the art, as are the challenged claims as a whole. Polish, ¶¶ 23-32.
`
`Prosecution History
`B.
`The patent was filed on December 22, 1999, as Application No. 09/469,707.
`
`’186 patent, cover.
`
`In response to two office actions citing prior art different than presented in
`
`this Petition, the applicant distinguished its claims based solely on a hands-free
`
`switching feature:
`
`[I]n accordance with an important aspect of the invention, the push to talk
`switch is eliminated, . . . , 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.
`Ex. 1010, 192; see also Id., 161-64, 190-93.
`
`Level of Ordinary Skill in the Art
`C.
`Factors defining the level of ordinary skill in the art include: (1) the types of
`
`problems encountered in the art; (2) the prior art solutions to those problems; (3) the
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`rapidity with which innovations are made; (4) the sophistication of technology; and
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`U.S. Patent No. 6,397,186
`(5) the educational level of active workers in the field. In re GPAC Inc., 57 F.3d
`
`1573, 1579 (Fed. Cir. 1995).
`
`Using these factors, a person of ordinary skill in the art at the time of the
`
`alleged invention of the ’186 patent (“POSITA”) would have held at least a
`
`bachelor’s degree in electrical engineering or an equivalent field, and approximately
`
`two years of industrial or academic experiences working with voice-operated
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`systems for remotely controlling appliances. Polish ¶¶ 39-41 (citing ’186 patent,
`
`1:5-9). This person would have been familiar with technologies for remotely
`
`controlling electronic equipment, including voice-operated systems for remotely
`
`controlling appliances. Id.
`
`Claim Construction
`D.
`In this proceeding, the claim terms should be given their plain and ordinary
`
`meaning as understood by one of ordinary skill in the art, consistent with the
`
`disclosure and the prosecution history. 83 Fed. Reg. 51, 340-59 (Oct. 11, 2018).
`
`The Board Should Institute Review
`E.
`The Board should institute review and, pursuant to the motion for joinder filed
`
`with this petition, join the resulting proceeding to previously instituted IPR2019-
`
`00342 filed by Google. As stated in Samsung’s motion for joinder, there are no
`
`substantive differences between Google’s and Samsung’s Petitions, and the evidence
`
`relied on is substantially the same.
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`IPR2019-01147
`U.S. Patent No. 6,397,186
`In addition to there being no substantive differences between this Petition and
`
`Google’s, Samsung notes that no reference in this Petition was relied on by the
`
`Office during prosecution of the ’186 patent. Salazar and Bossemeyer were not
`
`cited, and Miyazawa was only cited in an IDS among numerous other references.
`
`Ex. 1010, 172-77. Miyazawa was never analyzed during prosecution of the ’186
`
`patent, id., 153-59, 172-85, and its identification in an IDS is not a sufficient reason
`
`to deny institution. E.g., Intex Recreation Corp. v. Team Worldwide Corp., Case
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`IPR2018-00871, Paper 14 at 13 (PTAB Sept. 14, 2018).
`
`This Petition also presents different grounds of unpatentability than those
`
`considered by the Office prior to institution of trial in Google’s petition. The present
`
`petition, identifies new references (e.g., Salazar), different combinations of prior art
`
`elements, and different rationales for why a POSITA would have considered the
`
`combinations to have been obvious. Samsung does not suggest modifying a trigger-
`
`activated system to remove its trigger for voice input, as was suggested during
`
`prosecution. See Ex. 1010, 156-59, 181-85. Samsung instead submits that it would
`
`have been obvious to combine Salazar’s voice-controlled appliance remote system
`
`with the voice-activated processor of Miyazawa. See Praxair Distribution, Inc. v.
`
`Ino Therapeutics, LLC, IPR2015-00893, paper 14 at 8-9 (PTAB Sept. 22, 2015).
`
`Finally, while the Office relied on Miyazawa to reject claims presented in a
`
`child application claiming priority to the ’186 patent, Ex. 1011, 56-79, the
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`IPR2019-01147
`U.S. Patent No. 6,397,186
`circumstances demonstrate Miyazawa was not considered with regard to the ’186
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`patent. After the ’186 patent issued, a different examiner rejected continuation
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`claims in view of a prior art combination including Miyazawa. See Ex. 1011, 56¬80;
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`compare id. at 56 (examiner Harper) with Ex. 1010 at 207 (examiner Dorvil). Instead
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`of distinguishing Miyazawa, the applicant canceled its broadest claims and
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`converted into independent form narrower dependent claims having limitations not
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`considered in the ’186 patent. Ex. 1011, 33-39. Specifically, the applicant narrowed
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`the claims to require a “MUTE mode,” id., 36-37 (original claim 17), “recognition
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`error muting mode” and “volume control mode,” id. (original claim 23). The
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`applicant also avoided a double patenting rejection of claims reciting substantially
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`the same limitations as originally-presented in the ’186 patent (original claims 1-8)
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`by canceling those claims. See id. 33-39, 189-90. Thus, the Office did not consider
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`Miyazawa while the application for the ’186 patent was pending and similarly
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`claimed subject matter was canceled in the child when it was considered. That a
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`different examiner relied on Miyazawa in the continuation application suggests that
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`the original examiner misapprehended or overlooked Miyazawa, and that the
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`applicant canceled similar claims when faced with Miyazawa indicates its relevance
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`to patentability. These circumstances weigh in favor of institution.
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`8
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`IPR2019-01147
`U.S. Patent No. 6,397,186
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`General Plastic Factors are Inapplicable
`F.
`The Board has held that the factors outlined in General Plastic Industrial Co.,
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`Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017),
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`regarding whether to institute subsequent petitions challenging the same patent are
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`inapplicable to the situation here. For example, in Apple Inc. v. Uniloc 2017 LLC,
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`IPR2018-00580, at 9-10 (PTAB Aug. 21, 2018) (Paper 13), the Board held that when
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`a copycat petition is accompanied by a timely motion for joinder in which the
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`petitioner has agreed to both a passive understudy role and the existing schedule, the
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`General Plastic factors are “effectively neutraliz[ed].”
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`IV. GROUNDS 1A/1B: SALAZAR IN VIEW OF MIYAZAWA, AND
`SALAZAR AND MIYAZAWA IN VIEW OF BOSSEMEYER RENDER
`OBVIOUS CLAIMS 21, 23-26, 28-36, 39-41, 43-52, AND 55
`A.
`Salazar Overview
`Salazar discloses a universal remote (including handset and base station) that
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`receives voice inputs to control appliances. Salazar, Abstract, 1:8-14, 2:11-26, Fig.
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`1b; Polish, ¶¶ 43-46. The handset and base station each have a microprocessor, a
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`wireless transceiver for sending RF or infrared signals to appliances, a microphone,
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`and circuits for recognizing speech in an input signal and generating corresponding
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`command and control signals to control appliances. Salazar, 3:2-4, 15-40, 6:31-51,
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`22:35-37, Figs. 1b, 2-5. Salazar’s speech recognition occurs in a “voice activated
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`mode” that “may be selected with voice command input via [the] microphone,” i.e.,
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`without the need for a physical switch. Id., 21:44-55.
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`IPR2019-01147
`U.S. Patent No. 6,397,186
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`Salazar’s handset and base station can be used alone or together and include
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`identical functionality. Id., 2:66-3:4. Figure 5 (below), shows Salazar’s base station
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`with a microphone that sends voice signals to a voice activated device IC. Id.,
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`24:36-45. The voice activated device IC performs speech recognition and transmits
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`recognized signals to the microprocessor. Id. The microprocessor generates
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`command and control signals and transmits commands to the appliances via IR/RF
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`transceiver circuitry. Id. Figure 3 shows identical functionality for the handset.
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`Id., 21:43-55.
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`U.S. Patent No. 6,397,186
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`Polish, ¶ 45.
`To conserve power, Salazar discloses a “stop mode” and a “battery save
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`circuit 208” that activates and deactivates its microprocessor for periods of time to
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`reduce battery drain. Salazar, 18:30-41, 19:1-51; Polish, ¶ 46. The stop mode may
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`be exited using hardware interrupts. Salazar, 18:30-36.
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`B. Miyazawa Overview
`Miyazawa discloses a voice-activated speech recognition system for
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`interacting with devices, includ