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`Case IPR2022-00053
`Attorney Docket No: 50095-0021IP3
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner
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`v.
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`KOSS CORPORATION,
`Patent Owner
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`Case IPR2022-00053
`Patent 10,206,025
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`PETITIONER’S MOTION FOR JOINDER
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`1
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`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.
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`(“Apple” or “Petitioner”) moves to join the instantly filed petition with the inter
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`partes review instituted against U.S. Patent No. 10,206,025 (“the ’025 Patent”) in
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`Bose Corporation v. Koss Corporation, IPR2021-00612 (“the 612 Proceeding”).
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`This motion is timely filed within one month of the Board’s September 15, 2021
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`institution decision in the 612 Proceeding.
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`Joinder will not unduly prejudice any party. To this point, joinder will not
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`add any new substantive issues, delay the schedule, burden deponents, or increase
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`needless filings. On the other hand, denial of joinder would severely prejudice
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`Apple, and subject future litigants to inefficiencies. As to Apple, its interests may
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`not be adequately protected in the 612 Proceeding, particularly if Bose settles with
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`Koss. With the Board having already found a reasonable likelihood that the’025
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`Patent is unpatentable, Koss should not be allowed through denial of joinder to
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`subvert the efficiency and fairness at the core of these proceedings, which would
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`otherwise prevent Koss from continuing to assert a patent whose claims have been
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`found reasonably likely invalid against four other defendants by strategically
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`settling its case against Bose. Accordingly, Petitioner should be allowed to join in
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`a proceeding affecting a patent asserted against it.
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`2
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`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
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`asserted the ’025 Patent (and related patents US 10,298,451, US 10,469,934, US
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`10,506,325, and US 10,491,982) against Apple in Koss Corp. v. Apple Inc., Civil
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`Action No. 6:20-cv-00665. Koss has also asserted the ’025 Patent against several
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`other defendants, including Bose Corporation, Skullcandy, Inc., PEAG LLC d/b/a
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`JLab Audio, and Plantronics, Inc.
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`On February 22, 2021, Apple filed its first petition against the ’025 Patent in
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`IPR2021-00546. Nine days later, on March 3, 2021, Bose Corporation
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`independently filed its own petition against the ’025 Patent in the 612 Proceeding.
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`The prior art asserted in the 612 Proceeding is entirely different than the prior art
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`asserted by Apple in IPR2021-00546. Indeed, at the time of filing IPR2021-00546
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`and until Bose filed the 612 Proceeding, Apple was not aware of the primary
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`reference that forms the basis of Grounds 2A-2F of the 612 Proceeding, grounds
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`that account for nearly half of the petition in the 612 Proceeding. Nor was Apple
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`aware of the persuasive technical explanations of Drs. Tim Williams and John
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`Casali supporting all of the grounds in the 612 Proceeding. The 612 Proceeding
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`and Apple’s IPR2021-00546, were filed so close in time as to be all but
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`indistinguishable procedurally from simultaneously-filed petitions. And the period
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`of time between Bose’s filing of the 612 Proceeding and this joinder motion should
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`Case IPR2022-00053
`Attorney Docket No: 50095-0021IP3
`not be relevant, as it does not affect the schedule of the 612 Proceeding or
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`substantially prejudice Koss.
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`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
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`IPR proceeding. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b); see also Dell Inc.
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`v. Network-1 Sec. Solutions, Inc., IPR2013-00385, Pap. 17 at 4-6 (PTAB Jul. 29
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`2013); Sony Corp. v. Yissum Res. & Dev. Co. of the Hebrew Univ. of Jerusalem,
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`IPR2013- 00326, Pap. 15 at 3-4 (PTAB Sep. 24, 2013); Microsoft Corp. v.
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`Proxyconn, Inc., IPR2013-00109, Pap. 15 at 3-4 (PTAB Feb. 25, 2013). “The
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`Board will determine whether to grant joinder on a case-by-case basis, taking into
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`account the particular facts of each case, substantive and procedural issues, and
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`other considerations.” Dell at 3. The movants bear the burden of proof in
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`establishing entitlement to the requested relief. 37 §§ 42.20(c), 42.122(b). A
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`motion for joinder should:
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`[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.
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`Dell at 4.
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`Case IPR2022-00053
`Attorney Docket No: 50095-0021IP3
`As explained below, Apple’s joinder would be consistent with the goals ex-
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`pressed in each of the Board’s NHK, Fintiv, Snap, Sotera, General Plastic, and
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`Uniloc decisions by promoting a maximally-efficient resolution to the dispute be-
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`tween the parties. See, e.g., General Plastic Indus. Co. v. Cannon Kabushiki Kai-
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`sha, IPR2016-01357, Pap. 19 at 16 (PTAB Sept. 6, 2017) (precedential) (“In exer-
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`cising discretion…we are mindful of the goals of the AIA–namely, to improve pa-
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`tent quality and make the patent system more efficient by the use of post-grant re-
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`view procedures”); Apple Inc. v. Fintiv, Inc., IPR2020- 00019, Pap. 11 at 6 (PTAB
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`Mar. 20, 2020) (“the Board takes a holistic view of whether efficiency and integ-
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`rity of the system are best served by denying or instituting review”).
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`B.
`Joinder with the 612 Proceeding Is Appropriate
`Apple respectfully submits that joinder with the 612 Proceeding is
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`appropriate. The Joinder Petition is substantively the same as the petition filed in
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`the 612 Proceeding. As such, joinder would not require or necessitate changes to
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`the facts, citations, evidence, or arguments used in demonstrating satisfaction of the
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`implicated claims by the applied prior art in the 612 Proceeding. Hence, joinder
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`does not impede the Board from, consistent with 37 C.F.R. § 42.1(b), “secur[ing]
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`the just, speedy, and inexpensive resolution” of the grounds advanced by Bose in
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`the 612 Proceeding.
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`The Board has held that joinder of the type requested here should be
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`5
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`Case IPR2022-00053
`Attorney Docket No: 50095-0021IP3
`considered in light of the factors set forth in its precedential General Plastics
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`decision. Apple Inc. v. Uniloc 2017 LLC, IPR2020-00854, Pap. 9 at 4-7 (PTAB
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`Oct. 28, 2020) (precedential). The General Plastics factors should be considered
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`“as if [the second-in-time petitioner] had brought the [additional] challenge to the
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`patent in the first instance,” and hence, they involve analysis relating to the Bose
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`petition filing and the Apple petition filing, just weeks before. Id. at 4. That is, in
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`this case, the General Plastics factors should be evaluated as if Apple filed the 612
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`Proceeding. From this perspective, the General Plastics factors support granting
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`joinder, as explained below.
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`1.
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`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
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`(“Schrager”)—the primary reference that forms the basis of Grounds 2A-2F of the
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`612 Proceeding—before Bose filed the 612 Proceeding. Indeed, none of the initial
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`invalidity contentions Apple served prior to the filing of the 612 Proceeding cited
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`to Schrager. The Schrager-based grounds account for 35 pages of the petition in
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`the 612 Proceeding, nearly half of the substantive portion of the petition.
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`Further, Apple was not aware of the persuasive technical explanations of
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`Drs. Tim Williams and John Casali supporting the 612 Proceeding. Indeed, in the
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`co-pending litigation, expert discovery was still far from completion when Apple
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`Case IPR2022-00053
`Attorney Docket No: 50095-0021IP3
`filed its first ’025 Petition and Bose filed its petition in the 612 Proceeding. The
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`benefit of these experts’ well-reasoned positions demonstrates in hindsight the effi-
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`cacy of the grounds set forth in the 612 Proceeding, as evidenced by the Board’s
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`decision to institute.
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`2.
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`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
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`its first ’025 petition (IPR2021-00546), which is so close in time as to be all but in-
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`distinguishable procedurally from a simultaneously-filed petition. The grounds set
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`forth in the 612 Proceeding are substantially different from the grounds that were
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`independently developed in Apple’s first ’025 petition, so the nine days between
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`the two filings could not reasonably have provided Bose substantial benefit in pre-
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`paring its petition. Bose certainly did not have access to Koss’s preliminary re-
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`sponse or the Board’s institution decision when preparing the petition for the 612
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`Proceeding.
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`To the contrary, Koss benefited from having all but six days of its three-
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`month preliminary response period to review both petitions together when prepar-
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`ing its preliminary responses. APPLE-1136; APPLE-1137. Further, given that
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`Apple’s first petition was denied, there is even less burden on the Board and Koss.
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`7
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`Case IPR2022-00053
`Attorney Docket No: 50095-0021IP3
`Moreover, the period of time between Bose’s filing of the 612 Proceeding
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`and Apple’s filing of the present petition and motion for joinder should not be rele-
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`vant, as it does not affect the schedule of the 612 Proceeding or substantially preju-
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`dice Koss. Because the present petition presents no new issues or evidence and
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`Apple is proposing that it take an “understudy” role that will not require any latera-
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`tion to the existing schedule in the 612 Proceeding, the period of time between
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`Bose’s filing of the 612 Proceeding and Apple’s filing of the present motion for
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`joinder has no impact of the fairness to Koss. To the contrary, failing to grant this
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`motion for joinder adversely impacts the integrity of the overall patent system, as it
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`encourages continued assertion by Koss of claims deemed by this Board reasona-
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`bly likely invalid, by opportunistically settling its case against Bose in service of
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`escaping the Board’s expert review of the ’025 Patent.
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`3.
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`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
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`new substantive issues, delay the schedule, burden deponents, or increase needless
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`filings. The Joinder Petition presents the same grounds based on the same evi-
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`dence, and Apple proposes taking an understudy role until/unless Bose requests to
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`withdraw from the 612 Proceeding due to settlement. Thus, in granting this join-
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`der, the Board will not need to expend any resources in addition to those already
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`Case IPR2022-00053
`Attorney Docket No: 50095-0021IP3
`committed for adjudicating the instituted 612 Proceeding, nor will it need to alter
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`the timeline of the 612 Proceeding to account for Apple’s joinder thereto.
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`4.
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`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
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`its first attempt to challenge the [subject] patent,” and the subsequent attempt to “join
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`an ongoing proceeding challenging the same patent” was said to have been made
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`“over a year later and subject to a § 315(b) bar ….” IPR2020-00854, Pap. 9 at 7.
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`Throughout its decision, the Board notes that it lacked sufficient facts regarding
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`“the timing of [the] second petition and [the joining petitioner’s] knowledge of the
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`asserted prior art.” Id. at 8. As explained in the preceding sections, however, Ap-
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`ple has provided these facts here, explaining that the 612 Proceeding was filed only
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`nine days after Apple’s first petition and without the benefit of either Koss’s pre-
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`liminary response in IPR2021-00546 or the Board’s institution decision. Further,
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`at the time of filing its petitions against the ’025 Patent, Apple was not aware of
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`the primary reference that forms the basis of Grounds 2A-2F of the 612 Proceed-
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`ing. Thus, the facts here are substantially different than those present in the
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`Board’s Uniloc decision.
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`C.
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`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
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`9
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`Case IPR2022-00053
`Attorney Docket No: 50095-0021IP3
`in the 612 Proceeding and its accompanying expert declarations. Apple does not
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`seek to introduce grounds or claims not currently in the 612 Proceeding and seeks
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`only to join the proceeding as instituted. Koss should not require any discovery
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`beyond that which it may need in the 612 Proceeding— nor should the Board
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`permit any. The Joinder Petition introduces no new substantive issues relative to
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`the 612 Proceeding and does not seek to broaden the scope of the 612 Proceeding.
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`Joinder will not impact the 612 proceeding trial schedule because the present
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`Petition presents no new issues or grounds of unpatentability. See LG, IPR2015-
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`01353, Paper No. 11 at 6 (granting IPR and motion for joinder where “joinder should
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`not necessitate any additional briefing or discovery from Patent Owner beyond that
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`already required in [the original IPR]”). Further, Apple explicitly consents to the
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`trial schedule as adopted in the 612 proceeding. There are no new issues for the
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`Board to address and Koss will not be required to present any additional responses
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`or arguments.
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`The Patent Owner’s Response will also not be negatively impacted because
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`the substantive issues presented in the present Petition are identical to the issues
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`presented in the 612 Proceeding. Koss will not be required to provide any
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`additional analysis or arguments beyond what it will already provide in responding
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`to the petition in the 612 Proceeding. Also, because the present Joinder Petition
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`relies on the same expert declaration, only a single deposition is needed for the
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`10
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`Case IPR2022-00053
`Attorney Docket No: 50095-0021IP3
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`proposed joined proceeding.
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`Accordingly, joinder with the 612 Proceeding does not unduly burden or
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`negatively impact the trial schedule.
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`D.
`Procedures to Simplify Briefing and Discovery
`Apple explicitly agrees to take an “understudy” role, which will simplify
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`briefing and discovery. Specifically, Apple explicitly agrees, upon joining the 612
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`proceeding, that the following conditions, as previously approved by the Board in
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`similar circumstances, shall apply so long as the current petitioner remains an
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`active party:
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`a) all filings by Apple in the 612 Proceeding shall be consolidated with
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`the filings of Bose, unless a filing concerns issues solely involving Ap-
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`ple;
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`b) Apple shall not be permitted to raise any new grounds not instituted
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`by the Board in the 612 Proceeding, or introduce any argument or
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`discovery not introduced by Bose;
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`c) Apple shall be bound by any agreement between Koss and Bose con-
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`cerning discovery and/or depositions; and
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`d) Apple at deposition shall not receive any direct, cross examination or
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`redirect time beyond that permitted under either 37 C.F.R. § 42.53 or
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`any agreement between Koss and Bose.
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`11
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`Case IPR2022-00053
`Attorney Docket No: 50095-0021IP3
`See Noven Pharmaceuticals, Inc. v. Novartis AG, IPR2014-00550, Paper No. 38
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`at 5 (Apr. 10, 2015). Unless and until Bose ceases to participate, Apple will not
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`assume an active role in the 612 Proceeding.
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`Thus, by Apple accepting an “understudy” role, the parties can comply with
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`the trial schedule assigned to the 612 Proceeding without needing any duplicative
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`efforts by the Board or Koss. These steps minimize the possibility of any
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`complication or delay from joinder. See LG, IPR2015-01353, Paper No. 11 at 6-7
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`(granting IPR and motion for joinder because “joinder would increase efficiency
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`by eliminating duplicative filings and discovery, and would reduce costs and
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`burdens on the parties as well as the Board” where petitioners agreed to an
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`“understudy” role). Apple is further willing to agree to any other reasonable
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`conditions the Board deems necessary.
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`IV. CONCLUSION
`Joinder will not affect the substance, procedure, or scheduling of the 612
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`Proceeding. Petitioner files this motion under the statutory joinder provisions as
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`contemplated by the AIA. Joinder will simplify the issues and promote efficiency,
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`justice, and speed.
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`For the foregoing reasons, Petitioner respectfully requests joinder with Bose
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`Corporation v. Koss Corporation, IPR2021-00612.
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`12
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`Dated: October 15, 2021
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`Case IPR2022-00053
`Attorney Docket No: 50095-0021IP3
`Respectfully submitted,
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`
` /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
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`13
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`Case IPR2022-00053
`Attorney Docket No: 50095-0021IP3
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e), the undersigned certifies that on October
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`15, 2021, a complete and entire copy of this Motion for Joinder was provided
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`via Federal Express, to the to the Patent Owner by serving the correspondence
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`address of record as follows:
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`K&L GATES LLP-Pittsburgh
`210 SIXTH AVENUE
`PITTSBURGH PA 15222-2613
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`/Crena Pacheco/
`Crena Pacheco
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(617) 956-5938
`
`