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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,
`
`v.
`
`KOSS CORPORATION,
`Patent Owner.
`_____________________
`
`CASE: IPR2021-00592
`U.S. PATENT NO. 10,469,934
`_____________________
`
`
`PATENT OWNER RESPONSE
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`I.
`II.
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`III.
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`IPR2021-00592
`Patent Owner Response
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`BACKGROUND ............................................................................................. 3
`A.
`Summary of the ’934 Patent .................................................................. 3
`B.
`Person of Ordinary Skill in the Art ....................................................... 4
`C.
`Petitioner’s Evidence ............................................................................. 6
`1.
`The References ............................................................................ 6
`2.
`Cooperstock’s Testimony ......................................................... 10
`PETITIONER FAILED TO SHOW THAT CLAIM 1 WOULD HAVE
`BEEN OBVIOUS .......................................................................................... 15
`A.
`Petitioner Failed to Show that the Headphone Assembly’s
`Interconnections With the “Remote, Network-Connected Server”
`Would Have Been Obvious ................................................................. 15
`1.
`Petitioner Failed to Show That the Haupt and Seshadri, in
`Combination, Teach That the Network-Connected Server
`to Which Transmission of the Request Is Initiated From the
`Headphone Assembly Is in Communication With the Mobile
`DAP and Transmits Firmware Upgrades to the Headphone
`Assembly ................................................................................... 17
`The Board Previously Rejected Petitioner’s Argument for
`Limitation 1.i and Should Reject it Again ................................ 19
`Rao Is Irrelevant to Limitation 1.i ............................................ 22
`Petitioner Failed to Show That the Network-Connected
`Server to Which the Headphone Assembly Initiates
`Transmission of the Request Also Transmits the Firmware
`Upgrades to the Headphone Assembly ..................................... 23
`
`3.
`4.
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`2.
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`i
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`IPR2021-00592
`Patent Owner Response
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`B.
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`Commercial Success of Petitioner’s Products Confirms That
`Claim 1 Would Not Have Been Obvious ............................................ 27
`1.
`Background ............................................................................... 27
`2.
`Legal Principles ......................................................................... 29
`3.
`The AirPods Products Are a Commercial Success ................... 30
`4.
`There Is a Nexus Between the AirPods Products and
`Claim 1 ...................................................................................... 32
`IV. DEPENDENT CLAIMS ................................................................................ 34
`A.
`Claims 7, 21, 30, and 45 ...................................................................... 34
`B.
`Claims 33-37, 39, 42-43, and 45-46 .................................................... 38
`1.
`Background on Firmware and Firmware Upgrades .................. 39
`2.
`Petitioner Has Not Shown That Claim 33 and the
`Challenged Claims Depending Therefrom Would Have
`Been Obvious ............................................................................ 40
`Claims 37 and 39....................................................................... 46
`3.
`Claims 56-57 ....................................................................................... 50
`Claims 52-53 and 56-57 ...................................................................... 51
`Commercial Success Applies to Dependent Claims 7, 21, 30,
`33-37, 39, 42-43, 45-46, and 56-67 ..................................................... 56
`CONCLUSION .............................................................................................. 56
`
`C.
`D.
`E.
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`V.
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`ii
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`IPR2021-00592
`Patent Owner Response
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`TABLE OF AUTHORITIES
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` Page(s)
`
`Cases
`AG v. Nike, Inc.,
`IPR2016-00921, Paper 21 (PTAB Oct. 19, 2017) .............................................. 13
`Apple Inc. v. Koss Corp.,
`IPR2021-00546, Paper 10 (PTAB Sept. 7, 2021) .......................................passim
`Apple Inc. v. Koss Corp.,
`IPR2021-00626, Paper 10 (PTAB Sept. 30, 2021) ......................................passim
`Apple, Inc. v. Koss Corp.,
`IPR2021-00592, Paper 9 (Aug. 23, 2021) ...................................................passim
`In re Applied Materials, Inc.,
`692 F.3d 1289 (Fed. Cir. 2012) .......................................................................... 31
`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) .................................................................... 21, 25
`BMW of North America, LLC v. Stragent, LLC,
`IPR2017-00676, Paper 33 (PTAB June 14, 2018) ............................................. 15
`Demaco Corp. v. F. Von Langsdorff Licensing Ltd.,
`851 F.2d 1387 (Fed. Cir. 1998) .................................................................... 30, 33
`Ecolochem, Inc. v. S. Cal. Edison Co.,
`227 F.3d 1361 (Fed. Cir. 2000) .......................................................................... 29
`Eli Lilly and Co. v. Teva Pharms. Int’l GmbH,
`8 F.4th 1331 (Fed. Cir. 2021) ............................................................................. 12
`Environmental Designs, Ltd. v. Union Oil Co.,
`713 F.2d 693 (Fed. Cir. 1983) ............................................................................ 12
`In re Fine,
`837 F.2d 1071 (Fed. Cir. 1988) .......................................................................... 56
`
`iii
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`IPR2021-00592
`Patent Owner Response
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`FMC Tech. Inc. v. OneSubsea IP UK Ltd.,
`IPR2019-00935, Paper 45 (PTAB Oct. 14, 2020) .............................................. 12
`Fox Factory, Inc. v. SRAM, LLC,
`994 F.3d 1366 (Fed. Cir. 2019) .......................................................................... 30
`Global Tel*Link Corp. v. Securus Techs., Inc.,
`IPR2015-01225, Paper 44 (PTAB Dec. 14, 2016) ............................................. 38
`Goodyear Tire & Rubber Co. v. Ray-O-Vac Co.,
`321 U.S. 275 (1944) .................................................................................. 3, 29, 34
`Graham v. John Deere Co. of Kansas City,
`383 U.S. 1 (1966) ................................................................................................ 29
`Harmonic Inc. v. Avid Tech., Inc.,
`815 F.3d 1356 (Fed. Cir. 2016) .................................................................... 27, 51
`In re Huang,
`100 F.3d 135 (Fed. Cir. 1996) ............................................................................ 30
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) .................................................................... 24, 51
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ...................................................................... 14, 42
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 14
`Merck & Co. v. Teva Pharm. USA, Inc.,
`395 F.3d 1364 (Fed. Cir. 2005) .................................................................... 29, 34
`Nautilus Hyosung Inc. v. Diebold, Inc.,
`IPR2016-00633, Paper 9 (PTAB Aug. 22, 2016) ............................................... 25
`Nobel Biocare Services AG v. Instradent USA, Inc.,
`903 F.3d 1365 (Fed. Cir. 2018) .......................................................................... 55
`Ormco Corp. v. Align Tech., Inc.,
`463 F.3d 1299 (Fed. Cir. 2006) .......................................................................... 29
`
`iv
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`IPR2021-00592
`Patent Owner Response
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`Pentec, Inc. v. Graphic Controls Corp.,
`776 F.2d 309 (Fed. Cir. 1985) ............................................................................ 29
`SightSound Techs., LLC v. Apple Inc.,
`809 F.3d 1307 (Fed. Cir. 2015) .......................................................................... 30
`Silicon Labs., Inc. v. Cresta Tech. Corp.,
`IPR2014-00809, Paper 56 (PTAB Oct. 21, 2015) .............................................. 13
`Statutes
`35 U.S.C. § 103 .............................................................................................. 2, 14, 42
`35 U.S.C. § 112(d) ....................................................................................... 38, 46, 50
`35 U.S.C. § 312(a)(3) ............................................................................................... 24
`Other Authorities
`37 C.F.R. § 42.65(a) ..................................................................................... 25, 37, 55
`37 C.F.R. § 42.120 ..................................................................................................... 1
`
`
`v
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`EXHIBIT LISTING
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`IPR2021-00592
`Patent Owner Response
`
`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
`
`vi
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`IPR2021-00592
`Patent Owner 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)
`
`vii
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`IPR2021-00592
`Patent Owner Response
`
`Description
`Exhibit
`KOSS-2028 Order, In re Apple Inc., Case No. 21-147, D.I. 25 (Fed. Cir.
`Aug. 4, 2021)
`
`KOSS-2029 Apple Inc., Form 10-K, for fiscal year ended September 26,
`2020
`
`KOSS-2030
`
`KOSS-2031
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`KOSS-2032
`
`“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)
`
`“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)
`
`“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)
`
`KOSS-2033 Patent Owner’s Request for Additional Discovery
`
`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)
`
`KOSS-2035
`
`KOSS-2036
`
`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)
`
`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)
`
`viii
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`Exhibit
`KOSS-2037
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`IPR2021-00592
`Patent Owner Response
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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)
`
`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)
`
`KOSS-2039
`
`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)
`
`KOSS-2040 M. Potuck, “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. 15, 2021)
`
`KOSS-2041 Sept/Oct 2021 Email chain with Board re Filing Motion
`
`KOSS-2042 Exhibit APPLE-1003 of IPR2021-00600, Declaration of Dr.
`Jeremy Cooperstock, March 7, 2021
`
`KOSS-2043 U.S. Patent 10,298,451 B1
`
`KOSS-2044 McGill University Major Computer Science Program
`Requirements (www.mcgill.ca/study/2021-
`2022/faculties/science/undergraduate/programs/bachelor-
`science-bsc-major-computer-science) (last accessed Oct. 27,
`2021)
`
`KOSS-2045 Deposition Transcript, Prof. Jeremy Cooperstock, Ph.D.,
`IPR2021-00592, November 5, 2021
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`ix
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`IPR2021-00592
`Patent Owner Response
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`Description
`Exhibit
`KOSS-2046 Declaration of Joseph C. McAlexander, III
`
`KOSS-2047 Exhibit APPLE-1003 of IPR2021-00546, Declaration of Dr.
`Jeremy Cooperstock, Feb. 22, 2021
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`KOSS-2048 Exhibit APPLE-1003 of IPR2021-00626, Declaration of Dr.
`Jeremy Cooperstock, Mar. 15, 2021
`
`
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`x
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`I.
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`INTRODUCTION
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`IPR2021-00592
`Patent Owner Response
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`The Board granted institution for inter partes review of claims 1-3, 5, 7, 9-11,
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`14-16, 19, 21, 23-25, 28, 30, 32-37, 39, 42-43, 45-48, and 51-57 (“Challenged
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`Claims”) of U.S. Patent 10,469,934 (Ex. 1001, “the ’934 Patent”). Apple, Inc. v.
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`Koss Corp., IPR2021-00592, Paper 9 (Aug. 23, 2021) (“Institution Decision”).
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`Patent Owner, Koss Corporation, submits this Patent Owner Response (“POR”)
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`under 37 C.F.R. § 42.120.
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`Petitioner challenges the Challenged Claims solely on obviousness grounds.
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`The Board should find that Petitioner failed to show that the Challenged Claims
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`would have been obvious. Petitioner challenged only one independent claim—claim
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`1—of the ’934 Patent. Claim 1 includes limitations that are substantially identical
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`to claim 1 of another patent, Patent No. 10,206,025 (“’025 Patent,” KOSS-2025),
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`that Petitioner challenged on similar prior art (Haupt (APPLE-1004) and Seshadri
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`(APPLE-1007)) in two other IPRs. The Board denied institution of those two IPRs
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`(Apple Inc. v. Koss Corp., IPR2021-00546, Paper 10, 13-19 (PTAB Sept. 7, 2021)
`
`and Apple Inc. v. Koss Corp., IPR2021-00626, Paper 10, 13-19 (PTAB Sept. 30,
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`2021)) and the Board’s reasoning of those two IPRs applies here. The claim
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`language is substantially the same; the asserted prior art is the same; and Petitioner’s
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`evidence and arguments are the same.
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`- 1 -
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`IPR2021-00592
`Patent Owner Response
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`Many dependent Challenged Claims are non-obvious for reasons above and
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`beyond the non-obviousness of claim 1. For example, dependent claims 7, 21, 30,
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`and 45 recite that “upon activation of the microphone by the user, data are
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`transmitted about the headphone assembly to a remote device.” For these claims,
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`however, Petition relies on subject matter from Haupt about a microphone, not
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`headphones. Petitioner does not explain why teachings about Haupt’s microphone
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`apply to the wireless headphones disclosed in Haupt.
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`Claims 33-37, 39, 42-43, and 45-46 are limited to wireless “earbuds.”
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`Petitioner, however, did not assess the patentability of these claims “as a whole,” as
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`required by 35 U.S.C. § 103. Instead, Petitioner relied simply on an additional
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`reference that shows wireless earbuds as part of, according to Petitioner’s expert, an
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`“extension of the natural process of building up the references, as one has a
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`combination that is starting off the analysis [and] then adding an additional reference
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`to deal with the extended analysis of another claim ….” KOSS-2045, 22. Moreover,
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`Petitioner did not explain why the proposed modification would have been obvious
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`to a person having ordinary skill in the art (“POSITA”) with merely a bachelor’s
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`degree in computer science, two years of experience with local area networks, and
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`no experience designing wireless earphones, which person qualifies as a POSITA
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`according to Petitioner. APPLE-1003, ¶33; KOSS-2045, 26-27 and 34.
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`IPR2021-00592
`Patent Owner Response
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`Still further, Petitioner acknowledges that claims 56 and 57 would not have
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`been obvious over the grounds asserted in the Petition. Petitioner also failed to show
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`that claims 52, 53, 56 and 57 would have been obvious.
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`To the extent that the evidence on patentability for any of the Challenged
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`Claims presents a close call, the marked commercial success of Petitioner’s products
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`that practice the Challenged Claims “tip[s] the scales in favor of patentability.”
`
`Goodyear Tire & Rubber Co. v. Ray-O-Vac Co., 321 U.S. 275, 279 (1944).
`
`Finally, the testimony of Petitioner’s expert must be viewed with skepticism,
`
`and indeed given little weight, because (i) he refused to answer many questions about
`
`design considerations for wireless earphones, even though wireless earphones are
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`the focus of the ’934 Patent, and (ii) he applied a legally improper analytical
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`framework for assessing obviousness.
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`This POR is supported by a declarations by Joseph C. McAlexander, III
`
`(KOSS-2046), an expert in the field of the ‘934 Patent.
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`II. BACKGROUND
`A.
`Summary of the ’934 Patent
`The ’934 Patent includes sixty-two (62) claims, of which claims 1 and 58 are
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`- 3 -
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`independent.1 Claim 1 recites a headphone assembly that comprises first and second
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`IPR2021-00592
`Patent Owner Response
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`earphones, an antenna for receiving wireless signals from a mobile digital audio
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`player (“DAP”) via one or more ad hoc wireless communication links, a wireless
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`communication circuit for receiving and transmitting wireless signals to and from
`
`the headphone assembly, a processor, memory for storing firmware executed by the
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`processor, a rechargeable battery, and a microphone. The processor is configured,
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`upon activation of a user-control of the headphone assembly, to initiate transmission
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`of a request to a remote, network-connected server that is in wireless communication
`
`with the mobile DAP. The headphone assembly is further for receiving firmware
`
`upgrades transmitted from the remote, network-connected server. APPLE-1001,
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`18:1-32. More details about the ’934 Patent are provided in the Institution Decision
`
`(Paper 9) at pages 4-6.
`
`B.
`Person of Ordinary Skill in the Art
`Petitioner’s expert, Prof. Jeremy Cooperstock (“Cooperstock”) testified that a
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`POSITA to which the ’934 Patent pertains as of April 7, 2008 “would have had at
`
`least a Bachelor’s Degree in an academic area emphasizing electrical engineering,
`
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`1 Claim 58 and claims depending from it are not challenged in this IPR. Institution
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`Decision (Paper 9) at 2.
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`- 4 -
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`computer science, or a similar discipline, and at least two years of experience in
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`IPR2021-00592
`Patent Owner Response
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`wireless communications across short distance or local area networks,” with the
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`proviso that “[s]uperior education could compensate for a deficiency in work
`
`experience, and vice-versa.” APPLE-1003, ¶33; KOSS-2045, 26-27. The Board
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`adopted this skill level standard for a POSITA in the Institution Decision (Paper 9,
`
`32) and should maintain this standard for the proceeding as Patent Owner agrees that
`
`it is appropriate. KOSS-2046, ¶22. Cooperstock used this POSITA skill level
`
`standard for his opinions. KOSS-2045, 27.
`
`A person who qualifies as a POSITA under this standard could have merely a
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`bachelor’s degree in computer science and two years of experience in local area
`
`networks (“LANs”), “provided that they took the relevant courses in their degree
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`that would be pertinent to the contents described here ….” KOSS-2045, 34. Those
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`relevant courses, according to Cooperstock, would be “courses involving
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`communications, specifically network communications,” “a certain degree of
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`hardware knowledge and computer architecture background, probably embedded
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`systems….” Id., 34. Notably, Cooperstock did not identify earphone design as
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`relevant coursework that a POSITA would have had.
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`Cooperstock also identified the relevant knowledge that a person would
`
`acquire through two years of experience with LANs. He identified adapter interface
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`- 5 -
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`circuits, communication protocols, packetization, networking delay and buffer
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`IPR2021-00592
`Patent Owner Response
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`management, and application layer. Id., 44. Again, he did not state that a person
`
`would acquire skills or knowledge related to designing earphones through two years
`
`of experience with LANs. Thus, a POSITA would not necessarily have any skills
`
`or knowledge specific to designing a wireless earphone for a desired sound quality
`
`level, to fit all the components of a wireless earphone into a small form factor, or for
`
`suitably powering a wireless earphone given the safety and size constraints of the
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`wireless earphone. KOSS-2046, ¶¶23-24.
`
`C.
`Petitioner’s Evidence
`Petitioner challenges thirty-eight claims—the “Challenged Claims”—across
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`four asserted grounds, Grounds 1(A)–1(D), which allege that the Challenged Claims
`
`would have been obvious over various combinations of Haupt (APPLE-1004),
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`Seshadri (APPLE-1007), Rao (APPLE-1009), Paulson (APPLE-1011), and Rosener
`
`(APPLE-1008). Pet. 1-2.
`
`1.
`The References
`Haupt describes so-called “WLAN” headphones, i.e., headphones “for
`
`wireless audio file transfer, as long as the receiver is within the transmission range
`
`of a WLAN access point ….” APPLE-1004, 2. The form factors of Haupt’s WLAN
`
`headphones are over-the-ear headphones with a headband and on-the-ear
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`headphones with a behind-the-head support band. APPLE-1003, ¶62; APPLE-1004,
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`- 6 -
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`
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`Figs. 2, 5; KOSS-2045, 56. Haupt does not disclose earbuds. KOSS-2045, 56-57.
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`IPR2021-00592
`Patent Owner Response
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`Haupt also discloses wireless microphones that can communicate via a WLAN
`
`interface. APPLE-1004, 5, 19, and Figs. 6 and 8. The wireless microphones are
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`separate (different) from the WLAN headphones. Haupt’s Figure 7 is a block
`
`diagram of a WLAN headphone and Figure 8 is a block diagram of the wireless
`
`microphone. APPLE-1004, 20-21; KOSS-2045, 59-61; KOSS-2046, ¶33.
`
`Seshadri discloses a modular wireless headset coupled wirelessly to a base
`
`unit. APPLE-1007, ¶[0024], Fig. 1. The base unit may be a cellular telephone, wire
`
`line telephone, laptop, PC, or personal digital assistant. Id., ¶[0024]. The wireless
`
`headset may have a single earpiece (id., Fig. 1) or two earpieces with a headband
`
`(id., Fig. 4). Seshadri does not disclose wireless earbuds. KOSS-2045, 64-66;
`
`KOSS-2046, ¶34.
`
`Rao discloses electronic devices adapted to access servers to retrieve
`
`firmware and/or software updates. APPLE-1009, 4:55-57. Rao discloses that the
`
`electronic devices may be mobile cellular phone handsets, personal digital assistants,
`
`pagers, MP3 players, or digital cameras. Id., 4:57-60. Rao does not disclose
`
`explicitly that the electronic devices could be wireless earphones, let alone true
`
`
`- 7 -
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`
`
`
`wireless (“TWS”) earbuds.2 KOSS-2045, 72-73; KOSS-2046, ¶35.
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`IPR2021-00592
`Patent Owner Response
`
`Paulson discloses an earpiece with a microphone. One embodiment is
`
`described in connection with Figures 1-3 of Paulson. This embodiment is a single
`
`earpiece that has a wired connection to an external audio device. APPLE-1011, 5:1-
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`10, Figs. 1-3; KOSS-2045, 87-89; KOSS-2046, ¶36. With reference to Paulson’s
`
`Figure 3 (below), this embodiment includes a button 335 that activates a switch 330.
`
`When activated via the button, the switch mutes the microphone. APPLE-1011, 6:-
`
`17-33; KOSS-2046, ¶37. Because this embodiment is a wired earpiece, it does not
`
`include a battery, processor, or wireless communication circuit. KOSS-2045, 90-
`
`91; KOSS-2046, ¶39.
`
`
`2 TWS earbuds are described in Mr. McAlexander’s declaration (KOSS-2046) at
`
`¶¶29-30.
`
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`- 8 -
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`
`
`IPR2021-00592
`Patent Owner Response
`
`
`
`Paulson discloses another embodiment, in Figure 4, of a wireless earpiece
`
`with a microphone. APPLE-1011, 6:50-55. This embodiment can use Bluetooth.
`
`Id., 6:55-62. This embodiment, however, does not include the switch and mute
`
`button of Figure 3. KOSS-2046, ¶40.
`
`Rosener discloses an embodiment with wireless earbuds. APPLE-1008,
`
`¶[0030], Fig. 5. Because both earbuds are independently wireless in this
`
`embodiment, Rosener explains that “[t]iming differences between the first and
`
`second data streams may also be of concern, particularly where the data packets
`
`comprise audio data.” Id., ¶[0038]. Cooperstock agreed that the differential
`
`latencies would also be an issue for Haupt’s and Seshadri’s wireless earphones that
`
`receive independent data streams. KOSS-2045, 79-80; KOSS-2046, ¶41. Rosener
`
`
`- 9 -
`
`
`
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`discloses four ways to compensate for differential latencies between the two data
`
`IPR2021-00592
`Patent Owner Response
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`streams. APPLE-1008, ¶¶[0039]-[0042]; KOSS-2045, 81; KOSS-2046, ¶¶42-44.
`
`Rosener does not disclose firmware upgrades for the wireless earbuds. KOSS-2046,
`
`¶45.
`
`2.
`Cooperstock’s Testimony
`Petitioner supported its invalidity grounds with testimony from Cooperstock.
`
`Pet. 1; APPLE-1003. The Board should afford Cooperstock’s testimony little, if
`
`any, weight for several reasons.
`
`First, even though Cooperstock acknowledged that the ’934 Patent relates to
`
`wireless earphones (APPLE-1003, ¶18), he could not identify a single design
`
`consideration that a POSITA would consider for the sound quality aspects of
`
`wireless earphones. KOSS-2045, 47 (“This is not something that I have considered
`
`in my declaration, so I’m not sure of where to even begin in considering the question
`
`in terms of the factors I would consider.”). He also could not describe how an
`
`earphone converts electrical energy into audio output. Id., 51-52 (“Again, this is not
`
`a topic that I have considered in preparing the declaration. I haven’t turned my
`
`attention to different technologies that would be employed or all of the possibilities
`
`of designing an audio transducer or how an audio transducer that converts electric
`
`energy to audio output would function.”). Although Cooperstock identified a voice
`
`coil as one type of acoustic transducer, he could not identify any design
`
`- 10 -
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`
`
`
`considerations involved in designing an earphone with a voice coil. Id., 53-54 (“This
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`IPR2021-00592
`Patent Owner Response
`
`is again a subject that I have not considered in preparing my declaration. It’s not
`
`something that I have given any thought to in preparing for today’s deposition. I
`
`would want to study, go back to the relevant references and formulate a clear
`
`answer.”). He also would not describe whether designing headphones with a
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`headband involved different considerations than designing an earbud. Id., 57-58
`
`(“Well, you’re asking me a question that would require me to go through a
`
`significant amount of documentation and preparation that I have not done for
`
`today.”). When asked how the analog-to-digital converter used in one of Rosener’s
`
`four ways of dealing with the differential latencies of the data streams operates, he
`
`perplexingly insisted that he would have to consult “psychophysics literature with
`
`respect to user sensitivity or listener sensitivity to offset between left and right audio
`
`playback.” Id., 83-85.
`
`Cooperstock’s responses, or lack thereof, to such earphone design questions
`
`illustrate his lack of experience related to the design of wireless earphones and is
`
`especially troublesome because his skill and knowledge level exceeds the skill and
`
`knowledge level of persons qualifying as a POSITA. Cooperstock has a doctorate
`
`in electrical and computer engineering and has been a university professor for more
`
`than twenty years. APPLE-1003, ¶¶6-11 and pp.99-102. He also has extensive
`
`
`- 11 -
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`
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`industry experience. Id. Given Cooperstock’s advanced skill level, if he is incapable
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`IPR2021-00592
`Patent Owner Response
`
`of describing the design considerations involved in wireless earphones, a person with
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`less educational experience, such as a person with merely a bachelor’s degree in
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`computer science and two years of experience with LANs (which skill level qualifies
`
`as a POSITA for the ’934 Patent according to Cooperstock, see APPLE-1003, ¶33;
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`KOSS-2045, 34), would be hopelessly lost. The issue of obviousness must be
`
`considered from the perspective of a person of ordinary skill, not geniuses in the art
`
`at hand. Environmental Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 697 (Fed. Cir.
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`1983). A POSITA here, without experience designing earphones, could not
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`reasonably expect that the combinations proposed in the Petition would be
`
`successful in light of an expert like Cooperstock’s inability to describe basic design
`
`issues that would be involved. Eli Lilly and Co. v. Teva Pharms. Int’l GmbH, 8 F.4th
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`1331, 1345 (Fed. Cir. 2021) (to prove that a claim would have been obvious, IPR
`
`petitioner “was required to show that a skilled artisan would have had a ‘reasonable
`
`expectation’ of success …”).
`
`Cooperstock’s testimony should be afforded little, if any, weight in light of
`
`his inability and unwillingness to answer basic questions about the relevant
`
`technology. FMC Tech. Inc. v. OneSubsea IP UK Ltd., IPR2019-00935, Paper 45,
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`83-84 (PTAB Oct. 14, 2020) (expert testimony entitled to little, if any, weight where
`
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`- 12 -
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`
`
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`the expert was unable to answer questions about the relevant technology); adidas
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`IPR2021-00592
`Patent Owner Response
`
`AG v. Nike, Inc., IPR2016-00921, Paper 21, 31 (PTAB Oct. 19, 2017) (appropriate
`
`weight for expert testimony where expert was unable to answer basic questions
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`about, among other things, the prior art and the relevant technology); Silicon Labs.,
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`Inc. v. Cresta Tech. Corp., IPR2014-00809, Paper 56, 22-23 (PTAB Oct. 21, 2015)
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`(expert answering, “I have no idea” exhibited “lack of knowledge”).
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`Second, Cooperstock used an
`
`improper
`
`legal framework
`
`to assess
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`obviousness, as evidenced by both his direct and cross-examination testimony. On
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`direct, Cooperstock testified that he was tasked with considering “whether certain
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`references teach or suggest the features recited” in the Challenged Claims. APPLE-
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`1003, ¶3. Cooperstock doubled down on this improper analytical framework on
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`cross-examination, testifying that he found the Challenged Claims obvious simply
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`because “the prior art references covered … the various claims of the ’934 Patent,”
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`“there was nothing specifically inventive or novel in the claims …,” the
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