`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`KOSS CORPORATION,
`Patent Owner.
`_____________________
`
`CASE: IPR2022-00053
`U.S. PATENT NO. 10,206,025
`_____________________
`
`
`PATENT OWNER PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`
`
`

`

`
`
`IPR2022-00053
`Patent Owner Preliminary Response
`
`I.
`II.
`
`2.
`
`3.
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`BACKGROUND ............................................................................................. 3
`A.
`Timeline of Events ................................................................................ 3
`B.
`Summary of the Petition for the Third Apple IPR and the
`Joinder Motion ...................................................................................... 6
`Summary of ’025 Patent ........................................................................ 9
`C.
`III. THE PETITION SHOULD BE DENIED DISCRETIONARILY
`UNDER GENERAL PLASTIC ......................................................................... 9
`A. Applicable Legal Principles .................................................................. 9
`B.
`Analysis of General Plastic Factors ................................................... 11
`1.
`Factor 1: Whether the Same Petitioner Previously Filed a
`Petition Directed to the Same Claims of the Same Patent ........ 11
`Factor 2: Whether at the Time of Filing of the Earlier
`Petitions the Petitioner Knew of the Prior Art Asserted in
`the Later Petition or Should Have Known of It ........................ 12
`Factor 3: Whether at the Time of Filing of the Follow-
`On Petition the Petitioner Already Received the Patent
`Owner’s Preliminary Response to the Initial Petition or
`Received the Board’s Decision on Whether to Institute
`Review of the Initial Petition .................................................... 16
`Factor 4: The Length of Time that Elapsed Between the
`Time the Petitioner Learned of the Prior Art Asserted in
`the Follow-On Petition and the Filing of the Follow-On
`Petition ...................................................................................... 17
`Factor 5: Whether the Petitioner Provides Adequate
`Explanation for the Time Elapsed Between the Filings of
`Multiple Petitions Directed to the Same Claims of the
`Same Patent ............................................................................... 18
`
`4.
`
`5.
`
`i
`
`

`

`
`
`IPR2022-00053
`Patent Owner Preliminary Response
`
`6.
`7.
`
`Factor 6: The Finite Resources of the Board ........................... 19
`Factor 7: The Requirement to Issue a Final
`Determination Not Later Than One Year After the Date
`on Which the Director Notices Institution of Review .............. 19
`Holistic Review of General Plastic Factors ............................. 20
`8.
`IV. PETITIONER MISCHARACTERIZED THE BOARD’S
`REASONING AND LANGUAGE IN UNILOC .......................................... 20
`A.
`Petitioner Contorted a Criticism of Apple’s Serial Attacks in
`Uniloc into a Test for Evaluating the General Plastic Factors ........... 20
`Petitioner Altered the Board’s Quotes in Uniloc to Benefit
`Petitioner’s Flawed Arguments ........................................................... 23
`CONCLUSION .............................................................................................. 26
`
`B.
`
`V.
`
`
`
`
`
`
`
`
`ii
`
`

`

`
`
`IPR2022-00053
`Patent Owner Preliminary Response
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Apple Inc. v. Corephotonics Ltd.,
`IPR2018-01356, Paper 9 (PTAB Feb. 5, 2019) .................................................. 18
`Apple Inc. v. Koss Corp.,
`IPR2021-00546, Paper 10 (PTAB Sept. 7, 2021) ........................................passim
`Apple Inc. v. Koss Corp.,
`IPR2021-00626, Paper 10 (PTAB Sept. 30, 2021) ......................................passim
`Apple Inc. v. Uniloc 2017 LLC,
`IPR2020-00854, Paper 9 (PTAB Oct. 28, 2020) .........................................passim
`Bose Corp. v. Koss Corp.,
`IPR2021-00612, Paper 15 (PTAB Sept. 15, 2021) ......................................passim
`General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha,
`IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) ........................................passim
`Guest-Tek Interactive Entertainment Ltd. v. Nomadix, Inc.,
`IPR2018-01668, Paper 6 (PTAB April 16, 2019) .............................................. 18
`Statutes
`35 U.S.C. § 314(a) ......................................................................................... 9, 10, 19
`Other Authorities
`37 C.F.R. § 42.107(a) ................................................................................................. 1
`37 C.F.R. §42.122(b) ............................................................................................... 25
`84 Fed. Reg. 33,925 at 26 (July 16, 2019) ............................................................... 10
`
`
`
`
`iii
`
`

`

`
`
`IPR2022-00053
`Patent Owner Preliminary Response
`
`EXHIBIT LISTING
`
`Description
`Exhibit
`KOSS-2001 Annotated listing of related cases in mandatory notices of Petition
`
`KOSS-2002 Google Patents for U.S. Patent No. 7,072,686 B1 (“Schrager”),
`available at
`patents.google.com/patent/US7072686B1/en?oq=7072686 (last
`accessed Dec. 13, 2021)
`
`KOSS-2003
`
`Information Disclosure Statement, Serial No. 13/725,616, filed
`June 30, 2014
`
`KOSS-2004
`
`Information Disclosure Statement, Serial No. 14/846,574, filed
`Jan. 7, 2016
`
`KOSS-2005 Petition for Inter Partes Review, Apple Inc. v. Koss Corp.,
`IPR2021-00546, Paper 2 (Feb. 22, 2021)
`
`KOSS-2006 Petition for Inter Partes Review, Bose Corp. v. Koss Corp.,
`IPR2021-00612, Paper 2 (Mar. 3, 2021)
`
`KOSS-2007 Petition for Inter Partes Review, Apple Inc. v. Koss Corp.,
`IPR2021-00626, Paper 3 (Mar. 17, 2021)
`
`KOSS-2008 Mandatory Notices by Patent Owner, Apple Inc. v. Koss Corp.,
`IPR2021-00626, Paper 4 (Mar. 24, 2021)
`
`KOSS-2009 Patent Owner’s Updated Mandatory Notices, Apple Inc. v. Koss
`Corp., IPR2021-00546, Paper 6 (Mar. 25, 2021)
`
`KOSS-2010 Decision, Apple Inc. v. Koss Corp., IPR2021-00546, Paper 10
`(Sept. 7, 2021)
`
`KOSS-2011 Decision, Bose Corp. v. Koss Corp., IPR2021-00612, Paper 15
`(Sept. 15, 2021)
`
`iv
`
`

`

`IPR2022-00053
`Patent Owner Preliminary Response
`
`Description
`Exhibit
`KOSS-2012 Decision, Apple Inc. v. Koss Corp., IPR2021-00626, Paper 10
`(Sept. 30, 2021)
`
`KOSS-2013 Ex. 1003 (Williams Declaration) from IPR2021-00612
`
`KOSS-2014 Ex. 1005 (Casali Declaration) from IPR2021-00612
`
`
`
`
`
`
`
`v
`
`

`

`
`I.
`
`IPR2022-00053
`Patent Owner Preliminary Response
`
`INTRODUCTION
`Patent Owner, Koss Corporation (“Koss”), submits this Patent Owner
`
`Preliminary Response pursuant to 37 C.F.R. § 42.107(a) to the Inter Partes Review
`
`(“IPR”) petition (“Petition”) filed by Apple Inc. (“Petitioner” or “Apple”) for U.S.
`
`Patent No. 10,206,025 (“’025 Patent”). This proceeding is Petitioner’s third IPR
`
`(“Third Apple IPR”) for the ’025 Patent. Institution of Petitioner’s first two IPRs,
`
`IPR2021-00546 (“First Apple IPR”) and IPR2021-00626 (“Second Apple IPR”),
`
`was denied. KOSS-2010 (Decision, Apple Inc. v. Koss Corp., IPR2021-00546,
`
`Paper 10 (PTAB Sept. 7, 2021)); KOSS-2012 (Decision, Apple Inc. v. Koss Corp.,
`
`IPR2021-00626, Paper 10 (PTAB Sept. 30, 2021)). A third party, Bose Corporation
`
`(“Bose”), also filed an IPR, IPR2021-00612 (“Bose IPR”), for the ’025 Patent, which
`
`was instituted. KOSS-2011 (Decision, Bose Corp. v. Koss Corp., IPR2021-00612,
`
`Paper 15 (PTAB Sept. 15, 2021)). Petitioner seeks to join this Third Apple IPR with
`
`the Bose IPR. See IPR2022-00053, Paper 3 (“Joinder Motion”).
`
`This Third Apple IPR should not be instituted because it cannot withstand
`
`scrutiny under General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha,
`
`IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) (precedential as to § II.B.4.i),
`
`(“General Plastic”). Petitioner was aware of, or should have been aware of, the prior
`
`art asserted in the Third Apple IPR, including U.S. Patent No. 7,072,686
`
`(“Schrager”) (APPLE-1101), when it filed each of the First and Second Apple IPRs,
`
`- 1 -
`
`

`

`
`which were both filed about seven months before Petitioner filed the Third Apple
`
`IPR2022-00053
`Patent Owner Preliminary Response
`
`IPR. Yet, Petitioner offered no reason or justification for its seven-month wait to
`
`file the Third Apple IPR against the ’025 Patent.
`
`Petitioner’s Joinder Motion’s also grossly mischaracterized the Board’s most
`
`applicable decision on joinder of serial petitions, Apple Inc. v. Uniloc 2017 LLC,
`
`IPR2020-00854 (PTAB Oct. 28, 2020). Petitioner’s mischaracterizations have the
`
`effect of underplaying the fact that this is Petitioner’s third IPR for the ‘025 Patent.
`
`Petitioner perpetuated the concealment of its earlier petition by barely referring to
`
`the Second Apple IPR in its Joinder Motion, even though it is material to the General
`
`Plastic analysis, and by including errors in its mandatory notices. For example, the
`
`mandatory notices are ripe with mistakes, including the attribution of two of the three
`
`earlier-filed IPR petitions for the ‘025 Patent to Bose, though Bose only filed one of
`
`them (the Bose IPR) and Petitioner filed two of them (the First and Second Apple
`
`IPRs). Pet.1, 2.
`
`
`1 “Pet.” as used herein denotes the petition for this Third Apple IPR, i.e., IPR2022-
`
`00053, Paper 2. Copies of the petitions for the First and Second Apple IPRs are
`
`provided as exhibits KOSS-2005 and KOSS-2007. A copy of the petition for the
`
`Bose IPR is provided as exhibit KOSS-2006.
`
`
`- 2 -
`
`

`

`
`
`IPR2022-00053
`Patent Owner Preliminary Response
`
`In the end, regardless of whether this is Petitioner’s second or third IPR of the
`
`’025 Patent, there are abundant reasons to deny institution under General Plastics.
`
`II. BACKGROUND
`A. Timeline of Events
`The following is a sequence of relevant events.
`
`•
`
`On June 30, 2014, Petitioner filed an Information Disclosure Statement
`
`(“IDS”) for application Serial No. 13/725,616 that cited Schrager. KOSS-2003, 20.
`
`Schrager is the primary reference for Grounds 2A-2F of the Petition (Pet., 6), and it
`
`is the sole reference that Petitioner alleged it was not aware of until the Bose IPR
`
`was filed. Joinder Motion, 6.
`
`•
`
`On January 7, 2016, Petitioner filed an IDS in application Serial No.
`
`14/846,574 that also cited Schrager. KOSS-2004, 107.
`
`•
`
`Between 2014 and 2018, Petitioner filed IDSs that cited Schrager in
`
`over 100 other applications. These applications are identified as patents in KOSS-
`
`2002, 10-15. KOSS-2002 is a Google Patents webpage for Schrager that lists,
`
`among other things, U.S. patents and patent applications in a section titled “Cited
`
`By,” starting at page 10 of KOSS-2022, where Schrager was considered in the
`
`examination. Over 100 patents owned by Petitioner are listed in the “Cited By”
`
`section of KOSS-2002.
`
`•
`
`In July 2020, Patent Owner sued Bose and Petitioner, separately, in the
`
`- 3 -
`
`

`

`
`Western District of Texas for infringing the ’025 Patent (as well as other patents
`
`IPR2022-00053
`Patent Owner Preliminary Response
`
`owned by Patent Owner). APPLE-1055 (complaint against Bose); APPLE-1129
`
`(complaint against Petitioner).
`
`•
`
`On February 22, 2021, Petitioner filed the First Apple IPR. KOSS-
`
`2005 (Petition from IPR2020-00546).
`
`•
`
`On March 3, 2021, Bose filed the Bose IPR. KOSS-2006 (Petition from
`
`IPR20201-00612). The Bose IPR relied on different prior art than the First Apple
`
`IPR. Compare KOSS-2006 at 24 to KOSS-2005 at 6-7.2
`
`•
`
`On March 17, 2021, Petitioner filed the Second Apple IPR. KOSS-
`
`2007 (Petition from IPR2021-00626). The Second Apple IPR also relied on
`
`different prior art than the Bose IPR. Compare KOSS-2007 at 6-7 to KOSS-2006 at
`
`24. Also, the Second Apple IPR identified the Bose IPR in its listing of related
`
`matters in the mandatory notices. Shown below is an excerpt from Petitioner’s
`
`petition in the Second Apple IPR where Petitioner specifically identified the Bose
`
`IPR. KOSS-2007 at 81. Thus, Petitioner was aware of the Bose IPR at least by
`
`
`2 Page cites herein for exhibits KOSS-2005, KOSS-2006 and KOSS-2007 refer to
`
`the page numbers in the lower left of the pages of these exhibits with the format
`
`“Page __ of __.”
`
`
`- 4 -
`
`

`

`
`March 17, 2021.
`
`IPR2022-00053
`Patent Owner Preliminary Response
`
`
`
`Excerpt, Second Apple IPR petition (KOSS-2007 at 81)
`
`•
`
`At least twice in March 2021, Patent Owner filed, and served on
`
`Petitioner’s counsel, mandatory notices that identified the Bose IPR as having been
`
`filed on March 3, 2021. KOSS-2008; KOSS-2009. Thus, Patent Owner also notified
`
`Petitioner twice about the Bose IPR almost seven months before Petitioner filed the
`
`Third Apple IPR.
`
`•
`
`On September 7, 2021, the Board denied institution of the First Apple
`
`IPR. KOSS-2010.
`
`2011.
`
`•
`
`•
`
`On September 15, 2021, the Board instituted the Bose IPR. KOSS-
`
`On September 30, 2021, the Board denied institution of the Second
`
`Apple IPR. KOSS-2012.
`
`
`- 5 -
`
`

`

`
`
`IPR2022-00053
`Patent Owner Preliminary Response
`
`•
`
`On October 15, 2021, Petitioner filed the Third Apple IPR. IPR2022-
`
`00053, Paper 2. Petitioner concurrently filed the Joinder Motion that seeks to join
`
`this proceeding with Bose’s IPR. IPR2022-00053, Paper 3.
`
`B.
`
`Summary of the Petition for the Third Apple IPR and the Joinder
`Motion
`Petitioner asserted that the Petition for this proceeding is “substantively
`
`identical” to the petition for the Bose IPR. Pet., 4; see also Joinder Motion at 5
`
`(“substantively the same as …”). The grounds and prior art asserted in this
`
`proceeding are identical to the grounds and prior art asserted in the Bose IPR.
`
`Compare Pet., 6 to KOSS-2006 at 24. The declarations are also identical. Compare
`
`APPLE-1003 (Williams Dec.) and APPLE1-1005 (Casali Dec.) to KOSS-2013
`
`(Williams Dec. from Bose IPR) and KOSS-2014 (Casali Dec. from Bose IPR). If
`
`this proceeding is instituted and joined with the Bose IPR, Petitioner has proposed
`
`to assume an “understudy” role in the Bose IPR. Joinder Motion at 8, 11.
`
`Petitioner asserted several times in the Joinder Motion that Petitioner was not
`
`aware of Schrager, the primary reference for Grounds 2A-2F of the Bose IPR when
`
`Petitioner filed the First Apple IPR. At page 3, the Joinder Motion states that “at the
`
`time of filing IPR2021-00546,” that is, the First Apple IPR, Petitioner “was not
`
`aware of the primary reference that forms the basis of Grounds 2A-2F” of the Bose
`
`IPR. Joinder Motion at 3. Later, Petitioner elaborated that it was “not aware of” of
`
`
`- 6 -
`
`

`

`
`Schrager “before Bose filed the 612 Proceeding,” i.e., the Bose IPR. Id., 6. Thus,
`
`IPR2022-00053
`Patent Owner Preliminary Response
`
`Schrager is the only reference that Petitioner identified as not being aware of—even
`
`though the Petitioner had previously cited Schrager to the Office over 100 times in
`
`its own patent applications. KOSS-2002, 10-16.
`
`Moreover, noticeably absent from Petitioner’s Joinder Motion and the petition
`
`for the Third Apple IPR is any mention of what Petitioner knew when Petitioner
`
`filed the Second Apple IPR for the ’025 Patent. The Second Apple IPR was filed
`
`fourteen (14) days after Bose filed the Bose IPR, and Petitioner knew of the Bose
`
`IPR when Petitioner filed the Second Apple IPR, as evidenced by the fact that
`
`Petitioner cited the Bose IPR in its mandatory notices the Second Apple IPR. KOSS-
`
`2007 at 81. Thus, Petitioner knew of, or should have known of, the prior art cited in
`
`the Bose IPR, including Schrager, when it filed the Second Apple IPR. All Petitioner
`
`had to do in the fourteen days between the filings was read the grounds or listing of
`
`exhibits in the petition for the Bose IPR. Even if Petitioner only read to page 2 of
`
`the petition for the Bose IPR, Petitioner would have seen that Schrager was relied
`
`on for some grounds in the Bose IPR. KOSS-2006 at 24.3
`
`
`3 Patent Owner also twice notified Petitioner about the Bose IPR in March 2021.
`
`KOSS-2008; KOSS-2009.
`
`
`- 7 -
`
`

`

`
`
`IPR2022-00053
`Patent Owner Preliminary Response
`
`In addition to the Petitioner’s silence in the Joinder Motion regarding what
`
`Petitioner knew when it filed the Second Apple IPR, the mandatory notices in the
`
`Petition for this proceeding are so riddled with errors that they effectively disguise
`
`that fact that Petitioner filed two prior IPRs for the ’025 Patent. Exhibit KOSS-2001
`
`is an annotated version of page 2 of the Petition, where Petitioner identified other
`
`IPRs involving the ’025 Patent and patents related thereto. Petitioner referenced the
`
`’025 Patent three times, indicated by ①, ②, and ③ in KOSS-2001. However, only
`
`one of the three prior IPRs was identified correctly (Second Apple IPR in Citation
`
`(3)) leaving the reader unsure as to how many IPRs for the ’025 Patent were filed by
`
`the different parties and which of those IPRs are pending. More specifically, both
`
`Citation (1) and Citation (3) list the Second Apple IPR by case number and filing
`
`date, IPR2021-00626, filed March 17, 2021. Citation (1) incorrectly attributes
`
`IPR2021-00626 to Bose whereas Citation (3) accurately attributes IPR2021-00626
`
`to Petitioner. Moreover, Citation (1) is allegedly associated with the “one pending
`
`inter partes review proceeding involving the ’025 patent,” but the case number and
`
`filing date correspond to the Second Apple IPR, which was not pending because
`
`institution was denied. KOSS-2012. The First Apple IPR, IPR2021-00546, filed
`
`February 22, 2021, is excluded entirely from the mandatory notices. Mistakes
`
`continue with respect to Citation (2), which correctly identifies the Bose IPR by
`
`
`- 8 -
`
`

`

`
`party, case number, and filing date, but fails to list that IPR among the “pending”
`
`IPR2022-00053
`Patent Owner Preliminary Response
`
`IPRs involving the ’025 Patent.
`
`The net result of Petitioner’s error-riddled mandatory notices is that only one
`
`IPR for the ‘025 Patent is listed as being filed by Petitioner (the Second Apple IPR
`
`at Citation (3)) when in fact Petitioner filed two prior IPRs for the ’025 Patent,
`
`neither of which was instituted. KOSS-2010; KOSS-2012.
`
`C.
`Summary of ’025 Patent
`Details about the ’025 Patent are summarized in the prior institution decisions
`
`for the ’025 Patent. See KOSS-2010 at 4-6; KOSS-2011 at 4-6; KOSS-2012 at 4-6.
`
`III. THE PETITION SHOULD BE DENIED DISCRETIONARILY
`UNDER GENERAL PLASTIC
`A. Applicable Legal Principles
`That Petitioner seeks to join the Bose IPR does not obligate the Board to
`
`institute this proceeding without first considering whether to exercise its discretion
`
`under 35 U.S.C. § 314(a). See Apple Inc. v. Uniloc 2017 LLC, IPR2020-00854,
`
`Paper 9 at 4-5 (PTAB Oct. 28, 2020) (“Uniloc”). The “discretion of the Director to
`
`join a party to an ongoing IPR is premised on the Director’s determination that the
`
`petition warrants institution.” Uniloc, Paper 9 at 5 (citing 35 U.S.C. § 315(c)).
`
`In General Plastic, the Board recognized “the potential for abuse of the review
`
`process by repeated attacks on patents.” General Plastic, Paper 19 at 16-17. The
`
`
`- 9 -
`
`

`

`
`July 2019 Office Trial Practice Guide Update provides that “one petition should be
`
`IPR2022-00053
`Patent Owner Preliminary Response
`
`sufficient to challenge the claims of a patent in most situations.” 84 Fed. Reg. 33,925
`
`(July 16, 2019) at 26. When faced with serial petitions challenging the same patent,
`
`the Board considers several non-exhaustive factors, the “General Plastic factors,” in
`
`determining whether to exercise its discretion under § 314(a). General Plastic,
`
`Paper 19 at 15–16.
`
`In Uniloc, the Board relied on General Plastic to deny institution where
`
`petitioner sought to join an already-instituted IPR. The petitioner, again Apple, filed
`
`an initial petition against U.S. Patent No. 6,467,088, the “Uniloc patent,” in October
`
`2018, which petition was denied in April 2019. Uniloc at 5-6. Later, in October
`
`2019, Microsoft filed an IPR against the Uniloc patent, which petition was granted
`
`on April 14, 2020. Id. at 6. Nine days later, on April 23, 2020, Apple filed a second
`
`IPR for the Uniloc patent together with a joinder motion seeking to join the
`
`Microsoft IPR. Like in this IPR, Apple sought an understudy rule in the Microsoft
`
`IPR. Id. at 4. The Board in Uniloc denied institution of Apple’s second petition for
`
`the Uniloc patent after “a holistic review of the General Plastic factors ….” Id. at
`
`13.
`
`The Petition in this proceeding is Petitioner’s third IPR petition for the ‘025
`
`Patent. Petitioner filed the First Apple IPR on February 22, 2021 and the Second
`
`
`- 10 -
`
`

`

`
`Apple IPR on March 17, 2021. KOSS-2005; KOSS-2007. Petitioner filed the
`
`IPR2022-00053
`Patent Owner Preliminary Response
`
`petition for this proceeding on October 15, 2021, which is about seven months after
`
`Petitioner filed the First and Second Apple IPRs. This proceeding relies on the same
`
`grounds and evidence as the Bose IPR, which was filed March 3, 2021, which is
`
`fourteen days prior to the filing of the Second Apple IPR.
`
`As demonstrated below, the General Plastic factors show that institution of
`
`this proceeding should be denied because it “frustrate[s] the purpose of the [AIA] as
`
`providing quick and cost effective alternatives to litigation.” General Plastic, Paper
`
`19 at 17 (quoting H.R. Rep. No. 112-98, pt. 1, at 48 (2011)). Allowing Petitioner a
`
`third bite at the apple is exactly the “kind of serial attack that General Plastic was
`
`intended to address.” Uniloc at 4.
`
`B. Analysis of General Plastic Factors
`1.
`Factor 1: Whether the Same Petitioner Previously Filed a
`Petition Directed to the Same Claims of the Same Patent
`The ’025 Patent includes fifty six (56) claims. The First and Second Apple
`
`IPRs, collectively challenged all claims of the ’025 Patent except claim 7. See
`
`KOSS-2005 at 6-7; KOSS-2007 at 6-7. This proceeding challenges all 56 claims.
`
`Pet., 6. Thus, there is substantial overlap between the claims challenged by, on one
`
`hand, the First and Second Apple IPRs, collectively, and, on the other hand, the
`
`challenged claims in this proceeding.
`
`
`- 11 -
`
`

`

`
`
`IPR2022-00053
`Patent Owner Preliminary Response
`
`There is also substantial overlap if Petitioner’s two prior IPRs are considered
`
`individually. The First Apple IPR challenged 35 of the claims (KOSS-2005 at 6-7),
`
`all of which are challenged in this proceeding. Similarly, the Second Apple IPR
`
`challenged 42 of the claims (KOSS-2007 at 6-7), all of which are challenged in this
`
`proceeding.
`
`That Petitioner seeks an understudy role is inconsequential for this factor.
`
`Uniloc at 8. Thus, Factor 1 favors denying institution due to the substantial overlap.
`
`2.
`
`Factor 2: Whether at the Time of Filing of the Earlier Petitions
`the Petitioner Knew of the Prior Art Asserted in the Later
`Petition or Should Have Known of It
`The General Plastic case involved an initial IPR petition for each of two
`
`patents, followed by, after denial of the initial IPR petitions, a series of later “follow-
`
`on” petitions against each of the two patents. General Plastic, Paper 19 at 6-8. Thus,
`
`Factor 2 in General Plastic focused on what the petitioner knew when it filed the
`
`initial petitions, i.e., whether it knew or should have known of the prior art asserted
`
`in the later “follow-on” petitions. General Plastic, Paper 19 at 19-20. Here,
`
`Petitioner is on its third petition for the ’025 Patent. The relevant inquiries under
`
`Factor 2, therefore, are what did Petitioner know when it filed the First Apple IPR
`
`on February 22, 2021 (KOSS-2005) and what did it know when it filed the Second
`
`Apple IPR on March 17, 2021 (KOSS-2007). Patent Owner addresses both
`
`questions below in reverse order.
`
`
`- 12 -
`
`

`

`
`
`IPR2022-00053
`Patent Owner Preliminary Response
`
`a. What Petitioner Knew, or Should Have Known, When it
`Filed the Second Apple IPR Petition
`
`Petitioner clearly knew of, or should have known of, the prior art cited in this
`
`proceeding at the time it filed the Second Apple IPR because the prior art was cited
`
`in the Bose IPR, which was filed March 3, 2021 (KOSS-2006), i.e. fourteen days
`
`before Petitioner filed the Second Apple IPR (KOSS-2007). Petitioner knew of the
`
`Bose IPR at the time Petitioner filed the Second Apple IPR, as evidenced by the fact
`
`that Petitioner cited the Bose IPR in its mandatory notices for in the Second Apple
`
`IPR. KOSS-2007 at 81. Petitioner only had to read the exhibit listing and/or the
`
`summary of asserted grounds in the petition for the Bose IPR (KOSS-2006) to see
`
`the prior art cited and/or relied upon by Bose therein. The Bose IPR would have
`
`been publically available on the E2E website and other public docket reporting
`
`websites prior to the time that Petitioner filed the Second Apple IPR petition because
`
`the Bose IPR was filed fourteen days before the Second Apple IPR petition was filed.
`
`Thus, Petitioner knew of or should have known of the prior art cited in this
`
`proceeding at the time the petition for the Second Apple IPR was filed. Indeed,
`
`Petitioner’s Joinder Motion does not deny that it knew of the prior art at the time it
`
`filed the Second Apple IPR. The Joinder Motion is suspiciously silent on what
`
`Petitioner knew when it filed the Second Apple IPR petition, presumably because
`
`Petitioner knew of Schrager at that time. Instead, the Joinder Motion only focuses
`
`
`- 13 -
`
`

`

`
`on what Petitioner knew when it filed the petition for the First Apple IPR. Joinder
`
`IPR2022-00053
`Patent Owner Preliminary Response
`
`Motion at 3 (“at the time of filing IPR2021-00546 and until Bose filed the 612
`
`Proceeding, Apple was not aware of the primary reference that forms the basis of
`
`Grounds 2A-2F of the 612 Proceeding …”); 6 (Petitioner asserting that it was not
`
`aware of Schrager “before Bose filed the 612 Proceeding”). The Joinder Motion
`
`improperly focused solely on what Petitioner knew when the Bose IPR petition was
`
`filed due to Petitioner’s mischaracterization of the Board’s ruling in Uniloc, as
`
`explained below.
`
`b. What Petitioner Knew, or Should Have Known, When it
`Filed the First Apple IPR Petition
`
`Petitioner asserted that it “was not aware of the primary reference that forms
`
`the basis of Grounds 2A-2F” of the Bose IPR. Joinder Motion at 3. That primary
`
`reference is U.S. Patent No. 7,072,686 (“Schrager”). Id. at 6. Moreover, Schrager
`
`is the only reference cited in the Bose IPR that Petitioner identified as not being
`
`aware of when it filed the First Apple IPR. The relevant issue under Factor 2,
`
`therefore, is whether Petitioner knew of, or could have found with reasonable
`
`diligence, Schrager when it filed the First Apple IPR. General Plastic, Paper 19 at
`
`20.
`
`As shown in Section II.A above, Petitioner’s assertion that it was not aware
`
`of Schrager when it filed the First Apple IPR is not credible. By the time it filed the
`
`
`- 14 -
`
`

`

`
`First Apple IPR, Petitioner had cited Schrager to the Office over 100 times in its own
`
`IPR2022-00053
`Patent Owner Preliminary Response
`
`patent applications. KOSS-2002. Patent Owner’s counsel found this information
`
`searching Google Patents (patents.google.com), which searching took as long as it
`
`took to type in the seven digits of the Schrager patent number and scroll to the
`
`heading “Cited By”. Petitioner provided no explanation why Petitioner could not
`
`have spent a couple seconds to confirm its assertion that it was not aware of Schrager
`
`before filing the First Apple IPR petition.
`
`In any event, Petitioner’s Joinder Motion offered no explanation for why it
`
`could not have known of Schrager when it filed the petition for the First Apple IPR.
`
`Instead, Petitioner merely asserted that Petitioner’s initial invalidity contentions in a
`
`lawsuit involving the ’025 Patent,4 which were served prior to the filing of the Bose
`
`IPR, did not cite Schrager. Joinder Motion at 6. Petitioner did not explain why Bose
`
`was able to find Schrager and Petitioner was not. The fact that Bose found Schrager
`
`shows that Schrager could be found through a reasonable search. Indeed, Schrager
`
`is a relatively recent U.S. patent (it issued in 2006, APPLE-1101), so its contents are
`
`
`4 Petitioner did not identify the lawsuit where the invalidity contentions were served,
`
`but presumably it was in Koss Corp. v. Apple Inc., Case No. 6-20-cv-00665 (W.D.
`
`Tex.).
`
`
`- 15 -
`
`

`

`
`electronically searchable on most patent searching websites. The U.S. Patent and
`
`IPR2022-00053
`Patent Owner Preliminary Response
`
`Trademark Office website, for example, allows full text searching for patents issued
`
`after 1976. See www.uspto.gov/patents/search#heading-1 (“Patents may be
`
`searched in the USPTO Patent Full-Text and Image Database (PatFT). The USPTO
`
`houses full text for patents issued from 1976 to the present …”).
`
`For at least these reasons, Factor 2 strongly favors denying institution. The
`
`fact that Petitioner seeks merely an understudy role does not alter the analysis.
`
`Uniloc at 9.
`
`3.
`
`Factor 3: Whether at the Time of Filing of the Follow-On
`Petition the Petitioner Already Received the Patent Owner’s
`Preliminary Response to the Initial Petition or Received the
`Board’s Decision on Whether to Institute Review of the Initial
`Petition
`Factor 3 weighs strongly in favor of denying institution. This proceeding was
`
`filed October 15, 2021. Prior to that, Patent Owner had filed, and Petitioner had
`
`received, the Patent Owner Preliminary Responses for both the First and Second
`
`Apple IPRs. KOSS-2010 at 2 (stating that Patent Owner filed a Preliminary
`
`Response for the 546 Proceeding); KOSS-2012 at 2 (same for the 626 Proceeding).
`
`Also, prior to October 15, 2021, the Board denied institution of both the First and
`
`Second Apple IPRs. KOSS-2010; KOSS-2012.
`
`Petitioner asserted that because the Bose IPR was filed so close in time to the
`
`filing of the First Apple IPR, Patent Owner is not prejudiced. Joinder Motion at 7-
`
`- 16 -
`
`

`

`
`8. However, just like in Uniloc, Petitioner had institution decisions for both the First
`
`IPR2022-00053
`Patent Owner Preliminary Response
`
`and Second Apple IPRs when it filed this follow-on IPR proceeding. Just like in
`
`Uniloc, “the third General Plastic factor weighs in favor of denying institution of
`
`the proceeding.” Uniloc at 10.
`
`4.
`
`Factor 4: The Length of Time that Elapsed Between the Time
`the Petitioner Learned of the Prior Art Asserted in the Follow-
`On Petition and the Filing of the Follow-On Petition
`The only prior art relied upon in this proceeding that Petitioner asserted it did
`
`not know of when it filed its petition for the First Apple IPR is Schrager. Joinder
`
`Motion at 6. Petitioner does not state when it learned of Schrager, but it was aware
`
`of the Bose IPR that relied upon Schrager at least by March 17, 2022, when
`
`Petitioner filed the petition for the Second Apple IPR, as evidenced by Petitioner’s
`
`citation to the Bose IPR in its mandatory notices for the Second Apple IPR. KOSS-
`
`2007 at 81.
`
`In fact, Petitioner has been abundantly aware of Schrager since 2014. KOSS-
`
`2002, 10-16; KOSS-2003 at 20; KOSS-2004 at 107. However, even if Petitioner’s
`
`assertion that it was not aware of Schrager when it filed the First Apple IPR petition
`
`in February 2021 is tenable, Petitioner still knew of Schrager, and how Bose relied
`
`on Schrager in the Bose IPR, for more than seven months prior to filing the petition
`
`in this proceeding (from March 3, 2021, when the Bose IPR was filed, to October
`
`15, 2021, when the Petitioner for this proceeding was filed). Petitioner offered no
`
`- 17 -
`
`

`

`
`explanation for why it waited seven months after Bose filed its petition to file the
`
`IPR2022-00053
`Patent Owner Preliminary Response
`
`petition in this proceeding. Petitioner’s failure to provide any explanation for the
`
`delay weighs strongly in favor of denying institution. See Apple Inc. v.
`
`Corephotonics Ltd., IPR2018-01356, Paper 9 at 8 (PTAB Feb. 5, 2019) (“To the
`
`extent a reasonable explanation exists for Petitioner’s d