Apple Inc v. SpeakWare Inc

1. Case Identification

• Case #: IPR2019-00875
• Patent #: 6,397,186
• Filed: April 3, 2019
• Petitioner(s): Apple Inc.
• Patent Owner(s): SpeakWare, Inc.
• Challenged Claims: 21-40

2. Patent Overview

• Title: Audio Signal Activated Control System
• Brief Description: The ’186 patent describes a system for remotely controlling an appliance using spoken commands. The system operates in a low-power "sound activation" mode and, upon detecting a sound exceeding a certain amplitude, automatically switches to a higher-power "speech recognition" mode to process user commands.

3. Grounds for Unpatentability

Ground 1: Obviousness over Tetsuo and Bissonnette - Claims 21, 23-26, 28-29, and 34-39 are obvious over Tetsuo in view of Bissonnette.

• Prior Art Relied Upon: Tetsuo (Japanese Patent Pub. No. JP 2708566) and Bissonnette (PCT Pub. No. WO 94/03020).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Tetsuo disclosed the core elements of independent claim 21. Tetsuo taught a voice recognition controller for an appliance (e.g., an air conditioner) that includes a low-power standby mode and a speech recognition mode. Its "volume detection unit" detected when a voice input exceeded a prescribed amplitude, which then activated the "voice recognition unit" to process commands. This mapped to the ’186 patent’s claimed switching from a "sound activation mode" to a "speech recognition mode." Petitioner asserted Bissonnette supplemented Tetsuo’s teachings by disclosing features such as a wireless transmitter for appliance control signals and a memory storing a library of control codes for multiple appliances, which were relevant to dependent claims 23 and 34-36.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Bissonnette's well-known wireless transmission and control code library features with Tetsuo's system to improve convenience and expand its applicability to multiple devices. This would have been a simple and predictable modification to provide the flexibility of wireless remote control.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in combining the references because both Tetsuo and Bissonnette operated in the same field of voice-operated appliance control, and the proposed combination involved integrating known, compatible technologies for their intended purposes.

Ground 2: Obviousness over Tetsuo, Bissonnette, and Stanley - Claims 22 and 27 are obvious over Tetsuo in view of Bissonnette and in further view of Stanley.

• Prior Art Relied Upon: Tetsuo, Bissonnette, and Stanley (Patent 5,684,924).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued this combination rendered claims 22 and 27 obvious. Stanley taught a speech recognition system with a user-adjustable "sensitivity parameter" that set a threshold to distinguish user speech from background noise (mapping to claim 22) and an adjustable gain amplification circuit for the microphone input (mapping to claim 27).
  • Motivation to Combine: A POSITA would be motivated to incorporate Stanley's user-adjustable features into the base system of Tetsuo and Bissonnette. This would allow a user to customize the device's sensitivity and gain to perform optimally in various noise environments, which was a known method for improving the robustness of voice recognition systems.
  • Expectation of Success: Integrating user-adjustable parameters was a common and predictable improvement for audio processing systems, ensuring a high likelihood of success.

Ground 3: Obviousness over Tetsuo, Bissonnette, and Geilhufe - Claims 29-33 are obvious over Tetsuo in view of Bissonnette and in further view of Geilhufe.

• Prior Art Relied Upon: Tetsuo, Bissonnette, and Geilhufe (Patent 6,584,439).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted Geilhufe taught automatically returning to a low-power "idle state" after a predetermined period of silence (e.g., "N seconds"). This timeout feature mapped to the limitations of claim 29, which required switching from the speech recognition mode back to the sound activation mode under "predetermined conditions," such as a period of time.
  • Motivation to Combine: A POSITA would combine Geilhufe's timeout functionality with the Tetsuo/Bissonnette system to conserve power and improve usability. Without such a feature, the device could remain in a high-power state indefinitely after activation. This modification provided a user-friendly and automatic method for resetting the system to its power-saving state.
  • Expectation of Success: Implementing an automatic timeout to return to a low-power mode was a conventional technique in electronic devices and would have been straightforward to implement in the base system.
• Additional Grounds: Petitioner asserted an additional obviousness challenge against claim 40 based on the combination of Tetsuo, Bissonnette, and Jankowski (Patent 4,052,568), which allegedly taught disabling communication with the sound activation circuit while in speech recognition mode to prevent unnecessary processing.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §314(a) would be inappropriate. The petition contended that its primary prior art reference, Tetsuo, had not been cited in any of the prior-filed IPRs against the ’186 patent, presenting a strong and novel unpatentability challenge. Petitioner also asserted that it conducted an independent prior art search and did not engage in tactical serial filings, and that the time elapsed since the first-filed IPR was reasonable given the complexity of the art and the number of challenged claims.

5. Relief Requested

• Petitioner requests the institution of an inter partes review and cancellation of claims 21-40 of the ’186 patent as unpatentable.