`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`KOSS CORPORATION,
`Patent Owner.
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2021-00381
`Patent 10,491,982
`
`
`
`
`
`
`
`
`
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S PRELIMINARY
`RESPONSE
`
`
`
`Case IPR2021-00381
`Attorney Docket No: 50095-0019IP1
`In its POPR (Paper 10), Koss argues that factor 4 of the Fintiv framework
`
`“weighs in favor of denying institution” based on an alleged potential overlap of
`
`issues because “[e]ach of the Challenged Claims is presently asserted in the Texas
`
`Litigation.” Paper 10, 12-16. However, Fintiv explains that Factor 4 addresses
`
`whether “the petition includes the same or substantially the same claims, grounds,
`
`arguments, and evidence as presented in the parallel proceeding.” IPR2020-00019,
`
`Paper 11 at 12. Each of these elements either differs between the concurrent
`
`proceedings or any overlap is unascertainable until well after institution.
`
`First, there is no overlap of grounds. Apple has stipulated that, unless the
`
`Board denies or later vacates institution of this petition, Petitioner will not seek
`
`resolution in the district court invalidity based on any ground “that utilizes, as a
`
`primary reference, US Patent Application Publication No. 2008/0076489
`
`(“Rosener”), which is the primary reference in the grounds asserted in” this IPR.
`
`KOSS-2022, 1. As grounds will differ, so too will arguments and evidence. Second,
`
`the parties will not decide on the claims that will be at issue in the district court trial
`
`until well after institution. Paper 10, 12. Thus, factor 4 supports institution.
`
`Koss challenges Apple’s stipulation as not broad enough to preclude overlap.
`
`Paper 6, 16-17. Whether or not it includes “all permutations of the asserted prior
`
`art,” the stipulation sufficiently “reduces the risks posed by the overlap between the
`
`proceedings,” such that factor 4 of Fintiv “weighs against the exercise of discretion
`
`1
`
`
`
`Case IPR2021-00381
`Attorney Docket No: 50095-0019IP1
`to deny review.” IPR2020-01113, Paper 12, 15-19. As endorsed by the Board in
`
`Tide, the district court is fully capable of interpreting and enforcing the stipulation,
`
`as the meaning of “primary reference” is case-specific, and in this context, it is clear
`
`Rosener may not be used in the same way as used in the underlying IPR petition.
`
`IPR2020-00019, Paper 11; see In re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012).
`
`Further, even assuming such speculative future efforts in the district court are
`
`relevant at all, the efforts of the parties in parallel proceedings are not relevant to
`
`factor 4. IPR2020-01602, Paper 9 at 13-14 (PTAB Apr. 2, 2021).
`
`Koss argues that because a petitioner in a different IPR proceeding issued a
`
`broader stipulation, Apple should do so here. But, such a one-size-fits-all rule is
`
`counter to Fintiv’s guidance. When evaluating the Fintiv factors, “the Board takes
`
`a holistic view of whether efficiency and integrity of the system are best served by
`
`denying or instituting review,” and, “[i]n many cases, weighing the degree of overlap
`
`is highly fact dependent.” IPR2020-00019, Paper 11, 6, 13. There are numerous
`
`cases where the Board has rightly found that stipulations of equal or narrower
`
`breadth weigh against discretionary denial. See, e.g., IPR2019-01393, Paper 24, 11-
`
`12; IPR2020-01113, Paper 12, 15-19; IPR2020-01208, Paper 13, 18; IPR2020-
`
`01428, Paper 10, 12. And where the Board has held otherwise, there were other
`
`mitigating facts, such as a much sooner and more certain trial date. See, e.g.,
`
`IPR2020-00870, Paper 16, 9-18; IPR2020-01317, Paper 15, 11-24. A similarly
`
`holistic analysis of the present facts weighs against discretionary denial.
`
`2
`
`
`
`
`
`
`
`May 7, 2021
`
`
`
`
`
`
`
`Date:
`
`
`
`
`
`
`
`
`
`Case IPR2021-00381
`Attorney Docket No: 50095-0019IP1
`
`Respectfully submitted,
`
`
`
`/W. Karl Renner/
`
`W. Karl Renner, Reg. No. 41,265
`Roberto Devoto, Reg. No. 55,108
`Ryan Chowdhury, Reg. No. 74,466
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
`
`
`
`
`
`
`
`
`Case IPR2021-00381
`Attorney Docket No: 50095-0019IP1
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR § 42.6(e), the undersigned certifies that on May 7, 2021,
`
`a complete and entire copy of this Petitioner’s Reply to Patent Owner’s
`
`Preliminary Response was provided via email, to the Patent Owner by serving the
`
`correspondence addresses of record as follows:
`
`
`
`
`
`
`
`
`
`Mark G. Knedeisen
`Laurén Shuttleworth Murray
`Brian P. Bozzo
`K&L GATES LLP
`K&L Gates Center, 210 Sixth Avenue
`Pittsburgh, PA 15222
`
`Email: mark.knedeisen@klgates.com
`Email: lauren.murray@klgates.com
`Email: brian.bozzo@klgates.com
`
`
`
`
`
`
`
`/Edward G. Faeth/
`Edward G. Faeth
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(202) 626-6420
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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
