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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 IPR2022-01059
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`U.S. Patent No. 10,779,080
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`PETITIONER’S PRE-INSTITUTION REPLY
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`Petitioner’s Pre-Institution Reply
`U.S. Patent No. 10,779,080
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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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`Petitioner’s Pre-Institution Reply
`U.S. Patent No. 10,779,080
`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 (U.S.P.T.O. 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. For example, Petitioner has demonstrated that
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`the combination of Ikeda (Ex. 1005, translation at Ex. 1006), McCowan (Ex. 1007),
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`and Kanamori (Ex. 1008) render nearly all challenged claims obvious. Paper 1
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`(“Pet.”) at 2, 9-79. The additional teachings of Yang (Ex. 1009) render the remaining
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`claims obvious. Id. at 2, 79-82. Patent Owner’s contrary arguments lack merit. Paper
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`6 (“Prelim. Resp.”) at 10-19. As Petitioner explained with support from its technical
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`expert, Dr. Vipperman, Ikeda’s adaptive noise cancellation system (implemented
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`using a digital signal processor) includes an adaptive filter 7 and a digital adder 8
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`and is an “adaptive noise removal application,” to which both signals Vm and Vr are
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`coupled. Pet. 53-58. Ikeda’s adaptive filter 7 applies a varying linear transfer
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`function. Id. at 56-58. A POSITA would have been motivated to adapt Ikeda’s
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`1
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`Petitioner’s Pre-Institution Reply
`U.S. Patent No. 10,779,080
`teachings to a device intended to receive near-field speech, such as a headset. Id. at
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`19-21. And the cited embodiments of Kanamori (e.g., Embodiment 1 and
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`Embodiment 7) are parts of one system. Id. at 17-19, 26-34 (citing Ex. 1008,
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`¶¶ [0165], [0168], [0173]-[0174]).
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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 almost two months before the
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`expected trial date based on the median time to trial in the Western District of Texas
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`(January 30, 2024). Interim Procedure at 8-9. Patent Owner relies on the district
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`court’s scheduled trial date for this factor. Prelim. Resp. 21-22. But a court’s
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`scheduled trial date is often “unreliable” and “not by itself a good indicator of
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`whether the district court trial will occur before the statutory deadline for a final
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`written decision.”1 Interim Procedure at 8. To better assess time to trial, the Board
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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. 1035 at 11-12, 16-17, 24-26.
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`2
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`Petitioner’s Pre-Institution Reply
`U.S. Patent No. 10,779,080
`should consider the “median time-to-trial for civil actions in the district court” where
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`the parallel litigation resides and “the number of cases before the judge in the parallel
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`litigation and the speed and 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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`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. 1034 at 5. This is after the December 9, 2023, statutory deadline for a final
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`written decision in this proceeding. This favors institution. Hanwha Sols. Corp. v.
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`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. 1036 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. 1037. Judge Albright moreover has
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`delayed the Markman hearing twice, demonstrating that scheduled dates are not
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`reliable. Compare Ex. 1021 at 2, with Ex. 1041 (resetting Markman hearing for
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`September 22), Ex. 1042 (resetting Markman hearing for October 14).
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`Even relying on the court’s now-expected trial date of October 12, 2023 (52
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`weeks from Markman hearing), Ex. 1042; Ex. 1039 at 16, this factor is neutral. See
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`DJI Europe B.V. v. Textron Innovations Inc., IPR2022-00162, Paper 11 at 10-11
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`(June 7, 2022) (weighing this factor neutral when the scheduled trial was two months
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`3
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`Petitioner’s Pre-Institution Reply
`U.S. Patent No. 10,779,080
`before the projected FWD). Patent Owner’s cited cases do not dictate otherwise, see
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`Prelim. Resp. 21-22, as they involved larger gaps between the two dates, and all but
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`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 ’080 patent in the litigation. Indeed, the proper
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`venue has not even been resolved. Ex. 1037; Ex. 1038; Ex. 1040. Judge Albright has
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`postponed the Markman hearing until October 14, 2022. Ex. 1042. When the Board
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`issues its institution decision, the parties will have expended few resources in the
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`case. Based on the original Markman date, fact discovery recently opened on July
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`28, 2022 (Ex. 1021 at 2), and based on the rescheduled Markman date, does not close
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`until over five months after the Board’s projected institution decision (Ex. 1042; Ex.
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`1039 at 14-16). Under the current schedule, which has been delayed by the Markman
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`rescheduling, the deadline to serve opening expert reports will not occur until May
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`19, 2023. Ex. 1042; Ex. 1039 at 14-16. The case is therefore still in its early stages,
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`and 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, none of which is true here. See Prelim. Resp. 22-23 (citing
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`4
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`Petitioner’s Pre-Institution Reply
`U.S. Patent No. 10,779,080
`Supercell Oy v. Gree, Inc., IPR2020-00513, Paper 11 at 11-12 (June 24, 2020)).
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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 ’080 patent in the parallel litigation based
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`on the grounds advanced in the Petition or on any ground that utilizes Ikeda (Ex.
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`1005, translation at Ex. 1006). This “sufficiently mitigates concerns about
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`duplicative efforts and potentially conflicting decisions.” Microsoft Corp. v. WSOU
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`Invs., LLC, IPR2021-00930, Paper 8 at 11 (Dec. 2, 2021).
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`Factor 6 favors institution for the reasons stated in the Petition. Pet. 84-86.
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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. 82-83; 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: September 28, 2022
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`Petitioner’s Pre-Institution Reply
`U.S. Patent No. 10,779,080
`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 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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