IPR2020-00864
`U.S. Patent No. RE47,049
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`AMAZON.COM, INC.
`Petitioner
`
`v.
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`VOCALIFE LLC,
`Patent Owner
`
`Patent No. RE47,049
`Filing Date: October 14, 2016
`Date of Reissued Patent: September 18, 2018
`Title: MICROPHONE ARRAY SYSTEM
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`__________________________________________________________________
`
`VOCALIFE LLC’S
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`Case No. IPR2020-00864
`__________________________________________________________________
`
`IPR PETITION
`US RE48,371
`Sonos Ex. 1037
`
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`U.S. Patent No. RE47,049
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`AMAZON.COM, INC.
`Petitioner
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`v.
`
`VOCALIFE LLC,
`Patent Owner
`
`Patent No. RE47,049
`Filing Date: October 14, 2016
`Date of Reissued Patent: September 18, 2018
`Title: MICROPHONE ARRAY SYSTEM
`
`__________________________________________________________________
`
`VOCALIFE LLC’S
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`Case No. IPR2020-00864
`__________________________________________________________________
`
`IPR PETITION
`US RE48,371
`Sonos Ex. 1037
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`IPR2020-00864
`U.S. Patent No. RE47,049
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`B.
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`TABLE OF CONTENTS
`I.
`INTRODUCTION ........................................................................................... 3
`THE ’049 PATENT ......................................................................................... 4
`II.
`III. THE PETITION SHOULD BE DENIED IN THE DISCRETION OF THE
`DIRECTOR UNDER EITHER 35 U.S.C. § 314(A) ....................................... 9
`A.
`The Parallel District Court Proceeding and the Petition Involve the
`Same Parties ........................................................................................11
`The Parallel District Court Proceeding and the Petition Involve the
`Same References, Same Arguments, and “Substantially Identical”
`Claims ..................................................................................................12
`Proximity of The District Court’s Trial Date ......................................17
`C.
`Significant Investment and Petitioner’s Delay in Filing the Petition .20
`D.
`No Stay of the Parallel District Court Proceeding ..............................25
`E.
`Other Factors Favor Discretionary Denial ..........................................25
`F.
`IV. PETITIONER HAS NOT DEMONSTRATED A REASONABLE
`LIKELIHOOD OF SUCCESS FOR THE GROUNDS ADVANCED IN
`THE PETITION, AND THE PETITION SHOULD BE DENIED. .............26
`A.
`Requirements for Showing Obviousness Under 35 U.S.C. § 103. .....26
`B.
`Saric Does Not Disclose The Digital Signal Processor Limitations ...27
`C.
`Li Does Not Disclose The Digital Signal Processor Limitations .......30
`CONCLUSION ..............................................................................................32
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`V.
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`IPR2020-00864
`U.S. Patent No. RE47,049
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`TABLE OF AUTHORITIES
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`Cases:
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (P.T.A.B. Mar. 20, 2020) ................. 13, 15, 23, 30
`Bell Atl. Corp. v. Twombly,
`550 U.S. 544, 570, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007) ................ 18, 31
`Bumble Trading Inc. v. Match Group, LLC,
`IPR2019-01538, Paper 13 (P.T.A.B. Mar. 11, 2020) ............................. 19, 20
`Cisco Sys., Inc. v. Ramot at Tel Aviv Univ. Ltd.,
`IPR2020-00123, Paper 14 (P.T.A.B. May 15, 2020) ............................. 22, 25
`Edward Life Scis. Corp. v. Evalve, Inc.,
`IPR2019-01479, Paper 7 (P.T.A.B. Feb. 26, 2020) ......................................24
`Ericcson Inc. v. Intellectual Ventures II LLC,
`IPR2018-01689, Paper 15 (P.T.A.B. Apr. 16, 2019) ............................. 20, 21
`Gen. Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha,
`IPR2016-01357, Paper 19 (P.T.A.B. Sept. 6, 2017) .....................................16
`K-Tech Telecomms., Inc. v. Time Warner Cable, Inc.,
`714 F.3d 1277 (Fed. Cir. 2013) .............................................................. 18, 31
`Next Caller Inc. v. TrustID, Inc.,
`IPR2019-00961, -00962, Paper 10 (P.T.A.B. Oct. 16, 2019) ................ 24, 30
`NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc.,
`IPR2018-00752, Paper 8 (P.T.A.B. Sept. 12, 2018) .....................................15
`Optis Wireless Tech., LLC v. Apple Inc.,
`Case No. 2:19-cv-00066-JRG, Dkt. 387 (E.D. Tex. July 21, 2020) .............25
`Samsung Elecs. Am., Inc. v. Uniloc 2017 LLC,
`IPR2019-01218, Paper 7 (P.T.A.B. Jan. 7, 2020) .........................................24
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`IPR2020-00864
`U.S. Patent No. RE47,049
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`Supercell Oy v. Gree, Inc.,
`IPR2020-00215, Paper 10 (P.T.A.B. June 10, 2020) ....................... 24, 26, 29
`Vocalife LLC v. Amazon.com, Inc. and Amazon.com LLC,
`Case No. 2:19-cv-00123-JRG, Dkt. 83 (E.D. Tex. Apr. 6, 2020) .................28
`Vocalife LLC v. Amazon.com, Inc. and Amazon.com, LLC,
`Case No. 2:19-cv-00123-JRG, Dkt. 87 (E.D. Tex. Apr 17, 2020) ......... 23, 27
`Statutes:
`35 U.S.C. § 314(a) ........................................................................................... passim
`35 U.S.C. §§ 314(b)(1).............................................................................................23
`35 U.S.C. § 316(a)(11) .............................................................................................23
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`EXHIBIT LIST
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`IPR2020-00864
`U.S. Patent No. RE47,049
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`Exhibit No.
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`2001
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`2002
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`2003
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`2004
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`2005
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`2006
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`2007
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`
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`Description of Document
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`Correspondence from Defendants Amazon.com, Inc. and
`Amazon.com, LLC Regarding Asserted Claims, dated January
`7, 2020 from Vocalife LLC v. Amazon.com, Inc. and
`Amazon.com LLC, No. 2:19-cv-00123-JRG (E.D. Tex.)
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`Correspondence from Plaintiff Vocalife LLC Regarding
`Reduction of Prior Art References, dated May 21, 2020 from
`Vocalife LLC v. Amazon.com, Inc. and Amazon.com LLC, No.
`2:19-cv-00123-JRG (E.D. Tex.)
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`Defendants Amazon.com, Inc. and Amazon.com LLC’s Second
`Supplemental Invalidity Contentions from Vocalife LLC v.
`Amazon.com, Inc. and Amazon.com LLC, No. 2:19-cv-00123-
`JRG (E.D. Tex.)
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`Second Amended Docket Control Order from Vocalife LLC v.
`Amazon.com, Inc. and Amazon.com LLC, No. 2:19-cv-00123-
`JRG, Dkt. 87 (E.D. Tex. Apr. 17, 2020)
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`Order on Motion to Continue Trial from Optis Wireless
`Technology, LLC et al. v. Apple Inc., No. 2:19-cv-00066, Dkt.
`287 (E.D. Tex. July 21, 2020)
`
`Siegal, Daniel, Why Gilstrap Is Getting Ready for Trial—And
`Not On Zoom, Law360 (May 15, 2020 6:04 p.m.),
`https://www.law360.com/articles/1273188/print?section=corpo
`rate
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`Plaintiff Vocalife LLC’s Second Amended Disclosure of
`Asserted Claims and Infringement Contentions, dated May 6,
`2020 from Vocalife LLC v. Amazon.com, Inc. and Amazon.com
`LLC, No. 2:19-cv-00123-JRG (E.D. Tex.)
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`2008
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`IPR2020-00864
`U.S. Patent No. RE47,049
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`Defendants Amazon.com, Inc. and Amazon.com LLC’s
`Preliminary Invalidity Contentions from Vocalife LLC v.
`Amazon.com, Inc. and Amazon.com LLC, No. 2:19-cv-00123-
`JRG (E.D. Tex.)
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`IPR2020-00864
`U.S. Patent No. RE47,049
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`I.
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`INTRODUCTION
`On April 23, 2020, Amazon.com, Inc. (“Petitioner”) submitted a Petition
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`(the “Petition”) to institute inter partes review (“IPR”) of U.S. Patent No.
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`RE47,049 (Ex. 1001, “the ’049 Patent”), challenging Claims 1-8, 19, 20, 22-25,
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`and 30 (“the Challenged Claims”).
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`The Petition is an attempt by Amazon to relitigate issues that overlap with
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`those in the parallel district court proceeding. The Board should exercise its
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`discretion and deny Amazon’s multiplicative Petition in view of 35 U.S.C. §
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`314(a). The consideration of the factors related to efficiency, fairness, and the
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`merits support denial where the Petitioner and the defendant in the parallel District
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`Court Proceeding are the same party and there is significant overlap between issues
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`raised in the Petition and the parallel District Court Proceeding. See infra Section
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`III.A-III.B. Further, the proximity of the District Court’s trial date to the Board’s
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`projected statutory deadline for a final written decision and the investment by
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`Patent Owner and the District Court in the parallel District Court Proceeding
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`weigh in favor of denial of this Petition. See infra Section III.C-III.D. The
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`Petitioner has not requested nor has the Court indicated that a stay be granted and
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`no evidence exists that one may be granted if a proceeding is instituted and there
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`are no other circumstances that impact the Board’s exercise of discretion in
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`denying this Petition. See infra Section III.E.
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`The Petition should also be denied because the Petitioner has failed to
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`demonstrate a reasonable likelihood that the Challenged Claims of the ’049 Patent
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`are invalid as obvious under 35 U.S.C. § 103(a) based on the prior art references
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`and obviousness grounds set forth in the Petition. The prior art references and
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`obviousness grounds cannot render the Challenged Claims obvious because they
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`fail to disclose all of the elements required by the Challenged Claims. See infra
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`Section IV. For example, the prior art references do not disclose a “sound source
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`localization unit,” “adaptive beamforming unit,” and “noise reduction unit”
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`integrated in a digital signal processor (“DSP”) as required by the Challenged
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`Claims.
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`II. THE ’049 PATENT
`The ’049 Patent is entitled “Microphone Array System” and reissued on
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`September 18, 2018. The ’049 Patent is a reissue of U.S. Patent No. 8,861,756 and
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`identifies its priority claim to U.S. Patent Application No. 61/403,952, filed on
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`September 24, 2010. In general, the ’049 Patent is directed to technology for
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`“enhancing acoustics of a target sound signal received from a target sound source,
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`while suppressing ambient noise signals.” See Ex. 1001 (’049 Patent) at 2:6–8.
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`The ’049 Patent addresses the need of consumers for a microphone array
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`system that operates in a variety of noise conditions, drawing attention to the need
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`for users to wear a microphone or be in close proximity to a microphone, stating,
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`However, the paradigm of a single microphone often does
`not work effectively because the microphone picks up
`many ambient noise signals in addition to the desired
`sound, specifically when the distance between a user and
`the microphone is more than a few inches. Therefore, there
`is a need for a microphone system that operates under a
`variety of different ambient noise conditions and that
`places fewer constraints on the user with respect to the
`microphone, thereby eliminating the need to wear the
`microphone or be in close proximity to the microphone.
`To mitigate the drawbacks of the single microphone
`system, there is a need for a microphone array that
`achieves directional gain in a preferred spatial direction
`while suppressing ambient noise from other directions.
`Id. at 1:29-42.
`According to the ’049 Patent, prior art systems had a number of shortcomings,
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`Conventional microphone arrays include arrays that are
`typically developed for applications such as radar and
`sonar, but are generally not suitable for hands-free or
`handheld speech acquisition devices. The main reason is
`that the desired sound signal has an extremely wide
`bandwidth relative to its center frequency, thereby
`rendering conventional narrow-band techniques employed
`in the conventional microphone arrays unsuitable.
`Id. at 1:42-50.
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`The ’049 Patent identified a number of preferable qualities in microphone
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`array systems:
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`The method and system disclosed herein addresses the
`above stated need for enhancing acoustics of a target
`sound signal received from a target sound source, while
`suppressing ambient noise signals.
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`Id. at 2:5-8.
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`The ’049 Patent is directed to a system and method for enhancing a target
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`sound signal from a plurality of sound signals noting,
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`A microphone array system comprising an array of sound
`sensors positioned in an arbitrary configuration, a sound
`source localization unit, an adaptive beamforming unit,
`and a noise reduction unit, is provided. The sound source
`localization unit, the adaptive beamforming unit, and the
`noise reduction unit are in operative communication with
`the array of sound sensors. . . . The sound signals received
`by the sound sensors in the microphone array comprise the
`target sound signal from the target sound source among
`the disparate sound sources, and ambient noise signals.
`Id. at 2:11-29.
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`As noted in Fig. 2 of the ʼ049 Patent below, the sound source localization unit,
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`the adaptive beamforming unit, and the noise reduction unit operate with sound
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`sensors to receive sound signals:
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`Further, the ’049 Patent invention avoids the issues faced by a single
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`microphone system through the use of a sound source localization unit, an adaptive
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`beamforming unit, and a noise reduction unit:
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`The sound source localization unit estimates a spatial
`location of the target sound signal from the received sound
`signals, for example, using a steered response power-
`phase transform. The adaptive beamforming unit performs
`adaptive beamforming for steering a directivity pattern of
`the microphone array in a direction of the spatial location
`of the target sound signal. The adaptive beamforming unit
`thereby enhances the target sound signal from the target
`sound source and partially suppresses the ambient noise
`signals. The noise reduction unit suppresses the ambient
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`noise signals for further enhancing the target sound signal
`received from the target sound source.
`Id. at 2:30-41.
`The ’049 Patent also teaches that the adaptive beamforming unit comprises a
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`fixed beamformer, a blocking matrix, and an adaptive filter.
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`The fixed beamformer steers the directivity pattern of the
`microphone array in the direction of the spatial location of
`the target sound signal from the target sound source for
`enhancing the target sound signal when the target sound
`source is in motion. The blocking matrix feeds the ambient
`noise signals to the adaptive filter by blocking the target
`sound signal from the target sound source. The adaptive
`filter adaptively filters the ambient noise signals in
`response to detecting the presence or absence of the target
`sound signal in the sound signals received from the
`disparate sound sources. The fixed beamformer performs
`fixed beamforming, for example, by filtering and
`summing output sound signals from the sound sensors.
`Id. at 2:66-3:12.
`The ’049 Patent finally teaches methods for noise reduction.
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`The noise reduction unit suppresses the ambient noise
`signals for further enhancing the target sound signal from
`the target sound source. The noise reduction unit performs
`noise reduction, for example, by using a Wiener-filter
`based noise reduction algorithm, a spectral subtraction
`noise reduction algorithm, an auditory transform based
`noise reduction algorithm, or a model based noise
`reduction algorithm. The noise reduction unit performs
`noise reduction in multiple frequency sub-bands employed
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`for sub-band adaptive beamforming by the analysis filter
`bank of the adaptive beamforming unit.
`Id. at 3:33-44.
`As set forth below, the ’049 Patent is a reissue of U.S. Patent No. 8,861,756,
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`from U.S. Patent Application 13/049,877 (the “ʼ877 Application”) filed on March
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`16, 2011, and claims priority to U.S. Provisional Application No. 61/403,952, filed
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`on September 24, 2010.
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`III. THE PETITION SHOULD BE DENIED IN THE DISCRETION
`OF THE DIRECTOR UNDER EITHER 35 U.S.C. § 314(A)
`The circumstances of the parallel District Court proceeding necessitate
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`denial of the Petition under the Board’s precedent, as every factor considered in
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`relation to efficiency, fairness, and the merits supports denial. See Apple Inc. v.
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`Fintiv, Inc., IPR2020-00019, Paper 11, at 6 (P.T.A.B. Mar. 20, 2020)
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`(precedential) (considering (a) “whether the petitioner and the defendant in the
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`parallel proceeding are the same party”; (b) “overlap between issues raised in the
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`petition and in the parallel proceeding” (c) “proximity of the court’s trial date to
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`the Board’s projected statutory deadline for a final written decision”; (d)
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`“investment in the parallel proceeding by the court and the parties”; (e) “whether
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`the court granted a stay or evidence exists that one may be granted if a proceeding
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`is instituted”; and (f) “other circumstances that impact the Board’s exercise of
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`discretion, including the merits.”).
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`As set forth below, every factor demonstrates that efficiency and integrity of
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`the AIA are best served by denying review. First, the Petitioner and the Defendant
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`in the parallel proceeding are the same party. See infra Section III.A. Second, there
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`is significant overlap between the Challenged Claims and those at issue in the
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`parallel proceeding, and Petitioner raises identical references and arguments for
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`invalidity to those raised in the parallel proceeding. See infra Section III.B.
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`Moreover, to the extent Challenged Claim is not at issue in the parallel proceeding,
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`Petitioner concedes those claims are “substantially identical” to those it challenges
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`in the parallel proceeding and advances the same arguments against those claims in
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`this Petition. Id. Third, Petitioner and Patent owner are in the eve of trial in the
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`parallel proceeding, and will receive a judgment on the merits of the same
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`invalidity arguments Petitioner raises here over a month before the projected
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`deadline for an institution decision, and over a year before the projected statutory
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`deadline for a final written decision. See infra Section III.C. Fourth, the Parties
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`(and Vocalife in particular) have invested immense resources on developing legal
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`and factual issues of validity and infringement in the parallel proceeding, and will
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`have invested substantially more resources by the end of the jury trial scheduled
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`for September 14, 2020. See infra Section III.D. Fifth, the Court has not granted a
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`stay, nor has Petitioner moved for a stay, and there is no evidence that one will be
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`granted in the short time remaining before trial. See infra Section III.E. Finally,
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`Petitioner does not identify any other factors which might weigh against
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`discretionary denial and fails to separately address the Fintiv factors in its cursory
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`2-page discussion. See Pet. at 88-89; see infra Section III.F.
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`Accordingly, the Board should exercise its discretion under § 314(a) and
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`deny the Petition because institution of this proceeding would not be consistent
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`with the objective of the AIA to “provide an effective and efficient alternative to
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`district court litigation.” NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc., IPR2018-
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`00752, Paper 8, at 20 (P.T.A.B. Sept. 12, 2018) (emphasis added) (quoting Gen.
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`Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19, at
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`16–17 (P.T.A.B. Sept. 6, 2017) (precedential)).
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`A. The Parallel District Court Proceeding and the Petition
`Involve the Same Parties
`As noted in Patent Owner’s Mandatory Notice there exists a parallel District
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`Court proceeding between the same parties regarding the same subject patent (the
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`’049 Patent). Amazon.com, Inc. v. Vocalife LLC, IPR2020-00864, Paper 6 at 2
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`(P.T.A.B. July 17, 2020); Pet. at 15-16. While the Defendants in the District Court
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`proceeding were named as Amazon.com, Inc., and Amazon.com LLC,
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`Amazon.com LLC has merged into Amazon.com Services, Inc., which is a real
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`party-in-interest to this proceeding. Pet. at 90. Petitioner does not address this
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`factor. See Pet. at 88-89, Accordingly, this factor weighs in favor of discretionary
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`denial.
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`B.
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`The Parallel District Court Proceeding and the Petition
`Involve the Same References, Same Arguments, and
`“Substantially Identical” Claims
`There is substantial overlap between issues raised in the Petition and the
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`parallel District Court Proceeding that strongly weigh in favor of discretionary
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`denial. Petitioner does not substantively address this factor, instead arguing that the
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`parallel proceedings are not “co-extensive” based solely on the Challenged Claims.
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`Pet. at 88.
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`First, there is substantial overlap between the claims of the ’049 Patent
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`challenged at the District Court and in this Petition. Of the 35 claims in the ’049
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`Patent, the Petition challenges 1-8, 19, 20, 22-25 and 30. Petitioner has expressly
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`challenged every claim asserted in the District Court Proceeding: Claims 1, 5, 7, 8,
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`and 20. Exhibit 2001 (Defendants’ January 7, 2020 Correspondence to Plaintiff
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`Regarding Asserted Claims).
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`The remaining claims, (i.e. Claims 6, 19, 22-25, and 30) are not asserted by
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`Patent Owner in the District Court Proceeding, and thus there is no dispute
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`between the parties remaining as to those claims. Exhibit 2001 (Defendants’
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`January 7, 2020 Correspondence to Plaintiff Regarding Asserted Claims). All of
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`these claims were either withdrawn by agreement of the parties to narrow the
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`dispute (6 and 19)1, are similar to a withdrawn claim (24), or are similar to another
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`claim challenged in the District Court (22-23, 25, and 30). Exhibit 2002 (Plaintiff’s
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`1 Petitioner incorrectly states that Patent Owner’s complaint only asserted
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`infringement of claim 9. Pet. at 89. To the contrary, Patent Owner’s complaint
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`alleged infringement of all 35 claims of the ’049 Patent based on at least claims 1
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`and 9. Ex. 1022 at 6-13. See K-Tech Telecomms., Inc. v. Time Warner Cable, Inc.,
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`714 F.3d 1277, 1284 (Fed. Cir. 2013) (holding that under Bell Atl. Corp. v.
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`Twombly, 550 U.S. 544, 570, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007)) (“[A]
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`patentee need only plead facts sufficient to place the alleged infringer on notice as
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`to what he must defend … a plaintiff in a patent infringement suit is not required to
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`specifically include each element of the claims of the asserted patent.”). Patent
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`Owner’s infringement contentions reduced the asserted claims to 1-21 and 29.
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`May 21, 2020 Correspondence Regarding Withdrawal of Prior Art References);
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`Pet. at 50 (“Claims 6 and 24 are similar.”). Indeed, Petitioner concedes that these
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`claims are “identical,” “virtually identical,” or “similar.” See Pet. at 34 (“Claim 22
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`is similar to claim 1...”); id. at 36 (Claim 20 is identical to claim 1 … Claim 30 is
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`the same as claim 20...”); id. at 44 (“claims 3 and 23 are substantially identical”);
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`Pet. at 50 (“Claims 6 and 24 are similar.”); id. at 63 (“Claims 8 and 25 are similar).
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`Thus, based on the Petitioner’s arguments, all disputes about the scope and content
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`of the prior art will be decided at trial. Accordingly, the overlap in Challenged
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`Claims with those at issue in the parallel proceeding, and the identical disputes as
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`to the scope and content of the prior art pertaining to the remaining Challenged
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`Claims, weigh in favor of denial.
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`Moreover, the decisions relied upon by Petitioner do not support its position.
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`In Bumble Trading Inc. v. Match Group, LLC, the Board reasoned that “there is no
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`indication that the district court has considered the merits.” IPR2019-01538, Paper
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`13 at 62 (P.T.A.B. Mar. 11, 2020). Further, in Bumble, the Board held that “the
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`USPTO already has invested substantial resources in evaluating the identical
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`references, and similar arguments and evidence, presented in two trials previously
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`instituted for inter partes review proceedings,” favoring efficiency. Id. at 63. In
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`contrast, there are no other proceedings, including petitions or inter partes review
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`proceedings that have been instituted. Further, the District Court here has already
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`reviewed the parties’ expert reports and depositions regarding validity, has already
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`considered and rejected Petitioner’s indefiniteness arguments, has issued claim
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`constructions, and will adjudicate the same issues of patentability presented in this
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`Petition in less than two months.. Unlike Bumble, the Board has yet to consider
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`these references, arguments, or evidence. Cf. Bumble, Paper 13 at 63 (“[W]e
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`therefore find that at this stage of the proceedings, the USPTO has invested
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`considerably more resources in evaluating the unpatentability contentions than the
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`district court, and, for the reasons discussed above, it is not clear to us that the
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`district court will ever reach the unpatentability issues presented in this Petition.”).
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`Accordingly, Bumble weighs against Petitioner.
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`Petitioner further relies on Ericcson Inc. v. Intellectual Ventures II LLC,
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`which primarily addresses the delay in the filing of multiple Petitions by
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`Petitioners, including codefendants in the district court litigation. IPR2018-01689,
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`Paper 15 at 57-58 (P.T.A.B. Apr. 16, 2019). But Petitioner’s delay in filing this
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`Petition did not result from “coordination with codefendants in the related civil
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`action who agree to and have filed another petition for inter partes review of other
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`15
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`claims.” Id. at 58. There are no codefendants in the parallel District Court
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`Proceeding, and as stated above, no other petitions have been filed or inter partes
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`reviews instituted. In its decision, the Board determined that “the inter partes
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`review is at a more advanced stage than the related district court action.” Id. at 57.
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`Accordingly, this decision further weighs against Petitioners.
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`Second, there is substantial overlap between the alleged prior art raised in
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`the Petition, and in the District Court. Petitioner raises identical combinations of
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`references for every Challenged Claim at issue in the District Court proceeding.
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`Exhibit 2002 (Plaintiff’s May 21, 2020 Correspondence Regarding Withdrawal of
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`Prior Art References). Moreover, Petitioner raises substantially identical arguments
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`to those it will advance at trial in the District Court proceeding, or, in the case of
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`Greenberg, which it elected not to assert at trial. Compare e.g. Pet. at 19-34 with
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`Exhibit 2003 (Defendants’ Second Supplemental Invalidity Contentions, dated
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`May 26, 2020) and Exhibit 2001 (Defendants’ January 7, 2020 Correspondence to
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`Plaintiff Regarding Asserted Claims). Petitioner asserts those same references and
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`arguments against every Challenged Claim not at issue in the District Court
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`proceeding, uniformly relying on the argument that they are “identical,”
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`“substantially identical” or “similar” to other claims, as discussed above.
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`Accordingly, the issues Petitioner raises are the same as those it raised in the
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`parallel District Court Proceeding.
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`Finally, because Petitioner relies on the same references and arguments
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`against the same or similar Challenged Claims in both proceedings, each would
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`likely involve similar arguments about at least the Saric, Brandstein, Dmochowki,
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`and Li references. “In at least these ways, the parallel proceedings would duplicate
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`effort. This is an inefficient use of Board, party, and judicial resources, and raises
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`the possibility of conflicting decisions.” Cisco Sys., Inc. v. Ramot at Tel Aviv Univ.
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`Ltd., IPR2020-00123, Paper 14 at 10 (P.T.A.B. May 15, 2020).
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`For all these reasons, denial of institution under § 314(a) is appropriate
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`because the Petition “includes the same or substantially the same claims, grounds,
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`arguments, and evidence as presented in the parallel [District Court] proceeding.”
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`Apple, IPR2020-00019, Paper 11, at 12.
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`Proximity of The District Court’s Trial Date
`C.
`The proximity of the District Court’s trial date to the Board’s projected
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`statutory deadline for a final written decision strongly weighs in favor of
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`discretionary denial.
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`The parties’ trial is scheduled for September 14, 2020. Exhibit 2004 (Second
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`Amended Docket Control Order, Vocalife LLC v. Amazon.com, Inc. and
`17
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`Amazon.com, LLC, No. 2:19-cv-00123-JRG, Dkt. 87 at 1 (E.D. Tex. Apr 17,
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`2020)). Pursuant to 35 U.S.C. §§ 314(b)(1) and 316(a)(11), the projected statutory
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`deadline for a final written decision of this Petition is in October 2021. As the
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`District Court’s trial will be over 13 months before the projected statutory
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`deadline, and over a month before the projected institution deadline, this factor
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`weighs strongly in favor of denying institution. Supercell Oy v. Gree, Inc.,
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`IPR2020-00215, Paper 10 at 10-12 (P.T.A.B. June 10, 2020) (denying institution
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`where the jury trial would is scheduled to conclude approximately ten months
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`before the statutory deadline); Edward Life Scis. Corp. v. Evalve, Inc., IPR2019-
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`01479, Paper 7, at 6-13 (P.T.A.B. Feb. 26, 2020) (denying institution where jury
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`trial would conclude more than nine months before a final decision would be due);
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`Samsung Elecs. Am., Inc. v. Uniloc 2017 LLC, IPR2019-01218, Paper 7, at 7-10
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`(P.T.A.B. Jan. 7, 2020) (denying institution where jury selection was scheduled for
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`approximately six months before trial in the Board proceeding would conclude);
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`Next Caller Inc. v. TrustID, Inc., IPR2019-00961, -00962, Paper 10, at 8-16
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`(P.T.A.B. Oct. 16, 2019) (denying institution where trial was scheduled to
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`conclude “several months,” before a final decision would be due); Cisco Sys., Inc.
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`v. Ramot at Tel Aviv Univ. Ltd., IPR2020-00122, Paper 14 at 8 (P.T.A.B. May 15,
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`18
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`2020) (“Because the trial date is substantially earlier than the projected statutory
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`deadline for the Board’s final decision, this factor weighs in favor of discretionary
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`denial.”).
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`Petitioner does not contest that the proximity of the trial supports denial of
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`institution. Instead, Petitioner speculates that the District Court may postpone the
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`trial. The District Court has given no indication that it intends to postpone the trial
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`due to the pandemic. Indeed, the Court recently denied a motion to postpone an
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`August 3 trial on the same grounds. Exhibit 2005 (Optis Wireless Tech., LLC v.
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`Apple Inc., Case No. 2:19-cv-00066-JRG, Dkt. 387 (E.D. Tex. July 21, 2020)); see
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`also Exhibit 2006 (Siegal, Daniel, Why Gilstrap Is Getting Ready For Trial—And
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`Not On Zoom). In any case, the relevant inquiry is “the proximity of the date of the
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`jury trial to the date a final decision would be due if an inter partes review were
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`instituted.” Supercell Oy v. Gree, Inc., IPR2020-00215, Paper 10 at 11 (P.T.A.B.
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`June 10, 2020) (“Accordingly, we are persuaded that generalized speculation as
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`to trial dates universally (e.g., due to impacts of COVID-19), are outweighed by
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`the fact that the jury trial in this case is scheduled to occur approximately ten
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`months before the Board’s statutory deadline and the fact that the record lacks
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`specific evidence showing that the jury trial is in doubt at this time.”) (emphasis
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`19
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`added). Accordingly, Petitioner’s unfounded speculation that the trial in the
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`parallel proceeding may be postponed is both implausible and irrelevant and this
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`factor weighs in favor of denial.
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`D.
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`Significant Investment and Petitioner’s Delay in Filing the
`Petition
`The parties’ and the District Court’s investment in the parallel proceeding
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`weighs in favor of discretionary denial.
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`The parties have litigated the parallel District Court proceeding through the
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`close of expert discovery, have fully briefed pre-trial motions which the Court is
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`considering, and are currently preparing for an August 29, 2020 pre-trial
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`conference and a September 14, 2020 trial. Exhibit 2004 (Second Amended Docket
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`Control Order, Vocalife LLC v. Amazon.com, Inc. and Amazon.com, LLC, Case
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`No. 2:19-cv-00123-JRG, Dkt. 87 at 1 (E.D. Tex. Apr 17, 2020)). Vocalife will
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`have litigated the case through trial, and the jury will have decided validity based
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`on the same arguments and references Amazon raises in this Petition, before any
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`institution decision is issued. Moreover, among other milestones in the parallel
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`District Court Proceeding:
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`a) The parties have respectively submitted infringement and invalidity
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`contentions and submitted multiple sets of supplemental contentions
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`during discovery. See e.g. Exhibit 2007 (Plaintiff’s Seco
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