`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`KOSS CORPORATION,
`Patent Owner.
`_____________________
`CASE: IPR2021-00381
`U.S. PATENT NO. 10,491,982
`_____________________
`
`
`PATENT OWNER SUR-REPLY
`
`
`
`
`
`
`
`
`

`

`I.
`II.
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`THE SKILL LEVEL OF A POSITA IS NOT IN DISPUTE; INSTEAD,
`THE DISPUTE IS WHETHER THE CHALLENGED CLAIMS COULD
`HAVE BEEN OBVIOUS TO THE AGREE-UPON POSITA ....................... 1
`III. A POSITA WOULD NOT HAVE HAD A REASONABLE
`EXPECTATION OF SUCCESS COMBINING THE REFERENCES .......... 7
`A.
`Transducers ........................................................................................... 8
`B.
`Flexible Circuit Board ........................................................................... 9
`C.
`A/D Converter and Buffer ................................................................... 11
`D.
`Rosener’s Data Source ........................................................................ 11
`IV. MR. BLAIR IS AN EXPERIENCED HEADPHONE DESIGNER WHOSE
`TESTIMONY DESERVES GREAT WEIGHT ............................................ 13
`THE REPLY FAILS TO ESTABLISH THAT CERTAIN DEPENDENT
`CLAIMS WOULD HAVE BEEN OBVIOUS .............................................. 14
`A.
`Claim 4 ................................................................................................ 15
`B.
`Claim 14 .............................................................................................. 16
`C.
`Claim 15 .............................................................................................. 18
`D.
`Claims 19-20 ....................................................................................... 20
`VI. COMMERCIAL SUCCESS OF THE AIRPOD PRODUCTS IS
`SECONDARY INDICIA OF NON-OBVIOUSNESS .................................. 22
`A.
`Petitioner Provided No Evidence Refuting that AirPod Products
`Possess All Elements of Challenged Claims ....................................... 22
`The Challenged Claims are Coextensive with the AirPod Products ... 22
`Commercial Success of the AirPod Products is a Direct Result of
`Practicing the Challenged Claims ....................................................... 25
`VII. CONCLUSION .............................................................................................. 26
`
`
`V.
`
`B.
`C.
`
`ii
`
`

`

`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Apple Inc. v, Qualcomm Inc.,
`IPR2018-012452, Paper 28 (PTAB Jan. 22, 2020) ............................................ 19
`Chemours Co. v. Daikan Indus., Ltd.,
`4 F.4th 1370 (Fed. Cir. 2021) ............................................................................. 26
`Chums, Inc. v. Cablz, Inc.,
`IPR2014-01240, Paper 43 (PTAB Feb. 8, 2016) ................................................ 13
`FOX Factory, Inc. v. SRAM LLC,
`944 F.3d 1366 (Fed. Cir. 2019) .................................................................... 22-25
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) .................................................................................................. 3
`Hybritech Inc. v. Abbott Labs.,
`4 U.S.P.Q.2d 1001 (C.D. Cal. 1987) .................................................................... 8
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) .......................................................................... 19
`KCJ Corp. v. Kinetic Concepts, Inc.,
`223 F.3d 1351 (Fed. Cir. 2000) .......................................................................... 24
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) .............................................................................................. 4
`In re Nuvasive, Inc.,
`842 F.3d 1376 (Fed. Cir. 2016) .......................................................................... 22
`Praxair Tech., Inc. v. Entegris, Inc.,
`IPR2016-01845, Paper 20 (PTAB Mar. 29, 2018) ............................................. 14
`RPX Corp. v. IYM Techs. LLC,
`IPR2017-01888, Paper 35 (PTAB Mar. 6, 2019) ............................................... 19
`W.L. Gore & Assoc., Inc. v. Garlock, Inc.,
`721 F.2d 1540 (Fed. Cir. 1983) ............................................................................ 4
`
`iii
`
`

`

`EXHIBIT LISTING
`
`Description
`Exhibit
`KOSS-2001 Docket Report, Koss Corp. v. Apple Inc., Case 6-20-cv-00665-ADA
`(W.D. Tex.) (as of April 19, 2021)
`
`KOSS-2002 Sample Order Governing Proceedings - Patent Case, November 5,
`2020, Judge Albright, United States District Court for the Western
`District of Texas, Waco Division
`
`KOSS-2003
`
`“Fauci predicts by April it will be ‘open season’ for vaccinations in
`the
`US,”
`Boston
`Globe,
`February
`11,
`2021
`(www.bostonglobe.com/2021/02/11/nation/fauci-predicts-by-april-
`it-will-be-open-season-vaccinations-us/) (last accessed April 19,
`2021)
`
`KOSS-2004 K. Thomas, “Top U.S. health experts say vaccine supplies and
`vaccinations will increase by spring,” New York Times, Feb. 7,
`2021 (www.nytimes.com/2021/02/07/us/cdc-vaccine-supply.html)
`(last accessed April 19, 2021)
`
`KOSS-2005 B. Lovelace Jr., et al., “Biden says 90% of U.S. adults will be
`eligible for Covid shots by April 19 with sites within five miles of
`home,” Mar. 29, 2021, CNBC (www.cnbc.com/2021/03/29/biden-
`to-announce-90percent-of-us-adults-will-eligible-for-covid-shots-
`by-april-19-with-sites-within-five-miles-of-home.html)
`(last
`accessed April 19, 2021)
`
`KOSS-2006 Order Resetting Markman Hearing, Koss Corp. v. Apple Inc., Case
`6:20-cv-00665-ADA, Dkt. 58 (Mar. 24, 2021 W.D. Tex.)
`
`KOSS-2007 Defendant Apple Inc.’s Invalidity Contentions, Koss Corp. v. Apple
`Inc., Case 6:20-cv-00665-ADA (W.D. Tex.) served Jan. 15, 2021
`
`KOSS-2008 Exhibit D8 to Apple Inc.’s Invalidity Contentions, Koss Corp. v.
`Apple Inc., Case 6:20-cv-00665-ADA (W.D. Tex.) served Jan. 15,
`2021
`
`iv
`
`

`

`Description
`Exhibit
`KOSS-2009 Exhibit D6 to Apple Inc.’s Invalidity Contentions, Koss Corp. v.
`Apple Inc., Case 6:20-cv-00665-ADA (W.D. Tex.) served Jan. 15,
`2021
`
`KOSS-2010 Appendix A to Apple Inc.’s Invalidity Contentions, Koss Corp. v.
`Apple Inc., Case 6:20-cv-00665-ADA (W.D. Tex.) served Jan. 15,
`2021
`
`KOSS-2011 U.S. Patent 10,469,934 B2
`
`KOSS-2012 U.S. Patent 10,368,155 B2
`
`KOSS-2013 U.S. Patent 10,206,025 B2
`
`KOSS-2014 U.S. Patent 9,986,325 B2
`
`KOSS-2015 U.S. Patent 9,729,959 B2
`
`KOSS-2016 U.S. Patent 9,497,535 B2
`
`KOSS-2017 U.S. Patent 9,438,987 B2
`
`KOSS-2018 U.S. Patent 9,049,502 B2
`
`KOSS-2019 U.S. Patent 8,571,544 B2
`
`KOSS-2020 U.S. Patent 8,190,203 B2
`
`KOSS-2021 U.S. Patent 8,655,420 B2
`
`v
`
`

`

`Description
`Exhibit
`KOSS-2022 March 22, 2021 letter from D. Winnard of Goldman, Ismail,
`Tomaselli Brennan & Baum LLP to Darlene F. Ghavimi of K&L
`Gates re Koss Corporation v. Apple Inc., Case 6:20-cv-00665
`
`KOSS-2023 U.S. Patent Application Pub. No. 2008/0298606 A1 (“Johnson”)
`
`KOSS-2024 U.S. Patent Application Pub. No. 2007/0037615 A1 (“Glezerman”)
`
`KOSS-2025 U.S. Patent Application Pub. No. 2008/0194209 A1 (“Haupt”)
`
`KOSS-2026 Office Action dated June 14, 2013 for Serial No. 13/459,291 with
`PTO-892, Notice of References Cited
`
`KOSS-2027 B. Eakin, “Intel Hit With $2.1B Jury Verdict In VLSI Patent Fight,”
`Law360,
`Portfolio Media,
`Inc., March
`2,
`2021
`(www.law360.com/articles/1360627/intel-hit-with-2-18b-jury-
`verdict-in-vlsi-patent-fight) (last accessed April 19, 2021)
`
`KOSS-2028 C. Salvatore, “Intel Owes VLSI Another $3B for Chip IP,
`Economist Tells Jury,” Law360, Portfolio Media, Inc., March 2,
`2021 (www.law360.com/articles/1375152/intel-owes-vlsi-another-
`3b-for-chip-ip-economist-tells-jury) (last accessed April 19, 2021)
`
`KOSS-2029 Calendar of United States District Judge Alan Albright, United
`States District Court, Western District of Texas, April 20, 2021 to
`July
`19,
`2021
`(generated
`April
`20,
`2021)
`(www.txwd.uscourts.gov/judges-information/judges-
`calendars/#/waco/alan-albright/2021-04-20-to-2021-07-19/)
`
`KOSS-2030 M. Casady, “Roku Cleared Of Infringement In $228M Interactive
`TV IP Trial,” Law360, Portfolio Media, Inc., March 2, 2021
`(www.law360.com/articles/1373776/roku-cleared-of-
`infringement-in-228m-interactive-tv-ip-trial) (last accessed April
`19, 2021)
`
`vi
`
`

`

`Description
`Exhibit
`KOSS-2031 Docket Report, Koss Corp. v. Apple Inc., Case No. 6:20-cv-00665-
`ADA (W.D. Tex.) (as of June 24, 2021)
`
`KOSS-2032 Claim Construction Order, Koss Corp. v. Apple Inc., Case No. 6:20-
`cv-00665-ADA, Dkt. 83 (W.D. Tex. June 2, 2021)
`
`KOSS-2033 Order Denying Defendant’s Motion to Transfer, Koss Corp. v.
`Apple Inc., Case No. 6:20-cv-00665-ADA, Dkt. 76 (public/redacted
`version) (W.D. Tex. April 22, 2021)
`
`KOSS-2034 Docket Report, Apple Inc. v. Koss Corp., Case No. 4-20-cv-05504-
`JST (N.D. Cal.) (as of June 24, 2021)
`
`KOSS-2035 Order Granting Motion to Transfer, Apple Inc. v. Koss Corp., Case
`No. 4-20-cv-05504-JST, Dkt. 72 (N.D. Cal. May 12, 2021)
`
`KOSS-2036 Docket Report, In re Apple, Case No, 21-147 (Fed. Cir.) (as on June
`24, 2021)
`
`KOSS-2037 Deposition Transcript, Jeremy Cooperstock, Ph.D., Sept. 13, 2021,
`IPR2021-00381
`
`KOSS-2038 Declaration of Joseph C. McAlexander III
`
`KOSS-2039 Declaration of Nicholas S. Blair
`
`KOSS-2040
`
`“Apple AirPods are now available,” Apple Newsroom, Dec. 13,
`2016 (www.apple.com/newsroom/2016/12/apple-airpods-are-now-
`available/) (last accessed Sept. 8, 2021)
`
`KOSS-2041
`
`“AirPods, the world’s most popular wireless headphones, are
`getting even better,” Apple Newsroom, Mar. 20, 2019
`(www.apple.com/newsroom/2019/03/airpods-the-worlds-most-
`popular-wireless-headphones-are-getting-even-better/)
`(last
`accessed Sept. 8, 2021)
`
`vii
`
`

`

`Exhibit
`KOSS-2042
`
`Description
`“Apple reveals new AirPods Pro, available October 30,” Apple
`Newsroom,
`Mar.
`20,
`2019
`(www.apple.com/newsroom/2019/10/apple-reveals-new-airpods-
`pro-available-october-30/) (last accessed Sept. 8, 2021)
`
`KOSS-2043 Apple Inc., Form 10-K, for fiscal year ended September 26, 2020
`
`KOSS-2044 D. Curry, “Apple Statistics (2021),” Business of Apps, Aug. 16,
`2021
`(www.businessofapps.com/data/apple-statistics/)
`(last
`accessed Aug. 18, 2021)
`
`KOSS-2045
`
`“Connect your AirPods and AirPods Pro to your iPhone,” Apple
`Support,
`Jun.
`23,
`2021
`(https://support.apple.com/en-
`us/HT207010) (last accessed Sept. 9, 2021)
`
`KOSS-2046 M. Potuck, “AirPods dominate wireless headphone market as global
`growth hits 90%
`for 2020,” 9to5Mac,
`Jan. 27, 2021
`(9to5mac.com/2021/01/27/airpods-dominate-wireless-headphone-
`market/) (last accessed Sept. 16, 2021)
`
`KOSS-2047 Deposition Transcript, Jeremy Cooperstock, Ph.D., Jan, 28, 2022,
`IPR2021-00381
`
`
`
`
`
`viii
`
`

`

`
`I.
`
`INTRODUCTION
`
`Case IPR2021-00381
`Patent Owner Sur-Reply
`
`Patent Owner submits this Sur-Reply to Petitioner’s Reply (Paper 31,
`
`“Reply”). Petitioner failed to carry its burden of showing that claims 1-5 and 14-20
`
`(“Challenged Claims”) in U.S. Patent No. 10, 491,982 (“the ’982 Patent”) are
`
`invalid. The Board should confirm the patentability of the Challenged Claims.
`
`II. THE SKILL LEVEL OF A POSITA IS NOT IN DISPUTE; INSTEAD,
`THE DISPUTE IS WHETHER THE CHALLENGED CLAIMS
`COULD HAVE BEEN OBVIOUS TO THE AGREE-UPON POSITA
`Petitioner asserted that the Power Owner Response (Paper 19, “POR”)
`
`attempted to challenge the person of ordinary skill in the art (“POSITA”) definition
`
`proposed by the Petition and adopted by the Board. Reply, 8. This is a blatant
`
`mischaracterization of the POR, which explicitly stated that the “Board should adopt
`
`Petitioner’s assertion” of the POSITA skill level. POR, 13. Even Patent Owner’s
`
`expert, Mr. Joseph McAlexander III (“McAlexander”), testified that Petitioner’s
`
`POSITA skill level “seem[s] reasonable…” KOSS-2038, ¶20.
`
`Accordingly, both parties agree that a person with a bachelor’s degree in
`
`computer science and two years of experience in wireless communications across
`
`short distance or local area networks (“LANs”) qualifies as a POSITA and the Board
`
`adopted this standard for purposes of institution. APPLE-1003, ¶30; KOSS-2037,
`
`30:20-31:3; KOSS-2038, ¶20; Institution Decision (Paper 15) at 33. Patent Owner
`
`disagrees, however, that it would have been obvious for a person that qualifies as a
`
`- 1 -
`
`

`

`
`POSITA under this agreed-to skill level to modify Rosener’s headphones by
`
`Case IPR2021-00381
`Patent Owner Sur-Reply
`
`condensing all of its components into a compact form factor, or suitably powering
`
`the modified earphones given the resulting size constraints. KOSS-2038, ¶¶46-56.
`
`Cooperstock confirmed that such modifications would be non-obvious to a
`
`POSITA because he, as a person with skills superior to a POSITA with a bachelor’s
`
`degree in computer science and two years of experience in wireless communications
`
`across short distance or LANs, could not explain important aspects of the relied-
`
`upon prior art including: how Rosener’s transducer operates; how Rosener’s A/D
`
`converter and data buffer coordinate; and what Hankey’s flexible circuit would be
`
`made of in order to make the combination proposed by Cooperstock. KOSS-2037,
`
`36-43 (transducers), 45-61 (data buffer), 67-68 (material for flexible circuit board).
`
`If Cooperstock, with his superior skills, could not describe these important
`
`implementation details, a POSITA with lesser skills, including one with a computer
`
`science bachelor’s degree and two years of experience with LANs, would not have
`
`a reasonable expectation of success arriving at the Challenged Claims from the cited
`
`references.
`
`In its Reply, Petitioner accused Patent Owner of avoiding the arguments in
`
`the Petition, creating diversions, and focusing on ancillary concepts, like the skill
`
`level of a POSITA. Reply, 6. However, what would have been obvious to POSITA
`
`
`- 2 -
`
`

`

`
`is not a “diversion” or “ancillary concept.” It is the heart of the obviousness inquiry.
`
`Case IPR2021-00381
`Patent Owner Sur-Reply
`
`See Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). The Reply also sought to
`
`mitigate Cooperstock’s devastating testimony by pointing to deposition testimony
`
`from him that the POSITA “would gain the knowledge in[] their academic
`
`background …” and “through their industry experience ….” Reply, 8 (quoting
`
`KOSS-2037, 33:5-16); see also APPLE-1024, ¶¶10-11. There are four problems
`
`with this.
`
`First, Cooperstock’s testimony cannot be reconciled with his own inability to
`
`meaningfully comment on the prior art, even though he has superior academic and
`
`industry experience to a POSITA. In fact, Cooperstock’s testimony confirmed that
`
`a POSITA without experience in headphone design would have little chance to
`
`understand the relevant concepts, because Cooperstock had previously designed
`
`headphones and had written papers involving “audio communications.” KOSS-
`
`2047, 6:19-8:5. Cooperstock, therefore, is “more interested in such technologies”
`
`than a POSITA with a computer science bachelor’s degree without relevant
`
`headphone experience (APPLE-1024, ¶11), yet Cooperstock still could not explain
`
`how many of the critical components in Rosener’s and Hankey’s headsets operate.
`
`KOSS-2037, 37:17-43:17. Petitioner also characterized Cooperstock’s lack of
`
`knowledge as mere “implementation details.” Reply at 9. Cooperstock, however,
`
`
`- 3 -
`
`

`

`
`could not even explain foundational technical concepts regarding the speaker types
`
`Case IPR2021-00381
`Patent Owner Sur-Reply
`
`mentioned in Rosener (KOSS-2037, 36-43) and every earphone includes a speaker.
`
`Second, Cooperstock’s testimony that a POSITA would have to “gain” the
`
`relevant skills is a tacit admission that the POSITA would not have the relevant skills
`
`and that, therefore, the proposed combinations would not have been obvious to the
`
`POSITA. Petitioner’s position that a POSITA would simply “gain” the skills to
`
`render the claims obvious is a form of impermissible hindsight. KSR Int’l Co. v.
`
`Teleflex, Inc., 550 U.S. 398, 421 (2007) (“factfinder should be aware … of the
`
`distortion caused by hindsight bias and must be cautious of arguments reliant upon
`
`ex post reasoning”). It is evident that Cooperstock simply used the claims “as a
`
`frame” and selected “naked parts of separate prior art references [] as a mosaic to
`
`recreate a facsimile of the claimed invention,” without consideration of whether his
`
`defined POSITA could in fact make the combination. W.L. Gore & Assoc., Inc. v.
`
`Garlock, Inc., 721 F.2d 1540, 1552 (Fed. Cir. 1983). The fact that a POSITA would
`
`have to “gain” the relevant skills only confirms that the POSITA, before relying on
`
`hindsight to gain the relevant skills, would not have had a reasonable expectation of
`
`success in realizing the inventions of the Challenged Claims. KOSS-2038, ¶¶46-62
`
`(evidence for claim 1).
`
`Third, Cooperstock’s testimony that the POSITA “would gain” the requisite
`
`
`- 4 -
`
`

`

`
`knowledge is undercut by, and inconsistent with, other testimony that he gave about
`
`Case IPR2021-00381
`Patent Owner Sur-Reply
`
`what the POSITA would learn through his/her experience. Cooperstock testified
`
`that with two years of experience in wireless communications across short distances,
`
`the POSITA would “gain[] practical experience that is not related to the topics
`
`covered here.” KOSS-2037, 32:21-33:2. Similarly, he testified that someone with
`
`two years of experience with LANS “would possibly not involve some of the
`
`wireless elements….” Id., 33:20-34:3. Thus, even according to Cooperstock’s
`
`testimony, the experience of a POSITA might not be relevant to the ’982 Patent such
`
`that he/she would not gain the skills and knowledge that Cooperstock said that the
`
`POSITA would need to gain. See also KOSS-2038, ¶20 (“experience with short
`
`distance wireless communications and LANs would not necessarily translate to
`
`experience involving acoustics, wireless headphone or wireless speakers”).
`
`Finally, Petitioner asserted that Cooperstock’s lack of understanding about
`
`Rosener’s A/C converter to account for latencies between audio streams for
`
`independently wireless earphones is misplaced because the POSITA “would have
`
`had reasonable expectation of success in implementing Rosener’s disclosed
`
`alternative technique of sub-carrier modulation technique.” Reply, 11. This
`
`argument fails because Cooperstock also could not explain how Rosener’s sub-
`
`carrier modulation technique works. Cooperstock refused to answer questions about
`
`
`- 5 -
`
`

`

`
`this technique even though he asserted that it would be “well-known to POSITAs at
`
`Case IPR2021-00381
`Patent Owner Sur-Reply
`
`the time.” KOSS-2037, 55:19-21 (“that’s … terminology that I haven’t included in
`
`my declaration and haven’t considered”); 56:4-7 (“that is not something that I … felt
`
`the need to consider as to the terminology of these detailed RF communication
`
`parameters”); 56:8-11 (“in terms of giving you what an understanding of a POSITA
`
`would be of that term at the time, I would go back to literature that was available”);
`
`56:20-57:4 (“if you wanted me to give you a definition as to what a POSITA would
`
`have known at the time or of how they would have understood the sub-carrier
`
`terminology at the time, I’d want to go back and make sure that -- refreshing my
`
`memory in terms of what the -- the sources, literature, would have defined those
`
`terms as”); 57:13-20 (“… these are areas that I’ve not gone into in my report. I
`
`wasn’t asked to consider those questions of RF basics. And in order to give you that
`
`answer, I’d want to take the time to go back to references, possibly textbooks that
`
`were being used at the time frame to get into details of RF communication.”).
`
`In summary, Petitioner proposed a skill level for the POSITA; the Board
`
`adopted it for purposes of institution; and applying the skill level proposed by
`
`Petitioner and adopted to the Board, Patent Owner showed that the POSITA would
`
`not have the relevant skills and experience to render the claims obvious. Petitioner’s
`
`ex post facto attempts to fill in that knowledge for a POSITA and its arguments that
`
`
`- 6 -
`
`

`

`
`the proposed combinations would be obvious in spite of the POSITA’s lack of
`
`Case IPR2021-00381
`Patent Owner Sur-Reply
`
`relevant skills are inconsistent with the evidence and law.
`
`III. A POSITA WOULD NOT HAVE HAD A REASONABLE
`EXPECTATION OF SUCCESS COMBINING THE REFERENCES
`As previously explained, Cooperstock could not explain important aspects of
`
`the relied upon prior art including: how Rosener’s transducer operates; how
`
`Rosener’s A/D converter and data buffer coordinate; and what Hankey’s flexible
`
`circuit would be made of. KOSS-2037, 36-43 (transducers), 45-61 (data buffer), 67-
`
`68 (material for flexible circuit board). Logically, therefore, a POSITA, with inferior
`
`skills and experience compared to Cooperstock, would not have had a reasonable
`
`expectation of arriving at the claimed inventions in view of the relied-upon art.
`
`Petitioner attempted
`
`to rehabilitate Cooperstock’s
`
`testimony via his
`
`Supplemental Declaration, which states “I understand the concepts that are needed
`
`to implement the prior art combination….” APPLE-1024, ¶13. Petitioner also
`
`argued that “a POSITA could have identified relevant information and thereby had
`
`a reasonable expectation of combining Rosener and Hankey without invention.”
`
`Reply, 6. In other words, according to Petitioner, in spite of Cooperstock’s inability
`
`to explain critical components in Rosener, a POSITA could have simply figured
`
`those things out. These positions are irreconcilable with facts and law.
`
`
`- 7 -
`
`

`

`
`
`Case IPR2021-00381
`Patent Owner Sur-Reply
`
`A.
` Transducers
`The Reply asserted that “experts of both parties have testified that the
`
`properties, characteristics, and use of audio transducers (the transducer types
`
`disclosed in Rosener) were all well-known by the Critical Date.” Reply, 10. This is
`
`inconsistent with Cooperstock’s
`
`testimony and contorts
`
`the
`
`testimony of
`
`McAlexander.
`
`Cooperstock could not describe how any of the transducer types listed in
`
`Rosener operates. KOSS-2037, 37-43. If such transducers were well-known,
`
`Cooperstock, whose skills are superior to a POSITA, should be able to explain how
`
`they work. Also, McAlexander did not concede that Rosener’s transducers were
`
`“well-known,” but explained that his opinion was based on his personal
`
`“[k]nowledge of working with acoustics and these types of transducers,” APPLE-
`
`1025, 193:18-19, and that there “was [publicly available] information about those
`
`three types [of transducers].” Id., 194:6-7. Petitioner never asked McAlexander
`
`whether the transducer types were well-known. Moreover, McAlexander is a
`
`registered Professional Engineer with over forty-nine years of professional
`
`experience and founded a company that actively consults in speaker design and
`
`control. KOSS-2038, ¶¶1-5; APPLE-1025; 55:4-7. McAlexander’s expert
`
`knowledge and awareness of publicly available information is not evidence that
`
`these transducers were “well-known.” Hybritech Inc. v. Abbott Labs., 4 U.S.P.Q.2d
`
`- 8 -
`
`

`

`
`1001, 1008–09 (C.D. Cal. 1987) (distinguishing those of ordinary skill from
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`Case IPR2021-00381
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`“persons of superior skill, intellect and insight”).
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`B.
`Flexible Circuit Board
`The Petition contended that the speaker in the Rosener-Hankey (-Dyer)
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`combination would be contained in the “top part of the earphone” and would be
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`connected to the other components of the earphone by “a flexible electrical
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`connector” as taught by Hankey. APPLE-1003, ¶47; Pet., 26-27. Yet Cooperstock
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`could not identify a suitable material for the flexible electrical connector in the
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`proposed combination (KOSS-2037, 67:1-68:4), further demonstrating that a
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`POSITA would not have a reasonable expectation of achieving the combination.
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`Petitioner cited the testimony from Cooperstock’s Supplemental Declaration
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`to remediate Cooperstock’s lack of knowledge on this point. However, the cited
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`testimony only confirms that a POSITA would not have a reasonable expectation of
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`success:
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`An engineer interested in seeking to implement Rosener
`and Hankey earphones would have available many
`reference[s] to describe the embodiments disclosed in
`those references, for example, by going through user
`manuals of well-known transceivers, studying about and
`experimenting with
`the alternative
`techniques
`that
`Rosener disclosed, and (if needed) learning about details
`of flexible circuit board that were available in the market.
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`APPLE-1024, ¶13 (emphasis added). This testimony is limited to an “engineer,” but
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`a POSITA need not be an engineer; the POSITA could be a computer scientist.
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`Paper 15 at 33. Furthermore, Cooperstock admitted that even an engineer might not
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`possess the relevant skills, but must instead be “interested” enough to go through
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`manuals, study, experiment, and learn about flexible circuit boards. This highlights
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`the POSITA’s lack of understanding of individual components disclosed in the cited
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`references and casts doubt on a POSITA’s ability to condense Rosener’s components
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`into Hankey’s compact form.
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`Arguing that “a POSITA would have had a reasonable expectation of success
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`in using circuit boards in combining Rosener and Hankey,” Reply at 12, Petitioner
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`minimized the complexity of circuit board design to the successful selection of a
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`suitable material for a flexible circuit board. Cooperstock merely provided the
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`conclusory assurance that “given the prevalence of materials used for flexible
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`electrical connectors, a POSITA would have understood that a circuit board can be
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`utilized and implemented into a system.” APPLE-1024, ¶21. This rationale ignores
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`a number of complex, technical considerations that would be required to condense
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`the components of Rosener into Hankey’s compact form factor beyond the selection
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`of a suitable circuit board material, including mechanical integrity and EMI
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`mitigation. KOSS-2038, ¶48. The mere selection of an appropriate material for the
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`circuit board does not prove that a POSITA, without experience designing
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`headphones, would have had a reasonable expectation of success combining Rosener
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`and Hankey.
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`C. A/D Converter and Buffer
`Cooperstock provided an unorthodox explanation of how Rosener’s A/D
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`converter and a buffer coordinate to address latencies in audio streams to
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`independently wireless earphones, which explanation differed from McAlexander’s
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`explanation and Rosener’s teachings. POR, 16-18 (citing KOSS-2038, ¶¶54-55).
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`The Reply attempted to explain this away by arguing that a POSITA would have a
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`reasonable expectation of success with Rosener’s second technique, involving the
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`modulation of sub-carrier signals. Reply 10 (citing APPLE-1004, ¶[0040]); APPLE-
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`1024, ¶¶16-17. However, Cooperstock could not explain this technique either. He
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`could not explain what an analog sub-carrier signal is or how carrier signal
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`modulation works. KOSS-2037, 55-57; see also Section II, supra. If Cooperstock
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`cannot explain Rosener’s sub-carrier signal modulation technique, it is logical to
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`conclude that a POSITA would not have a reasonable expectation of success
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`implementing Rosener’s sub-carrier signal modulation, especially a POSITA with a
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`computer science background.
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`D. Rosener’s Data Source
`Petitioner charged Patent Owner with “inject[ing] ambiguity into Rosener’s
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`disclosure of data source 922” (Reply at 11) even though it was Cooperstock that
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`gave inconsistent testimony Rosener’s data source (which inconsistent testimony is
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`itself evidence of Rosener’s ambiguity). Cooperstock initially testified that data
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`source 922 is the same as data source 618. KOSS-2037, 102:21-103:12. Data source
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`618, however, is the source of data transmitted to Rosener’s earphones, not a
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`microphone in the earphone. APPLE-1004, ¶¶[0033]-[0034]; Fig. 6. In hindsight,
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`Cooperstock stated this his initial testimony was a mistake and that the data source
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`922 can be a microphone in an earphone, insisting that Rosener’s disclosure is
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`“clear,” in spite of his mistake. APPLE-1024, ¶¶18-19.
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`Cooperstock’s revised testimony, however, is conclusory and unsupported by
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`Rosener because it relied on his first declaration as the only evidence that Rosener’s
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`data source 922 is a microphone. APPLE-1024, ¶18 (citing APPLE-1003, ¶120).
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`Paragraph 120 of Cooperstock’s original declaration (APPLE-1003) does not
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`explain why a POSITA would interpret data source 922 as a microphone beyond the
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`bald assertion that they would. In fact, Rosener never classified data source 922 as
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`a microphone. KOSS-2038, ¶66. The only microphone identified by Rosener by a
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`reference number is data source 1312 in Figure 13 (APPLE-1004, ¶[0056]) and a
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`POSITA would not conclude that data source 1312 is a microphone in each
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`earphone. KOSS-2038, ¶65.
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`Petitioner also accused Patent Owner of “ignor[ing] express language in
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`Rosener’s paragraph [0056].” Reply, 13. This is false. The POR included extensive
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`quotes from ¶[0056] and explained in detail, over three pages, why ¶[0056] does not
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`teach that each of Rosener’s earphones includes a microphone. POR, 22-25 (citing
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`KOSS-2038, ¶¶64-65). At best, Rosener is ambiguous regarding the physical
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`orientation of microphones and data sources 618, 922, as evidenced by
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`Cooperstock’s conflicting testimonies and the reasonable disagreement between the
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`witnesses. Unlike Cooperstock, McAlexander provided a detailed, reasoned, and
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`consistent analysis of Rosener’s ¶[0056], about which Petitioner did not question
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`McAlexander in his deposition. APPLE-1025, 238:19-239:6. This shows that
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`McAlexander’s testimony is more compelling, uncontested, and should be given
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`deference. See e.g., Chums, Inc. v. Cablz, Inc., IPR2014-01240, Paper 43 at 26
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`(PTAB Feb. 8, 2016) (failing to question a witness undermines contrary positions
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`regarding the obviousness of a claim).
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`IV. MR. BLAIR IS AN EXPERIENCED HEADPHONE DESIGNER
`WHOSE TESTIMONY DESERVES GREAT WEIGHT
`To the extent that the Board needs to address the “Dyer grounds” (Grounds
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`1(A)(i)-1(F)(i)), the Board should find that Petitioner failed to show that the
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`Challenged Claims would have been obvious under the Dyer grounds for two
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`reasons.
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`Patent Owner’s arguments and evidence for the non-Dyer grounds (Grounds
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`1(A)-1(F)) apply equally to the Dyer-grounds. POR, 12-33, 40-65. Additionally,
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`on the merits of the proposed Rosener-Hankey-Dyer combination for Ground
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`1(A)(i), Blair’s testimony (KOSS-2039, ¶¶7-20) is more compelling than
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`Cooperstock’s. Blair has significant experience designing headphones, including
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`having designed “all types of earphones, including earbuds, in-ear, on-ear, and over-
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`ear earphones.” Id., ¶4. On the other hand, Cooperstock designed only a single pair
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`of wired headphones in the 1970’s. KOSS-2047, 6:19-7:10. Contrary to Petitioner’s
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`assertion (Reply, 15), there is no basis to disregard Blair’s testimony merely because
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`he is an interested declarant. Praxair Tech., Inc. v. Entegris, Inc., IPR2016-01845,
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`Paper 20, 67-69 (PTAB Mar. 29, 2018) (witness testimony cannot be disregarded
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`for sole reason that witness has direct interest).
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`Additionally, Blair’s testimony is neither conclusory nor unsubstantiated.
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`Blair provided a thorough analysis, explaining how “Cooperstock’s Rosener-
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`Hankey-Dyer canalphone would not stay in a user’s ear,” and including an
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`explanation how the canalphone would generate torques that would “likely dislodge
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`the canalphone from the user’s ear.” KOSS-2039, ¶17-20.
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`Thus, Petitioner’s criticisms of Blair’s testimony are unpersuasive.
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`V. THE REPLY FAILS TO ESTABLISH THAT CERTAIN
`DEPENDENT CLAIMS WOULD HAVE BEEN OBVIOUS
`Petitioner also failed to show that dependent claims 4, 14-15 and 19-20 would
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`have been obvious.
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`A. Claim 4
`According to claim 4, the first earphone, “upon activation of a user contro