PTAB

IPR2019-00792

Microsoft Corp v. SpeakWare Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: HANDS-FREE, VOICE-OPERATED REMOTE CONTROL TRANSMITTER
  • Brief Description: The ’186 patent describes a sound-activated, voice-operated remote control system for providing hands-free control of appliances. The system utilizes a microphone, a wireless transmitter, and a processor-based speech recognition circuit that can operate in a full speech recognition mode or a low-power sound activation mode.

3. Grounds for Unpatentability

Ground 1: Obviousness over Ciluffo and Kubota - Claims 21-26, 28-29, 32-44, and 47-55 are obvious over Ciluffo in view of Kubota.

  • Prior Art Relied Upon: Ciluffo (Patent 6,119,088) and Kubota (Japanese Patent Publication JP H10-319991 A).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Ciluffo disclosed a hands-free, battery-powered, voice-activated remote control system with a microphone, processor, memory, and transmitter for controlling appliances. However, Ciluffo did not explicitly teach a low-power sleep mode. Kubota was argued to remedy this deficiency by teaching a hands-free method for reducing power consumption in battery-powered speech recognition devices. Kubota’s system remains in a low-power "sleep" mode and uses a level-detection circuit to monitor for voice input; upon detecting a sound exceeding a certain threshold, it sends an interrupt signal to wake the main processor and activate the full speech recognition mode. The combination allegedly taught all elements of the independent claims, including the dual-mode operation (low-power sound activation and speech recognition).
    • Motivation to Combine: A POSITA would combine these references for several reasons. First, because Ciluffo’s remote is battery-powered, there was a well-known and strong motivation to minimize power consumption to extend battery life, a problem directly solved by Kubota. Second, both references addressed hands-free, voice-activated control systems, making their teachings highly compatible. Kubota’s hands-free wake-up functionality was presented as a natural and desirable feature to add to Ciluffo’s hands-free control system.
    • Expectation of Success: Petitioner asserted a high expectation of success because the systems in Ciluffo and Kubota shared many fundamental components (microphone, amplifier, A/D converter, processor, memory). Integrating Kubota’s level-detection circuit and low-power functionality into Ciluffo’s design was argued to be a straightforward task for a POSITA, involving predictable results without undue experimentation.

Ground 2: Obviousness over Ciluffo, Kubota, and Reichel - Claim 27 is obvious over Ciluffo and Kubota in view of Reichel.

  • Prior Art Relied Upon: Ciluffo (Patent 6,119,088), Kubota (JP H10-319991 A), and Reichel (Patent 5,459,792).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the Ciluffo/Kubota combination to address the limitations of dependent claim 27, which required a "user-adjustable amplification level control." Reichel was introduced because it taught an audio input circuit for voice recognition that included an adjustable gain control circuit (e.g., a potentiometer). This allows a user to manually adjust the amplification of the microphone signal.
    • Motivation to Combine: A POSITA would have been motivated to add Reichel's teaching to the base combination to improve the reliability of the speech recognition system. It was known that recognition performance could be degraded if the input signal was too weak or too strong. Reichel’s adjustable gain provided a direct solution to this problem, ensuring an optimal signal level was sent to the processor, which was complementary to Kubota's adjustable activation threshold.

Ground 3: Obviousness over Ciluffo, Kubota, and Miyazawa - Claims 29-33 and 44-48 are obvious over Ciluffo and Kubota in view of Miyazawa.

  • Prior Art Relied Upon: Ciluffo (Patent 6,119,088), Kubota (JP H10-319991 A), and Miyazawa (Patent 5,983,186).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground targeted claims requiring the system to automatically switch from speech recognition mode back to the low-power sound activation mode under predetermined conditions, such as after a period of time or upon detecting an error. Petitioner argued that Miyazawa taught these specific features. Miyazawa disclosed a voice-activated system that automatically returned its CPU to a sleep state if the speaker was quiet for a specified duration, if a spoken phrase was not a recognized keyword, or if the user spoke a specific sleep command (e.g., "Good night").
    • Motivation to Combine: The motivation was to further enhance the power-saving objective of the base Ciluffo/Kubota combination. While Kubota taught how to wake the device efficiently, Miyazawa taught how to put it back to sleep efficiently, ensuring the device did not remain in a high-power state any longer than necessary. This was a complementary and well-aligned goal for any battery-powered device.
  • Additional Grounds: Petitioner asserted an additional obviousness challenge for claims 37-38 and 53-54 based on the combination of Ciluffo, Kubota, and Van Ee, which taught a macro-programming mode for remote controls.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under §325(d) would be improper because the core prior art and arguments were not previously considered by the USPTO. It was argued that while Ciluffo was listed on an IDS during prosecution, it was never applied in a rejection. The primary secondary reference, Kubota, and other references like Reichel and Van Ee, were never cited or considered at all.
  • Petitioner also distinguished its petition from those filed by other parties (Google, Unified Patents), noting that this petition relied on different prior art (neither of the other petitioners relied on Ciluffo or Kubota), different teachings, and different expert testimony.

5. Relief Requested

  • Petitioner requests the institution of an inter partes review and the cancellation of claims 21-55 of the ’186 patent as unpatentable.