`From: Cockings, Orville R. <ocockings@lernerdavid.com>
`Sent: Thursday, November 16, 2023 8:30 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: plambrianakos@fabricantllp.com; vrubino@fabricantllp.com; eiturralde@fabricantllp.com;
`rcowell@fabricantllp.com; jostling@fabricantllp.com; ffabricant@fabricantllp.com; Gewirtz, Gregory S.
`<ggewirtz@lernerdavid.com>; Faegenburg, Russell W. <rfaegenburg@lernerdavid.com>; Apicella, Laura
`<lapicella@lernerdavid.com>
`Subject: Petitioner Sony Request for Reply in Sony Electronics Inc. v. Jawbone Innovations, LLC, IPR2023-
`01166 (US Patent 8,019,091)
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Dear Board,
`
`Pursuant to 37 C.F.R. § 42.108(c), Pe��oner Sony Electronics Inc. (“Sony”) respec�ully requests
`authoriza�on to file a reply of no more than 3 pages to Patent Owner’s Preliminary Response (“POPR”)
`in the above-cap�oned case. Patent Owner Jawbone Innova�ons, LLC (“Jawbone”) has used its POPR, in
`part, to respond to the Board’s comment in an earlier Amazon v. Jawbone IPR (involving the same
`patent claims and prior art) that “’Ikeda’s mere disclosure of more than one alterna�ve does not
`cons�tute a teaching away ‘because it does not ‘cri�cize, discredit, or otherwise discourage the solu�on
`claimed.’” (IPR2023-00253, Paper 9 at 7-8.) The POPR in the present case includes extensive
`discussions of issues rela�ng to the Board’s finding on teaching away and mischaracterizes Ikeda, Sony’s
`pe��on and accompanying declara�on and other issues rela�ng to the Board’s comment. (Paper 8, at
`2-7, 12-15.) As a mater of fundamental fairness, Sony requests that it be given the opportunity to
`respond briefly to those discussions prior to a decision on ins�tu�on, given that Jawbone has already
`had the opportunity to do so. Sony thus maintains that good cause exists for a reply.
`
`On November 15 and 16, 2023, the undersigned no�fied Jawbone of its intent to seek leave from the
`Board and requested Jawbone’s consent to Sony’s proposed reply based on the good cause discussed
`above. Jawbone responded it would not consent but that if Sony’s request is approved, Jawbone
`requests a corresponding sur-reply of equal length.
`
`Sony wishes to make the Board aware that it is also seeking replies in the following co-pending Sony v.
`Jawbone IPRs: IPR2023-01117 (Cls. 14-42, US Patent 8,321,213); IPR2023-01118 (Cls. 1-13, US Patent
`8,321,213); IPR2023-01119 (US Patent 7,246,058); IPR2023-01153 (US Patent 11,122,357); IPR2023-
`01176 (Cls. 29-44, US Patent 8,326,611); IPR2023-01177 (Cls. 1-28, US Patent 8,326,611); IPR2023-01222
`(US Patent 8,467,543); and IPR2023-01228 (Cls. 1-22, 29-40, US Patent 8,503,691).
`
`Respec�ully submited,
`
`Orville Cockings
`Counsel for Sony Electronics Inc.
`
`
`
`Orville R. Cockings
`
`

`

`ocockings@lernerdavid.com
`908-518-6397 Direct.
`
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