KSUNITED 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.
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`
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`Case IPR2021-00255
`Patent 10,298,451
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`
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`
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`

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`Case IPR2021-00255
`Attorney Docket No: 50095-0020IP1
`
`
`TABLE OF CONTENTS
`
`2. 
`
`3. 
`
`INTRODUCTION ........................................................................................................... 5 
`I.   
`II.   MOTIVATION TO COMBINE BROWN AND SCHERZER ........................... 7 
`The Brown-Scherzer Combination Is Consistent With Scherzer’s
`A. 
`Disclosure .............................................................................................. 8 
`B.  Koss’s Three Reasons Why The Brown-Scherzer Combination
`Deviates From Scherzer’s Disclosure Are Fatally Flawed ................. 12 
`The First Reason Is Not Credible Because PO’s Allegations Of
`1. 
`“Scherzer’s Account Acceptability Requirement And Associated
`Tracking” Are Limited To Specific Embodiments. ................... 13 
`The Second Reason Fails Because Koss’s Allegations Of
`“Unfettered Dissemination Of Access Credentials” Finds No
`Support In Scherzer ................................................................... 14 
`The Third Reason Is Flawed Because Koss’s “Simpler”
`Approach To Network Connectivity Ignores Specific
`Advantages Of The Brown-Scherzer Combination ................... 16 
`C.  Koss’s Positions on the Brown-Scherzer Combination Are Also
`Legally Deficient ................................................................................. 18 
`1. 
`Koss’s “Teaching Away” Arguments Are Unpersuasive ......... 18 
`2. 
`Koss’s Position Also Improperly Requires Bodily Incorporation
`Of Scherzer’s Account Acceptability Requirement and
`Associated Tracking .................................................................. 18 
`III.  THE BROWN-SCHERZER COMBINATION IS NOT A PRODUCT OF
`HINDSIGHT ................................................................................................................... 20 
`The Brown-Scherzer Combination Is A Predictable Solution To
`A. 
`Known Problems of Network Connectivity ........................................ 20 
`The Petition’s Examples of The Brown-Scherzer Combination Both
`Implicate Predictable Problems ........................................................... 22 
`The First Example Implicates Predictable Problems Relating to
`1. 
`Configuring WiFi Connectivity For A Tablet ........................... 23 
`
`B. 
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`Case IPR2021-00255
`Attorney Docket No: 50095-0020IP1
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`2. 
`
`The Second Example Implicates Predictable Problems Of
`Accessing the Internet In Locations Where A User Does Not
`Have Access To Network Credential Information .................... 24 
`IV.  SECONDARY CONSIDERATIONS ...................................................................... 25 
`A.  Unclaimed Features In The PowerBeats Pro Prevent Any Presumption
`Of Nexus .............................................................................................. 26 
`B.  Koss Fails To Show That Any Alleged Commercial Success Is The
`Direct Result Of The Unique Characteristics Of The Challenged
`Claims .................................................................................................. 29 
`V.  CONCLUSION .............................................................................................................. 29 
`
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`Case IPR2021-00255
`Attorney Docket No: 50095-0020IP1
`
`LIST OF EXHIBITS
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`APPLE-1001
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`U.S. Patent No. 10,298,451 to Koss, et al. (“the ’451 patent”)
`
`APPLE-1002
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`Excerpts from the Prosecution History of the ’451 patent (“the
`Prosecution History”)
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`APPLE-1003
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`Declaration of Dr. Jeremy Cooperstock
`
`APPLE-1004
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`U.S. Pat. No. 9,021,108 (“Brown”)
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`APPLE-1005
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`U.S. Pat. App. Pub. No. 2007/0033197 (“Scherzer”)
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`APPLE-1006
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`U.S. Provisional Pat. App. No. 60/687,463 (“’463 Provisional”)
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`APPLE-1007
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`U.S. Provisional Pat. App. No. 60/728,918 (“’918 Provisional”)
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`APPLE-1008
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`U.S. Pat. App. Pub. No. 2007/0245028 (“Baxter”)
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`APPLE-1009
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`U.S. Pat. App. Pub. No. 2011/0025879 (“Drader”)
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`APPLE-1010
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`U.S. Pat. App. Pub. No. 2010/0307916 (“Ramey”)
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`APPLE-1011
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`U.S. Pat. App. Pub. No. 2010/0165879 (“Gupta”)
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`APPLE-1012
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`U.S. Provisional Pat. No. 61/386,716 (“’716 Provisional”)
`
`APPLE-1013
`
`RESERVED
`
`APPLE-1014
`
`Plaintiff KOSS Corporations’ Preliminary Infringement
`Contentions, KOSS Corporation v. Apple Inc., 6:20-cv-00665
`(W.D.Tex.)
`
`APPLE-1015
`
`Example Order Governing Proceedings - Patent Case
`
`APPLE-1016
`
`Agreed [Proposed] Scheduling Order, KOSS Corporation v.
`Apple Inc., 6:20-cv-00665 (W.D.Tex.)
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`iii
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`Case IPR2021-00255
`Attorney Docket No: 50095-0020IP1
`
`APPLE-1017
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`APPLE-1018
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`Katie Buehler, “Texas Patent Trials Halted Due to COVID-19
`Spike,” Law360, available at
`https://www.law360.com/ip/articles/1330855/texas-patent-
`trials-halted-due-to-covid-19-spike.
`
`Scott McKeown, District Court Trial Dates Tend to Slip After
`PTAB Discretionary Denials, available at
`https://www.patentspostgrant.com/district-court-trial-dates-
`tend-to-slip-after-ptab-discretionary-denials/ (Jul. 24, 2020)
`
`APPLE-1019
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`Transcript of November 5, 2020 Telephonic Hearing from
`Fintiv, Inc. v. Apple, Inc., Civil Action No. A-19-CV-1238
`(WDTX)
`
`APPLE-1020
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`Declaration of Seth Sproul ISO Motion for Pro Hac Vice
`Admission
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`APPLE-1021
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`Updated Declaration of Seth Sproul
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`APPLE-1022
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`Declaration of Michael Pieja
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`APPLE-1023
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`Supplemental Declaration of Jeremy Cooperstock
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`APPLE-1024
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`Joseph C. McAlexander III Deposition Transcript, Dec. 15,
`2021
`
`APPLE-1025
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`IPR2021-00600, Ex. No. KOSS-2025, Jeremy Cooperstock
`Deposition Transcript
`
`APPLE-1026
`
`U.S. Pat. App. Pub. No. 2008/0119138 (“Kim”)
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`Case IPR2021-00255
`Attorney Docket No: 50095-0020IP1
`
`I.
`
`INTRODUCTION
`Koss’s primary argument against the Petition is that a POSITA would not
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`have been led to combine Brown and Scherzer. This position focuses exclusively
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`on motivation to combine, and does not dispute that the prior art teaches the
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`substantive limitations recited in claims 1-21 of the ’451 patent (“Challenged
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`Claims”). But Koss’s purported lack of combinability relies heavily on an overly
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`narrow interpretation of Scherzer that departs from Scherzer’s express disclosure
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`by picking and choosing only certain portions of Scherzer while entirely
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`disregarding other portions. For example, Koss characterizes Scherzer’s user
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`contributions account and tracking features to be the key aspect to its disclosure
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`despite Scherzer unambiguously teaching that these features are limited to specific
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`embodiments of its invention. Instead, when properly accounting for the full
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`breadth of Scherzer’s disclosure, a POSITA would have understood Scherzer to
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`provide a broader teaching and motivation—i.e., to improve access to the Internet
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`in different locations—a motivation that is not only consistent with, but advanced
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`by, the Brown-Scherzer combination.
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`Koss’s incessantly demands that the Brown-Scherzer combination bodily
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`incorporate Scherzer’s user account and tracking embodiments. But no such
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`requirement exists to demonstrate obviousness, and the law in fact states the
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`opposite. Consistent with obviousness jurisprudence, the Board has repeatedly
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`declined to credit attacks on prior art combinations that are premised on bodily
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`incorporation of a secondary prior art reference. The same holds true here,
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`particularly when the Petition does not rely on these embodiments for the proposed
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`combination. Nor does the Petition apply teachings of these embodiments to any
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`feature recited in the Challenged Claims. Koss’s attacks, therefore, are hollow and
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`should be dismissed.
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`Koss’s attempt to limit the scope of Scherzer’s teachings in criticizing the
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`Brown-Scherzer combination also reveals that its overall position is legally
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`untenable. Its position effectively advocates that Scherzer’s disclosure of user
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`contributions account and tracking features teaches away from the Brown-Scherzer
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`combination. But the law is clear that a reference only teaches away from a feature
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`when it discourages or disparages the feature. Scherzer does neither. Thus, even if
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`Koss’s myopic view of Scherzer were improperly credited, Scherzer is at best
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`silent in addressing the configurations present in the Brown-Scherzer combination.
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`Mere silence does not amount to teaching away.
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`To further its attack on the Brown-Scherzer combination, Koss accuses the
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`proposed combination as being a product of improper hindsight and superficially
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`charges that there is no other reason to have combined the prior art other than to
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`achieve satisfaction of the claim language. In doing so, Koss completely ignores
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`the clearly predictable nature of the problems addressed by the Brown-Scherzer
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`Case IPR2021-00255
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`combination that a POSITA would have readily recognized based on the teachings
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`of Brown and Scherzer. The Petition addressed these problems with two examples
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`identifying opportunities to improve the individual disclosures of Brown and
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`Scherzer and demonstrating how the Brown-Scherzer combination provides
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`solutions in each circumstance.
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`In a last-ditch effort to save the claims, Koss then asserts that sales of
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`HomePod and HomePod Mini (“HomePod Products”)—products it accuses Apple
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`of infringing—demonstrate non-obviousness based on secondary considerations of
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`commercial success. As an initial matter, the HomePod Product do not practice
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`any of the challenged claims, and Koss makes no serious effort to prove otherwise.
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`Further, Koss’s allegations of nexus are both factually and legally deficient. They
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`are factually deficient because Koss failed to analyze claim features and, in doing
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`so, ignored several critical unclaimed features in the HomePod Products. They are
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`also legally deficient because they failed to sufficiently demonstrate how the sales
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`of the HomePod Products were a direct result of the unique characteristics of the
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`Challenged Claims.
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`II. MOTIVATION TO COMBINE BROWN AND SCHERZER
`Despite Koss’s attempt to derail the Brown-Scherzer combination,
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`Scherzer’s disclosure is not only consistent with the combination, but actually
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`reinforces it. A close inspection of Scherzer reveals that Koss’s attack is premised
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`on an overly narrow interpretation of Scherzer that focuses only on specific
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`embodiments while turning a blind eye to Scherzer’s broader disclosure. Indeed,
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`the specific embodiments that form the basis of Koss’s attack are not even relied
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`on in the Petition. See APPLE-1003, ¶¶17-18.
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`A. The Brown-Scherzer Combination Is Consistent With Scherzer’s
`Disclosure
`The Petition explained that the Brown-Scherzer combination involves
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`complementary disclosures that a POSITA would have understood to improve
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`network access by allowing users to access the Internet on multiple devices and in
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`multiple locations. See Pet., 24-28. Indeed, by allowing a secondary device of a
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`registered user to obtain Internet access using network credential information
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`stored on a Scherzer-like server, the user is able to access the Internet on multiple
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`devices. Id. Such a configuration is consistent with, and indeed supported by,
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`Scherzer’s overall motivation to provide increased Internet connectivity through a
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`collaborative community of users. Id., 20-25; APPLE-1005, ¶[0005].
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`Koss detracts from this basic understanding and focuses instead on specific
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`teachings within Scherzer relating to user contribution accounts and tracking
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`bandwidth usage that it claims would undercut the proposed combination. See
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`Resp., 20-22, 24-30. But Scherzer clearly describes—in various locations within
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`its disclosure—that these teachings are limited to “some embodiments.” See, e.g.,
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`Scherzer, ¶[0015], [0016]. Scherzer is therefore clear that the broadest conception
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`of its disclosed invention is to facilitate different users to quickly download access
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`credentials onto their device so that they can access the Internet via wireless access
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`points located in different locations. Notably, Scherzer’s disclosure makes it clear
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`that strict accounting and tracking of subsequent access by the users to the wireless
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`access points are added features limited to only certain embodiments of this
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`broader invention. APPLE-1023, ¶¶11-12.
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`Koss characterizes Scherzer’s system as “control[ling] the dissemination of
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`access credentials such that only registered users can obtain the benefit of other
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`registered user’s access credentials.” Resp., 20. This characterization is irrelevant
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`to the Brown-Scherzer combination, where both devices are associated with the
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`same “registered user” who would “obtain the benefit” of shared credentials. See
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`Pet., 24-33. Further, there is no prohibition in Scherzer regarding what a registered
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`user can do with downloaded credential information, such as providing the
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`credential information to another device or providing the credential information to
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`other users. Koss tacitly admits this as it fails to cite to any disclosure in Scherzer
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`to support its characterization. See id., 21-22; APPLE-1023, ¶¶13-16.
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`Indeed, Dr. Cooperstock confirmed this point in deposition in a related IPR
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`proceeding involving the same parties and the ’451 Patent (IPR2021-00592):
`
`Q. Dr. Cooperstock, does Scherzer include any teachings indicating
`that devices of unregistered users are prohibited from accessing
`credential information of wireless access points of Scherzer’s service?
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`A. No, Scherzer does not prescribe any limits to what kind of users,
`either registered or unregistered, can make use of the service.
`Q. Does Scherzer include any teachings indicating that an
`unregistered device of a registered user, for example, a second device
`of a registered user that has not been registered is prohibited from
`accessing credential information of wireless access points of
`Scherzer’s service?
`A. No. Scherzer’s descriptions throughout, I mean, from the very
`beginning of the detailed description, are all about the user. It’s about
`providing the user with access and user’s access points, and the user
`may choose to deny or – to grant or deny. Scherzer is user specific
`and user centered, not device-centric. And it would defeat the
`purposes of Scherzer to limit what devices or how many devices a
`user can connect to access points.
`APPLE-1025, 74:13-75:14
`Dr. Cooperstock further explains that “Scherzer provides no teaching that
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`would be understood as prohibiting how credential information, once downloaded
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`using Scherzer’s service, can be used to connect to a wireless access point.”
`
`APPLE-1023, ¶22; see also id., ¶¶13-18. For example, “Scherzer does not teach
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`that the network credential information downloaded from Scherzer’s server is
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`encrypted.” Id., ¶22. In failing to disclose any such security mechanism for
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`protecting or otherwise obfuscating the downloaded credential information,
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`Scherzer suggests a lack of “concern about the user that receives the credential
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`information subsequently accessing and providing the downloaded credential
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`information to other devices or users.” Id. In deposition, Koss’s expert, Mr.
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`Joseph C. McAlexander III confirmed the same understanding. APPLE-1024,
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`316:21-317:1. When further cross-examined, Mr. McAlexander could not point to
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`anything in Scherzer discussing encrypting the credential information provided to
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`users. Instead, he retreated to an irrelevant discussion of what encryption protocol
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`may or may not be used by a wireless access point:
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`Paragraph 15 does not indicate that that -- that information generally
`is encrypted…if you look at figure 4 as an example in Scherzer when
`you determine the access information with respect to a visible access
`point, the information that’s associated with that point may or []
`may not be encrypted. It depends upon the access point.
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`See id., 326:21-327:5 (emphasis added). This confusion is just one of several
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`examples of his and Koss’s misunderstandings of Scherzer’s disclosure.
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`Koss also attempts to attack the combination by suggesting that a user’s
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`second device would be unable to connect to a wireless access point “if the MAC
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`address was not identified by Scherzer’s server.” Resp., 28 (citing KOSS-2022,
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`¶¶50-52). But this position confuses (i) the process by which Scherzer’s server
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`determines whether it will enable downloading of credential information to a
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`requesting user and (ii) the process by which a wireless access point determines
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`whether it will allow a device that provides credential information to connect to
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`the wireless access point. To clarify, Dr. Cooperstock explains that “[w]hile it is
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`true that the MAC address can be used by the Scherzer server to determine whether
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`to provide credential information to a certain device, there is no disclosure of a
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`wireless access point using the MAC address of a device to authenticate the device
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`prior to permitting a connection.” APPLE-1023, ¶23 (citing Scherzer, [0016],
`
`[0021], [0024]). Dr. Cooperstock also observes that “Scherzer teaches that
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`registration information can include a device MAC address, but does not disclose
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`or suggest that a wireless access point verifies the MAC address prior to allowing a
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`device to connect to the wireless access point.” Id.
`
`B. Koss’s Three Reasons Why The Brown-Scherzer Combination
`Deviates From Scherzer’s Disclosure Are Fatally Flawed
`Koss provides three flawed reasons to support its position that the Brown-
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`Scherzer combination deviates from Scherzer’s disclosure. First, Koss states that
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`transmission and use of Scherzer’s access credentials by an unregistered device
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`ignores the account acceptability requirement and associated tracking in Scherzer.
`
`Resp., 24-29. Second, Koss states that Scherzer discourages unfettered
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`dissemination of access credentials to unregistered devices. Id., 29-30. Finally,
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`Koss states that a simpler approach to network connectivity already exists and
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`therefore the Brown-Scherzer combination is unnecessary. Id., 30. Each of these
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`purported reasons, however, are either misguided and/or rely on superficially
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`narrow interpretations of Scherzer’s disclosure.
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`1.
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`Case IPR2021-00255
`Attorney Docket No: 50095-0020IP1
`The First Reason Is Not Credible Because PO’s Allegations Of
`“Scherzer’s Account Acceptability Requirement And Associated
`Tracking” Are Limited To Specific Embodiments.
`This argument is flawed because (1) it assumes an unduly narrow
`
`interpretation of Scherzer’s disclosure, disregarding Scherzer’s teachings that user
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`account acceptability requirements and associated tracking are limited to specific
`
`embodiments, (2) it fails to support this unduly narrow interpretation through
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`specific citations to Scherzer’s disclosure, and (3) it effectively argues that
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`Scherzer teaches away from the Brown-Scherzer combination and yet Scherzer
`
`lacks the type of disparaging disclosure against the proposed combination
`
`necessary to support a teaching away. APPLE-1023, ¶19.
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`As discussed above, Scherzer makes clear—on several occasions—that
`
`teachings relating to “account acceptability requirement and associated tracking”
`
`are limited to “some embodiments” and not applicable to the disclosure as a whole.
`
`See, e.g., Scherzer, ¶¶[0015], [0016]. These disclosures indicate that in some other
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`embodiments, account acceptability and registration information is not needed to
`
`send a request to a user’s access point to obtain access. See APPLE-1023, ¶¶20-
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`24.
`
`Moreover, Koss’s statement that “Scherzer only provides access credentials
`
`to registered users having an acceptable user account” has no bearing on the
`
`Brown-Scherzer combination because the two examples discussed in the Petition
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`Case IPR2021-00255
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`involve a registered user with a user account accessing credential information on a
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`secondary device (Brown’s device 101, or a tablet). Resp., 25. Indeed, in the
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`Petition’s contemplated scenarios, the access credentials are limited to registered
`
`users—consistent with even Koss’s narrow understanding of Scherzer.
`
`2.
`
`The Second Reason Fails Because Koss’s Allegations Of
`“Unfettered Dissemination Of Access Credentials” Finds No
`Support In Scherzer
`Koss mischaracterizes the Brown-Scherzer combination, alleging that it
`
`“permit[s] the widespread and unfettered dissemination of network/access point
`
`access credentials of registered user to unregistered devices for use by the
`
`unregistered devices.” Resp., 21-22. But in each example discussed in the
`
`Petition, the unregistered device that is provided with access credentials is
`
`specifically associated with a registered user (i.e., a user that has previously
`
`registered with Scherzer’s service on a registered device). This type of credential
`
`sharing is not “widespread and unfettered.” Neither Koss nor Mr. McAlexander
`
`explain how—or cite to any evidence suggesting that—a registered user providing
`
`credential information to a commonly-owned device leads to “unfettered access” to
`
`such information. Id., 29-30; KOSS-2022, ¶63. Indeed, there is also no teaching
`
`in Scherzer that this type of configuration is prohibited or undesirable. APPLE-
`
`1023, ¶25.
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`Further, Scherzer does not discourage or disparage dissemination of access
`
`credentials once a registered user has obtained them. APPLE-1023, ¶26. Rather,
`
`Scherzer’s teachings describe that device registration is required for a user to
`
`obtain access credentials through Scherzer’s service in the first instance. Id.
`
`However, Scherzer does not disclose any protection mechanisms that prevent
`
`dissemination of the access credentials once the registered user has obtained them.
`
`Id. For example, as Dr. Cooperstock explains, “Scherzer does not disclose that the
`
`access credentials are encrypted or that the registered user is restricted in some
`
`fashion as to how he/she uses the obtained access credentials.” Id.
`
` To distract from this shortcoming, Koss introduces the concept of tracking
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`by MAC address—even though this concept is absent from Scherzer. Resp., 25.
`
`In deposition, Mr. McAlexander admitted that Scherzer does not disclose tracking
`
`using MAC address:
`
`Q: You would agree that Scherzer does not specifically describe
`tracking a device via a MAC address, right?
`A: I believe I said that. He doesn't specifically say that.
`
`APPLE-1024, 334:12-16.
`
`Scherzer also lacks any teaching that MAC address is used to determine
`
`whether any device should be able to access a wireless access point that is part of
`
`Scherzer’s service. Rather, Scherzer references MAC addresses only three times
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`within its disclosure, two of which describe that registration information includes
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`Case IPR2021-00255
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`MAC address (APPLE-1005, ¶¶[0016], [0021]) and one of which describes that
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`MAC address can be used to generate credential information (id., ¶[0024]).
`
`Scherzer also does not address unregistered devices using credential information to
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`access wireless access points that are part of its service, and thus, does not
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`specifically describe that these devices would be “denied connection” as Koss
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`alleges. Resp., 25; APPLE-1023, ¶27.
`
`3.
`
`The Third Reason Is Flawed Because Koss’s “Simpler”
`Approach To Network Connectivity Ignores Specific
`Advantages Of The Brown-Scherzer Combination
`Koss argues that “a more straightforward and legitimate approach to
`
`improving network connectivity is available” since “Brown’s mobile device 105
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`could transfer access credentials that were not obtained from Scherzer’s service to
`
`the mobile device 101.” Resp., 22-23. But this argument ignores specific
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`advantages provided by the Brown-Scherzer combination that improve upon the
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`individual disclosures of Brown and Scherzer. See APPLE-1023, ¶¶28-30.
`
`These specific advantages emerge in the second example discussed in the
`
`Petition when the user is in a location where “neither the smartphone nor tablet
`
`have the access information necessary to establish a connection with any WiFi
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`access points in their vicinity since the devices are out of range of the user’s work
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`WiFi access point.” Pet., 30. The Brown-Scherzer combination is advantageous in
`
`this example because the disclosures of either reference alone would not provide a
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`Case IPR2021-00255
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`better solution. Id., 30-34. Brown assumes that a first device already has network
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`credential information, so its techniques do not help the user obtain network
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`credential information on either the smartphone or the tablet. As for Scherzer,
`
`though a Scherzer-like software client installed on the first device would allow a
`
`user to access network credential information, the user would still need to
`
`manually input the network credential information onto the tablet to allow it to
`
`connect to the Internet. With the Brown-Scherzer combination, a user could not
`
`only obtain network credential information (using Scherzer’s teachings) on the
`
`smartphone, but then utilize Brown’s automated configuration technique to allow
`
`the tablet to access the Internet without requiring any manual entry. APPLE-1023,
`
`¶29.
`
`Koss’s proposal for the tablet to “simply download the Scherzer-like
`
`software” onto it to “gain access to Scherzer’s community of wireless
`
`networks/access points” similarly ignores the second example. Resp., 22. As
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`discussed above, in this scenario, neither the smartphone nor the tablet have access
`
`to credential information since the user is located in an area where the only nearby
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`wireless access points are those of other users. See Pet., 30-34. The tablet would
`
`not be able to able to access the Internet to download the Scherzer-like software
`
`since it (a) is unable to connect to the nearby wireless access points and (b) lacks
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`cellular connectivity. Id.; APPLE-1023, ¶30.
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`Case IPR2021-00255
`Attorney Docket No: 50095-0020IP1
`C. Koss’s Positions on the Brown-Scherzer Combination Are Also
`Legally Deficient
`1.
`Koss’s “Teaching Away” Arguments Are Unpersuasive
`As discussed above, Koss’s sole evidentiary support for its overall position
`
`is declaration testimony of Mr. McAlexander. But the McAlexander Declaration
`
`essentially parrots the same deficient analysis discussed in the previous section.
`
`Compare Resp., 24-30 and KOSS-2022, ¶¶48-57. And, as explained above, this
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`position finds no support in Scherzer, which does not criticize, discredit, or
`
`discourage the teachings in the Brown-Scherzer combination. The Board has
`
`previously found similar teaching away arguments unpersuasive. See IPR2017-
`
`00707, Pap. 81, 33-35 (PTAB July 31, 2018) (stating that patent owner’s argument
`
`that a reference teaches away from a certain feature was conclusory because patent
`
`owner fails to show any portion of the reference that criticizes, discredits, or
`
`discourages use of the feature).
`
`2.
`
`Koss’s Position Also Improperly Requires Bodily Incorporation
`Of Scherzer’s Account Acceptability Requirement and
`Associated Tracking
`The bedrock of obviousness is “what the combined teachings of those
`
`references would have suggested to those of ordinary skill in the art,” not “whether
`
`the features of a secondary reference may be bodily incorporated into the structure
`
`of the primary reference.” In re Keller, 642 F.3d 413, 425 (CCPA 1981). In
`
`determining whether a prior art combination is obvious, courts consider
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`Case IPR2021-00255
`Attorney Docket No: 50095-0020IP1
`“inferences and creative steps that a person of ordinary skill in the art would
`
`employ” in addition to the teachings themselves. KSR Int’l Co. v. Teleflex Inc.,
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`550 U.S. 398, 418 (2007). For a combination to be obvious, “it is not necessary
`
`that the inventions of the references be physically combinable to render obvious
`
`the invention under review.” In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983).
`
`Applying this jurisprudence, the Board has found arguments assuming bodily
`
`incorporation unpersuasive and inconsistent with assertions in the Petition
`
`unpersuasive. See, e.g., IPR2017-00705, Pap. 87, 52-53 (PTAB July 31, 2018)
`
`(finding Patent Owner’s argument regarding incompatible solutions within a prior
`
`art combination unpersuasive for assuming a requirement of bodily incorporation).
`
`The Board has also found arguments addressing irrelevant teachings in a secondary
`
`reference similarly unpersuasive. See, e.g., IPR2020-00041, Pap. 29, 28-30
`
`(PTAB Jan. 19, 2021).
`
`Koss’s positions against the Brown-Scherzer combination both assume
`
`bodily incorporation of Scherzer and focus on irrelevant teachings relating to
`
`Scherzer’s user contribution accounts and associated tracking. Nowhere in the
`
`Petition is there a discussion of Scherzer’s tracking capabilities, let alone an
`
`assertion that these teachings are relied upon in combining Brown and Scherzer.
`
`Pet., 24-33. Koss’s unremitting focus on Scherzer’s tracking capabilities reveals
`
`that it has violated obviousness jurisprudence by focusing almost exclusively on
`
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`Case IPR2021-00255
`Attorney Docket No: 50095-0020IP1
`concerns relating to Scherzer that are not even relevant to the Brown-Scherzer
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`combination.
`
`The Petition instead explained that the Brown-Scherzer combination
`
`involves improving Brown’s system by modifying device 105 to include a
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`Scherzer-like client to enjoy the benefits of Scherzer’s community by obtaining
`
`access to network credential information of Scherzer’s wireless access points from
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`a Scherzer-like server. Pet., 24-28. This combination does not involve physically
`
`incorporating Scherzer’s account acceptability and associated tracking. Nor does it
`
`require such incorporation since these teachings from Scherzer are not relevant to
`
`the overall motivation—that “[u]se of a Scherzer-like software client would have
`
`increased the number of WiFi connections available to Brown’s device 105 at
`
`various locations” thereby providing the ability to “connect to networks in different
`
`locations.” Id., 25-26.
`
`III. THE BROWN-SCHERZER COMBINATION IS NOT A PRODUCT
`OF HINDSIGHT
`A. The Brown-Scherzer Combination Is A Predictable Solution To
`Known Problems of Network Connectivity
`Koss asserts that “[o]nly hindsight reconstruction of the claimed invention
`
`justifies the Petition’s combination.” Resp., 23. But, as explained in the Petition
`
`and further clarified by Dr. Cooperstock, the Brown-Scherzer combination is
`
`entirely predictable in light of a POSITA’s knowledge and the teachings of the
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`Case IPR2021-00255
`Attorney Docket No: 50095-0020IP1
`prior art, and therefore, not a product of hindsight. See Pet., 24-33; see also
`
`APPLE-1003, ¶¶42-61; APPLE-1023, ¶¶38-40. Koss’s speculation of hindsight is
`
`a clear attempt to avoid the prior art teachings, which is confirmed by its failure to
`
`identify any claim limitations that are not disclosed or suggested in the prior art.
`
`The Brown-Scherzer combination is not based on hindsight because, as
`
`explained in the Petition, the combination provides a predictable solution to well-
`
`known problems of network connectivity. The Petition explained that a POSITA
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`would have combined Brown and Scherzer since it provided “advantages to
`
`network connectivity,” and specifically, WiFi connectivity. Pet., 27-28 (citing
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`APPLE-1003, ¶47).
`
`These advantages would have been predictable solutions because problems
`
`of WiFi connectivity were well-known by the Critical Date. APPLE-1003, ¶¶38-
`
`40. Scherzer demonstrates this by recognizing that “to provide wireless coverage
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`for many locations, as, for example, cell phone networks do, requir