IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Patent of: Michael J. Koss
`U.S. Patent No.:
`10,491,982
`Issue Date:
`November 26, 2019
`Appl. Serial No.: 16/528,701
`Filing Date:
`August 1, 2019
`Title:
`SYSTEM WITH WIRELESS EARPHONES
`
` Attorney Docket No.: 50095-0019IP1
`
`SUPPLEMENTAL DECLARATION OF DR. JEREMY COOPERSTOCK
`
`1
`
`APPLE 1024
`Apple v. Koss
`IPR2021-00381
`
`
`
`In re Patent of: Michael J. Koss
`U.S. Patent No.:
`10,491,982
`Issue Date:
`November 26, 2019
`Appl. Serial No.: 16/528,701
`Filing Date:
`August 1, 2019
`Title:
`SYSTEM WITH WIRELESS EARPHONES
`
` Attorney Docket No.: 50095-0019IP1
`
`SUPPLEMENTAL DECLARATION OF DR. JEREMY COOPERSTOCK
`
`1
`
`APPLE 1024
`Apple v. Koss
`IPR2021-00381
`
`
`
`Supplemental Declaration of Dr. Jeremy Cooperstock
`U.S. Patent No. 10,491,982
`
`TABLE OF CONTENTS
`
`INTRODUCTION ..................................................................................................................... 3
`
`BACKGROUND AND QUALIFICATIONS .................................................................... 4
`
`INFORMATION CONSIDERED ......................................................................................... 4
`
`RELEVANT LEGAL STANDARDS .................................................................................. 6
`
`SUMMARY OF MY OPINIONS .......................................................................................... 6
`
`A PERSON OF ORDINARY SKILL IN THE ART WOULD HAVE A
`
`REASONABLE EXPECTATION OF SUCCESS IN COMBINING THE CITED
`
`ART ............................................................................................................................................... 7
`
`A MICROPHONE IN EACH OF THE TWO EARPHONES ..................................... 14
`
`THE ROSENER-HANKEY-DYER CANALPHONE ................................................... 17
`
`CLAIMS 4 AND 5 ................................................................................................................... 22
`
`CLAIM 14 .................................................................................................................................. 25
`
`CLAIM 15 .................................................................................................................................. 29
`
`CLAIMS 19 AND 20 .............................................................................................................. 31
`
`ADDITIONAL REMARKS .................................................................................................. 36
`
`2
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`
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`Supplemental Declaration of Dr. Jeremy Cooperstock
`U.S. Patent No. 10,491,982
`
`1.
`
`I, Jeremy Cooperstock, of Montreal, Canada, declare that:
`
`INTRODUCTION
`
`2.
`
`I have been retained by Fish & Richardson, P.C., on behalf of
`
`Petitioner, Apple Inc. (“Apple”), as an independent expert consultant in this inter
`
`partes review (“IPR”) proceeding before the United States Patent and Trademark
`
`Office (“PTO”).
`
`3.
`
`I have been asked by Petitioner’s counsel (“Counsel”) to consider
`
`whether certain references teach or suggest the features recited in Claims 1-5, and
`
`14-20 of U.S. Patent No. 10,491,982 (“the ’982 patent”) (APPLE-1001). My
`
`opinions and the bases for my opinions are set forth below. My opinions are based
`
`on my education and experience.
`
`4.
`
`I previously submitted a declaration in this proceeding that I signed on
`
`December 31, 2020, and I understand that the declaration was marked as APPLE-
`
`1003. That declaration contained my opinions and the bases for them. Since
`
`submitting my declaration (APPLE-1003) I have considered the Board’s institution
`
`decision (Paper 15), Patent Owner’s Response (Paper 19) (“Resp.”), the
`
`Declarations of Mr. Joseph C. McAlexander III (KOSS-2038) and Mr. Nicholas
`
`Blair (KOSS-2039) in support of the Response filed by Patent Owner, Koss
`
`Corporation (“Koss”). My opinions from my previous declaration have not
`
`3
`
`
`
`Supplemental Declaration of Dr. Jeremy Cooperstock
`U.S. Patent No. 10,491,982
`
`changed. In writing this declaration, I have considered the following: my own
`
`knowledge and experience, including my teaching and work experience in the
`
`above fields; and my experience of working with others involved in those fields.
`
`5.
`
`I have no financial interest in either party or in the outcome of this
`
`proceeding. I am being compensated for my work as an expert on an hourly basis,
`
`for all tasks involved. My compensation is not dependent on the outcome of these
`
`proceedings or on the content of my opinions.
`
`BACKGROUND AND QUALIFICATIONS
`
`6.
`
`My background and qualifications are set forth in my previous
`
`Declaration. I incorporate that section of my previous declaration here by
`
`reference.
`
`INFORMATION CONSIDERED
`
`7.
`
`In preparing this declaration, I have considered the materials
`
`discussed in this declaration, including, for example, the ’982 patent, the references
`
`cited by the ’982 patent, the prosecution histories of the ’982 patent, background
`
`articles and materials referenced in this declaration, and the prior art references
`
`identified in this declaration. In addition, my opinions are further based on my
`
`education, training, experience, and knowledge in the relevant field.
`
`4
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`
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`Supplemental Declaration of Dr. Jeremy Cooperstock
`U.S. Patent No. 10,491,982
`
`Document No.
`
`Description
`
`APPLE-1001 U.S. Patent No. 10,491,982 to Koss, et al. (“the ’982 patent”)
`
`APPLE-1002 Excerpts from the Prosecution History of the ’982 patent (“the
`Prosecution History”)
`
`APPLE-1003 Declaration of Jeremy R. Cooperstock
`
`APPLE-1004 U.S. Pat. App. Pub. No. 2008/0076489 (“Rosener”)
`
`APPLE-1005 U.S. Pat. App. Pub. No. 2008/0166001 (“Hankey”)
`
`APPLE-1006 U.S. Pat. No. 8,031,900 (“Dyer”)
`
`APPLE-1007 U.S. Pat. No. 7,627,289 (“Huddart”)
`
`APPLE-1008 U.S. Pat. App. No. 60,879,177 (“’177 Provisional”)
`
`APPLE-1009 U.S. Pat. App. Pub. No. 2006/0026304 (“Price”)
`
`APPLE-1010 U.S. Pat. No. 7,551,940 (“Paulson”)
`
`APPLE-1011 U.S. Pat. No. 5,371,454 (“Marek”)
`
`APPLE-1012 U.S. Pat. No. 7,027,311 (“Vanderelli”)
`
`APPLE-1020 Certified Translation of WO 2006/042749 (“Haupt”)
`
`5
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`Supplemental Declaration of Dr. Jeremy Cooperstock
`U.S. Patent No. 10,491,982
`
`APPLE-1025
`
`Joseph C. McAlexander III Deposition Transcript, Dec. 14, 2021
`
`APPLE-1027 U.S. Pat. No. 5,733,598 to Sera (“Sera”)
`
`APPLE-1028 U.S. Pat. No. 7,281,328 to Lee (“Lee”)
`
`APPLE-1029 U.S. Pat. No. 7,453,045 to Myoung (“Myoung”)
`
`APPLE-1030 U.S. Pat. No. 7,916,888 to Sapiejewski (“Sapiejewski”)
`
`KOSS-2038 Declaration of Joseph C. McAlexander, III
`
`KOSS-2039 Declaration of Nicholas S. Blair
`
`Paper 14
`
`Institution Decision
`
`Paper 20
`
`Patent Owner Response (“Resp.”)
`
`RELEVANT LEGAL STANDARDS
`8.
`I set forth the relevant legal standards in my previous declaration, and
`
`I incorporate those legal standards here by reference.
`
`SUMMARY OF MY OPINIONS
`
`9.
`
`I have been asked to consider whether the claims of the ’982 patent
`
`are anticipated or obvious over certain prior art references. As explained in my
`
`previous declaration and in further detail in this declaration, it is my opinion that:
`
` Claim 1, 2, and 18-20 are obvious over Rosener and Hankey
`
`6
`
`
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`Supplemental Declaration of Dr. Jeremy Cooperstock
`U.S. Patent No. 10,491,982
`
` Claim 1 2, and 18-20 are obvious over Rosener, Hankey, and Dyer
`
` Claims 3-5 are obvious over Rosener, Hankey, and Haupt
`
` Claims 3-5 are obvious over Rosener, Hankey, Dyer, and Haupt
`
` Claim 14 is obvious over Rosener, Hankey, and Price
`
` Claim 14 is obvious over Rosener, Hankey, Dyer, and Price
`
` Claim 15 is obvious over Rosener, Hankey, and Paulson
`
` Claim 15 is obvious over Rosener, Hankey, Dyer, and Paulson
`
` Claims 16 and 17 are obvious over Rosener, Hankey, and Huddart
`
` Claims 16 and 17 are obvious over Rosener, Hankey, Dyer, and
`
`Huddart
`
` Claim 17 is obvious over Rosener, Hankey, Huddart, and Vanderelli
`
` Claim 17 is obvious over Rosener, Hankey, Dyer, Huddart, and
`
`Vanderelli
`
`A PERSON OF ORDINARY SKILL IN THE ART WOULD HAVE A
`REASONABLE EXPECTATION OF SUCCESS IN COMBINING THE
`CITED ART
`
`10. As I defined in my declaration, a person of ordinary skill in the art at
`
`the time of the ’982 patent’s Critical Date (“POSITA”) 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
`
`7
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`Supplemental Declaration of Dr. Jeremy Cooperstock
`U.S. Patent No. 10,491,982
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`wireless communications across short distance or local area networks. Superior
`
`education could compensate for a deficiency in work experience, and vice-versa.
`
`11.
`
`The Patent Owner has alleged that such a “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.” Resp., 6-7. While someone with a bachelor’s degree in EE or CS
`
`may focus on technologies less relevant to wireless devices, someone who is more
`
`interested in such technologies would gain the knowledge that prepares them for
`
`the wireless sector, circuitry design, acoustic factors, and other relevant
`
`technologies.
`
`12. 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 were known at the Critical
`
`Date. This is evidenced by the ’982 patent’s lack of disclosure regarding these
`
`concepts. The ’982 patent’s lack of details on the accused concepts, indicates that
`
`such concepts were well-known or easy to obtain by a person with knowledge on
`
`wireless headphones at the Critical Date.
`
`13.
`
`The Patent Owner’s allegation that a POSITA would not have a
`
`8
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`Supplemental Declaration of Dr. Jeremy Cooperstock
`U.S. Patent No. 10,491,982
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`reasonable expectation of success because I, with “skills and experience superior to
`
`a POSITA, could not explain important aspects of the relied-upon prior art,” is
`
`also flawed. Resp., 12-15 (emphasis added). The Patent Owner’s allegation is
`
`wrong because I understand the concepts that are needed to implement the prior art
`
`combination earphones discussed in my Declaration. Further, the Patent Owner’s
`
`allegedly “important aspects” were merely conventional concepts that a POSITA
`
`would have understood how to implement with a reasonable expectation of success
`
`and without any undue experimentation. An engineer interested in seeking to
`
`implement Rosener and Hankey earphones would have available many reference 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.
`
`A.
`
`A POSITA would have had a reasonable expectation of success in
`selecting and using proper transducers for Rosener-Hankey
`earphones.
`
`14. Rosener generally described a few example alternative transducers
`
`that were commercially known at the time that Rosener was filed. A POSITA
`
`reading Rosener’s disclosure would have understood such features to be
`
`9
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`Supplemental Declaration of Dr. Jeremy Cooperstock
`U.S. Patent No. 10,491,982
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`conventional, and would have no issue in using them in implementing Rosener’s
`
`contemplated design. The POSITA could simply seek references that explain
`
`details of the operations of any of those transducers as those transducers were
`
`commercially available by the Critical Date. Indeed, a POSITA had access to
`
`information on properties, characteristics and use of those transducer types as well
`
`as many other transducer types by the Critical Date.
`
`15.
`
`The ’982 patent itself also does not mention selecting a transducer as
`
`an issue, suggesting that this was not a problem that required invention for it to be
`
`solved as of the Critical Date. Thus, a POSITA could easily access and choose
`
`from commercially available transducers, e.g., the ones disclosed in Rosener, and
`
`implement them in an earphone.
`
`B.
`
`A POSITA would have had a reasonable expectation of success in
`implementing the two separate canalphones of the Rosener-
`Hankey combination.
`
`16. Rosener discloses alternative techniques that could be used instead of
`
`the challenged converter-buffer technique disclosed in its paragraph [0039]1. At
`
`1 The technique described in Rosener’s paragraph [0039] is only one way that
`
`Rosener utilizes its buffer. Regardless of how paragraph [0039] may be read,
`
`Rosener still discloses a buffer for each of its earphones “to compensate data
`
`10
`
`
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`Supplemental Declaration of Dr. Jeremy Cooperstock
`U.S. Patent No. 10,491,982
`
`least the alternative technique disclosed in paragraph [0040] of Rosener was well-
`
`known by the Critical Date. With this technique, “the data sample clock used by
`
`[the] RF transmitter” associated with the data source 618 is embedded “in the RF
`
`carrier signals used to carry the first and second data streams over the first and
`
`second wireless links 612, 616.” APPLE-1004, ¶[0040]. “The subcarrier signals
`
`can be detected by the respective first and second RF receivers 604, 608 and
`
`converted into digital clocks which can drive the A/D converters of the first and
`
`second RF receivers 604, 608.” Id.
`
`17.
`
`Thus, even if a POSITA had difficulty implementing the A/D
`
`converter-buffer technique disclosed in paragraph [0039] of Rosener, they could
`
`easily benefit from the alternative technique of paragraph [0040]. Since
`
`modulating carrier signals with sample clocks at the transmitter side and
`
`demodulating the carrier signals to obtain the sample clocks were well-known
`
`techniques by the Critical Date, a POSITA would have a reasonable expectation of
`
`success in implementing this technique.
`
`packet losses.” APPLE-1004, ¶[0037]. Therefore, I maintain my position with
`
`respect to claim 18 based on Rosener’s disclosure in paragraphs [0037-42]. See
`
`APPLE-1003, ¶131 (discussing obviousness of claim 18).
`
`11
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`
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`Supplemental Declaration of Dr. Jeremy Cooperstock
`U.S. Patent No. 10,491,982
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`C.
`
`Rosener’s data source 922 is a microphone/sensor in an earphone.
`
`18.
`
`The Patent Owner purports that Rosener is unclear as to whether data
`
`source 922 is a microphone/sensor in a headphone or a digital data source external
`
`to a headphone. Resp., 19-20. The Patent Owner bases its argument on my
`
`mistakenly identifying data source 922 as a digital source external to a headphone
`
`at the end of my four-hours deposition. Id.; KOSS-2037, 103:2-12. Rosener’s
`
`clear disclosure slipped my eyes at the end of the deposition. A POSITA reading
`
`Rosener diligently, would have understood that the data source 922 in Rosener is a
`
`sensor/microphone incorporated within an earphone, which was my position in my
`
`Declaration as well. See e.g., APPLE-1003, ¶120.
`
`19. Rosener discloses system 600 that includes a data source 618 that
`
`sends audio streams (CH1 and CH2) to data sinks 602, 606 (which, together with
`
`the receivers 604 and 608, can correspond to earphones 502, 504). APPLE-1004,
`
`¶¶[0031-36], FIG. 6. Rosener contemplates an arrangement in which each of
`
`receivers 604 and 608 of earphones 502, 504 is replaced by a transceiver 900 to
`
`thereby allow the earphone to both receive data for communication to a data sink
`
`918 (e.g., speaker) and transmit data received from a data source 922 (e.g., a
`
`microphone). APPLE-1004, ¶¶[0030-36], [0049]. Thus, data source 922 is part of
`
`each earphone 502, 504.
`
`12
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`
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`Supplemental Declaration of Dr. Jeremy Cooperstock
`U.S. Patent No. 10,491,982
`
`20.
`
`Indeed, a POSITA would have understood what each term means in
`
`the context of the functions that the corresponding components perform. Rosener
`
`discloses that an earphone can have “a data source such as, for example, a sensor
`
`or microphone to allow a data to be sent back to an external electronic device.”
`
`APPLE-1004, ¶[0056]. Considering that data source 922, which is part of each of
`
`earphones 502, 504, provides an input that is ultimately transmitted out of the
`
`earphone via antenna 906, a POSITA would have understood that data source 922
`
`is the same as the microphone/sensor-type data source that Rosener contemplates
`
`for allowing “data to be sent back to an external device.” Id., ¶¶[0050] and [0056].
`
`D.
`
`A POSITA would have had a reasonable expectation of success in
`using flexible circuit boards in the Rosener-Hankey combination
`earphones.
`
`21.
`
`The Patent Owner purports that since during my deposition I did not
`
`“identify a suitable material for the flexible electrical connector in the proposed
`
`combination [of the art],” a POSITA “would have no reasonable expectation of
`
`success making wireless earphones…as proposed by Petitioner.” Resp., 20.
`
`However, a POSITA would not need to know about the underlying materials for a
`
`building a circuit board in order to utilize one. Flexible circuit board were
`
`commercially available at the Critical Date. A POSITA could simply select from
`
`those commercially available flexible circuit boards without needing to know the
`
`13
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`Supplemental Declaration of Dr. Jeremy Cooperstock
`U.S. Patent No. 10,491,982
`
`underlying material used in fabricating flexible circuit boards when implementing
`
`those boards in the Rosener-Hankey combination because the properties and
`
`characteristics of the boards were public knowledge at the Critical Date.
`
`Additionally, given the prevalence of materials used for flexible electrical
`
`connectors, a POSITA would have understood that a circuit board can be utilized
`
`and implemented into a system without requiring the POSITA to have specific
`
`knowledge about its underlying material.
`
`22.
`
`Even if the underlying material was an issue, the POSITA could
`
`simply search for it in publicly available references. Methods of fabricating circuit
`
`boards were also well-known and public knowledge by that date. APPLE-1027,
`
`APPLE-1028, and APPLE-1029 are example references that described methods
`
`and materials for fabricating flexible circuit boards prior to the Critical Date.
`
`A MICROPHONE IN EACH OF THE TWO EARPHONES
`
`23.
`
`The Patent Owner alleges (i) that Rosener is “ambiguous at best on
`
`whether Rosener’s earphones could each include a microphone,” that (ii) even if
`
`Rosener’s disclosure is read as “both earphones included the same type of data
`
`source, it would not be microphone.” Resp., 21, 23 (emphasis in original). This is
`
`incorrect because Rosener explicitly discloses that “either or both the first and
`
`second data sinks of the various embodiments may include (or be coupled to) a
`
`14
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`
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`Supplemental Declaration of Dr. Jeremy Cooperstock
`U.S. Patent No. 10,491,982
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`data source such as, for example, a sensor or a microphone to allow a data to be
`
`sent back to an external electronic device” APPLE-1004, ¶[0056] (emphasis
`
`added). A POSITA reading [0056] of Rosener would have understood it as
`
`covering an embodiment in which both the first and second data sinks include a
`
`data source, such as a microphone.
`
`24.
`
`The Patent Owner admits that paragraph [0056] of Rosener can be
`
`read as both earphones having “the same type of data source,” but also argues that
`
`the data source on both earphones cannot be microphones because Rosener’s
`
`Figures 9 and 13 exclude this embodiment.
`
`25. While FIG. 13 of Rosener does not show a microphone in each of the
`
`earphones, a POSITA reading Rosener would have understood that FIG. 13
`
`illustrates only one of the several embodiments—i.e., “an alternative
`
`embodiment”— that Rosener illustrates for “provide[ing] data signals back to the
`
`external electronic device,” and is not intended to cover all possible configurations
`
`contemplated in paragraph [0056] of Rosener, including the embodiment where
`
`each of the earphones has a microphone.
`
`26.
`
`The Patent Owner asserts that “Figure 9 of Rosener … also does not
`
`teach a microphone in each earphone.” Resp., 25. While FIG. 9 of Rosener
`
`illustrates only one earphone with data source 922 (e.g., a microphone), a POSITA
`
`15
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`Supplemental Declaration of Dr. Jeremy Cooperstock
`U.S. Patent No. 10,491,982
`
`reading Rosener would have understood that the same illustration could apply to
`
`both earphones 502, 504 shown in FIG. 1 of Rosener. FIG. 6 of Rosener shows
`
`system 600 that includes data sinks 602, 606 (which, together with the receivers
`
`604 and 608, can correspond to earphones 502, 504) that communicate with data
`
`source 618 through separate communication links 612, 616. APPLE-1004,
`
`¶¶[0031-32]; see also APPLE-1003,¶¶37-38. Rosener also discloses that each of
`
`receivers 604, 608 shown in FIG. 6 can be replaced with transceiver 900 shown in
`
`FIG. 9. APPLE-1004, ¶[0049]. When replacing the receivers 604, 608 with
`
`transceiver 900, a POSITA would have understood that the rest of the circuitries
`
`shown in FIG. 9 (including data source 922) could be used for implementing each
`
`of data sinks 602, 606 and their corresponding earphones 502, 504, resulting in
`
`including data source 922 in each of the earphones.
`
`27. As discussed above, a POSITA would have understood data source
`
`922 to be a microphone at least based on the functionality that Rosener discloses
`
`for data source 922. Thus, a POSITA would have understood a microphone (as
`
`data source 922) to be incorporated into each of Rosener’s earphones 502, 504.
`
`28. Referring again to my mistake in misidentifying data source 922 to be
`
`the same as data source 618 at the end of my testimony, the Patent Owner alleges
`
`that “Petitioner improperly attempts to use data source 922 for multiple, separate
`
`16
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`Supplemental Declaration of Dr. Jeremy Cooperstock
`U.S. Patent No. 10,491,982
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`claim elements.” Resp., 26-27. I clarify here that data source 922 is indeed
`
`different from data source 618 at least based on the functions that Rosener
`
`discloses for each of these data sources.
`
`THE ROSENER-HANKEY-DYER CANALPHONE
`
`29.
`
`The Patent Owner used the Declaration of Nicholas Blair (“Blair
`
`Declaration”) for challenging the Rosener-Hankey-Dyer combination. The Patent
`
`Owner asserts that the earphones of the Rosener-Hankey-Dyer combination would
`
`not stay in a user’s ear because its body portion would form “an extended
`
`cantilevered arm” that would generate “a significant torque” from the offset weight
`
`of the primary housing. Resp., 34-39 (citing KOSS-2039, ¶¶10, 12, 13, 16-17, 20).
`
`The Patent Owner posits that if the Rosener-Hankey canalphone is combined with
`
`Dyer, “the securing mechanism of Rosener/Hankey would be ruined by the
`
`additional components from Dyer, and the securing mechanism of Dyer would be
`
`ruined by the additional components from Hankey.” Resp., 38. However, the
`
`Patent Owner’s reliance on the Blair Declaration does not defeat the Rosener-
`
`Hankey-Dyer combination for the reasons discussed below.
`
`30.
`
`First, the Blair Declaration fails to cite to evidence corroborating its
`
`assumptions and its purported incompatibility of the securing mechanism of
`
`Rosener and Hankey. For example, the Blair Declaration makes several
`
`17
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`Supplemental Declaration of Dr. Jeremy Cooperstock
`U.S. Patent No. 10,491,982
`
`assumptions relating to how the earphone in each of Rosener and Hankey is
`
`secured in a user’s ear without any relevant support from either of these references.
`
`It asserts that Rosener’s earphone “is intended to extend downwardly through the
`
`intratragal notch of the user’s ear.” KOSS-2039, ¶10. However, this is not taught
`
`by Rosener, and is not supported by any corroborating evidence.
`
`31.
`
`The Blair Declaration then assumes that the weight of Hankey’s
`
`primary housing pulls the earbud within the concha to keep the earbud seated on
`
`the lower portion of the concha. Id., ¶11. Again, this is not supported by Hankey,
`
`but even if it were true, this would also hold true for the design of the Rosener-
`
`Hankey-Dyer combination, thereby also keeping the earbud in place. The
`
`Declaration then continues by assuming that “the cumulative force, Fdownwardly-
`
`extending member,” applied by Rosener’s and Hankey’s headphones “is a downward
`
`force acting in the direction of the downwardly-extending member, i.e. through the
`
`intratragal notch of the user’s ear.” Id. at ¶12. Even if this were true, the Blair
`
`Declaration fails to consider or discuss other forces that may be applied to the
`
`canalphone disclosed in Rosener to keep the canalphone in the user’s ears, such as
`
`the friction between the concha and the body portion of the canalphone, the friction
`
`between the earcanal and the eartip of the canalphone, etc.
`
`32.
`
`The Blair Declaration also alleges that the Rosener-Hankey-Dyer
`
`18
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`Supplemental Declaration of Dr. Jeremy Cooperstock
`U.S. Patent No. 10,491,982
`
`combination design does not account for an ear canal’s shape, such as bends and
`
`tapers because it has a straight body. KOSS-2039, ¶16. But it fails to explain how
`
`the ‘982 Patent’s proposed canalphone would differentiate from the proposed
`
`Rosener-Hankey-Dyer’s straight body. The ’982 patent’s Figure 1B shows the
`
`only structure contemplated for an earphone that fits into a user’s ear canal and it
`
`too has an extended elongated portion and does not include the asserted bend and
`
`tapers. See ’982 patent, FIG. 1B.
`
`33.
`
`Further, the Blair Declaration fails to consider that the Rosener-
`
`Hankey-Dyer combination may benefit from both security mechanisms asserted
`
`for the Rosener-Hankey and Dyer earphones. The Blair Declaration asserts that
`
`“Dyer’s earphone employs a different securing mechanism than Rosener and
`
`Hankey” without explaining why the two mechanisms are not compatible with
`
`each other. KOSS-2039, ¶13.
`
`34.
`
`The Blair Declaration’s assertion that “the bulbous outer earphone
`
`enclosure 115 would not fit in the user’s ear” and “would prevent eartip 121 from
`
`sufficiently penetrating the ear canal” is also speculative. KOSS-2039, ¶17. To
`
`the contrary, Hankey’s earbud is also bulbous, but as the Blair Declaration
`
`acknowledges, “tend[s] to stay on (or secured in) the user’s ear.” KOSS-2039,
`
`¶12. Moreover, as I explained in my Declaration, the sub-enclosure 115 would
`
`19
`
`
`
`Supplemental Declaration of Dr. Jeremy Cooperstock
`U.S. Patent No. 10,491,982
`
`have a similar volume (and potentially geometry) as Hankey’s earbud and would
`
`secure the bulk of electronic circuitry of the canalphone, like the earbud in Hankey
`
`does. APPLE-1003, ¶57. Rather than being in conflict as alleged by the Blair
`
`Declaration, a POSITA would have implemented a similar configuration for sub-
`
`enclosure 115 to thereby enable the Rosener-Hankey-Dyer canalphone to benefit
`
`from both a similar securing mechanism as Mr. Blair purported for Hankey’s
`
`earbud—i.e., being secured in the ear concha—and the securing mechanism
`
`purported for Dyer’s canalphone—i.e., being secured in the ear canal. KOSS-
`
`2039, ¶¶10-13; see also Pet., 31 that relies on APPLE-1003, ¶57 (arguing that the
`
`sub-enclosure 115 would have a similar volume (and potentially geometry) as
`
`Hankey’s earbud).
`
`35.
`
`The Blair Declaration also asserts that “the added length of the outer
`
`earphone enclosure 115 would contribute to an extended moment arm between
`
`eartip 121 and primary housing 1010, and the primary housing 1010 would have a
`
`weight that generates a downwardly-extending force” that would ultimately apply
`
`torque to the body portion, and “would seek to pivot the ‘body portion’ out of the
`
`user’s ear.” KOSS-2039, ¶18. This assertion assumes that a POSITA would not
`
`have been motivated to design the sub-enclosure 115 to be similar to Hankey’s
`
`earbud. Moreover, with the bulk of electronic circuitries located in the sub-
`
`20
`
`
`
`Supplemental Declaration of Dr. Jeremy Cooperstock
`U.S. Patent No. 10,491,982
`
`enclosure 115, the concha would support the weight of sub-enclosure 115, which
`
`would be significantly heavier than the elongated body portion. Accordingly,
`
`compared to the portion of the Rosener-Hankey-Dyer canalphone that is close to
`
`the user’s ear, the primary housing (i.e., the elongated extension) would not weigh
`
`much, and the torque, therefore, would not be “significant” as the Declaration
`
`asserts. Id. (citing KOSS-2039, ¶20). Additionally, prior art with structure similar
`
`to the Rosener-Hankey-Dyer combination shows that the structure—with an eartip
`
`and relatively heavier electronic components (such as the transducer and its driver
`
`circuitry) located in a larger body portion and an elongated extension—was known
`
`and used by skilled artisans before the 982’s disclosure. See, for example, FIG. 2B
`
`in APPLE-1030.
`
`36.
`
`Thus, Patent Owner has not provided a credible showing that the
`
`Rosener-Hankey-Dyer combination undermines the securing mechanism because,
`
`as explained above, (a) the Patent Owner has not provided sufficient evidence that
`
`its alleged securing mechanism in each of the cited references is indeed the correct
`
`way of securing the earphone in each of those references and (b) the Patent Owner
`
`ignored that the combination canalphone can actually boost the securing
`
`mechanism by benefiting from both the snug fit feature of the eartip in Dyer, and
`
`the alleged securing feature of the earbud in Hankey.
`
`21
`
`
`
`Supplemental Declaration of Dr. Jeremy Cooperstock
`U.S. Patent No. 10,491,982
`
`37.
`
`Second, the Blair Declaration does not suggest that the Rosener-
`
`Hankey-Dyer combination would provide an inoperable canalphone; it only asserts
`
`that the combination canalphone would not be an ideal design because it “would
`
`cause user’s discomfort” and “lessen the sound quality” as the canalphone “would
`
`likely dislodge [] from the user’s ear.” KOSS-2039, ¶¶17, 20. Therefore, a
`
`POSITA at least would have contemplated the proposed design as an operable
`
`embodiment, even if the Patent Owner were correct that it is inferior to other
`
`designs regarding how it fits or how long it stays in a user’s ear.
`
`38. Given the various deficiencies in the Blair Declaration discussed
`
`above, the Patent Owner has failed to provide any credible evidence to rebut the
`
`prima facie case of obviousness advanced in the Petition.
`
`CLAIMS 4 AND 5
`
`39.
`
`The Patent Owner asserts that Apple has not shown that the same
`
`remote network server that is in communication with the earphone is also in
`
`communication with the mobile digital audio player (DAP) of claim 1. Resp., 48-
`
`49. But the Patent Owner is wrong because it ignores that the Petition, as well as
`
`my Declaration, applied a specific audio forwarding feature for a master/slave
`
`configuration of the Rosener-Hankey-Haupt combination. See Pet., 61-66;
`
`APPLE-1003, ¶¶61, 139-151.
`
`22
`
`
`
`Supplemental Declaration of Dr. Jeremy Cooperstock
`U.S. Patent No. 10,491,982
`
`40.
`
`In the master/slave configuration discussed in the Petition, the
`
`headphone recited in claim 4 is mapped to a slave (or Playback Device_1), and the
`
`mobile DAP recited in claim 4 is mapped to a master (or Playback Device_2).
`
`Pet., 63-64. The master would then perform “as a local server, providing the
`
`stored audio files to the slave.” Id. “This allows the user of one pair of Rosener-
`
`Hankey-Haupt canalphones to synchronously share audio with the user of another
`
`pair of the canalphones via Bluetooth.” Id. The diagram below illustrates the
`
`master/slave (or Playback Device_1/Playback Device_2).
`
`41.
`
`The Patent Owner asserts that while the Petition maps Rosener’s data
`
`source 618 to the mobile DAP in claim 1, it “does not provide any evidence that
`
`Rosener’s external data source 618 would have been configured to communicate
`
`23
`
`
`
`Supplemental Declaration of Dr. Jeremy Cooperstock
`U.S. Patent No. 10,491,982
`
`with a remote network server, much less the same remote network server to which
`
`[the headphone] transmitted [a request].” Resp., 48-49. But, as discussed below,
`
`the Petition (which relied on my Declaration) provided ample evidence to support
`
`the combination by referencing Haupt’s master/slave configuration teachings.
`
`42.
`
`In the context of these teachings, a POSITA would have understood
`
`that Rosener’s external data source 618 would have been capable of
`
`communicating with a remote network server. Rosener specifically provided for
`
`examples of an external device—e.g., external data source 618—that a POSITA
`
`would have recognized as generally being capable of communicating with a remote
`
`network server. See Pet., 51 (citing APPLE-1004, ¶[0030]). Such examples
`
`included a cellular
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