Trials@uspto.gov
`571.272.7822
`
`Paper No. 16
`Entered: July 7, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`HAMMOND DEVELOPMENT INTERNATIONAL, INC.,
`Patent Owner.
`____________
`
`Case IPR2020-00411
`Patent 9,420,011 B2
`____________
`
`
`
`Before MICHELLE N. WORMMEESTER, AMBER L. HAGY, and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`
`WORMMEESTER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`571.272.7822
`
`Paper No. 16
`Entered: July 7, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`HAMMOND DEVELOPMENT INTERNATIONAL, INC.,
`Patent Owner.
`____________
`
`Case IPR2020-00411
`Patent 9,420,011 B2
`____________
`
`
`
`Before MICHELLE N. WORMMEESTER, AMBER L. HAGY, and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`
`WORMMEESTER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`IPR2020-00411
`Patent 9,420,011 B2
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`
`I. INTRODUCTION
`Google LLC (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
`inter partes review of claims 1–30 of U.S. Patent No. 9,420,011 B2
`(Ex. 1001, “the ’011 patent”). Hammond Development International, Inc.
`(“Patent Owner”) did not file a Preliminary Response. See Paper 7 (Waiver
`of Preliminary Response). We have jurisdiction under 35 U.S.C. § 314 and
`37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), an inter partes review may
`not be instituted “unless . . . there is a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.” For the reasons that follow, we institute an inter partes review
`as to all the challenged claims of the ’011 patent and all the grounds
`presented.
`
`
`II. BACKGROUND
`A. Related Proceedings
`The parties identify two district court cases involving the ’011 patent:
`Hammond Development International, Inc. v. Google LLC, No. 6:19-cv-
`00356 (W.D. Tex.), and Hammond Development International, Inc. v.
`Amazon.com, Inc., No. 6:19-cv-00355 (W.D. Tex.). Pet. 82; Paper 5, 2. The
`parties also identify several other petitions for inter partes review involving
`related patents. Paper 3, 2–3; Paper 5, 2–3. In addition, Petitioner identifies
`U.S. Patent Application No. 16/389,170 as a related application. Pet. 84.
`
`
`B. The ’011 Patent
`The ’011 patent, titled “Method and System for Enabling a
`Communication Device to Remotely Execute an Application,” issued
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`August 16, 2016, based on an application filed December 19, 2015.
`Ex. 1001, codes (22), (45), (54). The ’011 patent claims priority to U.S.
`Patent No. 9,264,483 B2 (“the ’483 patent”). Id. at code (63).
`The ’011 patent describes a communication system that establishes a
`communication session between a client device and a remote application
`server, which executes an application for the client, e.g., the remote
`application server “execut[es] an application for a thin-client device.” Id. at
`1:63–67, 2:39–41. Figure 1D of the ’011 patent, reproduced below, shows
`an embodiment of a communication system.
`
`
`
`Figure 1D shows a block diagram of a communications system and
`associated components. Id. at 2:59–61. As shown in Figure 1D,
`“clients 18a–18n . . . couple to network 12 through one or more
`communications links 32 and/or one or more networks 14, 16.” Id. at 3:64–
`66. Additionally, “application servers 24 couple to network 12 through one
`or more communications links 30.” Id. at 3:47–48. Further, repository 20
`and application server 24 are connected via “a direct communication
`link 36.” Id. at 10:50–52.
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`The communication system of the ’011 patent “enables a client 18 to
`have one or more applications 28 executed remotely” by the application
`server 24. Id. at 6:1–6. A user of the client “initiates an information
`collection and/or retrieval process by communicating a request to application
`server 24.” Id. at 6:4–6; see also id. at 5:38–40 (“In some embodiments,
`clients 18 can be configured to initiate a connection with repositories 20
`and/or application servers 24.”), 2:10–12 (“At least one of the one or more
`communication devices is operable to communicate a request to establish a
`communication session over the data connection.”). After that, “application
`server 24 notifies repository 20 that a communication session with client 18
`has been requested.” Id. at 6:27–29. “Repository 20 . . . operates to identify
`a desired application 28 and to communicate application 28, or portions
`thereof, to application server 24 for execution.” Id. at 6:29–32. Further,
`“[u]pon receipt of application 28, application server 24 executes
`application 28 and begins a communication session with client 18a.” Id. at
`6:32–34. In particular, “application server 24 begins the process of
`communicating information to and/or retrieving information from client
`18a” by “requesting that the user of client 18a respond to a series of queries
`associated with application 28.” Id. at 6:34–36, 59–61. For example,
`application server 24 executes an application based on voice extensible
`markup language (Voice XML) that “enables application server 24 to
`interact with and collect information from client 18a.” Id. at 6:36–39.
`“[A]pplication server 24 communicates information relating to portions of
`Voice XML-based code to client 18a for execution on client 18a,” e.g., “by
`requesting that the user of client 18a respond to a series of queries associated
`with application 28.” Id. at 6:59–65. The “user of client 18a responds to
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`each of the series of queries by ‘speaking’ a response to each query
`communicated to client 18a for execution.” Id. at 7:2–5.
`
`
`C. Illustrative Claims
`Petitioner challenges claims 1–30 of the ’011 patent. Claims 1 and 11
`are independent and illustrative of the claims under challenge1:
`1. [1Preamble] A non-transitory computer-readable storage
`medium having stored thereon a computer-executable device
`software program that, when executed on a communication
`device, causes the communication device to perform a method
`for remotely executing an identified application, the method
`comprising:
`first
`to a
`the communication device
`[1a1] coupling
`communication link, the communication device adapted to
`communicate a request to establish a communication session
`over the first communication link,
`[1a2] wherein the first communication link comprises a data
`connection;
`[1b] providing processing services to the identified application,
`wherein a substantial portion of the identified application is
`executed at a location remote from the communication device;
`[1c1] transmitting the request to an application server coupled to
`the first communication link,
`[1c2] wherein, if the identified application is not already present
`on the application server, the request may cause the application
`server to communicate with one or more repositories over a
`second communication link,
`[1c3] the repositories having access to one or more applications
`maintained in a database coupled to the one or more repositories,
`
`
`1 We have added numbering to the elements in keeping with the numbering
`used by Petitioner. See Pet. ii–v.
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`[1c4] the one or more repositories adapted to communicate the
`identified application over the second communication link to the
`application server,
`[1c5] wherein the application server is adapted to execute the
`substantial portion of the identified application remote from the
`at least one communication device;
`[1d] establishing a communication session with the application
`server; and
`[1e1] receiving a request for a processing service from the
`application server over the data connection,
`[1e2] wherein the request for processing service comprises one
`or more queries for information from a user.
`
`11. [11Preamble] A non-transitory computer-readable storage
`medium having
`stored
`thereon a computer-executable
`application software program that, when executed on a
`communication system, enables one or more communication
`devices to remotely execute and to provide services to an
`application, the application software program causing the one or
`more application servers to perform the method of:
`[11a1] establishing a first communications link to one or more
`communication devices,
`[11a2]
`the first communication
`connection,
`[11a3] at least one of the one or more application servers adapted
`to establish a communication session with the communication
`device;
`[11b1] receiving a request from at least one of the one or more
`communication devices to establish the communication session,
`the at least one communication device residing at a location
`remote from the one or more application servers,
`[11b2] wherein the at least one application server is operable to
`receive, or have previously received, the application over a
`second communication link,
`
`link comprising a data
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`[11b3] wherein the at least one application server is further
`operable to execute the received application remote from the
`communication device and to establish the communication
`session with the communication device; and
`[11c1] sending, to the at least one communication device, a
`request for a processing service at the communication device,
`[11c2] wherein the request for the processing service is
`communicated to the communication device over the data
`connection, and
`[11c3] wherein the request for the processing service comprises
`one or more queries for information from a user.
`
`
`D. Asserted Grounds of Unpatentability
`Petitioner challenges claims 1–30 of the ’011 patent on the following
`grounds. Pet. 2, 5–82.
`35 U.S.C. §
`Claims Challenged
`Gilmore2
`102
`11, 13, 16, 17
`Gilmore, Dodrill3
`103
`1, 2, 4–24, 26–28
`Gilmore, Dodrill, Dhara4
`103
`3, 25
`Gilmore, Dodrill, Ladd5
`103
`12, 19, 29, 30
`In support of its arguments, Petitioner relies on a Declaration of Leonard
`Forys, Ph.D. (Ex. 1003). See id.
`
`
`References/Basis
`
`
`2 U.S. Publ’n No. 2003/0216923 A1, published Nov. 20, 2003 (Ex. 1005).
`3 U.S. Patent No. 6,766,298 B1, issued July 20, 2004 (Ex. 1006).
`4 U.S. Publ’n No. 2003/0202504 A1, published Oct. 30, 2003 (Ex. 1009).
`5 U.S. Patent No. 6,269,336 B1, issued July 31, 2001 (Ex. 1016).
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`III. DISCUSSION
`A. Claim Construction
`In interpreting the claims of the ’011 patent, we “us[e] the same claim
`construction standard that would be used to construe the claim[s] in a civil
`action under 35 U.S.C. [§] 282(b).” See 37 C.F.R. § 42.100(b) (2019). That
`claim construction standard involves construing claims in accordance with
`the ordinary and customary meaning of such claims as would have been
`understood by one of ordinary skill in the art and the prosecution history
`pertaining to the patent. See id.; Phillips v. AWH Corp., 415 F.3d 1303,
`1312–14 (Fed. Cir. 2005) (en banc).
`Petitioner asserts that “[n]o terms need to be construed under 37
`C.F.R. § 42.100(b) to resolve unpatentability” in this proceeding. Pet. 4.
`For purposes of this Decision, we agree with Petitioner and determine that
`no claim term requires express interpretation at this time to resolve any
`controversy in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad
`Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`
`
`B. Anticipation by Gilmore
`Petitioner asserts that Gilmore anticipates claims 11, 13, 16, and 17 of
`the ’011 patent. Pet. 5–24. For the reasons explained below, we are
`persuaded that Petitioner has demonstrated a reasonable likelihood of
`prevailing on this asserted ground.
`We start with an overview of Gilmore.
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`1. Gilmore
`Gilmore is a published U.S. Patent Application entitled “Dynamic
`Content Generation for Voice Messages.” Ex. 1005, code (54). Gilmore
`was published on November 20, 2003 (id. at code (43)), and is thus prior art
`under 35 U.S.C. § 102(b) (see Pet. 1).
`Gilmore relates to a method and system that “simulate[s] a
`conversation with the caller” using an automated voice response system
`having a voice gateway that presents a generated voice message to a
`telephone caller. Ex. 1005 ¶¶ 10, 39; see also id. ¶ 3. Figure 2 shows such a
`voice response system and is reproduced below.
`
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`Figure 2 shows a block diagram of a voice communications system and
`associated components. Id. ¶ 17. As shown in Figure 2, users of voice
`communications device 202, e.g., a telephone, place calls using voice/data
`network 204. Id. ¶¶ 33, 38. According to Gilmore, such networks include
`the following:
`[A] circuit-switched voice network such as the public switched
`telephone network (PSTN), a packet-switched data network, or
`any other network able to carry voice. Data networks may
`include,
`for example,
`Internet protocol
`(IP)-based or
`asynchronous transfer mode (ATM)-based networks and may
`support voice using, for example, Voice-over-IP, Voice-over-
`ATM, or other comparable protocols used for voice data
`communications.
`Id. ¶ 31; see also id. ¶ 36. The “[i]ncoming calls are answered by the
`telephony services and signal processing component 208a of the voice
`gateway 208” (id. ¶ 38), i.e., the voice gateway “responds to the calls in
`accordance with a voice program” (id. ¶ 33). In particular, an interpreter
`program in the voice gateway responds to the incoming calls by “retrieving
`and executing voice programs,” and “application server 212 provides the
`execution environment for voice applications.” Id. ¶¶ 39–40. Each voice
`application “may be a combination of, for example, java servlets, java server
`pages, other java code, and voice scripts such as VoiceXML or SALT
`scripts.” Id. ¶ 40. “In typical operation, the voice gateway 208 retrieves the
`initial voice script from local memory and/or from the application server 212
`and . . . execut[es] the voice-specific instructions within the script.” Id. ¶ 48.
`The “voice-specific instruction may be a prompt instruction,” i.e., a request
`for the user to respond with user input. Id. ¶¶ 39, 48.
`
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`2. Analysis
`We address independent claim 11 in detail.
`Claim 11 is directed to “[a] non-transitory computer-readable storage
`medium having stored thereon a computer-executable application software
`program that, when executed on a communication system, enables one or
`more communication devices to remotely execute and to provide services to
`an application, the application software program causing the one or more
`application servers to perform [a] method.” Petitioner identifies Gilmore’s
`voice gateway 108 or 208 as “one or more application servers” that perform
`the method. Pet. 8; see Ex. 1005, Figs. 1, 2. The method comprises three
`steps, namely, an “establishing” step, a “receiving” step, and a “sending”
`step. We discuss these steps in turn.
`
`
`a. “establishing” step
`Claim 11 recites “establishing a first communications link to one or
`more communication devices.” For this limitation, designated as
`limitation 11a1, Petitioner further identifies Gilmore’s voice
`communications device 102 or 202 as “one or more communication
`devices,” and Gilmore’s voice/data network 104 or 204 as a “first
`communications link.” Pet. 11–12. To illustrate, Petitioner provides an
`annotated version of Figure 1 of Gilmore, reproduced below. Id. at 12.
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`Figure 1 of Gilmore, as annotated by Petitioner, shows a voice
`communications system and its associated components. See Ex. 1005 ¶ 16.
`Petitioner also provides an annotated version of Figure 2 of Gilmore,
`reproduced below. Pet. 12.
`
`
`
`
`Figure 2 of Gilmore, as annotated by Petitioner, shows a more detailed voice
`communications system. See Ex. 1005 ¶¶ 17, 36. Referring to the annotated
`
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`figures, Petitioner asserts that “Gilmore’s voice gateway 108/208’s
`(application server, yellow) application software program, such as
`‘telephony services and signal processing component 208a,’ establishes a
`first communication link to communications device 102/202 (orange) over
`voice/data network 104/204 (blue) by answering incoming calls to voice
`gateway 108/208.” Pet. 11 (citing Ex. 1005 ¶¶ 33, 37–38). Petitioner
`contends that an ordinarily skilled artisan “would understand that
`‘answer[ing] incoming calls’ ‘establishes a first communication link’
`because it connects voice gateway 108/208 and communications device over
`the voice/data network.” Id. at 13 (citing Ex. 1005 ¶ 38). Petitioner relies
`on the declaration testimony of Dr. Forys. Id. at 11, 13 (citing Ex. 1003
`¶¶ 75–77). Based on the record before us, we are persuaded that Petitioner
`has shown sufficiently for purposes of this Decision that Gilmore teaches the
`recited “establishing” step of limitation 11a1.
`In connection with the “establishing” step, claim 11 recites “the first
`communication link comprising a data connection.” For this limitation,
`designated as limitation 11a2, Petitioner contends that “Gilmore’s voice/data
`network 104/204 (first communication link) comprises a data connection
`because it is a ‘[d]ata network[]’ that uses ‘Internet protocol (IP)-based . . .
`or other comparable protocols used for voice data communications,’ which
`can be used to transfer data, such [as] voice data (e.g., ‘Voice-over-IP’), web
`pages, or other information.” Id. at 13 (citing Ex. 1005 ¶ 31). Based on the
`record before us, we are persuaded that Petitioner has shown sufficiently for
`purposes of this Decision that Gilmore discloses the recited “first
`communication link” of limitation 11a2.
`
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`Claim 11 additionally recites “at least one of the one or more
`application servers adapted to establish a communication session with the
`communication device.” For this limitation, designated as limitation 11a3,
`Petitioner asserts that Gilmore’s “voice gateway 108/208’s interpreter
`program 208b executes interactive voice applications, such as VoiceXML,
`by ‘pars[ing] the script by searching and executing the voice-specific
`instructions within the script,’” and that “[v]oice gateway 108/208 begins
`(e.g., establishes) the communication session when it executes the
`VoiceXML application and ‘generat[es] outgoing speech or prompts’ that
`the user can interact with and respond to, thus allowing the user to interact
`with the VoiceXML interpreter and application.” Id. at 13–14 (citing
`Ex. 1005 ¶¶ 39–40, 46, 48). As support, Petitioner further asserts that “[t]he
`’011 patent confirms this understanding of establishing a ‘communication
`session,’ stating that application server 24 executes a VoiceXML application
`to begin or establish ‘a communication session with client 18a,’ for example,
`by ‘communicating information to and/or retrieving information from
`client 18a.’” Pet. 14 (quoting Ex. 1001, 6:32–36); see also id. (citing
`Ex. 1001, 5:48–51). Petitioner contends that an ordinarily skilled artisan
`“would understand that [Gilmore’s] voice gateway 108/208 executes a
`VoiceXML application to send prompts to the user, who provides a response
`that is processed by voice gateway 108/208, allowing the user to interact
`with the VoiceXML interpreter, thus establishing the application session.”
`Id. at 15. Petitioner relies on the declaration testimony of Dr. Forys. Id. at
`13–15 (citing Ex. 1003 ¶¶ 80–83). Based on the record before us, we are
`persuaded that Petitioner has shown sufficiently for purposes of this
`
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`Decision that Gilmore discloses the recited “one or more application
`servers” of limitation 11a3.
`
`
`b. “receiving” step
`Claim 11 recites “receiving a request from at least one of the one or
`more communication devices to establish the communication session, the at
`least one communication device residing at a location remote from the one
`or more application servers.” For this limitation, designated as
`limitation 11b1, Petitioner points us to Figures 1 and 2 of Gilmore and
`asserts that “voice gateway 108/208 is remotely separated from
`communications device 102/202 by voice/data network 104.” Pet. 15 (citing
`Ex. 1005 ¶ 31, Figs. 1, 2). Petitioner also points us to where Gilmore
`teaches that its voice gateway “receives user calls from voice
`communications devices 102 via the network 104 and responds to the calls
`in accordance with a voice program,” where “[i]ncoming calls are answered
`by the telephony services and signal processing component 208a” of the
`voice gateway. Id. (quoting Ex. 1005 ¶¶ 33, 38). Petitioner contends that an
`ordinarily skilled artisan “would understand that receiving and answering a
`call is receiving a request to establish a communication session, which is
`then established by executing a VoiceXML script,” and that an ordinarily
`skilled artisan “would also understand that the call to the [interactive voice
`response] system is a ‘request’ because it represents the user’s action to
`initiate retrieval and execution of the VoiceXML script that establishes the
`communication session.” Id. at 15–16. Petitioner relies on the declaration
`testimony of Dr. Forys. Id. (citing Ex. 1003 ¶¶ 85–86). Based on the record
`before us, we are persuaded that Petitioner has shown sufficiently for
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`purposes of this Decision that Gilmore discloses the recited “receiving” step
`of limitation 11b1.
`Claim 11 requires that “the at least one application server is operable
`to receive, or have previously received, the application over a second
`communication link.” For this limitation, designated as limitation 11b2,
`Petitioner identifies Gilmore’s VoiceXML application as an “application”
`and Gilmore’s data network 112 as a “second communication link.” Id. at
`16. To illustrate, Petitioner provides an annotated version of Figure 1 of
`Gilmore, which is reproduced below. Id. at 17.
`
`Figure 1 of Gilmore, as annotated by Petitioner, shows a voice
`communications system and its associated components. See Ex. 1005 ¶ 16.
`Petitioner also provides an annotated version of Figure 2 of Gilmore, which
`is reproduced below. Pet. 18.
`
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`Figure 2 of Gilmore, as annotated by Petitioner, shows a more detailed voice
`communications system. See Ex. 1005 ¶¶ 17, 36. Referring to the annotated
`figures, Petitioner asserts that Gilmore’s “voice gateway 108/208
`(application server, yellow) receives the voice application from application
`server 212 (green) over data network 112 (second communication link, blue
`in Figure 1, double-headed arrow in Figure 2). Pet. 16. As support,
`Petitioner directs us to where Gilmore teaches that its voice gateway may
`process voice programs that are script-based voice applications, such as
`VoiceXML, and that the voice gateway receives script files from application
`server 212. Id. at (citing Ex. 1005 ¶¶ 33, 46, 48, 51, 52). Based on the
`record before us, we are persuaded that Petitioner has shown sufficiently for
`purposes of this Decision that Gilmore discloses the recited “application
`server” of limitation 11b2.
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`Claim 11 also requires that “the at least one application server is
`further operable to execute the received application remote from the
`communication device and to establish the communication session with the
`communication device.” For this limitation, designated as limitation 11b3,
`Petitioner asserts that Gilmore’s “voice gateway 108/208 (application
`server) executes VoiceXML applications received from application
`server 212 remote from communications device 102/202,” and “establishes a
`communication session with communications device 102/202 by executing
`the VoiceXML application and presenting prompts to which the user can
`respond.” Id. at 18–19. As support, Petitioner directs us to where Gilmore
`teaches that its voice gateway “retrieves the initial voice script . . . from the
`application server 212 and parses the script using the interpreter
`program 208b . . . by searching and executing the voice-specific instructions
`within the script.” Ex. 1005 ¶ 48 (cited by Pet. 18–19). As discussed above
`with respect to limitation 11a3, Petitioner also explains that Gilmore’s voice
`gateway “begins (e.g., establishes) the communication session when it
`executes the VoiceXML application and ‘generat[es] outgoing speech or
`prompts’ that the user can interact with and respond to, thus allowing the
`user to interact with the VoiceXML interpreter and application.” Pet. 14
`(cross-referenced by Pet. 19). We note that Figures 1 and 2 of Gilmore
`show the voice gateway and voice communications device as separate
`components. See Ex. 1005, Figs. 1, 2. Based on the record before us, we are
`persuaded that Petitioner has shown sufficiently for purposes of this
`Decision that Gilmore discloses the recited “application server” of
`limitation 11b3.
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`c. “sending” step
`Claim 11 recites “sending, to the at least one communication device, a
`request for a processing service at the communication device.” For this
`limitation, designated as limitation 11c1, Petitioner asserts that Gilmore’s
`“[v]oice gateway 108/208 executes applications by ‘generating outgoing
`speech or prompts’ and ‘listening to spoken responses from the caller,’ such
`as asking ‘what would you like to do?’ or requesting a PIN or passcode.”
`Pet. 19 (citing Ex. 1005 ¶¶ 39, 44, 50, 76, 115). Petitioner contends that an
`ordinarily skilled artisan “would understand that generating prompts
`includes a request for processing service (e.g., prompt or audio output, or
`request for user input) transmitted to and received by communications
`device 102/202 over network 104/204. Id. at 19–20. Petitioner relies on the
`declaration testimony of Dr. Forys. Id. (citing Ex. 1003 ¶ 92). Based on the
`record before us, we are persuaded that Petitioner has shown sufficiently for
`purposes of this Decision that Gilmore discloses the recited “sending” step
`of limitation 11c1.
`Claim 11 requires that “the request for the processing service is
`communicated to the communication device over the data connection.” For
`this limitation, designated as limitation 11c2, Petitioner asserts that
`“Gilmore’s voice gateway 108/208 sends a request for a processing service,
`such as asking ‘what would you like to do?’ or requesting a PIN or passcode,
`to communications device 102/202, which is sent over network 104/204.”
`Id. at 20 (citing Ex. 1005 ¶¶ 39, 76, 115). As discussed above with respect
`to limitations 11a1 and 11a2, Gilmore’s voice/data network 104/204
`corresponds to the recited “data connection.” Based on the record before us,
`we are persuaded that Petitioner has shown sufficiently for purposes of this
`
`19
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`IPR2020-00411
`Patent 9,420,011 B2
`
`Decision that Gilmore discloses the recited “request for the processing
`service” of limitation 11c2. See also Ex. 1005, Fig. 2 (showing voice
`gateway 208 and voice communications device 202 communicating over
`voice/data network 204).
`Lastly, claim 11 requires that “the request for the processing service
`comprises one or more queries for information from a user.” For this
`limitation, designated as limitation 11c3, Petitioner asserts that Gilmore’s
`“communications device 102/202 receives an audio or voice prompt (request
`for a processing service) that includes queries for information from the user,
`such [as] requesting a passcode or PIN or presenting menus and asking
`‘what would you like to do,’” and Gilmore’s “[v]oice gateway 108/208
`generates an audio prompt that ‘ask[s]’ the user to input a PIN or passcode.”
`Pet. 20–21 (citing Ex. 1005 ¶ 115). To illustrate, Petitioner provides an
`annotated version of Gilmore’s Figure 13, reproduced below. Pet. 21.
`
`
`
`20
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`IPR2020-00411
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`
`Figure 13 of Gilmore, as annotated by Petitioner, shows an audio script that
`may be generated by a voice script. See Ex. 1005 ¶¶ 20, 27; see also id. ¶ 74
`(teaching that a voice script may be used by the voice application system to
`generate a dynamic VoiceXML script that can be converted into a dynamic
`voice message by the voice gateway and presented to a caller). Based on the
`record before us, we are persuaded that Petitioner has shown sufficiently for
`purposes of this Decision that Gilmore discloses the recited “request for the
`processing service” of limitation 11c3.
`
`
`3. Summary
`In sum, we determine that Petitioner has demonstrated a reasonable
`likelihood of prevailing on its assertion that Gilmore anticipates claim 11.
`Having reviewed Petitioner’s arguments asserting that Gilmore anticipates
`claims 13, 16, and 17 (see Pet. 21–24), which depend from claim 11, we also
`determine that Petitioner has demonstrated a reasonable likelihood of
`prevailing on its assertion as to these dependent claims.
`
`
`C. Obviousness over Gilmore and Dodrill
`Petitioner asserts that claims 1, 2, 4–24, and 26–28 of the ’011 patent
`would have been obvious over Gilmore and Dodrill. Pet. 24–66. For the
`reasons explained below, we are persuaded that Petitioner has demonstrated
`a reasonable likelihood of prevailing on this asserted ground.
`We provided an overview of Gilmore above. See supra Part III.B.1.
`Before addressing Petitioner’s arguments, we additionally provide an
`overview of Dodrill.
`
`
`21
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`IPR2020-00411
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`
`1. Dodrill
`Dodrill is a U.S. Patent entitled “Application Server Configured for
`Dynamically Generating Web Pages for Voice Enabled Web Applications.”
`Ex. 1006, code (54). Dodrill issued on July 20, 2004, id. at code (45), and
`thus is prior art under 35 U.S.C. § 102(b), see Pet. 1.
`Dodrill teaches a “web-based voice messaging system [that] provides
`voice application control between a [user’s] web browser and an application
`server.” Ex. 1006, code (57). The web browser is provided by a client, e.g.,
`a “thin client.” Id. at 3:4–9, 3:16–22. The “application server executes a
`voice-enabled web application by runtime execution of extensible markup
`language (XML) documents that define the voice-enabled web application to
`be executed.” Id. at 5:7–10. Those “XML pages are stored as XML
`applications and functions 96, for example within a document database
`accessible by the application server.” Id. at 9:16–19.
`
`
`2. Analysis
`We address independent claims 1 and 11 in detail, starting with
`claim 11.
`
`
`a. Independent Claim 11
`As discussed above with respect to anticipation by Gilmore, Petitioner
`relies on Gilmore for teaching every limitation recited in claim 11, including
`a “request for a processing service.” See supra Part III.B.2. Under an
`alternative theory, Petitioner relies additionally on Dodrill for
`limitation 11c1.
`
`22
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`
`In particular, Petitioner contends that, “[t]o the extent Patent Owner
`argues that a ‘request for [a] processing service’ in element [11c1] must be
`executable, Dodrill renders claim 11 obvious.” Pet. 26. As support,
`Petitioner asserts that “[t]he ’011 patent discloses sending an ‘executable’
`that ‘may contain information relating to a portion of Voice XML code’ to
`execute on the user device, e.g., to enter information.” Id. (quoting
`Ex. 1001, 9:17–23). Petitioner further asserts that Dodrill likewise teaches a
`“gateserver [that] executes an interactive voice application (similar to
`Gilmore’s voice gateway 108/208), which can transmit instructions to the
`user’s communication device, such as a script containing XML tags” that
`“include instructions to present information to the user, such as ‘PROMPT’
`or ‘autostart’ instructions to play audio files.” Id. (citing Ex. 1006, 8:18–24,
`11:61–12:30, Fig. 7). Petitioner points to an example in Dodrill where an
`instruction includes an “Enter Your Phone Number followed by the Pound
`(#) Key” prompt while waiting for an input pattern from the user, and states
`that such “instructions are sent to the user’s voice-enabled device and
`executed on the device.” Id. at 26–27 (citing Ex. 1006, 12:7–20).
`According to Petitioner, an ordinarily skilled artisan “would have found it
`obvious to transmit Gilmore’s request for processing services by sending
`Dodrill’s executable instructions to present prompts or other information to
`the user to distribute some of
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