`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`KOSS CORPORATION,
`Patent Owner.
`_____________________
`
`CASE: IPR2021-00592
`U.S. PATENT NO. 10,469,934
`_____________________
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`
`
`

`

`
`
`IPR2021-00592
`Patent Owner’s Preliminary Response
`
`TABLE OF CONTENTS 
`
`I. 
`II. 
`
`
`INTRODUCTION ........................................................................................... 1 
`BACKGROUND ............................................................................................. 4 
`A. 
`’934 Patent ............................................................................................. 4 
`B. 
`Related Proceedings .............................................................................. 5 
`III.  THE BOARD SHOULD DENY INSTITUTION BECAUSE OF CO-
`PENDING LITIGATION INVOLVING THE ’934 PATENT ....................... 6 
`A. 
`Factor 1: The District Court Has Not Issued a Stay ............................. 7 
`B. 
`Factor 2: Proximity of the Scheduled Trial Date to the Board’s
`Statutory Deadline for Written Decision ............................................. 10 
`Factor 3: The Parties and Court Will Have Invested Substantial
`Resources in the Texas Litigation Prior to the Institution Decision ... 13 
`Factor 4: The Issues Raised in the Petition Overlap Substantially with
`Issues Raised in the Texas Litigation .................................................. 16 
`Factor 5: Petitioner is a Defendant in the Texas Litigation ............... 20 
`Factor 6: Other Considerations That Influence the Board’s Exercise
`of Discretion Weigh in Favor of Denying Institution ......................... 20 
`G.  Holistic Assessment of Fintiv Factors ................................................. 22 
`IV.  THE BOARD SHOULD DENY INSTITUTION BECAUSE THE
`PETITION PRESENTS SUBSTANTIALLY THE SAME ART
`PREVIOUSLY CONSIDERED BY THE OFFICE AND HAS NOT
`DEMONSTRATED A MATERIAL ERROR BY THE OFFICE ................ 24 
`A. 
`Contrary to Petitioner’s Assertion, the Petition Relies on the Same and
`Substantially the Same Art Considered by the Office ........................ 26 
`
`C. 
`
`D. 
`
`E. 
`F. 
`
`i
`
`

`

`
`
`V. 
`
`IPR2021-00592
`Patent Owner’s Preliminary Response
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`Becton, Dickinson Factor (a): The Asserted Art and Prior Art
`Evaluated during Examination are Highly Similar and The
`Differences Show the Evaluated Prior Art is More Relevant ... 28 
`Becton, Dickinson Factor (b): The Petition Relies on Teachings
`that are Cumulative to the Teachings Considered by the
`Office......................................................................................... 33 
`Becton, Dickinson Factor (d): The Manner in Which Petitioner
`Relies on the Prior Art Overlaps with the Examiner’s
`Assessment of the Closest Prior Art ......................................... 34 
`The Other Relied-Upon References Do Not Cure the
`Deficiencies of Haupt, Seshadri and Rao ................................. 35 
`Petitioner Fails to Make a Showing of Material Error by the
`Examiner ............................................................................................. 36 
`1. 
`Becton, Dickinson Factor (c) – The Teachings of Haupt and
`Seshadri Were Evaluated During Examination ........................ 37 
`Becton, Dickinson Factor (e) – Petitioner Has Not Sufficiently
`Pointed Out How the Examiner Erred In His Evaluation of the
`Asserted Prior Art ..................................................................... 38 
`Becton, Dickinson Factor (f) – Petitioner Does Not Present
`Additional Evidence or Facts to Warrant Reconsideration of
`Any Combination Involving Haupt .......................................... 38 
`THE PETITION FAILS TO SHOW THAT THERE IS REASONABLE
`LIKELIHOOD THAT PETITIONER WILL PREVAIL ON A SINGLE
`CLAIM........................................................................................................... 39 
`A. 
`The Petition Fails to Show that the Haupt-Seshadri-Rao Combination
`Satisfies “the processor is configured to, upon activation of a user-
`control of the headphone assembly, initiate transmission of a request
`to a remote, network-connected server that is in wireless
`communication with the mobile, digital audio player” ....................... 41 
`
`B. 
`
`2. 
`
`3. 
`
`ii
`
`

`

`
`
`IPR2021-00592
`Patent Owner’s Preliminary Response
`
`B. 
`
`The Petition Fails to Show that the Haupt-Seshadri-Rao Combination
`Satisfies “a rechargeable battery for powering the headphone
`assembly” ............................................................................................ 44 
`VI.  CONCLUSION .............................................................................................. 48
`
`
`iii
`
`

`

`
`
`IPR2021-00592
`Patent Owner’s Preliminary Response
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Advanced Bionics, LLC v. MED-EL Elektromedizinische Geraete
`GmbH,
`IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) .........................................passim
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (PTAB March 20, 2020) ...................................passim
`Apple Inc. v. Koss Corp.,
`IPR2021-00255, Paper 22 (PTAB June 3, 2021) ........................................passim
`Apple Inc. v. Koss Corp., IPR2021-00305, Paper 22 (PTAB June 3,
`2021) ............................................................................................................passim
`Aquestive Therapeutics, Inc. v. Neurelis, Inc.,
`IPR2019-00450, Paper 8 (PTAB Aug. 1, 2019) ........................................... 38, 39
`Arendi S.A.R.L. v. Apple Inc.,
`832 F.3d 1355 (Fed. Cir. 2016) .............................................................. 46, 47, 48
`B/E Aerospace, Inc. v. C&D Zodiac, Inc.,
`962 F.3d 1373 (Fed. Cir. 2020) .......................................................................... 46
`Becton, Dickinson & Co. v. B. Braun Melsungen AG,
`IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) ........................................passim
`Cisco Sys., Inc. v. Monarch Networking Sols. LLC,
`IPR2020-01226, Paper 11, 15 (PTAB Mar. 4, 2021) ......................................... 19
`
`GlaxoSmithKline Consumer Healthcare Holdings (US) LLC v. Cipla
`Ltd.,
`IPR2020-00369, Paper 7 (PTAB July 31, 2020) ................................................ 26
`Google LLC v. Personalized Media Commc’ns, LLC,
`IPR2020-00724, Paper 19 (PTAB Aug. 31, 2020) ............................................... 7
`
`iv
`
`

`

`
`
`IPR2021-00592
`Patent Owner’s Preliminary Response
`
`Harmonic Inc. v. Avid Tech.,
`815 F.3d 1356 (Fed. Cir. 2016) ............................................................................ 6
`Intel Corp. v. VLSI Tech. LLC,
`IPR2019-01192, Paper 15 (PTAB Jan. 9, 2020) .................................................. 6
`K/S Himpp v. Hear-Wear Techs., LLC,
`751 F.3d 1362 (Fed. Cir. 2014) .......................................................................... 47
`MediaTek Inc. v. Nippon Tel. and Tel. Corp.,
`IPR2020-01607, Paper 12 (PTAB April 2, 2021) ................................................ 7
`In re Mouttet,
`686 F.3d 1322 (Fed. Cir. 2012) .......................................................................... 19
`NHK Spring Co. v. Intri-Plex Techs., Inc.,
`IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) ................................................. 1
`Perfect Web Techs., Inc. v. InfoUSA, Inc.,
`587 F.3d 1324 (Fed. Cir. 2009) .......................................................................... 48
`Prollenium US Inc. v. Allergan Industrie, SAS,
`No. IPR2020-00084, Paper 12 (PTAB Apr. 10, 2020) ...................................... 27
`In re Rijckaet,
`9 F.3d 1531 (Fed. Cir. 1993) .............................................................................. 47
`Robert Bosch Tool Corp. v. SD3, LLC,
`IPR2016-01754, Paper 15 (PTAB Mar. 22, 2017) ............................................. 36
`Samsung Elecs. Co., Ltd. v. Ancora Techs., Inc.,
`IPR2020-01184, Paper 11 (PTAB Jan. 5, 2021) ...................................... 7, 20, 21
`Sand Revolution v. Cont’l Intermodal Grp.-Trucking LLC,
`IPR2019-01393, Paper 24 (PTAB June 16, 2020) ............................... 7, 8, 11, 23
`SK Hynix v. Netlist,
`IPR2020-01421, Paper 10 (PTAB Mar. 16, 2021) ............................................. 14
`Sotera Wireless, Inc. v. Masimo Corp.,
`IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) ............................................... 19
`
`v
`
`

`

`
`
`IPR2021-00592
`Patent Owner’s Preliminary Response
`
`Verizon Bus. Network Servs. LLC v. Huawei Techs. Co.,
`IPR2020-01292, Paper 13 (PTAB Jan. 25, 2021) .................................. 14, 15, 21
`Verizon Bus. Network Svs., LLC v. Huawei Tech. Co.,
`IPR2020-01278, Paper 12, 13 (PTAB Jan. 26, 2021) ........................................ 19
`Statutes
`35 U.S.C. § 103 ........................................................................................................ 39
`35 U.S.C. § 314 .................................................................................................passim
`35 U.S.C. § 316 .................................................................................................... 6, 10
`35 U.S.C. § 325(d) ............................................................................................passim
`Other Authorities
`37 C.F.R. § 42.107(a) ................................................................................................. 1
`37 C.F.R. § 42.108(c) ................................................................................................. 6
`TRIAL PRACTICE GUIDE CONSOLIDATED at 36 (July 2019) ...................................... 47
`
`
`vi
`
`

`

`
`
`IPR2021-00592
`Patent Owner’s Preliminary Response
`
`EXHIBIT LISTING
`
`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
`
`vii
`
`

`

`
`
`
`
`IPR2021-00592
`Patent Owner’s Preliminary Response
`
`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)
`
`viii
`
`

`

`
`I.
`
`INTRODUCTION
`
`IPR2021-00592
`Patent Owner Preliminary Response
`
`Patent Owner, Koss Corporation (“Koss”), submits this Patent Owner
`
`Preliminary Response (“POPR”) pursuant to 37 C.F.R. § 42.107(a) to the Inter
`
`Partes Review (“IPR”) petition (“Petition”) filed by Apple Inc. (“Petitioner”) for
`
`claims 1-3, 5, 7, 9-11, 14-16, 19, 21, 23-25, 28, 30, 32-37, 39, 42, 43, 45-48, and 51-
`
`57 (“Challenged Claims”) of U.S. Patent No. 10,469,934 (“’934 Patent,” APPLE-
`
`1001).
`
`The Board should deny institution for several reasons.
`
`First, institution of the IPR would demand an untimely and inefficient
`
`proceeding that would effectively “second guess” the result of a jury trial in
`
`concurrent litigation. See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-
`
`00752, Paper 8 at 11–21 (PTAB Sept. 12, 2018) (Precedential); Apple Inc. v. Fintiv,
`
`Inc., IPR2020-00019, Paper 11 at 2–3 (PTAB March 20, 2020) (Precedential). The
`
`’934 Patent is being asserted against Petitioner in co-pending litigation in the
`
`Western District of Texas (“WDTX”), Koss Corp. v. Apple Inc., Case No. 6:20-cv-
`
`00665-ADA (“Texas Litigation”). The trial in the Texas Litigation was originally
`
`scheduled, and recently confirmed, to commence in April 2022 (APPLE-1016, 4;
`
`KOSS-2001, 15 (see Dkt. 72)), approximately five months before a Final Written
`
`Decision (“FWD”) is expected to issue if the IPR is instituted. The Board should
`
`
`- 1 -
`
`

`

`
`exercise its discretion under 35 U.S.C. § 314(a) to deny institution in the interests of
`
`IPR2021-00592
`Patent Owner Preliminary Response
`
`efficiency and fairness.
`
`Second, the Board should deny institution under 35 U.S.C. § 325(d). The
`
`Office previously considered—and rejected—Petitioner’s arguments with respect to
`
`substantially the same art that was presented to the Office during the original
`
`examination of the ’934 Patent. Contrary to Petitioner’s assertion, the substance of
`
`Haupt (APPLE-1004) was considered in the original examination of the ’934 Patent.
`
`Haupt
`
`is
`
`an English
`
`translation of
`
`a published PCT
`
`application,
`
`PCT/EP/2005/011228, that is in German. APPLE-1004, 35. However, the
`
`publication of the U.S. nationalization of that PCT application, U.S. Patent
`
`Application Pub. No. 2008/0194209 (“Haupt ’209,” KOSS-2009), was considered
`
`during the examination of the ’934 Patent. APPLE-1001, 2. The Petition does not
`
`explain why its translation is more relevant or meaningful than the translation (Haupt
`
`’209) that the examiner considered originally. The fact that Petitioner combines its
`
`translation with additional references, Seshadri (APPLE-1007) and Rao (APPLE-
`
`1009), to assert that the independent claims are obvious (Pet. at 1-2) does not save
`
`the Petition under § 325(d), especially when the teachings relied upon in Seshadri
`
`and Rao are cumulative of information already considered by the Office. In short,
`
`the Office already considered and rejected an obviousness determination based on
`
`
`- 2 -
`
`

`

`
`substantially the same prior art teachings and combinations as asserted in the
`
`IPR2021-00592
`Patent Owner Preliminary Response
`
`Petition. The Petition also fails to demonstrate that the Office committed a material
`
`error. Accordingly, the Board should defer to the Office’s earlier rejection of
`
`substantially the same arguments based on substantially the same prior art teachings
`
`and exercise its discretion under § 325(d) to deny institution.
`
`Third, the Board should deny institution under 35 U.S.C. § 314(a) because
`
`the Petition fails to show that there is a reasonable likelihood that Petitioner will
`
`prevail on at least one challenged claim. Claim 1 is the sole challenged independent
`
`claim of the ’934 Patent and the Petition asserts that claim 1 would have been
`
`obvious over a three-reference combination of Haupt (APPLE-1004), Seshadri
`
`(APPLE-1007) and Rao (APPLE-1009). The Petition, however, fails to show that
`
`several elements of independent claim 1 are present or otherwise suggested by the
`
`combination. In fact, Petitioner recognized that the asserted combination does not
`
`show one claim element in particular and instead tried to plug the hole in its analysis
`
`with a tertiary reference, Hankey (APPLE-1005), without ever setting forth a ground
`
`of unpatentability that includes Hankey, including failing to identify any motivation
`
`to combine the four references and performing any Graham-factor analysis
`
`involving Hankey.
`
`These reasons are independent and the Board can deny institution for any of
`
`
`- 3 -
`
`

`

`IPR2021-00592
`Patent Owner Preliminary Response
`
`
`these reasons.
`
`II. BACKGROUND
`
`A.
`’934 Patent
`The ’934 Patent includes sixty-two (62) claims, of which claims 1 and 58 are
`
`independent.1 Claim 1 recites a headphone assembly that comprises first and second
`
`earphones, an antenna for receiving wireless signals from a mobile, digital audio
`
`player via one or more ad hoc wireless communication links, a wireless
`
`communication circuit for receiving and transmitting wireless signals to and from
`
`the headphone assembly, a processor, a memory for storing firmware executed by
`
`the processor, a rechargeable battery, and a microphone. The processor is
`
`configured to, upon activation of a user-control of the headphone assembly, initiate
`
`transmission of a request to a remote, network-connected server. The headphone
`
`assembly is further for receiving firmware updates transmitted from the remote,
`
`network-connected server. APPLE-1001, 18:1-32.
`
`The Petition challenges thirty eight claims—the Challenged Claims—under
`
`four total grounds, namely Grounds 1(A)–1(D), which allege that the Challenged
`
`Claims would have been obvious over various combinations of Haupt, Seshadri,
`
`Rao, Paulson (APPLE-1011), and Rosener (APPLE-1008). Pet. at 1-2.
`
`
`1 Claim 58 is not challenged in the Petition.
`
`- 4 -
`
`

`

`
`
`IPR2021-00592
`Patent Owner Preliminary Response
`
`B. Related Proceedings
`Patent Owner is asserting the ’934 Patent, along with four other patents,
`
`against Petitioner in the Texas Litigation. KOSS-2002. Petitioner filed two IPRs
`
`for each of the five patents asserted against Petitioner in the Texas Litigation.
`
`IPR2021-00255; IPR2021-00305; IPR2021-00381; IPR2021-00546; IPR2021-
`
`00592 (the Petition at issue in this POPR); IPR2021-00600; IPR2021-00626;
`
`IPR2021-00679; IPR2021-00686; and IPR2021-00693. The Board instituted the
`
`IPRs for IPR2021-00255 and IPR2021-000305 on June 3, 2021. IPR2021-00255,
`
`Paper 22; IPR2021-00305, Paper 14. The Board has not rendered institution
`
`decisions yet in the other IPRs.
`
`In the Texas Litigation, the district court held a Markman hearing on April 23,
`
`2021 and issued the claim construction ruling on June 2, 2021. KOSS-2001, 14
`
`(Dkt. 58), 15 (Dkt. 72), 16 (Dkt. 83); KOSS-2007; KOSS-2008. The district court
`
`has scheduled the trial to start on April 18, 2022. APPLE-1018, 4; KOSS-2001, 15
`
`(Dkt. 72) (“The Court has set the Jury Trial date of April 18, 2022”).
`
`Petitioner filed a declaratory judgement action pertaining to the five asserted
`
`patents (including the ’934 Patent) in the Northern District of California (“NDCal”).
`
`KOSS-2003. The district court in the NDCal granted Patent Owner’s motion to
`
`transfer the NDCal case to the WDTX. KOSS-2005. The litigants recently filed a
`
`
`- 5 -
`
`

`

`
`motion in the WDTX to consolidate Patent Owner’s case and the declaratory
`
`IPR2021-00592
`Patent Owner Preliminary Response
`
`judgment action before Judge Albright in the WDTX. KOSS-2006.
`
`III. THE BOARD SHOULD DENY INSTITUTION BECAUSE OF CO-
`PENDING LITIGATION INVOLVING THE ’934 PATENT
`The Board “is permitted, but never compelled, to institute an IPR proceeding.”
`
`Harmonic Inc. v. Avid Tech., 815 F.3d 1356, 1367 (Fed. Cir. 2016); see also 35
`
`U.S.C. § 314(b) (“Director shall determine whether to institute an inter partes review
`
`….”); 37 C.F.R. § 42.108(c) (“Inter partes review shall not be instituted unless the
`
`Board decides that the information presented in the petition demonstrates that there
`
`is a reasonable likelihood that at least one of the claims challenged in the petition is
`
`unpatentable.”). The Board may apply this discretion in consideration of “the
`
`integrity of the patent system, [and] the efficient administration of the Office ….”
`
`35 U.S.C. § 316(b). The Board has denied institution “to minimize the duplication
`
`of work by two tribunals to resolve the same issue.” Intel Corp. v. VLSI Tech. LLC,
`
`IPR2019-01192, Paper 15 at 11 (PTAB Jan. 9, 2020).
`
`In Fintiv, the Board outlined six factors that inform its decision “to deny
`
`institution in view of an earlier trial date in [a] parallel proceeding.” IPR2020-
`
`00019, Paper 11 at 6. The Board weighs and considers the holistic effect of each of
`
`the following factors: (1) whether the court granted a stay or evidence exists that one
`
`may be granted if a proceeding is instituted; (2) proximity of the court’s trial date to
`
`
`- 6 -
`
`

`

`
`the Board’s projected statutory deadline for a final written decision; (3) investment
`
`IPR2021-00592
`Patent Owner Preliminary Response
`
`in the parallel proceeding by the court and the parties; (4) overlap between issues
`
`raised in the petition and in the parallel proceeding; (5) whether the petitioner and
`
`the defendant in the parallel proceeding are the same party; and (6) other
`
`circumstances that impact the Board’s exercise of discretion, including the merits
`
`(collectively, “Fintiv factors”). Id. at 5–15.
`
`The Fintiv factors collectively justify denial of the Petition because the ’934
`
`Patent is being asserted presently against Petitioner in the Texas Litigation. Denying
`
`institution of the IPR is consistent with recent Board decisions, preserves the
`
`integrity of the patent system, promotes the efficient administration of Office
`
`resources, and minimizes duplicative work by two different tribunals. See id.;
`
`Samsung Elecs. Co., Ltd. v. Ancora Techs., Inc., IPR2020-01184, Paper 11 at 18
`
`(PTAB Jan. 5, 2021); Google LLC v. Personalized Media Commc’ns, LLC,
`
`IPR2020-00724, Paper 19 at 6, 11 (PTAB Aug. 31, 2020).
`
`A.
`Factor 1: The District Court Has Not Issued a Stay
`When a Petitioner represents it will move to stay a district court lawsuit if
`
`institution is granted, the first Fintiv factor should be viewed as neutral. See Sand
`
`Revolution II, LLC v. Continental Intermodal Grp. Trucking LLC, IPR2019-01393,
`
`Paper 24 at 7 (PTAB June 16, 2020); MediaTek Inc. v. Nippon Tel. and Tel. Corp.,
`
`IPR2020-01607, Paper 12 at 12 (PTAB April 2, 2021) (“Petitioner represents it will
`
`- 7 -
`
`

`

`
`move to stay the District Court Lawsuit if institution is granted but does not know
`
`IPR2021-00592
`Patent Owner Preliminary Response
`
`how the District Court will rule … [t]hus, this factor should be viewed as neutral.”).
`
`Petitioner has not represented that it will move to stay the Texas Litigation if
`
`institution is granted, and instead merely characterizes a potential stay of the Texas
`
`Litigation as “appropriate.” Pet. at 68. Also, as of the filing of this POPR, the Board
`
`instituted IPRs for two other patents involved in the Texas Litigation, yet Petitioner
`
`has not moved to stay the Texas Litigation in light of those institutions. See Apple
`
`Inc. v. Koss Corp., IPR2021-00255, Paper 22 (PTAB June 3, 2021) (for U.S. Patent
`
`10,298,451); Apple Inc. v. Koss Corp., IPR2021-00305, Paper 14 (PTAB June 3,
`
`2021) (for U.S. Patent 10,506,325); KOSS-2002, 2 (identifying patents in Texas
`
`Litigation).
`
`Although 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,” Sand Revolution, IPR2019-01393, Paper 24, 7,
`
`here, such a prediction is not necessary. Petitioner has not expressed an intention to
`
`stay the Texas Litigation. Absent an affirmative representation to move to stay the
`
`Texas Litigation, the first Fintiv factor weighs in favor of denying institution or,
`
`alternatively, should be viewed as merely neutral.
`
`
`- 8 -
`
`

`

`
`
`IPR2021-00592
`Patent Owner Preliminary Response
`
`Moreover, it is highly unlikely that Judge Albright would grant such a motion
`
`in either the Texas Litigation. During his two and a half years on the bench, Judge
`
`Albright, by his own admission, has only put “one or two” cases on hold so that the
`
`Board can review the patent at issue, absent a joint motion to stay. KOSS-2027.
`
`Judge Albright has explained that he granted those “one or two” motions to stay
`
`because the plaintiff had earlier sued other defendants on the same patent in a
`
`different district and those other defendants had their petitions instituted, such that
`
`IPRs were well underway by the time patent owner filed the later complaints in the
`
`Western District of Texas. Id. These circumstances are not present in the Texas
`
`Litigation.
`
`In the Texas Litigation, claim construction is complete and fact discovery has
`
`commenced (APPLE-1016, 3), which, according to Judge Albright, indicates that
`
`the Texas Litigation is in a later stage and warrants the preservation of a trial date in
`
`spite of institution. KOSS-20XX (Judge Albright denying defendant’s motion to
`
`transfer) (citing Cf. Freescale Semiconductor, Inc. v. Amtran Tech. Co., Ltd., A-12-
`
`CV-644-LY, 2014 WL 12570609, at *3 (W.D. Tex. Feb. 10, 2014)). In other words,
`
`Petitioner has not represented that it intends to move to stay the Texas Litigation if
`
`institution is granted, and even if Petitioner moves to stay, it is highly unlikely that
`
`Judge Albright will grant such a motion.
`
`
`- 9 -
`
`

`

`
`
`IPR2021-00592
`Patent Owner Preliminary Response
`
`Accordingly, the first Fintiv factor, therefore, weighs in favor of discretionary
`
`denial of institution or, at a minimum, should be viewed merely as neutral.
`
`B.
`
`Factor 2: Proximity of the Scheduled Trial Date to the Board’s
`Statutory Deadline for Written Decision
`The institution decision will issue by September 16, 2021. 35 U.S.C.
`
`§ 314(b)(1). If instituted, the FWD will issue by September 16, 2022. 35 U.S.C.
`
`§ 316(a)(11). The trial in the Texas Litigation, however, is scheduled to start April
`
`18, 2022 (APPLE-1016, 4; KOSS-2001, 15 (Dkt. 72)), five months prior to the FWD
`
`if the IPR is instituted.
`
`Petitioner asserts that “[t]rial dates upward of six months before the FWD are
`
`insufficient to deny institution.” Pet. at 69. The Board, however, has not established
`
`a bright line rule for the duration of the gap between the trial and the FWD.
`
`Moreover, “[the] proximity inquiry is a proxy for the likelihood that the trial court
`
`will reach a decision on validity issues before the Board reaches a final written
`
`decision.” Apple Inc. v Koss Corporation, IPR2021-00255, Paper 22 at 12
`
`(evaluating a three-month gap between trial and expected FWD).
`
`In the two recent institution decisions involving Petitioner, Patent Owner, and
`
`two patents that are also involved in the Texas Litigation, the Board found that a less
`
`than two-month gap between the trial and the expected FWD “at most minimally
`
`weighs in favor of invoking our discretion to deny institution” and, ultimately, did
`
`
`- 10 -
`
`

`

`
`not deny institution under Fintiv. IPR2021-00255, Paper 22 at 12; IPR2021-00305,
`
`IPR2021-00592
`Patent Owner Preliminary Response
`
`Paper 14 at 13-14. The facts have changed, however, with respect to the present
`
`Petition such that the Board’s analysis in those two institution decisions are less
`
`applicable to the present Petition for two major reasons.
`
`First, the gap between the trial and the expected FWD date is approximately
`
`five months for this Petition, significantly larger than the gap considered by the
`
`Board in IPR2021-00255 and IPR2021-00305. Although the Board in Sand
`
`Revolution found that a five-month gap can “marginally” favor institution, the
`
`factual circumstances in the Texas Litigation are substantially different and favor
`
`discretionary denial of institution. In Sand Revolution, the litigants requested, and
`
`the district court granted, numerous extensions to the scheduling order, which
`
`rendered the five-month gap insufficient to mitigate the uncertainty of the scheduled
`
`trial date:
`
`For the reasons above, particularly because of the number of times the
`parties have jointly moved for and the district court agreed to extend the
`scheduling order dates, the inclusion of the qualifier “or as available”
`for each calendared trial date, that the currently scheduled trial date is in
`relatively close proximity to the expected final decision in this matter,
`and the uncertainty that continues to surround the scheduled trial date,
`we find that this factor weighs marginally in favor of not exercising
`discretion to deny institution under 35 U.S.C. § 314(a).
`Sand Revolution, IPR2019-01393, Paper 24 at 9–10 (emphases added).
`
`The Board assesses this second factor on a case-by-case basis (IPR2021-
`
`- 11 -
`
`

`

`
`00255, Paper 22 at 12) and in the Texas Litigation, the parties have not sought, and
`
`IPR2021-00592
`Patent Owner Preliminary Response
`
`the district court has not granted, any extensions to the trial date—let alone “the
`
`number of times,” as was the case in Sand Revolution. KOSS-2001 (docket report
`
`from Texas Litigation showing absence of any motion for extension of trial).
`
`Second, the likelihood of the trial taking place in April 2022 is greater now in
`
`light of recent events, including:
`
`1) The District Court’s Minute Entry from the Markman hearing, held
`
`April 23, 2021, confirmed that the “Court has set the Jury Trial date of April 18,
`
`2022.” KOSS-2001, 15 (Dkt. 72). This statement by the Court corresponds to the
`
`trial date sent in the original Scheduling Order. APPLE-1016, 4.
`
`2) Petitioner moved to transfer the Texas Litigation to the NDCal. KOSS-
`
`2001, 12 (Dkt. 34). Petitioner also filed a declaratory judgment action in the NDCal.
`
`KOSS-2003. However, the district court in the Texas Litigation recently denied
`
`Petitioner’s motion to transfer (KOSS-2004) and the NDCal transferred the NDCal
`
`case to the Western District of Texas. KOSS-2003, 10; KOSS-2005. Thus, the trial
`
`
`- 12 -
`
`

`

`
`date is unlikely to move because of a transfer to another venue.2
`
`IPR2021-00592
`Patent Owner Preliminary Response
`
`3) Judge Albright recently expressed confidence in his court’s ability to
`
`maintain a trial schedule despite his heavy caseload. In denying Petitioner’s motion
`
`to transfer, Judge Albright remarked that the rate at which the WDTX disposes of
`
`patent cases makes it unlikely that the trial date will change despite the high caseload
`
`for patent cases in the WDTX. KOSS-2004, 25-26.
`
`The recent developments corroborate Judge Albright’s recently issued
`
`standing order governing patent cases, which states “[a]fter the trial date is set, the
`
`Court will not move the trial date except in extreme situations.” KOSS-2010, 5.
`
`Accordingly, there is less uncertainty here than in the two prior institution
`
`decisions (IPR2021-00255 and IPR2021-00305) that the Texas Litigation trial will
`
`occur prior—five months prior—to the FWD if the IPR is instituted. Thus, Fintiv
`
`factor two weighs in favor of denying institution.
`
`C.
`
`Factor 3: The Parties and Court Will Have Invested Substantial
`Resources in the Texas Litigation Prior to the Institution Decision
`“[D]istrict court claim construction orders may indicate that the court and
`
`
`2 Petitioner recently petitioned the Federal Circuit for a writ of mandamus
`
`transferring the Texas Litigation to NDCal. See In re Apple, Inc., Case No. 21-147
`
`(Fed. Cir.).
`
`
`- 13 -
`
`

`

`
`parties have invested sufficient time in the parallel proceeding to favor denial.”
`
`IPR2021-00592
`Patent Owner Preliminary Response
`
`Fintiv, IPR2020-00019, Paper 11 at 9–10. The Fintiv analysis also considers “the
`
`amount and type of [all] work already completed” to determine whether “the parallel
`
`proceeding is more advanced ... and instituting would lead to duplicative costs.” Id.
`
`In the Texas Litigation, the time-consuming claim construction process is
`
`already complete. The district court held