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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,
`
`v.
`
`KOSS CORPORATION,
`Patent Owner.
`
`_____________________
`CASE: IPR2021-00255
`U.S. PATENT NO. 10,298,451
`_____________________
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`
`
`JOINT REPORT DETAILING SIGNIFICANT DEVELOPMENTS IN
`PARALLEL DISTRICT COURT LITIGATIONS
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`
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`1
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`LIST OF EXHIBITS
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`IPR2021-00255
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`
`EXHIBIT NO.
`KOSS-2001
`
`DESCRIPTION
`Sample Order Governing Proceedings - Patent Case, November
`5, 2020, Judge Albright, United States District Court for the
`Western District of Texas, Waco Division
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`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
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`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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`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)
`
`i
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`
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`IPR2021-00255
`
`
`DESCRIPTION
`EXHIBIT NO.
`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)
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`KOSS-2012 Order Granting Motion to Transfer, Apple Inc. v. Koss Corp.,
`Case No. 4:20-cv-05504, Dkt. 72 (May 12, 2021)
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`KOSS-2013
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`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)
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`ii
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`
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`IPR2021-00255
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`The Board’s June 3, 2021 Institution Decision, Paper 22, for IPR2021-00255,
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`states that “within (10) days of any significant developments in the parallel district
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`court proceedings,” i.e., Koss Corp. v. Apple Inc., Case No. 6:20-cv-00665 (W.D.
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`Tex.) and Apple Inc. v. Koss Corp., Case No. 4:20-cv-05504 (N.D. Cal.), “including
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`but not limited to claim interpretation developments, any ruling on a stay, and the
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`setting of a trial date, the parties shall file a joint report detailing any such
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`development.” Pursuant thereto, the Parties jointly submit that:
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` The district court in the W.D. Tex. issued a Claim Construction Order
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`on June 2, 2021, a copy of which is filed as KOSS-2010.
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` On April 22, 2021, the district court in the W.D. Tex. denied
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`Petitioner’s motion to transfer venue. A redacted/public version of the
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`ruling is filed as KOSS-2011.
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` On May 7, 2021, the district court in the N.D. Cal. granted Patent
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`Owner’s motion to transfer the N.D. Cal. case to W.D. Tex. A copy of
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`the ruling is filed as KOSS-2012.
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` On June 8, 2021, the parties jointly filed a motion to consolidate the
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`two W.D. Tex. cases, i.e., the original case and the case transferred from
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`N.D. Cal. A copy of the joint motion to consolidate is field as KOSS-
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`2013.
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`1
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`IPR2021-00255
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` On May 18, 2021, Petitioner filed a Petition for Writ of Mandamus with
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`the Federal Circuit Court of Appeals, In re Apple Inc., Case No. 21-147
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`(Fed. Cir.), requesting the Federal Circuit to issue a writ of mandamus
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`directing the W.D. Tex. district court transfer W.D. Tex. Case No. 6:20-
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`cv-00665 to the N.D. Cal. The Federal Circuit has not ruled yet on the
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`petition.
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`
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`Dated: June 16, 2021
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`Respectfully submitted,
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`By:
`
`By:
`
`
`
`
`/Mark G. Knedeisen/
`Mark G. Knedeisen (Reg. No. 42,747)
`K&L Gates Center, 210 Sixth Avenue
`Pittsburgh, Pennsylvania 15222
`Tel.: (412) 355-6342
`mark.knedeisen@klgates.com
`
`Counsel for Patent Owner
`
`
`
`
`/Roberto J. Devoto/
`W. Karl Renner (Reg. No. 41,265)
`Roberto J. Devoto (Reg. No. 55, 108)
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`
`Counsel for Petitioner
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`2
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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 June 16, 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 J. 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
`Tel: 202-783-5070
`Fax: 877-769-7945
`Email: IPR50095-0020IP1@fr.com
`Email: PTABInbound@fr.com
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`
`
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`By:
`
`
`
`
`/Mark G. Knedeisen/
`Mark G. Knedeisen (Reg. No. 42,747)
`K&L Gates Center, 210 Sixth Avenue
`Pittsburgh, Pennsylvania 15222
`Tel.: (412) 355-6342
`mark.knedeisen@klgates.com
`
`Counsel for Patent Owner
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