IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`In re Patent of: Michael J. Koss, et al.
`U.S. Patent No.:
`10,206,025 Attorney Docket No.: 50095-0021IP1/0021IP2
`Issue Date:
`February 12, 2019
`
`Appl. Serial No.: 15/962,305
`
`Filing Date:
`April 25, 2018
`
`Title:
`SYSTEM WITH WIRELESS EARPHONES
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
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`PETITIONER’S NOTICE RANKING PETITIONS
`AND EXPLAINING MATERIAL DIFFERENCES BETWEEN
`PETITIONS AGAINST U.S. PATENT NO. 10,206,025
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`
`
`In re Patent of: Michael J. Koss, et al.
`U.S. Patent No.:
`10,206,025 Attorney Docket No.: 50095-0021IP1/0021IP2
`Issue Date:
`February 12, 2019
`
`Appl. Serial No.: 15/962,305
`
`Filing Date:
`April 25, 2018
`
`Title:
`SYSTEM WITH WIRELESS EARPHONES
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`PETITIONER’S NOTICE RANKING PETITIONS
`AND EXPLAINING MATERIAL DIFFERENCES BETWEEN
`PETITIONS AGAINST U.S. PATENT NO. 10,206,025
`
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`
`
`Attorney Docket No. 50095-0021IP1/0021IP2
`IPR of U.S. Patent No. 10,206,025
`Petitioner now has two concurrent petitions challenging the validity of all
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`claims of U.S. Patent No. 10,206,025 (“the ’025 patent”): IPR2021-00546 filed
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`February 22 and IPR2021-00626 filed March 17 (herewith). As explained below,
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`each petition challenges a different set of the 56 claims Patent Owner asserted
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`against Petitioner in the co-pending litigation. APPLE-1014. Pursuant to the
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`Board’s July 2019 Trial Practice Guide Update, Petitioner submits this paper to
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`“identify: (1) a ranking of the Petitions in the order in which it wishes the Board to
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`consider the merits…, and (2) a succinct explanation of the differences between the
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`Petitions, why the issues addressed by the differences are material, and why the
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`Board should exercise its discretion to institute additional petitions.”
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`I.
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`Ordering of Petitions
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`Petitioner believes that both petitions are meritorious and justified, espe-
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`cially because (as explained further below), both petitions are necessary to address
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`the 56 claims that Patent Owner asserted against Petitioner in the co-pending dis-
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`trict court litigation. Nonetheless, to the extent required, Petitioner requests that
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`the Board consider the petitions in the following order:
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`Rank
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`PTAB Case No.
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`1
`
`IPR2021-00546
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`Challenged
`Claims
`1-3, 6, 8, 10-13,
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`(First Petition)
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`16, 18, 20-22, 25,
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`27, 29-31, 34, 36,
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`1
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`Attorney Docket No. 50095-0021IP1/0021IP2
`IPR of U.S. Patent No. 10,206,025
`38-43, 46, 48, and
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`51-56
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`2
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`IPR2021-00626
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`1-6, 9, 11-17, 19-
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`(Second Petition)
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`26, 28-35, 37, 40-
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`50
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`
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`II. Material Differences that Compel Permitting Multiple Petitions
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`The Board’s “Trial Practice Guide” notes that “the Board recognizes that
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`there may be circumstances in which more than one petition may be necessary, in-
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`cluding, for example, when the patent owner has asserted a large number of
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`claims.” Consolidated TPG at 59 (Nov. 2019). This case presents a prototypical
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`case where “patent owner has asserted a large number of claims.” As explained in
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`Section V of both petitions, Patent Owner asserted all 56 claims of the ’025 Patent
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`against Petitioner in the co-pending litigation.
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`Each of the petitions of the first and second petitions cover different claims.
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`Specifically, the first petition challenges claims 1-3, 6, 8, 10-13, 16, 18, 20-22, 25,
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`27, 29-31, 34, 36, 38-43, 46, 48, and 51-56, which is all claims except those de-
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`pendent claims that recite that “the headphone assembly transitions to play digital
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`audio content received wirelessly from the second digital audio source . . . based
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`2
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`
`
`Attorney Docket No. 50095-0021IP1/0021IP2
`IPR of U.S. Patent No. 10,206,025
`on, at least, a signal strength level . . .” (i.e., the “signal strength claims”). The sec-
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`ond petition relies upon the disclosure of Seshadri-818, in addition to the prior art
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`relied upon in IPR2021-00546, with the intent of demonstrating the unpatentability
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`of the signal strength claims (i.e., claims 4, 5, 7, 9, 14-15, 17, 19, 23-24, 26, 28,
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`32-33, 35, 37, 44-45, 47, 49-50). Given the dependencies of the signal strength
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`claims, however, there is substantial overlap between the first and second petitions.
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`As a result, the primary difference between the first and second petitions is an ap-
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`proximately six page section of the second petition that addresses the signal
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`strength claims (see pp. 35-41 of the second petition). This is a concise addition to
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`deal with the 21 identical signal strength claims, the inclusion of which was en-
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`tirely precipitated by Koss’s allegation that Apple infringes all 56 claims of the
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`’025 patent—a number of claims that could not reasonably be addressed in a single
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`petition. APPLE-1014. Thus, Apple has judiciously moderated any increase in
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`burden from the two petitions, and such increase in burden is a direct result of
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`Koss’s conduct in the co-pending litigation.
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`In cases like this one where a patent owner asserts more than 30 claims
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`against a petitioner, the Board has regularly allowed for the filing of multiple peti-
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`tions to challenge the excessive number of asserted claims. See, e.g., Apple Inc. v.
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`Seven Networks, LLC, IPR2020-00707, Paper 11 at 19-21 (PTAB Oct. 22, 2020)
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`(granting two petitions filed against 44 asserted claims); Dolby Laboratories, Inc.
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`3
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`
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`Attorney Docket No. 50095-0021IP1/0021IP2
`IPR of U.S. Patent No. 10,206,025
`v. Intertrust Technologies Corp., IPR2020-01106, Paper 12 at 19-21 (PTAB Jan 5,
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`2021) (granting two petitions filed against 18 claims); Adobe Inc. v. Synkloud
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`Technologies, LLC, Paper 8 at 8-10 (PTAB Mar. 11, 2021) (granting two petitions
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`filed against 20 “lengthy” and “complex” asserted claims). Further, the petitions
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`of IPR2021-00546 and IPR2021-00626 were each filed relatively close in time (ap-
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`proximately three weeks apart), providing the Board an opportunity to gain effi-
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`ciencies by issuing a single scheduling order that sets the same due dates for both
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`proceedings, ultimately culminating in a consolidated oral hearing. See id. Thus,
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`Petitioner submits that any additional burden on the finite resources of the Board is
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`reasonable in light of the circumstances.
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`For each of these reasons, Petitioner respectfully requests institution of both
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`of its concurrently filed IPR petitions against the ’025 patent.
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`Dated
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`March 17, 2021
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`Respectfully submitted,
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`
`/W. Karl Renner/
`
`W. Karl Renner, Reg. No. 41,265
`David Holt, Reg. No. 65,161
`Joel A. Henry, Reg. No. 72,970
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
`
`Attorneys for Petitioner
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`4
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`
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`Attorney Docket No. 50095-0021IP1/0021IP2
`IPR of U.S. Patent No. 10,206,025
`
`
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4)(i) et seq. and 42.105(b), the undersigned
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`certifies that on March 17, 2021, a complete and entire copy of this “Petitioner’s
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`Notice Ranking Petitions and Explaining Material Differences Between Petitions
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`Against U.S. Patent No. 10,206,025” was provided via FedEx, to the Patent Owner
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`by serving the correspondence address of record as follows:
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`K&L Gates – Pittsburgh
`210 Sixth Avenue
`Pittsburgh, PA 15222
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`/Edward G. Faeth/
`Edward Faeth
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(858) 678-5667
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