`From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Trials <Trials@USPTO.GOV>
`Wednesday, October 06, 2021 12:49 PM
`Knedeisen, Mark G.
`holt2@fr.com; ipr50095-0018ip1@fr.com; ptabinbound@fr.com; AXF-PTAB;
`ipr50095-0018ip1@fr.com; IPR50095-0020IP2; Roberto Devoto; IPR50095-0021IP2; Joel
`Henry; IPR50095-0022IP2@fr.com; IPR50095-0019IP2; Weaver, Michelle L.; Bozzo, Brian
`P.; Murray, Laurén S.; Ghabrial, Ragae
`RE: Apple Inc. v. Koss Corp. IPRs (Case Nos. IPR2021-00592, -00600, -00626, -00679,
`-00693)
`
`Counsel, in IPR2021‐00592, ‐00600, ‐00686, and ‐00693, the panels grant Patent Owner’s requests for
`authorization to refile the motions (identical to the ones that it served on Petitioner) with the parties
`proceeding with the applicable deadlines as if the motions were filed timely. The parties must file this email
`chain authorizing the motions as an exhibit with each motion and reference the email chain in the motion in a
`footnote or otherwise. No teleconference is necessary.
`
`Thank you,
`Eric W. Hawthorne
`Supervisory Paralegal Specialist
`Patent Trial and Appeal Board
`
`From: Knedeisen, Mark G. <Mark.Knedeisen@klgates.com>
`Sent: Tuesday, October 5, 2021 11:15 AM
`To: Trials <Trials@USPTO.GOV>
`Cc: holt2@fr.com; ipr50095‐0018ip1@fr.com; ptabinbound@fr.com; AXF‐PTAB <AXF‐PTAB@fr.com>; ipr50095‐
`0018ip1@fr.com; IPR50095‐0020IP2 <IPR50095‐0020IP2@fr.com>; Roberto Devoto <devoto@fr.com>; IPR50095‐
`0021IP2 <IPR50095‐0021IP2@fr.com>; Joel Henry <jhenry@fr.com>; IPR50095‐0022IP2@fr.com; IPR50095‐0019IP2
`<IPR50095‐0019IP2@fr.com>; Weaver, Michelle L. <Michelle.Weaver@klgates.com>; Bozzo, Brian P.
`<Brian.Bozzo@klgates.com>; Murray, Laurén S. <Lauren.Murray@klgates.com>; Ghabrial, Ragae
`<ragae.ghabrial@klgates.com>
`Subject: RE: Apple Inc. v. Koss Corp. IPRs (Case Nos. IPR2021‐00592, ‐00600, ‐00626, ‐00679, ‐00693)
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before responding, clicking on
`links, or opening attachments.
`
`Honorable Board,
`
`The parties met and conferred in response to your email and report as follows:
`
`‐ Patent Owner intended to, and thought that it did, file the Motions for Additional Discovery for each of
`the IPRs on the following dates:
`o IPR2021‐00592 – September 16, 2021
`o IPR2021‐00600 – September 17, 2021
`o IPR2021‐00626 – September 21, 2021
`
`1
`
`KOSS-2031
`IPR2021-00693
`
`
`
`o
`o
`
`IPR2021‐00686 – September 17, 2021
`IPR2021‐00693 – September 16, 2021
`
`‐ To that end, Patent Owner served, and Petitioner received, services copies of each motion on the date
`that the motion was filed. As such, Petitioner acknowledges that it is not prejudiced by Patent Owner’s
`filing snafu, and Petitioner is prepared to file responses to the motions according to the time set forth
`in 37 CFR 42.25(a)(1).
`
`‐ Patent Owner does not know the reason for the filing problem. Patent Owner filed a sixth motion, in
`IPR2021‐00679 on September 22, using the same procedure as the five listed above, and that motion
`was successfully filed. Patent Owner apologizes for any inconvenience.
`
`Accordingly, Patent Owner respectfully requests authorization to refile the motions (identical to the ones that
`it served on Petitioner) and the parties will proceed with the applicable deadlines as if the motions were filed
`on the dates indicated above. One exception, however, is IPR2021‐00626. That IPR was denied in the
`meantime and Patent Owner does not intend to refile the motion for that IPR.
`
`
`The parties are available for teleconference if necessary today (10/5) from 3‐4:30pET; tomorrow (10/6) from
`3‐5pET; Thursday (10/7) from 12p‐3pET and 4p‐5pET; and Friday (10/8) from 12:30p‐2pET and 2:30‐5pET.
`
`
`Respectfully, Mark Knedeisen
`Counsel for Patent Owner, Koss Corporation
`
`
`
`
`
`Mark Knedeisen
`K&L Gates LLP
`210 Sixth Avenue
`Pittsburgh, PA 15222
`Phone: 412.355.6342
`Fax: 412.355.6501
`mark.knedeisen@klgates.com
`www.klgates.com
`
`
`
`
`From: Trials <Trials@USPTO.GOV>
`Sent: Thursday, September 30, 2021 9:20 AM
`To: Knedeisen, Mark G. <Mark.Knedeisen@klgates.com>; Trials <Trials@USPTO.GOV>
`Cc: holt2@fr.com; ipr50095‐0018ip1@fr.com; ptabinbound@fr.com; AXF‐PTAB <AXF‐PTAB@fr.com>; ipr50095‐
`0018ip1@fr.com; IPR50095‐0020IP2 <IPR50095‐0020IP2@fr.com>; Roberto Devoto <devoto@fr.com>; IPR50095‐
`0021IP2 <IPR50095‐0021IP2@fr.com>; Joel Henry <jhenry@fr.com>; IPR50095‐0022IP2@fr.com; IPR50095‐0019IP2
`<IPR50095‐0019IP2@fr.com>; Weaver, Michelle L. <Michelle.Weaver@klgates.com>; Bozzo, Brian P.
`<Brian.Bozzo@klgates.com>; Murray, Laurén S. <Lauren.Murray@klgates.com>; Ghabrial, Ragae
`<ragae.ghabrial@klgates.com>
`Subject: RE: Apple Inc. v. Koss Corp. IPRs (Case Nos. IPR2021‐00592, ‐00600, ‐00626, ‐00679, ‐00693)
`
`
`Counsel: According to our records, Patent Owner attempted to file Motions for Additional Discovery in IPR2021‐00592, ‐
`600, ‐626, ‐686, and ‐693, but no supporting documentation was submitted in any of these proceedings. The parties are
`directed to meet and confer and report to the Board: 1) whether Motions for Additional Discovery were filed and an
`explanation as to why no supporting documentation was filed; 2) whether Patent Owner served Petitioner with copies of
`
`2
`
`KOSS-2031
`IPR2021-00693
`
`
`
`the Motions for Additional Discovery in each of these proceedings; and 3) if served, whether Petitioner is prepared to
`file responses to the motions according to the time set forth in 37 C.F.R. 42.25(a)(1). After receiving this information,
`the Board will determine whether to provide the parties with additional guidance or whether a teleconference will be
`necessary.
`
`
`Thank you,
`
`
`Maria King
`Deputy Chief Clerk for Trials
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`703‐756‐1288
`
`
`
`
`
`From: Knedeisen, Mark G. <Mark.Knedeisen@klgates.com>
`Sent: Tuesday, September 7, 2021 5:03 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: holt2@fr.com; ipr50095‐0018ip1@fr.com; ptabinbound@fr.com; AXF‐PTAB <AXF‐PTAB@fr.com>; ipr50095‐
`0018ip1@fr.com; IPR50095‐0020IP2 <IPR50095‐0020IP2@fr.com>; Roberto Devoto <devoto@fr.com>; IPR50095‐
`0021IP2 <IPR50095‐0021IP2@fr.com>; Joel Henry <jhenry@fr.com>; IPR50095‐0022IP2@fr.com; IPR50095‐0019IP2
`<IPR50095‐0019IP2@fr.com>; Weaver, Michelle L. <Michelle.Weaver@klgates.com>; Bozzo, Brian P.
`<Brian.Bozzo@klgates.com>; Murray, Laurén S. <Lauren.Murray@klgates.com>; Ghabrial, Ragae
`<ragae.ghabrial@klgates.com>
`Subject: Apple Inc. v. Koss Corp. IPRs (Case Nos. IPR2021‐00592, ‐00600, ‐00626, ‐00679, ‐00693)
`
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before responding, clicking on
`links, or opening attachments.
`
`
`Honorable Board,
`
`
`Patent Owner, Koss Corporation, requests authorization to file a motion for additional discovery under 37 CFR
`42.51(b)(2) in each of the following IPRs where Apple Inc. is Petitioner and Koss Corporation is Patent Owner:
`
`IPR2021‐00592 (for Patent 10,469,934) (instituted Aug. 23, 2021)
`IPR2021‐00600 (for Patent 10,298,451) (instituted Sept. 1, 2021)
`IPR2021‐00626 (for Patent 10,206,025) (no institution decision)
`IPR2021‐00679 (for Patent 10,506,325) (no institution decision)
`IPR2021‐00686 (for Patent 10,491,982) (no institution decision)
`IPR2021‐00693 (for Patent 10,469,934) (no institution decision)
`
`
`Through the additional discovery, Patent Owner seeks sales data for products of Petitioner that Patent Owner
`asserts have experienced commercial success, which is a factor in assessing obviousness, which is an issue in
`each of the IPRs. The products for which Patent Owner seeks sales data vary based on the patent at issue in
`the IPR as follows:
`
`
`Case No.
`IPR2021‐
`00592
`
`Information Sought by Patent Owner Through Additional Discovery
`Sales revenue and quantity of units sold, by calendar quarter, for AirPods (1st & 2nd gen)
`and AirPods Pro since the commercial introduction of those products
`3
`
`KOSS-2031
`IPR2021-00693
`
`
`
`IPR2021‐
`00600
`IPR2021‐
`00626
`IPR2021‐
`00679
`IPR2021‐
`00686
`IPR2021‐
`00693
`
`Sales revenue and quantity of units sold, by calendar quarter, for HomePod and HomePod
`Mini since the commercial introduction of those products
`Sales revenue and quantity of units sold, by calendar quarter, for AirPods (1st & 2nd gen)
`and AirPods Pro since the commercial introduction of those products
`Sales revenue and quantity of units sold, by calendar quarter, for Beats Powerbeats Pro
`since the commercial introduction of those products
`Sales revenue and quantity of units sold, by calendar quarter, for AirPods (1st & 2nd gen)
`and AirPods Pro since the commercial introduction of those products
`Sales revenue and quantity of units sold, by calendar quarter, for AirPods (1st & 2nd gen)
`and AirPods Pro since the commercial introduction of those products
`
`
`
`Patent Owner consulted with Petitioner about the requests. Petitioner does not oppose the requests for
`authorization under the following terms:
`
`
`If authorized, Patent Owner files the motions within 14 days of authorization from the Board;
`
` The time for oppositions and replies would be governed by 37 CFR 42.25(a), and the replies will be
`limited to responsive arguments only, without new evidence;
` Patent Owner will not use any evidence that may eventually be produced under this additional
`discover process in any IPRs where Patent Owner sought similar additional discovery and the Board
`denied the requests (namely IPR2021‐00255, IPR2021‐00305 and IPR2021‐00381); and
` Petitioner will not oppose any of the motions as being premature.
`
`
`
`While Petitioner does not oppose Patent Owner’s requests for authorization under these terms, Petitioner
`intends to oppose the motions for the additional discovery.
`
`
`Counsel for the parties are available for a teleconference with the Board this week at the following
`days/times:
` Thursday, September 9, 12pm to 1pm eastern;
` Friday, September 10, 12:30pm eastern to 1pm eastern, 2:30pm eastern to 3pm eastern, and 4pm to
`5pm eastern; and
` Monday, September 13, 11am eastern to 2pm eastern.
`
`
`
`Respectfully, Mark Knedeisen
`Counsel for Patent Owner, Koss Corporation
`
`
`
`
`
`Mark Knedeisen
`K&L Gates LLP
`210 Sixth Avenue
`Pittsburgh, PA 15222
`Phone: 412.355.6342
`Fax: 412.355.6501
`mark.knedeisen@klgates.com
`www.klgates.com
`
`
`
`This electronic message contains information from the law firm of K&L Gates LLP. The contents may be privileged and confidential and are intended for
`the use of the intended addressee(s) only. If you are not an intended addressee, note that any disclosure, copying, distribution, or use of the contents of
`this message is prohibited. If you have received this e-mail in error, please contact me at Mark.Knedeisen@klgates.com.-4
`
`4
`
`KOSS-2031
`IPR2021-00693
`
`
`
`
`
`This electronic message contains information from the law firm of K&L Gates LLP. The contents may be privileged and confidential and are intended for
`the use of the intended addressee(s) only. If you are not an intended addressee, note that any disclosure, copying, distribution, or use of the contents of
`this message is prohibited. If you have received this e-mail in error, please contact me at Mark.Knedeisen@klgates.com.-4
`
`5
`
`KOSS-2031
`IPR2021-00693
`
`