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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`KOSS CORPORATION,
`Patent Owner.
`
`_____________________
`Case IPR2021-00255
`Patent 10,298,451
`_____________________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`504204022.7
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`
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`Case IPR2021-00255
`Patent Owner’s Preliminary Response
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`TABLE OF CONTENTS
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`
`Page
`
`
`INTRODUCTION ......................................................................................... 1
`I.
`BACKGROUND ........................................................................................... 2
`II.
`III. THE BOARD SHOULD EXERCISE ITS DISCRETION AND DENY
`INSTITUTION FOR ALL GROUNDS PURSUANT TO 35 U.S.C.
`§ 314 ............................................................................................................... 4
`A.
`Factor 1: The District Court Has Not Issued a Stay ............................ 5
`B.
`Factor 2: Proximity of the Scheduled Trial Date to the Board’s
`Statutory Deadline for Written Decision ............................................. 8
`Factor 3: The Parties and Court Will Have Invested Substantial
`Resources in the Texas Litigation Prior to the Institution Decision .. 12
`Factor 4: There is Potentially Significant Overlap Between Issues
`Raised in the Petition and the Texas Litigation ................................. 14
`Factor 5: Petitioner is Defendant in the Texas Litigation .................. 16
`Factor 6: Other Considerations That Influence the Board’s
`Exercise of Discretion Weigh in Favor of Denying Institution ......... 17
`IV. THE PETITION FAILS TO ESTABLISH A REASONABLE
`LIKELIHOOD THAT THE CHALLENGED CLAIMS WOULD HAVE
`BEEN OBVIOUS ........................................................................................ 18
`A.
`The Legal Framework for Assessing Obviousness ........................... 19
`B.
`The Petition Does Not Establish a Reasonable Likelihood That the
`Challenged Claims Would Have Been Obvious ................................ 21
`1.
`The Petition Does Not Identify the Differences Between the
`Claimed Subject Matter and the Cited References .................. 21
`
`C.
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`D.
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`E.
`F.
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`2.
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`The Petition Does Not Articulate an Explicit Rationale and
`Meaningful Explanation for Combining Brown and
`Scherzer ................................................................................... 24
`The Examples Demonstrating Hypothetical Applications of
`the Proposed Combination are Hindsight Reconstructions
`Based on the Claimed Subject Matter ..................................... 31
`The Petition’s Obviousness Analysis Places an Undue
`Burden on the Board ................................................................ 35
`CONCLUSION ............................................................................................ 36
`
`3.
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`4.
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`
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`V.
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`TABLE OF AUTHORITIES
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` Page(s)
`
`Cases
`Activevideo Networks, Inc. v. Verizon Commc'ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) .......................................................................... 30
`Adaptics Ltd. v. Perfect Co.,
`IPR 2018-01596 ........................................................................................... 24, 35
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (PTAB March 20, 2020) ................................... passim
`Cisco Sys., Inc. v. Ramot at Tel Aviv Univ. Ltd.,
`IPR2020-00122, Paper 15 (PTAB May 15, 2020) ............................................. 17
`DynamicDrinkware, LLC v. Nat'l Graphics, Inc.,
`800 F.3d 1375 (Fed. Cir. 2015) .......................................................................... 21
`Google Inc. v. Everymd.com LLC,
`IPR2014-00347, Paper 9 (PTAB May 22, 2014) ................................... 21, 35, 36
`Google LLC v. Personalized Media Commc’ns, LLC,
`IPR2020-00724, Paper 19 (PTAB Aug. 31, 2020) .............................................. 5
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ........................................................................................ passim
`Harmonic Inc. v. Avid Tech.,
`815 F.3d 1356 (Fed. Cir. 2016) ...................................................................... 4, 21
`Intel Corp. v. VLSI Tech. LLC,
`IPR2019-01192, Paper 15 (PTAB Jan. 9, 2020) .................................................. 4
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) .......................................................................... 35
`Johns Manville Corp. v. Knauf Insulation, Inc.,
`IPR2018-00827, Paper 9 (PTAB October 16, 2018) ......................................... 26
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`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ............................................................................ 20
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .................................................................................... passim
`Micron Tech., Inc. v. Godo Kaisha IP Bridge 1,
`IPR2020-01008, Paper 10 (PTAB Dec. 7, 2020) ................................................. 9
`Mintz v. Dietz & Watson, Inc.,
`679 F.3d 1372 (Fed. Cir. 2012) .................................................................... 20, 34
`Nautilus Hyosung Inc. v. Diebold, Inc.,
`IPR2016-00633, Paper 9 (PTAB Aug. 22, 2016) .............................................. 34
`NHK Spring Co. v. Intri-Plex Techs., Inc.,
`IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) ................................................ 1
`PersonalWeb Tech. LLC v. Apple, Inc.,
`848 F.3d 987 (Fed. Cir. 2017) ............................................................................ 26
`Samsung Elecs. Co., Ltd. v. Ancora Techs., Inc.,
`IPR2020-01184, Paper 11 (PTAB Jan. 5, 2021) ......................................... passim
`Sand Revolution v. Cont’l Intermodal Grp.-Trucking LLC,
`IPR2019-01393, Paper 24 (PTAB June 16, 2020) ...................................... passim
`In re Schweickert,
`676 F. App’x. 988 (Fed. Cir. 2017) .................................................................... 34
`Securus Techs., Inc. v. Global Tel*Link Corp.,
`701 F. App’x 971 (Fed. Cir. 2017) ..................................................................... 25
`Sotera Wireless, Inc. v. Masimo Corp.,
`IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (Precedential) ……………...15
`
`
`Verizon Bus. Network Servs. LLC v. Huawei Techs. Co.,
`IPR2020-01292, Paper 13 (PTAB Jan. 25, 2021) .................................. 13, 14, 17
`Western Digital Corp. v. Kuster,
`IPR2020-01391, Paper 10 (PTAB Feb. 16, 2021) ............................................. 10
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`Wilson Elec., LLC. v. Cellphone-Mate, Inc.,
`IPR2018-01778, Paper 10 (PTAB April 23, 2019) ............................................ 20
`Statutes
`35 U.S.C. § 103 ......................................................................................... 2, 3, 15, 18
`35 U.S.C. § 312 ................................................................................................. 21, 36
`35 U.S.C. § 314 ................................................................................................ passim
`35 U.S.C. § 316 ............................................................................................... 4, 8, 14
`Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(September 16, 2011), §3(n)(1) ............................................................................ 3
`Other Authorities
`37 C.F.R. § 42.6(a)(3) ............................................................................................. 30
`37 C.F.R. § 42.107(a) ................................................................................................ 1
`37 C.F.R. § 42.108(c) ................................................................................................ 4
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`EXHIBIT LISTING
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`DESCRIPTION
`
`Sample Order Governing Proceedings - Patent Case, November
`5, 2020, Judge Albright, United States District Court for the
`Western District of Texas, Waco Division
`
`EXHIBIT NO.
`
`KOSS-2001
`
`KOSS-2002 Markman Hearing, MV3 Partners, LLC v. Roku, Inc., Case No.
`W-18-cv-308, Dkt. No. 83 (W. D. Tex. July 19, 2019)
`
`KOSS-2003 E. Cunningham et al., “Fauci predicts vaccine ‘open season’ by
`April,”
`Post,
`Feb.
`11,
`2021
`Washington
`(www.washingtonpost.com/nation/2021/02/11/coronavirus-
`covid-live-updates-us/) (last accessed February 25, 2021)
`
`KOSS-2004 Docket Report, Koss Corp. v. Apple Inc., Case No. 6:20-cv-
`00665-ADA (W.D. Tex.) (as of March 2, 2021)
`
`KOSS-2005 Complaint, Apple Inc. v. Koss Corporation, Case No. 5:20-cv-
`05504, Dkt. No. 1 (N.D. Cal. Aug. 7, 2020)
`
`KOSS-2006 Notice of Trial Procedures, VLSI Tech. LLC v. Intel Corp., Case
`No. 6:21-cv-00057-ADA, Dkt. No. 421 (W.D. Tex. February 10,
`2021)
`
`KOSS-2007 R. Thebault, “Fauci says U.S. vaccinations to increase in spring
`as Biden administration nears dose goal,” Washington Post, Feb.
`7, 2021
` (www.washingtonpost.com/health/2021/02/07/fauci-
`vaccination-increase/) (last accessed February 25, 2021)
`
`KOSS-2008 K. Buehler, “WDTX Judge Albright Touts Revamped
`Courtroom Tech,” IPLAW360, February 26, 2021.
`
`KOSS-2009 Email dated March 8, 2021 from Michael Pieja to Darlene
`Ghavimi, including attachment that is letter dated March 6, 2021
`Michael Pieja to Darlene Ghavimi
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`‐ vi -
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`I.
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`Case IPR2021-00255
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`INTRODUCTION
`Patent Owner, Koss Corporation (“Koss”), submits this Patent Owner
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`Preliminary Response (“POPR”) pursuant to 37 C.F.R. § 42.107(a) to the Inter
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`Partes Review (“IPR”) petition (“Petition”) filed by Apple Inc. (“Petitioner”) for
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`claims 1-21 (“Challenged Claims”) of U.S. Patent 10,298,451 (“’451 Patent,”
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`APPLE-1001).
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`The Board should deny institution for several reasons. First, the IPR would
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`demand an untimely and inefficient proceeding that would effectively “second
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`guess” the result of a jury trial in concurrent litigation. See NHK Spring Co. v. Intri-
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`Plex Techs., Inc., IPR2018-00752, Paper 8 at 11-21 (PTAB Sept. 12, 2018)
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`(Precedential); Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 2-3 (PTAB
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`March 20, 2020) (Precedential). The ’451 Patent is asserted against Petitioner in co-
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`pending litigation in the Western District of Texas, Koss Corp. v. Apple Inc., Case
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`No. 6:20-cv-00665-ADA (“Texas Litigation”). The trial in this matter is scheduled
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`to commence in April 2022, approximately 1.5 months before the Final Written
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`Decision (“FWD”) would be expected if the IPR is instituted. The Board should
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`exercise its discretion under § 314(a) to deny institution in the interests of efficiency
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`and fairness.
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`Second, the Board should deny institution under § 314(a) because the Petition
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`fails to establish a reasonable likelihood that the Challenged Claims would have been
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`‐ 1 ‐
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`obvious under 35 U.S.C. § 103. The Petition does not follow the established
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`framework for assessing obviousness under Graham v. John Deere Co., 383 U.S. 1,
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`17-18 (1966). For example, the Petition does not address Graham’s second factor
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`by failing to identify the differences between the claimed subject matter and the cited
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`references. This failure infects the rest of the Petition’s obviousness analysis. The
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`Petition also relies on conclusory remarks to support the combination of references
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`for Ground 1 instead of articulating an explicit rationale for combining the
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`references, as required by KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007).
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`Moreover, the hypothetical examples described in the Petition demonstrate
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`impermissible hindsight bias that the analytical framework of Graham, if properly
`
`followed, strives to protect against. As a result of these shortcomings, there is no
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`reasonable likelihood that the Petitioner will prevail with respect to at least one
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`challenged claim under 35 U.S.C. § 314(a).
`
`II. BACKGROUND
`The ’451 Patent describes systems that allow a user to configure “a wireless
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`device,” such as earphones or a speaker, to connect to an infrastructure wireless
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`network, e.g., a Wi-Fi network provided by a wireless accessing point, without
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`physically connecting the wireless device to a computer in order to configure the
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`wireless device to connect to the infrastructure wireless network. APPLE-1001, col.
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`1:43-47; col. 2:60-67 (different types of “wireless devices”); col. 3:40-44
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`‐ 2 ‐
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`(infrastructure wireless network).
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`The ’451 Patent has an effective filing date of March 15, 2013. Id., p.2; Pet.
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`at 2. Thus, the pre-AIA versions of §§ 102-103 apply. Leahy-Smith America
`
`Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (September 16, 2011) (“AIA”),
`
`§3(n)(1).
`
`The Petition asserts five grounds for the Challenged Claims:
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` Ground 1A: Claims 1, 6, 11-13, and 15-20 would have been obvious
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`over Brown (APPLE-1004) and Scherzer (APPLE-1005);
`
` Ground 1B: Claims 2, 7-10, and 21 would have been obvious over
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`Brown, Scherzer, and Baxter (APPLE-1008);
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` Ground 1C: Claims 3 and 4 would have been obvious over Brown,
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`Scherzer, and Drader (APPLE-1009);
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` Ground 1D: Claim 5 would have been obvious over Brown, Scherzer,
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`and Ramey (APPLE-1010); and
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` Ground 1E: Claim 14 would have been obvious over Brown, Scherzer,
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`and Gupta (APPLE-1011).
`
` Koss does not concede that these references are in fact prior art to the ‘451
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`Patent. As the ’451 Patent is a pre-AIA patent, some prior art Petitioner relies upon,
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`in particular Brown (APPLE-1004), is not actually prior art in view of Koss’s earlier
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`invention. If the Board finds this Petition to be an efficient use of the Board’s
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`resources (in spite of the co-pending district court action), Koss reserves its right to
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`establish earlier conception such that Brown will not be prior art to any claim of the
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`’451 Patent.
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`III. THE BOARD SHOULD EXERCISE ITS DISCRETION AND DENY
`INSTITUTION FOR ALL GROUNDS PURSUANT TO 35 U.S.C. § 314
`The Board “is permitted, but never compelled, to institute an IPR proceeding.”
`
`Harmonic Inc. v. Avid Tech., 815 F.3d 1356, 1367 (Fed. Cir. 2016). The discretion
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`to deny institution is statutorily delegated to the Board and memorialized in the Code
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`of Federal Regulations. See 35 U.S.C. § 314(b) (“Director shall determine whether
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`to institute an inter partes review ….”); 37 C.F.R. § 42.108(c) (“Inter partes review
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`shall not be instituted unless the Board decides that the information presented in the
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`petition demonstrates that there is a reasonable likelihood that at least one of the
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`claims challenged in the petition is unpatentable.”). The Board may apply this
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`discretion in consideration of “the integrity of the patent system, [and] the efficient
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`administration of the Office ….” 35 U.S.C. § 316(b). The Board has denied
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`institution “to minimize the duplication of work by two tribunals to resolve the same
`
`issue.” Intel Corp. v. VLSI Tech. LLC, IPR2019-01192, Paper 15 at 11 (PTAB Jan.
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`9, 2020).
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`In Fintiv, the Board outlined six factors that may inform its decision “to deny
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`institution in view of an earlier trial date in [a] parallel proceeding.” IPR2020-
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`00019, Paper 11 at 6 (PTAB Mar. 20, 2020). The Board may weigh and consider
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`the holistic effect of each of the following factors: (1) whether the court granted a
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`stay or evidence exists that one may be granted if a proceeding is instituted; (2)
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`proximity of the court’s trial date to the Board’s projected statutory deadline for a
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`final written decision; (3) investment in the parallel proceeding by the court and the
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`parties; (4) overlap between issues raised in the petition and in the parallel
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`proceeding; (5) whether the petitioner and the defendant in the parallel proceeding
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`are the same party; and (6) other circumstances that impact the Board’s exercise of
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`discretion, including the merits (collectively, “the Fintiv factors”). Id. at 5-15.
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`The Fintiv factors collectively justify denial of the Petition because the ’451
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`Patent is involved in the co-pending Texas Litigation. Denying institution of the
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`Petition is consistent with recent Board decisions, preserves the integrity of the
`
`patent system, promotes the efficient administration of Office resources, and
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`minimizes duplicative work by two tribunals. See id.; Samsung Elecs. Co., Ltd. v.
`
`Ancora Techs., Inc., IPR2020-01184, Paper 11 at 18 (PTAB Jan. 5, 2021); Google
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`LLC v. Personalized Media Commc’ns, LLC, IPR2020-00724, Paper 19 at 6, 11
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`(PTAB Aug. 31, 2020).
`
`A.
`Factor 1: The District Court Has Not Issued a Stay
`Although the granting of a stay in a parallel proceeding has weighed against
`
`discretionary denial, the U.S. District Court of Western District of Texas has neither
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`granted a stay nor has it indicated that it would grant a stay in the Texas Litigation
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`if the IPR is instituted. In neither the Petition nor the Texas Litigation has Petitioner
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`indicated that it would request a stay of the Texas Litigation pending the IPR if the
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`Petition is instituted. Instead, Petitioner merely speculates that a stay of the Texas
`
`Litigation would be “appropriate.” Pet. at 10. In a recent decision denying
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`institution, the Board was underwhelmed by a petitioner’s expressed intention to
`
`seek a stay if institution was granted. Samsung, IPR2020-01184, Paper 11 at 8, 9
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`(petitioner’s “assertion that it ‘intends to seek a stay if the Board institutes trial’ is
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`not sufficient evidence that a stay will likely be granted”). Petitioner here, however,
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`does not even rise to this underwhelming level by, instead of stating that it will seek
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`a stay, merely suggesting that a stay would be “appropriate.”
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`Koss acknowledges that the Board is wary of predicting district court behavior
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`“because the court may determine whether or not to stay any individual case,
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`including the related one, based on a variety of circumstances and facts beyond [its]
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`control and to which the Board is not privy.” Sand Revolution v. Cont’l Intermodal
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`Grp.-Trucking LLC, IPR2019-01393, Paper 24 at 7 (PTAB June 16, 2020)
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`(Informative). However, District Court Judge Alan Albright is presiding over the
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`Texas Litigation and, according to his November 5, 2020 Sample Order Governing
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`Proceedings – Patent Cases, he expects that “[a]fter the trial date is set, the Court
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`will not move the trial date except in extreme situations.” KOSS-2001, 6. In the
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`Texas Litigation, the jury trial is scheduled to commence April 18, 2022 (APPLE-
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`1016, 4) and there is no evidence to suggest it will not occur as scheduled.
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`Furthermore, Judge Albright denied a motion to stay based on an IPR in a case
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`similarly situated to the Texas Litigation. In MV3 Partners, LLC v. Roku, Inc., Judge
`
`Albright denied a motion to stay when the IPR was instituted after claim construction
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`briefing and shortly before the scheduled Markman hearing. See KOSS-2002, 53
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`(“I’m not going to stay the case based on the IPR institution.”). In the Texas
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`Litigation, the Opening Claim Construction Brief has been filed; the Responsive
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`Claim Construction Brief is due March 12, 2021 (shortly after filing of this POPR);
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`and the Markman hearing is scheduled for April 22, 2021, more than a month prior
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`to the expected institution decision date. APPLE-1016, 3. Any institution decision
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`in this proceeding would be even later into the case than in MV3, further supporting
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`the likelihood that Judge Albright will not stay the Texas Litigation if the IPR is
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`instituted. Even if the Board prefers not to predict district court behavior, Judge
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`Albright expressed in his Standing Orders and decisions under similar circumstances
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`that it is unlikely that a motion to stay would be granted if the Petition is instituted.
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`KOSS-2001, 6; KOSS-2002, 53.
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`Accordingly, the first Fintiv factor weighs strongly in favor of denying
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`institution.
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`B.
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`Factor 2: Proximity of the Scheduled Trial Date to the Board’s
`Statutory Deadline for Written Decision
`“If the court’s trial date is earlier than the projected statutory deadline [for a
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`FWD], the Board generally has weighed this fact in favor of exercising authority to
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`deny institution ….” Fintiv, IPR2020-00019, Paper 11 at 9. If the Board exercises
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`its discretion to institute the present Petition, the institution decision will likely issue
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`in early June 2021 (see 35 U.S.C. § 314(b)(1)), and the FWD will issue around early
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`June 2022. See 35 U.S.C. § 316(a)(11). Thus, the FWD will issue about 1.5 months
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`after the jury trial in the Texas Litigation commences on April 18, 2022.
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`Petitioner relies on the Board’s decision in Sand Revolution to assert that a
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`less than two-month gap between the trial and the FWD is insufficient to justify
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`denial. Pet. at 11. The Board, however, has not established a bright line rule for the
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`duration of the gap between the trial and the FWD. Instead the Board in Sand
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`Revolution found that Fintiv factor two “marginally” weighed in favor of not
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`exercising its discretion to deny institution because the litigants had requested, and
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`the district court granted, numerous extensions to the scheduling order such that the
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`scheduled trial date was “uncertain”:
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`For the reasons above, particularly because of the number of times the
`parties have jointly moved for and the district court agreed to extend
`the scheduling order dates, the inclusion of the qualifier “or as
`available” for each calendared trial date, that the currently scheduled
`trial date is in relatively close proximity to the expected final decision
`in this matter, and the uncertainty that continues to surround the
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`scheduled trial date, we find that this factor weighs marginally in favor
`of not exercising discretion to deny institution under 35 U.S.C.
`§ 314(a).
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`Sand Revolution, Paper 24 at 9-10 (emphasis added).
`
`The Board has stated that proximity between the trial and FWD under Fintiv
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`factor two needs to be considered relative to the specific litigation to properly assess
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`the degree of uncertainty. See Micron Tech., Inc. v. Godo Kaisha IP Bridge 1,
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`IPR2020-01008, Paper 10 at 14 (PTAB Dec. 7, 2020) (“This factor looks at the
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`proximity of the trial date to the date of our final written decision to assess the weight
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`to be accorded a trial date set earlier than the expected final written decision date.”)
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`(emphasis in original).
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`Contrary to the situation in Sand Revolution, in the Texas Litigation the parties
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`have not sought, and the district court has not granted, any extensions to the trial
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`date; nor is there any evidence they will. KOSS-2004 (docket report from Texas
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`Litigation showing absence of any motion for extension of trial). Moreover, nothing
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`in the Texas Litigation indicates, and the Petition fails to raise any evidence, that
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`Judge Albright will deviate from his stated preference that “[a]fter the trial date is
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`set, the Court will not move the trial date except in extreme situations.” KOSS-
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`2001, 6.
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`Petitioner’s reliance on the “McKeown Analysis” (APPLE-1018) to assert
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`that the trial date in the Texas Litigation might slip, Pet. at 11, is misplaced because
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`the author concedes that he is working with a “small data set” for the Western
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`District of Texas, offers no time domain for his analysis, and indicates that COVID-
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`19 is at least partially responsible for the delays. APPLE-1018. The McKeown
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`Analysis also fails to consider the behavior (e.g., motions for extensions) of the
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`parties in litigation, which motivated the Board in Sand Revolution. As the Board
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`noted in Samsung, “evidence regarding other cases (e.g., Chief Judge Gilstrap’s
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`cases in the Eastern District of Texas or other Judge Albright’s cases) does not
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`support Petitioner’s position that the [] trial date for the parallel litigation will be
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`postponed.” IPR2020-01184, Paper 11 at 13. Finally, the McKeown Analysis
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`identifies a relatively small change to the average schedule in the W.D. Texas that
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`occurred during the first two quarters of 2020, which included significant disruptions
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`due to COVID-19. APPLE-1018, 2. There is no evidence that such delays have
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`continued as the present global pandemic progressed or will continue and impact the
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`in-place schedule for the Texas Litigation.
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`Regarding the insinuation that the pandemic imbues uncertainty into trial date
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`for the Texas Litigation, the circumstances in the Texas Litigation are
`
`distinguishable from the Board’s recent decision in Western Digital Corp. v. Kuster,
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`IPR2020-01391, Paper 10 (PTAB Feb. 16, 2021). In Western Digital, the Board
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`relied on an order by Judge Albright that postponed a trial originally scheduled for
`
`February 21, 2021 to mid-April 2021 due to spikes in confirmed cases of COVID-
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`
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`‐ 10 ‐
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`
`
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`19 in Texas, concluding that “the proximity of the trial date to the final decision’s
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`Case IPR2021-00255
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`due date and its uncertainty … would not persuade us to deny institution under Fintiv
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`for the reasons given.” Id. at 10.
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`The effects of the pandemic likely will be less in April 2022 (when the trial in
`
`the Texas Litigation is scheduled to commence) than in February–April 2021 (the
`
`scheduled trial date in Sand Revolution). More people should be vaccinated by April
`
`2022 than under the present circumstances under which Judge Albright granted the
`
`extension in Sand Revolution. Dr. Anthony Fauci, Director of the National Institute
`
`of Allergy and Infectious Diseases, stated that “virtually everybody” will have
`
`access to vaccinations in April 2021, a full year prior to the scheduled trial date in
`
`the Texas Litigation. KOSS-2003; see also KOSS-2007 (quoting Dr. Fauci as saying
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`“things are going to get better as we get from February into March, into April,
`
`because the number of vaccine doses that will be available will increase
`
`substantially”).
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`The rescheduling of a trial scheduled during the peak of the pandemic in
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`February 2021 cannot be reasonably relied upon to predict Judge Albright’s future
`
`behavior, especially regarding a trial scheduled a year after the predicted distribution
`
`of widespread vaccinations, and especially given Judge Albright’s policies and
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`historical behavior. Consistent with his policy “not [to] move the trial date except
`
`in extreme situations,” Judge Albright recently resumed holding jury trials with
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`
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`‐ 11 ‐
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`
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`appropriate precautions. KOSS-2006 (Judge Albright’s trial procedures for trial
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`commencing February 16, 2021); KOSS-2008 (describing trial that started February
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`22, 2021 amid Judge Albright’s “ramped up COVID-19 safety protocols …”).
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`Accordingly, the second Fintiv factor weighs strongly in favor of denying institution.
`
`C.
`
`Factor 3: The Parties and Court Will Have Invested Substantial
`Resources in the Texas Litigation Prior to the Institution Decision
`“[D]istrict court claim construction orders may indicate that the court and
`
`parties have invested sufficient time in the parallel proceeding to favor denial.”
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`Fintiv, IPR2020-00019, Paper 11 at 9-10. The Fintiv analysis also considers “the
`
`amount and type of [all] work already completed” to determine whether “the parallel
`
`proceeding is more advanced ... and instituting would lead to duplicative costs.” Id.
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`at 9-10.
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`In the Texas Litigation, Koss already filed its Opening Claim Construction
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`Brief and Petitioner’s responsive brief is due within one week of this POPR’s filing.
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`KOSS-2004; APPLE-1016. To date, the parties have exchanged preliminary
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`infringement and invalidity contentions, exchanged proposed claim constructions
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`for disputed terms, disclosed extrinsic evidence, and met and conferred to narrow
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`the terms in dispute. Id. By the expected time of the institution decision, the parties
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`will have completed claim construction briefing, submitted a Joint Claim
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`Construction Statement, held the Markman hearing, and commenced fact discovery.
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`‐ 12 ‐
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`Id.
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`Case IPR2021-00255
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`Petitioner’s assertion that “[b]y any objective standard, [it] filed [its] petition
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`at a very early stage of the litigation,” Pet. at 12, overlooks that Petitioner was aware
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`of the ’451 Patent since at least July 2020 (KOSS-2005, ¶1), yet waited several
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`months before filing the Petition.
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`More importantly, the timeliness of the Petition is not determinative under
`
`Fintiv factor three. The determinative factor is the investment of the parties in the
`
`Texas Litigation. See Verizon Bus. Network Servs. LLC v. Huawei Techs. Co.,
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`IPR2020-01292, Paper 13 at 14, 15 (PTAB Jan. 25, 2021) (“[W]e credit Petitioner’s
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`diligence in filing the Petition in this case. Nonetheless, given the investment of the
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`parties and the court in the Parallel Proceeding by the time of the institution decision
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`in this proceeding, we determine this factor weighs in favor of exercising discretion
`
`to deny institution.”).
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`Here, the parties’ investment in the Texas Litigation is substantial. Petitioner
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`served the Petition four months after the initial complaint was served in the Texas
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`Litigation. See KOSS-2004 (Dkt. No. 11, summons returned executed on July 28,
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`2020). Those four months, combined with the approximate six months from the
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`petition date to the institution decision, obligates the parties and court to complete
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`substantial work in the Texas Litigation, including briefing and arguing claim
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`construction, engaging in significant factual discovery efforts, and evaluating
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`‐ 13 ‐
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`infringement and invalidity contentions. In Verizon, the Board found that similar
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`circumstances weighed strongly in favor of the patent owner. Verizon at 14.
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`Accordingly, the third Fintiv factor weighs strongly in favor of discretionary
`
`denial of institution.
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`D.
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`Factor 4: There is Potentially Significant Overlap Between Issues
`Raised in the Petition and the Texas Litigation
`The Petitioner challenges the validity of all of the claims in the ’451 Patent in
`
`both the Petition and the Texas Litigation. Accordingly, Petitioner is requesting the
`
`Board to perform duplicative work to what is currently expected of the district court
`
`in the Texas Litigation. Although the Scheduling Order specifies deadlines for the
`
`litigants to “discuss significantly narrowing the number of claims asserted and prior
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`art references at issue,” both parties must agree to such narrowing and the court may
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`be required to resolve the disputed issues. APPLE-1016, 3-4. The deadline for the
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`second “meet and confer” on narrowing is January 20, 2022. Id. As such, the extent
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`of duplicative effort required by the Board will not be clear until well into the one-
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`year period that is statutorily afforded the Board to issue its final written decision.
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`See 35 U.S.C. § 316(a)(11). Even if the claims for trial in the Texas Litigation are
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`narrowed, the mere existence of non-overlapping claims does not support an
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`assertion that there will be no overlap between issues raised in this Petition and the
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`related litigation. See Samsung, IPR2020-01184, Paper 11 at 20.
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`‐ 14 ‐
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`On Monday, March 8, 2021, three and half months after the Petitioner filed
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`the Petition, and on the due date for this POPR, Petitioner emailed litigation counsel
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`for Koss stipulating that if the Petition is instituted, Petitioner “will not seek
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`resolution within the litigation of
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