`
`Paper No. __
`
`Filed on behalf of Petitioner by:
`
`Michael N. Rader, Reg. No. 52,146
`Gregory S. Nieberg, Reg. No. 57,063
`WOLF, GREENFIELD & SACKS, P.C.
`600 Atlantic Avenue
`Boston, MA 02210
`(617) 646-8000 Phone
`(617) 646-8646 Fax
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`BOSE CORPORATION,
`Petitioner,
`
`v.
`
`KOSS CORPORATION,
`Patent Owner.
`_____________
`
`Case No. IPR2021-00297
`Patent No. 10,368,155
`_____________
`
`PETITIONER’S PRELIMINARY REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`
`
`TABLE OF CONTENTS
`
`Factor 1: Whether the Court Will Issue a Stay Is Unknown ........................... 1
`
`Factors 2 and 5: Petitioner is Not a Defendant in the Plantronics
`Litigation, and an Early Trial in that Litigation Is Unlikely Anyway ............. 2
`
`Factor 3: There Has Been Little Litigation Investment ................................... 3
`
`Factor 4: Petitioner’s Stipulation Eliminates Overlap ..................................... 4
`
`Factor 6: Patent Owner’s Response to the Merits Is Weak ............................. 4
`
`
`
`- i -
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`Apple Inc. v. Fintiv Inc.,
`IPR2020-00019, Paper 11 (Mar. 20, 2020) (precedential) .................................1, 2
`Dolby Labs. v. Intertrust Tech.,
`IPR2020-00665, Paper 11 (Feb. 16, 2021) .........................................................2, 3
`Facebook v. Onstream Media,
`IPR2020-01525, Paper 11 (April 5, 2021) ............................................................. 1
`Google v. Parus Holdings,
`IPR2020-00846, Paper 9 (Oct. 21, 2020) ............................................................... 4
`MediaTek v. Nippon Telegraph,
`IPR2020-01607, Paper 12 (April 2, 2021) ............................................................. 1
`Reckitt Benckiser v. Ansell Healthcare Prods.,
`IPR2017-00066, Paper 35 (Jan. 30, 2018) ............................................................. 4
`Samsung Elecs. v. Acorn Semi,
`IPR2020-01204, Paper 21 (Jan. 13, 2021) ............................................................. 4
`
`Sand Revolution II LLC v. Continental Intermodal Group-Trucking LLC,
`IPR2019-01393, Paper 24 (June 16, 2020) (informative) ..................................1, 4
`Shenzhen Carku Tech. v. The Noco Company,
`IPR2020-00944, Paper 20 (Nov. 12, 2020) ............................................................ 1
`SK hynix v. Netlist,
`IPR2020-01421, Paper 10 (Mar. 16. 2021) ............................................................ 3
`Walmart v. Caracan Canopy Int’l,
`IPR2020-01026, Paper 12 (Dec. 15, 2020) ............................................................ 3
`
`
`
`- ii -
`
`
`
`
`
`LISTING OF EXHIBITS
`
`1011
`
`Exhibit Description
`1001
`U.S. Patent No. 10,368,155 (“the ’155 patent”)
`1002
`Prosecution History of U.S. Patent No. 10,368,155
`1003
`Declaration of Tim A. Williams
`1004
`Curriculum Vitae of Tim A. Williams
`1005
`Declaration of John G. Casali
`1006
`Curriculum Vitae of John G. Casali
`1007
`PCT/US2009/039754 (“PCT application”)
`1008
`U.S. Patent No. 8,190,203
`1009
`European Patent No. 2,272,259 (“EP ’259”)
`1010
`Request for Entry into the European Phase of PCT/US2009/039854
`(European Application No. 093731146.8) (Oct. 19, 2010)
`Communication regarding the transmission of the European search
`report (European Application No. 093731146.8) (June 10, 2011)
`Communication from Applicant (European Application No.
`093731146.8) (Nov. 30, 2011)
`PCT Publication No. WO2009/126614 (“Pelland”)
`Prosecution History of U.S. Patent No. 8,190,203
`PCT/US2008/88656 (PCT Publication No. WO2009/086555A1)
`U.S. Patent Application Publication No. 2007/0165875 (“Rezvani”)
`U.S. Patent No. 6,856,690 (“Skulley”)
`U.S. Patent Application Publication No. 2004/0142693 (“Feder”)
`U.S. Patent No. 7,069,452 (“Hind”)
`U.S. Patent Application Publication No. 2008/0076489 (“Rosener”)
`U.S. Patent No. 7,457,649 (“Wilson”)
`U.S. Patent Application Publication No. 2003/0223604 (“Nakagawa”)
`
`1012
`
`1013
`1014
`1015
`1016
`1017
`1018
`1019
`1020
`1021
`1022
`
`- iii -
`
`
`
`
`
`Exhibit Description
`1023
`U.S. Patent Application Publication No. 2007/0253579
`1024
`U.S. Patent No. 7,627,289
`1025
`U.S. Patent No. 5,889,870
`1026
`U.S. Patent Application Publication No. 2008/0031475
`1027
`IEEE Std. 315, Graphic Symbols for Electrical and Electronic Diagrams
`(1975) (Reaffirmed 1993)
`U.S. Patent Application Publication No. 2006/0141950
`U.S. Patent Application Publication No. 2006/0083331
`U.S. Patent Application Publication No. 2007/0206776
`U.S. Patent Application Publication No. 2005/0286466
`RESERVED
`U.S. Patent No. 5,761,298
`U.S. Patent No. 5,960,094
`U.S. Patent No. 6,295,366
`U.S. Patent Application Publication No. 2007/0110017
`U.S. Patent Application Publication No. 2004/0068653
`U.S. Patent Application Publication No. 2008/0113689
`U.S. Patent Application Publication No. 2005/0037818
`U.S. Patent Application Publication No. 2004/0210752
`U.S. Patent Application Publication No. 2007/0149261
`U.S. Patent No. 8,180,078
`U.S. Patent Application Publication No. 2005/0058313
`U.S. Patent Application Publication No. 2007/0147629
`U.S. Patent Application Publication No. 2004/0078812
`U.S. Patent Application Publication No. 2008/0166005
`U.S. Patent Application Publication No. 2003/0065805
`
`1028
`1029
`1030
`1031
`1032
`1033
`1034
`1035
`1036
`1037
`1038
`1039
`1040
`1041
`1042
`1043
`1044
`1045
`1046
`1047
`
`- iv -
`
`
`
`
`
`1049
`1050
`1051
`1052
`1053
`1054
`
`Exhibit Description
`1048
`Internet Archive of
`http://www.bose.com/controller?event=VIEW_PRODUCT_PAGE_EV
`ENT&product=headphones_audio_subcategory (Nov. 1, 2007)
`U.S. Patent Application Publication No. 2007/0092098
`U.S. Patent Application Publication No. 2008/0226094
`U.S. Patent Application Publication No. 2003/0018810
`U.S. Patent Application Publication No. 2007/0258613
`U.S. Patent Application Publication No. 2009/0046869
`Redline comparisons of written description text in alleged priority chain
`of U.S. Patent No. 10,368,155
`Koss Corp. v. Bose Corp., 6:20-cv-00661-ADA (Dkt. 1)
`(Complaint & Exs. A-G) (W.D. Tex. July 22, 2020)
`RESERVED
`Order Regarding Court Operation Under the Exigent Circumstances
`Created by the COVID-19 Pandemic (C.J. Garcia) (Mar. 13, 2020)
`Supplemental Order Regarding Court Operation Under the Exigent
`Circumstances Created by the COVID-19 Pandemic (C.J. Garcia)
`(Apr. 15, 2020)
`Supplemental Order Regarding Court Operation Under the Exigent
`Circumstances Created by the COVID-19 Pandemic (C.J. Garcia)
`(May 8, 2020)
`Supplemental Order Regarding Court Operation Under the Exigent
`Circumstances Created by the COVID-19 Pandemic (C.J. Garcia)
`(June 18, 2020)
`Supplemental Order Regarding Court Operation Under the Exigent
`Circumstances Created by the COVID-19 Pandemic (C.J. Garcia)
`(July 2, 2020)
`Supplemental Order Regarding Court Operation Under the Exigent
`Circumstances Created by the COVID-19 Pandemic (C.J. Garcia)
`(Aug. 6, 2020)
`
`1055
`
`1056
`1057
`
`1058
`
`1059
`
`1060
`
`1061
`
`1062
`
`- v -
`
`
`
`
`
`1065
`
`1066
`
`1067
`
`1068
`
`1064
`
`
`Exhibit Description
`1063
`Supplemental Order Regarding Court Operation Under the Exigent
`Circumstances Created by the COVID-19 Pandemic (C.J. Garcia)
`(Sept. 21, 2020)
`Supplemental Order Regarding Court Operation Under the Exigent
`Circumstances Created by the COVID-19 Pandemic (C.J. Garcia)
`(Oct. 14, 2020)
`Supplemental Order Regarding Court Operation Under the Exigent
`Circumstances Created by the COVID-19 Pandemic (C.J. Garcia)
`(Nov. 18, 2020)
`PACER Docket Activity Report (Criminal Matters) for the United
`Stated District Court, Western District of Texas, Austin and Waco
`Divisions (01/01/2000-11/30/2020)
`Open Civil Matters Before J. Albright (W.D. Tex.) Not on Appeal, Lex
`Machina, https://law.lexmachina.com (last checked 11/30/2020)
`Open Civil Matters Before J. Albright (W.D. Tex.) Not on Appeal Filed
`Before July 22, 2020, Lex Machina, https://law.lexmachina.com (last
`checked 11/30/2020)
`Open Patent Matters Before J. Albright (W.D. Tex.) Not on Appeal, Lex
`Machina, https://law.lexmachina.com (last checked 11/30/2020)
`Open Patent Matters Before J. Albright (W.D. Tex.) Not on Appeal
`Filed Before July 22, 2020, Lex Machina, https://law.lexmachina.com
`(last checked 11/30/2020)
`Scott McKeown, District Court Trial Dates Tend to Slip After PTAB
`Discretionary Denials, https://www.patentspostgrant.com/district-court-
`trial-dates-tend-to-slip-after-ptab-discretionary-denials/ (July 24, 2020)
`(last checked Dec. 1, 2020)
`Civil Docket, Koss Corp. v. Bose Corp., 6:20-cv-00661
`(W.D. Tex.) (as of Dec. 7, 2020)
`Civil Docket, Koss Corp. v. PEAG LLC d/b/a JLab Audio,
`6:20-cv-00662 (W.D. Tex.) (as of Dec. 7, 2020)
`Civil Docket, Koss Corp. v. Plantronics, Inc., 6:20-cv-00663
`(W.D. Tex.) (as of Dec. 7, 2020)
`
`1069
`
`1070
`
`1071
`
`1072
`
`1073
`
`1074
`
`- vi -
`
`
`
`
`
`1076
`
`1077
`
`Exhibit Description
`1075
`Civil Docket, Koss Corp. v. Skullcandy, Inc., 6:20-cv-00664
`(W.D. Tex.) (as of Dec. 7, 2020)
`Skrainer, S. F., Royster, L.H., Berger, E.H., & Pearson, R. G. “Do
`Personal Radio Headsets Provide Hearing Protection,” Sound and
`Vibration, 19(5) (1985), 16-19
`Casali, J. G. & Park, M. Y., “Attenuation performance of four hearing
`protectors under dynamic movement and different user fitting
`conditions,” Human Factors (1990)
`U.S. Patent No. 7,564,989
`RESERVED
`Civil Docket, MV3 Partners LLC v. Roku, Inc., 6:18-cv-00308
`(W.D. Tex.) (as of Dec. 1, 2020)
`U.S. Patent Application Publication No. 2007/0123171
`Agreed Scheduling Order, Koss Corp. v. Plantronics et al.,
`6:20-cv-00663, -00664, -00665 (D.I. 28) (W.D. Tex. Nov. 30, 2020)
`U.S. Patent No. 8,571,544
`Prosecution History of U.S. Patent No. 8,571,544
`U.S. Patent No. 9,049,502
`Prosecution History of U.S. Patent No. 9,049,502
`U.S. Patent No. 9,438,987
`Prosecution History of U.S. Patent No. 9,438,987
`U.S. Patent No. 9,497,535
`Prosecution History of U.S. Patent No. 9,497,535
`U.S. Patent No. 9,729,959
`Prosecution History of U.S. Patent No. 9,729,959
`U.S. Patent No. 9,986,325
`Prosecution History of U.S. Patent No. 9,986,325
`U.S. Patent No. 10,206,025
`
`1083
`1084
`1085
`1086
`1087
`1088
`1089
`1090
`1091
`1092
`1093
`1094
`1095
`
`1078
`1079
`1080
`
`1081
`1082
`
`- vii -
`
`
`
`
`
`Exhibit Description
`1096
`Prosecution History of U.S. Patent No. 10,206,025
`1097
`April 6, 2021 Letter Stipulation Regarding Prior Art
`1098
`Order Granting Motion to Dismiss in Koss Corp. v. Skullcandy, Inc.,
`6:20-cv-00664 (W.D. Tex.) (D.I. 38, March 31, 2021)
`
`- viii -
`
`
`
`
`
`Patent Owner’s (“PO”) discretionary denial arguments in its POPR rely
`
`heavily on cases against other defendants. PO improperly “mixes and matches”
`
`Fintiv factors based on the Bose litigation and the Skullcandy and Plantronics
`
`litigations. Shenzhen Carku Tech. v. The Noco Company, IPR2020-00944
`
`(Nov. 12, 2020), Paper 20 at 56 (“We need to be careful not to ‘mix and match’
`
`selectively the factors among different cases.”).
`
`In any event, on March 31 the Court dismissed the Skullcandy litigation
`
`(Ex. 1098) and on April 8 the Court stayed the Plantronics litigation.1 Further, on
`
`April 6 Petitioner provided a prior art stipulation removing any overlap between
`
`this proceeding and the Bose litigation. Ex. 1097. These developments reinforce
`
`that discretionary denial is unwarranted here.
`
`1.
`
`Factor 1: Whether the Court Will Issue a Stay Is Unknown
`Contrary to PO’s argument,2 the Board, following Sand Revolution II,
`
`consistently finds this factor neutral absent a stay ruling from Judge Albright. E.g.,
`
`Facebook v. Onstream Media, IPR2020-01525, Paper 11 at 9-10 (April 5, 2021);
`
`MediaTek v. Nippon Telegraph, IPR2020-01607, Paper 12 at 12 (April 2, 2021).
`
`
`
` See April 8 “Text Order” in W.D. Tex. Case No. 6:20-cv-00663.
`
` 1
`
`2 PO argues based on Roku that Judge Albright disfavors stays (POPR, 8-9), but his
`
`postponement of the Roku trial tips Factor 2 further in Bose’s favor. Petition, 82.
`
`- 1 -
`
`
`
`
`
`2.
`
`Factors 2 and 5: Petitioner is Not a Defendant in the Plantronics
`Litigation, and an Early Trial in that Litigation Is Unlikely Anyway
`PO inconsistently argued that (a) Factor 2 favors institution because the
`
`Skullcandy and Plantronics cases were set for trial two months before the FWD,
`
`and (b) Factor 5 favors institution because Bose is a defendant (even though Bose
`
`is a defendant in a different litigation with a later expected trial, in the same month
`
`as the FWD). POPR, 9-11, 15. To avoid such inconsistency, where there are
`
`multiple litigations, Factors 2 and 5 may be considered together. E.g., Dolby Labs.
`
`v. Intertrust Tech., IPR2020-00665, Paper 11 at 13-17 (Feb. 16, 2021).
`
`“If a petitioner is unrelated to a defendant in an earlier court proceeding, the
`
`Board has weighed this fact against exercising discretion to deny institution.”
`
`Apple v. Fintiv, IPR2020-00019, Paper 11 at 13-14 (Mar. 20, 2020) (precedential).
`
`Citing this language, the Board recently held that a pre-FWD trial involving a party
`
`unrelated to petitioner did not favor discretionary denial under Factor 2. Dolby, 15
`
`(“Dolby is not a party to the Texas Actions. Contrary to Intertrust’s arguments,
`
`this is relevant to our analysis.”). In any event, as noted above, other than Bose’s
`
`case, the only remaining W.D. Tex. litigation involving the ’155 patent is now
`
`stayed while the Court considers Plantronics’ motion to transfer. See supra n. 1.3
`
`
` 3
`
` Following Skullcandy’s dismissal, Bose sued Skullcandy in Utah, but no
`
`schedule has been set in that litigation. D. Utah Case No. 2:21-cv-00203.
`
`- 2 -
`
`
`
`
`
`The uncertainty over Plantronics’ trial date (Petition, 81-83) is enhanced
`
`by the recently-granted stay of the Plantronics litigation. Further, Bose’s diligence
`
`in filing the petition so that the FWD will issue the same month as the Bose trial4
`
`far outweighs the uncertain Plantronics trial which—even if it remained as
`
`currently scheduled—would occur just two months before the FWD. Dolby, 13-17
`
`(lack of pre-FWD trial date for Dolby outweighed other defendants’ trial scheduled
`
`eight months before FWD); Walmart v. Caracan Canopy Int’l, IPR2020-01026,
`
`Paper 12 at 11-13 (Dec. 15, 2020) (similar).
`
`3.
`
`Factor 3: There Has Been Little Litigation Investment
`PO argues Factor 3 based on the Plantronics Markman hearing (now stayed)
`
`and Bose’s Markman briefing. But this factor favors institution where—as here—
`
`fact discovery, final contentions, and expert discovery will occur after institution.
`
`SK hynix v. Netlist, IPR2020-01421, Paper 10 at 9-10 (Mar. 16. 2021) (“most of
`
`the work in a patent case occurs after the Markman hearing”).
`
`Koss disputes Bose’s promptness because Koss sued in July. POPR, 13.
`
`But the complaint (Ex. 1055) asserted only claim 1, and Bose filed this IPR against
`
`all 14 claims of the ’155 patent—before its answer to the complaint was even due.
`
`
`
` If Bose’s pending motion to dismiss for improper venue is granted, there will be
`
` 4
`
`no scheduled trial date for Bose at all.
`
`- 3 -
`
`
`
`
`
`4.
`
`Factor 4: Petitioner’s Stipulation Eliminates Overlap
`A stipulation not to pursue the IPR grounds in district court favors
`
`institution. Sand Revolution II v. Continental Intermodal Group Trucking,
`
`IPR2019-01393, Paper 24 at 11-12 (June 16, 2020) (informative). Petitioner’s
`
`stipulation goes further, agreeing not to rely on the primary references from this
`
`IPR as primary references in any invalidity ground in district court. Ex. 1097.
`
`PO argued that Plantronics could pursue overlapping invalidity theories in
`
`court. POPR, 14. But the degree of overlap with any arguments Plantronics might
`
`later make at trial is unknown. As in Google v. Parus Holdings, IPR2020-00846,
`
`Paper 9 (Oct. 21, 2020), PO “does not explain persuasively why [the Board] should
`
`preclude Petitioner from raising its challenges here based on the speculation that
`
`unrelated parties in litigation might later raise those same challenges.” Id., 20.
`
`5.
`
`Factor 6: Patent Owner’s Response to the Merits Is Weak
`PO devotes almost four pages of its POPR to Factor 6. PO argues first that
`
`Ground 1’s priority-based challenge is “not strong” in part because it presents an
`
`impermissible section 112 challenge. POPR, 16. The Board, however, has
`
`consistently rejected this argument, explaining that “whether a patent is entitled to
`
`the benefit of earlier filed applications … is properly an issue to be addressed in an
`
`inter partes review.” Samsung Elecs. v. Acorn Semi, IPR2020-01204, Paper 21 at
`
`36-37 (Jan. 13, 2021). See also Reckitt Benckiser v. Ansell Healthcare Prods.,
`
`IPR2017-00066, Paper 35, 13-16 (Jan. 30, 2018) (evaluating priority).
`
`- 4 -
`
`
`
`
`
`In arguing that Ground 2 “is not strong” (POPR, 17), PO relies on a
`
`typographical error to mischaracterize Rezvani-875 (Ex. 1016). PO argues that
`
`Rezvani-875’s paragraph 41 teaches that a “handset” rather than a “headset”
`
`performs the automatic transition of the challenged claims. Id., 17. ¶ 41’s use of
`
`the word “handset” is clearly a typographical error, as ¶ 41 describes Fig. 8, which
`
`depicts a headset. As ¶ 41 explains, Fig. 8 illustrates “simultaneous operation over
`
`a cellular system and a Wifi system” to which “a headset … connect[s].” When it
`
`later says “In addition to simultaneous operation, the handset can support seamless
`
`handoff between two systems,” this is a clear typographical error, as a handset is
`
`not previously discussed in ¶ 41 and is not depicted in Fig. 8. Further, the Abstract
`
`and the claims (e.g., 9, 32, 36) emphasize that the headset performs the transition
`
`(“seamless handoff”). See also Petition, 25, 35-36. Indeed, PO conceded to the
`
`EPO that Rezvani-875 discloses an earphone (not a handset) performing the
`
`automatic transition—an admission that binds Koss. Petition, 9-10, 33, 36.
`
`Finally, PO argues that Nagakawa’s control unit 32 is not the “processor” of
`
`the challenged claims because other components perform Nagakawa’s sound-
`
`source switching functionality. POPR, 18. But, as the Petition explained (at 67),
`
`the control unit 32 controls those other components. Nagakawa, [0054]; Fig. 3.
`
`Date:
`April 14, 2021
`
`
`Respectfully submitted,
`/Michael N. Rader/
`Michael N. Rader, Reg. No. 52,146, Counsel for Petitioner
`
`- 5 -
`
`
`
`
`
`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6(e)(4)
`I certify that on April 14, 2021, I will cause a copy of the foregoing
`
`document, including any exhibits filed therewith, to be served via electronic mail,
`
`as previously consented to by Patent Owner, upon the following:
`
`Mark G. Knedeisen
`Ragae M. Ghabrial
`Michelle Weaver
`
`
`
`
`
`
`
`
`
`
`
`mark.knedeisen@klgates.com
`ragae.ghabrial@klgates.com
`michelle.weaver@klgates.com
`
`/MacAulay Rush /
`MacAulay Rush
`Paralegal
`WOLF, GREENFIELD & SACKS, P.C.
`
`
`
`
`
`
`Date: April 14, 2021
`
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