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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner,
`
`v.
`
`KOSS CORPORATION,
`Patent Owner.
`_____________________
`
`CASE: IPR2021-00592
`U.S. PATENT NO. 10,469,934
`_____________________
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`PATENT OWNER SUR-REPLY
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`505776322.6
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`IPR2021-00592
`Patent Owner Sur-Reply
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`TABLE OF CONTENTS
`
`I.
`
`PETITIONER FAILED TO SHOW THAT THE CHALLENGED
`CLAIMS ARE UNPATENTABLE ................................................................ 1
`A.
`Claim 1 .................................................................................................. 1
`1.
`The Board’s Decisions in the ’025 Patent IPRs Apply to this
`IPR............................................................................................... 3
`The Evidentiary Record Reinforces the Board’s Decisions in
`the ’025 Patent IPRs .................................................................... 5
`Claims 7, 21, 30 and 45 ....................................................................... 10
`Claims 33-37, 39, 42-43 and 45-57 ..................................................... 13
`1.
`Petitioner Ignored the SoC Disclosed by the ’934 Patent......... 13
`2.
`The Record Demonstrates that a POSITA Would Have
`a Unreasonable Expectation of Success Condensing the
`Claimed Components into a Small Form Factor ...................... 14
`Claims 37 and 39 ................................................................................. 17
`Claims 52-53 and 56-57 ...................................................................... 20
`1.
`Claims 56-67 ............................................................................. 22
`COMMERCIAL SUCCESS .......................................................................... 23
`A.
`Petitioner Provided No Evidence Refuting that the AirPod Products
`Possess All Elements of the Challenged Claims ................................. 23
`The Challenged Claims are Coextensive with the AirPod Products... 23
`Commercial Success of the AirPod Products is a Direct Result of
`Practicing the Challenged Claims ....................................................... 25
`III. CONCLUSION .............................................................................................. 26
`
`
`2.
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`B.
`C.
`
`D.
`E.
`
`II.
`
`B.
`C.
`
`i
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`TABLE OF AUTHORITIES
`
`IPR2021-00592
`Patent Owner Sur-Reply
`
` Page(s)
`
`Cases
`u-blox AG and Japan Radio Co. v. Broadcom Corp.,
`IPR2019-00737, Paper 38 (PTAB Aug. 28, 2020) ............................................. 22
`Apple Inc. v. Koss Corp.,
`IPR2021-00546, Paper 10 (PTAB Sept. 7, 2021) ......................................... 2, 5, 8
`Apple Inc. v. Koss Corp.,
`IPR2021-00626, Paper 10 (PTAB Sept. 30, 2021)....................................... 2, 5, 8
`Apple Inc. v. Koss Corp.,
`IPR2022-00053, Paper 10 (PTAB April 4, 2022) ................................................ 2
`Chemours Co. v. Daikan Indus., Ltd.,
`4 F.4th 1370 (Fed. Cir. 2021) ............................................................................. 26
`FOX Factory, Inc. v. SRAM LLC,
`944 F.3d 1366 (Fed. Cir. 2019) .............................................................. 23, 24, 25
`Statutes
`35 U.S.C. § 311(b) ................................................................................................... 11
`Other Authorities
`PTAB Consolidated Trial Practice Guide (Nov. 2019) ……...……………….11, 12
`
`
`ii
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`EXHIBIT LISTING
`
`IPR2021-00592
`Patent Owner Sur-Reply
`
`Description
`Exhibit
`KOSS-2001 Docket Report, Koss Corp. v. Apple Inc., Case No. 6:20-cv-
`00665-ADA (W.D. Tex.) (accessed June 15, 2021)
`
`KOSS-2002
`
`Joint Claim Construction Statement, Koss Corp. v. Apple Inc.,
`Case No. 6:20-cv-00665-ADA, Dkt. 68 (W.D. Tex. April 14,
`2021)
`
`KOSS-2003 Docket Report, Apple Inc. v. Koss Corp., Case No. 4:20-cv-
`05504-JST (N.D. Cal.) (accessed June 15, 2021)
`
`KOSS-2004 Order Denying Defendant’s Motion to Transfer, Koss Corp. v.
`Apple Inc., Case No. 6:20-cv-00665-ADA. Dkt. 76
`(redacted/public version) (W.D. Tex. April 22, 2021)
`
`KOSS-2005 Order Granting Motion to Transfer, Apple Inc. v. Koss Corp.,
`Case No. 4:20-cv-05504-JST, Dkt. 72 (N.D. Cal. May 12, 2021)
`
`KOSS-2006
`
`Joint Motion to Consolidate Cases, Koss Corp. v. Apple Inc.,
`Case No. 6:20-cv-00665-ADA, Dkt. 84 (W.D. Tex. June 8,
`2021)
`
`KOSS-2007 Order Setting Markman Hearing, Koss Corp. v. Apple Inc., Case
`No. 6:20-cv-00665-ADA, Dkt. 58 (W.D. Tex. March 24, 2021)
`
`KOSS-2008 Claim Construction Order, Koss Corp. v. Apple Inc., Case No.
`6:20-cv-00665-ADA, Dkt. 83 (W.D. Tex. June 2, 2021)
`
`KOSS-2009 U.S. Pub. 2008/0194209 A1 to Haupt et al. (“Haupt ’209”)
`
`KOSS-2010 Order Governing Proceedings - Patent Case, W.D. Tex., Waco
`Division, Judge Albright, Feb. 23, 2021
`
`KOSS-2011 Petition for Inter Partes Review, IPR2021-00255, November 25,
`2020
`
`iii
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`
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`
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`IPR2021-00592
`Patent Owner Sur-Reply
`
`Description
`Exhibit
`KOSS-2012 Petition for Inter Partes Review, IPR2021-00600, March 7,
`2021
`
`KOSS-2013 Defendant Apple Inc.’s Invalidity Contentions, Koss Corp. v.
`Apple Inc., Case No. 6:20-cv-00665-ADA (W.D. Tex.), Jan. 15,
`2021
`
`KOSS-2014 U.S. Pub. 2009/0029743 A9 to Lair et al. (“Lair”)
`
`KOSS-2015 U.S. Pub. 2005/0136839 A1 to Seshadri et al. (“Seshadri ’839”)
`
`KOSS-2016 U.S. Pub. 2006/008388 A1 to Rothschild (“Rothschild”)
`
`KOSS-2017 U.S. Patent 8,190,203
`
`KOSS-2018 U.S. Patent 8,571,544
`
`KOSS-2019 U.S. Patent 8,655,420
`
`KOSS-2020 U.S. Patent 9,049,502
`
`KOSS-2021 U.S. Patent 9,438,987
`
`KOSS-2022 U.S. Patent 9,497,535
`
`KOSS-2023 U.S. Patent 9,729,959
`
`KOSS-2024 U.S. Patent 9.986,325
`
`KOSS-2025 U.S. Patent 10,206,025
`
`KOSS-2026 U.S. Patent 10,368,155
`
`KOSS-2027 R. Davis, “Albright Says He’ll Very Rarely Put Cases On Hold
`For PTAB,” Law360, May 11, 2021
`(www.law360.com/articles/1381597/print?section=ip) (accessed
`June 14, 2021)
`
`iv
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`IPR2021-00592
`Patent Owner Sur-Reply
`
`Description
`Exhibit
`KOSS-2028 Order, In re Apple Inc., Case No. 21-147, D.I. 25 (Fed. Cir.
`Aug. 4, 2021)
`
`KOSS-2029 Apple Inc., Form 10-K, for fiscal year ended September 26,
`2020
`
`KOSS-2030
`
`KOSS-2031
`
`KOSS-2032
`
`“Apple AirPods are now available,” Apple Newsroom, Dec. 13,
`2016 (www.apple.com/newsroom/2016/12/apple-airpods-are-
`now-available/) (last accessed Sept. 8, 2021)
`
`“AirPods, the world’s most popular wireless headphones, are
`getting even better,” Apple Newsroom, Mar. 20, 2019
`(www.apple.com/newsroom/2019/03/airpods-the-worlds-most-
`popular-wireless-headphones-are-getting-even-better/) (last
`accessed Sept. 8, 2021)
`
`“Apple reveals new AirPods Pro, available October 30,” Apple
`Newsroom, Mar. 20, 2019
`(www.apple.com/newsroom/2019/10/apple-reveals-new-
`airpods-pro-available-october-30/) (last accessed Sept. 8, 2021)
`
`KOSS-2033 Patent Owner’s Request for Additional Discovery
`
`KOSS-2034 D. Curry, “Apple Statistics (2021),” Business of Apps, updated
`August 16, 2021 (www.businessofapps.com/data/apple-
`statistics/) (last accessed August 18, 2021)
`
`KOSS-2035
`
`KOSS-2036
`
`J. Cipriani, “Your AirPods just got a quiet update,” CNET,
`February 1, 2017 (www.cnet.com/tech/mobile/how-to-update-
`the-firmware-of-apples-airpods/) (last accessed September 8,
`2021)
`
`J. Clover, “Apple Releases New Firmware Update for AirPods,”
`MacRumors, May 24, 2017
`(www.macrumors.com/2017/05/24/airpods-firmware-update/)
`(last accessed September 8, 2021)
`
`v
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`Exhibit
`KOSS-2037
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`IPR2021-00592
`Patent Owner Sur-Reply
`
`Description
`J. Clover, “Apple Releases New Firmware for AirPods 2 and
`AirPods Pro,” MacRumors, December 16, 2019
`(www.macrumors.com/2019/12/16/apple-releases-new-airpods-
`firmware/) (last accessed September 8, 2021)
`
`KOSS-2038 C. Miller, “Apple releases updated firmware version for
`AirPods and AirPods Pro,” 9to5Mac, April 28, 2021
`(9to5mac.com/2021/04/28/apple-releases-updated-firmware-
`version-for-airpods-and-airpods-pro/) (last accessed September
`8, 2021)
`
`KOSS-2039
`
`J. Clover, “Apple Updates AirPods 2 and AirPods Pro Firmware
`to Version 3A283,” MacRumors, September 14, 2020
`(www.macrumors.com/2020/09/14/apple-updates-airpods-
`firmware-3a283/) (last accessed September 15, 2021)
`
`KOSS-2040 M. Potuck, “AirPods dominate wireless headphone market as
`global growth hits 90% for 2020,” 9to5Mac, Jan. 27, 2021
`(https://9to5mac.com/2021/01/27/airpods-dominate-wireless-
`headphone-market/) (last accessed Sept. 15, 2021)
`
`KOSS-2041 Sept/Oct 2021 Email chain with Board re Filing Motion
`
`KOSS-2042 Exhibit APPLE-1003 of IPR2021-00600, Declaration of Dr.
`Jeremy Cooperstock, March 7, 2021
`
`KOSS-2043 U.S. Patent 10,298,451 B1
`
`KOSS-2044 McGill University Major Computer Science Program
`Requirements (www.mcgill.ca/study/2021-
`2022/faculties/science/undergraduate/programs/bachelor-
`science-bsc-major-computer-science) (last accessed Oct. 27,
`2021)
`
`KOSS-2045 Deposition Transcript, Prof. Jeremy Cooperstock, Ph.D.,
`IPR2021-00592, November 5, 2021
`
`vi
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`IPR2021-00592
`Patent Owner Sur-Reply
`
`Description
`Exhibit
`KOSS-2046 Declaration of Joseph C. McAlexander, III
`
`KOSS-2047 Exhibit APPLE-1003 of IPR2021-00546, Declaration of Dr.
`Jeremy Cooperstock, Feb. 22, 2021
`
`KOSS-2048 Exhibit APPLE-1003 of IPR2021-00626, Declaration of Dr.
`Jeremy Cooperstock, Mar. 15, 2021
`
`KOSS-2049 Deposition Transcript, Prof. Jeremy Cooperstock, Ph.D.,
`IPR2021-00592, April 22, 2022
`
`KOSS-2050 Apple Inc. v. Koss Corp., IPR2021-00546, Paper 2, Petition for
`Inter Partes Review against Patent No. 10,206,025, February
`22, 2021
`
`KOSS-2051 Apple Inc. v. Koss Corp., IPR2021-00626, Paper 3, Petition for
`Inter Partes Review against Patent No. 10,206,025, March 17,
`2021
`
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`vii
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`IPR2021-00592
`Patent Owner Sur-Reply
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`This Sur-reply is responsive to Petitioner’s Corrected Reply (Paper 44,
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`“Reply”). The Board should confirm the patentability of the Challenged Claims.
`
`I.
`
`PETITIONER FAILED TO SHOW THAT THE CHALLENGED
`CLAIMS ARE UNPATENTABLE
`A. Claim 1
`Claim 1 recites limitations that are substantially similar to limitations of claim
`
`1 of Patent 10,206,025 (“’025 Patent”). Claim 1 of the ’934 Patent recites that the
`
`headphone assembly includes a processor configured to, “upon activation of a user-
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`control of the headphone assembly, initiate transmission of a request to a remote,
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`network server that is in communication with the mobile, digital audio player …”
`
`APPLE-1001, 18:2-32; Paper 9 (Institution Decision) at 7-8 (limitation 1.i). Claim
`
`1 of the ’025 Patent includes practically the exact same limitation. KOSS-2025,
`
`18:30-34.1
`
`In this IPR, Petitioner asserted that claim 1 would have been obvious over
`
`Haupt-Seshadri-Rao. In Petitioner’s two non-instituted IPRs for the ’025 Patent,
`
`Petitioner asserted that claim 1 of the ’025 Patent was obvious over Haupt-Seshadri.
`
`
`1 Claim 1 of the ’934 Patent states that the processor “is configured to” initiate
`
`transmission of the request. APPLE-1001, 18:25. Claim 1 of the ‘025 Patent states
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`that the processor is “for” initiating transmission of the request. KOSS-2025, 18:30.
`
`- 1 -
`
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`
`
`Apple Inc. v. Koss Corp., IPR2021-00546, Paper 10, 7 (PTAB Sept. 7, 2021); Apple
`
`IPR2021-00592
`Patent Owner Sur-Reply
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`Inc. v. Koss Corp., IPR2021-00626, Paper 10, 7 (PTAB Sept. 30, 2021).2 Rao is not
`
`relevant to the limitations of the ’934 and ’025 Patents discussed above. Petitioner
`
`only relied upon Rao for limitations 1.e and 1.j of the ’934 Patent. POR, 22-23; Pet.,
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`22-32; APPLE-1003, ¶¶98-103; KOSS-2045, 67-68. Thus, the Board’s rationale for
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`denying Petitioner’s ’025 Patent IPR petitions is on all fours with the issues before
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`the Board in this IPR. For the reasons that the Board denied institution of IPR2021-
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`00546 and IPR2021-000626 (“’025 Patent IPRs”), the Board should affirm the
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`validity of claim 1 of the ’934 Patent.
`
`Petitioner’s Reply asserted that the non-institution decisions in the ’025 Patent
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`IPRs were “rendered with respect to another patent and without the benefit of a full
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`evidentiary record.” Reply, 1. This argument is unavailing because: (i) although the
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`patents are different, the Board’s decisions in the ’025 Patent IPRs addressed claim
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`limitations recited, verbatim, by the ’934 Patent; and (ii) the full evidentiary record
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`in this IPR supports the Board’s decisions in the ’025 Patent IPRs. The references
`
`
`2 Petitioner filed a third IPR for the ’025 Patent that was denied. It did not rely on
`
`Haupt, Seshadri or Rao. Apple Inc. v. Koss Corp., IPR2022-00053, Paper 10 (PTAB
`
`April 4, 2022).
`
`- 2 -
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`
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`(Haupt and Seshadri) are the same; the relevant claim language is the same; and the
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`IPR2021-00592
`Patent Owner Sur-Reply
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`testimony of Petitioner’s expert witness, Dr. Jeremy Cooperstock (“Cooperstock”),
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`about the references is the same, except for Cooperstock’s Supplemental
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`Declaration, which adds nothing new because it restates the opinions in his original
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`declaration. APPLE-1027, ¶¶15-20.
`
`The Board’s Decisions in the ’025 Patent IPRs Apply to this IPR
`1.
`In the ’025 Patent IPRs, the Board found that the Haupt-Seshadri combination
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`did not render obvious limitations of claim 1 of the ’025 Patent that are practically
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`identical to limitation 1.i of the ’934 Patent, for which Petitioner again relies on
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`Haupt and Seshadri. Not only did the Board find in the ’025 Patent IPRs that the
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`Haupt-Seshadri combination failed to suggest the exact same limitation (i.e.,
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`limitation 1.i) of claim 1 of the ’934 Patent, but the Board in the ’025 Patent IPRs
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`rejected the exact same arguments that Petitioner raised here, verbatim. In support
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`of its asserted modification of Seshadri’s devices to communicate with Haupt’s
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`servers, Petitioner raised exactly the same arguments it raised in the ’025 Patent
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`IPRs:
`
`
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`… a POSITA would have found it obvious that the base
`unit 16 (e.g., the 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.
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`- 3 -
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`
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`Compare Pet., 29 with KOSS-2050, 29 and KOSS-2051, 29. Cooperstock’s
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`IPR2021-00592
`Patent Owner Sur-Reply
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`testimony about limitation 1.i of the ’934 Patent was also exactly the same as his
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`testimony about the corresponding limitation in claim 1 of the ’025 Patent. In the
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`present IPR, Cooperstock testified:
`
`Further, a POSITA would have found it obvious that
`Seshadri’s base unit 16 (e.g., the 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. See APPLE-1004, 9:2-8, 10:7-24. This would
`have provided at least one source for the audio streams to
`which Seshadri teaches the base units 16 have access. See
`APPLE-1007, ¶0024.
`
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`APPLE-1003, ¶100. Nearly identically, in the ’025 Patent IPRs, Cooperstock
`
`testified:
`
`
`
`Further, it would have been obvious to a POSITA that the
`base unit 16 (e.g., the PDA 30 or cellphone 36) taught by
`Seshadri 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. See APPLE-1004, 9:2-8, 10:7-24.
`This would have provided at least one source for the audio
`streams to which Seshadri teaches the base units 16 have
`access. See APPLE-1007, ¶0024.
`
`KOSS-2047, ¶108; KOSS-2048, ¶108.
`
`In response to these exact arguments, the Board decided that “Seshadri
`
`discloses a direct coupling to the headset but not to a server,” explaining that “we
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`- 4 -
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`
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`are not persuaded that this configuration would have caused one of ordinary skill in
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`IPR2021-00592
`Patent Owner Sur-Reply
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`the art to further modify the combination of Haupt and Seshadri to provide wireless
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`communication between Seshadri’s devices and Haupt’s servers OS and PS.”
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`IPR2021-00546, Paper 10, 16-17; IPR2021-00626, Paper 10, 16-17.
`
`Here, Petitioner is using the same theory and evidence for limitation 1.i of the
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`’934 Patent that it used for the corresponding limitation of the ’025 Patent. The
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`Board already rejected this theory in the ’025 Patent IPRs. That the Board’s prior
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`decisions involved another patent is irrelevant because the issues are the same and
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`the Board’s reasoning was unassailable. Petitioner presented no evidence showing
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`that the Board’s reasoning in the ’025 Patent IPRs was wrong. Even Cooperstock
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`acknowledged that the Board was not persuaded by his testimony: “As I see it, the
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`[B]oard has taken a position in stating that they are not persuaded.” KOSS-2049,
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`53:6-7.
`
`2.
`
`The Evidentiary Record Reinforces the Board’s Decisions in the
`’025 Patent IPRs
`The “full evidentiary record” (Reply, 1) in this IPR supports and reinforces
`
`the Board’s decisions in the ’025 Patent IPRs because: (i) Petitioner’s Reply cited
`
`no new or different evidence in this IPR that attenuates the Board’s decisions in the
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`’025 Patent IPRs; and (ii) Cooperstock’s deposition testimony in this IPR further
`
`evidenced that a POSITA would not combine Haupt and Seshadri to arrive at claim
`
`- 5 -
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`1 of the ’934 Patent.
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`IPR2021-00592
`Patent Owner Sur-Reply
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`First, Petitioner’s Reply merely emphasized arguments raised in its Petition,
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`which are identical to the arguments rejected by the Board in the ’025 Patent IPRs.
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`Both Petitioner and Cooperstock argued that “the Petition includes an annotated
`
`version of Haupt’s Fig. 1 (reproduced below) meant to illustrate a mobile digital
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`audio player (like those taught by both Haupt and Seshadri) could be coupled to the
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`remote public server OS.” Reply, 3; APPLE-1027, ¶17.
`
`
`
`However, the same annotated Fig. 1 was before the Board in the ’025 Patent
`
`IPRs. KOSS-2050, 6; KOSS-2051, 6. Additionally, annotated Fig. 1 contradicts the
`
`express teachings of Haupt. Petitioner’s annotations to Fig. 1 also depend on an
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`alleged motivation to modify Seshadri that the Board already rejected in IPR2021-
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`00546 and IPR2021-00626.
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`- 6 -
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`IPR2021-00592
`Patent Owner Sur-Reply
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`For example, Haupt exclusively uses the reference designation “WG” in
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`association with a “playback device,” i.e., headphones. APPLE-1004, 7:19-8:6.
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`Accordingly, Haupt’s Figure 1 refers to Haupt’s Figure 2 embodiment because, in
`
`both figures, the headphones WG are connected to an access point. See e.g., APPLE-
`
`1004, 7:30-8:18. Contrarily, in Haupt’s Figure 3, the operating element BE, not the
`
`headphones WG, is connected to the access point. Id., 8:20-27; Fig. 3. Even
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`Cooperstock admitted that Haupt’s Figure 3 refers to a “secondary exemplary
`
`embodiment” where “the WLAN interface is there integrated to the operating
`
`element BE, while the headphones are simply conventional headphones.” KOSS-
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`2049, 57:13-16; see also APPLE-1004, 8:26-27. Cooperstock exclusively relied on
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`his original declaration (i.e., APPLE-1003), not Haupt itself, when asked where
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`Haupt suggests the combination of the embodiments of Haupt’s Figures 2 and 3.
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`KOSS-2049, 58:3-11. This is because Haupt neither teaches nor suggests an
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`embodiment that combines its Figures 2 and 3.
`
`The Reply’s assertion that “Haupt’s description that its first client C1 can
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`‘make use of internet telephoning (voice over IP)’ is entirely consistent with
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`Seshadri’s disclosure about its mobile, DAP (i.e., ‘base unit 16’),” to support the
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`substitution of playback device WG with the PDAs or cellphones disclosed by
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`Seshadri in annotated Fig. 1 (Reply, 5), is misplaced. In the ’025 Patent IPRs,
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`- 7 -
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`
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`Petitioner argued that “[e]ach of Haupt’s and Seshadri’s headsets/headphones is
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`IPR2021-00592
`Patent Owner Sur-Reply
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`configured to receive and reproduce both audio streams and voice communications
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`(e.g., voice over IP).” KOSS-2050, 34; KOSS-2051, 34. Once again, the Board
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`found the exact same arguments unpersuasive, explaining:
`
`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
`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.
`
`
`IPR2021-00546, Paper 10, 16-17; IPR2021-00626, Paper 10, 16-17.
`
`
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`Second, the record evidence teaches away from the Haupt-Seshadri
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`combination. Cooperstock explained that there is an “added level of complexity”
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`that would have dissuaded a POSITA from modifying the devices of Haupt to
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`simultaneously receive data from both Haupt’s server OS and a different source of
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`- 8 -
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`data, because “a POSITA would have needed to design—without any teachings in
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`IPR2021-00592
`Patent Owner Sur-Reply
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`Haupt—delivery coordination between these two servers to the headphones.”
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`APPLE-1027, ¶29. Cooperstock elaborated on this “added level of complexity”:
`
`
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`
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`[I]f the audio file or the audio stream being routed from a
`remote server through a DAP to the wireless headset is one
`stream and a second stream is the firmware upgrade from
`a server, the scenario that you’re describing now would
`seem to involve the same sorts of challenges to a POSITA
`to implement in terms of the coordination complexity.
`
`KOSS-2049, 70:22-71:12.
`
`In other words, Haupt omits the teachings required to establish simultaneous
`
`communications between the alleged mobile DAP of Seshadri and two separate
`
`sources of data (e.g., headphones and servers). This is consistent with the Board’s
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`rejection of the Haupt-Seshadri combination in the ’025 Patent IPRs. The
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`“coordination complexities” identified by Cooperstock would further dissuade a
`
`POSITA from establishing the tripartite communications between the remote server,
`
`the mobile digital audio player, and the wireless headphones recited in claim 1 of
`
`both the ’934 and ’025 Patents. Cooperstock’s “coordination complexities”
`
`undermines his theory that “a mobile digital audio player (like those taught by both
`
`Haupt and Seshadri) could be coupled to the remote public server OS.” Reply, 3;
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`APPLE-1027, ¶17.
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`- 9 -
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`IPR2021-00592
`Patent Owner Sur-Reply
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` Thus, the evidentiary record supports that a POSITA would have been
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`unmotivated to modify Seshadri’s devices to also communicate with the servers
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`taught by Haupt.
`
`B. Claims 7, 21, 30 and 45
`Claims 7, 21, 30 and 45 recite that data “about the headphone assembly” are
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`transmitted to a remote device. See APPLE-1001, 19:11-13 (claim 7). In other
`
`words, data about the transmitting device are sent. The POR pointed out that
`
`Petitioner’s theory relied on the opposite configuration in Haupt. Haupt’s Figure 8,
`
`upon which Petitioner relied, shows a microphone sending signals to headphones
`
`with data about the headphones, i.e., the network ID for the headphones.
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`Accordingly, Haupt’s Figure 8 microphone transmits data about the recipient device,
`
`not data about the transmitting device. POR, 35; APPLE-1004, 21:27-22:12.
`
`Cooperstock’s rejoinder about Haupt was not believable. He said that Haupt
`
`is wrong, i.e., it has a “typographic error.” KOSS-2049, 89:17. Specifically,
`
`Cooperstock asserted that in the paragraph starting at line 22, page 21 of Haupt
`
`(APPLE-1004), the word “headphones” should be replaced by “microphone” at line
`
`30. KOSS-2047, 91:15-17. Cooperstock’s theory is to literally change the words of
`
`the paragraph that confirms that Haupt’s Figure 8 microphone sends data about the
`
`recipient device, i.e., the network ID for the headphones, to make it say that the
`
`microphone sends data about itself, i.e., a network ID for the transmitting device.
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`- 10 -
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`
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`This theory should be rejected for several reasons.
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`IPR2021-00592
`Patent Owner Sur-Reply
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`First, by relying on changes to the words in Haupt, Petitioner’s theory is not
`
`based on the printed publication of Haupt, in contravention of 35 U.S.C. § 311(b).
`
`Expert testimony, like Cooperstock’s new “typo” theory, “cannot take the place of a
`
`disclosure in a prior art reference, when that disclosure is required as part of the
`
`unpatentability analysis.” PTAB Consolidated Trial Practice Guide (Nov. 2019)
`
`(“CTPG”), 36. Petitioner cannot rewrite the words in Haupt to fabricate a teaching
`
`that is neither implicit nor inherent in Haupt. Petitioner’s reliance on selective
`
`changes to the literal text of Haupt is in violation of the statute and Petitioner’s
`
`grounds founded on a modification of the actual words of Haupt should be rejected.
`
`Second, Cooperstock’s testimony that Haupt’s includes the alleged error is
`
`not credible. Cooperstock testified that the error “really seems like a minor
`
`typographical issue that would be apparent to the reader as to what the intent was
`
`….” KOSS-2047, 94:15-17 (emphasis added). Cooperstock’s own testimony shows
`
`that the alleged error is not apparent because:
`
`Cooperstock “didn’t even take notice of” it (id., 94:17-18);
`… and it “was not something that stood out to” him (id., 98:9-10);
`… even after block quoting in his Supplemental Declaration the portion
`of the paragraph that has the alleged error, but without correcting
`the “apparent” error in the block quote (APPLE-1027, ¶52);
`… and even after reviewing his Supplemental Declaration, with the
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`- 11 -
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`IPR2021-00592
`Patent Owner Sur-Reply
`
`block quote, at least five times (KOSS-2047, 97:21-98:4);
`… until he finally noticed the alleged error at his deposition (id.,
`97:10-13);
`… when it was brought to his attention. Id., 101:21-102:4.
`That testimony is not credible. The alleged error cannot be “apparent” if the
`
`expert could not notice it after reading the passage several times and after block-
`
`quoting it in his declaration without correcting the alleged error. He only noticed
`
`the alleged error when confronted at his deposition about how Haupt actually
`
`describes the operation of the microphone of Figure 8. The more credible
`
`explanation is that Haupt meant what it stated in the passage at page 21; Cooperstock
`
`did not read Haupt correctly; and Cooperstock fabricated at his deposition a story
`
`about Haupt having an “apparent” error to salvage his testimony based on his
`
`incorrect reading of Haupt.
`
`Third, Petitioner’s “typo” theory is impermissibly new. Cooperstock did not
`
`raise his “typo” theory until after the POR. By saving the “typo” theory until after
`
`the POR, Petitioner deprived Patent Owner of the opportunity to submit expert
`
`evidence that Haupt does not include an error. Consequently, Petitioner’s “typo”
`
`theory should not be considered. See CTPG 73 (“Petitioner may not submit new
`
`evidence or argument in reply that it could have presented earlier, e.g. to make out a
`
`prima facie case of unpatentability.”).
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`- 12 -
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`IPR2021-00592
`Patent Owner Sur-Reply
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`Cooperstock’s reliance Haupt’s Figure 9 (see e.g., KOSS-2047, 90:8-91:1)
`
`does not save his new “error” theory. Haupt’s Figure 9 depicts a device that
`
`combines the headset in Figure 7 with the microphone in Figure 8. APPLE-1004,
`
`22:11-12. Haupt explains that this embodiment “can forward audio signals via their
`
`Bluetooth interface to another Bluetooth headset or headphones ….” Id., 22:30-
`
`23:2. By sending the audio to “another” headset, the Figure 9 embodiment is like
`
`the Figure 8 microphone that sends audio to another device, using the network ID
`
`for that other, recipient device. Id., 21:29-31. Thus, Haupt does not disclose, in any
`
`embodiment, sending data about the transmitting device to a recipient device.
`
`C. Claims 33-37, 39, 42-43 and 45-57
`According to Petitioner, “the record makes abundantly clear that a POSITA
`
`would have had no problem implementing the claimed features in the small form
`
`factor of earbuds.” Reply, 11. The Reply, however, ignored evidence cited in the
`
`POR that refuted the arguments raised in the Petition.
`
`Petitioner Ignored the SoC Disclosed by the ’934 Patent
`1.
`Instead of pointing to evidence of record in support of its assertion, Petitioner
`
`criticized the ’934 Patent for an alleged lack of sufficient disclosure. However,
`
`Petitioner’s reliance on In re Epstein (Reply, 11-12) ignored distinguishing facts
`
`raised in the POR, specifically that the ’934 Patent discloses the use of a system-on-
`
`a-chip (“SoC”) to allow for smaller components and lower power requirements,
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`- 13 -
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`
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`which is “advantageous” if the earphones are in-ear, like earphones with earbuds.
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`IPR2021-00592
`Patent Owner Sur-Reply
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`POR, 43; APPLE-1001, 6:43-48. As previously noted, neither Haupt, Seshadri, Rao,
`
`Rosener, nor Paulson disclose wireless earphones with an SoC. Therefore,
`
`Petitioner’s arguments regarding In re Epstein are meritless. In contrast to the cited
`
`prior art, the ’934 Patent has teachings that exactly enable the claims. KOSS-2046,
`
`¶17.
`
`2.
`
`The Record Demonstrates that a POSITA Would Have a
`Unreasonable Expectation of Success Condensing the Claimed
`Components into a Small Form Factor
`The record shows that a POSITA would have had difficulty condensing the
`
`components of Haupt, Seshadri, Rao, and Paulson into the small form factor of
`
`Rosener’s earbuds. Cooperstock admitted that there would be “various issues that
`
`arise in increased component count in terms of the – and it’s -- well, some of them
`
`are size-related.” KOSS-2049, 64:8-10. Cooperstock specifically identified “circuit
`
`isolation requirements,” “power demands,” “heat dissipation,” and “signal
`
`interference” as just a few examples of the “numerous considerations [that] would
`
`be relevant as the component count increases in a circuit.” See id., 64:11-16. This
`
`comports with the testimony of Patent Owner’s expert witness, Mr. Joseph C.
`
`McAlexander III (“McAlexander”), who explained that “[a] POSITA has to contend
`
`with a number of issues such as size and weight restrictions for a battery for use in
`
`Rosener’s earbuds.” KOSS-2046, ¶68.
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`- 14 -
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`IPR2021-00592
`Patent Owner Sur-Reply
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`Regarding the sufficiency of Rosener’s battery, Petitioner argued that
`
`Rosener’s battery would be reliable enough to support the claimed firmware updates
`
`because “Rosener lacks any disclosure indicating that its battery is unable to provide
`
`sufficient power during a firmware upgrade or any other mode of operating its
`
`headphones.” Reply, 15. This is faulty logic. Petitioner is inferring, illogically,
`
`explicit disclosures from Rosener’s silence. Petitioner’s admission that Rosener is
`
`silent on firmware upgrades evidences the insufficiency of Rosener’s battery.
`
`McAlexander found that, because Rosener does not disclose firmware upgrades and
`
`firmware upgrades require a reliable power source, the battery of Rosener would run
`
`the risk of “bricking” the device. KOSS-2046, ¶¶62-63.
`
`Petitioner’s Reply further argued that a POSITA would have understood that
`
`a battery could be charged during a firmware upgrade “using the docking station
`
`taught by Seshadri and described in Petition with respect to claim 35.” Reply, 15-
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`16. However, claim 1 recites the firmware upgrade but neither recites nor requires
`
`the docking station of claim 35. APPLE-1001, 18:1-32.
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`Petitioner also relied on Cooperstock’s testimony that “one technique that
`
`would have been apparent to a POSITA is to condition the firmware upgrades based
`
`on the charge level of a headphones rechargeable battery.” Reply, 16 (citing
`
`APPLE-1027, ¶48). Cooperstock relied on a new reference, Marolia (APPLE-1029)
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`- 15 -
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`in support of this assertion. However, Marol
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