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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`BOSE CORPORATION,
`Petitioner,
`
`v.
`
`KOSS CORPORATION,
`Patent Owner.
`
`
`IPR2021-00680
`U.S. Patent No. 10,469,934
`
`
`
`PATENT OWNER SUR-REPLY
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`
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`505771548.1
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` I.
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`IPR2021-00680
`Patent Owner Sur-Reply
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`TABLE OF CONTENTS
`
`INTRODUCTION ............................................................................................... 1
`II. DR. WILLIAMS’S TESTIMONY IS UNRELIABLE ....................................... 1
`III. PETITIONER FAILED TO SHOW THAT CLAIM 1 WOULD HAVE BEEN
`OBVIOUS............................................................................................................ 4
`A. Ground 1A .................................................................................................. 4
`B. Ground 2A .................................................................................................. 6
`IV. PETITIONER FAILED TO SHOW THAT SIGNAL STRENGTH CLAIMS
`WOULD HAVE BEEN OBVIOUS .................................................................... 8
`V. PETITIONER FAILED TO SHOW THAT CLAIMS 34-41 WOULD HAVE
`BEEN OBVIOUS ..............................................................................................12
`A. Ground 1A and 1C .................................................................................... 12
`B. Grounds 2C-2D ........................................................................................ 15
`VI. PETITIONER FAILED TO SHOW THAT CLAIMS 56-57 WOULD HAVE
`BEEN OBVIOUS ..............................................................................................18
`A. Ground 1A ................................................................................................ 18
`B. Ground 2C ................................................................................................ 19
`C. Comments Relative to Both Grounds 1A and 2C .................................... 20
`VII. COMMERCIAL SUCCESS OF AIRPODS DEMONSTRATES
`NONOBVIOUSNESS OF CHALLENGED CLAIMS .....................................23
`VIII. CONCLUSION ..............................................................................................24
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`TABLE OF AUTHORITIES
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`IPR2021-00680
`Patent Owner Sur-Reply
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` Page(s)
`
`Cases
`Adobe Inc. v. RAH Color Techs. LLC,
`IPR2019-00627, Paper 59 (PTAB Dec. 12, 2019) ............................................... 3
`Apple Inc. v. Int’l Trade Comm’n,
`725 F.3d 1356 (Fed. Cir. 2013) .......................................................................... 23
`Arendi S.A.R.L. v. Apple Inc.,
`832 F.3d 1355 (Fed. Cir. 2016) ................................................................... 14, 18
`Ariosa Diagnostics v. Verinata Health, Inc.,
`805 F.3d 1359 (Fed. Cir. 2015) ...................................................................passim
`Chums, Inc. v. Cablz, Inc.,
`IPR2014-01240, Paper 43 (PTAB Feb. 8, 2016) .................................................. 8
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) .................................................................................................. 4
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) ...................................................................passim
`Rohm and Haas Co. v. Brotech Corp.,
`127 F.3d 1089 (Fed. Cir. 1997) ............................................................................ 4
`Ruiz v. A.B. Chance Co.,
`357 F.3d 1270 (Fed. Cir. 2004) .......................................................................... 22
`Ultratec, Inc. v. CaptionCall LLC,
`872 F.3d 1267 (Fed. Cir. 2017) ............................................................................ 2
`Wenger Mfg., Inc. v. Coating Mach. Sys., Inc.,
`239 F.3d 1225 (Fed. Cir. 2001) .......................................................................... 16
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`IPR2021-00680
`Patent Owner Sur-Reply
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`Other Authorities
`37 C.F.R. § 42.65(a) ................................................................................................... 4
`Consolidated Trial Practice Guide, Nov. 2019 ……………...........................passim
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`IPR2021-00680
`Patent Owner Sur-Reply
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`EXHIBIT LISTING
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`
`DESCRIPTION
`EXHIBIT
`KOSS-2001 Docket Report, Koss Corp. v. Bose Corp., Case No. 6:20-cv-
`00661-ADA (W.D. Tex.) (as of July 15, 2021)
`KOSS-2002 Docket Report, Koss Corp. v. Apple Inc., Case No. 6:20-cv-
`00665-ADA (W.D. Tex.) (as of July 14, 2021)
`KOSS-2003 Order Granting Bose Corporation’s Motion to Dismiss for
`Improper Venue, Koss Corp. v. Bose Corp., Case No. 6:20-cv-
`00661-ADA, Dkt. 55 (W.D. Tex. Jun. 22, 2021)
`KOSS-2004 Order Denying Defendant’s Motion to Transfer (Redacted/Public
`version), Koss Corp. v. Apple Inc., Case 6:20-cv-00665-ADA,
`Dkt. 76 (W.D. Tex. April 22, 2021)
`KOSS-2005 Order Granting Motion to Transfer, Apple Inc. v. Koss Corp.,
`Case No. 20-cv-05504-JST, Dkt. 72 (N.D. Cal. May 12, 2021)
`Joint Motion to Consolidate Cases, Koss Corp. v. Apple Inc., Case
`No. 6:20-cv-00665-ADA, Dkt. 84 (W.D. Tex. June 8, 2021)
`KOSS-2007 U.S. Patent 8,190,203
`KOSS-2008 U.S. Patent 8,571,544
`KOSS-2009 U.S. Patent 9,049,502
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`KOSS-2006
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`KOSS-2010 U.S. Patent 9,438,987
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`KOSS-2011 U.S. Patent 9,497,535
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`KOSS-2012 U.S. Patent 9,729,959
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`KOSS-2013 U.S. Patent 9,986,325
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`KOSS-2014 U.S. Patent 10,206,025
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`DESCRIPTION
`EXHIBIT
`KOSS-2015 U.S. Patent 10,368,155
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`IPR2021-00680
`Patent Owner Sur-Reply
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`KOSS-2017
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`KOSS-2016 Agreed Scheduling Order, Koss Corp. v. Apple Inc., Case No.
`6:20-cv-00665-ADA, Dkt. 30 (W.D. Tex. Nov. 30, 2020)
`Joint Motion to Amend Agreed Scheduling Order, Koss Corp. v.
`Apple Inc., Case No. 6:20-cv-00665-ADA, Dkt. 85 (W.D. Tex.
`June 15, 2021).
`KOSS-2018 Claim Construction Order, Koss Corp. v. Apple Inc., Case No.
`6:20-cv-00665-ADA, Dkt. 83 (W.D. Tex. June 2, 2021).
`KOSS-2019 R. Davis, “Albright Says He’ll Very Rarely Put Cases On Hold
`For PTAB,” Law 360, May 11, 2021
`(www.law360.com/ip/articles/1381597/albright-says-he-ll-very-
`rarely-put-cases-on-hold-for-ptab?nl_pk=c24deb67-194a-4b6c-
`918a-
`ea02a827e121&utm_source=newsletter&utm_medium=email&ut
`m_campaign=ip) (last accessed Jun. 11, 2021)
`KOSS-2020 Order Denying Motion to Stay, Kerr Machine Co. v. Vulcan
`Industrial Holdings, et al., Case 6:20-cv-00200-ADA, Dkt. 76
`(W.D. Tex. April 7, 2021)
`KOSS-2021 Order Governing Proceedings - Patent Case, Judge Albright,
`W.D. Tex. Waco Division, Feb. 23, 2021
`KOSS-2022 Exhibit C1 to Apple Inc.’s Preliminary Invalidity Contentions,
`Koss Corp. v. Apple Inc., Case No. 6:20-cv-00665-ADA, January
`15, 2021 (W.D. Tex.)
`Joint Claim Construction Statement, Koss Corp. v. Apple Inc.,
`Case No. 6:20-cv-00665-ADA, Dkt. 68 (W.D. Tex. Apr. 14,
`2021)
`KOSS-2024 Docket Report, Koss Corp. v. Skullcandy, Inc., Case No. 2:21-cv-
`00203 (D. Utah) (as of July 14, 2021)
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`KOSS-2023
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`EXHIBIT
`KOSS-2025
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`IPR2021-00680
`Patent Owner Sur-Reply
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`DESCRIPTION
`
`Patent 8,655,420
`KOSS-2026 Order Granting Defendants’ Motion to Transfer Venue Under 28
`U.S.C. § 1404(a), Koss Corp. v. Plantronics, Inc. et al., Case No.
`6:20-cv-00663, Dkt. 45 (W.D. Tex. May 20, 2021)
`KOSS-2027 Docket Report, Koss Corp. v. Plantronics, Inc. et al., Case No.
`4:21-cv-03854-JST (N.D. Cal.) (as of July 14, 2021)
`KOSS-2028 Order Granting Skullcandy, Inc.’s Motion to Dismiss for
`Improper Venue under Rule 12(b)(3), Koss Corp. v. Skullcandy,
`Inc., Case No. 6:20-cv-00664, Dkt. 38 (W.D. Tex. Mar. 31, 2021)
`KOSS-2029 Docket Report, Koss Corp. v. Skullcandy, Inc., Case No. 2:21-cv-
`00203 (D. Utah April 1, 2021)
`KOSS-2030 Defendant Apple Inc.’s Invalidity Contentions, Koss Corp. v.
`Apple Inc., Case No. 6:20-cv-00665-ADA, January 15, 2021
`(W.D. Tex.)
`KOSS-2031 Docket Report, Apple Inc. v. Koss Corp., Case No. 4:20-cv-
`05504-JST (N.D. Cal.) (as of July 15, 2021)
`KOSS-2032 Letter from M. Rader to D. Ghavimi, April 6, 2021
`KOSS-2033 Order, In re Apple Inc., Case No. 21-147, D.I. 25 (Fed. Cir.
`August 4, 2021)
`KOSS-2034 C. Miller, “Apple releases updated firmware version for AirPods
`and AirPods Pro,” 9to5Mac, April 28, 2021
`(9to5mac.com/2021/04/28/apple-releases-updated-firmware-
`version-for-airpods-and-airpods-pro/) (last accessed September 8,
`2021)
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`IPR2021-00680
`Patent Owner Sur-Reply
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`EXHIBIT
`KOSS-2035
`
`DESCRIPTION
`J. Clover, “Apple Updates AirPods 2 and AirPods Pro Firmware
`to Version 3A283,” MacRumors, September 14, 2020
`(www.macrumors.com/2020/09/14/apple-updates-airpods-
`firmware-3a283/) (last accessed September 15, 2021)
`KOSS-2036 M. Potuck, “AirPods dominate wireless headphone market as
`global growth hits 90% for 2020,” 9to5Mac, Jan. 27, 2021
`(https://9to5mac.com/2021/01/27/airpods-dominate-wireless-
`headphone-market/) (last accessed Sept. 15, 2021)
`KOSS-2037 Exhibit 1014 from IPR2021-00592 (“Plaintiff Koss Corporation’s
`Preliminary Infringement Contentions,” Koss Corp. v. Apple, Inc.,
`Case No. 6:20-cv-00665 (W.D. Tex. Nov. 6, 2020))
`KOSS-2038 Exhibit H to Dkt. No. 1 in Koss Corp. v. Apple, Inc., Case No.
`6:20-cv-00665 (W.D. Tex. July, 22, 2020)
`“Connect your AirPods and AirPods Pro to your iPhone,” Apple
`Support (support.apple.com/en-us/HT207010) (last accessed Sept.
`9, 2021)
`KOSS-2040 U.S. Patent 7,881,745 B1 to Rao et al.
`KOSS-2041 Excerpts from Merriam Webster’s Collegiate Dictionary, 10th
`ed., 1996
`KOSS-2042 Excerpts from Microsoft Computer Dictionary, 5th ed.,
`KOSS-2043 Techopedia Online Dictionary definition of “database”
`(www.techopedia.com/definition/1185/database-db) (accessed
`Dec. 22, 2021)
`KOSS-2044 U.S. Pub. No. 2006/0238163 A1 to Chen
`KOSS-2045 U.S. Patent No. 7,920,891 B2 to Kwak
`KOSS-2046 Deposition Transcript of Dr. T. Williams, Dec. 2, 2021
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`KOSS-2039
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`KOSS-2051
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`KOSS-2052
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`DESCRIPTION
`EXHIBIT
`KOSS-2047 Declaration of Joseph C. McAlexander, IIII
`KOSS-2048 Declaration of Nicholas S. Blair
`KOSS-2049 Apple Inc., Form 10-K, for fiscal year ended September 26, 2020
`KOSS-2050
`“Apple AirPods are now available,” Apple Newsroom, Dec. 13,
`2016 (www.apple.com/newsroom/2016/12/apple-airpods-are-
`now-available/) (last accessed Sept. 8, 2021)
`“AirPods, the world’s most popular wireless headphones, are
`getting even better,” Apple Newsroom, Mar. 20, 2019
`(www.apple.com/newsroom/2019/03/airpods-the-worlds-most-
`popular-wireless-headphones-are-getting-even-better/) (last
`accessed Sept. 8, 2021)
`“Apple reveals new AirPods Pro, available October 30,” Apple
`Newsroom, Mar. 20, 2019
`(www.apple.com/newsroom/2019/10/apple-reveals-new-airpods-
`pro-available-october-30/) (last accessed Sept. 8, 2021)
`KOSS-2053 D. Curry, “Apple Statistics (2021),” Business of Apps, updated
`August 16, 2021 (www.businessofapps.com/data/apple-statistics/)
`(last accessed August 18, 2021)
`J. Cipriani, “Your AirPods just got a quiet update,” CNET,
`February 1, 2017 (www.cnet.com/tech/mobile/how-to-update-the-
`firmware-of-apples-airpods/) (last accessed September 8, 2021)
`J. Clover, “Apple Releases New Firmware Update for AirPods,”
`MacRumors, May 24, 2017
`(www.macrumors.com/2017/05/24/airpods-firmware-update/)
`(last accessed September 8, 2021)
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`KOSS-2054
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`KOSS-2055
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`Patent Owner Sur-Reply
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`EXHIBIT
`KOSS-2056
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`KOSS-2057
`
`DESCRIPTION
`J. Clover, “Apple Releases New Firmware for AirPods 2 and
`AirPods Pro,” MacRumors, December 16, 2019
`(www.macrumors.com/2019/12/16/apple-releases-new-airpods-
`firmware/) (last accessed September 8, 2021)
`“Switch AirPods between iPhone and other devices,” iPhone User
`Guide (support.apple.com/guide/iphone/switch-airpods-between-
`devices-iph08b253c17/ios) (last accessed Dec. 30, 2021)
`“Switch your AirPods to another device,” Apple Support
`(support.apple.com/en-us/HT212204) (last accessed Dec. 30,
`2021)
`“Apple reinvents the wireless headphone with AirPods,” Press
`Release, Sep. 7, 2016 (www.apple.com/newsroom/2016/09/apple-
`reinvents-the-wireless-headphones-with-airpods/) (last accessed
`Dec. 30, 2021)
`“AirPods Teardown,” IFIXIT, Dec. 20, 2016
`(www.ifixit.com/Teardown/AirPods+Teardown/75578) (last
`accessed Dec. 31, 2021)
`KOSS-2061 D. Koshy et al., “Evolution of SIM Cards - What’s Next?,” 2018
`Int’l Conf. on Advances in Computing, Communications and
`Informatics (ICACCI), Sept. 19-22, 2018, pp. 1963-1967
`
`KOSS-2058
`
`KOSS-2059
`
`KOSS-2060
`
`KOSS-2062 Deposition Transcript of Dr. T. Williams, April 28, 2022
`
`KOSS-2063
`
`“Wireless Sport Open Earbuds for Workouts | Bose”
`(www.bose.com/en_us/products/headphones/earbuds/sport-open-
`earbuds.html#ProductTabs_tab1) (last accessed May 11, 2022)
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`I.
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`Case IPR2021-00680
`Patent Owner Sur-Reply
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`INTRODUCTION
`This Sur-reply is responsive to Petitioner’s Reply (Paper 29, “Reply”), which
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`in turn is responsive to the Patent Owner Response (Paper 20, “POR”).
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`The Board should confirm the patentability of the Challenged Claims (i.e.,
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`claims 1-22, 32-41, 47 and 49-62).
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`II. DR. WILLIAMS’S TESTIMONY IS UNRELIABLE
`Petitioner’s Reply relied upon a Reply Declaration (BOSE-1160) from one of
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`its expert witnesses, Dr. Tim Williams (“Williams”). Neither Petitioner nor
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`Williams deny that under cross-examination, Williams answered “No” when asked
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`if he applied the POSA standard enunciated in his original declaration upon which
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`the Petition was based and upon which institution was granted:
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`Q: Dr. Williams, looking at paragraph 34, do you see towards the bottom
`you say, “A POSA would have been an individual -- an individual with
`wireless networking experience, including at least a bachelor’s degree in
`electrical engineering or a related field, and experience with wireless
`networks. More education could substitute for experience and vice
`versa.” Do you see that?
`A: Yes. You read that correctly.
`Q: And is that the standard you applied for a person of ordinary skill in the
`art forming your opinions in your declaration for the ’025?
`A: No. Well, that part’s of it. A POSA in this case is a team who have
`experience in wireless networking and people who have experience in
`headset design.
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`KOSS-2046, 29-30 (emphasis added); see also id., 36 (testifying that his answers
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`about POSA are same for both ’934 Patent as ’025 Patent).
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`Williams’s answer was not a mistake as confirmed by:
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`• His explanation for why he did not apply his original POSA standard, i.e.,
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`a “POSA in this case is a team of people who have experience in wireless
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`networks and people who have experience in headset design” (id. at 30
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`(emphasis added)), whereas in his direct testimony the POSA was a person
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`with wireless network experience and without direct experience with
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`headphone-specific implementations. BOSE-1003, ¶¶34-35;
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`• His testimony that he would only be one of the team members of the POSA
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`team (KOSS-2046, 33), whereas in his direct testimony he “was a person
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`of more than ordinary skill.” BOSE-1003, ¶37 (emphasis added); and
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`• He did not testify in his Reply Declaration that his testimony was a
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`mistake. BOSE-1160, ¶84.
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`Williams’s repudiation of the framework for his original invalidity analysis
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`taints the entirety of his opinions. Simply put, Williams did not perform the analysis
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`that he swore to in his original declaration, which undercuts his overall credibility.
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`Ultratec, Inc. v. CaptionCall LLC, 872 F.3d 1267, 1273 (Fed. Cir. 2017) (“no
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`reasonable fact finder would refuse to consider evidence of inconsistent sworn
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`testimony” and such inconsistencies “bear on the overall credibility of the expert”).
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`Case IPR2021-00680
`Patent Owner Sur-Reply
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`Further, his direct testimony (BOSE-1003) did not explain why the Challenged
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`Claims would have been obvious under his revised POSA “team” standard, thereby
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`undercutting his credibility. See Adobe Inc. v. RAH Color Techs. LLC, IPR2019-
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`00627, Paper 59 at 6 (PTAB Dec. 12, 2019) (reliability and credibility of expert
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`testimony depends on whether underlying facts have been disclosed and explained)
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`(citing Update to Office Patent Trial Practice Guide at 4 (Aug. 2018)).
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`Williams’s rebuttal testimony characterizing his cross-examination (BOSE-
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`1160, ¶84) should not be considered because it is improper. His rebuttal testimony
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`is not in response to evidence submitted by Patent Owner. It is an after-the-fact
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`attempt to rehabilitate Williams’s testimony, despite the fact that Petitioner’s
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`counsel had, but declined, the opportunity for re-direct. KOSS-2046, 69. Thus,
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`Williams’s rebuttal testimony is improper. See Liberty Mutual Ins. Co. v.
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`Progressive Casualty Ins. Co., CMB2012-00002, Paper 66 at 68-69 (PTAB Jan. 23,
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`2014) (rebuttal testimony should draw attention to patent owner evidence it rebuts).
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`Further, Williams’s rebuttal testimony that his opinions would not have
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`changed if his “team” standard was applied (BOSE-1160, ¶85) is unreliable because
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`he never resolved the skill level of other team members. He merely testified that the
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`other team members would be “knowledgeable about headphone form factors.”
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`BOSE-1003, ¶35. By not resolving the team members’ educational or vocational
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`experiences, or what they would know about headphone form factors, Williams
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`failed to follow the Graham framework for the POSA team. Graham v. John Deere
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`Co., 383 U.S. 1, 17 (1966) (level of ordinary skill in the pertinent art must be
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`resolved). Consequently, his “team” POSA opinions should be afforded little
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`weight. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the
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`underlying facts or data on which the opinion is based is entitled to little or no
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`weight.”); Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir.
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`1997) (nothing requires fact finder to credit inadequately explained testimony of
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`expert).
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`Williams’s unreliable testimony should not be credited and the patentability
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`of the Challenged Claims should be upheld for this reason alone.
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`III. PETITIONER FAILED TO SHOW THAT CLAIM 1 WOULD HAVE
`BEEN OBVIOUS
`Petitioner’s Reply failed to refute that the Petition did not show that claim 1
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`would have been obvious under either Ground 1A or Ground 2A.
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`A. Ground 1A
`Claim 1 recites that the remote, network-connected server (i) receives the
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`request initiated from the headphone assembly; (ii) transmits the firmware upgrades
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`for the headphone assembly; and (iii) is in wireless communication with the DAP.
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`BOSE-1001, 18:2-32. The POR explained that (i) Goldstein’s sole paragraph that
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`mentions firmware updates (BOSE-1026, ¶[0082]) does not identify the source of
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`Case IPR2021-00680
`Patent Owner Sur-Reply
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`the firmware updates and (ii) Petitioner failed to show that Goldstein’s firmware
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`updates come from Goldstein’s Server system. POR, 16. In response, Petitioner
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`argued that Goldstein’s Server system has to be the source of the firmware upgrades
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`because it is the only server disclosed in Goldstein. Reply, 2-3.
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`This argument fails for two reasons. First, it is a new argument. The Petition
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`did not assert that Goldstein’s Server system has to be the source of the firmware
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`upgrades because it is the only server. As a new argument, it should not be
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`considered at this stage. See Consolidated Trial Practice Guide (CTPG) 73 (Nov.
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`2019) (“Petitioner may not submit new evidence or argument in reply that it could
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`have presented earlier, e.g. to make out a prima facie case of unpatentability.”);
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`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369-70 (Fed.
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`Cir. 2016) (holding that Board did not abuse its discretion in refusing to consider
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`new arguments and evidence raised for first time in reply); Ariosa Diagnostics v.
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`Verinata Health, Inc., 805 F.3d 1359, 1367 (Fed. Cir. 2015) (discussing how, in inter
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`partes review proceedings, petitioner’s reply is “limited to a true rebuttal role”
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`(citing 37 C.F.R. §§ 42.104(b)(5), 42.23(b))). Second, Petitioner’s argument is not
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`implicit in, or required by, Goldstein. Williams admitted that a wireless device, like
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`Goldstein’s headset, could receive data from two different sources. KOSS-2062, 12
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`(Williams testifying that WiFi is built to connect to different servers to obtain
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`different pieces of information). It does not have to receive the firmware update
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`Patent Owner Sur-Reply
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`from the same server to which the requests are sent.
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`For these reasons, Petitioner failed to show that claim 1 is unpatentable under
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`Ground 1.
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`B. Ground 2A
`Petitioner failed to refute that it did not show that claim 1 would have been
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`obvious under Ground 2A for two reasons.
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`First, even though claim 1 recites that the headphone assembly “is for
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`receiving firmware upgrades” (limitation [1K]), the Petition relied on Hind, which
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`contrarily shows microcode downloads. Petition, 58 (citing BOSE-1019, 19:45-47);
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`BOSE-1003, ¶313 (same). Neither the Petition nor Williams’s original declaration
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`(BOSE-1003) opined on the relationship between microcode and firmware. Instead,
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`Petitioner saved its evidence on this fact, which is necessary for Petitioner’s case-in-
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`chief, until its Reply (Reply, 5), which is improper. CTPG 73, supra; Intelligent
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`Bio-Sys., supra; Ariosa Diagnostics, supra. None of the evidence that Petitioner
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`cited on this point (i.e., BOSE-1148, BOSE-1149 and BOSE-1160, ¶¶12-25) were
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`filed with the Petition.
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`The Reply’s assertion that “Dr. Williams testified” in his direct testimony that
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`microcode is firmware (Reply, 5) is false. The Reply cited ¶¶313 and 344 of
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`Williams’s original declaration (BOSE-1003) for this assertion, but as confirmed by
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`Williams, and as the plain language of his original declaration shows, ¶313 of his
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`Case IPR2021-00680
`Patent Owner Sur-Reply
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`original declaration is about whether a POSA would have expected success from the
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`proposed combination and ¶344 does not even mention microcode. KOSS-2062,
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`13-14; BOSE-1003, ¶¶313, 344 (cited in Reply). Thus, Petitioner’s rebuttal
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`evidence should not be considered because it is both improperly submitted and false.
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`Second, the record evidence fails to show that Rezvani-875’s Figure 2 depicts
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`a headset. The probative value of a non-witness statement in another IPR (Reply,
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`6), where the essence of Figure 2 was not in dispute, is outweighed by the testimony
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`of Patent Owner’s expert witness, Mr. Joseph McAlexander III (“McAlexander”).
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`McAlexander testified that Rezvani-875 does not directly refer to what is depicted
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`in Figure 2 as a “headset”; that Rezvani-875’s Figure 2 uses a different reference
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`number than the reference numbers used in Rezani-875 for a “headset”; and that the
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`components depicted in Figure 2 are inconsistent with those of a headset. KOSS-
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`2047, ¶¶42-45. McAlexander’s well-reasoned explanation outweighs Williams’s
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`testimony as to the contrary. In fact, Williams’s testimony corroborated
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`McAlexander’s explanation. Rezvani-875 refers to what is depicted in Figure 2 as
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`a “device” (BOSE-1016, ¶[0021]) and Williams testified that Rezvani-875 refers to
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`many types of devices, like handsets, as a “device” besides a headset. BOSE-1160,
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`¶24; KOSS-2062, 16-17. Williams further confirmed that a handset possesses the
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`components shown in Rezvani-875’s Figure 2. KOSS-2062, 17-18. Moreover,
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`Williams’s testimony that the SIM depicted in Rezvani-875’s Figure 2 could have
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`“an electronic form” is irrelevant because that development occurred after the
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`priority date. KOSS-2062, 20-21.
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`The compelling effect of McAlexander’s testimony is confirmed by
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`Petitioner’s failure to ask McAlexander about his opinions on this topic. See Chums,
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`Inc. v. Cablz, Inc., IPR2014-01240, Paper 43 at 26 (PTAB Feb. 8, 2016) (failing to
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`question witness undermines contrary positions regarding obviousness of claim).
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`IV. PETITIONER FAILED TO SHOW THAT SIGNAL STRENGTH
`CLAIMS WOULD HAVE BEEN OBVIOUS
`The challenged “Signal Strength” claims are dependent claims 4, 6, 8, 12-13,
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`17-18, 20, 22, 38 and 40-41, which depend directly or indirectly from claim 1, as
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`well as independent claim 58 and its dependent claims (59-62). These claims recite
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`that the headphone assembly “transitions to play digital audio content received
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`wirelessly from a second digital audio source via a second wireless communication
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`link based on, at least, a signal strength level for the second wireless communication
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`link ….” See e.g. BOSE-1001, 18:53-59 (claim 4).
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`Petitioner relied on Harada (BOSE-1098) in the various grounds challenging
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`these claims. The POR explained that in one embodiment, the signal strength that
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`Harada’s prioritization switching technique uses is a signal strength of the wireless
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`signal between the destination device and a base station for the destination device,
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`which is irrelevant to the Signal Strength claims. POR, 30. Petitioner responded
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`that it relied on a different embodiment, specifically the embodiment in Harada’s
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`¶[0011]. Reply, 11-12. Harada’s ¶[0011] describes a device that can use “received
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`signal level of the short-range wireless communication function between devices”
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`as “a selection factor.” BOSE-1098, ¶[0011] (emphasis added). Harada does not
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`explain that its “selection” is the same as the Signal Strength claims’ “transitioning.”
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`Williams’s original declaration merely opined
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`that Harada’s device can
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`“‘dynamically select[] one or more devices based on the prioritization list’ and …
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`‘control[] connection through the communication unit with the selected one or more
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`devices.’” BOSE-1003, ¶207 (quoting BOSE-1098, ¶[0014]). Neither the Petition
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`nor Williams, in his original declaration, explained how Harada’s “selection”
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`compares to the claimed “transitioning.” Both just assumed that they are the same.
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`For example, the Petition states, “Schrager-Goldstein-Harada’s headphone meets
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`[4B]’s remaining limitation because it uses Harada’s technique to automatically
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`transition …” (Pet. 45, emphasis added), without ever connecting Harada’s
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`“selecting” to the alleged “transitioning” and without identifying any “transitioning”
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`in Harada. See also BOSE-1003, ¶217 (similar). As the POR explained, Harada
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`does not disclose an electronic device that transitions, or switches, from playing
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`digital audio content received from a first device to playing digital audio content
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`received from a second device based on the signal strength level of the wireless
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`communication link between the electronic device and the second device. POR, 28;
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`KOSS-2047, ¶¶51-55. Indeed, McAlexander confirmed in his cross examination
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`that Harada’s “selection process” relied upon by Petitioner does “not show[] or
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`describe[]” the claimed “transitioning” of the Signal Strength claims “at all.” BOSE-
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`1146, 144:11-16.
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`The other portions of Harada relied upon by Petitioner also do not support
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`Petitioner’s theory. Petitioner wrote that Harada’s ¶[0085] “describes switching
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`based on short-range signal strength ….” Reply, 12 (emphasis added). Petitioner’s
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`quote from ¶[0085], however, like Harada’s ¶[0011], never mentions switching. It
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`only refers to “selection.” Petitioner also relied on Harada’s Figure 8. Reply, 13.
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`Figure 8, however, discloses connecting “with one or more devices ….” BOSE-
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`1098, Fig. 8, steps S26 and S28. Petitioner provided no theory or explanation as to
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`why merely connecting to one or more devices constitutes transitioning from playing
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`digital audio content received from a first device to playing digital audio context
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`from a second device based on signal strength, and provided no evidence to rebut
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`McAlexander’s testimony on this issue. See KOSS-2047, ¶52.
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`The POR identified an additional reason that the Petition failed to show that
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`the Signal Strength claims would have been obvious: the constant database updating
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`in Harada would not have been suitable for wireless headsets, especially small form
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`factor true wireless (TWS) earbuds. POR, 34-37; KOSS-2047, ¶¶56-60. In
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`response, Petitioner resorted to platitudes and mischaracterizations of the record. As
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`to platitudes, Petitioner asserted that Patent Owner “impermissibly treats POSAs as
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`automatons” (Reply, 14), but this simplistic assertion fails to address McAlexander’s
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`thorough explanation of why Harada’s constant updates pose a problem. See KOSS-
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`2047, ¶¶56-60. As to mischaracterizations, Williams’s Reply Declaration asserted
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`that “there is no disclosure in Harada that [the] initial registration of devices requires
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`storing information that is ‘constantly updated.’” BOSE-1160, ¶45. This opinion is
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`misleading because Williams arbitrarily limited his opinion, without explanation, to
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`Harada’s “initial registration” process. Williams confirmed that Harada’s tables are
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`constantly updated over time:
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`• Harada’s connection device number registration unit 186 stores the
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`number of connection devices connected “concurrently” (BOSE-1098,
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`¶[0072]), which Williams considered would “change over time.”
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`KOSS-2062, 26-27;
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`• Harada’s prioritization is performed for registration of high availability
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`devices “in the vicinity of the user or cellular phone” and “by
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`dynamically corresponding to the movement position of the user and
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`the cellular phone” (BOSE-1098, ¶[0083]), and Williams confirmed
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`that there are “situations where the high-availability devices could
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`change over time as the user moves.” KOSS-2062, 28; and
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`• Harada’s prioritization list acceptance unit 14 accepts the prioritization
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`list dependent on information such as position and time of the cell
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`phone (BOSE-1098, ¶[0071]), and Williams confirmed that there are
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`situations where the position of the cell phone relative to other devices
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`would change over time. Ex 2062, 29-30.
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`Thus, outside of initial registration, the evidence is that Harada’s tables are
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`constantly updated (see also KOSS-2047, ¶57 (Harada’s tables “are constantly
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`updated”)), which leads to the problems identified by McAlexander that make
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`Petitioner’s proposed combination nonobvious. KOSS-2047, ¶¶58-60. This is a
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`second reason that the Signal Strength claims would not have been obvious.
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`V.
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`PETITIONER FAILED TO SHOW THAT CLAIMS 34-41 WOULD
`HAVE BEEN OBVIOUS
`Claim 34 recites earphones that have three components: an earbud, a body
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`portion, and an elongated portion. Petitioner failed to show that these claims would
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`have been obvious.
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`A. Ground 1A and 1C
`Petitioner resorted to a new theory to save its argument that claim 34 would
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`have been obvious under Ground 1A based on Petitioner’s Schrager-Goldstein
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`combination. Originally, Petitioner relied on Goldstein’s Figure 5A earpiece as the
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`body portion and an elongated portion that is allegedly “conventionally included” in
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`behind-the-ear (BTE) earphones. Pet., 36. Because under such a theory no part of
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`the earphone corresponds to the claimed “earbud” (POR, 39), Petitioner proposed a
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`new theory in the Reply based on a new diagram that does not appear in any
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`reference or any expert testimony. Petitioner’s new diagram, shown below, appears
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`to show “an elongated portion” grafted onto Goldstein’s Figure 5A in-ear earphone.
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`Reply, 20. The original Figure 5A is shown below too for comparison.
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`Petitioner’s
`modified Fig. 5A
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`Goldstein’s Fig. 5A
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`There are several problems with Petitioner’s new theory. First, it is a new
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`theory, which is improper at this stage. By saving the theory until its Reply,
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`Petitioner deprived Patent Owner the opportunity to marshal evidence opposing the
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`proposed combination. CTPG 73, supra; Intelligent Bio-Sys., supra; Ariosa
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`Diagnostics, supra.
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`Second, on the merits, there is no explanation for why a POSA would add the
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`elongated portion to Goldstein’s Figure 5A in-ea
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