PORTAL COMMUNICATIONS, LLC

Patent Trials and Appeals Board

Jul 22, 2020

IPR2019-00513 (P.T.A.B. Jul. 22, 2020)

Trials@uspto.gov Paper: 34
571.272.7822 Date: July 22, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

UNIFIED PATENTS INC.,
Petitioner,

v.

PORTAL COMMUNICATIONS, LLC,
Patent Owner.
____________
__________

IPR2019-00513
Patent 7,376,645 B2
___________

Before JEFFREY S. SMITH, THOMAS L. GIANNETTI, and
KAMRAN JIVANI, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
Denying Patent Owner’s Motion to Amend
35 U.S.C. § 318(a)

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I. INTRODUCTION
A. Background
Unified Patents Inc. (“Petitioner”) filed a Petition requesting inter
partes review of claims 1–30, which are all claims, of U.S. Patent
No. 7,376,645 B2 (Ex. 1001, the “’645 patent”). Paper 2 (“Pet.”). Patent
Owner waived filing of a preliminary response. Paper 6. We instituted inter
partes review. Paper 7.
After institution, Patent Owner did not file a response to the Petition.
Rather, Patent Owner filed only a contingent motion to amend. Paper 11.
Petitioner filed an opposition thereto. Paper 19. We provided preliminary
guidance as to the contingent motion to amend. Paper 21.
After receiving our preliminary guidance, Patent Owner filed a revised
contingent motion to amend, proposing substitute claim 31. Paper 22
(“Mot.”). Petitioner opposed the revised contingent motion to amend. Paper
26 (“Opp.”). Although our revised scheduling order (Paper 23, 7) authorizes
Patent Owner to file a reply to the Petitioner’s opposition, Patent Owner did
not file a reply.
Petitioner requested an oral hearing in this proceeding. Paper 25.
Patent Owner requested permission to be excused from participating in the
oral hearing, which we granted. Paper 30. An oral hearing, in which only
Petitioner participated, was held, and a transcript was entered into the
record. Paper 32 (“Tr.”).
We have jurisdiction to conduct this inter partes review under 35
U.S.C. § 6. This Final Written Decision is entered pursuant to 35 U.S.C.
§ 318(a) and 37 C.F.R. § 42.73. For the reasons discussed below, we
determine claims 1–30 are unpatentable, and Patent Owner’s Motion to
Amend is denied with respect to proposed substitute claim 31.
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B. Related Proceedings
The parties identify the following district court proceedings
concerning the ’645 patent: Portal Communications, LLC v. Apple Inc., No.
2:18-cv-00061 (E.D. Tex.) (Dismissed); Portal Communications, LLC v.
Microsoft Corp., No. 2:18-cv-00140 (E.D. Tex.) (Dismissed); and Portal
Communications, LLC v. SoundHound Inc., No. 1:18-cv-01371 (D. Del.)
(Pending). Pet. 2; Paper 3, 2.
C. Real Party-in-Interest
The Petition identifies Unified Patents Inc. as the real party-in-
interest. Pet. 1. Patent Owner identifies Portal Communications, LLC as the
real party-in-interest. Paper 3, 2.
D. The ’645 Patent
The ’645 patent discloses a “wireless natural language query system,
architecture, and method for processing multimodally-originated queries,
including voice and proximity-based queries.” Ex. 1001, code (57). The
patent discloses that a web-enabled device, including a speech plug-in,
receives and records a voice-based query from a user. Id. at 8:25–27, 8:32–
41, 9:41–58. “The speech plug-in 18 . . . sends the recorded voice-based
query to the speech server 20, which converts the voice-based query to text
and returns the text to the Web-enabled device.” Id. at 8:41–48, 9:45–47,
9:58–67. The patent discloses that the web-enabled device receives location
or proximity information from a global positioning system (GPS) or radio
frequency identification (RFID) tag. Id. at 8:49–9:1, 10:1–3. The web-
enabled device sends the converted text and the location and proximity
information to a remote server for subsequent processing. Id. at 9:1–4,
10:3–7.
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The remote server performs natural language processing (NLP). Id. at
9:12–13, 10:20–21. “First, a semantic engine ‘interprets’ the text associated
with the user’s voice-based query and converts the text into a formal
database query.” Id. at 9:13–15, 10:21–26. “A database look-up is then
performed using the formal database query and the result is sent back to the
remote server,” then to the web-enabled device. Id. at 9:17–21, 10:26–30.
“The location or proximity information provide a context or environment
that is used to narrow and streamline the database look-up related to the
converted text associated with the user’s voice-based query.” Id. at 9:27–30,
10:33–37.
For example, each exhibit in an art museum can be equipped with an
RFID tag to provide location or proximity information to the system. Id. at
10:7–9. When a user asks “who painted this picture,” the system uses the
location or proximity information to determine which picture is proximate to
the user. Id. at 10:9–14. The system then retrieves a relevant set of
information and displays the information to the user. Id. at 10:14–18.
E. Illustrative Claim
The ’645 patent has 30 claims, all of which are challenged in the
Petition. System claim 1, architecture claim 11, and method claim 21 are the
independent claims, and contain similar limitations. Claim 1 is illustrative:
1. A natural language query system processing voice and
proximity-based queries, comprising:
a device, comprising:
a speech input module receiving a voice-based query in
natural language form from a user; and
a location/proximity module receiving location/proximity
information from a location/proximity device;
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a speech conversion module converting the voice-based query in
natural language form to text in natural language form;
a natural language processing module converting the text in
natural language form to text in searchable form using lexicons
and grammar rules to parse sentences and determine underlying
meanings of the voice-base query, wherein the underlying
meanings are further determined responsive to the
location/proximity information from the location/proximity
module;
a semantic engine module converting the text in searchable form
to a formal database query; and
a database-look-up module using the formal database query to
obtain a result related to the voice-based query in natural
language form from a database, wherein the location/proximity
module is configured to provide a context and environment to the
database-look-up module narrowing and streamlining the formal
database query associated with the voice-based query, and
wherein the narrowing and streamlining is responsive to the
location/proximity information.
F. Asserted Grounds of Unpatentability
Petitioner contends that claims 1–30 are unpatentable under 35 U.S.C.
§ 103(a) over the combination of Junqua1 and Julia2. Pet. 5, 13.

II. CLAIM CONSTRUCTION
For this inter partes review, the Board applies the same claim
construction standard as that applied in federal courts. See Changes to the
Claim Construction Standard for Interpreting Claims in Trial Proceedings
Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,340,
51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective
November 13, 2018) (now codified at 37 C.F.R. § 42.100(b)

1U.S. Patent No. 6,598,018 B1 issued July 22, 2003 (Ex. 1004).
2U.S. Patent No. 6,513,063 B1 issued Jan. 28, 2003 (Ex. 1005).
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(2019)).Petitioner submits that the term “plug-in” recited in claims 3, 11, 13,
14, 20, and 23 should be construed to mean “hardware and/or software that
provides functionality to a system.” Pet. 11–12. We do not need to construe
the term “plug-in,” or any other claim terms, to resolve a controversy. Nidec
Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017
(Fed. Cir. 2017) (Only terms that are in controversy need to be construed,
and then only to the extent necessary to resolve the controversy.).

III. ANALYSIS OF THE CHALLENGED CLAIMS
Petitioner, relying on the testimony of Mr. Bruce McNair, contends
that claims 1–30 would have been obvious over the combination of Junqua
and Julia. Pet. 13–72; Ex. 1003. As discussed above, Patent Owner did not
file a response to the Petition, but instead filed a Motion to Amend the
claims contingent on our first determining the claims to be unpatentable
under the grounds set forth in the Petition. Paper 11.
Nevertheless, Petitioner bears the burden of proving unpatentability of
the challenged claims, and the burden of persuasion never shifts to Patent
Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375,
1378 (Fed. Cir. 2015). Accordingly, we proceed by analyzing Petitioner’s
challenges as set forth in Petition and in light of the evidence presented. To
prevail in its challenges, Petitioner must demonstrate by a preponderance of
the evidence that the challenged claims are unpatentable. 35 U.S.C.
§ 316(e); 37 C.F.R. § 42.1(d).
A. Description of the Prior Art References
1. Junqua (Ex. 1004)
Junqua discloses a method for “providing a natural dialog interface for
a device installed on an automobile.” Ex. 1004, 1:26–28; see id. at 1:7–10.
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Junqua’s interface “includes a speech recognizer . . . [that] recognizes input
speech provided by a user.” Id. at 1:28–30. A “speech understanding
module determines semantic components of the input speech.” Id. at 1:30–
32. A “dialog manager determines a condition of insufficient semantic
information existing within the input speech based upon the determined
semantic components and provides information to the user about the device
in response to the input speech.” Id. at 1:34–38.
Junqua discloses, as an example, a user saying, “I am now on State
Street and I want to go to Santa Barbara Street.” Id. at 3:67–4:1. By
understanding phrases such as “now” and “I want to go,” the natural
language interface can automatically determine a start and end point for
input to a navigation system. Id. at 4:1–5. If more than two State Streets
exist in a city, the natural language interface may use GPS information to
determine on which State Street the user is traveling. Id. at 4:6–16.
2. Julia (Ex. 1005)
Julia discloses a method of navigating an electronic data source that
has an online interface, using spoken input. Ex. 1005, at [57]. The method
interprets a spoken request from a user, and constructs a navigation query
based on the interpretation. Id. The method automatically constructs an
operational navigation query, retrieves desired information from the
electronic data source, and transmits the information to the user’s client
device. Id. The navigation query can be embodied using a formal database
query language such as Standard Query Language (SQL). Id. at 8:56–58.
In some instances, details about a query may not be provided by the
user, but may be deduced through reasonable assumptions, rather than
requiring the user to provide explicit clarification. Id. at 12:37–42. For
example, if a user requests a weather report, the system may simply assume
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that the user means a weather report for his or her home area. Id. at 12:42–
48. Making such an assumption may be justified if the cost of doing so is
not significantly greater than the cost of asking the user to clarify the query,
or where user histories indicate that a particular user or group of users
typically expect local information. Id. at 12:48–53.
B. Independent Claims 1, 11, and 21
Claim 1 recites “a device, comprising: a speech input module
receiving a voice-based query in natural language form from a user; and a
location/proximity module receiving location/proximity information from a
location/proximity device.” Claims 11 and 21 recite a similar limitation.
Petitioner contends Junqua discloses the claimed “speech input module” in
describing an audio interface and digitizer that receives input speech from a
user such as natural speech. Pet. 26–28 (citing Ex. 1004, 1:7–10, 1:57–59,
3:40–56, 3:59–4:1, 6:15–23, 6:29–32, Fig. 3a). Petitioner contends Junqua
discloses the claimed “location/proximity module” in describing a context
module that receives navigation information from a global positioning
system (GPS) receiver. Id. at 27–28 (citing Ex. 1004, 2:26–37, 4:14–16,
7:31–34).
Junqua discloses that input speech from a user, such as casual, dialog
style, natural speech, is supplied through an audio interface and digitizer to a
speech recognizer. Ex.1004, 1:57–59, 6:17–19. Junqua discloses that a
context module supplies navigation related context information from a GPS
receiver to a natural language parser. Id. at 2:26–37. We determine for the
reasons given that Junqua describes this limitation.
Claim 1 recites “a speech conversion module converting the voice-
based query in natural language form to text in natural language form.”
Claims 11 and 21 recite a similar limitation. Petitioner contends Junqua
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discloses this limitation in describing a speech recognizer that receives a
digitized form of the user’s speech and generates an output of natural
language text. Pet. 28–30 (citing Ex. 1004, 1:28–30, 1:57–61, 6:3–12, 6:32–
33, 7:10–11, Fig. 3a). Junqua discloses a speech recognizer that recognizes
input speech provided by a user and generates natural language text.
Ex. 1004, 1:28–30, 6:5–8. We determine for the reasons given that Junqua
describes this limitation.
Claim 1 recites “a natural language processing module converting the
text in natural language form to text in searchable form using lexicons and
grammar rules to parse sentences and determine underlying meanings of the
voice-base query.” Claims 11 and 21 recite a similar limitation. Petitioner
contends Junqua discloses this limitation in describing a natural language
parser that uses recognized key words and a set of grammars to extract
semantically meaningful topics from natural language text. Pet. 30–34
(citing Ex. 1004, 1:59–2:3, 3:65–4:5, 4:46–54, 6:3–23, 6:30–42, 7:12–15,
Fig. 3a). Junqua discloses a natural language parser that works in
conjunction with a set of grammars that define semantics of what the natural
language processor can understand, to recognize key words and phrases
from the text generated by the speech recognizer, and to use the recognized
key words and phrases to fill slots in predefined templates that represent
different tasks. Ex. 1004, 1:59–2:12, 6:3–8. We determine for the reasons
given that Junqua describes this limitation.
Claim 1 recites “wherein the underlying meanings are further
determined responsive to the location/proximity information from the
location/proximity module.” Claims 11 and 21 recite a similar limitation.
Petitioner contends Junqua discloses this limitation in describing a dialog
manager that uses GPS information from a context module to determine the
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underlying meaning of an ambiguous or illogical location in a voice query.
Pet. 34–37 (citing Ex. 1004, 2:20–37, 3:18–4:16, 5:49–6:2, 6:43–59,
Fig. 3b). Junqua discloses that “a user may input ‘I am now on State Street
and I want to go to Santa Barbara Street.’” Ex. 1004, 3:67–4:1. Junqua
discloses that if more than two State Streets exist in the city, a context
module may provide GPS information to determine on which of the two
State Streets the user is traveling. Id. at 4:14–16. Junqua also discloses that
if the user’s start location is not logical, a dialog manager may use GPS
positioning information provided by a context module to select a more likely
start location. Id. at 5:58–67. We determine for the reasons given that
Junqua describes this limitation.
Claim 1 recites “a semantic engine module converting the text in
searchable form to a formal database query.” Claims 11 and 21 recite a
similar limitation. Petitioner contends this limitation is taught by the
combination of Junqua and Julia. Pet. 37–39.
Petitioner contends Junqua teaches “a semantic engine module
converting the text in searchable form to a . . . database query” in describing
a dialog manager constructing a database search from the template filled
with key words and phrases output from the natural language parser. Id. at
37–38 (citing Ex. 1004, 1:65–2:3, 3:8–11, 3:21–27, 5:38–48, 6:43–48, Fig.
3b). Junqua teaches that “dialog manager 34 utilizes the output of natural
language parser 14 to capture the user’s requests so that command requests
can be properly generated.” Ex. 1004, 3:21–27, 6:43–48, Fig. 3b. Figure 3b
of Junqua shows that the step of generating commands includes constructing
a database search. Id. at Fig. 3b, block 96. For the reasons given, we are
persuaded that Junqua teaches “a semantic engine module converting the
text in searchable form to a . . . database query.”
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Petitioner contends that Julia teaches the database query is “a formal
database query” in describing a server database for natural language query
systems which accepts formal database queries using structured query
language (SQL). Pet. 39 (citing Ex. 1005, 8:45–47, 8:56–9:18, Figs. 1a, 2).
Julia teaches query construction logic to construct an SQL query that reflects
the user’s request, as interpreted by a speech recognition engine and a
natural language parser. Ex. 1005, 8:45–47, 9:8–16. Julia teaches that SQL
is a formal database query language that is a “standard interactive and
programming language for getting information from and updating a
database,” and is “both an ANSI and an ISO standard.” Id. at 8:56–64. Julia
teaches that “[p]ractitioners of ordinary skill in the art will be thoroughly
familiar with the notion of database navigation through structured query, and
will be readily able to . . . utilize the existing data structures and navigational
mechanisms for a given database, or to create such structures and
mechanisms where desired.” Id. at 9:2–7. We determine for the reasons
given that Julia teaches “converting the text . . . to a formal database query.”
Petitioner, relying on testimony of Mr. McNair, contends that a person
of ordinary skill in the art would have been motivated to implement the
database of Junqua using the well-known query language of SQL as taught
by Julia, for the benefit of providing “a standard interactive and
programming language for getting information from and updating a
database” as taught by Julia. Pet. 20 (citing Ex. 1005, 8:56–64, 9:2–18;
Ex. 1003 ¶¶ 28, 74). We determine for the reasons given that converting the
text in searchable form to a database query as taught by Junqua, where the
database query is written in the well-known query language of SQL as
taught by Julia, does no more than yield the predictable result of getting
information from a database using the standard programming language of
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SQL as taught by Julia. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416
(2007) (“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”).
Claim 1 recites “a database-look-up module using the formal database
query to obtain a result related to the voice-based query in natural language
form from a database.” Claims 11 and 21 recite a similar limitation.
Petitioner contends this limitation is taught by the combination of Junqua
and Julia. Pet. 39–42. Petitioner contends that Junqua teaches that a dialog
manager constructs a database search related to the voice-based query, and a
computer response module queries databases, obtains results, and delivers
results to the user. Id. (citing Ex. 1004, 5:38–44 (“[D]ialog manager 34
instructs computer response module 68 to perform a search on remote
database 74 in order to provide a user 8 with timely traffic information.”);
Ex. 1004, 3:8–11, 3:21–27, 3:59–66, 5:20–27, 6:43–48, Fig. 3b) (emphasis
omitted). Petitioner contends that Julia teaches that the query is SQL, which
is a formal database query. Pet. 42 (citing Ex. 1005, 8:56–9:18). Petitioner,
relying on testimony of Mr. McNair, contends that implementing the
database of Junqua in SQL as taught by Julia does no more than yield the
predictable result of getting information from the database using the
standard programming language of SQL as taught by Julia. See id. (citing
Ex. 1003 ¶ 28). For the reasons given, we determine that Junqua and Julia
teach this limitation.
Claim 1 recites “wherein the location/proximity module is configured
to provide a context and environment to the database-look-up module
narrowing and streamlining the formal database query associated with the
voice-based query, and wherein the narrowing and streamlining is
responsive to the location/proximity information.” Claims 11 and 21 recite a
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similar limitation. Petitioner contends this limitation is taught by the
combination of Junqua and Julia. Pet. 42–47.
Petitioner contends Junqua teaches a context module that provides
proximity information used to resolve an ambiguous or illogical voice
command. Id. at 42–45 (citing Ex. 1004, 3:59–4:16, 5:49–6:2, Fig. 3b).
Junqua teaches that a context module provides GPS information to resolve
an ambiguous input from a user, such as “I am on State Street” where a city
has more than two State Streets, by determining on which State Street the
user is traveling. Ex. 1004, 3:59–4:16. Junqua also teaches that, when input
from a user is illogical, the context module uses GPS information to select a
more likely alternative. Id. at 5:58–67. For the reasons given, we determine
that Junqua teaches this limitation.
Petitioner contends that Julia teaches query construction logic that
makes reasonable assumptions for queries, such as assuming that a user’s
request for a weather forecast is a request for the weather forecast in the
user’s home area. Pet. 45 (citing Ex. 1005, 12:37–53). Julia teaches that
when a user requests information, some details not provided in the request
may be deduced by query construction logic or query refinement logic
through reasonable assumptions, such as assuming the user expects local
information when asking for a weather forecast. Ex. 1005, 12:37–46. For
the reasons given, we determine that Julia teaches this limitation.
Petitioner, relying on testimony of Mr. McNair, contends that a person
of ordinary skill in the art would have avoided a location-based ambiguity,
such as a query that includes State Street in a city with more than two State
Streets as taught by Junqua, by performing the query on information local to
the user as taught by Julia, to achieve the predictable results of avoiding
unnecessary inquiries to the user and increasing user convenience. Pet. 18–
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19 (citing Ex. 1003 ¶ 71). Julia teaches that assuming the user wants local
information is justified, where the cost of doing so is not significantly
greater than the cost of asking the user to clarify the query, or where user
histories indicate that a particular user or group of users typically expect
local information. Ex. 1005, 12:46–53. For the reasons given, we determine
that resolving the location-based ambiguity of Junqua using local
information as taught by Julia does no more than yield the predictable results
of avoiding the cost of asking the user to clarify the query, and meeting the
user’s typical expectation for local information, as taught by Julia.
We determine that for the foregoing reasons, the Petition has
demonstrated, by a preponderance of the evidence, that claims 1, 11, and 21
would have been obvious over the combination of Junqua and Julia.
C. Dependent Claims 2–10, 12–20, and 22–30
Petitioner has set forth contentions regarding the remaining claims
(Pet. 46–55, 61–65, 68–72). For the reasons discussed below, we determine
that the Petition has demonstrated, by a preponderance of the evidence, that
claims 2–10, 12–20, and 22–30 would have been obvious over the
combination of Junqua and Julia.
Claim 2 recites “the device comprises a device selected from the
group consisting of a Web-enabled portable personal computer, a Web-
enabled laptop computer, a Web-enabled personal digital assistant, and a
Web-enabled phone.” Claims 12 and 22 recite a similar limitation.
Petitioner contends this limitation is taught by the combination of Junqua
and Julia. Pet. 46–47 (citing Ex. 1004, Abstract, 1:1–11, 1:26–28, 2:54–61;
Ex. 1005, 5:47–63, 12:1–7). Junqua discloses a natural language interface
including a mapping module updater that “receives update information over
. . . the Internet.” Ex. 1004, 2:56–59. Julia discloses a mobile client
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embodiment implemented as a cellular telephone or a wireless personal
digital assistant. Ex. 1005, 5:45, 54–56. For the reasons given, we
determine that the combination of Junqua and Julia teaches this limitation,
and that claims 2, 12, and 22 are unpatentable.
Claim 3 recites “the speech input module comprises a speech plug-in
and a microphone.” Claims 13 and 23 recite a similar limitation. Petitioner
contends this limitation is taught by the combination of Junqua and Julia.
Pet. 47 (citing Ex. 1004, 1:57–59; Ex. 1005, 3:40–56, 17:27–28; Ex. 1003
¶¶ 39, 40, 46). Junqua discloses “[i]nput speech from the user 8 is supplied
through an audio interface and digitizer.” Ex. 1004, 1:57–59. Julia
discloses that “voice input data is captured by a voice input device 102, such
as a microphone.” Ex. 1005, 3:40–56. For the reasons given, we determine
that the combination of Junqua and Julia teaches this limitation, and that
claims 3, 13, and 23 are unpatentable.
Claim 4 recites “the location/proximity module comprises a
location/proximity module selected from the group consisting of a radio
frequency identification reader and a global positioning system.” Claims 14
and 24 recite a similar limitation. Petitioner contends this limitation is
taught by Junqua. Pet. 48 (citing Ex. 1004, 2:35–37, 4:14–15). Junqua
discloses a context module that provides navigation information from a
global positioning system (GPS) receiver. Ex. 1004, 2:35–37. For the
reasons given, we determine that Junqua teaches this limitation, and that
claims 4, 14, and 24 are unpatentable.
Claim 5 recites “the location/proximity device comprises a
location/proximity device selected from the group consisting of a radio
frequency identification tag and a satellite.” Claims 15 and 25 recite a
similar limitation. Petitioner, relying on the testimony of Mr. McNair,
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contends this limitation is taught by Junqua’s disclosure of providing GPS
information, because GPS is based on a system of satellites continuously
broadcasting time and position information. Pet. 48 (citing Ex. 1004, 2:35–
37, 4:14–15; Ex. 1003 ¶¶ 42–44). Mr. McNair testifies that the “GPS
system includes a number of satellites that broadcast signals . . . to the
receiver. Four satellites are sufficient to make a . . . location measurement.”
Ex. 1003 ¶ 42. For the reasons given, we determine that Junqua teaches this
limitation, and that claims 5, 15, and 25 are unpatentable.
Claim 6 recites “the speech conversion module resides in a speech
server located remotely from the device.” Claims 16 and 26 recite a similar
limitation. Petitioner contends this limitation is taught by the combination
of Junqua and Julia. Pet. 49–50 (citing Ex. 1004, Abstract, 1:1–11, 2:54–65,
5:38–48, Fig. 1; Ex. 1005, 3:61–4:4, 5:35–39, 5:58–63). Junqua discloses
searching a remote database to provide the user with timely traffic
information. Ex. 1004, 5:38–41. Julia discloses that at “remote server 108,
the voice data is processed by request processing logic 300 in order to
understand the user’s request.” Ex. 1005, 3:61–63. For the reasons given,
we determine that the combination of Junqua and Julia teaches this
limitation, and that claims 6, 16, and 26 are unpatentable.
Claim 7 recites “the natural language processing module resides in a
server located remotely from the device.” Claims 17 and 27 recite a similar
limitation. Petitioner contends the combination of Junqua and Julia teaches
this limitation. Pet. 50–51 (citing Ex. 1004, Abstract, 1:1–11, 2:54–61,
5:38–48, Fig. 1; Ex. 1004, 3:61–4:4, 5:35–39, 5:58–63). Julia discloses that
at “remote server 108, the voice data is processed by request processing
logic 300 in order to understand the user’s request,” where “request
processing logic 300 comprises . . . speech recognition engine 310, natural
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language (NL) parser 320, query construction logic 330, and query
refinement logic 340.” Ex. 1005, 3:61–4:4. For the reasons given, we
determine that the combination of Junqua and Julia teaches this limitation,
and that claims 7, 17, and 27 are unpatentable.
Claim 8 recites “the semantic engine module resides in a database
server located remotely from the device.” Claims 18 and 28 recite a similar
limitation. Petitioner contends the combination of Junqua and Julia teaches
this limitation. Pet. 51–52 (citing Ex. 1004, Abstract, 1:1–11, 2:54–65,
5:38–48, Fig. 1; Ex. 1005, 3:61–4:9, 5:35–39, 5:58–63). Julia discloses that
at “remote server 108, the voice data is processed by request processing
logic 300 in order to understand the user’s request,” where “request
processing logic 300 comprises . . . speech recognition engine 310, natural
language (NL) parser 320, query construction logic 330, and query
refinement logic 340.” Ex. 1005, 3:61–4:4. For the reasons given, we
determine that the combination of Junqua and Julia teaches this limitation,
and that claims 8, 18, and 28 are unpatentable.
Claim 9 recites “the database look-up module resides in a database
server located remotely from the device.” Claims 19 and 29 recite a similar
limitation. Petitioner contends the combination of Junqua and Julia teaches
this limitation. Pet. 52–53 (citing Ex. 1004, Abstract, 1:1–11, 2:54–65,
5:38–48, Fig. 1; Ex. 1004, 3:61–64, 4:4–17, 5:35–39, 5:58–63). Julia
discloses that at “remote server 108, the voice data is processed by request
processing logic 300 in order to understand the user’s request and construct
an appropriate query or request for navigation of remote data source 110.”
Ex. 1005, 3:61–64. Julia discloses that “[d]ata source 110 . . . preferably
resides on a central server,” and that the “contents of data source 110 are
navigated --- i.e., the contents are accessed and searched, for retrieval of
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particular information desired by the user.” Ex. 1005, 4:4–17. For the
reasons given, we determine that the combination of Junqua and Julia
teaches this limitation, and that claims 9, 19, and 29 are unpatentable.
Claim 10 recites “a speech output module for delivering the result 40
related to the voice-based query in natural language form to the user.”
Claims 20 and 30 recite a similar limitation. Petitioner contends this
limitation is taught by Junqua. Pet. 53–55 (citing Ex. 1004, 3:34–38, 5:20–
31, Figs. 1, 2). Junqua discloses computer response module 68 that “uses
the semantics . . . to generate a sentence based on the semantic concept,” and
“speaks the directions to the user using speech synthesis.” (Ex. 1004, 5:26–
31). For the reasons given, we determine that Junqua teaches this limitation,
and that claims 10, 20, and 30 are unpatentable.

IV. ANALYSIS OF THE MOTION TO AMEND
In Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017), the
Federal Circuit addressed the burden of persuasion that the Board applies
when considering the patentability of substitute claims presented in a motion
to amend filed under 35 U.S.C. § 316(d) in an inter partes review. The lead
opinion concludes with the following:
The only legal conclusions that support and define the judgment
of the court are: (1) the PTO has not adopted a rule placing the
burden of persuasion with respect to the patentability of amended
claims on the patent owner that is entitled to deference; and (2)
in the absence of anything that might be entitled to deference, the
PTO may not place that burden on the patentee.
Aqua Prods., 872 F.3d at 1327.
In accordance with Aqua Products, Patent Owner does not bear the
burden of persuasion to demonstrate the patentability of substitute claims
presented in a motion to amend. Rather, the burden of persuasion ordinarily
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will lie with Petitioner to show that any proposed substitute claims are
unpatentable by a preponderance of the evidence. The Board itself also may
justify any finding of unpatentability by reference to evidence of record in
the proceeding under limited circumstances, for example, when a Petitioner
ceases to participate. Hunting Titan, Inc. v. DyanEnergetics Europe GmbH,
IPR2018-00600, Paper 67, 25–26 (PTAB July 6, 2020) (precedential)
(explaining that the Board may raise grounds of unpatentability not raised,
or insufficiently developed by, a petitioner “for example, where the
petitioner ceased to participate in the proceeding”). Ultimately, the Board
determines whether substitute claims are unpatentable by a preponderance of
the evidence based on the entirety of the record, including any opposition
made by the Petitioner. See Lectrosonics, Inc. v. Zaxcom, Inc., Case
IPR2018-01129, -01130, Paper 15 at 4 (PTAB Feb. 25, 2019) (precedential).
Patent Owner proposes substitute claim 31 to replace claim 24. Mot.
2. Substitute claim 31 is reproduced below.3
31. The natural language query method of claim 21, wherein the
location/proximity module comprises a location/proximity
module selected from the group consisting consists of a radio
frequency identification reader and a global positioning system,
the location/proximity device consists of an art museum exhibit
equipped with a radio frequency identification tag, and the
method includes the radio frequency identification reader
receiving location/proximity information associated with the art
museum exhibit from the radio frequency identification tag
during a user interaction with the device that takes place through
a speech-enabled Web page resident on a remote server running

3 Additions to original claim 24 are underlined and omitted words are
stricken through. Patent Owner’s revised contingent motion to amend
supersedes its earlier motion to amend and that continued reference to
“substitute claims 31–33” in the revised motion is considered to be
inadvertent error. See Paper 22, 13.
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one or more active server pages (ASPs) and displayed on a
display of the device when a user presses a speak button of the
device and asks, “who painted this picture?”.
Petitioner contends that claim 31 would have been obvious over the
combination of Junqua, Julia, Amitay, and the knowledge of a person of
ordinary skill in the art. Opp. 8–11. Petitioner also contends that claim 31
would have been obvious over the combination of Julia, Amitay, and the
knowledge of a person of ordinary skill in the art. Opp. 18–24.4 Patent
Owner contends that claim 31 is patentable over the combination of Junqua,
Julia, and Amitay. Mot. 18–19.5
A. Amitay (Ex. 1018)
Amitay discloses:
A dynamic index may list physical items in the changing vicinity
of a user or a generator of the index. The vicinity may be within
the same space as the user or the generator, such as a store, a
library, a shelf, an aisle, within a given radius, a street, a city, a
campus, a building, an area and a park. The index may store
information about the physical items near the user or generator,
such as content found on tags associated with the physical items.
The content might be a description of the physical items and their
locations.
Ex. 1018, Abstract. Amitay discloses that the items can have RFID tags that
can be read by an RFID reader. Id. at 4:14–15. Amitay discloses that the
reader can read the tags when a person with the reader is in proximity of the

4 Petitioner presents additional reasons that claim 31 is unpatentable. Opp.
5–7. We do not reach these additional reasons, because we determine that
claim 31 is unpatentable over the prior art as obvious.
5 Because Petitioner has shown that proposed substitute claim 31 is
unpatentable over the prior art as obvious, we do not address the statutory
and regulatory requirements associated with filing a motion to amend under
35 U.S.C. § 316(d)(3) and 37 C.F.R. § 42.121(a)(2)(ii).
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items, and generate the index of items. Id. at 2:49–60. Amitay discloses
that the index can provide information about the items. Id. at 2:1–6, 3:32–
40, 3:61–4:6.
B. Obviousness over Junqua, Julia, Amitay, and Knowledge of a Person of
Ordinary Skill in the Art
Claim 31 depends from claim 21. The Petition has demonstrated, by a
preponderance of the evidence, that claim 21 would have been obvious over
the combination of Junqua and Julia, as discussed in our analysis above.
Claim 31 recites “wherein the location/proximity module consists of a
radio frequency identification reader.” Petitioner, relying on testimony of
Mr. McNair, contends Amitay teaches this limitation. Opp. 12 (citing
Ex. 1018, 6:17–19, 6:37–41; Ex. 1022 ¶ 58). Amitay discloses a location
sensor which may be an RF reader. Ex. 1018, 6:17–19, 6:37–41. For the
reasons given, we determine that Amitay teaches this limitation.
Claim 31 recites “the location/proximity device consists of an art
museum exhibit equipped with a radio frequency identification tag.”
Petitioner contends that Amitay combined with the knowledge of a person
of ordinary skill teaches this limitation. Opp. 12–14 (citing Ex. 1018, 6:27–
32, 7:32–33; Ex. 1027; Ex. 1022 ¶¶ 34, 58). Patent Owner contends that
Amitay does not teach tagging art exhibits with RFID tags. Mot. 18.
We disagree with Patent Owner’s contention that Amitay alone does
not teach this limitation, because, as Petitioner demonstrates, Amitay
combined with the knowledge of a person of ordinary skill teaches this
limitation. Amitay discloses tagging an item with an RFID tag. Ex. 1018,
7:31–33. Mr. McNair testifies that tagging an art museum exhibit with an
RFID tag was within the knowledge of a person of ordinary skill in the art.
Ex. 1022 ¶ 34 (citing Ex. 1026). Mr. McNair also testifies that using an
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RFID system as a virtual tour guide to provide information to museum
guests about art museum exhibits was known in the art. Id. (citing Ex. 1027,
78–79, 84–87). Mr. McNair testifies that using the device of Junqua, Julia,
and Amitay to provide information about art exhibits to museum guests
yields the known benefit of reducing museum costs by providing virtual
docents instead of human ones. Id. (citing Ex. 1027, 86). We rely on the
testimony and supporting evidence of Mr. McNair to determine that Amitay
combined with the knowledge of a person of ordinary skill teaches this
limitation.
Claim 31 recites “the method includes the radio frequency
identification reader receiving location/proximity information associated
with the art museum exhibit from the radio frequency identification tag
during a user interaction with the device.” Petitioner contends that this
limitation is taught by Amitay combined with the knowledge of a person of
ordinary skill. Opp. 13–14 (citing Ex. 1018, 2:52–56, 6:17–19, 6:21–46;
Ex. 1022 ¶¶ 38–43). Patent Owner contends that Amitay does not teach that
an RFID reader would receive location/proximity information associated
with an art exhibit. Mot. 18–19.
We disagree with Patent Owner’s contention that Amitay alone does
not teach this limitation, because, as Petitioner demonstrates, Amitay
combined with the knowledge of a person of ordinary skill teaches this
limitation. Amitay discloses that the RFID tags transmit signals continually
or in the presence of a querying signal. Ex. 1018, 2:52–56. Amitay further
discloses that when a person with a generator, such as a location sensor,
comes in the proximity of items having RFID tags, the generator transmits a
querying signal and decodes the received signals. Id. at 2:56–61, 6:1–2, 17–
20; see id. at 6:21–46; Ex. 1003 ¶¶ 38–43. Amitay further discloses that the
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received signals may contain the location of an item. Ex. 1018, 3:7–9, 3:15–
24, 4:17–21; 5:23–28, 6:36–41, 7:11–20; Ex. 1022 ¶¶ 40–41. Mr. McNair
testifies that associating art museum exhibits with RFID tags to locate art
museum exhibits was known in the art. Ex. 1022 ¶¶ 34, 41 (citing Ex. 1026;
Ex. 1027). Mr. McNair also testifies that an RFID reader reading a tag in an
art museum during a user interaction with an art exhibit was known in the
art. Ex. 1022 ¶ 43 (citing Ex. 1027, 85–86 (The user presses a smart card
with an RFID tag to the RFID reader while at a museum exhibit to obtain
further information about the exhibit)). We rely on the testimony and
supporting evidence of Mr. McNair to determine that Amitay combined with
the knowledge of a person of ordinary skill teaches this limitation.
Claim 31 recites the user interaction “takes place through a speech-
enabled Web page resident on a remote server running one or more active
server pages (ASPs).” Petitioner contends that Julia combined with the
knowledge of a person of ordinary skill teaches this limitation. Opp. 14–16
(citing Ex. 1005, 3:61–4:4, 5:35–39, 5:58–63; Ex. 1022 ¶¶ 47–55, 58). Mr.
McNair testifies that Julia discloses a remote server with voice processing
logic and a database look-up module for navigating remote “Internet/web
sites.” Ex. 1022 ¶ 49 (citing Ex. 1005, 3:61–4:17, 5:35–39, 5:59–63).
Mr. McNair testifies that active server page (ASP) is the name for
Microsoft’s server-side script engine, and that the benefits and results of
using ASPs, such as avoiding difficulties of designing numerous static web
pages, were well-known. Id. at ¶¶ 50–51 (citing Ex. 1028, 35). Mr. McNair
testifies that although Julia does not explicitly refer to ASPs by name, Julia
suggests their use by disclosing the use of Microsoft technology and the
details of how to scrape the Internet to obtain search results that could be
used to generate and display results to a user. Id. at ¶ 52 (citing Ex. 1005,
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4:4–5, 6:53–58, 8:66, 9:19–34, 11:46–49). We rely on the testimony and
supporting evidence of Mr. McNair to determine that Julia combined with
the knowledge of a person of ordinary skill teach this limitation.
Claim 31 recites “displayed on a display of the device.” Petitioner
contends Julia teaches this limitation. Opp. 16 (citing Ex. 1005, 11:46–49).
Julia discloses “query refinement logic 340 might preferably generate a
display for client display device 112 showing the (relatively short) list of
film titles that satisfy the user’s stated constraints.” Ex. 1005, 11:46–49.
We determine for the reasons given that Julia teaches this limitation.
Claim 31 recites “when a user presses a speak button of the device
and asks, ‘who painted this picture?’”. Petitioner contends that Julia
combined with the knowledge of a person of ordinary skill teaches this
limitation. Opp. 16–18 (citing Ex. 1005, 3:41–45, 10:10–13; Ex. 1026;
Ex. 1027; Ex. 1022 ¶¶ 8, 22–23, 33–34, 56–58). Patent Owner contends that
Amitay does not teach an RFID reader receiving location/proximity
information from a tag associated with an exhibit when a user asks “who
painted this picture.” Mot. 18–19.
We disagree with Patent Owner’s contention that Amitay alone does
not teach this limitation, because, as Petitioner demonstrates, Julia combined
with the knowledge of a person of ordinary skill teaches this limitation.
Julia discloses that “voice input device 102 includes a button or the like that
can be pressed or held down to activate a listening mode.” Ex. 1005, 3:41–
45. Julia discloses that users “can directly speak the natural language
request” such as “Show me the movie Unforgiven.” Id. at 10:10–13.
Mr. McNair testifies that a person of ordinary skill in the art, in order to use
the system in a museum, would have configured the system to address the
specific question “who painted this picture,” because the person of ordinary
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skill would have known that a visitor to an art museum who wants to obtain
information about an exhibit would ask about the name of the artist.
Ex. 1022 ¶ 57 (citing Ex. 1024; Ex. 1005, 11:25–45). We rely on the
testimony of Mr. McNair to determine that Julia combined with the
knowledge of a person of ordinary skill teaches this limitation.
We determine that Petitioner has provided a sufficient rationale for
combining the teachings of Junqua, Julia, Amitay, and the knowledge of a
person of ordinary skill. Opp. 9–11. As discussed in our analysis of claim
21 above, we determine that Petitioner has provided a sufficient rationale for
combining the teachings of Junqua and Julia. Petitioner contends that a
person of ordinary skill in the art would have modified the combined
teachings of Junqua and Julia to replace the GPS of Junqua with the RFID
system of Amitay, because the RFID system would have provided the
benefit of reliable indoor use without the need for a line of site to a satellite,
and would have been less expensive than a GPS receiver. Opp. 9 (citing
Ex. 1020 ¶ 3; Ex. 1022 ¶¶ 37, 45–47). Petitioner contends that using such a
combined system in a museum environment is the simple substitution of the
known city environment with points of interest for the known museum
environment with art exhibits of interest and yields the predictable result of
using a verbal query to obtain information about an item of interest. Opp. 10
(citing Ex. 1022 ¶¶ 33–34, 42). Mr. McNair testifies that using the device of
Junqua, Julia, and Amitay to provide information about art exhibits to
museum guests yields the known benefit of reducing museum costs by
providing virtual docents instead of human ones. Ex. 1022 ¶ 34 (citing
Ex. 1027, 86); see Opp. 11.
For the foregoing reasons, we determine that Petitioner has
demonstrated, by a preponderance of the evidence, that substitute claim 31
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would have been obvious over the combination of Junqua, Julia, Amitay,
and the knowledge of a person of ordinary skill.
C. Obviousness over Julia, Amitay, and Knowledge of a Person of Ordinary
Skill in the Art
In the Opposition, Petitioner contends that independent claim 21 and
dependent claim 31 would have been obvious over Julia, Amitay, and the
knowledge of a person of ordinary skill in the art. Opp. 18. Petitioner
explains how the combination of Julia and Amitay renders claim 21 obvious.
Opp. 18–24. Petitioner then contends that the combination of Julia, Amitay,
and the knowledge of a person of ordinary skill in the art renders claim 31
obvious for the reasons given in the previous ground of unpatentability for
claim 31. Opp. 24.
Claim 21 recites “providing a device comprising: a speech input
module that receives a voice-based query in natural form from a user and a
location/proximity module receiving location/proximity information from a
location/proximity device.” Petitioner contends this limitation is taught by
the combination of Julia and Amitay. Opp. 21 (citing Ex. 1005, 3:39–56,
5:47–63; Ex. 1022 ¶¶ 64–65).
Julia discloses “mobile information appliance 202 receives spoken
natural language input requests from the user in the form of voice data.”
Ex. 1005, 5:58–60. We determine for the reasons given that Julia teaches “a
speech input module that receives a voice-based query in natural form from
a user.”
Amitay discloses “receiver 42 . . . may receive and decode signals
from a tag 24,” where the “signals may contain information describing the
item . . . and is location within its space.” Ex. 1018, 4:13–19; see id. at 4:7–
14, 6:17–19, 37–41. For the reasons given, we determine that Amitay
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teaches “a location/proximity module receiving location/proximity
information from a location/proximity device.”
Petitioner contends that a person of ordinary skill in the art would
have incorporated the location/proximity module of Amitay in the device of
Julia for the benefit of using location to resolve ambiguities in a query from
a user. Opp. 18–19 (citing Ex. 1005, 12:1–46; Ex. 1022 ¶¶ 61–62).
Mr. McNair testifies that incorporating an RFID reader that receives
location/proximity information from RFID tags as taught by Amitay into the
voice input device that receives a voice-based query as taught by Julia yields
the benefit of providing context to the query by adding the location
information to the query. Ex. 1022 ¶¶ 61–62 (citing Ex. 1005, 12:1–19, 37–
61; Ex. 1018, 6:42–46).
Amitay discloses a search engine that adds location information to a
query before performing a search. Ex. 1018, 6:42–46. Julia discloses that
when a user asks a query about the weather, query construction logic and
query refinement logic resolve the ambiguity by assuming the user is asking
about the weather in his or her area. Ex. 1005, 12:1–46. We agree with
Petitioner and Mr. McNair, that adding location information to a query as
taught by Amitay when constructing a query as taught by Julia yields the
predictable benefit of resolving an ambiguity in the query by assuming the
user is asking about information in his or her area as taught by Julia.
Claim 21 recites “converting the voice-based query in natural
language form to text in natural language form using a speech conversion
module.” Petitioner contends Julia teaches this limitation. Opp. 22 (citing
Ex. 1005, 7:12–24; Ex. 1022 ¶ 64). Julia discloses “a speech recognition
engine processes acoustic voice data and attempts to generate a text stream
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of recognized words.” Ex. 1005, 7:22–24. We determine for the reasons
given that Julia teaches this limitation.
Claim 21 recites “converting the text in natural language form to text
in searchable form using a natural language processing module configured to
use lexicons and grammar rules to parse sentences and determine underlying
meanings of the voice-based query.” Petitioner contends this limitation is
taught by Julia. Opp. 22 (citing Ex. 1005, 7:25–28, 7:47–8:24; Ex. 1022
¶¶ 64, 66). Julia discloses that “the speech recognition engine is provided
with a vocabulary lexicon of likely words or phrases that the recognition
engine can match against its analysis of acoustical signals” and that the
“natural language interpreter (or parser) 320 linguistically parses and
interprets the textual output of the speech recognition engine . . . to
determine both the meaning of spoken words (semantic processing) as well
as the grammar of the statement (syntactic processing).” Ex. 1005, 7:25–58,
7:47–53; Ex. 1022 ¶ 66. For the reasons given, we determine Julia teaches
this limitation.
Claim 21 recites “wherein the underlying meanings are further
determined responsive to the location/proximity information from the
location/proximity module.” Petitioner contends this limitation is taught by
the combination of Julia and Amitay. Opp. 18 (citing Ex. 1005, 12:1–46;
Ex. 1018, 6:44–46). Julia discloses that when a user asks about the weather,
the system assumes “that the user means a weather report for his or her
home area.” Ex. 1005, 12:1–46. Amitay discloses that a search engine
receives a query, and “may search using the query itself or may add the
location information from location sensor 85 to the query.” Ex. 1018, 6:44–
46. Mr. McNair testifies that adding the location information of Amitay to
the query of Julia allows the system to make the assumption about the user’s
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location. Ex. 1022 ¶¶ 62–64. For the reasons given, we determine that the
combination of Julia and Amitay teaches this limitation and that a person of
ordinary skill would have combined those teachings for the benefit of
allowing the system to assume the user is asking about information in the
user’s location.
Claim 21 recites “converting the text in searchable form to a formal
database query using a semantic engine module.” Petitioner contends Julia
teaches this limitation. Opp. 23 (citing Ex. 1005, 8:45–47, 8:56–9:18, Figs.
1a, 2; Ex. 1022 ¶ 64). Julia discloses query construction logic that
constructs a navigation query that is “embodied using a formal database
query language.” Ex. 1005, 8:45–47, 8:56–58. We determine Julia teaches
this limitation.
Claim 21 recites “narrowing the formal database query responsive to
the location/proximity information from the location/proximity module,
wherein the location/proximity module is configured to provide a context
and environment narrowing and streamlining the formal database query
associated with the voice-based query.” Petitioner contends the combination
of Julia and Amitay teaches this limitation. Opp. 23 (citing Ex. 1005, 12:1–
19, 12:37–53; Ex. 1018, 6:44–46; Ex. 1022 ¶ 64). Julia discloses that when
a user asks a query about the weather, query construction logic and query
refinement logic can resolve the ambiguity by assuming the user is asking
about the weather in his or her area, and retrieves that information.
Ex. 1005, 12:1–46. Amitay discloses a search engine that adds location
information to a query when performing a search to provide context to the
query. Ex. 1018, 1:63–2:7, 3:15–24, 6:42–46, 7:1–6.
Petitioner contends that a person of ordinary skill in the art would
have modified the device of Julia to incorporate the RFID reader of Amitay
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for the benefit of providing location context to queries as taught by Amitay,
in order to clarify ambiguities as taught by Julia. Opp. 18–19 (citing Ex.
1005, 12:1–46, 12:37–61; Ex. 1018, 6:42–46; Ex. 1022 ¶¶ 61–62). We
determine for the reasons given that the combination of Julia and Amitay
teaches this limitation and that a person of ordinary skill would have
combined those teachings.
Claim 21 recites “obtaining a result related to the voice-based query in
natural language form from a database using the formal database query and a
database-look-up module.” Petitioner contends that Julia teaches this
limitation. Opp. 24 (citing Ex. 1005, 4:4–20, 9:39–55, Figs. 4, 5; Ex. 1022
¶ 64). Julia discloses that a “navigational query is then transmitted . . . to
data source 110” and the “contents of data source 110 are then . . . accessed
and searched, for retrieval of the particular information desired by the user.”
Ex. 1005, 3:66–4:9. We determine that Julia teaches this limitation.
Petitioner contends that the limitations of dependent claim 31 are
taught by the combination of Julia, Amitay, and the knowledge of a person
of ordinary skill, as discussed in the previous ground. Opp. 24 (citing
Ex. 1022 ¶¶ 67, 68, 70). Petitioner contends that the known work in the
field of museums, including the use of RFID-tagging of art exhibits and the
use of virtual tour guides to answer questions, would have promoted the use
of the device of Julia and Amitay in a museum, for the benefit of reducing
museum costs and human resource needs by providing virtual docents. Opp.
19–20 (citing Ex. 1022 ¶ 59). We agree with Petitioner for the reasons
given in our analysis of claim 31 above.
In sum, we determine for the foregoing reasons that Petitioner has
demonstrated, by a preponderance of the evidence, that substitute claim 31
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would have been obvious over the combination of Julia, Amitay, and the
knowledge of a person of ordinary skill.

IV. CONCLUSION6
Claims 1–30 are unpatentable over the prior art. We deny Patent
Owner’s Motion to Amend because proposed claim 31 is unpatentable over
the prior art.

Motion to Amend Outcome Claim(s)
Original Claims Cancelled by Amendment
Substitute Claims Proposed in the Amendment 31
Substitute Claims: Motion to Amend Granted
Substitute Claims: Motion to Amend Denied 31
Substitute Claims: Not Reached

6 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).
Claim(s)
35
U.S.C.
§
Reference(s)s/Basis
Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1–30 103 Junqua, Julia 1–30
Overall
Outcome
1–30
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V. ORDER
Upon consideration of the record before us, it is:
ORDERED claims 1–30 are unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Amend is
denied;
FURTHER ORDERED that because this is a final written decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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PETITIONER:
Scott A. McKeown
Victor Cheung
ROPES & GRAY LLP
scott.mckeown@ropesgray.com
victor.cheung@ropesgray.com

Roshan S. Mansinghani
Ashraf Fawzy
Jessica L.A. Marks
UNIFIED PATENTS INC.
roshan@unifiedpatents.com
afawzy@unifiedpatents.com
jessica@unifiedpatents.com

PATENT OWNER:

Tarek N. Fahmi
Jonathan Tsao
ASCENDA LAW GROUP, PC
tarek.fahmi@ascendalaw.com
jonathan.tsao@ascendalaw.com