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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
`Patent 10,298,451
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`PETITIONER’S REPLY TO PATENT OWNER’S PRELIMINARY
`RESPONSE
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`Case IPR2021-00255
`Attorney Docket No: 50095-0020IP1
`In its Preliminary Response (Paper 6), Koss argues that factor 4 of the Fintiv
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`framework “weighs in favor of denying institution” based on an alleged “potential”
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`overlap of issues because “Petitioner challenges the validity of all of the claims in
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`the ’451 Patent in both the Petition and the Texas Litigation.” Paper 6, 14, 16.
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`However, Fintiv explains that Factor 4 addresses whether “the petition includes the
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`same or substantially the same claims, grounds, arguments, and evidence as
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`presented in the parallel proceeding.” IPR2020-00019, Paper 11 at 12. Each of
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`these elements either differs between the concurrent proceedings or any overlap is
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`unascertainable until well after institution, as follows.
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`First, there is no overlap of grounds. Apple has stipulated that, unless the
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`Board denies or later vacates institution of this petition, Petitioner will not seek
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`resolution in the district court trial of invalidity based on any ground “that utilizes,
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`as a primary reference, [Brown], which is the primary reference in the grounds
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`asserted in” this IPR. KOSS-2009, 2. As grounds will differ, necessarily will
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`arguments and evidence. Second, the parties will not decide on the claims that will
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`be at issue in the district court trial until January, 2022. Paper 6, 14. Thus, as Koss
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`acknowledges, “the extent of duplicative effort required by the Board will not be
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`clear until well into the one-year period that is statutorily afforded the Board to
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`issue its final written decision.” Id. Thus, factor 4 supports institution.
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`Koss challenges the stipulation as not broad enough to preclude overlap.
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`1
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`Case IPR2021-00255
`Attorney Docket No: 50095-0020IP1
`Paper 6, 15-16. But, as described above, this is simply not true. While the
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`stipulation may not necessarily include “all permutations of the asserted prior art,”
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`the stipulation sufficiently “reduces the risks posed by the overlap between the
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`proceedings,” such that factor 4 of Fintiv “weighs against the exercise of discretion
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`to deny review.” IPR2020-01113, Paper 12, 15-19. For at least similar reasons,
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`Apple’s stipulation weighs against the exercise of discretionary denial.
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`Koss makes the argument that because a petitioner in a different IPR
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`proceeding issued a broader stipulation, Apple should do so here. That is not what
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`the Board has required. Indeed, such a one-size-fits-all rule is counter to Fintiv’s
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`guidance. When evaluating the Fintiv factors, “the Board takes a holistic view of
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`whether efficiency and integrity of the system are best served by denying or
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`instituting review,” and, “[i]n many cases, weighing the degree of overlap is highly
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`fact dependent” IPR2020-00019, Paper 11, 6, 13. There are numerous cases
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`where the Board has rightly found that stipulations of equal or narrower breadth
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`weigh against discretionary denial. See, e.g., IPR2019-01393, Paper 24, 11-12;
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`IPR2020-01113, Paper 12, 15-19; IPR2020-01208, Paper 13, 18; IPR2020-01428,
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`Paper 10, 12. And where the Board has held otherwise, there were often other
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`mitigating facts, such as a much sooner and more certain trial date. See, e.g.,
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`IPR2020-00870, Paper 16, 9-18; IPR2020-01317, Paper 15, 11-24. A similarly
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`holistic analysis of the present facts weighs against discretionary denial.
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`March 26, 2021
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`Date:
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`Case IPR2021-00255
`Attorney Docket No: 50095-0020IP1
`Respectfully submitted,
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`/W. Karl Renner/
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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
`T: 202-783-5070
`F: 877-769-7945
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`Case IPR2021-00255
`Attorney Docket No: 50095-0020IP1
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e), the undersigned certifies that on March 26,
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`2021, a complete and entire copy of this Petitioner’s Reply to Patent Owner’s
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`Preliminary Response was provided via email, to the Patent Owner by serving the
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`correspondence addresses of record as follows:
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`Mark G. Knedeisen
`Laurén Shuttleworth Murray
`Brian P. Bozzo
`K&L GATES LLP
`K&L Gates Center, 210 Sixth Avenue
`Pittsburgh, PA 15222
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`Email: mark.knedeisen@klgates.com
`Email: lauren.murray@klgates.com
`Email: brian.bozzo@klgates.com
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`/Edward G. Faeth/
`Edward G. Faeth
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(202) 626-6420
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