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 SUR-REPLY TO PETITIONER APPLE’S
`OPPOSITION TO MOTION TO EXCLUDE EVIDENCE
`PURSUANT TO 37 C.F.R. § 42.64
`
`
`
`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 SUR-REPLY TO PETITIONER APPLE’S
`OPPOSITION TO MOTION TO EXCLUDE EVIDENCE
`PURSUANT TO 37 C.F.R. § 42.64
`
`
`
`Case No. IPR2020-00686
`Patent No. 7,076,431
`
`I.
`II.
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`APPLE SHOULD HAVE MADE THEIR CLAIM CONSTRUCTION
`ARGUMENT IN THE PETITION.................................................................. 1
`A.
`Parus’s Suggested Claim Construction Is Not New And Is
`Based On The Intrinsic Record And Should Have Been
`Addressed In The Petition ..................................................................... 1
`THE DECLARATION GOES BEYOND THE CLAIM
`CONSTRUCTION ISSUE TO OFFER NEW
`THEORIES/EVIDENCE ABOUT LADD ...................................................... 3
`IV. CONCLUSION ................................................................................................ 5
`
`III.
`
`i
`
`
`
`Case No. IPR2020-00686
`Patent No. 7,076,431
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge, Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) .................................................................... 2, 4, 5
`
`ii
`
`
`
`Case No. IPR2020-00686
`Patent No. 7,076,431
`
`I.
`
`INTRODUCTION
`Parus’s Motion to Exclude should be granted because Apple has raised new
`
`arguments and theories that should have been included in the Petition. Apple’s
`
`supplemental declaration is improper because Apple should have made their claim
`
`construction argument in the Petition. Regardless, the supplemental declaration
`
`improperly goes beyond the claim construction issue to offer new theories and
`
`evidence about Ladd. Parus requests the Board grant its Motion to Exclude.
`
`II.
`
`APPLE SHOULD HAVE MADE THEIR CLAIM CONSTRUCTION
`ARGUMENT IN THE PETITION
`Apple should have made their claim construction argument in the Petition, but
`
`failed to do so. Parus’s suggested claim construction is not new and stems from the
`
`four corners of the ’431 and ’084 patents. The ’431 and ’084 Patents clearly disavow
`
`speaker-independent speech recognition that use predefined voice patterns. See,
`
`e.g., Ex. 1001, 4:42-43. In the Petition, Apple had every opportunity to argue that
`
`Ladd’s speech recognition is not the very speaker-independent speech recognition
`
`disavowed by the ’431 and ’084 patents, but Apple failed to do so.
`
`A.
`
`Parus’s Suggested Claim Construction Is Not New And Is Based
`On The Intrinsic Record And Should Have Been Addressed In
`The Petition
`There is nothing new about Parus’s suggested claim construction. (Paper 30,
`
`2). Apple should have known Parus’s claim construction because it is based on the
`
`plain teachings of the ’431 and ’084 patents. See, e.g., Paper 29, 8-9.
`
`1
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`Case No. IPR2020-00686
`Patent No. 7,076,431
`Apple should have been aware that the ’431 and ’084 patents both disavow
`
`speaker-independent speech recognition that used predefined voice patterns when
`
`they filed their Petition. See, e.g., Ex. 1001, 4:42-43. At that stage of the proceeding,
`
`Apple had the opportunity to argue that Ladd’s speaker-independent speech
`
`recognition was different than the speaker-independent speech recognition that was
`
`disavowed from the ’431 and ’084 patents, but Apple chose not to do so.
`
`Instead, Apple spent a paragraph and a figure to argue that “Ladd teaches a
`
`speaker-independent speech recognition device,” and never argues how Ladd’s
`
`speaker-independent speech recognition device meets the claimed speaker-
`
`independent speech recognition device from the ’431 and ’084 patents. (Paper 1,
`
`22-23). Similarly, in his declaration, Dr. Terveen spends a paragraph on speaker-
`
`independent speech recognition device, noting that “Ladd teaches a very similar
`
`network architecture as the ’431 Patent,” but never argues how the speaker-
`
`independent speech recognition device meets the claimed speaker-independent
`
`speech recognition device from the ’431 and ’084 patents. (Ex. 1003, ¶ 90).
`
`Both Petitioner and Dr. Terveen had ample opportunities to demonstrate how
`
`the speech recognition in the ’431 relates to the speech recognition disclosed in
`
`Ladd, but chose not to. The appropriate time to include this information is in the
`
`Petition, not a Reply to the POR. See Intelligent Bio-Systems, Inc. v. Illumina
`
`Cambridge, Ltd., 821 F.3d 1359, 1362 (Fed. Cir. 2016) (“[i]t is of the utmost
`
`2
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`Case No. IPR2020-00686
`Patent No. 7,076,431
`importance that petitioners in inter partes review proceedings adhere to the
`
`requirement that the initial petition identify with particularity the evidence that
`
`supports the grounds for the challenge to each claim.”). At least for this reason,
`
`Parus asks the Board to exclude it as evidence in this evidentiary hearing.
`
`III. THE DECLARATION GOES BEYOND THE CLAIM
`CONSTRUCTION ISSUE TO OFFER NEW THEORIES/EVIDENCE
`ABOUT LADD
`Regardless of the fact that Apple should have made their claim construction
`
`argument in the Petition, Dr. Terveen’s supplementary declaration goes beyond the
`
`claim construction issues to offer new theories/evidence about the prior art.
`
`For example, in §§ II.A-C, for the very first time, Dr. Terveen argues that both
`
`Ladd and the ’431 and ’084 patents describe a two-step speech recognition process;
`
`Ladd equates “grammar” with “vocabulary;” and Ladd defines a speech/voice
`
`pattern as a key word or key phrase. These sections introduce a theory of how speech
`
`recognition works as well as how speech recognition works in Ladd and should have
`
`been included in the Petition and Dr. Terveen’s initial declaration. Apple and Dr.
`
`Terveen both used a single paragraph to argue how Ladd discloses the speaker-
`
`independent speech recognition as claimed in the ’431 and ’084 patents. In §§ II.A-
`
`C, Dr. Terveen uses twenty-one paragraphs to argue that the speaker-independent
`
`speech recognition in Ladd is not the disavowed speaker-independent speech
`
`recognition in the ’431 and ’084 patents. The appropriate time to include this
`
`3
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`Case No. IPR2020-00686
`Patent No. 7,076,431
`information is in the Petition, not a Reply to the POR. See Intelligent Bio-Systems,
`
`Inc.
`
`Finally, in § II.D, for the first time, Dr. Terveen argues that Ladd’s speaker-
`
`independent speech recognition is different than the disavowed speaker-independent
`
`speech recognition from the ’431 and ’084 patents.
`
`In an attempt to demonstrate that he is rebutting a new argument, Dr. Terveen
`
`mischaracterizes Mr. Occhiogrosso’s testimony by claiming that “Mr. Occhiogrosso
`
`explained in his deposition that it is Parus’s position that the ’431 Patent’s meaning
`
`of these ‘predefined voice patterns’ being excluded are ‘a word or utterance, and its
`
`spectral energy—typically—spectral energy as a function of time.’” Mr.
`
`Occhiogrosso never made such a claim, and he clarified that his statements were not
`
`regarding the ’431 patent: “So this is not with respect to the ’431 Patent? Q. That’s
`
`correct.” (Ex. 1040 ¶ 23; Ex. 1039 at 30:4-16).
`
`Apple’s assertion that the Motion to Exclude is “the first time Parus has raised
`
`the substantive issue of whether Mr. Occhiogrosso’s quoted deposition testimony
`
`was taken out of context” is baseless. (Paper 30, 5). Contrary to Apple’s assertion,
`
`the Motion to Exclude is not the first time that Parus has pointed out that Apple and
`
`Dr. Terveen mischaracterized Mr. Occhiogrosso’s statements.
`
` Parus has
`
`consistently argued that Apple and Dr. Terveen mischaracterize Mr. Occhiogrosso’s
`
`declaration and deposition testimony. (Paper 21, 1, 10, 13, 15-19).
`
`4
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`Case No. IPR2020-00686
`Patent No. 7,076,431
`Section II.D is the first time Dr. Terveen argues that Ladd’s speaker-
`
`independent speech recognition is different than the disavowed speaker-independent
`
`speech recognition from the ’431 and ’084 patents. Mischaracterizing Mr.
`
`Occhiogrosso’s testimony in an attempt to disguise this as a rebuttal does not negate
`
`the fact that Ladd’s speaker-independent speech recognition is no different than the
`
`speaker-independent speech recognition disavowed in the ’431 and ’084 patents.
`
`Apple and Dr. Terveen each spend one paragraph arguing that Ladd discloses
`
`speaker-independent speech recognition and never attempted to argue how Ladd’s
`
`speaker-independent speech recognition is different than the disavowed speaker-
`
`independent speech recognition from the ’431 and ’084 patents. Apple and Dr.
`
`Terveen should not be allowed to include twenty-four paragraphs describing the
`
`differences at this late stage of the proceeding. See Intelligent Bio-Systems, Inc.
`
`IV. CONCLUSION
`For each and every of the foregoing reasons, Patent Owner respectfully
`
`requests that Patent Owner’s motion to exclude evidence be granted and that §§ II.A-
`
`D of the Supplemental Declaration of Dr. Loren Terveen (Petitioner’s Exhibit 1040)
`
`be excluded.
`
`5
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`
`
`Date: June 16, 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
`
`6
`
`
`
`Case No. IPR2020-00686
`Patent No. 7,076,431
`
`CERTIFICATE OF SERVICE
`
`I certify that copies of Patent Owner’s Sur-Reply to Petitioner Apple’s
`
`Opposition to Patent Owner’s Motion to Exclude Evidence Pursuant to 37 C.F.R. §
`
`42.64 is 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: June 16, 2021
`
`/Michael J. McNamara/
`Michael J. McNamara (Reg. No. 52,017)
`
`7
`
`
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