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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.
`_____________________
`
`CASE: IPR2021-00255
`U.S. PATENT NO. 10,298,451
`_____________________
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`DECLARATION OF JOSEPH C. MCALEXANDER III
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`August 27, 2021
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`Table of Contents
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`I.
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`BACKGROUND AND QUALIFICATIONS .............................................. 1
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`II. MATERIALS REVIEWED .......................................................................... 4
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`III. SUMMARY OF THE '451 PATENT .......................................................... 5
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`A. The Problem Addressed by the '451 Patent ............................................. 5
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`B. The Solution of the '451 Patent ................................................................ 8
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`IV. PERSON OF ORDINARY SKILL IN THE ART .................................... 11
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`V. APPLICABLE LEGAL PRINCIPLES ..................................................... 12
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`A. Claim Construction ................................................................................12
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`B. Obviousness ...........................................................................................14
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`VI. SUMMARY OF PRIOR ART FOR GROUND 1A .................................. 17
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`A. Brown .....................................................................................................17
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`B. Scherzer ..................................................................................................21
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`C. Brown-Scherzer Combination ...............................................................26
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`D. Secondary Considerations ......................................................................36
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`VII. CONCLUDING REMARKS ...................................................................... 38
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`Case IPR2021-00255, U.S. Patent No. 10,298,451
`Declaration of Joseph C. McAlexander III
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`1.
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`2.
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`I, Joseph C. McAlexander III, declare as follows:
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`I have been retained by counsel for Koss Corp. (“Koss”) as a technical
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`expert in connection with the inter partes review (“IPR”) proceeding identified
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`above for U.S. Patent 10,298,451 (the “'451 Patent”). I submit this declaration in
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`support of Koss’s response to the petition.
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`I.
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`BACKGROUND AND QUALIFICATIONS
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`3.
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`I have a Bachelor of Science in Electrical Engineering from North
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`Carolina State University and have studied neural science at the University of Texas
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`Graduate School of Biomedical Science.
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`4.
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`Upon completion of my electrical engineering degree in 1969, I was
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`commissioned as an officer in the U.S. Army. For 2 years, I managed the air defense
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`operation for
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`the New England area, which
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`included radar and secure
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`communication channels to aircraft, missile batteries, and U.S. Command. I then
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`commanded a signal battalion in South Korea for one year, designing and
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`orchestrating at the division level the first of its kind communication power grid
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`mapping study using AM and FM transmission/reception, among others, and
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`utilizing crypto security transmission/reception methods.
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`5.
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`I am a Registered Professional Engineer in the state of Texas (Reg. No.
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`79,454) and am a recognized inventor on thirty-one U.S. patents. I have forty-nine
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`years of professional experience, during which I designed and analyzed a variety of
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`microcircuits, semiconductors, and control systems, amongst other technologies for
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`Texas Instruments, Inc. and EPI Technologies, Inc. Specifically, I have designed
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`Dynamic Random Access Memories (“DRAMs”), Static Random Access Memories
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`(“SRAMs”), Charged Coupled Devices (“CCDs”), Shift Registers (“SRs”), and a
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`variety of functional circuits, including input/output buffers for addresses and data
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`transmission, decoders, clocks, sense amplifiers, fault tolerant parallel-to-serial data
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`paths for video applications, level shifters, converters, pumps, logic devices,
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`wireless communication systems, and microelectromechanical systems (“MEMs”).
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`I possess significant expertise in operations and manufacturing associated with these
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`technologies, including a sophisticated knowledge of quality control, testing,
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`reliability, and failure analyses.
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`6.
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`I have conducted high level instruction to design and process engineers
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`and managers at Texas Instruments, among others, in Solid State Device Physics,
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`Semiconductor Processing, Circuit Design Techniques, and Statistical Quality
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`Control Methods. I have also instructed corporate audiences in Effectiveness
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`Training, Japanese Manufacturing Techniques, and problem recognition and
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`solution methods and tools.
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`7.
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`I have negotiated licenses for my intellectual property, which includes
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`design programs to provide GPS tracking and transmission of information wirelessly
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`via paging and CDMA. These technologies involved partnerships for skier tracking
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`with Snowtrax, offender tracking with Stellar Technology Enterprises, pet tracking
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`with The Procter & Gamble Company, journalist tracking with CNN, asset tracking
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`with TrackDaddy, and family tracking with Disney, to name a few. I also advised a
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`startup between 2013 and 2018 in peer-to-peer encrypted cellular communication.
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`8.
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`I have provided consultancy
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`services associated with
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`the
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`aforementioned technologies.
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` My consulting career began with Cochran
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`Consulting, Inc. in 1991. Currently, I am the President of McAlexander Sound, Inc.
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`and the Managing Director of McAlexander Sound Pte Ltd., where I offer such
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`consultancy services and serve as a Technical Advisor for highly-specialized
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`matters. I provide expert witness services for the protection of intellectual property.
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`As an expert witness, I have analyzed processes and designs associated with personal
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`computers, peripheral computers, software, and wireless communications systems,
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`including telephones, microprocessors, controllers, memories, programmable logic
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`devices, and other consumer electronics.
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`9.
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`As part of my work with McAlexander Sound, I have gained intimate
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`experience with sound and lighting systems. I am very familiar with how acoustic
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`speakers operate and the design issues associated with sound systems.
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`10.
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`I copy of my curriculum vitae is attached as Appendix A hereto.
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`II. MATERIALS REVIEWED
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`11.
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` I considered information from various sources in forming my opinions
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`expressed in this declaration. In addition to drawing from over four decades of
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`experience in the field of circuit design and two decades of experience with wireless
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`technologies, I have also reviewed the IPR Petition and its exhibits, including the
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`’451 Patent (APPLE-1001), Brown (APPLE-1004), Scherzer (APPLE-1005),
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`Baxter (APPLE-1008), Drader (APPLE-1009), Ramey (APPLE-1010), Gupta
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`(APPLE-1011), and the Declaration of Dr. Cooperstock (APPLE-1003). I also
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`reviewed the deposition transcript for Dr. Cooperstock (KOSS-2015). Furthermore,
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`I reviewed Koss’s Patent Owner Response filed herewith in detail and I agree with
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`its analysis and conclusions about the non-obviousness of the ’451 Patent. I also
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`reviewed the other exhibits and documents referred to herein.
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`III. SUMMARY OF THE '451 PATENT
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`12. The '451 Patent relates to systems and methods that permit a wireless
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`device to receive data wirelessly via an infrastructure wireless network, without
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`having to physically connect the wireless device to a computer in order to configure
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`it, and without having an existing infrastructure wireless network for the wireless
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`device to connect to. APPLE-1001, Abstract.
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`A. The Problem Addressed by the '451 Patent
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`13. By March 15, 2013, the priority date of the '451 Patent (“Priority
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`Date”), wireless internet use had been steadily increasing in popularity and the
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`number of connected devices per person was rising dramatically.1 Moreover, the
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`internet-of-things was burgeoning and proving that internet connectivity could
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`transform the functionality and user experience associated with electronic devices
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`and appliances that were not traditionally configured to connect to the internet.2
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`Conventional computing devices such as desktop computers, laptop computers, and
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`phones typically had user interfaces such as displays and keypads (e.g., physical or
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`virtual keyboards). Displays were capable of displaying a list of available
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`1 See https://www.pewresearch.org/internet/2010/07/07/part-one-the-current-state-
`of-wireless-internet-use/
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`2 See https://www.cisco.com/c/dam/en_us/about/ac79/docs/innov/
`IoT_IBSG_0411FINAL.pdf
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`infrastructure (e.g., WiFi) networks. Keypads allowed users to input credentials
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`(e.g., a network identifier, password, encryption details) to establish a connection.
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`In this manner, conventional computing devices could easily obtain access to an
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`infrastructure wireless network upon selecting an available network shown on a
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`display and inputting the requisite access credentials via a keypad.
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`14. However, other electronic devices could not connect to infrastructure
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`wireless networks as easily. It was not always aesthetically, technically, or
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`economically feasible to provide such user interfaces on electronic devices that were
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`not traditionally designed for internet connectivity. For example, devices such as
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`headphones or wireless speakers, typically have minimalistic user interfaces, if any
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`at all, and thus, were more difficult to configure for internet connectivity. Some
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`devices could be physically plugged into a computer to obtain the network
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`credentials, such as a network name/ID (e.g., SSID), a password, and/or an
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`encryption type (e.g., Wired Equivalent Privacy (“WEP”), Wi-Fi Protected Access
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`(“WPA”), Wi-Fi Protected Access v2 (“WPA2”)), required to connect to the
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`network.3
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`15. Wireless electronic devices, such as headphones and speakers, had the
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`potential to provide consumers with access to a wide array of digital content stored
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`3 See https://www.netspotapp.com/wifi-encryption-and-security.html
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`on remote servers. However, without the requisite network credentials, such devices
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`could not connect to infrastructure wireless networks and thus, could not stream
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`content directly from a remote server without first being physically plugged into a
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`computer. However, aside from the inconvenience of having to physically connect
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`a wireless electronic device to an already connected device, smaller devices could
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`not accommodate a port for a plug.
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`16. The aforementioned problems were further exacerbated for traveling
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`users. For example, even if a device were configured for home use via a personal
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`infrastructure wireless network, the device would be unable to connect to new
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`networks without physically connecting it to a computer while traveling to transfer
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`the appropriate credentials. Thus, users would have to haul compatible computers
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`and plugs to each and every coffee shop, hotel, or conference center, if they wanted
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`to connect an auxiliary electronic device, such as their headphones, to a wireless
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`network. If a user did not have access to a computer with a compatible interface, the
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`user could not configure the auxiliary electronic device to connect to an
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`infrastructure network. These technical limitations significantly reduced the
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`transportability and functionality of the device and in some cases, rendered the
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`device completely useless.
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`B.
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`17.
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`The Solution of the '451 Patent
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`In response to these technical limitations, the '451 Patent presents a new
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`manner of “configuring a wireless device to communicate via an infrastructure
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`wireless network, such as an infrastructure Wi-Fi network, without having to
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`physically plug the wireless device into a computer…and without having to have an
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`existing infrastructure wireless connection to the wireless device.” APPLE-1001,
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`2:51-58. The inventions disclosed by the '451 Patent enable a user to transfer WiFi
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`credentials to a wireless device via an ad hoc network and thus, connect the wireless
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`device to a WiFi network, even if the user lacks access to a preexisting infrastructure
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`wireless connection and is without a compatible computer or plug for physical
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`connection. Accordingly, the '451 Patent provides a significant technical
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`improvement over prior systems and methods.
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`18. For example, claim 1 of the '451 Patent is directed to a system
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`comprising a wireless access point, an electronic device, a mobile computer device
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`that is in communication with the electronic device via an ad hoc wireless
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`communication link, and one or more host servers that are in communication with
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`the mobile computer device via the Internet. The electronic device could be wireless
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`earphones, a video player, a lighting system, a camera, a medical device, or a gaming
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`system, for example. Id., 2:51-67, 6:10-15. Claim 18 is similar to claim 1, but
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`passively refers to the wireless access point instead of positively claiming the
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`wireless access point as a component of the system.
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`19. An example of the claimed system is depicted in Figure 1 of the '451
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`Patent, reproduced below. According to Figure 1, the system 10 can include an
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`electronic device 12, a mobile computer device 22 in communication with the
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`electronic device 12 via an ad hoc wireless communication link 18, and host servers
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`30 that are in communication with the mobile computer device 22 via a Transmission
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`Control Protocol/Internet Protocol (“TCP/IP”) network 28, such as the Internet.
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`Similar to claim 1, the system 10 can also include a wireless access point 24.
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`20. The host servers 30 receive and store the credential data for an
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`infrastructure wireless network provided by the wireless access point 24. The
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`mobile computer device 22 is for transmitting to the electronic device 12 the
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`credential data for the infrastructure wireless network 26 stored by the one or more
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`host servers 30. The electronic device 12 is for, upon receiving the credential data
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`for the infrastructure wireless network 26 from the mobile computing device 22,
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`connecting to the wireless access point 24 via the infrastructure wireless network 26
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`using the credential data received from the mobile computer device 22. In short,
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`credential data received and stored on the host servers 30 is transmitted to the
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`electronic device 12 so that the electronic device 12 can access the Internet 28 via
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`the wireless access point 24. Moreover, the credential data is transmitted to the
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`electronic device 12 without requiring the electronic device 12 to be plugged into
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`the mobile computing device 22.
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`Figure 1: '451 Patent Showing Wireless Access Point 24, Electronic Device 12,
`Mobile Computing Device 22, and Host Servers 30 that Receive and Store
`Credential Data for the Wireless Access Point Used to Connect the Electronic
`Device to the Internet 28
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`IV. PERSON OF ORDINARY SKILL IN THE ART
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`21.
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`I have been informed and understand that patent claims are construed
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`in accordance with the ordinary and customary meaning of such claims as
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`understood by one of ordinary skill in the art and supported by the prosecution
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`history pertaining to the patent.
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`22. Counsel has advised me that, to determine the appropriate skill level of
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`one skilled in the art, I may consider the following factors: (a) the types of problems
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`encountered by those working in the field and prior art solutions thereto; (b) the
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`sophistication of the technology in question, and the rapidity with which innovations
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`occur in the field; (c) the educational level of active workers in the field; and (d) the
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`educational level of the inventor. I considered those factors and also considered the
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`engineers that I worked with at both Texas Instruments, Inc. and EPI Technologies,
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`Inc.
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`23. The relevant technology field for the '451 Patent is systems and
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`methods for configuring a wireless device to communicate via an infrastructure
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`wireless network, such as an infrastructure Wi-Fi network, when the wireless device
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`lacks a preexisting infrastructure wireless connection and without having to
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`physically plug the wireless device into a computer to configure it. APPLE-1001,
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`2:51-57. Based on this, and the factors described above, it is in my opinion that a
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`person of ordinary skill in the art (“POSITA”) to which the '451 Patent pertains
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`would be someone working in the electrical engineering field with experience in
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`wireless networks and wireless products. Such a person would have a bachelor’s
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`degree in electrical engineering and at least two or more years of work experience
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`in the industry. In my opinion, extensive work experience and technical training
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`might substitute for educational requirements, while advanced degrees, such as a
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`relevant M.S. or Ph.D., might substitute for experience. Accordingly, such a person
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`would have studied and have practical experience with circuit design, speaker
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`components, and wireless communications and networking.
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`V. APPLICABLE LEGAL PRINCIPLES
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`24.
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`I am not an attorney. For purposes of this declaration, I have been
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`informed about certain aspects of the law that are relevant to my analysis and
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`opinions, as set forth below.
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`A. Claim Construction
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`25.
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`I understand that claim terms are generally given their ordinary and
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`customary meaning, which is the meaning that the term would have to a person of
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`ordinary skill in the art (POSITA) in question at the time of the invention, i.e., as of
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`the earliest priority date of the patent. I further understand that the POSITA is
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`deemed to read the claim term not only in the context of the particular claim in which
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`a claim term appears, but in the context of the entire patent, including the
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`specification and file history.
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`26.
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`I am informed by counsel that the patent specification has been
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`described as the best guide to determining the meaning of a claim term, and is thus,
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`highly relevant to the interpretation of claim terms. I understand that for claim terms
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`that do not have a customary meaning within the art, the specification usually
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`supplies the best context of understanding the meaning of those terms. I also
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`understand that claim terms should be understood in the context of the claim as a
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`whole.
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`27.
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`I understand that the prosecution history can further inform the meaning
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`of the claim language by demonstrating how the inventors understood the invention
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`and whether the inventors limited the invention in the course of prosecution, making
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`the claim scope narrower than it otherwise would be. Extrinsic evidence may also
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`be consulted in construing the claim terms, such as my experience and expert
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`testimony.
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`28.
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`I have not been asked to provide any specific definitions for any of the
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`terms in the claims I have analyzed. If asked, I would undertake such an endeavor.
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`Accordingly, I have treated each claim term as it would be understood to have its
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`plain and ordinary meaning to a POSITA in light of the specification, as outlined
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`below.
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`29.
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`I understand that some claims are independent, and that these claims
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`are complete by themselves. Other claims refer to these independent claims and are
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`“dependent” from those independent claims. The dependent claims include all the
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`limitations of the claims from which they depend.
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`B. Obviousness
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`30.
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`I am informed that a patent cannot be properly granted for subject
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`matter that would have been obvious to a POSITA before the effective filing date of
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`the claimed invention and that a patent claim directed to such obvious subject matter
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`is invalid (under 35 U.S.C. § 103). I am also informed that, in assessing the
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`obviousness of claimed subject matter, one should evaluate obviousness over the
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`prior art from the perspective of a POSITA before the effective filing date of the
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`claimed invention. It is my further understanding that obviousness is to be
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`determined based on several factual inquiries:
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`i. The scope and content of the prior art;
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`ii. The difference or differences between the subject matter of the
`claim (as construed) and the prior art; and
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`iii. The level of ordinary skill in the art at the time of the invention of
`the subject matter of the claim.
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`Against this background, the obviousness or non-obviousness of the claim is
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`determined.
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`31.
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`I am informed that relevant objective factors (the “secondary indicia”)
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`indicating non-obviousness might be utilized to give light to the circumstances
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`surrounding the origin of the subject matter sought to be patented. I am informed
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`that relevant secondary indicia can include:
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`i. Commercial success of the products or methods covered by the
`patent claims;
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`ii. A long-felt need for the invention;
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`iii. Failed attempts by others to make the invention;
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`iv. Teaching away from the invention by the prior art;
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`v. Copying of the invention by others in the field;
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`vi. Unexpected results achieved by the invention;
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`vii. Praise, approval, or acclaim of the invention by others in the field;
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`viii. Commercial acquiescence to the validity of the patents;
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`ix. Skepticism of experts;
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`x. Expressions of surprise by experts and those skilled in the art at the
`subject matter of the claims; and
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`xi. Whether the patentee proceeded contrary to accepted wisdom of the
`prior art.
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`I am informed that, in order to be relevant to the issue of obviousness, such
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`secondary indicia must have some nexus to the claimed invention.
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`32.
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`I am informed that sometimes obviousness is shown by combining
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`multiple prior art teachings under a test commonly referred to as the “teaching-
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`suggestion-motivation” or “TSM” test, which addresses the common situation where
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`previously known components are recited in a claim. I am informed that, according
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`to the TSM test, it must be shown explicitly or implicitly that there is some
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`suggestion or motivation in the prior art to combine known elements to form the
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`claimed invention.
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`33.
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`I am also informed that additional rationales may support an
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`obviousness determination when dealing with a known problem, including:
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`i. Combining prior art according to known methods to yield
`predictable results;
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`ii. Simple substitution of a known element for another element to
`obtain predictable results;
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`iii. Use of a known technique to improve similar devices, methods, or
`products in some way;
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`iv. Applying a known technique to a known device, method, or product
`ready for improvement to yield predictable results;
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`v. Obvious to try―that is, choosing from a finite number of identified,
`predictable solutions with a reasonable expectation of success; and
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`vi. Known work in one field of endeavor may prompt variations for use
`in either the same field or a different one based on design incentives
`or other market forces if the variations are predictable to a POSITA.
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`34.
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`I am informed that, when I conduct my analysis, I should guard against
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`hindsight, that is, using the claimed invention(s) to retroactively form the basis of
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`any combination of prior art references. To guard against this, a reason must be
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`shown to combine or modify prior art teachings to arrive at the claimed subject
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`matter, and I have taken into consideration any teachings as expressed within the
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`prior art references and the general common knowledge in the art at the time the
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`claimed invention(s) was filed to guide my determination whether or not a POSITA
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`would make any of the combinations or modifications proposed in the Petition.
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`VI. SUMMARY OF PRIOR ART FOR GROUND 1A
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`35. The Petition asserts that claims 1-20 would have been obvious under
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`various asserted grounds (i.e., Grounds 1A to 1E). For Ground 1A, the Petitioner
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`asserts that 1, 6, 11-13, and 15-20 would have been obvious over Brown in view of
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`Scherzer. Claims 1 and 18 are the sole independent claims of the '451 Patent.
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`A. Brown
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`36. Brown discloses a system of “enabling access of a first mobile
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`electronic device to at least one network accessible to a second mobile electronic
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`device, the second mobile device storing configuration data for accessing the at least
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`one network... such that the at least one network is accessible by the first mobile
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`device using the configuration data.” APPLE-1004, Abstract. Figure 1 of Brown,
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`reproduced below, is exemplary as it discloses one such system 100 “for enabling
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`access of a first mobile electronic device 101 to at least one communication network
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`103 accessible by a second mobile electronic [device] 105.” APPLE-1004, Col. 4,
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`ll. 10-12.
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`Figure 2: Brown’s Figure 1 illustrates the device-to-device
`transmission of configuration data 182 from mobileelectronic
`device 105 to mobile electronic device 101 via local link 190
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`37. According to Brown’s Figure 1, device 105 is initially in possession of
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`the configuration data 182 and thus, has established a wireless link 185 to
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`communication network 103 via access point 180. Prior to the transmission via local
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`link 190, mobile electronic device 101 is not in possession of the configuration data
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`182 and thus, does not have access to communication network 103 via access point
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`180.
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`38. Brown notably explains that “configuration data (e.g., WiFi profiles)
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`for accessing the WiFi connection is stored at [mobile electronic device 105] for
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`later access to the same WiFi connection (e.g., as data 182).” APPLE-1004, Col. 5,
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`ll. 45-49. Accordingly, a POSITA would understand that Brown’s system 100 is
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`specifically—and exclusively— designed for the local storage and peer-to-peer or
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`device-to-device sharing of configuration data 182 and thus, would understand that
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`Brown neither teaches nor suggests the use of “one or more host servers [that]
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`receive and store credential data for an infrastructure wireless network.” See, e.g.,
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`APPLE-1001, Col 8, ll. 36-39.
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`39. Brown also promotes the use of system 100 for the benefit of a sole user
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`to access known access points on several commonly-owned devices, explaining that
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`“device 101 and device 105 can each be associated with the same user (not depicted),
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`and hence it can be desirable to communicate with the same wireless access points,
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`such as access point 180.” APPLE-1004, 5:13-17.
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`40. By the Priority Date of the '451 Patent, a POSITA would have
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`appreciated the virtue of the closed ecosystem disclosed by Brown, understanding
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`that sharing WiFi passwords could increase the risk of: malware infestation, identity
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`theft, susceptibility to “fake” hotspots, and decreased bandwidth.4 Brown’s
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`suggestion that a single user own both mobile electronic device 101 and mobile
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`electronic device 105 and only share configuration data 182 for known access points
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`would reduce the risk of misappropriation and thus, mitigate the aforementioned
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`risks.
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`41. The additional disclosure provided by Brown (related to Figures 2-5
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`thereof) is consistent with the above and neither teaches nor suggests an alternate
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`means of storing and/or transferring the configuration data 182. I disagree with the
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`assertion that “[Brown’s] focus is less on how the first device obtains those
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`credentials and the accompanying user experience” (Pet. at 24-25) because it
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`overstates Brown’s disclosure as to how the first device obtains those credentials.
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`In fact, Brown provides no such disclosure and thus, does not focus on how the
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`credentials are provided to the first device at all.
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`42. Upon reviewing Brown, a POSITA would understand that the systems
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`disclosed by Brown are unrelated to “one or more host servers [that] receive and
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`store credential data for an infrastructure wireless network,” as required by the
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`claims. See, e.g., APPLE-1001, Col 8, ll. 36-39.
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`4 See https://smallbusiness.chron.com/dangers-borrowing-someone-elses-wifi-
`60474.html
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`B.
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`Scherzer
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`43. Given the aforementioned deficiencies of Brown, the Petition relies on
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`Scherzer for “one or more host servers [that] receive and store credential data for an
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`infrastructure wireless network” and the associated claim recitations. Pet. at 24-33;
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`see also, APPLE-1001, Col 8, ll. 36-39.
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`44. Scherzer describes a “software client” that aggregates “registration
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`information” from a collaborative community of users. APPLE-1005, ¶ [0020]. The
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`registration information “can be used to enable other users to access [a] user’s access
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`point.” Id. at ¶ [0016]. After registering for the service disclosed by Scherzer, the
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`software client must be installed on a user’s device prior to enabling the user to
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`access another user's access point. See id.
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`45. According to Scherzer, the provision of registration information can be
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`used to set up a user contribution account that can enable other registered users of
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`the network to access the user's access point. Id. at ¶ [0021]. Registration
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`information can include, for example: the user's access point information to enable
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`a second user to use the user's access point, the user's identifier information (e.g.,
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`media access control (MAC) address), the user's access point service set identifier
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`(SSID), the user's access point wired equivalent privacy (WEP) key or password, the
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