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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 IPR2022-00797
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`Patent No. 8,321,213
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`PETITIONER’S PRE-INSTITUTION REPLY
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`Petitioner’s Pre-Institution Reply
`U.S. Patent No. 8,321,213
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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. 8,321,213
`The Board should institute review and not apply the Fintiv factors. But even
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`if 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 Fintiv “where a petition presents
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`compelling evidence of unpatentability.” Memo. from Director Vidal, Interim
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`Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel
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`District Court Litigation at 2 (U.S.P.T.O. June 21, 2022) (“Int. Procedure”). Here,
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`Petitioner has shown that the challenged claims are unpatentable by a preponderance
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`of the evidence. For example, Petitioner has demonstrated that the combination of
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`Elko (Ex. 1002) and Boll (Ex. 1003) renders all challenged claims obvious, where
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`Elko incorporates Boll by reference. Paper 1 (“Pet.”) at 12-17, 20-63. The claims are
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`also obvious over Elko and Boll in view Buck (Ex. 1004), Balan (Ex. 1005), and
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`Elko II (Ex. 1006). Id. at 17-20, 63-80.
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`Patent Owner’s contrary arguments lack merit. Paper 6 at 7-17 (“Prelim.
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`Resp.”). Claim 14 recites a processing component “coupled” to the first and second
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`physical microphone, and “forming the first virtual microphone.” Patent Owner’s
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`“first signal” and “first intermediate signal” arguments have no bearing on the claim.
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`Regardless, there is no support for reading a “first signal” into the claims, let alone
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`one that cannot pass through an “adaptive filter” before forming the first virtual
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`microphone. Patent Owner’s own examples undermine its argument, as the “first”
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`1
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`Petitioner’s Pre-Institution Reply
`U.S. Patent No. 8,321,213
`microphone signals are shown as filtered before being combined. Id. at 10-11 (citing
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`Ex. 1001, 6:60 7:7, Figs. 3 (first signal passing through an adaptive filter and delay
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`filter), 4 (first signal passing through a delay filter)). Petitioner also explained, with
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`support from Dr. Vipperman, that Elko’s first intermediate signal “is a filtered first
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`signal that remains a ‘first signal.’” Pet. at 22-24, 49, 69. Patent Owner offers no
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`evidence or explanation for its argument that the claimed “ratio would always be 1”
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`in Elko, assuming Jawbone is referring to the claimed “energy ratio.” See Prelim.
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`Resp. at 11. With respect to “relationship for speech,” Elko’s filter 1020 discloses
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`or at least renders obvious this feature. Pet. at 24-26, Ex. 1007 ¶¶60-65. A POSITA
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`moreover would have understood the “energy ratio,” as claimed, to be the same as
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`or obvious over Elko’s power ratio. Id. at 28-35, Ex. 1007 ¶¶69-84.
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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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`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 (December 9, 2023), as explained below, is two months before the expected
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`trial date based on the median time to trial (January 30, 2024). Int. Procedure at 8-9.
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`Patent Owner relies on the scheduled trial date for this factor. Prelim. Resp. 17-24.
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`But a court’s scheduled trial date is often “unreliable” and “not by itself a good
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`2
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`Petitioner’s Pre-Institution Reply
`U.S. Patent No. 8,321,213
`indicator of whether the district court trial will occur before the statutory deadline
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`for a final written decision.”1 Int. Procedure at 8. To better assess time to trial, the
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`Board should consider the “median time-to-trial,” and “the number of cases before
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`the judge . . . and the speed and availability of other case dispositions.” Id. at 8-9.
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`The median time from the filing of a civil case to trial in the Western District
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`of Texas is 28.3 months, placing the expected trial date in the parallel litigation
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`around January 30, 2024. Ex. 1018 at 5. This is after the December 9, 2023 statutory
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`deadline for a final written decision here. Hanwha Sols. Corp. v. Rec Solar Pte. Ltd.,
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`IPR2021-00989, Paper 12 at 14 (Dec. 13, 2021). Judge Albright’s high volume of
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`open patent cases—848 as of August 2022—also makes it less likely that trial will
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`proceed on schedule. Ex. 1019 at 68. Petitioner has moved to transfer the case,
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`Ex. 1020, and Judge Albright has delayed the Markman hearing twice, compare Ex.
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`1009 at 2, with Ex. 1021, Ex. 1022. This demonstrates that scheduled dates,
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`including the scheduled date for trial, are not reliable.
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`Even relying on the now-expected trial date of October 12, 2023 (52 weeks
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`from Markman), Ex. 1022; Ex. 1025 at 14, this factor is neutral. DJI Europe B.V. v.
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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. 1017 at 11, 16-17, 24-26.
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`3
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`Petitioner’s Pre-Institution Reply
`U.S. Patent No. 8,321,213
`Textron Innov’s Inc., IPR2022-00162, Paper 11 at 10-11 (June 7, 2022) (neutral
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`when the scheduled trial was two months before projected FWD). Patent Owner’s
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`cited cases do not dictate otherwise, Prelim. Resp. 20-21, as they involved larger
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`gaps between dates, and all but one predate Fintiv and apply a different analysis.
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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 ’213 patent. Indeed, the proper venue has not even
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`been resolved. Ex. 1020; Ex. 1023; Ex. 1024. The Markman has been postponed
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`until October 14, 2022. Ex. 1022. When the Board issues its institution decision, the
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`parties will have expended few resources in the case. Fact discovery only recently
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`opened on July 28, 2022, Ex. 1009 at 2, and does not close until five months after
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`the projected institution decision, Ex. 1022; Ex. 1025 at 13-15. The deadline for
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`opening expert reports will not occur until May 19, 2023. Ex. 1022; Ex. 1025 at
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`13-15. This factor favors institution. Progenity, Inc. v. Natera, Inc., IPR2021-00267,
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`Paper 11 at 62-63 (June 7, 2021). Patent Owner’s lone cited case is inapposite
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`because, there, the institution decision issued after the completion of fact and expert
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`discovery, dispositive motions, and motions in limine, none of which is true here.
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`See Prelim. Resp. 22 (citing Supercell, IPR2020-00513, Paper 11 at 11-12).
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`Factor 4 favors institution. If the Board institutes review, Petitioner stipulates
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`that it will not challenge the validity of the ’213 patent in the parallel litigation based
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`4
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`Petitioner’s Pre-Institution Reply
`U.S. Patent No. 8,321,213
`on the grounds advanced in the Petition or on any ground that utilizes Elko
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`(Ex. 1002) or Boll (Ex. 1003). 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. at 11-12.
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`Patent Owner has not identified any allegedly cumulative 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. 9; Sand Revolution II, LLC v. Continental
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`Intermodal Grp.–Trucking LLC, IPR2019-01393, Paper 24 at 7 (June 16, 2020)
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`(informative). Factor 5 is also neutral, despite Petitioner and defendant being the
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`same parties in the district court case. See Protect Animals With Satellites v. OnPoint
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`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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`Dated: September 28, 2022
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`By: /Daniel C. Cooley/
` Daniel C. Cooley
` Backup Counsel for Petitioner
` Reg. No. 59,639
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`5
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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 September 28, 2022, via email
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`directed 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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`Dated: September 28, 2022
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`By: /Lisa C. Hines/
` Lisa C. Hines
` Senior Litigation Legal Assistant
` Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
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