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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`KOSS CORPORATION,
`Patent Owner.
`
`_____________________
`Case IPR2021-00600
`U.S. Patent No. 10,298,451
`_____________________
`
`
`
`JOINT MOTION TO TERMINATE
`
`
`
`
`
`Case IPR2021-00600
`
`Pursuant to 35 U.S.C. § 327(a) and 37 C.F.R. § 42.72, Apple Inc.
`
`(“Petitioner”) and Koss Corporation (“Patent Owner”) jointly move for termination
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`of the inter partes review (“IPR”) of U.S. Patent No. 10,298,451 (“the ’451
`
`Patent), Case No. IPR2021-00600, with the United States Patent and Trademark
`
`Office. This Joint Motion was authorized by the Board pursuant to its email dated
`
`July 27, 2022. The parties have settled their dispute, and have reached agreement
`
`to terminate this IPR. The Settlement Agreement has been made in writing and
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`was executed by Petitioner and Patent Owner on July 23, 2022. A true copy of the
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`Settlement Agreement in accordance with 35 U.S.C. § 327(b) and 37 C.F.R.
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`§ 42.74(b) is being submitted concurrently herewith as Exhibit 2030. There are no
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`collateral agreements or understandings made in connection with, or in
`
`contemplation of, the termination of this IPR. Submitted concurrently herewith is a
`
`request by Petitioner and Patent Owner that the Settlement Agreement be treated as
`
`business confidential information, be kept separate from the file of the involved
`
`patents, and be made available only to Federal Government agencies on written
`
`request, or to any person on a showing of good cause pursuant to 35 U.S.C.
`
`§ 327(b) and 37 C.F.R. § 42.74(c).
`
`Patent Owner alleged that Petitioner infringed the ’451 Patent in a lawsuit
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`captioned Koss Corp. v. Apple Inc., Case No. 6:20-cv-00665-ADA (consolidated
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`with Apple Inc. v. Koss Corp., 6:21-cv-00495-ADA) before the United States
`
`
`505963344.2
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`- 1 -
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`
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`District Court for the Western District of Texas, Waco Division. According to the
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`Case IPR2021-00600
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`court’s Order of Dismissal, “all claims for relief asserted against APPLE INC. by
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`KOSS CORPORATION herein are dismissed, with prejudice, and all
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`claims/counterclaims for relief against KOSS CORPORATION by APPLE INC.
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`are dismissed without prejudice.” D.I. 304 (W.D. Tex. July 23, 2022). The ’451
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`Patent is involved in the following currently pending matter involving the parties:
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`Apple Inc. v. Koss Corp., IPR2021-00255 (PTAB) (final written decision issued
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`May 31, 2022; notice of appeal due August 2, 2022). There are no other litigations
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`or proceedings involving the ’451 Patent.
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`Despite the fact that the Oral Hearing for this IPR was held June 1, 2022,
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`termination is appropriate in view of the foregoing. See Clio USA, Inc. v. Procter
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`and Gamble Co., IPR2013-00438, Paper 54 (PTAB Oct. 31, 2014) (termination
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`after oral argument); Petroleum Geo-Services, Inc. v. Westerngeco, LLC, IPR2016-
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`00407, Paper 29 (PTAB July 5, 2019) (terminated after oral hearing and five days
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`before statutory deadline for issuing a final written decision). For at least these
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`reasons, termination of this IPR is proper under 35 U.S.C. § 327(a) and 37 C.F.R.
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`§ 42.74(a). Should this joint motion to terminate be denied, Petitioner would not
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`continue to participate in this proceeding.
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`Dated: July 28, 2022
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`505963344.2
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`
`Respectfully submitted,
`/W. Karl Renner/
`W. Karl Renner (Reg. 41,265)
`Ryan Chowdhury (Reg. 74,466)
`- 2 -
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`Dated: July 28, 2022
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`Case IPR2021-00600
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`Seth Sproul, Pro Hac Vice
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel. 202-783-5070
`Email: IPR50095-0020IP2@fr.com
`Email: PTABInbound@fr.com
`
`Jennie Harjes (Reg. No. 77,687)
`Michael Pieja, Pro Hac Vice
`Doug Winnard, Pro Hac Vice
`Goldman Ismail Tomaselli Brennan & Baum LLP
`200 South Wacker Drive, 22nd Floor
`Chicago, IL 60606
`Tel. 312-881-5958
`Email: jhartes@goldmanismail.com
`Email: mpieja@goldmanismail.com
`Email: dwinnard@goldmanismail.com
`
`ATTORNEYS FOR PETITIONER
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`Respectfully submitted,
`/Mark G. Knedeisen/
`Mark G. Knedeisen (Reg. No. 42,747)
`Laurén Shuttleworth Murray (Reg. No. 67,462)
`Brian P. Bozzo (Reg. No. 77,190)
`K&L Gates LLP
`210 Sixth Avenue
`Pittsburgh, PA 15222
`Tel. 412-355-6342
`Email: mark.knedeisen@klgates.com
`Email: lauren.murray@klates.com
`Email: brian.bozzo@klgates.com
`
`ATTORNEYS FOR PATENT OWNER
`
`
`505963344.2
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`- 3 -
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`Case IPR2021-00600
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`CERTIFICATION OF SERVICE
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`I hereby certify that on July 28, 2022, I caused a true and correct copy of the
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`foregoing to be served on the following counsel for Petitioner by electronic mail to
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`the following email addresses:
`
`W. Karl Renner
`Ryan Chowdhury
`Seth Sproul
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Email: IPR50095-0020IP2@fr.com
`Email: PTABInbound@fr.com
`
`
`Jennie Hartjes
`Michael Pieja
`Doug Winnard
`Goldman Ismail Tomaselli Brennan &
`Baum LLP
`200 South Wacker Drive, 22nd Floor
`Chicago, IL 60606
`Tel: 312-881-5958
`Email: jhartjes@goldmanismail.com
`Email: mpieja@goldmanismail.com
`Email: dwinnard@goldmanismail.com
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`
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`By:
`
`
`
`
`/Mark G. Knedeisen/
`Mark G. Knedeisen (Reg. No. 42,747)
`K&L Gates Center, 210 Sixth Avenue
`Pittsburgh, Pennsylvania 15222
`Tel.: (412) 355-6342
`mark.knedeisen@klgates.com
`
`Counsel for Patent Owner
`
`
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`
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`505963344.2
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`
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