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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.
`
`
`IPR2021-00255
`U.S. Patent No. 10,298,451
`
`
`
`PATENT OWNER SUR-REPLY
`
`
`
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`
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`505486889.6
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`IPR2021-00255
`Patent Owner Sur-Reply
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`TABLE OF CONTENTS
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`B.
`
`
`I.
`INTRODUCTION ............................................................................................... 1
`II. THE LIMITED NETWORK ACCESS PROVIDED IN PETITIONER’S
`EXAMPLE SCENARIOS IS INCONSISTENT WITH PETITIONER’S
`BROWN-SCHERZER COMBINATION ........................................................... 3
`A.
`Petitioner’s Brown-Scherzer Combination ................................................ 4
`B.
`Petitioner’s Attempt to Deflect the Problems with the Brown-
`Scherzer Combination is Unpersuasive ...................................................... 6
`III. PETITIONER’S ATTEMPTS TO DISPEL EVIDENCE OF HINDSIGHT
`ARE FACTUALLY AND LEGALLY INSUFFICIENT ................................. 10
`A. Cooperstock’s Direct Testimony Reiterates A Hindsight-Driven
`Approach .................................................................................................. 10
`Petitioner’s New “Predictability” Observations Fail to Address the
`(Alleged) Predictability of the Brown-Scherzer Combination ................. 12
`1.
`First Example Scenario ...................................................................... 14
`2.
`Second Example Scenario .................................................................. 15
`IV. A POSITA WOULD NOT IMPLEMENT PETITIONER’S BROWN-
`SCHERZER COMBINATION ......................................................................... 17
`A.
`Scherzer’s User Contribution Account Functionality is Not
`Optional .................................................................................................... 17
`B. Exclusion of Scherzer’s User Contribution Account Functionality
`Is Not Fair and Equitable .......................................................................... 19
`V. COOPERSTOCK’S TESTIMONY IS INCONSISTENT AND SHOULD NOT
`BE AFFORDED ANY WEIGHT ..................................................................... 20
`VI. PETITIONER’S MISCHARACTERIZATIONS OF PATENT OWNER’S
`ARGUMENTS AND SUPPORTING EVIDENCE ON SCHERZER SHOULD
`BE IGNORED ................................................................................................... 22
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`IPR2021-00255
`Patent Owner Sur-Reply
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`VII. COMMERCIAL SUCCESS OF HOMEPOD PRODUCTS CONFIRMS
`NON-OBVIOUSNESS OF THE CHALLENGED CLAIMS .......................... 24
`A.
`Petitioner Provided No Evidence Refuting the HomePod Products
`Possessing All Elements of the Challenged Claims ................................. 24
`B. Challenged Claims Are Coextensive With HomePod Products .............. 24
`C.
`Patent Owner Showed That Commercial Success of the HomePod
`Products Is a Direct Result of Practicing the Challenged Claims ............ 26
`VIII. CONCLUSION .............................................................................................. 28
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`TABLE OF AUTHORITIES
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`IPR2021-00255
`Patent Owner Sur-Reply
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` Page(s)
`
`Cases
`Chemours Co. v. Daikan Indus., Ltd.,
`4 F.4th 1370 (Fed. Cir. 2021) ............................................................................. 26
`Facebook, Inc. v. Sound View Innovations, LLC,
`IPR2017-01003, Paper 14, 11 (PTAB Sep. 1, 2017) .......................................... 22
`FOX Factory, Inc. v. SRAM LLC,
`944 F.3d 1366 (Fed. Cir. 2019) .............................................................. 24, 25, 26
`Goodyear Tire & Rubber Co. v. Ray-O-Vac Co.,
`321 U.S. 275 (1944) ............................................................................................ 28
`KCJ Corp. v. Kinetic Concepts, Inc.,
`223 F.3d 1351 (Fed. Cir. 2000) .......................................................................... 25
`KSR Int’l Co. v. Teleflex Inc.,
`550 US 398 (2006) .............................................................................................. 13
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) .......................................................................... 11
`In re Nuvasive, Inc.,
`842 F.3d 1376 (Fed. Cir. 2016) .......................................................................... 24
`W.L. Gore & Assoc., Inc. v. Garlock, Inc.,
`721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983) ................................................ 17
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`IPR2021-00255
`Patent Owner Sur-Reply
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`EXHIBIT NO.
`KOSS-2001
`
`EXHIBIT LISTING
`
`DESCRIPTION
`Sample Order Governing Proceedings - Patent Case, November
`5, 2020, Judge Albright, United States District Court for the
`Western District of Texas, Waco Division
`
`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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`IPR2021-00255
`Patent Owner Sur-Reply
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`DESCRIPTION
`EXHIBIT NO.
`KOSS-2010 Claim Construction Order, Koss Corp. v. Apple, Inc., Case No.
`6-20-cv-00665-ADA, Dkt. 83 (W.D. Tex. June 2, 2021)
`
`KOSS-2011 Order Denying Defendant’s Motion to Transfer, Koss Corp. v.
`Apple, Inc., Case No. 6-20-cv-00665-ADA, Dkt. 76 (W.D. Tex.
`April 22, 2021)
`
`KOSS-2012 Order Granting Motion to Transfer, Apple Inc. v. Koss Corp.,
`Case No. 4:20-cv-05504, Dkt. 72 (May 12, 2021)
`
`KOSS-2013
`
`Joint Motion to Consolidate Cases, Koss Corp. v. Apple, Inc.,
`Case No. 6-20-cv-00665-ADA, Dkt. 84 (W.D. Tex. June 8,
`2021)
`
`KOSS-2014
`
`Exhibit 1003 (Declaration of J. Cooperstock) in IPR2021-
`00305
`
`KOSS-2015
`
`Transcript, Deposition of J. Cooperstock, July 28, 2021,
`IPR2021-00255
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`KOSS-2016
`
`KOSS-2017
`
`Press release, June 5, 2017, “HomePod reinvents music in the
`home” (www.apple.com/newsroom/2017/06/homepod-
`reinvents-music-in-the-home/) (accessed August 18, 2021)
`
`Press release, October 13, 2020, “Apple introduces HomePod
`mini: A powerful smart speaker with amazing sound”
`(www.apple.com/newsroom/2020/10/apple-introduces-
`homepod-mini-a-powerful-smart-speaker-with-amazing-
`sound/) (accessed August 18, 2021)
`
`KOSS-2018 G. Rambo, “HomePod set up similar to AirPods, requires
`iCloud Keychain & two-factor auth,” Jan. 24, 2018
`(9to5mac.com/2018/01/24/homepod-setup-process/) (accessed
`August 18, 2021)
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`IPR2021-00255
`Patent Owner Sur-Reply
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`DESCRIPTION
`EXHIBIT NO.
`KOSS-2019 D. Phelan, “Apple Just Cut the Price of HomePod Around the
`World,” April 4, 2019
`(www.forbes.com/sites/davidphelan/2019/04/04/apple-just-cut-
`homepod-price-significantly-around-the-world-
`permanently/?sh=7182caea37c7) (accessed August 18, 2021)
`
`KOSS-2020 D. Curry, “Apple Statistics (2021),” updated August 16, 2021
`(https://www.businessofapps.com/data/apple-statistics/)
`(accessed August 18, 2021)
`
`KOSS-2021 Apple Inc., Form 10-K, fiscal year ended Sept. 26, 2020
`
`KOSS-2022 Declaration by Joseph C. McAlexander III
`
`KOSS-2023
`
`Transcript, Deposition of J. Cooperstock, January 18, 2021,
`IPR2021-00255
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`KOSS-2024 U.S. Patent No. 8,751,648
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`I.
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`Case IPR2021-00255
`Patent Owner Sur-Reply
`
`INTRODUCTION
`Patent Owner submits this Sur-Reply to Petitioner’s Reply (Paper 42,
`
`“Reply”). Petitioner failed to show that claims 1-20 (“Challenged Claims”) in U.S.
`
`Patent No. 10,298,451 (“the ’451 Patent”) are invalid. The Board should confirm
`
`the patentability of the Challenged Claims.
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`
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`The Patent Owner Response (Paper 28, “POR”) enumerated two “options”
`
`regarding
`
`the network access provided via Petitioner’s Brown-Scherzer
`
`combination. POR, 20-22. Per the first option, Scherzer’s account acceptability
`
`functionality is incorporated into the Brown-Scherzer combination, in which case
`
`unrecognized devices are unable to obtain and use Scherzer’s credentials. Id., 20-
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`21. Per the second option, Scherzer’s account acceptability functionality is excluded
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`from the Brown-Scherzer combination resulting in unfettered dissemination of
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`Scherzer’s credentials and network access to Scherzer’s wireless access points
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`(WAPs) by unrecognized devices. Id., 21-22. Petitioner selected the second option
`
`as the basis for its invalidity theory. Reply, 20. Consequently, Scherzer’s system as
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`implemented in Petitioner’s combination does not limit network access to
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`recognized devices and does not track such access. In maintaining this theory,
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`Petitioner assumed inconsistent positions with respect to the actual access provided
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`by the combination to ignore the problems that necessarily result therefrom.
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`Petitioner’s evolving analysis and contradictions highlight the hindsight that has
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`Case IPR2021-00255
`Patent Owner Sur-Reply
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`infected Petitioner’s obviousness analysis from the outset.
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`
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`First, Petitioner relied on arbitrary, contrived limits to network access in its
`
`two example scenarios to dispel concerns about Scherzer’s registered users “los[ing]
`
`control” of their WAPs. POR, 24. However, Petitioner’s limits are incompatible
`
`with Petitioner’s Brown-Scherzer combination and still result in inequities to
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`Scherzer’s registered users. Second, the Reply failed to remedy deficiencies in the
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`Petition’s obviousness analysis by alleging—after the fact—that the Brown-
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`Scherzer combination would have been predictable to a POSITA. Petitioner’s
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`predictability observations are misdirected to the predictability of various problems,
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`rather than the predictability of the solution. Third, Petitioner’s exclusion of
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`Scherzer’s account acceptability
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`functionality
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`from
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`the Brown-Scherzer
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`combination ignores the teachings of Scherzer, as a whole, and distorts Scherzer’s
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`system such that it is unfair and unappealing to registered users. Fourth, the
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`testimony of Petitioner’s expert, Dr. Cooperstock (“Cooperstock”), regarding the
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`permissible dissemination of network access permitted by Petitioner’s Brown-
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`Scherzer combination is inconsistent and should be afforded little weight. Fifth,
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`Petitioner mischaracterized Patent Owner’s explanations of Scherzer, as well as the
`
`testimony of Patent Owner’s expert, Mr. McAlexander (“McAlexander”), related to
`
`Scherzer; these mischaracterizations should be ignored. Finally, the commercial
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`success of the HomePod Products is a direct result of practicing the Challenged
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`Case IPR2021-00255
`Patent Owner Sur-Reply
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`Claims and confirms the non-obviousness of the Challenged Claims, which are
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`coextensive with the HomePod products.
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`
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`Grounds 1B-1E, which combine teachings from additional references to
`
`Petitioner’s Brown-Scherzer combination (Ground 1A) for certain dependent
`
`claims, do not cure the foregoing deficiencies of Petitioner’s combination.
`
`II. THE LIMITED NETWORK ACCESS PROVIDED IN
`PETITIONER’S EXAMPLE SCENARIOS IS INCONSISTENT WITH
`PETITIONER’S BROWN-SCHERZER COMBINATION
`Petitioner’s Brown-Scherzer combination does not track or limit network
`
`access by unrecognized devices. Reply, 9-10, 20. Nonetheless, Petitioner’s only
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`defense to the resultant problems in ignoring the teachings in Scherzer, KOSS-2022,
`
`¶¶54-55, is pointing to the limited network access provided in Petitioner’s example
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`scenarios. Petitioner tries to “have it both ways” by allowing Scherzer’s credentials
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`to be disseminated and used by certain unrecognized devices (a “commonly-owned”
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`device “specifically associated” with the registered user), but not disseminated and
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`used by other unrecognized devices. Reply, 14. Such arbitrary, contrived limits on
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`the dissemination of Scherzer’s access credentials expose Petitioner’s dilemma in
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`attempting to avoid the inherent problems with Petitioner’s Brown-Scherzer
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`combination while covering the claim limitations in the ’451 Patent directed to
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`“credential data.... stored by the one or more host servers” being transmitted from a
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`mobile computer device to an electronic device that “is for, upon receiving the
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`Case IPR2021-00255
`Patent Owner Sur-Reply
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`credential data... connecting to the wireless access point... using the credential data.”
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`APPLE-1001, 8:41-53.
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`A. Petitioner’s Brown-Scherzer Combination
`In Petitioner’s combination, “Brown’s device 105 includes a Scherzer-like
`
`software client (blue) enabling communications with a Scherzer-like provider
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`application server.” Pet. 27. The Scherzer-like software client is not installed on
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`Brown’s device 101. Id. Certain access credentials are stored on the Scherzer-like
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`provider application server. These access credentials are referred to herein as
`
`“Scherzer’s credentials.” According to Petitioner, device 105 can obtain Scherzer’s
`
`credentials and transmit those credentials to device 101 over a local link 190. Pet.,
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`26. Device 105 is referred to herein as a “recognized device” because it is associated
`
`with the account of a registered user in Scherzer’s system and, thus, would be
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`recognized by Scherzer’s server. KOSS-2022, ¶¶50, 59-61. Device 101 is referred
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`to herein as an “unrecognized device” because it is not associated with an account
`
`and would not be recognized by Scherzer’s server. Id. Device 101 can be owned
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`by a registered or unregistered user and, either way, would not be recognized by
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`Scherzer’s server. Id., ¶59. Petitioner never claimed that device 101 would be
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`recognized by Scherzer’s server.
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`Petitioner’s Brown-Scherzer combination permits dissemination of
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`Case IPR2021-00255
`Patent Owner Sur-Reply
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`Scherzer’s credentials to unrecognized devices. In both example scenarios,
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`Scherzer’s credentials are transmitted from device 105 to device 101 so that device
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`101 can use Scherzer’s credentials to connect to WAPs in Scherzer’s system. Pet.
`
`28-33. A POSITA would not combine the teachings of Brown and Scherzer such
`
`that unrecognized devices can obtain access to Scherzer’s WAPs. POR, 24-30. Such
`
`access would not be tracked or attributed to an appropriate user account. Id.
`
`Nonetheless, Petitioner ignored Scherzer’s account acceptability requirement and
`
`excluded Scherzer’s user contribution account functionality from the combination.
`
`Reply, 20. Petitioner confirmed that the Brown-Scherzer combination “does not
`
`involve physically incorporating Scherzer’s account acceptability and associated
`
`tracking... [no]r does it require such incorporation since these teachings from
`
`Scherzer are not relevant to the overall motivation....” Id. Cooperstock testified, the
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`Brown-Scherzer combination “did not incorporate Scherzer’s teachings of user
`
`contribution accounts into the Brown system.” APPLE-1023, ¶54. Consequently,
`
`per Petitioner, unrecognized devices could obtain and use Scherzer’s credentials
`
`without their network access being tracked or attributed to a user account.
`
`
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`Petitioner’s Brown-Scherzer combination does not limit the number or type
`
`of devices that can obtain network access with Scherzer’s system. For example,
`
`Petitioner adopted Cooperstock’s testimony in the related IPR proceeding, IPR2021-
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`00600: “Scherzer does not prescribe any limits to what kind of users, either
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`Case IPR2021-00255
`Patent Owner Sur-Reply
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`registered or unregistered, can make use of the service” and “it would defeat the
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`purpose of Scherzer to limit what devices or how many devices a user can connect
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`to access points.” Reply, 9-10 (quoting APPLE-1025, 74-75). However,
`
`Petitioner’s Brown-Scherzer combination, which neither tracks nor limits network
`
`access obtained by unrecognized devices with Scherzer’s credentials, is problematic
`
`to its parallel argument that the Brown-Scherzer combination does not implicate
`
`widespread, unfettered dissemination of Scherzer’s credentials and associated
`
`network access. KOSS-2022, ¶55.
`
`B. Petitioner’s Attempt to Deflect the Problems with the Brown-
`Scherzer Combination is Unpersuasive
`Petitioner’s example scenarios do not describe dissemination of Scherzer’s
`
`
`
`credentials to devices that are not commonly-owned, nor do they contemplate further
`
`dissemination of Scherzer’s credentials from devices 101, 105. Consequently,
`
`Petitioner claimed that its Brown-Scherzer combination does not implicate
`
`widespread, unfettered dissemination of Scherzer’s credentials. Reply, 9 and 14.
`
`For example, responsive to Patent Owner’s concern that Petitioner’s combination
`
`would “permit the widespread and unfettered dissemination of [Scherzer’s]
`
`network/access point access credentials of registered users to unregistered devices,”
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`POR, 21, Petitioner deflected to the example scenarios, “[b]ut in each example
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`discussed in the Petition, the unregistered device ... is specifically associated with a
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`Case IPR2021-00255
`Patent Owner Sur-Reply
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`registered user.... This type of credential sharing is not “widespread and unfettered.”
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`Reply, 14.1 And:
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`Koss characterizes Scherzer’s system as “control[ling] the
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`dissemination of access credentials such that only
`
`registered users can obtain the benefit of other registered
`
`user’s access credentials.” This characterization is
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`irrelevant to the Brown-Scherzer combination, where
`
`both devices are associated with the same “registered
`
`user” who would “obtain
`
`the benefit” of shared
`
`credentials.
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`Id., 9 (internal citations omitted). In short, based on the limited network access in
`
`the two example scenarios, Petitioner apparently concluded that widespread,
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`unfettered dissemination and use of Scherzer’s credentials would not be a concern
`
`to a POSITA.
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`
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`These example scenarios were carefully curated by Petitioner to achieve
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`Petitioner’s singular goal of covering the claim limitations of the ’451 Patent; they
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`are not commensurate in scope with all possible usage scenarios available to the
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`1 Emphases are added to quotations throughout, unless otherwise indicated.
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`Brown-Scherzer combination, particularly in light of Petitioner’s “no-limit”
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`Case IPR2021-00255
`Patent Owner Sur-Reply
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`interpretation of Scherzer, i.e. that it would “defeat the purpose of Scherzer” to limit
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`network access to only recognized devices of a registered user. Reply, 10 (quoting
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`APPLE-1025, 75:11-14). Cooperstock further testified that dissemination of
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`Scherzer’s credentials in the Brown-Scherzer combination is not limited to
`
`commonly-owned devices. KOSS-2023, 16:14-17:1 (responding to inquiry—“can
`
`mobile device 101 and mobile device 105 [in the Brown-Scherzer combination] be
`
`associated with different users?”—Cooperstock confirmed, “the combination that I
`
`described does not preclude that either.”) This evidences the existence of alternative
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`scenarios in which devices 101, 105 are associated with different users. In fact, a
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`multitude of example scenarios are possible, including one or both devices 101, 105
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`further disseminating Scherzer’s credentials to other devices, which could be
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`unrecognized and owned by still different users.
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`
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`Moreover, Petitioner’s example scenarios still involve the dissemination of
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`Scherzer’s credentials to an unrecognized device that uses those credentials to obtain
`
`network access. Petitioner never explained why Scherzer’s credentials could be
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`transmitted between a user’s smartphone and tablet and not further disseminated to
`
`other unrecognized devices. The fact that Petitioner failed to address this logical
`
`flaw in their argument demonstrates the inherent problems with the Brown-Scherzer
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`combination. See POR, 21-22. Petitioner and Cooperstock also never explained
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`how the selective network access (only to one commonly-owned device) would be
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`Case IPR2021-00255
`Patent Owner Sur-Reply
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`imposed in light of the fact that, according to Petitioner, Scherzer does not limit
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`access. Reply, 10. How would the combination limit dissemination of Scherzer’s
`
`credentials only to commonly-owned devices? How would the combination prevent
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`devices 101 and 105, upon receiving Scherzer’s credentials, from further
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`disseminating those access credentials to other devices?
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`
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`Limiting network access to just one commonly-owned device is incompatible
`
`with Petitioner’s theory, which does not incorporate Scherzer’s account acceptability
`
`requirement and associated tracking. Reply, 20. Therefore, a POSITA would have
`
`understood that providing network access to a first unrecognized device (device 105)
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`with Scherzer’s system opens a Pandora’s box with respect to permitting other
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`unrecognized devices to obtain network access. POR, 21-22; KOSS-2022, ¶55
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`(explaining “an unlimited number of unregistered users could freeload...”).
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`
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`Even if the Brown-Scherzer combination somehow limited dissemination of
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`Scherzer’s credentials to only one commonly-owned device, the user would still be
`
`able to evade Scherzer’s tracking and attribution of network access to a user account.
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`The user could exclusively utilize the WAPs of other registered users on the
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`unrecognized device 101 instead of the recognized device 105. In such instances,
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`the user could “freeload” and use more than his/her fair share of bandwidth without
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`forfeiting an appropriate share of his/her own bandwidth to other registered users.
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`KOSS-2022, ¶55. In short, Petitioner’s example scenarios are problematic and a
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`Case IPR2021-00255
`Patent Owner Sur-Reply
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`POSITA would be discouraged from implementing Petitioner’s Brown-Scherzer
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`combination even if just to practice these example scenarios.
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`III. PETITIONER’S ATTEMPTS TO DISPEL EVIDENCE OF
`HINDSIGHT ARE FACTUALLY AND LEGALLY INSUFFICIENT
`The Board noted “we have some concerns ... that the combination is based on
`
`hindsight.” Institution Decision, Paper 22, at 32. Nonetheless, Petitioner
`
`recommitted
`
`to—even confirmed—its hindsight-motivated approach post-
`
`institution; evidence of hindsight actually increased. Petitioner’s Reply included
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`new observations regarding the (alleged) predictability of the Brown-Scherzer
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`combination, however, these observations are, in colloquial terms, “a day late and a
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`dollar short.” Predictability was never addressed in the Petition. Only now that
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`Patent Owner identified Petitioner’s combination for what it is—hindsight
`
`reconstruction—did Petitioner argue that the combination is a predictable solution
`
`to known problems. Reply, 21. However, the new “predictability” arguments are
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`illogical and legally unsound.
`
`A. Cooperstock’s Direct Testimony Reiterates A Hindsight-
`Driven Approach
`Cooperstock confirmed his hindsight-driven approach to the obviousness
`
`inquiry by testifying on cross-examination that he merely looked at Brown and
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`Scherzer “to question whether the claims of the ’451 were actually novel or had
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`been covered by the prior art references.” KOSS-2015, 17:4-8. Cooperstock’s
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`Case IPR2021-00255
`Patent Owner Sur-Reply
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`Supplemental Declaration further evidences hindsight. He admitted to fabricating
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`the Brown-Scherzer combination at the outset:
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`First, broadly speaking, the first example is not just an
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`example of any usage scenario, but specifically, an
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`example of a usage scenario involving the Brown-
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`Scherzer combination. This scenario involves application
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`of
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`the Brown-Scherzer combination, so Scherzer’s
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`teachings would already be understood to be incorporated
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`into the smartphone ….
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`APPLE-1023, ¶46. In other words, Cooperstock incorporated Scherzer’s teachings
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`into device 105 before even considering the “predictable problems” in the first
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`example scenario. Reply, 23. Presumably, the incorporation of Scherzer’s teachings
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`into device 105 exploited hindsight to “combin[e] the right references in the right
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`way so as to achieve the result of the claims in suit.” In re NTP, Inc., 654 F.3d 1279,
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`1299 (Fed. Cir. 2011) (internal citations and quotations omitted). Even so,
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`Cooperstock then applied the Brown-Scherzer combination to demonstrate the claim
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`recitation related to access credentials that are stored on a remote server being
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`transmitted to an electronic device. This is classic hindsight reconstruction. The
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`teachings of Scherzer are entirely superfluous to achieving the objective in the first
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`example. POR, 31-34; see I-B-1, supra.
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`B.
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`Petitioner’s New “Predictability” Observations Fail to
`Address the (Alleged) Predictability of the Brown-
`Scherzer Combination
`The Petition did not analyze predictability in implementing the Brown-
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`Scherzer combination. Petitioner’s Reply repeatedly attempted to recast the Petition
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`as relating to predictability when, in fact, such representations are untrue. For
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`example, Petitioner states, “as explained in the Petition ..., the Brown-Scherzer
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`combination is entirely predictable...,” Reply, 20; “as explained in the Petition, the
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`combination provides a predictable solution,” Reply, 21; and “as explained through
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`the two examples in the Petition, the Brown-Scherzer combination would have been
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`the result of a POSITA merely using common sense ... to arrive at the predictable
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`solution.” Reply, 22 (citing APPLE-1023, ¶40). However, the Petition never
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`mentions predictability or common sense with respect to the Brown-Scherzer
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`combination. The term “predictable” and variants of it never appear in the Petition’s
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`obviousness analysis, but appear over twenty times in the Reply.
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`While also being untimely, Petitioner’s new “predictability” observations are
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`illogical and legally unsound. Petitioner merely identified predictable problems to
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`network connectivity. Reply, 23. However, the existence of predictable problems
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`does not correlate to the predictability of the solution. In this case, Petitioner’s
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`solution raises even more problems (e.g., widespread, unfettered dissemination of
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`registered users’ credentials, disregard for the teachings in Scherzer, etc.) that
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`Petitioner overlooked. Specifically, Petitioner’s Reply alleged that a user of wireless
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`devices would encounter “well-known problems of network connectivity” and, thus,
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`“a POSITA would have combined Brown and Scherzer since it provided ‘advantages
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`to network connectivity.’” Reply, 21 (citing Pet., 27-28). Petitioner continued:
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`These advantages would have been predictable solutions
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`because problems of WiFI connectivity were well-known
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`by the Critical Date.... Because WiFi connectivity
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`problems were well-known by the Critical Date, solutions
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`to WiFi connectivity problems—such as the Brown-
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`Scherzer combination—would have been entirely
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`predictable to POSITA.
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`Id., 21-22. In other words, Petitioner alleged the Brown-Scherzer combination is a
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`predictable solution because network connectivity was a predictable problem. This
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`circuitous reasoning exposes legal and logical flaws. A particular solution is not
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`predictable to a POSITA merely because one or more problems solved by the
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`solution are predictable. KSR Int’l Co. v. Teleflex Inc., 550 US 398 (2006)
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`(discussing obviousness determinations based on “predictable results” and
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`“predictable solutions”). The mere existence of a predictable problem does not
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`compel predictability of every possible solution. For example, the transmissibility
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`and severity of viruses (e.g., COVID-19 virus) is a predictable problem, but
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`particular solutions (e.g. mRNA vaccine) are not predictable solutions and would
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`not have been obvious merely because the transmission and severity of viruses are
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`predictable.
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`
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`Petitioner never explained why the proposed Brown-Scherzer combination is
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`a predictable solution, especially in view of the unfettered, widespread dissemination
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`of access credentials and disregard for the teachings in Scherzer. KOSS-2022, ¶¶55,
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`58. The weak attempts to support Petitioner’s new predictability observations
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`involve examining the example scenarios, which “both implicate predictable
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`problems.” Reply, 22. However, reliance on these example scenarios again fails to
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`prove the Brown-Scherzer combination is predictable.
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`1.
`First Example Scenario
`Scherzer’s teachings are superfluous to the objective of the first example
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`scenario—to “use the tablet to access the Internet while at work….” Pet., 28. Even
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`if the scenario involves “predictable problems,” (Reply, 23), Brown alone provides
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`a simplified solution: a POSITA can configure network access by the tablet with
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`Brown’s configuration technique irrespective of the user registering with Scherzer’s
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`system, irrespective of the smartphone being a recognized device, and irrespective
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`of access credentials being stored on Scherzer’s server. POR, 31-34. Petitioner
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`seemingly acknowledged these shortcomings in the first example scenario by only
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`identifying the second example scenario as the example in which “specific
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`advantages ... emerge.” Reply, 16. It follows that these advantages do not “emerge”
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`in the first example scenario and, thus, do not support Petitioner’s conclusions of
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`obviousness.
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`Cooperstock’s Supplemental Declaration alleged that incorporating Scherzer
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`into the smartphone would be predictable “because this incorporation improves the
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`capability of the smartphone...” APPLE-1023, ¶48. This is irrelevant to Petitioner’s
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`objective of configuring the tablet for network access. Pet., 28. Nonetheless,
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`assuming arguendo that it is predictable to improve the smartphone by incorporating
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`Scherzer’s teachings, by extension, it would be predictable to improve all mobile
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`wireless devices, including the tablet, by incorporating Scherzer’s teachings. In such
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`instances, the tablet would be associated with the account of a registered user and
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`recognized by Scherzer’s server; thus, the tablet could obtain Scherzer’s credentials
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`directly from Scherzer’s server without reliance on Brown’s configuration
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`technique. Because the Brown-Scherzer combination would not be necessary, it is
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`not a predictable solution.
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`2.
`Second Example Scenario
`With respect to the second example scenario, Petitioner identified two
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`“predictable” problems: neither device has network credential information to any
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`nearby WiFi access point and the tablet lacks a cellular connection. Reply, 24. The
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`Petitioner concluded, “[t]hese predicable problems would have led a POSITA to
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`combine” Brown and Scherzer to “enjoy the advantages provided by the Brown-
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`Scherzer combination in addressing the problems implicated by the second
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`example.” Reply, 25 (citing APPLE-1023, ¶¶49-50). Again, Petitioner apparently
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`concluded that predictability of problems necessarily implicates predictability of a
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`solution, which is untrue legally and logically.
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`If such problems were predictable, the user would be motivated to download
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`Scherzer’s software client on the tablet, register the tablet with Scherzer’s service,
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`and obtain the necessary access credentials to the WAP in advance of arriving at
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`the new location