Voice Tech. Corp. v. Unified Pats., LLC

Authored by: Jeremy J. Gustrowsky

A recent appellate decision has clarified the boundaries of patentability for technology that allows users to control computers remotely using voice commands from a mobile device. The patent at issue, U.S. Patent No. 10,491,679, claimed to improve on earlier systems by enabling a single mobile device to access and control multiple applications and operating system functions on a computer, rather than being limited to just one application per device.

The Patent Trial and Appeal Board (PTAB) found all claims of the patent unpatentable as obvious, based on a combination of two earlier patents: Wong and Beauregard. The patent owner, Voice Tech Corporation, argued that the prior art did not teach key elements of their invention, such as the “mobile device interface” and “audio command interface.” However, the court agreed with the PTAB that the petition challenging the patent had adequately explained how these elements were present in the prior art, even if the exact terminology was not used. The court emphasized that the Board is not required to entertain new theories not raised in the original petition, but here, the original arguments were sufficient.

An important procedural point from this case is that a party does not lose the right to appeal an argument simply because it did not repeat that argument in a request for rehearing before the PTAB. As long as the argument was raised and considered during the main proceedings, it remains available for appeal. This clarifies the process for preserving issues for review in future patent disputes.

Ultimately, the court found that the combination of the prior art references would have motivated a skilled person to create the claimed system, and that the patent owner failed to show any meaningful difference that would make their invention non-obvious. The Board’s findings were supported by substantial evidence, and the patent was declared unpatentable. This decision highlights the importance of adequately explaining to the PTAB how each element of the claim is present in the prior art, preferably using the same terminology.