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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`BOSE CORPORATION,
`Petitioner,
`
`v.
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`KOSS CORPORATION,
`Patent Owner.
`_____________________
`
`CASE: IPR2021-00680
`U.S. PATENT NO. 10,469,934
`_____________________
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`
`PATENT OWNER’S PRELIMINARY RESPONSE
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`IPR2021-00680
`Patent Owner Preliminary Response
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`TABLE OF CONTENTS
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`I.
`II.
`
`INTRODUCTION .......................................................................................... 1 
`BACKGROUND ............................................................................................ 3 
`A.
`The ’934 Patent .................................................................................... 3 
`B.
`Related Patents ..................................................................................... 4 
`C.
`Litigation Matters ................................................................................. 5 
`D.
`PTAB Matters ....................................................................................... 7 
`III. THE BOARD SHOULD DENY INSTITUTION BECAUSE OF CO-
`PENDING LITIGATION INVOLVING THE ’934 PATENT ...................... 7 
`A.
`Factor 1: The District Court Has Not Issued a Stay ............................ 9 
`B.
`Factor 2: Proximity of the Scheduled Trial Date to the Board’s
`Statutory Deadline for Written Decision ............................................ 10 
`Factor 3: The Parties and Court in the Apple Litigation Will Have
`Invested Substantial Resources Prior to the Institution Decision ...... 13 
`Factor 4: The Issues Raised in the Petition Overlap Substantially
`with Issues Raised in the Apple Litigation ........................................ 15 
`Factor 5: Petitioner is a Defendant in Co-Pending Litigation ........... 17 
`Factor 6: Other Considerations That Influence the Board’s
`Exercise of Discretion Weigh in Favor of Denying Institution ......... 18 
`G. Holistic Assessment of Fintiv Factors ................................................ 21 
`IV. THE PETITION DOES NOT ESTABLISH A REASONABLE
`LIKELIHOOD THAT THE CHALLENGED CLAIMS WOULD HAVE
`BEEN OBVIOUS ......................................................................................... 23 
`A. Grounds 1A-1D Do Not Show that the Challenged Claims Would
`Have Been Obvious ............................................................................ 23 
`
`C.
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`D.
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`E.
`F.
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`V.
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`IPR2021-00680
`Patent Owner Preliminary Response
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`1.
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`2.
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`3.
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`4.
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`Claim 1 is Directed to a Headphone Assembly that is
`Configured to Interact with Two Other Systems ..................... 25 
`Schrager Does Not Teach a Remote, Network-Connected
`Server in Wireless Communications with a Mobile DAP ....... 26 
`Goldstein Does Not Teach a Remote, Network-Connected
`Server in Wireless Communications with a Mobile DAP ....... 28 
`The Schrager-Goldstein Combination Does Not Teach a
`Remote Network-Connected Server in Wireless
`Communication with a Mobile DAP ....................................... 30 
`B. Grounds 2A-2D Do Not Show that the Challenged Claims Would
`Have Been Obvious ............................................................................ 37 
`1.
`Rezvani-446 Does Not Teach a Mobile DAP in Wireless
`Communication with Both a Headphone Assembly and a
`Remote, Network-Connected Server ....................................... 38 
`Rezvani-875 Does Not Teach a Mobile DAP in Wireless
`Communication with Both a Headphone Assembly and a
`Remote, Network-Connected Server ....................................... 41 
`The Proposed Rezvani-Rezvani-Skulley-Hind Combination
`Does Not Teach a Mobile DAP in Wireless Communication
`with Both a Headphone Assembly and a Remote, Network-
`Connected Server ..................................................................... 42 
`The Proposed Combinations for Grounds 2A-2D Rely on
`Hindsight Reconstruction ......................................................... 44 
`CONCLUSION ............................................................................................. 48 
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`2.
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`3.
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`4.
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`IPR2021-00680
`Patent Owner Preliminary Response
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte
`GmbH,
`IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) ................................................ 23
`Amazon.com, Inc. v. Barnesandnoble.com, Inc.,
`239 F.3d 1343 (Fed. Cir. 2001) .......................................................................... 48
`Apple Inc. v. ContentGuard Holdings, Inc.,
`IPR2015-00445, Paper 9 (PTAB July 9, 2015) .................................................. 47
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (PTAB March 20, 2020) ...................................passim
`Apple Inc. v. Koss Corp.,
`IPR2021-00255, Paper 22 (PTAB June 3, 2021) ......................................... 13, 24
`Apple Inc. v. Koss Corp.,
`IPR2021-00305, Paper 14 (PTAB June 3, 2021) ......................................... 13, 24
`Apple Inc. v. Koss Corp.,
`IPR2021-00381, Paper 15 (PTAB July 2, 2021) .............................. 13, 15, 16, 24
`Belden Inv. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) .......................................................................... 48
`Bose Corporation v. Koss Corporation,
`IPR2021-00297, Paper 16 (PTAB Jun. 3, 2021) .........................................passim
`General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha,
`IPR2016-01357, Paper 19, 16-17 (PTAB Sept. 6, 2017) ............................... 5, 14
`Google LLC v. Personalized Media Commc’ns, LLC,
`IPR2020-00724, Paper 19 (PTAB Aug. 31, 2020) ............................................. 12
`Harmonic Inc. v. Avid Tech.,
`815 F.3d 1356 (Fed. Cir. 2016) .......................................................................... 10
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`
`Intel Corp. v. VLSI Tech. LLC,
`IPR2019-01192, Paper 15 (PTAB Jan. 9, 2020) ................................................ 11
`KSR Int'l Co. v. Teleflex Inc.,
`550 U.S. 398 ........................................................................................................ 47
`Nautilus Hyosung Inc. v. Diebold, Inc.,
`IPR2016-00633, Paper 9 (PTAB Aug. 22, 2016) ......................................... 47, 48
`NHK Spring Co. v. Intri-Plex Techs., Inc.,
`IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) ........................................... 4, 14
`Samsung Elecs. Co., Ltd. v. Ancora Techs., Inc.,
`IPR2020-01184, Paper 11 (PTAB Jan. 5, 2021) .................................... 12, 19, 21
`SK Hynix v. Netlist,
`IPR2020-01421, Paper 10 (Mar. 16, 2021) ........................................................ 17
`Supercell Oy v. Gree, Inc.,
`IPR2020-01628, Paper 9, 14-15 (PTAB February 17, 2021) ............................. 14
`Verizon Bus. Network Servs. LLC v. Huawei Techs. Co.,
`IPR2020-01292, Paper 13 (PTAB Jan. 25, 2021) .................................. 17, 18, 21
`Statutes
`35 U.S.C. § 103 .......................................................................................................... 5
`35 U.S.C. § 314 ...................................................................................... 10, 13, 14, 17
`35 U.S.C. § 316 .................................................................................................. 11, 14
`Other Authorities
`37 C.F.R. § 42.107(a) ................................................................................................. 4
`37 C.F.R. § 42.108(c) ............................................................................................... 10
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`IPR2021-00680
`Patent Owner Preliminary Response
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`EXHIBIT LISTING
`
`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)
`
`KOSS-2006
`
`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
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`KOSS-2009 U.S. Patent 9,049,502
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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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`IPR2021-00680
`Patent Owner Preliminary Response
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`Exhibit
`KOSS-2012 U.S. Patent 9,729,959
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`Description
`
`KOSS-2013 U.S. Patent 9,986,325
`
`KOSS-2014 U.S. Patent 10,206,025
`
`KOSS-2015 U.S. Patent 10,368,155
`
`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)
`
`KOSS-2017
`
`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
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`IPR2021-00680
`Patent Owner Preliminary Response
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`Description
`Exhibit
`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.)
`
`KOSS-2023
`
`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)
`
`KOSS-2025 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
`
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`I.
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`IPR2021-00680
`Patent Owner Preliminary Response
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`INTRODUCTION
`Patent Owner, Koss Corporation (“Koss”), submits this Patent Owner
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`Preliminary Response (“POPR”) pursuant to 37 C.F.R. § 42.107(a) to the Inter
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`Partes Review (“IPR”) petition (“Petition”) filed by Bose Corporation (“Petitioner”)
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`for claims 1-22, 32-39, 38-41, 47, and 49-62 (“Challenged Claims”) of U.S. Patent
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`10,469,934 (“’934 Patent”).
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`The Board should deny institution for several reasons.
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`First, institution of the IPR would demand an untimely and inefficient
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`proceeding that would effectively “second guess” the result of a jury trial in
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`concurrent litigation. See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-
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`00752, Paper 8 at 11–21 (PTAB Sept. 12, 2018) (Precedential); Apple Inc. v. Fintiv,
`
`Inc., IPR2020-00019, Paper 11 at 2–3 (PTAB March 20, 2020) (Precedential).
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`Patent Owner is asserting the ’934 Patent against another party, Apple Inc.,
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`(hereinafter “Apple”) in co-pending litigation in the Western District of Texas
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`(“WDTX”). Koss Corp. v. Apple Inc., Case No. 6:20-cv-00665-ADA (W.D. Tex.)
`
`(“Apple Litigation”). KOSS-2002. Though Petitioner is not a party to the Apple
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`Litigation, that litigation impacts the Fintiv analysis for the present Petition. Fintiv,
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`IPR2020-00019, Paper 11 at 14. The Apple Litigation is heading for trial in April
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`2022, which is six months before a final determination for this IPR, if it is instituted.
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`KOSS-2016, 4; KOSS-2002, 15 (Dkt. 72) (“The Court has set the Jury Trial date of
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`April 18, 2022”); KOSS-2017, 8. Thus, the validity determinations from the trial in
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`IPR2021-00680
`Patent Owner Preliminary Response
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`the Apple Litigation will significantly predate a final determination for the present
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`petition if this IPR is instituted, which is an inefficient use of resources and
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`counterproductive to “an objective of the AIA ... to provide an effective and efficient
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`alternative to district court litigation.” General Plastic Industrial Co., Ltd. v. Canon
`
`Kabushiki Kaisha, IPR2016-01357, Paper 19, 16-17 (PTAB Sept. 6, 2017)
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`(precedential as to § II.B.4.i) (emphasis added).
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`Second, the Board should deny institution because the Petition does not
`
`establish a reasonable likelihood that the challenged claims would have been
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`obvious under 35 U.S.C. § 103. More specifically, the relied-upon references do not
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`teach or suggest each element of the independent claims arranged as recited in the
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`claims. The independent claims are directed to a headphone assembly configured
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`to: (1) wirelessly communicate with a mobile, digital audio player (DAP) via one or
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`more ad hoc wireless communication link; and (2) wirelessly communicate with a
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`remote, network-connected server. For example, independent claims 1 and 58
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`specify that the headphone assembly is configured to play digital audio content
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`transmitted by the mobile, DAP via the one or more ad hoc links, and that a processor
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`of the headphone assembly is configured to initiate transmission of a request to a
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`remote-network connected server. According to independent claims 1 and 58, the
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`remote, network-connected server is also in wireless communication with the
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`IPR2021-00680
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`mobile, DAP.
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`However, the references relied upon for Ground 1A-1D at least fail to disclose
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`a processor of a headphone assembly that is configured to initiate a request to a
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`remote, network-connected server in wireless communication with a mobile DAP,
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`as recited in claims 1 and 58. Moreover, the references relied upon for Grounds 2A-
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`2D a least fail to disclose a mobile DAP in wireless communication with both a
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`headphone assembly (via one or more ad hock communication links) and a remote,
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`network-connected server (via wireless communication), as recited in claims 1 and
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`58. The Petition, therefore, fails to establish a reasonable likelihood that the
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`challenged claims would have been obvious to a person of ordinary skill in the art.
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`These reasons are independent and the Board can deny institution for either
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`of these reasons.
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`II. BACKGROUND
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`A. The ’934 Patent
`The ’934 Patent includes sixty-two (62) claims, of which claims 1 and 58 are
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`independent. Claim 1 recites a headphone assembly that comprises first and second
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`earphones, an antenna for receiving wireless signals from a mobile DAP via one or
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`more ad hoc wireless communication links, a wireless communication circuit for
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`receiving and transmitting wireless signals to and from the headphone assembly, a
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`processor, a memory for storing firmware executed by the processor, a rechargeable
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`IPR2021-00680
`Patent Owner Preliminary Response
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`battery, and a microphone. The processor is configured to, upon activation of a user-
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`control of the headphone assembly, initiate transmission of a request to a remote,
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`network-connected server that is in wireless communication with the mobile DAP.
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`The headphone assembly is further for receiving firmware updates transmitted from
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`the remote, network-connected server. BOSE-1001, 18:1-32.
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`The Petition challenges thirty eight claims—the Challenged Claims—under
`
`eight total grounds, namely Grounds 1A-1D and Grounds 2A-2D, which allege that
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`the Challenged Claims would have been obvious over various combinations of
`
`Schrager (BOSE-1101), Goldstein (BOSE-1026), Harada (BOSE-1098), Skulley
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`(BOSE-1017), Rezvani-446 (BOSE-1097), Rezvani-875 (BOSE-1016), Hind
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`(BOSE-1019), and Oh (BOSE-1099). Pet. at 2.
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`B. Related Patents
`The ’934 Patent is the eleventh patent in a patent family dating back to a
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`provisional application filed April 7, 2008 and a PCT application filed April 7,
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`2009. BOSE-1001; KOSS-2007 to KOSS-2015; KOSS-2025. There are patents
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`that issued after the ’934 Patent (U.S. Patents 10,491,982; 10,506,325; 10,848,850;
`
`10,506,325; and 10,757,498, 10,959,012, and 10,959,011) and one pending
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`application in the family (17/178,946). See Paper 3 (Patent Owner’s Mandatory
`
`Notices, March 24, 2021).
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`C. Litigation Matters
`Patent Owner sued Petitioner on the ’934 Patent (and two other patents) on
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`July 22, 2020 in the WDTX (“Bose Texas Litigation”). KOSS-2001; BOSE-1055.
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`That matter was dismissed on June 22, 2021 for improper venue. KOSS-2003. In
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`between, Petitioner filed an action for a declaratory judgment of noninfringement
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`for the ’934 Patent (and the other patents asserted in the Bose Texas Litigation) in
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`the District Court of Massachusetts (“Bose Massachusetts Litigation”). BOSE-
`
`1123. The Bose Massachusetts Litigation was stayed pending the motion to dismiss
`
`in the Bose Texas Litigation. BOSE-1123, 2 (Dkt. 8). Thus, Patent Owner has not
`
`yet answered the complaint in the Bose Massachusetts Litigation. However, in light
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`of the dismissal of the Bose Texas Litigation, it is expected that Patent Owner will
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`counterclaim infringement of patents asserted in the Bose Texas Litigation
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`(including the ’934 Patent), and Petitioner will assert a defense in the Bose
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`Massachusetts Litigation that the asserted patents (including the ’934 Patent) are
`
`invalid.
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`Petitioner is also asserting the ’934 Patent (and other patents) against Apple
`
`in the WDTX in the Apple Litigation. KOSS-2002. The trial in the Apple Litigation
`
`is scheduled to commence in April 2022. KOSS-2016, 4; KOSS-2002, 15 (Dkt. 72)
`
`(“The Court has set the Jury Trial date of April 18, 2022”); KOSS-2017, 8. In the
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`Apple Litigation, the district court already held a Markman hearing on April 23,
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`2021 and issued the claim construction ruling on June 2, 2021. KOSS-2002, 13
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`Patent Owner Preliminary Response
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`(Dkt. 58), 14 (Dkt. 72), 14 (Dkt. 83); KOSS-2018. The district court also denied
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`Apple’s motion to transfer the Apple Litigation to the Northern District of California
`
`(“NDCal”). KOSS-2004.
`
`Apple also filed a declaratory judgment action pertaining to the patents
`
`(including the ’934 Patent) asserted against it in the Apple Litigation in the NDCal.
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`KOSS-2031. The district court in the NDCal, however, granted Patent Owner’s
`
`motion to transfer that action to the WDTX. KOSS-2031, 9 (Dkt. 72); KOSS-2005.
`
`Apple has petitioned the Federal Circuit for a writ of mandamus directing the WDTX
`
`to transfer the Apple Litigation to the NDCal. See In re Apple, Case No. 21-147
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`(Fed. Cir.). The Federal Circuit has not ruled on the petition.
`
`Patent Owner is also asserting the ’934 Patent against two other parties:
`
`Plantronics, Inc. and Skullcandy, Inc. BOSE-1074; BOSE-1075. The Plantronics
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`case was originally filed in WDTX but was transferred to NDCal. KOSS-2026. No
`
`trial date has been set. KOSS-2027. The Skullcandy case was also originally filed
`
`in WDTX, but it was dismissed for improper venue. KOSS-2028. Patent Owner re-
`
`filed the case in the District Court of Utah. KOSS-2029; KOSS-2024. No trial date
`
`has been set in that matter either and Defendants have sought a stay pending the IPRs
`
`(KOSS-2024, 8 (Dkt. 33)), which has not yet been ruled upon by the court.
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`IPR2021-00680
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`D.
`PTAB Matters
`The present Petition is one of three IPRs filed against the ’934 Patent. Apple
`
`filed IPR2021-00592 on March 2, 2021; Bose filed this petition on March 17, 2021;
`
`and Apple filed IPR2021-00693 on March 23, 2021. The Board has not yet made
`
`an institution decision on any of these IPRs.
`
`The present Petition is also one of three IPRs filed by Petitioner against Patent
`
`Owner—one for each of the patents asserted in the Bose Texas Litigation. Petitioner
`
`filed IPR2021-00297 for Patent 10,368,155 on December 7, 2020 and IPR2021-
`
`00612 for Patent 10,206,025 on March 3, 2021. The Board instituted IPR2021-
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`00297 on June 3, 2021. Bose Corporation v. Koss Corporation, IPR2021-00297,
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`Paper 16 (PTAB Jun. 3, 2021). The Board has not yet made an institution decision
`
`for IPR2021-00612.
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`III. THE BOARD SHOULD DENY INSTITUTION BECAUSE OF CO-
`PENDING LITIGATION INVOLVING THE ’934 PATENT
`The Board “is permitted, but never compelled, to institute an IPR proceeding.”
`
`Harmonic Inc. v. Avid Tech., 815 F.3d 1356, 1367 (Fed. Cir. 2016); see also 35
`
`U.S.C. § 314(b) (“Director shall determine whether to institute an inter partes review
`
`….”); 37 C.F.R. § 42.108(c) (“Inter partes review shall not be instituted unless the
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`Board decides that the information presented in the petition demonstrates that there
`
`is a reasonable likelihood that at least one of the claims challenged in the petition is
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`unpatentable.”). The Board may apply this discretion in consideration of “the
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`IPR2021-00680
`Patent Owner Preliminary Response
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`integrity of the patent system, [and] the efficient administration of the Office ….”
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`35 U.S.C. § 316(b). The Board has denied institution “to minimize the duplication
`
`of work by two tribunals to resolve the same issue.” Intel Corp. v. VLSI Tech. LLC,
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`IPR2019-01192, Paper 15 at 11 (PTAB Jan. 9, 2020).
`
`In Fintiv, the Board outlined six factors that inform its decision “to deny
`
`institution in view of an earlier trial date in [a] parallel proceeding.” Fintiv,
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`IPR2020-00019, Paper 11 at 6. The Board weighs and considers the holistic effect
`
`of each of the following factors: (1) whether the court granted a stay or evidence
`
`exists that one may be granted if a proceeding is instituted; (2) proximity of the
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`court’s trial date to the Board’s projected statutory deadline for a final written
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`decision; (3) investment in the parallel proceeding by the court and the parties; (4)
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`overlap between issues raised in the petition and in the parallel proceeding; (5)
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`whether the petitioner and the defendant in the parallel proceeding are the same
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`party; and (6) other circumstances that impact the Board’s exercise of discretion,
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`including the merits (collectively, “Fintiv factors”). Id. at 5–15.
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`The Fintiv factors collectively justify denial of the Petition because the ’934
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`Patent is being asserted presently against Apple in the Apple Litigation and the trial
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`in that matter will take place six months before a final determination for the present
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`petition if it is instituted. Denying institution of the IPR is consistent with recent
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`Board decisions, preserves the integrity of the patent system, promotes the efficient
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`administration of Office resources, and minimizes duplicative work by two different
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`tribunals. See id.; Samsung Elecs. Co., Ltd. v. Ancora Techs., Inc., IPR2020-01184,
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`Paper 11 at 18 (PTAB Jan. 5, 2021); Google LLC v. Personalized Media Commc’ns,
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`LLC, IPR2020-00724, Paper 19 at 6, 11 (PTAB Aug. 31, 2020).
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`A.
`Factor 1: The District Court Has Not Issued a Stay
`This factor cuts in favor of discretionary denial. According to Petitioner,
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`“[w]ithout ‘specific evidence’ how the court will rule regarding a stay, this factor is
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`neutral.” Pet. at 97. However, there is specific evidence that the presiding judge in
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`the Apple Litigation, Judge Albright, is unlikely to grant a stay in the Apple
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`Litigation given the advanced status of the Apple Litigation. Judge Albright has, by
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`his own admission, only put “one or two” cases on hold so that the Board can review
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`the patent, absent a joint motion to stay. KOSS-2019. Regarding the factual
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`circumstances that led to the granting of those “one or two” motions to stay, Judge
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`Albright explained that the plaintiff had earlier sued other defendants on the same
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`patent in a different district and those other defendants had their petitions instituted,
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`such that IPRs were well underway by the time patent owner filed the later
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`complaints in the Western District of Texas. Id. These circumstances are not present
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`in the Apple Litigation.
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`In the Apple Litigation, claim construction is complete and fact discovery has
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`commenced (KOSS-2016, 3; KOSS-2017, 6-7; KOSS-2018), which, according to
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`Judge Albright, indicates that the Apple Litigation is in a later stage and warrants
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`the preservation of a trial date in spite of institution. KOSS-2020 (Judge Albright
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`denying a defendant’s motion to stay pending an IPR).
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`The unlikelihood of a stay is highlighted by that fact that Apple has not moved
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`to stay the Apple Litigation in light of instituted IPRs for three other patents involved
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`in the Apple Litigation. See Apple Inc. v. Koss Corp., IPR2021-00255, Paper 22
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`(PTAB June 3, 2021) (for U.S. Patent 10,298,451); Apple Inc. v. Koss Corp.,
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`IPR2021-00305, Paper 14 (PTAB June 3, 2021) (for U.S. Patent 10,506,325); Apple
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`Inc. v. Koss Corp., IPR2021-00381, Paper 15 (PTAB July 2, 2021) (for U.S. Patent
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`10,491,982); KOSS-2023, 2 (identifying patents in Apple Litigation). The Board
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`instituted two of these IPRs more than one month ago. The fact that Apple has still
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`not sought a stay shows that a stay of the Apple Litigation is even less likely.
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`Accordingly, the first Fintiv factor weighs in favor of discretionary denial of
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`institution and, at a minimum, should be viewed merely as neutral.
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`B.
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`Factor 2: Proximity of the Scheduled Trial Date to the Board’s
`Statutory Deadline for Written Decision
`The institution decision will issue by October 15, 2021. 35 U.S.C.
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`§ 314(b)(1). If instituted, the FWD will issue by October 15, 2022. 35 U.S.C.
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`§ 316(a)(11). The trial in the Apple Litigation, however, is scheduled for April 18,
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`2022 (KOSS-2016, 4; KOSS-2002, 15 (Dkt. 72); KOSS-2017, 8), which is six
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`months prior to the expected FWD if the IPR is instituted. The Board has
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`consistently found that such a significant gap weighs in favor of a discretionary
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`denial of institution. See, e.g. NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-
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`00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (Precedential) (denying institution
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`under § 314(a) when a gap from March 25, 2019 to September 2019 (roughly six
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`months) was expected between the FWD and the start of a trial); Cisco Systems, Inc.
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`v Ramot at Tel Aviv University Ltd., IPR2020-00484, Paper 10, 16-17 (PTAB August
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`18, 2020) (denying institution under § 314(a) when a six-month gap was expected
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`finding all factors except Factor 1 favor discretionary denial); Supercell Oy v. Gree,
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`Inc., IPR2020-01628, Paper 9, 14-15 (PTAB February 17, 2021) (denying institution
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`under § 314(a) when a six-month gap was expected finding factors 2-5 collectively
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`outweigh factor 6).
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`Moreover, it is highly likely that the trial in the Apple Litigation will take
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`place as scheduled. Judge Albright recently denied Apple’s motion to transfer
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`(KOSS-2004) and the district court in the NDCal transferred Apple’s declaratory
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`judgment action to the WDTX. KOSS-2005. Apple and Patent Owner subsequently
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`moved jointly to consolidate the two cases before Judge Albright in the WDTX.
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`KOSS-2006. Thus, the Apple Litigation is unlikely to be moved to another venue.1
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`Also, directly addressing Petitioner’s speculation about Judge Albright’s
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`docket, Pet. at 97, Judge Albright recently expressed confidence in his court’s ability
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`to maintain a trial schedule despite his heavy caseload. In denying Apple’s motion
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`to transfer, Judge Albright remarked that the rate at which WDTX disposes of patent
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`cases makes it unlikely that the trial date, at least for the Apple Litigation, will
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`change despite the WDTX’s high caseload for patent cases. KOSS-2004, 25-26.
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`This comports with Judge Albright’s recently issued standing order governing patent
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`cases, which states “[a]fter the trial date is set, the Court will not move the trial date
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`except in extreme situations.” KOSS-2021, 5.
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`In a recent institution decision involving Apple, Patent Owner, and a patent
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`that is also involved in the Apple Litigation, the Board stated: “[g]iven that the trial
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`is currently scheduled approximately three months before the final decision, this
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`factor weighs slightly towards exercising discretion to deny institution.” Apple Inc.
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`v. Koss Corp., IPR2021-00381, Paper 15 at 14 (PTAB July 2, 2021). Here, the
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`1 Apple petitioned the Federal Circuit for a writ of mandamus directing the WDTX
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`to transfer the Apple Litigation to the NDCal. See In re Apple, Case No. 21-147
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`(Fed. Cir.). The Federal Circuit has not ruled on the petition.
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`factual circumstances have changed such that the second Fintiv factor weighs
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`strongly in favor of discretionary denial of institution. The gap between the trial and
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`the expected FWD date has expanded to six months for the present Petition, twice
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`as large as the gap considered by the Board in IPR2021-00381. Accordingly, it is
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`fairly certain that the Apple Litigation trial will occur prior—six months prior—to
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`the FWD if the IPR is instituted.
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`Thus, Fintiv factor two weighs strongly in favor of denying institution.
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`C.
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`Factor 3: The Parties and Court in the Apple Litigation Will
`Have Invested Substantial Resources Prior to the Institution
`Decision
`The parties and court will have invested substantial resources in the Apple
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`Litigation by the time the Board issues an institution decision. The Petition
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`exclusively discusses the parties’ investment in the Bose Litigation. Pet. at 98.
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`Patent Owner, Apple, and the district court, however, have invested significant
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`resources in the Apple Litigation. In fact, by the time that Petitioner filed the
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`Petition, the parties in the Apple Litigation had: served preliminary infringement and
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`invalidity contentions; exchanged claim terms for construction; exchanged proposed
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`claim constructions; disclosed extrinsic evidence related to claim construction; and
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`filed opening and responsive claim construction briefs. KOSS-2002, 10-13; KOSS-
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`2016, 2-3.
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`Further, “the appropriate time to evaluate the investment of the parties in [a]
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`Parallel Proceeding is at the time of the institution decision and not at the time of the
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`filing of the petition.” Verizon Bus. Network Servs. LLC v. Huawei Techs. Co.,
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`IPR2020-01292, Paper 13 at 14 (PTAB Jan. 25, 2021). Here, leading up to the
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`institution decision, which is due by October 15, 2021 (35 U.S.C. § 314(b)), the
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`parties and court will invest substantially more resources now that the claim
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`construction process is complete. See e.g., SK Hynix v. Netlist, IPR2020-01421,
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`Paper 10 at 9-10 (Mar. 16, 2021) (“most of the work in a patent case occurs after the
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`Markman hearing.”); Fintiv, IPR2020-00019, Paper 11 at 9–10 (district court c