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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`KOSS CORPORATION,
`Patent Owner.
`____________
`
`IPR2021-00255, IPR2021-00305, and IPR2021-003811
`Patents 10,298,451 B1, 10,506,325 B1, and 10,491,982 B2
`____________
`
`Paper 29
`
`Trials@uspto.gov
`Tel: 571-272-7822 Entered: September 1, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`Before DAVID C. MCKONE, GREGG I. ANDERSON,
`and NORMAN H. BEAMER, Administrative Patent Judges.
`
`BEAMER, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`1 This Order addresses issues that are common to these cases. We exercise our
`discretion to issue the Order to be filed in each case. The parties are not authorized
`to use this style heading for any subsequent papers.
`
`

`

`
`
`IPR2021-00255, IPR2021-00305, and IPR2021-00381
`Patents 10,298,451 B1, 10,506,325 B1, and 10,491,982 B2
`
`On August 26, 2021, a conference call was held with the parties at Patent
`Owner’s request. Patent Owner requested the call to seek authorization to file a
`motion for additional discovery, pursuant to 37 CFR § 42.51(b)(2)(i). Patent
`Owner seeks sales data for specific products of Petitioner whose commercial
`success is alleged to be relevant to the nonobviousness of the challenged claims in
`the subject IPRs.2 Petitioner opposes Patent Owner’s request for authorization to
`file a motion for additional discovery.
`In an inter partes review, the moving party bears the burden of showing that
`the relief requested should be granted. 37 C.F.R. § 42.20(c). Under the Leahy-
`Smith America Invents Act, additional discovery, such as that requested here, is
`available for “what is otherwise necessary in the interest of justice.” 35 U.S.C.
`§ 316(a)(5); see also 37 C.F.R. § 42.51(b)(2)(i) (“The moving party must show that
`such additional discovery is in the interests of justice . . . .”). As stated in Garmin
`International, Inc. v. Cuozzo Speed Techs. LLC, Case IPR2012-00001 (PTAB Mar.
`5, 2013) (Paper 26, 5–6) (precedential):
`[I]n inter partes review, discovery is limited as compared to that
`available in district court litigation. Limited discovery lowers the
`cost, minimizes the complexity, and shortens the period required for
`dispute resolution. There is a one-year statutory deadline for
`completion of inter partes review, subject to limited exceptions.
`35 U.S.C. § 316(a)(11); see also 37 C.F.R. § 42.100(c). What
`constitutes permissible discovery must be considered with that
`constraint in mind.
`
`
`2 Patent Owner specifically seeks sales revenue and quantity of units sold, by
`calendar quarter, since the commercial introduction of various Apple products —
`viz., for IPR2021-00255, the HomePod and HomePod Mini; for IPR2021-00305,
`the Powerbeats Pro; and for IPR2021-00381, the AirPods (1st and 2nd generations)
`and AirPods Pro.
`
`
`
`2
`
`

`

`
`
`IPR2021-00255, IPR2021-00305, and IPR2021-00381
`Patents 10,298,451 B1, 10,506,325 B1, and 10,491,982 B2
`
`Also, “[a] party should seek relief promptly after the need for relief is identified.
`Delay in seeking relief may justify a denial of relief sought.” 37 C.F.R. § 42.25(b)
`(emphasis added).
`We determine that Patent Owner’s request is untimely. On November 6,
`2020, in the co-pending related litigation, Koss Corporation v. Apple Inc., Case
`No. 6:20-cv-00665 (W.D. Tex.), Patent Owner provided its contentions that the
`patents challenged in these IPRs were infringed by the sale of the same Apple
`products that are covered by the proposed discovery requests. IPR2021-00255, Ex.
`1014. Patent Owner stated at the telephone conference that it based its
`infringement contentions, and intends to base its allegations of nexus (that the
`Apple products use the inventions of the challenged patents), on publically
`available information. Shortly after the infringement contentions were served,
`Petitioner filed its IPR Petitions (November 25, 2020, for IPR2021-00255 (Paper
`2); December 15, 2020, for IPR2021-00305, (Paper 2); January 4, 2021 for
`IPR2021-00381 (Paper 2)). Patent Owner then knew that the validity of its patents
`were challenged as obvious pursuant to 35 U.S.C. § 103, raising the issue of
`commercial success attributable to the subject inventions based on the sale of the
`Apple products then accused of infringement, and the subject of the present
`discovery requests. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`Therefore, after these proceedings were instituted (IPR2021-00255 and IPR2021-
`00305 were instituted June 3, 2021, and IPR2021-00381 on July 2, 2021 (Papers
`22, 14, 15, respectively)), Patent Owner should have promptly sought the
`discovery at issue.
`Instead, according to the representations made at the August 26 conference,
`Patent Owner requested Petitioner to voluntarily provide the subject discovery
`
`
`
`3
`
`

`

`
`
`IPR2021-00255, IPR2021-00305, and IPR2021-00381
`Patents 10,298,451 B1, 10,506,325 B1, and 10,491,982 B2
`
`approximately a month prior to raising the issue with the Panel.3 According to
`Petitioner, it denied Patent Owner’s request shortly after it was made. Patent
`Owner then waited almost a month before seeking to file a motion for additional
`discovery.
`At this point, permitting a motion would unduly disrupt the schedule set
`forth in the Scheduling Orders entered in these proceedings. Papers 23, 15, 16,
`respectively. It already is too late for Patent Owner to include such information in
`its Patent Owner Responses in IPR2021-00255 and IPR2021-00305. Were we to
`grant Patent Owner’s request to file its motion for supplemental discovery, given
`the default times for briefing the motion4, any decision on a motion would at best
`come down shortly before Patent Owner’s Sur-Reply briefs are due (January 3,
`2022, for IPR2021-00255 and IPR2021-00305 (Papers 23, 15), and February 1,
`2022, for IPR2021-00381 (Paper 16)). Further post-decision delay is likely, at
`least given Petitioner’s representations regarding the confidentiality of the product
`sales information requested, requiring entry of a Protective Order with additional
`protections beyond those of the Default Protective Order promulgated in the Trial
`Practice Guide.5
`Even if the discovery were ultimately provided, any forthcoming
`information would not be usable under the current schedule. As stated above,
`Patent Owner’s Responses to the Petitions would have been long past. Patent
`
`
`3 Patent Owner raised the issue to the Panel by email on August 20, 2021.
`4 The default filing time for an opposition is one month after service of a motion;
`and for a reply, one month after service of the opposition. 37 C.F.R. § 42.25(a).
`Petitioner indicated at the conference that it would not agree to an expedited
`hearing schedule, and therefore the default schedule would likely apply.
`5 Patent Trial and Appeal Board, Consolidated Trial Practice Guide, 117–122
`(Nov. 2019) (“Trial Practice Guide”), available at https://www.uspto.gov/sites/
`default/files/documents/tpgnov.pdf.
`
`
`
`4
`
`

`

`
`
`IPR2021-00255, IPR2021-00305, and IPR2021-00381
`Patents 10,298,451 B1, 10,506,325 B1, and 10,491,982 B2
`
`Owner stated at the August 26 conference that it would seek to submit such
`information with its Sur-Replies. However, even if the information became
`available shortly before the due dates of the Sur-Replies, it would not normally be
`appropriate to include anything reflecting that information in those papers:
`The sur-reply may not be accompanied by new evidence other
`than deposition transcripts of the cross-examination of any reply
`witness. Sur-replies should only respond to arguments made in reply
`briefs, comment on reply declaration testimony, or point to cross-
`examination testimony.
`Trial Practice Guide, 73–74; see also 37 C.F.R. § 42.23(b).
`We are not persuaded that it would be in the interest of justice to authorize
`the discovery motion sought by Patent Owner, which, even if granted, would then
`require us to schedule additional briefing towards the end of the normal schedule in
`order to take into account new allegations of commercial success, the significance
`of which is at most speculative at this stage.
`
`
`ORDER
`
`Accordingly, it is hereby:
`ORDERED that Patent Owner’s request for authorization to file a motion for
`additional discovery is DENIED.
`
`
`
`5
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`

`

`IPR2021-00255, IPR2021-00305, and IPR2021-00381
`
`Patents 10,298,451 B1, 10,506,325 B1, and 10,491,982 B2
`
`
`
`FOR PETITIONER:
`Walter Renner
`Roberto Devoto
`Ryan Chowdhury
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`devoto@fr.com
`rchowdhury@fr.com
`
`FOR PATENT OWNER:
`Mark Knedeisen
`Lauren Murray
`Brian Bozzo
`Ragae Ghabrial
`Michelle Weaver
`K & L GATES LLP
`mark.knedeisen@klgates.com
`lauren.murray@klgates.com
`brian.bozzo@klgates.com
`ragae.ghabrial@klgates.com
`michelle.weaver@klgates.com
`
`
`
`6
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