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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`BOSE CORPORATION,
`Petitioner,
`
`v.
`
`KOSS CORPORATION,
`Patent Owner.
`
`
`IPR2021-00297
`U.S. Patent No. 10,368,155
`
`
`
`PATENT OWNER SUR-REPLY
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`
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`
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`505457136.3
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`IPR2021-00297
`Patent Owner Sur-Reply
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`TABLE OF CONTENTS
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`C.
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`INTRODUCTION ............................................................................................... 1
`I.
`II. PETITIONER FAILED TO SHOW THAT CLAIMS 1-10 AND 13-14
`WOULD HAVE BEEN OBVIOUS UNDER GROUNDS 3A-3D .................... 1
`A.
`Petitioner’s Reply Arguments Undermined the Petition’s Invalidity
`Theories ...................................................................................................... 1
`B. The Evidence Shows that the Nakagawa Combinations Would Not
`Have Been Obvious .................................................................................... 4
`Petitioner’s Criticisms of McAlexander’s Testimony Should Be
`Rejected ...................................................................................................... 6
`Petitioner Did Not Challenge Claims 11-12 Under Grounds 3A-3D ........ 7
`D.
`III. PETITIONER FAILED TO SHOW THAT CLAIMS 1-14 WOULD HAVE
`BEEN OBVIOUS UNDER GROUNDS 2A-2E ................................................. 8
`A.
`Petitioner’s “Typo” Theory Shows that its Invalidity Ground are
`Not Based on Patents and Printed Publications ......................................... 9
`B. Williams’s Opinion that Rezvani Contains Typos is Not Credible ......... 10
`C. The EPO Prosecution is Irrelevant ........................................................... 12
`D. Williams “Typo” Theory Should Not Be Considered Because it
`Should Have Been Presented Earlier ........................................................ 13
`E. Rezvani Does Not Disclose “Transition[ing] Automatically” ................. 15
`IV. PETITIONER FAILED TO SHOW THAT CLAIMS 1-14 ARE
`ANTICIPATED UNDER GROUND 1 ............................................................. 17
`A. The Institution Decision Correctly Found that Pelland Does Not
`Anticipate Claims 1-14 ............................................................................. 17
`B. Williams’s Testimony About Pelland Should Be Afforded Little
`Weight and Should Not Even Be Considered .......................................... 22
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`IPR2021-00297
`Patent Owner Sur-Reply
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`1. Williams’s Testimony is Not Credible and Should be Afforded
`Little Weight ...................................................................................... 22
`2. Williams’s Rebuttal Testimony Should Not Be Considered ............. 24
`V. CONCLUSION .................................................................................................. 26
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`TABLE OF AUTHORITIES
`
`IPR2021-00297
`Patent Owner Sur-Reply
`
` Page(s)
`
`Cases
`Apple, Inc. v. Andrea Elec. Corp.,
`949 F.3d 697 (Fed. Cir. 2020) ............................................................................ 24
`Ariad Pharms., Inc. v. Eli Lilly & Co.,
`598 F.3d 1336 (Fed. Cir. 2010) .......................................................................... 24
`Baxter Healthcare Corp. v. Millenium Biologix, LLC,
`IPR2013-00582, Paper 39 (PTAB Oct. 30, 2014) .............................................. 26
`Belden, Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) .......................................................................... 18
`Elan Pharm., Inc. v. Mayo Found. For Med. Educ. & Research,
`346 F.3d 1051 (Fed. Cir. 2003) .......................................................................... 22
`Facebook, Inc. v. Sound View Innovations, LLC,
`IPR2017-01003, Paper 14 (PTAB Sep. 1, 2017) ................................................ 23
`Holigic, Inc. v. Smith & Nephew, Inc.,
`884 F.3d 1357 (Fed. Cir. 2018) .......................................................................... 20
`Johnson Worldwide Assocs., Inc. v. Zebco Corp.,
`175 F.3d 985 (Fed. Cir. 1999) ............................................................................ 20
`Marmo v. Tyson Fresh Meats, Inc.,
`457 F.3d 748 (8th Cir. 2006) .............................................................................. 16
`In re Rasmussen,
`650 F.2d 1212 (Fed. Cir. 1981) .......................................................................... 20
`Retractable Techs., Inc. v. Becton, Dickenson & Co.,
`653 F.3d 1296 (Fed. Cir. 2011) .......................................................................... 21
`Thorner v. Sony Comput. Entm’t Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012) .......................................................................... 21
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`IPR2021-00297
`Patent Owner Sur-Reply
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`
`
`In re Vickers,
`141 F.2d 522 (CCPA 1944) ................................................................................ 20
`WBIP, LLC v. Kohler Co.,
`829 F.3d 1317 (Fed. Cir. 2016) ............................................................................ 3
`Statutes
`35 U.S.C. § 311(b) ..................................................................................................... 9
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`IPR2021-00297
`Patent Owner Sur-Reply
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`Exhibit
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`EXHIBIT LISTING
`
`
`Description
`
`KOSS-2001 Complaint, Koss Corp. v. Plantronics, Inc., Case 6-20-cv-00663-
`ADA, Dkt. No. 1 (W.D. Tex. July 22, 2020)
`
`KOSS-2002 Complaint, Koss Corp. v. Skullcandy, Inc., Case 6-20-cv-00664-
`ADA, Dkt. No. 1 (W.D. Tex. July 22, 2020)
`
`KOSS-2003 Complaint, Koss Corp. v. PEAG LLC d/b/a JLab Audio, Case 6-20-
`cv-00662-ADA, Dkt. No. 1 (W.D. Tex. July 22, 2020)
`
`KOSS-2004 [Proposed] Scheduling Order, Koss Corp. v. Bose Corp., Case 6:20-
`cv-00661-ADA, Dkt. No. 24 (W.D. Tex. Feb. 16, 2021)
`
`KOSS-2005 Sample Order Governing Proceedings - Patent Case, November 5,
`2020, Judge Albright, United States District Court for the Western
`District of Texas, Waco Division
`
`KOSS-2006 Docket Report, Koss Corp. v. Plantronics, Inc., Case 6-20-cv-
`00663-ADA (W.D. Tex.) (as of March 12, 2021)
`
`KOSS-2007 Docket Report, Koss Corp. v. Skullcandy, Inc., Case 6-20-cv-00664-
`ADA (W.D. Tex.) (as of March 12, 2021)
`
`KOSS-2008 Docket Report, Koss Corp. v. Bose Corp., Case 6-20-cv-00661-ADA
`(W.D. Tex.) (as of March 12, 2021)
`
`KOSS-2009 Docket Report, Koss Corp. v. PEAG LLC d/b/a JLab Audio, Case 6-
`20-cv-00662-ADA (W.D. Tex.) (as of March 12, 2021)
`
`KOSS-2010 Markman Hearing, MV3 Partners, LLC v. Roku, Inc., Case No. W-
`18-cv-308, Dkt. No. 83 (W. D. Tex. July 19, 2019)
`
`KOSS-2011 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)
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`IPR2021-00297
`Patent Owner Sur-Reply
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`Exhibit
`
`Description
`
`KOSS-2012 K. Buehler, “WDTX Judge Albright Touts Revamped Courtroom
`Tech,” IPLAW360, February 26, 2021.
`
`KOSS-2013 S. Decker et al., “Intel Told to Pay $2.18 Billion After Losing Patent
`Trial,” Bloomberg, March 2, 2021
`(www.bloomberg.com/news/articles/2021-03-02/intel-told-to-pay-
`2-18-billion-after-losing-texas-patent-trial)
`
`KOSS-2014 United States District Court, Western District of Texas, Judges’
`Calendars, United States District Judge Alan Albright, Public
`Calendar Events in All Divisions (3/1/2021 to 4/30/2021)
`
`KOSS-2015 E. Cunningham et al., “Fauci predicts vaccine ‘open season’ by
`April,” Washington Post, Feb. 11, 2021
`(www.washingtonpost.com/nation/2021/02/11/coronaviruscovid-
`live-updates-us/) (last accessed February 25, 2021)
`
`KOSS-2016 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/faucivaccination-
`increase/) (last accessed February 25, 2021)
`
`KOSS-2017 Exhibit B-7 to Plantronics, Inc.’s Preliminary Invalidity Contentions
`in Koss Corp. v. Plantronics, Inc., Case 6-20-cv-00663-ADA (W.D.
`Tex.)
`
`KOSS-2018 Exhibit B-4 to Plantronics, Inc.’s Preliminary Invalidity Contentions
`in Koss Corp. v. Plantronics, Inc., Case 6-20-cv-00663-ADA (W.D.
`Tex.)
`
`KOSS-2019 Plantronics, Inc.’s Preliminary Invalidity Contentions in Koss Corp.
`v. Plantronics, Inc., Case 6-20-cv-00663-ADA (W.D. Tex.)
`
`KOSS-2020 File History of EP 2,272,259
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`IPR2021-00297
`Patent Owner Sur-Reply
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`Exhibit
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`Description
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`KOSS-2021 EP 2,498,509 B1
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`KOSS-2022 “Biden to direct states to make all adults eligible for vaccine by
`May 1,” Reuters, March 11, 2021
`(www.reuters.com/article/idUSW1N2KA02A) (accessed March 12,
`2021)
`
`KOSS-2023 Declaration of Joseph C. McAlexander III
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`KOSS-2024 Transcript of Tim A. Williams, Ph.D., IPR2021-00297, August 2,
`2021
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`KOSS-2025 Excerpts, The American Heritage Dictionary, 2nd College Ed.,
`1991
`
`KOSS-2026 Deposition Transcript of Tim A. Williams, Ph.D., IPR2021-00297,
`Jan. 11, 2022
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`KOSS-2027 Annotated Excerpt of BOSE-1003
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`I.
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`Case IPR2021-00297
`Patent Owner Sur-Reply
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`INTRODUCTION
`Patent Owner submits this Sur-Reply to Petitioner’s Reply (Paper 25,
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`“Reply”). Petitioner failed to carry its burden of showing that the Challenged Claims
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`are invalid. Accordingly, the Board should confirm the patentability of the
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`Challenged Claims.
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`II.
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`PETITIONER FAILED TO SHOW THAT CLAIMS 1-10 AND 13-14
`WOULD HAVE BEEN OBVIOUS UNDER GROUNDS 3A-3D
`A.
`Petitioner’s Reply Arguments Undermined the Petition’s
`Invalidity Theories
`The Petition initially asserted under Grounds 3A-3D that claims 1-10 and 13-
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`14 would have been obvious over “Nakagawa in View of Other References.” Pet.
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`56 (emphasis added). That is, Petitioner’s initial theory was that Nakagawa was
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`being modified in view of other references, namely Wilson and Rosener, separately.
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`Id., 61 (“POSAs would have had several reasons to implement Nakagawa’s wireless
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`headset using Wilson’s form-factor.”); 75 (“POSAs would have had reason to
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`implement Nakagawa’s headset using Rosener’s wireless earbud design.”). To that
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`end, the Petition advanced reasons for modifying Nakagawa in view of both Wilson
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`and Rosener. The reasons with respect to Wilson were that such a modification to
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`Nakagawa would have provided Nakagawa’s audio output apparatus the benefit of
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`being stereo and having a rechargeable battery. Petition, 61-62. The reason with
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`respect to Rosener was that such a modification would have converted Nakagawa’s
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`Case IPR2021-00297
`Patent Owner Sur-Reply
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`audio output apparatus into wireless earbuds. Pet., 75.
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`Petitioner’s Reply, however, reversed the Petition’s initial approach. In its
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`Reply, Petitioner asserted that its theories were to modify Wilson’s and Rosener’s
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`earphones to include Nakagawa’s sound-source switching functionality. For
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`example, at page 4, the Reply recast its first reason for the Nakagawa-Wilson
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`combination as “implementing Nakagawa’s functionality in a stereo headphone like
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`Wilson’s” and recast its second reason as being “to implement Nakagawa’s
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`functionality in a headphone, like Wilson, having a rechargeable battery and
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`compatible with a docking station.” Similarly for Rosener, Petitioner criticized
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`Patent Owner for “again misstat[ing] the Petition’s argument” about the proposed
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`combination. Reply, 9.
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`The revised theories nullified the Petition’s reasons for modifying Nakagawa
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`in light of Wilson and Rosener. Wilson’s earphones are already stereo and already
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`have a battery that is rechargeable with a docking station; and Rosener’s earbuds are
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`already wireless. There would be no motivation to modify Wilson’s or Rosener’s
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`earphones in light of Nakagawa to make them stereo, to use a rechargeable battery,
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`or to make them wireless. That “Koss does not question the musical benefits of
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`stereo sound” (Reply, 4) is, therefore, irrelevant as modifying Wilson in view of
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`Nakagawa does not make Wilson’s earphones even more stereo. Thus, the benefits
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`of the stereo, rechargeable batteries and wireless designs of Wilson and Rosener
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`Case IPR2021-00297
`Patent Owner Sur-Reply
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`offer no reason or motivation to implement Nakagawa’s sound-source switching
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`functionality into Wilson’s or Rosener’s earphones, or any other earphone form
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`factor. Instead, the operable question has been transformed into whether it would
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`have been obvious to modify Wilson and Rosener to include Nakagawa’s sound-
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`source switching capability. Petitioner provided no evidence for such a modification
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`as the Petition focused on modifying Nakagawa in light of Wilson and Rosener to
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`achieve the benefits of Wilson and Rosener, and not on modifying Wilson and
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`Rosener to achieve the benefits of Nakagawa. “Whether a skilled artisan would be
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`motivated to make a combination includes whether he would select particular
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`references in order to combine their elements.” WBIP, LLC v. Kohler Co., 829 F.3d
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`1317, 1337 (Fed. Cir. 2016). “The real question is whether that skilled artisan would
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`have plucked one reference out of the sea of prior art … and combined it with
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`conventional … elements to address some need present in the field.” Id. Petitioner
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`failed to show that a POSA would have plucked Nakagawa from the sea to modify
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`Wilson and Rosener to implement sound-source switching.
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` By flipping the reference that is to be modified, from Nakagawa to either
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`Wilson or Rosener, Petitioner’s Reply nullified the Petition’s stated reasons for
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`modifying Nakagawa in light of Wilson and Rosener, as the case may be, and
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`thereby undermined its prima facie case. That is also why the testimony of Patent
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`Owner’s expert witness, Mr. Joseph McAlexander (“McAlexander”), for why the
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`Case IPR2021-00297
`Patent Owner Sur-Reply
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`Nakagawa combinations would not have been obvious (see KOSS-2023, ¶¶27-46)
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`remains unrefuted. Instead of refuting the testimony, Petitioner’s Reply asserted that
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`Patent Owner mischaracterized the Petition’s arguments when, in fact, it is
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`Petitioner’s Reply that mischaracterized the Petition’s arguments.
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`B.
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`The Evidence Shows that the Nakagawa Combinations Would Not
`Have Been Obvious
`In response to Patent Owner’s arguments and evidence about the power source
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`requirements of the Nakagawa combinations (see Paper 22 (Patent Owner Response,
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`hereinafter “POR”), 20-21; KOSS-2023, ¶¶31-37), the Reply asserted that “POSAs
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`of course knew how to select appropriate batteries for common electronic devices
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`like headphones based on their power requirements.” Reply, 5. The issue, however,
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`is not whether a POSA would have been able to select an appropriate battery for a
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`given design. Instead, the question is whether the POSA could have made the design
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`in the first place given that Nakagawa’s sound-source switching devices are
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`described in purely functional terms without any disclosure of how to implement or
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`power them. KOSS-2023, ¶36. Even if a POSA would have understood that a power
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`source is necessary for successful operation of the Nakagawa design, the lack of
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`details about the sound-source switching devices would have precluded a POSA
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`from pursuing the Nakagawa combinations in the first place. Id., ¶¶36-37.
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`The cross-rebuttal testimony of one of Petitioner’s witnesses, Dr. Tim
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`Case IPR2021-00297
`Patent Owner Sur-Reply
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`
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`Williams (“Williams”), confirmed this viewpoint. Williams described Nakagawa’s
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`sound-source switching devices as “not terms of art” and “intrinsic terms within
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`Nakagawa.” KOSS-2026, 44 (emphasis added). The fact that Nakagawa’s sound-
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`source switching devices are “not terms of art” and “intrinsic terms within
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`Nakagawa” confirms that a POSA would not know how to implement them but for
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`Nakagawa’s disclosure, which is, however, silent on how to implement them.
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`KOSS-2023, ¶36. Petitioner’s theory effectively asks a POSA to solve an equation
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`(i.e., the appropriate battery and power level) without actually being given the
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`equation (i.e., the circuit components to be powered).
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`In contrast to Nakagawa and Petitioner’s assertions (Reply, 5), the ’155 Patent
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`provides specific guidance for a POSA to implement the circuitry of the claimed
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`earphones, including the appropriate battery and power level. The ’155 Patent
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`discloses an earphone design that uses “a single integrated circuit (IC), such as a
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`system-on-chip (SoC), which is conducive to miniaturizing the components of the
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`earphone 10, which is advantageous if the earphone 10 is to be relatively small in
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`size, such as an in-ear earphone ….” BOSE-1001, 6:43-48. The single IC provides
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`a clear starting point for POSA to select a suitable battery with suitable power levels;
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`there is only one IC to power.
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`Realizing the critical distinction between the teachings of the ’155 Patent and
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`Nakagawa, McAlexander needed not defend the ’155 Patent, as its teachings guide
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`Case IPR2021-00297
`Patent Owner Sur-Reply
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`a POSA to a position where all that is needed is to select the appropriate battery for
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`the SOC. On the contrary, the purely functional description of Nakagawa’s sound-
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`source switching components would have left a POSA without a reasonable
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`expectation of success, especially because Nakagawa suggests that the sound-source
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`switching components are not implemented with software. KOSS-2023, ¶36.
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`Further, Williams’s rebuttal testimony that it would have been obvious for a
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`POSA to select rechargeable batteries to meet the power requirements in light of
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`many prior art wireless earphones that were battery powered (BOSE-1104, ¶¶54-56)
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`misses the point because none of that prior art includes Nakagawa’s sound-source
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`switching components. KOSS-2026, 42-45.
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`C.
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`Petitioner’s Criticisms of McAlexander’s Testimony Should Be
`Rejected
`Petitioner made several unsound arguments to diminish the impact of
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`McAlexander’s compelling testimony. The arguments lack merit and should be
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`rejected.
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` The Reply asserted that McAlexander’s declaration (KOSS-2023) should be
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`given little or no weight because it repeats the POR’s conclusions. Reply, 3. This
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`is untrue. The POR’s arguments follow McAlexander’s testimony and, as such, the
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`POR echoes McAlexander’s testimony. Contrary to the Reply’s assertions, the
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`similarities between the POR and McAlexander’s declaration reflect a strong
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`Case IPR2021-00297
`Patent Owner Sur-Reply
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`correlation between McAlexander’s testimony and the arguments advanced in the
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`POR, which gave rise to the POR’s conclusions.
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`The Reply also asserted that McAlexander’s testimony regarding whether
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`POSAs would have implemented the Nakagawa combinations should be ignored in
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`favor of Dr. Casali’s testimony because McAlexander lacks any headphone design
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`experience. Reply, 3. First, McAlexander has experience with audio, acoustic
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`engineering. BOSE-1101, 80; KOSS-2023, ¶9 and p.30 (“managed the design and
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`installation of audio and video systems”). Second, and more importantly, this
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`assertion ignores that the issue faced by POSAs in implementing the Nakagawa
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`combinations requires internal, rather than external or shape-based, headphone
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`design experience. To implement the Nakagawa combinations, POSAs would have
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`had to contend with implementing Nakagawa’s sound-source switching devices with
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`Wilson’s or Rosener’s earphones, without any knowledge of the nature of
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`Nakagawa’s sound-source switching devices. McAlexander’s experience is
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`particularly relevant in this context and Casali’s is not. BOSE-1005, ¶36 (Casali not
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`asked by Petitioner to provide opinions relating to the wireless communication
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`aspects of the challenged claims).
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`D.
`Petitioner Did Not Challenge Claims 11-12 Under Grounds 3A-3D
`Petitioner asserted that the “Board preliminarily found that the Nakagawa
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`combinations,”
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`Case IPR2021-00297
`Patent Owner Sur-Reply
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`i.e., Grounds 3A-3D, “collectively
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`render claims 1-14
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`obvious.” Reply, 2. That is false. Petitioner did not challenge claims 11-12 under
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`Grounds 3A-3D and, correspondingly, the Board did not institute a challenge of
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`claims 11-12 under Grounds 3A-3D. Pet., 4 (list of asserted grounds); Paper 16
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`(“Institution Decision”), 21-36. Accordingly, Petitioner failed to show that claims
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`11-12 would have been obvious under Grounds 3A-3D.
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`III. PETITIONER FAILED TO SHOW THAT CLAIMS 1-14 WOULD
`HAVE BEEN OBVIOUS UNDER GROUNDS 2A-2E
`In its prima facie case, Petitioner, relied on Williams’s direct testimony to
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`assert that Rezvani discloses limitation 1.g because, citing ¶[0041] of Rezvani, it
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`allegedly discloses a headset that performs “seamless handoff” between two
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`wireless networks. Pet., 25, 35; BOSE-1003, ¶106 (“the headset performs ‘seamless
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`handoff between two systems’”) (emphasis added). Rezvani’s ¶[0041], however,
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`twice states that the handset—not the headset—performs the seamless handoff.
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`BOSE-1016, ¶[0041]. Rezvani also reiterates this teaching later. Id., ¶[0050] (again
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`stating that the handset supports the seamless handoff and switches between wireless
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`networks).
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`Despite this discrepancy between what Rezvani teaches and what Petitioner
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`(and Williams) asserts that it teaches, Petitioner astoundingly accuses Patent Owner
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`of relying on typographical errors in Rezvani. Pet., 1. Instead, Petitioner relies on
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`the alleged typographical errors in Rezvani. Williams’s new theory is that the author
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`Case IPR2021-00297
`Patent Owner Sur-Reply
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`of Rezvani mistakenly typed, multiple times, that the handset—not the headset—
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`performs the seamless handoff. KOSS-2026, 7-11. This new “typo” theory fails for
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`several reasons and should not be considered.
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`A.
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`Petitioner’s “Typo” Theory Shows that its Invalidity Ground are
`Not Based on Patents and Printed Publications
`An inter partes review (IPR) may only rely on “prior art consisting of patents
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`or printed publications.” 35 U.S.C. § 311(b). By asserting that Rezvani contains
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`several alleged typos, Petitioner is not relying on Rezvani as published. Instead,
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`Petitioner is relying on its revised version of Rezvani in contravention of § 311(b).
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`Expert testimony, like Williams’s new “typo” theory, “cannot take the place of a
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`disclosure in a prior art reference, when that disclosure is required as part of the
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`unpatentability analysis.” PTAB Consolidated Trial Practice Guide (Nov. 2019)
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`(“CTPG”), 36. “In other words, expert testimony may explain ‘patents and printed
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`publications,’ but is not a substitute for disclosure in a prior art reference itself.” Id.
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`Therefore, Petitioner cannot rewrite the words in Rezvani to fabricate a teaching that
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`is neither implicit nor inherent in Rezvani. Petitioner’s reliance on selective changes
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`to the literal text of Rezvani is in violation of the statute and Petitioner’s grounds
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`(Grounds 2A-2E) founded on a modification of the actual words of Rezvani should
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`be rejected.
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`Patent Owner Sur-Reply
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`B. Williams’s Opinion that Rezvani Contains Typos is Not Credible
`Williams’s new “typo” theory is not credible for many reasons. First, the new
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`theory is formed by a method worse than hindsight reconstruction. Instead of
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`picking references in hindsight to arrive at a combination that renders a claim
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`obvious, Williams changed what Rezvani literally states to bolster his obviousness
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`opinions. Notably, Williams concluded that Rezvani contained the alleged typos
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`after reading the ’155 Patent. KOSS-2026, 14 (“Reading the ’155 is the first thing I
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`did in this case”). Only after being hired by Petitioner in this matter and only after
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`considering the ’155 Patent did Williams conclude that Rezvani could not possibly
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`have intended to say what it explicitly states. Id., 13-14. That is simply hindsight,
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`albeit in an unusual, egregious form.
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`Second, Williams conducted essentially no investigation into the source of the
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`typos. Williams reached his conclusion that Rezvani includes the alleged typos even
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`though he failed to consult with anyone regarding the source and/or veracity of the
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`alleged typos. Williams failed to consult with the inventors of Rezvani, the patent
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`attorney(s) that prosecuted Rezvani, and the patent examiner for Rezvani. KOSS-
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`2026, 11-12. And his review of Rezvani’s file history failed to provide
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`“definitively” the source of the alleged typos. Id., 12. His flawed investigation
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`shows that the new “typo” theory is merely an after-the-fact attempt to resuscitate
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`an initial obviousness theory that ignored the actual wording of Rezvani.
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`Third, the typo theory defies practicality. To maintain his theory that the
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`author of Rezvani intended to write “headset” instead of “handset” in multiple
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`places, Williams affirmed that, under his theory, the author made the exact same
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`typing mistake three times. KOSS-2026, 11. Yet, Williams did not identify any
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`other alleged typos in Rezvani. The odds that Rezvani’s author made the exact same
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`typing mistake in every place where a typo in critical to support Petitioner’s
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`obviousness theory, and only in those places, are astronomical.
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`Fourth, the context of ¶[0041] shows that there are no typos. Williams
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`correctly stated that Rezvani’s ¶[0041] “discusses Figure 8 and says it illustrates
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`embodiments involving headset 805.” BOSE-1104, ¶18. Based on this, Williams
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`concluded that ¶[0041]’s “transition from describing a headset to describing a
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`handset is abrupt and makes little logical sense” as “Rezvani’s paragraph 41 is
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`unambiguous that Figure 8 depicts embodiments of headset 805.” Id., ¶¶19-20.
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`However, simply because ¶[0041] begins by describing Figure 8 does not mean all
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`of the paragraph’s disclosure is limited to Figure 8. The first several sentences of
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`¶[0041] described “simultaneous operation,” but then the paragraph switches to a
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`description of “seamless handoff” after the transitional phrase, “In addition to
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`seamless operation ….” This transitional phrase shows that the later sentences of
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`¶[0041], which describe the seamless handoff by the handset, are “in addition to”
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`the content in earlier sentences of ¶[0041] about Figure 8 and, therefore, are not
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`limited to Figure 8.
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`Finally, Williams admitted that Rezvani’s sentences that include the alleged
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`typos are technically accurate as written. As published, Rezvani’s ¶[0041] states
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`that “the handset can support seamless handoff between two systems.” BOSE-1016,
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`¶41. Williams testified that a POSA in 2008 would have understood that a handset,
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`such as a cellular phone, could switch from one network to another. KOSS-2026,
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`18-23. And Rezvani discloses that the handset could be a cell phone. BOSE-1016,
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`¶[0004]; KOSS-2026, 21-22.
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`Without the benefit of reviewing the ’155 Patent and any technical or
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`grammatical suggestion of a typographical error, it defies logic that “a POSA seeing
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`the word ‘handset’ would quickly recognize that the reference to a ‘handset’ is a
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`typo and the author intended to write ‘headset,’” as asserted by Williams. BOSE-
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`1104, ¶19.
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`C. The EPO Prosecution is Irrelevant
`The Board correctly found that the prosecution of Patent Owner’s EPO
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`applications has “little relevance here.” Institution Decision, 40. Patent Owner’s
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`actions in amending the claims for European Patent 2,272,259 in response to the
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`European search report did not amount to an admission that limitation 1.g was
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`disclosed in Rezvani because Patent Owner could have just as easily amended
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`original claim 1 to include the subject matter of original claim 5 to have the EPO
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`application allowed. KOSS-2020, 92-98. Further, Koss filed another application
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`which resulted in another EPO patent. Institution Decision, 40; KOSS-2021.
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`Petitioner argues that the second EPO patent is irrelevant because the claims
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`do no recite the “transition automatically” limitation. Reply, 21. That argument, in
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`fact, further disproves Petitioner’s argument with respect to Pelland and Ground 1
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`(see Reply, 25) that the “present invention” for the ‘155 Patent is limited to
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`automatically transitioning from an ad hoc network to an infrastructure network
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`when a connection is lost.
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`D. Williams “Typo” Theory Should Not Be Considered Because it
`Should Have Been Presented Earlier
`“Petitioner may not submit new evidence or argument in reply that it could
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`have presented earlier, e.g. to make out a prima facie case of unpatentability.”
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`CTPG, 73. Nevertheless, that is exactly what Petitioner did with respect to
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`Williams’s new “typo” theory. BOSE-1104, ¶¶8-28.
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`In the Petition, Petitioner and Williams both took the position that Rezvani’s
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`¶[0041] teaches that the headset supports the seamless handoff (Pet., 25-26, 35;
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`BOSE-1003, ¶¶106, 136) even though Rezvani’s ¶[0041] explicitly states that the
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`handset does. See also BOSS-1016, ¶[0050]. For example, the Petition relied on
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`¶136 of Williams’s initial declaration (BOSE-1003) and Rezvani’s ¶[0041] to assert
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`that Rezvani’s headset switches from one network to another (i.e., performs
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`seamless handoff). Pet., 35. At ¶136 of his initial declaration, Williams included
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`the quote from Rezvani’s ¶[0041] that the handset performs the network switching,
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`but took out the mention of “handset” and instead inserted “headset” as shown in
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`KOSS-2027, which is an annotated version of Williams’s ¶136.
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`Williams admitted that he interpreted Rezvani’s ¶[0041] at the time of his
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`original declaration “as meaning the headset is the thing that switches,” which is
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`“why ‘headset’ is outside of the quotes in paragraph 136” of his original declaration.
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`KOSS-2026, 47-48. Williams also admitted that he reached his conclusion that
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`Rezvani’s ¶[0041] includes the alleged typos at the time he prepared his original
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`declaration. Id. Yet, neither Petitioner nor Williams presented any evidence in the
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`Petition as to why Rezvani’s ¶[0041] includes the alleged typos. See Institution
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`Decision, 39 (“The Petition and supporting exhibits do not allege ‘handset’ is an
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`error in Rezvani’s disclosure”). Instead, Petitioner saved that new evidence (BOSE-
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`1104, ¶¶8-28), which is critical to its obviousness theory for Grounds 2A-2E, until
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`its Reply, at which point Patent Owner is precluded from submitting counter-
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`evidence. CTPG, 73 (“sur-reply may not be accompanied by new evidence other
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`than deposition transcripts of the cross-examination of any reply witness”).
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`The criticality of the alleged typos to Petitioner’s obviousness theories for
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`Grounds 2A-2E is clear from the Petition at page 35, where the primary evidence
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`that Petitioner presented that Rezvani teaches the automatic transition of limitation
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`1.g is ¶136 of Williams’s original declaration (BOSE-1003). The Petition also cites
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`Rezvani’s ¶[0041] (Pet., 35), but, of course, Rezvani’s ¶[0041] literally teaches that
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`the handset supports seamless handoff. Thus, Petitioner’s “typo” theory is critical
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`to its prima facie case, but it did not present it in the Petition.
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`Petitioner should have foreseen that Patent Owner would point out that
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`Petitioner relies on a revision of Rezvani and that Petitioner would need to rely on
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`its “typo” theory to rebut Patent Owner’s foreseeable argument. This is especially
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`so because Williams had already formed his opinion that Rezvani includes the
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`alleged typos by the time the Petition was filed. KOSS-2026, 47-48. Consequently,
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`Petitioner should have presented its “typo” theory in its Petition. Marmo v. Tyson
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`Fresh Meats, Inc., 457 F.3d 748, 760 (8th Cir. 2006) (rebuttal testimony must relate
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`to topics that plaintiff could not have foreseen as being offered during defendant’s
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`case-in-chief).
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`Thus, Petitioner’s “typo” theory is new, should have been presented earlier,
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`and should not be considered now.
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`E. Rezvani Does Not Disclose “Transition[ing] Automatically”
`It is undisputed that “seamless” and “automatic” are not synonyms.
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`“Automatically” in the context of limitation 1.g means without external intervention.
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`KOSS-2023, ¶60; KOSS-2025, 4 (