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`Filed on behalf of:
`Andrea Electronics Corporation
`By: William D. Belanger (Lead Counsel)
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`belangerw@pepperlaw.com
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`Frank D. Liu (Back-up Counsel)
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`liuf@pepperlaw.com
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`Andrew P. Zappia (Back-up Counsel)
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`zappiaa@pepperlaw.com
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`Paper No. ____
`Date: May 6, 2020
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
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`APPLE INC.,
`Petitioner,
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`v.
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`ANDREA ELECTRONICS CORPORATION,
`Patent Owner.
`
`_________________
`
`Case IPR2017-00626
`Patent 6,363,345
`_________________
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`PATENT OWNER’S RESPONSE REMAND BRIEF
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`#57885017
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`IPR2017-00626
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`PO’s Response Remand Brief
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`TABLE OF CONTENTS
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`PAGE
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`Introduction ...................................................................................................... 1
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`TABLE OF AUTHORITIES .................................................................................... ii
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`I.
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`II. Apple’s Scope and Waiver Arguments Are Baseless and Misplaced ............. 1
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`III. Martin Does Not Teach the “Future Minimum” in Claims 6-9 ...................... 3
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`IV. Martin Does Not Set a Current Minimum to a Future Minimum
`“Periodically” as Claim 6 Requires ................................................................. 5
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`Claims 5 and 7-9 .............................................................................................. 1
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`Combining Hirsch with Martin ....................................................................... 2
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`Martin’s Monotonically Increasing Case ........................................................ 4
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`Martin’s Non-Monotonically Increasing Case ................................................ 4
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`TABLE OF AUTHORITIES
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`PAGE
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`CASES
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`Apple Inc. v. Andrea Elecs. Corp.,
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`949 F.3d 697 (Fed. Cir. 2020) ......................................................................... 2
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`In re Van Os,
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`844 F.3d 1359 (Fed. Cir. 2017) ....................................................................... 2
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`Polaris Indus., Inc. v. Arctic Cat, Inc.,
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`882 F.3d 1056 (Fed. Cir. 2018) ....................................................................... 5
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`I.
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`Introduction
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`Apple’s Opening Remand Brief fails to show unpatentability of claims 6-9
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`of the ’345 Patent. Initially, rather than confront the merits of Andrea’s arguments,
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`Apple falsely asserts that Andrea is barred from defending the validity of claims 5
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`and 7-9 or contesting the motivation to combine. Apple’s argument
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`mischaracterizes both the scope of Remand and the motivation to combine that is
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`at issue. As for the merits, Apple’s belated attempts to rework its previously
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`rejected arguments that the ordinary artisan would be motivated to combine Hirsch
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`with Martin and that Martin discloses the limitations of claims 6-9, fall flat.
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`II. Apple’s Scope and Waiver Arguments Are Baseless and Misplaced
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`Claims 5 and 7-9. Apple contends that Andrea is not allowed to address
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`claims 5 and 7-9 because the scope of briefing is “limited to issues previously
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`raised in the Response, Reply, or Observations on Cross.” (Apple Br. at 2-3.)
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`Apple critically misstates the scope of Remand, omitting that it will permit the
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`parties to “address[] the arguments previously raised in the Petition….” (Remand
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`Order at 3.) Because Apple addressed claims 5 and 7-9 in its Petition, Andrea can
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`address Apple’s arguments as to those claims. Apple’s procedural arguments are
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`merely distractions from their own failure to establish the unpatentability of claims
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`6-9. For example, with respect to claim 9, Apple did not even attempt to show that
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`Martin sets the future minimum to the current magnitude “at regular intervals of
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`time” as required by the Board’s affirmed construction of “periodically”1 – instead
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`Apple only showed that the alleged future minimum was set to a current minimum
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`“whenever” a particular condition was met. (Andrea Br. at 10.) The Board should
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`ignore Apple’s attempts to distract from the merits of the case.
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`Combining Hirsch with Martin. Failing to support motivation to combine
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`Hirsch with Martin on the merits, Apple argues Andrea cannot dispute motivation
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`to combine for claims 6-9, since Andrea did not appeal a finding that a skilled
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`artisan would have considered Hirsch and Martin together as to claim 25. (Apple
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`Br. at 3, 9-10.) Apple’s argument has no legal basis. To establish obviousness of
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`claims 6-9 in view of Hirsch and Martin, Apple must establish a “motivation to
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`combine elements from prior art references in the manner claimed.” In re Van Os,
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`844 F.3d 1359, 1361 (Fed. Cir. 2017). Claim 25 does not recite any of the
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`limitations in claims 6-9. (See EX1001, 9:65-10:12, 11:5-7.) It is directed to “an
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`adaptive array comprising a plurality of microphones.” Claims 6-9 are not. (Id.)
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`The Board correctly recognized these distinctions: its analysis of motivation
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`to combine for claims 6-9 was entirely separate from its analysis of motivation for
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`1 The Board’s construction of “periodically” in IPR2017-00627 (appealed together
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`with this case) was affirmed by the Federal Circuit. See Apple Inc. v. Andrea
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`Elecs. Corp., 949 F.3d 697 (Fed. Cir. 2020).
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`claim 25. (FD at 13-16.) While the Board found a motivation to combine Hirsch
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`and Martin as to claim 25, it rejected Apple’s proposed modification of Hirsch
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`with Martin under Apple’s single sub-window scenario for claims 6-9 as being
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`“contrary to the express disclosure of Martin.” (Id. at 14-15.) The motivation to
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`combine analysis is argument/claim specific; that is fatal to Apple’s waiver theory.
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`Moreover, arguments regarding motivation to combine are within the scope
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`of the Remand. Apple raised combining Hirsch and Martin under Martin’s
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`multiple sub-window teachings in its pre-Remand Reply. The Board’s Remand
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`Order (at 2-3) expressly allows Andrea to address those arguments. Andrea
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`demonstrates why Apple’s alleged combination of Hirsch with Martin for claims
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`6-9 is unsupportable, particularly in view of Hirsch’s express teaching away from
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`Martin and the fundamental changes required to Hirsch’s algorithm that would be
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`required to make the combination. (See Andrea’s Br. at 2-6.) Apple’s Remand
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`Brief does not even attempt to contest these issues on the merits.
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`III. Martin Does Not Teach the “Future Minimum” in Claims 6-9
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`Apple contends Martin discloses the “future minimum” in both the rapidly
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`varying (monotonically increasing) noise and slowly varying (non-monotonically
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`increasing) noise cases addressed by Martin’s algorithm. (Apple Br. at 6-8.)
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`Apple’s arguments wrench Martin’s multiple sub-window teachings from their
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`context, and improperly construct the “future minimum” from raw hindsight.
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`Martin’s Monotonically Increasing Case. Apple contends that Martin’s
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`sub-window minimum discloses the “future minimum” because “nothing in the
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`claims requires use of the lowest value in the entire window L to derive the ‘future
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`minimum’ [because] claim 4 imposes no minimum duration of the sample.”
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`(Apple Br. at 7.) This interpretation of the claim is nonsensical. Under it, any sub-
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`window minimum in Martin would be a “future minimum,” regardless of whether
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`that sub-window minimum is actually a minimum value of the window.
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`Apple’s argument is simply a repackaging of its single sub-window (W=1)
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`scenario that the Board already rejected. Under that scenario, Apple argued: “any
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`purported distinction between windows and sub-windows in Martin vanishes,” and
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`therefore a single sub-window met the “future minimum.” (See Reply Br. at 5-7.)
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`The Board already rejected Apple’s single sub-window argument. (FD at 13-16.)
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`Now Apple is arguing any single sub-window meets the “future minimum.” It is
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`the same argument and should be rejected again.
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`Martin’s Non-Monotonically Increasing Case. Apple contends Martin’s
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`sub-window minimum discloses the “future minimum” in the non-monotonic case
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`because Martin selects the smallest sub-window minimum value within a window.
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`(Apple Br. at 6-7.) Martin’s sub-window minimum values do not represent the
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`minimum of a frequency bin, but instead the minimum of a given sub-window.
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`(Andrea Br. at 8.) The window minimum (i.e., smallest sub-window minimum
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`value) in Martin is stored as a different parameter Pn(i) – a parameter which Apple
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`alleges is the “current minimum,” not the “future minimum.” (See Id.)
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`And even if Martin’s sub-window minimum values did disclose the “future
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`minimum” in the non-monotonically increasing case, which they do not, it would
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`be impossible to cherry-pick this aspect of Martin to construct the “future
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`minimum” without disregarding how the same sub-window minimum values
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`operate in the monotonically increasing case. That would be pure hindsight. See
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`Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1068 (Fed. Cir. 2018)
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`(disregarding certain teachings improperly introduces hindsight bias).
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`IV. Martin Does Not Set a Current Minimum to a Future Minimum
`“Periodically” as Claim 6 Requires
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`Apple contends Martin’s alleged current minimum, Pn(i), is set to the future
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`minimum periodically because “whether the signal is monotonically increasing or
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`not, Pn(i) is set to PMmin at the end of every sub-window of M samples.” (Apple Br.
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`at 9.) This argument ignores Martin’s key teaching of distinguishing between
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`slowly and rapidly varying noise. Apple is forced to ignore this distinction
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`because the rapidly varying (monotonic) noise case occurs randomly, and would
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`prevent Apple from showing that Martin sets the current minimum to a future
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`minimum “at regular intervals of time” as required by the Board’s and Federal
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`Circuit’s construction of “periodically.” (Andrea Br. at 9-10.) Apple’s attempts to
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`ignore Martin’s teachings amount to improper hindsight and should be rejected.
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`Respectfully submitted,
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`/Frank D. Liu/
`Frank D. Liu (Back-up Counsel)
`Registration No. 64,682
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`Date: May 6, 2020
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`Pepper Hamilton LLP
`125 High Street, 19th Floor
`Boston, MA 02110
`Tel: (617) 204-5117
`Fax: (617) 204-5150
`E-mail: liuf@pepperlaw.com
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), this is to certify that on this 6th day of May,
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`2020, I caused to be served a true and correct copy of the foregoing PATENT
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`OWNER’S RESPONSE REMAND BRIEF by e-mail on the following counsel
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`of record (as agreed in the Service Information section of the Petition):
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`Jeffrey P. Kushan (Lead Counsel)
`E-mail: jkushan@sidley.com
`Service e-mail: iprnotices@sidley.com
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`Steven S. Baik (Back-up Counsel)
`E-mail: sbaik@sidley.com
`Service e-mail: iprnotices@sidley.com
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`Thomas A. Broughan III (Back-up Counsel)
`E-mail: tbroughan@sidley.com
`Service e-mail: iprnotices@sidley.com
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`Counsel for Petitioner
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`/Frank D. Liu/
`Frank D. Liu (Back-up Counsel)
`Registration No. 64,682
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