`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`GOOGLE LLC,
`
`Petitioner,
`
`v.
`
`JAWBONE INNOVATIONS, LLC,
`
`Patent Owner.
`
`
`
`
`
`
`
`
`Case IPR2022-01124
`
`Patent No. 11,122,357
`
`
`
`
`
`
`
`
`PETITIONER’S PRE-INSTITUTION REPLY
`
`
`
`
`
`Petitioner’s Pre-Institution Reply
`U.S. Patent No. 11,122,357
`
`I.
`II.
`
`Table of Contents
`
`The Petition Presents Compelling Evidence of Unpatentability ..................... 1
`The Fintiv Factors Favor Institution ................................................................ 3
`A.
`Fintiv Factors 2, 3, 4, and 6 Favor Institution ....................................... 3
`B.
`Factors 1 and 5 Are Neutral .................................................................. 5
`III. Conclusion ....................................................................................................... 5
`
`
`i
`
`
`
`The Board should institute review and not apply the Fintiv factors. But even
`
`if applied, the most relevant Fintiv factors (2, 3, and 4) favor institution.
`
`I.
`
`The Petition Presents Compelling Evidence of Unpatentability
`The Board will not deny institution based on Fintiv “where a petition presents
`
`compelling evidence of unpatentability.” Memo. from Director Vidal, Interim
`
`Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel
`
`District Court Litigation at 2 (U.S.P.T.O. June 21, 2022) (“Int. Procedure”). Here,
`
`Petitioner has shown such compelling evidence. For example, Petitioner has
`
`demonstrated that the combination of Kanamori (Ex. 1005), McCowan (Ex. 1006),
`
`and Elko (Ex. 1009) renders all challenged claims obvious. Paper 1 (“Pet.”) 14-76.
`
`Patent Owner’s contrary arguments lack merit. Paper 6 (“Prelim. Resp.”) 6-
`
`13. Patent Owner argues that Dr. Vipperman did not explain how he performed his
`
`linear-response simulations. Prelim. Resp. 7. To the contrary, the section of Dr.
`
`Vipperman’s declaration titled “Simulations of Virtual Microphone Responses”
`
`explained in detail the equations used for each simulation and the values of the
`
`variables in each equation based on Kanamori, McCowan, and the knowledge of a
`
`POSITA. Ex. 1003, ¶¶ 50-60. Patent Owner failed to identify any details missing
`
`from this explanation that would have prevented a POSITA from recreating his
`
`simulations. Patent Owner also argued that “1000 Hz is not a valid speech signal.”
`
`Prelim. Resp. 7-11. This argument ignores that the ’357 patent repeatedly refers to
`
`
`
`Petitioner’s Pre-Institution Reply
`U.S. Patent No. 11,122,357
`“a 1 kHz speech source.” Ex. 1001, 2:54-57, 2:62-64, 11:40-42, 12:39-41.
`
`Additionally, contrary to Patent Owner’s argument, the Petition provided ample
`
`evidence of a motivation to combine Kanamori and McCowan to make Kanamori’s
`
`noise-cancellation effective for near-field devices like headsets. Pet. 21-40. Such a
`
`modification does not “destroy the objective of the prior art,” Prelim. Resp. 13, but
`
`rather modifies it for a well-known device (e.g., headsets), supported by Kanamori,
`
`state-of-the-art evidence, and Dr. Vipperman, see, e.g., Pet. 29-30.
`
`This combination is compelling despite the district court construing terms
`
`within the ’357 patent to be indefinite. Claim Construction Order, Jawbone
`
`Innovations, LLC v. Google LLC, No. 6:21-cv-00985-ADA, Dkt. 88 at 4 (W.D. Tex.
`
`Oct. 14, 2022) (“Claim Construction Order”; Ex. 1023). The linear responses to
`
`speech shown to be obvious in the petition look like Figures 9 and 11 of the ’357
`
`patent, which are described as having different speech responses. Compare Pet. 38-
`
`39, with Ex. 1001, Figs. 9, 11, 12:55-58. The linear responses to noise shown to be
`
`obvious in the petition look like Figures 10 and 12 of the ’357 patent, which are
`
`described as having “very similar” noise responses. Compare Pet. 37-38, with
`
`Ex. 1001, Figs. 10, 12, 11:44-49, 12:44-48. The Board does not need to know the
`
`outer bounds of “substantially similar” and “substantially dissimilar” to determine
`
`that Kanamori, McCowan, and Elko render an embodiment within the scope of these
`
`terms obvious.
`
`
`
`2
`
`
`
`II. The Fintiv Factors Favor Institution
`In addition to the merits, the Fintiv factors either favor institution or are
`
`Petitioner’s Pre-Institution Reply
`U.S. Patent No. 11,122,357
`
`neutral. The Board should institute review.
`
`A. Fintiv Factors 2, 3, 4, and 6 Favor Institution
`Factor 2 favors institution because, to the extent the trial proceeds on the ’357
`
`patent, the Board’s projected final written decision date (January 6, 2024), as
`
`explained below, is before the expected trial date based on the median time to trial
`
`(January 30, 2024). Int. Procedure at 8-9. Patent Owner relies on the scheduled trial
`
`date for this factor. Prelim. Resp. 17-20. But a court’s scheduled trial date is often
`
`“unreliable” and “not by itself a good indicator of whether the district court trial will
`
`occur before the statutory deadline for a final written decision.” Int. Procedure at 8.
`
`To better assess time to trial, the Board should consider the “median time-to-trial,”
`
`and “the number of cases before the judge . . . and the speed and availability of other
`
`case dispositions.” Id. at 8-9.
`
`The median time from the filing of a civil case to trial in the Western District
`
`of Texas is 28.3 months, placing the expected trial date in the parallel litigation
`
`around January 30, 2024. Ex. 1019, 5. This is after the January 6, 2024 statutory
`
`deadline for a final written decision. Judge Albright’s high volume of open patent
`
`cases—848 as of August 2022—also makes it less likely that trial will proceed on
`
`schedule. Ex. 1020, 68. The Markman hearing occurred nearly three months after its
`
`
`
`3
`
`
`
`Petitioner’s Pre-Institution Reply
`U.S. Patent No. 11,122,357
`originally scheduled date, further demonstrating that the scheduled trial date is not
`
`reliable. Compare Ex. 1014, 2 (July 27, 2022), with Ex. 1021 (Oct. 14, 2022).
`
`Even relying on the now-expected trial date of October 13, 2023 (52 weeks
`
`from Markman), Ex. 1021; Ex. 1022, 14, this factor is neutral. DJI Europe B.V. v.
`
`Textron Innov’s Inc., IPR2022-00162, Paper 11 at 10-11 (June 7, 2022) (neutral
`
`when the scheduled trial was two months before projected FWD). Patent Owner’s
`
`cited cases do not dictate otherwise, Prelim. Resp. 16-17, as they involved larger
`
`gaps between dates, and all but one predate Fintiv and apply a different analysis.
`
`Factor 3 favors institution because the litigation is still in its early stages and
`
`Petitioner diligently filed its Petition. The district court’s Claim Construction Order
`
`is the only substantive order related to the ’357 patent. When the Board issues its
`
`institution decision, the parties will have expended few resources. Fact discovery
`
`only opened on July 28, 2022, Ex. 1014, 2, and does not close until four months after
`
`the projected institution decision, Ex. 1021; Ex. 1022, 14. The deadline for opening
`
`expert reports will not occur until May 19, 2023. Ex. 1021; Ex. 1022, 14. This factor
`
`favors institution. Progenity, Inc. v. Natera, Inc., IPR2021-00267, Paper 11 at 62-
`
`63 (June 7, 2021). Patent Owner’s lone cited case is inapposite because, there, the
`
`institution decision issued after the completion of fact and expert discovery,
`
`dispositive motions, and motions in limine, none of which is true here. See Prelim.
`
`Resp. 18 (citing Supercell, IPR2020-00513, Paper 11 at 11-12).
`
`
`
`4
`
`
`
`Petitioner’s Pre-Institution Reply
`U.S. Patent No. 11,122,357
`Factor 4 favors institution. The scheduled trial likely will have no overlap with
`
`this proceeding based on the court’s Claim Construction Order. Also, if the Board
`
`institutes review, Petitioner stipulates that it will not challenge the validity of the
`
`’357 patent in the parallel litigation based on the grounds advanced in the Petition
`
`or on any ground that utilizes Kanamori (Ex. 1005). Microsoft Corp. v. WSOU Invs.,
`
`LLC, IPR2021-00930, Paper 8 at 11 (Dec. 2, 2021).
`
`Factor 6 favors institution for the reasons stated in the Petition. Pet. 76-77.
`
`Patent Owner has not identified any allegedly cumulative references.
`
`Factors 1 and 5 Are Neutral
`B.
`Factor 1 is neutral where neither party has requested a stay of the litigation at
`
`the time of institution. Pet. 77; Sand Revolution II, LLC v. Continental Intermodal
`
`Grp.–Trucking LLC, IPR2019-01393, Paper 24 at 7 (June 16, 2020) (informative).
`
`Factor 5 is also neutral, despite Petitioner and defendant being the same parties in
`
`the district court case. See Protect Animals With Satellites v. OnPoint Sys., LLC,
`
`IPR2021-01483, Paper 11 at 17 (Mar. 4, 2022).
`
`III. Conclusion
`For these reasons and those in the petition, the Board should decline to
`
`exercise its discretion under 35 U.S.C. § 314(a) and should institute review.
`
`Dated: October 24, 2022
`
`
`
`
`
`
`
`
`By: /Daniel C. Cooley/
` Daniel C. Cooley
` Backup Counsel for Petitioner
` Reg. No. 59,639
`
`
`
`
`
`
`
`5
`
`
`
`Petitioner’s Pre-Institution Reply
`U.S. Patent No. 11,122,357
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the foregoing PETITIONER’S
`
`PRE-INSTITUTION REPLY was served on October 24, 2022, via email
`
`directed to counsel of record for the Patent Owner at the following:
`
`
`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
`
`PTAB@fabricantllp.com
`
`
`
`Dated: October 24, 2022
`
`
`
`
`
`
`
`
`
`
`
`
`By: /Lisa C. Hines/
` Lisa C. Hines
` Senior Litigation Legal Assistant
` Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
`
`
`
`
`
`6
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
