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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner,
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`v.
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`KOSS CORPORATION,
`Patent Owner.
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`_____________________
`CASE: IPR2021-00255
`U.S. PATENT NO. 10,298,451
`_____________________
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`PATENT OWNER’S SUR-REPLY IN SUPPORT OF
`PRELIMINARY RESPONSE
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`504300501 v1
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`IPR2021-00255
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`Petitioner’s stipulation states that it “will not seek resolution within the
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`litigation of any ground of invalidity that utilizes [Brown or Scherzer] as a primary
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`reference.” KOSS-2009. Despite the stipulation, Fintiv factor 4 militates in favor
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`of denying institution. At a minimum, factor 4 only “marginally” favors Petitioner.
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`Petitioner asserts that there is no overlap of invalidity grounds. Paper 20, 1.
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`This is false because Petitioner’s stipulation is illusory. It applies only when either
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`Brown or Scherzer is used as the “primary reference” in the district court. However,
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`“characterization . . . of prior art as ‘primary’ and ‘secondary’ is merely a matter of
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`presentation with no legal significance.” In re Mouttet, 686 F.3d 1322, 1333 (Fed.
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`Cir. 2012). The Graham framework neither defines nor requires the identification
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`of a “primary reference.” Yet Petitioner’s stipulation invokes and relies on the term
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`without any basis for measuring whether a reference is “primary.” By so doing,
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`Petitioner reserves to itself the authority to designate certain references in the district
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`court as “primary” or not, and its stipulation invites side litigation over whether a
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`reference is “primary.” In substance, Petitioner’s carefully crafted stipulation seeks
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`the best of both worlds for itself: asserting that there is little overlap between the IPR
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`and district court forums to bolster its case for institution, yet reserving for itself
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`maximum latitude to present obviousness arguments in the district court by simply
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`labeling Brown or Scherzer as a “secondary reference.”
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`Assuming in arguendo that the stipulation is clear, it fails to eliminate overlap
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`- 1 -
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`IPR2021-00255
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`because it is not as broad as the stipulation in Sotera Wireless, Inc. v. Masimo Corp.,
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`IPR2020-01019, Paper 12, 18 (PTAB Dec. 1, 2020), where petitioner additionally
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`agreed it “will not pursue in the District Court Litigation any ground raised or that
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`could have been reasonably raised in an IPR.” The Board was explicit: “a broad
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`stipulation better addresses concerns of duplicative efforts and potentially
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`conflicting decisions in a more substantial way.” Id. at 19. To that end, the
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`stipulation must be broad enough to “sufficiently allay” concerns of overlap. Cellco
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`P’ship v. Huawei Tech. Co., IPR2020-01356, Paper 13, 14 (PTAB Mar. 5, 2021);
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`KeyMe, LLC v. Hillman Grp., Inc., IPR2020-01028, Paper 12, 15 (PTAB Jan. 13,
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`2021) (stipulation did “not eliminate the clear overlap in the issues”). Petitioner’s
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`stipulation does not meet this high standard because Petitioner can merely designate
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`Brown or Scherzer as “secondary” in the district court to avoid the impact of its
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`stipulation.
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`Even if Petitioner’s stipulation is credited, it only “weighs marginally” against
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`discretionary denial because it is not as encompassing as the stipulation in Sotera.
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`See Cisco Sys., Inc. v. Monarch Networking Sols. LLC, Paper 11, 15 (Mar. 4, 2021);
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`see also Verizon Bus. Network Svs., LLC v. Huawei Tech. Co., IPR2020-01278,
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`Paper 12, 13 (PTAB Jan. 26, 2021) (“weighs somewhat against” denying
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`institution). The other Fintiv factors in favor of denying institution outweigh this
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`“marginal” factor.
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`- 2 -
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`Dated: April 8, 2021
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`IPR2021-00255
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`Respectfully submitted,
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`By:
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`/Mark G. Knedeisen/
`Mark G. Knedeisen (Reg. No. 42,747)
`K&L Gates Center, 210 Sixth Avenue
`Pittsburgh, Pennsylvania 15222
`Tel.: (412) 355-6342
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`mark.knedeisen@klgates.com
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`Counsel for Patent Owner
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`- 3 -
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`IPR2021-00255
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`Certification of Service Under 37 C.F.R. § 42.6(e)(4)
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`I hereby certify that on April 8, 2021, I caused a true and correct copy of the
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`foregoing to be served on the following counsel for Petitioner by electronic mail to
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`the following email address:
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`W. Karl Renner (Reg. No. 41,265)
`Roberto Devoto (Reg. No. 55,108)
`Ryan Chowdhury (Reg. No. 74,466)
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Email: IPR50095-0020IP1@fr.com
`Email: PTABInbound@fr.com
`Email: axf-ptad@fr.com
`Email: devoto@fr.com
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`By:
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`/Mark G. Knedeisen/
`Mark G. Knedeisen (Reg. No. 42,747)
`K&L Gates Center, 210 Sixth Avenue
`Pittsburgh, Pennsylvania 15222
`Tel.: (412) 355-6342
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`mark.knedeisen@klgates.com
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`Counsel for Patent Owner
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