`
`Filed: June 23, 2023
`
`Filed on behalf of Meta Platforms, Inc.
`By: Lisa Nguyen
`
`David Tennant
`
`Eric E. Lancaster
`
`Daniel Margolis
`
`Grace Wang
`
`Alan Billharz
`
`Colby Davis
`Allen & Overy LLP
`550 High Street
`Palo Alto, CA 94301
`Telephone: 650-388-1724
`Facsimile: 202-683-3999
`Email: AO_Meta_Jawbone@AllenOvery.com
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________
`META PLATFORMS, INC.,
`Petitioner,
`v.
`JAWBONE INNOVATIONS, LLC,
`Patent Owner.
`____________________________
`IPR2023-01083
`U.S. Patent No. 8,321,213
`____________________________
`PETITIONER’S NOTICE OF RANKING PETITIONS FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 8,321,213
`
`
`
`
`
`
`
`
`Meta Platforms, Inc. v. Jawbone Innovations, LLC
`U.S. Patent No. 8,321,213
`
`
`
`Petitioner herewith files two parallel petitions for inter partes review of U.S.
`
`Patent No. 8,321,213 (“the ’213 patent”), IPR2023-01083 (challenging claims 1 and
`
`3-13) and IPR2023-01084 (challenging claims 14-36 and 39-42). Pursuant to the
`
`Consolidated Trial Practice Guide, Petitioner provides the following ranking of
`
`petitions:
`
`Rank
`
`IPR Number
`
`Prior Art
`
`1
`
`2
`
`
`
`IPR2023-01084
`
`
`IPR2023-01083
`
`
`Avendano ’880, Visser1,
`Bisgaard2, Hou, “Frequency Art”
`(Byrne3, Burnett4, and/or
`Berglund5)
`Avendano ’880, Hou,
`Avendano ’252
`
`Claims
`Addressed
`14-36 and 39-
`42
`
`1 and 3-13
`
`Challenging the ’213 patent with two petitions was reasonable and necessary,
`
`and does not unduly burden the Board or Patent Owner. First, the ’213 patent
`
`includes 42 claims, 39 of which are challenged by Petitioner. The large number of
`
`challenged claims alone makes two petitions reasonable, given the limited word
`
`
`1 U.S. Patent No. 7,464,029 B2 (“Visser”)
`2 U.S. Publication No. US 2011/0103626 A1 (“Bisgaard”)
`3 Byrne, D., et al, “An international comparison of long-term average speech
`spectra,” 1994 Oct; J. Acoust. Soc. Am.; 96(4):2108-2120 (“Byrne”)
`4 U.S. Publication No. US 2002/0198705 A1 (“Burnett”)
`5 Berglund, B., et al, “Source and effects of low-frequency noise,” 1996 May; J.
`Acoust. Soc. Am; 99(5):2985-3002 (“Berglund”)
`
`-1-
`
`
`
`Meta Platforms, Inc. v. Jawbone Innovations, LLC
`U.S. Patent No. 8,321,213
`
`count available. Platform Sci., Inc. v. Omnitracs, LLC, IPR2020-01518, Paper 14 at
`
`17-18 (Apr. 15, 2021) (“[T]wenty claims constitutes the ‘large number’”) (citations
`
`omitted); Dolby Lab’ys., Inc., v. Intertrust Techs. Corp., IPR2020-01105, Paper 14
`
`at 19-21 (PTAB Jan. 5, 2021).
`
`Further, the challenged claims present features that require distinct treatment.
`
`Samsung Elecs. Am., Inc. v. Snik LLC, IPR2020-01429, Paper 10 at 12-13 (P.T.A.B.
`
`Mar. 9, 2021) (noting “word constraints” of challenging 55 claims, and “the
`
`substantive differences between the groups of challenged claims”). For example,
`
`each of the independent claims challenged in IPR2023-01084 (i.e., claims 14 and
`
`42) recites limitations that are not recited in any of the claims challenged in
`
`IPR2023-01083, namely “forming a filter that describes a relationship for speech
`
`between the first physical microphone and the second physical microphone.”
`
`Further, the independent claim challenged in IPR2023-01083 (i.e., claim 1) recites
`
`limitations that are only recited in a dependent claim of the claims challenged in
`
`IPR2023-01084 (i.e., claim 27), namely limitations directed to forming a filter by
`
`“generating a first quantity by applying a calibration to at least one of the first signal
`
`and the second signal,” “generating a second quantity by applying [a] delay to the
`
`first signal,” and “forming the filter as a ratio of the first quantity to the second
`
`quantity.” These two groups of independent claims recite substantively different
`
`combinations of features that require distinct treatment.
`
`-2-
`
`
`
`Meta Platforms, Inc. v. Jawbone Innovations, LLC
`U.S. Patent No. 8,321,213
`
`
`Patent Owner also asserts all of the challenged claims of the ’213 patent in
`
`concurrent litigation against Petitioner. Dolby Lab’ys., IPR2020-01105, Paper 14 at
`
`20. Should the Board deny institution of one of Petitioner’s petitions, Patent Owner
`
`would gain an unfair advantage, as Patent Owner could adjust its ultimate assertion
`
`towards the claims that had been challenged in the denied petition.
`
`Petitioner gains no unfair advantage by requesting institution on two petitions
`
`because (1) each petition challenges a different subset of claims (see Dolby Lab’ys,
`
`IPR2020-01105, Paper 14 at 20), (2) the two petitions are Petitioner’s first requests
`
`seeking review of the ’213 patent, and (3) the petitions do not consider, rely on, or
`
`otherwise take advantage of any prior Patent Owner response. There is thus no
`
`multiplicity of proceedings or a second bite at the apple.
`
`Institution of both petitions would not impose any undue burdens on the Board
`
`or Patent Owner, as the petitions deploy overlapping prior art references, and both
`
`petitions are supported by declarations from the same technical expert. Twitter, Inc.
`
`v. Palo Alto Rsch. Ctr., Inc., IPR2021-01459, Paper 11 at 37 (PTAB Apr. 6, 2022).
`
`The proceedings could thus be effectively consolidated, for depositions of
`
`Petitioner’s declarant and for oral argument. Id. at 38.
`
`In view of the differences described above, the Board should use its discretion
`
`to institute both petitions. The grounds set forth in the petitions are not redundant,
`
`duplicative, unduly burdensome on the Board, or unfair to Patent Owner.
`
`-3-
`
`
`
`Meta Platforms, Inc. v. Jawbone Innovations, LLC
`U.S. Patent No. 8,321,213
`
`
`
`
`
`
`Respectfully submitted,
`ALLEN & OVERY, LLP
`/Lisa Nguyen
`Lisa Nguyen (Reg. No. 58,018)
`Counsel for Petitioner,
`META PLATFORMS, INC.
`
`Dated: June 23, 2023
`
`
`
`
`
`
`-4-
`
`
`
`Meta Platforms, Inc. v. Jawbone Innovations, LLC
`U.S. Patent No. 8,321,213
`
`
`CERTIFICATE OF SERVICE
`The undersigned certifies that a complete copy of this PETITIONER’S
`
`NOTICE OF RANKING PETITIONS FOR INTER PARTES REVIEW OF
`
`U.S. PATENT NO. 8,321,213 were served on the official correspondence address
`
`for the patent shown in the Patent Center via FEDERAL EXPRESS priority next
`
`business day delivery on June 23, 2023:
`
`Mark Leonardo
`Nutter McClennen & Fish LLP
`Seaport West
`155 Seaport Blvd.
`Boston, MA 02210-2604
`
` courtesy copy is also being served via electronic mail on counsel for the
`
` A
`
`patent holder in the pending district court litigation, Jawbone Innovations, LLC v.
`
`Meta Platforms, Inc., 6:23-cv-00158 (W.D. Tex., filed February 28, 2023), and all
`
`counsel for the patent owner in IPR2023-00279:
`
`Raymond W. Mort, III
`THE MORT LAW FIRM, PLLC
`501 Congress Avenue, Suite 150
`Austin, Texas 78701
`Telephone: (512) 865-7950
`Email: raymort@austinlaw.com
`
`Alfred R. Fabricant
`Peter Lambrianakos
`Vincent J. Rubino, III
`Enrique W. Iturralde
`FABRICANT LLP
`411 Theodore Fremd Avenue,
`Suite 206 South
`Rye, New York 10580
`Telephone: (212) 257-5797
`Facsimile: (212) 257-5796
`Email: ffabricant@fabricantllp.com
`Email: plambrianakos@fabricantllp.com
`
`-5-
`
`
`
`Meta Platforms, Inc. v. Jawbone Innovations, LLC
`U.S. Patent No. 8,321,213
`
`
`Email: vrubino@fabricantllp.com
`Email: jawbone@fabricantip.com
`Email: rcowell@fabricantllp.com
`Email: eiturralde@fabricantllp.com
`
`
`Dated: June 23, 2023
`
`
`
`
`
`
`ALLEN & OVERY, LLP
`/Lisa Nguyen
`Lisa Nguyen (Reg. No. 58,018)
`Counsel for Petitioner,
`META PLATFORMS, INC.
`
`-6-
`
`
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