`Paper No. 1
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`
`
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––
`
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`PARUS HOLDINGS INC.,
`Patent Owner.
`
`––––––––––––––
`Patent No. 7,386,455
`––––––––––––––
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,386,455
`
`
`
`
`
`
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 7,386,455
`
`TABLE OF CONTENTS
`
`PETITION FOR INTER PARTES REVIEW ........................................... 1
`
`OF U.S. PATENT NO. 7,386,455 ......................................................... 1
`
`I.
`
`INTRODUCTION...................................................................... 1
`
`II. MANDATORY DISCLOSURES ................................................. 2
`
`A. Grounds for Standing - 37 C.F.R. § 42.104(a) ....................... 2
`
`B.
`
`C.
`
`Real Party in Interest ......................................................... 4
`
`Related Matters ................................................................. 4
`
`D. Counsel and Service Information - 37 C.F.R. §
`42.8(b)(3)-(4) ................................................................... 4
`
`E.
`
`Payment of Fees - 37 C.F.R. § 42.15(a) ................................ 5
`
`III. LEVEL OF SKILL IN THE ART................................................. 5
`
`IV. OVERVIEW OF THE ’455 PATENT ........................................... 6
`
`V.
`
`PROSECUTION OF THE ’455 PATENT ..................................... 8
`
`VI. CLAIM CONSTRUCTION ......................................................... 9
`
`VII. CITED ART .............................................................................. 9
`
`A. White (Ex. 1004)............................................................... 9
`
`B. Geilhufe (Ex. 1025) ..........................................................11
`
`C.
`
`Bull (Ex. 1006) ................................................................14
`
`VIII. PARUS’S LITIGATIONS AGAINST GOOGLE AND
`SAMSUNG AND GOOGLE’S IPR AGAINST PARUS ................15
`
`IX. DISCRETIONARY FACTORS ..................................................16
`
`A.
`
`B.
`
`C.
`
`This Petition Should Not Be Denied Simply Because it is
`the Second IPR Filed on This Patent ...................................16
`
`The Prior Art Was Not Considered During Prosecution .........20
`
`Samsung’s Petition Is Not Duplicative Under General
`Plastic ............................................................................22
`
`D.
`
`Institution Should Not Be Denied Under Fintiv ....................24
`
`X. GROUND 1: WHITE RENDERS OBVIOUS CLAIMS 1-4
`AND 9-15 ................................................................................26
`
`
`
`i
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`

`

`Petition for Inter Partes Review
`U.S. Patent No. 7,386,455
`
`A. Claim 1 ...........................................................................26
`
`B.
`
`C.
`
`Claim 2: The method of claim 1 wherein said at least one
`remote system comprises a home-based system. ...................47
`
`Claim 3: The method of claim 2 wherein said system is
`selected from the group consisting of: outdoor lighting,
`indoor lighting, security system, heating system, and air
`conditioning system. .........................................................48
`
`D. Claim 4: ..........................................................................48
`
`E.
`
`F.
`
`Claim 9 ...........................................................................49
`
`Claim 10: The system of claim 9 wherein said phone
`comprises a standard telephone, a cellular phone, or an IP
`phone..............................................................................52
`
`G. Claim 11: The system of claim 9 wherein said internet is
`a local area network. .........................................................53
`
`H. Claim 12: The system of claim 9 wherein said internet is
`a wide area network. .........................................................53
`
`I.
`
`J.
`
`Claim 13: The system of claim 9 wherein said internet is
`the Internet. .....................................................................54
`
`Claim 14: The system of claim 9 wherein said at least
`one remote system is selected from the group consisting
`of: outdoor lighting, indoor lighting, security system,
`heating system, and air conditioning system.........................54
`
`K. Claim 15: ........................................................................54
`
`XI. GROUND 2: WHITE IN VIEW OF GEILHUFE RENDERS
`OBVIOUS CLAIMS 1-7 AND 9-15 ............................................54
`
`A. A POSITA Would Have Been Motivated to Combine
`White and Geilhufe at the Time of the Invention ..................55
`
`B.
`
`C.
`
`Claim 1 ...........................................................................58
`
`Claim 2 ...........................................................................59
`
`D. Claim 3 ...........................................................................60
`
`E.
`
`F.
`
`Claim 4 ...........................................................................60
`
`Claim 5: The method of claim 1 wherein said at least one
`remote system comprises an office-based system. .................60
`
`
`
`ii
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`

`

`Petition for Inter Partes Review
`U.S. Patent No. 7,386,455
`
`G. Claim 6: The method of claim 5 wherein said system is
`selected from the group consisting of: outdoor lighting,
`indoor lighting, security system, heating system, and air
`conditioning system. .........................................................60
`
`H. Claim 7: ..........................................................................61
`
`I.
`
`J.
`
`Claim 9 ...........................................................................61
`
`Claim 10 .........................................................................62
`
`K. Claim 11 .........................................................................63
`
`L.
`
`Claim 12 .........................................................................63
`
`M. Claim 13 .........................................................................63
`
`N. Claim 14 .........................................................................63
`
`O. Claim 15 .........................................................................63
`
`XII. GROUND 3: WHITE IN VIEW OF GEILHUFE AND BULL
`RENDERS OBVIOUS CLAIMS 8 AND 16 .................................63
`
`A.
`
`B.
`
`The Combination of White, Geilhufe, and Bull Would
`Have Been Obvious ..........................................................64
`
`Claim 8: The method of claim 1 further comprising the
`step of periodically polling said at least one remote
`system to determine whether said remote system is
`operational or out of service...............................................68
`
`C.
`
`Claim 16 .........................................................................70
`
`XIII. SECONDARY CONSIDERATIONS ..........................................73
`
`XIV. CONCLUSION ........................................................................74
`
`
`
`
`iii
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`

`

`Petition for Inter Partes Review
`U.S. Patent No. 7,386,455
`
`LIST OF EXHIBITS
`
`Ex.
`1001
`1002
`
`Description
`U.S. Patent No. 7,386,455 (“’455 patent”)
`File History for U.S. Patent No. 7,386,455 (“File History”)
`
`1003
`1004
`1005
`
`1006
`1007
`
`1008
`1009
`1010
`
`1011
`1012
`1013
`
`1014
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`1021
`1022
`
`1023
`
`1024
`
`Declaration of Stuart Lipoff (“Lipoff Decl.”)
`U.S. Patent No. 6,408,272 (“White”)
`Cell intentionally left blank
`
`U.S. Patent No. 5,995,943 (“Bull”)
`Cell intentionally left blank
`
`Cell intentionally left blank
`Cell intentionally left blank
`Cell intentionally left blank
`
`Cell intentionally left blank
`Internet Control Message Protocol, Sept. 1981 (“RFC 792”)
`Requirements for Internet Hosts, Oct. 1989 (“RFC 1122”)
`
`Requirements for Internet Hosts, Oct. 1989 (“RFC 1122”)
`A Grammar Compiler for Connected Speech Recognition, Jan.
`1991 (“Brown”)
`
`An Introduction to Speech and Speaker Recognition, Aug.
`1990 (“Peacocke”)
`Design of a Command Interface with a Dynamic Grammar
`Speech Recognition Engine, Sept. 1998 (“Kruger”)
`
`CEBus Demystified, The ANSI/EIA 600 User’s Guide, 2001
`(“Evans”)
`Curriculum Vitae of Stuart Lipoff (“Lipoff CV”)
`
`Internet Protocol, Sept. 1981 (“RFC 791”)
`U.S. Patent No. 5,544,164 (“Baran”)
`Cell intentionally left blank
`
`Joint Claim Construction Statement, Case No. 6:21-cv-01073-
`ADA, Doc. No. 78 (“Claim Construction”)
`Amended Scheduling Order, Case No. 6:21-cv-01073-ADA,
`Doc. No. 75 (“Scheduling Order”)
`
`1025
`
`U.S. Patent Pub. No. 2002/0193989 (“Geilhufe”)
`
`
`
`iv
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`

`

`Ex.
`1026
`1026
`
`1027
`1027
`
`Doc. No. 1 (“Google Complaint’)
`
`Petition for Inter Partes Review
`Petition for Inter Partes Review
`U.S. Patent No. 7,386,455
`U.S. Patent No. 7,386,455
`
`Description
`Parus’s Complaint Against Samsung, Case No. 6:21-cv-
`Parus’s Complaint Against Samsung, Case No. 6:21-cv-
`01073-ADA,Doc. No. 1 (“Samsung Complaint’)
`01073-ADA, Doc. No. 1 (“Samsung Complaint”)
`Parus’s Complaint Against Google, Case No. 6:21-cv-00571,
`Parus’s Complaint Against Google, Case No. 6:21-cv-00571,
`Doc. No. 1 (“Google Complaint”)
`
`
`
`
`
`
`
`
`v
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`

`

`Petition for Inter Partes Review
`U.S. Patent No. 7,386,455
`
`LIST OF CHALLENGED CLAIMS
`
`U.S. Patent No. 7,386,455
`Cl.
`1[pre] A method for controlling at least one remote system by uttering
`speech commands into a voice enabled device, said method
`comprising the steps of:
`
`1[a]
`
`1[b]
`
`1[c]
`
`1[d]
`
`1[e]
`
`1[f]
`
`1[g]
`
`1[h]
`
`1[i]
`
`1[j]
`
`providing a computer operatively connected to the internet, said
`computer further being operatively connected to at least one
`speaker-independent speech recognition engine and to at least
`one speech synthesis engine;
`providing a voice enabled device operatively connected to said
`computer, said voice enabled device configured to receive
`speech commands from users;
`providing at least one instruction set stored in a database
`operatively connected to said computer, said instruction set
`comprising:
`
`at least one internet address, said at least one internet address
`identifying the location of said at least one remote system, said at
`least one remote system configured to execute at least one pre-
`selected function; and
`said at least one pre-selected function;
`
`providing a speech command to said speaker-independent speech
`recognition engine, said speech command corresponding to said
`instruction set;
`said speaker-independent speech recognition engine assigning
`said speech command to a recognition grammar, said speech
`command and said recognition grammar corresponding to said
`instruction set;
`transmitting said speech command to said speaker-independent
`speech recognition engine;
`
`said speaker-independent speech recognition engine receiving
`said speech command and selecting the corresponding
`recognition grammar upon receiving said speech command;
`said computer retrieving said instruction set corresponding to
`said recognition grammar selected by said speaker-independent
`speech recognition engine;
`
`
`
`vi
`
`

`

`Cl.
`
`1[k]
`
`1[l]
`
`
`2
`
`
`3
`
`
`4
`
`
`5
`
`
`6
`
`
`7
`
`Petition for Inter Partes Review
`U.S. Patent No. 7,386,455
`
`U.S. Patent No. 7,386,455
`
`said computer accessing said at least one remote system
`identified by said instruction set to prompt said at least one
`remote system to execute said at least one pre-selected function;
`and
`
`said at least one remote system executing said at least one pre-
`selected function.
`
`The method of claim 1 wherein said at least one remote system
`comprises a home-based system.
`
`The method of claim 2 wherein said system is selected from the
`group consisting of: outdoor lighting, indoor lighting, security
`system, heating system, and air conditioning system.
`
`The method of claim 3 wherein said at least one pre-selected
`function is selected from the group consisting of: turning the
`outdoor lighting on, turning the outdoor lighting off, dimming
`the outdoor lighting, turning the indoor lighting on, turning the
`indoor lighting off, dimming the indoor lighting, arming the
`security system, disarming the security system, turning the
`heating system on, turning the heating system off, adjusting the
`heating system temperature, turning the air conditioning on,
`turning the air conditioning off, and adjusting the air
`conditioning temperature.
`
`
`The method of claim 1 wherein said at least one remote system
`comprises an office-based system.
`
`
`The method of claim 5 wherein said system is selected from the
`group consisting of: outdoor lighting, indoor lighting, security
`system, heating system, and air conditioning system.
`
`
`The method of claim 6 wherein at least one pre-selected function
`is selected from the group consisting of: turning the outdoor
`lighting on, turning the outdoor lighting off, dimming the
`outdoor lighting, turning the indoor lighting on, turning the
`
`
`
`vii
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 7,386,455
`
`Cl.
`
`U.S. Patent No. 7,386,455
`
`indoor lighting off, dimming the indoor lighting, arming the
`security system, disarming the security system, turning the
`heating system on, turning the heating system off, adjusting the
`heating system temperature, turning the air conditioning on,
`turning the air conditioning off, and adjusting the air
`conditioning temperature.
`
`
`The method of claim 1 further comprising the step of
`periodically polling said at least one remote system to determine
`whether said remote system is operational or out of service.
`
`
`8
`
`
`
`9[pre] A system for controlling at least one remote system operatively
`connected to the internet by uttering speech commands into a
`phone, said system comprising:
`
`9[a]
`
`9[b]
`
`9[c]
`
`9[d]
`
`9[e]
`
`9[f]
`
`9[g]
`
`9[h]
`
`9[i]
`
`a computer, said computer operatively connected to the internet
`and to at least one phone;
`at least one speaker-independent speech recognition engine, said
`speaker-independent speech recognition engine operatively
`connected to said computer;
`at least one speech synthesis engine, said speech synthesis
`engine operatively connected to said computer;
`a database, said database operatively connected to said
`computer;
`at least one instruction set stored in said database, said
`instruction set comprising:
`at least one internet address, said at least one internet address
`identifying the location of said at least one remote system, said at
`least one remote system configured to execute at least one pre-
`selected function; and
`said at least one pre-selected function;
`
`at least one recognition grammar stored in said database, each
`said recognition grammar corresponding to each said instruction
`set and corresponding to a speech command;
`said speaker-independent speech recognition engine configured
`to receive from users via said phone a speech command and to
`
`
`
`viii
`
`

`

`Cl.
`
`U.S. Patent No. 7,386,455
`
`Petition for Inter Partes Review
`U.S. Patent No. 7,386,455
`
`9[j]
`
`9[k]
`
`9[l]
`
`
`
`10
`
`
`11
`
`
`12
`
`
`13
`
`
`14
`
`
`15
`
`select the corresponding recognition grammar upon receiving
`said speech command;
`said computer configured to retrieve said instruction set
`corresponding to said recognition grammar selected by said
`speaker-independent speech recognition device;
`said computer further configured to access said at least one
`remote system identified by said instruction set to prompt said at
`least one remote system to execute said at least one pre-selected
`function; and
`
`said at least one remote system configured to execute said at
`least one pre-selected function.
`
`
`The system of claim 9 wherein said phone comprises a standard
`telephone, a cellular phone, or an IP phone.
`
`The system of claim 9 wherein said internet is a local area
`network.
`
`The system of claim 9 wherein said internet is a wide area
`network.
`
`
`The system of claim 9 wherein said internet is the Internet.
`
`
`The system of claim 9 wherein said at least one remote system is
`selected from the group consisting of: outdoor lighting, indoor
`lighting, security system, heating system, and air conditioning
`system.
`
`
`The system of claim 14 wherein said at least one pre-selected
`function is selected from the group consisting of: turning the
`outdoor lighting on, turning the outdoor lighting off, dimming
`the outdoor lighting, turning the indoor lighting on, turning the
`indoor lighting off, dimming the indoor lighting, arming the
`security system, disarming the security system, turning the
`heating system on, turning the heating system off, adjusting the
`
`
`
`ix
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`

`

`Petition for Inter Partes Review
`U.S. Patent No. 7,386,455
`
`Cl.
`
`U.S. Patent No. 7,386,455
`
`heating system temperature, turning the air conditioning on,
`turning the air conditioning off, and adjusting the air
`conditioning temperature.
`
`
`
`
`16[pre] A method for controlling at least one remote system by uttering
`speech commands into a voice enabled device, said at least one
`remote system comprising an outdoor lighting system, an indoor
`lighting system, a security system, a heating system, or an air
`conditioning system, said method comprising the steps of:
`
`16[a]
`
`16[b]
`
`16[c]
`
`16[d]
`
`16[e]
`
`providing a computer operatively connected to the internet, said
`computer further being operatively connected to at least one
`speaker-independent speech recognition engine and to at least
`one speech synthesis engine;
`providing a voice enabled device operatively connected to said
`computer, said voice enabled device configured to receive
`speech commands from users;
`providing at least one instruction set stored in a database
`operatively connected to said computer, said instruction set
`comprising:
`
`at least one internet address, said at least one internet address-
`identifying the location of said at least one remote system, said at
`least one remote system configured to execute at least one pre-
`selected function; and
`said at least one pre-selected function, said pre-selected function
`comprising turning the outdoor lighting on, turning the outdoor
`lighting off, dimming the outdoor lighting, turning the indoor
`lighting on, turning the indoor lighting off, dimming the indoor
`lighting, arming the security system, disarming the security
`system, turning the heating system on, turning the heating
`system off adjusting the heating system temperature, turning the
`air conditioning on, turning the air conditioning off, or adjusting
`the air conditioning temperature;
`
`16[f]
`
`providing a speech command to said speaker-independent speech
`recognition engine, said speech command corresponding to said
`instruction set;
`
`
`
`x
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`

`

`Petition for Inter Partes Review
`U.S. Patent No. 7,386,455
`
`Cl.
`
`16[g]
`
`16[h]
`
`16[i]
`
`16[j]
`
`16[k]
`
`16[l]
`
`16[m]
`
`U.S. Patent No. 7,386,455
`
`said speaker-independent speech recognition engine assigning
`said speech command to a recognition grammar, said speech
`command and said recognition grammar corresponding to said
`instruction set;
`
`transmitting said speech command to said speaker-independent
`speech recognition engine;
`said speaker-independent speech recognition engine receiving
`said speech command and selecting the corresponding
`recognition grammar upon receiving said speech command;
`
`said computer retrieving said instruction set corresponding to
`said recognition grammar selected by said speaker-independent
`speech recognition engine;
`said computer accessing said at least one remote system
`identified by said instruction set to prompt said at least one
`remote system to execute said at least one pre-selected function;
`said at least one remote system executing said at least one pre-
`selected function; and
`said computer periodically polling said at least one remote
`system to determine whether said at least one remote system is
`operational or out of service.
`
`
`
`
`xi
`
`
`
`
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 7,386,455
`
`GROUNDS OF CHALLENGE - 37 C.F.R. § 42.204(b)(2)
`
`Ground of Challenge
`No.
`1 White renders obvious claims 1-4 and 9-15
`2 White in view of Geilhufe renders obvious claims 1-7 and 9-15
`
`3 White in view of Geilhufe and Bull renders obvious claims 8 and 16
`
`
`
`
`
`
`xii
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`

`

`Petition for Inter Partes Review
`U.S. Patent No. 7,386,455
`
`I.
`
`INTRODUCTION
`
`The ’455 patent claims are directed to the well-known notion of
`
`controlling a remote system over the Internet using speech, specifically, using
`
`“grammars” and “instruction sets.”
`
`But such systems were already well known in the art—so well-known
`
`that the claimed “grammars” had already become standardized well before the
`
`invention date of the ‘455 patent. Indeed, the ’455 patent itself relies on well-
`
`established vendors to provide the major components of its claimed systems,
`
`including the speech recognition and speech synthesis engines. Likewise, the
`
`configuration and connection of these well-known tools provides nothing
`
`novel. The ’455 patent’s claims recite connecting remote components over
`
`the internet but protocols for such connection had been well established. For
`
`example, in 1998, White disclosed such a system taking advantage of these
`
`well-established components in a remote configuration to control devices.
`
`Likewise, Geilhufe disclosed a similar system around the same time. Bull too
`
`explains several standard protocols for maintaining a system disposed on the
`
`internet that the ’455 patent attempts to claim.
`
`This is not the first IPR filed against the ’455 patent. Earlier this year,
`
`Google filed an IPR against the ’455 patent—that petition was denied
`
`institution. As discussed below, however, Google and Samsung are entirely
`
`
`
`1
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 7,386,455
`
`independent parties, and played no role whatsoever in either’s Petition.
`
`Moreover, this Petition presents entirely new prior art not considered by the
`
`Board in the Google petition. Indeed, this art is substantively different than
`
`the art cited in the Google petition, at least because this Petition applies the
`
`ordinary meaning of the term “Internet Address,” as that term has been applied
`
`by both the Patent Owner in its litigation complaint and by the Board in the
`
`Google Petition. Nor would there be any prejudice to Petitioner here, as this
`
`petition was filed against Parus as a direct result of its own litigation activity—
`
`namely, filing a complaint against Samsung for infringing the ’455 patent.
`
`II. MANDATORY DISCLOSURES
`
`Pursuant 37 C.F.R. § 42.8(a)(1), the following mandatory notices are
`
`provided as part of this Petition.
`
`A. Grounds for Standing - 37 C.F.R. § 42.104(a)
`
`Petitioner respectfully requests inter partes review (“IPR”) of claims 1-
`
`16 (“Challenged Claims”) of the ’455 patent, which is indicated as assigned
`
`to Parus Holdings Inc. (“Patent Owner” or “Parus”).
`
`Petitioner certifies that the ’455 Patent is available for inter partes
`
`review and Petitioner is not barred or estopped from requesting review of the
`
`Challenged Claims on the grounds identified in this Petition.
`
`
`
`2
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`

`

`Petition for Inter Partes Review
`U.S. Patent No. 7,386,455
`
`The Petition is filed and served timely. Samsung was served with the
`
`original complaint on November 5, 2021. The bar date is thus November 5,
`
`2022, which falls on a Saturday. Section 21(b) of the United States Code
`
`expressly states that when the day “for taking any action” falls on a Saturday,
`
`Sunday, or Federal Holiday, the “action may be taken or the fee paid, on the
`
`next succeeding secular or business day.” 35 U.S.C. § 21(b). The PTAB has
`
`repeatedly found that this applies to the bar date under 35 U.S.C. § 315(b).
`
`Indeed, the Board has found in multiple cases (one of them involving the
`
`Samsung) that where the § 315(b) bar date falls on a Saturday, the petition
`
`may be timely filed on the following Monday. Communications Test Design,
`
`Inc. v. Contec, LLC, IPR2019-01669, Paper 9 at 12-17 (PTAB Mar. 26, 2020)
`
`(finding that petition filed on a Monday was timely when the one-year bar
`
`date fell on a Saturday); Google LLC v. Realtime Adaptive Streaming, LLC,
`
`IPR2019-01036, Paper 9 at 8 (PTAB Nov. 30, 2019) (same); Samsung Elecs.
`
`Co., Ltd. v. Immersion Corp., IPR2018-01468, Paper 10 at 14, 19 (PTAB Feb.
`
`20, 2019) (same); Samsung Elecs. Co., Ltd. v. SEVEN Networks, LLC,
`
`IPR2018-01106, Paper 30 at 19 (PTAB Jan. 14, 2019) (same); Samsung Elecs.
`
`Co., Ltd. v. Elm 3DS Innovations, LLC, IPR2016-00386, Paper 14 at 4-5
`
`(PTAB Jul 1, 2016) (same).
`
`
`
`3
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`

`

`Petition for Inter Partes Review
`U.S. Patent No. 7,386,455
`
`B. Real Party in Interest
`
`Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner certifies Samsung
`
`Electronics, Co., Ltd. and Samsung Electronics America, Inc. are the real
`
`parties-in-interest.
`
`C. Related Matters
`
`A decision in this proceeding could affect the following other
`
`proceedings: (i) Parus Holdings Inc. v. Samsung Electronics America, Inc. et
`
`al., No. 6:21-cv-01073 (WDTX); (ii) Parus Holdings Inc. v. Google LLC, No.
`
`6:21-cv-00571 (WDTX).
`
`D. Counsel and Service Information - 37 C.F.R. § 42.8(b)(3)-(4)
`
`Petitioner provides the following counsel and service information.
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`Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney accompanies this
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`Petition. Petitioner agrees to accept electronic service at the email addresses
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`listed below.
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`Lead Counsel
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`Back-Up Counsel
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`James M. Glass (Reg. No.
`46,729)
`jimglass@quinnemanuel.com
`
`Postal and hand delivery address:
`QUINN EMANUEL URQUHART &
`SULLIVAN LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`Tel: (212) 849-7000
`Fax: (212) 849-7100
`
`Marissa Ducca (Reg. No. 59,807)
`marissaduca@quinnemanuel.com
`
`Postal and hand delivery address:
`QUINN EMANUEL URQUHART &
`SULLIVAN LLP
`1300 I Street NW
`Washington, DC 20005
`Tel: (202) 538-8000
`Fax: (202) 538-8100
`
`
`
`
`4
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`

`

`Petition for Inter Partes Review
`U.S. Patent No. 7,386,455
`
`John T. McKee (Reg. No. 65,926)
`johnmckee@quinnemanuel.com
`
`Postal and hand delivery address:
`QUINN EMANUEL URQUHART &
`SULLIVAN LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`Tel: (212) 849-7000
`Fax: (212) 849-7100
`
`
`
`E.
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`Payment of Fees - 37 C.F.R. § 42.15(a)
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`The undersigned authorizes the Office to charge the fee required for
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`this Petition for inter partes review to Deposit Account No. 50-5708. Any
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`additional fees that might be due are also authorized.
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`III. LEVEL OF SKILL IN THE ART
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`Petitioner proposes that a POSITA would have had a bachelor’s degree
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`in computer science or electrical engineering (or an equivalent degree) and at
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`least two years of experience in the field of voice interfaces and information
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`processing (or equivalent experience). Ex. 1003 at ¶¶4-5, 12-21.1 Petitioner
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`further proposes that more education could compensate for less experience
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`and vice versa. Id. at ¶40.
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`1 Petitioner’s expert, Mr. Lipoff, surpasses this level of skill in the art.
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`
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`5
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`

`

`Petition for Inter Partes Review
`U.S. Patent No. 7,386,455
`
`IV. OVERVIEW OF THE ’455 PATENT
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`U.S. Patent No. 7,386,455 (“the ’455 patent”) was filed on April 24,
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`2006 and claims priority to two provisional applications: U.S. Provisional
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`Application No. 60/180,344, filed on February 4, 2000 and U.S. Provisional
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`Application No. 60/233,068, filed on September 15, 2000. For purposes of
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`this Petition, a priority date of February 4, 2000 is assumed. Petitioner
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`reserves the right to challenge this priority date in this and future proceedings.
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`As seen below in Figure 5, the ’455 patent discloses a system for
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`controlling remote systems or devices (orange) connected to a network
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`(green) by using “naturally spoken, conversational voice commands.” Ex.
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`1001 at Abstract, 17:23-28.2 Speech commands can be spoken into a voice
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`enabled device such as a wired or wireless telephone (yellow). Id. at 17:23-
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`28. The voice enabled device can be connected to the system via a public
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`switched telephone network (PSTN) (red). Id. at 15:27-32. In one
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`embodiment, the remote system is a voice browsing system that can obtain
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`information from a list of web sites on the Internet. Id. at 2:62-3:11, 5:24-32.
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`2 To the extent the Board finds it helpful, Petitioner’s expert provides an
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`overview of the relevant technology as of the priority date of the ’455 Patent
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`in the attached expert declaration. Ex. 1003 at ¶¶44-64.
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`6
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`

`

`Petition for Inter Partes Review
`U.S. Patent No. 7,386,455
`
`In another embodiment, the remote system is a household or office device
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`connected to a network that can “be controlled by conversational voice
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`commands.” Id. at 3:24-28, 19:16-18.
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`
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`
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`Id. at Fig. 5.
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`
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`Voice control is enabled by a speaker independent “speech recognition
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`engine” that converts voice commands into “data messages.” Id. at 6:4-8. The
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`speech recognition engine recognizes grammars or keywords corresponding
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`to categories of information or devices. Id. at 6:21-52, 17:22-32, 18:39-63.
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`An instruction set stored in a database is used to identify the device. Id. at
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`Abstract. Upon receiving a speech command, a computer is configured to
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`access the device identified by the instruction set to execute a pre-selected
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`function. Id. at Abstract.
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`
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`7
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`

`

`Petition for Inter Partes Review
`U.S. Patent No. 7,386,455
`
`
`
`To ensure “robustness and reliability,” the patent further describes
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`“periodically polling or pinging” all devices in the database to determine
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`whether “new devices have been added” or whether “current devices are out
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`of service.” Id. at 18:64-19:4. The device browsing server monitors the
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`response received from each polled device. Id. at 19:4-9. Polled devices that
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`provide a recognized and expected response are categorized as in-service. Id.
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`at 19:6-9. By contrast, polled devices that provide no response or an
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`unexpected response are categorized as new or out-of-service. Id. at 19:9-12.
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`V.
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`PROSECUTION OF THE ’455 PATENT
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`As initially filed on April 24, 2006, the patent application for the ’455
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`patent included claims exclusively directed to a method and system for
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`“retrieving information from pre-selected web-sites.” Ex. 1002 at 40, 42. On
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`February 1, 2007, the examiner objected to the specification for having the
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`same abstract as U.S. Patent No. 6,721,705 and rejected all claims for double
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`patenting in view of U.S. Patent No. 7,076,431. Id. at 70-72.
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`On June 29, 2007, the patent applicant amended the abstract and claims
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`to make clear that the “invention relates to a system for controlling at least
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`one remote system operatively connected to the Internet.” Id. at 79. The
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`amended ’455 patent issued on June 10, 2008 after the examiner considered
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`
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`8
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`

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`additional references submitted by the patent applicant subsequent to a request
`
`Petition for Inter Partes Review
`U.S. Patent No. 7,386,455
`
`for continued examination. Id. at 128-42, 171.
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`VI. CLAIM CONSTRUCTION
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`Petitioner and Patent Owner have proposed certain claim constructions
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`in the District Court litigation. See Ex. 1023. However, none of these
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`proposed constructions are relevant to the present petition. Petitioner submits
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`that express interpretations of the challenged claims are not required to resolve
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`this petition. Because no constructions are necessary to resolve th is petition,
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`Petitioner proposes that the claim terms should be given their plain and
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`ordinary meaning.
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`VII. CITED ART
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`A. White (Ex. 1004)
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`As seen below in Figure 1, White describes a “distributed voice user
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`interface system” for controlling “local devices” through a “remote system”
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`(orange). Ex. 1004 at Abstract, 1:65-2:4, 8:39-41. Local devices can also act
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`as voice user interfaces that receive speech commands which are
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`communicated to the remote system via a telecommunications network (blue)
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`or network such as the internet (purple). Id. at 1:65-2:4; Ex. 1003 at ¶65.
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`
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`9
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`

`

`Petition for Inter Partes Review
`U.S. Patent No. 7,386,455
`
`
`
`Ex. 1003 at ¶65 (annotating Ex. 1004 at Fig. 1).
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`For example, as seen above in Figure 1, controlling local devices (red)
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`used for receiving speech commands can perform preliminary signal
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`processing of speech commands and can access more sophisticated “natural
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`language” speech recognition functionality implemented at the remote system
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`when necessary. Ex. 1004 at 2:4-10, 6:36-40. Once a command is received
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`and further processed by the remote system (orange), the remote system can
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`then execute a function at a controlled local device (green). Id. at 2:18-25,
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`2:45-61. The system can also be used