`UNITED STATES PATENT AND TRADEMARK OFFICE
`
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
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`BOSE CORPORATION,
`Petitioner,
`
`v.
`
`KOSS CORPORATION,
`Patent Owner.
`_____________________
`
`CASE: IPR2021-00612
`U.S. PATENT NO. 10,206,025
`_____________________
`
`
`PATENT OWNER SUR-REPLY
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`505753875.1
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`IPR2021-00612
`Patent Owner Sur-Reply
`
`I.
`II.
`III.
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`DR. WILLIAMS’S TESTIMONY IS UNRELIABLE ................................... 1
`PETITIONER FAILED TO SHOW THAT CLAIM 1 WOULD HAVE
`BEEN OBVIOUS ............................................................................................ 4
`A. Ground 1A ............................................................................................. 4
`B.
`Ground 2A ............................................................................................. 8
`IV. SIGNAL STRENGTH CLAIMS................................................................... 10
`V.
`CLAIMS 40-51 .............................................................................................. 15
`A. Grounds 1F-1H .................................................................................... 15
`B.
`Grounds 2A-2C ................................................................................... 18
`VI. CLAIMS 29-37 AND 53 ............................................................................... 20
`VII. CLAIMS 10, 38 AND 51 .............................................................................. 22
`VIII. COMMERCIAL SUCCESS OF AIRPODS DEMONSTRATES
`NONOBVIOUSNESS OF CHALLENGED CLAIMS ................................. 24
`IX. CONCLUSION .............................................................................................. 26
`
`
`
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`
`
`i
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`TABLE OF AUTHORITIES
`
`IPR2021-00612
`Patent Owner Sur-Reply
`
` Page(s)
`
`Cases
`Adobe Inc. v. RAH Color Techs. LLC,
`IPR2019-00627, Paper 59 (PTAB Dec. 12, 2019) ............................................... 3
`Apple Inc. v. Int’l Trade Comm’n,
`725 F.3d 1356 (Fed. Cir. 2013) .......................................................................... 24
`Ariosa Diagnostics v. Verinata Health, Inc.,
`805 F.3d 1359 (Fed. Cir. 2015) .................................................................... 22, 23
`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) ............................................................................ 6
`Chums, Inc. v. Cablz, Inc.,
`IPR2014-01240, Paper 43 (PTAB Feb. 8, 2016) ............................................ 8, 18
`Fisher-Price, Inc. v. Evenflo Co.,
`Case No. 05-cv-280S, 2006 WL 1740263 (WDNY June 26, 2006) .................. 15
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) .................................................................................................. 4
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) .................................................................... 22, 23
`KCJ Corp. v. Kinetic Concepts, Inc.,
`223 F.3d 1351 (Fed. Cir. 2000) .......................................................................... 21
`Rohm and Haas Co. v. Brotech Corp.,
`127 F.3d 1089 (Fed. Cir. 1997) ............................................................................ 4
`Ultratec, Inc. v. CaptionCall LLC,
`872 F.3d 1267 (Fed. Cir. 2017) ............................................................................ 2
`
`
`
`
`ii
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`IPR2021-00612
`Patent Owner Sur-Reply
`
`
`Other Authorities
`37 C.F.R. § 42.65(a) ................................................................................................... 4
`Consolidated Trial Practice Guide, November 2019 ………............................22, 23
`
`iii
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`
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`EXHIBIT LISTING
`
`IPR2021-00612
`Patent Owner Sur-Reply
`
`DESCRIPTION
`EXHIBIT
`KOSS-2001 Docket Report, Koss Corp. v. Bose Corp., Case No. 6:20-cv-
`00661-ADA (W.D. Tex.) (as of June 16, 2021)
`
`KOSS-2002 Docket Report, Koss Corp. v. Apple Inc., Case No. 6:20-cv-
`00665-ADA (W.D. Tex.) (as of June 15, 2021)
`
`KOSS-2003 U.S. Pub. 2009/0129605 A1 to Camp, Jr. et al. (“Camp”)
`
`KOSS-2004
`
`Claim Construction Order, Koss Corp. v. Apple Inc., Case No.
`6:20-cv-00665-ADA, Dkt. 83 (W.D. Tex.) (June 2, 2021)
`
`KOSS-2005 Docket Report, Apple Inc. v. Koss Corp., Case No. 4:20-cv-
`00504-JST (N.D. Cal.) (as of June 15, 2021)
`
`KOSS-2006 Order Denying Defendant’s Motion to Transfer, Koss Corp. v.
`Apple Inc., Case No. 6:20-cv-00665-ADA, Dkt. 76
`(Public/redacted version) (W.D. Tex. April 22, 2021)
`
`KOSS-2007 Order Granting Motion to Transfer, Apple Inc. v. Koss Corp.,
`Case No. 4:20-cv-00504-JST, Dkt. 72 (N.D. Cal. May 12,
`2021)
`
`KOSS-2008 U.S. Patent 8,190,203
`
`KOSS-2009 U.S. Patent 8,571,544
`
`KOSS-2010 U.S. Patent 8,655,420
`
`KOSS-2011 U.S. Patent 9,049,502
`
`KOSS-2012 U.S. Patent 9,438,987
`
`KOSS-2013 U.S. Patent 9,497,535
`
`KOSS-2014 U.S. Patent 9,729,959
`
`KOSS-2015 U.S. Patent 9,986,325
`
`iv
`
`
`
`
`
`EXHIBIT
`KOSS-2016
`
`KOSS-2017
`
`IPR2021-00612
`Patent Owner Sur-Reply
`
`DESCRIPTION
`In re Bose, Case No. 2021-145 (Fed. Cir. May 25, 2021)
`
`R. Davis, “Albright Says He’ll Very Rarely Put Cases On
`Hold For PTAB,” IP Law 360, May 11, 2021
`(www.law360.com/articles/1381597/print?section=ip)
`(accessed June 14, 2021)
`
`KOSS-2018 Order Denying Motion to Stay, Kerr Machine, Co. v. Vulcan
`Indus. Holdings, LLC, Case No. 6-20-cv-00200-ADA (W.D.
`Tex. April 7, 2021)
`
`KOSS-2019 Order Governing Proceedings - Patent Case, W.D. Tex., Waco
`Division, Judge Albright, Feb. 23, 2021
`
`KOSS-2020 Defendant’s Preliminary Invalidity Contentions, Koss Corp. v.
`Bose Corp., Case No. 6:20-cv-00661-ADA (W.D. Tex. April
`2, 2021)
`
`KOSS-2021
`
`Letter from M. Rader, Wolf Greenfield, to Darlene Ghavimi,
`K&L Gates, April 6, 2021
`
`KOSS-2022 Order, In re Apple Inc., Case No. 2021-147, D.I. 25 (Fed. Cir.
`August 4, 2021)
`
`KOSS-2023 Deposition Transcript of Dr. T. Williams, Dec. 2, 2021
`
`KOSS-2024 Declaration of Joseph C. McAlexander, IIII
`
`KOSS-2025 Declaration of Nicholas S. Blair
`
`KOSS-2026 Apple Inc., Form 10-K, for fiscal year ended September 26,
`2020
`
`KOSS-2027
`
`“Apple AirPods are now available,” Apple Newsroom, Dec.
`13, 2016 (www.apple.com/newsroom/2016/12/apple-airpods-
`are-now-available/) (last accessed Sept. 8, 2021)
`
`v
`
`
`
`
`
`EXHIBIT
`KOSS-2028
`
`KOSS-2029
`
`IPR2021-00612
`Patent Owner Sur-Reply
`
`DESCRIPTION
`“AirPods, the world’s most popular wireless headphones, are
`getting even better,” Apple Newsroom, Mar. 20, 2019
`(www.apple.com/newsroom/2019/03/airpods-the-worlds-
`most-popular-wireless-headphones-are-getting-even-better/)
`(last accessed Sept. 8, 2021)
`
`“Apple reveals new AirPods Pro, available October 30,”
`Apple Newsroom, Mar. 20, 2019
`(www.apple.com/newsroom/2019/10/apple-reveals-new-
`airpods-pro-available-october-30/) (last accessed Sept. 8,
`2021)
`
`KOSS-2030 D. Curry, “Apple Statistics (2021),” Business of Apps,
`updated August 16, 2021
`(www.businessofapps.com/data/apple-statistics/) (last
`accessed August 18, 2021)
`
`KOSS-2031
`
`KOSS-2032
`
`KOSS-2033
`
`KOSS-2034
`
`J. Cipriani, “Your AirPods just got a quiet update,” CNET,
`February 1, 2017 (www.cnet.com/tech/mobile/how-to-update-
`the-firmware-of-apples-airpods/) (last accessed September 8,
`2021)
`
`J. Clover, “Apple Releases New Firmware Update for
`AirPods,” MacRumors, May 24, 2017
`(www.macrumors.com/2017/05/24/airpods-firmware-update/)
`(last accessed September 8, 2021)
`
`J. Clover, “Apple Releases New Firmware for AirPods 2 and
`AirPods Pro,” MacRumors, December 16, 2019
`(www.macrumors.com/2019/12/16/apple-releases-new-
`airpods-firmware/) (last accessed September 8, 2021)
`
`C. Miller, “Apple releases updated firmware version for
`AirPods and AirPods Pro,” 9to5Mac, April 28, 2021
`(9to5mac.com/2021/04/28/apple-releases-updated-firmware-
`version-for-airpods-and-airpods-pro/) (last accessed
`September 8, 2021)
`
`vi
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`
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`
`
`EXHIBIT
`KOSS-2035
`
`IPR2021-00612
`Patent Owner Sur-Reply
`
`DESCRIPTION
`J. Clover, “Apple Updates AirPods 2 and AirPods Pro
`Firmware to Version 3A283,” MacRumors, September 14,
`2020 (www.macrumors.com/2020/09/14/apple-updates-
`airpods-firmware-3a283/) (last accessed September 15, 2021)
`
`KOSS-2036 M. Potuck, “AirPods dominate wireless headphone market as
`global growth hits 90% for 2020,” 9to5Mac, Jan. 27, 2021
`(https://9to5mac.com/2021/01/27/airpods-dominate-wireless-
`headphone-market/) (last accessed Sept. 15, 2021)
`
`KOSS-2037
`
`Exhibit 1014 from IPR2021-00546 (“Plaintiff Koss
`Corporation’s Preliminary Infringement Contentions,” Koss
`Corp. v. Apple, Inc., Case No. 6:20-cv-00665 (W.D. Tex. Nov.
`6, 2020))
`
`KOSS-2038
`
`Exhibit F to Dkt. No. 1 in Koss Corp. v. Apple, Inc., Case No.
`6:20-cv-00665 (W.D. Tex. July, 22, 2020)
`
`KOSS-2039
`
`“Connect your AirPods and AirPods Pro to your iPhone,”
`Apple Support (support.apple.com/en-us/HT207010) (last
`accessed Sept. 9, 2021)
`
`KOSS-2040 U.S. Patent 7,881,745 B1 to Rao et al.
`
`KOSS-2041
`
`Excerpts from Merriam Webster’s Collegiate Dictionary, 10th
`ed., 1996
`
`KOSS-2042
`
`Excerpts from Microsoft Computer Dictionary, 5th ed.,
`
`KOSS-2043
`
`Techopedia Online Dictionary definition of “database”
`(www.techopedia.com/definition/1185/database-db) (accessed
`Dec. 22, 2021)
`
`KOSS-2044 U.S. Pub. No. 2006/0238163 A1 to Chen
`
`KOSS-2045 U.S. Patent No. 7,920,891 B2 to Kwak
`
`vii
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`
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`
`
`IPR2021-00612
`Patent Owner Sur-Reply
`
`DESCRIPTION
`EXHIBIT
`KOSS-2046 D. Koshy et al., “Evolution of SIM Cards - What’s Next?,”
`2018 Int’l Conf. on Advances in Computing, Communications
`and Informatics (ICACCI), Sept. 19-22, 2018, pp. 1963-1967
`
`KOSS-2047 Deposition Transcript of Dr. T. Williams, April 28, 2022
`
`viii
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`
`
`I.
`
`INTRODUCTION
`
`IPR2021-00612
`Patent Owner Sur-Reply
`
`This Sur-reply is responsive to Petitioner’s Reply (Paper 29, “Reply”),
`
`which in turn is responsive to the Patent Owner Response (Paper 20, “POR”).
`
`The Board should confirm the patentability of the Challenged Claims, i.e.,
`
`claims 1-56.
`
`II. DR. WILLIAMS’S TESTIMONY IS UNRELIABLE
`Petitioner’s Reply relied upon a Reply Declaration (BOSE-1152) from one
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`of its expert witnesses, Dr. Tim Williams (“Williams”). Neither Petitioner nor
`
`Williams deny that under cross-examination, Williams answered “No” when asked
`
`if he applied the POSA standard enunciated in his original declaration upon which
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`the Petition was based and upon which institution was granted:
`
`Q: Dr. Williams, looking at paragraph 34, do you see towards the bottom
`you say, “A POSA would have been an individual -- an individual with
`wireless networking experience, including at least a bachelor’s degree
`in electrical engineering or a related field, and experience with wireless
`networks. More education could substitute for experience and vice
`versa.” Do you see that?
`
`A: Yes. You read that correctly.
`
`Q: And is that the standard you applied for a person of ordinary skill in the
`art forming your opinions in your declaration for the ’025?
`
`A: No. Well, that part’s of it. A POSA in this case is a team who have
`experience in wireless networking and people who have experience in
`headset design.
`
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`- 1 -
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`
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`KOSS-2023, 29-30 (emphasis added).
`
`IPR2021-00612
`Patent Owner Sur-Reply
`
`Williams’s answer was not a mistake as confirmed by:
`
`• His explanation for why he did not apply his original POSA standard,
`
`i.e., a “POSA in this case is a team of people who have experience in
`
`wireless networks and people who have experience in headset design”
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`(id. at 30 (emphasis added)), whereas in his direct testimony the POSA
`
`was a person with wireless network experience and without direct
`
`experience with headphone-specific implementations. BOSE-1003,
`
`¶¶34-35;
`
`• His testimony that he would only be one of the team members of the
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`POSA team (KOSS-2023, 33), whereas in his direct testimony he “was a
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`person of more than ordinary skill.” BOSE-1003, ¶37 (emphasis added);
`
`and
`
`• He did not testify in his Reply Declaration that his testimony was a
`
`mistake. BOSE-1152, ¶85.
`
`Williams’s repudiation of the framework for his original invalidity analysis
`
`taints the entirety of his opinions. Simply put, Williams did not perform the
`
`analysis that he swore to in his original declaration, which undercuts his overall
`
`credibility. Ultratec, Inc. v. CaptionCall LLC, 872 F.3d 1267, 1273 (Fed. Cir.
`
`
`
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`- 2 -
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`
`
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`2017) (“no reasonable fact finder would refuse to consider evidence of inconsistent
`
`IPR2021-00612
`Patent Owner Sur-Reply
`
`sworn testimony” and such inconsistencies “bear on the overall credibility of the
`
`expert”). Further, his direct testimony (BOSE-1003) did not explain why the
`
`Challenged Claims would have been obvious under his revised POSA “team”
`
`standard, thereby undercutting his credibility. See Adobe Inc. v. RAH Color Techs.
`
`LLC, IPR2019-00627, Paper 59 at 6 (PTAB Dec. 12, 2019) (reliability and
`
`credibility of expert testimony depends on whether underlying facts have been
`
`disclosed and explained) (citing Update to Office Patent Trial Practice Guide at 4
`
`(Aug. 2018)).
`
`Williams’s rebuttal testimony characterizing his cross-examination (BOSE-
`
`1152, ¶85) should not be considered because it is improper. His rebuttal testimony
`
`is not in response to evidence submitted by Patent Owner. It is an after-the-fact
`
`attempt to rehabilitate Williams’s testimony, despite the fact that Petitioner’s
`
`counsel had, but declined, the opportunity for re-direct. KOSS-2023, 69. Thus,
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`Williams’s rebuttal testimony is improper. See Liberty Mutual Ins. Co. v.
`
`Progressive Casualty Ins. Co., CMB2012-00002, Paper 66 at 68-69 (PTAB Jan.
`
`23, 2014) (rebuttal testimony should draw attention to patent owner evidence it
`
`rebuts).
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`Further, Williams’s rebuttal testimony that his opinions would not have
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`
`
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`- 3 -
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`
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`changed if his “team” standard was applied (BOSE-1160, ¶86) is unreliable
`
`IPR2021-00612
`Patent Owner Sur-Reply
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`because he never resolved the skill level of other team members. He merely
`
`testified that the other team members would be “knowledgeable about headphone
`
`form factors.” BOSE-1003, ¶35. By not resolving the team members’ educational
`
`or vocational experiences, or what they would know about headphone form factors,
`
`Williams failed to follow the Graham framework for the POSA team. Graham v.
`
`John Deere Co., 383 U.S. 1, 17 (1966) (level of ordinary skill in the pertinent art
`
`must be resolved). Consequently, his “team” POSA opinions should be afforded
`
`little weight. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the
`
`underlying facts or data on which the opinion is based is entitled to little or no
`
`weight.”); Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir.
`
`1997) (nothing requires fact finder to credit inadequately explained testimony of
`
`expert).
`
`Williams’s unreliable testimony should not be credited and the patentability
`
`of the Challenged Claims should be upheld for this reason alone.
`
`III. PETITIONER FAILED TO SHOW THAT CLAIM 1 WOULD HAVE
`BEEN OBVIOUS
`A. Ground 1A
`The system of claim 1 specifically requires a headphone assembly, that is
`
`separate from and in wireless communication with the mobile digital audio player
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`
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`- 4 -
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`
`
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`(“DAP”), where the headphone assembly comprises, among other things, a
`
`IPR2021-00612
`Patent Owner Sur-Reply
`
`processor for, upon activation of a user control of the headphone assembly,
`
`initiating transmission of a request to a server that is itself in wireless
`
`communication with the DAP. BOSE-1001, 18:2-33. Thus, the DAP has two
`
`wireless connections: with the headphone and with the server. Reply, 8.
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`Petitioner did not refute that Revani-446’s handset, the purported DAP in
`
`Petitioner’s Rezvani-Rezvani-Skulley combination, does not have a connection to
`
`the headset. POR, 12; BOSE-1097, Fig. 7. To overcome this, Petitioner’s theory
`
`swaps Revvani-446’s headset (headset 704-1 in Figure 1 of Revzani-446) with the
`
`alleged headset shown in Figure 2 of Rezvani-875 (BOSE-1016). Pet., 13; BOSE-
`
`1003, ¶¶99-100l; Reply, 2-3. Petitioner’s theory includes that Rezvani-875’s
`
`headset already communicates with a music server like Rezvani-446’s WPM
`
`server. Reply, 3. Petitioner’s Ground 1A fails to show claim 1 is unpatentable for
`
`two reasons.
`
`First, although Rezvani-875’s headset supports simultaneous operation over
`
`multiple wireless interfaces, such that it could be used in Rezvani-446’s system
`
`(Reply, 3), this theory overlooks that Rezvani-446’s system does not have a
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`wireless connection between the headset and handset. The fact that Rezvani-875’s
`
`headset can support simultaneous operation over multiple wireless interfaces at
`
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`- 5 -
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`
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`best suggests that Rezvani-875’s headset could connect to a music server, like
`
`IPR2021-00612
`Patent Owner Sur-Reply
`
`Rezvani-446’s WPM server, and to an arbitrary handset. There is no suggestion
`
`that Rezvani-875’s headset, once swapped into Rezvani-446’s system, would also
`
`have a connection to the very same handset that also has a connection with
`
`Rezvani-446’s WPM server. In other words, the mere fact that Rezvani-875’s
`
`headset would be able to communicate with an arbitrary handset/DAP is
`
`insufficient to support the further modification, needed to prove the obviousness of
`
`claim 1, that Rezvani-875’s headset connects to the very handset (purportedly
`
`Rezvani-446’s handset in Petitioner’s Ground 1A theory) that is also connected to
`
`the server to which the request from the headset is initiated. “[O]bviousness
`
`concerns whether a skilled artisan not only could have made but would have been
`
`motivated to make the combinations or modifications of prior art to arrive at the
`
`claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir.
`
`2015) (citing InTouch Techs, Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352
`
`(Fed.Cir.2014)) (emphasis in original).
`
`As explained in the POR, connecting Rezvani-875’s headset to the very
`
`handset that is also connected to the server to which the request from the headset is
`
`initiated would not have been obvious because Rezvani-875’s headset is already
`
`connected to the server for the same purpose, specifically access music files on the
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`
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`- 6 -
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`
`
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`server. POR, 13; Reply, 3 (Petition explained that “Rezvani-875’s headset already
`
`IPR2021-00612
`Patent Owner Sur-Reply
`
`communicates with a music server, like Rezvani-446’s WPM server”) (emphasis in
`
`original). Why would Rezvani-875’s headset need to connect to a handset that has
`
`a wireless connection to a server to which Rezvani-875’s headset is already
`
`connected? Petitioner contended that Rezvani-875’s ¶[0033] answered this
`
`question in Petitioner’s favor (Reply, 3), but ¶[0033] merely discloses that the
`
`headset can get music files from different sources, not that it should connect to the
`
`handset that is in communication with a server to which Rezvani-875’s headset is
`
`already connected. Instead, as explained by Patent Owner’s expert witness, Mr.
`
`Joseph McAlexander III (“McAlexander”), a POSA would not have been
`
`motivated to add that connection Rezvani-875’s headset. KOSS-2024, ¶¶42-43.
`
` Second, the record evidence fails to show that Rezvani-875’s Figure 2
`
`depicts a headset. The probative value of a non-witness statement in another IPR
`
`(see Reply, 4), where the essence of Figure 2 was not in dispute, is outweighed by
`
`the McAlexander’s testimony. McAlexander testified that Rezvani-875 does not
`
`directly refer to what is depicted in Figure 2 as a “headset”; that Rezvani-875’s
`
`Figure 2 uses a different reference number than the reference numbers used in
`
`Rezani-875 for a “headset”; and that the components depicted in Figure 2 are
`
`inconsistent with a headset. KOSS-2024, ¶¶36-40. Accordingly, McAlexander’s
`
`
`
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`- 7 -
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`
`
`
`explanation outweighs Williams’s testimony. Rezvani-875 refers to what is
`
`IPR2021-00612
`Patent Owner Sur-Reply
`
`depicted in Figure 2 as a “device” (BOSE-1016, ¶[0021]) and Williams testified
`
`that Rezvani-875 refers to many types of devices, like handsets, as a “device”
`
`besides a headset. BOSE-1152, ¶12; KOSS-2047, 16-17. Williams further
`
`confirmed that a handset possesses the components shown in Rezvani-875’s Figure
`
`2. KOSS-2047, 17-18. Moreover, Williams’s testimony that the SIM depicted in
`
`Rezvani-875’s Figure 2 could have “an electronic form” is irrelevant because that
`
`development occurred after the priority date. KOSS-2047, 20-21.
`
`The compelling effect of McAlexander’s testimony is confirmed by
`
`Petitioner’s failure to ask McAlexander about his opinions on this topic. See
`
`Chums, Inc. v. Cablz, Inc., IPR2014-01240, Paper 43 at 26 (PTAB Feb. 8, 2016)
`
`(failing to question witness undermines contrary positions regarding obviousness
`
`of claim).
`
`B. Ground 2A
`Petitioner’s Reply relied on mischaracterizations both the record evidence
`
`and its original theory to support its ill-fated theory. The POR explained that
`
`Goldstein’s ¶[0076] teaches that Goldstein’s PAA software on a device (e.g.,
`
`Schrager’s based unit, the purported DAP in the asserted Schrager-Goldstein
`
`combination) precludes the device from the simultaneous wireless communication
`
`links for claim 1. POR, 21-22. To rebut this argument, Petitioner relied on a
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`- 8 -
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`
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`
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`representation of what Goldstein’s ¶[0076] states. Petitioner asserts that
`
`IPR2021-00612
`Patent Owner Sur-Reply
`
`Goldstein’s ¶[0076] states would incorporate multiple wireless protocols (plural).
`
`Reply, 10; Ex. 1152, ¶24 (Williams testifying that “Goldstein’s devices
`
`incorporated and support multiple wireless protocols …”) (emphasis added). In
`
`fact, Goldstein’s ¶[0076] refers to a singular protocol: “a communications protocol
`
`(TCP/IP, USB, IEEE 1394, IEEE 802.11, Bluetooth, A2SP, GSM, CDMA, or
`
`other) ….” Ex. 1026, ¶[0076] (emphasis added); see also Ex. 2047 (Williams
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`confirming that Goldstein’s ¶[0076] uses “protocol” in the singular).
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`Dovetailing with the fact that a PAA-equipped device (e.g., the purported
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`DAP, Schrager’s base unit, in Petitioner’s Schrager-Goldstein combination) only
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`has a single wireless protocol, the POR explained that under Petitioner’s theory,
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`Schrager’s headset, when equipped with Goldstein’s PAA software, could not
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`connect simultaneously to both the server and the purported DAP. POR, 23;
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`KOSS-2024, ¶¶46-47. In response, Petitioner asserted that in its combination, the
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`purported DAP, i.e., Schrager’s base unit, connects to the headphones “using
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`Schrager’s pre-existing ‘wireless communication link 115 ….’” Reply, 9
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`(emphasis in original). That is misleading. Petitioner’s original theory is that the
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`purported DAP “include[s] appropriately tailored versions of Goldstein’s PAA
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`software to communicate wirelessly with (i) Goldstein’s Server System … and (ii)
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`other headsets having Goldstein’s PAA software ….” Ex. 1003, ¶327; Pet., 62-63.
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`IPR2021-00612
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`Thus, Petitioner’s original theory plainly was that the purported DAP used
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`“appropriately tailored versions of Goldstein’s PAA software” to communicate
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`with headsets, and did not Schrager’s pre-existing wireless communication link.
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`At best for Petitioner, its theory is that the alleged DAP communicates two
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`different ways with PAA-enabled headsets: (1) using Schrager’s pre-existing
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`wireless communication link 115 to communicate with the PAA-modified headset
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`105; but (2) using PAA software to communicate with other headsets. Petitioner
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`never explained why the alleged DAP would use two different techniques to
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`communicate with two different headsets.
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`Thus, Petitioner’s Ground 2A theory for claim 1 is unsupportable.
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`IV. SIGNAL STRENGTH CLAIMS
`The challenged “Signal Strength” claims are dependent claims 4, 7, 9, 14,
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`15, 17, 19, 23, 24, 26, 28, 32, 33, 35, 37, 44, 45, 47, 49 and 50. These claims recite
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`that the headphone assembly “transitions to play digital audio content received
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`wirelessly from
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`the second digital audio source via a second wireless
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`communication link based on, at least, a signal strength level for the second
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`wireless communication link.” See e.g. BOSE-1001, 18:56-60 (claim 4).
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`Petitioner relied on Harada (BOSE-1098) in the various grounds challenging
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`these claims. The POR explained that in one embodiment, the signal strength that
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`IPR2021-00612
`Patent Owner Sur-Reply
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`Harada’s prioritization switching technique uses is a signal strength of the wireless
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`signal between the destination device and a base station for the destination device,
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`which is irrelevant to the Signal Strength claims. POR, 35. Petitioner responded
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`that it relied on a different embodiment, specifically the embodiment in Harada’s
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`¶[0011]. Reply, 17-18. Harada’s ¶[0011] describes a device that can use “received
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`signal level of the short-range wireless communication function between devices”
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`as “a selection factor.” BOSE-1098, ¶[0011] (emphasis added). Harada does not
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`explain that its “selection” is the same as the Signal Strength claims’
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`“transitioning.” Williams’s original declaration merely opined that Harada’s
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`device can “‘dynamically select[] one or more devices based on the prioritization
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`list’ and … ‘control[] connection through the communication unit with the selected
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`one or more devices.’” BOSE-1003, ¶198 (quoting BOSE-1098, ¶[0014]). Neither
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`the Petition nor Williams, in his original declaration, explained how Harada’s
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`“selection” compares to the claimed “transitioning.” Both just assumed that they
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`are the same. For example, the Petition states, “Schrager-Goldstein-Harada’s
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`headphone meets [4C] because it uses Harada’s technique to automatically
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`transition …” (Pet. 86, emphasis added), without ever connecting Harada’s
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`“selecting”
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`to
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`the alleged “transitioning” and without
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`identifying any
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`“transitioning” in Harada. See also BOSE-1003, ¶208 (similar). As the POR
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`explained, Harada does not disclose an electronic device that transitions, or
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`switches, from playing digital audio content received from a first device to playing
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`digital audio content received from a second device based on the signal strength
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`level of the wireless communication link between the electronic device and the
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`second device. POR, 34; KOSS-2024, ¶¶50-52. Indeed, McAlexander confirmed
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`in his cross examination that Harada’s “selection process” relied upon by Petitioner
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`does “not show[] or describe[]” the claimed “transitioning” of the Signal Strength
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`claims “at all.” BOSE-1141, 144:11-16.
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`The other portions of Harada relied upon by Petitioner also do not support
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`Petitioner’s theory. Petitioner wrote that Harada’s ¶[0085] “describes switching
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`based on short-range signal strength ….” Reply, 18 (emphasis added). Petitioner’s
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`quote from ¶[0085], however, like Harada’s ¶[0011], never mentions switching. It
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`only refers to “selection.” Petitioner also relied on Harada’s Figure 8. Reply, 19.
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`Figure 8, however, discloses connecting “with one or more devices ….” BOSE-
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`1098, Fig. 8, steps S26 and S28. Petitioner provided no theory or explanation as to
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`why merely connecting to one or more devices constitutes transitioning from
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`playing digital audio content received from a first device to playing digital audio
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`context from a second device based on signal strength, and provided no evidence
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`to rebut McAlexander’s testimony on this issue. See KOSS-2024, ¶51.
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`IPR2021-00612
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`The POR identified an additional reason that the Petition failed to show that
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`the Signal Strength claims would have been obvious: the constant database
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`updating in Harada would not have been suitable for wireless headsets, especially
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`small form factor true wireless (TWS) earbuds. POR, 37-40; KOSS-2024, ¶¶53-
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`56. In response, Petitioner resorted to platitudes and mischaracterizations of the
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`record. As to platitudes, Petitioner asserted that Patent Owner “impermissibly
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`treats POSAs as automatons” (Reply, 20), but this simplistic assertion fails to
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`address McAlexander’s thorough explanation of why Harada’s constant updates
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`pose a problem. See KOSS-2024, ¶¶53-56. As to mischaracterizations, Williams’s
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`Reply Declaration asserted that “there is no disclosure in Harada that [the] initial
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`registration of devices requires storing information that is ‘constantly updated.’”
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`BOSE-1152, ¶67. This opinion is misleading because Williams arbitrarily limited
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`his opinion, without explanation, to Harada’s “initial registration” process.
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`Williams confirmed that Harada’s tables are constantly updated over time:
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`• Harada’s connection device number registration unit 186 stores the
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`number of connection devices connected “concurrently” (BOSE-1098,
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`¶[0072]), which Williams considered would “change over time.”
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`KOSS-2047, 26-27;
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`• Harada’s prioritization
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`is performed for registration of high
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`availability devices “in the vicinity of the user or cellular phone” and
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`“by dynamically corresponding to the movement position of the user
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`and the cellular phone” (BOSE-1098, ¶[0083]), and Williams
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`confirmed that there are “situations where the high-availability
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`devices could change over time as the user moves.” KOSS-2047, 28;
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`and
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`• Harada’s prioritization
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`list acceptance unit 14 accepts
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`the
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`prioritization list dependent on information such as position and time
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`of the cell phone (BOSE-1098, ¶[0071]), and Williams confirmed that
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`there are situations where the position of the cell phone relative to
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`other devices would change over time. Ex. 2047, 29-30.
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`Thus, outside of initial registration, the evidence is that Harada’s tables are
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`constantly updated (see also KOSS-2024, ¶54 (Harada’s tables “are constantly
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`updated”)), which leads to the problems identified by McAlexander that make
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`Petitioner’s proposed combination nonobvious. KOSS-2024, ¶¶55-56. This is a
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`second reason that the Signal Strength claims would not have been obvious.
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`V. CLAIMS 40-51
`A. Grounds 1F-1H
`Whether claims 40-51 are invalid under Grounds 1F-1H appears to boil
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`down to claim construction. The POR explained that if Davis’s earbud 46 does not
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`constitute the claimed “body portion” of claim 40, then Petitioner’s invalidity
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`theories for claim 40 under Grounds 1F-1H fail. Petitioner’s Reply did not dispute
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`this. Instead, Petitioner doubled-down that Davis’s earbud alone is the “body
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`portion,” but Petitioner’s claim construction argument is flawed. Petitioner
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`asserted that the “body portion” should be construed “according to its plain
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`meaning” to be “part of a ‘body.’” Reply, 21. However, the plain meaning of
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`“body portion” should be the portion of the earphone that acts or serves as the
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`“body” of the earphone, which is the “main, central, or principal part” of the
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`earphone. POR, 43; see also Fisher-Price, Inc. v. Evenflo Co., Case No. 05-cv-
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`280S, 2006 WL 1740263, *3 (WDNY June 26, 2006) (“When the term ‘body’ is
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`used in connection with an intimate object, its ordinary meaning is … the main,
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`central or principal part of something …”). No reasonable person would consider
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`the tail (or empennage) of an airplane to be the “body portion” of the airplane,
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`even though it is part of the airplane, because the tail is not the main, central, or
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`principal part of the airplane; the fuselage is the main part. Similarly, the “body
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`portion” of the earphone is the main or central part of the earphone.
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`IPR2021-00612
`Patent Owner Sur-Reply
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`The intrinsic evidence that Petitioner relied upon does not support
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`Petitioner’s theory. Claim 40 recites that the body portion “sits at least partially in
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`an ear of the user ….” The “at least partially” language implies that the body
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`portion does not need to be inserted totally inserted into the ear, much less inserted
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`into a specific portion of the, such as the ear canal. Patent Owner’s interpretation
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`of “body portion” also comports with the “body 12” in Figure 1B of the ’025
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`Patent that includes both the ear canal portion 14 and an exterior portion 15.
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`Figure 1B shows the elongated portion (unnumbered) extending from
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