IP Law Daily, PATENT—Fed. Cir.: Obviousness of voice-command system patent affirmed, (Aug 2, 2024)

By Kevin M. Finson

A patentee did not show any error in a Patent Trial and Appeal Board decision invalidating its voice-command system patent for obviousness.

The Patent Trial and Appeal Board properly found that all claims in a patent directed to a mobile device voice command system were invalid as obvious over a combination of two prior art patents, the U.S. Court of Appeals for the Federal Circuit has held. First, the petitioner’s arguments were not forfeited merely because they were not included in its arguments for rehearing before the Board. Second, the patentee failed to show that the obviousness determination would have been different under its preferred claim construction. Claims of error in claim construction are moot without a showing of prejudice. Finally, substantial evidence supported the Board’s finding that a skilled artisan at the time of the invention would have been motivated to combine the prior art references (Voice Tech Corp. v. Unified Patents, LLC, No. 22-2163 (Fed. Cir. August 1, 2024)).

Voice Tech Corporation (Voice) was the owner of U.S. Patent No. 10,491,679 (the ’679 patent), titled “Using Voice Commands from a Mobile Device to Remotely Access and Control a Computer” which related to the use of voice commands directed to a mobile device to control a computer, and specifically claimed improvement over the prior art by enabling a single mobile device to remotely access and control multiple native applications and operating system functions of the computer.

Unified Patents, LLC (Unified) petitioned for inter partes review of claims 1-8 on the ground of obviousness. The Patent Trial and Appeal Board (PTAB) instituted review and found the challenged claims unpatentable as obvious. Unified appealed.

Identification of disclosure. Voice argued that the Board erred in finding that a particular prior art reference disclosed the “mobile device interface” recited in two of the claims because Unified’s petition did not identify the disclosure.

The court held that Unified had properly referred back to its analysis of prior claims in making its argument about the “mobile device interface” and was not required to repeat itself when a cross-reference made its meaning clear.

Claim construction. Voice argued that the Board erred in construing the terms “audio command interface” and “mobile device interface.” Unified countered that those arguments were forfeited because Voice Tech did include them in its arguments for rehearing before the Board. Unified also contended that these constructions would not change the Board’s obviousness decision.

“As an initial matter, we note that nothing in the statutes or regulations requires a party to an IPR to file a request for rehearing to preserve a right to appeal to this court,” the Federal Circuit said. 37 C.F.R. § 42.71(d) provides that filing a rehearing request is optional. “Nothing in the regulation appears to contemplate that the Board would expect requests for rehearing, if filed, to regurgitate all arguments the Board had already considered and rejected, simply to preserve them for appeal,” the court added. Therefore, “a party’s choice to not re-raise an argument in the party’s request for rehearing to the Board does not, in and of itself, forfeit the argument for review by this court.”

In addition, Voice was unable to show how its preferred construction would alter the ultimate obviousness analysis. Without a showing that the preferred construction would command a different result than the Board’s adopted construction, there was no prejudice and therefore no reason for the reviewing court to determine which construction was correct.

Obviousness. Voice argued that the Board erred in finding that a certain combination of prior art references disclosed the challenged claim limitations and that the obviousness determination was based on hindsight bias. The Board had held that a person skilled in the art would find it obvious to combine one reference, which taught a speech recognition engine and keyword database, with another that taught logic capable of interpreting natural-language voice commands to select from a database of commands for controlling multiple services. This was supported by expert testimony which the Board was entitled to credit. The court also rejected the hindsight argument, finding that the same expert testimony addressed the state of the art at the time of the invention.

The Federal Circuit affirmed the Board’s determinations of obviousness of all the challenged claims.

The Case is No. 22-2163.

Judge: Chen, R.

Attorneys: Eric Michael Adams (Tumey LLP) for Voice Tech Corp. Debra Janece Mccomas (Haynes and Boone, LLP) for Unified Patents, LLC.

Companies: Voice Tech Corp.; Unified Patents, LLC

Cases: Patent FedCirNews USPTO