`
`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’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2021-00381
`Patent Owner Preliminary Response
`
`TABLE OF CONTENTS
`
`C.
`
`D.
`
`INTRODUCTION ........................................................................................... 1
`I.
`BACKGROUND ............................................................................................. 3
`II.
`III. THE BOARD SHOULD DENY INSTITUTION BECAUSE OF CO-
`PENDING LITIGATION INVOLVING THE ’982 PATENT ....................... 3
`A.
`Factor 1: The District Court Has Not Issued a Stay ............................. 5
`B.
`Factor 2: Proximity of the Scheduled Trial Date to the Board’s
`Statutory Deadline for Written Decision ............................................... 6
`Factor 3: The Parties and Court Will Have Invested Substantial
`Resources in the Texas Litigation Prior to the Institution Decision ... 10
`Factor 4: The Issues Raised in the Petition Overlap Substantially with
`Issues Raised in the Texas Litigation .................................................. 12
`Factor 5: Petitioner is a Defendant in the Texas Litigation ............... 16
`Factor 6: Other Considerations That Influence the Board’s Exercise
`of Discretion Weigh in Favor of Denying Institution ......................... 17
`Summary ............................................................................................. 20
`G.
`IV. THE BOARD SHOULD DENY INSTITUTION BECAUSE THE
`PETITION PRESENTS SUBSTANTIALLY THE SAME ART
`PREVIOUSLY CONSIDERED BY THE OFFICE AND HAS NOT
`DEMONSTRATED A MATERIAL ERROR BY THE OFFICE ................ 21
`A.
`Petitioner Relies on Substantially the Same Art Overcome During
`Examination ......................................................................................... 25
`1.
`Becton, Dickinson Factor (a): The Asserted Art and Prior Art
`Evaluated during Examination are Highly Similar and The
`Differences Show the Evaluated Prior Art is More Relevant ... 26
`Becton, Dickinson Factor (b): The Relied Upon Teachings in
`Hankey Are Cumulative Of Teachings in Johnson and
`
`E.
`F.
`
`2.
`
`i
`
`
`
`
`
`V.
`
`
`IPR2021-00381
`Patent Owner Preliminary Response
`
`3.
`
`4.
`
`B.
`
`Glezerman and the Relied Upon Teachings in Dyer Are
`Cumulative Of Teachings in Rosener and Johnson .................. 33
`Becton, Dickinson Factor (d): The Manner in Which Petitioner
`Relies on the Prior Art Overlaps with the Examiner’s
`Assessment of the Closest Prior Art, Rosener and Johnson ..... 35
`The Other Relied-Upon References Do Not Cure the
`Deficiencies of Rosener, Hankey and Dyer With Respect to
`Claim 1 ...................................................................................... 36
`Petitioner Fails to Make a Showing of Material Error by the
`Examiner ............................................................................................. 38
`1.
`Becton, Dickinson Factor (c) – Rosener and Johnson Were
`Comprehensively Evaluated During Examination ................... 38
`Becton, Dickinson Factor (e) – Petitioner Has Not Sufficiently
`Pointed Out How the Examiner Erred In His Evaluation of the
`Asserted Prior Art ..................................................................... 40
`Becton, Dickinson Factor (f) – Petitioner Does Not Present
`Additional Evidence or Facts To Warrant Reconsideration Of
`The Rosener-Johnson Combination Already Considered And
`Rejected by the Examiner ......................................................... 43
`CONCLUSION .............................................................................................. 44
`
`2.
`
`3.
`
`ii
`
`
`
`
`
`IPR2021-00381
`Patent Owner Preliminary Response
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Advanced Bionics, LLC v. MED-EL Elektromedizinische Geraete
`GmbH,
`IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) .........................................passim
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (PTAB March 20, 2020) ...................................passim
`Apple Inc. v. Immersion Corp.,
`IPR2016-01371, Paper 7 (PTAB Jan. 11, 2017) ................................................ 19
`Aquestive Therapeutics, Inc. v. Neurelis, Inc.,
`IPR2019-00450, Paper 8 (PTAB Aug. 1, 2019) ........................................... 42, 44
`Becton, Dickinson & Co. v. B. Braun Melsungen AG,
`IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) ........................................passim
`Biofrontera Inc. v. DUSA Pharms., Inc.,
`IPR2018-01585, Paper 10 (PTAB Feb. 26, 2019) .............................................. 20
`Cellco P’ship v. Huawei Tech. Co.,
`IPR2020-01356, Paper 13 (PTAB Mar. 5, 2021) ............................................... 15
`Cisco Sys., Inc v. Monarch Networking Sols. LLC,
`IPR2020-01227, Paper 11 (PTAB Mar. 4, 2021) ........................................... 9, 16
`
`Cisco Sys., Inc. v. Ramot at Tel Aviv Univ. Ltd.
`IPR2020-00122, Paper 15 (PTAB May 15, 2020) ……………………………17
`
`
`DaVita Inc. v. Virginia Mason Memorial Hospital,
`981 F.3d 679 (9th Cir. 2020) .............................................................................. 41
`
`Glaxosmithkline Consumer Healthcare Holdings (US) LLC v. Cipla
`Ltd.,
`IPR2020-00369, Paper 7 (PTAB July 31, 2020) ................................................ 25
`
`iii
`
`
`
`
`
`IPR2021-00381
`Patent Owner Preliminary Response
`
`Google LLC v. Personalized Media Commc’ns, LLC,
`IPR2020-00724, Paper 19 (PTAB Aug. 31, 2020) ............................................... 5
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ................................................................................................ 14
`Harmonic Inc. v. Avid Tech.,
`815 F.3d 1356 (Fed. Cir. 2016) ............................................................................ 3
`Intel Corp. v. VLSI Tech. LLC,
`IPR2019-01192, Paper 15 (PTAB Jan. 9, 2020) .................................................. 4
`KeyMe, LLC v. Hillman Grp., Inc.,
`IPR2020-01028, Paper 12 (PTAB Jan. 13, 2021) .............................................. 15
`MediaTek Inc. v. Nippon Tel. and Tel. Corp.,
`IPR2020-01607, Paper 12 (PTAB April 2, 2021) ................................................ 5
`Micron Tech., Inc. v. Godo Kaisha IP Bridge 1,
`IPR2020-01008, Paper 10 (PTAB Dec. 7, 2020) ................................................. 7
`In re Mouttet,
`686 F.3d 1322 (Fed. Cir. 2012) .......................................................................... 14
`NHK Spring Co. v. Intri-Plex Techs., Inc.,
`IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) ................................................. 1
`Robert Bosch Tool Corp. v. SD3, LLC,
`IPR2016-01754, Paper 15 (PTAB Mar. 22, 2017) ............................................. 37
`Samsung Elecs. Co., Ltd. v. Ancora Techs., Inc.,
`IPR2020-01184, Paper 11 (PTAB Jan. 5, 2021) .........................................passim
`Sand Revolution v. Cont’l Intermodal Grp.-Trucking LLC,
`IPR2019-01393, Paper 24 (PTAB June 16, 2020) ..................................... 5, 7, 17
`SAS Inst., Inc. v. Iancu,
`138 S. Ct. 1348 (2018) ........................................................................................ 20
`SK hynix v. Netlist,
`IPR2020-01421, Paper 10 (Mar. 16, 2021) ........................................................ 11
`
`iv
`
`
`
`
`
`IPR2021-00381
`Patent Owner Preliminary Response
`
`Sony Interactive Ent. LLC v. Terminal Reality, Inc.,
`IPR2020-00710, Paper 15 (PTAB Oct. 13, 2020) .............................................. 34
`Sotera Wireless, Inc. v. Masimo Corp.,
`IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) ............................................... 15
`Verizon Bus. Network Servs. LLC v. Huawei Techs. Co.,
`IPR2020-01292, Paper 13 (PTAB Jan. 25, 2021) ........................................ 11, 17
`Verizon Bus. Network Svs., LLC v. Huawei Tech. Co.,
`IPR2020-01278, Paper 12 (PTAB Jan. 26, 2021) .............................................. 16
`Statutes
`35 U.S.C. § 314 .................................................................................................passim
`35 U.S.C. § 315(e)(2) ............................................................................................... 16
`35 U.S.C. § 316(b) ..................................................................................................... 4
`35 U.S.C. § 325(d) ............................................................................................passim
`Other Authorities
`37 C.F.R. § 42.104(b)(4) .......................................................................................... 19
`37 C.F.R. § 42.107(a) ................................................................................................. 1
`37 C.F.R. § 42.108(c) ................................................................................................. 4
`
`
`
`v
`
`
`
`
`
`IPR2021-00381
`Patent Owner Preliminary Response
`
`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
`
`vi
`
`
`
`
`
`IPR2021-00381
`Patent Owner Preliminary Response
`
`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
`
`vii
`
`
`
`
`
`IPR2021-00381
`Patent Owner Preliminary Response
`
`Exhibit
`KOSS-2021 U.S. Patent 8,655,420 B2
`
`Description
`
`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/)
`
`viii
`
`
`
`IPR2021-00381
`Patent Owner Preliminary Response
`
`Description
`Exhibit
`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)
`
`
`
`
`
`
`
`ix
`
`
`
`
`I.
`
`INTRODUCTION
`
`Case IPR2021-00381
`Patent Owner’s Preliminary Response
`
`Patent Owner, Koss Corporation (“Koss”), submits this Patent Owner
`
`Preliminary Response (“POPR”) pursuant to 37 C.F.R. § 42.107(a) to the Inter
`
`Partes Review (“IPR”) petition (“Petition”) filed by Apple Inc. (“Petitioner”) for
`
`claims 1-5 and 14-20 (“Challenged Claims”) of U.S. Patent 10,491,982 (“’982
`
`Patent,” APPLE-1001).
`
`The Board should deny institution for several reasons.
`
`First, institution of the IPR would demand an untimely and inefficient
`
`proceeding that would effectively “second guess” the result of a jury trial in
`
`concurrent litigation. See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-
`
`00752, Paper 8 at 11–21 (PTAB Sept. 12, 2018) (Precedential); Apple Inc. v. Fintiv,
`
`Inc., IPR2020-00019, Paper 11 at 2–3 (PTAB March 20, 2020) (Precedential). The
`
`’982 Patent is being asserted against Petitioner in co-pending litigation in the
`
`Western District of Texas, Koss Corp. v. Apple Inc., Case No. 6:20-cv-00665-ADA
`
`(“Texas Litigation”). The trial in the Texas Litigation is scheduled to commence in
`
`April 2022 (APPLE-1016, 4), approximately three months before the Final Written
`
`Decision (“FWD”) if the IPR is instituted. The Board should exercise its discretion
`
`under 35 U.S.C. § 314(a) to deny institution in the interests of efficiency and
`
`fairness.
`
`
`- 1 -
`
`
`
`
`
`Case IPR2021-00381
`Patent Owner’s Preliminary Response
`
`Second, the Board should deny institution under 35 U.S.C. § 325(d). The
`
`Office previously considered—and rejected—Petitioner’s arguments with respect to
`
`substantially the same art that was presented to the Office during the original
`
`examination of the ’982 Patent. Though the Petitioner adds an additional reference
`
`(Hankey, APPLE-1005) in combination with Rosener (APPLE-1004), which was
`
`explicitly considered in the original examination of the ’982 Patent, or, alternatively,
`
`Hankey and Dyer (APPLE-1006) in combination with Rosener, the teachings relied
`
`upon in Hankey and Dyer are cumulative of information already considered by the
`
`Office. In short, the Office already considered and rejected an obviousness
`
`determination based on substantially the same prior art teachings and combinations.
`
`To that end, the Petition fails to demonstrate that the Office committed a
`
`material error. In fact, Petitioner’s attempt to find a material error in the Office’s
`
`analysis relies on a logically flawed contortion of the examiner’s statements
`
`regarding the teachings in Rosener and another reference considered in the original
`
`examination, Pub. 2008/0298606 to Johnson et al. (KOSS-2023 (“Johnson”)), which
`
`is cumulative of Hankey and Dyer. Aside from these mischaracterizations, the
`
`Petitioner has not pointed to any material errors in the Office’s analysis.
`
`Accordingly, the Board should defer to the Office’s earlier rejection of substantially
`
`the same arguments based on substantially the same prior art teachings and exercise
`
`
`- 2 -
`
`
`
`
`its discretion under § 325(d) to deny institution.
`
`Case IPR2021-00381
`Patent Owner’s Preliminary Response
`
`These reasons are independent and the Board can deny institution for either
`
`of these reasons.
`
`II. BACKGROUND
`
`The ’982 Patent includes twenty (20) claims, of which claim 1 is the sole
`
`independent claim. Claim 1 is directed to a system that comprises headphones and
`
`a mobile, digital audio player, which in turn comprises a wireless transceiver for
`
`transmitting digital audio content to the headphones wirelessly.
`
`The Petition challenges twelve claims—claims 1–5 and 14–20—under twelve
`
`total grounds, namely Grounds 1(A)–1(F) and Grounds 1(A)(i)–1(F)(i). Pet. at 1-2.
`
`The Petition asserts Ground 1(A) and, alternatively, Ground 1(A)(i) for independent
`
`claim 1, which is that claim 1 allegedly would have been obvious over the
`
`combination Rosener and Hankey (Ground 1(A)) or, alternatively, the combination
`
`Rosener, Hankey, and Dyer (Ground 1(A)(i)).
`
`III. THE BOARD SHOULD DENY INSTITUTION BECAUSE OF CO-
`PENDING LITIGATION INVOLVING THE ’982 PATENT
`The Board “is permitted, but never compelled, to institute an IPR proceeding.”
`
`Harmonic Inc. v. Avid Tech., 815 F.3d 1356, 1367 (Fed. Cir. 2016). The discretion
`
`to deny institution is statutorily delegated to the Board and memorialized in the Code
`
`of Federal Regulations. 35 U.S.C. § 314(b) (“Director shall determine whether to
`
`
`- 3 -
`
`
`
`
`institute an inter partes review ….”); 37 C.F.R. § 42.108(c) (“Inter partes review
`
`Case IPR2021-00381
`Patent Owner’s Preliminary Response
`
`shall not be instituted unless the Board decides that the information presented in the
`
`petition demonstrates that there is a reasonable likelihood that at least one of the
`
`claims challenged in the petition is unpatentable.”). The Board may apply this
`
`discretion in consideration of “the integrity of the patent system, [and] the efficient
`
`administration of the Office ….” 35 U.S.C. § 316(b). The Board has denied
`
`institution “to minimize the duplication of work by two tribunals to resolve the same
`
`issue.” Intel Corp. v. VLSI Tech. LLC, IPR2019-01192, Paper 15 at 11 (PTAB Jan.
`
`9, 2020).
`
`In Fintiv, the Board outlined six factors that inform its decision “to deny
`
`institution in view of an earlier trial date in [a] parallel proceeding.” IPR2020-
`
`00019, Paper 11 at 6. The Board weighs and considers the holistic effect of each of
`
`the following factors: (1) whether the court granted a stay or evidence exists that one
`
`may be granted if a proceeding is instituted; (2) proximity of the court’s trial date to
`
`the Board’s projected statutory deadline for a final written decision; (3) investment
`
`in the parallel proceeding by the court and the parties; (4) overlap between issues
`
`raised in the petition and in the parallel proceeding; (5) whether the petitioner and
`
`the defendant in the parallel proceeding are the same party; and (6) other
`
`
`- 4 -
`
`
`
`
`circumstances that impact the Board’s exercise of discretion, including the merits
`
`Case IPR2021-00381
`Patent Owner’s Preliminary Response
`
`(collectively, “Fintiv factors”). Id. at 5–15.
`
`The Fintiv factors collectively justify denial of the Petition because the ’982
`
`Patent is being asserted presently against Petitioner in the Texas Litigation. Denying
`
`institution of the IPR is consistent with recent Board decisions, preserves the
`
`integrity of the patent system, promotes the efficient administration of Office
`
`resources, and minimizes duplicative work by two different tribunals. See id.;
`
`Samsung Elecs. Co., Ltd. v. Ancora Techs., Inc., IPR2020-01184, Paper 11 at 18
`
`(PTAB Jan. 5, 2021); Google LLC v. Personalized Media Commc’ns, LLC,
`
`IPR2020-00724, Paper 19 at 6, 11 (PTAB Aug. 31, 2020).
`
`A.
`Factor 1: The District Court Has Not Issued a Stay
`When a Petitioner represents it will move to stay a district court lawsuit if
`
`institution is granted, Fintiv factor 1 should be viewed as neutral. See Sand
`
`Revolution II, LLC v. Continental Intermodal Grp. Trucking LLC, IPR2019-01393,
`
`Paper 24 at 7 (PTAB June 16, 2020); MediaTek Inc. v. Nippon Tel. and Tel. Corp.,
`
`IPR2020-01607, Paper 12 at 12 (PTAB April 2, 2021) (“Petitioner represents it will
`
`move to stay the District Court Lawsuit if institution is granted but does not know
`
`how the District Court will rule…. Thus, this factor should be viewed as neutral.”).
`
`However, Petitioner has not represented that it will move to stay the Texas Litigation
`
`if institution is granted, instead merely speculating that a stay of the Texas Litigation
`
`- 5 -
`
`
`
`
`would be “appropriate.” Pet. at 10. Absent an affirmative representation to move
`
`Case IPR2021-00381
`Patent Owner’s Preliminary Response
`
`to stay the Texas Litigation, the first Fintiv factor should weigh in favor of denying
`
`institution or, alternatively, should be viewed as merely neutral.
`
`B.
`
`Factor 2: Proximity of the Scheduled Trial Date to the Board’s
`Statutory Deadline for Written Decision
`The institution decision will issue by July 21, 2021. 35 U.S.C. § 314(b)(1).
`
`If instituted, the FWD will issue by July 21, 2022. 35 U.S.C. § 316(a)(11). The trial
`
`in the Texas Litigation, however, is scheduled for April 2022 (APPLE-1016, 4),
`
`which is three months before the FWD if the IPR is instituted. This gap favors
`
`denial. Fintiv, IPR2020-00019, Paper 11 at 9 (“If the court’s trial date is earlier than
`
`the projected statutory deadline [for a FWD], the Board generally has weighed this
`
`fact in favor of exercising authority to deny institution”).
`
`Petitioner, citing Sand Revolution, asserts that a three-month gap between the
`
`trial and the FWD is insufficient to justify denial. Pet. at 10-11. The Board,
`
`however, has not established a bright line rule for the duration of the gap between
`
`the trial and the FWD. Instead, the Board in Sand Revolution found that Fintiv factor
`
`two “marginally” weighed in favor of not exercising its discretion to deny institution
`
`because the litigants had requested, and the district court granted, numerous
`
`extensions to the scheduling order such that the scheduled trial date was “uncertain”:
`
`
`- 6 -
`
`
`
`
`
`Case IPR2021-00381
`Patent Owner’s Preliminary Response
`
`For the reasons above, particularly because of the number of times the
`parties have jointly moved for and the district court agreed to extend
`the scheduling order dates, the inclusion of the qualifier “or as
`available” for each calendared trial date, that the currently scheduled
`trial date is in relatively close proximity to the expected final decision
`in this matter, and the uncertainty that continues to surround the
`scheduled trial date, we find that this factor weighs marginally in favor
`of not exercising discretion to deny institution under 35 U.S.C.
`§ 314(a).
`
`
`Sand Revolution, IPR2019-01393, Paper 24 at 9–10 (emphases added). In other
`
`words, the Board’s decision in Sand Revolution was specific to the factual
`
`circumstances arising from the parallel proceedings, which is consistent with prior
`
`decisions regarding the uncertainty that arises from the proximity of a trial to the
`
`FWD deadline under Fintiv factor two. See Micron Tech., Inc. v. Godo Kaisha IP
`
`Bridge 1, IPR2020-01008, Paper 10 at 13 (PTAB Dec. 7, 2020) (second factor
`
`“looks at the proximity of the trial date of our final written decision to access the
`
`weight to be accorded a trial date set earlier than the expected final written decision
`
`date”).
`
`Contrary to the situation in Sand Revolution, in the Texas Litigation the parties
`
`have not sought, and the district court has not granted, any extensions to the trial
`
`date. KOSS-2001 (docket report from Texas Litigation showing absence of any
`
`motion for extension of trial). Moreover, nothing in the Texas Litigation indicates,
`
`and the Petition fails to raise any evidence, that Judge Albright will deviate from his
`
`
`- 7 -
`
`
`
`
`stated preference that “[a]fter the trial date is set, the Court will not move the trial
`
`Case IPR2021-00381
`Patent Owner’s Preliminary Response
`
`date except in extreme situations.” KOSS-2002, 6.
`
`Petitioner’s reliance on the “McKeown Analysis” (APPLE-1018) to assert
`
`that the trial date in the Texas Litigation might slip, Pet. at 10, is misplaced because
`
`the author of the McKeown Analysis concedes that he is working with a “small data
`
`set” for the Western District of Texas, offers no time domain for his analysis, and
`
`indicates that COVID-19 is at least partially responsible for the delays. APPLE-
`
`1018. The McKeown Analysis also fails to consider the behavior (e.g., motions for
`
`extensions) of the parties in litigation, which motivated the Board in Sand
`
`Revolution. As the Board noted in Samsung, “evidence regarding other cases (e.g.,
`
`Chief Judge Gilstrap’s cases in the Eastern District of Texas or other Judge
`
`Albright’s cases) does not support Petitioner’s position that the [] trial date for the
`
`parallel litigation will be postponed.” IPR2020-01184, Paper 11 at 13 (parenthetical
`
`in original). Finally, the McKeown Analysis identifies a relatively small change to
`
`the average schedule in the Western District of Texas that occurred during the first
`
`two quarters of 2020, which included significant disruptions due to COVID-19.
`
`APPLE-1018, 2. There is no evidence that such delays continue during the
`
`pandemic or that the pandemic will impact the in-place schedule for the Texas
`
`Litigation. Indeed, Judge Albright presently has an active trial schedule, including
`
`
`- 8 -
`
`
`
`
`recently concluded and upcoming patent trials. KOSS-2027 (March 2, 2021,
`
`Case IPR2021-00381
`Patent Owner’s Preliminary Response
`
`reporting jury verdict for trial presided over by Judge Albright); KOSS-2030 (April
`
`9, 2021 reporting jury verdict in another trial presided over by Judge Albright);
`
`KOSS-2028 (April 14, 2021, reporting testimony in yet another trial presided over
`
`by Judge Albright); KOSS-2029, 1 (April 20, 2021 trial in VLSI Tech. LLC v. Intel
`
`Corp.); 89 (May 17, 2021 trial in CloudofChange, LLC v. NCR Corp.); 143 (June 7,
`
`2021 trial in VLSI Tech. LLC v. Intel Corp.).
`
`Nevertheless, the Petition asserts that “[t]he current trial date is particularly
`
`uncertain since Apple has moved to transfer the case to another venue.” Pet. at 11.
`
`However, the Board has historically declined to speculate under Fintiv factor two as
`
`to whether the district court will grant such a motion. See Cisco Sys., Inc. v. Monarch
`
`Networking Sols. LLC, No. IPR2020-01227, Paper 11 at 10 (PTAB Mar. 4, 2021).
`
`Thus, the mere fact that Petitioner filed a motion to transfer the Texas Litigation
`
`does not render the trial date “particularly uncertain,” as asserted by Petitioner. Pet.
`
`at 11.
`
`Additionally, the delay, if any, to the trial date in the Texas Litigation due to
`
`the COVID-19 pandemic is speculative at this time. By the time of the trial in the
`
`Texas Litigation in April 2022, the pandemic is likely to have abated. KOSS-2003
`
`(reporting increased vaccinations in U.S. in spring 2021); KOSS-2004 (quoting Dr.
`
`
`- 9 -
`
`
`
`
`Fauci as saying “things are going to get better as we get from February into March,
`
`Case IPR2021-00381
`Patent Owner’s Preliminary Response
`
`into April, because the number of vaccine doses that will be available will increase
`
`substantially”); KOSS-2005 (“President Joe Biden said 90% of adults in the U.S.
`
`will be eligible for Covid-19 shots by April 19 and will be able to get them within
`
`five miles of their home under an expanded vaccination plan ….”).
`
`Accordingly, the second Fintiv factor weighs in favor of denying institution.
`
`C.
`
`Factor 3: The Parties and Court Will Have Invested Substantial
`Resources in the Texas Litigation Prior to the Institution Decision
`“[D]istrict court claim construction orders may indicate that the court and
`
`parties have invested sufficient time in the parallel proceeding to favor denial.”
`
`Fintiv, IPR2020-00019, Paper 11 at 9–10. The Fintiv analysis also considers “the
`
`amount and type of [all] work already completed” to determine whether “the parallel
`
`proceeding is more advanced ... and instituting would lead to duplicative costs.” Id.
`
`at 9–10.
`
`In the Texas Litigation, the Markman is scheduled for April 23, 2021
`
`(APPLE-1016, 3; KOSS-2006; KOSS-2029, 43), two days after the filing of this
`
`POPR and three months before the institution decision deadline. Leading up to the
`
`hearing, the parties have already: prepared and exchanged their respective
`
`infringement and invalidity contentions; fully completed claim construction
`
`briefing; submitted a Joint Claim Construction Statement; and submitted technical
`
`
`- 10 -
`
`
`
`
`tutorials. APPLE-1016, 2-3. Further, the workload is only going to increase after
`
`Case IPR2021-00381
`Patent Owner’s Preliminary Response
`
`the Markman hearing. See e.g., SK hynix v. Netlist, IPR2020-01421, Paper 10 at 9-
`
`10 (PTAB Mar. 16, 2021) (“most of the work in a patent case occurs after the
`
`Markman hearing.”). Fact discovery will have been open for three months by the
`
`institution decision deadline and the parties’ final contentions are due more than one
`
`month before the institution decision deadline. APPLE-1016, 3.
`
`Petitioner’s assertion that “[b]y any objective standard, [it] filed [its] petition
`
`at a very early stage of the litigation,” Pet. at 12, overlooks that the timeliness of the
`
`Petition is not determinative under Fintiv factor three. The determinative factor is
`
`the investment of the parties in the Texas Litigation. See Verizon Bus. Network
`
`Servs. LLC v. Huawei Techs. Co., IPR2020-01292, Paper 13 at 14-15 (PTAB Jan.
`
`25, 2021) (“[W]e credit Petitioner’s diligence in filing the Petition in this case.
`
`Nonetheless, given the investment of the parties and the court in the Parallel
`
`Proceeding by the time of the institution decision in this proceeding, we determine
`
`this factor weighs in favor of exercising discretion to deny institution.”). Here, the
`
`parties’ investment in the Texas Litigation is substantial as outlined above. The
`
`Board has found that similar substantial litigation investment weighed strongly in
`
`favor of the patent owner. Id. at 14.
`
`Accordingly, the third Fintiv factor weighs in favor of denying institution.
`
`
`- 11 -
`
`
`
`
`
`Case IPR2021-00381
`Patent Owner’s Preliminary Response
`
`D.
`
`Factor 4: The Issues Raised in the Petition Overlap Substantially
`with Issues Raised in the Texas Litigation
`Each of the Challenged Claims is presently asserted in the Texas Litigation.
`
`Accordingly, Petitioner is requesting the Board to perform duplicative work to what
`
`is currently expected of the district court in the Texas Litigation. Although the
`
`Scheduling Order specifies deadlines for the litigants to “discuss significantly
`
`narrowing the number of claims asserted and prior art references at issue” (APPLE-
`
`1016, 3–4), both parties must agree to such narrowing and the court may be required
`
`to resolve the disputed issues. The deadline for the second “meet and confer” on
`
`narrowing is January 20, 2022. Id. Even if the claims for trial in the Texas Litigation
`
`are narrowed, the mere existence of non-overlapping claims does not support an
`
`assertion that there will be no overlap between issues raised in this Petition and the
`
`related litigation. See Samsung, IPR2020-01184, Paper 11 at 20.
`
`Additionally, there is significant overlap between the references that
`
`Petitioner expects both the Board and the district court to evaluate. Ground 1(A) of
`
`the Petition is that claims 1, 2 and 18-20 would have been obvious over Rosener and
`
`Hankey. Pet. at 1. Eleven days after it filed the Petition, Petitioner served its
`
`invalidity contentions (KOSS-2007) in the Texas Litigation, which include Ground
`
`1(A) exactly. The invalidity contentions include that the Challenged Claims are;
`
`
`- 12 -
`
`
`
`
`
`Case IPR2021-00381
`Patent Owner’s Preliminary Response
`
` “obvious over Rosener itself” and “obvious over Rosener in view of
`
`one or more” references listed in an appendix to the contentions
`
`(KOSS-2008); and
`
` “obvious over Hankey itself” and “obvious over Hankey in view of one
`
`or more references” listed in t
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
