`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`BOSE CORPORATION,
`Petitioner,
`
`v.
`
`KOSS CORPORATION,
`Patent Owner.
`
`
`IPR2021-00297
`U.S. Patent No. 10,368,155
`
`
`
`PATENT OWNER RESPONSE
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` 
`
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` 
`505074589.4
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`IPR2021-00297
`Patent Owner Response
`
`TABLE OF CONTENTS
`
`I. 
`INTRODUCTION ............................................................................................... 1 
`II.  BACKGROUND ................................................................................................. 3 
`A. 
`Summary of the ’155 Patent ....................................................................... 3 
`B. 
`Person of Ordinary Skill in the Art ............................................................ 4 
`C. 
`Petitioner’s Invalidity Grounds .................................................................. 5 
`III.  PELLAND DOES NOT ANTICIPATE THE CHALLENGED CLAIMS ......... 6 
`IV. THE CHALLENGED CLAIMS WOULD NOT HAVE BEEN OBVIOUS TO
`A POSITA IN VIEW OF THE REZVANI-SKULLEY COMBINATION
`(GROUNDS 2A-2E) ............................................................................................ 9 
`A.  Revzani’s Headset Does Not Satisfy A Headphone Assembly
`Configured, With a Processor, to Transition Automatically ............................. 10 
`1. 
`Rezvani’s Seamless Handoff is Not Supported by the Headset ........ 11 
`2. 
`Rezvani’s Seamless Handoff Supported by a Handset Would Not
`Have Suggested to a POSITA a “headphone assembly configured, with the
`processor, to transition automatically” ....................................................... 13 
`3. 
`Seamless Handoff Does Not Satisfy Automatic Transitioning ......... 15 
`B.  Koss Did Not Admit that Rezvani Discloses the “Transition
`Automatically” Limitation in the European Patent Office ................................ 16 
`V.  THE CHALLENGED CLAIMS WOULD NOT HAVE BEEN OBVIOUS TO
`A POSITA IN VIEW OF THE NAKAGAWA-WILSON OR NAKAGAWA-
`ROSENER COMBINATIONS ......................................................................... 17 
`A. 
`Petitioner’s Reasons for the Proposed Combinations are Deficient ........ 17 
`1.  Nakagawa already comprises a stereo design .................................... 20 
`2.  Adding a battery from Wilson or Rosener to the Nakagawa design
`does not yield a completely wireless design ............................................... 20 
`3. 
`The lack of a power source in Nakagawa is a reason not to combine
`with Rosener or Wilson ............................................................................... 20 
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`IPR2021-00297
`Patent Owner Response
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`The proposed combinations are not a simple application of a known
`4. 
`technique to improve similar devices in the same way. ............................. 22 
`B.  No Finite Number Of Predictable Solutions ............................................ 23 
`C. 
`The Proposed Combinations Rely on Hindsight Reconstruction ............ 24 
`D.  Nakagawa Sound-Switching Devices are Only Described in Functional
`Terms ................................................................................................................. 27 
`E.  Dependent Claim 5 Would Not Have Been Obvious to a POSITA in
`View of Nakagawa-Rosener Combination ........................................................ 31 
`1.  A POSITA would not have transformed the Nakagawa design to
`Rosener’s completely wireless earbuds ...................................................... 32 
`2. 
`Relying on Rosener’s battery to power the Nakagawa components in
`addition to Rosener’s components is not applying a known technique to
`improve similar devices in the same way ................................................... 34 
`3. 
`The Proposed Combination Relies on Hindsight Reconstruction ..... 35 
`VI. CONCLUSION .................................................................................................. 37 
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`TABLE OF AUTHORITIES
`
`IPR2021-00297
`Patent Owner Response
`
` Page(s)
`
`Cases
`In re Clinton,
`527 F.2d 1226 (C.C.P.A. 1976) .......................................................................... 15
`Engel Indus., Inc. v. Lockformer Co.,
`946 F.2d 1528 (Fed. Cir. 1991) ............................................................................ 9
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) .......................................................................... 16
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 14
`Medichem, S.A. v. Rolabo, SL,
`437 F.3d 1157 (Fed. Cir. 2006) .................................................................... 25, 29
`Mintz v. Dietz & Watson, Inc.,
`679 F.3d 1372 (Fed. Cir. 2012) .................................................................... 26, 30
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) .......................................................................... 35
`Power Mosfet Techs., Inc. v. Siemens AG,
`328 F.3d 1396 (Fed. Cir. 2004) .......................................................................... 11
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`IPR2021-00297
`Patent Owner Response
`
`Exhibit
`
`EXHIBIT LISTING
`
`
`Description
`
`KOSS-2001 Complaint, Koss Corp. v. Plantronics, Inc., Case 6-20-cv-00663-
`ADA, Dkt. No. 1 (W.D. Tex. July 22, 2020)
`
`KOSS-2002 Complaint, Koss Corp. v. Skullcandy, Inc., Case 6-20-cv-00664-
`ADA, Dkt. No. 1 (W.D. Tex. July 22, 2020)
`
`KOSS-2003 Complaint, Koss Corp. v. PEAG LLC d/b/a JLab Audio, Case 6-20-
`cv-00662-ADA, Dkt. No. 1 (W.D. Tex. July 22, 2020)
`
`KOSS-2004 [Proposed] Scheduling Order, Koss Corp. v. Bose Corp., Case 6:20-
`cv-00661-ADA, Dkt. No. 24 (W.D. Tex. Feb. 16, 2021)
`
`KOSS-2005 Sample Order Governing Proceedings - Patent Case, November 5,
`2020, Judge Albright, United States District Court for the Western
`District of Texas, Waco Division
`
`KOSS-2006 Docket Report, Koss Corp. v. Plantronics, Inc., Case 6-20-cv-
`00663-ADA (W.D. Tex.) (as of March 12, 2021)
`
`KOSS-2007 Docket Report, Koss Corp. v. Skullcandy, Inc., Case 6-20-cv-00664-
`ADA (W.D. Tex.) (as of March 12, 2021)
`
`KOSS-2008 Docket Report, Koss Corp. v. Bose Corp., Case 6-20-cv-00661-ADA
`(W.D. Tex.) (as of March 12, 2021)
`
`KOSS-2009 Docket Report, Koss Corp. v. PEAG LLC d/b/a JLab Audio, Case 6-
`20-cv-00662-ADA (W.D. Tex.) (as of March 12, 2021)
`
`KOSS-2010 Markman Hearing, MV3 Partners, LLC v. Roku, Inc., Case No. W-
`18-cv-308, Dkt. No. 83 (W. D. Tex. July 19, 2019)
`
`KOSS-2011 Notice of Trial Procedures, VLSI Tech. LLC v. Intel Corp., Case No.
`6:21-cv-00057-ADA, Dkt. No. 421 (W.D. Tex. February 10, 2021)
`
`- iv -
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`IPR2021-00297
`Patent Owner Response
`
`Exhibit
`
`Description
`
`KOSS-2012 K. Buehler, “WDTX Judge Albright Touts Revamped Courtroom
`Tech,” IPLAW360, February 26, 2021.
`
`KOSS-2013 S. Decker et al., “Intel Told to Pay $2.18 Billion After Losing Patent
`Trial,” Bloomberg, March 2, 2021
`(www.bloomberg.com/news/articles/2021-03-02/intel-told-to-pay-
`2-18-billion-after-losing-texas-patent-trial)
`
`KOSS-2014 United States District Court, Western District of Texas, Judges’
`Calendars, United States District Judge Alan Albright, Public
`Calendar Events in All Divisions (3/1/2021 to 4/30/2021)
`
`KOSS-2015 E. Cunningham et al., “Fauci predicts vaccine ‘open season’ by
`April,” Washington Post, Feb. 11, 2021
`(www.washingtonpost.com/nation/2021/02/11/coronaviruscovid-
`live-updates-us/) (last accessed February 25, 2021)
`
`KOSS-2016 R. Thebault, “Fauci says U.S. vaccinations to increase in spring as
`Biden administration nears dose goal,” Washington Post, Feb. 7,
`2021
`(www.washingtonpost.com/health/2021/02/07/faucivaccination-
`increase/) (last accessed February 25, 2021)
`
`KOSS-2017 Exhibit B-7 to Plantronics, Inc.’s Preliminary Invalidity Contentions
`in Koss Corp. v. Plantronics, Inc., Case 6-20-cv-00663-ADA (W.D.
`Tex.)
`
`KOSS-2018 Exhibit B-4 to Plantronics, Inc.’s Preliminary Invalidity Contentions
`in Koss Corp. v. Plantronics, Inc., Case 6-20-cv-00663-ADA (W.D.
`Tex.)
`
`KOSS-2019 Plantronics, Inc.’s Preliminary Invalidity Contentions in Koss Corp.
`v. Plantronics, Inc., Case 6-20-cv-00663-ADA (W.D. Tex.)
`
`KOSS-2020 File History of EP 2,272,259
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`IPR2021-00297
`Patent Owner Response
`
`Exhibit
`
`Description
`
`KOSS-2021 EP 2,498,509 B1
`
`KOSS-2022 “Biden to direct states to make all adults eligible for vaccine by
`May 1,” Reuters, March 11, 2021
`(www.reuters.com/article/idUSW1N2KA02A) (accessed March 12,
`2021)
`
`KOSS-2023 Declaration of Joseph C. McAlexander III
`
`KOSS-2024 Transcript of Tim A. Williams, Ph.D., IPR2021-00297, August 2,
`2021
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`I.
`
`INTRODUCTION
`
`Case IPR2021-00297
`Patent Owner Response
`
`The Board granted institution for inter partes review of claims 1-14
`
`(“Challenged Claims”) of U.S. Patent 10,368,155 (“’155 Patent,” BOSE-1001).
`
`Paper 16 (“Institution Decision”). Patent Owner, Koss Corporation, submits this
`
`Patent Owner Response (“POR”) under 37 C.F.R. § 42.120. This POR is supported
`
`by an expert declaration from Patent Owner’s expert, Joseph C. McAlexander, III
`
`(KOSS-2023) an expert in the field of the ’155 Patent.
`
`The Challenged Claims are directed to a wireless headphone assembly that
`
`comprises two (“first” and “second”) earphones. According to claim 1, which is the
`
`sole independent claim, the headphone assembly “is configured, with [a] 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.”
`
`BOSE-1001, 18:1-19. Consistent with the notation in the Petition and Institution
`
`Decision, this limitation is referred to herein as limitation “1.g.”
`
`Petitioner asserts ten total grounds (Grounds 1, 2A-2E and 3A-3D) across the
`
`Challenged Claims. However, Petitioner has failed to show that the Challenged
`
`Claim are anticipated (for Ground 1) or would have been obvious (for Grounds 2A-
`
`2E and 3A-3D). Therefore, the Board should confirm the patentability of the
`
`Challenged Claims.
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`Ground 1 is that the Challenged Claims are anticipated by Pelland (BOSE-
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`Case IPR2021-00297
`Patent Owner Response
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`
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`1013), Pet. at 1, which is the published PCT application to which the ’155 Patent
`
`claims priority. BOSE-1001, p.2. This ground turns on “whether or not the ’155
`
`Patent is entitled to the filing date of the PCT Application.” Paper 16 at 45.
`
`Petitioner alleges that the PCT Application does not support limitation 1.g by
`
`sufficient written description. Pet. at 12. As the Board “preliminarily” found in the
`
`Institution Decision, “the PCT Application … provides written support for limitation
`
`1.g, the ‘transition automatically’ limitation.” Paper 16 at 51. Therefore, Petitioner
`
`“has not sufficiently shown that claim 1 [and its dependent claims] would have been
`
`anticipated by Pelland.” Id.
`
`Grounds 2A-2E and 3A-3D assert that the Challenged Claims would have
`
`been obvious. Pet. at 1. Ground 2A includes that independent claim 1 would have
`
`been obvious over Rezvani (BOSE-1016) and Skulley (BOSE-1017). Pet. at 1.
`
`However, Petitioner failed to show that limitation 1.g would have been obvious in
`
`view of Rezvani’s handset that performs a “seamless handoff,” which is not
`
`necessarily automatic.
`
`Grounds 3A-3D include two grounds for independent claim 1. Ground 3A
`
`includes that claim 1 would have been obvious over Nakagawa (BOSE-1022) and
`
`Wilson (BOSE-1021). Ground 3B includes that claim 1 would have been obvious
`
`over Nakagawa and Rosener (BOSE-1020). For both Grounds 3A and 3B, however,
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`Petitioner failed to establish reasonable motivations (that is, motivations not based
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`Case IPR2021-00297
`Patent Owner Response
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`on hindsight) to modify Nakagawa in view of other Wilson or Rosener.
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`Accordingly, the Board should confirm the patentability of the Challenged
`
`Claims. Although the Board addressed Grounds 3A-3D first in the Institution
`
`Decision, this POR tracks the order of grounds raised in the Petition.
`
`II. BACKGROUND
`
`A.
`Summary of the ’155 Patent
`The ’155 Patent includes fourteen claims, of which claim 1 is the sole
`
`independent claim. The ’155 Patent is directed to a wireless headphone assembly
`
`that comprises, among other things, two (“first and second”) earphones and a
`
`processor. The “headphone assembly is configured, with [a] 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”
`
`(limitation 1.g). BOSE-1001, 18:14-19. For example, if the headphone assembly is
`
`receiving digital audio content via a first wireless network, and the headphone
`
`assembly loses its connection to that first wireless network or the headphone
`
`assembly goes out of range of the first network, the headphone assembly transitions
`
`automatically to receiving digital audio content via a second wireless network. Id.,
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`1:67-2:6; 5:9-15.
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` 
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`‐ 3 ‐ 
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`The ’155 Patent claims priority via several continuation applications to a PCT
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`Case IPR2021-00297
`Patent Owner Response
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`
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`application, PCT/US2009/039754, filed April 7, 2009 (“PCT Application”), and a
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`provisional application, Serial No. 61/123,265, filed April 7, 2008 (“Provisional
`
`Application”). The PCT Application was published as WO/2009/126614A1
`
`(BOSE-1013, referred to in the Petition and herein as “Pelland”) and a copy of the
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`Provisional Application is provided as KOSS-2020.1
`
`B.
`Person of Ordinary Skill in the Art
`A person of ordinary skill in the art (POSITA) to which the ’155 Patent
`
`pertains, according to Patent Owner, “would be someone working in the electrical
`
`engineering field and specializing in or knowledgeable of speaker components for
`
`small wireless devices.” KOSS-2023, ¶15. The POSITA would have a bachelor’s
`
`degree in electrical engineering and at least two or more years of work experience
`
`in the industry. Id. Accordingly, the POSITA would have studied and have practical
`
`experience with circuit design, speaker components, and wireless communication.
`
`Id.
`
`Patent Owner’s POSITA is not far removed from Petitioner’s POSITA, which
`
`                                                            
`1 KOSS-2020 is the file history of EP 2,272,259, an EPO patent owned by Patent
`
`Owner that also claims priority to the PCT and Provisional Applications. A copy of
`
`the Provisional Application is included in KOSS-2020 at pages 152-177 thereof.
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`“would have been an individual with wireless networking experience, including at
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`Case IPR2021-00297
`Patent Owner Response
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`least a bachelor’s degree in electrical engineering or a related field and experience
`
`with ad hoc and infrastructure wireless networks” and “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.” BOSE-1003, ¶34; BOSE-1005, ¶41.
`
`C.
`Petitioner’s Invalidity Grounds
`Petitioner asserts three general theories of unpatentability, with ten total sub-
`
`grounds (Grounds 1, 2A-2E and 3A-3D). Ground 1 alleges that claims 1-14 are
`
`anticipated2 by the priority PCT Application (BOSE-1013, i.e., Pelland). Grounds
`
`2A-B are that claims 1-14 would have been obvious over multiple combinations of
`
`references, with Rezvani (BOSE-1016) serving as the primary reference for each of
`
`Grounds 2A-2E. Grounds 3A-D are that claims 1-14 would have been obvious over
`
`multiple combinations of references, with Nakagawa (BOSE-1022) serving as the
`
`primary reference for each of Grounds 3A-D.
`
`                                                            
`2 The Petition asserts that post-AIA law applies. Pet. at 12, note 7. The Board found
`
`that “there is no difference in our analysis under pre-AIA or the AIA and neither
`
`party argues otherwise.” Paper 16, 46, n.12.
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` 
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`III. PELLAND DOES NOT ANTICIPATE THE CHALLENGED CLAIMS
`Ground 1 of the Petition is that all of the Challenged Claims are anticipated
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`Case IPR2021-00297
`Patent Owner Response
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`by Pelland (BOSE-1013). Pelland is the 2009 publication of the PCT application to
`
`which the ’155 Patent claims priority. BOSE-1001, 1:25; Pet. at 8. The Pelland
`
`specification and all applications in the priority chain are substantively identical to
`
`the written description of the ’155 Patent. Paper 16 at 46 (citing BOSE-1003, ¶91).
`
`Petitioner asserts that Pelland is prior art because the Challenged Claims are
`
`not entitled to claim priority to the PCT application and/or the provisional
`
`application to which the ’155 Patent claims priority due to an alleged lack of
`
`adequate written description for the claims of the ’155 Patent. Pet. at 12.
`
`Specifically, Petitioner asserts that the “transition automatically” limitation in claim
`
`1 (limitation 1.g), and hence all of the other claims through their dependence upon
`
`claim 1 of the ’155 Patent, are not supported. Id. This ground fails for two reasons.
`
`First, as explained in the Patent Owner Preliminary Response (Paper 9),
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`Petitioner’s ground is contrary to the evidence of record. The PCT and Provisional
`
`applications to which the ’155 Patent claims priority do not unambiguously limit the
`
`invention to transitioning from ad hoc to infrastructure wireless networks when a
`
`connection is lost. Paper 9 at 20-23. For example, the loop of Figure 6 of the PCT
`
`Application shows that when the headphone assembly is not communicating via an
`
`ad hoc wireless network (block 61), it can transition to a highest priority
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`infrastructure wireless network (block 63) and keep transitioning to other
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`Case IPR2021-00297
`Patent Owner Response
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`infrastructure wireless networks by priority order when the current infrastructure
`
`wireless network is not “ok” (block 65, feedback back to blocks 61 and 63). BOSE-
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`1013, Fig. 6, 12:24-13:19.
`
`The PCT Application also explains that “[f]or purposes of the description to
`
`follow, it is assumed that the data source 20 and the earphone communicate using a
`
`Wi-Fi protocol, although the invention is not so limited and other wireless
`
`communication protocols may be used in other embodiments of the invention.”
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`Ex. 1013, 5:17-20 (emphasis added). Consistent with these expansive teachings, the
`
`PCT Application characterizes the embodiments that switch from an ad hoc network
`
`to an infrastructure network as “one embodiment” (id., 12:24), “various
`
`embodiments” (id., 16:20), and as “one general aspect” of the invention. Id., 1:22;
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`2:29. As such, the PCT application reasonably conveys to those skilled in the art
`
`that the inventor[s] had possession of a wireless headphone assembly configured to
`
`transition automatically between various wireless networks as of the filing date of
`
`the PCT application. See Paper 9 at 24-29. On this record, the Board “preliminarily
`
`determine[d] that the PCT Application, as published in Pelland, provides written
`
`description support for limitation 1.g., the ‘transition automatically’ limitation.”
`
`Paper 16 at 51.
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`The provisional application similarly discloses switching between wireless
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`networks that are not necessarily ad hoc and infrastructure networks. For example,
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`Case IPR2021-00297
`Patent Owner Response
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`the provisional application discloses switching from one infrastructure network to
`
`another. KOSS-2020, 158 at ¶¶[0006]-[0008]. It also discloses switching networks
`
`when one is “out of range” (id., 156 at ¶[0002]), when one is not “suitable” (id., 158
`
`at ¶[0008]), and when the signal degrades below a “suitable threshold.” Id., 164-
`
`165 at ¶[0025].
`
`Second, Petitioner’s argument fails because its expert, Dr. Williams, on cross-
`
`examination, completely changed and contradicted his direct testimony. Dr.
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`Williams’ direct testimony is that the common written description of the patents and
`
`publications in the ‘155 Patent family discloses “transitions between an ad hoc
`
`network and an infrastructure network due to a lost connection.” BOSE-1003, ¶95.
`
`Dr. Williams initially confirmed this position on cross-examination. KOSS-2024,
`
`41 (Dr. Williams testifying on cross that Pelland discloses wireless earphones
`
`transitioning from “ad hoc to infrastructure…”). Thus, according to Dr. Williams’
`
`initial viewpoint, the common written description discloses transitioning from one
`
`network (an ad hoc wireless network) to another network (an infrastructure wireless
`
`network) under certain conditions (“a lost connection”).
`
`Later in cross-examination, however, Dr. Williams changed his testimony to
`
`be that the PCT application (BOSE-1013) does not “enable” transitioning from any
`
`wireless network (e.g., a “first” wireless network) to another wireless network (e.g.,
`
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`a “second” wireless network). KOSS-2024, 45. According to Dr. Williams’ revised
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`Patent Owner Response
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`testimony, the PCT application (BOSE-1013) does not even enable transitioning
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`from an ad hoc network to an infrastructure network. This position, however, is
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`contradicted by Dr. Williams’ earlier testimony that, in fact, the PCT application
`
`(BOSE-1013) discloses transitioning from ad hoc to infrastructure wireless
`
`networks. BOSE-1003, ¶95; KOSS-2024, 41. “The enablement requirement is met
`
`if the description enables any mode of making and using the claimed invention.”
`
`Engel Indus., Inc. v. Lockformer Co., 946 F.2d 1528, 1533 (Fed. Cir. 1991). Thus,
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`Dr. Williams’ testimony that claim 1 is not enabled is inconsistent with his testimony
`
`that the common written description discloses one mode of making and using the
`
`claim invention (i.e., ad hoc to infrastructure transitioning).
`
`Thus, in light of both (i) the intrinsic record that contradicts Petitioner’s
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`anticipation ground based on Pelland and (ii) the conflicting testimony of
`
`Petitioner’s expert on the issue, Petitioner has failed to show that the Challenged
`
`Claims are anticipated by Pelland.
`
`IV. THE CHALLENGED CLAIMS WOULD NOT HAVE BEEN
`OBVIOUS TO A POSITA IN VIEW OF THE REZVANI-SKULLEY
`COMBINATION (GROUNDS 2A-2E)
`Petitioner asserts, under Ground 2A, that independent claim 1 would have
`
`been obvious over Rezvani (BOSE-1016) and Skulley (BOSE-1017). Pet. at 4.
`
`However, the Petition fails to show that the Rezvani-Skulley combination provides
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`all the elements of claim 1. Grounds 2B-2E rely on the proposed Rezvani-Skulley
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`Case IPR2021-00297
`Patent Owner Response
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`combination (Pet. at 4), but the additional references relied upon for Grounds 2B-2E
`
`do not cure the Petition’s deficiencies of the proposed Rezvani-Skulley combination
`
`for claim 1. Therefore, Petitioner failed to show that the Challenged Claims would
`
`have been obvious under Grounds 2A-2E.
`
`A. Revzani’s Headset Does Not Satisfy A Headphone Assembly
`Configured, With a Processor, to Transition Automatically
`Rezvani discloses a headset that uses “wireless technology to communica[te]”
`
`with a handset. BOSE-1016, ¶[0004]. Rezvani’s headset includes an “output 229”
`
`(BOSE-1016, Fig. 2), which Petitioner asserts is an acoustic transducer. Pet. at 30.
`
`Rezvani’s headset also includes a baseband processor 225 and a microprocessor 235
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`(BOSE-1016, Fig. 2), which Petitioner asserts constitute the “processor” element of
`
`claim 1. Pet. at 30.
`
`Claim 1 recites: “the headphone assembly 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
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`received wirelessly by the headphone assembly via a second wireless network.”
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`BOSE-1001, 18:14-19. The Rezvani-Skulley combination fails to disclose, teach,
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`or suggest this element. KOSS-2023, ¶¶47-61.
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`Claim 1 does not generically recite that the automatic transitioning happens
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`to the headphone assembly. Rather, it specifically recites that the “headphone
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`assembly [is] configured, with the processor, to transition automatically.” BOSE-
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`1001, 18:14-15. The recited processor is the processor of the headphone assembly
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`and is in communication with the wireless communication circuit of the headphone
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`assembly, which is connected to the antenna of the headphone assembly.
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`Accordingly, how the automatic transitioning is achieved is a critical element of
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`claim 1, which is distinct from the occurrence of automatic transitioning. To that
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`end, the “configured, with the processor” language of claim 1 shows that it is the
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`processor that is responsible for performing the automatic transitioning. BOSE-
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`1001, 18:14-15. The “configured, with the processor …” language cannot mean that
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`the headphone assembly is configured to do the automatic transitioning and that the
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`headphone assembly has the processor. Such a construction would render the
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`“configured, with the processor” language superfluous because claim 1 already
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`states that the headphone assembly comprises the processor. See Power Mosfet
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`Techs., Inc. v. Siemens AG, 328 F.3d 1396, 1410 (Fed. Cir. 2004) (constructions
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`“that render some portion of the claim language superfluous are disfavored”).
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`1.
`Rezvani’s Seamless Handoff is Not Supported by the Headset
`The Petition relies on Figure 8 of Rezvani and its corresponding description
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`(¶¶[0041] and [0050]) as satisfying a “headphone assembly configured, with the
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`processor, to transition automatically” because Rezvani teaches a “seamless”
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`handoff between sources/networks. Pet. at 35-36. Claim 1 expressly reserves the
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`automatic transitioning task to the processor of the headphone assembly. Both
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`¶[0041] and ¶[0050] of Rezvani explain that the handset—not the headset—
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`supports the seamless handoff. KOSS-2023, ¶48. Paragraph 41 of Rezvani states
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`that “the handset can support seamless handoff between two systems.” BOSE-1016,
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`¶[0041] (emphasis added); KOSS-2023, ¶48. Paragraph 50 of Rezvani similarly
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`explains that “the handset could switch a VoIP call … to a local area network such
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`as Wifi.” BOSE-1016, ¶[0050] (emphasis added).
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`Figure 8 and its related description is consistent with ¶¶[0041] and [0050] and
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`does not support Petitioner’s assertion that the headset—and in particular, not
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`Rezvani’s baseband processor or microprocessor in the headset— performs the
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`seamless handoff. KOSS-2023, ¶49. In Rezvani’s description of FIG. 8, which
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`depicts a headset 804, Rezvani states that “FIG. 8 illustrates simultaneous operation
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`over a cellular system and a Wifi system,” and that “FIG. 8 also illustrates the
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`seamless handoff of a VoIP call between a cellular and Wifi system.” BOSE-1016,
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`¶[0041]. KOSS-2023, ¶50. Accordingly, FIG. 8 and its related description
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`illustrates different modes of operation, but does not disclose, teach, or suggest that
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`Rezvani’s headset supports the seamless handoff, for that is undoubtedly reserved
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`for Rezvani’s handset in Rezvani’s description. KOSS-2023, ¶51.
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`In view of Rezvani’s clear teachings, Petitioner has failed to show that
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`Rezvani teaches or suggests claim limitation 1.g to a POSITA. Moreover, neither
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`the Petition nor Petitioner’s experts advance any arguments that Rezvani’s teaching
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`of a seamless handoff, supported by the handset, would have suggested to a POSITA
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`a “headphone assembly configured, with the processor, to transition automatically”
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`as required by independent claim 1. Nonetheless, as discussed below, it does not.
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`2.
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`Rezvani’s Seamless Handoff Supported by a Handset Would
`Not Have Suggested to a POSITA a “headphone assembly
`configured, with the processor, to transition automatically”
`Rezvani’s teaching of a seamless handoff, supported by the handset would not
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`have suggested limitation 1.g. to a POSITA. KOSS-2023, ¶52. First, Petitioner
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`fails to articulate a reason, and there is no clear reason or advantage, for burdening
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`Rezvani’s headset with an operation Rezvani itself reserves for the handset, namely
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`the seamless handoff. KOSS-2023, ¶54. Accordingly, there is no motivation to
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`modify Rezvani’s headset to support the seamless handoff.
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`Second, transferring the seamless handoff operation of Rezvani’s handset to
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`the headset would not constitute a simple application of known techniques to
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`improve similar devices. Earphones are significantly smaller in size than a handset
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`with significantly smaller batteries. KOSS-2023, ¶55. The POSITA would have to
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`contend with a number of issues such as size and weight restrictions of an earphone.
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`Id. The modification can cause an increase in the size and/or the weight of the
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`earphone rendering it uncomfortable to a user or even unusable. Id. Moreover, a
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`POSITA may also have to contend with the additional drain on the earphone battery
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`by the seamless handoff operation, which may be associated with additional heat
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`dissipation into the ear of the user. Id. The POSITA will also need to rebalance the
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`power consumption between the additional seamless handoff operation and the other
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`power consuming components of the wireless earphone. Id. All of these parameters
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`must be experimentally determined. Id.
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`Third, the modification would not have been obvious to try. KOSS-2023,
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`¶56. The Supreme Court articulated scenarios in which “obvious to try” is enough
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`to defeat patentability under § 103:
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`When there is a design need or market pressure to solve a
`problem and there are a finite number of identified,
`predictable solutions, a person of ordinary skill has good
`reason to pursue the known options within his or her
`technical grasp. If this leads to the anticipated success, it
`is likely the product not of innovation but of ordinary skill
`and common sense. In that instance the fact that a
`combination was obvious to try might show that it was
`obvious under §103.
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007).
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`In this instance, there is no design need or market pressure. KOSS-2023, ¶56.
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`The handset already supports the seamless handoff and, as such, there is no problem
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`for POSITA to solve. Id. Accordingly, the modification would not have been
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`obvious to try.
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`Even if a POSITA, against all odds, decided to explore the possibility of the
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`modification, the POSITA would not have known where to begin. KOSS-2023, ¶57.
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`In the absence of a control mechanism or control algorithm or any suitable teaching
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`in Rezvani as to what attribute or components of the handset actually supports the
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`seamless handoff, a POSITA would not have known what attribute or components
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`of the handset to transfer from the handset to the headset to support a seamless
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`handoff. Id. at ¶58. “Obviousness does not require absolute predictability, but a
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`reasonable expectation of success is necessary.” In re Clinton, 527 F.2d 1226, 1228
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`(C.C.P.A. 1976). In this instance, a seamless handoff that occurs automatically
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`without a control mechanism or control algorithm is one that occurs randomly,
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`which would have rendered the headphone modification inoperable. KOSS-2023,
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`¶59. Accordingly, a POSITA attempting the modification proposed by Petitioner
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`for Ground 2A would not have had a reasonable expectation of success.
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`3.
`Seamless Handoff Does Not Satisfy Automatic Transitioning
`The Petition also asserts that Rezvani discloses “automatically” transitioning
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`networks because it discloses “seamless handoff.” Pet. at 36 (citing BOSE-1016,
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`¶[0041]). In this context, “automatically” means by itself, without external
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`intervention, such as from a human operator or another device. KOSS-2023, ¶60.
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`With that in mind, there is no evidence to support that Rezvani’s seamless handoff