Amazon.com Inc v. SpeakWare Inc

1. Case Identification

• Case #: IPR2019-00999
• Patent #: 6,397,186
• Filed: April 19, 2019
• Petitioner(s): Amazon.com, Inc.
• Patent Owner(s): Speakware, Inc.
• Challenged Claims: 1-39 and 41-55

2. Patent Overview

• Title: Audio Signal Activated Control System and Method
• Brief Description: The ’186 patent describes systems for controlling appliances with voice commands. The core technology involves a device that can switch from a low-power "sleep" or "sound activation" mode to a full-power "speech recognition" mode automatically when the amplitude of a received audio signal exceeds a predetermined threshold.

3. Grounds for Unpatentability

Ground 1: Obviousness over Lett/Houser - Claims 1-4, 7-16, 19-21, 23-26, 28-36, 39, 41, 43-52, and 55 are obvious over Lett in view of Houser.

• Prior Art Relied Upon: Lett (Patent 5,771,064) and Houser (Patent 5,774,859). Petitioner argued these constitute a single reference ("Lett/Houser") because Lett explicitly incorporates the Houser application by reference to implement a speech interface.
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted Houser disclosed all key features of the independent claims. Houser described a speech interface for controlling appliances (e.g., VCRs) that used a "threshold element" as a power-saving feature to enable speech recognition components only when the sound level exceeded a certain level. This directly mapped to the ’186 patent’s core concept of switching from a low-power sound activation mode to a speech recognition mode based on signal amplitude. The primary alleged difference was that the ’186 patent claims placing the "processor" in a low-power state, whereas Houser disclosed disabling "components" more generally. Petitioner argued it would have been obvious to include the power-intensive processor among the components to be disabled to maximize power savings.
  • Motivation to Combine: Lett explicitly instructed a POSITA to implement Houser's speech interface within Lett’s modular home communications terminal. The motivation to place the processor in a low-power state stemmed directly from Houser's stated goal of power conservation, as the processor is a primary power-consuming component.
  • Expectation of Success: A POSITA would have had a high expectation of success because commercially available processors disclosed in the references (e.g., PowerPC 603, Motorola 68331) had well-documented, built-in low-power or "sleep" modes, making the implementation straightforward and predictable.

Ground 2: Obviousness over Lett/Houser and Stanley - Claims 5-6, 22, 27, and 42 are obvious over Lett/Houser in view of Stanley.

• Prior Art Relied Upon: Lett (Patent 5,771,064), Houser (Patent 5,774,859), and Stanley (Patent 5,684,924).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed dependent claims requiring user-adjustable parameters. Stanley disclosed a "User Adaptable Speech Recognition System" that explicitly taught allowing a non-technical user to adjust operating parameters like the sensitivity threshold (for discriminating speech from noise) and gain (amplification of the microphone signal). Petitioner mapped Stanley’s user-adjustable sensitivity to the challenged claims’ requirement for a user-adjustable amplitude threshold (claims 5, 22, 42) and Stanley's user-adjustable gain to the claims’ requirement for a user-adjustable amplification circuit (claims 6, 27).
  • Motivation to Combine: A POSITA would combine Stanley with Lett/Houser to improve system accuracy and user-friendliness. Stanley explained that providing user-adjustable parameters was a known method to overcome problems with improperly tuned systems. Because Houser’s threshold was a sensitivity parameter, a POSITA would have been motivated to make it adjustable as taught by Stanley to improve performance in various noise environments.
  • Expectation of Success: The combination was predictable. Lett/Houser provided the basic system with a fixed threshold and amplifier gain, while Stanley provided a well-understood, user-friendly software interface for adjusting those same types of parameters. The underlying technologies were highly analogous, ensuring a reasonable expectation of success.

Ground 3: Obviousness over Lett/Houser and Fischer - Claims 17-18, 37-38, and 53-54 are obvious over Lett/Houser in view of Fischer.

• Prior Art Relied Upon: Lett (Patent 5,771,064), Houser (Patent 5,774,859), and Fischer (WO 94/03017).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed dependent claims requiring a "programming mode" to enable a user to define control signals. Fischer taught a universal remote control with a "SETUP" mode where a user could program the device to associate a single audible command (e.g., "PLAY") with a sequence of control signals (a "macro") for controlling multiple appliances (e.g., turn on TV, set input, send play command to VCR). This functionality directly mapped to the challenged claims’ limitations of defining a single or a plurality of control signals to be associated with an audible command.
  • Motivation to Combine: A POSITA would combine Fischer with Lett/Houser to improve usability and efficiency. Houser required users to issue multiple separate commands for a single function (e.g., powering on a VCR and then recording), a problem that Fischer’s macro functionality was designed to solve. Incorporating Fischer's programming mode would allow users of the Lett/Houser system to create powerful, multi-step commands, representing a simple and desirable feature improvement.
  • Expectation of Success: Both systems were voice-operated, used microprocessors, and controlled appliances via infrared signals. Given these similarities, a POSITA would have readily integrated Fischer's software-based programming and macro functions into the Lett/Houser hardware with a high expectation of success.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) or §325(d) would be improper. It asserted that all relevant factors favored institution because Amazon had not previously filed a petition against the ’186 patent, the primary Lett/Houser reference was not raised in prior petitions by other parties, and the grounds were not substantially similar to those previously presented to the Office. Petitioner contended that the petition was simple and would not impose an excessive burden on the Board's resources.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-39 and 41-55 of the ’186 patent as unpatentable.