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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner,
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`v.
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`KOSS CORPORATION,
`Patent Owner.
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`_____________________
`CASE: IPR2021-00381
`U.S. PATENT NO. 10,491,982
`_____________________
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`PATENT OWNER’S SUR-REPLY IN SUPPORT OF
`PRELIMINARY RESPONSE
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`IPR2021-00381
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`Petitioner’s stipulation states that it “will not seek resolution within the
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`litigation of any ground of invalidity that utilizes, as a primary reference, Rosener
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`….” KOSS-2028, 1. Despite the stipulation, Fintiv factor 4 weighs in favor of
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`denying institution. At a minimum, factor 4 only “marginally” favors Petitioner.
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`Petitioner asserts “there is no overlap of grounds” because of its stipulation.
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`Paper 11, 1. The stipulation, however, is illusory because it applies only when
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`Petitioner uses Rosener as a “primary reference”
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`in
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`the district court.
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`“[C]haracterization . . . of prior art as ‘primary’ and ‘secondary’ is merely a matter
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`of presentation with no legal significance.” In re Mouttet, 686 F.3d 1322, 1333 (Fed.
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`Cir. 2012).
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`According to Petitioner, its stipulation makes it “clear [that] Rosener may not
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`be used in the same way as used in the underlying IPR petition.” Paper 11, 2. That
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`is, however, significantly different from what the stipulation actually states. See
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`KOSS-2022, 1. The stipulation, in actuality, offers no such clarity, as evidenced by
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`Petitioner’s additional argument that: “[a]s endorsed by the Board in Tide, the
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`district court is fully capable of interpreting and enforcing the stipulation, as the
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`meaning of ‘primary reference’ is case-specific ….” Paper 11, 2 (citing Tide
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`International (USA), Inc. v. UPL NA Inc., IPR2020-01113, Paper 12 (PTAB Jan. 22,
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`2021)). The Board made no such endorsement in Tide. Instead, the Board
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`recognized that the petitioner in Tide “sought to carve out from its stipulation
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`- 1 -
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`IPR2021-00381
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`[certain] arguments in its contentions … so that … it can assert the same reference
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`in both proceedings,” admonishing that “[d]oing so poses a risk of duplicated efforts
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`and potentially conflicting decisions.” Id. at 19. Far from endorsing Petitioner’s
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`narrow stipulation, the Board in Tide highlighted shortcomings of stipulations like
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`Petitioner’s.
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`Moreover, Petitioner expressly acknowledges that its stipulation foists on the
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`district court the additional duty of “interpreting and enforcing the stipulation,”
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`including “the meaning of ‘primary reference.’” Paper 11 at 2. Such inevitable side
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`litigation could have been avoided had Petitioner adopted a broad stipulation, as
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`advised by the Board in the precedential Sotera Wireless Inc. v. Massimo Corp.
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`decision. IPR2020-01019, Paper 12, 18 (PTAB Dec. 1, 2020) (precedential).
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`Even if the Board credits Petitioner’s stipulation, the stipulation should weigh
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`only marginally against discretionary denial because it is not as encompassing as the
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`stipulation in Sotera. See Cisco Sys., Inc. v. Monarch Networking Sols. LLC, Paper
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`11, 15 (Mar. 4, 2021); see also Verizon Bus. Network Svs., LLC v. Huawei Tech. Co.,
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`IPR2020-01278, Paper 12, 13 (PTAB Jan. 26, 2021) (“weighs somewhat against”
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`denying institution). As shown in the Preliminary Response, the other Fintiv factors
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`weigh in favor of denying institution and, thus, outweigh the marginal weight
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`applied to the fourth Fintiv factor.
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`- 2 -
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`Dated: May 17, 2021
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`IPR2021-00381
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`Respectfully submitted,
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`By:
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`/Mark G. Knedeisen/
`Mark G. Knedeisen (Reg. No. 42,747)
`K&L Gates Center, 210 Sixth Avenue
`Pittsburgh, Pennsylvania 15222
`Tel.: (412) 355-6342
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`mark.knedeisen@klgates.com
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`Counsel for Patent Owner
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`- 3 -
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`IPR2021-00381
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`Certification of Service Under 37 C.F.R. § 42.6(e)(4)
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`I hereby certify that on May 17, 2021, I caused a true and correct copy of the
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`foregoing to be served on the following counsel for Petitioner by electronic mail to
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`the following email address:
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`W. Karl Renner (Reg. No. 41,265)
`Roberto Devoto (Reg. No. 55,108)
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Email: IPR50095-0019IP1@fr.com
`Email: PTABInbound@fr.com
`Email: axf-ptad@fr.com
`Email: devoto@fr.com
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`By:
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`
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`/Mark G. Knedeisen/
`Mark G. Knedeisen (Reg. No. 42,747)
`K&L Gates Center, 210 Sixth Avenue
`Pittsburgh, Pennsylvania 15222
`Tel.: (412) 355-6342
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`
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`mark.knedeisen@klgates.com
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`Counsel for Patent Owner
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`504300501.1
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