PTAB

IPR2019-01147

Samsung Electronics Co Ltd v. SpeakWare Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Sound-Activated and Voice-Operated Remote Control
  • Brief Description: The ’186 patent describes a universal remote control system for appliances that operates in a hands-free manner. The system conserves power by remaining in a low-power "sound activation mode" until it detects a voice signal exceeding a predetermined amplitude threshold, at which point it automatically switches to a full-power "speech recognition mode" to process commands.

3. Grounds for Unpatentability

Ground 1: Obviousness over Salazar, Miyazawa, and Bossemeyer - Claims 21, 23-26, 28-36, 39-41, 43-52, and 55 are obvious over Salazar in view of Miyazawa, optionally further in view of 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 disclosed the foundational elements of a universal remote control system for appliances with a voice-activated mode and a separate low-power "stop mode" to save battery. However, Salazar lacked the claimed feature of automatically switching from the low-power mode to the active mode based on the amplitude of a received voice signal. Petitioner asserted that Miyazawa supplied this missing element by teaching a voice-activated system that explicitly switches its processor from a low-power "sleep mode" to an active speech recognition mode when an input sound signal's power or amplitude exceeds a predetermined threshold, all without requiring a physical switch. Bossemeyer was introduced as further evidence that using an amplitude threshold to detect the start of a user's utterance was a well-known technique in the art of speech recognition.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Miyazawa's voice-triggered, power-saving mode-switching functionality with Salazar's universal remote control system. The motivation was to improve Salazar's design by creating a more efficient, truly hands-free device that conserves power more effectively by only activating the main speech recognition processor when a user is likely speaking. This combination addressed the express goals of both references—voice control and power reduction.
    • Expectation of Success: A POSITA would have a high expectation of success because combining the references involved applying a known power-saving technique (Miyazawa's mode-switching) to a known application (Salazar's voice remote). Both systems utilized conventional components like microphones, processors, and speech recognition circuits, making the integration straightforward and the outcome predictable.

Ground 2: Obviousness over Salazar and Miyazawa in view of Oppendahl - Claims 22 and 42 are obvious over the combination of Salazar, Miyazawa, and optionally Bossemeyer, further in view of Oppendahl.

  • Prior Art Relied Upon: Salazar (Patent 5,802,467), Miyazawa (Patent 5,983,186), Bossemeyer (Patent 6,012,027), and Oppendahl (Patent 5,008,954).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground built upon the primary combination of Salazar and Miyazawa to address the limitations of claims 22 and 42, which require that the predetermined threshold of the sound activation circuit be "user-adjustable." Petitioner argued the primary combination taught an automatic threshold but did not explicitly disclose user adjustment. Oppendahl, which discloses a voice-operated switch (VOX), was alleged to teach this feature with its "VOX sensitivity control," allowing a user to manually adjust the voice detection threshold.
    • Motivation to Combine: A POSITA would be motivated to incorporate Oppendahl's user-adjustable threshold into the Salazar-Miyazawa system to improve its performance and robustness. Such an adjustment would allow a user to fine-tune the device's sensitivity to prevent false activations in noisy environments or to increase sensitivity in quiet environments, a predictable improvement that addresses the known problem of false-positive triggers in voice-activated systems.
    • Expectation of Success: Adding a user-adjustable sensitivity control to a voice-activated circuit was a common and well-understood design choice. A POSITA would have found it simple to implement a known manual adjustment feature like Oppendahl's to yield the predictable result of enhanced user control over the activation threshold.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations incorporating Reichel (Patent 5,459,792) to teach a user-adjustable amplification level control (claim 27) and Douma (Patent 5,583,965) to teach a trainable programming mode for user-defined voice commands (claims 37, 38, 53, and 54).

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial would be inappropriate. Although the petition was similar to a previously filed petition by Google, it was accompanied by a timely motion for joinder. Petitioner contended that under Board precedent, filing a "copycat" petition with a motion for joinder effectively neutralizes the General Plastic factors against institution.
  • Furthermore, Petitioner argued that the key prior art references, Salazar and Bossemeyer, were never considered during the original prosecution of the ’186 patent. It was also argued that while Miyazawa was listed in an Information Disclosure Statement (IDS), it was never substantively analyzed by the Examiner, meaning the core of the petition's invalidity argument presented new issues for consideration.

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 under 35 U.S.C. §103.