Trials@uspto.gov
`571-272-7822
`
`Paper 15
`Entered: September 15, 2021
`
`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.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 15
`Entered: September 15, 2021
`
`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.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2021-00612
`Patent 10,206,025 B2
`
`INTRODUCTION
`I.
`Bose Corporation (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
`requesting an inter partes review of claims 1–56 of U.S. Patent
`No. 10,206,025 B2 (Ex. 1001, “the ’025 patent”). Koss Corporation
`(“Patent Owner”) filed a Preliminary Response (Paper 9, “Prelim. Resp.”).
`With our authorization, Petitioner filed a Preliminary Reply (Paper 12,
`“Prelim. Reply”) and Patent Owner filed a Preliminary Sur-reply (Paper 13,
`“Prelim. Sur-reply”).
`We have authority to determine whether to institute an inter partes
`review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020). To
`institute an inter partes review, we must determine that the information
`presented in the Petition shows “a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine
`that the information presented in the Petition establishes a reasonable
`likelihood that Petitioner will prevail with respect to at least one challenged
`claim. Accordingly, we institute an inter partes review of the ’025 patent.
`II. BACKGROUND
`A. Real Parties in Interest
`The parties identify themselves as the real parties in interest. Pet. xix;
`Paper 3, 1.
`
`B. Related Matters
`The parties identify the following proceedings as related matters
`involving the ’025 patent:
`
`2
`
`
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`IPR2021-00612
`Patent 10,206,025 B2
`Koss Corp. v. Bose Corp., Case No. 6:20-cv-00661 (W.D. Tex.)
`(“the Bose Litigation”);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.
`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;
`Apple Inc. v. Koss Corp., IPR2021-00305, filed December 15, 2020,
`challenging U.S. Patent No. 10,506,325 B1;
`Apple Inc. v. Koss Corp., IPR2021-00381, filed January 4, 2021,
`challenging U.S. Patent No. 10,491,982 B1;
`
`
`1 This proceeding has been dismissed. Ex. 1137.
`2 This proceeding has been dismissed. Ex. 1140.
`3 This proceeding has been transferred to the Northern District of California.
`Ex. 1139.
`4 This proceeding has been dismissed. Ex. 1138.
`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, are also pending.
`
`3
`
`
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`IPR2021-00612
`Patent 10,206,025 B2
`Bose Corp. v. Koss Corp., IPR2021-00546, filed February 22, 2021,
`challenging the ’025 patent;
`Apple Inc. v. Koss Corp., IPR2021-00592, filed March 2, 2021,
`challenging U.S. Patent No. 10,469,934 B2;
`Apple Inc. v. Koss Corp., IPR2021-00626, filed March 17, 2021,
`challenging the ’025 patent;
`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;
`Apple Inc. v. Koss Corp., IPR2021-00686, filed March 22, 2021,
`challenging U.S. Patent No. 10,491,982 B1; and
`Apple Inc. v. Koss Corp., IPR2021-00693, filed March 23, 2021,
`challenging U.S. Patent No. 10,469,934 B2.
`Pet. xx; Paper 3, 1–2; Paper 6, 1–2; Paper 8, 2.
`C. 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,
`
`
`6 Petitioner does not assert that any challenged claim is not entitled to the
`benefit to the earliest claimed priority date. See Pet. 2. Therefore, for
`purposes of this Decision, we consider the effective filing date of the ’025
`patent to be April 7, 2008.
`
`4
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`IPR2021-00612
`Patent 10,206,025 B2
`without using an access point.” 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.
`
`
`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
`
`5
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`IPR2021-00612
`Patent 10,206,025 B2
`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.
`
`
`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.
`D. Illustrative Claim
`Claim 1, the sole independent claim of the challenged claims, is
`reproduced below:
`
`6
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`IPR2021-00612
`Patent 10,206,025 B2
`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:
`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.
`
`7
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`IPR2021-00612
`Patent 10,206,025 B2
`E. Asserted Grounds of Unpatentability
`Petitioner contends that the challenged claims would have been
`unpatentable on the following grounds:7
`Claim(s) Challenged
`35 U.S.C. §
`1–3, 6, 8, 11–13, 16,
`18, 20–22, 25, 27, 39,
`52, 54–56
`4, 5, 7, 9, 14, 15, 17,
`19, 23, 24, 26, 28
`10, 38
`
`103(a)
`
`103(a)
`
`103(a)
`
`Reference(s)/Basis
`Rezvani-446,8 Rezvani-875.9
`Skulley10
`Rezvani-446, Rezvani-875,
`Skulley, Harada11
`Rezvani-446, Rezvani-875,
`Skulley, Hind12
`Rezvani-446, Rezvani-875,
`Skulley, Davis13
`Rezvani-446, Rezvani-875,
`Skulley, Davis, Harada
`Rezvani-446, Rezvani-875,
`Skulley, Davis, Oh14
`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
`
`44, 45, 47, 49, 50
`
`51
`
`103(a)
`
`103(a)
`
`103(a)
`
`103(a)
`
`103(a)
`
`
`7 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.
`8 US 2007/0136446 A1, published June 14, 2007 (Ex. 1097).
`9 US 2007/0165875 A1, published July 19, 2007 (Ex. 1016).
`10 US 6,856,690 B1, issued Feb. 15, 2005 (Ex. 1017).
`11 US 2006/0229014 A1, published Oct. 12, 2006 (Ex. 1098).
`12 US 7,069,452 B1, issued June 27, 2006 (Ex. 1019).
`13 US 5,761,298, issued June 2, 1998 (Ex. 1033).
`14 WO 2006/098584 A1, published Sept. 21, 2006 (Ex. 1099).
`
`8
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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
`
`35 U.S.C. §
`
`Reference(s)/Basis
`
`103(a)
`
`103(a)
`
`Schrager,15 Goldstein16
`
`Schrager, Goldstein, Harada
`
`103(a)
`
`103(a)
`
`Schrager, Goldstein, Davis
`Schrager, Goldstein, Davis,
`Harada
`Schrager, Goldstein, Skulley
`Schrager, Goldstein, Skulley,
`Harada
`Pet. 2. Petitioner supports its challenge with the Declaration of Tim A.
`Williams, Ph.D. (Ex. 1003) and the Declaration of John G. Casali, Ph.D.,
`CPE (Ex. 1005).
`
`103(a)
`
`103(a)
`
`III. ANALYSIS
`A. 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 effective filing date of the
`claimed invention. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). The
`person of ordinary skill in the art is a hypothetical person who is presumed
`to have known the relevant art. 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
`
`
`15 US 7,072,686 B1, issued July 4, 2006 (Ex. 1101).
`16 US 2008/0031475 A1, published Feb. 7, 2008 (Ex. 1026).
`
`9
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`IPR2021-00612
`Patent 10,206,025 B2
`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
`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 does not dispute Petitioner’s
`proposed level of ordinary skill in the art in its Preliminary Response, nor
`does it propose a different level of skill.
`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 adopt Petitioner’s definition.
`B. Claim Construction
`In inter partes reviews, the Board interprets claim language using the
`district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d
`1303 (Fed. Cir. 2005) (en banc). See 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, 415 F.3d at
`1313–14. 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. See id. at 1317–19.
`Petitioner asserts that because “the prior art plainly discloses claim
`elements, express construction is unnecessary.” Pet. 8 (citing Nidec Motor
`
`10
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`IPR2021-00612
`Patent 10,206,025 B2
`Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed.
`Cir. 2017)). Patent Owner does not discuss claim construction or propose
`any term for construction. See generally Prelim. Resp. Thus, on the present
`record, we do not discern a need to construe explicitly any claim language
`because doing so would have no effect on our analyses below of Petitioner’s
`asserted grounds and will not assist in resolving the present controversy
`between the parties. See Nidec Motor, 868 F.3d at 1017 (Fed. Cir. 2017)
`(stating that “we need only construe terms ‘that are in controversy, and only
`to the extent necessary to resolve the controversy’” (quoting Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
`C. Discretion Under 35 U.S.C. § 325(d)
`1. Applicable Framework
`Section 325(d) of Title 35 of the United States Code provides, in
`relevant part: “In determining whether to institute or order a proceeding
`under this chapter, chapter 30, or chapter 31, the Director may take into
`account whether, and reject the petition or request because, the same or
`substantially the same prior art or arguments previously were presented to
`the Office.” The Board uses a two-part framework for evaluating arguments
`under § 325(d):
`(1) whether the same or substantially the same art previously was
`presented to the Office or whether the same or substantially the
`same arguments previously were presented to the Office; and
`(2) if either condition of first part of the framework is satisfied,
`whether the petitioner has demonstrated that the Office erred in
`a manner material to the patentability of challenged claims.
`Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH,
`IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential)
`(“Advanced Bionics”).
`
`11
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`IPR2021-00612
`Patent 10,206,025 B2
`In applying the two-part framework, we consider several non-
`exclusive factors from Becton, Dickinson & Co. v. B. Braun Melsungen AG,
`IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential as to § III.C.5,
`first paragraph) (“Becton, Dickinson”), which provide “useful insight into
`how to apply the framework.” Advanced Bionics, Paper 6 at 9. The Becton,
`Dickinson factors are:
`(a) the similarities and material differences between the asserted
`art and the prior art involved during examination;
`(b) the cumulative nature of the asserted art and the prior art
`evaluated during examination;
`(c) the extent to which the asserted art was evaluated during
`examination, including whether the prior art was the basis for
`rejection;
`(d) the extent of the overlap between the arguments made
`during examination and the manner in which Petitioner relies
`on the prior art or Patent Owner distinguishes the prior art;
`(e) whether Petitioner has pointed out sufficiently how the
`examiner erred in its evaluation of the asserted prior art; and
`(f) the extent to which additional evidence and facts presented
`in the Petition warrant reconsideration of the prior art or
`arguments.
`Becton, Dickinson, Paper 8 at 17–18. If, after review of factors (a), (b), and
`(d), we determine that the same or substantially the same art or arguments
`previously were presented to the Office, we then review factors (c), (e), and
`(f), which relate to whether the petitioner demonstrates that the Office erred
`in a manner material to the patentability of the challenged claims. Advanced
`Bionics, Paper 6 at 10.
`
`2. Analysis
`We first discuss the prosecution history of the ’025 patent and then
`apply the Advanced Bionics framework.
`
`12
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`IPR2021-00612
`Patent 10,206,025 B2
`a) Relevant Prosecution History of the ’025 Patent
`The ’025 patent issued from Application No. 15/962,305 (“the ’305
`application”). Ex. 1001, code (21). Concurrently with the ’305 application,
`the applicant submitted an Information Disclosure Statement (IDS) listing
`several references, including Rezvani-875. Ex. 1002, 17. The Examiner
`subsequently signed the IDS, indicating that all of the references listed—
`including Rezvani-875—had been considered. Id. at 378–81.
`Shortly after filing the ’305 application, the applicant submitted a
`Preliminary Amendment cancelling claim 1 of the application and adding
`new claims 2–54. Id. at 328–40. In a subsequent office action, the
`Examiner rejected independent claim 2, together with several dependent
`claims, under 35 U.S.C. § 103(a) as unpatentable over U.S. Patent
`Publication No. 2002/0129605 A1 by Camp, Jr. et al. (Ex. 2003, “Camp”) in
`view of U.S. Patent Publication No. 2008/0311852 A1 by Hansen et al. and
`further in view of U.S. Patent Publication No. 2009/0109054 A1 by Ueda et
`al. Id. at 362–67. The Examiner determined that Camp teaches a system
`including a mobile digital audio player and a headphone assembly. Id. at
`362. The Examiner also determined that Camp did not disclose an antenna,
`a wireless communication circuit, the digital audio player transmitting audio
`content to the headphone assembly via a wireless communication link, or a
`rechargeable battery. Id. at 363–64.
`In response to the rejection, the applicant amended several claims,
`including independent claim 2, and argued that the claim amendments
`overcame the Examiner’s rejections. Id. at 443–61. The Examiner then
`issued a Notice of Allowance (id. at 472–78), indicating that the claims were
`allowable in view of the applicant’s remarks (id. at 477).
`
`13
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`b) Part One of the Advanced Bionics framework
`Petitioner argues that we should not exercise our discretion to deny
`institution under § 325(d) because the Petition presents new art and
`arguments. Pet. 96–97. In particular, Petitioner argues that, of the nine
`references asserted in the Petition, “only Rezvani-875 was cited—but not
`applied—during prosecution” of the ’305 application. Id. at 96. According
`to Petitioner, “[t]hat Rezvani-875 was not the basis for a rejection weighs
`‘strongly against’ denial.” Id. at 97 (citing SolarEdge Techs. LTD v. SMA
`Solar, IPR2020-00021, Paper 8 at 11–12 (PTAB Apr. 10, 2020)).
`Patent Owner argues that we should exercise our discretion and deny
`institution under § 325(d). Prelim. Resp. 24–32. Regarding the eight
`asserted grounds led by Rezvani-446, Rezvani-875, and Skulley (identified
`by the parties as Grounds 1A–1H), Patent Owner asserts that Rezvani-875
`was considered by the Examiner during examination and portions of the
`remaining prior art relied on by Petitioner in these eight grounds—including
`Rezvani-446 and Skulley—are duplicative of prior art that also was
`considered by the Examiner. Id. at 24. As for the six asserted grounds led
`by Schrager and Goldstein (identified by the parties as Grounds 2A–2F),
`Patent Owner merely states that “[w]hile the references considered for
`Ground 2A were not considered in the original prosecution, the merits of
`Ground 2A are weak.” Id. at 25.
`More specifically, Patent Owner argues that Rezvani-446 is
`duplicative of Camp, a reference that the Examiner considered and relied on
`during prosecution of the ’305 application. Id. at 27 (citing Ex. 1002, 362;
`Ex. 2003). Patent Owner asserts that “Petitioner relies on Rezvani-446 as
`disclosing a wireless portable media (WPM) server that exchanges wireless
`communications with a handset and/or an MP3 player,” and the Examiner
`
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`Patent 10,206,025 B2
`relies on Figure 3 of Camp, which “discloses a mobile terminal 130 that
`exchanges wireless communications with a terminal 142, such as, for
`example ‘a server based data processing and/or computing device.’” Id. at
`26–27 (citing Pet. at 25; Ex. 2003 ¶ 52). Thus, according to Patent Owner,
`“the examiner considered a reference teaching wireless communication to a
`server during the prosecution of the ’025 Patent.” Id. at 27.
`Patent Owner also argues that Skulley is duplicative of Camp. Id. at
`28. In particular, Patent Owner asserts that “Petitioner merely relies on
`Skulley as disclosing two-earphone headphones,” and “Camp discloses an
`audio signal receiver configured to ‘selectively provide audio signals via a
`personal audio output device 198 such as, for example, headphones and/or
`ear buds, among others.’” Id. (citing Pet. 14; Ex. 1002, 362; Ex. 2003 ¶ 63).
`Based on these assertions, Patent Owner contends that “the references
`presented in the Petition for Ground 1A [(i.e., Rezvani-446, Rezvani-875,
`and Skulley)] are materially the same as prior art references considered
`during prosecution,” and “the relied upon teachings of Rezvani-446,
`Rezvani-875 and Skulley for Ground 1A are cumulative to Rezvani-875 and
`Camp, which were considered during the original examination.” Id. at 28–
`29.
`
`Camp discloses “an apparatus for augmenting a musical instrument
`using a mobile communications terminal.” Ex. 2003 ¶ 44. Figure 3 of
`Camp is reproduced below.
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`
`
`Figure 3 illustrates a mobile terminal used for augmenting a musical
`instrument. Id. ¶¶ 25, 50. Mobile terminal 130 receives acoustic audio
`signal 20, in the form of acoustic energy, from musical instrument 10. Id.
`¶ 50. Mobile terminal 130 can transmit the audio signal to personal speakers
`136 over electrically conductive coupling 138. Id.
`In addition, mobile terminal 130 can transmit audio signal 20 to
`network 140, which can comprise wireless or wired communication
`networks, data networks, local area networks, wide area networks, and the
`Internet. Id. ¶ 51. Network 140 also can be connected to audio amplifier
`132, which amplifies audio signal 20 to drive audio output devices or
`speakers 134. Id. ¶ 52. Furthermore, audio signal 20 may be received from
`network 140 by remote or local stationary terminal 142, which could be “a
`desktop, personal and/or server based data processing and/or computing
`device.” Id. “In this regard, the remote stationary terminal 142 may play the
`
`16
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`IPR2021-00612
`Patent 10,206,025 B2
`audio signal 20 that is generated by the musical instrument 10 in a location
`that is remote from the musical instrument 10.” Id. ¶ 52. Lastly, audio
`signal 20 may be received from network 140 by remote mobile terminal 144.
`Id. ¶ 53.
`We first consider Rezvani-446. Although there may be some
`similarities between Rezvani-446 and Camp, there are also material
`differences under Becton, Dickinson factor (a). Namely, the Examiner
`determined that Camp’s “headphone assembly” 136 is not capable of
`wireless communication. Ex. 1002, 363–64. Petitioner, however, argues
`that Rezvani-446 discloses a wireless headset. Pet. 10–11 (citing Ex. 1097
`¶¶ 42, 46, 55, 58, 59, 69, Figs. 4, 5, 7).
`In addition, although the Examiner determined that Camp’s mobile
`terminal 130 is a digital audio player (Ex. 1002, 362), it is not clear that
`Camp involves a digital signal. As noted above, Camp discloses that mobile
`terminal 130 receives audio signal 20, in the form of acoustic energy, from
`musical instrument 10. Ex. 2003 ¶ 50. We are not aware of any disclosure
`in Camp that audio signal 20 is converted to a digital signal. To the
`contrary, regarding Figure 1, Camp discloses that audio signal receiver 120
`receives an audio signal from a musical instrument and “is configured to
`convert acoustic energy generated by the musical instrument into, for
`example, an analog audio signal.” Id. ¶ 46 (emphasis added). Rezvani-446
`does not disclose receiving acoustic energy from a musical instrument;
`instead, Rezvani-446 discloses providing content to clients from a WPM
`server, which in turn receives content from a content provider. Ex. 1097 ¶ 4.
`Moreover, Rezvani-446 discloses that its client devices can include handsets
`such as personal digital assistants (PDAs) and cell phones (id. ¶ 22), which
`strongly implies providing content as digital signals.
`
`17
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`IPR2021-00612
`Patent 10,206,025 B2
`In view of these material differences, we also determine that Rezvani-
`446 and Camp are not cumulative under Becton, Dickinson factor (b).17
`Regarding Becton, Dickinson factor (d), which is “the extent of the
`overlap between the arguments made during examination and the manner in
`which Petitioner relies on the prior art or Patent Owner distinguishes the
`prior art,” we note that then-pending claim 2 was amended significantly after
`the Examiner’s rejection based on Camp. Ex. 1002, 443. In particular,
`claim 2 was amended to recite (1) that the headphone assembly is “separate
`from and in wireless communication with the mobile digital audio player”;
`(2) “a processor”; (3) “a remote, network-connected server that is in wireless
`communication with the mobile, digital audio player”; and (4) that “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.” Id. In other words, these limitations were not included
`in the version of claim 2 rejected by the Examiner.
`The Examiner subsequently allowed amended claim 2.18 Id. at 472–
`78. As such, the Examiner did not take the position that Camp, either alone
`or in combination with other references, discloses the limitations added by
`amendment. In contrast, Petitioner argues that Rezvani-446, either alone or
`in combination with Rezvani-875, discloses each of these limitations.
`Pet. 18–19, 23, 25–26, 27–28. Accordingly, we determine that there is little
`
`
`17 Although Patent Owner does not argue that Rezvani-446 and Rezvani-875
`are cumulative, we note that these two references have material differences.
`Compare § III.E.1 infra with, § III.E.2 infra.
`18 Amended claim 2 issued as claim 1. See Ex. 1002, 481 (mapping original
`claim 2 to final claim 1).
`
`18
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`IPR2021-00612
`Patent 10,206,025 B2
`or no overlap between the manner in which Petitioner relies on the prior art
`and the positions taken by the Examiner during examination.
`For the above reasons, we determine that Rezvani-446 is not the same
`or substantially the same as Camp under Becton, Dickinson factors (a), (b),
`and (d).
`Regarding Skulley, Petitioner argues that this reference, which relates
`to cushions for the earphones in headsets (see Ex. 1017, 1:6–8), discloses
`that headsets can incorporate one or two earphones for monaural or stereo
`listening. Pet. 13 (citing Ex. 1017, 1:22–38; Ex. 1005 ¶¶ 50–51, 69,141–
`143); see also id. at 14 (asserting it would have been obvious to implement
`the headset of the combination of Rezvani-446 and Rezvani-875 with two-
`earphone headphones per Skulley). The Examiner determined that Camp
`discloses a “headphone assembly” 136 that includes first and second
`earphones. Ex. 1002, 362–63. Thus, although there are substantial
`differences between Camp’s system for augmenting a musical instrument
`and Skulley’s earphone cushions, we determine that there is overlap between
`the manner in which Petitioner relies on Skulley’s disclosure of two
`earphones and the position taken by the Examiner regarding Camp
`disclosing a headphone assembly with two earphones. As such, as to the
`claim 1 limitation of the headphone assembly comprising first and second
`earphones, Skulley is substantially the same art as Camp.
`In summary, Rezvani-875 was previously presented to the Office, and
`we have determined that Skulley is substantially the same as Camp, which
`also was previously presented to the Office. We have determined further,
`however, that Rezvani-446 is not the same or substantially the same as prior
`art previously presented to the Office. Thus, the combination of Rezvani-
`446, Rezvani-875, and Skulley presented in Ground 1A is not the same or
`
`19
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`IPR2021-00612
`Patent 10,206,025 B2
`substantially the same art previously presented to the Office. The fact that
`some of the prior art from the combination was previously presented to the
`Office alone is insufficient to satisfy the first prong of Advanced Bionics
`two-part test, particularly given that Petitioner relies on Rezvani-446 for
`disclosing several aspects of claim 1. Furthermore, regarding the remaining
`grounds asserted in the Petition (i.e., Grounds 1B–2F), Patent Owner does
`not contend that any of Harada, Hind, Davis, Oh, Schrager, or Goldstein are
`the same or substantially the same as Camp or any other prior art previously
`presented to the Office, nor does Patent Owner contend that Petitioner’s
`arguments relying on any of Harada, Hind, Davis, Oh, Schrager, or
`Goldstein are the same or substantially the same as arguments previously
`presented to the Office. See generally id. at 24–32.
`In view of the above, we determine that Petitioner’s art and arguments
`are not the same or substantially the same as the art and arguments
`previously presented to the Office.
`c) Part Two of the Advanced Bionics framework
`Because we determine, under Advanced Bionics part 1 that the
`Examiner did not consider the same or substantially the same prior art and
`arguments as Petitioner presents, we need not determine whether the
`Examiner erred under Advanced Bionics part 2.
`d) Conclusion
`For the above reasons, we find that the same or substantially the same
`art or arguments were not previously presented, and we do not exercise our
`discretion under § 325(d) to deny institution in this proceeding.
`D. Discretion Under 35 U.S.C. § 314(a)
`Patent Owner argues that we should exercise discretion to deny
`institution under 35 U.S.C. § 314(a) in view of the Bose Litigation and the
`
`20
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`IPR2021-00612
`Patent 10,206,025 B2
`Apple Litigation. Prelim. Resp. 6–24; Prelim. Sur-reply. Petitioner
`disagrees. Pet. 91–95; Prelim. Reply. As noted above, the Bose Litigation
`has been dismissed. Ex. 1137. Accordingly, our analysis below focuses on
`the Apple Litigation.
`Institution of an inter partes review is discretionary. See 35 U.S.C.
`§ 314(a) (authorizing institution of an inter partes review under particular
`circumstances, but not requiring institution under any circumstances);
`
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