`571.272.7822
`
`
`
`
`
`Paper No. 10
`Entered: November 29, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SONY ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`JAWBONE INNOVATIONS, LLC,
`Patent Owner.
`_______________
`
`IPR2023-01153
`Patent 11,122,357 B2
`_______________
`
`
`Before GEORGIANNA W. BRADEN, NORMAN H. BEAMER, and
`JASON M. REPKO, Administrative Patent Judges.
`
`BEAMER, Administrative Patent Judge.
`
`
`
`
`ORDER
`Denying Leave to File Reply to Preliminary Response
`37 C.F.R. § 42.108(c)
`
`
`
`
`
`
`
`IPR2023-01153
`Patent 11,122,357 B2
`
`
`
`
`On November 17, 2023, Sony Electronics (“Petitioner”) contacted the
`
`Board via email to seek leave to file a three-page Reply to Patent Owner’s
`
`Preliminary Response under 37 C.F.R. § 42.108(c). Ex. 3001. The same
`
`email indicates that Jawbone Innovations, LLC. (“Patent Owner”) opposed
`
`Petitioner’s request. Id.
`
`According to Petitioner’s request,
`
`Patent Owner Jawbone Innovations, LLC (“Jawbone”) has used
`its POPR, in part, to respond to the Board’s comment in an
`earlier Amazon v. Jawbone IPR (involving the same patent
`claims and prior art) that Figure 5.2 of Brandstein and Sony’s
`declarant’s explanation established disclosure of the limitation
`calling for “distinct virtual directional microphones with
`substantially similar responses to noise and substantially
`dissimilar responses to speech.” (IPR2023-00251, Paper No. 7
`at 19.) The POPR in the present case includes extensive
`discussions mischaracterizing Sony’s petition, Brandstein, the
`accompanying declaration discussing Brandstein’s disclosure
`and other issues relating to the Board’s comment. (Paper No. 8,
`at 8-18.) As a matter of fundamental fairness, Sony requests
`that it be given the opportunity to respond briefly to those
`discussions prior to a decision on institution, given that
`Jawbone has already had the opportunity to do so. Sony thus
`maintains that good cause exists for a reply.
`
`Id.
`
`Petitioner’s request is denied. Although Petitioner points to Patent
`
`Owner’s alleged mischaracterizations (id.), it may always be the case that a
`
`Petitioner disagrees with how Patent Owner characterizes the facts and law
`
`presented in the Petition. Our rules, however, provide for a Petitioner’s
`
`Reply only when good cause exists. 37 C.F.R. § 42.108(c). We see no good
`
`cause here. The issues that Petitioner identifies in its request are related to
`
`the teachings and disclosures of the cited prior art and the relevant case law
`
`2
`
`
`
`IPR2023-01153
`Patent 11,122,357 B2
`
`
`
`
`that could have been — but were not — addressed in the petition. See id.
`
`For example, the Board’s comments and discussion in the previous
`
`institution decision cited in Petitioner’s request were limited to those prior-
`
`art disclosures, rather than a new or unforeseeable issue. Id. Because of the
`
`expedited nature this proceeding, Petitioner is generally expected to make its
`
`case for institution in the Petition. Here, the Board does not need further
`
`briefing to assess the Petition’s arguments and evidence.
`
`
`
`ORDER
`
`It is
`
`ORDERED that Petitioner’s request for leave to file a Reply to Patent
`
`Owner’s Preliminary Response under 37 C.F.R. § 42.108(c) is denied.
`
`
`
`
`
`3
`
`
`
`IPR2023-01153
`Patent 11,122,357 B2
`
`
`
`
`For PETITIONER
`
`Gregory Gewirtz
`Russell Faegenburg
`LERNER DAVID LLP
`ggewirtz.ipr@lernerdavid.com
`rfaegenburg@lernerdavid.com
`
`For PATENT OWNER
`
`Peter Lambrianakos
`Vincent Rubino
`Enrique Iturralde
`Richard Cowell
`Jacob Ostling
`FABRICANT LLP
`plambrianakos@fabricantllp.com
`vrubino@fabricantllp.com
`eiturralde@fabricantllp.com
`rcowell@fabricantllp.com
`jostling@fabricantllp.com
`
`4
`
`
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