`
`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
`_____________________
`
`
`PATENT OWNER’S REPLY TO PETITIONER’S OPPOSITION TO
`MOTION FOR ADDITIONAL DISCOVERY
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2021-00600
`Reply to Opposition to Motion for Additional Discovery
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Bestway (USA), Inc. v. Intex Mktg. Ltd.,
`IPR2020-01405, Paper 30 (PTAB Apr. 23, 2021) .............................................. 2
`Garmin Int’l, Inc. v. Cuozzo Speed Tech. LLC,
`IPR2012-00001, Paper 26 (PTAB Mar. 5, 2013) ................................................. 1
`Kolbe & Kolbe Millwork Co. v. Sierra Pac. Indus.,
`IPR2019-00933, Paper 33, 11 (PTAB Dec. 30, 2019) ......................................... 3
`L’Oréal USA, Inc. v. Liqwd, Inc.,
`PGR2017-00012, Paper 37 (PTAB Sept. 27, 2017) ......................................... 2, 3
`Shure Inc. v. ClearOne, Inc.,
`IPR2017-01785, Paper 31, 3 (PTAB Jun. 4, 2018) .............................................. 3
`Telebrands Corp. v. Tinnus Enter., LLC,
`PGR2015-00018, Paper 31, 9 (PTAB Apr. 4, 2016) ............................................ 3
`Other Authorities
`37 C.F.R. § 42.51(b)(2)(i) .......................................................................................... 1
`
`
`i
`
`
`
`
`
`IPR2021-00600
`Reply to Opposition to Motion for Additional Discovery
`
`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
`
`ii
`
`
`
`
`
`IPR2021-00600
`Reply to Opposition to 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)
`
`iii
`
`
`
`IPR2021-00600
`Reply to Opposition to 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)
`
`KOSS-2023 Sept/Oct 2021 Email chain with Board re filing Motion
`
`
`
`
`
`iv
`
`
`
`
`
`IPR2021-00600
`Reply to Opposition to Motion for Additional Discovery
`
`Petitioner’s Opposition (Paper 13, “Opp.”) unjustifiably dismisses Patent
`
`Owner’s nexus evidence, even though Petitioner fails to identify a single error or
`
`raise a single argument on the merits of that evidence. Petitioner also
`
`mischaracterizes Patent Owner’s evidence that shows that Patent Owner is entitled
`
`to the requested information. The Board should grant the Motion (Paper 12) because
`
`the requested discovery would serve “the interests of justice.” Garmin Int’l, Inc. v.
`
`Cuozzo Speed Tech. LLC, IPR2012-00001, Paper 26 (PTAB Mar. 5, 2013); 37
`
`C.F.R. § 42.51(b)(2)(i).
`
`Petitioner argues that “KOSS fails to establish that something useful will be
`
`discovered” (Opp. at 2) because it discredits the preliminary infringement
`
`contentions (APPLE-1016, “PICS”) the Petitioner filed as “insufficient for the
`
`requisite showing of nexus since preliminary infringement contentions constitute
`
`mere allegations, not proof, of infringement.” Opp. at 5. There are several material
`
`defects in this rationale.
`
`First, Koss does not rely on only the PICS to establish nexus. Patent Owner
`
`supplemented the PICS with additional evidence of nexus, including press releases
`
`from Petitioner highlighting how the HomePod Products embody and need to
`
`practice the claims. See e.g., Paper 12 at 9-11; KOSS-2015; KOSS-2016; KOSS-
`
`2021; KOSS-2022.
`
`
`- 1 -
`
`
`
`IPR2021-00600
`Reply to Opposition to Motion for Additional Discovery
`
`Second, the PICS alone, and especially in combination with Patent Owner’s
`
`
`
`
`additional evidence, are proof, and not mere allegations, of infringement. The PICS
`
`are based on public information about how Petitioner’s products operate, including
`
`information from Petitioner’s own marketing materials. Moreover, Petitioner did
`
`not even dispute the quality of the evidence in the PICS establishing the nexus.
`
`Petitioner did not identify a single error or make a single argument that the PICS did
`
`not establish that the HomePod Products possess the elements of the claims.
`
`
`
`Third, Petitioner’s case law-based generalizations, on which it relies to
`
`diminish the conclusive evidence of nexus, are unpersuasive as the cases cited by
`
`Petitioner actually support granting the Motion. Petitioner cited Bestway (USA), Inc.
`
`v. Intex Mktg. Ltd., IPR2020-01405, Paper 30 (PTAB Apr. 23, 2021) (Opp. at 5), but
`
`the reasoning that the Board denied the discovery requests is not applicable here. In
`
`Bestway, the infringement contentions covered a single product, but the discovery
`
`requests sought sales information for many other products. Id. at 7. Here, Patent
`
`Owner only seeks sales information for the products covered by the PICs. Petitioner
`
`also cites L’Oréal USA, Inc. v. Liqwd, Inc., PGR2017-00012, Paper 37 (PTAB Sept.
`
`27, 2017) (see Opp. at 6), but in that case the district court had found preliminarily
`
`that the accused products did not infringe, under a claim construction identical to
`
`what the Board applied in its institution decision, and Patent Owner’s motion had
`
`
`- 2 -
`
`
`
`IPR2021-00600
`Reply to Opposition to Motion for Additional Discovery
`
`
`not overcome that preliminary finding to show more than a mere possibility that
`
`something useful would be found. Id. at 7-8. There is no preliminary finding of
`
`non-infringement here and, as indicated above, Petitioner does not dispute any of the
`
`evidence establishing the nexus here.
`
`
`
`The other cases cited by Petitioner actually support granting the motion. See
`
`Opp. at 5-7. In both Kolbe and Telebrands, the Board granted discovery of sales
`
`information based on, in part, district court litigation claim charts. Kolbe & Kolbe
`
`Millwork Co. v. Sierra Pac. Indus., IPR2019-00933, Paper 33, 11 (PTAB Dec. 30,
`
`2019); Telebrands Corp. v. Tinnus Enter., LLC, PGR2015-00018, Paper 31, 9
`
`(PTAB Apr. 4, 2016). Even further in Patent Owner’s favor, in Shure, the Board
`
`found that infringement positions taken in litigation over a patent that was different
`
`than but related to the patent challenged in the IPR was sufficient evidence of nexus.
`
`Shure Inc. v. ClearOne, Inc., IPR2017-01785, Paper 31, 3 (PTAB Jun. 4, 2018).
`
`Moreover, the discovery granted in Kolbe and Telebrands was greatly more
`
`expansive than the limited discovery that Patent Owner seeks here, which is limited
`
`in terms of (i) types of information, (ii) number of products, and (iii) applicable time
`
`period. Consequently, Kolbe, Telebrands, and Shure establish that district court
`
`litigation PICS can be sufficient to establish the requisite showing of nexus. Nothing
`
`in Kolbe, Telebrands, or Shure indicates that expert testimony or evidence of
`
`
`- 3 -
`
`
`
`IPR2021-00600
`Reply to Opposition to Motion for Additional Discovery
`
`
`copying is necessary to establish nexus.
`
`Finally, the Opposition confusingly mischaracterizes Patent Owner’s request
`
`by stating that Patent Owner advances four allegations to support its request for
`
`additional discovery: (1) that publicly available evidence shows that Apple allegedly
`
`exploited the Challenged Claims; (2) that there is a clear nexus; (3) that the Apple
`
`Products “need to practice” the Challenged Claims; and (4) that the success of the
`
`Apple Products years after the priority dates of the patent is strong evidence of
`
`nonobviousness. Opp. at 4. Based on this mischaracterization the Opposition
`
`wrongly asserts that “sales revenue and quantity of units sold of Apple Products—
`
`is product-level information that has no substantive value to any of KOSS’s four
`
`allegations.” Id.
`
`The requested evidence is not sought to support the “allegations,” but instead
`
`the allegations support that Patent Owner is entitled to the requested evidence.
`
`Patent Owner’s Motion states clearly that it “seeks information concerning
`
`secondary considerations of nonobviousness” for the Challenged Claims. Paper 12,
`
`1. The four “allegations” cited by Petitioner are merely considerations in support of
`
`the Motion, as required by the Garmin factors. Petitioner’s misrepresentation of
`
`Patent Owner’s allegations is further represented in its assertion that “sales
`
`information lacks any technical detail that would substantiate KOSS’ allegation that
`
`
`- 4 -
`
`
`
`IPR2021-00600
`Reply to Opposition to Motion for Additional Discovery
`
`
`the Apple Products ‘need to practice’ the Challenged Claims.” Opp. at 8. Patent
`
`Owner never made such a representation and this statement reflects Petitioner’s
`
`conflation of the legal considerations of commercial success.
`
`Petitioner perpetuates the confusion under the second Garmin factor, where it
`
`asserts that “KOSS’s attempts to use additional discovery in these IPR proceedings
`
`to impermissibly suggest infringement.” Opp. at 8. This unsupported accusation is
`
`refuted by the fact that the Motion merely seeks limited information to support its
`
`position that the claims of the ’934 Patent are nonobvious. Paper 12, 2.
`
`Under the third Garmin factor, Petitioner states that “KOSS’s request for
`
`additional discovery is unnecessarily cumulative over information already in its
`
`possession.” Opp. at 9. However, Petitioner has not stipulated that the HomePod
`
`Products have achieved significant sales, so Patent Owner needs the information to
`
`establish the significant sales and the concomitant commercial success.
`
`For the foregoing reasons, Patent Owner respectfully requests that the Board
`
`grant Patent Owner’s requested additional discovery contained in Ex. 2014 and
`
`require Petitioner to produce the responsive information within fourteen (14) days
`
`of its order.
`
`Dated: November 12, 2021
`
`
`
`
`
`
`Respectfully submitted,
`
`By:
`
`
`
`
`/Mark G. Knedeisen/
`Mark G. Knedeisen (Reg. No. 42,747)
`
`
`- 5 -
`
`
`
`IPR2021-00600
`Reply to Opposition to Motion for Additional Discovery
`
`
`
`K&L Gates Center, 210 Sixth Avenue
`Pittsburgh, Pennsylvania 15222
`Tel.: (412) 355-6342
`mark.knedeisen@klgates.com
`
`Counsel for Patent Owner
`
`
`
`
`
`
`
`
`- 6 -
`
`
`
`
`
`IPR2021-00600
`Reply to Opposition to Motion for Additional Discovery
`
`CERTIFICATION OF SERVICE UNDER 37 C.F.R. § 42.6(E)(4)
`
`I hereby certify that on November 12, 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
`
`
`
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
