`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2022-00053
`Attorney Docket No: 50095-0021IP3
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner
`
`v.
`
`KOSS CORPORATION,
`Patent Owner
`
`Case IPR2022-00053
`Patent 10,206,025
`
`PETITIONER’S MOTION FOR JOINDER
`
`
`
`
`1
`
`
`
`
`Case IPR2022-00053
`Attorney Docket No: 50095-0021IP3
`I.
`STATEMENT OF PRECISE RELIEF REQUESTED
`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Apple Inc.
`
`(“Apple” or “Petitioner”) moves to join the instantly filed petition with the inter
`
`partes review instituted against U.S. Patent No. 10,206,025 (“the ’025 Patent”) in
`
`Bose Corporation v. Koss Corporation, IPR2021-00612 (“the 612 Proceeding”).
`
`This motion is timely filed within one month of the Board’s September 15, 2021
`
`institution decision in the 612 Proceeding.
`
`Joinder will not unduly prejudice any party. To this point, joinder will not
`
`add any new substantive issues, delay the schedule, burden deponents, or increase
`
`needless filings. On the other hand, denial of joinder would severely prejudice
`
`Apple, and subject future litigants to inefficiencies. As to Apple, its interests may
`
`not be adequately protected in the 612 Proceeding, particularly if Bose settles with
`
`Koss. With the Board having already found a reasonable likelihood that the’025
`
`Patent is unpatentable, Koss should not be allowed through denial of joinder to
`
`subvert the efficiency and fairness at the core of these proceedings, which would
`
`otherwise prevent Koss from continuing to assert a patent whose claims have been
`
`found reasonably likely invalid against four other defendants by strategically
`
`settling its case against Bose. Accordingly, Petitioner should be allowed to join in
`
`a proceeding affecting a patent asserted against it.
`
`2
`
`
`
`
`Case IPR2022-00053
`Attorney Docket No: 50095-0021IP3
`II. BACKGROUND AND RELEVANT FACTS
`Koss Corporation (“Koss”) is the purported owner of the ’025 Patent. Koss
`
`asserted the ’025 Patent (and related patents US 10,298,451, US 10,469,934, US
`
`10,506,325, and US 10,491,982) against Apple in Koss Corp. v. Apple Inc., Civil
`
`Action No. 6:20-cv-00665. Koss has also asserted the ’025 Patent against several
`
`other defendants, including Bose Corporation, Skullcandy, Inc., PEAG LLC d/b/a
`
`JLab Audio, and Plantronics, Inc.
`
`On February 22, 2021, Apple filed its first petition against the ’025 Patent in
`
`IPR2021-00546. Nine days later, on March 3, 2021, Bose Corporation
`
`independently filed its own petition against the ’025 Patent in the 612 Proceeding.
`
`The prior art asserted in the 612 Proceeding is entirely different than the prior art
`
`asserted by Apple in IPR2021-00546. Indeed, 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, grounds
`
`that account for nearly half of the petition in the 612 Proceeding. Nor was Apple
`
`aware of the persuasive technical explanations of Drs. Tim Williams and John
`
`Casali supporting all of the grounds in the 612 Proceeding. The 612 Proceeding
`
`and Apple’s IPR2021-00546, were filed so close in time as to be all but
`
`indistinguishable procedurally from simultaneously-filed petitions. And the period
`
`of time between Bose’s filing of the 612 Proceeding and this joinder motion should
`
`3
`
`
`
`
`Case IPR2022-00053
`Attorney Docket No: 50095-0021IP3
`not be relevant, as it does not affect the schedule of the 612 Proceeding or
`
`substantially prejudice Koss.
`
`III. STATEMENT OF REASONS FOR THE RELIEF REQUESTED
`A. Legal Standards and Applicable Rules
`The Board has discretion to join a properly filed IPR petition to an existing
`
`IPR proceeding. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b); see also Dell Inc.
`
`v. Network-1 Sec. Solutions, Inc., IPR2013-00385, Pap. 17 at 4-6 (PTAB Jul. 29
`
`2013); Sony Corp. v. Yissum Res. & Dev. Co. of the Hebrew Univ. of Jerusalem,
`
`IPR2013- 00326, Pap. 15 at 3-4 (PTAB Sep. 24, 2013); Microsoft Corp. v.
`
`Proxyconn, Inc., IPR2013-00109, Pap. 15 at 3-4 (PTAB Feb. 25, 2013). “The
`
`Board will determine whether to grant joinder on a case-by-case basis, taking into
`
`account the particular facts of each case, substantive and procedural issues, and
`
`other considerations.” Dell at 3. The movants bear the burden of proof in
`
`establishing entitlement to the requested relief. 37 §§ 42.20(c), 42.122(b). A
`
`motion for joinder should:
`
`[A] set forth the reasons why joinder is appropriate; [B] identify
`any new grounds of unpatentability asserted in the petition; [C] ex-
`plain what impact (if any) joinder would have on the trial schedule
`for the existing review; and [D] address specifically how briefing
`and discovery may be simplified.
`
`Dell at 4.
`
`4
`
`
`
`
`Case IPR2022-00053
`Attorney Docket No: 50095-0021IP3
`As explained below, Apple’s joinder would be consistent with the goals ex-
`
`pressed in each of the Board’s NHK, Fintiv, Snap, Sotera, General Plastic, and
`
`Uniloc decisions by promoting a maximally-efficient resolution to the dispute be-
`
`tween the parties. See, e.g., General Plastic Indus. Co. v. Cannon Kabushiki Kai-
`
`sha, IPR2016-01357, Pap. 19 at 16 (PTAB Sept. 6, 2017) (precedential) (“In exer-
`
`cising discretion…we are mindful of the goals of the AIA–namely, to improve pa-
`
`tent quality and make the patent system more efficient by the use of post-grant re-
`
`view procedures”); Apple Inc. v. Fintiv, Inc., IPR2020- 00019, Pap. 11 at 6 (PTAB
`
`Mar. 20, 2020) (“the Board takes a holistic view of whether efficiency and integ-
`
`rity of the system are best served by denying or instituting review”).
`
`B.
`Joinder with the 612 Proceeding Is Appropriate
`Apple respectfully submits that joinder with the 612 Proceeding is
`
`appropriate. The Joinder Petition is substantively the same as the petition filed in
`
`the 612 Proceeding. As such, joinder would not require or necessitate changes to
`
`the facts, citations, evidence, or arguments used in demonstrating satisfaction of the
`
`implicated claims by the applied prior art in the 612 Proceeding. Hence, joinder
`
`does not impede the Board from, consistent with 37 C.F.R. § 42.1(b), “secur[ing]
`
`the just, speedy, and inexpensive resolution” of the grounds advanced by Bose in
`
`the 612 Proceeding.
`
`The Board has held that joinder of the type requested here should be
`
`5
`
`
`
`
`Case IPR2022-00053
`Attorney Docket No: 50095-0021IP3
`considered in light of the factors set forth in its precedential General Plastics
`
`decision. Apple Inc. v. Uniloc 2017 LLC, IPR2020-00854, Pap. 9 at 4-7 (PTAB
`
`Oct. 28, 2020) (precedential). The General Plastics factors should be considered
`
`“as if [the second-in-time petitioner] had brought the [additional] challenge to the
`
`patent in the first instance,” and hence, they involve analysis relating to the Bose
`
`petition filing and the Apple petition filing, just weeks before. Id. at 4. That is, in
`
`this case, the General Plastics factors should be evaluated as if Apple filed the 612
`
`Proceeding. From this perspective, the General Plastics factors support granting
`
`joinder, as explained below.
`
`1.
`
`Apple Did Not Know About the Primary Reference
`for Half of the Grounds Brought by Bose (General
`Plastics Factor 2)
`As noted in Section II, Apple was not aware of U.S. Patent No. 7,072,686
`
`(“Schrager”)—the primary reference that forms the basis of Grounds 2A-2F of the
`
`612 Proceeding—before Bose filed the 612 Proceeding. Indeed, none of the initial
`
`invalidity contentions Apple served prior to the filing of the 612 Proceeding cited
`
`to Schrager. The Schrager-based grounds account for 35 pages of the petition in
`
`the 612 Proceeding, nearly half of the substantive portion of the petition.
`
`Further, Apple was not aware of the persuasive technical explanations of
`
`Drs. Tim Williams and John Casali supporting the 612 Proceeding. Indeed, in the
`
`co-pending litigation, expert discovery was still far from completion when Apple
`
`6
`
`
`
`
`Case IPR2022-00053
`Attorney Docket No: 50095-0021IP3
`filed its first ’025 Petition and Bose filed its petition in the 612 Proceeding. The
`
`benefit of these experts’ well-reasoned positions demonstrates in hindsight the effi-
`
`cacy of the grounds set forth in the 612 Proceeding, as evidenced by the Board’s
`
`decision to institute.
`
`2.
`
`The Petition in the 612 Proceeding Was Filed Very
`Close In Time With Apple’s First Petition and the
`Small Gap in Time Between the Two Petitions Did
`Not Prejudice Koss (General Plastics Factors 3-5)
`Bose filed the petition of the 612 Proceeding just nine days after Apple filed
`
`its first ’025 petition (IPR2021-00546), which is so close in time as to be all but in-
`
`distinguishable procedurally from a simultaneously-filed petition. The grounds set
`
`forth in the 612 Proceeding are substantially different from the grounds that were
`
`independently developed in Apple’s first ’025 petition, so the nine days between
`
`the two filings could not reasonably have provided Bose substantial benefit in pre-
`
`paring its petition. Bose certainly did not have access to Koss’s preliminary re-
`
`sponse or the Board’s institution decision when preparing the petition for the 612
`
`Proceeding.
`
`To the contrary, Koss benefited from having all but six days of its three-
`
`month preliminary response period to review both petitions together when prepar-
`
`ing its preliminary responses. APPLE-1136; APPLE-1137. Further, given that
`
`Apple’s first petition was denied, there is even less burden on the Board and Koss.
`
`7
`
`
`
`
`Case IPR2022-00053
`Attorney Docket No: 50095-0021IP3
`Moreover, the period of time between Bose’s filing of the 612 Proceeding
`
`and Apple’s filing of the present petition and motion for joinder should not be rele-
`
`vant, as it does not affect the schedule of the 612 Proceeding or substantially preju-
`
`dice Koss. Because the present petition presents no new issues or evidence and
`
`Apple is proposing that it take an “understudy” role that will not require any latera-
`
`tion to the existing schedule in the 612 Proceeding, the period of time between
`
`Bose’s filing of the 612 Proceeding and Apple’s filing of the present motion for
`
`joinder has no impact of the fairness to Koss. To the contrary, failing to grant this
`
`motion for joinder adversely impacts the integrity of the overall patent system, as it
`
`encourages continued assertion by Koss of claims deemed by this Board reasona-
`
`bly likely invalid, by opportunistically settling its case against Bose in service of
`
`escaping the Board’s expert review of the ’025 Patent.
`
`3.
`
`The 612 Proceeding is the Only Instituted Proceeding
`Against the ’025 Patent and this Motion for Joinder
`Will Not Affect the Resources or Timeline Required
`for its Adjudication (General Plastics Factors 6 and 7)
`As described in greater detail below, this Joinder Petition will not add any
`
`new substantive issues, delay the schedule, burden deponents, or increase needless
`
`filings. The Joinder Petition presents the same grounds based on the same evi-
`
`dence, and Apple proposes taking an understudy role until/unless Bose requests to
`
`withdraw from the 612 Proceeding due to settlement. Thus, in granting this join-
`
`der, the Board will not need to expend any resources in addition to those already
`8
`
`
`
`
`Case IPR2022-00053
`Attorney Docket No: 50095-0021IP3
`committed for adjudicating the instituted 612 Proceeding, nor will it need to alter
`
`the timeline of the 612 Proceeding to account for Apple’s joinder thereto.
`
`4.
`
`The Present Motion for Joinder Distinguishes the
`Board’s Precedential Uniloc Decision
`In Apple Inc. v. Uniloc 2017 LLC, the petitioner was said to have “failed in
`
`its first attempt to challenge the [subject] patent,” and the subsequent attempt to “join
`
`an ongoing proceeding challenging the same patent” was said to have been made
`
`“over a year later and subject to a § 315(b) bar ….” IPR2020-00854, Pap. 9 at 7.
`
`Throughout its decision, the Board notes that it lacked sufficient facts regarding
`
`“the timing of [the] second petition and [the joining petitioner’s] knowledge of the
`
`asserted prior art.” Id. at 8. As explained in the preceding sections, however, Ap-
`
`ple has provided these facts here, explaining that the 612 Proceeding was filed only
`
`nine days after Apple’s first petition and without the benefit of either Koss’s pre-
`
`liminary response in IPR2021-00546 or the Board’s institution decision. Further,
`
`at the time of filing its petitions against the ’025 Patent, Apple was not aware of
`
`the primary reference that forms the basis of Grounds 2A-2F of the 612 Proceed-
`
`ing. Thus, the facts here are substantially different than those present in the
`
`Board’s Uniloc decision.
`
`C.
`
`Joinder Will Not Add Any New Grounds of Unpatentability
`or Impact the Trial Schedule
`For simplicity and efficiency, Apple has copied the substance of the petition
`
`9
`
`
`
`
`Case IPR2022-00053
`Attorney Docket No: 50095-0021IP3
`in the 612 Proceeding and its accompanying expert declarations. Apple does not
`
`seek to introduce grounds or claims not currently in the 612 Proceeding and seeks
`
`only to join the proceeding as instituted. Koss should not require any discovery
`
`beyond that which it may need in the 612 Proceeding— nor should the Board
`
`permit any. The Joinder Petition introduces no new substantive issues relative to
`
`the 612 Proceeding and does not seek to broaden the scope of the 612 Proceeding.
`
`Joinder will not impact the 612 proceeding trial schedule because the present
`
`Petition presents no new issues or grounds of unpatentability. See LG, IPR2015-
`
`01353, Paper No. 11 at 6 (granting IPR and motion for joinder where “joinder should
`
`not necessitate any additional briefing or discovery from Patent Owner beyond that
`
`already required in [the original IPR]”). Further, Apple explicitly consents to the
`
`trial schedule as adopted in the 612 proceeding. There are no new issues for the
`
`Board to address and Koss will not be required to present any additional responses
`
`or arguments.
`
`The Patent Owner’s Response will also not be negatively impacted because
`
`the substantive issues presented in the present Petition are identical to the issues
`
`presented in the 612 Proceeding. Koss will not be required to provide any
`
`additional analysis or arguments beyond what it will already provide in responding
`
`to the petition in the 612 Proceeding. Also, because the present Joinder Petition
`
`relies on the same expert declaration, only a single deposition is needed for the
`
`10
`
`
`
`
`Case IPR2022-00053
`Attorney Docket No: 50095-0021IP3
`
`proposed joined proceeding.
`
`Accordingly, joinder with the 612 Proceeding does not unduly burden or
`
`negatively impact the trial schedule.
`
`D.
`Procedures to Simplify Briefing and Discovery
`Apple explicitly agrees to take an “understudy” role, which will simplify
`
`briefing and discovery. Specifically, Apple explicitly agrees, upon joining the 612
`
`proceeding, that the following conditions, as previously approved by the Board in
`
`similar circumstances, shall apply so long as the current petitioner remains an
`
`active party:
`
`a) all filings by Apple in the 612 Proceeding shall be consolidated with
`
`the filings of Bose, unless a filing concerns issues solely involving Ap-
`
`ple;
`
`b) Apple shall not be permitted to raise any new grounds not instituted
`
`by the Board in the 612 Proceeding, or introduce any argument or
`
`discovery not introduced by Bose;
`
`c) Apple shall be bound by any agreement between Koss and Bose con-
`
`cerning discovery and/or depositions; and
`
`d) Apple at deposition shall not receive any direct, cross examination or
`
`redirect time beyond that permitted under either 37 C.F.R. § 42.53 or
`
`any agreement between Koss and Bose.
`
`11
`
`
`
`
`Case IPR2022-00053
`Attorney Docket No: 50095-0021IP3
`See Noven Pharmaceuticals, Inc. v. Novartis AG, IPR2014-00550, Paper No. 38
`
`at 5 (Apr. 10, 2015). Unless and until Bose ceases to participate, Apple will not
`
`assume an active role in the 612 Proceeding.
`
`Thus, by Apple accepting an “understudy” role, the parties can comply with
`
`the trial schedule assigned to the 612 Proceeding without needing any duplicative
`
`efforts by the Board or Koss. These steps minimize the possibility of any
`
`complication or delay from joinder. See LG, IPR2015-01353, Paper No. 11 at 6-7
`
`(granting IPR and motion for joinder because “joinder would increase efficiency
`
`by eliminating duplicative filings and discovery, and would reduce costs and
`
`burdens on the parties as well as the Board” where petitioners agreed to an
`
`“understudy” role). Apple is further willing to agree to any other reasonable
`
`conditions the Board deems necessary.
`
`IV. CONCLUSION
`Joinder will not affect the substance, procedure, or scheduling of the 612
`
`Proceeding. Petitioner files this motion under the statutory joinder provisions as
`
`contemplated by the AIA. Joinder will simplify the issues and promote efficiency,
`
`justice, and speed.
`
`For the foregoing reasons, Petitioner respectfully requests joinder with Bose
`
`Corporation v. Koss Corporation, IPR2021-00612.
`
`12
`
`
`
`
`
`
`
`Dated: October 15, 2021
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2022-00053
`Attorney Docket No: 50095-0021IP3
`Respectfully submitted,
`
`
`
`
`
`
`
` /W. Karl Renner/
`W. Karl Renner, Reg. No. 41,265
`David L. 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
`
`13
`
`
`
`
`Case IPR2022-00053
`Attorney Docket No: 50095-0021IP3
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR § 42.6(e), the undersigned certifies that on October
`
`15, 2021, a complete and entire copy of this Motion for Joinder was provided
`
`via Federal Express, to the to the Patent Owner by serving the correspondence
`
`address of record as follows:
`
`K&L GATES LLP-Pittsburgh
`210 SIXTH AVENUE
`PITTSBURGH PA 15222-2613
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`1
`
`
`
`
`
`
`
`
`/Crena Pacheco/
`Crena Pacheco
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(617) 956-5938
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
