Unified Patents Petition Against Patent Owned by SpeakWare and Ambush Interactive
Unified Patents Petition Against Patent Owned by SpeakWare and Ambush Interactive
Unified Patents Petition Against Patent Owned by SpeakWare and Ambush Interactive
____________
____________
Petitioner,
v.
and
SPEAKWARE, INC.
Patent Owners.
____________
Case IPR2019-00495
____________
TABLE OF CONTENTS
B. Related Matters......................................................................................1
2. Grounds .......................................................................................7
A. Summary ...............................................................................................7
A. Ground 1: Claims 1-4, 7, 9-10, 12, 14, 16, 19, 21, 23-26, 28-31, 39,
41, 43 are rendered obvious by Bissonnette in view of Miyazawa
under 35 U.S.C. § 103(a).....................................................................12
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1. Overview ...................................................................................12
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LIST OF EXHIBITS
1005 USPTO Assignment Abstract of Title for U.S. Patent No. 6,397,186
1015 R.L. Morris & J.R. Miller (ed), Designing with TTL Integrated
Circuits, McGraw-Hill (1971), pp. 131, 175
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1023 E.L. Campbell, VOX in a box, QST, American Radio Relay League
(March 1964) pp. 11-13
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A. Real Party-In-Interest
certifies that it is the real party-in-interest, and further certifies that no other party
exercised control or could have exercised control over Unified’s participation in this
proceeding, the filing of this petition, or the conduct of any ensuing trial. In view of
Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242-44 (Fed. Cir. 2018), Unified has
B. Related Matters
U.S. Patent 6,397,186 (“the ’186 patent) is the subject of pending litigation
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SpeakWare, Inc. v.
8-18-cv-01303 (CACD) 7/26/2018
Amazon.com, Inc.
However, an entity named “SpeakWare, Inc.” has stated that it is the owner of the
’186 patent in the complaints filed in each of the above-identified district court cases.
(Ex. 1010, 2 (“SpeakWare is the owner of U.S. Patent 6,397,186, entitled “Hands-
2002.”); Ex. 1011, 2 (same); Ex. 1012, 2 (same); Ex. 1013, 2 (same); Ex. 1014, 2
(same).) Due to the discrepancy over the ownership of the ’186 patent, Petitioner has
identified both Ambush Interactive, Inc. and SpeakWare, Inc. as the owners of the
patent.
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37 C.F.R. § 42.15(a) for this Petition for inter partes review to Deposit Account No.
50-6990. Any additional fees that might be due are also authorized.
6,397,186 (“’186 patent,” Ex. 1001) is available for inter partes review and that
Petitioner is not barred or estopped from requesting inter partes review challenging
B. Identification of Challenge
review of claims 1-4, 7, 9-10, 12, 14, 16-21, 23-26, 28-31, 39, 41, and 43 of the ’186
patent, and that the Board cancel the same as unpatentable. The ’186 patent issued
1. Prior Art
2/3/1994 and is prior art to the ’186 patent under 35 U.S.C. § 102(b).
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U.S. Patent Application 09/458,175 (filed 12/9/1999), and is prior art to the ’186
• Ex. 1009 – U.S. Patent 5,774,841 (“Salazar”) issued on 6/30/1998 and is prior
prosecution of the ’186 patent, and they are not cumulative of any prior art
prosecution of the ’186 patent.1 As a result, the prior art asserted in the challenges
1
Grounds based on a reference cited in an IDS but not considered at any length (e.g.,
Miyazawa) should not serve as the basis for the Board to deny institution under 35
U.S.C. § 325(d). See, e.g., Digital Check Corp. d/b/a ST Imaging v. E-Imagedata
Corp., IPR2017-00178, Paper 6 at 12-13 (PTAB April 25, 2017); Fox Factory, Inc.
v. SRAM, LLC, IPR2016-01876, Paper 8 at 7-9 (PTAB April 3, 2017); and Praxair
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below do not constitute the same or substantially the same prior art or arguments
Moreover, the Board should not exercise its discretion under 35 U.S.C. §
21-50). Notably, Unified did not previously challenge the ’186 patent, Unified’s
petition was filed before Patent Owner(s) or the Board substantively addressed
relying on Salazar are directed to only dependent claims 17 and 18. Unified’s
discretionary factors 1—7 as set forth in General Plastic weigh in favor of denying
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institution. General Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-
2. Grounds
below an explanation of how the Challenged Claims of the ’186 patent are
where each claim element is found in the prior art, to demonstrate that Petitioner has
A. Summary
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Fig. 1 of the ’186 patent, annotated below, shows an example of the electronic
circuit 40, and a speech recognition circuit 50), and an appliance control system
(a “sound activation mode”) and an awake state (a “speech recognition mode”) to,
inter alia, minimize power consumption. (Id., 4:27-32, 7:45-8:16). When system 10
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activation circuit 40 to determine whether the amplitude of the voice signal exceeds
a threshold. (Id., 7:45-8:16.) When the amplitude exceeds the threshold, system 10
enters an awake state and the voice signal is routed to and recognized by the speech
The ’186 patent purports to enable a simple procedure for efficient operation
(Id., 4:27-32, 7:45-8:16.) But such techniques were well-known prior to the filing of
B. Prosecution History
During prosecution of the ’186 patent, the examiner identified prior art
systems that switched from low-power sleep modes to active modes by manual
applicant: amended the claims to include converting audio signals into electrical
representative signals and argued that the applied prior art were deficient with
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amended the claims to include having the processor enter a low power state when in
the sound activation mode (id. at 71-88); and argued that the prior art taught away
from being combined due to allegedly conflicting discussions about the desirability
But the features that purportedly distinguished the claims of the ’186 patent
from the prior art of record were indeed well-known in the art before the earliest
possible priority date of the ’186 patent, as demonstrated by the prior art presented
herein.
The prior art discussed herein, and in the declaration of Bruce McNair (Ex.
1003) demonstrates that a person of ordinary skill in the art (“POSITA”), at the time
the ’186 patent was filed, would have been a person having a bachelor’s degree in
2
Providing an automatic means to replace a manual activity for achieving a same
result is not sufficient to distinguish over the prior art. In re Venner, 262 F.2d 91,
95 (CCPA 1958).
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and one year of work experience with devices or systems for remotely controlling
of education, such as a Master’s Degree, and vice versa. (Ex. 1003, ¶¶ 23-24.)
At this time, Petitioner does not believe that any terms of the Challenged
techniques were known in the communications device art prior to the earliest
possible priority date of the ’186 patent. As demonstrated below, the prior art
describes the scope and content of the prior art at the time of the alleged invention
of the ’186 patent. (Ex. 1003, ¶¶ 10-11, 25-35, 41, 56, 64.)
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A. Ground 1: Claims 1-4, 7, 9-10, 12, 14, 16, 19, 21, 23-26, 28-31, 39,
41, 43 are rendered obvious by Bissonnette in view of Miyazawa
under 35 U.S.C. § 103(a)
1. Overview
device that receives voice commands and performs voice recognition to determine
using customizable voice commands that are associated with control signals such as
IR codes. (Id., 2:34-3:20.) Like the ’186 patent, Bissonnette discloses that the device
is “normally in idle mode 200” (id., 33:27-29) to minimize power consumption (id.,
For example, Bissonnette discloses that a user may press a voice key on the
device so that the device exits the idle mode and enters a state for processing voice
commands so that “the user can voice control: (1) all of the VCR playback functions;
(2) channel numbers; and (3) programming of recording events.” (Id., 33:20-26, Fig.
3.)
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Fig. 3 of Bissonnette
recognition matching to
Channel functions are shown in steps 301-304 and 310-313, respectively. The device
it) switches the device from an idle low-power state to an active state of voice
recognition (e.g., to “listen” to the spoken voice command) and initiates voice
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Bissonnette discloses switching between idle and active modes without additional
steps after pressing the voice key. (Id., 37:5-39:29, 38:25-37.) (Ex. 1003 ¶¶ 42-46.)
mode by pressing a voice key, Bissonnette does not explicitly disclose switching
Miyazawa does.
and Method” and discloses a device that automatically switches its speech-
processing CPU between sleep and active states based, e.g., on a volume of a voice
switches were manually turned on. Miyazawa sought to improve on those manual
battery drain. (Id., 2:30-42, 2:46-50.) When idle, Miyazawa’s device “determines
above the background noise [and, if] so, a determination is then made whether or not
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threshold filtered input sound signal corresponds to a recognizable phrase, and, if so,
shifts the device from the sleep mode into the active mode.” (Id., 3:13-28, 4:10-22.)
And, with regard to the alleged point of distinction that was argued during
prosecution (see Section IV(B) above), Miyazawa discloses that the system
waiting for speech input at all times, and perform[s] recognition operations by
sensing speech input, without the need for the user to turn on the switch every time”).
(Id., 2:13-18.)
Miyazawa discloses that the device includes a sleep mode, in which only
certain portions of the device remain active and consume small amounts of power,
and the device becomes fully activated only when it detects recognizable speech
input above background noise levels. (Id., 4:14-5:7.) As shown in Fig. 1, annotated
below, Miyazawa teaches using an input sound signal power detector 9 to first detect
such as CPU 10, which is kept in a power-saving state during the sleep mode. (Id.,
11:50-67.)
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Fig. 4 of Miyazawa, annotated below, shows one possible flow of steps for
the switching operations of a voice controlled device. At step s1, the device’s CPU
is sleeping (see step s7, for example) and the device compares the level of a received
voice command (e.g., an amplitude) exceeds a threshold level, the CPU wakes and
exits the sleep mode, step s2. (Id., 10:14-18, 3:13-17.) Upon exiting the sleep mode,
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the CPU detects and decodes the voice command to determine whether it is a
keyword (e.g., designated word or phrase such as “good morning” and “time”), at
steps s3 through s6. (Id., 10:17-45, 8:64-9:4.) If it is determined, at s6, that the voice
command is not a keyword, then the CPU re-enters sleep mode in order to conserve
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functionality, which uses a manually operated voice key, with the automatic
based on an input sound signal power detector that detects the amplitude of a voiced
longer needed. Miyazawa specifically discloses that while some speech recognition
switch (like in Bissonnette), it would have been more convenient to have a device
in a standby state waiting for speech input at all times, so the user did not need to
turn on the switch every time. (Ex. 1008, 2:8-18.) Because both Bissonnette and
Miyazawa were concerned with maximizing battery life by using idle and sleep
modes to reduce power drain from the voice recognition components, a POSITA
would have been motivated to look to analogous systems like Miyazawa to automate
11:28-31; Ex. 1008, 2:45-53, 11:33-42.) This would have been, at least, the simple
a sound signal power detector, timing criteria, and/or detected keywords) for another
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teachings added checks of the speech inputs’ amplitude levels against some
threshold level and of speech inputs against time periods. Such checks were simply
the values of signals was a well-known function that was within a POSITA’s ability
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3. Claim Charts 3
3
As discussed in Section VII.A.2, a POSITA would have been motivated to modify
Bissonnette with the teachings of Miyazawa to provide the voice input controls
in a more automatic and convenient way, including using a voice activated system.
(Ex. 1003 ¶¶ 53-54.). The claim charts are based on this obvious modification.
Bold and italicized text in the claim charts represent text from the Challenged
Claims.
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the analog section is 300 to 4800 Hz. A third and final stage
of Analog Voice Input 2 provides for analog gain control
(AGC) of the voice input signal.” (Id., 10:30-11:22.)
• “[V]oice commands are received, filtered and conditioned
by Analog Voice Input 2.” (Id., 32:15-17.)
• “[A]n analog input circuit for receiving the voice command
and generating an analog voice signal based on the voice
command” (Id., 48:7-9 (claim 1).)
1[B] Bissonnette discloses or at least renders obvious a speech
a speech recognition system that includes a processor (e.g.,
recognition microcontroller 20 that includes microprocessor 21 and voice
system for recognition software stored in ROM 22 of Fig. 1) for receiving
receiving said the electrical signals (output from the Analog Voice Input 2, as
electrical discussed in claim 1[A]).
signals, said • “The input ports of Microcontroller 20 thus include: a voice
speech data port for receiving the analog voice signal from Analog
recognition Voice Input 2….” (Ex. 1006, 14:25-27)
system • “The output of Analog Voice Input 2 feeds into an 8-bit
including a ADC 24 within Microcontroller 20 which samples the data
processor and at 9.6 Khz…. Microcontroller 20 then processes the digital
having a low voice signal by means of microprocessor 21 and a voice
power sound recognition software routine that is part of a control program
activation stored in ROM 22. The digital voice signal is converted into
mode for a voice template that is compared against previously stored
detecting the voice templates of the user's voice. The program then
presence of decodes the voice templates as explained further below.”
said electrical (Id., 11:36-12:10)
signals and a
speech • See annotated Fig. 1, showing microcontroller 20 and
recognition microprocessor 21:
mode for
converting said
electrical
signals to
electrical
representative
signals,
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control signals three (3) infra-red light emitting diodes (LEDs) driven by
to said one or two transistors which in turn are driven from an output port
more of the Microcontroller 20.” (Id., 8:34-9:2)
appliances. • “When the user enters (…via a voice command) a particular
component command corresponding to one of the
component functions (such as volume for example),
processor 21, automatically selects both the appropriate
component and the remote control code corresponding to the
component function based on the component command
entered and the configuration data stored in reference RAM
23. This remote control code is then transmitted by IR
output 12 to the component to perform the function
corresponding to the component command.” (Id., 25:19-30)
• See also 29:16-27 (transmitting IR remote control codes
based on a sequence of codes automatically generated by
processor 21); 34:20-35:4 (outputting IR remote control
codes to control multiple appliances as necessary), 37:32-
39:26 (outputting IR remote control codes to multiple
components).
Claim 2 Bissonnette and Miyazawa
The audio Bissonnette discloses or at least renders obvious the
signal activated transmitter (IR Output 12) configured to wirelessly (e.g., via
control system IR or RF signaling) transmit the appliance control signals
as recited (e.g., IR remote control codes) to the one or more appliances
in claim 1, (components, e.g., TV, VCR, cable box).
wherein said • “While one embodiment of IR output 12 has been shown, a
transmitter is number of equivalent circuits which output IR remote
configured to control codes could be used in place of the circuit shown.
wirelessly Moreover, as with the remote control capture circuit
transmit said described above, the remote control output circuit (IR output
one or more 12) of the present invention could also easily be
appliance implemented by a skilled artisan to accommodate RF rather
control signals than IR signals.” (Ex. 1006, 9:34-10:4)
to said one or
more • See also id., 7:4-12; 8:34-9:2; 25:19-30; 29:16-27; 34:20-
appliances. 35:4; and 37:32-39:26 (all describing wireless IR output of
the IR remote control codes).
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Claims 17 of the ’186 patent recites a programming mode that enables a user
to define a control signal associated with an audible command for use in the speech
below).
and that voice commands can be used to control a plurality of appliances in sequence.
(See, e.g., id., 37:32-38:12 (“PLAY” command outputs control signals to a TV and
VCR).) Miyazawa discloses that recognition target phrases are created and
that enables a user to define the control signals associated with the audible
commands.
Command and Control Apparatus and Method,” and discloses a mobile device that
(Ex. 1009, Abstract.) Salazar discloses a macro programming mode that enables
users to create and modify commands. (Ex. 1009, 12:1-2, 18:4-11.) For example, a
macro command word can be used to generate and output a list of commands to a
enable a user to define control signals associated with audible commands, wherein
the speech recognition system generates defined control signals for controlling one
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and Miyazawa disclose that commands and control signal data were stored in the
system, they do not explain that the user was enabled to define and associate controls
have provided the benefit of user customizability, allowing the user to create macro
allowing the user to create predefined scenes based on a single spoken word (e.g.,
and VCR for the activity of playing a tape). (Ex. 1003 ¶ 62.)
Such modification would have been implemented via user prompts (to gather desired
input data from the user) and modifications to memory (to store the commands and
control signals). Such basic user interfaces and data access techniques would have
been well-known and within a POSITA’s ability to apply in the electronic devices
of Bissonnette and Miyazawa, which already had various modes and programming
functions. (See, e.g., Ex. 1006, Figs. 2-4.) (Ex. 1003 ¶ 63.)
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Claims 19 and 20 of the ’186 patent recite limitations that require, inter alia,
types (e.g., TVs, VCRs, and cable boxes; Ex. 1006, 3:32-4:15). Bissonnette
discloses entering various voice control modes for the different appliances (i.e.,
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Bissonnette does not explicitly disclose that the audio activated control
corresponding to functions associated with the defined appliance type (claim 20).
selection command step 120 and further command steps 152 and 154. (Id., 7:49-56.)
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by McCall, the user is assured that commands intended for one appliance are not
confused with commands for any other appliance. (Ex. 1007, 7:57-8:5.) Thus, for
example, where Bissonnette discloses a TV, VCR, and cable box (which may have
common commands; see Ex. 1006, 4:20-22), McCall would have added the benefit
commands. See Section VII.A. The added function of having one voice command
lead to another (i.e., identifying the appliance and then commanding the appliance)
in the art. It would have been well within the skill of a POSITA to simply access
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VIII. CONCLUSION
Respectfully submitted,
ROPES & GRAY LLP
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CERTIFICATE OF COMPLIANCE
Pursuant to 37 C.F.R. § 42.24(a) and (d), the undersigned hereby certify that
the Petition For Inter Partes Review complies with the type-volume limitation of
13,883 words as counted by the word processing program used to prepare the
paper.
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CERTIFICATE OF SERVICE
42.105(b) on the Patent Owners by Express Mail of a copy of this Petition for Inter
Partes Review and supporting materials at the correspondence address of record for
Sean A. Luner
Dovel & Luner, LLP
201 Santa Monica Blvd., Suite 600
Santa Monica, California 90401
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