Microsoft Corp v. SpeakWare Inc

1. Case Identification

• Case #: IPR2019-00758
• Patent #: 6,397,186
• Filed: March 11, 2019
• Petitioner(s): Microsoft Corporation
• Patent Owner(s): Speakware, Inc.
• Challenged Claims: 1-20

2. Patent Overview

• Title: Hands-Free, Voice-Operated Remote Control Transmitter
• Brief Description: The ’186 patent describes a sound-activated, voice-operated remote control for appliances. The system uses a speech recognition processor that operates in a low-power sound activation mode and a higher-power speech recognition mode, and is configured to switch between modes automatically based on the amplitude of received audio signals.

3. Grounds for Unpatentability

Ground 1: Obviousness over Ciluffo and Kubota - Claims 1-5, 7-9, 11-20 are obvious over Ciluffo in view of Kubota.

• Prior Art Relied Upon: Ciluffo (Patent 6,119,088) and Kubota (Japanese Publication No. JP H10-319991 A).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Ciluffo disclosed a battery-powered, hands-free, voice-activated remote control system containing all the basic elements of claim 1, such as a microphone ("receiver"), processor, memory, and transmitter for controlling appliances. However, Ciluffo did not explicitly teach a low-power sleep mode with automatic wake-up. Kubota was argued to supply these missing elements, as it expressly taught a hands-free method for reducing power consumption in battery-powered speech recognition devices by using a low-power "sleep" mode. Kubota's system employed a "level detection" circuit that monitored for a voice signal of a sufficient amplitude and, upon detection, sent an "interrupt signal" to wake the processor from its sleep state to a full-power speech recognition mode.
  • Motivation to Combine: Petitioner contended that a person of ordinary skill in the art (POSITA) would combine these references to improve the design of Ciluffo's device. Since Ciluffo’s remote is battery-powered, a POSITA would have been motivated by the well-known need to conserve battery life. Kubota addressed this exact problem by providing an elegant, hands-free, power-saving solution that was fully compatible with the architecture of Ciluffo. The combination was presented as a predictable application of a known technique (power-saving sleep mode) to a known device (battery-powered remote).
  • Expectation of Success: Petitioner asserted a high expectation of success. The systems in both references were technically compatible, using similar components. Integrating Kubota's level-detection and sleep-mode functionality into Ciluffo's device was argued to be a straightforward design choice, particularly since Kubota taught using common, commercially available components like the RSC-164 speech recognition chip.

Ground 2: Obviousness over Ciluffo/Kubota and Reichel - Claim 6 is obvious over Ciluffo and Kubota in view of Reichel.

• Prior Art Relied Upon: Ciluffo (Patent 6,119,088), Kubota (Japanese Publication No. JP H10-319991 A), and Reichel (Patent 5,459,792).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground challenged claim 6, which added a "user-adjustable amplification circuit" to the system of claim 1. Petitioner argued the base combination of Ciluffo and Kubota rendered the underlying system obvious, and Reichel supplied the teaching of an adjustable amplification circuit. Reichel disclosed a universal audio input circuit for voice recognition systems that included a user-"adjustable gain control circuit" (e.g., a potentiometer) to condition the microphone signal and ensure it was not "too small or too large," thereby preventing degraded recognition performance.
  • Motivation to Combine: A POSITA implementing the Ciluffo/Kubota system would have been motivated to ensure optimal speech recognition performance. Reichel taught that signal amplitude was critical for this purpose and provided a simple, known solution: adjustable gain control. Petitioner argued this feature was complementary to the base combination, allowing a user to fine-tune the input signal gain for better performance in various environments, and was a known method for improving voice-activated devices.

Ground 3: Obviousness over Ciluffo/Kubota and Miyazawa - Claims 9-13 are obvious over Ciluffo and Kubota in view of Miyazawa.

• Prior Art Relied Upon: Ciluffo (Patent 6,119,088), Kubota (Japanese Publication No. JP H10-319991 A), and Miyazawa (Patent 5,983,186).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addressed claims 9-13, which recite automatically terminating the speech recognition mode and switching back to the low-power mode based on certain conditions. While Petitioner argued Kubota suggested this functionality (e.g., after a password failure), Miyazawa was asserted to teach it explicitly. Miyazawa disclosed a voice-activated system that automatically returned to a low-power sleep state if the speaker was quiet for a specified duration or if a spoken phrase was not a recognized keyword.
  • Motivation to Combine: The motivation for adding Miyazawa's teachings was, again, the well-understood goal of maximizing battery life in a portable device. A POSITA would have recognized that after a successful command or a period of inactivity, leaving the system in a high-power state was inefficient. Miyazawa provided a known, compatible, and logical solution to ensure the device returned to a low-power state as soon as the speech recognition function was no longer needed, further enhancing the power-saving benefits provided by Kubota.

• Additional Grounds: Petitioner asserted an additional obviousness challenge for claims 17-18 based on the combination of Ciluffo, Kubota, and Van Ee (Patent 6,208,341), which taught a programmable remote with a "macro creation/editing mode," to argue for the obviousness of adding macro programming functionality.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate because the core prior art had not been substantively considered by the patent office. Although Ciluffo was listed on an Information Disclosure Statement (IDS), it was never applied in a rejection. The primary secondary reference, Kubota, was not cited or considered at all during prosecution.
• Petitioner also distinguished this petition from prior-filed IPRs by other parties (Google and Unified Patents), noting that those petitions relied on different prior art combinations that did not include the core references of Ciluffo or Kubota.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-20 of the ’186 patent as unpatentable.