PTAB

IPR2019-00499

Nuance Communications Inc v. MModal Services Ltd

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1. Case Identification

2. Patent Overview

  • Title: Speech Recognition System Conforming Documents to Best Practices
  • Brief Description: The ’829 patent relates to a method for applying automatic speech recognition (ASR) to an audio signal to produce a structured document. The system analyzes whether the document complies with a plurality of "best practices" and prompts the user for additional input to conform the document to those practices.

3. Grounds for Unpatentability

Ground 1: Obviousness over Carus - Claims 1, 4, 6, 12, 13, 21, 25, and 26 are obvious over Carus in view of the knowledge of a POSITA.

  • Prior Art Relied Upon: Carus (Application # 2005/0228815).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Carus disclosed a method for improving medical dictation by using templates to create structured reports. Carus’s system processed dictated speech to identify latent information, activated an associated template, and then prompted the physician for any additional, template-specific data required to comply with various reporting standards, such as JCAHO core measures or ICD-9-CM billing codes. Petitioner contended these required reporting standards constitute a "plurality of best practices." Carus's system determined if the report was compliant and prompted the user to supply missing data, thereby teaching the core limitations of independent claim 1. Dependent claims were argued to be obvious implementations, such as using form fields or labels, which a POSITA would find to be routine design choices.
    • Motivation to Combine (for §103 grounds): The motivation for this ground rested on applying the general knowledge of a person of ordinary skill in the art (POSITA) to the Carus system. Petitioner asserted that implementing Carus's prompts using standard user interface conventions, such as separate dialog boxes or removing a prompt after it is addressed, would have been simple and obvious design modifications to improve usability.
    • Expectation of Success: A POSITA would have a high expectation of success in applying conventional UI design principles to Carus's system, as these were well-known and predictable methods for user interaction.

Ground 2: Obviousness over Carus in view of Panzarasa - Claims 12, 13, 18, and 25 are obvious over Carus in view of Panzarasa.

  • Prior Art Relied Upon: Carus (Application # 2005/0228815) and Panzarasa (a 2010 technical article on integrating clinical practice guidelines with electronic patient records).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground focused on specific user interface features for prompting, as recited in claims 12, 13, 18, and 25. While Carus taught the general concept of prompting for missing information, Panzarasa disclosed specific UI implementations in a similar medical context. Panzarasa taught a "smart form" that presented treatment recommendations based on best practice guidelines. Crucially, Panzarasa illustrated rendering these prompts in a message box that was separate from the main patient record (mapping to claim 12), removing the prompt after user action (mapping to claim 13), inserting an indication of missing content into the record itself (mapping to claim 18), and using labels to guide user input (mapping to claim 25).
    • Motivation to Combine: A POSITA looking to implement the prompting feature of Carus would be motivated to consult references like Panzarasa to find effective and user-friendly methods for doing so in a clinical setting. Panzarasa provided a known, predictable solution for rendering prompts that improved clarity and user compliance, directly addressing the problem of how best to prompt a user as described in Carus.
    • Expectation of Success: The combination involved applying a known UI solution (Panzarasa) to a known type of system (Carus), which would have yielded predictable and successful results.

Ground 3: Obviousness over Soble - Claims 1, 4, 6, 12, 13, 18, 21, 25, and 26 are obvious over Soble in view of the knowledge of a POSITA.

  • Prior Art Relied Upon: Soble (Application # 2009/0187407).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner presented Soble as an alternative primary reference that independently taught the claimed invention. Soble disclosed a medical reporting system that used ASR to convert dictation into a structured report with organized sections (e.g., a radiology report). The system then checked the report against "standards regarding report completeness" and issued warnings or prompts if required sections (e.g., "left ventricular function," "calcium score") were missing. Petitioner equated these completeness standards with the patent's "best practices." Soble further disclosed using placeholders to indicate missing information and providing prompts aurally, which is a form of rendering separate from the visual document.
    • Motivation to Combine: Similar to the Carus-only ground, the motivation was based on a POSITA applying common knowledge and routine design choices to Soble’s disclosed system. For example, while Soble emphasized aural prompts, providing a corresponding visual prompt on a display would be an obvious and beneficial redundancy for the user.
    • Expectation of Success: A POSITA would expect that implementing Soble's teachings using standard, well-understood software and UI techniques would be straightforward and result in a functional system.

4. Key Claim Construction Positions

  • Order of Method Steps: Petitioner argued that the claim language and specification do not require step C of claim 1 ("inserting content") to be performed before steps D and E ("generating... indication[s] that a user should provide additional input"). The petition asserted that the specification suggests that prompting the user (steps D and E) occurs as part of determining compliance (step B), and that the user's input is then inserted into the document (step C). This construction was critical to mapping prior art that prompts a user before modifying a document.
  • "best practices": Petitioner noted that the Patent Owner, in co-pending litigation, had construed "best practice" as "a rule, guideline, or preference related to information for a medical report." Petitioner argued that even under this construction, the claims were obvious because the reporting standards and completeness checks disclosed in Carus and Soble (e.g., JCAHO requirements, ICD-9 codes, required sections in a radiology report) met this definition.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1, 4, 6, 12, 13, 18, 21, 25, and 26 of Patent 8,781,829 as unpatentable.