UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner,
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`v.
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`KOSS CORPORATION,
`Patent Owner.
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`Case IPR2021-00381
`Patent 10,491,982
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`

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`Case IPR2021-00381
`Docket No. 50095-0019IP1
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`2. 
`
`3. 
`
`4. 
`
`B. 
`
`TABLE OF CONTENTS
`I.  INTRODUCTION .................................................................................................. 6 
`II. THE PRIOR ART RENDERS CLAIM 1 OBVIOUS ........................................... 8 
`A.  A POSITA Would Have Had A Reasonable Expectation Of Success
`In Combining The Prior Art .................................................................. 8 
`A POSITA Would Have Been Able To Select A Proper
`1. 
`Transducer ................................................................................. 10 
`Rosener’s Disclosure of A/D Converter and Buffer Does Not
`Cause Difficulty In Implementing The Combination Earphones
` ................................................................................................... 10 
`Rosener Discloses Data Source 922 As A Microphone/Sensor
`In An Earphone ......................................................................... 11 
`A POSITA Would Have Had A Reasonable Expectation of
`Success in Using Circuit Boards in Combining Rosener and
`Hankey ...................................................................................... 12 
`Rosener-Hankey Combination Teaches A Microphone In Each Of The
`Two Earphones .................................................................................... 13 
`Blair Declaration Does Not Disturb The Rosener-Hankey-Dyer
`Combination ........................................................................................ 14 
`The Blair Declaration Is Unsubstantiated And Fails To Provide
`1. 
`Substantial Evidence ................................................................. 15 
`Rosener-Hankey-Dyer Combination Implicates An Operable
`Design ....................................................................................... 18 
`III.  ROSENER-HANKEY-HAUPT COMBINATION TEACHES THE
`“REMOTE NETWORK SERVER” OF CLAIM 4 ........................................ 18 
`The Petition Discussed A Master/Slave Configuration That Addressed
`A. 
`The Features Of Claim 4 ..................................................................... 19 
`The Grounds Advanced in This Proceeding Set This Proceeding Apart
`From IPR2021-00546 .......................................................................... 21 
`IV.  ROSENER-HANKEY-PRICE COMBINATION TEACHES THE
`FIRMWARE UPGRADE OF CLAIM 14 ...................................................... 21 
`A.  Koss Improperly Imports Teachings from the Specification To Claim
`14 ......................................................................................................... 21 
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`2. 
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`C. 
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`B. 
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`i
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`Case IPR2021-00381
`Docket No. 50095-0019IP1
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`B.  A POSITA Would Have Understood How To Implement The
`Rosener-Hankey Combination To Avoid Any Power Consumption
`Issues Relating to Firmware Upgrades ............................................... 22 
`V.  ROSENER-HANKEY-PAULSON COMBINATION TEACHES THE
`MICROPHONE ACTIVATION RECITED IN CLAIM 15. ......................... 24 
`VI.  ROSENER-HANKEY COMBINATION TEACHES THE “DIGITAL
`SIGNAL PROCESSOR” OF CLAIM 19. ...................................................... 26 
`A.  Koss Improperly Narrows Rosener’s Disclosure ................................ 26 
`B.  Koss’s Interpretation of Rosener Contradicts Its Disclosure of “Signal
`Processing Functions” ......................................................................... 27 
`C.  Koss Improperly Construes “Digital Signal Processor” In Attempting
`To Distinguish A DAC From A DSP .................................................. 28 
`Rosener Discloses Signal Conditioning Circuits That Perform The
`Functions Patent Owner Asserts Are Performed By A DSP .............. 29 
`VII.  SECONDARY CONSIDERATIONS ............................................................ 30 
`A.  Koss Has Not Established Prima Facie Nexus ................................... 31 
`B.  Unclaimed Features In The AirPod Products Confirms Lack of Nexus
` ............................................................................................................. 31 
`C.  Koss Fails To Show That The Secondary Considerations Evidence Is
`The Direct Result Of The Unique Characteristics Of The Challenged
`Claims .................................................................................................. 32 
`VIII. CONCLUSION ............................................................................................... 33 
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`D. 
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`ii
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`Case IPR2021-00381
`Docket No. 50095-0019IP1
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`LIST OF EXHIBITS
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`APPLE-1001
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`U.S. Patent No. 10,491,982 to Koss, et al. (“the ’982 patent”)
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`APPLE-1002
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`Excerpts from the Prosecution History of the ’982 patent (“the
`Prosecution History”)
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`APPLE-1003
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`Declaration of Jeremy R. Cooperstock
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`APPLE-1004
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`U.S. Pat. App. Pub. No. 2008/0076489 (“Rosener”)
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`APPLE-1005
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`U.S. Pat. App. Pub. No. 2008/0166001 (“Hankey”)
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`APPLE-1006
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`U.S. Pat. No. 8,031,900 (“Dyer”)
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`APPLE-1007
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`U.S. Pat. No. 7,627,289 (“Huddart”)
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`APPLE-1008
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`U.S. Pat. App. No. 60,879,177 (“’177 Provisional”)
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`APPLE-1009
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`U.S. Pat. App. Pub. No. 2006/0026304 (“Price”)
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`APPLE-1010
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`U.S. Pat. No. 7,551,940 (“Paulson”)
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`APPLE-1011
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`U.S. Pat. No. 5,371,454 (“Marek”)
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`APPLE-1012
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`U.S. Pat. No. 7,027,311 (“Vanderelli”)
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`APPLE-1013
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`RESERVED
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`APPLE-1014
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`Plaintiff KOSS Corporations’ Preliminary Infringement
`Contentions, KOSS Corporation v. Apple Inc., 6:20-cv-00665
`(WDTX)
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`APPLE-1015
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`Example Order Governing Proceedings - Patent Case
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`APPLE-1016
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`Agreed [Proposed] Scheduling Order, KOSS Corporation v.
`Apple Inc., 6:20-cv-00665 (WDTX)
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`iii
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`Case IPR2021-00381
`Docket No. 50095-0019IP1
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`APPLE-1017
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`APPLE-1018
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`Katie Buehler, “Texas Patent Trials Halted Due to COVID-19
`Spike,” Law360, available at
`https://www.law360.com/ip/articles/1330855/texas-patent-
`trials-halted-due-to-covid-19-spike.
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`Scott McKeown, District Court Trial Dates Tend to Slip After
`PTAB Discretionary Denials, available at
`https://www.patentspostgrant.com/district-court-trial-dates-
`tend-to-slip-after-ptab-discretionary-denials/ (Jul. 24, 2020)
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`APPLE-1019
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`Transcript of November 5, 2020 Telephonic Hearing from
`Fintiv, Inc. v. Apple, Inc., Civil Action No. A-19-CV-1238
`(WDTX)
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`APPLE-1020
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`Certified Translation of WO 2006/042749 (“Haupt”)
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`APPLE-1021
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`Declaration of Seth Sproul ISO Motion for Pro Hac Vice
`Admission
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`APPLE-1022
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`Updated Declaration of Seth Sproul
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`APPLE-1023
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`Declaration of Michael Pieja ISO Motion for Pro Hac Vice
`Admission
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`APPLE-1024
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`Supplemental Declaration of Jeremy R. Cooperstock
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`APPLE-1025
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`Joseph C. McAlexander III Deposition Transcript, Dec. 14,
`2021
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`APPLE-1026
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`Apple Inc. v. Koss Corporation, IPR2021-00546, Pap. 10
`(PTAB Sep. 7, 2021)
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`APPLE-1027
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`U.S. Pat. No. 5,733,598 to Sera (“Sera”)
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`APPLE-1028
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`U.S. Pat. No. 7,281,328 to Lee (“Lee”)
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`APPLE-1029
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`U.S. Pat. No. 7,453,045 to Myoung (“Myoung”)
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`iv
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`APPLE-1030
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`U.S. Pat. No. 7,916,888 to Sapiejewski (“Sapiejewski”)
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`Case IPR2021-00381
`Docket No. 50095-0019IP1
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`v
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`Case IPR2021-00381
`Docket No. 50095-0019IP1
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`I.
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`INTRODUCTION
`Koss raises several arguments attempting to avoid the grounds advanced in
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`the Petition. Many of these arguments divert from the teachings of the prior art,
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`and focus on ancillary concepts, such as Koss’s characterizations of a POSITA’s
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`skill level and speculation of a POSITA’s capabilities. These diversions are
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`unsurprising and only confirm that, as explained in the Petition, the prior art
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`demonstrates unpatentability of claims 1-5 and 14-20 of the ’982 Patent
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`(“Challenged Claims”).
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`Koss’s primary argument against the challenge to claim 1 is that a POSITA
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`would have been unable to use Hankey’s component arrangement techniques to
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`implement Rosener’s earphones. This concern is misplaced because Koss’s
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`purported concepts relate to physical components that were all conventional as of
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`the ’982 patent’s priority date (the “Critical Date”). Indeed, because these
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`concepts were well-known, a POSITA could have identified relevant information
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`and thereby had a reasonable expectation of combining Rosener and Hankey
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`without invention. Koss’s secondary argument that Rosener does not teach
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`incorporating independent microphones in each of its earphones is at odds with
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`express disclosure of Rosener.
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`Further, Koss’s reliance on commercial success does not save claim 1. Even
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`assuming the AirPod Products embody claim 1 (which they do not), Koss’s
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`Case IPR2021-00381
`Docket No. 50095-0019IP1
`allegations of nexus are both factually and legally deficient. They are factually
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`deficient because Koss only analyzed a subset of claim features and ignored
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`several critical unclaimed features in the AirPod Products. They are also legally
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`deficient because Koss did not show that the sales of the AirPod Products were a
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`direct result of the unique characteristics of claim 1.
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`Koss also advances several arguments against grounds challenging the
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`dependent claims—none of which have any merit. For claims 4 and 5, Koss points
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`to the Board’s non-institution decision from a related IPR proceeding, but ignores
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`that the Petition is otherwise different from that proceeding. Koss’s arguments for
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`claim 14 assume a problem in power consumption for firmware upgrades but puts
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`forth no evidence to corroborate its existence. Regardless, a POSITA would have
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`still understood how to combine the prior art to avoid this issue. For claim 15,
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`Koss ignores that the Petition relies on Paulson for its disclosure of push-to-talk
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`functionality.
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`Koss’s efforts to save claims 19 and 20 also fail. Koss ignores Rosener’s
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`express disclosure of the signal conditioning circuit 916 being configured to
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`perform various “signal processing functions.”
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`Case IPR2021-00381
`Docket No. 50095-0019IP1
`II. THE PRIOR ART RENDERS CLAIM 1 OBVIOUS
`A. A POSITA Would Have Had A Reasonable Expectation Of
`Success In Combining The Prior Art
`Koss’s attempt to challenge the POSITA definition in the Petition is baseless
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`as confirmed by the Board’s adoption of the Petition’s definition. APPLE-1026,
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`33; see also Pet., 8, fn 2; Resp., 6-7, 13-14.
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`Koss argues that “[a] POSITA would not necessarily have any skills or
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`knowledge” for designing the transducer, arranging components, or powering a
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`wireless earphone. Resp., 6-7. But Cooperstock’s deposition testimony confirms
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`that a POSITA “would gain the knowledge in[] their academic background
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`preparing them to work in the wireless sector and wireless communication[]” and
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`“through their industry experience, they would gain relevant know-how that [let
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`them design wireless earphones].” KOSS-2037, 33:5-16. Cooperstock’s
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`supplemental declaration further confirms this point. APPLE-1024, ¶¶10-11.
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`Moreover, Koss’s expert, Joseph McAlexander III, admitted that Petitioner’s
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`“proposed standard and skill level seem reasonable given the context of the ’982
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`Patent.” KOSS-2038, ¶20. Koss claims that implementing a set of wireless
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`earphones would have required understanding of acoustic transducers, component
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`arrangement, and techniques to power wireless earphones. But the ‘982 Patent
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`itself contains no disclosure of any details of how to choose an acoustic transducer,
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`Case IPR2021-00381
`Docket No. 50095-0019IP1
`arrange components, or select a power source for wireless earphones. If the
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`identified POSITA could have implemented the ’982 patent’s wireless headphones
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`without undue experimentation based on its extremely thin disclosure of such
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`details, that can only be because understanding those details was within the
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`ordinary skill of the POSITA. A POSITA would thus also have had sufficient
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`skills and knowledge to understand, design, and implement the same concepts
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`based on disclosures in the prior art. APPLE-1024, ¶12.
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`Koss’s attempt to discredit Cooperstock’s testimony is similarly ineffective.
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`Koss alleges that “Cooperstock, who has skills and experience superior to a
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`POSITA, could not explain important aspects of the relied-upon prior art.” Id.,
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`12-15 (emphasis added). Yet these “important aspects” are merely implementation
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`details for “conventional concepts that a POSITA would have understood how to
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`implement with a reasonable expectation of success and without any undue
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`experimentation.” APPLE-1024, ¶13. Cooperstock confirmed the same in
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`deposition. KOSS-2037, 39:11-17.
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`Koss then alleges that “there would be no reasonable expectation of success
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`for the POSITA in making the combinations proposed by Petitioner.” Resp., 14-
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`20. Koss’s concern is misdirected for the reasons discussed below.
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`Case IPR2021-00381
`Docket No. 50095-0019IP1
`A POSITA Would Have Been Able To Select A Proper
`Transducer.
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`1.
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`Koss’s concern of a POSITA being unable to design and construct operative
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`wireless earphones is misplaced because experts of both parties have testified that
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`the properties, characteristics, and use of audio transducers (the transducer types
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`disclosed in Rosener) were all well-known by the Critical Date. KOSS-2037,
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`39:6-17, 38:3-9; APPLE-1025, 182:13-194:4. Public availability of this
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`information demonstrates that, contrary to Koss’s concern, a POSITA would have
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`been capable of selecting an appropriate transducer design and implementing them
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`in the Rosener-Hankey combination with a reasonable expectation of success.
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`APPLE-1024, ¶¶13-15.
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`A POSITA reading Rosener’s general disclosure of alternative transducers
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`would have understood them to be conventional transducers. Id. “The POSITA
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`could simply seek references that explain details on the operations of any of those
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`transducers.” Id. Even the ’982 patent “does not mention selecting a transducer as
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`an issue, suggesting that this was not a problem that required invention for it to be
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`solved as of the Critical Date.” Id.
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`2.
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`Rosener’s Disclosure of A/D Converter and Buffer Does Not
`Cause Difficulty In Implementing The Combination Earphones
`Koss asserts that a POSITA “would experience difficulty coordinating the
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`operation” of analog-to-digital (“A/D”) converter and data buffer disclosed in
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`10
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`Case IPR2021-00381
`Docket No. 50095-0019IP1
`paragraph [0039] of Rosener. Resp., 16-19. But this argument focuses only on a
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`single embodiment disclosed in paragraph [0039]. Rosener discloses other
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`embodiments in paragraphs [0040]-[0041] that use alternative techniques and do
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`not implicate Koss’s argument. Thus, a POSITA would not have had any
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`difficulty rising to the level of undue experimentation in implementing Rosener’s
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`separate earphones. APPLE-1024, ¶¶16-17. For example, a POSITA would have
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`had reasonable expectation of success in implementing Rosener’s disclosed
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`alternative technique of sub-carrier modulating technique. Id., (citing APPLE-
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`1004, ¶[0040]).
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`3.
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`Rosener Discloses Data Source 922 As A Microphone/Sensor
`In An Earphone
`Koss attempts to inject ambiguity into Rosener’s disclosure of data source
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`922. But “[a] POSITA reading Rosener diligently, would have understood that the
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`data source 922 in Rosener is a sensor/microphone incorporated within an
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`earphone.” APPLE-1024, ¶¶18-19; see also, APPLE-1003, ¶120. “Rosener
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`contemplates an arrangement in which each of receivers…of earphones 502, 504 is
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`replaced by a transceiver 900 to thereby allow the earphone to both receive
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`data…and transmit data received from a data source 922 (e.g., a microphone).”
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`APPLE-1024, ¶¶18-19. “Thus, data source 922 is part of each earphone 502, 504.”
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`Id.
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`11
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`Case IPR2021-00381
`Docket No. 50095-0019IP1
`“Indeed, a POSITA would have understood what each term means in the
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`context of the functions that the corresponding components perform.” APPLE-
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`1024, ¶20. “Considering that data source 922…provides an input that is
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`ultimately transmitted out of the earphone via antenna 906, a POSITA would have
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`understood that data source 922 is the same as the microphone/sensor-type data
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`source that Rosener contemplates for allowing ‘data to be sent back to an
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`external.’” Id.
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`4.
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`A POSITA Would Have Had A Reasonable Expectation of
`Success in Using Circuit Boards in Combining Rosener and
`Hankey
`Koss’s concern of a POSITA being unable to identify a suitable material for
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`a flexible electrical connector is unwarranted. Resp., 20. Experts of both parties
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`confirm that materials for flexible electrical connectors were well-known by the
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`Critical Date, and thus, a POSITA could have identified a suitable material without
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`invention. KOSS-2038, 199:15-201:4; see also id, ¶22 (identifying APPLE-1027,
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`APPLE-1028, and APPLE-1029 as prior art references disclosing exemplary
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`materials). Additionally, Dr. Cooperstock confirms that “given the prevalence of
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`materials used for flexible electrical connectors, a POSITA would have understood
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`that a circuit board can be utilized and implemented into a system without
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`requiring the POSITA to have specific knowledge about its underlying material.”
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`APPLE-1024, ¶21.
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`12
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`Case IPR2021-00381
`Docket No. 50095-0019IP1
`B. Rosener-Hankey Combination Teaches A Microphone In Each Of
`The Two Earphones
`Koss alleges that Rosener does not “teach that both earphones include its
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`own microphone.” Resp., 21, 22. But Koss ignores express language in Rosener’s
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`paragraph [0056] that states “either or both the first and second data sinks of the
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`various embodiments may include (or be coupled to) a data source such as, for
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`example, a sensor or a microphone to allow a data to be sent back to an external
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`electronic device” (emphasis added). The plain language makes clear that this
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`paragraph contemplates at least one embodiment in which both data sinks include a
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`microphone. APPLE-1024, ¶23.
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`Koss admits that paragraph [0056] of Rosener discloses both earphones
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`including “the same type of data source,” but then argues that the data source on
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`both earphones cannot be microphones because the rest of Rosener—including
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`Figures 13 and 9—does not focus on such an embodiment. Resp. 23-31.
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`Koss’s argument is ineffective because the Petition did not rely on Figure 13
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`for multiple microphones. Resp., 21. A POSITA reading Rosener would have
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`understood that the embodiment illustrated in Figure 13 is not intended to cover all
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`possible configurations contemplated in paragraph [0056] of Rosener, including
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`the embodiment where “both” the earphones have a microphone. APPLE-1024,
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`¶¶24-25.
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`
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`13
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`Case IPR2021-00381
`Docket No. 50095-0019IP1
`Regarding FIG. 9, while this figure illustrates only one earphone with data
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`source 922 (e.g., a microphone), a POSITA reading Rosener would have
`
`understood that the same illustration could apply to receivers of both earphones.
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`APPLE-1024, ¶26; see also APPLE-1025, 237:22-238:6 (McAlexander testifying
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`that Rosener makes it clear that each of receivers 604, 608 can be replaced with
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`transceiver 900). When replacing the receivers 604, 608 with transceiver 900, a
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`POSITA would have understood that the rest of circuitries shown in FIG. 9
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`(including data source 922) could be used for implementing each of the earphones
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`502, 504, resulting in including data source 922 in each of the earphones. APPLE-
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`1024, ¶26.
`
`A POSITA would have also understood that data source 922 represents a
`
`microphone because a microphone is a type of data source, as confirmed by
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`McAlexander’s testimony. APPLE-1025, 238:23-239:6; APPLE-1024, ¶27.
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`Further, Rosener makes it clear that data source 922 is an incorporated
`
`microphone, and not a digital audio player external to the earphone (e.g., data
`
`source 618). APPLE-1024, ¶28.
`
`C.
`
`Blair Declaration Does Not Disturb The Rosener-Hankey-Dyer
`Combination
`The Board need not reach the Rosener-Hankey-Dyer combination in finding
`
`claim 1 unpatentable because it found that “Rosener alone sufficiently
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`Case IPR2021-00381
`Docket No. 50095-0019IP1
`shows…insertion of a canalphone into a user’s ear.” APPLE-1026, 35. Koss
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`ignores this and attempts to disturb the Rosener-Hankey-Dyer combination through
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`declaration testimony from Nicholas Blair (“Blair Declaration”). However, Blair
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`Declaration should not be credited because it represents the testimony of an
`
`interested declarant. Mr. Blair is the Director of Products at KOSS—a party to this
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`proceeding. KOSS-2039, ¶1. Mr. Blair has a vested interest in the outcome of this
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`IPR proceeding and is therefore not a disinterested declarant. Id., ¶21. Indeed, the
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`fact that KOSS is forced to submit testimony from its employees only suggests that
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`it was not able to identify any other declarant willing to advance the points raised
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`in the Blair Declaration. Further, Koss’s reliance on Blair Declaration does not
`
`defeat the Rosener-Hankey-Dyer combination for several reasons discussed below.
`
`1.
`
`The Blair Declaration Is Unsubstantiated And Fails To Provide
`Substantial Evidence
`The Board should not give any weight to the Blair Declaration because its
`
`analysis is conclusory and unsubstantiated by any evidence corroborating its
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`purported incompatibility of the securing mechanism of Rosener and Hankey, and
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`the additional components from Dyer. The Board has previously declined to credit
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`expert testimony regarding purported incompatibility of prior art teachings that are
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`conclusory in nature—principally like those in the Blair Declaration. See
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`IPR2016-01512, Pap. 22, at 50 (PTAB Feb. 12, 2018 (not crediting expert
`
`
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`15
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`Case IPR2021-00381
`Docket No. 50095-0019IP1
`testimony regarding the incompatibility of prior art due to its conclusory nature
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`and failure to provide support for statements).
`
`For example, Blair Declaration makes several assumptions relating to how
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`the earphone in each of Rosener and Hankey is secured in a user’s ear without any
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`relevant support from either of these references. APPLE-1024, ¶¶29-31.
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`Blair Declaration’s assertion that “the bulbous outer earphone enclosure 115
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`would not fit in the user’s ear” and “would prevent eartip 121 from sufficiently
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`penetrating the ear canal” is also speculative, unmoored from any corroborating
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`evidence. KOSS-2039, ¶17. Hankey’s earbud is also bulbous, but as Blair
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`Declaration acknowledges, tends to stay on the user’s ear. APPLE-1024, ¶¶32-34;
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`KOSS-2039, ¶12. Blair Declaration improperly assumes that a POSITA would not
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`have been motivated to design the sub-enclosure 115 to imitate Hankey’s earbud,
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`which is supported by and secured in concha. APPLE-1024, ¶¶35-36.
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`Further, rather than being in conflict as alleged by the Blair Declaration, a
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`POSITA would have implemented a similar configuration for sub-enclosure 115 to
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`thereby enable the Rosener-Hankey-Dyer canalphone to benefit from both a
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`similar securing mechanism as purported for Hankey’s earbud—i.e., being secured
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`in the ear concha—and the securing mechanism purported for Dyer’s
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`canalphone—i.e., being secured in the ear canal. APPLE-1024, ¶¶33-34. The
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`Supreme Court’s decision in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
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`Case IPR2021-00381
`Docket No. 50095-0019IP1
`(2007) “does not support [the] theory that a person of ordinary skill can only
`
`perform combinations of a puzzle element A with a perfectly fitting puzzle element
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`B. To the contrary, KSR instructs that the obviousness inquiry requires a flexible
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`approach,” recognizing that “‘[a] person of ordinary skill is also a person of
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`ordinary creativity, not an automaton.’” ClassCo, Inc. v. Apple, Inc., 838 F.3d
`
`1214, 1219 (Fed. Cir. 2016).
`
`Moreover, compared to the portion of the Rosener-Hankey-Dyer canalphone
`
`that is close to the user’s ear, the elongated extension would not weigh much, and
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`the asserted torque, therefore, would not be “significant” as Blair Declaration
`
`asserts. APPLE-1024, ¶¶35-36 (citing KOSS-2039, ¶18). Similar
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`configurations—with an eartip, a large body portion that holds electronic
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`components, and an elongated extension—were also well-known and used by
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`skilled artisans before the 982’s disclosure, suggesting that Blair’s purported
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`torque issue was not “significant.” Id., (citing APPLE-1030).
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`Blair Declaration also fails to explain how the ‘982 Patent’s proposed
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`canalphone shown in FIG. 1B would differentiate from the proposed Rosener-
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`Hankey-Dyer’s straight body. APPLE-1024, ¶32.
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`Case IPR2021-00381
`Docket No. 50095-0019IP1
`Rosener-Hankey-Dyer Combination Implicates An Operable
`Design
`
`2.
`
`
`
`
`Blair Declaration only asserts that the Rosener-Hankey-Dyer canalphone
`
`
`
`
`
`would not be an ideal design. KOSS-2039, ¶¶17, 20. A POSITA at least would
`
`have contemplated the proposed design as an operable embodiment, even if it is
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`inferior to other designs regarding how it fits or how long it stays in user’s ear.
`
`APPLE-1024, ¶¶37-38. As McAlexander testified, a POSITA would have viewed
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`a canalphone to have less tendency to dislodge as compared to an earbud.
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`APPLE-1025, 145:19-146:24. Thus, a POSITA would have recognized that
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`Rosener’s disclosure of a canalphone could be implemented in the Rosener-
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`Hankey combination as advanced in the Petition to provide a superior securing
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`mechanism than an earphone configuration, like that disclosed in Hankey.
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`Notably, Koss did not argue that combining the relevant teachings of Rosener and
`
`Hankey as in the device recited in the Challenged Claims would have been
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`“uniquely challenging or difficult for one of ordinary skill in the art.” See
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`Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)
`
`III. ROSENER-HANKEY-HAUPT COMBINATION TEACHES THE
`(citing KSR, 550 U.S. at 418–19)
`“REMOTE NETWORK SERVER” OF CLAIM 4
`Koss asserts that Petitioner has not shown that the same remote network
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`server that is in communication with the earphone is also in communication with
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`the mobile digital audio player (DAP) of claim 1. Resp., 48-49. Koss also
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`Case IPR2021-00381
`Docket No. 50095-0019IP1
`purports that the Petition’s grounds for claim 4 are deficient for the same reasons
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`that led to non-institution in IPR2021-00546. Resp., 50-51. But KOSS is wrong
`
`because it ignores that the Petition applied specific audio forwarding feature for a
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`master/slave configuration of Rosener-Hankey-Haupt combination that were not
`
`at-issue in IPR2021-00546. See Pet., 61-66.
`
`A. The Petition Discussed A Master/Slave Configuration That
`Addressed The Features Of Claim 4
`In the master/slave configuration discussed in the Petition, the headphone
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`recited in claim 4 is mapped to a slave headphone (or Playback Device_1), and the
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`mobile DAP recited in claim 4 is mapped to a master headphone (or Playback
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`Device_2). Pet., 61-66. The master would then perform “as a local server,
`
`providing the stored audio files to the slave.” Id. As illustrated below, the same
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`remote network server that communicates with the slave (i.e., the headphone), is
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`also in communication with the master (i.e., the mobile DAP). Id.; APPLE-1024,
`
`¶¶39-42.
`
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`Case IPR2021-00381
`Docket No. 50095-0019IP1
`
`
`
`A POSITA would have understood that the master earphone in Haupt is
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`another example of Rosener’s data source 618 (which was mapped to mobile DAP
`
`in claim 1) because the master earphone is a device that sends audio to another
`
`earphone, which is the same function that Rosener lists for data source 618.
`
`APPLE-1024, ¶43.
`
`In the context of Rosener’s teachings, a POSITA would have also
`
`understood that Rosener’s data source 618 would be capable of communicating
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`with a remote network server. The examples that Rosener provides for data source
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`618 would have been generally recognized as devices capable of communicating
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`with a remote network server. APPLE-1024, ¶¶41-44; see also Pet., 51 (citing
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`APPLE-1004, ¶[0030]).
`
`
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`B.
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`Case IPR2021-00381
`Docket No. 50095-0019IP1
`The Grounds Advanced in This Proceeding Set This Proceeding
`Apart From IPR2021-00546
`The Board should not adopt the rationale used to deny institution in
`
`IPR2021-00546 because the grounds of invalidity in each proceeding have
`
`substantial differences, including applications of different prior art references.
`
`Further, the above-discussed master/slave configuration was not at-issue in
`
`IPR2021-00546. The Petition and Cooperstock’s Declaration also elaborated on
`
`the benefits of using the master/slave configuration, which was missing in
`
`IPR2021-00546. See Pet., 67-72; APPLE-1003, ¶¶131-151.
`
`IV. ROSENER-HANKEY-PRICE COMBINATION TEACHES THE
`FIRMWARE UPGRADE OF CLAIM 14
`A.
`Koss Improperly Imports Teachings from the Specification To
`Claim 14
`Koss focuses on attempting to distinguish claim 14 by improperly importing
`
`a system-on-chip (SoC)—that purportedly would have “lower power
`
`requirements”—from the ’982 patent into the claim language. Resp., 54-55.
`
`Claim 14 does not recite any feature corresponding to an integrated circuit or a
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`SoC, much less require one to provide power for firmware upgrades.
`
`McAlexander confirmed that the ‘982 patent specification does not limit
`
`implementation of the ‘982 patent’s transceiver circuitry to an SoC. APPLE-1025,
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`181:11-182:18; 190:20-191:1. Thus, neither claim 14 nor any other part of the
`
`982 specification provides any hint or suggestion that firmware upgrades have a
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`power
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`Case IPR2021-00381
`Docket No. 50095-0019IP1
`issue that requires an inventive SoC implementation as now asserted by Koss.
`
`APPLE-1024, ¶¶45-46.
`
`B.
`
`A POSITA Would Have Understood How To Implement The
`Rosener-Hankey Combination To Avoid Any Power Consumption
`Issues Relating to Firmware Upgrades
`Koss asserts that “updating a device’s firmware requires that the device be
`
`sufficiently powered.” Resp., 53. KOSS then alleges that Rosener’s battery would
`
`be unreliable for upgrading firmware, and modifying Rosener’s earphones based
`
`on Hankey’s way of powering “would require a substantial modification of
`
`Rosener’s earphones.” Id, 53-54. However, Koss does not provide any support for
`
`this allegation. APPLE-1024, ¶¶47-48.
`
`First, Koss does not explain its reasoning for assuming an unreliable battery
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`for Rosener. This is not surprising, since Rosener lacks any disclosure indicating
`
`that the battery would be unable to provide sufficient power during a firmware
`
`upgrade. See APPLE-1025, 179:1-180:13 (confirming that Rosener does not
`
`address power capability). And, as discussed below, Koss’s assumption is also
`
`wrong because a POSITA would have understood how to implement configuration
`
`options that would have addressed any power consumption issues associated with
`
`firmware upgrades. APPLE-1024, ¶¶49-50.
`
`Second, even if Koss were correct that certain types of firmware upgrades
`
`involve high power consumption, a POSITA would have known how to implement
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`Case IPR2021-00381
`Docket No. 50095-0019IP1
`the prior art combinations to avoid this issue. For example, Koss does not consider
`
`that POSITA would have understood that a battery of the Rosener-Hankey
`
`combination could be charged by an external power source when providing
`
`firmware upgrade functionality. See Resp., 53. Indeed, a POSITA could have
`
`simply inserted the Rosener-Hankey canalphone in the docking station that the
`
`Petition described with respect to claim 2, to supply the power needed during the
`
`firmware upgrade. APPLE-1024, ¶49 (citing to Petition 53-55). This solution
`
`“would have also been within the capability of a POSITA as at least Hankey
`
`suggests providing firmware upgrade capability when a device is plugged in for
`
`power to ensure continued power through the upgrade process.” APPLE-1024,
`
`¶50. Koss also recognizes this solution as it states that “devices will not download
`
`firmware updates unless they are plugged in for power.” Resp., 53.
`
`Even if Koss argues that claim 14 requires the firmware to be upgraded
`
`while the earphones are running on battery power, the Rosener-Hankey-Price
`
`combination would have still rendered this aspect obvious because “a POSITA
`
`wou