PTAB

IPR2020-00686

Apple Inc v. Parus Holdings Inc

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1. Case Identification

2. Patent Overview

  • Title: Voice Browsing System
  • Brief Description: The ’431 patent describes a voice-controlled system for retrieving information from a network. The system uses speech recognition to process a user's spoken request, sequentially accesses a pre-selected and ranked list of websites to find the information, and provides an audible answer to the user.

3. Grounds for Unpatentability

Ground 1: Obviousness over Ladd, Kurosawa, and Goedken - Claims 1-6, 9-10, 13-14, 18, 20-21, and 25 are obvious over Ladd in view of Kurosawa and Goedken.

  • Prior Art Relied Upon: Ladd (Patent 6,269,336), Kurosawa (Japanese Patent Application No. JP H9-311869), and Goedken (Patent 6,393,423).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued this combination teaches all limitations of the challenged claims. Ladd, the primary reference, was asserted to disclose a base interactive voice response (IVR) system that receives spoken commands, retrieves information from a source like a website, and provides a spoken response using speech recognition and synthesis. Kurosawa was argued to supplement Ladd by teaching a system that maintains a database of pre-selected, prioritized URLs that are searched based on keywords to improve search efficiency. Goedken was asserted to teach the specific search procedure recited in claim 1(k): sequentially accessing a plurality of information sources (files in Goedken, websites in the proposed combination) and stopping the search once the requested information is found or once all sources have been checked.
    • Motivation to Combine: A POSITA would combine Ladd with Kurosawa to improve Ladd's single-source retrieval system by enabling searches across multiple, pre-selected websites, thereby increasing the likelihood of finding up-to-date and relevant information. A POSITA would then incorporate Goedken's search procedure to make the combined system more efficient and provide a faster, more "natural" response to the user, a known goal in IVR systems. This procedure returns an answer as soon as it is found, minimizing user wait time.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success because all three references relate to computerized information retrieval, and the proposed modifications involved combining known techniques using conventional programming and database management skills.

Ground 2: Obviousness over Ladd, Kurosawa, Goedken, and Madnick - Claims 7, 19, and 26-30 are obvious over the combination of Ground 1 in further view of Madnick.

  • Prior Art Relied Upon: Ladd (Patent 6,269,336), Kurosawa (Japanese Patent Application No. JP H9-311869), Goedken (Patent 6,393,423), and Madnick (Patent 5,913,214).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground builds on the core combination of Ground 1 to address the limitations of claims 7 and 19, which require a "content descriptor" for pre-defining a specific portion of a website containing the desired information. Petitioner argued that Madnick teaches this feature through its disclosure of a "specification file." This file acts as a template for interacting with a data source, specifying where to locate information on a webpage (e.g., finding a stock quote after the word "Last").
    • Motivation to Combine: A POSITA would have been motivated to add Madnick's teaching to the primary combination to further increase the speed and efficiency of information retrieval. Instead of searching an entire webpage, the system could use the content descriptor to go directly to the known location of the data, which was a known problem and solution in the art.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including:

    • Ground 3 (Claims 5-6): Obviousness over the Ground 1 combination in further view of Houser (Patent 5,774,859). Houser was cited for its teaching of analyzing phonemes to recognize speech, particularly for words not found in a standard dictionary, to supplement the speech recognition capabilities of Ladd.
    • Ground 4 (Claims 9 and 25): Obviousness over the Ground 1 combination in further view of Rutledge (Patent 6,650,998). Rutledge was cited as an alternative to Kurosawa for teaching a web crawler that periodically and autonomously searches the internet to identify and add new websites to the system's database, ensuring the information sources remain current.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not exercise its discretion to deny institution under §314(a) based on a parallel district court case. At the time of filing, that case was in its early stages, with no claim construction hearing held, no invalidity contentions exchanged, and a trial date far in the future.
  • Petitioner further argued against denial under §325(d), noting that while the primary reference Ladd was cited during prosecution, it was never used as the basis for a rejection. More importantly, the key secondary references (Kurosawa, Goedken, etc.) that supply the allegedly inventive features were never considered by the Examiner, meaning the core of Petitioner's invalidity arguments presented new issues for the Board to consider.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-7, 9-10, 13-14, 18-21, and 25-30 of the ’431 patent as unpatentable.