Case 1:20-cv-12193-RGS Document 1 Filed 12/10/20 Page 1 of 10
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MASSACHUSETTS
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`Civil Action No. __________________
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`DEMAND FOR JURY TRIAL
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`BOSE CORPORATION,
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`v.
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`KOSS CORPORATION,
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`Plaintiff,
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`Defendant.
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`COMPLAINT FOR DECLARATORY JUDGMENT OF
`PATENT NONINFRINGEMENT
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`Plaintiff Bose Corporation (“Bose”) brings this action for declaratory judgment of patent
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`noninfringement against Koss Corporation (“Koss” or “Defendant”) and alleges as follows:
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`NATURE OF ACTION
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`1.
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`This is an action arising under the Declaratory Judgment Act, 28 U.S.C. §§ 2201
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`and 2202, and the patent laws of the United States, 35 U.S.C. § 1 et seq. Bose brings this action
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`for a declaration that it does not infringe any claim of U.S. Patent Nos. 10,206,025 (“the ’025
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`patent”), 10,368,155 (“the ’155 patent”), or 10,469,934 (“the’934 patent”) (collectively “the
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`Asserted Patents”).
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`PARTIES
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`2.
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`Bose Corporation is a Delaware corporation with its principal place of business at
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`100 The Mountain Road, Framingham, Massachusetts 01701.
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`3.
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`On information and belief, Koss Corporation is a Delaware corporation with its
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`principal place of business at 4129 North Port Washington Avenue, Milwaukee, Wisconsin
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`53212.
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MASSACHUSETTS
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`
`
`
`Civil Action No. __________________
`
`
`DEMAND FOR JURY TRIAL
`
`
`
`
`BOSE CORPORATION,
`
`
`
`v.
`
`KOSS CORPORATION,
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`
`
`
`
`
`
`
`Plaintiff,
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`Defendant.
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`COMPLAINT FOR DECLARATORY JUDGMENT OF
`PATENT NONINFRINGEMENT
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`Plaintiff Bose Corporation (“Bose”) brings this action for declaratory judgment of patent
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`noninfringement against Koss Corporation (“Koss” or “Defendant”) and alleges as follows:
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`NATURE OF ACTION
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`1.
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`This is an action arising under the Declaratory Judgment Act, 28 U.S.C. §§ 2201
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`and 2202, and the patent laws of the United States, 35 U.S.C. § 1 et seq. Bose brings this action
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`for a declaration that it does not infringe any claim of U.S. Patent Nos. 10,206,025 (“the ’025
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`patent”), 10,368,155 (“the ’155 patent”), or 10,469,934 (“the’934 patent”) (collectively “the
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`Asserted Patents”).
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`PARTIES
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`2.
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`Bose Corporation is a Delaware corporation with its principal place of business at
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`100 The Mountain Road, Framingham, Massachusetts 01701.
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`3.
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`On information and belief, Koss Corporation is a Delaware corporation with its
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`principal place of business at 4129 North Port Washington Avenue, Milwaukee, Wisconsin
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`53212.
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`Case 1:20-cv-12193-RGS Document 1 Filed 12/10/20 Page 2 of 10
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`JURISDICTION AND VENUE
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`4.
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`This Court has subject matter jurisdiction over the declaratory judgment claims
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`presented in this action pursuant to 28 U.S.C. §§ 1331 and 1338 because these claims arise under
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`the patent laws of the United States, 35 U.S.C. § 1, et seq., and under the Declaratory Judgment
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`Act, 28 U.S.C. §§ 2201 and 2202.
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`5.
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`On July 22, 2020, Koss filed a complaint against Bose in the Western District of
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`Texas (“the Texas Complaint” in “the Texas Litigation”) alleging that certain Bose SoundSport,
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`700, and QC 35 wireless headphone products (collectively, the “Accused Products”) infringe the
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`Asserted Patents.
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`6.
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`Venue is improper in the Western District of Texas because Bose is not resident
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`in that district and Bose lacks a regular and established place of business in that district.
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`7.
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`Bose intends to move to dismiss (or transfer) the Texas Litigation on the ground
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`that venue is improper in the Western District of Texas.
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`8.
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`Prior to filing the Texas Complaint, Koss sent to Bose a letter alleging that Bose
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`infringed the Asserted Patents. Koss sent the letter on July 9, 2020 and attached a copy of the
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`letter as Exhibit G to the Texas Complaint.
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`9.
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`Koss’s counsel sent copies of the July 9, 2020 letter to (i) Bose’s Registered
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`Agent in Boston, Massachusetts and (ii) Bose’s Chief Intellectual Property Counsel in
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`Framingham, Massachusetts. A copy of the July 9, 2020 letter is attached hereto as Exhibit A.
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`10.
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`In the July 9, 2020 letter, Koss accused Bose of infringing “one or more claim” of
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`the Asserted Patents. Koss attached claim charts to the letter that Koss alleged show “the
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`manner in which the aforementioned products infringe [the Asserted Patents].”
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`Case 1:20-cv-12193-RGS Document 1 Filed 12/10/20 Page 3 of 10
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`11.
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`In the July 9, 2020 letter, Koss demanded that Bose (i) stop selling the products
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`accused of infringement, (ii) promptly meet with Koss to discuss patent license terms, and (iii)
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`provide Koss with sales information regarding the Accused Products.
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`12.
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`Prior to Koss serving the Texas Complaint on Bose, Koss and Bose engaged in
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`discussions in an attempt to resolve the dispute.
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`13.
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`As part of that discussion process, Koss and Bose entered into a Non-Disclosure
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`Agreement (“NDA”) to facilitate the sharing of confidential information.
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`14.
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`15.
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`The NDA is subject to the laws of the Commonwealth of Massachusetts.
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`Bose shared with Koss, pursuant to the NDA, confidential sales information that
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`originated from Bose’s headquarters in Framingham, Massachusetts.
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`16.
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`The July 9, 2020 letter, the Texas Complaint, and the negotiations between Koss
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`and Bose with respect to alleged infringement by Bose, individually and collectively demonstrate
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`that an immediate, substantial, and justiciable controversy exists between Bose and Koss
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`regarding Bose’s alleged infringement of the Asserted Patents. Accordingly, declaratory
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`judgment jurisdiction exists over the subject matter set forth in this complaint.
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`17.
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`This Court has personal jurisdiction over Koss in this action. Koss regularly
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`transacts business in this District. Koss derives substantial revenue from products and/or
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`services provided in this District and has purposely established substantial, systematic and
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`continuous contacts within this District, including distribution and sale of products within this
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`District through, among other channels, retailers, distributors, the internet, and direct mail
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`catalogs. For example, in the Texas Complaint, Koss alleged that its products “are sold at
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`various retail chains throughout the United States and the world, including Walmart stores and
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`other large brick-and-mortar establishments.”
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`Case 1:20-cv-12193-RGS Document 1 Filed 12/10/20 Page 4 of 10
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`18.
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`As detailed above, Koss also sent the July 9, 2020 letter to Bose in this District
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`alleging infringement, attaching claim charts and inviting Bose to negotiate a license, then
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`followed up by engaging in negotiations, email communications and discussions with Bose in an
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`effort to secure a payment from Bose. Bose’s claims in this declaratory judgment complaint
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`arise out of these activities by Koss within this District and relate to products designed and
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`developed in this District.
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`19.
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`Venue is proper in this judicial district under 28 U.S.C. § 1391(b) because a
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`substantial part of the events giving rise to the claims at issue occurred in Massachusetts. Bose
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`resides in Massachusetts. Bose designed the Accused Products in Massachusetts and sells the
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`Accused Products in Massachusetts. Further, as discussed above, Koss’s infringement threat
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`letter was sent to Bose in Massachusetts and the discussions between Koss and Bose involved
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`provision by Bose of confidential information from its headquarters in Massachusetts.
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`BOSE’S INNOVATIVE PRODUCTS
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`20.
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` Bose is a leading designer and manufacturer of audio equipment, including
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`speakers, headphones, and wearable devices. Since its founding in 1964, Bose has continually
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`invested in research and development to become a worldwide leader in audio and
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`communication products for home, professional, and aviation use. These investments in
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`groundbreaking technologies have allowed Bose to be the first to bring advanced technologies to
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`market, such as launching one of the first commercial active noise cancelling headsets. Bose has
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`been awarded over 1,700 United States patents as a result of this culture of innovation.
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`Case 1:20-cv-12193-RGS Document 1 Filed 12/10/20 Page 5 of 10
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`21.
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`The SoundSport, QuietComfort 35, and 700 lines of wireless headphones are
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`among the pioneering products created as a result of Bose’s efforts. The SoundSport wireless
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`headphones are earbuds designed to be comfortable and stable within a user’s ear during exercise
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`while protecting the sensitive electronic components from damage from sweat or inclement
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`weather. The QuietComfort 35 and 700 headphones provide premium sound while utilizing
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`Bose’s renowned active noise cancellation technology in a comfortable ergonomic design. All
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`three products utilize Bluetooth to wirelessly connect with an audio source such as a smartphone.
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`PATENTS
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`22.
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`The’025 patent is titled “System with Wireless Earphones.” The ’025 patent
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`names as inventors Michael J. Koss, Michael J. Pelland, Michael Sagan, Steven R. Reckamp,
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`Gregory J. Hallingstad, Jeffery K. Bovee, and Morgan J. Lowery. A true and correct copy of the
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`’025 patent is attached as Exhibit B.
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`23.
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`The assignee of the ’025 patent identified on the patent’s face is Koss. Koss
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`claims to be the current owner of the ’025 patent.
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`24.
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`The ’155 patent is titled “System with Wireless Earphones.” The ’155 patent
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`names as inventors Michael J. Koss, Michael J. Pelland, Michael Sagan, Steven R. Reckamp,
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`Gregory J. Hallingstad, Jeffery K. Bovee, and Morgan J. Lowery. A true and correct copy of the
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`’155 patent is attached as Exhibit C.
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`25.
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`The assignee of the ’155 patent identified on the patent’s face is Koss. Koss
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`claims to be the current owner of the ’155 patent.
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`26.
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`The ’934 patent is titled “System with Wireless Earphones.” The ’934 patent
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`names as inventors Michael J. Koss, Michael J. Pelland, Michael Sagan, Steven R. Reckamp,
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`Gregory J. Hallingstad, Jeffery K. Bovee, and Morgan J. Lowery. A true and correct copy of the
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`’934 patent is attached as Exhibit D.
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`Case 1:20-cv-12193-RGS Document 1 Filed 12/10/20 Page 6 of 10
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`27.
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`The assignee of the ’934 patent identified on the patent’s face is Koss. Koss
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`claims to be the current owner of the ’934 patent.
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`CLAIMS FOR RELIEF
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`COUNT I
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`Declaratory Judgment of Noninfringement of U.S. Patent No. 10,206,025
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`28.
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`29.
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`30.
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`The foregoing paragraphs are incorporated herein by reference.
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`The Accused Products do not infringe any claim of the ’025 patent.
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`For example and without limitation, the Accused Products do not practice the
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`limitation of claim 1 requiring that the processor “is for, upon activation of a user-control of the
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`headphone assembly, initiating transmission of a request to the remote, network-connected
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`server.” Rather, the Accused Products only communicate with a local device.
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`31.
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`Because claims 2-56 of the ’025 patent depend from claim 1, the Accused
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`Products do not infringe these claims for at least the same reasons they do not infringe claim 1.
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`32.
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`As set forth above, an actual controversy exists between Bose and Koss with
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`respect to the ’025 patent, and this controversy is likely to continue. Accordingly, Bose desires a
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`judicial determination and declaration of the respective rights and duties of the parties with
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`respect to the ’025 patent.
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`COUNT II
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`Declaratory Judgment of Noninfringement of U.S. Patent No. 10,368,155
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`33.
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`34.
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`The foregoing paragraphs are incorporated herein by reference.
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`The Accused Products do not infringe any claim of the ’155 patent.
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`Case 1:20-cv-12193-RGS Document 1 Filed 12/10/20 Page 7 of 10
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`35.
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`For example and without limitation, the Accused Products do not practice the
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`limitation of claim 1 requiring that the headphone assembly be “configured, with the processor,
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`to transition automatically from playing digital audio content received wirelessly by the
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`headphone assembly via a first wireless network to playing digital audio content received
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`wirelessly by the headphone assembly via a second wireless network.” The Accused Products
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`do not transition automatically from a first wireless network to a second wireless network.
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`36.
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`Because claims 2-14 of the ’155 patent depend from claim 1, the Accused
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`Products do not infringe these claims for at least the same reasons they do not infringe claim 1.
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`37.
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`As set forth above, an actual controversy exists between Bose and Koss with
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`respect to the ’155 patent, and this controversy is likely to continue. Accordingly, Bose desires a
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`judicial determination and declaration of the respective rights and duties of the parties with
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`respect to the ’155 patent.
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`COUNT III
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`Declaratory Judgment of Noninfringement of U.S. Patent No. 10,469,934
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`38.
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`39.
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`40.
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`The foregoing paragraphs are incorporated herein by reference.
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`The Accused Products do not infringe any claim of the ’934 patent.
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`For example and without limitation, the Accused Products do not practice the
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`limitation of claims 1 and 58 requiring that the a headphone assembly comprise a processor
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`“wherein the processor is configured to, upon activation of a user-control of the headphone
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`assembly, initiate transmission of a request to a remote, network-connected server that is in
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`wireless communication with the mobile, digital audio player.” Rather, the Accused Products
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`only communicate with a local device.
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`Case 1:20-cv-12193-RGS Document 1 Filed 12/10/20 Page 8 of 10
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`41.
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`Because claims 2-57 of the ’934 patent depend from claim 1, and because claims
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`59-62 of the ’934 patent depend from claim 58, the Accused Products do not infringe these
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`claims for at least the same reasons they do not infringe claims 1 or 58.
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`42.
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`As set forth above, an actual controversy exists between Bose and Koss with
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`respect to the ’934 patent, and this controversy is likely to continue. Accordingly, Bose desires a
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`judicial determination and declaration of the respective rights and duties of the parties with
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`respect to the ’934 patent.
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`DEMAND FOR RELIEF
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`WHEREFORE, Bose prays that judgment be entered in its favor and requests:
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`(a)
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`A judgment and declaration that Bose has not infringed and does not infringe
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`literally or under the doctrine of equivalents, in any manner any claim of the Asserted Patents,
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`directly, contributorily, or by inducement, and has not otherwise infringed or violated any rights
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`of Koss or Koss’s affiliates, subsidiaries, assigns, employees, or agents;
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`(b)
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`An injunction preventing Koss and its affiliates, subsidiaries, assigns, employees,
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`agents, and/or anyone acting in privity or concert with Koss from charging infringement or
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`instituting any legal action for infringement of the Asserted Patents against Bose or anyone
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`acting in privity with Bose, including the divisions, successors, assigns, agents, suppliers,
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`manufacturers, contractors, and customers of Bose;
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`(c)
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`A judgment and declaration that this is an exceptional case within the meaning of
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`35 U.S.C. § 285 in favor of Bose, entitling Bose to an award of its reasonable attorneys’ fees,
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`expenses, and costs in this action;
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`(d)
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`An award to Bose of its costs and reasonable expenses to the fullest extent
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`permitted by law; and
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`(e)
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`An award of any other remedy or relief as the Court may deem just and proper.
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`WOLF, GREENFIELD & SACKS, P.C.
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`
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`
`/Michael N. Rader/
`By:
`Michael N. Rader (BBO No. 646990)
`Daniel M. Huttle (pro hac vice application to be filed)
`mrader@wolfgreenfield.com
`dhuttle@wolfgreenfield.com
`WOLF, GREENFIELD & SACKS, P.C.
`605 Third Avenue
`New York, NY 10158
`Telephone: (212) 697-7890
`Facsimile: (617) 646-8646
`
`Nathan R. Speed (BBO No. 670249)
`nspeed@wolfgreenfield.com
`WOLF, GREENFIELD & SACKS, P.C.
`600 Atlantic Avenue
`Boston, MA 02210
`Telephone: (617) 646-8000
`Facsimile: (617) 646-8646
`
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`Case 1:20-cv-12193-RGS Document 1 Filed 12/10/20 Page 9 of 10
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`DEMAND FOR JURY TRIAL
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`Bose demands a trial by jury on all issues so triable.
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`Dated: December 10, 2020
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`Attorneys for Plaintiff Bose Corporation
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`Case 1:20-cv-12193-RGS Document 1 Filed 12/10/20 Page 10 of 10
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`CERTIFICATE OF SERVICE
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`I certify that this document is being filed through the Court’s electronic filing system,
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`which serves counsel for other parties who are registered participants as identified on the Notice
`of Electronic Filing (NEF). Any counsel for other parties who are not registered participants are
`being served by first class mail on the date of electronic filing.
`
`
`/Michael N. Rader/
`Michael N. Rader
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