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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
`Patent 10,298,451
`_____________________
`
`
`
`PATENT OWNER RESPONSE
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`Case IPR2021-00600
`Patent Owner Response
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`TABLE OF CONTENTS
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`
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`I.
`II.
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`Page
`INTRODUCTION .......................................................................................... 1
`BACKGROUND ............................................................................................ 3
`A.
`Summary of the ’451 Patent ................................................................. 3
`B.
`Person of Ordinary Skill in the Art ...................................................... 7
`C.
`Petitioner’s Invalidity Grounds and Evidence ..................................... 9
`1.
`Scherzer .................................................................................... 13
`2.
`Subramaniam ........................................................................... 21
`3.
`The Scherzer-Subramaniam Combination ............................... 23
`Relevant Issues for Obviousness Determination................................ 29
`A POSITA Would Not Attempt to Use Scherzer’s Access
`Credentials with an Unrecognized Device ......................................... 32
`1.
`Transmission and Use of Scherzer’s Access Credentials by
`an Unrecognized Device Ignores the Account Acceptability
`Requirement and Associated Tracking in Scherzer ................. 32
`Scherzer’s Account Acceptability Requirement and
`Associated Tracking Precludes Petitioner’s Scherzer-
`Subramaniam Combination ..................................................... 33
`Petitioner’s Scherzer-Subramaniam Combination Ignores
`Scherzer’s Account Acceptability Requirement and
`Tracking ................................................................................... 37
`Scherzer and Subramaniam, As a Whole, Discourage
`Unfettered Dissemination of Access Credentials to
`Unrecognized Devices ............................................................. 40
`Subramaniam’s Configuration Techniques Apply to In-
`Home Wireless Networks ........................................................ 41
`
`D.
`E.
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`a.
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`b.
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`2.
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`3.
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`4.
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`F.
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`G.
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`D.
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`A Simpler Approach to Obtaining the Scherzer Software
`Client Exists ............................................................................. 43
`The Petition’s Obviousness Analysis Relies on Impermissible
`Hindsight Reconstruction ................................................................... 43
`1.
`Defects in Petitioner’s First Example ...................................... 44
`2.
`Defects in Petitioner’s Second Example .................................. 47
`3.
`Defects in Cooperstock’s Testimony ....................................... 49
`The Petitioner’s Flawed Analysis Obscures Any Comparison of
`Scherzer and Subramaniam to the Challenged Claims ...................... 55
`III. OBJECTIVE INDICIA OF NONOBVIOUSNESS CONFIRM THAT
`THE CHALLENGED CLAIMS ARE PATENTABLE .............................. 56
`A.
`Background ........................................................................................ 56
`B.
`Legal Principles .................................................................................. 57
`C.
`There is a Nexus Between the HomePods and the Claims of ’451
`Patent .................................................................................................. 59
`There is Evidence that the HomePods Have Achieved Commercial
`Success Since their Debut .................................................................. 62
`IV. CONCLUSION ............................................................................................. 63
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`TABLE OF AUTHORITIES
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`Case IPR2021-00255
`Patent Owner Response
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` Page(s)
`
`Cases
`AG v. Nike, Inc.,
`IPR2016-00921, Paper 21 (PTAB Oct. 19, 2017) .............................................. 54
`Apple Inc. v. Koss Corp.,
`IPR2021-00600, Paper 9 (PTAB Sept. 1, 2021) ..........................................passim
`Apple Inc. v. Koss Corp.,
`IPR2021-00600, Paper 19 (PTAB Nov. 24, 2021) ............................................. 59
`In re Applied Materials, Inc.,
`692 F.3d 1289 (Fed. Cir. 2012) .......................................................................... 63
`BMW of N. Am., LLC v. Stragent, LLC,
`IPR2017-00677, Paper 32 (PTAB June 13, 2018) ....................................... 12, 52
`Demaco Corp. v. F. Von Langsdorff Licensing Ltd.,
`851 F.2d 1387 (Fed. Cir. 1988) .................................................................... 58, 60
`Ecolochem, Inc. v. S. California Edison Co.,
`227 F.3d 1361 (Fed. Cir. 2000) .................................................................... 52, 58
`FMC Tech. Inc. v. OneSubsea IP UK Ltd.,
`IPR2019-00935, Paper 45 (PTAB Oct. 14, 2020) .............................................. 54
`Fox Factory, Inc. v. SRAM, LLC,
`944 F.3d 1366 (Fed. Cir. 2019) .......................................................................... 58
`Goodyear Tire & Rubber Co. v. Ray-O-Vac Co.,
`321 U.S. 275 (1944) ........................................................................................ 2, 58
`Graham v John Deere Co.,
`383 U.S. 1 (1966) .........................................................................................passim
`In re Huang,
`100 F.3d 135 (Fed. Cir. 1996) ............................................................................ 63
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`In re Keller,
`642 F.2d 413 (C.C.P.A. 1981) ............................................................................ 30
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .............................................................................................. 8
`Merck & Co., Inc. v. Teva Pharm. USA, Inc.,
`395 F.3d 1364 (Fed. Cir. 2005) .......................................................................... 58
`Mintz v. Dietz & Watson, Inc.,
`679 F.3d 1372 (Fed. Cir. 2012) ......................................................................... 55
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) .................................................................... 11, 47
`Panduit Corp. v. Dennison Mfg. Co.,
`810 F.3d 1561 (Fed. Cir. 1987) .......................................................................... 52
`In re Schweickert,
`676 F. App’x. 988 (Fed. Cir. 2017) .................................................................... 47
`SightSound Techs., LLC v. Apple Inc.,
`809 F.3d 1307 (Fed. Cir. 2015) .......................................................................... 58
`Silicon Labs., Inc. v. Cresta Tech. Corp.,
`IPR2014-00809, Paper 56 (PTAB Oct. 21, 2015) .............................................. 54
`Unified Patent Inc. v. Plectrum LLC,
`IPR2017-01430, Paper 30 (Nov. 13, 2018) ........................................................ 12
`W.L. Gore & Assoc., Inc. v. Garlock, Inc.,
`721 F.2d 1540 (Fed. Cir. 1983) ...................................................................... 9, 35
`Other Authorities
`37 C.F.R. § 42.120 ..................................................................................................... 1
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`EXHIBIT LISTING
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`DESCRIPTION
`EXHIBIT NO.
`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
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`KOSS-2011
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`Petition for Inter Partes Review, IPR2021-00255, November
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`EXHIBIT NO.
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`DESCRIPTION
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`25, 2020
`
`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
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`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)
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`DESCRIPTION
`EXHIBIT NO.
`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
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`“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
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`Sept/Oct 2021 Email chain with Board re filing Motion
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`KOSS-2024
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`Reserved
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`KOSS-2025 Deposition Transcript, Prof. Jeremy Cooperstock, Ph.D.,
`IPR2021-00600, November 5, 2021
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`KOSS-2026 Declaration by Joseph C. McAlexander III
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`I.
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`Case IPR2021-00600
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`INTRODUCTION
`The Board granted institution for inter partes review of claims 1-21
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`(“Challenged Claims”) of U.S. Patent No. 10,298,451 (APPLE-1001, “the ’451
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`Patent”). Apple Inc. v. Koss Corp., IPR2021-00600, Paper 9 (PTAB Sept. 1, 2021)
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`(“Institution Decision”). Patent Owner, Koss Corporation, submits this Patent
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`Owner Response under 37 C.F.R. § 42.120.
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`Claims 1 and 18 are the independent claims of the ’451 Patent. These claims
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`recite an electronic device, such as an acoustic speaker, that receives “credential
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`data” for an infrastructure wireless network from a mobile computer device. The
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`credential data, which can comprise an identifier for the infrastructure wireless
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`network and which are also stored on “one or more host servers,” are transmitted by
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`the mobile computer device to the electronic device via an “ad hoc communication
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`link.” Upon receiving the credential data, the electronic device can connect to the
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`infrastructure wireless network. APPLE-1001, 8:30-53 (claim 1), 10:1-24 (claim
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`18). That way, the electronic device can connect to the infrastructure wireless
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`network without having to physically plug the electronic device into a computer to
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`receive the infrastructure wireless network credentials. Id., 2:3-7.
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`Petitioner asserts that independent claims 1 and 18 would have been obvious
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`over Scherzer (APPLE-1004) and Subramaniam (APPLE-1005). Petitioner’s
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`argument, however, ignores important teachings of its relied-upon references. In
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`particular, as explained below and in the accompanying declaration of Patent
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`Owner’s expert, Joseph C. McAlexander, III (KOSS-2026), Petitioner’s case ignores
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`the account acceptability requirements and usage tracking in Scherzer’s community-
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`based system, such that Petitioner’s argument effectively converts Scherzer’s
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`mutually-beneficial access exchange into a system in which access credentials are
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`freely disseminated without any practical limits, which is contrary to the
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`“collaborative community” and mutual “exchange” taught in Scherzer. By ignoring
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`the teachings of Scherzer, it is clear Petitioner is relying on hindsight. See Institution
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`Decision (Paper 9), 34 (“we have some concerns about Petitioner’s proposed
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`combination along the lines of Patent Owner’s arguments asserting that the
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`combination is based on hindsight”). Petitioner’s case also unjustifiably extends
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`Subramaniam’s teachings regarding Wi-Fi set-ups for “at-home wireless networks”
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`and “consumer-premises” devices to enable mobile devices to connect to another
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`person’s wireless network, i.e., outside of a home network, without authorization.
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`To the extent that the evidence on the patentability of claims 1 or 18 presents
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`a close call, the marked commercial success of Petitioner’s products, specifically the
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`Apple HomePod and HomePod Mini smart speakers, that are used to practice claims
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`1 and 18, “tip[s] the scales in favor of patentability.” Goodyear Tire & Rubber Co.
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`v. Ray-O-Vac Co., 321 U.S. 275, 279 (1944).
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`Accordingly, the Board should confirm the patentability of the Challenged
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`Claims.
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`II. BACKGROUND
`A.
`Summary of the ’451 Patent
`Wireless consumer devices were continuing to increase in popularity at the
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`priority date of the ’451 Patent. KOSS-2026, ¶13. One issue in using a wireless
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`consumer device is configuring the device to connect to an infrastructure Wi-Fi
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`network, i.e., a wireless network that is accessed via a wireless access point and
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`connected to an Internet service provider. APPLE-1001, 3:40-44. Conventionally,
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`prior to the ’451 Patent, wireless consumer devices could have a user interface which
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`enabled a user to select a wireless access point and input the access credentials
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`thereto. KOSS-2026, ¶13. Wireless consumer products without a suitable user
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`interface were generally provisioned with the access credentials for an infrastructure
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`wireless network upon plugging the wireless consumer device into a conventional
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`computing device (e.g., a computer) and then transferring the access credentials from
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`the computer to the wireless consumer device, i.e., a “plug-to-connect” process.
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`KOSS-2026, ¶14; APPLE-1001, 2:3-7. Access credentials can comprise the
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`name/ID (e.g., SSID), password and/or encryption type for the infrastructure
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`network. APPLE-1001, 5:13-16; KOSS-2026, ¶14.
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`Requiring a wireless consumer product to be plugged into a computer can be
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`a cumbersome process that presents numerous challenges. KOSS-2026, ¶¶15-16.
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`For example, a computer is not always available. Id., ¶16. Even when a computer is
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`available, the plug for connecting the wireless computer device to the computer may
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`not be available. Id. Also, smaller wireless consumer devices may not accommodate
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`a port for the plug to the computer. Id., ¶15.
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`The ’451 Patent solves this problem by providing a way “for configuring a
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`wireless device to communicate via an infrastructure wireless network, such as an
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`infrastructure Wi-Fi network, without having to physically plug the wireless device
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`into a computer to configure” the wireless device, “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 system and process could be used to “initially operate” the wireless
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`device, e.g., “out of the box.” Id., 4:35-36. A user of such a wireless device can
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`connect to an infrastructure wireless network in scenarios where a “plug-to-connect”
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`set-up scenario is not available or not preferred. KOSS-2026, ¶17. For these
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`reasons, the system and process described and claimed in the ’451 Patent provide a
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`significant improvement over alternative “plug-to-connect” systems. Id.
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`The ’451 Patent includes twenty-one (21) claims, of which claims 1 and 18
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`are independent. Claim 1 recites a system comprising a wireless access point, an
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`electronic device, a mobile computer device that is in communication with the
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`electronic device via an ad hoc wireless communication link, and one or more host
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`servers that are in communication with the mobile computer device via the Internet.
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`APPLE-1001, 8:30-53. The electronic device could be wireless earphones, a video
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`player, a lighting system, a camera, a medical device, or a gaming system, for
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`example. APPLE-1001, 2:51-67, 6:10-15. Claim 18 is similar to claim 1, but does
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`not affirmatively claim the wireless access point as a component of the system. Id.,
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`10:1-24.
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`Referring to Figure 1 of the ’451 Patent, reproduced below, a system 10
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`includes a wireless access point 24, an electronic device 12, a mobile computer
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`device 22 that is in communication with the electronic device 12 via an ad hoc
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`wireless communication link 18 (such as a Bluetooth link, APPLE-1001, 3:6-10),
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`and a host server 30 that is in communication with the mobile computer device 22
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`via the Internet 28. The electronic device could be an audio player (e.g., earphones),
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`a wireless video player, or a controller for electronic equipment, for example.
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`APPLE-1001, 2:58-67. The host server 30 receives and stores the credential data
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`for an infrastructure wireless network provided by the wireless access point 24. Id.,
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`57-67. The mobile computer device 22, which is in communication, via the Internet
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`28, with the host server 30 that stores the network credentials, transmits wirelessly,
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`via an ad hoc wireless communication link 18 (as opposed to via the infrastructure
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`network), the credential data for the infrastructure wireless network 26 stored by the
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`host server 30 to the electronic device 12. Upon receiving the credential data for the
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`infrastructure wireless network 26 from the mobile computing device 22, the
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`electronic device 12 connects to the wireless access point 24 using the credential
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`data received from the mobile computer device 22. In short, credential data for the
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`infrastructure network 26 received and stored on the host server 30 are transmitted
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`to the electronic device 12 via the ad hoc wireless communication link 18 so that the
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`electronic device 12 can access the Internet 28 via the wireless access point 24.
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`Moreover, the credential data are transmitted to the electronic device 12 without
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`requiring the electronic device 12 to be plugged into the mobile computing device
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`22. Id., 2:51-57.
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`B.
`Person of Ordinary Skill in the Art
`A person of ordinary skill in the art (POSITA) to which the ’451 Patent
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`pertains, according to the Patent Owner, “would be someone working in the
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`electrical engineering field with experience in wireless networks and wireless
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`products.” KOSS-2026, ¶23. The POSITA would have a bachelor’s degree in
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`electrical engineering and at least two or more years of work experience in the
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`industry. Id. Accordingly, a POSITA would have studied and have practical
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`experience with circuit design, speaker components, and wireless communication.
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`Id.
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`This skill level is similar, although not identical, to that proffered by
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`Petitioner. APPLE-1003, ¶26 (“at least a Bachelor’s Degree in an academic area
`
`emphasizing electrical engineering, computer science, or a similar discipline, and at
`
`least two years of experience in wireless communications across short distance or
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`local area networks”). The Board applied this articulation in the Institution Decision.
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`Institution Decision (Paper 9) at 25.
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`The difference between the parties’ articulation of the POSITA’s skill level is
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`relatively minor and Patent Owner does not assert that patentability turns on the
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`difference. Instead, the important point is that under both parties’ articulation the
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`skill level of a POSITA is relatively low because a person with just a relevant
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`bachelor’s degree and two years of experience would qualify as POSITA. The
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`inventions in the Challenged Claims are beyond the skill level of such a POSITA
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`who has a relatively low skill level and where the relied-upon references discourage
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`a POSITA from pursuing the combinations proposed by Petitioner. See KSR Int’l
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`Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (invention non-obvious where beyond
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`skill level of POSITA).
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`C.
`Petitioner’s Invalidity Grounds and Evidence
`Petitioner asserts that independent claims 1 and 18 are obvious under 35
`
`U.S.C. § 103 over the combination of Scherzer (APPLE-1004) and Subramaniam
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`(APPLE-1005). Pet., 1. Petitioner’s obviousness grounds, however, ignore
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`important teachings in the references that undermine the combination proposed by
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`Petitioner. As such, the asserted grounds fail to consider the references as a whole.
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`See W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983)
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`(prior art references must be considered in their “entireties,” including disclosures
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`that “diverge from and teach away from the invention at hand”). Petitioner’s
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`grounds also fail to follow the framework set forth in Graham v John Deere Co.,
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`383 U.S. 1 (1966) (the “Graham framework”) because Petitioner ignored Graham’s
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`second factor and did not identify differences between the applied references and the
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`independent claims.
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`A POSITA would not implement the teaching of Scherzer and Subramaniam
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`as proposed in the Petition to arrive at the subject matter of claims 1 and 18 because
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`the access credentials received and stored on the Scherzer server (i.e., Scherzer’s
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`access credentials) would not be transmitted and used by a mobile electronic device
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`in Subramaniam that has not been registered with Scherzer’s service (i.e., an
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`unrecognized device because it is not associated with a user account and, thus, not
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`recognized by Scherzer’s server) to connect to a wireless access point. The
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`unrecognized device would be unable to access the Internet by Scherzer’s access
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`credentials. Utilizing Scherzer’s access credentials by an unrecognized device is
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`technically precluded by Scherzer’s system given Scherzer’s account acceptability
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`requirement, which requires the existence of an account in order to determine the
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`acceptability thereof, and the associated tracking of the account’s wireless usage.
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`APPLE-1004, Abstract and claim 1; KOSS-2026, ¶¶56-58.
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`Alternatively, if Scherzer’s registration and tracking requirements were
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`ignored (despite Scherzer’s teachings to the contrary) such that Scherzer’s access
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`credentials could be freely disseminated to and used by unrecognized devices, the
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`foundation supporting Scherzer’s “community”-based system—a mutual exchange
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`of access credentials for the benefit of registered users, APPLE-1004, ¶[0015]—
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`would be undermined. In fact, unfettered dissemination of Scherzer’s access
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`credentials would be so problematic to its registered users that users would not
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`register with Scherzer’s service in the first place. KOSS-2026, ¶¶59-60.
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`
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`The two examples allegedly supporting the Petition’s obviousness grounds
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`based on Scherzer and Subramaniam exemplify the problems in the Petition’s
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`obviousness analysis. Pet., 32-35; APPLE-1003, ¶¶50-56. Both examples
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`demonstrate the Petition’s backwards, hindsight-based approach to the obviousness
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`analysis. The examples rely on techniques in Subramaniam to provide a “simplified
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`process” of configuring a device with the Scherzer software client so that the device
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`can access the Internet at a new location. Pet., 32; APPLE-1003, ¶50. However, in
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`both examples, the credential sharing theories diverge from the teachings in Scherzer
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`and Subramaniam as a whole. A more “simplified process” of accessing the Internet
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`at the new location is readily available without resorting to the Petition’s convoluted
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`combination of Scherzer and Subramaniam. “This type of piecemeal analysis is
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`precisely the kind of hindsight that the Board must not engage in.” In re NTP, Inc.,
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`654 F.3d 1279, 1299 (Fed. Cir. 2011). (“Care must be taken to avoid hindsight
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`reconstruction by using the patent in suit as a guide through the maze of prior art
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`references, combining the right references in the right way so as to achieve the result
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`of the claims in suit.”) (internal citation and quotation omitted).
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`Petitioner supports its assertions with testimony from Dr. Jeremy Cooperstock
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`(“Cooperstock”). Pet., 2; APPLE-1003. The Board should give little weight to
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`Cooperstock’s testimony because his testimony reveals the logical inconsistencies
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`in his analysis. Moreover, his methodology failed to follow the Graham framework
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`and did not consider the references in their entireties. For example, with respect to
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`Graham’s second factor—the identification of differences between the applied
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`references and the claimed subject matter—Cooperstock stated that Graham’s
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`second factor was a “key” factor in his analysis, but could not identify a single
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`difference between claim 1 and Scherzer, testifying, “I’m not sure how that is
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`relevant to my analysis.” KOSS-2025, 14:18-22. He also acknowledged that his
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`“analysis did not need to consider the relevance of [Scherzer’s] tracking” because
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`the claims in the ’451 Patent do not recite tracking. Id., 38:16-17. That is a
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`quintessential admission that he did not consider Scherzer in its entirety. Moreover,
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`his testimony on cross examination demonstrates his unwillingness to answer basic
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`questions about the relevant technology and the hypothetical examples he proposed
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`in his declaration, as well as his unfamiliarly with the teachings in the references.
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`Therefore, Cooperstock’s testimony, which departs from the established legal
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`framework and merely rubberstamps Petitioner’s counsel’s conclusions regarding
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`obviousness, should be afforded little, if any, weight. BMW of N. Am., LLC v.
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`Stragent, LLC, IPR2017-00677, Paper 32, 15 (PTAB June 13, 2018) (weight to be
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`afforded expert testimony impacted by uncertainty of analytical procedure
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`followed); Unified Patent Inc. v. Plectrum LLC, IPR2017-01430, Paper 30, 27 (Nov.
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`13, 2018) (conclusory expert testimony unsupported by facts afforded little weight).
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`For these reasons, Petitioner failed to show that the independent claims would
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`have been obvious over Scherzer and Subramaniam. All five grounds in the Petition
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`build on the combination of Scherzer and Subramaniam as applied to the
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`independent claims. Pet., 2. The additional references cited in the Petition and relied
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`upon for Grounds 1B-1F do not compensate for the deficiencies of Scherzer and
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`Subramaniam relative to the independent claims. Thus, none of the Challenged
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`Claims would have been obvious to a POSITA.
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`1.
`Scherzer
`Scherzer is directed to a “collaborative community of users,” which allows
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`the mutual “exchange” of access information between registered users. APPLE-
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`1004, ¶[0015].
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`Referring to Scherzer’s Figure 1 (reproduced below), registered users
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`represented by devices 104, 106, 108, 110, and 112 can access the Internet 114 via
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`the wireless access points 100 and 102 of other registered users. APPLE-1004,
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`¶[0020]. The application server 116, which is also connected to the Internet 114,
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`receives and stores the access information for the access points of the community of
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`registered users. Id.
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`Network access in Scherzer’s system is only provided to registered users
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`represented by devices 104, 106, 108, 110, 112. KOSS-2026, ¶57. In fact, in
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`Petitioner’s own words, a device is “required” to be registered with Scherzer’s
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`service to enjoy the benefits of Scherzer’s service:
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`Scherzer discloses a system that expands Internet access by allowing
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`registered users to obtain credential data necessary to connect to access
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`point of other registered users. To enjoy this benefit, a device is
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`required to be registered with Scherzer’s service using a software client
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`that allows the device to communicate with an application server 116.
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`Pet., 27; see also APPLE-1003, ¶43. Stated differently, Scherzer’s software only
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`shares access information between registered users.
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`In Scherzer’s network configuration process, a user transmits registration
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`information to the Scherzer server to register with the Scherzer service, and receives
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`and installs the Scherzer software client to utilize Scherzer’s service. APPLE-1004,
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`FIG. 2 (depicting a process executed by a user). The Scherzer server transmits the
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`Scherzer software client upon receipt of the registration information and
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`establishment of a user contribution account. Id., FIG. 3 (depicting a process
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`executed by the Scherzer server). Registration information can include the user’s
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`access point information, the user’s identifier information (e.g., media access control
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`(MAC) address)1, the user’s access point service set identifier (SSID), the user’s
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`access point wired equivalent privacy (WEP) key or password, and/or the user’s
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`access point Wi-Fi protected access (WPA) key or password. Id., ¶[0016].
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`1 A MAC address is a unique identifier for an electronic device that can be used as
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`a network address for communications, including for Wi-Fi networks. KOSS-2026,
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`¶44.
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`By providing registration information to the Scherzer server, the user’s device
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`is recognizable by the Scherzer server and the user’s access information is stored on
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`the Scherzer server.2 Id., ¶[0020]. The registered user allows other registered users
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`to receive the access information for the registered user’s access point and, “in
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`2 “Recognized devices,” as used herein, are devices associated with a registered user
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`of Scherzer’s system and, thus, are associated with a registered user’s account.
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`Recognized devices are recognized by the Scherzer server because identifying
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`information thereof has been provided to the Scherzer server, such as a MAC address
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`provided during
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`the user
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`registration process.
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` APPLE-1004, ¶[0016].
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`“Unrecognized devices,” as used herein, are devices that are not associated with a
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`registered user and not recognizable by the Scherzer server because identifying
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`information thereof was not provided to the Scherzer server. Whether an
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`unrecognized device is owned by a registered user or not is inconsequential to the
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`concerns described herein regarding Scherzer’s account acceptability requirements
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`and tracking. KOSS-2026, ¶46. I
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