Trials@uspto.gov
`571-272-7822
`
`Paper 16
`Entered: June 3, 2021
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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
`Patent 10,368,155 B2
`
`
`Before DAVID C. McKONE, GREGG I. ANDERSON, and
`NORMAN H. BEAMER, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`
`
`
`
`
`
`

`

`IPR2021-00297
`Patent 10,368,155 B2
`
`I. INTRODUCTION
`
`Bose Corporation (“Petitioner”) filed a Petition requesting inter partes
`
`review of claims 1–14 of U.S. Patent No. 10,368,155 B2 (Ex. 1001, “the
`
`’155 patent”). Paper 2 (“Pet.”). Koss Corporation (“Patent Owner”) filed a
`
`Preliminary Response. Paper 9 (“Prelim. Resp.”). Upon our authorization,
`
`Petitioner filed a Preliminary Reply relating to discretionary denial based on
`
`the factors set forth in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11
`
`(PTAB Mar. 20, 2020) (precedential) (“Fintiv I”). Paper 12 (“Prelim.
`
`Reply”); see also Section III below (Fintiv analysis). Patent Owner filed a
`
`Preliminary Sur-Reply. Paper 13 (“Prelim. Sur-Reply”).
`
`We have jurisdiction under 35 U.S.C. § 314. Upon considering the
`
`record developed thus far, for reasons discussed below, we institute inter
`
`partes review.
`
`II. BACKGROUND
`
`A. Real Parties in Interest
`
`Petitioner states it is the real parties in interest. Pet. xvi. Patent
`
`Owner asserts it is the real party in interest. Paper 4, 2.
`
`B. Related Matters
`
`Both parties list lawsuits, prior filed United States applications and
`
`issued patents, and pending inter partes reviews as Related Matters. Pet.
`
`xvi; Paper 11, 2–3.
`
`1. Lawsuits
`
`Petitioner advises us that it is a defendant in a filed by case filed by
`
`Patent Owner asserting the ’155 patent in the Western District of Texas
`
`captioned Koss Corporation v. Bose Corporation, Case No. 6:20-cv-00661
`
`(W.D. Tex.) (“District Court” or “District Court Lawsuit”). Pet. xvii; see
`
`also Paper 11, 2. The parties identify three other cases in the Western
`
`2
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`

`

`IPR2021-00297
`Patent 10,368,155 B2
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`District involving the ’155 patent: Koss Corporation v. PEAG LLC d/b/a
`
`JLab Audio, Case No. 6:20-cv-00662 (W.D. Tex.) (“JLab litigation”); Koss
`
`Corporation v. Plantronics, Inc. et al., Case No. 6:20-cv-00663 (W.D. Tex.)
`
`(“Plantronics litigation”); and Koss Corporation v. Skullcandy, Inc., Case
`
`No, 6:20-cv-00664 (W.D. Tex.) (“Skullcandy litigation”). Pet. xvii; Paper
`
`11, 2. Patent Owner also identifies two other lawsuits, Bose Corporation v.
`
`Koss Corporation, Case No. 1:20-cv-12193 (D. Mass.) and Koss
`
`Corporation v. Skullcandy, Inc., Case No. 2:21-cv-00203 (D. Utah)
`
`(“Massachusetts and Utah litigations1”). Paper 11, 2.
`
`2. United States Applications and Issued Patents
`
`Petitioner lists applications and corresponding issued patents to which
`
`the ’155 patent is a continuation. Pet. xvi; see also Ex. 1001, code (63)
`
`(“Related U.S. Application Data” (“Related Applications”)).
`
`Patent Owner identifies the following applications listed as Related
`
`Applications to which the ’155 patent claims priority: PCT application No.
`
`PCT/US2009/039754, filed April 7, 2009 (the “PCT Application”) and
`
`provisional application Serial No. 61/123,265 filed April 8, 2008 (the
`
`“Provisional Application”). Paper 11, 2. Patent Owner identifies the
`
`following pending United States patent applications that claim priority to the
`
`PCT Application and the Provisional Application: US 17/070,295, filed
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`October 14, 2020; US 17/070,363, filed October 14, 2020; and US
`
`17/178,946, filed February 18, 2021. Id. at 3.
`
`
`1 As discussed below, the Skullcandy litigation has been dismissed. See
`Section III.A below. It appears the lawsuit was re-filed in the Utah
`litigation.
`
`3
`
`

`

`IPR2021-00297
`Patent 10,368,155 B2
`
`3. Inter Partes Review Proceedings
`
`Patent Owner lists the following inter partes review proceedings2
`
`challenging patents that claim priority to the PCT Application and the
`
`Provisional Application:
`
`Apple Inc. v. Koss Corporation, IPR2021-00305, filed December 15,
`
`2020, challenging US Patent 10,506,325 B1);
`
`Apple Inc. v. Koss Corporation, IPR2021-00381, filed January 4,
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`2021, challenging US Patent 10,491,982 B1;
`
`Apple Inc. v. Koss Corporation, IPR2021-00546, filed February 22,
`
`2021, challenging US Patent 10,206,025 B2;
`
` Apple Inc. v. Koss Corporation, IPR2021-00592, filed March 2,
`
`2021, challenging US Patent 10,469,934 B2;
`
`Bose Corporation v. Koss Corporation, IPR2021-00612, filed March
`
`3, 2021, challenging US Patent 10,206,025 B2;
`
`Apple Inc. v. Koss Corporation, IPR2021-00626, filed March 17,
`
`2021, challenging US Patent 10,206,025 B2;
`
`Bose Corporation v. Koss Corporation, IPR2021-00680, filed March
`
`17, 2021, challenging US Patent 10,469,934 B2, filed March 17, 2021;
`
`Apple Inc. v. Koss Corporation, IPR2021-00679, filed March 22,
`
`2021, challenging US Patent 10,506,325 B1;
`
`Apple Inc. v. Koss Corporation, IPR2021-00686, filed March 22,
`
`2021, challenging US Patent 10,491,982 B1; and
`
`Apple Inc. v. Koss Corporation, IPR2021-00693, filed March 23,
`
`2021, challenging US Patent 10,469,934 B2.
`
`
`2 Apple Inc. v. Koss Corporation, IPR2021-00255, filed November 25, 2020,
`and Apple Inc. v. Koss Corporation, IPR2021-00600, filed March 7, 2021,
`both challenging US Patent 10,298,451 B1 are also pending.
`
`4
`
`

`

`IPR2021-00297
`Patent 10,368,155 B2
`
`C. The ’155 Patent
`
`The application for the ’155 patent’s earliest claims priority dates are
`
`to the PCT Application filed April 7, 2009, and the Provisional Applications
`
`filed April 8, 2008. Ex. 1001, codes (63), (60). See Pet. xvi, 9
`
`(acknowledging the PCT Application as a “priority application”); Prelim.
`
`Resp. 3 n.3 (“the ’155 Patent claims priority to the PCT and Provisional
`
`Applications”).
`
`1. Background Technology
`
`The ’155 patent explains that wired headphones were large and
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`“cumbersome.” Ex. 1001, 1:43–51. The ’155 patent further explains
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`“[r]ecently, cordless headphones that connect wirelessly via IEEE 802.11”
`
`such as via Bluetooth connection, to a laptop or personal computer “have
`
`been proposed, but such headphones are also quite large and not in-ear type
`
`phones.” Id. at 1:58–62; see also Ex. 1003 ¶ 43 (describing Bluetooth as “an
`
`ad hoc wireless network”).
`
`2. The ’155 Patent’s Wireless Earphones
`
`The ’155 patent describes and claims a wireless earphone with “a
`
`transceiver circuit for receiving streaming audio from a data source . . . over
`
`an ad hoc wireless network. When the data source and the earphone are out
`
`of range via the ad hoc wireless network, they may transition automatically
`
`to a common infrastructure wireless network.” Ex. 1001, 1:66–2:5. The
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`patent defines “ad hoc wireless network” as “a network where two . . .
`
`wireless-capable devices, such as the earphone and a data source,
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`communicate directly and wirelessly, without using an access point.” Id. at
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`3:3–6, 4:57–60.
`
`Figure 2A of the ’155 patent is reproduced below.
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`5
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`

`

`IPR2021-00297
`Patent 10,368,155 B2
`
`
`
`Figure 2A illustrates one of the communication modes for the wireless
`earphone.
`
`Ex. 1001, 2:28–30. Figure 2A illustrates a data source 20 in communication
`
`with earphone 10 over ad hoc wireless network 24. Id. at 4:26-28. The data
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`source may be a “digital audio player (DAP).” Id. at 4:33–34. The DAP
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`transmits audio wirelessly to earphone(s) via an ad hoc network if the DAP
`
`and earphone(s) are “in range” of that network. Id. at 4:56–57. “When the
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`earphone 10 and data source 20 are out of range for the ad hoc wireless
`
`network 24, that is, when the received signals degrade below the threshold
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`minimum signal strength level, both the earphone 10 and the data source 20
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`may transition automatically to communicate over an infrastructure wireless
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`network (such as a wireless LAN (WLAN)) 30 that is in the range of both
`
`the earphone and data source.” Id. at 5:9–17, see also Fig. 2B (ad hoc
`
`network replaced by “NETWORK 33”).
`
`D. Illustrative Claim
`
`Claims 1–14 of the ’155 patent are challenged. Pet. 4. Claims 2–13
`
`depend directly or indirectly from claim 1. All claims are directed to a
`
`“wireless headphone assembly.” Claim 1 is reproduced below as
`
`illustrative.
`
`6
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`

`

`IPR2021-00297
`Patent 10,368,155 B2
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`[1.a]3 A wireless headphone assembly comprising:
`
`[1.b] first and second earphones, wherein each of the first and
`second earphones comprises an acoustic transducer;
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`[1.c] an antenna for receiving wireless signals;
`
`[1.d] a wireless communication circuit connected to the
`antenna, wherein the wireless communication circuit is for
`receiving and transmitting wireless signals to and from the
`wireless headphone assembly;
`
`[1.e] a processor in communication with the wireless
`communication circuit; and
`
`[1.f] a rechargeable battery for powering the wireless
`headphone assembly,
`
`[1.g] wherein the headphone assembly is configured, with the
`processor, to transition automatically from playing digital audio
`content received wirelessly by the headphone assembly via a
`first wireless network to playing digital audio content received
`wirelessly by the headphone assembly via a second wireless
`network.
`
`Ex. 1001, 18:2–19; Pet. 7.
`
`E. Evidence of Record
`
`This proceeding relies on the following prior art references and
`
`expert testimony:
`
`
`3 For purposes of this Decision, we follow Petitioner’s format as shown in
`the Summary of the Challenged Claims, where each claim is identified by
`claim number followed by a letter for each limitation. Pet. 7. Patent Owner
`adopts Petitioner’s format. See, e.g., Prelim. Resp. 28–29 (limitations [1.a]–
`[1.g]).
`
`7
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`

`

`IPR2021-00297
`Patent 10,368,155 B2
`
`Pelland4 (Ex. 1013), WO 2009/126614 A1, published Oct. 15, 2009;
`
`Rezvani (Ex. 1016), US 2007/0165875 A1, published July 19, 2007;
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`Skulley (Ex. 1017), US 6,856,690 B1, issued Feb. 15, 2005;
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`Feder (Ex. 1018), US 2004/0142693 A1, published July 22, 2004;
`
`Hind (Ex. 1019), US 7,069,452 B1, issued June 27, 2006;
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`Rosener (Ex. 1020), US 2008/0076489 A1, published Mar. 27, 2008;
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`Wilson (Ex. 1021), US 7,457,649 B1, issued Nov. 25, 2008
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`Nakagawa (Ex. 1022), US 2003/0223604 A1, published Dec. 4, 2003;
`
`Petitioner also relies on the Declaration of Tim A. Williams, Ph.D.
`
`(“Williams Declaration,” Ex. 1003) and the Declaration of John G. Casali,
`
`Ph.D., CPE (“Casali Declaration,” Ex. 1005).
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`F. Prior Art and Asserted Grounds
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`Petitioner asserts that claims 1–14 would have been unpatentable on
`
`the following ground (Pet. 4, 11–80):
`
`Claim(s) Challenged
`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
`
`35 U.S.C. §
`102
`103
`103
`103
`103
`103
`103
`103
`103
`103
`
`Reference(s)/Basis
`Pelland
`Rezvani, Skulley
`Rezvani, Skulley, Feder
`Rezvani, Skulley, Hind
`Rezvani, Skulley Rosener
`Rezvani, Skulley, Wilson
`Nakagawa, Wilson
`Nakagawa, Rosener
`Nakagawa, Wilson, Hind
`Nakagawa, Rosener, Hind
`
`
`4 Pelland is the published version of the “PCT Application” listed above in
`Section II.B.2.
`
`8
`
`

`

`IPR2021-00297
`Patent 10,368,155 B2
`
`
`
`III. PROCEDURAL ISSUES
`
`Patent Owner alleges the advanced status of the District Court
`
`Lawsuit justifies discretionary denial. Both parties provided additional
`
`briefing on the Fintiv factors. See Prelim. Reply; Prelim. Sur-Reply.
`
`Petitioner also points out that Rezvani was cited during prosecution, and
`
`addresses the issue under 35 U.S.C. § 325(d). Patent Owner does not
`
`respond or otherwise assert that we should exercise our discretion to deny
`
`the Petition under § 325(d). Both issues are addressed below.
`
`A. Discretion to Institute
`
`The Board has discretion not to institute trial. See 35 U.S.C.
`
`§§ 314(a) and 324(a) (each authorizing institution of a trial under particular
`
`circumstances, but not requiring institution under any circumstances);
`
`37 C.F.R. § 42.208(a) (stating “the Board will authorize the review to
`
`proceed”) (emphasis added); cf. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
`
`2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter
`
`committed to the Patent Office’s discretion.”); Harmonic Inc. v. Avid Tech,
`
`Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (explaining that under § 314(a),
`
`“the PTO is permitted, but never compelled, to institute an [inter partes
`
`review] proceeding”).
`
`Our precedential and informative decisions make clear that the Board
`
`may exercise discretion not to institute a trial before the Board in light of the
`
`advanced state of ongoing, parallel litigation. See NHK Spring Co. v. Intri-
`
`Plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018)
`
`(precedential) (“NHK Spring”) Fintiv I; see also Apple Inc. v. Fintiv, Inc.,
`
`IPR2020-00019, Paper 15 (PTAB May 13, 2020) (informative) (denying
`
`institution in light of an ongoing parallel district court proceeding) (“Fintiv
`
`9
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`

`

`IPR2021-00297
`Patent 10,368,155 B2
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`II”); Sand Revolution II, LLC v. Cont’l Intermodal Grp. – Trucking LLC,
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`IPR2019-01393, Paper 24 (PTAB June 16, 2020) (informative) (Sand
`
`Revolution II) (applying Fintiv I factors in light of ongoing parallel district
`
`court litigation and instituting trial).
`
`In NHK Spring, the Board considered the advanced state of a parallel
`
`district court proceeding as a factor favoring denial of institution of an inter
`
`partes review proceeding. NHK Spring at 19–20. The Board later identified
`
`a non-exclusive list of factors to consider when applying NHK Spring to
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`determine if we should exercise discretion to not institute a trial in light of a
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`parallel proceeding in an advanced state. Fintiv I at 5–6.
`
`Neither party contests the facts asserted by the other regarding the
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`status of the District Court Lawsuit or other lawsuits pending in the Western
`
`District of Texas. In determining whether to exercise discretion to deny
`
`institution under 35 U.S.C. § 314(a), we consider the factors set forth in
`
`Fintiv I. Fintiv I at 9.
`
`Factor 1. Whether the court granted a stay or evidence exists that one may
`be granted if a proceeding is instituted.
`
`Petitioner has not moved for a stay, but argues at this stage the factor
`
`is neutral. Pet. 81 (citing Sand Revolution II); Prelim. Reply 1 (citations
`
`omitted). Patent Owner points out that Petitioner has not moved for a stay in
`
`the District Court. Prelim. Resp. 7–8. Patent Owner contends that a stay
`
`being entered here is “unlikely” given the District Court’s decisions in
`
`similar cases. Id. at 8–9 (citing “Order Governing Proceedings– Patent
`
`Case” (Ex. 2005), 6; “Markman Hearing Transcript – MV3 Partners, LLC v.
`
`Roku, Inc., Case No. W-18-CV-308 (W.D. Tex.)” (Ex. 2010), 53).
`
`We weigh this factor as neutral. What the District Court has done in
`
`the past in other cases is not dispositive of what might occur in this case.
`
`10
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`

`

`IPR2021-00297
`Patent 10,368,155 B2
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`See Prelim. Resp. 9 (arguing the District Court would most likely deny a
`
`motion to stay). Were Petitioner to file a motion to stay, we decline to
`
`assume the District Court would grant or deny the motion.
`
`Factor 2. Proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision.
`
`On this record we find the Skullcandy litigation was dismissed March
`
`31, 2021. Prelim. Reply 1 (citing “Order Granting Skullcandy, Inc.’s
`
`Motion to Dismiss” (Ex. 1098)). In its Preliminary Reply, Petitioner alleges
`
`the Plantronics litigation was stayed on April 6, 2021, pending resolution on
`
`a motion to transfer. Id. at 1, 2 (citing “Text Order” in Plantronics litigation
`
`[not of record]). Patent Owner does not dispute either allegation in its
`
`Preliminary Sur-Reply. See generally Prelim. Sur-Reply. The motion to
`
`transfer was granted by the District Court on May 20, 2021, and the
`
`Plantronics litigation was transferred to the Northern District of California.
`
`Ex. 1099.
`
`Given the current status of the Plantronics litigation, Patent Owner’s
`
`arguments based on the April 28, 2022, trial date for the Plantronics
`
`litigation carry very little weight. See Prelim. Resp. 9–11. This fact
`
`mitigates against discretionary denial. Prelim. Reply 2 (citing Fintiv I, at
`
`13–14). The discussion in Fintiv I states specifically that “[i]f a petitioner is
`
`unrelated to a defendant in an earlier court proceeding, the Board has
`
`weighed this fact against exercising discretion to deny institution under
`
`NHK.” Fintiv I, at 13–14.
`
`The parties have not made any specific arguments regarding the
`
`Massachusetts or Utah litigations and there is nothing of record regarding
`
`scheduling of either a Markman hearing or trial for the Massachusetts and
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`11
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`IPR2021-00297
`Patent 10,368,155 B2
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`Utah litigations. Accordingly, we do not speculate as to the schedule of
`
`either of those proceedings.
`
`Based on the preceding developments, at present only the District
`
`Court Lawsuit and the JLab litigation have a firm schedule for a Markman
`
`hearing and trial. See also Prelim. Reply 2 (“In any event, as noted above,
`
`other than Bose’s case [District Court Lawsuit], the only remaining W.D.
`
`Tex. litigation involving the ’155 patent is now stayed while the Court
`
`considers Plantronics’ motion to transfer.”). Both the District Court Lawsuit
`
`and the JLab litigation are proceeding on the same schedule, with a
`
`Markman hearing set for July 20, 2021, and an expected trial date set for
`
`June 6, 2022. See Prelim. Resp. 5–6 (citing District Court Lawsuit,
`
`“[Proposed] Scheduling Order” (Ex. 2004), 3, 4). The [Proposed]
`
`Scheduling Order lists a “Jury Selection/Trial” date of June 6, 2022 but
`
`states that “[t]he Court expects to set these dates at the conclusion of the
`
`Markman Hearing.” Ex. 2004, 4.
`
`Petitioner has made of record at least one concern about the viability
`
`of the June 6, 2022, trial date. Petitioner asserts the District Court docket
`
`contains approximately 548 patent cases of which 309 were filed “before
`
`Koss’s [Patent Owner] suits5 and thus should be tried first.” Pet. 82 (citing
`
`Lex Machina, Report Supporting 548 Cases (Ex. 1069); Lex Machina,
`
`Report Supporting 309 Cases (Ex. 1070)). Patent Owner does not dispute
`
`these numbers, which on their face are high. See generally Prelim. Resp.;
`
`Prelim. Sur-Reply.
`
`Accordingly, the expected trial date and the due date of a final written
`
`decision will be around the same time. Therefore, we weigh this factor as
`
`
`5 Petitioner does not specify which Koss suits.
`
`12
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`IPR2021-00297
`Patent 10,368,155 B2
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`neutral. As required by statute, our final decision must be mailed no later
`
`than June 17, 2022. 35 U.S.C. § 316(a)(11). The currently scheduled June
`
`6, 2022, trial date would occur around the date our final decision is mailed.
`
`Factor 3. Investment in the parallel proceeding by the court and the parties.
`
`Patent Owner argues the investment in the Plantronics and Skullcandy
`
`litigations. Prelim. Resp. 12. As discussed above, Petitioner is not a party
`
`to either lawsuit. Furthermore, as of this time the Plantronics litigation is
`
`stayed and very little investment has been identified. Also, the Skullcandy
`
`litigation has been dismissed. Thus, we do not give much weight to the
`
`investment in lawsuits other than the District Court Lawsuit.
`
`Turning to the District Court Lawsuit, Petitioner argues it acted
`
`expeditiously, which should be considered in our exercise of discretion. Pet.
`
`83 (citing HP v. Neodron, IPR2020-00459, Paper 17, at 40 (PTAB Sept. 14,
`
`2020) (instituting; petitions were filed before invalidity contentions).
`
`Petitioner asserts it filed the Petition “within six weeks of service and before
`
`its answer is due.” Id. (citing Cizion v. Kerr Machine, PGR2020-00065,
`
`Paper 10 at 27 (PTAB Dec. 3, 2020) (instituting; “Petitioner diligently filed
`
`the Petition seven weeks after the complaint was served.”).
`
`Patent Owner contends that, by the time this Decision is mailed, under
`
`the proposed scheduling order “the parties will have served preliminary
`
`infringement and invalidity contentions; exchanged proposed claim
`
`constructions; and filed their opening and responsive claim construction
`
`briefs.” Prelim. Resp. 12 (citing Ex. 2004, 2). Patent Owner also questions
`
`just how expeditiously Petitioner acted. Id. at 13. Patent Owner alleges
`
`Petitioner knew of the alleged infringement of the ’155 patent in mid-July
`
`2020. Id. (citing District Court Lawsuit, Complaint, filed July 22, 2020 (Ex.
`
`1055) ¶ 53). This amounted to a five-month, not a six-week delay. Id.
`
`13
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`IPR2021-00297
`Patent 10,368,155 B2
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`We find Petitioner acted diligently. We have nothing of record to
`
`show when Petitioner knew a complaint had been filed against it for
`
`infringement of the ’155 patent or otherwise knew it was accused of
`
`infringing the ’155 patent. Even if Petitioner was aware, Petitioner had not
`
`yet been served and given actual notice of the lawsuit in mid-July 2020, as
`
`Patent Owner alleges. See Fed. R. Civ. P. 4 (Summons); see also Prelim.
`
`Resp. 13 (alleging mid-July); see also Pet. 83 (alleging Petition filed within
`
`six weeks of service of complaint).
`
`We weigh this factor against exercising discretion as the District
`
`Court Lawsuit is still in its early stages and Petitioner acted diligently in
`
`filing its Petition. A claim construction hearing will not occur until July 20,
`
`2021, after the mailing of this Decision. See Ex. 2004, 3 (scheduling
`
`Markman hearing). As is the practice of the District Court, discovery
`
`unrelated to claim construction is stayed until after the claim construction
`
`hearing. See Ex. 2005, 2.
`
`Factor 4. Overlap between issues raised in the petition and in the
`parallel proceeding.
`
`Petitioner initially indicates it does not know what claims and prior art
`
`are at issue in the various litigations. Pet. 84. Patent Owner argues that the
`
`Rezvani and Nakagawa references are alleged to invalidate certain claims of
`
`the ’155 patent in the Plantronics and Skullcandy litigations. Prelim. Resp.
`
`13–14 (citing Plantronics litigation: Preliminary Invalidity Contentions re:
`
`Rezvani (Ex. 2017); Preliminary Invalidity Contentions re: Nakagawa (Ex.
`
`2018)). Furthermore, the prior art references to Pelland, Skully, Feder,
`
`Hind, Rosener, and Wilson are also listed in “Plantronics’ invalidity
`
`contentions as anticipating or rendering obvious the claims of the ’155
`
`Patent.” Id. at 14 (citing Plantronics litigation, Defendants’ Preliminary
`
`14
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`

`

`IPR2021-00297
`Patent 10,368,155 B2
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`Invalidity Contentions (Ex. 2019), 4–10). As already discussed, we give
`
`little weight to the issues in the Plantronics and Skullcandy litigations in
`
`deciding whether or not to exercise our discretion to deny institution because
`
`the Skullcandy litigation was dismissed and the Plantronics litigation has
`
`been transferred. See supra Fintiv Factor 2.
`
`With regard to the District Court Lawsuit, as of the date of this
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`Decision, under the proposed scheduling order, Patent Owner alleges “the
`
`parties will have served preliminary infringement and invalidity contentions;
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`exchanged proposed claim constructions; and filed their opening and
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`responsive claim construction briefs.” Prelim. Resp. 12 (citing Ex. 2004, 2).
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`The record does not include any of these documents.
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`Patent Owner also asserts that Petitioner has not made a stipulation
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`“that it will not pursue any invalidity ground in the Petition, as well as any
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`ground that Petitioner could have reasonably raised in an IPR, in the parallel
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`litigation.” Prelim. Resp. 14 (citing Sotera Wireless, Inc. v. Masimo Corp.,
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`IPR2020-01019, Paper 12 at 18-19 (PTAB Dec. 1, 2020). On April 6, 2021,
`
`after the filing of the Preliminary Response on March 17, 2021, Petitioner
`
`did provide a stipulation. See “Letter from Petitioner’s Counsel to Patent
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`Owner’s Counsel” dated April 6, 2021 (Ex. 1097). This stipulation states
`
`that, if the present inter partes review is instituted, Petitioner “will not seek
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`resolution within the litigations of any ground of invalidity with respect to
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`the claims of the ’155 patent that uses, as a primary prior art reference, any
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`of the following prior art references that are relied upon as primary prior art
`
`references in [the present IPR]” (listing the Pelland, Rezvani, and Nakagawa
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`references). Id.
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`Petitioner alleges the stipulation “eliminates overlap.” Prelim. Reply
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`4. Patent Owner asserts that “Petitioner’s stipulation is illusory because it
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`applies only when Pelland, Rezvani, and/or Nakagawa are used as ‘primary
`
`references’ in the district court.” Prelim. Sur-Reply 3. Patent Owner argues
`
`that characterizing a reference as “primary” and “secondary” is “merely a
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`matter of presentation with no legal significance.” Id. (citing In re Mouttet,
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`686 F.3d 1322, 1333 (Fed. Cir. 2012)).
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`Without any invalidity contentions from the District Court Lawsuit,
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`we are unable to definitively state that there is substantial overlap in the
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`prior art and in the claims in the two proceedings. The stipulation is not as
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`broad as the stipulation in Sotera which “weigh[ed] strongly in favor of not
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`exercising discretion to deny institution.” Sotera, at 19 (“if IPR is instituted,
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`[Petitioner] will not pursue in the District Court Litigation any ground raised
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`or that could have been reasonably raised in an IPR.”). Petitioner’s
`
`stipulation, however, is both in some ways broader and in some ways
`
`narrower than the stipulation provided by the Petitioner in Sand Revolution
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`II, and “mitigates to some degree concerns of duplicative efforts between the
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`district court and the Board, as well as concerns of potentially conflicting
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`decisions.” Sand Revolution II at 11–12 (“if the IPR is instituted, Petitioner
`
`will not pursue the same grounds in the district court litigation.”). Because
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`we are not provided with evidence as to the extent of the overlap and
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`Petitioner provides a stipulation that mitigates any overlap to some degree,
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`we weigh this factor marginally against exercising discretion to deny
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`institution.
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`Factor 5. Whether the petitioner and the defendant in the parallel
`proceeding are the same party.
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`It is not in dispute that Petitioner and Patent Owner are parties in the
`
`District Court Lawsuit. See Pet. 94; Prelim. Resp. 48. Because our Final
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`Written Decision in this proceeding will issue around the time trial begins in
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`the District Court Lawsuit, we weigh this factor as neutral.
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`Factor 6. Other circumstances that impact the Board’s exercise of
`discretion, including the merits.
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`Each party contends that the merits support its respective positions.
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`Pet. 84; Prelim. Reply 5; Prelim. Resp. 15–18; Prelim. Sur-Reply 1–2. We
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`discuss the merits in our Section IV analysis below. On this record, we
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`preliminarily determine that the grounds based on Nakagawa meet the
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`standard for institution of trial. See Section IV.C below. We weigh this
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`factor as neutral.
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`Determination on Discretion to Institute
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`In weighing the Fintiv I factors, we do not merely treat them as a
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`scorecard, totaling up the individual outcomes. Instead, we take a holistic
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`view of the factors. See, e.g., Fintiv II at 17 (“On balance, these facts, when
`
`viewed holistically, lead us to determine that efficiency is best served by
`
`denying institution.”). After weighing all of the factors and taking a holistic
`
`view of the relevant circumstances of this proceeding, we determine that
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`exercising our discretion to deny institution under 35 U.S.C. § 314(a) based
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`on status of the District Court Lawsuit is not warranted.
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`B. 35 U.S.C. § 325(d)
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`Petitioner acknowledges that Rezvani and Rosener were “cited—but
`
`not applied—during prosecution.” Pet. 85; see also Ex. 1001, code (56)
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`(listing Rezvani and Rosener as “References Cited”). Petitioner proceeds to
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`anticipate a potential argument under 35 U.S.C. § 325(d) that “the same or
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`substantially the same prior art or arguments” were previously presented to
`
`the Patent Office during examination. Id. at 84–86 (citing Adv. Bionics v.
`
`MD-EL, IPR2019-01469, Paper 6 (Feb. 13, 2020) (precedential)). For
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`various reasons, Petitioner argues that we should not exercise our discretion
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`under § 325(d) to deny institution. See id.
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`Patent Owner does not present arguments in response to Petitioner or
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`urge us to exercise our discretion under § 325(d) to deny institution. See
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`Prelim. Resp. i–ii (Table of Contents). Because Patent Owner does not
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`present arguments for exercising discretion under § 325(d) to deny
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`institution, we do not address this issue any further.
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`IV. PATENTABILITY ANALYSIS
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`A. Legal Standard for Obviousness
`
`A patent claim is invalid as obvious if the differences between the
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`claimed subject matter and the prior art are “such that the subject matter as a
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`whole would have been obvious at the time the invention was made to a
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`person having ordinary skill in the art to which said subject matter pertains.”
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`35 U.S.C. § 103(a).
`
`The ultimate determination of obviousness is a question of law,
`but
`that determination
`is based on underlying factual
`findings. . . . The underlying factual findings include (1) “the
`scope and content of the prior art,” (2) “differences between the
`prior art and the claims at issue,” (3) “the level of ordinary skill
`in the pertinent art,” and (4) the presence of secondary
`considerations of nonobviousness such “as commercial success,
`long felt but unsolved needs, failure of others,” and unexpected
`results.
`
`In re Nuvasive, Inc., 842 F.3d 1376, 1381 (Fed. Cir. 2016) (citing inter alia
`
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)).
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`“To satisfy its burden of proving obviousness, a petitioner cannot
`
`employ mere conclusory statements. The petitioner must instead articulate
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`specific reasoning, based on evidence of record, to support the legal
`
`conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
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`1364, 1380 (Fed. Cir. 2016). Furthermore, in assessing the prior art, the
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`Board must consider whether a person of ordinary skill would have been
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`motivated to combine the prior art to achieve the claimed invention.
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`Nuvasive, 842 F.3d at 1381.
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`As the Federal Circuit found, in quoting from the Supreme Court’s
`
`decision in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418–419 (2007),
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`“because inventions in most, if not all, instances rely upon
`building blocks long since uncovered, and claimed discoveries
`almost of necessity will be combinations of what, in some sense,
`is already known,” “it can be important to identify a reason that
`would have prompted a person of ordinary skill in the relevant
`field to combine the elements in the way the claimed new
`invention does.”
`
`Personal Web Technologies, LLC v. Apple, Inc., 848 F.3d 987, 991–92 (Fed.
`
`Cir. 2017).
`
`1. Level of Ordinary Skill in the Art
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`Petitioner’s experts Drs. Williams and Casali, upon consultation with
`
`Petitioner’s attorneys, allege a person having ordinary skill in the art “would
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`principally have had a background in wireless networks, including at least a
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`bachelor’s degree in electrical engineering or a related field and experience
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`with ad hoc and infrastructure wireless networks.” Ex. 1003 ¶ 41; Ex. 1005
`
`¶ 41. Additionally, both experts testify that a person or ordinary skill
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`“would have been a member of a team including an engineer or product
`
`designer with experience in headphone design.” Id. Patent Owner does not
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`comment on this evidence and does not assert a level of ordinary skill in the
`
`art. On this record, the level of ordinary skill is neither in dispute nor
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`dispositive of any challenge. For purposes of this Decision, we adopt
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`Petitioner’s proposal as testified to by its experts.
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`B.
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`Claim Constructi