`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`KOSS CORPORATION,
`Patent Owner.
`
`_____________________
`Case IPR2021-00255
`Patent 10,298,451
`_____________________
`
`
`
`PATENT OWNER RESPONSE
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`
`
`
`
`
`504204022.7
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`Case IPR2021-00255
`Patent Owner Response
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`TABLE OF CONTENTS
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`
`
`
`I.
`II.
`
`Page
`INTRODUCTION .......................................................................................... 1
`BACKGROUND ............................................................................................ 2
`A.
`Summary of the ’451 Patent ................................................................. 2
`B.
`Person of Ordinary Skill in the Art ...................................................... 6
`C.
`Petitioner’s Invalidity Grounds and Evidence ..................................... 7
`1.
`Brown ....................................................................................... 10
`2.
`Scherzer .................................................................................... 12
`3.
`Cooperstock’s Testimony ........................................................ 17
`III. THE CHALLENGED CLAIMS WOULD NOT HAVE BEEN
`OBVIOUS ..................................................................................................... 18
`A.
`The Brown-Scherzer Combination .................................................... 18
`B.
`Relevant Issues for Obviousness Determination................................ 23
`C.
`A POSITA Would Not Attempt To Use Scherzer’s Access
`Credentials With an Unregistered Device .......................................... 24
`1.
`Transmission and Use of Scherzer’s Access Credentials By
`an Unregistered Device Ignores the Account Acceptability
`Requirement and Associated Tracking in Scherzer ................. 25
`Scherzer, As a Whole, Discourages Unfettered
`Dissemination of Access Credentials to Unregistered
`Devices ..................................................................................... 29
`A Simpler Approach to Network Connectivity Exists ............ 30
`3.
`The Petition’s Obviousness Analysis Relies on Impermissible
`Hindsight Reconstruction ................................................................... 30
`
`2.
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`B.
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`C.
`
`D.
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`Defects In The Petition’s First Example .................................. 31
`1.
`Defects in the Petition’s Second Example ............................... 34
`2.
`Defects in Cooperstock’s Testimony ....................................... 36
`3.
`The Petition’s Flawed Analysis Obscures Any Comparison of
`Brown and Scherzer to the Challenged Claims ................................. 38
`IV. OBJECTIVE INDICIA OF NONOBVIOUSNESS CONFIRM THAT
`THE CHALLENGED CLAIMS ARE PATENTABLE .............................. 40
`A.
`Background ........................................................................................ 40
`B.
`Legal Principles .................................................................................. 41
`C.
`There is a Nexus Between the HomePods and the Claims of ’451
`Patent .................................................................................................. 42
`There is Evidence that the HomePod and HomePod Mini Have
`Achieved Commercial Success Since their Debut ............................. 44
`CONCLUSION ............................................................................................. 45
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`
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`V.
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`TABLE OF AUTHORITIES
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` Page(s)
`
`Cases
`Ecolochem, Inc. v. S. Cal. Edison Co.,
`227 F.3d 1361 (Fed. Cir. 2000) .......................................................................... 41
`Fox Factory, Inc. v. SRAM, LLC,
`944 F.3d 1366 (Fed. Cir. 2019) .............................................................. 42, 43, 44
`Graham v John Deere Co.,
`383 U.S. 1 (1966) .........................................................................................passim
`In re Keller,
`642 F.2d 413 (C.C.P.A. 1981) ............................................................................ 24
`Merck & Co., Inc. v. Teva Pharm. USA, Inc.,
`395 F.3d 1364 (Fed. Cir. 2005) .......................................................................... 41
`Mintz v. Dietz & Watson, Inc.,
`679 F.3d 1372 (Fed. Cir. 2012) .......................................................................... 39
`Nautilus Hyosung Inc. v. Diebold, Inc.,
`IPR2016-00633, Paper 9 (PTAB Aug. 22, 2016) ............................................... 36
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) ................................................................ 9, 34, 38
`In re Schweickert,
`676 F. App’x. 988 (Fed. Cir. 2017) .................................................................... 34
`SightSound Techs., LLC v. Apple Inc.,
`809 F.3d 1307 (Fed. Cir. 2015) .................................................................... 41, 43
`W.L. Gore & Assoc., Inc. v. Garlock, Inc.,
`721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983) ................................................ 38
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`EXHIBIT LISTING
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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
`
`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
`
`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)
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`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)
`
`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
`
`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)
`
`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)
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`DESCRIPTION
`EXHIBIT NO.
`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
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`I.
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`INTRODUCTION
`The Board granted institution for inter partes review of claims 1-21
`
`(“Challenged Claims”) of U.S. Patent No. 10,298,451 (APPLE-1001, “the ’451
`
`Patent”). Paper 22. Patent Owner, Koss Corporation, submits this Patent Owner
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`Response (“POR”) under 37 C.F.R. § 42.120.
`
`Claims 1 and 18 are the independent claims of the ’451 Patent. These claims
`
`recite an electronic device, such as an acoustic speaker, that receives “credential
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`data” for an infrastructure wireless network from a mobile computer device. The
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`credential data, which can comprise an identifier for the infrastructure wireless
`
`network and which are also stored on “one or more host servers,” are transmitted by
`
`the mobile computer device to the electronic device via an “ad hoc communication
`
`link.” Upon receiving credential data, the electronic device can connect to the
`
`infrastructure wireless network. APPLE-1001, 8:30-53 (claim 1), 10:1-24 (claim
`
`18). That way, the electronic device can connect to the infrastructure wireless
`
`network without having to physically plug the electronic device into a computer to
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`receive the infrastructure wireless network credentials. Id., 2:3-7.
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`Petitioner asserts that independent claims 1 and 18 would have been obvious
`
`over Brown (APPLE-1004) and Scherzer (APPLE-1005). Petitioner’s argument,
`
`however, ignores important teachings of its relied-upon references. In particular, as
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`explained below and in the accompanying declaration of Patent Owner’s expert,
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`Joseph C. McAlexander, III (KOSS-2022), Petitioner’s case ignores the registration
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`requirements and security considerations of Scherzer’s community-based system,
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`which effectively prohibit the combinations of Brown and Scherzer relied upon in
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`the Petition. That the Petition could fail to consider the teachings of the references
`
`as a whole is unsurprising given that Petitioner’s expert, Dr. Jeremy Cooperstock,
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`merely considered whether the relied-upon references “covered” the claims, or
`
`whether the references “teach or suggest” the features of the claims. KOSS-2015,
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`17:4-8; APPLE-1003, ¶3. Further, the commercial success of Petitioner’s products,
`
`the Apple HomePods, that practice claims 1 and 18 (and various dependent claims)
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`confirm the nonobviousness of the Challenged Claims.
`
`Accordingly, the Board should confirm the patentability of the Challenged
`
`Claims.
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`II. BACKGROUND
`A.
`Summary of the ’451 Patent
`Wireless consumer devices were continuing to increase in popularity at the
`
`priority date of the ’451 Patent. KOSS-2022, ¶13. One issue in using a wireless
`
`consumer device is configuring the device to connect to an infrastructure Wi-Fi
`
`network, i.e., a wireless network that is accessed via a wireless access point and
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`connected to an Internet service provider. APPLE-1001, 3:40-44. Conventionally,
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`prior to the ’451 Patent, wireless consumer devices could have a user interface which
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`enabled a user to select a wireless access point and input the access credentials
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`thereto. KOSS-2022, ¶13. Wireless consumer products without a suitable user
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`interface were provisioned with the access credentials for an infrastructure wireless
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`network only upon plugging the wireless consumer device into a conventional
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`computing device (e.g. a computer) and then transferring the access credentials from
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`the computer to the wireless consumer device, i.e. a “plug-to-connect” process.
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`KOSS-2022, ¶14; APPLE-1001, 2:3-7. Access credentials can comprise the
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`name/ID (e.g., SSID), password and/or encryption type for the network. APPLE-
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`1001, 5:13-16; KOSS-2022, ¶14.
`
`Requiring a wireless consumer product to be plugged into a computer can be
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`a cumbersome process that presents numerous challenges. KOSS-2022, ¶¶15-16.
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`For example, a computer is not always available. Id., ¶16. Even when a computer is
`
`available, the plug for connecting the wireless computer device to the computer may
`
`not be available. Id. Also, smaller wireless consumer devices may not accommodate
`
`a port for the plug to the computer. Id., ¶15.
`
`The ’451 Patent solves this problem by providing a way “for configuring a
`
`wireless device to communicate via an infrastructure wireless network, such as an
`
`infrastructure Wi-Fi network, without having to physically plug the wireless device
`
`into a computer to configure” the wireless device, “and without having to have an
`
`existing infrastructure wireless connection to the wireless device.” APPLE-1001,
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`2:51-58. The system and process could be used to “initially operate” the wireless
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`device, e.g. “out of the box.” Id. 4:35-36. A user of such a wireless device can
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`connect to an infrastructure wireless network in scenarios where a “plug-to-connect”
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`set-up scenario is not available or not preferred. KOSS-2022, ¶17. For these
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`reasons, the system and process described and claimed in the ’451 Patent provide a
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`significant improvement over the alternative “plug-to-connect” systems. Id.
`
`The ’451 Patent includes twenty-one (21) claims, of which claims 1 and 18
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`are independent. Claim 1 recites a system comprising a wireless access point, an
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`electronic device, a mobile computer device that is in communication with the
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`electronic device via an ad hoc wireless communication link, and one or more host
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`servers that are in communication with the mobile computer device via the Internet.
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`APPLE-1001, 8:30-53. The electronic device could be wireless earphones, a video
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`player, a lighting system, a camera, a medical device, or a gaming system, for
`
`example. APPLE-1001, 2:51-67, 6:10-15. Claim 18 is similar to claim 1, but does
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`not affirmatively claim the wireless access point as a component of the system. Id.,
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`10:1-24.
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`Referring to Figure 1 of the ’451 Patent, reproduced below, a system 10
`
`includes a wireless access point 24, an electronic device 12, a mobile computer
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`device 22 that is in communication with the electronic device 12 via an ad hoc
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`wireless communication link 18, and host servers 30 that are in communication with
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`the mobile computer device 22 via the Internet 28. The electronic device could be
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`an audio device (e.g., headphones) or a controller for electronic equipment. APPLE-
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`1001, 2. 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. APPLE-
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`1001, 57-67. The mobile computer device 22 transmits to the electronic device 12
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`the credential data for the infrastructure wireless network 26 stored by the one or
`
`more host servers 30. Upon receiving the credential data for the infrastructure
`
`wireless network 26 from the mobile computing device 22, the electronic device 12
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`connects to the wireless access point 24 using the credential data received from the
`
`mobile computer device 22. In short, credential data received and stored on the host
`
`servers 30 are transmitted to the electronic device 12 so that the electronic device 12
`
`can access the Internet 28 via the wireless access point 24. Moreover, the credential
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`data are transmitted to the electronic device 12 without requiring the electronic
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`device 12 to be plugged into the mobile computing device 22.
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`B.
`Person of Ordinary Skill in the Art
`A person of ordinary skill in the art (POSITA) to which the ’451 Patent
`
`pertains, according to the Patent Owner, “would be someone working in the
`
`electrical engineering field with experience in wireless networks and wireless
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`products.” KOSS-2022, ¶23. The POSITA would have a bachelor’s degree in
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`electrical engineering and at least two or more years of work experience in the
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`industry. Id. Accordingly, a POSITA would have studied and have practical
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`experience with circuit design, speaker components, and wireless communication.
`
`Id.
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`This skill level is similar, although not identical, to that proffered by
`
`Petitioner. APPLE-1003, ¶26 (“at least a Bachelor’s Degree in an academic area
`
`emphasizing electrical engineering, computer science, or a similar discipline, and at
`
`least two years of experience in wireless communications across short distance or
`
`local area networks”). The skill level of a POSITA is relatively low according to
`
`each party because a person with just a relevant Bachelor’s Degree and two years of
`
`experience would qualify as POSITA.
`
`C.
`Petitioner’s Invalidity Grounds and Evidence
`Petitioner asserts that independent claims 1 and 18 are obvious over the
`
`combination of Brown (APPLE-1004) and Scherzer (APPLE-1005). Pet. at 1.
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`Petitioner’s obviousness grounds, however, ignore important teachings in the
`
`references. As such, the asserted grounds fail to consider the references, particularly
`
`Scherzer, as a whole, and fail to follow the framework set forth in Graham v John
`
`Deere Co., 383 U.S. 1 (1966) (the “Graham framework.”)
`
`A POSITA would not implement the teaching of Brown and Scherzer as
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`proposed in the Petition because the access credentials received and stored on a
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`Scherzer-like server (i.e., Scherzer’s access credentials) would not be transmitted
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`and used by a mobile electronic device in Brown that is not registered with
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`Scherzer’s service (i.e. an unregistered device) to connect to a wireless access point.
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`Accordingly, the unregistered device would be unable to access the internet with
`
`Scherzer’s access credentials. Utilizing Scherzer’s access credentials by an
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`unregistered device is technically precluded by Scherzer’s system given Scherzer’s
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`registration requirements for creating a user account and the associated tracking of
`
`a registered user’s usage of the wireless networks. Alternatively, if Scherzer’s
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`registration and tracking requirements were ignored (despite Scherzer’s teachings to
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`the contrary) such that Scherzer’s access credentials could be freely disseminated to
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`and used by unregistered devices,
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`the foundation supporting Scherzer’s
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`“community”-based system—a mutual exchange of access credentials for the benefit
`
`of registered users—would be undermined. In fact, unfettered dissemination of
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`Scherzer’s access credentials would be problematic to its registered users and users
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`would not register with Scherzer’s service in the first place.
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`
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`The two examples allegedly supporting the Petition’s obviousness grounds
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`based on Brown and Scherzer also exemplify problems in the Petition’s obviousness
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`analysis. Both examples demonstrate the Petition’s backwards approach to the
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`obviousness analysis. “This type of piecemeal analysis is precisely the kind of
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`hindsight that the Board must not engage in.” In re NTP, Inc., 654 F.3d 1279, 1299
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`(Fed. Cir. 2011). (“Care must be taken to avoid hindsight reconstruction by using
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`the patent in suit as a guide through the maze of prior art references, combining the
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`right references in the right way so as to achieve the result of the claims in suit.”)
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`(internal citation and quotation omitted). More specifically, the First Example
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`requires a Scherzer-like software client be installed on one of Brown’s mobile
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`electronic devices, which is unnecessary to the network connectivity objective in the
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`First Example and only necessitated by the Petition’s unconcealed attempt to cover
`
`the claimed invention. With respect to the Second Example, the credential sharing
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`theories are inconsistent with the teachings in Brown and Scherzer when considered
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`in their entireties.
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`Petitioner supports its assertions with testimony from Dr. Jeremy Cooperstock
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`(“Cooperstock”). APPLE-1003. However, the Board should give little weight to
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`Cooperstock’s testimony because his methodology fails to follow the Graham
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`framework and embodies a clear case of hindsight reconstruction of the claimed
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`invention.
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`For these reasons, the independent claims are patentable over Brown and
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`Scherzer. All five grounds in the Petition build on the combination of Brown and
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`Scherzer as applied to the independent claims. See Pet. at 1. The additional
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`references cited in the Petition and relied upon for Grounds 1B-1E do not cure the
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`deficiencies of Brown and Scherzer relative to the independent claims. Thus, none
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`of the Challenged Claims would have been obvious to a POSITA.
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`1.
`Brown
`Brown discloses a technique for transferring credential data for a WiFi
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`network to a “first mobile electronic device” from a “second mobile electronic
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`device.” APPLE-1004, Abstract. With reference to Brown’s Figure 1 (reproduced
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`below), the second electronic device 105 can communicate with a communication
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`network 103 (e.g., the Internet) via a wireless link 185 that connects to an access
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`point 180 based on configuration data 182 stored in a memory 162. Id. at 4:39–49.
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`The configuration data can be transferred from the second device 105 to the first
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`device 101 via another link 190, which can be a Bluetooth link. Id. at 7:28-31. The
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`first device 101 can then connect to the access point 180 with the configuration data
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`182.
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`With respect to user(s) of the first and second mobile devices, Brown only
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`discloses that both “device 101 and device 105 can each be associated with the same
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`user (not depicted), and hence is can be desirable to communicate with the same
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`wireless access points, such as access point 180.” APPLE-1004, 5:13-17 (emphases
`
`added). When the same user controls both devices 101 and 105, misappropriation
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`of one user’s access credentials by another user is a non-issue. KOSS-2022, ¶39.
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`Brown does not disclose a host server that stores the credential data. Id., ¶42.
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`Petitioner does not assert that it does. Pet. at 16-20, 37-38; APPLE-1003, ¶¶28-34,
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`¶¶85-87. The configuration data 182 in Brown is stored on the devices 101, 105 and
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`the transmission of configuration data is device-to-device. KOSS-2022, ¶38
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`2.
`Scherzer
`To supply the missing claim elements—related to the host server that stores
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`the credential data for a wireless access point that is transmitted to the electronic
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`device for connecting the electronic device to the wireless access point—the Petition
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`turns to Scherzer. Pet. at 24-33 (Brown’s “focus is less on how the first device
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`obtains those credentials and the accompanying user experience... These challenges
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`are instead addressed by Scherzer through the use of a software client....” Pet. at 24-
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`25.) Scherzer is directed to a “collaborative community of users,” which allows the
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`mutual exchange of access information between registered users. APPLE-1005,
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`¶[0015]. In Scherzer’s network configuration process, a user registers with the
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`Scherzer service and then provides registration information to the Scherzer server,
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`including access information for that user’s access point. Id. at ¶[0020]. The
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`registered user allows other registered users to receive the access information and,
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`“in exchange,” can receive access information for other access points that were
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`provided to the Scherzer server by other registered users. Id. That way, a first user
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`can access another registered user’s access point when the first user cannot connect
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`to his/her own access point. Notably, sharing of access information requires a user
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`account and “acceptability” of that account. APPLE-1005, Abstract and claim 1;
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`KOSS-2022, ¶48. Network access is provided when “[a] request is received for
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`access information” and “[u]ser contribution account acceptability is determined.”
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`APPLE-1005, Abstract and claim 1.
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`Referring to Scherzer’s Figure 1 (reproduced below), registered user devices
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`104, 106, 108, 110, and 112 can access the Internet 114 via the wireless access points
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`100 and 102 of registered users. Id. at ¶[0020]. The application server 116, which
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`is also connected to the Internet 114, receives and stores the access information for
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`the access points of the community of registered users. Id.
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`Network access in Scherzer’s system is only provided to the registered users
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`104, 106, 108, 110, 112. KOSS-2022, ¶¶48, 54. In fact, in IPR2021-00600, which
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`is also directed to the ’451 Patent and also relies on Scherzer, Petitioner describes
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`the limitations on the sharing of access information in Scherzer as follows:
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`Scherzer discloses a system that expands Internet access by allowing
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`registered users to obtain credential data necessary to connect to access
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`point of other registered users. To enjoy this benefit, a device is
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`required to be registered with Scherzer’s service using a software client
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`that allows the device to communicate with an application server 116.
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`IPR2021-00600, Pet. at 27 (emphases added). Stated differently, Scherzer’s
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`software only shares access information between registered users.
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`Prior to providing access information, user account acceptability is
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`determined. Various means for determining acceptability are described in Scherzer
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`including “[a] having agreed to a trial period and being associated with a temporary
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`user contribution account, [b] having registered and being associated with a
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`temporary user contribution account, [c] having a temporary user contribution
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`account, [d] having a user contribution account, [e] having a user contribution
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`account balance, [f] having a user contribution account balance above a threshold
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`value, [g] having a user contribution account balance below a threshold value, and
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`[h] having a user contribution account balance in a range a values.” APPLE-1005,
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`claim 11. Notably, in every instance, acceptability is contingent on the existence of
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`a temporary or non-temporary user account, i.e., by registering with the Scherzer
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`software client. KOSS-2022, ¶¶46, 48.
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`The user contribution account in Scherzer “comprises a way to track the
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`amount of access that is given by a user to other users of the network … [and] a way
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`to track the amount of access that is used by a user of other users’ access points. In
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`some embodiments, user contribution accounting tracks the balance of bandwidth
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`provided by a user via the user’s access point to other users and the bandwidth used
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`by the user via other’s access points.” APPLE-1005, ¶[0022] (emphases added).
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`Therefore, Scherzer’s sharing of access information is limited to only registered
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`users based on the acceptability of their user account, which can be determined by
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`tracking the user’s access. KOSS-2022, ¶¶46-49.
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`A user’s access can be tracked by their user registration information, which is
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`provided during the registration process. Id. The “registration information is used
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`by the provider of the network to set up a user contribution account and to enable
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`other registered users of the network to access the user’s access point.” APPLE-
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`1005, ¶[0020] (emphasis added). For example, a media access control (MAC)
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`address can be provided to Scherzer’s server in the registration information required
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`for creating a user account. Id. at ¶[0021]. A MAC address is a unique identifier
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`that can be used as a network address for communications, including for Wi-Fi
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`networks. KOSS-2022, ¶50. A POSITA would have understood that registered
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`devices would have a MAC address identifier that is associated with a user account,
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`and unregistered devices would have a MAC address identifier that is not associated
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`with a user account. Id. Tracking by Scherzer’s service ensures unregistered
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`devices, i.e., those with a MAC address that is not associated with a registered user,
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`do not obtain and use Scherzer’s access credentials to connect to a registered user’s
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`wireless network. Id. Simply put, a POSITA would understand from Scherzer that
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`when an unregistered device attempts to connect to an access point in Scherzer’s
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`community of registered users, connection to the access point would be denied
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`because the MAC address of the unregistered device is not associated with any
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`registered user in Scherzer’s community. Id.
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`3.
`Cooperstock’s Testimony
`Cooperstock’s declaration summarizes Brown, then summarizes Scherzer,
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`then proposes the hypothetical Brown-Scherzer combination in a blatant attempt to
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`merely cover the claim elements, without assessing whether it would have been
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`obvious to a POSITA to make the combination proposed in the Petition.
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`Cooperstock admitted to merely looking at the references provided by Petitioner’s
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`counsel “to question whether the claims of the ’451 were actually novel or had been
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`covered already by ... the prior art references.” KOSS-2015, 17:4-8 (emphasis
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`added). This testimony coincides with his direct testimony that Petitioner’s counsel
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`merely asked him “to consider whether certain reference teach or suggest the
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`features recited” in the Challenged Claims. APPLE-1003, ¶3. Such an analytical
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`approach is result-oriented and compels improper hindsight reconstruction of the
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`claimed invention. Thus, Cooperstock’s testimony has little probative value and
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`should be given little weight.
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`III. THE CHALLENGED CLAIMS WOULD NOT HAVE BEEN
`OBVIOUS
`A. The Brown-Scherzer Combination
`The Petition asserts that independent claims 1 and 18 are unpatentable under
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`§ 103 over Brown (APPLE-1004) and Scherzer (APPLE-1005) and proposes the
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`Brown-Scherzer combination, which is reproduced below from the Petition.
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`The Petition then provides two examples allegedly demonstrating advantages
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`of the Brown-Scherzer combination in practice. Pet. at 16-59. In each example,
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`access credentials stored on a Scherzer-like server (i.e., Scherzer’s access
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`credentials) are supposedly transmitted to and used by a mobile device that is not
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`registered with Scherzer’s service (i.e., the unregistered mobile electronic device
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`101). The Petition proposes that the Brown-Scherzer combination would enable the
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`transmission of Scherzer’s access credentials from the mobile device 105 to the
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`mobile device 101 so that the mobile electronic device 101 can use those access
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`credentials to access a wireless network of a registered user to Scherzer’s
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`community, Pet. at 28-33—even though the mobile electronic device 101 is not
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`registered with the Scherzer-like service, and, thus, is not associated with a user
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`account or a registered MAC address thereof. Such a transmission of access
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`credentials from the Scherzer-like server to an unregistered device and use thereof
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`by the unregistered device is a blatant attempt merely to “cover” the limitations of
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`claim 1 related to credential data received and stored on a server and transmitted to
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`an electro
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