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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`GOOGLE LLC,
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`Petitioner,
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`v.
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`JAWBONE INNOVATIONS, LLC,
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`Patent Owner.
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`Case IPR2022-00649
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`Patent No. 8,019,091
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`PETITIONER’S PRE-INSTITUTION REPLY
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`Petitioner’s Pre-Institution Reply
`U.S. Patent No. 8,019,091
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`I.
`II.
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`Table of Contents
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`The Petition Presents Compelling Evidence of Unpatentability ..................... 1
`The Fintiv Factors Favor Institution ................................................................ 2
`A.
`Fintiv Factors 2, 3, 4, and 6 Favor Institution ....................................... 2
`B.
`Factors 1 and 5 Are Neutral .................................................................. 5
`III. Conclusion ....................................................................................................... 5
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`i
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`Petitioner’s Pre-Institution Reply
`U.S. Patent No. 8,019,091
`Because the Petition presents compelling evidence of unpatentability, the
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`Board should institute review and not apply the Fintiv factors. But even if the factors
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`are applied, the most relevant Fintiv factors (2, 3, and 4) favor institution.
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`I.
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`The Petition Presents Compelling Evidence of Unpatentability
`The Board will not deny institution based on the Fintiv factors “where a
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`petition presents compelling evidence of unpatentability.” Memorandum from
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`Director Vidal, Interim Procedure for Discretionary Denials in AIA Post-Grant
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`Proceedings with Parallel District Court Litigation at 2 (USPTO June 21, 2022)
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`(“Interim Procedure”). Here, Petitioner has shown that the claims are unpatentable
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`by a preponderance of the evidence. Most challenged claims are rendered obvious
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`by the combination of Al-Kindi (Ex. 1005), Bartlett (Ex. 1006), and Alcivar
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`(Ex. 1007). Paper 1 (“Pet.”) 8-58. The rest are rendered obvious by the addition of
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`Hussain (Ex. 1008) or Romesburg (Ex. 1009). Pet. 58-75. Patent Owner’s contrary
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`arguments lack merit. Paper 6 at 3-12 (“Prelim. Resp.”). As the Petition explains,
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`supported by Petitioner’s expert Dr. Anderson, it would have been obvious to use
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`Alcivar’s tissue-conduction microphone as Al-Kindi’s speech detector, Pet. 19-22,
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`and Al-Kindi discloses the claimed first and second transfer functions, W1(z) and
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`W2(z), being generated in response to the corresponding voicing activity
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`determination from the speech detector (e.g., no speech (S(z)=0) for W1(z);
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`speech/talkspurt for W2(z)), Pet. 29-38.
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`1
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`II. The Fintiv Factors Favor Institution
`In addition to the merits, the Fintiv factors either favor institution or are
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`Petitioner’s Pre-Institution Reply
`U.S. Patent No. 8,019,091
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`neutral. The Board should institute review.
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`A. Fintiv Factors 2, 3, 4, and 6 Favor Institution
`Factor 2 favors institution because the Board’s projected final written decision
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`date (November 3, 2023) is several months before the expected trial date, based on
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`the median time to trial in the Western District of Texas (January 30, 2024). Interim
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`Procedure at 8-9. Patent Owner relies on the district court’s scheduled trial date for
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`this factor. Prelim. Resp. 15. But a court’s scheduled trial date is often “unreliable”
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`and “not by itself a good indicator of whether the district court trial will occur before
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`the statutory deadline for a final written decision.”1 Interim Procedure at 8. To assess
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`time to trial more reliably, the Board should consider the “median time-to-trial for
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`civil actions in the district court in which the parallel litigation resides,” along with
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`“the number of cases before the judge in the parallel litigation and the speed and
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`availability of other case dispositions.” Id. at 8-9.
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`The most recent Federal Court Management Statistics show that the median
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`1 Indeed, the parallel litigation in Fintiv—in the same venue as the co-pending
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`litigation here—still has not gone to trial more than a year after the final written
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`decision would have been due. Ex. 1030 at 21, 32-33, 50, 51-53.
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`2
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`Petitioner’s Pre-Institution Reply
`U.S. Patent No. 8,019,091
`time from the filing of a civil case to trial in the Western District of Texas is 28.3
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`months, placing the expected trial date in the parallel litigation around January 30,
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`2024. Ex. 1029 at 5. This is later than the November 3, 2023 statutory deadline for
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`a final written decision in this proceeding. This favors institution. Hanwha Sols.
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`Corp. v. Rec Solar Pte. Ltd., IPR2021-00989, Paper 12 at 14 (Dec. 13, 2021). Judge
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`Albright’s high volume of patent cases—848 open cases as of August 2022—also
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`makes it less likely that trial will proceed on schedule. Ex. 1031 at 68. Petitioner has
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`also moved to transfer the litigation to the Northern District of California, another
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`reason to doubt the scheduled trial date. Ex. 1032. Judge Albright has already
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`delayed the Markman hearing by almost two months, demonstrating that scheduled
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`dates are not reliable. Compare Ex. 1023 at 2, with Ex. 1036.
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`Even relying on the court’s current trial date of July 26, 2023, this factor is at
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`worst neutral. See DJI Europe B.V. v. Textron Innovations Inc., IPR2022-00162,
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`Paper 11 at 10-11 (June 7, 2022) (weighing this factor neutral when the scheduled
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`trial was two months before the projected FWD). Patent Owner’s cited cases do not
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`dictate otherwise, see Prelim. Resp. 15-16, as they involved larger gaps between the
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`two dates, and all but one predate Fintiv and apply a different analysis. Patent Owner
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`also exaggerates the gap between the scheduled trial date and the projected final
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`written decision, stating that a decision would issue “more than four months later,”
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`when the gap is barely more than three months—assuming the decision issues on the
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`3
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`Petitioner’s Pre-Institution Reply
`U.S. Patent No. 8,019,091
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`last possible day, which is unlikely. Id. at 15.
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`Factor 3 favors institution because the litigation is still in its early stages and
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`Petitioner diligently filed its Petition. The district court has not issued any
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`substantive orders related to the ’091 patent in the litigation. Indeed, the proper
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`venue has not even been resolved. Ex. 1032; Ex. 1033; Ex. 1035. Judge Albright
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`delayed the Markman hearing nearly two months until September 22, 2022.
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`Ex. 1036. When the Board issues its institution decision, the parties will have
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`expended few resources in the case. Based on the original Markman date, discovery
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`just opened on July 28, 2022 (Ex. 1023 at 2) and, based on the current schedule, does
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`not close until nearly four months after the Board’s projected institution decision (id.
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`at 3). The deadline to serve opening expert reports is not until March 1, 2023. Id. at
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`3. The Markman rescheduling, however, is likely to delay the schedule and change
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`these dates. Ex. 1034 at 13-15. The case is therefore still in its early stages, and
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`Petitioner has acted diligently in filing the Petition. This favors institution.
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`Progenity, Inc. v. Natera, Inc., IPR2021-00267, Paper 11 at 62-63 (June 7, 2021).
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`Patent Owner’s lone cited case is inapposite because, there, the institution decision
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`issued after the completion of fact and expert discovery, dispositive motions, and
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`motions in limine. See Prelim. Resp. 21 (citing Supercell Oy v. Gree, Inc., IPR2020-
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`00513, Paper 11 at 11-12 (June 24, 2020)). None of those aspects are present here.
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`Factor 4 favors institution. If the Board institutes review, Petitioner stipulates
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`4
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`Petitioner’s Pre-Institution Reply
`U.S. Patent No. 8,019,091
`that it will not challenge the validity of the ’091 patent in the parallel litigation based
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`on the grounds advanced in the Petition or on any ground that utilizes Al-Kindi
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`(Ex. 1005). This “sufficiently mitigates concerns about duplicative efforts and
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`potentially conflicting decisions.” Microsoft Corp. v. WSOU Invs., LLC, IPR2021-
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`00930, Paper 8 at 11 (Dec. 2, 2021).
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`Factor 6 favors institution for the reasons stated in the Petition. Pet. 78-79.
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`Patent Owner has not identified any reference that is allegedly cumulative to the
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`Petition references.
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`Factors 1 and 5 Are Neutral
`B.
`Factor 1 is neutral where neither party has requested a stay of the parallel
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`litigation at the time of institution. Pet. 76; see, e.g., Sand Revolution II, LLC v.
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`Continental Intermodal Grp.–Trucking LLC, IPR2019-01393, Paper 24 at 7 (June
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`16, 2020) (informative). Factor 5 is also neutral, despite Petitioner and Patent Owner
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`being the same parties in the district court case. See Protect Animals With Satellites
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`v. OnPoint Sys., LLC, IPR2021-01483, Paper 11 at 17 (Mar. 4, 2022).
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`III. Conclusion
`For these reasons and those in the petition, the Board should decline to
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`exercise its discretion under 35 U.S.C. § 314(a) and should institute review.
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`5
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`Dated: August 22, 2022
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`Petitioner’s Pre-Institution Reply
`U.S. Patent No. 8,019,091
`By: /Daniel C. Cooley/
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` Daniel C. Cooley
` Backup Counsel for Petitioner
` Reg. No. 59,639
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`6
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that a copy of the foregoing PETITIONER’S
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`PRE-INSTITUTION REPLY was served on August 22, 2022, via email directed
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`to counsel of record for the Patent Owner at the following:
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`Peter Lambrianakos
`plambrianakos@fabricantllp.com
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`Vincent J. Rubino, III
`vrubino@fabricantllp.com
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`Alfred R. Fabricant
`ffabricant@fabricantllp.com
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`Enrique W. Iturralde
`eiturralde@fabricantllp.com
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`Richard Cowell
`rcowell@fabricantllp.com
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`PTAB@fabricantllp.com
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`By: /Daniel E. Doku/
` Daniel E. Doku
` Litigation Legal Assistant
` Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
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`Dated: August 22, 2022
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