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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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`APPLE INC.,
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`Petitioner
`v.
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`JAWBONE INNOVATIONS, LLC,
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`Patent Owner
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`Case IPR2022-01085
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`U.S. Patent No. 8,326,611
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`PETITIONER’S PRELIMINARY REPLY
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`IPR2022-01085
`U.S. Patent No. 8,326,611
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`PETITIONER’S UPDATED EXHIBIT LIST
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`APPLE-1001
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`U.S. Patent No. 8,326,611 to Petit et al. (“the ’611 patent”)
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`APPLE-1002
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`Excerpts from the Prosecution History of the ’611 patent (“the
`Prosecution History”)
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`APPLE-1003
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`Declaration of Dr. Thomas Kenny
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`APPLE-1004
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`Curriculum Vitae of Dr. Thomas Kenny
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`APPLE-1005
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` U.S. Patent No. 8,194,880 B2 (“Avendano”)
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`APPLE-1006
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` U.S. Patent No. 7,464,029 B2 (“Visser”)
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`APPLE-1007
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` RESERVED
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`APPLE-1008
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` U.S. Patent No. 7,155,019 B2 (“Hou”)
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`APPLE-1009
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` Byrne, D, et al, “An international comparison of long-term
`average speech spectra,” 1994 Oct; J. Acoust. Soc. Am.; 96(4):
`2108-2120 (“Byrne”).
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`APPLE-1010
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` U.S. Publication No. US 2011/0103626 A1 (“Bisgaard”)
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`APPLE-1011
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` U.S. Provisional App. No. 60/816,244 (“the Bisgaard
`Provisional”)
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`APPLE-1012
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` U.S. Publication No. US 2002/0198705 A1 (“Burnett”)
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`APPLE-1013
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` Berglund, B, et al, “Source and effects of low-frequency noise,”
`1996 May; J. Acoust. Soc. Am; 99(5): 2985-3002 (“Berglund”).
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`APPLE-1014
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` Declaration of June Ann Munford
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`APPLE-1015
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` Declaration of June Ann Munford - Appendix
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`APPLE-1016
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`IPR2022-01085
`U.S. Patent No. 8,326,611
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` Curriculum Vitae of June Ann Munford
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`APPLE-1017
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` RESERVED
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`APPLE-1018
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` Ryan David, Positive COVID Tests Derail Intel Patent Trial In
`WDTX, LAW360 (Apr. 26, 2022, 1:16PM),
`https://www.law360.com/articles/1487451
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`APPLE-1019
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` Dani Kass, Fintiv Fails: PTAB Uses ‘Remarkably Inaccurate’
`Trial Dates, LAW360 (Nov. 2, 2021, 9:09 PM),
`https://www.law360.com/articles/1436071
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`APPLE-1020
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` Motion to Transfer (Public Version) – Jawbone Innovations,
`LLC v. Apple Inc., 6:21-cv-00984, D.I. 47 (W.D. Tex. May 6,
`2022)
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`APPLE-1021
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` Motion to Transfer (Public Version) – Jawbone Innovations,
`LLC v. Google LLC, 6:21-cv-00985, D.I. 43 (W.D. Tex. Apr.
`29, 2022)
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`APPLE-1022
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` Motion to Transfer – Jawbone Innovations, LLC v.
`Amazon.com, Inc., 2:21-cv-00435, D.I. 25
`(E.D. Tex. Mar.
`10, 2022)
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`APPLE-1023
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` Complaint – Jawbone Innovations, LLC v. Apple Inc., 6:21-cv-
`00984, D.I. 1 (W.D. Tex. Sep. 23, 2021)
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`APPLE-1024
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` Scheduling Order – Jawbone Innovations, LLC v. Apple Inc.,
`6:21-cv-00984, D.I. 23 (W.D. Tex. Jan. 7, 2022)
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`APPLE-1025
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` Press Release of U.S. Senator Patrick Leahy of Vermont
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`APPLE-1026
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` Legislative Proposal - Restoring the America Invents Act
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`APPLE-1027
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`Complaint – Jawbone Innovations, LLC v. Google LLC, 6:21-
`cv-00985, D.I. 1 (W.D. Tex. Sep. 23, 2021)
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`APPLE-1028
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`IPR2022-01085
`U.S. Patent No. 8,326,611
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` Amended Scheduling Order – Jawbone Innovations, LLC v.
`Apple Inc., 6:21-cv-00984, D.I. 23 (W.D. Tex. Oct. 20, 2022)
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`APPLE-1029
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` Google LLC v. Jawbone Innovations, LLC, IPR2022-00604,
`Paper No. 12 (P.T.A.B. Oct. 6, 2022)
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`APPLE-1030
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` Stay Order – Jawbone Innovations, LLC v. Apple Inc., 6:21-cv-
`00984, D.I. 23 (W.D. Tex. Nov. 8, 2022)
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`IPR2022-01085
`U.S. Patent No. 8,326,611
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`I.
`INTRODUCTION
`In its preliminary response, Patent Owner mischaracterizes the Board’s
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`Decision in Google LLC v. Jawbone Innovations, LLC, IPR2022-00604 (“Google
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`IPR”) and advances a position regarding an “intermediate signal” that is contrary to
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`the specification and claims of the ’611 patent.
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`II.
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`AVENDANO AND VISSER RENDER OBVIOUS “FORMING A
`FIRST VIRTUAL MICROPHONE”
`A.
`Patent Owner Mischaracterizes the Google IPR
`Patent Owner contends that, in the Google IPR, “the Board determined that
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`combining an intermediate signal with another signal (there, the ‘second signal’)
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`could not meet this limitation.” POPR, 7. Not so. In the Google IPR, the Petition
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`failed because the same pair of inputs were used to form both virtual microphones.
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`With this mapping, the Petition did not distinguish the first intermediate signal from
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`the first signal, improperly mapping the same input to these distinct claim features.
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`APPLE-1029, 9-12. Petitioner has not advanced the same argument here.
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`In contrast, as discussed in the Petition, Avendano—either individually or in
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`combination with Visser—discloses forming two virtual microphones using
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`different respective pairs of inputs. Petition, 24-33. For example, Avendano alone
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`discloses forming a “first virtual microphone” using a “first signal” (e.g., signal x1),
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`and forming a “second virtual microphone using a “first intermediate signal” (e.g.,
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`the output of nodes 402 and/or 416). Id., 25, 29-32.
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`U.S. Patent No. 8,326,611
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`The difference between the Google prior art (“Elko”) and Avendano is clear:
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`[Both virtual microphones formed
`from the same pair of inputs.]
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`[Virtual microphones formed from
`different respective pairs of inputs.]
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`Avendano, FIG. 4 (cropped)
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`Elko, FIG. 10 (cropped)
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`Because the present Petition properly maps different inputs to the claimed first
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`signal and the claimed first intermediate signal, the present Petition does not suffer
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`from the same issues the Board found in the Google IPR.
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`B.
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`Patent Owner’s Interpretation of an “Intermediate Signal”
`is Contrary to the ’611 Patent
`Patent Owner alleges that, upon processing a “second signal” by “a filter,” the
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`resulting signal would no longer be the “second signal” and would be an
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`“intermediate signal” instead. POPR, 6-7. However, this position is inconsistent
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`with the specification and claims of the ’611 Patent. For example, claim 9, which in
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`U.S. Patent No. 8,326,611
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`combination with claim 1, recites that “the first virtual microphone” is formed by (i)
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`“applying the filter to the second signal” and (ii) “combining a first signal of a first
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`physical microphone and [the] second signal of a second physical microphone.”
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`Thus, claim 9 confirms that applying a filter to the second signal in forming the first
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`virtual microphone is encompassed within the claims of the ’611 patent. This also
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`is shown in FIG. 4 of the ’611 patent, where first virtual microphone “V1” is formed
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`by (i) applying filter “β(z)” to second signal “O2,” prior to (ii) combining the filtered
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`“second signal” with “first signal “O1.” APPLE-1001, FIG. 4, 5:30-31.
`Second signal
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`First virtual
`microphone
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`“[F]ilter that describes the
`relationship between O1 and
`calibrated O2 for speech”
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`First signal
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`APPLE-1001, FIG. 4
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`That is, contrary to Patent Owner’s contentions, the ’611 patent both
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`discloses and claims that a “second signal” having been processed by “a filter”
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`would remain a “second signal,” at least for the purposes of forming a “first virtual
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`microphone.” Thus, Petitioner’s position that Avendano’s “second signal” remains
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`a “second signal” upon being processed by a filter (e.g., Avendano’s “delay node
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`402” and/or Visser’s cross filter w12) is consistent with the ’611 patent.
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`IPR2022-01085
`U.S. Patent No. 8,326,611
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`III.
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`FINTIV FACTORS 1-4 AND 6 STRONGLY FAVOR
`INSTITUTION
`A.
`Parallel Litigation Has Been Stayed (Factor 1)
`The district court recently stayed the parallel litigation pending resolution of
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`Apple’s motion for transfer to the Northern District of California (“NDCA”).
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`APPLE-1030. Accordingly, Factor 1 favors institution.
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`B.
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`The Final Written Decision Deadline Precedes the Median
`Trial Date (Factor 2)
`In June, Director Vidal issued clear guidance on the trial date to use when
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`considering discretionary denial on the basis of co-pending litigation. Specifically,
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`“when considering the proximity of the district court’s trial date to the date when
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`the PTAB final written decision will be due, the PTAB will consider the median
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`time from filing to disposition of the civil trial for the district in which the parallel
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`litigation resides” and cited to statistics.1 Guidance, 3. These statistics show the
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`“most recent statistics on median time-to-trial for civil actions” in the Western
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`District of Texas (“WDTX”) as 28.3 months. Here, the complaint against Apple
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`was filed on September 23, 2021 (APPLE-1009), establishing an expected trial
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` Available at https://www.uscourts.gov/statistics/table/na/federal-court-
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` 1
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`management-statistics/2022/06/30-2
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`U.S. Patent No. 8,326,611
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`date of February 2024 based on the WDTX statistics.2 Accordingly, the median
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`time-to-trial falls after the statutory deadline for the Board’s final written decision
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`(“FWD”), which is expected to be no later than December 21, 2023.
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`Patent Owner asks the Board to ignore this guidance and, instead, use the
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`July 26, 2023 trial date in the scheduling order entered on January 7, 2022.
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`However, as the Director explained “scheduled trial dates are unreliable and often
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`change.” Indeed, the district court recently delayed the trial to September 27, 2023
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`in the amended scheduling order entered on October 20, 2022. APPLE-1028.
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`Subsequently, in the order entered November 8, 2022, the district court vacated the
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`amended scheduling order and stayed the proceedings entirely, including all
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`deadlines, pending resolution of Apple’s motion for transfer to the NDCA.
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`APPLE-1030. As the length of the stay is uncertain and Apple’s motion to transfer
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`remains pending, it is unclear as to whether and when the Apple litigation might
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`proceed to trial.
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`Thus, due to demonstrable unreliability of scheduled trial dates, the Board
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` Twenty-eight months from the September 23, 2021 complaint against Apple falls
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` 2
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`on January 23, 2024. Thirty percent (i.e., 0.3) of the thirty-one days in January
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`2024 adds 9.3 days and moves the median time-to-trial to February 1, 2024.
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`5
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`U.S. Patent No. 8,326,611
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`should follow the Director’s guidance, i.e., use median time to trial, and find
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`Factor 2 to favor institution.
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`However, even if the previously scheduled—and currently stayed—trial date
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`(September 27, 2023) is considered, Factor 2 is, at worst, neutral because the
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`Board considers the proximity of the parallel proceeding to the FWD. When the
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`FWD is due shortly after the target date—here, at worst, by roughly two and a half
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`months—this factor receives little weight. Sotera Wireless, Inc. v. Masimo Corp.,
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`IPR2020-01019, Paper 12, 15 (2020). Also, “given the minimal, if any, overlap
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`between the issues in the [co-pending litigation] and this proceeding,” which is the
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`case here as explained in Part D below, “the time overlap has less significance.”
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`SharkNinja v. iRobot Corp., IPR2021-00545, Paper 11, 7 (2021).
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`C.
`Petitioner’s Diligence Favors Institution (Factor 3)
`The Petition was filed approximately eight months after being served with
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`the complaint, approximately four months after Jawbone served infringement
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`contentions, and less than two months after Apple served preliminary invalidity
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`contentions. With this diligence, the investment in the district court “is not a result
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`of Petitioner’s delay.” SharkNinja, IPR2021-00545, Paper 11 at 7-8. In fact, the
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`previously scheduled—and currently stayed—deadline to amend pleadings
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`(December 20, 2022) falls before the institution deadline and significant events
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`(e.g., several months of fact discovery, expert reports, dispositive motions, a
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`IPR2022-01085
`U.S. Patent No. 8,326,611
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`Markman hearing, trial, etc.) would occur in the district court post-institution even
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`if the previously scheduled deadlines were to be reinstated. Indeed, a Markman
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`hearing has not yet been held, Apple’s motion to transfer remains pending, and
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`much of the case remains to be litigated. Thus, Factor 3 favors institution.
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`D.
`Petitioner’s Stipulation Favors Institution (Factor 4)
`Patent Owner’s argument that Petitioner has not provided a Sotera
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`stipulation does not change the weight that should be accorded to Petitioner’s Sand
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`Revolution stipulation, which resolves doubt as to meaningful overlap of issues
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`(Pet. 98-99). Sand Revolution II, LLC v. Cont’l Intermodal Grp.-Trucking LLC,
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`IPR2019-01393, Paper 24 at 11-12 (June 16, 2020).
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`Specifically, Petitioner’s stipulation prevents overlap because it requires the
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`grounds addressed in each forum to be mutually exclusive, thereby obviating the
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`possibility of inconsistent results. With institution, the IPR grounds will not be
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`considered in the litigation and the same grounds will not be evaluated in both
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`forums, thereby reducing inefficiency and the risk of inconsistent results.
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`Moreover, upcoming events in the litigation will dictate a reduction in
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`overlap between this proceeding and the issues that will be litigated through trial.
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`In fact, prior to the district court’s stay, Final Invalidity and Infringement
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`Contentions were not due until December 13, 2022. APPLE-1028, 1. Also, the
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`district court had set deadlines of January 25, 2023 and February 15, 2023 for
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`IPR2022-01085
`U.S. Patent No. 8,326,611
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`“meet and confers to discuss significantly narrowing the number of claims
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`asserted and prior art references at issue to triable limits.” APPLE-1028, 2.
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`Accordingly, even if litigation were to proceed as previously scheduled, the
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`overlap in claim coverage and/or prior art would almost certainly reduce even
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`more.
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`E.
`The Compelling Merits Favor Institution (Factor 6)
`The Director’s guidance also confirmed that “the PTAB will not rely on the
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`Fintiv factors to discretionarily deny institution … where a petition presents
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`compelling evidence of unpatentability.” Here, as demonstrated in the Petition with
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`reference to Dr. Kenny’s testimony and additional supporting evidence, the
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`Petition’s merits are “compelling,” and, as a result, a compelling case of
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`unpatentability obviates the Board’s need to address the Fintiv factors at all.
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`Further, although Patent Owner criticizes Petitioner’s application of the cited
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`references, Patent Owner does so solely on the basis of attorney argument that is
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`unsupported by expert testimony or any other extrinsic evidence.
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`For the reasons set forth above and in the petition, a holistic view of the
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`Fintiv factors supports institution.
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`IPR2022-01085
`U.S. Patent No. 8,326,611
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`Respectfully submitted,
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`Date: November 15, 2022 /Jeremy J. Monaldo/
`W. Karl Renner, Reg. No. 41,265
`Jeremy Monaldo, Reg. No. 58,680
`Richard Wong, Reg. No. 73,259
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
`Attorneys for Petitioner
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`IPR2022-01085
`U.S. Patent No. 8,326,611
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e), the undersigned certifies that on November 15,
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`2022, a complete and entire copy of this Petitioner’s Preliminary Reply was provided
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`via email to the Patent Owner by serving the correspondence email addresses of
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`record as follows:
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`
`Peter Lambrianakos, plambrianakos@fabricantllp.com
`Vincent J. Rubino III, vrubino@fabricantllp.com
`Alfred R. Fabricant, ffabricant@fabricantllp.com
`Enrique W. Iturralde, eiturralde@fabricantllp.com
`Richard Cowell, rcowell@fabricantllp.com
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`FABRICANT LLP
`411 Theodore Fremd Avenue, Suite 206
`South Rye, New York 10580
`Tel. 212-257-5797
` Fax. 212-257-5796
`ptab@fabricantllp.com
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`
`
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`
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`/Crena Pacheco/
`Crena Pacheco
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(617) 956-5938
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