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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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`APPLE INC.,
`Petitioner,
`
`v.
`
`KOSS CORPORATION,
`Patent Owner.
`_____________________
`
`CASE: IPR2021-00693
`U.S. PATENT NO. 10,469,934
`_____________________
`
`
`PATENT OWNER’S MOTION FOR ADDITIONAL DISCOVERY
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`IPR2021-00693
`Motion for Additional Discovery
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`B.
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`C.
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`TABLE OF CONTENTS
`
`I.
`STATEMENT OF THE PRECISE RELIEF REQUESTED .......................... 1
`STATEMENT OF MATERIAL FACTS ........................................................ 3
`II.
`III. APPLICABLE LEGAL PRINCIPLES ........................................................... 6
`IV. THE REQUESTED ADDITIONAL DISCOVERY SATISFIES THE
`“INTERESTS OF JUSTICE” STANDARDS ................................................. 8
`A.
`The Requested Discovery is Based on More than a Possibility and
`Mere Allegation ..................................................................................... 8
`The Requested Discovery Does Not Seek Petitioner’s Litigation
`Positions or Their Underlying Basis ................................................... 11
`Patent Owner Cannot Generate Equivalent Information by Other
`Means .................................................................................................. 11
`The Discovery Requests are Easily Understandable ........................... 12
`The Discovery Requests are Narrowly Tailored and Not
`Burdensome ......................................................................................... 12
`CONCLUSION .............................................................................................. 13
`
`D.
`E.
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`V.
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`i
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`IPR2021-00693
`Motion for Additional Discovery
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`TABLE OF AUTHORITIES
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` Page(s)
`
`Cases
`Demaco Corp. v. F. Von Langsdorff Licensing Ltd.,
`851 F.2d 1387 (Fed. Cir. 1998) ...................................................................... 7, 10
`Ecolochem, Inc. v. S. Cal. Edison Co.,
`227 F.3d 1361 (Fed. Cir. 2000) ............................................................................ 7
`Fox Factory, Inc. v. SRAM, LLC,
`994 F.3d 1366 (Fed. Cir. 2019) ............................................................................ 8
`Garmin Int'l, Inc. v. Cuozzo Speed Techs. LLC,
`IPR2012-00001, Paper 26 (PTAB Mar. 5, 2013) ........................................passim
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) .................................................................................................. 6
`In re Huang,
`100 F.3d 135 (Fed. Cir. 1996) .............................................................................. 7
`Kingston Tech. Co., Inc. v. CATR Co., Ltd.,
`IPR2015-00559, Paper 18, 2-7 (PTAB June 10, 2015) ........................................ 2
`Merck & Co., Inc. v. Teva Pharm. USA, Inc.,
`395 F.3d 1364 (Fed. Cir. 2005) ...................................................................... 7, 11
`Microsoft Corp. v. Proxyconn, Inc.,
`IPR2012-00026 and IPR2013-00109, Paper 32 (PTAB Mar. 8,
`2013) ..................................................................................................................... 8
`Ormco Corp. v. Align Tech., Inc.,
`463 F.3d 1299 (Fed. Cir. 2006) ............................................................................ 7
`Pentec, Inc. v. Graphic Controls Corp.,
`776 F.2d 309 (Fed. Cir. 1985) .............................................................................. 7
`
`ii
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`IPR2021-00693
`Motion for Additional Discovery
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`SightSound Techs., LLC v. Apple Inc.,
`809 F.3d 1307 (Fed. Cir. 2015) ............................................................................ 7
`Varian Med. Sys., Inc. v. William Beaumont Hospital,
`IPR2016-00162, Paper 69, 30-36 (PTAB May 4, 2017) ...................................... 2
`Statutes
`35 U.S.C. § 103 .......................................................................................................... 6
`35 U.S.C. § 316(a)(5) ................................................................................................. 6
`Other Authorities
`37 C.F.R. § 42.51(b)(2) .......................................................................................... 1, 6
`37 C.F.R. § 42.52(a)(2) .............................................................................................. 1
`
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`iii
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`IPR2021-00693
`Motion for Additional Discovery
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`EXHIBIT LISTING
`
`Description
`Exhibit
`KOSS-2001 Docket Report, Koss Corp. v. Apple Inc., Case No. 6:20-cv-00665-
`ADA (W.D. Tex.) (as of July 14, 2021)
`
`KOSS-2002
`
`Joint Claim Construction Statement, Koss Corp. v. Apple Inc., Case
`No. 6:20-cv-00665-ADA, Dkt. 68 (W.D. Tex. April 14, 2021)
`
`KOSS-2003 Claim Construction Order, Koss Corp. v. Apple Inc., Case No.
`6:20-cv-00665-ADA, Dkt. 83 (W.D. Tex. June 2, 2021)
`
`KOSS-2004
`
`Joint Motion to Amend Agreed Scheduling Order, Koss Corp. v.
`Apple Inc., Case No. 6:20-cv-00665-ADA, Dkt. 85 (W.D. Tex.
`June 15, 2021)
`
`KOSS-2005 Order Denying Defendant’s Motion to Transfer, Koss Corp. v.
`Apple Inc., Case No. 6:20-cv-00665-ADA, Dkt. 76 (W.D. Tex.
`April 22, 2021)
`
`KOSS-2006 Docket Report, Apple Inc. v. Koss Corp., Case No. 4:20-cv-
`05504-JST (N.D. Cal.) (as of July 15, 2021)
`
`KOSS-2007 Order Granting Motion to Transfer, Apple Inc. v. Koss Corp.,
`Case No. 4:20-cv-05504-JST, Dkt. 72 (N.D. Cal May 12, 2021)
`
`KOSS-2008 Joint Motion to Consolidate Cases, Koss Corp. v. Apple Inc., Case
`No. 6:20-cv-00665-ADA, Dkt. 84 (W.D. Tex. June 8, 2021)
`
`KOSS-2009 R. Davis, “Albright Says He’ll Very Rarely Put Cases on Hold for
`PTAB,” Law360, May 11, 2021
`(www.law360.com/articles/1381597/print?section=ip) (accessed
`July 9, 2021)
`
`KOSS-2010 Order Denying Motion to Stay, Kerr Machine Co. v. Vulcan
`Indus. Holdings, LLC et al., Case No. 6-20-cv-00200-ADA (W.D.
`Tex. Apr. 7, 2021)
`
`iv
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`IPR2021-00693
`Motion for Additional Discovery
`
`Description
`Exhibit
`KOSS-2011 Order Governing Proceedings - Patent Case, Judge Albright
`(W.D. Tex. Feb. 23, 2021)
`
`KOSS-2012 U.S. Pub. No. 2008/0194209 A1 to Haupt et al. (“Haupt-209”)
`
`KOSS-2013 Defendant Apple Inc.’s Invalidity Contentions, Koss Corp. v.
`Apple Inc., Case No. 6:20-cv-0066-ADA, Jan. 15, 2021 (W.D.
`Tex.)
`
`KOSS-2014 Petition, Apple Inc. v. Koss Corp., IPR2021-00255, November 25,
`2020
`
`KOSS-2015 Petition, Apple Inc. v. Koss Corp., IPR2021-00600, March 7, 2021
`
`KOSS-2016 S. Carlson et al., “Tallying Repetitive Inter Partes Review
`Challenges,”
`Law360,
`Sept.
`14,
`2018
`(www.law360.com/articles/1083158/tallying-repetitive-inter-
`partes-review-challenges) (accessed July 15, 2021)
`
`KOSS-2017 Exhibit A2 to Defendant Apple Inc.’s Invalidity Contentions, Koss
`Corp. v. Apple Inc., Case No. 6:20-cv-0066-ADA, Jan. 15, 2021
`(W.D. Tex.)
`
`KOSS-2018 Order, In re Apple Inc., Case No. 21-147, D.I. 25 (Fed. Cir. Aug.
`4, 2021)
`
`KOSS-2019 Apple Inc., Form 10-K, for fiscal year ended September 26, 2020
`
`KOSS-2020
`
`“Apple AirPods are now available,” Apple Newsroom, Dec. 13,
`2016
`(www.apple.com/newsroom/2016/12/apple-airpods-are-
`now-available/) (last accessed Sept. 8, 2021)
`
`v
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`
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`Exhibit
`KOSS-2021
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`KOSS-2022
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`IPR2021-00693
`Motion for Additional Discovery
`
`Description
`“AirPods, the world’s most popular wireless headphones, are
`getting even better,” Apple Newsroom, Mar. 20, 2019
`(www.apple.com/newsroom/2019/03/airpods-the-worlds-most-
`popular-wireless-headphones-are-getting-even-better/)
`(last
`accessed Sept. 8, 2021)
`
`“Apple reveals new AirPods Pro, available October 30,” Apple
`Newsroom,
`Mar.
`20,
`2019
`(www.apple.com/newsroom/2019/10/apple-reveals-new-airpods-
`pro-available-october-30/) (last accessed Sept. 8, 2021)
`
`KOSS-2023 Patent Owner’s Request for Additional Discovery
`
`KOSS-2024 D. Curry, “Apple Statistics (2021),” Business of Apps, updated
`August 16, 2021 (www.businessofapps.com/data/apple-statistics/)
`(last accessed August 18, 2021)
`
`KOSS-2025
`
`J. Cipriani, “Your AirPods just got a quiet update,” CNET,
`February 1, 2017 (www.cnet.com/tech/mobile/how-to-update-the-
`firmware-of-apples-airpods/) (last accessed September 8, 2021)
`
`KOSS-2026
`
`KOSS-2027
`
`J. Clover, “Apple Releases New Firmware Update for AirPods,”
`MacRumors, May 24, 2017
`(www.macrumors.com/2017/05/24/airpods-firmware-update/)
`(last accessed September 8, 2021)
`
`J. Clover, “Apple Releases New Firmware for AirPods 2 and
`AirPods Pro,” MacRumors, December 16, 2019
`(www.macrumors.com/2019/12/16/apple-releases-new-airpods-
`firmware/) (last accessed September 8, 2021)
`
`KOSS-2028 C. Miller, “Apple releases updated firmware version for AirPods
`and AirPods Pro,” 9to5Mac, April 28, 2021
`(9to5mac.com/2021/04/28/apple-releases-updated-firmware-
`version-for-airpods-and-airpods-pro/) (last accessed September 8,
`2021)
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`vi
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`IPR2021-00693
`Motion for Additional Discovery
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`Exhibit
`KOSS-2029
`
`Description
`J. Clover, “Apple Updates AirPods 2 and AirPods Pro Firmware
`to Version 3A283,” MacRumors, September 14, 2020
`(www.macrumors.com/2020/09/14/apple-updates-airpods-
`firmware-3a283/) (last accessed September 15, 2021)
`
`KOSS-2030 M. Potuck, “AirPods dominate wireless headphone market as
`global growth hits 90% for 2020,” 9to5Mac, Jan. 27, 2021
`(https://9to5mac.com/2021/01/27/airpods-dominate-wireless-
`headphone-market/) (last accessed Sept. 15, 2021)
`
`KOSS-2031 Sept/Oct 2021 Email chain with Board re filing Motion
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`vii
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`IPR2021-00693
`Motion for Additional Discovery
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`Patent Owner, Koss Corporation, submits this Motion for Additional
`
`Discovery under 37 C.F.R. §§ 42.51(b)(2) and 42.52(a)(2). The Board authorized
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`Patent Owner to file this motion on September 9, 2021.1
`
`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`The
`requested discovery
`seeks
`information concerning
`
`secondary
`
`considerations of nonobviousness, namely the commercial success of Petitioner’s
`
`AirPods (1st and 2nd generations) and AirProds Pro true wireless headphones
`
`(collectively “AirPods Products”), which embody the Challenged Claims. APPLE-
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`1014, 525-663. The specific discovery sought is limited to summary level sales from
`
`inception of the AirPods Products, the first of which (AirPods 1st gen.) was released
`
`in December 2016. KOSS-2020. Specifically, Patent Owner seeks only “[s]ales
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`revenue and quantity of units sold, by calendar quarter, for AirPods (1st & 2nd gen)
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`and AirPods Pro since the commercial introduction of those products.” KOSS-2023.
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`The interest of justice favors allowing the requested discovery. Garmin Int'l,
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`1 Patent Owner attempted to file this motion on September 16, 2021 but experienced
`
`problems. On October 6, 2021, the Board authorized Patent Owner to refile the
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`identical motion “with the applicable deadlines as if the motions were filed timely.”
`
`KOSS-2031.
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`- 1 -
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`
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`Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 26 (PTAB Mar. 5, 2013)
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`IPR2021-00693
`Motion for Additional Discovery
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`(precedential). The requested discovery is limited and narrow in scope and seeks
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`specific information that is undeniably relevant and useful to refuting Petitioner’s
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`obviousness challenges. See Kingston Tech. Co., Inc. v. CATR Co., Ltd., IPR2015-
`
`00559, Paper 18, 2-7 (PTAB June 10, 2015) (granting additional discovery limited
`
`to narrow categories of financial information concerning one product). Indeed, the
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`Board has found that evidence of commercial success may be highly probative of
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`nonobviousness. See Varian Med. Sys., Inc. v. William Beaumont Hospital,
`
`IPR2016-00162, Paper 69, 30-36 (PTAB May 4, 2017) (“Notwithstanding what the
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`teachings of the prior art would have suggested to one of ordinary skill in the art at
`
`the time of the invention, the totality of the evidence submitted, including objective
`
`evidence of nonobviousness, may lead to a conclusion that the challenged claims
`
`would not have been obvious to one of ordinary skill in the art.”). While the
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`discovery Patent Owner seeks is uniquely in Petitioner’s possession, publicly
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`available information provides more than a threshold showing that Petitioner’s
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`AirPods Products have been commercially successful. Public information likewise
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`demonstrates that the AirPods Products embody the challenged claims.
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`Accordingly, Patent Owner’s motion for additional discovery should be
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`granted. Patent Owner is willing to enter into an appropriate protective order to the
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`- 2 -
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`
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`extent necessary to protect Petitioner’s confidential information.
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`IPR2021-00693
`Motion for Additional Discovery
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`II.
`
`STATEMENT OF MATERIAL FACTS
`1.
`On July 22, 2020, Patent Owner filed a civil action in the U.S. District
`
`Court for the Western District of Texas, Case No. 6:20-cv-00665-ADA, against
`
`Petitioner alleging infringement of, among other things, U.S. Patent 10,469,934
`
`(“’934 Patent”). KOSS-2001, 1-6. Patent Owner is asserting claims 1-8, 11-13, 15-
`
`22, 24, 26-31, 36-41, 44-46 and 58-62 of the ’934 Patent in the litigation. KOSS-
`
`2002, 2. Details about other, related matters are provided in Patent Owner’s
`
`Preliminary Response (Paper 8) at 6-7.
`
`2.
`
`Petitioner filed its petition for inter partes review (IPR) on March 23,
`
`2021, challenging claims 1-6, 8, 10-20, 22-29, 31-36, 38-42, 44, 58-62. Pet. at 1.
`
`The Board has not ruled on institution yet.
`
`3.
`
`Claims 1-6, 8, 11-13, 15-20, 22, 24, 26-29, 31, 36, 38-41, 44 and 58-62
`
`asserted in the litigation are challenged in this IPR. Of these, claims 1 and 58 are
`
`independent claims. APPLE-1001, cols. 18-25.
`
`4.
`
`Petitioner released its AirPods (1st gen.) true wireless headphones in
`
`December 2016. KOSS-2020. The initial sales price was $159 USD. Id., 3.
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`Petitioner released the 2nd generation AirPods in March 2019 and the AirPods Pro
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`in October 2019. KOSS-2021; KOSS-2022. The 2nd-generation AirPods are
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`
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`different from the 1st-generation in that the 2nd generation includes a different
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`IPR2021-00693
`Motion for Additional Discovery
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`Apple-designed chip (H1 chip) that “delivers performance efficiencies, faster
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`connect times, more talk time and the convenience of hands-free ‘Hey Siri.’” KOSS-
`
`2021, 2. The AirPods Pro add “Active Noise Cancellation
`
`and
`
`superior,
`
`immersive sound in an all-new lightweight, in-ear design.” KOSS-2022, 2.
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`5.
`
`Public sources show that Petitioner sold: 15 million AirPods in 2017;
`
`35 million AirPods in 2018; 60 million AirPods in 2019; and 114 million AirPods
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`in 2020. KOSS-2024, 15.
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`6.
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` Petitioner does not release sales information for the AirPods Products.
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`Instead, its SEC filings include sales figures for a broader category of products
`
`(“Wearables, Home and Accessories”). KOSS-2019, 24.
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`7.
`
`The Challenged Claims have a priority date of at least April 7, 2009.
`
`APPLE-1001, 2 (filing date of PCT/US2009/039754). Thus, the AirPods were
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`released more than seven years after the latest possible priority date of the ’934
`
`Patent.
`
`8.
`
`Claim 1 is directed to a headphone assembly that comprises two (“first”
`
`and “second”) earphones. The headphone assembly also comprises a wireless
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`communication circuit “for receiving and transmitting wireless signals to and from
`
`the headphone assembly.” The headphone assembly is “configured to play … digital
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`- 4 -
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`
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`audio content transmitted by [a] mobile, digital audio player via [an] ad hoc wireless
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`IPR2021-00693
`Motion for Additional Discovery
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`communication link[]….” The headphone assembly also includes a processor that
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`is “configured to, upon activation of a user-control of the headphone assembly,
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`initiate transmission of a request to a remote, network-connected server that is in
`
`wireless communication with the mobile, digital audio player ….” The headphone
`
`assembly is also “for receiving firmware upgrades transmitted from the remote,
`
`network-connected server.” APPLE-1001, 18:1-32.
`
`9.
`
`Both the AirPods (APPLE-1014, 597-607) and the AirPods Pro (id.,
`
`525-535) possess all of the elements of claim 1 of the ’934 Patent. APPLE-1014,
`
`525-663. In fact, the record evidence shows that the AirPods possess all the elements
`
`of claims 1-9, 32-41, 47, 49, 54-55 and 58-62 (id., 597-663); and that the AirPods
`
`Pros possess all the elements of claims 1-9, 32-41, 47, 49 and 52-62. Id., 525-606.
`
`The claims common to both the AirPods and the AirPods Pro, that are challenged in
`
`this IPR, are claims 1-6, 8, 32-36, 38-41 and 58-62 of the ’934 Patent.
`
`10.
`
`If the software of a device is deficient or otherwise corrupted, the ability
`
`of the device to operate reliably is also deficient or otherwise corrupted. APPLE-
`
`1010, ¶[0004]. Indeed, the firmware and application software for electronic devices
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`“often contain[s] software bugs” and new versions of the firmware/software “are
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`periodically released to fix the bugs ….” APPLE-1009, 1:32-40.
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`IPR2021-00693
`Motion for Additional Discovery
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`11. Since their release, Petitioner has released several firmware updates for
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`the AirPods Products, including several shortly after the release. KOSS-2025 to
`
`KOSS-2029. The firmware updates “likely introduce[e] bug fixes and performance
`
`improvements to the wireless earbuds.” KOSS-2026, 1.
`
`III. APPLICABLE LEGAL PRINCIPLES
`Additional discovery must be “necessary in the interest of justice.” 35 U.S.C.
`
`§ 316(a)(5); 37 C.F.R. § 42.51(b)(2). In determining whether additional discovery
`
`in an inter partes review proceeding is necessary in the interest of justice, the Board
`
`considers the following factors: (1) the request is based on more than a mere
`
`possibility of finding something useful; (2) the request does not seek the litigation
`
`positions of the other party; (3) the information is not reasonably available through
`
`other means; (4) the request is easily understandable; and (5) the request is not overly
`
`burdensome to answer (collectively, “Garmin Factors”). Garmin, Paper 26 at 6-7.
`
`Patent Owner’s request for additional discovery seeks evidence for proving
`
`commercial success of the Challenged Claims, which is relevant for assessing
`
`obviousness of the Challenged Claims under 35 U.S.C. § 103. Graham v. John
`
`Deere Co., 383 U.S. 1, 17-18 (1966). “Commercial success is relevant because the
`
`law presumes an idea would successfully have been brought to market sooner, in
`
`response to market forces, had the idea been obvious to persons skilled in the art.”
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`- 6 -
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`
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`Merck & Co., Inc. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1376 (Fed. Cir. 2005).
`
`IPR2021-00693
`Motion for Additional Discovery
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`Evidence of objective indicia of nonobviousness, such as commercial success, must
`
`be considered if present. Pentec, Inc. v. Graphic Controls Corp., 776 F.2d 309, 315
`
`(Fed. Cir. 1985).
`
`A patentee can show commercial success of a claimed invention by showing
`
`significant sales (including by the accused infringer) in a relevant market. See
`
`Ecolochem, Inc. v. S. Cal. Edison Co., 227 F.3d 1361, 1377 (Fed. Cir. 2000).
`
`Evidence of commercial success is significant where there is a nexus between the
`
`claimed invention and the commercial success. Ormco Corp. v. Align Tech., Inc.,
`
`463 F.3d 1299, 1311-12 (Fed. Cir. 2006). “In order to establish a proper nexus, the
`
`patent owner must offer proof that the sales were a direct result of the unique
`
`characteristics of the claimed invention -- as opposed to other economic and
`
`commercial factors unrelated to the quality of the patented subject matter.” In re
`
`Huang, 100 F.3d 135, 140 (Fed. Cir. 1996). Nevertheless, Patent Owner is entitled
`
`to a rebuttable presumption of nexus upon a showing that the commercially
`
`successful product “is the invention disclosed and claimed.” Demaco Corp. v. F.
`
`Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1998); see also
`
`SightSound Techs., LLC v. Apple Inc., 809 F.3d 1307, 1319 (Fed. Cir. 2015) (“If a
`
`product both embodies the claimed features and is coextensive with the claims at
`
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`- 7 -
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`
`
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`issue,” a nexus between the evidence of commercial success and the claimed
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`IPR2021-00693
`Motion for Additional Discovery
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`invention is presumed). Even where a presumption of a nexus is not appropriate,
`
`patent owner “is still afforded an opportunity to prove nexus by showing that the
`
`evidence of secondary considerations is the direct result of the unique characteristics
`
`of the claimed invention.” Fox Factory, Inc. v. SRAM, LLC, 994 F.3d 1366, 1373-
`
`74 (Fed. Cir. 2019).
`
`The interest of justice standard for granting additional discovery requires a
`
`showing of relevance by the party seeking the additional discovery before the request
`
`is granted. Microsoft Corp. v. Proxyconn, Inc., IPR2012-00026 and IPR2013-
`
`00109, Paper 32, 5 (PTAB Mar. 8, 2013). Conclusive evidence of nexus, however,
`
`is not required to grant a motion for additional discovery. Instead, “some showing
`
`of relevance is necessary.” Id.
`
`IV. THE REQUESTED ADDITIONAL DISCOVERY SATISFIES THE
`“INTERESTS OF JUSTICE” STANDARDS
`A. The Requested Discovery is Based on More than a Possibility and
`Mere Allegation
`The first Garmin factor considers whether there exists more than a “mere
`
`possibility” or a “mere allegation that something useful [to the proceeding] will be
`
`found.” Garmin, Paper 26 at 6. Here, publically available evidence shows that
`
`Petitioner has exploited the Challenged Claims through sales of its AirPods
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`- 8 -
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`
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`Products. First, publically available information shows that AirPods Products have
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`IPR2021-00693
`Motion for Additional Discovery
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`experienced significant sales. Estimated sales for the AirPods alone from 2017-2020
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`are 224 million units. KOSS-2024, 15. At $159 USD apiece, that amounts to more
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`that $35 billion in sales in four years. This estimate is exceedingly great because the
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`AirPod Products dominate the market for “true wireless” stereo headphones. KOSS-
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`2030, 1. The market shipped over 300 million “true wireless” stereo headsets in
`
`2020, with AirPod Products constituting almost 50% of those shipments. Id., 2.
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`Second, there is a clear nexus between the AirPods Products and the
`
`Challenged Claims. APPLE-1014, 525-663. Indeed, the AirPods Products
`
`essentially are the headphone assembly of claim 1 of the ’934 Patent because the
`
`AirPods Products:
`
` comprise two earphones (e.g., the left and right AirPod);
`
` comprise a wireless communication circuit (e.g., a Bluetooth circuit)
`
`“for receiving and transmitting wireless signal to and from the
`
`headphone assembly”;
`
` are “configured to play … digital audio content transmitted by” a paired
`
`mobile, digital audio player (e.g., iPhone, MacBook) via a wireless
`
`communications link (e.g., a Bluetooth connection);
`
` include a processor that is “configured to, upon activation of a user-
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`IPR2021-00693
`Motion for Additional Discovery
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`control of the headphone assembly, initiate transmission of a request
`
`[e.g., a double-tap on the earphone for 1st generation or a “Hey Siri”
`
`request for the 2nd generation and AirPods Pro] to a remote, network-
`
`connected server that is in wireless communication with the mobile,
`
`digital audio player” (e.g., iPhone, MacBook); and
`
` are also “for receiving firmware upgrades transmitted from the remote,
`
`network-connected server.” KOSS-2020 to KOSS-2022; APPLE-
`
`1014, 549-602.
`
`Thus, there is a presumptive nexus between the AirPods Products and the
`
`Challenged Claims (e.g., claim 1). See Demaco, 851 F.2d at 1392.
`
`Third, the AirPods Products need to practice claim 1 in order to operate
`
`reliably. Firmware updates are needed to keep electronic devices like the AirPods
`
`Products operating reliably by fixing bugs. APPLE-1009, 1:32-40. Petitioner has
`
`released several firmware updates for the AirPods Products, including shortly after
`
`the products’ release. KOSS-2025 to KOSS-2029. Without the firmware updates,
`
`the bugs could not be fixed, the products would not operate widely, and,
`
`consequently, the products would not have had significant sales. Petitioner cannot
`
`credibly argue that the AirPods Products’ success would have been the same if the
`
`products did not operate reliably and could not be fixed through firmware update.
`
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`- 10 -
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`IPR2021-00693
`Motion for Additional Discovery
`
`Fourth, the fact that Petitioner could introduce products seven years after the
`
`latest possible priority date for the ’934 Patent and still reap extraordinary revenue
`
`from sales of those products is strong evidence of the nonobvious of the Challenged
`
`Claims in 2009. The “law presumes an idea would successfully have been brought
`
`to market sooner, in response to market forces, had the idea been obvious to persons
`
`skilled in the art.” Merck, 395 F.3d at 1376.
`
`Thus, Patent Owner’s narrowly tailored discovery request is based on more
`
`than a possibility or mere allegation. The requested information is also material to
`
`assessing the obviousness of the Challenged Claims.
`
`B.
`
`The Requested Discovery Does Not Seek Petitioner’s Litigation
`Positions or Their Underlying Basis
`Garmin factor 2 provides that requesting an opposing party’s “litigation
`
`positions and the underlying basis for those positions is not necessary in the interest
`
`of justice.” Garmin, Paper 26 at 13. Patent Owner’s discovery requests narrowly
`
`seek only sales information and, hence, do not seek Petitioner’s underlying litigation
`
`positions or bases for them.
`
`C.
`
`Patent Owner Cannot Generate Equivalent Information by Other
`Means
`Garmin factor 3 relates to whether the requested documents are obtainable by
`
`Patent Owner through other means. Patent Owner cannot otherwise obtain this
`
`information because it is exclusively within the control of Petitioner. KOSS-2019,
`
`- 11 -
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`
`
`
`24. Patent Owner cannot generate or otherwise obtain Petitioner’s confidential sales
`
`IPR2021-00693
`Motion for Additional Discovery
`
`information.
`
`D. The Discovery Requests are Easily Understandable
`Garmin factor 4 relates to whether the requested discovery is easily
`
`understandable.
`
` Here,
`
`the requested discovery’s
`
`instructions are easily
`
`understandable, and the requests are clearly limited to sale information for a limited
`
`number of specifically identified products (namely, AirPods and AirPod Pros) for a
`
`limited, specified time period (namely, since release of the products, the first of
`
`which was in December 2016).
`
`To the extent the Board deems the instructions not easily understandable, it
`
`may modify or direct Patent Owner to modify them accordingly.
`
`E.
`
`The Discovery Requests are Narrowly Tailored and Not
`Burdensome
`Garmin factor 5 relates to the degree of burden the requests place on
`
`Petitioner. Here, the requested discovery is limited to one request, which is for the
`
`sales data for three related products (AirPods 1st and 2nd generations, and AirPods
`
`Pro), for a limited, specified time period (namely, since release of the products, the
`
`first of which was in December 2016). The request is “sensible and responsibly
`
`tailored according to a genuine need” (see Garmin, Paper 26 at 14-16) because the
`
`significant sales of these products alone will demonstrate the commercial success of
`
`
`- 12 -
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`
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`the Challenged Claims. It is narrowly tailored because it does not seek other types
`
`IPR2021-00693
`Motion for Additional Discovery
`
`of evidence pertinent to secondary considerations for obviousness, such as
`
`Petitioner’s marketing materials and positive feedback that Petitioner has received
`
`about the AirPods Products.
`
`Petitioner’s compliance with the requested discovery should not require
`
`significant expenditure of resources or place a significant burden on meeting
`
`deadlines in this proceeding. Patent Owner expects that Petitioner maintains the
`
`requested information in Petitioner’s normal course of business. Nor will
`
`Petitioner’s compliance with the requests affect the trial schedule. This motion is
`
`made prior to the institution decision. To the extent the Board deems the discovery
`
`burdensome, it may modify or direct Patent Owner to modify them accordingly.
`
`V. CONCLUSION
`For the foregoing reasons, Patent Owner respectfully requests that the Board
`
`grant Patent Owner’s requested additional discovery contained in Ex. 2023 and
`
`require Petitioner to produce the responsive information within fourteen (14) days
`
`of its order.
`
`
`Dated: October 7, 2021
`
`
`
`
`
`
`Respectfully submitted,
`
`By:
`
`
`
`
`/Mark G. Knedeisen/
`Mark G. Knedeisen (Reg. No. 42,747)
`K&L Gates Center, 210 Sixth Avenue
`
`
`- 13 -
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`
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`IPR2021-00693
`Motion for Additional Discovery
`
`Pittsburgh, Pennsylvania 15222
`Tel.: (412) 355-6342
`mark.knedeisen@klgates.com
`
`Counsel for Patent Owner
`
`
`
`
`
`
`
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`- 14 -
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`
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`IPR2021-00693
`Motion for Additional Discovery
`
`CERTIFICATION OF SERVICE
`
`I hereby certify that on October 7, 2021, I caused a true and correct copy of
`
`the foregoing to be served on the following counsel for Petitioner by electronic mail
`
`to the following email address:
`
`W. Karl Renner
`David L. Holt
`Joel A. Henry
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Email: ipr50095-0018ip2@fr.com
`Email: ptabinbound@fr.com
`Email: axf-ptab@fr.com
`Email: holt2@fr.com
`
`By:
`
`
`
`
`
`/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
`
`Counsel for Patent Owner
`
`
`
`
`
`
`
`
`
`
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