IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`In re Patent of: Michael J. Koss, et al.
`U.S. Patent No.:
`10,491,982 Attorney Docket No.: 50095-0019IP1/0019IP2
`Issue Date:
`November 26, 2019
`
`Appl. Serial No.: 15/528,701
`
`Filing Date:
`August 1, 2019
`
`Title:
`SYSTEM WITH WIRELESS EARPHONES
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
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`PETITIONER’S NOTICE RANKING PETITIONS
`AND EXPLAINING MATERIAL DIFFERENCES BETWEEN
`PETITIONS AGAINST U.S. PATENT NO. 10,206,025
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`
`
`In re Patent of: Michael J. Koss, et al.
`U.S. Patent No.:
`10,491,982 Attorney Docket No.: 50095-0019IP1/0019IP2
`Issue Date:
`November 26, 2019
`
`Appl. Serial No.: 15/528,701
`
`Filing Date:
`August 1, 2019
`
`Title:
`SYSTEM WITH WIRELESS EARPHONES
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`PETITIONER’S NOTICE RANKING PETITIONS
`AND EXPLAINING MATERIAL DIFFERENCES BETWEEN
`PETITIONS AGAINST U.S. PATENT NO. 10,206,025
`
`
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`
`
`Attorney Docket No. 50095-0019IP1/0019IP2
`IPR of U.S. Patent No. 10,491,982
`Apple now has two concurrent petitions challenging the validity of all claims
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`of U.S. Patent No. 10,491,982 (“the ’982 patent”): IPR2021-00381 filed January 4
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`and IPR2021-00686 filed March 22 (herewith). As explained below, each petition
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`challenges a different set of the 20 claims Koss asserted against Apple in the co-
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`pending litigation. APPLE-1014. Pursuant to the Board’s July 2019 Trial Practice
`
`Guide Update, Apple submits this paper to “identify: (1) a ranking of the Petitions
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`in the order in which it wishes the Board to consider the merits…, and (2) a suc-
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`cinct explanation of the differences between the Petitions, why the issues ad-
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`dressed by the differences are material, and why the Board should exercise its dis-
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`cretion to institute additional petitions.”
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`I.
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`Ordering of Petitions
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`Apple believes that both petitions are meritorious and justified, especially
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`because (as explained further below), both petitions are necessary to address the 56
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`claims that Koss asserted against Apple in the co-pending district court litigation.
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`Nonetheless, to the extent required, Apple requests that the Board consider the pe-
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`titions in the following order:
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`Rank
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`PTAB Case No.
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`1
`
`IPR2021-00381
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`Challenged
`Claims
`1-5, 14-20
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`(First Petition)
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`1
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`Attorney Docket No. 50095-0019IP1/0019IP2
`IPR of U.S. Patent No. 10,491,982
`Challenged
`Claims
`6-13
`
`PTAB Case No.
`
`IPR2021-00686
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`Rank
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`2
`
`(Second Petition)
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`II. Material Differences that Compel Permitting Multiple Petitions
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`The Board’s “Trial Practice Guide” notes that “the Board recognizes that
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`there may be circumstances in which more than one petition may be necessary, in-
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`cluding, for example, when the patent owner has asserted a large number of
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`claims.” Consolidated TPG at 59 (Nov. 2019). This case presents a prototypical
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`case where “patent owner has asserted a large number of claims.” As explained in
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`both petitions, Koss has taken no steps to narrow the dispute, and has instead as-
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`serted all 20 claims of the ’982 patent against Apple in the co-pending litigation.
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`Each of the petitions of the first and second petitions cover different claims.
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`Specifically, the first petition challenges claims 1-5 and 14-20, which is all claims
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`except those dependent claims that recite that “the headphones transition to play
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`digital audio content received wirelessly from the second digital audio source via a
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`second wireless communication link based on, at least in part, a signal strength for
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`the second wireless communication link” (i.e., the “signal strength claims”). The
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`second petition relies upon the disclosure of Seshadri, in addition to the prior art
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`relied upon in IPR2021-00381, with the intent of demonstrating the unpatentability
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`2
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`Attorney Docket No. 50095-0019IP1/0019IP2
`IPR of U.S. Patent No. 10,491,982
`of the signal strength claims (i.e., claims 6-13). Given the dependencies of the sig-
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`nal strength claims, however, the primary difference between the first and second
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`petitions is found in sections of the second petition that address the signal strength
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`claims. This is a concise addition to deal with the 8 signal strength claims, the in-
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`clusion of which was entirely precipitated by Koss’s allegation that Apple infringes
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`all 20 claims of the ’982 patent. APPLE-1014. Apple has judiciously moderated
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`any increase in burden from the two petitions, such that any increase in burden is a
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`direct result of Koss’s conduct in the co-pending litigation.
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`Lastly, in an effort to avoid any prejudice to Koss, Apple is willing to sub-
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`scribe to two scheduling adjustments in IPR2021-00381 and IPR2021-00686 rela-
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`tive to the model scheduling order: (1) in IPR2021-00686, the deadline for Peti-
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`tioner’s reply (DUE DATE 2) is shortened by 6 weeks; and (2) in IPR2021-00381,
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`the deadline for Patent Owner’s sur-reply (DUE DATE 3) is lengthened to fall on
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`the same day as the deadline for Petitioner’s reply (DUE DATE 2) in the present
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`proceeding. In this way, Koss’s sur-reply in IPR2021-00305 and Petitioner’s reply
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`in IPR2021-00686 are due on the same day, eliminating any possibility of Apple
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`gaining any advantage due to the timing differences between the two proceedings.
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`For each of these reasons, Apple respectfully requests institution of both of
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`its concurrently filed IPR petitions against the ’982 patent.
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`3
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`
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`Attorney Docket No. 50095-0019IP1/0019IP2
`IPR of U.S. Patent No. 10,491,982
`Respectfully submitted,
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`3/22/21
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`/W. Karl Renner/
`
`W. Karl Renner, Reg. No. 41,265
`Roberto Devoto, Reg. No. 55,108
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
`
`Attorneys for Petitioner
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`Dated
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`Attorney Docket No. 50095-0019IP1/0019IP2
`IPR of U.S. Patent No. 10,491,982
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4)(i) et seq. and 42.105(b), the undersigned
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`certifies that on March 22, 2021, a complete and entire copy of this “Petitioner’s
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`Notice Ranking Petitions and Explaining Material Differences Between Petitions
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`Against U.S. Patent No. 10,491,982” was provided via FedEx, to the Patent Owner
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`by serving the correspondence address of record as follows:
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`K&L Gates – Pittsburgh
`210 Sixth Avenue
`Pittsburgh, PA 15222
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`/Edward G. Faeth/
`Edward Faeth
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(202) 626-6420
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