Case: 21-1248 Document: 33 Page: 1 Filed: 04/22/2022
`
`
`
`NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`ANDREA ELECTRONICS CORPORATION,
`Appellant
`
`v.
`
`APPLE INC.,
`Appellee
`______________________
`
`2021-1248
`______________________
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2017-
`00626.
`
`______________________
`
`Decided: April 22, 2022
`______________________
`
`WILLIAM D. BELANGER, Troutman Pepper Hamilton
`Sanders LLP, Boston, MA, argued for appellant. Also rep-
`resented by FRANK D. LIU; ANDREW PETER ZAPPIA, Roches-
`ter, NY.
`
` JOSHUA JOHN FOUGERE, Sidley Austin LLP, Washing-
`ton, DC, argued for appellee. Also represented by THOMAS
`ANTHONY BROUGHAN, III, JEFFREY PAUL KUSHAN; TIMOTHY
`Q. LI, New York, NY.
` ______________________
`
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`ANDREA ELECTRONICS CORPORATION v. APPLE INC.
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`
`Before MOORE, Chief Judge, REYNA and CHEN, Circuit
`Judges.
`
`CHEN, Circuit Judge.
`Patent owner Andrea Electronics Corp. (Andrea) ap-
`peals the inter partes review decision of the Patent Trial
`and Appeal Board (Board) finding claims 6–9 of U.S. Pa-
`tent No. 6,363,345 (’345 patent) unpatentable as obvious
`over Hirsch1 in view of Martin.2 Apple Inc. v. Andrea Elecs.
`Corp., No. IPR2017-00626, 2020 WL 6324693 (P.T.A.B.
`Oct. 28, 2020) (Board Decision).
`This case is before us for a second time after we re-
`manded part of the case back to the Board. Apple Inc v.
`Andrea Elecs. Corp., 949 F.3d 697 (Fed. Cir. 2020), vacat-
`ing No. IPR2017-00626, 2018 WL 3414463 (P.T.A.B. July
`12, 2018) (Prior Board Decision). In the first appeal, we
`held the Board erred by not considering an argument made
`by petitioner Apple Inc. (Apple) on reply that we held did
`not present a new legal ground and properly responded to
`arguments raised by the patent owner’s response. Id. at
`706. The reply argument was that Martin discloses a “cur-
`rent minimum” and “future minimum” in an embodiment
`involving multiple subwindows. Id. at 699, 703–04. On
`remand, the Board considered the argument and found the
`claim limitations met but failed to properly analyze the mo-
`tivation to combine Hirsch with Martin. We, therefore,
`
`
`1 H.G. Hirsch & C. Ehrlicher, Noise Estimation Tech-
`niques for Robust Speech Recognition, 1 International Con-
`ference on Acoustics, Speech, and Signal Processing 153
`(1995). J.A. 453–456.
`2 R. Martin, An Efficient Algorithm to Estimate the
`Instantaneous SNR of Speech Signals, 92 Eurospeech 1093
`(1993). J.A. 457–460.
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`ANDREA ELECTRONICS CORPORATION v. APPLE INC.
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`vacate and remand. We affirm the Board’s finding that
`Martin discloses the limitations of claim 9.
`BACKGROUND
`A
`Our previous decision discusses the relevant technol-
`ogy, purported invention, and the prior art references. We
`therefore only provide details with particular relevance to
`this appeal.
`Claims 6 through 9 are directed to an apparatus for
`canceling noise in an audio signal by detecting, for each fre-
`quency bin of the audio signal, a noise threshold using “cur-
`rent magnitude,”
`“future minimum,” and
`“current
`minimum” values. ’345 patent, claims 6–9. The current
`magnitude is the value of the audio signal at a given time.
`See id. at col. 5 ll. 35–38, col. 6 ll. 23–28. The future mini-
`mum is reset periodically to the current magnitude, and
`then updated to the current magnitude whenever the cur-
`rent magnitude is smaller than the future minimum. Id.
`at col. 6 ll. 24–32, col. 10 ll. 1–4, col. 10 ll. 9–12. The current
`minimum is initiated periodically with the value of the fu-
`ture minimum, and also follows the minimum value of the
`current magnitude. Id. at col. 6 ll. 33–41, col. 9 ll. 65–67,
`col. 10 ll. 5–8. The current minimum is used to determine
`the noise threshold, and the future minimum is used for
`initiation and refreshing of the current minimum. Id. at
`col. 6 ll. 38–57, col. 9 ll. 54–60. Based on the threshold, a
`portion of the signal that is estimated to be noise is re-
`moved in a technique called spectral subtraction. See id.
`at col. 1 ll.19–21, col. 1 l. 58–col. 2 l. 10, col. 3 ll. 11–15, col.
`3 ll. 24–45, col. 6 ll. 38–41, 58–61. The ’345 patent purports
`to differ from the prior art because its method can be used
`on audio signals that contain continuous speech rather
`than requiring a signal that contains explicit non-speech
`segments. See id. at col. 2 l. 45–col. 3 l. 15, col. 3 ll. 24–45.
`
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`ANDREA ELECTRONICS CORPORATION v. APPLE INC.
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`Independent claim 1 and dependent claims 4 and 5 to-
`gether recite an “apparatus for canceling noise” comprising
`a “threshold detector for setting a threshold for each fre-
`quency bin” of an audio signal “in accordance with a cur-
`rent minimum value,” which in turn is derived “in
`accordance with a future minimum value,” which itself is
`“determined as the minimum value of the magnitude . . .
`within a predetermined period of time.” Id. at col. 9 ll. 35–
`64. The dependent claims at issue in this appeal recite how
`the current minimum and the future minimum values are
`determined:
`6. The apparatus according to claim 5, wherein
`said current minimum value is set to said future
`minimum value periodically.
`7. The apparatus according to claim 6, wherein
`said future minimum value is replaced with the
`current magnitude value when said future mini-
`mum value is greater than said current magnitude
`value.
`8. The apparatus according to claim 6, wherein
`said current minimum value is replaced with the
`current magnitude value when said current mini-
`mum value is greater than said current magnitude
`value.
`9. The apparatus according to claim 5, wherein
`said future minimum value is set to a current mag-
`nitude value periodically; said current-magnitude
`value being the value of the magnitude of the cor-
`responding frequency bin.
`B
`The prior art reference Hirsch discloses a noise estima-
`tion technique for use with spectral subtraction. J.A. 453,
`Abstract. Like the ’345 patent, Hirsch explains that noise
`reduction is “usually done by detection of speech pauses to
`evaluate segments of pure noise” and that detecting speech
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`ANDREA ELECTRONICS CORPORATION v. APPLE INC.
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`pauses “is a difficult task” in practical situations, specifi-
`cally “if the background noise is not stationary.” J.A. 453.
`Hirsch acknowledges that “[s]ome approaches are known
`to avoid the problem of speech pause detection and to esti-
`mate the noise characteristics just from a past segment of
`noisy speech” and cites, among other references, Martin.
`J.A. 453 (citing reference [6]). Hirsch notes the “disad-
`vantage of most approaches is the need of relatively long
`past segments of noisy speech.” J.A. 453. Hirsch then pre-
`sents its spectral subtraction method for “estimat[ing] the
`spectral parameters of noise without an explicit speech
`pause detection” based on “calculat[ing] the noise level in
`each subband.” J.A. 453. Hirsch describes testing the ac-
`curacy of its method on “[d]ifferent stationary noise sig-
`nals.” J.A. 454.
`Hirsch’s estimation method involves a noise estimate
`that “is calculated with a first order recursive system,” in
`which an adaptive threshold is calculated as a weighted
`sum of past spectral magnitude values in a frequency sub-
`band according to a specific recursive algorithm. J.A. 453.
`Martin, referenced in Hirsch, is directed to noise power
`estimation with a focus on using the noise power estima-
`tion to compute signal-to-noise ratios. J.A. 457–58. Martin
`also briefly discusses the use of the power estimation in
`spectral subtraction applications to reduce noise in a sig-
`nal. J.A. 460. Like the ’345 patent and Hirsch, Martin de-
`scribes the conventional approach of acquiring noise
`statistics based on “noise only segments.” J.A. 457. Like
`the ’345 patent and Hirsch, Martin then explains that its
`proposed algorithm “does not need an explicit speech/no-
`speech decision to gather noise statistics.” J.A. 457. Mar-
`tin asserts that its algorithm is “capable [of] track[ing] non
`stationary noise signals and has a low computational com-
`plexity.” J.A. 457. The Board found Martin discloses a spe-
`cific noise-level estimation algorithm that includes the
`steps recited in claims 6 through 9. Board Decision, at *6–
`7. In fact, Andrea does not dispute that Martin discloses
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`ANDREA ELECTRONICS CORPORATION v. APPLE INC.
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`all of the limitations of claims 6 through 9, with the excep-
`tion of the step in claim 9 “wherein said future minimum
`value is set to a current magnitude value periodically.” Ap-
`pellant’s Br. 38–47.
`Martin’s algorithm operates in a periodic manner on a
`window and subwindow basis. Specifically, the noise
`power estimate is calculated based on one period of L sam-
`ples of an audio signal—which make up a “window”—that
`is further divided into periods of W subwindows of M sam-
`
`(“minimum power of the last M samples”) value corre-
`sponds to the claimed future minimum value, Board Deci-
`
`ples. J.A. 458. The Board found that Martin’s 𝑃𝑃𝑀𝑀𝑀𝑀𝑀𝑀𝑀𝑀(𝑖𝑖)
`sion, at *4–5, 𝑃𝑃�𝑥𝑥(𝑖𝑖) (“smoothed power”) corresponds to the
`claimed current magnitude value, id. at *7 & n.9, and 𝑃𝑃𝑀𝑀(𝑖𝑖)
`beginning of every subwindow, 𝑃𝑃𝑀𝑀(𝑖𝑖) (current minimum) is
`ing the current subwindow period, whenever 𝑃𝑃�𝑥𝑥(𝑖𝑖) (current
`magnitude) is smaller than 𝑃𝑃𝑀𝑀(𝑖𝑖) (current minimum), 𝑃𝑃𝑀𝑀(𝑖𝑖)
`is updated with the smaller 𝑃𝑃�𝑥𝑥(𝑖𝑖) value. J.A. 458. During
`𝑃𝑃�𝑥𝑥(𝑖𝑖), 𝑃𝑃𝑀𝑀𝑀𝑀𝑀𝑀𝑀𝑀(𝑖𝑖) (future minimum) is also updated to a
`smaller 𝑃𝑃�𝑥𝑥(𝑖𝑖) value whenever 𝑃𝑃�𝑥𝑥(𝑖𝑖) is less than 𝑃𝑃𝑀𝑀𝑀𝑀𝑀𝑀𝑀𝑀(𝑖𝑖).
`J.A. 458, Fig. 2 (Flowchart conditional: if 𝑃𝑃�𝑥𝑥(𝑖𝑖)<𝑃𝑃𝑀𝑀𝑀𝑀𝑀𝑀𝑀𝑀,
`then 𝑃𝑃𝑀𝑀𝑀𝑀𝑀𝑀𝑀𝑀=𝑃𝑃�𝑥𝑥(𝑖𝑖)).
`every subwindow period, 𝑃𝑃𝑀𝑀𝑀𝑀𝑀𝑀𝑀𝑀 (future minimum) for the
`next subwindow period is reset to maximum value 𝑃𝑃𝑀𝑀𝑚𝑚𝑥𝑥.
`J.A. 458. Then, as just discussed, 𝑃𝑃𝑀𝑀𝑀𝑀𝑀𝑀𝑀𝑀 (future minimum)
`tracks 𝑃𝑃�𝑥𝑥(𝑖𝑖) (current magnitude) during the subwindow pe-
`riod whenever 𝑃𝑃�𝑥𝑥(𝑖𝑖) is less than 𝑃𝑃𝑀𝑀𝑀𝑀𝑀𝑀𝑀𝑀. J.A. 458.
`
`(“estimated noise power”) corresponds to the claimed cur-
`rent minimum value, id. at *7. Martin teaches that at the
`
`set equal to the minimum power of the last M samples (fu-
`ture minimum of the preceding subwindow) or, alterna-
`tively, to the minimum power of the last L samples (future
`minimum of the preceding window). J.A. 458. Then, dur-
`
`the subwindow period, by a samplewise comparison with
`
`Relevant to claim 9, Martin discloses that at the end of
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`ANDREA ELECTRONICS CORPORATION v. APPLE INC.
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`7
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`C
`In its first final written decision, the Board rejected the
`obviousness ground based on Hirsch and Martin because
`Apple relied on an embodiment of Martin that involved no
`
`subwindows (in other words 𝑊𝑊=1). Prior Board Decision,
`
`at *5–6. The Board first noted:
`Initially, we agree with Petitioner that one skilled
`in the art would have considered Martin’s teach-
`ings, generally, when reviewing the teachings of
`Hirsch, as Martin is specifically referenced in
`Hirsch itself.
`Id. at *5. But proceeded to say “[n]evertheless, we are not
`persuaded that one skilled in the art would have modified
`Hirsch’s system based on the teachings of Martin in the
`particular manner proposed by Petitioner” because “a sce-
`
`nario from Martin where 𝑊𝑊=1 . . . is counter to the entire
`
`purpose of Martin.” Id. at *6. The Board concluded, there-
`fore, that there was no reason why one skilled in the art
`would have modified Hirsch’s teaching in a manner con-
`trary to the express disclosure of Martin. Id.
`On remand, as directed by this court, the Board consid-
`ered the combination of Hirsch and Martin that relied on a
`multiple-subwindows embodiment of Martin and con-
`cluded the embodiment included and disclosed a “future
`minimum” as well as the other limitations of claims 6–9.
`Board Decision, at *4–7. That included Martin’s disclosing
`of claim 9’s limitation that a “future minimum value is set
`to a current magnitude value periodically.” Id. at *7.
`The Board also found that a skilled artisan would have
`been motivated to combine the references based on three
`rationales. First, the Board said it had already sufficiently
`found a motivation in its prior decision when it said a
`skilled artisan would have generally considered Martin
`when looking at Hirsch, and Andrea did not appeal that
`determination. Id. at *7. Second, the Board reasoned that
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`ANDREA ELECTRONICS CORPORATION v. APPLE INC.
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`this court also decided the motivation-to-combine issue,
`when we noted that “Hirsch refers to Martin as a ‘known’
`approach ‘to avoid the problem of speech pause detection
`and to estimate the noise characteristics just from a past
`segment of noisy speech.’” Id. (quoting Apple, 949 F.3d at
`703). And third, to the extent the first two reasons did not
`resolve the issue, the Board generically explained as a
`standalone analysis:
`[W]e agree with Petitioner that one skilled in the
`art would have considered using the multiple sub-
`window approach taught by Martin in Hirsch’s sys-
`tem. “When a work is available in one field, design
`incentives and other market forces can prompt var-
`iations of it, either in the same field or in another.”
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 401
`(2007). Based on the record before us, which in-
`cludes an express suggestion in Hirsch to look to
`Martin’s teachings, Hirsch does not teach away
`from the proposed combination, and Petitioner has
`established by a preponderance of the evidence
`that one skilled in the art would have combined the
`teachings of Martin with those of Hirsch.
`Id. at *8. Accordingly, the Board found claims 6–9 un-
`patentable over the combination of Hirsch and Martin. Id.
`Andrea timely appealed to this court. We have juris-
`diction under 28 U.S.C. § 1295(a)(4)(A).
`DISCUSSION
`Andrea appeals the Board’s findings that (1) Martin
`teaches the limitation of claim 9 that a “future minimum
`value is set to a current magnitude value periodically” and
`(2) a skilled artisan would have been motivated to combine
`Hirsch and Martin. The Board’s factual determinations
`are reviewed for substantial evidence and its legal deter-
`minations are reviewed de novo. In re Mouttet, 686 F.3d
`1322, 1330–31 (Fed. Cir. 2012). Substantial evidence is
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`ANDREA ELECTRONICS CORPORATION v. APPLE INC.
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`9
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`“such relevant evidence as a reasonable mind might accept
`as adequate to support a conclusion.” Id. at 1331.
`A
`Claim 9 requires that “the future minimum value is set
`to a current magnitude value periodically.” Before the
`Board, Apple argued that Martin’s algorithm meets this
`limitation with two steps. First, at the end of a subwindow
`
`magnitude) at the beginning of the next subwindow period
`
`The Board credited the unrebutted testimony of Apple’s ex-
`
`period, 𝑃𝑃𝑀𝑀𝑀𝑀𝑀𝑀𝑀𝑀 (future minimum) is reset to a maximum
`value 𝑃𝑃𝑀𝑀𝑚𝑚𝑥𝑥 and, then, is set to the value of 𝑃𝑃�𝑥𝑥(𝑖𝑖) (current
`after 𝑃𝑃𝑀𝑀𝑀𝑀𝑀𝑀𝑀𝑀 and 𝑃𝑃�𝑥𝑥(𝑖𝑖) are compared. Board Decision, at *7.
`pert, Dr. Hochwald, that by resetting 𝑃𝑃𝑀𝑀𝑀𝑀𝑀𝑀𝑀𝑀 equal to 𝑃𝑃𝑀𝑀𝑚𝑚𝑥𝑥,
`the next cycle of Martin’s algorithm sets 𝑃𝑃𝑀𝑀𝑀𝑀𝑀𝑀𝑀𝑀 to the
`smoothed power estimate 𝑃𝑃�𝑥𝑥(𝑖𝑖). Id. (citing J.A. 413 ¶ 140).
`
`Andrea argues the Board erred by relying on Apple’s
`expert’s testimony because, supposedly, the Board previ-
`ously rejected the testimony when it rejected the single-
`subwindow configuration of Martin for rendering the
`claims at issue obvious. Appellant’s Br. 39. According to
`Andrea, the Board provided no explanation as to why it re-
`lied on evidence from a previously rejected theory and,
`thus, acted arbitrarily and capriciously and reached a con-
`clusion unsupported by substantial evidence. Id. at 39–44.
`We are unpersuaded. Dr. Hochwald’s testimony re-
`
`garding the periodic setting of 𝑃𝑃𝑀𝑀𝑀𝑀𝑀𝑀𝑀𝑀 (future minimum) to
`𝑃𝑃�𝑥𝑥(𝑖𝑖) (the current magnitude) relied on the periodicity of M
`ing whether Martin discloses periodically setting 𝑃𝑃𝑀𝑀𝑀𝑀𝑀𝑀𝑀𝑀 to
`𝑃𝑃�𝑥𝑥(𝑖𝑖) as explained by Dr. Hochwald. Prior Board Decision,
`
`samples in a subwindow, irrespective of whether a single
`subwindow or multiple subwindows are in a window. See
`J.A. 413 ¶ 140. Because the Board originally rejected Ap-
`ple’s obviousness theory for the more general reason that a
`single subwindow is contrary to Martin’s approach, the
`Board did not address or reject more specific issues includ-
`
`at *4–6. There is nothing inconsistent about the Board’s
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`ANDREA ELECTRONICS CORPORATION v. APPLE INC.
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`subsequent crediting of Dr. Hochwald’s testimony to find
`that claim 9 was met by Martin, once it considered that
`testimony in the context of multiple subwindows as di-
`rected by this court.
`Andrea also argues that Martin’s algorithm does not
`“periodically” set the future minimum value to the current
`
`magnitude value. Andrea points to the fact that 𝑃𝑃�𝑥𝑥(𝑖𝑖) is a
`signal that varies and is set as 𝑃𝑃𝑀𝑀𝑀𝑀𝑀𝑀𝑀𝑀’s value only when
`𝑃𝑃�𝑥𝑥(𝑖𝑖) is less than 𝑃𝑃𝑀𝑀𝑀𝑀𝑀𝑀𝑀𝑀. Appellant’s Br. 42–47. But An-
`right before the beginning of a new subwindow, 𝑃𝑃𝑀𝑀𝑀𝑀𝑀𝑀𝑀𝑀 is set
`the beginning of each new subwindow 𝑃𝑃𝑀𝑀𝑀𝑀𝑀𝑀𝑀𝑀 gets set to
`𝑃𝑃�𝑥𝑥(𝑖𝑖). Board Decision, at *7 (citing Dr. Hochwald’s testi-
`ing the Board’s finding based on 𝑃𝑃𝑀𝑀𝑀𝑀𝑀𝑀𝑀𝑀 being set to a
`the effect caused by setting 𝑃𝑃𝑀𝑀𝑀𝑀𝑀𝑀𝑀𝑀 to a maximum value).
`
`drea’s arguments never address the crucial detail that
`
`to a maximum value, which the Board found meant that at
`
`mony at J.A. 413 ¶ 140); see Appellee’s Br. 45–46 (explain-
`
`maximum value); Appellant’s Reply Br. 28 (not addressing
`
`Andrea has not shown the Board’s finding, that Martin dis-
`closes a “future minimum value is set to a current magni-
`tude value periodically,” is unsupported by substantial
`evidence.
`
`B
`With respect to the motivation to combine Hirsch and
`Martin, Andrea argues the Board erred by saying that it-
`self and this court previously resolved the issue. On this
`score we agree with Andrea. The Board and this court
`made broad, general statements relevant to, but not con-
`clusive of, motivation to combine the relevant portions of
`the cited references in a manner that renders claims 6–9
`obvious. Hirsch does refer to Martin as a known approach
`to avoid the problem of speech pause detection to estimate
`noise and, based on that, it was reasonable for the Board to
`find that a skilled artisan would have considered Martin’s
`teachings generally when reviewing Hirsch. But neither
`the Board nor this court addressed why a skilled artisan
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`would have specifically incorporated Martin’s noise power
`estimation algorithm into Hirsch’s spectral subtraction
`system or threshold calculation. See In re Sang Su Lee, 277
`F.3d 1338, 1343 (Fed. Cir. 2002) (discussing that motiva-
`tion is needed for making the “specific combination that
`was made by the applicant”). In addition, neither the
`Board nor this court addressed any of the specific motiva-
`tion issues contested by Andrea. These include, for exam-
`ple, whether: Hirsch shows a need for improvement in
`nonstationary noise environments and whether Martin
`provides such improvement, see, e.g., J.A. 1021–23; J.A.
`2497; Hirsch obviates the need to address the speech pause
`detection problem and, therefore, a skilled artisan would
`not have looked to Martin to address the problem, see, e.g.,
`J.A. 1020; and Hirsch disparages Martin because of “the
`need of relatively long past segments of noise speech” and
`the “significant difference” in time requirements between
`Martin and Hirsch, see, e.g., J.A. 1019; J.A. 2495. The
`Board’s failure to provide any explanation as to why it ac-
`cepted the prevailing arguments over the counter-argu-
`ments precludes us from being able to affirm the Board’s
`finding of motivation. See In re Nuvasive, Inc., 842 F.3d
`1376, 1383 (Fed. Cir. 2016) (“[I]t is not adequate to sum-
`marize and reject arguments without explaining why the
`PTAB accepts the prevailing argument.”).
`The Board’s separate, standalone analysis of motiva-
`tion is also inadequate for the same reason, i.e., the failure
`to address the specific motivation issues argued by the par-
`ties. The Board generically invoked “design incentives and
`other market forces,” concluded without explanation that
`Hirsch does not teach away, and relied on the general point
`that Hirsch mentions Martin. Id. at *8. In the face of An-
`drea’s specific contentions, these statements amount to a
`conclusory analysis that we have held to be an insufficient
`articulation of motivation to combine. See In re Nuvasive,
`842 F.3d at 1383.
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`We also reject Apple’s reliance on the fact that, in its
`original decision, the Board found claim 25 unpatentable
`over the combination of Hirsch and Martin and that An-
`drea did not appeal the finding. Claim 25 recites an adap-
`tive array comprising a plurality of microphones for
`receiving an audio signal. ’345 patent col. 11 ll. 5–7. In the
`context of claim 25, Apple presented why a skilled artisan
`would have been motivated to incorporate “conventional
`adaptive microphone arrays” from Martin into Hirsch, and
`the Board found that Andrea provided no evidence or argu-
`ment to rebut Apple’s contentions. Prior Board Decision,
`at *7. However, any finding of motivation for claim 25 re-
`garding the physical array of microphones is irrelevant to
`whether a skilled artisan would have been motivated to
`combine Martin’s algorithm into Hirsch’s algorithm.
`For the foregoing reasons, we affirm the Board’s deci-
`sion finding that Martin discloses the limitations of claim
`9 of the ’345 patent but vacate the Board’s final written de-
`cision and remand for further findings on the motivation to
`combine Hirsch and Martin with respect to claims 6–9.
`AFFIRMED IN PART, AND VACATED AND
`REMANDED IN PART
`COSTS
`
`No costs.
`
`