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Meta Platforms, Inc. v. Eight kHz, LLC

Docket IPR2023-01020, Patent Trial and Appeal Board (June 8, 2023)
Justin Arbes, Lynne Browne, Scott Raevsky, presiding
Case TypeInter Partes Review
Patent
10448184
Patent Owner Eight kHz, LLC
Petitioner Meta Platforms, Inc.
Assignee LIT-US CHISUM 22-A LLC
...
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49 Final Written Decision original: Final Written Decision original

Document IPR2023-01020, No. 49 Final Written Decision original - Final Written Decision original (P.T.A.B. Dec. 3, 2024)
Patent Owner later clarified that it proposes replacing the conjunction “and/or” in its original construction with just “and.” Id. at 52:6–20 (agreeing to take out the word “or,” “[g]iven the claim language that requires a virtual image”).
Thus, “a patentee bears the burden of establishing that its claimed invention is entitled to an earlier priority date than an asserted prior art reference.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1376 (Fed. Cir. 2016) (citing Dynamic Drinkware, 800 F.3d at 1379).
Petitioner contends that Reif discloses the missing limitation and “also explains that a [POSITA] implementing a[n] HMD or other WED for viewing a virtual environment (as in Lyren) would have included such functionality for safety reasons, i.e., to help protect users from injury by bumping or tripping over objects in the real world.” Id. at 50.
One benefit Petitioner proposes to support a rationale to combine is that a POSITA “would have implemented this feature to help protect the users from injury by bumping, hitting, tripping over, etc., real-world objects when moving around while viewing the virtual environment in the HMD (i.e., a type of head-mounted WED).” Id. at 43–44 (citing, e.g., Ex. 1003 ¶¶ 90, 251–254).
We also agree with Petitioner’s articulated benefit that the combination would “help protect the users from injury by bumping, hitting, tripping over, etc., real-world objects when moving around while viewing the virtual environment in the HMD (i.e., a type of head-mounted WED).” Id. at 43–44.
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47 Other Hearing transcript: Other Hearing transcript

Document IPR2023-01020, No. 47 Other Hearing transcript - Other Hearing transcript (P.T.A.B. Oct. 2, 2024)
I want a big note here is that Jayne Piana, who is a LEAP practitioner, is going to handle the '179 additional issues that are at the bottom of this outline, but she is also going to have a very meaningful and substantial role, as you requested, because she is going to have to answer all the questions that you ask during the presentation.
Written description, it's the standard is that the disclosure of the application must reasonably convey to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.
Also in his deposition, which is again Exhibit 1147 at page 85, lines 12 through 14, so slightly before the last reference, Dr. Begault testified that, "In the ways that are described in my declaration I believe those would be effective alerts of changes to binaural sound."
And then if we move to slide 43, this is regarding Figure 6, which I know you talked about extensively with Meta 's counsel, Patent Owner submits this is an example of a user leaving an environment and the switch occurs from binaural sound to mono or stereo.
I would also say -- Your Honor, I will respond to your question, but while I am assembling my thoughts I would also say that, as we discussed, the legal standard on written description is reasonably conveys to a person of ordinary skill in the art that the inventor was in possession of the claimed invention as of the filing date.
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42 Notice Other: LEAP Practitioner Request and Verification Form Patent Owner

Document IPR2023-01020, No. 42 Notice Other - LEAP Practitioner Request and Verification Form Patent Owner (P.T.A.B. Sep. 3, 2024)
The applicable Privacy Act System of Records Notice for this information request is PAT-TM- 19, Dissemination Events and Registrations: Federal Register vol.
However, routine uses of this information may include disclosure to the following: to non-Federal personnel under contract to the Agency; to a court for adjudication and litigation; to the Department of Justice for Freedom of Information Act (FOIA) assistance; to members of Congress; and to National Archives and Records Administration.
The applicable Privacy Act System of Records Notice for this information request is PAT-TM- 19, Dissemination Events and Registrations: Federal Register vol.
Patent Owner is granted an additional fifteen minutes of total argument time during the consolidated oral hearing, and reminded that the LEAP practitioner is required to have a meaningful and substantive opportunity to argue.
Dear Board, am writing on behalf of Jayne C. Piana to submit the attached LEAP applications for the upcoming 9/5/2024 Oral Argument in IPR2023-01019 and IPR2023-01020.
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34 Order on Motion: ORDER Authorizing Withdrawal of Counsel 37 CFR § 4210

Document IPR2023-01020, No. 34 Order on Motion - ORDER Authorizing Withdrawal of Counsel 37 CFR § 4210 (P.T.A.B. Aug. 6, 2024)
Before JUSTIN T. ARBES, LYNNE H. BROWNE, and SCOTT RAEVSKY, Administrative Patent Judges.
Counsel may withdraw from an inter partes review proceeding only with authorization from the Board.
Petitioner seeks withdrawal of Kevin S. Tuttle, Kyle L. Elliott, Brian Strand, and Homayoon Rafatijo.
Because Patent Owner identifies new lead counsel, Erick Robinson (formerly backup counsel), as well as multiple backup counsel who will remain, and because Patent Owner represents that Petitioner does not object to the withdrawal of Kevin S. Tuttle, Kyle L. Elliott, Brian Strand, and Homayoon Rafatijo, we see no reason to deny the motion.
FURTHER ORDERED that in IPR2023-1023, Kevin S. Tuttle, Kyle L. Elliott, and Homayoon Rafatijo are considered withdrawn.
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33 Order on Motion: ORDER Setting Oral Argument 37 CFR § 4270

Document IPR2023-01020, No. 33 Order on Motion - ORDER Setting Oral Argument 37 CFR § 4270 (P.T.A.B. Aug. 5, 2024)
In accordance with the Consolidated Trial Practice Guide4 (“CTPG”), issued in November 2019, Patent Owner may request to reserve time for a brief sur-rebuttal.
Finally, the parties are reminded that each presenter should identify clearly and specifically each paper (e.g., by slide or screen number for a demonstrative) referenced during the hearing to ensure the clarity and accuracy of the court reporter’s transcript and for the benefit of all participants appearing electronically.
Either party may request that a qualifying LEAP practitioner participate in the program and conduct at least a portion of the party’s oral argument.
The Board will grant up to fifteen (15) minutes of additional argument time to that party, depending on the length of the proceeding and the PTAB’s hearing schedule.
All practitioners are expected to have a command of the factual record, the applicable law, and Board procedures, as well as the authority to commit the party they represent.
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30 Order on Motion: ORDER Authorizing Withdrawal of Counsel 37 CFR § 4210

Document IPR2023-01020, No. 30 Order on Motion - ORDER Authorizing Withdrawal of Counsel 37 CFR § 4210 (P.T.A.B. Jul. 24, 2024)
Before JUSTIN T. ARBES, LYNNE H. BROWNE, and SCOTT RAEVSKY, Administrative Patent Judges.
Petitioner filed a Motion to Withdraw Backup Counsel (Paper 282), in which Petitioner seeks the withdrawal of backup counsel Razi Safi from these proceedings.
Counsel may withdraw from an inter partes review proceeding only with authorization from the Board.
Petitioner seeks withdrawal of Razi Safi, who is now designated as backup counsel.
Because multiple backup counsel will remain, and because Petitioner represents that Patent Owner does not object to the withdrawal of Razi Safi, we see no reason to deny the motion.
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10 Institution Decision Grant: Granting Institution of Inter Partes Review 35 USC § 314

Document IPR2023-01020, No. 10 Institution Decision Grant - Granting Institution of Inter Partes Review 35 USC § 314 (P.T.A.B. Dec. 6, 2023)
Petitioner adds, “the user is not even wearing a HMD or other WED displaying a virtual environment.” Id. Patent Owner argues “that various types of events could trigger the binaural sound modification action, as described in FIG. 16.” Prelim. Resp. 34 (citing Ex. 2006 ¶ 42).
Examples of such locations include at or near a construction zone or other inherently dangerous or hazardous area, inside an automobile, on a motorcycle or other motorized vehicle, in a library or a hospital or a sports arena or an elevator or a school or classroom, on a public transport (such as a bus, train, or airplane).
Petitioner contends that Reif discloses the missing limitations and “also explains that a [POSITA] implementing a HMD or other WED for viewing a virtual environment (as in Lyren) would have included such functionality for safety reasons, i.e., to help protect users from injury by bumping or tripping over objects in the real world.” Id. at 50.
One benefit Petitioner proposes to support its rationale to combine is that a POSITA “would have implemented this feature to help protect the users from injury by bumping, hitting, tripping over, etc., real-world objects when moving around while viewing the virtual environment in the HMD (i.e., a type of head-mounted WED).” Id. at 43–44 (citing, e.g., Ex. 1003 ¶¶ 90, 251–254).
Further, Patent Owner argues, Petitioner “has not provided a reason in which a POSITA would be prompted to combine Reif in a manner to reduce volume of sounds, as opposed to creating a warning beep or message.” Id. at 39.
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