IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`In re Patent of: Michael J. Koss, et al.
`U.S. Patent No.:
`10,506,325 Attorney Docket No.: 50095-0022IP2
`Issue Date:
`December 10, 2019
`
`Appl. Serial No.: 16/528,703
`
`Filing Date:
`August 1, 2019
`
`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
`
`
`PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT
`NO. 10,506,325 PURSUANT TO 35 U.S.C. §§311–319, 37 C.F.R. §42
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`Attorney Docket No.: 50095-0022IP2
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`IPR of U.S. Pat. No. 10,506,325
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`TABLE OF CONTENTS
`I. 
`INTRODUCTION ......................................................................................... 1 
`II.  REQUIREMENTS FOR UNDER 37 C.F.R. §42.104 ................................ 1 
`A. 
`Standing ................................................................................................. 1 
`B. 
`Relief Requested: Timing and Grounds ................................................ 1 
`III.  THE BOARD SHOULD NOT DENY INSTITUTION UNDER 35
`U.S.C. § 325(d) ............................................................................................... 4 
`A.  Apple’s Grounds and Obviousness Rationales Were Not Previously
`Considered by The Office ..................................................................... 4 
`B. 
`The Office Erred in Granting the ’325 Patent ....................................... 5 
`IV.  PTAB DISCRETION UNDER 35 U.S.C. § 314(a) SHOULD NOT
`PRECLUDE INSTITUTION........................................................................ 8 
`A. 
`The General Plastic Factors Favor Institution ...................................... 8 
`B. 
`The Fintiv Factors Also Favor Institution ........................................... 10 
`1. 
`Stay ............................................................................................ 10 
`2. 
`Uncertain District Court Schedule ............................................ 10 
`3. 
`Early Stage of Parallel Proceedings .......................................... 12 
`4. 
`The Petition Raises Unique Issues ............................................ 14 
`5. 
`Apple’s Involvement in the Texas Litigation ........................... 15 
`6. 
`Other Considerations ................................................................ 15 
`THE ’325 PATENT ..................................................................................... 15 
`A.  Overview ............................................................................................. 15 
`B. 
`Prosecution History ............................................................................. 18 
`C. 
`Claim Construction ............................................................................. 18 
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`V. 
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`B. 
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`IPR of U.S. Pat. No. 10,506,325
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`VI.  THE CHALLENGED CLAIMS ARE UNPATENTABLE ..................... 19 
`A. 
`[GROUND 1A] – Claims 5-8 Are Obvious Over Rosener, Huddart,
`Haupt, and Seshadri ............................................................................. 19 
`1. 
`References ................................................................................. 19 
`2. 
`Rosener-Huddart-Haupt-Seshadri Combination ....................... 30 
`3. 
`Overview of Claim 1 ................................................................. 40 
`4. 
`Claims 5-8 ................................................................................. 57 
`[GROUND 1B] – Claim 8 Is Obvious Over Rosener, Huddart, Haupt,
`Seshadri, and Vanderelli ..................................................................... 72 
`1. 
`Vanderelli .................................................................................. 72 
`2. 
`Rosener, Huddart, Haupt, Seshadri in view of Vanderelli ....... 73 
`[GROUND 1C] – Claims 11-13 Are Obvious Over Rosener, Huddart,
`Haupt, Seshadri, and Price .................................................................. 74 
`1. 
`Price ........................................................................................... 74 
`2. 
`Rosener, Huddart, Haupt, and Seshadri in view of Price ......... 76 
`3. 
`Overview of Claims 9 and 10 ................................................... 78 
`4. 
`Claims 11-13 ............................................................................. 80 
`VII.  FEES ............................................................................................................. 80 
`VIII.  CONCLUSION ............................................................................................ 80 
`IX.  MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ..................... 81 
`A. 
`Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) .......................... 81 
`B. 
`Related Matters Under 37 C.F.R. § 42.8(b)(2) ................................... 81 
`C. 
`Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ................ 81 
`D. 
`Service Information ............................................................................. 81 
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`C. 
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`APPLE-1001
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`APPLE-1002
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`
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`EXHIBITS
`U.S. Patent No. 10,506,325 to Koss et al. (“the ’325 patent”)
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`Attorney Docket No.: 50095-0022IP2
`IPR of U.S. Pat. No. 10,506,325
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`Excerpts from the Prosecution History of the ’325 patent (“the
`Prosecution History”)
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`APPLE-1003
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`Declaration of Jeremy R. Cooperstock
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`APPLE-1004
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`U.S. Pat. App. Pub. No. 2008/0076489 (“Rosener”)
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`APPLE-1005
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`U.S. Pat. No. 7,627,289 (“Huddart”)
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`APPLE-1006
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`Certified Translation of WO 2006/042749 (“Haupt”)
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`APPLE-1007
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`U.S. Pat. No. 5,371,454 (“Marek”)
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`APPLE-1008
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` U.S. Pat. App. Pub. No. 2006/0026304 (“Price”)
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`APPLE-1009
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`RESERVED
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`APPLE-1010
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`U.S. Pat. No. 7,027,311 (“Vanderelli”)
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`APPLE-1011
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`RESERVED
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`APPLE-1012
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`RESERVED
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`APPLE-1013
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`RESERVED
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`APPLE-1014
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`Plaintiff KOSS Corporations’ Preliminary Infringement
`Contentions, KOSS Corporation v. Apple Inc., 6:20-cv-00665
`(WDTX)
`
`APPLE-1015
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`Example Order Governing Proceedings - Patent Case
`
`APPLE-1016
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`Agreed [Proposed] Scheduling Order, KOSS Corporation v.
`Apple Inc., 6:20-cv-00665 (WDTX)
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`iii
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`APPLE-1017
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`APPLE-1018
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`APPLE-1019
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`APPLE-1020
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`APPLE-1021
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`APPLE-1022
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`Attorney Docket No.: 50095-0022IP2
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`IPR of U.S. Pat. No. 10,506,325
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`Katie Buehler, “Texas Patent Trials Halted Due to COVID-19
`Spike,” Law360, available at
`https://www.law360.com/ip/articles/1330855/texas-patent-
`trials-halted-due-to-covid-19-spike.
`
`Scott McKeown, District Court Trial Dates Tend to Slip After
`PTAB Discretionary Denials, available at
`https://www.patentspostgrant.com/district-court-trial-dates-
`tend-to-slip-after-ptab-discretionary-denials/ (Jul. 24, 2020)
`
`RESERVED
`
`Agreed Amended Scheduling Order, Fintiv, Inc. v. Apple, Inc.,
`Civil Action No. A-19-CV-1238 (WDTX)
`
`Letter from Doug Winnard to Darlene F. Ghavimi re
`Conditional Stipulation dated March 19, 2021
`
`U.S. Pat. App. Pub. No. 2006/0166716 to Seshadri et al.
`(“Seshadri”)
`
`APPLE-1023
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`U.S. Pat. App. No. 2005/0037818 to Seshadri et al. (“Seshadri-
`818”)
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`iv
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`I.
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`Attorney Docket No.: 50095-0022IP2
`IPR of U.S. Pat. No. 10,506,325
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`INTRODUCTION
`On 12/15/2020, Apple, Inc. (“Apple”) petitioned for Inter Partes Review
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`(“IPR”) of claims 1-4, 9, 10, and 14-20 of U.S. Patent No. 10,506,325 (“the ’325
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`patent”) in IPR2021-00305. In this petition, Apple petitions for IPR of claims 5-8
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`and 11-13 (“the Challenged Claims”) of the ’325 patent, which were not previously
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`challenged in IPR2021-00305 and are therefore unique to this petition.
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`II. REQUIREMENTS FOR UNDER 37 C.F.R. §42.104
`A.
`Standing
`Apple certifies that the ’325 patent is available for IPR. This petition is
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`being filed within one year of service of a complaint against Apple. Apple is not
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`barred or estopped from requesting this review.
`
`B. Relief Requested: Timing and Grounds
`As noted in Section IV.A, Apple seeks to avoid any prejudice to Koss
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`arising from the serial nature of this petition’s filing relative to the prior filing
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`(IPR2021-00305) against the ’325 patent. If the Board institutes trial for both
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`petitions, Apple requests the following two scheduling adjustments relative to the
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`model scheduling order: (1) in the present proceeding, the deadline for Apple’s
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`reply (DUE DATE 2) is shortened by 6 weeks; and (2) in the related proceeding
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`(IPR2021-00305), the deadline for Patent Owner’s sur-reply (DUE DATE 3) is
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`lengthened to fall on the same day as the deadline for Apple’s reply (DUE DATE
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`2) in the present proceeding. In this manner, Apple will not be in possession of
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`1
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`Koss’s sur-reply in IPR2021-00305 prior to filing Apple’s reply in the present
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`proceeding.
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`Apple requests IPR of the Challenged Claims, which are supported by
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`testimony from Dr. Cooperstock. APPLE-1003, ¶16.
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`Ground
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`Claims
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`Basis (§103)
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`1A1
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`1B
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`5-8
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`8
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`Rosener, Huddart, Haupt, Seshadri
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`Rosener, Huddart, Haupt,
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`Vanderelli, Seshadri
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`1C2
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`11-13
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`Rosener, Huddart, Haupt,
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`Seshadri, Price
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`The ’325 patent was filed 8/1/2019, and claims priority to 4/7/2008. Apple
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`does not concede that the Challenged Claims are entitled to the claimed priority but
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`applies prior art before that date:
`
`                                                            
`1 Claim 5 depends from claim 1. Though claim 1 is not challenged in Ground 1A,
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`a discussion of its features are included for completeness.
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`2 Claim 11 depends from claim 10, which depends from claim 9. Though claims 9
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`and 10 are not challenged in Ground 1C, a discussion of their features is included
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`for completeness.
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`2
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`Reference Date(s)
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`Attorney Docket No.: 50095-0022IP2
`IPR of U.S. Pat. No. 10,506,325
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`Rosener
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`8/7/2006
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`Huddart
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`12/23/2005
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`Haupt
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`4/27/2006
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`Vanderelli
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`10/15/2004
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`Seshadri
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`7/27/2006
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`Seshadri-818 02/17/2005
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`Price
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`5/4/2005
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`§102(a)
`
`§102(e)
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`§102(b)
`
`§102(a)
`
`§102(b)
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`§102(b)
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`§102(a)
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`The prior art combinations and obviousness rationales advanced herein were
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`not before the Office during examination. Huddart and Price were not made
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`available to the Office during examination. APPLE-1002. While a related Haupt
`
`reference3 is cited on the face of the ’325 patent, Haupt was never substantively
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`addressed by the examiner. APPLE-1002. Similarly, a related Seshadri reference4
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`is cited on the face, but Seshadri was also never substantively addressed by the
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`                                                            
`3 U.S. Pat. App. No. 2008/0194209 is cited on the face of the ’325 patent and
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`claims priority to WO 2006/042749.
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`4 U.S. Pat. App. No. 2005/0136839 is cited on the face of the ’325 patent.
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`3
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`examiner. Finally, while the examiner previously evaluated Rosener, additional
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`evidence and facts presented herein warrant reconsideration in this proceeding.
`
`See §VI.
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`III. THE BOARD SHOULD NOT DENY INSTITUTION UNDER 35
`U.S.C. § 325(d)
`The Board evaluates six factors (“the Becton factors”) in determining
`
`whether to exercise its discretion to institute under 35 U.S.C. § 325(d). IPR2019-
`
`01469, Paper 6, 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”);
`
`IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first
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`paragraph) (“Becton”); Trial Practice Guide July 2019 Update, 28-31, Fed. Reg.
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`33,925 (July 16, 2019).
`
`A. Apple’s Grounds and Obviousness Rationales Were Not
`Previously Considered by The Office
`Becton factors (a), (b), and (d) support institution because this Petition does
`
`not present substantially the same prior art combinations or arguments that were
`
`before the Office in examination of the ’325 patent. Though Rosener was
`
`addressed by the examiner in a Notice of Allowance, the combination of Rosener
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`with Huddart, Haupt, Vanderelli, Seshadri, and/or Price in this Petition were not.
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`APPLE-1002, 34-35. Indeed, Huddart, Paulson, and Price were not made available
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`to the Office during examination, as evident from their absence from the ’325
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`patent’s list of cited references. APPLE-1001. Additionally, while related Haupt
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`and Seshadri references were among the references cited on the face of the ’325
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`patent, they were never addressed by the examiner. APPLE-1002. The Office did
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`not consider the prior art combinations being advanced in this Petition, and
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`therefore, these combinations are not cumulative of the prior art evaluated during
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`examination. Moreover, the examiner erred in evaluating Rosener and, as a result,
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`there are material differences between the application of Rosener by the examiner
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`and the application of Rosener in this Petition.
`
`Koss thus cannot argue, and the Board should not find, that “the same or
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`substantially the same art previously was presented to the Office” or that “the same
`
`or substantially the same arguments previously were presented to the Office,” as
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`required under part 1 of the Advanced Bionics framework.
`
`B.
`The Office Erred in Granting the ’325 Patent
`The Board need not reach part 2 of the Advanced Bionics framework since
`
`part 1 is not satisfied. Even if the Board evaluates part 2, Becton factors (c), (e),
`
`and (f) support institution.
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`As to Becton factor (c), the ’325 patent issued without any substantive prior
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`art rejections. The Office was not made aware of Huddart or Price during
`
`examination. Though related Haupt and Seshadri references were listed in Koss’s
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`Information Disclosure Statement, neither was applied by the examiner or
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`discussed by Koss. Id., 89-92; IPR2018-00853, Paper 13, 17 (PTAB Sept. 12,
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`2018) (“Under [Becton factors] (c), (d), and (f) . . . the fact that [references] were
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`of record, but not applied in any rejection by the Examiner . . . provides little
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`impetus for us to exercise our discretion to deny institution under [35 U.S.C. ]§
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`325(d).”).
`
`As for Rosener, the extent to which the examiner evaluated this reference
`
`was a single statement in the Notice of Allowance. APPLE-1002, 23. This
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`statement was not discussed further and the claims were allowed without further
`
`comment following correction of minor clerical errors. Id., 16-21. There was,
`
`therefore, no substantive discussion of Rosener during prosecution.
`
`Even if the examiner’s cursory statement regarding Rosener is considered
`
`substantive discussion, Becton factor (e) still favors institution since the examiner
`
`erred in evaluating Rosener. Specifically, the examiner overlooked disclosure in
`
`Rosener that explicitly and unambiguously taught or rendered obvious the claim
`
`features identified by the examiner as being absent from it. For example, the
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`examiner indicated that Rosener did not disclose or suggest “a pair of first and
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`second wireless earphones…wherein each of the first and second earphones
`
`comprises…at least one acoustic transducer for producing audible sound from the
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`earbud,” as claimed APPLE-1002, 35. Yet Rosener discloses that each of
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`earphones 502, 504 includes a “housing with a speaker” that can include “a
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`magnetic element attached to a voice-coil-actuated diaphragm, an electrostatically
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`6
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`charged diaphragm, a balanced armature driver, or a combination of one or more of
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`these transducer elements.” APPLE-1004, [0030]. Contrary to the examiner’s
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`statement, a person of ordinary skill in the art (“POSITA”)5 would have understood
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`a speaker and components disclosed in Rosener to correspond to the recited “at
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`least one acoustic transducer.” APPLE-1003, ¶97; §VII.A.3 (applying Rosener to
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`[1.9]).
`
`As another example, the examiner indicated that Rosener does not teach or
`
`suggest a “microphone for picking up utterances of a user of the headphones.”
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`However, Rosener discloses that “either or both the first and second data sinks of
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`various embodiments” (e.g., earphones 502, 504) include “a microphone to allow
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`[] data to be sent back to an external electronic device.” APPLE-1004, [0056]
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`(emphasis added). The examiner also overlooked other portions of Rosener that
`
`are discussed in greater detail below in sections advancing prior art mappings
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`based on Rosener. See, e.g., §VII.A.3 (discussing [1.7], [1.8], [1.11]).
`
`Given the inconsistences between the examiner’s evaluation of Rosener and
`
`its disclosure, Becton factor (f) supports institution because additional evidence
`
`and facts presented herein warrant reconsideration of Rosener by the Board in this
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`proceeding.
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`                                                            
`5APPLE-1003, ¶¶34-35 (defining a POSITA).
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`7
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`IV. PTAB DISCRETION UNDER 35 U.S.C. § 314(a) SHOULD NOT
`PRECLUDE INSTITUTION
`A. The General Plastic Factors Favor Institution
`This petition advances new references (Seshadri, Seshadri-818), in
`
`conjunction with the prior art from IPR2021-00305, with the intent of
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`demonstrating the unpatentability of dependent claims 5-8 and 11-12 (i.e., the
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`“signal strength claims”), which were not covered by the grounds in IPR2021-
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`00305. Indeed, the primary difference between this petition and that one is with
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`respect to this petition’s articulation of a ground against claims 5 and 11
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`(§§VI.A.4, VI.C.4, infra), which is then referenced throughout the remainder of the
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`petition with respect to other identical signal strength claims. This is a concise
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`addition to deal with 7 claims of the 18 claims alleged by Koss to have been
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`infringed by Apple. As offered in the concurrently filed Ranking Paper, Koss’s
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`unwillingness to narrow the claims asserted within the contentions leaves a
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`quantum of claims–18–that that could not reasonably be addressed in a single
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`petition in any event. APPLE-1014. Responsive to Koss’s unbounded
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`infringement allegations, Apple has judiciously worked to identify and frame for
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`consideration the prior art offered to demonstrate unpatentability. Apple filed a
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`first petition (IPR2021-00305) as quickly as possible to highlight prior art that
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`addressed claims other than those newly addressed by the instant petition, and
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`worked to furnish this petition as shortly thereafter with grounds that moderate any
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`increase in burden by introducing a narrow class of new issues for consideration of
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`the signal strength claims. Indeed, any burden that is borne out by this second
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`petition is clearly the direct result of Koss’s conduct in the co-pending litigation.
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`As to timing, Apple filed its first petition within four months of receiving
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`Koss’ extensive contentions. Apple has received neither Koss’s preliminary
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`response, nor the Board’s decision to institute in IPR2021-00305. And, as noted
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`above, this petition challenges the signal strength claims that were not challenged
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`in the IPR2021-00305 petition.
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`Lastly, in an effort to avoid any prejudice to Koss, Apple is willing to
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`subscribe to two scheduling adjustments in IPR2021-00305 and in the present
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`proceeding relative to the model scheduling order. See §II.B. In this way, Koss’s
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`sur-reply in IPR2021-00305 and Apple’s reply in the present proceeding are due
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`on the same day, eliminating any possibility of Apple gaining any advantage due to
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`the timing differences between the two proceedings.
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`IPR of U.S. Pat. No. 10,506,325
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`B.
`The Fintiv Factors Also Favor Institution
`The Apple Inc. v. Fintiv, Inc. factors, and recent Board decisions applying
`
`them, weigh against discretionary denial here. IPR2020-00019, Paper 11, 5-6 (Mar.
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`20, 2020) (precedential).6
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`1.
`Stay
`If this petition is instituted, a stay of the related litigation pending in the
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`Western District of Texas (“Texas Litigation”) would be appropriate. Crossroads
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`Sys. v. DOT Hill Sys. Corp., 2015 U.S. Dist. LEXIS 77526 (WDTX Jun. 16, 2015)
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`(granting stay). Regardless, the Board has consistently declined to speculate as to
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`whether a district court will grant a stay in any given case. IPR2019-01393, Paper
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`24, 7 (Informative); IPR2020-00158, Paper 16, 7.
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`Overall, this factor does not support discretionary denial.
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`2.
`Uncertain District Court Schedule
` Here, the earliest projected trial date in the Texas Litigation is April 18,
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`2022, approximately five and a half months before the expected final written
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`decision (FWD). “This factor looks at the proximity of the trial date to the date of
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`                                                            
`6 Apart from Apple’s showing that the Fintiv factors favor institution, the Fintiv
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`framework should not be followed because it is legally invalid. Specifically, the
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`framework (1) exceeds the Director’s authority, (2) is arbitrary and capricious, (3)
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`and was adopted without notice-and-comment rulemaking.
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`10
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`[FWD] to assess the weight to be accorded a trial date set earlier than the expected
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`[FWD] date.” IPR2020-00944, Paper 20, 61. As recognized by the Board, where
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`“there is at least some persuasive evidence that delays are possible,” trial dates
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`upward of six months before the FWD are insufficient to deny institution. Id.
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`Here, the law and facts support the same conclusion.
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`As the Federal Circuit explained in In re Apple, “a court’s general ability to
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`set a fast-paced schedule is not particularly relevant,” especially where “the forum
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`[i.e., WDTX] itself has not historically resolved cases so quickly.” In re Apple
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`Inc., No 20-135, slip op. at 16 (Fed. Cir. Nov. 9, 2020); IPR2020-01280, Paper 17,
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`13-16. Indeed, when assessing a case before Judge Albright in the WDTX, the
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`Federal Circuit found error in a particular judge’s reliance on his own scheduled
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`trial date. In re Apple Inc., No 20-135, slip op. at 15. Similarly, adhering to the
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`Federal Circuit’s guidance, it would be error for the Board to rely upon the current
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`schedule. And, if the Board instead projects the trial date using the WDTX’s
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`average time to trial—which itself leaves the Board to error-prone speculation as to
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`the timing of this particular trial—that speculated trial date that is (at best)
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`concurrent with the timing of the final written decision. Id.
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`Notably, here, concerns over speculation transcend the legal error noted by
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`the Federal Circuit, as averages are inherently unreliable in resolving trial dates.
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`This is evident from statistics concerning strikingly frequent trial slippage in
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`11
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`WDTX. “70% of [WDTX] trial dates initially relied upon by the PTAB to deny
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`petitions have slid,” as of July 2020. APPLE-1018. Such delays even impacted
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`the seminal NHK and Fintiv cases, where, after the Board denied institution,
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`associated trial dates were delayed to after the expected FWD dates by the courts—
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`the same WDTX court in Fintiv as is handling the Texas Litigation. IPR2018-
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`01680, Paper 22, 17, n. 6 (PTAB Apr. 3, 2019) (“In the district court case running
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`parallel to NHK Spring, the court ultimately moved the trial date back six months,
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`illustrating the uncertainty associated with litigation schedules.”); APPLE-1020, 2
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`(resetting Fintiv trial to October 4, 2021, nearly five months after the FWD would
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`have been due in the associated IPR).
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`And the current trial date is particularly uncertain since Apple has moved to
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`transfer the case to another venue, and thus, should not be given any significant
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`weight.
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`In contrast, despite the pandemic, the Board has adhered to the one-year
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`statutory deadline for FWDs prescribed by 35 U.S.C. § 316(a)(11). IPR2019-
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`01393, Paper 24, 9. Overall, this factor does not support discretionary denial. Id.,
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`8-10.
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`3.
`Early Stage of Parallel Proceedings
`By any objective standard, Apple filed these petitions at an early stage of the
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`litigation, a fact that “has weighed against exercising the authority to deny
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`institution under NHK.” IPR2020-00156, Paper 10, 11-12 (June 15, 2020). Here,
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`Apple filed this petition less than eight months after being served with the
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`complaint,7 just four-and-a-half months after Koss served infringement
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`contentions, and just over two months after Apple served preliminary invalidity
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`contentions. APPLE-1014, APPLE-1016, 2-3; IPR2020-00019, Paper 11, 11–12
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`& n.22. No substantive orders have been issued by the court in the underlying
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`litigation. Indeed, as of the filing of this Petition, the court has not yet heard or
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`ruled on Apple’s initial motion to strike Koss’s complaint.
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`It is entirely appropriate that Apple is filing its petition after receiving
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`infringement contentions—particularly because Koss asserted infringement of all
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`claims of the ’325 Patent. IPR2018-01498, Paper 13, 8-9 (finding that waiting “to
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`better understand the asserted claims, the bases for the infringement allegations …
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`and to identify relevant prior art” should not weigh in favor of discretionary
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`denial).
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`Moreover, this petition is being filed before the one-year statutory bar date.
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`IPR2018-01680, Paper 22, 18 (a petition filed two months before bar date is “well
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`7 Koss’s contentions assert 175 claims across five patents—including all 20 claims
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`of the ’982 Patent—a significant burden Apple has had to contend with in
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`developing this petition. APPLE-1014.
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`within the timeframe allowed by statute, weighing heavily in [petitioner’s] favor”).
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`Overall, this factor weighs against discretionary denial.
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`4.
`The Petition Raises Unique Issues
`The Texas Litigation is still early in its development and, the district court
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`requires “significant[] narrowing [of] the number of claims asserted” for trial.
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`APPLE-1015, 10. The number of claims adjudicated at the district court will likely
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`be significantly less than the number of claims addressed here. There will be a
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`significant likelihood of these unaddressed claims being reasserted against future
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`products, counseling against discretionary denial. IPR2020-00156, Paper 10, 17.
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`Nonetheless, to eliminate any doubt as to the absence of meaningful overlap
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`between the proceedings, Apple has stipulated that, unless the Board denies or later
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`vacates institution of this petition, Apple will not seek resolution in the trial of
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`invalidity based on any ground “that utilizes, as a primary reference, U.S. Pat. App.
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`Pub. No. 2008/0076489 (‘Rosener’).” APPLE-1021.
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`Overall, the lack of overlap between issues in an instituted IPR and the
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`related district court litigation weighs strongly against discretionary denial. See,
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`e.g., IPR2020-01113, Paper 12, 15-19 (Jan. 22, 2021).
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`5.
`Apple’s Involvement in the Texas Litigation
`With respect to Factor 5, the Fintiv decision “says nothing about situations
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`in which the Apple is the same as, or is related to, the district court defendant.”
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`IPR2020-00122, Paper 15, *10 (PTAB May 15, 2020) (APJ Crumbley, dissenting).
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`In cases such as the one at hand, where the parties are the same, the
`factor is neutral. To hold otherwise—that the factor weighs in favor
`of denial if the parties are the same—would, in effect, tip the scales
`against a petitioner merely for being a defendant in the district court.
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`Id.
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`6. Other Considerations
`As described in Section II.B, the Board has not previously considered the
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`grounds set forth in this petition or substantively similar grounds.
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`These patentability challenges are strong, which favors institution.
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`IPR2020-00156, Paper 10, 20-21. For these reasons, this factor also weighs
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`against discretionary denial.
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`In summary, the Fintiv factors weigh against discretionary denial.
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`V. THE ’325 PATENT
`A. Overview
`The ’325 patent relates to wireless earphones that receive streaming audio
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`data over a network. APPLE-1001, 2:1-23. Figure 3 (below) shows components
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`of earphone 10, including transceiver circuit 100 and peripheral components, such
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`as power source 102, microphone 104, one or more acoustic transducers 106, and
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`antenna 108. Id., 6:30-55; APPLE-1003, ¶¶17-18.
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`APPLE-1001, Figure 3
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`The ’325 patent describes various form factors of earphones 10, one of
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`which is shown in Figures 1A and 1B and involves wireless earphones 10
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`insertable into a user’s ear canal. APPLE-1001, 3:16-42; APPLE-1003, ¶19.
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`APPLE-1001, Figures 1A and 1B
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`Earphone 10 includes body 12 with ear canal portion 14 inserted into a user’s ear
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`canal. APPLE-1001, 3:16-42. Exterior portion 15 of body 12 includes knob 16,
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`which operates as a user control for adjusting shape of ear canal portion 14 to assist
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`with positioning within a user’s ear. Id.; APPLE-1003, ¶¶20-24.
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`The ’325 patent describes a wireless data communication system in which,
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`in one example, earphone 10 communicates with data source 20 via, for instance,
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`an ad hoc wireless network 24 (Figure 2A), a single access point 32 (Figure 2B),
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`and multiple access points 32a-b (Figure 2C). APPLE-1003, ¶¶25-31.
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`B.
`Prosecution History
`The ’325 patent was filed on 8/1/2019, claiming priority to a provisional
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`application filed on 4/7/2008. APPLE-1001, 1-2; APPLE-1002, 390; APPLE-
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`1003, ¶32. Because the prosecution history does not show that the examiner
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`considered the prior art combinations advanced herein, the arguments advanced are
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`new and should be considered on their merits. IPR2017-01586, Paper 8, 22-28.
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`C. Claim Construction
`The USPTO applies the Phillips standard, under which claim terms are
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`given their ordinary and customary meaning to a POSITA in light of the
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`specification. Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66
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`(Fed. Cir. 2012).
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`“[C]laim terms need only be construed to the extent necessary to resolve the
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`controversy,” and none require construction here. Wellman, Inc. v. Eastman Chem.
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`Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). Apple reserves the right to respond to
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`any constructions that may later be offered by Koss or adopted by the Board.
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`Apple is not waiving any arguments under 35 U.S.C. §1128 or claim-construction
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`arguments that may be raised in litigation.
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`VI. THE CHALLENGED CLAIMS ARE UNPATENTABLE
`A.
`[GROUND 1A] – Claims 5-8 Are Obvious Over Rosener,
`Huddart, Haupt, and Seshadri
`1.
`References
`(a) Rosener
`Rosener describes wireless systems with physically and electrically-
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`separated “data sinks.” APPLE-1004, Abstract. The data sinks include a wireless
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`communication device, e.g., radiofrequency (RF) receiver or transceiver, allowing
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`communications with an external device, such as a cellular telephone. Id. Rosener
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`discloses that data sinks can be “audio data sinks,” and provides various examples
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`such as “left-ear and right-ear earphones (e.g., earbuds, canalphones), left-ear and
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`                                                            
`8 In co-pending litigation Apple has asserted that certain limitations are indefinite
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`under §112. The grounds of this petition apply even in light of these
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`arguments. Apple’s §112 arguments assert that a POSITA would be unable to
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`reasonably ascertain the breadth of certain limitations. Yet the grounds herein
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`apply to the most restrictive interpretation of the claims, permitting evaluation of
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`the grounds despite Apple’s indefiniteness arguments.
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`A