UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
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`Petitioner
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`v.
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`PARUS HOLDINGS, INC.,
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`Patent Owner
`___________
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`
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`Case No. IPR2020-00686
`U.S. Patent No. 7,076,431
`____________
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`PETITIONER APPLE INC.’S MOTION TO STRIKE PORTIONS OF
`PATENT OWNER’S SUR-REPLY
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`APPLE INC.,
`
`Petitioner
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`v.
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`PARUS HOLDINGS, INC.,
`
`Patent Owner
`___________
`
`
`
`Case No. IPR2020-00686
`U.S. Patent No. 7,076,431
`____________
`
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`PETITIONER APPLE INC.’S MOTION TO STRIKE PORTIONS OF
`PATENT OWNER’S SUR-REPLY
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`I.
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`Parus’s New Evidence Is Not Authorized by the Board’s Rules
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`Pursuant to the Board’s authorization via email on May 10, 2021, Petitioner
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`requests Exhibits 2026 and 2027 filed with Patent Owner’s Sur-Reply (Paper 21)
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`and the related portions of the Sur-Reply be stricken. Without authorization, Patent
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`Owner submitted new evidence in its Sur-Reply. Per the PTAB’s Trial Practice
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`Guide, “[t]he sur-reply may not be accompanied by new evidence other than
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`deposition transcripts of the cross-examination of any reply witness.” PTAB’s
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`Consolidated Trial Practice Guide (November 2019) (Nov. 2019 TPG) at 73.
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`The Board consistently expunges new evidence submitted in a Sur-Reply and
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`contrary to the Nov. 2019 TPG. Under similar circumstances, the Board previously
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`expunged late-filed exhibits and struck the related portions of the Patent Owner’s
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`Sur-Reply. Mallinckrodt Pharmaceuticals Ireland Limited v. Biovie, Inc., IPR2018-
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`00974, Paper 34 at 7–10 (striking portions of the Sur-Reply related to a late-filed
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`exhibit); Lenovo Holding Company, Inc. v. Dodots Licensing Solutions LLC,
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`IPR2019-01279, Paper 37 at 34–34 (striking a Supplemental Declaration filed with
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`a Sur-Reply); Apple Inv. v. Maxell, Ltd., IPR2020-00200, Paper 24 (Order, Conduct
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`of Proceeding) at 2 (ordering expungement of exhibits accompanying Patent
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`Owner’s Sur-Reply and redaction of portions of the Sur-Reply relying on such
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`exhibits).
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`1
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`Here, Parus filed a supplemental declaration (Ex. 2027) and an Installation
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`and User Guide for Dragon software (Ex. 2026). Regarding the supplemental
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`declaration (Ex. 2027), Parus’s declarant, Mr. Occhiogrosso, provides new opinions
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`regarding Ladd (Ex. 1004). Mr. Occhiogrosso generally opines Ladd teaches
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`“speech recognition that directly compares audio inputs, not text, to a vocabulary or
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`grammar in order to identify a selected speech pattern of the inputs.” (Ex. 2027, ¶ 2).
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`This opinion could have previously been provided in Mr. Occhiogrosso’s declaration
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`(Ex. 2025) submitted with the Patent Owner Response (Paper 15). Because Mr.
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`Occhiogrosso’s opinion is newly submitted in the Sur-Reply, Apple is prejudiced
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`because it was not provided an opportunity to depose Mr. Occhiogrosso on this
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`opinion.
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`Regarding Ex. 2026, the exhibit is an Installation and User Guide for Dragon
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`software. Relying on Ex. 2026, Parus asserts the Dragon software is “commonly
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`understood to be a speaker dependent system….” (Paper 21, 9). There are several
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`issues with presenting Ex. 2026. First, Parus introduces Ex. 2026 to attempt to
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`differentiate Ladd’s teachings. Parus could have introduced Ex. 2026 with its Patent
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`Owner Response. Second, Ex. 2026 is not authenticated nor is it established the
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`exhibit is prior art or indicative of the functionality of the Dragon software prior to
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`the critical date of the ’431 Patent. Third, there is no evidence other than the
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`conclusory attorney assertion that Ex. 2026 stands for the proposition stated in the
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`2
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`Petitioner Sur-Reply at page 9 (and in fact, the cited text does not appear to reference
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`a speaker dependent system). Introduction of Ex. 2026 is prejudicial to Apple
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`because Apple was foreclosed from deposing Mr. Occhiogrosso regarding the
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`exhibit and providing a substantive response to Parus’s assertions, including with
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`Apple’s own expert support submitted with the Petitioner Reply.
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`Because both Exhibits 2026-2027 are late-filed, and because Apple would be
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`prejudiced from reliance on such exhibits, Apple requests expungement of Exhibits
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`2026-2027.
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`II.
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`Portions of Parus’s Sur-Reply Should Be Struck
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`In addition to expungement of Exhibits 2026-2027, Apple requests those
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`portions of the Sur-Reply relying on Exhibits 2026-2027 be struck. Submitted with
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`this Paper is Exhibit 1042, which is the Patent Owner’s Sur-Reply with the below-
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`listed sections indicated by strikethrough. The selected portions are narrowly
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`tailored to only the text of the Sur-Reply relying on Exhibits 2026-2027.
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`Petitioner requests the following improper portions of Patent Owner’s Sur-
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`Reply (Paper 21) relating to Exhibits 2026-2027 be stricken:
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`•
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`Page 9: “Notably, the STT unit 256 is not described as being speaker
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`independent and then uses a different ‘preferable’ software package called Dragon
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`Naturally Speaking, which is commonly understood to be a speaker dependent
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`system that requires extensive training. (Ex. 2026, 15-16).”
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`3
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`•
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`Page 10: “Speech recognition does not require two steps, and this is a
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`mischaracterization of Mr. Occhiogrosso’s statements. (Ex. 2027, ¶¶ 2-3).”
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`•
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`Pages 10-11: “Unfortunately for Apple, Ladd is clear that its speech
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`recognition device (the ASR unit 254) operates based on voice patterns, which is
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`disclaimed by the ’431 Patent. (Ex. 2027, ¶¶ 2-3).”
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`•
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`Page 12: “The speech recognition device of Ladd, to the contrary,
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`discusses recognizing a voice pattern and performing an action. (Ex. 2027, ¶¶ 2-3).”
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`•
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`Page 12: “; Ex. 2027, ¶¶ 2-3)” (citation after sentence beginning “The
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`ASR unit 254”).
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`•
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`Page 12: “; Ex. 2027, ¶¶ 2-3)” (citation after sentence beginning “Ladd
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`describes a”).
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`•
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`Page 12: “It describes comparing the ‘audio’ to the grammar. (Ex.
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`2027, ¶¶ 2-3). Ladd matches predefined voice patterns to the audio input in the
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`speech recognition phase, which is proscribed by the ’431 Patent. It does not convert
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`audio to text and somehow compare that text to a voice pattern in a later phase.”
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`•
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`Page 12-13: “Ladd is unambiguous … ; Ex. 2027, ¶¶ 2-3)”
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`(introductory phrase of “Ladd is unambiguous” and citation at end of sentence
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`beginning “Ladd is unambiguous”).
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`4
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`•
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`Page 13: “A POSITA would understand that Apple cannot claim that
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`speech recognition requires two distinct steps because speech recognition is
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`completed after step one of Apple’s purported two-step process. (Ex. 2027, ¶¶ 2-3).”
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`III. Parus Failed to Seek Authorization to File the New Evidence
`Parus should have sought authorization to submit new evidence, but it did not.
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`Parus also seemingly knew that it should not submit new evidence. In the Patent
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`Owner Sur-Reply, Parus stated: “To the extent the Board allows Dr. Terveen’s new
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`opinions in his supplemental declaration, Parus submits Mr. Occhiogrosso’s
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`supplemental declaration to rebut those new opinions.” Patent Owner Sur-Reply
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`(Paper 21) at fn2. This statement indicates Parus knew that it should not submit new
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`evidence yet still did so, and without requesting authorization, under the false
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`pretense that it was responding to evidence submitted by Apple accompanying the
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`Petitioner Reply. Parus’ reasoning fails for two reasons.
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`First, the Supplemental Expert Declaration (Exhibit 1040) of Dr. Terveen was
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`properly submitted as evidence rebutting Patent Owner’s Response. Dr. Terveen’s
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`testimony was responsive to Patent Owner’s new claim construction arguments.
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`Patent Owner now construes limitations of the asserted claims to perform speech
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`recognition without relying on “voice patterns,” while arguing that Ladd does rely
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`on “voice patterns.” Patent Owner Response (Paper 15) at 23. In Sections II.C–D of
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`Exhibit 1040 (¶¶ 11–25), Dr. Terveen explains his rebuttal opinions, with sections
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`5
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`II.A–B (¶¶ 2–10) providing the necessary background support to explain his
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`opinions. Supplemental Declaration of Dr. Terveen (Ex. 1040) at ¶¶ 2–25. Dr.
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`Terveen does not introduce any new grounds for unpatentability, but rather offers
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`his opinions to rebut Patent Owner’s new claim construction theory. Such testimony
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`is exactly the kind of Reply testimony that is permitted. Aisin Seiki Co., Ltd. et al v.
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`Intellectual Ventures II LLC, IPR2017-01539, Paper 43 at 69–70 (denying Patent
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`Owner’s motion to strike as the evidence provided by Petitioner responded to Patent
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`Owner’s arguments, “as it was entitled to do”); Eli Lilly and Company v. Los Angeles
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`Biomedical Research Institute at Harbor-UCLA Medical Center, IPR2014-00752
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`Paper 100 at 4 (noting that evidence “to document the knowledge that skilled artisans
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`would bring to bear in reading the prior art identified as producing obviousness” is
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`entirely proper (internal citations omitted)).
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`Second, even if the Supplemental Expert Declaration of Dr. Terveen did
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`exceed the proper scope, Parus’s proper recourse was to request authorization to file
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`a Motion to Strike Exhibit 1040 (or portions thereof). Patent Owner failed to do so.
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`Patent Owner is not permitted to bypass the proper procedure and file multiple new
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`exhibits without authorization.
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`Accordingly, Petitioner requests that the PTAB strike the above portions of
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`Patent Owner’s Sur-Reply and the corresponding exhibits.
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`6
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`Respectfully submitted,
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`
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`ERISE IP, P.A.
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`
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`BY: /s/ Jennifer C. Bailey
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`Jennifer C. Bailey Reg. No. 52,583
`Adam P. Seitz, Reg. No. 52,206
`7015 College Blvd., Suite 700
`Overland Park, KS 66211
`P: (913) 777-5600
`F: (913) 777-5601
`jennifer.bailey@eriseip.com
`adam.seitz@eriseip.com
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`ATTORNEYS FOR PETITIONER
`APPLE INC.
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`7
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`CERTIFICATE OF SERVICE ON PATENT OWNER
`UNDER 37 C.F.R. § 42.6
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on May 17,
`2021 the foregoing Petitioner Apple Inc.’s Motion to Strike Portions of Patent
`Owner’s Sur-Reply was served via electronic filing with the Board and via Electronic
`Mail on the following practitioners of record for Patent Owner:
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`Michael J. McNamara (mmcnamara@mintz.com)
`Michael T. Renaud (mtrenaud@mintz.com)
`William A. Meunier (wameunier@mintz.com)
`Andrew H. DeVoogd (ahdevoogd@mintz.com)
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`/s/ Jennifer C. Bailey
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`Jennifer C. Bailey Reg. No. 52,583
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`ATTORNEY FOR PETITIONER
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`8
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