UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and APPLE INC.,
`
`Petitioners,
`
`v.
`
`JAWBONE INNOVATIONS, LLC,
`
`Patent Owner.
`
`
`Patent No. 11,122,357
`Filing Date: August 5, 2013
`Issue Date: September 14, 2021
`
`Inventor: Gregory C. Burnett
`Title: FORMING VIRTUAL MICROPHONE ARRAYS USING DUAL
`OMNIDIRECTIONAL MICROPHONE ARRAY (DOMA)
`
`
`
`
`__________________________________________________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`Case No. IPR2022-01321
`__________________________________________________________________
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`IPR2022-01321
`PATENT NO. 11,122,357
`
`Page(s)
`
`
`INTRODUCTION ........................................................................................... 1
`I.
`THE ’357 PATENT ......................................................................................... 2
`II.
`III. THE ALLEGED PRIOR ART ........................................................................ 2
`A. Kanamori (U.S. Patent Application Publication No.
`2004/0185804) ....................................................................................... 2
`B. McCowan (Iain A. McCowan et al., Near-Field Adaptive
`Beamformer for Robust Speech Recognition, Digital Signal
`Processing, Vol. 12, Issue 1 (2002), 87-106) ........................................ 4
`Elko (U.S. Patent No. 8,942,387) .......................................................... 6
`C.
`IV. CLAIM CONSTRUCTION ............................................................................ 6
`V.
`LEVEL OF ORDINARY SKILL IN THE ART ............................................. 6
`VI. ARGUMENT ................................................................................................... 7
`A. Kanamori and McCowan Do Not Render Obvious Claims 1-
`20 ........................................................................................................... 7
`1.
`Dr. Vipperman’s Analysis is Based Entirely on
`Hindsight ..................................................................................... 7
`Petitioner’s Combination Does Not Disclose or Render
`Obvious “wherein the first virtual microphone and the
`second virtual microphone are distinct virtual
`directional microphones with substantially similar
`responses to noise and substantially dissimilar responses
`to speech;” as Required by Claims 1-20 ..................................... 9
`Petitioner Does Not Show That a POSITA Would Be
`Motivated to Combine Kanamori with McCowan ................... 11
`VII. THE BOARD SHOULD DENY INSTITUTION IN THE
`DISCRETION OF THE DIRECTOR UNDER 35 U.S.C. §314(A) ............. 14
`
`3.
`
`2.
`
`i
`
`

`

`C.
`
`IPR2022-01321
`PATENT NO. 11,122,357
`A. No Stay of the Parallel District Court Litigation ................................ 16
`B.
`The Board’s Written Decision Deadline Will Come Long
`After the Trial Date ............................................................................. 17
`Significant Investment by the Time of Institution Favors
`Discretionary Denial............................................................................ 18
`The District Court Litigation Involves the Same Claims and
`the Same Arguments ........................................................................... 19
`The Parallel District Court Litigation and the Petition Involve
`the Same Parties .................................................................................. 20
`Other Circumstances Favor Denial of Institution ............................... 20
`F.
`VIII. CONCLUSION .............................................................................................. 21
`
`
`D.
`
`E.
`
`ii
`
`

`

`IPR2022-01321
`PATENT NO. 11,122,357
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`AGIS Software Dev. LLC v. Google LLC,
`No. 2:19-cv-00361-JRG, 2021 WL 465424 (E.D. Tex. Feb. 9,
`2021) ................................................................................................................... 17
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (P.T.A.B. Mar. 20, 2020) ............................. 14, 15, 19
`Broadcom Corp. v. Emulex Corp.,
`732 F.3d 1325 (Fed. Cir. 2013) .......................................................................... 12
`Chemours Co. FC, LLC v. Daikin Indus.,
`No. 2020-1289, 2021 WL 3085514 (Fed. Cir. July 22, 2021) ........................... 13
`Cisco Sys., Inc. v. Ramot at Tel Aviv Univ. Ltd.,
`IPR2020-00122, Paper 15 (P.T.A.B. May 15, 2020) ......................................... 18
`Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha,
`IPR2016-01357, Paper 19 (P.T.A.B. Sept. 6, 2017) ........................................... 16
`Innogenetics, N.V. v. Abbott Lab’ys,
`512 F.3d 1363 (Fed. Cir. 2008) .......................................................................... 12
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) .......................................................................... 11
`Jawbone Innovations, LLC v. Google LLC,
`No. 6:21-cv-00985-ADA, Dkt. 23 (W.D. Tex. Dec. 23, 2021) .......................... 16
`Los Angeles Biomedical Rsch. Inst. at Harbor-UCLA Med. Ctr. v.
`Eli Lilly and Co., 849 F.3d 1049 (Fed. Cir. 2017) .............................................. 11
`Next Caller Inc. v. TrustID, Inc.,
`IPR2019-00961, -00962, Paper 10, at 8-16 (P.T.A.B. Oct. 16,
`2019) ................................................................................................................... 17
`
`iii
`
`

`

`IPR2022-01321
`PATENT NO. 11,122,357
`
`NHK Spring Co. v. Intri-Plex Techs., Inc.,
`IPR2018-00752, Paper 8 (P.T.A.B. Sept. 12, 2018) ........................................... 15
`Pers. Web Techs., LLC v. Apple, Inc.,
`848 F.3d 987 (Fed. Cir. 2017) .....................................................................passim
`RFCyber Corp. v. Google LLC,
`No. 2:20-cv-00274-JRG, Dkt. 201 (E.D. Tex. Jan. 4, 2022) .............................. 16
`Samsung Elecs. Am., Inc. v. Uniloc 2017 LLC,
`IPR2019-01218, Paper 7 (P.T.A.B. Jan. 7, 2020) .............................................. 17
`Sotera Wireless, Inc. v. Masimo Corp.,
`IPR2020-01019, Paper 12 (P.T.A.B. Dec. 1, 2020) ........................................... 20
`Supercell Oy v. Gree, Inc.,
`IPR2020-00513, Paper 11 (P.T.A.B. June 24, 2020) ......................................... 19
`Trivascular, Inc. v. Samuels,
`812 F.3d 1056 (Fed. Cir. 2016) .......................................................................... 13
`In re Van Os,
`844 F.3d 1359 (Fed. Cir. 2017) .......................................................................... 12
`Statutes
`35 U.S.C. § 314(a) ............................................................................................. 15, 21
`35 U.S.C. § 316(a)(11) ............................................................................................. 17
`
`
`iv
`
`

`

`
`
`Exhibit No.
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`IPR2022-01321
`PATENT NO. 11,122,357
`
`EXHIBIT LIST
`
`Description of Document
`Apple, Inc.’s Opening Claim Construction Brief in (Public
`Version) Jawbone Innovations, LLC v. Apple, Inc., Case
`No. 6:21-cv-00984-ADA, dated May 25, 2022
`Google LLC’s Opening Claim Construction Brief (Public
`Version) in Jawbone Innovations, LLC v. Google LLC,
`Case No. 6:21-cv-00985-ADA, dated May 25, 2022
`Defendant Google LLC’s Opposed Motion to Transfer to
`the Northern District of California (Public Version), Dkt.
`43, in Jawbone Innovations, LLC v. Google LLC, Case No.
`6:21-cv-00985-ADA dated April 29, 2022
`Defendant’s Preliminary Invalidity Contentions in Jawbone
`Innovations, LLC v. Apple, Inc., Case No. 6:21-cv-00984-
`ADA, dated April 6, 2022
`Defendants’ Preliminary Invalidity Contentions and
`Eligibility Contentions in Jawbone Innovations, LLC v.
`Samsung Electronics Co., et al., Case No. 2:21-cv-00186-
`JRG, dated March 24, 2022
`First Amended Complaint in Jawbone Innovations, LLC v.
`Apple Inc., No. 6:21-cv-00984-ADA, Dkt. 19 (W.D. Tex.
`Dec. 23, 2021)
`Amended Scheduling Order in Jawbone Innovations, LLC
`v. Apple Inc., No. 6:21-cv-00984-ADA, Dkt. 107 (W.D.
`Tex. Oct. 20, 2022)
`Order Denying Motion to Stay in RFCyber Corp. v. Google
`LLC, No. 2:20-cv-00274-JRG, Dkt. 201 (E.D. Tex. Jan. 4,
`2022)
`Claim Construction Order in Jawbone Innovations, LLC v.
`Samsung Electronics Co., et al., Case No. 2:21-cv-00186-
`JRG, Dkt. 119 (E.D. Tex. Aug. 17, 2022)
`Joint Motion to Enter Amended Scheduling Order in
`Jawbone Innovations, LLC v. Apple Inc., No. 6:21-cv-
`00984-ADA, Dkt. 106 (W.D. Tex. Oct. 19, 2022)
`Plaintiff’s Disclosure of Asserted Claims and Infringement
`Contentions in Jawbone Innovations, LLC v. Apple Inc.,
`No. 6:21-cv-00984-ADA, dated January 13, 2022
`
`v
`
`

`

`IPR2022-01321
`PATENT NO. 11,122,357
`
`Description of Document
`Defendants Samsung Electronics Co., Ltd. and Samsung
`Electronics America, Inc. Final Election of Asserted Prior
`Art in Jawbone Innovations, LLC v. Samsung Elecs. Co., et
`al., Case No. 2:21-cv-00186-JRG, dated September 19,
`2022.
`
`Exhibit No.
`2012
`
`
`
`
`vi
`
`

`

`IPR2022-01321
`PATENT NO. 11,122,357
`
`I.
`
`INTRODUCTION
`On July 27, 2022, Samsung Electronics Co., Ltd., Samsung Electronics
`
`America, Inc., and Apple Inc. (collectively, “Petitioner”) filed a Petition requesting
`
`inter partes review of claims 1-20 (“Challenged Claims”) of U.S. Patent No.
`
`11,122,357 (“the ’357 Patent”) (Ex. 1001). Paper 4 (“Petition” or “Pet.”). The
`
`declaration of Jeffrey S. Vipperman, Ph.D. (Ex. 1003) accompanied the Petition. On
`
`August 5, 2022, the Board issued a Notice of Filing Date Accorded for the Petition
`
`and set the time for filing patent owner’s preliminary response. Paper 7.
`
`The Board should deny Petitioner’s Petition because (1) the Petition is based
`
`almost entirely on hindsight and its motivation to modify the art to arrive at the
`
`claims is based on incorrect factual assumptions––Petitioner’s assumptions are
`
`directly contradicted by the art to which it cites; (2) Petitioner’s prior art references
`
`fail to disclose or render obvious the key limitations and concepts of the Challenged
`
`Claims, more specifically the “wherein the first virtual microphone and the second
`
`virtual microphone are distinct virtual directional microphones with substantially
`
`similar responses to noise and substantially dissimilar responses to speech”
`
`limitation present in each Challenged Claim; and (3) Petitioner’s motivations to
`
`combine Kanamori with McCowan and Elko are pure speculation.
`
`Moreover, the Board should exercise its discretion to deny institution, as trial
`
`in the concurrent litigation shall be completed long before the Board issues a Final
`
`1
`
`

`

`IPR2022-01321
`PATENT NO. 11,122,357
`
`Written Decision.
`
`II. THE ’357 PATENT
`The ’357 Patent discloses and claims apparatuses for implementing “dual
`
`omnidirectional microphone array noise suppression.” ’357 Patent, Abstract. The
`
`prior art was concerned with “nulling out noise sources” to reduce noise. Id. By
`
`contrast, the ’357 Patent seeks to remove speech from its noise signal. Id.; see also
`
`id., 4:61-5:4. This highly effective removal of speech from the noise signal enables
`
`the invention to effectively remove noise from its speech signal. Id., Abstract.
`
`The ’357 Patent uses at least two physical microphones to generate virtual
`
`microphones which have similar noise responses and dissimilar speech responses.
`
`’357 Patent, Abstract; 3:54-67. In embodiments, one of the signals will have a null
`
`in the direction of speech, which results in a “clean” noise signal. Id., 4:1-13, 5:1-4.
`
`With speech removed from the noise signal, the noise signal can then, in turn, be
`
`used to effectively remove noise from the speech. Id., 13:1-13.
`
`III. THE ALLEGED PRIOR ART
`A. Kanamori (U.S. Patent Application Publication No.
`2004/0185804)
`Kanamori is directed to “a microphone device and an audio player which
`
`detects a desired sound coming from a specific direction with noise being
`
`suppressed.” Ex. 1005, [0002]. Kanamori’s system comprises “a microphone device
`
`which detects a target sound coming from a direction of the target sound” which
`
`2
`
`

`

`IPR2022-01321
`PATENT NO. 11,122,357
`includes “a signal generating section, a determining section, an adaptive filter
`
`section, a subtracting section, and a noise suppressing section.” Kanamori’s “signal
`
`generating section” generates both a “main signal . . . with a sensitivity in the
`
`direction of the target sound and a noise reference signal . . . with a sensitivity higher
`
`in another direction than in the direction of the target sound.” Id., [0019]. Kanamori’s
`
`noise reference signal includes signals from both the target sound and noise,
`
`requiring an “adaptive filter section” to generate “a signal indicative of a signal
`
`component of the target sound included in the noise reference signal.” Id. Consistent
`
`with that approach, Kanamori’s noise reference signal (“m2”) includes multiple
`
`nulls:
`
`Id., Fig. 18C; see also id., Figs. 1, 8, 10-12, 16B, 17B-C, 19, and 20. Kanamori
`
`similarly contemplates a main signal (m1) with a different directivity pattern than its
`
`
`
`3
`
`

`

`IPR2022-01321
`PATENT NO. 11,122,357
`noise reference in the direction away from speech, generally including at least one
`
`null directed away from a speech source:
`
`
`
`Id., Fig. 18B; see also id., Figs. 1, 8, 10-12, 14-15, and 20.
`
`Kanamori discusses at least 11 separate embodiments of its system, variously
`
`comprising up to six microphones. Id., [0193].
`
`B. McCowan (Iain A. McCowan et al., Near-Field Adaptive
`Beamformer for Robust Speech Recognition, Digital Signal
`Processing, Vol. 12, Issue 1 (2002), 87-106)
`The McCowan paper discusses a near-field adaptive beamformer
`
`(“hereinafter “NFAB”) “implemented using the standard generalized sidelobe
`
`canceler (GSC) system structure.” Ex. 1006 at 87. Specifically, McCowan
`
`contemplates “a fixed near-field superdirective beamformer” (hereinafter “NFSD”)
`
`used with “a near-field compensation unit” and “a standard generalized sidelobe
`
`canceling blocking matrix and adaptive filters.” Id. at 90-91. McCowan’s
`
`4
`
`

`

`IPR2022-01321
`PATENT NO. 11,122,357
`experimental system used an eleven-microphone array split into four sub-arrays
`
`associated with different frequency ranges. Id. at 96.
`
`McCowan’s NFSD comprises an “upper path,” while “[t]he blocking matrix
`
`and adaptive filters essentially implement a conventional (nonsuperdirective)
`
`beamformer that adaptively focuses on the major sources of noise” comprising a
`
`“lower path.” Id. at 98. McCowan’s upper path NFSD includes at least four nulls,
`
`while its lower path NFAB includes at least two nulls, and many more at higher
`
`frequencies:
`
`
`
`
`
`
`
`
`
`Id. at 98-99. The “overall beamformer directivity pattern” of McCowan’s NFAB
`
`also includes four nulls. Id. at 100.
`
`McCowan contemplates that the discussed beamformers will be applied in
`
`near-field environments, and specifically notes that it employs “a spherical
`
`5
`
`

`

`IPR2022-01321
`PATENT NO. 11,122,357
`propagation model in its formulation, rather than assuming a far-field model.” Id.
`
`at 88 (emphasis added).
`
`C. Elko (U.S. Patent No. 8,942,387)
`U.S. Patent No. 8,942,387 (“Elko”) (Ex. 1009) was filed on March 9, 2007
`
`and issued on January 27, 2015. Elko is directed to “techniques for reducing wind-
`
`induced noise in microphone systems, such as those in hearing aids and mobile
`
`communication devices, such as laptop computers and cell phones.” Elko, 1:25-28.
`
`IV. CLAIM CONSTRUCTION
`For the purposes of this Preliminary Response only, Patent Owner believes
`
`that claim construction is not required to resolve any issues.
`
`V. LEVEL OF ORDINARY SKILL IN THE ART
`For the purposes of this Preliminary Response only, Patent Owner utilizes
`
`Petitioner’s proposed level of skill in the art—“a minimum of a bachelor’s degree in
`
`computer engineering, computer science, electrical engineering, mechanical
`
`engineering, or a similar field, and approximately three years of industry or academic
`
`experience in a field related to acoustics, speech recognition, speech detection, or
`
`signal processing. Work experience can substitute for formal education and
`
`additional formal education can substitute for work experience (citation omitted).”
`
`Pet. at 6.
`
`6
`
`

`

`IPR2022-01321
`PATENT NO. 11,122,357
`
`VI. ARGUMENT
`A. Kanamori and McCowan Do Not Render Obvious Claims
`1-20
`1.
`
`Dr. Vipperman’s Analysis is Based Entirely on
`Hindsight
`The Petition is based almost entirely on hindsight and speculation cloaked in
`
`an expert declaration. The claims of the ’357 Patent identify specific combinations
`
`of microphones, virtual microphones, and linear responses to speech and noise. The
`
`claimed combinations do not exist in the prior art. More specifically, the prior art
`
`does not disclose or depict any responses to either speech or noise which are all
`
`explicitly required by the Challenged Claims. Petitioner relies, instead, on
`
`“simulations” purportedly run by its expert Dr. Vipperman in 2022 to arrive at the
`
`claims. This type of analysis constitutes impermissible hindsight, and the Petition
`
`should be denied.
`
`Petitioner relies on Dr. Vipperman’s “simulations” in numerous places
`
`throughout the Petition. Pet. at 24, 27, and 37-39. Neither Petitioner in its Petition
`
`nor Dr. Vipperman in his Declaration identify how these simulations were
`
`performed. Dr. Vipperman does not disclose any source code for running his
`
`simulations or even what system could be used to run these simulations.
`
`Dr. Vipperman also fails to identify all of the inputs to the alleged simulations. At
`
`this stage, without the tools necessary to evaluate Dr. Vipperman’s simulations, the
`
`7
`
`

`

`IPR2022-01321
`PATENT NO. 11,122,357
`Board should reject Dr. Vipperman’s analysis based on the alleged simulations and,
`
`because the Petition relies on Dr. Vipperman’s analysis to support all “response”
`
`limitations, the Board should deny the Petition in its entirety.
`
`Dr. Vipperman’s simulations also suffer from a fatal flaw––reliance on a
`
`“1000 Hz signal” as an input for both noise and speech. E.g., Pet. at 38. (referencing
`
`“a 1000 Hz signal originating 0.1 m (speech) from the microphone array”) However,
`
`1000 Hz is not a valid or representative speech signal. Instead, a speech signal should
`
`be well below 1000 Hz and potentially in the 100 Hz to 300 Hz range. McCowan,
`
`for example, states “the main objective of the proposed technique is to produce an
`
`adaptive beamformer that exhibits good low frequency performance for near-field
`
`speech sources.” Ex. 1006 at 97 (emphasis in original). McCowan further states
`
`“[l]ow frequency performance is critical for speech processing applications, as
`
`significant speech energy is located below 1 kHz.” Ex. 1006 at 88 (emphasis added).
`
`Therefore, Dr. Vipperman should not have used 1 kHz as the speech input for his
`
`simulations as one of skill in the art would not have been motivated to analyze 1 kHz
`
`speech inputs. Without simulations at the proper frequencies, Petitioner cannot show
`
`that Kanamori or McCowan teach explicitly or render obvious the limitation “the
`
`second linear response to noise being substantially similar to the first linear
`
`response to noise, and the second linear response to speech being substantially
`
`dissimilar to the first linear response to speech (emphasis added).”
`
`8
`
`

`

`IPR2022-01321
`PATENT NO. 11,122,357
`Accordingly, the Petition should be denied in its entirety.
`
`2.
`
`Petitioner’s Combination Does Not Disclose or
`Render Obvious “wherein
`the
`first virtual
`microphone and the second virtual microphone are
`distinct virtual directional microphones with
`substantially similar responses
`to noise and
`substantially dissimilar responses to speech;” as
`Required by Claims 1-20
`Claim 1 and its dependent claims (2-14) and claim 15 and its dependent claims
`
`(16-20) recite “wherein the first virtual microphone and the second virtual
`
`microphone are distinct virtual directional microphones with substantially similar
`
`responses to noise and substantially dissimilar responses to speech.”1
`
`Petitioner admits that Kanamori does not disclose this limitation but argues
`
`that it would be obvious over Kanamori in view of McCowan. Pet. at 22. In
`
`particular, Petitioner argues that “[i]t would have been obvious to combine
`
`Kanamori and McCowan
`
`to
`
`improve Kanamori’s near-field response by
`
`implementing McCowan’s near-field compensation.” Id.
`
`As discussed below, a POSITA would not have been motivated to modify
`
`Kanamori to include McCowan’s near-field compensation. Moreover, even
`
`assuming that a POSITA was motivated to make such a modification, Petitioner has
`
`
`1 Apple relies on its claim 1 arguments with respect to claim 15 and its dependents.
`
`Pet. at 72.
`
`9
`
`

`

`IPR2022-01321
`PATENT NO. 11,122,357
`not shown that the resulting combination would disclose or render obvious the
`
`limitation “substantially similar responses to noise and substantially dissimilar
`
`responses to speech.”
`
`Petitioner attempts to show that the first and second linear responses are
`
`substantially dissimilar with respect to speech by examining a 1000 Hz signal. Pet.
`
`at 38-39 (“Dr. Vipperman also produced the following plots depicting m1’s and
`
`m2’s linear responses, respectively, to a 1000 Hz signal originating 0.1 m (speech)
`
`from the microphone array, assuming a speech direction of 0°” (emphasis added)).
`
`As discussed above, neither Dr. Vipperman nor the Petition provide any
`
`evidence that 1000 Hz (1kHz) is a “speech” signal. Dr. Vipperman asserts that “the
`
`frequency of the speech signal was assumed to be 1000 Hz, which is within the
`
`typical frequency range for speech.” Ex. 1003, ¶ 54. Dr. Vipperman cites to
`
`McCowan at pages 87 and 95. Id. However, McCowan does not state that 1kHz is a
`
`reasonable frequency for testing a speech response. Instead, McCowan notes that
`
`“significant speech energy is located below 1 kHz.” Ex. 1006 at 88 (emphasis
`
`added). McCowan further provides its directivity patterns for signals at 300 Hz. Id.
`
`at 98.
`
`Accordingly, Petitioner has not shown that its combination discloses or
`
`renders obvious the limitation that the “first virtual microphone and the second
`
`virtual microphone are distinct virtual directional microphones with substantially
`
`10
`
`

`

`IPR2022-01321
`PATENT NO. 11,122,357
`similar responses to noise and substantially dissimilar responses to speech,” as
`
`required by all Challenged Claims. The Board should, therefore, deny the Petition.
`
`3.
`
`Petitioner Does Not Show That a POSITA Would Be
`Motivated to Combine Kanamori with McCowan
`Petitioner argues that the claims are rendered obvious over a combination of
`
`Kanamori with McCowan’s “near-field compensation.” Pet. at 24-40. Petitioner’s
`
`obviousness arguments are predicated on the idea that “[i]t would have been obvious
`
`to implement Kanamori’s microphone device in a device intended to receive near-
`
`field speech, such as a headset.” Pet. at 24. Petitioner provides no support for its
`
`contention.
`
`In arriving at an obviousness determination, the Board must sufficiently
`
`explain and support the conclusions that the prior art references disclose all the
`
`elements recited in the Challenged Claims and a relevant skilled artisan not only
`
`could have made but would have been motivated to combine all the prior art
`
`references in the way the patent claims. Pers. Web Techs., LLC v. Apple, Inc., 848
`
`F.3d 987, 994 (Fed. Cir. 2017). That is, even if all the claim elements are found
`
`across a number of references, an obviousness determination must consider whether
`
`a POSITA would have been motivated to combine those references. Intelligent Bio-
`
`Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1368 (Fed. Cir. 2016); Los
`
`Angeles Biomedical Rsch. Inst. at Harbor-UCLA Med. Ctr. v. Eli Lilly and Co., 849
`
`11
`
`

`

`IPR2022-01321
`PATENT NO. 11,122,357
`F.3d 1049, 1067 (Fed. Cir. 2017) (vacating and remanding an obviousness
`
`determination, in part, because the Board did not make factual findings as to whether
`
`there was an apparent reason to combine all three prior art references to achieve the
`
`claimed invention and whether a POSITA would have had a reasonable expectation
`
`of success from such a combination). This combination determination, as supported
`
`by an articulated motivation to combine, requires a plausible rationale as to why
`
`those prior art references would have worked together. Broadcom Corp. v. Emulex
`
`Corp., 732 F.3d 1325, 1335 (Fed. Cir. 2013). Absent some articulated rationale, a
`
`“common sense” finding is no different than the conclusory statement “would have
`
`been obvious.” In re Van Os, 844 F.3d 1359, 1361 (Fed. Cir. 2017). Of additional
`
`importance, “knowledge of a problem and motivation to solve it are entirely different
`
`from motivation to combine particular references.” Innogenetics, N.V. v. Abbott
`
`Lab’ys, 512 F.3d 1363, 1373 (Fed. Cir. 2008).
`
`Petitioner’s argument that a POSITA would have used Kanamori to
`
`implement a headset is entirely based on scattered statements throughout Kanamori
`
`discussing “loudspeakers or calling.” Pet. at 30. Nothing in Kanamori discusses the
`
`use of headsets; instead, the reference to “loudspeakers” indicates that “calling”
`
`refers to conference-room type speakerphones. Indeed, the only exemplary distances
`
`between an audio source and microphone in Kanamori are far greater than would be
`
`found in a headset. E.g.¸ Kanamori, Fig. 9 (showing 50cm between “talker” and
`
`12
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`

`

`IPR2022-01321
`PATENT NO. 11,122,357
`microphone). Kanamori further discusses that the invention should be used in areas
`
`where reflected waves may be generated by the physical structure of embodiment
`
`devices, “such as a box to which the microphone unit is mounted or a substance that
`
`surrounds the microphone device.” Kanamori, [0084].
`
`Petitioner’s expert provides no stronger basis to combine the two references.
`
`Indeed, Dr. Vipperman merely parrots Petitioner’s attorney argument. See Ex. 1003,
`
`¶ 87.
`
`Implementing McCowan’s “near-field compensation” would
`
`render
`
`Kanamori useless for its intended purpose: providing a microphone device that
`
`operates well “in a noisy environment or reflective sound field . . . such as being
`
`used for loudspeakers or calling.” E.g., Kanamori, [0115]. Including McCowan’s
`
`near-field compensation would render the device useless for anything other than a
`
`headset or other near-field-only device. And Kanamori is intended to provide a
`
`microphone device that provides good far-field receptions, such as a “video
`
`recorder” or “loudspeaker.” Kanamori, [0115], [0151], [0188]. A POSITA would
`
`not be motivated to destroy the objective of the prior art. Trivascular, Inc. v.
`
`Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016); Chemours Co. FC, LLC v. Daikin
`
`Indus., No. 2020-1289, 2021 WL 3085514, at *4-*5 (Fed. Cir. July 22, 2021).
`
`The Petition should therefore be denied.
`
`13
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`

`

`IPR2022-01321
`PATENT NO. 11,122,357
`VII. THE BOARD SHOULD DENY INSTITUTION IN THE
`DISCRETION OF THE DIRECTOR UNDER 35 U.S.C. §314(A)
`The circumstances of the parallel District Court proceedings in Texas,
`
`Jawbone Innovations, LLC v. Apple Inc., No. 6:21-cv-00984-ADA (W.D. Tex.)
`
`(“the Apple Action”), Jawbone Innovations LLC v. Samsung Electronics Co., No.
`
`2:21-cv-00186-JRG-RSP
`
`(E.D. Tex.)
`
`(“the Samsung Action”), Jawbone
`
`Innovations, LLC v. Google LLC, No. 6:21-cv-00985-ADA (W.D. Tex.), and
`
`Jawbone Innovations, LLC v. Amazon.com, Inc. et al., No. 5:22-cv-06727-NC (N.D.
`
`Cal.) necessitate denial of the Petition under the Board’s precedent, as an evaluation
`
`of the factors considered in relation to efficiency, fairness, and the merits strongly
`
`favors denial. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11, at 6 (P.T.A.B.
`
`Mar. 20, 2020) (precedential) (considering (a) “whether the court granted a stay or
`
`evidence exists that one may be granted if a proceeding is instituted;” (b) “proximity
`
`of the court’s trial date to the Board’s projected statutory deadline for a final written
`
`decision;” (c) “investment in the parallel proceeding by the court and the parties;”
`
`(d) “overlap between issues raised in the petition and in the parallel proceeding;” (e)
`
`“whether the petitioner and the defendant in the parallel proceeding are the same
`
`party;” and (f) “other circumstances that impact the Board’s exercise of discretion,
`
`including the merits.”).
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`14
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`

`

`IPR2022-01321
`PATENT NO. 11,122,357
`As shown above, the Petition does not present a compelling case on the merits.
`
`The obviousness arguments fail to disclose or render obvious multiple limitations,
`
`and Petitioner has not shown a legitimate motivation to combine its references.
`
`As set forth below, the Fintiv factors demonstrate that efficiency and integrity
`
`of the AIA are best served by denying review. First, no Court has granted a stay and
`
`there is no evidence that any Court will grant one. See infra Section VII.A. Second,
`
`trial in the Samsung Action (set for February 2023) will be complete a year before
`
`the projected statutory deadline for a Final Written Decision in February 2024. See
`
`infra Section VII.B. Third, the parties have already invested massive resources
`
`developing legal and factual issues of validity and infringement, including multiple
`
`expert reports in the Samsung Action. See infra Section VII.C. Fourth, there is
`
`overlap between the Challenged Claims and those at issue in the parallel
`
`proceedings. See infra Section VII.D. Fifth, Petitioner and Patent Owner are the
`
`same parties in both this proceeding and the Samsung and Apple Actions. See infra
`
`Section VII.E. Finally, as shown above, Petitioner’s references, even taken at face
`
`value, lack multiple limitations of the claims and cannot render any claim obvious.
`
`Accordingly, the Board should exercise its discretion under § 314(a) and deny
`
`the Petition because institution of this proceeding would not be consistent with the
`
`objective of the AIA to “provide an effective and efficient alternative to district court
`
`litigation.” NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8, at
`
`15
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`

`

`IPR2022-01321
`PATENT NO. 11,122,357
`20 (P.T.A.B. Sept. 12, 2018) (quoting Gen. Plastic Indus. Co. v. Canon Kabushiki
`
`Kaisha, IPR2016-01357, Paper 19, at 16–17 (P.T.A.B. Sept. 6, 2017)
`
`(precedential)).
`
`A. No Stay of the Parallel District Court Litigation
`In addition to the ’357 Patent, the Apple Action includes U.S. Patent Nos.
`
`8,019,091, 7,246,058, 8,280,072, 8,326,611, 8,467,543, 8,321,213, 8,503,691, and
`
`10,779,080. See Ex. 2006, Jawbone Innovations, LLC v. Apple Inc., No. 6:21-cv-
`
`00984-ADA, Dkt. 19 (W.D. Tex. Dec. 23, 2021). Moreover, the Samsung Action
`
`similarly includes U.S. Patent Nos. 8,019,091, 10,779,080, 8,467,543, and
`
`8,503,691.
`
`Petitioner has not moved the Court to stay the Apple Action pending the
`
`resolution of this IPR, though it claims to intend to seek such a stay. Pet. at 77. Thus,
`
`there is no evidence that a stay will be granted. Indeed, even if the Western District
`
`of Texas were to stay the Apple Action, there is no evidence that the Eastern District
`
`of Texas would stay the Samsung Action.2 Accordingly, this factor weighs in favor
`
`of discretionary denial.
`
`
`2 The consistent and long-standing practice in the Eastern District of Texas is to deny
`
`motions to stay, unless all asserted claims in the case are subject to instituted
`
`proceedings in the PTAB. RFCyber Corp. v. Google LLC, No. 2:20-cv-00274-JRG,
`
`
`
`16
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`

`

`IPR2022-01321
`PATENT NO. 11,122,357
`The Board’s Written Decision Deadline Will Come Long
`After the Trial Date
`Trial is set to begin on February 6, 2023 in the Samsung Action. Ex. 1021.
`
`B.
`
`Pursuant to 35 U.S.C. § 316(a)(11), the projected statutory deadline for a Final
`
`Written Decision in this proceeding is in February 2024, a year later. Trial is set for
`
`September 27, 2023 in