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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner,
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`v.
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`KOSS CORPORATION,
`Patent Owner.
`_____________________
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`CASE: IPR2021-00592
`U.S. PATENT NO. 10,469,934
`_____________________
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`PATENT OWNER’S REPLY TO PETITIONER’S OPPOSITION TO
`MOTION FOR ADDITIONAL DISCOVERY
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`IPR2021-00592
`Reply to Opposition to Motion for Additional Discovery
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`Bestway (USA), Inc. v. Intex Mktg. Ltd.,
`IPR2020-01405, Paper 30 (PTAB Apr. 23, 2021) ............................................... 2
`Garmin Int’l, Inc. v. Cuozzo Speed Tech. LLC,
`IPR2012-00001, Paper 26 (PTAB Mar. 5, 2013) ................................................. 1
`Kolbe & Kolbe Millwork Co. v. Sierra Pac. Indus.,
`IPR2019-00933, Paper 33, 11 (PTAB Dec. 30, 2019) ......................................... 3
`L’Oréal USA, Inc. v. Liqwd, Inc.,
`PGR2017-00012, Paper 37 (PTAB Sept. 27, 2017) ......................................... 2, 3
`Shure Inc. v. ClearOne, Inc.,
`IPR2017-01785, Paper 31, 3 (PTAB Jun. 4, 2018) .............................................. 3
`Telebrands Corp. v. Tinnus Enter., LLC,
`PGR2015-00018, Paper 31, 9 (PTAB Apr. 4, 2016) ............................................ 3
`Other Authorities
`37 C.F.R. § 42.51(b)(2)(i) .......................................................................................... 1
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`i
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`IPR2021-00592
`Reply to Opposition to Motion for Additional Discovery
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`EXHIBIT LISTING
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`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)
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`KOSS-2002
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`Joint Claim Construction Statement, Koss Corp. v. Apple Inc.,
`Case No. 6:20-cv-00665-ADA, Dkt. 68 (W.D. Tex. April 14,
`2021)
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`KOSS-2003 Docket Report, Apple Inc. v. Koss Corp., Case No. 4:20-cv-
`05504-JST (N.D. Cal.) (accessed June 15, 2021)
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`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)
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`KOSS-2006
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`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)
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`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)
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`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)
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`KOSS-2009 U.S. Pub. 2008/0194209 A1 to Haupt et al. (“Haupt ’209”)
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`KOSS-2010 Order Governing Proceedings - Patent Case, W.D. Tex., Waco
`Division, Judge Albright, Feb. 23, 2021
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`KOSS-2011 Petition for Inter Partes Review, IPR2021-00255, November 25,
`2020
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`ii
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`IPR2021-00592
`Reply to Opposition to Motion for Additional Discovery
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`Description
`Exhibit
`KOSS-2012 Petition for Inter Partes Review, IPR2021-00600, March 7,
`2021
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`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
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`KOSS-2014 U.S. Pub. 2009/0029743 A9 to Lair et al. (“Lair”)
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`KOSS-2015 U.S. Pub. 2005/0136839 A1 to Seshadri et al. (“Seshadri ’839”)
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`KOSS-2016 U.S. Pub. 2006/008388 A1 to Rothschild (“Rothschild”)
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`KOSS-2017 U.S. Patent 8,190,203
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`KOSS-2018 U.S. Patent 8,571,544
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`KOSS-2019 U.S. Patent 8,655,420
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`KOSS-2020 U.S. Patent 9,049,502
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`KOSS-2021 U.S. Patent 9,438,987
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`KOSS-2022 U.S. Patent 9,497,535
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`KOSS-2023 U.S. Patent 9,729,959
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`KOSS-2024 U.S. Patent 9.986,325
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`KOSS-2025 U.S. Patent 10,206,025
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`KOSS-2026 U.S. Patent 10,368,155
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`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)
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`iii
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`IPR2021-00592
`Reply to Opposition to Motion for Additional Discovery
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`Description
`Exhibit
`KOSS-2028 Order, In re Apple Inc., Case No. 21-147, D.I. 25 (Fed. Cir.
`Aug. 4, 2021)
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`KOSS-2029 Apple Inc., Form 10-K, for fiscal year ended September 26,
`2020
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`KOSS-2030
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`KOSS-2031
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`KOSS-2032
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`“Apple AirPods are now available,” Apple Newsroom, Dec. 13,
`2016 (www.apple.com/newsroom/2016/12/apple-airpods-are-
`now-available/) (last accessed Sept. 8, 2021)
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`“AirPods, the world’s most popular wireless headphones, are
`getting even better,” Apple Newsroom, Mar. 20, 2019
`(www.apple.com/newsroom/2019/03/airpods-the-worlds-most-
`popular-wireless-headphones-are-getting-even-better/) (last
`accessed Sept. 8, 2021)
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`“Apple reveals new AirPods Pro, available October 30,” Apple
`Newsroom, Mar. 20, 2019
`(www.apple.com/newsroom/2019/10/apple-reveals-new-
`airpods-pro-available-october-30/) (last accessed Sept. 8, 2021)
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`KOSS-2033 Patent Owner’s Request for Additional Discovery
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`KOSS-2034 D. Curry, “Apple Statistics (2021),” Business of Apps, updated
`August 16, 2021 (www.businessofapps.com/data/apple-
`statistics/) (last accessed August 18, 2021)
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`KOSS-2035
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`KOSS-2036
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`J. Cipriani, “Your AirPods just got a quiet update,” CNET,
`February 1, 2017 (www.cnet.com/tech/mobile/how-to-update-
`the-firmware-of-apples-airpods/) (last accessed September 8,
`2021)
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`J. Clover, “Apple Releases New Firmware Update for AirPods,”
`MacRumors, May 24, 2017
`(www.macrumors.com/2017/05/24/airpods-firmware-update/)
`(last accessed September 8, 2021)
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`IPR2021-00592
`Reply to Opposition to Motion for Additional Discovery
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`Exhibit
`KOSS-2037
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`Description
`J. Clover, “Apple Releases New Firmware for AirPods 2 and
`AirPods Pro,” MacRumors, December 16, 2019
`(www.macrumors.com/2019/12/16/apple-releases-new-airpods-
`firmware/) (last accessed September 8, 2021)
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`KOSS-2039
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`KOSS-2038 C. Miller, “Apple releases updated firmware version for
`AirPods and AirPods Pro,” 9to5Mac, April 28, 2021
`(9to5mac.com/2021/04/28/apple-releases-updated-firmware-
`version-for-airpods-and-airpods-pro/) (last accessed September
`8, 2021)
`J. Clover, “Apple Updates AirPods 2 and AirPods Pro Firmware
`to Version 3A283,” MacRumors, September 14, 2020
`(www.macrumors.com/2020/09/14/apple-updates-airpods-
`firmware-3a283/) (last accessed September 15, 2021)
`“AirPods dominate wireless headphone market as global growth
`hits 90% for 2020,” 9to5Mac, Jan. 27, 2021
`(https://9to5mac.com/2021/01/27/airpods-dominate-wireless-
`headphone-market/) (last accessed Sept. 10, 2021)
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`KOSS-2044
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`IPR2021-00592
`Reply to Opposition to Motion for Additional Discovery
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`Petitioner’s Opposition (Paper 13, “Opp.”) unjustifiably dismisses Patent
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`Owner’s nexus evidence, even though Petitioner fails to identify a single error or
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`raise a single argument on the merits of that evidence. Petitioner also
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`mischaracterizes Patent Owner’s evidence that shows that Patent Owner is entitled
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`to the requested information. The Board should grant the Motion (Paper 12) because
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`the requested discovery would serve “the interests of justice.” Garmin Int’l, Inc. v.
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`Cuozzo Speed Tech. LLC, IPR2012-00001, Paper 26 (PTAB Mar. 5, 2013); 37
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`C.F.R. § 42.51(b)(2)(i).
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`Petitioner argues that “KOSS fails to establish that something useful will be
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`discovered” (Opp. at 2) because it discredits the preliminary infringement
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`contentions (APPLE-1014, “PICS”) the Petitioner filed as “insufficient for the
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`requisite showing of nexus since preliminary infringement contentions constitute
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`mere allegations, not proof, of infringement.” Opp. at 5. There are several material
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`defects in this rationale.
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`First, Koss does not rely on only the PICS to establish nexus. Patent Owner
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`supplemented the PICS with additional evidence of nexus, including press releases
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`from Petitioner highlighting how the AirPods Products embody and need to practice
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`the claims. See e.g., Paper 12 at 9-11; KOSS-2030 to 2032; KOSS-2035 to 2040.
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`Second, the PICS alone, and especially in combination with Patent Owner’s
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`IPR2021-00592
`Reply to Opposition to Motion for Additional Discovery
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`additional evidence, are proof, and not mere allegations, of infringement. The PICS
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`are based on public information about how Petitioner’s products operate, including
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`information from Petitioner’s own marketing materials. Moreover, Petitioner did
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`not even dispute the quality of the evidence in the PICS establishing the nexus.
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`Petitioner did not identify a single error or make a single argument that the PICS did
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`not establish that the AirPods Products possess the elements of the claims.
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`Third, Petitioner’s case law-based generalizations, on which it relies to
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`diminish the conclusive evidence of nexus, are unpersuasive as the cases cited by
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`Petitioner actually support granting the Motion. Petitioner cited Bestway (USA), Inc.
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`v. Intex Mktg. Ltd., IPR2020-01405, Paper 30 (PTAB Apr. 23, 2021) (Opp. at 5), but
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`the reasoning that the Board denied the discovery requests is not applicable here. In
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`Bestway, the infringement contentions covered a single product, but the discovery
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`requests sought sales information for many other products. Id. at 7. Here, Patent
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`Owner only seeks sales information for the products covered by the PICs. Petitioner
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`also cites L’Oréal USA, Inc. v. Liqwd, Inc., PGR2017-00012, Paper 37 (PTAB Sept.
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`27, 2017) (see Opp. at 6), but in that case the district court had found preliminarily
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`that the accused products did not infringe, under a claim construction identical to
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`what the Board applied in its institution decision, and Patent Owner’s motion had
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`not overcome that preliminary finding to show more than a mere possibility that
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`IPR2021-00592
`Reply to Opposition to Motion for Additional Discovery
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`something useful would be found. Id. at 7-8. There is no preliminary finding of
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`non-infringement here and, as indicated above, Petitioner does not dispute any of the
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`evidence establishing the nexus here.
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`The other cases cited by Petitioner actually support granting the motion. In
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`both Kolbe and Telebrands, the Board granted discovery of sales information based
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`on, in part, district court litigation claim charts. Kolbe & Kolbe Millwork Co. v.
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`Sierra Pac. Indus., IPR2019-00933, Paper 33, 11 (PTAB Dec. 30, 2019); Telebrands
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`Corp. v. Tinnus Enter., LLC, PGR2015-00018, Paper 31, 9 (PTAB Apr. 4, 2016).
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`Even further in Patent Owner’s favor, in Shure, the Board found that infringement
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`positions taken in litigation over a patent that was different than but related to the
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`patent challenged in the IPR was sufficient evidence of nexus. Shure Inc. v.
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`ClearOne, Inc.. IPR2017-01785, Paper 31, 3 (PTAB Jun. 4, 2018). Moreover, the
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`discovery granted in Kolbe and Telebrands was greatly more expansive than the
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`limited discovery that Patent Owner seeks here, which is limited in terms of (i) types
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`of information, (ii) number of products, and (iii) applicable time period.
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`Consequently, Kolbe, Telebrands, and Shure establish that district court litigation
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`PICS can be sufficient to establish the requisite showing of nexus. Nothing in Kolbe,
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`Telebrands, or Shure indicates that expert testimony or evidence of copying is
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`necessary to establish nexus.
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`IPR2021-00592
`Reply to Opposition to Motion for Additional Discovery
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`Finally, the Opposition confusingly mischaracterizes Patent Owner’s request
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`by stating that Patent Owner advances four allegations to support its request for
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`additional discovery: (1) that publicly available evidence shows that Apple allegedly
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`exploited the Challenged Claims; (2) that there is a clear nexus; (3) that the Apple
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`Products “need to practice” the Challenged Claims; and (4) that the success of the
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`Apple Products years after the priority dates of the patent is strong evidence of
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`nonobviousness. Opp. at 4. Based on this mischaracterization the Opposition
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`wrongly asserts that “sales revenue and quantity of units sold of Apple Products—
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`is product-level information that has no substantive value to any of KOSS’s four
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`allegations.” Id.
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`The requested evidence is not sought to support the “allegations,” but instead
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`the allegations support that Patent Owner is entitled to the requested evidence.
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`Patent Owner’s Motion states clearly that it “seeks information concerning
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`secondary considerations of nonobviousness” for the Challenged Claims. Paper 12,
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`1. The four “allegations” cited by Petitioner are merely considerations in support of
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`the Motion, as required by the Garmin factors. Petitioner’s misrepresentation of
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`Patent Owner’s allegations is further represented in its assertion that “sales
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`information lacks any technical detail that would substantiate KOSS’ allegation that
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`the Apple Products ‘need to practice’ the Challenged Claims.” Opp. at 8. Patent
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`IPR2021-00592
`Reply to Opposition to Motion for Additional Discovery
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`Owner never made such a representation and this statement reflects Petitioner’s
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`conflation of the legal considerations of commercial success.
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`Petitioner perpetuates the confusion under the second Garmin factor, where it
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`asserts that “KOSS’s attempts to use additional discovery in these IPR proceedings
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`to impermissibly suggest infringement.” Opp. at 8. This unsupported accusation is
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`refuted by the fact that the Motion merely seeks limited information to support its
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`position that the claims of the ’934 Patent are nonobvious. Paper 12, 2.
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`Under the third Garmin factor, Petitioner states that “KOSS’s request for
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`additional discovery is unnecessarily cumulative over information already in its
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`possession.” Opp. at 9. However, Petitioner has not stipulated that the AirPods
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`Products have achieved significant sales, so Patent Owner needs the information to
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`establish the significant sales and the concomitant commercial success.
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`For the foregoing reasons, Patent Owner respectfully requests that the Board
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`grant Patent Owner’s requested additional discovery contained in Ex. 2033 and
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`require Petitioner to produce the responsive information within fourteen (14) days
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`of its order.
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`Dated: November 12, 2021
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`Respectfully submitted,
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`By:
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`/Mark G. Knedeisen/
`Mark G. Knedeisen (Reg. No. 42,747)
`K&L Gates Center, 210 Sixth Avenue
`Pittsburgh, Pennsylvania 15222
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`IPR2021-00592
`Reply to Opposition to Motion for Additional Discovery
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`Tel.: (412) 355-6342
`mark.knedeisen@klgates.com
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`Counsel for Patent Owner
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`IPR2021-00592
`Reply to Opposition to Motion for Additional Discovery
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`CERTIFICATION OF SERVICE UNDER 37 C.F.R. § 42.6(E)(4)
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`I hereby certify that on November 12, 2021, I caused a true and correct copy
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`of the foregoing to be served on the following counsel for Petitioner by electronic
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`mail to the following email address:
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`W. Karl Renner
`David L. Holt
`Joel A. Henry
`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-ptab@fr.com
`Email: holt2@fr.com
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`By:
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`/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
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`Counsel for Patent Owner
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