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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: IPR2021-00600
`U.S. PATENT NO. 10,298,451
`_____________________
`
`
`PATENT OWNER’S MOTION FOR ADDITIONAL DISCOVERY
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`IPR2021-00600
`Motion for Additional Discovery
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`TABLE OF CONTENTS
`
`I.
`STATEMENT OF THE PRECISE RELIEF REQUESTED .......................... 1
`STATEMENT OF MATERIAL FACTS ........................................................ 3
`II.
`III. APPLICABLE LEGAL PRINCIPLES ........................................................... 6
`IV. THE REQUESTED ADDITIONAL DISCOVERY SATISFIES THE
`“INTERESTS OF JUSTICE” STANDARDS ................................................. 8
`A.
`The Requested Discovery is Based on More than a Possibility and
`Mere Allegation ..................................................................................... 8
`1.
`Publicly Available Evidence Indicate that the Home Pod
`Products are a Commercial Success ........................................... 9
`There is a Presumed Nexus Between the HomePod Products
`and the Challenged Claims ....................................................... 10
`The Requested Discovery Does Not Seek Petitioner’s Litigation
`Positions or Their Underlying Basis ................................................... 13
`Patent Owner Cannot Generate Equivalent Information by Other
`Means .................................................................................................. 14
`The Discovery Requests are Easily Understandable ........................... 14
`The Discovery Requests are Narrowly Tailored and Not
`Burdensome ......................................................................................... 14
`CONCLUSION .............................................................................................. 15
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`2.
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`B.
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`C.
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`D.
`E.
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`V.
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`i
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`IPR2021-00600
`Motion for Additional Discovery
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`TABLE OF AUTHORITIES
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` Page(s)
`
`Cases
`In re Applied Materials, Inc.,
`692 F.3d 1289 (Fed. Cir. 2012) .......................................................................... 10
`Demaco Corp. v. F. Von Langsdorff Licensing Ltd.,
`851 F.2d 1387 (Fed. Cir. 1998) ...................................................................... 7, 11
`Ecolochem, Inc. v. S. Cal. Edison Co.,
`227 F.3d 1361 (Fed. Cir. 2000) ............................................................................ 7
`Fox Factory, Inc. v. SRAM, LLC,
`994 F.3d 1366 (Fed. Cir. 2019) ............................................................................ 8
`Garmin Int'l, Inc. v. Cuozzo Speed Techs. LLC,
`IPR2012-00001, Paper 26 (PTAB Mar. 5, 2013) ........................................passim
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) .................................................................................................. 6
`In re Huang,
`100 F.3d 135 (Fed. Cir. 1996) ........................................................................ 7, 10
`Kingston Tech. Co., Inc. v. CATR Co., Ltd.,
`IPR2015-00559, Paper 18, 2-7 (PTAB June 10, 2015) ........................................ 2
`Merck & Co., Inc. v. Teva Pharm. USA, Inc.,
`395 F.3d 1364 (Fed. Cir. 2005) ...................................................................... 6, 13
`Microsoft Corp. v. Proxyconn, Inc.,
`IPR2012-00026 and IPR20213-00109, Paper 32 (PTAB Mar. 8,
`2013) ..................................................................................................................... 8
`Ormco Corp. v. Align Tech., Inc.,
`463 F.3d 1299 (Fed. Cir. 2006) ............................................................................ 7
`
`ii
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`IPR2021-00600
`Motion for Additional Discovery
`
`Pentec, Inc. v. Graphic Controls Corp.,
`776 F.2d 309 (Fed. Cir. 1985) .............................................................................. 7
`SightSound Techs., LLC v. Apple Inc.,
`809 F.3d 1307 (Fed. Cir. 2015) ............................................................................ 7
`Varian Med. Sys., Inc. v. William Beaumont Hospital,
`IPR2016-00162, Paper 69 (PTAB May 4, 2017) ................................................. 2
`Statutes
`35 U.S.C. § 103 .......................................................................................................... 6
`35 U.S.C. § 316(a)(5) ................................................................................................. 6
`Other Authorities
`37 C.F.R. § 42.51(b)(2) .......................................................................................... 1, 6
`37 C.F.R. § 42.52(a)(2) .............................................................................................. 1
`
`
`
`iii
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`IPR2021-00600
`Motion for Additional Discovery
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`EXHIBIT LISTING
`
`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 Order Denying Defendant’s Motion to Transfer, Kerr Machine
`Co. v. Vulcan Industrial Holdings, et al., Case 6:20-cv-00200-
`ADA, Dkt. 76 (W.D. Tex. April 7, 2021)
`
`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
`
`iv
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`IPR2021-00600
`Motion for Additional Discovery
`
`Description
`Exhibit
`KOSS-2012 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)
`
`KOSS-2013 Order, In re Apple, Inc., Case No. 21-147, D.I. 25 (Fed. Cir.
`Aug. 4, 2021)
`
`KOSS-2014 Patent Owner’s Request For Additional Discovery
`
`KOSS-2015
`
`“Apple introduces HomePod mini: A powerful smart speaker
`with amazing sound,” Apple Newsroom, Oct. 20, 2020
`(www.apple.com/newsroom/2020/10/apple-introduces-
`homepod-mini-a-powerful-smart-speaker-with-amazing-sound/)
`(last accessed Sept. 9, 2021)
`
`KOSS-2016
`
`“HomePod reinvents music in the home,” Apple Newsroom,
`Jun. 5, 2017 (www.apple.com/newsroom/2017/06/homepod-
`reinvents-music-in-the-home/) (last accessed Sept. 9, 2021)
`
`KOSS-2017 D. Curry, “Apple Statistics (2021),” Business of Apps, Aug. 16,
`2021 (www.businessofapps.com/data/apple-statistics/) (last
`accessed August 18, 2021)
`
`KOSS-2018 Apple Inc., Form 10-K, for fiscal year ended September 26,
`2020
`
`KOSS-2019 C. Gartenberg, “Apple drops HomePod price down to $299,”
`The Verge, Apr. 4, 2019
`(www.theverge.com/2019/4/4/18295084/apple-homepod-price-
`cut-299-smart-speaker) (last accessed Sept. 16, 2021)
`
`KOSS-2020 A. King, “HomePod Sales Grow 180% After HomePod Mini
`Launch,” Digital Music News, Jul. 30, 2021
`(www.digitalmusicnews.com/2021/07/30/homepod-sales-2021/)
`(last accessed Sept. 9, 2021)
`
`v
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`IPR2021-00600
`Motion for Additional Discovery
`
`Description
`Exhibit
`KOSS-2021 G. Rambo, “HomePod set up similar to AirPods, requires
`iCloud Keychain & two-factor auth,” Jan. 24, 2018
`(9to5mac.com/2018/01/24/homepod-setup-process/) (last
`accessed September 16, 2021)
`
`KOSS-2022
`
`“HomePod arrives February 9,” Apple Newsroom, Jan. 23, 2018
`(www.apple.com/newsroom/2018/01/homepod-arrives-
`february-9-available-to-order-this-friday/) (last accessed Sept.
`16, 2021)
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`KOSS-2023 Sept/Oct 2021 Email chain with Board re filing Motion
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`vi
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`IPR2021-00600
`Motion for Additional Discovery
`
`Patent Owner, Koss Corporation, submits this Motion for Additional
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`Discovery under 37 C.F.R. §§ 42.51(b)(2) and 42.52(a)(2). The Board authorized
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`Patent Owner to file this motion on September 9, 2021.1
`
`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`The
`requested discovery
`seeks
`information concerning
`
`secondary
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`considerations of nonobviousness, namely the commercial success of Petitioner’s
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`HomePods and HomePod Minis smart speakers (collectively “HomePod Products”),
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`which embody most of the Challenged Claims. APPLE-1016, 488-523. The
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`specific discovery sought is limited to summary level sales from inception of the
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`HomePod Products, the first of which (the original HomePod) was released in
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`February 2018. KOSS-2022. Specifically, Patent Owner seeks only “[s]ales
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`revenue and quantity of units sold, by calendar quarter, for the Apple HomePods and
`
`HomePod Minis since the commercial introduction of those products.” KOSS-2014.
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`The interest of justice favors allowing the requested discovery. Garmin Int'l,
`
`Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 26 (PTAB Mar. 5, 2013)
`
`
`1 Patent Owner attempted to file this motion on September 17, 2021 but experienced
`
`problems. On October 6, 2021, the Board authorized Patent Owner to refile the
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`identical motion “with the applicable deadlines as if the motions were filed timely.”
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`KOSS-2023.
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`- 1 -
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`(precedential). The requested discovery is limited and narrow in scope and seeks
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`IPR2021-00600
`Motion for Additional Discovery
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`specific information that is undeniably relevant and useful to refuting Petitioner’s
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`obviousness challenges. See Kingston Tech. Co., Inc. v. CATR Co., Ltd., IPR2015-
`
`00559, Paper 18, 2-7 (PTAB June 10, 2015) (granting additional discovery limited
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`to narrow categories of financial information concerning one product). Indeed, the
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`Board has found that evidence of commercial success may be highly probative of
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`nonobviousness. See Varian Med. Sys., Inc. v. William Beaumont Hospital,
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`IPR2016-00162, Paper 69, 30-36 (PTAB May 4, 2017) (“Notwithstanding what the
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`teachings of the prior art would have suggested to one of ordinary skill in the art at
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`the time of the invention, the totality of the evidence submitted, including objective
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`evidence of nonobviousness, may lead to a conclusion that the challenged claims
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`would not have been obvious to one of ordinary skill in the art.”). While the
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`discovery Patent Owner seeks is uniquely in Petitioner’s possession, publicly
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`available information provides more than a threshold showing that Petitioner’s
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`HomePod Products have been commercially successful. Public information
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`likewise demonstrates that the HomePod Products embody many of the Challenged
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`Claims.
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`Accordingly, Patent Owner’s motion for additional discovery should be
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`granted. Patent Owner is willing to enter into an appropriate protective order to the
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`- 2 -
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`extent necessary to protect Petitioner’s confidential information.
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`IPR2021-00600
`Motion for Additional Discovery
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`II.
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`STATEMENT OF MATERIAL FACTS
`1.
`On July 22, 2020, Patent Owner filed a civil action in the U.S. District
`
`Court for the Western District of Texas, Case No. 6:20-cv-00665-ADA, against
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`Petitioner alleging infringement of, among other things, U.S. Patent 10,298,451
`
`(“’451 Patent”). KOSS-2001, 6. Other matters involving the ’451 Patent are
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`described at Paper 7 (Patent Owner Preliminary Response) at 6-7 and Paper 9
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`(Institution Decision) at 7.
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`2.
`
`Petitioner filed its petition for inter partes review (IPR) on March 7,
`
`2021, challenging claims 1-21 (the “Challenged Claims”). Pet. at 2. Of these, claims
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`1 and 18 are independent claims. APPLE-1001, cols. 8-10. The Board instituted the
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`trial on September 1, 2021. Paper 9.
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`3.
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`Petitioner released its HomePod smart speakers in February 2018.
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`KOSS-2022. The initial sales price was $349 USD. Id., 11. In 2019, the price was
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`dropped to $299 USD. KOSS-2019. Petitioner released the HomePod Minis in
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`November 2020 for $99 USD. KOSS-2015, 13. The HomePod Products feature
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`“[e]asy setup,” such that a user needs only “hold an iPhone next to HomePod and
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`it’s ready to start playing music in seconds.” KOSS-2022, 5.
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`4.
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`Public sources show that Petitioner sold: 4.2 million HomePods in
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`2018; 5.9 million HomePods in 2019; 5.2 million HomePods in 2020; and 4.6
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`- 3 -
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`million HomePod Minis in 2020. KOSS-2017, 15. That amounts to 15.3 million
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`IPR2021-00600
`Motion for Additional Discovery
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`HomePods and 4.6 million HomePod Minis from 2018 to (and including) 2020.
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`Assuming $299 per HomePod and $99 per HomePod Mini, that amounts to over $5
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`billion USD in revenue from 2018 to (and including) 2020 in sales of the HomePod
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`Products. Petitioner’s share of the smart speaker market is also increasing. KOSS-
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`2020, 2.
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`5.
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` Petitioner does not release sales information for the HomePod
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`Products. Instead, its SEC filings include sales figures for a broader category of
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`products (“Wearables, Home and Accessories”). KOSS-2018, 24.
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`6.
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`The Challenged Claims have a priority date of March 15, 2013.
`
`APPLE-1001, 2 (filing date of U.S. Patent Application No. 13/832,719). Thus, the
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`HomePods were released more than five years after the priority date of the ’451
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`Patent.
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`7.
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`Claim 1 is directed to a system that comprises a wireless access point,
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`an electronic device, one or more host servers, and a mobile computer device. The
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`mobile computer device is in communication with the electronic device via an ad
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`hoc wireless communication link. The one or more host servers “store credential
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`data for an infrastructure wireless network provided by the wireless access point.”
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`The mobile computer device is “for transmitting to the electronic device, wirelessly
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`via the ad hoc wireless communication link between the electronic device and the
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`IPR2021-00600
`Motion for Additional Discovery
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`mobile computer device, the credential data for the infrastructure wireless network
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`stored by the one or more host servers.” APPLE-1001, 8:30-53. Independent claim
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`18 is similar to claim 1, but claim 18 does not affirmatively recite the “wireless
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`access point” as a claim element. Id., 10:1-24.
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`8.
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`Both the HomePods and the HomePod Minis possess all of the elements
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`of the “electronic device” of independent claims 1 and 18 of the ’451 Patent.
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`APPLE-1016, 488-523. Further, the HomePod Products are designed to operate in
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`conjunction with a wireless access point (for connecting to a WiFi network), a
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`mobile computer device (e.g., an iPhone), and one or more host servers (e.g.,
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`Petitioner’s iCloud Keychain servers). APPLE-1016, 488-495; KOSS-2016, 4
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`(“simply hold an iPhone next to HomePod and it’s ready to start playing music”).
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`In fact, when used in conjunction with a user’s iPhone, a WiFi network and iCloud
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`Keychain, the combination possesses all the elements of claims 1-7, 9-14, and 16-
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`20 of the ’451 Patent. Id., 488-523.
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`9.
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`iCloud Keychain is a service that remembers for a user/subscriber,
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`among other things, Wi-Fi passwords for the user/subscriber. APPLE-1016, 491.
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`Set up of the HomePod Products “requires iCloud Keychain” so that “[s]ettings such
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`as the iCloud account itself and Wi-Fi networks are automatically transferred to the
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`- 5 -
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`
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`HomePod ….” KOSS-2021, 1-2.
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`IPR2021-00600
`Motion for Additional Discovery
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`10. The HomePod Products compact “the entire Apple Music catalog and
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`the latest Siri intelligence, in a simple, beautiful design.” KOSS-2022, 4.
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`III. APPLICABLE LEGAL PRINCIPLES
`Additional discovery must be “necessary in the interest of justice.” 35 U.S.C.
`
`§ 316(a)(5); 37 C.F.R. § 42.51(b)(2). In determining whether additional discovery
`
`in an inter partes review proceeding is necessary in the interest of justice, the Board
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`considers the following factors: (1) the request is based on more than a mere
`
`possibility of finding something useful; (2) the request does not seek the litigation
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`positions of the other party; (3) the information is not reasonably available through
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`other means; (4) the request is easily understandable; and (5) the request is not overly
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`burdensome to answer (collectively, “Garmin Factors”). Garmin, Paper 26 at 6-7.
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`Patent Owner’s request for additional discovery seeks evidence for proving
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`commercial success of the Challenged Claims, which is relevant for assessing
`
`obviousness of the Challenged Claims under 35 U.S.C. § 103. Graham v. John
`
`Deere Co., 383 U.S. 1, 17-18 (1966). “Commercial success is relevant because the
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`law presumes an idea would successfully have been brought to market sooner, in
`
`response to market forces, had the idea been obvious to persons skilled in the art.”
`
`Merck & Co., Inc. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1376 (Fed. Cir. 2005).
`
`Evidence of objective indicia of nonobviousness, such as commercial success, must
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`- 6 -
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`
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`be considered if present. Pentec, Inc. v. Graphic Controls Corp., 776 F.2d 309, 315
`
`IPR2021-00600
`Motion for Additional Discovery
`
`(Fed. Cir. 1985).
`
`A patentee can show commercial success of a claimed invention by showing
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`significant sales (including by the accused infringer) in a relevant market. See
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`Ecolochem, Inc. v. S. Cal. Edison Co., 227 F.3d 1361, 1377 (Fed. Cir. 2000).
`
`Evidence of commercial success is significant where there is a nexus between the
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`claimed invention and the commercial success. Ormco Corp. v. Align Tech., Inc.,
`
`463 F.3d 1299, 1311-12 (Fed. Cir. 2006). “In order to establish a proper nexus, the
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`patent owner must offer proof that the sales were a direct result of the unique
`
`characteristics of the claimed invention -- as opposed to other economic and
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`commercial factors unrelated to the quality of the patented subject matter.” In re
`
`Huang, 100 F.3d 135, 140 (Fed. Cir. 1996). Nevertheless, Patent Owner is entitled
`
`to a rebuttable presumption of nexus upon a showing that the commercially
`
`successful product “is the invention disclosed and claimed.” Demaco Corp. v. F.
`
`Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1998); see also
`
`SightSound Techs., LLC v. Apple Inc., 809 F.3d 1307, 1319 (Fed. Cir. 2015) (“If a
`
`product both embodies the claimed features and is coextensive with the claims at
`
`issue,” a nexus between the evidence of commercial success and the claimed
`
`invention is presumed). Even where a presumption of a nexus is not appropriate,
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`- 7 -
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`patent owner “is still afforded an opportunity to prove nexus by showing that the
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`IPR2021-00600
`Motion for Additional Discovery
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`evidence of secondary considerations is the direct result of the unique characteristics
`
`of the claimed invention.” Fox Factory, Inc. v. SRAM, LLC, 994 F.3d 1366, 1373-
`
`74 (Fed. Cir. 2019).
`
`The interest of justice standard for granting additional discovery requires a
`
`showing of relevance by the party seeking the additional discovery before the request
`
`is granted. Microsoft Corp. v. Proxyconn, Inc., IPR2012-00026 and IPR2013-
`
`00109, Paper 32, 5 (PTAB Mar. 8, 2013). Conclusive evidence of nexus, however,
`
`is not required to grant a motion for additional discovery. Instead, “some showing
`
`of relevance is necessary.” Id.
`
`IV. THE REQUESTED ADDITIONAL DISCOVERY SATISFIES THE
`“INTERESTS OF JUSTICE” STANDARDS
`A. The Requested Discovery is Based on More than a Possibility and
`Mere Allegation
`The first Garmin factor considers whether there exists more than a “mere
`
`possibility” or a “mere allegation that something useful [to the proceeding] will be
`
`found.” Garmin, Paper 26 at 6. Here, there is more than a mere allegation that
`
`something useful will be found because publically available evidence shows that
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`Petitioner has exploited the Challenged Claims through sales of its HomePod
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`Products and that a nexus should be presumed between the HomePod Products and
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`the Challenged Claims.
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`- 8 -
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`IPR2021-00600
`Motion for Additional Discovery
`
`1.
`
`Publicly Available Evidence Indicate that the Home Pod
`Products are a Commercial Success
`Publically available evidence shows that Petitioner has exploited the
`
`Challenged Claims through sales of its HomePod Products. First, publically
`
`available information shows that HomePod Products have experienced significant
`
`sales. It is estimated that Petitioner sold 19.9 million HomePod Products from 2018-
`
`2020. KOSS-2017, 15. Upon its release, Petitioner sold the original HomePod for
`
`$349 USD. Thus, Petitioner generated approximately $1.1B USD of revenue on
`
`sales of the original HomePod in 2018 alone. Petitioner lowered the price of the
`
`original HomePod to $299 in the second quarter of 2019. KOSS-2019. Although
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`estimates for quarterly sales in 2019 are not currently available, Petitioner must have
`
`generated at least $1.7B USD of revenue on sales of the original HomePod in 2019,
`
`assuming each of the estimated 5.9 million units sold at the reduced price. At $299
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`USD per unit, it is estimated that Petitioner generated approximately $1.5B USD of
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`revenue on sales of the original HomePod in 2020.
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`The HomePod Mini has experienced even more commercial success,
`
`accounting for approximately 4.6 million units sold in 2020, in spite of a late release
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`in November of that year. In other words, the HomePod Mini generated
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`approximately $455M USD of revenue in just over a month. The successful
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`introduction of the lower-priced HomePod Mini also significantly increased
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`- 9 -
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`
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`Petitioner’s market share. KOSS-2020, 2. In total, it is estimated that Petitioner
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`IPR2021-00600
`Motion for Additional Discovery
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`sold nearly $5 billion of HomePod Products in three years with an increasing share
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`of the U.S. smart speaker market. As such, the publicly available evidence that the
`
`HomePod Products achieved commercial success is not limited to sales data alone,
`
`but is also based on an increase in market share. See e.g., In re Applied Materials,
`
`Inc., 692 F.3d 1289, 1300 (Fed. Cir. 2012); In re Huang, 100 F.3d 135, 140 (Fed.
`
`Cir. 1996).
`
`2.
`
`There is a Presumed Nexus Between the HomePod Products
`and the Challenged Claims
`There is also a clear nexus between the HomePod Products and the Challenged
`
`Claims. The HomePod Products are essentially the “electronic device” of claims 1
`
`and 18 and, together with the iPhone and iCloud Keychain server (and a wireless
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`access point in the case of claim 1), the HomePod Products are used in a system that
`
`possesses all the elements of independent claims 1 and 18 of the ’451 Patent.
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`APPLE-1016, 488-523. For example, the HomePod Products (e.g., the claimed
`
`“electronic device”) can receive wirelessly via a Bluetooth connection (e.g., the
`
`claimed “ad hoc wireless communication link”) between the HomePod Products
`
`(e.g., the claimed electronic device) and an iPhone (e.g., the claimed “mobile
`
`computer device”), credential data for a WiFi network (e.g., the claimed
`
`“infrastructure wireless network” provided by the wireless access point), where the
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`- 10 -
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`
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`credential data are stored by the iCloud Keychain servers (e.g., the claimed “one or
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`IPR2021-00600
`Motion for Additional Discovery
`
`more host servers”). Id.
`
`Although sales of the HomePod Products themselves do not include an
`
`iPhone, the iCloud Keychain servers or a wireless access point, the HomePod
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`Products are specifically designed and marketed to be used with such components.
`
`APPLE-1016, 488-523; KOSS-2022; KOSS-2015; KOSS-2021. Because Patent
`
`Owner is not basing its claims of commercial success for the Challenged Claims on
`
`sales of components (like the iPhone) other than the HomePods, sales of the
`
`HomePods are sufficient to demonstrate the commercial success of the Challenged
`
`Claims. See Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387,
`
`1392 (Fed. Cir. 1998) (“When the thing that is commercially successful is not
`
`coextensive with the patented invention … the patentee must show prima facie a
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`legally sufficient relationship between that which is patented and that which is
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`sold.”).
`
`Further, the HomePod Products need to practice claims 1 and 18 of the ’451
`
`Patent in order to achieve the functionality marketed by Petitioner for the HomePod
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`Products. Petitioner marketed the HomePod Products as providing customers with
`
`access to “the entire Apple Music catalog and the latest Siri intelligence, in a simple,
`
`beautiful design.” KOSS-2022, 4. However, the HomePod Products are only able
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`to provide consumers with access to “the entire Apple Music catalog and the latest
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`IPR2021-00600
`Motion for Additional Discovery
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`Siri intelligence, in a simple, beautiful design,” when the HomePod Products, by
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`practicing the Challenged Claims, enable users to configure them for connection to
`
`an infrastructure wireless (WiFi) network.
`
`The nexus is even more coextensive for certain dependent Challenged Claims.
`
`Claim 7 depends from claim 1 and recites that “the electronic device comprises
`
`acoustic speaker device.” The HomePod Products are acoustic speaker devices.
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`KOSS-2022; KOSS-2015. Claim 11 depends from claim 1 and further specifies
`
`(i) that “the mobile computer device comprises a smartphone” and (ii) that the
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`smartphone comprises a radio module for communicating wirelessly via the ad hoc
`
`wireless network with the electronic device. The HomePod Products are designed
`
`to be configured with an iPhone (which is an example of the claimed “smartphone”)
`
`via Bluetooth link (which is an example of the claims “ad hoc wireless network”).
`
`APPLE-1016, 503-504. Claims 9 and 102 recite “a remote network server” and
`
`specify that the electronic device (or the acoustic speaker device of claim 9) is for
`
`“connecting to the wireless access point, streaming audio content from the remote
`
`network server via the infrastructure wireless network and playing the audio content
`
`
`2 Claim 9 depends from claim 7 and claim 10 depends from claim 1.
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`streamed from the remote network server, such that the acoustic speaker device is
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`IPR2021-00600
`Motion for Additional Discovery
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`enabled to play audio streamed via the infrastructure wireless network.” Petitioner’s
`
`iTunes servers are an example of the “remote network server” and the HomePods
`
`have access to the iTtunes server to access “the entire Apple Music catalog ….”
`
`KOSS-2022, 4.
`
`Finally, the fact that Petitioner could introduce products five years after the
`
`priority date for the ’451 Patent and still reap extraordinary revenue from sales of
`
`those products is strong evidence of the nonobvious of the inventions claimed by the
`
`’451 Patent in 2013. The “law presumes an idea would successfully have been
`
`brought to market sooner, in response to market forces, had the idea been obvious to
`
`persons skilled in the art.” Merck, 395 F.3d at 1376.
`
`Thus, Patent Owner’s narrowly tailored discovery request is based on more
`
`than a possibility or mere allegation. The requested information is also material to
`
`assessing the nonobviousness of the Challenged Claims.
`
`B.
`
`The Requested Discovery Does Not Seek Petitioner’s Litigation
`Positions or Their Underlying Basis
`Garmin factor 2 provides that requesting an opposing party’s “litigation
`
`positions and the underlying basis for those positions is not necessary in the interest
`
`of justice.” Garmin, Paper 26 at 13. Patent Owner’s discovery requests narrowly
`
`seek only sales information and, hence, do not seek Petitioner’s underlying litigation
`
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`- 13 -
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`positions or bases for them.
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`IPR2021-00600
`Motion for Additional Discovery
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`C.
`
`Patent Owner Cannot Generate Equivalent Information by Other
`Means
`Garmin factor 3 relates to whether the requested documents are obtainable by
`
`Patent Owner through other means. Patent Owner cannot otherwise obtain this
`
`information because it is exclusively within the control of Petitioner. KOSS-2018,
`
`24. Patent Owner cannot generate or otherwise obtain Petitioner’s confidential sales
`
`information.
`
`D. The Discovery Requests are Easily Understandable
`Garmin factor 4 relates to whether the requested discovery is easily
`
`understandable.
`
` Here,
`
`the requested discovery’s
`
`instructions are easily
`
`understandable, and the requests are clearly limited to sale information for a limited
`
`number of specifically identified products for a limited, specified time period
`
`(namely, since release of the products, the first of which was in February 2018).
`
`To the extent the Board deems the instructions not easily understandable, it
`
`may modify or direct Patent Owner to modify them accordingly.
`
`E.
`
`The Discovery Requests are Narrowly Tailored and Not
`Burdensome
`Garmin factor 5 relates to the degree of burden the requests place on
`
`Petitioner. Here, the requested discovery is limited to one request, which is for the
`
`sales data for two related products (HomePods, and HomePods Mini), for a limited,
`
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`- 14 -
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`specified time period (namely, since release of the products, the first of which was
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`IPR2021-00600
`Motion for Additional Discovery
`
`in February 2018). The request is “sensible and responsibly tailored according to a
`
`genuine need” (see Garmin, Paper 26 at 14-16) because the significant sales of these
`
`products alone will demonstrate the commercial success of the Challenged Claims.
`
`It is narrowly tailored because it does not seek other types of evidence pertinent to
`
`secondary considerations for obviousness, such as Petitioner’s marketing materials
`
`and positive feedback that Petitioner has received about the HomePod Products.
`
`Petitioner’s compliance with the requested discovery should not require
`
`significant expenditure of resources or place a significant burden on meeting
`
`deadlines in this proceeding. Patent Owner expects that Petitioner maintains the
`
`requested information in Petitioner’s normal course of business. Nor will
`
`Petitioner’s compliance with the requests affect the trial schedule. Patent Owner’s
`
`response is not due until November 24, 2021. Paper 10, 10 (Due Date 1). To the
`
`extent the Board deems the discovery burdensome, it may modify or direct Patent
`
`Owner to modify them accordingly.
`
`V. CONCLUSION
`For the foregoing reasons, Patent Owner respectfully requests that the Board
`
`grant Patent Owner’s requested additional discovery contained in KOSS-2014 and
`
`require Petitioner to produce the responsive information within fourteen (14) days
`
`of its order.
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`IPR2021-00600
`Motion for Additional Discovery
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`Respectfully submitted,
`
`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
`
`
`
`Dated: October 7, 2021
`
`
`
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`
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`- 16 -
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`IPR2021-00600
`Motion for Additional Discovery
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`CERTIFICATION OF SERVICE
`
`I hereby certify that on October 7, 2021, I caused a true and correct copy of
`
`the foregoing to be served on the following counsel for Petitioner by electronic mail
`
`to the following email address:
`
`W. Karl Renner
`Roberto Devoto
`Ryan Chowdhury
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Email: ipr50095-0020ip2@fr.com
`Email: ptabinbound@fr.com
`Email: axf-ptab@fr.com
`Email: devoto@fr.com
`
`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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