Meta Platforms Inc v. Eight KHZ LLC

1. Case Identification

• Case #: IPR2023-01003
• Patent #: 9,226,090
• Filed: June 9, 2023
• Petitioner(s): Meta Platforms, Inc.
• Patent Owner(s): Eight KHZ, LLC
• Challenged Claims: 1-3, 6, 8-10, 12, 14-19

2. Patent Overview

• Title: Sound Localization for an Electronic Call
• Brief Description: The ’090 patent discloses methods and systems for simulating a face-to-face conversation during an electronic call. The technology involves capturing a speaker's binaural voice, designating a sound localization point (SLP) in empty space near a listener, and adjusting the voice so it appears to originate from that SLP.

3. Grounds for Unpatentability

Ground 1: Obviousness over Bedingfield and Andrea - Claims 1-3, 6, 15-17 are obvious over Bedingfield in view of Andrea.

• Prior Art Relied Upon: Bedingfield (Patent 8,406,439) and Andrea (Patent 8,818,000).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Bedingfield disclosed a system for providing "synthetic audio placement" for remote conference participants using wearable devices to simulate an in-person meeting. While Bedingfield taught creating a spatialized sound field, it did not explicitly disclose capturing binaural sound with the participant's wearable electronic device (WED). Andrea allegedly supplied this element by teaching a WED with microphones at each ear to capture binaural sound, which improved call quality through "directional listening" and noise cancellation. The combination of Bedingfield's spatial audio environment with Andrea's binaural capture method was asserted to meet the limitations of independent claims 1 and 15.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Andrea's binaural sound capture with Bedingfield's system to advance Bedingfield's stated goal of making an electronic call more closely simulate an in-person conference. Using Andrea's technology would improve sound quality, reduce noise, and increase the fidelity of the SLP, thereby enhancing the realism of the virtual meeting.
  • Expectation of Success: Petitioner contended that success was predictable because the references are analogous, as both relate to improving audio communication via headsets. The modification was argued to be a simple implementation of a known technique (adding a second microphone) to a similar device to achieve a predictable result (improved sound quality).

Ground 2: Obviousness over Bedingfield, Andrea, and Ballas - Claim 18 is obvious over Bedingfield in view of Andrea and Ballas.

• Prior Art Relied Upon: Bedingfield (Patent 8,406,439), Andrea (Patent 8,818,000), and Ballas (Application # 2003/0059070).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination of Bedingfield and Andrea to address claim 18, which required maintaining the SLP at a fixed location as the listener moves and changes head orientation. Petitioner asserted that Ballas disclosed a head-tracking system for a virtual reality display that used Head-Related Transfer Function (HRTF) filters to "maintain[] the virtual location of the audio signals" independent of the user's head movements. This teaching was argued to provide the missing limitation of claim 18.
  • Motivation to Combine: A POSITA would be motivated to add Ballas's head-tracking capabilities to the Bedingfield/Andrea system because all three references shared the goal of creating a more realistic, immersive audio experience. To effectively simulate an in-person conference where sound sources are fixed, tracking the listener's head movement is a key and conventional technique.
  • Expectation of Success: Success was expected because the proposed combination involved integrating known, compatible elements (a headset and a head-tracking system) to achieve the predictable result of a stabilized virtual sound field.

Ground 5: Obviousness over Li and Andrea - Claims 1, 3, 6, 15-17 are obvious over Li in view of Andrea.

• Prior Art Relied Upon: Li (Patent 9,131,305) and Andrea (Patent 8,818,000).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground presented an alternative to Bedingfield. Petitioner argued that Li taught a configurable 3D sound system that used HRTFs to place different speakers at distinct spots to "mimic a real conference room environment." Like Bedingfield, Li did not explicitly teach capturing binaural sound with the user's device. Andrea was again relied upon to supply the teaching of a WED that captures binaural sound using two microphones. The combination was alleged to meet the limitations of independent claims 1 and 15.
  • Motivation to Combine: A POSITA would be motivated to apply Andrea's binaural capture technique to Li's 3D sound system for the same reasons as in Ground 1: to improve the realism of the simulated conference by reducing noise and enhancing sound quality. This modification was presented as a natural extension of Li’s system, which already contemplated "[b]inaural recordings" to make audio sound more realistic.
  • Expectation of Success: Petitioner argued that success was predictable because the references were analogous. Li's system was described as compatible with multi-microphone arrays, making the integration of Andrea's two-microphone headset straightforward and beneficial for producing more reliable localization cues.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations of Bedingfield/Li with Ballas to teach maintaining a fixed SLP during head movement (Grounds 4, 8), and combinations of Bedingfield/Li with Andrea and Sandgren to teach adding artificial audial cues for virtual objects (Grounds 3, 7).

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under §314(a) or §325(d). It was emphasized that none of the prior art references asserted in the petition were cited or relied upon during the original prosecution of the ’090 patent. Regarding a co-pending district court case, Petitioner noted that the court was deciding a motion to transfer, suggesting that the parallel litigation was not in an advanced state that would weigh in favor of denial under the Fintiv factors.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-3, 6, 8-10, 12, and 14-19 of Patent 9,226,090 as unpatentable.