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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`BOSE CORPORATION,
`Petitioner,
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`v.
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`KOSS CORPORATION,
`Patent Owner.
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`_____________________
`CASE: IPR2021-00297
`U.S. PATENT NO. 10,368,155
`_____________________
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`PATENT OWNER’S SUR-REPLY IN SUPPORT OF
`PRELIMINARY RESPONSE
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`504325934.4
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`IPR2021-00297
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`Petitioner inappropriately relies on the Institution Decision in Shenzhen Carku
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`Tech. Co. v. The Noco Company, IPR2020-00944, Paper 20 (PTAB Nov. 12, 2020)
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`to assert Patent Owner “improperly mixes and matches Fintiv factors” among
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`different cases. Paper 12, 1. The Board in Shenzhen Carku stated “a case for which
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`a close trial date has been set but which does not involve the same prior art as
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`asserted in this proceeding should be considered on its own.” Shenzhen Carku,
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`Paper 20, 56 (emphasis added). The present facts are distinguishable as Plantronics’
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`invalidity contentions rely on exactly the same prior art as Petitioner asserts in this
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`proceeding. Paper 9, 13-14. Thus, Patent Owner is not improperly mixing and
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`matching.
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`Factor 6 - Petitioner’s Arguments Reveal the Weakness of the Petition’s
`Invalidity Arguments
`Remarkably, Petitioner argues that Patent Owner’s Factor 6 arguments are
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`“weak” because an important paragraph in an important reference relied upon by
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`Petitioner in the Petition contains errors. The Petition mischaracterized the plain
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`teachings of Rezvani (Ex. 1016), relevant to Grounds 2A-2E of the Petition, by
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`asserting that Revzani’s “headset performs ‘seamless handoff between two
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`systems.’” Paper 2, 26 (emphasis added). In fact, as pointed out in the POPR
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`(Paper 9, 31), Rezvani states that “the handset can support seamless handoff
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`between two systems.” Ex. 1016, [0041]. In view of this blatant
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`mischaracterization of the prior art in its Petition, Petitioner asserts for the first
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`- 1 -
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`IPR2021-00297
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`time in its Reply, and only through attorney argument, that ¶ [0041] of Rezvani—a
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`reference relied upon by Petition to invalidate the Challenged Claims— includes
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`errors on a critical issue. Paper 12, 5. Despite relying extensively in the Petition
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`on Rezvani as alleging disclosing various claim elements of the ’155 Patent,
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`including the particular paragraph (¶ [0041]) of Rezvani that allegedly contains
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`errors, Petitioners and its experts were silent as to the presence of any alleged error
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`and instead mischaracterized Rezvani’s teachings. Paper 2, 26; Ex. 1003, ¶ 106;
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`Ex. 1005, ¶ 108. Far from showing that Patent Owner’s Factor 6 arguments are
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`weak, Petitioner’s new theories on Rezvani show the weakness of asserted
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`Grounds 2A-2E. Grounds 1 and 3A-3D are weak for the reasons set forth in the
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`POPR.
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`Factor 4 - Petitioner’s Stipulation is Illusory
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`Petitioner’s stipulation states that it “will not seek resolution within the
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`litigations of any ground of invalidity with respect to the claims of the ’155 patent
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`that uses, as a primary prior art reference, any of the following prior art references
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`that are relied upon as primary prior art references in IPR2021-00297:” Pelland,
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`Rezvani, and Nakagawa. Ex. 1097, 1. Despite the stipulation, Fintiv factor 4
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`militates in favor of denying institution. At a minimum, factor 4 only “marginally”
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`favors Petitioner.
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`IPR2021-00297
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`Petitioner asserts that its “stipulation eliminates overlap.” Paper 12, 4. This
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`is false. Petitioner’s stipulation is illusory because it applies only when Pelland,
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`Rezvani, and/or Nakagawa are used as “primary references” in the district court.
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`However, “characterization . . . of prior art as ‘primary’ and ‘secondary’ is merely a
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`matter of presentation with no legal significance.” In re Mouttet, 686 F.3d 1322,
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`1333 (Fed. Cir. 2012). The Graham framework neither defines nor requires the
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`identification of a “primary reference.” Graham v. John Deere Co., 383 U.S. 1, 17-
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`18 (1966).
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`Petitioner’s stipulation invokes and relies on the term “primary reference”
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`without any basis for measuring whether a reference is “primary.” By doing so,
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`Petitioner reserves to itself the authority to designate certain references in the district
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`court as “primary” or not. Petitioner’s stipulation, thereby, invites side litigation in
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`the district court over whether a reference is “primary.” Such side litigation could
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`have been avoided had Petitioner adopted a broad stipulation like in Sotera Wireless
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`Inc. v. Massimo Corp., IPR2020-01019, Paper 12, 18 (PTAB Dec. 1, 2020). Instead,
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`Petitioner’s carefully crafted stipulation seeks the best of both worlds: asserting that
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`there is little overlap between the IPR and district court to bolster its case for
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`institution, while reserving maximum latitude to present obviousness arguments in
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`the district court by simply labeling Pelland, Rezvani, and/or Nakagawa as
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`“secondary references.”
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`IPR2021-00297
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`Assuming in arguendo that the stipulation is clear, it fails to eliminate overlap
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`because it is not as broad as the stipulation in Sotera where petitioner additionally
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`agreed it “will not pursue in the District Court Litigation any ground raised or that
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`could have been reasonably raised in an IPR.” Sotera, Paper 12, 18. The Board was
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`explicit: “a broad stipulation better addresses concerns of duplicative efforts and
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`potentially conflicting decisions in a more substantial way.” Id. at 19. The
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`stipulation must be broad enough to “sufficiently allay” concerns of overlap. Cellco
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`P’ship v. Huawei Tech. Co., IPR2020-01356, Paper 13, 14 (PTAB Mar. 5, 2021);
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`KeyMe, LLC v. Hillman Grp., Inc., IPR2020-01028, Paper 12, 15 (PTAB Jan. 13,
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`2021) (stipulation did “not eliminate the clear overlap in the issues”). Petitioner’s
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`stipulation does not meet this high standard because Petitioner can merely designate
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`Pelland, Rezvani, and/or Nakagawa as “secondary” in the district court to avoid the
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`impact of its stipulation.
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`Even if Petitioner’s stipulation is credited, it only weighs marginally against
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`discretionary denial because it is not as encompassing as the stipulation in Sotera.
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`See Cisco Sys., Inc. v. Monarch Networking Sols. LLC, Paper 11, 15 (Mar. 4, 2021);
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`see also Verizon Bus. Network Svs., LLC v. Huawei Tech. Co., IPR2020-01278,
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`Paper 12, 13 (PTAB Jan. 26, 2021) (“weighs somewhat against” denying
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`institution). The other Fintiv factors in favor of denying institution outweigh this
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`marginal weight applied to the fourth Fintiv factor.
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`IPR2021-00297
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`Factor 3 - There Has Been Substantial Litigation Investment
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`Petitioner uses faulty logic to assert that there is little litigation investment
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`prior to Markman hearing because “most of the work in a patent case occurs after
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`the Markman hearing.” Paper 12, 3. Just because more work is to come does not
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`mean that substantial work has not already been undertaken as outlined in the POPR.
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`Paper 9, 11-13. Indeed, since the filing of the POPR, Petitioner served preliminary
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`invalidity contentions and the parties exchanged claim terms for construction. Ex.
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`2004, 2.
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`As discussed in the POPR and herein, the Fintiv factors collectively justify
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`denying institution.
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`Dated: April 21, 2021
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`Respectfully submitted,
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`By:
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`/Mark G. Knedeisen/
`Mark G. Knedeisen (Reg. No. 42,747)
`K&L Gates Center, 210 Sixth Avenue
`Pittsburgh, Pennsylvania 15222
`Tel.: (412) 355-6342
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`mark.knedeisen@klgates.com
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`Counsel for Patent Owner
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`IPR2021-00297
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`Certification of Service Under 37 C.F.R. § 42.6(e)(4)
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`I hereby certify that on April 21, 2021, I caused a true and correct copy of the
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`foregoing to be served on the following counsel for Petitioner by electronic mail to
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`the following email address:
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`Michael N. Rader (Reg. No. 52,146)
`Gregory S. Nieberg (Reg. No. 57,063)
`Nathan R. Speed (pro hac vice)
`Wolf, Greenfield & Sacks, P.C.
`600 Atlantic Avenue
`Boston, MA 02210-2206
`Email: MRader-PTAB@wolfgreenfield.com
`Email: GNieberg@wolfgreenfield.com
`Email: nspeed@wolfgreenfield.com
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`By:
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`/Mark G. Knedeisen/
`Mark G. Knedeisen (Reg. No. 42,747)
`K&L Gates Center, 210 Sixth Avenue
`Pittsburgh, Pennsylvania 15222
`Tel.: (412) 355-6342
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`mark.knedeisen@klgates.com
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`Counsel for Patent Owner
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