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
`_____________
`
`REPLY DECLARATION OF TIM A. WILLIAMS, Ph.D.
`
`Bose Exhibit 1104
`Bose v. Koss
`IPR2021-00297
`
`
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`BOSE CORPORATION,
`Petitioner,
`
`v.
`
`KOSS CORPORATION,
`Patent Owner.
`_____________
`
`Case No. IPR2021-00297
`Patent No. 10,368,155
`_____________
`
`REPLY DECLARATION OF TIM A. WILLIAMS, Ph.D.
`
`Bose Exhibit 1104
`Bose v. Koss
`IPR2021-00297
`
`
`
`TABLE OF CONTENTS
`
`I. MATERIALS REVIEWED AND CONSIDERED ........................................ 2
`II. MY UNDERSTANDING OF PATENT LAW .............................................. 3
`III. MY REPLY TO KOSS’S ARGUMENTS THAT REZVANI’S
`SEAMLESS TRANSITION IS PERFORMED BY REZVANI’S
`HANDSET .................................................................................................... 3
`A. Koss and Mr. McAlexander Are Wrong: Rezvani-Skulley’s
`“Headphone Assembly” Performs the Claimed “Transition” ................... 4
`B. Koss and Mr. McAlexander Are Wrong: POSAs Understood
`Rezvani’s “Seamless Handoff” to Disclose a “Transition
`Automatically”........................................................................................15
`IV. MY REPLY TO THE BOARD’S AND KOSS’S ARGUMENTS
`REGARDING THE PATENT’S LACK OF WRITTEN
`DESCRIPTION SUPPORT FOR THE BROADENED “TRANSITION
`AUTOMATICALLY” LIMITATION ..........................................................18
`A. My Response to Koss’s Attempt to Show a Description in the
`Priority Applications of Automatic Transitions from One Ad Hoc
`Network to Another Ad Hoc Network ....................................................19
`B. My Response to Koss’s Attempt to Show a Description of
`Automatic Transitions Occurring for Reasons Other than Lost
`Connections ............................................................................................26
`V. MY REPLY TO KOSS’S ARGUMENTS THAT POSAS WOULD
`NOT HAVE PURSUED THE NAKAGAWA COMBINATIONS ...............28
`VI. CONCLUSION AND SIGNATURE ............................................................34
`
`
`
`– i –
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`
`
`
`
`I, Tim A. Williams, declare:
`
`1.
`
`I have been retained by Wolf, Greenfield & Sacks, P.C., counsel for
`
`Petitioner Bose Corporation, to assess claims 1-14 (the “challenged claims”) of U.S.
`
`Patent No. 10,368,155 (Ex. 1001, “the ’155 patent”). I am being compensated for
`
`my time at my standard rate of $675 per hour, plus actual expenses. My
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`compensation is not dependent in any way upon the outcome of the inter partes
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`review of the ’155 patent.
`
`I. MATERIALS REVIEWED AND CONSIDERED
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`2. My findings, as explained below, are based on my years of education,
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`research, experience, and background in fields related to wireless signal
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`communications, including WiFi and cellular communications technologies, as well
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`as by investigation and study of relevant materials for this declaration. When
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`developing the opinions set forth in this declaration, I assumed the perspective of a
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`person having ordinary skill in the art, as set forth in Section IV of my initial
`
`declaration submitted in this proceeding (Ex. 1003, “First Declaration”)).
`
`3.
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`Since submitting my First Declaration, I have reviewed the Patent
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`Owner’s Response (Paper 22, “POR”) in IPR2027-00297, the Board’s Decision to
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`Institute this IPR (Paper 16, “DI”), the transcript of the November 11, 2021
`
`Deposition of Joseph C. McAlexander III (Ex. 1101; “McAlexander-Depo.”);
`
`– 2 –
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`
`
`
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`Declaration of Joseph C. McAlexander, III (Ex. 2023; “McAlexander-Decl.”) cited
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`in the POR and exhibits cited therein.
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`4.
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`In forming my opinions set forth in this declaration, I have also
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`reviewed those exhibits cited in in Section II of my First Declaration as well as the
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`following additional exhibits:
`
`Exhibit
`1101
`
`1102
`1103
`2023
`
`Description
`Deposition Transcript of Joseph C. McAlexander III (Nov. 11, 2021)
`(“McAlexander-Depo.”)
`U.S. Patent Application Publication No. 2004/0246990
`U.S. Patent Application Publication No. 2005/0053034
`Declaration of Joseph C. McAlexander III
`
`II. MY UNDERSTANDING OF PATENT LAW
`
`5.
`
`In paragraphs 15 to 20 of my First Declaration, I provided my
`
`understanding of patent law as it relates to the opinions I expressed in that
`
`declaration. I have continued to apply that understanding in this Reply Declaration.
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`III. MY REPLY TO KOSS’S ARGUMENTS THAT REZVANI’S
`SEAMLESS TRANSITION IS PERFORMED BY REZVANI’S
`HANDSET
`
`6.
`
`In Section VI.B of my First Declaration I discussed Rezvani and the
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`Rezvani-based Grounds 2A-2E and explained why POSAs had reason to implement
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`Rezvani’s headset using Skulley’s various, well-known form-factors and discussed
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`how Rezvani discloses a wireless headset with a processor configured to perform a
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`seamless handoff of receiving VoIP digital audio between WiFi and cellular
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`networks. Williams-Decl., ¶¶ 102-125.
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`– 3 –
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`
`
`
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`7.
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`Koss and Mr. McAlexander do not dispute my opinion that POSAs had
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`reason to pursue Rezvani-Skulley (Williams-Decl., ¶¶ 121-124), nor do they
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`meaningfully dispute my opinion that POSAs had a reasonable expectation of
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`success in forming the combination (Williams-Decl., ¶ 125), except for their
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`(incorrect) argument that Rezvani’s headset lacks “a control mechanism or control
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`algorithm” to implement Rezvani’s seamless handoff, which I disagree with for the
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`reasons I discuss below in § III.A. Instead, Koss and Mr. McAlexander argue that
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`Rezvani-Skulley does not meet limitation [1.g]’s “headphone assembly [that] is
`
`configured, with a processor, to transition automatically” from receiving content
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`from one wireless network to another wireless network. POR, 10-17; McAlexander-
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`Decl., ¶¶ 47-61. This is because, they argue, (1) Rezavani teaches that its “seamless
`
`handoff” is performed by a “handset,” not Rezvani’s “headphone,” and
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`(2) Rezvani’s “seamless handoff” is not an “automatic[]” “transition.” POR, 10-15;
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`McAlexander-Decl., ¶¶ 47-61. I disagree with these arguments and, in my opinion,
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`a POSA would disagree as well.
`
`A. Koss and Mr. McAlexander Are Wrong: Rezvani-Skulley’s
`“Headphone Assembly” Performs the Claimed “Transition”
`
`8. My First Declaration identified multiple disclosures in Rezvani
`
`demonstrating that Rezvani teaches that its headset is configured, by its processor,
`
`to automatically transition between receiving VoIP (digital) audio content from WiFi
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`and cellular networks. Williams-Decl., ¶¶ 105-107, 110, 133, 136-139 (citing
`
`– 4 –
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`
`
`
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`Rezvani, [0015]-[0016], [0019]-[0021], [0041], [0050], FIGs. 1-3, 8). Rather than
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`address those disclosures, which on their own support my opinion that Rezvani’s
`
`headset performs the automatic transition, Koss and Mr. McAlexander focus almost
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`exclusively on one sentence in Rezvani’s specification (repeated verbatim in two
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`paragraphs 41 and 50) that mistakenly refers to the “handset,” rather than the
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`“headset,” as performing Rezvani’s seamless handoff transition. POR, 11-13 (citing
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`Rezvani, [0041], [0050], FIG. 8); McAlexander-Decl., ¶¶ 48-52. As I discuss in
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`more detail below in ¶¶ 15-28, in my opinion, POSAs would understand that these
`
`instances of “handset” are an identical typo that, in light of the context of Rezvani’s
`
`full disclosure, was intended to say “headset.” But even if it were not a typographical
`
`error, those sentences do not erase and do not create ambiguity in the several
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`additional, unambiguous disclosures in Rezvani of the “headset” executing the
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`automatic transition between two wireless networks, which I identified in my First
`
`Declaration. See Williams-Decl., ¶¶ 105-107, 110, 133, 136-138 (citing Rezvani,
`
`[0015]-[0016], [0019]-[0021], FIGs. 1-3, 8).
`
`9.
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`Rezvani’s disclosure as a whole teaches a POSA that Rezvani’s headset
`
`performs Rezvani’s seamless handoff of receiving digital content between two
`
`wireless networks, the example being the transition of receiving VoIP call data over
`
`a WiFi to over a cellular network (and vice-versa).
`
`– 5 –
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`
`
`
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`10. First, Rezvani’s Abstract describes its invention as a “multi-media
`
`headset” that performs “seamless handoff between multiple wireless interfaces.”
`
`Rezvani, Abstract (cited Williams-Decl., ¶ 105). This is one unambiguous
`
`disclosure in Rezvani of its headset performing the seamless handoff that I identified
`
`in my First Declaration.
`
`11. Second, Rezvani’s claims 32 and 36 (cited Williams-Decl., ¶ 136)
`
`collectively recite a “headset” that supports “simultaneous operation over
`
`two…wireless systems” (claim 32) with “means for seamless handoff…between the
`
`two systems” (claim 36). These claims are yet another unambiguous disclosure—
`
`consistent with the Abstract’s disclosure discussed above—of Rezvani’s headset
`
`performing the seamless handoff that I identified in my First Declaration.
`
`12. Third, Rezvani’s Figure 8 (below; cited Williams-Decl., ¶¶ 106, 130)
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`depicts the “simultaneous operation and seamless handoff” of VoIP calls between
`
`two wireless networks – WiFi and cellular – performed by “headset” 805. Thus,
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`FIG. 8 is clear on its face and is yet another unambiguous disclosure—consistent
`
`with Rezvani’s Abstract and claims 32, 36—of Rezvani’s headset performing the
`
`seamless handoff that I identified in my First Declaration. Rezvani Fig. 8 does not
`
`disclose a handset, it only discloses a headset 805, and thus POSAs would
`
`understand Rezvani’s Figure 8 is only disclosing that the headset in the figure is the
`
`device that performs the “seamless handoff” depicted in Figure 8, not a handset.
`
`– 6 –
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`
`
`
`
`
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`13. The above-three, unambiguous Rezvani disclosures—the Abstract,
`
`claims, and Figure 8—individually and collectively support the opinion in my First
`
`Declaration that Rezvani teaches a “headset” performing a “seamless handoff”
`
`between two wireless networks over which the headset receives digital content. In
`
`contrast, neither the claims, the Abstract, nor Summary of the Invention refer to a
`
`handset as performing the seamless handoff.
`
`14. That Rezvani’s Title is “High Fidelity Multimedia Wireless Headset,”
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`further reinforces that Rezvani’s invention – which includes the seamless handoff
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`depicted in FIG. 8 – is functionality for Rezvani’s headset.
`
`– 7 –
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`
`
`
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`15. Koss and Mr. McAlexander, however, argue Rezvani reserves its
`
`handoff functionality for its handset because Rezvani’s paragraphs 41 and 50
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`mistakenly say a handset performs the seamless-handoff functionality. POR, 11-15;
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`McAlexander-Decl., ¶¶ 48-52. A POSA would understand that “handset” is an
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`obvious typographical error that POSAs understood was meant to say “headset.” I
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`understand that before Koss filed its POR, Bose argued that this disclosure is a
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`typographical error (Paper 12, 5) and that the Board in its institution decision noted
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`that Bose argued this was a typo and invited the parties to discuss this issue in the
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`remainder of the IPR proceeding (DI, 39). However, Koss’s POR and Mr.
`
`McAlexander’s declaration do not mention that Bose argued this is a typo and do
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`not attempt to explain why a POSA would not understand this to be a typo.
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`16. This typographical error is admittedly subtle – a two-letter typo
`
`between “handset” and “headset” – but in my opinion a POSA would have clearly
`
`understood it to be a typographical error in light of the additional disclosures in
`
`Rezvani that I discussed above and cited in my First Declaration that are
`
`unambiguous disclosures of Rezvani’s headset performing the seamless handoff.
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`17. The context of paragraph 41 itself underscores my opinion that
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`Rezvani’s “headset” performs the handoff, not the “handset.”
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`18. Paragraph 41 discusses Figure 8 and says it illustrates embodiments
`
`involving “headset 805.” Rezvani, [0041]. The paragraph then explains that the
`
`– 8 –
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`
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`
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`“headset” has “a plurality of antennas” that allow the headset to connect
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`simultaneously to two different networks, e.g., “a cellular base station 840” and a
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`“wi-fi access point.” Rezvani, [0041]. This description is consistent with paragraph
`
`40 which says the “headset may advantageously support simultaneous operation
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`on…different wireless interfaces.” Rezvani, [0040]. Read together, paragraphs 40
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`and 41 make clear that Rezvani is describing a “headset” with multiple antennas that
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`the “headset” uses to connect to multiple wireless networks.
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`19. Paragraph 41 then says: “In addition to simultaneous operation, the
`
`handset can support seamless handoff between two systems.” This transition from
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`describing a “headset” to describing a “handset” is abrupt and makes little logical
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`sense in Rezvani’s context. Having read paragraph 40 and the introductory portion
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`of paragraph 41, a POSA seeing the word “handset” would quickly recognize that
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`the reference to a “handset” is a typo and the author intended to write “headset.” For
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`example, paragraph 40 and the introductory portion of paragraph 41 make clear that
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`the antecedent basis for the “simultaneous operation” referenced in the typo-
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`sentence was an operation that the “headset” performs. Indeed, Rezvani never
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`describes a “handset” with multiple antennas that performs “simultaneous
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`operation,” only the “headset” is described as having that functionality. Instead, a
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`“handset” is only described by Rezvani as a peripheral device that can optionally
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`communicate with Rezvani’s “headset.” See, e.g., Rezvani, [0023], [0033], [0039].
`
`– 9 –
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`
`
`
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`Thus, when Rezvani says “[i]n addition to simultaneous operation,” a POSA would
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`have understood Rezvani to be describing additional functionality of the “headset,”
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`not introducing new functionality for a different optional device never previously
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`described as performing any “simultaneous operation.”
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`20. That Figure 8—which paragraph 41 describes—only depicts a
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`“headset” performing both the “simultaneous operation” and the “seamless handoff”
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`reinforces that the reference to a “handset” is a typo. Although Koss and Mr.
`
`McAlexander argue a handset could be the device that causes the “seamless handoff”
`
`depicted in Figure 8 (POR, 11-13; McAlexander-Decl., ¶¶ 48-52), that is not how a
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`POSA would have interpreted Figure 8. Rezvani’s paragraph 41 is unambiguous
`
`that Figure 8 depicts embodiments of “headset 805,” and that “headset” is the only
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`device shown in the Figure 8 that performs both simultaneous operations and
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`seamless handoff. POSAs would have no basis to interpret Figure 8 as depicting an
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`embodiment in which an un-illustrated handset is controlling the operation that
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`Figure 8 depicts the headset as performing. The lack of any such description of a
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`handset that controls the headset further confirms the interpretation of Figure 8 that
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`Koss and Mr. McAlexander offer is unreasonable.
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`21. As I discussed in my First Declaration (Williams-Decl., ¶¶ 105-106),
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`Rezvani’s headset itself can communicate over myriad wireless networks on its own
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`because Rezvani’s invention is about a headset that independently supports
`
`– 10 –
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`
`
`
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`communications on those networks, as illustrated by the multiple wireless circuitry
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`elements 165-180 shown in Rezvani’s FIG. 1 which is a block diagram of a
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`“headset.” If, as Koss and Mr. McAlexander argue, Rezvani’s headset needed a
`
`handset to provide or control the headset’s cellular communications there would be
`
`little reason for Rezvani’s headset to have its own cellular circuitry (as well as its
`
`own circuitry for other wireless networks). Indeed, Rezvani’s inventive headset is
`
`contrasted with prior art headsets that needed a handset to send the headset cellular
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`voice signals and a music player (e.g., MP3 player) to send the headset music data.
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`Rezvani, [0004]. The whole point of Rezvani’s headset having its own cellular
`
`circuitry “integrated” into the device is to allow the headset to communicate over
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`cellular networks (e.g., to search and retrieve multimedia files) on its own, without
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`having to be a peripheral “slave” to other devices. Rezvani, [0015] (“[T]he invention
`
`provides a wireless multimedia headset that can include multiple features such as
`
`multimedia storage with advanced search capability, a high fidelity sound system,
`
`peer-to-peer networking capability….”), [0016] (“[T]he invention provides a
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`multimedia headset…comprising: a plurality of multiple wireless interfaces….”);
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`[0019] (describing headset’s “support” for “VoIP…directly through any of the
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`interfaces….integrated into the headset,” e.g., “cellular phone standards…[and] Wifi
`
`standards”). The headset’s ability to communicate over multiple communication
`
`networks is consistent with Figure 8 only illustrating the headset as performing the
`
`– 11 –
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`
`
`
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`seamless handoff, and does not depict any separate handset. Outside of paragraph
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`41’s typo, Rezvani consistently describes the invention in the context of a “headset,”
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`not a “handset.” See ¶¶ 9-15 above.
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`22. Paragraph 50 has a typo that is nearly identical to paragraph 41. Like
`
`paragraph 41, paragraph 50 says: “In addition to simultaneous operation, the handset
`
`can support seamless handoff between two systems.” Rezvani, [0050]. Immediately
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`prior in paragraph 49, however, Rezvani says that “[t]he headset supports
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`simultaneous operation.” Rezvani, [0049]. Again, the abrupt introduction of
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`“handset” makes no sense when read in context—the author clearly meant “headset.”
`
`23. My opinion that a POSA would understand Rezvani to be disclosing a
`
`headset that performs the simultaneous handoff is reinforced by Koss’s prosecution
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`of a related patent before the European Patent Office (EPO). The EPO also found
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`during prosecution of a related European patent application (EP application
`
`09731146.8) that Rezvani’s paragraph 41 discloses “a headset” that performs a
`
`seamless handoff, consistent with my opinions. Ex. 1011, 4 (“Document D1
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`[Rezvani] discloses (Fig. 1,2,8,10; Par. 19, 33, 41) a headset….the headset of
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`document D1 is designed to perform a handoff between the mobile phone connection
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`and a wi-fi connection or the equivalent.”) (emphasis omitted); see also generally
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`Ex. 1011, 1-23. Notably, Koss did not dispute that finding. Instead, in the European
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`patent that issued (EP 2,272,259), Koss revised the specification to describe
`
`– 12 –
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`
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`
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`explicitly
`
`as
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`“disclos[ing]
`
`a multiple
`
`antennae wireless multimedia
`
`headset…configured for convenient hand off between multiple wireless
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`interfaces.” Ex. 1009, [0003]. Thus, Koss’s European Patent and related
`
`prosecution history support my opinion that even given the typographical error of
`
`paragraphs 41 and 50 POSAs would nonetheless have interpreted Rezvani to
`
`disclose a headset that perform a seamless handoff between different wireless
`
`networks.
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`24.
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`In my opinion, Koss and Mr. McAlexander read Rezvani’s paragraphs
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`41 and 50 in isolation from the rest of Rezvani’s disclosure and not in the context of
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`the full Rezvani disclosure that a POSA would consider when reading those
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`paragraphs. For example, neither Koss nor Mr. McAlexander address Rezvani’s
`
`Abstract or claim 36. Nor do they address the fact that paragraph 41’s and 50’s
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`“simultaneous operation” language refers back to paragraphs 40 and 49, which
`
`describe operations performed only by the “headset.”
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`25. At deposition, Mr. McAlexander argued that Rezvani’s handset directs
`
`the headset to perform the handoff. McAlexander-Depo., 55-58. A POSA would
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`disagree with Mr. McAlexander for the reasons I discussed above—Rezvani never
`
`describes a handset directing the headset’s functionality and requiring a handset to
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`direct the headset would be contrary to the headset-focused nature of Rezvani’s
`
`invention.
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`– 13 –
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`
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`
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`26. But even if a POSA agreed with Mr. McAlexander’s interpretation of
`
`Rezvani, that interpretation would still meet limitation [1.g]. This is because, as Mr.
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`McAlexander admitted at deposition, it is still the headset transitioning between
`
`receiving VoIP content over a WiFi network to receiving the VoIP content a cellular
`
`network (or vice versa) and it is the headset’s processor that is configured to execute
`
`that transition, as Mr. McAlexander admitted at deposition. McAlexander-Depo.,
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`61-65. Because the headset is automatically transitioning from receiving digital
`
`audio between different wireless networks and that transition – even if the headset
`
`receives an instruction to do so from a handset (which I do not believe is what
`
`Rezvani discloses) – the headset’s processor is still configured to respond to that
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`instruction and execute the transition between cellular and WiFi networks, which is
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`all limitation [1.g] requires.
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`27. The POR at 15 argues a POSA “would not have had a reasonable
`
`expectation of success” in having Rezvani-Skulley’s headset perform the automatic
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`transition because there is an “absence of a control mechanism or control algorithm
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`or any suitable teaching in Rezvani as to what attribute or components of the handset
`
`actually supports the seamless handoff” that would need to be “transfer[red] from
`
`the handset to the headset to support a seamless handoff.” See also McAlexander-
`
`Decl., ¶¶ 58-59. I disagree and, in my opinion, a POSA would disagree as well.
`
`Koss’s argument is premised on Koss’s incorrect argument that Rezvani’s handset,
`
`– 14 –
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`
`
`
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`not the headset, performs Rezvani’s seamless handoff. As I discussed in the
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`paragraphs above in this section, Koss is incorrect: Rezvani discloses the headset
`
`performs the seamless handoff, multiple times, independent of the typographical
`
`error that Koss relies on to assert that only the handset performs the seamless
`
`handoff. Because Rezvani explicitly discloses that its headset performs the
`
`“seamless handoff,” Koss’s arguments why it purportedly would not have been
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`obvious to incorporate such functionality into a headset or why POSAs would not
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`have reasonably expected success in creating such a headset (POR, 13-15) are
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`irrelevant.
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`28. Moreover, the lack of a specific “control mechanism” in Rezvani is
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`immaterial as implementing such functionality was well within the skill set of a
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`POSA. Prior art confirms that by 2008, the ability to seamless transition from one
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`wireless network to another was conventional functionality, and POSAs would have
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`had a reasonable expectation of success in implementing such functionality in a
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`headset without needing details of a specific control mechanism or algorithm.
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`Williams-Decl., ¶ 39 (citing Ex. 1031, [0037], [0278]-[0279]; Ex. 1051, [0056]).
`
`B. Koss and Mr. McAlexander Are Wrong: POSAs Understood
`Rezvani’s “Seamless Handoff”
`to Disclose a “Transition
`Automatically”
`
`29. Koss argues there is no evidence that Rezvani’s “seamless handoff”
`
`occurs “automatically,” which Koss says means “without external intervention, such
`
`– 15 –
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`
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`
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`as from a human operator or another device.” POR, 15; McAlexander-Decl., ¶¶ 53,
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`59-61. I disagree and, in my opinion, a POSA would disagree as well.
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`30. My First Declaration explained that Rezvani’s “seamless handoff” from
`
`a WiFi to cellular network (and vice versa) is “automatic” because the headset—not
`
`the user—switches the network that the headset is using, e.g., to receive and transmit
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`VoIP digital data. Williams-Decl., ¶¶ 107, 136-141; Rezvani, [0041] (“For example,
`
`the [headset] could switch a VoIP call from a wide-area network…to a local area
`
`network.”). Contrary to Koss and Mr. McAlexander, nothing in Rezvani suggests
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`that the headset needs “external intervention” of a handset to perform the seamless
`
`transition between wireless networks. My First Declaration corroborated my
`
`opinion that POSAs considered “handoffs” to be “seamless” when the transition
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`from one network to another network “is not noticeable to the user,” quoting Ex.
`
`1031, [0037] (cited Williams-Decl., ¶¶ 39, 139). As I explained, with a seamless
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`handover “[t]he interruption is not noticeable to the user because the user does not
`
`have to intervene to execute the handoff.” Williams-Decl., ¶ 139. As Ex. 1031 (at
`
`[0278]-[0279]) corroborates, a “seamless handoff is where…[t]he user does not
`
`have to do anything” (cited Williams-Decl., ¶139) – i.e., the seamless handoff is
`
`“automatic” and does not require external intervention from a human operator or
`
`another device. Ex. 1051 (at [0065]) similarly states “[a] seamless handoff occurs
`
`when none of the nodes that are involved in the handoff notice any disruption in the
`
`– 16 –
`
`
`
`
`
`application data stream.” One of the “nodes” that experiences no disruption in the
`
`data stream is the headset being used by the user.
`
`31. To the extent the Board seeks further corroboration that a “seamless”
`
`handoff is one that is performed without external invention, then Ex. 1102 (at
`
`[0006]) is consistent and explains that a “seamless” communication handoff is one
`
`in which a user “do[es] not have to take any specific action to effectuate, or as a
`
`result of, the handover” – i.e., the seamless handoff is automatic from the perspective
`
`of the user and does not require the user to do anything. Ex. 1103 (at [0047])
`
`likewise describes a “seamless” handoff as one that “occurs without user input”
`
`such that “[t]he user does not need to be aware that a handoff has happened.” That
`
`is additional corroboration that a seamless handoff is automatic from the perspective
`
`of the user.
`
`32. That the EPO found—and Koss did not dispute—that Rezvani’s
`
`“seamless handoff” satisfies the “transitioning automatically” language further
`
`corroborates my opinion, as I explained in my First Declaration (Williams, ¶ 140
`
`(citing Ex. 1011, 4)).
`
`33. Koss’s POR does not address my testimony or the corroborating
`
`evidence I cited in my First Declaration demonstrating that a POSA understood a
`
`seamless handoff like that described in Rezvani to be an automatic transition
`
`between different wireless networks. Williams-Decl., ¶¶ 136, 139. Instead, Koss
`
`– 17 –
`
`
`
`
`
`only relies on Mr. McAlexander’s paragraphs 60-61 as evidence that Rezvani’s
`
`seamless handoff is not automatic. POR, 15-16. Mr. McAlexander’s testimony,
`
`however, merely parrots the POR and, unlike my First Declaration, cites no
`
`corroborating evidence to support his (incorrect) opinion about a POSA’s
`
`understanding of a seamless handoff. Koss’s POR argues Rezvani can only satisfy
`
`the “transitioning automatically” limitation if Rezvani had explicitly said the
`
`seamless handoff occurs “automatically.” POR, 15-16. I disagree and, in my
`
`opinion, a POSA would disagree that Rezvani needed to use the word “automatic”
`
`to understand what Rezvani meant by a seamless handoff. As I discussed in my First
`
`Declaration (Williams-Decl., ¶¶ 39, 136, 139) and reiterated above, in my opinion,
`
`the meaning of a “seamless handoff” was well-known to a POSA already: it was
`
`understood to be a transition between wireless networks or sources that occurs
`
`automatically, without user intervention, which is what limitation [1.g] requires.
`
`IV. MY REPLY TO THE BOARD’S AND KOSS’S ARGUMENTS
`REGARDING THE PATENT’S LACK OF WRITTEN DESCRIPTION
`SUPPORT FOR THE BROADENED “TRANSITION
`AUTOMATICALLY” LIMITATION
`
`34. For Ground 1, my First Declaration opined that the Pelland reference
`
`qualifies as prior art and anticipates claims 1-14 because the ’155 atent lacks written
`
`description support for the “transition automatically” limitation [1.g] found in claims
`
`1-14 because the common disclosure of the earlier-filed priority applications does
`
`not demonstrate the applicants possessed this limitation. See Williams-Decl., ¶¶ 93-
`
`– 18 –
`
`
`
`
`
`100. Specifically, I opined that the “transition automatically” limitation is broadly
`
`claimed to encompass automatic network transitions (i) from any generic wireless
`
`network to any other generic wireless network and (ii) to transition between these
`
`networks for any reason at all (e.g., even if the signal on the first network was not
`
`lost). For the reasons I explained in my First Declaration (Williams-Decl., ¶¶ 93-
`
`100), the common disclosure of the earlier-filed priority applications does not
`
`provide support for either of these features within the scope of limitation [1.g], let
`
`alone both.
`
`A. My Response to Koss’s Attempt to Show a Description in the
`Priority Applications of Automatic Transitions from One Ad Hoc
`Network to Another Ad Hoc Network
`
`35. As my First Declaration explained, “[n]owhere does the common
`
`written description [i.e., the description in every application in the alleged priority
`
`chain of the ’155 patent] disclose, as the challenged claims cover, a transition
`
`between two networks of the same type (e.g., from receiving digital audio over one
`
`ad hoc network to receiving digital audio over another ad hoc network, or from
`
`receiving digital audio over one infrastructure network to receiving digital audio
`
`over another infrastructure network).” Williams-Decl., ¶ 97 (emphasis original).1
`
`
`1 Koss admits that the “[t]he Pelland specification and all applications in the priority
`
`chain are substantively identical to the written description of the ’155 Patent.” POR,
`
`
`
`– 19 –
`
`
`
`
`
`36. Koss does not dispute that the challenged claims cover transitions from
`
`one ad hoc network to another ad hoc network (e.g., Bluetooth to Bluetooth), yet
`
`Koss does not explain where in the “four corners” of the priority applications’
`
`written description there is disclosure that demonstrates that the inventors actually
`
`invented a headset capable of such a transition between two ad hoc networks.
`
`37. Koss argues that Figure 6 in the priority applications depicts an
`
`automatic transition from one infrastructure network to another infrastructure
`
`network. POR, 6-7. Koss argues this infrastructure-to-infrastructure transition is
`
`illustrated in Figure 6 because, according to Koss, “when the headphone assembly
`
`is not communicating via an ad hoc wireless network (block 61), it can transition to
`
`a highest priority infrastructure wireless network (block 63) and keep transitioning
`
`to other infrastructure wireless networks by priority order when the current
`
`infrastructure wireless network is not ‘ok.’” POR, 6-7 (citing block 65 and alleging
`
`there is “feedback back to blocks 61-63; also citing Ex. 1013 (PCT Application),
`
`12:24-13:19).
`
`38. Even if this were correct, it is not a transition from one ad hoc wireless
`
`network to another ad hoc wireless network. Figure 6 and the PCT Application’s
`
`
`6. My specification citations herein are to the specification of the ’155 patent unless
`
`otherwise noted.
`
`– 20 –
`
`
`
`
`
`disclosure at 12:24-13:19 (Ex. 1013 and identical disclosure in the other priority
`
`applications) do not describe a transition between two ad hoc networks and a POSA
`
`would agree that this transition is neither depicted nor described in Figure 6 and
`
`12:24-13:19.
`
`39. Figure 6 illustrates a flowchart that depicts “a process implemented by
`
`the wireless earphone to transition automatically between wireless networks
`
`according to various embodiments of the present invention.” ’155 patent, 2:39-42.
`
`In block 61 of the process, if an ad hoc network is available for the earphone to use,
`
`it will use that network for data transmissions. ’155 patent, 10:49-11:11. According
`
`to block 61, the headset remains in the loop from block 62 back to block 61 if that
`
`ad hoc connection is OK; as part of block 62 in the loop, the headset exchanges
`
`information about local infrastructure networks with the other device it is connecting
`
`to, which the devices will use only if they become unable to communicate over that
`
`ad hoc network. The headset only next enters block 63 if the headset cannot
`
`communicate via that ad hoc wireless network – the ad hoc network is lost because
`
`the earphone goes out of range of the ad hoc network or its signal strength is too
`
`degraded.
`
`40.
`
` When the headset enters block 63, it will attempt to connect to one of
`
`the infrastructure networks learned in block 62, starting with the highest priority
`
`infrastructure network. If the highest-priority infrastructure network is not available
`
`– 21 –
`
`
`
`
`
`(the first “NO” in block 63) the headset will either (a) try to connect to the next-
`
`highest-priority infrastructure network if another is available (the second “NO” in
`
`block 63) or (b) give up trying to connect to a prioritized infrastructure network
`
`(because none are available) and attempt to connec
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