MModal LLC Duane Morris LLP v. Nuance Communications

1. Case Identification

• Case #: IPR2018-01435
• Patent #: 6,999,933
• Filed: July 20, 2018
• Petitioner(s): MModal LLC.
• Patent Owner(s): Nuance Communications, Inc.
• Challenged Claims: 9-11

2. Patent Overview

• Title: Editing During Synchronous Playback
• Brief Description: The ’933 patent discloses a method for correcting errors in text generated by a speech recognition device. The method allows a user to edit the text while the corresponding audio is being played back, a feature referred to as "synchronous playback mode," without needing to stop or deactivate the audio playback.

3. Grounds for Unpatentability

Ground 1: Claims 9-11 are obvious over Schulz, alone or in view of Sumner and Applicant’s Admitted Prior Art (AAPA).

• Prior Art Relied Upon: Schulz (Patent 6,360,237), Sumner (Application # 2002/0095291), and Applicant’s Admitted Prior Art (including patents to Bijl and Hollerbauer).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Schulz alone teaches all limitations of the challenged claims. Schulz describes a system for editing transcribed text during continuous audio playback to solve the same problem as the ’933 patent: the inefficiency of stopping playback to make corrections. Schulz discloses a "playback edit function mode" where activating an edit key automatically positions a text-editing cursor at a target insertion point relative to the spoken word being highlighted. Petitioner contended that Schulz's cursor 61 (text insertion point) and cursor 60 (highlighting the currently spoken word) correspond directly to the text cursor and audio cursor of claim 9. This system allows editing to occur while synchronous playback remains active, meeting the primary limitation of claim 9. Dependent claim 10, which requires synchronizing the text and audio cursors, was allegedly taught by Schulz's disclosure of aligning the edit cursor with the audio cursor when an edit key is pressed. Dependent claim 11, requiring manual key actuation to synchronize, was met by Schulz’s description of pressing an "edit function key."
  • Motivation to Combine (for §103 grounds): Petitioner asserted that to the extent Schulz is viewed as not explicitly teaching the simultaneous display of both its text and audio cursors, a person of ordinary skill in the art (POSITA) would combine Schulz with Sumner. Sumner teaches a speech recognition system with two distinct cursors (a correction cursor and a dictation insertion cursor) and discloses making one cursor invisible to avoid distracting the user. A POSITA would combine Sumner's teachings on managing multiple cursors with Schulz's system to enhance usability, a predictable improvement that provides the user with clear feedback on both the audio position and the text edit location. The combination with AAPA (systems like Bijl and Hollerbauer, which the ’933 patent admits are prior art) was motivated because these systems established the well-known utility of using an audio cursor during synchronous playback to facilitate effective correction.
  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success in combining these references. The proposed combinations involve integrating known user interface features (multiple cursors, visibility options) from the same technical field to improve the functionality of a speech recognition editing system in a predictable manner.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise discretionary denial under 35 U.S.C. §325(d), despite the examiner having cited Schulz and Sumner during prosecution.
• The argument centered on the fact that the ’933 patent issued from a first-action allowance, meaning there was no substantive examination record, no rejections, and no applicant arguments distinguishing the prior art. Petitioner contended the prosecution was not "exhaustive."
• Petitioner asserted that the examiner's conclusory "Reasons for Allowance," which stated that the prior art lacked the simultaneous display of text and audio cursors, demonstrated a clear misunderstanding or overlooking of Schulz's teachings, particularly as depicted in its Figure 5a.
• The petition presented new arguments, combinations, and expert testimony that were never before the examiner, warranting a full consideration on the merits.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 9-11 of the ’933 patent as unpatentable.