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`Paper No. __
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`BOSE CORPORATION
`Petitioner,
`
`v.
`
`KOSS CORPORATION
`Patent Owner.
`_____________
`
`IPR2021-00297
`Patent No. 10,368,155
`_____________
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`I.
`
`
`
`
`
`TABLE OF CONTENTS
`
`GROUNDS 3A-3D: NAKAGAWA-BASED GROUNDS ............................. 2
` Koss Concedes the Nakagawa Combinations Disclose All
`Claim Limitations .................................................................................. 2
`POSAs Had Ample Reasons for the Nakagawa Combinations ............ 3
`1.
`Nakagawa-Wilson (Ground 3A) ................................................. 4
`a.
`Koss Fails to Rebut the Petition’s Reasons for the
`Nakagawa-Wilson Combination ..................................... 4
`(1)
`Stereo Sound .......................................................... 4
`(2) Rechargeable Battery and Docking Station .......... 4
`(3) Known Technique to Improve Similar
`Devices .................................................................. 6
`Nakagawa’s Generic Schematic Supports the
`Combination with Wilson ................................................ 8
`Nakagawa-Rosener (Ground 3B) ................................................ 8
`a.
`Koss Fails to Rebut the Petition’s Reasons for the
`Nakagawa-Rosener Combination .................................... 8
`There Are a Finite Number of Predictable
`Solutions .......................................................................... 9
`Nakagawa’s Functional Description Is Irrelevant ............................... 10
` Koss Repeats Verbatim the “Hindsight” Argument the Board
`Correctly Rejected at Institution ......................................................... 11
`
`b.
`
`2.
`
`b.
`
`– i –
`
`
`
`
`
`II.
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`
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`
`
`GROUNDS 2A-2E: REZVANI-BASED GROUNDS .................................. 12
`Rezvani-Skulley’s “Headphone” Performs the Claimed
`Transition ............................................................................................. 13
`1.
`Rezvani Repeatedly Discloses a Headset that Performs a
`Seamless Handoff ..................................................................... 13
`Koss Relies on Typographical Errors ....................................... 15
`2.
`Koss’s Handset-Based Arguments Fall with Its Typo Argument ....... 19
`POSAs Understood Rezvani’s “Seamless Handoff” to Disclose
`“Transition Automatically” ................................................................. 19
`III. GROUND 1: PRIORITY-BASED GROUND .............................................. 21
`In this Trial, the Breadth of Claims 1-14 Is Not Disputed .................. 22
`The Applicants Did Not Possess the Claimed “Transition” ............... 22
`1.
`The Priority Applications Only Describe Transitions Due
`to Lost Connections ................................................................... 23
`The Priority Applications Do Not Describe Transitions
`from One Ad Hoc Network to Another Ad Hoc Network ........ 25
`Dr. Williams’ Testimony Is Consistent ............................................... 27
`IV. CONCLUSION .............................................................................................. 28
`
`2.
`
`
`
`
`
`
`
`
`
`– ii –
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`CASES
`Ariad v. Eli Lilly,
`598 F.3d 1336 (Fed. Cir. 2010) ............................................................................ 22
`Gemtron Corp. v. Saint-Gobain Corp.,
`572 F.3d 1371 (Fed. Cir. 2009) ............................................................................ 23
`In re Epstein,
`32 F.3d 1559 (Fed. Cir. 1994) ................................................................... 5, 10, 11
`In re NTP,
`654 F.3d 1268 (Fed. Cir. 2011) ............................................................................ 22
`In re NuVasive,
`842 F.3d 1376 (Fed. Cir. 2016) .............................................................................. 2
`In re Yale,
`434 F.2d 666 (C.C.P.A. 1970) ....................................................................... 15, 18
`KSR Int’l v. Teleflex,
`550 U.S. 398 (2007) ...................................................................................... 5, 6, 8
`PGS v. Iancu,
`891 F.3d 1354 (Fed. Cir. 2018) ............................................................................ 10
`PowerOasis v. T-Mobile,
`522 F.3d 1299 (Fed. Cir. 2008) ............................................................................ 23
`Smith & Nephew v. Rea,
`721 F.3d 1371 (Fed. Cir. 2013) ............................................................................ 15
`Tesla v. Nikola,
`IPR2019-01646, Paper 7 (March 27, 2020) ................................................ 3, 6, 12
`Uber v. X One,
`957 F.3d 1334 (Fed. Cir. 2020) ....................................................................... 5, 10
`Univ. of Rochester v. GD Searle,
`358 F.3d 916 (Fed. Cir. 2004) .............................................................................. 28
`
`– iii –
`
`
`
`
`
`
`
`STATUTES
`STATUTES
`35 U.S.C. § 120 ........................................................................................................ 24
`35 U.S.C. § 120 ccccccccssscessccsssssessccessssssecessssusseccessssssseesnsuseeesesnsnsetsssnsneeseeceesseeeeecessan24
`REGULATIONS
`REGULATIONS
`37 C.F.R. § 42.23(b) ................................................................................................ 16
`37 COF.R. § 42.23(b) ccccecsccossssessccesssssesecsenssssseccessssseseseansusesssesnsuseesesensssetsesensnseteecenen 16
`37 C.F.R. § 42.6(a)(3) ....................................................................................... 22, 29
`37 CAF.R. § 42.6(a)(3) ccccscccssscecseccssssssescesssssessscesssssssscensssessecensssstseceesnsueesseesnseees 22, 29
`37 C.F.R. § 42.65(a) ................................................................................................... 3
`37 CAFR. § 42.65(a)eccccesssccssssssssccssssscescesssssessecesssseseceesssseesesenssueessesnssaseesesensneetsceesen 3
`
`
`
`
`
`
`– iv –
`_jiyv—
`
`
`
`
`
`APPENDIX LISTING OF EXHIBITS
`
`1011
`
`Exhibit Description
`1001
`U.S. Patent No. 10,368,155
`1002
`Prosecution History of U.S. Patent No. 10,368,155
`1003
`Declaration of Tim A. Williams (“Williams”)
`1004
`Curriculum Vitae of Tim A. Williams
`1005
`Declaration of John G. Casali (“Casali”)
`1006
`Curriculum Vitae of John G. Casali
`1007
`PCT/US2009/039754 (“PCT Application”)
`1008
`U.S. Patent No. 8,190,203
`1009
`European Patent No. 2,272,259 (“EP ’259”)
`1010
`Request for Entry into the European Phase of PCT/US2009/039854
`(European Application No. 093731146.8) (Oct. 19, 2010)
`Communication regarding the transmission of the European search
`report (European Application No. 093731146.8) (June 10, 2011)
`Communication from Applicant (European Application No.
`093731146.8) (Nov. 30, 2011)
`PCT Publication No. WO2009/126614 (“Pelland”)
`Prosecution History of U.S. Patent No. 8,190,203
`PCT/US2008/88656 (PCT Publication No. WO2009/0886555A1)
`U.S. Patent Application Publication No. 2007/0165875 (“Rezvani”)
`U.S. Patent No. 6,856,690 (“Skulley”)
`U.S. Patent Application Publication No. 2004/0142693 (“Feder”)
`U.S. Patent No. 7,069,452 (“Hind”)
`U.S. Patent Application Publication No. 2008/0076489 (“Rosener”)
`U.S. Patent No. 7,457,649 (“Wilson”)
`U.S. Patent Application Publication No. 2003/0223604 (“Nakagawa”)
`
`1012
`
`1013
`1014
`1015
`1016
`1017
`1018
`1019
`1020
`1021
`1022
`
`– v –
`
`
`
`
`
`1023
`1024
`1025
`1026
`1027
`
`1028
`1029
`1030
`1031
`1032
`1033
`1034
`1035
`1036
`1037
`1038
`1039
`1040
`1041
`1042
`1043
`1044
`1045
`1046
`1047
`
`U.S. Patent Application Publication No. 2007/0253579
`U.S. Patent No. 7,627,289
`U.S. Patent No. 5,889,870
`U.S. Patent Application Publication No. 2008/0031475
`IEEE Std. 315, Graphic Symbols for Electrical and Electronic Diagrams
`(1975) (Reaffirmed 1993)
`U.S. Patent Application Publication No. 2006/0141950
`U.S. Patent Application Publication No. 2006/0083331
`U.S. Patent Application Publication No. 2007/0206776
`U.S. Patent Application Publication No. 2005/0286466
`RESERVED
`U.S. Patent No. 5,761,298
`U.S. Patent No. 5,960,094
`U.S. Patent No. 6,295,366
`U.S. Patent Application Publication No. 2007/0110017
`U.S. Patent Application Publication No. 2004/0068653
`U.S. Patent Application Publication No. 2008/0113689
`U.S. Patent Application Publication No. 2005/0037818
`U.S. Patent Application Publication No. 2004/0210752
`U.S. Patent Application Publication No. 2007/0149261
`U.S. Patent No. 8,180,078
`U.S. Patent Application Publication No. 2005/0058313
`U.S. Patent Application Publication No. 2007/0147629
`U.S. Patent Application Publication No. 2004/0078812
`U.S. Patent Application Publication No. 2008/0166005
`U.S. Patent Application Publication No. 2003/0065805
`
`– vi –
`
`
`
`
`
`1048
`
`1049
`1050
`1051
`1052
`1053
`1054
`
`1055
`
`1056
`1057
`
`1058
`
`1059
`
`1060
`
`1061
`
`1062
`
`Internet Archive of
`http://www.bose.com/controller?event=VIEW_PRODUCT_PAGE_EV
`ENT&product=headphones_audio_subcategory (Nov. 1, 2007)
`U.S. Patent Application Publication No. 2007/0092098
`U.S. Patent Application Publication No. 2008/0226094
`U.S. Patent Application Publication No. 2003/0018810
`U.S. Patent Application Publication No. 2007/0258613
`U.S. Patent Application Publication No. 2009/0046869
`Redline comparisons of specifications in alleged priority chain of U.S.
`Patent No. 10,368,155
`Koss Corp. v. Bose Corp., 6:20-cv-00661-ADA (W.D. Tex.), Dkt. No. 1
`(Complaint & Exs. A-G)
`RESERVED
`Order Regarding Court Operation Under the Exigent Circumstances
`Created by the COVID-19 Pandemic (C.J. Garcia) (Mar. 13, 2020)
`Supplemental Order Regarding Court Operation Under the Exigent
`Circumstances Created by the COVID-19 Pandemic (C.J. Garcia) (Apr.
`15, 2020)
`Supplemental Order Regarding Court Operation Under the Exigent
`Circumstances Created by the COVID-19 Pandemic (C.J. Garcia) (May
`8, 2020)
`Supplemental Order Regarding Court Operation Under the Exigent
`Circumstances Created by the COVID-19 Pandemic (C.J. Garcia) (June
`18, 2020)
`Supplemental Order Regarding Court Operation Under the Exigent
`Circumstances Created by the COVID-19 Pandemic (C.J. Garcia) (July
`2, 2020)
`Supplemental Order Regarding Court Operation Under the Exigent
`Circumstances Created by the COVID-19 Pandemic (C.J. Garcia) (Aug.
`6, 2020)
`
`– vii –
`
`
`
`
`
`1063
`
`1064
`
`
`1065
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`1066
`
`1067
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`1068
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`1069
`
`1070
`
`1071
`
`1072
`
`1073
`
`1074
`
`1075
`
`Supplemental Order Regarding Court Operation Under the Exigent
`Circumstances Created by the COVID-19 Pandemic (C.J. Garcia) (Sept.
`21, 2020)
`Supplemental Order Regarding Court Operation Under the Exigent
`Circumstances Created by the COVID-19 Pandemic (C.J. Garcia) (Oct.
`14, 2020)
`Supplemental Order Regarding Court Operation Under the Exigent
`Circumstances Created by the COVID-19 Pandemic (C.J. Garcia) (Nov.
`18, 2020)
`PACER Docket Activity Report (Criminal Matters) for the United
`Stated District Court, Western District of Texas, Austin and Waco
`Divisions (01/01/2000-11/30/2020)
`Open Civil Matters Before J. Albright (W.D. Tex.) Not On Appeal, Lex
`Machina, https://law.lexmachina.com (last checked 11/30/2020)
`Open Civil Matters Before J. Albright (W.D. Tex.) Not On Appeal Filed
`Before July 22, 2020, Lex Machina, https://law.lexmachina.com (last
`checked 11/30/2020)
`Open Patent Matters Before J. Albright (W.D. Tex.) Not On Appeal,
`Lex Machina, https://law.lexmachina.com (last checked 11/30/2020)
`Open Patent Matters Before J. Albright (W.D. Tex.) Not On Appeal
`Filed Before July 22, 2020, Lex Machina, https://law.lexmachina.com
`(last checked 11/30/2020)
`Scott McKeown, District Court Trial Dates Tend to Slip After PTAB
`Discretionary Denials, https://www.patentspostgrant.com/district-court-
`trial-dates-tend-to-slip-after-ptab-discretionary-denials/ (July 24, 2020)
`(last checked Dec. 1, 2020)
`Civil Docket, Koss Corp. v. Bose Corporation, 6:20-cv-00661 (as of
`Dec. 1, 2020)
`Civil Docket, Koss Corp. v. PEAG LLC d/b/a JLab Audio, 6:20-cv-
`00662 (as of Dec. 1, 2020)
`Civil Docket, Koss Corp. v. Plantronics, Inc., 6:20-cv-00663 (as of Dec.
`1, 2020)
`Civil Docket, Koss Corp. v. Skullcandy, Inc., 6:20-cv-00664 (as of Dec.
`1, 2020)
`
`– viii –
`
`
`
`
`
`1076
`
`1077
`
`1078
`1079
`
`1080
`
`1081
`1082
`
`1083
`1084
`1085
`1086
`1087
`1088
`1089
`1090
`1091
`1092
`1093
`1094
`1095
`1096
`1097
`
`Skrainer, S. F., Royster, L.H., Berger, E.H., & Pearson, R. G. “Do
`Personal Radio Headsets Provide Hearing Protection,” Sound and
`Vibration, 19(5) (1985), 16-19
`Casali, J. G. & Park, M. Y., “Attenuation performance of four hearing
`protectors under dynamic movement and different user fitting
`conditions,” Human Factors (1990)
`U.S. Patent No. 7,564,989
`Proposed Scheduling Order, Koss Corp. v. Plantronics, Inc., 6:20-cv-
`00663 (Dkt. 27) (Nov. 25, 2020)
`Civil Docket, MV3 Partners LLC v. Roku, Inc., 6:18-cv-00308 (as of
`Dec. 1, 2020)
`U.S. Patent Application Publication No. 2007/0123171
`Agreed Scheduling Order, Koss Corp. v. Plantronics et al., 6:20-cv-
`00663, -00664, -00665, Dkt. 28 (Nov. 30, 2020)
`U.S. Patent No. 8,571,544
`Prosecution History of U.S. Patent No. 8,571,544
`U.S. Patent No. 9,049,502
`Prosecution History of U.S. Patent No. 9,049,502
`U.S. Patent No. 9,438,987
`Prosecution History of U.S. Patent No. 9,438,987
`U.S. Patent No. 9,497,535
`Prosecution History of U.S. Patent No. 9,497,535
`U.S. Patent No. 9,729,959
`Prosecution History of U.S. Patent No. 9,729,959
`U.S. Patent No. 9,986,325
`Prosecution History of U.S. Patent No. 9,986,325
`U.S. Patent No. 10,206,025
`Prosecution History of U.S. Patent No. 10,206,025
`April 6, 2021 Letter Stipulation Regarding Prior Art
`
`– ix –
`
`
`
`
`
`
`
`1098
`
`1099
`
`1100
`
`1101
`
`1102
`1103
`1104
`
`
`Order Granting Motion to Dismiss in Koss Corp. v. Skullcandy, Inc.,
`6:20-cv-00664 (W.D. Tex.) (D.I. 38, March 31, 2021)
`Order Granting Defendants’ Motion to Transfer Venue in Koss Corp. v.
`Plantronics et al., 6:20-CV-00663 (W.D. Tex.) (D.I. 45, May 20, 2021)
`Declaration of Nathan R. Speed in Support of Motion for Admission
`Pro Hac Vice
`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
`Reply Declaration of Tim A. Williams (“Williams-Reply”)
`
`
`
`– x –
`
`
`
`
`
`The Board’s preliminary determination that the Nakagawa-based grounds
`
`(3A-3D) and the Rezvani-based grounds (2A-2E) render claims 1-14 obvious should
`
`be maintained. Paper 16 (“ID”), 24-45.
`
`Koss now concedes that the Nakagawa combinations include every limitation
`
`of the challenged claims. Koss’s only remaining challenges to the Nakagawa
`
`combinations impermissibly hinge on treating POSAs as automatons lacking the
`
`ordinary creativity, for example, to select an appropriate battery.
`
`For the Rezvani combinations, Koss relies on a typographical error in
`
`Rezvani’s paragraphs 41 and 50 (“handset” instead of “headset”) and ignores
`
`unambiguous disclosures—argued in the Petition and cited in the ID—of Rezvani’s
`
`headset performing the transition of limitation [1.g]. Rezvani thus discloses [1.g]
`
`regardless of the typo. Further, while Petitioner’s expert explains why Rezvani’s
`
`typo would have been recognized by POSAs, Koss’s expert ignores the issue
`
`entirely.
`
`Finally, on Ground 1 (anticipation by Pelland), the Board’s preliminary
`
`determination that the challenged claims are entitled to priority cannot stand on the
`
`fully-developed record. Written description is a question of fact, yet Koss offers
`
`only attorney argument; its expert conspicuously offers no testimony on written
`
`description. The factual record confirms the claims lack priority.
`
`
`
`
`
`
`
`
`
`I.
`
`GROUNDS 3A-3D: NAKAGAWA-BASED GROUNDS
`
`The Board preliminarily agreed that POSAs had reasons to implement
`
`Nakagawa’s wireless headset (which performs limitation [1.g]’s automatic
`
`transition) using design elements of Wilson such as stereo headphones connected
`
`with a headband (Ground 3A) or of Rosener such as wireless earbuds (Ground 3B).
`
`Petition, 60-63, 75; ID, 28-34. Further, the Board preliminarily found that the
`
`Nakagawa combinations collectively render claims 1-14 obvious.1 ID, 24-36. Those
`
`findings should be maintained.
`
` Koss Concedes the Nakagawa Combinations Disclose All Claim
`Limitations
`
`At institution, the Board rejected Koss’s POPR argument that Nakagawa lacks
`
`limitation [1.g]. ID, 24-28, 33. Koss’s POR did not re-advance that argument, and
`
`Koss thus waived any argument that [1.g] (or any other limitation) is absent from
`
`the Nakagawa combinations. Paper 17, 8; In re NuVasive, 842 F.3d 1376, 1381
`
`(Fed. Cir. 2016). The only remaining question, therefore, is whether POSAs had
`
`reason to implement those combinations.
`
`
`1 Koss advances no separate arguments for Grounds 3C-3D (claim 13).
`
`
`
`-2-
`
`
`
`
`
`
`
`POSAs Had Ample Reasons for the Nakagawa Combinations
`
`As the ID found, the Petition identified reasons why POSAs would have
`
`pursued the Nakagawa combinations. Petition, 61-63, 75, 80; ID, 29-36. The
`
`Petition’s arguments were supported by two experts—Drs. Williams and Casali—
`
`who provided detailed declarations corroborated with prior art confirming their
`
`testimony about POSAs’ motivations.
`
`Koss’s POR mischaracterizes the Petition’s arguments and recycles POPR
`
`arguments that (1) improperly treat POSAs as automatons and (2) were already
`
`rejected in the ID.
`
`The only new “evidence” Koss introduces for its automaton arguments is
`
`Joseph McAlexander’s declaration, but his testimony should be given “little or no
`
`weight” as he “simply repeats the [POR’s] conclusions” without independent
`
`analysis. Tesla v. Nikola, IPR2019-01646, Paper 7, 19 (March 27, 2020) (citing 37
`
`C.F.R. § 42.65(a)) . Mr. McAlexander also lacks any headphone design experience.
`
`Ex. 1101, 8-9. By contrast, Bose’s expert Dr. Casali has decades of headphone
`
`design experience. Casali ¶12. His testimony regarding the ease with which POSAs
`
`would have implemented the Nakagawa combinations stands unrebutted: Koss
`
`chose not to cross-examine him, and Mr. McAlexander did not respond to his
`
`declaration.
`
`
`
`-3-
`
`
`
`
`
`1.
`
`Nakagawa-Wilson (Ground 3A)
`a. Koss Fails to Rebut the Petition’s Reasons for the
`Nakagawa-Wilson Combination
`(1)
`
`Stereo Sound
`
`The Petition’s first reason for Nakagawa-Wilson was implementing
`
`Nakagawa’s functionality in a stereo headphone like Wilson’s. Petition, 61; ID, 29.
`
`Koss’s only response is to allege that “Nakagawa already comprises a stereo
`
`design.” POR, 20. But Nakagawa indisputably never mentions stereo. Koss’s only
`
`“evidence” is Nakagawa’s use of two earphones (POR, 20; Ex. 2023 ¶33) but, as Dr.
`
`Casali explained, headphones with two earphones can be either stereo or monoaural
`
`(the same audio signal supplied to both earphones). Casali ¶47. Koss does not
`
`contest this. Given Nakagawa’s silence, POSAs had reason to use Wilson’s stereo
`
`design “because an intended application for Nakagawa’s headphone assembly is
`
`music playback” for which stereo sound was desirable. Casali ¶125. Even Koss
`
`does not question the musical benefits of stereo sound.
`
`(2) Rechargeable Battery and Docking Station
`
`The Petition’s second reason for Nakagawa-Wilson was POSAs’ desire to
`
`implement Nakagawa’s functionality in a headphone, like Wilson, having a
`
`rechargeable battery and compatible with a docking station. Petition, 62; ID, 29.
`
`
`
`-4-
`
`
`
`
`
`In response, Koss first makes the puzzling assertion that combining Nakagawa
`
`and Wilson would not achieve “a completely wireless design.” POR, 20. But the
`
`goal of achieving a completely wireless design was a reason for combining
`
`Nakagawa with Rosener (Ground 3B). Petition, 75. It is irrelevant to Nakagawa-
`
`Wilson (Ground 3A).
`
`Koss next argues that even though Nakagawa fails to disclose a power source
`
`for its “wireless headset” (Nakagawa, [0025]), POSAs would not have been
`
`motivated to implement Nakagawa’s functionality in a wireless headset with a
`
`battery and docking station per Wilson because POSAs would not know if Wilson’s
`
`batteries were “capable of satisfying unknown power requirements” of the
`
`combination. POR, 20-21. POSAs of course knew how to select appropriate
`
`batteries for common electronic devices like headphones based on their power
`
`requirements. Williams ¶¶237-239; Williams-Reply ¶¶52-57. Koss’s conclusory
`
`contrary argument improperly treats POSAs as automatons. KSR Int’l v. Teleflex,
`
`550 U.S. 398, 418-420 (2007).
`
`The Board correctly rejected Koss’s argument, noting that the ’155 patent
`
`itself “lacks any specificity as to component power levels or battery type.” ID, 30.
`
`In short, the ’155 patent treats power levels and battery selection as routine design
`
`details that POSAs were “more than capable of selecting.” Uber v. X One, 957 F.3d
`
`1334, 1339 (Fed. Cir. 2020); In re Epstein, 32 F.3d 1559, 1568 (Fed. Cir. 1994)
`
`
`
`-5-
`
`
`
`
`
`(“[T]hat appellant did not provide the type of detail in his specification that he now
`
`argues is necessary in prior art references supports the Board’s finding that [POSAs]
`
`would have known how to implement the features of the references.”). Mr.
`
`McAlexander effectively conceded this by admitting that while the ’155 patent
`
`offers no explanation about choosing a battery, POSAs would nevertheless know
`
`how to proceed. Ex. 1101, 32-37, 38-45.
`
`Koss’s “evidence” for its automaton arguments is paragraphs 35-37 of Mr.
`
`McAlexander’s declaration. These paragraphs repeat almost verbatim the POR’s
`
`attorney argument (compare Ex. 2023 ¶¶35-37 with POR, 20-21). Cf. Tesla, 19
`
`(such testimony deserves “little or no weight”). Moreover, despite the ID’s rejection
`
`of the same automaton argument (ID, 30), Mr. McAlexander offers no independent
`
`analysis identifying specific battery-related challenges that would have dissuaded
`
`POSAs from pursuing the Nakagawa-Wilson combination. Battery selection would
`
`be well within POSAs’ ordinary creativity. Williams ¶¶237-239; Williams-Reply
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`¶¶53-57; ID, 30; KSR, 550 U.S. at 418-420.
`
`(3) Known Technique to Improve Similar Devices
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`The Petition explained that implementing Nakagawa’s functionality in
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`Wilson’s design “would have been applying a known technique to improve similar
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`devices in the same way (i.e., to produce stereo sound).” Petition, 62. This rationale
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`stands unrebutted, as Koss ignores it.
`
`
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`-6-
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`
`
`
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`Koss instead reinterprets the Petition as allegedly arguing (on page 51) that
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`“Nakagawa’s design is…identical to Rosener’s design or Wilson’s design.”
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`POR, 22. Koss’s argument is difficult to comprehend. First, page 51 of the Petition
`
`concerns Ground 2D, based on Rezvani, not a Nakagawa-based ground. Second,
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`contrary to Koss, the Petition never suggested that Nakagawa’s headphone is
`
`identical to Wilson’s headphone—they are clearly different, which indeed is a reason
`
`why POSAs would have combined Nakagawa with Wilson for the benefits of
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`Wilson’s headphone, including its “stereo sound.” Petition, 62.2
`
`Koss also argues that Nakagawa is “significantly different” from Wilson
`
`because Nakagawa has components that Wilson lacks. POR, 22-23. This argument
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`again impermissibly treats POSAs as automatons incapable of ordinary creativity
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`when implementing Nakagawa’s functionality in a different form-factor like
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`Wilson’s. Moreover, Wilson explains that its battery powers multiple components,
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`and thus its headphone already has means for powering Nakagawa’s additional
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`components. Wilson, 4:16-35; Williams ¶¶237-238; Williams-Reply ¶56.
`
`
`2 The reference to “identical wireless earphones” on page 51 concerns Rosener’s two
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`identical (left-ear and right-ear) earbuds. The Petition never suggested that
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`Nakagawa’s headphone is identical to Rosener’s headphone. To the contrary, their
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`differences motivate the Nakagawa-Rosener combination. Petition, 75.
`
`
`
`-7-
`
`
`
`
`
`b.
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`Nakagawa’s Generic Schematic Supports the
`Combination with Wilson
`
`Koss argues that POSAs would not have pursued the Nakagawa-Wilson
`
`combination because Nakagawa’s Figure 1 already depicts a specific headset design.
`
`POR, 18-19. But Koss’s own expert admitted that Nakagawa’s Figure 1 is
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`“symbolic,” exhibits a “lack of specificity,” and fails even to convey whether
`
`Nakagawa’s earphones are in-ear, over-ear, or on-ear. Ex. 1101, 12-14. This
`
`confirms Dr. Casali’s testimony that Nakagawa is consistent with multiple designs,
`
`giving POSAs reason to select Wilson (a stereo headphone with docking station for
`
`charging) for combination. Casali ¶¶124-125.
`
`Even if Nakagawa did disclose a specific design, POSAs still had reasons to
`
`form Nakagawa-Wilson as a “predictable variation.” KSR, 550 U.S. at 417.
`
`2.
`
`Nakagawa-Rosener (Ground 3B)
`a. Koss Fails to Rebut the Petition’s Reasons for the
`Nakagawa-Rosener Combination
`
`As the Petition explained, POSAs would have recognized the benefits of
`
`Rosener’s completely wireless earbuds, providing reason to combine Nakagawa
`
`with Rosener. Petition, 75. At institution, the Board agreed. ID, 32-34. Koss offers
`
`no response, leaving the benefits of the combination unrebutted.
`
`
`
`-8-
`
`
`
`
`
`Instead, Koss confusingly argues that “incorporating a battery from…Rosener
`
`into the Nakagawa design does not convert the Nakagawa design into a completely
`
`wireless design.” POR, 20. Koss again misstates the Petition’s argument, which is
`
`based on adopting Rosener’s earbud design, not just its battery. Petition, 75.
`
`Koss’s remaining Rosener-related arguments are directed to “Dependent
`
`Claim 5.” POR, 31. Koss argues, as with Nakagawa-Wilson, that POSAs would
`
`not have combined Nakagawa and Rosener since Nakagawa “discloses a particular
`
`form factor.”
`
` POR, 32.
`
` Again, Koss’s own expert disagrees.
`
` Supra
`
`Section I.B.1.b1.b.
`
`Further, Koss argues that POSAs would have been stymied in fitting
`
`Nakagawa’s components into earbuds or selecting a sufficient battery. POR, 33-35.
`
`These arguments are based on conclusory testimony (Ex. 2023 ¶¶34, 38-40) that
`
`ignores POSAs’ skill (Williams ¶239; Casali ¶64; Williams-Reply ¶¶55-56) and
`
`impermissibly treat POSAs as automatons.
`
`b.
`
`There Are a Finite Number of Predictable Solutions
`
`Koss argues that Nakagawa-Rosener is not one of “a finite number of
`
`identified, predictable solutions” as the Petition explained (at 75). POR, 23. But as
`
`the Board found with respect to Nakagawa-Wilson, “[t]he proposed combination is
`
`finite, a one for one substitution of Wilson’s headset for the headphone of
`
`
`
`-9-
`
`
`
`
`
`Nakagawa.” ID, 31. Nakagawa-Rosener presents the same finite combination, a
`
`one-for-one substitution of Rosener’s headset for Nakagawa’s.
`
`Koss also argues that incorporating Nakagawa’s functionality into Rosener’s
`
`earbuds is not “predictable” because of earbud size constraints. POR, 23-24. As
`
`with battery type and power levels, however, the ’155 patent itself is silent on how
`
`to fit the claimed components into an earbud, demonstrating that resolving this issue
`
`was well within POSAs’ skill. Uber, 957 F.3d at 1339; Epstein, 32 F.3d at 1568.
`
`Dr. Casali—an undisputed headphone-design expert—confirmed that by 2008 the
`
`“functional components of a wireless headphone assembly…were…small enough to
`
`fit within the housings of in-the-ear designs.” Casali ¶64; see also Williams ¶¶33,
`
`158, 278. Prior art, including Rosener, confirms that POSAs knew how to
`
`incorporate such components into earbuds. Rosener, [0030]-[0031], Figs. 5-6;
`
`Skulley, 1:24-26; Ex. 1033, 6:49-67, Figs. 3A-3B; Casali ¶¶61-63.
`
` Nakagawa’s Functional Description Is Irrelevant
`
`As it did pre-institution (POPR, 41-43), Koss argues that because Nakagawa
`
`describes certain components functionally, POSAs would have to guess “what
`
`power levels” the components “might require” and thus would be unable to
`
`implement the Nakagawa combinations. POR, 27-31. The Board rejected this
`
`argument (ID, 30-31, 34) and should again reject it, as POSAs are not automatons
`
`
`
`-10-
`
`
`
`
`
`forced to “blindly incorporate” Nakagawa’s “exact” components into the Wilson or
`
`Rosener headphones. PGS v. Iancu, 891 F.3d 1354, 1366 (Fed. Cir. 2018).
`
`Exercising ordinary creativity, POSAs would have implemented Nakagawa-
`
`Wilson and Nakagawa-Rosener to include components performing Nakagawa’s
`
`sound-source switching functionality even if doing so required modifications to
`
`account for specific aspects of Wilson or Rosener. Williams ¶¶239, 278. Indeed,
`
`the ’155 patent concedes there was no need to detail specific hardware or software
`
`“because it is clearly understood that [POSAs] would be able to design software and
`
`control hardware to implement the embodiments based on the present description
`
`with no more than reasonable effort and without undue experimentation.” Ex. 1001,
`
`17:1-9. Koss invites legal error by arguing that POSAs’ expectation of success
`
`requires prior art with more detail than the challenged patent itself provides. Epstein,
`
`32 F.3d at 1568.
`
` Koss Repeats Verbatim the “Hindsight” Argument the Board
`Correctly Rejected at Institution
`
`Koss argues that the Nakagawa combinations are premised on “hindsight,”
`
`repeating a POPR argument the Board rejected. Compare POR 24-26 with POPR,
`
`41-44; ID, 24 (identifying argument), 30-32 (rejecting it).
`
`Koss’s flawed “hindsight” argument (POR 24-25) relies on the same
`
`automaton-based contentions concerning batteries and power levels discussed supra
`
`Section I.B.1.a(2). The ID rejected the argument because Koss failed to identify any
`-11-
`
`
`
`
`
`
`
`specific reason “how or why” POSAs needed to know the specific power required
`
`by Nakagawa and/or provided by Wilson or Rosener to pursue the combinations.
`
`ID, 30. Koss’s POR fares no better. It cites Mr. McAlexander’s paragraphs 41-44
`
`(POR, 24-26), but that testimony parrots verbatim the POR and should receive “little
`
`or no weight” as it lacks evidentiary support or independent analysis. Tesla, 19.
`
`Koss’s POSA “ha[d] practical experience with circuit design, speaker
`
`components, and wireless communication” (POR, 4) which makes Koss’s
`
`contention that POSAs could not avoid “excessive heating” and “interfer[ence] with
`
`Nakagawa’s…circuitry” (POR, 25-26) untenable. As with battery type and power
`
`levels, the ’155 patent says nothing about how the inventors avoided “excessive
`
`heating” or interference. Ex. 1101, 36-37 (confirming lack of disclosure). This
`
`silence underscores the trivial nature of the “problems” Koss speculates might occur.
`
`II. GROUNDS 2A-2E: REZVANI-BASED GROUNDS
`
`Ground 2A explained why POSAs would implement Rezvani’s headset using
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`Skulley’s designs. Petition, 25-29. The Board preliminarily agreed and found
`
`claims 1-4, 6-8, and 14 obvious over Rezvani-Skulley. ID, 36-41.3
`
`
`3 The Board also found that the combinations in Grounds 2B-2E render claims 5-7
`
`and 9-13 obvious. ID, 42-45. Koss raises no arguments specific to Grounds 2B-2E.
`
`
`
`-12-
`
`
`
`
`
`Koss does not meaningfully dispute either that POSAs had reason to pursue
`
`Rezvani-Skulley or that they had a reasonable expectation of success. Instead, Koss
`
`argues that Rezvani-Skulley fails to disclose the “transition automatically”
`
`limitation, but its arguments are manifestly incorrect as explained below.
`
` Rezvani-Skulley’s “Headphone” Performs the Claimed Transition
`
`Koss admits Rezvani teaches “seamless handoff” of VoIP calls, but argues a
`
`handset performs the “seamless handoff,” not a headset. POR, 11-13. This
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`argument depends on a typographical error in Rezvani’s paragraphs 41 and 50 as
`
`explained infra Section II.A.2. Further, as discussed immediately below, even
`
`setting aside those paragraphs, Rezvani elsewhere unambiguously teaches a headset
`
`performing the “seamless handoff.”
`
`1.
`
`Rezvani Repeatedly Discloses a Headset that Performs a
`Seamless Handoff
`
`As the Board found, the Petition cited multiple disclosures in Rezvani—
`
`independent of the two paragraphs relied upon by Koss, which contain typographical
`
`errors—teaching explicitly that Rezvani’s headset performs a seamless handoff. ID,
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`39-40 (citing Petition at 26, 35); Williams-Reply ¶¶8-14.
`
`Rezvani’s Abstract says the invention is a “wireless multi-media headse
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