UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`Plaintiff,
`
`JAWBONE INNOVATIONS, LLC,
`
`
`
`v.
`
`APPLE INC.,
`
`
`
`
`Defendant.
`
`Civil Action No. 6:21-cv-00984-ADA
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`
`
`
`DEFENDANT’S PRELIMINARY INVALIDITY CONTENTIONS
`
`Pursuant to the Local Patent Rules and the Court’s Scheduling Order Defendant Apple Inc..
`
`(“Defendant”) respectfully submits these preliminary invalidity contentions with respect to the
`
`asserted claims of U.S. Patent Nos.8,019,091 (the “’091 Patent”); 8,280,072 (the “’072 Patent”);
`
`7,246,058 (the “’058 Patent”); 10,779,080 (the “’080 Patent”); 11,122,357 (the “’357 Patent”);
`
`8,467,543 (the “’543 Patent”); 8,503,691 (the “’691 Patent”); 8,321,213 (“the ’213 Patent); and
`
`8,326,611 (the “’611 Patent”) (collectively, the “Asserted Patents”) identified by Plaintiff Jawbone
`
`Innovations, LLC, (“Jawbone” or “Plaintiff”) in its Infringement Contentions.
`
`The currently Asserted Claims, as reflected in Plaintiff’s Infringement Contentions, are:
`
` Claims 1-18 of the ’091 Patent;
`
` Claims 1-4 of the ’058 Patent;
`
` Claims 1-9 of the ’072 Patent;
`
` Claims 1-20 of the ’080 Patent;
`
` Claims 1-20 of the ’357 Patent;
`
` Claims 1, 3, 6-13, 19-23, and 26 of the ’543 Patent;
`
`
`
`DEFENDANT’S PRELIMINARY INVALIDITY CONTENTIONS
`-1-
`
`
`Jawbone's Exhibit No. 2004, IPR2022-01084
`Page 001
`
`

`

` Claims 1-46 of the ’691 Patent;
`
` Claims 1-42 of the ’213 Patent; and
`
` Claims 1-44 of the ’611 Patent.
`
`As detailed further below, the Asserted Patents are anticipated by, or obvious in view of,
`
`one more of the prior art references being produced concurrently pursuant to 35 U.S.C. § 102
`
`and/or § 103, as well as invalid under 35 U.S.C. §§ 101 and 112.
`
`I.
`
`PRELIMINARY STATEMENT
`
`These invalidity contentions and eligibility contentions are based on Defendant’s current
`
`knowledge, understanding, and belief of the Asserted Patents and prior art, of Plaintiff’s
`
`infringement theories (inasmuch as they can be inferred from its Infringement Contentions), and
`
`of the facts and other information available as of the date of these invalidity contentions.
`
`Defendant’s investigation, discovery, and analysis of information related to this action is ongoing.
`
`Additional discovery, elucidation of Plaintiff’s impermissibly vague infringement contentions,
`
`and/or orders of the Court may require Defendant to amend or supplement these invalidity
`
`contentions and eligibility contentions, and Defendant expressly reserves the right to do so as the
`
`case proceeds. These contentions represent Defendant’s good-faith effort to provide a
`
`comprehensive identification of prior art relevant to this case, but Defendant reserves the right to
`
`modify or supplement its prior art list and invalidity contentions and eligibility contentions at a
`
`later time with, or based upon, pertinent information that may be subsequently discovered.
`
`A.
`
`No Waiver
`
`Nothing in these contentions is intended, nor should be construed, as a waiver of any
`
`noninfringement position or argument under 35 U.S.C. §§ 101 or 112. Defendant’s statements
`
`herein (including the accompanying claim charts) reflect Defendant’s present understanding of the
`
`
`
`DEFENDANT’S PRELIMINARY INVALIDITY CONTENTIONS
`-2-
`
`
`Jawbone's Exhibit No. 2004, IPR2022-01084
`Page 002
`
`

`

`purported scope of the claims as alleged by Plaintiff in its Infringement Contentions (as best those
`
`contentions can be understood in light of their present deficiencies).
`
`The patent claims have yet to be construed. As a result, Defendant has based these
`
`contentions upon its knowledge and understanding of the potential scope of the Asserted Claims
`
`at this time, and, in part, upon the apparent interpretations of the Asserted Claims advanced by
`
`Plaintiff in its Infringement Contentions. Defendant may disagree with Plaintiff’s interpretation of
`
`the meaning of many terms and phrases in the Asserted Claims. Defendant has provided these
`
`contentions based in part on its present understanding of Plaintiff’s apparent constructions and
`
`interpretations of the Asserted Claims. These contentions do not represent Defendant’s agreement
`
`or view as to the proper interpretation of any claim term contained therein. Any similarity between
`
`any apparent claim interpretation in any of Defendant’s charts of prior art references and Plaintiff’s
`
`contentions is not an admission or agreement with Plaintiff about the meaning of any claim term,
`
`but rather a reflection of the fact that the subject matter Plaintiff believes is claimed is present in
`
`the prior art, or that the claims are otherwise invalid. These contentions are made in the alternative,
`
`and should not be interpreted to rely upon, or in any way affect, the non-infringement arguments
`
`Defendant may assert in this case. Defendant reserves the right to amend, supplement, or
`
`materially modify these contentions as the case proceeds. Defendant also reserves the right to
`
`amend, supplement, or materially modify its contentions based on any infringement and/or
`
`additional claim construction positions that Plaintiff may take in this case.
`
`Defendant also reserves the right to amend, supplement, or materially modify its
`
`contentions in response to any claim construction or interpretation positions that Plaintiff may
`
`take. Defendant also reserves the right to assert that a claim is indefinite, not enabled, or fails to
`
`meet the written description requirement of 35 U.S.C. § 112 based on any claim construction or
`
`
`
`DEFENDANT’S PRELIMINARY INVALIDITY CONTENTIONS
`-3-
`
`
`Jawbone's Exhibit No. 2004, IPR2022-01084
`Page 003
`
`

`

`interpretation position Plaintiff may take in this case or based on any claim construction the Court
`
`may further adopt in this case.
`
`B.
`
`No Admission
`
`Nothing disclosed herein is an admission or acknowledgement that any product accused of
`
`infringement by Plaintiff in its Infringement Contentions (the “Accused Products”), or any of
`
`Defendant’s other products or services, infringes any of the Asserted Claims.
`
`Defendant further notes that Plaintiff appears to rely upon overly broad interpretations of
`
`the Asserted Claims. At the same time, Plaintiff’s Infringement Contentions are in most places
`
`too general and vague to discern Plaintiff’s infringement theories and how exactly Plaintiff
`
`contends each Accused Product meets or practices each element of the Asserted Claims. As a
`
`result, Defendant has been prejudiced in its ability to prepare these invalidity contentions. In
`
`addition, Plaintiff’s Infringement Contentions, in many cases, continue to fail to put Defendant on
`
`notice of Plaintiff’s interpretation of the Asserted Claims, further prejudicing Defendant’s ability
`
`to identify relevant prior art. In addition, Plaintiff has identified theories of infringement under
`
`the doctrine of equivalents for only claim 6 of the ’091 Patent, claim 14 of the ’213 Patent, and
`
`claim 1 of the ’611 Patent. Defendant has relied on Plaintiff’s apparent representation that it has
`
`no doctrine of equivalents theories for any other claims in preparing these invalidity contentions
`
`and eligibility contentions, and any attempt by Plaintiff to present an untimely doctrine of
`
`equivalents argument would be severely prejudicial to Defendant. To the extent that Plaintiff is
`
`later permitted by the Court to amend its contentions to cure the deficiencies of its current
`
`contentions or to pursue any currently undisclosed doctrine of equivalents theories, Defendant
`
`expressly reserves the right to supplement or amend these invalidity contentions to account for
`
`such amendments.
`
`
`
`DEFENDANT’S PRELIMINARY INVALIDITY CONTENTIONS
`-4-
`
`
`Jawbone's Exhibit No. 2004, IPR2022-01084
`Page 004
`
`

`

`To the extent that any of the prior art references discloses the same functionality or feature
`
`of any of the Accused Products, Defendant reserves the right to argue that said feature or
`
`functionality does not practice any element of any of the Asserted Claims, and to argue, in the
`
`alternative, that if said feature or functionality is found to practice any element of any of the
`
`Asserted Claims, then the prior art reference demonstrates that the element is not novel, is obvious,
`
`and/or is otherwise not patentable. To the extent that any of the prior art references discloses the
`
`same functionality or feature of any of the Accused Products, Defendant reserves the right to argue
`
`that said feature or functionality does not practice any element of any of the Asserted Claims, and
`
`to argue, in the alternative, that if said feature or functionality is found to practice any element of
`
`any of the Asserted Claims, then the prior art reference demonstrates that the element is not novel,
`
`is obvious, and/or is otherwise not patentable.
`
`Attached hereto are representative claim charts that identify where the elements of the
`
`Asserted Claims of the Asserted Patents may be found in the prior art and further identifying why
`
`those references are not novel or non-obvious. The references cited in the attached claim charts
`
`may disclose the limitations of the Asserted Claims expressly and/or inherently. The suggested
`
`obviousness combinations may be presented in conjunction with or in the alternative to
`
`Defendant’s contentions regarding anticipation. These obviousness combinations should not be
`
`construed to suggest that any reference included in any combination is not anticipatory in its own
`
`right. Further, to the extent that Plaintiff contends that any of the references identified does not
`
`constitute prior art under 35 U.S.C. § 102, Defendant reserves the right to rely upon other prior art
`
`references in the same patent family with substantially identical disclosures as evidence of
`
`invalidity based on the same theories as those disclosed below.
`
`
`
`DEFENDANT’S PRELIMINARY INVALIDITY CONTENTIONS
`-5-
`
`
`Jawbone's Exhibit No. 2004, IPR2022-01084
`Page 005
`
`

`

`C.
`
`Reservation of Rights
`
`Prior art not currently included in this disclosure may become relevant. Defendant is
`
`currently unaware of the extent, if any, to which Plaintiff will contend that limitations of the
`
`Asserted Claims are not disclosed in the prior art identified by Defendant. Defendant reserves the
`
`right to identify other references that would have made the addition of the allegedly missing
`
`limitation to the disclosed device or method obvious or show that the allegedly missing limitation
`
`would have been known or readily apparent to one of ordinary skill in the art at the time of the
`
`invention in light of the disclosure of the prior art at issue. Defendant further reserves the right to
`
`rely on any of the references produced concurrently with these contentions in order to demonstrate
`
`the state of art at the alleged times of invention and as evidence of the knowledge of one of ordinary
`
`skill in the art1 in support of any motivations to modify or combine the charted prior art references
`
`with other references or knowledge.
`
`Plaintiff may also be aware of additional prior art that is not known to Defendant. To the
`
`extent that Plaintiff produces additional prior art responsive to Defendant’s discovery requests
`
`after these contentions are served, Defendant may supplement its Invalidity Contentions with prior
`
`art contained in such production once it has had a fair opportunity to review, analyze, and chart
`
`such prior art. Defendant reserves the right to amend its Invalidity Contentions with any additional
`
`potential prior art known by Plaintiff but not yet disclosed to Defendant.
`
`Defendant provides these Invalidity Contentions only for the claims that have been asserted
`
`by Plaintiff, but reserves the right to seek invalidation of all claims in each of the Asserted Patents.
`
`
`1 For purposes of these Invalidity Contentions, the term “general knowledge” includes the
`common knowledge and common sense of a POSITA as well as the general knowledge of
`POSITAs in the field.
`
`
`
`DEFENDANT’S PRELIMINARY INVALIDITY CONTENTIONS
`-6-
`
`
`Jawbone's Exhibit No. 2004, IPR2022-01084
`Page 006
`
`

`

`D.
`
`Ongoing Investigation
`
`Defendant’s investigation is ongoing, and Defendant expressly reserves the right to amend
`
`its disclosures and document production to account for evidence uncovered as its investigation
`
`continues. Such amendments include identifying and relying on additional references that may
`
`result from Defendant’s further search and analysis. Defendant reserves the right to supplement
`
`these contentions in light of any additional prior art of which Plaintiff is aware and has not
`
`disclosed to Defendant in discovery, or that might be subsequently disclosed by Plaintiff in
`
`response to Defendant’s discovery requests. Defendant anticipates issuing subpoenas to third
`
`parties believed to have knowledge, documentation and/or corroborating evidence concerning
`
`some of the prior art listed herein and/or additional prior art. These third parties include, but are
`
`not limited to, the authors, employers of authors, inventors, assignees, or former or current
`
`employees of assignees or previous assignees, of the references identified in these Invalidity
`
`Contentions. For example, Defendant anticipates issuing subpoenas to potential prior artists
`
`including but not limited to individuals and entities responsible for the development of prior art
`
`systems. Defendant reserves the right to supplement these contentions in light of any newly
`
`discovered information produced by these or other companies from which Defendant may seek
`
`discovery.
`
`E.
`
`Incorporation by Reference
`
` Defendant herein incorporates by reference all arguments made in the IPR petitions filed
`
`in Samsung Electronics Co., Ltd. v. Ji Audio Holdings LLC, IPR2022-00213, Paper No. 3 (PTAB
`
`Nov. 19, 2021), challenging the ’072 Patent, Google LLC f/k/a Google Inc. v. Jawbone
`
`Innovations, LLC, IPR2022-00623, Paper No. 1 (PTAB Mar. 1, 2022), challenging the ’058 Patent,
`
`Google LLC f/k/a Google Inc. v. Jawbone Innovations, LLC, IPR2022-00630, Paper No. 1 (PTAB
`
`Mar. 1, 2022), challenging the ’072 Patent, Google LLC f/k/a Google Inc. v. Jawbone Innovations,
`
`
`
`DEFENDANT’S PRELIMINARY INVALIDITY CONTENTIONS
`-7-
`
`
`Jawbone's Exhibit No. 2004, IPR2022-01084
`Page 007
`
`

`

`LLC, IPR2022-00649, Paper No. 1 (PTAB Mar. 15, 2022), challenging the ’091 Patent, Google
`
`LLC v. Jawbone Innovations, LLC, IPR2022-00604, Paper No. 1 (PTAB February 22, 2022),
`
`challenging the ’611 Patent, as well as any other IPR petitions challenging any of the Asserted
`
`Patents.
`
`II.
`
`PRIORITY DATE OF THE ASSERTED PATENT CLAIMS
`
`Plaintiff asserted the following priority dates for the Asserted Claims in its Infringement
`
`Contentions:
`
`Asserted Patent
`
`“Invention Date”
`
`“Priority Date”
`
`’091 Patent
`
`June 2000
`
`July 19, 2000
`
`’058 Patent
`
`June 2000
`
`May 30, 2001
`
`’072 Patent
`
`n/a
`
`March 27, 2003
`
`’080 Patent
`
`June 2005
`
`June 13, 2007
`
`’357 Patent
`
`June 2005
`
`June 13, 2007
`
`’543 Patent
`
`June 2000
`
`March 27, 2002
`
`’691 Patent
`
`June 2005
`
`June 13, 2007
`
`’213 Patent
`
`June 2005
`
`May 25, 2007
`
`’611 Patent
`
`June 2005
`
`May 25, 2007
`
`
`It is Plaintiff’s burden to show entitlement to its asserted priority dates, and Defendant
`
`asserts that Plaintiff has failed to meet that burden. For instance, the ’213 and ’611 Patents are
`
`continuation-in-part of Application No. 11/805,987, filed on May 25, 2007, and Plaintiff has failed
`
`to show that the Asserted Claims of the ’213 and ’611 Patents are entitled to the May 25, 2007
`
`priority date. Plaintiff has further failed in its obligations to disclose “the priority date to which
`
`each asserted claim allegedly is entitled” (P.R. 3-1(e)), at least because it discloses an ambiguous
`
`
`
`DEFENDANT’S PRELIMINARY INVALIDITY CONTENTIONS
`-8-
`
`
`Jawbone's Exhibit No. 2004, IPR2022-01084
`Page 008
`
`

`

`“invention date” and separate “priority dates” qualified with the phrase “at least as early as.” To
`
`the extent Plaintiff attempts to rely on a date earlier than the “Priority Dates” listed above,
`
`Defendant reserves the right to supplement these contentions.
`
`III. THE ’091 PATENT IS INVALID
`
`A.
`
`Identification of Prior Art
`
`Defendant contends that the prior art references charted in Exhibits A-1 through A-19
`
`and/or described below anticipate and/or render obvious, alone or in combination, one or more of
`
`the Asserted Claims of the ’091 Patent.
`
`1.
`
`The ’091 Patent is Anticipated by the Prior Art
`
`Some or all of the Asserted Claims of the ’091 Patent are invalid as anticipated under 35
`
`U.S.C. § 102 in view of each of the prior art references identified in the claim charts included in
`
`Exhibit A-1 through A-19, which identify specific examples of where each limitation of the
`
`Asserted Claims is found in the prior art references. As explained above, the cited portions of prior
`
`art references identified in the attached claim charts are exemplary in nature and representative of
`
`the content and teaching of the prior art references, and should be understood in the context of the
`
`reference as a whole and as they would be understood by a person of ordinary skill in the art.
`
`Defendant identifies the following references as anticipating one or more of the Asserted
`
`Claims of the ’091 Patent under 35 U.S.C. § 102. The table of anticipating references below is
`
`exemplary, and it does not constitute an admission that any reference not listed below does not
`
`also anticipate the claims of the ’091 Patent. Further, Defendant contends that any prior art
`
`reference in the attached charts that is charted for each limitation of any given claim, anticipates
`
`that claim, regardless of whether that prior art reference is listed in the following tables.
`
`
`
`DEFENDANT’S PRELIMINARY INVALIDITY CONTENTIONS
`-9-
`
`
`Jawbone's Exhibit No. 2004, IPR2022-01084
`Page 009
`
`

`

`a)
`
`Prior Art Patents and Applications
`
`Number
`
`U.S. Patent No.
`4,901,354
`
`U.S. Patent No.
`5,251,263
`U.S. Patent No.
`5,406,622
`
`Published/Issued
`Date
`February 13, 1990
`
`Short Name
`
`Exhibit
`Number
`
`Gollmar
`
`A-1
`
`October 5, 1993
`
`Andrea 263 A-2
`
`April 11, 1995
`
`Silverberg
`
`A-3
`
`JPH1023122A
`
`January 23, 1998
`
`Aoki
`
`U.S. Patent No.
`5,590,241
`
`U.S. Patent No.
`5,473,701
`
`U.S. Patent No.
`5,740,256
`
`U.S. Patent No.
`5,978,824
`
`U.S. Patent No.
`6,415,034
`
`December 31, 1996
`
`
`Park
`
`
`December 5, 1995
`
`
`Cezanne
`
`
`April 14, 1998
`
`
`November 2, 1999
`
`
`Castello Da
`Costa
`
`Ikeda 824
`
`
`July 2, 2002
`
`Hietanen
`
`JPH11305792A
`
`November 5, 1999
`
`Takano
`
`August 16, 2011
`
`Lambert
`
`December 5, 1995
`
`Bartlett
`
`August 18, 1998
`
`Romesburg
`
`July 17, 1973
`
`Alcivar
`
`U.S. Patent No.
`8,000,482
`
`U.S. Patent No.
`5,473,684
`
`U.S. Patent No.
`5,796,819
`
`U.S. Patent No.
`3,746,789
`
`
`
`A-4
`
`A-5
`
`A-6
`
`A-7
`
`
`A-8
`
`A-9
`
`
`A-10
`
`A-11
`
`
`A-12
`
`
`A-13
`
`
`A-14
`
`
`DEFENDANT’S PRELIMINARY INVALIDITY CONTENTIONS
`-10-
`
`
`
`
`
`
`Jawbone's Exhibit No. 2004, IPR2022-01084
`Page 010
`
`

`

`b)
`
`Prior Art Publications
`
`Publication/Use
`Date
`
`Short Name
`
`February 16,
`1993
`
`Toner
`
`Exhibit
`Number
`
`A-15
`
`November 1987
`
`
`Al-Kindi
`
`
`A-16
`
`
`April 3, 1990
`
`Van
`Compernolle
`
`February 2002
`
`Gustafsson
`
`September 1997 Hussain
`
`A-17
`
`
`
`A-18
`
`
`A-19
`
`
`Author or Publisher Title
`
`Toner et al.
`
`Al-Kindi et al.
`
`Van Compernolle et
`al.
`
`Gustafsson
`
`Hussain
`
`
`
`Speech Enhancement
`Using Sub-band
`Intermittent Adaption
`
`Improved adaptive noise
`cancellation in the
`presence of signal leakage
`on the noise reference
`channel.
`
`
`Switching Adaptive
`Filters for Enhancing
`Noisy and Reverberant
`Speech from Microphone
`Array Recordings
`
`Dual-Microphone
`Spectral Subtraction
`
`A New Metric for
`Selecting Sub-band
`Processing in Adaptive
`Speech Enhancement
`Systems
`
`c)
`
`Prior Art Systems
`
`On information and belief, the systems identified below were in public use, on sale, or
`
`otherwise available to the public before the priority dates of the Asserted Patents. Defendant’s
`
`further investigation and/or subsequent discovery from Plaintiff or third parties with knowledge
`
`regarding prior art systems may reveal additional relevant prior art systems and/or further
`
`information regarding the systems identified below, or other relevant prior art systems.
`
`Defendant reserves the right to supplement these Invalidity Contentions, based on subsequent
`
`investigation and discovery, including from third parties. In particular, Plaintiff has not yet
`
`produced art relevant to the systems in its control and/or in the control of its former officers and
`
`
`
`DEFENDANT’S PRELIMINARY INVALIDITY CONTENTIONS
`-11-
`
`
`Jawbone's Exhibit No. 2004, IPR2022-01084
`Page 011
`
`

`

`employees, including Gregory Burnett, Eric Breitfeller, Nicolas Petit, Jing Zhinian, Andrew
`
`Einaudi, Alexander Asseily, Michael Luna, and Hosain Rahman.
`
`
` The Pathfinder System. See, e.g., ’357 Patent, 8:21-22.
`
` Jawbone headset available no later than 2004, and culminating in 10,000 units delivered
`to AT&T in 2006. See https://www.zerotoipopodcast.com/episodes/five/ at 30:27;
`https://www.zerotoipopodcast.com/episodes/four/ at 15:18.
`
` Jawbone earpiece available no later than December 2006. See, e.g., ’357 Patent, 1:63-65.
`
` Any other Aliphcom or Jawbone prototypes, models, or systems.
`
`
`
`
`
` Any prototypes, models, or systems developed by or in the possession of The Regents of
`the University of California, Lawrence Livermore National Security, LLC, and/or the
`Lawrence Livermore National Laboratory.
`
`Defendant additionally identifies and relies on any system, product, or public knowledge
`
`or use that embodies or otherwise incorporates any of the prior art patents and publications listed
`
`above. Defendant reserves the right to identify and rely on systems that represent different
`
`versions or are otherwise related variations of the identified systems. Defendant also
`
`incorporates by reference any and all other prior art systems identified in any other case brought
`
`by Plaintiff and/or involving the Asserted Patents.
`
`To the extent any item of prior art cited above is deemed not to disclose, explicitly or
`
`inherently, any limitation of an asserted claim of the ’091 Patent, Defendant contends that any
`
`difference between that prior art and the corresponding patent claim would have been either
`
`inherent in the art or obvious to a person of ordinary skill in the art, even if Defendant has not
`
`specifically denoted that the art is to be combined with the knowledge of a person of ordinary skill
`
`in the art.
`
`
`
`DEFENDANT’S PRELIMINARY INVALIDITY CONTENTIONS
`-12-
`
`
`Jawbone's Exhibit No. 2004, IPR2022-01084
`Page 012
`
`

`

`2.
`
`The ’091 Patent is Obvious Over the Prior Art
`
`To the extent Plaintiff argues that any limitation of the asserted claims of the ’091 Patent
`
`are not explicitly disclosed by an item of prior art identified above and in Exhibits A-1 through A-
`
`19__, any purported differences are such that the claimed subject matter as a whole would have
`
`been obvious to one skilled in the art at the time of the alleged invention, in view of the state of
`
`the art and knowledge of those skilled in the art. The item of prior art would, therefore, render the
`
`relevant claims invalid as obvious under 35 U.S.C. § 103.
`
`Furthermore, it would have been obvious to combine any of the prior art in Exhibits A-1
`
`through A-19 with each other, at least because all of these references relate to acoustic noise
`
`suppression methods and devices utilizing microphone elements in the same field of endeavor. For
`
`example, U.S. Patent No. 5,251,263 (“Andrea 263”) teaches “a headset apparatus for use in an
`
`intercommunications system, the headset suppressing both noise in the vicinity of a transducer
`
`delivering sound to an operator's ear and in outgoing speech from the operator.” Andrea 263,
`
`(Abstract).
`
`Furthermore, U.S. Patent No. 5,590,241 (“Park”) teaches “a speech processing system (30)
`
`[that] operates in a noisy environment (20) by performing adaptive prediction between inputs from
`
`two sensors positioned to transduce speech from a speaker, such as an accelerometer and a
`
`microphone. An adaptive filter (37) such as a finite impulse response (FIR) filter receives a digital
`
`accelerometer input signal, adjusts filter coefficients according to an estimation error signal, and
`
`provides an enhanced speech signal as an output. The estimation error signal is a difference
`
`between a digital microphone input signal and the enhanced speech signal. In one embodiment,
`
`the adaptive filter (37) selects a maximum one of a first predicted speech signal based on a
`
`relatively-large smoothing parameter and a second predicted speech signal based on a relatively-
`
`
`
`DEFENDANT’S PRELIMINARY INVALIDITY CONTENTIONS
`-13-
`
`
`Jawbone's Exhibit No. 2004, IPR2022-01084
`Page 013
`
`

`

`small smoothing parameter, with which to normalize a predicted signal power. The predicted
`
`signal power is then used to adapt the filter coefficients.” Park at Abstract.
`
`Furthermore, U.S. Patent No. 6,415,034 (“Hietanen”) teaches “an earphone unit in the
`
`auditory tube (also called auditory canal) or on the ear, which unit comprises voice reproduction
`
`means for converting an electric signal into acoustic sound signal and for forwarding the sound
`
`signal into the user's ear, and speech detection means for detecting the speech of the user of the
`
`earphone unit from the user's said same auditory tube.” Hietanen at 1:5-11. In Hietanen, “[w]hen
`
`a user’s speech is registered, the ear capsule signal (12”) containing disturbances is canceled
`
`utilizing methods based upon determining the transfer function between the ear capsule (12) and
`
`the microphone (13). A separate error microphone (14) is used for eliminating external sources of
`
`disturbances (17), such as noise.” Id. at Abstract.
`
`Furthermore, U.S. Patent No. 8,000482 (“Lambert”) teaches a microphone array that
`
`receives speech and noise signals. Lambert at Abstract. Speech detection circuitry 21 monitors
`
`incoming signals to determine when speech is present. Id. at 4:59-63. When speech is detected,
`
`speech detection circuitry 21 enables filters 24. Id. at 5: 48-50; 7:6-8. Frequency Impulse Response
`
`(FIR) filters 24 are part of the processing system and enabled by the speech detection circuitry 21
`
`to align the non-reference microphone output signals with the output signal of the reference
`
`microphone. Id. at Abstract, FIG. 5.
`
`Furthermore, JPH11305792 (“Takano”) teaches “a sound pickup apparatus for suppressing
`
`a surrounding noise component and extracting a target signal from a sound source signal in which
`
`ambient noise is mixed, having a sound collecting function, and obtaining a high recognition rate.”
`
`Takano at [0001]. It does so by combining the outputs of a first microphone, located close to a
`
`
`
`DEFENDANT’S PRELIMINARY INVALIDITY CONTENTIONS
`-14-
`
`
`Jawbone's Exhibit No. 2004, IPR2022-01084
`Page 014
`
`

`

`target signal source, and a second microphone, which is located away from the source, into a signal
`
`that can be adapted to reduce noise and allow speech recognition. Id. at Abstract.
`
`Furthermore, U.S. Patent No. 5,406,622 (“Silverberg”) teaches “Two adaptive filters are
`
`employed, one driven by the handset transmitter to subtract speech from a reference value to
`
`produce an enhanced reference signal; and a second adaptive filter driven by the enhanced
`
`reference signal to subtract noise from the transmitter. The weights of the two adaptive filters are
`
`allowed to adapt or are frozen according to criteria set as a result of transmitter power
`
`measurements which determine whether speech is likely to be present or not.” Silverberg,
`
`(Abstract).
`
`Furthermore, Switching Adaptive Filters for Enhancing Noisy and Reverberant Speech
`
`from Microphone Array Recordings (“Van Compernolle”) teaches “filters have two sections, of
`
`which only one section at any given time is allowed to adapt its coefficients. The switch between
`
`both is controlled by a speech detection function. The first section implements an adaptive look
`
`direction and cues in on the desired speech. This section only adapts when speech is present. The
`
`second section acts as a multichannel adaptive noise canceler.” Van Compernolle, (Abstract).
`
`Furthermore, Speech Enhancement Using Sub-band Intermittent Adaption (“Toner”)
`
`teaches “[a] sub-band multisensor structure using intermittent adaption is proposed for speech
`
`enhancement.” Toner, (Abstract).
`
`Furthermore, U.S. Patent No. 5,473,701 (“Cezanne”) teaches “a method of apparatus of
`
`enhancing the signal-to-noise ratio of a microphone array.” Cezanne, (Abstract). Cezanne also
`
`“provides a technique for adaptively adjusting the directivity of a microphone array to reduce (for
`
`example, to minimize) the sensitivity of the array to background noise.” Cezanne at 1:42-46.
`
`
`
`DEFENDANT’S PRELIMINARY INVALIDITY CONTENTIONS
`-15-
`
`
`Jawbone's Exhibit No. 2004, IPR2022-01084
`Page 015
`
`

`

`Furthermore, U.S. Patent No. 4,901,354 (“Gollmar”) teaches “a device for reliably
`
`detecting at least the beginning of a voice command for a voice control of function elements,
`
`signals of a first microphone to which contact sound of an operating person is applied, are used for
`
`triggering a second microphone which is directed towards the mouth of the operating person in
`
`order to improve the reliability of the voice control in high ambient noise.” Gollmar, (Abstract).
`
`Furthermore, U.S. Patent No. 5,978,824 (“Ikeda 824”) teaches “a noise canceler for
`
`canceling, by use of an adaptive filter, a background noise signal introduced into a speech signal
`
`input via a microphone, a handset or the like.” Ikeda 824 at 1:4-8. Ikeda 824 further discloses a
`
`noise canceler including an adaptive filter for approximating the impulse response of a noise path
`
`along which a noise signal input to a reference signal microphone to propagate toward a main
`
`signal microphone. Ikeda 824 at 1:21-26.
`
`Furthermore, JPH1023122A (“Aoki”) teaches “a voice transmission signal of optimal
`
`sound quality to be obtained in accordance with the ambient noise level.” Aoki at Abstract. Aoki
`
`further discloses an ambient noise estimation configuration including an air conduction
`
`microphone and a bone conduction microphone to determine the presence or absence of a voice
`
`transmission state by comparing the output levels of low pass filters in a voice transmission state
`
`detection unit. See id.
`
`Furthermore, Improved Adaptive Noise Cancellation in the Presence of Signal Leakage on
`
`the Noise Reference Channel (“Al-Kindi”) teaches “[A]n adaptive noise cancelling structure
`
`suitable for situations where the noise reference transducer is closely spaced relative to the primary
`
`transducer.” Al-Kindi, Abstract.
`
`Furthermore, U.S. Patent No. 5,473,684 (“Bartlett”) teaches “[i]mproved microphone
`
`performance . . . by configuring second-order derivative microphone assembly in such a way that
`
`
`
`DEFENDANT’S PRELIMINARY INVALIDITY CONTENTIONS
`-16-
`
`
`Jawbone's Exhibit No. 2004, IPR2022-01084
`Page 016
`
`

`

`radially divergent near-field input produces a microphone response proportional to a first-order
`
`spatial derivative of the acoustic pressure field.” Bartlett, Abstract.
`
`Furthermore, U.S. Patent No. 5,796,819 (“Romesburg”) teaches “[a] system and a method
`
`for echo suppression which use two or more microphones for beamforming of an echo signal
`
`corresponding to an incoming speech signal that is output by a loudspeaker. The outputs of the
`
`microphones are appropriately filtered and then linearly combined to cancel the echo signal, even
`
`if the incoming speech signal has been non-linearly distorted. Also, the microphones may be
`
`selectively positioned or pointed to allow the linear cancellation of ambient noise.” Romesburg,
`
`Abstract.
`
`Furthermore, U.S. Patent No. 3,746,789 (“Alcivar”) teaches “A voice-activated transmit
`
`switch (VOX) for high noise environment voice communication systems, which employ a speech
`
`microphone, a transmitter, and a receiver. A separate tissue-conduction microphone is employed
`
`to generate a signal which activates a transmitter enabling and receiver disabling circuit.” Alcivar,
`
`Abstract.
`
`Furthermore, U.S. Patent No. 5,740,256 (“Castello Da Costa”) teaches “[a] known cross-
`
`coupled adaptive noise cancelling arrangement uses an adaptive noise filter and an adaptive cross-
`