In Voice Tech Corp v. Unified Patents, LLC, the Federal Circuit affirmed the PTAB’s IPR decision that the challenged claims of Voice Tech’s patent were unpatentable for obviousness, determining that the PTAB’s findings were supported by substantial evidence. At issue were claims 1-8 of U.S. Patent No. 10,491, 679, which relates to use of voice commands directed at a mobile devise to remotely access and control a computer. Unified argued that claims 1-8 were unpatentable as obvious over U.S. Patent App. Pub. No. 2006/0235700 (Wong) and U.S. Patent No. 6,438, 545 (Beauregard); and (2) U.S. Patent No. 7,203,721 (Ben-Efraim) and U.S. Patent No. 6,233,559 (Balakrishnan).

Unified argued Voice Tech forfeited claim construction arguments because they were not included with the arguments Voice Tech made in its request for rehearing before the PTAB. Unified interpreted 37 C.F.R. § 42.71(d) to mean that Voice Tech forfeited its claim construction arguments because it did not repeat previously raised claim construction arguments for “audio command interface” and “mobile device interface” that the Board had rejected in its Final Written Decision. The Court disagreed with Unified’s interpretation of the regulation, noting that the regulatory requirement for a rehearing request requires the party to identify the issues it wishes to present for rehearing by the agency after the agency has rendered a final decision. The Court further opined “that a party’s choice to not re-raise an argument in the party’s request for rehearing to the Board does not forfeit the argument for review by this court.”

Regarding the PTAB’s obviousness findings, Voice Tech argued 1) that the Board erred in finding that the Wong-Beauregard combination teaches certain claim limitations and 2) Unified’s obviousness analysis was based on hindsight bias. Voice Tech argued that the prior art did not disclose “receiving audio data from the mobile device, at the computer, at an audio command interface,” as required by claims 1, 3, 5, and 7. The Court rejected this argument because it relied on an “implicit claim construction” of the term “audio command interface,” raised for the first time on appeal, and which would improperly impute other limitations recited elsewhere in the claim (“deciding” and “selecting” steps) into the claim term, making those other limitations superfluous. Voice Tech also argued that the combination of Wong and Beauregard fails to disclose the “audio command interface” recited in the “receiving” limitation because a skilled artisan would not have been motivated to combine Wong and Beauregard. The Court disagreed with Voice Tech’s reasoning, noting that the PTAB reasonably credited Unified’s argument that modifying Wong in view of Beauregard’s teachings involved simply applying known techniques to a similar device and relied on expert testimony to conclude that a skilled artisan would have been motivated to combine the teachings of the prior-art references.

Voice Tech argued that Unified’s obviousness theory was subject to hindsight bias because it failed to address why a skilled artisan at the time of invention would have been motivated to combine Wong and Beauregard. The Court affirmed the Board’s obviousness findings because substantial evidence supported the Board’s finding that a PHOSITA, at the time of the invention, would have been motivated to combine Wong and Beauregard.

[Given] the optional nature of rehearing requests, it would make little sense to find all issues preserved for appeal if a party declined to request rehearing, but to find certain issues forfeited if the party exercised its option to request rehearing on the subset of issues it believed the Board to have misapprehended or overlooked—which may not necessarily encompass all issues that would constitute error before this court.