United States Patent and Trademark Office
`Before the Patent Trial and Appeal Board
`
`Bose Corporation
`(Petitioner)
`v.
`Koss Corporation
`(Patent Owner)
`
`Inter Partes Review
`
`No. IPR2021-00297 | U.S. Patent No. 10,368,155
`
`Petitioner’s Demonstrative Exhibits
`
`March 8, 2022
`
`Bose Exhibit 1105
`Bose v. Koss
`IPR2021-00297
`
`1
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`Before the Patent Trial and Appeal Board
`
`Bose Corporation
`(Petitioner)
`v.
`Koss Corporation
`(Patent Owner)
`
`Inter Partes Review
`
`No. IPR2021-00297 | U.S. Patent No. 10,368,155
`
`Petitioner’s Demonstrative Exhibits
`
`March 8, 2022
`
`Bose Exhibit 1105
`Bose v. Koss
`IPR2021-00297
`
`1
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Challenged U.S. Patent No. 10,368,155
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`2
`
`
`
`Wireless Headphones Predated the ’155 Patent
`
`Petition at 1, 4-6
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`’155 Patent (Ex. 1001), 1:42-62 (cited Petition at 4)
`
`3
`
`
`
`Wireless Headphones Predated the ’155 Patent
`
`Petition at 1, 4-6, 25, 49, 51, 54, 57
`
`2003
`
`2005
`
`2006
`
`2006
`
`Nakagawa (Ex. 1022)
`(cited Petition at 57)
`
`Wilson (Ex. 1021)
`(cited Petition at 54)
`
`Rezvani-875 (Ex. 1016)
`(cited Petition at 25)
`
`Rosener (Ex. 1020)
`(cited Petition at 49)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`4
`
`
`
`Challenged Independent Claim 1:
`
`Transition Automatically Between Networks
`
`Petition at 1, 4-7
`Reply at 13-21
`
`Conventional Wireless
`Headphone Components
`(No Dispute)
`
`PO Disputes Only that Rezvani
`Lacks This Claim Limitation
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`5
`
`
`
`Challenged Independent Claim 1:
`
`Transition Automatically Between Networks
`
`Petition at 4-7
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`6
`
`’155 Patent (Ex. 1001), 1:66-2:17 (cited Petition at 5-6)
`
`
`
`Challenged Dependent Claim 5:
`
`Wireless Earbuds
`
`Petition at 5, 7-8, 41, 48-49, 52, 78
`Reply at 9
`
`’155 Patent (Ex. 1001), Claims 4-5
`(cited Petition at 41, 48)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`7
`
`’155 Patent (Ex. 1001), 18:33-44, Fig. 1 (cited Petition at 5)
`
`
`
`Overview of the Petition’s Grounds
`
`GROUND
`
`1.
`
`Pelland
`
`2A.
`
`Rezvani + Skulley
`
`2B.
`
`2C.
`
`2D.
`
`2E.
`
`3A.
`
`3B.
`
`3C.
`
`3D.
`
`Rezvani + Skulley + Feder
`
`Rezvani + Skulley + Hind
`
`Rezvani + Skulley + Rosener
`
`Rezvani + Skulley + Wilson
`
`Nakagawa + Wilson
`
`Nakagawa + Rosener
`
`Nakagawa + Wilson + Hind
`
`Nakagawa + Rosener + Hind
`
`CLAIMS
`
`1-14
`
`1-4, 6-8, 14
`
`11-12
`
`13
`
`5, 9
`
`10
`
`1-3, 6-8, 10, 14
`
`1, 4-5, 9
`
`13
`
`13
`
`Petition at 11-42, 56-79
`Reply at 2-27
`
`BASIS
`
`102
`
`103
`
`103
`
`103
`
`103
`
`103
`
`103
`
`103
`
`103
`
`103
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`8
`
`
`
`Petition at 56-79
`Reply at 2-12
`
`Nakagawa-based Grounds
`
`An Overview
`
`GROUND
`
`CLAIMS
`
`BASIS
`
`3A.
`
`3B.
`
`3C.
`
`3D.
`
`Nakagawa + Wilson
`
`Nakagawa + Rosener
`
`Nakagawa + Wilson + Hind
`
`Nakagawa + Rosener + Hind
`
`1-3, 6-8, 10, 14
`
`1, 4-5, 9
`
`13
`
`13
`
`103
`
`103
`
`103
`
`103
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`9
`
`
`
`The Teachings of Nakagawa (Ex. 1022)
`
`Petition at 57-60
`
`Nakagawa (Ex. 1022), Fig. 1 (cited Petition at 57-58)
`
`Nakagawa (Ex. 1022), [0065] (cited Petition at 59)
`
`Nakagawa (Ex. 1022) at Fig. 3 (cited Petition at 58)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`10
`
`Nakagawa (Ex. 1022), [0072] (cited Petition at 59)
`
`
`
`The Teachings of Wilson (Ex. 1021) and Rosener (Ex. 1020)
`
`Petition at 49-50, 54
`
`Wilson’s Fig. 1
`
`Rosener’s Fig. 5
`
`Wilson (Ex. 1021) at Fig. 1 (cited Petition at 54)
`
`Rosener (Ex. 1020) at Fig. 5 (cited Petition at 50)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`11
`
`
`
`The Nakagawa-Wilson Combination
`
`Petition at 57-63
`ID at 31
`Reply at 3-8
`
`Petition
`
`Nakagawa (Ex. 1022) at Fig. 3 (cited Petition at 58)
`
`Institution Decision
`
`Petition at 60-61
`
`Institution Decision at 31
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Petition at 63
`
`12
`
`
`
`The Nakagawa-Rosener Combination
`
`Rosener
`
`Petition at 74-75
`Reply at 8-10
`
`Petition
`
`Rosener (Ex. 1020) at Fig. 5
`(cited Petition at 75)
`
`Petition at 75
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Nakagawa (Ex. 1022) at Fig. 3 (cited Petition at 75)
`
`13
`
`
`
`The Institution Decision Found a Reasonable Likelihood that Claims 1-10 and
`Petition at 56-80
`ID at 32, 34
`Reply at 2-12
`
`13-14 Would Have Been Obvious Over the Nakagawa-Based Grounds
`
`Institution Decision
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Institution Decision at 32, 34
`
`14
`
`
`
`The Parties’ Dispute Is Narrow
`
`Petition at 56-80
`Reply at 2-12
`
`• Ground 3A: No dispute that Nakagawa + Wilson discloses all elements of
`claims 1-3, 6-8, 10, 14.
`
`• Ground 3B: No dispute that Nakagawa + Rosener discloses all elements of
`claims 1, 4-5, and 9.
`
`• Grounds 3C & 3D: No dispute that both Nakagawa + Wilson and
`Nakagawa + Rosener, combined with Hind, disclose all elements of claim 13.
`
`• Only dispute is whether POSAs would have had reason to implement
`Nakagawa + Wilson or Nakagawa + Rosener as alleged in the Petition.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`15
`
`
`
`The Petition Identified Several Reasons POSAs Would Have Pursued
`
`the Nakagawa-Wilson and Nakagawa-Rosener Combinations
`
`Petition at 60-63, 74-75
`Reply at 3-12
`
`Nakagawa-Wilson
`
`Nakagawa-Rosener
`
`1. Wilson’s design provides stereo sound,
`which is consistent with Nakagawa’s
`ability to play music and its depiction of
`two earphones.
`
`2. Wilson’s design advantageously
`includes rechargeable batteries and is
`compatible with a docking station for
`recharging the batteries.
`
`3.
`
`Stereo wireless headsets were known,
`such that implementing Nakagawa’s
`automatic switching in Wilson’s design
`would have been applying a known
`technique to improve similar devices
`in the same way (i.e., to produce
`stereo sound).
`
`1. Rosener’s true wireless design was
`considered beneficial.
`
`2. True wireless designs were known,
`such that implementing Nakagawa’s
`automatic switching in Rosener’s
`design would have been applying a
`known technique to improve similar
`devices in the same way (i.e., to
`provide a completely wireless
`design).
`
`3. Obvious to try as one of two known
`designs, i.e., either wired or
`completely wireless.
`
`Petition at 61-62; Institution Decision at 29-30
`Dr. Williams Opening Decl. (Ex. 1003) at ¶¶235-239 (cited Petition at 61-62)
`
`Petition at 51, 75; Institution Decision at 34;
`Dr. Williams Opening Decl. (Ex. 1003) at ¶¶273-276 (cited Petition at 75)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`16
`
`
`
`Patent Owner’s Challenge to the Petition’s Stereo Design Rationale for
`
`Nakagawa-Wilson Mistakenly Assumes Nakagawa’s Headset Is Stereo
`
`Petition at 61
`Reply at 4
`
`Patent Owner Response
`
`Reply
`
`POR (Paper 22) at 20
`
`PO’s Sur-Reply
`
`NO RESPONSE
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Reply (Paper 25) at 4
`
`17
`
`
`
`Patent Owner’s “Completely Wireless” Rebuttal Is Irrelevant
`
`(for Nakagawa-Wilson) and Wrong (for Nakagawa-Rosener)
`
`Petition at 60-63, 74-75
`Reply at 4-10
`
`Patent Owner Response
`
`Reply
`
`POR (Paper 22) at 20
`
`PO’s Sur-Reply
`
`DOES NOT DISPUTE
`
`Reply (Paper 25) at 5
`
`PO’s Sur-Reply
`
`DOES NOT DISPUTE
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Reply (Paper 25) at 9
`
`18
`
`
`
`PO’s “Battery” Argument Impermissibly Treats POSAs as Automatons,
`
`Unable to Select Batteries for Conventional Consumer Electronic Devices
`
`Reply at 4-12
`
`Patent Owner Response
`
`POR (Paper 22) at 20-21
`
`POR (Paper 22) at 21
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`POR (Paper 22) at 34-35
`
`19
`
`
`
`The Board Correctly Rejected Patent Owner’s Argument at
`
`Institution Because POSAs Knew How to Select Batteries
`
`ID at 30-31
`Reply at 5-6, 11-12
`
`Institution Decision
`
`Institution Decision at 30
`
`Institution Decision at 31
`
`“[T]hat appellant did not provide the type of detail in his specification that
`
`he now argues is necessary in prior art references supports the Board’s
`
`finding that [POSAs] would have known how to implement the features
`
`of the references.”
`
`In re Epstein, 32 F.3d 1559, 1568 (Fed. Cir. 1994) (cited Reply at 5-6)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`20
`
`
`
`The Experts Agree on the Obvious:
`
`POSAs Knew How to Select Batteries
`
`Reply at 4-6
`
`Petitioner’s Expert Dr. Williams
`
`PO’s Expert Mr. McAlexander
`
`Dr. Williams Reply Decl. (Ex. 1104) at ¶53 (cited Reply at 5, 6)
`
`Q. Okay. In -- in the absence of specific guidance,
`would a person of ordinary skill in the art in
`2008 be able to determine a suitable type of
`rechargeable battery to use in a headphone?
`
`A. A person of skill in the art, circa 2008/2009
`time frame, would, in -- in view of what is
`taught in the '155, one could actually put that in
`-- into practice. One could instantiate that into
`an actual product.
`
`And the -- and the choice about the type of
`battery or something of that nature would be
`something that the skilled artisan at that time
`would -- would choose based upon the specific
`design that
`that -- that particular person is
`putting into place.
`
`So that design would be consistent with or
`co-measured with the actual system that was
`being developed.
`
`Dr. Williams Reply Decl. (Ex. 1104) at ¶57 (cited Reply at 5, 6)
`
`McAlexander Depo. (Ex. 1101) at 38:14-39:6 (cited Reply at 6)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`21
`
`
`
`Prior Art Also Confirms the Obvious:
`
`POSAs Knew How to Select Batteries
`
`Reply at 5-6
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Dr. Williams Reply Decl. (Ex. 1104) at ¶55 (cited Reply at 5)
`
`22
`
`
`
`In Attacking Nakagawa-Rosener, Patent Owner Similarly Treats POSAs as
`
`Automatons, Incapable of Selecting Appropriately-Sized Components
`
`Reply at 9-12
`
`Patent Owner Response
`
`POR (Paper 22) at 23
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`23
`
`POR (Paper 22) at 33-34
`
`
`
`The Experts Agree on the Obvious:
`
`POSAs Knew How to Size Components
`
`Reply at 4-7
`
`Petitioner’s Expert Dr. Williams
`
`PO’s Expert Mr. McAlexander
`
`Q. Does the '155 patent provide any guidance
`on the appropriate size or -- or weight
`restrictions on a battery for use in any of its
`embodiments?
`
`A. The '155, as I recall, addresses a system that
`is inclusive of the various components, such
`as, the power source and the microprocessor
`and the other units that are part of it.
`
`But, in terms of the size and the weight, I
`don’t recall it going into any specifics as
`to what
`that would be. That would be
`dependent upon the actual components
`that are used within the system to embody
`that -- that particular design.
`
`McAlexander Depo. (Ex. 1101) at 35:9-20 (cited Reply at 6)
`
`Dr. Williams Reply Decl. (Ex. 1104) at ¶53 (cited Reply at 5, 6)
`
`Dr. Williams Reply Decl. (Ex. 1104) at ¶57 (cited Reply at 5, 6)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`24
`
`
`
`Prior Art Also Confirms the Obvious:
`
`POSAs Knew How to Size Components
`
`Reply at 4-7
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Dr. Williams Reply Decl. (Ex. 1104) at ¶56 (cited Reply at 5, 6)
`
`25
`
`
`
`Patent Owner Argued that Nakagawa Already Depicts a Specific
`
`Headset Design; Patent Owner’s Own Expert Disagrees
`
`Petition at 60
`Reply at 4
`
`Patent Owner Response
`
`PO’s Expert Mr. McAlexander
`
`Reply
`
`POR (Paper 22) at 19
`
`Q. Of the three earphone form factors we just mentioned
`from the '155 patent, which of those three form factors
`does the Nakagawa reference disclose?
`
`A. Well, the one that Nakagawa discloses is -- it has -- at
`least symbolically, it looks like it’s two earpieces. Now,
`whether or not that fits in the -- in the outer part of the
`ear or whether it fits inside, it's -- it's impossible to say.
`It's -- it’s a diagram. But it does not show any
`indication of fitting over or around the ear.
`
`* * *
`Q. So it doesn't tell you whether it's in-ear, over-ear or on-
`ear; is that right?
`
`A. Well, there's certainly less -- less -- there's a lack of
`specificity. It's just something that's wired into an
`apparatus, and they -- I don’t recall it giving any more
`specificity than that.
`
`McAlexander Depo. (Ex. 1101) at 12:22-13:7, 14:2-8
`
`PO’s Sur-Reply
`
`NO RESPONSE
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Reply (Paper 25) at 8
`
`26
`
`
`
`PO’s “Reversal” Argument Manufactures
`
`a Non-Existent Inconsistency
`
`Patent Owner’s Sur-Reply
`
`Petition
`
`Reply
`
`Sur-Reply (Paper 33) at 2
`
`Petition
`
`Reply
`
`Petition at 61
`
`Reply (Paper 25) at 4
`
`Repl
`y
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`27
`
`Petition at 75
`
`Reply (Paper 25) at 8
`
`
`
`Mr. McAlexander’s Testimony Should Be Given Little Weight
`
`Reply at 3, 6, 11-12
`
`Patent Owner Response
`
`PO’s Expert Mr. McAlexander
`
`POR (Paper 22) at 20-21
`
`McAlexander Decl. (Ex. 2023) at ¶35 (cited POR at 20-21)
`
`“Mr. Baker’s testimony simply repeats the conclusions articulated in
`
`the Petition with no further explanation or support.…‘Expert testimony
`
`that does not disclose the underlying facts or data on which the opinion is
`
`based is entitled to little or no weight.’ See 37 C.F.R. § 42.65(a).”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`28
`
`Tesla, Inc. v. Nikola Corp., IPR2019-01646, Paper 7 at 19 (Mar. 27, 2020) (cited Reply at 3, 6, 12)
`
`
`
`Petition at 24-56
`Reply at 12-21
`
`Rezvani-based Grounds
`
`An Overview
`
`GROUND
`
`Rezvani + Skulley
`
`Rezvani + Skulley + Feder
`
`Rezvani + Skulley + Hind
`
`Rezvani + Skulley + Rosener
`
`Rezvani + Skulley + Wilson
`
`2A.
`
`2B.
`
`2C.
`
`2D.
`
`2E.
`
`CLAIMS
`
`1-4, 6-8, 14
`
`11-12
`
`13
`
`5, 9
`
`10
`
`BASIS
`
`103
`
`103
`
`103
`
`103
`
`103
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`29
`
`
`
`The Institution Decision Found a Reasonable Likelihood that Claims 1-14
`
`Would Have Been Obvious Over the Rezvani-Based Grounds
`
`ID at 41-44
`
`ID (Paper 16) at 41
`
`ID (Paper 16) at 43
`
`ID (Paper 16) at 44
`
`ID (Paper 16) at 44
`
`ID (Paper 16) at 45
`
`30
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Rezvani Discloses a Wireless Headset Performing a
`
`“Seamless Handoff Between Multiple Wireless Interfaces”
`
`Petition at 25-27, 35-36
`Reply at 12-21
`
`Rezvani
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`31
`
`Rezvani (Ex. 1016) at Abstract, Fig. 8 (cited Petition at 25)
`
`
`
`Skulley Discloses that Conventional Headsets Had
`
`Two Earphones for Stereo and Three Design Types
`
`Petition at 27-29
`
`Skulley
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`32
`
`Skulley (Ex. 1017), 1:22-38 (cited Petition at 27-28)
`
`
`
`The Proposed Rezvani-Skulley Combination (Ground 2A)
`
`Petition at 27-29
`
`Petition
`
`Petition at 29
`
`Petitioner’s Expert Dr. Casali
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Casali Decl. (Ex. 1005) ¶111 (cited Petition at 29)
`
`33
`
`
`
`POSAs Had Multiple Reasons to Pursue
`
`the Rezvani-Skulley Combination
`
`Petition
`
`Rezvani
`
`Petition at 27-29
`
`Skulley
`
`Rezvani (Ex. 1016), [0017] (cited Petition at 28)
`
`Dr. Casali
`
`Skulley (Ex. 1017), 1:21-24 (cited Petition at 28-29)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`34
`
`Petition at 28-29
`
`Casali Decl. (Ex. 1005) ¶108 (cited Petition at 28)
`
`
`
`The Parties’ Dispute in Ground 2A Is Narrow
`
`Petition at 35-36
`Reply at 12-21
`
`’155 Patent
`
`• No dispute that POSAs
`had reason to pursue the
`proposed combinations.
`
`• No dispute that Rezvani-Skulley
`combinations disclose all
`limitations of claims 2-14.
`
`• Only dispute is whether the
`Rezvani-Skulley headset
`performs claim 1’s “transition
`automatically” limitation.
`
`• Patent Owner does not
`separately contest
`Grounds 2B-2E.
`
`’155 Patent, Claim 1 (cited Petition at 35-36)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`35
`
`
`
`Petition at 25-27, 35-36
`Reply at 12-21
`
`Rezvani’s Headset Performs a
`Seamless Handoff Between Multiple
`Wireless Interfaces Connected to
`Different Digital Audio Sources
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`36
`
`
`
`Rezvani’s Abstract Shows Its Headset Performs “Seamless Handoff”
`
`Between Wireless Networks Connected to Different Audio Sources
`
`Petition at 25-27, 35-36
`ID at 36
`Reply at 12-21
`
`Rezvani
`
`Institution Decision
`
`Rezvani (Ex. 1016) at Abstract (cited Petition at 25)
`
`Patent Owner Response
`
`NO RESPONSE TO ABSTRACT
`
`Institution Decision at 36
`
`PO’s Sur-Reply
`
`Reply
`
`NO RESPONSE TO ABSTRACT
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Reply (Paper 25) at 14
`
`37
`
`
`
`Rezvani’s Claims Show Its Headset Performs “Seamless Handoff”
`
`Between Wireless Networks Connected to Different Audio Sources
`
`Petition at 25-27, 35-36
`ID at 39-40
`Reply at 12-21
`
`Rezvani
`
`Institution Decision
`
`Rezvani (Ex. 1016) at Claim 32 (cited Petition at 35)
`
`Rezvani (Ex. 1016) at Claim 36 (cited Petition at 35)
`
`Institution Decision at 39-40
`
`Patent Owner Response
`
`NO RESPONSE TO CLAIMS 32, 36
`
`PO’s Sur-Reply
`
`Reply
`
`NO RESPONSE TO CLAIMS 32, 36
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Reply (Paper 25) at 14
`
`38
`
`
`
`Rezvani’s Figure 8 Also Shows Its Headset Performs “Seamless Handoff”
`
`Between Wireless Networks Connected to Different Audio Sources
`
`Petition at 25-27, 35-36
`Reply at 12-21
`
`Rezvani
`
`Rezvani
`
`Rezvani (Ex. 1016) at Fig. 8
`
`Petitioner’s Expert Dr. Williams
`
`Rezvani (Ex. 1016) at Abstract (cited Petition at 25, 29)
`
`Rezvani
`
`Dr. WIlliams Opening Decl. (Ex. 1003) at ¶106 (cited Petition at 25-26)
`
`Rezvani (Ex. 1016) at Claim 32 (cited Petition at 35)
`
`Dr. Williams Reply Decl. (Ex. 1104) at ¶13 (cited Reply at 13)
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Rezvani (Ex. 1016) at Claim 36 (cited Petition at 35)
`
`39
`
`
`
`Rezvani’s Figure 8 Also Shows Its Headset Performs “Seamless Handoff”
`
`Between Wireless Networks Connected to Different Audio Sources
`
`Petition at 25-27, 35-36
`Reply at 12-21
`
`Rezvani
`
`PO’s Expert Mr. McAlexander
`
`Rezvani (Ex. 1016) at Fig. 8
`
`McAlexander Decl. (Ex. 2023) at ¶49
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`40
`
`
`
`Rezvani’s Figure 8 Also Shows Its Headset Performs “Seamless Handoff”
`
`Between Wireless Networks Connected to Different Audio Sources
`
`Petition at 25-27, 35-36
`Reply at 12-21
`
`Rezvani
`
`PO’s Expert Mr. McAlexander
`
`Rezvani (Ex. 1016) at Fig. 8
`Petitioner’s Expert Dr. Williams
`
`Rezvani
`
`McAlexander Decl. (Ex. 2023) at ¶49
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Rezvani (Ex. 1016) at [0040], [0041]
`
`41
`
`Dr. WIlliams Reply Decl. (Ex. 1104) at ¶19
`
`
`
`Dr. Williams’ Reply Testimony Is Proper
`
`ID at 39
`Reply at 14-15
`
`Institution Decision
`
`PO’s Sur-Reply
`
`Institution Decision (Paper 16) at 39
`
`Sur-Reply (Paper 33) at 13
`
`PO’s Argument Contradicts
`Institution Decision and Trial
`Practice Guide
`
`“[T]he Board will permit the petitioner, in its reply brief, to address
`issues discussed in the institution decision…. A party also
`may submit rebuttal evidence in support of its reply.”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`42
`
`PTAB Consolidated Trial Practice Guide at 73 (Nov. 2019)
`
`
`
`Koss Admitted in Its Own European Patent that Rezvani’s
`
`Headset (Not Handset) Performs the Seamless Handoff
`
`Petition at 10, 36
`Reply at 18, 20-21
`
`Koss’s Own Patent (EP 2,272,259)
`
`Rezvani
`
`Reply
`
`EP ’259 (Ex. 1009), [0003]
`(cited Petition at 10; Reply at 18)
`
`PO’s Sur-Reply
`
`NO RESPONSE
`
`Reply (Paper 25) at 18
`
`“A statement in a patent that something is in the prior art is binding on the
`applicant and patentee for determinations of anticipation and obviousness.”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`43
`
`Constant v. Advanced Micro-Devices, 848 F.2d 1560, 1570 (Fed. Cir. 1988) (cited Petition at 33)
`
`
`
`Petition at 25-27, 35-36
`Reply at 12-21
`
`Rezvani’s “Seamless Handoff”
`Is Automatic
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`44
`
`
`
`Rezvani’s “Seamless Handoff” Occurs Without User Intervention,
`
`Which the ’155 Patent Says Is an “Automatic Transition”
`
`Petition at 25-27, 35-36
`Reply at 12-21
`
`’155 Patent
`
`Rezvani
`
`Rezvani (Ex. 1016) at Abstract (cited Petition at 25)
`
`Ex. 1031
`
`’155 Patent, 2:55-67
`
`Ex. 1103
`
`Ex. 1031, [0278]-[0279] (cited Dr. Williams Opening
`Decl. (Ex. 1003) at ¶ 39; Petition at 36)
`
`’155 Patent, 5:17-22 (cited Petition at 36)
`
`Ex. 1103, [0047] (cited Dr. Williams Reply Decl. (Ex.
`1104) at ¶ 31; Reply at 20)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`45
`
`
`
`Koss’s Argument that Rezvani’s “Seamless Handoff” Is Not Automatic
`
`Is Supported Only by Conclusory Testimony that Parrots the POR
`
`Petition at 36
`Reply at 3, 6, 18
`
`Patent Owner Response
`
`PO’s Expert Mr. McAlexander
`
`POR (Paper 22) at 15-16
`
`McAlexander Decl. (Ex. 2023) at ¶¶60-61 (cited POR at 15-16)
`
`“Mr. Baker’s testimony simply repeats the conclusions articulated in
`
`the Petition with no further explanation or support.…‘Expert testimony
`
`that does not disclose the underlying facts or data on which the opinion is
`
`based is entitled to little or no weight.’ See 37 C.F.R. § 42.65(a).”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Tesla, Inc. v. Nikola Corp., IPR2019-01646, Paper 7 at 19 (Mar. 27, 2020) (cited Reply at 3, 6, 12)
`
`46
`
`
`
`Even If the Handset Initiated the Headset’s Handoff, the Headset’s
`
`Processor Would Execute the Handoff Without User Intervention
`
`Petition at 36
`Reply at 18
`
`’155 Patent
`
`PO’s Expert Mr. McAlexander
`
`Reply
`
`’155 Patent, Claim 1
`
`Q. Assuming you're correct, that it's the handset that provides an
`instruction to the headset to make a transition between cellular
`and Wi-Fi, for example, the processor in the headset would still
`have to implement
`that
`transition between these blocks,
`wouldn't it?
`
`A.
`
`(Deponent viewing exhibit.) If we look at -- I mean, figure --
`looking again at the two figures, Figure 1 doesn't identify a
`processor. It divide -- it actually shows different sections, such
`as an audio subsystem and the VoIP. It shows different
`sections. If I look just at Figure 2, the microprocessor sits at the
`juxtaposition between memory, which provides the executable
`instructions, the USB and a control button user interface and a
`baseband processor.
`It's not as likely that antenna interfaces
`that come in from the multiple input/multiple output system, the
`-- the MIMO system, that the processor would be involved in --
`in executing. It would not be the -- according to the -- my
`understanding of the handset making the decision and the actual
`selection for that. The microprocessor would cer -- would, I
`think, be involved in executing the result of that decision, but it
`would self -- it, in and in itself, would not be making that
`decision.
`
`McAlexander Depo. (Ex. 1101) at 64:12-65:12 (cited Reply at 18)
`
`PO’s Sur-Reply
`
`NO RESPONSE
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`47
`
`Reply (Paper 25) at 18
`
`
`
`In Response to a Rejection Over Rezvani, Koss Admitted
`
`Rezvani Discloses the “Transition Automatically” Limitation
`
`European Patent Application
`
`European Patent Office (EPO)
`
`Petition at 10, 36
`Reply at 18, 20-21
`
`Rezvani
`
`EPO
`
`EP ’259 File History (Ex. 1011) at 4
`(cited Petition at 10; Reply at 18)
`
`EP ’259 File History
`(Ex. 1010) at 5
`
`EP 2,272,259, claim 1
`
`Patent Owner
`
`EP ’259 File History (Ex. 1011) at 5
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Ex. 1009, Cl. 1 (cited Petition at 33)
`
`48
`
`Rezvani
`
`EP ’259 File History (Ex. 1012) at 3
`
`
`
`Petition at 11-24
`Reply at 21-28
`
`Ground 1 (Pelland)
`
`An Overview
`
`GROUND
`
`1.
`
`Pelland
`
`CLAIMS
`
`1-14
`
`BASIS
`
`102
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`49
`
`
`
`Pelland Is the Publication of the
`
`PCT Application in the Priority Chain
`
`Petition at 3, 11-12
`Reply at 21
`
`’155 Patent
`
`’155 Patent (Ex. 1001), codes (60), (63)
`
`Pelland (Ex. 1013) (cited Petition at 3, 11)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`50
`
`
`
`If Pelland Is Prior Art, There Is No Genuine
`
`Dispute that Pelland Anticipates Claims 1-14
`
`Petition at 17-24
`Reply at 21-22
`
`Petition
`
`Petition at 17
`
`Patent Owner Response
`
`Does Not Dispute
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`51
`
`
`
`If Pelland Is Prior Art, There Is No Genuine
`
`Dispute that Pelland Anticipates Claims 1-14
`
`Petition at 17-24
`Reply at 21, 28
`
`PO’s Sur-Reply
`
`Petitioner’s Expert Dr. Williams
`
`Q. Does Exhibit 1013 disclose wireless earphones
`transitioning from one network to another network?
`
`A. Restricted to ad hoc to infrastructure to
`infrastructure that it knows about, yes.
`
`Q.
`
`So I can take from your answer that it does disclose
`transitioning from one network to a second network?
`
`A. Restricted to ad hoc to infrastructure.
`
`Q.
`
`* * *
`So you are saying it doesn't disclose that transition
`from one network to another wireless network, is
`that correct?
`
`A. Generically, no.
`
`Dr. Williams Depo. (Ex. 2024) at 41:9-19;42:9-13
`
`Sur-Reply (Paper 33) at 22
`
`“For example, a CIP's claim for a genus might not be enabled by a
`
`parent's disclosure, but that parent may enable a species that anticipates
`
`the CIP's claim for a genus.”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`52
`
`Chester v. Miller, 906 F.2d 1574, 1577 (Fed. Cir. 1990) (cited Petition at 17)
`
`
`
`Claim 1 Recites a Transition From One Generic Network
`
`to Another Generic Network that Occurs for Any Reason
`
`Petition at 7, 12-16
`Reply at 22-27
`
`’155 Patent (Ex. 1001) at Claim 1 (cited Petition at 7)
`
`Network Transition Occurs:
`
`1. Between Any Two
`“Wireless Networks”
`
`2. For Any Reason
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`53
`
`
`
`Claim 1 Recites a Transition From One Generic Network
`
`to Another Generic Network that Occurs for Any Reason
`
`Petition at 7, 12-16
`Reply at 22-27
`
`’155 Patent (Ex. 1001) at Claim 1 (cited Petition at 7)
`
`Network Transition Occurs:
`
`1. Between Any Two
`“Wireless Networks”
`
`2. For Any Reason
`
`Koss’s Infringement Contentions
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Koss’s Preliminary Infringement Contentions (Ex. 1055) at 161 (cited Petition at 2; Reply at 24)
`
`54
`
`
`
`The Parties’ Dispute Is Narrow
`
`Petition at 12-16
`Reply at 22-27
`
`Do the priority applications reasonably convey
`to POSAs that the applicants possessed an
`automatic network transmission that occurs:
`
`1. between two networks of any type, e.g., from one ad hoc
`network to another ad hoc network, and
`
`2.
`
`for any reason, e.g., audio-source priority.
`
`Petition at 13-16
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`55
`
`
`
`Even Though Written Description Is a Fact Issue,
`
`Patent Owner’s Expert Did Not Address It at All
`
`Reply at 22-23
`
`PO’s Expert Declaration
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`McAlexander Decl. (Ex. 2023) at 2
`
`56
`
`
`
`The Priority Applications Consistently Describe a Network Transition
`
`that Occurs When the Ad Hoc Network Connection Is Lost
`
`Petition at 5-7, 13-15
`Reply at 23-24
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`57
`
`’155 Patent (Ex. 1001), 1:65-2:17 (cited Petition at 5-6, 14)
`
`
`
`The Priority Applications Consistently Describe a Network Transition
`
`that Occurs When the Ad Hoc Network Connection Is Lost
`
`Petition at 5-7, 13-15
`Reply at 23-24
`
`’155 Patent (Ex. 1001), 5:9-16 (cited Petition at 6)
`
`’155 Patent (Ex. 1001), 5:37-41 (cited Petition at 6)
`
`’155 Patent (Ex. 1001), 10:7-17 (cited Petition at 6)
`
`’155 Patent (Ex. 1001), 11:8-21 (cited Petition at 6)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`58
`
`
`
`The Priority Applications Consistently Describe a Network Transition
`
`that Occurs When the Ad Hoc Network Connection Is Lost
`
`Petition at 5-7, 13-15
`Reply at 23-24
`
`’155 Patent (Ex. 1001), 14:8-11 (cited Petition at 6)
`
`’155 Patent (Ex. 1001), 10:27-42 (cited Petition at 6)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`59
`
`’155 Patent (Ex. 1001), 14:44-55 (cited Petition at 6)
`
`’155 Patent (Ex. 1001), 14:24-36 (cited Petition at 6)
`
`
`
`The Priority Applications Consistently Describe a Network Transition
`
`that Occurs When the Ad Hoc Network Connection Is Lost
`
`Petition at 5-7, 13-15
`Reply at 23-24
`
`’155 Patent (Ex. 1001), 15:33-37 (cited Petition at 6)
`
`’155 Patent (Ex. 1001), 16:12-22 (cited Petition at 6)
`
`’155 Patent (Ex. 1001), 15:60-64 (cited Petition at 6)
`
`’155 Patent (Ex. 1001), 16:29-35 (cited Petition at 6)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`60
`
`
`
`The Priority Applications Consistently Describe the “Present Invention” as a Network
`
`Transition that Occurs When the Ad Hoc Network Connection Is Lost
`
`Petition at 5-7, 13-15
`Reply at 23-24
`
`’155 Patent (Ex. 1001), 1:66-2:6 (cited Petition at 14)
`
`’155 Patent (Ex. 1001), 15:12-37 (cited Petition at 14)
`
`’155 Patent (Ex. 1001), 13:59-14:11(cited Petition at 14)
`
`“These references to ‘the present invention’ strongly
`suggest that the claimed invention is limited to a blue
`noise mask … Accordingly, the 1990 and 1991
`Applications disclose only a blue noise mask.”
`
`’155 Patent (Ex. 1001), 16:6-15 (cited Petition at
`14)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`61
`
`Res. Corp. Techs. v. Microsoft, 627 F.3d 859, 872 (Fed. Cir. 2010)
`
`
`
`The Priority Applications Consistently Claimed a Network Transition
`
`that Occurs When the Ad Hoc Network Connection Is Lost
`
`Petition at 1, 5-7, 13-15
`Reply at 23-24
`
`April 2009 – PCT Application
`
`May 2012 – US 8,190,203
`
`2018
`’155 Patent Filed
`
`July 2012 – EP 2272259
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`2013
`
`2014
`
`2015
`
`2016
`
`2017
`
`2018
`
`2019
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`PCT Application (Ex. 1007) at claim 1 (cited Petition at 1); U.S. Patent No. 8,190,203 (Ex. 1008) at claim 1 (cited Petition at 1);
`EP 2 272 259 B1 (Ex. 1009) at claim 1 (cited Petition at 1)
`
`62
`
`
`
`Patent Owner’s Prosecution Strategy Is a
`
`Hallmark of Inadequate Written Description
`
`Petition at 12-15
`
`No Written Description: “Mr. Swan used the
`reissue process to impermissibly obtain
`claims unsupported by the written description.”
`
`No Written Description: “The relevant
`claims, moreover, include broad language
`added during prosecution.”
`
`Atl. Res. Mktg. Sys., Inc. v. Troy, 659 F.3d 1345, 1355 (Fed. Cir. 2011)
`
`Synthes USA, LLC v. Spinal Kinetics, Inc., 734 F.3d 1332, 1341 (Fed. Cir. 2013)
`
`No Written Description: “Hence, the asserted
`spikeless claims were not filed with the
`original application; rather they were added
`years later during prosecution.”
`
`No Written Description: “After almost
`seven years of prosecution and multiple
`amendments, the [relevant] patent issued.
`None of the claims as issued included [relevant
`limitation present in all original claims]…”
`
`ICU Medical, Inc. v. Alaris Med. Sys., 558 F.3d 1368 (Fed. Cir. 2009)
`
`Rivera v. ITC, 857 F.3d 1315, 1317 (Fed. Cir. 2017)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`63
`
`
`
`Performing a Network Transition for Reasons Other than Lost Connection Is
`
`Inconsistent with the Invention Described in the Priority Applications
`
`Petition at 5-7, 13-15
`Reply at 23-24
`
`Petitioner’s Expert Dr. Williams
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Dr. Williams Opening Decl. (Ex. 1003) at ¶98 (cited Petition at 13)
`
`64
`
`
`
`Even the Disclosures Cited by Patent Owner All Describe a Network
`
`Transition that Occurs When the Ad Hoc Network Connection Is Lost
`
`Petition at 5-7, 13-15
`Reply at 23-24
`
`Patent Owner Response
`
`POR (Paper 22) at 8
`
`Petitioner’s Expert Dr. Williams
`
`No Expert
`Testimony
`
`PO’s Sur-Reply
`
`No
`Response
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Dr. Williams Reply Decl. (Ex. 1104) at ¶¶48-49 (cited Reply at 23-24)
`
`65
`
`
`
`Patent Owner Concedes the Priority Applications Never
`
`Describe Network Transitions Due to Audio-Source Priority
`
`Petition at 13
`Reply at 24
`
`Patent Owner
`Response
`
`No
`Response
`
`Petitioner’s Reply
`
`Petition at 13
`
`Petition
`
`PO’s Sur-Reply
`
`No
`Response
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Reply (Paper 25) at 24
`
`66
`
`
`
`Patent Owner Never Even Attempts
`
`to Rebut Petitioner’s Authorities
`
`Petition at viii-x
`
`Patent Owner
`
`No Response
`
`Petition at viii-x
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`67
`
`
`
`The Facts Here Align Closely with Past Federal
`
`Circuit Cases Finding No Written Description
`
`Petition at 13-16
`
`Finding written description lacking for claims to a generic “container” that did not require a
`
`“pod” where the need for a “pod” “permeate[d] the entire patent,” which was “silent” on the
`
`possibility of a container with an integrated filter, i.e., one usable without a pod.
`
`Rivera v. ITC, 857 F.3d 1315 (Fed. Cir. 2009) (cited Petition at 13)
`
`“[T]hese spikeless claims thus refer to medical valves generically—covering those valves that
`
`operate with a spike and those that operate only without a spike. But the specification
`
`describes only medical valves with spikes.”
`
`ICU Medical v. Alaris Medical Sys., 558 F.3d 1368 (Fed. Cir. 2009) (cited Petition at 14)
`
`“[I]t is undisputed that the written description for the '465 patent does not disclose to a person
`
`of ordinary skill in the art an invention where the yoke/barrel nut attachment point provides
`
`complete support for the handguard accessory. … Claims 31-36, however, clearly cover such
`
`a design. Put differently, claims 31-36 exceed in scope the subject matter that inventor
`
`Mr. Swan chose to disclose to the public in the written description.
`
`Atl. Res. Mktg. Sys. v. Troy, 659 F.3d 1345 (Fed. Cir. 2011) (cited Petition at 16)
`
`Finding lack of written description for claims reciting a plate with a “plurality of
`
`openings” where “[t]he original disclosure claimed and disclosed a plurality of
`
`grooves and a plurality of channels, but did not describe ‘openings’ generally.”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`68
`
`Synthes USA LLC v. Spinal Kinetics, Inc., 734 F.3d 1332 (Fed. Cir. 2013) (cited in Petition at 15)
`
`
`
`Patent Owner’s Written Description Cases, Cited for the
`
`First Time in the Sur-Reply, Are Distinguishable
`
`Sur-Reply at 19-20
`
`In re Vickers, 141 F.2d 522 (CCPA 1944): Specification explicitly disclosed an “alternative mode of
`operation” that the challenged claim covered.
`
`Here: No “alternative mode” disclosed in which the earphone either transitions because of
`audio-source priority or from one ad hoc network to another ad
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