Trials@uspto.gov
`571-272-7822
`
`Paper 9
`Date: August 23, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE, INC.,
`Petitioner,
`v.
`KOSS CORPORATION,
`Patent Owner.
`
`IPR2021-00592
`Patent 10,469,934 B2
`
`
`Before PATRICK R. SCANLON, DAVID C. McKONE, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`

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`IPR2021-00592
`Patent 10,469,934 B2
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`
`I. INTRODUCTION
`Apple, Inc. (“Petitioner”) filed a Petition requesting inter partes
`review of 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 of U.S. Patent No. 10,469,934 (Ex. 1001, “the
`’934 patent”). Paper 2 (“Pet.”). Koss Corporation (“Patent Owner”) filed a
`Preliminary Response. Paper 8 (“Prelim. Resp.”).
`We have jurisdiction under 35 U.S.C. § 314. Upon considering the
`record developed thus far, for reasons discussed below, we institute inter
`partes review.
`
`II. BACKGROUND
`A. Real Parties in Interest
`Petitioner states it is the real party-in-interest. Pet. 74. Patent Owner
`states that it is the real party in interest. Paper 3 (“Mandatory Notice by
`Patent Owner”), 1; see also Papers 6 and 7 (updates).
`B. Related Matters
`Both parties list the related lawsuit alleging infringement of the ’892
`patent, Koss Corporation v. Apple Inc., Case No. 6:20-cv-00665 (W.D.
`Tex.) (“District Court” or “District Court Lawsuit”). Pet. 74; Paper 3, 1.
`Patent Owner lists other lawsuits involving the ’934 patent, United States
`applications to which the ’934 patent claims priority, and pending inter
`partes reviews as Related Matters. Paper 3 (updated in Papers 6 and 7), 1–
`2.
`
`1. Other Lawsuits
`Patent Owner identifies five other lawsuits involving the ’934 patent:
`Koss Corp. v. Skullcandy, Inc., Case No. 6:20-cv-00664 (W.D. Tex); Koss
`Corp. v Plantronics, Inc., Case No. 6-20-cv-00663 (W.D. Tex.); Koss Corp.
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`IPR2021-00592
`Patent 10,469,934 B2
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`v. Bose Corp., Case No. 6-20-cv-00661 (W.D. Tex); Bose Corporation v.
`Koss Corp., Case No. 1-20-cv-12193 (D. Mass.); and Apple Inc. v. Koss
`Corp., Case No. 4:20-cv-05504 (N.D. Cal.). Paper 3, 1. In addition, Patent
`Owner identifies Koss Corp. v. Skullcandy, Inc., Case No. 2:21-cv-00203
`(D. Utah). Paper 7, 1.
`
`2. United States Applications
`Patent Owner lists the following applications listed as Related
`Applications to which the ’934 patent claims priority: PCT application No.
`PCT/US2009/039754, filed April 7, 2009 (the “PCT Application”) and
`provisional application Serial No. 61/123,265 filed April 8, 2008 (the
`“Provisional Application”). Paper 3, 1.
`3. Inter Partes Review Proceedings
`Patent Owner lists the following inter partes review proceedings1
`challenging patents that claim priority to the PCT Application and the
`Provisional Application:
`Bose Corp. v. Koss Corp., IPR2021-00297 challenging US Patent
`10,368,155 B2; Apple Inc. v. Koss Corp., IPR2021-00305, filed December
`15, 2020, challenging US Patent 10,506,325 B1); Apple Inc. v. Koss Corp.,
`IPR2021-00381, filed January 4, 2021, challenging US Patent 10,491,982
`B1; Apple Inc. v. Koss Corp., IPR2021-00546, filed February 22, 2021,
`challenging US Patent 10,206,025 B1; and Apple Inc. v. Koss Corp.,
`IPR2021-00612 challenging U.S. Patent 10,206,025, filed March 3, 2021.
`Paper 3, 1–2.
`
`
`1 Additional inter partes review proceedings involving these same parties
`include Apple Inc. v. Koss Corporation, IPR2021-00255 (“’255 IPR”), filed
`December 15, 2020, and Apple Inc. v. Koss Corporation, IPR2021-00600,
`filed March 7, 2021, both challenging US Patent 10,298,451 B1.
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`Patent 10,469,934 B2
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`
`Patent Owner adds the following to its list of inter partes review
`proceedings which also claim priority to the PCT Application and the
`Provisional Application: Apple Inc. v. Koss Corp., IPR2021-00626, filed
`March 17, 2021, challenging US Patent 10,206,025 B1; Apple Inc. v. Koss
`Corp., IPR2021-00679, filed March 22, 2021, challenging US Patent
`10,506,325 B1; and Apple Inc. v. Koss Corp., IPR2021-00686, filed March
`22, 2021, challenging US Patent 10,491,982 B1. Paper 6, 2.
`Two inter partes review proceedings are directed to claims of the
`’934 patent not challenged here, including: Bose Corp. v. Koss Corp.,
`IPR2021-00680 (“’680 IPR”); and Apple Inc. v. Koss Corp., IPR2021-
`00693 (“’693 IPR”), both filed March 17, 2021.
`C. The ’934 Patent
`The application for the ’934 patent’s earliest priority dates are April
`7, 2009, to the PCT Application and April 8, 2008, to the Provisional
`Application. Ex. 1001, code (63).
`1. Background Technology
`The ’934 patent explains that wired headphones interconnecting
`headphones and a data storage unit are “cumbersome.” Ex. 1001, 1:42–51.
`Cordless headphones that connect wirelessly via IEEE 802.11, e.g., via
`Bluetooth connection, to a WLAN-ready laptop or personal computer have
`been proposed but “such headphones are also quite large and not in-ear type
`phones.” Id. at 1:58–62; see also Ex. 1003 ¶ 29 (Cooperstock Declaration
`describing Bluetooth as a wireless communication employing 802.11
`(WiFi)).
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`IPR2021-00592
`Patent 10,469,934 B2
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`
`2. The ’934 Patent’s Wireless Earphones
`The ’934 patent describes and claims a wireless earphone that
`receives streaming audio data from a data source such as an audio player or
`computer via ad hoc wireless network and infrastructure wireless networks,
`and that transitions seamlessly between wireless networks. Ex. 1001, 1:66–
`2:3. The ’934 patent describes an “ad hoc wireless network” as “a network
`where two . . . wireless-capable devices, such as the earphone and a data
`source, communicate directly and wirelessly, without using an access
`point.” Id. at 3:3–6. An ad hoc network is in contrast to an “infrastructure
`wireless network” which is “a wireless network that uses one or more
`access points to allow a wireless capable device, such as the wireless
`earphone, to connect to a computer network, such as a LAN or WAN
`(including the Internet).” Id. at 3:6–11.
`The earphone has a body and an ear canal portion for insertion into
`the canal of the user of the earphone. Ex. 1001, 3:17–20, 3:54–56. In some
`embodiments there may be “two discrete wireless earphones,” one in each
`ear. Id. at 3:47–49. Figure 2A of the ’934 patent is reproduced below.
`
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`IPR2021-00592
`Patent 10,469,934 B2
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`Figure 2A illustrates one of the communication modes for the wireless
`earphone.
`
`Id. at 2:28–30. Figure 2A illustrates a data source 20 in communication
`with earphone 10 over ad hoc wireless network 24. Id. at 4:26–32. The
`earphone has a transceiver circuit to communicate wirelessly with the data
`source. Id. at 4:28–32. The data source may be a digital audio player
`(DAP). Id. at 4:32–33. The DAP transmits audio wirelessly to earphone(s)
`via the ad hoc network if the DAP and earphone(s) are “in range” of that
`network. Id. at 4:56–57. “When in range, the data source 20 may
`communicate with the earphone 10 via the ad hoc wireless network 24
`using any suitable wireless communication protocol,” including Bluetooth
`and other communication protocols. Id. at 4:56–61.
`The earphone may have an associated web page that a user may
`access through a server. Ex. 1001, 8:7–9, Fig. 2D. “[A]t the web site, the
`user could set various content features and filters, as well as adjust various
`sound control features, such as treble, bass, frequency settings, noise
`cancellation settings, etc.,” all of which are set by the user. Id. at 8:15–21.
`“In addition, the user could set preferred streaming audio stations, such as
`preferred Internet radio stations or other streaming audio broadcasts.” Id. at
`8:18–21. Thus, “instead of listening to streaming audio from the data
`source 20, the user could listen to Internet radio stations or other streaming
`audio broadcasts received by the earphone 10.” Id. at 8:21–24.
`D. Illustrative Claim
`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 of the ’934 patent are challenged. Pet. 1–2, 4–68.
`Independent claim 1 is the only independent claim. Claims 2–3, 5, 7, 9–11,
`
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`1.b
`
`1.c
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`
`1.d
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`1.e
`
`
`1.f
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`
`1.g
`
`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 connected to the
`antenna, wherein the wireless communication circuit is
`for receiving and transmitting wireless signals to and
`from the headphone assembly;
`
`a processor;
`
`a memory for storing firmware that is executed by the
`processor;
`
`a rechargeable battery for powering the headphone
`assembly; and
`
`a microphone for picking up utterances by a user of the
`headphone assembly; and
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`IPR2021-00592
`Patent 10,469,934 B2
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`14–16, 19, 21, 23–25, 28, 30, 32–37, 39, 42–43, 45–48, and 51–57 depend
`directly or indirectly from claim 1. All claims are directed to a “headphone
`assembly.” Claim 1 is reproduced below as illustrative.
`1.pre2 A headphone assembly comprising:
`
`1.a
`
`first and second earphones, wherein each of the first and
`second earphones comprises an acoustic transducer; and
`
`
`1.h wherein the headphone assembly is configured to play,
`by the first and second earphones, digital audio content
`transmitted by the mobile, digital audio player via the
`one or more ad hoc wireless communication links;
`
`
`1.i wherein the processor is configured to, upon activation of
`
`
`2 For purposes of this Decision, we follow Petitioner’s format where each
`claim limitation is separately identified by the claim number followed by a
`letter. See Pet. 14–32. (limitations 1.pre–1.j).
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`IPR2021-00592
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`
`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; and
`
`
`1.j wherein the headphone assembly is for receiving firmware
`upgrades transmitted from the remote, network-connected
`server.
`
`
`
`Ex. 1001, 18:2–32.
`
`E. Evidence of Record
`This proceeding relies on the following prior art references and
`expert testimony:
`Haupt, PCT/EP 2005/011228, issued Apr. 27, 2006 (Ex. 1004,
`including English translation of German original patent)
`Seshadri, US 2006/0166176 A1, published July 27, 2006 (Ex. 1007);
`Rao, US 7,881,745 B1, issued Feb. 1, 2011 (Ex. 1009);
`Paulson, US 7,551,940 B2, issued June 23, 2009 (Ex. 1011); and
`Rosener, US 2008/0076489 A1, published Mar. 27, 2008 (Ex. 1008).
`Petitioner also relies on the Declaration of Dr. Jeremy Cooperstock
`(“Cooperstock Declaration,” Ex. 1003).
`F. Prior Art and Asserted Grounds
`Petitioner asserts that 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 would have been unpatentable
`on the following grounds (Pet. 1–2, 4–68):
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`35 U.S.C.3 §
`
`Reference(s)/Basis
`
`103
`103
`
`103
`
`103
`
`Haupt, Seshadri, Rao
`Haupt, Seshadri, Rao, Paulson
`
`Haupt, Seshadri, Rao, Rosener
`
`Haupt, Seshadri, Rao, Rosener,
`Paulson
`
`IPR2021-00592
`Patent 10,469,934 B2
`
`
`Claim(s)
`Challenged
`1, 2, 9, 32, 47, 52,
`53, 54, 5–6–57
`3, 5, 7
`10, 14, 15, 23, 24,
`33–36, 42, 43, 46,
`48–51, 55
`11, 16, 19, 21, 25,
`28, 30, 37, 39, 45
`
`
`III. PROCEDURAL ISSUES
`Patent Owner alleges the advanced status of the District Court
`Lawsuit justifies discretionary denial. Prelim. Resp. 6–24. Patent Owner
`also argues the same or substantially the same prior art and arguments were
`made during prosecution and institution should be denied under 35 U.S.C.
`§ 325(d). Id. at 24–39. Both issues are addressed below.
`A. Discretion to Institute
`The Board has discretion not to institute trial. See 35 U.S.C.
`§§ 314(a) and 324(a) (2018) (each authorizing institution of a trial under
`particular circumstances, but not requiring institution under any
`circumstances); 37 C.F.R. § 42.108(a) (stating “the Board will authorize the
`review to proceed on all of the challenged claims”) (emphasis added); cf.
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he
`agency’s decision to deny a petition is a matter committed to the Patent
`
`3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102 and 103, effective
`March 16, 2013. Because the application that resulted in the ’982 patent
`has an effective filing date before this date, the pre-AIA versions of § 103
`apply.
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`Patent 10,469,934 B2
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`Office’s discretion.”); Harmonic Inc. v. Avid Tech, Inc., 815 F.3d 1356,
`1367 (Fed. Cir. 2016) (explaining that under § 314(a), “the PTO is
`permitted, but never compelled, to institute an [inter partes review]
`proceeding”).
`Our precedential and informative decisions make clear that the Board
`may exercise discretion not to institute a trial before the Board in light of
`the advanced state of ongoing, parallel litigation. See NHK Spring Co. v.
`Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018)
`(precedential) (“NHK Spring”) and Apple Inc. v. Fintiv, Inc., IPR2020-
`00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv I”); see also
`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 (PTAB May 13, 2020)
`(informative) (denying institution in light of an ongoing, parallel district
`court proceeding) (“Fintiv II”); Sand Revolution II, LLC v. Cont’l
`Intermodal Grp. – Trucking LLC, IPR2019-01393, Paper 24 (PTAB
`June 16, 2020) (informative) (Sand Revolution II) (applying Fintiv I factors
`in light of ongoing, parallel district court litigation and instituting trial).
`In NHK Spring, the Board considered the advanced state of a parallel
`district court proceeding as a factor favoring denial of institution of an inter
`partes review proceeding. NHK Spring, Paper 8 at 19–20. The Board later
`identified a non-exclusive list of factors to consider when applying NHK
`Spring to determine if we should exercise discretion to not institute a trial in
`light of a parallel proceeding in an advanced state. Fintiv I, Paper 11 at 5–
`6.
`
`Neither party contests the facts asserted by the other regarding the
`status of the District Court Lawsuit. In determining whether to exercise
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`Patent 10,469,934 B2
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`discretion to deny institution under 35 U.S.C. § 314(a), we consider the
`factors set forth in Fintiv I. Fintiv I, Paper 11 at 9.
`Factor 1. Whether the court granted a stay or evidence exists that one may
`be granted if a proceeding is instituted.
`Fintiv I indicated that, in previous Board decisions, the existence of a
`district court stay pending Board resolution of an inter partes review has
`weighed strongly against discretionary denial, while a denial of such a stay
`request sometimes weighs in favor of discretionary denial. Fintiv I, Paper
`11 at 6–8.
`Petitioner asserts that a stay of the District Court Lawsuit would be
`appropriate if we institute an inter partes review, but does not contend that
`it has filed a motion for a stay. Pet. 68. Patent Owner notes that Petitioner
`has not moved for a stay or represented that it would do so. Prelim. Resp.
`7–8.
`
`However, determining how the District Court might handle a motion
`for stay that has not yet been filed invites conjecture. It would be improper
`to speculate, at this stage, what the District might do regarding a motion to
`stay, and given the particular circumstances of this case. Accordingly, this
`factor is neutral to the exercise of our discretion. Cf. Sand Revolution II,
`Paper 24 at 7(“In the absence of specific evidence, we will not attempt to
`predict how the district court in the related district court litigation will
`proceed because the court may determine whether or not to stay any
`individual case, including the related one, based on a variety of
`circumstances and facts beyond our control and to which the Board is not
`privy.”); Fintiv II, Paper 15 at 12 (“We decline to infer, based on actions
`taken in different cases with different facts, how the District Court would
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`rule should a stay be requested by the parties in the parallel case here. This
`factor does not weigh for or against discretionary denial in this case”).
`Factor 2. Proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision.
`The District Court indicated that it “expects to set” April 18, 2022, as
`the date for Jury Selection/Trial. Ex. 1016 (District Court Lawsuit, Agreed
`Scheduling Order), 4; Pet. 69. Petitioner, pointing to a journal article,
`contends that the trial date is uncertain due to the propensity of the District
`Court to reschedule trials once the PTAB has denied a related petition. Pet.
`69 (quoting Ex. 1018, 2 (“In the WDTX, 70% of trial dates initially relied
`upon by the PTAB to deny petitions have slid.”). Petitioner’s argument that
`the District Court has yet to rule on a motion to transfer is moot because the
`motion was denied. See Pet. 70; Prelim. Resp. 11 (citing Order Denying
`Defendant’s Motion to Transfer (Ex. 2004)).
`Patent Owner responds that the District Court trial is scheduled to
`start April 18, 2022, five months prior to the deadline for mailing a final
`written decision if trial is instituted. Prelim. Resp. 10 (citing Ex. 1016, 4;
`Ex. 2001, 14 (Dkt. 72)). Patent Owner argues the five month difference is
`larger than those we determined were not large enough to favor denial in
`two pending inter partes reviews between these same parties. Id. at 10–11
`(citing IPR2021-00255; IPR2021-00305). Patent Owner also argues that
`other developments support the likelihood that trial will proceed as
`scheduled, including: a Markman hearing4 where the April 18, 2022, trial
`date was confirmed; denial of Petitioner’s motion to transfer; and the
`
`
`4 The Markman hearing took place on April 23, 2021, and a Claim
`Construction Order followed on June 2, 2021. See Ex. 2008.
`
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`District Court’s “confidence in his court’s ability to maintain a trial
`schedule despite his heavy caseload.” Id. at 12–13 (citing inter alia Minute
`Entry from Markman Hearing (Ex. 2001), 14 (Dkt. 72); Ex. 1016, 4;
`Ex. 2004, 25–26). Patent Owner concludes by citing the District Court’s
`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.” Id.
`at 13 (citing Standing Order in Patent Cases (Ex. 2010), 5) (alteration in
`original).
`Assuming that April 18, 2022, is in fact the scheduled trial date and
`that date holds, it would be approximately as little as three and at most five
`months prior to our expected statutory deadline for a final written decision.
`Both parties speculate as to the likelihood that a trial date set now would
`later be rescheduled in light of circumstances such as docket congestion and
`the global pandemic, with Petitioner arguing that a reschedule is likely and
`Patent Owner arguing the opposite. Pet. 11–12; Prelim. Resp. 8–10.
`We recognize that the Board has assessed this factor on a case-by-
`case basis. On one hand, in Fintiv II, the Board took the district court’s trial
`schedule at “face value” and declined to question it “absent some strong
`evidence to the contrary.” Fintiv II, Paper 15 at 12–13. On the other hand,
`in Sand Revolution, the Board was persuaded by the uncertainty in the
`schedule (including that caused by the parties agreeing to jointly request
`rescheduling of the trial date on several occasions) despite a scheduled trial
`date. Sand Revolution, Paper 24 at 8–9. Moreover, as recognized in Sand
`Revolution, “even in the extraordinary circumstances under which the entire
`country is currently operating because of the COVID-19 pandemic, the
`Board continues to be fully operational.” Id. at 9.
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`This factor looks at the proximity of the trial date to the date of our
`final decision to assess the weight to be accorded a trial date set earlier than
`the expected final written decision date. This 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. A trial set to occur soon
`after the institution decision is fairly likely to happen prior to the Board’s
`final decision, even if the trial date were postponed due to intervening
`circumstances. Given that the trial is currently scheduled approximately
`five months before the final decision, this factor weighs slightly in favor or
`exercising discretion to deny institution.
`Factor 3. Investment in the parallel proceeding by the court and the parties.
`If, at the time of the institution decision, the district court has issued
`substantive orders related to the challenged patent, such as a claim
`construction order, this fact weighs in favor of denial. See Fintiv, Paper 11
`at 9–10. On the other hand, if the district court has not issued such orders,
`this fact weighs against discretionary denial. Id. at 10. Moreover, in
`evaluating this factor, “[i]f the evidence shows that the petitioner filed the
`petition expeditiously, such as promptly after becoming aware of the claims
`being asserted, this fact has weighed against exercising the authority to
`deny institution under NHK.” Id. at 11 (footnote omitted).
`Focusing on timeliness, Petitioner argues that it filed the Petition
`approximately seven months after service of the complaint, four months
`after receiving Patent Owner’s infringement contentions, and a month and a
`half after service of Petitioner’s preliminary invalidity contentions.
`Pet. 70–71 (citing “Plaintiff Koss Corporation’s Preliminary Infringement
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`Contentions” (Ex. 1014); Ex. 1016, 2–3; Fintiv I, Paper 11 at 11–12 n. 22).5
`Given that all claims, numbering sixty-two, of the ’934 patent are at issue in
`the District Court, Petitioner notes that the effort to draft the Petition was
`significant.6 Id. at 71 n.5.
`Patent Owner responds that “the time-consuming claim construction
`process is already complete.” Prelim. Resp. 14. Patent Owner argues that
`the workload of the parties leading up to institution will increase with the
`opening of factual discovery following the Markman hearing. Id. at 14–15
`(citing Ex. 1016, 3). For example, Patent Owner argues additional time will
`be spent preparing “initial expert reports, which are due a mere two months
`after the institution decision deadline.” Id. at 15 (citing Ex. 1016, 3).
`Patent Owner argues generally that the fact that the District Court Lawsuit
`is in its early stages, as here, does not mean the investment factor favors
`institution. Id. (citing Verizon Bus. Network Servs. LLC v. Huawei Techs.
`Co., IPR2020-01292, Paper 13 at 14–15 (PTAB Jan. 25, 2021) (substantial
`work involved in claim construction and initial discovery)).
`Specifically, Patent Owner cites to investments in the Markman
`hearing, which was held on April 23, 2021, and subsequent entry of a claim
`construction order. Prelim. Resp. 14 (citing Ex. 2007; Ex. 2008). Patent
`
`
`5 Petitioner’s argument that the District Court had not issued any
`substantive orders is largely, if not completely, mooted by subsequent
`orders of the District Court denying Petitioner’s motion to transfer and
`entry of the Claim Construction Order. See Pet. 71.
`6 The ’680 and ’693 IPRs are directed to certain claims of the ’934 patent
`challenged here as well as claims not challenged here. See ’680 IPR, Paper
`2, 2 (challenging claims 4, 6, 8, 12–13, 17–18, 20, 22, 38, 40–41, 49–50,
`58–62 not challenged here); ’693 IPR, Paper 2, 1–2 (challenging claims 4,
`6, 8, 12, 17–18, 20, 22, 26–27, 29, 31, 38, 40–41, 44, 58–61 not challenged
`here).
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`Owner also notes that final infringement and invalidity contentions were
`due June 17, 2021. Id. at 14–15 (citing Ex. 1016, 3).
`Patent Owner argues that the four month delay after receiving
`preliminary infringement contentions, as well as the delay after service of
`the complaint and preliminary invalidity contentions, is not reasonable.
`Prelim. Resp. 15–16. For support, Patent Owner notes that in a related case
`we determined that a three week delay after receiving preliminary
`infringement contentions was reasonable. Id. at 15 (citing ’255 IPR, Paper
`22 at 14).
`We find that Petitioner was expeditious in filing its Petition. The
`deadline for filing inter partes review is August 7, 2021, and the Petition
`was filed March 2, 2021, well in advance of the deadline. See Pet. 70; Ex.
`2003, Dkt. 1 (Complaint filed August 7, 2020); Paper 5 (according Petition
`filing date of March 2, 2021). As Petitioner argues, other milestones in the
`District Court were also closely followed by the filing of the Petition. Pet.
`70–71. That we have found a three week delay reasonable in the ’255 IPR
`does not make three weeks the standard for reasonable delay.
`It was reasonable in this proceeding for Petitioner to take about four
`months after the preliminary infringement contentions to prepare and file
`the Petition. “It is often reasonable for a petitioner to wait to file its petition
`until it learns which claims are being asserted against it in the parallel
`proceeding. Thus, the parties should explain facts relevant to timing.”
`Fintiv, Paper 11 at 11. Patent Owner is not expected to finally state which
`claims it is asserting until after January 20, 2022. Ex. 1016, 3 (Oct. 21,
`2021, “Deadline for the first of two meet and confers to discuss
`significantly narrowing the number of claims asserted and prior art
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`references at issue.”), 4 (January 20, 2022, “Deadline for the second of two
`meet and confers to discuss narrowing the number of claims asserted and
`prior art references at issue to triable limits.”). Petitioner has been diligent
`in filing its Petition prior to learning which claims it will be facing in the
`District Court.
`Although the District Court has conducted a Markman hearing,
`Patent Owner has not explained how it might impact questions of
`patentability. Indeed, neither party has proposed any terms for construction
`in this proceeding. Pet. 4; see generally Prelim. Resp. (claim construction
`not addressed). Furthermore, the District Court did not expressly construe
`any claim term, finding all terms of the several patents asserted in the
`District Court Lawsuit, including the ’934 patent, are to be construed
`according to their “Plain and ordinary meaning.” Ex. 2008, 1–2.
`That final infringement and invalidity contentions have been served
`does not require us to find the District Court Lawsuit is at such an advanced
`state that institution should be denied. Even the “final” contentions are not
`necessarily final, as the parties have until January 20, 2022, to potentially
`narrow “the number of claims asserted and prior art references at issue to
`triable limits.” Ex. 1016, 14. Regardless, service of final contentions is just
`one aspect of the District Court Lawsuit and is not dispositive of the weight
`to be given. The close of fact discovery and expert discovery in the District
`Court Lawsuit is still months away. Ex. 1016, 3 (fact discovery closes
`November 4, 2021, expert discovery closes January 20, 2022).
`Considerable work on fact and expert discovery still remains.
`We find the District Court Lawsuit is still in the early stages. We
`base this finding in part on the significant amount of time between the
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`mailing of this Decision and the close of fact discovery and expert
`discovery in the District Court Lawsuit. Ex. 1016, 3. Patent Owner points
`to no other investment by the parties or the District Court Lawsuit that has
`been made on the patentability issues presented here. Cf. Sand Revolution,
`Paper 24 at 11 (“[W]e recognize that much work remains in the district
`court case as it relates to invalidity: fact discovery is still ongoing, expert
`reports are not yet due, and substantive motion practice is yet to come.”).
`On the current record, we see little evidence of risk that we will duplicate
`work performed in the District Court Lawsuit, or render inconsistent results,
`should we proceed to a trial.
`On balance, this factor weighs against exercising our discretion to
`deny the Petition. Petitioner has been diligent in filing the Petition, doing
`so without the benefit of Patent Owner’s final identification of claims being
`asserted in the District Court Lawsuit. Patent Owner points to no other
`investment that bears on questions of patentability or implicates risk of
`duplication or inconsistent results between the Board and the District Court.
`Factor 4. Overlap between issues raised in the petition and in the
`parallel proceeding.
`“[I]f the petition includes the same or substantially the same claims,
`grounds, arguments, and evidence as presented in the parallel proceeding,
`this fact has favored denial.” Fintiv I, Paper 11 at 12. “Conversely, if the
`petition includes materially different grounds, arguments, and/or evidence
`than those presented in the district court, this fact has tended to weigh
`against exercising discretion to deny institution under NHK.” Id. at 12–13.
`Petitioner argues “the number of claims adjudicated at the district
`court will likely be significantly less than the number of claims addressed
`here.” Pet. 72; see also District Court Order Governing Proceedings –
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`Patent Case (Ex. 1015, 10). Petitioner asks us to address claims that might
`be dropped from the District Court Lawsuit because of the “likelihood of
`these unaddressed claims being reasserted against future products.” Pet. 72.
`In the District Court Lawsuit, Petitioner stipulates that
`if the Patent Trial and Appeal Board (PTAB) institutes this
`petition on the grounds presented, then the Defendant, Apple Inc.
`(“Apple”), will not seek resolution within this litigation of any
`ground of invalidity that utilizes, as a primary reference, PCT
`Application Publication No. WO 2006/042749 (or any
`translation thereof) (“Haupt”), which is the primary reference in
`the grounds asserted in the IPR petition.
`Letter between counsel in the District Court Lawsuit dated March 2, 2021
`(Ex. 1020) (“Stipulation”). Petitioner argues the Stipulation “eliminate[s]
`any doubt as to the absence of meaningful overlap between the
`proceedings.” Pet. 72.
`Patent Owner asserts there is the “potential for significant overlap
`between the references.” Prelim. Resp. 16. Patent Owner acknowledges
`that its Preliminary Infringement Contentions (Ex. 1014) “preliminarily
`asserted all 62 claims of the ’934 Patent [Ex. 1014, 3] and the Petition
`challenges only a subset of those claims.” Prelim. Resp. 16. Nonetheless,
`citing a six page listing of prior art references listing over 200 separate
`references from Petitioner’s “Preliminary Invalidity Contentions,”
`(Ex. 2013), Patent Owner contends that Petitioner asserted “Haupt ’209
`[Ex. 2009] anticipates and/or renders obvious the asserted claims of the
`’934 Patent.” Id. at 17 (citing Ex. 2013, 2–8 (Haupt ’209 listed at 8)). The
`translation of Haupt from Exhibit 1004 is relied on to challenge the claims
`here. See Section II.E above. Thus, Exhibits 1004 and 2009 are different
`translations of the same reference, Haupt. Save minor differences in
`translation from German to English, we find the two exhibits to be
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`substantially identical. See Section III.B below. While we have not been
`provided a copy of Petitioner’s Final Invalidity Contentions, Patent Owner
`argues that filing also has the potential to assert the Exhibit 1004 translation
`of Haupt. Id.
`Patent Owner argues that the Stipulation is insufficient for two
`reasons. Prelim. Resp. 17–20. First, Patent Owner notes the Stipulation
`does not encompass other translations