Case 6:21-cv-00984-ADA Document 59 Filed 05/31/22 Page 1 of 37
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`JAWBONE INNOVATIONS, LLC,
`Plaintiff,
`
`v.
`APPLE INC.,
`
`Defendant.
`
`Case No. 6:21-CV-00984-ADA
`
`PATENT CASE
`
`JURY TRIAL DEMANDED
`
`
`
`PUBLIC VERSION
`APPLE INC.’S OPENING CLAIM CONSTRUCTION BRIEF
`
`

`

`Case 6:21-cv-00984-ADA Document 59 Filed 05/31/22 Page 2 of 37
`
`TABLE OF CONTENTS
`
`I.
`II.
`III.
`
`IV.
`
`INTRODUCTION .............................................................................................................. 1 
`LEGAL STANDARD ......................................................................................................... 2 
`DISPUTED TERMS ........................................................................................................... 3 
`A.
`“microphone” (’058 patent, claim 1; ’543 patent, claims 1, 8, 19, 20, 26) (proposed
`by Apple) ............................................................................................................................ 3 
`B.
`“the acoustic signals” / “the acoustic signal received at the one receiver” / “the
`acoustic signals received at each of the two receivers” (’058 patent, claim 1) (proposed
`by Apple) ............................................................................................................................ 9 
`C.
`“transfer function” (’091 patent, claims 1, 2, 4, 5, 9, 11, 15; ’357 patent, claims 1,
`15; ’080 patent, claims 1, 14) (proposed by Jawbone) ..................................................... 12 
`D.
`“generating one transfer function of the at least two transfer functions . . . when the
`VAD indicates that user voice activity is present.” (’091 patent, claim 2) (proposed by
`Apple) ............................................................................................................................... 13 
`E.
`“virtual microphone array” (’072 patent, claim 1) (proposed by Apple) ................ 14 
`F.
`“acoustic noise” (proposed by Jawbone) and “less acoustic noise” (proposed by
`Apple) (’072 patent, claims 1, 2, 9) .................................................................................. 16 
`G.
`“approximately similar” / “approximately, dissimilar” / “approximately dissimilar”
`(’213 patent, claims 2, 37, 38; ’611 patent, claim 3, 4, 29) (proposed by Apple) ............ 18 
`H.
`“a relationship for speech” (’213 patent claims 14, 42; ’611 patent claim 1)
`(proposed by Apple) ......................................................................................................... 22 
`I.
`“. . . substantially similar/dissimilar. . .” (’691 patent, claims 1, 23, 27, 28, 29, 41;
`’080 patent, claims 1, 14; ’357 patent, claims 1, 15) (proposed by Apple) ..................... 23 
`J.
`“apply a varying linear transfer function between the first and second microphone
`signals” (’357 patent, claims 1, 15) (proposed by Apple) ................................................ 28 
`CONCLUSION ................................................................................................................. 30 
`
`i
`
`

`

`Case 6:21-cv-00984-ADA Document 59 Filed 05/31/22 Page 3 of 37
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Abdou v. Alphatec Spine, Inc.,
`No. 12-CV-1804 BEN RBB, 2014 WL 6611422 (S.D. Cal. Nov. 19, 2014) ....................22, 23
`
`Allergan Sales, LLC v. Sandoz, Inc.,
`935 F.3d 1370 (Fed. Cir. 2019)..................................................................................................2
`
`Baldwin Graphics Sys., Inc. v. Siebert, Inc.,
`512 F.3d 1338 (Fed. Cir. 2008)................................................................................................11
`
`Biosig Instruments, Inc. v. Nautilus, Inc.,
`783 F.3d 1374 (Fed. Cir. 2015)................................................................................3, 16, 19, 24
`
`Bushnell Hawthorne, LLC v. Cisco Sys. Inc.,
`813 F. App’x 522 (Fed. Cir. 2020) ....................................................................................11, 14
`
`Ernie Ball, Inc. v. Earvana, LLC,
`502 F. App’x 971 (Fed. Cir. 2013) ......................................................................................3, 16
`
`Geodynamics, Inc. v. Dynaenergetics US, Inc.,
`No. 2:15-CV-1546-RSP, 2016 WL 6217181 (E.D. Tex. Oct. 25, 2016) ...........................26, 27
`
`Halliburton Energy Servs., Inc. v. M-I LLC,
`514 F.3d 1244 (Fed. Cir. 2008)............................................................................................9, 14
`
`Hoechst Celanese Corp. v. BP Chems. Ltd.,
`78 F.3d 1575 (Fed. Cir. 1996)....................................................................................................2
`
`Hologic, Inc. v. SenoRx, Inc.,
`639 F.3d 1329 (Fed. Cir. 2011)..........................................................................................16, 29
`
`Howmedica Osteonics Corp. v. Zimmer, Inc.,
`822 F.3d 1312 (Fed. Cir. 2016)................................................................................................28
`
`Interval Licensing LLC v. AOL, Inc.,
`766 F.3d 1364 (Fed. Cir. 2014)........................................................................................ passim
`
`KLA-Tencor Corp. v. Xitronix Corp.,
`No. A-08-CA-723-SS, 2011 WL 318123 (W.D. Tex. Jan. 31, 2011) ...............................19, 24
`
`Lexion Medical, LLC v. Northgate Techs., Inc.,
`641 F.3d 1352 (Fed. Cir. 2011)..................................................................................................2
`
`ii
`
`

`

`Case 6:21-cv-00984-ADA Document 59 Filed 05/31/22 Page 4 of 37
`
`Nautilus, Inc. v. Biosig Instruments, Inc.,
`572 U.S. 898 (2014) .................................................................................................3, 12, 16, 22
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)........................................................................................ passim
`
`U.S. Well Servs., Inc. v. Halliburton Co.,
`No. 6:21-CV-00367-ADA, 2022 WL 819548 (W.D. Tex. Jan. 17, 2022) ...................... passim
`
`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996)....................................................................................................2
`
`
`
`iii
`
`

`

`Case 6:21-cv-00984-ADA Document 59 Filed 05/31/22 Page 5 of 37
`
`
`
`TABLE OF EXHIBITS AND CITATIONS
`
`Exhibit 11
`
`Exhibit 12
`Exhibit 13
`Exhibit 14
`
`Exhibits to Defendant’s Opening Claim Construction Brief (Cited as “Ex.__”)
`Exhibit 1
`United States Patent No. 7,246,058 B2
`Exhibit 2
`United States Patent No. 8,019,091 B2
`Exhibit 3
`United States Patent No. 8,280,072 B2
`Exhibit 4
`United States Patent No. 8,321,213 B2
`Exhibit 5
`United States Patent No. 8,326,611 B2
`Exhibit 6
`United States Patent No. 8,467,543 B2
`Exhibit 7
`United States Patent No. 8,503,691 B2
`Exhibit 8
`United States Patent No. 10,779,080 B2
`Exhibit 9
`United States Patent No. 11,122,357 B2
`Exhibit 10
`Email exchange between Counsel from May 4, 2022 through
`May 23, 2022 re Preliminary Claim Constructions
`Excerpt from ‘543 patent file history: Response to Office Action
`dated February 17, 2011
`Burnett 2001 Notebook
`Burnett 2007 Notebook
`Definition of “microphone” from Modern Dictionary of
`Electronics (Seventh Edition, 1999)
`Excerpt from Handbook For Sound Engineers (1988)
`Definition of “microphone” from The Authoritative Dictionary
`of IEEE Standards Terms (2000)
`Definition of “microphone” from The Illustrated Dictionary of
`Electronics (Seventh Edition, 1997)
`Declaration of Cliff Reader, Ph.D.
`
`Exhibit 15
`Exhibit 16
`
`Exhibit 17
`
`Exhibit 18
`
`iv
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`

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`Case 6:21-cv-00984-ADA Document 59 Filed 05/31/22 Page 6 of 37
`
`I.
`
`INTRODUCTION
`
`Plaintiff Jawbone Innovations, LLC (“Jawbone”) alleges that Apple infringes more than
`
`200 claims in U.S. Patent Nos. 7,246,058 (“the ’058 patent”), 8,019,091 (“the ’091 patent”),
`
`8,280,072 (“the ’072 patent”), 8,321,213 (“the ’213 patent”), 8,326,611 (“the ’611 patent”),
`
`8,467,543 (“the ’543 patent”), 8,503,691 (“the ’691 patent”), 10,779,080 (“the ’080 patent”), and
`
`11,122,357 (“the ’357 patent”) (collectively, the “Asserted Patents”).1 These nine Asserted Patents
`
`all generally relate to audio processing, including voice detection and noise cancellation.
`
`The majority of the parties’ claim construction disputes relate to whether certain terms are
`
`indefinite. The asserted claims make plentiful use of terms of degree – “approximately
`
`similar/dissimilar” (’213 and ’611 patents), “substantially similar/dissimilar” (’691, ’080, and ’357
`
`patents), and “less acoustic noise” (’072 patent). But the specifications and other intrinsic evidence
`
`fail to provide any objective boundaries by which one of ordinary skill in the art can determine
`
`whether those terms of degree are met. The asserted claims also use terms that are subjective,
`
`ambiguous, and/or lacking antecedent basis. These amorphous claims should be rejected as
`
`indefinite.
`
`The parties agree that other terms such as “microphone” (’058 and ’543 patent) and “virtual
`
`microphone array” (’072 patent) have meaning, but dispute those meanings. Jawbone generally
`
`proposes that these terms be given “plain and ordinary meaning.” Examining its alternative
`
`proposed constructions or reasons for disagreement with Apple’s proposed constructions,
`
`however, makes clear that Jawbone is ignoring the explicit teaching of the intrinsic evidence. In
`
`contrast, Apple’s proposed constructions stay true to the relevant patents’ description of the
`
`invention.
`
`1 The Asserted Patents are attached as Exhibits 1-9.
`1
`
`

`

`Case 6:21-cv-00984-ADA Document 59 Filed 05/31/22 Page 7 of 37
`
`II.
`
`LEGAL STANDARD
`
`Claim terms should be “given their ordinary and customary meaning,” defined as “the
`
`meaning that the term would have to a person of ordinary skill in the art in . . . question at the time
`
`of the invention.” Allergan Sales, LLC v. Sandoz, Inc., 935 F.3d 1370, 1373 (Fed. Cir. 2019)
`
`(quoting Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005)). “The words used in
`
`the claims are interpreted in light of the intrinsic evidence of record, including the written
`
`description, the drawings, and the prosecution history.” Id. (quoting Teleflex, Inc. v. Ficosa N.
`
`Am. Corp., 299 F.3d 1313, 1324 (Fed. Cir. 2002) (brackets omitted)); see also Lexion Medical,
`
`LLC v. Northgate Techs., Inc., 641 F.3d 1352, 1356 (Fed. Cir. 2011) (the meaning of a disputed
`
`claim term “should be harmonized, to the extent possible, with the intrinsic record, as understood
`
`within the technological field of the invention.”). Still, “[a] technical term used in a patent
`
`document is interpreted as having the meaning that it would be given by persons experienced in
`
`the field of the invention, unless it is apparent from the patent and the prosecution history that the
`
`inventor used the term with a different meaning.” Hoechst Celanese Corp. v. BP Chems. Ltd., 78
`
`F.3d 1575, 1578 (Fed. Cir. 1996). For such ordinary meaning, the Court should turn to the
`
`dictionary definition of the term. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584
`
`n.6 (Fed. Cir. 1996) (“Although . . . dictionaries fall within the category of extrinsic evidence, as
`
`they do not form a part of an integrated patent document, they are worthy of special note.
`
`Judges . . . may . . . rely on dictionary definitions when construing claim terms, so long as the
`
`dictionary definition does not contradict any definition found in or ascertained by a reading of the
`
`patent documents.”). “The construction that stays true to the claim language and most naturally
`
`aligns with the patent’s description of the invention will be, in the end, the correct construction.”
`
`Phillips, 415 F.3d at 1316 (quoting Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243,
`
`1250 (Fed. Cir. 1998)).
`
`
`
`2
`
`

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`Case 6:21-cv-00984-ADA Document 59 Filed 05/31/22 Page 8 of 37
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`“[A] patent is invalid for indefiniteness if its claims, read in light of the specification
`
`delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those
`
`skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 572
`
`U.S. 898, 901 (2014). When a term of degree is used in a claim, “the court must determine whether
`
`the patent provides some standard for measuring that degree.” Biosig Instruments, Inc. v. Nautilus,
`
`Inc., 783 F.3d 1374, 1378 (Fed. Cir. 2015) (quotation marks omitted). Similarly, when a subjective
`
`term is used in a claim, “a court must determine whether the patent’s specification supplies some
`
`standard for measuring the scope of the [term].” Ernie Ball, Inc. v. Earvana, LLC, 502 F. App’x
`
`971, 980 (Fed. Cir. 2013). The standard “must provide objective boundaries for those of skill in
`
`the art.” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014); U.S. Well
`
`Servs., Inc. v. Halliburton Co., No. 6:21-CV-00367-ADA, 2022 WL 819548, at *4 (W.D. Tex.
`
`Jan. 17, 2022).
`
`III.
`
`DISPUTED TERMS
`A.
`
`“microphone” (’058 patent, claim 1; ’543 patent, claims 1, 8, 19, 20, 26)
`(proposed by Apple)
`
`JAWBONE
`Plain and ordinary meaning; no
`construction necessary
`
`APPLE
`Plain and ordinary meaning, which is “physical
`microphone”
`
`The term “microphone” appears in the asserted claims of the ’058 and ’543 patents. ’058
`
`patent at cl. 1; ’543 patent at cls. 1, 8, 19, 20, & 26. Although the ’058 and ’543 patents do not
`
`share the same specification, both patents use the term “microphone” in the same manner such that
`
`it is appropriate to address both patents together.
`
`The parties disagree on the plain and ordinary meaning of the term “microphone.” Apple’s
`
`proposal is limited to a physical microphone, because one of ordinary skill in the art would not
`
`understand the term “microphone,” as used in the ’058 and ’543 patents at the time of the alleged
`
`
`
`3
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`

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`Case 6:21-cv-00984-ADA Document 59 Filed 05/31/22 Page 9 of 37
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`invention, to also include virtual microphones. Jawbone, however, rejects Apple’s proposed
`
`construction and instead insists the term encompasses both physical and virtual microphones. See
`
`Ex. 10 (5/18 at 9:40PM PT email from Prescott to Ostling) (Jawbone’s counsel never responded
`
`to Apple’s requests on the “microphone” term). Construction of the “microphone” term is
`
`necessary at this time to resolve the scope of this term.
`
`The intrinsic evidence is clear—“microphone” in the context of these patents means only
`
`a “physical microphone.” The contemporaneous extrinsic evidence also accords with the
`
`specification, the prosecution history, and the claims themselves. The court should adopt Apple’s
`
`proposed construction because it “stays true to the claim language and most naturally aligns with
`
`[each] patent’s description of the invention.” Phillips, 415 F.3d at 1316 (citation omitted).
`
`By contrast, construing the “microphone” term to include a virtual microphone does not
`
`“naturally align with the patent[s]’ description of the invention” because the ’058 and ’543 patents
`
`focus on physical microphones and their physical orientation relative to a user’s head. That explicit
`
`focus on the physical nature of the microphones, coupled with an absence of any disclosure of
`
`requisite hardware and specialized software needed to create a virtual microphone, confirms that
`
`a POSITA would not understand “microphone” to include a virtual microphone in this context.
`
`First, physical microphones that operate in a traditional manner—converting sounds to
`
`electrical signals—are the focus of the ’058 and ’543 patents. For example, the ’543 patent is
`
`about “the use of these physical microphone configurations” for various applications. ’543 patent
`
`at 4:28-322; id. at 2:17-20 (identifying a Pathfinder system application); see also ’058 patent at
`
`7:50-51 (reciting “the propagation of noise and speech to microphones located somewhere on the
`
`user’s head”); id. at 6:10-15 (describing the Pathfinder system depicted in figure 3 and reproduced
`
`2 All emphasis added unless otherwise stated.
`
`4
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`

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`Case 6:21-cv-00984-ADA Document 59 Filed 05/31/22 Page 10 of 37
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`below). Consistently, in the “Microphone Configuration” section, the ’543 patent similarly
`
`contemplates the use of only traditional physical microphones: “configurations described herein
`
`have been constructed using inexpensive off-the-shelf microphones.” ’543 patent at 6:51-53.
`
`Various types of physical microphones, e.g., unidirectional and omnidirectional microphones,
`
`are noted as compatible with the disclosed embodiments and available for purchase. See id. at
`
`7:12-26 (“FIG. 2 is a table describing different types of microphones and the associated spatial
`
`responses (from the Shure microphone company website at http://www.shure.com).”). Indeed,
`
`each patent shows the same image employing well-known, traditional physical microphones:
`
`
`
`
`
`
`
`Left: ’543 patent, Fig. 1 (annotated); Right: ’058 patent, Fig. 3 (annotated).
`
`Second, a person of ordinary skill would understand the “microphone” term to be limited
`
`to physical microphones in the context of the ’543 patent because the spatial orientation of the
`
`physical microphones relative to a user’s head is a key aspect of the patent. Importantly, the
`
`orientation of the microphones relative to a user’s mouth is part of the ’543 patent claim language.
`
`’543 patent at cl. 1 (“wherein a first microphone of the array is fixed at a first position relative to
`
`a mouth, wherein the first position orients a front of the first microphone towards the mouth,
`
`wherein a second microphone of the array is fixed at a second position relative to the mouth”).
`
`
`
`5
`
`

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`Case 6:21-cv-00984-ADA Document 59 Filed 05/31/22 Page 11 of 37
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`Apple’s construction of “physical microphone” harmonizes the claim language with the patent’s
`
`extensive disclosures regarding the spatial orientation of the physical microphones with respect to
`
`one another and a user’s head. For example, “[a]gain, the two microphones can be located quite
`
`close together (within a few centimeters) . . . . [and t]he best performance is seen when the two
`
`microphones are quite close (less than approximately 5 cm), and the UNI is far enough away from
`
`the user’s mouth (approximately in the range of 10 to 15 centimeters depending on the
`
`microphone).” Id. at 8:13-19; see also id. at 7:58-62 (“The UNI microphone, as the speech
`
`microphone, points toward the user’s mouth.”), 10:31-38 (“Placement of the two UNI
`
`microphones on the axis that includes the user’s mouth at one end and the noise microphone on
`
`the other . . . .”), 11:5-10 (“The microphones are placed on an axis 902 that contains the user’s
`
`mouth . . . .”), 17:64-8:3 (“The configuration orients MIC 1 towards the user’s mouth. Further,
`
`the configuration places MIC 2 as close to MIC 1 as possible and orients MIC 2 at about 90
`
`degrees with respect to MIC 1”), 8:21-29 (similar disclosure of alternative physical microphone
`
`orientations), 9:10-12 (similar disclosure of alternative physical microphone orientations), 9:19-
`
`24 (similar disclosure of alternative physical microphone orientations), 9:61-10:1-15 (similar
`
`disclosure of alternative physical microphone orientations), 13:34-39 (similar disclosure of
`
`alternative physical microphone orientations). Further, during prosecution of the ’543 patent, the
`
`applicant emphasized the physical relationship between the two microphones to overcome an
`
`examiner rejection. See Ex. 11 (’543 patent file history excerpt) at 527 (emphasizing the “physical
`
`relationship between the front of two microphones as claimed” to overcome a rejection based on
`
`the Yoshida prior art reference).
`
`The ’058 patent similarly relies on the spatial relationship between two physical
`
`microphones. “In the two-microphone system, the speech source should be relatively louder in
`
`6
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`

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`Case 6:21-cv-00984-ADA Document 59 Filed 05/31/22 Page 12 of 37
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`one designated microphone when compared to the other microphone. Tests have shown that this
`
`requirement is easily met with conventional microphones when the microphones are placed on
`
`the head.” ’058 patent at 4:58-63; see also id. at 7:52-57 (“Placing the microphones Mic 1 and
`
`Mic 2 in a linear array with the mouth on the array midline . . . .”), 9:18-34 (“The first
`
`microphone set had the signal microphone near the mouth and the noise microphone several
`
`centimeters away at the ear, while the second configuration placed the noise and signal
`
`microphones back-to-back within a few centimeters of the mouth.”). These descriptions of
`
`microphone configurations “most naturally align[]” with a physical microphone, Phillips, 415 F.3d
`
`at 1316; not a virtual microphone, which cannot be “placed on the head,” ’058 patent at 4:58-63.
`
`Reproduced below are figure 4A of the ’543 patent (left) and figure 7 of the ’058 patent
`
`(right), each illustrating a two-microphone headset system as described in the patents:
`
`By contrast, a person of skill would not understand the term “microphone” to include a
`
`virtual microphone in this context because the ’058 and ’543 patents do not mention or otherwise
`
`provision for virtual microphones. First, the term “virtual” never appears in either of the ’058 or
`
`’543 patents, or their respective prosecution histories. Second, Jawbone agreed that a “virtual
`7
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`

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`Case 6:21-cv-00984-ADA Document 59 Filed 05/31/22 Page 13 of 37
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`microphone” is “constructed using two or more omnidirectional microphones and associated signal
`
`processing,” Ex. 10 (5/20 at 10:57PM PT email from Prescott to Ostling)—yet these elements,
`
`which are needed to construct a virtual microphone, are missing from the ’058 and ’543 patents’
`
`disclosures. Specifically, the “associated signal processing” to construct a virtual microphone is
`
`not disclosed in either patent specification. And the ’058 patent specification also fails to disclose
`
`“using two or more omnidirectional microphones.”
`
`The absence of any disclosure of a virtual microphone in the ’058 and ’543 patents’
`
`respective specifications and prosecution histories is not surprising in view of named-inventor Mr.
`
`Burnett’s laboratory notebooks. The dated notebooks confirm that
`
`
`
`
`
`
`
`
`
` While the ’058 patent and the ’543 patent were filed
`
`in 2002 and 2003, respectively,
`
`.
`
`
`
`.
`
`This timeline is consistent with Mr. Burnett’s other patent filings, such as the ’072 patent which
`
`discusses virtual microphones and was filed in 2008.
`
`Finally, the contemporaneous extrinsic evidence accords with the intrinsic evidence and
`
`provides ample support for Apple’s proposed construction that “microphone” must mean a
`
`physical microphone in the context of the ’058 and ’543 patents. First, Jawbone already agreed to
`
`construe “acoustic microphone” as “physical microphone” in the context of the ’091 patent (which
`
`was filed contemporaneously with the ’058 and ’543 patents). Second, the following technical
`
`dictionary definitions from the relevant time period further confirm that the term “microphone”
`
`
`
`8
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`

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`Case 6:21-cv-00984-ADA Document 59 Filed 05/31/22 Page 14 of 37
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`would not have been understood to encompass a virtual microphone at the relevant time. Instead,
`
`each dictionary definition connotes physical structure and describes a physical device:
`
` Modern Dictionary of Electronics, at 471 (7th Edition, 1999) (Ex. 14): “Microphone—2.
`A device for converting sound waves or sound-producing vibrations (as from the strings of
`a guitar) into corresponding electrical impulses.”
`
` Handbook for Sound Engineers, at 321 (1988) (Ex. 15): “Microphones are electroacoustic
`devices that convert acoustical energy into electrical energy.”
`
` The Authoritative Dictionary of IEEE Standards Terms, at 693 (2000) (Ex. 16):
`“microphone: [a]n electroacoustic transducer that responds to soundwaves and delivers
`essentially equivalent electric waves.”
`
` The Illustrated Dictionary of Electronics, at 437 (7th Edition, 1997) (Ex. 17):
`“microphone: [a] transducer that converts sound waves, especially speech and music, into
`electrical voltage analogs.”
`
`Both the intrinsic and the extrinsic evidence make clear that the term “microphone” refers
`
`to only a physical microphone in the context of the ’058 and ’543 patents—and not a virtual
`
`microphone, as Jawbone will argue. The claim language and additional intrinsic record focus on
`
`the physical microphones being spatially arranged relative to one another and a user’s head. The
`
`extrinsic evidence, including inventor notebooks, is consistent. Accordingly, a person of skill
`
`would interpret “microphone” in this context to mean a “physical microphone,” and not also a
`
`virtual microphone as Jawbone will argue. The Court should therefore construe the “microphone”
`
`term in each of the ’058 and ’543 patents to mean “physical microphone.”
`
`B.
`
`“the acoustic signals” / “the acoustic signal received at the one receiver” /
`“the acoustic signals received at each of the two receivers” (’058 patent,
`claim 1) (proposed by Apple)
`
`JAWBONE
`Plain and ordinary meaning; no
`construction necessary
`
`Indefinite.
`
`APPLE
`
`Claim 1 of the ’058 patent is indefinite for two reasons. First, the term “the acoustic
`
`signals” in claim 1 lacks an antecedent basis. See, e.g., Halliburton Energy Servs., Inc. v. M-I
`
`9
`
`

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`Case 6:21-cv-00984-ADA Document 59 Filed 05/31/22 Page 15 of 37
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`LLC, 514 F.3d 1244, 1249 (Fed. Cir. 2008) (“[A] claim could be indefinite if a term does not have
`
`proper antecedent basis where such basis is not otherwise present by implication or the meaning
`
`is not reasonably ascertainable.”). Claim 1 recites “at least two microphones that receive the
`
`acoustic signals,” but there is no mention of an acoustic signal in any prior limitation. ’ 058 patent
`
`at cl. 1.
`
`Second, the claim is indefinite because it is unclear what the terms “the one receiver” and
`
`“the two receivers” mean in the context of claim 1. Claim 1 of the ’058 patent recites:
`
`A system for detecting voiced and unvoiced speech in acoustic signals
`having varying levels of background noise, comprising:
`
`at least two microphones that receive the acoustic signals;
`
`at least one voicing sensor that receives physiological information associated
`with human voicing activity; and
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`at least one processor coupled among the microphones and the voicing
`sensor, wherein the at least one processor;
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`generates cross correlation data between the physiological information and an
`acoustic signal received at one of the two microphones;
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`identifies information of the acoustic signals as voiced speech when the cross
`correlation data corresponding to a portion of the acoustic signal received at
`the one receiver exceeds a correlation threshold;
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`generates difference parameters between the acoustic signals received at each
`of the two receivers, wherein the difference parameters are representative of
`the relative difference in signal gain between portions of the received acoustic signals; ….
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`A person of skill would not be able to determine whether “the one receiver” refers to one of the
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`microphones, the voicing sensor, or the processor. Ex. 18 (Reader Decl.) ¶ 41. The microphones
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`“receive” signals, the voicing sensor “receives” signals, and the processor is coupled to the
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`microphones and the voicing sensor, i.e., it receives whatever the microphones and the voicing
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`sensor receive. Id. In other words, all of these prior-recited devices in the claim “receive” a signal.
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`For the same reason, it is unclear what “the two receivers” refers to in the next element of claim
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`Case 6:21-cv-00984-ADA Document 59 Filed 05/31/22 Page 16 of 37
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`1. Id. The terms “the one receiver” and “the two receivers” are thus indefinite because earlier
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`claim elements describe different receivers and the claim does not specify which, if any, constitutes
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`“the one receiver” or “the two receivers.” See, e.g., Baldwin Graphics Sys., Inc. v. Siebert, Inc.,
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`512 F.3d 1338, 1343 (Fed. Cir. 2008) (holding that a claim limitation lacks antecedent basis “where
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`it would be unclear as to what element the limitation was making reference”); Bushnell Hawthorne,
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`LLC v. Cisco Sys. Inc., 813 F. App’x 522, 526 (Fed. Cir. 2020) (finding term “said different IP
`
`Address” indefinite where claim elsewhere described three classes of IP addresses and did not
`
`explain which constituted “the different IP Address”).
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`Moreover, the specification does not clarify what a “receiver” means in the context of claim
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`1. Ex. 18 (Reader Decl.) ¶ 42. The term “receiver” appears in one paragraph of the entire written
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`description of the ’058 patent. The written description states only that “speech from a human
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`speaker is captured and transmitted to a receiver” and that “the receiver” can be “human or
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`machine.” ’058 patent at 1:26-33. Thus, based on the disclosures in the specification, a “receiver”
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`could refer to a microphone, a voicing sensor, or a processor. Ex. 18 (Reader Decl.) ¶ 42. In
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`addition, claim 2 of the ’058 patent recites “receivers,” which a person of ordinary skill in the art
`
`would have understood to include, for example, a microphone, a voicing sensor, or a processor.
`
`Id. In sum, the ’058 patent provides no indication as to whether “the one receiver” or “the two
`
`receivers” recited in claim 1 refers to the microphones, the voicing sensor, the processor, or some
`
`combination thereof; and it certainly does not identify which one or two microphones, voicing
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`sensors, or processors is claimed.
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`Case 6:21-cv-00984-ADA Document 59 Filed 05/31/22 Page 17 of 37
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`Claim 1 thus “fail[s] to inform, with reasonable certainty, those skilled in the art about the
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`scope of the invention,” and must be held indefinite.3 Nautilus, 572 U.S. at 901.
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`C.
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`“transfer function” (’091 patent, claims 1, 2, 4, 5, 9, 11, 15; ’357 patent,
`claims 1, 15; ’080 patent, claims 1, 14) (proposed by Jawbone)
`
`JAWBONE
`“a mathematical expression that specifies
`the relationship between an output signal
`and an input signal”
`
`APPLE
`Plain and ordinary meaning
`
`This claim language is plain on its face and no construction is necessary. The term “transfer
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`function” would be readily understood by a person of ordinary skill in the art or lay jury.
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`Jawbone’s proposal does not add clarity; if anything, it would introduce uncertainty. For
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`instance, it is not clear what “relationship” between the output and input signals is being
`
`“specifie[d].” The term “signal” in Jawbone’s proposed construction also adds confusion because
`
`certain transfer functions disclosed in the specifications are calculated when “a signal is not being
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`generated.” See, e.g., ’091 patent at 4:28-46; see also ’080 patent at 5:19-38.
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`Moreover, the specifications do not support Jawbone’s proposed construction because the
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`embodiments do not always utilize an “output signal and an input signal” in calculating “transfer
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`functions.” For example, the transfer functions disclosed in the specifications do not always use
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`both “output” and “input” signals. The ’091 patent specification uses a ratio of microphone input
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`signals—not any “output signal”—to calculate certain transfer functions. See e.g., ’091 patent at
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`5:1-8 (explaining that the transfer function H2(z) is being calculated using “inputs” where “only
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`the signal is occurring”).
`
`
`3 Jawbone has proposed that the “acoustic signal[s]” terms in claims 1 and 2 of the ’091 patent
`refer to some set of the acoustic signals received by the “at least two microphones that receive the
`acoustic signals” in claim 1, and some set of the acoustic signals received by the “at least two
`receivers that receive the acoustic signals” in claim 2. See Ex. 10 (5/18 at 10:27AM PT email
`from Ostling to Counsel). However, that proposal does not cure the indefiniteness issues discussed
`above.
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`Case 6:21-cv-00984-ADA Document 59 Filed 05/31/22 Page 18 of 37
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`Additionally, at other points in the ’091 patent specification, transfer functions are
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`“redefined” to be 1 (or “unity”)—in other words, the output signal and input signal are ignored in
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`this calculation. Id. at 3:51-59 (“The transfer functions from the signal source 100 to MIC 1 and
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`from the noise source 101 to MIC 2 are assumed to be unity. . . . The r