`
`Trials@uspto. gov
`
`571-272-7822
`
`Paper 10
`Entered: January 9, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD,and
`SAMSUNG ELECTRONICS AMERICA,INC.,
`Petitioner,
`
`V.
`
`STATON TECHIYA, LLC,
`Patent Owner.
`
`IPR2022-01106
`Patent 11,039,259 B2
`
`Before NATHAN A. ENGELS, MONICA S. ULLAGADDI, and
`RUSSELLE. CASS, Administrative Patent Judges.
`
`CASS, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`3S US.C. $ 314
`
`
`
`IPR2022-01106
`Patent 11,039,259 B2
`
`A. Background
`
`I.
`
`INTRODUCTION
`
`Samsung Electronics Co., Ltd, and Samsung Electronics America,
`
`Inc. (“Petitioner’’) filed a Petition requesting an inter partes review of claims
`
`1-6, 11, 12, 15, and 16 (the “challenged claims”) of U.S. Patent No. 11,039,
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`259 B2 (Ex. 1001, “the °259 patent’’). Paper 3, 1 (“Pet.”). Patent Owner
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`filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). With our
`
`permission, Petitioner filed a Preliminary Reply (Paper 8 (“Prelim. Reply”’))
`
`and Patent Ownerfiled a Preliminary Sur-reply (Paper 9 (“Prelim. Sur-
`
`reply”).
`
`An inter partes review may notbeinstituted unlessit is determined
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`that “the information presented in the petition filed under section 311 and
`
`any responsefiled under section 313 showsthat there is a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the
`
`claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also
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`37 C.F.R § 42.4(a) (2021) (“The Boardinstitutes the trial on behalf of the
`
`Director.”). The reasonable likelihood standardis “a higher standard than
`
`mere notice pleading,” but “lower than the ‘preponderance’ standard to
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`prevail in a final written decision.” Hulu, LLC v. Sound View Innovations,
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`LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).
`
`For the reasons provided below and based on the record before us, we
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`determine that Petitioner has demonstrated a reasonable likelihoodthatit
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`would prevail in showing the unpatentability of at least one of the
`
`challenged claims. Patent Owner has not persuadedus that we should
`
`exercise our discretion to deny institution of tral. Accordingly, we institute
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`an inter partes review on all groundsset forth in the Petition.
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`
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`IPR2022-01106
`Patent 11,039,259 B2
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`B. Real Parties in Interest
`
`Petitioner states that the real parties in interest are Samsung
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`Electronics Co., Ltd, and Samsung Electronics America, Inc. Pet. 1, 76.
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`Patent Ownerstates that Staton Techiya, LLC and Synergy IP Corporation
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`are the real parties in interest. Paper 5, 1.
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`C. Related Proceedings
`
`The parties state that the ’259 patent was asserted in Staton Techiya,
`
`LLC v. Samsung Electronics Co., Ltd., No. 2:21-cv-00053 (E.D. Tex.),
`
`which wasfiled on February 14, 2022 (the “00053 District Court Case’).
`
`Pet. 76; Paper 5, 1. Patent Owneralso states that the 00053 District Court
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`case was consolidated with Staton Techiya, LLC et al. v. Samsung Elecs.
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`Co., Ltd. et al., Case No. 2:21-cv-413 (E.D. Tex.) (the “413 District Court
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`Case’).
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`D. The ’259 Patent (Ex. 1001)
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`The ’259 patent is directed to a method and system for sound
`
`monitoring over a network. Ex. 1001, code (54). An overview of a mobile
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`communication environmentused in the invention is shownin Figure1,
`
`reproduced below.
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`
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`IPR2022-01106
`
`Patent 11,039,259 B2
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`Figure 1 of the ’259 patent shows a mobile communication
`environment used with the invention. Ex. 1001, Fig. 1, 2:10.
`
`As shown in Figure 1, mobile communication environment 100 includes
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`mobile device 160 that can communicate with base receiver 110 using a
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`standard communication protocol. Ex. 1001, 3:40-48. Mobile device 160
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`can be “a cell phone, a personal digital assistant, a portable music player, a
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`laptop computer, or any other suitable communication device.” /d. at 4:16—
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`18. Base receiver 1001 can connect mobile device 160 over a packet
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`switched link to the Internet 120, which can support application services and
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`service layers for providing media or content to mobile device 160.
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`/d. at
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`3:51-55. Mobile device 160 can also establish connections with a server
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`130 on the network and with another mobile device 170 for exchanging data
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`and information.
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`/d. at 3:57—60.
`
`In one embodiment, mobile device 160 can open a communication
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`channel to server 130 and stream captured audio to the server. /d. at 6:23—
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`
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`IPR2022-01106
`Patent 11,039,259 B2
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`25. The audio stream may be analyzed at server 130 to determineif any
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`recognized soundsare present in the audio stream.
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`/d. at 6:25—27. Server
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`130 may send a message back to mobile device 160 identifying the sounds
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`recognized in the audio stream.
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`/d. at 6:28-30.
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`Figure 8 of the ’259 patent, reproduced below, depicts a method for
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`sound monitoring, measuring, and reporting over a network using mobile
`
`devices in accordance with one embodimentof the ’259 patent.
`
`
`
`Moiiie Geving monitors acqustls
`signats in ths ambient environment
`
`
`| Mobile device bagins buifering
`| aanistc signais upon detection of art
`
`Roe
`*| event fe.g., SPLthreshold)
`Sos
`
`
`
`
`
`
`| Mobile devine exiracis feaiures from
`the acoustic signats
`Ba
`
`channel with s server
`
`:
`
`
`| Mabite device irananitsthe tage and
`{| Mobile device recvivestag iormation
`| foaturag (or caustic signals} to the
`|
`fo associate with ihe features oF the
`
`| acoustic signal|Be “rl server over fhe ones cammunicstion |
`| channel,
`TBA
`
`
`
`
`
`ercmernrnenanmncesl
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`;
`
`
`
`
`
`Server generaies and logs a sound
`i analyis report in viewofthe analysis
`Hi6
`
`:
`Server analyzes the features and tage
`|
`tacougtls signal} for sound geessure
`i
`— tevets and sound signatures
`,
`|
`ata
`
`|
`|
`q
`
`ay Ld
`
`
`
`
`
`
`me
`: Server trangmits raporl ip the
`t device ar subscriber for preaertation
`| finda device prasents details of the
`BAB
`report ie the user
`
`Boe
`
`Figure 8 of the °259 patent depicts a method for sound monitoring,
`measuring, and reporting over a network using mobile devices. Ex. 1001,
`Fig. 8, 2:31—33; 12:6-8.
`
`As shownin Figure 8, at step 802, the mobile device monitors acoustic
`
`signals in the ambient environment. Ex. 1001, 12:14—15. The mobile
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`
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`IPR2022-01106
`Patent 11,039,259 B2
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`device’s microphone “can actively analyze acoustic signals in the
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`environmentand begin processing of the acoustic signals upon detection of a
`
`trigger event.” /d. at 12:15—-17. In step 804, “mobile device 160 begins
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`buffering the acoustic signals” when “a trigger event occurs.” /d. at 12:18—
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`20. A “trigger event”is “is an eventthat initiates the collection of audio
`
`content or the measurement of sound pressure level, that is sent to server 130
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`(or an associated database for storage).” /d. at 6:60-63. “Examples of
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`trigger events for mobile device 160 to collect audio content are the
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`detection of a sound similar to a sound signature, a time window, geographic
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`location, sound pressure level, and sensor data (biological,
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`acceleration/velocity, odor, chemical detection, visual, etc.).” /d.at 6:63-67.
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`In step 806 of Figure 8, “[t]he trigger event initiates the mobile device
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`160 to proceed to open a communication channel with the server 130.”
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`Ex. 1001, 12:33-35. In step 808, “mobile device 160 extracts features from
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`the acoustic signals.” /d. at 12:46—47. “Metadata or tag information is
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`generated and automatically attached with the features or acoustic signals.”
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`Id. at 13:1-2. In step 812, the mobile device “transmits the tags and features
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`(or acoustic signals) to the server 130 over the open communication
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`channel,” which “can be packaged together or sent separately over the
`
`network.” /d. at 13:17—20. In step 814, “the server 130 analyzes the
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`features and tags (acoustic signal) for sound pressure levels (SPLs) and
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`sound signatures,” which are “specific sound event[s] such as a car horn, a
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`siren, [or] a whistle.” /d. at 13:25—27, 13:41-44. “Upon detection of a
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`sound signature and SPL levels,” server 130 at step 816 “can generate and
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`log a sound analysis report in view of the analysis,” which “can identify the
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`sound signatures detected, their corresponding SPL levels, and other
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`
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`IPR2022-01106
`Patent 11,039,259 B2
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`information such as whether the soundis a threat or the type of sound
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`detected.” /d. at 13:61-66. At step 818, server 130 “transmits the report to
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`the mobile device or subscriber by way of the open communication channel,
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`or other means.” /d. at 14:9-11. At step 820, “the mobile device presents
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`the details of the report to the user,” for example “in a visual or audible
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`format, or a combination thereof.
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`/d. at 14:9-14.
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`EE.
`
`Illustrative Claims
`
`Of challenged claims 1-6, 11, 12, 15, and 16, claims 1 and 12 are
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`independent. For purposesofthe issues raised at this stage of the
`
`proceeding, claim | is illustrative and is reproduced below.
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`1. [pre] A wearable device, comprising:
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`[a] a microphone;
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`[b] amemory that stores instructions; and
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`[c] a processor that executes the instructions to perform
`operations, the operations comprising:
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`[d] receiving an acoustic signal from the microphone
`configured to measure an ambient environment;
`
`[e] analyzing the acoustic signal to detect a trigger event;
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`[f] opening a communication channel with a remote server
`if a trigger eventis detected;
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`[g] generating metadata;
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`[h] transmitting the metadata, and the acoustic signal to
`the server via the communication channel; and
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`[i] receiving, from the server an analysis of the acoustic
`signal including whether a sound signature has been
`detected.
`
`Ex. 1001, 18:2—18 (indents and bracketed paragraph identifiers added).
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`
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`IPR2022-01106
`Patent 11,039,259 B2
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`I’. Applied References
`
`Petitioner relies upon the following references:
`
`Couper, US 9,135,797 B2, issued September 15, 2015
`. 1008, “Couper’’);
`
`(Ex
`
`Lemelson, US 6,028,514, issued February 22, 2000
`. 1009, “Lemelson’’);
`
`(Ex
`
`Jones, US 8,018,337 B2, issued September 13, 2011
`. 1010, “Jones”’);
`
`(Ex
`
`Lagassey, US 2006/0092043 A1, published May 4, 2006
`. 1011, “Lagassey”);
`
`(Ex
`
`White, US 6,408,272 B1, issued June 18, 2002
`_ 1012, “White”):
`
`(Ex
`
`Soufflet, US 2005/0102142 Al, published May 12, 2005
`. 1013, “Soufflet’’);
`
`(Ex
`
`Comerford, US 2007/0043563 Al, published February
`22, 2007 (Ex. 1014, “Comerford”.
`
`Pet. v, 2. Petitioner submits the Declaration of Dr. Les Atlas. (Ex. 1002).
`
`Patent Owner submits the Declaration of David Kleinschmidt (Ex. 2001).
`
`G. Asserted Grounds of Unpatentability
`
`Petitioner challenges the patentability of claims 1-6, 11, 12, 15, and
`
`16 of the ’259 patent based on the following grounds:
`
`
`
`
`
` Couper, Lemelson
` 103(a)
`
`Couper, Lemelson, Jones
`
`
`
`
`
`
`1-4,6,11, 12
`
`1,5, 12,15, 16
`
`Pet. 2.
`
`103(a)
`
`103(a)
`
`Couper, Lemelson, Jones,
`Lagassey
`
`
`
`White, Soufflet, Comerford
`
`
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`IPR2022-01106
`Patent 11,039,259 B2
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`IT.
`
`DISCUSSION
`
`A. Discretion Under 35 U.S.C. § 314(a) Based on Related District Court
`Litigation
`
`Patent Ownerasserts that institution should be denied under 35 U.S.C.
`
`§ 314(a), in deference to the parallel district court litigation between the
`
`parties, which Patent Ownerasserts would be a moreefficient and fair forum
`
`for resolving the parties’ disputes. See Prelim. Resp. 39—47; Prelim.
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`Sur-reply. Petitioner disagrees. Pet. 73—76; Prelim. Reply.
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`Under 35 U.S.C. § 314(a), the Director has discretion to deny
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`institution of review. See SAS Inst. Inc. v. lancu, 138 S. Ct. 1356 (2018)
`
`(“[Section] 314(a) invests the Director with discretion on the question
`
`whetherto institute review.” (emphasis omitted)); Cuozzo Speed Techs.,
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`LLC y. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny
`
`a petition is a matter committed to the Patent Office’s discretion.”’);
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`Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016)
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`(“[T]he PTO is permitted, but never compelled, to institute an IPR
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`proceeding.”’).
`
`In determining whetherto exercise this discretion based on an early
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`trial date in related litigation, the Board assessesall relevant circumstances,
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`including the merits, to balance considerations such as system efficiency,
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`fairness, and patent quality. See Apple Inc. v. Fintiv, Inc., IPR2020-00019,
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`Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv Order”); NHK
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`Spring Co. v. Intri-Plex Techs., Inc., 1PR2018-00752, Paper 8 at 19-20
`
`(PTAB Sept. 12, 2018) (precedential). The Board evaluates six factors when
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`making this assessment:
`
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceedingis instituted;
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`
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`IPR2022-01106
`Patent 11,039,259 B2
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`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`
`3. investmentin the parallel proceeding by the court and the
`parties;
`
`4. overlap between issuesraised in the petition and in the
`parallel proceeding;
`
`5. whether the petitioner and the defendantin the parallel
`proceeding are the same party; and
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`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
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`Fintiv Order at 5—6. In evaluating these factors, we “take[] a holistic view of
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`whetherefficiency and integrity of the system are best served by denying or
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`instituting review.” /d. at 6.
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`On June 21, 2022, the Director issued an Interim Procedure for
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`Discretionary Denials in AJA Post-Grant Proceedings with Parallel District
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`Court Litigation (“Interim Fintiv Guidance”).' The Interim Fintiv Guidance
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`provides “several clarifications” to “the PTAB’s current application of Fintiv
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`to discretionary denial wherethere is parallel litigation” in response to
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`comments received from stakeholders in response to a Request for
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`Comments. Interim Fintiv Guidance 2.
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`Wenowturn to an analysis of the Fintiv factors. As discussed above,
`
`the ’259 patent wasasserted in the 00053 District Court Case, which was
`
`consolidated with the 413 District Court Case. See § LC, supra.
`
`With respect to factor 1, both parties agree that this factor is neutral.
`
`Pet. 73; Prelim. Resp. 40.
`
`' The Interim Fintiv Guidanceis available at
`https://www.uspto.gov/sites/default/files/documents/interimproc__
`discretionarydenialsaiaparalleldistrictcourtlitigationmemo_
`20220621 pdf.
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`10
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`IPR2022-01106
`Patent 11,039,259 B2
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`With respect to factor 2, the Interim Fintiv Guidancestates that “[a]
`
`court’s scheduledtrial date .
`
`.
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`. is not by itself a good indicator of whether
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`the district court trial will occur before the statutory deadline for a final
`
`written decision.” Interim Fintiv Guidance 8. The Guidance also explains
`
`that “[p]arties may present evidence regarding the most recentstatistics on
`
`median time-to-trial for civil actions in the district court in which the parallel
`
`litigation resides for the PTAB’s consideration.” /d. at 8-9. The most
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`recent statistics for the Eastern District of Texas’s median timeto trialis
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`24.2 months, which would put the anticipated trial date in November 2023.
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`See https://www.uscourts.gov/statistics/table/na/federal-court-management-
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`statistics/2022/03/31-1; Ex. 1030. The deadline for our final written
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`decision in this proceeding will be in early January 2024. Because the
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`deadline for our final written decision is close to but (approximately two
`
`months) later than the November 2023 expectedtrial date in the 413 District
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`Court Case, we find that factor 2 weighsslightly in favor of exercising
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`discretion to deny institution.
`
`Turning to factor 3, Patent Ownerarguesthat fact discovery in the
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`413 District Court Case is ongoing, and that the dates for document
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`production and claim construction briefing in that case will have passed by
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`the time of our institution decision in this case. Prelim. Resp. 42. Petitioner
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`respondsthat significant investment remains to be made in the related
`
`litigation, including the completion of fact discovery and expert reports, a
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`claim construction ruling, and dispositive motions. Prelim. Reply 3.
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`Petitioner also arguesthat it was diligentin filing its Petition less than four
`
`monthsafter the district court complaint wasfiled. Pet. 73; Prelim. Reply 3.
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`Because of the significant investment that remains in the 413 District Court
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`IPR2022-01106
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`Case, and Petitioner’s diligentfiling of this inter partes review proceeding,
`
`wefind that factor 3 weighs against exercising discretion to deny institution.
`
`With respect to factor 4, Petitioner has stipulated thatif a trial is
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`instituted in this proceeding,it will not challenge the ’259 patent in the
`
`related litigation on any ground that includes the Couper or White
`
`references. Pet. 75; Prelim. Reply 4; Ex. 1033, 2. Petitioner argues that this
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`stipulation is broader than the one in Sand Revolution IT, LLC v. Continental
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`Intermodal Group-Trucking LLC, IPR2019-01393, Paper 24 at 11-12
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`(PTAB June 16, 2020) (informative), and that the Board has weighed a
`
`similar stipulation against exercising discretion to deny institution in Google
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`LLC vy. Parus Holdings, Inc., 1PR2022-00358, Paper 7 at 14 (PTAB Aug. 4,
`
`2022) and Samsung Electronics Co. v. Scramoge Tech. Ltd., 1PR2022-
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`00385, Paper 14 at 16 (PTAB June 23, 2022). Pet. 75; Prelim. Reply 4. We
`
`agree with Petitioner that its stipulation is broader than the stipulation at
`
`issue in Sand Revolution, and that Petitioner’s stipulation will meaningfully
`
`reduce the potential for overlap between the cases. Accordingly, we find
`
`that factor 4 weighs against exercising our discretion to deny institution.
`
`With respect to factor 5, the parties in this proceeding are also parties
`
`in the 413 District Court Case. Pet. 75; Prelim. Resp. 45. As discussed with
`
`respect to factor 2, the estimated trial date for the 413 District Court Case is
`
`earlier than, but close in time to, the expected date of our final written
`
`decision. Thus, we find that factor 5 weighs slightly in favor of exercising
`
`discretion to deny institution.
`
`With respect to factor 6, the Interim Fintiv Guidance explains that the
`
`Board “considers the merits of a petitioner’s challenge when determining
`
`whetherto institute a post-grant proceeding in view ofparallel district court
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`12
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`IPR2022-01106
`Patent 11,039,259 B2
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`litigation.” Interim Fintiv Guidance at 4. “Where the information presented
`
`at the institution stage is merely sufficient to meet the statutory institution
`
`threshold, the PTAB has the authority, where warranted, to exercise
`
`discretion to deny institution in view of the other /intiv factors.” Jd. “In
`
`contrast, where the PTAB determinesthat the information presented at the
`
`institution stage presents a compelling unpatentability challenge, that
`
`determination alone demonstrates that the PTAB should notdiscretionarily
`
`deny institution under Fintiv.” Id. at 4—S.
`
`As discussed below, we determine that Petitioner has shown a
`
`reasonablelikelihood of unpatentability of at least independent claim 1.
`
`Beyondthat, given the facts relating to the other Fintiv factors in this case,
`
`we neednot determineat this time whether Petitioner’s showingis
`
`“compelling” in order to decide whetherto exercise our discretion to deny
`
`institution in this proceeding. Therefore, we treat this factor as neutral in our
`
`analysis.
`
`Asnoted above, we take “a holistic view of whether efficiency and
`
`integrity of the system are best served by denyingorinstituting review.”
`
`Fintiv Order at 6. Weighingall of the factors, we are not persuadedthat the
`
`interests of efficiency and integrity of the system would be best served by
`
`invoking 35 U.S.C. § 314(a) to deny institution of a potentially meritorious
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`Petition. Based on the record before us, we determine the facts of this case
`
`do not warrant discretionary denial.
`
`B. Claim Construction
`
`A claim “shall be construed using the same claim construction
`
`standard that would be used to construe the claim in a civil action under 35
`
`U.S.C. § 282(b).” 37 CER. § 42.100(b).
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`13
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`Petitioner proposesthat no express claim construction is necessary
`
`and “the claims should be given their plain and ordinary meaning.” Pet. 13—
`
`14.
`
`Patent Owner proposesconstructions for two terms: “trigger event”
`
`and “sound signature.” Prelim. Resp. 22. Patent Ownerarguesthat “trigger
`
`event” should be construed as “an event that initiates the collection of audio
`
`content or the measurement of sound pressure level.” /d. at 23. Patent
`
`Ownerarguesthat its construction “captures the definition provided in the
`
`specification,” which is “an event that initiates the collection of audio
`
`content or the measurement of sound pressure level that is sent to server 130
`
`(or an associated database for storage).” /d. (citing Ex. 1001, 6:60—63).
`
`Patent Ownerarguesthat the term “sound signature” should be construed as
`
`“a specific sound event” based on the ’259 patent specification’s statement
`
`that “[a] sound signature is a specific sound event such as a car horn,a siren,
`
`[or] a whistle.” /d. at 23-24 (citing Ex. 1001, 13:43-44). Based on the
`
`present record, we determinethatit is not necessary to provide an express
`
`interpretation of the terms “trigger event” or “sound signature” for purposes
`
`of institution. See Realtime Data, LLC v. lancu, 912 F.3d 1368, 1374 (Fed.
`
`Cir. 2019) (“The Board is required to construe ‘only those terms. .
`
`. that are
`
`in controversy, and only to the extent necessary to resolve the
`
`controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200
`
`F.3d 795, 803 (Fed. Cir. 1999)).
`
`Additionally, when addressing Ground 1, Patent Owner appears to
`
`construe the language “analyzing the acoustic signal to detect a trigger
`
`event” in limitation 1[e] to exclude analyzing an acoustic signal to determine
`
`whether it matches a sound signature. Prelim. Resp. 25—28. As discussed
`
`14
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`IPR2022-01106
`Patent 11,039,259 B2
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`further in Section II.E.3(e) below, we do not agree with Patent Owner’s
`
`apparent construction of this phrase based on the present record. See
`
`§ ILE.3(e), infra.
`
`Furthermore, when addressing Ground 3, Patent Ownerappearsto
`
`construe the phrase “opening a communication channel with a remote server
`
`if a trigger event is detected”in limitation 1[f] to require thatif a trigger
`
`event is detected, the processor must always open a communication channel
`
`with a remote server. Prelim. Resp. 34-35. As discussed below in Section
`
`II.H.4(f), we do not agree with Patent Owner’s interpretation of this phrase
`
`based on the present record. See § II.H.4(f), infra.
`
`Wealso determinethat it is not necessary to construe any other claim
`
`termsat this stage of the proceeding. See Realtime Data, 912 F.3d at 1374;
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`Vivid Techs., 200 F.3d at 803.
`
`C. Principles ofLaw
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`A claim is unpatentable under 35 U.S.C. § 103 if “the differences
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`between the subject matter sought to be patented and the prior art are such
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`that the subject matter as a whole would have been obviousat the time the
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`invention was madeto a person having ordinary skill in the art to which said
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`subject matter pertains.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
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`(2007). The question of obviousness is resolved on the basis of underlying
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`factual determinations, including (1) the scope and content of the priorart;
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`(2) any differences between the claimed subject matter and the priorart;
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`(3) the level of skill in the art; and (4) where in evidence, objective evidence
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`of non-obviousness.”?_ Graham v. John Deere Co. ofKansas City, 383 U.S.
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`? Atthis stage of the proceeding, Patent Ownerhas not presented objective
`evidence of non-obviousness.
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`15
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`1, 17-18 (1966). When evaluating a combination of teachings, we must also
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`“determine whether there was an apparent reason to combine the known
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`elements in the fashion claimedbythe patent at issue.” KSR, 550 U.S. at
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`418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Whether a
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`combination of prior art elements would have produced a predictable result
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`weighs in the ultimate determination of obviousness.
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`/d. at 416-417.
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`In an inter partes review,the petitioner must show with particularity
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`why each challenged claim is unpatentable. Harmonic, 815 F.3d at 1363; 37
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`C.F.R. § 42.104(b) (2020). The burden of persuasion never shifts to Patent
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`Owner. Dynamic Drinkware, LLC vy. Nat’l Graphics, Inc., 800 F.3d 1375,
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`1378 (Fed. Cir. 2015).
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`Weanalyze the challenges presented in the Petition in accordance
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`with the above-stated principles.
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`D. Level of Ordinary Skill in the Art
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`Petitioner contendsthat a person of ordinary skill in the art at the time
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`of the alleged invention would have had “a bachelor’s degreein electrical
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`engineering, computer science, or a similar field and two years of experience
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`in the design of digital audio systems and associated signal processing such
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`as voice or speech processing and/or acoustic pattern recognition.” Pet. 13.
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`Petitioner further states that the person of ordinary skill “could have also
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`obtained similar knowledge and experience through other means.” /d.
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`Patent Owner“applies the level of ordinary skill in the art that 1s proposed in
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`the Petition.” Prelim. Resp. 22.
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`For purposesof this Decision, we adopt Petitioner’s assessment of the
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`level of ordinary skill in the art.
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`16
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`E. Ground 1:° Asserted Obviousness ofClaims 1-4, 6, 11, and 12 Based
`on Couperin view ofLemelson
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`Petitioner contends that claims 1—4, 6, 11, and 12 would have been
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`obvious over Couperin view of Lemelson. Pet. 14-33. Patent Owner
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`disagrees, arguing that Petitioner has failed to establish that these claims
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`would have been obvious based on Couper and Lemelson. Prelim. Resp.
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`25-31.
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`1. Overview of Couper (Ex. 1008)
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`Couperis directed to “a method of identifying incidents using mobile
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`devices.” Ex. 1008, 1:34—-35. Couper explainsthat “[f]ixed location audio
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`sensors” for crime prevention were known,but that those systems are
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`“costly to deploy,” and Couper proposes “a methodof identifying incidents
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`using mobile devices.” /d. at 1:6—9, 1:25-26, 1:34-35.
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`Figure 1 of Couper, reproduced below,discloses an embodimentof
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`Couper’s incident identification system.
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`3 Here, and elsewherein the Decision, the identification of the grounds using
`designations such as “Ground 1” and “Ground 2”refers to the designation of
`the groundsas presented in the Petition.
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`17
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`Patent 11,039,259 B2
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`FIG. 1
`Figure 1 shows an embodiment of Couper’s incident identification system
`using mobile devices. Ex. 1008, Fig. 1, 4:8—9.
`
`Ex. 1008, Fig. 1, 4:8-9. As shown in Figure 1, system 100 can include a
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`plurality of mobile devices 105 and 110, which “can be implemented as
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`mobile phones, personal digital assistants, or any other device capable of
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`sending and receiving data over wireless communication links 140 and 145
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`via the communication network 135.” Jd. at 4:8-14, 4:30-34. Mobile
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`devices 105 and 110 can include signature detector 115, which can compare
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`audio received by the internal microphone of a mobile device with sound
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`signatures 120, which “are audio profiles of sounds that have been
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`determined to be indicative of an incident,” such as “gunshots, explosions,
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`sirens, alarms, breaking glass, auto accidents, yelling or screaming,[or] calls
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`for help.” /d. at 4:43-44, 4:62-5:1.
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`18
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`“Upon determining that the sound 150 matches a sound signature 120,
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`the mobile device 105 can send a communication to the event processor
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`125,” which “can include any information determined by the signature
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`detector 115” and may, “in one embodiment,initially exclude any audio that
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`ha[s] been recorded or collected by the mobile device 105.” /d. at 6:20—22,
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`6:31—36. Event processor 125 “can analyze the received information from
`
`the various mobile devices and comparethat information with an incident
`
`validation policy to determine when a valid incidenthas taken placeoris
`
`taking place.” Jd. at 6:54-57. Event processor 125 “optionally can request
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`audio from one or more of the mobile devices” and “perform its own
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`analysis and comparison of the detected sound, from the recording(s)
`
`furnished by the mobile device(s), with one or more sound signatures,”
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`which can be useful because event processor 125 “can include more robust
`
`and/or sophisticated audio analysis software than can reasonably included or
`
`executed in a mobile device.” /d. at 9:1—2, 9:42—49.
`
`2. Overview ofLemelson (Ex. 1009)
`
`Lemelsonis directed to “emergency warning systems and methods,
`
`and, in particular, to systems and methodsthat have the capability to
`
`automatically warn individuals of a variety of types of emergenciesin their
`
`immediate vicinity.” Ex. 1009, 1:5—8. Lemelson’s system includes a
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`“portable warning unit that is carried by a person”and is similar in size to a
`
`“telecommunications pager, cellular telephone, or a traditional walkie-
`
`talkie.” Jd. at 3:4—5, 17:25-27. An embodimentof the portable warning
`
`unit is shown in Figure 2, reproduced below.
`
`19
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`Prosessar
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`GP
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`faemiony
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`3
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`GSS tntenns
`
`
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` Signalouting,sro:CeartendCare
`
`
`
`.
`poe.
`«FIG, 2
`Aactinte
`Figure 2 of Lemelson shows an embodiment of comprehensive integrated
`personal emergency warning andsafety system unit 12. Ex. 1009, Fig. 2,
`11:1-2.
`
`Warning unit 12 includes microphone 60, along with microprocessorcontrol
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`42 and memory44 whichare “used to control the overall operation of the
`
`warning unit 12.” Ex. 1009, 11:12—14, 11:28—30.
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`Lemelson’s warning unit includes “speech detection circuitry” which
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`“is used to determine whether or not human speechis present.” Ex. 1009,
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`14:29-31. If speech is recognized, “[t]he spoken words are compared with a
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`speech library stored in memory” which indicate “whether an alarm or
`
`distressful situation 1s occurring that requires attention or immediate
`99 66.
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`response,” for example, “robbery,”
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`“rape,” “help,” “heart attack,” or “similar
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`20
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`IPR2022-01106
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`selected phrases indicating an emergencysituation.” /d. at 14:31-40. If an
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`emergency is detected, an alarm is activated, which can be an audible alarm,
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`a vibration, a visible alarm, or any combination thereof.
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`/d. at 13:25—28,
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`14:41-44.
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`Individual emergency warning units may request assistance from a
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`monitor/response center and mayreceive signals from a monitor/response
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`center. Ex. 1009, 10:43-48. The monitor/response center may transmit
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`messages back to the warning unit that “will serve to inform the user of
`
`warning unit 12 that help is on the way and also to issue warning to an
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`attacker or to provide instructions for emergency medical assistance(i.e.
`
`instructions for a diabetic in need of medication etc.) or emergencyhelp.”
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`Id., 15:61-16:4.
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`3. Analysis ofIndependent Claim 1
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`a)
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`If[pre]: “{a] wearable device, comprising: ”
`
`Petitioner arguesthat, to the extent the preambleis limiting, the
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`Couper-Lemelson combination discloses or suggests it. Pet. 14 (citing
`
`Ex. 1002 4 74-81). “For example,” Petitioner asserts, “Couper discloses
`
`implementing the mobile devices 105 and 110 as ‘any .. . device capable of
`
`sending and receiving data’ over a network,” and “Lemelson further
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`discloses a ‘warning unit 12’ that 1s a size ‘similar to that of a modem [sic]
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`day telecommunicationspager, cellular telephone, or a traditional walkie
`
`talkie’ and ‘is worn by the user[.]’” /d. at 14—15 (citing Ex. 1008, 4:30—34;
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`Ex. 1009, 4:4—-32, 12:24—27, 13:20—25, 17:23-27, 20:7-18).
`
`Accordingto Petitioner, one of ordinary skill “would have been
`
`motivated to implement Couper’s method of identifying incidents using
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`devices sized and configured to be worn by the user as taught by Lemelson”
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`21
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`at least because “such a device would be convenient to carry and better
`
`equipped to measure ambient sound than devices that required being held in
`
`the handor carried in a pocket, as the microphone would beable to receive
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`ambient sound in a less attenuated or muffled manner.” /d. at 15 (citing
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`Ex. 1002 99 78-79). Petitioner further argues that one of ordinary skill
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`“would have had a reasonable expectation of success inasmuch as Couper
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`discloses that mobile devicesit discusses may be ‘any other device’ capable
`
`of communicating over a network.” /d. (citing Ex. 1008, 4:30—34; Ex. 1002
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`{ 80).
`
`Patent Owner doesnot present arguments regarding the preamble.
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`See Prelim. Resp. 25-39.
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`Wedetermine that, on the record before us, Petitioner’s cited evidence
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`sufficiently supports its contentions regarding the preamble.*
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`b)
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`Ifa]: “a microphone; ”
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`Petitioner argues that Couper in combination with Lemelson discloses
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`this limitation. Pet. 15 (citing Ex. 1002 4 82-83). “For example,”
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`Petitioner asserts, “Couper discloses a mobile device with an ‘internal
`
`microphone’ that
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