UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`PARUS HOLDINGS, INC.,
`Patent Owner.
`
`Case No. IPR2020-00686
`U.S. Patent No. 7,076,431
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION TO
`STRIKE PORTIONS OF PATENT OWNER’S SUR-REPLY
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`PARUS HOLDINGS, INC.,
`Patent Owner.
`
`Case No. IPR2020-00686
`U.S. Patent No. 7,076,431
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION TO
`STRIKE PORTIONS OF PATENT OWNER’S SUR-REPLY
`
`
`
`I.
`
`II.
`
`Case No. IPR2020-00686
`Patent No. 7,076,431
`
`TABLE OF CONTENTS
`Parus’s Expert’s Supplemental Declaration Is Not New Evidence ................. 1
`A.
`Exhibit 2027 was filed in response to Dr. Terveen’s
`Supplemental Declaration ..................................................................... 1
`Ex. 2027 does not include new opinions, so Apple is not
`prejudiced .............................................................................................. 3
`Parus has not advanced a new claim construction argument ................ 5
`Ex. 2026 was filed in response to Apple’s and Dr. Terveen’s
`citations in Ladd .................................................................................... 7
`Petitioner’s Argument to Strike Portions of the Sur-Reply
`Should Be Rejected ............................................................................... 7
`CONCLUSION ................................................................................................ 7
`
`B.
`
`C.
`D.
`
`E.
`
`i
`
`
`
`Case No. IPR2020-00686
`Patent No. 7,076,431
`
`I.
`
`Parus’s Expert’s Supplemental Declaration Is Not New Evidence
`Apple’s allegation that Exhibit 2027, a two-paragraph declaration, is new
`
`evidence that was filed without authorization is unfounded for two reasons, and both
`
`reasons demonstrate that it was filed properly. First, Parus filed Mr. Occhiogrosso’s
`
`declaration in order to rebut new opinions that Dr. Terveen advanced in twenty-nine
`
`paragraphs of his supplemental declaration, which contained new opinions and
`
`arguments that could have and should have been part of his initial declaration.
`
`Second, Mr. Occhiogrosso’s supplemental declaration does not contain new
`
`opinions as Apple alleges.
`
`A.
`
`Exhibit 2027 was filed in response to Dr. Terveen’s Supplemental
`Declaration
`Parus filed Mr. Occhiogrosso’s two-paragraph supplemental declaration with
`
`its Sur-reply. In its Sur-reply, Parus stated that in the event that the Board allowed
`
`Dr. Terveen’s supplemental declaration,
`
`that Parus was
`
`including Mr.
`
`Occhiogrosso’s supplemental declaration to rebut the new opinions and arguments
`
`in Dr. Terveen’s supplemental declaration.
`
`Without authorization, Apple filed Exhibit 1040, Supplemental Declaration
`
`of Loren Terveen, with its Reply to the POR. Parus timely objected to this
`
`submission because, among other reasons, Apple did not seek prior authorization,
`
`1
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`
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`Case No. IPR2020-00686
`Patent No. 7,076,431
`and because it contained new opinions and theories that Apple could have included
`
`in its Petition.1
`
`Apple filed the supplemental declaration under the guise of rebutting
`
`arguments in the POR, but Dr. Terveen does not rebut any arguments from the POR,
`
`and instead includes new opinions and theories that should have been included in
`
`the Petition.
`
`For example, in the declaration, Dr. Terveen claims that he had been asked to
`
`“respond to certain issues raised by Patent Owner in Patent Owner’s Response dated
`
`December 23, 2020 (‘POR’).” (Ex. 1040, ¶ 1). Dr. Terveen’s supplemental
`
`declaration does not rebut certain issues raised by Patent Owner in its POR. Instead,
`
`Dr. Terveen spends the bulk of his supplemental declaration attempting to describe
`
`how he thinks speech recognition works, how he thinks it works in Ladd, and how
`
`he thinks it is purportedly similar to the disclosures of the ’431 Patent. These new
`
`arguments and opinions should have been included in the Petition. (See PTAB’s
`
`Consolidated Trial Practice Guide (November 2019) (Nov. 2019 TPG), 73 (“[i]t is
`
`also improper for a reply to present new evidence (including new expert testimony)
`
`that could have been presented in a prior filing”)).
`
`1 Parus intends to file a motion to exclude the declaration at the appropriate
`deadline.
`
`2
`
`
`
`Interestingly,
`
`in Dr. Terveen’s
`
`Case No. IPR2020-00686
`Patent No. 7,076,431
`twenty-nine paragraph supplemental
`
`declaration, in which Apple alleges that he was responding to certain issues raised
`
`in the POR, he cites to the POR once, and that is not until paragraph twenty-three.
`
`(Ex. 1040). In this singular citation to the POR, Dr. Terveen does not even rebut the
`
`section he cites. Instead, Dr. Terveen takes Mr. Occhiogrosso’s testimony from his
`
`deposition out of context, falsely alleges that Mr. Occhiogrosso explained that this
`
`represented Parus’s position in regards to the ’431 Patent, and then attempts to rebut
`
`what Mr. Occhiogrosso testified about in his deposition, and how it is purportedly
`
`different than Ladd. This is not a response to certain issues raised in Parus’s POR.
`
`These are new opinions that should have been included in the Petition. Nothing in
`
`Mr. Occhiogrosso’s deposition changed the disclosure of Ladd, the ’431 Patent, or
`
`the state of the art.
`
`Mr. Occhiogrosso rebutted these new opinions with his two-paragraph
`
`supplemental declaration. As such, this supplemental declaration did not require
`
`prior authorization.
`
`Ex. 2027 does not include new opinions, so Apple is not prejudiced
`B.
`Ex. 2027 does not include new opinions contrary to Apple’s assertions. (Paper
`
`25, 2). Mr. Occhiogrosso’s statement that Ladd teaches “speech recognition that
`
`directly compares audio inputs, not text, to a vocabulary or grammar in order to
`
`3
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`
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`Case No. IPR2020-00686
`Patent No. 7,076,431
`identify a selected speech pattern of the inputs” is consistent and supported by his
`
`prior declaration.
`
`The record clearly demonstrates that Mr. Occhiogrosso consistently states that
`
`the speech recognition in Ladd directly compares audio inputs to a vocabulary or
`
`grammar in order to identify a selected speech pattern of the inputs, and Ladd does
`
`not convert speech to text and compare that text to the grammar. For example, in
`
`his initial declaration, Mr. Occhiogrosso states “Ladd specifically discloses that
`
`‘[w]hen the ASR unit 254 identifies a selected speech pattern of the speech
`
`inputs, the ASR unit 254 sends an output signal to implement the specific function
`
`associated with the recognized voice pattern.’” (Ex. 2025, ¶ 84 (emphasis from Ex.
`
`2025)). Mr. Occhiogrosso further states that “either a speech or a voice pattern is
`
`traditionally associated with a voice or speech sample (audio input) extracted from
`
`an individual’s speech and subjected to signal processing to verify the identity of the
`
`individual speaker, but not necessarily the words spoken (text). (Ex. 2025, ¶ 87
`
`(bolded annotations added)). Further, Mr. Occhiogrosso states that Ladd “‘identifies
`
`a selected speech pattern (audio)…to implement the specific function associated
`
`with the recognized voice pattern (audio).’” (Ex. 2025, ¶ 85 (bolded annotations
`
`added)).
`
`Finally, Mr. Occhiogrosso also states that “Ladd indicates that it looks up ‘pre-
`
`existing grammar’ or generates grammar by looking up ‘pronunciations for the user
`
`4
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`
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`Case No. IPR2020-00686
`Patent No. 7,076,431
`in a dictionary’” and Ladd “‘attempts to match the grammar to the user input
`
`(audio).’” (Ex. 2025, ¶ 85 (bolded annotations added)). In his deposition, Mr.
`
`Occhiogrosso provided consistent testimony, which was cited by Petitioner, where
`
`he stated that in systems like Ladd, which do not analyze phonemes to recognize a
`
`word, “[t]he voice pattern is simply captured in its entirety and then matched to a
`
`referenced voice pattern.” (Ex. 1039, 43:16-44:7). These statements clearly
`
`demonstrate that Mr. Occhiogrosso previously stated that Ladd compares audio
`
`inputs, not text, to a vocabulary or grammar in order to identify a selected speech
`
`pattern of the inputs, and the statements in his supplemental declaration do not
`
`constitute new opinions as Apple alleges.
`
`Parus has not advanced a new claim construction argument
`C.
`Parus looked to the intrinsic evidence of the ’431 and ’084 specifications for
`
`the meaning of speaker-independent speech recognition in the context of the ’431
`
`and ’084 Patents. Both patent specifications are clear that they disclaim the use of
`
`predefined voice patterns in the speaker independent speech recognition device. For
`
`example, the ’431 and ’084 both state “[s]uch speech recognition systems use
`
`phonemes to recognize spoken works and not predefined voice patterns.” (Ex.
`
`1001, 4:42-43; Ex. 1030, 4:55-56). That position has been consistent throughout
`
`this IPR proceeding.
`
`5
`
`
`
`Case No. IPR2020-00686
`Patent No. 7,076,431
`While filing their Petition, Apple ignored the specifications of the ’431 and
`
`’084 Patents. Instead, it appears Apple saw the term “speaker independent” in Ladd
`
`and concluded it is the same speaker-independent recognition device as disclosed in
`
`the ’431 and ’084 Patents. They did not explain how or why this was the same
`
`speaker-independent speech recognition device disclosed in the ’431 and ’084
`
`Patents. Instead, for the very first time, Apple and Dr. Terveen have come up with
`
`new arguments about a purported two-step speech recognition process, which
`
`conflate speech recognition and natural language understanding, which are distinctly
`
`different things, and how it purportedly relates to Ladd and the ’431 and ’084
`
`Patents. (Paper 19, 5-14; Ex. 1040, ¶¶ 2-25). Putting aside that this argument
`
`conflicts with the plain language of Ladd and the ’431 and ’084 Patents, the
`
`appropriate place to disclose these new arguments regarding how the speech
`
`recognition in Ladd is purportedly the same as the speech recognition in the ’431
`
`and ’084 Patents was in the Petition, not in its Reply. Apple is impermissibly trying
`
`to add new opinions and arguments at this late stage of the proceedings, which
`
`necessitated a rebuttal declaration. Apple cannot, and the Board should not allow
`
`these new arguments, especially without allowing Patent Owner to rebut those
`
`opinions and arguments. (See PTAB’s Consolidated Trial Practice Guide
`
`(November 2019) (Nov. 2019 TPG), 73 (“[i]t is also improper for a reply to present
`
`6
`
`
`
`Case No. IPR2020-00686
`Patent No. 7,076,431
`new evidence (including new expert testimony) that could have been presented in a
`
`prior filing”)).
`
`D.
`
`Ex. 2026 was filed in response to Apple’s and Dr. Terveen’s
`citations in Ladd
`Parus filed Ex. 2026 in response to Apple’s and Dr. Terveen’s citations to
`
`Ladd. Parus agrees that Ex. 2026 could have been entered earlier in this proceeding
`
`and agrees to withdraw it.
`
`E.
`
`Petitioner’s Argument to Strike Portions of the Sur-Reply Should
`Be Rejected
`None of the arguments from the sur-reply should be stricken. To the extent
`
`that the Board agrees to strike Ex. 2027, citations to Ex. 2027 should be stricken
`
`from the sur-reply. The arguments in the sur-reply should stand as is. None of those
`
`arguments should be stricken. Petitioner does not argue that the content of the sur-
`
`reply is improper and, as such, it should stand as submitted. If Ex. 2027 is stricken,
`
`then citations to that exhibit should be removed. That is the extent of the relief to
`
`which Petitioner is entitled.
`
`II.
`
`CONCLUSION
`For each and every of the foregoing reasons, and for the reasons discussed in
`
`Patent Owner’s Sur-Reply, Patent Owner asks the Board to deny Petitioner’s Motion
`
`to Strike Portions of Patent Owner’s Sur-Reply.
`
`7
`
`
`
`Date: May 24, 2021
`
`Case No. IPR2020-00686
`Patent No. 7,076,431
`
`/Michael J. McNamara/
`Michael J. McNamara (Reg. No. 52,017)
`Michael T, Renaud (Reg. No. 44,299)
`William A. Meunier (Reg. No. 41,193)
`Andrew H. DeVoogd (pro hac vice to be filed)
`MINTZ, LEVIN, COHN, FERRIS, GLOVSKY
`AND POPEO, P.C.
`One Financial Center
`Boston, MA 02111
`Telephone: 617-348-1884
`Facsimile: 617-542-2241
`E-mails: mmcnamara@mintz.com
`mtrenaud@mintz.com
`wameunier@mintz.com
`ahdevoogd@mintz.com
`
`8
`
`
`
`Case No. IPR2020-00686
`Patent No. 7,076,431
`
`CERTIFICATE OF SERVICE
`
`I certify that copies of Patent Owner’s Opposition to Petitioner’s Motion to
`
`Strike Portions of Patent Owner’s Sur-Reply are being served by electronic mail on
`
`the following counsel of record:
`
`Lead Counsel
`Jennifer C. Bailey (Reg. No. 52,583)
`ERISE IP, P.A.
`7015 College Blvd., Ste. 700
`Overland Park, Kansas 66211
`Telephone: (913) 777-5600
`Facsimile: (913) 777-5601
`Jennifer.Bailey@eriseip.com
`
`Backup Counsel
`Adam P. Seitz (Reg. No. 52,206)
`ERISE IP, P.A.
`7015 College Blvd., Ste. 700
`Overland Park, Kansas 66211
`Telephone: (913) 777-5600
`Facsimile: (913) 777-5601
`Adam.Seitz@eriseip.com
`
`Dated: May 24, 2021
`
`/Michael J. McNamara/
`Michael J. McNamara (Reg. No. 52,017)
`
`9
`
`
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