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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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`BOSE CORPORATION,
`Petitioner,
`
`v.
`
`KOSS CORPORATION,
`Patent Owner.
`_____________________
`
`CASE: IPR2021-00612
`U.S. PATENT NO. 10,206,025
`_____________________
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
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`IPR2021-00612
`Patent Owner’s Preliminary Response
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`TABLE OF CONTENTS
`
`I. 
`II. 
`
`C. 
`
`INTRODUCTION ........................................................................................... 1 
`BACKGROUND ............................................................................................. 3 
`A. 
`’025 Patent ............................................................................................. 3 
`B. 
`Related Patents ...................................................................................... 4 
`C. 
`Related Matters ...................................................................................... 4 
`III.  THE BOARD SHOULD DENY INSTITUTION BECAUSE OF THE
`CO-PENDING LITIGATIONS ....................................................................... 6 
`A. 
`Factor 1: The District Court Has Not Issued a Stay ............................. 8 
`B. 
`Factor 2: Proximity of the Scheduled Trial Date to the Board’s
`Statutory Deadline for Written Decision ............................................. 10 
`Factor 3: The Parties and Court Will Have Invested Substantial
`Resources in the Bose Litigation Prior to the Institution
`Decision ............................................................................................... 15 
`Factor 4: The Issues Raised in the Petition Overlap
`Substantially with Issues Raised in the Bose Litigation ..................... 17 
`Factor 5: Petitioner is a Defendant in the Bose Litigation ................. 20 
`Factor 6: Other Considerations That Influence the Board’s
`Exercise of Discretion Weigh in Favor of Denying Institution .......... 21 
`G.  Holistic Assessment of Fintiv Factors ................................................. 22 
`IV.  THE BOARD SHOULD DECLINE TO INSTITUTE UNDER 35
`U.S.C. § 325(D) ............................................................................................. 24 
`A. 
`The Same or Substantially the Same Prior Art or Arguments
`Previously Were Presented to the Patent Office ................................. 25 
`
`D. 
`
`E. 
`F. 
`
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`V. 
`
`IPR2021-00612
`Patent Owner’s Preliminary Response
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`1. 
`
`2. 
`
`3. 
`
`The Similarities and Material Differences Between the
`Asserted Art and the Prior Art Involving During
`Examination .............................................................................. 25 
`The Cumulative Nature of the Asserted Art and the Prior
`Art Evaluated During Examination .......................................... 28 
`The Extent of Overlap Between the Arguments Made
`During Examination and the Manner in Which Petitioner
`Relies on the Prior Art .............................................................. 29 
`B.  Whether the Patent Office Materially Erred in Evaluation the
`Art or Arguments ................................................................................. 30 
`1. 
`The Extent to Which the Asserted Art Was Evaluated
`During Examination Including Whether the Prior Art
`Was the Basis for Rejection ...................................................... 30 
`2.  Whether Petitioner Has Pointed Out Sufficiently How the
`Examiner Erred in its Evaluation of the Asserted Prior
`Art ............................................................................................. 31 
`The Extent to Which Additional Evidence and Facts are
`Presented in the Petition Warrant Reconsideration of the
`Prior Art or Arguments ............................................................. 32 
`Conclusion ........................................................................................... 32 
`C. 
`THE BOARD SHOULD DENY INSTITUTION BECAUSE THERE
`IS NOT A REASONABLE LIKELIHOOD THAT PETITIONER
`WILL PREVAIL ON ONE CHALLENGED CLAIM ................................. 32 
`A. 
`For Ground 1A, the Petition’s Rationales for Combining
`Rezvani-446, Rezvani-875 and Skulley are Defective ....................... 33 
`1. 
`The Proposed Motivation to Combine Rezvani-446,
`Rezvani-875, and Skulley is Conclusory .................................. 33 
`The Proposed Rezvani-446, Rezvani-875, and Skulley
`Combination Relies on Hindsight Reconstruction ................... 35 
`
`3. 
`
`2. 
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`IPR2021-00612
`Patent Owner’s Preliminary Response
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`B. 
`
`For Ground 2A, the Petition’s Rationales for Combining
`Schrager and Goldstein are Defective ................................................. 38 
`1. 
`The Petition Inappropriately Characterizes the Personal
`Audio Assistant (PAA) of Goldstein ........................................ 39 
`The Proposed Motivation to Combine Schrager and
`Goldstein is Inaccurate and Conclusory ................................... 41 
`VI.  CONCLUSION .............................................................................................. 42
`
`2. 
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`iii
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`IPR2021-00612
`Patent Owner’s Preliminary Response
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte
`GmbH,
`IPR2019-01469, Paper 6 (PTAB Feb 13, 2020) ..........................................passim
`Amazon.com, Inc. v. Barnesandnoble.com, Inc.,
`239 F.3d 1343 (Fed. Cir. 2001) .......................................................................... 36
`Apple Inc. v. ContentGuard Holdings, Inc.,
`IPR2015-00445, Paper 9 (PTAB July 9, 2015) .................................................. 35
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (PTAB March 20, 2020) ...................................passim
`Apple Inc. v Koss Corporation,
`IPR2021-00255, Paper 22 (PTAB June 3, 2021) ......................................... 13, 14
`Belden Inv. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) .......................................................................... 36
`Bose Corp. v. Koss Corp.,
`IPR2021-00297, Paper 16 (PTAB June 3, 2021) ........................................passim
`Cellco P’ship v. Huawei Tech. Co.,
`IPR2020-01356, Paper 13, 14 (PTAB Mar. 5, 2021) ......................................... 19
`Cisco Sys., Inc. v. Monarch Networking Sols. LLC,
`IPR2020-01226, Paper 11, 15 (PTAB Mar. 4, 2021) ......................................... 20
`Google LLC v. Personalized Media Commc’ns, LLC,
`IPR2020-00724, Paper 19 (PTAB Aug. 31, 2020) ............................................... 8
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) .......................................................................................... 18, 36
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`Patent Owner’s Preliminary Response
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`Harmonic Inc. v. Avid Tech.,
`815 F.3d 1356 (Fed. Cir. 2016) ............................................................................ 6
`Intel Corp. v. VLSI Tech. LLC,
`IPR2019-01192, Paper 15 (PTAB Jan. 9, 2020) .................................................. 7
`KeyMe, LLC v. Hillman Grp., Inc.,
`IPR2020-01028, Paper 12 (PTAB Jan. 13, 2021) .............................................. 19
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................... 32, 35
`MediaTek Inc. v. Nippon Tel. and Tel. Corp.,
`IPR2020-01607, Paper 12 (PTAB April 2, 2021) ................................................ 8
`Mintz v. Dietz & Watson, Inc.,
`679 F.3d 1372 (Fed. Cir. 2012) .......................................................................... 36
`In re Mouttet,
`686 F.3d 1322 (Fed. Cir. 2012) .......................................................................... 18
`Nautilus Hyosung Inc. v. Diebold, Inc.,
`IPR2016-00633, Paper 9 (PTAB Aug. 22, 2016) ......................................... 35, 36
`NHK Spring Co. v. Intri-Plex Techs., Inc.,
`IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) ................................................. 1
`Roku, Inc. v. Universal Elecs., Inc.,
`IPR2019-01619, Paper 11 (PTAB April 2, 2020) .............................................. 29
`Samsung Elecs. Co., Ltd. v. Ancora Techs., Inc.,
`IPR2020-01184, Paper 11 (PTAB Jan. 5, 2021) ...................................... 8, 20, 22
`
`Sand Revolution II, LLC v. Continental Intermodal Grp. Trucking
`LLC,
`IPR2019-01393, Paper 24 (PTAB June 16, 2020) ..................................... 8, 9, 14
`SK Hynix v. Netlist,
`IPR2020-01421, Paper 10 (PTAB Mar. 16, 2021) ............................................. 16
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`Patent Owner’s Preliminary Response
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`Sotera Wireless Inc. v. Massimo Corp.,
`IPR2020-01019, Paper 12, 18 (PTAB Dec. 1, 2020) ................................... 18, 19
`Verizon Bus. Network Servs. LLC v. Huawei Techs. Co.,
`IPR2020-01292, Paper 13 (PTAB Jan. 25, 2021) .................................. 15, 16, 21
`Verizon Bus. Network Svs., LLC v. Huawei Tech. Co.,
`IPR2020-01278, Paper 12, 13 (PTAB Jan. 26, 2021) ........................................ 20
`Statutes
`35 U.S.C. § 103 .......................................................................................................... 2
`35 U.S.C. § 314 .................................................................................................passim
`35 U.S.C. § 316 .................................................................................................... 7, 10
`35 U.S.C. § 325 ........................................................................................................ 24
`Other Authorities
`37 C.F.R. § 42.24(b)(1) .............................................................................................. 1
`37 C.F.R. § 42.24(d) .................................................................................................. 1
`37 C.F.R. § 42.107(a) ................................................................................................. 1
`37 C.F.R. § 42.108(c) ................................................................................................. 6
`
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`Patent Owner’s Preliminary Response
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`EXHIBIT LISTING
`
`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
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`
`EXHIBIT
`KOSS-2016
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`KOSS-2017
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`IPR2021-00612
`Patent Owner’s Preliminary Response
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`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
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`I.
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`INTRODUCTION
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`IPR2021-00612
`Patent Owner’s Preliminary Response
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`Patent Owner, Koss Corporation (“Koss”), submits this Patent Owner
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`Preliminary Response (“POPR”) pursuant to 37 C.F.R. § 42.107(a) to the Inter
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`Partes Review (“IPR”) petition (“Petition”) filed by Bose Corporation (“Petitioner”)
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`for claims 1-56 (“Challenged Claims”) of U.S. Patent 10,206,025 (“’025 Patent,”
`
`Ex. 1001).
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`The Board should deny institution for several reasons.
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`First, institution of the IPR would demand an untimely and inefficient
`
`proceeding that would effectively “second guess” the result of a jury trial in
`
`concurrent litigation. See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-
`
`00752, Paper 8 at 11–21 (PTAB Sept. 12, 2018) (Precedential); Apple Inc. v. Fintiv,
`
`Inc., IPR2020-00019, Paper 11 at 2–3 (PTAB March 20, 2020) (Precedential).
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`Patent Owner is asserting the ’025 Patent against Petitioner in co-pending litigation
`
`in the Western District of Texas (“WDTX”). Koss Corporation v. Bose
`
`Corporation, Case No. 6:20-cv-00661-ADA (W.D. Tex.) (“Bose Litigation”).
`
`Patent Owner is also asserting the ’025 Patent against Apple Inc. (hereinafter
`
`“Apple”) in co-pending litigation in the WDTX. Koss Corp. v. Apple Inc., Case No.
`
`6:20-cv-00665-ADA (W.D. Tex.) (“Apple Litigation”). KOSS-2002; KOSS-2004.
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`The trial in the Bose Litigation is scheduled to start June 6, 2022, over three
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`months before a Final Written Decision (“FWD”) is expected to issue, assuming the
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`IPR is instituted. BOSE-1120, 4. However, the gap between the scheduled trial in
`
`the Apple Litigation and the expected FWD is even more concerning, as that trial is
`
`scheduled (and recently confirmed) to commence in April 2022 (BOSE-1082, 4;
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`KOSS-2002, 15 (see Dkt. 72)). As such, the trial in the Apple Litigation will
`
`commence approximately five months before an expected FWD if the IPR is
`
`instituted.
`
`Additionally, the defendant (Apple) in the Apple Litigation has filed two IPR
`
`petitions for the ’025 Patent. IPR2021-00546 and IPR2021-00626. If the Board
`
`institutes each of the three IPRs, two different tribunals will be required to assess the
`
`validity of the ’025 Patent across five different proceedings. The Board should,
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`accordingly, deny institution under 35 U.S.C. § 314(a) to mitigate duplicative work
`
`and the risk of conflicting decisions.
`
`Second, the Board should deny institution because the Petition does not
`
`establish a reasonable likelihood that the challenged claims would have been
`
`obvious under 35 U.S.C. § 103. Claim 1 is the sole independent claim of the ’025
`
`Patent. The Petition asserts two grounds—Grounds 1A and 2A—for claim 1. Pet.
`
`at 2. However, Ground 1A is based on references that are the same as, or
`
`substantially similar to, references that were considered in the original examination
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`of the ’025 Patent. Also, the Petition’s alleged motivations for the multi-reference
`
`combinations for Grounds 1A and 2A are defective. For Ground 1A, the Petition
`
`fails to explain why a person skilled in the art (“POSA”) would have been motivated
`
`to realize certain elements of the claim 1. For Ground 2A, the Petition asserts that a
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`POSA would have been motivated to put so-called “PAA software” in Goldstein
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`(BOSE-1026) on various devices in Schrager (BOSE-1101). However, Goldstein
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`does not mention or refer to any “PAA software,” the Petition does not explain what
`
`it would include, and the Petition does not explain which facets of the “PAA
`
`software” would be put on the various devices in Schrager.
`
`These reasons are independent and the Board can deny institution for either
`
`of these reasons.
`
`II. BACKGROUND
`
`A.
`’025 Patent
`The ’025 Patent includes fifty-six (56) claims, of which claim 1 is the sole
`
`independent claim. Claim 1 claims a system that comprises a mobile, digital audio
`
`player (“DAP”), a headphone assembly, and a remote, network-connected server.
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`The mobile DAP is for transmitting digital audio content to the headphone assembly
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`wirelessly. The headphone assembly comprises a processor, which is for initiating
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`transmission of a request to the remote, network-connected server upon activation
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`of a user-control of the headphone assembly.
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`The Petition challenges all 56 claims of the ’025 Patent under fourteen total
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`grounds, namely Grounds 1A–1H and 2A-2F. Ground 1A asserts that certain claims
`
`(including independent claim 1) would have been obvious over the combination of
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`Rezvani-446 (BOSE-1097), Rezvani-875 (BOSE-1016) and Skulley (BOSE-1017).
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`Ground 2A asserts that certain claims (including claim 1) would have been obvious
`
`over the combination of Schrager (BOSE-1101) and Goldstein (BOSE-1026).
`
`Grounds 1A and 2A are the only asserted grounds for independent claim 1. Pet. at
`
`2.
`
`B. Related Patents
`The ’025 Patent is the ninth patent in a patent family dating back to a
`
`provisional application filed April 7, 2008 and a PCT application filed April 7,
`
`2009. BOSE-1001, 2; KOSS-2008 to KOSS-2015. There are patents that issued
`
`after the ’025 Patent and one pending application in the family. The parties’
`
`mandatory notices identify those patents and pending application. See Paper 8;
`
`Paper 7.
`
`C. Related Matters
`Patent Owner is asserting the ’025 Patent, along with two other patents,
`
`against Petitioner in the Bose Litigation. BOSE-1055. The Petition is one of three
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`IPRs filed by Petitioner for patents owned by Patent Owner—one petition for each
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`of the three patents asserted in the Bose Litigation. See also IPR2021-00297 (for
`
`Patent 10,368,155) and IPR2021-00680 (for Patent 10,469,934). The Board
`
`instituted the IPR for Patent 10,368,155. Bose Corp. v. Koss Corp., IPR2021-00297,
`
`Paper 16 (PTAB June 3, 2021). The Board has not yet decided institution for Patent
`
`10,469,934 in IPR2021-00680.
`
`Petitioner moved in the Bose Litigation to transfer the case to the District
`
`Court of Massachusetts (KOSS-2001, 6 (Dkt. 20)) and Petitioner filed a declaratory
`
`judgment action in the District Court of Massachusetts. BOSE-1123. The WDTX
`
`district court in the Bose Litigation has not decided the motion to transfer yet, but
`
`under a standing order by WDTX district court, it will not conduct a Markman
`
`hearing until after resolution of the motion. KOSS-2016, 2-3. The Markman hearing
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`is scheduled for July 20, 2021. BOSE-1120, 3; KOSS-2016, 3. The declaratory
`
`judgment action in Massachusetts district court is stayed pending resolution of
`
`Petitioner’s motion to transfer in the WDTX Bose Litigation. Id. at 2 (Dkt. 8).
`
`Defendant (Apple) in the Apple Litigation has filed two Petitions challenging
`
`the validity of claims of the ’025 Patent. IPR2021-00546; IPR2021-00626.
`
`Although the Board has not yet decided on institution on any petition challenging
`
`the validity of claims the ’025 Patent, institution of each petition filed would require
`
`the Board to independently assess the validity of the ’025 Patent three times, in
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`parallel to—and most likely, after—the district court’s assessment in both the Apple
`
`and Bose Litigations.
`
`The Apple Litigation is headed for a trial in April 2022. BOSE-1082, 4;
`
`KOSS-2002, 15 (Dkt. 72) (“The Court has set the Jury Trial date of April 18, 2022”).
`
`To that end, in the Apple Litigation, the district court already held a Markman
`
`hearing on April 23, 2021 and issued the claim construction ruling on June 2, 2021.
`
`KOSS-2002, 13 (Dkt. 58), 14 (Dkt. 72), 15 (Dkt. 83); KOSS-2004. The district court
`
`also denied Apple’s motion to transfer. KOSS-2006.
`
`Apple filed a declaratory judgement action pertaining to the five patents
`
`asserted against it (including the ’025 Patent) in the Northern District of California
`
`(“NDCal”). KOSS-2005. The district court in the NDCal recently granted Patent
`
`Owner’s motion to transfer the NDCal case to the WDTX. KOSS-2007.
`
`III. THE BOARD SHOULD DENY INSTITUTION BECAUSE OF THE
`CO-PENDING LITIGATIONS
`The Board “is permitted, but never compelled, to institute an IPR proceeding.”
`
`Harmonic Inc. v. Avid Tech., 815 F.3d 1356, 1367 (Fed. Cir. 2016); see also 35
`
`U.S.C. § 314(b) (“Director shall determine whether to institute an inter partes review
`
`….”); 37 C.F.R. § 42.108(c) (“Inter partes review shall not be instituted unless the
`
`Board decides that the information presented in the petition demonstrates that there
`
`is a reasonable likelihood that at least one of the claims challenged in the petition is
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`unpatentable.”). The Board may apply this discretion in consideration of “the
`
`integrity of the patent system, [and] the efficient administration of the Office ….”
`
`35 U.S.C. § 316(b). The Board has denied institution “to minimize the duplication
`
`of work by two tribunals to resolve the same issue.” Intel Corp. v. VLSI Tech. LLC,
`
`IPR2019-01192, Paper 15 at 11 (PTAB Jan. 9, 2020).
`
`In Fintiv, the Board outlined six factors that inform its decision “to deny
`
`institution in view of an earlier trial date in [a] parallel proceeding.” IPR2020-
`
`00019, Paper 11 at 6. The Board weighs and considers the holistic effect of each of
`
`the following factors: (1) whether the court granted a stay or evidence exists that one
`
`may be granted if a proceeding is instituted; (2) proximity of the court’s trial date to
`
`the Board’s projected statutory deadline for a final written decision; (3) investment
`
`in the parallel proceeding by the court and the parties; (4) overlap between issues
`
`raised in the petition and in the parallel proceeding; (5) whether the petitioner and
`
`the defendant in the parallel proceeding are the same party; and (6) other
`
`circumstances that impact the Board’s exercise of discretion, including the merits
`
`(collectively, “Fintiv factors”). Id. at 5–15.
`
`The Fintiv factors collectively justify denial of the Petition because the ’025
`
`Patent is being asserted presently against both Petitioner and Apple in the Bose and
`
`Apple Litigations respectively. Both trials are scheduled to take place prior to the
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`time that the FWD would be expected if the IPR is instituted. Denying institution
`
`of the IPR is consistent with recent Board decisions, preserves the integrity of the
`
`patent system, promotes the efficient administration of Office resources, and
`
`minimizes duplicative work by two different tribunals. See id.; Samsung Elecs. Co.,
`
`Ltd. v. Ancora Techs., Inc., IPR2020-01184, Paper 11 at 18 (PTAB Jan. 5, 2021);
`
`Google LLC v. Personalized Media Commc’ns, LLC, IPR2020-00724, Paper 19 at
`
`6, 11 (PTAB Aug. 31, 2020).
`
`A.
`Factor 1: The District Court Has Not Issued a Stay
`When a Petitioner represents it will move to stay a district court lawsuit if
`
`institution is granted, Fintiv factor 1 should be viewed as neutral. See Sand
`
`Revolution II, LLC v. Continental Intermodal Grp. Trucking LLC, IPR2019-01393,
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`Paper 24 at 7 (PTAB June 16, 2020); MediaTek Inc. v. Nippon Tel. and Tel. Corp.,
`
`IPR2020-01607, Paper 12 at 12 (PTAB April 2, 2021) (“Petitioner represents it will
`
`move to stay the District Court Lawsuit if institution is granted but does not know
`
`how the District Court will rule … [t]hus, this factor should be viewed as neutral.”).
`
`Petitioner has not represented that it will move to stay the Bose Litigation if
`
`institution is granted, instead merely stating that “[w]ithout ‘specific evidence’ how
`
`the court will rule regarding a stay, this factor is neutral.” Pet. at 92. Although the
`
`Board “will not attempt to predict how the district court in the related district court
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`litigation will proceed because the court may determine whether or not to stay any
`
`individual case,” here, such a prediction is not necessary. Sand Revolution,
`
`IPR2019-01393, Paper 24, 7. Petitioner has not expressed an intention to stay the
`
`Bose Litigation. Absent an affirmative representation to move to stay the Bose
`
`Litigation, the first Fintiv factor should weigh in favor of denying institution. The
`
`Board recently granted institution in IPR2021-00297, involving another patent at
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`issue in the Bose Litigation (see IPR2021-00297, Paper 16) and Petitioner has not
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`filed a motion to stay the Bose Litigation in light of that institution decision. Paper
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`16 (PTAB Jun. 3, 2021); KOSS-2001. Apple also has not filed any motions to stay
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`pending IPRs in the Apple Litigation. KOSS-2002.
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`Further, even if Petitioner or Apple filed a motion to stay in the Bose or Apple
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`Litigations pending resolution of any IPR, it is unlikely that Judge Albright, who is
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`the presiding judge for both the Bose and Apple Litigations, would grant such a
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`motion. During his two and a half years on the bench, Judge Albright, by his own
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`admission, has only put “one or two” cases on hold so that the Board can review the
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`patent, absent a joint motion to stay. KOSS-2017. Judge Albright explained that he
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`granted those “one or two” motions to stay because the plaintiff had earlier sued
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`other defendants on the same patent in a different district and those other defendants
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`had their petitions instituted, such that IPRs were well underway by the time patent
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`owner filed the later complaints in the Western District of Texas. Id. These
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`circumstances are not present in either the Bose or Apple Litigations.
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`In fact, in the Apple Litigation, claim construction is complete and fact
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`discovery has commenced (BOSE-1082, 3), which, according to Judge Albright,
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`indicates that the Apple Litigation is in a later stage and warrants the preservation of
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`a trial date in spite of institution. KOSS-2018 (Judge Albright denying defendant’s
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`motion to transfer) (citing Freescale Semiconductor, Inc. v. Amtran Tech. Co., Ltd.,
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`A-12-CV-644-LY, 2014 WL 12570609, at *3 (W.D. Tex. Feb. 10, 2014)).
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`In summary, Petitioner has not represented that it intends to move to stay the
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`Bose Litigation if institution is granted, Pet. at 92, and even if Petitioner files such a
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`motion, it is unlikely that the motion would be granted. A stay is even less likely in
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`the Apple Litigation, which is in a much later stage, and headed for a trial involving
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`the ’025 Patent in April 2022. BOSS-1082, 4; KOSS-2002, 14 (Dkt. 72); KOSS-
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`2004. The first Fintiv factor, therefore, weighs in favor of discretionary denial of
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`institution and, at a minimum, should be viewed merely as neutral.
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`B.
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`Factor 2: Proximity of the Scheduled Trial Date to the Board’s
`Statutory Deadline for Written Decision
`The institution decision will issue by September 16, 2021. 35 U.S.C.
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`§ 314(b)(1). If instituted, the FWD will issue by September 16, 2022. 35 U.S.C.
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`§ 316(a)(11). The trial in the Apple Litigation, which also involves the ’025 Patent,
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`however, is scheduled for April 18, 2022 (BOSE-1082, 4; KOSS-2002, 14 (Dkt.
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`72)), five months prior to the FWD if the IPR is instituted. The trial in the Bose
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`Litigation is scheduled for June 6, 2022 (BOSE-1120, 4), more than three months
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`prior to the FWD if the IPR is instituted. As such, there are significant gaps between
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`the expected FWD and the scheduled trials for both the Apple and Bose Litigations
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`involving the ’025 Patent.
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`Moreover, it is highly likely at this point that at least the trial in the Apple
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`Litigation will take place as scheduled. The district court in the Apple Litigation
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`recently confirmed that the “Court has set the Jury Trial date of April 18, 2022” in
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`the Minute Entry from the Markman hearing, held April 23, 2021. KOSS-2002, 15
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`(Dkt. 72). This statement by the Court affirms the trial date sent in the original
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`Scheduling Order. BOSE-1082, 4. Also, as noted above, Apple moved to transfer
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`the Apple Litigation to NDCal. KOSS-2002, 11 (Dkt. 34). However, the district
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`court in the Apple Litigation denied the motion (KOSS-2006) and the district court
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`in the NDCal case transferred Apple’s declaratory judgment action to the WDTX.
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`KOSS-2007. Thus, the trial date in the Apple Litigation is unlikely to move because
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`of a transfer to another venue.1
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`IPR2021-00612
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`Also, directly addressing Petitioner’s speculation about Judge Albright’s
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`docket, Pet. at 92, Judge Albright recently expressed confidence in his court’s ability
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`to maintain a trial schedule despite his heavy caseload. In denying Apple’s motion
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`to transfer, Judge Albright remarked that the rate at which WDTX disposes of patent
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`cases makes it unlikely that the trial date, at least for the Apple Litigation, will
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`change despite the WDTX high caseload for patent cases. KOSS-2006, 25-26.
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`Still further, applicable to both the Apple and Bose Litigations, Judge
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`Albright’s recently issued standing order governing patent cases, which states
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`“[a]fter the trial date is set, the Court will not move the trial date except in extreme
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`situations.” KOSS-2019, 5.
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`Petitioner emphasizes its diligence in filing the Petition, asserting that filing a
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`petition four months prior to its statutory bar is “reasonably diligent.” Pet. at 93.
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`The Board, however, has not established a bright line rule. Moreover, “[the]
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`proximity inquiry is a proxy for the likelihood that the trial court will reach a decision
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`1 Apple in the Apple Litigation recently petitioned to the Federal Circuit for a writ
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`of mandamus in light of the denial of the motion to transfer. See In re Apple, Inc.,
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`Case No. 21-147 (Fed. Cir.).
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`on validity issues before the Board reaches a final written decision.” Apple Inc. v
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`Koss Corporation, IPR2021-00255, Paper 22 at 12 (PTAB June 3, 2021) (evaluating
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`a three-month gap between trial and expected FWD).
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`In a recent institution decision involving Petitioner, Patent Owner, and
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`another patent involved in the Bose Litigation, the Board found that “the expected
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`trial date and the due date of a final written decision will be around the same time,”
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`weighing the factor as neutral and, ultimately, did not deny institution under Fintiv.
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`IPR2021-00297, Paper 16 at 12. The facts have changed, however, with respect to
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`the present Petition such that the Board’s analysis in that institution decision is less
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`applicable to the present Petition for two major reasons.
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`First, the gap between the trial and the expected FWD date is approximately
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`five months for the Apple Litigation, and over three months for the Bose Litigation.
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`BOSE-1082, 4; BOSE-1120, 4. Accordingly, the due date of a FWD if the IPR is
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`instituted is not proximal to the trial dates, unlike the circumstances in IPR2021-
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`00297. Although the Board in Sand Revolution found that a five-month gap can
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`“marginally” favor institution, the factual circumstances in the Bose Litigation are
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`substantially different and favor discretionary denial of institution. In Sand
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`Revolution, the litigants requested, and the district court granted, numerous
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`extensions to the scheduling order, which rendered the five-month gap insufficient
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`to mitigate the uncertainty of the scheduled trial date:
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`For the reasons above, particularly because of the number of times the
`parties have jointly moved for and the district court agreed to extend
`the scheduling order dates, the inclusion of the qualifier “or as
`available” for each calendared trial date, that the currently scheduled
`trial date is in relatively close proximity to the expected final decision
`in this matter, and the uncertainty that continues to surround the
`scheduled trial date, we find that this factor weighs marginally in favor
`of not exercising discretion to deny institutio