`
`VIA E-MAIL
`
`
`
`Raymond W. Mort, III
`raymort@austinlaw.com
`THE MORT LAW FIRM, PLLC
`100 Congress Avenue, Suite 2000
`Austin, Texas 78701
`
`Re:
`
`
`
`Jawbone Innovations, LLC v. Apple Inc., Case No. 6:21-cv-00984
`
`Counsel:
`
`We write regarding a petition for inter partes review (IPR) being filed with the Patent
`Trial and Appeal Board (PTAB) to address claims of U.S. Patent No. 8,019,091. The
`table below lists grounds asserted by Apple Inc. (“Apple”) in the IPR2022-01147
`petition challenging claims of this patent, along with the implicated claims against
`which the grounds are asserted.
`
`We write to inform you that Apple hereby stipulates that in the event the PTAB
`institutes an inter partes review based on the IPR2022-01147 petition and including
`the grounds listed in the table below against the corresponding claims listed in the
`table for those grounds (“Instituted Grounds”), Apple will not seek resolution, in the
`above-captioned district court litigation (6:21-cv-00984), of the Instituted Grounds
`against the corresponding claims listed in the table for those grounds.
`
`Patent
`No.
`
`8,019,091
`
`Proceeding No.
`
`Claims
`
`Ground
`
`IPR2022-01147 1-5, 7, 8, 11,
`13, 14, 16,
`18-20
`
`Obvious (§ 103) over Hietanen,
`Burnett, and Weinstein
`
`8,019,091
`
`IPR2022-01147 1-3, 5-8, 10-
`14, 16-20
`
`Obvious (§ 103) over Hietanen,
`Takano, and Weinstein
`
`8,019,091
`
`IPR2022-01147 3, 9, 15
`
`Obvious (§ 103) over Hietanen,
`Burnett or Takano, Weinstein,
`and Hussain
`
`
`
`APPLE ET AL. 1029
`
`1
`
`
`
`
`
`
`June 16, 2022
`Page 2
`
`
`In so stipulating, Apple seeks to avoid multiple proceedings addressing the validity of
`the ’091 patent based on the same grounds. Rather, Apple wishes the patentability of
`this patent over the Instituted Grounds to be addressed at the PTAB. But, for the sake
`of clarity and to avoid any doubt, if the PTAB declines institution of Apple’s IPR
`petition relating to the ’091 patent, Apple reserves the right to seek resolution of the
`Instituted Grounds in the above-captioned district court litigation (6:21-cv-00984).
`
`Sincerely,
`
`
`
`
`
`Ricardo Bonilla
`Fish & Richardson
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`2
`
`
`
`June 16, 2022
`Page 3
`
`List of Prior Art References
`
`
`Details
`
`U.S. Patent No. 6,415,034
`
`U.S. Patent No. 6,377,919
`
`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
`
`Japanese Unexamined Patent Application JPH11305792
`
`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”)
`
`
`
`
`
`
`Reference
`Name
`
`Hietanen
`
`Burnett
`
`Weinstein
`
`Takano
`
`Hussain
`
`
`
`
`
`
`3
`
`
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