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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 IPR2022-01124
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`U.S. Patent No. 11,122,357
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`JOINT MOTION TO TERMINATE PROCEEDINGS
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`Exhibit No.
`2001
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`2002
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`2003
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`2004
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`2005
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`2006
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`2007
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`2008
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`2009
`2010
`2011
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`2012
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`2013
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`2014
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`LIST OF EXHIBITS
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`Description of Document
`First Amended Complaint for Patent Infringement,
`Jawbone Innovations, LLC v. Google LLC, No. 6:21-cv-
`00985-ADA, Dkt. 23 (W.D. Tex. Dec. 23, 2021)
`Order Denying Motion to Stay, Jawbone Innovations, LLC
`v. Google LLC, No. 6:21-cv-00985-ADA, Dkt. 201 (W.D.
`Tex. Sept. 21, 2022)
`Order Resetting Markman Hearing, Jawbone Innovations
`LLC v. Google LLC, No. 6:21-cv-00985-ADA, Dkt. 81
`(W.D. Tex. Sep. 21, 2022)
`Plaintiff’s Disclosure of Asserted Claims and Infringement
`Contentions in Jawbone Innovations, LLC v. Google LLC,
`No. 6:21-cv-00985-ADA, dated January 13, 2022
`Defendant Google LLC’s Preliminary Invalidity
`Contentions in Jawbone Innovations, LLC v. Google LLC,
`No. 6:21-cv-00985-ADA, dated April 6, 2022
`Docket Entry for Order denying Google LLC’s Motion to
`Transfer in Jawbone Innovations, LLC v. Google LLC, No.
`6:21-cv-00985-ADA, dated October 7, 2022
`Transcript of the deposition of Jeffrey S. Vipperman,
`Ph.D., taken March 29, 2023
`Transcript of the deposition of Jeffrey S. Vipperman,
`Ph.D., taken February 20, 2023
`Declaration of Andrew P. DeJaco, dated April 17, 2023
`Curriculum Vitae of Andrew P. DeJaco
`Transcript of the deposition of Jeffrey S. Vipperman,
`Ph.D., taken April 3, 2023
`Sound Fields: Free versus Diffuse Field, Near versus Far
`Field, July 29, 2020
`Pulakka, Hannu, et al., Low-Frequency Bandwidth
`Extension of Telephone Speech Using Sinusoidal Synthesis
`and Gaussian Mixture Model, Interspeech 2011
`Microsoft Windows, Microphone Array Support in
`Windows, April 21, 2014, Revision
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`i
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`Exhibit No.
`2015
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`2016
`2017
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`Description of Document
`Transcript of the deposition of Jeffrey S. Vipperman,
`Ph.D., taken March 6, 2023
`Confidential Settlement Agreement
`Confidential Release
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`ii
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`I.
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`PRECISE RELIEF REQUESTED
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`Pursuant to 35 U.S.C. § 317(a), Petitioner Google LLC (“Petitioner”) and
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`Patent Owner Jawbone Innovations, LLC (“Patent Owner”) jointly request that this
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`inter partes review proceeding involving U.S. Patent No. 11,122,357 (“the ’357
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`patent”) be terminated based on an agreement between Petitioner and Patent Owner
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`(“the Parties”).
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`Patent Owner and Petitioner have entered into an agreement which resolves
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`the disputes in the above-captioned inter partes review relating to U.S. Patent No.
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`11,122,357. Petitioner and Patent Owner have settled their dispute regarding the
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`’357 patent, including both this proceeding and Patent Owner’s assertion of the ’357
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`Patent in the related district court litigation, Jawbone Innovations, LLC v. Google
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`LLC, Case No. 3:23-cv-00466-TLT (N.D. Cal.). Patent Owner filed a stipulation of
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`dismissal, with prejudice, in the related district court action on July 25, 2023.
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`Petitioner and Patent Owner submit a true copy of that confidential agreement in its
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`entirety, filed herewith as Exhibit 2016. Petitioner and Patent Owner further submit
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`a true copy of a confidential release signed by the Parties, filed herewith as Exhibit
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`2017. The Parties do not anticipate any further litigation between them concerning
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`the ’357 patent. There are no other agreements, oral or written, between the Parties
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`made in connection with, or in contemplation of, the termination of this proceeding.
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`1
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`II. REASONS FOR GRANTING THE MOTION
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`Generally, the Board expects that a proceeding will terminate after the filing
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`of a settlement agreement, unless the Board has already decided the merits of the
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`proceeding. See, e.g., Consolidated Trial Practice Guide, 86 (Nov. 2019). The
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`Board’s policy is in accord with the governing statute, which states that “An inter
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`partes review instituted under this chapter shall be terminated with respect to any
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`petitioner upon the joint request of the petitioner and the patent owner, unless the
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`Office has decided the merits of the proceeding before the request for termination is
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`filed.” 35 U.S.C. § 317(a). The Board has not decided the merits of this proceeding.
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`The Board authorized filing of the instant motion on July 24, 2023. Guidance
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`as to the content of a motion to terminate is provided in Apotex Cop. v. Alcon
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`Research, Ltd., IPR2013-00428, Paper No. 56. There, the Board indicated that a joint
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`motion, such as this one, should (a) include a brief explanation as to why termination
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`is appropriate; (b) identify all parties in any related litigation involving the patent at
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`issue; (c) identify any related proceedings currently before the Office; and
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`(d) discuss specifically the current status of each such related litigation or proceeding
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`with respect to each party to the litigation or proceeding. Id. at 2. This motion
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`satisfies each of the above requirements.
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`A. Brief Explanation of Why Termination is Appropriate
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`Good cause exists to terminate this proceeding because the Parties have settled
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`their dispute regarding the ’357 patent and the Board has not determined the merits
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`of the proceeding. Terminating this proceeding thus serves the interests of judicial
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`economy as well as the mutual interests of the Parties.
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`Termination is appropriate because oral argument has not been held, and the
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`Board has not decided the merits of the proceeding, i.e., a final written decision has
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`not been issued. Under 35 U.S.C. § 317(a), this proceeding “shall be terminated”
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`because the Parties are jointly requesting termination and the Office has not yet
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`“decided the merits of the proceeding before the request for termination is filed.”
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`The Parties have resolved their disputes and executed an agreement which
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`contemplates requesting termination of this proceeding and dismissing the Parties’
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`related proceeding regarding the ’357 patent in Jawbone Innovations, LLC v. Google
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`LLC, Case No. 3:23-cv-00466-TLT (N.D. Cal.).
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`B. All Parties in Any Pending Related Litigation Involving the
`Patent at Issue
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`The following litigation is related to the ’357 patent and the Parties:
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`• Jawbone Innovations, LLC v. Google LLC, Case No. 3:23-cv-00466-
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`TLT (N.D. Cal.)
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`A stipulation of dismissal with prejudice was submitted in the above action on July
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`25, 2023.
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`3
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`The ’357 patent is also the subject of concurrent litigation between Patent
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`Owner and Amazon.com, Inc. (“Amazon”) in the Northern District of California:
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`Jawbone Innovations, LLC v. Amazon.com, Inc., Case No. 3:22-cv-06727-TLT
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`(N.D. Cal.) (“the Amazon Litigation”). Petitioner is not a party to the Amazon
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`Litigation. Patent Owner and Amazon have also settled their dispute and have filed
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`a joint motion to dismiss the Amazon Litigation.
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`The ’357 Patent is also the subject of litigation between Patent Owner and
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`other defendants in the following cases. Petitioner is not a party to any of the below
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`litigations.
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`• Jawbone Innovations, LLC v. Guangdong OPPO Mobile
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`Telecommunications Corp., Ltd., d/b/a OPPO, Case No. 3:23-cv-00079
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`(E.D. Tex.);
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`• Jawbone Innovations, LLC v. HTC Corporation, Case No. 3:23-cv-00077
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`(E.D. Tex.);
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`• Jawbone Innovations, LLC v. LG Electronics, Inc., Case No. 2:23-cv-00078
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`(E.D. Tex.);
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`• Jawbone Innovations, LLC v. Meta Platforms, Inc., Case No. 6:23-cv-00158
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`(W.D. Tex.);
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`• Jawbone Innovations, LLC v. Panasonic Holdings Corporation, Case No.
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`2:23-cv-00081 (E.D. Tex.);
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`• Jawbone Innovations, LLC v. Sony Electronics Inc., Case No. 2:23-cv-
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`01161-MEF-LDW (D.N.J.); and
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`• Jawbone Innovations, LLC v. ZTE Corporation, Case No. 3:23-cv-00082
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`(E.D. Tex.).
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`C. Related Proceedings Currently Before the Office
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`The ’357 patent is the subject of IPR2023-00251 filed by Amazon (the
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`“Amazon IPR”). As noted above, Patent Owner and Amazon have settled their
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`dispute and are preparing a motion to terminate the Amazon IPR.
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`The ’357 patent is further the subject of IPR2023-01130, IPR2023-1134, and
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`IPR2023-01153, which have not been instituted.
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`The Parties submit that none of the above proceedings are cause for the Board
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`to deny the present Motion as they do not involve both of the present parties and/or
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`are inapplicable to consideration of a motion to terminate this proceeding.
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`D. Current Status of Each Such Related Litigation or Proceeding
`with Respect to Each Party in the Litigation or Proceeding
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`Sections II.B and II.C above indicate the status of each related litigation or
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`proceeding with respect to each party to the litigation or proceeding.
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`III. AGREEMENT
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`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), the Parties’
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`agreement made in connection with, or in contemplation of, the termination of the
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`proceeding is in writing, and a true and correct copy is being filed concurrently
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`5
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`herewith as Exhibit 2016.1 A true and correct copy of a confidential release is being
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`filed concurrently herewith as Exhibit 2017.2 The Parties are also filing concurrently
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`herewith a joint request under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) to treat
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`this agreement as business confidential information and keep it separate from the
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`files of the ’357 patent. The Parties certify that there are no other agreements, oral
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`or written, between the Parties made in connection with, or in contemplation of, the
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`termination of this proceeding.
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`IV. CONCLUSION
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`For all these reasons, the Parties respectfully request termination of this
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`proceeding.
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`Date: July 28, 2023
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`Respectfully submitted,
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`/Kevin D. Rodkey/
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`Kevin D. Rodkey
`Reg. No. 65,506
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, LLP
`271 17th St. NW, Suite 1400
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`1 The agreement is being filed via the Patent Trial and Appeal Board Case
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`/Peter Lambrianakos/
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`Peter Lambrianakos
`Reg. No. 58,279
`FABRICANT LLP
`411 Theodore Fremd Road, Suite 206
`South Rye, New York 10580
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`Tracking System (PTACTS) system with access to the “Board only.”
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`2 The agreement is being filed via the Patent Trial and Appeal Board Case Tracking
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`System (PTACTS) system with access to “Parties and Board.”
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`Atlanta, GA 30363
`Tel. 404.653.6484
`Fax. 404.653.6444
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`Backup Counsel for Petitioner
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`Tel. 212-257-5797
`Fax. 212-257-5796
`plambrianakos@fabricantllp.com
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`Counsel for Patent Owner
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`7
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