Trials@uspto.gov
`571-272-7822
`
`Paper 38
`Date: September 13, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BOSE CORPORATION,
`Petitioner,
`v.
`KOSS CORPORATION,
`Patent Owner.
`
`IPR2021-00612
`Patent 10,206,025 B2
`
`
`
`
`
`
`
`
`
`Before PATRICK R. SCANLON, DAVID C. MCKONE, and
`NORMAN H. BEAMER, Administrative Patent Judges.
`SCANLON, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 38
`Date: September 13, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BOSE CORPORATION,
`Petitioner,
`v.
`KOSS CORPORATION,
`Patent Owner.
`
`IPR2021-00612
`Patent 10,206,025 B2
`
`
`
`
`
`
`
`
`
`Before PATRICK R. SCANLON, DAVID C. MCKONE, and
`NORMAN H. BEAMER, Administrative Patent Judges.
`SCANLON, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`IPR2021-00612
`Patent 10,206,025 B2
`
`INTRODUCTION
`I.
`Bose Corporation (“Petitioner”) challenges claims 1–56 of U.S. Patent
`No. 10,206,025 B2 (Ex. 1001, “the ’025 patent”). We have jurisdiction
`under 35 U.S.C. § 6, and this Final Written Decision is issued pursuant to
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons that follow, we
`determine that Petitioner has shown by a preponderance of the evidence that
`claims 1–3, 6, 8, 10–13, 16, 18, 20–22, 25, 27, 29–31, 34, 36, 38–43, 46, 48,
`and 51–56 of the ’025 patent are unpatentable but has not shown by a
`preponderance of the evidence that claims 4, 5, 7, 9, 14, 15, 17, 19, 23, 24,
`26, 28, 32, 33, 35, 37, 44, 45, 47, 49, and 50 are unpatentable.
`A. Procedural History
`Petitioner filed a Petition (Paper 2, “Pet.”) requesting an inter partes
`review of the challenged claims. Koss Corporation (“Patent Owner”) filed a
`Preliminary Response (Paper 9). With our authorization, Petitioner filed a
`Preliminary Reply (Paper 12) and Patent Owner filed a Preliminary
`Sur-reply (Paper 13).
`We instituted a trial as to all challenged claims. Paper 15 (“Decision
`on Institution” or “Dec. Inst.”).
`After institution, Patent Owner filed a Patent Owner Response
`(Paper 20, “PO Resp.”), Petitioner filed a Reply (Paper 29, “Pet. Reply”),
`and Patent Owner filed a Sur-reply (Paper 33, “PO Sur-reply”).
`Petitioner relies on the Declaration of Tim A. Williams, Ph.D.
`(Ex. 1003), the Declaration of John G. Casali, Ph.D., CPE (Ex. 1005), and
`the Reply Declaration of Tim A. Williams, Ph.D. (Ex. 1152) in support of its
`contentions. Patent Owner relies on the Declaration of Joseph C.
`McAlexander III (Ex. 2024) and the Declaration of Nicholas S. Blair
`(Ex. 2025) in support of its contentions.
`
`2
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`IPR2021-00612
`Patent 10,206,025 B2
`An oral hearing was held on June 15, 2022. A transcript of the
`hearing is included in the record. Paper 37 (“Tr.”).
`B. Real Parties in Interest
`The parties identify themselves as the real parties in interest. Pet. xix;
`Paper 3, 1.
`
`C. Related Matters
`The parties identify the following proceedings as related matters
`involving the ’025 patent:
`Koss Corp. v. Bose Corp., Case No. 6:20-cv-00661 (W.D. Tex.);1
`Koss Corp. v. PEAG LLC, Case No. 6:20-cv-00662 (W.D. Tex.);2
`Koss Corp. v. Plantronics, Inc., Case No. 6:20-cv-00663
`(W.D. Tex.);3
`Koss Corp. v. Skullcandy, Inc., Case No. 6:20-cv-00664 (W.D. Tex.);4
`Koss Corp. v. Apple Inc., Case No. 6:20-cv-00665 (W.D. Tex.)
`(“the Apple Litigation”);
`Bose Corp. v. Koss Corp., Case No. 1:20-cv-12193 (D. Mass.);
`Apple Inc. v. Koss Corp., Case No. 4:20-cv-05504 (N.D. Cal.);
`Apple Inc. v. Koss Corp., Case No. 6:21-cv-00495 (W.D. Tex.); and
`Koss Corp. v. Skullcandy, Inc., Case No. 2:21-cv-00203 (D. Utah).
`Pet. xx–xxi; Paper 3, 1; Paper 7, 1; Paper 8, 2.
`
`
`1 This proceeding has been dismissed. Ex. 1137.
`2 This proceeding has been dismissed. Ex. 1140.
`3 This proceeding has been transferred to the United States District Court for
`the Northern District of California. Ex. 1139.
`4 This proceeding has been dismissed. Ex. 1138.
`
`3
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`IPR2021-00612
`Patent 10,206,025 B2
`In addition, the parties identify the following inter partes review
`proceedings5 challenging the ’025 patent or patents related to the ’025 patent
`as related matters:
`Bose Corp. v. Koss Corp., IPR2021-00297, filed December 7, 2020,
`challenging U.S. Patent No. 10,368,155 B2 (final written decision, notice of
`appeal filed Aug. 1, 2022);
`Apple Inc. v. Koss Corp., IPR2021-00305, filed December 15, 2020,
`challenging U.S. Patent No. 10,506,325 B1 (final written decision, notice of
`appeal filed Aug. 1, 2022);
`Apple Inc. v. Koss Corp., IPR2021-00381, filed January 4, 2021,
`challenging U.S. Patent No. 10,491,982 B1 (final written decision, notice of
`appeal filed Aug. 9, 2022);
`Bose Corp. v. Koss Corp., IPR2021-00546, filed February 22, 2021,
`challenging the ’025 patent (institution denied Oct. 8, 2021);
`Apple Inc. v. Koss Corp., IPR2021-00592, filed March 2, 2021,
`challenging U.S. Patent No. 10,469,934 B2 (terminated Aug. 2, 2022);
`Apple Inc. v. Koss Corp., IPR2021-00626, filed March 17, 2021,
`challenging the ’025 patent (institution denied Sept. 30, 2021);
`Bose Corp. v. Koss Corp., IPR2021-00680, filed March 17, 2021,
`challenging U.S. Patent No. 10,469,934 B2;
`Apple Inc. v. Koss Corp., IPR2021-00679, filed March 22, 2021,
`challenging U.S. Patent No. 10,506,325 B1 (institution denied Oct. 12,
`2021);
`Apple Inc. v. Koss Corp., IPR2021-00686, filed March 22, 2021,
`challenging U.S. Patent No. 10,491,982 B1 (institution denied Oct. 12,
`2021); and
`
`
`5 Apple Inc. v. Koss Corp., IPR2021-00255, filed November 25, 2020, and
`Apple Inc. v. Koss Corp., IPR2021-00600, filed March 7, 2021, both
`challenging U.S. Patent 10,298,451 B1, were also pending at the time the
`Petition was filed. Final written decisions and notices of appeal
`subsequently have been entered in both of these proceedings.
`
`4
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`IPR2021-00612
`Patent 10,206,025 B2
`Apple Inc. v. Koss Corp., IPR2021-00693, filed March 23, 2021,
`challenging U.S. Patent No. 10,469,934 B2 (institution denied Oct. 13,
`2021).
`Pet. xx; Paper 3, 1–2; Paper 6, 1–2; Paper 8, 2.
`D. The ’025 Patent
`The ’025 patent, titled “System with Wireless Earphones,” issued
`February 12, 2019, with claims 1–56, and claims priority to several
`applications dating to April 7, 2008.6 Ex. 1001, codes (45), (54), (60), (63),
`1:3–28, 18:2–24:56. The ’025 patent relates to “a wireless earphone that
`comprises a transceiver circuit for receiving streaming audio from a data
`source, such as a digital audio player or a computer, over an ad hoc wireless
`network.” Id. at 1:65–2:2. The ’025 patent defines an “ad hoc wireless
`network” as “a network where two (or more) wireless-capable devices, such
`as the earphone and a data source, communicate directly and wirelessly,
`without using an access point.”7 Id. at 3:2–5. In some embodiments there
`may be two discrete wireless earphones, one in each ear. Id. at 3:45–46.
`We reproduce Figure 2A of the ’025 patent below.
`
`
`6 Petitioner does not assert that any challenged claim is not entitled to the
`benefit of the earliest claimed priority date. See Pet. 2. Therefore, for
`purposes of this proceeding, we consider the effective filing date of the ’025
`patent to be April 7, 2008.
`7 In contrast, the ’025 patent defines an “infrastructure network” as “a
`wireless network that uses one or more access points to allow a wireless-
`capable device, such as the wireless earphone, to connect to a computer
`network, such as a LAN or WLAN (including the Internet).” Ex. 1001,
`3:5–10.
`
`5
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`IPR2021-00612
`Patent 10,206,025 B2
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`
`Figure 2A illustrates a communication mode for a wireless earphone. Id. at
`2:27–29, 4:21–24. In particular, Figure 2A shows data source 20 in
`communication with earphone 10 over ad hoc wireless network 24. Id. at
`4:24–26. Data source 20 may be a digital audio player (“DAP”), such as an
`MP3 player, an iPod, or a laptop computer. Id. at 4:30–34. “When in range,
`the data source 20 may communicate with the earphone 10 via the ad hoc
`wireless network 24 using any suitable wireless communication protocol,”
`including Bluetooth and other communication protocols. Id. at 4:54–59.
`In one embodiment, earphone 10 connects to network-enabled host
`server 40 via networks 30a, 42 so that host server 40 can transmit streaming
`digital audio to earphone 10. Id. at 5:54–60, Fig. 2D. Alternatively, host
`server 40 may transmit to earphone 10 a network address for streaming
`digital audio content server 70. Id. at 5:60–63, Fig. 2D. In this case,
`earphone 10 uses the received address to connect to content server 70 via
`networks 30a, 42 and receive digital audio from content server 70. Id. at
`5:64–67. Content server 70 may be an Internet radio station server. Id. at
`6:1–2. In addition, content server 70 may stream digital audio that it has
`received from data source 20 via networks 30b, 42. Id. at 6:5–11.
`Figure 3, reproduced below, depicts earphone 10 in more detail.
`
`6
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`IPR2021-00612
`Patent 10,206,025 B2
`
`
`Figure 3 is a block diagram of a wireless earphone. Id. at 2:30–31, 6:26–27.
`Earphone 10 includes transceiver circuit 100, power source 102, microphone
`104, acoustic transducer 106 (e.g., a speaker), and antenna 108. Id. at 6:27–
`33. Transceiver circuit 100, power source 102, and acoustic transducer 106
`may be housed within the body of earphone 10. Id. at 6:33–36. Microphone
`104 and antenna 108 are external to the body. Id. at 6:36–38.
`E. Challenged Claims
`Petitioner challenges claims 1–56 of the ’025 patent, of which claim 1
`is the sole independent claim. Claim 1 is reproduced below:
`1. A system comprising:
`a mobile, digital audio player that stores digital audio content;
`and
`a headphone assembly, separate from and in wireless
`communication with the mobile digital audio player,
`wherein the headphone assembly comprises:
`
`7
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`IPR2021-00612
`Patent 10,206,025 B2
`first and second earphones, wherein each of the first and
`second earphones comprises an acoustic transducer;
`an antenna for receiving wireless signals from the mobile,
`digital audio player via one or more ad hoc wireless
`communication links;
`a wireless communication circuit connected to the at least
`one antenna, wherein the at least one wireless
`communication circuit is for receiving and transmitting
`wireless signals to and from the headphone assembly;
`a processor;
`a rechargeable battery for powering the headphone
`assembly; and
`a microphone for picking up utterances by a user of the
`headphone assembly; and
`a remote, network-connected server that is in wireless
`communication with the mobile, digital audio player;
`wherein the mobile, digital audio player is for transmitting
`digital audio content to the headphone assembly via the one
`or more ad hoc wireless communication links, such that the
`digital audio content received by the headphone assembly
`from the mobile, digital audio player is playable by the first
`and second earphones; and
`wherein the processor is for, upon activation of a user-control
`of the headphone assembly, initiating transmission of a
`request to the remote, network-connected server.
`Ex. 1001, 18:2–33.
`
`8
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`IPR2021-00612
`Patent 10,206,025 B2
`F. Instituted Grounds of Unpatentability
`We instituted inter partes review of the challenged claims based on
`the following grounds of unpatentability asserted by Petitioner:8
`Claim(s) Challenged
`35 U.S.C. §
`Reference(s)/Basis
`1–3, 6, 8, 11–13, 16,
`Rezvani-446,9 Rezvani-875,10
`18, 20–22, 25, 27, 39,
`Skulley11
`52, 54–56
`4, 5, 7, 9, 14, 15, 17,
`Rezvani-446, Rezvani-875,
`19, 23, 24, 26, 28
`Skulley, Harada12
`Rezvani-446, Rezvani-875,
`10, 38
`Skulley, Hind13
`Rezvani-446, Rezvani-875,
`Skulley, Davis14
`Rezvani-446, Rezvani-875,
`Skulley, Davis, Harada
`Rezvani-446, Rezvani-875,
`Skulley, Davis, Oh15
`Rezvani-446, Rezvani-875,
`Skulley, Davis, Oh, Harada
`Rezvani-446, Rezvani-875,
`Skulley, Davis, Oh, Hind
`
`29–31, 34, 36, 53
`
`32, 33, 35, 37
`
`40–43, 46, 48
`
`103(a)
`
`103(a)
`
`103(a)
`
`103(a)
`
`103(a)
`
`103(a)
`
`103(a)
`
`103(a)
`
`44, 45, 47, 49, 50
`
`51
`
`
`8 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’025 patent has an
`effective filing date before the March 16, 2013, effective date of the
`applicable AIA amendments, we apply the pre-AIA version of 35 U.S.C.
`§ 103.
`9 US 2007/0136446 A1, published June 14, 2007 (Ex. 1097).
`10 US 2007/0165875 A1, published July 19, 2007 (Ex. 1016).
`11 US 6,856,690 B1, issued Feb. 15, 2005 (Ex. 1017).
`12 US 2006/0229014 A1, published Oct. 12, 2006 (Ex. 1098).
`13 US 7,069,452 B1, issued June 27, 2006 (Ex. 1019).
`14 US 5,761,298, issued June 2, 1998 (Ex. 1033).
`15 WO 2006/098584 A1, published Sept. 21, 2006 (Ex. 1099).
`
`9
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`IPR2021-00612
`Patent 10,206,025 B2
`Claim(s) Challenged
`1–3, 6, 8, 10–13, 16,
`18, 38–43, 46, 48, 51,
`52, 54, 56
`4, 5, 7, 9, 14, 15, 17,
`19, 23, 24, 26, 28, 44,
`45, 47, 49, 50
`29–31, 34, 36, 51, 53,
`55
`32, 33, 35, 37
`20–22, 25, 27, 39,
`54–56
`23, 24, 26, 28
`
`Dec. Inst. 53; Pet. 2.
`
`35 U.S.C. §
`
`Reference(s)/Basis
`
`103(a)
`
`103(a)
`
`103(a)
`
`103(a)
`
`103(a)
`
`103(a)
`
`Schrager,16 Goldstein17
`
`Schrager, Goldstein, Harada
`
`Schrager, Goldstein, Davis
`Schrager, Goldstein, Davis,
`Harada
`Schrager, Goldstein, Skulley
`Schrager, Goldstein, Skulley,
`Harada
`
`II. ANALYSIS
`A. Legal Standards
`To prevail in its challenge, Petitioner must demonstrate by a
`preponderance of the evidence that the claims are unpatentable. 35 U.S.C.
`§ 316(e); 37 C.F.R. § 42.1(d). “In an IPR, the petitioner has the burden from
`the onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (2012) (requiring inter partes
`review petitions to identify “with particularity . . . the evidence that supports
`the grounds for the challenge to each claim”)). This burden of persuasion
`never shifts to the patent owner. See Dynamic Drinkware, LLC v. Nat’l
`Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden
`of proof in inter partes review).
`
`
`16 US 7,072,686 B1, issued July 4, 2006 (Ex. 1101).
`17 US 2008/0031475 A1, published Feb. 7, 2008 (Ex. 1026).
`
`10
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`IPR2021-00612
`Patent 10,206,025 B2
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) when in evidence, objective
`indicia of non-obviousness (also called secondary considerations), such as
`commercial success, long-felt but unsolved needs, and failure of others.
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We analyze grounds
`based on obviousness in accordance with the above-stated principles.
`B. Level of Ordinary Skill in the Art
`In determining whether an invention would have been obvious at the
`time it was made, 35 U.S.C. § 103 requires us to resolve the level of
`ordinary skill in the pertinent art at the time of the invention. Graham, 383
`U.S. at 17. The person of ordinary skill in the art is a hypothetical person
`who is presumed to have known the relevant art at the time of the invention.
`In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Factors that may be
`considered in determining the level of ordinary skill in the art include, but
`are not limited to, the types of problems encountered in the art, the
`sophistication of the technology, and educational level of active workers in
`the field. Id. In a given case, one or more factors may predominate. Id.
`Petitioner contends that a person having ordinary skill in the art
`“would have had background in wireless networks, including at least a
`bachelor’s degree in electrical engineering or a related field and experience
`
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`Patent 10,206,025 B2
`with wireless networks, and would have worked on a team including
`members with headphone-design experience.” Pet. 7 (citing Ex. 1003
`¶¶ 30–37; Ex. 1005 ¶¶ 41–45).
`Patent Owner contends a person having ordinary skill in the art
`(“POSA”) “would be someone working in the electrical engineering field
`and specializing in or knowledgeable of speaker components for small
`wireless devices,” and “would have a bachelor’s degree in electrical
`engineering and at least two years of work experience in the industry.” PO
`Resp. 6 (citing Ex. 2047 ¶ 19). Patent Owner adds that a POSA would thus
`“have studied and have practical experience with circuit design, speaker
`components, and wireless communication.” Id. (citing Ex. 2047 ¶ 19).
`Patent Owner argues that its proposed skill level is more appropriate
`because the ’025 patent relates to headphones, which Petitioner’s expert
`acknowledges, and Patent Owner’s proposed POSA specializes in, or has
`knowledge of, speaker components for small wireless devices, but
`Petitioner’s proposed POSA lacks such skill or knowledge. Id. at 6–7.
`In the Decision on Institution, we adopted Petitioner’s proposed level
`of ordinary skill in the art, stating it was “consistent with the evidence of
`record, including the asserted prior art.” Dec. Inst. 10. Patent Owner
`concedes that its proposal is only “a slightly different skill level.” PO
`Resp. 6. We agree that the two proposals do not differ materially.
`Regarding Patent Owner’s argument that Petitioner’s proposed POSA lacks
`knowledge of speaker components for small wireless devices, we note that
`under Petitioner’s proposal, the POSA “would have worked on a team
`including members with headphone-design experience.” Pet. 7. By working
`on such a team, Petitioner’s proposed POSA would have gained, or at least
`had access to, knowledge of speaker components for small wireless devices.
`
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`As such, Petitioner’s proposed definition implicitly includes what Patent
`Owner’s proposal purports to add.
`Furthermore, during the oral hearing, Patent Owner indicated that “the
`Board should adopt the POSA’s skill level set forth in the Petition” and the
`level of skill adopted in the Decision on Institution “is warranted in this
`case.” Tr. 48:21–22, 50:3–4.
`Based on our review of the record before us, we find that Petitioner’s
`stated level of ordinary skill in the art is reasonable because it is consistent
`with the evidence of record, including the asserted prior art. Accordingly,
`for the purposes of this Decision, we apply Petitioner’s definition, although
`our conclusions would be the same if we were to apply Patent Owner’s
`definition.
`
`C. Dr. Williams’ Credibility
`Patent Owner argues that the testimony of Dr. Williams, Petitioner’s
`declarant, “should be afforded little if any weight for three reasons.” PO
`Resp. 61. First, “the opinions expressed in his declaration (BOSE-1003) are
`founded on a POSA skill level that he, in fact, did not use, thereby rendering
`his opinions valueless.” Id. According to Patent Owner, during cross-
`examination, Dr. Williams “recant[ed] . . . his original POSA skill level” and
`“instead applied a POSA skill level where a POSA ‘is a team of people who
`have experience in wireless networking and people who have experience in
`headset design.’” Id. at 60–61 (quoting Ex. 2023, 30).
`Patent Owner advances two other arguments that hinge on the first
`argument: 1) “because Williams said a POSA is a team [during his cross-
`examination], his opinions are contrary to the law”; and 2) “at bottom, his
`conflicting POSA standards make his testimony unreliable. It is unclear
`what skill level Williams applied for a POSA in his obviousness opinions.”
`
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`PO Resp. 61–62. Patent Owner advances similar arguments in its Sur-reply.
`See Sur-reply 2 (“Simply put, Williams did not perform the analysis that he
`swore to in his original declaration, which undercuts his overall
`credibility.”).
`Dr. Williams relies on the testimony of Dr. Casali (Petitioner’s other
`declarant), “concerning the relevant headphone design features in much the
`same way that a POSA (i.e., an individual with expertise in wireless
`networking as described above) would have worked with an individual with
`specific experience in headphone design when designing a wireless
`headphone product.” Ex. 1003 ¶ 36. Patent Owner agrees that Dr. Williams
`does not advance that a POSA is a team in his original declaration. See PO
`Resp. 60–62. Rather, Dr. Williams applies the concept of a team member
`having gained the requisite knowledge of speakers for small wireless devices
`through other team members, such as Dr. Casali. See Ex. 1003 ¶ 36. In
`other words, in preparation for this trial, Dr. Williams studied the declaration
`of Dr. Casali, and other evidence, including the prior art of record. See id.
`¶¶ 15, 36. Patent Owner does not dispute that Dr. Williams at least has the
`requisite level of ordinary skill to testify in this proceeding. See PO Resp.
`60–62.
`Moreover, Dr. Williams applies the level of ordinary skill as he states
`in his declaration, and this does not conflict with his deposition. See
`Ex. 1003 ¶ 36 (“A POSA would have been capable of understanding and
`applying the teachings of the ’025 patent and the prior art references
`discussed in this declaration.”). Contrary to Patent Owner’s argument,
`Dr. Williams did not indicate on cited page 30 of his deposition that he
`“recant[ed] . . . his original POSA skill level.” See PO Resp. 60–61 (citing
`Ex. 2023, 30). Rather, he testifies that he “would be one of the members of
`
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`Patent 10,206,025 B2
`the team of that POSA team.” See Ex. 2023, 30:12–13 (emphasis added).
`During his deposition, Dr. Williams confirmed his
`opinion that, as I express in the bottom part of . . . paragraph [35
`of my original declaration], in this case, a POSA would have
`worked on a team with someone knowledgeable with headphone
`form factors. But that does not change the definition of a POSA
`as an individual with wireless networking experience because
`the art to which the purported technical advance of the ’934
`patent principally relates is wireless networking.18
`Ex. 2023, 35:13–21 (emphasis added); accord Pet. Reply 33 (quoting part of
`the same passage (citing Ex. 2023, 35–36)).
`As discussed above, and as Dr. William’s testimony shows, each
`member of the team at least would have gained “some knowledge of speaker
`components for small wireless devices” (as Patent Owner proposes) by
`working on that team or otherwise through other experience. As also noted,
`Dr. Williams relies on Dr. Casali’s testimony and the record evidence here
`to gain the required headphone knowledge. See Ex. 1003 ¶ 15 (listing the
`record evidence as materials he “studied and considered,” including
`Dr. Casali’s declaration (Ex. 1005)), ¶¶ 35–37 (equating his reliance on
`Dr. Casali’s declaration as a team member through which Dr. Williams
`testifies he “assumed the perspective of a person having ordinary skill in the
`art” to form his opinion). This required knowledge (in addition to
`knowledge of wireless networks), only requires some rudimentary
`knowledge about well-known form factors, given the breadth of the claims
`at issue here. As Dr. Williams testifies, “the art to which the purported
`
`
`18 “[T]he ’943 patent” likely refers to U.S. Patent No. 10,469,934 B2, which
`was challenged in related proceeding IPR2021-00680.
`
`15
`
`
`
`IPR2021-00612
`Patent 10,206,025 B2
`technical advance of the ’934 patent principally relates is wireless
`networking.” Ex. 2023, 35:19–21.
`Moreover, Mr. McAlexander, Patent Owner’s declarant, similarly
`lacks direct experience in headphone design. And Mr. McAlexander and
`Dr. Williams each worked in cell phone design, which includes small
`speakers. Compare Ex. 1003 ¶ 3 (testifying “I have also designed cellular
`chipsets for operation in cellular phones” and “I have over 40 years of
`professional experience in wireless communications and telecom
`technology”), with Ex. 2024 ¶ 8 (testifying that he “investigated processes
`and designs associated with . . . telephones”). Mr. McAlexander also
`testifies that an artisan of ordinary skill “would be someone working in the
`electrical engineering field and specializing in or knowledgeable of speaker
`components for small wireless devices.” Id. ¶ 19. But Mr. McAlexander
`does not testify that this knowledge must be direct knowledge, and he does
`not testify that he worked directly with small speakers. Rather, he generally
`testifies that he “investigated processes and designs associated with . . .
`telephones”: “I have investigated processes and designs associated with
`personal computers, peripheral computers, software, and wireless
`communications systems, including telephones, microprocessors,
`controllers, memories, programmable logic devices, and other consumer
`electronics.” Id. ¶ 8, see also id. ¶¶ 1–7, 9 (testifying “I am very familiar
`with how acoustic speakers operate and the design issues associated with
`sound systems” without mentioning the size of the speakers.). During his
`deposition, Mr. McAlexander agreed that he “had not ever designed a
`headphone” and that “outside of litigation counseling,” he had “not worked
`on any specific projects that are related to the headphone.” Ex. 1141, 7:13–
`23.
`
`16
`
`
`
`IPR2021-00612
`Patent 10,206,025 B2
`Nevertheless, Mr. McAlexander testifies that “I satisfied this skill
`level circa 2008–2009 (and satisfy it now); and I am familiar with the
`knowledge and skills that a person with this skill level would have possessed
`circa 2008–2009 through my work and interaction with colleagues in the
`field.” Ex. 2024 ¶ 19.
`On this record, we are not persuaded that there is any reason to
`discount the weight associated with Dr. William’s testimony.
`D. Claim Construction
`“In an inter partes review proceeding, a claim of a patent . . . shall be
`construed using the same claim construction standard that would be used to
`construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R.
`§ 42.100(b) (2020). Under that standard, we generally give claim terms their
`ordinary and customary meaning, as would be understood by a person of
`ordinary skill in the art at the time of the invention, in light of the language
`of the claims, the specification, and the prosecution history. See Phillips v.
`AWH Corp., 415 F.3d 1303, 1313–14 (Fed. Cir. 2005) (en banc). Although
`extrinsic evidence, when available, may also be useful when construing
`claim terms under this standard, extrinsic evidence should be considered in
`the context of the intrinsic evidence. Id. at 1317–19.
`Petitioner asserts that because “the prior art plainly discloses claim
`elements, express construction is unnecessary.” Pet. 8 (citing Nidec Motor
`Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed.
`Cir. 2017)).
`Patent Owner does not discuss claim construction in a separate claim
`construction section of its Response, but in addressing one of the asserted
`grounds, Patent Owner argues that the term “body portion” of claim 40
`should be construed as “the central or main portion of the earphone.” PO
`
`17
`
`
`
`IPR2021-00612
`Patent 10,206,025 B2
`Resp. 43 (citing Ex. 2024 ¶ 60). Relying on a dictionary definition, Patent
`Owner argues that “[t]he ordinary meaning of ‘body’ in this context is ‘the
`main, central, or principal part.’” Id. (citing Ex. 2024 ¶ 60; Ex. 2041, 4).
`Patent Owner contends that this meaning is consistent with the ’025 patent
`because disclosed “body 12” forms the main, central, or principal part of
`earphone 10. Id. (citing Ex. 2024 ¶ 60; Ex. 1001, 3:15–20, Figs. 1A–1B).
`Petitioner argues that Patent Owner improperly conflates “body” with
`“body portion,” and the plain meaning of “body portion” is “a part of a
`‘body.’” Pet. Reply 21. In its Sur-reply, Patent Owner reiterates its
`proposed construction and quotes Fisher-Price, Inc. v. Evenflo Co., Case
`No. 05-cv-280S, 2006 WL 1740263, *3 (WDNY June 26, 2006) as stating:
`“When the term ‘body’ is used in connection with an intimate object, its
`ordinary meaning is . . . the main, central or principal part of something.”
`PO Sur-reply 15. Patent Owner asserts that:
`No reasonable person would consider the tail (or empennage) of
`an airplane to be the “body portion” of the airplane, even though
`it is part of the airplane, because the tail is not the main, central,
`or principal part of the airplane; the fuselage is the main part.
`Similarly, the “body portion” of the earphone is the main or
`central part of the earphone.
`
`Id.
`
`In light of the disclosure in the Specification, Patent Owner’s
`arguments are not persuasive. The Court of Appeals for the Federal Circuit
`has stated:
`
`The main problem with elevating the dictionary to such
`prominence is that it focuses the inquiry on the abstract meaning
`of words rather than on the meaning of claim terms within the
`context of the patent. Properly viewed, the “ordinary meaning”
`of a claim term is its meaning to the ordinary artisan after reading
`the entire patent. Yet heavy reliance on the dictionary divorced
`
`18
`
`
`
`IPR2021-00612
`Patent 10,206,025 B2
`from the intrinsic evidence risks transforming the meaning of the
`claim term to the artisan into the meaning of the term in the
`abstract, out of its particular context, which is the specification.
`Phillips, 415 F.3d at 1321. In this case, the intrinsic evidence does not
`comport with Patent Owner’s proffered dictionary definition, which is just
`one of several definitions of “body” provided by the cited dictionary.19
`Specifically, the ’025 patent describes various embodiments of wireless
`earphones, including those depicted in Figures 1A and 1B, which are
`reproduced below.
`
`
`
`Figures 1A and 1B show example configurations of wireless earphone 10.
`Ex. 1001, 3:11–12. In each configuration, earphone 10 comprises body 12.
`Id. at 3:15–16. Body 12 comprises ear canal portion 14 that is inserted into a
`user’s ear canal and exterior portion 15 that is not inserted into the ear canal.
`
`
`19 The district court’s use of the same dictionary definition of “body” to
`construed the term “body portion” in Fisher-Price is not applicable here
`because that case involved a different patent relating to an invention in a
`different field of art.
`
`19
`
`
`
`IPR2021-00612
`Patent 10,206,025 B2
`Id. at 3:16–20. Exterior portion 15 further includes knob 16 with button 11.
`Id. at 3:20–21, 8:27–30.
`Accordingly, we disagree with Patent Owner’s assertion that body 12
`forms the main, central, or principal part of earphone 10 (see PO Resp. 43)
`because it comprises both ear canal portion 14 and exterior portion 15,
`which make up the entirety of earphone 10. Furthermore, we agree with
`Petitioner that Patent Owner improperly conflates “body” with “body
`portion” by relying on a dictionary definition for “body” as defining “body
`portion.” Patent Owner’s reliance on the definition of “body” as defining
`“body portion” arguably requires body 12 to correspond to the claimed
`“body portion.”20 But body 12, which comprises both ear canal portion 14
`and exterior portion 15, cannot correspond to the claimed “body portion”
`because claim 40 also recites a separate “elongated portion.”
`Moreover, Patent Owner submits an annotated version of Figure 1B of
`the ’025 patent, which we reproduce below, that identifies a “body portion”
`that does not correspond to body 12 as a whole.
`
`
`20 Other arguments by Patent Owner also appear to suggest that body 12
`corresponds to the claimed “body portion.” See PO Sur-reply 16 (“Patent
`Owner’s interpretation of ‘body portion’ also comports with the ‘body 12’ in
`Figure 1B of the ’025 Patent.”), 17 (referring to “body portion 12”).
`
`20
`
`
`
`IPR2021-00612
`Patent 10,206,025 B2
`
`
`PO Sur-reply 17. For this annotated version of Figure 1B, Patent Owner
`adds (1) a dashed oval enclosing ear canal portion 14 and an upper portion
`of exterior portion 15 that is label
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