Trials@uspto.gov
`571-272-7822
`
`Paper 10
`Date: September 7, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`KOSS CORPORATION,
`Patent Owner.
`
`IPR2021-00546
`Patent 10,206,025 B2
`
`
`
`
`
`
`
`
`
`Before PATRICK R. SCANLON, DAVID C. MCKONE, and
`NORMAN H. BEAMER, Administrative Patent Judges.
`SCANLON, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`APPLE 1026
`Apple v. Koss
`IPR2021-00381
`
`1
`
`
`571-272-7822
`
`Paper 10
`Date: September 7, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`KOSS CORPORATION,
`Patent Owner.
`
`IPR2021-00546
`Patent 10,206,025 B2
`
`
`
`
`
`
`
`
`
`Before PATRICK R. SCANLON, DAVID C. MCKONE, and
`NORMAN H. BEAMER, Administrative Patent Judges.
`SCANLON, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`APPLE 1026
`Apple v. Koss
`IPR2021-00381
`
`1
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`
`
`IPR2021-00546
`Patent 10,206,025 B2
`
`INTRODUCTION
`I.
`Apple Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting
`an inter partes review of claims 1–3, 6, 8, 10–13, 16, 18, 20–22, 25, 27, 29–
`31, 34, 36, 38–43, 46, 48, and 51–56 of U.S. Patent No. 10,206,025 B2
`(Ex. 1001, “the ’025 patent”). Koss Corporation (“Patent Owner”) filed a
`Preliminary Response (Paper 8, “Prelim. Resp.”).
`We have authority to determine whether to institute an inter partes
`review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020). To
`institute an inter partes review, we must determine that the information
`presented in the Petition shows “a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine
`that the information presented in the Petition does not establish a reasonable
`likelihood that Petitioner will prevail with respect to at least one challenged
`claim. Accordingly, we do not institute an inter partes review of the
`’025 patent.
`
`II. BACKGROUND
`A. Real Parties in Interest
`The parties identify themselves as the real parties in interest. Pet. 75;
`Paper 3, 1.
`
`B. Related Matters
`The parties identify the following proceeding as a related matter
`involving the ’025 patent: Koss Corp. v. Apple Inc., Case No. 6:20-cv-
`00665 (W.D. Tex.) (“the Texas case”). Pet. 75; Paper 3, 1. Patent Owner
`identifies five other proceedings in which Patent Owner is plaintiff and the
`’025 patent is asserted against other parties. Paper 3, 1; Paper 7, 1. Patent
`Owner also identifies two proceedings involving the ’025 patent, including
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`IPR2021-00546
`Patent 10,206,025 B2
`one filed by Petitioner in the United States District Court for the Northern
`District of California captioned Apple Inc. v. Koss Corporation, Case No.
`4:20-cv-05504 (N.D. Cal.). Paper 3, 1.
`In addition, Patent Owner identifies the following inter partes review
`proceedings1 challenging the ’025 patent or patents related to the ’025 patent
`as a related matters:
`Bose Corp. v. Koss Corp., IPR2021-00297, filed December 7, 2020,
`challenging U.S. Patent No. 10,368,155 B2;
`Apple Inc. v. Koss Corp., IPR2021-00305, filed December 15, 2020,
`challenging U.S. Patent No. 10,506,325 B1;
`Apple Inc. v. Koss Corp., IPR2021-00381, filed January 4, 2021,
`challenging U.S. Patent No. 10,491,982 B1;
`Apple Inc. v. Koss Corp., IPR2021-00592, filed March 2, 2021,
`challenging U.S. Patent No. 10,469,934 B2;
`Bose Corp. v. Koss Corp., IPR2021-00612, filed March 3, 2021,
`challenging the ’025 patent;
`Apple Inc. v. Koss Corp., IPR2021-00626, filed March 17, 2021,
`challenging the ’025 patent;
`Bose Corp. v. Koss Corp., IPR2021-00680, filed March 17, 2021,
`challenging U.S. Patent No. 10,469,934 B2;
`Apple Inc. v. Koss Corp., IPR2021-00679, filed March 22, 2021,
`challenging U.S. Patent No. 10,506,325 B1;
`Apple Inc. v. Koss Corp., IPR2021-00686, filed March 22, 2021,
`challenging U.S. Patent No. 10,491,982 B1; and
`Apple Inc. v. Koss Corp., IPR2021-00693, filed March 23, 2021,
`challenging U.S. Patent No. 10,469,934 B2.
`Paper 6, 1–2.
`
`
`1 Apple Inc. v. Koss Corp., IPR2021-00255, filed November 25, 2020, and
`Apple Inc. v. Koss Corp., IPR2021-00600, filed March 7, 2021, both
`challenging U.S. Patent 10,298,451 B1, are also pending.
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`IPR2021-00546
`Patent 10,206,025 B2
`
`C. The ’025 Patent
`The ’025 patent, titled “System with Wireless Earphones,” issued
`February 12, 2019, with claims 1–56, and claims priority to several
`applications dating to April 7, 2008.2 Ex. 1001, codes (45), (54), (60), (63),
`1:3–28, 18:2–24:56. The ’025 patent relates to “a wireless earphone that
`comprises a transceiver circuit for receiving streaming audio from a data
`source, such as a digital audio player or a computer, over an ad hoc wireless
`network.” Id. at 1:65–2:2. The ’025 patent defines an “ad hoc wireless
`network” as “a network where two (or more) wireless-capable devices, such
`as the earphone and a data source, communicate directly and wirelessly,
`without using an access point.” Id. at 3:2–5. In some embodiments there
`may be two discrete wireless earphones, one in each ear. Id. at 3:45–46.
`We reproduce Figure 2A of the ’025 patent below.
`
`
`Figure 2A illustrates a communication mode for a wireless earphone. Id. at
`2:27–29, 4:21–24. In particular, Figure 2A shows data source 20 in
`communication with earphone 10 over ad hoc wireless network 24. Id. at
`
`2 Although Petitioner does not concede that the challenged claims are
`entitled to the April 7, 2008, priority date, it does not assert that any
`challenged claim is not entitled to the benefit of this date. See Pet. 2.
`Therefore, for purposes of this Decision, we consider the effective filing date
`of the ’025 patent to be April 7, 2008.
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`Patent 10,206,025 B2
`4:24–26. Data source 20 may be a digital audio player (DAP), such as an
`MP3 player, an iPod, or a laptop computer. Id. at 4:30–34. “When in range,
`the data source 20 may communicate with the earphone 10 via the ad hoc
`wireless network 24 using any suitable wireless communication protocol,”
`including Bluetooth and other communication protocols. Id. at 4:54–59.
`In one embodiment, earphone 10 connects to network-enabled host
`server 40 via networks 30a, 42 so that host server 40 can transmit streaming
`digital audio to earphone 10. Id. at 5:54–60, Fig. 2D. Alternatively, host
`server 40 may transmit to earphone 10 a network address for streaming
`digital audio content server 70. Id. at 5:60–63, Fig. 2D. In this case,
`earphone 10 uses the received address to connect to content server 70 via
`networks 30a, 42 and receive digital audio from content server 70. Id. at
`5:64–67. Content server 70 may be an Internet radio station server. Id. at
`6:1–2. In addition, content server 70 may stream digital audio that it has
`received from data source 20 via networks 30b, 42. Id. at 6:5–11.
`Figure 3, reproduced below, depicts earphone 10 in more detail.
`
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`IPR2021-00546
`Patent 10,206,025 B2
`Figure 3 is a block diagram of a wireless earphone. Id. at 2:30–31, 6:26–27.
`Earphone 10 includes transceiver circuit 100, power source 102, microphone
`104, acoustic transducer 106 (e.g., a speaker), and antenna 108. Id. at 6:27–
`33. Transceiver circuit 100, power source 102, and acoustic transducer 106
`may be housed within the body of earphone 10. Id. at 6:33–36. Microphone
`104 and antenna 108 are external to the body. Id. at 6:36–38.
`D. Illustrative Claim
`Claim 1, the sole independent claim of the challenged claims, is
`reproduced below:
`1. A system comprising:
`a mobile, digital audio player that stores digital audio content;
`and
`a headphone assembly, separate from and in wireless
`communication with the mobile digital audio player,
`wherein the headphone assembly comprises:
`first and second earphones, wherein each of the first and
`second earphones comprises an acoustic transducer;
`an antenna for receiving wireless signals from the mobile,
`digital audio player via one or more ad hoc wireless
`communication links;
`a wireless communication circuit connected to the at least
`one antenna, wherein the at least one wireless
`communication circuit is for receiving and transmitting
`wireless signals to and from the headphone assembly;
`a processor;
`a rechargeable battery for powering the headphone
`assembly; and
`a microphone for picking up utterances by a user of the
`headphone assembly; and
`a remote, network-connected server that is in wireless
`communication with the mobile, digital audio player;
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`Patent 10,206,025 B2
`wherein the mobile, digital audio player is for transmitting
`digital audio content to the headphone assembly via the one
`or more ad hoc wireless communication links, such that the
`digital audio content received by the headphone assembly
`from the mobile, digital audio player is playable by the first
`and second earphones; and
`wherein the processor is for, upon activation of a user-control
`of the headphone assembly, initiating transmission of a
`request to the remote, network-connected server.
`Ex. 1001, 18:2–33.
`E. Asserted Grounds of Unpatentability
`Petitioner contends that the challenged claims would have been
`unpatentable on the following grounds:3
`Claim(s) Challenged
`35 U.S.C. §
`1, 2, 52
`103(a)
`3, 6, 8
`103(a)
`10
`103(a)
`11, 12, 20, 21, 29, 30,
`103(a)
`39–42, 53–56
`13, 16, 18, 22, 25, 27,
`31, 34, 36, 43, 46, 48 103(a)
`38, 51
`103(a)
`
`Reference(s)/Basis
`Haupt,4 Seshadri5
`Haupt, Seshadri, Paulson6
`Haupt, Seshadri, Rao7
`Haupt, Seshadri, Rosener8
`Haupt, Seshadri, Rosener,
`Paulson
`Haupt, Seshadri, Rosener, Rao
`
`
`3 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’025 patent has an
`effective filing date before the March 16, 2013, effective date of the
`applicable AIA amendments, we apply the pre-AIA version of 35 U.S.C.
`§ 103.
`4 WO 2006/042749 A2, published Apr. 27, 2006 (Ex. 1004) (including
`certified English translation).
`5 US 2006/0166716 A1, published July 27, 2006 (Ex. 1007).
`6 US 7,551,940 B2, issued June 23, 2009 (Ex. 1011).
`7 US 7,881,745 B1, issued Feb. 1, 2011 (Ex. 1009).
`8 US 2008/0076489 A1, published Mar. 27, 2008 (Ex. 1008).
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`IPR2021-00546
`Patent 10,206,025 B2
`Pet. 1–2. Petitioner supports its challenge with the Declaration of
`Dr. Jeremy Cooperstock (Ex. 1003).
`III. ANALYSIS
`A. Level of Ordinary Skill in the Art
`In determining whether an invention would have been obvious at the
`time it was made, 35 U.S.C. § 103 requires us to resolve the level of
`ordinary skill in the pertinent art at the time of the effective filing date of the
`claimed invention. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). The
`person of ordinary skill in the art is a hypothetical person who is presumed
`to have known the relevant art. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed.
`Cir. 1995). Factors that may be considered in determining the level of
`ordinary skill in the art include, but are not limited to, the types of problems
`encountered in the art, the sophistication of the technology, and educational
`level of active workers in the field. Id. In a given case, one or more factors
`may predominate. Id.
`Petitioner cites to the testimony of its expert, Dr. Cooperstock, as
`defining the level of ordinary skill in the art. Pet. 4 n.1 (citing Ex. 1003
`¶¶ 33–34). Dr. Cooperstock testifies that a person having ordinary skill in
`the art “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” and “[s]uperior education could compensate
`for a deficiency in work experience, and vice-versa.” Ex. 1003 ¶ 33. Patent
`Owner does not dispute Petitioner’s proposed level of ordinary skill in the
`art in its Preliminary Response, nor does it propose a different level of skill.
`Based on our review of the record before us, we find that Petitioner’s
`stated level of ordinary skill in the art is reasonable because it is consistent
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`Patent 10,206,025 B2
`with the evidence of record, including the asserted prior art. Accordingly,
`for the purposes of this Decision, we adopt Petitioner’s definition.
`B. Claim Construction
`In inter partes reviews, the Board interprets claim language using the
`district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d
`1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2020). Under
`that standard, we generally give claim terms their ordinary and customary
`meaning, as would be understood by a person of ordinary skill in the art at
`the time of the invention, in light of the language of the claims, the
`specification, and the prosecution history. See Phillips, 415 F.3d at
`1313–14. Although extrinsic evidence, when available, may also be useful
`when construing claim terms under this standard, extrinsic evidence should
`be considered in the context of the intrinsic evidence. See id. at 1317–19.
`Petitioner does not propose any term for construction and suggests
`that there is no term that requires construction to resolve the controversy.
`Pet. 4 (citing Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361
`(Fed. Cir. 2011)). Patent Owner does not discuss claim construction or
`propose any term for construction. See generally Prelim. Resp. Thus, on the
`present record, we do not discern a need to construe explicitly any claim
`language because doing so would have no effect on our analyses below of
`Petitioner’s asserted grounds and will not assist in resolving the present
`controversy between the parties. See Nidec Motor Corp. v. Zhongshan
`Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that
`“we need only construe terms ‘that are in controversy, and only to the extent
`necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci.
`& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
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`IPR2021-00546
`Patent 10,206,025 B2
`C. Asserted Obviousness Based on Haupt and Seshadri
`Petitioner asserts that claims 1, 2, and 52 are unpatentable under
`35 U.S.C. § 103(a) based on Haupt and Seshadri. Pet. 4–37. Patent Owner
`provides arguments addressing all of Petitioner’s asserted grounds of
`unpatentability. Prelim. Resp. 22–46. We first summarize the references
`and then address the parties’ contentions.
`1. Haupt
`Haupt describes “WLAN headphones” to which data (e.g., audio data)
`can be transmitted wirelessly from a server through an access point.
`Ex. 1004, 2:22–3:7. When the headphones are within transmission range of
`a wireless local area network (WLAN) access point, a connection is made to
`the server, which permits the headphones to receive wirelessly data from the
`server. Id. at 2:22–26.
`Figure 1 of Haupt is reproduced below.
`
`
`Figure 1 illustrates a data transfer system. Id. at 5:23–24, 6:16–17. As
`shown in Figure 1, private sector server PS is connected to public sector
`
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`IPR2021-00546
`Patent 10,206,025 B2
`server OS over the Internet. Id. at 6:17–18. Access point APP is hardwired
`to private server PS. Id. at 6:18–19. Access point APP has a WLAN
`interface and communicates wirelessly with playback device WG located
`within the transmission range of access point APP. Id. at 6:18–21. In
`addition, access point APO and public server PO are both hardwired to the
`Internet. Id. at 6:21–24. Access point APO has a WLAN interface and
`communicates wirelessly with playback device WG located within its
`transmission range. Id. at 6:24–25.
`In one embodiment, playback device WG comprises headphones with
`a WLAN interface to communicate directly with an access point. Id. at
`7:31–8:2, Fig. 2. External operating element BE communicates with
`playback device WG through a hardwired or wireless connection. Id. at
`8:13–15. In another embodiment, operating element BE has the WLAN
`interface and communicates wirelessly with an access point. Id. at 8:22–24,
`Fig. 3. Data received by operating element BE are transferred, either by
`hardwire or wirelessly, to headphones WG. Id. at 8:24–25.
`2. Seshadri
`Seshadri describes modular wireless headset 10, which includes
`wireless earpiece 12 and wireless microphone 14 that communicate
`wirelessly with each other. Ex. 1007 ¶ 24, Fig. 1. In addition, earpiece 12
`and microphone 14 communicate wirelessly with base unit 16. Id. Base unit
`16 “may be a cellular telephone, wire line telephone, laptop computer,
`personal computer, personal digital assistant, etc.” Id. ¶ 24. Base unit 16
`may couple the headset to multiple playback devices, audio streams, or voice
`communication networks. Id. Earpiece 12, microphone 14, and base unit 16
`may each support “one or more versions of the Bluetooth Specification or
`other wireless protocols.” Id. ¶ 30.
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`Patent 10,206,025 B2
`Figure 3 of Seshadri is reproduced below.
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`Figure 3 depicts the earpiece of the modular headset paired with the base
`unit to automatically connect to resources over a transceiver. Id. ¶ 35. For
`example, “wireless headset 10 may be wirelessly coupled with any of the
`devices 30–37 and act as the headset communicatively coupled and
`registered to the devices 30–37.” Id. ¶ 40. These devices may include “wire
`line telephone 37, Ethernet telephone 35, personal digital assistant 30,
`personal computer 32, laptop computer 34 and/or cellular telephone 36.”
`Id. ¶ 43. Each of devices 30–37 “includes piconet RF interface 38 and/or
`wireless interface 39.” Id. ¶ 40. Piconet RF interface 38 allows point-to-
`point communication between devices, while wireless interface 39 enables
`indirect communication via access point 21. Id. ¶ 42.
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`3. Independent Claim 1
`Petitioner first argues that it would have been obvious to one of
`ordinary skill in the art “to modify Haupt based on the teachings of Seshadri
`such that Haupt’s WLAN headphones include the capability to not only
`communicate with servers via WLAN (as taught by Haupt), but to also
`communicate with local audio sources via both WLAN and ad-hoc networks
`(as taught by Seshadri).” Pet. 8–9 (citing Ex. 1003 ¶ 43); see also id. at 12
`(asserting one of ordinary skill in the art would have found it obvious to
`modify Haupt’s wireless headphones “so that they access both remote
`servers via WLAN (as taught by Haupt) and local devices such as PDAs and
`MP3 players via either WLAN or ad-hoc network, (as taught by Seshadri)”
`(citing Ex. 1003 ¶ 70)). According to Petitioner, one of ordinary skill in the
`art would have been motivated to modify Haupt’s wireless headphones in
`this manner “to allow the headphones to communicate with these devices
`irrespective of whether a WLAN access point is available.” Id. at 11 (citing
`Ex. 1003 ¶¶ 53–54).
`Petitioner next provides analysis purporting to show where each
`limitation recited in independent claim 1 is disclosed by the combination of
`Haupt and Seshadri. Id. at 11–32. Regarding the limitation “a mobile,
`digital audio player that stores digital audio content,” Petitioner asserts that
`the local devices taught by Seshadri may include a cellular telephone, wire
`line telephone, laptop computer, personal computer, personal digital
`assistant, DVD player, MP3 player, CD player, cassette player, or similar
`devices. Id. at 13 (citing Ex. 1007 ¶¶ 24, 50). Petitioner also asserts that the
`MP3 player taught by Seshadri was a “mobile, digital audio player that
`stores digital audio content,” and other devices disclosed by Seshadri, such
`as a cellular phone or laptop computer, stored digital audio content. Id.
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`(citing Ex. 1003 ¶ 72). Petitioner thus contends that the combination of
`Haupt and Seshadri discloses a mobile digital audio player, in the form of
`one of Seshadri’s local devices 30–37, that connects to headphones via an ad
`hoc network. Id. (citing Ex. 1003 ¶ 72).
`Claim 1 also recites “a remote, network-connected server that is in
`wireless communication with the mobile, digital audio player.” Ex. 1001,
`18:22–23. For this limitation, Petitioner argues that “Haupt describes ‘a data
`transfer system’ that includes various servers (e.g., private and public
`servers) that communicate information wirelessly using one or more access
`points as well as generally via the Internet.” Pet. 27 (citing Ex. 1004, 6:16–
`7:5, 7:30–8:6). Petitioner also argues that the modified headphones of the
`combination of Haupt and Seshadri “would be configured to connect with
`any of Seshadri’s local devices 30–37, including a PDA 30 or cellphone 36
`via either WLAN or ad-hoc network, using their transmitter-receiver
`(element EE).” Id. at 28 (citing Ex. 1003 ¶ 106). According to Petitioner,
`“Seshadri describes that these mobile, digital audio players would have
`themselves been configured to communicate with remote network-connected
`servers, like the public server OS taught by Haupt.” Id. (citing Ex. 1003
`¶ 107). Petitioner then contends that one of ordinary skill in the art would
`have found it obvious that Seshadri’s PDA 30 or cellphone 36 “would be
`able to communicate with and receive audio files from a server (e.g., public
`server OS) in the same manner as the operating element BE taught by Haupt
`with respect to FIG. 3.” Id. at 29 (citing Ex. 1004, 9:2–8, 10:7–24; Ex. 1003
`¶ 106).
`As articulated by Petitioner, this combination does not simply
`contemplate a wireless headset in communication with a mobile, digital
`audio player, which, in turn, is connected to any arbitrary remote, network-
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`connected server. Rather, Petitioner’s proposed combination expressly is
`limited to a system in which a headphone assembly communicates
`wirelessly with a server on a network to receive digital audio content from
`that server (per Haupt) and, separately, connects to a mobile, digital audio
`player (per Seshadri), which, in turn, communicates with the same remote,
`network-connected server (Haupt’s OS or PS) that provides the digital audio
`content to the headphone assembly. This is consistent with Petitioner’s
`contentions for claim 2, which requires, inter alia, “in a second audio play
`mode, the earphones play audio content streamed from the remote, network-
`connected server.” To show that its combination renders obvious claim 2,
`Petitioner would need to show that the same server introduced in claim 1
`(communicating with the digital audio player of claim 1) also streams the
`audio content to the earphones. In particular, Petitioner identifies private
`server PS or public server OS of Haupt as the remote, network-connected
`server of claim 2. Pet. 33–34.
`Patent Owner argues that Petitioner’s assertion that “Seshadri
`describes that these mobile, digital audio players would have themselves
`been configured to communicate with remote network-connected servers,
`like the public server OS taught by Haupt” is “an unsubstantiated
`conclusion” lacking any articulated “reason or rationale.” Prelim. Resp. 25
`(citing Pet. 28). Patent Owner contends that Seshadri does not disclose that
`“the mobile DAP (e.g., Seshadri’s ‘base unit’) is connected to a server.” Id.
`at 26. We agree with Patent Owner.
`Petitioner only points to its expert’s testimony and paragraph 24 of
`Seshardi to support its assertion. Pet. 28–29 (citing Ex. 1003 ¶ 107; quoting
`Ex. 1007 ¶ 24). Seshardi discloses that “[b]ase unit 16 may directly couple
`the headset to multiple playback devices, audio streams or voice
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`communication networks such as radio, cellular, wireless voice or packet
`data, public switched telephone networks (PSTN), private branch exchanges
`or others known to those skilled in the art.” Ex. 1007 ¶ 24. As such,
`Seshadri discloses a direct coupling to the headset but not to a server. To
`the extent Petitioner’s position is that Seshadri’s devices (at least some of
`which Petitioner contends are “digital audio players”) must be configured to
`wirelessly communicate with remote servers because they wirelessly
`communicate with the headset and, thus, must be configured to communicate
`with any wireless device, we are not persuaded that this configuration would
`have caused one of ordinary skill in the art to further modify the
`combination of Haupt and Seshadri to provide wireless communication
`between Seshadri’s devices and Haupt’s servers OS and PS. At best,
`Petitioner establishes that Seshadri’s devices are capable of wirelessly
`communicating with the servers. Such capability, however, is not sufficient
`to have led one of ordinary skill in the art to make the proposed modification
`in which the digital audio player wirelessly communicates with the specific
`OS or PS servers of Haupt.
`Regarding Dr. Cooperstock’s testimony, the first portion of the
`testimony on this point merely repeats the Petition’s statements, which are
`not persuasive for the reasons discussed above. Ex. 1003 ¶ 107 (citing
`Ex. 1007 ¶ 24). Dr. Cooperstock does add that
`Seshadri describes that the base unit 16 may couple to a “VoIP”
`network. [Ex. 1007 ¶ 50]. In other words, like . . . Haupt’s
`WLAN headphones, the mobile, digital audio players taught by
`Seshadri may also engage in voice over IP (e.g., by coupling with
`a public server that supports voice over IP, like the one described
`in Haupt).
`
`Id.
`
`16
`
`16
`
`
`
`IPR2021-00546
`Patent 10,206,025 B2
`The relied-on passage of Seshadri describes that various wireless
`protocols may be used “when base unit 16 couples to a telephone network
`(PSTN, cellular, satellite, WLAN, VoIP, etc.).” Ex. 1007 ¶ 50. To the
`extent Dr. Cooperstock is suggesting that this disclosure indicates that base
`unit 16 must be coupled with a server that supports VoIP, this does not
`support Petitioner’s proposed combination, in which the digital audio player
`must communicate with specific servers described in Haupt, not any
`arbitrary server. Furthermore, although Haupt makes some references to
`voice over IP (see Ex. 1004, 9, 15, 16, 19), we are not directed to any
`disclosure in Haupt that supports the contention that the public server
`described in Haupt supports voice over IP. Accordingly, we are not
`persuaded that paragraph 50 of Seshadri would have suggested to one of
`ordinary skill in the art to further modify the combination of Haupt and
`Seshadri to provide wireless communication between Seshadri’s devices and
`Haupt’s servers.
`We also agree with Patent Owner’s argument that “Petitioner provides
`no rationale or explanation as to why a person having ordinary skill in the art
`. . . would have thought it obvious to modify the hypothetical Haupt-
`Seshadri combination to realize the [wireless communication between the
`server and digital audio player] of claim 1.” See Prelim. Resp. 27. As noted
`above, Petitioner argues that one of ordinary skill in the art would have
`found it obvious that Seshadri’s PDA 30 or cellphone 36 “would be able to
`communicate with and receive audio files from a server (e.g., public server
`OS) in the same manner as the operating element BE taught by Haupt with
`respect to FIG. 3.” Pet. 29 (citing Ex. 1004, 9:2–8, 10:7–24; Ex. 1003
`¶ 106) (emphasis added). In other words, Petitioner appears to assert that it
`would have been obvious to one of ordinary skill in the art to further modify
`
`17
`
`17
`
`
`
`IPR2021-00546
`Patent 10,206,025 B2
`the combination of Haupt and Seshadri described on pages 8–11 of the
`Petition by providing wireless communication between Seshadri’s devices or
`digital audio players and Haupt’s servers OS or PS.
`As an initial point, Petitioner’s assertion that Seshadri’s devices
`“would be able” to communicate with an arbitrary server is insufficient to
`support the proposed further modification because “obviousness concerns
`whether a skilled artisan not only could have made but would have been
`motivated to make the combinations or modifications of prior art to arrive at
`the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073
`(Fed. Cir. 2015) (citing InTouch Technologies, Inc. v. VGO
`Communications, Inc., 751 F.3d 1327, 1352 (Fed.Cir.2014)).
`Moreover, we are not persuaded that Petitioner sufficiently explains
`why a person of ordinary skill would have made the proposed modification.
`Petitioner asserts that Seshadri’s base unit 16 would be able to communicate
`with a server “in the same manner” as operating element BE in Figure 3 of
`Haupt, but does not discuss Haupt’s Figure 3 embodiment or explain
`sufficiently how operating element BE in this embodiment communicates
`with a server. As such, it is difficult to decipher exactly what Petitioner
`means by communicating “in the same manner” as operating element BE in
`Haupt’s Figure 3. We, thus, find that Petitioner’s assertion lacks sufficient
`specificity as to why one of ordinary skill in the art would have made the
`proposed modification. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d
`1356, 1363 (Fed. Cir. 2016) (“In an IPR, the petitioner has the burden from
`the onset to show with particularity why the patent it challenges is
`unpatentable.” (citing 35 U.S.C. § 312(a)(3)); see also Intelligent Bio-
`Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir.
`2016) (“It is of the utmost importance that petitioners in the IPR proceedings
`
`18
`
`18
`
`
`
`IPR2021-00546
`Patent 10,206,025 B2
`adhere to the requirement that the initial petition identify ‘with particularity’
`the ‘evidence that supports the grounds for the challenge to each claim.’”
`(quoting 35 U.S.C. § 312(a)(3))).
`Dr. Cooperstock’s testimony on this point merely repeats the
`Petition’s assertion and is a conclusory statement not supported sufficiently
`by objective evidence or analysis. Ex. 10032 ¶ 108. For this reason, we do
`not credit this testimony. See 37 C.F.R. § 42.65(a) (“Expert testimony that
`does not disclose the underlying facts or data on which the opinion is based
`is entitled to little or no weight.”); see also Nobel Biocare Services AG v.
`Instradent USA, Inc., 903 F.3d 1365, 1382 (Fed. Cir. 2018) (explaining that
`the Board can reject arguments based on expert testimony that lacks
`specificity or detail).
`For the reasons discussed above, we determine that Petitioner has not
`met its burden to show a reasonable likelihood that it would prevail with
`respect to the contention that claim 1 is unpatentable over the combination
`of Haupt and Seshadri.
`
`4. Claims 2 and 52
`Claims 2 and 52 depend from claim 1 and, thus, contain all the
`limitations of claim 1. Petitioner’s challenges to dependent claims 2 and 52
`do not overcome the deficiencies discussed above with respect to the
`challenge to independent claim 1. See Pet. 32‒37. Accordingly, for the
`same reasons discussed above in connection with claim 1, we find that
`Petitioner has not met its burden to show that is more likely than not that
`claims 2 and 52 are unpatentable over the combination of Haupt and
`Seshadri.
`
`19
`
`19
`
`
`
`IPR2021-00546
`Patent 10,206,025 B2
`
`D. Remaining Grounds
`Petitioner challenges claims 3, 6, and 8 as obvious under 35 U.S.C.
`§ 103(a) over Haupt, Seshadri, and Paulson; claim 10 as obvious over Haupt,
`Seshadri, and Rao; claims 11, 12, 20, 21, 29, 30, 39–42, and 53–56 as
`obvious over Haupt, Seshadri, and Rosener; claims 13, 16, 18, 22, 25, 27,
`31, 34, 36, 43, 46, and 48 as obvious over Haupt, Seshadri, Rosener, and
`Paulson; and claims 38 and 51 as obvious over Haupt, Seshadri, Rosener,
`and Rao. Pet. 37–68. Each of these claims depends from independent claim
`1 and, thus, contains all the limitations of claim 1. Thus, for each of these
`grounds, Petitioner relies in large part on the same assertions presented in
`the challenge of independent claim 1 based on Haupt and Seshadri,
`discussed above, in support of its contentions that claims 3, 6, 8, 10–13, 16,
`18, 20–22, 25, 27, 29–31, 34, 36, 38–43, 46, 48, 51, and 53–56 would have
`been obvious over Haupt and Seshadri in combination with Paulson, Rao,
`and/or Rosener. Id.
`Accordingly, each of these additional grounds suffers from the same
`deficiencies noted above (see supra § III.C.3) with respect to the proposed
`combination of Haupt and Seshadri. Therefore, for the same reasons
`discussed above, we determine that the information presented in the Petition
`fails to establish a reasonable likelihood that Petitioner would prevail in
`showing that claims 3, 6, 8, 10–13, 16, 18, 20–22,
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