Trials@uspto.gov
`571-272-7822
`
`Paper 11
`Entered: Oct. 13, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE, INC.,
`Petitioner,
`v.
`KOSS CORP.,
`Patent Owner.
`
`IPR2021-00693
`Patent 10,469,934 B2
`
`
`Before KARL D. EASTHOM, PATRICK R. SCANLON, and
`DAVID C. McKONE, Administrative Patent Judges.
`
`Opinion for the Board by Administrative Patent Judges SCANLON and
`McKONE, per curiam.
`
`Opinion dissenting filed by Administrative Patent Judge EASTHOM.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
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`

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`IPR2021-00693
`Patent 10,469,934 B2
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`
`INTRODUCTION
`I.
`Apple, Inc. (“Petitioner”) filed a Petition requesting inter partes
`review of claims 1–6, 8, 10–20, 22–29, 31–36, 38–42, 44, and 58–62 ( of
`U.S. Patent No. 10,469,934 B2 (Ex. 1001, “the ’934 patent”). Paper 2
`(“Pet.”). Koss Corp. (“Patent Owner”) filed a Preliminary Response.
`Paper 8 (“Prelim. Resp.”).
`We have jurisdiction under 35 U.S.C. § 6. Upon considering the
`preliminary record, for reasons discussed below, we decline to institute
`inter partes review.
`
`BACKGROUND
`II.
`A. Real Parties in Interest
`Petitioner states that it is the real party-in-interest. Pet. 76. Patent
`Owner states that it is the real party in interest. Paper 4 (“Mandatory Notice
`by Patent Owner”), 1; see also Paper 6 (update).
`B. Related Matters
`Both parties list the related lawsuit alleging infringement of the ’934
`patent, Koss Corp. v. Apple Inc., Case No. 6:20-cv-00665 (W.D. Tex.)
`(“District Court” or “District Court Lawsuit”). Pet. 76; Paper 4, 1. Patent
`Owner lists other lawsuits involving the ’934 patent, United States
`applications to which the ’934 patent claims priority, and pending inter
`partes reviews as related matters. Paper 4 (updated in Papers 6 and 7), 1–2.
`1. Other Lawsuits
`Patent Owner identifies several other lawsuits involving the ’934
`patent: Koss Corp. v. Skullcandy, Inc., No. 6:20-cv-00664 (W.D. Tex);
`Koss Corp. v Plantronics, Inc., No. 6-20-cv-00663 (W.D. Tex.); Koss Corp.
`v. Bose Corp., No. 6-20-cv-00661 (W.D. Tex); Bose Corp. v. Koss Corp.,
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`No. 1-20-cv-12193 (D. Mass.); and Apple Inc. v. Koss Corp., No. 4:20-cv-
`05504 (N.D. Cal.). Paper 4, 1.
`2. United States Applications
`Patent Owner lists the following applications as related applications
`to which the ’934 patent claims priority: PCT application No.
`PCT/US2009/039754, filed April 7, 2009 (the “PCT Application”), and
`provisional application Serial No. 61/123,265, filed April 8, 2008 (the
`“Provisional Application”). Paper 4, 2.
`3. Inter Partes Review Proceedings
`Patent Owner lists the following inter partes review proceedings
`challenging patents that claim priority to the PCT Application and the
`Provisional Application:1
`Bose Corp. v. Koss Corp., IPR2021-00297, filed December 7, 2020,
`challenging U.S. Patent No. 10,368,155 B2; Apple Inc. v. Koss Corp.,
`IPR2021-00305, filed December 15, 2020, challenging U.S. Patent No.
`10,506,325 B1; Apple Inc. v. Koss Corp., IPR2021-00381, filed January 4,
`2021, challenging U.S. Patent No. 10,491,982 B1; Apple Inc. v. Koss Corp.,
`IPR2021-00546, filed February 22, 2021, challenging U.S. Patent No.
`10,206,025 B1; Apple Inc. v. Koss Corp., IPR2021-00612, filed March 3,
`2021, challenging U.S. Patent No. 10,206,025; Apple Inc. v. Koss Corp.,
`IPR2021-00626, filed March 17, 2021, challenging U.S. Patent No.
`10,206,025 B1; Apple Inc. v. Koss Corp., IPR2021-00679, filed March 22,
`2021, challenging U.S. Patent No. 10,506,325 B1; and Apple Inc. v. Koss
`
`
`1 Additional inter partes review proceedings involving these same parties
`include Apple Inc. v. Koss Corp., IPR2021-00255, filed November 25,
`2020, and Apple Inc. v. Koss Corp., IPR2021-00600, filed March 7, 2021,
`both challenging U.S. Patent No. 10,298,451 B1.
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`Corp., IPR2021-00686, filed March 22, 2021, challenging U.S. Patent No.
`10,491,982 B1. Paper 4, 2.
`Two inter partes review proceedings involve claims of the ’934
`patent, including claims challenged and not challenged here: Bose Corp. v.
`Koss Corp., IPR2021-00680, filed March 17, 2021; and Apple Inc. v. Koss
`Corp., IPR2021-00592, Paper 2 (March 2, 2021) (the “’592 petition”),
`Paper 9 (Aug. 23, 2021) (Institution Decision) (the “’592 Inst. Dec.”)
`(generally, the “’592 IPR”).
`C. The ’934 Patent
`The ’934 patent’s priority dates are April 7, 2009, based on the PCT
`Application, and April 7, 2008, based on the Provisional Application.
`Ex. 1001, codes (60), (63).
`1. Background Technology
`The ’934 patent characterizes prior art wired headphones that
`interconnect a headphone with a data storage unit as “cumbersome.”
`Ex. 1001, 1:42–51. The ’934 patent also characterizes prior art wireless
`headphones connected via IEEE 802.11 (e.g., a Wi-Fi connection) to a
`WLAN-ready laptop or personal computer as “quite large and not in-ear
`type phones.” Id. at 1:58–62.
`2. The ’934 Patent’s Wireless Earphones
`The ’934 patent describes a wireless earphone that receives streaming
`audio data from a data source such as an audio player or computer via an ad
`hoc wireless network and infrastructure wireless networks, and that
`transitions seamlessly between wireless networks. Ex. 1001, 1:66–2:3. The
`’934 patent describes an “ad hoc wireless network” as “a network where
`two . . . wireless-capable devices, such as the earphone and a data source,
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`communicate directly and wirelessly, without using an access point.” Id. at
`3:3–6.2 An ad hoc network is in contrast to an “infrastructure wireless
`network,” which is “a wireless network that uses one or more access points
`to allow a wireless capable device, such as the wireless earphone, to
`connect to a computer network, such as a LAN [local area network] or
`WAN [wide area network] (including the Internet).” Id. at 3:6–11.
`The earphone has a body and an ear canal portion for insertion into
`the ear canal of the user of the earphone. Ex. 1001, 3:17–20, 3:54–56.
`Some embodiments employ “two discrete wireless earphones,” one in each
`ear. Id. at 3:47–49. Figure 2A of the ’934 patent follows:
`
`
`
`Figure 2A illustrates earphone 10 communicating over ad hoc wireless
`network 24 with data source 20. Id. at 4:26–32. The earphone’s transceiver
`
`
`2 The art sometimes refers to ad hoc networks as piconets, of which a
`Bluetooth network is an example. See, e.g., Ex. 1003 ¶¶ 27, 29, 41;
`Ex. 1007 ¶ 6; Pet. 24 (“piconet connection (i.e., an ad hoc network, such as
`Bluetooth)”). For purposes of this Decision, we use “ad hoc network,”
`“Bluetooth,” and “piconet” interchangeably, as any differences in these
`terms do not affect the outcome of this proceeding.
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`circuit communicates wirelessly with the data source. Id. at 4:28–32. One
`example of a data source is a digital audio player (DAP). Id. at 4:32–33.
`The DAP transmits audio wirelessly to earphone(s) via the ad hoc network
`if the DAP and earphone(s) are “in range” of that network. Id. at 4:56–57.
`“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 Bluetooth and other communication
`protocols. Id. at 4:56–61.
`The earphone’s user may access an associated web page through a
`server. Ex. 1001, 8:7–9, Fig. 2D. “[A]t the web site, the user could set
`various content features and filters, as well as adjust various sound control
`features, such as treble, bass, frequency settings, noise cancellation settings,
`etc.,” all of which are set by the user. Id. at 8:15–21. “In addition, the user
`could set preferred streaming audio stations, such as preferred Internet radio
`stations or other streaming audio broadcasts.” Id. at 8:18–21. Thus,
`“instead of listening to streaming audio from the data source 20, the user
`could listen to Internet radio stations or other streaming audio broadcasts
`received by the earphone 10.” Id. at 8:21–24.
`D. Illustrative Claim
`Independent claim 58 illustrates the claimed subject matter:
`58. A headphone assembly comprising:
`first and second earphones, wherein each of the first and
`second earphones comprises an acoustic transducer; and
`an antenna for receiving wireless signals from a mobile,
`digital audio player via one or more ad hoc wireless
`communication link, wherein the mobile, digital audio player is
`a first digital audio source;
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`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;
`a processor;
`a rechargeable battery for powering the headphone
`assembly; and
`a microphone for picking up utterances by a user of the
`headphone assembly; 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;
`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;
`and
`
`wherein the headphone assembly transitions to play
`digital audio content received wirelessly from a second digital
`audio source via a second wireless communication link based
`on, at least, a signal strength level for the second wireless
`communication link, wherein the second digital audio source is
`different from the first digital audio source.
`
`
`
`E. Evidence of Record
`Petitioner relies on the following prior art references and expert
`testimony:
`Haupt, PCT/EP 2005/011228, issued Apr. 27, 2006 (Ex. 1004)
`Seshadri, US 2006/0166716 A1, published July 27, 2006 (Ex. 1007)
`Rosener, US 2008/0076489 A1, published Mar. 27, 2008 (Ex. 1008)
`Rao, US 7,881,745 B1, issued Feb. 1, 2011 (Ex. 1009)
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`
`Paulson, US 7,551,940 B2, issued June 23, 2009 (Ex. 1011)
`Seshadri-818, US 2005/0037818 A1, published Feb. 17, 2005 (Ex. 1013)
`Declaration of Dr. Jeremy Cooperstock (Ex. 1003)
`
`
`F. Prior Art and Asserted Grounds
`Petitioner asserts that claims 1–6, 8, 10–20, 22–29, 31–36, 38–42, 44,
`and 58–62 would have been unpatentable on the following grounds (Pet. 1–
`2):
`
`35 U.S.C.3 §
`103
`103
`103
`103
`
`Reference(s)/Basis
`Haupt, Seshadri4
`Haupt, Seshadri, Paulson
`Haupt, Seshadri, Rao
`Haupt, Seshadri, Rao, Paulson
`
`103
`
`103
`
`Haupt, Seshadri, Rao, Rosener
`
`Haupt, Seshadri, Rao, Rosener,
`Paulson
`
`Claim(s)
`Challenged
`58, 59
`60, 61
`1, 2, 8, 32, 62
`3–6
`10, 13–15, 18,
`22–24, 27, 31,
`33–36, 38, 41, 42,
`44
`11, 12, 16, 17, 19,
`20, 25, 26, 28, 29,
`39, 40
`
`
`
`
`
`3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102 and 103, effective
`March 16, 2013. Because the application that resulted in the ’934 patent
`has an effective filing date before this date, the pre-AIA version of § 103
`applies.
`4 The Petition also relies on Seshadri-818 (Ex. 1013), which Seshadri
`incorporates by reference. See Pet. 28–29 (citing Ex. 1007 ¶ 1
`(incorporating by reference App. No. 10/856,430––i.e., Seshadri-818);
`Ex. 1013).
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`35 U.S.C. §
`
`Reference(s)/Basis
`
`Haupt, Seshadri, Rao
`Haupt, Seshadri, Rao, Paulson
`
`G. Serial Petitions
`Petitioner filed two petitions challenging claims in the ’934 patent.
`The first petition, the ’592 petition, challenges the claims as follows (’592
`Inst. Dec. 9):
`Claim(s)
`Challenged
`1, 2, 9, 32, 47, 52,
`53, 54, 56, 57
`3, 5, 7
`10, 14, 15, 23, 24,
`33–36, 42, 43, 46,
`48–51, 55
`11, 16, 19, 21, 25,
`28, 30, 37, 39, 45
`
`As the chart above shows, the ’592 petition challenges claims 1–3, 5,
`7, 9–11, 14–16, 19, 21, 23–25, 28, 30, 32–37, 39, 42–43, 45–48, and 51–57.
`The Petition here challenges claims 1–6, 8, 10–20, 22–29, 31–36, 38–42,
`44, and 58–62 based on the same prior art, with one added prior art
`reference in the Petition. See Pet. 28–33 (employing Seshadri-818
`(Ex. 1013)).
`Petitioner explains that the additional claims challenged here relative
`to the ’592 petition “recite that ‘the headphone assembly transitions to play
`digital audio content received wirelessly from a second digital audio source
`. . . based on, at least, a signal strength level . . . ’ (i.e., the ‘signal strength
`claims’).” Paper 3 (“Notice”), 2. Petitioner explains that the instant
`Petition “relies upon the disclosure of Seshadri-818, in addition to the prior
`art relied upon in IPR2021-00592, with the intent of demonstrating the
`unpatentability of the signal strength claims (i.e., claims 4, 6, 8, 12, 13, 17,
`18, 20, 22, 26, 27, 29, 31, 38, 40, 41, 44, and 58–62).” Id. at 2–3.
`
`Haupt, Seshadri, Rao, Rosener
`
`Haupt, Seshadri, Rao, Rosener,
`Paulson
`
`103
`103
`
`103
`
`103
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`
`Claim 58, reproduced above and addressed below, is representative
`of the “signal strength” claims. As explained below, Petitioner fails to
`demonstrate a likelihood of prevailing on the “signal strength” claims at the
`heart of this Petition. See infra § III.D.4. Accordingly, we exercise our
`discretion and decline to institute on the remaining claims for efficiency
`reasons, because the Board instituted on the ’592 petition, and the ’592
`petition challenges the same non-signal strength claims based on materially
`the same rationale and prior art as here. Instituting another trial of the same
`claims on nearly identical grounds will “place a substantial and unnecessary
`burden on the Board and . . . [P]atent [O]wner and . . . raise fairness, timing,
`and efficiency concerns.” See The Patent Trial and Appeal Board
`Consolidated Trial Practice Guide (Nov. 2019), available at tpgnov.pdf
`(uspto.gov) (the “TPG”), 59 (citing 35 U.S.C. § 316(b)).
`III. OBVIOUSNESS ANALYSIS
`A. Legal Standard for Obviousness
`A patent claim is invalid as obvious if the differences between the
`claimed subject matter and the prior art are “such that the subject matter as
`a whole would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter
`pertains.” 35 U.S.C. § 103(a) (2018).
`The ultimate determination of obviousness is a question of law,
`but
`that determination
`is based on underlying factual
`findings. . . . The underlying factual findings include (1) “the
`scope and content of the prior art,” (2) “differences between the
`prior art and the claims at issue,” (3) “the level of ordinary skill
`in the pertinent art,” and (4) the presence of secondary
`considerations of nonobviousness such “as commercial success,
`long felt but unsolved needs, failure of others,” and unexpected
`results.
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`In re NuVasive, Inc., 842 F.3d 1376, 1381 (Fed. Cir. 2016) (citing inter alia
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)).
`“To satisfy its burden of proving obviousness, a petitioner cannot
`employ mere conclusory statements. The petitioner must instead articulate
`specific reasoning, based on evidence of record, to support the legal
`conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
`1364, 1380 (Fed. Cir. 2016). Furthermore, in assessing the prior art, the
`Board must consider whether a person of ordinary skill would have been
`motivated to combine the prior art to achieve the claimed invention.
`NuVasive, 842 F.3d at 1381.
`As the Federal Circuit reasons,
`“because inventions in most, if not all, instances rely upon
`building blocks long since uncovered, and claimed discoveries
`almost of necessity will be combinations of what, in some sense,
`is already known,” “it can be important to identify a reason that
`would have prompted a person of ordinary skill in the relevant
`field to combine the elements in the way the claimed new
`invention does.”
`
`Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 991–92 (Fed. Cir.
`2017) (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418–19
`(2007)).
`
`B. Level of Ordinary Skill in the Art
`Petitioner cites to Dr. Cooperstock’s testimony, which follows:
`Based upon my experience in this area and taking into
`account the above references, a person of ordinary skill in the art
`at the time of the ’934 patent’s Critical Date . . . would have had
`at least a Bachelor’s Degree in an academic area emphasizing
`electrical engineering, computer science, or a similar discipline,
`and at least two years of experience in wireless communications
`across short distance or local area networks. Superior education
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`could compensate for a deficiency in work experience, and vice-
`versa.
`
`Ex. 1003 ¶ 33; see also Pet. 4 n.1 (citing Ex. 1003 ¶¶ 33–34 (defining a
`person of ordinary skill in the art)). Patent Owner does not comment on
`this statement nor does it propose a different level of skill. For purposes of
`this Institution Decision, we adopt the level of skill set forth above as
`supported by the prior art references of record and the ’934 patent
`Specification.
`
`C. Claim Construction
`In inter partes reviews, the Board interprets claim language using the
`district court standard, as described in Phillips v. AWH Corp., 415 F.3d
`1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2020). Under
`that standard, claim terms have their ordinary and customary meaning, as
`would be understood by a person of ordinary skill in the art at the time of
`the invention, in light of the language of the claims, the specification, and
`the prosecution history. See Phillips, 415 F.3d at 1313–14. Any extrinsic
`evidence should be considered in the context of the intrinsic evidence. See
`id. at 1317–19.
`Neither party construes a claim term. See Pet. 4; see generally,
`Prelim. Resp. No need exists to construe any claim term to resolve a
`
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`controversy here.5 See Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we
`need only construe terms ‘that are in controversy, and only to the extent
`necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am.
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
`D. Obviousness of Signal Strength Claim 58,
`over Haupt, Seshadri, and Seshardi-818
`Petitioner alleges that claim 58, which represents the “signal
`strength” subject matter included in claims 4, 6, 8, 12, 13, 17, 18, 20, 22,
`26, 27, 29, 31, 38, 40, 41, 44, and 58–62, would have been obvious over
`Haupt, Seshadri, and Seshardi-818. Pet. 1, 4–42. Petitioner also relies on
`the Cooperstock Declaration. See Ex. 1003.
`1. Haupt (Ex. 1004)
`Haupt describes “WLAN headphones” that receive audio data
`wirelessly transmitted from a server through an access point. Ex. 1004,
`2:22–3:7. When the headphone is within transmission range of a WLAN
`
`
`5 The Dissent argues that the signal strength limitations might not be
`limitations at all, and, instead are statements of intended use. Neither party
`proposes or argues such a position. Nor does either party appear to have
`raised this issue before the District Court. See Ex. 2002 (joint claim
`construction statement); Ex. 2003 (claim construction order). If Petitioner
`wanted to construe the signal strength limitations in this manner, Petitioner
`should have proposed and supported such a construction in the Petition.
`See 37 C.F.R. § 42.104(b)(3). Below, we evaluate the arguments and
`evidence Petitioner does present and decline the Dissent’s invitation to
`reformulate the Petition (which would result in a lower required showing
`for Petitioner). Cf. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018)
`(“Much as in the civil litigation system it mimics, in an inter partes review
`the petitioner is master of its complaint and normally entitled to judgment
`on all of the claims it raises, not just those the decision maker might wish to
`address.”).
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`access point, the access point connects to the headphone, which permits the
`headphone to wirelessly receive data from the server. Id. at 2:22–24.
`Haupt also discloses an audio forwarding mode in which a
`headphone “perform[s] as a local server, providing [] stored audio files to
`other playback devices.” Id. at 10:7–24. The headphone “can therefore
`receive data wirelessly from an access point, and then send this data to
`another playback device.” Id.
`Figure 1 of Haupt follows:
`
`
`
`Figure 1 illustrates a data transfer system.
`Ex. 1004, 5:23–24, 6:16–17. As shown in Figure 1, private sector server PS
`is connected to public sector server OS over the Internet. Id. at 6:17–18.
`Access point APP is hardwired to the private server PS. Id. at 6:18–19.
`APP has a WLAN interface and, so long as playback device WG is within
`transmission range of the private access point APP, the two wirelessly
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`communicate with each other. Id. at 6:18–23. Playback device WG
`includes headphones with a WLAN interface. Id. at 7:31–8:1.
`Control buttons on the headphones provide navigation of the audio
`files. Ex. 1004, 14:16–18. “The control buttons can likewise have
`numerous functions, such that it is possible to navigate both within a music
`piece and within the files or databases on the server.” Id. at 14:22–23.
`2. Seshadri (Ex. 1007)
`Seshadri describes a modular wireless headset, including a wireless
`earpiece, wirelessly coupled to a base unit. Ex. 1007 ¶ 24. The base unit
`“may be a cellular telephone, wire line telephone, laptop computer, personal
`computer, personal digital assistant, etc., using antennas 7 and transceiver
`(transmitter and/or receiver) 13 of FIG. 2 via a first communication
`pathway 18.” Id. The base unit may couple the headset to multiple
`playback devices, audio streams or voice communication networks such as
`radio, cellular, wireless voice. Id. “[A]fter exchanging and completing
`registration information,” using, for example, the Bluetooth specification,
`wireless communication may be established between the headset and base
`unit. Id. ¶¶ 26, 36, 40.
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`Figure 3 of Seshadri follows:
`
`
`
`Figure 3 depicts the earpiece of the modular headset paired with the
`base unit to automatically connect to resources over a transceiver.
`
`Ex. 1007 ¶ 35. The resources may be a cellular telephone network, wire
`line telephone, Ethernet telephone, laptop computer, personal computer, or
`personal digital assistant. Id. Still referring to Figure 3, “wireless headset
`10 may be wirelessly coupled with any one of the devices 30–37 and act as
`the headset communicatively coupled and registered to the devices 30–37.”
`Id. ¶ 40.
`
`Seshadri’s devices 30–37 each have piconet RF interface 38 and
`WLAN RF interface 39. Id. ¶¶ 40–41. Wireless headset 10 may establish a
`piconet with any one of devices 30–37 or access point 21 (which includes
`both piconet RF interface 38 and WLAN RF interface 39). Id. ¶ 43. In one
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`example, if headset 10 is unable to establish a piconet connection with
`cellular telephone 36 via piconet RF interface 38, headset 10 establishes a
`wireless communication link with cellular telephone 36 via WLAN RF
`interfaces 39 and access point 21. Id. ¶ 42, Fig. 3. In another example,
`wireless headset 10 can function as the headset for wire line telephone 37,
`and can be connected via a piconet. Id. ¶ 43. If headset 10 strays too far
`from wire line telephone 37, but is close enough to cellular telephone 36,
`then headset 10 may connect to cellular telephone 36 (via a piconet) and
`cellular telephone 36 can connect to wire line telephone 37 via the WLAN
`and access point 21. Id. ¶ 44. “Thus, a logical connection is established
`between headset 10 and wire line telephone 37 via cellular telephone 36 and
`access point 21.” Id. “Accordingly, within a wireless geographic area, the
`range of headset 10 may be extended utilizing the WLAN within the
`geographic area. As such, headset 10 extends the mobility of its user,
`extends the range of headset use and expands on headset functionality while
`preserving privacy and security by seeking service from base units to which
`it may be registered.” Id.
`3. Seshardi-818 (Ex. 1013)
`Seshadri-818 describes “a method for supporting a universal wireless
`headset for ongoing communications [] by monitoring signal strength of
`communications within a piconet that includes the headset and a device
`coupled to the network.” Ex. 1013 ¶ 11. In Seshadri-818, a universal
`headset establishes a piconet with a host device, which can be a cellular
`telephone, wire line telephone, personal or laptop computer, PDA, or access
`point to a WLAN. Id. ¶ 10. If the signal strength of the piconet connection
`drops below a threshold, another device is identified to which the headset
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`can connect. Id. ¶ 11. “In addition, a logical connection may be established
`between the new device and a host device supporting the communication.
`Accordingly, a universal wireless headset is provided that extends the
`mobility of the user, extends the range of the headset and expands on its
`functionality.” Id.
`Figure 1 is reproduced below:
`
`
`
`Figure 1 is a schematic block diagram of a wireless geographic area
`coupled to a WLAN.
`
`Id. ¶ 12. In this example, a communication is to be processed via wire line
`telephone 14, which is the host device; however, headset 12 is too far away
`for a piconet to be established with telephone 14. Id. ¶ 26. Instead, headset
`12 establishes a piconet with cellular telephone 22, which, in turn,
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`establishes a connection with access point 24. Id. Access point 24
`establishes a communication link with telephone 14. Id. “Thus, a logical
`connection is established between the universal wireless headset 12 and the
`wire line telephone 14 via cellular telephone 22 and access point 24.” Id.
`Figure 8 is reproduced below:
`
`
`Figure 8 is a logic diagram of a method for supporting a universal
`wireless headset.
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`Id. ¶ 19. At step 180,6 signal strength of the communications over the
`piconet (including the headset and device) is monitored. Id. ¶ 49. At step
`182, it is determined whether the signal strength “compares unfavorably to
`a signal strength threshold (e.g., is below a threshold of –80 to –85 dB).”
`Id. At step 184, another device coupled to the network is identified.
`Id. ¶ 50. At step 186, a new piconet is established between the universal
`wireless headset and the new device. Id. “This enables the universal
`wireless headset to roam within the local area network and maintain its
`wireless headset functionality with one of its host devices as it roams.” Id.
`4. Claim 58
`Regarding claim 58, Petitioner cites Haupt for aspects relating to
`wireless headphones and Seshadri for aspects relating to digital audio
`sources, as well as for headphones with a rechargeable battery. Pet. 11–33.
`According to Petitioner, a skilled artisan “would have found it obvious to
`modify Haupt based on Seshadri such that Haupt’s WLAN headphones
`include the capability to not only communicate with servers via WLAN (as
`taught by Haupt), but to also communicate with local audio sources via both
`WLAN and ad hoc networks (as taught be Seshadri).” Id. at 8–9.
`In particular, Petitioner cites to Haupt’s wireless headphone unit as
`showing “[a] headphone assembly” and “first and second earphones,
`wherein each of the first and second earphones comprises an acoustic
`transducer,” as recited in claim 58. Id. at 11–14 (limitations 58[pre] and
`
`
`6 Figure 8 depicts steps 180, 182, 184, and 186. The specification of
`Seshadri-818 describes steps 120, 122, 124, and 126. Ex. 1013 ¶¶ 49–50.
`We interpret the discrepancy as a typographical error. For purposes of this
`Decision, we use the numbering depicted in Figure 8.
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`58[a]7). Petitioner further cites Haupt for “an antenna for receiving wireless
`signals.” Id. at 14–15 (limitation 58[b]). Petitioner also cites Haupt for “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” and “a processor.” Id. at 18–
`21 (limitations 58[c] and 58[d]). Petitioner further cites Haupt for “a
`microphone for picking up utterances by a user of the headphone
`assembly.” Id. at 22–23 (limitation 58[f]).
`Petitioner cites, inter alia, Seshadri for “a rechargeable battery for
`powering the headphone assembly,” as recited in claim 58. Id. at 21–22
`(limitation 58[e]).
`Petitioner cites Seshadri for receiving signals from “a mobile digital
`audio player via one or more ad hoc wireless communication links, wherein
`the mobile, digital audio player is a first digital audio source,” as recited in
`claim 58. Id. at 15–16 (limitation 58[b]). In particular, Petitioner contends
`that Seshadri’s cellphone 36 is a first digital audio source and that
`Seshadri’s PDA 30 is “a second digital audio source that is different from
`the first digital audio source,” as recited in claim 58. Id. (citing Ex. 1007,
`Fig. 3; Ex. 1003 ¶¶ 75–76).
`As to “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,” as recited in claim 58, Petitioner argues that “in the combination of
`Haupt and Seshadri, Haupt’s WLAN headphones would be configured to
`
`
`7 The Petition enumerates claim 58’s limitations as 58[pre] and 58[a]–58[i].
`Pet. 11–33.
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`couple with the mobile, digital audio players taught by Seshadri (e.g., PDA
`30 or cellphone 36) via a piconet connection (i.e., an ad hoc network, such
`as Bluetooth).” Id. at 23–24 (limitation 58[g]) (citing Ex. 1007 ¶¶ 40–42;
`Ex. 1003 ¶ 90). According to Petitioner, “the mobile, digital audio player
`(e.g., PDA 30 or cellphone 36) is for transmitting digital audio content to
`the headphone assembly (i.e., the modified WLAN headphones of Haupt)
`via one or more ad hoc wireless communication links (i.e., the piconet
`connection), such that the content is playable by the first and second
`earphones.” Id. at 24.
`As to “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,” as recited in claim 58, Petitioner argues
`that Haupt’s data transfer system, including private server PS and public
`server OS, is a “remote, network connected server that is in wireless
`communication with the mobile, digital audio player.” Id. at 24–26
`(limitation 58[h]) (citing Ex. 1004, 6:16–7:5, 7:30–31, 15:28–31, 19:10–21,
`Fig. 1). Petitioner argues that each of Seshadri’s devices (e.g., PDA 30 and
`cellphone 36) “would be able to communicate with and receive audio files
`from a server (e.g., public server OS) in the same manner as the operating
`element BE taught by Haupt with respect to FIG. 3.” Id. at 26 (citing
`Ex. 1004, 9:2–8, 10:7–24; Ex. 1003 ¶ 94). In Petitioner’s combination, this
`server (e.g., public server OS) “would have provided a source for the audio
`streams to which Seshadri teaches the base units 16 have access.” Id. at
`26–27 (citing Ex. 1007 ¶ 24; Ex. 1003 ¶ 94).
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`Petitioner contends that Seshadri teaches the signal strength
`limitation of claim 58, i.e.,
`wherein th