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`Paper No. __
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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.
`_____________
`
`Case No. IPR2021-00297
`Patent No. 10,368,155
`_____________
`
`PETITIONER’S UNOPPOSED MOTION FOR PRO HAC VICE
`ADMISSION OF NATHAN R. SPEED
`
`
`
`
`
`
`
`
`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
`
`i
`
`
`
`
`
`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
`
`ii
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`
`
`
`
`1055
`
`1056
`1057
`
`1058
`
`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)
`
`1059
`
`1060
`
`1061
`
`1062
`
`iii
`
`
`
`
`
`1065
`
`1066
`
`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)
`
`1067
`
`1068
`
`1069
`
`1070
`
`1071
`
`1072
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`1073
`
`1074
`
`iv
`
`
`
`
`
`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
`
`v
`
`
`
`
`
`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)
`Order Granting Defendants’ Motion to Transfer Venue in Koss Corp. v.
`Plantronics et al., 6:20-CV-00663 (W.D. Tex.) (D.I. 45, May 20, 2021)
`Declaration of Nathan R. Speed in Support of Motion for Admission
`Pro Hac Vice
`
`1099
`
`1100
`
`vi
`
`
`
`
`
`I.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`Pursuant to 37 C.F.R. § 42.10(c) and Paper No. 3, Petitioner Bose
`
`Corporation respectfully requests that the Board admit Nathan R. Speed pro hac
`
`vice in this proceeding, IPR2021-00297. Petitioner is concurrently seeking
`
`admission of Mr. Speed pro hac vice in related proceedings IPR2021-00612 and
`
`IPR2021-00680. Patent Owner has been consulted and has indicated it does not
`
`object to Mr. Speed being admitted pro hac vice in this proceeding.
`
`II.
`
`STATEMENT OF FACTS SHOWING GOOD CAUSE FOR THE
`BOARD TO RECOGNIZE COUNSEL PRO HAC VICE DURING
`THE PROCEEDING
`37 C.F.R. § 42.10(c) provides:
`
`The Board may recognize counsel pro hac vice during a proceeding
`upon a showing of good cause, subject to the condition that lead counsel
`be a registered practitioner and to any other conditions as the Board
`may impose. For example, where the lead counsel is a registered
`practitioner, a motion to appear pro hac vice by counsel who is not a
`registered practitioner may be granted upon a showing that counsel is
`an experienced litigating attorney and has an established familiarity
`with the subject matter at issue in the proceeding.
`
`The facts here establish good cause for the Board to recognize Mr. Speed pro
`
`hac vice in this proceeding.
`
`1
`
`
`
`
`
`First, as set forth in Mr. Speed’s declaration (Ex. 1100), Mr. Speed has an
`
`established familiarity with the subject matter at issue in these proceedings. He has
`
`worked on preparing and reviewing the materials submitted in this proceeding.
`
`Second, Mr. Speed has extensive patent litigation experience and is expected
`
`to use his experience to support Lead Counsel during the proceeding, including
`
`during depositions. Good cause exists to have Petitioner appoint as counsel Mr.
`
`Speed, as a litigator, to assist Lead Counsel.
`
`Third, Mr. Speed is an experienced practitioner before the Board, having
`
`applied to appear pro hac vice in more than twenty Inter Partes Reviews over the
`
`past three years.
`
`Furthermore, as set forth in his declaration Mr. Speed attests to all of the
`
`representations set forth in part 2(b) of Paper No. 7 from Unified Patents v. Parallel
`
`Iron, Case IPR2013-00639 (PTAB Oct. 15, 2013).
`
`III. CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests that the Board
`
`admit Nathan R. Speed pro hac vice in this proceeding.
`
`
`
`
`
`2
`
`
`
`Date: June 21, 2021
`
`Respectfully submitted,
`Bose Corporation
`
`/Michael N. Rader/
`Michael N. Rader, Reg. No. 52,146
`Gregory S. Nieberg, Reg. No. 57,06
`WOLF, GREENFIELD & SACKS, P.C.
`600 Atlantic Avenue
`Boston, MA 02210
`(617) 646-8000 Phone
`(617) 646-8646 Fax
`
`3
`
`
`
`
`
`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6 (E)(4)
`I certify that on June 21, 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
`
`
`Date: June 21, 2021
`
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`/MacAulay Rush/
`MacAulay Rush
`Paralegal
`WOLF, GREENFIELD & SACKS, P.C.
`
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