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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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`APPLE INC.,
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`Petitioner
`v.
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`JAWBONE INNOVATIONS, LLC,
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`Patent Owner
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`Case IPR2022-01084
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`U.S. Patent No. 8,321,213
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`PETITIONER’S PRELIMINARY REPLY
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`IPR2022-01084
`U.S. Patent No. 8,321,213
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`PETITIONER’S UPDATED EXHIBIT LIST
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`APPLE-1001
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`U.S. Patent No. 8,321,213 to Petit et al. (“the ’213 patent”)
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`APPLE-1002
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`Excerpts from the Prosecution History of the ’213 patent (“the
`Prosecution History”)
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`APPLE-1003
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`Declaration of Dr. Thomas Kenny
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`APPLE-1004
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`Curriculum Vitae of Dr. Thomas Kenny
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`APPLE-1005
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` U.S. Patent No. 8,194,880 B2 (“Avendano”)
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`APPLE-1006
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` U.S. Patent No. 7,464,029 B2 (“Visser”)
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`APPLE-1007
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` RESERVED
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`APPLE-1008
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` U.S. Patent No. 7,155,019 B2 (“Hou”)
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`APPLE-1009
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` Byrne, D, et al, “An international comparison of long-term
`average speech spectra,” 1994 Oct; J. Acoust. Soc. Am.; 96(4):
`2108-2120 (“Byrne”).
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`APPLE-1010
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` U.S. Publication No. US 2011/0103626 A1 (“Bisgaard”)
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`APPLE-1011
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` U.S. Provisional App. No. 60/816,244 (“the Bisgaard
`Provisional”)
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`APPLE-1012
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` U.S. Publication No. US 2002/0198705 A1 (“Burnett”)
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`APPLE-1013
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` Berglund, B, et al, “Source and effects of low-frequency noise,”
`1996 May; J. Acoust. Soc. Am; 99(5): 2985-3002 (“Berglund”).
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`APPLE-1014
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` Declaration of June Ann Munford
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`APPLE-1015
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` Declaration of June Ann Munford - Appendix
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`APPLE-1016
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`IPR2022-01084
`U.S. Patent No. 8,321,213
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` Curriculum Vitae of June Ann Munford
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`APPLE-1017
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` RESERVED
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`APPLE-1018
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` Ryan David, Positive COVID Tests Derail Intel Patent Trial In
`WDTX, LAW360 (Apr. 26, 2022, 1:16PM),
`https://www.law360.com/articles/1487451
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`APPLE-1019
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` Dani Kass, Fintiv Fails: PTAB Uses ‘Remarkably Inaccurate’
`Trial Dates, LAW360 (Nov. 2, 2021, 9:09 PM),
`https://www.law360.com/articles/1436071
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`APPLE-1020
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` Motion to Transfer (Public Version) – Jawbone Innovations,
`LLC v. Apple Inc., 6:21-cv-00984, D.I. 47 (W.D. Tex. May 6,
`2022)
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`APPLE-1021
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` Motion to Transfer (Public Version) – Jawbone Innovations,
`LLC v. Google LLC, 6:21-cv-00985, D.I. 43 (W.D. Tex. Apr.
`29, 2022)
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`APPLE-1022
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` Motion to Transfer – Jawbone Innovations, LLC v.
`Amazon.com, Inc., 2:21-cv-00435, D.I. 25
`(E.D. Tex. Mar.
`10, 2022)
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`APPLE-1023
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` Complaint – Jawbone Innovations, LLC v. Apple Inc., 6:21-cv-
`00984, D.I. 1 (W.D. Tex. Sep. 23, 2021)
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`APPLE-1024
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` Scheduling Order – Jawbone Innovations, LLC v. Apple Inc.,
`6:21-cv-00984, D.I. 23 (W.D. Tex. Jan. 7, 2022)
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`APPLE-1025
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` Press Release of U.S. Senator Patrick Leahy of Vermont
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`APPLE-1026
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` Legislative Proposal - Restoring the America Invents Act
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`APPLE-1027
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` Complaint – Jawbone Innovations, LLC v. Google LLC, 6:21-
`cv-00985, D.I. 1 (W.D. Tex. Sep. 23, 2021)
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`APPLE-1028
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`IPR2022-01084
`U.S. Patent No. 8,321,213
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` Amended Scheduling Order – Jawbone Innovations, LLC v.
`Apple Inc., 6:21-cv-00984, D.I. 23 (W.D. Tex. Oct. 20, 2022)
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`iii
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`IPR2022-01084
`U.S. Patent No. 8,321,213
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`I.
`INTRODUCTION
`Petitioner below addresses the proper application of the Fintiv factors under
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`the USPTO’s Interim Procedure for Discretionary Denials (“Guidance”), and
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`demonstrates that denial would be inappropriate.
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`II.
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`FINTIV FACTORS 1-4 AND 6 STRONGLY FAVOR
`INSTITUTION
`A.
`Petitioner Intends to File a Motion to Stay the Parallel
`Litigation (Factor 1)
`Neither party to the litigation has yet requested a stay, but a stay remains
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`possible. Indeed, Apple’s motion for transfer to the Northern District of California
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`(“NDCA”) remains pending and, if granted, stay pending institution is likely.
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`Nevertheless, upon institution of this petition and regardless of the transfer
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`decision, Petitioner intends to file a motion to stay the parallel litigation.
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`Accordingly, as noted in the Petition, Factor 1 is at worst neutral (Pet. 94).
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`B.
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`The Final Written Decision Deadline Precedes the Median
`Trial Date (Factor 2)
`In June, Director Vidal issued clear guidance on the trial date to use when
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`considering discretionary denial on the basis of co-pending litigation. Specifically,
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`“when considering the proximity of the district court’s trial date to the date when
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`the PTAB final written decision will be due, the PTAB will consider the median
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`time from filing to disposition of the civil trial for the district in which the parallel
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`IPR2022-01084
`U.S. Patent No. 8,321,213
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`litigation resides” and cited to statistics.1 Guidance, 3. These statistics show the
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`“most recent statistics on median time-to-trial for civil actions” in the Western
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`District of Texas (“WDTX”) as 28.3 months. Here, the complaint against Apple
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`was filed on September 23, 2021 (APPLE-1009), establishing an expected trial
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`date of February 2024 based on the WDTX statistics.2 Accordingly, the median
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`time-to-trial falls after the statutory deadline for the Board’s final written decision
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`(“FWD”), which is expected to be no later than December 21, 2023.
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`Patent Owner asks the Board to ignore this guidance and, instead, use the
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`July 26, 2023 trial date in the scheduling order entered on January 7, 2022.
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`However, as the Director explained “scheduled trial dates are unreliable and often
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`change.” Indeed, the district court recently delayed the trial to September 27, 2023
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`in the amended scheduling order entered on October 20, 2022. APPLE-1028. That
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`a Markman hearing has not yet been held, and that Apple’s motion to transfer
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` Available at https://www.uscourts.gov/statistics/table/na/federal-court-
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` 1
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`management-statistics/2022/06/30-2
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`2 Twenty-eight months from the September 23, 2021 complaint against Apple falls
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`on January 23, 2024. Thirty percent (i.e., 0.3) of the thirty-one days in January
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`2024 adds 9.3 days and moves the median time-to-trial to February 1, 2024.
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`2
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`IPR2022-01084
`U.S. Patent No. 8,321,213
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`remains pending, further underscores the uncertainty as to whether and when the
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`Apple litigation might proceed to trial.
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`Thus, due to demonstrable unreliability of scheduled trial dates, the Board
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`should follow the Director’s guidance, i.e., use median time to trial, and find
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`Factor 2 to favor institution.
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`However, even if the currently scheduled trial date (September 27, 2023) is
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`considered, Factor 2 is, at worst, neutral because the Board considers the proximity
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`of the parallel proceeding to the FWD. When the FWD is due shortly after the
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`target date—here, at worst, by roughly two and a half months—this factor receives
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`little weight. Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12, 15
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`(2020). Also, “given the minimal, if any, overlap between the issues in the [co-
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`pending litigation] and this proceeding,” which is the case here as explained in Part
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`D below, “the time overlap has less significance.” SharkNinja v. iRobot Corp.,
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`IPR2021-00545, Paper 11, 7 (2021).
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`C.
`Petitioner’s Diligence Favors Institution (Factor 3)
`The Petition was filed approximately eight months after being served with
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`the complaint, approximately four months after Jawbone served infringement
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`contentions, and less than two months after Apple served preliminary invalidity
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`contentions. With this diligence, the investment in the district court “is not a result
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`of Petitioner’s delay.” SharkNinja, IPR2021-00545, Paper 11 at 7-8. In fact, the
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`3
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`IPR2022-01084
`U.S. Patent No. 8,321,213
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`deadline to amend pleadings (December 20, 2022) falls before the institution
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`deadline and significant events (e.g., several months of fact discovery, expert
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`reports, dispositive motions, a Markman hearing, trial, etc.) will occur in the
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`district court post-institution. Indeed, a Markman hearing has not yet been held,
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`Apple’s motion to transfer remains pending, and much of the case remains to be
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`litigated. Thus, Factor 3 favors institution.
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`D.
`Petitioner’s Stipulation Favors Institution (Factor 4)
`Patent Owner’s argument that Petitioner has not provided a Sotera
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`stipulation does not change the weight that should be accorded to Petitioner’s Sand
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`Revolution stipulation, which resolves doubt as to meaningful overlap of issues
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`(Pet. 98-99). Sand Revolution II, LLC v. Cont’l Intermodal Grp.-Trucking LLC,
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`IPR2019-01393, Paper 24 at 11-12 (June 16, 2020).
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`Specifically, Petitioner’s stipulation prevents overlap because it requires the
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`grounds addressed in each forum to be mutually exclusive, thereby obviating the
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`possibility of inconsistent results. With institution, the IPR grounds will not be
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`considered in the litigation and the same grounds will not be evaluated in both
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`forums, thereby reducing inefficiency and the risk of inconsistent results.
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`Moreover, upcoming events in the litigation will dictate a reduction in
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`overlap between this proceeding and the issues that will be litigated through trial.
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`In fact, Final Invalidity and Infringement Contentions are not due until December
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`4
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`IPR2022-01084
`U.S. Patent No. 8,321,213
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`13, 2022. APPLE-1028, 1. Also, the court has set deadlines of January 25, 2023
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`and February 15, 2023 for “meet and confers to discuss significantly narrowing
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`the number of claims asserted and prior art references at issue to triable limits.”
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`APPLE-1028, 2. Accordingly, as litigation progresses, the overlap in claim
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`coverage and/or prior art is almost certain to reduce even more.
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`E.
`The Compelling Merits Favor Institution (Factor 6)
`The Director’s guidance also confirmed that “the PTAB will not rely on the
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`Fintiv factors to discretionarily deny institution … where a petition presents
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`compelling evidence of unpatentability.” Here, as demonstrated in the Petition with
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`reference to Dr. Kenny’s testimony and additional supporting evidence, the
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`Petition’s merits are “compelling,” and, as a result, a compelling case of
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`unpatentability obviates the Board’s need to address the Fintiv factors at all.
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`Further, although the Patent Owner criticizes Petitioner’s application of the cited
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`references, the Patent Owner does so solely on the basis of attorney argument that
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`is unsupported by expert testimony or any other extrinsic evidence.
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`For the reasons set forth above and in the petition, a holistic view of the
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`Fintiv factors supports institution.
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`5
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`Date: October 24, 2022
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`Respectfully submitted,
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`IPR2022-01084
`U.S. Patent No. 8,321,213
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`/Jeremy J. Monaldo/
`W. Karl Renner, Reg. No. 41,265
`Jeremy Monaldo, Reg. No. 58,680
`Richard Wong, Reg. No. 73,259
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
`Attorneys for Petitioner
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`
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`IPR2022-01084
`U.S. Patent No. 8,321,213
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e), the undersigned certifies that on October 24,
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`2022, a complete and entire copy of this Petitioner’s Preliminary Reply was
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`provided via email to the Patent Owner by serving the correspondence email
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`addresses of record as follows:
`
`Peter Lambrianakos
`Vincent J. Rubino III
`Alfred R. Fabricant
`Enrique W. Iturralde
`Richard Cowell
`FABRICANT LLP
`411 Theodore Fremd Avenue, Suite 206 South
`Rye, New York 10580
`Tel. 212-257-5797
`Fax. 212-257-5796
`
`plambrianakos@fabricantllp.com
`vrubino@fabricantllp.com
`ffabricant@fabricantllp.com
`eiturralde@fabricantllp.com
`rcowell@fabricantllp.com
`ptab@fabricantllp.com
`
`/Crena Pacheco/
`Crena Pacheco
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(617) 956-5938
`
`
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