UNITED STATES PATENT AND TRADEMARK OFFICE
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`PATENT TRIAL AND APPEAL BOARD
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`BOSE CORPORATION,
`Petitioner,
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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 NOTICE OF APPEAL
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`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 NOTICE OF APPEAL
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`To the Director of the United States Patent and Trademark Office:
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`IPR2021-00297
`U.S. Patent No. 10,368,155 B1
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`Notice is hereby given, pursuant to 37 C.F.R. § 90.2(a), that Patent Owner
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`Koss Corporation (“Koss”) appeals to the United States Court of Appeals for the
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`Federal Circuit from the Final Written Decision entered on May 31, 2022, (Paper
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`41) (“Final Written Decision”) by the Patent Trial and Appeal Board (“the
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`Board”), and from all underlying orders, decisions, rulings, and opinions. A copy
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`of the Final Written Decision is attached as Exhibit A.
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Koss indicates that the issues
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`on appeal include, but are not limited to, the Board’s determination that claims 1-
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`14 (the “Invalidated Claims”) of U.S. Patent 10,368,155 B2 (“’155 Patent”) are
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`unpatentable over the prior art of record, and any finding or determinations
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`supporting or related to that ruling including, without limitation, the Board’s
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`decision that Petitioner showed by a preponderance of the evidence that the
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`Invalidated Claims of the ’155 Patent are obvious over the prior art of record.
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`Pursuant to 37 C.F.R. § 90.3(a)(1), Patent Owner is timely filing this Notice
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`of Appeal within sixty-three (63) days of the Board’s May 31, 2022 Final Written
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`Decision. Pursuant to 37 C.F.R. § 90.2(a)(1), Patent Owner is filing copies of this
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`Notice of Appeal with the Director of the United States Patent and Trademark
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`Office and with the Board. Pursuant to Federal Circuit Rule 15(a)(1), Patent
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`Owner is filing a copy of this Notice of Appeal with the Clerk of the United States
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`Court of Appeals for the Federal Circuit, and paying the required fees.
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`IPR2021-00297
`U.S. Patent No. 10,368,155 B1
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`Respectfully submitted this 1st day of August, 2022.
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`K&L Gates, LLP
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`By:
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`/Mark G. Knedeisen/
`Mark G. Knedeisen
`Reg. No. 42,747
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`IPR2021-00297
`U.S. Patent No. 10,368,155 B1
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`CERTIFICATION OF SERVICE
`Pursuant to 37 C.F.R. § 90.2(a)(1), on August 1, 2022 the foregoing Notice
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`of Appeal was filed electronically with the Board in accordance with 37 C.F.R. §
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`42.69b)(1) and mailed to the Director via Priority Mail Express in accordance with
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`37 C.F.R. §§ 1.10 and 104.2 at the following address:
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`Director of the U.S. Patent and Trademark Office
`c/o Office of the Solicitor
`United States Patent and Trademark Office
`Mail Stop 8, P.O. Box 1450
`Alexandria, VA 22313-1450
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`Pursuant to 37 C.F.R. § 90.2(a)(2) and Fed. Cir. R. 15, on August 1, 2022
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`the foregoing Notice of Appeal was electronically filed with the Court of Appeals
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`for the Federal Circuit via CM/ECF with requisite fees paid via pay.gov. Pursuant
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`to Fed. Cir. R. 15(a)(1), one copy of this Notice of Appeal is being sent to the
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`Clerk’s Office of the Federal Circuit on August 1, 2022.
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`Pursuant to 37 C.F.R. § 42.6(e) and the parties’ agreement to accept
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`electronic service, on August 1, 2022 the foregoing Notice of Appeal was served
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`via email on the following counsel of record for Petitioner:
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`Michael N. Rader
`Gregory S. Nieberg
`Nathan R. Speed
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`Wolf, Greenfield & Sacks, P.C.
`600 Atlantic Avenue
`Boston, MA 02210-2206
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`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
`mark.knedeisen@klgates.com
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`Counsel for Patent Owner
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`IPR2021-00297
`IPR2021-00297
`U.S. Patent No. 10,368,155 B1
`U.S. Patent No. 10,368,155 B1
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`EXHIBIT A
`EXHIBIT A
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`Trials@uspto.gov
`571-272-7822
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`Paper 41
`Date: May 31, 2022
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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,
`v.
`KOSS CORPORATION,
`Patent Owner.
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`IPR2021-00297
`Patent 10,368,155 B2
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`Before DAVID C. McKONE, GREGG I. ANDERSON, and
`NORMAN H. BEAMER, Administrative Patent Judges.
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`ANDERSON, Administrative Patent Judge.
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`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
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`IPR2021-00297
`Patent 10,368,155 B2
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`I. INTRODUCTION
`Bose Corporation (“Petitioner”) filed a Petition requesting inter partes
`review of claims 1–14 of US 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 12
`(PTAB Mar. 20, 2020) (precedential). Paper 12 (“Prelim. Reply”). Patent
`Owner filed a Preliminary Sur-Reply in response. Paper 13 (“Prelim. Sur-
`Reply”). We instituted inter partes review on June 3, 2021. Paper 16 (“Inst.
`Dec.”). Patent Owner filed a Response (Paper 22, “PO Resp.”), Petitioner
`filed a Reply (Paper 25, “Reply”), and Patent Owner filed a Sur-Reply
`(Paper 33, “Sur-Reply). A hearing was held on March 8, 2022, and a
`transcript has been made of record. Paper 40 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. Upon considering the
`record, for the reasons discussed below, we find claims 1–14 unpatentable.
`II. BACKGROUND
`A. Real Parties in Interest
`Petitioner states it is the real party 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.
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`1. Lawsuits
`Petitioner advises us that it is a defendant in a case filed by Patent
`Owner asserting the ’155 patent in the Western District of Texas captioned
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`IPR2021-00297
`Patent 10,368,155 B2
`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 District
`involving the ’155 patent: Koss Corporation v. PEAG LLC d/b/a JLab
`Audio, Case No. 6:20-cv-00662 (W.D. Tex.); Koss Corporation v.
`Plantronics, Inc. et al., Case No. 6:20-cv-00663 (W.D. Tex.); and Koss
`Corporation v. Skullcandy, Inc., Case No, 6:20-cv-00664 (W.D. Tex.).
`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).
`Paper 11, 2.
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`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 US 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
`October 14, 2020; US 17/070,363, filed October 14, 2020; and US
`17/178,946, filed February 18, 2021. Id. at 3.
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`Patent 10,368,155 B2
`3. Inter Partes Review Proceedings
`Patent Owner lists the following inter partes review proceedings1
`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,
`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;
`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. Paper 11, 3.
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`1 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.
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`Patent Owner further advises the following inter partes review
`proceedings involve a patent related to the ’155 patent:
`Apple Inc. v. Koss Corp., IPR2022-00053, filed Oct. 15, 2021,
`challenging US Patent 10,206,025 B2; and
`Apple Inc. v. Koss Corp., IPR2022-00188, filed Nov. 15, 2021,
`challenging US Patent 10,469,934. Paper 26, 2.
`C. The ’155 Patent
`The application for the ’155 patent’s earliest claimed priority dates are
`to the PCT Application filed April 7, 2009, and the Provisional Application
`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”).
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`1. Background Technology
`The ’155 patent explains that wired headphones were large and
`“cumbersome.” Ex. 1001, 1:43–51. The ’155 patent further explains
`“[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 10,368,155 B2
`patent defines “ad hoc wireless network” as “a network where two . . .
`wireless-capable devices, such as the earphone and a data source,
`communicate directly and wirelessly, without using an access point.” Id. at
`3:3–6, 4:57–60.
`Figure 2A of the ’155 patent is reproduced below.
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`Figure 2A illustrates one of the communication modes for the wireless
`earphone.
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`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
`source may be a “digital audio player (DAP).” Id. at 4:33–34. The DAP
`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
`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
`minimum signal strength level, both the earphone 10 and the data source 20
`may transition automatically to communicate over an infrastructure wireless
`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”).
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`Patent 10,368,155 B2
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`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.
`[1.a]2 A wireless headphone assembly comprising:
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`[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;
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`[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;
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`in communication with
`[1.e] a processor
`communication circuit; and
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`[1.f] a rechargeable battery for powering the wireless headphone
`assembly,
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`[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.
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`the wireless
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`2 For purposes of this Decision, we follow Petitioner’s format as shown in
`the Summary of the Challenged Claims, where each claim recitation is
`identified by claim number followed by a letter for each recitation of the
`claim. Pet. 7. In the Patent Owner Response, Patent Owner argues certain
`limitations without reference to the format. See, e.g., PO Resp. 9
`(“processor, to transition automatically”).
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`Ex. 1001, 18:2–19; Pet. 7.
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`E. Evidence of Record
`This proceeding relies on the following prior art references and
`expert testimony:
`Pelland3 (Ex. 1013), WO 2009/126614 A1, published Oct. 15, 2009;
`Rezvani (Ex. 1016), US 2007/0165875 A1, published July 19, 2007;
`Skulley (Ex. 1017), US 6,856,690 B1, issued Feb. 15, 2005;
`Feder (Ex. 1018), US 2004/0142693 A1, published July 22, 2004;
`Hind (Ex. 1019), US 7,069,452 B1, issued June 27, 2006;
`Rosener (Ex. 1020), US 2008/0076489 A1, published Mar. 27, 2008;
`Wilson (Ex. 1021), US 7,457,649 B1, issued Nov. 25, 2008; and
`Nakagawa (Ex. 1022), US 2003/0223604 A1, published Dec. 4, 2003.
`Petitioner also relies on the Declaration of Tim A. Williams, Ph.D.
`(Ex. 1003, “Williams Declaration”), Reply Declaration of Tim A. Williams,
`Ph.D. (Ex. 1104, “Williams Reply Declaration”) and the Declaration of John
`G. Casali, Ph.D., CPE (Ex. 1005, “Casali Declaration”).
`Patent Owner relies on the Declaration of Joseph C. McAlexander III
`(Ex. 2023, “McAlexander Declaration”).
`F. Asserted Grounds
`Petitioner asserts that claims 1–14 would have been unpatentable on
`the following grounds (Pet. 4, 11–80):
`Claims Challenged
`35 U.S.C. §
`1–14
`102
`1–4, 6–8, 14
`103
`11–12
`103
`13
`103
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`3 Pelland is the published version of the “PCT Application” listed above in
`Section II.B.2.
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`Reference(s)/Basis
`Pelland
`Rezvani, Skulley
`Rezvani, Skulley, Feder
`Rezvani, Skulley, Hind
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`35 U.S.C. §
`103
`103
`103
`103
`103
`103
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`Reference(s)/Basis
`Rezvani, Skulley Rosener
`Rezvani, Skulley, Wilson
`Nakagawa, Wilson
`Nakagawa, Rosener
`Nakagawa, Wilson, Hind
`Nakagawa, Rosener, Hind
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`Patent 10,368,155 B2
`Claims Challenged
`5, 9
`10
`1–3, 6–8, 10, 14
`1, 4–5, 9
`13
`13
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`III. PATENTABILITY ANALYSIS
`A. Level of Ordinary Skill in the Art
`Petitioner relies on Drs. Williams and Casali, and alleges that a person
`having ordinary skill in the art “would principally have had a background in
`wireless networks, including at least a bachelor’s degree in electrical
`engineering or a related field and experience with ad hoc and infrastructure
`wireless networks” and “would have worked on a team including a member
`with headphone design experience.” Pet. 8 (citing Ex. 1003 ¶¶ 29–34;
`Ex. 1005 ¶¶ 41–43).
`Based on the McAlexander Declaration, Patent Owner proposes that a
`person of ordinary skill in the art “would be someone working in the
`electrical engineering field and specializing in or knowledgeable of speaker
`components for small wireless devices,” would have a “bachelor’s degree in
`electrical engineering and at least two or more years of work experience in
`the industry,” and would have practical experience with circuit design,
`speaker components, and wireless communication. PO Resp. 4 (citing
`Ex. 2023 ¶ 15).
`Patent Owner states that its proposal is “not far removed” from
`Petitioner’s. Neither party argues the level of ordinary skill as part of their
`arguments on the merits. We instituted trial on Petitioner’s proposed level
`of ordinary skill. We are not presented with any reason to change that
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`determination and, given Patent Owner’s acquiescence, we maintain the
`level of skill proposed by Petitioner.
`B.
`Claim Construction
`The Petition was accorded a filing date of December 7, 2020.
`Paper 3. For petitions filed on or after November 13, 2018, a claim shall be
`construed using the same claim construction standard that would be used to
`construe the claim in a civil action under 35 U.S.C. § 282(b), including
`construing the claim in accordance with the ordinary and customary
`meaning of such claim as understood by one of ordinary skill in the art and
`the prosecution history pertaining to the patent. 37 C.F.R. § 42.100 (2019).
`Thus, we apply the claim construction standard as set forth in Phillips v.
`AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
`Petitioner, citing 37 C.F.R. § 42.100, asserts construction is
`unnecessary and does not propose any term for construction. Pet. 11. In the
`Institution Decision, we preliminarily determined that no disputed term
`required construction to resolve this dispute. See Vivid Techs., Inc. v. Am.
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms
`need be construed that are in controversy, and only to the extent necessary to
`resolve the controversy.”). Inst. Dec. 20–21.
`Limitation 1.g recites, in pertinent part, “the headphone assembly is
`configured with the processor, to transition automatically from . . . a first
`wireless network to . . . a second wireless network.” Patent Owner disputes
`that Rezvani’s “seamless handoff” falls within the meaning of “transition
`automatically.” PO Resp. 15 (citing Pet. 36 (citing Ex. 1016 ¶ 41)). Patent
`Owner argues there is no disclosure in Rezvani of any logic or mechanism
`for the “handset” described in Rezvani’s paragraph 41 to perform the
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`seamless handoff “automatically.” Id. at 16 (citing Ex. 2023 ¶ 61); see also
`Ex. 1016 ¶¶ 41, 50 (both referencing “handset” and not “headphone”).
`We limit the current discussion to whether a “seamless handoff” falls
`within the meaning of “transition automatically.” The “handset” versus
`“headphone” issue is addressed in connection with patentability. See
`Section III.G below.
`Relying on the McAlexander Declaration (Ex. 2023), Patent Owner
`asserts that “‘automatically’ means by itself, without external intervention,
`such as from a human operator or another device.” PO Resp. 15 (citing
`Ex. 2023 ¶ 60). Patent Owner contends that “automatic” and “seamless” are
`not synonyms. Sur-Reply 15. Petitioner cites the ’155 patent where
`“‘automatically’ means ‘without user intervention.’” Pet. 36 (citing
`Ex. 1001, 2:65–66, 3:1–3, 5:21–22). Patent Owner agrees that “automatic”
`as used in limitation 1.g means “without external intervention.” PO Resp.
`15 (citing Ex. 2023 ¶ 60; Ex. 2025,4 4; Ex. 20265, 27).
`Patent Owner asserts “[s]eamless,” on the other hand, means “without
`interruption.” Sur-Reply 15–16 (citing Ex. 2023 ¶ 52 (“without a gap”);
`Ex. 2025, 5 (“without seams”); Ex. 2026, 27–28). Patent Owner argues
`“[s]omething can be seamless without being automatic.” Id. at 16 (citing
`Ex. 2023 ¶¶ 52–53). Petitioner responds by arguing the prior art “uniformly
`confirms a ‘seamless handoff is where . . . the user does not have to do
`anything.” Reply 20 (citing Ex. 10316 ¶¶ 278–279; Ex. 1003 ¶ 139;
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`4 THE AMERICAN HERITAGE DICTIONARY, 143 automatic 1.a: “Acting or
`operating in a manner essentially independent of external influence or
`control; self-moving;” 1106 seamless: “without seams,” Second College
`Edition).
`5 Deposition of Tim A. Williams, Ph.D. (Ex. 2026, “Williams Deposition”).
`6 Tagg, US 2005/0286466 A1, published Dec. 29, 2005 (Ex. 1031).
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`Ex. 11027 ¶ 6 (“seamless” handoff is one in which a user “do[es] not have to
`take any specific action to effectuate . . . the handover”); Ex. 11038 ¶ 47
`(“‘seamless’ handoff ‘occurs without user input’”); Ex. 1104
`¶ 31).
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`We are not persuaded that the extrinsic evidence Patent Owner relies
`on, in the form of dictionary definitions and conclusory expert testimony,
`supports any difference between “seamless handoff” and “transition
`automatically.” Extrinsic evidence is, in general, less reliable than intrinsic
`evidence in determining how to interpret the claim. Phillips, 415 F.3d at
`1318 (listing reasons extrinsic evidence lacks the reliability of the patent and
`its prosecution history).
`Neither are we persuaded that Rezvani’s paragraphs 41 and 50
`description of a “handset” in conjunction with the seamless handoff is
`“strong evidence” that the described “seamless handoff does not occur
`automatically.” PO Resp. 16–17 (citing Ex. 1016 ¶ 41). As detailed in
`Section III.G below, we find that the use of “handset” in Rezvani was a
`mistake in printing or drafting.
`Mistake or not, Rezvani’s description of “handset” is the only fact
`relied on in the McAlexander Declaration supporting his conclusion that
`“seamless handoff” is outside the meaning of “automatically transition.” See
`Ex. 2023 ¶¶ 60–61. Mr. McAlexander testifies “there is no disclosure in
`Rezvani of any logic or mechanism for the handset to perform the seamless
`handoff ‘automatically.’” Id. ¶ 60. However, Mr. McAlexander does not
`
`
`7 Krishnamurthi, US 2004/0246990 A1, published Dec. 9, 2004 (Ex. 1102).
`8 Chiueh, US 2005/053034 A1, published Mar. 10, 2005 (Ex. 1103).
`
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`say anything about Rezvani’s disclosures of a “headset.” We give very little
`weight to the conclusory McAlexander Declaration.
`Both parties agree, and the ’155 patent all but defines, that
`“automatic” means “without user intervention.” Pet. 36 (citing Ex. 1001,
`2:65–66, 3:1–3, 5:21–22; PO Resp. 15 (citing Ex. 2023 ¶ 60 (“without
`external intervention”)). We are not persuaded that a “seamless handoff” is
`any different from “transition automatically.” We therefore maintain our
`preliminary determination that the term does not require express
`construction, adding that a “seamless handoff” is encompassed within the
`meaning of “transition automatically.”
`C. Legal Standard for Obviousness
`A patent claim is invalid as obvious if the differences between the
`claimed subject matter and the prior art are “such that the subject matter as a
`whole would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.”
`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)).9
`
`
`9 The parties do not present argument or evidence of secondary
`considerations of nonobviousness.
`
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`“To satisfy its burden of proving obviousness, a petitioner cannot
`employ mere conclusory statements. The petitioner must instead articulate
`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
`1364, 1380 (Fed. Cir. 2016). Furthermore, in assessing the prior art, the
`Board must consider whether a person of ordinary skill would have been
`motivated to combine the prior art to achieve the claimed invention.
`NuVasive, 842 F.3d at 1381.
`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),
`“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).
`D. Obviousness of Claims 1–3, 6–8, 10, and 14 over Nakagawa and Wilson
`Petitioner alleges claims 1–3, 6–8, 10, and 14 would have been
`obvious over Nakagawa and Wilson. Pet. 4, 56–80. Petitioner also relies on
`the Williams and Casali Declarations. Ex. 1003 ¶¶ 225–296; Ex. 1005
`¶¶ 47–100, 103, 123–129.
`1. Nakagawa (Ex. 1022)
`Nakagawa includes a wireless audio output apparatus 11, illustrated in
`Figure 1, which is reproduced below.
`
`14
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`
`
`Figure 1 is a diagram showing sound source devices connected by radio
`to an audio output apparatus, for example a wireless headset.
`
`Ex. 1022 ¶¶ 15, 25. As shown in Figure 1, the audio output apparatus 11
`receives audio data via a radio signal and generates sound that is output via a
`speaker or headphone 11. Id. ¶¶ 24–25. Sound source devices “are wireless
`audio transmitters that can transmit audio representing speech, music and the
`like, in the form of radio signals,” which signals can be in accord with the
`BluetoothTM standard. Id. ¶¶ 26–27. Still referring to Figure 1, Nakagawa
`identifies three sound source devices: a portable audio player like a CD
`(Compact Disc) 12; a mobile phone 13; and an audio guidance device 14.
`Id. ¶¶ 27–31, Fig. 1.
`Regarding the audio player 12 and the mobile phone 13, the user can
`assign a priority level to each sound source device. Ex. 1022 ¶ 38. For
`example, if a higher priority level is given to the phone and the user is
`listening to the audio player, upon receiving a call, the user is “automatically
`
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`switched” by the audio output apparatus to the phone. Id. ¶ 39. Ending the
`call, and thus disconnecting the phone from the audio output device, the
`audio player or second sound source device is “automatically selected”
`again. Id. ¶ 42.
`Similarly, if the third sound source device, the audio guidance device
`14, is connected to the audio output apparatus 11, it may be given the
`“highest priority” among the three devices. Ex. 1022 ¶ 45. In this situation,
`the wireless output device is “automatically switched from the sound source
`device 12 or 13 to the sound source device 14” when “the headphone 111 is
`generating sound from the audio data transmitted from the sound source
`device 12 or 13.” Id.
`Figure 3 of Nakagawa is reproduced below.
`
`
`Figure 3 is a block diagram of the audio output apparatus of Figure 1.
`Ex. 1022 ¶¶ 17, 52. A microphone 112 is part of the mobile phone of the
`second sound source device and transmits speech input to a mobile phone
`
`16
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`network. Id. ¶ 30. The audio output apparatus 11 includes a control unit 32,
`which is a processor that controls other components. Id. ¶ 54, Fig. 3. As
`shown in Figure 3, the control unit 32 “executes the programs stored in the
`memory device 31 to control the audio-data generating unit 33, audio data-
`outputting unit 34, prior-connection request analyzing unit 35, sound-source
`switching unit 36, and wireless communication device 37.” Id.
`The sound-source switching unit 36 determines from which sound-
`source device the headset “should acquire audio data.” Ex. 1022 ¶ 58.
`When a sound-source device is triggered to send audio data to the headset,
`the device “transmits a wireless-connection request to the” headset and
`“starts a procedure to establish” a wireless connection with the headset. Id.
`¶ 61. For example, the mobile phone, the second sound-source device 14,
`“is triggered when it receives a call from . . . the mobile phone network.” Id.
`¶ 62. The sound-source device “generates a priority-level notifying
`command” indicating the device’s “priority level.” Id. ¶ 63. As discussed
`above, the “sound source is automatically switched in accordance with the
`priority levels.” Id. ¶ 72.
`
`2. Wilson (Ex. 1021)10
`Wilson teaches recharging wireless headsets with rechargeable
`batteries using “a charging station,” “also . . . referred to as [a] docking
`station[].” Ex. 1021, 1:14–23. Wilson also teaches that conventional
`
`
`10 Wilson was filed August 31, 2005. Ex. 1021, code (22). Petitioner
`alleges Wilson is prior art under pre-AIA § 102(e) or post-AIA § 102(a)
`depending on whether or not we agree with the priority argument Petitioner
`makes regarding Pelland. Pet. 54; see also Section III.M below (analyzing
`the challenge based on Pelland).
`
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`docking stations were compatible with over-ear headphone assemblies. Id.
`at 1:34–44, 2:44–47, 4:4–27, Figs. 1, 4.
`
`
`
`
`Figure 4 is a perspective view of a wireless headset.
`Ex. 1021, 2: 61–62. “The wireless headset includes a headband 30, speaker
`18, speaker 20, and a wireless communication module installed within the
`housing of the headset.” Id. at 4:5–7.
`3. Claim 1
`Claim 1 is an independent apparatus claim illustrative of the claimed
`subject matter. See Section II.D above. Patent Owner argues there would
`have been no motivation for a person of ordinary skill in the art to combine
`Nakagawa with Wilson. PO Resp. 17–26. Patent Owner also argues,
`Nakagawa’s “control unit,” which the Petition alleges is the claimed
`“processor,” is not the structure of Nakagawa which “perform[s] the source-
`switching.” Id. at 27 (citing Pet. 66).
`We first analyze the parties’ dispute as to reasons for combining
`Nakagawa and Wilson, and address Patent Owner’s arguments in support of
`patentability. We follow with Petitioner’s showing regarding the undisputed
`limitations of claim 1.
`
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`a. Reasons for Nakagawa and Wilson Combination
`Petitioner relies on Wilson’s Figure 4 for the “form-factor”11 it
`combines with Nakagawa. Pet. 60–61. Petitioner advances three reasons
`why a person of ordinary skill would have implemented Wilson’s “form-
`factor” with Nakagawa’s portable audio player. Id. at 60–62.
`The first reason Petitioner alleges is Wilson’s stereo design, using two
`speakers, would have been “consistent” with Nakagawa’s intended use as a
`portable audio player and its illustrated wireless headset having two
`earphones. Pet. 61 (citing Ex. 1022 ¶¶ 3, 28, Fig. 1; Ex. 1003 ¶ 236;
`Ex. 1005 ¶ 125). Second, Petitioner argues that Nakagawa suggests its
`wireless headset is battery powered which would lead a person of ordinary
`skill to Wilson’s teaching using rechargeable batteries
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