Amazon.com Inc v. SoundClear Technologies LLC

1. Case Identification

• Case #: IPR2025-00565
• Patent #: 11,069,337
• Filed: January 31, 2025
• Petitioner(s): Amazon.com, Inc., Amazon.com Services LLC, and Amazon Web Services, Inc.
• Patent Owner(s): SoundClear Technologies LLC
• Challenged Claims: 1-5

2. Patent Overview

• Title: Voice-Content Control Device, Voice-Content Control Method, and Voice-Content Control Program
• Brief Description: The ’337 patent describes an electronic device, like a smart speaker, that analyzes a user’s voice input and generates a responsive voice output. The core inventive concept asserted during prosecution was the device’s ability to use a proximity sensor to calculate the distance to a user, classify the user’s voice based on that distance, and then adjust both the content and volume of its spoken response accordingly.

3. Grounds for Unpatentability

Ground 1: Anticipation over Shin - Claims 1-5 are anticipated under 35 U.S.C. §102 by Shin.

• Prior Art Relied Upon: Shin (Application # 2017/0083281).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Shin, filed in 2017, discloses every limitation of the challenged claims. Shin describes a voice-controlled electronic device with a "distance detection module" or "proximity sensor" to compute the distance to a user. Based on this distance, Shin’s device classifies the voice input and tailors the output. Specifically, for a "first voice" (e.g., a user closer than 1 meter), the device provides "detailed content" at a lower volume (e.g., 40 dB). For a "second voice" (e.g., a user farther than 4 meters), it provides "abbreviated content" at a higher volume (e.g., 60 dB or more). This directly maps to the ’337 patent’s limitations of generating a first output sentence for a first voice and a second, abbreviated output sentence for a second voice, with differing volumes for each. Shin’s teachings on its processor analyzing user intent (e.g., for weather) and generating text data for output were argued to meet the remaining functional unit limitations of claims 1 and 2.

Ground 2: Obviousness over Shimomura - Claims 1-5 are obvious over Shimomura.

• Prior Art Relied Upon: Shimomura (Japanese Application # 2005/202076).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Shimomura discloses a speech control device (a robot) that uses cameras as a proximity sensor to detect user distance. Shimomura’s device classifies voice into two categories based on a 350 cm threshold. For a "first voice" (farther than 350 cm), it generates a "first output sentence" by transforming the original content (e.g., adding the Japanese particle "ne" to enhance clarity over distance). For a "second voice" (closer than 350 cm), it generates a "second output sentence" using the original content, thereby omitting the added particle. While Shimomura discloses adjusting volume based on distance in general, Petitioner argued that it would have been obvious to modify Shimomura’s volume adjustment tables to align with its explicit 350 cm content-modification threshold.
  • Motivation to Combine (for §103 grounds): A POSITA would be motivated by simple design choice and common sense to ensure audibility corresponded to the change in content. This would involve the simple substitution of one known threshold (250 cm from Shimomura's volume table) for another known threshold (350 cm from its content table) to achieve the predictable result of a device that adjusts both content and volume based on the same distance determination.
  • Expectation of Success: A POSITA would have a high expectation of success, as the modification involves configuring Shimomura’s control unit with a revised table using distance thresholds already disclosed and used within Shimomura itself, a trivial and predictable adjustment.

Ground 3: Obviousness over Shin and/or Shimomura in view of Kristjansson - Claims 1-5 are obvious.

• Prior Art Relied Upon: Shin (Application # 2017/0083281), Shimomura (Japanese Application # 2005/202076), and Kristjansson (Patent 10,147,439).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground was presented to address the "process executing unit" limitations of the claims, specifically the "intention analyzing unit" and "acquisition content information acquiring unit" recited in dependent claim 2. Petitioner argued that to the extent Shin or Shimomura were deemed not to disclose these specific modular units for understanding user intent and retrieving information, Kristjansson explicitly teaches them. Kristjansson describes a speech processing system with a natural language understanding (NLU) component to "derive an intent" from user speech and a "command processor" that retrieves content based on that derived intent.
  • Motivation to Combine (for §103 grounds): A POSITA seeking to implement the voice-controlled systems of Shin or Shimomura would combine them with Kristjansson’s teachings on NLU processing. Kristjansson provided a well-established and routine approach for processing user requests, and a POSITA would have been motivated to use such known techniques to improve the functionality and reliability of intent extraction and content retrieval in the base systems of Shin or Shimomura.
  • Expectation of Success: Success would be reasonably expected because Kristjansson’s NLU approach was a well-known method for implementing the very functions described in Shin and Shimomura. Furthermore, all three references disclose systems that use proximity sensors to adjust audio output, confirming their compatibility and the predictability of the combination.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including that claims 1-5 would have been obvious over Shin alone (in the event anticipation failed) and obvious over the combination of Shimomura and Shin.

4. Arguments Regarding Discretionary Denial

• §314(a) (Fintiv): Petitioner argued against discretionary denial, asserting that it provided a Sotera stipulation not to pursue the same grounds in the parallel district court litigation. Further, Petitioner contended that the petition presents compelling evidence of unpatentability, which, under the USPTO Director’s guidance, weighs strongly against denial regardless of the litigation's status. At the time of filing, the district court case had no set trial date.
• §325(d) (Advanced Bionics): Petitioner argued denial would be inappropriate because Shimomura and Kristjansson were never presented to or considered by the Examiner. Although the Examiner cited Shin, it was argued that the Examiner failed to meaningfully address its most relevant disclosures—namely, the teachings on varying both content and volume based on distance, which were the very elements relied upon for allowance. Petitioner asserted this failure to appreciate the significance of Shin’s teachings constituted a material error by the USPTO.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-5 of the ’337 patent as unpatentable.