IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`In re Patent of: Michael J. Koss, et al.
`U.S. Patent No.:
`10,298,451 Attorney Docket No.: 50095-0020IP2
`Issue Date:
`May 21, 2019
`
`Appl. Serial No.: 16/057,360
`
`Filing Date:
`August 7, 2018
`
`Title:
`CONFIGURING WIRELESS DEVICES FOR A WIRELESS IN-
`FRASTRUCTURE NETWORK
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT
`NO. 10,298,451 PURSUANT TO 35 U.S.C. §§311–319, 37 C.F.R. §42
`
`
`
`
`

`

`Attorney Docket No. 50095-0020IP2
`IPR of U.S. Patent No. 10,298,451
`TABLE OF CONTENTS
`
`I. 
`II. 
`
`INTRODUCTION ........................................................................................... 1 
`REQUIREMENTS UNDER 37 C.F.R. §42.104 ............................................. 1 
`A. 
`Standing ................................................................................................. 1 
`B. 
`Challenge and Relief Requested ........................................................... 2 
`’451 PATENT .................................................................................................. 6 
`A.  Overview ............................................................................................... 6 
`B. 
`Claim Construction ............................................................................... 8 
`IV.  DISCRETION UNDER § 314(a) SHOULD NOT PRECLUDE
`INSTITUTION ................................................................................................ 8 
`A. 
`The General Plastic Factors Favor Institution ...................................... 8 
`1. 
`Relevant Facts ............................................................................. 8 
`2. 
`The General Plastic Factors Support Institution ........................ 9 
`The Fintiv Factors Also Favor Institution ........................................... 11 
`1. 
`Stay ............................................................................................ 11 
`2. 
`Uncertain District Court Schedule ............................................ 11 
`3. 
`Early Stage of Parallel Proceedings .......................................... 14 
`4. 
`The Petition Raises Unique Issues ............................................ 16 
`5. 
`Petitioner’s Involvement in the Texas Litigation ..................... 16 
`6. 
`Other Considerations ................................................................ 17 
`THE CHALLENGED CLAIMS ARE UNPATENTABLE .......................... 17 
`A. 
`[GROUND 1A] – Scherzer And Subramaniam Render Claims 1, 6,
`12, 13, And 16-20 Obvious ................................................................. 17 
`1. 
`Scherzer ..................................................................................... 17 
`
`III. 
`
`V. 
`
`B. 
`
`i
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`

`

`Attorney Docket No. 50095-0020IP2
`IPR of U.S. Patent No. 10,298,451
`4. 
`Claim 1 ...................................................................................... 36 
`Claims 6, 12, 13, 16, 17 ............................................................ 51 
`5. 
`Claim 18-20 ............................................................................... 57 
`6. 
`[GROUND 1B] – Scherzer, Subramaniam, and Baxter Renders
`Claims 2, 7-10, And 21 Obvious ......................................................... 58 
`1. 
`Baxter ........................................................................................ 58 
`2. 
`Scherzer-Subramaniam-Baxter Combination ........................... 60 
`[GROUND 1C] –Scherzer, Subramaniam, and Drader Renders Claims
`3 And 4 Obvious .................................................................................. 69 
`1. 
`Drader ........................................................................................ 69 
`2. 
`Scherzer-Subramaniam-Drader Combination........................... 70 
`[GROUND 1D] – Scherzer, Subramaniam, and Ramey Renders Claim
`5 Obvious ............................................................................................ 72 
`1. 
`Ramey ....................................................................................... 72 
`2. 
`Scherzer-Subramaniam-Ramey Combination .......................... 73 
`[GROUND 1E] – Scherzer, Subramaniam, and Montemurro Renders
`Claims 11 And 15 Obvious ................................................................. 74 
`[GROUND 1F] – Scherzer, Subramaniam, and Gupta Renders Claim
`14 Obvious .......................................................................................... 79 
`
`
`B. 
`
`C. 
`
`D. 
`
`E. 
`
`F. 
`
`
`
`ii
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`

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`Attorney Docket No. 50095-0020IP2
`IPR of U.S. Patent No. 10,298,451
`
`
`
` EXHIBITS
`
`APPLE-1001
`
`U.S. Patent No. 10,298,451 to Koss, et al. (“the ’451 patent”)
`
`APPLE-1002
`
`Excerpts from the Prosecution History of the ’451 patent (“the
`Prosecution History”)
`
`APPLE-1003
`
`Declaration of Dr. Jeremy Cooperstock
`
`APPLE-1004
`
`U.S. Pat. App. Pub. No. 2007/0033197 (“Scherzer”)
`
`APPLE-1005
`
`U.S. Pat. App. Pub. No. 2011/0289229 (“Subramaniam”)
`
`APPLE-1006
`
`U.S. Provisional Pat. App. No. 61/331,459 (“’459 Provisional”)
`
`APPLE-1007
`
`U.S. Provisional Pat. App. No. 60/728,918 (“’918 Provisional”)
`
`APPLE-1008
`
`U.S. Provisional Pat. App. No. 60/687,463 (“’463 Provisional”)
`
`APPLE-1009
`
`U.S. Pat. App. Pub. No. 2007/0245028 (“Baxter”)
`
`APPLE-1010
`
`U.S. Pat. App. Pub. No. 2011/0025879 (“Drader”)
`
`APPLE-1011
`
`U.S. Pat. App. Pub. No. 2010/0307916 (“Ramey”)
`
`APPLE-1012
`
`U.S. Pat. App. Pub. No. 2010/0165879 (“Gupta”)
`
`APPLE-1013
`
`U.S. Pat. No. 9,949,305 (“Montemurro”)
`
`APPLE-1014
`
`U.S. Provisional Pat. App. No. 61/248,328 (“’328 Provisional”)
`
`APPLE-1015
`
`U.S. Pat. App. Pub. No. 2002/0131404 (“Mehta”)
`
`APPLE-1016
`
`Plaintiff KOSS Corporations’ Preliminary Infringement Con-
`tentions, KOSS Corporation v. Apple Inc., 6:20-cv-00665
`(WDTX)
`
`APPLE-1017
`
`Example Order Governing Proceedings - Patent Case
`
`iii
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`

`

`Attorney Docket No. 50095-0020IP2
`IPR of U.S. Patent No. 10,298,451
`Agreed [Proposed] Scheduling Order, KOSS Corporation v. Ap-
`ple Inc., 6:20-cv-00665 (WDTX)
`
`Katie Buehler, “Texas Patent Trials Halted Due to COVID-19
`Spike,” Law360, available at https://www.law360.com/ip/arti-
`cles/1330855/texas-patent-trials-halted-due-to-covid-19-spike.
`
`Scott McKeown, District Court Trial Dates Tend to Slip After
`PTAB Discretionary Denials, available at https://www.pa-
`tentspostgrant.com/district-court-trial-dates-tend-to-slip-after-
`ptab-discretionary-denials/ (Jul. 24, 2020)
`
`Agreed Amended Scheduling Order, Fintiv, Inc. v. Apple, Inc.,
`Civil Action No. A-19-CV-1238 (WDTX)
`
`Letter from Michael Pieja to Darlene F. Ghavimi re Conditional
`Stipulation dated 3/7/2021
`
`APPLE-1018
`
`APPLE-1019
`
`APPLE-1020
`
`APPLE-1021
`
`
`APPLE-1022
`
`
`
`
`
`
`iv
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`

`

`Attorney Docket No. 50095-0020IP2
`IPR of U.S. Patent No. 10,298,451
`
`I.
`INTRODUCTION
`On 11/25/2020, Apple Inc. (“Apple”) petitioned for Inter Partes Review
`
`(“IPR”) of claims 1-21 (“the Challenged Claims”) of U.S. Patent No. 10,298,451
`
`(“the ’451 patent”) in IPR2021-00255. Amidst final preparation of that petition,
`
`just three weeks prior, Koss filed preliminary infringement contentions for-the-first
`
`time advancing that the ’451 patent was entitled to a 7/12/2010 invention date—
`
`more than two years prior to the earlier invention date previously advanced by
`
`Koss. While Koss has not yet revealed proof sufficient to substantiate this newly
`
`proclaimed priority date, its allegation demanded further searching and this petition
`
`from Apple since, if Koss were to prove this date, it would antedate prior art refer-
`
`ences in Apple’s first petition. Through its responsive search efforts, Apple estab-
`
`lished the foundation for this petition—the Scherzer-Subramaniam combination.
`
`This combination and tertiary combinations stemming from it, each of which is
`
`unique to this petition, establish the obviousness of the Challenged Claims, even if
`
`Koss is able to substantiate the earlier alleged invention date.
`
`II. REQUIREMENTS UNDER 37 C.F.R. §42.104
`A.
`Standing
`Apple certifies that the ’451 patent is available for IPR. This petition is be-
`
`ing filed within one year of service of a complaint against Apple. Apple is not
`
`barred or estopped from requesting this review of the Challenged Claims.
`
`1
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`

`

`Attorney Docket No. 50095-0020IP2
`IPR of U.S. Patent No. 10,298,451
`B. Challenge and Relief Requested
`Apple requests IPR of the Challenged Claims, which are supported by testi-
`
`mony from Dr. Cooperstock. APPLE-1003, ¶¶26-27 (setting forth skill level of a
`
`person of ordinary skill in the art (“POSITA”)).
`
`Ground
`
`Claims
`
`Basis Under §103
`
`1A
`
`1B
`
`1C
`
`1D
`
`1E
`
`1F
`
`1, 6, 12, 13, 16-20
`
`Scherzer, Subramaniam
`
`2, 7-10, 21
`
`Scherzer, Subramaniam, Baxter
`
`3, 4
`
`5
`
`Scherzer, Subramaniam, Drader
`
`Scherzer, Subramaniam, Ramey
`
`11, 15
`
`Scherzer, Subramaniam, Montemurro
`
`14
`
`Scherzer, Subramaniam, Gupta
`
`The ’451 patent was filed 8/7/2018, and claims priority to applications filed
`
`as early as 3/15/2013. Apple does not concede that the Challenged Claims are en-
`
`titled to the claimed priority date of 3/15/2013 or Koss’s alleged invention date of
`
`7/12/2010, but applies references that remain prior art even if these dates were
`
`used. APPLE-1003, ¶¶12-15. The references below are prior art at least under the
`
`bases noted below:
`
`2
`
`

`

`Attorney Docket No. 50095-0020IP2
`IPR of U.S. Patent No. 10,298,451
`Date(s)
`Basis
`
`Reference
`
`Scherzer
`
`2/8/2007
`
`§102(b)
`
`Subramaniam
`
`5/5/2010
`
`§102(e)
`
`Baxter
`
`10/18/2007
`
`§102(b)
`
`Drader
`
`1/25/2007
`
`§102(e)
`
`Ramey
`
`1/5/2009
`
`§102(e)
`
`Gupta
`
`12/31/2008
`
`§102(e)
`
`Montemurro
`
`10/2/2009
`
`§102(e)
`
`Subramaniam was filed 5/2/2011 and claims priority to U.S. Provisional Pat.
`
`No. 61/331,459 (“’459 Provisional”) (APPLE-1006), filed 5/5/2010. Dr. Cooper-
`
`stock explains that “Subramaniam is entitled to the benefit of its provisional filing
`
`date, i.e., the May 5, 2010 filing date” since the ’459 Provisional disclosure “pro-
`
`vides sufficient detail that would have led a POSITA to conclude that the inventor
`
`of the ’459 Provisional had possession of the invention claimed in Subrama-
`
`niam…” APPLE-1003, ¶42.
`
`3
`
`

`

`Subramaniam Claim 11 (Excerpts)
`
`Attorney Docket No. 50095-0020IP2
`IPR of U.S. Patent No. 10,298,451
`Support
`
`A computer-implemented method…:
`
`APPLE-1006, 13, Fig-
`
`ures 2, 4
`
`triggering said electronic device to enter a config-
`
`Id., 19
`
`uration mode,…;
`
`gathering connection settings comprising security
`
`Id., 20-21
`
`settings for said wireless network from said com-
`
`puting device…;
`
`connecting via a network link said computing de-
`
`Id., 20-21
`
`vice to said electronic device…; and
`
`communicating across said network link with said
`
`Id., 21
`
`electronic device in order to configure said elec-
`
`tronic device with said connection settings.
`
`Montemurro was filed 8/25/2010 and claims priority to U.S. Provisional Pat.
`
`No. 61/248,328 (“’328 Provisional”) (APPLE-1014), filed 10/2/2009. Dr. Cooper-
`
`stock explains that “Montemurro is entitled to the benefit of its provisional filing
`
`date,” i.e., 10/2/2009, since the ’328 Provisional disclosure “provides sufficient de-
`
`tail that would have led a POSITA to conclude that the inventor of the ’328 Provi-
`
`sional had possession of the invention claimed in Montemurro…” APPLE-1003,
`
`4
`
`

`

`Attorney Docket No. 50095-0020IP2
`IPR of U.S. Patent No. 10,298,451
`
`¶76.
`
`Montemurro Claim 1 (Excerpts)
`
`Support
`
`A method for peer-to-peer (P2P) communication
`
`APPLE-1014, [0027]-
`
`in a wireless local area network (WLAN),…:
`
`[0032]
`
`“transmitting…first peer capability information to
`
`Id., [0034]-[0037], FIG. 1
`
`a second peer wireless station (STA2) using a ca-
`
`pability discovery protocol request…;
`
`in response…, receiving…second peer capability
`
`Id.
`
`information of the STA2 using a capability dis-
`
`covery protocol response…; and
`
`establishing…the P2P connection between the
`
`Id.
`
`STA1 and the STA2…;
`
`wherein the first peer capability information and
`
`Id., [0067]
`
`the second peer capability information are defined
`
`as an XML schema…
`
`The prior art combinations and obviousness rationales advanced were not before
`
`the Office during examination.
`
`5
`
`

`

`Attorney Docket No. 50095-0020IP2
`IPR of U.S. Patent No. 10,298,451
`
`III.
`
`’451 PATENT
`A. Overview
`The ‘451 patent describes techniques for providing a wireless device with
`
`credentials for an infrastructure wireless network, e.g., a WiFi network, that were
`
`input on a remote server and passed to the wireless device through a mobile com-
`
`puter. APPLE-1001, 2:52-54. Figure 1 shows system 10 including earphone set
`
`12 as one example of such a wireless device. Id., 3:2-4.
`
`6
`
`

`

`Attorney Docket No. 50095-0020IP2
`IPR of U.S. Patent No. 10,298,451
`
`APPLE-1001, FIG. 1
`
`
`
`Wireless access point 24 provides an infrastructure wireless (e.g., WiFi) net-
`
`work. Id., 2:52-54, 3:40-44. Earphones 14 may communicate wirelessly with con-
`
`tent access point (CAP) 16 via an ad hoc communication link 18, and CAP 16 may
`
`connect with, e.g., via a USB connector, or be integrated into, a personal digital au-
`
`dio player (DAP) 20 or computer 22. Id., 3:17-21, 3:29-30. Both computer 22 and
`
`wireless access point 24 may be connected to communications network 28, e.g.,
`
`7
`
`

`

`Attorney Docket No. 50095-0020IP2
`IPR of U.S. Patent No. 10,298,451
`the Internet, along with remote server system 30. APPLE-1001, 3:45-50; APPLE-
`
`1003, ¶¶16-24.
`
`B. Claim Construction
`Apple submits that all claim terms should be construed according to the
`
`Phillips standard. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005); 37
`
`C.F.R. §42.100. No formal claim constructions are necessary because “claim
`
`terms need only be construed to the extent necessary to resolve the controversy.”
`
`Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011); AP-
`
`PLE-1003, ¶25.
`
`IV. DISCRETION UNDER § 314(a) SHOULD NOT PRECLUDE IN-
`STITUTION
`A. The General Plastic Factors Favor Institution
`In its General Plastic decision, the Board offers guidance on when follow-
`
`on petitions against the same patent are appropriate. IPR2016-01357, Paper 19, 9-
`
`10 (PTAB Sep. 6, 2017) (precedential). Here, taking account of factors articulated
`
`in that decision, exercise of discretion to deny institution of this petition would be
`
`inappropriate.
`
`1.
`Relevant Facts
`On 11/6/2020, Koss served preliminary infringement contentions alleging,
`
`for the first time, that the ’451 patent was entitled to the benefit of a 7/12/2010
`
`date—more than two years before each of the 5/14/2012 purported invention date
`
`8
`
`

`

`Attorney Docket No. 50095-0020IP2
`IPR of U.S. Patent No. 10,298,451
`from the prosecution history, which was earlier than the 3/15/2013 claimed priority
`
`date.
`
`Yet, Koss produced no meaningful evidence to corroborate its newly alleged
`
`invention date. Apple progressed to complete (within weeks of the contentions) its
`
`ongoing efforts on a first petition advancing grounds based on references qualify-
`
`ing as prior art relative to the invention date offered by Koss during original prose-
`
`cution, but not the invention date alleged by Koss in the contentions. And, upon re-
`
`ceipt of the contentions, Apple re-invigorated search efforts, this time designed to
`
`unearth references qualifying as prior art relative to the invention date newly ad-
`
`vanced in Koss’ then-recent contentions, and those efforts yielded identification of
`
`Subramaniam, Montemurro, and combinations applied presently.
`
`2.
`The General Plastic Factors Support Institution
`Until receiving Koss’ contention, Apple had no reason to look for references
`
`beyond those applied in the first petition. Indeed, Apple was not made aware of
`
`Koss’s alleged 7/12/2010 invention date until 11/6/2020—nearly four months after
`
`the initial complaint. By this point, Apple’s invalidity analysis based on the
`
`5/14/2012 purported invention date had matured, as had its petition drafting efforts.
`
`With insufficient evidence offered by Koss to substantiate its newly-offered earlier
`
`invention date, Apple worked diligently to complete and file its first petition rather
`
`than stalling submission.
`
`9
`
`

`

`Attorney Docket No. 50095-0020IP2
`IPR of U.S. Patent No. 10,298,451
`As to timing, Apple filed its first petition within four months of the com-
`
`plaint, and Apple is filing this petition just four months after receiving Koss’ con-
`
`tentions, the first indication by Koss that it was alleging an earlier invention date.
`
`Apple worked diligently in each instance. Indeed, it is Koss that is responsible for
`
`the timing of this second submission, and the need for it. Koss could have alleged
`
`the 7/12/2010 invention date during original prosecution when offering evidence of
`
`an invention date earlier than the proclaimed priority; it did not. And, in co-pend-
`
`ing litigation, nothing prevented Koss from revealing its intention to pursue an ear-
`
`lier date than indicated by prosecution; but Koss waited nearly four months to re-
`
`veal this within its contentions.
`
`Finally, this petition is being filed within one year from service of Koss’s
`
`complaint and in accordance with 35 U.S.C. § 315(b). Apple has also yet to re-
`
`ceive Koss’s preliminary response to the first petition, or the Board’s decision on
`
`whether to institute review. Apple is unaware of any reason to believe that this pe-
`
`tition would unduly tax the Board’s resources, or that the Board would be unable to
`
`issue a final written decision (“FWD”) within one year of institution. And, as
`
`noted, any prejudice alleged by Koss as a result of this petition is the product of its
`
`own delay in bringing forward its new invention date.
`
`10
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`

`

`Attorney Docket No. 50095-0020IP2
`IPR of U.S. Patent No. 10,298,451
`B.
`The Fintiv Factors Also Favor Institution
`The Apple Inc. v. Fintiv, Inc. factors, and recent Board decisions applying
`
`them, similarly weigh against discretionary denial. IPR2020-00019, Paper 11, 5-6
`
`(Mar. 20, 2020) (precedential). Recent Board decisions applying these factors con-
`
`firm discretionary denial is not warranted here.1
`
`1.
`Stay
`This factor does not support discretionary denial, as Apple will pursue stay if
`
`institution is granted and the Board has repeatedly indicated that it “will not at-
`
`tempt to predict how the district court in the related district court litigation will
`
`proceed because the court may determine whether or not to stay any individual
`
`case, including the related one, based on a variety of circumstances and facts be-
`
`yond [its] control and to which the Board is not privy.” IPR2019-01393, Paper 24,
`
`7 (Informative); see also IPR2020-00158, Paper 16, 7.
`
`2.
`Uncertain District Court Schedule
`“This factor looks at the proximity of the trial date to the date of [FWD] to
`
`assess the weight to be accorded a trial date set earlier than the expected [FWD]
`
`
`1 Apart from the Fintiv factors favoring institution, the Fintiv framework should be
`
`overturned because it is both legally invalid and unwise policy. Specifically, the
`
`framework (1) exceeds the Director’s authority, (2) is arbitrary and capricious, (3)
`
`and was adopted without notice-and-comment rulemaking.
`
`11
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`

`

`Attorney Docket No. 50095-0020IP2
`IPR of U.S. Patent No. 10,298,451
`date.” IPR2020-00944, Paper 20, 61. As recognized by the Board, where “there is
`
`at least some persuasive evidence that delays are possible,” trial dates upward of
`
`six months before the FWD are insufficient to deny institution. Id. Here, as noted
`
`below, there is evidence that the trial date in the related district court litigation
`
`(“Texas Litigation”) may be delayed and the earliest projected trial date is April
`
`18, 2022, less than six months before the expected final written decision (FWD)
`
`and not early enough therefore to support discretionary denial.
`
`Further, the Federal Circuit indicates that the current trial date cannot be re-
`
`lied upon without speculation, and thus, error. APPLE-1019; In re Apple Inc., 979
`
`F.3d 1344 (Fed. Cir. 2020); see IPR2020-01280, Paper 17, 13-16. As the Federal
`
`Circuit explained, “a court’s general ability to set a fast-paced schedule is not par-
`
`ticularly relevant,” especially where “the forum [i.e., WDTX] itself has not histori-
`
`cally resolved cases so quickly.” The Federal Circuit therefore applied the forum
`
`average time-to-trial (i.e., over two years), rather than looking at the presiding
`
`judge’s scheduled trial date, noting that reliance on the district court’s own sched-
`
`uled trial date—even by the district judge who sets the schedule—would require
`
`legally-erroneous speculation as to whether that date could hold. The same princi-
`
`ple applies here—the Board’s finding on this factor requires a comparison involv-
`
`ing the projected time to trial in the parallel litigation (i.e., WDTX). However, per
`
`the Federal Circuit, “if Judge Albright (who would be most knowledgeable about
`
`12
`
`

`

`Attorney Docket No. 50095-0020IP2
`IPR of U.S. Patent No. 10,298,451
`whether trial will proceed as scheduled) cannot take his own scheduled trial date as
`
`a given without engaging in speculation and committing error, then the Board (who
`
`has no special knowledge about the judge’s ability to timely reach trial) cannot ei-
`
`ther.” IPR2020-01332, Paper 12, 2-3. For the Board to assume that trial in the
`
`parallel litigation will occur as scheduled on 4/18/2022 would therefore be errone-
`
`ous and speculative. Instead, as noted by the Federal Circuit, the only relevant date
`
`for the Board to consider is the WDTX’s average time to trial, which exceeds two
`
`years, yielding a projected trial date in 2023. See In re Apple Inc., 2020 WL
`
`6554063, *8. By comparison, even a conservative estimate yields an earlier PTAB
`
`conclusion, with a fall 2022 final written decision.
`
`Moreover, even if encouraged by Koss to look past the above-noted Federal
`
`Circuit guidance by engaging in impermissible speculation, the result of necessary
`
`speculation would itself reveal that discretionary denial is inappropriate. As of
`
`July, 2020, “70% of [WDTX] trial dates initially relied upon by the PTAB to deny
`
`petitions have slid.” APPLE-1020. Such delays even impacted the seminal NHK
`
`and Fintiv cases, where, after the Board denied institution, associated trial dates
`
`were delayed to after the expected FWD dates by the courts—the same WDTX in
`
`Fintiv as is handling the Texas Litigation. See IPR2018-01680, Paper 22, 17, n. 6
`
`(PTAB Apr. 3, 2019) (“In the district court case running parallel to NHK Spring,
`
`13
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`

`

`Attorney Docket No. 50095-0020IP2
`IPR of U.S. Patent No. 10,298,451
`the court ultimately moved the trial date back six months, illustrating the uncer-
`
`tainty associated with litigation schedules.”); APPLE-1021, 2 (resetting Fintiv trial
`
`to October 4, 2021, nearly five months after the FWD would have been due in the
`
`associated IPR). The current trial date is particularly uncertain since Apple has
`
`moved to transfer the case to another venue, and thus, should not be given any sig-
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`nificant weight.
`
`In contrast, despite the pandemic, the Board has adhered to the one-year stat-
`
`utory deadline for FWDs prescribed by 35 U.S.C. § 316(a)(11). Overall, this fac-
`
`tor does not support discretionary denial. See id., 8-10.
`
`3.
`Early Stage of Parallel Proceedings
`By any objective standard, Apple filed these petitions at an early stage of the
`
`litigation, a fact that “has weighed against exercising the authority to deny institu-
`
`tion under NHK.” IPR2020-00156, Paper 10, 11-12 (June 15, 2020). Here, Apple
`
`filed this petition less than eight months after being served with the complaint,
`
`barely four months after Koss served infringement contentions, and approximately
`
`a month-and-a-half after Apple served preliminary invalidity contentions. APPLE-
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`1016, APPLE-1018, 2-3; see IPR2020-00019, Paper 11, 11–12 & n.22. No sub-
`
`stantive orders have been issued by the court in the underlying litigation. Indeed,
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`Attorney Docket No. 50095-0020IP2
`IPR of U.S. Patent No. 10,298,451
`as of the filing of this Petition, the court has not yet heard or ruled on Apple’s ini-
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`tial motion to strike Koss’s complaint. And the court’s Markman hearing is not
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`scheduled until April 22, 2021, almost seven weeks away. APPLE-1018, 3.
`
`It is entirely appropriate that Apple is filing its petition after receiving in-
`
`fringement contentions—particularly because Koss asserted infringement of all but
`
`two claims of the ’451 Patent. IPR2018-01498, Paper 13, 8-9 (finding that waiting
`
`“to better understand the asserted claims, the bases for the infringement allegations
`
`… and to identify relevant prior art” should not weigh in favor of discretionary de-
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`nial). And the timing relative to those contentions also is reasonable, as Koss used
`
`those contentions to offer a new invention date that inspired searching for earlier
`
`prior art, despite Koss signaling during prosecution that a later invention date was
`
`applicable. As noted in addressing General Plastics, Koss failed to earlier reveal
`
`its intention to pursue an earlier invention date. See §IV.A, supra.
`
`Moreover, this petition is being filed before the one-year statutory bar date.
`
`IPR2018-01680, Paper 22, 18 (a petition filed two months before bar date is “well
`
`within the timeframe allowed by statute, weighing heavily in [petitioner’s] favor”).
`
`Overall, this factor weighs against discretionary denial.
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`Attorney Docket No. 50095-0020IP2
`IPR of U.S. Patent No. 10,298,451
`4.
`The Petition Raises Unique Issues
`The Texas Litigation is still early in its development and, the district court
`
`requires “significant[] narrowing [of] the number of claims asserted” for trial. AP-
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`PLE-1017, 10. The number of claims adjudicated at the district court will likely be
`
`significantly less than the number of claims addressed here. There will be a signif-
`
`icant likelihood of these unaddressed claims being reasserted against future prod-
`
`ucts, counseling against discretionary denial. IPR2020-00156, Paper 10, 17.
`
`Nonetheless, to eliminate any doubt as to the absence of meaningful overlap
`
`between the proceedings, Apple has stipulated that, unless the Board denies or later
`
`vacates institution of this petition, Apple will not seek resolution in the trial of in-
`
`validity based on any ground “that utilizes, as a primary reference, U.S. Patent Ap-
`
`plication Publication No. 2007/0033197 (‘Scherzer’).” APPLE-1022.
`
`Overall, the lack of overlap between issues in an instituted IPR and the re-
`
`lated district court litigation weighs strongly against discretionary denial. See, e.g.,
`
`IPR2020-01113, Paper 12, 15-19 (Jan. 22, 2021).
`
`5.
`Petitioner’s Involvement in the Texas Litigation
`With respect to Factor 5, the Fintiv decision “says nothing about situations
`
`in which the petitioner is the same as, or is related to, the district court defendant.”
`
`IPR2020-00122, Paper 15, *10 (PTAB May 15, 2020) (APJ Crumbley, dissenting).
`
`In cases such as the one at hand, where the parties are the same, the
`factor is neutral. To hold otherwise—that the factor weighs in favor
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`Attorney Docket No. 50095-0020IP2
`IPR of U.S. Patent No. 10,298,451
`of denial if the parties are the same—would, in effect, tip the scales
`against a petitioner merely for being a defendant in the district court.
`
`Id.
`
`6. Other Considerations
`Neither Apple nor any other party has previously challenged this patent in a
`
`PTAB post-issuance proceeding. Moreover, as described in Section II.B, the
`
`Board has not previously considered the grounds set forth in this petition or sub-
`
`stantively similar grounds.
`
`Finally, Apple’s patentability challenges are strong, which favors institution.
`
`IPR2020-00156, Paper 10, 20-21. For these reasons, this factor also weighs
`
`against discretionary denial.
`
`In summary, the Fintiv factors weigh against discretionary denial.
`
`V. THE CHALLENGED CLAIMS ARE UNPATENTABLE
`A.
`[GROUND 1A] – Scherzer And Subramaniam Render Claims 1,
`6, 12, 13, And 16-20 Obvious
`1.
`Scherzer
`Scherzer describes systems in which a community of registered users can
`
`share, through a server, credential data used to access each other’s access points.
`
`As a result, in Scherzer’s system, each user is “able to access the Internet, its ser-
`
`vices and information, from a large number of locations.” APPLE-1004, [0015],
`
`[0020]. As shown in Figure 1 below, multiple devices (devices 104, 106, 108, 110,
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`Attorney Docket No. 50095-0020IP2
`IPR of U.S. Patent No. 10,298,451
`112) can share credential data through application server 116 for the networks pro-
`
`vided by wireless access points 100 and 102. APPLE-1003, ¶28.
`
`APPLE-1004, Figure 1
`
`
`
`A user of Scherzer’s system can allow other users to access “the user’s ac-
`
`cess point in exchange for being allowed to access other user’s access points.” AP-
`
`PLE-1004, [0020]. Each user “registers with the provider of network access by
`
`communicating with provider application server 116.” Id. Application server 116
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`Attorney Docket No. 50095-0020IP2
`IPR of U.S. Patent No. 10,298,451
`“receives and stores registration information” from each user. Id. This infor-
`
`mation is used “to set up a user contribution account and to enable other registered
`
`users of the network to access the user’s access point.” Id., [0021]. The registra-
`
`tion information stored in the provider application server can include information
`
`that enables a second user to use the user’s access point, e.g., an SSID, wired
`
`equivalent privacy (WEP) key or password, and WiFi protected access (WPA) key
`
`or password. Id.; APPLE-1003, ¶29.
`
`Users of Scherzer’s system install a software client on a device, e.g., a laptop
`
`or PDA, to enable the device “to contact the provider application server and to ac-
`
`quire access information for network access points that are made available by a
`
`given user to other network users,” e.g., via a cell phone network. APPLE-1004,
`
`[0020]-[0021], [0023]. The access information “enables the user to use another
`
`user’s access point in order to gain access to the Internet,” and “can include
`
`SSID’s, WEP or WPA passwords or keys or any other appropriate information for
`
`accessing access points.” Id., [0021], [0024]. In this way, the software client ena-
`
`bles the user to “contact the provider’s application server in order to obtain access
`
`information for a location where the user is not able to use the user’s own access
`
`point” and gain access to the Internet at said location. Id.; APPLE-1003, ¶30.
`
`Figure 4 shows a process in some implementations of Scherzer’s system for
`
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`Attorney Docket No. 50095-0020IP2
`IPR of U.S. Patent No. 10,298,451
`providing network access that can run as part of a software client on a user’s de-
`
`vice:
`
`APPLE-1004, Figure 4
`
`
`
`As shown, when Scherzer’s system is used in a particular location, “in [step]
`
`400, visible access points are determined,” and, “[i]n [step] 402, access infor-
`
`mation with respect to the visible access points is determined.” APPLE-1004,
`
`[0019], [0023]. Step 402’s process of determining access information can involve
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`Attorney Docket No. 50095-0020IP2
`IPR of U.S. Patent No. 10,298,451
`the information being “downloaded or accessed via a cellular connection . . . or any
`
`other appropriate manner.” As Scherzer explains, Figure 5 provides an implemen-
`
`tation example of step 402. Id., [0023]-[0024]. Similarly, Figure 6 discloses a
`
`corresponding process that the application server 116 can perform to provide ac-
`
`cess information to a device that implements step 402 using the Figure 5 process.
`
`Id., [0025]; APPLE-1003, ¶31-32.
`
`Referring again to Figure 4, once the device has acquired the necessary ac-
`
`cess information from the server, “[i]n 404, an access point is selected” and, “[i]n
`
`406, a connection is attempted to the selected access point.” APPLE-1004, [0023].
`
`Scherzer also explains that “communication via the access point is attempted to the
`
`Internet.” Id. To ensure that the user device has access to the Internet, in 408, “it
`
`is determined if the connection attempt was successful” and “[i]n the event that the
`
`attempt was not successful, control is passed to 404.” Id.; APPLE-1003, ¶33.
`
`2.
`Subramaniam
`Subramaniam relate