`
`
`
`
`
`
`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
`_____________________
`
`
`
`JOINT MOTION TO TERMINATE
`
`
`
`
`
`Case IPR2021-00592
`
`Pursuant to 35 U.S.C. § 327(a) and 37 C.F.R. § 42.72, Apple Inc.
`
`(“Petitioner”) and Koss Corporation (“Patent Owner”) jointly move for termination
`
`of the inter partes review (“IPR”) of U.S. Patent No. 10,469,934 (“the ’934
`
`Patent), Case No. IPR2021-00592, with the United States Patent and Trademark
`
`Office. This Joint Motion was authorized by the Board pursuant to its email dated
`
`July 27, 2022. The parties have settled their dispute, and have reached agreement
`
`to terminate this IPR. The Settlement Agreement has been made in writing and
`
`was executed by Petitioner and Patent Owner on July 23, 2022. A true copy of the
`
`Settlement Agreement in accordance with 35 U.S.C. § 327(b) and 37 C.F.R.
`
`§ 42.74(b) is being submitted concurrently herewith as Exhibit 2053. There are no
`
`collateral agreements or understandings made in connection with, or in
`
`contemplation of, the termination of this IPR. Submitted concurrently herewith is a
`
`request by Petitioner and Patent Owner that the Settlement Agreement be treated as
`
`business confidential information, be kept separate from the file of the involved
`
`patents, and be made available only to Federal Government agencies on written
`
`request, or to any person on a showing of good cause pursuant to 35 U.S.C.
`
`§ 327(b) and 37 C.F.R. § 42.74(c).
`
`Patent Owner alleged that Petitioner infringed the ’934 Patent in a lawsuit
`
`captioned Koss Corp. v. Apple Inc., Case No. 6:20-cv-00665-ADA (consolidated
`
`with Apple Inc. v. Koss Corp., 6:21-cv-00495-ADA) before the United States
`
`
`505962989.3
`
`
`- 1 -
`
`
`
`
`District Court for the Western District of Texas, Waco Division. According to the
`
`Case IPR2021-00592
`
`court’s Order of Dismissal, “all claims for relief asserted against APPLE INC. by
`
`KOSS CORPORATION herein are dismissed, with prejudice, and all
`
`claims/counterclaims for relief against KOSS CORPORATION by APPLE INC.
`
`are dismissed without prejudice.” D.I. 304 (W.D. Tex. July 23, 2022). The parties
`
`had two other proceedings involving the ’934 Patent: Apple Inc. v. Koss Corp.,
`
`IPR2021-00693 (PTAB) and Apple Inc. v. Koss Corp., IPR2022-00188. Both of
`
`these proceedings are concluded.
`
`The ’934 Patent is involved in the following currently pending matters that
`
`do not involve Petitioner:
`
`• Bose Corp. v. Koss Corp., IPR2021-00680 (PTAB);
`
`• Koss Corp. v. Plantronics, Inc. et al., Case No. 4-21-cv-03854 (N.D.
`
`Cal.);
`
`• Koss Corp. v. Skullcandy, Inc., Case No. 2-21-cv-00203 (D. Utah);
`
`• Koss Corp. v. Bose Corp., Case No. 1-20-cv-12193 (D. Mass.).
`
`Despite the fact that the Oral Hearing for this IPR was held May 25, 2022,
`
`termination is appropriate in view of the foregoing. See Clio USA, Inc. v. Procter
`
`and Gamble Co., IPR2013-00438, Paper 54 (PTAB Oct. 31, 2014) (termination
`
`after oral argument); Petroleum Geo-Services, Inc. v. Westerngeco, LLC, IPR2016-
`
`00407, Paper 29 (PTAB July 5, 2019) (terminated after oral hearing and five days
`
`
`505962989.3
`
`
`- 2 -
`
`
`
`
`before statutory deadline for issuing a final written decision). For at least these
`
`Case IPR2021-00592
`
`reasons, termination of this IPR is proper under 35 U.S.C. § 327(a) and 37 C.F.R.
`
`§ 42.74(a). Should this joint motion to terminate be denied, Petitioner would not
`
`continue to participate in this proceeding.
`
`Dated: July 28, 2022
`
`Dated: July 28, 2022
`
`
`505962989.3
`
`
`Respectfully submitted,
`/W. Karl Renner/
`W. Karl Renner (Reg. 41,265)
`David Holt (Reg. 65,161)
`Joel Henry (Reg. 72,970)
`Seth Sproul, Pro Hac Vice
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel. 202-783-5070
`Email: IPR50095-0018IP1@fr.com
`Email: PTABInbound@fr.com
`
`Jennie Harjes (Reg. No. 77,687)
`Michael Pieja, Pro Hac Vice
`Goldman Ismail Tomaselli Brennan & Baum LLP
`200 South Wacker Drive, 22nd Floor
`Chicago, IL 60606
`Tel. 312-881-5958
`Email: jhartes@goldmanismail.com
`Email: mpieja@goldmanismlai.com
`
`ATTORNEYS FOR PETITIONER
`
`Respectfully submitted,
`/Mark G. Knedeisen/
`Mark G. Knedeisen (Reg. No. 42,747)
`Laurén Shuttleworth Murray (Reg. No. 67,462)
`Brian P. Bozzo (Reg. No. 77,190)
`K&L Gates LLP
`210 Sixth Avenue
`- 3 -
`
`
`
`
`
`Case IPR2021-00592
`
`Pittsburgh, PA 15222
`Tel. 412-355-6342
`Email: mark.knedeisen@klgates.com
`Email: lauren.murray@klates.com
`Email: brian.bozzo@klgates.com
`
`ATTORNEYS FOR PATENT OWNER
`
`
`505962989.3
`
`
`- 4 -
`
`
`
`
`
`Case IPR2021-00592
`
`CERTIFICATION OF SERVICE
`
`I hereby certify that on July 28, 2022, I caused a true and correct copy of the
`
`foregoing to be served on the following counsel for Petitioner by electronic mail to
`
`the following email addresses:
`
`W. Karl Renner
`David Holt
`Joel Henry
`Seth Sproul
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Email: IPR50095-0018IP1@fr.com
`Email: PTABInbound@fr.com
`Email: axf-ptad@fr.com
`
`Jennie Hartjes
`Michael Pieja
`Doug Winnard
`Goldman Ismail Tomaselli Brennan &
`Baum LLP
`200 South Wacker Drive, 22nd Floor
`Chicago, IL 60606
`Tel: 312-881-5958
`Email: jhartjes@goldmanismail.com
`Email: mpieja@goldmanismail.com
`Email: dwinnard@goldmanismail.com
`
`
`
`By:
`
`
`
`
`/Mark G. Knedeisen/
`Mark G. Knedeisen (Reg. No. 42,747)
`K&L Gates Center, 210 Sixth Avenue
`Pittsburgh, Pennsylvania 15222
`Tel.: (412) 355-6342
`mark.knedeisen@klgates.com
`
`Counsel for Patent Owner
`
`
`
`
`
`505962989.3
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
