DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Apple Inc., Petitioner
`v.
`Koss Corporation, Patent Owner
`
`IPR2021-00600
`Patent 10,298,451
`
`June 1, 2022
`
`KOSS-2029
`IPR2021-00600
`
`
`
`Apple Inc., Petitioner
`v.
`Koss Corporation, Patent Owner
`
`IPR2021-00600
`Patent 10,298,451
`
`June 1, 2022
`
`KOSS-2029
`IPR2021-00600
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Patentability Challenges
`Claims*
`35 U.S.C. § 103 Basis
`1, 6, 12, 13 & 16-
`Scherzer (APPLE-1004) & Subramaniam (APPLE-
`20
`1005)
`2, 7-10 & 21
`Scherzer, Subramaniam & Baxter (APPLE-1009)
`
`Ground
`1A
`
`1B
`
`1C
`1D
`
`3 & 4
`11 & 15
`
`Scherzer, Subramaniam & Drader (APPLE-1010)
`Scherzer, Subramaniam & Montemurro (APPLE-
`1013)
`Scherzer, Subramaniam & Gupta (APPLE-1012)
`15
`1E
`*Claims 1 and 18 (challenged on Ground 1A) are the only Independent Claims
`in the ’451 Patent.
`All Grounds Rely on combination of Scherzer
`& Subramaniam, herein “the Combination”
`
`2
`
`
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Claim 1 of the ’451 Patent
`APPLE-1001 (the ’451
`Patent), 8:30-53
`
`Credential data received
`and stored by host
`server(s) are:
`•
`Transmitted from mobile
`computer device to
`electronic device
`wirelessly via an ad hoc
`communication link; and
`• Used by the electronic
`device to connect to the
`WAP
`
`3
`
`
`
`•
`
`The Combination
`• Modifies Scherzer’s system to
`include:
`•
`Subramaniam’s device 220
`(green) and device 240 (blue)
`Scherzer’s software client
`installed on Subramaniam’s
`device 220
`• Access information stored on
`Scherzer’s application server 116 is
`somehow transmitted from device
`220 to device 240
`• Enables device 240 to connect to
`the Internet before device 240
`downloads Scherzer’s software
`client
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Pet., 31
`
`4
`
`
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Problems with Petitioner’s § 103 Challenges
`
`• Combination would result in widespread, unfettered dissemination of
`access credentials and network access to unrecognized devices &
`unregistered users (even when initial transfer is between commonly-owned
`devices).
`• Combination ignores:
`• Scherzer’s and Subramaniam’s teachings, as a whole; and
`• A POSITA’s unrebutted understanding of network security considerations &
`security features.
`• Combination is motivated by hindsight.
`• Dr. Cooperstock’s testimony should be afforded little, if any, weight.
`
`5
`
`
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`
`Evidence of Record
`
`6
`
`
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`
`Experts
`
`• Mr. Joseph C. McAlexander III, for Patent
`Owner
`• President of McAlexander Sound, Inc.
`• Registered Professional Engineer
`• 48 years of experience in microcircuit
`and semiconductor technologies
`• 14 years as Texas Instruments, Inc.
`• Consistently described LIMITS to
`network access permitted by Scherzer
`• Testimony, especially unrebutted
`testimony, should be afforded significant
`weight
`
`• Dr. Jeremy Cooperstock, for Petitioner
`• Professor, Elec. & Computer Eng.,
`McGill University
`• Hindsight-driven approach to
`obviousness inquiry
`• Inconsistent position on LIMITS, if any,
`to network access permitted by
`Scherzer
`• Testimony should be afforded little, if
`any, weight
`
`7
`
`
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Mr. Joseph C. McAlexanderIII Consistently
`Described Limits to Network Access in Scherzer
`
`• Scherzer’s account acceptability requirement precludes
`an unrecognized device (Subramaniam's device 240)
`from using Scherzer’s system to obtain wireless access.
`KOSS-2026, (McAlexander’s Declaration) ¶¶55-64.
`• It would “defeat the purpose of Scherzer” if users could
`benefit from Scherzer service “while circumventing
`Scherzer’s tracking and acceptability requirement.” Id.
`at ¶64.
`• A POSITA implementing Scherzer’s system would utilize
`security features. Id.
`• “Scherzer’s system would implement some means of
`restricting unregistered connectivity… such as by MAC
`filtering” which was known to a POSITA. Id. at ¶¶ 61-62.
`
`8
`
`
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Dr. Cooperstock’s Inconsistent Characterizations
`of Limits, If Any, to Network Access
`
`Arbitrary, Self-Serving Limits to Dissemination / Network
`Access
`Concern of widespread, unfettered dissemination / access is
`“not relevant” because two examples “do not propose
`providing unregistered users with access.” APPLE-1028
`(Cooperstock’s Supplemental Declaration), ¶65.
`“But in each example discussed in the Declaration (and in
`the proposed combination as a whole), the secondary device
`that is provided with access credentials is specifically
`associated with a registered user (i.e., a user that has
`previously registered with Scherzer’s service on a registered
`device). This type of credential sharing is not “widespread
`and unfettered.” APPLE-1028, ¶35.
`
`No Limits to Dissemination / Network Access
`
`“Scherzer does not prescribe any limits to what
`kind of users, either registered or unregistered,
`can make use of the service.” KOSS-2025
`(November 5, 2021 Deposition Transcript), 74.
`It would “defeat the purposes of Scherzer to limit
`what devices or how many devices a user can
`connect to access points.” KOSS-2025, 75.
`
`Also, failed to (A) consider
`references as a whole, (B)
`follow Graham
`framework, (C) answer
`questions on cross-
`examination. POR, 50-54.
`
`Scherzer does not prohibit sharing credential
`information with another device or another user.
`APPLE-1028, ¶23.
`
`The only limit to sharing of credential information
`is the device’s physical longevity. KOSS-2025, 58.
`
`9
`
`
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`
`POSITA
`
`10
`
`
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`POSITA
`• Bachelor’s degree
`in EE or similar
`• Two or more years
`of relevant work
`experience
`
`KOSS-2026
`(McAlexander’s
`Declaration),
`¶23
`
`11
`
`APPLE-1003
`(Copperstock’s
`Initial
`Declaration),
`¶26
`
`
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Combination Results in Widespread,
`Unfettered Dissemination of Access
`Credentials / Network Access to
`Unrecognized Devices & Unregistered Users
`• User contribution accounts are excluded from the combination.
`APPLE-1028 (Cooperstock’s Supplemental Declaration), ¶62.
`• No meaningful limits to network access provided by the
`combination. KOSS-2025 (November 5, 2021 Deposition
`Transcript), 74-75.
`• Opens a Pandora’s Box even when initial transfer is between
`commonly-owned devices. Sur-Reply, 8-9 (citing KOSS-2026
`(McAlexander’s Declaration, ¶46)
`
`12
`
`
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`
`The Combination Excludes
`Scherzer’s User Contribution
`Account
`
`Pet., 31
`
`•
`
`•
`
`“The Scherzer-Subramaniam
`combination, as explained in the
`Declaration, did not incorporate
`Scherzer’s teachings of user
`contribution accounts.” APPLE-
`1028 (Cooperstock’s
`Supplemental Declaration), ¶62.
`“This combination does not
`involve Scherzer’s optional
`account acceptability and
`associated tracking.” Reply, 17.
`
`13
`
`
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`The Combination is Without Meaningful Limits
`Cooperstock Depo Tr. (KOSS-2025, Nov. 5, 2021), 74-75
`
`14
`
`
`
`Consequences of the Combination
`
`Pet., 31
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`• Network access is provided via
`Scherzer’s system to unrecognized
`device 240.
`• But, how would the system know
`device 240 is commonly-owned (i.e.
`has a MAC address associated with
`the same user of device 220)? Sur-
`Reply, p. 22.
`• User contribution accounts and
`associated functionality are excluded;
`network access by device 240 is not
`tracked or attributed to a user
`contribution account.
`• No meaningful limits to further
`dissemination of access credentials to
`other devices / other users.
`
`15
`
`
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`•
`
`Deleterious Consequences of the Combination
`• Unrecognized device 240 can freeload on WAPs of registered users without usage
`being tracked or attributed to a user contribution account.
`Incentive for registering device 240 with Scherzer’s system is destroyed. (KOSS-
`2026 (McAlexander’s Declaration); ¶59)
`• Disincentive not addressed by Petitioner. POR, 9.
`• Cooperstock agreed registration is “not necessary in any scenario.” KOSS-2025
`(November 5, 2021 Deposition Transcript), 44.
`• No limits to further dissemination
`•
`“[R]esults in a snowball effect in which device upon device can freely circulate
`Scherzer’s access credentials outside the confines of Scherzer’s community. ” POR, 16,
`fn. 2.
`•
`“[O]pens a Pandora’s box….” Sur-Reply, p. 8.
`• Registered users lose control of their wireless access points. POR, 38-39 (citing
`KOSS-2026; ¶59)
`• Registered users may be crowded out of their own network. Id.
`
`16
`
`
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`Second Example Opens a Pandora’s Box To
`Dissemination and Use of Scherzer’s Access
`Credentials
`• Device 240 (tablet) does not have Scherzer software
`client
`• Device 240 is not recognized by Scherzer’s server 116
`• Because combination is without meaningful limits
`(only longevity of devices), the device 220
`(smartphone) and device 240 can further disseminate
`access credentials to other devices and other users.
`POR, 16, fn. 2 (citing KOSS-2026, ¶46); Sur-Reply, 8-9.
`McAlexander Dec. (KOSS-2026), ¶46
`
`Pet., 31
`
`17
`
`
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`Combination Ignores Teachings in
`Scherzer and Subramaniam
`• Undermines intent of Scherzer—collaboration between
`registered users. Sur-Reply, 40 (citing KOSS-2026 (McAlexander’s
`Declaration),¶¶ 42. 43, 65).
`• Collaboration between registered users is foundation of Scherzer’s
`system. KOSS-2026, ¶42.
`• User contribution accounts provide a way to track usage. POR, 19-
`21.
`• Tracking ensures unrecognized devices do not obtain and use
`Scherzer’s access credentials. Id.
`• Ignores Subramaniam’s teachings of confidential nature of access
`credentials. Sur-Reply, 40-41 (citing APPLE-1005 (Subramaniam);
`¶¶[0004]-[0005]).
`
`18
`
`
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`Collaboration Between Registered Users is
`Foundation of Scherzer’s System
`Scherzer, APPLE-1004, ¶[0015]
`
`Scherzer, APPLE-1004, ¶[0005]
`
`Scherzer’s system necessarily involves
`multiple users. Sur-Reply, p. 21.
`
`19
`
`
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`APPLE-1004, FIG. 1
`
`Scherzer’s Registered Users
`“exchange” Network
`Access
`APPLE-1004
`(Scherzer), ¶[0020]
`
`20
`
`
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`APPLE-1004, ¶[0022]
`
`Scherzer’s User
`Contribution Account
`Provides “a way to track”
`Network Access
`
`APPLE-1004, ¶[0022]
`
`APPLE-1004 (Scherzer)
`
`21
`
`
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`KOSS-2026 (McAlexander’s
`Declaration), ¶¶42-43
`
`Scherzer’s User
`Contribution Account
`Functionality Is Not
`Optional
`
`•
`
`• Collaboration is foundation of
`Scherzer’s system
`• Dissemination of access credentials to
`unrecognized devices undermines the
`intent of Scherzer
`Successful implementation of
`Scherzer requires tracking/managing
`network access. KOSS-2026
`(McAlexander’s Declaration), ¶¶62-
`63.
`Incorporating Scherzer’s user
`contribution account functionality is
`not improper bodily incorporation.
`Sur-Reply, 16.
`
`•
`
`22
`
`
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Apple’s Three “Occasions” Describe Further
`Implementation Details for User Contribution
`Accounts
`APPLE-1004 (Scherzer), ¶¶ 15 & 16
`
`3
`
`None of these “occasions” show that
`user contribution accounts, in general,
`are an optional feature. Sur-Reply, 14-
`15.
`
`23
`
`1 2
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Scherzer Describes User Contribution Accounts
`Without Limitation To Only “Some Embodiments”
`
`APPLE-1004 (Scherzer), Abstract and ¶15
`
`Not prefaced with
`“in some embodiments”
`
`24
`
`
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`APPLE-1004 (Scherzer), Claims 1, 22,
`23, 24, 43, and 44
`
`Scherzer Describes User
`Contribution Accounts
`Without Limitation To Only
`“Some Embodiments”
`
`All SIX claims recite “user contribution
`account acceptability”
`
`25
`
`
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Exclusion of Scherzer’s User Contribution
`Account Functionality is Not Fair and
`Equitable to Registered Users
`
`APPLE-1028 (Cooperstock’s Supplemental
`Declaration), ¶18
`
`POSITA would not be motivated to modify Scherzer in a
`way that is unfair and inequitable to it registered users.
`Sur-Reply, 16.
`
`APPLE-1004 (Scherzer)
`
`26
`
`
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Subramaniam Teaches That Access Credentials
`are Confidential
`APPLE-1005, ¶¶[0004]-[0005]
`• Access credentials are “confidential
`information.” POR, 40-41 (quoting APPLE-1005
`(Scherzer), ¶¶ [0004]-[0005])
`• A POSITA would understand Scherzer’s access
`credentials should not be freely disseminated
`to unrecognized devices. POR, 41 (citing KOSS-
`2026 (McAlexander’s Declaration), ¶¶ 53, 65).
`• Cooperstock thrice refused to provide a
`definition of “confidential.” POR, 53-54.
`• “I haven’t been able to find a full definition as to
`what Subramaniam considers the entirety of
`confidential information.” KOSS-2025
`(November 5, 2021 Deposition Transcript),
`39:13-15
`• “And as such, I don’t believe that a definition
`here for how a POSITA would interpret
`confidential is useful.” Id. 40:13-16
`• “I don’t think it’s a term that requires me to
`provide you with a definition.” Id. 67:17-19
`
`Neither Petitioner’s Reply nor Cooperstock’s
`Supplemental Declaration addressed
`Subramaniam’s teachings on confidentiality
`27
`
`
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Combination Ignores a POSITA’s
`Understandings of Network Security
`
`• A POSITA’s knowledge of network security features is not in
`dispute. Sur-Reply, 2-3.
`• A POSITA’s knowledge of MAC address tracking and filtering is
`not in dispute. Id., 3-4.
`• A POSITA would not ignore network security considerations. Id.
`
`28
`
`
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`POSITA’s Knowledge of Network Security
`
`• A POSITA would use security
`features to mitigate risks to
`network security
`• Security Features
`•
`Safeguarding of access credentials
`by Scherzer’s software client
`“White list” authentication of
`devices by MAC address
`
`•
`
`KOSS-2026 (McAlexander’s Declaration), ¶¶ 60-61
`29
`
`
`
`A POSITA’s Knowledge of
`Security Features Is
`Unrebutted
`• Petitioner does not dispute a POSITA’s
`knowledge of security features. Sur-
`Reply, 3.
`• Petitioner argues Scherzer is silent
`regarding the implementation of
`security features. Reply, 4-5 (citing
`APPLE-1028, ¶24).
`• Scherzer’s silence is not evidence a
`POSITA would not know about /
`incorporate security features. Sur-
`Reply, 3.
`• Cooperstock confirmed a POSITA
`would be aware of security features
`like encryption. Id. (citing KOSS-2027
`(April 22, 2022 Deposition Transcript),
`39:3-8).
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`APPLE-1028 (Cooperstock’s
`Supplemental Declaration), ¶¶23-24
`
`30
`
`
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`A POSITA’s Knowledge of MAC Address Tracking /
`Filtering Is Corroborated
`KOSS-2025 (November 5, 2021
`Deposition Transcript), 49:6-12
`
`• Petitioner does not dispute a POSITA’s
`knowledge of the use of MAC addresses
`for tracking and filtering. Sur-Reply, 4.
`• Petitioner argues McAlexander’s testimony
`is uncorroborated. Reply, 9.
`• Scherzer corroborates McAlexander’s
`testimony. Sur-Reply, 3.
`• APPLE-1004 (Scherzer), ¶[0016] (explaining
`a MAC address provided during
`registration is an example of the “user’s
`identifier information”).
`• Cooperstock described tracking and
`filtering by MAC addresses as techniques
`available to a POSITA to track Scherzer’s
`users. Sur-Reply, p. 3 (citing KOSS-2025,
`49:8-12, 58:11-17).
`
`KOSS-2025, 58:11-17
`
`31
`
`
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`Combination Is Motivated by
`Hindsight
`
`• Evidence of hindsight has only increased post-institution. Sur-
`Reply, 23.
`• First Example is “classic hindsight.” Sur-Reply, 7.
`
`32
`
`
`
`Reply, 19
`
`Institution Decision, 23
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Evidence of Hindsight
`• Cooperstock used claims as roadmap to
`identify teachings in counsel-selected
`references that “address” the claims.
`KOSS-2025 (November 5, 2021 Deposition
`Transcript), 17:4.
`• Cooperstock combined Scherzer and
`Subramaniam before considering
`allegedly “predictable scenario.” Sur-
`Reply, 6-7 (citing APPLE-1028
`(Cooperstock’s Supplemental Declaration),
`¶57).
`• Petition never discussed “predictability”
`or “reasonable expectation of success”
`despite Petitioner’s statements otherwise.
`Sur-Reply, 23-25.
`• The Scherzer-Subramaniam combination
`is not a predictable solution merely
`because a POSITA would (allegedly) be
`motivated to improve the prior art. Sur-
`33
`Reply, 25.
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`First Example is “Classic Hindsight Reconstruction”
`• Device 220 has access information to WAP 210
`APPLE-1005, Figure 3
`• Device 220 can transmit access information to device
`240 via ad hoc connection 380
`• Subramaniam alone provides a solution; Scherzer is
`superfluous to connecting device 240 to WAP 210
`• No need to register device 220 with Scherzer’s system.
`• No need to upload access information for WAP 210 to
`Scherzer’s server.
`• Apple seemingly recognized defects in First Example
`and abandoned it in the Reply. Sur-Reply, p. 7.
`APPLE-1028 (Cooperstock’s
`Supplemental Declaration), ¶57
`
`34
`
`
`
`Dr. Cooperstock’s Testimony Should Be
`Afforded Little, If Any, Weight
`• Defects in Cooperstock’s testimony. POR, 49.
`• He admitted to not considering references in their entireties.
`• He failed to follow the Graham framework.
`• He mischaracterized allegedly “explicit” teachings in Scherzer.
`• He refused to answer questions about the relevant technology, his
`combination, and the teachings in the references.
`• Petitioner did not address these defects. Sur-Reply, 10.
`
`35
`
`
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Cooperstock Did Not Consider the References As a
`Whole and Did Not Follow the GrahamFramework
`• He ignored Scherzer’s tracking as being “not relevant” to his analysis. KOSS-
`2025 (November 5, 2022 Deposition Tr.), 38.
`• He did not know if Scherzer and Subramaniam were the closest prior art to
`claimed inventions under the Graham framework. Id. at 12.
`• He testified “differences between Scherzer and Claim 1” were not “relevant”
`to his analysis. Id. at 14.
`KOSS-2025, 12
`KOSS-2025, 38
`
`KOSS-2025, 14
`
`36
`
`
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Cooperstock Mischaracterized Allegedly
`“Explicit” Teachings in Scherzer
`KOSS-2025 (Cooperstock Depo Tr.), 30-31
`• Cooperstock relies on mention of a
`“temporary user contribution account”
`in Scherzer to conclude that Scherzer
`explicitly allows unrecognized devices to
`use Scherzer’s access points. POR, 34.
`• McAlexander’s testimony contradicted
`Cooperstock’s testimony. KOSS-2026
`(McAlexander’s Declaration), ¶57
`• Neither Cooperstock (in his
`Supplemental Declaration) nor Apple (in
`its Reply) attempted to rehabilitate
`Cooperstock’s mischaracterization. Sur-
`Reply, 11.
`APPLE-1004 (Scherzer), ¶[0016]
`
`37
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Cooperstock Refused to Answer Questions About
`Relevant Technology, the References, & the
`Combination
`• He was unwilling to settle whether devices
`2nd Cooperstock Depo. Tr., KOSS-2027, 30-31
`220 and 240 in his combination could be
`(responsive to question, “Could the combination
`owned by different users. Sur-Reply, 12
`of Scherzer and Subramaniam that you
`(citing KOSS-2027 (April 22, 2022 Deposition
`proposed be used with multiple users?)
`Transcript), 30-32).
`• He repeatedly refused to provide a definition
`of “confidential.” POR, 53-54 (citing KOSS-
`2025 (November 5, 2021 Deposition
`Transcript), 39:13-15, 40:13-16, and 67:17-
`19).
`2nd Cooperstock Depo. Tr., KOSS-2027, 32
`
`38
`
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Commercial Success
`
`• Patent Owner established a nexus between the claimed invention
`and Petitioner’s HomePods. POR, 59-60.
`• Patent Owned identified “unique characteristics” of the claimed
`invention. Sur-Reply, 27 (citing POR, 4, 6).
`• Petitioner did not rebut Patent Owner’s evidence of nexus. Id.,
`27-28 (citing APPLE-1031 (“Apple HomePod Review: Locked In”
`article), 11-12, 15).
`
`39
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Patent Owner Established a Nexus
`• The proponent of the secondary considerations evidence
`(Patent Owner) has the initial burden of establishing
`nexus. Reply, 21 (citing Brown & Williamson Tobacco
`Corp. v. Philip Morris Inc., 229 F.3d 1120, 1130 (Fed. Cir.
`2000)).
`• Patent Owner showed the HomePods, when combined
`with iPhone and iCloud Keychain server (and WAP for
`claim 1), possess all elements of the independent claims.
`POR, 59-60.
`• Corroborated by claim chart in APPLE-1016
`• APPLE-1031, an article titled “Apple HomePod Review:
`Locked In” refers to “Apple’s ecosystem lock-in” and the
`HomePod being “tied more closely to a single iPhone and
`iCloud account than any other smart speaker.”
`• The burden shifted to the Petitioner to rebut Patent
`Owner’s evidence of nexus. Sur-Reply, 27, (citing Demaco
`Corp. v. F. Von Langsdorff Lic. Ltd., 851 F.2d 1387, 1392
`(Fed. Cir. 1988)).
`
`40
`
`
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Patent Owner Identified Unique Characteristics
`
`• Patent Owner can prove nexus—even when the product and
`claims are not coextensive—by showing that the secondary
`considerations are the “‘direct result of the unique
`characteristics of the claimed invention.’” Fox Factory, Inc. v.
`SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (quoting In re
`Huang, 100 F.3d 135, 140 (Fed. Cir. 1996)).
`• Patent Owner identified “unique characteristics.” Sur-Reply, 27.
`•
`Set-up features enable a user to configure the electronic device
`with an infrastructure wireless network “out of the box.” POR, 4
`(quoting APPLE-1001 (’451 Patent), 2:51-58).
`Electronic device can access “the entire Apple Music catalog and
`latest Siri intelligence” as a smart wireless speaker. POR, 60
`(quoting KOSS-2022 (“HomePod arrives February 9” article), 2).
`
`•
`
`41
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Petitioner Did Not Rebut Nexus
`• Petitioner’s only rebuttal evidence is unclaimed
`“beamforming” tweeters that (allegedly) materially
`impact functionality. Reply, 30 (citing APPLE-1031, 7).
`• APPLE-1031 actually proves otherwise. Sur-Reply, 27-28
`(citing APPLE-1031, 11-12, 15).
`APPLE-1031 (“Apple HomePod Review:
`Locked In” article), 11-12, 15
`
`42
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`APPENDIX
`
`• ‘451 Patent
`• Teaching Away Not Required
`• Scherzer and Subramaniam are Disparate Systems
`• Patent Owner’s Alternatives to the Scherzer-Subramaniam
`Combination are Preferable
`• The Evolution of Petitioner’s Scherzer-Subramaniam
`Combination
`
`43
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`The ’451 Patent
`
`APPLE-1001, 5:54-60
`
`44
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Petitioner’s Teaching Away
`Counterarguments are Misdirected
`• Mere silence does not amount to a teaching away. Reply, 2.
`• A “formal teaching away” is not required.
`•
`Rembrandt Wireless Tech., LP v. Samsung Elecs. Co. Ltd., 853 F.3d 1370, 1379-
`80 (Fed. Cir. 2017).
`Petitioner did not cite to any case law indicating a teaching away is required
`to refute obviousness of a combination.
`See Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350,
`1360 (Fed. Cir. 2017) (no motivation to make combination even without
`explicit teaching away).
`
`•
`
`•
`
`45
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Scherzer and Subramaniam are
`Disparate Systems
`KOSS-2026 (McAlexander’s
`Declaration), ¶70
`
`• Subramaniam’s configuration
`techniques are for an “average
`home user” configuring “a
`wireless home network.” POR, 41-
`42 (quoting APPLE-1005, ¶[0006])
`• Though Subramaniam’s teachings
`could be applied beyond at-home
`networks, different security /
`tracking concerns are implicated.
`Id.
`• A POSITA would not combine two
`disparate systems. KOSS-2026, ¶70
`
`46
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Patent Owner’s Alternatives to the Scherzer-
`Subramaniam Combination Are Preferable
`• Register both devices with Scherzer’s system; both devices obtain access
`credentials directly from Scherzer’s server. POR, 43.
`• Reasonable to a POSITA in view of bandwidth limitations and network
`security considerations. Sur-Reply, 18 (citing KOSS-2026, ¶59).
`•
`POSITA would not expect free, unlimited network access at all times and in all
`locations.
`• Does not violate Scherzer’s user contribution account functionality.
`• Minimal preplanning efforts; user would know to plan ahead because, per
`Cooperstock:
`
`APPLE-1028
`(Cooperstock’s
`Supplemental
`Declaration),
`¶59
`
`• Download Scherzer’s software client on tablet, register tablet with
`Scherzer’s system, and obtain access credentials in advance. Sur-Reply, 19.
`
`47
`
`
`
`The Evolution of Petitioner’s
`Combination
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Burden of establishing a prima facie
`case of obviousness “remains on the
`petitioner throughout the
`proceeding.” FanDuel, Inc. v.
`Interactive Games LLC, 966 F.3d 1334
`(Fed. Cir. 2020).
`
`Petitioner’s
`Petition
`• Common
`ownership of
`“key devices”
`not described
`with
`particularity.
`• Only two
`examples
`contemplated
`commonly-
`owned devices.
`• Sur-Reply, 20
`
`Patent Owner’s
`Response
`•
`Identified
`problems with
`Combination,
`including
`further
`dissemination
`to
`unrecognized
`devices and
`unregistered
`users.
`
`Petitioner’s Reply
`• Narrowed
`Combination
`to require
`common
`ownership by
`a registered
`user.
`• No
`explanation
`for limit.
`• Sur-Reply, 20-
`21 (citing
`Reply, 4, 10).
`
`Cooperstock’s April
`22, 2022 Deposition
`• Unwilling to
`confirm whether
`devices in
`Combination can
`be owned by
`different users.
`• Sur-Reply, 12
`(citing KOSS-
`2027 (April 22,
`2022 Deposition
`Transcript), 30-
`32)
`
`Today
`
`48
`
`
`
`The Evolution of Petitioner’s
`Combination
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Burden of establishing a prima facie
`case of obviousness “remains on the
`petitioner throughout the
`proceeding.” FanDuel, Inc. v.
`Interactive Games LLC, 966 F.3d 1334
`(Fed. Cir. 2020).
`
`Petitioner’s Reply
`
`Cooperstock’s April
`Petitioner’s
`Patent Owner’s
`22, 2022 Deposition
`Petition
`Response
`• Petitioner did not explain how or why a POSITA would limit the Combination
`when neither Scherzer nor Subramaniam are limited in this way.
`• Scherzer’s collaborative system is the opposite of a single-user system.
`Sur-Reply, 21 (citing KOSS-2026 (McAlexander’s Declaration), ¶38).
`• Subramaniam does not impose ownership limitation because its
`teachings “deal with devices rather than concern for users”. KOSS-
`2027 (Cooperstock’s April 22, 2022 Deposition Transcript), 16-17.
`• Ownership limitation is inconsistent with Petitioner’s “no-limits” position on
`Scherzer. Sur-Reply, 22.
`• Without user contribution accounts and associated functionality, how would
`the combination know which devices are commonly owned? Sur-Reply, 22-
`23.
`
`Today
`
`49
`
`
`
`The Evolution of Petitioner’s
`Combination
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Burden of establishing a prima facie
`case of obviousness “remains on the
`petitioner throughout the
`proceeding.” FanDuel, Inc. v.
`Interactive Games LLC, 966 F.3d 1334
`(Fed. Cir. 2020).
`
`Petitioner’s
`Petition
`
`Patent Owner’s
`Response
`
`Petitioner’s Reply Cooperstock’s April
`22, 2022 Deposition
`
`Today
`
`Cooperstock was unwilling to confirm
`whether devices in combination can be
`owned by different users. Sur-Reply, 12.
`
`KOSS-2027, 30-31 (responsive to question, “Could
`the combination of Scherzer and Subramaniam
`that you proposed be used with multiple users?)
`
`KOSS-2027 (April 22, 2022
`Deposition Transcript), 32
`
`50
`
`
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