Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 10
`Entered: April 4, 2022
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`KOSS CORPORATION,
`Patent Owner.
`
`
`IPR2022-00053
`Patent 10,206,025 B2
`
`
`Before PATRICK R. SCANLON, DAVID C. MCKONE,
`and NORMAN H. BEAMER, Administrative Patent Judges.
`
`BEAMER, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`Denying Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper 10
`Entered: April 4, 2022
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`KOSS CORPORATION,
`Patent Owner.
`
`
`IPR2022-00053
`Patent 10,206,025 B2
`
`
`Before PATRICK R. SCANLON, DAVID C. MCKONE,
`and NORMAN H. BEAMER, Administrative Patent Judges.
`
`BEAMER, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`Denying Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`
`
`IPR2022-00053
`Patent 10,206,025 B2
`
`
`INTRODUCTION
`I.
`On December 15, 2021, Apple, Inc. (“Petitioner”) filed a Petition
`(“Pet.”) pursuant to 35 U.S.C. §§ 311–319 to institute an inter partes review
`of claims 1–56 of U.S. Patent No. 10,206,025 B2 (Ex. 1001, “the ’025
`patent”). Paper 2. Petitioner also filed a Motion For Joinder (“Mot.”)
`pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), seeking to join
`the proceeding with Bose Corporation v. Koss Corporation, IPR2021-00612
`(“IPR612”). Paper 3. On January 13, 2022, Koss Corporation (“Patent
`Owner”) filed a Preliminary Response (“Prelim. Resp.”), which included an
`opposition to the Motion For Joinder. Paper 8.
`The standard for instituting an inter partes review is set forth in
`35 U.S.C. § 314(a), which provides that an inter partes review may not be
`instituted unless the information presented in the Petition and any
`preliminary response shows that “there is a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.”
`For the reasons described below, we do not institute an inter partes
`review of the challenged claims and deny Petitioner’s Motion For Joinder.
`
`II. RELATED PROCEEDINGS
`As the parties indicate, the ’025 patent is the subject, inter alia, of
`several court proceedings, in particular including district court actions with
`allegations of infringement of the ’025 patent filed July 22, 2020 against
`Petitioner and Bose.1 Pet. 2; Prelim. Resp. 8; Paper 5, 1–2.
`
`
`1 Koss Corp. v. Apple Inc., 6:20-cv-00665 (WD Tex.); Koss Corp. v. Bose
`Corp., 6:20-cv-00661 (WD Tex.). Exs. 1121, 1055.
`2
`
`
`
`
`
`IPR2022-00053
`Patent 10,206,025 B2
`
`
`Also, in regard to the above-referenced IPR612 proceeding, Bose filed
`the IPR612 petition challenging the ’053 patent on March 3, 2021. IPR612,
`Paper 2. The Board granted that petition and instituted IPR612 on
`September 15, 2021. IPR612, Paper 15 (PTAB Sept. 15, 2021) (“IPR612
`Decision” or “IPR612 Dec.”).
`In addition, Petitioner has filed two prior petitions for inter partes
`review. Pet. 10; Paper 5, 2. In particular, the ’025 patent was the subject of
`Apple Inc. v. Koss Corp., IPR2021-00546 (“IPR546”), filed February 22,
`2021, and Apple Inc. v. Koss Corp., IPR2021-00626 (“IPR626”), filed
`March 17, 2021. IPR546, Paper 2; IPR626, Paper 3. On September 7 and
`30, 2021, respectively, the Board issued decisions not to institute inter
`partes review because the evidence and arguments presented failed to meet
`substantively the reasonable likelihood threshold required for institution.
`IPR546, Paper 10; IPR626, Paper 10.
`We further note that, in the timeline of events, after July 22, 2021,
`Petitioner would have been barred from filing any further petitions (absent
`an accompanying joinder motion) against the ’053 patent because, as
`referenced above, Patent Owner had served Petitioner with a district court
`complaint alleging infringement of the ’025 patent one year prior to that
`date. See 35 U.S.C. § 315(b).
`
`
`
`3
`
`
`
`IPR2022-00053
`Patent 10,206,025 B2
`
`
`35 U.S.C. §
`
`103(a)
`
`III. WHETHER TO INSTITUTE INTER PARTES REVIEW
`In the Bose IPR612, we instituted an inter partes review of all claims
`(claims 1−56) of the ’025 patent based on the following asserted prior art
`and grounds:2
`Claim(s) Challenged
`1–3, 6, 8, 11–13, 16,
`18, 20–22, 25, 27, 39,
`52, 54–56
`4, 5, 7, 9, 14, 15, 17,
`19, 23, 24, 26, 28
`10, 38
`
`103(a)
`
`103(a)
`
`29–31, 34, 36, 53
`
`32, 33, 35, 37
`
`40–43, 46, 48
`
`44, 45, 47, 49, 50
`
`103(a)
`
`103(a)
`
`103(a)
`
`103(a)
`
`Reference(s)/Basis
`Rezvani-446,3 Rezvani-875.4
`Skulley5
`Rezvani-446, Rezvani-875,
`Skulley, Harada6
`Rezvani-446, Rezvani-875,
`Skulley, Hind7
`Rezvani-446, Rezvani-875,
`Skulley, Davis8
`Rezvani-446, Rezvani-875,
`Skulley, Davis, Harada
`Rezvani-446, Rezvani-875,
`Skulley, Davis, Oh9
`Rezvani-446, Rezvani-875,
`Skulley, Davis, Oh, Harada
`
`
`2 Because the application leading to the ’053 patent was filed before March
`16, 2013, our patentability analysis was governed by the version of 35
`U.S.C. § 103 preceding the Leahy-Smith America Invents Act (“AIA”),
`Pub L. No. 112–29, 125 Stat. 284 (2011).
`3 US 2007/0136446 A1, published June 14, 2007 (IPR612, Ex. 1097).
`4 US 2007/0165875 A1, published July 19, 2007 (IPR612, Ex. 1016).
`5 US 6,856,690 B1, issued Feb. 15, 2005 (IPR612, Ex. 1017).
`6 US 2006/0229014 A1, published Oct. 12, 2006 (IPR612, Ex. 1098).
`7 US 7,069,452 B1, issued June 27, 2006 (IPR612, Ex. 1019).
`8 US 5,761,298, issued June 2, 1998 (IPR612, Ex. 1033).
`9 WO 2006/098584 A1, published Sept. 21, 2006 (IPR612, Ex. 1099).
`4
`
`
`
`
`
`IPR2022-00053
`Patent 10,206,025 B2
`
`
`Claim(s) Challenged
`51
`1–3, 6, 8, 10–13, 16,
`18, 38–43, 46, 48, 51,
`52, 54, 56
`4, 5, 7, 9, 14, 15, 17,
`19, 23, 24, 26, 28, 44,
`45, 47, 49, 50
`29–31, 34, 36, 51, 53,
`55
`32, 33, 35, 37
`20–22, 25, 27, 39,
`54–56
`23, 24, 26, 28
`
`35 U.S.C. §
`103(a)
`
`Reference(s)/Basis
`Rezvani-446, Rezvani-875,
`Skulley, Davis, Oh, Hind
`
`103(a)
`
`103(a)
`
`103(a)
`
`103(a)
`
`103(a)
`
`103(a)
`
`Schrager,10 Goldstein11
`
`Schrager, Goldstein, Harada
`
`Schrager, Goldstein, Davis
`Schrager, Goldstein, Davis,
`Harada
`Schrager, Goldstein, Skulley
`Schrager, Goldstein, Skulley,
`Harada
`
`IPR612 Dec. 8–9. The Petition in this proceeding asserts the same grounds
`of unpatentability as those upon which we instituted review in IPR612.
`Pet. 6.
`Petitioner contends that “[t]he Joinder Petition is substantively the
`same as the petition filed in the 612 Proceeding,” and Patent Owner agrees
`that “[t]he grounds and prior art asserted in this proceeding are identical to
`the grounds and prior art asserted in the Bose IPR.” Mot. 5; Prelim. Resp. 6.
`We agree that the Petition here asserts challenges and evidence identical to
`those asserted in the IPR612. Having already considered the merits of those
`challenges and evidence vis-à-vis the threshold of institution for inter partes
`review in our IPR612 Decision, we would determine that the Petition here
`
`
`10 US 7,072,686 B1, issued July 4, 2006 (IPR612, Ex. 1101).
`11 US 2008/0031475 A1, published Feb. 7, 2008 (IPR612, Ex. 1026).
`5
`
`
`
`
`
`IPR2022-00053
`Patent 10,206,025 B2
`
`also presents a reasonable likelihood of prevailing on the challenge of at
`least one claim of the ’053 patent.
`Notwithstanding the merits, however, Patent Owner argues that we
`should exercise our discretion to deny institution under 35 U.S.C. § 314(a)
`and, accordingly, deny joinder, citing and discussing the General Plastic
`factors. Prelim. Resp. 1, 11–20 (citing General Plastic Indust. Co., Ltd. v.
`Canon Kabushiki Kaisha, IPR2016- 01357, Paper 19 at 16 (PTAB Sept. 6,
`2017) (precedential as to § II.B.4.i) (“General Plastic”)). However,
`Petitioner argues that the General Plastic factors support granting joinder,
`given that Petitioner seeks to join as a party to IPR612 and take an inactive
`or understudy role. Mot. 6–12.
`As explained in further detail below, Petitioner’s understudy argument
`is not persuasive here where the copied Petition is Petitioner’s third
`challenge to the patent, and should Bose settle, Petitioner would stand in to
`continue a proceeding that would otherwise be terminated. This would be
`the kind of serial attack that General Plastic was intended to address.
`General Plastic, Paper 19 at 17 (“Multiple, staggered petitions challenging
`the same patent and same claims raise the potential for abuse.”).
`As established in Apple Inc. v. Uniloc 2017 LLC, IPR2020-00854,
`Paper 9 at 4–5 (PTAB Oct. 28, 2020) (precedential) (“Uniloc”), that
`Petitioner seeks to join IPR612 does not obligate us to institute this
`proceeding without first considering whether to exercise discretion under
`Section 314(a). The statutory provision governing joinder in inter partes
`review proceedings is 35 U.S.C. § 315(c), which reads:
`If the Director institutes an inter partes review, the Director, in
`his or her discretion, may join as a party to that inter partes
`review any person who properly files a petition under section 311
`6
`
`
`
`
`
`IPR2022-00053
`Patent 10,206,025 B2
`
`
`that the Director, after receiving a preliminary response under
`section 313 or the expiration of the time for filing such a
`response, determines warrants the institution of an inter partes
`review under section 314.
`See also Facebook, Inc. v. Windy City Innov., LLC, 973 F.3d 1321, 1332
`(Fed. Cir. 2020) (determining that § 315(c) requires “two different
`decisions,” first “whether the joinder applicant’s petition for IPR ‘warrants’
`institution under § 314,” and then whether to “exercise . . . discretion to
`decide whether to ‘join as a party’ the joinder applicant”). Under 35 U.S.C.
`§ 315(c), 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. That determination is not limited to determining whether the
`merits of the petition meet the reasonable likelihood threshold for at least
`one challenged claim. Under General Plastic, the Board may deny a
`petition based on the Director’s discretionary authority of § 314(a). General
`Plastic, Paper 19 at 15. Thus, before determining whether to join Petitioner
`as a party to IPR612, even though the Petition is a “me-too petition,” we first
`determine whether application of the General Plastic factors warrants the
`exercise of discretion to deny the Petition under Section 314(a).
`
`A. General Plastic Factors
`In General Plastic, the Board recognized certain goals of the AIA but
`also “recognize[d] the potential for abuse of the review process by repeated
`attacks on patents.” General Plastic, Paper 19 at 16–17. The Board’s
`decision in General Plastic articulates a non-exhaustive list of factors to be
`considered in evaluating whether to exercise discretion, under 35 U.S.C.
`
`
`
`7
`
`
`
`IPR2022-00053
`Patent 10,206,025 B2
`
`§ 314(a), to deny a petition that challenges a patent that was previously
`challenged before the Board. These factors are:
`1. whether the same petitioner previously filed a petition directed
`to the same claims of the same patent;
`2. whether at the time of filing of the first petition the petitioner
`knew of the prior art asserted in the second petition or
`should have known of it;
`3. whether at the time of filing of the second petition the
`petitioner already received the patent owner’s preliminary
`response to the first petition or received the Board’s
`decision on whether to institute review in the first petition;
`4. the length of time that elapsed between the time the petitioner
`learned of the prior art asserted in the second petition and
`the filing of the second petition;
`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;
`6. the finite resources of the Board; and
`7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final
`determination not later than 1 year after the date on which
`the Director notices institution of review.
`
`General Plastic, Paper 19 at 9−10.
`
`B. Assessment of the Factors
`The Petition in the instant proceeding is undeniably the third petition
`Petitioner has filed challenging the ’053 patent. Patent Owner urges that we
`exercise discretion to deny the Petition and deny joinder because of
`Petitioner’s repeated challenges and because, in the year since the denial of
`the first petition, Petitioner has had the benefit of Patent Owner’s filings in
`prior IPRs, and Petitioner has failed to explain the timing of its third petition
`
`
`
`8
`
`
`
`IPR2022-00053
`Patent 10,206,025 B2
`
`and its knowledge of the asserted prior art. Prelim. Resp. 1–2, 16–17.
`Accordingly, we address each of the factors below.
`
`1. “whether the same petitioner previously filed a petition directed to the
`same claims of the same patent”
`As stated above, this is the third petition Petitioner has filed
`challenging the claims of the ’053 patent. Prelim. Resp. 1. Collectively, the
`first two Petitions challenged all but claim 7 of the ’053 patent. IPR546,
`Paper 2, 1–2; IPR626, Paper 3, 1–2; Prelim. Resp. 11–12. Here, in
`Petitioner’s third petition, Petitioner challenges all of the ’053 claims (1–56).
`Pet. 6.
`The fact that Petitioner would undertake an “understudy” role in the
`IPR612 does not affect this factor. Uniloc, Paper 9 at 8. As stated earlier,
`the General Plastic factors are relevant to our determination whether denial
`is warranted under § 314(a), even when the petition filed is a follow-on
`petition and Petitioner is not seeking an active role in the ongoing IPR.
`Accordingly, there is an almost total overlap in challenged claims, and we
`conclude that this first General Plastic factor weighs in favor of denying
`institution of the proceeding.
`
`2. “whether at the time of filing of the first [two] petition[s] the petitioner
`knew of the prior art asserted in the [third] petition or should have
`known of it”12
`Petitioner asserts that it was not aware of U.S. Patent No. 7,072,686
`B1 (“Schrager”), the primary reference that forms the basis of six of the
`fourteen grounds of IPR612, when it filed its IPR546 Petition. Mot. 3, 6.
`
`
`12 Our restatement of the General Plastic factors reflects, where applicable,
`the fact that two prior Petitions were filed.
`9
`
`
`
`
`
`IPR2022-00053
`Patent 10,206,025 B2
`
`Petitioner does not represent that it was unaware of the other eight
`references relied on by Bose in IPR612, including for the eight grounds not
`involving Schrager. Petitioner also does not dispute that it was aware of
`Schrager, and Bose’s reliance on that reference, when it filed its second
`IPR626 Petition on March 17, 2021, fourteen days after Bose filed its
`IPR612 Petition.
`Patent Owner argues that Petitioner “clearly knew” of the prior art
`cited here at the time it filed its second IPR626, and maintains that
`Petitioner’s assertion that it was unaware of Schrager when it filed its first
`IPR546 Petition “is not credible.” Prelim. Resp. 13–14. Patent Owner
`submits evidence that Petitioner had previously cited the Schrager reference
`to the Patent Office “over 100 times in its own patent applications.” Id. at 3,
`7, 15 (citing Ex. 2002, 10–16; Ex. 2003, 20; Ex. 2004, 107). Patent Owner
`further argues that Petitioner has not explained why it could not have known
`of the Schrager reference via a reasonable search when it filed its first
`Petition. Id. at 15–16.
`We agree with Patent Owner that Petitioner has not adequately
`explained why it should not have known of the Schrager reference prior to
`filing its first Petition. Although the fact that Petitioner had cited the
`Schrager reference on numerous previous occasions does not give rise to an
`inference that those involved on Petitioner’s behalf here were actually aware
`of the reference, it is indicative that Petitioner should have known of the
`reference. In any event, Petitioner was aware of Schrager when the second
`Petition was filed. Moreover, Schrager was only one of nine references,
`used for only six of fourteen grounds, forming the basis of the current, third,
`
`
`
`10
`
`
`
`IPR2022-00053
`Patent 10,206,025 B2
`
`Petition. We conclude that this second General Plastic factor weighs in
`favor of denying institution of the proceeding.
`
`3. “whether at the time of filing of the [third] petition the petitioner
`already received the patent owner’s preliminary response[s] to the first
`[two] petition[s] or received the Board’s decision[s] on whether to
`institute review in the first [two] petition[s]”
`The Preliminary Responses for IPR546 and IPR612 were filed
`June 10 and July 9, 2021, respectively — over three to four months before
`the present Petition was filed. IPR546, Paper 8; IPR626, Paper 8. The
`decisions not to institute inter partes review were entered on September 7
`and 30, 2021, respectively — also prior to this Petition. IPR546, Paper 10;
`IPR626, Paper 10.
`Petitioner argues that Bose filed the IPR612 Petition “just nine days
`after [Petitioner] filed its IPR546 Petition], which is so close in time as to be
`all but indistinguishable procedurally from a simultaneously-filed petition,”
`which therefore “could not reasonably have provided Bose substantial
`benefit in preparing its petition.” Mot. 7.
`Petitioner’s argument is unpersuasive because the third General
`Plastic factor addresses whether Petitioner had access to a Board decision or
`a preliminary response concerning prior petitions, such that Petitioner would
`have been in a position to gain a benefit from having that information before
`filing its third petition. The timing of events here shows that Petitioner
`indeed had the benefit of two Preliminary Responses and two Board
`decisions concerning its prior petitions. Consequently, we conclude that the
`third General Plastic factor weighs in favor of denying institution of the
`proceeding.
`
`
`
`11
`
`
`
`IPR2022-00053
`Patent 10,206,025 B2
`
`4. “the length of time that elapsed between the time the petitioner learned
`of the prior art asserted in the [third] petition and the filing of the
`[third] petition”
`As discussed above, Petitioner was aware of the prior art asserted here
`at least by the time Bose filed the IPR612 Petition on March 3, 2021 —
`more than seven months prior to filing the present Petition. Prelim.
`Resp. 17.
`Petitioner argues that “the period of time between Bose’s filing of the
`612 Proceeding and [Petitioner’s] filing of the present petition and motion
`for joinder should not be relevant, as it does not affect the schedule of the
`612 Proceeding or substantially prejudice [Patent Owner].” Mot. 8. Again,
`this argument is not persuasive because, per Uniloc, before determining
`whether to join Petitioner as a party to IPR612, even though the Petition is a
`“me-too petition,” we first determine whether application of the General
`Plastic factors warrants the exercise of discretion to deny the Petition under
`Section 314(a). Uniloc, Paper 9 at 8.
`We conclude that, given the unexplained seven-month delay, this
`fourth General Plastic factor weighs in favor of denying institution of the
`proceeding.
`
`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”
`For the same reasons stated above in connection with the fourth
`General Plastic factor, we conclude that this fifth General Plastic factor also
`weighs in favor of denying institution.
`
`
`
`12
`
`
`
`IPR2022-00053
`Patent 10,206,025 B2
`
`
`6. “the finite resources of the Board”
`Petitioner argues that this last General Plastic factor weighs against
`denial of institution because “this Joinder Petition will not add any new
`substantive issues, delay the schedule, burden deponents, or increase
`needless filings.” Mot. 8.
`However, citing Uniloc, Patent Owner argues “[i]f this proceeding is
`instituted and joined with the Bose IPR, and Bose and Patent Owner settle
`the Bose IPR, ‘Apple would stand in to continue a proceeding that would
`otherwise be terminated,’” which would allow Petitioner to ‘continue a
`proceeding, even after settlement with the primary petitioner [here, Bose],
`based on a [third] attempt by Apple.’” Prelim. Resp. 19 (quoting Uniloc,
`Paper 9 at 12).
`Although a joinder request is ordinarily an efficient mechanism by
`which to become a petitioner in an IPR, in this case, Petitioner’s understudy
`role argument is not persuasive. Rather, we agree with Patent Owner that
`because this is Petitioner’s third petition, should Bose settle, Petitioner
`would stand in to continue a proceeding that would otherwise be terminated.
`Joinder in this circumstance would allow Petitioner to continue a
`proceeding, even after settlement with the primary petitioner, based on a
`third attempt by Petitioner. Therefore, we conclude that this sixth General
`Plastic factor weighs in favor of denying institution of the proceeding.
`
`7. “the requirement under 35 U.S.C. § 316(a)(11) to issue a final
`determination not later than 1 year after the date on which the Director
`notices institution of review”
`Like the sixth General Plastic factor, the seventh factor, “the
`requirement under 35 U.S.C. § 316(a)(11) to issue a final determination not
`
`
`
`13
`
`
`
`IPR2022-00053
`Patent 10,206,025 B2
`
`later than 1 year after the date on which the Director notices institution of
`review,” implicates an efficiency consideration. Because there is no
`evidence or persuasive argument towards this factor, we determine this
`factor’s weight is neutral.
`
`C. Conclusion
`After a holistic review of the General Plastic factors and the
`arguments presented for and against the exercise of discretionary denial, we
`conclude that the factors weigh in favor of denying institution of the
`proceeding. On balance and in view of the policy goals articulated in
`General Plastic, we conclude that it is appropriate here to exercise our
`discretion under 35 U.S.C. § 314(a) to deny the Petition.
`
`IV. DENIAL OF MOTION FOR JOINDER
`As stated above, the Director may join a party to an ongoing IPR only
`if the filed petition warrants institution under § 314. 35 U.S.C. § 315(c).
`Because we are exercising discretion to deny institution under Section 314,
`we deny Petitioner’s Motion for Joinder.
`
`V. ORDER
`
`Accordingly, it is:
`ORDERED that, pursuant to 35 U.S.C. § 314(a), the Petition is
`denied; and
`FURTHER ORDERED that the Motion For Joinder is denied.
`
`
`
`
`
`
`14
`
`
`
`IPR2022-00053
`Patent 10,206,025 B2
`
`PETITIONER:
`W. Karl Renner
`David L. Holt
`Joel A. Henry
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`holt2@fr.com
`jhenry@fr.com
`
`PATENT OWNER:
`
`Mark G. Knedeisen
`K&L GATES LLP
`mark.knedeisen@klgates.com
`
`
`
`
`
`
`
`
`
`
`
`15
`
`
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