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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: IPR2021-00680
`U.S. PATENT NO. 10,469,934
`_____________________
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`PATENT OWNER’S SUR-REPLY IN SUPPORT OF
`PRELIMINARY RESPONSE
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`IPR2021-00680
`Patent Owner Sur-Reply in Support of Preliminary Response
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`Because the trial in the related “Apple Litigation” (Koss Corp. v. Apple Inc.,
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`Case No. 6:20-cv-00665-ADA W.D. Tex.) will take place six months before the
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`projected final decision date in this IPR if the trial is instituted, Petitioner’s Reply
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`(Paper 11) downplays the impact of Apple Litigation on Board’s assessment of
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`whether it would be efficient for the Board to institute the IPR. In fact, that case is
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`critically important and Petitioner’s arguments, because they avoid that critical fact,
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`should not be found persuasive.
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`The Board has denied discretionarily institution of post-grant proceedings
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`under similar circumstances. In TCO AS v. NCS Multistage Inc., PGR2020-0077,
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`Paper 16 (PTAB Feb. 18, 2021), the patent-at-issue was involved in several
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`litigations, including the “Nine Litigation” and the “TCO Litigation.” The petitioner
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`was a party to the TCO Litigation, which was “at a nascent stage” and would not
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`have a trial before the projected final written decision date. TCO, Paper 16 at 17.
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`Petitioner, however, was not a party to the Nine Litigation, in which the trial was
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`scheduled to take place four months before the projected final decision date. Id. at
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`11. Under these circumstances, including the overlap between the asserted grounds
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`in the petition and the validity grounds litigated in the Nine Litigation, the Board
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`IPR2021-00680
`Patent Owner Sur-Reply in Support of Preliminary Response
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`denied institution. Id. as 23.1
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`The present case is remarkably similar to the TCO case and institution should
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`be denied for analogous reasons. Although the trials in the Bose, Skullcandy and
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`Plantronics matters are unlikely to occur prior to the projected final decision date if
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`the IPR is instituted (like the TCO Litigation in the TCO case), the trial in the Apple
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`Litigation is scheduled to take in place in April 2022, which is six months before the
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`projected final decision date (like the Nine Litigation in the TCO case). In fact, there
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`is more certainty now about the likelihood of the April 2022 trial in the Apple
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`Litigation given that on August 4, 2021, the Federal Circuit denied Apple’s
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`mandamus petition to transfer the Apple Litigation from the Western District of
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`Texas to the Northern District of California. KOSS-2033. Thus, the Apple
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`Litigation will be not be transferred.
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`Also like the TCO case, there is substantial overlap between the validity issues
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`1 See also Cisco Sys., Inc. v. Estech Sys., Inc., IPR2021-00332, Paper 11 (PTAB July
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`7, 2021) and Cisco Sys., Inc. v. Estech Sys., Inc., IPR2021-00333, Paper 12 (PTAB
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`July 7, 2021) (institution denied in related IPRs under Fintiv where petitioner was
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`not a party to related litigations, although there was “overlap” between the
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`defendants in the related litigations and real parties in interest in the IPRs).
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`IPR2021-00680
`Patent Owner Sur-Reply in Support of Preliminary Response
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`raised in the Apple Litigation and asserted grounds in the Petition. While Petitioner
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`challenges seventeen claims that are not presently asserted in the Apple Litigation
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`(Paper 11 at 4), there are thirty claims that overlap between the two proceedings
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`(claims 1-8, 11-13, 15-22, 36-41 and 58-62), including both independent claims
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`(claims 1 and 58) of the ’934 Patent. See KOSS-2023 at 2 (listing asserted claims
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`of ’934 Patent in Apple Litigation).
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`Petitioner accuses Patent Owner of “speculating” that Apple will rely on
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`Rezvani-875 (BOSE-1016) in the Apple Litigation because it is one of more than
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`200 references cited in Apple’s invalidity contentions. Paper 11 at 5 (citing KOSS-
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`2030). However, Apple’s invalidity contentions covered five patents (including the
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`’934 Patent). KOSS-2030 at 2. Also, Rezvani-875 was one (and the first) of only
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`four references for which Apple provided charts for the ’934 Patent. KOSS-2030 at
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`25 (Exhibit C1-C4 to Apple’s invalidity contentions are Apple’s charts for the ’934
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`Patent); KOSS-2022 at 1 (Exhibit C1 for Apple’s contentions was a chart for
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`Rezvani-875). Because of the significant overlap between the validity issues raised
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`in the two matters, and because the Apple Litigation’s jury verdict is highly likely
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`to be six months prior to the expected final decision date if the IPR is instituted,
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`institution of the IPR would demand an untimely and inefficient proceeding that
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`would effectively “second guess” the result of a jury trial in concurrent litigation.
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`IPR2021-00680
`Patent Owner Sur-Reply in Support of Preliminary Response
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`See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 11–21
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`(PTAB Sept. 12, 2018) (Precedential); Apple Inc. v. Fintiv, Inc., IPR2020-00019,
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`Paper 11 at 2–3 (PTAB March 20, 2020) (Precedential).
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`Petitioner’s other arguments are similarly unpersuasive.
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`Factor 1: Petitioner accuses Patent Owner of offering no specific evidence
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`that the Apple Litigation will not be stayed. The specific evidence includes (i) that
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`Apple still has not sought a stay, despite the fact that Board instituted IPRs for three
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`of the five patents involved in the Apple Litigation (Paper 10 at 10) and (ii) the Apple
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`Litigation does not satisfy the conditions under which the presiding judge in the
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`Apple Litigation will stay a case pending an IPR. KOSS-2019.
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`Factors 2 and 5: Petitioner asserts that Google LLC v. Uniloc 2017 LLC,
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`IPR2020-00441, Paper 13 (July 17, 2020) supports that the lack of a trial date in the
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`Bose, Skullcandy and Plantronics cases “weighs significantly against” the Board
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`exercising its discretion to deny institution. Paper 11, 2. The Google case is
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`irrelevant, however, because there was no other litigation involving the patent that
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`was going to trial prior to the projected final written decision date. Google, Paper
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`13, 35 (only litigation involved petitioner). That is not the case here because the
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`Apple Litigation is going to trial six months before the projected final written
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`decision date.
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`IPR2021-00680
`Patent Owner Sur-Reply in Support of Preliminary Response
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`Factor 3: Petitioner admits that the parties and court in the Apple Litigation
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`have invested heavily in the litigation, but minimizes that effort because “much work
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`remains.” Paper 11, 3. This argument is unavailing for two reasons. First, the key
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`is the investment by the time of the institution decision. Fintiv, IPR2020-00019,
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`Paper 11, 9-10. Second, even though much work remains in the Apple Litigation,
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`that substantial amount of work will be completed by April 2022. KOSS-2017.
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`Because the Apple Litigation is unlikely to be stayed or transferred, the remaining
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`work will be completed in early 2022, such that instituting the IPR will lead to
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`duplicative costs. See Fintiv, IPR2020-00019, Paper 11 at 10.
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`Factor 4: Bose says it will be harmed if institution is denied. Paper 11, 4.
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`Harm to the petitioner, however, is not the relevant inquiry under the Fintiv analysis.
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`Instead, the issue is whether institution of the trial would be an efficient use of Board
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`resources. See Fintiv, IPR2020-00019, Paper 11 at 12.
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`Factor 6: The weakness of the Petition’s merits, as explained in Patent
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`Owner’s Preliminary Response (Paper 10, 23-47), also militates in favor of
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`discretionary denial.
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`For these reasons, and the reasons set forth in Patent Owner’s Preliminary
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`Response, the Board should exercise its discretion to deny institution.
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`Dated: August 23, 2021
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`Respectfully submitted,
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`IPR2021-00680
`Patent Owner Sur-Reply in Support of Preliminary Response
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`By:
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`/Mark G. Knedeisen/
`Mark G. Knedeisen (Reg. No. 42,747)
`K&L Gates Center, 210 Sixth Avenue
`Pittsburgh, Pennsylvania 15222
`Tel.: (412) 355-6342
`mark.knedeisen@klgates.com
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`Counsel for Patent Owner
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`IPR2021-00680
`Patent Owner Sur-Reply in Support of Preliminary Response
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`CERTIFICATION OF SERVICE UNDER 37 C.F.R. § 42.6(E)(4)
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`I hereby certify that on August 23, 2021, I caused a true and correct copy of
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`the foregoing to be served on the following counsel for Petitioner by electronic mail
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`to the following email address:
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`Michael N. Rader
`Gregory S. Nieberg
`Nathan R. Speed
`Wolf, Greenfield & Sacks, P.C.
`600 Atlantic Avenue
`Boston, MA 02210-2206
`Email: MRader-PTAB@wolfgreenfield.com
`Email: GNieberg@wolfgreenfield.com
`Email: nspeed@wolfgreenfield.com
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`
`
`
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`/Mark G. Knedeisen/
`Mark G. Knedeisen (Reg. No. 42,747)
`K&L Gates Center, 210 Sixth Avenue
`Pittsburgh, Pennsylvania 15222
`Tel.: (412) 355-6342
`mark.knedeisen@klgates.com
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`Counsel for Patent Owner
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`By:
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