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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`GOOGLE LLC,
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`Petitioner,
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`v.
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`JAWBONE INNOVATIONS, LLC,
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`Patent Owner.
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`Case IPR2022-00604
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`Patent No. 8,326,611
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`PETITIONER’S PRE-INSTITUTION REPLY
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`Petitioner’s Pre-Institution Reply
`U.S. Patent No. 8,326,611
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`I.
`II.
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`Table of Contents
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`The Petition Presents Compelling Evidence of Unpatentability ..................... 1
`The Fintiv Factors Favor Institution ................................................................ 2
`A.
`Fintiv Factors 2, 3, 4, and 6 Favor Institution ....................................... 2
`B.
`Factors 1 and 5 Are Neutral .................................................................. 5
`III. Conclusion ....................................................................................................... 5
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`i
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`Petitioner’s Pre-Institution Reply
`U.S. Patent No. 8,326,611
`Because the Petition presents compelling evidence of unpatentability, the
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`Board should institute review and not apply the Fintiv factors. But even if applied,
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`the most relevant Fintiv factors (2, 3, and 4) favor institution.
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`I.
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`The Petition Presents Compelling Evidence of Unpatentability
`The Board will not deny institution based on the Fintiv factors “where a
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`petition presents compelling evidence of unpatentability.” Memorandum from
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`Director Vidal, Interim Procedure for Discretionary Denials in AIA Post-Grant
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`Proceedings with Parallel District Court Litigation at 2 (USPTO June 21, 2022)
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`(“Interim Procedure”). Here, Petitioner has shown that the claims are unpatentable
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`by a preponderance of the evidence. All challenged claims are rendered obvious by
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`the combination of Elko (Ex. 1002) and Boll (Ex. 1003), a reference that Elko
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`incorporates by reference. Paper 7 (“Pet.”) at 10-15, 18-66. The claims are also
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`obvious over Elko and Boll in view of Buck (Ex. 1004), Balan (Ex. 1005), and
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`Elko II (Ex. 1006). Id. at 15-17, 66-80. Patent Owner’s contrary arguments lack
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`merit. Paper 8 at 7-17 (“Prelim. Resp.”). As Petitioner explained with support from
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`its technical expert Dr. Vipperman, Elko’s first intermediate signal “is a filtered first
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`signal that remains a ‘first signal,’” Pet. at 48-49, 22-23, Elko’s filter 1020 discloses
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`or at least renders obvious a “relationship for speech,” id. at 20-22, and a POSITA
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`would have understood that the claimed “energy ratio” is the same as, or at least is
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`obvious over, Elko’s power ratio, id. at 25-31.
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`1
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`II. The Fintiv Factors Favor Institution
`In addition to the merits, the Fintiv factors either favor institution or are
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`Petitioner’s Pre-Institution Reply
`U.S. Patent No. 8,326,611
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`neutral. The Board should institute review.
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`A. Fintiv Factors 2, 3, 4, and 6 Favor Institution
`Factor 2 favors institution because the Board’s projected final written decision
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`date (October 11, 2023) is several months before the expected trial date, based on
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`the median time to trial in the Western District of Texas (January 4, 2024, see infra).
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`Interim Procedure at 8-9. Patent Owner relies on the district court’s scheduled trial
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`date for this factor. Prelim. Resp. at 20. But a court’s scheduled trial date is often
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`“unreliable” and “not by itself a good indicator of whether the district court trial will
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`occur before the statutory deadline for a final written decision.” Interim Procedure
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`at 8. To gain a more reliable time-to-trial assessment, the Board should consider the
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`“median time-to-trial for civil actions in the district court in which the parallel
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`litigation resides,” along with “the number of cases before the judge in the parallel
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`litigation and the speed and availability of other case dispositions.” Id. at 8-9.1
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`1 Indeed, more than a year after Fintiv’s final written decision would have been due,
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`the parallel litigation still has not gone to trial. Ex. 1017 at 18, 27-29, 43, 45. The
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`Fintiv litigation is in the same venue as the parties’ parallel proceeding here.
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`2
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`Petitioner’s Pre-Institution Reply
`U.S. Patent No. 8,326,611
`The most recent Federal Court Management Statistics show that the median
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`time from the filing of a civil case to trial in the Western District of Texas is 27.2
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`months, placing the expected trial date in the parallel litigation around January 4,
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`2024. Ex. 1016 at 37. This is later than the October 11, 2023 statutory deadline for
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`a final written decision in this proceeding. This favors institution. Hanwha Sols.
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`Corp. v. Rec Solar Pte. Ltd., IPR2021-00989, Paper 12 at 14 (Dec. 13, 2021). Judge
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`Albright’s high volume of patent cases—860 open cases as of April 2022—also
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`makes it less likely that trial will proceed on schedule. Ex. 1018 at 64. Petitioner has
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`also moved to transfer the litigation to the Northern District of California, another
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`reason to doubt the scheduled trial date. Ex. 1019. Judge Albright has already
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`delayed the Markman hearing by almost two months, demonstrating that scheduled
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`dates are not reliable. Compare Ex. 1009 at 2, with Ex. 1023.
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`Even relying on the court’s current trial date of July 26, 2023, this factor is at
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`worst neutral. See DJI Europe B.V. v. Textron Innovations Inc., IPR2022-00162,
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`Paper 11 at 10-11 (June 7, 2022) (weighing this factor neutral when the scheduled
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`trial was two months before the projected FWD). Patent Owner’s cited cases do not
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`dictate otherwise, see Prelim. Resp. at 20, as these involved larger gaps between the
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`two dates, and all but one predate Fintiv and apply a different analysis.
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`Factor 3 favors institution because the litigation is still in its early stages and
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`Petitioner diligently filed its Petition. The district court has not issued any
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`3
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`Petitioner’s Pre-Institution Reply
`U.S. Patent No. 8,326,611
`substantive orders related to the ’611 patent. Indeed, the proper venue has not even
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`been resolved. Ex. 1019; Ex. 1020; Ex. 1022. Though a Markman hearing is
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`scheduled for July 27, 2022, Judge Albright delayed the hearing until September 22,
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`2022. Ex. 1023. When the Board issues its institution decision, the parties will have
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`expended few resources in the case. Based on the current schedule, discovery is not
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`set to open until July 28, 2022 (Ex. 1009 at 2), final infringement and invalidity
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`contentions are not due until after the Board’s projected institution decision (id. at
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`2-3), and the deadline to serve opening expert reports is not until March 1, 2023 (id.
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`at 3). These dates are based on the original Markman hearing date. The Markman
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`rescheduling is likely to delay the schedule and change these dates. Ex. 1021 at 13-
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`15. The case is therefore still in its early stages, and Petitioner has acted diligently
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`in filing the Petition. This favors institution. Progenity, Inc. v. Natera, Inc.,
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`IPR2021-00267, Paper 11 at 62-63 (June 7, 2021). The lone case cited by Patent
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`Owner is inapposite because, there, the institution decision issued on the eve of trial,
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`after the completion of fact and expert discovery, dispositive motions, and motions
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`in limine. See Prelim. Resp. at 21 (citing Supercell Oy v. Gree, Inc., IPR2020-00513,
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`Paper 11 at 11-12 (June 24, 2020)). None of those aspects are present here.
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`Factor 4 favors institution. If the Board institutes review, Petitioner stipulates
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`that it will not challenge the validity of the ’611 patent in the parallel litigation based
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`on the grounds advanced in the Petition or on any ground that utilizes Elko
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`4
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`Petitioner’s Pre-Institution Reply
`U.S. Patent No. 8,326,611
`(Ex. 1002) or Boll (Ex. 1003). This “sufficiently mitigates concerns about
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`duplicative efforts and potentially conflicting decisions.” Microsoft Corp. v. WSOU
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`Invs., LLC, IPR2021-00930, Paper 8 at 11 (Dec. 2, 2021). Patent Owner’s argument
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`that more claims are asserted in litigation (Prelim. Resp. at 22) ignores that Petitioner
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`concurrently challenges these claims in IPR2022-00889, and that Patent Owner will
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`have to reduce the number of claims that it is asserting. Ex 1021 at 13.
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`Factor 6 favors institution for the reasons stated in the Petition. Pet. at 7-10.
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`Patent Owner has not identified any reference that is allegedly cumulative to the
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`Petition references.
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`Factors 1 and 5 Are Neutral
`B.
`Factor 1 is neutral where neither party has requested a stay of the parallel
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`litigation at the time of institution. Pet. 7; see, e.g., Sand Revolution II, LLC v.
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`Continental Intermodal Grp.–Trucking LLC, IPR2019-01393, Paper 24 at 7 (June
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`16, 2020) (informative). Factor 5 is also neutral, despite Petitioner and Patent Owner
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`being the same parties in the district court case. See Protect Animals With Satellites
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`v. OnPoint Sys., LLC, IPR2021-01483, Paper 11 at 17 (Mar. 4, 2022).
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`III. Conclusion
`For these reasons and those in the petition, the Board should decline to
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`exercise its discretion under 35 U.S.C. § 314(a) and should institute review.
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`5
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`Dated: July 29, 2022
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`Petitioner’s Pre-Institution Reply
`U.S. Patent No. 8,326,611
`By: /Alexander M. Boyer/
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` Alexander M. Boyer
` Backup Counsel for Petitioner
` Reg. No. 66,599
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`6
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that a copy of the foregoing PETITIONER’S
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`PRE-INSITUTION REPLY was served on July 29, 2022, via email directed to
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`counsel of record for the Patent Owner at the following:
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`Peter Lambrianakos
`plambrianakos@fabricantllp.com
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`Vincent J. Rubino, III
`vrubino@fabricantllp.com
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`Alfred R. Fabricant
`ffabricant@fabricantllp.com
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`Enrique W. Iturralde
`eiturralde@fabricantllp.com
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`Richard Cowell
`rcowell@fabricantllp.com
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`PTAB@fabricantllp.com
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`By: /Lisa C. Hines/
` Lisa C. Hines
` Senior Litigation Legal Assistant
` Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
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`Dated: July 29, 2022
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