`Filed on behalf of:
`AMAZON WEB SERVICES, INC.
`AND AMAZON.COM SERVICES LLC,
`By:
`J. DAVID HADDEN, Reg. No. 40,629
`SAINA SHAMILOV, Reg. No. 48,266
`DARGAYE CHURNET, Reg. No. 71,288
`FENWICK & WEST LLP
`801 California Street
`Mountain View, CA 94041
`Telephone: 650.988.8500
`Facsimile: 650.938.5200
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`AMAZON WEB SERVICES, INC.
`AND AMAZON.COM SERVICES LLC,
`Petitioners,
`v.
`
`ZENTIAN LIMITED
`Patent Owner.
`
`Case No. IPR2023-01197
`Patent No. 10,971,140
`
`
`
`PETITIONERS’ REPLY1 TO PATENT OWNER’S PRELIMINARY
`RESPONSE AND CONTINGENT JOINDER OPPOSITION
`
`
`
`
`
`1 The Board authorized Petitioners to file this Reply in an email sent November 1,
`
`2023.
`
`
`
`
`
`IPR2023-01197
`Petitioners’ Reply to Patent Owner’s Preliminary Response
`TABLE OF CONTENTS
`
`FINTIV FACTORS 1-5 FAVOR INSTITUTION UNDER THE
`DISTRICT COURT’S NEW CASE SCHEDULE .......................................... 1
`FINTIV FACTOR 6: REQUIRING A SOTERA STIPULATION IS
`“INAPPROPRIATE” AND PREJUDICIAL TO PETITIONERS .................. 2
`
`Page
`
`
`
`
`
`I.
`
`II.
`
`
`
`i
`
`
`
`IPR2023-01197
`Petitioners’ Reply to Patent Owner’s Preliminary Response
`EXHIBIT LIST (37 C.F.R. § 42.63(E))
`
`Exhibit
`1001
`1002
`1003
`1004
`1005
`1006
`
`1007
`1008
`
`1009
`1010
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`1016
`
`1017
`
`Description
`U.S. Patent No. 10,971,140 (“’140 Patent”)
`Prosecution History for the 10,971,140 Patent (“’140 File History”)
`Declaration of Christopher Schmandt (“Dec.”)
`U.S. Patent No. 6,374,219 to Jiang (“Jiang”)
`U.S. Patent No. 5,428,803 to Chen et al. (“Chen”)
`Hsiao-Wuen Hon, A survey of hardware architectures designed for
`speech recognition, Carnegie Mellon University, 1991 (“Hon”)
`Ph.D. Thesis of Mosur Ravishankar (“Ravishankar”)
`U.S. Patent Application Publication No. 2001/0053974 to Lucke et al.
`(“Lucke”)
`U.S. Patent No. 5,983,180 to Robinson (“Robinson”)
`U.S. Patent No. 5,036,539 to Wrench Jr., et al. (“Wrench”)
`Frederick Jelinek, Statistical Methods for Speech Recognition, The MIT
`Press, 1997 (“Jelinek”)
`Christopher Schmandt, Voice Communication with Computers, Van
`Nostrand Reinhold, 1994 (“Schmandt”)
`Lawrence Rabiner and Biing-Hwang Juang, Fundamentals of
`Speech Recognition, Prentice Hall PTR, 1993 (“Rabiner”)
`Richard Klevans and Robert Rodman, Voice Recognition, Artech
`House, 1997 (“Klevans”)
`U.S. Patent No. 7,120,582 to Young et al. (“Young”)
`John Holmes and Wendy Holmes, Speech Synthesis and Recognition,
`2nd Edition, Taylor & Francis, 2001 (“Holmes”)
`U.S. Patent No. 4,926,488 to Nadas et al. (“Nadas”)
`
`ii
`
`
`
`IPR2023-01197
`Petitioners’ Reply to Patent Owner’s Preliminary Response
`
`Exhibit
`1018
`1019
`
`1020
`1021
`1022
`1023
`1024
`
`1025
`
`1026
`1027
`1028
`1029
`
`1030
`1031
`1032
`
`1033
`1034
`1035
`
`Description
`U.S. Patent No. 6,182,037 to Maes (“Maes”)
`U.S. Patent Application Publication No. 2003/0220796 to Aoyama et al.
`(“Aoyama”)
`U.S. Patent No. 6,092,045 to Stubley et al. (“Stubley”)
`U.S. Patent No. 6,151,574 to Lee et al. (“Lee”)
`U.S. Patent No. 6,580,814 to Ittycheriah et al. (“Ittycheriah”)
`U.S. Patent No. 6,452,348 to Toyoda (“Toyoda”)
`William A. Wulf and C.G. Bell, C.mmp–A multi-mini-processor,
`Carnegie-Mellon University, 1972 (“Wulf”)
`Lee D. Erman, Richard D. Fennell, Victor R. Lesser, and D. Raj Reddy,
`System Organizations for Speech Understanding: Implications of
`Network and Multiprocessor Computer Architectures for AI, IEEE
`Transactions on Computers, Vol. C-25, No. 4, April 1976 (“Erman”)
`U.S. Patent No. 6,393,481 to Deo et al. (“Deo”)
`U.S. Patent No. 6,615,338 to Tremblay et al. (“Tremblay”)
`U.S. Patent No. 5,922,076 to Garde (“Garde”)
`Lawrence R. Rabiner, A Tutorial on Hidden Markov Models and
`Selected Applications in Speech Recognition, Proceedings of the IEEE,
`Vol. 77, No. 2, February 1989 (“Rabiner 89”)
`[RESERVED]
`[RESERVED]
`Zentian, Ltd. v Apple Inc. WDTX Waco (6:22-cv-122) Scheduling
`Order “Scheduling Order”
`Declaration of June Ann Munford (“Munford”)
`[RESERVED]
`[RESERVED]
`
`iii
`
`
`
`IPR2023-01197
`Petitioners’ Reply to Patent Owner’s Preliminary Response
`
`Description
`
`[RESERVED]
`[RESERVED]
`[RESERVED]
`[RESERVED]
`[RESERVED]
`[RESERVED]
`[RESERVED]
`Declaration of Les Atlas, Ph.D.
`Zentian Ltd. v. Amazon.com Services LLC, et al., No. 6:22-cv-123
`(W.D. Tex.) Mar. 22, 2023 Amended Scheduling Order
`
`Exhibit
`1036
`1037
`1038
`1039
`1040
`1041
`1042
`1043
`1044
`
`
`
`
`iv
`
`
`
`IPR2023-01197
`Petitioners’ Reply to Patent Owner’s Preliminary Response
`I. FINTIV FACTORS 1-5 FAVOR INSTITUTION UNDER THE
`DISTRICT COURT’S NEW CASE SCHEDULE
`Patent Owner argues that the Board should deny institution and joinder under
`
`Fintiv because the district court case is not stayed, there is overlapping prior art
`
`asserted, and expert reports (not trial) are due before a final written decision is
`
`expected. (POPR at 1-2.) But the Fintiv factors weigh in favor of institution.
`
`Fintiv factor 2 weighs against discretionary denial because trial in the parallel
`
`district court proceeding is now set for September 23, 2024, more than three months
`
`after the expected date of the final written decision. (See Ex. 2002.)
`
`Fintiv Factor 3, investment in the parallel proceeding as of the institution
`
`decision, also favors institution. Apple Inc. v. Fintiv Inc., IPR2020-00019, Paper 11
`
`at 9-10 (March 20, 2020). Under the new schedule, deadlines for final invalidity
`
`contentions (February 22, 2024), prior art narrowing (March 14, 2024), close of
`
`fact discovery (April 4, 2024), expert reports (May 2, 2024), and dispositive
`
`motions (June 27, 2024) all occur well after the January 2024 institution decision.
`
`(Ex. 2002.) Thus, there will have been minimal investment in the validity of the
`
`patents at time of institution.
`
`Factor 4, regarding overlap of the issues, also favors institution. The final
`
`written decision is scheduled to issue months before trial. Therefore, there is little
`
`risk of overlap or conflicting decisions because Petitioners will be subject to
`
`1
`
`
`
`IPR2023-01197
`Petitioners’ Reply to Patent Owner’s Preliminary Response
`estoppel well before trial. 35 U.S.C. § 315(e)(2); Network-1 Techs., Inc. v. Hewlett-
`
`Packard Co., 981 F.3d 1015, 1027 (Fed. Cir. 2020).
`
`Factors 1 (neutral because no stay requested) and 5 (slightly against
`
`institution because same parties) do not tip the scales against institution. See, e.g.,
`
`Lifecore Fitness, Inc. v. Woodway USA, Inc., IPR2023-0084, Paper 6 at 17 (Oct.
`
`25, 2023) (“we determine that factor 1 is neutral, factors 2–4 weigh against denial
`
`of institution, and factor 5, which is the lone factor favoring denial of institution,
`
`does not outweigh factors 1–4”); STMicroelectronics, Inc. v. Ocean Semiconductor
`
`LLC, IPR 2021-01349, Paper 13 at 13 (Mar. 4, 2022). Thus, the Fintiv factors 1-5
`
`on balance weigh against discretionary denial.
`
`II. FINTIV FACTOR 6: REQUIRING A SOTERA STIPULATION IS
`“INAPPROPRIATE” AND PREJUDICIAL TO PETITIONERS
`Patent Owner’s other argument—that institution must be denied unless
`
`Petitioners as joining parties agree to enter the same Sotera stipulation as Petitioner
`
`Apple entered—also fails. (POPR at 3.) Patent Owner’s baseless argument runs
`
`contrary to the Board’s previous holdings: “a Sotera-style stipulation [is not] a
`
`prerequisite for institution” and denying institution “merely because Petitioner has
`
`not entered a Sotera-style stipulation would be inappropriate.” Zhuhai Cosmx
`
`Battery Co., Ltd. v. Maxell, Ltd., IPR2022-00984, Paper 8 at 4 (Sept. 29, 2022).
`
`Apple chose
`
`to enter
`
`its Sotera stipulation under distinguishable
`
`circumstances. When Apple did so, the operative trial date in its case was two
`
`2
`
`
`
`IPR2023-01197
`Petitioners’ Reply to Patent Owner’s Preliminary Response
`months before the expected written decision date. (See Exhibit 1032.) Here,
`
`Petitioners’ trial date is three months after the Board is expected to render its final
`
`written decisions. (See Exhibit 2002.) That Apple’s petition was not evaluated
`
`under the “compelling merits” standard is irrelevant (See POPR at 2-3), where, as
`
`here, the Fintiv factors on balance do not favor discretionary denial. Commscope
`
`Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4 (Feb. 27, 2023)
`
`(precedential) (only when Fintiv factors favor discretionary denial should the Board
`
`reach the compelling merits question). Moreover, Apple, as the original petitioner,
`
`is subject to a different level of statutory estoppel than Amazon would be.
`
`Network-1 Techs., 981 F.3d at 1027. Forcing Amazon to enter “the same Sotera
`
`stipulation as Apple” that would bar Amazon from “pursu[ing] in the parallel
`
`district court proceeding the same grounds as in the Petition or any grounds that
`
`could have reasonably been raised in the pending Petition” (IPR2023-00037,
`
`Paper 9 at 1 (emphasis added)) would be unfair and prejudicial to Petitioners, not
`
`Patent Owner.
`
`Patent Owner provides no other reason it would be unfair or prejudicial to
`
`institute trial. Indeed, is not unfair or prejudicial to institute trial based on a
`
`meritorious petition, particularly where the Board already instituted IPR based on
`
`Apple’s identical petition. The Board should therefore reject Patent Owner’s
`
`request to deny institution under Fintiv Factor 6 absent a Sotera stipulation.
`
`3
`
`
`
`IPR2023-01197
`Petitioners’ Reply to Patent Owner’s Preliminary Response
`Dated: November 8, 2023
`Respectfully submitted,
`
`
`
`
`
`FENWICK & WEST LLP
`
`/J. David Hadden/
`
`J. David Hadden
`Reg. No. 40,629
`Attorneys for Petitioners
`Amazon Web Services, Inc. and
`Amazon.com Services LLC
`
`
`
`
`4
`
`
`
`IPR2023-01197
`Petitioners’ Reply to Patent Owner’s Preliminary Response
`CERTIFICATION OF SERVICE ON PATENT OWNER
`The undersigned hereby certifies that the foregoing Petitioners’ Reply to
`
`Patent Owner’s Preliminary Response and Contingent Joinder Opposition was
`
`served on Patent Owner’s lead and back-up counsel in its entirety by electronic
`
`service at the email addresses provided below:
`
`Peter C. Knops
`Noroozi PC
`11601 Wilshire Boulevard, Suite 2170
`Los Angeles, CA 90025
`peter@noroozipc.com
`Katherine E. Rhoades
`Bartlit Beck LLP
`54 West Hubbard Street, Suite 300
`Chicago, IL 60654
`katherine.rhoades@barlitbeck.com
`
`Kayvan B. Noroozi
`Noroozi PC
`11601 Wilshire Boulevard, Suite 2170
`Los Angeles, CA 90025
`kayvan@noroozipc.com
`Nevin M. Gewertz
`Bartlit Beck LLP
`54 West Hubbard Street, Suite 300
`Chicago, IL 60654
`nevin.gewertz@barlitbeck.com
`
`
`
`
`
`Dated: November 8, 2023
`
`FENWICK & WEST LLP
`
`
`
` /J. David Hadden/
`J. David Hadden
`Reg. No. 40,629
`Attorneys for Petitioners
`Amazon Web Services, Inc. and
`Amazon.com Services LLC
`
`5
`
`
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