Google LLC v. Parus Holdings Inc

1. Case Identification

• Case #: IPR2022-00805
• Patent #: 9,769,314
• Filed: April 4, 2022
• Petitioner(s): Google LLC
• Patent Owner(s): Parus Holdings Inc.
• Challenged Claims: 1-26

2. Patent Overview

• Title: Voice Browser System
• Brief Description: The ’314 patent discloses a system that allows a user to retrieve customized information from a network, such as the internet, using speech commands via a device like a telephone. The system uses a speech recognition engine, a media server, and a web-browsing server with a "content extractor" to identify, retrieve, and convert specific portions of a webpage into an audio message for the user.

3. Grounds for Unpatentability

Ground 1: Claims 1-26 are obvious over Wise in view of Woods.

• Prior Art Relied Upon: Wise (Patent 5,884,262) and Woods (Patent 6,510,417).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Wise disclosed a foundational “voice response system” for accessing information from web servers over a network using a telephone. Wise’s system included voice recognition, a parser to interpret web content, and a text-to-speech engine to provide audio feedback. However, Petitioner contended Wise lacked efficient content extraction and periodic updates. Woods allegedly supplied these missing elements, disclosing a “voice portal” that uses an update engine with “spiders” to periodically retrieve updated internet-based information and stores it in a database. Furthermore, Woods taught using “forms” and “special routines” to isolate, extract, and identify only the relevant portions of information on a webpage for speech transmission, directly corresponding to the ’314 patent’s “content extractor” functionality.
  • Motivation to Combine: A POSITA would combine Wise and Woods to improve Wise's system. Specifically, incorporating Woods's methods for periodically updating information sources would ensure the user receives current data, and integrating Woods’s sophisticated content extraction techniques would enhance the efficiency and relevance of the retrieved information, providing a better user experience.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because both references related to voice access for internet information, and implementing Woods's software-based functionalities (like spiders and extraction routines) into Wise's known server architecture involved predictable software programming.

Ground 2: Claims 1-25 are obvious over Wise in view of Dasan.

• Prior Art Relied Upon: Wise (Patent 5,884,262) and Dasan (Patent 5,761,662).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner again relied on Wise for the foundational voice browsing system. Dasan was asserted to teach an automatic method for creating a personalized newspaper by retrieving information based on a detailed, user-defined profile. Dasan’s system operated at “periodic intervals” to keep information up-to-date and performed a full-text search on raw news sources (webpages). Critically, after locating relevant articles, Dasan’s system parsed and converted only “the portion of the file containing the located article,” which Petitioner argued taught the claimed content extraction from a larger information source. The user profile in Dasan, which specified topics, sources, and keywords, functioned as a “content-descriptor file” to guide the extraction.
  • Motivation to Combine: A POSITA would combine Wise’s voice interface with Dasan’s back-end processing to create a more powerful and personalized voice retrieval system. Dasan’s teachings on using user profiles to automatically retrieve and parse tailored, periodically updated information would have been a known method to improve the utility and efficiency of Wise's more general voice access system.
  • Expectation of Success: Success would be expected as the combination involved integrating the known, software-based user profiling and data parsing techniques of Dasan with the established voice-interface architecture of Wise.

• Additional Grounds: Petitioner asserted that claim 26 is obvious over Wise and Dasan in view of Uppaluru (Patent 5,915,001). This ground argued that to the extent the base combination did not explicitly teach a “personal-recognition grammar,” Uppaluru provided this teaching through its disclosure of a voice web system that uses speech training profiles to create a personalized, speaker-dependent vocabulary for speech recognition.

4. Arguments Regarding Discretionary Denial

• §325(d) Arguments: Petitioner argued against discretionary denial under §325(d), asserting that the first prong of the Advanced Bionics framework was not met because two primary references, Woods and Dasan, were never before the Examiner. For the references previously cited in an Information Disclosure Statement (Wise and Uppaluru), Petitioner argued the Examiner committed material error by overlooking their specific, unambiguous teachings that rendered the claims obvious when combined with the new art.
• Fintiv Arguments: Petitioner argued against discretionary denial under Fintiv, stating that the parallel district court case was in its infancy, with minimal investment from the parties or the court, no claim construction, and a trial date over 18 months away. Petitioner asserted it had acted diligently, filing the petition approximately four months after receiving infringement contentions. Furthermore, Petitioner offered a stipulation not to pursue in district court any invalidity ground that includes the primary references from the petition, thereby reducing overlap between the proceedings.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-26 of the ’314 patent as unpatentable.