Google LLC v. SoundClear Technologies LLC

1. Case Identification

• Case #: IPR2025-01597
• Patent #: 11,069,337
• Filed: September 29, 2025
• Petitioner(s): Google LLC
• Patent Owner(s): SoundClear Technologies LLC
• Challenged Claims: 1-5

2. Patent Overview

• Title: Voice-Content Control Device
• Brief Description: The ’337 patent describes a voice-controlled electronic device that uses a proximity sensor to calculate the distance to a user. The device then adjusts both the informational content (e.g., providing a detailed vs. abbreviated response) and the sound volume of its voice output based on that calculated distance.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-5 by Shin

• Prior Art Relied Upon: Shin (Application # 2017/0083281).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Shin discloses every element of the challenged claims. Shin describes an electronic device with a “distance detection module” or “proximity sensor” to compute the distance to a user. Its processor functions as the claimed “voice classifying unit” by classifying the user’s voice based on distance thresholds (e.g., less than 1 meter vs. greater than 4 meters). The processor also serves as the “process executing unit” by analyzing user requests (e.g., for weather information) and as the “voice-content generating unit” by creating text for a spoken response. Critically, Shin teaches generating a detailed “first output sentence” for a nearby user and an abbreviated “second output sentence” with omitted information for a faraway user. Shin’s device also functions as an “output controller” by explicitly adjusting the sound volume to different levels based on the same distance classifications (e.g., 40 dB for a near user, 60-65 dB for a far user).

Ground 2: Obviousness of Claims 1-5 over Shimomura

• Prior Art Relied Upon: Shimomura (Japanese Application # 2005/202076).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Shimomura, which describes an interactive robot, renders the claims obvious. Shimomura’s robot uses cameras as a “proximity sensor” to detect user distance. Its control unit functions as the claimed “voice classifying,” “process executing,” and “voice-content generating” units. The device classifies voice into two categories based on a 350 cm distance threshold: a “first voice” (farther than 350 cm) and a “second voice” (closer than 350 cm). When the voice is classified as the first voice, Shimomura generates a “first output sentence” by transforming the original content (e.g., adding the Japanese word “ne”). When classified as the second voice, it generates a “second output sentence” using the original content, thus omitting the added word compared to the first sentence.
  • Motivation to Combine: This ground is based on a single reference but includes an obvious modification argument. Petitioner argued a person of ordinary skill in the art (POSITA) would be motivated to modify Shimomura’s volume control to align with its 350 cm content-modification threshold. While Shimomura teaches varying volume with distance, its volume change table uses different distance bands (e.g., a break at 250 cm) than its content transformation table (350 cm). A POSITA would modify the volume table to use the same 350 cm threshold for consistency and simplified design.
  • Expectation of Success: Petitioner argued this modification would be a simple substitution of one known distance threshold for another to achieve the predictable result of ensuring appropriate audibility at the same distance where content changes. A POSITA would have had a high expectation of success in this trivial implementation.

Ground 3: Obviousness of Claims 1-5 over Shimomura in view of Shin

• Prior Art Relied Upon: Shimomura (Japanese Application # 2005/202076) and Shin (Application # 2017/0083281).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that even if Shimomura alone does not motivate aligning the content and volume thresholds, the combination with Shin renders this limitation obvious. Shimomura provides the base device that classifies voice and alters content based on a distance threshold.
  • Motivation to Combine: A POSITA would combine the teachings of Shimomura and Shin to improve user interaction and simplify device logic. Shin explicitly teaches correlating specific distance ranges with both volume levels and information amounts using matching tables (e.g., for users less than 1 meter away, provide original content at 40 dB). A POSITA reviewing Shimomura’s system with its mismatched thresholds would look to analogous art like Shin and be motivated to apply Shin's more logical method of using common distance thresholds for both volume and content.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in modifying Shimomura’s device using Shin’s teachings. Both references address the same problem of proximity-based voice output adjustment, and implementing Shin’s approach of using matching tables in Shimomura’s system would be a straightforward design choice.

• Additional Grounds: Petitioner asserted an alternative obviousness challenge for claims 1-5 over Shin alone and an obviousness challenge over Shin and/or Shimomura in view of Kristjansson (Patent 10,147,439).

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §314(a) is inappropriate because the parallel district court litigation is stayed. Petitioner asserted that the Board’s policy is not to deny institution based on Fintiv factors when a petition presents “compelling evidence of unpatentability,” which Petitioner argued it had done with the Shin reference.
• Petitioner further argued that denial under §325(d) is inappropriate because the challenges rely on new prior art (Shimomura and Kristjansson) that was not before the Examiner. Moreover, Petitioner contended that although the Examiner identified Shin during prosecution, the Examiner materially erred by failing to appreciate or apply Shin’s most pertinent disclosures regarding the adjustment of both response content and volume based on user distance—the very basis on which the claims were allowed.

5. Relief Requested

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