Google LLC v. SpeakWare Inc

1. Case Identification

• Case #: IPR2019-00342
• Patent #: 6,397,186
• Filed: November 30, 2018
• Petitioner(s): Google LLC
• Patent Owner(s): SpeakWare, Inc.
• Challenged Claims: 21-55

2. Patent Overview

• Title: Sound-Activated and Voice-Operated Remote Control
• Brief Description: The ’186 patent discloses a sound-activated, universal remote control system for appliances. The system’s purported improvement is providing "truly hands-free" control by using two primary operating modes: a low-power "sound activation mode" and a full "speech recognition mode." The system is designed to remain in the low-power mode until it detects a voice signal exceeding a predetermined amplitude threshold, at which point it automatically switches to the speech recognition mode to process commands.

3. Grounds for Unpatentability

Ground 1: Obviousness over Salazar, Miyazawa, and Bossemeyer

• Claims Challenged: Claims 21, 23-26, 28-36, 39-41, 43-52, and 55 are obvious over Salazar in view of Miyazawa, and further in view of Bossemeyer.
• Prior Art Relied Upon: Salazar (Patent 5,802,467), Miyazawa (Patent 5,983,186), and Bossemeyer (Patent 6,012,027).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Salazar taught a universal remote system with a handset and base station that use voice commands to control appliances via RF or infrared signals, including a microphone, speech recognition circuit, and microprocessor. Petitioner contended that Miyazawa taught a voice-activated system with two distinct modes: a low-power "sleep mode" and an active speech recognition mode. Miyazawa’s system, using an "input sound signal power detector," automatically switched its CPU from sleep to active mode when the amplitude of an incoming sound signal exceeded a predetermined threshold, eliminating the need for a physical switch. Petitioner asserted this combination taught the core limitations of independent claim 21. Bossemeyer was presented as further teaching the specific technique of monitoring microphone signals to detect the start of an utterance when its amplitude crosses a threshold, reinforcing the obviousness of the claimed sound activation circuit.
  • Motivation to Combine: A POSITA would combine Miyazawa's well-known, power-saving, voice-triggered switching with Salazar's functionally complete but less power-efficient universal remote system. The motivation was to achieve the predictable result of improved battery life, an express goal of both references. Incorporating Bossemeyer's utterance detection method was described as a straightforward application of a known technique to improve the reliability of the voice-triggering mechanism.
  • Expectation of Success: A POSITA would have a high expectation of success because the combination involved integrating known, compatible modules—a power-saving front-end (Miyazawa) with a command-and-control back-end (Salazar)—to achieve a predictable improvement in power conservation.

Ground 2: Obviousness over Salazar, Miyazawa, and Oppendahl

• Claims Challenged: Claims 22 and 42 are obvious over Salazar and Miyazawa, optionally in view of Bossemeyer, and further in view of Oppendahl.

• Prior Art Relied Upon: Salazar (Patent 5,802,467), Miyazawa (Patent 5,983,186), Bossemeyer (Patent 6,012,027), and Oppendahl (Patent 5,008,954).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground built upon the combination in Ground 1 to address the limitations of dependent claims 22 and 42, which require the activation threshold to be "user-adjustable." Petitioner argued that Oppendahl, which disclosed a voice-operated switch (VOX) transceiver, explicitly taught this feature with its "VOX sensitivity control 22." This control allowed a user to manually adjust the voice activation threshold to optimize performance.
  • Motivation to Combine: A POSITA would be motivated to add Oppendahl's user-adjustable threshold to the base Salazar-Miyazawa system to solve the common and well-known problem of false triggers from background noise or missed triggers from quiet speech. Providing user adjustability was a known solution to this problem, yielding the predictable benefit of improved system reliability across different operating environments.
  • Expectation of Success: Incorporating a user-adjustable control was argued to be a simple design choice for a POSITA, as it was a standard feature in existing VOX systems used to predictably enhance performance and would have been straightforward to implement.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including adding Reichel (Patent 5,459,792) to the base combination for claim 27, arguing Reichel taught a user-adjustable amplification level control, and adding Douma (Patent 5,583,965) to the base combination for claims 37, 38, 53, and 54, arguing Douma taught a trainable "programming mode" to enable a user to define control signals associated with specific audible commands.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should institute review and not exercise discretionary denial under 35 U.S.C. §325(d). It was contended that the primary references, Salazar and Bossemeyer, were never cited or considered during prosecution. While Miyazawa was cited in an Information Disclosure Statement, Petitioner argued it was never substantively analyzed or applied by the Examiner, which amounts to only cursory consideration and should not preclude institution. Furthermore, Petitioner asserted that it presented new combinations and rationales different from those considered during prosecution, which focused on modifying a trigger-activated system rather than combining a complete voice-control system with a voice-activated processor.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 21-55 of the ’186 patent as unpatentable under 35 U.S.C. §103.