PTAB

IPR2019-01146

Samsung Electronics Co., LTD v. SpeakWare, Inc.

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1. Case Identification

2. Patent Overview

  • Title: Audio Signal Activated Control System and Method
  • Brief Description: The ’186 patent discloses a sound-activated, universal remote control system for appliances. The system purports to provide "truly hands-free" operation by using two modes: a low-power sound activation mode that listens for sound and a full-power speech recognition mode that processes commands, with the system switching between modes based on the amplitude of detected audio signals.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 1-4, 7-16, and 19-20 over Salazar, Miyazawa, and Bossemeyer

  • Prior Art Relied Upon: Salazar (Patent 5,802,467), Miyazawa (Patent 5,983,186), and Bossemeyer (Patent 6,012,027).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Salazar taught a universal remote system for controlling appliances that used voice commands and featured a power-saving "stop mode." Miyazawa taught a voice-activated system that switched from a low-power "sleep mode" to an active speech recognition mode based on the amplitude of an input sound signal, specifically to conserve power without requiring a physical switch. This combination, Petitioner asserted, met most limitations of claim 1, including the dual-mode, power-saving architecture. Bossemeyer was introduced as teaching the common technique of monitoring a microphone signal and using an amplitude threshold to determine the start and end of a spoken utterance, which refined the mode-switching trigger. Dependent claims were allegedly met by specific disclosures in Salazar (e.g., wireless IR/RF transmission for claims 2-4) and Miyazawa (e.g., sleep state and processor frequency for claims 7-8).
    • Motivation to Combine: A POSITA would combine Salazar's universal remote functionality with Miyazawa's power-saving, amplitude-triggered mode switching to achieve the predictable result of a more power-efficient, hands-free remote control. Incorporating Bossemeyer's utterance detection was a known method to improve the system's reliability by distinguishing speech from background noise. The combination aimed to enhance power efficiency and usability, which were express goals of the references.
    • Expectation of Success: A POSITA would have had a high expectation of success because the combination involved integrating known, compatible technologies (voice control, power-saving processor modes, and amplitude triggering) to achieve the predictable benefits of improved battery life and user convenience.

Ground 2: Obviousness of Claim 5 over Salazar and Miyazawa in view of Oppendahl

  • Prior Art Relied Upon: Salazar (Patent 5,802,467), Miyazawa (Patent 5,983,186), and Oppendahl (Patent 5,008,954).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground challenged claim 5, which adds a "user-adjustable sound activation sensitivity control." Petitioner established the base system through the combination of Salazar and Miyazawa, as in Ground 1. Oppendahl was argued to teach a voice-operated switch (VOX) that included a "VOX sensitivity control," allowing a user to manually adjust the voice detection threshold.
    • Motivation to Combine: A POSITA would have been motivated to add Oppendahl's user-adjustable threshold to the Salazar-Miyazawa system to allow a user to fine-tune the device's sensitivity. This would predictably improve performance in various noise environments, preventing false activations in loud settings or missed commands in quiet ones, thus solving a well-known problem in voice-activated systems.

Ground 3: Obviousness of Claims 17-18 over Salazar and Miyazawa in view of Douma

  • Prior Art Relied Upon: Salazar (Patent 5,802,467), Miyazawa (Patent 5,983,186), and Douma (Patent 5,583,965).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addressed claims 17 and 18, which require a "programming mode to enable a user to define a control signal to be associated with a defined audible command." After establishing the base system with Salazar and Miyazawa, Petitioner introduced Douma, which taught a method for training a voice recognition system. In Douma, a user could associate a custom audible command with a specific instruction for controlling an appliance.
    • Motivation to Combine: A POSITA would incorporate Douma's voice-command training feature into the Salazar-Miyazawa system to increase user customization and control. This would be a simple substitution of one known input method (like a physical button or touch screen, which Salazar suggests for programming) for another (voice input, as taught by Douma), a straightforward design choice to improve usability.
  • Additional Grounds: Petitioner asserted additional obviousness challenges against claim 6 over Salazar, Miyazawa, and Reichel (Patent 5,459,792) for adding a user-adjustable amplification circuit, and against claim 8 over Salazar, Miyazawa, and Clark (Patent 6,425,086) for adding a processor that operates at a higher frequency in speech mode than in the low-power state.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that review should be instituted and that discretionary denial would be inappropriate. It was contended that key prior art references relied upon in the petition, Salazar and Bossemeyer, were never considered during the original prosecution of the ’186 patent.
  • While Miyazawa was listed in an Information Disclosure Statement (IDS), Petitioner argued it was never substantively analyzed by the examiner, and its mere presence in an IDS is not a sufficient reason to deny institution.
  • Petitioner further noted that this petition was filed with a motion for joinder to an existing IPR (IPR2019-00340, filed by Google), which had already been instituted. Petitioner argued that for such "copycat" petitions seeking joinder, the General Plastic factors weighing against follow-on petitions are effectively neutralized, making denial on those grounds improper.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-20 of Patent 6,397,186 as unpatentable under 35 U.S.C. §103.