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 universal remote control system for appliances that operates in a "hands-free" manner. The system uses a low-power sound activation mode to continuously listen for sound and, upon detecting sound exceeding a threshold, switches to a full-power speech recognition mode to process voice commands.

3. Grounds for Unpatentability

Ground 1: Obviousness over Salazar, Miyazawa, and Bossemeyer - Claims 21, 23-26, 28-36, 39-41, 43-52, and 55 are obvious over Salazar in view of Miyazawa, with further support from 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 control system with voice activation and a low-power "stop mode" to conserve energy but required a hardware interrupt or specific voice command to exit this mode. Miyazawa taught a voice-activated system that automatically switched from a low-power "sleep mode" to an active speech recognition mode based on whether the amplitude of an input sound signal exceeded a predetermined threshold. Bossemeyer was cited to further teach the common technique of detecting the start of a voice utterance by monitoring for when signal amplitude crosses a threshold. The combination of these references allegedly disclosed all limitations of independent claims 21 and 41, including the microphone, speech recognition circuit, dual modes of operation, and appliance control circuit.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Miyazawa’s efficient, amplitude-based mode switching with Salazar’s universal remote functionality. The motivation was to improve power efficiency and battery life—an express goal of both references—by creating a more "hands-free" system that did not require a specific action to wake from a low-power state.
  • Expectation of Success: A POSITA would have a high expectation of success as it involved combining known battery-saving techniques with known voice control systems to achieve the predictable result of a more power-efficient remote. The implementation was considered straightforward because both systems utilize common components like microphones, processors, and speech recognition hardware.

Ground 2: Obviousness over Salazar and Miyazawa in view of Oppendahl - Claims 22 and 42 are obvious over the combination of Salazar, Miyazawa, and Oppendahl (optionally with Bossemeyer).

• Prior Art Relied Upon: Salazar (Patent 5,802,467), Miyazawa (Patent 5,983,186), and Oppendahl (Patent 5,008,954).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination in Ground 1 to specifically address claims 22 and 42, which require the sound activation threshold to be "user-adjustable." Petitioner asserted that Oppendahl disclosed a voice-operated switch (VOX) with a "VOX sensitivity control" that allowed a user to manually adjust the voice detection threshold.
  • Motivation to Combine: A POSITA would be motivated to add Oppendahl’s user-adjustable threshold to the Salazar-Miyazawa system to enhance its functionality. This would predictably allow a user to fine-tune the system's sensitivity to prevent false activations in noisy environments or missed activations in quiet ones, complementing Miyazawa’s automated thresholding and improving overall performance and battery life.

Ground 3: Obviousness over Salazar and Miyazawa in view of Reichel - Claim 27 is obvious over the combination of Salazar, Miyazawa, and Reichel (optionally with Bossemeyer).

• Prior Art Relied Upon: Salazar (Patent 5,802,467), Miyazawa (Patent 5,983,186), and Reichel (Patent 5,459,792).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground targeted claim 27, which recites a "user-adjustable amplification level control" to vary the sensitivity of the sound activation circuit. Petitioner argued that Reichel disclosed a user-adjustable audio input circuit for a voice recognition host, which included an adjustable gain control (potentiometer) to manually control the amplification level of the microphone signal.
  • Motivation to Combine: A POSITA would recognize that adjusting the input signal's amplification (as taught by Reichel) is a well-known and obvious alternative or supplement to adjusting a trigger threshold for controlling a system's sensitivity. Incorporating Reichel’s adjustable gain would be a simple design choice to provide another method for fine-tuning the performance of the Salazar-Miyazawa voice-activated system.

Ground 4: Obviousness over Salazar and Miyazawa in view of Douma - Claims 37, 38, 53, and 54 are obvious over the combination of Salazar, Miyazawa, and Douma (optionally with Bossemeyer).

• Prior Art Relied Upon: Salazar (Patent 5,802,467), Miyazawa (Patent 5,983,186), and Douma (Patent 5,583,965).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed claims requiring a "programming mode" where a user can define a control signal to be associated with a specific audible command. Petitioner asserted that Douma disclosed a trainable voice recognition system with a "training mode" that allows a user to associate a user-defined voice input with a specific instruction for controlling an appliance.
  • Motivation to Combine: A POSITA would be motivated to incorporate Douma’s training mode into the Salazar-Miyazawa universal remote system. This combination would predictably yield a system with increased user control and customization, allowing users to program their own specific voice commands for various functions and appliances, substituting the physical programming inputs of Salazar with the voice-based training of Douma.

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). The petition asserted that the core prior art references, Salazar and Bossemeyer, were never cited or considered by the examiner during the original prosecution of the ’186 patent.
• While Miyazawa was listed in an Information Disclosure Statement (IDS), it was never analyzed on the merits or applied in a rejection. Petitioner contended that mere citation in an IDS amounts to only "cursory consideration" and should not preclude IPR. The petition also presented new combinations and rationales different from those considered during prosecution.

5. Relief Requested

• Petitioner requested institution of an inter partes review (IPR) and cancellation of claims 21-55 of Patent 6,397,186 as unpatentable under 35 U.S.C. §103.