IPR2022-01147
`U.S. Patent No. 8,019,091
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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.,
`SAMSUNG ELECTRONICS CO., LTD., AND
`SAMSUNG ELECTRONICS AMERICA, INC.
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`Petitioners
`v.
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`JAWBONE INNOVATIONS, LLC,
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`Patent Owner
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`Case IPR2022-01147
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`U.S. Patent No. 8,019,091
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`PETITIONERS’ PRELIMINARY REPLY
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`U.S. Patent No. 8,019,091
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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.,
`SAMSUNG ELECTRONICS CO., LTD., AND
`SAMSUNG ELECTRONICS AMERICA, INC.
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`Petitioners
`v.
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`JAWBONE INNOVATIONS, LLC,
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`Patent Owner
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`Case IPR2022-01147
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`U.S. Patent No. 8,019,091
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`PETITIONERS’ PRELIMINARY REPLY
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`IPR2022-01147
`U.S. Patent No. 8,019,091
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`LIST OF EXHIBITS
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`EX-1001
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`U.S. Patent No. 8,019,091 to Burnett et al. (“the ’091 patent”)
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`EX-1002
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`Prosecution History of the ’091 patent
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`EX-1003
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`Declaration of Dr. Thomas Kenny
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`EX-1004
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`U.S. Patent No. 6,415,034 to Hietanen (“Hietanen”)
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`EX-1005
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`U.S. Patent No. 6,377,919 to Burnett et al. (“Burnett”)
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`EX-1006
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`EX-1007
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`Weinstein et al., “Multi-Channel Signal Separation by
`Decorrelation,” IEEE Transactions on Speech and Audio
`Processing, Vol. 1, No. 4, October 1993, pages 405-413
`(“Weinstein”)
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`Gregory Burnett, The Physiological Basis of Glottal
`Electromagnetic Micropower Sensors (GEMS) and Their Use in
`Defining an Excitation Function for the Human Vocal Tract,
`Dissertation, January 1999 (“Burnett Thesis”)
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`EX-1008
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`Japanese Unexamined Patent Application JPH11305792 and
`Certified Translation (“Takano”)
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`EX-1009
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`U.S. Patent No. 5,282,253 to Konomi
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`EX-1010
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`U.S. Patent No. 5,295,193 to Ono
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`EX-1011
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`U.S. Patent No. 5,473,701 to Cezanne et al.
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`Hussain et al., “A New Metric For Selecting Sub-band Processing
`In Adaptive Speech Enhancement Systems,” EuroSpeech ’97
`Proceedings, ESCA 5th European Conference On Speech
`Communication And Technology, September 22-25, 1997, pages
`2611-2614 (“Hussain”)
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`EX-1012
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`IPR2022-01147
`U.S. Patent No. 8,019,091
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`EX-1013
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`U.S. Patent No. 8,000,482 to Lambert et al.
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`EX-1014
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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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`EX-1015
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` Complaint – Jawbone Innovations, LLC v. Samsung Electronics
`Co., Ltd., et al., 2:21-cv-00186, D.I. 1 (E.D. Tex. May 27, 2021)
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`EX-1016
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`EX-1017
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` First Amended Complaint – Jawbone Innovations, LLC v.
`Samsung Electronics Co., Ltd., et al., 2:21-cv-00186, D.I. 21 (E.D.
`Tex. Oct. 26, 2021)
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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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`EX-1018
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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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`EX-1019
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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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`EX-1020
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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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`EX-1021
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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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`EX-1022
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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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`EX-1023
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` Order Setting Deadlines – Jawbone Innovations, LLC v. Samsung
`Electronics Co., Ltd., et al., 2:21-cv-00186, D.I. 28 (E.D. Tex.
`Dec. 14, 2021)
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`IPR2022-01147
`U.S. Patent No. 8,019,091
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`EX-1024
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` Docket Control Order – Jawbone Innovations, LLC v. Samsung
`Electronics Co., Ltd., et al., 2:21-cv-00186, D.I. 38 (E.D. Tex. Feb.
`1, 2022)
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`EX-1025
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`Initial Infringement Contentions for ’091 Patent – Jawbone
`Innovations, LLC v. Apple Inc., 6:21-cv-00984 (W.D. Tex. Jan. 13,
`2022)
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`EX-1026
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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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`EX-1027
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` Press Release of U.S. Senator Patrick Leahy of Vermont
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`EX-1028
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` Legislative Proposal - Restoring the America Invents Act
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`EX-1029
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` Apple Sand Revolution Stipulation
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`EX-1030
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` Samsung Sotera Stipulation
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`EX-1031
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`Ryan Davis, Fintiv's Emergency Motion Delays Apple Patent Trial
`In WDTX, LAW360 (June 8, 2022, 8:17 PM), available at:
`https://www.law360.com/technology/articles/1500531/fintiv-s-
`emergency-motion-delays-apple-patent-trial-in-
`wdtx?nl_pk=0e88f4cd-71d1-4acd-9e72-
`7cac46756e13&utm_source=newsletter&utm_medium=email&ut
`m_campaign=technology&utm_content=2022-06-08
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`EX-1032
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`Declaration of June Ann Munford
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`Amended Scheduling Order – Jawbone Innovations, LLC v. Apple
`Inc., 6:21-cv-00984, D.I. 107 (W.D. Tex. Oct. 10, 2022)
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`Motion to Stay – Jawbone Innovations, LLC v. Samsung
`Electronics Co., Ltd., et al., 2:21-cv-00186, D.I. 106 (E.D. Tex.
`Aug. 8, 2022)
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`4
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`EX-1033
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`EX-1034
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`IPR2022-01147
`U.S. Patent No. 8,019,091
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`I.
`INTRODUCTION
`As authorized by the Board, Petitioners below address the proper application
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`of the Fintiv factors under the USPTO’s Interim Procedure for Discretionary Denials
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`(“Guidance”), and demonstrate that denial would be inappropriate.
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`II.
`DISCRETION SHOULD NOT PRECLUDE INSTITUTION
`Compelling Merits Alone Show Discretionary Denial Is Not Appropriate.
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`As demonstrated in the Petition with reference to Dr. Kenny’s testimony and
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`additional supporting evidence, the Petition’s merits are “compelling,” and this
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`“alone demonstrates that the PTAB should not discretionarily deny institution under
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`Fintiv.” Guidance, 3-5. Dr. Kenny extensively explains, for example, how and why
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`a POSITA would have combined the applied references, and the mappings of the
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`resulting combinations to each limitation of the Challenged Claims.
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`In contrast, the POPR relies upon unsupported attorney argument, improperly
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`argues references individually, and ignores disclosures about which Dr. Kenny
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`testified. The strength of the merits is enough to outweigh any inefficiencies born
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`of parallel litigation. Guidance, 3-5, 9; Fintiv, 14-15. Accordingly, Petitioners
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`respectfully submit that the Petition should be considered and instituted on its merits.
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`The Co-Pending Litigations Have Different Procedural Postures. As
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`addressed in the Petition, the Samsung and Apple litigations are proceeding in
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`different jurisdictions (Samsung in EDTX and Apple in WDTX). Apple’s motion
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`for transfer to NDCA remains pending. EX-1038.
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`IPR2022-01147
`U.S. Patent No. 8,019,091
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`The Fintiv Factors Are Inapplicable to the Samsung Litigation. Samsung’s
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`Sotera stipulation fully resolves consideration of Fintiv for the Samsung litigation.
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`Pet. 82; EX-1026; Guidance, 7. Specifically, the Guidance notes that “the PTAB will
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`not discretionarily deny institution of an IPR or PGR in view of parallel district court
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`litigation where a petitioner” provides a Sotera stipulation. Guidance, 7.
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`The Fintiv Factors for the Samsung and Apple Litigations Strongly Favor
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`Institution. The Guidance clarifies that Samsung’s Sotera stipulation fully resolves
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`consideration of Fintiv for the Samsung litigation; consequently, the Board need not
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`reach the Fintiv factors with respect to that litigation. Nevertheless, Petitioners
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`below address the Samsung and Apple litigations individually with respect to the
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`Fintiv factors, and in so doing demonstrate that the factors weigh heavily against
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`discretionary denial for both litigations. Pet. 74-75; Shenzhen Carku Tech. Co., Ltd.
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`v. The Noco Co., IPR2020-00944, Paper 20, 56 (Nov. 12, 2020).
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`1. Likelihood of district court stay. Samsung has requested a stay of the
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`parallel litigation and that request remains pending. EX-1034. Neither party to the
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`Apple litigation has yet requested a stay, but a stay remains possible. Indeed, Apple’s
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`motion for transfer to NDCA remains pending and, if granted, stay pending
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`institution is likely. Nevertheless, upon institution of this petition and regardless of
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`the transfer decision, Apple intends to file a motion to stay the parallel litigation.
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`IPR2022-01147
`U.S. Patent No. 8,019,091
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`Accordingly, as noted in the Petition, Fintiv Factor 1 is at worst neutral (Pet. 75).
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`2. Trial Date Relative to Final Written Decision Due Date.
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`The Guidance is clear on the trial date to use when considering discretionary
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`denial on the basis of co-pending litigation. Specifically, page 3 of the Guidance
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`explains that “when considering the proximity of the district court’s trial date to the
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`date when the PTAB final written decision will be due, the PTAB will consider the
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`median time from filing to disposition of the civil trial for the district in which the
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`parallel litigation resides,” and cited statistics. These statistics1 show “median time-
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`to-trial” in EDTX as 24.5 months, and in WDTX as 28.3 months.
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`The complaint against Apple was filed on September 23, 2021 (EX-1021),
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`establishing an expected trial date of late January or early February 2024 based on
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`the WDTX statistics. The expected trial date thus falls after the statutory deadline
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`for the Board’s FWD, which is expected to be no later than January 7, 2024.
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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 Apple litigation scheduling order entered on January
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`7, 2022. POPR, 27. However, as the Director explained “scheduled trial dates are
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` Available at https://www.uscourts.gov/statistics/table/na/federal-court-
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`management-statistics/2022/06/30-2.
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`IPR2022-01147
`U.S. Patent No. 8,019,091
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`unreliable and often change.” Guidance, 8. Indeed, the district court for the Apple
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`litigation recently delayed trial to September 27, 2023 in the amended scheduling
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`order entered on October 20, 2022. EX-1033, 3. That a Markman hearing has not
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`yet been held, and that Apple’s motion to transfer remains pending, further
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`underscores the uncertainty as to whether and when the Apple litigation might
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`proceed to trial. Thus, the Board should follow the Guidance, i.e., use median time
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`to trial, and find Factor 2 to favor institution with respect to the Apple litigation.
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`As noted above, the Guidance clarifies that Samsung’s Sotera stipulation
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`fully resolves consideration of Fintiv for the Samsung litigation; consequently, the
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`Board need not reach this factor for that litigation. Pet. 81; EX-1026; Guidance, 7.
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`3. Investment in the Parallel Proceeding and Petitioner’s Diligence. As
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`noted in the Petition (Pet. 77-79), Factor 3 weighs strongly against discretionary
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`denial. PO does not dispute that Samsung and Apple were diligent in filing this
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`Petition. See POPR 29-30. As to investment, for the Samsung litigation, Samsung’s
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`Sotera stipulation will mitigate any investment as to overlapping issues. As to the
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`Apple litigation, the deadline for final contentions has not yet passed, a Markman
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`hearing has not yet been held (and is not currently scheduled to take place until May
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`2023), and Apple’s motion to transfer remains pending. EX-1033, 1.
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`4. Overlap of Issues. As noted in the Petition (Pet. 80-81), Factor 4 weighs
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`strongly against discretionary denial, at least because any grounds that might be
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`IPR2022-01147
`U.S. Patent No. 8,019,091
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`raised in litigation are materially different from those presented in the Petition.
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`Samsung provided a Sotera stipulation. Pet. 81; EX-1026.2
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`PO’s argument that Apple has not provided a Sotera stipulation does not
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`change the weight that should be accorded to Apple’s Sand Revolution stipulation,
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`which resolves doubt as to meaningful overlap of issues (Pet. 81; EX-1025). For
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`example, Apple’s stipulation requires the grounds addressed in each forum to be
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`mutually exclusive, thereby obviating the possibility of inconsistent results.
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`Furthermore, WDTX has set 2023 deadlines for “meet and confers to discuss
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`significantly narrowing the number of claims asserted and prior art references at
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`issue to triable limits.” EX-1033, 2. Accordingly, as litigation progresses, overlap in
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`claim coverage and/or prior art is almost certain to reduce even more.
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`6. Other Considerations. Petitioners respectfully submit that the Fintiv factors
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`weigh heavily against the Board exercising its discretion to deny institution. Indeed,
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`the Petition’s merits are “compelling,” and this “alone demonstrates that the PTAB
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`should not discretionarily deny institution under Fintiv.” Guidance, 3-5.
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` The POPR also relies on the Google action, but Google is an unrelated party to
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`Petitioners here. POPR, 30.
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`Date: November 2, 2022
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`IPR2022-01147
`U.S. Patent No. 8,019,091
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`Respectfully submitted,
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`/Andrew B. Patrick/
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`Andrew B. Patrick (Reg. No. 63,471)
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
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`Counsel for Petitioners
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`IPR2022-01147
`U.S. Patent No. 8,019,091
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e), the undersigned certifies that on November 2,
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`2022, a complete and entire copy of this Petitioners’ Preliminary Reply was provided
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`via email to the Patent Owner by serving the correspondence email addresses of
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`record as follows:
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`Peter Lambrianakos, plambrianakos@fabricantllp.com
`Vincent J. Rubino III, vrubino@fabricantllp.com
`Alfred R. Fabricant, ffabricant@fabricantllp.com
`Enrique W. Iturralde, eiturralde@fabricantllp.com
`Richard Cowell, rcowell@fabricantllp.com
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`FABRICANT LLP
`411 Theodore Fremd Avenue, Suite 206
`South Rye, New York 10580
`Tel. 212-257-5797
` Fax. 212-257-5796
`ptab@fabricantllp.com
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`/Crena Pacheco/
`Crena Pacheco
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`(617) 956-5938
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