U.S. Patent No. 11,122,357
`IPR2022-01321
`
`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
`
`Case IPR2022-01321
`
`U.S. Patent No. 11,122,357
`
`PETITIONER’S PRELIMINARY REPLY
`
`
`IPR2022-01321
`
`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
`
`Case IPR2022-01321
`
`U.S. Patent No. 11,122,357
`
`PETITIONER’S PRELIMINARY REPLY
`
`
`
`U.S. Patent No. 11,122,357
`IPR2022-01321
`
`PETITIONERS’ UPDATED EXHIBIT LIST
`
`Description
`Exhibit
`Ex. 1001 U.S. Patent No. 11,122,357 to Burnett (“the ’357 patent”)
`
`Ex. 1002 File History of U.S. Patent No. 11,122,357
`
`Ex. 1003 Declaration of Dr. Jeffrey S. Vipperman, Ph.D.
`
`Ex. 1004 Curriculum Vitae of Jeffrey S. Vipperman, Ph.D.
`
`Ex. 1005 U.S. Patent Application Publication No. 2004/0185804 to Kanamori
`et al. (“Kanamori”)
`
`Ex. 1006 Iain A. McCowan et al., Near-Field Adaptive Beamformer for Robust
`Speech Recognition, Digital Signal Processing, Vol. 12, Issue 1
`(2002), 87-106 (“McCowan”)
`
`Ex. 1007 Declaration of Shauna L. Wiest Regarding McCowan
`
`Ex. 1008 U.S. Patent Application Publication No. 2007/0244698 to Dugger et
`al. (“Dugger”)
`
`Ex. 1009 U.S. Patent No. 8,942,387 to Elko (“Elko”)
`
`Ex. 1010 U.S. Patent No. 7,171,008 to Elko (“Elko ’008”)
`
`Ex. 1011 U.S. Patent Application Publication No. 2003/0031328 to Elko et al.
`(“Elko ’328”)
`
`Ex. 1012 U.S. Patent Application Publication No. 2008/0152167 to Taenzer
`(“Taenzer”)
`
`Ex. 1013 Certified Translation of Japanese Unexamined Patent Application
`Publication No. H11-18186 and Translation (“Ikeda”)
`
`Ex. 1014 Scheduling Order, Jawbone Innovations, LLC v. Google LLC,
`No. 6:21-cv-00985-ADA, Dkt. 27 (W.D. Tex. Jan. 7, 2022)
`
`
`
`U.S. Patent No. 11,122,357
`IPR2022-01321
`
`Exhibit
`
`Description
`
`Ex. 1015 U.S. Patent Application Publication No. 2006/0120537 to Burnett et
`al. (“Burnett”)
`
`Ex. 1016 Docket Control Order, Jawbone Innovations, LLC v. Amazon.com,
`Inc. et al., No. 2:21-cv-00435, Dkt. 33 (E.D. Tex. Apr. 6, 2022)
`
`Ex. 1017 Lawrence E. Kinsler et al., Fundamentals of Acoustics, John Wiley &
`Sons, Inc. (4th ed. 2000)
`
`Ex. 1018 M. P. Norton et al., Fundamentals of Noise and Vibration Analysis for
`Engineers, Cambridge Univ. Press (2d ed. 2003)
`
`Ex. 1019 Complaint in Jawbone Innovations, LLC v. Samsung Elecs. Co., Ltd.,
`2:21-cv-00186 (E.D. Tex. May 27, 2021)
`
`Ex. 1020 First Amended Complaint in Jawbone Innovations, LLC v. Samsung
`Elecs. Co., Ltd., 2:21-cv-00186 (E.D. Tex. October 26, 2021)
`
`Ex. 1021 Second Amended Docket Control Order in Jawbone Innovations, LLC
`v. Samsung Elecs. Co., Ltd., 2:21-cv-00186 (E.D. Tex.)
`
`Ex. 1022 Stipulation to be filed in Jawbone Innovations, LLC v. Samsung Elecs.
`Co., Ltd., 2:21-cv-00186 (E.D. Tex.)
`
`Ex. 1023 Plaintiff’s Election of Asserted Claims in Jawbone Innovations, LLC
`v. Samsung Elecs. Co., Ltd., 2:21-cv-00186 (E.D. Tex.)
`
`Ex. 1024 Complaint in Jawbone Innovations, LLC v. Apple Inc., Case No. 6:21-
`cv-00984 (W.D. Tex. September 23, 2021)
`
`Ex. 1025 Scheduling Order in Jawbone Innovations, LLC v. Apple Inc., Case
`No. 6:21-cv-00984 (W.D. Tex. January 7, 2022) (summons issued as
`to Apple Inc. 9/23/2021)
`Ex. 1026 Stipulation to be filed in Jawbone Innovations, LLC v. Apple Inc.,
`Case No. 6:21-cv-00984 (W.D. Tex.)
`
`
`
`U.S. Patent No. 11,122,357
`IPR2022-01321
`
`Description
`Exhibit
`Ex. 1027 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)
`Ex. 1028 Motion to Transfer Venue, Jawbone Innovations, LLC v.
`Apple Inc., Case No. 6:21-cv-00984 (W.D. Tex. May 2,
`2022)
`Ex. 1029 Stay Order, Jawbone Innovations, LLC v. Apple Inc., Case
`No. 6:21-cv-00984 (W.D. Tex. Nov. 8, 2022)
`Ex. 1030 Stay Order, Jawbone Innovations, LLC v. Samsung Elecs.
`Co., Ltd., 2:21-cv-00186 (E.D. Tex. Nov. 29, 2022)
`
`
`
`U.S. Patent No. 11,122,357
`IPR2022-01321
`
`INTRODUCTION
`I.
`As authorized by the Board, Petitioners address below the proper application
`
`of the Fintiv factors under the USPTO’s Interim Procedure for Discretionary Denials
`
`(“Guidance”), and demonstrate that denial would be inappropriate.
`
`II.
`
`DISCRETION UNDER 35 U.S.C. § 314(A)
`Compelling Merits Alone Show Discretionary Denial Is Not Appropriate.
`
`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.”) 7-76.
`
`Patent Owner’s contrary arguments lack merit. Paper 12 (“POPR”) 7-13.
`
`Patent Owner argues that Dr. Vipperman did not explain how he performed his
`
`linear-response simulations. POPR 7-8. 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
`
`1
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`U.S. Patent No. 11,122,357
`IPR2022-01321
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`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.”
`
`POPR 8-11. This argument ignores that the ’357 patent repeatedly refers to “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,” POPR 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. 1027). 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
`
`
`
`2
`
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`U.S. Patent No. 11,122,357
`IPR2022-01321
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`bounds of “substantially similar” and “substantially dissimilar” to determine that
`
`Kanamori, McCowan, and Elko render an embodiment within the scope of these
`
`terms obvious.
`
`The Co-Pending Litigations Have Different Procedural Postures. As
`
`addressed in the Petition, the Samsung and Apple litigations are proceeding in
`
`different jurisdictions (Samsung in EDTX and Apple in WDTX). Apple’s motion
`
`for transfer to NDCA remains pending. EX-1028 (MTT). Apple’s litigation has been
`
`stayed pending resolution of that motion. EX-1029 (Stay Order). Samsung’s
`
`litigation has been stayed due to a Notice of Settlement. EX-1030 (Stay Order).
`
`Thus, the Apple litigation is stayed indefinitely with no indication of when trial will
`
`be set once the stay is lifted and the Samsung litigation is stayed pending settlement.
`
`The Fintiv Factors for the Samsung and Apple Litigations Collectively
`
`Weigh Against Exercising Discretion. The Board should address the Samsung and
`
`Apple litigations individually with respect to the Fintiv factors. Shenzhen Carku
`
`Tech. Co., Ltd. v. The Noco Co., IPR2020-00944, Paper 20, 56 (Nov. 12, 2020).
`
`Petitioners below demonstrate that the factors weigh against discretionary denial for
`
`both litigations.
`
`1. Likelihood of district court stay. As noted above, Samsung’s case is stayed
`
`due to a Notice of Settlement. EX-1030. Apple requested a stay pending its motion
`
`to transfer, EX-1028, and a stay has been ordered, EX-1029.
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`
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`3
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`U.S. Patent No. 11,122,357
`IPR2022-01321
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`2. Trial Date Relative to Final Written Decision Due Date. The FWD
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`deadline in IPR2022-01124—to which this petition seeks joinder—will be no later
`
`than January 6, 2024. Because the Samsung litigation is stayed due to a Notice of
`
`Settlement, there will very likely not be a trial in that case. EX-1030.
`
`As previously noted, Apple’s case, and all deadlines in it, have been stayed
`
`pending resolution of Apple’s motion for transfer. EX-1029 (stay order). As a result,
`
`consideration of a trial date is speculative at best. That a Markman hearing has not
`
`yet been held, and that Apple’s motion to transfer remains pending, further
`
`underscores the uncertainty as to whether and when the Apple litigation might
`
`proceed to trial. Nonetheless, even under the Guidance’s consideration of the median
`
`time-to-trial, Factor 2 weighs against exercise of discretion. Based on the September
`
`23, 2022 filing date of the Complaint in the Apple litigation, a median time-to-trial
`
`in WDTX of about 28.3 months, and the Board’s January 6, 2024 FWD deadline,
`
`the Board may issue its FWD ahead of or around the same time as Apple’s trial.
`
`3. Investment in the Parallel Proceeding and Petitioner’s Diligence. PO
`
`does not dispute that Samsung and Apple were diligent in filing this Petition. See
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`POPR 18-19. In the Apple litigation, a Markman hearing has not yet been held, the
`
`case has been stayed pending resolution of Apple’s motion to transfer, and
`
`investment by the parties in that case remains low.
`
`4. Overlap of Issues. As noted in the Petition (Pet. 79), Factor 4 weighs
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`4
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`U.S. Patent No. 11,122,357
`IPR2022-01321
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`against discretionary denial, at least because any grounds that might be raised in
`
`litigation are materially different from those presented in the Petition.
`
`Samsung’s litigation is stayed pending settlement, so there is unlikely to be a
`
`trial. In addition, PO’s argument that Apple has not provided a Sotera stipulation
`
`does not change the weight that should be accorded to Apple’s Sand Revolution
`
`stipulation, which resolves doubt as to meaningful overlap of issues (Pet. 79).
`
`6. Other Considerations. Petitioners respectfully submit that, as a whole, the
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`Fintiv factors weigh against the Board exercising its discretion to deny institution.
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`As set forth in the Petition, PO asserts the ’357 Patent in four separate district court
`
`litigations, and institution of this Petition would save considerable judicial resources
`
`and avoid inconsistencies. Pet. 80. Further, the Petition’s merits are “compelling,”
`
`and this “alone demonstrates that the PTAB should not discretionarily deny
`
`institution under Fintiv.” Guidance, 3-5.
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`
`
`Date: December 13, 2022
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
`
`/David L. Holt/
`David L. Holt (Reg. No. 65,161)
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`
`Counsel for Petitioners
`
`
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`5
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`U.S. Patent No. 11,122,357
`IPR2022-01321
`
`CERTIFICATE OF SERVICE
`
`I certify that on December 13, 2022, I caused a true and correct copy of the
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`foregoing Petitioners’ Preliminary Reply to be served on the Patent Owner via
`
`electronic mail to Patent Owner’s counsel of record below:
`
`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
`
`FABRICANT LLP
`411 Theodore Fremd Avenue, Suite 206
`South Rye, New York 10580
`
`/Crena Pacheco/
`Crena Pacheco
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(617) 956-5938
`
`
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