Hammond Development International, Inc.

Patent Trials and Appeals Board

Apr 21, 2021

IPR2020-00080 (P.T.A.B. Apr. 21, 2021)

Trials@uspto.gov Paper 38
571-272-7822 Entered: April 21, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

GOOGLE LLC,
Petitioner,
v.
HAMMOND DEVELOPMENT INTERNATIONAL, INC.,
Patent Owner.

IPR2020-00080
Patent 10,264,032 B1

Before MICHELLE N. WORMMEESTER, AMBER L. HAGY, and
KRISTI L. R. SAWERT, Administrative Patent Judges.

HAGY, Administrative Patent Judge.

DECISION
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)

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Patent 10,264,032 B1
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I. INTRODUCTION
A. Background and Summary
Google LLC (“Petitioner”) filed a petition for inter partes review
(Paper 1, “Pet.”) challenging claims 1–23 of U.S. Patent No. 10,264,032 B1
(Ex. 1001, the “’032 patent”). See 35 U.S.C. § 311 (2018). Hammond
Development International, Inc. (“Patent Owner”) timely filed a Preliminary
Response. Paper 7 (“Prelim. Resp.”). Pursuant to 35 U.S.C. § 314, we
instituted an inter partes review of all challenged claims on all grounds
presented in the Petition. Paper 8 (“Institution Decision” or “Dec.”). Patent
Owner filed a Patent Owner Response (Paper 22, “PO Resp.”), Petitioner
filed a Reply (Paper 26, “Reply”), and Patent Owner filed a Sur-reply (Paper
30, “Sur-reply”).
On January 29, 2021, we conducted an oral hearing jointly with co-
pending inter partes review IPR2020-00020, which was also filed by
Petitioner and involves claims of related U.S. Patent 9,264,483 B2. A copy
of the transcript (Paper 37, “Tr.”) is included in the record.
We have jurisdiction under 35 U.S.C. § 6(b). For the reasons that
follow, we determine that Petitioner has shown by a preponderance of the
evidence that claims 1–23 of the ’032 patent are unpatentable. This Final
Written Decision is issued pursuant to 35 U.S.C. § 318(a).
II. BACKGROUND
A. Related Matters
Petitioner and Patent Owner both state the ’032 patent has been
asserted by Patent Owner in Hammond Development International, Inc. v.
Google LLC, No. 6:19-cv-00356 (W.D. Tex.); and in Hammond
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Development International, Inc. v. Amazon.com, Inc., No. 6:19-cv-00355
(W.D. Tex.). Pet. 86; Paper 5, 2.
Petitioner also states that “[t]he ’032 patent is part of a family of
patents that claim priority to U.S. Patent No. 9,264,483 [B2 (the ’483
patent)].” Pet. 86. Petitioner further states that it sought inter partes review
of the ’483 patent in IPR2020-00020 (the “020 IPR”). Id. We issued a Final
Written Decision in the 020 IPR on April 12, 2021. 020 IPR, Paper 38.
In addition to the present proceeding, the ’032 patent is also the
subject of a pending inter partes review proceeding brought by
Amazon.com, Inc. (“Amazon”) in IPR2020-01029. Also currently pending
before the Board are inter partes reviews of the ’483 patent (IPR2020-00460
(Petitioner Amazon)), and related U.S. Patent 10,270,816 B1 (IPR2020-
00081 (Petitioner Google); IPR2020-01067 (Petitioner Amazon)).
Petitioner also states that pending U.S. Application No. 16/389,170
“is part of the ’032 patent family.” Pet. 86.
B. The ’032 Patent (Ex. 1001)
The ’032 patent, titled “Method and System for Enabling a
Communication Device to Remotely Execute an Application,” issued April
16, 2019, based on an application filed January 25, 2019. Ex. 1001, codes
(22), (45), (54). The ’032 patent claims priority, through a chain of
continuation applications, to the ’483 patent. Id. at code (63).
The ’032 patent describes a communication system that establishes a
communication session between a client device and a remote application
server, which executes an application for the client, e.g., the remote
application server “execut[es] an application for a thin-client device.” Id. at
2:1–5, 2:45–57. Figure 1D of the ’032 patent, reproduced below, shows an
embodiment of a communication system.
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Figure 1D shows a block diagram of a communications system
and associated components. Ex. 1001, 2:65–67.
As shown in Figure 1D, “clients 18a–18n . . . couple to network 12
through one or more communications links 32 and/or one or more networks
14, 16.” Id. at 4:7–9.1 Additionally, “application servers 24 couple to
network 12 through one or more communications links 30.” Id. at 3:56–57.
Further, repository 20 and application server 24 are connected via “a direct
communication link 36.” Id. at 11:1–3.
The communication system of the ’032 patent “enables a client 18 to
have one or more applications 28 executed remotely” by the application
server 24. Id. at 6:13–18. A user of the client “initiates an information
collection and/or retrieval process by communicating a request to application
server 24.” Id. at 6:16–18; see also id. at 5:50–52 (“In some embodiments,

1 All bolding of reference numbers has been omitted in material quoted
herein from the ’032 patent and the prior art references.
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clients 18 can be configured to initiate a connection with repositories 20
and/or application servers 24.”), 2:14–17 (“At least one of the one or more
communication devices is operable to communicate a request to establish a
communication session.”). After that, “application server 24 notifies
repository 20 that a communication session with client 18 has been
requested.” Id. at 6:40–42. “Repository 20 . . . operates to identify a desired
application 28 and to communicate application 28, or portions thereof, to
application server 24 for execution.” Id. at 6:42–45. Further, “[u]pon
receipt of application 28, application server 24 executes application 28 and
begins a communication session with client 18a.” Id. at 6:45–47. In
particular, “application server 24 begins the process of communicating
information to and/or retrieving information from client 18a” by “requesting
that the user of client 18a respond to a series of queries associated with
application 28.” Id. at 6:47–49, 7:6–12. For example, application server 24
executes an application based on voice extensible markup language (Voice
XML) that “enables application server 24 to interact with and collect
information from client 18a.” Id. at 6:50–53. “[A]pplication server 24
communicates information relating to portions of Voice XML-based code to
client 18a for execution on client 18a,” e.g., “by requesting that the user of
client 18a respond to a series of queries associated with application 28.” Id.
at 7:6–12. The “user of client 18a responds to each of the series of queries
by ‘speaking’ a response to each query communicated to client 18a for
execution.” Id. at 7:16–19.
C. Illustrative Claims
Of the challenged claims, claims 1, 9, and 16 are independent claims.
Claims 2–8 depend, directly or indirectly, from claim 1; claims 10–15
depend, directly or indirectly, from claim 9; and claims 17–23 depend,
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directly or indirectly, from claim 16. Claims 1, 9, and 16, reproduced below,
illustrate the claimed subject matter (formatting and labeling added)2:
1. [1preamble] A communication device comprising:
[1a] a speaker;
[1b] an input device;
[1c] one or more processors; and
[1d] a memory having stored thereon a software program that,
when executed by the one or more processors, causes the
communication device to:
[1e] capture a voice input from a user via the input device;
[1f] generate packetized voice data by packetizing at least a part
of the voice input;
[1g] transmit a request to establish a communication session
over a first communication link to an application server coupled
to the first communication link and adapted to establish the
communication session in response to the request to establish
the communication session,
[1h] the first communication link comprising a data connection,
[1i] wherein the application server resides at a location remote
from the communication device;
[1j] wherein the application server is either (a) configured to
receive an application via a second communication link, or (b)
configured to cause execution of the application via the second
communication link;
[1k1] wherein the application server is configured to generate a
voice representation of information derived from the
application and

2 We have added formatting and labeling (numbering/lettering) to the
elements in keeping with the numbering used by the parties. See Pet. ii–vi;
Ex. 2001 (App. of Challenged Claims).
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[1k2] communicate a request for processing service to the
communication device;
[1l] transmit the packetized voice data to the application server
via the first communication link;
[1m] receive the request for processing service from the
application server over the first communication link,
[1n] wherein the request for processing service comprises an
instruction to present the user the voice representation; and
[1o] present the voice representation to the user via the speaker.
Ex. 1001, 13:37–14:6.
9. [9preamble] A communication device comprising:
[9a] a speaker;
[9b] an input device;
[9c] one or more processors; and
[9d] a memory having stored thereon a software program that, when
executed by the one or more processors, causes the
communication device to:
[9d] capture a voice input from a user via the input device;
[9f] generate packetized voice data by packetizing at least a part of the
voice input;
[9g] transmit a request to establish a communication session over a
first communication link to an application server configured to
establish the communication session in response to the request to
establish the communication session,
[9h] the first communication link comprising a data connection,
[9i] wherein the application server resides at a location remote from
the communication device;
[9j] wherein the application server is configured to generate a voice
representation of information derived from an execution of an
application and to communicate a request for processing service
to the communication device;
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[9k] transmit the packetized voice data to the application server via
the first communication link,
[9l] wherein the packetized voice data is used to identify the
application;
[9m] receive the request for processing service from the application
server,
[9n] wherein the request for processing service comprises an
instruction to present the user of the communication device the
voice representation; and
[9o] present the voice representation to the user via the speaker.
Id. at 14:29–62.
16. [16preamble] A client device comprising:
[16a] an input device configured to capture voice input;
[16b] a speaker;
[16c] one or more processors; and
[16d] one or more computer-readable media storing computer-
executable instructions that, when executed by the one or more
processors, cause the one or more processors to perform acts
comprising:
[16e] generating packetized audio data using at least a portion of the
voice input;
[16f] transmitting a request to establish a communication session over
a first communication link to an application server configured to
establish the communication session in response to the request to
establish the communication session,
[16g] the first communication link comprising a data connection,
[16h] wherein the application server resides at a location remote from
the communication device;
[16i] wherein the application server is configured to communicate a
request for processing service to the client device;
[16j] sending the packetized audio data to the application server via
the first communication link,
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[16k] wherein the packetized audio data is used to determine the
request for processing service;
[16l] receiving the request for processing service from the application
server,
[16m] wherein the request for processing service comprises one or
more instructions to the client device to retrieve content from a
source located remote from the client device;
[16n] requesting the content from the source located remote from the
client device; and
[16o] presenting, via the speaker, an audio output corresponding to the
content from the source located remote from the client device.
Id. at 15:18–16:16.
D. Instituted Grounds of Unpatentability
We instituted inter partes review of all challenged claims based on all
grounds of unpatentability asserted in the Petition (Dec. 10, 52; Pet. 2):
Claims Challenged 35 U.S.C. § References/Basis
1–5, 7–14, 16–21 103(a)3 Gilmore,4 Dhara,5 Dodrill6
6, 15, 22, 23 103(a) Gilmore, Dhara, Dodrill, Patel7

3 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(2011) (“AIA”), amended several provisions of 35 U.S.C., including §§ 102
and 103. Because the ’032 patent claims priority to an application that has
an effective filing date prior to the effective date of the applicable AIA
amendments, we refer herein to the pre-AIA version of the statute.
4 Gilmore, et al., U.S. Pat. App. No. 2003/0216923 A1, published Nov. 20,
2003 (Ex. 1005, “Gilmore”).
5 Dhara, et al., U.S. Pat. App. No. 2003/0202504 A1, published Oct. 30,
2003 (Ex. 1009, “Dhara”).
6 Dodrill, et al., U.S. Pat. No. 6,766,298 B1, issued July 20, 2004 (Ex. 1006,
“Dodrill”).
7 Patel, et al., U.S. Pat. App. No. 2006/0256950 Al, published Nov. 16, 2006
(Ex. 1007, “Patel”).
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III. ANALYSIS
A. Principles of Law
A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
differences between the claimed subject matter and the prior art are such that
the subject matter, as a whole, would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
(3) the level of ordinary skill in the art; and (4) when in evidence, objective
evidence of nonobviousness.8 Graham v. John Deere Co., 383 U.S. 1,
17–18 (1966).
“In an [inter partes review], the petitioner has the burden from the
onset to show with particularity why the patent it challenges is
unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (2012) (requiring inter partes
review petitions to identify “with particularity . . . the evidence that supports
the grounds for the challenge to each claim”)). This burden of persuasion
never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l
Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden
of proof in inter partes review).

8 The parties do not direct our attention to any evidence of objective indicia
of nonobviousness.
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B. Level of Ordinary Skill in the Art
The level of skill in the art is a factual determination that provides a
primary guarantee of objectivity in an obviousness analysis. Al-Site Corp. v.
VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham, 383
U.S. at 17–18 (1966); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718
(Fed. Cir. 1991)).
Petitioner asserts a “person of ordinary skill in the art of the ’032
patent would have at least a bachelor’s degree in Computer or Electrical
Engineering, Computer Science, or equivalent engineering discipline, and
approximately three years of experience working on remotely-processed
applications and data networking, including voice-related applications and
voice-over packet technologies.” Pet. 4; see Ex. 1021 ¶ 50.9
Patent Owner disagrees with Petitioner’s definition and asserts “a
person of ordinary skill in the art of the ’032 patent at the time of invention
would have had at least a bachelor’s degree in Computer or Electrical
Engineering, Computer Science, or equivalent discipline, and approximately
one to two years of work experience in data networking.” PO Resp. 23.
Patent Owner further contends “the level of ordinary skill [in the art relative
to the ’032 patent] is not a rigid formula. More education with less
experience or more experience with less formal education could equally

9 With the Board’s approval, subsequent to our Institution Decision,
Petitioner substituted the Declaration of Stuart J. Lipoff (Ex. 1021) for the
declaration of Petitioner’s original expert (Ex. 1003), while maintaining the
identical substantive content of the original declaration. Per our Order
granting authorization for the substitution, we consider cites to the original
declaration in the Petition and other filed documents to refer to the substitute
declaration. See Paper 18, 5. Therefore, we refer herein to Ex. 1021 instead
of to Ex. 1003 as originally cited in the Petition.
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qualify an individual as a [person of ordinary skill in the art (POSITA)].”
Id. (citing Ex. 2007 ¶ 34). Patent Owner’s proposed level of skill thus
includes fewer years of work experience, but in only “data networking” (as
opposed to Petitioner’s definition, which requires work experience on both
remotely-processed applications and data networking), and Patent Owner
urges a less rigid requirement.
To the extent necessary herein, we apply Patent Owner’s definition of
the level of ordinary skill in the art, as we did in the Institution Decision.
We determine the definition offered by Patent Owner is consistent with the
teachings of the ’032 patent and the prior art of record. Cf. Okajima v.
Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art
itself may reflect an appropriate level of skill in the art). We note, however,
that neither party explains how the differences in the parties’ competing
proposals are material to the issues before us. We further note that our
adoption of Patent Owner’s proposed definition does not reflect a view that
adopting Petitioner’s competing definition of the level of ordinary skill in
the art would have any impact on the outcome of this proceeding. To the
contrary, our fact findings would be the same under either party’s definition.
C. Claim Construction
In interpreting the claims of the ’032 patent, we “us[e] the same claim
construction standard that would be used to construe the claim[s] in a civil
action under 35 U.S.C. [§] 282(b).” See 37 C.F.R. § 42.100(b) (2019). The
claim construction standard includes construing claims in accordance with
the ordinary and customary meaning of such claims as would have been
understood by one of ordinary skill in the art and the prosecution history
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pertaining to the patent. See id.; Phillips v. AWH Corp., 415 F.3d 1303,
1312–14 (Fed. Cir. 2005) (en banc).
We did not expressly construe any terms in our Institution Decision,
in part because neither party presented any terms expressly for construction.
Dec. 15; see Pet. 5; Prelim. Resp. 33–34. We did, however, address, within
the context of our obviousness analysis, the parties’ apparent dispute
regarding the term “establish the communication session.” See Dec. 14, 25–
29. We advised that “the parties may wish to develop the record further at
trial as to how an ordinarily skilled artisan, at the time of the invention,
would have interpreted ‘communication session’ and would have understood
when a ‘communication session’ is ‘established,’ in light of the disclosure of
the ’032 patent.” Id. at 14, 31.
Patent Owner now takes issue with Petitioner’s position that no claim
terms need to be construed. PO Resp. 17; see Pet. 5. Specifically, Patent
Owner argues that Petitioner “sought specific constructions for nine terms”
from the ’032 patent in the co-pending district court litigation, but none in
this proceeding, and suggests that Petitioner’s failure to offer the same
constructions here means that Petitioner has failed to satisfy its obligations
in this proceeding. See PO Resp. 17. We disagree. Although Patent Owner
is correct that the same claim construction standards apply to this proceeding
as to the district court proceeding, the common standard does not mandate
that all claim construction disputes submitted to the district court must also
be aired here. Rather, “only those terms need be construed that are in
controversy, and only to the extent necessary to resolve the controversy.”
See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g,
Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
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Patent Owner then contends the Board should adopt the same
constructions adopted by the district court as to two terms of the ’032 patent
(PO Resp. 17–21) and also proposes constructions for two other terms not
construed by the district court (id. at 21–23). We address each of those
terms below.
1. “request to establish a communication session”
Independent claims 1, 9, and 16 recite that a communication device
transmits a “request to establish a communication session.” Ex. 1001, 13:47,
14:40, 15:28–29. In our Institution Decision, we noted an apparent dispute
between the parties over whether a telephone call to a host system was a
“request” to “establish the communication session,” as Petitioner asserted, or
was itself sufficient to actually establish such a session, as Patent Owner
asserted in its Preliminary Response. Dec. 25–29 (citing Pet. 24–25
(asserting that the phone call in Gilmore is merely a request, and the
communication session is thereafter established by the gateway executing an
interactive voice application), Prelim. Resp. 41 (asserting, in describing
Gilmore’s teachings, that “dialing a telephone number is not a request to
establish a communication session; rather, it is itself the establishment of a
call session”)10). We preliminarily determined, for purposes of our
Institution Decision, that “the ordinarily skilled artisan would have
understood that a communication device placing a telephone call to a voice
response system. . . does not itself ‘establish’ a communication session, but
rather is a ‘request’ to establish such a session.” Id. at 29. We further noted

10 Patent Owner now asserts that we misunderstood Patent Owner’s
arguments from the Preliminary Response, and that what Patent Owner
argued was that “a phone call (or ‘call session’) is not a communication
session.” PO Resp. 43–44 (emphasis omitted).
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that “the parties may wish to develop the record further at trial as to how an
ordinarily skilled artisan, at the time of the invention, would have interpreted
‘communication session’ and would have understood when a
‘communication session’ is ‘established,’ in light of the disclosure of the
’032 patent.” Id. at 31.
In its Response, Patent Owner states the district court determined the
phrase “request . . . to establish [a/the] communication session” should be
“given its plain and ordinary meaning,” but “the request must occur before
the establishment of the communication session.” PO Resp. 19 (emphasis
added) (quoting Ex. 2009, 1). Patent Owner does not, however, further
address the construction of this entire term. Instead, Patent Owner focuses
its evidence and arguments on what it deems the characteristics of a
“communication session,” while acknowledging that neither party requested
the district court to construe “communication session.” Id. at 19–20.
In particular, Patent Owner contends, relying on the testimony of its
expert, Dr. Rhyne (Ex. 2007), that the ordinarily skilled artisan would have
understood that a “communication session” in the context of the ’032 patent
“has certain characteristics”; namely it “(a) is a ‘session’ with a beginning
and an end (b) that is the result of a processed request and (c) that includes
an exchange of information (d) between an application server and (e) a client
device (f) over a data connection.” PO Resp. 19–20 (emphases added)
(footnotes omitted) (citing Ex. 2007 ¶ 42). Patent Owner further asserts that,
“[a]t its most essential, the ‘communication session’ of the ’032 Patent is a
temporary information exchange between computing devices over a data
connection in response to a request from a client device.” Id. at 20. Patent
Owner then contends that, accordingly, a “communication session” as
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claimed by the ’032 patent “is not satisfied by a mere telephone call.” Id. at
20 (citing Ex. 2007 ¶ 43).
Petitioner responds that Patent Owner “does not argue that its
[narrower construction or additional requirements] are material to
patentability, . . . so the Board need not address them.” Reply 5–6.
Petitioner then counters Patent Owner’s asserted characteristics of a
communication session, contending, among other things: (1) a “computing
device” is not required for the client device because the ’032 patent
describes communication sessions over a telephone network (id. at 6 (citing
Ex. 1001, 3:61–4:6, 5:64–6:7)); and (2) construing a “communication
session” as being “in response to a request from a client device” would be
redundant of other limitations in the claims (id. at 6–7). Petitioner notes the
’032 patent describes a “communication session” as “the process of
communicating information to and/or retrieving information from client
18a,” and “enabl[ing] application server 24 to interact with and collect
information from client 18a” through, for example, queries to and responses
from a user. Id. at 7–8 (quoting Ex. 1001, 6:45–53, 7:6–19; citing id. at
5:59–64).
In its Sur-reply, Patent Owner asserts that it proposed to the district
court, and now advocates here, that the “communication session” terms
carry their “plain and ordinary meaning.” Sur-reply 7–8. Patent Owner then
reiterates its position that “the telephone call of Gilmore cannot be a
communication session” because a “computing device” is required for the
client device, as illustrated by the district court’s construction of a different
term—“request for processing service.” Id. at 8–11. Patent Owner further
contends that because a request to establish a communication session must
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occur before the communication session is established, a session cannot be
established until the request is processed. Id. at 10–11.
The parties’ arguments post-institution do not reveal a material
dispute over the construction of the term “communication session” itself.
Rather, the parties’ disputes hinge on different claim terms, including
“request for processing service.” See, e.g., PO Resp. 20–21; Reply 9–11;
Sur-reply 11–13. We address that construction below. To the extent
necessary, we construe a “communication session,” consistent with the
disclosure of the ’032 patent, as the process of a communication device
communicating information to, and/or retrieving information from, another
communication device. See Ex. 1001, 6:247–49.
We determine that we need not further construe this term to resolve
the parties’ disputes herein; rather, as noted, the parties’ disputes invoke
additional terms, which we address below.
2. “request for processing service”
Independent claims 1 and 9 recite that the communication device
receives a “request for processing service” from the application server, and
further recite “wherein the request for processing service comprises an
instruction to present the user [of the communication device] the voice
representation.” Ex. 1001, 13:66–14:3, 14:56–60. Independent claim 16
similarly recites that the client device receives a “request for processing
service” from the application server, and further recites that the request
“comprises one or more instructions to the client device to retrieve content
from a source located remote from the client device.” Id. at 16:7–11. We
first summarize the parties’ positions, then turn to our analysis of this term.
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a) Parties’ Positions
Patent Owner addresses “request” separately from “processing
service.” See PO Resp. 20–21 (“processing service[]” terms), 21–23
(“request”). With regard to the term “request,” Patent Owner acknowledges
that the parties did not ask the district court to construe that term, but asserts
that it should be afforded its “plain and ordinary meaning.” Id. at 21–22.
According to Patent Owner, the plain and ordinary meaning of “request” in
the context of the ’032 patent is “an action at the computer-code-instruction
level.” Id. at 21. As support, Patent Owner quotes several passages from
the Specification that Patent Owner contends “make[] clear that the
‘requests’ in the ’032 Patent are instructions that must be processed or
handled by system components.” Id. at 21–23 (citing Ex. 1001, 6:16–18,
7:47–49, 7:66–8:5, 8:31–34, 9:1–3, 12:64–13:3; Ex. 2007 ¶ 44).
In its Reply, Petitioner points out that, although Patent Owner did not
seek to construe “request” separately before the district court, Patent Owner
did propose to construe “request for [a] processing service” such that the
“request” portion requires “computer code instructions.” Reply 9;
see Ex. 2011, 11. This contention is borne out by Patent Owner’s briefing to
the district court, wherein Patent Owner argued, as it does here, that the ’032
patent “consistently describe[s] a ‘request’ as being at the computer-code-
instruction level.” Ex. 2011, 11. Petitioner asserts that the district court
rejected that construction when it construed “request for processing service”
to have its plain and ordinary meaning. Reply 9 (citing Ex. 2009, 1–2).
With regard to “processing service,” Patent Owner asserts that the
district court construed that term as “a computing process performed by a
communication device for all or part of the application.” PO Resp. 20
(quoting Ex. 2009, 2). Patent Owner contends “[t]his is an important
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construction because it recognizes that the ’032 Patent claims a
communication device that processes instructions sent by an application
server.” Id. Petitioner, on the other hand, “maintains that claim construction
is not necessary,” but asserts that “the Petition shows unpatentability under
both [Patent Owner’s] and the district court’s constructions.” Reply 11.
b) Arguments and Construction in District Court
The district court’s order on claim construction does not provide
reasoning behind the constructions adopted therein. See Ex. 2009.
However, we find instructive that the district court, in construing
“processing service(s),” essentially adopted the construction proposed by
Petitioner (aside from excluding the negative limitation at the end of
Petitioner’s proposal). Specifically, Petitioner proposed construing “request
for [a] processing service” as a “request for a communication device to
perform a computing process for the application that constitutes more than
acting as a speaker or input device.” Ex. 2012, 24 (emphasis added).
Petitioner similarly proposed construing “processing service(s)” as “a
computing process performed by a communication device for the application
that constitutes more than acting as a speaker or input device.” Id.
(emphasis added). The district court adopted Petitioner’s proposed
construction for “processing service(s)” except for the italicized portion
quoted above, and determined that “request for [a] processing service”
should be afforded its “[p]lain and ordinary meaning.” See Ex. 2009, 2.
In support of these proposed constructions, Petitioner argued:
The specification confirms that the “services” are
provided to the “application.” It describes that the application
server executes an application and sends a “request for
processing service” to the communication device. [’032 patent]
at 1:53‒60. The communication device performs the
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“processing service” for the application to assist with the
interaction between the communication device and the remotely
executed application. Id. at 6:5‒10. The claims also all recite
that a “request for processing service” is sent to a
communication device after the step wherein the application is
executed. See, e.g., [id. at] Cl. 1, 10, 22 . . . .
Ex. 2012, 26.
Patent Owner, on the other hand, proposed construing “processing
service(s)” as “automated operation of a hardware component on
[a]/[the] [communication device]/[client device].” Ex. 2011, 14. Patent
Owner argued that the “processing service(s)” are “‘automated’ at least
because they are controlled by computer code instructions.” Id.
Petitioner argued that Patent Owner’s proposed construction for
“processing service(s)” was under-inclusive in requiring “automated
operation,” reasoning that “the specification gives examples of ‘processing
services’ that are not ‘automated’ and instead require user input to the
processing service.” Ex. 2012, 27. “For instance,” Petitioner continued,
“the application server may communicate a ‘voice recognition software
program’ to ‘assist client 18a in executing one or more queries associated
with the VoiceXML-based application.’ . . . To perform the ‘processing
service,’ the communication device needs user input. This processing
service is thus not an ‘automated operation.’” Id.
Patent Owner responded by characterizing Petitioner’s argument as
“conflat[ing] the processing service (i.e., the activity performed by the
device) with the user’s interaction with the device (i.e., the user’s spoken
response to the microphone in the communication device).” Ex. 2014, 18–
19. Patent Owner then asserted that human interaction does not provide the
automated processing that Patent Owner asserts is required by the ’032
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patent claims:
Humans do not process computer code instructions the same
way a communication device does. This is the same mistake
[Petitioner] makes in every one of its IPR Petitions, where it
argues that playing an audio prompt on the host side of the
system for the user to listen to on a telephone call is a “request
for processing service.” It is not, because it does not provide
for any processing of instructions on the client device—it
solicits only a spoken or touchtone response from the user,
which is processed on the host side. In contrast, in the [’032
patent] . . . the application server transmits executable
instructions to the communication device. Contrary to
[Petitioner’s] under-inclusive argument, this processing is
“automated” (as in [Patent Owner’s] construction) because it
results from the automatic processing of instructions on the
communication device. For example, if the instruction to the
communication device is to activate a microphone and listen for
a spoken response, that instruction is executed whether the user
gives a spoken response or not. [Petitioner’s] example
therefore fails.
Id. at 19.
c) Analysis
Turning first to the term “request,” we note that the ’032 patent uses
this term broadly, spanning different contexts beyond those described in the
excerpts quoted by Patent Owner. See PO Resp. 21–22. For example, in
describing Figure 1A, the ’032 patent describes client 18a as initiating “an
information collection and/or retrieval process by communicating a request
to application server 24.” Ex. 1001, 6:16–18. The ’032 patent further states
that “any of clients 18a–18n could initiate the communication session with
application server 24 . . . .” Id. at 6:20–21. As illustrated in Figure 1, clients
18a–18n include cell phones, personal digital assistants (“PDAs”), Wi-Fi
devices, and IP phones. Id. at Fig. 1A; see also id. at 4:22–27. The ’032
patent further states that “[l]andline phones and/or IP phones can also
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communicate with repository 20 and/or application server 24 in the same
manner as mobile phones . . . .” Id. at 6:5–7. Thus, by describing that a
“request” may be sent by a landline phone, and not just by a cell phone or
computer, the ’032 patent uses the term “request” without limiting it to “an
action at the computer-code-instruction level,” as Patent Owner argues.
See PO Resp. 21. We, therefore, do not adopt Patent Owner’s proposed
construction of “request.” We do not need to further construe that term to
resolve the parties’ disputes herein.
Turning next to “processing services,” we note that the ’032 patent
describes “processing services” in the context of a “thin-client” as the client
device. See, e.g., Ex. 1001, 4:18–19. The ’032 patent states that such a
client “may include, for example, a wireless device, a voice over IP device, a
desktop computer, a laptop computer, a personal digital assistant, a cell-
phone, a Wi-Fi device, a work station, a mainframe computer, a mini-frame
computer, a web server, or any other computing and/or communicating
device.” Id. at 4:22–27. The ’032 patent further describes the processing
services provided by a thin-client as “execut[ing] portions of code to assist
with the interaction with remotely executed application 28.” Id. at 6:32–33.
By way of example, the ’032 patent describes the application server as
executing “a VoiceXML-based application” that enables the application
server to interact with and collect information from the client. Id. at 6:50–
53. In that example, the application server communicates a voice
recognition software program to the client, which the client then uses to
convert a user’s spoken responses to a series of queries into data that is
packetized and communicated, in a packet-based communication, back to
the application server. Id. at 7:1–22. The application server then “receives
and decodes the user’s responses to each of the queries associated with the
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Voice XML-based application.” Id. at 7:25–27.
Thus, in the context of the ’032 patent, a “request for processing
service” comes from, e.g., a server, and encompasses a request for a client
device to process a user’s spoken responses into, e.g., packetized data that
can then be returned to the server for use in executing the application. This
description is consistent with the construction of “processing service”
adopted by the district court, as “a computing process performed by a
communication device for all or part of the application” (Ex. 2009, 2),
which, as noted above, is a broader version of what Petitioner advocated
before the district court (Ex. 2012, 24) and is the same as what Patent Owner
advocates here (PO Resp. 21–22).
We, therefore, construe “processing service” as “a computing process
performed by a communication device for all or part of the application.”
3. “application”
Independent claims 1 and 9 recite, essentially, an “application” that is
executed by an application server to generate a voice representation of
information derived from the application. Ex. 1001, 13:55–61, 14:48–50.
Patent Owner states that the district court construed the term
“application[]” according to “its plain and ordinary meaning.” PO Resp. 21.
Patent Owner purportedly agrees with the district court’s approach, but
further contends that, consistent with the use of the term in the ’032 patent
and in the cited prior art, the ordinarily skilled artisan “would understand
that an application is not merely a script or variable used by an application
to interact with a user or a communication device.” Id.
Petitioner did not propose a construction in the Petition. Pet. 5. In
response to Patent Owner’s proposal, Petitioner asserts that “[t]he plain
meaning of ‘application’ in the ’032 patent is ‘functionality that is capable of
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facilitating the ability to collect information from and/or present information
to one or more clients . . . or users of [the] system.’” Reply 4 (quoting
Ex. 1001, 4:45–49).
As discussed in more depth below, the parties’ dispute regarding the
meaning of “application” is material to whether Gilmore’s VoiceXML
scripts are excluded from the scope of “application(s)” as recited in the ’032
patent claims, as Patent Owner contends. See PO Resp. 37–38 (arguing that
VoiceXML scripts are not applications but are scripts used by an
application); but see Reply 13–14 (arguing that VoiceXML scripts provide
the functionality of an application as described in the ’032 patent). We
preview that dispute here to provide context for the parties’ competing
constructions.
The ’032 patent provides an explicit description of the term
“application,” stating:
As used throughout this document, the term “application” refers
to functionality that is capable of facilitating the ability to
collect information from and/or present information to one or
more clients 18 or users of system 10. In one particular non-
limiting example, application 28 comprises a series of queries
requesting information from and/or presenting information to a
user of client 18. In some cases, applications 28 may include,
for example, a Voice XML-based application, an HTML-based
application, an XML-based application, an XIVR-based
application, or a combination of these or other application
formats. Applications 28 may comprise, for example, software,
firmware, code, portions of code, a program, a web-page,
information compilations, and/or a combination of these or any
other types of utilities. In other embodiments, database 22 may
be capable of storing, for example, one or more functions
and/or other information.
Ex. 1001, 4:45–61 (emphasis added). This broad description includes not
just “software” and “program(s),” but also includes, e.g., “a series of queries
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requesting information” as well as “information compilations.” Id. As such,
this definition is broader than Patent Owner’s apparent contention that the
“plain and ordinary meaning” of the term “application” is an executable
program, which does not encompass merely a “script” that may be “used by
an application.” See PO Resp. 21; Sur-reply 4 (“While there may be a voice
application that is executed in Gilmore, it is not the script files Petitioner
consistently relies on in its Petition.”).
At oral argument, Patent Owner argued that the Specification’s use of
the term “comprises” in describing the above-quoted example of an
application that “comprises a series of queries requesting information from
and/or presenting information to a user of client 18” means that a “series of
queries requesting information” is not sufficient to constitute an
“application.” Tr. 60:17––61:16. That is, Patent Owner argued that use of
the open-ended term “comprises” means that more is required for an
application than the listed items, and thus the above-quoted description
means only that, for example, a “series of queries” could be “part of an
application or a piece of an application,” but is not an “application in and of
itself.” Id. at 62:12–16 (emphasis added).
Patent Owner’s argument is unavailing. From a logical standpoint, if
the Specification were listing items that are merely a portion of some larger
(albeit undefined) “application” entity, it would not list both “code” as well
as “portions of code,” much less include broader categories of “software”
and “program[s]” in the same list. The more logical reading of the quoted
passage is that any one of the listed items is an example of an “application,”
as long as it provides “functionality that is capable of facilitating the ability
to collect information from and/or present information to one or more clients
18 or users of system 10.” See Ex. 1001, 4:45–49.
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Based on the description provided in the ’032 patent, we construe the
term “application” as “functionality that is capable of facilitating the ability
to collect information from, and/or present information to, one or more client
devices or users.”
4. Other Terms
We determine that we do not otherwise need to expressly construe any
other terms for purposes of this Decision. See Nidec Motor Corp., 868 F.3d
at 1017.
D. Ground 1: Asserted Obviousness over Gilmore, Dhara, and Dodrill
In Ground 1, Petitioner contends claims 1–5, 7–14, and 16–21 are
unpatentable under 35 U.S.C. § 103(a) over the combination of Gilmore,
Dhara, and Dodrill. Pet. 5–80.
1. Overview of Cited References
a) Gilmore (Ex. 1005)
Gilmore is a published U.S. Patent Application entitled “Dynamic
Content Generation for Voice Messages.” Ex. 1005, code (54). Gilmore
was published on November 20, 2003 (id. at code (43)), and is thus prior art
under 35 U.S.C. § 102(b). Pet. 1. Patent Owner does not dispute the prior-
art status of Gilmore.
Gilmore’s method “simulate[s] a conversation with the caller” using
an automated voice response system having a voice gateway that presents a
generated voice message to a telephone caller. Ex. 1005 ¶¶ 10, 39; see also
id. ¶ 3. Figure 2 shows such a voice response system and is reproduced
below.
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Figure 2 shows a block diagram of a voice communications
system and associated components. Ex. 1005 ¶ 17.
As shown in Figure 2, users of voice communications device 202,
e.g., a telephone, place calls using voice/data network 204. Id. ¶¶ 33, 38.
According to Gilmore, such networks include the following:
[A] circuit-switched voice network such as the public switched
telephone network (PSTN), a packet-switched data network, or
any other network able to carry voice. Data networks may
include, for example, Internet protocol (IP)-based or
asynchronous transfer mode (ATM)-based networks and may
support voice using, for example, Voice-over-IP, Voice-over-
ATM, or other comparable protocols used for voice data
communications.
Id. ¶ 31; see also id. ¶ 36. The “[i]ncoming calls are answered by the
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telephony services and signal processing component 208a of the voice
gateway 208” (id. ¶ 38), i.e., the voice gateway “responds to the calls in
accordance with a voice program” (id. ¶ 33). In particular, an interpreter
program in the voice gateway responds to the incoming calls by “retrieving
and executing voice programs,” and “application server 212 provides the
execution environment for voice applications.” Id. ¶¶ 39–40. Each voice
application “may be a combination of, for example, java servlets, java server
pages, other java code, and voice scripts such as VoiceXML scripts or SALT
scripts.” Id. ¶ 40. “In typical operation, the voice gateway 208 retrieves the
initial voice script from local memory and/or from the application server 212
and . . . execut[es] the voice-specific instructions within the script.” Id. ¶ 48.
The “voice-specific instruction may be a prompt instruction,” i.e., a request
for the user to respond with user input. Id. ¶¶ 39, 48.
b) Dhara (Ex. 1009)
Dhara is a published U.S. Patent Application entitled “Method of
Implementing a VXML Application into an IP Device and an IP Device
having VXML Capability.” Ex. 1009, code (54). Dhara was published on
October 30, 2003 (id. at code (43)), and thus is prior art under 35 U.S.C.
§ 102(b). Pet. 1. Patent Owner does not dispute the prior-art status of
Dodrill.
Dhara discloses an IP device, e.g., an IP phone, personal digital
assistant, wireless communication device, that executes the instructions of a
“voice extensible markup language (VXML)” script file “to establish an
audio interface with . . . the user of the IP device.” Id. ¶¶ 7, 19. Figure 2
shows such an IP device and is reproduced below.
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Figure 2 shows a block diagram of an IP device
in a computer network system. Ex. 1009 ¶¶ 11, 28.
As shown in Figure 2, “IP device 102” includes components for
“implementing a [VoiceXML] application to provide an audio interface to a
user of the device 102.” Id. ¶ 20. In particular, the IP device includes a
VoiceXML browser 126 that contains instructions to “implement an audio
interface accessible to a user of the IP device 102.” Id. ¶ 23. Further, IP
device 102 includes “a text-to-speech (TTS) module 204,” which converts
text into synthesized speech for IP device 102. Id. ¶ 28; see also id. ¶ 25.
The text to be converted into speech is transmitted to the IP device in
VoiceXML script files from VoiceXML server 106. Id. ¶¶ 24, 31–32. For
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example, the VoiceXML script includes “an instruction contain[ing] a text
prompt element.” Id. ¶ 32.
c) Dodrill (Ex. 1006)
Dodrill is a U.S. Patent entitled “Application Server Configured for
Dynamically Generating Web Pages for Voice Enabled Web Applications.”
Ex. 1006, code (54). Dodrill issued on July 20, 2004 (id. at code (45)), and
thus is prior art under 35 U.S.C. § 102(b). Pet. 1. Patent Owner does not
dispute the prior-art status of Dodrill.
Dodrill teaches a “web-based voice messaging system [that] provides
voice application control between a [user’s] web browser and an application
server.” Ex. 1006, code (57). The web browser is provided by a client, e.g.,
a “thin client.” Id. at 3:4–9, 3:16–22. The “application server executes a
voice-enabled web application by runtime execution of extensible markup
language (XML) documents that define the voice-enabled web application to
be executed.” Id. at 5:7–10. Those “XML pages are stored as XML
applications and functions 96, for example within a document database
accessible by the application server.” Id. at 9:16–19.
2. Analysis
As discussed herein, we are persuaded Petitioner has established, by a
preponderance of the evidence, that claims 1–5, 7–14, and 16–21 are
unpatentable on this ground.
a) Independent Claims 1, 9, and 16
The parties argue the independent claims essentially collectively. In
support of its contention that the combination of Gilmore, Dhara, and
Dodrill renders independent claim 1 unpatentable, Petitioner presents
evidence that Gilmore teaches or suggests the subject matter of many of the
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limitations of claim 1, and provides a detailed mapping of: the preamble11
(Pet. 13 (citing Ex. 1005 ¶ 30; Ex. 1021 ¶ 74)); limitation 1h (id. at 26
(citing Ex. 1005 ¶ 31; Ex. 1021 ¶¶ 96–97)); limitation 1i (id. at 26–28 (citing
Ex. 1005 ¶ 31, Figs. 1–2; Ex. 1021 ¶¶ 98–99)); and limitation 1j (id. at 28–
32 (citing Ex. 1005 ¶¶ 40, 45–46, 52, 75, Figs. 1–2; Ex. 1021 ¶¶ 100–103)).
Petitioner also presents evidence that the combination of Gilmore and
Dhara teaches: limitations 1a–1d (id. at 14–21 (citing Ex. 1005 ¶¶ 3, 30, 33,
39, 44, 50, 53, Figs. 1–2; Ex. 1009 ¶¶ 5, 19–22, 36–37, 40–42, Fig. 2;
Ex. 1021 ¶¶ 76–86)); limitation 1e (id. at 21–22 (citing Ex. 1005 ¶¶ 39, 49;
Ex. 1009 ¶¶ 22, 34, 38; Ex. 1021 ¶¶ 87–89)); limitation 1f (id. at 22–23
(citing Ex. 1005 ¶¶ 30–31, 35; Ex. 1009 ¶ 19; Ex. 1021 ¶¶ 90–91));
limitation 1g (id. at 23–25 (citing Ex. 1005 ¶¶ 15, 33, 38–40, 46, 48, 49;
Ex. 1009 ¶¶ 5, 40–42; 92–95)); and limitation 1l (id. at 43 (citing Ex. 1005
¶¶ 31, 50; Ex. 1009 ¶ 19; Ex. 1021 ¶¶ 119–120)).
Petitioner also presents evidence that the combination of Gilmore and
Dodrill and/or Dhara teaches: limitations 1k1, 1k2, 1m, and 1n (id. at 32–44
(citing Ex. 1005 ¶¶ 33–34, 39–48, 52, 103, Figs. 9–14; Ex. 1006, 8:18–24,
9:12–24, 11:66–12:30, Fig. 7; Ex. 1021 ¶¶ 104–118, 121–122)); and
limitation 1o (id. at 44 (citing Ex. 1005 ¶¶ 48, 103, Fig. 9; Ex. 1006, 8:18–
24, 11:66–12:3, Fig. 7; Ex. 1021 ¶¶ 123)).
As Petitioner notes, and we agree, independent claim 9 recites
substantially similar elements as independent claim 1. Pet. 44–48.
Petitioner analyzes the similar elements recited in independent claim 9 by

11 Neither party takes a position on whether the preambles to the claims are
limiting. Patent Owner does not separately address the preambles. See
generally PO Resp. To the extent the preambles are limiting, we find
Petitioner’s evidence persuasive.
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reference to Petitioner’s analysis of independent claim 1. Id. Regarding the
elements not recited in independent claim 1, Petitioner presents evidence
that Gilmore teaches or suggests “wherein the packetized voice data is used
to identify the application.” Id. at 47 (citing Ex. 1005 ¶¶ 34, 51; Ex. 1021
¶¶ 134–135).
Petitioner also notes, and we agree, that independent claim 16 recites
substantially similar elements as independent claim 1, and analyzes the
similar elements recited in independent claim 16 by reference to Petitioner’s
analysis of independent claim 1. See Pet. 48–57. Regarding the elements
not recited in independent claim 1, Petitioner presents evidence that Gilmore
teaches or suggests “wherein the packetized audio data is used to determine
the request for processing service.” Id. at 51 (citing Ex. 1005 ¶¶ 39, 50).
Petitioner relies on the combination of Gilmore and Dodrill to teach
“wherein the request for processing service comprises one or more
instructions to the client device to retrieve content from a source located
remote from the client device.” Id. at 52–55 (citing Ex. 1006, 12:55–60,
Fig. 7; Ex. 1021 ¶¶ 148, 150, 153–159). Petitioner relies on Dodrill to teach
“requesting the content from the source located remote from the client
device.” Id. at 55–56 (citing Ex. 1006, 12:55–60). Petitioner relies on the
combination of Gilmore and Dodrill to teach “presenting, via the speaker, an
audio output corresponding to the content from the source located remote
from the client device.” Id. at 55–57 (citing Ex. 1006, 12:5–10, Fig. 7;
Ex. 1021 ¶¶ 160–162).
As further discussed below in the context of Patent Owner’s
arguments, we find Petitioner has demonstrated, by a preponderance of the
evidence, that the combination of Gilmore, Dhara, and Dodrill teaches or
suggests each of the limitations of independent claims 1, 9, and 16.
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Patent Owner argues that Petitioner’s showing is deficient because:
(1) Gilmore’s VoiceXML scripts are not “applications,” and therefore the
Petition fails to show an application server that is configured to (a) receive
an application via a second communication link or cause execution of the
application via the second communication link (limitation 1j), or
(b) generate a voice representation of information derived from an
application (limitations 1k1, 1n; 9j, 9n) (PO Resp. 33–39); (2) the Petition
fails to identify a communication device that transmits a request to an
application server that is adapted to establish a communication session in
response to a request from a communication device (limitations 1g; 9g; 16f)
(id. at 39–45); (3) Gilmore does not disclose an application server that sends
a request for processing service to a communication device (limitations 1k2,
1m; 9j, 9m; 16i, 16l, 16m) (id. at 45–50); (4) Gilmore does not disclose a
communication device that generates packetized voice data by packetizing at
least a part of a voice input (limitations 1f, 1l; 9f, 9k, 9l; 16e, 16j, 16k)
(id. at 50–51); and (5) Petitioner has failed to establish that the ordinarily
skilled artisan would have been motivated to combine the teachings of
Gilmore, Dhara, and Dodrill in the manner asserted by Petitioner (id. at 52–
58).
Certain limitations of claims 1, 9, and 16 are not disputed by Patent
Owner. In particular, Patent Owner has not challenged Petitioner’s showing
as to the recitations in the claims of: (1) a speaker, input device and one or
more processors (limitations 1a, 1b, 1c; 9a, 9b, 9c; 16a, 16b, 16c); (2) a
communication device that captures a voice input from a user via an input
device (limitations 1e; 9e; 16a); (3) a first communication link comprising a
data connection (limitations 1h; 9h; 16g); (4) an application server remote
from a communication device (limitations 1i; 9i; 16h, 16n); and (5) the
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application server being configured to present the voice representation of
information to the user via the speaker (limitations 1o; 9o; 16o). Patent
Owner also does not separately challenge the claims’ recitation of a
“memory having stored thereon a software program” aside from challenging
the functionality of such software program as recited in the foregoing
challenged limitations. See generally PO Resp.
We find Petitioner has shown, by a preponderance of the evidence,
that these undisputed limitations are satisfied by the combination of
Gilmore, Dhara, and Dodrill. In particular, Petitioner presents evidence that
Gilmore teaches or suggests a communication device (e.g., a cellular phone,
PDA, or voice-enabled computer) that includes a speaker, input device, one
or more processors, and memory storing a software program that is executed
by the processors. Pet. 14–15 (citing Ex. 1005 ¶¶ 3, 30, 39, 50, Figs. 1, 2;
Ex. 1021 ¶¶ 76–80). Petitioner also presents evidence that Gilmore
discloses capturing a voice input from a user via the input device. Id. at 21–
22 (citing Ex. 1005 ¶¶ 39, 49; Ex. 1021 ¶¶ 87–88). Petitioner also presents
evidence that Gilmore discloses a voice/data network that is a data
connection, as well as an application server (Gilmore’s voice gateway) that
is located remote from a communications device, physically separated by the
voice/data network. Id. at 26 (citing Ex. 1005 ¶ 31; Ex. 1021 ¶¶ 96–99).
We find Petitioner’s evidence persuasive.
Petitioner notes that Gilmore does not explicitly label some of the
hardware components, and so also cites to Dhara as making explicit that a
communication device such as an IP phone, computer, or PDA includes a
speaker, input device (e.g., microphone), microprocessor, and memory.
Pet. 16 (citing Ex. 1009 ¶¶ 19, 21–22; Ex. 1021 ¶ 80). Petitioner also
presents evidence that Dhara teaches or suggests software stored in memory
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to capture voice inputs for packetization, transmit communication requests,
transmit packetized voice data, receive processing requests, and present
voice representations to the user. Id. at 17–18 (citing Ex. 1021 ¶ 81).
Petitioner presents evidence and articulated reasoning supporting a finding
that the ordinarily skilled artisan would have found it obvious “to
incorporate Dhara’s device-side software to perform basic voice capture,
transmittal, receipt, and presentation functions to facilitate interfacing
between the user and Gilmore’s IVR system over an IP-based network
format described in Gilmore and Dhara.” Id. at 18 (citing Ex. 1021 ¶ 81). In
particular, Petitioner presents evidence, including the testimony of
Dr. Lipoff (which we credit), that the ordinarily skilled artisan would have
been motivated to combine Dhara’s teachings with those of Gilmore to
extend the VoiceXML capabilities beyond the remote servers and to
implement the IVR system over an IP-based network, to increase the options
available for the XML voice applications, such as voice web-browsing, over
the IP network. Id. at 19–20 (citing Ex. 1005 ¶¶ 30, 31, 35 48–50; Ex. 1009
¶¶ 20, 21, 30–32, 36, 41; Ex. 1021 ¶¶ 82–83). Petitioner further notes that
speakers, input devices, and memory were all well-known “long before the
priority date of the ’032 patent,” and
[i]ncorporating a processor, memory, and software into
Gilmore’s communication device (the same devices as in Dhara
and Dodrill) thus merely combines known operations and
functions in their ordinary and expected manner, because the
memory stores software that is executed by the processor to
perform operations, such as outputting an audio prompt or
recording a user spoken response, as described in Dhara and
Dodrill.
Id. at 21 (citing Ex. 1021 ¶ 86; Ex. 1005 ¶ 44; Ex. 1009 ¶¶ 23, 32; Ex. 1006,
11:61–12:30).
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Petitioner also presents evidence that the combination of Gilmore and
Dodrill teaches or suggests the communication device presenting a voice
representation (e.g., audio output) to the user. Pet. 44 (citing Ex. 1021
¶ 123); see also infra § III.D.2.a)(3) (discussing Petitioner’s showing
regarding limitation 1k2).
We find Petitioner’s contentions regarding the undisputed limitations
are supported by the cited evidence and the credible testimony of Dr. Lipoff.
We address the sufficiency of Petitioner’s showing as to the remaining
(disputed) limitations in the context of Patent Owner’s arguments below.
(1) Applications received by an application server and from which a voice
representation of information is derived (limitations 1j, 1k1; 9j)
Claim 1 recites that “the application server is either (a) configured to
receive an application via a second communication link, or (b) configured to
cause execution of the application via the second communication link.”
Ex. 1001, 13:55–59 (limitation 1j). Claim 1 further recites “wherein the
application server is configured to generate a voice representation of
information derived from the application.” Id. at 13:59–61 (limitation 1k1).
Claim 9 similarly recites “wherein the application server is configured to
generate a voice representation of information derived from an execution of
an application.” Id. at 14:47–50 (limitation 9j).
Central to the parties’ dispute over these limitations is the proper
construction of the term “application,” which we have addressed above. We
first address application of that construction to Petitioner’s showing
regarding Gilmore’s VoiceXML scripts as applications. Then we turn to the
parties’ disputes regarding whether (1) Gilmore teaches or suggests an
application server that is configured to receive an application via a second
communication link or to cause execution of the application via the second
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communication link (limitation 1j); and (2) Gilmore teaches or suggests an
application server that is configured to generate a voice representation of
information derived from an application or an execution of an application
(limitations 1k1; 9j).
(a) Gilmore’s VoiceXML scripts are applications
Patent Owner argues that Petitioner has failed to demonstrate that any
of the “application” limitations are satisfied because Petitioner maps the
claimed “applications” to Gilmore’s VoiceXML scripts and dynamic content
generation (“DCG”) commands, which Patent Owner contends “are not
‘applications’ as the term is used in the ’032 Patent and as it would be
understood by [the ordinarily skilled artisan].” PO Resp. 34. Patent Owner
continues:
Gilmore at most discloses a single VoiceXML-based
application that is executed on the application server. It
accesses VoiceXML script files, processes them as part of the
execution of the application, and sends prompts to the voice
gateway to be rendered and played over the phone to a user.
But the script files themselves (and particular text within them)
are not applications.
Id. at 36.
Petitioner responds that VoiceXML scripts meet the definition of an
application as recited in the ’032 patent—namely, functionality that is
capable of facilitating the ability to collect information from and/or present
information to one or more client devices or users. See Reply 13 (citing
Ex. 1001, 4:45–49). Thus, according to Petitioner, “executing VoiceXML
scripts executes ‘applications’ as used in the ’032 patent.” Id. at 14.
Petitioner further presents evidence that Gilmore processes DCG commands
as part of the “application” caused to be executed on application server 212.
Id. at 13 (citing Ex. 1005 ¶¶ 40, 52, 90, 91, 110; Pet. 31–32). In particular,
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Gilmore describes “[a] dynamic content generation (DCG) command may be
used in the voice scripts to significantly increase the ability of the scripts to
dynamically change in response to different types of callers and in response
to different caller inputs.” Ex. 1005 ¶ 52.
Patent Owner’s arguments are unavailing in part because they are
premised on an overly narrow interpretation of the term “application,” which
we have not adopted. See supra § III.C.3. As we discuss above, we agree
with Petitioner that an “application,” within the meaning of the ’032 patent
claims, includes “functionality that is capable of facilitating the ability to
collect information from and/or present information to one or more client
devices or users.” Id.; see Ex. 1001, 4:45–49.
We also agree with Petitioner that a VoiceXML script, as described in
Gilmore, falls within the scope of an “application” as recited in the ’032
patent claims. In particular, Petitioner presents an annotated version of
Figure 1 of Gilmore, reproduced below (Pet. 6):

Figure 1 (annotated by Petitioner) is a diagram of an exemplary voice
communications system. Ex. 1005 ¶ 16.

Petitioner presents evidence that, as shown in Figure 1, Gilmore
discloses a communication system “for remotely executing interactive voice
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applications using an interactive voice response (“IVR”) system 106 (green)
over a voice/data network 104/204 (blue).” Pet. 5 (citing Ex. 1005
¶ 31). Petitioner further asserts “Gilmore’s voice gateway 108/208 (yellow)
remotely executes interactive voice applications that a user can communicate
with using communication device 102/202 (orange) by listening to audio
outputs and speaking responses.” Id. at 5–6 (citing Ex. 1005 ¶¶ 33, 34, 39–
48).
Petitioner also provides an annotated version of Gilmore’s Figure 2,
reproduced below, which illustrates various components of Gilmore’s
interactive voice response system.

Figure 2 (annotated by Petitioner, Pet. 6) is a block diagram of a voice
communications system. Ex. 1005 ¶ 17.
By reference to Figure 2, Petitioner asserts that “[a]fter receiving an
incoming request from a user communications device 102/202 (orange),
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voice gateway 108/208 (yellow) ‘receives script files from the application
server 212 [(green)] which obtains the files from the data store 214
[(red)].’” Pet. 6–7 (quoting Ex. 1005 ¶ 46). Petitioner further asserts that
[v]oice gateway 108/208 then “parses the script by searching
and executing the voice-specific instructions within the script.”
. . . While executing the application scripts, voice gateway
108/208 “generat[es] outgoing speech or prompts using the
audio playback component 208c and the text-to-speech
generation component 208d . . . and listen[s] to spoken
responses from the caller using the speech recognition engine
208c.”
Id. at 6 (quoting Ex. 1005 ¶¶ 48, 39).
Thus, Gilmore discloses that its voice gateway executes voice scripts
(e.g., VoiceXML scripts) to create speech prompts for a user and to receive
caller responses to given prompts. Ex. 1005 ¶ 39. As such, Gilmore’s
VoiceXML scripts provide “functionality that is capable of facilitating the
ability to collect information from and/or present information to one or more
client devices or users”; therefore, we find that Gilmore’s VoiceXML scripts
qualify as “applications” within the meaning of the ’032 patent.
(b) Gilmore’s application server is configured
to receive an application via a second communication link or
to cause execution of the application via that link (limitation 1j)
Petitioner presents evidence that Gilmore discloses both alternatives
recited in claim 1—that the application server (a) is configured to receive an
application via a second communication link, or (b) is configured to cause
execution of the application via the second communication link. Pet. 28. In
particular, referring to annotated Figure 1 of Gilmore, reproduced below,
Petitioner presents evidence that voice gateway 108/208 is configured to
“receive[] script files [applications] from the application server 212” over
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network 112 (labeled “second communication link” by Petitioner). Id. at 29
(citing Ex. 1005 ¶ 46; Ex. 1021 ¶ 101).

Figure 1 (annotated by Petitioner, Pet. 30) is a diagram of an
exemplary voice communications system. Ex. 1005 ¶ 16.
Petitioner presents evidence that Gilmore’s application server 212
“obtains the [script] files from the data store 214” (annotated red above), as
shown by the double-headed arrow in annotated Figure 2, reproduced below,
“and sends the application to voice gateway 108/208.” Pet. 29 (citing
Ex. 1005 ¶¶ 45, 46, 52 (“When the voice gateway 208 requests a script from
the application server 212, the application server 212 accesses the script
from the data store 214 . . . .”), ¶ 75). According to Petitioner, as shown in
the annotated figure below, “voice gateway 108/208 (application server,
yellow) receives a VoiceXML script to be executed over data network 112
(second communication link, blue in Figure 1, double-headed arrow in
Figure 2) from application server 212 (bright green).” Id. (footnote
omitted).

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Figure 2 (annotated by Petitioner, Pet. 31) is a block diagram of a
voice communications system. Ex. 1005 ¶ 17.
With regard to the second claimed alternative, Petitioner presents
evidence that when Gilmore’s “‘voice gateway 208 requests a script from
the application server 212,’ server 212 ‘processes the script by resolving any
DCG [dynamic content generation] commands within the script into voice
instructions’ before sending the script to voice gateway 108/208.” Pet. 31
(citing Ex. 1005 ¶ 52). Gilmore further explains that “application server 212
provides the execution environment for voice applications” and that
“application code executed by the application server 212 coordinates which
scripts to send to the voice gateway 208.” Ex. 1005 ¶ 40. Thus, Gilmore
confirms that application server 212 may process the scripts before sending
the processed scripts to the voice gateway 208, such as by executing DCG
commands (which meet the ’032 patent’s definition of “application”) over
data connection 112 (second communication link) before receiving the
application from application server 212. Ex. 1005 ¶¶ 40, 52.
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We are persuaded by Petitioner’s evidence and agree that Petitioner
has sufficiently shown that Gilmore teaches both of the alternatives recited
in limitation 1j.
Patent Owner’s challenge to Petitioner’s showing regarding limitation
1j is premised on Patent Owner’s contention that VoiceXML scripts and
DCG commands are not applications. PO Resp. 37–38. Patent Owner’s
arguments are unavailing in part because they are premised on an overly
narrow interpretation of the term “application,” which we have not adopted.
See supra § III.C.3. As we discuss above, we agree with Petitioner that an
“application,” within the meaning of the ’032 patent claims, includes
“functionality that is capable of facilitating the ability to collect information
from and/or present information to one or more client devices or users.” Id.;
see Ex. 1001, 4:45–49. We further agree, as also noted above, that
Gilmore’s VoiceXML scripts fall within the scope of an application. We
similarly agree that DCG commands fall within the scope of an application,
as they are used, for example, to “significantly increase the ability of the
scripts to dynamically change in response to different types of callers and in
response to different caller inputs.” Ex. 1005 ¶ 52. As such, they facilitate
the ability to collect information from and/or present information to one or
more client devices or users.
We find Petitioner has shown by a preponderance of the evidence that
Gilmore teaches or suggests the subject matter of limitation 1j.
(c) Gilmore’s application server is configured to generate a voice
representation of information derived from an application or an
execution of an application (limitations 1k1; 9j).
With regard to the requirement that the application server generate a
voice representation of data derived from an application or execution of an
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application, Petitioner presents persuasive argument and evidence that
Gilmore’s generation of speech using text-to-speech processing is a voice
representation “of information derived from the application” because
Gilmore’s VoiceXML script determines what audio to present based on the
application’s instructions (e.g., prompt/grammar) and information in the
application, e.g., menu options to speak for a specific user. Pet. 33–36, 51;
Ex. 1005 ¶¶ 39, 43–44, 50, Figs. 9–14; Reply 15. Petitioner further presents
persuasive argument and evidence that, in Gilmore, the generated speech is a
voice representation “of information derived from an execution of an
application” because Gilmore’s voice gateway “generates speech from
responses or response text (information) in the VoiceXML application,”
which “text is determined (derived) and ‘tailored to the [user’s] input’ by
executing grammar instructions in the VoiceXML (execution of the
application).” Reply 14–15 (citing Pet. 33–36, 51, 61; Ex. 1005 ¶¶ 39, 43–
44, 48, 50, 64, 109). Petitioner further states that “[t]he new prompt/text is
thus the voice representation of the information (text) derived by executing
the VoiceXML application.” Id. (citing Ex. 1005 ¶¶ 39, 43–44, 50; Pet. 33–
36, 51, 61). Petitioner adds that “Gilmore’s speech is also ‘of information
derived from . . . execut[ing] . . . an application’ because executing DCG
commands in an application determines which information (e.g., menu
options, prompts) to present to the user via text-to-speech based on user
characteristics.” Id. at 15 (citing Pet. 31–32; Ex. 1005 ¶¶ 90–91, 97–98).
Patent Owner argues Gilmore “fails to satisfy this element” because
“the ‘execution’ of VoiceXML scripts in Gilmore is not the same thing as
the execution of an application in Gilmore (and because the execution of the
application in Gilmore does not happen on the alleged application server).”
PO Resp. 38. In addition, according to Patent Owner:
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[e]ven if the VoiceXML scripts / DCG commands of Gilmore
are “applications” (which they are not), Gilmore still fails to
disclose that an application server generates a voice
representation that is derived from an execution of such an
application, because there is no derivation taking place in the
rendering of the text of VoiceXML scripts, as such information
would be the application itself according to Petitioner.
Id. at 39.
We disagree with Patent Owner’s contentions, which are somewhat
conclusory with regard to Patent Owner’s reading of “derived from
execution” of an application. In contrast, as noted above, Petitioner’s
contentions are persuasive and supported by the cited evidence.
We find Gilmore teaches or suggests “wherein the application server
is configured to generate a voice representation of information derived from
the application” as recited in claim 1 (limitation 1k1) and similarly recited in
claim 9 (limitation 9j).
(2) “[T]ransmit a request to establish a communication session over [a
data connection] . . . to an application server . . . adapted to establish
the communication session in response” (limitations 1g; 9g; 16f)
Claim 1 recites that the communication device “transmit[s] a request
to establish a communication session . . . to an application server . . . adapted
to establish the communication session in response . . . .” Ex. 1001, 13:46–
51. Claims 9 and 16 contain similar recitations. Id. at 14:40–43, 15:28–31.
We address this limitation in two parts below, in which we determine:
(a) whether Gilmore teaches a communication device sending a request to
establish a communication session; and (b) whether Gilmore’s disclosure of
executing VoiceXML scripts teaches a “communication session.”
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(a) “request to establish a communication session”
Petitioner presents evidence that Gilmore’s communication device
102/202 transmits a request to establish a communication session, as recited
in claim 1, “such as by placing a call to the IVR [(interactive voice
response)] system or speaking an instruction to initiate a VoiceXML session,
over voice/data network 104/204 (first communication link) to voice
gateway 108/208 (application server).” Pet. 23 (citing Ex. 1021 ¶ 93).
“Voice gateway 108/208 ‘receives user calls from voice communications
devices 102 via the network 104 and responds to the calls in accordance with
a voice program.’” Id. (quoting Ex. 1005 ¶¶ 33, 38). Petitioner asserts
Gilmore discloses the voice gateway is “adapted to establish the
communication session in response to the request,” as recited in claim 1, “by
executing an interactive voice application (e.g., VoiceXML) to send prompts
or queries that the user can respond to interact with voice gateway 108/208.”
Id. at 24 (emphasis added). According to Petitioner, in Gilmore, “[v]oice
gateway 108/208 begins (e.g., establishes) the communication session when
it executes the interactive VoiceXML application.” Id. (citing Ex. 1005
¶¶ 39, 40, 46, 48; Ex. 1021 ¶ 93).
Patent Owner, however, argues that Gilmore’s communication session
is not established in response to a request sent by the communication device.
PO Resp. 40–41. In particular, Patent Owner argues
it is clear from Gilmore that it is the action of the telephony
service (i.e., on the voice gateway) that initiates the alleged
communication session. The “request” must therefore be the
call from the user, the answer, and the subsequent action by the
telephony service to interact with the VoiceXML interpreter
context that requests a session.
Id. Patent Owner further asserts “[t]he call alone without the telephony
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service and associated logic does not request anything from a VoiceXML
script or interpreter.” Id. at 41. Patent Owner then posits that “if it is the
telephone call and the answer (along with subsequent processing) [that]
constitute[] the ‘request to establish a communication session,’ then the
‘request’ is not sent by the communication device, as the claims require.”
Id. In other words, Patent Owner argues that it is the action of multiple
devices (both the user calling via the communication device and the interim
processing by the voice gateway) that constitutes a “request” in Gilmore.
See id.
Patent Owner’s contentions are unavailing. As in the Institution
Decision, we find that a communication device placing a call to a voice
response system is a request to establish a communication session.
See Dec. 29. In particular, we agree with Petitioner’s contention (supported
by the testimony of Dr. Lipoff regarding the contemporaneous
understanding of the ordinarily skilled artisan, which we credit) that “the call
from communications device 102/202 [to the interactive voice response
system] corresponds to a ‘request to establish a communication session’
because it represents the user’s action to initiate retrieval and execution of
the VoiceXML script . . . that establishes the communication session.”
Pet. 23–24 (citing Ex. 1021 ¶ 93). Even if Gilmore’s voice gateway
performs an intermediate processing step between the user contacting the
IVR (“interactive voice response”) system and executing the application, the
user’s initial call to the IVR system is still a “request” that starts the process
and results in the voice gateway executing the application.
(b) Gilmore discloses a communication session
Patent Owner next argues that Gilmore’s executing VoiceXML scripts
does not “establish a communication session.” PO Resp. 41–45. As
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support, Patent Owner makes various contentions that Gilmore discloses
merely a “traditional IVR system,” and thus establishes only a “call session”
and not a “communication session.” Id. at 42. Patent Owner distinguishes
the ’032 patent as being about “connecting a computing device to a server so
it can receive instructions requesting processing services and thus take on
some of the application processing load, not making telephone calls.” Id.
Patent Owner further asserts that “any sending and receiving of
‘instructions’ in Gilmore occurs over the link between the voice gateway and
the application server of Gilmore—not between an application server and a
communication device.” Id. at 43 (citing Ex. 2007 ¶¶ 102–104). Patent
Owner further contends that the need for a “voice gateway” in Gilmore
underscores that Gilmore discloses merely telephone calls to an IVR system,
because the voice gateway “acts to support telephone calls.” Id. at 44. In
contrast, contends Patent Owner, because the ’032 patent does “not relate to
telephone calls, there is no need for a voice gateway.” Id.
Patent Owner’s arguments boil down to the contention that Gilmore’s
“call session” (in Patent Owner’s words) cannot be a “communication
session” as claimed because it lacks the ability to send a request for
processing services from the application server to the communication
device. PO Resp. 43. As such, Patent Owner’s arguments actually implicate
a different limitation—the application server communicating a request for
processing service to the communication device—which we address in the
next section.
With regard to whether Gilmore teaches or suggests establishing a
communication session, Patent Owner’s arguments are unavailing because
they are based on an unduly narrow reading of “communication session” as
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excluding voice telephone calls. As we note supra in Section III.C.1, the
Specification broadly describes client communication devices as follows:
Each client 18 may include, for example, a wireless device, a
voice over IP device, a desktop computer, a laptop computer, a
personal digital assistant, a cell-phone, a Wi-Fi device, a
workstation, a mainframe computer, a mini-frame computer, a
web server, or any other computing and/or communicating
device.
Ex. 1001, 4:22–27. The Specification also discloses that “[l]andline phones
and/or IP phones can also communicate with repository 20 and/or
application server 24 in the same manner as mobile phones.” Id. at 6:5–7
(emphases added). Gilmore similarly describes a client (communication
device) as “a device able to interface with a user to transmit voice signals
across a network such as, for example, a telephone, a cell phone, a voice-
enabled personal digital assistant (PDA), or voice-enabled computer.”
Ex. 1005 ¶ 30; see Pet. 6. Thus, both the ’032 patent and Gilmore
contemplate use of similar communication devices, including landline
phones. We, therefore, do not agree with Patent Owner’s contention that a
telephone call in Gilmore cannot qualify as a “communication session” as
recited in the ’032 patent claims.
As we note above in Section III.C.1, we construe a “communication
session” as encompassing the process of a communication device
communicating information to, and/or retrieving information from, another
communication device. We find that Gilmore discloses a communication
device (voice communication device 102/202), such as a landline phone, an
IP phone or cell phone (Ex. 1005 ¶¶ 30, 36, Fig. 2). We further find that
such a communication device communicating information to, and/or
retrieving information from, Gilmore’s voice gateway falls within the scope
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of a “communication session,” as recited in the ’032 patent claims. In
particular, in Gilmore, interpreter 208b on voice gateway 108/208 executes
the interactive VoiceXML application and send prompts that the user can
interact with and respond to using the communication device. E.g., Ex. 1005
¶¶ 39, 40, 46, 48, Fig. 2; Ex. 1021 ¶ 87. In this manner voice gateway 208
“is able to simulate a conversation with the caller.” Id. ¶ 39. We find such a
simulated conversation, in which information is exchanged, is a
communication session within the scope of the ’032 patent claims.
Based on the foregoing, we determine Petitioner has demonstrated by
a preponderance of the evidence that Gilmore teaches “transmit a request to
establish a communication session . . . to an application server . . . adapted to
establish the communication session in response,” as recited in claim 1
(limitation 1g) and similarly recited in claims 9 and 16 (limitations 9g and
16f, respectively).
(3) Application server sends a “request for processing service” to a
communication device, wherein the request for processing service
“comprises an instruction to present the user the voice representation”
“of information derived from the application”
(limitations 1k2, 1m, 1n; 9j, 9m, 9n; 16i, 16l, 16m)
Claim 1 recites the application server “communicate[s] a request for
processing service to the communication device,” and further recites that the
“request for processing service comprises an instruction to present the user
the voice representation” of information derived from the application
(limitations 1k2, 1m, 1n). Ex. 1001, 13:62–63, 14:1–3. Claims 9 and 16
contain similar recitations (limitations 9j, 9m, 9n; 16i, 16l, 16m). Id. at
14:50–51, 14:56–60; 16:1–2, 16:7–11).
Petitioner relies on the combination of Gilmore, Dodrill, and Dhara to
teach “receive the request for processing service from the application server
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over the first communication link” (Pet. 43–44; see id. at 32–42), and
“wherein the request for processing service comprises an instruction to
present the user the voice representation” (id. at 44; see id. 36–42 (citing
Ex. 1005 ¶¶ 33–34, 39–48, 103, Fig. 9; Ex. 1006, 8:18–24, 9:12–24, 11:66–
12:30, Fig. 7; Ex. 1021 ¶¶ 109–118)). Petitioner also relies on the
combination of Gilmore, Dodrill, and Dhara to teach “wherein the request
for processing service comprises one or more instructions to the client
device to retrieve content from a source located remote from the client
device,” as recited in claim 16 (limitation 16m). Id. at 52–55 (citing
Ex. 1006, 12:55–60, Fig. 7; Ex. 1021 ¶¶ 153–159).
As discussed above (§ III.C.2), we construe “processing service” as “a
computing process performed by a communication device for all or part of
the application.” Thus, a request for processing service communicated by an
application server to a communication device includes a request by the
application server that the communication device perform a computing
process for all or part of the application.
Petitioner presents evidence that Gilmore discloses presenting a
“request for processing service” as audio queries from the voice gateway to
the user’s communication device. Pet. 36–37 (citing Ex. 1005 ¶¶ 48, 103,
Fig. 9). Petitioner also presents evidence that Gilmore’s voice gateway
(application server) generates the audio queries by executing VoiceXML
applications to generate voice representations of information derived from
the applications. See id. at 33 (citing Ex. 1005 ¶¶ 39, 43, 48, 52, 103).
According to Petitioner, this is accomplished by Gilmore’s voice gateway
either accessing an audio file at a specified URL or by employing text-to-
speech to translate and play text included in a prompt instruction, resulting
in an audio output such as the “What would you like to do?” query in Figure
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9. See id. at 33–34, 36–37 (citing Ex. 1005 ¶¶ 39, 43, 44, 48, 52, 103,
Fig. 9).
Petitioner then presents evidence that, “[w]hile Gilmore discloses
presenting audio request[s] for processing as audio queries, Dodrill renders
obvious sending the queries as an ‘instruction to present the user the voice
representation,’ recited in element [1n], as a short script that is part of the
request.” Id. at 37 (citing Ex. 1006, 9:12–24; Ex. 1005 ¶¶ 33–34, 39–48). In
particular, Petitioner presents evidence that “Dodrill teaches that, rather than
sending audio directly, the system can send the voice representation along
with an instruction to play the voice representation in a script processed by
the user device.” Id. (citing Ex. 1006, 8:18–24, 11:66–12:30, Fig. 7).
Dodrill’s XML tags include instructions to present information to the user,
such as to play audio files using a “PROMPT” or “autostart” instruction. Id.
(citing Ex. 1006, 11:66–12:30; Ex. 1021 ¶ 112). Petitioner further presents
evidence that “Dhara confirms that the user device, like Dodrill’s Figure 7,
can process instructions to ‘retrieve the audio message from a source
identified in the instruction.’” Id. at 38 (citing Ex. 1009 ¶ 33).
Patent Owner focuses its arguments on Petitioner’s showing as to
Gilmore, arguing that “in Gilmore the cited ‘request’ is an audio prompt—
processed on the application server and played over the phone via a voice
gateway—for user interaction, not for a processing service. . . . The
‘requested’ activity is a user activity, not a device activity.” PO Resp. 45.
Patent Owner acknowledges that the ’032 patent discusses VoiceXML
scripts, but states that when the ’032 patent does so “it makes clear that the
system of the ’032 Patent—unlike traditional VoiceXML systems [such as
Gilmore]—involves distributing some of the processing functions to the
client side for execution.” Id. at 47 (citing Ex. 1001, 6:60–65 (“In this
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example, client 18a provides application independent processing services to
Voice XML-based application 28 executing remotely.”)). In contrast,
continues Patent Owner, “all processing of instructions in Gilmore (and
certainly all processing cited in the Petition) is done on the host side—i.e.,
by the application server.” Id. at 48 (citing Ex. 1005 ¶ 40). In that regard,
Patent Owner challenges Petitioner’s reliance on Gilmore’s text-to-speech
conversion, stating that such conversion and subsequent audio playback is
performed by the application server, and not by the client device. Id. at 48–
49. Patent Owner further asserts that any interaction in Gilmore by a human
on the client side, such as spoken commands or responses to the application
server’s audio prompts, are not a “processing service” within the scope of
the ’032 patent claims. See id.
Petitioner responds by pointing out that the Petition relies on Gilmore
in combination with Dodrill, asserting that Dodrill teaches sending
executable instructions to the user device, thus meeting the construction of
“request for processing services” as adopted by the district court and as we
have also adopted herein. See Reply 21 (citing Pet. 36–42, 44). Patent
Owner does not particularly challenge Dodrill’s teachings, but asserts that
the combination fails because Petitioner has failed to demonstrate that the
ordinarily skilled artisan would have combined the teachings of Gilmore
with Dodrill and/or Dhara. See PO Resp. 50, 52–59; Sur-reply 22–23. We
address those arguments below in Section III.D.2.a)(5).
We are persuaded by Petitioner’s arguments and evidence that the
combination of Gilmore, Dodrill, and Dhara teaches or suggests an
application server that communicates a request for processing service to a
communication device, as recited in claim 1 (limitations 1k2, 1m, 1n) and
similarly recited in claims 9 (limitations 9j, 9m, 9n) and 16 (limitations 16i,
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16l, 16m). In particular, Gilmore teaches the voice gateway generates a
voice representation of information derived from executing a VoiceXML
application, which it sends as audio prompts to the user communication
device. Ex. 1005 ¶¶ 39, 43, 44, 48, 52, 103, Fig. 9. Petitioner persuasively
adds teachings from Dodrill and Dhara for the user communication device
receiving the voice representation in software and executing an instruction in
software on the user device to play the voice representation as audio for the
user, as recited in claims 1 and 9. Pet. 37–38 (citing Ex. 1006, 8:18–24,
11:66–12:30, Fig. 7; Ex. 1009 ¶ 33). Dodrill, for example, discloses an
application server generating a web page for a user’s browser, wherein the
web page includes media control to be performed on the user’s device by a
plug-in resource. Ex. 1006, 11:61–12:4. Dodrill’s plug-in resource can play
audio files for the user and also receive user input that the resource then
matches to an input pattern; the resource may also record and capture user
voice input and upload that input. Id. at 12:5–30. In that regard, we credit,
and rely on, the testimony of Dr. Lipoff to the effect that the ordinarily
skilled artisan would have understood that Dodrill discloses an application
server sending instructions to a user device, to be executed on the user
device for implementing various functionality, such as presenting audio or
display prompts for a user. Ex. 1021 ¶¶ 112–114. And Petitioner
persuasively points to Dhara’s teachings as confirming that a user device,
like Dodrill’s Figure 7, can “process instructions to ‘retrieve the audio
message from a source identified in the instruction.’” Pet. 38 (citing
Ex. 1009 ¶ 33).
With regard to the recitation in claim 16 of “wherein the request for
processing service comprises one or more instructions to the client device to
retrieve content from a source located remote from the client device”
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(limitation 16m), Petitioner presents persuasive evidence that the ordinarily
skilled artisan would have understood that Dodrill not only teaches or
suggests sending instructions to the user’s device as part of a request for
processing that outputs voice or audio prompts, but also that these
instructions “may retrieve the content from a source located remote from the
user’s device, such as a URL location.” Pet. 52 (citing Ex. 1021 ¶ 154). For
example, Dodrill discloses in Figure 7 “PROMPT” instructions to “fetch[]
an audio (.wav) file in response to detecting a sound tag.” Ex. 1006, 12:55–
60, Fig. 7. Petitioner presents the testimony of Dr. Lipoff, which we credit,
in support of finding that the ordinarily skilled artisan would have
understood that such instructions would be fetched from a remote location
identified by a URL. Id. at 52–54 (citing Ex. 1006, 12:55–60, Fig. 7;
Ex. 1021 ¶¶ 153–155).
We find that Petitioner has demonstrated by a preponderance of the
evidence that the combination of Gilmore, Dodrill, and Dhara teaches or
suggests an application server sends a “request for processing service” to a
communication device, as recited in claims 1, 9, and 16 (limitations 1k2,
1m; 9j, 9m; 16i, 16l), and further wherein the request for processing service
“comprises an instruction to present the user the voice representation” “of
information derived from the application,” as recited in claims 1 and 9
(limitations 1n, 9n), and “wherein the request for processing service
comprises one or more instructions to the client device to retrieve content
from a source located remote from the client device,” as recited in claim 16
(limitation 16m).
We address infra Section III.D.2.a)(5) Petitioner’s showing regarding
the combination of these references, as well as Patent Owner’s arguments
challenging that showing.
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(4) Communication device generates packetized voice data
(limitations 1f, 1l; 9f, 9k, 9l; 16e, 16j, 16k)
Claims 1, 9, and 16 recite a communication device having software
that causes the communication device to packetize at least a part of a voice
input and transmit the packetized voice data to an application server.
See Ex. 1001, 12:45–46 (limitation 1f), 12:64–64 (limitation 1l), 14:38–39
(limitation 9f), 14:52–55 (limitations 9k, 9l), 15:26–27 (limitation 16e),
16:3–6 (limitations 16j, 16k).
Petitioner presents evidence that Gilmore discloses generating
packetized voice data from a voice input captured by the input device to
transmit the data over an IP-based network or other packet-based network.
Pet. 22 (citing Ex. 1021 ¶ 90). In particular, Gilmore discloses a
communications device that “transmit[s] voice signals” over a data network,
such as “packetized data” over “Internet protocol (IP)-based” network (e.g.,
“Voice-over-IP” network). Ex. 1005 ¶¶ 30–31, 35. Petitioner presents the
testimony of Dr. Lipoff, which we credit, as support for finding that the
ordinarily skilled artisan would have understood that transmitting captured
voice input over an IP-based packet network requires converting the signal
into packetized voice data, as claimed. Ex. 1021 ¶ 91. Petitioner also
presents evidence that Dhara confirms this understanding of a skilled artisan,
explaining that “transmitting and receiving voice via [an] IP network” is
done “in the form of data packets” for the voice information. Pet. 22 (citing
Ex. 1009 ¶ 19; Ex. 1021 ¶ 91). Petitioner further contends “Dhara also
renders obvious performing the function of generating the packetized voice
data using the user-device software, such as a voice browser.” Id. at 22–23;
see Ex. 1009 ¶ 19 (describing a communication device capable of
communicating voice signals over an IP network), ¶¶ 21–22; Ex. 1021 ¶ 80.
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Patent Owner argues “Gilmore is devoid of any disclosure concerning
a communication device that is configured to generate packetized voice data
by packetizing at least a part of a voice input. Instead, Gilmore merely
discloses certain networks that may be utilized in various aspects of the
disclosure.” PO Resp. 51. Patent Owner challenges, in particular,
Petitioner’s reliance on paragraph 30 of Gilmore, stating that Gilmore
discloses therein only “aspects of the data network 112 that lie[] between
gateway 108 and application system 110 shown in Figure 1—both on the
host side of the system.” Id. (emphasis added). According to Patent Owner,
“[t]his has nothing to do with generating packetized voice data on a
communication device.” Id. Patent Owner also argues that Petitioner’s
alternative reliance on Dhara is misplaced because the ordinarily skilled
artisan would not have combined the teachings of Dhara with Gilmore. Id.
Petitioner responds by reiterating that Gilmore’s communication
device transmits “voice signals” across network 104, which can be a
“packet-switched data network,” “Voice-over-IP” network, or IP-based
network. Reply 22 (citing Ex. 1005 ¶¶ 30–31; Pet. 22–23, 26). Petitioner
further presents evidence that “Dhara and Gilmore confirm the user devices
packetize voice data sent over these networks.” Id. (citing Ex. 1009 ¶ 19
(communication device transmits and receives voice as “data packets”);
Pet. 22, 43; Ex. 1021 ¶ 91; Ex. 1005 ¶¶ 31, 35).
We are persuaded by Petitioner’s evidence that the ordinarily skilled
artisan would have understood from Gilmore that Gilmore’s user device
(voice communication device 102) is a device “able to interface with a user
to transmit voice signals across a network,” including a “voice-enabled
computer,” wherein the network may be a “packet-switched data network”
such as “Voice-over-IP.” Ex. 1005 ¶¶ 30, 31; see also Ex. 1021 ¶ 91. We
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disagree with Patent Owner’s characterization of this disclosure as
referencing only aspects of Gilmore’s network on the host side of the
system. To the contrary, this disclosure of transmission over a packet-
switched network includes transmission by the device employed by the user
to make calls to the system—communication device 102. See Ex. 1005
¶¶ 30, 31.
We find Petitioner has demonstrated by a preponderance of the
evidence that Gilmore both alone, or combined with Dhara, teaches or
suggests a communication device having software that causes the
communication device to packetize at least a part of a voice input and
transmit the packetized voice data to an application server, as recited in
claims 1, 9, and 16. Patent Owner’s arguments challenging Petitioner’s
showing as to a motivation to combine these references are addressed in the
next section.
(5) Combination of Gilmore, Dhara, and Dodrill
As noted above, Petitioner relies on Gilmore alone as disclosing
several limitations of claim 1, but additionally relies on the teachings of
Dodrill and/or Dhara in combination with Gilmore as to certain limitations.
In particular, as to limitations 1a–1d (a speaker, input device, one or
more processors, and a memory), Petitioner asserts, relying in part on the
declaration testimony of Dr. Lipoff, that an ordinarily skilled artisan would
have understood that Gilmore’s system included those components (Pet. 14–
15 (citing Ex. 1005 ¶¶ 3, 30, 33, 39, 44, 50, 53, Figs. 1, 2; Ex. 1021 ¶¶ 76–
79)), but additionally relies on Dhara’s explicit disclosure of such elements
(id. at 15–16 (citing Ex. 1009 ¶¶ 19, 21, 22, Fig. 2; Ex. 1021 ¶ 80)).
Petitioner presents evidence, including the testimony of Dr. Lipoff, which
we credit, that a skilled artisan would have been motivated to include
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Dhara’s software to permit Gilmore’s computer-based devices to interact
with an IVR system, as disclosed in Gilmore, using call-in or audio
command features described in Dhara. Id. at 18 (citing Ex. 1005 ¶¶ 30, 31;
Ex. 1021 ¶ 81). Petitioner also presents evidence that “[a] skilled artisan
would also have found it obvious to use Dhara’s device-side software to
provide access to web-browsing and customization in an IVR, such as
Gilmore’s system, such as for audio commands or processing instruction
scripts on the user device.” Id. (citing Ex. 1009 ¶¶ 5, 40–42; Ex. 1021 ¶ 81).
Petitioner persuasively asserts that the combination of Gilmore and Dhara,
as argued, would have combined known operations and functions in their
ordinary and expected manner. Id. at 18–21 (citing Ex. 1021 ¶¶ 82–86).
As to limitations 1e, 1f, and 1l (which relate to capturing voice input
via an input device, packetizing at least part of it, and transmitting it over a
data connection), Petitioner presents evidence that Gilmore discloses the
gateway receives spoken input from the caller and also discloses
transmitting packetized data over an Internet-protocol based network (such
as VoIP). Id. at 21–22, 43 (citing Ex. 1005 ¶¶ 30, 31, 35, 39, 49, 50).
Relying in part on the testimony of Dr. Lipoff, Petitioner also presents
evidence that Dhara confirms the ordinarily skilled artisan would have been
motivated to implement Gilmore’s voice capture in software, and would
have understood that transmitting and receiving the voice input via an IP
network would have involved packetizing the data. Id. at 22–23, 43 (citing
Ex. 1009 ¶¶ 19, 22, 34, 38; Ex. 1021 ¶¶ 89–91, 119–120).
Limitations1k2 and 1m (and similar limitations 9j and 16i) relate to a
request for processing service from the application server to the
communication device, and limitations 1n and 1o (and similar limitations 9n
and 9o) specify that the request for processing service comprises an
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instruction to present the user the voice representation, which is presented to
the user via the speaker, for which Petitioner relies on the combination of
Gilmore, Dodrill, and Dhara. See § II.D.2.a)(3). Petitioner also relies, in
similar manner, on the combination of Gilmore, Dodrill, and Dhara for
limitation 16m. See id. In particular, Petitioner presents evidence that
Dodrill, Gilmore, and Dhara all describe presenting voice prompts to a user
on the user’s voice-enabled PDA, cell phone, or voice-enabled computer.
See Pet. 39 (citing Ex. 1005 ¶ 30; Ex. 1006, 11:20–26; Ex. 1009 ¶ 33).
Petitioner also presents evidence that Dhara teaches providing software on
the user’s communication device that outputs audio information using
instructions in the voice-browser software. See id. (citing Ex. 1009 ¶¶ 32–
33). Petitioner further presents evidence that Dodrill discloses similar user-
side voice browsers as “thin clients,” and also describes different design
options for presenting voice output information, such as creating the voice
output at the remote application server and sending the voice output to the
user. See id. at 39–40 (citing, e.g., Ex. 1005 ¶¶ 39, 115; Ex. 1006, 8:22–24).
Petitioner presents evidence that Dodrill, alternatively, teaches sending the
user an executable file that contains instructions to present the voice prompts
on the user’s computer, such as in Figure 7. Id. at 40 (citing Ex. 1006, 8:17–
22, 11:61–12:29).
We determine that Petitioner has set forth sufficiently why a skilled
artisan would have been motivated to combine the teachings of Gilmore,
Dodrill, and Dhara in the manner asserted by Petitioner. See Pet. 36–42. In
particular, relying on the declaration testimony of Dr. Lipoff, Petitioner
persuasively argues that the ordinarily skilled artisan “would have been
motivated to incorporate Dodrill’s additional functionality of sending
instructions to present voice representations on Gilmore’s voice-enabled
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device to improve access to voice-browsing (which Dhara and Dodrill also
provide) and to increase the available options for voice applications.” Id. at
40 (citing Ex. 1021 ¶ 117). Petitioner also persuasively argues that the
ordinarily skilled artisan would have realized that shifting some processing
to a capable user device would help eliminate the bottleneck of the server
executing and transmitting streamed audio, thus freeing resources on the
server to perform other processing, while also mitigating potential quality
issues. Id. at 40–41 (citing Ex. 1021 ¶¶ 117, 118).
Petitioner similarly reasons, for claim 16, that the ordinarily skilled
artisan would also have been motivated to provide instructions that retrieve
the audio from a remote URL source (e.g., “wavurl1”) to reduce the amount
of data being sent from voice gateway 108/208 to the user device by
allowing the user’s device to retrieve the files directly rather than using the
voice gateway as an intermediary. Id. at 53–55. Relying in part on the
testimony of Dr. Lipoff, which we credit, Petitioner asserts that “[t]his is
because providing an executable instruction to retrieve the audio file
increases the processing efficiency of the overall IVR system by moving the
fetch and execution operations to the user’s computer.” Id. at 54–55 (citing
Ex. 1021 ¶ 158). Petitioner also persuasively reasons that modifying
Gilmore’s system to incorporate Dodrill’s sending of instructions to present
audio prompts, or retrieving content from a remote source, merely combines
known operations and functions in their expected manner when combined.
Id. at 42, 55 (citing Ex. 1021 ¶¶ 118, 159).
We find that Petitioner has articulated reasoning supported by
sufficient rational underpinning to support the combination of Gilmore,
Dodrill, and Dhara as to these limitations. We address below Patent
Owner’s challenges to the combination of Gilmore, Dodrill, and Dhara.
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(a) Patent Owner’s contentions
Patent Owner raises several points in arguing that the ordinarily
skilled artisan would not have been motivated to combine the teachings of
Gilmore and Dodrill and/or Dhara. PO Resp. 51–59. In particular, Patent
Owner contends: (1) Gilmore and Dodrill are nonanalogous art (id. at 52–
53); (2) combining the teachings of Gilmore and Dodrill would require
fundamental changes to one or both references (id. at 54–56); (3) Gilmore
teaches away from Dodrill (id. at 56–57); (4) combining Gilmore and Dhara
would result in redundant components with no or irrelevant advantages (id.
at 57–58); and (5) Petitioner’s proposed combination is motivated by
hindsight (id. at 59). We address each of these contentions in turn below.
(i) Nonanalogous art
Patent Owner’s contention that Gilmore and Dodrill are nonanalogous
art is premised on three points: (1) Gilmore and Dodrill are not both
directed to remotely-executing voice applications because Gilmore’s
VoiceXML scripts are not applications, and Dodrill defines “XML
applications” differently than Gilmore and Petitioner do; (2) Gilmore relates
to live, interactive telephone calls to an IVR system, whereas Dodrill relates
to a user’s interaction with a web browser to retrieve voice mails over the
Internet; and (3) Gilmore’s execution environment is an application server,
but Dodrill’s execution is done on a web browser on a client device.
PO Resp. 52–53 (citing Ex. 2007 ¶¶ 126–129).
The test for determining whether a prior art reference constitutes
analogous art to the claimed invention is: (1) whether the prior art is from
the same field as the inventor’s endeavor, regardless of the problem
addressed; and (2) if the reference is not within the field of the inventor’s
endeavor, whether the reference still is reasonably pertinent to the particular
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problem with which the inventor is involved. See In re Bigio, 381 F.3d
1320, 1325 (Fed. Cir. 2004). A reference is “reasonably pertinent” to a
problem if it “logically would have commended itself to an inventor’s
attention in considering his problem.” In re Icon Health & Fitness, Inc., 496
F.3d 1374, 1379–80 (Fed. Cir. 2007) (quoting In re Clay, 966 F.2d 656, 658
(Fed. Cir. 1992)).
Patent Owner’s contentions are unavailing because, as Petitioner
correctly notes, Patent Owner has not addressed either prong of the test for
nonanalogous art. See Reply 23. In particular, Patent Owner has not
addressed whether either Gilmore or Dodrill are within the field of the
inventor’s endeavor, much less whether they are reasonably pertinent to that
field. Rather, Patent Owner compares the fields of endeavor of Gilmore and
Dodrill to each other, which misses the mark. See PO Resp. 52–53.
In any event, we agree with Petitioner that both Gilmore and Dodrill
are in the same field of endeavor as the ’032 patent, which is described as
“the field of communication systems, and more particularly to a method and
system that enables a communication device to remotely execute an
application.” Ex. 1001, 1:20–23; see Reply 23. Gilmore and Dodrill both
describe methods and systems enabling communication devices to remotely
execute applications on voice gateway 108/208 (Gilmore) or gateserver 92
(Dodrill). See Pet. 5–8, 11–13; Ex. 1005 ¶¶ 31, 33–34, 39–48; Ex. 1006,
Abstract, 5:6–24, 9:12–24, 11:19–26, 11:61–12:30, Fig. 7. Petitioner also
notes, and we agree, that Patent Owner’s argument that Dodrill’s interactive
voice applications may be voicemail applications (PO Resp. 52–53) is
irrelevant because nothing limits the ’032 patent, Gilmore, or Dodrill to
particular types of applications. See Reply 24. Rather, all three generally
disclose remotely executed interactive voice application systems, making
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Gilmore and Dodrill analogous art because they are in the same field of
endeavor of the ’032 patent.
Based on the record before us, we find that both Gilmore and Dodrill
are analogous art to the field of invention of the ’032 patent.
(ii) Fundamental changes to the prior art
Patent Owner next argues that “[a]lthough both Gilmore and Dodrill
include disclosure concerning XML, the operation of their disclosed
embodiments are fundamentally different, and combining them would
require changes to one or both references that would render them unsuitable
for their intended purpose.” PO Resp. 54.
First, Patent Owner argues that, because Gilmore’s applications
(VoiceXML scripts) are not the same thing as the applications of Dodrill
(web pages), the ordinarily skilled artisan would not have been motivated to
use Dodrill’s database with Gilmore. Id. In so arguing, Patent Owner takes
a literal approach, asserting that “[a]pplying Dodrill’s database to Gilmore
would result in Dodrill’s web pages being sent to Gilmore’s voice
application—which expects VoiceXML scripts to process,” and vice versa—
“[a]pplying Gilmore’s VoiceXML scripts to Dodrill would result in
VoiceXML scripts being sent directly to a web browser—which expects an
HTML page.” Id. at 54–55.
Patent Owner additionally argues that “Petitioner fails to explain how
the web page of Dodrill would be applied to the alleged communication
device of Gilmore, which serves the function of a telephone.” Id. at 55.
Patent Owner continues, “[t]here is simply no disclosure in Gilmore that
would support the HTML-based voice messaging web page of Dodrill
without significant redesign and experimentation, none of which is discussed
in the Petition or in Petitioner’s expert’s declaration.” Id. at 55–56.
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Patent Owner’s arguments are unavailing, as a proposed combination
of references is not limited to a bodily incorporation of the features of one
reference into another. In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The
test for obviousness is not whether the features of a secondary reference may
be bodily incorporated into the structure of the primary reference.”); In re
Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of
references does not involve an ability to combine their specific structures.”)
(emphasis omitted). Here, Patent Owner’s assertion that Gilmore’s
VoiceXML scripts and Dodrill’s web pages are not inter-operative focuses
improperly on the bodily incorporation of Gilmore’s VoiceXML scripts with
Dodrill’s web pages, rather than what these references would have taught to
one of ordinary skill in the art. Similarly, with regard to the questions Patent
Owner poses to address design changes needed to incorporate Dodrill’s
teachings with Gilmore (PO Resp. 56 (citing Ex. 2007 ¶ 135)), we find such
alleged changes are, to a large extent, irrelevant, as they are based on Patent
Owner’s flawed premise of bodily incorporation.
We find Petitioner has shown persuasively what a person of ordinary
skill in the art, who is also a person of ordinary creativity, would have
appreciated from the combined teachings of the references. See Pet. 18–21,
39–42, 53–55; see also KSR, 550 U.S. at 421. Contrary to Patent Owner’s
suggestion, the Petition does not rely solely on a “telephone call” in
Gilmore, but also relies on data network connections (e.g., VoIP, IP) in
Gilmore and Dodrill that send voice and data. Pet. 22, 23, 26, 78. Gilmore
and Dodrill both disclose remote application execution over data networks
using IP phones, PDAs, and voice-enabled computers. Ex. 1005 ¶¶ 30–31;
Ex. 1006, 8:18–24, 11:61–12:30; Pet. 39–42, 66–68, 72–74. Dodrill
discloses that user devices can receive data and voice information and
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include browsers and voice resource software to execute instructions at the
user device (e.g., VoiceXML, XML)—a “request for processing service.”
Ex. 1006, 7:60–62, 9:6–11, 11:61–12:30; Pet. 29, 47–62; see also Ex. 1009
¶¶ 20–21, 23 (confirming VoiceXML instruction execution on a user device
using a browser). Petitioner’s combination of Gilmore and Dodrill merely
moves the location of processing from one known location (remote server)
to another (user device), supporting a finding of obviousness. See Uber
Techs., Inc. v. X One, Inc., 957 F.3d 1334, 1338–42 (Fed. Cir. 2020)
(holding that moving the location of processing from a remote server to a
user device was obvious, regardless of underlying technological
compatibility); see also KSR, 550 U.S. at 417 (“[I]f a technique has been
used to improve one device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his or her
skill.”).
We also find credible and persuasive the testimony of Dr. Lipoff on
these issues. For example, we credit Dr. Lipoff’s testimony that the
ordinarily skilled artisan would have had reason to combine Dodrill’s
instruction to present voice presentation to the user as part of the request for
processing with Gilmore’s interactive voice response system because it
would “improve access to voice-browsing (which Dhara and Dodrill also
provide) and to increase the available options for XML voice applications.”
Ex. 1021 ¶ 117. We also credit Dr. Lipoff’s testimony that the ordinarily
skilled artisan would have known that “incorporating Dodrill’s alternative to
send an executable with an instruction to present audio to the user would
result in merely adding known functionality to Gilmore’s system.” Id.
¶ 118. We also credit Dr. Lipoff’s testimony that the ordinarily skilled
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artisan would also have been motivated to provide instructions that retrieve
the audio from a remote URL source (as in Dodrill) to reduce the amount of
data being sent from Gilmore’s voice gateway to the user device by allowing
the user’s device to retrieve the files directly rather than using the voice
gateway as an intermediary, and that doing so would combine known
instruction operations and functions in an expected manner to achieve the
same result in the combined operation. Id. ¶¶ 158–159.
For the foregoing reasons, we disagree with Patent Owner that
combining Dodrill’s teachings with Gilmore would have required changes to
either system that would have been beyond the skill of the ordinarily skilled
artisan.
(iii) Teaching away
Patent Owner also argues that the systems of Gilmore and Dodrill are
“fundamentally different,” basing this contention on statements in the
Gilmore provisional application (Exhibit 2028) that distinguish web
applications and voice applications. PO Resp. 56–57 (citing Ex. 2028, 6, 2).
Patent Owner then states that Gilmore’s system has a host system with an
application server, which Patent Owner states is a “fundamentally different
type of system than Dodrill.” Id. at 57 (citing Ex. 2007 ¶ 136).
A reference teaches away from a combination when, for example, a
person of ordinary skill in the art would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
that chosen by the inventor. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
“[I]n general, a reference will teach away if it suggests that the line of
development flowing from the reference’s disclosure is unlikely to be
productive of the result sought by the applicant.” Id.
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Patent Owner’s arguments are both conclusory and legally unavailing.
Even assuming that Gilmore and Dodrill disclose different types of systems,
being “different” is not teaching away, which “requires ‘clear
discouragement’ from implementing a technical feature.” Univ. of Md.
Biotechnology Inst. v. Presens Precision Sensing GmbH, 711 F. App’x 1007,
1011 (Fed. Cir. 2017) (quoting In re Ethicon, Inc., 844 F.3d 1344, 1351
(Fed. Cir. 2017)). Patent Owner does not identify anything in Gilmore or
Dodrill that discourages sending executable instructions to Gilmore’s
devices. Cf. Pet. 36–42. Patent Owner’s arguments also rely on differences
between graphical and voice interfaces (PO Resp. 56–57), which are
irrelevant because Gilmore and Dodrill describe voice interface systems, not
graphical ones, to remotely execute interactive voice applications.
See Pet. 5–8, 11–13, 36–42. Furthermore, even considering the Gilmore
provisional application, we note that it confirms the “tremendous
similarities” in the systems, explaining that “VoiceXML-based voice
technologies are designed to work in the same general model used for Web
pages” and are “interpreted in a browser (voice gateway),” like Dodrill’s
system and device browser. Ex. 2028, 8, 27.
(iv) Redundant components
With regard to combining the teachings of Gilmore and Dhara, Patent
Owner argues the ordinarily skilled artisan would not have been motivated
to “combine the features of the two systems into a single system” because
they “independently accomplish similar functions—namely, offering
IVR/VoiceXML functionality,” and “each device independently operates
effectively on its own.” PO Resp. 57–58. Patent Owner further contends
“Petitioner fails to provide sufficient evidence or technical reasoning to
establish that the system of Gilmore is inadequate for providing
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IVR/VoiceXML functionality, such that further modification of the system
to place those components on a communication device is necessary.” Id. at
58.
Petitioner counters that “the law does not require inoperability or
inadequacy for a skilled artisan to combine systems.” Reply 27 (citing KSR,
550 U.S. at 415, 418–21). We agree with Petitioner. Where, as here, the
combination merely moves the processing from one known location to
another, a finding of obviousness is supported. See Uber, 957 F.3d at 1338–
42.
Notably, in making this argument, Patent Owner does not address any
of the Petition’s specified motivations for the combination or dispute that a
skilled artisan would have expected success in the combination.
See Pet. 15–21. Rather, Patent Owner relies on Kinetic Concepts, Inc. v.
Smith & Nephew, Inc., 688 F.3d 1342, 1369 (Fed. Cir. 2012), for the
proposition that hindsight is the only reason to combine references where an
advantage provided by one reference is redundant to another reference.
See PO Resp. 57–58. Patent Owner’s argument and citation are unavailing.
The court in Kinetic Concepts found no motivation to combine in that case
because the record was “devoid of any reason” to combine the references.
688 F.3d at 1369. Here, in contrast, we find the Petition provides persuasive
reasons based on the references’ disclosures and testimony of Dr. Lipoff to
combine Gilmore and Dhara—none of which Patent Owner persuasively
rebuts. See Pet. 18–21; Ex. 1021 ¶¶ 81–86.
(v) Hindsight
Finally, invoking the testimony of Dr. Rhyne, Patent Owner asserts,
tersely, that “Petitioner’s approach to proving obviousness represents an
improper use of hindsight in a deliberate attempt to fish for disclosure in the
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prior art based on the teachings of the ’032 Patent rather than through a
POSITA’s understanding of the art.” PO Resp. 59 (citing Ex. 2007 ¶¶ 139–
142). We disagree. As discussed above, we find that Petitioner has
articulated reasoning supported by evidentiary bases as to why the ordinarily
skilled artisan would have combined the references in the manner proposed
by Petitioner. In that regard, Petitioner’s reasoning does not rely only on
knowledge gleaned from the ’032 patent’s disclosure. See In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (“Any judgment on
obviousness is in a sense necessarily a reconstruction based upon hindsight
reasoning, but so long as it takes into account only knowledge which was
within the level of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant’s disclosure,
such a reconstruction is proper.”). We find that Petitioner’s showing is not
premised on an improper hindsight reconstruction.
(6) Conclusion
Having considered the parties’ arguments and evidence, we find
Petitioner has demonstrated sufficiently that the teachings of Gilmore and
Dodrill and/or Dhara have been properly combined and an ordinarily skilled
artisan would have found it obvious to combine these teachings in the
manner proposed by Petitioner.
Therefore, after having analyzed the entirety of the record and
assigning appropriate weight to the cited supporting evidence, we determine
Petitioner has shown by a preponderance of the evidence that independent
claims 1, 9, and 16 are unpatentable over the combination of Gilmore,
Dodrill, and Dhara.
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b) Dependent Claims
Claims 2–5, 7, and 8 depend, directly or indirectly from claim 1;
claims 10–14 depend, directly or indirectly, from claim 9; and claims 17–21
depend, directly or indirectly, from claim 16. As such, they also include the
above-discussed limitations. The dependent claims specify, for example,
that the communication device includes a voice recognition application
(claim 3); that the communication/client device comprises a thin client
wireless device (claims 4, 13, and 20); and that the input device comprises a
microphone or a receiver (claims 5, 14, 21).
Petitioner persuasively maps the limitations of the dependent claims
to the cited art (and to the testimony of Dr. Lipoff in support of the
combination of references).12 See Pet. 57–80 (citing, for claim 2: Ex. 1005
¶¶ 30, 31, 35, 39, 49, 50; Ex. 1009 ¶¶ 19, 22, 34, 38; Ex. 1021 ¶¶ 167–171;
for claim 3: Ex. 1005 ¶¶ 3, 37, 50; Ex. 1009 ¶¶ 26, 28, 30, 34, 37, 38, claim
24; Ex. 1021 ¶¶ 173–177; for claims 4, 13, and 20: Ex. 1005 ¶ 30; Ex. 1006,
Abstract, 3:8–22, 5:6–24, 11:61–12:30; Ex. 1021 ¶¶ 179–185; for claims 5,
14, and 21: Ex. 1005 ¶¶ 30, 33, 44, 39, 53, Figs. 1 and 2; Ex. 1009 ¶¶ 21,
22, Fig. 2; Ex. 1021 ¶ 186; for claims 7 and 12: Ex. 1005 ¶¶ 33, 34, 38, 39,
Fig. 2; Ex. 1006, 7:16–19, 8:18–24, 9:12–24, 9:29–32, 10:22–28, 11:66–
12:30; Ex. 1009 ¶ 19; Ex. 1021 ¶¶ 187–195; for claim 8: Ex. 1005 ¶¶ 34, 51;
Ex. 1021 ¶¶ 196; for claim 17: Ex. 1005 ¶¶ 66–69, 71–72; Ex. 1006, 12:55–
60; Ex. 1021 ¶¶ 200–201; for claim 18: Ex. 1005 ¶¶ 42, 45, 65–85, 115;
Ex. 1006, Fig. 4; Ex. 1021 ¶¶ 203–210, for claims 10 and 19: Ex. 1005
¶¶ 40 45, 46, 52, 75; Ex. 1021 ¶¶ 211; and for claim 11: Ex. 1005 ¶¶ 33–34,

12 Petitioner provides citations for limitations of certain claims by reference
to earlier sections of the Petition discussing similar elements of other claims.
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39–48, 103, Fig. 9; Ex. 1006 8:18–24, 9:12–24, 11:66–12:30, Fig. 7;
Ex. 1021 ¶ 198). We find Petitioner’s arguments and evidence to be
persuasive, and we find, for the reasons expressed by Petitioner, that the
cited art teaches or suggests each of these limitations and that the ordinarily
skilled artisan would have been motivated to combine the cited references in
the manner proposed by Petitioner. We address below specifically the
challenges Patent Owner has raised as to these dependent claims.
Patent Owner addresses claims 2, 7, 8, 12, and 19 in conclusory
fashion, stating Petitioner’s showing as to those claims fails based on
arguments Patent Owner made regarding claim 1. See PO Resp. 60. Patent
Owner’s mention of claim 2 is in connection with its argument that Gilmore
does not disclose moving or execution of applications by an application
server (id. at 40)—an argument that we address supra in Section
III.D.2.a)(1). Patent Owner’s mention of claim 7 (element 7a), claim 8, and
claim 12 (element 12a) is in connection with its argument that Gilmore does
not disclose a communication device that generates packetized voice data
(PO Resp. 51)—which we address supra in Section III.D.2.a)(4). Patent
Owner’s mention of claims 10 and 19 is in connection with its argument that
Gilmore’s VoiceXML scripts are not applications (PO Resp. 38)—which we
address supra in Section III.D.2.a)(1).
Patent Owner also mentions claim 11 in conclusory fashion, stating
that “Petitioner provides no additional analysis for dependent Claim 11 other
than to say that it would be the same as the analysis for Element [1m], and
that Gilmore discloses it.” PO Resp. 60. Patent Owner then contends
“Gilmore does not disclose where a request for processing service is
received by a communication device from the application server over the
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first communication link.” Id. We address this argument supra in Section
III.D.2.a)(3).
Patent Owner then challenges Petitioner’s showing as to dependent
claims 4–6, 13–15, and 20, which recite that the communication/client
device “comprises a thin client wireless device.” PO Resp. 60. Patent
Owner argues that “[w]hile Dodrill generally discusses ‘thin clients’ it does
not disclose a ‘thin client’ wireless device. In fact, Dodrill defines thin
clients as desktop computers (which themselves have web browsers and
executable voice resources).” PO Resp. 60 (citing Ex. 1006, 3:16–17, 8:50–
58). Thus, continues Patent Owner, “while Dodrill uses some of the same
words as the challenged claims, they are given a different meaning than a
POSITA would apply at the time of and in the context of the ’032 Patent.”
Id. at 60–61 (citing Ex. 2007 ¶¶ 161, 188, 207).
Petitioner responds that Dodrill’s personal computer “is only one
‘example of a thin client,’” and states that “Dodrill also describes IP phone-
based browsers, e.g., mobile phones.” Reply 28–29 (citing Ex. 1006, 3:16–
22, 9:6–11; Pet. 65–68). Petitioner also notes that it relies on “Gilmore’s
wireless cell phones and PDAs as ‘thin client wireless device[s],’” whose
“browser and processing capabilities were well known to skilled artisans.”
Id. at 29 (citing Pet. 15–21, 64–68; Ex. 1009 ¶¶ 7, 23–24, 30; Ex. 1006,
7:60–62, 9:6–11). We find Petitioner’s arguments and evidence to be
persuasive, and agree that both Dodrill and Gilmore teach thin client
wireless devices. Patent Owner’s argument that Dodrill discloses “thin
clients” only in the context of desktop computers is contradicted by the
record and is unavailing.
We find Petitioner has demonstrated, by a preponderance of the
evidence, that the combination of Gilmore, Dodrill, and Dhara teaches or
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suggests the subject matter of dependent claims 2–5, 7, 8, 10–14, and 17–21.
In addition, for essentially the reasons we discuss above as to the
independent claims (§ III.D.2.a)(5), we determine Petitioner has made a
sufficient showing that the references are properly combined and an
ordinarily skilled artisan would have found it obvious to combine the
teachings of Gilmore, and Dodrill and/or Dhara in the manner proposed by
Petitioner. See Pet. 58–64, 66–68, 72–74, 77–79. In particular, Petitioner
presents evidence and argument as to the dependent claims that the
ordinarily skilled artisan would have been motivated to combine the
teachings of Gilmore and Dodrill and/or Dhara in the manner stated by
Petitioner to distribute processing and to increase processing efficiency, and
would have known that the modification combines known operations and
functions in the expected manner when combined. See id. We also credit,
and rely upon, the supporting testimony of Dr. Lipoff in that regard,
including Dr. Lipoff’s testimony that not only would the ordinarily skilled
artisan have been motivated to make the combination, for the reasons
articulated by Petitioner, but would have also reasonably expected to
succeed in making the combination. See Ex. 1021 ¶¶ 168–171, 175–177,
182–185, 192–195, 206–120.
3. Ground 1: Conclusion
After having analyzed the entirety of the record and assigning
appropriate weight to the cited supporting evidence, we determine Petitioner
has shown by a preponderance of the evidence that claims 1–5, 7–14, and
16–21 are unpatentable over the combination of Gilmore, Dodrill, and
Dhara.
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E. Ground 2: Asserted Obviousness over Gilmore, Dhara,
Dodrill, and Patel
Petitioner contends claims 6, 15, 22, and 23 are unpatentable under 35
U.S.C. § 103(a) over the combination of Gilmore, Dhara, Dodrill, and Patel.
Pet. 80–85.
1. Overview of Patel (Ex. 1007)
Patel is a published U.S. Patent Application entitled “System and
Method for Improved Contact Center Services to Disabled Callers”
(Ex. 1007, code (54)). Patel was filed on May 11, 2005, and published on
November 16, 2006 (id. at codes (22), (43)); accordingly, it is prior art under
35 U.S.C. §§ 102(a), (e). See Pet. 1.
Patel is directed to a system for providing automated voice response
call services. Ex. 1007 ¶¶ 2, 10. In particular, “[w]hen a person with a
disability calls into a call or contact center the caller’s disability is
identified . . . an initial menu prompt may ask the caller to make a certain
keypad, touch-tone, or voice response if they have a disability and would
like to receive special treatment.” Id. ¶ 15. Caller devices “include[] a user
interface (e.g., keypad, voice, touch-screen, etc.) that enables the caller to
input data” such as “keypad or touch-tone input.” Id. ¶ 18. Further, those
features “may be downloaded as a computer program product, wherein the
program may be transferred from a remote computer (e.g., a server) to a
requesting process (e.g., from a caller device).” Id. ¶ 26.
2. Analysis
Claims 6, 15, and 22 recite that the thin client wireless device
comprises a touchscreen. Ex. 1001, 14:19–20, 15:16–17, 16:30–31. Claim
23 depends, indirectly, from claim 22, and recites “wherein the content
comprises video.” Id. at 16:32–33.
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Petitioner persuasively maps the limitations of claims 6, 15, and 22 to
Patel, which discloses thin client wireless devices comprising a “touch-
screen” user interface, such as cell phones, PDAs, or computers. Pet. 81
(citing Ex. 1007 ¶¶ 14, 17, 18). In particular, Petitioner presents evidence
that, “[l]ike Gilmore, Dhara, and Dodrill, Patel’s communications devices
allow users to provide ‘responses to IVR prompts, password information, a
speech pattern or signature of the caller, voice commands (i.e., spoken
words), and keypad or touch-tone inputs.’” Id. (citing Ex. 1007 ¶ 18). Patel
also explains, like Gilmore and Dodrill, that the communication devices,
such as a computer, cell phone, or PDA, allow a user to interact with an IVR
system. Ex. 1007 ¶ 14.
Relying on the testimony of Dr. Lipoff, Petitioner reasons that the
ordinarily skilled artisan would have understood from reading Patel that
responding to IVR inputs using a touchscreen corresponds to responding to a
prompt from an interactive voice system, such as Gilmore or Dodrill, and
thus “would have found it obvious to incorporate Patel’s touchscreen into
the thin client communication devices” of Dodrill and Gilmore “to expand
the types of response input options and functionality.” Pet. 81 (citing
Ex. 1021 ¶ 213); see also id. at 82 (citing Ex. 1005 ¶¶ 3, 115; Ex. 1006,
12:13–19; Ex. 1021 ¶ 214). Petitioner additionally presents the testimony of
Dr. Lipoff supporting the assertion that the ordinarily skilled artisan would
have expected success in making the combination because “incorporating a
touchscreen into a PDA, cell phone, or voice-enabled computer . . . involved
only the known application of conventional technologies operating in their
ordinary and predictable manner.” Id. at 83 (citing Ex. 1021 ¶ 215). We
find Petitioner’s arguments and evidence (including the testimony of
Dr. Lipoff, which we credit) to be persuasive.
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Petitioner persuasively maps the limitation of claim 23 to the
teachings of Dodrill, which Petitioner contends “teaches retrieving content
other than .wav audio files, including ‘text, graphics, streaming video,
sound, etc.’” Id. at 83 (citing Ex. 1006, 7:44–50, 12:5–14). Relying in part
on the declaration testimony of Dr. Lipoff, which we credit, Petitioner
contends “[a] skilled artisan would have been motivated to provide for
retrieving and presenting video content to expand resources and content
available to the user of the IVR system and to provide the user with
information that cannot be presented by audio alone,” and “retrieving and
presenting video content from a remote source, as taught by Dodrill, in
Gilmore’s IVR system merely combines known operations and functions in
their expected manner when combined.” Id. at 84–85 (citing Ex. 1003
¶¶ 218–221).
Patent Owner makes no specific arguments directed toward the claims
at issue in Ground 2, but instead relies on arguments set forth for
independent claims 1, 9, and 16 in connection with Ground 1. See PO Resp.
60–61.
We find Petitioner has shown by a preponderance of the evidence that
the combination of Gilmore, Dodrill, Dhara, and Patel teaches or suggests
the subject matter of claims 6, 15, 22, and 23. See Pet. 81–85. In addition,
we determine Petitioner has made a sufficient showing that the references
are properly combined and an ordinarily skilled artisan would have found it
obvious to combine the teachings of Gilmore, Dhara, Dodrill, and Patel.
See id.
3. Conclusion
For all of the foregoing reasons, and after having analyzed the entirety
of the record and assigning appropriate weight to the cited supporting
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evidence, we determine Petitioner has shown by a preponderance of the
evidence that claims 6, 15, 22, and 23 are unpatentable over the combination
of Gilmore, Dhara, Dodrill, and Patel.
IV. CONCLUSION13

Claims 35
U.S.C. §
Reference(s)/Basis Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
1–5, 7–
14, 16–
21
103(a) Gilmore, Dhara,
Dodrill
1–5, 7–14,
16–21

6, 15, 22,
23
103(a) Gilmore, Dhara,
Dodrill, Patel
6, 15, 22, 23
Overall
Outcome
1–23

V. ORDER
Accordingly, it is
ORDERED that claims 1–23 of U.S. Patent No. 10,264,032 B1 are
held unpatentable under 35 U.S.C. § 103 as obvious; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of this decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

13 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
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FOR PETITIONER:
Erika H. Arner
Kevin D. Rodkey
John M. Mulcahy
FINNEGAN, HENDERSON, FARABOW,
GARRETT, & DUNNER LLP
erika.arner@finnegan.com
kevin.rodkey@finnegan.com
john.mulcahy@finnegan.com

FOR PATENT OWNER:

Andrew J. Wright
Joseph P. Oldaker
Matthew C. Juren
NELSON BUMGARDNER ALBRITTON P.C.
andrew@nbafirm.com
joseph@nelbum.com
matthew@nelbum.com