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`Paper No. __
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`Filed on behalf of Petitioner by:
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`Michael N. Rader, Reg. No. 52,146
`Gregory S. Nieberg, Reg. No. 57,063
`Nathan R. Speed (admitted pro hac vice)
`WOLF, GREENFIELD & SACKS, P.C.
`600 Atlantic Avenue
`Boston, MA 02210
`(617) 646-8000 Phone
`(617) 646-8646 Fax
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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,
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`v.
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`KOSS CORPORATION,
`Patent Owner.
`_____________
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`Case No. IPR2021-00680
`Patent No. 10,469,934
`_____________
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`PETITIONER’S PRELIMINARY REPLY TO
`PATENT OWNER’S 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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`5.
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`TABLE OF CONTENTS
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`Factor 1: Whether the Court Will Issue a Stay Is Unknown ........................... 1
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`Factors 2 and 5: Petitioner Is Not a Defendant in the Apple Suit ................... 2
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`Factor 3: There Has Been Little Litigation Investment ................................... 3
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`Factor 4: There Is Minimal Potential Overlap with the Apple Suit ................ 4
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`Factor 6: Patent Owner’s Response to the Merits Is Weak ............................. 5
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`- i -
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`TABLE OF AUTHORITIES
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`CASES
`Apple Inc. v. Seven Networks,
`IPR2020-00235, Paper 10 (July 28, 2020) ............................................................. 5
`Bose Corp. v. Koss Corp.,
`1-20-cv-12193 (D. Mass.) ...................................................................................... 1
`Dolby Labs. v. Intertrust Tech.,
`IPR2020-00665, Paper 11 (Feb. 16, 2021) .................................................... 2, 3, 4
`Facebook v. Onstream Media,
`IPR2020-01525, Paper 11 (April 5, 2021) ............................................................. 1
`Google v. Parus,
`IPR2020-00846, Paper 9 (Oct. 21, 2020) ............................................................... 5
`Google v. Uniloc 2017,
`IPR2020-00441, Paper 13 (July 17, 2020) ............................................................. 2
`Koss Corp. v. Plantronics, Inc.,
`4-21-cv-03854 (N.D. Cal.) ..................................................................................... 1
`Koss Corp. v. Skullcandy, Inc.,
`2-21-cv-00203 (D. Utah) ........................................................................................ 1
`Nalox-1 Pharms. v. Opiant Pharms.,
`IPR2019-00685, Paper 11 (Aug. 27, 2019) ............................................................ 3
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`Sand Revolution II LLC v. Continental Intermodal Group-Trucking,
`IPR2019-01393, Paper 24 (June 16, 2020) ............................................................ 4
`Snap, Inc. v. SRK Tech.,
`IPR2020-00820, Paper 15 (Oct. 21, 2020) ............................................................. 2
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`- ii -
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`When Bose filed its Petition, Patent Owner (“PO”) had four suits pending in
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`WDTX involving the ’934 Patent. Petition, 96. Since then, three of the four suits
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`were dismissed or transferred, including PO’s suit against Bose. POPR, 5-6. Those
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`three suits are now pending in different district courts1 with no trial date set for any
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`of them and with Skullcandy’s suit stayed pending completion of the IPRs filed
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`against PO’s patents. POPR, 5-6; Koss v. Skullcandy, 2:21-cv-00203 (D. Utah),
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`Dkt. No. 43 (stay order). Only PO’s suit against Apple remains in WDTX.
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`Given the lack of a trial date in three of the suits involving the ’934 Patent,
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`PO’s Fintiv arguments focus exclusively on its Apple suit. That suit—involving a
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`party and products unrelated to Bose—does not warrant discretionarily denying
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`Bose’s meritorious petition. Indeed, PO fails to cite a single case in which the
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`Board discretionarily denied an otherwise diligently filed Petition due to a pending
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`litigation involving an unrelated party and unrelated infringement allegations.
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`1.
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`Factor 1: Whether the Court Will Issue a Stay Is Unknown
`PO argues Judge Albright “is unlikely to grant a stay” (POPR, 9), but offers
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`no “specific evidence” that is true and relies on generic statements the Board has
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`previously found unpersuasive. Facebook v. Onstream Media, IPR2020-01525,
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`Paper 11, 9-10 (April 5, 2021). For Apple’s suit, Factor 1 is neutral.
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`1 Koss Corp. v. Skullcandy, 2:21-cv-00203 (D. Utah); Koss Corp. v. Plantronics,
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`4:21-cv-03854 (N.D. Cal.); Bose Corp. v. Koss Corp., 1:20-cv-12193 (D. Mass.).
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`- 1 -
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`As for the other suits, the district court’s decision to stay the Skullcandy suit
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`“weigh[s] strongly against” discretionary denial. Snap, Inc. v. SRK Tech.,
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`IPR2020-00820, Paper 15, 8-9 (Oct. 21, 2020) (precedential). The potential for
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`stays in the other suits is significant given their early stages. And now that PO has
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`counterclaimed for infringement, Bose will seek to stay its suit with PO shortly.
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`2.
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`Factors 2 and 5: Petitioner Is Not a Defendant in the Apple Suit
`PO’s Factor 2 argument ignores the three pending suits in which no trial date
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`has been scheduled. The lack of a trial date in each of those suits “weighs
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`significantly against” the Board exercising its discretion to deny institution.
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`Google v. Uniloc 2017, IPR2020-00441, Paper 13, 35 (July 17, 2020).
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`PO’s Factor 2 arguments hinge on Apple’s trial date. But Bose is not a party
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`to the Apple suit, and thus whatever weight Factor 2 is given in view of Apple’s
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`trial date should be offset by Factor 5. Dolby Labs. v. Intertrust Tech., IPR2020-
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`00665, Paper 11, 13-14 (Feb. 16, 2021) (“Dolby”) (“Factors 2 and 5 are
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`interrelated” where the challenged patent is involved in different actions with
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`different parties and different trial dates.). As Fintiv made clear: “If a petitioner,”
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`like Bose, “is unrelated to a defendant in an earlier court proceeding, the Board has
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`weighed this fact against exercising discretion to deny institution.” IPR2020-
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`00019, Paper 11, 13-14 (Mar. 20, 2020) (precedential). Indeed, citing Fintiv, the
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`Board has held that a pre-FWD trial involving a defendant different than the
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`- 2 -
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`petitioner did not favor discretionary denial under Factor 2 even though the
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`petitioner had identified the defendant as a real party-in-interest. Dolby, 15-16.
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`PO cites three decisions denying institution given a six-month “gap”
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`between the FWD and district court trial (POPR, 11), but each involved trials in
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`which the petitioner was a defendant. When the trial does not involve the
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`petitioner, the Board has instituted IPR despite “gaps” greater than six months.
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`Nalox-1 Pharms. v. Opiant Pharms., IPR2019-00685, Paper 11, 8 (Aug. 27, 2019)
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`(one-year gap); Dolby, 11 (nine-months). PO cites no decision denying institution
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`given a “gap” between the FWD and an unrelated party’s pending trial date.
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`3.
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`Factor 3: There Has Been Little Litigation Investment
`PO ignores the three non-Apple suits, each of which is in its infancy with
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`fact discovery not yet started (Bose, Plantronics) or stayed (Skullcandy). The lack
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`of investment in those suits “weighs against” denial. Fintiv, 10.
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`As for Apple, the parties have invested in the case but much work remains
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`after the institution deadline. For example, dispositive motions are not due until
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`three months after institution. EX2017, 7; Dolby, 19 (instituting trial where
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`dispositive motions were due three months after institution). PO points to the
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`district court’s Markman order but that two-page order “does not demonstrate the
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`same high level of investment of time and resources as the detailed Markman
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`Order in Fintiv.” Sand Revolution II LLC v. Continental Intermodal Group-
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`- 3 -
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`Trucking, IPR2019-01393, Paper 24, 10-11 (June 16, 2020) (informative)
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`(instituting where, as here, “substantive motion practice is yet to come”).
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`Finally, as part of the Board’s holistic analysis, the investment in the Apple
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`suit must be considered in view of Bose’s diligence. Fintiv, 11-12. Bose filed its
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`petition six weeks after learning which claims PO was asserting. EX1125, 4 (Feb.
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`5, 2021). Such diligence strongly mitigates against Apple’s and PO’s investment in
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`their separate suit. Dolby, 20 (filing within five months of infringement contentions
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`“mitigates against the investment of the parties” in multiple separate suits).
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`4.
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`Factor 4: There Is Minimal Potential Overlap with the Apple Suit
`PO concedes Bose provided it a stipulation eliminating potential overlap
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`between this proceeding and the Massachusetts suit. POPR, 15-16. PO thus focuses
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`on Apple’s suit and argues there is overlap between this proceeding and that suit.
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`First, PO alleges there is a “mere possibility” that Bose has challenged
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`claims in this proceeding not asserted in the Apple suit (POPR, 16), but its listing
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`of claims identifies 17 claims Bose challenged and which are not asserted against
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`Apple.2 These claims are ones Koss asserted against Bose in WDTX (EX1125, 2)
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`and will presumably re-assert in Massachusetts. Bose would be harmed if
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`institution on these non-overlapping claims is denied—its ability to challenge these
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`claims via IPR will be lost in view of a pending suit that will not address their
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`2 The challenged claims not asserted against Apple are 9-10, 14, 32-35, and 49-57.
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`- 4 -
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`validity given Koss’s unique infringement allegations against Apple. This is a far
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`cry from the “non-overlapping” scenario, exemplified in Samsung (POPR, 16), in
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`which a petitioner challenges more claims than are asserted against it but does not
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`explain why the non-asserted claims need be challenged.
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`Second, PO speculates Apple will rely on Rezvani-875, but it is one of 200+
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`references in Apple’s invalidity contentions and Apple’s trial strategy is unknown.
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`POPR, 16-17; EX2030, 1-7. The Board should not “preclude [Bose] from raising
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`its challenges here based on the speculation that [Apple] might later raise those
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`same challenges.” Google v. Parus, IPR2020-00846, Paper 9, 20 (Oct. 21, 2020).
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`5.
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`Factor 6: Patent Owner’s Response to the Merits Is Weak
`For Grounds 1A-1D and 2A-2D, PO relies on attorney argument to dispute
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`expert testimony explaining why POSAs would have pursued the combinations.
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`PO also says Grounds 2A-2D are weak because Rezvani-875 and Rezvani-446
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`were cited during prosecution but ignores that (i) only Rezvani-446 was applied
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`and (ii) the grounds rely on art not before the Office—Hind and Harada—to show
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`the limitations the Examiner found missing from the art were in fact known. Pet.,
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`102. Moreover, because the Petition is meritorious and trial has been instituted on a
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`related patent (IPR2021-00297) discretionary denial “would be inefficient.” Apple
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`v. Seven Networks, IPR2020-00235, Paper 10, 17 (July 28, 2020).
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`August 13, 2021
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`/Michael N. Rader/ Michael N. Rader, Reg. No. 52,146
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`- 5 -
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6(e)(4)
`I certify that on August 13, 2021, I will cause a copy of the foregoing
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`document, including any exhibits filed therewith, to be served via electronic mail,
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`as previously consented to by Patent Owner, upon the following:
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`Mark G. Knedeisen
`Laurén Shuttleworth Murray
`Brian P. Bozzo
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`mark.knedeisen@klgates.com
`lauren.murray@klgates.com
`brian.bozzo@klgates.com
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`/MacAulay Rush /
`MacAulay Rush
`Paralegal
`WOLF, GREENFIELD & SACKS, P.C.
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`Date: August 13, 2021
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