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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,
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`v.
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`KOSS CORPORATION,
`Patent Owner.
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`_____________________
`CASE: IPR2021-00612
`U.S. PATENT NO. 10,206,025
`_____________________
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`PATENT OWNER’S SUR-REPLY IN SUPPORT OF
`PRELIMINARY RESPONSE
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`IPR2021-00612
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`In response to Petitioner’s Preliminary Reply (“Reply,” Paper 12) to Patent
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`Owner’s Preliminary Response (“POPR,” Paper 9) filed July 9, 2021, Patent Owner
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`submits this Sur-Reply.
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`The trial in the Apple Litigation (Koss Corp. v. Apple Inc., Case No. 6:20-cv-
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`00665-ADA (W.D. Tex.)) is scheduled for April 2022 and it is highly relevant to the
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`Fintiv analysis, even though Petitioner is not a party to that case. See Apple Inc. v.
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`Fintiv Inc., IPR2020-00019, Paper 11 at 14 (PTAB Mar. 20, 2020) (“Even when a
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`petitioner is unrelated to a defendant, … if the issues are the same as, or substantially
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`similar to, those already or about to be litigated, or other circumstances weigh against
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`redoing the work of another tribunal, the Board may, nonetheless, exercise the
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`authority to deny institution.”). There is substantial overlap between the validity
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`issues raised in the Petition and in the Apple Litigation; and the verdict in the Apple
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`Litigation will occur approximately five months before the FWD if the IPR is
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`instituted. POPR at 10-14, 17-20. The status of the other litigations involving the
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`’025 Patent does not change the fact that the Petitioner is asking the Board to
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`duplicate—five months later— the work of the parties and district court in the Apple
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`Litigation. None of the considerations raised in Petitioner’s Reply alter these facts
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`or the analysis presented in the POPR.
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`Regarding the first Fintiv factor, the Reply concedes that “Bose has no control
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`over whether Apple will seek a stay” under the first Fintiv factor. Reply at 2. As of
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`- 1 -
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`IPR2021-00612
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`the filing of this Sur-Reply, Apple has not moved to stay the Apple Litigation even
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`though the Board has instituted three IPRs for patents at issue in the Apple Litigation.
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`POPR at 9. Because “Bose has no control over whether Apple will seek a stay,” and
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`because Apple’s actions show that a stay is unlikely, this factor weighs in favor of
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`discretionary denial.
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`The Reply’s arguments about the “interrelated” second and fifth Fintiv factors
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`are also unpersuasive. Petitioner quotes a sentence from Fintiv about the fifth factor
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`(Reply at 2-3), but omitted the very next sentence in the Board’s reasoning that
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`undercuts Petitioner’s position. The next sentence explains that even when the
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`Petitioner is not related to the defendant in the earlier litigation, if the issues are the
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`same, the “Board may, nonetheless, exercise the authority to deny institution.”
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`Fintiv, IPR2020-00019, Paper 11 at 14. Petitioner’s selective quotations from Fintiv
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`cannot escape that the upcoming trial in the Apple Litigation critically impacts the
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`Fintiv analysis despite Petitioner’s invitation for the Board to speculate about the
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`merits of Apple’s mandamus writ to the Federal Circuit. Reply at 3.
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`If speculation is warranted, the Federal Circuit’s recent decisions in In re
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`Western Digital Techs., Inc., 847 Fed. Appx. 296 (Fed. Cir. May 10, 2021) and In
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`re TCO AS, Case No. 2021-158, -- Fed. Appx. --, 2021 WL 2935078 (Fed. Cir. July
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`13, 2021) show that the writ is unlikely. In both of these cases, the Federal Circuit
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`upheld denials of transfer by Judge Albright, the presiding judge in the Apple
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`IPR2021-00612
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`Litigation, under similar circumstances because the “legal standard for mandamus is
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`demanding”—whether the transfer ruling was “such a clear abuse of discretion that
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`refusing transfer produced a patently erroneous result.” Western Digital, 847 Fed.
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`Appx. at 926 (internal quotations omitted). In light of this “demanding” standard,
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`the Federal Circuit is unlikely to transfer the Apple Litigation, especially considering
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`that the Northern District of California characterized Judge Albright’s decision on
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`Apple’s transfer motion as “thoughtful.” KOSS-2007, 2.
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`As explained in the POPR, validity issues in the Apple Litigation are
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`substantially similar to validity issues raised in the Petition. POPR at 17-20. The
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`trial in the Apple Litigation also highly likely to conclude approximately five months
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`before the FWD if the IPR is instituted because a mandamus writ from the Federal
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`Circuit is unlikely. Thus, factors 2 and 5 and favor discretionary denial, even though
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`Petitioner is not a litigant in the Apple Litigation.
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`Regarding the third Fintiv factor, the Reply raises the strawman argument that
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`“much work [in the Apple Litigation] remains after the institution deadline herein.”
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`Reply at 3. This is irrelevant because the appropriate time to evaluate the investment
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`of the parties is “at the time of the institution decision.” Verizon Bus. Network Servs.
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`LLC v. Huawei Techs. Co., IPR2020- 01292, Paper 13 at 14 (PTAB Jan. 25, 2021).
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`In fact, the Dolby case on which Petitioner relies (Reply at 2) “clarifies” that the key
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`date for measuring the investment is the institution date. Dolby Labs v. Intertrust
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`- 3 -
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`IPR2021-00612
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`Tech., IPR2020-00665, Paper 11 at 18 (PTAB Feb. 16, 2021) (“we take this
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`opportunity to clarify that the focus of our inquiry under this factor is the actual
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`investment by the district court and the parties in the [litigation] at the time we decide
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`whether to institute this proceeding—not the anticipated investment to occur at some
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`future time when we are projected to issue a final written decision”).
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`In the Apple Litigation, the parties and the court will have invested significant
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`resources by the time the Board decides institution. POPR, 15-16. Even if “much
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`work” will remain after the institution deadline, that work will be completed five
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`months before the FWD if the IPR instituted. Dolby does not help Petitioner because
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`in Dolby, fact discovery was “far from complete” by the time the Board was due to
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`issue the institution decision. Dolby at 19. Contrarily, in the Apple Litigation, fact
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`discovery will be 75% complete (measured by number of days) by the time of the
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`institution decision. BOSE-1082 (fact discovery opening April 23, 2021 and closing
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`November 4, 2021). This significant investment favors discretionary denial. See
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`Verizon Bus. Network Servs., IPR2020-01292, Paper 13 (PTAB Jan. 25, 2021).
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`Regarding the fourth Fintiv factor, Petitioner ignores the language of its
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`stipulation to assert that it is “untrue” that Petitioner is prohibited from reclassifying
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`references as primary or secondary. Reply 4. Indeed, Petitioner does not even
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`identify any language in its stipulation that supports its position. Nothing in the
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`stipulation prevents Petitioner from relying on the same teachings of Rezvani-875
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`IPR2021-00612
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`and/or Schrager after reclassifying them as “secondary” references. KOSS-2021, 1.
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`Petitioner essentially argues that Petitioner’s stipulation does not mean what it says.
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`If Petitioner desires to revise its stipulation to match what Petitioner asserts it says,
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`such as revising the stipulation in accordance with the Board’s guidance in Sotera
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`Wireless Inc. v. Massimo Corp., IPR2020-01019, Paper 12, 18 (PTAB Dec. 1, 2020),
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`it is free to do so.
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`Regarding the sixth Fintiv factor, the merits of the Petition are weak for the
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`reasons raised in the POPR. POPR at 32-42 (explaining a conclusory motivation to
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`combine, a hindsight reconstruction, and an inaccurate characterization of elements).
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`Furthermore, the merits need only be strong enough to outweigh the other factors.
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`Samsung Elecs. Co., Ltd. v. Ancora Techs., Inc., IPR2020-01184, Paper 11 (PTAB
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`Jan. 5, 2021). Here, the holistic assessment of the factors show the denial is
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`warranted. POPR at 22-24.
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`For these reasons and those stated in the POPR, the Board should exercise
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`its discretion to deny institution.
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`Dated: July 19, 2021
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`Respectfully submitted,
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`By:
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`/Mark G. Knedeisen/
`Mark G. Knedeisen (Reg. No. 42,747)
`K&L Gates Center, 210 Sixth Avenue
`Pittsburgh, Pennsylvania 15222
`Tel.: (412) 355-6342
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`mark.knedeisen@klgates.com
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`IPR2021-00612
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`IPR2021-00612
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`Counsel for Patent Owner
`Counselfor Patent Owner
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`IPR2021-00612
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`Certification of Service Under 37 C.F.R. § 42.6(e)(4)
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`I hereby certify that on July 19, 2021, I caused a true and correct copy of the
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`foregoing to be served on the following counsel for Petitioner by electronic mail to
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`the following email address:
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`Michael N. Rader
`Gregory S. Nieberg
`Nathan R. Speed
`Wolf, Greenfield & Sacks, P.C.
`600 Atlantic Avenue
`Boston, MA 02210-2206
`Email: MRader-PTAB@wolfgreenfield.com
`Email: GNieberg@wolfgreenfield.com
`Email: nspeed@wolfgreenfield.com
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`By:
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`/Mark G. Knedeisen/
`Mark G. Knedeisen (Reg. No. 42,747)
`K&L Gates Center, 210 Sixth Avenue
`Pittsburgh, Pennsylvania 15222
`Tel.: (412) 355-6342
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`mark.knedeisen@klgates.com
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`Counsel for Patent Owner
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`504300501.1
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