Nuance Communications, Inc. v. MModal Services Ltd.

1. Case Identification

• Patent #: 8,412,524
• Filed: December 21, 2018
• Petitioner(s): Nuance Communications, Inc.
• Patent Owner(s): MModal Services Ltd.
• Challenged Claims: 1, 5, and 9

2. Patent Overview

• Title: Method for Replacing Phrases in a Document
• Brief Description: The ’524 patent relates to a computer-implemented method for editing documents, particularly transcripts generated from speech recognition. The system identifies a first written form of a concept (e.g., an abbreviation), retrieves a plurality of alternative written forms for that concept, displays them to a user, and replaces the first form with a user-selected alternative.

3. Grounds for Unpatentability

Ground 1: Claims 1, 5, and 9 are obvious over Longé

• Prior Art Relied Upon: Longé (Patent 7,881,936).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Longé, which was not considered during prosecution, renders the challenged claims obvious. Longé discloses a “method for smart editing of speech recognition output” that provides alternative input modalities to ensure efficient and accurate text input. Petitioner contended that this system meets all limitations of the challenged claims.
    • Independent claim 1 recites a method of accessing a document, identifying a "first phrase," identifying a "plurality of phrases" representing alternative forms of the underlying concept, displaying them, and receiving an instruction to replace the first phrase. Petitioner asserted that Longé’s system performs these steps by allowing a user to select an incorrect word or phrase in a text document, which triggers the system to generate and display an "N-best list" of hypotheses (the plurality of alternative phrases) from which the user can select a replacement. The selection itself, rather than typing the replacement, constitutes the claimed instruction.
    • Dependent claim 5 adds the limitation of identifying phrases to display based on the "context of the first phrase." Petitioner argued Longé expressly discloses this, stating its invention uses "word context in offering the N-best hypotheses."
    • Dependent claim 9 requires the user instruction to be a "single keystroke." While Longé teaches selecting from a list, Petitioner contended it would have been obvious to a POSITA to implement this selection via a single keystroke. This was argued to be a well-known and routine design choice for improving user efficiency, supported by general knowledge in the art regarding keyboard accelerators.
  • Motivation to Combine (for §103 grounds): As this ground relies on a single reference, the argument centered on obvious modifications. A POSITA would be motivated to implement list selection using a single keystroke, as taught by general knowledge, to increase the speed and efficiency of Longé’s text editing system, a common goal in human-computer interaction design.
  • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success in modifying Longé to use a single-keystroke selection, as it was a conventional and predictable software design technique.

Ground 2: Claim 9 is obvious over Longé in view of Roberts

• Prior Art Relied Upon: Longé (Patent 7,881,936) and Roberts (Patent 5,027,406).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground asserts that even if Longé alone does not render claim 9 obvious, the combination with Roberts does. Longé provides the base system of selecting an alternative phrase from a list to correct text. Roberts, also not before the examiner, explicitly remedies any deficiency in Longé regarding the "single keystroke" limitation. Roberts discloses a natural language dictation system where, to improve speed, a user can select a word from a list of alternatives using "pick-choice" commands that correspond to single function keys (e.g., 'f1' through 'f9').
  • Motivation to Combine (for §103 grounds): A POSITA would combine Longé with Roberts to improve the speed and efficiency of the editing process. Both references address the same problem of correcting transcribed text. Faced with Longé’s system, a POSITA would look to known methods to streamline the selection process and would have found Roberts’s single-keystroke "pick-choice" system to be a directly applicable solution.
  • Expectation of Success (for §103 grounds): The combination would have yielded predictable results. Both references describe software-based text editing and selection systems, and integrating Roberts's well-understood keyboard command selection method into Longé's list-based correction interface would have been a straightforward implementation with no technical barriers.

Ground 3: Claims 1 and 9 are obvious over Lunati

• Prior Art Relied Upon: Lunati (Patent 8,321,786).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Lunati, which discloses error-checking techniques for electronic text, teaches a method analogous to that claimed.
    • For independent claim 1, Lunati describes a user entering text into an editor on a client station. The user can request an error check, which sends the text to a server. The server routine checks for errors (the "first phrase," e.g., a misspelling like "colection") against a reference file or dictionary. It then creates and sends back a list of "correction options" (the "plurality of phrases," e.g., "collection") for display. The user then "chooses his correction option from those displayed," which constitutes the instruction to replace the phrase.
    • For dependent claim 9, Petitioner repeated its argument that implementing the selection mechanism via a single keystroke was a well-known, obvious design choice for a POSITA seeking to improve efficiency.
  • Motivation to Combine (for §103 grounds): The argument for claim 9 is based on an obvious modification. A POSITA implementing Lunati’s system, which allows for keyboard-based selection, would be motivated to use a single keystroke for that selection to make the interface faster and easier to use, a common objective in the field.
  • Expectation of Success (for §103 grounds): A POSITA would have expected success in applying a single-keystroke selection mechanism to Lunati's system, as it was a routine and predictable enhancement for user interfaces at the time.

• Additional Grounds: Petitioner asserted that claims 5 and 9 are obvious over Lunati in view of Roberts. This combination argued that a POSITA would modify Lunati's error-correction system by incorporating Roberts's teachings on using linguistic context to select alternative phrases (for claim 5) and using single-keystroke "pick-choice" commands for selection (for claim 9) to improve the overall accuracy and efficiency of the system.

4. Relief Requested

• Petitioner requests the institution of an inter partes review and the cancellation of claims 1, 5, and 9 of Patent 8,412,524 as unpatentable.