UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
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`KOSS CORPORATION,
`Patent Owner.
`_____________________
`
`CASE: IPR2021-00600
`U.S. PATENT NO. 10,298,451
`_____________________
`
`DECLARATION OF JOSEPH C. MCALEXANDER III
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`November 24, 2021
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`505310302.1
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`Page 1 of 74
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`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
`_____________________
`
`DECLARATION OF JOSEPH C. MCALEXANDER III
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`November 24, 2021
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`505310302.1
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`TABLE OF CONTENTS
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`I.
`BACKGROUND AND QUALIFICATIONS .............................................. 1
`II. MATERIALS REVIEWED .......................................................................... 4
`III. SUMMARY OF THE '451 PATENT .......................................................... 5
`A. The Problem Addressed by the '451 Patent ............................................. 5
`B. The Solution of the '451 Patent ................................................................ 8
`IV. PERSON OF ORDINARY SKILL IN THE ART .................................... 11
`V. APPLICABLE LEGAL PRINCIPLES ..................................................... 13
`A. Claim Construction ................................................................................ 13
`B. Obviousness ........................................................................................... 14
`VI. SUMMARY OF PRIOR ART FOR GROUND 1A .................................. 17
`A. Scherzer .................................................................................................. 18
`B. Subramaniam ......................................................................................... 24
`C. Scherzer-Subramaniam Combination .................................................... 28
`D. Secondary Considerations ...................................................................... 38
`VII. CONCLUDING REMARKS ...................................................................... 41
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`Declaration of Joseph C. McAlexander III
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`1.
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`I, Joseph C. McAlexander III, declare as follows:
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`2.
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`I have been retained by counsel for Koss Corp. (“Koss”) as a technical
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`expert in connection with the inter partes review (“IPR”) proceeding identified
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`above for U.S. Patent 10,298,451 (the “'451 Patent”). I submit this declaration in
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`support of Koss’s response to the petition.
`
`I.
`
`BACKGROUND AND QUALIFICATIONS
`3.
`I have a Bachelor of Science degree in Electrical Engineering from
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`North Carolina State University and have studied neural science at the University of
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`Texas Graduate School of Biomedical Sciences.
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`4.
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`Upon completion of my electrical engineering degree in 1969, I was
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`commissioned as an officer in the U.S. Army. For 2 years, I managed the air defense
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`operation for
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`the New England area, which
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`included radar and secure
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`communication channels to aircraft, missile batteries, and U.S. Command. I then
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`commanded a signal battalion in South Korea for one year, designing and
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`orchestrating at the division level the first of its kind communication power grid
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`mapping study using AM and FM transmission/reception, among others, and
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`utilizing crypto security transmission/reception methods.
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`5.
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`I am a Registered Professional Engineer in the state of Texas (Reg. No.
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`79,454) and am a recognized inventor on thirty-one U.S. patents. I have forty-nine
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`years of professional experience, during which I designed and analyzed a variety of
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`microcircuits, semiconductors, and control systems, amongst other technologies for
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`Texas Instruments, Inc. and EPI Technologies, Inc. Specifically, I have designed
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`Dynamic Random Access Memories (“DRAMs”), Static Random Access Memories
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`(“SRAMs”), Charged Coupled Devices (“CCDs”), Shift Registers (“SRs”), and a
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`variety of functional circuits, including input/output buffers for addresses and data
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`transmission, decoders, clocks, sense amplifiers, fault tolerant memory, parallel-to-
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`serial data paths for video applications, level shifters, converters, pumps, logic
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`devices, wireless communication systems, and microelectromechanical systems
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`(“MEMs”). I possess significant expertise in operations and manufacturing
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`associated with these technologies, including a sophisticated knowledge of quality
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`control, testing, reliability, and failure analyses.
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`6.
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`I have conducted high level instruction to design and process engineers
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`and managers at Texas Instruments, among others, in Solid State Device Physics,
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`Semiconductor Processing, Circuit Design Techniques, and Statistical Quality
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`Control Methods. I have also instructed corporate audiences in Effectiveness
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`Training, Japanese Manufacturing Techniques, and problem recognition and
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`solution methods and tools.
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`7.
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`I have negotiated licenses for my intellectual property, which includes
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`design programs to provide GPS tracking and transmission of information wirelessly
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`via paging and CDMA. These technologies involved, among others, partnerships
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`for skier tracking with Snowtrax, offender tracking with Stellar Technology
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`Enterprises, pet tracking with The Procter & Gamble Company, journalist tracking
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`with CNN, asset tracking with TrackDaddy, and family tracking with Disney. I also
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`advised a startup between 2013 and 2018 in peer-to-peer encrypted cellular
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`communication.
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`8.
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`I have provided consultancy
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`services associated with
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`the
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`aforementioned technologies.
`
` My consulting career began with Cochran
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`Consulting, Inc. in 1991. Currently, I am the President of McAlexander Sound, Inc.
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`and the Managing Director of McAlexander Sound Pte Ltd., where I offer such
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`consultancy services and serve as a Technical Advisor for highly-specialized
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`matters. I provide expert witness services for the protection of intellectual property.
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`As an expert witness, I have analyzed processes and designs associated with personal
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`computers, peripheral computers, software, and wireless communications systems,
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`including
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`telephones, headsets, microprocessors,
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`controllers, memories,
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`programmable logic devices, and other consumer electronics.
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`9.
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`As part of my work with McAlexander Sound, I have gained intimate
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`experience with sound and lighting systems. I am very familiar with how acoustic
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`speakers operate and the design issues associated with sound systems.
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`10. A copy of my curriculum vitae is attached as Appendix A hereto.
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`II. MATERIALS REVIEWED
`11.
` I considered information from various sources in forming my opinions
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`expressed in this declaration. In addition to drawing from over four decades of
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`experience in the field of circuit design and two decades of experience with wireless
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`technologies, I have also reviewed the IPR Petition and its exhibits, including the
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`’451 Patent (APPLE-1001), Scherzer (APPLE-1005), Subramaniam (APPLE-1005),
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`Baxter (APPLE-1009), Drader (APPLE-1010), Ramey (APPLE-1011), Gupta
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`(APPLE-1012), Montemurro (APPLE-1013), Mehta (APPLE-1015), and the
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`Declaration of Dr. Cooperstock (APPLE-1003). I also reviewed the deposition
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`transcript for Dr. Cooperstock (KOSS-2025). Furthermore, I reviewed the other
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`exhibits and documents referred to herein.
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`III. SUMMARY OF THE '451 PATENT
`12. The '451 Patent relates to systems and methods that permit a wireless
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`device to receive data wirelessly via an infrastructure wireless network. The
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`wireless device can be configured without having to physically connect to a
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`computer and without having an existing infrastructure wireless network to connect
`
`to. APPLE-1001, Abstract.
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`A. The Problem Addressed by the '451 Patent
`13. By March 15, 2013, the priority date of the '451 Patent (“Priority
`
`Date”), wireless internet use had been steadily increasing in popularity and the
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`number of connected devices per person was rising dramatically.1 Moreover, the
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`internet-of-things was burgeoning and proving that internet connectivity could
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`transform the functionality and user experience associated with electronic devices
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`and appliances that were not traditionally configured to connect to the internet.2
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`Conventional computing devices, such as desktop computers, laptop computers, and
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`phones, typically had user interfaces such as displays and keypads (e.g., physical or
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`virtual keyboards). Displays were capable of displaying a list of available
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`1 See https://www.pewresearch.org/internet/2010/07/07/part-one-the-current-state-
`of-wireless-internet-use/.
`2 See https://www.cisco.com/c/dam/en_us/about/ac79/docs/innov/
`IoT_IBSG_0411FINAL.pdf.
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`infrastructure (e.g., WiFi) networks. Keypads allowed users to input credentials
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`(e.g., a network identifier, password, encryption details) to establish a connection.
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`In this manner, conventional computing devices could easily obtain access to an
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`infrastructure wireless network upon selecting an available network shown on a
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`display and inputting the requisite access credentials via a keypad.
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`14. However, other electronic devices could not connect to infrastructure
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`wireless networks as easily. It was not always aesthetically, technically, or
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`economically feasible to provide such user interfaces on electronic devices that were
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`not traditionally designed for internet connectivity. For example, devices such as
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`headphones or wireless speakers, typically have minimalistic user interfaces, if any
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`at all, and thus, were more difficult to configure for internet connectivity. Some
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`devices could be physically plugged into a computer to obtain the network
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`credentials, such as a network name/ID (e.g., SSID), a password, and/or an
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`encryption type (e.g., Wired Equivalent Privacy (“WEP”), Wi-Fi Protected Access
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`(“WPA”), Wi-Fi Protected Access v2 (“WPA2”)), required to connect to the
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`network.3
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`15. Wireless electronic devices, such as headphones and speakers, had the
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`potential to provide consumers with access to a wide array of digital content stored
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`3 See https://www.netspotapp.com/wifi-encryption-and-security.html.
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`on remote servers. However, without the requisite network credentials, such devices
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`could not connect to infrastructure wireless networks and thus, could not stream
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`content directly from a remote server without first being physically plugged into a
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`computer. However, aside from the inconvenience of having to physically connect
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`a wireless electronic device to an already connected device, smaller devices could
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`not accommodate a port for a plug.
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`16. The aforementioned problems were further exacerbated for traveling
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`users. For example, even if a device were configured for home use via a personal
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`infrastructure wireless network, the device would be unable to connect to new
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`networks without physically connecting it to a computer while traveling to transfer
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`the appropriate credentials. Thus, users would have to haul compatible computers
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`and plugs to each and every coffee shop, hotel, or conference center, if they wanted
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`to connect an auxiliary electronic device, such as their headphones, to a wireless
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`network. If a user did not have access to a computer with a compatible interface, the
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`user could not configure the auxiliary electronic device to connect to an
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`infrastructure network. These technical limitations significantly reduced the
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`transportability and functionality of the device and, in some cases, rendered the
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`device completely useless.
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`B.
`17.
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`The Solution of the '451 Patent
`In response to these technical limitations, the '451 Patent presents a new
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`manner of “configuring a wireless device to communicate via an infrastructure
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`wireless network, such as an infrastructure Wi-Fi network, without having to
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`physically plug the wireless device into a computer…and without having to have an
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`existing infrastructure wireless connection to the wireless device.” APPLE-1001,
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`2:51-58. The inventions disclosed by the '451 Patent enable a user to transfer WiFi
`
`credentials to a wireless device via an ad hoc network and thus, connect the wireless
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`device to a WiFi network, even if the user lacks access to a preexisting infrastructure
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`wireless connection and is without a compatible computer or plug for physical
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`connection. Accordingly, the '451 Patent provides a significant technical
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`improvement over prior systems and methods.
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`18. For example, claim 1 of the '451 Patent is directed to a system
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`comprising a wireless access point, an electronic device, a mobile computer device
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`that is in communication with the electronic device via an ad hoc wireless
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`communication link, and one or more host servers that are in communication with
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`the mobile computer device via the Internet. The electronic device could be wireless
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`earphones, a video player, a lighting system, a camera, a medical device, or a gaming
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`system, for example. Id., 2:51-67, 6:10-15. Claim 18 is similar to claim 1, but
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`passively refers to the wireless access point instead of positively claiming the
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`wireless access point as a component of the system.
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`19. An example of the claimed system is depicted in Figure 1 of the '451
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`Patent, reproduced below. According to Figure 1, the system 10 can include an
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`electronic device 12, a mobile computer device 22 in communication with the
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`electronic device 12 via an ad hoc wireless communication link 18, and host servers
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`30 that are in communication with the mobile computer device 22 via a Transmission
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`Control Protocol/Internet Protocol (“TCP/IP”) network 28, such as the Internet.
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`Similar to claim 1, the system 10 can also include a wireless access point 24.
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`20. The host servers 30 receive and store the credential data for an
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`infrastructure wireless network provided by the wireless access point 24. The
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`mobile computer device 22 is for transmitting to the electronic device 12 the
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`credential data for the infrastructure wireless network 26 stored by the one or more
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`host servers 30. The electronic device 12 is for, upon receiving the credential data
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`for the infrastructure wireless network 26 from the mobile computing device 22,
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`connecting to the wireless access point 24 via the infrastructure wireless network 26
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`using the credential data received from the mobile computer device 22. In short,
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`credential data received and stored on the host servers 30 is transmitted to the
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`electronic device 12 so that the electronic device 12 can access the Internet 28 via
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`the wireless access point 24. Moreover, the credential data is transmitted to the
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`electronic device 12 without requiring the electronic device 12 to be plugged into
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`the mobile computing device 22.
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`
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`Figure 1: '451 Patent Showing Wireless Access Point 24,
`Electronic Device 12, Mobile Computing Device 22, and
`Host Servers 30 that Receive and Store Credential Data
`for the Wireless Access Point Used to Connect the
`Electronic Device to the Internet 28
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`IV. PERSON OF ORDINARY SKILL IN THE ART
`21.
`I have been informed and understand that patent claims are construed
`
`in accordance with the ordinary and customary meaning of such claims as
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`understood by one of ordinary skill in the art and supported by the prosecution
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`history pertaining to the patent.
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`22. Counsel has advised me that, to determine the appropriate skill level of
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`one skilled in the art, I may consider the following factors: (a) the types of problems
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`encountered by those working in the field and prior art solutions thereto; (b) the
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`sophistication of the technology in question, and the rapidity with which innovations
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`occur in the field; (c) the educational level of active workers in the field; and (d) the
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`educational level of the inventor. I considered those factors and also considered the
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`engineers that I worked with at both Texas Instruments, Inc. and EPI Technologies,
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`Inc.
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`23. The relevant technology field for the '451 Patent is systems and
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`methods for configuring a wireless device to communicate via an infrastructure
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`wireless network, such as an infrastructure Wi-Fi network, when the wireless device
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`lacks a preexisting infrastructure wireless connection and without having to
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`physically plug the wireless device into a computer to configure it. APPLE-1001,
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`2:51-57. Based on this, and the factors described above, it is in my opinion that a
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`person of ordinary skill in the art (“POSITA”) to which the '451 Patent pertains
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`would be someone working in the electrical engineering field with experience in
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`wireless networks and wireless products. Such a person would have a bachelor’s
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`degree in electrical engineering and at least two or more years of work experience
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`in the industry. In my opinion, extensive work experience and technical training
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`might substitute for educational requirements, while advanced degrees, such as a
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`relevant M.S. or Ph.D., might substitute for experience. Accordingly, such a person
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`would have studied and have practical experience with circuit design, speaker
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`components, and wireless communications and networking. Under this proposed
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`skill level, I qualified as a POSITA in 2013.
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`24.
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`I understand that Petitioner’s expert, Dr. Cooperstock, proposes that a
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`POSITA for the '451 Patent would have at least a Bachelor’s Degree in an academic
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`area emphasizing electrical engineering, computer science, or a similar discipline,
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`and at least two years of experience in wireless communications across short
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`distances or local area networks, where superior education could compensate for a
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`deficiency in work experience and vice-versa. APPLE-1003, ¶26. Under this
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`proposed skill level, I qualified as a POSITA in 2013.
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`25.
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`I consider myself an expert in the field of the ‘451 Patent.
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`V. APPLICABLE LEGAL PRINCIPLES
`26.
`I am not an attorney. For purposes of this declaration, I have been
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`informed about certain aspects of the law that are relevant to my analysis and
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`opinions, as set forth below.
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`A. Claim Construction
`27.
`I understand that claim terms are generally given their ordinary and
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`customary meaning, which is the meaning that the term would have to a person of
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`ordinary skill in the art (POSITA) in question at the time of the invention, i.e., as of
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`the earliest priority date of the patent. I further understand that the POSITA is
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`deemed to read the claim term not only in the context of the particular claim in which
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`a claim term appears, but in the context of the entire patent, including the
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`specification and file history.
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`28.
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`I am informed by counsel that the patent specification has been
`
`described as the best guide to determining the meaning of a claim term, and is thus,
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`highly relevant to the interpretation of claim terms. I understand that for claim terms
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`that do not have a customary meaning within the art, the specification usually
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`supplies the best context of understanding the meaning of those terms. I also
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`understand that claim terms should be understood in the context of the claim as a
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`whole.
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`29.
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`I understand that the prosecution history can further inform the meaning
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`of the claim language by demonstrating how the inventors understood the invention
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`and whether the inventors limited the invention in the course of prosecution, making
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`the claim scope narrower than it otherwise would be. Extrinsic evidence may also
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`be consulted in construing the claim terms, such as my experience and expert
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`testimony.
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`30.
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`I have not been asked to provide any specific definitions for any of the
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`terms in the claims I have analyzed. If asked, I would undertake such an endeavor.
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`Accordingly, I have treated each claim term as it would be understood to have its
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`plain and ordinary meaning to a POSITA in light of the specification, as outlined
`
`below.
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`31.
`
`I understand that some claims are independent, and that these claims
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`are complete by themselves. Other claims refer to these independent claims and are
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`“dependent” from those independent claims. The dependent claims include all the
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`limitations of the claims from which they depend.
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`B. Obviousness
`32.
`I am informed that a patent cannot be properly granted for subject
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`matter that would have been obvious to a POSITA before the effective filing date of
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`the claimed invention and that a patent claim directed to such obvious subject matter
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`is invalid (under 35 U.S.C. § 103). I am also informed that, in assessing the
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`obviousness of claimed subject matter, one should evaluate obviousness over the
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`prior art from the perspective of a POSITA before the effective filing date of the
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`claimed invention. It is my further understanding that obviousness is to be
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`determined based on several factual inquiries:
`
`i. The scope and content of the prior art;
`ii. The difference or differences between the subject matter of the claim
`(as construed) and the prior art; and
`iii. The level of ordinary skill in the art at the time of the invention of
`the subject matter of the claim.
`Against this background, the obviousness or non-obviousness of the claim is
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`determined.
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`33.
`
`I am informed that relevant objective factors (the “secondary indicia”)
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`indicating non-obviousness might be utilized to give light to the circumstances
`
`surrounding the origin of the subject matter sought to be patented. I am informed
`
`that relevant secondary indicia can include:
`
`i. Commercial success of the products or methods covered by the
`patent claims;
`ii. A long-felt need for the invention;
`iii. Failed attempts by others to make the invention;
`iv. Teaching away from the invention by the prior art;
`v. Copying of the invention by others in the field;
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`vi. Unexpected results achieved by the invention;
`vii. Praise, approval, or acclaim of the invention by others in the field;
`viii. Commercial acquiescence to the validity of the patents;
`ix. Skepticism of experts;
`x. Expressions of surprise by experts and those skilled in the art at the
`subject matter of the claims; and
`xi. Whether the patentee proceeded contrary to accepted wisdom of the
`prior art.
`I am informed that, in order to be relevant to the issue of obviousness, such
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`secondary indicia must have some nexus to the claimed invention.
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`34.
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`I am informed that sometimes obviousness is shown by combining
`
`multiple prior art teachings under a test commonly referred to as the “teaching-
`
`suggestion-motivation” or “TSM” test, which addresses the common situation where
`
`previously known components are recited in a claim. I am informed that, according
`
`to the TSM test, it must be shown explicitly or implicitly that there is some
`
`suggestion or motivation in the prior art to combine known elements to form the
`
`claimed invention.
`
`35.
`
`I am also informed that additional rationales may support an
`
`obviousness determination when dealing with a known problem, including:
`
`i. Combining prior art according to known methods to yield
`predictable results;
`ii. Simple substitution of a known element for another element to
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`obtain predictable results;
`iii. Use of a known technique to improve similar devices, methods, or
`products in some way;
`iv. Applying a known technique to a known device, method, or product
`ready for improvement to yield predictable results;
`v. Obvious to try―that is, choosing from a finite number of identified,
`predictable solutions with a reasonable expectation of success; and
`vi. Known work in one field of endeavor may prompt variations for use
`in either the same field or a different one based on design incentives
`or other market forces if the variations are predictable to a POSITA.
`I am informed that, when I conduct my analysis, I should guard against
`
`36.
`
`hindsight, that is, using the claimed invention(s) to retroactively form the basis of
`
`any combination of prior art references. To guard against this, a reason must be
`
`shown to combine or modify prior art teachings to arrive at the claimed subject
`
`matter, and I have taken into consideration any teachings as expressed within the
`
`prior art references and the general common knowledge in the art at the time the
`
`claimed invention(s) was filed to guide my determination whether or not a POSITA
`
`would make any of the combinations or modifications proposed in the Petition.
`
`VI. SUMMARY OF PRIOR ART FOR GROUND 1A
`37. The Petition asserts that claims 1-20 would have been obvious under
`
`various asserted grounds (i.e., Grounds 1A to 1F). For Ground 1A, the Petition
`
`asserts that claims 1, 6, 12, 13, and 16-20 would have been obvious over Scherzer
`
`and Subramaniam. Claims 1 and 18 are the independent claims of the '451 Patent.
`
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`A.
`Scherzer
`38. Scherzer describes a “software client” that aggregates “registration
`
`information” from a collaborative community of users. APPLE-1004, ¶ [0020]. The
`
`registration information “can be used to enable other users to access [a] user’s access
`
`point.” Id. at ¶ [0016]. After registering for the service disclosed by Scherzer, the
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`software client must be installed on a user’s device prior to enabling the user to
`
`access another user's access point. See id.
`
`39. According to Scherzer, the provision of registration information can be
`
`used to set up a user contribution account that can enable other registered users of
`
`the network to access the user's access point. Id. at ¶ [0021]. Registration
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`information can include, for example: the user's access point information to enable
`
`a second user to use the user's access point, the user's identifier information (e.g.,
`
`media access control (MAC) address), the user's access point service set identifier
`
`(SSID), the user's access point wired equivalent privacy (WEP) key or password, the
`
`user's access point Wi-Fi protected access (WPA) key or password, and the user's
`
`access point bandwidth allocation for a second user. Id. at ¶ [0021].
`
`40. Assuming a user’s contribution account is deemed acceptable, the user
`
`can access the registration information and networks of other registered users in
`
`exchange for the user’s registration information and access to their own network. Id.
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`at Abstract, ¶ [0015], claim 1. Scherzer describes numerous criteria for determining
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`user contribution account acceptability, including “having a user contribution
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`account …., having a user contribution account balance, having a user contribution
`
`account balance above a threshold value, having a user contribution account balance
`
`below a threshold value,” and “having a user contribution account balance in a range
`
`a values.” Id. at ¶ [0022]. Scherzer also discloses alternate accessibility criteria,
`
`including the use of trial periods and temporary user contribution accounts. Id. at ¶
`
`[0018].
`
`41. Scherzer’s Figure 1, reproduced below, illustrates an exemplary system
`
`for providing network access. According to Figure 1, registered user devices 104,
`
`106, 108, 110, and 112 access the internet 114 via wireless access points 100 and
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`102 of registered users. Id. at ¶ [0020]. The application server 116, which is also
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`connected to the Internet 114, receives and stores the access information. Id.
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`Figure 1: Scherzer's Collaborative Community of
`Registered Devices 104, 106, 108, 110, and 112 Connected to
`Wireless Access Points 100 and 102
`42. Having reviewed Scherzer, it is evident that collaboration between
`
`registered users is the foundation of Scherzer’s credential sharing community.
`
`Moreover, network access is only granted to registered users within Scherzer’s
`
`community. Scherzer teaches the importance of monitoring each registered
`
`contribution account and access to credential data stored on Scherzer’s server 116 is
`
`conditional on compliance to the acceptability criteria. For example, Scherzer
`
`describes determining a contribution account balance by comparing access provided
`
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`to a registered user to access provided by a registered user. Id. at ¶ [0022] (emphases
`
`added). Scherzer explains that this can be accomplished by “tracking” registered
`
`contribution accounts. Id. at ¶ [0017].
`
`43. A POSITA would appreciate the importance of tracking usage, e.g.,
`
`bandwidth consumed, by registered users in Scherzer’s system, and that Scherzer
`
`teaches limiting a user’s access based on tracked consumption. A POSITA would
`
`further appreciate that failing to limit access to only registered users and failing to
`
`track network usage would result in serious risk to the networks added to Scherzer’s
`
`database. In fact, dissemination of Scherzer’s access credentials to unrecognized
`
`devices undermines the intent of Scherzer’s collaborative community for the mutual
`
`benefit of its registered users.
`
`44. Although Scherzer does not describe a specific means by which the
`
`tracking is implemented, by the Priority Date of the '451 Patent, a POSITA would
`
`have understood that you could “track” endpoint devices connected to a wireless
`
`access point via an internet protocol (“IP”) address or media access control (“MAC”)
`
`address assigned to the each device.4 A POSITA would have understood that a
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`device of a registered user (i.e., a recognized device) would have a MAC address
`
`identifier that is associated with a user account and recognized by Scherzer’s server,
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`
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