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.: 50095-0019IP2
`Issue Date:
`November 26, 2019
`
`Appl. Serial No.: 16/528,701
`
`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
`
`
`PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT
`NO. 10,491,982 PURSUANT TO 35 U.S.C. §§311–319, 37 C.F.R. §42
`
`

`

`
`
`Attorney Docket No. 50095-0019IP1
`IPR of U.S. Patent No. 10,491,982
`
`TABLE OF CONTENTS
`
`I. 
`II. 
`
`INTRODUCTION ........................................................................................... 1 
`REQUIREMENTS FOR IPR UNDER 37 C.F.R. §42.104 ............................. 1 
`A. 
`Standing ................................................................................................. 1 
`B. 
`Relief Requested: Timing and Grounds ................................................ 1 
`III.  THE BOARD SHOULD NOT DENY INSTITUTION UNDER 35 U.S.C. §
`325(d) ............................................................................................................... 5 
`A.  Apple’s Grounds And Obviousness Rationales Were Not Previously
`Considered By The Office ..................................................................... 6 
`B. 
`The Office Erred In Granting The ’982 Patent ..................................... 7 
`IV.  PTAB DISCRETION UNDER 35 U.S.C. § 314(a) SHOULD NOT
`PRECLUDE INSTITUTION ........................................................................ 10 
`A. 
`The General Plastic Factors Favor Institution .................................... 10 
`B. 
`The Fintiv Factors Also Favor Institution ........................................... 12 
`1. 
`Stay ............................................................................................ 12 
`2. 
`Uncertain District Court Schedule ............................................ 12 
`3. 
`Early Stage Of Parallel Proceedings ......................................... 14 
`4. 
`The Petition Raises Unique Issues ............................................ 16 
`5. 
`Apple’s Involvement In The Texas Litigation .......................... 17 
`6. 
`Other Considerations ................................................................ 17 
`SUMMARY OF THE ’982 PATENT ........................................................... 17 
`A.  Overview ............................................................................................. 17 
`B. 
`Prosecution History ............................................................................. 19 
`C. 
`Claim Construction ............................................................................. 20 
`
`V. 
`
`i
`
`

`

`B. 
`
`Attorney Docket No. 50095-0019IP2
`IPR of U.S. Patent No. 10,491,982
`VI.  THE CHALLENGED CLAIMS ARE UNPATENTABLE .......................... 21 
`A. 
`Claims 6, 8, 10, And 11 Are Obvious Over Rosener, Hankey, Haupt,
`and Seshadri [GROUND 1(A)], and Over Rosener, Hankey, Dyer,
`Haupt, And Seshadri [GROUND 1(A)(i)] .......................................... 21 
`1. 
`Overview Of References ........................................................... 21 
`2. 
`Combinations Of References .................................................... 31 
`3. 
`Overview of Claims 1, 4, And 5 ............................................... 45 
`4. 
`Claims 6 and 11 ......................................................................... 69 
`5. 
`Claims 8 And 10 ....................................................................... 76 
`Claims 7, 9, 12, And 13 Are Obvious Over Rosener, Hankey, Haupt,
`Seshadri And Price [GROUND 1(B)], And Over Rosener, Hankey,
`Dyer, Haupt, Seshadri And Price [GROUND 1(B)(i)] ....................... 79 
`1. 
`Price ........................................................................................... 79 
`2. 
`Combinations With Price .......................................................... 80 
`3. 
`Claims 7, 9, 12, And 13 ............................................................ 83 
`VII.  CONCLUSION .............................................................................................. 85 
`VIII.  FEES .............................................................................................................. 85 
`IX.  MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ......................... 85 
`A. 
`Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) .......................... 85 
`B. 
`Related Matters Under 37 C.F.R. § 42.8(b)(2) ................................... 85 
`C. 
`Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ............... 85 
`D. 
`Service Information ............................................................................. 86 
`
`
`
`
`
`
`
`ii
`
`
`

`

`Attorney Docket No. 50095-0019IP2
`IPR of U.S. Patent No. 10,491,982
`
`EXHIBITS
`
`APPLE-1001
`
`U.S. Patent No. 10,491,982 to Koss, et al. (“the ’982 patent”)
`
`APPLE-1002
`
`APPLE-1003
`
`Excerpts from the Prosecution History of the ’982 patent (“the
`Prosecution History”)
`Declaration of Jeremy R. Cooperstock
`
`APPLE-1004
`
`U.S. Pat. App. Pub. No. 2008/0076489 (“Rosener”)
`
`APPLE-1005
`
`U.S. Pat. App. Pub. No. 2008/0166001 (“Hankey”)
`
`APPLE-1006
`
`U.S. Pat. No. 8,031,900 (“Dyer”)
`
`APPLE-1007
`
`RESERVED
`
`APPLE-1008
`
`U.S. Pat. App. No. 60,879,177 (“’177 Provisional”)
`
`APPLE-1009
`
`U.S. Pat. App. Pub. No. 2006/0026304 (“Price”)
`
`APPLE-1010
`APPLE-1011
`
`RESERVED
`RESERVED
`
`APPLE-1012
`
`RESERVED
`
`APPLE-1013
`
`RESERVED
`
`APPLE-1014
`
`Plaintiff KOSS Corporations’ Preliminary Infringement Con-
`tentions, KOSS Corporation v. Apple Inc., 6:20-cv-00665
`(WDTX)
`
`APPLE-1015
`
`Example Order Governing Proceedings - Patent Case
`
`APPLE-1016
`
`Agreed [Proposed] Scheduling Order, KOSS Corporation v. Ap-
`ple Inc., 6:20-cv-00665 (WDTX)
`
`iii
`
`
`

`

`APPLE-1017
`
`APPLE-1018
`
`Attorney Docket No. 50095-0019IP2
`IPR of U.S. Patent No. 10,491,982
`Katie Buehler, “Texas Patent Trials Halted Due to COVID-19
`Spike,” Law360, available at https://www.law360.com/ip/arti-
`cles/1330855/texas-patent-trials-halted-due-to-covid-19-spike.
`
`Scott McKeown, District Court Trial Dates Tend to Slip After
`PTAB Discretionary Denials, available at https://www.pa-
`tentspostgrant.com/district-court-trial-dates-tend-to-slip-after-
`ptab-discretionary-denials/ (Jul. 24, 2020)
`
`APPLE-1019
`
`Agreed Amended Scheduling Order, Fintiv, Inc. v. Apple, Inc.,
`Civil Action No. A-19-CV-1238 (WDTX)
`
`APPLE-1020
`
`Certified Translation of WO 2006/042749 (“Haupt”)
`
`APPLE-1021
`
`
`APPLE-1022
`
`
`APPLE-1023
`
`Letter from Doug Winnard to Darlene F. Ghavimi re Condi-
`tional Stipulation dated March 22, 2021
`
`U.S. Pat. App. Pub. No. 2006/0166716 to Seshadri et al.
`(“Seshadri”)
`
`U.S. Pat. App. No. 2005/0037818 to Seshadri et al. (“Seshadri-
`818”)
`
`iv
`
`
`

`

`
`I.
`
`Attorney Docket No. 50095-0019IP1
`IPR of U.S. Patent No. 10,491,982
`
`INTRODUCTION
`On 1/4/2021, Apple, Inc. (“Apple”) petitioned for Inter Partes Review
`
`(“IPR”) of claims 1-5 and 14-20 of U.S. Patent No. 10,491,982 (“the ’982 patent”)
`
`in IPR2021-00381. Apple now petitions for IPR of claims 6-13 (“the Challenged
`
`Claims”) of the ’982 patent, which were not previously challenged in IPR2021-
`
`00381 and are therefore unique to this petition.
`
`II. REQUIREMENTS FOR IPR UNDER 37 C.F.R. §42.104
`A.
`Standing
`Apple certifies that the ’982 patent is available for IPR. This petition is be-
`
`ing filed within one year of service of a complaint against Apple. Apple is not
`
`barred or estopped from requesting this review.
`
`B. Relief Requested: Timing and Grounds
`As noted in Section IV.A below, Apple seeks to avoid any prejudice to Koss
`
`arising from the serial nature of this petition’s filing relative to the prior filing
`
`(IPR2021-00381) against the ’982 patent. To that end, if the Board institutes trial
`
`for both petitions, Apple requests the following two scheduling adjustments rela-
`
`tive to the model scheduling order: (1) in the present proceeding, the deadline for
`
`Apple’s reply (DUE DATE 2) is shortened by 6 weeks; and (2) in the related pro-
`
`ceeding (IPR2021-00381), the deadline for Koss’s sur-reply (DUE DATE 3) is
`
`lengthened to fall on the same day as the deadline for Apple’s reply (DUE DATE
`
`2) in the present proceeding. In this manner, Apple will not be in possession of
`
`1
`
`

`

`Attorney Docket No. 50095-0019IP2
`IPR of U.S. Patent No. 10,491,982
`Koss’s sur-reply in IPR2021-00381 prior to filing Apple’s reply in the present pro-
`
`ceeding.
`
`Apple requests an IPR of the Challenged Claims, which is supported by tes-
`
`timony from Dr. Cooperstock. APPLE-1003, ¶16.
`
`Ground
`
`Claims
`
`Basis (§103)
`
`1A/1A(i)1
`
`6, 8, 10, 11
`
`1B/1B(i)
`
`7, 9, 12, 13
`
`Rosener, Hankey, Haupt, and Seshadri
`[1A] / Rosener, Hankey, Dyer, Haupt,
`and Seshadri [1A(i)]
`Rosener, Hankey, Haupt, Seshadri, and
`Price [1B] / Rosener, Hankey, Dyer,
`Haupt, Seshadri, and Price [1B(i)]
`
`The ’982 patent was filed 8/1/2019 and claims priority to 4/7/2008 (“Critical
`
`Date”). Apple does not concede that the Challenged Claims are entitled to the
`
`claimed priority but applies prior art before that date:
`
`Reference Date(s)
`
`Rosener
`
`8/7/2006
`
`Hankey
`
`1/6/2007
`
`Basis
`
`§102(a)
`
`§102(e)
`
`
`1 Claim 6 depends from claim 1 through intervening claims 4 and 5. Claim 11 de-
`
`pends from claim 1. Though claims 1, 4, and 5 are not challenged in Grounds
`
`1A/1A(i), a discussion of their features is included for completeness.
`
`2
`
`
`

`

`Reference Date(s)
`
`Dyer
`
`2/27/2006
`
`Haupt
`
`4/27/2006
`
`Seshadri
`
`7/27/2006
`
`Seshadri-818 2/17/2005
`
`Price
`
`5/4/2005
`
`Attorney Docket No. 50095-0019IP2
`IPR of U.S. Patent No. 10,491,982
`Basis
`
`§102(e)
`
`§102(b)
`
`§102(b)
`
`§102(b)
`
`§102(a)
`
`Hankey was filed on 6/28/2007 and claims priority to U.S. Provisional Pat.
`
`No. 60/879,177 (“’177 Provisional”) (APPLE-1008), filed on 1/6/2007. As ex-
`
`plained by Dr. Cooperstock, “Hankey is entitled to the benefit of its provisional fil-
`
`ing date, i.e., the January 6, 2007 filing date” since the ’177 Provisional disclosure
`
`“provides sufficient detail that would have led a POSITA to conclude that the in-
`
`ventor of the ’177 Provisional had possession of the invention claimed in
`
`Hankey…” APPLE-1003, ¶43.
`
`Hankey Claim 1
`
`Supporting Description
`
`An electronic device comprising:
`
`‘177 provisional, FIGs. 1A,
`
`
`
` a housing;
`
`40A, [0089], [0205]
`
`‘177 provisional, FIGs. 1A,
`
`3
`
`
`

`

`Hankey Claim 1
`
`Attorney Docket No. 50095-0019IP2
`IPR of U.S. Patent No. 10,491,982
`Supporting Description
`
`
`
`40A, [0089]-[0090], [0205]
`
`a connector assembly coupled to the hous-
`
`‘177 provisional, FIGs. 40A,
`
`ing, the connector assembly comprising a
`
`[0089]-[0090], [0205]-
`
`microphone port;
`
`[0207]
`
`a microphone mounted within the housing;
`
`‘177 provisional, [0208]
`
`and
`
`a channel that fluidically couples the micro-
`
`’177 provisional, [0209]-
`
`phone to the microphone port.
`
`[0212], FIGs. 41-44
`
`The prior art combinations and obviousness rationales advanced herein were
`
`not before the Office during examination. Hankey, Dyer, and Price were not made
`
`available to the Office during examination. See APPLE-1002. While a related
`
`Haupt reference2 is cited on the face of the ’982 patent, Haupt was never substan-
`
`tively addressed by the examiner. See APPLE-1002. Similarly, a related Seshadri
`
`
`2 U.S. Pat. App. No. 2008/0194209, which is cited on the face of ’982 patent,
`
`claims priority to WO2006/042749, a certified translation of which is applied in
`
`this petition.
`
`4
`
`
`

`

`Attorney Docket No. 50095-0019IP2
`IPR of U.S. Patent No. 10,491,982
`reference3 is cited on the face, but Seshadri was also never substantively addressed
`
`by the examiner. Finally, while the examiner previously evaluated Rosener, addi-
`
`tional evidence and facts presented herein warrant reconsideration in this proceed-
`
`ing. See §VI.
`
`III. THE BOARD SHOULD NOT DENY INSTITUTION UNDER 35
`U.S.C. § 325(d)
`Under 35 U.S.C. § 325(d), the Board uses a two-part framework in deter-
`
`mining whether to exercise its discretion to institute. Advanced Bionics, LLC v.
`
`MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6, 8 (PTAB
`
`Feb. 13, 2020) (precedential) (“Advanced Bionics”). First, the Board considers
`
`“whether the same or substantially the same art previously was presented to the Of-
`
`fice or whether the same or substantially the same arguments previously were pre-
`
`sented to the Office.” Id. When either condition of the first part of the framework
`
`is satisfied, the Board next considers “whether the petitioner has demonstrated that
`
`the Office erred in a manner material to the patentability of challenged claims.” Id.
`
`In applying this framework, the Board evaluates six factors (“the Becton fac-
`
`tors”). Id., 8-10 (citing Becton, Dickinson & Co. v. B. Braun Melsungen AG,
`
`IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first
`
`paragraph) (“Becton”); see Trial Practice Guide July 2019 Update, 28-31, Fed.
`
`
`3 U.S. Pat. App. No. 2005/0136839 is cited on the face of the ’982 patent.
`
`5
`
`
`

`

`Attorney Docket No. 50095-0019IP2
`IPR of U.S. Patent No. 10,491,982
`Reg. 33,925 (July 16, 2019). These factors are known as the Becton factors (a)
`
`through (f). Advanced Bionics at 9, n.10 (citing Becton). As discussed below, the
`
`Becton factors favor institution.
`
`A. Apple’s Grounds And Obviousness Rationales Were Not Previ-
`ously Considered By The Office
`Becton factors (a), (b), and (d) support institution because this Petition does
`
`not present substantially the same prior art combinations or arguments that were
`
`before the Office during examination of the ’982 patent. Though Rosener was ad-
`
`dressed by the examiner in a Notice of Allowance, the secondary references com-
`
`bined with Rosener in this petition were not. APPLE-1002, 13-14. Indeed,
`
`Hankey, Dyer, and Price were not made available to the Office during examina-
`
`tion. APPLE-1001. Additionally, while related Haupt and Seshadri references
`
`were among the references cited on the face of the ’982 patent, they were never ad-
`
`dressed by the examiner. See APPLE-1002. The Office did not consider any of
`
`the prior art combinations of (i) Rosener-Hankey-Haupt-Seshadri or (ii) Rosener-
`
`Hankey-Haupt-Seshadri-Price that are being advanced in this Petition, and there-
`
`fore, these combinations are not cumulative of the prior art evaluated during exam-
`
`ination. Moreover, as discussed in the following section, the examiner erred in
`
`evaluating Rosener and, as a result, there are material differences between the ap-
`
`plication of Rosener by the examiner and the application of Rosener in combina-
`
`tion with Hankey, Dyer, Haupt, Seshadri and/or Price in this Petition.
`6
`
`
`

`

`Attorney Docket No. 50095-0019IP2
`IPR of U.S. Patent No. 10,491,982
`Koss thus cannot argue, and the Board should not find, that “the same or
`
`substantially the same art previously was presented to the Office” or that “the same
`
`or substantially the same arguments previously were presented to the Office,” as
`
`required under part 1 of the Advanced Bionics framework. The Advanced Bionics
`
`analysis should therefore end with part 1, and the Board should not exercise its dis-
`
`cretion to deny institution.
`
`B.
`The Office Erred In Granting The ’982 Patent
`The Board need not reach part 2 of the Advanced Bionics framework since
`
`part 1 is not satisfied. Even if the Board evaluates part 2, Becton factors (c), (e),
`
`and (f) support institution.
`
`As to Becton factor (c), the ’982 patent issued without any substantive prior
`
`art rejections. The Office was not made aware of Hankey, Dyer, or Price during
`
`examination. Though related Haupt and Seshadri references were listed in Koss’s
`
`Information Disclosure Statement, they were not applied by the examiner or dis-
`
`cussed by Koss. See Navistar, Inc. v. Fatigue Fracture Tech., LLC, IPR2018-
`
`00853, Paper 13 at 17 (PTAB Sept. 12, 2018).
`
`As for Rosener, the extent to which the examiner evaluated this reference
`
`was a single statement in the Notice of Allowance that certain claim limitations
`
`were not disclosed or rendered obvious over its disclosure. APPLE-1002, 14. This
`
`statement was not discussed further and the claims were allowed without further
`
`7
`
`
`

`

`Attorney Docket No. 50095-0019IP2
`IPR of U.S. Patent No. 10,491,982
`comment. Id., 8-16. There was, therefore, no substantive discussion of Rosener
`
`during prosecution.
`
`Even if the examiner’s cursory statement regarding Rosener is considered
`
`substantive discussion, Becton factor (e) still favors institution since the examiner
`
`erred in evaluating Rosener. Specifically, the examiner overlooked disclosure in
`
`Rosener that explicitly and unambiguously taught or rendered obvious the claim
`
`features identified by the examiner as being absent from it. For example, the ex-
`
`aminer indicated that Rosener did not disclose or suggest the feature of “at least
`
`one acoustic transducer connected to the processor circuit,” as recited in claim 1 of
`
`the ’982 patent. APPLE-1002, 14. Yet Rosener discloses that each of earphones
`
`502, 504 includes a “housing with a speaker” that can include “a magnetic element
`
`attached to a voice-coil-actuated diaphragm, an electrostatically charged dia-
`
`phragm, a balanced armature driver, or a combination of one or more of these
`
`transducer elements.” APPLE-1004, [0030]. Contrary to the examiner’s state-
`
`ment, a person of ordinary skill in the art (“POSITA”)4 would have understood a
`
`speaker and components disclosed in Rosener to correspond to the recited “at least
`
`one acoustic transducers.” Rosener also discloses that the speaker is connected to
`
`a processor circuit that performs “signal processing functions, to ensure that the
`
`
`4 See APPLE-1003, ¶¶30-31 (defining a POSITA).
`
`8
`
`
`

`

`Attorney Docket No. 50095-0019IP2
`IPR of U.S. Patent No. 10,491,982
`processed data is in a form suitable to drive the [speaker].” Id.; APPLE-1004,
`
`[0049]. Thus, contrary to the examiner’s statement, a POSITA would have under-
`
`stood that each of the earphones 502, 504 disclosed in Rosener has a speaker (i.e.,
`
`acoustic transducer) connected to a processor circuit of the earphone. APPLE-
`
`1003, ¶¶105-108; see §VI.A.2, infra (discussing [1.c.i.D]).
`
`As another example, the examiner indicated that Rosener does not teach or
`
`suggest a “microphone connected to the processor circuit and for picking up utter-
`
`ances of a user of the headphones.” APPLE-1002, 14. However, Rosener dis-
`
`closes that “either or both the first and second data sinks of various embodiments”
`
`(e.g., earphones 502, 504) include “a microphone.” APPLE-1004, [0056] (em-
`
`phasis added). Also, Rosener’s FIG. 9 shows that the microphone (shown as data
`
`source 922) of an earphone is connected to the signal conditioning circuit 920 of
`
`the earphone’s processor. APPLE-1004, [0050]; see id., [0056] (referring to mi-
`
`crophone as a “data source”), and §VI.A.3, infra (discussing [1.c.iii]). The exam-
`
`iner also overlooked other portions of Rosener that are discussed in greater detail
`
`below in sections advancing prior art mapping based on Rosener. See, e.g.,
`
`§VI.A.3, infra (discussing [1.c.iv] and [1.d]).
`
`Given the inconsistences between the examiner’s evaluation of Rosener and
`
`its disclosure, Becton factor (f) supports institution because additional evidence
`
`and facts presented herein warrant reconsideration of Rosener by the Board in this
`
`9
`
`
`

`

`Attorney Docket No. 50095-0019IP2
`IPR of U.S. Patent No. 10,491,982
`proceeding. The Board therefore should not deny institution under 35 U.S.C. §
`
`325(d).
`
`IV. PTAB DISCRETION UNDER 35 U.S.C. § 314(a) SHOULD NOT PRE-
`CLUDE INSTITUTION
`A. The General Plastic Factors Favor Institution
`Taking account of the factors articulated in the Board’s General Plastic de-
`
`cision, exercise of discretion to deny institution of this petition would be inappro-
`
`priate.
`
`This petition advances additional references (Seshadri, Seshadri-818), in
`
`conjunction with the prior art from IPR2021-00381, with the intent of demonstrat-
`
`ing the unpatentability of dependent claims 6-13 (i.e., the “signal strength claims”),
`
`which were not covered by the grounds in IPR2021-00381. Indeed, the primary
`
`difference between this petition and that one is with respect to this petition’s articu-
`
`lation of a ground against claims 6 and 11 (see §VI.A.4, infra), which is then refer-
`
`enced throughout the remainder of the petition with respect to other identical signal
`
`strength claims. This is a concise addition to deal with 8 claims of the 20 claims
`
`alleged by Koss to have been infringed by Apple. As offered in the concurrently
`
`filed Ranking Paper, Koss’s unwillingness to narrow the claims asserted within the
`
`contentions leaves a quantum of claims–20–that could not reasonably be addressed
`
`in a single petition in any event. APPLE-1014. Responsive to Koss’s unbounded
`
`infringement allegations, Apple has judiciously worked to identify and frame for
`
`10
`
`
`

`

`Attorney Docket No. 50095-0019IP2
`IPR of U.S. Patent No. 10,491,982
`consideration the prior art offered to demonstrate unpatentability. Apple filed a
`
`first petition (IPR2021-00381) as quickly as possible to highlight prior art that ad-
`
`dressed claims other than those newly addressed by the instant petition, and
`
`worked to furnish this petition as shortly thereafter with grounds that moderate any
`
`increase in burden by introducing a narrow class of new issues for consideration of
`
`the signal strength claims. Indeed, any burden that is borne out by this second peti-
`
`tion is clearly the direct result of Koss’s conduct in the co-pending litigation.
`
`As to timing, Apple filed its first petition within four months of receiving
`
`Koss’ extensive contentions. Apple has received neither Koss’s preliminary re-
`
`sponse, nor the Board’s decision to institute in IPR2021-00381. And, as noted
`
`above, this petition challenges the signal strength claims that were not challenged
`
`in the IPR2021-00381 petition.
`
`Lastly, in an effort to avoid any prejudice to Koss, Apple is willing to sub-
`
`scribe to two scheduling adjustments in IPR2021-00381 and in the present pro-
`
`ceeding relative to the model scheduling order. See §II.B. In this way, Koss’s sur-
`
`reply in IPR2021-00381 and Apple’s reply in the present proceeding are due on the
`
`same day, eliminating any possibility of Apple gaining any advantage due to the
`
`timing differences between the two proceedings.
`
`11
`
`
`

`

`Attorney Docket No. 50095-0019IP2
`IPR of U.S. Patent No. 10,491,982
`B.
`The Fintiv Factors Also Favor Institution
`The Apple Inc. v. Fintiv, Inc. factors, and recent Board decisions applying
`
`them, weigh against discretionary denial here. IPR2020-00019, Paper 11, 5-6 (Mar.
`
`20, 2020) (precedential).5
`
`1.
`Stay
`If this petition is instituted, a stay of the related litigation pending in the
`
`Western District of Texas (“Texas Litigation”) would be appropriate. Crossroads
`
`Sys. v. DOT Hill Sys. Corp., 2015 U.S. Dist. LEXIS 77526 (WDTX Jun. 16, 2015)
`
`(granting stay). Regardless, the Board has consistently declined to speculate as to
`
`whether a district court will grant a stay in any given case. IPR2019-01393, Paper
`
`24, 7 (Informative); see also IPR2020-00158, Paper 16, 7.
`
`Overall, this factor does not support discretionary denial.
`
`2.
`Uncertain District Court Schedule
`Here, the earliest projected trial date in the Texas Litigation is April 18,
`
`2022, approximately five and a half months before the expected final written deci-
`
`sion (FWD). “This factor looks at the proximity of the trial date to the date of
`
`
`5 Apart from Apple’s showing that the Fintiv factors favor institution, the Fintiv
`
`framework should not be followed because it is legally invalid. Specifically, the
`
`framework (1) exceeds the Director’s authority, (2) is arbitrary and capricious, (3)
`
`and was adopted without notice-and-comment rulemaking.
`
`12
`
`
`

`

`Attorney Docket No. 50095-0019IP2
`IPR of U.S. Patent No. 10,491,982
`[FWD] to assess the weight to be accorded a trial date set earlier than the expected
`
`[FWD] date.” IPR2020-00944, Paper 20, 61. As recognized by the Board, where
`
`“there is at least some persuasive evidence that delays are possible,” trial dates up-
`
`ward of six months before the FWD are insufficient to deny institution. Id. Here,
`
`the law and facts support the same conclusion.
`
`As the Federal Circuit explained in In re Apple, “a court’s general ability to
`
`set a fast-paced schedule is not particularly relevant,” especially where “the forum
`
`[i.e., WDTX] itself has not historically resolved cases so quickly.” In re Apple
`
`Inc., No 20-135, slip op. at 16 (Fed. Cir. Nov. 9, 2020); see IPR2020-01280, Paper
`
`17, 13-16. Indeed, when assessing a case before Judge Albright in the WDTX, the
`
`Federal Circuit found error in a particular judge’s reliance on his own scheduled
`
`trial date. In re Apple Inc., No 20-135, slip op. at 15. Similarly, adhering to the
`
`Federal Circuit’s guidance, it would be error for the Board to rely upon the current
`
`schedule. And, if the Board instead projects the trial date using the WDTX’s aver-
`
`age time to trial—which itself leaves the Board to error-prone speculation as to the
`
`timing of this particular trial—that speculated trial date is (at best) concurrent with
`
`the timing of the final written decision. Id.
`
`Notably, here, concerns over speculation transcend the legal error noted by
`
`the Federal Circuit, as averages are inherently unreliable in resolving trial dates.
`
`This is evident from statistics concerning strikingly frequent trial slippage in
`
`13
`
`
`

`

`Attorney Docket No. 50095-0019IP2
`IPR of U.S. Patent No. 10,491,982
`WDTX. “70% of [WDTX] trial dates initially relied upon by the PTAB to deny
`
`petitions have slid,” as of July 2020. APPLE-1018. Such delays even impacted
`
`the seminal NHK and Fintiv cases, where, after the Board denied institution,
`
`associated trial dates were delayed to after the expected FWD dates by the courts—
`
`the same WDTX court in Fintiv as is handling the Texas Litigation. See IPR2018-
`
`01680, Paper 22 at 17, n. 6 (PTAB Apr. 3, 2019) (“In the district court case
`
`running parallel to NHK Spring, the court ultimately moved the trial date back six
`
`months, illustrating the uncertainty associated with litigation schedules.”); APPLE-
`
`1019, 2 (resetting Fintiv trial to October 4, 2021, nearly five months after the FWD
`
`would have been due in the associated IPR).
`
`And the current trial date is particularly uncertain since Apple has moved to
`
`transfer the case to another venue, and thus, should not be given any significant
`
`weight.
`
`In contrast, despite the pandemic, the Board has adhered to the one-year
`
`statutory deadline for FWDs prescribed by 35 U.S.C. § 316(a)(11). IPR2019-
`
`01393, Paper 24, 9. Overall, this factor does not support discretionary denial. See
`
`id., 8-10.
`
`3.
`Early Stage Of Parallel Proceedings
`By any objective standard, Apple filed these petitions at an early stage of the
`
`14
`
`
`

`

`Attorney Docket No. 50095-0019IP2
`IPR of U.S. Patent No. 10,491,982
`litigation, a fact that “has weighed against exercising the authority to deny institu-
`
`tion under NHK.” IPR2020-00156, Paper 10, 11-12 (June 15, 2020). Here, Apple
`
`filed this petition less than eight months after being served with the complaint,
`
`four-and-a-half months after Koss served infringement contentions,6 and just over
`
`two months after Apple served preliminary invalidity contentions. APPLE-1014,
`
`APPLE-1016, 2-3; see IPR2020-00019, Paper 11, 11–12 & n.22. No substantive
`
`orders have been issued by the court in the underlying litigation. Indeed, as of the
`
`filing of this Petition, the court has not yet heard or ruled on Apple’s initial motion
`
`to strike Koss’s complaint.
`
`It is entirely appropriate that Apple is filing its petition after receiving in-
`
`fringement contentions—particularly because Koss asserted infringement of all
`
`claims of the ’982 Patent. IPR2018-01498, Paper 13, 8-9 (finding that waiting “to
`
`better understand the asserted claims, the bases for the infringement allegations …
`
`and to identify relevant prior art” should not weigh in favor of discretionary de-
`
`nial).
`
`Moreover, this petition was filed well before the one-year statutory bar date.
`
`
`6 Koss’s contentions assert 175 claims across five patents—including all 20 claims
`
`of the ’982 Patent—a significant burden Apple has had to contend with in develop-
`
`ing this petition. APPLE-1014.
`
`15
`
`
`

`

`Attorney Docket No. 50095-0019IP2
`IPR of U.S. Patent No. 10,491,982
`IPR2018-01680, Paper 22, 18 (a petition filed two months before bar date is “well
`
`within the timeframe allowed by statute, weighing heavily in [petitioner’s] favor”).
`
`Overall, this factor weighs against discretionary denial.
`
`4.
`The Petition Raises Unique Issues
`The Texas Litigation is still early in its development and, the district court
`
`requires “significant[] narrowing [of] the number of claims asserted” for trial.
`
`APPLE-1015, 10. As a result, the number of claims adjudicated at the district
`
`court will likely be significantly less than the number of claims addressed here.
`
`There will be a significant likelihood of these unaddressed claims being reasserted
`
`against future products, counseling against discretionary denial. IPR2020-00156,
`
`Paper 10, 17.
`
`Nonetheless, to eliminate any doubt as to the absence of meaningful overlap
`
`between the proceedings, Apple has stipulated that, unless the Board denies or later
`
`vacates institution of this petition, Apple will not seek resolution in the trial of in-
`
`validity based on any ground “that utilizes, as a primary reference, U.S. Pat. App.
`
`Pub. No. 2008/0076489 (‘Rosener’).” APPLE-1020.
`
`Overall, the lack of overlap between issues in an instituted IPR and the
`
`related district court litigation weighs against discretionary denial. See, e.g.,
`
`IPR2020-01113, Paper 12, 15-19 (Jan. 22, 2021).
`
`16
`
`
`

`

`Attorney Docket No. 50095-0019IP2
`IPR of U.S. Patent No. 10,491,982
`5.
`Apple’s Involvement In The Texas Litigation
`With respect to Factor 5, the Fintiv decision “says nothing about situations
`
`in which the petitioner is the same as, or is related to, the district court defendant.”
`
`IPR2020-00122, Paper 15, *10 (PTAB May 15, 2020) (APJ Crumbley, dissenting).
`
`In cases such as the one at hand, where the parties are the same, the
`factor is neutral. To hold otherwise—that the factor weighs in favor
`of denial if the parties are the same—would, in effect, tip the scales
`against a petitioner merely for being a defendant in the district court.
`
`Id.
`
`6. Other Considerations
`As described in Section II.B, the Board has not previously considered the
`
`grounds set forth in this petition or substantively similar grounds.
`
`These patentability challenges are strong, which favors institution.
`
`IPR2020-00156, Paper 10, 20-21. For these reasons, this factor also weighs
`
`against discretionary denial.
`
`In summary, the Fintiv factors weigh against discretionary denial.
`
`V.
`
`SUMMARY OF THE ’982 PATENT
`A. Overview
`The ’982 patent relates to wireless earphones 10 that receive streaming audio
`
`data over a network. APPLE-1001, 2:7-25. Figure 3 (below) shows components
`
`of earphone 10, including transceiver circuit 100 and peripheral components, such
`
`17
`
`
`

`

`Attorney Docket No. 50095-0019IP2
`IPR of U.S. Patent No. 10,491,982
`as power source 102, microphone 104, one or more acoustic transducers 106, and
`
`antenna 108. Id., 6:34-59; APPLE-1003, ¶¶17-18.
`
`The earphones 10 can have form factors shown in Figures 1A and 1B. AP-
`
`PLE-1001, 3:20-46. Earphone 10 shown in these figures includes body 12 with ear
`
`canal portion 14 insertab