IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`In re Patent of: Michael J. Koss, et al.
`U.S. Patent No.:
`10,469,934
`Attorney Docket No.: 50095-0018IP1/0018IP2
`Issue Date:
`November 5, 2019
`
`Appl. Serial No.: 16/375,879
`
`Filing Date:
`April 5, 2019
`
`Title:
`SYSTEM WITH WIRELESS EARPHONES
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`PETITIONER’S NOTICE RANKING PETITIONS
`AND EXPLAINING MATERIAL DIFFERENCES BETWEEN
`PETITIONS AGAINST U.S. PATENT NO. 10,469,934
`
`
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`
`
`In re Patent of: Michael J. Koss, et al.
`U.S. Patent No.:
`10,469,934
`Attorney Docket No.: 50095-0018IP1/0018IP2
`Issue Date:
`November 5, 2019
`
`Appl. Serial No.: 16/375,879
`
`Filing Date:
`April 5, 2019
`
`Title:
`SYSTEM WITH WIRELESS EARPHONES
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`PETITIONER’S NOTICE RANKING PETITIONS
`AND EXPLAINING MATERIAL DIFFERENCES BETWEEN
`PETITIONS AGAINST U.S. PATENT NO. 10,469,934
`
`
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`
`
`Attorney Docket No. 50095-0018IP1/0018IP2
`IPR of U.S. Patent No. 10,469,934
`Petitioner, Apple Inc. (“Apple”), now has two concurrent petitions challeng-
`
`ing the validity of all claims of U.S. Patent No. 10,469,934 (“the ’934 patent”):
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`IPR2021-00592 filed March 2 and IPR2021-00693 filed March 23 (herewith). As
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`explained below, each petition challenges a different set of the 62 claims Koss as-
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`serted against Apple in the co-pending litigation. APPLE-1014. Pursuant to the
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`Board’s July 2019 Trial Practice Guide Update, Apple submits this paper to “iden-
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`tify: (1) a ranking of the Petitions in the order in which it wishes the Board to con-
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`sider the merits…, and (2) a succinct explanation of the differences between the
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`Petitions, why the issues addressed by the differences are material, and why the
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`Board should exercise its discretion to institute additional petitions.”
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`I.
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`Ordering of Petitions
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`Apple believes that both petitions are meritorious and justified, especially
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`because (as explained further below), both petitions are necessary to address the 62
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`claims that Koss asserted against Apple in the co-pending district court litigation.
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`Nonetheless, to the extent required, Apple requests that the Board consider the pe-
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`titions in the following order:
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`Rank
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`PTAB Case No.
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`1
`
`IPR2021-00592
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`Challenged
`Claims
`1-3, 5, 7, 9-11, 14-
`
`(First Petition)
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`16, 19, 21, 23-25,
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`28, 30, 32-37, 39,
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`1
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`
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`Attorney Docket No. 50095-0018IP1/0018IP2
`IPR of U.S. Patent No. 10,469,934
`42-43, 45-48, and
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`51-57
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`2
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`IPR2021-00693
`
`1-6, 8, 10-20, 22-
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`(Second Petition)
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`29, 31-36, 38-42,
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`44, 58-62
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`
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`II. Material Differences that Compel Permitting Multiple Petitions
`
`The Board’s “Trial Practice Guide” notes that “the Board recognizes that
`
`there may be circumstances in which more than one petition may be necessary, in-
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`cluding, for example, when the patent owner has asserted a large number of
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`claims.” Consolidated TPG at 59 (Nov. 2019). This case presents a prototypical
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`case where “patent owner has asserted a large number of claims.” As explained in
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`Section V of both petitions, Koss asserted all 62 claims of the ’934 Patent against
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`Apple in the co-pending litigation.
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`Each of the first and second petitions cover different claims. Specifically,
`
`the first petition challenges claims 1-3, 5, 7, 9-11, 14-16, 19, 21, 23-25, 28, 30, 32-
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`37, 39, 42-43, 45-48, and 51-57, which is all claims except those claims that recite
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`that “the headphone assembly transitions to play digital audio content received
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`wirelessly from a second digital audio source . . . based on, at least, a signal
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`strength level . . .” (i.e., the “signal strength claims”). The second petition relies
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`2
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`
`
`Attorney Docket No. 50095-0018IP1/0018IP2
`IPR of U.S. Patent No. 10,469,934
`upon the disclosure of Seshadri-818, in addition to the prior art relied upon in
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`IPR2021-00592, with the intent of demonstrating the unpatentability of the signal
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`strength claims (i.e., claims 4, 6, 8, 12, 13, 17, 18, 20, 22, 26, 27, 29, 31, 38, 40,
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`41, 44, and 58-62). Given the dependencies of the signal strength claims, however,
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`there is substantial overlap between the first and second petitions. As a result, the
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`primary difference between the first and second petitions is an approximately six
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`page section of the second petition that addresses the signal strength limitation (see
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`pp. 28-33 of the second petition addressing limitation 58[i]). This is a concise ad-
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`dition to deal with the signal strength claims, the inclusion of which was entirely
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`precipitated by Koss’s allegation that Apple infringes all 62 claims of the ’934 pa-
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`tent—a number of claims that could not reasonably be addressed in a single peti-
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`tion. APPLE-1014. Thus, Apple has judiciously moderated any increase in burden
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`from the two petitions, and such increase in burden is a direct result of Koss’s con-
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`duct in the co-pending litigation.
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`In cases like this one where a patent owner asserts more than 30 claims
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`against a petitioner, the Board has regularly allowed for the filing of multiple peti-
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`tions to challenge the excessive number of asserted claims. See, e.g., Apple Inc. v.
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`Seven Networks, LLC, IPR2020-00707, Paper 11 at 19-21 (PTAB Oct. 22, 2020)
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`(granting two petitions filed against 44 asserted claims); Dolby Laboratories, Inc.
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`v. Intertrust Technologies Corp., IPR2020-01106, Paper 12 at 19-21 (PTAB Jan 5,
`
`3
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`
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`Attorney Docket No. 50095-0018IP1/0018IP2
`IPR of U.S. Patent No. 10,469,934
`2021) (granting two petitions filed against 18 claims); Adobe Inc. v. Synkloud
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`Technologies, LLC, Paper 8 at 8-10 (PTAB Mar. 11, 2021) (granting two petitions
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`filed against 20 “lengthy” and “complex” asserted claims). Further, the petitions
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`of IPR2021-00592 and IPR2021-00693 were each filed relatively close in time (ap-
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`proximately three weeks apart), providing the Board an opportunity to gain effi-
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`ciencies by issuing a single scheduling order that sets the same due dates for both
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`proceedings, ultimately culminating in a consolidated oral hearing. See id. Thus,
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`Apple submits that any additional burden on the finite resources of the Board is
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`reasonable in light of the circumstances.
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`For each of these reasons, Apple respectfully requests institution of both of
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`its concurrently filed IPR petitions against the ’934 patent.
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`
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`Dated
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`March 23, 2021
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`Respectfully submitted,
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`
`/W. Karl Renner/
`
`W. Karl Renner, Reg. No. 41,265
`David Holt, Reg. No. 65,161
`Joel A. Henry, Reg. No. 72,970
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
`
`Attorneys for Petitioner
`
`4
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`
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`Attorney Docket No. 50095-0018IP1/0018IP2
`IPR of U.S. Patent No. 10,469,934
`
`
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4)(i) et seq. and 42.105(b), the undersigned
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`certifies that on March 23, 2021, a complete and entire copy of this “Petitioner’s
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`Notice Ranking Petitions and Explaining Material Differences Between Petitions
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`Against U.S. Patent No. 10,469,934” was provided via FedEx, to the Patent Owner
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`by serving the correspondence address of record as follows:
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`K&L Gates – Pittsburgh
`210 Sixth Avenue
`Pittsburgh, PA 15222
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`/Edward G. Faeth/
`Edward Faeth
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(202) 626-6420
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