Freshub, Ltd.Download PDFPatent Trials and Appeals BoardJan 11, 2021IPR2020-01144 (P.T.A.B. Jan. 11, 2021) Copy Citation Trials@uspto.gov Paper 11 Tel: 571-272-7822 Date: January 11, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ AMAZON.COM, INC., AMAZON.COM SERVICES LLC (formerly AMAZON DIGITAL SERVICES LLC), PRIME NOW LLC, and WHOLE FOODS MARKET SERVICES, INC., Petitioner, v. FRESHUB, LTD., Patent Owner. ____________ IPR2020-01144 Patent 10,239,094 B2 ____________ Before WILLIAM V. SAINDON, FRANCES L. IPPOLITO, and ERIC C. JESCHKE, Administrative Patent Judges. SAINDON, Administrative Patent Judge. DECISION Denying Institution of Inter Partes Review 35 U.S.C. § 314 IPR2020-01144 Patent 10,239,094 B2 2 I. INTRODUCTION Amazon.com, Inc., Amazon.com Services LLC, Prime Now LLC, and Whole Foods Market Services, Inc. (collectively, “Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting inter partes review of claims 1–24 of U.S. Patent No. 10,239,094 B2 (Ex. 1001, “the ’094 patent”). Patent Owner filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). Pursuant to the Board’s Order (Paper 7), the Petitioner filed a Reply to the Preliminary Response addressing Patent Owner’s contentions directed to discretionary denial under § 314(a) (Paper 9, “Prelim. Reply”) and Patent Owner filed a Sur-reply to that Reply (Paper 10, “Prelim. Sur-reply”). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Taking into account the arguments presented in Patent Owner’s Preliminary Response, we conclude that the information presented in the Petition does not establish that there is a reasonable likelihood that Petitioner would prevail in challenging at least one of claims 1–24 of the ’094 patent as unpatentable under the grounds presented in the Petition. Pursuant to § 314, we hereby do not institute an inter partes review as to these claims of the ’094 patent. A. Related Matters The ’094 patent is the subject of Freshub, Inc. v. Amazon.com Inc., et al., Case No. 1:19-CV-00885-ADA (W.D. Tex. June 24, 2019) (“the Freshub case”). Pet. 2; accord Paper 4, 1 (Patent Owner’s Mandatory Notices). IPR2020-01144 Patent 10,239,094 B2 3 B. Real Parties In Interest Petitioner and Patent Owner each assert they are the only real parties in interest. Pet. 1; Paper 4, 1. C. The ’094 Patent The ’094 patent is directed to a system for scanning information from storage area contents and providing meal suggestions. Ex. 1001, codes (54), (57). The claims of the ’094 patent are directed to receiving and processing spoken user orders to identify an item. See, e.g., id. at 14:55–15:12. For example, voice recognition is performed to recognize a spoken order. Id. at 13:64–14:34. D. Challenged Claims Petitioner challenges claims 1–24. Claims 1 and 20 are independent. Claims 1 and 20 are reproduced below: 1. A computer-implemented method, the method comprising: receiving over a network at a first computer system, using a network interface, a digitized spoken user order from a second computer system, the second computer system comprising: a microphone, a wireless network interface, and a digitizer coupled to the microphone, wherein the digitizer is configured to convert spoken words into a digital representation, and the second computer system is configured to transmit the digital representation over the network to the first computer system; translating, using a translation module executed by the second computer system, at least a portion of the digitized spoken order to text; matching the text, translated from the digitized spoken order, to text descriptions of items, wherein the text descriptions of items are stored in a data store; IPR2020-01144 Patent 10,239,094 B2 4 based on at least an identified match, identifying a corresponding item; adding the identified corresponding item to a list associated with the user; and enabling the list, including the identified item, to be displayed to the user via a user display. 20. A voice processing system comprising: a first computer; a network interface; non-transitory memory that stores instructions that when executed by the first computer cause the first system to perform operations comprising: receive over a network, using a network interface, a digitized spoken user order from a remote system, the remote system comprising: a microphone, a wireless network interface, and a digitizer coupled to the microphone, wherein the digitizer is configured to convert spoken words into a digital representation, and the second computer system is configured to transmit the digital representation over the network to the first computer system; translate at least a portion of the digitized spoken order to text; match the text, translated from the digitized spoken order, to text descriptions of items, wherein the text descriptions of items are stored in a data store; based on at least an identified match, identify a corresponding item; include the identified corresponding item in a list associated with the user; and enable the list, including the identified item, to be displayed to the user via a user display. IPR2020-01144 Patent 10,239,094 B2 5 E. Prior Art and Asserted Grounds Petitioner asserts the following prior art patents: Name Patent Document Exhibit Calderone US 2001/0056350 A1 1003 Ogasawara US 6,543,052 B1 1004 Sanchez US 2002/0194604 A1 1005 Partovi US 7,376,586 B1 1006 Cooper US 6,757,362 B1 1007 Sichelman US 2003/0235282 A1 1008 Petitioner asserts the following grounds: Claims Challenged 35 U.S.C. § References 1, 2, 10–18, 20 103 Calderone, Ogasawara, Sanchez 3, 4, 7–9, 19, 22–24 103 Calderone, Ogasawara, Sanchez, Partovi 5 103 Calderone, Ogasawara, Sanchez, Cooper 5, 21 103 Calderone, Ogasawara, Sanchez, Sichelman Petitioner relies on testimony from Dan R. Olsen, Jr., Ph.D, who has a doctorate in Computing and Information and 35 years of experience in the field of computer science and human-computer interaction. Ex. 1002 ¶ 3. II. PATENTABILITY ANALYSIS A. Claim Construction This Petition receives the same claim construction standard used in the federal courts. 37 C.F.R. § 42.100(b) (2019). However, no claim terms require explicit construction for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. IPR2020-01144 Patent 10,239,094 B2 6 Cir. 2017) (“[W]e need only construe 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)). B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art would have had “at least a Bachelor-level degree in computer science, computer engineering, electrical engineering, or a related field in computing technology, and 2 years of experience with automatic speech recognition and natural language understanding, or equivalent education, research experience, or knowledge.” Pet. 3–4. Patent Owner does not offer a competing definition at this time. For purposes of this Decision, we apply Petitioner’s proposed definition of the level of ordinary skill, which appears reasonable in view of the relative level of sophistication required to read and understand the ’094 patent and the prior art disclosures. C. Analysis of the Obviousness Grounds The ’094 patent has two independent claims, 1 and 20. Petitioner asserts that Calderone, Ogasawara, and Sanchez render these two claims obvious. Pet. 14–28 (claim 1), 40–43 (claim 20). Petitioner’s other obviousness grounds build on this first ground and are directed to claims that depend from claims 1 and 20. Accordingly, we focus our analysis on Petitioner’s ground with respect to independent claims 1 and 20. Independent Claim 1 Independent claim 1 describes two computer systems. The second computer system includes a microphone to convert a user’s spoken words IPR2020-01144 Patent 10,239,094 B2 7 into a digital representation of the user’s order. A “module” of the second computer system then “translat[es] . . . a portion of the digitized spoken order to text.” The first computer system receives the digitized spoken user order from the second computer system and then performs various processing steps. Petitioner’s ground begins with the networked voice recognition system of Calderone. See generally Pet. 16–24; Ex. 1003, codes (54), (57). Petitioner asserts that the claimed first computer system reads on the back end system of Calderone, and the second computer system reads on the computer at the user’s location in Calderone. Pet. 18 (“Calderone discloses a second computer system at the user site”), 21 (“Calderone discloses a ‘first computer system’ (central speech engine) that receives the digitized spoken user order from the ‘second computer system’ (remote and set-top apparatus at the user site).”). Petitioner asserts that a “speech recognition software module” in Calderone’s back-end system (i.e., the alleged first computer system) teaches the “translating” limitation and operates as the claimed “translation module” performing the translating function. Id. at 24; Ex. 1003 ¶¶ 40, 143–144, Fig. 3. Claim 1 requires that the second computer system has the translation module, but the Petition identifies the alleged first computer system of the prior art to have the translation module. See, e.g., Ex. 1003 ¶ 40; see also Prelim. Resp. 22 (arguing that Calderone’s “‘speech recognition software module’ is located on a centrally located, back-end system, not the ‘remote and set-top apparatus at the user site’ that Amazon identified as the front-end system.”). Thus, Petitioner’s ground as set forth in the Petition does not address adequately the “translating” step because the alleged “translation IPR2020-01144 Patent 10,239,094 B2 8 module” in Calderone is not in the specific computer system identified by the claim.1 For these reasons, we determine that Petitioner has not established a reasonable likelihood of success for independent claim 1, or for claims 2–19, which depend therefrom. Independent Claim 20 Independent claim 20 is largely similar to independent claim 1 but differs in that the translation step of claim 20 now occurs on the first computer system. Thus, the issue we identified with Petitioner’s ground addressing claim 1 does not apply to Petitioner’s ground addressing claim 20. Claim 20 recites two computer systems, a “first system” and a “remote system.” The remote system includes a microphone used to convert spoken words into a digital representation that is sent to the first computer 1 Petitioner asserts in its Reply to Patent Owner’s Preliminary Response that distinctions such as which computer performs which process are “immaterial” because a person of ordinary skill in the art could place functions in either system as they see fit. Pet. Reply 5. Even accepting, arguendo, that a person of ordinary skill in the art would be able to place different software various functions in any computer system in the abstract, Petitioner would still have to explain why it would have been obvious to modify the system of Calderone specifically, which, for example, does not necessarily use general purpose computer systems but rather cable TV set top boxes and particular centralized processing units. See, e.g., Ex. 1003 ¶ 130 (describing use of “a General Instruments or a Scientific Atlanta set- top” boxes); id. ¶ 132 (describing “high speed speech processing unit capable of processing the data from several nodes”); see also Belden Inc. v. Berk-Tek LLC, 805 F. 3d 1064, 1073 (Fed. Cir. 2015) (“obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention”). IPR2020-01144 Patent 10,239,094 B2 9 system. In relevant part, the first system then “translates [the] spoken order to text,” “match[es] the text . . . to text descriptions of items . . . in a data store,” and then “identif[ies] a corresponding item” “based on the . . . match.” We focus our analysis on the “match” and “identify” steps, which work together to take the text from the translation step, match the text to a description, and then identify an item based on the match. Petitioner’s ground for claim 20 generally directs our attention back to its ground for claim 1. See Pet. 40–43. As to the “match” step, Petitioner’s ground discusses how Calderone “respond[s] to identified speech content to create an identified speech content response.” Id. at 24. According to Petitioner, Calderone “searches for matching content using movie titles or actor names, i.e. text descriptions related to the movie or program” in a database. Id. at 25. For the “identify” step, Petitioner directs our attention to “the previous section,” i.e., its discussion for the “match” step. Pet. 25. Petitioner further points to a “[Product Look Up (PLU)] Table” in Ogasawara, and asserts, “a POSITA would have understood that Calderone and Ogasawara disclose using the matching names or descriptions to identify the actual item to provide in response to each user request.” Id. at 25–26. In effect, Petitioner relies on the same disclosure of Calderone, and a similar disclosure in Ogasawara, regarding searching databases for both the “match” step as well as the “identify” step. These are different limitations, however. Although one prior art structure may satisfy multiple claim limitations, see, e.g., Powell v. Home Depot U.S.A., Inc., 663 F.3d 1221, 1231–32 (Fed. Cir. 2011), Petitioner does not explain how the same disclosure reads on both limitations. See Bicon, Inc. v. Straumann Co., 441 IPR2020-01144 Patent 10,239,094 B2 10 F.3d 945, 950 (Fed. Cir. 2006) (holding that claims are “interpreted with an eye toward giving effect to all terms in the claim”); see also 37 C.F.R. § 42.104(b) (requiring Petitioner to set forth “[h]ow the challenged claim is to be construed” and “[h]ow the construed claim is unpatentable”). In addition, as Patent Owner points out, the most analogous step in Calderone to the “identify” step of claim 20 (i.e., where an item is selected) is performed by a user on the second computer system, i.e., the user’s set top box, rather than the first computer system as required by the claim. Prelim. Resp. 14–21 (citing, e.g., Ex 1003 ¶¶ 166–170, wherein the remote module sends back to the user a list of options for the user to select). Thus, there are several problems with Petitioner’s ground as articulated. First, Petitioner identifies effectively the same disclosure for the “match” and “identify” steps without a claim construction or sufficient explanation as to why both limitations are satisfied by the same effective disclosure. Second, to the extent Petitioner’s ground implies that the actual selection of an item in Calderone satisfies the “identify” step, then that action is performed in Calderone at a location other than that required by the claims, and by a user rather than a computer. Third, to the extent Petitioner suggests that Ogasawara’s PLU table teaches the “identify” step, Petitioner does not make clear how that disclosure is any different from Calderone’s similar disclosure of a database lookup, or how that teaching is applied to Calderone to satisfy the limitation in combination, because Petitioner again effectively points to the same action for both the “match” and “identify” steps. Even if this disclosure in Ogasawara did teach the “identify” step (however differentiated), Petitioner does not explain why it would have been obvious to modify Calderone in some way to meet the claim limitation. IPR2020-01144 Patent 10,239,094 B2 11 Notably, having the user identify the item on their set top box (i.e., perform the identify step on the second computer) is a specific error correction mechanism in Calderone. See, e.g., Ex. 1003 ¶¶ 166–169 (stating that mis- recognized speech is a “primary hindrance,” which is resolved by providing user visual feedback, i.e., providing text back to the user for confirmation). Petitioner would have needed to explain why a person of ordinary skill in the art would have considered modifying this deliberate feature of Calderone’s system. See Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“the benefits, both lost and gained, [from pursuing a particular modification] should be weighed against one another.”); see also KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (“a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art”). For the above reasons, we determine that Petitioner has not established a reasonable likelihood of success for independent claim 20. For similar reasons, we also do not find a reasonable likelihood of success for claims 21–24, which depend therefrom. III. ORDER We determine that Petitioner has not demonstrated a reasonable likelihood of success in showing that claims 1–24 of the ’094 patent are unpatentable under the grounds asserted in its Petition. Accordingly, it is hereby: ORDERED that the Petition for inter partes review is denied and that no inter partes review is instituted. IPR2020-01144 Patent 10,239,094 B2 12 For PETITIONER: J. David Hadden Saina S. Shamilov Allen Wang FENWICK & WEST LLP dhadden@fenwick.com sshamilov@fenwick.com allen.wang@fenwick.com For PATENT OWNER: James Hannah Jeffrey H. Price Jonathan Caplan KRAMER LEVIN NAFTALIS & FRANKEL LLP jhannah@kramerlevin.com jprice@kramerlevin.com jcaplan@kramerlevin.com Copy with citationCopy as parenthetical citation