Voice Tech Corporation

Patent Trials and Appeals Board

Dec 13, 2021

IPR2020-01018 (P.T.A.B. Dec. 13, 2021)

Trials@uspto.gov Paper: 46
571-272-7822 Date: December 13, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

UNIFIED PATENTS, LLC,
Petitioner,
v.
VOICE TECH CORPORATION,
Patent Owner.

IPR2020-01018
Patent 10,491,679 B2

Before GEORGIANNA W. BRADEN, JOHN F. HORVATH, and
MICHAEL T. CYGAN, Administrative Patent Judges.
HORVATH, Administrative Patent Judge.
JUDGMENT
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)

IPR2020-01018
Patent 10,491,679 B2
2
I. INTRODUCTION
A. Background and Summary
Unified Patents, LLC (“Petitioner”), filed a Petition requesting inter
partes review of claims 1–8 (“the challenged claims”) of U.S. Patent
No. 10,491,679 B2 (Ex. 1001, “the ’679 patent”). Paper 1 (“Pet.”), 2. Voice
Tech Corporation (“Patent Owner”) filed a Preliminary Response. Paper 7
(“Prelim. Resp.”). Upon consideration of the Petition and Preliminary
Response, we instituted inter partes review of all challenged claims on all
grounds raised. Paper 10 (“Dec. Inst.”).
Patent Owner filed confidential (Paper 16) and public (Paper 17)
versions of a Response to the Petition. See Paper 17 (“PO Resp.”).1
Petitioner filed confidential (Paper 28) and public (Paper 30) versions of a
Reply. See Paper 30 (“Pet. Reply”). Patent Owner filed confidential
(Paper 34) and public (Paper 35) versions of a Sur-Reply, which included
argument relying on evidence (Exhibits 2038–2041) other than the
deposition transcripts of the cross-examination of a Reply witness. See
Paper 35 (“PO Sur-Reply”);
Petitioner moved to strike Exhibits 2038–2041 as against Board
policy and to deny consideration of those portions of the Sur-Reply that rely
on these Exhibits. See Paper 39, 1; see also Patent Trial and Appeal Board
Consolidated Trial Practice Guide at 73 (Nov. 2019)2 (“The sur-reply may
not be accompanied by new evidence other than the deposition transcripts of
the cross-examination of any reply witness.”). Patent Owner opposed. See
Paper 40. We granted Petitioner’s motion, and expunged Exhibits 2038–

1 Unless noted otherwise, we cite to the public versions of the papers filed by
the parties.
2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated
IPR2020-01018
Patent 10,491,679 B2
3
2041 from the record. Paper 43, 6. We do not consider and give no weight
to any arguments first presented in Patent Owner’s Sur-Reply that rely on
any of Exhibits 2038–2041. An oral hearing was held on September 21,
2021, and the hearing transcript is included in the record. See Paper 45
(“Tr.”).
We have jurisdiction under 35 U.S.C. § 6(b). This is a Final Written
Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons
set forth below, we find Petitioner has demonstrated by a preponderance of
evidence that claims 1–8 of the ’679 patent are unpatentable.
B. Related Matters
Petitioner and Patent Owner identify the following as a matter that can
affect or be affected by this proceeding: Voice Tech Corp. v. Mycroft AI
Inc., 4:20-cv-00111 (W.D. Mo.). Pet. 96; Paper 6, 2. In addition, Patent
Owner identifies U.S. Patent No. 9,794,348 as a patent and U.S. Patent
Application Nos. 16/655,047; 16/655,054; 16/655,061; 16/677,351;
16/677,332; 16/677,369; 16/710,539; 16/710,692; 16/896,673; 16/896,693;
and 16/896,743 as patent applications that can affect or be affected by this
proceeding. Prelim. Resp. 1.
C. Evidence Relied Upon3
Reference Effective Date Exhibit
Wong US 2006/0235700 A1 Oct. 19, 2006 1004
Beauregard US 6,438,545 B1 Aug. 20, 2002 1005
Ben-Efraim US 7,203,721 B1 Apr. 10, 2007 1006
Balakrishnan US 6,233,559 B1 May 15, 2001 1007

3 Petitioner also relies upon the Declarations of Bruce McNair (Exs. 1003,
1032) and Kevin Jakel (Ex. 1028).
IPR2020-01018
Patent 10,491,679 B2
4
D. Instituted Challenges to Patentability
We instituted review on the following challenges:
Ground Claim(s)
Challenged 35 U.S.C. § Reference(s)/Basis
1 1–8 103(a) Wong, Beauregard
2 1–8 103(a) Ben-Efraim, Balakrishnan
II. ANALYSIS
A. Real Parties-in-Interest
Petitioner and Patent Owner identify themselves, respectively, as the
only real parties-in-interest. Pet. 96; Paper 6, 2.
Patent Owner disagrees that Petitioner is the only real party-in-
interest, arguing that “one of Petitioner’s subscription members, Mycroft AI
Inc. (‘Mycroft’) is also an RPI,” basing that argument on an analysis of the
factors set forth in RPX Corporation v. Applications In Internet Time, LLC,
IPR2015-01750, Paper 128 at 2 (Oct. 2, 2020 PTAB) (precedential). See PO
Resp. 12, 16–22. Specifically, Patent Owner argues Mycroft is an unnamed
RPI because (1) Unified’s business model is to invalidate or license patents
on behalf of its members, (2) Mycroft had a preexisting “membership”
relationship with Unified prior to the filing of the Petition, (3) Unified knew
Mycroft had been sued for infringement of the ’679 patent when it filed the
Petition, and refused to discuss the Petition with Mycroft in a “willfull[y]
blind[]” effort to avoid having to name Mycroft as an RPI, (4) Mycroft
wants to have the ’679 patent found unpatentable, and stands to gain if it is
found unpatentable, (5) Unified and Mycroft exchanged communications
before the Petition was filed, and (6) Unified is representing Mycroft’s
interest in seeking to have the ’679 patent found unpatentable. Id. at 16–22.
IPR2020-01018
Patent 10,491,679 B2
5
Patent Owner, therefore, “asks that this IPR be terminated due to Petitioner’s
failure to identify all RPIs.” Id. at 23; see also PO Sur-Reply 2–14.
Petitioner replies that “[t]he Board need not address whether a party is
an unnamed RPI, as no time bar or estoppel provisions under 35 U.S.C.
§ 315 are implicated.” Pet. Reply 15 (citing SharkNinja Operating LLC v.
iRobot Corp., IPR2020-00734, Paper 11 at 18 (Oct. 6, 2020, PTAB)
(precedential). Petitioner further argues that Mycroft is not an RPI because
Petitioner (1) deters assertions of invalid patents by non-practicing entities
without coordinating with its members, (2) never acts as a middleman for its
members, discusses lawsuits with its members, or helps extricate its
members from lawsuits, (3) can and has challenged its own member’s
patents, (4) has never been paid by Mycroft, (5) decided to challenge the
’679 patent and hired a prior art search firm and expert witness to help
challenge the ’679 patent before Mycroft became a member, (6) engaged in
limited communications with Mycroft to explain that it does not coordinate
with its members and would not be working on Mycroft’s behalf, (7) acts at
its own behest and has sole control, discretion, and funding over this
proceeding, and (8) has no incentive, financial or otherwise, to represent
Mycroft’s interests in this proceeding. Id. at 16–26.
For the following reasons, and without deciding whether Mycroft is
an unnamed RPI, we are not persuaded by Patent Owner’s argument that this
proceeding should be terminated for failure to identify all RPIs. First, Patent
Owner’s argument is based on an incorrect premise that 35 U.S.C. § 312(a)
is a jurisdictional statute that must be satisfied to give the Board jurisdiction.
This premise is contrary to the Board’s precedential decision in Lumentum
Holdings, Inc. v. Capella Photonics, Inc., IPR2015-00739, Paper 38, 5
(PTAB Mar. 4, 2016) (precedential) (“§ 312(a) is not jurisdictional”).
IPR2020-01018
Patent 10,491,679 B2
6
Lumentum makes clear that § 312(a) is not jurisdictional because a party
may rectify non-compliance with the statute. Id., Paper 38 at 5. The Federal
Circuit has upheld the Board’s finding that § 312(a) is not jurisdictional. See
Mayne Pharma Int’l Pty. Ltd. v. Merck Sharp & Dohme Corp., 927 F.3d
1232, 1240 (Fed. Cir. 2019) (“[I]f a petition fails to identify all real parties in
interest under § 312(a)(2), the Director can, and does, allow the petitioner to
add a real party in interest.”).
Second, the facts in RPX are clearly distinguishable from the facts in
this case. In RPX, the Board’s analysis was limited to determining “whether
the § 315(b) time-barred entity Salesforce should have been identified as an
RPI or privy.” RPX, Paper 128, 7. Upon finding “RPX ha[d] not shown, by
a preponderance of the evidence, that Salesforce was not an RPI,” the Board
terminated RPX’s petition as also time-barred under § 315(b). Id. at 35.
Here, by contrast, the evidence establishes that Mycroft was not a time-
barred party when Unified filed the Petition. See Tr. 34:4–10 (counsel for
Patent Owner admitting Mycroft was not time-barred based on the filing of
the Texas infringement complaint); see also Ex. 2034 (showing Mycroft was
sued in Missouri on March 22, 2020); Pet. 99 (showing the Petition was
filed on June 5, 2020); 35 U.S.C. § 315(b) (setting forth the 1 year time-bar,
i.e, March 22, 2021 based on the filing date of the Missouri complaint and
assuming immediate service of the complaint). Consequently, even if we
were to determine that Mycroft is an RPI of Unified, there is no basis to
deny or terminate the Petition under § 315(b), which is not implicated.
Moreover, estoppel under § 315(e) only arises after “a final written
decision under section 318(a)” has issued with respect to a challenged claim.
See 35 U.S.C. §§ 315(e)(1),(2). This decision will be the first such final
written decision as to any claim of the ’679 patent. Thus, even if we were to
IPR2020-01018
Patent 10,491,679 B2
7
determine that Mycroft is an unnamed RPI, § 315(e)(1) would prevent
Mycroft from requesting a future proceeding challenging a claim at issue in
this proceeding on a basis that has been raised or reasonably could have been
raised in this proceeding, but does not require termination of this proceeding.
It will be left to the sound judgment of the District Court for the Western
District of Missouri to determine whether Mycroft is estopped under
§ 315(e)(2) from challenging the validity of any claim challenged in this
proceeding on a basis that has been raised or reasonably could have been
raised in this proceeding.
Accordingly, because we determine that neither the time bar nor
estoppel provisions of 35 U.S.C. § 315 are implicated in this case, “we need
not address whether [Mycroft] is an unnamed RPI.” SharkNinja, Paper 11 at
18.
B. The ’679 Patent
The ’679 patent is directed to a system and method “for using voice
commands from a mobile device to remotely access and control a
computer.” Ex. 1001, 1:30–34. The system includes mobile device 102,
which can be “a cellular phone, smart phone, touch-screen device, personal
digital assistant, tablet device, notebook device, laptop device, or other
suitable mobile device.” Id. at 2:31–35. The system also includes general
purpose computer 104 having “mobile device interface 106, audio command
interface 108, operating system interface 110, and native applications 112.”
Id. at 2:38–43.
“Mobile device interface 106 receives voice or data information from
mobile device 102,” “perform[s] voice recognition and other suitable
processing,” and “provide[s] voice data to audio command interface 108.”
Id. at 3:13–14, 3:51–54. To do so, mobile device interface 106 “monitor[s]
IPR2020-01018
Patent 10,491,679 B2
8
communications medium 114,” such as a public switched telephone network
(PSTN), local area network, digital subscriber line (DSL) or cable modem,
or other suitable network connections, and “determine[s] whether mobile
device 102 has transmitted data to general purpose computer 104.” Id. at
3:14–32.
Audio command interface 108 “receive[s] data from mobile device
interface 106 and detect[s] audio commands in the data.” Id. at 3:46–48.
Audio command interface 108 can “provide a list of available commands to
the person using mobile device 102” and execute detected commands. Id.
at 3:59–62. Audio command interface 108 can have “one or more states,
such that certain audio commands are available depending upon the state of
audio command interface 108.” Id. at 3:65–4:1.
“Operating system interface 110 allows audio command interface 108
to activate various operating system commands” such as “a search
command, a run command, [or] a program list command.” Id. at 4:7–9,
6:35–39. Native applications 112, i.e., applications that can be “accessed
and controlled at general purpose computer 104,” can be interfaced with
audio command interface 108 “by installing an applications program
interface (API) or other suitable data into audio command interface 108 that
identifies native applications 112 and provides available commands for
audio command interface 108 to interface with native applications 112.” Id.
at 4:26–43.
Figure 4 of the ’679 patent, reproduced below, illustrates a method
“for using voice commands from a mobile device to remotely access and
control a general purpose computer.” Id. at 7:50–53.
IPR2020-01018
Patent 10,491,679 B2
9

Figure 4 of the ’679 patent is a flow chart “for using voice commands from a
mobile device to remotely access and control a general purpose computer.”
Id. The method begins at 402/404 “where a call is received from a mobile
device” and “a session is established with the mobile device.” Id. at 7:53–
55, 7:61. “At 406, it is determined whether a voice or data command has
been received,” and if so, the method “proceeds to 410,” where “the voice or
data command is decoded.” Id. at 8:10–11, 8:23–25. “At 412, it is
determined whether the command is an operating system command,” and if
it is, the method “proceeds to 414 where the operating system command is
executed.” Id. at 8:32–36. If the received command is not an operating
IPR2020-01018
Patent 10,491,679 B2
10
system command, the method “proceeds to 416 where it is determined
whether a native application command has been received,” and if so, “the
method then proceeds to 418 where the command is executed.” Id. at 9:39–
42, 9:46–49. Otherwise, “the method proceeds to 420 where an error
message is generated.” Id. at 9:50–52.
Regardless of whether an operating system or native application
command is executed at steps 414 or 418, respectively, “[a]t 422, the audio
output data, video output data, or audio and video output data, generated at
the computer is converted to a mobile device format.” Id. at 8:61–63.
At 424, the converted data is then “transmitted to the mobile device.” Id.
at 9:11–13. “The method then proceeds to 426,” where “it is determined
whether a response has been received from the mobile device.” Id. at 9:26–
29. “If no response has been received, the method proceeds to 428 and
terminates.” Id. at 9:29–30. Conversely, if a response is received, “the
method then returns to 406.” Id. at 9:37–38.
C. Illustrative Claim
Claims 1, 3, 5, and 7 are independent claims, and claims 2, 4, 6, and 8,
respectively, depend from them. Ex. 1001, 10:7–12:16. Claim 1 is
illustrative of the challenged claims and is reproduced below.
1. A method of accessing and controlling a computer from a
mobile device, comprising:
receiving audio data from the mobile device, at the
computer, at an audio command interface;
the audio command interface decodes the audio data into a
command;
the audio command interface selects, from at least one
operating system and at least one application, one operating
system or one application, wherein the audio command
interface decides is the appropriate operating system or
IPR2020-01018
Patent 10,491,679 B2
11
application to execute at least one process in response to the
command;
executing with the selected operating system or application
the at least one process in response to the command;
generating output data in response to the selected operating
system or application executing the at least one process; and
transmitting the output data to the mobile advice.
Ex. 1001, 10:7–25.
D. Level of Ordinary Skill in the Art
Petitioner identifies a person of skill in the art (“POSITA”) at the time
of the invention as someone that would have had “at least a bachelor’s
degree in electrical engineering, computer science, or a related subject or the
equivalent or closely-related field . . . , and one or more years of experience
working with audio input systems.” Pet. 8 (citing Ex. 1003 ¶¶ 29–31).
Patent Owner does not dispute Petitioner’s description of the educational
requirements of a person of ordinary skill in the art, but argues the field of
invention is “computer operating systems, and more specifically . . . using
voice commands from a mobile device to remotely access and control a
computer.” PO Resp. 3–4. Therefore, Patent Owner argues, a person skilled
in the art “would need at least 5 years of experience working on actual
implementations of the above disciplines in industry, government, and/or
academia.” Id. at 4 (emphasis omitted).
“[T]he level of skill in the art is a prism or lens through which a judge,
jury, or the Board views the prior art and the claimed invention.” Okajima v.
Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The level of skill in the art
should be commensurate with the problems and solutions disclosed in the
prior art. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). For the
reasons discussed in § II.F.3, infra, we find the field of invention is voice
IPR2020-01018
Patent 10,491,679 B2
12
activated computing. Accordingly, we determine a person of ordinary skill
in the art would have had a bachelor’s degree in electrical engineering,
computer science, or a related field, and three years of experience working
on voice activated computing.
E. Claim Construction
In inter partes reviews, we interpret a claim “using the same claim
construction standard that would be used to construe the claim in a civil
action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2019). Under that
standard, the “words of a claim ‘are generally given their ordinary and
customary meaning.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
Cir. 2005) (en banc). The ordinary and customary meaning of a claim term
applies “unless the patentee demonstrated an intent to deviate from [it] . . .
by redefining the term or by characterizing the invention in the intrinsic
record using words or expressions of manifest exclusion or restriction,
representing a clear disavowal of claim scope.” Teleflex, Inc. v. Ficosa N.
America Corp., 299 F.3d 1313, 1327 (Fed. Cir. 2002); see also Hill-Rom
Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014). Thus,
although we “look to the specification and prosecution history to interpret
what a patentee meant by a word or phrase in a claim,” we do not read
“extraneous limitations . . . into the claims from the specification or
prosecution history” absent an express definition or clear disavowal of claim
scope. Bayer AG v. Biovail Corp., 279 F.3d 1340, 1348 (Fed. Cir. 2002).
Only those claim terms in controversy need to be construed, and only to the
extent necessary to resolve the controversy. See Nidec Motor Corp. v.
Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).
Petitioner avers that because “the claims are obvious under any
reasonable construction . . . no claim requires construction beyond its plain
IPR2020-01018
Patent 10,491,679 B2
13
meaning.” Pet. 8. Patent Owner argues the terms “audio command
interface” and “mobile device interface” require construction. See PO Resp.
4–12.
1. Audio Command Interface
Patent Owner argues this limitation should be construed to mean:
[A] functional component of a computer, which may be
implemented in hardware, software, or a suitable combination
of hardware and software, that enables a mobile device to
access and control one or more operating systems and/or one or
more applications at the computer without requiring voice
command interoperability between the mobile device and each
separate operating system or application.
PO Resp. 6. Patent Owner argues its proposed construction is supported by
the Specification, prosecution history, and a dictionary definition of
“interface.” Id. at 7–9 (quoting Ex. 1001, 2:38–45, 4:45–57, 7:36–49;
Ex. 1008, 379–380, 476–492; Ex. 2002, 193; citing Ex. 2013 ¶ 45).4
Petitioner replies that Patent Owner’s construction (a) improperly
reads limitations from the rest of the claim into the audio command
interface, (b) cites to portions of the Specification that either do not describe
the audio command interface or that describe exemplary embodiments, and
(c) cites to a prosecution history that failed to limit the meaning or disavow
claim scope for an audio command interface. Pet. Reply 2.
We agree with Petitioner. Neither the Specification nor the
prosecution history defines or limits the plain and ordinary meaning of an
audio command interface; nor do any of the passages cited by Patent Owner.

4 Patent Owner cites to pages 476–492 of Exhibit 1002. See PO Resp. 9;
Ex. 1002. The subject matter Patent Owner describes, however, can be
found in Exhibit 1008, the prosecution history of the parent to the ’679
patent. See Ex. 1008, 476–492. We correct the citation here.
IPR2020-01018
Patent 10,491,679 B2
14
See PO Resp. 7–9 (citing/quoting Ex. 1001, 2:38–45, 4:45–57, 7:36–49).
Although the Specification describes audio command interface 108 as a
component of system 100 “implemented in hardware, software, or a suitable
combination of hardware and software,” system 100 is an “exemplary”
embodiment rather than a limiting embodiment. Ex. 1001, 2:21–24, 2:38–
45. In any event, all computer components can be implemented as
hardware, software or suitable combinations of hardware and software.
Similarly, although the Specification distinguishes system 100 over
prior art systems requiring “voice command interoperability,” it does not
identify audio command interface 108 as the component that distinguishes
system 100 over the prior art. Id. at 4:45–57. Regardless, as discussed
above, system 100 is described as an “exemplary” rather than a limiting
embodiment. Id. at 2:21–24. Moreover, contrary to Patent Owner’s
contention, the prosecution history did not limit the plain and ordinary
meaning of an audio command interface. See PO Resp. 9. Although the
applicant amended claims to recite an audio command interface and argued
the audio command interface eliminated the need for “voice command
interoperability,” the amended claims were subsequently abandoned after
further rejection by the Examiner. See Ex. 1008, 477–486 (amending claims
1–12 to recite an audio command interface); id. at 416 (continued rejection
of claims 1–12), id. at 304 (cancellation of claims 1–12).
Finally, although the Specification discloses “system 300 provides an
audio command interface that allows a person to use voice commands from
mobile device 102 to access and control native applications or operating
system functions,” it does not limit the audio command interface to one that
receives voice commands from a mobile device. Ex. 1001, 7:36–49. First,
like system 100, system 300 is an “exemplary” rather than a limiting
IPR2020-01018
Patent 10,491,679 B2
15
embodiment. Id. at 5:62–64. Second, all of the independent claims
expressly require the audio command interface to receive data from a mobile
device. Id. at 10:9–10, 10:32–33, 10:55–57, 11:15–17. This strongly
suggests the audio command interface is not limited to receiving data from a
mobile device. See Phillips, 415 F.3d at 1314 (explaining that “the context
in which a term is used in the asserted claim can be highly instructive,” for
example, a claim referring to steel baffles “strongly implies that the term
‘baffles’ does not inherently mean objects made of steel.”); see also Apple,
Inc. v. Ameranth, Inc., 842 F.3d 1229, 1237 (Fed. Cir. 2016) (“Construing a
claim term to include features of that term already recited in the claims
would make those expressly recited features redundant.”). Third, the
Specification discloses the audio command interface can receive data from
non-mobile devices. For example, it discloses “audio command interface
108 receives data from mobile device interface 106,” which includes
network interface 202, which “can monitor a modem, such as a PSTN
modem, cable modem, DSL modem, or other suitable modems for incoming
data traffic that indicates mobile device 102 or other suitable devices are
attempting to interface with general purpose computer 104.” Ex. 1001,
3:45–48, 4:64–67, 5:8–14, Fig. 2 (emphasis added).
Accordingly, for all of the reasons discussed above, we find the term
“audio command interface” has its plain and ordinary meaning and does not
require express construction.
2. Mobile Device Interface
Patent Owner argues this limitation should be construed to mean “a
functional component of a computer, which may be implemented in
hardware, software, or a suitable combination of hardware and software, that
enables the computer to communicate with a mobile device through an
IPR2020-01018
Patent 10,491,679 B2
16
appropriate communications medium.” PO Resp. 10. Patent Owner argues
this construction is supported by the Specification and a dictionary definition
of “interface.” Id. at 10–12 (quoting/citing Ex. 1001, 2:1–3, 3:13–43, 4:64–
5:5; 5:20–52, Fig. 2; Ex. 2002, 193; Ex. 2013 ¶ 46). Petitioner argues this
limitation does not need construction, but “agrees that P[atent] O[wner’s]
construction is reasonable.” Pet. Reply 2. Patent Owner responds that
because the meaning of this term “is not immediately apparent,” it requires
express construction. PO Sur-Reply 2 (citing Ex. 2013 ¶ 46).
In the institution phase, we preliminarily agreed with and adopted
Patent Owner’s construction of this term as our own. See Dec. Inst. 11.
However, as noted above, the Specification discloses mobile device interface
106 can monitor a network interface card or “a PSTN modem, cable modem,
DSL modem, or other suitable modems for incoming data traffic that
indicates mobile device 102 or other suitable devices are attempting to
interface with general purpose computer 104.” Ex. 1001, 4:64–67, 5:8–14,
Fig. 2 (emphasis added). Thus, a mobile device interface is not limited to an
interface between a computer and a mobile device. Regardless, because our
Decision does not depend on the precise meaning of this term, we construe
mobile device interface to include hardware, software, or a combination
thereof that enables communication between a computer and a mobile
device. See Nidec, 868 F.3d at 1017.
F. Obviousness over Wong and Beuaregard
Petitioner argues claims 1–8 are unpatentable as obvious over Wong
and Beauregard. Pet. 9–55. Patent Owner disagrees. PO Resp. 28–49. For
the reasons discussed below, Petitioner has established by a preponderance
of evidence that claims 1–8 are unpatentable over Wong and Beauregard.
IPR2020-01018
Patent 10,491,679 B2
17
1. Wong
Wong discloses a system and method allowing “mobile electronic
device users to access and manipulate collections of electronic files stored
on a computer from their mobile device using voice commands.” Ex. 1004
¶ 12. Wong’s method is illustrated in Figures 3 and 4a. Figure 3 is
reproduced below.

Figure 3 of Wong is a flow chart illustrating an exemplary method for using
a mobile device to process electronic files. Id. ¶ 34. At steps 302/304,
photo server application 220 on PC (personal computer) 210 creates
keyword database 225 and index 227 for stored digital photos 224. Id. ¶ 35,
Figs. 2, 3. At steps 306–310, photo server application 220 monitors
IPR2020-01018
Patent 10,491,679 B2
18
Internet 208 for a connection request from smart phone 202 and, upon
receiving a request, authenticates smart phone 202. Id. ¶¶ 35–36, Figs. 2, 3.
At step 312, photo server application 220 receives one or more commands
from smart phone 202; these can include commands to “send[] a list of
keywords to the device, send[] a particular photo to the device, [or] store a
voice recording . . . about a particular photo” in database 225. Id. ¶ 37. The
commands can be “voice commands or commands related through . . . key
strokes, mouse inputs, stylus inputs, etc.” Id. ¶ 38. At step 314, “PC 210
executes the commands received at block 312 and transmits data and/or files
to the [smart phone] device (or some other device) as required by the
received command.” Id. ¶ 41.
As indicated above, the command received at step 312 may be a voice
command. Id. ¶ 38. If so, the command is processed according to the
method depicted in Figure 4a of Wong, which is reproduced below.

Figure 4a of Wong is a flow chart illustrating audio command processing by
PC 210. Id. At steps 402/404, speech engine 213 in PC 210 determines
whether a received command is a voice command and, if it is, parses the
IPR2020-01018
Patent 10,491,679 B2
19
command to identify a command word and a keyword. Id. ¶¶ 38–39,
Figs. 2, 4a. At steps 406–412, PC 210 or photo server application 220
searches keyword database 225 “to identify a match with the parsed
command.” Id. ¶ 39. “If a matching keyword is found . . . then the
command is executed at block 412 (which is, in effect, block 314 of
FIG. 3),” and PC 210 “transmits data and/or files to the [smart phone] device
(or some other device) as required by the received command.” Id. ¶¶ 40–41.
2. Beauregard
Beauregard discloses “[a] system and method that allows a user to use
their everyday language or user defined words to operate a computer in a
highly efficient way.” Ex. 1005, code (57). Beauregard’s system includes a
microkernel engine or MIKE 330, which is shown in Figure 4, reproduced
below.

Figure 4 of Beauregard is block diagram showing a detailed view of
Beauregard’s MIKE 330. Id. at 28:18. At user input 310, a user can enter
IPR2020-01018
Patent 10,491,679 B2
20
input via a keyboard, mouse selection, or microphone. Id. at 16:47–62. If
the user input is entered via microphone, the input is converted into text via
conventional voice-to-text software. Id. at 14:5–8. The generated text is
provided to command interpreter 430 via AW services 460. Id. at 28:65–
29:1. Command interpreter 430 sends the text to fetcher 420, which
searches wordbase 340 for matching action words. Id. at 28:56–64.
Wordbase 340 is a repository “where all third party applications register
their set of action words” and associated scripts. Id. at 17:24–36. The
scripts contain one or more “commands [that] can range from a simple word
replacement to a call to an application program.” Id. at 30:3–5. When
fetcher 420 finds a matching action word in wordbase 340, it sends the script
associated with that action word to command interpreter 430, which
executes the script. Id. at 5:40–46, 29:9–14. The script can be a command
service that “causes an operation to be performed by a software application,
a utility program, or by the operating system.” Id. at 28:11–13.
3. Whether Wong and Beauregard are Combinable
Petitioner argues Wong and Beauregard are combinable because they
are in the same field of endeavor, namely, “systems and methods of
accessing and controlling a computer using voice commands.” Pet. 13–14
(citing Ex. 1003 ¶¶ 51, 61; Ex. 1004 ¶¶ 12, 33, 68; Ex. 1005, 5:19–22).
Patent Owner disagrees, arguing the teachings of Wong and Beauregard
cannot be combined because Beauregard is not analogous art. PO Resp. 45–
48. Patent Owner argues the field of endeavor of the ’679 patent is “using
voice commands from a mobile device to remotely access and control a
computer” and that Beauregard is not in this field of endeavor because it
uses a microphone to enter voice commands and “does not disclose or teach
anything related to mobile devices.” Id. at 46–48. Patent Owner further
IPR2020-01018
Patent 10,491,679 B2
21
argues that Beauregard is not reasonably pertinent to a problem confronting
the inventor of the ’679 patent because it “has nothing to do with the
problems involved in the use of voice commands from a mobile device to
access and control a computer.” Id. at 48–49.
A reference is analogous art if it is (a) “within the field of the
inventor’s endeavor” or (b) “reasonably pertinent to the particular problem
with which the inventor was involved.” In re Deminski, 796 F.2d 436, 442
(Fed. Cir. 1986). The field of endeavor is determined “by reference to
explanations of the invention’s subject matter in the patent application,
including the embodiments, function, and structure of the claimed
invention.” In re Bigio, 381 F.3d 1320, 1325–26 (Fed. Cir. 2004). A
reference is within an inventor’s field of endeavor when it has “essentially
the same function and structure” as the claimed invention. Deminski, 796
F.2d at 442. A reference is reasonably pertinent to a problem the inventor
was involved with if it “logically would have commended itself to an
inventor’s attention in considering his problem.” In re Clay, 966 F.2d 656,
659 (Fed. Cir. 1992). The scope of analogous art is to be construed broadly.
See Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010)
(indicating KSR[5] “directs us to construe the scope of analogous art
broadly”).
The ’679 patent identifies its field of invention as “computer operating
systems” or “using voice commands from a mobile device to remotely
access and control a computer.” Ex. 1001, 1:7–12. The mobile device can
be a “laptop . . . or other suitable mobile device that allows communication
with a computer via a wireless or wire-line network.” Id. at 2:31–36, 2:62–

5 KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 402 (2007)
IPR2020-01018
Patent 10,491,679 B2
22
65, Fig. 1. Figure 4 of the ’679 patent illustrates a method “for using voice
commands from a mobile device to remotely access and control a general
purpose computer.” Id. at 7:50–52. All steps of the method are performed
by computer 104, which receives a call from a mobile device (step 402) by
monitoring a network interface card or a modem connected to a wired
communications medium for incoming data from a cell phone, tablet, laptop,
or other suitable devices. Id. at 2:31–37, 2:62–3:2, 3:18–32, 4:64–5:16, 5:8–
17, 7:53–9:65, Fig. 4. The incoming data need not be received from a
cellular phone or over a wireless network. Accordingly, the field of
endeavor of the ’679 patent is voice activated computing. See Unwired
Planet, LLC v. Google Inc., 841 F.3d 995, 1001 (Fed. Cir. 2016) (finding the
field of endeavor “is not limited to the specific point of novelty, the
narrowest possible conception of the field, or the particular focus within a
given field”).
Wong discloses “voice activated mobile computing devices” and
“processing files from mobile computing device using voice commands.”
Ex. 1004 ¶ 2. Wong’s method allows “mobile electronic device users to
access and manipulate collections of electronic files stored on a computer
[PC 210] from the mobile device using voice commands.” Id. ¶ 12. Thus,
like the ’679 patent, Wong’s field of endeavor is voice activated computing.
Beauregard discloses a semantic user interface (SUI) for a computer
that allows a user to access the computer via a set of user defined words.
Ex. 1005, 1:11–16. The SUI allows a user “to enter action words and
interact with the system to control the operations of the computer.”
Id. at 5:14–16. The action words can be entered by voice, in which case
“voice-to-text software is provided to translate the voice signals.” Id.
at 8:36–40. Thus, like Wong and the ’679 patent, Beauregard’s field of
IPR2020-01018
Patent 10,491,679 B2
23
invention is also voice activated computing. Alternatively, because
Beauregard discloses converting voice signals into action words to control a
computer, Beauregard is reasonably pertinent to the invention claimed in
the ’679 patent and would have “commended itself to [the] inventor’s
attention in considering his problem.” Clay, 966 F.2d at 659.
Accordingly, for the reasons discussed above, we find Wong and
Beauregard are analogous art and, therefore, would have been combinable.
4. Reasons to Combine Wong and Beauregard
Petitioner argues that a person of ordinary skill in the art would have
found it obvious “to incorporate Beauregard’s teachings related to using
natural-language commands . . . to select the appropriate operating system
functionality or application to execute the command into Wong’s system.”
Pet. 14 (citing Ex. 1003 ¶¶ 62–69). Petitioner argues this would entail
modifying Wong “to implement Beauregard’s teachings related to
controlling an operating system and applications using natural-language
commands using one or more components of MIKE 330 to access a database
mapping such commands.” Id. at 15 (citing Ex. 1003 ¶ 64). Petitioner
argues this modification of Wong “would have simply required the
application of known techniques . . . to improve a similar device . . . in the
same way” because both Wong and Beauregard “are related to executing
voice commands using keyword matching.” Id.
Patent Owner does not dispute Petitioner’s rationale for combining the
teachings of Wong and Beauregard. See PO Resp. 57–60. Instead, Patent
Owner argues that Petitioner’s reasoning suffers from hindsight bias because
Petitioner “failed to address why one of ordinary skill at the time of the
invention . . . would be motivated to combine Wong and Beauregard.” Id.
at 57 (citing InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F3d 1327,
IPR2020-01018
Patent 10,491,679 B2
24
1352 (Fed. Cir. 2014)). Patent Owner also argues that Petitioner’s
obviousness analysis fails because “Petitioner failed to consider, or even
mention, any objective evidence of nonobviousness in its Petition.” Id.
at 60.
Petitioner replies that any reasonable person would understand its
reasons to combine Wong and Beauregard were provided as of June 4, 2007,
because the Petition identified that date as the priority date of the ’679 patent
and its expert described the qualifications of a person of ordinary skill in the
art as of that date. Pet. Reply 13–14 (citing Pet. 1, 14–18, Ex. 1003 ¶¶ 29–
31). Petitioner further argues that it did not need to consider secondary
considerations because Patent Owner “provided no evidence of secondary
indicia of nonobviousness for Petitioner to consider.” Id. at 14 (citing In re
GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995)).
We find Petitioner has articulated sufficient reasoning with rational
underpinning to demonstrate why a person of ordinary skill in the art would
have been motivated to combine the teachings of Wong and Beauregard at
the time of the invention. Petitioner’s analysis relies on and cites the
declaration of Mr. McNair. See Pet. 14–18 (citing Ex. 1003 ¶¶ 62–69).
Mr. McNair testifies that he had been informed “that a person cannot obtain
a patent . . . if the differences between the invention and the prior art are
such that the subject matter as a whole would have been obvious to a person
having ordinary skill in the art . . . at the time of the invention.” Ex. 1003
¶ 12. Mr. McNair further testifies that he had been informed “that for a
patent claim to be found obvious, the proper perspective to consider is that
of a person having ordinary skill in the art . . . at the time of the invention.”
Id. ¶ 14. Based on this testimony, we conclude that Petitioner’s reasoning
for why a person skilled in the art would have combined the teachings of
IPR2020-01018
Patent 10,491,679 B2
25
Wong and Beauregard pertain to why that person would have done so at the
time of the invention. Id. ¶¶ 62–66. To find otherwise would be to adhere
to a “[r]igid preventative rule[] that den[ies] factfinders recourse to common
sense,” which the Supreme Court found is “neither necessary under our case
law nor consistent with it.” KSR, 550 U.S. at 421.
The InTouch decision does not dissuade us from reaching this
conclusion. The Federal Circuit’s holding in InTouch was “that there [was]
no evidence, much less substantial evidence, from which the jury could
conclude that [the prior art] disclose[d] [a claimed element], notwithstanding
[the expert’s] conclusory opinion to the contrary.” InTouch, 751 F.3d
at 1351. The Federal Circuit’s other findings in InTouch, upon which Patent
Owner relies, are dicta predicated on the assumption that the prior art had in
fact disclosed the claim element the Federal Circuit found to be missing. Id.
(“Even assuming [the prior art] disclosed the [missing claim element] there
is insufficient evidence on this record of a reason or motivation for one of
ordinary skill in the art at the time of the invention to combine [the prior
art].”).
Moreover, the dicta in InTouch are not particularly relevant given the
particular facts in this case. First, the Federal Circuit faulted the InTouch
expert for failing “to provide the necessary ‘articulated reasoning with some
rational underpinning’ to support a conclusion of invalidity based on the[]
combinations” of references asserted in that case. Id. (quoting KSR, 550
U.S. at 418). By contrast, Mr. McNair has opined that a person of ordinary
skill in the art would have modified Wong to use Beauregard’s database in
order to control multiple applications or the operating system because doing
so amounted to applying “known techniques . . . to improve a similar device
. . . in the same way.” Pet. 15 (citing Ex. 1003 ¶ 64). The Supreme Court
IPR2020-01018
Patent 10,491,679 B2
26
has expressly endorsed this type of reasoning. See KSR, 550 U.S. at 417 (“if
a technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill”).
Second, the Federal Circuit faulted the InTouch expert for failing “to
address why one of ordinary skill in the art at the time of the invention . . .
would be motivated to combine these references.” InTouch, 751 F.3d
at 1352. By contrast, Mr. McNair’s opinions regarding combining the
teachings of Wong and Beauregard are made with the understanding that
“the obviousness inquiry should be done through the eyes of a person having
ordinary skill in the art at the time of the invention,” and that “the proper
perspective to consider is that of a person having ordinary skill in the art . . .
at the time of the alleged invention.” Ex. 1003 ¶¶ 12, 14, 63–64 (emphases
added).
Third, the Federal Circuit faulted the InTouch expert for failing “to
account for objective evidence of nonobviousness” that had been introduced
by the patentee in that case. InTouch, 751 F.3d at 1348, 1352. By contrast,
Patent Owner has not introduced any evidence of secondary considerations
of nonobviousness in this case despite bearing the burden of producing such
evidence. See PO Resp. 1–60; PO Sur-Reply 1–25; see also GPAC, 57 F.3d
at 1580; see also Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1360 (Fed. Cir.
2007) (placing burden on the opponent of invalidity to come forward with
evidence to counter evidence of invalidity); Winner Int’l Royalty Corp. v.
Wang, 202 F.3d 1340, 1350 (Fed. Cir. 2000) (placing burden on patentee to
introduce object indicia of non-obviousness). Accordingly, there was no
secondary considerations evidence for Petitioner or its expert to consider.
IPR2020-01018
Patent 10,491,679 B2
27
5. Claim 1
a) Receiving audio data from a mobile device at a computer’s audio
command interface
Claim 1 recites a method of accessing and controlling a computer
from a mobile device, comprising receiving audio data from the mobile
device, at the computer, at an audio command interface. Ex. 1001, 10:7–10.
Notwithstanding Patent Owner’s arguments to the contrary, discussed
infra, Petitioner demonstrates how the combination of Wong and
Beauregard teaches this limitation. See Pet. 18–27. First, Petitioner
demonstrates how Wong discloses an audio command interface that receives
audio data from a mobile device. See Pet. 18–23 (citing Ex. 1004 ¶¶ 12, 25,
30–33, 37–39, 43, Figs. 2, 3, 4a; Ex. 1003 ¶ 69). Wong discloses “a way for
mobile electronic device users to access and manipulate collections of
electronic files stored on a computer” by receiving voice commands sent
from mobile device 202 at speech engine 213 in PC 210 in order to control
application 220. Ex. 1004 ¶¶ 12, 32, Figs. 2, 3, 4a. Second, for the reasons
discussion in § II.F.4, supra, Petitioner demonstrates why a person skilled in
the art “would have been motivated to modify, and would have reasonably
expected success in modifying, Wong’s speech engine to incorporate
Beauregard’s more specific teaches related to the logic of an audio
command interface (e.g., MIKE 330).” Pet. 27.
Patent Owner argues Wong’s speech engine is not an audio command
interface because it (a) “merely performs speech-to-text translation” and
(b) “does not enable a mobile device to access and control one or more
operating systems and/or one or more applications . . . without requiring
voice command interoperability between the mobile device and each
separate operating system or application” (i.e., it doesn’t meet Patent
IPR2020-01018
Patent 10,491,679 B2
28
Owner’s proposed construction of the term “audio command interface”).
See PO Resp. 31–32. We disagree.
First, for the reasons discussed in § II.E.1, supra, we disagree with
Patent Owner’s proposed construction of the term “audio command
interface,” and find the term has its plain and ordinary meaning. Second, we
find Wong’s speech recognition engine 213 meets that plain and ordinary
meaning because it is an interface between smart phone 202 and
application 220 that receives a command from smart phone 202 (Figure 3,
step 312) and “parses the command” (Figure 4a, step 404) in order to
“identify voice commands and keywords” that can be executed to control
operation of application 220. Ex. 1004 ¶¶ 32, 39, 41, Figs. 2, 3, 4a.
Moreover, when Wong’s speech engine 213 is modified to include
Beauregard’s logic to locate scripts associated with commands and to
execute the scripts in order “to launch [] application program(s) 118 or to
control functions and features of application program(s) 118,” the
combination teaches accessing and controlling one or more operating
systems or applications without requiring voice command interoperability.
See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“[T]he test
[for obviousness] is whether the references, taken as a whole, would have
suggested appellant’s invention to one or ordinary skill in the . . . arts at the
time the invention was made. . . . Thus, [Wong] must be read, not in
isolation, but for what it fairly teaches in combination with the prior art as a
whole.”).
Patent Owner further argues that the audio command interface
limitation is not met because a person skilled in the art “would not have
looked to Beauregard’s teachings related to MIKE 330 if the [person] was
considering modifying Wong’s speech engine for receiving audio data”
IPR2020-01018
Patent 10,491,679 B2
29
because Beauregard’s MIKE 330 receives text recognized by third-party
voice recognition software and “has nothing to teach regarding receiving
audio data.” PO Resp. 32–33. We disagree.
Petitioner does not propose modifying Wong’s system to bodily
incorporate MIKE 330. See Pet. 14–18. Instead, Petitioner proposes
modifying Wong’s speech engine 213 to allow it to select at least one
operating system or at least one application in response to receiving an audio
command based on Beauregard’s teachings. See Pet. 15 (arguing a person
skilled in the art “would have been motivated to modify Wong’s system to
implement Beauregard’s teachings related to controlling an operating
system and applications using natural-language commands using one or
more components of MIKE 330 to access a database mapping such
commands”); id. at 14 (arguing that when “[c]ombined with Beauregard’s
teachings, Wong’s speech engine would include logic . . . to access a
database, like Beauregard’s wordbase, that maps voice input to commands
for various operating system and application functions, as opposed to a
database dedicated to a single application.”). “Non-obviousness cannot be
established by attacking references individually where the [challenge] is
based upon the teachings of a combination of references.” Merck, 800 F.2d
at 1097.
b) decoding the audio data into a command at the audio command
interface
Claim 1 requires the audio command interface to decode the audio
data into a command. Ex. 1001, 10:11–12. Notwithstanding Patent Owner’s
arguments to the contrary, discussed infra, Petitioner demonstrates how the
combination of Wong and Beauregard teaches this limitation. See Pet. 27–
29 (citing Ex. 1003 ¶¶ 49, 55–59, 63–69). First, Petitioner demonstrates
IPR2020-01018
Patent 10,491,679 B2
30
how Wong’s speech recognition engine 213 decodes received audio data
into a command. Id. at 27–28 (citing Ex. 1004 ¶¶ 25, 32, 39, 43, Fig. 4a).
Wong discloses PC 210 receives voice commands from smart phone 202 and
speech recognition engine 213 “parses the command[s]” in order to “identify
voice commands and keywords.” Ex. 1004 ¶¶ 32, 37–39. Second,
Petitioner demonstrates how Beauregard’s MIKE 330 includes logic for
recognizing a command from received audio data that has been converted
into text. See Pet. 28–29 (citing Ex. 1005, 28:58–29:12, 30:1–7, Fig. 4).
Beauregard discloses converting voice data to text, and providing the text to
MIKE 330’s command interpreter 430. Ex. 1005 28:65–29:1, Fig. 4.
Command interpreter 430 passes the text to fetcher 420, which searches
wordbase 340 for matching action words. Id. at 28:56–59. If a matching
action word is found, fetcher 420 sends a script associated with the action
word back to command interpreter 430. Id. at 29:9–12.
Patent Owner argues this limitation is not met because Wong’s
speech recognition engine “parses” audio data (i.e., performs simple speech-
to-text translation) rather than decoding the audio data into a command. PO
Resp. 34–35 (citing Ex. 1004 ¶ 45). We disagree.
First, Wong expressly discloses “speech recognition engine 213 [] is
configured to identify voice commands and keywords.” Ex. 1004 ¶ 32
(emphasis added). Second, Patent Owner’s argument that Wong’s speech
engine translates audio data into text without identify a command is based
on an embodiment of Wong that Petitioner does not rely on. Petitioner’s
argument relies on Wong’s first embodiment in which speech recognition
engine 213 on PC 210 identifies commands in voice data received from
smart phone 202. See Pet. 27–28 (citing Ex. 1004 ¶¶ 25, 32, 39, 43, Fig. 4a);
see also Ex. 1004 ¶ 43 (describing Figure 4a as depicting an embodiment
IPR2020-01018
Patent 10,491,679 B2
31
that “records a voice command at the mobile device and downloads the
voice command to the home PC 210 as an audio note”). By contrast, Patent
Owner’s argument relies on Wong’s second embodiment in which speech
recognition module 240 on smart phone 202 performs text recognition on
voice data at smart phone 202 and sends a text message to PC 210. See PO
Resp. 35 (quoting Ex. 1004 ¶ 45); see also Ex. 1004 ¶ 45 (“FIG. 4b is a flow
diagram 220 that depicts an exemplary command processing technique
performed on a mobile device.”)
Patent Owner further argues that the decoding limitation isn’t met
because “Beauregard discloses the audio data being sent to a third-party
voice-to-text software . . . and the translated text [being] sent to the fetcher.”
PO Resp. 37. Therefore, Patent Owner argues, “Beauregard does not
disclose or teach an audio command interface that decodes audio data into a
command.
Patent Owner’s argument does not dissuade us from finding that
Petitioner has demonstrated how the combination of Wong and Beauregard
teaches the decoding limitation. As discussed in § II.F.5.a, supra, Petitioner
identifies Wong’s speech engine 213 as an audio command interface and
proposes modifying speech engine 213 to include logic from Beauregard’s
MIKE 330 to allow it to identify commands for at least one operating system
and at least one application, i.e., to identify commands for operating systems
and applications in addition to Wong’s application 220. “Non-obviousness
cannot be established by attacking references individually where the
[challenge] is based upon the teachings of a combination of references.”
Merck, 800 F.2d at 1097.
IPR2020-01018
Patent 10,491,679 B2
32
c) selecting an operating system or application to execute a process
in response to the command at the audio command interface
Claim 1 further requires the audio command interface to select one
operating system or one application from at least one operating system and
at least one application that the audio command interface decides is the
appropriate operating system or application to execute at least one process in
response to the command. Ex. 1001, 10:13–18. Notwithstanding Patent
Owner’s arguments to the contrary, discussed infra, Petitioner demonstrates
how the combination of Wong and Beauregard teaches this limitation. See
Pet. 29–32 (citing Ex. 1005, 5:42–46, 9:5–26, 10:12–21, 10:41–65, 16:41–
46, 17:37–41, 27:47–28:16, Figs. 4, 10; Ex. 1003 ¶¶ 63–69).
As discussed above, Wong’s speech recognition engine 213 is an
audio command interface that receives audio data from a mobile device and
decodes the audio data into a command. See Ex. 1004 ¶¶ 12, 32, 39, Figs. 2,
3, 4a. Wong then searches keyword database 225 “to identify a match with
the parsed command” (Figure 4a, step 406) and executes the command to
control application 220 upon finding a match (Figure 4a, step 412). Id.
¶¶ 40–41, Figs. 2, 4a.
Beauregard stores a plurality of user-defined action words in a
database (wordbase 340) together with service scripts associated with the
action words. Ex. 1005, 5:12–26, 5:39–42, 17:33–36, Fig. 4. User input 310
entered into a microphone is converted to text that is forwarded to command
interpreter 430 inside MIKE 330. Id. at 15:60–63, 28:65–29:5. Command
interpreter 430 forwards the input to fetcher 420, which searches
wordbase 340 for matching action words and their associated service scripts.
Id. at 9:17–20, 28:56–64. When a match is found, fetcher 420 sends the
service script associated with the action word to command interpreter 430,
IPR2020-01018
Patent 10,491,679 B2
33
which executes the script. Id. at 5:44–46, 29:9–14, 16:41–46. The service
script may perform “a content, retrieval, navigation or command service.”
Id. at 5:42–44, 17:37–41. A content service “alters the user’s text content in
some way,” e.g., by “automatically capitalizing the first letter of proper
nouns.” Id. at 27:53–58. A command service “causes an operation to be
performed by a software application, a utility program, or by the operating
system (e.g., opening a word processing document).” Id. at 28:11–14. The
scripts that can be executed by command interpreter 430 allow users “to
launch applications, navigate within applications and control application
functions by using their natural language.” Id. at 5:49–51, 9:22–26, 10:41–
44.
Petitioner argues that a person skilled in the art would have found it
obvious to modify Wong’s system, including speech recognition engine 213
and keyword database 225, “to incorporate Beauregard’s teachings related
to logic capable of interpreting natural-language voice commands to select
from a database (e.g., wordbase [340])” commands to control a variety of
services, including commands for the operating system and multiple
applications. Pet. 32 (citing Ex. 1003 ¶¶ 63–69). We agree for the reasons
discussed in § II.F.4, supra. Thus, the combination of Wong and
Beauregard teaches an audio command interface that selects an operating
system or application to execute a process in response to a received
command that the audio command interface decides is the appropriate
operating system or application to execute the process.
Patent Owner argues the combination of Wong and Beauregard fails
to disclose the selecting limitation. See PO Resp. 39–44. Patent Owner
argues that “Wong and Beauregard are both systems where the user
preconfigures [a] database with specific instructions to be carried out when a
IPR2020-01018
Patent 10,491,679 B2
34
command is given” and “employ a matching function with a database to
locate the user’s preconfigured instructions or service scripts, which tell the
computer exactly what to do.” Id. at 43. Therefore, Patent Owner argues,
because the user “preconfigures the system with specific instructions,” the
combination fails to teach or suggest “a component that decides the
appropriate operating system or application to execute at least one process in
response to the command and then selects, from at least one operating
system and at least one application, one operating system or one
application.” Id. at 42.
Petitioner responds that the selecting limitation “do[es] not prohibit
preconfiguration” of the computer to respond to commands and that a person
skilled in the art “would have understood that . . . computer systems ‘decide’
to perform operations based on preconfigured instructions.” Pet. Reply 10
(citing Ex. 1032 ¶¶ 7–13). Petitioner further responds that, like its proposed
combination, the ’679 patent “teaches an audio command interface that ‘can
determine whether voice data corresponds to one of two or more
predetermined audio commands’ and may include a ‘file of available
commands’ that ‘can be matched with voice data.’” Id. (quoting Ex. 1001,
3:55–59, 4:7–15, 6:7–10) (emphasis omitted).
We agree with Petitioner. First, we credit the testimony of
Mr. McNair that a person skilled in the art at the time of the invention would
have known that computers “decide” which operations to perform based on
preconfigured instructions. See Ex. 1032 ¶ 7. Second, the audio command
interface described in the ’679 patent operates in the same way as the audio
command interface in Petitioner’s proposed combination, i.e., by
recognizing and executing predetermined commands. For example, the ’679
patent discloses “audio command interface 108 can determine whether voice
IPR2020-01018
Patent 10,491,679 B2
35
data corresponds to one of two or more predetermined audio commands.”
Ex. 1001, 3:55–59 (emphasis added); see also id. at 6:7–10, Fig. 3
(disclosing audio command interface 108 includes voice to command
conversion 302, which “receives voice data and determines whether the
voice data matches one or more predetermined commands”) (emphasis
added). To recognize predetermined commands for the operating system,
audio command interface 108 “include[s] a file of available operating
system commands.” Id. at 4:7–11 (emphasis added). To recognize
predetermined commands for applications, native applications 112 install
“an applications program interface (API) or other suitable data into audio
command interface 108 that identifies native applications 112” and provides
“certain predetermined commands for native applications 112.” Id. at 4:26–
36 (emphasis added).
d) Executing with the selected operating system or application the
process in response to the command
Claim 1 further requires executing the at least one process with the
selected operating system or application. Ex. 1001, 10:19–21. Petitioner
demonstrates how the combination of Wong and Beauregard teaches this
limitation. See Pet. 32–37 (citing/quoting Ex. 1004 ¶¶ 33, 37, 40, 41,
Figs. 2, 3, 4a; Ex. 1005, 5:42–46, 8:36–47, 9:5–26, 15:49–51, 17:33–36,
18:8–12, 18:45–57). Patent Owner does not dispute these contentions. See
PO Resp. 28–49.
Wong’s speech engine 213 parses received audio data to identify a
command. Ex. 1004 ¶¶ 32, 39, Fig. 4a. Wong then searches a database to
identify and execute a matching command. Id. ¶ 40. When Wong’s speech
engine 213 is modified to include logic from Beauregard’s MIKE 330 to
search Beauregard’s wordbase 340, the modified speech engine can include
IPR2020-01018
Patent 10,491,679 B2
36
Beauregard’s fetcher 420 and command interpreter 430. Fetcher 420
receives text corresponding to an action word (command), searches
wordbase 340 for a matching action word and, when a matching action word
is found, sends an associated service script to command interpreter 430,
which executes the service script. Ex. 1005, 5:44–46, 16:41–45, 17:21–22,
17:33–36, 28:65–29:14. The service script can “launch[] application
programs, control[] application program operations, replace[] . . . text,
retriev[e] . . . information, and the like.” Id. at 9:5–12.
e) Generating output data in response to executing the process
Claim 1 further requires generating output data in response to the
selected operating system or application executing the at least one process.
Ex. 1001, 10:22–24. Petitioner demonstrates how the combination of Wong
and Beauregard teaches this limitation. See Pet. 37–39 (citing/quoting
Ex. 1004 ¶¶ 37, 41, 54, 55, 68; Ex. 1005, 10:32–40, 10:58–65, 41:9–18,
46:25–30, 48:53–65). Patent Owner does not dispute these contentions. See
PO Resp. 28–49.
Wong teaches when PC 210 executes voice commands received from
a mobile device, it “transmits data and/or files to the device . . . as required
by the received commands.” Ex. 1004 ¶ 41. When Wong’s speech
engine 213 is modified to include logic from Beauregard’s MIKE 330 (e.g.,
command interpreter 430 as discussed above), command interpreter 430 can
execute a service script and “send[] all keyboard related actions
(replacements, special keys, and the like) associated with [the] fetched
action words . . . to the applications 118.” Ex. 1005, 10:22–40, 29:13–17.
Thus, the combination of Wong and Beauregard teaches generating output
data in response to the selected operating system or application executing the
process.
IPR2020-01018
Patent 10,491,679 B2
37
f) Transmitting the output to the mobile device
Claim 1 further requires transmitting the output data to the mobile
device. Ex. 1001, 10:25. Petitioner demonstrates how the combination of
Wong and Beauregard teaches this limitation. See Pet. 39–41 (citing/
quoting Ex. 1004 ¶¶ 41, 68, Fig. 3; Ex. 1003 ¶¶ 63–68). Patent Owner does
not dispute these contentions. See PO Resp. 28–49.
Wong teaches when PC 210 executes voice commands received from
a mobile device, it “transmits data and/or files to the device . . . as required
by the received commands” over a GPRS6 network. Ex. 1004 ¶¶ 41, 68.
Thus, Petitioner demonstrates that when Wong’s system is modified to
incorporate the teachings of Beauregard, “[t]he combined system would
generate output data. . . and transmit the data to the mobile device.” Pet. 41.
g) Conclusion
For the reasons discussed above, Petitioner has demonstrated by a
preponderance of evidence that all of the limitations of claim 1 are taught by
the combination of Wong and Beauregard and that a person of ordinary skill
in the art would have had a rational reason to combine the teachings from
these references at the time of the invention. Accordingly, Petitioner has
demonstrated by a preponderance of evidence that claim 1 is unpatentable
over Wong and Beauregard.
6. Claim 3
Claim 3 recites a method that is substantially similar to the method
recited in claim 1. Compare Ex. 1001, 10:30–45, with id. at 10:7–25. The
method of claim 3 differs from the method of claim 1 in the types of entities
the audio command interface can select in response to a received command.

6 General Packet Radio Service, e.g., a 2G or 3G cellular network.
IPR2020-01018
Patent 10,491,679 B2
38
In claim 1, the audio command interface can select an operating system or
an application from among at least one operating system and at least one
application. Id. at 10:13–18. In claim 3, the audio command interface can
select an application from among two or more applications. Id. at 10:36–40.
Notwithstanding Patent Owner’s arguments to the contrary, discussed
infra, Petitioner demonstrates how the combination of Wong and
Beauregard teaches all the limitations of claim 3. See Pet. 48–50. First,
given the substantial similarity between claims 1 and 3, Petitioner
demonstrates how the combination teaches the claim 3 limitations requiring
a method of controlling a computer from a mobile device by receiving audio
data at an audio command interface, decoding the audio data into a
command, executing the command with a selected application, generating
output data, and transmitting the output data to the mobile device by relying
on its analysis of claim 1. See Pet. 48; §§ II.F.5.a, II.F.5.b, and II.F.5.d–f,
supra.
Second, Petitioner demonstrates how the combination teaches the
audio command interface selects an application from among two or more
applications that the audio command interface decides is the appropriate
application to execute a process in response to the received command. See
Pet. 49–50 (quoting Ex. 1005, 16:31–46; citing Ex. 1003 ¶¶ 63–69).
Beauregard teaches using action words to “control functions and features of
application program(s) 118. Each function is performed by a service script,
which is associated with each action word within the wordbase 340.”
Ex. 1005, 16:41–46. Application programs 118 can include “word
processors, spread sheets, presentation software, utilities, and the like.” Id.
at 16:36–38. Thus, a user might use action words such as “msw” “to launch
Microsoft Word, ‘mse’ to launch Microsoft Excel, ‘msp’ to launch
IPR2020-01018
Patent 10,491,679 B2
39
Microsoft Powerpoint, ‘msa’ to launch Microsoft Access, and so on.” Id.
at 16:23–26. When Wong’s speech recognition engine is modified to
include these teachings from Beauregard, it can select an application from
among two or more applications (MS Word, MS Excel) that it decides is the
appropriate application to execute a process in response to a received
command.
Patent Owner argues Petitioner’s analysis fails for the same reasons
discussed above with respect to claim 1. See PO Resp. 33, 34, 38, 44, 45.
We disagree for the reasons discussion in §§ II.F.5.a–f, supra.
Accordingly, for the reasons discussed above, Petitioner has
demonstrated by a preponderance of evidence that claim 3 is unpatentable
over Wong and Beauregard.
7. Claims 5 and 7
Claims 5 and 7 are independent claims. Petitioner argues “[c]laim 5 is
substantively similar to claims 1 and 2. Therefore, these limitations are
obvious for the same reasons as the corresponding limitations in claims 1
and 2.” Pet. 50. Likewise, Petitioner argues “[c]laim 7 is substantively
similar to claims 1, 3, and 5. The corresponding limitations of [c]laims 1, 3,
and 5 . . . show how each limitation of claim 7 is disclosed.” Id. at 54. In
our Institution Decision, we agreed with this analysis, and characterized
claims 5 and 7 as system claims that perform the methods recited in claims 1
and 3, respectively. See Dec. Inst. 25.
Patent Owner disagrees that the limitations recited in claims 1 and 3
are substantially similar to the limitations recited in claims 5 and 7,
respectively. See PO Resp. 23–27. First, Patent Owner argues the audio
command interface recited in claims 5 and 7 differs from the audio
command interface recited in claims 1 and 3 because it performs the
IPR2020-01018
Patent 10,491,679 B2
40
additional steps of “executing” and “generating.” Id. at 26. Second, Patent
Owner argues that claims 5 and 7 recite a “mobile device interface” for
transmitting output data and Petitioner failed to mention the “mobile device
interface” and, therefore, “failed to raise arguments or submit evidence that
the ‘mobile device interface’ limitation would have been obvious.” Id. at
23–25 (citing Pet. 52, 55; Elbit Systems of America, LLC v. Thales Visionix,
Inc., 881 F.3d 1354, 1357–58 (Fed. Cir. 2018); Choirock Contents Factory
Co., Ltd. v. Saucier, 801 Fed. Appx. 754 (Fed. Cir. 2020)).
Although we agree with Patent Owner that claims 5 and 7 recite an
audio command interface that performs “executing” and “generating” steps,
Petitioner’s mapping of the Wong/Beauregard combination to the limitations
of claims 1 and 3, respectively, demonstrates how the combination’s audio
command interface performs these “executing” and “generating” limitations.
For example, Petitioner’s claim 1 analysis demonstrates how the
Wong/Beauregard audio command interface—i.e., Wong’s speech engine
213 modified to include logic from Beauregard’s MIKE 330—“executes
with the selected operating system or application the at least one process . . .
in response to the command” because once speech engine 213 identifies a
command from audio data, fetcher 420 searches wordbase 340 for a
matching command, and command interpreter 430 executes a script
associated with that command, which causes an application or the operating
system to execute a process. See Pet. 32–37; § II.F.5.d, supra.
Similarly, Petitioner’s claim 1 analysis demonstrates how the Wong/
Beauregard audio command interface “generates output data in response to
the selected operating system or application executing the at least one
process” because when command interpreter 430 executes a script it “sends
all keyboard related actions (replacements, special keys, and the like)
IPR2020-01018
Patent 10,491,679 B2
41
associated with [the] fetched action words . . . to the applications 118.”
Ex. 1005, 10:22–40, 29:13–17. Thus, Wong’s modified speech engine 213
and a selected operating system or application generate output data in
response to the selected application or operating system executing a process.
See, e.g., Pet. 31 (citing Ex. 1005, 19:13–20:10) (explaining how command
interpreter 430 can “execut[e] a service script at the operating system to
search a file directory in Windows 95”); Ex. 1006, 20:6–10 (indicating when
such a script is executed it “erases the last word type[d]—activates the
winstart key—types the letter ‘f’ that triggers the windows find tool—closes
the winstart key—waits for 600 ms—and calls in the last word typed—and
presses enter to launch the find operation”).
Petitioner’s claim 3 analysis demonstrates how the Wong/Beauregard
audio command interface performs the “executing” and “generating”
functions recited in claim 7 for the same reasons discussed above with
respect to claims 1 and 5. See § II.F.6, supra.
Regarding the “mobile device interface” limitation recited in claims 5
and 7, Petitioner’s tables that cross-reference claim 5 and 7 limitations to the
analysis of corresponding claim 1 and 3 limitations recite only the function
performed by the mobile device interface limitation (i.e., “transmitting
output data to the mobile device”) and omit the structure that performs that
function (i.e., the “mobile device interface”). See Pet. 52, 55; Ex. 1001,
10:25, 11:4–5, 12:11–12. Petitioner contends that after noting the
substantial similarity between claims 1 and 5 and claims 3 and 7,
respectively, it referenced its claim 1 analysis of the “transmitting”
limitation to show how the last limitation in claims 5 and 7 was “obvious for
the same reasons.” Pet. Reply 2–3 (citing Pet. 50, 51, 54, 90, 94). Petitioner
then argues that its claim 1 analysis of the “transmitting” limitation
IPR2020-01018
Patent 10,491,679 B2
42
explained how a person skilled in the art would have known that Wong’s
computer would have used “built-in services of the computer operating
system . . . to provide means to transmit output data to other . . . devices,”
and how these built-in services meet Patent Owner’s construction of a
“mobile device interface.” Id. at 3 (citing/quoting Pet. 39, 41; Ex. 1003
¶¶ 63–68; Dec. Inst. 26–27).
Patent Owner contends this argument is an improper new argument
that is based on the Board’s Institution Decision rather than the Petition, and
that the Board “does not have the authority ‘to raise, address, and decide
patentability theories never presented by the petitioner and not supported by
record evidence.’” PO Sur-Reply 14–15 (quoting In re Magnum Oil Tools
Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016).
We disagree, and find Petitioner has demonstrated how the
combination of Wong and Beauregard teaches the mobile device interface
limitation recited in claims 5 and 7. Although Petitioner’s cross-referencing
tables misquote the “mobile device interface” limitation by reciting the
function performed and omitting the structure that performs that function,
Petitioner’s analysis refers back to its claim 1 analysis of a limitation that
performs the same “transmitting” function. See Pet. 52, 55. Moreover,
Petitioner’s claim 1 analysis demonstrates not only how the combination of
Wong and Beauregard performs the “transmitting” function, but identifies
the structure that performs the function. Id. at 39–41 (citing/quoting Ex.
1004 ¶¶ 41, 68, Fig. 3).
Specifically, Petitioner demonstrates that Wong’s PC 210 transmits
generated output data to mobile device 202 over a GPRS network. Id. at 40–
41; Ex. 1004 ¶ 68, Fig. 3. Petitioner also demonstrates, based on the
unrebutted testimony of Mr. McNair, that a person skilled in the art would
IPR2020-01018
Patent 10,491,679 B2
43
have known that “computer applications generally used built-in services of
the computer operating system to provide a means to transmit output data to
other . . . devices.” Id. at 41 (citing Ex. 1003 ¶¶ 63–68). This testimony—
which is not needed to demonstrate how the claim 1 “transmitting”
limitation is met—demonstrates how the combination of Wong and
Beauregard teaches the claim 5 and 7 limitation that not only requires the
same “transmitting” function to be performed, but also requires the structure
that performs that function, i.e., the mobile device interface. Thus, although
Petitioner’s cross-referencing tables erroneously state the last limitation of
claims 5 and 7, Petitioner’s cross-referenced analysis demonstrates how the
“built-in services” of Wong’s computer operating system map to a “mobile
device interface at the computer [that] transmits the output data to a mobile
device.” See Pet. 41, 52, 55; § II.E.2, infra (construing “mobile device
interface” to include “hardware, software, or a combination thereof that
enables communication between a computer and a mobile device”).
We disagree with Patent Owner’s contentions that Petitioner never
raised this argument in the Petition and that the more fulsome explanation
provided in Petitioner’s Reply was new argument. As noted above, despite a
clerical error reciting the transmitting function of claims 5 and 7 but
omitting the structure that performs that function, the Petition’s analysis
cross-references the Petition’s analysis of the same transmitting function
recited in claim 1. See Pet. 52, 55. Moreover, the Petition’s analysis of
claim 1’s transmitting function demonstrates not only that Wong’s computer
performs the function, but identifies the built-in operating system services in
Wong’s computer that performs the function. Id. at 41 (citing Ex. 1003
¶¶ 63–68). The additional explanation provided in Petitioner’s Response,
which demonstrates how the “built-in services” of Wong’s computer
IPR2020-01018
Patent 10,491,679 B2
44
operating system satisfies our construction of a “mobile device interface” is
allowable under our rules. See 37 C.F.R. § 42.23(b) (allowing a petitioner to
“respond to arguments raised in the corresponding . . . patent owner
response”); see also Consolidated Trial Practice Guide (Nov. 2019)7 at 73
(allowing “the petitioner, in its reply brief, to address issues discussed in the
institution decision”).
To the extent Patent Owner disagrees that a person skilled in the art
would have understood that an operating system has “built-in services” that
transmit output data to other devices or that such “built-in services” meet our
construction of a mobile device interface, Patent Owner had the opportunity
to depose Mr. McNair and make that argument in its Sur-Reply. See
Paper 11, 8 (authorizing Patent Owner to file a sur-reply); Paper 26, 1
(stipulation moving Petitioner’s Reply date to June 28, 2021 and Patent
Owner’s Sur-Reply date to August 11, 2021); 37 C.F.R. § 42.53(d)(2)
(authorizing cross-examination testimony to take place after “the direct
testimony has been filed and more than a week before the filing date for any
paper in which the cross-examination testimony is expected to be used”).
Patent Owner chose not to avail itself of that opportunity.
Finally, we disagree with Patent Owner’s contention that the Federal
Circuit’s decisions in Elbit or Choirock dictate a different outcome. Patent
Owner cites Elbit for the proposition that Petitioner failed to meet its burden
because it failed to mention the “mobile device interface” limitation in the
Petition and Mr. McNair failed to mention the limitation in his declaration.
See PO Resp. 25; PO Sur-Reply 16. Patent Owner cites Choirock for the
proposition that Petitioner failed to meet its burden because it failed to

7 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
IPR2020-01018
Patent 10,491,679 B2
45
clearly identify where the prior art taught the “mobile device interface”
limitation. See PO Resp. 25; PO Sur-Reply 17.
Petitioner argues Elbit is inapposite because in Elbit “the prior art and
the claims employed different steps,” whereas the combination of Wong and
Beauregard “teaches the same steps as the claims.” Pet. Reply 4. Petitioner
argues Choirock is inapposite because “the [Choirock] petition did not cross-
reference” a limitation the petitioner subsequently tried to rely on, whereas
the Petition cross-references the claim 1 “transmitting” limitation to
demonstrate how the claim 5 and 7 mobile device interface limitation is met.
Id. at 4–5.
We agree with Petitioner. In Elbit, the Federal Circuit affirmed a
Board finding that the petitioner had not met its burden of proof because it
was “undisputed” that a method step in the challenged claim was “not
explicitly disclosed” in the prior art. Elbit, 881 F3d. at 1357. Moreover,
although the Elbit petitioner’s expert testified that the steps in the prior art
were “mathematically equivalent” to the claimed method step, the Board
found that testimony was “unsupported” and entitled to “little weight,” and
the Federal Circuit affirmed because “[t]he PTAB [i]s entitled to weigh the
credibility of the witnesses” and “the weight and credibility of the evidence
is the special province of the trier of fact.” Id. at 1358 (internal citations
omitted). Here, unlike in Elbit, we find Mr. McNair’s testimony that an
operating system’s “built-in services” are a means to transmit output data to
a mobile device to be credible, and agree with Petitioner that such “built-in
services” map to our construction of a “mobile device interface.” See
Pet. 41 (identifying “built-in services” as the “means to transmit output
data”); Pet. Reply 3 (demonstrating how “built-in services” map to our
construction of a mobile device interface).
IPR2020-01018
Patent 10,491,679 B2
46
In Choirock, the Federal Circuit affirmed the Board’s finding that the
Choirock petitioner’s claim limitation analysis, which cross-referenced an
earlier claim limitation analysis, was deficient because the earlier claim
limitation analysis did not mention the latter claim limitation “let alone
explain[] how that requirement was met.” Choirock, 801 Fed. Appx. at 765.
Here, by contrast, the Petition’s analysis of claims 5 and 7 reference the
Petition’s analysis of claim 1, and the Petition’s analysis of claim 1 explains
how an operating system’s “built-in services” are a “means to transmit
output data to other . . . devices,” which is the only function a mobile device
interface is required to perform per Patent Owner’s own construction. Pet.
41, 52, 55; § II.E.2, supra. Although the Petition’s claim 1 analysis does not
call these “built-in services” a “mobile device interface,” the test for whether
the prior art teaches or suggests a claim limitation “is not an ‘ipsissimis
verbis’ test.” In re Bond, 910 F.2d 831, 832–833 (Fed. Cir. 1990); see also
In re Gleave, 500 F.3d 1331, 1334 (Fed. Cir. 2009) (a prior art reference
“need not satisfy an ipsissimis verbis test”). Moreover, Petitioner’s Reply,
in addition to identifying the “built-in-services” of Wong’s computer
operating system as the structure that transmits output data to a mobile
device, demonstrates how those built-in services map to our construction of
a “mobile device interface,” which includes Patent Owner’s own proposed
construction. See Pet. Reply 3; see also § II.E.2, supra (construing “mobile
device interface” to include Patent Owner’s proposed construction).
Accordingly, for the reasons discussed above, we find Petitioner has
demonstrated by a preponderance of evidence that the limitations of claims 5
and 7 have been met for substantially the same reasons that the limitations of
claims 1 and 3 have been met. Therefore, Petitioner has demonstrated by a
IPR2020-01018
Patent 10,491,679 B2
47
preponderance of evidence that claims 5 and 7 are unpatentable over Wong
and Beauregard for the same reasons as claims 1 and 3.
8. Claims 2, 4, 6, and 8
Claim 2 depends from claim 1 and requires (a) the mobile device and
computer not to be physically connected and (b) the application selected by
the audio command interface to be installed on the computer. Ex. 1001,
10:26–29. Claim 4 depends from claim 3 and recites the same limitations.
Id. at 10:46–49. Claims 6 and 8 depend from claims 5 and 7, respectively,
and recite the same limitations. Id. at 11:6–9, 12:12–15
Petitioner demonstrates how the combination of Wong and
Beauregard teaches these limitations. See Pet. 41–47, 50, and 53–55 (citing/
quoting Ex. 1004 ¶¶ 13, 31, 33, 40, 41, 66, Figs. 2, 3, 4a; Ex. 1005, 5:19–22,
36:49–51, 55:42–58, Figs. 3, 4). Patent Owner does not dispute this. See
PO Resp. 28–49.
Wong discloses a system in which smart phone 202 is physically
separated from PC 210 by mobile network 206, yet controls application 220
installed on PC 210 to browse stored files 224 via commands interpreted by
speech engine 213. See Ex. 1004 ¶¶ 13 (disclosing using mobile device such
as smart phone 202 to browse files from a remote location), id. ¶ 31
(disclosing PC 210 is configured to communicate with smart phone 202),
id. ¶ 33 (disclosing PC 210 stores application 220 and files 224), id. ¶ 41
(disclosing PC 210 executes a received command to transmit data to mobile
device/smart phone 202), id. ¶ 61 (disclosing PC 210 and smart phone 202
need not be in proximity), Figs. 2, 3, 4a.
Accordingly, for the reasons discussed above, we find Petitioner has
demonstrated by a preponderance of evidence that claims 2, 4, 6, and 8 are
unpatentable over Wong and Beauregard.
IPR2020-01018
Patent 10,491,679 B2
48
G. Obviousness over Ben-Efraim and Balakrishnan
As discussed in §§ II.F.3–II.F.8, supra, Petitioner has shown by a
preponderance of evidence that claims 1–8 of the ’679 patent are
unpatentable as obvious over Wong and Beauregard. This finding is
dispositive of Petitioner’s challenge to the patentability of all of the
challenged claims. Accordingly, we need not address whether Petitioner has
further shown, by a preponderance of evidence, that these claims also are
unpatentable as obvious over the combination of Ben-Efraim and
Balakrishnan. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed.
Cir. 1984) (finding an administrative agency is at liberty to reach a decision
based on a single dispositive issue because doing so “can not only save the
parties, the [agency], and [the reviewing] court unnecessary cost and effort,”
but can “greatly ease the burden on [an agency] faced with a . . . proceeding
involving numerous complex issues and required by statute to reach its
conclusion within rigid time limits”).
III. CONCLUSION
We have reviewed the Petition, Patent Owner Response, Petitioner
Reply, and Patent Owner Sur-Reply. We have considered all of the
evidence and arguments presented by Petitioner and Patent Owner. We find,
on this record, Petitioner has demonstrated by a preponderance of evidence
that claims 1–8 of the ’679 patent are unpatentable as obvious over Wong
and Beauregard.8

8 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
Decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
IPR2020-01018
Patent 10,491,679 B2
49

IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that Petitioner has shown on this record that claims 1–8 of
the ’679 patent are unpatentable under 35 U.S.C. § 103(a) over Wong and
Beauregard; and
FURTHER ORDERED that this Decision is final, and a party to this
proceeding seeking judicial review of the Decision must comply with the
notice and service requirements of 37 C.F.R. § 90.2.

or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. §§ 42.8(a)(3), (b)(2).
Claims 35 U.S.C. § Reference(s) /Basis
Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
1–8 103(a) Wong, Beauregard 1–8
1–8 103(a) Ben-Efraim,
Balakrishnan
Not Decided Not Decided
Overall
Outcome
1–8
IPR2020-01018
Patent 10,491,679 B2
50
FOR PETITIONER:
Jordan M. Rossen
Roshan Mansinghani
Michelle Callaghan
UNIFIED PATENTS LLC
jordan@unifiedpatents.com
roshan@unifiedpatents.com
micelle@unifiedpatents.com
FOR PATENT OWNER:
Eric M. Adams
Tod T. Tumey
TUMEY LLP
eadams@tumeyllp.com
ttumey@tumeyllp.com