`
`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 RESPONSE
`
`
`
`
`
`
`
`
`
`
`

`

`
`
`I. 
`II. 
`
`III. 
`
`IPR2021-00381
`Patent Owner Response
`
`TABLE OF CONTENTS
`CONTENTS
`INTRODUCTION ........................................................................................... 1 
`BACKGROUND ............................................................................................. 3 
`A. 
`Summary of the ’982 Patent .................................................................. 3 
`B. 
`Person of Ordinary Skill in the Art ....................................................... 5 
`C. 
`Petitioner’s Invalidity Grounds and Evidence ...................................... 7 
`1. 
`Rosener ........................................................................................ 8 
`2. 
`Hankey ...................................................................................... 10 
`3. 
`Dyer ........................................................................................... 11 
`4. 
`Cooperstock’s Testimony ......................................................... 11 
`PETITIONER FAILED TO SHOW THAT INDEPENDENT CLAIM 1
`WOULD HAVE BEEN OBVIOUS .............................................................. 12 
`A. 
`Petitioner Failed to Show that a POSITA Would Have a Reasonable
`Expectation of Success Achieving Petitioner’s Proposed
`Combinations ....................................................................................... 12 
`1. 
`Skill Level of a POSITA ........................................................... 13 
`2.  Modifying Rosener in view of Hankey is Beyond the Skill
`Level of a POSITA with a Bachelor’s Degree in Computer
`Science and Two Years of Experience with Local Area
`Networks ................................................................................... 14 
`Petitioner’s Proposed Combinations Fail to Teach Two Wireless
`Earphones, with Each Having a Microphone ...................................... 21 
`1. 
`Rosener Does Not Unequivocally Teach that Each Earphone
`Can Include a Microphone ........................................................ 21 
`
`B. 
`
`i
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`

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`IPR2021-00381
`Patent Owner Response
`
`2. 
`
`A POSITA Would Not Include a Microphone in Each of
`Rosener’s Earphones in Light of the Teachings of Rosener
`and Hankey (and Dyer) ............................................................. 32 
`Petitioner Failed to Show that Claim 1 Would Have Been Obvious
`under Ground 1(A)(i) .......................................................................... 34 
`The Commercial Success of Petitioner’s Products Confirms that
`the Challenged Claims Would Not Have Been Obvious .................... 40 
`1. 
`Background ............................................................................... 40 
`2. 
`Legal Principles ......................................................................... 41 
`3. 
`The AirPod Products are a Commercial Success ..................... 43 
`4. 
`There is a Nexus Between the AirPod Products and
`Claim 1 ...................................................................................... 44 
`IV.  DEPENDENT CHALLENGED CLAIMS WOULD NOT HAVE BEEN
`OBVIOUS FOR REASONS ABOVE AND BEYOND THE
`NONOBVIOUSNESS OF CLAIM 1 ............................................................ 46 
`A. 
`Petitioner Failed to Show that Claims 4 and5 Would Have Been
`Obvious to a POSITA ......................................................................... 46 
`Petitioner Failed to Show that Claim 14 Would Have Been
`Obvious ............................................................................................... 52 
`1. 
`Background on Firmware and Firmware Upgrades .................. 52 
`2. 
`Petitioner Has Not Shown that Claim 14 Would Have Been
`Obvious to a POSITA ............................................................... 53 
`Petitioner Failed to Show that Claim 15 Would Have Been Obvious
`to a POSITA ........................................................................................ 57 
`Petitioner Failed to Show that Claims 19 and 20 Would Have Been
`Obvious to a POSITA ......................................................................... 60 
`Commercial Success Applies to Dependent Claims 4, 5, 14, 15, 19
`and 20 .................................................................................................. 65 
`
`C. 
`
`D. 
`
`B. 
`
`C. 
`
`D. 
`
`E. 
`
`ii
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`

`

`IPR2021-00381
`IPR2021-00381
`Patent Owner Response
`Patent Owner Response
`
`CONCLUSION .............................................................................................. 66 
`
`1... eee ceccseeseceseeeeaeeeneeeaaeesaeseseeeaeecsaeesaessaeseaeseseeeeeeseeeees
`
`66
`
`CONCLUSION
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`
`
`V.
`
`V. 
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`
`iii
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`ill
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`

`

`
`
`IPR2021-00381
`Patent Owner Response
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Apple Inc. v. Koss Corp.,
`IPR2021-00546, Paper 10 (PTAB Sept. 7, 2021) ........................................passim
`In re Applied Materials, Inc.,
`692 F.3d 1289 (Fed. Cir. 2012) .......................................................................... 44
`Demaco Corp. v. F. Von Langsdorff Licensing Ltd.,
`851 F.2d 1387 (Fed. Cir. 1998) .................................................................... 42, 44
`Ecolochem, Inc. v. S. Cal. Edison Co.,
`227 F.3d 1361 (Fed. Cir. 2000) .......................................................................... 42
`Eli Lilly and Co. v. Teva Pharms. Int’l GmbH,
`8 F.4th 1331 (Fed. Cir. 2021) ............................................................................. 20
`Fox Factory, Inc. v. SRAM, LLC,
`994 F.3d 1366 (Fed. Cir. 2019) .......................................................................... 43
`Goodyear Tire & Rubber Co. v. Ray-O-Vac Co.,
`321 U.S. 275 (1944) .................................................................................. 2, 42, 45
`Graham v. John Deere Co. of Kansas City,
`383 U.S. 1 (1966) ................................................................................................ 41
`Honeywell Int’l Inc. v. Mexichem Amanco Holding S.A.,
`865 F.3d 1348 (Fed. Cir. 2017) .......................................................................... 19
`In re Huang,
`100 F.3d 135 (Fed. Cir. 1996) ............................................................................ 42
`Merck & Co. v. Teva Pharm. USA, Inc.,
`395 F.3d 1364 (Fed. Cir. 2005) .................................................................... 42, 45
`Ormco Corp. v. Align Tech., Inc.,
`463 F.3d 1299 (Fed. Cir. 2006) .......................................................................... 42
`
`iv
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`

`

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`
`IPR2021-00381
`Patent Owner Response
`
`Pentec, Inc. v. Graphic Controls Corp.,
`776 F.2d 309 (Fed. Cir. 1985) ............................................................................ 42
`Samsung Elecs. Co., Ltd. v. Ancora Techs., Inc.,
`IPR2020-01184, Paper 11 (PTAB Jan. 5, 2021) ................................................ 42
`SightSound Techs., LLC v. Apple Inc.,
`809 F.3d 1307 (Fed. Cir. 2015) .......................................................................... 43
`Statutes
`35 U.S.C. § 103 .................................................................................................... 7, 40
`Other Authorities
`37 C.F.R. § 42.120 ..................................................................................................... 1
`
`
`
`v
`
`

`

`
`
`EXHIBIT LISTING
`
`IPR2021-00381
`Patent Owner Response
`
`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 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 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 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)
`
`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)
`
`ix
`
`

`

`IPR2021-00381
`Patent Owner Response
`
`Exhibit
`KOSS-2041
`
`KOSS-2042
`
`Description
`“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)
`
`“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)
`
`
`
`
`
`
`
`x
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`

`

`
`I.
`
`INTRODUCTION
`
`Case IPR2021-00381
`Patent Owner Response
`
`The Board granted institution for inter partes review of claims 1-5 and 14-20
`
`of U.S. Patent No. 10,491, 982 (APPLE-1001, “the ’982 Patent”). Paper 15. Patent
`
`Owner, Koss Corporation, submits this Patent Owner Response (“POR”) under 37
`
`C.F.R. § 42.120.
`
`The Board should find that Petitioner has not shown that the Challenged
`
`Claims are unpatentable. Petitioner’s assertion that independent claim 1 would have
`
`been obvious to a person skilled in the art (“POSITA”) is undercut by the inability
`
`of Petitioner’s expert, who has skills and experience superior to a POSITA, being
`
`unable to explain how the relied-upon prior art operates. His inability to understand
`
`the prior art highlights the complexity of designing wireless earphones. A POSITA
`
`with no experience in designing wireless earphones would not, therefore, have a
`
`reasonable expectation of success making the prior art combinations proposed by
`
`Petitioner. Claim 1 also would not have been obvious because the prior art cited
`
`against claim 1 does not teach or suggest two wireless earphones, each having an
`
`independent microphone.
`
`Various dependent Challenged Claims would not have been obvious for
`
`reasons above and beyond the nonobviousness of claim 1. Claims 4 and 5 would
`
`not have been obvious because Petitioner has not shown that the remote network
`
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`- 1 -
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`

`

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`server to which the wireless earphone initiates transmission of a request is in
`
`Case IPR2021-00381
`Patent Owner Response
`
`communication with the mobile digital audio player (“DAP”) of claim 1. The Board
`
`already made this conclusion in an inter partes review for a related patent in which
`
`the same prior art reference (Haupt) was relied on for this limitation. See Apple Inc.
`
`v. Koss Corp., IPR2021-00546, Paper 10 (PTAB Sept. 7, 2021). Claims 14 and 15
`
`would not have been obvious because a POSITA would not have a reasonable
`
`expectation of success implementing the modifications proposed by Petitioner.
`
`Also, claims 19 and 20 would not have been obvious because the relied-upon prior
`
`art does not teach or suggest a “digital signal processor” that “provides a sound
`
`quality enhancement for the audio content ….”
`
`Finally, to the extent that the evidence on patentability present a close call, the
`
`marked commercial success of Petitioner’s products that practice the Challenged
`
`Claims “tip[s] the scales in favor of patentability.” Goodyear Tire & Rubber Co. v.
`
`Ray-O-Vac Co., 321 U.S. 275, 279 (1944).
`
`This POR is supported by declarations by (1) Joseph C. McAlexander (KOSS-
`
`2038), an expert in the field of the ‘982 Patent and (2) Nicholas S. Blair (KOSS-
`
`2039), an expert in earphone design.
`
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`- 2 -
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`

`

`Case IPR2021-00381
`Patent Owner Response
`
`
`II. BACKGROUND
`A.
`Summary of the ’982 Patent
`The ’982 Patent describes wireless earphones. APPLE-1001, 2:7-25. Figure
`
`1B (reproduced below) illustrates an example of a wireless earphone. The illustrated
`
`example includes (i) an ear canal portion that is inserted into the user’s ear when
`
`worn and (ii) an elongated portion that extends downwardly when worn.
`
`
`
`Certain features of the wireless earphone are depicted in Figure 3 (reproduced
`
`below) of the ‘982 Patent. The earphone includes a transceiver circuit 100, power
`
`source 102, microphone 104, acoustic transducer 106 (e.g., a speaker), and an
`
`antenna 108. APPLE-1001, 6:34-41. The transceiver circuit 100, power source 102,
`
`and acoustic transducer 106 may be housed within the body 12 of the earphone 10.
`
`Id., 6:41-44. The transceiver circuit 100 may be implemented with a system-on-chip
`
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`- 3 -
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`

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`(SoC), “which is conducive to miniaturizing the components of the earphone ….”
`
`Case IPR2021-00381
`Patent Owner Response
`
`Id., 6:49-54.
`
`
`
`The earphone may interface with an external device, such as the docking
`
`station shown in Figure 4A (reproduced below). Figure 4A shows the earphone 10
`
`interfacing with a docking station 200, which is connected to a computer device 202.
`
`Id., 8:1-3. The earphone 10 may connect to the docking station 102 to charge the
`
`power source 102 and to download data or firmware. Id., 8:9-11.
`
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`- 4 -
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`

`
`
`Case IPR2021-00381
`Patent Owner Response
`
`
`
`B.
`Person of Ordinary Skill in the Art
`Petitioner’s expert, Dr. Jeremy Cooperstock (“Cooperstock”) testified that a
`
`POSITA to which the ’982 Patent pertains as of April 7, 2008 “would have had at
`
`least a Bachelor’s Degree in an academic area emphasizing electrical engineering,
`
`computer science, or a similar discipline, and at least two years of experience in
`
`wireless communications across short distance or local area networks,” with the
`
`proviso that “[s]uperior education could compensate for a deficiency in work
`
`experience, and vice-versa.” APPLE-1003, ¶30; KOSS-2037, 29:14-30:8. The
`
`Board adopted this skill level standard for a POSITA for purposes of the institution
`
`decision (Paper 15, 33) and should maintain this standard for the proceeding as
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`- 5 -
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`

`

`
`Patent Owner agrees that it is an appropriate standard. KOSS-2038, ¶20.
`
`Case IPR2021-00381
`Patent Owner Response
`
`Cooperstock used this POSITA skill level standard for his opinions. KOSS-2037,
`
`30:9-16.
`
`A person who qualifies as a POSITA under this standard could have merely a
`
`bachelor’s degree in computer science and two years of experience in local area
`
`networks. KOSS-2037:30:20-31:3 (Cooperstock testifying that a bachelor’s degree
`
`in computer science qualifies as having “Bachelor’s Degree in an academic area
`
`emphasizing electrical engineering, computer science, or similar discipline”).
`
`Cooperstock described what skills and knowledge a POSITA might have,
`
`testifying that a person can get a degree in computer science “in algorithmic theory
`
`without any sort of relevant knowledge of the fields that are relevant to practicing
`
`wireless technologies.” KOSS-2037, 32:17-20. Knowledge and skills relevant to
`
`wireless technology could be gained during the two years of experience in local area
`
`networks, and a POSITA could have gained practical experience in “questions of
`
`signal strength [and] microelectronic circuitry.” Id., 33:20-34:3. Cooperstock
`
`further testified that a POSITA “would also deal with some of the latency
`
`requirements” if the POSITA’s experience in local area networks included an
`
`emphasis on audio data delivery. Id., 34:4-7.
`
`Importantly, Cooperstock did not identify that a POSITA necessarily would
`
`
`- 6 -
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`

`

`
`have any skills or experience related to sound engineering or designing a wireless
`
`Case IPR2021-00381
`Patent Owner Response
`
`earphone. The POSITA would not necessarily have any skills or knowledge specific
`
`to designing the acoustic transducer for a wireless earphone, fitting all of the
`
`components into a small form factor earphone, or suitably powering a wireless
`
`earphone given the safety and size constraints. KOSS-2038, ¶20.
`
`C.
`Petitioner’s Invalidity Grounds and Evidence
`Petitioner asserts that the Challenged Claims (i.e., claims 1-5 and 14-20)
`
`would have been obvious under 35 U.S.C. § 103 across twelve total grounds. Pet.
`
`at 1. Petitioner asserts two grounds for independent claim 1. Ground 1(A) is that
`
`claim 1 (as well as claims 2 and 18-20) would have been obvious over Rosener
`
`(APPLE-1004) and Hankey (APPLE-1005). Ground 1(A)(i) is that claim 1 (as well
`
`as claims 2 and 18-20) would have been obvious over Rosener, Hankey and Dyer
`
`(APPLE-1006).1
`
`
`1 Half of the asserted grounds include Dyer (the grounds ending in “(i)”) and half of
`
`the asserted grounds do not. The references for the grounds that include Dyer are
`
`identical to the grounds that do not include Dyer, except for the addition of Dyer.
`
`Pet. at 1. For convenience, this POR refers to the grounds that include Dyer (i.e.,
`
`Grounds 1(A)(i) to 1(F)(i)) as the “Dyer Grounds.”
`
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`- 7 -
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`

`

`
`
`Case IPR2021-00381
`Patent Owner Response
`
`1.
`Rosener
`Rosener discloses, with respect to Figure 5 thereof (reproduced below), a user
`
`“wearing a wireless headset comprising first and second wireless earphone[s] ….”
`
`APPLE-1004, ¶[0018]. The earphones in the embodiment shown in Figure 5 include
`
`a speaker (e.g., acoustic transducer) and a downwardly-extending member. The
`
`earphones may be in the form of an earbud, a canalphone, or an over-the-ear
`
`headphone. Id., ¶[0030].
`
`
`
`Rosener discloses that the speakers of the earphones “may comprise, for
`
`example, a magnetic element attached to a voice-coil-actuated diaphragm, an
`
`electrostatically charged diaphragm, a balanced armature driver, or a combination
`
`of one or more of these transducer elements.” APPLE-1004, ¶[0030].
`
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`- 8 -
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`

`

`
`
`Case IPR2021-00381
`Patent Owner Response
`
`In connection with Figure 6 (reproduced below), Rosener discloses that the
`
`data source can use two digital data streams (“CH1” and “CH2”) to transmit data to
`
`the earphones.
`
`
`
`Rosener also explains that “[t]iming differences between the first and second
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`data streams” for the respective wireless earphones may be “of concern, particularly
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`in applications where the data packets comprise audio data,” if the data packets
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`arrive more than 100 microseconds apart. APPLE-1004, ¶[0038]. Rosener explains
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`that the analog-to-digital (A/D) converters in the earphones “may consume data
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`faster or slower than the data provided” by the transmitters. Id. If one of the A/D
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`converters is too slow, data sent by the corresponding transmitter “will be lost at the
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`sending end since the data has no place to go.” Id. Conversely, the A/D converter
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`“will stall if it operates too fast, since it will run out of data faster than data is
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`provided to it.” Id.
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`Rosener describes four ways to “compensate for differential latencies between
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`the first and second data streams.” Id., ¶¶[0039]-[0042]. Two of the ways involve
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`a data buffer. In the first of these two ways, data buffers in each earphone “maintain
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`a predetermined constant occupancy.” Id., ¶[0039]. If the data occupancy of a data
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`buffer “becomes too low (e.g., due to a fast A/D converter), interpolated or repeated
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`data samples may be inserted into the data buffer to increase the data occupancy of
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`the buffer ….” Id. If the data occupancy “becomes too high (e.g., due to a slow
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`A/D converter) data samples may be removed from the buffer to reduce the data
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`occupancy.” Id.
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`In the second technique involving data buffers, the clock signals of the A/D
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`converters are adjusted. Id., ¶[0042]. If the occupancy of a data buffer “is too low
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`(or the receive clock/sample clock delay is decreasing), the A/D clock is slowed
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`down. Conversely, if it is determined that the occupancy of the data buffer is too
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`high (or the delay is increasing), the A/D clock is sped up.” Id.
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`2.
`Hankey
`Relative to claim 1, Petitioner acknowledges that Rosener is “silent as to the
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`implementation details of arranging Rosener’s electrical components within the
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`compact form factor of each of the earphones” shown in Rosener’s Figure 5 and that
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`Rosener “contains only a limited disclosure of the details of the earphones’ form
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`factor.” Pet. at 25 (citing APPLE-1003, ¶45). To overcome (allegedly) these
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`deficiencies of Rosener, Petitioner relies on Hankey, which Petitioner asserts
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`provides “techniques to implement a headset within ‘a small compact unit’.” Pet. at
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`21 (citing APPLE1-1003, ¶¶[0093], [0103]). In particular, Hankey discloses a
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`single-earpiece headset that includes a flexible circuit board that can “fold upon itself
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`or bend,” which allows the circuit board to “fit in smaller or less traditionally-shaped
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`earbuds.” APPLE-1005, ¶[0130].
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`3.
`Dyer
`Petitioner relies on Dyer in the Dyer Grounds “to the extent Patent Owner
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`claims that a POSITA would have required additional specificity as to the structure
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`of the portion of the canalphone that is inserted into a user’s ear ….” Pet. at 29.
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`Dyer discloses an “eartip” that is attachable to a “standard, generic earphone ….”
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`APPLE-1006, 2:22-23. The “generic earphone” includes low-frequency and high-
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`frequency armature drivers and an external sound source that is connected to the
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`earphone via a cable. Id., 3:5-15; Fig. 1.
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`4.
`Cooperstock’s Testimony
`Petitioner supports the asserted grounds with testimony from its expert,
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`Cooperstock. APPLE-1003. As explained herein, Cooperstock, who has skills and
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`experience superior to a POSITA, could not explain important aspects of the relied-
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`upon prior art including: how Rosener’s transducer operates; how Rosener’s A/D
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`converter and data buffer coordinate; and what Hankey’s flexible circuit would be
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`made of in order to make the combination proposed by Cooperstock. KOSS-2037,
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`36-43 (transducers), 45-61 (data buffer), 67-68 (material for flexible circuit board).
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`Cooperstock’s opinion that the Challenged Claims would have been obvious to a
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`POSITA without skills or experience designing wireless earphones may be
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`explained because that is what Cooperstock does—testify upon request that patent
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`claims are invalid. He has testified in several matters regarding patent validity and
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`every time found that the claims are invalid. APPLE-1003, pp.125-126; KOSS-
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`2037, 87-93. He has never given testimony that a patent claim is valid because he
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`has not “been called on to provide such testimony.” KOSS-2037, 93.
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`III. PETITIONER FAILED TO SHOW THAT INDEPENDENT CLAIM 1
`WOULD HAVE BEEN OBVIOUS
`A.
`Petitioner Failed to Show that a POSITA Would Have a
`Reasonable Expectation of Success Achieving Petitioner’s
`Proposed Combinations
`The lynchpin of Petitioner’s argument that independent claim 1 would have
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`been obvious over Rosener and Hankey (and Dyer) is:
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`Being aware of Hankey’s techniques for implementing a small
`compact earpiece, a POSITA would have understood that one way
`to implement Rosener’s earphones 502, 504 would be to divide the
`corresponding electronic assemblies of [Rosener’s] earphone into
`two portions, and electrically couple the components in each of the
`portions by a flexible electrical connector. One portion would be
`contained within the top part of Rosener’s earphone (similar to
`Hankey’s ‘earbud’), and the other portion would be contained within
`a ‘longitudinal member’ Hankey discloses as extending away from
`the top portion.… Such a configuration would enable arrangement
`of components within the form factor of Rosener’s small earphones
`502, 504.
`Pet. at 27 (citing APPLE-1003, ¶47). The evidence, however, shows that such a
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`modification of Rosener in view of Hankey is beyond the skill of a POSITA and,
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`therefore, would not have been obvious. The other grounds (Grounds 1(B)-(E) and
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`Grounds 1(B)(i)-(E)(i)) in the Petition build on Grounds 1(A) and 1(A)(i) for claim
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`1; they also fail because the underlying argument for claim 1 fails.
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`1.
`Skill Level of a POSITA
`The Board should adopt Petitioner’s assertion that a POSITA “would have
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`had at least a Bachelor’s Degree in an academic area emphasizing electrical
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`engineering, computer science, or a similar discipline, and at least two years of
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`experience in wireless communications across short distance or local area
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`networks,” where “[s]uperior education could compensate for a deficiency in work
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`experience, and vice-versa.” APPLE-1003, ¶30; KOSS-2037, 29:14-30:8. Patent
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`Owner agrees that this is an appropriate skill level for a POSITA for the ’982 Patent.
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`KOSS-2038, ¶20. Under this standard, a POSITA can have merely a Bachelor’s
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`Degree in computer science and two years of experience in short distance wireless
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`communication or local area networks and no skills or experience specific to sound
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`engineering or wireless headphone technology. While electrical engineering or
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`computer science may provide context for certain underlying principles related to
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`circuitry and signal transmissions, these academic disciplines do not specifically
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`pertain to acoustics, wireless headphones, or even wireless speakers. Id. Similarly,
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`short-term experience with short distance wireless communications or local area
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`networks would also not necessarily involve acoustics, wireless headphones or
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`wireless speakers. Id. Importantly, among the skills that Cooperstock did not
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`identify that a POSITA would necessarily have are skills or experience related to
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`designing the acoustic transducer for a wireless earphone, fitting all of the
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`components into a small form factor earphone, and powering the device in a manner
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`suitable for a wireless earphone.
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`2. Modifying Rosener in view of Hankey is Beyond the Skill Level
`of a POSITA with a Bachelor’s Degree in Computer Science and
`Two Years of Experience with Local Area Networks
`Relevant to the ’982 Patent, the skills and knowledge of Petitioner’s expert
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`(Cooperstock) are superior to the skills and knowledge of a POSITA with a
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`bachelor’s degree in computer science and two years of experience with local area
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`networks. KOSS-2037, 37:7-16. Cooperstock earned a Ph.D. in Electrical and
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`Computer Engineering in 1996. APPLE-1003, ¶7. By the time of his deposition, he
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`had approximately 25 years of industry experience. Id., ¶¶8-11 and pp. 121-126.
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`Yet, Cooperstock could not explain how many of the components in Rosener’s and
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`Hankey’s headsets operate, including components that are critical to constructing
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`operative wireless earphones. Because a person with superior skills does not
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`understand critical concepts in the relied-upon prior art pertaining to designing
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`wireless earphones, a POSITA with inferior skills and knowledge, such as a
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`POSITA—who may only have a bachelor’s degree in computer science and two
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`years of experience with local area networks—also would not understand the
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`concepts in Rosener and Hankey, and could not, therefore, modify Rosener in view
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`of Hankey to arrive at the subject matter of claim 1.
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`For example, Rosener’s earphones include a speaker (or “transducer
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`element”). APPLE-10