Microsoft Corp v. Parus Holdings Inc

1. Case Identification

• Case #: IPR2022-00137
• Patent #: 6,721,705
• Filed: November 9, 2021
• Petitioner(s): Microsoft Corp.
• Patent Owner(s): Parus Holdings, Inc.
• Challenged Claims: 1-2

2. Patent Overview

• Title: Internet Voice Browsing System
• Brief Description: The ’705 patent describes a system for retrieving information from network sources like web sites using voice commands. The system uses a database to store and rank information sources, selecting the highest-ranked source to fulfill a user's voice request and adjusting ranks based on polling performance.

3. Grounds for Unpatentability

Ground 1: Claims 1-2 are obvious over Perrone, Kumar, and Madnick.

• Prior Art Relied Upon: Perrone (Patent 6,157,705), Kumar (Patent 6,795,434), and Madnick (Patent 5,913,214).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Perrone taught the foundational system for voice-controlled web browsing, disclosing a CPU-based "media server" with speech recognition and synthesis, an IVR application, and a "web browsing server" to access web sites listed in a database. However, Perrone did not explicitly teach ranking multiple web sites for a single query or handling varied data formats. Petitioner asserted Kumar addressed the ranking limitation by teaching a system that polls multiple servers, ranks them by preference (e.g., based on response time), and sequentially accesses them from highest to lowest rank. This combination supplied the claimed "polling and ranking agent" and the assignment of a "rank number" to each web site. To meet the limitations for a "content extraction agent" and "content descriptor file," Petitioner relied on Madnick, which taught a system for translating user queries into formats understood by different web sources using a "description file" that specifies data locations and formats.
  • Motivation to Combine: A POSITA would combine Perrone with Kumar to improve the efficiency and reliability of Perrone's system. By identifying multiple potential web sources for a query and ranking them, the system could reduce delays and increase the likelihood of success. A POSITA would further add Madnick's teachings to enable the combined Perrone/Kumar system to interact with a broader range of distinct web sites that use varied data contexts (e.g., different currencies for stock quotes), thereby increasing the system's overall utility and robustness.
  • Expectation of Success: Petitioner contended a POSITA would have a reasonable expectation of success because combining these known elements would involve primarily software modifications on conventional hardware platforms. The integration of ranking and data translation were predictable solutions to known problems in web-based information retrieval.

Ground 2: Claims 1-2 are obvious over Perrone, Kumar, and Madnick in further view of Houser.

• Prior Art Relied Upon: Perrone (Patent 6,157,705), Kumar (Patent 6,795,434), Madnick (Patent 5,913,214), and Houser (Patent 5,774,859).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground incorporated all arguments from Ground 1 and added Houser to address a potential narrow interpretation of the "speech recognition engine" limitation. While Petitioner argued Perrone's speaker-independent recognition met the claim, it offered Houser as an alternative teaching for this element. Petitioner asserted that if the Patent Owner argued the claim requires speech recognition that does not rely on speech patterns, Houser disclosed such a method. Houser taught a speech recognition engine that analyzes phonemes to recognize spoken commands, a technique explicitly mentioned as an alternative in the ’705 patent’s specification.
  • Motivation to Combine: A POSITA would be motivated to incorporate Houser’s phoneme-based recognition into the primary combination (Perrone/Kumar/Madnick) to enhance the system's ability to recognize words not typically found in a standard dictionary, such as proper nouns for stocks or individuals. This would make the voice-browsing system more powerful and versatile, particularly for retrieving timely information like news or financial data.
  • Expectation of Success: A POSITA would have a high expectation of success because Houser’s technology was designed for the same purpose—computer-based speech recognition for information retrieval (e.g., stock quotes)—and could be integrated as a software component into the server architecture taught by Perrone.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §314(a) based on Fintiv factors. The core arguments were that the parallel district court litigation was in a very early stage with minimal investment from the parties or the court, and the scheduled trial date was after the statutory deadline for a Final Written Decision (FWD) and was likely to slip. Petitioner further stipulated that it would not pursue the same invalidity grounds in the district court if the IPR was instituted, thereby preventing duplicative efforts and conserving judicial resources.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1 and 2 of the ’705 patent as unpatentable.