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`Paper No. __
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`BOSE CORPORATION,
`Petitioner,
`
`v.
`
`KOSS CORPORATION,
`Patent Owner.
`_____________
`
`Case No. IPR2021-00680
`Patent No. 10,469,934
`_____________
`
`PETITIONER’S NOTICE OF CROSS-APPEAL
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`

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`Pursuant to 35 U.S.C. §§ 141(c), 142, and 319; 37 C.F.R. §§ 90.2 and 90.3;
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`Federal Rule of Appellate Procedure 4(a)(3); and Federal Circuit Rule 15(a)(1),
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`Petitioner Bose Corporation hereby provides notice that it cross-appeals to the
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`United States Court of Appeals for the Federal Circuit from the Final Written
`
`Decision in Case No. IPR2021-00680 (Paper 37, attached as Exhibit A) entered on
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`October 7, 2022 by the Patent Trial and Appeal Board (“the Board”), and from all
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`orders, decisions, rulings, and opinions underlying the Final Written Decision.
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Petitioner indicates that the
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`expected issues on cross-appeal include, but are not limited to:
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` the Board’s error(s) in its determination that claims 4, 6, 8, 12, 13, 17,
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`18, 20, 22, 38, 40, 41, and 58–62 of U.S. Patent No. 10,469,934 were
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`not proven unpatentable.
`
`Pursuant to 37 C.F.R. § 90.3 and Federal Rule of Appellate Procedure 4(a)(3),,
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`this Notice of Cross-Appeal is timely, having been duly filed within 63 days after
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`the date of the Final Written Decision and within 14 days after the date when Patent
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`Owner filed its notice of appeal of the Final Written Decision. Paper 38 (filed
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`November 17, 2022).
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`1
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`Pursuant to 35 U.S.C. § 142 and 37 C.F.R. § 90.2(a), a copy of this Notice of
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`Cross-Appeal is being filed simultaneously with the Patent Trial and Appeal Board,
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`the Clerk’s Office for the United States Court of Appeals for the Federal Circuit
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`(with the required docketing fee), and the Director of the United States Patent and
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`Trademark Office.
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`
`
`
`
`
`Date: November 18, 2022
`
`
`
`Respectfully submitted,
`Bose Corporation
`
`/Michael N. Rader/
`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
`
`2
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`

`

`CERTIFICATE OF FILING
`
`I hereby certify that, pursuant to 37 C.F.R. §§ 90.2(a)(1) and 104.2(a), in
`addition to being filed electronically through the Board’s P-TACTS system, the
`original version of the foregoing Notice of Cross-Appeal (including Exhibit A)
`is being filed by USPS Priority Mail Express (Label No. EI 522 453 633 US), on
`this 18th day of November, 2022, with the Director of the United States Patent
`and Trademark Office, at the following address:
`
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`CERTIFICATE OF FILING
`
`I hereby certify that, pursuant to 37 C.F.R. § 90.2(a)(2) and Federal Circuit
`Rule 15(a)(1), a true and correct copy of the foregoing Notice of Cross-Appeal
`(including Exhibit A) is being filed with the Clerk’s Office of the United States Court
`of Appeals for the Federal Circuit through the federal courts’ Case Management and
`Electronic Case Files (CM/ECF) system on this 18th day of November, 2022, along
`with the requisite fee which is being paid electronically using pay.gov.
`
`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6 (E)(4)
`I certify that on November 18, 2022, I will cause a copy of the foregoing
`document, including any exhibits filed therewith, to be served via electronic mail, as
`previously consented to by Patent Owner, upon the following:
`
`
`Mark G. Knedeisen
`Laurén Shuttleworth Murray
`Brian P. Bozzo
`Erik J. Halverson
`
`mark.knedeisen@klgates.com
`lauren.murray@klgates.com
`brian.bozzo@klgates.com
`erik.halverson@klgates.com
`
`Date: November 18, 2022
`
`
`
`/MacAulay Rush/
`MacAulay Rush
`Paralegal
`WOLF, GREENFIELD & SACKS, P.C.
`
`

`

`EXHIBIT A
`EXHIBIT A
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`Trials@uspto.gov
`571-272-7822
`
`Paper 37
`Entered: Oct. 7, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BOSE CORP.,
`Petitioner,
`v.
`KOSS CORP.,
`Patent Owner.
`
`IPR2021-00680
`Patent 10,469,934 B2
`
`
`
`
`
`
`
`
`
`Before KARL D. EASTHOM, PATRICK R. SCANLON, and
`DAVID C. MCKONE, Administrative Patent Judges.
`EASTHOM, Administrative Patent Judge, with whom Judges Scanlon and
`McKone join as to Sections I, II A–F.1, and II.K.
`
`McKONE, Administrative Patent Judge with whom Administrative Patent
`Judge Scanlon joins as to Sections II.F.2, II.H, and II.J.
`
`EASTHOM, Administrative Patent Judge, dissenting as to Sections II.F.2,
`II.H, and II.J.
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
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`
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`

`

`IPR2021-00680
`Patent 10,469,934 B2
`Bose Corp. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting
`an inter partes review of claims 1–22, 32–41, 47, and 49–62 of U.S. Patent
`No. 10,469,934 B2 (Ex. 1001, “the ’934 patent”). Pet. 1. Petitioner filed a
`Declaration of Dr. Tim A. Williams (Ex. 1003) and a Declaration of
`Dr. John G. Casali (Ex. 1005) with its Petition. Koss Corp. (“Patent
`Owner”) filed a Preliminary Response (Paper 10, “Prelim. Resp.”).
`After the Institution Decision (Paper 15, “Inst. Dec.”), Patent Owner
`filed a Patent Owner Response (Paper 21, “PO Resp.”), a Declaration of
`Joseph C. McAlexander III (Ex. 2047), and a Declaration of Nicholas S.
`Blair (Ex. 2048); Petitioner filed a Reply (Paper 27) and a Reply Declaration
`of Dr. Tim A. Williams (Ex. 1160); and Patent Owner filed a Sur-reply
`(Paper 29, “Sur-reply”). Thereafter, the parties presented oral arguments via
`a video hearing (March 17, 2022), and the Board entered a transcript into the
`record. Paper 36 (“Tr.”).
`For the reasons set forth in this Final Written Decision pursuant to
`35 U.S.C. § 318(a), we determine that Petitioner demonstrates by a
`preponderance of evidence that the challenged claims are unpatentable.
`I. BACKGROUND
`A. Real Parties in Interest
`The parties identify themselves as the real parties-in-interest. Pet. xix;
`Paper 3, 1.
`
`B. Related Matters
`The parties identify the following proceedings as related matters
`involving the ’934 patent: Koss Corp. v. Bose Corp., No. 6:20-cv-00661
`(W.D. Tex.) (dismissed); Koss Corp. v. Plantronics, Inc., No. 6:20-cv-00663
`(W.D. Tex.) (transferred to N.D. Cal.); Koss Corp. v. Skullcandy, Inc., No.
`6:20-cv-00664 (W.D. Tex.) (dismissed); Koss Corp. v. Apple Inc., No. 6:20-
`
`2
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`

`

`IPR2021-00680
`Patent 10,469,934 B2
`cv-00665 (W.D. Tex.); Bose Corp. v. Koss Corp., No. 1:20-cv-12193 (D.
`Mass.); Apple Inc. v. Koss Corp., No. 4:20-cv-05504 (N.D. Cal.); Apple Inc.
`v. Koss Corp., No. 6:21-cv-00495 (W.D. Tex.); Koss Corp. v. Skullcandy,
`Inc., No. 2:21-cv-00203 (D. Utah). Pet. xx–xxi; Paper 3, 1; Paper 5, 1;
`Paper 7, 2.
`In addition, the parties indicate, and/or Board records show, that the
`following inter partes review proceedings challenging the ’934 patent or
`patents related to the ’934 patent are related matters: Apple Inc. v. Koss
`Corp., IPR2021-00255 (challenging U.S. Patent No. 10,298,451 B1) (final
`written decision, notice of appeal filed August 1, 2022); Bose Corp. v. Koss
`Corp., IPR2021-00297 (challenging U.S. Patent No. 10,368,155 B2) (final
`written decision, notice of appeal filed Aug. 1, 2022); Apple Inc. v. Koss
`Corp., IPR2021-00305 (challenging U.S. Patent No. 10,506,325 B1) (final
`written decision, notice of appeal filed Aug. 1, 2022); Apple Inc. v. Koss
`Corp., IPR2021-00381(challenging U.S. Patent No. 10,491,982 B1) (final
`written decision, notice of appeal filed Aug. 9, 2022); Bose Corp. v. Koss
`Corp., IPR2021-00546 (challenging U.S. Patent No. 10,206,025 B2)
`(institution denied Oct. 8, 2021); Apple Inc. v. Koss Corp., IPR2021-00592
`(challenging U.S. Patent No. 10,469,934 B2) (settled/terminated, Aug. 2,
`2022); Apple Inc. v. Koss Corp., IPR2021-00600 (challenging U.S. Patent
`No. 10,298,451 B1) (settled/terminated, Aug. 2, 2022); Bose Corp. v. Koss
`Corp., IPR2021-00612 (challenging U.S. Patent No. 10,206,025 B2) (final
`written decision filed Sept. 13, 2022); Apple Inc. v. Koss Corp., IPR2021-
`00626 (challenging U.S. Patent No. 10,206,025 B2) (institution denied
`Sept. 30, 2021); Apple Inc. v. Koss Corp., IPR2021-00679 (challenging U.S.
`Patent No. 10,506,325 B1) (institution denied Oct. 12, 2021); Apple Inc. v.
`Koss Corp., IPR2021-00686 (challenging U.S. Patent No. 10,491,982 B1)
`
`3
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`

`IPR2021-00680
`Patent 10,469,934 B2
`(institution denied Oct. 12, 2021); Apple Inc. v. Koss Corp., IPR2021-00693
`(challenging U.S. Patent No. 10,469,934 B2) (institution denied Oct. 13,
`2021). Pet. xx; Paper 3, 1; Paper 5, 1; Paper 7, 2.
`C. The ’934 Patent
`The ’934 patent, titled “System with Wireless Earphones,” issued
`November 5, 2019, with claims 1–62, and claims priority through several
`applications dating to April 7, 2008. Ex. 1001, codes (45), (54), (60), (63),
`1:3–30, 18:2–25:23. The ’934 patent relates to “a wireless earphone that
`comprises a transceiver circuit for receiving streaming audio from a data
`source, such as a digital audio player or a computer, over an ad hoc wireless
`network.” Id. at 1:67–2:3. The ’934 patent defines an “ad hoc wireless
`network” as “a network where two (or more) wireless-capable devices, such
`as the earphone and a data source, communicate directly and wirelessly,
`without using an access point.” Id. at 3:3–6. Some embodiments include
`two discrete wireless earphones, one in each ear. Id. at 3:47–48.
`Figure 2A of the ’934 patent follows:
`
`
`Figure 2A illustrates wireless earphone 10 connected via ad hoc wireless
`network 24 to data source 20. Ex. 1001, 4:26–28. “[D]ata source 20 may be
`a digital audio player (DAP), such as an [MP]3 player or an iPod, or any
`
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`IPR2021-00680
`Patent 10,469,934 B2
`other suitable [DAP] device, such as a laptop or personal computer, that
`stores and/or plays digital audio files.” Id. at 4:32–36. “When in range, the
`data source 20 may communicate with the earphone 10 via the ad hoc
`wireless network 24 using any suitable wireless communication protocol,”
`including Wi-Fi, Bluetooth, and other communication protocols. Id. at
`4:56–61.
`In one embodiment, earphone 10 connects to network-enabled host
`server 40 via networks 30a, 42 so that host server 40 can transmit streaming
`digital audio to earphone 10. Ex. 1001, 5:56–62, Fig. 2D. Alternatively,
`host server 40 may transmit a network address to earphone 10 for streaming
`digital audio content server 70. Id. at 5:62–65, Fig. 2D. In this case,
`earphone 10 uses the received address to connect to content server 70 via
`networks 30a, 42 and receive digital audio from content server 70. Id. at
`5:66–6:2. In one embodiment, content server 70 is an Internet radio station
`server. Id. at 6:3–4. In addition, content server 70 may stream digital audio
`received from data source 20 via networks 30b, 42. Id. at 6:7–12.
`Figure 3 follows:
`
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`IPR2021-00680
`Patent 10,469,934 B2
`
`
`Figure 3 depicts a block diagram of earphone 10. Id. at 2:31–32. As
`Figure 3 shows, earphone 10 includes transceiver circuit 100, power source
`102, microphone 104, acoustic transducer 106 (e.g., a speaker), and antenna
`108. Id. at 6:30–35. The body of earphone 10 houses transceiver circuit
`100, power source 102, and acoustic transducer 106 in some embodiments,
`with microphone 104 and antenna 108 external to the body. Id. at 6:33–40.
`
`6
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`

`IPR2021-00680
`Patent 10,469,934 B2
`
`D. Illustrative Claim
`Independent claim 1 follows:
`[1A] A headphone assembly comprising:
`[1B] first and second earphones, wherein each of the first and
`second earphones comprises an acoustic transducer; and
`[1C] an antenna for receiving wireless signals from a mobile,
`digital audio player via one or more ad hoc wireless
`communication links;
`[1D] a wireless communication circuit connected to the antenna,
`wherein the wireless communication circuit is for receiving and
`transmitting wireless signals to and from the headphone
`assembly;
`[1E] a processor;
`[1F] a memory for storing firmware that is executed by the
`processor;
`[1G] a rechargeable battery for powering the headphone
`assembly; and
`[1H] a microphone for picking up utterances by a user of the
`headphone assembly;
`[1I] and wherein the headphone assembly is configured to play,
`by the first and second earphones, digital audio content
`transmitted by the mobile, digital audio player via the one or
`more ad hoc wireless communication links;
`[1J] wherein the processor is configured to, upon activation of a
`user-control of the headphone assembly, initiate transmission of
`a request to a remote, network-connected server that is in
`wireless communication with the mobile, digital audio player;
`[1K] and wherein the headphone assembly is for receiving
`firmware upgrades transmitted from the remote, network-
`connected server.
`Ex. 1001, 18:2–33 (bracketed nomenclature added). See Pet. 5–6. Claim 58
`is the only other independent claim challenged. It is similar to claim 1 in
`that it includes the same limitations as claim 1 except limitations 1F and 1K,
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`IPR2021-00680
`Patent 10,469,934 B2
`and unlike claim 1, it also includes a “Signal Strength” limitation, as
`discussed below. See infra II.F.2.
`E. Asserted Grounds of Unpatentability
`Petitioner contends that the challenged claims would have been
`unpatentable on the following grounds:1
`35
`U.S.C.
`§
`103(a) Schrager,2 Goldstein3
`
`Claim(s) Challenged
`
`Reference(s)/Basis
`
`1–3, 5, 7, 9–11, 32–37, 39, 47,
`49, 51–57
`4, 6, 8, 12, 13, 38, 40, 41, 58–62 103(a) Schrager, Goldstein, Harada4
`14–16, 19, 21, 49–51
`103(a) Schrager, Goldstein, Skulley5
`103(a) Schrager, Goldstein, Skulley,
`Harada
`103(a) Rezvani-446,6 Rezvani-875,7
`Skulley, Hind8
`103(a) Rezvani-446, Rezvani-875,
`Skulley, Hind, Harada
`103(a) Rezvani-446, Rezvani-875,
`Oh,9 Hind
`
`17, 18, 20, 22
`1–3, 5, 7, 9–11, 14–16, 19, 21,
`47, 49–53
`4, 6, 8, 12–13, 17, 18, 20, 22,
`58–62
`32–37, 39, 54–57
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’934 patent’s
`effective filing date precedes the March 16, 2013, effective date of the
`applicable AIA amendments, the pre-AIA version of 35 U.S.C. § 103
`applies.
`2 US 7,072,686 B1, issued July 4, 2006 (Ex. 1101).
`3 US 2008/0031475 A1, published Feb. 7, 2008 (Ex. 1026).
`4 US 2006/0229014 A1, published Oct. 12, 2006 (Ex. 1098).
`5 US 6,856,690 B1, issued Feb. 15, 2005 (Ex. 1017).
`6 US 2007/0136446 A1, published June 14, 2007 (Ex. 1097).
`7 US 2007/0165875 A1, published July 19, 2007 (Ex. 1016).
`8 US 7,069,452 B1, issued June 27, 2006 (Ex. 1019).
`9 WO 2006/098584 A1, published Sept. 21, 2006 (Ex. 1099).
`
`8
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`

`IPR2021-00680
`Patent 10,469,934 B2
`
`Claim(s) Challenged
`
`38, 40, 41
`
`Pet. 2–3.
`
`Reference(s)/Basis
`
`35
`U.S.C.
`§
`103(a) Rezvani-446, Rezvani-875,
`Oh, Hind, Harada
`
`II. ANALYSIS
`A. Level of Ordinary Skill in the Art
`Determining whether an invention would have been obvious under
`35 U.S.C. § 103 requires resolving the level of ordinary skill in the pertinent
`art at the time of the effective filing date of the claimed invention. Graham
`v. John Deere Co., 383 U.S. 1, 17 (1966). The person of ordinary skill in the
`art is a hypothetical person who knows the relevant art. In re GPAC, Inc.,
`57 F.3d 1573, 1579 (Fed. Cir. 1995). Factors in determining the level of
`ordinary skill in the art include the types of problems encountered in the art,
`the sophistication of the technology, and educational level of active workers
`in the field. Id. One or more factors may predominate. Id.
`Petitioner contends that a person having ordinary skill in the art
`“would have had background in wireless networks, including at least a
`bachelor’s degree in electrical engineering or a related field and experience
`with wireless networks, and would have worked on a team including
`members with headphone-design experience.” Pet. 6 (citing Ex. 1003
`¶¶ 30–37; Ex. 1005 ¶¶ 41–45).
`Patent Owner “proposes a slightly different skill level.” PO Resp. 7.
`Patent Owner contends “that a POSA ‘would be someone working in the
`electrical engineering field and specializing in or knowledgeable of speaker
`components for small wireless devices.’” Id. (quoting Ex. 2047 ¶ 19).
`Patent Owner adds that “[t]he POSA would have a bachelor’s degree in
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`Patent 10,469,934 B2
`electrical engineering and at least two years of work experience in the
`industry. Id. (citing Ex. 2047 ¶ 19). Therefore, “the POSA would have
`studied and have practical experience with circuit design, speaker
`components, and wireless communication.” Id. (citing Ex. 2047 ¶ 19).
`Patent Owner argues that “Petitioner’s expert acknowledges” that “the
`’934 [p]atent relates to headphones,” and “under Patent Owner’s proposal,
`the POSA specializes in, or has knowledge of, speaker components for small
`wireless devices,” but “Petitioner’s [proposal of a] POSA does not have such
`skill.” PO Resp. 7–8.
`As Patent Owner argues, its proposed skill level is only “slightly
`different” than Petitioner’s. PO Resp. 7. The two proposals do not
`materially differ. Patent Owner argues that “Petitioner’s POSA does not
`have” “knowledge of[] speaker components for small wireless devices.” See
`Id. at 8. Contrary to this argument, however, under Petitioner’s proposal, the
`artisan of ordinary skill “would have worked on a team including members
`with headphone-design experience.” Pet. 6. By working on such a team,
`Petitioner’s proposed person of ordinary skill person at least would have
`gained “knowledge of[] speaker components for small wireless devices,”
`thereby satisfying Patent Owner’s proposed level of skill. Compare PO
`Resp. 8, with Pet. 6.
`Dr. Williams supports this finding by testifying that under his
`proposal, teams of “one or more” work “in coordination to modify the
`design to fit each other team’s constraints and desired attributes (e.g., how
`much the device should weigh; the shape of the device and how much room
`was needed for various components and subsystems; the wireless protocols
`supported by the device; etc.) as best as possible.” Ex. 1003 ¶ 33. And
`“[u]sing their ordinary skill, the teams would iteratively work on the
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`IPR2021-00680
`Patent 10,469,934 B2
`different aspects of the product until reaching a final design that met all of
`the desired functional and physical attributes of the product.” Id.
`Dr. Casali corroborates Dr. Williams’s testimony, testifying that he
`agree[s] that in the art of headphone assembly design for a
`wireless headphone assembly, a person would have a
`background in wireless technology and, if that person did not
`have sufficient experience with headphone design, would have
`been a member of a team including at least one other person with
`a background in engineering or product design bringing
`experience in headphone design.
`Ex. 1005 ¶ 42. He also testifies that “the engineer or product designer with
`headphone design experience . . . would have worked in the collaborative
`team, as described above in Paragraph 41.” Id. ¶ 43. In other words, a
`person of ordinary skill either would have sufficient direct experience in
`headphone design or would have gained some knowledge of headphone
`design after having collaborated on a team.
`Based on our review of the record, Petitioner’s stated level of ordinary
`skill in the art is reasonable because is consistent with the evidence of
`record, including the asserted prior art, and the breadth of the claims. For
`the reasons explained above, it implicitly includes what Patent Owner’s
`proposal additionally requires, namely that a person of ordinary skill would
`have “knowledge of[] speaker components for small wireless devices”––
`either by working on a team or otherwise. See PO Resp. 8.
`Regarding claim breadth as it relates to this knowledge of speaker
`components and the sophistication of the technology, see GPAC, 57 F.3d
`at 1579, the challenged claims at most recite well-known and generic form
`factors (headphone types or design shapes). For example, claim 33 depends
`from claim 1 and recites “each of the first and second earphones comprises
`earbuds.” Claim 34 depends from claim 33 and recites “each of the first and
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`Patent 10,469,934 B2
`second earphones comprises: a body portion that sits at least partially in an
`ear of the user when the headphone assembly is worn by the user; and an
`elongated portion that extends from the body portion.” These claims do not
`specify how the earphones include, or whether the body portion or elongated
`portion includes, the transducer, antenna, circuit, processor, memory,
`microphone, or rechargeable battery of claim 1. The ’934 patent
`specification states that “the earphone may take different shapes and the
`exemplary shapes shown in FIGS. 1A and 1B are not intended to be
`limiting.” Ex. 1001, 2:63–65.
`Dr. Casali persuasively testifies, with record evidentiary support, that
`the various “form-factors” at issue in this proceeding were well-known and
`fell into “three general types”:
`As Skulley corroborates as part of its background information,
`by 2008, it was known that both monaural and stereo headphone
`designs “can be classified into three general types in accordance
`with the type of ear-phone that they employ: 1) ‘In-the-ear’ type
`[intra-aural] earphones, sometimes referred to as ‘ear buds,’
`which fit into the concha, or entrance to a wearer’s middle ear,
`such as that described in U.S. Pat. No. 5,761,298 to M. Davis, et
`al.” (“Davis,” Ex. 1033), which illustrates an in-the ear design
`with a support structure (e.g., earhook 13, see Davis (Ex. 1033),
`4:40–41) that wraps around and behind the ear; “2) ‘On-the-ear’
`types [supra-aural] that couple against a lateral face of the auricle
`[also known as pinna], or external ear, of the wearer, such as that
`described in U.S. Pat. No. 5,960,094 to W. Jensen, et al.; and,
`3) ‘Over-the-ear’ types [circum-aural] that surround and form a
`closed chamber over the auricle of the listener, such as that
`described in U.S. Pat. No. 6,295,366 to L. Haller, et al.”
`(“Haller,” Ex. 1035). See Skulley (Ex. 1017), 1:22–34. Again,
`these general types can be termed “form factors,” which I will
`illustrate and address in Paragraphs 51–52 below.
`Ex. 1005 ¶ 50 (footnotes omitted).
`
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`Patent 10,469,934 B2
`Accordingly, for the purposes of this Decision, we adopt Petitioner’s
`proposal, which implicitly includes Patent Owner’s additional proposed
`requirement. As noted above, Patent Owner acknowledges its proposal is
`only “slightly different” than Petitioner’s proposal. PO Resp. 7.
`Accordingly, based on the discussion above and the record, a person of
`ordinary skill would have “knowledge of[] speaker components for small
`wireless devices” (id. at 8) by working on a team or otherwise. In addition,
`this person of ordinary skill “would have had background in wireless
`networks, including at least a bachelor’s degree in electrical engineering or a
`related field and experience with wireless networks.” See Pet. 6 (citing
`Ex. 1003 ¶¶ 30–37; Ex. 1005 ¶¶ 41–45).
`B. Weight of Declarant’s Testimony
`1. Dr. Williams and Mr. McAlexander
`Petitioner does not challenge the testimony of Mr. McAlexander,
`Patent Owner’s declarant.10
`Patent Owner argues that the testimony of Dr. Williams, Petitioner’s
`declarant, “should be afforded little if any weight for three reasons.” PO
`Resp. 63. First, “the opinions expressed in his declaration (BOSE-1003) are
`founded on a POSA skill level that he, in fact, did not use, thereby rendering
`his opinions valueless.” Id. According to Patent Owner, during cross-
`examination, Dr. Williams “recant[ed] . . . his original POSA skill level” that
`he specified during “his declaration” (Ex. 1003), and “instead applied a
`POSA skill level where a POSA ‘is a team of people who have experience in
`
`
`10 Petitioner asserts that Mr. McAlexander “lacks head-phone design
`experience,” but does not argue his testimony should be discounted. See
`Reply 26.
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`wireless networking and people who have experience in headset design.’”
`Id. (quoting Ex. 2046, 30).
`Patent Owner advances two other arguments that hinge on the first
`argument: 1) “because Williams said a POSA is a team [during his cross-
`examination], his opinions are contrary to the law”; and 2) “at bottom, his
`conflicting POSA standards make his testimony unreliable. It is unclear
`what skill level Williams applied for a POSA in his obviousness opinions.”
`PO Resp. 64–65. Patent Owner advances similar arguments in its Sur-reply.
`See Sur-reply 2 (“Simply put, Williams did not perform the analysis that he
`swore to in his original declaration, which undercuts his overall
`credibility.”).
`Dr. Williams relies on the testimony of Dr. Casali (Petitioner’s other
`declarant, see infra § II.B.2), “concerning the relevant headphone design
`features in much the same way that a POSA (i.e., an individual with
`expertise in wireless networking as described above) would have worked
`with an individual with specific experience in headphone design when
`designing a wireless headphone product.” Ex. 1003 ¶ 36. Patent Owner
`agrees that Dr. Williams does not advance that a POSA is a team in his
`original declaration. See PO Resp. 63–65. Rather, Dr. Williams applies the
`concept of a team member having gained the requisite knowledge of
`speakers for small wireless devices through other team members, such as
`Dr. Casali. See Ex. 1003 ¶ 36. In other words, in preparation for this trial,
`Dr. Williams studied the declaration of Dr. Casali, and other evidence,
`including the prior art of record. See id. ¶¶ 15, 36. Patent Owner does not
`dispute that Dr. Williams at least has the requisite level of ordinary skill to
`testify in this proceeding. See PO Resp. 62–65.
`
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`Moreover, Dr. Williams applies the level of ordinary skill as he states
`in his declaration, and this does not conflict with his deposition. See
`Ex. 1003 ¶ 36 (“A POSA would have been capable of understanding and
`applying the teachings of the ’934 patent and the prior art references
`discussed in this declaration.”). Contrary to Patent Owner’s argument,
`Dr. Williams did not indicate on cited page 30 of his deposition that he
`“recant[ed] . . . his original POSA skill level.” See PO Resp. 63 (citing
`Ex. 2046, 30). Rather, he testifies that he “would be one of the members of
`the team of that POSA team.” See Ex. 2046, 30 (emphasis added). During
`his deposition, Dr. Williams confirmed his
`opinion that, as I express in the bottom part of . . . paragraph [35
`of my original declaration], in this case, a POSA would have
`worked on a team with someone knowledgeable with headphone
`form factors. But that does not change the definition of a POSA
`as an individual with wireless networking experience because
`the art to which the purported technical advance of the ’934
`patent principally relates is wireless networking.
`Id. at 35:14–18 (emphasis added); accord Reply 33 (quoting part of the same
`passage (citing Ex. 2046, 35–36)).
`As discussed above (§ II.A), and as Dr. Williams’s testimony shows,
`each member of the team at least would have gained “some knowledge of
`speaker components for small wireless devices” (as Patent Owner proposes)
`by working on that team or otherwise through other experience. As also
`noted, Dr. Williams relies on Dr. Casali’s testimony and the record evidence
`here to gain the required headphone knowledge. See Ex. 1003 ¶ 15 (listing
`the record evidence as materials he “studied and considered,” including
`Dr. Casali’s declaration (Ex. 1005)), ¶¶ 35–37 (equating his reliance on
`Dr. Casali’s declaration as a team member through which Dr. Williams
`testifies he “assumed the perspective of a person having ordinary skill in the
`
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`art” to form his opinion). As also found above, this required knowledge (in
`addition to knowledge of wireless networks), only requires some
`rudimentary knowledge about well-known form factors, given the breadth of
`the claims at issue here. As Dr. Williams testifies, “the art to which the
`purported technical advance of the ’934 patent principally relates is wireless
`networking.” Ex. 2046, 35:19–21.
`Moreover, Mr. McAlexander, Patent Owner’s declarant, similarly
`lacks direct experience in headphone design. And Mr. McAlexander and
`Dr. Williams each worked in cell phone design, which includes small
`speakers. Compare Ex. 1003 ¶ 3 (testifying “I have also designed cellular
`chipsets for operation in cellular phones” and “I have over 40 years of
`professional experience in wireless communications and telecom
`technology”), with Ex. 2047 ¶ 8 (testifying that he “investigated processes
`and designs associated with . . . telephones”). Mr. McAlexander also
`testifies that an artisan of ordinary skill “would be someone working in the
`electrical engineering field and specializing in or knowledgeable of speaker
`components for small wireless devices.” Ex. 2047 ¶ 19. But
`Mr. McAlexander does not testify that this knowledge must be direct
`knowledge, and he does not testify that he worked directly with small
`speakers. Rather, he generally testifies that he “investigated processes and
`designs associated with . . . telephones”: “I have investigated processes and
`designs associated with personal computers, peripheral computers, software,
`and wireless communications systems, including telephones,
`microprocessors, controllers, memories, programmable logic devices, and
`other consumer electronics.” Id. ¶ 8; see also id. ¶¶ 1–7, 9 (testifying “I am
`very familiar with how acoustic speakers operate and the design issues
`associated with sound systems” without mentioning the size of the
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`speakers.). During his deposition, Mr. McAlexander agreed that he “had
`not ever designed a headphone” and that “outside of litigation counseling,”
`he had “not worked on any specific projects that are related to the
`headphone.” Ex. 1146, 7:13–23.
`
`Nevertheless, Mr. McAlexander testifies that “I satisfied this skill
`level circa 2008–2009 (and satisfy it now); and I am familiar with the
`knowledge and skills that a person with this skill level would have possessed
`circa 2008–2009 through my work and interaction with colleagues in the
`field.” Ex. 2047 ¶ 19.
`Patent Owner also faults Dr. Williams’s credibility because
`Dr. “Williams knew of the infringement allegations, yet he ignored the plain
`evidence that he reviewed due to the strawman that Patent Owner had not
`‘asserted’ commercial success.” PO Resp. 61. Contrary to Patent Owner’s
`arguments, it is not clear how or why not addressing something not asserted
`before institution diminishes a declarant’s testimony, even if there is
`“potential commercial success” possibly raised during trial. See id. at 62.
`Patent Owner also argues that “Williams’s testimony on the topic
`should be disregarded because he admitted that he neither understands the
`relevant law (KOSS-2062, 38) nor how the commercially successful product
`functions.” Sur-reply 24. This argument over-generalizes the testimony of
`Dr. Williams. At page 36–38 of his deposition, Dr. Williams testifies as to
`not understanding “the law” pertaining to “commercial success” in relation
`to Patent Owner’s hypothetical questions centered on a district court
`complaint (Ex. 1055) filed by Patent Owner in which Patent Owner’s
`deposition questions “assume” that Bose’s patent claims read on Bose’s
`QC35 earbuds. See Ex. 2062, 37:24–38:3 (“Does there have to be complete
`correspondence between a claim and one of the Bose patents that Bose
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`claims reads on the QC35 for the commercial success of the QC35 to be
`evidence of a nonobviousness of the Bose patent claim?”). It is not clear
`how such a hypothetical question about “complete correspondenc