IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`In re Patent of: Michael J. Koss, et al.
`U.S. Patent No.:
`10,491,982 Attorney Docket No.: 50095-0019IP1
`Issue Date:
`November 26, 2019
`
`Appl. Serial No.: 16/528,701
`
`Filing Date:
`August 1, 2019
`
`Title:
`SYSTEM WITH WIRELESS EARPHONES
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT
`NO. 10,491,982 PURSUANT TO 35 U.S.C. §§311–319, 37 C.F.R. §42
`
`

`

`
`
`Attorney Docket No. 50095-0019IP1
`IPR of U.S. Patent No. 10,491,982
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`REQUIREMENTS FOR IPR UNDER 37 C.F.R. §42.104 ............................. 1
`A. Grounds for Standing Under 37 C.F.R. §42.104(a) .............................. 1
`B.
`Challenge Under 37 C.F.R. §42.104(b) and Relief Requested ............. 1
`THE BOARD SHOULD NOT DENY INSTITUTION UNDER 35 U.S.C. §
`325(d) ............................................................................................................... 4
`A.
`Petitioner’s Grounds and Obviousness Rationales Were Not
`Previously Considered by The Office ................................................... 5
`The Office Erred in Granting the ’982 Patent ....................................... 6
`B.
`III. PTAB DISCRETION UNDER 35 U.S.C. § 314(a) SHOULD NOT
`PRECLUDE INSTITUTION .......................................................................... 9
`Factor 1: Institution Will Enable a Stay ........................................................ 10
`Factor 2: Uncertain District Court Schedule ................................................ 10
`Factor 3: Early Stage of Parallel Proceedings .............................................. 12
`Factor 4: The Petition Raises Unique Issues ................................................ 13
`Factor 5: Petitioner’s Involvement in the Texas Litigation .......................... 14
`Factor 6: Other Considerations Support Institution ..................................... 15
`IV. SUMMARY OF THE ’982 PATENT ........................................................... 15
`A. Overview ............................................................................................. 15
`B.
`Prosecution History ............................................................................. 17
`C.
`Claim Construction Under 37 C.F.R. §§42.104(b)(3) ........................ 18
`THE CHALLENGED CLAIMS ARE UNPATENTABLE .......................... 18
`A.
`Claims 1, 2, and 18-20 Are Obvious Over Rosener and Hankey
`[GROUND 1(A)], and Over Rosener, Hankey and Dyer [GROUND
`1(A)(i)] ................................................................................................ 18
`
`V.
`
`i
`
`

`

`1.
`2.
`3.
`4.
`
`Attorney Docket No. 50095-0019IP1
`IPR of U.S. Patent No. 10,491,982
`Rosener ...................................................................................... 18
`Hankey ...................................................................................... 21
`Dyer ........................................................................................... 23
`Combinations of Rosener and Hankey, and Rosener, Hankey
`and Dyer .................................................................................... 24
`Claim 1 ...................................................................................... 32
`5.
`Claims 2 and 18-20 ................................................................... 53
`6.
`Claims 3-5 Are Obvious Over Rosener, Hankey, and Haupt
`[GROUND 1(B)], and Over Rosener, Hankey, Dyer, and Haupt
`[GROUND 1(B)(i)] ............................................................................. 58
`1.
`Haupt ......................................................................................... 58
`2.
`Combinations with Haupt ......................................................... 59
`3.
`Claims 3-5 ................................................................................. 61
`Claim 14 Is Obvious Over Rosener, Hankey, and Price [GROUND
`1(C)], and Over Rosener, Hankey, Dyer and Price [GROUND 1(C)(i)]
` ............................................................................................................. 67
`1.
`Price ........................................................................................... 67
`2.
`Combinations with Price ........................................................... 68
`3.
`Claim 14 .................................................................................... 71
`Claim 15 Is Obvious Over Rosener, Hankey, and Paulson [GROUND
`1(C)], and Over Rosener, Hankey, Dyer, and Paulson [GROUND
`1(C)(i)] ................................................................................................. 72
`1.
`Paulson ...................................................................................... 72
`2.
`Combinations with Paulson ...................................................... 73
`3.
`Claim 15 .................................................................................... 74
`
`B.
`
`C.
`
`D.
`
`ii
`
`
`

`

`F.
`
`E.
`
`Attorney Docket No. 50095-0019IP1
`IPR of U.S. Patent No. 10,491,982
`Claims 16 and 17 Are Obvious Over Rosener, Hankey, and Huddart
`[GROUND 1(D)], and Over Rosener, Hankey, Dyer, and Huddart,
`[GROUND 1(D)(i)] ............................................................................. 76
`1.
`Huddart ...................................................................................... 76
`2.
`Combinations with Huddart ...................................................... 78
`3.
`Claims 16 and 17....................................................................... 80
`Claim 17 Is Obvious Over Rosener, Hankey, Huddart, and Vanderelli
`[GROUND 1(E)], and Over Rosener, Hankey, Dyer, Huddart, and
`Vanderelli [GROUND 1(E)(i)] ........................................................... 82
`1.
`Vanderelli .................................................................................. 82
`2.
`Combinations with Vanderelli .................................................. 84
`3.
`Claim 17 .................................................................................... 84
`VI. CONCLUSION .............................................................................................. 85
`VII. FEES .............................................................................................................. 85
`VIII. MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ......................... 85
`A.
`Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) .......................... 85
`B.
`Related Matters Under 37 C.F.R. § 42.8(b)(2) ................................... 86
`C.
`Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ............... 86
`D.
`Service Information ............................................................................. 86 
`
`
`
`
`
`
`
`iii
`
`
`

`

`Attorney Docket No. 50095-0019IP1
`IPR of U.S. Patent No. 10,491,982
`
`EXHIBITS
`
`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-1013
`
`RESERVED
`
`APPLE-1014
`
`Plaintiff KOSS Corporations’ Preliminary Infringement Con-
`tentions, KOSS Corporation v. Apple Inc., 6:20-cv-00665
`(WDTX)
`
`APPLE-1015
`
`Example Order Governing Proceedings - Patent Case
`
`APPLE-1016
`
`Agreed [Proposed] Scheduling Order, KOSS Corporation v. Ap-
`ple Inc., 6:20-cv-00665 (WDTX)
`
`iv
`
`
`

`

`APPLE-1017
`
`APPLE-1018
`
`Attorney Docket No. 50095-0019IP1
`IPR of U.S. Patent No. 10,491,982
`Katie Buehler, “Texas Patent Trials Halted Due to COVID-19
`Spike,” Law360, available at https://www.law360.com/ip/arti-
`cles/1330855/texas-patent-trials-halted-due-to-covid-19-spike.
`
`Scott McKeown, District Court Trial Dates Tend to Slip After
`PTAB Discretionary Denials, available at https://www.pa-
`tentspostgrant.com/district-court-trial-dates-tend-to-slip-after-
`ptab-discretionary-denials/ (Jul. 24, 2020)
`
`APPLE-1019
`
`Transcript of November 5, 2020 Telephonic Hearing from Fin-
`tiv, Inc. v. Apple, Inc., Civil Action No. A-19-CV-1238
`(WDTX)
`
`APPLE-1020
`
`Certified Translation of WO 2006/042749 (“Haupt”)
`
`v
`
`
`

`

`
`
`Attorney Docket No. 50095-0019IP1
`IPR of U.S. Patent No. 10,491,982
`Apple, Inc. (“Petitioner” or “Apple”) petitions for Inter Partes Review
`
`(“IPR”) of claims 1-5 and 14-20 (“the Challenged Claims”) of U.S. Patent No.
`
`10,419,982 (“the ’982 patent”).
`
`I.
`
`REQUIREMENTS FOR IPR UNDER 37 C.F.R. §42.104
`A. Grounds for Standing Under 37 C.F.R. §42.104(a)
`Apple certifies that the ’982 patent is available for IPR. This petition is be-
`
`ing filed within one year of service of a complaint against Apple. Apple is not
`
`barred or estopped from requesting this review.
`
`B. Challenge Under 37 C.F.R. §42.104(b) and Relief Requested
`Apple requests an IPR on the grounds below. Additional explanation and
`
`support for each ground is set forth in the expert declaration of Dr. Cooperstock,
`
`referenced throughout this petition.
`
`Ground
`
`Claims
`
`Basis (§103)
`
`1(A)/1(A)(i)
`
`1, 2, 18-20
`
`1(B)/1(B)(i)
`
`1(C)/1(C)(i)
`
`1(D)/1(D)(i)
`
`3-5
`
`14
`
`15
`
`1(E)/1(E)(i)
`
`16, 17
`
`Rosener and Hankey 1(A) / Rosener,
`Hankey, and Dyer 1(A)(i)
`Rosener, Hankey, and Haupt 1(B) / Ros-
`ener, Hankey, Dyer, and Haupt 1(B)(i)
`Rosener, Hankey, and Price 1(C) / Ros-
`ener, Hankey, Dyer, and Price (C)(i)
`Rosener, Hankey, and Paulson 1(D) /
`Rosener, Hankey, Dyer, and Paulson
`1(D)(i)
`Rosener, Hankey, and Huddart 1(E) /
`Rosener, Hankey, Dyer, and Huddart
`1(E)(i)
`
`1
`
`

`

`Ground
`
`Claims
`
`1(F)/1(F)(i)
`
`17
`
`Attorney Docket No. 50095-0019IP1
`IPR of U.S. Patent No. 10,491,982
`Basis (§103)
`
`Rosener, Hankey, Huddart, and Vander-
`elli 1(F) / Rosener, Hankey, Dyer, Hud-
`dart, and Vanderelli 1(F)(i)
`
`The ’982 patent was filed 8/1/2019, and claims priority to 4/7/2008. Peti-
`
`tioner does not concede that the Challenged Claims are entitled to the claimed pri-
`
`ority, but applies prior art before the alleged date. APPLE-1003, ¶13. Applied ref-
`
`erences are prior art as shown below:
`
`Reference Date(s)
`
`Basis
`
`Rosener August 7, 2006
`
`§102(a)
`
`Hankey
`
`January 6, 2007
`
`§102(e)
`
`Dyer
`
`February 27, 2006
`
`§102(e)
`
`Huddart December 23, 2005
`
`§102(e)
`
`Price
`
`May 4, 2005
`
`§102(a)
`
`Paulson
`
`January 8, 2004
`
`§102(e)
`
`Vanderelli October 15, 2004
`
`§102(a)
`
`Haupt
`
`April 27, 2006
`
`§102(a)
`
`Hankey was filed on 6/28/2007 and claims priority to U.S. Provisional Pat.
`
`2
`
`
`

`

`Attorney Docket No. 50095-0019IP1
`IPR of U.S. Patent No. 10,491,982
`No. 60/879,177 (“’177 Provisional”) (APPLE-1008), filed on 1/6/2007. As ex-
`
`plained by Dr. Cooperstock, “Hankey is entitled to the benefit of its provisional fil-
`
`ing date, i.e., the January 6, 2007 filing date” since the ’177 Provisional disclosure
`
`“provides sufficient detail that would have led a POSITA to conclude that the in-
`
`ventor of the ’177 Provisional had possession of the invention claimed in
`
`Hankey…” APPLE-1003, ¶43.
`
`Hankey Claim 1
`
`Supporting Description
`
`An electronic device comprising:
`
`‘177 provisional, FIGs. 1A,
`
`
`
` a housing;
`
`
`
`40A, ¶¶[0089], [0205].
`
`‘177 provisional, FIGs. 1A,
`
`40A, ¶¶[0089-90], [0205].
`
`a connector assembly coupled to the hous-
`
`‘177 provisional, FIGs. 40A,
`
`ing, the connector assembly comprising a
`
`¶¶[0089-90], ¶¶[0205-207]
`
`microphone port;
`
`a microphone mounted within the housing;
`
`‘177 provisional, ¶[0208].
`
`and
`
`a channel that fluidically couples the micro-
`
`’177 provisional, ¶¶[209-
`
`phone to the microphone port.
`
`212], FIGs. 41-44.
`
`
`
`3
`
`
`

`

`Attorney Docket No. 50095-0019IP1
`IPR of U.S. Patent No. 10,491,982
`The prior art combinations and obviousness rationales advanced herein were
`
`not before the Office during examination. Hankey, Dyer, Price, Paulson and Hud-
`
`dart were not made available to the Office during examination. See APPLE-1002.
`
`While a related Haupt reference1 is cited on the face of the ’982 patent, it was
`
`never substantively addressed by the examiner. See APPLE-1002. Finally, while
`
`the examiner previously evaluated Rosener, additional evidence and facts pre-
`
`sented herein warrant reconsideration in this proceeding. See Section V.
`
`II. THE BOARD SHOULD NOT DENY INSTITUTION UNDER 35
`U.S.C. § 325(d)
`Under 35 U.S.C. § 325(d), the Board uses a two-part framework in deter-
`
`mining whether to exercise its discretion to institute. Advanced Bionics, LLC v.
`
`MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6, 8 (PTAB
`
`Feb. 13, 2020) (precedential) (“Advanced Bionics”). First, the Board considers
`
`“whether the same or substantially the same art previously was presented to the Of-
`
`fice or whether the same or substantially the same arguments previously were pre-
`
`sented to the Office.” Id. When either condition of the first part of the framework
`
`is satisfied, the Board next considers “whether the petitioner has demonstrated that
`
`
`1 U.S. Pat. App. No. 2008/0194209, which is cited on the face of ’982 patent,
`
`claims priority to WO2006/042749, a certified translation of which is applied in
`
`this petition.
`
`4
`
`
`

`

`Attorney Docket No. 50095-0019IP1
`IPR of U.S. Patent No. 10,491,982
`the Office erred in a manner material to the patentability of challenged claims.” Id.
`
`In applying this framework, the Board evaluates six factors (“the Becton fac-
`
`tors”). Id., 8-10 (citing Becton, Dickinson & Co. v. B. Braun Melsungen AG,
`
`IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first
`
`paragraph) (“Becton”); see Trial Practice Guide July 2019 Update, 28-31, Fed.
`
`Reg. 33,925 (July 16, 2019). These factors are known as the Becton factors (a)
`
`through (f). Advanced Bionics at 9, n.10 (citing Becton). As discussed below, the
`
`Becton factors favor institution.
`
`A.
`
`Petitioner’s Grounds and Obviousness Rationales Were Not Pre-
`viously Considered by The Office
`Becton factors (a), (b), and (d) support institution because this Petition does
`
`not present substantially the same prior art combinations or arguments that were
`
`before the Office during examination of the ’982 patent. Though Rosener was ad-
`
`dressed by the examiner in a Notice of Allowance, the secondary references com-
`
`bined with Rosener in this petition were not. APPLE-1002, 13-14. Indeed,
`
`Hankey, Dyer, Price, Paulson, and Huddart were not made available to the Office
`
`during examination. APPLE-1001. Additionally, while a related Haupt reference
`
`is among the references cited on the face of the ’982 patent, it was never addressed
`
`by the examiner. See APPLE-1002. The Office did not consider any of the prior
`
`art combinations of (i) Rosener-Hankey, (ii) Rosener-Hankey-Dyer, (iii) Rosener-
`
`5
`
`
`

`

`Attorney Docket No. 50095-0019IP1
`IPR of U.S. Patent No. 10,491,982
`Hankey-Haupt, (iv) Rosener-Hankey-Price, (v) Rosener-Hankey-Paulson, (vi) Ros-
`
`ener-Hankey-Huddart, or (vii) Rosener-Hankey-Huddart-Vanderelli that are being
`
`advanced in this Petition, and therefore, these combinations are not cumulative of
`
`the prior art evaluated during examination. Moreover, as discussed in the follow-
`
`ing section, the examiner erred in evaluating Rosener and, as a result, there are ma-
`
`terial differences between the application of Rosener by the examiner and the ap-
`
`plication of Rosener in combination with Hankey, Dyer, Haupt, Price, Paulson,
`
`Huddart, and/or Vanderelli in this Petition.
`
`Patent Owner thus cannot argue, and the Board should not find, that “the
`
`same or substantially the same art previously was presented to the Office” or that
`
`“the same or substantially the same arguments previously were presented to the
`
`Office,” as required under part 1 of the Advanced Bionics framework. The Ad-
`
`vanced Bionics analysis should therefore end with part 1, and the Board should not
`
`exercise its discretion to deny institution.
`
`B.
`The Office Erred in Granting the ’982 Patent
`The Board need not reach part 2 of the Advanced Bionics framework since
`
`part 1 is not satisfied. Even if the Board evaluates part 2, Becton factors (c), (e),
`
`and (f) support institution.
`
`As to Becton factor (c), the ’982 patent issued without any substantive prior
`
`art rejections. The Office was not made aware of Hankey, Dyer, Price, or Huddart
`
`6
`
`
`

`

`Attorney Docket No. 50095-0019IP1
`IPR of U.S. Patent No. 10,491,982
`
`during examination.
`
`While a related Haupt reference, and Vanderelli were listed in Patent
`
`Owner’s Information Disclosure Statement, they were not applied by the examiner
`
`or discussed by Patent Owner. See Navistar, Inc. v. Fatigue Fracture Tech., LLC,
`
`IPR2018-00853, Paper 13 at 17 (PTAB Sept. 12, 2018).
`
`As for Rosener, the extent to which the examiner evaluated this reference
`
`was a single statement in the Notice of Allowance that certain claim limitations
`
`were not disclosed or rendered obvious over its disclosure. APPLE-1002, 14. This
`
`statement was not discussed further and the claims were allowed without further
`
`comment. Id., 8-16. There was, therefore, no substantive discussion of Rosener
`
`during prosecution.
`
`Even if the examiner’s cursory statement regarding Rosener is considered
`
`substantive discussion, Becton factor (e) still favors institution since the examiner
`
`erred in evaluating Rosener. Specifically, the examiner overlooked disclosure in
`
`Rosener that explicitly and unambiguously taught or rendered obvious the claim
`
`features identified by the examiner as being absent from it. For example, the ex-
`
`aminer indicated that Rosener did not disclose or suggest the feature of “at least
`
`one acoustic transducer connected to the processor circuit,” as recited in claim 1 of
`
`the ’982 patent. APPLE-1002, 14. Yet Rosener discloses that each of earphones
`
`502, 504 includes a “housing with a speaker” that can include “a magnetic element
`
`7
`
`
`

`

`Attorney Docket No. 50095-0019IP1
`IPR of U.S. Patent No. 10,491,982
`attached to a voice-coil-actuated diaphragm, an electrostatically charged dia-
`
`phragm, a balanced armature driver, or a combination of one or more of these
`
`transducer elements.” APPLE-1004, ¶[0030]. Contrary to the examiner’s state-
`
`ment, a person of ordinary skill in the art (“POSITA”)2 would have understood a
`
`speaker and components disclosed in Rosener to correspond to the recited “at least
`
`one acoustic transducers.” Rosener also discloses that the speaker is connected to
`
`a processor circuit that performs “signal processing functions, to ensure that the
`
`processed data is in a form suitable to drive the [speaker].” Id.; APPLE-1004,
`
`¶[0049]. Thus, contrary to the examiner’s statement, a POSITA would have under-
`
`stood that each of the earphones 502, 504 disclosed in Rosener has a speaker (i.e.,
`
`acoustic transducer) connected to a processor circuit of the earphone. APPLE-
`
`1003, ¶111; see infra Section V.A.5 re [1.c.i.D].
`
`As another example, the examiner indicated that Rosener does not teach or
`
`suggest a “microphone connected to the processor circuit and for picking up utter-
`
`ances of a user of the headphones.” APPLE-1002, 14. However, Rosener dis-
`
`closes that “either or both the first and second data sinks of various embodiments”
`
`(e.g., earphones 502, 504) include “a microphone.” APPLE-1004, ¶[0056] (em-
`
`phasis added). Also, Rosener’s FIG. 9 shows that the microphone (shown as data
`
`source 922) of an earphone is connected to the signal conditioning circuit 920 of
`
`
`2 See APPLE-1003, ¶¶30-31 (defining a POSITA).
`8
`
`
`

`

`Attorney Docket No. 50095-0019IP1
`IPR of U.S. Patent No. 10,491,982
`the earphone’s processor. APPLE-1004, ¶[0050]; see id., ¶[0056] (referring to mi-
`
`crophone as a “data source”), and Section V.A.5, infra re [1.c.iii]. The examiner
`
`also overlooked other portions of Rosener that are discussed in greater detail below
`
`in sections advancing prior art mapping based on Rosener. See, e.g., Section
`
`V.A.5, infra (discussing [1.c.iv] and [1.d]).
`
`Given the inconsistences between the examiner’s evaluation of Rosener and
`
`its disclosure, Becton factor (f) supports institution because additional evidence
`
`and facts presented herein warrant reconsideration of Rosener by the Board in this
`
`proceeding. The Board therefore should not deny institution under 35 U.S.C. §
`
`325(d).
`
`III. PTAB DISCRETION UNDER 35 U.S.C. § 314(a) SHOULD NOT PRE-
`CLUDE INSTITUTION
`The Apple Inc. v. Fintiv, Inc. factors, and recent Board decisions applying
`
`them, weigh against discretionary denial here. IPR2020-00019, Paper 11, 5-6 (Mar.
`
`20, 2020) (precedential).3
`
`
`3 Apart from Petitioner’s showing that the Fintiv factors favor institution, the Fintiv
`
`framework should not be followed because it is legally invalid. Specifically, the
`
`framework (1) exceeds the Director’s authority, (2) is arbitrary and capricious, (3)
`
`and was adopted without notice-and-comment rulemaking.
`
`9
`
`
`

`

`Attorney Docket No. 50095-0019IP1
`IPR of U.S. Patent No. 10,491,982
`Factor 1: Institution Will Enable a Stay
`If this petition is instituted, a stay of the related litigation pending in the
`
`Western District of Texas (“Texas Litigation”) would be appropriate. Crossroads
`
`Sys. v. DOT Hill Sys. Corp., 2015 U.S. Dist. LEXIS 77526 (WDTX Jun. 16, 2015)
`
`(granting stay). Even if Patent Owner suggests that the case may not be stayed, the
`
`Board “will not attempt to predict how the district court in the related district court
`
`litigation will proceed because the court may determine whether or not to stay any
`
`individual case, including the related one, based on a variety of circumstances and
`
`facts beyond [its] control and to which the Board is not privy.” Sand Revolution,
`
`IPR2019-01393, Paper 24, 7 (June 16, 2020) (Informative); see Intel Corp. v. VLSI
`
`Tech. LLC, IPR2020-00158, Paper 16, *7 (May 20, 2020).
`
`Overall, this factor does not support discretionary denial.
`
`Factor 2: Uncertain District Court Schedule
`Here, the earliest projected trial date in the Texas Litigation is April 18,
`
`2022, approximately three months before the expected final written decision
`
`(FWD). In Sand Revolution, the Board found that a trial date five months before
`
`the FWD was “in relatively close proximity to the expected final decision” and in-
`
`sufficient to deny institution. See Sand Revolution, IPR2019-01393, Paper 24, 8-9.
`
`The projected trial date here is therefore insufficiently early to deny institution.
`
`10
`
`
`

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`Attorney Docket No. 50095-0019IP1
`IPR of U.S. Patent No. 10,491,982
`Further, it is unclear whether the current trial date will be maintained. AP-
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`PLE-1017. As Sand Revolution noted, “it is unclear that the court in the related lit-
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`igation will adhere to any currently scheduled jury trial date or, if it is changed,
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`when such a trial will be held.” Id., 8-9. Indeed, as of July, 2020, “70% of
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`[WDTX] trial dates initially relied upon by the PTAB to deny petitions have slid.”
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`APPLE-1018. Such delays even impacted the seminal NHK and Fintiv cases,
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`where, after the Board denied institution, associated trial dates were delayed by the
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`courts. Notably, Fintiv is before the same WDTX court that is presiding over the
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`counterpart Texas Litigation here. See Mylan Pharmaceuticals Inc. v. Sanofi-
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`Aventis Deutschland GMBH, IPR2018-01680, Paper 22 at 17, n. 6 (PTAB Apr. 3,
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`2019) (“In the district court case running parallel to NHK Spring, the court ulti-
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`mately moved the trial date back six months, illustrating the uncertainty associated
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`with litigation schedules.”); APPLE-1019, 10:22-11:8 (resetting Fintiv trial to Au-
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`gust 9, 2021, more than a month after the FWD would have been due in the associ-
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`ated IPR). The current trial date is particularly uncertain since Apple has moved to
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`transfer the case to another venue, and thus, should not be given any significant
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`weight.
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`In contrast, despite the pandemic, the Board has adhered to the one-year stat-
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`utory deadline for FWDs prescribed by 35 U.S.C. § 316(a)(11). Sand Revolution,
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`IPR2019-01393, Paper 24, 9. And even the current trial date may not precede the
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`Attorney Docket No. 50095-0019IP1
`IPR of U.S. Patent No. 10,491,982
`FWD if the panel issues its Institution Decision and/or its Final Written Decision
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`earlier than required. See, e.g., IPR2020-00895, Paper 16 (PTAB Oct. 23, 2020)
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`(Decision on Institution mailed over a month earlier than required, causing a Final
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`Written Decision to be due two days before a scheduled trial).
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`Overall, this factor does not support discretionary denial. See id., 8-10.
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`Factor 3: Early Stage of Parallel Proceedings
`By any objective standard, Petitioner filed this petition at a very early stage
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`of the litigation, a fact that “has weighed against exercising the authority to deny
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`institution under NHK.” Seven Networks, IPR2020-00156, Paper 10, 11-12 (June
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`15, 2020). Here, Petitioner filed this petition within five-and-a-half months of be-
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`ing served, within two months of Koss serving infringement contentions,4 and be-
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`fore either party submitted proposed claim constructions or briefs. APPLE-1014,
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`APPLE-1016, 2-3; IPR2020-00019, Paper 11, 11–12 & n.22. No substantive or-
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`ders have been issued by the court in the underlying litigation. Indeed, as of the
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`filing of this Petition, the court has not yet heard or ruled on Apple’s initial motion
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`4 Koss’s contentions assert 175 claims across five patents—including all claims of
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`the ’982 Patent—a significant burden Petitioner has had to contend with in devel-
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`oping this petition. APPLE-1014.
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`Attorney Docket No. 50095-0019IP1
`IPR of U.S. Patent No. 10,491,982
`to strike Patent Owner’s complaint. And the court’s Markman hearing is not
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`scheduled until April 22, 2021, almost four months away. APPLE-1016. 3.
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`It is entirely appropriate that Petitioner is filing its petition after receiving in-
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`fringement contentions. Amazon.com, Inc. v. Customplay, LLC, IPR2018-01498,
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`Paper 13, 8-9 (finding that waiting “to better understand the asserted claims, the
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`bases for the infringement allegations … and to identify relevant prior art” should
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`not weigh in favor of discretionary denial); 157 Cong. Rec. S5429 (Sept. 8, 2011)
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`(Sen. Kyl) (“High-technology companies … are often sued by defendants asserting
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`multiple patents with large numbers of vague claims …. [I]t is important that the
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`section 315(b) deadline afford defendants a reasonable opportunity to identify and
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`understand the patent claims that are relevant to the litigation”).
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`Moreover, this petition was filed well before the one-year statutory bar date.
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`Mylan, IPR2018-01680, Paper 22, 18 (finding that petition filed two months before
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`bar date is “well within the timeframe allowed by statute, weighing heavily in [pe-
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`titioner’s] favor”).
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`Overall, this factor weighs against discretionary denial.
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`Factor 4: The Petition Raises Unique Issues
`The Texas Litigation is still in its infancy, with initial invalidity contentions
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`not due until January, 2021. APPLE-1016, 2-3. Thus, at present, there is no over-
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`lap in issues between the Texas Litigation and any IPR resulting from this petition.
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`Attorney Docket No. 50095-0019IP1
`IPR of U.S. Patent No. 10,491,982
`A lack of overlap between the petition and the district court proceeding “has
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`tended to weigh against exercising discretion to deny institution.” Fintiv,
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`IPR2020-00019, Paper 11, 12-14.
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`Additionally, the district court requires “significant[] narrowing [of] the
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`number of claims asserted” for trial. APPLE-1015, 10. As a result, the number of
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`claims adjudicated at the district court will likely be significantly less than the
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`number of claims addressed here. There will be a significant likelihood of these
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`unaddressed claims being reasserted against future products, counseling against
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`discretionary denial. Seven Networks, IPR2020-00156, Paper 10, 17.
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`Overall, the lack of overlap between issues in an instituted IPR and the re-
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`lated district court litigation weighs strongly against discretionary denial.
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`Factor 5: Petitioner’s Involvement in the Texas Litigation
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`With respect to Factor 5, the Fintiv decision “says nothing about situations
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`in which the petitioner is the same as, or is related to, the district court defendant.”
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`Cisco Sys., Inc. v. Ramot at Tel Aviv Univ. Ltd., IPR2020-00122, Paper 15, *10
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`(PTAB May 15, 2020) (APJ Crumbley, dissenting).
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`In cases such as the one at hand, where the parties are the same, the
`factor is neutral. To hold otherwise—that the factor weighs in favor
`of denial if the parties are the same—would, in effect, tip the scales
`against a petitioner merely for being a defendant in the district court.
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`Attorney Docket No. 50095-0019IP1
`IPR of U.S. Patent No. 10,491,982
`But I see no basis for such a presumption, either in the text of the stat-
`ute or in the intent of Congress in passing it. Indeed, it would seem to
`be contrary to the goal of providing district court litigants an alterna-
`tive venue to resolve questions of patentability.
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`Id.
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`Factor 6: Other Considerations Support Institution
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`Neither Petitioner nor any other party has previously challenged this patent
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`in a PTAB post-issuance proceeding. Moreover, as described above in Section
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`II.B, the Board has not previously considered the grounds set forth in this petition
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`or substantively similar grounds.
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`Finally, Petitioner’s patentability challenges are strong, which favors institu-
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`tion. Seven Networks, IPR2020-00156, Paper 10, 20-21. For these reasons, this
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`factor also weighs against discretionary denial.
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`In summary, the Fintiv factors weigh against discretionary denial.
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`IV. SUMMARY OF THE ’982 PATENT
`A. Overview
`The ’982 patent relates to wireless earphones 10 that receive streaming audio
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`data over a network. APPLE-1001, 2:7-25. Figure 3 (below) shows components
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`of earphone 10, including transceiver circuit 100 and peripheral components, such
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`as power source 102, microphone 104, one or more acoustic transducers 106, and
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`antenna 108. Id., 6:34-59; APPLE-1003, ¶18.
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`Attorney Docket No. 50095-0019IP1
`IPR of U.S. Patent No. 10,491,982
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`The earphones 10 can have form factors shown in Figures 1A and 1B. AP-
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`PLE-1001, 3:20-46. Earphone 10 shown in these figures includes body 12 with ear
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`canal portion 14 insertable into a user’s ear canal. Id., 3:20-46; APPLE-1003,
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`
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`¶¶19-20.
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`16
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`Attorney Docket No. 50095-0019IP1
`IPR of U.S. Patent No. 10,491,982
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`
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`The ’982 patent describes a wireless data communication system in which
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`earphone 10 communicates with data source 20 via, for example, an ad hoc wire-
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`less network 24 (Figure 2A), a single access point 32 (Figure 2B), or multiple ac-
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`cess points 32a-b (Figure 2C). APPLE-1003, ¶¶21-27.
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`B.
`Prosecution History
`The ’982 patent was filed on 8/1/2019, claiming priority to a provisional ap-
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`plication filed on 4/7/2008. See APPLE-1001, 1-2; APPLE-1002, 344-346; AP-
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`PLE-1003, ¶28. After an examiner interview, applicant filed a terminal disclaimer
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`to place the application in condition for allowance. APPLE-1002, 17, 45, 46. On
`17
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`Attorney Docket No. 50095-0019IP1
`IPR of U.S. Patent No. 10,491,982
`September 24, 2019, the examiner issued a Notice of Allowance, and the patent
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`was issued on November 26, 2019. I