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 IPR2021-00592
`Patent 10,469,934
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`PETITIONER’S POST-HEARING ADDITIONAL BRIEFING
`AUTHORIZED BOARD’S ORDER OF MAY 27, 2022 (PAPER 50)
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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 IPR2021-00592
`Patent 10,469,934
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`PETITIONER’S POST-HEARING ADDITIONAL BRIEFING
`AUTHORIZED BOARD’S ORDER OF MAY 27, 2022 (PAPER 50)
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`TABLE OF CONTENTS
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`I. The Relevant Claim Language is Not Limiting ..................................................... 2
`II. Even So, Haupt and Seshadri Render Obvious a Server in Communication with
`a DAP ................................................................................................................ 5
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`i
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`Case IPR2021-00592
`Docket No. 50095-0018IP1
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`APPLE-1001
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`APPLE-1002
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`LIST OF EXHIBITS
`U.S. Patent No. 10,469,934 to Koss, et al. (“the ’934 patent”)
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`Excerpts from the Prosecution History of the ’934 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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`Certified English-language translation of WIPO PCT App. Pub.
`No. WO 2006/042749 to Haupt et al. (“Haupt”)
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`APPLE-1005
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`U.S. Patent No. 8,401,219 to Hankey et al. (“Hankey”)
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`APPLE-1006
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`[RESERVED]
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`APPLE-1007
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`U.S. Pat. App. Pub. No. 2006/0166716 to Seshadri et al.
`(“Seshadri”)
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`APPLE-1008
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`U.S. Pat. App. Pub. No. 2008/0076489 to Rosener et al.
`(“Rosener”)
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`APPLE-1009
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`U.S. Pat. No. 7,881,745 to Rao et al. (“Rao”)
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`APPLE-1010
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`U.S. Pat. App. Pub. No. 2006/0026304 to Price et al. (“Price”)
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`APPLE-1011
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`U.S. Pat. No. 7,551,940 to Paulson et al. (“Paulson”)
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`APPLE-1012
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`U.S. Pat. App. Pub. No. 2008/0052698 to Olson et al. (“Olson”)
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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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`ii
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`APPLE-1016
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`APPLE-1017
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`APPLE-1018
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`Case IPR2021-00592
`Docket No. 50095-0018IP1
`Agreed [Proposed] Scheduling Order, KOSS Corporation v.
`Apple Inc., 6:20-cv-00665 (WDTX)
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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-afterptab-discretionary-denials/ (Jul. 24, 2020)
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`APPLE-1019
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`Amended Agreed Scheduling Order, Fintiv, Inc. v. Apple, Inc.,
`Civil Action No. A-19-CV-1238 (WDTX)
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`APPLE-1020
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`Letter from Michael Pieja to Darlene F. Ghavimi re Conditional
`Stipulation dated March 2, 2021
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`APPLE-1021
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`Constantine A. Balanis, Antenna Theory: A Review, 80
`Proceedings of the IEEE 7 (1992)
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`APPLE-1022
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`Declaration of Seth Sproul ISO Motion for Pro Hac Vice
`Admission
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`APPLE-1023
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`Updated Declaration of Seth Sproul
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`APPLE-1024
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`Declaration of Michael Pieja ISO Motion for Pro Hac Vice
`Admission
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`APPLE-1025
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`Updated Declaration of Michael Pieja
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`APPLE-1026
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`Declaration of Doug Winnard ISO Motion for Pro Hac Vice
`Admission
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`APPLE-1027
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`Supplemental Declaration of Jeremy R. Cooperstock
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`iii
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`APPLE-1028
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`Case IPR2021-00592
`Docket No. 50095-0018IP1
`Joseph C. McAlexander III Deposition Transcript, Feb. 2, 2022
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`APPLE-1029
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`U.S. Pat. No. 7,480,907 to Marolia et al.
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`APPLE-1030
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`U.S. Pub. No. 2008/0194209 to Haupt et al.
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`APPLE-1031
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`“Apple AirPods + Powerbeats Pro is Keeping Apple in the
`Hearables Market Leadership with over 50% Market Share,”
`Patently Apple, Nov., 2019 (https://protect-
`us.mimecast.com/s/GcPPC9rpGyh8lKLWIEydzM?domain=pat
`entlyapple.com)
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`APPLE-1032
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`E-mail from Mark Knedeisen re “Apple v Koss IPRs - Routine
`Discovery” (Aug. 10, 2021, 14:42 EST)
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`APPLE-1033
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`Petitioner’s Demonstratives
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`iv
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`Case IPR2021-00592
`Docket No. 50095-0018IP1
`In deciding not to institute trial in IPR2021-00546 with respect to related U.S.
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`Patent No. 10,206,025 (the ’025 Patent), the Board’s decision appropriately focused
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`on the scope of the ’025 claims and its recitation of “a remote, network-connected
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`server that is in wireless communication with the mobile, digital audio player.” See
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`IPR2021-00546, Paper 10, 15-19. The ’025 claimed system denotes, inter alia, a
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`configuration of—and thus structure for—two apparatuses that are expressly recited
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`as elements of the system: a remote server and a digital audio player (DAP). By
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`implicating the structure of these two claimed elements of the system, the relevant
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`’025 claim language appropriately limits the claimed system.
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`Critically, the ’934 Patent claims are directed to a headphone assembly, not
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`the more encompassing system. As such, neither the remote server nor the DAP are
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`themselves within the scope of the ’934 Patent claims. The claimed “headphone
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`assembly” is instead limited by only the language actually implicating its structure.
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`The record in this proceeding is without evidence or even allegation that the structure
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`of the claimed headphone assembly is limited by functional features of the remote
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`server and DAP that are only inferentially set forth in the ’934 claims. Thus, the
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`institution decision in IPR2021-00546 is not determinative of the outcome here. Yet,
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`even if this claim language were inappropriately given patentable weight, the prior
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`art set forth in the Petition renders it obvious.
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`1
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`Case IPR2021-00592
`Docket No. 50095-0018IP1
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`I.
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`The Relevant Claim Language is Not Limiting
`Claim 1 of the ’934 Patent recites a specific apparatus: “[a] headphone
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`assembly.” POR, 4 (“Claim 1 recites a headphone assembly that comprises . . .”).
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`The structure of the headphone assembly is unaffected by recitation of “a remote,
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`network-connected server that is in wireless communication with the mobile, digital
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`audio player,” as this language merely describes the relationship between two
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`apparatuses (i.e., the remote server and the DAP) that are separate and distinct from
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`the claimed apparatus (i.e., the headphone assembly). There is no evidence in the
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`patent or elsewhere on this record that communication between these two unclaimed
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`apparatuses impacts the structure of the claimed headphone assembly.
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`It is well established that descriptions of use do not typically limit apparatus
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`claims because the patentability of an apparatus depends on the claimed structure,
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`not the use or purpose of that structure. See Baldwin Graphic Systems, Inc. v.
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`Siebert, Inc., 512 F.3d 1338, 1344 (Fed. Cir. 2008) (“Courts must generally take care
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`to avoid reading process limitations into an apparatus claim.”); Hewlett-Packard Co.
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`v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990) (“[A]pparatus claims
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`cover what a device is, not what a device does.”) (emphasis in original); In re Danly,
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`46 C.C.P.A. 792, 263 F.2d 844, 848 (Cust. & Pat.App.1959) (“Claims drawn to an
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`apparatus must distinguish from the prior art in terms of structure rather than
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`function.”); In re Michlin, 256 F.2d 317, 320 (C.C.P.A. 1958) (“It is well settled that
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`Docket No. 50095-0018IP1
`patentability of apparatus claims must depend upon structural limitations and not
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`upon statements of function.”); see also Cross Medical Products, Inc. v. Medtronic
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`Sofamor Danek, 424 F. 3d 1293, 1311-12 (Fed. Cir. 2005) (focusing on related
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`concepts in infringement).
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`Indeed, to limit an apparatus claim, functional language must result in a
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`structural difference in the claimed apparatus. See K-2, 191 F.3d at 1363-64 (holding
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`“said non-rigid shoe portion being permanently affixed to said base portion at least
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`at said toe area and said heel area for substantially preventing movement there-
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`between at least in a horizontal plane” was a claim limitation because it spoke to the
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`structural requirements of the attachment); In re Stencel, 828 F.2d 751, 754 (Fed.
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`Cir. 1987). Where the language does not structurally differentiate the claimed
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`apparatus, the language is not limiting. See In re Hack, 44 C.C.P.A. 954, 245 F.2d
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`246, 248 (Cust. & Pat. App. 1957).
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`Koss’s own summary of the relevant claim language demonstrates that the
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`language does not limit the claimed headphone assembly. In its response, Koss
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`asserts that “claim 1 of both patents requires that (i) the processor of the headphone
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`assembly, upon activation, initiates transmission of a request to a remote, network-
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`connected server; (ii) the network-connected server is in wireless communication
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`with the mobile DAP; and (iii) the DAP is in wireless communication with the
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`headphone assembly.” POR, 20 (emphasis added). Items (i) and (iii) of Koss’s list
`3
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`Docket No. 50095-0018IP1
`of alleged requirements both clearly mention and relate to the headphone assembly.
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`Notably differentiated is item (ii), which does not even mention the headphone
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`assembly, much less limit its structure. Thus, Koss acknowledges that the relevant
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`claim language limits the server and the DAP, not the headphone assembly.
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`And Koss’s characterization is consistent with how Koss framed the same
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`limitations when drafting claims of the ’025 Patent. There, each element is
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`distinguished as a distinct component of a multi-apparatus system, and the claim
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`recites the relevant “communication” feature with the remote server limitation
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`(KOSS-2025, 18:22-23) and separate from the recited limitations of the headphone
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`assembly (id., 18:5-21)—the sole subject of the ’934 claims. The specification of
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`the ’934 Patent also demonstrates that the communication between the server and
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`the DAP has no impact on how the headphone assembly communicates with either.
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`For example, the ’934 Patent describes examples in which a host or content server
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`(e.g., “an Internet radio server”) streams audio directly to the headphone assembly,
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`which are handled
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`through “common
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`infrastructure wireless network”
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`communications (i.e., IP-based communications). See, e.g., APPLE-1001, 2:9-17,
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`5:51-6:27. Even in an example where the server receives its audio from a DAP, the
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`server streams that audio to the headphone assembly over the Internet with no
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`distinction made as to the source of that streamed audio. See id., 6:3-27.
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`4
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`Case IPR2021-00592
`Docket No. 50095-0018IP1
`There is no evidence in the ’934 patent or elsewhere on this record that
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`communication between the server and the DAP has any impact on the configuration
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`or structure of the headphone assembly, and thus no basis for Koss to import such a
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`structural limitation into the claims of the ’934 Patent, where it simply does not exist.
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`II. Even So, Haupt and Seshadri Render Obvious a Server in
`Communication with a DAP
`Through citation to the teachings of both Haupt and Seshadri, the Petition
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`demonstrates that “it was well-known in the art that wireless headphones like
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`Haupt’s could connect to a local digital media player (e.g., a cellular telephone or
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`MP3 player) and reproduce music stored there.” Petition, 9-10 (citing both APPLE-
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`1004 and APPLE-1007). In this regard, the Petition does not limit the headphone
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`assembly of the proposed combination to receiving wireless signals from any
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`specific DAPs (e.g., the base unit 16 of Seshadri). Citation to and discussion of
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`Seshadri and its teachings with respect to the communications between its
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`headphone assembly 10 and its base units 16 was to demonstrate that it was known
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`and obvious to configure headphone assemblies (like those taught in Haupt) to
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`communicate with local sources of audio via Bluetooth. See Petition, 8-11.
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`Throughout Section IV.A.3 and the mapping of the claim language, the
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`Petition justifies its assertion that Haupt teaches a system that includes the claimed
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`“remote, network connected server that is in wireless communication with the
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`5
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`Case IPR2021-00592
`Docket No. 50095-0018IP1
`mobile, digital audio player.” See Petition, 27. For example, Haupt describes a “first
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`client C1 is in the form of, e.g., a PDA, pocket PC, etc. and plays back audio and
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`video data wirelessly from the available network.” APPLE-1004, 16:15-16. This
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`description of client C1 is indistinguishable from the mobile, digital audio player
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`described and claimed in the ’934 Patent. Haupt describes that “[h]eadphones can
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`be connected to the first client C1” and that the first client C1 can “play live internet
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`radio.” APPLE-1004, 16:16-19. Unrebutted testimony from Dr. Cooperstock
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`establishes that a POSITA would have understood that such “live internet radio”
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`would be provided by “a remote public server, like Haupt’s OS.” APPLE-1027, ¶18.
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`This is consistent with the ’934 Patent’s teachings regarding the source of internet
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`radio. See APPLE-1001, 2:14-17, 6:3-7, 8:24-27 (noting that “Internet radio
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`stations” are “hosted by streaming digital audio content servers 70”). Thus, Haupt
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`describes a DAP (i.e., first client C1) that is in communication with a remote,
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`network-connected server (i.e., the source of the “live internet radio”), as inferred
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`by the claims. See Reply, 2-8.
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`Further, Haupt makes clear that its WLAN headphone assembly would be
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`capable of connecting with and receiving audio from this DAP. Specifically, Haupt
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`describes that because its WLAN headphone assembly has been assigned an IP
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`address, “audio data can be transmitted wirelessly, directly to the network element
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`in the form of headphones,” and, consequently, “all of the functions within the
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`Case IPR2021-00592
`Docket No. 50095-0018IP1
`reception range of both the private as well as the public WLAN network can be used
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`by the headphones or headset.” APPLE-1004, 19:10-16. Haupt describes that, as a
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`result, “audio files from a personal PC connected to the network, or a music server,
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`can be transferred wirelessly to the wireless headphones, and played back.” APPLE-
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`1004, 19:17-19. Like this personal PC, Haupt describes that first client C1 is
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`assigned an IP address, meaning the first client C1 is a network element that can
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`communicate through the network with Haupt’s WLAN headphone assembly.
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`APPLE-1004, 18:1-3, 19:1-3; see also APPLE-1027, ¶¶16-20.
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`While Haupt describes that communication with first client C1 (i.e., a DAP)
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`is performed via WLAN, the Petition set forth through the teachings of Seashadri
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`why it would have been obvious to also configure Haupt’s headphone assembly to
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`communicate with such local devices via an ad hoc network (e.g., Bluetooth).
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`Petition, 8-11; APPLE-1027, ¶¶21-27. For example, “[d]ual communication
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`pathways allow communications to be switched between pathways, dependent on
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`factors such as audio quality, signal strength, and available bandwidth.” Petition, 11
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`(citing APPLE-1007, ¶0042). Thus, the combination of Haupt and Seshadri renders
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`obvious each of the recited communications between each of the three elements of
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`the system (the headphones assembly, the server and the DAP), including those
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`inferentially-referenced communications that are not entitled to patentable weight.
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`7
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`Date:
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`June 6, 2022
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`Case IPR2021-00592
`Docket No. 50095-0018IP1
`Respectfully submitted,
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`
`
`/ W. Karl Renner /
`W. Karl Renner, Reg. No. 41,265
`David L. Holt, Reg. No. 65,161
`Joel A. Henry, Reg. No. 72,970
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
`
`
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`CERTIFICATE OF SERVICE
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`Case IPR2021-00592
`Docket No. 50095-0018IP1
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`Pursuant to 37 CFR § 42.6(e)(4), the undersigned certifies that on June 6,
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`2022, a complete and entire copy of this Petitioner’s Post-Hearing Additional
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`Briefing was provided via email, to the Patent Owner by serving the email
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`correspondence address of record as follows:
`
`Mark G. Knedeisen
`Laurén Murray
`Brian P. Bozzo
`
`K&L GATES LLP
`K&L Gates Center, 210 Sixth Avenue
`Pittsburgh, PA 15222
`
`Email: mark.knedeisen@klgates.com
`Email: lauren.murray@klgates.com
`Email: brian.bozzo@klgates.com
`
`/Crena Pacheco/
`Crena Pacheco
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(617) 956-5938
`
`
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